S3 Incorporated, (Now Known as Sonicblue, Inc.) v. Nvidia Corporation

259 F.3d 1364, 59 U.S.P.Q. 2d (BNA) 1745, 2001 U.S. App. LEXIS 17334, 2001 WL 876905

• Court: Court of Appeals for the Federal Circuit
• Decided: August 3, 2001
• Docket: 00-1257
• Status: Published

Opinions

PAULINE NEWMAN, Circuit Judge.

S3 Incorporated, now known as SONIC-blue, Inc. (herein “S3”), appeals the grant of summary judgment by the United States District Court for the Northern District of California,¹ holding claims 1-4 and 9-11 of S3’s United States Patent No. 5,581,279 invalid on the ground of claim indefiniteness. We conclude that the claims are not invalid on this ground. The judgment is reversed and the case is remanded for further proceedings.

BACKGROUND

The patented invention is an integrated circuit for use in computer video color display. The basic technology of video color display was known at the time the '279 patent was filed; the patent is for a novel monolithic circuit in which a programmable clock signal generator circuit, a VGA controller circuit, and a combination random-access memory/digital-to-analog converter are integrated on a single chip.

A computer screen is divided into many horizontal rows, each of which contains a plurality of points called picture elements or “pixels.” Each pixel contains fluorescent materials that emit light when charged by an electron beam generated by the monitor. To display colored images, red, green, and blue fluorescent materials are associated with each pixel, structured to be illuminated by electron beams directed by the computer’s graphics controller. By varying the intensity of the electron beams, the desired color is produced. The '279 patent explains that the prevailing standard video display format at the time of filing was the Video Graphics Array (VGA) standard, which specifies an array of 640 horizontal and 480 vertical pixels. In accordance with the VGA standard, pixel data are output by the video controller at a maximum of 8 bits per pixel; this output limits to 256 the number of possible colors available for display.

The patent describes two modes of operation. In the “direct color” mode, the pixel data are transmitted directly from the video controller to a digital-to-analog converter (DAC) for display. In the “indexed” mode, the data output from the video controller is used as an address which is input to a random access memory (RAM) array structured as a look-up table. Each address corresponds to higher bit level color information, thus allowing, for instance, 18 or 24 bit color depth to be presented on the computer screen from only 8 bits of data, albeit limited to 256 combinations at that depth (the total number of addressable positions in the look-up table for 8 bit data).

Independent claims 1 and 9 of the '279 patent follow, with emphases added to the portions of the claims challenged as indefinite:

1. A monolithic integrated circuit comprising:

programmable clock circuit means for producing a video memory clock signal and a video dot clock signal;

a video controller coupled to said programmable clock circuit means for receiving the video memory clock signal and the video dot clock signal and for producing a video information data stream;

random-access memory means, coupled to said video controller, for receiving the video information data stream and producing a video display information data stream; and

digital-to-analog converter means, coupled to both said random-access memory and to said video controller, for selectively receiving either the video information data stream or the video display information data stream as received data and for converting the received data to analog video signals.

9. A monolithic integrated circuit comprising:

a programmable clock circuit responsive to a reference clock signal and devi-sor data and generating a video memory clock signal and a video dot clock signal;

a video controller receiving the video memory clock signal and the video dot clock signal and producing a video information data stream from data received from a video RAM;

a random-access memory producing a video display information data stream in response to the video information data stream from said video controller;

a digital-to-analog converter converting received digital data to analog video signals; and

a selector supplying one of said video information data stream from the video controller and said video display information data stream from said random-access memory to said digital-to-analog converter as said received digital data.

DISCUSSION

The district court granted summary judgment that the claims are invalid for indefiniteness under 35 U.S.C. § 112 ¶2:

§ 112 ¶ 2. The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

Summary judgment is appropriate “if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.” Fed. R.Civ.P. 56(c). On reviewing the grant of summary judgment, the appellate tribunal applies the same criteria as did the district court. See Anderson v. Liberty Lobby. Inc., 477 U.S. 242, 250, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Cortland Line Co. v. Orvis Co., 203 F.3d 1351, 1355, 53 USPQ2d 1734 (Fed.Cir.2000).

The question of whether the claims meet the statutory requirements of § 112 ¶ 2 is a matter of construction of the claims, and receives plenary review on appeal. See Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 53 USPQ2d 1225 (Fed.Cir.1999); Personalized Media Communications v. Int’l Trade Comm’n, 161 F.3d 696, 705, 48 USPQ2d 1880, 1888 (Fed.Cir.1998). The claims as granted are accompanied by a presumption of validity based on compliance with, inter alia, § 112 ¶ 2. See Budde v. Harley Davidson, Inc., 250 F.3d 1369, 1376, 58 USPQ2d 1801, 1806 (Fed.Cir.2001).

The requirement that the claims “particularly point[ ] out and distinctly claim[ ]” the invention is met when a person experienced in the field of the invention would understand the scope of the subject matter that is patented when the claim is read in conjunction with the rest of the specification. “If the claims when read in light of the specification reasonably apprise those skilled in the art of the scope of the invention, § 112 demands no more.” Miles Laboratories, Inc. v. Shandon, 997 F.2d 870, 875, 27 USPQ2d 1123, 1126 (Fed.Cir.1993); see also Union Pacific Resources Co. v. Chesapeake Energy Corp., 236 F.3d 684, 692, 57 USPQ2d 1293, 1297 (Fed.Cir.2001); North American Vaccine, Inc. v. American Cyanamid Co., F.3d 1571, 1579, 7 F.3d 1571, 28 USPQ2d 1333, 1339 (Fed.Cir.1993); Hybritech, Inc. v. Monoclonal Antibodies, 802 F.2d 1367, 1385, 231 USPQ 81, 94-95 (Fed.Cir.1986).

For claim clauses containing functional limitations in “means for” terms pursuant to § 112 ¶ 6, the claimed function and its supporting structure in the specification must be presented with sufficient particularity to satisfy the requirements of § 112 ¶ 2. As was explained in In re Donaldson Co., 16 F.3d 1189, 1195, 29 USPQ2d 1845, 1850 (Fed.Cir.1994) (en banc), “if one employs means-plus-function language in a claim, one must set forth in the specification an adequate disclosure showing what is meant by that language. If an applicant fails to set forth an adequate disclosure, the' applicant has in effect failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112.” See also Atmel Corp., 198 F.3d at 1382, 53 USPQ2d at 1230 (Fed.Cir.1999) (“In order for a claim to meet the particularity requirement of ¶ 2, the corresponding structure(s) of a means-plus-function limitation must be disclosed in the written description in such a manner that one skilled in the art will know and understand what structure corresponds to the means limitation.”)

The Video Controller

The primary focus of the district court’s ruling of claim indefiniteness of the terms “video information data stream” and “video display information data stream” was the video controller and the description of its emission of video information data. The district court found that the video controller emits two different kinds of information, one of which goes directly to- the DAC (“video display information data”) and one of which is processed first by the RAM (“video information data”). The district court held that claim 1 is fatally indefinite because:

it is inconsistent for claim 1 to use the term “video information stream” to describe both the information the DAC receives directly from the video controller, and the information the RAM receives from the video controller .... it is not apparent whether a particular “video information stream” would contain “video information,” “video display information,” or both.

Slip op. at 12-13. The court found claim 9 invalid for the same reason. Id. at 19.

S3 states that the data stream from the video controller can either be sent directly to the DAC through a selector in the direct-color mode, or processed by the RAM in the indexed mode, and that this distinction is represented in the claims and would be so understood in light of the rest of the specification. As support, S3 points to Figure 2 of the '279 patent, which depicts the 8 bit video information data stream from the VGA controller 11 as either processed in the RAM to produce 18/24 bit color information, or bypassing the RAM and going directly to the selector 24.²

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The specification explains that “in certain modes of operation, it may be desirable for the VGA controller 11 to bypass the RAM portion of the RAMDAC 23 and instead provide video display information directly to the DAC portion of the RAMDAC 23 through a selector 24.” Col. 4, lines 1-5.

Comprehension of the terse language of the '279 claims is aided by recourse to the rest of the specification, for the body of the specification explains and illustrates “video information data stream” and “video display information data stream,” such that their meaning and scope would be understood by a person experienced in the field of the invention. The claims are directed to the invention that is described in the specification; they do not have meaning removed from the “context from which they arose.” Netword, LLC v. Centraal Corp., 242 F.3d 1347, 1352, 58 USPQ2d 1076, 1079 (Fed.Cir.2001); see also Slimfold Mfg. Co. v. Kinkead Indus., Inc., 810 F.2d 1113, 1116, 1 USPQ2d 1563, 1566 (Fed.Cir.1987) (claims are construed in light of the specification, of which they are a part).

toVIDIA argues that the claims are ambiguous because two different outputs of the video controller are required, and states that this is inconsistent with the description in the specification. We conclude, however, that a person of skill in this field would understand the claims when viewed in light of the description in the specification. Claim 1 recites a “video controller ... producing a video information data stream.” The next clause of claim 1 states that the RAM receives the “video information datá stream” and produces the “video display information data stream”; the specification explains this transformation, and the role of the bit-content of the pixels in generating the display. The final clause of claim 1 states that the DAC is “coupled to both said random-access memory and to said video controller,” and serves to “selectively re-ceiv[e] either the video information data stream or the video display information data stream.” This clause manifests the specification’s teaching that the information from the ■ video controller need not pass through the' random-access memory.

The district court objected that the claims are not self-contained in that they do not explain that “video display information is produced by the controller.” We agree that the claims are not a self-contained explanation of every step. That is not the role of claims.

The purpose of claims is not to explain the technology or how it works, but to state the legal boundaries of the patent grant. A claim is not “indefinite” simply because it is hard to understand when viewed without benefit of the specification. Cf. Autogiro Co. of America v. United States, 181 Ct.Cl. 55, 384 F.2d 391, 397, 155 USPQ 697, 701 (Ct.C1.1967) (“a claim cannot be interpreted without going beyond the claim itself’). As was explained in the specification, the video information data stream emitted by the controller is either processed through the look-up table in the RAM (to produce a video display information stream) or, already consisting of video display information, the stream bypasses the RAM and proceeds directly to the digital-to-analog converter. See col. 4, lines 1-5. This explanation was elaborated by the expert witnesses. See Richard F. Ferraro, Expert Witness Report at 4.4, Joint Appendix at 1541 (“Having the RAMDAC integrated on the display controller chip facilitated a palette bypass in the event that the red, green and blue data was already provided from the ... circuitry in the display controller.”); Declaration of Richard A. Belgard at ¶ 117 (“video display information that is output from the VGA controller can be directly read, and will therefore bypass the RAM”); '279 patent, col. 4, lines 1-5 (reproduced supra). We conclude that a person skilled in this field would understand the meaning and scope of the data streams as set forth in the claims.³

The ruling of indefiniteness of these terms is reversed.

The “Means ... for Selectively Receiving”

Claim 1 includes a “digital-to-analog converter means ... for selectively receiving either the video information data stream or the video display information data stream [and] converting the received data to analog video signals.” The district court held that the “means ... for selectively receiving” was indefinite because the “structure claimed by the ‘selectivity’ limitation is not disclosed in the specification as required by 35 U.S.C. § 112 ¶ 6.”⁴

The parties agree that the “means ... for selectively receiving” limitation corresponds to the “selector” referred to in the specification and shown in Figure 2 as element 24 of the integrated circuit. However, the electronic structure of the selector and the details of its electronic operation are not described in the specification. S3 presented evidence that a selector is a standard electronic component whose structure is well known in this art, and that such standard components are usually represented in the manner shown in the '279 patent. The inventor of the '279 patent and the expert witnesses testified that persons of skill in this field would readily recognize that the selector as shown in the specification is an electronic device such as a simple multiplexer, whose structure is well known. The district court held that such evidence can not “compensate for the failure of the '279 patent to expressly disclose the structure of such devices.” The district court found that this testimony provided a factual foundation “on which [S3 may] base its assertion that multiplexers are ‘well known in the art,’ ” but found the evidence inadequate to overcome the indefiniteness charge, stating that the disclosure must be judged on the basis of the “common experience” of “those outside the relevant art.” The court found that “ ‘common experience’ does not suggest that the function described by the ‘selectivity’ limitation refers to a ‘simple multiplexer.’ ” Thus, the court declined to give any weight to the evidence of the understanding of persons of skill in the field.

The law is clear that patent documents need not include subject matter that is known in the field of the invention and is in the prior art, for patents are written for persons experienced in the field of the invention. See Vivid Technologies, Inc. v. American Science and Engineering, Inc., 200 F.3d 795, 804, 53 USPQ2d 1289, 1295 (Fed.Cir.1999) (“patents are written by and for skilled artisans”). To hold otherwise would require every patent document to include a technical treatise for the unskilled reader. Although an accommodation to the “common experience” of lay persons may be feasible, it is an unnecessary burden for inventors and has long been rejected as a requirement of patent disclosures. See Atmel Corp., 198 F.3d at 1382, 53 USPQ2d at 1230 (Fed.Cir.1999) (“The specification would be of enormous and unnecessary length if one had to literally reinvent and describe the wheel.”); W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ 303, 315 (Fed.Cir.1983) (“Patents are written to enable those skilled in the art to practice the invention, not the public.”).

The uncontradicted evidence was that a selector is of well known electronic structure and performs a common electronic function, and is readily implemented from the description in the specification. There was no contrary evidence. It is not the criterion for compliance with § 112, whether a lay person having no skill whatsoever in this field would know how a selector is constructed. Thus the ruling in invalidity for failure to comply with § 112 is incorrect, and must be reversed.

CONCLUSION

The judgment of invalidity of claims 1 and 9 and the claims depending therefrom, on the ground of indefiniteness, is reversed. The case is remanded for further proceedings.

REVERSED AND REMANDED.

1 . SONICblue, Inc. v. nVIDIA Corp., No. C 98-01938 SBA (N.D.Cal. Aug. 16, 1999).

2 . The district court refused to limit the output of the VGA controller to a maximum of 8 bits per pixel, agreeing with S3 that "the '279 patent contemplates the use of a VGA controller with a 24-bit output.” Slip op. at 28-29. Indeed, there is nothing in the specification or the evidence presented to the district court to suggest that the selector/display is required to receive only ,8M bit information, n VIDIA so acknowledged in arguing that the video controller should be limited to the "8 bit VGA standard at that time ... consistent with the output described in Figure 2 (only 8 bit outputs from VGA controller).” n VIDIA Opposition to S3 Claim Construction, Joint Appendix at A1750.

3 . The dissent misperceives the teachings of the specification and our opinion in stating that the data bypassing the RAM and sent directly to the DAC is "unprocessed” video information. See, e.g., dissent at 1372 (" 'video information' ... is sent to the display without color processing”); id.' at 1373 (“the majority’s conclusion [is] that in bypass mode 8 bit unprocessed video information is transmitted directly to the display”); id. at 1375 ("unprocessed 8 bit data bypasses the RAM and is sent directly to the display”). Despite the dissent's characterization, neither the specification nor our opinion state that video information bypassing the RAM is unprocessed. Supra at 1369-70. Nor does our opinion "suggest[ ] that the 8 bit video information data, input into the RAM in the index mode to generate 18/24-bit color video display data, is itself display data.” As our opinion states, "the data output from the video controller is used as an address which is input to a random access memory (RAM) array.” Supra at 1366.

Both parties agree that the video controller can produce information streams which are either routed directly to the DAC, or first to the RAM; that is, both parties agree that a video controller can produce information which is read directly by the DAC and information which is sent to the RAM as an address. For example, n VIDIA explained: "One way to process digital data is to send it directly from the video controller to a[DAC].... This is sometimes referred to as 'direct color mode.’ It is possible to expand the number of possible colors available with a given number of bits per pixel by using a[RAM] ... which functions as a 'look-up table.’ The RAM looks up the location (sometimes referred to as an ... address) corresponding to the pixel data from the video controller.... This arrangement is sometimes referred to as 'indexed color mode.' ” Brief at 3.

4 . § 112 & 6. An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.