Free Reply to Response to Motion - District Court of Delaware - Delaware

Case 1 :06-cv—OO476-GIVIS Document 166 Filed 05/O2/2008 Page 1 of 4
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
LINEAR TECHNOLOGY CORPORATION )
Plaintiff, )
v. ) C.A. No. 06-476 (GMS)
MONOLITHIC POWER SYSTEMS, INC. )
Defendant. )
)
LINEAR’S REPLY IN SUPPORT OF ITS MOTION IN LIMINE NO. 1 TO PRECLUDE
MONOLITHIC FROM OFFERING AT TRIAL EVIDENCE AND/OR ARGUMENT
THAT THE ASSERTED CLAIMS ARE LIMITED TO TWO STATES OF OPERATION
As set forth in Linear’s opening, Monolithic is seeking to reopen claim
construction disguised as a noninfringement argument. For each of the asserted claims,
Monolithic seeks to make a "consisting" claim out of a "comprising" claim where no restriction
exists on the number of available states of circuit operation. The Court’s construction does not
limit the asserted claims to two states of circuit operation. Therefore, Monolithic should be
I precluded from offering evidence and/or argument that presupposes such a limit.
ARGUMENT
n The asserted claims use the open-ended transitional word "comprising", not the
close-ended "consisting." It is settled law that "comprising" does not restrict the claim scope to
only the elements recited therein. See Crystal Semiconductor Corp. v. T riT ech Microelectronics
Int’l Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001) ("[T]he transition ‘comprising’ creates a
presumption that the recited elements are only a part of the device, that the claims does not
exclude additional, unrecited elements."). Tivo has direct bearing on the present case because
Dr. Szepesi’s stated opinion, which presupposes limiting the claims to only two states, is indeed

Case 1 :06-cv—OO476-GIVIS Document 166 Filed 05/O2/2008 Page 2 of 4
inconsistent with the Court’s construction. (Mot. at 3). It is simply improper for Dr. Szepesi to
interpret "comprising" claims as "consisting" claims.
Mono1ithic’s discussion of Claim 41 of the ’l78 patent as a purported illustration
of a global two—state limitation is inapt. First, the referenced language of Claim 41 is not present
in every asserted claim.1 Second, there is no requirement in the claim language or the Court’s
construction that the first and second states of circuit operation be contiguous.2 And neither the
patent specification nor the file history requires that the transition point, governed by the
"threshold fiaction" (or "selected sleep mode current leve1"), must separate contiguous first and
second states and exclude the possibility of another state intervening the first and second.
Finally, and contrary to Monolithic’s suggestion, Linear’s motion in limine does not seek to
prevent Monolithic from arguing that the MP1543 does not have the second state as recited in
Claim 41; it just seeks to preclude Monolithic from arguing that it avoids infringement based on
the fallacy that the asserted claims are limited to only two states.
Mono1ithic’s disclaimer argument is likewise without merit and procedurally
improper for several reasons. Prosecution disclaimer provides that if a patentee clearly and
unambiguously disclaims certain claim scope in the course of securing a patent, the patent’s
claims carmot be construed to literally cover the disclaimed material. Prosecution disclaimer is
therefore a doctrine that limits claim construction. Mmco, LLC v. Lange Indus., No. 06-3,5 65,
2007 U.S. Dist. LEXIS 92502, at *18 (D. Minn. Dec. 14, 2007) (citing Ventana Med. Sys. v.
I Among the nine asserted claims, the phrase "following the first state of circuit operation"
is only present in claim 41 of the ’178 patent and claim 34 of the ’258 patent.
2 The Court has defined the first and second states to mean two different states of circuit
operation, which enable the claimed switching voltage regulators to achieve efficiency
over a broad range of operating load currents. See D.I. 104 at 6-7 and Mot. at 2.

Case 1 :06-cv—OO476-GIVIS Document 166 Filed 05/O2/2008 Page 3 of 4
Biogenex Labs., Inc., 473 F.3d 1173, 1182 (Fed. Cir. 2006)). With claim construction falling
strictly within the province of the Court, any discussion of prosecution disclaimer before the jury
would be improper.
Moreover, during the prosecution of the patents-in-suit Linear made none of the
disclaimers now alleged by Monolithic. What Monolithic cites as support for its allegation does
not constitute any sort of disclaimer, much less an unambiguous disclaimer. See Omega Eng ’g,
Inc. v. Raytek Corp., 334 F.3d 1314, 1323, 1325 (Fed. Cir. 2003); see also Teleflex, Inc. v.
F icosa N Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002) (requiring "a clear disavowal of
claim scope."). The passage cited by Monolithic points to two states of circuit operation during
both of which high efficiency is achieved, and that a threshold divides these two states. There is
no disavowal of more than two states. Nor is there any mention that the two states must be
contiguous and or that other possible intervening states are excluded.
CONCLUSION
For the foregoing reasons, Plaintiff respectfully requests that the Court preclude
Monolithic from introducing at trial any evidence and/or argtunent that the asserted claims are
limited to two states of operation.
Motuzrs, NICHOLS, Aizsar & TUNNELL LLP
OF COUNSED gs; {james W Tarrett, ZK
Raphael V· Lupe Jack B. Blumenfeld (#1014)
Jeel M· FYeed_ Karen Jacobs Louden (#2881)
Rehald J· Pahls _ James W. Parrett, Jr. (#4292)
Matthew G· Cuhhlhgham 1201 N. Market Street
McDERMorT WILL & EMERY LLP P_O_ BOX 1347
600 lafll Street, N.W. Wilmington, DE 19899
W3Sh1HgfOH, DC 20005 (302) 658_92O0
(202) 7568000 jparrettggi},mnat.com
May 2> 2008 Attorneys for Plaintwf
Linear Technology Corporation
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Case 1 :06-cv—OO476-GIVIS Document 166 Filed 05/O2/2008 Page 4 of 4
CERTIFICATE OF SERVICE
I, the undersigned, hereby certify that on May 2, 2008, I electronically filed the
foregoing with the Clerk of the Court using CM/ECF, which will send notification of such
filing(s) to the following:
Richard L. Horwitz
Porrniz ANDERsoN & CoRRooN LLP
I also certify that copies were caused to be served on May 2, 2008 upon the following in
the manner indicated:
BY HAND & EMAIL BY EMAIL
Richard L. Horwitz Dean G. Dunlavey
PorrER ANDERsoN & CORROON LLP Mark A. Flagel
1313 N. Market Street Robert Steinberg
P.O. Box 951 Sean Pak
Wilmington, DE 19899 LATHAM & WATKrNs LLP
633 West Fifth Street, Ste. 400
Los Angeles, CA 90017
Mark Kachner
LATHAM & WATKINS LLP
650 Town Center Drive
20th Floor c
Costa Mesa, CA 92626-1925
- David McKone
LATHAM & WATk1Ns LLP
Sears Tower, Suite 5800
233 South Wacker Drive
Chicago IL 60606
/s/james W Qarrett, jx
James W. Parrett, Jr. (#4292)