Free Declaration in Support - District Court of California - California

Case 5:03-cv-04669-JW

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1 Teresa M. Corbin (SBN 132360) Thomas Mavrakakis (SBN 177927) 2 HOWREY SIMON ARNOLD & WHITE, LLP 301 Ravenswood Avenue 3 Menlo Park, California 94025 Telephone: (650) 463-8100 4 Facsimile: (650) 463-8400 5 Attorneys for Plaintiff SYNOPSYS, INC. and for Defendants AEROFLEX INCORPORATED, 6 AMI SEMICONDUCTOR, INC., MATROX ELECTRONIC SYSTEMS, LTD., MATROX 7 GRAPHICS, INC., MATROX INTERNATIONAL CORP. and MATROX TECH, INC. 8 UNITED STATES DISTRICT COURT 9 NORTHERN DISTRICT OF CALIFORNIA 10 SAN FRANCISCO DIVISION 11 12 13 14 15 16 17 18 19 SYNOPSYS, INC., 20 21 vs. Plaintiff, ) ) ) ) ) ) ) ) ) ) ) vs. AEROFLEX INCORPORATED, et al., Defendants. RICOH COMPANY, LTD., Plaintiff, ) ) ) ) ) ) ) ) ) ) Case No. C03-04669 MJJ (EMC) Case No. C03-2289 MJJ (EMC) DECLARATION OF THOMAS C. MAVRAKAKIS IN SUPPORT OF PLAINTIFF SYNOPSYS, INC.' AND S DEFENDANTS' MOTION REQUESTING EQUAL PRESENTATION TIME AT TUTORIAL Date: To Be Determined Time: To Be Determined Courtroom: 11 Judge: Martin J. Jenkins

22 RICOH COMPANY, LTD., a Japanese corporation 23 Defendant. 24 25 26 27 28
HOWREY SIMON ARNOLD & WHITE

DECL. OF MAVRAKAKIS IN SUPPORT OF MOTION REQUESTING EQUAL PRESENTATION TIME AT TUTORIAL Case Nos. C03-04669 MJJ (EMC) and C03-2289 MJJ (EMC) DM_US\8064071.v1

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1 DECLARATION OF THOMAS C. MAVRAKAKIS 2 3 I, Thomas C. Mavrakakis declare as follows: 1. I am an attorney associated with the law firm of Howrey Simon Arnold & White, LLP,

4 counsel of record for Synopsys, Inc., Aeroflex Incorporated, AMI Semiconductor, Inc., Matrox 5 Electronic Systems, Ltd., Matrox Graphics, Inc., Matrox International Corp., and Matrox Tech, Inc. 6 am a member in good standing of the State Bar of California and have been admitted to practice before 7 this Court. I have personal knowledge of the facts set forth in this Declaration and, if called as a 8 witness, could and would testify competently to such facts under oath. 9 2. Attached as Exhibit A to this declaration is a true and correct copy of a July 14, 2004

10 Telephone Status Conference Transcript (mistakenly dated June 14, 2004). 11 3. Attached as Exhibit B to this declaration is a true and correct copy of a July 22, 2004

12 Court Order. 13 4. Attached as Exhibit C to this declaration is a true and correct copy of an August 9, 2004

14 Letter from Matthew E. Hocker to Kenneth W. Brothers. 15 5. Attached as Exhibit D to this declaration is a true and correct copy of an August 10,

16 2004 Letter from Matthew E. Hocker to Edward Meilman. 17 6. Attached as Exhibit E to this declaration is a true and correct copy of an August 12,

18 2004 Letter from Matthew E. Hocker to Edward Meilman. 19 7. Attached as Exhibit F to this declaration is a true and correct copy of an August 17,

20 2004 Letter from Matthew E. Hocker to Edward Meilman. 21 8. Attached as Exhibit G to this declaration is a true and correct copy of an August 18,

22 2004 Letter from Matthew E. Hocker to Edward Meilman. 23 9. Attached as Exhibit H to this declaration is a true and correct copy of an August 10,

24 2004 Letter from Edward A. Meilman to Matthew E. Hocker. 25 10. Attached as Exhibit I to this declaration is a true and correct copy of an August 11, 2004

26 Letter from Edward A. Meilman to Matthew E. Hocker. 27 11. Attached as Exhibit J to this declaration is a true and correct copy of an August 16,

28 2004 Letter from Edward A. Meilman to Matthew E. Hocker.
HOWREY SIMON ARNOLD & WHITE

DECL. OF MAVRAKAKIS IN SUPPORT OF MOTION REQUESTING EQUAL PRESENTATION TIME AT TUTORIAL Case Nos. C03-04669 MJJ (EMC) and C03-2289 MJJ (EMC) DM_US\8064071.v1

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12.

Attached as Exhibit K to this declaration is a true and correct copy of an August 18,

2 2004 Letter from Edward A. Meilman to Matthew E. Hocker. 3 13. Attached as Exhibit L to this declaration is a true and correct copy of an August 19,

4 2004 Letter from Edward A. Meilman to Matthew E. Hocker. 5 14. Attached as Exhibit M to this declaration is a true and correct copy of an August 19,

6 2004 Letter from Matthew E. Hocker to Edward Meilman. 7 15. Attached as Exhibit N to this declaration is a true and correct copy of an August 20,

8 2004 Letter from Edward A. Meilman to Matthew E. Hocker. 9 16. Attached as Exhibit O to this declaration is a true and correct copy of an August 23,

10 2004 Letter from Matthew E. Hocker to Gary M. Hoffman. 11 17. Attached as Exhibit P to this declaration is a true and correct copy of an August 24,

12 2004 Letter from Gary M. Hoffman to Matthew E. Hocker. 13 18. Attached as Exhibit Q to this declaration is a true and correct copy of an August 31,

14 2004 Letter from Matthew E. Hocker to Gary M. Hoffman. 15 19. Attached as Exhibit R to this declaration is a true and correct copy of a September 2,

16 2004 Letter from Gary M. Hoffman to Matthew E. Hocker. 17 20. Attached as Exhibit S to this declaration is a true and correct copy of a September 20,

s 18 2004 Letter from DeAnna Allen to Matthew E. Hocker, enclosing Ricoh' tutorial outline. 19 21. Attached as Exhibit T to this declaration is a true and correct copy of a September 20,

20 2004 Letter from Thomas C. Mavrakakis to Kenneth W. Brothers, enclosing Synopsys and 21 Defendants'tutorial outline. 22 22. Attached as Exhibit U to this declaration is a true and correct copy of a September 21,

23 2004 Letter from Edward A. Meilman to Thomas C. Mavrakakis. 24 23. Attached as Exhibit V to this declaration is a true and correct copy of a September 22,

25 2004 Letter from Thomas C. Mavrakakis to Edward Meilman. 26 24. Attached as Exhibit W to this declaration is a true and correct copy of a September 23,

27 2004 Letter from Edward A. Meilman to Thomas C. Mavrakakis. 28
HOWREY SIMON ARNOLD & WHITE

DECL. OF MAVRAKAKIS IN SUPPORT OF MOTION REQUESTING EQUAL PRESENTATION TIME AT TUTORIAL Case Nos. C03-04669 MJJ (EMC) and C03-2289 MJJ (EMC) DM_US\8064071.v1

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25.

Attached as Exhibit X to this declaration is a true and correct copy of a September 23,

2 2004 Letter from Thomas C. Mavrakakis to Edward Meilman. 3 26. Attached as Exhibit Y to this declaration is a true and correct copy of a September 24,

4 2004 Letter from Gary M. Hoffman to Tom Mavrakakis. 5 27. Attached as Exhibit Z to this declaration is a true and correct copy of a September 24,

6 2004 Letter from Thomas C. Mavrakakis to Gary M. Hoffman. 7 28. Attached as Exhibit AA to this declaration is a true and correct copy of a September 27,

8 2004 Letter from Gary M. Hoffman to Tom Mavrakakis. 9 29. Attached as Exhibit BB to this declaration is a true and correct copy of a September 28,

10 2004 Letter from Thomas C. Mavrakakis to Gary M. Hoffman. 11 30. Attached as Exhibit CC to this declaration is a true and correct copy of an October 1,

12 2004 Letter from Gary M. Hoffman to Tom Mavrakakis. 13 31. Attached as Exhibit DD to this declaration is a true and correct copy of an October 1,

14 2004 Letter from Thomas C. Mavrakakis to Gary M. Hoffman. 15 32. Attached as Exhibit EE to this declaration is a true and correct copy of Ricoh' Claim s

16 Construction Opening Brief. 17 18 I declare under penalty of perjury under the laws of the United States of America that the

19 foregoing is true and correct. 20 21 22 23 24 25 26 27 28
HOWREY SIMON ARNOLD & WHITE

Executed on October 5, 2004, at San Francisco, California.

/s/ Thomas C. Mavrakakis Thomas C. Mavrakakis

DECL. OF MAVRAKAKIS IN SUPPORT OF MOTION REQUESTING EQUAL PRESENTATION TIME AT TUTORIAL Case Nos. C03-04669 MJJ (EMC) and C03-2289 MJJ (EMC) DM_US\8064071.v1

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07.14.04 Transcript of Telephone Status Conf w. Jenkins

PAGES 1 - 15 UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA BEFORE THE HONORABLE MARTIN J. JENKINS, JUDGE RICOH COMPANY, LTD., ) ) PLAINTIFF, ) ) VS. ) ) AEROFLEX INCORPORATED, ) ET AL., ) ) DEFENDANTS. ) ____________________________) SYNOPSYS, INC., ) ) PLAINTIFF, ) ) VS. ) ) RICOH COMPANY, LTD., ) ) DEFENDANT. ) ____________________________)

NO. C 03-4469 MJJ C 03-2289 MJJ WEDNESDAY, JUNE 14, 2004 SAN FRANCISCO, CALIFORNIA

REPORTER'S TRANSCRIPT OF TELEPHONIC PROCEEDINGS APPEARANCES: FOR RICOH DICKSTEIN, SHAPIRO, MORIN & OSHINSKY, LLP 2101 L STREET, NW WASHINGTON, DC 20037 KENNETH W. BROTHERS, ESQUIRE

BY:

(FURTHER APPEARANCE ON FOLLOWING PAGE) REPORTED BY: JOAN MARIE COLUMBINI, CSR 5435 OFFICIAL COURT REPORTER COMPUTERIZED TRANSCRIPTION BY ECLIPSE JOAN MARIE COLUMBINI, CSR OFFICIAL COURT REPORTER 415-255-6842

APPEARANCES CONTINUED:

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07.14.04 Transcript of Telephone Status Conf w. Jenkins FOR SYSNOPSYS HOWREY, SIMON, ARNOLD & WHITE, LLP 301 RAVENSWOOD AVENUE MENLO PARK, CALIFORNIA 94025 BY: THOMAS C. MAVRAKAKIS, ESQUIRE ERIK K. MOLLER, ESQUIRE

JOAN MARIE COLUMBINI, CSR OFFICIAL COURT REPORTER 415-255-6842

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PROCEEDINGS; WEDNESDAY, JUNE 14, 2004

THE COURT:

WHO DO I HAVE ON THE LINE? THIS IS KEN BROTHERS WITH DICKSTEIN,

MR. BROTHERS:

SHAPIRO REPRESENTING RICOH. Page 2

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07.14.04 Transcript of Telephone Status Conf w. Jenkins 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 MR. MAVRAKAKIS: AND TOM MAVRAKAKIS AND ERIK MOLLER

OF HOWREY SIMON REPRESENTING SYNOPSYS AND THE DEFENDANTS. THE COURT: ANYONE ELSE? THERE'S NO ONE ON OUR END. THIS IS

MR. BROTHERS: KEN BROTHERS. MR. MAVRAKAKIS:

YOUR HONOR, I DON'T KNOW IF WE

HAVE A COURT REPORTER, BUT I'VE HOOKED UP THE ABILITY TO RECORD THIS IF YOU WISH, BUT I LEAVE THAT TO YOUR DISCRETION. THE COURT: WE HAVE A REPORTER. OKAY. THIS IS -- YOU SENT ME A LETTER

MR. MAVRAKAKIS: THE COURT: OKAY.

DATED JULY 9TH, RAISING TWO SEPARATE, BUT I SUSPECT FROM YOUR VIEW, PROBABLY INTERRELATED ISSUES. TUTORIAL THAT I'VE SCHEDULED. ONE HAS TO DO WITH THE

THE OTHER ONE HAS TO DO WITH

THE CLAIMS CONSTRUCTION HEARING THAT I'VE SCHEDULED. THERE SEEMS TO BE SOME MISUNDERSTANDING, AND PROBABLY BECAUSE, NORMALLY, WHEN I SET UP A CLAIMS CONSTRUCTION HEARING AND SET UP A SCHEDULE, THE TUTORIAL ASPECTS OF IT ALMOST ALWAYS INVOLVES THE PRESENTATION OF EXPERT TESTIMONY BUT NO QUESTIONING, NO EXAMINING, SAVE AND JOAN MARIE COLUMBINI, CSR OFFICIAL COURT REPORTER 415-255-6842

1 2 3 4 5 6 7 8

EXCEPT BY THE COURT. AND, NORMALLY, WHAT I ASK FOR, AND THIS HAS WORKED FOR SEVEN YEARS, IS THAT THE PATENT AT ISSUE, THE PATENT THAT IS ALLEGEDLY INFRINGED, THAT YOU PROVIDE A TUTORIAL JUST EXPLAINING HOW THAT PRODUCT WORKS. THAT'S ALL. NO OTHER

AUGMENTATION, NO REFERENCE TO ACCUSED PRODUCTS, NOTHING OF THAT NATURE. IT'S A VERY PLAINTIFF PRESENTATION. IT'S NOT RECORDED. IT'S

ALL SIDES ARE PRESENT. Page 3

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07.14.04 Transcript of Telephone Status Conf w. Jenkins 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 MAVRAKAKIS. NOT -- NO RECORD IS MADE OF THAT, SAVE AND EXCEPT IF YOU WANT TO PRESENT SOME EXHIBITS THAT WOULD HELP ME FOLLOW THROUGH THE EXPLANATION OF HOW THE PRODUCT WORKS. THAT'S ALL THAT HAPPENS AT THE TUTORIAL. ARE THERE ANY QUESTIONS ABOUT THAT? MR. BROTHERS: THIS IS KEN BROTHERS. NOT FOR US.

WE UNDERSTOOD IT WOULD BE A NON-ADVERSARIAL PRESENTATION AT THE TUTORIAL THAT WOULD FOCUS ON THE PATENT IN SUIT. MR. MAVRAKAKIS: AND, YOUR HONOR, THIS IS TOM

SO WOULD THAT MEAN THAT WE WOULD SPLIT TIME AND

EACH SIDE WOULD HAVE -THE COURT: WHY IS THERE A NEED TO SPLIT TIME? IT'S NOT ADVERSARIAL.

YOU SEE, HERE'S THE ISSUE: MR. MAVRAKAKIS: THE COURT: OKAY.

TO THE EXTENT THAT YOU HAVE SOME DO YOU THINK THAT

CONCERN -- I GUESS THE POINT WOULD BE THIS:

YOUR -- YOU WANT TO PUT ON SOMEBODY WHO WILL EXPLAIN HOW THE JOAN MARIE COLUMBINI, CSR OFFICIAL COURT REPORTER 415-255-6842

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PRODUCT WORKS, AND THAT'S GOING TO BE DIFFERENT THAN THE OTHER SIDE? THE PURPOSE OF IT IS NOT TO CREATE ISSUES. THE PURPOSE

OF IT IS JUST TO WALK THROUGH HOW IT WORKS. IS THERE A DISAGREEMENT ABOUT THAT? MR. MAVRAKAKIS: WELL, I THINK THAT THERE MAY BE

SOME DISAGREEMENT, YOUR HONOR -THE COURT: WHAT IS IT? -- BETWEEN THE PARTIES ABOUT WHAT

MR. MAVRAKAKIS:

THE PATENT DESCRIBES AND DISCLOSES. THE COURT: NO, NO, WE'RE NOT TALKING ABOUT

DISCLOSURES IN TERMS OF INTERPRETATION OF TERMS, JUST HOW IT Page 4

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07.14.04 Transcript of Telephone Status Conf w. Jenkins 12 13 14 15 16 17 18 19 20 21 22 23 24 25 WORKS. THAT'S ALL. MR. MAVRAKAKIS: THE COURT: HOW THE --

IT'S A 3-D SORT OF DIMENSIONAL

PRESENTATION VISUALLY OF HOW IT OPERATES. MR. MAVRAKAKIS: WHEN YOU SAY "HOW IT OPERATES,"

YOU'RE REFERRING TO THE EMBODIMENT IN THE PATENT? THE COURT: I'M REFERRING TO HOW WHATEVER THE

PATENT TEACHES, HOW THAT ACTUALLY IN THREE-DIMENSIONAL REAL TIME WORKS. NOTHING MORE. I THINK YOU HAVE A DIFFERENT VIEW OF WHAT TRANSPIRES AT THE TUTORIAL. THIS IS NOT A PLACE TO ARGUE

WHETHER OR NOT THE LANGUAGE IN CLAIMS CAN BE INTERPRETED IN DIFFERENT WAYS. GOING TO SEE. JOAN MARIE COLUMBINI, CSR OFFICIAL COURT REPORTER 415-255-6842 THAT'S FAR REMOVED FROM WHAT I'M ACTUALLY

1 2 3 4 5 6 7 8 9 10 11 12 13 14

MANY TIMES, FOR EXAMPLE, YOU KNOW, I'VE HAD PATENTS THAT INVOLVE THE SELECTION OF ICONS AND THE STORING OF INFORMATION OF DATA, AND THEY JUST BRING IN A PRESENTATION THAT SHOWS VISUALLY HOW THE PATENT DOES THAT, NOTHING MORE. MR. MAVRAKAKIS: AND YOU'RE SAYING THAT SHOULD BE

DONE BY THE PLAINTIFF AND NOT DEFENDANT? THE COURT: THAT'S NORMALLY HOW IT'S DONE. BUT IF

YOU WANT TO PUT ON SOMETHING THAT ESTABLISHES, IN YOUR VIEW, HOW IT WORKS, SO BE IT. I CAN'T SEE WHERE THERE SHOULD BE

SIGNIFICANT DISPARITIES FOR THAT. MR. MAVRAKAKIS: CONFER AND TRY TO COME UP -THE COURT: NORMALLY, THEY DO. NORMALLY, THEY MEET MAYBE THE PARTIES SHOULD MEET AND

AND CONFER AND SHOW EACH OTHER WHAT THEIR RESPECTIVE SIDE IS Page 5

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07.14.04 Transcript of Telephone Status Conf w. Jenkins 15 16 17 18 19 20 21 22 23 24 25 HONOR. THE COURT: I DON'T KNOW THAT YOU DO, BUT IF PAST. GOING TO PUT ON. MR. MAVRAKAKIS: OKAY. SO YOU ENVISION SOMETHING

LIKE A POWER POINT PRESENTATION THAT JUST SHOWS -THE COURT: THAT'S WHAT PEOPLE HAVE DONE IN THE I DON'T KNOW WHAT THE

I DON'T KNOW ABOUT THIS PATENT.

BEST WAY WOULD BE.

BUT THAT'S WHAT PEOPLE HAVE DONE IN THE

PAST SEVEN YEARS I HAVE BEEN HERE, WITHOUT INCIDENT. MR. MAVRAKAKIS: RIGHT. I UNDERSTAND THAT, YOUR

THERE'S A PROBLEM -- I MEAN, IT STRIKES ME THAT THE PRESENTING JOAN MARIE COLUMBINI, CSR OFFICIAL COURT REPORTER 415-255-6842

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SIDE -- I'M NOT SAYING YOU CANNOT.

IF YOU WANT TO PRESENT

SOMEONE WHO WILL ARTICULATE HOW THE PRODUCT WORKS, THE PATENT IN SUIT, SO BE IT. I DON'T HAVE A PROBLEM WITH THAT. BUT

EACH OF YOU SHOULD EXCHANGE PRIOR IN TIME WHAT IT IS YOU PLAN TO PRESENT AND THE INDIVIDUAL WHO IS GOING TO MAKE THE PRESENTATION SO THAT YOU'RE FAMILIAR WITH IT. FINE. MR. MAVRAKAKIS: OKAY. I MEAN, I THINK -- YEAH, I I THINK THAT'S

MEAN, I THINK THAT'S WHAT I ENVISIONED AT THE CLAIM CONSTRUCTION TUTORIAL, IS EACH SIDE WOULD HAVE AN EXPERT PRESENT BACKGROUND INFORMATION ABOUT THE PATENT EMBODIMENT, HOW IT WORKS. AND WE'RE CERTAINLY WILLING TO MEET AND CONFER WITH THE OTHER SIDE AND COME TO SOME SORT OF AGREEMENT AS TO A SCHEDULE FOR EXCHANGING OUR RESPECTIVE PRESENTATIONS, AND AT THAT TIME WE COULD EVEN MEET AND CONFER AND TRY AND SEE IF MAYBE WE CAN AGREE TO ONE PRESENTATION. Page 6 DOES THAT SOUND --

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07.14.04 Transcript of Telephone Status Conf w. Jenkins 18 19 20 21 22 23 24 25 THE COURT: WHAT YOU'RE RAISING. I HAVE NEVER HAD THAT PROBLEM BEFORE, NO ONE HAS EVER TURNED THIS INTO AN

ADVERSARY SORT OF ISSUE-ORIENTED PRESENTATION, BUT IF THAT'S WHAT YOU WANT TO DO, I DON'T HAVE A PROBLEM WITH IT. ALL I WANT TO DO IS GET A BETTER UNDERSTANDING SO YOU DON'T HAVE TO SPEND AN HOUR OR TWO IN YOUR PRESENTATION AT THE CLAIMS CONSTRUCTION HEARING SHOWING ME YOUR VIEW OF HOW IT WORKS. JOAN MARIE COLUMBINI, CSR OFFICIAL COURT REPORTER 415-255-6842

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MR. MAVRAKAKIS: THE COURT:

I UNDERSTAND.

THAT'S WHAT IT INTENDS TO OBVIATE.

NOW, THE SECOND PROBLEM OR THE SECOND ISSUE -- LET ME JUST GIVE YOU SORT OF MY GENERAL RULES OF HOW THESE THINGS OCCUR. FIRST, I HAVE NEVER AND DON'T ANTICIPATE HAVING LIVE WITNESS TESTIMONY FROM ANY EXPERT AT A CLAIMS CONSTRUCTION HEARING. MR. MAVRAKAKIS: THE COURT: OKAY.

SECONDLY, IT'S DIFFICULT -- AND THIS IS IT'S ALWAYS DIFFICULT

PROBABLY WHERE THE AMBIGUITY CAME IN.

FOR ME TO TELL WHETHER I'M GOING TO NEED TO HAVE EXPERT DECLARATIONS, THE USE OF EXTRINSIC EVIDENCE IN CONSTRUING THE TERMS OF THE PATENT. IT'S HARD TO KNOW THAT WITHOUT DELVING

INTO THE BRIEFS, WHICH I'M NOT ABLE TO DO THAT WHEN I SET THE SCHEDULE. SO, NORMALLY, WHAT I DO IS SET IT UP SO THAT IF YOU FOLKS REALLY DRIVE THE VEHICLE, IF YOU FEEL THAT THERE'S GOING TO BE A NEED FOR EXPERT TESTIMONY, YOU DISCLOSE THE EXPERTS WHO ARE GOING TO TESTIFY WITH RESPECT TO THE CLAIMS IN Page 7

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07.14.04 Transcript of Telephone Status Conf w. Jenkins 21 22 23 24 25 DISPUTE. YOU NORMALLY TAKE THOSE DEPOSITIONS PRIOR IN TIME SO THEN YOU

EACH SIDE HAS HAD A CHANCE TO EXAMINE THOSE EXPERTS.

SUBMIT DECLARATIONS, WRITTEN DECLARATIONS, WHICH I THEN WILL DETERMINE WHETHER I CAN CONSIDER OR NOT, BUT NO LIVE TESTIMONY, NO LIVE EXAMINATION. THAT'S DONE IN DEPOSITIONS

JOAN MARIE COLUMBINI, CSR OFFICIAL COURT REPORTER 415-255-6842

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PRIOR IN TIME. MR. MAVRAKAKIS: THE COURT: YOUR HONOR -THERE'S SOME

SO IT WAS NOT YOUR FAULT.

BUILT-IN AMBIGUITY, BECAUSE AT THE TIME THAT THE HEARING IS SET, REALLY UP TO TWO OR THREE WEEKS BEFORE THE HEARING, I HAVEN'T READ THE BRIEFS, SO I CAN'T MAKE THAT DETERMINATION. IT'S NOT YOUR FAULT. BUT THAT'S HOW I CONDUCT THEM. YOUR HONOR, THIS IS TOM

MR. MAVRAKAKIS: MAVRAKAKIS.

COULD I ASK A QUESTION OF CLARIFICATION? THE COURT: SURE. THE THING THAT I GET CONCERNED

MR. MAVRAKAKIS:

ABOUT, AND I'VE DONE A FEW OF THESE UNDER THE LOCAL RULES, IS THAT, YOU KNOW, THE JOINT CLAIM CONSTRUCTION CHART IS SUPPOSED TO SET OUT THE RECORD. THE COURT: RIGHT. -- THAT BOTH PARTIES HAVE

MR. MAVRAKAKIS:

EVERYTHING THEY NEED TO WRITE THEIR BRIEFS. AND WHAT HAS HAPPENED IS THAT THE WORDS OF THE RULES SAY TESTIMONY AT THE CLAIM CONSTRUCTION HEARING -- AND, YOU KNOW, I'VE LIVED AND BEEN SANDBAGGED, YOU KNOW, TWO WEEKS BEFORE MY OPPOSITION IS DUE WITH THE 50-PAGE EXPERT DECLARATION, AND THEN, YOU KNOW, THE PARTY IS TELLING ME THAT, WELL, THE EXPERT IS NOT AVAILABLE, AND THEN I HAVE TO FILE MY Page 8

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07.14.04 Transcript of Telephone Status Conf w. Jenkins 24 25 OPPOSITION WITHOUT HAVING THE CHANCE TO, YOU KNOW, TAKE THE DEPOSITION OF THIS EXPERT THAT'S NOW FILED A 50-PAGE JOAN MARIE COLUMBINI, CSR OFFICIAL COURT REPORTER 415-255-6842 1 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 DECLARATION. THE COURT: I DON'T KNOW WHERE YOU HAVE BEEN. I

WOULDN'T ALLOW THAT TO HAPPEN. MR. MAVRAKAKIS: THE COURT:

THERE WOULD BE NO SANDBAGGING. BECAUSE THE RULE SAYS --

OKAY.

IT DOESN'T MATTER WHAT THE RULE SAYS. I'M TELLING YOU HOW I DO IT. OKAY.

I KNOW WHAT THE RULE SAYS. MR. MAVRAKAKIS: THE COURT:

IT'S NOT EFFICIENT TO TAKE LIVE WITNESS

TESTIMONY IN A CLAIMS CONSTRUCTION HEARING WHEN YOU FOLKS CAN DO THAT UP FRONT. I UNDERSTAND YOU HAVE CONCERNS, AND THEY MAKE SENSE TO ME, ABOUT THE TIMING OF GETTING INFORMATION TO MAKE SURE YOU'VE HAD A CHANCE TO REALLY FULLY EXAMINE THE OPINIONS THAT ARE GOING TO BE GIVEN AND THE BASIS THEREFORE. AND, NORMALLY,

WHAT HAPPENS IS ONCE YOU GET A CHANCE TO SEE WHAT THE DISPUTED TERMS ARE, WHAT THE BASIS IN THE PATENT IS FOR THE PROPOSED CLAIMS INTERPRETATIONS, WHETHER OR NOT, YOU KNOW, THAT WILL PEND ON EXPERT TESTIMONY OR NOT, THEN USUALLY THERE'S ENOUGH TIME IN THAT SCHEDULE FOR YOU TO TAKE THE DEPOSITIONS OF THOSE PEOPLE, ALSO, IF YOU FEEL LIKE YOU NEED TO, AND THAT'S WHAT I WOULD SUGGEST TO YOU IN THIS CASE. BUT WE WOULDN'T BRING THOSE PEOPLE IN FOR LIVE WITNESS TESTIMONY ON TOP OF WHAT THEY'VE ALREADY PUT IN THEIR REPORTS. I JUST DON'T KNOW WHETHER THAT'S GOING TO BE NEEDED IT'S DIFFICULT FOR ME TO TELL YOU THAT, BUT

OR NOT, YOU KNOW.

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07.14.04 Transcript of Telephone Status Conf w. Jenkins JOAN MARIE COLUMBINI, CSR OFFICIAL COURT REPORTER 415-255-6842 1 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 I CAN TELL YOU, DESPITE WHAT THE LOCAL RULE SAYS, THAT THE EXCHANGE OF EXPERT OPINIONS AND REPORTS AND DEPOSITIONS OUGHT TO OCCUR PRIOR IN TIME. MR. MAVRAKAKIS: SO ACCORDING -- SO, IN OTHER

WORDS, THE EXPERTS' SUMMARY OPINIONS, EVEN IF THE EXPERT TESTIMONY IS GOING TO BE PROVIDED IN WRITTEN FORM ONLY IN DECLARATION, SHOULD BE EXCHANGED AT THE TIME OF THE JOINT CLAIM CONSTRUCTION CHART? THE COURT: I THINK YOU SHOULD -- WE BUILD THAT IN

SO NOBODY IS SANDBAGGED. MR. BROTHERS: YOUR HONOR, THIS IS KEN BROTHERS. I

GUESS I'M A LITTLE BIT UNCLEAR WITH RESPECT TO THE TIMING FOR THE WHOLE PROCESS. YOU HAD EARLIER REFERENCED THAT SOME OF THESE, THE EXPERT DECLARATIONS, BE PROVIDED IN CONJUNCTION WITH THE BRIEFING SCHEDULE, WHICH IS IN LATE AUGUST AND SEPTEMBER, BUT IS IT YOUR -- THE COURT'S DESIRE THAT -THE COURT: IT STRIKES ME THAT IF YOU'RE GOING TO

RELY -- AND I JUST DON'T KNOW, BUT IF -- IS IT SAFE TO ASSUME THAT EACH OF YOU BELIEVES THAT THE COURT NEEDS TO RESORT TO EXTRINSIC EVIDENCE INCLUDING THE OPINIONS OF EXPERTS TO CONSTRUE THE TERMS HERE? MR. BROTHERS: WELL, RICOH HAD UNDERSTOOD YOUR

EARLIER COMMENTS TO BE THAT THE COURT WOULD NOT RECEIVE EXPERT TESTIMONY AT THE CLAIM CONSTRUCTION HEARING. JOAN MARIE COLUMBINI, CSR OFFICIAL COURT REPORTER 415-255-6842 1

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07.14.04 Transcript of Telephone Status Conf w. Jenkins THE COURT: I NORMALLY DON'T. MR. BROTHERS: BECAUSE OF THAT, WE WERE PROCEEDING

TO CONSTRUE THE CLAIMS WITHOUT RELIANCE UPON AN EXPERT, WHEN IT BECAME CLEAR TO RICOH THAT SYNOPSYS AND THE DEFENDANTS WERE INTENDING TO PROVIDE EXPERT TESTIMONY, AND WE IDENTIFIED THE DIFFERENCE IN OPINIONS BECAUSE IT WAS -THE COURT: LET ME JUST -- MAYBE IT'S MORE VICTRONICS SAYS THE COURT

FUNDAMENTAL THAN EVEN I THINK.

DOESN'T GO TO THAT EVIDENCE IF IT DOESN'T HAVE TO. MR. BROTHERS: THE COURT: THAT'S CORRECT.

SO THAT'S MY RULE OF THUMB, THAT THERE

HAS TO BE A SHOWING AS TO WHY THE COURT CAN'T CONSTRUE THE TERMS BASED ON THE INTRINSIC EVIDENCE. WE DON'T GO TO

EXTRINSIC EVIDENCE UNLESS THAT'S NECESSARY. MR. BROTHERS: IT WOULD BE RICOH'S VIEW THAT NO

EXTRINSIC EVIDENCE WOULD BE NECESSARY; HOWEVER, IF OUR -THE COURT: THEN LET'S DO THIS THEN: I THINK THIS

IS THE ONLY WAY TO RESOLVE IT, AND IT WILL SAVE YOU FOLKS SOME TIME AND MONEY. I'M NOT GOING TO RECEIVE ANY EXPERT TESTIMONY ON CONSTRUCTION OF THESE TERMS. IF ONCE I GET INTO THE BRIEFS

AND IN THE HEARING IT APPEARS TO ME I NEED THAT ASSISTANCE, I'LL SET UP A TIME FOR THAT. MR. BROTHERS: MR. MAVRAKAKIS: VERY GOOD, YOUR HONOR. YOUR HONOR, THIS IS TOM

JOAN MARIE COLUMBINI, CSR OFFICIAL COURT REPORTER 415-255-6842 1 1 2 3 MAVRAKAKIS. I THINK THAT THERE -- AND OUR POSITION IS THAT

THERE ARE TERMS OF ART IN THIS PATENT THAT DO REQUIRE TESTIMONY AND EXTRINSIC EVIDENCE. Page 11

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07.14.04 Transcript of Telephone Status Conf w. Jenkins THE COURT: YOU MIGHT BE RIGHT, BUT I'M NOT GOING TO MAKE THAT DETERMINATION TODAY. I'LL HAVE TO READ THE

BRIEFS MYSELF AND SEE IF I COME TO THAT CONCLUSION. MR. MAVRAKAKIS: THE COURT: EFFORT. MR. MAVRAKAKIS: AND THERE'S SOME CASE LAW THAT I UNDERSTAND THAT.

THAT WILL SAVE YOU GUYS SOME TIME AND

SAYS WHEN YOU HAVE TERMS OF ART, THAT IT'S ERROR NOT TO CONSIDER THIS EXPERT TESTIMONY TO MAKE SURE. THE COURT: WHAT ARE YOU TRYING TO TELL ME? WHAT

ARE YOU TRYING TO TELL ME?

I HAVE NOT -- YOU CONTINUE TO

ENGAGE IN THIS MANTRA, AND I'VE TOLD YOU I HAVEN'T READ THE BRIEFS. YOU MAY BE RIGHT. I MAY HAVE TO PULL IT OFF THE

TABLE AND SAY, YOU KNOW, HE'S ABSOLUTELY RIGHT, IT'S A TERM OF ART, I NEED ASSISTANCE, BUT I CAN'T DO THAT TODAY. MR. MAVRAKAKIS: MY ONLY CONCERN, YOUR HONOR, IS SO MY CONCERN IS THAT

THAT I INTEND TO SUBMIT A DECLARATION.

EVERYTHING IS ON EQUAL FOOTING SO IF WE HAVE TO -THE COURT: I'M TELLING YOU NOW I'M NOT GOING TO YOU MAY BE DOING THAT,

CONSIDER IT UNTIL I SEE A NEED FOR IT. AND IT MAY BE IRRELEVANT. MR. MAVRAKAKIS:

I UNDERSTAND THAT.

JOAN MARIE COLUMBINI, CSR OFFICIAL COURT REPORTER 415-255-6842

1

1 2 3 4 5 6

THE COURT:

OKAY. I UNDERSTAND. I'D LIKE TO MAKE MY

MR. MAVRAKAKIS:

RECORD THAT WAY, BUT MY ONLY CONCERN IS THAT IF I'M GOING TO SEE AN EXPERT DECLARATION FROM THE OTHER SIDE, THAT I SEE IT IN A TIMELY MANNER. THE COURT: YOU ARE THE ONE THAT'S SETTING THIS Page 12

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7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25

07.14.04 Transcript of Telephone Status Conf w. Jenkins ISSUE UP BY DOING WHAT YOU THINK THE LAW SAYS YOU HAVE A RIGHT TO DO AND YOU NEED TO DO. BUT THE FACT OF THE MATTER IS IF I

ULTIMATELY AGREE WITH YOU, THEN I WOULD HAVE TO GIVE THE OTHER SIDE SOME TIME TO RESPOND, AND, OF COURSE, YOU'D HAVE A CHANCE TO RESPOND TO WHAT THEY PROVIDE, AND IT JUST WILL ELONGATE THE PROCESS. MR. BROTHERS: THIS IS KEN BROTHERS. WITH THE

UNDERSTANDING THAT RICOH -- IF THE JUDGE FEELS THAT EXPERT TESTIMONY MAY BE NEEDED, THAT RICOH COULD BE GIVEN AN OPPORTUNITY TO RESPOND. THE COURT: ABSOLUTELY. YES, WE ARE PREPARED TO PROCEED AT

MR. BROTHERS:

PRESENT WITHOUT SUBMITTING ANY EXTRINSIC EVIDENCE AND PROCEEDING AS THE COURT SUGGESTED. THE COURT: RIGHT. AND IF WE GET TO THAT ISSUE,

THEN I'LL DEAL WITH IT IN A WAY THAT'S FAIR TO BOTH SIDES. MR. MAVRAKAKIS: OKAY.

SO, YOUR HONOR, JUST ONE MORE POINT OF CLARIFICATION. IF I WANT TO PUT IN EXPERT TESTIMONY IN THE JOAN MARIE COLUMBINI, CSR OFFICIAL COURT REPORTER 415-255-6842 1

1 2 3 4 5 6 7 8 9

FORM OF A DECLARATION, THEN I SHOULD DO SO IN MY -- IN SUPPORT OF MY OPPOSITION. THE COURT: IF THAT'S WHERE YOU THINK IT I TOLD YOU I'M NOT GOING TO

APPROPRIATELY GOES, SO BE IT.

CONSIDER IT IN THE FIRST INSTANCE, BUT YOU CAN SUBMIT IT. MR. MAVRAKAKIS: THE COURT: OKAY.

ALL RIGHT. THANK YOU, YOUR HONOR.

MR. BROTHERS: THE COURT:

ALL RIGHT. Page 13

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07.14.04 Transcript of Telephone Status Conf w. Jenkins (PROCEEDINGS ADJOURNED.)

JOAN MARIE COLUMBINI, CSR OFFICIAL COURT REPORTER 415-255-6842

CERTIFICATE OF REPORTER I, JOAN MARIE COLUMBINI, OFFICIAL REPORTER FOR THE UNITED STATES COURT, NORTHERN DISTRICT OF CALIFORNIA, HEREBY CERTIFY THAT THE FOREGOING PROCEEDINGS IN C 03-4660 MJJ AND 03-03-2289, RICOH COMPANY LTD. V. AEROFLEX, ET AL., AND SYNOPSYS, INC. V. RICOH COMPANY, LTD., PAGES NUMBERED 1 THROUGH 15, WERE REPORTED BY ME, A CERTIFIED SHORTHAND REPORTER, AND WERE THEREAFTER TRANSCRIBED UNDER MY DIRECTION INTO TYPEWRITING; THAT THE FOREGOING IS A FULL, COMPLETE AND Page 14

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07.14.04 Transcript of Telephone Status Conf w. Jenkins TRUE RECORD OF SAID PROCEEDINGS AT THE TIME OF FILING. THE INTEGRITY OF THE REPORTER'S CERTIFICATION OF SAID TRANSCRIPT MAY BE VOID UPON REMOVAL FROM THE COURT FILE.

___________________________________ JOAN MARIE COLUMBINI, CSR 5435

JOAN MARIE COLUMBINI, CSR OFFICIAL COURT REPORTER 415-255-6842

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22

Gary M. Hoffman (Pro Hac Vice) Kenneth W. Brothers (Pro Hac Vice) Eric Oliver (Pro Hac Vice) DICKSTEIN SHAPIRO MORIN & OSHINSKY LLP 2101 L Street, NW Washington, DC 20037-1526 Phone (202) 785-9700 Fax (202) 887-0689 Edward A. Meilman (Pro Hac Vice) DICKSTEIN SHAPIRO MORIN & OSHINSKY LLP 1177 Avenue of the Americas New York, New York 10036-2714 Phone (212) 835-1400 Fax (212) 997-9880 Jeffrey B. Demain, State Bar No. 126715 Jonathan Weissglass, State Bar No. 185008 ALTSHULER, BERZON, NUSSBAUM, RUBIN & DEMAIN 177 Post Street, Suite 300 San Francisco, California 94108 Phone (415) 421-7151 Fax (415) 362-8064 Attorneys for Ricoh Company, Ltd. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION RICOH COMPANY, LTD., Plaintiff, vs. AEROFLEX INCORPORATED, et al., Defendants. SYNOPSYS, INC., ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) CASE NO. C-03-4669-MJJ (EMC)

CASE NO. C-03-2289-MJJ (EMC) RICOH'S CLAIM CONSTRUCTION OPENING BRIEF Date: October 20, 2004 Time: 2:30 p.m. Courtroom: 11

23 Plaintiff, 24 vs. 25 RICOH COMPANY, LTD., 26 Defendant. 27 28

CASE NOS. C-03-4669-MJJ (EMC) and C-03-2289-MJJ (EMC) RICOH'S CLAIM CONSTRUCTION OPENING BRIEF

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1 2

TABLE OF CONTENTS Page

3 TABLE OF AUTHORITIES ......................................................................................................... iv 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 B. 21 22 23 24 25 26 27 28
CASE NOS. C-03-4669-MJJ (EMC) and C-03-2289-MJJ (EMC) - Page i RICOH'S CLAIM CONSTRUCTION OPENING BRIEF

I. II. III. IV. V.

INTRODUCTION ...................................................................................................1 PROCEDURAL BACKGROUND .........................................................................2 FACTUAL BACKGROUND..................................................................................2 LEGAL STANDARD .............................................................................................7 ANALYSIS .............................................................................................................9 A. Claim 13: Preamble.................................................................................... 9 1. 2. Ricoh's Construction .................................................................... 10 Defendants' Construction ............................................................. 11 a. b. "computer-aided design process" ..................................... 12 "ASIC".............................................................................. 13

Claim 13: Element [1].............................................................................. 14 1. 2. Ricoh's Construction .................................................................... 14 Defendants' Construction ............................................................. 17 a. b. "actions and conditions" ................................................... 17 "architecture independent"................................................ 18

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1 2 3

c.

"a set of definitions of architecture independent actions and conditions" ..................................................... 22

d. 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 1. 22 23 24 25 26 27 28 F. 2. E. b. c. 2. D. 1. 2. C.

"storing"............................................................................ 22

Claim 13: Element [2].............................................................................. 23 Ricoh's Construction .................................................................... 24 Defendants' Construction ............................................................. 25

Claim 13: Element [3].............................................................................. 26 1. Ricoh's Construction .................................................................... 27 Defendants' Construction ............................................................. 29 a. "expert system"................................................................. 29 "knowledge base" ............................................................. 31 "a set of rules for selecting hardware cells to perform the actions and conditions" ................................. 31 Claim 13: Element [4].............................................................................. 32 Ricoh's Construction .................................................................... 32 Defendants' Construction ............................................................. 34

Claim 13: Element [5].............................................................................. 37 1. Ricoh's Construction .................................................................... 37

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1 2 G. 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 J. I. H.

2.

Defendants' Construction ............................................................. 39

Claim 13: Element [6].............................................................................. 40 1. 2. Ricoh's Construction .................................................................... 41 Defendants' Construction ............................................................. 45

Claim 14.................................................................................................... 47 1. 2. Ricoh's Construction .................................................................... 47 Defendants' Construction ............................................................. 48

Claim 15.................................................................................................... 48 1. 2. Ricoh's Construction .................................................................... 49 Defendants' Construction ............................................................. 49

Claim 16.................................................................................................... 50 1. 2. Ricoh's Construction .................................................................... 50 Defendants' Construction ............................................................. 51

20 21 22 23 24 25 26 27 28
CASE NOS. C-03-4669-MJJ (EMC) and C-03-2289-MJJ (EMC) - Page iii RICOH'S CLAIM CONSTRUCTION OPENING BRIEF

K.

Claim 17.................................................................................................... 51 1. 2. Ricoh's Construction .................................................................... 51 Defendants' Construction ............................................................. 52

VI.

CONCLUSION .....................................................................................................53

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Other Authorities: Cases:

TABLE OF AUTHORITIES Page

Eastman Kodak Co. v. Goodyear Tire & Rubber Co., 114 F.3d 1547 (Fed. Cir. 1997), abrogated on other grounds by Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998).................................................................................................................. 36-37 Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327 (Fed. Cir. 2004) ...................................8, 21 Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996) ...........................................................................................7, 8, 9, 37 Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) ......................................................7 Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314 (Fed. Cir. 2003).......................................8, 21 Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211 (Fed. Cir. 1995)...........................................8 SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107 (Fed. Cir. 1985) ....................... passim Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565 (Fed. Cir. 1991)...............19 Sunrace Roots Enter. Co. v. SRAM Corp., 336 F.3d 1298 (Fed. Cir. 2003).............................8, 21 Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313 (Fed. Cir. 2002)....................................7, 34 Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002), cert. denied, 538 U.S. 1058 (2003) .................................................................................. passim Union Oil Co. v. Atl. Richfield Co., 208 F.3d 989 (Fed. Cir. 2000) .............................................19 Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) .................................. passim ZMI Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576 (Fed. Cir. 1988) ..................................29 Zimmer, Inc. v. Howmedica Osteonics Corp., No. 03-1428, 2004 U.S. App. LEXIS 10598 (Fed. Cir. May 26, 2004) ...................................................................................... passim

IBM Dictionary of Computing.......................................................................................................23 IEEE Standard Dictionary of Electrical and Electronics Terms, Fourth Edition (1988)...............11 Merriam-Webster's Ninth New Collegiate Dictionary (1987) .............................................. passim

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1 2

I.

INTRODUCTION Now before the Court in this matter is the claim construction of claims 13-17 of

3 4

U.S. Patent No. 4,922,432 ("the `432 patent") (RCL002929-54) (attached as Exhibit No. 1).1 Claims 13-17 are directed to a process for the design and production of application specific

5 integrated circuits ("ASICs"). 6 This matter is centered around the infringement of the `432 patent by Aeroflex, Inc. 7 and Aeroflex Colorado Springs, Inc. (collectively "Aeroflex"); AMI Semiconductor, Inc.; and 8 Matrox Graphics, Inc., Matrox Tech, Inc., Matrox Electronic Systems, Ltd., and Matrox 9 International Corp. (collectively "Matrox"); all of these parties are referred to as "the ASIC 10 Defendants." Ricoh Company, Ltd. ("Ricoh") alleges that the ASIC Defendants infringe claims 11 13-17 of the `432 patent based primarily on their use of certain software products provided by 12 Synopsys, Inc. ("Synopsys") and the ASIC Defendants' own independent decisions relating to 13 the design and manufacture of ASICs. (For simplification, the ASIC Defendants and Synopsys 14 will be collectively referred to herein as "Defendants.") 15 Ricoh proposes a construction of claims 13-17 of the `432 patent that is based on the 16 ordinary and customary meaning of the claim language consistent with the public record of the 17 `432 patent (i.e., claims, specification, and file history). The public record of the `432 patent is 18 unambiguous in describing the scope of claims 13-17, and thus, there is no need to consider or 19 rely on extrinsic evidence to properly construe the claims. 20 Defendants, on the other hand, propose to narrowly confine the scope of the claims in 21 a manner that is inconsistent with the well-established law of claim construction. They 22 repeatedly propose constructions that would restrict the claims to exemplary embodiments 23 detailed in the `432 patent, or that would impose new limitations on the claims that appear 24 framed simply to support their non-infringement theories for use later at trial. As shown below, 25 26 27 28
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All of the exhibits referred to herein are attached to the Declaration of Eric Oliver in Support of Ricoh's Claim Construction Opening Brief, which is filed simultaneously herewith.

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these positions are inconsistent with the public record of the `432 patent and the application of the relevant law. II. PROCEDURAL BACKGROUND By the Order dated July 22, 2004, the Court has explicitly indicated that no extrinsic evidence should be introduced or relied on for this claim construction proceeding. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (attached as Exhibit C1) ("[W]here the public record unambiguously describes the scope of the patented invention, reliance on any extrinsic evidence is improper."). Nevertheless, Defendants' positions (as set forth in Exhibit A of the Joint Claim Construction And Prehearing Statement filed July 16, 2004 ("JCC Statement") (JCC Statement Exhibit A attached as Exhibit No. 2)) are heavily dependent on extrinsic evidence, particularly the Declaration of their expert Dr. Thaddeus J. Kowalski. Although Defendants repeatedly attempt to inject extrinsic evidence into their claim construction arguments, this effort is inconsistent with the Court's clear direction as well as Vitronics. In this brief, Ricoh has not attempted to address Defendants' extrinsic evidence. Ricoh maintains that the Court need not ever consider such extrinsic evidence because the public record in this case is unambiguous with respect to the claim language of claims 13-17 of the `432 patent. III. FACTUAL BACKGROUND2 The `432 patent's subject matter was the joint conception of Mr. Hideaki Kobayashi of International Chip Corporation ("ICC") and Mr. Masahiro Shindo of Ricoh. The patent was filed in 1988 and issued in 1990. During this period, the patent was jointly owned by Ricoh and ICC. Ultimately, ICC was renamed Knowledge Based Silicon Corporation ("KBSC"). In 2001,

Should the Court deem it necessary, Ricoh is prepared to provide a Declaration or other evidence supporting any facts provided in this Factual Background Section.

2

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KBSC assigned its legal interest in the `432 patent to Ricoh, making Ricoh the sole owner of the patent. Ricoh conducts global-scale activities including development, production, marketing, after-sales service, and recycling of office equipment, including copiers and printers, information technology equipment, optical devices, and other electronic equipment in regions around the world. As part of these activities, Ricoh manufactures ASICs for use in a variety of products. Ricoh's involvement in ASIC manufacturing is what in large part led to its joint effort with ICC to develop an improved process for designing and producing ASICs. The innovative nature of Ricoh and ICC's efforts was recognized by the United States Patent and Trademark Office, prompting the issuance of the `432 patent. The ASIC design process at issue here is used as part of the overall process of manufacturing ASICs. ASICs are used in products for a variety of applications, such as in consumer products (e.g., cell phones, digital cameras, and other video equipment), communications and electronic data processing products, industrial products (e.g., in applications involving electrical noise, and high voltage applications), aerospace and defense products, medical imaging products, automotive products, and many other products that require integrated circuits designed to perform a specific function. At the beginning of the manufacturing process, ASICs are often created by a design team, in which each designer (or each group of designers) designs a designated section of the ASIC. This effort involves the designer describing tasks that the ASIC is to perform. Often, the designer's description is called a "specification." When produced, the ASIC described in the specification is made up of a multitude of interconnected hardware cells used to perform the functions required of the ASIC. The process of selecting these hardware cells based on the designer's specification is called "synthesis." The `432 patent is directed to an improved process for synthesizing ASICs. Historically, as part of the design phase of the manufacturing process, highly skilled design engineers, having specialized knowledge of very large scale integration ("VLSI"), would

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create structural level design specifications that defined the various hardware components required to perform the desired functions of the ASIC. These types of design specifications can be referred to as "architecture dependent" design specifications because they set out a definite structure that is used in the specification itself. The creation of these architecture dependent design specifications required extensive knowledge of the various hardware components that were to make up the ASIC, as well as details of the implementation (e.g., interconnection requirements, signal level compatibility, timing compatibility, and physical layout of hardware components). Describing ASICs at the structural level not only was time-consuming and expensive, but provided limited flexibility in the design process and required a designer who has specialized VLSI knowledge. These shortcomings were incompatible with the rising commercial demand for more complex ASICs having increased numbers of components and faster time to market requirements. One way of meeting some of these rising market demands was to simplify the design phase of the process so that those without specialized skill in VLSI design could more readily design the ASICs. In accomplishing this, the patentee recognized that it was important both to raise the level of abstraction of the ASIC input specifications and to develop computer aided design ("CAD") systems for receiving such input specifications and selecting hardware cells to be used in the ASICs. Specifically, the process needed to be one where the input specification did not require traditional, architecture dependent descriptions (e.g., structural flowcharts, Boolean equations, etc.).3 The associated CAD system needed to be one that could receive the desired higher level input descriptions and that could synthesize these descriptions to architecture dependent hardware cells to lead to the production of the ASIC.

"Structural flowcharts" describe the flow of information between structures in a circuit. "Boolean equations" describe a logical combinatorial system (as Boolean algebra) that represents symbolically relationships (as those implied by the logical operators AND, OR, and NOT) between entities (as sets, propositions, or on-off computer circuit elements, etc.).

3

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The invention recited in claims 1-20 of the `432 patent is the culmination of the patentee's efforts to meet these needs. It enables the use of higher level input descriptions by allowing designers to describe ASIC specifications at a functional level. This functional level is done without specification of structure, implementing technology or architecture (i.e., an "architecture independent" level). The unique process also provides a novel process of taking such architecture independent specifications and selecting previously designed circuit components or structure used as building blocks for implementing in an ASIC (i.e., "hardware cells"). The process selects the optimum hardware cells to be included in the desired ASIC. In this way, even a user who does not have expertise in VLSI design can write architecture independent ASIC descriptions that ultimately can result in the automatic selection of hardware cells to be used in the ASIC. The utilization of various aspects of the innovative process of the `432 patent has simplified and sped up the process of manufacturing ASICs. The `432 patent's novel method not only has opened up the process to designers who do not have the expertise in VLSI design, but also has led to a more efficient, cost-effective, and flexible process for the design and production of the ASICs. The claims at issue in this proceeding are claims 13-17. As will be described in more detail below, independent claim 13 is directed to a process in which a designer describes an ASIC through an input specification using architecture independent descriptions. These architecture independent descriptions are used to select architecture dependent hardware cells. This process uses a library of definitions of the architecture independent, functional descriptions, a library of available hardware cells, and a storehouse of expert know-how or knowledge (referred to as a "knowledge base," which is a database embodying the knowledge of VLSI experts in the form of "rules"). In particular, for each desired function to be performed by the ASIC, one of the definitions from the library of definitions is specified. The rules in the knowledge base are then applied to select architecture dependent hardware cells from the library of available hardware cells.

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Dependent claims 14-17 are directed to the same design process recited in claim 13. Dependent claim 14, however, adds a process step of generating mask data used to produce the ASIC designed using the process. Dependent claim 15 adds a process step of generating signal lines for carrying data ("data paths") between hardware cells selected for use in the designed ASIC. Dependent claim 16 clarifies that the step added by claim 15 is performed using rules in a knowledge base. Dependent claim 17 adds a step of generating signal lines for carrying control signals to hardware cells selected for use in the designed ASIC. Because claims 1-12 and 18-20 contain significant limitations not found in the broader claims 13-17, Ricoh has not asserted them in its infringement action against the ASIC Defendants. Although not at issue here, claims 1-12 and 18-20 are summarized as follows for the convenience of the Court. Claims 1-8 are directed to a computer-aided design system that enumerates exemplary tools that can be used to perform an ASIC design process similar to that described above. The claims provide, for example, a macro library defining architecture independent functions that may be desired in the ASIC to be produced, a cell library defining available hardware cells that can be used in the ASIC to be produced, and an expert system that includes a knowledge base containing rules for selecting hardware cells and an inference engine for selecting cells based on rules in the knowledge base. Claims 9-12 are also directed to a computer-aided design system similar to that described in claims 1-8. Claims 9-12, however, restrict the system to use of a flowchart editor that can be used to create a flowchart representation of the architecture independent functions desired in the ASIC to be produced. Claims 18-20 are directed to a design process for designing ASICs similar to that in claims 13-17. Claims 18-20, however, restrict the claim process to use of a flowchart description of the architecture independent functions desired in the ASIC to be produced.

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IV.

LEGAL STANDARD The construction of a patent claim is a matter of law for the Court. Markman v.

Westview Instruments, Inc., 517 U.S. 370, 372 (1996) (attached as Exhibit C2). To determine the meaning of a patent claim, the Court considers three sources: the claims, the specification, and the prosecution history. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc) (attached as Exhibit C3), aff'd, 517 U.S. 370 (1996). First, the Court looks at the words of the claims. Vitronics, 90 F.3d at 1582. "[T]he analytical focus must begin and remain centered on the language of the claims themselves, for it is that language that the patentee chose to use to particularly point[ ] out and distinctly claim[ ] the subject matter which the patentee regards as his invention." Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1201-02 (Fed. Cir. 2002) (attached as Exhibit C4) (internal quotation marks and citations omitted) (alterations in original), cert. denied, 538 U.S. 1058 (2003). Thus, there is a "heavy presumption" that claim terms bear their ordinary meaning, as understood by persons skilled in the relevant art. Id. at 1202; see also Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002) (attached as Exhibit C5). Second, it is always necessary to review the specification to determine if the presumption of the ordinary meaning is rebutted. Tex. Digital Sys., 308 F.3d at 1204. The presumption is only rebutted in situations where the inventor: (1) acting as his or her own lexicographer, has clearly set forth an "explicit definition" of the term that is different from its ordinary meaning; or (2) has disavowed or disclaimed scope of coverage by using words of "manifest exclusion or restriction." Id. But if the meaning of the words themselves would not have been understood to persons of skill in the art to be limited only to the examples or embodiments described in the specification, reading the words in such a confined way would mandate the wrong result and would violate our proscription of not reading limitations from the specification into the claims. Id. at 1205; see also Teleflex, 299 F.3d at 1326 ("limitations from the specification are not to be read into the claims").

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Third, the Court may consider the prosecution history of the patent, if in evidence. Vitronics, 90 F.3d at 1582. "Although the prosecution history can and should be used to understand the language used in the claims, it . . . cannot enlarge, diminish, or vary the limitations in the claims." Markman, 52 F.3d at 980 (internal quotation marks and citations omitted); see also Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1332 (Fed. Cir. 2004) (attached as Exhibit C6) ("Because the statements in the prosecution history are subject to multiple reasonable interpretations, they do not constitute a clear and unmistakable departure from the ordinary meaning of the [claim term at issue]."); Sunrace Roots Enter. Co. v. SRAM Corp., 336 F.3d 1298, 1306 (Fed. Cir. 2003) (attached as Exhibit C7) ("To be given effect, such a disclaimer must be `clear and unmistakable.'" (quoting Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325 (Fed. Cir. 2003))) (attached as Exhibit C8). Ordinarily, the Court should not rely on expert testimony to assist in claim construction, because the public is entitled to rely on the public record of the patentee's claim (as contained in the patent claim, the specification, and the prosecution history) to ascertain the scope of the claimed invention. Vitronics, 90 F.3d at 1583. "[W]here the public record unambiguously describes the scope of the patented invention, reliance on any extrinsic evidence is improper." Id. Extrinsic evidence should be used only if needed to assist in determining the meaning or scope of technical terms in the claims, and may not be used to vary or contradict the terms of the claims. Id. (quoting Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1216 (Fed. Cir. 1995) (attached as Exhibit C9)); Markman, 52 F.3d at 981. However, the Court is free to consult reference materials, such as dictionaries, for assistance in determining the ordinary meaning of a claim term and such sources are not considered extrinsic evidence. Tex. Digital Sys., 308 F.3d at 1202-03. Further, the intrinsic record must be consulted to determine which definition is most consistent with the use of the word by the inventor. Id. at 1203. "If more than one dictionary definition is consistent with the use of the word[] in the intrinsic record, the claim term[] may be construed to encompass all such consistent meanings." Id. Any claim interpretation, however, that would exclude a preferred embodiment is "`rarely, if ever, correct.'"

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Zimmer, Inc. v. Howmedica Osteonics Corp., No. 03-1428, 2004 U.S. App. LEXIS 10598, at *11 (Fed. Cir. May 26, 2004) (attached as Exhibit C10) (quoting Vitronics, 90 F.3d at 1583). The Court also has the discretion to admit and rely on prior art proffered by one of the parties, whether or not cited in the specification or the file history, but only when the meaning of the disputed terms cannot be ascertained from a careful reading of the public record. Vitronics, 90 F.3d at 1584. Referring to prior art may make it unne