Free Claim Construction Statement - District Court of California - California

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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) SYNOPSYS' AND DEFENDANTS AEROFLEX, ET AL.' LIST OF TEN S TERMS IT WISHES THE COURT TO CONSTRUE AT THE CLAIM CONSTRUCTION HEARING

22 RICOH COMPANY, LTD., a Japanese corporation 23 Defendant. 24 25 26 27 28
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Claim Construction Date: October 29, 2004 Claim Construction Time: 9:30 a.m. Courtroom: 11 Judge: Martin J. Jenkins

SYNOPSYS' & DEFS' LIST OF TEN TERMS Case Nos. C03-04669 MJJ / C03-2289 MJJ (EMC)

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1 I. INTRODUCTION 2 The parties met and conferred regarding a single list of ten claim terms to be construed.

3 Although the parties were able to agree upon three terms to be construed, fundamental differences 4 remained. Specifically, Synopsys, Inc. ("Synopsys") and Defendants Aeroflex Incorporated, AMI 5 Semiconductor, Inc., Matrox Electronic Systems, Ltd., Matrox Graphics Inc., Matrox International 6 Corp. and Matrox Tech, Inc. ("Defendants") believe that it is inappropriate for terms to be construed 7 that Ricoh did not include in the Joint Claim Construction and Prehearing Statement. In addition, 8 Synopsys and Defendants assert that claim terms should not be construed out of context. Finally, 9 Synopsys and Defendants believe that priority should be given to terms that have the potential to 10 resolve the present litigations on summary judgment.1 11 II. AGREEMENT AS TO TERMS TO BE CONSTRUED 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 number of disputed terms, phrases, and clauses after the parties' respective tutorials. 28
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The following table summarizes the agreements the parties reached: SYNOPSYS' AND RICOH' TERM S DEFENDANTS' TERM Architecture independent Architecture independent actions and conditions STATUS At the meet and confer, Synopsys and Defendants agreed to Ricoh' proposal that s the term "architecture independent actions and conditions" be construed. This term was an issue during patent prosecution, and some claim scope was surrendered. Claim construction of this term may resolve the present litigations on a summary judgment motion related to noninfringement. The parties agree to have this term construed. This phrase was an issue during patent prosecution, and some claim scope was surrendered. Claim construction of this term may resolve the present litigations on a summary judgment motion related to noninfringement. Synopsys and Defendants notified Ricoh that they did not believe that this term was in dispute. The parties agreed to use the definition of ASIC found in the patent at

Specifying for each described action and condition of the series one of said stored definitions

Specifying for each described action and condition of the series one of said stored definitions

N/A

Application Specific Integrated Circuit (ASIC)

1 Synopsys and Defendants believe that it may be beneficial for the Court to address the issue regarding limiting the

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SYNOPSYS' AND DEFENDANTS' TERM Describing for a proposed application specific integrated circuit a series of architecture independent actions and conditions

RICOH' TERM S

STATUS 1:13-17. After the meet and confer, Ricoh indicated in an email that it was going to request to have the describing term construed. Therefore, it appears that agreement has been reached as to this term. Claim construction of this term may resolve the present litigations on a summary judgment motion related to noninfringement.

Describing for a proposed application specific integrated circuit a series of architecture independent actions and conditions

8 III. OVERLAPPING TERMS 9 In several circumstances, the parties'requested claim terms overlapped. Generally, Ricoh

10 requested an isolated word or phrase to be construed, while Synopsys and Defendants requested that an s 11 entire phrase be construed so as to have the proper context.2 Ricoh' truncated terms do not match the 12 Joint Claim Construction and Prehearing Statement, and it is improper of Ricoh to ask the Court to 13 construe these terms. The following table summarizes instances where the parties'requested claim 14 terms overlap: 15 16 17 18 19 20 21 22 23 24 25 26 27 Ricoh's objection has no merit because Patent L.R. 4-3 explicitly recognizes that there may be disputed terms, phrases, and 28
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SYNOPSYS' AND RICOH' TERM S DEFENDANTS' TERM Data describing a set of Hardware cells available integrated circuit hardware cells for performing the actions and conditions defined in the stored set

STATUS Ricoh seeks to have these two words construed out of context. Synopsys and Defendants instead recommend that the entire phrase be construed, since the dispute between the parties centers on the data describing the hardware cells, rather than the hardware cells themselves. Claim construction of this phrase may resolve the present litigations on a summary judgment motion related to noninfringement. Ricoh seeks to have this entire phrase construed in order to distract the Court from the requirement that there is an expert system, rather than just a knowledge base. The parties agree that a knowledge base with rules is required. This term was an issue during patent prosecution, and some

Expert system

Expert system knowledge base

2 Ricoh also objects to the Synopsys' and Defendants'identification of phrases and clauses in dispute instead of terms.

clauses.

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SYNOPSYS' AND DEFENDANTS' TERM

RICOH' TERM S

STATUS claim scope was surrendered. Claim construction of this term may resolve the present litigations on a summary judgment motion related to noninfringement. Synopsys and Defendants object to this term being construed as Ricoh did not include it in the parties'Joint Claim Construction and Prehearing Statement. Instead, Ricoh provided a construction for the entire term "storing in an expert system knowledge base a set of rules for selecting hardware cells to perform the actions and conditions" and for the word "rules." It is improper to ask the Court to construe a term that was not included in the Joint Claim Construction and Prehearing Statement, and one that is taken out of context. Claim construction of this term may resolve the present litigations on a summary judgment motion related to noninfringement. Synopsys and Defendants object to this term being construed as Ricoh did not include it in the parties'Joint Claim Construction and Prehearing Statement. Instead, Ricoh provided a construction for the entire term "selecting from said stored data for each of the specified definitions a corresponding integrated circuit hardware cell for performing the desired function of the application specific integrated circuit, said step of selecting a hardware cell comprising applying to the specified definition of the action or condition to be performed, a set of cell selection rules stored in said expert system knowledge base and generating for the selected integrated circuit hardware cells, a netlist defining the hardware cells which are needed to perform the desired function of the integrated circuit and the interconnection requirements therefore." It is improper to ask the Court to construe a term that was not included in the Joint Claim Construction and Prehearing Statement, and one that is taken out of

A set of rules A set of rules for selecting hardware cells to perform the actions and conditions

Selecting from said stored Selecting . . . a . . . data for each of the hardware cell specified definitions a corresponding integrated circuit hardware cell for performing the desired function of the application specific integrated circuit

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SYNOPSYS' AND DEFENDANTS' TERM Generating for the selected integrated circuit hardware cells, a netlist defining the hardware cells which are needed to perform the desired function of the integrated circuit

RICOH' TERM S

STATUS context. Ricoh seeks to have this word construed out of context. Synopsys and Defendants instead recommend that the entire phrase be construed, since the dispute between the parties centers on the generation of the netlist, rather than the netlist itself. Claim construction of this term may resolve the present litigations on a summary judgment motion related to invalidity.

Netlist

IV. TERMS WITHOUT OVERLAP 9 The parties identified other claim terms that did not overlap. Synopsys'and Defendants'terms 10 in this category require construction so as to be used for future dispositive motions. The following 11 table summarizes claim terms that do not overlap: 12 13 14 15 16 17 18 19 20 21 22 23 N/A 24 25 26 27 28
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SYNOPSYS' AND RICOH' TERM S DEFENDANTS' TERM A computer-aided design N/A process for designing

STATUS Ricoh did not identify an equivalent term in its list. However, there is a dispute between the parties as to whether design is a part of the manufacturing process. The construction of this phrase is necessary for a summary judgment motion regarding Ricoh' § 271(g) claims. s Ricoh did not identify an equivalent term in its list. However, there is a dispute between the parties as to the cell selection rules stored in the expert system knowledge base. This term was an issue during patent prosecution, and some claim scope was surrendered. Claim construction of this term may resolve the present litigations on a summary judgment motion related to noninfringement. Synopsys and Defendants did not identify an equivalent term in their list. Synopsys and Defendants object to this term being construed as Ricoh did not include it in the parties'Joint Claim Construction and Prehearing Statement. Instead, Ricoh provided a construction for the entire term "storing a set of definitions of architecture independent actions and conditions."

Said step of selecting a hardware cell comprising applying to the specified definition of the action or condition to be performed, a set of cell selection rules stored in said expert system knowledge base

N/A

A Set of Definitions

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SYNOPSYS' AND RICOH' TERM S DEFENDANTS' TERM N/A Interconnection Requirements

STATUS Synopsys and Defendants did not identify an equivalent term in their list. Synopsys and Defendants object to this term being construed as Ricoh did not include it in the parties'Joint Claim Construction and Prehearing Statement. Instead, Ricoh provided a construction for the entire term "selecting from said stored data for each of the specified definitions a corresponding integrated circuit hardware cell for performing the desired function of the application specific integrated circuit, said step of selecting a hardware cell comprising applying to the specified definition of the action or condition to be performed, a set of cell selection rules stored in said expert system knowledge base and generating for the selected integrated circuit hardware cells, a netlist defining the hardware cells which are needed to perform the desired function of the integrated circuit and the interconnection requirements therefore" as well as for the words "interconnection" and "requirement."

V. Conclusion 17 Synopsys and Defendants request that the following claim terms be construed:3: 18 A. A computer-aided design process for designing 19 D. Architecture independent actions and conditions4 20 G. Data describing a set of available integrated circuit hardware cells for performing the actions 21 and conditions defined in the stored set 22 H. Expert system 23 J. A set of rules for selecting hardware cells to perform the actions and conditions 24 25 26 27 28
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3 These items are identified using the letter designations from the Joint Claim Construction and Prehearing Statement. 4 Synopsys and Defendants have agreed to Ricoh' proposal instead of "architecture independent" as originally set forth in s

their portion of the Joint Claim Construction and Prehearing Statement.

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K. Describing for a proposed application specific integrated circuit a series of architecture independent actions and conditions L. Specifying for each described action and condition of the series one of said stored definitions N. Selecting from said stored data for each of the specified definitions a corresponding integrated circuit hardware cell for performing the desired function of the application specific integrated circuit O. Said step of selecting a hardware cell comprising applying to the specified definition of the action or condition to be performed, a set of cell selection rules stored in said expert system knowledge base Q. Generating for the selected integrated circuit hardware cells, a netlist defining the hardware cells which are needed to perform the desired function of the integrated circuit

Dated: October 19, 2004

Respectfully submitted,

/s/ Thomas C. Mavrakakis Teresa M. Corbin Thomas C. Mavrakakis Howrey Simon Arnold & White, LLP Attorneys for Synopsys, Inc. and Defendants Aeroflex, et al.

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