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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 20 vs. vs. AEROFLEX INCORPORATED, et al., Defendants. SYNOPSYS, INC., Plaintiff, RICOH COMPANY, LTD., Plaintiff, ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) Case No. C03-04669 MJJ (EMC) Case No. C03-2289 MJJ (EMC) RESPONSIVE CLAIM CONSTRUCTION BRIEF FOR U. S. PATENT NO. 4,922,432 (RE-FILED) Date: October 29, 2004 Time: 9:30 AM Courtroom: 11 Judge: Martin J. Jenkins

RICOH COMPANY, LTD., a Japanese 21 corporation 22 23 24 25 26 27 28
HOWREY SIMON ARNOLD & WHITE

Defendant.

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1 2 I. 3 II. 4 5 B. 6 7 8 1. 9 10 11 12 13 14 15 16 17 18 19 3. 20 21 22 23 III. 24 25 B. 26 27 28 E. 2. D. 3. 2. C.

TABLE OF CONTENTS INTRODUCTION ...................................................................................................................1 LEGAL PRINCIPLES GOVERNING CLAIM CONSTRUCTION .........................................1 A. Disputed Claim Terms Are Generally Given Their Ordinary Meaning To One Of Ordinary Skill In The Art .............................................................2 Intrinsic Evidence Is The Most Significant Source For Determining The Ordinary Meaning Of Disputed Claims Terms .......................................................3 Extrinsic Evidence May Be Relied On To Ascertain The Ordinary Meaning Of Disputed Claims Terms.............................................................................5 Prior Art, Technical Dictionaries And Treatises Are The Preferred Sources Of Extrinsic Evidence...........................................................5 Non-Scientific Or General-Usage Dictionaries Are Irrelevant To The Meaning Of Terms Of Art And Ordinary Words Used In A Technological Context ..........................................................6 Expert Testimony Should Be Used To Inform The Court' s Construction And A Failure To Take Into Account Such Testimony May Constitute Reversible Error......................................................6

Only Intrinsic Evidence May Be Used To Establish A Meaning For A Disputed Claim Term Other Than Its Ordinary Meaning To One Of Skill In The Art .......................................................................................................7 1. The Intrinsic Evidence May Implicitly Define A Claim Term With Or Without An Explicit Statement Of Redefinition ......................................................................................................7 The Patent' File History Limits The Invention By s Excluding What Was Disclaimed ......................................................................8 The Patent' Specification May Also Limit The Scope Of s The Invention.................................................................................................. 10

Extrinsic Evidence May Never Be Used To Alter A Claim Term' s Ordinary Meaning Or Any Other Meaning Established In The Intrinsic Evidence....................................................................................................... 12

SUMMARY OF THE ` 432 PATENT .................................................................................... 12 A. The Goal Of The ` 432 Patent' Alleged Invention Is To Enable s Non-Experts To Design ASICs ................................................................................... 12 Rule-Based Expert System Software For Translating A Flowchart Input To A Netlist Is The Only Embodiment Of The ` 432 Patent' s Claimed Invention ...................................................................................................... 14

-iHOWREY SIMON ARNOLD & WHITE

RESPONSIVE CLAIM CONSTRUCTION BRIEF FOR U.S. PATENT NO. 4,922,432 C03-04669 MJJ (EMC), C03-02289 MJJ (EMC)

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1 2 3 4 5 6 7 8 9 10 D. 11 12 IV. 13 14 15 16 17 V. 18 A. 19 20 21 C. 22 23 24 B. C.

1.

Step One: Using The Flowchart Editor of KBSC, The NonExpert Designer Describes A Sequence Of Operations For The Target ASIC............................................................................................. 14 Step Two: Using The Flowchart Editor of KBSC, The NonExpert Designer Specifies A Macro For Each Action And Condition Represented In The Flowchart ........................................................ 15 Step Three: The Rule-Based Expert System of KBSC Selects The Hardware Cell For Performing Each Definition Specified In The Flowchart ............................................................................. 16 Step Four: The Rule-Based Expert System Generates A Netlist Defining The Necessary Hardware Cells And Their Required Interconnection ................................................................................ 16

2.

3.

4.

The ` 432 Patent Does Not Describe A "List Form" Input Specification Embodiment.......................................................................................... 17 The ` 432 Patent Does Not Describe An Embodiment For Automatically Mapping The Stored Definitions.......................................................... 18

THE ` 432 PATENT' PROSECUTION HISTORY............................................................... 19 S A. B. C. D. The Original Application For The ` 432 Patent ............................................................ 19 The April 18, 1989 Amendment ................................................................................. 19 The October 19 1989 Examiner Interview Summary................................................... 21 The November 15, 1989 Amendment ......................................................................... 22

SYNOPSYS'POSITIONS ON THE PROPER CONSTRUCTION OF THE DISPUTED CLAIM TERMS IN THE ` 432 PATENT ................................................... 24 The Proper Construction of "A Computer-Aided Design Process For Designing"........................................................................................................... 24 The Proper Construction of "Application Specific Integrated Circuit (ASIC)".......................................................................................................... 26 The Claim Limitations Directed To The Input Of The Claimed Method For Claims 13-17........................................................................................... 27 1. 2. The Designer Represents A Sequence Of Logical Steps And Decisions In A Flowchart Format ............................................................ 27 The Designer Assigns One Stored Definition For Each Logical Step And Decisions Described In The Flowchart................................ 31 The Flowchart Input Specification Excludes A Register Transfer Level (RTL) Description, Which Defines Any Control Needed For The ASIC At The Clock Cycle Level .............................. 34
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HOWREY SIMON ARNOLD & WHITE

3.

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1 2

D. E.

The Proper Construction of "Data Describing A Set Of... Hardware Cells... " ..................................................................................................................... 38 The Claim Limitations Directed To Selecting Hardware Cells Using A Rule-Based Expert System............................................................................ 40 1. 2. Rule-Based Expert System Maps Each Specified Definition In The Flowchart To A Stored Hardware Cell Description .............................. 41 Unlike Conventional Software, Rule-Based Expert System Software Uses An Inference Engine To Selectively Apply The Rules Stored In The Knowledge Base ...................................................... 44 Unlike Conventional Software, The Rule-Based Expert System Software Uses A Set Of IF-THEN Rules For Mapping Specified Definitions To Stored Hardware Cell Descriptions .................................................................................................... 47

3 4 5 6 7

3. 8 9 10 11 1. 12 13 14 3. 15 G. 16 17 18 VI. 19 20 21 22 23 24 25 26 27 28 H. 2. F.

The Proper Construction of "Generating For The Selected Integrated Circuit Hardware Cells, A Netlist... "......................................................... 49 This Generating Step Requires Eliminating Unnecessary Hardware Cells That Have Been Selected ....................................................... 49 The Interconnection Requirements To Be Generated For The Netlist Are The Control And Data Paths................................................... 50 A System Controller Must Be Generated For The Netlist ................................ 51

"Generating... Mask Data Required To Produce An Integrated Circuit... "................................................................................................................... 52 The Proper Construction Of Dependent Claims 15-17 ................................................ 52

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

-iiiHOWREY SIMON ARNOLD & WHITE

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1 2 CASES

TABLE OF AUTHORITIES

3 A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992)................................. 2 4 ACCO Brands, Inc. v. Micro Sec. Devices, Inc., 346 F.3d 1075 (Fed. Cir. 2003)............................ 9, 30 5 AFG Indus., Inc. v. Cardinal IG Co., Ltd., 239 F.3d 1239 (Fed. Cir. 2001) ...................................... 5, 6 6 Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 345 F.3d 1318 (Fed. Cir. 2003)...............................3 7 Arthur A. Collins, Inc. v. N. Telecom, Ltd., 216 F.3d 1042 (Fed. Cir. 2000) .........................................4 8 Bell Atl. Network Servs. v. Covad Communications Group, Inc., 262 F.3d 1258 (Fed. Cir. 2001).................................................................................................2, 3, 5, 7, 10, 30 9 Biogen, Inc. v. Berlex Labs, Inc., 318 F.3d 1132 (Fed. Cir. 2003) .......................................9, 10, 28, 30 10 Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 234 F.3d 558 (Fed. Cir. 2000)................................................................................................................................. 9 11 12 Gaus v. Conair Corp., 363 F.3d 1284 (Fed. Cir. 2004) ...................................................................... 11 13 Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323 (Fed. Cir. 2001).......................... 3, 4 14 Jansen v. Rexall Sundown, Inc., 342 F.3d 1329 (Fed. Cir. 2003)..........................................................4 15 Kumar v. Ovonic Battery Co., 351 F.3d 1364 (Fed. Cir. 2003)................................................... 3, 4, 36 16 Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) .............................................................1 17 Merck & Co v. Teva Pharms. USA, Inc., 347 F.3d 1367 (Fed. Cir. 2003)..................................... 2, 3, 4 18 Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340 (Fed. Cir. 2004).............................................4 l n, 19 Modine Mfg. Co. v. United States Int' Trade Comm' 75 F.3d 1545 (Fed. Cir. 1996) .......................................................................................................................................9 20 Multiform Desiccants, Inc., v. Medzam, Ltd., 133 F.3d 1473 (Fed. Cir. 1998) .................................. 2, 4 21 Netword, LLC v. Centraal Corp., 242 F.3d 1347 (Fed. Cir. 2001).......................................1, 10, 28, 31 22 O.I. Corp. v. Tekmar Co., 115 F.3d 1576 (Fed. Cir. 1997) ................................................................. 51 23 Omega Eng' Inc. v. Raytek Corp., 334 F.3d 1314 (Fed. Cir. 2003).............................................. 8, 12 g, 24 Phillips v. AWH Corp., 376 F.3d 1382 (Fed. Cir. 2004) .......................................................................2 25 ResQNet.com, Inc. v. Lansa, Inc., 346 F.3d 1374 (Fed. Cir. 2003) ..................................................... 11 26 Rheox, Inc. v. Entact, Inc., 276 F.3d 1319 (Fed. Cir. 2002) ...................................................... 8, 31, 38 27 Seymour v. Osbourne, 78 U.S. 516, 546 (1871)....................................................................................6 28
-ivHOWREY SIMON ARNOLD & WHITE

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1 Southwall Techs., Inc v. Cardinal IG Co., 54 F.3d 1570 (Fed. Cir. 1995)............................8, 12, 37, 49 2 Springs Window Fashions LP v. Novo Indus., L.P., 323 F.3d 989 (Fed. Cir. 2003)..............9, 31, 35, 38 3 United States Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554 (Fed. Cir. 1997) .....................................1 4 Vanderlande Indus. Nederland BV v. ITC, 366 F.3d 1311 (Fed. Cir. 2004) .......................... 3, 6, 36, 47 5 Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996).......................................... passim 6 W.E. Hall Co. v. Atlanta Corrugating, LLC, 370 F.3d 1343 (Fed. Cir. 2004)................................... 3, 7 7 Wang Labs., Inc. v. Am. Online, Inc., 197 F.3d 1377 (Fed. Cir. 1999).................................... 10, 28, 30 8 STATUTES 9 35 U.S.C. § 112 ....................................................................................................................... 4, 34, 52 10 35 U.S.C. § 132 ................................................................................................................................. 34 11 35 U.S.C. § 271(g)............................................................................................................................. 24 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
-vHOWREY SIMON ARNOLD & WHITE

RESPONSIVE CLAIM CONSTRUCTION BRIEF FOR U.S. PATENT NO. 4,922,432 C03-04669 MJJ (EMC), C03-02289 MJJ (EMC)

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1 I. 2

INTRODUCTION Long-standing precedent from the Court of Appeals for the Federal Circuit prohibits patent

3 owners, like Ricoh, from proffering interpretations for the purposes of litigation that would alter the 4 indisputable public record and treat the claims as a "nose of wax." This is precisely what Ricoh seeks 5 to accomplish here. Ricoh proffers interpretations for the disputed claim terms that contradict the 432 patent, its file history, and the prior art that was distinguished from the 6 clear import of the ` 7 invention in that file history. 8 For example, the public record for the ` 432 patent clearly and unmistakably limits the claimed

9 invention by requiring that: (1) the input specifications be in a simple flowchart format; (2) the input 10 specifications exclude what are known as register-transfer level descriptions; and (3) a rule-based 11 expert system software be used as opposed to conventional software programs to select the hardware 12 cells for the design of the desired ASIC. Because Ricoh knows that the use of the Synopsys Design 13 Compiler® products at issue in the captioned actions are not capable of meeting any of these three 432 14 requirements, Ricoh proposes constructions for the disputed claim terms that are contrary to the ` s 15 patent' public record. 16 In fact, litigation induced interpretations that run contrary to the understanding of a person of

s 17 ordinary skill in the art pervade Ricoh' entire opening claim construction brief. For this reason, the 18 court should adopt Synopsys'and Defendants'proposed constructions, which are consistent with 432 patent' claims, specification, and its file s 19 how a person of skill in the art would understand the ` 20 history. 21 II. 22 LEGAL PRINCIPLES GOVERNING CLAIM CONSTRUCTION The proper construction of disputed terms in a patent claim-- i.e., claim construction-- is an

23 issue of law reserved exclusively for the Court. Markman v. Westview Instruments, Inc., 517 U.S. 24 370, 372 (1996). Claim construction is the judicial determination of what is and what is not covered 25 by the disputed terms in the patent claims. Netword, LLC v. Centraal Corp., 242 F.3d 1347, 1352 26 (Fed. Cir. 2001) (citing United States Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 27 1997)). Claim construction issues are legal issues for the Court to decide, and therefore, neither party 28 bears the burden of proof on those legal issues.
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1

Recently, the Court of Appeals for the Federal Circuit, in Phillips v. AWH Corp., 376 F.3d

2 1382 (Fed. Cir. 2004) issued an order granting a petition to rehear that appeal, en banc, to address 3 and resolve issues concerning claim construction. Specifically, that order demonstrates that the 4 Federal Circuit will be addressing, en banc, issues regarding claim construction methodologies and 5 the appropriate role and use of intrinsic evidence and extrinsic evidence such as expert testimony and 6 technical dictionaries to interpret disputed claim terms. Id. at 1383-84. Despite the existing s 7 uncertainty in the Federal Circuit' decisions regarding the appropriate "methodology" for s 8 interpreting disputed claim terms, as recognized by the Federal Circuit' order in Philips, Synopsys 9 and Defendants believe that the following five basic long-standing legal principles, explained below, s 10 should guide this court' construction of the disputed claim terms in the present action. 11 12 13 A. Disputed Claim Terms Are Generally Given Their Ordinary Meaning To One Of Ordinary Skill In The Art

When construing disputed claim terms, "the court must apply the same understanding as that

14 of persons knowledgeable in the field of the invention." Merck & Co v. Teva Pharms. USA, Inc., 347 15 F.3d 1367, 1371 (Fed. Cir. 2003) "`[P]atents are written not for laymen, but for and by persons " 16 experienced in the field of the invention.' 347 F.3d at 1371 (citation omitted); See also, Multiform 17 Desiccants, Inc., v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998). "Accordingly, a technical 18 term used in a patent is interpreted as having the meaning a person of ordinary skill in the field of the 19 invention would understand it to mean." Bell Atl. Network Servs. v. Covad Communications Group, 20 Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). Generally, the court gives the disputed "claim terms their 21 ordinary and accustomed meaning as understood by one of ordinary skill in the art." Id.1 22 23 24 decisions from the Federal Circuit refer to a "presumption" of ordinary meaning for disputed claim terms-- an issue of law. But Rule 301 of the Fed. R. Evid. provides that presumptions in civil 25 actions "vanish[] upon the introduction of evidence sufficient to support a finding of the nonexistence of the presumed fact." A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020, 1037 (Fed. 26 Cir. 1992) (en banc) (emphasis added). Given that presumptions relate to "factual" and not "legal" issues, these cases merely stand for the proposition that claim terms should generally be given their 27 ordinary meaning to a person of skill in the art unless the intrinsic evidence clearly supports (explicitly or implicitly) a different meaning. 28
HOWREY SIMON ARNOLD & WHITE

"The ordinary and customary meaning of a claim term to one of ordinary skill in the art may

1 Some

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1 be ascertained from a variety of sources . . ." W.E. Hall Co. v. Atlanta Corrugating, LLC, 370 F.3d s 2 1343, 1350 (Fed. Cir. 2004). Such sources include: 1) the intrinsic evidence, i.e., the patent' claims, 3 specification, and its file history, including any prior art cited in the patent or file history; and, 2) 4 extrinsic evidence, such as expert testimony, technical dictionaries, treatises, and textbooks, and prior 5 art not cited in the patent or its file history. See id; Merck & Co., 347 F.3d at 1372; Kumar v. Ovonic 6 Battery Co., 351 F.3d 1364, 1368 (Fed. Cir. 2003). While extrinsic evidence may be useful to shed 7 light on the relevant art and therefore assist the court in placing itself in the shoes of one of ordinary s 8 skill in the art, it is the intrinsic evidence that constitutes the public record of the patentee' claim, a 9 record on which reasonable competitors are entitled to rely. See Vanderlande Indus. Nederland BV v. 10 ITC, 366 F.3d 1311, 1318 (Fed. Cir. 2004) (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 11 1576, 1582 (Fed. Cir. 1996)). 12 13 14 B. Intrinsic Evidence Is The Most Significant Source For Determining The Ordinary Meaning Of Disputed Claims Terms

"` is well-settled that, in interpreting an asserted claim, the court should look first to the It

15 intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in 16 evidence, the prosecution history . . . Such intrinsic evidence is the most significant source of the 17 legally operative meaning of disputed claim language.' Bell Atl. Network Servs., 262 F.3d at 1267 " 18 (quoting, Vitronics Corp., 90 F.3d at 1582). 19 First, the claim construction analysis always begins with the words of the claims, which are

20 examined through the viewing glass of a person of skill in the art. Interactive Gift Express, Inc. v. 21 Compuserve, Inc., 256 F.3d 1323, 1331-32 (Fed. Cir. 2001); See Vitronics, 90 F.3d at 1582. While 22 the focus may be on the particular claim terms or phrases in dispute, the "context of the surrounding 23 words in a claim also must be considered in determining the ordinary and customary meaning of a 24 disputed claim limitation." Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 345 F.3d 1318, 1325 25 (Fed. Cir. 2003). In fact, the words in both the asserted and nonasserted claims must be considered in 26 defining the scope of the claimed invention. Vitronics, 90 F.3d at 1582. Most importantly, in 27 construing the disputed claim terms, "the analytical focus must begin and remain centered on the 28
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1 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 2 ` " 3 invention.' Interactive Gift Express, 256 F.3d at 1331 (quoting 35 U.S.C. § 112, ¶ 2). 4 Second, "`[c]laims are not interpreted in a vacuum, but are part of and are read in light of the

" 5 specification.' Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1347 (Fed. Cir. 2004) 6 (citation omitted). "A fundamental rule of claim construction is that terms in a patent document are 7 construed with the meaning with which they are presented in the patent document." Merck & Co., 8 347 F.3d at 1371 ("[C]laims must be construed so as to be consistent with the specification, of which 9 they are a part."). "Thus, the specification is always highly relevant to the claim construction 10 analysis." Vitronics, 90 F.3d at 1582. "Usually, it is dispositive; it is the single best guide to the s 11 meaning of a disputed term." Id. In short, the patent' description in the specification is always 12 relevant to determining the ordinary and customary meaning of the disputed claim terms and 13 therefore, must be examined for that purpose in every case. 14 Third, although "[t]he best source for understanding a technical term is the specification from

15 which it arose," that understanding should be "informed, as needed, by the prosecution history." 16 Multiform Desiccants, 133 F.3d at 1478. The prosecution history "reveals how those closest to the 17 patenting process ­ the inventor and the patent examiner ­ viewed the subject matter." Id. Thus, the s 18 patent' file history is certainly a significant source for ascertaining the ordinary meaning of claim 19 terms that must be reviewed in every case. Jansen v. Rexall Sundown, Inc., 342 F.3d 1329, 1333 20 (Fed. Cir. 2003). 21 Besides the patent' claims, specification and its file history, the prior art cited in the patent s

22 and its file history also constitutes intrinsic evidence that provides valuable guidance that may be 23 dispositive on the ordinary meaning of a claim term to one of skill in the art. Kumar, 351 F.3d at 24 1368. "`[W]hen prior art that sheds light on the meaning of a term is cited by the patentee, it can 25 have particular value as a guide to the proper construction of the term, because it may indicate not 26 only the meaning of the term to persons skilled in the art, but also that the patentee intended to adopt " 27 that meaning.' Kumar, 351 F.3d at 1368 (quoting Arthur A. Collins, Inc. v. N. Telecom, Ltd., 216 s 28 F.3d 1042, 1045 (Fed. Cir. 2000)). Thus, like the patent' claims, specification, and its file history,
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1 the prior art cited in the patent or its file history is part of the intrinsic evidence and therefore, must 2 also be examined for determining the ordinary meaning of claim terms in every case. See Kumar, 3 351 F. 3d 1368. 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
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C.

Extrinsic Evidence May Be Relied On To Ascertain The Ordinary Meaning Of Disputed Claims Terms

Extrinsic evidence may be examined by the court to help understand the disputed claim term, shed light on the relevant field of the invention, and ensure that the court' construction of the s disputed claim terms are consistent with the "` clearly expressed, plainly apposite, and widely held understandings in the pertinent technical field." AFG Indus., Inc. v. Cardinal IG Co., Ltd., 239 F.3d 1239, 1249 (Fed. Cir. 2001) (citations omitted); See also, Vitronics, 90 F.3d at 1584 ("extrinsic evidence... may be used only to help the court come to the proper understanding of the claims . . ."). Thus, extrinsic evidence may be used to assist the court in ascertaining the ordinary meaning of the disputed claim terms. Bell Atl. Network, 262 F.3d at 1268-69. 1. Prior Art, Technical Dictionaries And Treatises Are The Preferred Sources Of Extrinsic Evidence

Because prior art and technical dictionaries "are more objective and reliable guides" and such "sources are accessible to the public in advance of litigation", they are the extrinsic evidence sources that are preferred over expert opinion testimony. Vitronics, 90 F.3d at 1585. Specifically, "prior art can often help to demonstrate how a disputed term is used by those skilled in the art" and "may also be more indicative of what all those skilled in the art generally believe a certain term means." Id. at 1584. Similarly, the court may use technical dictionaries and treatises "to better understand the technology" and "when construing claim terms," as long as those definitions do not "contradict any definition found in or ascertained by a reading of the" intrinsic evidence. Id. at 1584 n.6. Thus, the court may certainly rely on both prior art not cited in the intrinsic evidence and technical dictionaries to ascertain the ordinary meaning of disputed claim terms. Id. at 1584-85.

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1 2 3

2.

Non-Scientific Or General-Usage Dictionaries Are Irrelevant To The Meaning Of Terms Of Art And Ordinary Words Used In A Technological Context

Unlike appropriate technical dictionaries and treatises reflecting the understandings of persons

4 of skill in the field of the invention, however, except for limited circumstances, non-scientific or 5 general-usage dictionaries are irrelevant to the meaning of both ordinary words "in a technological 6 context" and technical terms of art in the field of the invention. AFG Indus., 239 F.3d at 1248. 7 "Only when the context is unclear, or it appears that the term is not being used in a technical manner, 8 should the trial court rely upon a general purpose dictionary for construing the term." Id. "But where 9 evidence ­ such as expert testimony... or technical dictionaries ­ demonstrates that artisans would 10 attach a special meaning to a claim term, or... would attach no meaning at all to that claim term 11 (independent of the specification), general-usage dictionaries are rendered irrelevant with respect to 12 that term; a general-usage dictionary cannot overcome credible art-specific evidence of the meaning 13 or lack of meaning of a claim term." Vanderlande, 366 F.3d at 1321. For these reasons, the Federal 14 Circuit has repeatedly "` cautioned against the use of non-scientific dictionaries, ` dictionary lest 15 definitions . . . be converted into technical terms of art having legal, not linguistic significance.' See " 16 e.g., id. (citations omitted). 17 18 19 20 21 22 23 24 25 26 27 28
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Expert Testimony Should Be Used To Inform The Court' Construction s And A Failure To Take Into Account Such Testimony May Constitute Reversible Error

Although prior art (not cited in the intrinsic evidence) and technical dictionaries and treatises are the preferred sources of extrinsic evidence, expert testimony may also be used "to help the court come to the proper understanding of the claims." Vitronics, 90 F.3d at 1584. In fact, because a term of art must be construed in a manner consistent with the scientific and technical context in which it is used in the patent, in some instances "`the testimony of scientific witnesses is indispensable to a correct understanding'of the meaning of disputed claim terms, and . . .` would undoubtedly be error it for the court to reject the testimony.'" AFG Indus., Inc., 239 F.3d at 1249 (quoting Seymour v. Osbourne, 78 U.S. 516, 546 (1871)). Expert testimony "can and should be used to inform the court' construction of disputed claim terms and a "failure to take into account the testimony of s"
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1 persons of ordinary skill in the art may constitute reversible error." Id. In short, where the claims 2 contain technical terms or terms of art it is not only appropriate but preferable that the court consult 3 trustworthy expert testimony to aid the court in coming to the correct conclusion on the proper 4 meaning of disputed terms of art in the claims. See id. 5 6 7 8 9 10 11 12 13 14 15 16 17 18 First, a claim term may be redefined by the intrinsic evidence with or without an explicit 19 statement of redefinition. Bell Atl. Network, 262 F.3d at 1268; see, Vitronics, 90 F.3d at 1584 n.6 20 (meaning of claim terms may be "`found in or ascertained by a reading of the patent documents'"). 21 In Bell Atl. Network, the Federal Circuit affirmed the district court' grant of summary judgment of s 22 non-infringement. 262 F.3d at 1262. The Federal Circuit agreed with the district court' construction s 23 of the claim term "mode" because it was implicitly defined in the intrinsic evidence to be limited to 24 the three broad categories described in the patent' specification. Id. at 1273. The Federal Circuit s 25 came to this conclusion in spite of the broad ordinary meaning of the non-technical term "mode." Id. 26 at 1270. The reasoning behind the Federal Circuit' conclusion is that "a claim term may be clearly s 27 redefined without an explicit [definition]" and that "when a patentee uses a claim term throughout the 28
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Only Intrinsic Evidence May Be Used To Establish A Meaning For A Disputed Claim Term Other Than Its Ordinary Meaning To One Of Skill In The Art

Generally, the court gives the disputed "claim terms their ordinary and accustomed meaning as understood by one of ordinary skill in the art." Bell Atl. Network, 262 F.3d at 1267; Vitronics, 90 F.3d at 1582. The circumstances where a claim term may be construed to have a meaning other than its ordinary meaning to one of skill in the field of the invention include where the intrinsic evidence: 1) plainly defines the claim term either explicitly or by implication; 2) shows that the patentee distinguished the invention from a prior art reference, expressly disclaims subject matter from the scope of the invention, or highlights a particular feature as important to the invention; 3) provides meaning to a claim term that would otherwise render the scope of the claim unclear. See e.g., W.E. Hall Co., 370 F.3d at 1353. The circumstances where a court' construction may depart from the s ordinary meaning of a disputed claim term are best understood through examples of actual decisions. 1. The Intrinsic Evidence May Implicitly Define A Claim Term With Or Without An Explicit Statement Of Redefinition

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1 entire patent specification, in a manner consistent with only a single meaning, he has defined that by " 2 term ` implication.' Id. at 1271 (citing Vitronics, 90 F.3d at 1582). 3 The Court also agreed with the district court' conclusion that even claims not explicitly s

s 4 reciting the "mode" limitation were also limited to the three broad categories described in the patent' s 5 specification. 262 F.3d at 1275. This conclusion was based on the Court' recognition that "one of 6 ordinary skill in the art would understand that the transceiver" described in the claim not including 7 the "mode" limitation was the same as the one that included the "mode" limitation and was therefore 8 limited by the implicit definition of the term "mode" in the intrinsic evidence. Id. 9 10 11 2. The Patent' File History Limits The Invention By Excluding What Was s Disclaimed

Second, the "doctrine of prosecution disclaimer is well established in Supreme Court

12 precedent" and that doctrine has been adhered to by the Court of Appeals for the Federal Circuit "as a 13 fundamental precept" in its "claim construction jurisprudence." Omega Eng' Inc. v. Raytek Corp., g, 14 334 F.3d 1314, 1323 (Fed. Cir. 2003). Prosecution disclaimer refers to the Federal Circuit precedent 15 that "the prosecution history limits the interpretation of claim terms so as to exclude any 16 interpretation that was disclaimed during prosecution." See e.g., Southwall Techs., Inc v. Cardinal IG 17 Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995) ("sputter-deposited dielectric" limited to one-step process 18 by patentee' argument that dielectric was "directly deposited."). s 19 "As a basic principle of claim interpretation, prosecution disclaimer promotes the public

20 notice function of the intrinsic evidence and protects the public' reliance on definitive statements s 21 made during prosecution." Omega Eng' 334 F. 3d at 1324. "[F]or prosecution disclaimer to attach g, 22 [Federal Circuit] precedent requires that the alleged disavowing actions or statements made during 23 prosecution be both clear and unmistakable." Id. at 1325-6. In determining whether prosecution 24 disclaimer limits the scope of the claimed invention, a court must assess "whether a patentee 25 relinquished a particular claim construction based on the totality of the prosecution history, which 26 includes amendments to claims and arguments made to overcome or distinguish references." Rheox, 27 Inc. v. Entact, Inc., 276 F.3d 1319, 1326 (Fed. Cir. 2002); See also, Biogen, Inc. v. Berlex Labs, Inc., 28
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s 1 318 F.3d 1132, 1139 (Fed. Cir. 2003) (district court correctly found that based on examiner' 2 statements "single DNA construct" limitation was basis on which all claims were allowed by 3 examiner and properly declined to interpret "method claims as free of this limitation"). 4 In Biogen, the Federal Circuit affirmed the district court' granting of the defendant' motion s s

5 for summary judgment of non-infringement. 318 F.3d at 1142. The principle issue on appeal was s 6 whether the district court' interpretation properly limited the method claims to the use of a "single 7 DNA construct" even though those method claims were not amended and did not mention the use of s 8 a "single DNA construct." Id. at 1134. The Federal Circuit agreed with the district court' s 9 conclusion that the examiner' statements after a telephonic interview with the applicant in the s 10 examiner' Reason for Allowance, read objectively, establishes that the "single DNA construct" was s 11 the examiner' only basis for allowing all of the claims. Id. at 1139. Thus, even the method claims 12 that were not amended to include such a limitation were properly limited to the use of a "single DNA 13 construct." See e.g., ACCO Brands, Inc. v. Micro Sec. Devices, Inc., 346 F.3d 1075, 1079 (Fed. Cir. 14 2003) ("`[I]t is incorrect to construe a claim as encompassing the scope that was relinquished in order ") 15 to obtain allowance of another claim, despite a difference in words used.' (quoting Modine Mfg. l n, 16 Co. v. United States Int' Trade Comm' 75 F.3d 1545, 1551 (Fed. Cir. 1996) (emphasis added) 17 abrogated on other grounds by Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 234 F.3d 18 558 (Fed. Cir. 2000); See also, Springs Window Fashions LP v. Novo Indus., L.P., 323 F.3d 989, at 19 995-6 (Fed. Cir. 2003) (distinguishing prior art patent limited claim scope to distinguishing features 20 despite fact those features were not and are not reflected in claims). 21 Similarly, in the Federal Circuit' ACCO Brands decision, which also affirmed the granting of s

22 summary judgment of non-infringement by the district court, the Court concluded that the "pin 23 clause" of unamended "claim 10 must be construed in the same way" as the amended "pin clause of 24 claim 1." ACCO Brands, 346 F.3d at 1079. The Court came to this conclusion based on the s 25 statements in the examiner' Reasons for Allowance. Id. Those statements repeated the arguments 26 presented by the applicant and demonstrated "that the examiner and the applicant understood that the 27 invention requires that the pin extends (actively) into the slot after rotation." Id. The Court reasoned 28 that although the pin clause of claim 10 was not amended and therefore, used different words for the
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1 pin clause than the words used in amended claim 1, claim 10 could not be construed to encompass the 2 subject matter that was relinquished to obtain claim 1. Id. 3 4 3. The Patent' Specification May Also Limit The Scope Of The Invention s

"Whether an invention is fairly claimed more broadly than the ` preferred embodiment' in the

5 specification is a question specific to the content of the specification, the context in which the 6 embodiment is described, the prosecution history, and if appropriate the prior art, for claims should 7 be construed, when feasible, to sustain their validity." Wang Labs., Inc. v. Am. Online, Inc., 197 F.3d 8 1377, 1383 (Fed. Cir. 1999). "The usage ` preferred'does not of itself broaden the claims beyond 9 their support in the specification." Id; Bell Atl. Network, 262 F.3d at 1273; See also, Biogen, 318 10 F.3d at 1140 (Claims do not "`enlarge what is patented beyond what the inventor has described as 11 [his] invention.' (quoting Netword, 242 F.3d at 1352). ") 12 In Biogen, the Court agreed with the district court' conclusion "that the specification defines s

13 the invention as the use of a single DNA construct . . . and that the method and cell line claims, as 14 well as the construct claims, are so limited." 318 F. 3d at 1140. The Court recognized that although 15 the specification mentioned other known general techniques, the "specification does not describe or 16 present details of any other configuration for introducing these genes" but instead "describes only 17 linked DNA sequences and transformation procedures using single constructs . . . " Id. at 1136-37. 18 The Court noted that the claims may not "`enlarge what is patented beyond what the inventor has 19 described as [his] invention.' Id. at 1140 (quoting Netword, 242 F. 3d at 1352). The Court " 20 concluded that the district court' interpretation properly limited the method claims to the use of a s 21 "single DNA construct" even though those methods claims were not amended and did not mention 22 the use of a "single DNA construct." 23 Similarly, in Wang Labs, the Federal Circuit agreed with the district court' conclusion that s

24 although the general usage of the term "frame" encompassed both bit-mapped display systems and 25 character-based systems, the description in the patent of character-based systems limited the claimed 26 invention to character-based systems. 197 F.3d at 1381. In that case, the Federal Circuit affirmed the 27 district court' grant of summary judgment to the defendants on the issue of infringement. 197 F.3d s 28 1379. The only issue on appeal was whether the district court properly limited the interpretation of
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s 1 the term "frame" to the "character-based protocols" described in the patent' specification. Id. at 2 1380. 3 The Court concluded that the only embodiment described in the patent' specification "is the s

4 character-based protocol, and the claims were correctly interpreted as limited thereto." Id. at 1383. 5 In reaching this conclusion, the Court recognized that "in order to be covered by the claims... subject s 6 matter must be sufficiently described as the applicant' invention to meet the requirements of [35 7 U.S.C.] section 112. This requirement was not met as to protocols other than character-based." Id. 8 In other words, neither the mere mention of other protocols nor the usage of "preferred" in the patent s 9 changed the fact that the patent' description only supported character-based protocols. Id. at 1382. 10 Not only is the scope of the invention properly limited to what is supported by the patent' s

s about the problems solved by the claimed 11 description, but the teachings in the patent' description "` 12 invention, the way the claimed invention solves those problems'and the prior art that relates to the provide valuable context for the meaning of the claim language.'" ResQNet.com, 13 invention'" all "` s 14 Inc. v. Lansa, Inc., 346 F.3d 1374, 1381 (Fed. Cir. 2003) (citations omitted). In fact, the patent' 15 specification may certainly limit the claimed invention to important features that are essential for 16 solving the problems in the prior art solved by the claimed invention. See Gaus v. Conair Corp., 363 17 F.3d 1284, 1289-90 (Fed. Cir. 2004). 18 In Gaus, the Federal Circuit reversed the jury' verdict of infringement under the doctrine of s

19 equivalents and entered judgment of non-infringement for the defendant. Id. at 1285. The principle 20 issue was whether the "double conductor" was required to be structurally separate from the "voltage21 carrying electrical operating unit." Id. at 1289. The Court concluded that this "structural separation" 22 was required because the specification demonstrated that this "separation" is how one of the principle 23 advantages of the invention over the prior art was achieved. Id. at 1289-90. The Court specifically s 24 noted that even if the claim language did not support the adopted construction, the specification' 25 description that the "structural separation" was necessary for achieving the inventions advantages a " 26 over the prior art presents "` clear case of disclaimer of subject matter.' Id. at 1288 n.2 (citation 27 omitted). 28
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E.

Extrinsic Evidence May Never Be Used To Alter A Claim Term' Ordinary s Meaning Or Any Other Meaning Established In The Intrinsic Evidence

Extrinsic evidence may never be used to vary, contradict, expand, or limit any meaning found

g, 4 in or ascertained from the intrinsic evidence. See e.g., Omega Eng' 334 F.3d at 1332 (citing 5 Vitronics, 90 F.3d at 1584-85). In fact, "[i]f the meaning of the claim limitation is apparent from the 6 intrinsic evidence, it is improper to rely on extrinsic evidence other than that used to ascertain the 7 ordinary meaning of the claim limitation." Id. (citing Vitronics, 90 F.3d at 1582). This prevents a 8 patentee from "proffer[ing] an interpretation for the purposes of litigation that would alter the nose of wax.' Vitronics, 90 F.3d at 1583 " 9 indisputable public record . . . and treat the claims as a ` 10 (quoting Southwall, 54 F.3d at 1578). 11 III. 12 13 14 The ` 432 patent explains that the "invention provides a computer-aided design system and SUMMARY OF THE ` 432 PATENT A. The Goal Of The ` 432 Patent' Alleged Invention Is To Enable Non-Experts To s Design ASICs

15 method for designing an application specific integrated circuit . . . " (Ex. 1 at Abstract). "An 16 application specific integrated circuit (ASIC) is an integrated circuit chip designed to perform a 17 specific function, as distinguished from standard, general purpose integrated circuit chips, such as 18 microprocessors, memory chips, etc." (Id. at 1:13-17). Unlike general-purpose integrated circuit 19 chips such as microprocessors, which are designed so that they may execute software for performing 20 many different applications, an ASIC is designed for a specific function, for example, to control the 21 operation of a vending machine. (Id. at 12:39-44). 22 According to the ` 432 patent, the ASIC design processes of the prior art require the designer

23 to consider the required objectives and tasks for the desired ASIC and define the structural level 24 design specification for that ASIC. (Ex. 1 at 1:19-23). This structural level design specification (or 25 netlist) must define the various hardware components and their required interconnections as well as a 26 system controller for synchronizing the operations of those hardware components. (Id. at 1:23-27). 27 Because defining structural level design specifications requires the ASIC designer to have an 28 "extensive and all encompassing knowledge" of these hardware components and their required
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432 patent concludes that the ASIC design process requires engineers with 1 interconnections, the ` 2 highly specialized skills and expertise in VLSI design. (Id. at 1:28-32, 1:58-65). 3 The stated goal of the ` 432 patent' claimed invention is to enable non-expert designers (i.e., s

4 designers not having highly specialized skills and expertise in VLSI design) to design ASICs. (Ex. 1 432 patent' invention purports to accomplish this goal with computer-aided design s 5 at 2:14-19). The ` 6 software that: 1) allows non-expert designers to work with "simple flowcharts" that they are able to 7 understand and which only requires them to know what the necessary logical steps are to complete a 8 task and, 2) provides and applies the essential VLSI design expertise needed to design ASICs through 9 the use of a rule-based expert system "extracted from expert ASIC designers." (Ex. 1 at 2:24-27, 10 2:57-63; 4:5-34, see also Abstract)(emphasis added): 11 12 13 14 15 16 17 18 19 20 The flowchart is a highly effective means of describing a sequence of logical operations, and is well understood by software and hardware designers of varying levels of expertise and training. *** The KBSC utilizes a knowledge based expert system, with a knowledge base extracted from expert ASIC designers with a high level of expertise in VLSI design to generate from the flowchart a netlist . . . *** [T]he design of an integrated circuit at the structural level requires a design engineer with highly specialized skills and expertise in VLSI design. In the KBSC system of the present invention, however, integrated circuits can be designed at a functional level because the expertise in VLSI design is provided and applied by the invention. Allowing the designer to work with flowcharts... simplifies the task of designing custom integrated circuits . . . The designer deals with an algorithm using simple flowcharts... and needs to know only the necessary logical steps to complete a task . . . ***

21 Thus, the "simple flowchart input" and the "rule-based expert system for generating a netlist from a 22 flowchart" features are essential to achieving the ` 432 patent' stated goal. In fact, the ` s 432 patent' s 23 inventor touted these same two essential features, i.e., the "flowchart input form" and the "rule-based 24 approach... to logic synthesis," as what he believed "clearly distinguished" his invention from 25 existing prior art systems in an article around the same time of the ` 432 patent application. (Ex. 2 at 26 389). 27 28
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B.

Rule-Based Expert System Software For Translating A Flowchart Input To A Netlist Is The Only Embodiment Of The ` 432 Patent' Claimed Invention s

There is only one embodiment of the system and method of the claimed invention described in the ` 432 patent and it is referred to as the Knowledge Based Silicon Compiler (also referred to herein as "KBSC"). (Ex. 1 at 2:50-53). As its name suggests, the Knowledge Based Silicon Compiler software is an ASIC design methodology based upon expert systems technology. (Id. at 2:53-55). Specifically, the KBSC software uses a flowchart editor to permit non-expert designers to represent the desired ASIC in a flowchart format and generates a netlist from that flowchart input using a rule-based expert system. (Id. at 2:55-62). More specifically, the only embodiment described in the ` 432 patent (the KBSC method) is an ASIC design method consisting of the following four basic steps described in detail in the following paragraphs. 1. Step One: Using The Flowchart Editor of KBSC, The Non-Expert Designer Describes A Sequence Of Operations For The Target ASIC

In the sole embodiment described in the patent, the first step for defining the flowchart input 14 specification for the ASIC to be designed is for the non-expert designer to represent the sequence of 15 logical operations (i.e., actions and conditions) in a flowchart format using the flowchart editor 21. 16 (Ex. 1 at 2:24-27). The flowchart editor is the user interface software program. It allows the user to 17 display, create and edit flowcharts. (Id. at 4:56-59; 7: 6-7). Specifically, the flowchart editor 21 is 18 used to create, edit, and delete the rectangles (actions), diamonds (conditions), and lines (transitions) 19 in the flowchart to represent the series of logical steps and decisions needed to accomplish the task of 20 the desired ASIC. (Ex. 1 at 2:24-27; 3:50-59; 4:15-19; 7:12-23; 8:51-56). The result of this step is 21 shown in the following figure, which is taken from Figure 5 in the ` 432 patent. 22 23 24 25 26 27 28
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2.

Step Two: Using The Flowchart Editor of KBSC, The Non-Expert Designer Specifies A Macro For Each Action And Condition Represented In The Flowchart

Once the non-expert designer has represented the sequence (or series) of actions and

4 conditions (i.e., operations) for the desired ASIC in the flowchart, the second step in defining input 5 specification for the ASIC to be designed is the designer' use of the flowchart editor to assign (i.e., s 6 specify) a definition from the stored definitions (i.e., Macro Library) for each of the actions 7 (rectangles) and conditions (diamonds) represented in the flowchart. (Ex. 1 at 4:61-63; 5:20-22; 8 7:24-50; 8:23-26). Table 1 from the ` 432 patent shows a Macro Library containing the definitions for 9 the available actions and conditions that may be specified in the flowchart. The result of this 10 specifying step is shown in Figure 5 of the ` 432 patent.2 11 12 13 14 15 16 17 18 After the definitions have been specified for each operation in the flowchart, as shown for 19 example in Figure 5, the flowchart is then converted to an intermediate file, called a statelist. (Ex. 1 20 at 7:1-3; 8:56-57).3 21 22 23 24 2 Specifically, the ADD (A,B,C) definition from Table 1 is specified for ACTION 3 and the MOVE 25 (A,B) definition from Table 1 is specified for ACTIONS 1 and 2. Similarly, the definition CMP (A,B) from Table 1 is specified for CONDITION 1. 26 27 3 As explained further in Section II.C. below, the statelist is a list form description converted from the flowchart and an example statelist is shown in Appendix A of the ` 432 patent. (Ex. 1 at 14:7-30). 28
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3.

Step Three: The Rule-Based Expert System of KBSC Selects The Hardware Cell For Performing Each Definition Specified In The Flowchart

In this step, each definition assigned by the designer using the flowchart editor to each of the actions and conditions represented in the flowchart is matched by the cell selector software program of KBSC to an appropriate corresponding hardware cell description from a library of cells. (Ex. 1 at 5:20-25, 8:23-32): The selection is based on the functional descriptions in the flowchart, as specified by the macros assigned to each action represented in the flowchart. ... To design a VLSI system from a flowchart description of a user application, it is necessary to match the functions in a flowchart with cells from a cell library.

11 The cell selector software program of KBSC maps the specified definitions to the hardware cell 12 descriptions using a number of design parameters and constraints such as cell function, process 13 technology used, time delay, power consumption, etc. (Ex. 1 at 8:26-29, 8:60-64, 9:52-61). This 14 makes mapping each specified definition in the flowchart to the appropriate hardware cell description 15 complicated. Consequently, the cell selector must use a rule-based expert system. (Ex. 1 at 5:25-29, 16 8:29-60): 17 18 19 The cell selector uses a knowledge base extracted from VLSI design experts to make the cell selection. ... This mapping needs the use of artificial intelligence techniques because the cell selection process is complicated... . The Cell Selector uses a rule based expert system to select the appropriate cell or cells to perform each action.

20 The rule-based expert system' mapping or matching of the specified definitions from the macro s 21 library to the hardware cell descriptions in the cell library is illustrated in Figure 4 of the ` 432 patent. 22 23 24 25 26 27 28
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Step Four: The Rule-Based Expert System Generates A Netlist Defining The Necessary Hardware Cells And Their Required Interconnection

After the hardware cells have been selected by the rule-based expert system, the KBSC software generates the netlist. (Ex. 1 at 9:64-65). The netlist, as described in the ` 432 patent, must have all of the necessary hardware cells that are required to implement the designated operations of the ASIC. Thus, the netlist must include a custom controller type hardware cell as well as the data
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1 paths and control paths necessary for connecting the selected hardware cells. (Ex. 1 at 2:34-44; 4:392 43; 5:30-37). 3 4 5 6 7 8 9 10 11 12 13 14 15 The KBSC software uses a rule-based expert system to generate the controller type hardware cell and the necessary control and data paths that form the required interconnections for all of the hardware cells. (Ex. 1 at Abstract, 5:8-12). After the controller and the data and control paths have been generated, the rule based expert system then eliminates selected hardware cells that are redundant or unnecessary (Ex. 1 at 13:59-66). Finally, the controller, the other necessary hardware cells, and the data and control paths for connecting those hardware cells are used to define the netlist for the desired ASIC. (Ex. 1 at 13:67-14:3). C. The ` 432 Patent Does Not Describe A "List Form" Input Specification Embodiment The netlist 15 includes a custom generated system controller, all other hardware cells required to implement the necessary operations, and interconnection information for connecting the hardware cells and the system controller.

Ricoh, in its opening brief, claims that the single off-hand mention of a "list form" input in the

432 patent' specification and unasserted claim 2' unsupported requirement that the input means "a s s 16 ` 17 list defining the series of actions and conditions" by themselves constitute another described 18 embodiment. (Ex. 1 at 2:21-24; 14:67-15:2). They do not. 19 The only "list" ever mentioned in the ` 432 patent is the intermediate file referred to as a

20 statelist. The statelist is not user input, but rather is generated by the KBSC software from the input 432 patent does not provide any 21 specification in the flowchart format. (Ex. 1 at 7:1-2, 8:56-57). The ` s 22 description of the statelist' format, but Appendix A is an example statelist. (Id. at 14:7-30). 23 The only description of this "list form" is provided in United States Patent No. 5,197,016

016 patent"), issuing from a continuation-in-part application which was filed 18 months later 24 ("the ` 432 patent. (Ex. 3). Specifically, the ` 016 patent describes an 25 by the two inventors of the ` 26 Antecedent-Action-Form ("AAF") that is converted from the input specification in the flowchart 27 28
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016 patent are the same as Appendix A in 1 format. (Id. at 7:33-9:53). The AAF file examples in the ` 2 the ` 432 patent. (Ex. 1 at 14:7-30 with Ex. 3 at 9:26-35 and 9:21-53).4 Thus, the description in the 016 patent confirms that the only "list" in the ` 432 patent is not a separate input specific embodiment 3 ` 4 but is instead a "generated" interim file format. 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 4 This description reveals that the AAF file format is nothing more than a descriptive list of the information provided in the flowchart that it was converted from. 25 5 The KBSC software cannot define the ASIC to be designed. The designer must provide the specification for the ASIC. In other words, the designer (not the KBSC software) determines the 26 input to the KBSC (e.g., the ASIC design) by assigning the macros to the "series" o