13-07-09 gemalto appellate brief against google samsung htc

7/28/2019 13-07-09 Gemalto Appellate Brief Against Google Samsung HTC

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2013-1397

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

_______________________________________________________________

GEMALTO S.A.,

Plaintiff-Appellant,

v.

HTC CORPORATION, HTC AMERICA, INC., EXEDEA, INC., GOOGLE,

INC., MOTOROLA MOBILITY, LLC (also known as Motorola Mobility, Inc.),

SAMSUNG ELECTRONICS CO., LTD., and SAMSUNG

TELECOMMUNICATIONS AMERICA , LLC,

Defendants-Appellees,

_______________________________________________________________

Appeal from the United States District Court for the Eastern District of Texas in

Case No. 10-CV-0561, Chief Judge Leonard Davis.

_______________________________________________________________

NON-CONFIDENTIAL BRIEF FOR PLAINTIFF-APPELLANT

GEMALTO S.A.

_______________________________________________________________

Robert A. Cote

MCKOOL SMITH P.C.

One Bryant Park, 47th Floor

New York, New York 10036

(212) 402-9400

Dirk D. Thomas

MCKOOL SMITH P.C.

1999 K Street, Suite 600

Washington, DC 20006

(202) 370-8302

Joel L. Thollander

MCKOOL SMITH P.C.

300 W. 6th Street, Suite 1700

Austin, TX 78701(512) 692-8735

Attorneys for Plaintiff-Appellant

Gemalto S.A.

July 9, 2013

NON-CONFIDENTIALCase: 13-1397 Document: 34 Page: 1 Filed: 07/09/2013


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CERTIFICATE OF INTEREST

Counsel for Gemalto S.A. certifies the following:

1. The full name of every party represented by me is:

Gemalto S.A.

2. The name of the real party in interest represented by me is:

Gemalto S.A.

3. All parent corporations and any publicly held companies that own 10 percent

or more of the stock of the party represented by me is:

Gemalto N.A.

4. The names of all law firms and the partners or associates that appeared for

the party represented by me in the trial court or are expected to appear in this

Court are:

McKool Smith P.C.: Robert Auchter, Samuel F. Baxter, Todd Bellaire,

Robert A. Cote, Holly E. Engelmann, Laurie L. Fitzgerald, Shahar Harel,

Pierre J. Hubert, Radu A. Lelutiu, Christopher J. Mierzejewski Kevin

Schubert, Geoffrey L. Smith, Joel L. Thollander, Dirk D. Thomas.

Case: 13-1397 Document: 34 Page: 2 Filed: 07/09/2013


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TABLE OF CONTENTS

CERTIFICATE OF INTEREST................................................................................i

TABLE OF AUTHORITIES ....................................................................................v

STATEMENT OF RELATED CASES................................................................. viii

I. STATEMENT OF JURISDICTION ...............................................................1

II. STATEMENT OF THE ISSUES ....................................................................1

III. STATEMENT OF THE CASE .......................................................................2

IV. STATEMENT OF FACTS..............................................................................7

A. The Parties .............................................................................................7

B. The Patents-in-Suit................................................................................8

C. The Prosecution History........................................................................9

D. The Patents Do Not Require that All Memory

For Storing Converted Applications Be On-Chip

and Claim Embodiments that Store Converted

Applications in a Mix of On-Chip and Off-ChipMemory. ..............................................................................................11

E. The Patents Do Not Require that the Memory Used

by the Processor to Execute Converted

Applications Include the Non-Volatile (Permanent)

Memory Located Off-Chip..................................................................14

F. The Patents Disclose and Claim Embedded

Systems for Non-Smartcard Embodiments. ........................................16

G. The Processors Powering Devices that Embody the

Claimed Inventions Need Not Be Microcontrollers. ..........................18

H. Gemaltos Inventions Have Had a Dramatic

Impact on the World of Mobile Computing........................................18



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I. Years After the Inventors Managed to Deploy Java

Within the Resource-Constrained Environment of

an Embedded System, Googles Android Team

Found Itself Vexed by the Same Problem...........................................19

J. The Operation of the Embedded Systems in theAccused Android Smartphones...........................................................21

K. TheMarkman and Summary Judgment Orders ..................................25

V. SUMMARY OF ARGUMENT.....................................................................27

VI. STANDARD OF REVIEW...........................................................................31

VII. ARGUMENT.................................................................................................32

A. The District Court Erred in Granting Summary

Judgment of Noninfringement Based on Its

Incorrect Constructions of the Claim Terms

Programmable Device, Integrated Circuit

Card, and Microcontroller..............................................................32

1. The broader term programmable device is

not coextensive with the narrower term

microcontroller. .....................................................................32

2. The all program memory limitation should

not have been imported into the claims. ..................................37

B. Even if Its Constructions for the Relevant Claim

Terms Were Correct (And They Are Not), The

District Court Erred in Granting Summary

Judgment on Gemaltos Doctrine of Equivalents

Arguments. ..........................................................................................45

VIII. CONCLUSION AND RELIEF REQUESTED.............................................48



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iv

TABLE OF AUTHORITIES

Page(s)

CASES

Absolute Software, Inc. v. Stealth Signal, Inc.,

659 F.3d 1121 (Fed. Cir. 2011) ..........................................................................31

Accent Packaging, Inc. v. Leggett & Platt, Inc.,

707 F.3d 1318 (Fed. Cir. 2013) ...........................................................................3

Am. Med. Sys., Inc. v.Biolitec,

618 F.3d 1354 (Fed. Cir. 2010) .........................................................................35

Anderson v. Liberty Lobby, Inc.,

477 U.S. 242 (1986)............................................................................................31

Brilliant Instruments, Inc. v. GuideTech, LLC,

706 F.3d 1342 (Fed. Cir. 2013) ...................................................................46, 47

Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc.,

334 F.3d 1294 (Fed. Cir. 2003) .........................................................................42

Burke, Inc. v. Bruno Indep. Living Aids, Inc.,

183 F.3d 1334 (Fed. Cir. 1999) .........................................................................32

Crown Packaging Tech., Inc. v. Rexam Bev. Can Co.,

559 F.3d 1308 (Fed. Cir. 2009) ....................................................................30, 45

Cybor Corp v. FAS Techs., Inc.,

138 F.3d 1448 (Fed. Cir. 1998) ..........................................................................31

Deere & Co. v. Bush Hog, LLC,

703 F.3d 1349 (Fed. Cir. 2012) ...................................................................passim

Gemalto S.A. v. HTC Corp.,

2012 U.S. Dist. LEXIS 89764 (June 28, 2012 E.D. Tex.) ..................................5

Golight, Inc. v. Wall-Mart Stores, Inc.,

355 F.3d 1327 (Fed. Cir. 2004) .........................................................................42

Grober v. Mako Products, Inc.,

686 F.3d 1335 (Fed. Cir. 2012) .........................................................................41



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v

Innova/Pure Water, Inc. v. Safari Water FiltrationSys., Inc.,

381 F.3d 1111 (Fed. Cir. 2004) .........................................................................35

In re Rambus Inc.,

694 F.3d 42 (Fed. Cir. 2012) .............................................................................41

Intl Visual Corp. v. Crown Metal Mfg. Co.,

991 F.2d 768 (Fed. Cir. 1993) ...........................................................................32

Kara Tech. Inc. v. Stamps.com,

582 F.3d 1341 (Fed. Cir. 2009) .........................................................................36

Kress Corp. v. Alexander Servs.,

1998 U.S. App. LEXIS 12742 (Fed. Cir. June 15, 1998) ..................................42

Nazomi Commcns, Inc. v. ARM Holdings, PLC,403 F.3d 1364 (Fed. Cir. 2005) .........................................................................28

On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH,

386 F.3d 1133 (Fed. Cir. 2004) .........................................................................39

Phillips v. AWH Corp.,

415 F. 3d 1303 (Fed. Cir. 2005) .................................................................passim

Retractable Techs., Inc. v. Becton, Dickinson & Co.,

653 F.3d 1296 (Fed. Cir. 2011) ...................................................................40, 45

Schindler Elevator Corp. v. Otis Elevator Co.,

593 F.3d 1275 (Fed. Cir. 2010) ..........................................................................31

The Gillette Co. v. Energizer Holdings, Inc.,

405 F.3d 1367 (Fed. Cir. 2005) .........................................................................36

STATUTES &RULES

28 U.S.C. 1295(a) ...................................................................................................1

28 U.S.C. 1331........................................................................................................1

28 U.S.C. 1338........................................................................................................1

28 U.S.C. 2107(a) ...................................................................................................1



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FED.R.APP.P. 4(a) ....................................................................................................1

FED.R.CIV.P.56(a).................................................................................................31

STATEMENT CONCERNING CONFIDENTIAL MATERIAL

Pursuant to Fed. Cir. R. 28(d)(1)(B) and 30(h)(1)(B), Gemalto S.A. states as

follows: The material that has been deleted on pages 4, 19, 20, and 21 of this brief

includes matter that was designated as Confidential-Attorneys Eyes Only by

Defendants in the district court. The deleted portions reflect the substance of

certain communications among Google Inc. employees concerning the design of

the Android operating system and other information Defendants consider sensitive.



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STATEMENT OF RELATED CASES

Pursuant toFED.CIR.R. 47.5, Plaintiff-Appellant Gemalto S.A. (Gemalto)

states as follows:

(a) There have been no other previous appeals in this case; and

(b) There are no cases pending in this or any other court that will directly affect or

be directly affected by this Courts decision in the pending appeal.



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I. STATEMENT OF JURISDICTIONThe U.S. District Court for the Eastern District of Texas had jurisdiction

over the actions giving rise to this appeal under 28 U.S.C. 1331 and 1338(a).

The U.S. Court of Appeals for the Federal Circuit has jurisdiction over this appeal

under 28 U.S.C. 1295(a). The notice of appeal from the final judgment entered

on April 16, 2013 was timely filed under FED. R. APP. P. 4(a) and 28 U.S.C.

2107(a) on May 3, 2013. JA1; JA180-82.

II. STATEMENT OF THE ISSUESIssue 1: Whether the district court erred in granting summary judgment

of noninfringement on the basis of three misconstrued termsmicrocontroller,

integrated circuit card, and programmable devicewhen, in construing each

of these claim terms to require all program memory on a single semiconductor

substrate, the court excluded a claimed embodiment; effected unsupported

disclaimers of claim scope; and subjected these terms of varying breadth to the

same overly restrictive limitation found nowhere in the intrinsic record.

Issue 2: Whether, assuming arguendo that the district court correctly

construed the claims to require all program memory on a single semiconductor

substrate, the court nevertheless erred in granting summary judgment of

noninfringement under the doctrine of equivalents when Gemalto presented

unrebutted evidence establishing that, in the accused devices, at least 97 percent of

the program code to be executed is present in on-chip memory during execution.



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III. STATEMENT OF THE CASEIn 1996, four computer scientists working in Texas for Gemaltos

predecessor, Schlumberger, solved a problem then thought to be unsolvable:

running applications developed using the Java programming languagea language

designed for desktop computerswithin the resource-constrained computing

environment of a smartcard, smartphone, or other system whose functions are

controlled by an embedded processor. See JA92(7:43)-JA98(19:36).1

The inventors

thereby enabled the makers of embedded systems generally, including makers of

programmable devices such as smartcards and smartphones, to leverage the

community of tens of thousands of Java application developers. JA660. Because

Java is the most popular programming language in the mobile world, JA659,

Gemaltos Java conversion technology has playedand continues to playan

essential role in the rapid growth of the smartcard and smartphone industries.

JA349; JA723.

As described and claimed in the patents-in-suitU.S. Patent Nos. 6,308,317

(the 317 Patent); 7,117,485 (the 485 Patent); and 7,818,727 (the 727

Patent)Gemaltos inventions claim the conversion of Java applications from a

compiled form comprising hundreds of class files to a converted form comprising a

single class file suitable for execution by a processor operating within the resource-

1

The three patents-in-suit share a common specification. For the sake of

simplicity, citations herein are to the specification of the 317 Patent.



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constrained computing environment of the device in which it is embedded. JA67

(Fig. 2); JA68 (Fig. 3); JA92(7:43)-JA98(19:36).

While the patents disclosure draws upon the inventors extensive work with

smartcards, Gemaltos inventions are not limited to that particular embodiment of

an embedded system. Recognizing the importance and broad applicability of their

new technology, the inventors obtained patent protection covering the use of their

Java conversion techniques in any embedded systemincluding, in particular,

smartcards and mobile phones having embedded processors (today known as

smartphones). JA86 (Fig. 22) (showing an embedded processor for a mobile

phone); JA92(7:60-65) (In other embodiments, the microcontroller, memory and

communicator are mounted within telecommunication equipment). The claims

of the patents-in-suit are thus directed to various embedded system embodiments,

including programmable devices generally and integrated circuit cards to be

embedded in other devices to control their operation. In addition, there are also

claims directed to a microcontroller, which as described in the patent

specification is one embodiment of an embedded processor that may be used in the

claimed inventions, whether as part of an integrated circuit card or as a stand-alone

component embedded to control a programmable device.

Gemalto filed this suit in October 2010, alleging that Defendants

manufacture, sale, importation, and promotion of Android smartphones infringe



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the patents-in-suit. JA247-58. Critically, Defendants do not dispute here that their

accused smartphones make use of the patents Java conversion technology to solve

problems resulting from the resource-constraints inherent to these mobile devices.

JA261 (All your Java code [is] compiled by the Java compiler and .class files

are output. The dx tool converts the .class files to Dalvik byte code (i.e., a single

executable file)); JA262-63

Instead,

Defendants seek to avoid accounting for their use of this technology on the ground

that the processor chips embedded in their resource-constrained devices can access

larger amounts of memory than was typicalaccording to the specificationin

1996. JA272-73. In particular, Defendants argue that (1) the processor chips

embedded in their accused Android devices make use of external, off-processor

chip memory (in addition to the on-processor chip memory) to store the converted

application instructions when power to the device is turned off; and (2)

embodiments that rely on such external memory fall outside the scope of the

claims.Id. Nothing in the patents or their prosecution history, however, disclaims

such use of any off-chip memoryin fact the patents expressly cover

embodiments in which a portion of the memory is located in the processor, and

the rest is located external to it. JA90 (4:13-14); JA98 (claim 4).

CONFIDENTIAL MATERIAL OMITTED



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The magistrate judge nevertheless construed the claims to exclude such

embodiments. In particular, the magistrate construed: (1) microcontroller as a

single semiconductor substrate [i.e., a single chip] integrating electronic circuit

components that includes a central processing unit and all program memory

making it suitable for use an embedded system; (2) integrated circuit card as a

card containing a single semiconductor substrate having a central processing unit

and all program memory; and (3) programmable device as having the same

meaning and scope as the term microcontroller. JA27; JA31; JA33 (emphasis

added); Gemalto S.A. v. HTC Corp., No. 6:10-CV-561, 2012 U.S. Dist. LEXIS

89764 (June 28, 2012 E.D. Tex.). Gemalto filed timely objections to these

constructions, showing that there was no basis to narrow the claims with the

location-restricting all program memory limitationlanguage that was found

nowhere in the intrinsic record. JA298-302. But the district court summarily

overruled those objections and adopted the magistrates constructions in August

2012. JA16.

Defendants then moved for summary judgment of noninfringement. JA266.

Again, Defendants did not dispute that their accused Android smartphones practice

the Java conversion techniques claimed in the patents-in-suit; they simply argued

that these devices do not meet the imported all program memory limitation for

microcontroller, integrated circuit card, and programmable device because a



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portion of the memory used in the Android smartphones to store program

instructions when not being executed by the processor chip is external to the

processor. JA272-73. The magistrate agreed with Defendants, and recommended

the entry of summary judgment on the basis of this location-restricting all

program memory limitation found in the claims as construed. JA7-12. The ruling

extended to cover Gemaltos arguments under the doctrine of equivalents, which

rest on the uncontested fact that, when in use, the program instructions executed by

an Android smartphone are present in the memory of the phones embedded

processor chip 97 percent of the timesuch that only three percent of the time is

there a need for the on-chip memory controller to retrieve an instruction from off-

chip memory for execution by the processor. JA12-14.

Gemalto again filed timely objections to the magistrates summary

recommendation, and the district court again overruled those objections in

summary fashion. JA2-3. Final judgment was entered on April 16, 2013, and this

appeal followed. JA1; JA180-82.



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IV. STATEMENT OF FACTSA. The Parties.Plaintiff Gemalto is the worlds leading provider of digital security

solutions, which are incorporated in myriad types of devices, smartcards,

smartphones, passports, government-issued ID cards, and other embedded systems.

JA247-48. More than one billion people worldwide use Gemaltos products and

services for telecommunications, financial services, e-government, identity and

access management, multimedia content, digital rights management, IT security,

mass transit and many other embedded system applications.Id. Gemalto has a long

tradition of innovation and invests heavily in research and development. JA247.

Gemalto holds all rights, title, and interest to the patents-in-suit. JA251-52.

Defendants Google, Inc. (Google); HTC Corporation, HTC America, Inc.,

and Exedea, Inc. (collectively, HTC); Motorola Mobility, LLC (Motorola);

and Samsung Electronics Co., Ltd., and Samsung Telecommunications America,

LLC (collectively, Samsung) are some of the worlds largest technology

companies. Defendant Google is the developer of the accused Android operating

system and the Android software development kit that allows Google and the other

Defendants to convert Java applications for use in Android smartphones. JA248.

Google also develops, sells, and markets its own brand of Android smartphones.

JA249. The remaining Defendants develop, sell, and market Android smartphones

using the Android operating system, and the Java applications included with their



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smartphones have been converted using the Android software development kit.

JA249-51.

B. The Patents-in-Suit.The patented technology at issue in this case was developed in the mid-

1990s by Gemaltos corporate predecessor, Schlumberger, at its Austin research

and development facility. JA349-53. The inventions enable the use of high-level

programming languages, such as the ubiquitous Java programming language, in

embedded systems. JA92(7:43)-JA98(19:36).

The six asserted embedded system claimsclaims 1, 4, and 5 of the 317

Patent (integrated circuit card); claims 38 and 39 of the 485 Patent (integrated

circuit card); and claim 3 of the 727 Patent (programmable device)require a

converted application created using a two-step process for transforming

applications written in a high-level programming language into a form that can be

executed by the embedded processor of the claim using a virtual machine

(referred to in the claim as an interpreter). In the first step, applications are

compiled into a compiled form comprising hundreds of class files suitable for use

in desktop computers. JA17-18. Applications in class format are then fed into a

class file converter, which, using various optimization and conversion techniques

recited in the claims and described in the specification, consolidates and

compresses the files to produce a single class file of converted byte codes suitable



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for use in embedded systems. This converted form is then loaded to or stored in the

memory of the embedded processor chip for execution by the processor, as

described and claimed in Gemaltos patents. JA17-18. The virtual machine, which

is also loaded to on-chip memory, is then used by the embedded processor to

interpret the converted byte codes into native program instructions for execution by

the embedded processor.

In converting hundreds of class files into a single class file, the technology

taught by the patents-in-suit drastically minimizes computing resources consumed

by both the Java applications and the virtual machine (the interpreter) that allows

the processor to interpret them for execution, see JA92(7:43)-JA98(19:36), making

these applications suitable for use in the resource-constrained computing

environments of embedded systems, such as the Android smartphones. In this way,

Gemaltos patented Java conversion technology enables embedded, resource-

constrained computing platforms to enjoy programming capabilities previously

only available to desktop computers. JA89(1:55-61).

C. The Prosecution History.The novelty of Gemaltos inventions lies in the conversion techniques taught

in the specification and recited in the claimsnot the type of embedded processor

used in practicing those conversion techniques, let alone whether that processor

has all of its memory for storing program instructions on-chip. Indeed, during the



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prosecution of the patents-in-suit, the applicants explained that the claimed

conversion techniques enabled the deployment of Java in embedded systems

generally, not just in smartcards or smartphones:

Embedded systems using microcontrollers can also gain

many of the[] advantages [detailed in the specification]

for downloading new applications, high level program

development, and rapid prototyping by making use of

this invention.

JA90(4:4-8); JA92 (7:60-65) (In other embodiments, the microcontroller, memory

and communicator are mounted within telecommunication equipment); JA86

(Fig. 22) (showing an embedded processor for a mobile phone).

The applicants also emphasized that the embedded processor maybut

need notbe a microcontroller, thereby making clear that the embedded systems

practicing the inventions can be powered by any type of embedded processor.

JA90(4:12-13). Indeed, the summary of the invention and patent claims themselves

refer to integrated circuit card[s] and programmable device[s] as comprising,

among other things, generic processor[s] (not just microcontroller[s]). JA98-

102, 105-08 (317 Patent, claims 1, 4-11, 13-15, 22, 24, 25, 30, 31, 55, 64, 84-86,

93, and 94); JA178-79 (727 Patent, claims 1-7, 10, 12, 14, and 16-18).

In discussing the benefits afforded by their inventions, the applicants also

explained what they believed to be the differences between microprocessors for

desktop computers and microcontrollers in existence in the mid-1990s.



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JA89(1:62-2:10). In particular, the applicants noted that a typical microprocessor

had access to relatively large external memory, such that it could run

unconverted Java code on a desktop computer, while a typical microcontroller

that is, a type of processor chip used to control an embedded system such as a

smartcard or mobile phone (today known as a smartphone)usually had access to

a much smaller memory, thereby benefitting from the claimed optimization and

conversion techniques.Id.

The provisional application to which the patents-in-suit claim priority further

defined a microprocessor as a central processing unit without any memory.

JA370 (emphasis added). The applicants defined a microcontroller, in contrast,

as comprising a central processing unit, memory and other functional elements on

a single chip. Id. (emphasis added). While the applicants definition of

microcontroller thus makes clear that the processor chip contains memory, the

definition makes no reference to program memory or all program memory, nor

does it provide that all memory for storing program instructions must reside on the

microcontroller chip.

D. The Patents Do Not Require that All Memory For StoringConverted Applications Be On-Chip and Claim Embodimentsthat Store Converted Applications in a Mix of On-Chip and Off-

Chip Memory.

Nothing in the intrinsic record evidences an intention by the applicants to

limit the claims such that all memory for storing an applications program



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instructions be on the processor chip (on-chip memory). In addition, nothing in the

intrinsic record disclaims embodiments that use a mix of on-chip and off-chip

memory, with memory located external to the processor chip (i.e., off-chip

memory) to store such instructions. To the contrary, the claims and specification

show that the applicants expressly intended to cover such mixed embodiments.

The specification expressly provides that a portion of the memory utilized by

devices embodying the claimed inventions may be located external to the processor

chip. JA90(4:13-14) ([A]t least a portion of the memory may be located in the

processor). And this disclosure in the specification carries into the claims. In

particular, claim 1 of the 317 Patent provides:

* * *

JA98 (emphasis added). Claim 4, which depends from claim 1, recites in turn:



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Id. (emphasis added). It is thus clear that the patent applicants intended to cover

embodiments of their inventions utilizing memory located both in the processor

chip and external to the processorthat is, a mix of on-chip and off-chip

memoryto store applications derived through the conversion techniques taught

by the patents.

The applicants intent to claim embodiments making use of external memory

for application instructions reflects a commercial realitythroughout the 1990s

(and into the present day) microcontrollers were and are regularly designed to use a

mix of on-chip and off-chip (external) memory to store program instructions. For

instance:

A patent filed in 1996 by a well-known chip manufacturer notes that [a]microcontroller is typically coupled to one or more external memory deviceswhich store software programs . [T]he microcontroller fetches the

instructions and data from the external memory . JA425(1:39-44)

(emphasis added).

A patent filed in 1995 by a Motorola affiliate provides that: themicrocontroller must be able to fetch part of the program off-chip.

JA446(1:18-25, 2:40-43) (emphasis added).

A 1987 datasheet published by a Motorola affiliate notes that Motorolamicrocontrollers are designed to work with [a]pplications requiringexternal memory. JA450 (emphasis added).

A 1996 datasheet published by a Motorola affiliate notes that amicrocontroller can access external peripheral and memory devices.

JA475 (emphasis added).



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A 1997 datasheet published by a Motorola affiliate notes thatmicrocontrollers are designed to use external EEPROMs or RAMs. JA539

(emphasis added).

E. The Patents Do Not Require that the Memory Used by theProcessor to Execute Converted Applications Include the Non-

Volatile (Permanent) Memory Located Off-Chip.

The applicants also did not disclaim any particular type of memory to be

used by the processor for execution of the converted applicationswhether

permanent or non-volatile memory, e.g., ROM or EEPROM, or volatile-memory,

e.g., RAM. Indeed, the specification discusses both volatile and non-volatile (i.e.,

permanent) memory:

There are generally three different types of memory used:

random access memory (RAM), read only memory

(ROM), and electrically erasable programmable only

memory (EEPROM). . . . Each kind of memory is

suitable for different purposes. Although ROM is the

least expensive, it is suitable only for data that is

unchanging, such as operating system code. EEPROM isuseful for storing data that must be retained when power

is removed, but is extremely slow to write. RAM can be

written and read at high speed, but is expensive and data

in RAM is lost when power is removed.

JA89(2:11-34).

Nothing in the asserted claims requires that processors powering

embodiments of the invention include on-chip the permanent (i.e., non-volatile)

memory used to store program instructions when power to the device is turned off.

There is thus no disclaimer of devices that, like the Android smartphones, load



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program instructions from the off-chip permanent memory to the on-chip memory

(volatile memory, called cache memory) for execution by the processor. Indeed,

the patents describe and generically claim memory for storing the converted

applications on-chip, see, e.g., JA98 (claim 1), but there is nothing to indicate that

the type of storing contemplated has to include any permanent memory storage

too. Moreover, the language in nearly every independent claim recites, without

limitation, that the purpose of the memory is to stor[e] the converted

applications for executionby the claimed embedded processor, see, e.g., JA98

(claim 1) (emphasis added)a completely different purpose than that of non-

volatile (permanent) memory, which is used to store programs when power to a

device is turned off.

Thus, there is no disclaimer to justify the district courts further narrowing of

the all program memory limitation in the summary judgment ruling, wherein the

district court held that the on-chip memory the Android smartphones use for

execution is not all program memory. JA9-10 (on-chip memory space only

temporarily holding program instructions loaded from off-chip main memory does

not constitute all program memory necessary for execution. Also necessary for

execution is [off-chip] memory space permanently holding all program

instructions.). The district courts ruling ignores both the intrinsic record,

including the patent specification and claims, and the extrinsic record, which



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shows that microcontrollers (a widely-used form of embedded processor at the

time of the invention) regularly retrieve program instructions from external, off-

chip memory.

F. The Patents Disclose and Claim Embedded Systems for Non-Smartcard Embodiments.

The examples used in the specification to illustrate the teachings of the

patents understandably draw upon the inventors extensive work with the devices

that were the focus of their immediate effortsthat is, smartcards. But the claims

allowed by the PTO, including all of the claims asserted by Gemalto in this action,

are not limited to the smartcard environment. Instead, as noted, these claims are

more broadly directed to microcontrollers; integrated circuit card[s] (claims 1,

4 and 6 of the 317 Patent and claims 38 and 39 of the 485 Patent); and

programmable device[s] (claim 3 of the 727 Patent) that take advantage of

Gemaltos conversion technology.

The specification likewise includes several figures that show embodiments

of the claimed inventions, including:

Figure 21, which shows a microcontroller 210 embedded in a smartcard,JA86; JA92(7:28-29):



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Figure 22, which shows an embedded microcontroller 210 providing theclaimed Java conversion technology to a mobile telephone (today called a

smartphone), JA86; JA92(7:30-32):

Figure 25, which shows a circuit card with an embedded microcontroller210 to control another device, JA88; JA92(7:37-38):



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G. The Processors Powering Devices that Embody the ClaimedInventions Need Not Be Microcontrollers.

Consistent with the applicants desire not to limit the scope of their

inventions to particular embedded systems, the patents make clear that the claimed

processor may be a microcontroller, but may also be something more generic.

JA90(4:12-13) (The processor may be a microcontroller); JA98 (claim 3) (3.

The integrated circuit card of claim 1 wherein the processor comprises a

microcontroller.). Indeed, numerous claims of the patents-in-suit, including the

asserted claims, do not recite microcontroller[s], but rather other form factors

integrated circuit card[s] and programmable device[s]that comprise, among

other things, generic embedded processor[s]. JA98-102, JA105-08 (317 Patent,

claims 1, 4-11, 13-15, 22, 24, 25, 30, 31, 55, 64, 84-86, 93, and 94); JA178-79

(727 Patent, claims 1-7, 10, 12, 14, and 16-18).

H. Gemaltos Inventions Have Had a Dramatic Impact on the Worldof Mobile Computing.

Gemaltos inventions were immediately met with extraordinary industry

acclaim. For good reasonas the former CEO of the company that created Java

(Sun Microsystems) recognized, [f]itting Java technology inside smart cards was

like playing golf in a telephone booth. JA643. In addition to receiving numerous

accolades, Gemaltos inventions also spawned the adoption of a new specification

for Java-based smartcards, which has since been implemented in billions of



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devices sold around the world. JA349. Thanks to the patents-in-suit, smartcards

have become the most widely sold general purpose computer in the world. Id.

Virtually all of Gemaltos competitors have taken a license to the patents-in-suit.

JA648.

I. Years After the Inventors Managed to Deploy Java Within theResource-Constrained Environment of an Embedded System,

Googles Android Team Found Itself Vexed by the Same Problem.

In the mid 2000s, Defendant Google




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JA261 (All your Java

code [is] compiled by the Java compiler and .class files are output. The dex tool

converts the .class files to Dalvik byte code.).




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Javaand Gemaltos patented conversion technology that allows Android

smartphones to run Java applicationsremains critical to Androids success.

Indeed, Google management continues to believe that the technical alternatives to

Java all suck. JA723.

J. The Operation of the Embedded Systems in the Accused AndroidSmartphones.

In moving for summary judgment, Defendants did not dispute that the

accused Android smartphones utilize Gemaltos patented Java conversion

technology. JA261 (All your Java code [is] compiled by the Java compiler and

.class files are output. The dex tool converts the .class files to Dalvik byte code.).

Each of the accused smartphones is powered by a circuit card, i.e., a motherboard,

with an embedded processor chip that controls the phone and runs Java

applications. The motherboard of a representative accused smartphone (the

Motorola Droid Pro) is shown below:




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Embedded processor chips like those utilized in the accused Android smartphones

are the 21st century equivalent of microcontrollers. JA725.

Each of the processor chips in the accused Android smartphones employs a

modified Harvard architecture, in which a CPU in the processor chip employs

separate and exclusive memory space for application program instructions and

data. JA713. The processor chips of the accused Android smartphones maintain

in them a separate and distinct instruction cache and data cache for the CPU of

the processor to use at the lowest cache level (called L1 cache). Id. The L1

instruction cache is the only memory from which the CPU of the processor

executes program instructions.Id.

Cache memory is high-speed RAM that is contained on the same

semiconductor substrate as the CPU.Id. This is the case with the processor chip in

each of the accused Android smartphones. Id. Further, the cache memory in each

MotorolaDroidProProcessorchip(SystemonaChip(SoC))



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of these processor chips contains both a level 1 (L1) instruction cache and a level 1

(L1) data cache. Id. The CPU of the processor exclusively fetches and executes

instructions from the L1 instruction cache. JA713-14. The cache memory also

includes a unified level 2 (L2) data cache that stores both program instructions,

converted byte codes, and other data needed by the processor. JA713. The L2 data

cache is also located on the same semiconductor substrate as the CPU in the

processor.Id.

When the CPU in the accused Android smartphones seeks to fetch a

program instruction for execution, it does so by sending the fetch request to the L1

instruction cache. JA713-14. If the particular program instruction resides in the L1

instruction cache, the L1 instruction cache will immediately provide the program

instruction to the CPU of the processor. Id. If the particular program instruction

does not reside in the L1 instruction cache of the processor at that point, the cache

controller will determine if the program instruction resides in the L1 data cache or

the L2 data cache.Id. If the program instruction resides in the L1 data cache or the

L2 data cache, a block of instructions including the requested instruction will be

moved from the L1 data cache or the L2 data cache to the L1 instruction cache so

that it can be provided to the processors CPU.Id. From the L1 instruction cache,

the requested instruction will then be provided to the CPU for execution.Id.



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If the program instruction does not reside in the L1 or L2 data cache, the

cache controller will retrieve a block of instructions from the off-chip main system

memory (off-chip RAM or separate flash memory) also embedded in the circuit

board of the Android smartphones. JA714. The cache controller will place a copy

in both the L2 data cache and the L1 instruction cache. Id. The requested

instruction is then provided from the L1 instruction cache to the CPU for

execution.Id. Significantly, when the CPU attempts to fetch a program instruction

from the L1 instruction cache, that program instruction resides in the L1 instruction

cache or the L2 cache at least 97% of the time. JA718; JA731-32.

This is undisputed and was confirmed through testing of the accused

Android smartphones, as explained in a detailed declaration submitted with

Gemaltos opposition to Defendants motion for summary judgment. JA726-33.

And the result is not surprising: for efficiency reasons the cache controllers are

designed to minimize off-chip memory fetch and access during execution. JA718.

Thus, again, the accused Android smartphones are designed such that any

particular program instruction called or requested by the CPU of the processor will

already reside in the on-chip cache memory at least 97% of the time. Id.; JA731-

32.

The accused Android smartphones thus use embedded systems and run

converted Java applications. JA719. And they further operate in a resource-



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constrained environmentcompared to traditional desktop platforms, the accused

smartphones have limited computing power, smaller amounts of memory, smaller

amounts of semi-permanent storage, constraints in power consumption, and less to

offer in terms of operator interfaces. Id. As a result, these Android smartphones

(and the integrated circuit cards embedded therein) would not offer the application

flexibility of traditional computing platforms without Gemaltos conversion

technology.Id. Many standard desktop computing applications, for example, such

as word processing, spreadsheets, graphics presentation, publishing, and

photo/video manipulation, will not run or cannot be run effectively on the Android

smartphones without the patented Java conversion technology.Id.

K. The Markman and Summary Judgment OrdersNotwithstanding the intrinsic evidence demonstrating an intent to claim

embodiments that use a mix of on- and off-chip memory, the district court

construed the terms microcontroller, integrated circuit card, and

programmable device so as to exclude embodiments making any use of off-chip

program memory. That is, the court construed the terms: (1) microcontroller as

a single semi-conductor substrate integrating electronic circuit components that

includes a central processing unit andall program memory making it suitable for

use as an embedded system; (2) integrated circuit card as a card containing a

single semiconductor substrate having a central processing unit and all program



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memory; and (3) programmable device as having the same meaning and scope

of microcontroller. JA27; JA31; JA33.

It is undisputed that the terms program memory and all program

memory, found in each of these constructions, do not appear anywhere in the

patents or the prosecution history. Nor were these terms proposed by any of the

parties in this case. JA22; JA28; JA31. They were instead adopted by the

magistrate judge during the initial claim construction determination. JA27; JA31;

JA33. Perhaps recognizing the powerful intrinsic evidence regarding embodiments

with a mix of on- and off-chip memory, the magistrate explained in the Markman

order that the construction does not prevent a microcontroller from accessing

any external memory . Under the Courts construction, a microcontroller may

access off chip memory to store and retrieve data stored in a static RAM. JA26.

The courts rulings on summary judgment, however, made clear that these

constructions exclude embodiments making any use of off-chip memory to store

any portion of the application instructions converted with the patented techniques.

JA8-10.

In the February 25, 2013 Report and Recommendation, adopted by the

district court on April 14, 2013, the magistrate judge held that by virtue of the fact

that Defendants devices store program instructions off-chip and access those off-

chip instructions to run the accused applications, they [do] not literally infringe.



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JA12. The magistrate rejected Gemaltos argument that the cache memory of the

accused Android smartphones met the limitation in question, holding that memory

space only temporarily holding program instructions does not constitute all

program memory necessary for execution. JA 9-10.

The magistrate also rejected Gemaltos doctrine of equivalents (DOE)

arguments. In support of those arguments, Gemalto submitted a declaration from

its patent-infringement expert opining thatbased on the tests that had been

performedthe accused Android smartphones satisfied the all program memory

limitation under the doctrine of equivalents. That is, Gemaltos expert opined that

having the necessary program instructions in on-chip memory 97% of the time was

insubstantially different from having those program instructions in on-chip

memory 100% of the time. JA12-14. The magistrate judge rejected Gemaltos

DOE arguments reasoning that the accused devices on-chip memory cannot meet

the all program memory limitation by equivalence, reasoning that because the

all program memory limitation was structural in nature it could not be met

either literally orby equivalenceby on-chip volatile memory. JA12-13.

V. SUMMARY OF ARGUMENTIn granting summary judgment of noninfringement, the district court

committed three legal errors.



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First, the court erred in equating the broad term programmable device

with microcontroller, a facially narrower term that is one of the preferred

embodiments disclosed in the specification. This Courts precedent holds that,

absent clear and unmistakable evidence to the contrary, it is inappropriate to

confine the scope of a patent claim to an embodiment discussed in the

specification. Phillips v. AWH Corp., 415 F. 3d 1303, 1323 (Fed. Cir. 2005)

(noting that although the specification often describes very specific embodiments

of the invention, we have repeatedly warned against confining the claims to those

embodiments) (citing Nazomi Commcns, Inc. v. ARM Holdings, PLC, 403 F.3d

1364, 1369 (Fed. Cir. 2005) (claims may embrace different subject matter than is

illustrated in the specific embodiments in the specification)). The error in the

district courts construction of programmable device as microcontroller is

particularly glaring given that (1) the programmable device claims do not recite

a microcontroller limitation; instead they recite a generic embedded processor,

a term that, according to the specification maybut need notbe a

microcontroller; and (2) during the prosecution history, the PTO examiner

understood the programmable device claims to be a broader recitation than

the integrated circuit card and microcontroller claims of the 317 Patent.

Second, the district court erred in importing the location-restricting all

program memory limitation into its constructions for the claim terms integrated



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circuit card and microcontroller. The court effectively determined that the

applicants disclaimed any embodiment of their inventions making use of memory

external to the processor to store the converted application program instructions.

That determination, however, is at odds with the entirety of the evidentiary record.

Indeed, embodiments that utilize off-chip memory to store applications are

specifically claimed in claim 4 of the 317 Patent, which Gemalto is asserting in

this lawsuit. Furthermore, the district courts claim construction order

acknowledged that embodiments of the invention may in fact utilize external

memory, and there is nothing in the patents disclosure or the prosecution history

that evidences an intent by the patent applicants to disclaim embedded systems that

utilize off-chip memory to store applications (as opposed to data). Indeed, to the

contrary, the claims themselves expressly cover embodiments whose embedded

processors rely on external memory to store applications. Moreover, the

uncontroverted evidence shows that throughout the 1990s (and even to the present

day) microcontrollers were and are regularly designed to use external memory to

store application program instructions for this purpose.



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Third, even if the district courts constructions for the terms

microcontroller, integrated circuit card, and programmable device were

correctthough they are notthe court nevertheless erred in granting summary

judgment of noninfringement under the doctrine of equivalents (DOE).

Gemaltos summary judgment evidence demonstrated that at least 97% of the time

the CPU calls for program instructions to be executed, those instructions are

already present in the on-chip cache memory of the accused smartphones

processor chips. Gemaltos expert further opined that, in this context, 97% of the

time represented an insubstantial difference from 100% of the time. This testimony

created an issue of fact for the jury to resolve. Crown Packaging Tech., Inc. v.

Rexam Bev. Can Co., 559 F.3d 1308, 1312 (Fed. Cir. 2009). Contrary to the

magistrates conclusion, Gemaltos DOE arguments do not contravene the all-

elements rule and do not implicate claim vitiation. The DOE, by its very nature,

assumes that some element is missing from the literal claim language. Deere &

Co. v. Bush Hog, LLC, 703 F.3d 1349, 1356 (Fed. Cir. 2012). There is no dispute

that the accused Android smartphones contain on-chip memory, and that the

program instructions to be executed for an application will be located in the on-

chip cache 97%orvirtually allof the time. A jury should have been allowed to

consider and resolve the DOE issue, and the district courts decision to short-

circuit this factual inquiry at summary judgment should be overturned as just the



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VII. ARGUMENTA. The District Court Erred in Granting Summary Judgment of

Noninfringement Based on Its Incorrect Constructions of the

Claim Terms Programmable Device, Integrated Circuit

Card, and Microcontroller.

The district court held that each of these terms of varying breadth was

subject to the same narrowing limitation of claim scopefound nowhere in the

claims or the specificationrequiring that any programmable device, integrated

circuit card, or microcontroller practicing Gemaltos Java conversion

techniques include all program memory on a single semiconductor substrate.

JA27; JA31; JA33. The court thus effectively concluded that Gemaltos patents

disclaim any embedded-system embodiment that utilizes off-chip memory to store

program instructions. JA12. That conclusion is in error, and both the claim

constructions and summary judgments flowing from it must be reversed. See

Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1338 (Fed. Cir. 1999)

(Summary judgment should ordinarily be vacated or reversed if it is based on a

claim construction that this court determines to be erroneous.); Intl Visual Corp.

v. Crown Metal Mfg. Co., 991 F.2d 768, 772 (Fed. Cir. 1993).

1. The broader term programmable device is notcoextensive with the narrower term microcontroller.

In its construction for the term programmable device, the district court

expressly found that a programmable device is a microcontroller, see JA33,

thereby equating the programmable device claims of the 727 Patent with one of



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the preferred embodiments disclosed in the specification. For several reasons, this

construction was clear error.

First, the district courts construction runs afoul of this Courts admonition

that, absent a clear expression of intent to the contrary, it is inappropriate to

confine claims to specific embodiments discussed in the specification. Phillips,

415 F.3d at 1323 (noting that although the specification often describes very

specific embodiments of the invention, we have repeatedly warned against

confining the claims to those embodiments) (citing Nazomi Commcns, 403 F.3d

at 1369 (claims may embrace different subject matter than is illustrated in the

specific embodiments in the specification)). Here, there is nothing in the

specification or the prosecution history that manifests an intent by the applicants to

equate the term programmable device with the term microcontroller.

Second, while the district court noted that [b]ecause programmable device

is not a term of art and has no plain and ordinary meaning, it is particularly

important to construe the term in the context of the intrinsic record, JA32, it does

not follow that programmable device should be construed as microcontroller.

For one thing, as the district court acknowledged, the specification does not

[even] use the term programmable device. Id. For another, the programmable

device claims of the 727 Patent do not in fact recite a microcontroller; they

recite a generic embedded processor, and the specification itself makes clear that



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the processor element recited in the programmable device claims neednotbe a

microcontroller. JA90(4:12-13) ([T]he processor may be a microcontroller.).

The error in the district courts construction is thus particularly strikingat

bottom, the district court equated programmable device with something even

narrower than the processor limitation recited in the programmable device

claims, completely ignoring the specifications admonition that the processor

need not be a microcontroller.

Third, the prosecution history underscores the common sense conclusion

that the programmable device claims of the 727 Patent were intended to be

broader than the microcontroller and integrated circuit claims of the 317

Patent. In particular, during the prosecution of the programmable device claims,

the Examiner initially rejected those claims on the ground of non-statutory double

patenting. JA737, JA751. In so doing, the Examiner observed that the present

claims are merely considered a broader recitation of claims 1-86 of the 317

Patent, JA751, which includes scores of microcontroller and integrated circuit

card claims. While the patent applicants ultimately overcame the double-patenting

rejection by filing a terminal disclaimer, the intrinsic evidence leaves no doubt that

the programmable device claims were understood by both the patent applicants

and the PTO to have a broader scope than the microcontroller claims of the 317

Patent.



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Fourth, by turning to a preferred embodiment to construe a claim term that

is facially broader than all of the embodiments discussed in the specification, the

district court overlooked this Courts directive that the words of the claims

themselves define the scope of the patented invention. Phillips, 415 F. 3d at

1313 (emphasis added) (quotingInnova/Pure Water, Inc. v. Safari Water Filtration

Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). Here, the district court had to go

no further than the claims themselves to find a proper construction. That is

because, when considered in the context in which it is used in the asserted claims,

programmable devicefound in a preambleis nothing but a descriptive name

for the invention that is fully set forth in the bodies of the claims. Am. Med. Sys.,

Inc. v.Biolitec, 618 F.3d 1354, 1359 (Fed. Cir. 2010). Take, for instance, claim 3

of the 727 Patent, which reads:

A programmable device comprising:

a memory, and ;

a processor;

the memory comprising:

an interpreter; and

at least one application loaded in the memory

JA178. In context, it is clear that programmable device is nothing but a

convenient label for the invention as a whole. Am. Med. Sys., 618 F.3d at 1359

(finding such a term does not impose a claim limitation). A person of ordinary skill



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in the art would understand that any device that meets the limitations set forth in

the body of the claim falls within the scope of the 727 Patent.

Fifth, it makes no sense that the patent applicants would go through the

trouble of prosecuting two separate patents that claim, in strikingly different

language, subject matter that is virtually identical. Nor does it make sense that the

patent applicantswho are employees of a sophisticated multinational corporation

that holds thousands of patentswould choose to limit the scope of their

revolutionary inventions to one preferred embodiment (a microcontroller) when the

patents teach that the optimization techniques are useful for any embedded

processor or embedded device embodying it. See JA90(4:12-13) ([T]he processor

may be a microcontroller.). Indeed, as this Court noted in Phillips, persons of

ordinary skill in the art rarely would confine their definitions of terms to the exact

representations depicted in the embodiments. 415 F.3d at 1323; see also The

Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1371 (Fed. Cir. 2005) (a

patentee typically claims broadly enough to cover less preferred embodiments as

well as more preferred embodiments); Kara Tech. Inc. v. Stamps.com, 582 F.3d

1341, 1348 (Fed. Cir. 2009) (the patentee is entitled to the full scope of his

claims, and [the Court should] not limit him to [the] preferred embodiment or

import a limitation from the specification into the claims.) (citations omitted).



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In sum, Gemalto respectfully submits that, if it is to be construed at all, the

term programmable device should be held to mean a device that can execute a

computer program.

2. The all program memory limitation should not have beenimported into the claims.

The district court construed the claim terms microcontroller and

programmable device as a single semiconductor substrate integrating electronic

circuit components that includes a central processing unit and all program memory

making it suitable for use as an embedded system. JA27.3

The court further

construed integrated circuit card as a card containing a single semiconductor

substrate having a central processing unit and all program memory. JA31. As

clarified by the magistrate judge in the context of the courts ruling on summary

judgment, the all program memory limitation precludes embodiments that use

off-chip memory to store any portion of the application instruction code converted

with the patented techniques, and instead requires application instruction code to

be stored in permanent on-chip memory. JA8-10.

3Prior to the district courts resolution of the summary judgment motions, Gemalto

dropped the remaining asserted claim reciting a microcontroller. But because the

district courts constructions of integrated circuit card and programmable

device turn on and adopt the critical analysis and language of the courts

microcontroller construction, JA31; JA33, that analysis and language must be

addressed in this appeal.



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This claim construction issue thus boils down to a straightforward

questiondid the patentees disclaim devices that use off-chip memory to store any

portion of the application instruction code? Gemalto respectfully submits that there

is nothing in the evidentiary record that indicates a desire by the applicants to

disclaim such embodiments. In fact, the opposite is true.

First, the claims themselves confirm the absence of a disclaimer. Indeed,

embodiments that rely on off-chip memory to store program instructions are

specifically claimed. In particular, claim 4 of the 317 Patent, which Defendants

acknowledge contemplates the use of external memory, see JA762-63, depends

from claim 1 and recites that only a portion of the memory of claim 1 need

reside in the processor chip. JA98. In turn, claim 1, which provides the

antecedent basis for claim 4, recites a memory storing an application derived

[from the patented conversion technology].Id. (emphasis added). In other words,

the patents expressly contemplate the use of memory external to the processor chip

for purposes of storing application[s]and indeed, claim devices that utilize

such external storage memory. This recitation of the claimed invention, which

expressly defines the on-chip memory as holding less than all of the program

instructions, cannot be reconciled with the district courts conclusion that

Gemaltos patents do not cover devices that utilize memory located external to the

processor chips to store program instructions. At bottom, the district courts



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constructions for microcontroller and integrated circuit card fail to account for

an embodiment expressly claimed in the patents disclosure. As such, these

constructions cannot stand under this Courts precedent.Accent Packaging, Inc. v.

Leggett & Platt, Inc., 707 F.3d 1318, 1326 (Fed. Cir. 2013) (We have held that a

claim interpretation that excludes a preferred embodiment from the scope of the

claim is rarely, if ever, correct.) (quoting On-Line Techs., Inc. v. Bodenseewerk

Perkin-Elmer GmbH, 386 F.3d 1133, 1138 (Fed. Cir. 2004)).

Second, the specification provides that implementations of the inventions

include devices whose memory may be stored off chip. JA90(4:13-14 ([a]t least

a portionof the memory may be located external to the processor)). The district

court itself recognized this, when it acknowledged that its construction[s] do[] not

prevent a microcontroller from accessing any external memory. JA26

(emphasis added). But while the district court held that embodiments of the

claimed inventions may utilize external memory for some purposes (such as

storing data), but not others (such as storing applications), there is nothing in the

specification that draws a distinction between what can and what cannot be stored

in external memory. Similarly, while the district court sought to ground the all

program memory limitation in the distinction drawn in the specification between

typical microprocessors, which usually have a relatively large external

memory, and typical microcontrollers, which usually have a much smaller



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memory, JA25, the distinction in question concerns solely the size of the

microcontrollers memory, not its location. Indeed, it is no more correct to say that,

because it has less memory than a microprocessor, all of the microcontrollers

memory must reside on the same semiconductor substrate or on chip than to say

that, because it is typically smaller than a mansion, an apartment must have only

one room. Take a typical microcontroller with 2.0 KB of RAM. If 1.0 KB is

placed on chip and the remainder is placed off chip or external to the

semiconductor substrate, the microcontrollers memory is still 2.0 KB, i.e., small

by comparison to a microprocessors, and that limited memory, cf. JA25, will

still render the microcontroller unable to run Java applications without utilizing

Gemaltos inventions.

In any event, the law is clear thatabsent clear and unmistakable statements

that evidence an intent to limit the scope of the claims themselveslimitations

from the specification should not be imported into the claims. See Phillips, 415

F.3d at 1320 (noting that reading a limitation from the written description into the

claims is one of the cardinal sins of claim construction) (quoting SciMed Life

Sys., 242 F.3d at 1340); Retractable Techs., Inc. v. Becton, Dickinson & Co., 653

F.3d 1296, 1306 (Fed. Cir. 2011). Here, there is nothing in the specification that

amounts to expressions of manifest exclusion or restriction, representing a clear

disavowal of claim scope concerning devices that rely on external memory to



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store program instructions, id., and thus the district court committed error in

limiting the claims.4

Third, nothing in the prosecution history contravenes the patents disclosure.

There is certainly nothing that comes close to the clear and unmistakable

standard that is required by this Courts precedent. Grober v. Mako Products, Inc.,

686 F.3d 1335, 1341 (Fed. Cir. 2012). The district court did not find otherwise, and

its citation to portions of the prosecution history that highlighted the differences in

typical memory requirements between embedded systems and traditional

computing systems, JA24-25, do not amount to a disclaimer. Again, these

statements simply explain the utility of the applicants inventions, and were not

intended to limit the claims. The law is clear that merely highlighting the objective

of a patent applicants invention does not result in a finding of disclaimer. In re

Rambus Inc., 694 F.3d 42, 47 (Fed. Cir. 2012) (This court agrees with the Board

that the specification does not restrict the invention to single chip memory devices.

4Moreover, even if the disclosure in the specification concerning the differences

between microprocessors and microcontrollers amounts to a disclaimer (and

Gemalto respectfully submits that it does not), such a disclaimer should have no

impact on the integrated circuit card claims. Those claims do not recite a

microcontroller; rather, they recite a generic embedded processor, and thespecification makes clear that the processor need not be a microcontroller.

JA90 (4:12-13). Thus, correct or not, the construction for microcontroller should

have no impact on claims that recite a different limitation. SeePhillips, 415 F.3d at

1320 (noting that reading a limitation from the written description into the

claims is one of the cardinal sins of claim construction) (quoting SciMed Life

Sys., 242 F.3d at 1340).



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There are no words of manifest exclusion or clear disavowals of multichip

devicesthere are only preferred embodiments and goals of the invention that

are better met by [certain preferred embodiments]. The specification language

shows only that the invention can be carried out with [a preferred embodiment], it

does not require the invention to be so performed.) (emphasis added); Golight,

Inc. v. Wall-Mart Stores, Inc., 355 F.3d 1327, 1330-31 (Fed. Cir. 2004) (the

patentees description of particular advantage[s] of the invention cannot limit the

claims); Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1301

(Fed. Cir. 2003) (The objective described is merely one of several objectives that

can be achieved through the use of the invention; the written description does not

suggest that the invention must be used only in a manner to attain that objective.).

Fourth, the district courts decision to limit the claims and exclude devices

powered by embedded processors that rely on external memory to store program

instructions is particularly striking given that it makes no commercial sense. The

uncontroverted evidence establishes that throughout the 1990s (and even today)

microcontrollers were regularly designed to use external memory to store program

instructions. See supra at 12. As this Court has noted, in an unpublished decision,

common sense should not be left on the side of the road during claim

construction. Kress Corp. v. Alexander Servs., 1998 U.S. App. LEXIS 12742, *18

(Fed. Cir. June 15, 1998) (unpublished). On the record before the Court, it makes



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no sense that the patent applicants would wish to disclaim the very types of

hardware to which persons of ordinary skill in the art would turn to make

commercial embodiments of the inventions taught by the patents.

Fifth, there is no basis for the district courts conclusion that the claims

Gemalto has asserted against Defendants can be infringed only by devices that

permanently store program instructions in on-chip memory. JA12-13. As noted, the

specification discusses both volatile and non-volatile memory, see JA89(2:11-34),

and the claims do not specify that the embodiments of the invention must be

powered by processors that use non-volatile on-chip memory. Indeed, the type of

memory the claimed embodiments processors must carry on-chipbe it RAM,

ROM, or EEPROMis nowhere even discussed in the asserted claims. Moreover,

purpose of the memory claimed in the asserted claims is to stor[e] the

converted applications for executionby the claimed processor. See, e.g., JA98

(claim 1) (emphasis added). Storing for execution and storing permanently,

however, are two different things, and it is undisputed that all the program

instructions executed by the accused Android devices embedded processors are

indeed stored in on-chip memory during execution.

As this Court recently explained, courts called upon to protect hard-earned

intellectual property rights should strive to capture the scope of the actual

invention, rather than strictly limit the scope of claims to disclosed embodiments or



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allow the claim language to become divorced from what the specification conveys

is the invention. Retractable Techs., 653 F.3d at 1305. Here, the district courts

claim construction and grant of summary judgment dramatically limited the claims

to a scope significantly narrower than they unambiguously recite. Because the

evidentiary record demonstrates that the applicants intended to claim embodiments

of their inventions that rely on memory external to the processor chip to store

program instructions, the Court should overturn the district courts constructions

and interpret those terms as Gemalto requests. In particular, (1) microcontroller

should be interpreted as a single semi-conductor substrate integrating electronic

circuit components that includes a central processing unit and memory making it

suitable for use as an embedded system; and (2) integrated circuit card should

be interpreted as a card containing a single semiconductor substrate having a

central processing unit and memory.5

5Gemalto acknowledges that the constructions for integrated circuit card and

microcontroller Gemalto pursued in its Objections to the Markman Orderretained references to program memory (as opposed to just memory).

However, to avoid any potential ambiguities concerning the meaning of the term

program memory, Gemalto respectfully submits that the Court adopt

constructions that refer to just memory without the modifier program.

Alternatively, Gemalto respectfully requests that the term program memory be

defined as memory from which the embedded processor executes instructions.



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B. Even if Its Constructions for the Relevant Claim Terms WereCorrect (And They Are Not), The District Court Erred in

Granting Summary Judgment on Gemaltos Doctrine of

Equivalents Arguments.

Even if the district courts constructions for microcontroller, integrated

circuit card, and programmable device were correct (and they are not), such that

the accused Android smartphones do not literally have all [their] program

memory on the single semiconductor substrate that includes the CPU, the district

court still committed error by entering summary judgment of noninfringement. As

noted, the accused Android smartphones execute 100% of the program instructions

from on-chip cache memory, and 97% of the time the instruction code to be

executed for a given application is stored in the on-chip cache memory (either the

L1 instruction cache, the L1 data cache, or the L2 data cache) before it is requested

or needed by the CPU. JA718; JA731-32. Whether this scenario represents an

insubstantial difference from having 100% of program instructions stored in and

executed from on-chip memory 100% of the time is a question of fact for the jury

to decide. Crown Packaging, 559 F.3d at 1312. The district courts decision to

short-circuit this inquiry pre-trial was contrary to this Courts precedent.

As this Court recently confirmed, Courts should be cautious not to shortcut

this [DOE] inquiry by identifying a binary choice in which an element is present

or not present. Deere, 703 F.3d at 1356-57 (reasonable jury could have found

that indirect contact and direct contact are insubstantially different). Indeed, in



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GuideTech, this Court reversed a district courts summary disposition of a DOE

argument on strikingly similar facts: the accused infringer successfully

demonstrated that the accused devices did not literally infringe two of the patents-

in-suit because, as construed by the district court, those patents required that the

capacitors installedoutside of, and in parallel to, a first current circuit, whereas the

accused devices had a capacitor installed within the first current circuit. Brilliant

Instruments, Inc. v. GuideTech, LLC, 706 F.3d 1342, 1346-47 (Fed. Cir. 2013).

Even though this Court agreed that there was no literal infringement, it held that

the district court had improperly granted summary judgment on the patentees

DOE arguments, and reversed and remanded the case for trial. Relying on Deere,

the Court observed:

Everyone agrees that the capacitor in the accused device is not located

in exactly the same place as the claimed capacitor, but is the change

in location an insubstantial difference? We conclude that, viewing all

factual inferences in favor of [the patent holder] [there is] a

genuine issue of material fact which precludes summary judgment.

Id. at 1348 (emphasis added). Here, as was the case in GuideTech, Defendants

persuaded the district court to grant them summary judgment based solely on the

fact that the memory that permanently stores program instructions when not

needed by the embedded processor or microcontroller is located off chip. Just as

this Court held in GuideTech, however, the location of the storage memory cannot

be case-dispositive. That is because the extent to which the accused Android



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smartphones reliance on a combination of on-chip execution and off-chip storage

memory is different from having all program instructions stored on chip all the

time should be left for the jury. Id. As was the case inDeere andGuideTech, the

equivalents analysis does not vitiate the all program memory limitation because

the antithesis or opposite of all (100%) is none (0%), not virtually all (97%).

GuideTech, 706 F.3d at 1347 (The vitiation test cannot be satisfied merely by

noting that the equivalent substitute is outside the claimed limitations literal

scope. Rather, vitiation applies when one of skill in the art would understand that

the literal and substitute limitations are not interchangeable, not insubstantially

different, and when they do not perform substantially the same function in

substantially the same way, to accomplish substantially the same result.).

Furthermore, the district court appears to have concluded thateven in the

context of an equivalence inquirythe all program memory limitation can be

met only by permanent, as opposed to volatile cache memory. See JA10-12.

Gemalto respectfully submits that this conclusion is at odds with the evidence.

Again, there is no indication that the patent applicants intended that embodiments

of the claimed inventions use only non-volatile memory on chip with the

processor. JA89(2:11-34). As such, the district courts conclusion that, as a matter

of law, volatile cache memory can never be equivalent to program memory is

unsupported.



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VIII. CONCLUSION AND RELIEF REQUESTEDFor all of these reasons, this Court should: reverse the district courts

construction of the terms microcontroller, integrated circuit card, and

programmable device; adopt Gemaltos proposed constructions of those terms;

and reverse the summary judgments of noninfringement based on those terms. This

Court should then vacate the final judgments and remand this litigation to the

district court for further proceedings.



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Respectfully submitted,

Dirk D. Thomas

MCKOOL SMITH P.C.

1999 K Street, Suite 600

Washington, DC 20006

(202) 370-8302

/s/ Robert A. Cote

Robert A. Cote

MCKOOL SMITH P.C.

One Bryant Park, 47th Floor

New York, New York 10036

(212) 402-9400

Joel L. Thollander

MCKOOL SMITH P.C.

300 W. 6th Street, Suite 1700

Austin, TX 78701

(512) 692-8735

Attorneys for Plaintiff-Appellant

Gemalto S.A.


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