Funai Electric Co., Ltd. v. LSI Corporation
5:16-cv-01210
N.D. Cal.Oct 23, 2017Background
- Funai sued for a declaratory judgment of noninfringement of U.S. Patent No. 5,870,087 (the ’087 patent), an MPEG decoder patent claiming a "single unified memory" shared by transport logic, system controller, and MPEG decoder. The court held a Markman hearing to construe five disputed claim terms.
- The ’087 patent describes an MPEG decoder that centralizes code/data for transport logic, system controller, and decoder functions in a single unified memory (preferred embodiment: a 16 Mbit SDRAM). Prior art typically used separate memories for motion compensation and for transport/system controller functions.
- Parties disputed whether "single memory" requires a single physical device, whether "transport logic" and "system controller" must be hardware and separate, whether "channel receiver" is means-plus-function, and whether "coupled to" requires a hardware connection.
- Evidence showed that in 1996 decoders were typically hardware but hybrid and software implementations were known; the specification uses functional descriptions and shows memory portions and a memory controller that could support multiple devices functioning as a unit.
- The court relied primarily on claim language and specification (intrinsic record), consulted extrinsic technical materials about 1996 decoder practice, and applied Nautilus definiteness principles.
Issues
| Issue | Funai's Argument | LSI's Argument | Held |
|---|---|---|---|
| Construction of "single memory" / "first unified memory" | Means a single memory device (single chip) storing code/data for all functions; otherwise indefinite | Broad: memory can be multiple devices so long as they function as a unit | "single memory" / "first unified memory" = "memory functioning as a unit"; not limited to a single chip and not indefinite |
| Whether "single memory" is indefinite | Multiple plausible constructions render claims indefinite | Term is understandable to POSITA when read with spec/prosecution history | Not indefinite under Nautilus; POSITA can determine when memory "functions as a unit" |
| Construction of "transport logic" | Must be hardware and separate from system controller and decoder | Can be hardware or software; functional term (demultiplexing) | "transport logic" = "a component of the video decoding system, which operates to demultiplex received data into a plurality of individual multimedia streams"; need not be hardware or separate |
| Construction of "system controller" | Generic term; could be indefinite | Is a hardware component that can execute software and control operations | "system controller" = "a hardware component of the video decoding system that can execute software, which controls operations in the system and executes programs or applets comprised in the video stream"; not indefinite |
| "Channel receiver for receiving an MPEG encoded stream" / means-plus-function contention | Phrase is means-plus-function and invalid for lack of disclosed structure | Agreed at hearing: "channel receiver" = digital data receiver; remaining language needs no construction | Court adopted parties' agreed construction: "channel receiver" = "a digital data receiver that receives data from a channel"; no means-plus-function finding needed |
| Meaning of "coupled to" | Requires a hardware connection (transfer of signals between separate components) | Can be hardware or software interdependence (code-level coupling) | "coupled to" = "having an interdependence with"; encompasses both hardware and software coupling |
Key Cases Cited
- Markman v. Westview Instruments, 517 U.S. 370 (claim construction is a question of law)
- Phillips v. AWH Corp., 415 F.3d 1303 (en banc) (claims read in view of specification; POSITA standard for claim meanings)
- Nautilus, Inc. v. Biosig Instruments, 134 S. Ct. 2120 (definiteness requires claims inform with reasonable certainty)
- Poly-Am., L.P. v. API Indus., 839 F.3d 1131 (disclaimer/disavowal in specification can limit claim scope)
- Comaper Corp. v. Antec, 596 F.3d 1343 (caution against limiting claims to a preferred embodiment)
- SuperGuide Corp. v. DirecTV Enterprises, 358 F.3d 870 (claims not to be limited to legacy technology when language is broad and art includes alternatives)
- Cox Commc'ns, Inc. v. Sprint Commc'n Co., 838 F.3d 1224 (indefiniteness inquiry focuses on claims as a whole)