*1 According not were considered. to Mira- Conclusion Tuesday, that cle the articles “show cus- reasons, foregoing For the and because necessarily tomers concerned Tuesday’s we find that Miracle remaining country country of origin about the or of merit, arguments are without affirm we product, manufacture of a other but fea- register the Board’s refusal to the mark product, particu- tures which in this JPK design PARIS 75 and Section under arguably lar instance ‘source’ includes of 2(e)(3). designer, ‘origin’ the design- AFFIRMED ” Appellant’s er.... Br. 24. response, argues PTO articles “are irrelevant to proper statu-
tory inquiry goods of whether the come the place named the mark” and
thus the Board “had no obligation to ad- them in Appellee’s
dress its decision.” Br. CORPORATION, SANDISK 15, n.7. The argues PTO further that the Plaintiff-Appellant, fully Board Tuesday’s considered Miracle theory goods need not be manufac- v. place to originate tured there. We CO., KINGSTON TECHNOLOGY INC. agree the PTO on both points. Kingston Technology Corp.,
First, Defendants-Appellees. discussed, previously as the rele- inquiry vant under the statute focuses on No. 2011-1346. origin goods origin —not United States of Appeals, Court designer. Second, mere fact Federal Circuit. the Board did not recite all evidence it considered does mean evidence 9, 2012. Oct. not, fact, was reviewed. Plant See Ge- Sys., netic N.V. v. DeKalb Corp., Genetics (Fed.Cir.2003) (‘We
315 F.3d
presume that a fact finder reviews all the presented
evidence explicitly unless he ex- otherwise.”) (citation
presses and internal omitted).
quotation And, marks as the argues,
PTO it clear Board fully Tuesday’s theory
considered Miracle “originate.” Decision,
word See Board *2,
2011 WL TTAB LEX- 32, at
IS *6-7 (considering and rejecting that, argument “because creative applicant’s products
force behind lived and
worked years, Paris for 23 the Board
should design applicant’s consider the
products Paris”). having originated
Accordingly, find we that Miracle Tues-
day’s evidentiary challenge lacks merit. *3 (“'808
5,719,808 (“'316 6,149,316 patent”), (“'893 Patent”), 6,426,893 6,757,- patent”), (“'842 (“'424 6,763,424 patent”), patent”). After the district court issued its claim opinion, construction infringement withdrew its claims with re- spect patents to the '808 and '893 1, 6, 7, 10, 12, 15, 18, and 20 of the granted The district court *4 Kingston’s summary judgment motion for non-infringement respect of with to certain '842, '316, asserted claims of the and '424 patents. SanDisk dismissed its remaining infringement appealed claims and has judgment. district court’s For the reasons below, part, set forth we affirm in vacate in part, and remand for proceed- further ings. Castanias, Gregory Day, A. Jones of Background I. DC,
Washington, argued plaintiff-ap- for patents-in-suit The all relate to various pellant. Doug- him on the brief was With aspects memory, of flash which is the type Cole, Columbus, las R. of OH. Of counsel Electrically Programmable Erasable Dorfman, York, NY, were Victoria New (“EEPROM”) Read-Only used, Memory Lanier, Alto, and Tharan of Palo G. CA. drives,” for example, USB “thumb com- Barkan, puters, phones, smart mp3 players. David M. Fish & Richardson and A CA, City, memory benefit of flash argued P.C. Redwood for is that it is “non- volatile”; words, him in other it defendants-appellees. With on the continues to Hoffman, Austin, power brief was store data even after the David TX. source is drive, on A example, Of counsel the brief was Christine removed. thumb for Yang, Law Yang, being Offices of S.J. Christine retains its saved data after removed Valley, computer of Fountain from a host CA. Of counsel was and can be used to Smith, Boston, transport computer Alan D. MA. data from one to an- other. PROST, REYNA, Before A typical memory flash device includes WALLACH, Judges. Circuit memory one or more flash integrated cir- cuit chips and a controller. Each flash Opinion by for the court filed Circuit memory chip memory contains cells for Judge Opinion concurring-in- PROST. storing data. The arranged cells are as part and dissenting-in-part filed Circuit “pages” multiple pages comprising Judge REYNA. “block” of cells. PROST, Judge. Circuit The flash device’s controller ac- (“Sandisk”) Corporation cepts sued commands from the “host” device Co., Kingston Technology King- (e.g., Inc. and computer which USB attached) ston Technology Corp. (collectively “King- thumb drive is and then writes ston”) to, from, infringement of U.S. Patent Nos. or retrieves data the memo- 15, 18, 1, 6, 7, 10, 12, claims respect device’s on the host chip depending
ry all asserted patent and data, and 20 of the '842 and retrieve To write command. Both patents. of the '893 identify where claims must be able controller summary judgment. moved for system. parties located in the of data is piece each mo- SanDisk’s granted The district accomplished tracking of data This claim that as to SanDisk’s tion “addressing.” general, through 20, 24, contributorily infringing was of addresses: types uses two system by selling and 30 The ad- “logical.” physical “physical” Phison PS3006 con- containing a products in the location physical refers to the dress remaining all as- respect to troller. With particular data is stored. system where claims, King- the court found for a serted is the identifier logical address a matter of law infringing data; ston was it describes the data specific piece of judgment in favor ultimately entered physical loca- regard to the data’s without claims. After the Kingston on those piece of data particular tion. Because order, summary judgment location, district court’s change can its *5 Stipulation entered into a parties may physi- with one address be associated Remaining for Dismissing Claims physi- another Order at one time and cal address whereby (“Stipulation”), SanDisk The con- Relief at a different time. cal address remaining its prejudice without address to the dismissed maps troller '424 address, involving claims infringement the flash allowing correct without Kingston dismissed patent, the correct memory system provide invalidity its related and en- prejudice host device. data to the 17754-55. forceability counterclaims. J.A. memory, the typical computer Unlike ju- timely and we have appealed, SanDisk memory the flash cell must be old data on 1295(a)(1). § under 28 U.S.C. risdiction is every time new data written erased memory cells are erased an the cell. The II. Discussion time, while data is written entire block at argues that the dis- appeal, On SanDisk time; page at a the erasure to the cell one in trict court erred its construction therefore, data, larger seg- occurs “recording a rela- following claim terms: data. These writing ments than the ...” in claims programming tive time of memory cycles wear down the erase/write por- “user data patent; and 3 of the eventually longer no reli- cell until the cell 1, portion” in claims tion” and “overhead information. patents-in- ably stores 10, patent and claim 67 and 61 of the '842 systems methods and suit relate to various patent; “block characteristic of the '316 memory the data in the flash managing for in claims 1 and 65 of the '893 information” reducing system, including methods for “designating combination[ ] patent; the wear and tear on the flash patent. ...” in claim 16 of the '808 cells. argu- claim construction addition to its complaints filed two SanDisk ments, further contends that the SanDisk District Court for the Western Dis- U.S. legally entering erred in district court against Kingston trict of Wisconsin non-infringement in summary judgment of infringement, and the district court to claim 20 of the favor of January the two actions on consolidated claim 79 of the '316 patent and 28, the district court issued 2008. After order, question construction is Claim its claim construction Corp. v. Cybor reviewed de novo. infringement allegations with of law withdrew its Techs., Inc., 1448, summary 138 F.3d 1454-55 judgment opinion FAS that SanDisk (Fed.Cir.1998) (en banc). Claim terms We, had them. withdrawn J.A. 40. there fore, are construed in generally accordance with treat SanDisk’s withdrawal of the ordinary customary meaning they being claims as akin to either a Federal ordinary would have to one of skill the Rule of Civil Procedure 15 amendment to in light art and the complaint, Sears, see Gronholz v. Roe prosecution history. Phillips v. AWH Co., (Fed.Cir. 515, buck & 836 F.2d (Fed.Cir. 1303, Corp., 415 F.3d 1312-14 1987) (“[A] plaintiffs motion to dismiss a 2005) banc). (en single claim of a multi-count complaint is properly treated as an amendment under review the grant We district court’s 41(a) 15.”), ... [Rule] or a Rule voluntary summary novo, judgment de drawing all prejudice, dismissal of claims without see reasonable inferences favor of the non- Motorola, Inc., Nilssen v. 203 F.3d Inc., movant. Anderson v. Liberty Lobby, (Fed.Cir.2000) (“In many instances the 242, 255, 477 U.S. 106 S.Ct. for, procedure of, and effect (1986). amend L.Ed.2d 202 Summary judgment ment will be the voluntary same as a dis appropriate “if the movant shows that missal because of the similarities between genuine dispute there is no any as to mate- rules.”) (internal the governing quotations rial fact and the movant is entitled to omitted). and citations Regardless of how judgment as a matter of law.” Fed. withdrawal, we characterize the 56(a). these R.Civ.P. issue, longer are no and we ac *6 A. Claim Construction cordingly have no final judgment before us with respect to these claims to review. matter, As an initial Kingston argues that we should not address certain claim jurisdiction, however, Our is generally presented construction issues by SanDisk judgments: limited to final “Under the jurisdiction because either we lack to re- rule,’ judgment ‘final parties may only ap- view the district court’s construction or ” peal a ‘final decision of a district court.’ SanDisk waived right its to advance its Spread Spectrum Screening L.L.C. v. proposed First, appeal. construction on Co., 1349, Eastman Kodak 657 F.3d 1354 Kingston contends that jurisdic- we lack (Fed.Cir.2011) (quoting 28 U.S.C. tion to review the district court’s claim 1295(a)(1)). Here, § SanDisk voluntarily constructions related to claims 1 and 65 of withdrew the patents '893 and '808 patent, the '893 claim pat- 16 of claims 1 and 10 of the '842 ent, and claims 1 and 10 of the '842 action, and it dispute does not that the because SanDisk voluntarily withdrew district court never stipulated entered a those claims from the litigation without the judgment noninfringement respect with parties stipulating to a judgment of non- Thus, to these claims. these claims do not thus, infringement; Kingston argues, present infringement a current controver- judgment there is no for this court to sy before this court. Without such a con- agree. review. We troversy, jurisdiction we lack Article III to After the district Streck, court entered its decide these issues. See Inc. v. order, claim Inc., construction in Diagnostic Research & Sys., 665 F.3d 1269, (Fed.Cir.2012) (“It longer formed it was no 1281 is well-es- pursuing that, cases, these claims. The district court tablished in patent the exis- separate never entered a dismissing order controversy tence of a ‘case or must be claims, these but it acknowledged ”); in its claim-by-claim evaluated on a basis.’ 1354 limited, 1330, part, not including, F.3d whole or but Corp., Boston Sci. 532
Jang v. 22, (Fed.Cir.2008) September con (resolving appeal claim to an Court’s 1336 (cid:127) Order,” actually affect Construction J.A. not 2010 Claim issues “that do struction 17754-55, pur- evinces “intent to controversy between SanDisk’s infringement sue, appeal, ad on those impermissible arguments would result parties” claim-construction Supreme legally in- rulings were visory opinion “[t]he because correct,” including any arguments that Article III related explicitly has held Court claims, Reply is the courts to resolve to the withdrawn SanDisk’s permit does not it is not the resolution Br. 2. when clear that sues con question will resolve a concrete First, persuaded. Stipu- We are
troversy parties”). between interested fact that there change lation does judgment respect is no final result, reject we SanDisk’s' As withdrawn claims for us to review. With- ultimate district court’s contention judgment infringement out a final as to the judgment a final confers entry appellate claims, validity of the court’s these claims. jurisdiction over these withdrawn impact only claim constructions that these where, here, contrary, party’s To the before properly withdrawn are not affect construction do not arguments claim Second, parties’ agreement us. court, judgment the final entered right their Stipulation would not affect they are not Mass. Inst. renewable. See the entire or- appeal to claim construction Abacus Software, Tech. v. 462 F.3d a right appeal der cannot create where (Fed.Cir.2006) (refusing to address one otherwise does not exist. See Bender “pertinent construction arguments Dist., Williamsport v. Area School invalidity” only to dismissed claims of be 534, 541, L.Ed.2d U.S. S.Ct. appeal opportunity cause not an “[a]n (1986) (“[E]very appellate federal appellate every court rul bring before special satisfy has a obligation parties one ing with which or more of ... of its own ... even jurisdiction itself disagrees regard without to whether *7 parties concede though prepared to any final ruling way impacted has it.”) (internal quotation cita- marks and judgment”). omitted). Consequently, tions we conclude parties’ Stipulation, Nor does the relied jurisdiction that we lack to resolve San- SanDisk, jurisdic- upon establish our arguments Disk’s claim construction tion. After district court ruled on only the impact withdrawn claims. (and summary judgment motions after claims), Second, par- Kingston SanDisk withdrew these that San- argues whereby into Stipulation, right challenge ties entered Disk waived its to the dis “remaining” dismissed in- por SanDisk its trict court’s construction of “user data fringement Kingston claims dismissed “overhead in claim portion” and tion” and data validity unenforceability patent its related 61 of the '842 and claim 67 SanDisk, (1) counterclaims. According patent parties to because never recognition court Stipulation’s presented these terms to the court for ], ], construction, (2) might ] never dis “reverse! vacate! remand! in part, September whole or court’s of these puted Court’s construction 22, during summary judgment. 2010 Claim Construction Order” terms San- however, parties agreed Disk, that the “Stipula- that the it did not maintains any in any way prejudice arguments tion shall not these the district waive because right parties’ appeal to this matter construed the terms “user [sic] related
1355 information” in appeal. data” and “overhead claims See O2 Beyond Micro Int’l Ltd. v. Co., patent, parties 1 and 10 of the '842 and the Innovation Tech. 521 F.3d 1358— (Fed.Cir.2008) accepted applied (finding party that this construction also did right challenge to claim 61 of the '842 and claim 67 waive claim con Sandisk, patent. According appeal the '316 struction on when it had advanced argument understanding during proceed confirmed this Markman following representation ings object when it made the but did not to the district jury to the district court in its memorandum in court’s instruction on that claim con struction). support summary judg- of its motion for
ment: Accordingly, because we conclude that pre-
Neither SanDisk nor Defendants jurisdiction we lack over the '808 and '893 sented the issue of whether claims 61 patents and claims and 10 of the '842 only and 67 were limited to one user patent, we limit our review of the district portion data por- and one overhead data (1) court’s claim constructions to the “re- during tion the claim pro- construction cording a relative time of programming below, explained cess. But as par- both ...” limitation in claims and 3 of the '424 ties understood those claims to have the (2) patent, and the “at least a user data scope same as claims and 10 the portion and an portion” overhead limita- Indeed, patent. Defendants were tion in claim 61 of the '842 quite surprised when SanDisk indicated claim 67 of the '316 it would continue to assert claims 61 and “recording a relative program- time of despite the guidance Court’s clear ming that at least one of new scope
to the limited of these im- claims data and the at least one posed by language. the claim ('424 superceded patent, data” added). J.A. 7341 n. 4 (emphasis More- &3) over, SanDisk, according to because it had already presented sys- its claim conventional flash construction EEPROM tem, positions to the district court entire block of data is during copied to a block, new proceedings, updated Markman it with the required replacing was not superceded to continue data. challenging the court’s con- The entire old data during struction block is then erased. summary judgment This method caused preserve arguments re-writing its appeal. non-updated data with resulting wear and tear on the flash *8 agree We with SanDisk. Based on memory cells. Kingston’s representations own to the dis- court, parties trict the assumed that patent the The '424 covers a method for court’s constructions for claims and 10 of performing “partial in updates block” flash patent the '842 apply would also to memory the devices. memory When the flash related terms in claim 61 of the system '842 updates already makes minor to We, data, and claim 67 of the patent. '316 by stored such as changing a few therefore, are persuaded by Kingston’s document, words in a it performs “partial a argument present words, SanDisk failed to block” update; only in other part of position its claim construction to the dis- the updated. data block is The controller trict court. Nor required was SanDisk to only pages writes the updated with the repeat its argu- unsuccessful construction opposed data into the new block as to ments to the district court during rewriting sum- the entire block of data. mary judgment preserve the issue for new data a logical shares address with the pages relative to time that other controller reads least
superceded data. The pro- logical the same address are blocks, identifying those with from data Second, Id. at 11.26-40. by grammed.” a col.8 superceded that have been pages pro- recording teaches sharing recently updated page more block, time for re- gramming an entire re- When the controller logical address. by the as the “Block parties ferred to it substi- system, data to the host ports the at col.9 1.40- Recording Method.” See id. up- superceded with pages tutes the method, In this time stamp col.101.43. “the dated data. part ... not need stored as of does to be representa- '424 patent 1 of the is Claim “[r]ather, page” single but a time each tive: block, can be each stamp recorded for memory system In a non-volatile of part the block or elsewhere either plurality a blocks of having of memory, up- is the non-volatile within individually storage elements that are time a is written page dated each of data as a unit and which are individ- erasable Id. into the block.” at col.9 11.42-50.With- ually organized plurality pages into a of block, the physically in the new data is memory storage that are of elements after the such that stored old data individually programmable together, page particular logical recent most of new data for su- substituting method by address determined relative page data within at least one perceded order of pages those within the plurality while of one of blocks “Data pages is then read from block: least of said one page data at another address, descending physical of order replaced, comprising: block is starting page last of the most new data into at programming the recently updated containing block data page least one of said one or anoth- [Logical LBN pages having same blocks, plurality er of the of 11.50-53. Number].” Block Id. at col.9 identifying page at least one appeal, challenges On SanDisk superceded data and the at least district court’s construction of the “record page one new data common ...” ing programming a relative time of address, limitation claims 1 and 3 recording a program- relative time of SanDisk, According the district ming page the at one new least improperly the claims to construed data and the at least one Recording the “Block Method” exclude data; superceded during further limited sum one of su- wherein least mary judgment recording require perceded data than all the is less Specifically, time. ar an actual one block. contained said alia, inter gues, Figures (emphasis col.12 1.60-col.l3 1.10 specification’s teaching with the along added). Method, Block indicate *9 Recording the specification two methods 1 and 3 this method. encompass The teaches identifying physical page response, Kingston for the contain- contends the most recent with ing the version of data claims need cover all embodiments First, none logical speci- specification particularly the same address. the where onto writing stamp being fication discloses a time the embodiments is described as an in- “provides “preferred.” each individual maintains its time dication of district court’s construction was correct programming, claims 1 '424 patent stamp because and 3 of the time indicator is associated with require explicitly recording data; the time the each in the second method— pages programmed, opposed were Recording the Block Method —the time only recording single time value for the stamp indicator is associated with the block, entire block as the Block Recording and the physical order of pages Method. in the block identifies the most recently updated data with a particular logical ad- agree We SanDisk that the district above, quoted dress. As in this “second court improperly excluded the Block Re- specification implementation of the inven- cording Method from claims 1 and 3 of the tive technique,” time stamp “[t]he ... does First, language part need to be stored as page. of each supports SanDisk’s broader construction. Rather, a single time stamp can be record- only require The claims “recording a rela- ed for each block.” Id. at col.9 11.40-53. programming,” tive time of not “a time of programming.” The use of “relative” is Figures 8 of the '424 patent significant: whereas “recording the time of provide further illustrations of this second programming” would suggest that a time 8, implementation. In Figure the relative programming must be recorded for each time of programming updated page, “recording a pro- relative time of 3, original logical 4, pages and 5 is deter- gramming” merely requires recording by mined reading pages in the most some program- indication of the order of (PBN1) recent block in reverse ming for pages sharing logical those order, by “followed reading pages place address. The claims no limitation on (PBNO) original block in the same how the claimed “recording” occurs. reverse order.” Id. at col.9 11.56-57.After Turning specification, its teach- the data in updated pages here, logi- — ings are consistent with interpretation. cal pages 0,1, and 5 on physical pages unambiguously read, discloses and of block super- PBN1—is “the two techniques distinct “distin- ceded data in pages those original guishing] pages containing super- block PBNO that are identified new, containing ceded data from those same page numbers can be skipped updated version '424 pat- during [of data].” the reading process.” Id. at col.9 ent method, col.7 11.59-60.In the first a 11.58-61. *10 a second Similarly, Figure 11 discloses describing Figure “[o]nly an iden-
additionally instructs the same logical page 5 within update containing physical blocks tity of those (PBN1) physical where physical block block and a common data of within the block pages of the two location physical blocks relative times recently page: updated most identifies the need to be known programmed were reading carry out this efficient order col.10 11.3-7.
process.” Id. at starting will be read backwards physi- the data Figure the new Specifically, block, new (PBN1) page last contains two versions cal block page 3 will be physical on PBN1 user data page physical 5 located at PBN1 original page read, physical PBN1 but the data on 3. Because and PBN1 *11 be patent will not: “It will noted that Claim 61 of represen- the '842 pages in a tative: example reading reverse out efficiently
order sorts the new data 61. A method of operating memory pages superceded pages data be- system system with a host includes cause data are written a processor, the memory sys- wherein block in locations of an erased order from tem integrated includes one or more cir- page 0 on.” Id. at col.10 11.29-33. cuit chips individually including array floating gate non-volatile memory light Reading speci the claims partitioned cells a plurality into of sec- fication, we conclude the district court tors that individually include a distinct erred in claims 1 finding that and 3 of the group of memory that are cells erasable patent '424 Recording excluded Block together unit, comprising: as a Further, Method. extent that the providing said one more of the court, summary district during judgment, memory integrated circuit chips and interpreted requiring this limitation as a memory within controller a card recording program of an actual time of removably that is connectable to the ming, agree we with that such an system host said controller being interpretation is incorrect. Consistent said processor connectable to with our conclusion that the claims encom controlling operation of the memory pass Method, Recording Block it nec system when the card is connected essarily follows that the “relative time of system, the host programming” can through be recorded non-temporal such as the operating means location of within memory cells individ- physical pages within block or the ual at sectors with least a user data use of a portion “modulo-N counter” which also is portion, and an overhead specification.1 disclosed controller, causing the in response to
receipt processor from the of an data portion “at least a user and an address in a designating format at ('842 portion” patent, overhead claim least memory one storage mass 67) patent, & '316 block, designate an address of at least memory one non-volatile sec- The district court found that the “user tor that corresponds said at data and information” overhead limitation memory least one storage mass in claims 1 patent and 10 of the '842 was block; single “limited to a user data single and a to, writing either data or reading user portion.” overhead 35. During J.A. sum- from, portion the user data of said mary judgment, applied the court this con- least one non-volatile memory limitation, struction to the related “a user sector; and portion data portion” and an overhead claim 61 of to, the '842 and claim writing from, 67 of either or reading which, patent, as we concluded said portion overhead of said at above, appeal. are before us on least one nonvolatile sec- storing 1. The discloses the out- stored in the field 43 of whose put identify "modulo-N counter” to being updated, increments the count recently updated page specific logi- most of a amount, one, some such as then writes specification explains, cal address. As the that incremented count in the new block....” updating particular "[w]hen data of a col.8 11.45-51. page ... the controller first reads the count *12 and also this of “the”
tor, emphasized to court use data related either overhead concluding that claim leaves memo- “the at one nonvolatile “said” said least involving it covers a method in the no doubt that to data stored ry sector or one over- only portion least one user data and of said at portion user data 8. portion.” head J.A. one non-volatile sector. (emphas- 1.51—col.23 1.12 patent eol.22 Bald contrary This is to conclusion added).
es
Siebert,
Inc.
Graphic Systems,
v.
win
Baldwin, we
(Fed.Cir.2008).
In
that
the district
F.3d 1338
argues
SanDisk
of “the”
and
the later
explained
on the claims’
that
use
improperly focused
court
to an
claim
to refer back
earlier
articles “the” and “said”
“said”
use of the definite
limit that claim term to the
portion
user
term does not
with the
data
in connection
gen
and
also articulated the
looking
singular,
we
portion
overhead
without
and
rule
the use of the indefinite
Ac
eral
that
language
the claim as a whole.
more”:
articles “a” or “an” means “one or
SanDisk,
claims’
cording to
because the
and
data
emphasized
earlier
references
user
repeatedly
court has
[T]his
arti
portions use the indefinite
overhead
that an
article “a” or “an” in
indefinite
“an,”
claim
meaning
“a” and
under traditional
patent parlance
cles
carries the
rules, those
cover “one
claims con
open-ended
construction
terms
“one or more”
more,”
only
position,
phrase “compris
one.
taining
or
not
This
transitional
contends,
“one
supported by
ing.”
several
“a” or “an” can mean
That
SanDisk
rule,
a
include an
or more” is best described as
dependent
expressly
clams that
merely as a
or
“only
portion
presumption
overhead
rather
than
one” user data
and
to
exceptions
even a convention. Lastly,
argues
portion limitation.
extremely
pat
rule
a
this
limited:
specification suggests
possibil
that
entee
a clear intent”
“evince[]
must
ity multiple
data and overhead data
user
”
“a” or “an” to “one. The subse
limit
argues
portions.
response, Kingston
or
quent use
articles “the”
use of indefinite articles
claims’
of definite
claim to
back to the
“said”
a
speci
does
assist SanDisk because
refer
change the
same claim term does not
only
user data
single
fication
discloses
rule,
plural
but
rein
general
simply
portion
single
portion.
overhead data
non-singular meaning.
vokes that
respect
With
to SanDisk’s claim differenti
argument,
ation
contends
(second
Id.
original)
at 1342
alteration
violate
the court’s construction does not
(internal quotation marks and citations
doctrine
be
omitted)
added).
differentiation
Further,
(emphasis
independent
“allow[ ]
cause the
claims
language
rule
unless “the
general
applies
potential
system
portions
include other
themselves,
specification,
and user
of information beside overhead
history
prosecution
necessitate^]
or the
Kingston’s Resp. Br.
data.”
the rule.” Id. at 1342-43.
departure
from
case,
In this
the intrinsic evidence does
agree
the court
We
with SanDisk
intention to
demonstrate an
exclude multi-
only
improperly limited the claims to
one
por-
ple
portions
user data
overhead
portion
only
data
overhead
user
one
scope.
tions
the claims’
portion.
In its claim construction
data
First,
a user
claims recite “at least
opinion,
district
determined
‘the user data
portion.”
claim’s reference
data and
overhead
“[t]he
11.40-41; '842
col.22
‘said
portion’
portion’ sup-
overhead
col.21
suggests
“at
proposed
phrase
limitation.” J.A. 7. The
11.64-65. The
least”
ports
that the claim covers more than
figuration
one user
of the user data and overhead
data portion
portions
portion.
overhead
is not
See
fixed:
*13
Sales,
More,
Biagro
Inc.,
W.
Inc. v. Grow
It is to be understood that
partition-
1296,
(Fed.Cir.2005) (“The
423 F.3d
1304
ing between the user data portion 403
phrase
[i.e.,
‘at least one’ in
patent
spare
typi-
portion
overhead]
405
need not
cally
”).
rigid.
is
be
construed mean ‘one or
relative size
more.’
partitioned
various
areas
interpretation
may
This
comports
further
be
logically reassigned. Also the grouping
general
rule set
forth in Baldwin
the various areas is largely
against limiting claim
using
terms
the in-
for
purpose
discussion and not necessar-
definite articles “a”
and “an” to mean
ily physically so.
“one.”
2. On Kingston has maintained the mentations of products. its pre- accused To confidentiality specific design imple- serve confidentiality, we limit our discus- perform- a method 20 claims Claim Patent, Claim
1.
partial
In a
updates.
partial block
ing
recites:
the '424
20 of
Claim
logical
retains the same
data
update,
block
non-volatile
re-programmable
In a
con-
update. The
throughout each
address
plurality
having
memory system
sharing
logical
the data
troller identifies
storage elements
blocks
updat-
provides the most
address and
unit,
plu-
as a
together
are erasable
host
with that address
ed
individually being divid-
rality of blocks
this,
accomplish
To
device.
*14
number
given
of a
plurality
a
ed into
specific logi-
a
identify
must
page address
that
memory storage elements
pages of
undisputed
It is
a
within
block.
page
cal
a method
together,
programmable
are
number,
itself,
by
does
logical
a
block
system, compris-
the
operating
In-
page address.
identify
logical
a
ing:
address,
stead,
logical page
provide a
a
ones of
individual
programming
must be added
information
additional
number
given
said
plurality of
first
number,
logical
as a
such
logical block
the
at
a first
in each of
least
pages
offset.
page
logi-
and a
original data
block with
dispute centers on whether
parties’
with
associated
page
cal
address
equivalent
contain
products
accused
the
data,
original
the
page
logical
... a
“programming
of the
individual
programming
thereafter
original data”
with the
address associated
of a total
plurality
a
ones of
second
The district
in claim 20.
limitation
giv-
less than said
pages
number of
as not
“logical page
a
address”
construed
a second block with
en number in
number
“logical
to a
block
being limited
logical page
a
ad-
data and
updated
37.
logical offset.”
plus
J.A.
updated
with the
associated
dress
ar-
summary judgment, SanDisk
During
ad-
data,
logical page
the
wherein
pages
the
that an indication
gued
updated
with the
dresses associated
sequentially—
are stored
a block
within
into the second
programmed
data
as a “Se-
by
expert
referred to
SanDisk’s
are the same
pages
plurality of
pro-
with
coupled
Block
quential
Marker” —
original
the
associated with
those
address was
logical
a
block
gramming
plu-
the
programmed into
data
first
logi-
... a
“programming
equivalent to
pages, and
rality of
20.
page address” limitation
cal
assembling
reading and
thereafter
SanDisk,
is
when the data
According to
plu-
second
first and
logical
sequentially,
programmed
pages
for
including,
rality
pages
Br.
SanDisk’s
physical page.
matches
addresses,
logical
having the same
physical
into
programmed
53. For data
updated data from
selecting the
example,
logical block
page 3 of
recently programmed
pages most
necessarily
is
logical page address
“[t]he
original data
omitting
use
logical page 3 because
logical block
programmed.
earlier
pages
from the
(i.e.,
the block
address within
logical page
3)
address of the
matches
(emphases add-
col.15 11.40-64
Therefore, in
San-
at 53 n.
ed).
block.” Id.
(“No
alone or
kind
block marker
products to counsels' statements
1346/all
sion
logical block address
Argument
in combination
a
argument,
Oral
during
see
oral
nonconfi-
12:20-12:27,
way
any
disclosed.and
http://www.cafc.
available
parties' briefs.
information
dential
011-
uscourts,gov/'oral-argument-recordings/2
view,
logical
knowing
Disk’s
both the
block the district court
does
amount
a
dedication under
sequential-
Johnson & Johnston
pages
number and that
be-
Figure
cause neither
on by
relied
ly
logical page
stored identifies the
ad-
district court nor the remainder of the
court, however,
The district
dress.
deter-
specification
using
Sequential
discloses
could not pursue
mined
SanDisk
Block
Marker
combination with a logical
infringement theory, finding
Figure
block
identify
address to
of the '424 patent
alleged
disclosed this
Instead,
SanDisk,
address.
according to
equivalent and thus
it to
dedicated
embodiments,
all the disclosed
including
public
under
rule
disclosure-dedication
Figure
below,
9 reproduced
show that a
forth in
set
Johnson & Johnston.
logical page
(1)
only
address includes
appeal,
argues
On
that the
(LBN)
(2)
dis-
logical block number
logi-
closure in
upon
relied
cal page offset:
*15
response, Kingston
17, 21,
argues
Fig-
that
117 S.Ct.
lent to the “programming logical ... Johnson & Johnston’s disclosure- page address” limitation. dedication rule is not without restriction. agree
We
Computer
Sandisk that its
In PSC
Products v. Foxconn
proposed equivalent
International,
Inc.,
(Fed.
not
was
dedicated to
On SanDisk that the dis- respect infringe With to literal ment, infringement trict court’s literal analysis is agree we with the that irreconcilable with its of equiva- doctrine district correctly court found that SanDisk analysis. SanDisk, if; According lents present to failed to evidence that the read found, as the district court patent circuitry the '316 and write in the accused devices patent expressly '316 incorporates continuation-in-part application. U.S. of the '579 07/337,579 ("'579 Application ap- Patent appeal, parties dispute No. On the do not the that plication”) by patent patent reference.- See '316 incorporated by is reference into 11.3-9, col.6 col.ll 11.4-11. The patent. is the '316 under Johnson & subject that matter such that claim of the controller part were incorpo a document infring- Because literally Johnston. patent was 79 of the '316 effectively by reference “becomes Although district court concluded rated ed. it be if were circuitry need not of the host document as part that controller therein,” Telemac Cel chip, explicitly that construction contained located on the same Telecom, Inc., infringement issue. 247 F.3d Topp v. Corp. does not resolve lular only (Fed.Cir.2001), are not of circuits the disclosure The read and write system; part subject incorporated of claimed in an docu matter that circuits be explicitly these require subject matter ment can dedicate Thus, the the claimed controller. part patent. of of host public purposes and a write reference, however, of a read circuit presence Incorporation by “does system not in the does circuit somewhere incorporat the invention convert part are that those circuits establish of the host into the invention ed in- establishing purposes controller for Int’l Mfg. Modine Co. v. Trade patent.” fringement. (Fed.Cir. Comm’n, 1545, 1552 75 F.3d 1996). Thus, in in determining whether correctly this treated
The district subject matter satisfies the dis corporated fact question infringement issue set forth rule standards closure-dedication present failed found that SanDisk progeny, and its in Johnson & Johnston judgment any summary on evidence teachings we must look first on reading circuit writing “the Pfizer, with host Consistent of the accused chips flash sufficiently patent must inform one host products part of the ‘control- otherwise ” ordinary incorporated skill that the docu has appeal, ler.’ J.A. 60. On subject ment contains matter is district any identified evidence alternative to claim limitation. F.3d reaching conclu- court overlooked does, inquiry it then shifts at 1379. If Consequently, sion. we affirm the district incorporated document to assess Kingston as to judgment in favor of court’s subject of that mat whether the disclosure infringement of claim 79. literal specificity that one ordi ter “of such conclusion, howev- reach a different We identify the nary skill in the art could er, ap- respect to district court’s subject matter that had been disclosed rule plication of the disclosure-dedication *18 Prods., Computer 355 not claimed.” PSC analysis. in The equivalents its doctrine of at F.3d 1360. ac- Kingston’s that district court found the products infringe did not under cused Here, patent’s the '316 discussion the '316 equivalents doctrine of because patent incorporated '338 does patent the use of read and write disclosed ordinary one of skill sufficiently identify to chip circuitry memory on the flash located incorporated patent the contains sub that chip. The dis- rather than the controller to the ject matter that is an alternative by upon the district closure relied contrary, in claimed controller. To the the four of appear does not within corners parent '579 discussing application, is in 5 patent Figure but instead '316 patent speaks only general terms: '316 incorporated '338 implementations erase have “Optimized U.S. yet copending pat two have to address been disclosed We 11.3-4; col.6 applications,” patent of '316 in which the disclosure ent circumstances of write implementations and subject incorporated “Optimized in a document matter EEprom device have by operation a of for Flash reference amounts to dedication a previously cording in two cited co- been disclosed relative time of programming” in ...,” at applications id. col. pending U.S. of '424 patent. and 3 cursory 1111.4-6. Such discussion does not majority construes this term to include an sufficiently provide notice to of ordi- one indication, embodiment in which no tempo- nary incorporated patent skill that the '338 otherwise, ral or is recorded. From this subject is an contains matter that alterna- I respectfully conclusion dissent. controller, required claimed tive Claim is representative of claims 1 and by Consequently, we conclude Pfizer. patent: 3 of '424 the district court erred as a matter of law In a memory system non-volatile finding '316 patent dedicated having plurality of blocks of equivalent proposed pub- SanDisk’s storage individually elements that are lic. erasable as a unit which and are individ- III. Conclusion ually organized into a of plurality pages of memory storage jurisdiction elements that are lack San- We address individually programmable together, arguments Disk’s construction solely method of substituting related the '893 and '808 new data for su- patents perceded and claims and 10 of the '842 data within at least one page to the claim construction patent. As is- of one of plurality of while blocks properly appeal, sues that are before us on data in at page least another of said one that the district court we conclude erred is comprising: block not replaced, the “recording its constructions of a rela- programming the new data into at programming time of ...” limitation tive page least one of said one anoth- patent, in claims 1 and 3 of the '424 and blocks, of plurality er of portion “at least a user data and identifying the page at least one of portion” overhead limitation in claim 61 of superceded data and the at least '842 claim 67 of patent the '316 page one new data a common patent. Those accordingly constructions logical address, judgment are reversed and the of nonin- fringement Kingston in favor of as to those recording program- time of relative Lastly, claims is vacated. the district ming page least one of new court’s no judgment infringement literal the at least one affirmed, patent of claim 79 the '316 data; superceded but the court’s judgment did wherein the at one least su- infringe claim of '424 patent perceded data is less than all the claim 79 under the data contained in said one block. equivalents doctrine of is vacated. The col.12 (emphasis 1.60-col.l3 1.10 case is remanded to the district court *19 added). further proceedings consistent with this opinion. specification The describes two embodi-
AFFIRMED-IN-PART, ments. The is faithful the first to claim VACATED- IN-PART, language, recording AND a in stamp REMANDED time each second, page. individual The called the REYNA, Judge, concurring-in- Circuit Method,” Recording “Block is not. Ac- part and dissenting-in-part. cording specification, in the block method, majority recording opinion stamp I concur with the ex- time ... “the for cept its construction of the “re- part term does not need to be stored as of each sharing logical address.” the those a only pages to used determine page” and “is recording 1357. Because Majority Op. in at stored blocks.” age the data relative in page in the available stamp updates new next time 11.41—47.The block Id. at col.9 implicitly encodes block block, part the most recent either as for each is “recorded re updates in were the order which the the non within of the block or elsewhere the ceived, majority concludes time the updated each memory, and is volatile improp This construction claim was met. into the block.”1 is written a of data of the limitations recording erly ignores express the Id. col.9 11.42-50.In block at to specification the broad claims and uses method, in order within pages written See, e.g., Maxwell v. J. a en the block, current data for the the most (Fed.Cir. 1098, Baker, Inc., F.3d always be a will logical page within block 1996) interpretation (rejecting a contain physical page the the block last However, the ignore explicit limitations page. would ing for that Brown, claim); Unique Inc. v. any Concepts, pages do not contain physical since the (Fed.Cir.1991) (“All 1558, otherwise, data, all 939 F.2d timestamp relative the of a claim must be consid pages were limitations can said is that the be United meaningful.”); time ered see also States time or after the written the same Adams, 708, 15 U.S. 86 S.Ct. physical block. In other v. stamp the (1966) (stating that claims words, be L.Ed.2d 572 although the relative order can and “specifications the limit the inventions the number of physical inferred from mo to expand the relative cannot be used page, nothing is known about nopoly”). times. attempts then majority explain be- The majority avoids the distinction how, reading, fo- under this block record- and “relative time”
tween “order” ing language limitation in the method satisfies cusing on the “relative” majority particular, claim. In discuss- claim and the limitations that ignoring up- Figure depicts and that it must be es which second time must be recorded Thus, logical page 5 within same majority a “ states date to time. (PBN1) physical where the program- time of block ‘recording relative pages in- two within the block merely requires recording location of the ming’ some recently page: programming updated identifies most dication order indicates, to Updating timestamp it store rela- for block once cell appears impossible. be A memory. is written tive elsewhere in non-volatile time can re-written. See must be erased before it be exactly what the first embodiment That is only can be col.l 11.23-24. Cells does, storage appear that and it would by erasing entire block. See id. erased timestamps any location other than Therefore, update timestamp in a block page being be effi- written would much less written, would when a in that block it result in additional wear on cient and would block, necessary the entire includ- be to erase memory. the flash possible, ing newly data. It is written
1369 Specifically, Figure physi- the new the data was written. is undoubtedly This (PBN1) cal block two contains versions of elegant more recording than relative original page physical 5 located at PBN1 times, but it satisfy does not the terms of 2 page physical page and PBN1 In3. claim, require which that a relative example, page 5 on the left has been modi- time be recorded. fied first twice. The modification is stored possible Even if it is to update the time 2 page right. on the The second is block, for the this does not save em- page stored at on the right. 3 Because the If bodiment. the block is not updat- time be starting will read backwards ed, time information is only available for page block, last new the user physical the first page the block. If the physical read, data on PBN1 3 page will be updated, block time is time information is but data on PBN1 physical page will only available for the page last that has not. been case, written the block. In either anything, majority’s If analysis of all that can be determined is the order of proves this embodiment the claim pages, not their relative times. In- does not cover the block recording method. deed, in describing the recording block PBN1, pages and were written at method, “[o]nly notes that two different times. When was ... the relative physical times that written, a relative time was recorded for blocks programmed were need to be physical However, the new block. when known.” Patent col.10 11.3-7(empha- written, page was no relative time was added). Thus, in sis recording block recorded. The relative times of the up- method, relative times are recorded for pages dates of 2 and 3 are unknown and blocks, not for If a unknowable, pages. because no relative time in- block, update require does not a new no formation is recorded at the page level. Instead, recorded, system relative time is the terms of infers order—as opposed to the relative times—in which the claim are not met. *21 the term only on majority focuses that the claims ex- ignores
“relative” recorded. a time be
plicitly require so, expands SanDisk’s improperly it
doing beyond what was monopoly I dissent. respectfully
claimed. Plaintiff-Appellee, INC.,
APPLE
v. CO., LTD., ELECTRONICS
SAMSUNG America, Inc.,
Samsung Electronics Samsung Telecommunications
America, LLC, Defendants-Appel-
lants.
No. 2012-1507. Appeals, States Court of
United
Federal Circuit. 11, 2012.
Oct.