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UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION
htc acer barco
DEFENDANTS’ MOTION PURSUANT TO CIVIL LOCAL RULE 7-9 FOR LEAVE TO FILE MOTION FOR RECONSIDERATION OF CERTAIN ASPECTS OF CLAIM CONSTRUCTION
Introduction
Civil Local Rule 7-9(b)(1) states that a party may file a motion for leave to file a motion
for reconsideration if: “at the time of the motion for leave, a material difference in fact or law
exists from that which was presented to the Court before entry of the interlocutory order for
which reconsideration is sought.” Civ. L.R. 7-9(b)(1). As discussed below, Defendants
uncovered a material difference in fact after Judge Ware’s First Claim Construction Order
(Docket No. 336, June 12, 2012) as a result of Defendants’ continuing review of the voluminous
file histories for the MMP Patent Portfolio, including U.S. Patent No. 5,530,890 (“the ’890
patent”). In particular, Defendants uncovered evidence in the file history for the original parent
application for the ’890 patent (from 20 years ago) that strongly supports reconsideration of
Judge Ware’s First Claim Construction Order regarding the “separate DMA CPU” limitation in
claim 11 of the ’890 patent.
Argument
I. CONTINUED REVIEW OF THE FILE HISTORIES OF THE MMP PORTFOLIO
PROVIDED ADDITIONAL FACTS THAT REQUIRE MODIFICATION OF
JUDGE WARE’S CONSTRUCTION OF “SEPARATE DMA CPU.”
Defendants’ Moore Microprocessor Patent (“MMP”) Portfolio includes file histories
covering thirty-seven (37) applications resulting in seven (7) issued U.S. patents. In addition, the
Plaintiffs in the present cases and other parties have filed sixteen (16) reexamination requests in
the U.S. Patent and Trademark Office, and a nullity action in the European Patent Office, that has
greatly multiplied the volume of the file histories for the MMP Portfolio. In total, the MMP
Portfolio file histories (including reexamination proceedings) comprise approximately 291 U.S.
patent references, 33 foreign patent references, 382 non-patent references, 134 litigation-related
pleadings or transcripts, and 205 office actions and responses, leading to over than 30,000 pages
of correspondence between the applicants and PTO and over 1,000 references.
In preparing its claim construction briefing for the ’890 patent before Judge Ware, TPL
and its counsel focused on the file history for the application that led to the ’890 patent, as well as
the extensive reexaminations of the MMP patents. TPL did so in the belief that such file histories,
in conjunction with disclosures in the patent specification, provided the most relevant information regarding the proper construction of the claim terms being construed, for example, the term
“separate DMA CPU.”
However, after the Court issued its First Claim Construction Order, which includes a
construction of the term “separate DMA CPU” (in claim 11 of the ‘890 patent), TPL embarked on
a second review of the voluminous file history. In particular, TPL looked back at the file history
for the parent application that led to the entire MMP Portfolio. As explained in the attached
Motion for Reconsideration, the early file history of the parent application included a restriction
requirement that led to subsequent prosecution of ten divisional applications, one of which led to
the ‘890 patent.1 The restriction requirement provides significant insight into the meaning of the
term “separate DMA CPU”; in particular, how the Examiner distinguished the term from the
meaning of the term adopted by Judge Ware.
As the Federal Circuit has recognized, “district courts may engage in a rolling claim
construction, in which the court revisits and alters its interpretation of the claim terms as its
understanding of the technology evolves.” Pfizer, Inc. v. Teva Pharm., USA, Inc., 429 F.3d 1364,
1377 (Fed.Cir.2005); see also Utah Med. Prods., Inc. v. Graphic Controls Corp., 350 F.3d 1376,
1381-82 (Fed.Cir.2003) (district court did not err in amending claim construction during oral
arguments for pretrial motions nearly two years after original construction). Moreover, “[w]hen
the parties raise an actual dispute regarding the proper scope of these claims, the court, not the
jury, must resolve that dispute.” O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d
1351, 1360 (Fed.Cir.2008).
Conclusion
Due to the material difference in fact discovered by Defendants in the file history for the
parent application for the MMP Portfolio, Defendants respectfully ask the Court for leave to file
the attached Motion for Reconsideration to correct the construction of “separate DMA CPU” in
claim 11 of the ‘890 patent. If convenient for the Court, Defendants propose that this issue be
briefed on the same schedule as the supplemental briefing to be received by the Court in advance
of the November 2012 claim construction hearing.
Dated: September 10, 2012 Respectfully submitted,
AGILITY IP LAW, LLP
By: /s/ James C. Otteson
James C. Otteson
Attorneys for Defendants
TECHNOLOGY PROPERTIES LIMITED
and ALLIACENSE LIMITED
KIRBY NOONAN LANCE &HOGE
By: /s/ Charles T. Hoge
Charles T. Hoge
Attorneys for Defendant
PATRIOT SCIENTIFIC CORPORATION
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