Regents of the Univ. of Minn. v. LSI Corp.

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REGENTS OF THE UNIVERSITY OF MINNESOTA, Plaintiff, v. LSI CORPORATION, et al., Defendants.

No. 5:18-cv-00821-EJD

United States District Court, N.D. California, San Jose Division

August 25, 2023

CLAIM CONSTRUCTION ORDER

EDWARD J. DAVILA United States District Judge

Plaintiff Regents of the University of Minnesota (“UMN”) brings this suit against Defendants LSI Corporation and Avago Technologies U.S. Inc. (collectively, “LSI”) for infringement of U.S. Patent No. 5,859,601, entitled “Method and Apparatus for Implementing Maximum Transition Run Codes” (the “ '601 Patent”). The parties dispute the proper construction of three terms. See Am. Joint Claim Construction Statement (“CC Statement”), ECF No. 240. After careful consideration of the record and the parties' arguments at hearing, the Court construes the contested language of the patent-in-suit as set forth below.

I. BACKGROUND

A. Overview of the Technology

UMN is a public research university that occasionally patents and commercializes the inventions of its researchers. First Am. Compl. (“FAC”) ¶¶ 4-6, 8, ECF No. 40. As relevant in this matter, UMN is the owner and assignee of the '601 Patent, for which Dr. Jaekyun Moon (a former UMN professor) and Dr. Barrett J. Brickner (Dr. Moon's former graduate student) are named inventors. Id. ¶¶ 48, 53, 73.

The '601 Patent generally pertains to digital storage systems. CC Statement, Ex. A ('601 Patent) at col. 1:10-11, ECF No. 240-1. Such systems work by recording data as 1's and 0's, though the formats with which they record that data can vary. The '601 Patent discusses two such recording formats. First, a storage device can use the Non-Return-to-Zero (“NRZ”) recording format. '601 Patent at col. 1:24-27; see also CC Statement, Ex. D (“McLaughlin Decl.”) ¶ 13. In NRZ recording, a 1 is represented by positive magnetization within the storage device, and a 0 is represented by negative magnetization within the storage device.^[1] '601 Patent at col. 1:24-27. Second, a storage device can use the Non-Return-to-Zero-Inversion (“NRZI”) recording format. '601 Patent at col. 1:29-32; see also McLaughlin Decl. ¶ 14. In this format, a 1 is represented by a magnetic transition (i.e., from positive to negative), and a 0 is represented by a non-transition. '601 Patent at col. 1:29-32.

When a device attempts to read data on a digital storage system, noise that occurs during the process can cause errors which, in turn, cause the device to misread the data. McLaughlin Decl. ¶¶ 16, 25. The '601 Patent addresses this issue by introducing Maximum Transition Run (“MTR”) codes, which eliminate certain patterns of data that are particularly error prone. '601 Patent at col. 2:43-47. In particular, MTR codes “impose[] a limit on the maximum number of consecutive transitions that can occur,” id. at col. 2:59-60, through the use of ‘j' and ‘k' constraints, often written as (j;k). Id. at col. 4:46-48. The j constraint places a limit on the maximum number of consecutive transition allowable, and the k constraint places a limit on the maximum number of non-transitions allowable. Id. at col. 10:55-59; see also McLaughlin Decl. ¶ 29.

To achieve these constraints, the '601 Patent teaches the encoding of “datawords” (pieces of input data) into “codewords” (corresponding pieces of output data). '601 Patent at col. 10:50- 51. The codewords are chosen such that, when the codewords are joined together in a string, the (j;k) constraints are satisfied. This encoding can be performed by using either “block” codes or “state-dependent” codes. Block codes are those where each dataword is mapped to a unique codeword. Id. at col. 5:66-67. By contrast, state-dependent codes assign codewords to datawords based on the previously used codeword, or “state,” of the system. See Id. at col. 5:50-53, 61-66.

B. Procedural History

This case was originally filed in the District of Minnesota on August 25, 2016. ECF No. 1. After it was transferred to this district, the Court stayed the matter pending inter partes review (“IPR”) on May 11, 2018. ECF No. 211. The parties vigorously litigated the validity of certain claims in the '601 Patent in IPR proceedings, including two trips to the Federal Circuit. Ultimately, the Patent Trial and Appeal Board (“PTAB”) held that claim 13 was unpatentable but did not invalidate claims 14 and 17, which depend from claim 13. CC Statement, Ex. B (“PTAB Decision”), ECF No. 240-2. LSI appealed that decision to the Federal Circuit, which affirmed. LSI Corp. v. Regents of Univ. of Minn., 43 F.4th 1349 (2022).

On October 7, 2022, the Court lifted its IPR stay upon stipulation of the parties. ECF No. 218. Throughout May and June of 2023, the parties briefed claim construction. See Pl.'s Opening Claim Construction Br. (“UMN Br.”), ECF No. 239; Defs.' Responsive Claim Construction Br. (“LSI Resp.”), ECF No. 247; Pl.'s Claim Construction Reply Br. (“UMN Reply”), ECF No. 249. The Court held a tutorial and Markman hearing on July 19, 2023. ECF No. 256.

C. Claim Language

UMN asserts infringement of only claims 14 and 17 of the '601 Patent. However, because both claims depend from claim 13, the disputed terms for construction come only from claim 13, which the Court reproduces below:

A method for encoding m-bit binary datawords into n-bit binary codewords in a recorded waveform, where m and n are preselected positive integers such that n is greater than m, comprising the steps of:

receiving binary datawords; and

producing sequences of n-bit codewords;

imposing a pair of constraints (j;k) on the encoded waveform;

generating no more than j consecutive transitions of said sequence in the recorded waveform such that j >=2; and

generating no more than k consecutive sample periods of said sequences without a transition in the recorded waveform.

'601 Patent at col. 10:47-59.

II. LEGAL STANDARD

Claim construction is a question of law to be decided by the court. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). “[T]he interpretation to be given a term can only be determined and confirmed with a full understanding of what the inventors actually invented and intended to envelop with the claim.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (citation omitted). Consequently, courts construe claims in the manner that “most naturally aligns with the patent's description of the invention.” Id. (citation omitted).

When construing disputed terms, courts begin with “the language of the asserted claim itself.” Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998) (citations omitted). That is because “[i]t is a ‘bedrock principle' of patent law that ‘the claims of a patent define the invention to which the patentee is entitled the right to exclude.'” Phillips, 415 F.3d at 1312 (citation omitted). The words of a claim should be given their “ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1312-13 (citations omitted). However, the person of ordinary skill in the art does not work from a blank slate-rather, she “is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id. at 1313. Thus, courts “have long emphasized the importance of the specification in claim construction.” David Netzer Consulting Eng'r LLC v. Shell Oil Co., 824 F.3d 989, 993 (Fed. Cir. 2016) (citation omitted). They have explained that the specification is “always highly relevant” and “[u]sually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).

The prosecution history of a patent-which “consists of the complete record of the proceedings before the PTO [Patent and Trademark Office]”-is also intrinsic evidence of a claim term's meaning. Id. at 1317. But since the prosecution history “represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes.” Id. Nonetheless, there are times when prosecution history is controlling. Where a patentee disavows certain meanings during prosecution, the doctrine of prosecution disclaimer “preclude[es] [her] from recapturing through claim interpretation [those] meanings.” Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). To qualify as a disclaimer, such disavowal “must be both clear and unmistakable.” 3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1325 (Fed. Cir. 2013). That is a high bar: the disavowal “must be ‘so clear as to show reasonable clarity and deliberateness,' and ‘so unmistakable as to be unambiguous evidence of disclaimer.'” Genuine Enabling Tech. LLC v. Nintendo Co., 29 F.4th 1365, 1374 (Fed. Cir. 2022) (quoting Omega, 334 F.3d at 1325).

Finally the court is also authorized to consider extrinsic evidence, such as “expert and inventor testimony, dictionaries, and learned treatises.” Markman, 52 F.3d at 980 (internal citations omitted). Although the court may consider evidence extrinsic to the patent and prosecution history, such evidence is considered “less significant than the intrinsic record” and “less reliable than the patent and its prosecution history in determining how to read claim terms.” Phillips, 415 F.3d at 1317-18 (citation omitted). Thus, while extrinsic evidence may be useful in claim construction, ultimately “it is unlikely to result in a reliable...