Microchip Technology Incorporated v. Nuvoton Technology Corporation America

Background

Microchip filed a patent-infringement action against Nuvoton Technology Corporation and Nuvoton Technology Corporation America. The complaint alleges infringement of six patents: U.S. Patent Nos. 7,075,261; 7,126,515; 7,353,417; 7,930,576; 9,442,873; and 9,772,970. Nuvoton denied infringement and argued that the asserted patents were invalid. The case was transferred from the District of Delaware to the Northern District of California.

The order concerns claim construction, which is the court’s process for determining the legal meaning of patent-claim terms. The parties identified ten terms as particularly significant. They agreed on constructions for “responsive to” and “a plurality of trigger selection circuits, for selectively coupling selected ones of the plurality of analog inputs to a respective one of the sample and hold circuits.” The court adopted those agreed constructions. The parties disputed eight additional terms from four patents.

’576 Patent: “switching access”

The court rejected Nuvoton’s proposed construction, which would have required changing the state of a switch controlling access to memory. The court held that “switching access” does not require a switch and adopted the term’s plain and ordinary meaning. The court relied in part on the narrower language of dependent claim 137, which referred specifically to reconfiguring access “via the switch.”

’873 Patent: direct memory access

For “a beat of data,” Microchip proposed “the data transferred in a single bus access,” while Nuvoton proposed “each clock cycle of data.” The court found Nuvoton’s construction too narrow and construed “a beat of data” as “data transferred in a single bus access.”

For “channel arbiter,” Nuvoton proposed requiring selection based on channel priority levels. The court determined that arbitration must be based on one or more criteria, including but not limited to priority level. It therefore construed “channel arbiter” as “a device or circuit that selects a channel based on one or more criteria.”

’417 Patent: receiving data and a first command

Nuvoton argued that the phrase “receiving data and a first command to transfer said data from said control unit” made the claims indefinite. The court disagreed, finding that the term was tied to the structure of a buffer register and informed a skilled person about the claim’s scope with reasonable certainty. The court construed the phrase as “receiving (1) data and (2) a first command to transfer said data from the control unit.”

’970 Patent: serial communication interface

The parties disputed whether four terms were subject to 35 U.S.C. § 112(f), a patent-law provision that applies to certain claim terms that describe a function without adequately identifying the structure that performs it.

For “interface module,” the court found that the claims and specification disclosed adequate structure, including a buffer or register for storing a protocol selection. The court therefore held that § 112(f) did not apply and adopted the term’s plain and ordinary meaning.

The parties agreed that “protocol module” was subject to § 112(f) and agreed on its function: “providing configuration data for one of two or more serial communication protocols based on the protocol selection.” The court found that the patent described the protocol module receiving protocol settings and selecting a configuration, but did not disclose structure clearly associated with providing the claimed configuration data. The court therefore found claim 1 of the ’970 patent indefinite.

For “serial engine module,” the court concluded that Nuvoton had not overcome the presumption that the term was not subject to § 112(f). The court found that the term conveyed sufficiently definite structure and adopted its plain and ordinary meaning.

For “port control module,” the court likewise found that Nuvoton had not overcome the presumption against applying § 112(f). The court determined that claims 1 and 10 did not recite a function for that term and adopted its plain and ordinary meaning.

Disposition and effect

The court adopted the constructions set out in the order. This order determined the meanings of disputed claim terms and found claim 1 of the ’970 patent indefinite; the opinion does not state a final ruling on infringement or damages.