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June 4, 2010


Beginning its enforcement campaign with the beginning of the alphabet, Silicon Graphics sued ATI and AMD, ultimately for infringing 6,650,327, which claims pipelined floating point graphics calculations. Two other patents had been asserted, but summary judgment in favor of defendants wiped the litigation of those. Summary judgment of non-infringement, as well as a district court finding that a Microsoft license covered part of the action, wiped '327's assertion. But the counterclaim case proceeded to trial, where the patent was found not invalid. Then, naturally, appeal from both sides. Besides claim construction and infringement, a look herein at exhausting defenses and counterclaims.

Silicon Graphics v. ATI Technologies and Advanced Micro Devices (CAFC 2008-1334, -1353) precedential

The pipeline of graphics calculations has three stages: 1) a "geometry subsystem" for developing polygonal "primitives"; 2) rasterization, where "the three-dimensional world of primitives is converted to a displayable two-dimensional image with a three-dimensional appearance"; and storing the pixel data in frame buffer memory. The pixels are read from the frame buffer to render the 3D images.

Claim Construction

Three claim terms were disputed by Silicon Graphics upon appeal.

The rules of claim construction are well known. For instance, the terms of a claim are "generally given their ordinary and customary meaning." Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quotation omitted). The context in which a term appears is also of significance. Id. at 1314. If the specification reveals a special definition for a claim term, "the inventor's lexicography governs." Id. at 1316. In fact, the specification is "the single best guide to the meaning of a disputed term." Id. at 1315 (quotation omitted).

Silicon Graphics contested the district court's claim construction letting ATI off the hook because the claimed "rasterization process" entirely required floating point calculations. 

The district court concluded that the claims referred to a single rasterization process...

Even though ATI's products fill in pixels or fragments using floating point values (for example, through fog and blending functions and calculation of color values), they translate primitives into pixels and fragments using fixed point values. Id. Thus, according to the district court, the rasterization process does not operate on a floating point format "as a whole." Id.

Indeed this record shows that the district court erred in requiring rasterization to occur entirely with floating point values. The '327 patent explicitly teaches that rasterization consists of multiple processes: "The processes pertaining to scan converting, assigning colors, depth buffering, texturing, lighting, and anti-aliasing are collectively known as rasterization." '327 patent col.1 ll.43-45 (emphasis added). These passages from the specification define the terms in controlling terms. See Phillips, 415 F.3d at 1316. Thus, when the claims refer to "a rasterization process" they are referring to one of the subsets of rasterization (e.g., scan converting, color, texture, fog, shading) listed in the specification.

The limitation "a rasterization process which operates on a floating point format" therefore means that "one or more of the rasterization processes (e.g., scan conversion, color, texture, fog, shading) operate on a floating point format." This construction is also in line with the rest of the specification. Nowhere does the specification teach that all rasterization processes must operate on a floating point format. To the contrary....

Silicon Graphics argued likewise for "scan conversion," but the CAFC was not converted.

Although the specification does repeatedly suggest that "one or several of [the disclosed operations] can be performed in fixed point without departing from the scope of the present invention," col.11 ll.40-42; see col.11 ll.55-56 and col.12 ll.29-33, the specification never states that scan conversion is one of those operations.

Finally, "s10e5," signifying the claimed floating point number format.

The district court construed the term "s10e5" to mean "a 16 bit floating point format composed of one sign bit, ten mantissa bits, and five exponent bits, with an exponent bias of 16." Claim Construction Opinion, 2007 WL 5614112, at *12. Silicon Graphics disputes whether the construction should have included the exponent bias.

The district court relied upon disclosure, but the passage pointed to "is given as a part of 'one embodiment of the present invention.'"

A construing court's reliance on the specification must not go so far as to "import limitations into claims from examples or embodiments appearing only in a patent's written description . . . unless the specification makes clear that 'the patentee . . . intends for the claims and the embodiments in the specification to be strictly coextensive.'" JVW Enters., Inc. v. Interact Accessories, Inc., 424 F.3d 1324, 1335 (Fed. Cir. 2005) (quoting Phillips, 415 F.3d at 1323).

The specification does not suggest that the patentee intended to make that embodiment of s10e5 coextensive with the claims. Elsewhere, the specification defines "s10e5" without reference to bias.

So, the district court constructions of "rasterization process" and "s10e5" were reversed.

Validity argument raised a claim construction point.

The district court did not construe the term "operating directly on" during claim construction, holding that the term's ordinary meaning controlled. Claim Construction Opinion, 2007 WL 5614112, at *14. The testimony of both sides' experts at trial indicates that that term was not fundamentally in dispute, thus, it was proper for the district court not to construe it. See O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) (recognizing that "district courts are not (and should not be) required to construe every limitation present in a patent's asserted claims" but only "[w]hen the parties present a fundamental dispute regarding the scope of a claim term"). Indeed, both experts agreed that "operating directly on" means that the data in the frame buffer is always in floating point. Only with reference to Lucas [a prior art reference] did Dr. Potel change his opinion and allege that "operating directly on" was met where floating point numbers are taken through a circuit and come out as fixed-point. This argument contradicts the ordinary meaning of "operating directly on the data in floating point format," and therefore the jury's finding of no anticipation was justified.

Licensing & Infringement

The district court also granted summary judgment of non-infringement in favor of ATI based on the Microsoft license. As the district court held, and the parties do not dispute, "licensed use of a product does not constitute direct infringement and, therefore, does not support a finding of indirect infringement." Summary Judgment Opinion, 2008 WL 4200359, at *22 (citing Aro Mfg Co. v. Convertible Top Replacement Co., 377 U.S. 476, 497-99 (1964) ("[I]f the purchaser and user could not be amerced as an infringer certainly one who sold to him . . . cannot be amerced for contributing to a non-existent infringement.")).

The Microsoft license states that Microsoft's "Authorized Licensees" are immune from suit (the "Immunity Provision")...

The only claims left after the CAFC affirmed the "scan conversion" claim construction were apparatus claims.

Delaware law governs the Microsoft license. Under Delaware law, contract interpretation is a legal question. Honeywell Int'l Inc. v. Air Prods. & Chems., Inc., 872 A.2d 944, 950 (Del. 2005). Summary judgment is therefore "a proper framework for enforcing unambiguous contracts." OSI Sys., Inc. v. Instrumentation Corp., 892 A.2d 1086, 1090 (Del. Ch. 2006). Here, however, this court concludes that the district court erred in enforcing this contract at the summary judgment stage because it relied on an erroneous assumption of what constitutes infringement of an apparatus claim.

The district court's logic was that the graphics software had to be used in conjunction with an operating system (Microsoft Windows), so the Microsoft license covered the accused infringement.

The district court erred in assuming that direct infringement requires the performance of all of the elements in these apparatus claims. In addition to the actual use of the product described, infringement of an apparatus claim occurs when the invention is, among other things, made or sold in the United States. 35 U.S.C. ยง 271. Thus, even absent its use (or performance), this court has held that an apparatus claim directed to a computer that is claimed in functional terms is nonetheless infringed so long as the product is designed "in such a way as to enable a user of that [product] to utilize the function . . . without having to modify [the product]." Fantasy Sports Props., Inc. v. Sportsline.com, Inc., 287 F.3d 1108, 1118 (Fed. Cir. 2002). Where, as here, a product includes the structural means for performing a claimed function, it can still infringe "separate and apart" from the operating system that is needed to use the product.

Fantasy Sports helps to understand this principle. In that case, the patent in suit claimed "[a] computer for playing football based upon actual football games, comprising . . . means for scoring performances of . . . actual football players based upon actual game scores . . . wherein said players . . . receive bonus points." Id. at 1111. The district court held on summary judgment that one of the defendants' products, Commissioner.com, could not directly infringe because it was not a separate fantasy football computer game but merely a software tool. Id. at 1112. This court vacated and remanded on the grounds that no reasonable juror could find that the Commissioner.com product is not software installed on a computer for playing fantasy football. Id. at 1119. The software, although not in and of itself a computer for playing fantasy football games, infringed so long as a user could activate "the functions programmed into a piece of software . . . only [by] activating means that are already present in the underlying software." Id. at 1118. "In other words, an infringing software must include the 'means for scoring . . . bonus points' regardless whether that means is activated or utilized in any way." Id.

Claims 2 through 6 of the '327 patent require "a rasterization circuit coupled to the processor that rasterizes" primitives in a certain way and "a frame buffer coupled to the rasterization circuit for storing" certain data. Even if the products cannot rasterize or store absent an operating system, they may include a rasterization circuit and a frame buffer for doing so. If they do, they infringe separate and apart from the operating system, and the Immunity Provision does not apply. Nothing in the record suggests that the Microsoft Windows operating system provides anything other than a way to activate the accused product. Because infringement of the claims at issue does not turn on activation, this court vacates the summary judgment ruling of non-infringement based on the Microsoft License and remands for the district court to determine whether any genuine issues of material fact would allow ATI to continue to rely on the Microsoft License at trial.

Defense Exhaustion

The day after it issued its summary judgment opinion, the district court held a final pretrial conference. At the conference, Silicon Graphics announced the voluntary dismissal of the remaining part of its infringement case and requested that the court therefore dismiss ATI's declaratory judgment counterclaims of invalidity. In a responsive brief, ATI argued that it was entitled to pursue its declaratory judgment invalidity counterclaims "regardless of whether SGI dismisses its infringement claims" so that it may "resolve the dispute once and for all."

At trial, ATI only attacked the validity of claims 17-18 and 22-23 of the '327 patent. Following trial, the district court ordered that entry of judgment was appropriate "[n]ow that all of the claims and counterclaims have been addressed, withdrawn or abandoned." Silicon Graphics, Inc. v. ATI Techs., Inc., No. 06-cv-611, 2008 WL 2828813, *1 (W.D. Wis. Feb. 15, 2008). Apparently surprised by the reference to waiver and abandonment, ATI filed a request to delete any such reference with respect to any invalidity claims raised in its counterclaims but not pursued at trial.

ATI insisted it was entitled to further defense.

The district court did not clearly err. It appropriately characterized ATI's jurisdictional arguments as addressing its invalidity counterclaims as a whole. It is a claimant's burden to keep the district court clearly apprised of what parts of its claim it wishes to pursue and which parts, if any, it wishes to reserve for another day. See e360 Insight, 500 F.3d at 600 ("It was not erroneous to treat [a] voluntary abandonment of defenses, raised but not pursued, as a waiver."). If ATI wished to reserve its right to pursue some of its invalidity counterclaims later, it was incumbent on ATI to expressly request that the district court dismiss those counterclaims without prejudice rather than ask the district court to infer an implicit request based on ambiguous statements.

To be clear, although this court is vacating the district court's non-infringement ruling on claims 2 through 6 of the '327 patent, ATI is nevertheless precluded from relitigating its invalidity counterclaims with respect to those claims. ATI does not argue on appeal that it chose to ignore those invalidity counterclaims because of the district court's claim constructions. See CytoLogix Corp. v. Ventana Med. Sys., Inc., 424 F.3d 1168, 1176 (Fed. Cir. 2005) (refusing, after correcting the district court's claim construction, to allow new trial on certain invalidity theories because those arguments were not preserved).

Affirmed in part, vacated in part, and remanded.

Posted by Patent Hawk at June 4, 2010 1:06 PM | Claim Construction



Posted by: Steve M at June 4, 2010 4:08 PM

"a computer for playing football based upon actual football games comprising:"

HAHAHAHAAHAHAHAHAHAHAHAHAAHAHA. When has anyone used a computer to play football? Is it even possible to make a computer for playing football? Much less football based on actual football? To my knowledge nobody who has ever played football played it with a computer.

Jebus, the things this office lets loose on the public defy all reasonable construction.

"The district court held on summary judgment that one of the defendants' products, Commissioner.com, could not directly infringe because it was not a separate fantasy football computer game but merely a software tool. "

They should have held that defendants' products could not directly infringe because they were not computers for playing football, but were rather computers for playing fantasy football. The two things are worlds apart. One major difference between the two is that one gets you laid in HS/college and being good at it earns you a trophy wife when you're older, the other is basically just an Role Playing Game for sports fans and never got anyone laid, much less a trophy wife.

I imagine that on remand that is precisely what the DC held in that case.

I hope ATI takes this nonsense to the USSC even though it is far from a perfect vehicle to get most software functional claiming nonsense taken care of for good. The CAFC provided ample enunciation of a great principle which it relied upon that it needs to be smacked down upon for. It might even give them a nice little fire under their behinds to get their acts together like KSR did.

Posted by: 6000 at June 4, 2010 8:12 PM

This is funny - wasn't 6000 the one who could play golf with a beachball?

Posted by: anonymous at June 5, 2010 8:54 AM

That's my point anon, the CAFC is inconsistent in how it rules in cases that aren't under the magic "computer" umbrella. They say, routinely, things like in the golfball/beachball case where they hold that a beachball is not a golfball. Then they turn right around and call a computer that is not for playing football games based on actual games a computer for playing football games based on actual games. They should not be able to have it both ways.

If they want to go with my crazy (albeit realistic based on my own experience playing a comical version of golf with beachballs at after-prom iirc) construction in the beachball case then fine, go ahead and crazy construe this one. Otherwise, if you're going to hold them to things like they did in that case, then they need to hold computer language to the same standard.

But noooooo, computers are special, they get crazy interpretations and don't actually have to specify any new/nonobvious structure.

Posted by: 6000 at June 7, 2010 10:53 AM

"That's my point anon...albeit realistic"

Not sure I understand your point. To someone skilled in the particular arts you are wrong on both matters. Do you not understand the distinction between a general purpose computer and a particular computer? Perhaps you should read up on the PHOSITA understanding of "programming".

Posted by: anonymous at June 7, 2010 3:03 PM

"Not sure I understand your point. To someone skilled in the particular arts you are wrong on both matters."

O rly? Someone skilled in the art of making computers a computer for playing fantasy football is a computer for playing football? Hmmm. I doubt it. Assuming that someone skilled in the computer arts would even know what football is (not a given), then would they not know the distinction between fantasy football and football?

"Do you not understand the distinction between a general purpose computer and a particular computer?"

The "distinctionlol" is one of mere use in cases like this, that fantasy football computer wasn't a "particular" computer any more than the computer I'm using right now is.

Posted by: 6000 at June 8, 2010 9:14 AM

By the by, did anyone hear the latest on PH's lawlsuit? It appears, as best I can tell, that his counsel bailed on him and then he had all his claims dismissed whereas MS is now pressing for invalidation and judgement of non-infringement.

Good times in the world of "loltoolbars".

Posted by: 6000 at June 8, 2010 9:17 AM

"The "distinctionlol" is one of mere use"

Do you know anything about the art? About law?

Posted by: anonymous at June 8, 2010 9:30 AM

"Do you know anything about the art? About law?"

More than you in both areas most likely.

Posted by: 6000 at June 8, 2010 1:04 PM