Case 6:21-cv-00057-ADA Document 613 Filed 05/14/21 Page 1 of 26

IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS
WACO DIVISION

VLSI TECHNOLOGY LLC,

Plaintiff,

v. Cause No. 6:21-cv-00057-ADA

INTEL CORPORATION,
Defendant.

VLSI’S OPPOSITION TO INTEL’S RULE 52 MOTION FOR JUDGMENT OF NO

INFRINGEMENT OF U.S. PATENT NO. 7,725,759 UNDER THE DOCTRINE OF
EQUIVALENTS

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TABLE OF CONTENTS

Page

I. INTRODUCTION ............................................................................................................ 1

II. FACTUAL BACKGROUND ........................................................................................... 2

A. The ’759 Patent ..................................................................................................... 2

B. VLSI’s Doctrine Of Equivalents Case .................................................................. 3

C. Intel’s Mischaracterizations Of VLSI’s Doctrine Of Equivalents Case ............... 5

III. PROSECUTION HISTORY ESTOPPEL DOES NOT APPLY ...................................... 6

A. Amendment-Based Estoppel Does Not Apply ..................................................... 6

B. Argument-Based Estoppel Does Not Apply ......................................................... 8

IV. VLSI’S DOE THEORY DOES NOT ENSNARE THE PRIOR ART ........................... 12

A. VLSI’s Hypothetical Claim Is Patentable ........................................................... 15

V. VLSI’S DOE CASE DOES NOT VITIATE THE CLAIM............................................ 18

VI. CONCLUSION ............................................................................................................... 20

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TABLE OF AUTHORITIES

Page(s)

Cases

Agrofresh Inc. v. Essentiv LLC,

No. CV 16-662 (MN), 2020 WL 7024867 (D. Del. Nov. 30, 2020) .................................13, 15

Baldwin Graphic Sys., Inc. v. Siebert, Inc.,

512 F.3d 1338 (Fed. Cir. 2008)..................................................................................................8

Bio-Rad Lab’ys, Inc. v. 10X Genomics Inc.,

967 F.3d 1353 (Fed. Cir. 2020)................................................................................................18

Conoco, Inc. v. Energy & Env’t Int’l, L.C.,

460 F.3d 1349 (Fed. Cir. 2006)..................................................................................................9

Conroy v. Reebok Int’l, Ltd.,

14 F.3d 1570 (Fed. Cir. 1994)..................................................................................................13

Crystal Semiconductor v. Tritech Microelectronics,

246 F. 3d 1336 (Fed. Cir. 2001).............................................................................................1, 7

David Jang, M.D. v. Bos. Sci. Corp.,

No. 2016-1275, 2016 WL 3082194 (Fed. Cir. May 23, 2016) ..........................................14, 15

Deering Precision Instruments, L.L.C. v. Vector Distrib. Sys., Inc.,

347 F.3d 1314 (Fed. Cir. 2003)..............................................................................................1, 8

DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,

469 F.3d 1005 (Fed. Cir. 2006)................................................................................................18

Eagle Comtronics, Inc. v. Arrow Commc’n Labs., Inc.,

305 F.3d 1303 (Fed.Cir.2002)....................................................................................................8

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,

344 F.3d 1359 (Fed. Cir. 2003)..................................................................................................6

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,

535 U.S. 722 (2002) ...................................................................................................................6

G. David Jang, M.D. v. Bos. Sci. Corp.,

872 F.3d 1275 (Fed. Cir. 2017)....................................................................................12, 13, 14

Int’l Visual Corp. v. Crown Metal Mfg. Co.,

991 F.2d 768 (Fed. Cir. 1993)..................................................................................................13

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Page(s)

Interactive Pictures Corp. v. Infinite Pictures, Inc.,

274 F.3d 1371 (Fed. Cir. 2001)................................................................................................13

Oilfield Equip. Mktg., Inc. v. New Tech Sys., Inc.,

No. MO-02-CA-183, 2006 WL 8436327 (W.D. Tex. June 22, 2006), aff’d,
227 F. App’x 925 (Fed. Cir. 2007) ............................................................................................9

OptoLum, Inc. v. Cree, Inc.,

490 F. Supp. 3d 916 (M.D.N.C. 2020) ..............................................................................13, 15

Silt Saver, Inc. v. Hastings,

No. 1:16-CV-1137-SCJ, 2017 U.S. Dist. LEXIS 216827 (N.D. Ga. Oct. 18,
2017) ..........................................................................................................................................8

Smith & Nephew, Inc. v. Arthrex, Inc.,

No. 2:07-cv-335-TJW-CE, 2010 U.S. Dist. LEXIS 10257 (E.D. Tex. Feb. 5,
2010) ........................................................................................................................................10

Touchcom, Inc. v. Bereskin & Parr,

790 F. Supp. 2d 435 (E.D. Va. 2011) ......................................................................................12

Touchcom, Inc. v. Berreskin & Parr,

No. 1:07CV114 JCC, 2010 WL 4393282 (E.D. Va. Oct. 29, 2010) .......................................14

UCB, Inc. v. Watson Labs., Inc.,

927 F.3d 1272 (Fed. Cir. 2019)................................................................................................18

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I. INTRODUCTION

Intel Rule 52 Motion for judgment of no infringement of U.S. Patent No. 7,725,759 under

the doctrine of equivalents (“DOE”) should be denied. Intel mischaracterizes VLSI’s DOE theory,

the ’759 patent’s prosecution history, and the law.

Intel’s amendment-based prosecution history estoppel argument is premised on Intel’s

contention that the ’759 patent Applicant amended the claims to require a “‘first master device’

alone to generate the ‘request.’” Mot. at 11 (emphasis in original). This is not true. The word

“alone” never appeared in any claim, and the Applicant never argued that any claim requires a

single master device “alone” to make a request. Intel relies entirely on the Applicant’s change from

the use of the term “at least one master device” in a prior claim set to “a master device” in a new

claim set. But this was not a substantive change, because in patent claims, the indefinite article “a”

itself means “at least one.” Crystal Semiconductor v. Tritech Microelectronics, 246 F. 3d 1336, 1347

(Fed. Cir. 2001) (“This court has consistently emphasized that the indefinite articles ‘a’ or ‘an,’ when

used in a patent claim . . . requires “at least one”). Intel’s amendment-based estoppel argument flies

in the face of hornbook patent law. Intel previously raised this very same argument in its Motion for

Summary Judgment (D.I. 253), which the Court rejected. D.I. 507; CL18-20.

Intel’s argument-based estoppel defense fares no better. For argument-based estoppel, Intel

bears the heavy burden of establishing that the Applicant made a “clear and unmistakable

surrender” of the equivalent VLSI presented in its DOE case. Deering Precision Instruments,

L.L.C. v. Vector Distrib. Sys., Inc., 347 F.3d 1314, 1326 (Fed. Cir. 2003); CL12. Far from

establishing a “clear and unmistakable surrender” of that equivalent, Intel mischaracterizes VLSI’s

DOE case and ignores the actual equivalent VLSI identified. Intel relies on the Applicant’s

argument that the Ansari reference does not disclose the “request” claimed in the ’759 patent. But

VLSI’s DOE case did not turn on the “request” itself, but rather on the components that provide the

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“request” in Intel’s accused products. In particular, VLSI’s expert, Dr. Conte, testified

Intel does not even contend that the

Applicant’s arguments about Ansari somehow disclaimed, or even relate to, a DOE theory under

which the claimed request is provided by a combination of a first master device and its associated

code in the programmable clock controller. The jury found infringement under the DOE theory VLSI

actually presented at trial. It is improper for Intel to concoct a different DOE theory and then argue

estoppel against that straw man. The jury’s DOE verdict should be upheld.

Intel is not entitled to judgment under its ensnarement defense. Intel’s only argument is

that VLSI did not propose, in express terms, a “hypothetical claim” in prior proceedings. But VLSI

was under no legal obligation to do so. And in any event, the hypothetical claim corresponding to

VLSI’s DOE theory was sufficiently disclosed to Intel in Dr. Conte’s July 2020 expert report. Dr.

Conte also opined in his report that his DOE opinion does not ensnare the prior art. Below, VLSI

expressly proposes a hypothetical claim corresponding to Dr. Conte’s DOE opinion, and

demonstrates why it is not ensnared by the prior art Intel has vaguely raised.

Finally, Intel’s “claim vitiation” argument lacks merit. Claim vitiation is not a stand-alone

exception to the application of DOE. Instead, it is merely a conclusion that no reasonable jury

could find infringement under DOE. Here, substantial evidence supports the jury’s DOE finding.

Intel’s attempt to replace substantial evidence review with de novo review by dressing up its attack

on the jury’s verdict under the guise of “claim vitiation” is contrary to law.

II. FACTUAL BACKGROUND

A. The ’759 Patent

The ’759 patent relates to controlling the clock frequency in an electronic device in order to

selectively deliver faster clock speeds while also managing power consumption. FF4-6. The ’759

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patent discloses and claims a system in which a first master device of a plurality of master devices

provides a “request” to change a clock frequency of a high-speed clock “in response to a predefined

change in performance of the first master device.” A “programmable clock controller” receives the

request and provides outputs to independently control (1) a clock frequency of a second master

device coupled to a bus, and (2) a variable clock frequency of the bus. FF7.

B. VLSI’s Doctrine Of Equivalents Case

The evidence VLSI presented at trial demonstrated, and the jury agreed, that Intel infringes

the ’759 patent under the DOE. In his DOE testimony, Dr. Conte explained

Dr. Conte testified

that

More specifically, Dr. Conte explained

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Notably, Intel’s own expert did not challenge Dr. Conte’s testimony that this difference

was a mere design choice. Instead, he disputed that the output of the combination of core 1 and

its P-Code was a “request” at all. Trial Tr. 1195:24-1196:16 (“Q. So can that calculated speed

change be the request required by the claims of the ‘759patent? A. No. Q. Can it be equivalent to

what the claims require? A. No.”). But Intel’s expert failed to acknowledge that Intel’s own

documentation and source code explicitly refer to this output as a “request.” Id. Intel’s fact

witnesses did not even address Core_Active signals sent by the cores. FF110-113; CL36.

C. Intel’s Mischaracterizations Of VLSI’s Doctrine Of Equivalents Case

In its Rule 52 Motion, Intel makes up a completely different DOE theory and mis-attributes

it to VLSI and Dr. Conte. In particular, Intel repeatedly contends that Dr. Conte’s DOE opinion

was based on an equivalent for the claimed “request.” Mot. at 2, 7. For example, Intel argues, “for

his doctrine of equivalents theory, Dr. Conte told the jury that data in the accused Intel products

that is sampled on a periodic basis—called C0 residency data—is equivalent to the claimed

“request … in response to a predefined change in performance of the first master device: . . .”

Mot. at 7. This is simply not true. In fact, Dr. Conte never

Similarly, Intel claims that Dr. Conte pointed to periodically-sampled C0 residency

counters as the claimed request or its equivalent. Mot. at 7-8. Intel again mischaracterizes Dr.

Conte’s testimony.

FF103-106 (Dr. Conte distinguishing between Core_Active signal and C0 residency

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counters).

Intel’s failure to accurately describe

VLSI’s actual DOE theory infects nearly every argument Intel raises in its Motion.

III. PROSECUTION HISTORY ESTOPPEL DOES NOT APPLY

A. Amendment-Based Estoppel Does Not Apply

Amendment-based estoppel “arises when an amendment is made to secure the patent and

the amendment narrows the patent’s scope.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki

Co., 535 U.S. 722, 736 (2002); CL10. To assess whether amendment-based estoppel arises, “[t]he

first question . . . is whether an amendment filed in the Patent and Trademark Office (‘PTO’) has

narrowed the literal scope of a claim. If the amendment was not narrowing, then prosecution

history estoppel does not apply.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d

1359, 1366 (Fed. Cir. 2003) (internal citations omitted); CL11. Here, the amendment Intel points

to was not narrowing, and hence amendment-based estoppel does not apply. FF14-31; CL33.

Intel relies on a September 10, 2008 amendment. Prior to that amendment, the then-pending

claims recited, e.g., “monitoring a plurality of master devices,” “receiving an input from at least one

of the plurality of master devices,” and “setting a high frequency flag for the at least one of the

1
In this sense, the output of the combination of the core plus its associated P-Code can be
considered “C0 residency data,” given that the “request” is ultimately derived from the C0
residency counters’ count of the Core_Active signal over the activity window as compared to
certain thresholds. PTX 3484.3-4. But C0 residency data should not be confused with the C0
residency counters themselves. See Trial Tr. 466:16-20. Throughout its Motion, Intel tries to blur
together these two separate concepts.

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plurality of master devices” (claim 1). FF14-20. In its September 10, 2008 Response, the Applicant

canceled claims 1-29 and introduced, among other claims, new claim 30, which again recited

“monitoring a plurality of master devices,” but then replaced the “at least one of” language with the

substantively identical indefinite article, “a”: “receiving a request to change the clock frequency of

the bus from a master device of the plurality of master devices, the request sent from the master

device in response to a predefined change in performance of the master device.” FF21-28.

Intel’s attempt to transmogrify this routine amendment into the basis for amendment-based

estoppel flies in the face of the facts and the law. First, Intel contends that this amendment somehow

requires “‘the first master device’ alone to generate the ‘request.’” Mot., at 11 (emphasis in

original). But this is obviously not true. The word “alone” does not appear in any of the claims,

nor does Intel point to any evidence that the first master device must alone generate the request.

FF16-18. Nor did the Applicant argue that the claims require a single master device “alone” to make

a request, or distinguish the prior art on any such basis. Id.

Second, under hornbook principles of patent law, the Applicant’s change from “at least

one” master device to “a” master device resulted in no substantive change to the claims at all. It is

axiomatic that in patent claims, the indefinite article “a” itself means “one or more” or “at least one.”

Crystal Semiconductor Corp., 246 F.3d at 1347 (“This court has consistently emphasized that the

indefinite articles ‘a’ or ‘an,’ when used in a patent claim, mean ‘one or more’ in claims containing

open-ended transitional phrases such as ‘comprising.’ . . . . ‘Under this conventional rule, the claim

limitation ‘a,’ without more, requires at least one.’”); CL21. Likewise, the amended claims’

subsequent references to “the” master device simply refer back to the one or more master devices

signified by the use of the indefinite article. “The subsequent use of definite articles ‘the’ or ‘said’

in a claim to refer back to the same claim term does not change the general plural rule, but simply

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reinvokes that non-singular meaning.” Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338,

1342 (Fed. Cir. 2008) (emphasis added); CL22-25.

Intel next argues that the “Examiner expressly confirmed that ‘the request’ from ‘the

master device’ in the amended claims necessarily refers to only one master device.” Mot., at 11

(emphasis in original). This assertion is again demonstrably untrue. When the Applicant introduced

new claim 30 in its September 10, 2008 Response, it erroneously used the old formulation “from the

at least one master device” in the last limitation of claim 30: “in response to receiving the request

from the at least one master device, controlling the clock frequency.” FF29. Because the Applicant

had deleted the preceding references to “at least one master device,” there was no antecedent basis

for this term. In a subsequent Office Action, the Patent Office noted this “informality,” stating:

“Claims 30-43 are objected to because of the following informalities: line 6 of claim 30 recite ‘the

at least one master device’, which lacks antecedent basis.” FF30. In its next Response, the Applicant

simply deleted the holdover language “at least one” in this limitation, noting that it “has amended

the claims to cure the informalities.” FF31. Intel’s attempt to turn this routine correction of an

antecedent basis informality into a ground for estoppel is meritless.

Finally, Intel raised its current amendment-based estoppel argument in its Motion for

Summary Judgment (D.I. 253). After full briefing by the parties and oral argument encompassing

28 pages of hearing transcript, the Court denied Intel’s Motion. FF81-82.

B. Argument-Based Estoppel Does Not Apply

“To invoke argument-based estoppel, the prosecution history must evince a ‘clear and

unmistakable surrender of subject matter.’” Deering Precision Instruments, L.L.C. v. Vector

Distrib. Sys., Inc., 347 F.3d 1314, 1326 (Fed. Cir. 2003) (quoting Eagle Comtronics, Inc. v. Arrow

Commc’n Labs., Inc., 305 F.3d 1303, 1316 (Fed.Cir.2002)); CL12; CL38. The clear and

unmistakable standard is a high bar. Silt Saver, Inc. v. Hastings, No. 1:16-CV-1137-SCJ, 2017

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U.S. Dist. LEXIS 216827, at *25 (N.D. Ga. Oct. 18, 2017) (“None of the intrinsic evidence meets

the high bar of showing a clear disavowal of claim scope . . .”); CL15. The court “do[es] not

presume a patentee’s arguments to surrender an entire field of equivalents through simple

arguments and explanations to the patent examiner.” Conoco, Inc. v. Energy & Env’t Int’l, L.C.,

460 F.3d 1349, 1364 (Fed. Cir. 2006); CL13. Rather, “the court must consider the . . . prosecution

history as a whole.” Oilfield Equip. Mktg., Inc. v. New Tech Sys., Inc., No. MO-02-CA-183, 2006

WL 8436327, at *7 (W.D. Tex. June 22, 2006), aff’d, 227 F. App’x 925 (Fed. Cir. 2007); CL14.

Argument-based estoppel does not apply in this case. See FF32-44, 89-98.

Far from establishing a “clear and unmistakable surrender” of the equivalent VLSI

presented at trial—namely, a combination of the core and its associated P-Code in the PCU

providing the claimed request—Intel’s argument-based estoppel defense does not even relate to

the actual DOE theory VLSI presented. Intel relies the Applicant’s argument that the Ansari

reference does not disclose the “request” claimed in the ’759 patent. But VLSI’s DOE case did not

turn on the “request” itself, but rather on the components that provide the “request” in Intel’s accused

products. Intel does not even contend that the Applicant’s arguments about Ansari disclaimed the

actual equivalent at issue in VLSI’s DOE case.

The claims of the ’759 patent recite a first master device providing a request to change a

clock frequency of a high-speed clock. PTX-5, at col. 8:52-55 (claim 14) col. 9:30-34 (claim 18). In

Ansari, in contrast, a master device sends a bus request to an arbiter to access the bus and initiate a

transaction on the bus, not to increase the clock frequency of the bus. FF12-13. During prosecution,

the Applicant consistently distinguished Ansari on this basis: in Ansari, “[a] master device seeking

bus resources to initiate a transaction sends a bus request and a destination address to the bus

arbiter.” FF34-35, 38-40. Thus, the Applicant’s statement, in the course of distinguishing Ansari,

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that “a request from a device that happens to cause an arbiter to increase the bus speed is not a request

to change the bus speed,” was directed to the fact that Ansari’s request to gain control of the bus is

not the claimed “request” (PTX-8-A.371), even though the bus arbiter might happen to increase the

bus frequency based on other factors. CL40-41.

The Applicant thus distinguished Ansari’s “request” from the “request” claimed in the

then-pending claims of the ’759 application. Despite Intel’s repeated suggestions to the contrary,

Dr. Conte’s DOE opinion was not directed to the claimed “request” itself, but instead to the

components that provide the request. See supra at 2-5. In his DOE testimony,

Dr. Conte’s DOE theory is thus very different from both Ansari and from the Applicant’s

arguments about Ansari. At no point did the Applicant distinguish Ansari on the ground that the

master device in combination with the arbiter jointly provide a request to change clock frequency.

Nor did the Applicant argue that its claims were patentable on the ground that the code for

providing the claimed request was split between the master device and master device-specific code

2
The case law makes clear that two structures can meet the limitation of one claim element
under the doctrine of equivalents. Smith & Nephew, Inc. v. Arthrex, Inc., No. 2:07-cv-335-TJW-CE,
2010 U.S. Dist. LEXIS 10257, at *21-22 (E.D. Tex. Feb. 5, 2010) (“Further, the fact that the
RetroButton has merged two structures to meet the limitation of one claimed element, or the fact that
one structure meets separate claim limitations, does not necessarily preclude a finding of
infringement under the doctrine of equivalents or vitiate a claim limitation where the differences are
insubstantial. . . . The Federal Circuit is clear that ‘one-to-one correspondence of components is
not required, and elements or steps may be combined without ipso facto loss of equivalency.’”)
(emphasis added); CL35.

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in the arbiter. Intel does not contend otherwise. The Applicant thus did not distinguish Ansari in a

manner that has any relevance to VLSI’s DOE theory.

Intel also conclusorily states that “the PCU in Intel’s products operates just like the bus

arbiter in the Ansari reference.” Mot. at 16. Intel offers no evidentiary support for such position,

and there is none. In Ansari, the bus arbiter 628 determines “which master device 604 or 624 can

access and control communications on the bus and a bus rate or speed for the required

transaction.” FF10-13; Ex. 3, at col. 9:65-10:2 (emphasis added). That is plainly not the role of

the PCU, whose decision instructions receive requests from the cores and their P-Code for an

increase or decrease in clock frequency. In an apparent attempt to establish a purported identity

between its PCU and Ansari’s arbiter, Intel argues that the PCU does not “issu[e] a ‘request’ to

use a specified frequency for the master device as claimed,” Mot. at 16, but Intel’s own documents

refute this attorney argument. The combination of the core’s Core_Active signals and the core-

specific P-Code in the PCU that process those signals produce a “ratio” for increasing or

decreasing the clock frequency of the core depending on the core’s workload, and

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FF91-92; see supra

at 2-6. At minimum, Intel’s grab bag of disputed attorney argument falls far short of meeting Intel’s

“high bar” of demonstrating a “clear and unmistakable surrender” of the equivalent VLSI

presented at trial.

The jury found infringement under the DOE theory VLSI presented at trial. Intel’s attempt

to concoct a different DOE theory and then argue estoppel against that straw man is improper.

IV. VLSI’S DOE THEORY DOES NOT ENSNARE THE PRIOR ART

“A doctrine of equivalents theory cannot be asserted if it will encompass or ‘ensnare’ the

prior art.” G. David Jang, M.D. v. Bos. Sci. Corp., 872 F.3d 1275, 1285 (Fed. Cir. 2017); CL44.

The ensnarement analysis is not limited to a single claim element, but rather must address all

elements of a claim. Touchcom, Inc. v. Bereskin & Parr, 790 F. Supp. 2d 435, 454-60 (E.D. Va.

2011), on reconsideration on other grounds (July 7, 2011); CL45-46.

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One way to determine whether a patent ensnares the prior art is for the patentee to construct

a hypothetical claim that encompasses the infringing product. Jang, 872 F.3d at 1285. However,

a “hypothetical claim analysis is not the only method in which a district court can assess whether

a doctrine of equivalents theory ensnares the prior art.” Id. at 1285, n.4; see also Conroy v. Reebok

Int’l, Ltd., 14 F.3d 1570, 1577 (Fed. Cir. 1994) (“[A] district court’s decision not to conduct a

hypothetical claim analysis [is] not itself improper.”); Int’l Visual Corp. v. Crown Metal Mfg. Co.,

991 F.2d 768, 772 (Fed. Cir. 1993) (“Hypothetical claim analysis is an optional way of evaluating

whether prior art limits the application of the doctrine of equivalents.”) (Emphasis added);

OptoLum, Inc. v. Cree, Inc., 490 F. Supp. 3d 916, 935 (M.D.N.C. 2020) (“[T]he Federal Circuit

has not mandated the application of a hypothetical claim analysis in determining whether the

ensnarement defense applies.”); Agrofresh Inc. v. Essentiv LLC, No. CV 16-662 (MN), 2020 WL

7024867, at *15 (D. Del. Nov. 30, 2020) (“[C]ourts are not constrained to a hypothetical claim

analysis.”); CL47-49.

In the context of a hypothetical claim analysis, “[t]he burden of producing evidence of prior

art to challenge a hypothetical claim rests with an accused infringer, but the burden of proving

patentability of the hypothetical claim rests with the patentee.” Interactive Pictures Corp. v.

Infinite Pictures, Inc., 274 F.3d 1371, 1380 (Fed. Cir. 2001). Intel has failed to meet its affirmative

burden of production by failing to produce prior art that would ensnare Dr. Conte’s doctrine of

equivalents infringement analysis. While Intel vaguely referred to certain allegedly ensnared prior

art, Mot. at 5, it failed to provide any detailed analysis, including any analysis addressing the

asserted claims as a whole (Mot. at 5). FF53, 55; CL50.

Intel argues that VLSI never provided notice of a hypothetical claim. Mot. at 18. This is

incorrect. In July 2020, VLSI’s expert, Dr. Conte, explained in his expert report that the

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The present case is also distinguishable from Intel’s cited Fluidigm Corp. case. Mot. at

18-19. In Fluidigm Corp., the patent owner did not even mention any doctrine of equivalents

theories at the summary judgment stage, and the court characterized them as “may-or-may-not-

exist theories.” Id. at *7. In contrast, VLSI consistently pursued its doctrine of equivalents theory

throughout the case and before the jury. FF62-65, 70; CL53. As noted above, in July 2020, Dr.

Conte set forth in his expert report precisely the DOE theory that he presented at trial.” FF66-67.

Dr. Conte further explained This

provided Intel with notice of a hypothetical claim based on Dr. Conte’s DOE analysis.

A. VLSI’s Hypothetical Claim Is Patentable

As noted above, a hypothetical claim analysis is not a hard and fast requirement. For

example, in OptoLum, the court analyzed ensnarement by considering the parties’ expert

testimony. OptoLum, 490 F. Supp. 3d at 936. Similarly, in Agrofresh, the patentee did not propose

a hypothetical claim, and the court recognized that it was “not constrained to a hypothetical claim

analysis.” Agrofresh, 2020 WL 7024867, at *15.

Nevertheless, the hypothetical claim below plainly corresponds to Dr. Conte’s DOE

opinion timely disclosed to Intel in July 2020, and which Dr. Conte presented at trial.

Hypothetical Claim. A system comprising: a bus capable of operation at a

variable clock frequency; a first master device coupled to the bus, the first master
device or the first master device and its associated code in a programmable clock
controller configured to provide a request to change a clock frequency of a high-
speed clock in response to a predefined change in performance of the first master
device, wherein the predefined change in performance is due to loading of the first
master device as measured within a predefined time interval; and the a
programmable clock controller having an embedded computer program therein, the
computer program including instructions to: receive the request provided by the
first master device or the first master device and its associated code in the
programmable clock controller; provide the clock frequency of the high-speed
clock as an output to control a clock frequency of a second master device coupled
to the bus in response to receiving the request provided by the first master device
or the first master device and its associated code in the programmable clock
controller; and provide the clock frequency of the high-speed clock as an output to

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control the variable clock frequency of the bus in response to receiving the request
provided by the first master device or the first master device and its associated code
in the programmable clock controller.

FF69.3

Despite Intel’s failure to meet its burden of production of allegedly ensnared prior art,

VLSI’s hypothetical claim is patentable over the prior art vaguely cited by Intel. Mot. at 5.

As explained in FF73-75, VLSI’s proposed hypothetical claim is patentable over the Terrell

reference, alone or in combination. Ex. 4 [Terrell]. Intel’s expert, Dr. Grunwald, never asserted

Terrell as an anticipatory reference or a primary base reference under obviousness. Ex. 5

[Grunwald Rpt.] at ii-vi (Table of Contents). Dr. Grunwald used Chen in combination with Terrell

(claim 14) or Chen in combination with Terrell and Kiriake or Velasco (claim 18). Ex. 5 at iv

(Table of Contents). Terrell lacks multiple elements of the hypothetical claim, some of which are

described below. Claims 14 and 18 of the ’759 patent require providing the clock frequency of

the high-speed clock as an output to control the variable clock frequency of the bus. FF75. But

as Dr. Conte noted in his rebuttal report, Terrell fails to teach this limitation of the claims, which

Dr. Grunwald conceded:

Dr. Conte also

explained why the combination of Chen and Terrell fail to disclose, teach or suggest claims 14,

17, 18, and 24 of the ’759 patent, and why a person of skilled in the art would not have been

motivated to combine the references. Ex. 2 [Conte Reb. Rpt.] ¶¶ 490-656.

As explained in FF76-77, VLSI’s proposed hypothetical claim is also patentable over

Ansari, which was discussed at length during prosecution of the ’759 patent. VLSI’s hypothetical

3
The hypothetical claim corresponds to issued claim 14 with additional language shown
in underline text and a deletion shown in strikethrough text. CL54-56.

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claim is fundamentally different from Ansari. CL39. Tellingly, Dr. Grunwald never relied on

Ansari for anticipation or obviousness in his expert report. Ex. 5 [Grunwald Rpt.] at ii-vi (Table

of Contents). The hypothetical claim recites, among other things, “the first master device or the

first master device and its associated code in a programmable clock controller configured to

provide a request to change a clock frequency of a high-speed clock in response to a predefined

change in performance of the first master device.” FF69. The master device in Ansari (such as

Master 1 604) makes a request to the bus arbiter to access the bus 620 to initiate a transaction, not

to request an increase in clock frequency of a high-speed clock or the bus. FF12. The Applicant

made this very argument during prosecution. Id. This is one key distinction between the

hypothetical claim and Ansari. Moreover, the hypothetical claim recites that the request is

provided “in response to a predefined change in performance.” FF76. Ansari’s master does not

make a request “in response to a change in performance” of the master. Rather, the master in

Ansari makes a request to access the bus. Id. The Applicant made this argument during

prosecution, as well. Id. This another key distinction between the hypothetical claim and Ansari.

The hypothetical claim also recites “provide the clock frequency of the high-speed clock as an

output to control a clock frequency of a second master device coupled to the bus in response to

receiving the request.” FF77 (emphasis added). Ansari fails to disclose controlling the clock

frequency of a second master device in response to receiving a request from a first master device

to gain access to the bus. The Applicant also made this argument during prosecution. Id.; FF39.

This is a further key distinction between the hypothetical claim and Ansari.

As explained in FF78-79, VLSI’s proposed hypothetical claim is also patentable over the

Yonah processor, which Dr. Grunwald vaguely suggested is ensnared by VLSI’s DOE theory.

Dkt. 592, Ex. 9 ¶¶ 391-393. As an initial matter, the jury found that the Yonah processor did not

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anticipate the claims of the ’759 patent. Dkt. 564, at 6. The hypothetical claim recites a

programmable clock controller having an embedded computer program including instructions.

FF69. VLSI’s expert, Dr. Conte, testified at trial that the Yonah processor did not have a

programmable clock controller as claimed. FF79. Dr. Conte also explained why a person of

ordinary skill in the art would not have been motivated to implement in the Yonah processor a

programmable clock controller having an embedded computer program therein with instructions.

FF79. Hence, VLSI’s hypothetical claim is patentable over Yonah for all of the same reasons that

the asserted claims are patentable over Yonah, as the jury expressly found.

In sum, even putting aside Intel’s failure to adequately identify prior art allegedly ensnared

by VLSI’s DOE theory, VLSI’s hypothetical claim is patentable.

V. VLSI’S DOE CASE DOES NOT VITIATE THE CLAIM

Intel’s final legal challenge to the application of DOE is based on so-called “claim

vitiation.” Mot. at 19-20. However, Intel’s Motion misapprehends the law on this issue. Claim

vitiation “is not an exception or threshold determination that forecloses resort to the doctrine of

equivalents, but is instead a legal conclusion of a lack of equivalence based on the evidence

presented and the theory of equivalence asserted.” Bio-Rad Lab’ys, Inc. v. 10X Genomics Inc.,

967 F.3d 1353, 1366–67 (Fed. Cir. 2020) (emphasis added) (quoting UCB, Inc. v. Watson Labs.,

Inc., 927 F.3d 1272, 1283 (Fed. Cir. 2019)). As the Federal Circuit has explained:

“A holding that the doctrine of equivalents cannot be applied to an accused

device because it ‘vitiates’ a claim limitation is nothing more than a
conclusion that the evidence is such that no reasonable jury could
conclude that an element of an accused device is equivalent to an element
called for in the claim, or that the theory of equivalence to support the
conclusion of infringement otherwise lacks legal sufficiency.”

DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1018-19 (Fed. Cir. 2006)

(emphasis added); CL57.

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Intel’s “claim vitiation” argument is an attempted end-run around its heavy burden to prove

that the jury’s DOE verdict is not supported by substantial evidence. For the reasons set forth in

VLSI’s opposition to Intel’s Rule 50(b) motion, the jury verdict easily passes substantial evidence

review. Intel’s attempt to replace substantial evidence review with de novo review by dressing up

its attack on the jury’s verdict under the guise of “claim vitiation” is contrary to law.

Intel’s “claim vitiation” argument is also based on a blatant mischaracterization of Dr.

Conte’s DOE testimony. Intel claims that Dr. Conte pointed to C0 residency counters as the

“request” in his DOE analysis, and that he did so “because ‘counters inside the PCU called C0

residency’ ‘are sampled periodically’ to calculate the speed change.” Mot. at 20. Intel plucks

snippets of testimony out of context and then splices them together in a highly misleading way. In

fact, Dr. Conte did not opine that C0 residency counters are “requests.”

As Dr. Conte explained at trial, C0 residency counters count how long a core is active—

i.e., how long the Core_Active signal from the core is asserted over the course of an activity

window. FF99-106. When a core sends a Core_Active signal to the PCU, the “Core_Active

[signal] starts these C0 residency counters. And when you send an inactive, it stops them.” FF103.

Core_Active signals are not sent periodically, but rather are sent whenever the core becomes

active. FF104 (“Q. Are Core_Active signals sent periodically? A. No. Q. When are they sent?

A. They’re sent whenever the core becomes active.”). Dr. Conte explained

As explained above,

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Dr. Conte explained

Thus, Dr. Conte’s trial testimony clearly established that

Intel’s “claim vitiation” argument misstates the law and misrepresents VLSI’s DOE case.

VI. CONCLUSION

For the foregoing reasons, the court should deny Intel’s Motion for judgment of no

infringement of U.S. Patent No. 7,725,759 under the doctrine of equivalents. CL67.

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Respectfully submitted,

Dated: May 7, 2021 By: /s/ Andy Tindel

Morgan Chu (pro hac vice) J. Mark Mann (Texas Bar No. 12926150)
Benjamin W. Hattenbach (pro hac vice) mark@themannfirm.com
Iian D. Jablon (pro hac vice) G. Blake Thompson (Texas Bar No.
Alan J. Heinrich (pro hac vice) 24042033)
Christopher T. Abernethy (pro hac vice) blake@themannfirm.com
Ian Robert Washburn (pro hac vice) MANN | TINDEL | THOMPSON
Amy E. Proctor (pro hac vice) 300 W. Main Street
Elizabeth C. Tuan (pro hac vice) Henderson, TX 75652
Dominik Slusarczyk (pro hac vice) Telephone: (903) 657-8540
Charlotte J. Wen (pro hac vice) Facsimile: (903) 657-6003
Brian Weissenberg (pro hac vice)
Benjamin Monnin (pro hac vice) Andy Tindel (Texas Bar No. 20054500)
Jordan Nafekh (pro hac vice) atindel@andytindel.com
IRELL & MANELLA LLP MANN | TINDEL | THOMPSON
1800 Avenue of the Stars, Suite 900 112 E. Line Street, Suite 304
Los Angeles, California 90067 Tyler, Texas 75702
Telephone: (310) 277-1010 Telephone: (903) 596-0900
Facsimile: (310) 203-7199 Facsimile: (903) 596-0909
mchu@irell.com
bhattenbach@irell.com Craig D. Cherry (Texas Bar No. 24012419)
ijablon@irell.com ccherry@swclaw.com
aheinrich@irell.com STECKLER, WAYNE, COCHRAN,
cabernethy@irell.com CHERRY, PLLC
iwashburn@irell.com 100 N. Ritchie Road, Suite 200
aproctor@irell.com Waco, Texas 76701
etuan@irell.com Telephone: (254) 776-3336
dslusarczyk@irell.com Facsimile: (254) 776-6823
cwen@irell.com
bweissenberg@irell.com
bmonnin@irell.com Attorneys for VLSI Technology LLC
jnafekh@irell.com

Babak Redjaian (pro hac vice)

IRELL & MANELLA LLP
840 Newport Center Drive, Suite 400
Newport Beach, California 92660
Telephone: (949) 760-0991
Facsimile: (949) 760-5200
bredjaian@irell.com

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CERTIFICATE OF SERVICE

A true and correct copy of the foregoing instrument was served or delivered electronically

via email, to all counsel of record, on May 7, 2021.

/s/ Andy Tindel

Andy Tindel

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