In the Matter of 

Certain Computer Products, Computer 

Components and Products 

Containing Same 

Investigation No. 337-TA-628 

Publication 4197 October 2010 

u.s. International Trade Commission 

This Publication was originally 

filed as Publication No. 4183 

Washington, DC 20436 
u.s. International Trade Commission 

COMMISSIONERS 

Shara L. Aranoff, Chairman 

Daniel R. Pearson, Vice Chairman 

Deanna Tanner Okun 

Charlotte R. Lane 

Irving A. Williamson 

Dean A. Pinkert 

Address all communications to 

Secretary to the Commission 

United States International Trade Commission 

Washington, DC 20436 
u.s. International Trade Commission 

Washington, DC 20436 

www.usitc.gov 

In the Matter of 

Certain Computer Products, Computer 

Components and Products 

Containing Same 

Investigation No. 337-TA-628 

Publication 4197 October 2010 

UNITED STATES INTERNATIONAL TRADE COMMISSION 

Washington, D.C. 

In the Matter of 

CERTAIN COMPUTER PRODUCTS, 

COMPUTER COMPONENTS AND 

PRODUCTS CONTAINING SAME 

Investigation No. 337-TA-628 

NOTICE OF COMMISSION DECISION NOT TO REVIEW THE ALJ's FINAL 

INITIAL DETERMINATION FINDING NO VIOLATION OF SECTION 337; 

TERMINATION OF INVESTIGATION 

AGENCY: U.S. International Trade Commission. 

ACTION: Notice. 

SUMMARY: Notice is hereby given that the U.S. International Trade Commission has 

determined not to review the presiding administrative law judge's ("ALJ") final initial 

determination ("ID") issued on March 16, 2009, finding no violation of section 337 of the Tariff 

Act of 1930, 19 U.S.C. § 1337 in this investigation. 

FOR FURTHER INFORMATION CONTACT: PanyinHughes, Esq., Office of the General 

Counsel, U.S. International Trade Commission, 500 E Street, S.W., Washington, D.C. 20436, 

telephone (202) 205-3042. Copies of non-confidential documents filed in connection with this 

investigation are or will be available for inspection during official business hours (8:45 a.m. to 

5:15 p.m.) in the Office of the Secretary, U.S. International Trade Commission, 500 E Street, 

S.W., Washington, D.C. 20436, telephone (202) 205-2000. General information concerning the 

Commission may also be obtained by accessing its Internet server at http://www.usitc.gov. The 

public record for this investigation may be viewed on the Commission's electronic docket (EDIS) 

at http://edis.usitc.gov. Hearing-impaired persons are advised that information on this matter can 

be obtained by contacting the Commission's TDD terminal on (202) 205-1810. 

SUPPLEMENTARY INFORMATION: The Commission instituted this investigation on 

January 14,2008, based on a complaint filed by International Business Machines Corporation of 

Armonk, New York ("IBM"). 73 Fed. Reg. 2275 (Jan. 14,2008). The complaint alleged 

violations of section 337 in the importation into the United States, the sale for importation, or the 

sale within the United States after importation of certain computer products, computer 

components and products containing same by reason of infringement of certain claims of United 

States Patent Nos. 5,008,829 ("the '829 patent"); 5,249,741 ("the '741 patent"); and 5,371,852 
("the '852 patent"). The complaint named as respondent ASUSTek Computer, Inc. of Taipei, 

Taiwan and ASUS Computer International of Fremont, California. On January 21,2008, IBM 

amended the complaint and notice of investigation to add Respondents Pegatron Technology 

Corporation of Taipei, Taiwan and Unihan Technology Corporation, of Taipei, Taiwan, wholly 

owned subsidiaries of ASUSTek. The respondents are referred to collectively as "ASUS." 

On August 4, 2008, the ALJ issued an ID that extended the target date for completion of 

the investigation to July 14,2009. The Commission determined not to review the ID. 

On March 16, 2009, the ALJ issued his final ID finding no violation of section 337 by 

ASUS. The ID included the ALI's recommended determination on remedy and bonding. In the 

subject ID, the ALJ found that ASUS's products do not infringe asserted claims 1 and 2 of the 

'829 patent. The ALJ also found that none of the cited references anticipated claims 1 and 2 of 

the '829 patent or rendered them obvious. Likewise, the ALJ found that ASUS's products do not 

infringe asserted claim 1 of the ' 741 patent. The ALJ further found that none of the cited 

references anticipated claim 1 or rendered claim 1 ofthe '741 patent obvious. The ALJ also 

found that the ' 741 patent satisfied the written description and enablement requirements of 35 

U.S.C. § 112, first paragraph, for claim 1. Similarly, the ALJ found that ASUS's accused 

products do not infringe asserted claims 1, 8, 13, 14,22 and 23 ofthe '852 patent. The ALJ also 

found that none of the cited references anticipate the asserted claims of the '852 patent. The ALJ 

further found that IBM met the domestic industry requirement because a sufficient nexus existed 

between IBM's licensing activities and each of the asserted patents. 

On March 30,2009, IBM filed a petition, seeking review of the ALJ's ID with regards to 

infringement of all the patents-in-issue. That same day, ASUS filed a contingent petition, 

seeking review of the ALJ's findings that the '829 and ' 741 patents are not invalid. On April 7, 

2009, ASUS filed an opposition to IBM's petition for review, and IBM filed a response to 

ASUS's contingent petition for review. Also on April 7, 2009, the Commission investigative 

attorney filed a response to both IBM's petition and ASUS' s contingent petition. 

Having examined the record of this investigation, including the ALJ's final ID, the 

petitions for review, and the responses thereto, the Commission has determined not to review the 

subject ID. 

The authority for the Commission's determination is contained in section 337 of the 

Tariff Act of 1930, as amended (19 U.S.C. § 1337), and in section 210,42(h) ofthe 

Commission's Rules of Practice and Procedure (19 C.F.R. § 210,42(h». 

2 
By order of the Commission. 

~~ Mari! . Abbott 

Secretary to the Commission 

Issued: July 13, 2009 

3 
CERTAIN COMPUTER PRODUCTS, COMPUTER 

COMPONENTSANDPRODUCTSCONTAUaNG 

SAME 

337-TA-628 

PUBLIC CERTIFICATE OF SERVICE 

I, Marilyn R. Abbott, hereby certify that the attached NOTICE OF COMMISSION 

DECISION NOT TO REVIEW THE ALJ'S FINAL INTIAL DETERMINATION 

FINDING NO VIOLATION OF SECTION 337 has been served by hand upon the 

Commission Investigative Attorney, VU Q. Bui, Esq., and the following parties as 

indicated, on JUt. 1 ~ 2029 

.bo1~e~ u.s. International Trade Commission 

500 E Street, SW 

Washington, DC 20436 

ON BEHALF OF COMPLAINANT INTERNATIONAL 

BUSINESS MACIDNES: . 

V. James Adduci II, Esq. 

ADDUCI, MASTRIANI & SCHAUMBERG LLP 

1200 Seventeenth Street, NW, Fifth Floor 

Washington, DC 20036 

P-202-467-6300 

F-202-466-2005 

ON BEHALF OF RESPONDENTS ASUSTeK 

COMPUTER, INCORPORATED, ASUS COMPUTER 

INTERNATIONAL, PEGATRON CORPORATION, 

AND UNIHAN CORPORATION: 

Brian R. Nester, Esq. 

FISH & RICHARDSON P.C. 

1425 K Street, NW, 11 th Floor 

Washington, DC 20005 

P-202-783-5070 

F-202-783-2331 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

(--1Via First Class Mail 

( ) Other: __ _ 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

( v(Via First Class Mail 

( ) Other: __ _ 
UNITED STATES INTERNATIONAL TRADE COMMISSION 

Washington, D.C. 

In the Matter of 

CERTAIN COMPUTER PRODUCTS, 

COMPUTER COMPONENTS AND 

PRODUCTS CONTAINING SAME 

Investigation No. 337-TA-628 

INITIAL DETERMINATION ON VIOLATION OF SECTION 337 AND 

RECOMMENDED DETERMINATION ON REMEDY AND BOND 

Administrative Law Judge Theodore R. Essex 

(March 16, 2009) 

Appearances: 

For the Complainant International Business Machines Corporation: 

V. James Adduci, II, Esq., Michael L. Doane, Esq., Patricia Larios, Esq., and Gregory F. Geary, 

Esq. of Adduci Mastriani & Schaumberg LLP of Washington, D.C. 20036 

Christopher A. Hughes, Esq., Tony V. Pezzano, Esq., James T. Bailey, Esq., John T. Moehringer, 

Esq., John Peter Halski, Esq., Evelyn G. Heilbrunn, Esq., Regina M. Lutz, Esq., Sonja Keenan, 

Esq., and Daniel 1. Melman, Esq. ofCadwalader, Wickersham & Taft LLP of New York, New 

York 10281 

For the Respondents ASUS, : 

Brian R. Nester, Esq., Jeffrey R. Whieldon, Esq., Michael 1. Mckeon, Esq., Andrew C. 

Wamecke, Esq., Robert Courtney, Esq., andRebecca L. Barbisch, Esq. of Fish & Richardson 

P.C. of Washington, D.C. 20005 

John P. Schnurer, Esq. and Ryan O'Connor, Esq. of Fish & Richardson P.C. of San Diego, 

Califomia 92130 

For the Commission Investigative Staff: 

. Lynn I. Levine, Esq., Director; Spence T. Chubb, Esq., Supervising Attomey; VU Q. Bui, Esq., 

Investigative Attomey of the Office of Unfair Import Investigations, U.S. Intemational1~rade 

Commission, of Washington, D.C. 
Pursuant to the Notice ofInvestigation, 73 Fed. Reg. 2275 (2008), this is the Initial 

Determination of the in the matter of Certain Computer Products, Computer Components and 

Products Containing Same, United States International Trade Commission Investigation No. 

337-TA-628. See 19 C.F.R. § 210.42(a). 

It is held that no violation of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 

§ 1337, has occurred in the importation into the United States, the sale for importation, or the 

sale within the United States after importation of certain computer products, computer 

components or products containing same by reason of infringement of one or more of claims 1 

and 2 of U.S. Patent 5,008,829; claim 1 of U.S. Patent No. 5,249,741; and claims 1,8,13,14,22, 

and 23 of U.S. Patent No. 5,371,852. 

ii 
TABLE OF CONTENTS 

I. BACKGROUND .............................................................................................................................. I 

A. Institution and Procedural History of This Investigation ......................................................... I 

B. The Parties ............................................................................................................................... 3 

1. International Business Machines Corporation ............................................................... 3 

2. ASUS ........................................................................................................................... :.3 

C. The Patents At Issue and Overview of the Technology ........................................................... 4 

1. The '852 Patent ........................ : ..................................................................................... 4 

2. The' 829 Patent .............................................................................................................. 6 

3. The '741 Patent .............................................................................................................. 7 

D. The Products At Issue .............................................................................................................. 8 

II. IMPORTATION OR SALE ............................................................................................................. 8 

Ill. JURISDICTION ............................................................................................................................... 9 

A. Personal and Subject Matter Jurisdiction ................................................................................ 9 

B. Standing ................................................................................................................................. 10 

N. CLAIM CONSTRUCTION ............................................................................................................ 15 

A. Applicable Law .................................................................................................... :: ................ 15 

B. The Level of Ordinary Skill in the Art .................................................................................. 20 

1. The' 852 Patent ............................................................................................................ 20 

2. The' 829 Patent ....... , .................................................................................................... 21 

3. The '741 Patent ............................................................................................................ 22 

C. The' 852 Patent. ..................................................................................................................... 23 

1. "Routing incoming messages across a boundary of a cluster of computer nodes" ...... 23 

2. "reading a software communication protocol number in a message header of the 

message to recognize an incoming message as a software communication protocol port type 

message." ............................................................................................................................... 27 

3. "gateway node within the cluster of computer nodes" ................................................. 30 

4. "matching both the software communication protocol port number and the software 

communication protocol number to an entry in a message switch memory, the matched 

software communication protocol port number entry being associated with a software 

communication protocol port specific function which selects a routing destination for the 

message from a plurality of possible destinations" ............................................................... 32 

D. The '829 Patent ...................................................................................................................... 39 

1. "microcompnter" .......................................................................................................... 3 9 

2. "electrically powered data processing and storage components for processing and 

storing digital data" ............................................................................................................... 44 

3. "pulse width modulation switching power supply for connection with an alternating 

current electrical main supply and for supplying direct current electrical power" ................ 48 

4. "a controllable component for responding to the presence and absence of a low voltage 

direct current electrical signal by enabling and disabling the supply of electrical power to 

said data processing and storage components" ...................................................................... 52 

5. "a signal generator circuit operatively connected with said controllable component and 

with an alternating current electrical main supply for controllably deriving from the main 

supply a low voltage direct current signal for delivery to said controllable component" ..... 58 

6. "whereby a user of the microcomputer may control energization of the electrically 

powered data processing and storage components by controlling the application of said low 

voltage direct current signal from said signal generator circuit to said controllable 

component" ............................................................................................................................ 64 

E. The '741 Patent ...................................................................................................................... 66 
1. "A method of cooling a computer having a plurality of components and at least one 

variable rate a fan cooling unit" ............................................................................................. 66 

2. "obtaining a predetermined cooling requirement" ....................................................... 67 

3. "components" ............................................................................................................... 77 

4. "varying the rate" ......................................................................................................... 78 

V. INFRlNGEMENTDETERMINATION ........................................................................................ 80 

A. Applicable Law ...................................................................................................................... 80 

B. The '852 Patent. ..................................................................................................................... 85 

1. Claim 1 and 8 ............................................................................................................... 85 

2. Claims 13, 14,22 and 23 .......... ,. ................................................................................... 92 

C. The '829 Patent. ..................................................................................................................... 93 

1. Claim 1 ......................................................................................................................... 93 

2. Claim 2 ....................................................................................................................... 103 

D. The '741 Patent .................................................................................................................... 103 

1. Claim 1 ....................................................................................................................... 103. 

VI. VALIDITy ............................................ , ...................................................................................... 115 

A. Background .......................................................................................................................... 115 

B. Anticipation ......................................................................................................... ; ................ 116 

1. The '852 Patent .......................................................................................................... 120 

2. The '829 Patent, ......................................................................................................... 124 

3. The '741 Patent .......................................................................................................... 139 

C. Obviousness ......................................................................................................................... 142 

1. .The '829 Patent .......................................................................................................... 147 

2. The '741 Patent .......................................................................................................... 150 

D. Written Description ............................................................................................................. 152 

E. Enablement .......................................................................................................................... 153 

VII. PATENT EXf:IAUSTION ............................................................................................................ 155 

VIII. LICENSING ................. : ............................................................................................................... 156 

A. Applicable Law ................................................... : ................................................................ 156 

B. GPL License .................................................................... : ................................................... 156 

IX. DOMESTIC INDUSTRy ............................................................................................................. 159 

X. CONCLUSIONS OF LAW .......................................................................................................... 165 

XI. INITIAL DETERMINA nON AND ORDER ............................................................................. 167 

iv 
The following abbreviations may be used in this Initial Determination: 

CDX Complainants' demonstrative exhibit 

CFF Complainants' proposed findings of fact 

CIB Complainants' initial post-hearing brief 

CORFF Complainants' objections to Respondents' proposed findings offact 

COSFF Complainants' objections to Staffs proposed findings offact 

CPX Complainants' physical exhibit 

CRB Complainants' reply post-hearing brief 

CX Complainants' exhibit 

Dep. Deposition 

JSUF Joint Statement of Undisputed Facts 

JX Joint Exhibit 

RDX Respondents' demonstrative exhibit 

RFF Respondents' proposed findings of fact 

RIB Respondents' initial post-hearing brief 

ROCFF Respondents' objections to Complainants' proposed findings of fact 

ROSFF Respondents' objections to Staffs proposed findings of fact 

RPX Respondents' physical exhibit 

RRB Respondents' reply post-hearing brief 

RRX Respondents' rebuttal exhibit 

RX Respondents' exhibit 

SFF Staff s proposed findings of fact 

SIB Staffs initial post-hearing brief 

SOCFF Staffs objections to Complainants' proposed findings offact 

SORFF Staffs objections to Respondents' proposed findings of fact 

SRB Staffs reply post-hearing brief 

Tr. Transcript 
I. BACKGROUND 

A. Institution and Procedural History of This Investigation 

By publication of a notice in the Federal Register on January 14,2008, pursuant to 

subsection (b) of section 337 of the Tariff Act of 1930, as amended, the Commission instituted 

Investigation No. 337-TA-628 with respect to U.S. Patent Nos. 5,008,829; 5,249,741; and 

5,371,852 to determine: 

[W]hether there is a violation of subsection (a)( 1 )(B) of section 

337 in the importation into the United States, the sale for 

importation, or the sale within the United States after importation 

of certain computer products, computer components and products 

containing same by reason of infringement of one or more of 

claims 1 and 2 of U.S. Patent No. 5,008,829; claim 1 of U.S. Patent 

No. 5,249,741; and claims 1,8,13,14,22, and 23 U.S. Patent No. 

5,371,852, and whether an industry in the United States exists as 

required by subsection (a)(2) of section 337. 

73 Fed. Reg. 2275 (2008). 

International Business Machines Corporation ("IBM"or "Complainant") of Armonk, 

New York, is the complainant. (Id.) The respondents named in the Notice of Investigation were: 

ASUSTeK Computer, Inc. of Taipei, Taiwan and ASUS Computer International ofFrerhont, 

California (collectively "ASUS"or "Respondents"). (Id.) The Commission Investigative Staff 

("Staff') of the Commission's Office of Unfair Import Investigations is also a party in this 

investigation. Id. 

On January 21,2008, IBM moved to amend the Complaint and Notice ofInvestigation to 

add respondents Pegatron Technology Corporation and Unihan Technology Corporation, which 

are wholly owned subsidiaries ASUSTeK and are original equipment manufacturers for it. ( JX10C at " 7A, 7B.) The ALJ granted the motion, which the Commission determined not to 

review. (See Order .No. 4 (Febmary 12, 2008); Notice of Commission Determination Not to 
Review an Initial Determination Granting Complainant's Motion to Amend the Complaint and 

Notice ofInvestigation (March 4, 2008).) 

On August 4, 2008, the ALl issued an initial determination extending the target date in 

this investigation to July 14, 2009. (See Order No. 12 (August 4, 2008).) The Commission 

determined not to review the order. (See Notice of Commission Determination Not to Review an 

Initial Determination Extending the Target Date for Completion of the Investigation (August 22, 

2008).) 

The evidentiary hearing on the question of violation of section 337 commenced on 

November 17,2008, and concluded on November 21,2008. IBM, ASUS, and Staff were 

represented at the h~aring. (Hearing Tr. 142:1-144:6.) 

During the evidentiary hearing, ASUS moved to strike portions of the testimony of 

IBM's expert, Dr. Francis, regarding the disputed claim term "software communication protocol 

port number" in the '852 Patent because it was not in his expert reports. (Tr. at 695:11-14.) The 

. ALJ withheld his ruling on the motion and requested further briefing from the parties. (Tr. at 

697:23-698:12.) Having considered the arguments of the parties at the hearing and in their briefs, 

the ALJ hereby DENIES the motion to strike. 

2 
B. The Parties 

1. International Business Machines Corporation 

IBM is aNew York corporation with its principal place of business located at New 

Orchard Road, Armonk, New York. (JX-8 (Amended Compl.), ~ 3.) IBM's business focuses 

on information technology with products designed and developed to record, process, 

communicate, store and/or retrieve information. (Id at ~ 4.) 

2. ASUS 

ASUSTeK is a Taiwanese corporation with its principal place of business in Peitou, 

Tapei, Taiwan. (JX-lOC (Supp. Resp. to Notice ofInvestigation and Amended Complaint), ~6.) 

ASUSTeK designs, develops, and sells computer products, including notebook computers, 

servers, barebones and routers; computer components including motherboards and graphic cards; 

and products containing such computer components. (Id., Confidential Ex. 1, ~2.) 

ASUS Computer International is a wholly owned subsidiary of ASUSTeK, with its 

principal place of business in Fremont, California, and sells and provides technical support for 

ASUSTeK's products. (JX-lOC at ~ 7.) 

Pegatron Technology Corporation is a wholly owned subsidiary of ASUSTeK with its 

principal place of business in Peitou, Taipei, Taiwan and is responsible for 

(JX-lOC at ~7A.) 

Unihan Technology Corporation is a wholly owned subsidiary of ASUSTeK with its 

principal place of business in Peitou, Taipei, Taiwan and is responsible for 

3 
1-;. 

_ (JX-lOC at ~7B.) 

C. The Patents At Issue and Overview of the Technology 

This investigation pertains to U.S. Patent Nos.5,371,852 ("the '852 Patent"), entitled 

"Method and Apparatus for Making a Cluster of Computers Appear as a Single Host on a 

Network"; U.S. Patent No. 5,008,829 ("the' 829 Patent"), entitled "Personal Computer Power 

Supply"; and U.S. Patent No. 5,249,741 ("the '741 Patent"), entitled "Automatic Fan Speed 

Control." 

1. The '852 Patent 

The '852 Patent was filed on October 14, 1992, and issued on December 6, 1994. (See 

JX-5 ('852 Patent)). 

The asserted claims of the '852 Patent in this investigation are claims 1,8, 13, 14,22 and 

23. The claims read as follows:. 

1. A method for routing incoming messages across a boundary of a cluster of 

computer nodes, the cluster connected to one or more networks, comprising the 

steps of: 

reading a software communication protocol number in a message header ofthe 

message to recognize an incoming message as a software communication protocol 

port type message, the message having a destination address of a gateway node 

within the cluster of computer nodes; 

locating and reading a software communication protocol port number in the 

message header of the software communication protocol port type message; 

matching both the software communication protocol port number and the software 

communication protocol number to an entry in a message switch memory, the 

matched software communication protocol port number entry being associated 

with a software communication protocol port specific function which selects a 

routing destination for the message from a plurality of possible destinations, the 

destination being a computer node in the cluster; and 

4 
routing the message to the computer node destination. 

8. A method for routing incoming messages across a boundary of a cluster of 

computer nodes, the cluster cOlmected to one or more networks, comprising the 

steps of: 

reading a software communication protocol number in an IP message header to 

recognize the incoming message as a software communication protocol port type 

message, the IP message header being on a message with a destination address of 

a gateway within the cluster of computer nodes; 

locating and reading a software communication protocol port number in the 

message header of the software communication protocol port type message; 

matching both the software communication protocol port number and the software 

communication protocol number to an entry in a message switch memory, the 

matched software communication protocol port number entry being associated 

with a port specific function which selects a routing destination for the message 

from a plurality of possible destinations, the destination being a computer node in 

the cluster; and 

routing the message to the computer node destination. 

13. A method of routing incoming messages across a boundary of a cluster of 

computers, as in claim 8, where the protocol number is a UDP identifier. 

14. A method of routing incoming messages across a boundary of a cluster of 

computers, as in claim 13, where the UDP protocol number is 17. 

22. A method of routing incoming messages across a boundary of a cluster of 

computers, as in claim 8, where the protocol number is a TCP identifier. 

23. A method of routing incoming messages across a boundary of a cluster of 

computers, as in claim 22, where the TCP protocol number is 6. 

(Id.) at 20:21-46; 21 :10-34,55-60; 22:24-29.). The '852 Patent names Mr. Clement R. Attanasio 

and Mr. Stephen E. Smith as the inventors. (Id.) 

The '852 Patent provides a method and apparatus for enabling a cluster of computers to 

appear as a single computer to host computers outside the cluster. (' 852 Patent at Abstract.) In 

the prior art, computer clusters did not appear as one entity to host computers outside the cluster 

5 
thereby requiring the host computers to individually communicate with each computer within the 

cluster. (Jd.) at 3:43-64.) In the present invention, the host computer only communicates with 

the gateway to access the cluster. (Id. at Abstract.) The gateway has a message switch, which 

processes messages crossing the gateway. (fd.) The message switch processes incoming and 

outgoing messages by changing information on the message header based on the operation of a 

specific routing function that is selected using port and protocol information in the messages. 

(fd.) 

2. The '829 Patent 

The '829 Patent was filed on June 14, 1990 and issued on April 16, 1991. (JX-3 

('829 Patent).) The asserted claims of the '829 Patent in this investigation are claims 1 

and 2. They read as follows: 

1. A microcomputer comprising: 

Electrically powered data processing and storage components for processing and 

storing digital data, and 

A pulse width modulation switching power supply for connection with an 

alternating current electrical main supply and for supplying direct current 

electrical power to said data processing and storage components for enabling 

operation thereof, said power supply comprising: 

A controllable component for responding to the presence and absence of a low 

voltage direct current electrical signal by enabling and disabling the supply of 

electrical power to said data processing and storage components, and 

A signal generator circuit operatively connected with said controllable component 

and with an alternating current electrical main supply for controllably deriving 

from the main supply a low voltage direct current signal for delivery to said 

controllable component, whereby a user of the microcomputer may control 

energization of the electrically powered data processing and storage components 

by controlling the application of said low voltage direct current signal from said 

signal generator circuit to said controllable component. 

2. A microcomputer according to claim 1 wherein said controllable component 

comprises a pulse width modulator control circuit. 

6 
(JX-3 ('829 Patent) at (col. 6, 1. 47 - col. 7, l. 8.) The '829 Patent names Roger L. Cox, Michael 

J. DeLoye and Robert L. Myers as the inventors. (Id.) 

The' 829 Patent relates to personal computer power supplies for supplying electrical 

power to electrically operated components that manipulate or store digital data. (Id. at Abstract.) 

The power supply of the '829 Patent has (1) a controllable component for responding to the 

presence and absence of a low voltage direct current electrical signal ("L VDC") by enabling and 

disabling the electrical power supply to data processing and storage components, and (2) a signal 

generator circuit operatively connected with the controllable component and with an alternating 

current (AC) electrical main supply for controllably deriving from that main supply Ii low 

voltage direct current signal for delivery to the controllable component. (Id.) The invention 

allows a user of the microcomputer to control energization of the electrically powered data 

processing and storage components by controlling the application of the low voltage direct 

current signal from the signal generator circuit to the controllable component. (Jd.) 

3. The '741 Patent 

The '741 Patent was filed on May 4, 1992 and issued on October 5, 1993. (JX-1 

('741 Patent).) The asserted claim of the '741 Patent in this investigation is claim 1. It 

reads as follows: 

1. A method of cooling a computer having a plurality of components and at least 

one variable rate a fan cooling unit comprising the steps of: 

a) obtaining a predetermined cooling requirement for at least one of said 

components; and 

b) varying the rate of at least one of said cooling units based on the obtained 

cooling requirements. 

7 
(Id. at 5:51-57.) The ~741 Patent names William R. Bistline, William C. Johnson and James M. 

Patterson as the inventors. (Id.) 

The' 741 Patent relates to a method of cooling a computer having a plurality of 

components and at least one variable rate cooling unit, e.g. a fan. (Jd at Abstract.) The '741 

Patent discloses a method that includes (1) obtaining a cooling requirement for at least one of the 

components and (2) varying the rate of at least one of the cooling units based on the obtained 

cooling requirements. (Id.) 

D. The Products At Issue 

The products at issue are (1) computer products, including notebook computers, servers, 

barebones, and routers; (2) computer components, including motherboards and graphic cards, 

and (3) products containing such computer components. (JX-8 (Amended Compl.) at ~~ 8-10; 

see also CDX-6.) 

II. IMPORTATION OR SALE 

The importation or sale requirement of section 337 has been satisfied. On September 18, 

2008, the parties filed a Stipulation of Material Facts Relating to the Importation Requirement of 

19 U.S.C. § 1337(a)(l)(B), wherein it was stipulated that ASUS "imported into the United States, 

sold for importation into the United States, and/or sold after importation into the United States 

computer products, including 

and that IBM satisfied the importation requirement. Staff did not 

oppose the stipulation and the ALJ accepted the stipulation at the hearing. (lX-15;. at 30: 13-14.) 

8 
III. JURISDICTION 

A. Personal and Subject Matter Jurisdiction 

In order to have the power to decide a case, a court or agency must have both subject 

matter jurisdiction and jurisdiction over either the parties or the property involved. See O;rtain 

Steel Rod Treating Apparatus and Components Thereof, Inv. No. 337-TA-97, Commission 

Memorandum Opinion, 215 U.S.P.Q. 229, 231 (1981). For the reasons discussed below, the AL] 

finds the Commission has jurisdiction over this investigation. 

Section 337 declares unlawful the importation, the sale for importation, or the sale after 

importation into the United States of articles that infringe a valid and enforceable United States 

patent by the owner, importer, or consignee of the articles, if an industry relating to the articles 

protected by the patent exists or is in the process of being established in the United States. See 

19 U.S.C. §§ 1337(a)(1)(B)(I) and (a)(2). Pursuant to Section 337, the Commission shall 

investigate alleged violations of the Section and hear and decide actions involving those alleged 

violations. 

As set forth supra in Section III, IBM and ASUS have stipulated that IBM has met the 

importation requirement and, as such, the AL] finds that the Commission has in rem jurisdiction. 

The parties do not dispute that the Commission has in personam and in rem jurisdiction. 

(CIB at 2; RIB 7-13; SIB at 8.) ASUS has fully participated in the investigation, including 

participating in discovery, participating in the hearing, and filing pre-hearing and post-hearing 

briefs. Accordingly, the AL] finds that ASUS has submitted to the jurisdiction of the 

Commission. See Certain Miniature Hacksaws, Inv. No. 337-TA-237, Pub. No. 1948, Initial 

Determination at 4, 1986 WL 379287 (U.S.LT.C., October 15, 1986) (unreviewed by 

Commission in relevant part). 

9 
B. Standing 

ASUS argues that IBM lacks standing to assert the patents at issue because IBM 

allegedly transferred the patents in suit to Lenovo as part of its personal computing business 

divestiture. (RIB at 7-8.) ASUS argues that IBM has failed to demonstrate that it owns the 

patents in suit and, instead, has withheld critical documents that would prove ownership. (RIB at 

9-10.) Specifically, ASUS argues that "Asset Purchase Agreement" and the "Patent Assignment 

Agreement" are insufficient to show IBM owns the patents in suit. ASUS argues that the "Seller 

. Disclosure Letter" is required to prove if the asserted patents are owned by Lenovo. (RIB at 9-

10.) ASUS further argues that 

and 

that, absent the production of the Seller Disclosure Letter, IBM cannot prove that it owns the 

patents in suit. (RIB at 11-12.) 

IBM argues that it owns the patents in suit as evidenced by its certified copies of the 

assignments of the '852, the '829 and the '741 Patents to IBM. (CRB at 1.) IBM further argues 

that the list attached to the Patent Assignment Agreement, Exhibit A, confirms that the patents in 

suit were never transferred to Lenovo and that, despite being aware of the current investigation, 

Lenovo has never asserted ownership of the patents. (CRB at 1.) 

Staff agrees that IBM owns the patents in suit and argues that the relevant divestiture 

documents as well as the testimony ofIBM's corporate representative, who was also a 

participant in the divestiture of the PC business, showed that IBM does, in fact, retain ownership 

of the patents in suit. (SIB at 8-10.) 

Standing to sue is a threshold requirement in every federal action. Sicom Systems, Ltd. v. 

Agilent Technologies, Inc., 427 FJd 971, 975-76 (Fed. Cir. 2005). The party bringing the action 

10 
bears the burden of establishing that it has standing. (Id.); see also Ortho Pharmaceutical Corp. v. 

Genetics Institute, Inc., 52 F.3d 1026, 1033 (Fed. Cir. 1995) (quoting Whitmore v. Arkansas, 495 

U.S. 149, 154 (1990)) ("It is well established ... that before a federal court can consider the 

merits of a legal claim, the person seeking to invoke the jurisdiction of the court must establish' 

the requisite standing to sue."). Thus, as complainant, IBM bears the burden of proof that it has 

standing to pursue its infringement action against ASUS in this investigation. While the burden 

of persuasion remains at all times with IBM, once IBM has satisfied its initial burden of 

production showing that it is the owner of the asserted patents, the burden of production shifts to 

ASUS to rebut such a showing. 

There is a presumption in patent law that an inventor owns his invention. Israel BioEngineering Project v. Amgen, Inc., 475 F .3d 1256, 1263 (Fed. Cir. .2007). Consistent with that 

presumption, the "[p]atent issuance creates a presumption that the named inventors are the true 

and only inventors." (Id.) (quoting Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1460 

(Fed. Cir. 1998)). The named inventors of the '852 Patent are Clement R. Attanasio and Stephen 

E. Smith, and as such, it is presumed that Attanasio and Smith are the true and only inventors of 

the '852 Patent. (See JX-5 (the '852 Patent), JX-6 (the '852 File History).) According to the 

record evidence, Attanasio and Smith assigned their entire "right, title and interest" in the' 852 

Patent to IBM. (JX-7 (Comp!.), Ex. 6.) This agreement is reflected in the fact that IBM is the 

named assignee on the face of the '852 Patent. (JX-5 (the '852 Patent). Because Attanasio and 

Smith are presumptively the true and only inventors ofthe '852 Patent, their agreement to assign 

their ownership rights in those patents to IBM makes IBM the presumptive owner of the '852 

Patent. See Bd. ofTrs. v. Roche Molecular Sys., 487 F. Supp. 2d 1099, 1111 n.4 (N.D. Cal. 2007) 

11 
("Title to the patent therefore presumptively rests with ... the named assignee, and Roche is 

tasked with overcoming this presumption to defeat Stanford's standing."). 

Similarly, the named inventors of the '829 Patent are Roger L. Cox, Michael J. DeLoye 

and Robert L. Myers, arid, as such, it is presumed that Messrs. Cox, DeLoye and Myers are the 

true and only inventors of the '829 Patent. (See JX-3 (the '829 Patent), JX-4 (the' 829 File 

History). According to the record evidence, Messrs. Cox, DeLoye and Myers assigned their 

entire "right, title and interest" in the' 829 Patent to IBM. (JX-7 (Compl.), Ex. 2.) This 

agreement isreflected in the fact that IBM is the named assignee on the face of the '829 Patent. 

(JX-3 (the '829 Patent).) Because Messrs. Cox, DeLoye and Myers are presumptively the true 

and only inventors ofthe '829 Patent, their agreement to assign their ownership rights in those 

patents to IBM makes IBM the presumptive owner of the' 829 Patent. 

The named inventors of the '741 Patent are William R. Bistline, William C. Johnson and 

James M. Patterson, and as such, it is presumed that Messrs. Bistline, Johnson and Patterson are 

the true and only inventors of the '741 Patent. (See JX-1 (the '741 Patent), JX-2 (the '741 File 

History).) According to the record evidence, Messrs. Bistline, Johnson and Patterson assigned 

their entire "right, title and interest" in the '741 Patent to IBM. (JX-7 (Compl.), Ex. 4.) This 

agreement is reflected in the fact that IBM is the named assignee on the face of the '741 Patent. 

(JX-1 (the '741 Patent).) Because Messrs. Bistline, Johnson and Patterson are presumptively the 

true and only inventors of the '741 Patent, their agreement to assign their ownership rights in 

those patents to IBM makes IBM the presumptive owner of the '741 Patent. 

Here, ASUS ,argues that it is IBM's·burden to prove that its still owns the patents in suit. 

As set forth above, IBM has proven its burden of ownership. ASUS, however, has failed to meet 

its burden of rebutting the presumption that IBM owns the patents in suit. The evidence shows 

12 
that the patents at issue are assigned to IBM and is sufficient to establish ownership. (JX-l (the 

'741 Patent), JX-3 (the '829 Patent), JX-5 (the '852 Patent); JX-7 (Compl.), Exs. 2,4,6.) The 

divestiture of IBM's personal computer business to Lenovo 

(CX-2050C at Q21-

37; CX-211OC; CX-2111C; CX-2113C; CX-2114C.) The evidence shows that none of the 

patents in suit 

_ and, therefore, none ofthe patents in suit have been assigned to Lenovo. (CX-2050C 

at Q35-37; CX-211OC-CX2114C). 

ASUS has presented no evidence that would rebut the presumption that IBM owns the 

patents in suit. Instead, ASUS argues that (1) since the patents in suit may be included under the 

definition of certain terms in the Asset Purchase Agreement, i. e. "Business" and "Products" and 

(2) since those terms are defined in a "Seller Disclosure Agreement" that IBM has not produced, 

then there is no way to prove that the patents in suit were not transferred to Lenovo. (See RIB at 

9-10.) ASUS further asserts that IBM is bounded by the definitions in the Patent Assignment 

Agreement and 

(RIB at 10-11.) In other words, ASUS appears to make the 

argument that since these specific patents 

then IBM must prove somehow that the patents in suit have not been assigned 

to Lenovo and fall outside the specifically defined terms of the Asset Purchase Agreement and 

Patent License Agreement. ASUS further argues that since 

then such lists cannot be relied upon. (RIB at 11.) The ALJ finds 

13 
ASUS's arguments unpersuasive and further finds that they fail to rebut IBM presumption of 

ownership. ASUS's argument essentially renders Exhibit A and the Letter Agreement 

superfluous since, according to ASUS, these lists mean nothing since IBM must prove whether 

any PC related patent, including the patents in suit, fall under or fall outside the scope of certain 

terms of the Patent Assignment Agreement or Asset Purchase Agreement regardless of whether 

they are listed as Exhibit A or the Letter Agreement. 

The ALl finds that the evidence is clear. IBM and Lenovo have 

which do not include the patents in suit. (CX-2050C 

at Q35-37; CX-2IlOC and CX2IlIC.) Furthermore, should either IBM or Lenovo seek. 

(Huston, 

11117118 Tr. 168:7-12; CX-2113C; Cx-2114 at 2.1.1.) The fact that 

is further evidence that had the patents 

in suit been assigned to Lenovo or had the parties intended to assign the patents in suit to Lenovo, 

the parties could have easily clarified that issue. Moreover, Lenovo was aware of this 

investigation through a subpoena and, despite knowing of this investigation, Lenovo has not 

challenged IBM's ownership of the patents in any manner. (Huston,11117/08 Tr., 213:18-214:3) 

This is further reflection of the parties' intent, namely that the patents in suit were not part of the 

divestiture. 

Therefore, the ALl finds that IBM owns the patents in suit and has standing to bring this 

suit. The ALl further finds that ASUS has failed to overcome the presumption that IBM owns 

the patents in suit or raise a colorable question. 

14 
IV. CLAIM CONSTRUCTION 

A. Applicable Law 

Pursuant to the Commission's Notice ofInvestigation, this investigation is a patent-based 

investigation. See 73 Fed. Reg. 2275 (2008). Accordingly, all of the unfair acts alleged by IBM 

to have occurred are instances of alleged infringement of the '852, '829 and '741 Patents. A 

finding of infringement or non-infringement requires a two-step analytical approach. First, the 

asserted patent claims must be construed as a matter of law to determine their proper scope. I 

Claim interpretation is a question oflaw. Markman v. Westview Instruments, Inc., 52 F.3d 967, 

.. 

979 (Fed. Cir. 1995) (en banc), ajJd, 517 U.S. 370 (1996); Cybor Corp. v. FAS Techs., Inc., 138 

F.3d 1448,'1455 (Fed. Cir. 1998). Second, a factual determination must be made as to whether 

the properly construed claims read on the accused devices. (Id. at 976). 

In construing claims, the ALI should first look to intrinsic evidence, which consists of the. 

language of the claims, the patent's specification, and the prosecution history, as such evidence 

"is the most significant source of the legally operative meaning of disputed claim language." 

Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996); see also Bell Atl. 

Network Servs., Inc. v. Covad Comm 'no Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). The 

words of the claims "define the scope of the patented invention." Id. And, the claims 

themselves "provide substantial guidance as to the meaning of particular claim terms." Phillips V. 

AWH C01p., 415 F.3d 1303, 1314 (Fed. Cir. 2005), cert. denied, 546 U.S. 1170 (2006). It is 

essential to consider a claim as a whole when construing each term, because the context in which 

a term is used in a claim "can be highly instructive." Id. Claim terms are presumed to be used 

consistently throughout the patent, such that the usage of the term in one claim can often 

1 Only claim terms in controversy need to be construed, and 'only to the extent necessary to resolve the controversy. 

Vanderlande Indus. Nederland BV v. Int 'f Trade Comm., 366 F.3d 1311, 1323 (Fed. Cir. 2004); Vivid Tech., Inc. v. 

American Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). 

15 
illuminate the meaning of the same term in other claims. Research Plastics, Inc. v. Federal Pkg. 

Corp., 421 F.3d 1290, 1295 (Fed. Cir. 2005). In addition: 

... in clarifying the meaning of claim terms, courts are free to use words that do 

not appear in the claim so long as the resulting claim interpretation ... accord[ s] 

with the words chosen by the patentee to stake out the boundary of the claimed 

property. 

Pause Tech., Inc. v. TIVa, Inc., 419 F.3d 1326, 1333 (Fed. Cir. 2005). 

Some claim terms do not have particular meaning in a field of art, in which case claim 

construction involves little more than applying the widely accepted meaning of commonly 

understood words. Phillips, 415 F.3d at 1314. Under such circumstances, a general purpose 

dictionary may be ofuse.2 The presumption of ordinary meaning, however, will be "rebutted if 

the inventor has disavowed or disclaimed scope of coverage, by using words or expressions of 

manifest exclusion or restriction, representing a clear disavowal of claim scope." ACTV, Inc. v. 

Walt Disney Co., 346 F.3d 1082, 1091 (Fed. Cir. 2003). 

Sometimes a claim term will have a specialized meaning in a field of art, in which case it 

is necessary to determine what a person of ordinary skill in that field of art would understand the 

disputed claim language to mean, viewing the claim terms in the context of the entire patent. 

Phillips, 415 F.3d at 1312-14; Vitronics, 90 F.3d at 1582. Under such circumstances, the ALJ 

must conduct an analysis of the words of the claims themselves, the patent specification, the 

prosecution history, and extrinsic evidence concerning relevant scientific principles, as well as 

the meaning of technical terms and the state of the art.· Id. 

A patentee may deviate from the conventional meaning of claim term by making his or 

her intended meaning clear (1) in the specification and/or (2) during the patent's prosecution 

2 Use of a dictionary, however, may extend patent protection beyond that to which a patent should properly be 

afforded. There is also no guarantee that a term is used the same way in a treatise as it would be by a patentee. Id. 

at 1322. 

16 
history. LearSiegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). Ifa claim 

term is defined contrary to the meaning given to it by those of ordinary skill in the art, the 

specification must communicate a deliberate and clear preference for the alternate definition. 

Kumar v. Ovonic Battery Co., 351 F.3d 1364, 1368 (Fed. Cir. 2003). In other words, the 

intrinsic evidence must "clearly set forth" or "clearly redefine" a claim term so as to put one 

reasonably skilled in the art on notice that the patentee intended to so redefine the claim term. 

Bell Atl., 262 F.3d at 1268 . 

. When the meaning of a claim term is uncertain, the specification is usually the first and 

best place to look, aside from the claim itself, in order to find that meaning. Phillips~ 415 F.3d at 

1315. The specification of a patent "acts as a dictionary" both "when it expressly defines terms 

used in the claims" and "when it defines terms by implication." Vitronics, 90 F.3d at 1582. For 

example, the specification "may define claim terms by implication such that the meaning may be 

found in or ascertained by a reading of the patent documents." Phillips, 415 F.3d at 1323. "The 

construction that stays true to the claim language and most naturally aligns with the patent's 

description of the invention will be, in the end, the correct construction." Id. at 1316. However, 

as a general rule, particular examples or embodiments discussed in the specification are not to be 

read into the claims as limitations. Markman, 52 F.3d at 979. 

The prosecution history "provides evidence of how the inventor and the PTO understood 

the patent." Phillips, 415 F.3d at 1317. For example, the prosecution history may inform the 

meaning of the claim language by demonstrating how an inventor understood the invention and 

whether the inventor limited the invention in the course of prosecution, making the claim scope 

narrower than it otherwise would be. Vitronics, 90 F.3d at 1582-83; see also Chimie v. PPC 

Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005) (stating, "The purpose of consulting the 

17 
prosecution history in construing a claim is to exclude any interpretation that was disclaimed 

during prosecution."); Microsoft Corp. v. Multi-tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 

2004) (stating, "We have held that a statement made by the patentee during prosecution history 

of a patent in the same family as the patent-in-suit can operate as a disclaimer."). The 

prosecution history includes the prior art cited, Phillips, 415 F.3d at 1317, as well as any 

reexamination of the patent. lntermatic Inc. v. Lamson & Sessions Co., 273 F.3d 1355, 1367 

(Fed. Cir. 2001). 

Differences between claims may be helpful in understanding the meaning of claim terms. 

, 

Phillips, 415 F.3d at 1314. A claim construction that gives meaning to all the terms of a claim is 

preferred over one that does not do so. Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 

1372 (Fed. Cir.), cert. denied, 546 U.S. 972 (2005); Alza Corp. v. Myian Labs. Inc., 391 F.3d 

1365, 1370 (Fed. Cir. 2004). In addition, the presence ofa specific limitation in a dependent 

claim raises a presumption that the limitation is not present in the independent claim. Phillips, 

415 F .3d at 1315. This presumption of claim differentiation is especially strong when the Qnly 

difference between the independent and dependent claim is the limitation in dispute. SunRace 

Roots Enter. Co., v. SRAM Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003). "[C]laim differentiation 

takes on relevance in the context of a claim construction that would render additional, or 

different, language in another independent clai.m superfluous." AllVoice Computing PLC v. 

Nuance Comm'ns, Inc., 504 F.3d 1236, 1247 (Fed. Cir. 2007). 

The preamble of a claim may also be significant in interpreting that claim. The preamble 

is generally not construed to be a limitation on a claim. Bell Comm 'ns Research, Inc. v. Vitalink 

Comm 'ns Corp., 55 F.3d 615,620 (Fed. Cir. 1995). However, the Federal Circuit has stated that: 

[A] claim preamble has the import that the claim as a whole suggests for it. In 

other words, when the claim drafter chooses to use both the preamble and the 

18 
body to define the subject matter of the claimed invention, the invention so 

defined, and not some other, is the one the patent protects. 

Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). If said preamble, 

when read in the context of an entire claim, recites limitations of the claim, or if the claim 

preamble is "necessary to give life, meaning, and vitality" to the claim, then the claim preamble 

should be construed as ifin the balance of the claim. Kropa v. Robie, 187 F.2d 150, 152 (CCPA 

1951); see also Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997); Corning Glass Works v. 

Sumitomo Elec. US.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989). In addition: 

[W]hen discussing the "claim" in such a circumstance, there is no meaningful 

distinction to be drawn between the claim preamble and the rest of the claim, for 

only together do they comprise the "claim." If, however, the body ofthe claim 

fully and intrinsically sets forth the complete invention, including all of its 

limitations, and the preamble offers no distinct definition of any of the claimed 

invention's limitations, but rather merely states the purpose or intended use of the 

invention, then the preamble may have no significance to claim construction 

because it cannot be said to constitute or explain a claim limitation. 

Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). 

In Pitney Bowes, the claim preamble stated that the patent claimed a method of, or 

apparatus for, "producing on a photoreceptor an image of generated shapes made up of spots." 

Id. at 1306. The Federal Circuit found that this was not merely a statement describing the 

invention's intended field of use, but rather that said statement was intimately meshed with the 

ensuing language in the claim. Id. For example, both ofthe patent's independent claims 

concluded with the clause, "whereby the appearance of smoothed edges are given to the 

generated shapes." Id. Because this was the first appearance in the claim body of the term 

"generated shapes," the Court found that it could only be understood in the context of the 

preamble statement "producing on a photoreceptor an image of generated shapes made up of 

19 
spots." Id. )'he Court concluded that it was essential that the preamble and the remainder of the 

claim be construed as one unified and internally consistent recitation of the claimed invention. 

Id. 

Finally, when the intrinsic evidence does not establish the meaning of a claim, the ALl 

may consider extrinsic evidence, i.e., all evidence external to the patent and the prosecution 

history, including inventor testimony, expert testimony and learned treatises. Phillips, 415 F.3d 

at 1317. Extrinsic evidence may be helpful in explaining scientific principles, the meaning of 

technical terms, and terms of art. Vitronics, 90 F.3d at 1583; Markman, 52 F.3d at 980. 

However, the Federal Circuit has generally viewed extrinsic evidence as less reliable than the 

patent itself and its prosecution history in determining how to define claim terms. Phillips, 415 

F .3d at 1318. With respect to expert witnesses, any testimony that is clearly at odds with the 

claim construction mandated by the claims themselves, the patent specification, and the 

prosecution history should be discounted. Id. at 1318. 

If the meaning of a claim term remains ambiguous after a review of the intrinsk. and 

extrinsic evidence, then the patent claims should be construed so as to maintain their validity. Id. 

at 1327. However, if the only reasOl).able interpretation renders a claim invalid, then the claim 

should be found invalid. See Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed. Cir. 1999). 

B. The Level of Ordinary Skill in the Art 

1. The '852 Patent 

IBM argues that the level of ordinary skill in the art during the relevant time period for 

the' 852 Patent would be a person who had at least five years of education in the computer 

science or networking fields and lor experience in the networking industry. (CX-2052C (Francis 

Direct) at Q39.) ASUS argues that the level of ordinary skill in the art would be one who would 

20 
have at least a Bachelor's degree in Electrical Engineering or the equivalent education and from 

four to six years experience in the design of computer systems, or the equivalent work 

experience, education, or knowledge of computer system design. (RRX-58C (Oliver Rebuttal) at 

Q 8-9.) Staff notes that the parties generally agree on the level of one of ordinary skill in the art 

and that the differences are not enough to affect any parties' opinions or analysis. (SIB at 52.) 

The AL] finds that one of ordinary skill in the art would have at least a Bachelor's degree 

in electrical engineering or the equivalent education and from four to six years experience in the 

design of computer systems, or the equivalent work experience, education, or knowledge of 

computer system design. 

2. The '829 Patent 

IBM argues that one of ordinary skill in the art would have a Bachelor's degree in 

electrical engineering and two years of relevant experience. (CX-2053C (Phinney Direct) at 

Q43.) ASUS argues that a person of ordinary skill in the art would have at least an advanced 

degree, e.g. a Master's degree, in science or engineering, such as electrical and electronic 

engineering, physics, or computer engineering, and one or more years of experience in 

electrical/electronic design or integrated circuit design, or a Bachelor's degree in science or 

engineering, such as electrical and electronic engineering, physics, or computer engineering, and 

three or more years of experience in electrical/electronic design or integrated circuit design. 

(RX-25C (Madisetti Direct) at Q 37.) Staff notes that, despite the parties' differences, the 

parties generally agree on the level of one of ordinary skill in the art and that the differences are 

not enough to affect any parties' opinions or analysis. (SIB at 17-18.) 

The AL] finds that one of ordinary skill in the art for the' 829 Patent would have at least 

a Bachelor's degree in science or engineering, such as electrical, electronic, or computer 

21 
engineering, and two to three years or more of relevant experience, or would have an advanced 

degree, e.g., a Master's degree in science or engineering, such as electrical, electronic, or 

computer engineering, and one or more years of relevant experience. 

3. The '741 Patent 

IBM argues that one of ordinary skill in the art would have at least a B.S. in computer 

science or electrical engineering and two years of experience in computer engineering. (CX~ 

2051C (Polish Direct) at Q 38-40.) ASUS argues that one of ordinary skill in the art would have 

at least a bachelor's degree in electrical or computer engineering and two years of experience in 

computer system design. (RX~26C (Stevenson Direct) at Q506.) Staff notes that the parties 

generally agree on the level of one of ordinary skill in the art and that the differences are not 

enough to affect any parties' opinions or analysis. (SIB at 32.) 

The ALJ finds that level of ordinary skill in the art IBM and ASUS offer different 

opinions with respect to the level of ordinary skill in the art for the '741 Patent. See CX~2054C 

(Polish Wit. Stat.) at ~~ 38~40; RX~26 (Stevenson Wit. Stat.) at ~~ 5~6.) IBM's expert, Dr. Polish, 

testified that a person of ordinary skill in the would have at least a B.S. in Computer Science or 

Electrical Engineering and two years of experience in Computer Engineering. (CX~2054C 

(Polish Wit. Stat.) at ~~ 38-40.) ASUS's expert, Dr. Stevenson, testified that a person of 

ordinary skill in the art would have at least a bachelor's degree in Electrical or Computer 

Engineering and two years of experience in computer system design. (RX~26 (Stevenson Wit. 

Stat.) at ~~ 5~6.) The levels of ordinary skill in the art for the '741 patent proposed by IBM and 

ASUS are markedly similar. Having considered both parties proposals, the ALJ finds that for the 

'741 Patent a person of ordinary skill in the art would have at least a B.S. in Computer Science 

22 
or Electrical Engineering and at least two years of experience in computer engineering or 

computer system design. 

C. The '852 Patent 

1. "Routing incoming messages across a boundary of a cluster of computer 

nodes" 

IBM argues that "routing incoming messages across a boundary of a cluster of computer 

nodes" means "routing incoming messages from remote hosts on one or more external networks, 

such as the Internet, across the connection point between the external network and a gateway 

node to one or more computer nodes connected together by an interconnect." (eIB ai 51.) IBM 

further defined "cluster of computer nodes" to mean "two or more computer nodes connected 

together by a communication link, called an interconnect, and including a gateway node 

connected to receive incoming messages from an external network." (eIB at 51.) IBM asserts 

that the' 852 patent is directed at a novel method for making a cluster of any general purpose 

computer (or the like) appear as a single host computer as a network and is not limited to the 

field where computers must share resources and function as a single unit to increase computer 

power. (eIB at 52.) 

ASUS asserts that "routing incoming messages across a boundary of a cluster of 

computer nodes" means "routing messages that originate from outside the cluster across a 

boundary of a plurality of clustered computers (i.e., a single computer image, clustered 

computing)." (RIB at 88.) ASUS further argues that "cluster" is more than just a network of 

computers and requires "functionality that allows the cluster to share work or processes, 

increasing computer power," which is its plain and ordinary meaning. (RIB at 88-89.) ASUS 

argues that the objective of the '852 Patent is to increase computer power by allowing the 

23 
computer nodes to share common resources and cooperate in doing work. (RIB at 89-90.) Staff 

agrees. (SIB at 54-57.) 

The ALJ finds that "routing incoming messages across a boundary of a cluster of 

computer nodes" means "routing messages that originate from outside the cluster across a 

boundary of a plurality of clustered computers (i. e., a single' computer image, clustered 

computing), wherein the cluster of computer nodes share common resources and cooperate in 

doing work." IBM's proposed construction essentially describes the "cluster of computers" as 

simply multiple computers on a network and eliminates any cluster functionality. The claim 

language and specification, however, all support the requirement that the "cluster of computer 

nodes" be given its plain and ordinary meaning, namely functionality that allows the cluster to 

share work or processes, increasing computer power. (See RRX-038; RRX-039.) 

Claims 1 and 8 distinguish between a "cluster of computer nodes" and "networks." 

Specifically, both claims describe "[a] method for. routing incoming messages across a boundary 

of a cluster of computer nodes, the cluster connected to one or more networks," thereby . 

distinguishing a "network" from a "cluster of computer nodes." (JX-5 ('852 Patent), 20:21-23; 

21:10-12); see CAE Screenplates Inc. v. Heinrich Fielder GmbH & Co., 224 F.3d 1308,1317 

(Fed. Cir. 2000) ("In the absence of any evidence to the contrary, we must presume that the use 

of these different terms in the claims connotes different meanings.")' In addition, unasserted 

claim 35 further distinguishes a "network" from a "cluster of computers" as it describes "[a]n 

apparatus for routing messages across a boundary of a cluster of computers on a network." (JX5 ('852 Patent) at 23: 13-14.)(emphasis added). 

The specification also supports this construction. The specification describes a cluster as: 

clusters 100 comprise two or more computers (also called nodes or computer 

nodes 105 through 109) connected together by a communication means 110 in 

24 
order to exchange information. Nodes (105 through 109) may share common 

resources and cooperate in doing work. 

(JX-5 ('852 Patent) at 1 :45-50.) Similarly, in describing how the current invention is an 

improvement over the prior art, the specification describes cluster functionality, rather than just a 

simple network of computers: 

Accordingly, there has been a long felt need for a cluster of computers which 

presents a single computer image, i.e., looks like a single computer, to computers 

external to the cluster (gateway) boundary. A single computer image cluster 

would have the capability of adding or deleting computers within the cluster; 

changing and/or moving processes, operating systems, and data among 

computers within the cluster; changing the configuration of cluster resources; 

redistributing tasks among the computer within the cluster; and redirecting 

communications from a failed cluster node to an operating node, without having 

to modifY or notifY any computer outside the cluster. Further, computers outside 

the cluster would be able to access information or run processes within the cluster 

without changing the environment where they are operating. 

(Id. at 4:8-24) (emphasis added). Furthermore, the patentees stated that the objectives of the 

invention included not only "routing messages across the boundary of a cluster of computers to 

make the cluster of computers on a netw:ork appear as a single computer image to host computers 

on the network outside the cluster," but also to provide a cluster of computers ~at can route 

messages such that "work requests from outside the cluster can be evenly distributed among the 

computer nodes in the cluster." (Id. at 4:43-46; 66-68.) 

The extrinsic evidence also supports such a construction. In its Amended Complaint, 

IBM stated that the' 852 Patent disclosed an improved method for efficient networking of 

computers "because workloads can be shared evenly through the cluster and computers outside 

the cluster need not be informed of hardware or software changes within the cluster." (JX-8 

(Amended Complaint) at ~ 33) (emphasis added). Similarly, Mr. Clement Attanasio, a named 

inventor on the' 852 Patent, testified that a cluster provided "increased computer power": 

25 
Q. Now, I want to review some of the concepts, some of the terminology. 

A cluster is a loosely coupled system, true? 

A. Yes, if we understand what loosely coupled means. 

Q. Okay. Well, a loosely coupled system allows for increased 

computing power; is that right? 

A. Yes, that's true. 

Q. In a cluster, multiple computers appear as one computer, true? 

A. Externally to the cluster, yes. 

Q. And the cluster has a computing capacity for all its nodes, right? 

A. It can, yeah. 

Q. If I have a cluster with four nodes, that cluster to the rest of the world 

appears as one computer with the computer power of four computers? 

A. In the best case, yeah. Actually, it could be --1 suppose it could be 

more than that, depending. 

Q. All right. But that's a sort of typical case? 

A. That's a reasonable interpretation, right. 

(Attanasio, Tr. 547:13-548:13) (emphasis added). Mr. Attanasio further testified that an 

objective of the invention was to evenly balance the work load among the different nodes and, 

further, that IBM's Network Dispatcher, a commercial embodiment of the invention, did just that. 

(Attanasio, Tr., 548:14-549:7; 552:7-13.) 

The ALl finds that IBM's proposed construction is incomplete. While it describes all of 

the physical components of the computer cluster, it fails to take into account that the invention is 

also directed at cluster functionality. IBM argues that such a construction improperly reads 

extraneous claim limitations into the claims and that there is no requirement that the cluster 

"must share work or processes" only that the cluster "may" share work or processes. (eRB at 

26 
26-30.) IBM further argues that "[t]he principle objective of the patent is to make a cluster of 

computers appear as a single computer by providing a single address for the cluster (the address 

ofthe gateway)." (CRB at 27.) However, as set forth above, the specification clearly indicates 

that an objective of the invention goes beyond simply "mak[ing] a cluster of computers appear as 

a single computer by providing a single address for the cluster" but also includes "the capability 

of adding or deleting computers within the cluster; changing andlor moving processes, operating 

systems, and data among computers within the cluster; changing the configuration of cluster 

resources; redistributing tasks among the computer within the cluster; and redirecting 

communications from a failed cluster node to an operating node, without having to modify or 

notify any computer outside the cluster." (JX-5 (' 852 Patent) at 4: 13-21; see also "Objectives" 

in the '852 Patent ("A further objective of this invention is an improved method and apparatus 

for routing messages across the boundary of a cluster of computers so that work requests from 

outside the cluster can be evenly distributed among the computer nodes in the cluster.").) Thus, 

in addition to the physical components of a cluster, the invention is clearly directed at the 

cluster's ability to evenly distribute work load and "share work or processes." 

Therefore, the ALJ finds that "routing incoming messages across a boundary of a cluster 

of computer nodes" means "routing messages that originate from outside the cluster across a 

boundary of a plurality of clustered computers (i. e., a single computer image, clustered 

computing), wherein the cluster of computer nodes share common resources and cooperate in 

doing work." 

2. "reading a software communication protocol number in a message 

header of the message to recognize an incoming message as a software 

communication protocol port type message." 

27 
ASUS argues that this claim term should be construed to clarifY that "to 'recognize' a 

message as a 'software communication protocol port type message' means distinguishing 

messages that are 'port type messages' from those that are not." (RIB at 99) (emphasis in 

original). ASUS argues that the clarification is necessary because IBM's expert failed to apply 

this limitation to his infringement analysis, which, according to ASUS, implies that IBM 

considered this "recognize" step as meaningless. (RIB at 99.) Staff agrees with ASUS arguing 

that the "recognize" step in the limitation is distinct from the "read" step and that the step is 

performed to recognize whether the incoming message is a "software communication protocol 

port type message" or not. (SIB at 57-58.) 

IBM argues that there is no real dispute as to the meaning of the claim and that its 

construction "plainly requires reading the number of value of the protocol [] to recognize an 

incoming message as a protocol port type message." (RRB at 30.) 

The ALI finds that since IBM concedes that there is no real dispute as to the meaning of 

the claim, ASUS proposed definition is acceptable., Therefore, the ALI finds that this claim 

limitation requires the discrete step of recognizing the incoming message as a software 

communication protocol port type message or as a non-software communication protocol port 

type message. The specification supports such a construction as it describes two separate and 

discrete steps, namely reading the protocol field and then recognizing the protocol as a port type 

message: 

Box 520 begins analysis of the MM header by reading the protocol field in the 

MM header. In a given MM protocol, the protocol field is positioned in a predetermined place in the header. For instance, the preferred embodiment uses IP 

which has its protocol field 347 starting at bit position 8 in the third 32 bit word of 

the header. (See FIG. 3C). The value of the protocol field in the MM header is 

designated as PROTO in FIG. 5. 

28 
In decision block 525 PROTO, the value ofthe protocol field in the MM header is 

compared to a list of known protocol values residing in a table or list in the 

gateway. If PROTO matches entries in the table which are port type protocols the 

process continues. If PROTO does not match entries which are port type protocols, 

the MM message is processed as it otherwise would be. (Note that a port type 

message uses protocols which require ports on both the source and destination 

computers in order to establish communications.) 

FIG.5A 

SEE FlGURE 6 

PROCESS MESSAGE 

IN GATEWAY IN .. NORMAL" MANNER 

('852 Patent 12:25-34; Fig 5A). 

WAIT FOR MM MESSAGE 

505 TOP 

READ DESTINAnON ADDRESS (DAD DR) 

IN MM HEADER 510 

READ PROTOCOL 'TYPE (PROTO) 

520 

NO 

LOCATE AND READ mE DESTINATION PORT 

(DPORT) IN PP HEADER ·530 

SEARCH MESSAGE SWITCH TABLE FOR 

ENTRY MATCHING DPORT,PROTO PAIR 

535 

Therefore, the ALJ finds that "reading a software communication protocol number in a 

message header of the message to recognize an incoming message as a software communication 

protocol port type message" requires the discrete step of recognizing the incoming message as a 

software communication protocol port type message or as a non-software communication 

protocol port type message. 

29 
3. "gateway node within the cluster of computer nodes" 

IBM argues that the "gateway node within the cluster of computer nodes" means "the 

computer node that is one of the two or more computer nodes connected together by an 

interconnect and that connects to one or more external networks, such as the Internet, at a 

boundary and receives incoming messages from remote hosts on the external network arriving at 

the cluster." (eIB at 55.) IBM argues that ASUS's proposed construction is incorrect because as 

it is based on ASUS's erroneous construction of "cluster," it reads extraneous limitations into the 

claim, namely that a computer must serve as a gateway and that the gateway must participate in 

the shared tasks according to ASUS's incorrect construction of computer. (eIB at 55-56.) 

ASUS asserts that the claim term means "a computer (not just a device) that serves as the 

gateway that is within the cluster of (one of the) computer nodes." (RIB at 1 00.) ASUS further 

argues that the gateway participates in work and/or process sharing of the cluster. (RRB at 59-

60.) Staff agrees. (SIB at 58-60.) 

Based on the ALl's construction of "cluster of computer nodes" supra, the ALJ finds that 

"gateway node within a cluster of computer nodes" means "a computer (not just a device) that 

serves as the gateway that is within the cluster of (oneofthe) computer nodes." The ALJ further 

finds that the gateway participates in work or process sharing of the cluster. 

The specification supports such a construction. The specification specifically and 

repeatedly states that the gateway is a computer node in the cluster: 

One of the computers in the cluster, serving as a gateway, is connected to one or 

more external computers and/or clusters (hosts) through another communication 

link called a network. A gateway can be connected to more than one network and 

more than one node in the cluster can be a gateway. 

The cluster comprises a plurality of computer nodes (105 through 109) one of 

which is a gateway 109. 

30 
(JX-5 ('852 Patent) at 5:16-21; 6:19-23.) Since the gateway node is "within the cluster" and is 

"one of the computers in the cluster, serving as a gateway," then it must necessarily participate in 

the work or process sharing of the cluster and cannot be simply a "device." (ld) at 7:38-40 

("One or more of the nodes in the cluster connects to one or more networks 120 and performs as 

a gateway 109."); 18:58-59 ("On each node of the cluster, including the gateway, the normal 

rlogin daemon is started. "); 20:29-30 ("the message having a destination address of a gateway 

node within the cluster of computer nodes"); see also supra Section C.l (discussing "cluster of 

computer nodes").) The specification also supports the ALI's construction that gateway node 

must also act or serve as an actual gateway: 

The gateway is connected with a bidirectional communication link 127 to a 

network 120. A boundary 125 is defined at the connection point between the 

network 120 and the gateway 109. Computers, called hosts 130, connect to the 

network 120 and can communicate with nodes within the cluster by passing 

messages through the gateway 109. An incoming message 210 is shown as being 

sent from a host 130, passing through the cluster boundary 125, a gateway port 

230, a gateway message switch 240, a gateway routing function 250, the 

interconnect 110, and ultimately to the destination, the destination node 107 in the 

cluster 200. In a similar manner, an outgoing message 220, ~s shown originating at 

a source node 105 within the cluster 200; passing through the interconnect 110, 

gateway message switch 240, gateway port 230, cluster boundary 125, and 

ultimately to the destination host 130. 

(Id. at 6:26-42.) 

Therefore, the ALl finds that "gateway node within a cluster of computer nodes" means 

"a computer (not just a device) that serves as the gateway that is within the cluster of (one of the) 

computer nodes." 

31 
4. "matching both the software communication protocol port number and 

the software communication protocol number to an entry in a message 

switch memory, the matched software communication protocol port number 

entry being associated with a software communication protocol port specific 

function whicll selects a routing destination for the message from a plurality 

of possible destinations" 

As an initial matter, the parties agree that the first portion of the claim requires that both 

the port and protocol numbers of an incoming message be matched to a singular entry in a 

singular table in memory. (CIB at 57-63; RIB at 101, note 18; SIB at 59-61.) The parties' 

dispute focuses on the meaning of the latter part of the claim, namely "protocol port specific 

function which selects a routing destination from a plurality of possible destinations:" 

IBM argues that the "protocol port specific function which selects a routing destination 

from a plurality of possible destinations" means "a routing function which processes the message 

so that the message is routed to the destination computer node selected from two or more of the 

computer nodes in the cluster." (CIB at 57.) IBM further argues that "routing function" and 

"protocol port specific function" are used interchangeably in the patent. IBM asserts that the 

specification teaches that the protocol port specific function is linked in the memory of the 

gateway to a matched protocol and port value entry that is used to select a destination node from 

a plurality of nodes in the cluster and is used to alter the message header of an incoming message 

to include the address of the selected node for routing the incoming message to that node. (CIB 

at 57.) As for ASUS's proposed construction, IBM asserts that it excludes the function that 

selects a computer node address from a table of predetermined addresses stored in the gateway, 

which is erroneously based on a reading of a limited section of the written description while 

ignoring the entirety of the patent and excludes a prefelTed embodiment. (CIB at 57-59.) 

ASUS asserts that this means that "the. ~protocol port specific function' must 'select' the 

destination, and that 'selection' is 'from a plurality of possible destinations'." (RIB at 100-101.) 

32 
ASUS asserts that this requires the protocol port specific function to (1) choose an appropriate 

destination and (2) the selection must be made from a specific pool that includes more than one 

possible destination for a given protocol/port pair. (RIB at 101.) ASUS asserts that IBM's 

argument derogates both these requirements by simply construing the "port protocol specific 

function" as merely a generic routing function. (RIB at 101-102.) Staff agrees. (SIB at 60-61.) 

The ALJ finds that "protocol port specific function which selects a routing destination 

from a plurality of possible destinations" means that the protocol port specific function actually 

selects the routing destination from a plurality of possible destinations. It requires more than 

simply "processing" the incoming message and automatically routing the message to a 

predetermined destination. The claim language, specification and prosecution history all support 

this construction. 

The claim language specifically calls for a "protocol port specific function which selects 

a routing destination for the message from a plurality of possible destinations." (JX-5 (' 852 

Patent) at 20:40-42.) Thus, the claim language requires that the function (1) select or choose a ' 

routing destination and (2) that such a destination is chosen from at least two possible nodes. A 

'. 

"protocol port specific function" is more than simply a "routing function for processing the 

incoming message" to determine the routing destination and it is not "interchangeable" with 

"routing function" as asserted by IBM. Indeed, the claims themselves distinguish between the 

"routing functi'on" and the "protocol port specific function." Claim 35 explicitly and expressly 

claims a "routing function" and states (in relevant part): 

An apparatus for routing messages across a boundary of a cluster of computers on 

a network, comprising:. 

one or more routing functions, residing in the message switch table, one of the 

routingfimctions associated with the matched table ently which is used/or 

directing messages crossing the cluster boundary into the cluster to a destination 

33 
node within the cluster, the destination node being determined by the message 

switch using information on the message 

('852 Patent 23:13-24:19) (emphasis added). Thus, claim 35 describes the "routing function" as 

"directing messages crossing the cluster boundary into the cluster to a destination node within 

the cluster," which is clearly distinguishable from a "protocol port specific function" which 

"selects a routing destination for a message from a plurality of possible destinations." (JX-5 

('852 Patent), claims 1 and 35) (emphasis added). See AllVoice Computing PLC v. Nuance 

Communs., Inc., 504 F.3d 1236, 1247 (Fed. Cir. 2007) ("claim differentiation takes on relevance 

in the yontext of a claim construction that would render additional, or different, langUage in 

another independent claim superfluous.") (citing Curtiss-Wright Flow Control Corp., v. Velan, 

Inc., 438 F.3d 1374, 1381 (Fed. Cir. 2006); see also Phillips v. AWH Corp., 415 FJd 1303,1314 

(Fed. Cir. 2005) ("Differences among claims can also be a useful guide in understanding the 

meaning of particular claim terms.") 

The specification further supports this construction. The written description distinguishes 

between a "protocol port specific function" that selects a destination from a plurality of possible 

destination from other routing methods. In one method taught by the' 852 Patent which is not 

the protocol part specific function, the destination for an incoming message is predetermined 

based on the port/protocol and, based on the port/protocol, the destination is looked up on a table: 

Decision block 555 determines how incoming messages are handled if there is a 

matched pair in the message switch table. The decision is based on whether or not 

there is a routing function (418 in FIG. 4) associated with the matched entry in the 

message switch table. 

34 
If there is no routing function 415 (the routing function is NULL) in the matched 

message switch table entry, the incoming message is processed as shown in box 

560. In these cases, the new NODE_ADDR is set equal to the value in the node 

field (416 in FIG. 4) ofthe message switch table. The new NODE_PORT is again 

unchanged, i.e., it is set equal to DPORT.Incoming messages are processed in 

this way ifthere is only one node in the cluster which is assigned a particular port 

and protocol pair. 

FIG.58 

NODE-ADDR=GATEWAY 

NODUORT=OPORT . 

555 NO 

COMPUTE NODE ADDR 

FROM DPORT 

NOOUORT=DPORT 

INVOKE ROUTING 

FUNcnON WHICH 

COMPUTES NOD~ADDR 

AND NODE]ORT 565 

FIG. 

5A 

FIG. 

58 

FIG.5 

550 

NODE ADDR="NODE FIElD" 

NOOEYORT =DPORT 

560 

MODIFY DATAGRAN DESTlNAllON 

PORT AEl.D TO NODE;,..PORT 

570 

MODIFY DATAGRAM DESTINAllON 

ADDRESS FIElD TO NODE ADDR 

575 

SEND DATAGRAM TO NODE 

USING ItmRCONNECT 580 

35 
\ 125 HOSTS 

CLUSTER GATEWAY 109 ~ H I 130 

I PORT f 

I I 

MESSAGE SWITCH 400 I 

I 

REMOTE 

200 

412 I 

r MESSAGE SWITCH TABL~4~16 410 • • I 

'PORT PROTO NODE'" t=l.JNCTION ..... I 

I Y 130 

Pl PR1 0 f~l --418 I 

V5 I 

P2 PR2 0 f_2 I 

t 

P3 PRl Nl 0 --V I 

J 

t ·f PR N f I r I 

I 

PN '0 f_N 

RotmNG FUNCTIONS 

~O .. I f_1 I f_2 ---I f_N I 

110 

INTERCONNECT FIG.4 

NODE 1 NODE 2 

r PORT PORT 

105 106 

('852 Patent 13:27-41, Figs 4, 5B)(emphasis added). However, in another method, the 

destination for an incoming message is selected from a plurality of possible destinations: 

The last group of incoming messages are processed as shown in box 565. These 

messages have a matched pair entry in the message switch table which has a 

routing function designated in the table (418 in FIG. 4). These routing functions 

may access infoIDlation which is in the MM header, PP header, and/or data fields 

and use this information to calculate the new destination address (NODE _ ADDR) 

and port number (NODE_PORT). The same routing function may be used for 

different entries in the message switch table or the routing functions can be 

unique to each entry. 

36 
(Id. at 13 :42-52; Figs. 4, 5B)( emphasis added). 

The specification further supports the ALJ's construction because it explains that a 

benefit in using a port protocol specific function is to share the workload of a particular port over 

multiple nodes in the cluster: 

Message switch routing function allow a port number and protocol pair to be used 

on more than one node. The need for this occurs when one wants to run an 

application/service which is associated with a specific well-known port number 

on more than one node. 

(JX-5 ('852 Patent) at 13:53-57; see also 19:57-61 ("[S]ervice associated with a protocol port 

(NFS, MOUNT, RLOGIN) can be distributed over mUltiple nodes of the cluster and the message 

switch can be used to distribute the workload among the multiple instances of the service.") 

Thus, in requiring the port protocol specific function to "select" a destination from a plurality of 

. possible destinations, this function helps to achieve an objective of the invention, namely evenly 

distributing work among the computer nodes, rather than simply automatically routing the 

incoming message to a specific node based on the protocol/port pair. 

The patentees also made this distinction during the prosecution of the patent. The 

patentees overcame the prior art by stating that the port protocol specific function must select the 

destination of incoming messages using either a function or an algorithm rather than by simply 

replacing the incoming message with a predetermined address pulled from a table. (JX-6 ('852 

File History) at IBM00000821-23.) IBM argues that, instead, what the patentees actually 

distinguished was between whether the entire selection process for the destination is performed 

"automatically" in the gateway node of the cluster or whether it requires the user's/extemal 

host's input. (CIB at 61-62.) However, the prosecution history shows that the patentees 

distinguished their invention over the prior art by arguing that their invention used either a 

37 
function or algorithm to detennine the destination node of the incoming message. (JX~6 ('852 

File History) at IBM00000822 ("The destination node, item 11 of the Office action, is not 

computed by an algorithm but changed by direct replacement with addresses in a table.") 

IBM argues that the "Cinconn" routing function discloses an embodiment where the 

destination is actually selected from a "Cluster Connection Table" of pre~established connections. 

(CIB at 60; CRB at 32.) However, the specification describes the Cinconn function as: 

The Cinconn fimction finds the source address (s_addr) 1022 and the source port 

number (s'-port) 1024 in the incoming message, and compares this pair of values 

against entries in a Cluster Connection Table 1020. If it finds no matching entry 

(the nonnal case), it creates one, and associates with it a node 1026 according to a 

load distribution, i.e., balancing, algorithm. (One preferred algorithm is round~ 

robin but any other load balancing algorithm knmv in the art can be used.) The 

message is forwarded to the chosen node where the connection is established by 

the rlogin daemon running on that node. If there is an existing matching entry in 

the Cluster Connection Table 1020, the message is forwarded to the associated 

node. This is likely an enor, and the rlogin daemon on the node will generate the 

appropriate error response. 

(JX~5 ('852 Patent) at 19:10-25) (emphasis added). Thus, the Cinconn function actually selects 

a destination from a plurality of possible destinations based on a load balancing algorithm and, as 

such, the ALJ's claim construction covers this embodiment. In addition to the above referenced 

embodiment, the specification further describes another embodiment of the Cinconn function: 

Subsequent messages associated with. an established connection are also 

processed by the connection manager, Cinconn. s_addr and s'-port are used to 

find the matching entry in the Cluster Connection Table for the connection, and 

the messages are forwarded to the node associated with the connection. 

(JX-5 ('852 Patent) at 19:26~31.) IBM argues that the ALJ's claim construction fails to cover 

this embodiment. However, it is not necessary to cover every single embodiment and a patentee 

may draft different claims to cover different embodiments. Intamin, Ltd. v. Magnetar Techs., 

Corp., 483 F.3d 1328, 1337 (Fed. Cir. 2007) ("[TJhjs court has acknowledged that a claim need 

not cover all embodiments.); see also Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 

38 
1316, 1326 (Fed. Cir. 2001) ("We conclude that only those embodiments involving 

communications established by the host processor meet the functional requirement of the 

claim."); Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324-25 (Fed. Cir. 2003); Phillips 

Petroleum Co. v. Huntsman Polymers Corp., 157 F.3d 866, 875 (Fed. Cir. 1998).) 

Therefore, based on the foregoing, the ALl finds that "protocol port specific function 

which selects a routing destination for the message from a plurality of possible destinations" 

means that "the protocol port specific function actually selects the routing destination from a 

plurality of possible destinations." 

D. The '829 Patent 

1. "microcomputer" 

Complainant argues that the term "microcomputer," which appears in the preamble of 

claim 1 of the' 829 Patent, means "a computer system that includes at least a combination of a 

microprocessor, IC memory, and I/O ports." (CIB at 80.) Complainant argues that this 

definition was first proposed by Respondents' counsel during the deposition of Complainant's 

expert, Dr. Phinney, and that Dr. Phinney agreed with said definition. (CIB at 80.) Complainant 

argues that the preamble term is a claim limitation because it provides antecedent basis for the 

subsequent "whereby" clause in claim 1, which states, "whereby a user of the microcomputer 

may .... " (CIB at 80.) In addition, Complainant argues that the term "microcomputer" in the 

preamble "does not state a purpose or an intended use ofthe invention, but rather discloses a 

fundamental characteristic of the claimed invention that is properly construed as a limitation of 

the claim itself." (CIB at 81 (citing Poly-AmericaLP. v. GSE Lining Tech., Inc., 383 F.3d 1303, 

1310 (Fed. Cir. 2004)).) The Staff agrees with Complainant. (SIB at 19-20.) 

39 
Respondents argue that the term "microcomputer" will not affect the outcome of this case 

and thus need not be construed or considered a limitation. (RRB at 22; RRX-59C at 71.) 

Respondents argue that complaint's proposed construction omits a power supply. (RRB at 22.) 

Thus, citing a definition from a book that Complainant's expert, Dr. Phinney, referred to in the 

course of forming his opinion, Respondents argue, in the alternative that the ALl should construe 

the term to mean "[i]n addition to the CPU, a working microcomputer must include clock signal, 

program memory, data memory, input port, output port, and power supply." (RRB at 22 (citing 

CX-2053C at 14; CX-2425).) 

The ALl agrees with Complainant and the Staff that "microcomputer" is a claim 

limitation, which discloses a fundamental characteristic of the claimed invention. A review of 

the' 829 Patent as a whole reveals that the term "microcomputer" is one that "breathes life and 

meaning into the claims and, hence, is a necessary limitation to them," which must be construed 

"to ascertain its scope and meaning." In re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir. 1994). The 

Federal Circuit has stated that: 

[T]erms appearing in a preamble may be deemed limitations of a claim when they 

give meaning to the claim and properly define the invention. Although no 'litmus 

test' exists as to what effect should be accorded to words contained in a preamble, 

review of a patent in its entirety should be made to determine whether the 

inventors intended such language to represent an additional structural limitation 

or mere introductory language. 

In re Paulsen, 30 F.3d at 1479 (internal citations omitted) (emphasis added). Though it appears 

in the preamble of claim 1, the AU finds that the term "microcomputer" is not "mere 

introductory language." The term, also used later in that claim, is the subject of both asserted 

claims 1 and 2 of the '829 Patent/lending support to the necessity ofa construction. See, e.g., 

3 Claim 2 depends on claim I and because "claim terms are normally used consistently throughout the patent," 

Phillips, 415 F.3d at 1314, the construction of each of the terms at issue in claim 1 applies equally to claim 2. 

40 
Pitney Bowes, 182 F.3d at 1306 (finding that a tenu appearing in the "whereby" clause could 

only be understood in the context of the same term in the preamble). 

The ALl does not agree with any party's construction of the tenn "microcomputer" and 

instead finds that it means "a personal computer system unit having a system processor, 

electrically powered data processing and storage components, a motherboard or system planar to 

electrically connect the components together, and a power supply." This construction is 

supported by the plain language of claim 1 and the specification of the' 829 Patent. As discussed 

above, when interpreting claims, it is appropriate to "look first to the intrinsic evidence of record, 

i. e., the patent itself, including the claims, the specification and, if in evidence, the prosecution 

history." Vitronics, 90 F.3d at 1582.4 

The ALl finds that the microcomputer of claim 15 must have electrically powered data 

processing and storage components, as well as a power supply, based on the plain language of 

the claim. As stated supra, the claims themselves "provide substantial guidance as to the 

meaning of particular claim terms," Phillips, 415 F.3d at 1314, and "[t]he construction that stays 

true to the claim language and most naturally aligns with the patent's description of the invention 

will be, in the end, the correct construction." ld. at 1316. 

4 The AU notes that, during prosecution of the application that led to the '829 Patent, the only change that the 

Examiner required the applicants to make was to formalize the drawings submitted with their application. (See JX-4 

at IBM00000053-58.) Aside from the issue regarding the informal drawings, the Examiner allowed the claims of 

the' 829 Patent without objection. Thus, the intrinsic evidence here consists of only the' 829 Patent claims and 

specification. 

S The ALJ finds that specification of the '829 Patent uses the terms "microcomputer," "personal computer system," 

"personal computer," "computer," and "microcomputer system" interchangeably. (See, e.g., JX-3 (col. 1,11. 12-22; 

col. 1, 11. 48-55; col. 2, 11. 23-25; col. 3, 11.24-26; coL 4, IL 17-21; coL 4, 11. 60-64; cot 5, 11. 32-33). A similar 

situation arose in the case Pickholtz v. Rainbow Technologies, Inc., 284 F.3d 1365, 1372-73 (Fed. Cir. 2002), in 

which the Federal Circuit found that "the proper construction of the term 'computer' follows without ambiguity 

from the intrinsic evidence" and that the patent in suit used the terms "computer" and "computer system" as 

synonyms. The Court stated that "the patent in this case provides no indication that the two terms mean different 

things. Instead, the patent uses the term 'computer system' in the specification and the term 'computer' in the 

claims; nothing in the patent itself explicates their relationship or indicates any difference in meaning." Id. at 1373. 

The ALJ finds that such is also true here with respect to the aforementioned terms. 

41 
Claim 1 explicitly claims a microcomputer comprising 1) electrically powered data 

processing and storage components6 and 2) a pulse width modulation switching power supply for 

supplying electrical power to such components. (IX-3 (coL 6, 11. 47-56). This plain language 

makes it clear that both the components and the power supply are essential to the microcomputer 

of claim 1. The ALJ also finds support for the inclusion of a power supply as a specific 

limitation on the term "microcomputer" in the '829 Patent specification. For example, the patent 

is entitled "Personal Computer Power Supply" and the specification states that the invention 

"relates to personal computers, and more particularly to personal computer power supplies." (fd 

at Abstract; see also Id. at coL 1,11. 5-6). The specification also discloses that the "[e]lectrical 

power for energizing the components of such personal computers is conventionally supplied by 

power supplies .... " (Id at col. 1,11. 48-50). These statements indicate to the ALI that the 

claimed microcomputer must include a power supply. 

However, the microcomputer of the claim is not necessarily limited to these elements 

alone. The word "comprising" is a "term of art used in claim language which means that the 

named elements are essential, but other elements may be added and still form a construct within 

the scope of the claim." Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) 

(emphasis added); Manual of Patent Examining Procedure § 2111.03 "Transitional Phrases" (8th 

ed., Rev. 5,2006) (stating, "The transitional term 'comprising' ... is inclusive or open-ended 

and does not exclude additional, unrecited elements . . ,," (emphasis added)). Moreover, "[i]n 

the patent claim context the term 'comprising' is well understood to mean 'including but not 

limited to.'" Cias, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007). Thus, 

6 The ALJ finds that the specific system components identified by the parties, such as memory and input/output 

ports, fall under the category of "electrically powered data processing and storage components," a phrase which will 

be further discussed and construed infra. 

42 
the microcomputer must have electrically powered data processing and storage components and 

a power supply - but may also include additional elements. 

Based on the intrinsic evidence of record, the ALJ finds that the microcomputer of claim 

1 is subject to two additional limitations. The microcomputer must include a system processor, 

which the parties generally do not dispute. (SPFF 61-62, 65; COSPFF 61-62; RRSPFF 65-D). It 

must also include a motherboard or system planar. The specification states: 

One of the distinguishing characteristics of these [personal computer] systems is 

the use of a motherboard or system planar to electrically connect these 

components together. 

(Id. at col. 1, 11. 18-21 (emphasis added).) Further: 

At least certain of these components are mounted on aplanar which is mounted 

on the chassis and provides a means/or electrically interconnecting the 

components. 

(Id. at col. 3, 11.5-11). Thus, in this situation, the ALJ finds that it is proper to import a 

limitation from the specification into the construction ofthe claim because the two preceding 

passages make it clear that the microcomputer claimed in the' 829 Patent could not function 

without a motherboard and/or system planar. The patent is directed to a power supply for 

supplying electrical power to components of the computer, components which must be 

electrically connected in order to operate. The ALJ finds that the objective of the '829 Patent to 

provide electrical power to the components could not be achieved if said components were not 

electrically connected, e.g., by a motherboard or system planar. 

In view of the above, the ALJ finds that there is no need to resort to extrinsic evidence, 

such as the testimony of Dr. Phinney, to construe the term "microcomputer." See, e.g., Pickholtz, 

284 F.3d at 1373. In Pickholtz, the Federal Circuit stated: 

Because the meaning of the tel111 'computer' can be resolved from the intrinsic 

evidence alone, we need not rely on any extrinsic evidence, which in any event is 

43 
not conclusive. While Pickholtz advanced a number of technical dictionaries 

defining 'computer' as inclusive of peripherals, as well as expert testimony to the 

same effect, Rainbow disputed the meaning of those technical dictionaries and 

offered contrary expert testimony. 

ld. (internal citations omitted). Here, Complainant and the Respondents dispute whether Dr. 

Phinney offered an appropriate construction, particularly in light of the definition given in the 

textbook that Dr. Phinney cited as support for his opinion and Dr. Phinney's interpretation of that 

definition. The ALJ finds that the meaning of "microcomputer" is clear without relying on either 

the textbook definition or Dr. Phinney's interpretation of the same. 

2. "electrically powered data processing and storage components for 

processing and storing digital data" 

Complainant argues that the term "electrically powered data processing arid storage 

components," a portion of the claim phrase above, means "operating elements of the computer 

such as those, depicted in Figure 3 of the patent, for example, RAM, 10 ports, controllers, buffers, 

coprocessors, microprocessors, etc." (CIB at 81.) Complainant argues that this is the "plain 

meaning construction." (CIB at 81.) Complainant argues that the plain language of the claim 

"encompasses components that process data and components that store data," and that such 

plain language is supported by the' 829 Patent specification, which states that the invention 

relates to "personal computer power supplies for supplying electrical power to electrically 

operated components which manipulate or store digital data." (CIB at 82,83; JX-3 at col. 1,11. 

5-8 (emphasis added).) Complainant further argues that its construction "takes into 

consideration the application context of the invention which is to turn on and off a computer." 

(CIB at 83.) 

Respondents argue that the term "data processing and storage components for processing 

and storing digital data," a slightly different portion of the claim phrase above, means 

44 
"components, where each component processes and stores digital data." (RIB at 33.) 

Respondents argue that, because the claim uses an adjective phrase, "data processing and 

storage," with the functional language, "for processing and storing digital data," the claim 

encompasses only components that both process and store digital data, such as a microprocessor 

or coprocessor. (RIB at 33 (emphasis added).) According to Respondents, a person of ordinary 

skill inthe art would not understand the word "and" here to mean "or." (RIB at 33-34.) 

The Staff argues that "data processing and storage components for processing and storing 

digital data" means "data processing components for processing data and storage components for 

storing data." (SIB at 20.) The Staff argues that, simply because the phrase uses the word "and" 

instead of "or," "the term should not be limited to only components that process and store digital 

data as Respondents suggest." (SIB at 20 (emphasis added).) The Staff agrees with 

Complainant that the specification uses the phrase "manipulate or store" and thus refers to both 

components that process digital data and components that store digital data. (SIB at 21.) 

The ALl adopts a modified version of the constructions proposed by Complainant and 

the Staff, and finds that the claim phrase "electrically powered data processing and storage 

components for processing and storing digital data" means "electrically powered components, 

which process andlor store digital data." This construction is supported by the specification of 

the '829 Patent. For example, the specification states that: 

This invention relates to ... personal computer power supplies for supplying 

electrical power to electrically operated components which manipulate or store 

digital data. 

(lX-3 at col. 1,11. 5-8 (emphasis added).) The ALl agrees with Complainant and the Staff that 

the language "manipulate or store" encompasses components that manipulate, i.e., "process," 

45 
digital data and components that store digital data. The ALJ finds that it also encompasses 

components that are capable of performing both functions. 

The specification refers to "components," "operating components," and "data processing 

and storage components" that are electrically connected, powered, and/or operated. The 

specification often refers to such components collectively and neither identifies particular "data 

processing components" or "storage components" nor defines a specific purpose or function for 

any type of component. The ALJ finds that the specification uses the terms "components," 

"operating components," and "data processing and storage components" interchangeably, similar 

to the ALJ's finding, supra, regarding the terms "computer," "microcomputer," etc. ·See, e.g., 

Pickhoitz, 284 F.3d at 1372-73. For example, the specification states: 

Personal computer ... consists of a system unit having a single system processor 

and associated volatile and non-volatile memory, a display monitor, a keyboard, 

one or more diskette drives, afixed disk storage, and an optional printer. One of 

the distinguishing characteristics of these systems is the use of a motherboard or 

system planar to electrically connect these components together. 

, (JX-3 at col. I,ll. 12-21 (emphasis added); see also ld. at col. 1,11.48-50) (stating, "Electrical 

power for energizing the components of such personal computers is conventionally supplied by 

power supplies .... ) (emphasis added); col. 1,11.60-65 (discussing voltage and current used with 

"the operating components" of a personal computer) (emphasis added); col. 2, 11. 25-30 (stating, 

"In realizing the object of the present invention, the possibility is opened of establishing remote 

control over the supply of electrical power to the operating components of a computer .... ") 

(emphasis added).) 

The ALJ finds that the feature that all such components have in common is that they are 

part of the computer and are electrically powered, operated, and/or connected. Thus, the ALJ 

finds that the components may consist of, e.g., the system processor, associated volatile and non46 
volatile memory, display monitor, keyboard, diskette drives, fixed disk storage, and an optional 

printer as set forth in the specification: 

Personal computer systems can usually be defined as a,desk top, floor standing, or 

portable microcomputer that consists of a system unit having a single system 

processor and associated volatile and non-volatile memory, a display monitor, a 

keyboard, one or more diskette drives, ajixed disk storage, and an optional 

printer. 

(JX-3 at col. 1,11. 12-18 (emphasis added).) The specification also states: 

The computer has a cover formed by a decorative outer member and an inner 

shield member which cooperate with a chassis in defining an enclosed, shielded 

volume for receiving electrically powered data processing and storage 

components for processing and storing digital data. At least certain of these . 

components are mounted on a planar which is mOlmted on the chassis and 

provides a means for electrically interconnecting the components of the computer 

including those identified above and such other associated elements as floppy disk 

drives, various forms of direct access storage devices, accessory cards or boards, 

and the like. 

(Id at col. 2, 11. 67 - col. 3, 11. 11 (emphasis added) (internal references to figures omitted).) 

Thus, the ALI finds that other associated elements, such as floppy disk drives, various forms of 

direct access storage devices, accessory cards or boards, and the like may also be electrically 

powered components of the microcomputer claimed in the '829 Patent. 

The ALI does not, however, construe the specific examples of data processing and 

storage components identified by the parties or in the' 829 Patent to be limitations of claim 1 or 2, 

for several reasons. First, as discussed supra, particular examples and embodiments discussed in 

the specification should not be read into the claims as limitations. Markman, 52 F.3d at 979. 

Second, the ALI "need not, and indeed cannot, attempt to precisely define" which data 

processing and storage components may be part of the "microcomputer" as used in the' 829 

Patent for all cases. See Pickholtz, 284 F.3d at 1374. And, finally, independent claim 10 of the 

47 
'829 Patent specifically claims a personal computer system comprising a high speed 

microprocessor, volatile and non-volatile memory, a bus controller, and a memory controller, 

among other things. (JX-3 at col. 8,11. 16-68). The presence of these limitations in claim 10 

raises the presumption that they are not specific limitations on claim 1. See Phillips, 415 F.3d at 

l315; AllVoice Computing, 504 F.3d at 1247. 

The ALJ finds no support in the '829 Patent for limiting data processing and storage 

components to components that perform both such functions. Respondents argue that the claim 

refers only to those components that both process and store digital data, such ~s a microprocessor 

or coprocessor, and that the '829 Patent "distinguishes 'data processing and storage components' 

from 'other associated elements' such as direct access data storage devices and IIO devices, 

which do not perform both 'processing and storing digital data. ,,, (RIB at 34.) However, the 

ALJ disagrees. In contrast, the ALJ has fOlmd that, in addition to "volatile and non-volatile 

memory, a display monitor, a keyboard, one or more diskette drives, a fixed disk storage, and an 

optional printer," the specification identifies "floppy disk drives, various forms of direct access 

storage devices, accessory cards or boards, and the like," as examptes of "electrically 

interconnected" components that the claimed microcomputer may have. (JX-3 at col. 3,11.5-11). 

3. "pulse width modulation switching power supply for connection with an 

alternating current electrical main supply and for supplying direct current 

electrical power" 

Complainant construes the terms "power supply" and "pulse width modulation switching 

power supply" from the claim phrase above. Complainant argues that the term "power supply" 

means "an arrangement of components that provide power to the operating elements 7 of a 

computer." (Cm at 83.) Complainant argues that the term "pulse width modulation switching 

7 The ALl notes that Complainant indicates that "operating elements" are "data processing and storage 

components." (cm at 81.) 

48 
power supply" means "a power supply such as a switching power supply under PWM control." 

(CIB at 84.) Complainant further argues that "[a] typical PWM switching power supply in the 

. context of the claim is a fixed frequency switching power supply that modulates the on time of 

electronic switches in order to regulate its output." (CIB at 84.) 

Respondents argue that "power supply for connection with an alternating current 

electrical main supply and for supplying direct current electrical power" means "a device in the 

microcomputer that connects to a high AC voltage and converts the high AC voltage to supply 

DC voltages." (RIB at 31.) Respondents argue that such a construction is consistent with the 

specification of the' 829 Patent because the power supplies depicted in Figure 2 and Figure 4 

(and described in the accompanying text) are located within the personal computer. (RIB at 31-

32.) Respondents argue that there is a distinction between a power "source" and a power 

"supply." (RIB at 31-32.) As an example, Respondents state that, in Figure 2, a power cord 

"sources" th~ high AC voltage from the wall outlet to the power supply, and then the power 

supply "supplies" the DC voltage to the data processing and storage components of the computer. 

(RIB at 31-32.) Respondents further argue that the power supply must be located within the 

personal computer for safety reasons, i.e., so it will not expose a user of the computer to high AC 

voltage. (RIB at 32.) 

The Staff states that it generally agrees with Respondents' proposed construction, but 

argues that the claim phrase "power supply for connection with an alternating current electrical 

main supply and for supplying direct current electrical power" means "a device that connects to a 

high AC voltage and converts the high AC voltage to supply DC voltages." (SIB at 22.) The 

Staff does not agree with Respondents' proposed requirement that the power supply must be 

located "in the microcomputer." (SIB at 22.) 

49 
The ALJ finds that "power supply" means "a device which converts electrical power 

from an available line voltage and current, i.e., alternating current electrical main supply, to the 

direct voltage and current required to operate a microcomjJUter, and which supplies electrical 

power to electrically powered data processing and storage components of a microcomputer." 

(See Id. at col. 1,11.5-8 and 11.48-55; coL 4, 11.60-65.) The ALJ also finds that the term "pulse 

width modulation switching power supply" is not a novel concept as presented in the' 829 Patent 

specification. For example, the specification of the '829 Patent states: 

Preferably, and as is generally known and applied in the field of personal 

computers, the power supply 90 is a pulse width modulation switching power 

supply for connection with an alternating current electrical main supply and for 

supplying direct current electrical power to the data processing and storage 

components for enabling operation thereof. 

(Id. at col. 4, 11. 60-65 (emphasis added).) The specification also states: 

It has been conventional to control operation of such power supplies by switching 

the supply voltage to the power supply. In the example given, such switching is 

accomplished by turning on and off the 110 volt 60 hertz mains [siC] supply 

current. 

(Id at col. 1, 11. 55-60.) And, further, that: 

In conventional switching power supplies as described immediately above, 

control over whether any voltage is delivered to the operating components of the 

computer is exercised by turning the normal utility voltage supply on and off. 

(Id. at col. 5,11.34-38.) Thus, the ALJ finds that the "pulse width modulation switching power 

supply," as the term is used in the prior art, means "a power supply, the operation of which is 

controlled by switching the supply voltage to the power supply, i.e., the electrical power from an 

alternating current electrical main supply, on and off." This type of prior art power supply is 

thoroughly described in the '829 Patent. (See JX-3 at col. 4,1. 60 - col. 5, 1. 43.) 

The ALJ finds that "pulse width modulation switching power supply," as the term is used 

in the '829 Patent, means "a power supply, which has a controllable component and a signal 

50 
generator circuit, the operation of which is controlled by said controllable component and said 

signal generator circuit." This construction is supported by the plain language of claim 1 and the 

specification of the '829 Patent. See, e.g., Phillips, 415 F.3d at 1314, 1316. 

Claim 1 explicitly claims a pulse width modulation switching power supply comprising 1) 

a controllable component and 2) a signal generator circuit. (JX-3 at col. 6,11.47 - col. 7, 11.5). 

This plain language makes it clear that both the controllable component and the signal generator 

circuit are essential to the pulse width modulation switching power supply of claim 1. The ALJ 

also finds support for such a construction in the specification, which states, "[i]n accordance with 

this invention, the power supply comprises a controllable component ... and a signal generator 

circuit." (Id. at col. 5,11.44-55).) However, similar to the ALI's finding with respect to the term 

"microcomputer," the ALJ finds that the pulse width modulation switching power supply is not 

necessarily limited to these elements alone. See, e.g., Cias, 504 F.3d at 1360; Genentech, 112 

F.3d at 501; MPEP § 2111.03. Thus, the puls.e width modulation switching power supply of 

claim 1 must have a controllable component and a signal generator circuit - but may also include 

additional elements. 

The ALJ agrees with Complainant and the Staff that Respondents' proposed constmction 

improperly reads in a limitation from the specification of the patent, i.e., that the power supply 

must be inside of the microcomputer. (See CIB at 83; SIB at 22.) The claim expressly requires 

that the pulse width modulation switching power supply connect to an alternating current 

electrical main supply and that it supply direct current electrical power to the data processing and 

storage components. But, the ALJ finds no support for limiting the location of the pulse width 

modulation switching power supply to the inside of the microcomputer. Although Figures 2 and 

4 show said power supply as being inside of the microcomputer, the ALJ will not import this 

51 
limitation from the specification into the claim. See, e.g., Markman, 52 F.3d at 979. The 

specification indicates that the object of protecting a user against exposure to high voltage can be 

realized via delivery of a low voltage signal, which may be controlled by the user of the 

microcomputer with a manually operable or computer logic operable (remote control) switch. 

(JX-3. at col. 2, 11. 10-30; col. 6, II. 13-30.) Specifically: 

As will be appreciated, a user of the computer 10 may control the power on power 

off functions by manipulating the manual switch 100, and thereby use the 

computer while avoiding exposure to the higher voltages and currents typically 

supplied through the main electrical supply obtained from a power distribution 

company or utility. 

(!d. at col. 6,11. 36-42 (emphasis added); see also col. 6, 11. 31-35 (noting that the control is on 

the secondary/output side of the transformer to isolate a user from dangerous voltages.) Thus, 

the user is not required to touch the pulse width modulation switching power supply itself or the 

main electrical supply, leaving no compelling reason to import a limitation requiring said power 

supply to be located within the microcomputer. 

4. "a controllable component for responding to the presence and absence of 

a low voltage direct current electrical signal by enabling and disabling the 

supply of electrical power to said data processing and storage components" 

a) controllable component 

Complainant construes the terms "controllable component" and "low voltage direct 

current electrical signal" from the claim phrase above. Complainant argues that the term 

"controllable component" means "a component of a power supply that can be directed to enable 

or disable power to operating elements of the microcomputer." (CIB at 85.) Complainant argues 

that such a construction is consistent with the plain meaning of the term "controllable 

component" because the specification describes "a controllable component for responding to the 

52 
presence and absence of a low voltage direct current electrical signal by enabling and disabling 

the supply of electrical power to the data processing and storage components by controlling the 

'on' or 'off state of the pulse width modulator .... " (CIB at 85 (citing JX-3 at col. 5,11. 45-50).) . 

Complainant argues that such a description means that "when the message to 'turn on' the power 

to the operating elements is asserted, the controllable component responds by doing so." (CIB at 

85.) 

Respondents argue that the claim phrase "a controllable component for responding to the 

presence and absence of a low voltage direct current electrical signal by enabling and disabling 

the supply of electrical power" means "a PWM switching component that receives and converts 

the high AC voltage to the DC voltages, and, based on an input that represents the presence and 

absence of a low voltage DC control signal, enables and disables the supply of the DC voltages." 

(RIB at 26.) The Staff agrees with Respondents' proposed construction. (SIB at 23.) 

Respondents argue that "controllable component" is not a term of art that has an ordinary 

meaning, (RIB at 28; RRB at 16-17), and that their proposed construction "is consistent with the 

plain language of the claim as a whole." (RIB at 26.) According to Respondents: 

The claim element indicates the 'power supply' performs pulse width modulation 

(PWM), is connected to high AC voltage, and converts that high AC voltage to 

DC voltages in order to supply DC voltages to the claimed 'data processing and 

storage components. ' 

(RIB at 26; see also RRB at 16-17.) Respondents further argue that the controllable component 

must necessarily perform "PWM" and convert the voltage because the "signal generator circuit" 

of the power supply "is defined to perform other functionality." (RIB 26-27.) Respondents and 

the Staff argue that that the disclosure of a "PWM and Power Converter" in Figure 4 of the' 829 

Patent suggests that the controllable component is the PWM and Power Converter, not a 

component within it. (RIB at 27; SIB at 23) Respondents rely heavily on the depiction in 

53 
Figure 4 of the controllable component as a "PWM and Power Converter," as well as on the 

statements in the specification of the' 829 Patent that "the controllable component is a pulse 

width modulator control circuit" and that the controllable component responds to the presence or 

absence of a low voltage direct electrical current "by controlling the 'on' or 'off state of the 

pulse width modulator." (RRB at 17-18.) For example, respondents assert that: 

[I]fthe controllable component did not receive the always-on high AC voltage 

from the AC main supply, there would be no voltage to convert to DC voltages to 

supply to the data processing and storage components to enable their operation. 

(RIB at 27-28.) (SEE RPFF 1236-72.) The Staff adds that claim 2 of the '829 Patent, which 

claims "a microcomputer according to claim 1 wherein said controllable component comprises a 

pulse width modulator control circuit," also suggests that the controllable component "includes a 

pulse width modulator control circuit and other structure." (CIB at 24; see also RIB at 27; RRB 

at 19.) 

Complainant argues that the Respondents' and the Staff's proposed construction, 

particularly the phrase, "receives and converts the high AC voltage to the DC voltages," excludes 

the preferred embodiment of the invention and is thus incorrect. (CIB at 85; CRB at 51.) 

Complainant asserts that Respondents' expert, Dr. Madisetti, admitted that respondents' 

construction would not cover the preferred embodiment. (CRB at 51 (citing CFF 7.105).) 

Complainant also argues that such a construction improperly imports a limitation into claim 1, 

i.e., "a pulse width modulator control circuit," that would render claim 2 superfluous. (CIB at 

86.) 

The ALJ finds Complainant's proposed construction to be overly simplistic; while 

Respondents' and the Staff's proposed construction is unnecessarily complicated. The ALJ finds 

that "a controllable component for responding to the presence and absence of a low voltage 

54 
direct current electrical signal by enabling and disabling the supply of electrical power" means "a 

component of the pulse width modulation switching power supply, which, upon receiving a low 

voltage direct current electrical signal, supplies direct current electrical power to the electrically 

powered data proces~ing and storage components." This is consistent both with the ALJ's 

construction of the term "pulse width modulation switching power supply," the plain meaning of 

the claim, and the specification of the '829 Patent. The ALJ finds that, because claim 1 claims a 

pulse width modulation switching power supply "for supplying direct current electrical power" 

to the data processing and storage components, (JX-3 at col. 6,11. 52-56), the electrical power 

supplied by the controllable component must be direct current electrical power. In addition, the 

ALJ finds that there is nothing in the patent to limit the controllable component to receiving 

alternating current from the electrical main supply. Unlike the signal generator circuit, see infra, 

the claim does not specifically state that the controllable component is operatively connected 

"with an alternating current electrical main supply for controllably deriving" anything, e.g., low 

voltage direct current, from the main supply. 

The ALJ finds that the specification and claims of the' 829 Patent make it clear that the 

controllable component of claim 1 does not always have to be a "pulse width modulator control 

circuit." The specification states, "[i]n the illustrated embodiment [Figure 4], the controllable 

component is a pulse width modulator control circuit (described generally hereinabove and 

indicated at 91 in FIG. 4) which may be of conventional form .... " (JX-3 at col. 5, n. 60-65.) It 

also describes the controllable component of Figure 4 as "enabling and disabling the supply of 

electrical power to the data processing and storage components by controlling the 'on' or 'off' 

state of the pulse width modulator." (Id. at col. 5,11.45-50 (emphasis added). The language, "by 

controlling the 'on' or 'off' state of the pulse width modulator," is conspicuously missing from 

55 
claim 1, even though it is described in the specification. This indicates to the ALJ that such 

language was intentionally left out of the claim. Further, the same language appears in clajm 2 

as a limitation on claim 1. (JX-3 at claim 2 (stating, "A microcomputer according to claim 1 

wherein said controllable component comprises a pulse width modulator control circuit." 

(emphasis added)).) The presence of said limitation in dependent claim 2 raises a presumption 

that it is not also present in independent claim 1, Phillips, 415 F.3d at 1315, particularly here 

where the only difference between claims 1 and 2 is the limitation in dispute. SunRace, 336 F.3d 

at 1303. Even Dr. Madisetti, Respondents' expert, admitted that the controllable component of . 

claim 1 "could or could not include the PWM control circuit." (SEE CFF 7.107.) Thus, the ALJ 

will not limit the controllable component of claim 1 in such a way that it must necessarily be a 

pulse width modulator control circuit. 

b) "low voltage direct current electrical signal" 

In its initial brief, Complainant argues that the term "low voltage direct current electrical 

signal" means "logiC level voltage low current electrical signals." (CIB at 87.)8 Complainant 

argues that the switches in the preferred embodiment send logic level signals "in order to 

enable/disable the controllable component," (CRB at 52), and that there are two instances in the 

specification of the '829 Patent that indicate the term should be construed as "logic level 

voltage." (CIB at 87 (citing JX-3 at col. 2, 11. 23-25 and col. 6, 11. 13-18).) Complainant further 

argues: 

Based on this, along with the ordinary meaning of the word signal (something that 

conveys information rather than power) and because a signal conveys information, 

it is generally understood that a signal is both low voltage and low current. 

8 The ALI notes that, in its findings of fact, complainant expands its construction to "an electrical signal having a 

constant logic level voltage." (CFF 7.111 (emphasis added).) Complainant argues that "there is either a constant 

signal or no signal." (CRB at 52.) Respondents argue that "at least two voltage levels" are required to enable and 

disable the supply of electrical power to the data processing and storage components. (RIB at 29.) The ALI fmds 

no support in the '829 Patent for a "constant" limitation. 

56 
(CIB at 87.) According to Complainant, the dictionary on which Respondents' expert, Dr. 

Madisetti, relies supports complainant's proposed construction. (CIB at 87.) 

Respondents do not construe this term and argue that "it simply means what it says." 

(RRB at 19.) Respondents argue that the specification of the '829 Patent refers to the low 

voltage direct current signal "as' a relatively low voltage signal,' a far cry expressly requiring 

logic level." (RIB at 28.) Respondents further argue that the logic level signals that are referred 

to in the portions of the specification that Complainant cites "are used to operate the usercontrolled switches 100, 101, which permit remote control over the computer." (RRB at 19.) 

Respondents argue that Complainant has confused these signals with the low voltage direct 

current signal. (RRB at 19 (citing JX-3 at col. 6, 11. 26-30).) 

The Staff does not construe this term. 

The ALJ agrees with Respondents that the term "low voltage direct current electrical 

signal" does not require a construction; rather, it means what it says. The specification 

exemplifies "available line voltage and current" (also called the "main supply current" and 

"alternating current electrical main supply") as "the 110 volt 60 hertz current supplied in the 

United States." (JX-3 at col. 1,11.48-60 and col. 5, 11. 38-43.) In contrast, the specification 

refers to the direct voltages and current required to operate the components of the personal 

computer as "significantly lower," (Id. at col. 1,11. 60-65 (emphasis added)), and sets forth an 

object of the invention as protection of a personal computer user against exposure to high 

voltages, which may be accomplished by "the delivery of a relatively low voltage signal." (Id. at 

col. 2, 11. 22 (emphasis added).) The specification also notes that use of such "lower level 

voltage to control the operation of a personal computer power supply" was proposed by the prior 

art. (JX-3 at coU, 1. 66 - col. 2, l. 7; see also col. 6, 11. 5-25 (describing how high frequency 

57 
electrical current pulses are "reduced in voltage" and "turned into pure direct current").) Thus, 

the ALJ finds that a "low voltage direct current electrical signal" is an electrical signal delivered 

to the controllable component from the signal generator circuit, which signal is derived from the 

110 volt 60 hertz alternating current electrical main supply, and which signal is lower voltage 

and current than said main supply. The AL] finds that Complainant's proposed construction 

improperly requires the reading oflimitations, i.e., "logic level" signal (and/or "constant" signal), 

from the specification and preferred embodiment of the' 829 Patent into the term "low voltage 

direct current electrical signal." (See Id at col. 2, 11. 25 and col. 6, 11. 10-20). 

5. "a signal generator circuit operatively connected with said controllable 

component and with an alternating current electrical main supply for 

controllably deriving from the main supply a low voltage direct current 

signal for delivery to said controllable component" 

Complainant construes the terms "signal generator circuit" and "operatively connected" 

from the claim phrase above. Complainant argues that the term "signal generator circuit" means 

"a circuit that is operatively connected with the AC main supply and generates a signal directed 

to the controllable component for enabling or disabling power to the operating elements of the 

microcomputer." (CIB at 87.) Complainant argues that such a construction is consistent with 

the specification ofthe '829 Patent, (CIB at 87), stating, "[a]s described in the specification, the 

signal generator circuit is powered by, but does not include, a stand-by power supply." (CIB at 

89 (emphasis added).) 

Complainant argues that the term "operatively connected" means "enabling operation 

when connected," and that the "plain meaning of this term in the context of the patent 

specification simply includes connection to an AC main supply such that the signal generator can 

derive a low voltage direct current signal from the AC main supply." (CIB at 90.) 

Complainant's expert, Dr. Phinney, testified that a person of ordinary skill in the art would 

58 
understand '''operatively connected' in the context of the '829 Patent to entail a stand-by power 

supply connected to the signal generator circuit for converting the AC voltage to DC voltage." 

(CIB at 90; CFF 7.167-7.172.) Again, according to Complainant, such a stand-by power supply 

"is not part of the signal generator circuit." (CRE at 48-49.) 

Respondents argue that the claim phrase "a signal generator circuit operatively connected 

with said" controllable component and with an alternating current electrical main supply for 

controllably deriving from the main supply a low voltage direct current signal for delivery to said 

controllable component" means "an analog circuit, operatively connected with both the 

controllable component and the high AC voltage, that controllably derives from the high AC 

voltage a low voltage DC control signal and generates the low voltage DC control signal to be 

delivered to the controllable component." (RIB at 19.) Respondents argue that the signal is 

controllably derived through the use ofa small transformer. (RIB at 21; RRB at 11.) 

Respondents argue that Complainant's proposed construction improperly allows the low voltage 

direct current signal to be derived from a DC voltage supply when, according to Respondents, 

the signal "must be derived from high AC voltage - not DC voltage." (RIB at 19, 20; RRB at 9-

10.) Respondents argue that their construction is consistent with the claim language, 

specification, and extrinsic evidence. (RIB at 21-23; RRB at 9-13.) The Staff agrees with 

Respondents' proposed construction. (SIB at 25-27; SRE at 3-6.) 

Complainant argues that there is no support to limit the signal generator circuit to an 

analog circuit and that, even if there were support for such a limitation in the specification, it 

would be improper to read it into the claims. (CIB at 88 (citing Computer Docking Station Corp. 

v. Dell, Inc., 519 F.3d 1366, 1373 (Fed. Cir. 2008)).) Complainant also argues that a person of 

ordinary skill in the art would understand that the signal generator circuit in the preferred 

59 
embodiment "can receive a signal from the computer-logic operable switch, which is clearly a 

digital input." (CIB at 88.) Complainant argues that the Staff's reasoning that "[fJunctionally, a 

digital circuit cannot operate off of or controllably derive from AC voltage, but an analog circuit 

can do so," would both dictate that the computer be construed to be analog and exclude the 

preferred embodiment illustrated by Figure 4. (CIB at 89.) According to Complainant's expert, 

Dr. Phinney, "the signal generator is a digital circuit because it is 'performing a digital function 

on digital inputs, creating a digital output.'" (CIB at 89; CFF 7.133.) Complainant further 

argues that there is no support in the patent to restrict the "physical arrangement" of the signal 

generator circuit and the AC main supply. (CIB at 90-91.) Complainant argues that the 

preferred embodiment describes an arrangement in which the signal generator circuit is 

connected to the AC main supply via a stand-by power supply, which "powers" the circuit, and 

that Respondents' proposed construction thus improperly excludes the preferred embodiment. 

(CIB at 91; CRB at 48-49.) 

The ALJ finds that "a signal generator circuit operatively connected with said 

controllable component and with an alternating current electrical main supply for controllably 

deriving from the main supply a low voltage direct current signal for delivery to said controllable 

componenf' means "a circuit, which is operatively connected to both the controllable component 

and the alternating current electrical main supply, and which uses a transformer to controllably 

derive a low voltage direct current signal from said main supply for delivery to said controllable 

component." This construction is supported by the plain language of claim 1 and the 

specification of the' 829 Patent. 

With respect to the parties' dispute regarding from where the low voltage direct current 

signal may be derived, e.g., from alternating current (via a transformer) or from direct current 

60 
(via a "stand-by power supply"), the ALJ finds that the plain language of the claim is clear: the 

signal generator circuit derives the low voltage direct current signal from the alternating current 

electrical main supply. (See JX-3 at col. 6, 11. 64-68; RIB at 19, 21l The claim specifically 

. states that the circuit is operatively connected "with an alternating current electrical main supply 

for controllably deriving from the main supply a low voltage direct current signal." The ALJ 

finds that there is no support in the '829 Patent for a meaning of "deriving," other than its 

ordinary meaning, e.g., to obtain or receive from a source. Complainant's expert, Dr. Phinney, 

agrees that "deriving" in the context ofthe claim means that the low voltage direct current signal 

is derived from the high AC voltage. (SEE RPFF 1069.) 

The Federal Circuit has construed the term "operatively connected" to mean that ·'the 

claimed components must be connected in a way to perform a designated function." 

InnovalPure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1118 (Fed. Cir. 

2004). With respect to this, the parties agree, (CIB at 90-91; RIB at 19-20; SIB at 25-26), and 

the ALJ will adopt said meaning. The ALJ finds that the "claimed components" here are the 

signal generator circuit and the alternating current electrical main supply. The ALJ further finds 

that the "designated function" is to derive a low voltage direct current signal from the alternating 

current main supply (for delivery to the controllable component). Thus, the signal generator 

circuit must be connected to the alternating current electrical main supply such that it derives a 

low voltage direct current signal from the alternating current electrical main supply (for delivery 

of the signal to the controllable component). 

The ALJ finds that a transformer is necessary to operatively connect the signal generator 

circuit to the alternating current main supply; the signal generator circuit does not receive direct 

current and voltage from the alternating current main supply. The ALJ further finds that the 

9 The ALJ fmds that there is no support in the '829 for an "analog circuit" limitation. 

61 
specification of the' 829 Patent makes it clear that it is a transformer within the signal generator 

circuit that "operatively connects" the circuit to the alternating current electrical main supply in 

order to derive the low voltage direct current signal from the main supply. The transformer 

transforms alternating current supplied by the main supply into "rectified current," which is 

lower voltage than that of the main supply. For example, with respect to Figure 4, the preferred 

embodiment, the specification states: 

The comparator 92 receives from a first signal circuit a low voltage direct current 

reference signal established by a voltage divider 94, 95 supplied with rectified 

current transformed from the main supply voltage by a suitable small transformer 

96. 

(JX-3 at col. 6,11.5 (emphasis added).) The specification also states that, in the preferred 

embodiment, the signal generator circuit comprises a comparator and first and second signal 

circuits. (Id. at col. 5,11.65-68.) Thus, in the preferred embodiment, the transformer is included 

f h . 1 .. 10 as part 0 t e sIgna generator CIrCUIt. 

The ALJ further finds that including a transformer in the construction here is not an 

improper reading in of a limitation from the patent specification because, in its discussion of the 

prior art pulse width modulation switching power supplies, the specification's description of how 

said prior art supplies function includes the use of a transformer. For example, the specification 

states: 

10 The ALl notes that, when the specification only discloses a single embodiment, i.e., a signal generator circuit that 

comprises a comparator and first and second signal circuits, it is improper to read such an embodiment into the 

claims. Computer Docking Station, 519 F.3d at 1373 (stating that "this court will not countenance the importation 

of claim limitations from a few specification statements or figures into the claims"). The ALl finds that such is 

particularly true where later claims in the' 829 Patent, e.g., dependent claim 3 and independent claim 8, specifically 

claim a signal generator circuit that comprises "a comparator, afirst signal circuit for supplying to the comparator a 

low voltage direct current reference signal, and a controllable second signal circuit for controllably supplying to the 

comparator a low voltage enable/disable signal .... " (JX-3 at col. 7, II. 9-18 (emphasis added).) Thus, the AU does 

not construe the signal generator circuit of claim 1 to necessarily include a comparator and first and second signal 

circuit, because then at least claims 3 and 8 would be superfluous. See, e.g., AllVoice, 504 F.3d at 1247; Phillips, 

415 F.3d at 1315; SunRace, 336 F.3d at 1303. 

62 
[P]ower supplies of the switching type are more efficient and often less expensive 

than their linear kin. While designs vary, the typical switching supply first 

converts incoming 60 Hz utility power to a much higher frequency of pulses, in 

the range of 20kHz. ... The pulses are reduced in voltage by a transformer and 

turned into pure direct current by rectification and filtering . 

. . . [H}ighfrequencies require smaller, less expensive transformers and filtering 

circuits. Nearly all oftoday's personal computers use switching power supplies. 

(Jd. at col. 5,11.6-33 (emphasis added).) Thus, even in the prior art, a transformer is required in 

order to reduce voltage and turn high frequency pulses into pure direct current from the incoming 

60 Hz utility power, i.e., derive a low voltage direct current electrical signal from the alternating 

current electrical main supply. Even if the signal generator circuit comprises something other 

than a comparator and first and second signal circuit, it must still include a transformer. 

The ALJ finds nothing to support the idea that a "stand-by power supply" is somehow 

connected to alternating current main supply and the signal generator circuit or to show that a 

transformer is a "stand-by power supply." The term "stand-by power supply" is not used 

anywhere in the '829 Patent; rather, it is a term used by Complainant's expert, Dr. Phinney, (see, 

e.g., Phinney, Tr. at 938:22-939:3; CFF 7. 130-40s), and the ALJ is not persuaded that it applies 

to claim 1. The ALJ further finds that, in arguing that the signal generator circuit is operatively 

connected to the main AC power supply by a stand-by power supply, Complainant has 

essentially agreed that the circuit is connected to the main supply by a transformer. For example, 

Complainant states in a parenthetical that CFF 7.168 discloses and illustrates a "stand-by power 

supply transformer located between the signal generator and the AC mains [sic] supply." (CIB at 

91 (emphasis added).) In addition, Complainant specifically argues that: 

The signal generator depicted in figure 4 'controllably derives' the LVDC from 

and AC source because it is powered by a standby power supply, i.e., the 

transformer 96, rectifiers and a filter as clearly described in the specification. 

63 
(CRB at 48 (citing JX-3 at col. 5,1. 65 - col. 6,1. 5) (emphasis added).) Even Complainant's 

expert agrees that the low voltage direct current signal is derived from the high AC voltage 

through the use of a transformer. (Phinney, Tr. at 936:4-7.) The difference is that Complainant 

would have its transformer (i. e., stand-by power supply) located between the signal generator 

circuit and the alternating current main supply rather than within the signal generator circuit as 

an integral part of that circuit. 

The ALJ does not find persuasive Complainant's arguments that a stand-by power supply 

is a separate element ofthe microcomputer power supply. (See CRB at 48-49.) As stated supra, 

the AU finds that a transformer is an element of the signal generator circuit. In addliion, the 

ALJ finds that said construction does not exclude the preferred embodiment, in which the 

comparator, a component of the signal generator circuit, receives from a first signal circuit, an 

additional component of the signal generator circuit, a "signal established by a voltage divider 

supplied with rectified current transformed from the main supply voltage by a suitable small 

transformer." (JX-3 at col. 5,1. 65 - col. 6, 1. 5.) 

Finally, the ALJ finds Complainant's argument that a person of ordinary skill in the art 

would understand that the signal generator circuit in the preferred embodiment "can receive a 

signal from the computer-logic operable switch, which is clearly a digital input," (CIB at 88), to 

be irrelevant. The main issue here is whether the low voltage direct current signal may be 

derived from a DC voltage supply, not whether the signal generator circuit should be 

characterized as an analog circuit or a digital circuit. A signal that the circuit receives from a 

computer-logic operable switch has no effect on the signal generator circuit's derivation of a low 

voltage direct current signal from the alternating current main supply. 

6. "whereby a user of the microcomputer may control energization of the 

electrically powered data processing and storage components by controlling 

64 
the application of said low voltage direct current signal from said signal 

generator circuit to said controllable component" 

Complainant argues that "controlling the application of said low voltage direct current 

signa!," the latter portion of the claim phrase above, does not require a construction. (CIB at 91.) 

Complainant alleges that respondents argue that this term should be limited to "directly causing 

the delivery or non-delivery of the low voltage DC control signal," (CIB at 91; CRB at 49-50), 

and further argues that doing so would be improper. (CIB at 91-92.) 

Respondents argue that the parties agree that the claim phrase "whereby a user of the 

microcomputer may control energization of the electrically powered data processingand storage 

components by controlling the application of said low voltage direct current signal from said 

signal generator circuit to said controllable component," should be given its ordinary meaning, 

(RIB at 29); however, Respondents fail to explain what such ordinary meaning may be. 

Respondents allege that the parties disagree on whether the signal generator must control 

energization of all data processing and storage components, and on whether an AC power switch 

can satisfy the energization limitation. (RIB at 29-31; RRB at 20.) Complainant characterizes 

these alleged disagreements as "strawman arguments" constructed by Respondents. (CRB at 50.) 

The Staff does not construe this claim phrase. 

The ALJ finds that "whereby a user of the microcomputer may control energization of the 

electrically powered data processing and storage components by controlling the application of 

said low voltage direct current signal from said signal generator circuit to said controllable 

component" means what it says, i.e., "the user of the microcomputer may control the supply of 

direct current electrical power to the electrically powered data processing and storage 

components by controlling the delivery of the low voltage direct current signal from the signal 

generator circuit to the controllable component." The ALJ finds that this is the plain meaning of 

65 
said claim phrase, as well as an objective of the invention. The ALl finds no support for 

inserting the language "directly causing" into the construction of the claim and that the parties' 

further alleged disagreements are more appropriately dealt with in the infringement section 

regarding the' 829 Patent. 

E. The '741 Patent 

1. "A method of cooling a computer having a plurality of components and at 

least one variable rate a fan cooling unit" 

The parties dispute whether the preamble of independent claim 1, "[a] method of cooling 

a computer having a plurality of components and at least one variable rate a fan cooling unit," is 

a claim limitation. IBM argues that there is no basis to construe the preamble as a limitation of 

claim 1. (CIB at 25.) More particularly, IBM argues, that ASUS has failed to establish that any 

of the preamble breathes life into the claim to justify departing from the notion that preambles do 

not normally limit claims. ((Id.)) ASUS and the Staff argue that construing the preamble as a 

limitation is the only proper way to adequately describe the invention disclosed and claimed in 

the '741 Patent. (RIB at 57; SIB at 34.) Specifically, ASUS and the Staff argue that the claim 

terms "said components," "the rate," "and "said cooling units" can only be understood in the 

context of the preamble. (RIB at 58; SIB at 34.) ASUS and the Staff also note that the 

specification of the '741 Patent describes the invention as relating to "computer system cooling 

and more patiicularly to automatic speed control of fans for cooling a computer system." ((Id.)) 

"In general, a preamble limits the invention if it recites essential structure or steps, or if it 

is 'necessary to give life, meaning, and vitality' to the claim." Seachange Int'/, Inc. v. C-Cor, 

Inc., 413 F.3d 1361, 1375-76 (Fed. Cir. 2005) (quoting Catilina Mktg. Int'/ v. Coo/savings. com, 

Inc., 289 F.3d 801, 807-08 (Fed. Cir. 2002).) The preamble of claim 1 of the '741 Patent 

66 
describes the claimed method as a method for cooling a computer. (JX-1 ('741 Patent) at 5:51.) 

The preamble further describes the computer as having a "plurality of components" and "at least 

one variable rate [] fan cooling unit." «(Id) at 5:51-53.) The body of claim 1 outlines the 

minimum steps neces;ary to practice the method. The steps involve obtaining a predetermined 

cooling requirement for at least one of "said components" and varying "the rate" of at least one 

of "said cooling units" based on the obtained cooling requirements. «(Id.) at 5:54-57.) The 

preamble provides the only antecedent basis and thus the context essential to understand the 

meaning of the claim terms "components", "rate", and "cooling unit." Further, the specification 

repeatedly states that the invention: (l) "relates to computer system cooling and more 

particularly to automatic speed control of fans used for cooling a computer system;" (2) 

"includes a method of cooling a computer having a plurality of components and at least one 

variable rate cooling unit;" and (3) "includes an apparatus for cooling a computer having a 

plurality of components, the apparatus including at least one variable rate cooling unit." (Id at 

1 :5-9, 1 :64-66,2:2-5 (emphasis .added).) Thus, the ALJ finds that the preamble, including the 

term "computer," limits the scope of the claimed invention. See NTP, Inc. v. Research In Motion, 

Ltd, 392 F.3d 1336, 1358-59 (Fed. Cir. 2004). 

2. "obtaining a predetermined cooling requirement" 

The parties do not address the limitation "obtaining a predetermined cooling 

requirement" as a whole, but rather separately dispute the terms "obtaining" and "predetermined 

cooling requirement." However, as IBM's expert Dr. Polish correctly notes, "obtaining" and 

"predetermined cooling requirement" go hand-in-hand. (See Polish, Tr. at 363: 16-19 ("You are 

obtaining something which was predetermined. So they are of a piece. They go together.").) 

Additionally, ASUS' and the Staffs prosecution history estoppel and disclaimer arguments 

67 
relating to the terms "obtaining" and "predetermined cooling requirement" derive from the same 

statements in the prosecution history. Accordingly, the terms "obtaining" and "predetermined 

cooling requirement" will be addressed together. 

IBM argues that the terms "obtaining" and "predetermined cooling requirement" should 

be construed in accordance with their plain and ordinary meaning as "loading or retrieving 

previously determined information to meet a cooling level output." (eIB at 21.) In support, 

IBM argues that the patent specification describes an example of obtaining a predetermined 

cooling requirement from a thermal table stored in memory to be used to determine the speed of 

the fan. «(Id.)) According to IBM, the term "obtaining" as used in this example refers to loading 

or retrieving the cooling requirement from the thermal table. «(Id)) IBM also argues with 

regard to the term "predetermined" that the specification describes the cooling requirements as 

previously stored as speed values for each bay of a.computer and for each relevant component. 

Additionally, IBM notes that the specification describes the cooling requirement as 

"predetermined" when a manufacturer andlor user has previously determined the cooling 

requirement and stored it prior to the obtaining step of the claim. 

ASUS argues that properly construed the limitation "obtaining" means "acquiring or 

getting, in any way." (RIB at 64.) ASUS asserts that this construction is consistent with the 

term's plain and ordinary meaning. «(Id)) Additionally, ASUS argues that the phrase 

"predetelmined cooling requirement" should be construed as "a cooling requirement that is 

determined in advance and not in real time." «(Id) at 58.) That is, according to ASUS, a cooling 

requirement that is determined in advance and not one based on the current operating state of any 

of the components. (Id.) 

68 
In contrast with IBM's claim construction argument, ASUS argues that the limitation 

"predetermined cooling requirement" does not have a plain and ordinary meaning within the 

context ofthe '741 Patent. ((Id) at 58-59.) ASUS argues that the specification and prosecution 

history clearly indicate that the inventors expressly limited the scope of the limitation. (ld. at 59.) 

In particular, ASUS argues that the specification teaches that the "predetermined cooling 

requirement" for each component is determined before operation of the claimed cooling system. 

(ld.) ASUS also argues that the specification discloses that the fan speed for the computer 

system is determined at computer boot and does not change during system operation, regardless 

of the current temperature or operating state of individual components. (ld. at 60.) ASUS notes 

that the specification discloses that if an unknown component is inserted into an I/O slot, a 

default predetermined cooling requirement must be assigned during system boot or the user must 

. specify a speed value before the speed ofthe fan will be varied. (!d.) ASUS argues that there 

would be no need for a default or user specified fan speed value if the cooling requirement for a 

component could be determined in real time based on changes in the temperature or operational 

state of a component. (Jd.) 

Additionally, ASUS argues that by denigrating the use of temperature sensors to vary the 

speed of a fan and criticizing the method of varying the speed of a fan based upon the amount of 

current drawn from the computer power supply, the patent applicants disclaimed the use of a 

"predetermined cooling requirement" for a component in conjunction with a real-time cooling 

requirement for a component, such as information on the current temperature, speed or amount 

of electrical current drawn by a component. (Id. at 60-61.) Further, ASUS argues that the patent 

applicants, in overcoming a rejection of claim 1 based on the Takahashi and Suzuki references, 

added the limitation "predetermined" and thus clearly and unmistakably differentiated between . 

69 
"sensing the current temperature of the desired area to be cooled" and "using a predetermined 

cooling requirement" to vary the speed of a fan. 

The Staff argues that the term "obtaining" should be construed to mean "acquiring or 

getting without a temperature sensor." (SIB at 37.) The Staff argues that its proposed 

construction of the term "obtaining" is correct because it is broad enough to encompass the steps 

of "querying" and "using" that are explicitly recited in dependant claim 2 of the '741 Patent, but 

narrow enough to exclude the use of temperature sensors that the patent applicant disclaimed 

during patent prosecution. (Id.) With regard to the phrase "predetermined cooling requirement," 

the Staff argues that properly construed the phrase means "an amount of cooling to meet a 

demand that is determined in advance of current operation and that is not dependent on the 

current operating state." (ld. at 39.) The Staff argues that its construction is consistent with the 

language of the claims, the specification and the prosecution history. 

In particular, the Staff argues that the specification discloses that the fans used in the 

claimed computer system are set to a speed to provide an amount of cooling. (ld.) The Staff 

also notes that the specification discloses that "often fans are preset to a predetermined speed at 

the factory to provide a fixed amount of cooling." (ld. at 40.) Additionally, the Staff argues that 

its proposed construction is supported by the disclosure in the specification of the use of a 

thermal table containing cooling requirements that are stored in memory or on a hard disk. (Id.) 

Also, the Staff argues that Figure 3 of the '741 Patent teaches that if the configuration of the 

computer does not change, then the predetermined speed values stored in the thermal table are 

used again. In such a case, the Staff notes that the fan speed will not change even though the 

current operating states of the components may change. (Id. at 41.) Further, the Staff argues that 

there is no disclosure in the specification of any embodiment of the invention that uses a 

70 
temperature sensor to determine the temperatures or current operating states of components in 

the computer system and that the specification explicitly denigrates the use of temperature 

sensors and other variable speed fan systems that depend on the current operating state of 

components inside the computer. (Id.) The Staff also asserts that the prosecution history 

supports it proposed claim construction, arguing that the patent applicants disclaimed the use of 

temperature sensors in distinguishing their invention over the prior art. (Id. at 42-43.) 

It is clear from the language of claim 1 ofthe '741 Patent that in the limitation "obtaining 

a predetermined cooling requirement" the term "predetermined" modifies the phrase "cooling 

requirement." Dependent claim 2 also elucidates the proper construction of the limitation 

"obtaining a predetermined cooling requirement." In particular, dependent claim 2 requires that 

the obtaining step of claim 1 comprises the steps of "querying said components for component 

identifiers" and using said identifiers to obtain cooling requirements." Because dependent 

claims are generally narrower in scope than the independent daims on which they depend, the 

term "obtaining~' in claim 1 should generally be construed broad enough to encompass the 

specific steps of "querying" and "using" in claim 2. See Glaxo Group Ltd. v. Ranbaxy 

Pharmaceuticals, Inc., 262 F.3d 1333, 1336 (Fed. Cir. 2001) ("Dependent claims are generally 

narrower in scope than the claims from which they depend."). IBM's proposed construction of 

the term "obtaining" as "loading or retrieving" is too narrow in scope to encompass the steps of 

"querying" and "using" and thus is disfavored. Additionally, IBM's proposed construction relies 

on statements in the specification describing the preferred embodiment of the invention. 

Because it is gener?-lly impermissible to limit the scope of a claim to a preferred embodiment and 

to read limitations from the specification into the claims, IBM's proposed construction is also 

disfavored for these reasons. See, e.g., Varco, L.P. v. PasonSys. USA Corp., 436 F.3d 1368, 

71 
1373 (Fed. Cir. 2006); RF Delaware, Inc. v. Pacific Keystone Techs., Inc., 326 F.3d 1255, 1263 

(Fed. Cir. 2003). 

The phrase "obtaining a predetermined cooling requirement" is not used in the 

specification. However, the specification does state that "computer systems often utilize one or 

more fans to provide cooling of the electronic equipment" and that "often these fans are preset to 

'a predetermined speed at the factory to provide a fixed amount of cooling."ll (JX-l ('741 Patent) 

at 1 :19-23.) Because we assume the same words are used consistently throughout the patent, the 

applicant's use of the word "predetermined" in the above sentence can aid in the proper 

construction of the limitation "obtaining a predetermined cooling requirement." Phillips v. AWH 

Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) ("claim terms are normally used 

consistently throughout the patent."). Here, the word "predetermined" is used in its commonly 

. understood form to describe something, a speed value in this instance, that was decided 

beforehand. Temporally, the word is used in the above quoted sentence to refer to a speed value 

that was decided prior to the completed manufacture of the electronic equipment Thus, the 

applicant's use of the word "predetermined" in the above sentence supports the Staff s and 

ASUS's proposed constructions that limit the predetermined cooling requirement to cooling 

requirements that are not based on the present operating state of the components being cooled. 

The specification's description of the process for obtaining a cooling requirement is also 

relevant in construing the present limitation. See Philips, 415 at 1315 ("[T]he specification is 

always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single 

best guide to the meaning of a disputed term.")(internal quotations omitted). In particular, the 

specification describes a process whereby when a computer is booted the initial program load 

II It is not surprising that the limitation "obtaining a predetermined cooling requirement" is not explicitly used in the 

written description because the term "predetermined" was added to claim I during the prosecution of the patent. 

72 
read only storage ("IPLROS") queries the computer's I/O slots to determine what option cards 

are present in the computer. (IX-1 (,741 Patent) at 3:58-4:10.) After determining what option 

cards are present, NVRAM is queried to determine if a previous computer configuration is stored 

in memory. (Jd. at 4: 12-14.) If a previous configuration is stored in memory then that previous 

configuration is compared with the current configuration. (Id. at 4:61-65.) If the previous 

computer configuration is the same as the current computer configuration then the specification 

teaches that the previously determined speed values for the computer fans are used again. (Id. at 

4:67-5:2.) If the previous configuration differs from the current configuration or if a previous 

configuration does not exist, then the specification teaches that a thermal table is queried to 

determine the base cooling requirements for each computer bay and each of the components 

therein. (Id. at 4: 19-22.) Based on the values stored in the thermal table, a speed value for each 

fan in the computer is determined. (Jd. at 4:46-51.) Figure 4 of the '741 Patent illustrates 

cooling requirements in the form of speed values that are contained in a thermal table. (See Id. 

Figure 4.) As described above, the specification teaches that the cooling requirements for the 

computer fans are determined based on the types and locations of the components installed in the 

computer, irrespective ofthe current operating state of the components. In fact, IBM's expert Dr. 

Polish conceded that the speed values in the thermal table do not account for how components in 

the computer are actually being used. (Polish, Tr. at 539:23-540:3, 1596:7-12.) 

As previously discussed, the specification discloses that the fan speed is determined when 

the computer is booted because "option cards are generally moved, added or removed while the 

system is turned off." (JX-1 ('741 Patent) at 4:3-5.) According to the specification, when the 

thermal table is queried to determine the cooling requirements for each of the components 

installed in the computer, if there is no corresponding entry in the thermal table for an option. 

73 
card installed in the computer, then the IPLROS will designate a default value or allow the user 

to specify a fan speed for the unknown option card. (See (Id.) at 4:40-43 ("if there is no 

corresponding entry in the thermal table for an option card then the IPLROS will designate a 

default value, preferable full speed, for the unknown option card").) Because there would be no 

need to set a default or user-specified fan speed value if the cooling requirement for a component 

could be determined based on the current operating state of the component, the above passage 

from the specification reinforces that the cooling requirement is not based on the current 

operating state of the component, but rather varied only based on the presence or absence of the 

component. 

Turning to the prosecution history, it is noted that in an Office Action dated October 30, 

1992, the pateJ?t examiner rejected claims 1,6 and 11 under 35 U.S.C. § 102 (b) as anticipated by 

Japanese Application No. 64-77079 to Takahashi. (See JX-2 ('741 File History) at 

IBMOOOOOI59-160.) The patent examiner also rejected claims 1,6, and 11 under 35 U.S.C. § 

103 as obvious in view of Takahashi. and Japanese Patent Application No. 56-196360 to Suzuki. 

(ld.) The Takahashi and Suzuki references disclose cooling systems that use temperature sensors 

tb obtain the cooling requirements of the components to be cooled and then vary, based on the 

temperature readings from the temperature sensors, the amount of cooling directed to the 

components to achieve a desired cooling level. (See JX-2 ('741 File History) at IBMOOOOOI62-

165, IBMOOOOOI83-186.) 

In response to the examiner's rejection, the patent applicants amended the original 

language of claim 1 to add the word "predetermined" so that amended claim 1 read in pertinent 

part "obtaining a predetermined cooling requirement for at least one of said components." «(Id.) 

74 
at lBMOOOOO 192-193.) The applicants explained the significance of the amendment in their 

response stating: 

It is respectively submitted that neither Takahashi nor Suzuki teaches or suggests 

"obtaining a predetermined cooling requirement for at least one of the 

components." Takahashi and Suzuki teach sensing the current temperature of the 

desired area to be cooled. However, the claimed invention is directed to using a 

predetermined cooling requirement. 

(JX~2 ('741 File History) at IBM00000200.) In the above quoted passage, the applicants 

explicitly contrast the predetermined cooling requirement ofthe clamed invention with the 

approach taken by Takahashi and Suzuki in which a cooling requirement is obtained by sensing 

the current temperature of the desired area to be cooled. Thus, based on the narrowing 

amendment of claim 1 and the applicants' comments in response to the examiner's rejections, the 

ALJ finds that the patent applicants clearly and unambiguously distinguished the "predetermined 

cooling requirement" of claim 1 from that which is disclosed by Takahashi and Suzuki. 

Accordingly, the Administrative Law Judge finds that one of ordinary skill in the art at the time 

of the invention would understand from the prosecution history that the limitation "obtaining a 

predetermined cooling requirement" does not include a cooling requirement based on the current 

temperature of the component to be cooled. See Arlington Industries, Inc. v. Bridgeport Fittings, 

Inc.,345 F.3d 1318, 1328 -1329 (Fed. Cir. 2003) ("An amendment or argument made in the 

course of prosecution may also serve as a disclaimer of a particular interpretation of a claim 

term."); see also Ekchian v. Home Depot, Inc., 104 F.3d 1299, 1304 (Fed. Cir. 1997) ("[S]ince, 

by distinguishing the claimed invention over the prior art, an applicant is indicating what the 

claims do not cover, he is by implication surrendering such protection."); Southwall Techs., Inc. 

v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995) ("The prosecution history limits the 

interpretation of claim terms so as to exclude any interpretation that was disclaimed during 

75 
prosecution .... Claims may not be construed one way in order to obtain their allowance and in a 

different way against accused infringers."). 

The patent applicants also stated in response to the patent examiner's § 102 and § 103 

rejections in the October 30, 1992 Office Action that "the claimed invention does not require the 

use of a temperature sensor, which may be inaccurate or may degrade over time, to vary the 

cooling requirements." (JX-2 ('741 File History) at IBM00000200.) Although IBM argues to 

the contrary, the above quoted language clearly and unambiguously states that the claimed 

invention does not require the use of a temperature sensor. Thus, based on the applicants' own 

chosen words, a product that relies on the use of a temperature sensor to vary the cooling 

requirements is not the claimed invention. This conclusion is further supported by the 

specification, which states in describing the various types of prior art variable speed fan systems, 

that: 

One common approach is to utilize a thermistor within the fan hardware to detect 

changing temperature inside the computer and then vary the fan speed 

accordingly .... The difficulty with using a thermistor is that the location of the 

thermistor may impact the accuracy of the temperature reading, the thermistor 

will detect a temperature rise some period of time after the temperature has 

already risen, and thermistors tend to degrade in performance over time. 

(JX-l ('741 Patent) at 1 :33-44.) Thus, based on the applicants' statements in the specification 

denigrating the use of thermistors in cooling systems and the applicants' statement in the 

prosecution history that the present invention does not require the use of temperature sensors, the 

ALJ finds that the patent applicants disclaimed any method or apparatus that relies on a 

temperature sensor to vary the cooling requirements. See Arlington Industries, Inc., 345 F.3d at 

1328 -1329; Honeywell Intern., Inc. v. ITT Industries, Inc., 452 F.3d 1312, 1319-20 (Fed. Cir. 

2006) 

76 
Accordingly, based on the reasons expressed above, the ALl finds that one of ordinary 

skill in the art at the time of the invention would have construed the limitation "obtaining a 

predetermined cooling requirement for at least one of said components" as "getting or acquiring 

a previously decided cooling level for at least one of the components that is not based on the 

current temperature of that component, nor gotten or acquired by a temperature sensor." 

3. "components" 

IBM and the Staff argue that the limitation "components" should be construed in 

accordance with its plain and ordinary meaning as "electric devices that may be inchlded in a 

computer." (CIB at 24; SIB at 44.) ASUS also asserts that the term "components" should be 

given its plain and ordinary meaning. (RIB at 65.) However, ASUS argues that properly 

construed the limitation "components" means "a constituent part." (Id.) 

The plain language of claim 1 indicates that the term "components" refers to components 

that are found in a computer. (JX-l ('741 Patent) at 5:51-52 ("a computer having a plurality of 

components").) Unasserted independent claims 11 and 12 provide additional information about 

the limitation, indicating that "components" include such things as a main processor and memory. 

(See Id at 6:43-44,54-55; see also Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) 

("Because claim terms are normally used consistently throughout the patent, the usage of a term 

in one claim can often illuminate the meaning of the same term in other claims."). Because the 

plain language of the claims describes "components" with some particularity as something that is 

found in a computer and because the examples of components listed in unasserted claims 11 and 

12 reinforce this fact, the plain language of the claims tend to support IBM and the Staffs more 

particularized construction over ASUS's rather broad construction. 

77 
The specification of the '741 Patent also supports IBM and the Staffs proposed 

construction of "components" as "electric devices that may be included in a computer." Notably, 

the specification describes the invention as being directed to overcoming the problems created in 

computer systems by the heat produced by the equipment inside the computer. (See JX-l ('741 

Patent) at 1:10-15.) Under the description of the best mode for carrying out the invention, the 

specification states, after describing the various constituent parts of a computer and the various 

types of options cards that can be utilized therein, that "[ c Jooling is generally required for all 

electronic devices included in the computer box." (Id. at 3 :20-21.) Additionally, the 

specification describes a "component" as a device that can be inserted into an I/O slot, such as a 

graphics adapter. (Id. at 3:35-36 ("1/0 slot 160A with graphic adapter 200 and any component 

inserted into I/O slot 160B").) Further, with reference to Figure 2, the specification describes 

"components" as including such electric devices as main processor 110, main memory 120, 

NVRAM 300, ROM 310, graphics adapter 200, registers 320 and 325, D/A converter 330,power 

supply 340, modem 250 and hard disk 255. (See id. at 3:23-39.) 

Accordingly, based on the specification and plain language of the claims as described 

above, the ALJ finds ASUS ',s proposed construction overly broad and that one of ordinary skill 

in the art at the time of the invention would construe the limitation "components" as "electric 

devices that may be included in a computer." 

4. "varying the rate" 

IBM argues that the limitation "varying the rate" should be construed as meaning 

"controlling the output of a cooling unit between levels." (eIB at 24.) ASUS argues that 

properly construed the term means "changing" or "determining and setting." (RIB at 65.) The 

Staff argues that "varying the rate" means "controlling the speed." (SIB at 44.) 

78 
The plain language of claim 1 indicates that the "rate" being varied is the rate of the fan 

cooling unit. (JX~l ('741 Patent) at 5:56.) According to the claim language, the fan cooling unit 

is the device used to cool the computer system and thus the term "rate" as used to describe the 

fan cooling unit must refer to the "speed" of the fan cooling unit. Such an interpretation 

conforms with the commonly understood, widely accepted meaning of the word "rate." 

Dependent claim 3, which depends from claim 1, further describes the step of "varying the rate" 

in claim 1 as including the steps of: (l) determining the cooling requirements for the components; 

and (2) setting the rate of the cooling units. (!d. at 5:64~6:2.) Thus, pursuant the doctrine of 

claim differentiation, the limitation "varying the rate" in claim 1 should not be construed as 

limited to the steps of determining and setting, else dependent claim 3 would be rendered 

superfluous. See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) ("the presence of 

a dependent claim that adds a particular limitation gi yes rise to a presumption that the limitation 

in question is not present in the independent claim."). In light of dependent claim 3, ASUS's 

proposed construction is disfavored. Similarly, there is nothing in the claim language to suggest 

that the term "rate" should be equated to the word "levels" as suggested by IBM. 

The specification supports the Staff's proposed construction of the limitation "varying the 

rate" as meaning "controlling the speed." Specifically, the specification states that the invention 

relates to "computer system cooling and more particularly to automatic speed control of fans 

used for cooling a computer system." (JX~1 ('741 Patent) at 1 :6~8) (emphasis added). 

Additionally, in discussing the prior art, the specification describes the various prior art 

approaches to varying fan speed to control the temperature of computer components and the 

drawbacks of such approaches, thus reinforcing the notion that "rate" refers to the speed of the 

79 
fan cooling units. (See id. at 1 :10-24-61.) Further, in describing the best mode of the invention, 

the specification states that: 

[e]ach fan's speed is varied based upon the power provided to the fan by the 

power supply. That is, the speed of fan 1 is controlled by the voltage on power 

line 350A and the speed of fan 2 is controlled by the voltage on power line 

350B ... The power supply then provides the designated amount of voltage to 

each of the respective fans thereby controlling the amount of cooling performed 

by that fan. 

(Id. at 3 :40-57 (emphasis added); see also id. at 4:58-60 ("This analog value is then provided to 

the power supply for each fan thereby setting the speed of that fan.") (emphasis added).) 

Accordingly, based on the specification and plain language of the claims as discussed 

above, the ALI finds that one of ordinary skill in the art at the time of the invention would 

construe the limitation "varying the rate" to mean "controlling the speed." 

v. INFRINGEMENT DETERMINATION 

A. Applicable Law 

In a Section 337 investigation, the complainant bears the burden of proving infringement 

of the asserted patent claims by a preponderance of the evidence. Certain Flooring Products, 

Inv. No. 337-TA-443, Commission Notice of Final Determination of No Violation of Section 

337,2002 WL 448690 at 59, (March 22,2002); Enercon GmbHv. Int'l Trade Comm'n, 151 F.3d 

1376 (Fed. Cir. 1998). 

Each patent claim element or limitation is considered material and essential. London v. 

Carson Pirie Scott & Co., 946 F.2d 1534, 1538 (Fed. Cir. 1991). Literal infringement of a claim 

occurs when every limitation recited in the claim appears in the accused device, i. e., when the 

properly construed claim reads on the accused device exactly. Amhil Enters., Ltd. v. Wawa, Inc., 

80 
81 F.3d 1554, 1562 (Fed. Cir. 1996); Southwall Tech. v. Cardinal 10 Co., 54 F.3d 1570, 1575 

(Fed Cir. 1995). 

If the accused product does not literally infringe the patent claim, infringement might be 

found under the doctrine of equivalents. The Supreme Court has described the essential inquiry 

of the doctrine of equivalents analysis in terms of whether the accused product or process 

contains elements identical or equivalent to each claimed element of the patented invention. 

Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17,40 (1997). 

Under the doctrine of equivalents, infringement may be found if the accused product or 

process performs substantially the same function in substantially the same way to obtain 

substantially the same result. Valmont Indus., Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 1043 (Fed. 

Cir. 1993). The doctrine of equivalents does not allow claim limitations to be ignored. Evidence 

must be presented on a limitation-by-limitation basis, and not for the invention as a whole. 

Warner-Jenkinson, 520 U.S. at 29; Hughes Aircraft Co. v. Us., 86 F.3d 1566 (Fed. CiL 1996). 

Thus, if a~ element is missing or not satisfied, infringement cannot be found under the doctrine 

of equivalents as a matter ofIaw. See, e.g., Wright Medical, 122 F.3d 1440,1444 (Fed. Cir. 

1997); Dolly, Inc. v. Spalding & Evenflo Cos., Inc., 16 F.3d 394, 398 (Fed. Cir. 1994); London v. 

Carson Pirie Scott & Co., 946 F.2d 1534, 1538-39 (Fed. Cir. 1991); Becton Dickinson and Co. v. 

C.R. Bard, Inc., 922 F.2d 792, 798 (Fed. Cir. 1990). 

The concept of equivalency cannot embrace a structure that is specifically excluded from 

the scope of the claims. Athletic Alternatives v. Prince Mfg., Inc., 73 F.3d 1573, 1581 (Fed. Cir. 

1996). In applying the doctrine of equivalents, the Commission must be informed by the 

fundamental principle that a patent's claims define the limits of its protection. See Charles 

81 
Greiner & Co. v. Mari-Med. Mfg., Inc., 92 F .2d 1031, 1036 (Fed. Cir. 1992). As the Supreme 

Court has affirmed: 

Each element contained in a patent claim is deemed material to defining the scope 

of the patented invention, and thus the doctrine of equivalents must be applied to 

individual elements of the claim, not to the invention as a whole. It is important 

to ensure that the application of the doctrine, even as to an individual element, is 

not allowed such broad playas to effectively eliminate that element in its entirety. 

Warner-Jenkinson, 520 U.S. at 29. 

Prosecution history estoppel may bar the patentee from asserting equivalents if the scope 

of the claims has been narrowed by amendment during prosecution. A narrowing amendment 

may occur when either a preexisting claim limitation is narrowed by amendment, or a new claim 

limitation is added by amendment. These decisions make no distinction between the narrowing 

of a preexisting limitation and the addition of a new limitation. Either amendment will give rise 

to a presumptive estoppel if made for a reason related to patentability. Honeywell Int '/ Inc. v. 

HamiltonSundstrandCorp., 370 FJd 1131,1139-41 (Fed. Cir. 2004), cert. denied, 545 U.S. 

1127 (2005)(citing Warner-Jenkinson, 520 U.S. at 22,33-34; and Festa Corp. v. Shoketsu ' 

Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 733-34, 741 (2002». The presumption of estoppel 

may be rebutted if the patentee can demonstrate that: (1) the alleged equivalent would have been 

unforeseeable at the time the narrowing amendment was made; (2) the rationale underlying the 

narrowing amendment bore no more than a tangential relation to the equivalent at issue; or (3) 

there was some other reason suggesting that the patentee could not reasonably have been 

expected to have described the alleged equivalent. Honeywell, 370 FJd at 1140 (citing, inter 

alia, Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359 (Fed. Cir. 2003)(en 

banc». "Generalized testimony as to the overall similarity between the claims and the accused 

infringer's product or process will not suffice [to prove infringement under the doctrine of 

82 
equivalents]." Tex. Instruments, Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1567 (Fed. 

Cir. 1996). 

Section 271(b) of the Patent Act prohibits inducement: "[w]hoever actively induces 

infringement of a patent shall be liable as an infringer." 35 U.S.C. § 271(b) (2008). As the 

Federal Circuit stated: 

To establish liability under section 271(b), a patent holder must prove that once 

the defendants knew of the patent, they '~actively and knowingly aid[edJ and 

abett[ed] another's direct infringement." However, "knowledge of the acts 

alleged to constitute infringement" is not enough. The "mere knowledge of 

possible infringement by others does not amount to inducement; specific intent 

and action to induce infringement must be proven." 

DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1305 (Fed. Cir. 2006) (en bane) (citations omitted); 

See also Cross Medical Products, Inc. v. Medtronic So/amor Danek, Inc., 424 F.3d 1293, 1312 

(Fed. Cir. 2005) ("In order to succeed on a claim inducement, the patentee must show, fitst that 

there has been direct infringement, and second, that the alleged infringer knowingly induced 

infringement and possessed specific intent to encourage another's infringement."). Mere 

knowledge of possible infringement by others does not amount to inducement. Specific intent 

and action to induce infringement must be proven. Warner-Lambert Co. v. Apotex Corp., 316 

F.3d 1348, 1363 (Fed. Cir. 2003). In DSU, the Federal Circuit clarified the intent requirement 

necessary to prove inducement. As the court recently explained: 

In DSU Med Corp. v. JMS Co., this court clarified en banc that the specific intent 

necessary to induce infringement "requires more than just intent to cause the acts 

that produce direct infringement. Beyond that threshold knowledge, the inducer 

must have an affirmative intent to cause direct infringement." 

Kyocera Wireless C01p. v. Int'l Trade Comm'n, 545 F.3d 1340-,2008 WL 4553140 (Fed. Cir., 

2008) (citation o~itted). "Proof of inducing infringement requires the establishment of a high 

83 

.". 
level of specific intent." Lucent Techs. Inc. v. Gateway, Inc., 2007 WL 925510, at *2-3 (S.D. 

Cal. 2007) 

Under 35 U.S.C. § 271(c), "[w]hoever offers to sell or sells within the United States or 

imports into the Unites States a component of a patented machine, manufacture, combination, or 

composition, or a material or apparatus for use in practicing a patented process, constituting a 

material part of the invention, knowing the same to be specifically made to or specially adapted 

for use in the infringement of the patent, and not a staple article or commodity suitable for 

substantial non-infringing use, shall be liable as a contributory infringer." 

A seller of a component of an infringing product can also be held liable for contributory 

infringement if: (1) there is an act of direct infringement by another person; (2) the accused 

contributory infringer knows its component is included in a combination that is both patented 

and infringing; and (3) there are no substantial non-infringing uses for the accused component, 

i.e., the component is not a staple article of commerce. Carborundum Co. v. Molten Equip. 

Innovations, Inc., 72 F.3d 872, 876 (Fed. Cir. 1995). 

To prove direct infringement, IBM must prove by a preponderance of the evidence that 

the accused products either literally infringe or infringe under the doctrine of equivalents the 

method of asserted claims of the '852, '829 and '741 Patents. Advanced Cardiovascular Sys., 

Inc. v. Scimed Life Sys., Inc., 261 F.3d 1329, 1336 (Fed.Cir. 2001). Notably, method claims are 

only infringed when the claimed process is performed. Ormco Corp. v. Align Technology, Inc., 

463 F.3d 1299, 1311 (Fed. Cir. 2006). 

84 
B. The '852 Patent 

IBM has accused three (3) basic categories of ASUS accused routers that infringe the 

'852 patent. These groups are: (1) 19 Virtual Server type Routers, (2) the WL-566gM Router, 

and (3) the SL-500 and SL-l 000 Routers (collectively "the Accused Routers"). (CX-2052C at 

p.1-2, Q 164-165; CDX-6.) 

1. Claim 1 and 8 

IBM has accused ASUS of infringement of independent claims 1 and 8 and dependent 

claims 13, 14,22 and 23 of the '852 Patent by the importation, the sale for importation or the 

sale after importation of the Accused Routers in the United States. 

a) Literal Infringement 

IBM asserts that should the ALJ choose to adopt its claim construction, the Accused 

Routers meet each and every limitation of the asserted claims and, as such, literally infringe the 

~852 Patent. (CIB at 63-74;) IBM provides no analysis of the Accused Routers under ASUS's 

. claim construction. (See generally CIB at 63-75; CRB at 32-37.) 

However, as setforth supra in Section IV.C, the ALJ has adopted ASUS's claim 

construction and the parties generally agree that should the ALJ adopts ASUS's claim 

construction, then the Accused Routers do not infringe. (CIB at 63-75 ("This case therefore 

boils down to only the construction of the three claim terms discussed above. If the ALJ agrees 

with IBM's construction of these claims, IBM should prevail in this Investigation for the '852 

Patent. "); RIB at 1 09-113; SIB at 61-63.) IBM has failed to show the Accused Routers meet 

each and every limitation of claim 1 and claim 8 and, therefore, the Accused Routers do not 

literally infringe the' 852 Patent. 

85 
(1) "Routing incoming messages across a boundary of a cluster 

of computer nodes" and 

"gateway node within the cluster of computer nodes" 

Under the ALl's claim construction, the Accused Routers fail to meet the "cluster of 

computer nodes" and "gateway node within the cluster of computer nodes." The ALJ construed 

these claim terms to require, inter alia, that the "cluster of computer nodes share common 

resources and cooperate in doing work" and that "a computer (not just a device) that serves as 

the gateway that is within the cluster of (one of the) computer nodes," respectively. The 

evidence shows that the Accused Routers fail to meet this limitation because _ 

as required by the claims. (RRX-58C 

(Olivier Rebuttal), Q 213, 243; CX-1802C.) Rather, the Accused Routers 

(RRX-58C at Q240.) The Accused Routers. 

(Id 

at Q 242-43.) 

Therefore, the ALJ finds that the Accused Routers fail to share work, tasks and/or 

processes as required and, therefore, fail to meet these limitations of claim 1. 

(2) matching both the software communication protocol port 

number and the software communication protocol number to 

an entry in a message switch memory, the matched software 

communication protocol port number entry being associated 

with a software communication protocol port specific function 

which selects a routing destination for the message from a 

plurality of possible destinations 

The Accused Routers also do not practice the "protocol port specific function" limitation. 

As set forth above, the claim requires that the function actually select the routing destination 

from a plurality of possible destinations. The evidence shows that the Accused Routers, however, 

86 
(RRX-58C Q 265-266.) The Accused Routers 

(Id.) For example, the 

in the Accused Routers, identified by IBM's expert Dr. Francis as practicing this 

limitation, Rather,_ 

_ (Id. at Q268-269.) 

(fd. at Q270.) 

The in the Accused Routers also fails to practice this limitation 

because 

(Id at Q274.) 

The evidence fails to show how this process actually selects a routing destination for the message 

from a plurality of possible destinations. (Id. at Q276-277.) Similarly, the is 

incapable of selecting a routing destination from a plurality of possible destinations because it 

(RRX-58C at Q280; CX-1788C.) 

(RRX-58C at Q281.) The evidence shows that the 

as set forth supra with the other functions of the 

Accused Routers. (RRX-58C at Q286-89.) 

87 
Therefore, the ALl finds that the evidence shows that the Accused Routers do not 

actually select a destination from a plurality of possible destinations and, therefore, fail to meet 

this limitation of claim 1. 

(3) reading a software communication protocol number in a 

message header of the message to recognize an incoming 

message as a software communication protocol port type 

message 

Finally, the Accused Routers fail to practice the limitation of claim 1 of "reading a 

software communication protocol number in a message header of the message to recognize an 

incoming message as a software communication protocol port type message." The ALl 

construed this claim to require the discrete step of recognizing the incoming message as a 

software communication protocol port type message or as a non-software communication 

protocol port type message (in addition t6 reading the software communication protocol number 

in the message header). While the Accused Routers 

(RRX-58C Q 244-45.) Instead, the Accused Routers_ 

(RRX58C at Q245.) The evidence shows that the code relied upon by IBM actually shows that it. 

(RRX-58C at Q251; CX-1788C at 

ASUS_SC027543.) 

Therefore, the ALl finds that the Accused Routers do not recognize the incoming 

message as a software communication protocol port type message or as a non-software 

communication protocol port type message and, therefore, fail to meet this claim limitation of 

claim 1. 

88 
As set forth supra, under the ALJ's claim construction, the Accused Routers fail to these 

limitations of claim 1 and, therefore, the Accused Routers do not literally infringe the' 852 

Patent. 

The parties have treated claim construction for claim 8 as "almost identical to that of 

claim I." (CIB at 73; RPFF 8006-8010; SIB at 62.) As such, since the Accused Routers do not 

practice certain limitations in claim 1, e.g. "routing incoming messages across a boundary of a 

cluster of computer nodes;" "a gateway node within the cluster of computer nodes;" "reading a 

software communication protocol number in a message header of the message to recognize an 

incoming message as a software communication protocol port type message;" and "protocol port 

specific function which selects a routing destination for the message from a plurality of possible 

destinations", they similarly fail to practice certain limitations of claim 8 , e.g. "routing incoming 

messages across a boundary of a cluster of computer nodes;" "a gateway within the cluster of 

computer nodes;" "reading a software communication protocol number in an IP message header 

to recognize an incoming message as a software communication protocol port type message;" 

and "port specific function which selects a routing destination for the message from a plurality of 

possible destinations." Therefore, the Accused Routers do not literally infringe claim 8 of the 

'852 Patent. 

b) The Doctrine of Equivalents 

IBM argues that the Accused Routers also infringe under the doctrine of equivalents and 

that any asserted difference is insubstantial as the Accused Routers are equivalent in structure, 

function, and operation to the invention in the asserted claims of the' 852 Patent and perform 

substantially the same function, in substantially the same way to achieve substantially the same 

results. (CIB at 74.) ASUS and Staff argue that IBM has failed to meet its burden and, instead, 

89 
its expert has only provided conc1usory statements without a full analysis. (RPFF 8997; SIB at 

62.) 

The ALJ finds that IBM has failed to meet its burden of proving infringement under the 

doctrine of equivalents. The analysis performed by IBM's expert, Dr. Francis is cursory at best 

and, instead, relies only upon conc1usory statements. (See CX2052C (Francis Direct) Q 664-

66.)12 Warner-Jenkinson Co. v. Hilton Davis Chern. Co., 520 U.S. 17,40 (1997) (holding that 

"[t]he determination of equivalence should be applied as an objective inquiry on an element-byelement basis"). 

c) Induced Infringement 

IBM argues that ASUS induces infringement of the '852 Patent because each of the 

Accused Routers is sold with user manuals and instructions that provide instructions on how to 

operate the products and encourage ASUS's customers to infringe the '852 Patent. (CIB at 74-

75.) IBM further argues that since ASUS has failed to design around the '852 Patent, despite. 

". 

knowing of its existence, and have not produced any exculpatory opinion of counsel, there is at 

least an adverse inference that they intended to cause infringement. (CIB at 75.) 

ASUS argues that IBM has failed to show that its products directly infringe the '852 

Patent and, therefore, fail to show that ASUS has induced infringement. (RIB at 113.) ASUS 

further argues that the Accused Routers have other modes and uses that IBM does not accuse of 

12 For example, Dr. Francis's testimony on infringement of the Accused Routers under the Doctrine of Equivalents 

is limited to the following analysis: 

It is my opinion that ASUS ~ 22 Accused Products literally meet each and every limitation of the 

asserted '852 patent claims. Any difference that ASUS may asserts exists between its Accused 

Products and the asserted claims would be insubstantial as each ASUS Accused Product is 

equivalent in structure, function and operation to the inventions of the asserted '852 patent claims 

and performs substantially the same function, in substantially the same way to achieve 

substantially the same results the claimed inventions ofthe '852 patent. 

(CX-2052C (Francis Direct) at Q 666.) 

90 
infringement and that the Accused Routers require other components to infringe under IBM's 

constructions. (RIB at 113-114.) ASUS further argues that IBM has failed to show that ASUS 

intends for its customers to infringe the '852 Patent. (RIB at 114.) Staff agrees. (SRB at 18.) 

The ALl finds that ASUS has not induced infringement of the '852 Patent. The ALl has 

found that the Accused Routers do not directly infringe the asserted claims of the' 852 Patent 

either literally or under the doctrine of equivalents. Therefore, as a matter of law, ASUS cannot 

induce infringement without a finding of direct infringement. See Broadcom Corp. v. Qualcomm, 

Inc., 543 F.3d 683, 697 (Fed. Cir. 2008) ("In order to prevail on an inducement claim, the 

patentee must establish 'first that there has been direct infringement, and second that th~ alleged 

infringer knowingly induced infringement and possessed specific intent to encourage another's 

infringement.'" (citing ACCO Brands, Inc. v. ABA Locks Mfr. Co., 501 F.3d 1307, 1312 (Fed. 

Cir. 2007) (quoting Minn. Mining & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1304-05 (Fed. 

Cir. 2002); see also Dynacore Holdings Corp. v. u.s. Philips COIp., 363 F.3d 1263, 1272 

(Fed.Cir.2004) ("Indirect infringement, whether inducement to infringe or contributory 

infringement, can only arise in the presence of direct infringement."). 

Nevertheless, even if IBM had met its burden of proving direct infringement, the ALl 

finds that IBM has failed to meet its burden of proving that ASUS "knowingly induced 

infringement" or that ASUS possessed the requisite specific intent to induce another to infringe. 

IBM argues that since it laid out its assertion of infringement of the '852 Patent to ASUS and 

ASUS failed to design around the' 852 Patent and failed to provide an exculpatory opinion of 

counsel, then those factors are sufficient for the ALl to make an adverse inference that ASUS 

intended to cause infringement. (See CPFF 6.640-6.643.) However, the ALl finds that those 

91 
actions alone are insufficient to warrant an adverse inference of specific intent to induce 

infringement of the' 852 Patent. 

d) Conclusion 

As set forth supra, under the ALl's claim construction, the Accused Routers fail to meet 

certain limitations of claims 1 and 8 and, therefore, do not literally infringe these claims of the 

'852 Patent. The ALJ further finds that IBM has failed to meet its burden of proving 

infringement under the doctrine of equivalents. Finally, since the ALJ found that the Accused 

Routers do not directly infringe the' 852 Patent, the ALJ finds that ASUS has not induced 

infringement of the '852 Patent. 

2. Claims 13, 14, 22 and 23 

Claims 13 and 22 depend on independent claim 8 and claims ·14 and 23 depend on claims 

13 and 22, respectively. Inasmuch as each claim limitation must be present in an accused device 

in order for infringement to be found (either literally or under the doctrine of ~quivalents), a 

device cannot infringe a dependent claim if it does not practice every limitation of the 

independent claim from which it depends. See Warner-Jenkinson Co., 520 U.S. at 40; Monsanto 

Co. v. Syngenta Seeds, Inc., 503 F.3d 1352, 1359 (Fed. Cir. 2007). Furthermore, the Federal 

Circuit explained that: 

One may infringe an independent claim and not infringe a claim dependent on 

that claim. The reverse is not true. One who does not infringe an independent 

claim cannot infringe a claim dependent on (and thus containing all the limitations 

of) that claim. 

Wahpeton Canvas Co., Inc. v. Frontier, Inc., 870 F.2d 1546, 1552 (Fed.Cir.l989). 

92 
As noted above, the Accused Routers do not infringe claim 8 either literally or under the 

doctrine of equivalents. (Supra V .B.1) Therefore, since the Accused Routers do not infringe 

independent claim 8, they cannot infringe dependent claims 13, 14,22 and 23. 

C. The '829 Patent 

IBM has accused four (4) basic categories of ASUS products that infringe the '829 Patent. 

These groups are: (1) ASUS Notebook products, (2) ASUS Eee PC products, (3) ASUS 

Barebones products and (4) ASUS Server Products. (CX2053C at Q 49-50,122; CDX-6.) The 

Eee PCs and the Notebooks are laptop style computers for portable use, while the Barebones and 

Server products are desktop or rack-mount computers that are not designed for portable use. 

(CX2053C at Q122; CDX-6.) In each category of accused products, IBM has designated a 

"representative" product, namely the ASUS Notebook Models A3H and A8M, the ASUS Eee PC 

Model 700 (also called Eee PC 2G_Surf), the ASUS Barebones PC Model V2-PH2, the ASUS 

Server Models RS120-E3 and KFN4-D16/SAS. (CX2053C at Q146; 242; 302; 411.) 

The ALl finds that none of ASUS's accused products infringes independent claim 1 or 

dependent claim 2 of the '829 Patent because no such product meets each and every limitation of 

claim 1. 

1. Claim 1 

a) Literal Infringement 

(1) "microcomputer" 

As set forth in Section IV.D, supra, the ALl construed this claim term to mean "a 

personal computer system unit having a system processor, electrically powered data processing 

and storage components, a motherboard or system planar to electrically connect the components 

together, and a power supply." In order to infringe claim 1 of the' 829 Patent, an accused 

93 
product must contain each of the foregoing elements. Here, the evidence shows that the ASUS 

Eee PCs and ASUS Notebooks meet this claim limitation. (CX-2O'53C at Q248, 310'; CX-87; 

CX-539C; CX-IO'86C; CX-1348.) However, the evidence shows that the ASUS Servers and 

Barebones PCs do not meet this claim limitation unless they are "fully assembled."J3 (CX2053C at Q 153,419; CX-15O'O'C at ASUS_SCSO'O'I4792; CX-15O'2; CX-15O'6C; CX-16O'4.) 

The evidence further shows that the ASUS serverboards do not meet this claim limitation 

because they do not have a power supply. (RRX-59C at Q 184,20'2; Phinney, Tr. 715:15-

716:21.) 

(2) "pulse width modulation switching power supply for 

connection with an alternating current electrical main supply 

and for supplying direct current electrical power" 

As set forth in Section IV.D, supra, the ALl found that the term "pulse width modulation 

switching power supply" is not a novel concept as presented in the' 829 Patent specification and 

also found that, in the prior art context, the term means "a power supply, the operation of which 

is controlled by switching the supply voltage to the power supply, i. e., the electrical power from 

an alternating current electrical main supply, on and off." The ALl then construed the term 

"pulse width modulation switching power supply," as the term is used in the '829 Patent, to 

mean "a power supply, which has a controllable component and a signal generator circuit, the 

operation of which is controlled by said controllable component and said signal generator 

circuit." Based on the ALl's constructions the term "power supply," "pulse width modulation 

switching power supply," as used in the' 829 Patent, essentially means "a device which convelis 

electrical power from an available line voltage and current, i. e., alternating current electrical 

main supply, to the direct voltage and current required to operate a microcomputer, which 

13 IBM accuses ASUS of contributing to the infringement of the' 829 Patent through the sale of its Barebones pes 

and Servers. This will be dealt with infi'a in the discussion on induced and contributory infringement. 

94 
supplies electrical power to electrically powered data processing and storage components of a 

microcomputer, which has a controllable component and a signal generator circuit, and the 

operation of which is controlled by said controllable component and said signal generator 

circuit." 

The plain language makes it clear that, in order to infringe, an accused product must have 

a power supply that contains both a controllable component and a signal generator circuit in 

order to meet the pulse width modulation switching power supply limitation of claim 1, and that 

said power supply must convert alternating current from the electrical main supply to the direct 

current required to operate the microcomputer. 

The ALJ finds that none of ASUS's accused products meet the pulse width modulation 

switching power supply limitation of the claim because the power supplies identified by IBM's 

expert, Dr. Phinney, 

as required by the claim. (RRX-59C at Q 145, 160, 179.) Specifically, 

the ALJ finds that the evidence shows that ASUS's Accused EeePC, Accused Notebook, and 

Accused Barebones products have 

(RRX 59C at Q145, 160, 179.) In addition, it is unclear to the ALJ, 

based on the evidence presented, whether any of the accused products contains both a 

controllable component and a signal generator circuit. IBM's argument that an external AC 

adapter and "power supply components" that are located within the computer "together are the 

PWM switching power supply," (CIB at 94, 100), is not well-taken. Thus, the ALJ finds that . 

these accused products fail to meet this claim limitation. 

95 
As found above, the ASUS Accused serverboards do not have a power supply. (.RRiX59C at Q 184,202; Phinney, Tr. 715:15-716:21.) Therefore, the ALJ finds that it is impossible 

for these products to meet this claim limitation. 

(3) "a controllable component for responding to the presence 

and absence of a low voltage direct current electrical signal by 

enabling and disabling the supply of electrical power to said 

data processing and storage components" 

As set forth in Section IV.D, supra, the ALJ construed the controllable component 

limitation to mean "a component of the pulse width modulation switching power supply, which, 

upon receiving a low voltage direct current electrical signal, supplies direct current electrical 

power to the electrically powered data processing and storage components." The ALJ found that 

there is nothing in the' 829 Patent to limit the controllable component to receiving alternating 

current from the electrical main supply. Thus, in order to infringe this limitation of claim 1, an 

accused product must contain a controllable component that is a component of the power supply 

of claim 1. Said controllable component may receive either alternating current and voltage or 

direct current and voltage. 

As set forth in Section IV.D, supra, the ALJ also found that the low voltage direct current 

signal is "an electrical signal delivered to the controllable component from the signal generator 

circuit, which signal is derived from the 110 volt 60 hertz alternating current electrical main 

supply, and which signal is lower voltage and current than said main supply." Thus, in order to 

infringe this limitation of claim 1, an accused product must contain a controllable component 

that is a component of the. power supply of claim 1 and it must receive a signal from the signal 

generator circuit that is lower voltage and current than that of the alternating current main supply. 

In addition, upon receiving said signal, said controllable component must supply direct current 

electrical power to the electrically powered data processing and storage components. 

96 
ASUS argues that its Accused Eee PC and Accused Notebook products do not infringe 

because 

(RIB at 38.) ASUS also 

argues that its Accused Barebones and Accused Server products do not infringe because. 

(RIB at 38.) 

The ALJ finds that the components alleged by IBM to be the "controllable component" in 

the Accused Eee PC and Accused Notebook products 

Specifically, IBM identified the DC/DC converter in said accused products as the "controllable 

component" and the evidence shows that the DC/DC converters -. 

(RRX-59C at Q145, 152, 155, 171, 174; RX-500 at 50; RX-502C at 41.) Because the 

controllable component of claim 1 of the' 829 Patent may receive either alternating current and 

voltage or direct current and voltage, this characteristic of the alleged controllable components 

does not prevent them from infringing the controllable component limitation of the claim. 

However, it is unclear to the ALJ, based on the evidence presented, whether any of the alleged 

controllable components is actually a component of a power supply of an accused product that 

meets the power supply limitation of the claim. Nor is it clear whether any of the alleged 

controllable components receives a signal from the signal generator circuit. Therefore, these 

products do not meet this claim limitation. 

The ALJ also finds that the components alleged by IBM to be the "controllable 

component" in the Accused Barebones and Accused Server products 

97 
(RRX-59C at Q145, 152, 155, 171, 174, 190, 

208-209.) Specifically, IBM identified the ATX power supply in said accused products as the 

"controllable component," which allegedly 

(RRX-59C at Q190, 191; 208; 209; RX-504 at 2.) The 

evidence shows that the A TX power supply 

_. (RRX-59C at Q191; 209; RX-504 at 2.) This characteristic of the alleged 

controllable components does not necessarily prevent them from infringing the controllable 

component limitation of the claim - as construed, the controllable component must supply direct 

current electrical power to the electrically powered data processing and storage components. It 

is questionable whether the presence of a DC/DC converter between the direct current being 

supplied by the controllable component and the data processing and storage components bears on 

infringement. However, the ALJ need not decide that question because, again, it is unclear to the 

ALJ, based on the evidence presented, whether any of the alleged controllable components is 

actually a component of a power supply of an accused product that meets the power supply 

limitation of the claim. Nor is it clear whether any of the alleged controllable components 

receives a signal from the signal generator circuit. Therefore, these products do not meet this 

claim limitation. 

(4) "a signal generator circuit operatively connected with sai£l 

controllable component and with an alternating current 

electrical main supply for controllably deriving from the main 

supply a low voltage direct current signal for delivery to said 

controllable component" 

As set forth in Section IV.D, supra, the ALJ construed the signal generator circuit 

limitation to mean "a circuit, which is operatively connected to both the controllable component 

98 
and the alternating current electrical main supply, and which uses a transformer to controllably 

derive a low voltage direct current signal from said main supply for delivery to said controllable 

component." The AL] further found the plain language of the claim is clear with respect to this 

limitation, meaning that the signal generator circuit derives a low voltage direct current signal 

from the alternating current electrical main supply; the signal generator circuit does not receive 

direct current and voltage from the alternating current main supply. 

The AL] finds that none of ASUS's accused products meet this claim limitation because 

the circuit identified by IBM's expert, Dr. Phinney, as the "signal generator" receives direct 

current voltages and not alternating current voltage, as required by the claim. (RRX-59C at 

Q145, 147-48,66-67, 185-86,203-04.) Specifically, for the Accused Eee PC and Accused 

Notebook products, Dr. Phinney identified 

as the "signal generator circuit." This circuit receives various direct current 

voltages from a direct current power supply, not alternating current voltages from the alternating 

main supply. (RRX-59C at Q147-148 (stating, 

(emphasis in 

original); RRX-59C at Q166-67; RX-269; RX-502 at 17; RX-500 at 14.) The power supplies of 

these products receive direct current voltage from an AC adapter, not alternating current from the 

main supply. Therefore, these products do not meet this claim limitation because they do not 

controllably derive a low voltage direct current signal from said AC main supply. 

99 
For the Accused Barebones and Accused Server products, Dr. Phinney identified. 

as the "signal generator circuit," which also 

receives various direct current voltages from a direct current power supply, not alternating 

current voltages from the alternating current main supply. (RRX-59C at Q185-186 (stating, 

(emphasis in original»; RRX-59C at Q203-204; RX-504 at 2.) 

For the same reasons set forth for the Eee PC and Accused Notebook products, these products 

also do not meet this claim limitation because they do not controllably derive a low voltage 

direct current signal from said AC main supply. 

b) Doctrine of Equivalents 

. IBM argues that the accused prouucts also infringe under the doctrine of equivalents and 

that any asserted difference is insubstantial because the accused products are equivalent in 

structure, ftinction, and operation to the invention in the asserted claims of the' 829 Patent and 

because they perform substantially the same function, in substantially the same way, to achieve 

substantially the staine results. (CIB at 114-116.) ASUS and the Staff argue that IBM has failed 

to meet its burden because IBM's expert, Dr. Phinney, provided only conclusory statements 

without a full analysis. (RIB-40-41; SIB at 29.) 

The ALI finds that IBM has failed to meet its burden of proving infringement under the 

doctrine of equivalents. The analysis performed by Dr. Phinney is cursory at best and relies 

upon conclusory statements. (See CX2053C (Phinney Direct) Q 232; 300; 410; 509.) Dr. 

Phinney failed to offer a complete analysis of how each accused product performs the same 

function as the invention of claim 1 of the '829 Patent, in substantially the same way, to achieve 

100 
substantially the same results. Warner-Jenkinson Co., 520 U.S. at 40 (holding that "[t]he 

determination of equivalence should be applied as an objective inquiry on an element-by-element 

basis.") In particular, Dr. Phinney and IBM fail to address whether a signal generator circuit that 

receives direct current voltages from a direct current power supply is equivalent to a signal 

generator that receives alternating current voltages from an alternating current main supply. 

Therefore, the AL] finds that the accused products do not infringe the asserted claims of the '829 

Patent under the doctrine of equivalents. 

c) Induced and Contributory Infringement 

IBM argues that ASUS induces infringement ofthe '829 Patent because ASUS's 

Accused Barebones and Accused Server products are sold with user manuals that provide 

instructions on how to install CPU and memory components and that allegedly encourage 

ASUS's customers to infringe the '829 Patent. (CIB at 116.) IBM further argues that ASUS 

knew of the existence of the '829 Patent, yet did nothing to change any of its products. (CIB at 

116.) 

In addition, IBM asserts that ASUS contributes to infringement of the' 829 Patent 

through the sale of its Accused Barebones and Accuser Server products. (CIB at 117.) IBM 

argues that the Accused Barebones and Server products are a material part of a finished 

microcomputer, are made for use in a finished microcomputer, and have no non-infringing uses. 

(CIB at 117-118.) 

ASUS argues that IBM has failed to show that ASUS's products directly infringe the 

'829 Patent; therefore, IBM has also failed to show that ASUS induce infringement of the' 829 

Patent. (RIB at 42.) ASUS argues that the Accused Barebones and Accused Server products can 

be used in a non-infringing manner. (RIB at 42.) ASUS further argues that IBM has failed to 

101 
show that ASUS intends for its customers to infringe the '829 Patent. (RIB at 43.) The Staff 

agrees with ASUS. (SRB at 7.) 

The ALI finds that ASUS has not induced or contributed to the infringement ofthe '829 

Patent. Regarding the ASUS Servers and Barebones PCs, the ALI finds that IBM has failed to 

meet its burden of showing that, even if these products are "fully assembled", then they meet all 

the requirements of a "microcomputer" as construed by the ALJ. Furthermore, even assuming 

that the fully assembled ASUS Servers and Barebones PCs met the microcomputer limitation, as 

detailed supra, these products fail to meet other limitations of claim 1. 

The ALI has found, supra, that none of ASUS's accused products directly infringe the 

asserted claims of the' 829 Patent either literally or under the doctrine of equivalents. As a 

matter oflaw, ASUS cannot be found to induce or contribute to the infringement ofthe '829 

Patent without a finding of direct infringement. See Broadcom Corp., 543 F.3d at 697 (stating, 

"In order to prevail on an inducement claim, the patentee must establish 'first that there hac;; been 

direct infringement, and second that the alleged infringer knowingly induced infringement and 

possessed specific intent to encourage another's infringement."'); see also Dynacore Holdings 

Corp. v. u.s. Philips Corp., 363 F.3d 1263, 1272 (Fed.Cir.2004) ("Indirect infringement, 

whether inducement to infringe or contributory infringement, can only arise in the presence of 

direct infringement."). 

d) Conclusion 

As set forth supra, the ALI finds that ASUS' s Accused Eee pes, Accused Notebooks, 

Accused Barebones, and Accused Server products each fail to meet certain limitations of claim 1 

of the' 829 Patent and, therefore, do not literally infringe this claim. The ALI further finds that 

IBM has failed to meet its burden of proving infringement under the doctrine of equivalents. 

102 
Finally, because the accused products do not directly infringe the '829 Patent, the AL] finds that 

ASUS has not induced infringement or contributed to the infringement of the' 829 Patent. 

2. Claim 2 

Claim 2 depends on independent claim 1. As noted above, the accused products do not 

infringe claim 1 either literally or under the doctrine of equivalents. (Supra V.C.1.) Therefore, 

since the accused products do not infringe independent claim 1, they cannot infringe dependent 

claim 2. See Warner-Jenkinson Co., 520 U.S. at 40; Monsanto Co., 503 F.3d at 1359. 

D. The '741 Patent 

IBM accuses ASUS' notebook computers, servers, barebones computers, motherboards 

and graphic cards of infringing claim 1 of the '741 Patent. (See CX-2054 (Polish Wit. Stat.) at 

~~ 45-48; see also CDX-6; CDX-175; CDX-175A.) IBM accuses more than 1000 products of 

infringement. (Id. at ~ 44.) Because IBM accuses such a large number of products of . 

infringement, IBM's expert Dr. Polish grouped the accused products for purposes of analyzing 

infringement according to their common characteristics into the following categories: (1) Eee 

PCs; (2) Notebooks; (3) VGA graphic cards; (4) motherboards; (5) Barebones; and (6) Servers. 

(Id. at ~~ 43 -44.) IBM bears the burden of proof of infringement and, thus, it makes the most 

sense to address IBM's infringement arguments in the same manner as IBM's expert Dr. Polish. 

Accordingly, IBM's infringement contentions will be analyzed based on the above six categories 

of accused products. 

1. Claim 1 

a) Literal Infringement 

(1) Eee PCs 

103 
IBM accuses ASUS's Eee PCs ofliterally infringing claim 1 of the '741 Patent. (CIB at 

27.) To prove literal infringement~ IBM must show that an Eee PC practices each of the steps of 

the claimed method. See Franks Casing Crew & Rental Tools, Inc. v. Weatherford Int'l, Inc., 

389 F.3d 1370, 1378 (Fed.Cir.2004) ("Literal infringement requires that each and every 

limitation set forth in a claim appear in an accused product.")(intemal citation omitted). In 

addition, because the preamble of claim 1 has been construed as a limitation, IBM must show 

that the accused products practice the method of claim 1 to cool a computer having a plurality of 

components and at least one variable rate fan cooling unit. (Id.) 

An Eee PC is a notebook computer containing multiple components, includmg, but not 

limited to a CPU, motherboard, power supply, hard drive and variable rate cooling fan. (CX2054C (Polish Wit. Stat.) at ~ 118.) Each Eee PC also includes a basic input output system 

(BIOS) and ASUS proprietary fan control source code that contains fan control functionality. 

(Id.) The undisputed evidence of record shows that an Eee PC uses a temperature sensor. 

to vary the rate of the fan. (See RRX-060C (Stevenson 

Reb. Wit. Stat.) at ~~ 119, 143, 145; CX-2054 (Polish Wit. Stat.) at ~ 157.) The evidence also 

undisputedly shows that 

(RRX-060C (Stevenson Reb. Wit. Stat.) at ~ 143; CX-2054 (Polish 

Wit. Stat.) at ~ 157 

IBM's expert Dr. Polish admitted at the hearing that in 

order to implement the cooling system in the accused Eee PCs the temperature sensor is required. 

Specifically, Dr. Polish testified: 

Q. Let's move on to predetermined cooling requirement. So we have 

established this already, but the accused products in this case, the accused 

products, you can agree that in all of the accused products, the temperature sensor 

is required to vary the speed of the fan. Correct? 

104 
A. The way the code is written in the ASUS products, yes. 

Q. If you didn't have the temperature sensor, then the cooling system 

wouldn't work? 

A. Right, the code that's on the ASUS products all require temperature 

sensors in order to function ... With the one exception of the VGA cards that can 

do it based upon operating mode. 

(Polish Tr. at 404:2-17.) 

The limitation "obtaining a predetermined cooling requirement" of claim 1 of the '741 

Patent has been construed herein to mean "getting or acquiring a previously decided cooling 

level for at least one of the components that is not based on the current temperature of that 

component, nor gotten or acquired through the use ofa temperature sensor." (Supra at IV.E.) 

However, as discussed above, the evidence of record shows that a temperature sensor is required 

in order to determine the cooling level used to vary the fan in ASUS' accused Eee pes. 

Additionally, the evidence shows that the cooling level in an Eee pe is based on the current 

temperature of the component being cooled. Accordingly, the ALl finds that ASUS' accused 

Eee pes do not practice the "obtaining a predetermined cooling requirement" step of claim 1 of 

the '741 Patent. Thus, the ALl finds that ASUS' accused Eee pes do not literally infringe claim 

1 ofthe '741 Patent. 

(2) N otcbooks 

IBM accuses ASUS Notebook computers of literally infringing claim 1 of the '741 Patent. 

(eIB at 29.) To prove literal infringement, IBM must show that a notebook computer practices 

each of the steps of the claimed method. Franks Casing Crew & Rental Tools, Inc., 389 F.3d at 

1378. In addition, because the preamble of claim 1 has been construed as a limitation, IBM must 

105 
show that the accused products practice the method of claim 1 to cool a computer having a 

plurality of components and at least one variable rate fan cooling unit. (!d.) 

The ASUS Notebook computers are portable computers containing multiple components, 

including, but not limited to a CPU, motherboard, power supply, hard drive and variable rate 

cooling fan. (CX-2054C (Polish Wit. Stat.) at ~ 194.) Each notebook also includes a BIOS and 

ASUS proprietary fan control source code that contains fan control functionality. (ld.) The 

undisputed evidence of record shows that the ASUS Notebook computers use a temperature 

sensor to vary the rate of the fan. (See RRX-060C 

(Stevenson Reb. Wit. Stat.) at ~~ 119, 178-180; CX-2054 (Polish Wit. Stat.) at ~~ 225,248,269.) 

The evidence also shows that the required fan speed is based on 

(RRX-060C (Stevenson Reb. Wit. Stat.) at ~~ 178-180; CRRPFF 

5752.09,5752.15.) IBM's expert Dr. Polish admitted at the hearing that in order to implement 

the cooling system in the ASUS Notebook computers the temperature sensor is required. 

Specifically, Dr. Polish testified: 

Q. Let's move on to predetermined cooling requirement. So we have 

established this already, but the accused products in this case, the accused 

products, you can agree that in all of the accused products, the temperature sensor 

is required to vary the speed of the fan. Correct? 

A. The way the code is written in the ASUS products, yes. 

Q. If you didn't have the temperature sensor, then the cooling system 

wouldn't work? 

A. Right, the code that's on the ASUS products all require temperature 

sensors in order to function ... With the one exception of the VGA cards that can 

do it based upon operating mode. 

(Polish Tr. at 404:2-17.) 

106 
The limitation "obtaining a predetermined cooling requirement" of claim 1 of the '741 

Patent has been construed herein to mean "getting or acquiring a previously decided cooling 

level for at least Oi1e of the components that is not based on the current temperature of that 

component, nor gotten or acquired through the use of a temperature sensor." (Supra at IV.E.) 

However, as discussed above, the evidence of record shows that a temperature sensor is required 

in order to determine the cooling level used to vary the fan in the ASUS Notebook computers. 

Additionally, the evidence shows that the cooling level in each of the ASUS Notebook 

computers is based on the current temperature of the component being cooled. Accordingly, the 

ALJ finds that the accused ASUS Notebook computers do not practice the "obtaining a 

predetermined cooling requirement" step of claim 1 ofthe '741 Patent. Thus, the ALJ finds that 

the ASUS Notebook computers do not literally infringe claim 1 of the '741 Patent. 

(3) VGA Graphic Cards 

IBM accuses ASUS's VGA graphic card products ofliterally infringing claim 1 of the 

'741 Patent. (CIB at 31.) To prove literal infringement, IBM must show that the accused VGA 

graphics cards practice each of the steps of the claimed method. Franks Casing Crew & Rental 

Tools, Inc., 389 F.3d at 1378. In addition, because the preamble of claim 1 has been construed as 

a limitation, IBM must show that the accused products practice the method of claim 1 to cool a 

computer having a plurality of components and at least one variable rate fan cooling unit. (Id.) 

The specification ofthe '741 Patent differentiates between a "computer" and a 

"component" and explicitly identifies a graphics adaptor as a component. (See JX-l at 2:57-65, 

3:34-35, Figs. 1,4.) The accused ASUS VGA graphics cards cannot be both a "computer" and 

one of the "plurality of components" included in a computer and, thus, cannot satisfy the 

limitation of claim 1 requiring "a computer having a plurality of components." (See RRX-060C 

107 
(Stevenson Reb. Wit. Stat.) at ~ 214; Polish Tr. at 403 :6-11.) Additionally, the accused graphics 

cards cannot perform a "method for cooling a computer." (RRX-060C (Stevenson Reb. Wit. 

Stat.) at ~ 214; Polish Tr. at 401:12-14.) 

Accordingly, the ALl finds that the accused VGA graphics cards do not satisfy all the 

limitations of claim 1 and, therefore, do not literally infringe claim 1 of the '741 Patent. 

(4) Motherboards 

IBM accuses ASUS's motherboard products ofliterally infringing claim 1 ofthe '741 

Patent. (CIB at 33.) To prove literal infringement, IBM must show that the accused VGA 

graphics cards practice each ofthe steps of the claimed method. Franks Casing Crew & Rental 

. Tools, Inc., 389 F.3d at 1378. In addition, because the preamble of claim 1 has been construed as 

a limitation, IBM must show that the accused products practice the method of claim 1 to cool a 

computer having a plurality of components and at least one variable rate fan cooling unit. (ld.) 

The evidence of record shows that the accused motherboards shipped to the United States . 

do not include a CPU or a variable rate fan. (RRX-060C (Stevenson Reb. Wit. Stat.) at ~~ 259-

260; Stevenson Tr. at 1282:6-12.) Without a CPU, the accused motherboards cannot run the Qfan software that IBM asserts performs the method of claim 1. (RRX-060C (Stevenson Reb. Wit. 

Stat.) at ~ 259.) Additionally, without a variable speed fan, the accused motherboards do not 

satisfy the limitation of claim 1 of the '741 Patent requiring "at least one variable rate fan 

cooling unit." 

Further, the evidence of record indicates that the accused motherboards, when operational 

in a computer with a CPU and variable speed fan, use a temperature sensor 

to vary the rate of the fan. (See RRX-060C (Stevenson Reb. Wit. Stat.) at 

~~ 119,262.) 

108 
IBM's expert Dr. Polish admitted at the hearing that in order to implement 

the cooling system in the accused motherboards a temperature sensor is required. Specifically, 

Dr. Polish testified: 

Q. Let's move on to predetermined cooling requirement. So we have 

established this already, but the accused products in this case, the accused 

products, you can agree that in all of the accused products, the temperature sensor 

is required to vary the speed of the fan. Correct? 

A. The way the code is written in the ASUS products, yes. 

Q. If you didn't have the temperature sensor, then the cooling system 

wouldn't work? 

A. Right, the code that's on the AStlS products all require temperature 

sensors in order to function ... With the one exception of the VGA cards that can 

do it based upon operating mode. 

(Polish Tr. at 404:2-17.) 

The limitation "obtaining a predetermined cooling requirement" of claim 1 of the '741 

Patent has been construed herein to mean "getting or acquiring a previously decided cooling 

level for at least one of the components that is not based on the current temperature of that 

component, nor gotten or acquired through the use of a temperature sensor." (Supra at IV.E.) 

However, as discussed above, the evidence of record shows that a temperature sensor is required 

in order to determine the cooling level used to vary the fan in ASUS's accused motherboards. 

Additionally, the evidence shows that the cooling level is based on the current temperature of the 

component being cooled. Accordingly, the ALJ finds that ASUS's accused motherboards do not 

practice the "obtaining a predetermined cooling requirement" step of claim 1 of the '741 Patent. 

Additionally, because the motherboards are shipped without a CPU and variable speed fan, the 

AU finds that ASUS' s accused motherboards do not practice a "method for cooling a computer 

109 
having a plurality of components and at least one variable rate fan cooling unit." Because the 

accused motherboards do not satisfy every limitation of asserted claim 1, the ALJ finds that 

ASUS's accused motherboards do not literally infringe claim 1 of the '741 Patent. 

(5) Servers 

IBM accuses ASUS's servers ofliterally infringing claim 1 of the '741 Patent. (CIB at 

34.) To prove literal infringement, IBM must show that the accused servers practice each of the 

steps of the claimed method. Franks Casing Crew & Rental Tools, Inc., 389 F.3d at 1378. In 

addition, because the preamble of claim 1 has been construed as a limitation, IBM must show 

that the accused products practice the method of claim 1 to cool a computer having a plurality of 

components and at least one variable rate fan cooling unit. (Id.) 

The evidence of record shows that the accused servers shipped to the United States do not 

include a CPU and in many instances do not include a variable rate fan. (RRX~060C (Stevenson 

Reb. Wit. Stat.) at ~~ 292~293; Polish Tr. 500:5-13.) 

Further, the evidence of record indicates that the accused servers, when operational with 

a CPU and variable speed lan, use a temperature sensor 

_ to vary the rate of the fan. (See RRX-060C (Stevenson Reb. Wit. Stat.) at ~~294-295.) 

IBM's expert Dr. Polish 

110 
admitted at the hearing that in order to implement the cooling system in the accused servers a 

temperature sensor is required. Specifically, Dr. Polish testified: 

Q. Let's move on to predetermined cooling requirement. So we have 

established this already, but the accused products in this case, the accused 

products, you can agree that in all of the accused products, the temperature sensor 

is required to vary the speed of the fan. Correct? 

A. The way the code is written in the ASUS products, yes. 

Q. If you didn't have the temperature sensor, then the cooling system 

wouldn't work? 

A. Right, the code that's on the ASUS products all require temperature 

sensors in order to function ... With the one exception of the VGA cards that can 

do it based upon operating mode. 

(Polish Tr. at 404:2-17.) 

The limitation "obtaining a predetermined cooling requirement" of claim 1 of the '741 

Patent has been construed herein to mean "getting or acquiring a previously decided cooling 

level for at least one of the components that is not based on the current temperature of that 

component, nor gotten or acquired through the use of a temperature sensor." (Supra at IV.E.) 

However, as discussed above, the evidence of record shows that a temperature sensor is required 

in order to determine the cooling level used to vary the fan in ASUS' accused servers. 

Additionally, the evidence shows that the cooling level is based on the current temperature of the 

component being cooled. Accordingly, the ALJ finds that ASUS's accused servers do not 

practice the "obtaining a predetermined cooling requirement" step of claim 1 of the '741 Patent. 

Additionally, because the servers are shipped without a CPU and many without a variable speed 

fan, the ALJ finds that ASUS's accused servers do not practice a "method for cooling a computer 

having a plurality of components and at least one variable rate fan cooling unit." Because the 

111 
accused servers do not practice every limitation of asserted claim 1, the ALJ finds that ASUS' s 

accused servers do not literally infringe claim 1 of the '741 Patent. 

(6) Barebones 

IBM accuses ASUS's barebones computers of literally infringing claim 1 of the '741 

Patent. (CIB at 35.) To prove literal infringement, IBM must show that the accused servers 

practice each of the steps of the claimed method. Franks Casing Crew & Rental Tools, Inc., 389 

F.3d at 1378. In addition, because the preamble of claim 1 has been construed as alimitation, 

IBM must show that the accused products practice the method of claim 1 to cool a computer 

having a plurality of components and at least one variable rate fan cooling unit. (Id.) 

The evidence of record shows that the accused barebones computers shipped to the 

United States do not include a CPU and in many instances do not include a variable rate fan. 

(RRX-060C (Stevenson Reb. Wit. Stat.) at ~~ 322-323.) 

Further, the evidence of record indicates that the accused servers, when operational with 

a CPU and variable speed fan, use a temperature sensor 

_ to vary the rate of the fan. (See RRX-060C (Stevenson Reb. Wit. Stat.) at ~ 324.) • 

IBM's expert Dr. Polish admitted at the 

hearing that in order to implement the cooling system in the accused barebones computers a 

temperature sensor is required. Specifically, Dr. Polish testified: 

112 
Q. Let's move on to predetermined cooling requirement. So we have 

established this already, but the accused products in this case, the accused 

products, you can agree that in all of the accused products, the temperature sensor 

is required to vary the speed of the fan. Correct? 

A. The way the code is written in the ASUS products, yes. 

Q. If you didn't have the temperature sensor, then the cooling system 

wouldn't work? 

A. Right, the code that's on the ASUS products all require temperature 

sensors in order to function ... With the one exception of the VGA cards that can 

do it based upon operating mode. 

(Polish Tr. at 404:2-17.) 

The limitation "obtaining a predetermined cooling requirement" of claim 1 of the '741 

Patent has been construed herein to mean "getting or acquiring a previously decided cooling 

level for at least one of the components that is not based on the current temperature of that 

co.mponent, nor gotten or acquired through the use of a temperature sensor." (Supra at lV.E.) 

However, as discussed above, the evidence of record shows that a temperature sensor is required 

in order to determine the cooling level used to vary the fan in ASUS' s accused barebones 

computers. Additionally, the evidence shows that the cooling level is based on the current 

temperature ofthe component being cooled. Accordingly, the ALJ finds that ASUS's accused 

barebones computers do not practice the "obtaining a predetermined cooling requirement" step 

of claim 1 of the' 741 Patent. Additionally, because the barebones computers are shipped 

without a CPU and many without a variable speed fan, the ALJ finds that ASUS' s accused 

barebones computers do not practice a "method for cooling a computer having a plurality of 

components and at least one variable rate fan cooling unit." Because the accused servers do not 

practice every limitation of asserted claim I, the ALJ finds that ASUS' s accused barebones 

computers do not literally infringe claim 1 of the '741 Patent. 

113 
b) Doctrine of Equivalents 

IBM argues that all of the accused products infringe asserted claim 1 of the '741 Patent 

under the doctrine of equivalents when operated by ASUS customers. (CIB at 36.) Both ASUS 

and the Staff argue that IBM has failed to provide sufficient evidence and analysis to support a 

finding of infringement under DOE. (RIB at 74; SIB at 46.) 

IBM relies entirely on the conclusory testimony of its expert Dr. Polish in support of its 

argument that the accused products infringe claim 1 under DOE. As an example, Dr. Polish 

testified with respect to ASUS' accused Eee PC products that: 

Any difference ASUS may assert that exists between its Eee PC products anci 

each element of the asserted claim are insubstantial as each ASUS Eee PC 

Product is equivalent in structure, function and operation to the inventions of the 

asserted '741 Patent claim, and performs the same function, in substantially the 

same way to achieve substantially the same results as the claimed inventions of 

the '741 Patent asserted claim. 

(CX-2054 (Polish Wit. Stat) at ~ 189; see also id. at ~ 295 (ASUS notebook products), ~ 385 

(ASUS VGA card products), ~ 470 (ASUS motherboard products), ~ 523 CASUS server 

products), ~ 567 (ASUS barebones products).) Because IBM relies entirely on the conclusory 

testimony of Dr. Polish who fails to provide an element by element analysis showing how the 

limitations in claim 1 of the '741 Patent are equivalent to elements in the accused products, the 

ALJ finds that IBM has failed to establish a prima facie case of infringement under the doctrine 

of equivalents. Warner-Jenkinson Co., 520 U.S. at 40 (holding that "[t]he determination of 

equivalence should be applied as an objective inquiry on an element-by-element basis.") 

Accordingly, the ALJ finds that the accused products do not infringe claim 10fthe '741 Patent 

under the doctrine of equivalents. 

114 
c) Induced and Contributory Infringement 

IBM argues that ASUS induces infringement of claim 1 of the '741 Patent with respect to 

all of the accused products. (CIB at 38.) IBM also argues that ASUS contributes to the 

infringement of claim 1 through the sale of its VGA cards, motherboards, servers, and barebones 

products. (Id. at 41.) ASUS argues that IBM has failed to prove that it either induces or 

contributes to the infringement of claim 1 of the '741 Patent. (RIB at 74-75.) The Staff also 

argues that ASUS does not indirectly infringe claim 1. 

As discussed in detail, supra, the ALI has found that ASUS's accused products do not 

directly infringe claim 1 of the '741 Patent. Thus, there can be no indirect infringement. 

Accordingly, the ALI finds that ASUS neither induces infringement nor contributes to the 

infringement of claim 1 of the '741 Patent. See Broadcom Corp., 543 F.3d at 697 (stating, "In 

order to prevail on an inducement claim, the patentee must establish 'first that there has been 

direct infringement, and second that the alleged infringer knowingly induced infringement and 

possessed specific intent to encourage another's infringement."'); see also Dynacore Holdings 

Corp. v. Us. Philips CorI!' , 363 F.3d 1263, 1272 (Fed.Cir.2004) ("Indirect infringement, 

whether inducement to infringe or contributory infringement, can only arise in the presence of 

direct infringement."). 

VI. VALIDITY 

A. Background 

One cannot be held liable for practicing an invalid patent claim. See Pandrol USA, LP v. 

AirBoss Railway Prods., Inc., 320 F.3d 1354, 1365 (Fed. Cir. 2003). However, the claims of a 

patent are presumed to be valid. 35 U.S.C. § 282; DMI Inc. v. Deere &Co., 802 F.2d 421 (Fed. 

115 
Cir. 1986). Although a complainant has the burden of proving a violation of section 337, it can 

rely on this presumption of validity. 

As the respondent, ASUS has the burden of overcoming the presumption that the asserted 

patents are valid and must prove ihvalidity by clear and convincing evidence in order to do so. 

Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316,1327 (Fed. Cir. 2008) (stating, 

"When an alleged infringer attacks the validity of an issued patent, [the] well-established law 

places the burden of persuasion on the attacker to prove invalidity by clear and convincing 

evidence." (emphasis added)); see also Checkpoint Systems, Inc. v. United States In!'l Trade 

Comm 'n, 54 F.3d 756, 761 (Fed. Cir. 1995). ASUS's burden of persuasion never shifts to IBM; 

the risk of "decisional uncertainty" remains on the respondent. Id.; see also PowerOasts, Inc. v. 

T-Mobile USA, Inc., 522 F.3d 1299, 1303, 1305 (Fed. Cir. 2008); Pfizer, Inc. v. Apotex, Inc., 480 

F.3d 1348, 1360 (Fed. Cir. 2007). Thus, it is ASUSlS burden to prove by clear and convincing 

evidence that any of the alleged prior art references anticipate or render obvious the asserted 

claims of the patents in suit. Failure to do so means that ASUS loses on this point. Id. (stating, 

"[I]f the fact trier of the issue is left uncertain, the party with the burden [ of persuasion] loses."). 

ASUS also bears the burden of going forward with evidence, i. e., the burden of 

production. Id. This is "a shifting burden the allocation of which depends on where in the 

process of a trial the issue arises." Id. However, this burden does not shift until a respondent 

presents "evidence that might lead to a conclusion of invalidity." Pfizer, 480 F.3d at 1360. Once 

a respondent "has presented a prima facie case of invalidity, the patentee has the burden of going 

forward with rebuttal evidence." Id. 

B. Anticipation 

116 
A patent may be found invalid as anticipated under 35 U.S.C. § 102(a) if "the invention 

was known or used by others in this country, or patented or described in a printed publication in 

this country, or patented or described in a printed publication in a foreign country, before the 

invention thereof by the applicant for patent." 35 U.S.C. § 102(a). A patent may be found 

invalid as anticipated under 35 U.S.C. § 102(b) if "the invention was patented or described in a 

printed publication in this or a foreign country or in public use or on sale in this country, more 

than one year prior to the date of the application for patent in the United States." 35 U.S.C. 

§ 102(b). Under 35 U.S.c. § 102(e), a patent is invalid as anticipated if "the invention was 

described in a patent granted on an application for patent by another filed in the United States 

before the invention thereof by the applicant for patent." 35 U.S.C. § 102(e). Anticipation is a 

question of fact. Texas Instruments, Inc. v. Us, Int'l Trade Comm 'n, 988 F.2d 1165, 1177 (Fed. 

Cir. 1993) ("Texas Instruments 11'). Anticipation is a two-step inquiry: first, the claims of the 

asserted patent must be properly construed, and then the construed claims must be compared to 

the alleged prior art reference. See, e.g., Medichem, s'A. v. Rolabo, s'L., 353 F.3d 928, 933 (Fed. 

Cir.2003). It is axiomatic that claims are construed the same way for both invalidity and 

infringement. w,L. Gore v. Garlock, Inc., 842 F.2d 1275, 1279 (Fed. Cir. 2008.) 

"Claimed subject matter is 'anticipated' when it is not new; that is, when it was 

previously known. Invalidation on this ground requires that every element and limitation of the 

claim was previously described in a single prior art reference, either expressly or inherently, so 

as to place a person of ordinary skill in possession of the invention." Sanofi-Synthelabo v. 

Apotex, Inc., 550 F.3d 1075, 1082 (Fed. Cir. 2008) (emphasis added) (citing Schering Corp. v. 

Geneva Pharms., Inc., 339 F.3d 1373, 1379 (Fed. Cir. 2003) and Continental Can Co. USA v. 

Monsanto Co., 948 F.2d 1264, 1267-69 (Fed. Cir. 1991)). 

117 
To anticipate, a single prior art reference must be enabling and it must describe the 

claimed invention, i. e., a person of ordinary skill in the field of the invention must be able to 

practice the subject matter of the patent based on the prior art reference without undue 

experimentation. Sanofi, 550 F.3d at 1082. The presence in said reference of both a specific 

description and enablement of the subject matter at issue are required. ld. at 1083. 

To anticipate, a prior art reference also must disclose all elements of the claim within the 

four corners of said reference. Net MoneylN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. 

Cir. 2008) ("NMr); see also Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1345 (Fed. Cir. 2007) 

(stating, "Anticipation is established by documentary evidence, and requires that every claim 

element and limitation is set forth in a single prior art reference, in the same form and order as in 

the claim."). Further, "[b]ecause the hallmark of anticipation is prior invention, the prior art 

reference--in order to anticipate under 35 U.S.c. § 102--must not only disclose all elements of 

. the claim within the four corners of the document, but must also disclose those elements 

'arranged as in the claim.'" ld. (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 

(Fed. Cir. 1983)). The Federal Circuit explained this requirement as follows: 

The meaning of the expression 'arranged as in the claim' is readily 

understood in relation to claims drawn to things such as ingredients mixed 

in some claimed order. In such instances, a reference that discloses all of 

the claimed ingredients, but not in the order claimed, would not anticipate, 

because the reference would be missing any disclosure of the limitations 

of the claimed invention 'arranged as in the claim.' But the 'arranged as 

in the claim' requirement is not limited to such a narrow set of 'order of 

limitations' claims. Rather, our precedent informs that the 'arranged as 

in the claim' requirement applies to all claims and refers to the need for 

an anticipatory reference to show all of the limitations of the claims 

arranged or combined in the same way as recited in the claims, not merely 

in a particular order. The test is thus more accurately understood to mean 

'arranged or combined in the same way as in the claim.' 

118 
Id. at 1370 (emphasis added). Therefore, it is not enough for anticipation that a prior art 

reference simply contains all of the separate elements of the claimed invention. Id. at 1370-71 

(stating that "it is not enough [for anticipation] that the prior art reference discloses part of the 

claimed invention, which an ordinary artisan might supplement to make the whole, or that it 

includes multiple, distinct teachings that the artisan might somehow combine to achieve the 

claimed invention." (emphasis added)). Those elements must be arranged or combined in said 

reference in the same way as they are in the patent claim. 

If a prior art reference does not expressly set forth a particular claim element, it still may 

anticipate the claim if the missing element is inherently disclosed by said reference. Trintec 

Indus., Inc. v. Top-US.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002); In re Robertson, 169 

F.3d 743, 745 (Fed. Cir. 1999). Inherent anticipation occurs when "the missing descriptive 

material is 'necessarily present,' not merely probably or possibly present, in the prior art." (Id); 

see also Rhino Assocs. v. Berg Mfg. & Sales Corp.,.482 F. Supp.2d 537, 551 (M.D. Pa.2007). In 

other words, inherency may not be established by probabliities or possibilities. See Continental . 

Can, 948 F.2d at 1268. Thus, "[t]he mere fact that a certain thing may result from a given set of 

circumstances is not sufficient." Id. 

The critical question for inherent anticipation here is whether, as a matter of fact, 

practicing an alleged prior art reference necessarily features or results in each and every 

limitation of the asserted claim at issue. See, e.g., Toro Co. v. Deere & Co., 355 F.3d 1313,1320 

(Fed. Cir. 2004). Such is the case even if one of ordinary skill in the art would not have 

recognized said inherent anticipation at the time of the invention of the '829 Patent. Id. at 1320-

21. 

119 
If there are "slight differences" between separate elements disclosed in a prior art 

reference and the claimed invention, those differences "invoke the question of obviousness, not 

anticipation." NMI, 545 F.3d at 1071; see also Trintec, 295 F.3d at 1296 (finding no anticipation 

and stating that "the difference between a printer and a photocopier may be minimal and obvious 

to those of skill in this art. Nevertheless, obviousness is not inherent anticipation."). Statements 

such as "one of ordinary skill may, in reliance on the prior art, complete the work required for . 

the invention,~' and that "it is sufficient for an anticipation if the general aspects are the same and 

the differences in minor matters is only such as would suggest itself to one of ordinary skill in 

the art," actually relate to obviousness, not anticipation. Connell, 722 F.2d at 1548; "see infra. 

1. The '852 Patent 

a) "SOCKS" Reference 

ASUS argues that the asserted claims of the '852 Patent are anticipated under 35 U.S.C. § 

102 by the prior art paper of David Koblas & Michelle Koblas, "SOCKS," UNIX Security 

Symposium published in September 1992 ("SOCKS reference"), under IBM's proposed claim 

construction. (RIB at 119-122.) According to ASUS, the SOCKS reference contains each and 

every limitation of the asserted claims of the' 852 Patent and IBM has failed to predate this prior 

art reference by arguing that the '852 invention was conceived as early as December 1990. (RIB 

at 115-119.) 

IBM argues that the SOCKS reference is not prior art since the '852 invention was 

conceived in December 1990. (CIB at 76-77; CRB at 37-41.) IBM further argues that the 

reference fails to disclose each and every limitation of the asserted claims and that it is not 

120 
directed toward message routing but to the transfer of data between sockets. (CIB at 77-78; CRB 

at 41-43.) 

Staff argues that under either parties' constructions, the' 852 Patent is not anticipated by 

the SOCKS reference and that IBM has failed to establish an earlier date of invention for the 

'852 Patent. (SIB at 63; SRB at 18.) The ALJ finds that IBM has failed to meet its burden of 

proving that the '852 Patent predates the SOCKS reference. See Mahurkar v. C.R. Bard, Inc., 79 

F.3d 1572, 1577 (Fed. Cir. 1996) ("In assessing corroboration of oral testimony, courts apply a 

rule of reason analysis. Under a rule of reason analysis, "an evaluation of all pertinent evidence 

must be made so that a sound determination of the credibility of the inventor's story may be 

reached.") (internal citation omitted). IBM has failed to meet its burden of showing that the' 852 

invention was allegedly conceived in December 199.0 and that the inventors continued to work 

full time on the invention until the filing of the patent 

Thus, given the contradictory testimony from the two named inventors of the '852 Patent, the 

ALJ finds that IBM has failed to prove an earlier invention date for the '852 Patent then the 

SOCKS reference. As such, the SOCKS reference is prior art under 35 U.S.C. § 102(a). 

The only evidence presented were analyses and rebuttals performed under IBM's 

proposed claim construction. (RX-24C (Olivier Direct) at Q 54; RIB at 115-121; SIB at 63; CIB 

. at 77-78.) The ALJ has, however, adopted ASUS's and Staff's claim construction. Therefore, 

121 
there is no evidence before the ALJ as it relates to the SOCKS reference under ASUS' s claim 

construction and, as such, ASUS has failed to meet its burden of showing by clear and 

convincing evidence that the '852 Patent is anticipated by the SOCKS reference. 

Nevertheless, even under the ALJ's construction and based on the limited evidence 

before the ALJ, the SOCKS reference fails to disclose certain limitations of claim 1 of the' 852 

Patent. See Sanofi-Synthelabo, 550 F.3d at 1082 ("Claimed subject matter is 'anticipated' when 

it is not new; that is, when it was previously known. Invalidation on this ground requires that 

every element and limitation of the claim was previously described in a single prior art reference, 

either expressly or inherently, so as to place a person of ordinary skill in possession of the 

invention."). Specifically, the ALJ construed the "protocol port specific function which selects a 

routing destination for the·message from a plurality of possible destinations" to mean that "the 

protocoi port specific function actually selects the routing destination from a plurality of possible 

destinations. ". The limited evidence before the ALJ shows that the SOCKS reference fails to 

disclose a method of routing messages and a message switch memory and, instead, simply acts 

as a bridge between two sockets. (CRX-71C at Q 47-48; RX-349 at Section 2.3.) There is no 

evidence that. the SOCKS reference actually selects the routing destination from a plurality of 

possible destinations. (Supra IV.B.) As such, the SOCKS reference fails to disclose, at a 

minimum, the limitation of practicing a "protocol port specific function which selects a routing 

destination for the message from a plurality of possible destinations" of claim 1 of the' 852 

Patent. 

Therefore, the ALJ finds that the asserted claims of the '852 Patent are not anticipated by 

the SOCKS reference because it fails to disclose each and every limitation of the asserted claims. 

122 
b) McKay Patent 

ASUS asserts that U.S. Patent No. 4,893,307 ("McKay patent") anticipates the asserted 

claims of the '852 Patent under 35 U.S.c. § 102. (RIB at 122.) ASUS, however, sets forth no 

arguments related to the McKay patent and, instead, incorporates by reference its argument and 

analysis in its pre-hearing brief. (RIB at 122.) The ALl [mds that simply referencing a prehearing brief and incorporating those arguments by reference is insufficient to constitute a 

. discussion of the issue in the post-hearing brief. 14 Pursuant to Ground Rule 11.1/5 ASUS has 

waived the opportunity to raise this issue. 

c) Packet Filter Reference 

ASUS asserts that the article "Packet Filtering in an IP Router" by Bruce Corbridge, 

Robert Herrig, and Charles Slater of September/October 1991 ("Packet Filter reference") 

anticipates the asserted claims of the '852 Patent under 35 U.S.C. § 102. (RIB at 122.) ASUS, 

however, sets forth no arguments related to the Packet Filter reference and, instead, incorporates 

by reference its argument and analysis in its pre-hearing brief. (RIB at 122.) The ALl finds that 

simply referencing a pre-hearing brief and incorporating those arguments by reference is 

insufficient to constitute a discussion of the issue in the post-hearing brief. Pursuant to Ground 

Rule 11.1, ASUS has waived the opportunity to raise this issue. 

14 Indeed, simply allowing a party to "incorporate by reference" to its pre-hearing brief is tantamount to allowing 

the parties to circumvent the page limitation for the post-hearing briefs set by the ALI. 

15 Ground Rule 11.1 states (emphasis added): 

The post-trial brief shall discuss the issues and evidence tried within the framework ofthe general issues determined 

by the Commission's Notice of Investigation, the general outline of the briefs as set forth in Appendix B, and those 

issues that are included in the pre-trial brief and any permitted amendments thereto. All other issues shall be 

deemed waived .... 

123 
2. The '829 Patent16, 17. 

a) IBM 5140 

The parties do not dispute that the IBM PC Convertible 5140 ("IBM 5140") is a prior art 

reference to the' 829 Patent; the parties agree that model was introduced and sold by IBM and in 

public use in the U.S. from April 1986 through July 1989, which is earlier than the date of the 

'829 Patent. (RIB at 49; CRPFF 3238-3240.) 

ASUS argues that claims 1 and 2 of the '829 Patent are invalid as anticipated by the IBM 

5140 under 35 U.S.C. §§102(a) and 102(b). (RIB at 48-49.) It is ASUS's burden to,prove by 

clear and convincing evidence that the' 829 Patent is invalid. See Tech. Licensing, 545 F .3d at 

1327. ASUS argues that the IBM 5140 discloses each element of the asserted claims under 

IBM's proposed claim construction, as well as under ASUS's proposed claim construction, 

except for ASUS's construction of the "signal generator circuit" element. (RIB at 47-48.) The 

ALJ notes that ASUS makes these assertions in less than a page and a half without much 

discussion of how the elements of the IBM 5140 actually anticipate the limitations of the claims 

of the '829 Patent. For example, ASUS asserts; generally, that 

16 ASUS argues that IBM's failure to address the validity of the '829 Patent in its Initial Post hearing brief 

constitutes a waiver under Ground Rule 11.1 such that the ALl should deem the patent invalid. (RRB at 8, 31.) 

ASUS is correct that, under Ground Rule 11.1, should a party fail to address an issue in its initial post hearing brief, 

that issue will be deemed. The purpose of this rule is to provide the other party the opportunity to respond and to 

rebut any arguments and not to give any party the first and last word on the matter. However, failure to comply with 

this ground rule does not absolve the parties of meeting their burden(s) of proof, which in this case is a clear and 

convincing standard for ASUS. Regardless ofIBM's failure to address these issues, ASUS must still meet its 

burden of proving by clear and convincing evidence that the '829 Patent is invalid. 

17 In this instance, the ALl is permitting IBM to respond to ASUS invalidity arguments only to the extent it is 

actually responsive to ASUS's invalidity argument. To the extent that IBM raises any new issues, the ALl will 

deem those arguments waived as set forth herein. 

124 
_ (RIB at 48.) 

The Staff agrees with ASUS that, if the ALJ adopts IBM's proposed construction, the 

asserted claims are anticipated by the IBM 5140, but further argues that, under a proper claim 

construction, the '829,Patent is not anticipated. (SIB at 29-30.) 

IBM argues that claims 1 and 2 of the '829 Patent are not anticipated by the IBM 5140 

because the IBM 5140 

as defined by the '829 Patent, and because the 

external button on the IBM 5140 does not power on or off the computer but merely conserves 

power by suspending some of the operating components while the SRAM (memory) remains 

constantly powered. (CRB at 58-60.) IBM argues that, "if users cannot power oiIthe SRAM, 

they cannot control energization of the 'data processing and storage components for processing 

and storing digital data.'" (CRB at 59.) Though ASUS's burden of persuasion never shifts to 

IBM, Tech. Licensing, 545 F.3d at 1327; PowerOasis, 522 F.3d at 1305; Pfizer, 480 F.3d at 1360, 

the ALJ notes that IBM does not set forth any arguments regarding the IBM 5140 except with 

respect to the SRAM. IBM fails to mention any other data processing or storage components of 

the IBM 5140 and whether or not they are supplied with direct current electrical power by the 

power supply claimed, as well as any additional limitations of claim 1 of the '829 Patent. 

The evidence that the parties presented regarding the IBM 5140 is limited to analyses and 

rebuttals performed under the parties' proposed claim constructions. (RX-25C (Madisetti Direct) 

at Q43 & 87; RIB at 47-49; SIB at 29-30.) The ALJ has adopted his own claim construction, 

which is sometimes similar to the parties' proposed constructions and is sometimes not. The 

ALJ finds that ASUS has failed to meet its burden of proving by clear and convincing evidence 

125 
that the' 829 Patent is anticipated under the proper claim construction. Every element and 

limitation of claim 1 must be disclosed by the IBM 5140 in order for the' 829 Patent to be 

anticipated by the IBM 5140. See Sanoji, 550 F.3d at 1082. Based on the evidence before the 

ALl, he finds that the IBM 5140 fails to disclose certain required limitations of the invention of 

the' 829 Patent. 

Specifically, the IBM 5140 fails to disclose, at a minimum, the pulse width modulation 

switching power supply claimed in claim 1 of the' 829 Patent. The ALl has found that said 

power supply must include a controllable component and a signal generator circuit, which is 

operatively connected to both the controllable component and the alternating current electrical 

main supply. The ALl found that nothing in the specification of the '829 Patent supports reading 

a "stand-by power supply" limitation into claim 1. The ALl also found that the claimed signal 

generator circuit must derive a low voltage direct current signal from the alternating current 

electrical main supply. 

'" 

There is no evidence that the IBM 5140 discloses either the controllable component or 

the signal generator claimed in the' 829 Patent. ASUS fails to explain whether the alleged 

controllable component, i.e., a "PWM switching circuit that resides on the power supply board," 

(RIB at 48), supplies direct current electrical power to the electrically powered data processing 

and storage components of the IBM 5140 upon receiving a low voltage direct current electrical 

signal from the alleged signal generator circuit. The alleged "signal generator circuit" of the 

IBM 5140 includes (RX-25C at Q 103.) The 

evidence shows that 

(RX-25C 

at QI03 

126 
RX-268C; RX-615 at IBM_179778; JX-34C at 65:1-22 

and 158:'2-21.) Thus, ASUS has failed to show that the IBM 5140 "controllably derives a low 

voltage direct current signal from said main supply." If the alleged signal generator circuit is 

powered by an AC adapter, it receives direct current and voltage from the adapter, not alternating 

current from the main supply, as required by the claim. The ALJ finds that the use of an AC 

adapter would not enable a person of ordinary skill in this field to practice the subject matter of 

claim 1 of the '829 Patent without undue experimentation. See, e.g., Sanoji, 550 F.3d at 1082. 

With respect to inherent anticipation, the IBM 5140 must necessarily feature or result in 

each and every limitation of claim 1. Taro, 355 F.3d at 1320. For at least the foregoing reason, 

i.e., that using an AC adapter to supply direct current to the alleged signal generator circuit 

makes it impossible for said signal generator circuit to be operatively connected to the alternating 

current electrical main supply and thus to derive a low voltage direct current signal from the 

alternating current electrical main supply, the IBM 5140 does not inherently disclose this claim 

limitation. 

Therefore, the ALJ finds that the IBM 5140 reference does not anticipate the '829 Patent. 

b) Mac Hex 

ASUS argues that claims 1 and 2 of the '829 Patent are invalid as anticipated by the 

Apple Macintosh IIcx ("Mac IIcx") desktop computer under 35 U.S.C. §§102(a) and 102(b). 

(RIB at 49.)18 It is ASUS's burden to prove by clear and convincing evidence that the '829 

Patent is invalid. See Tech. Licensing, 545 F.3d at 1327. ASUS argues that the MaclIcx 

18 ASUS argues that the Mac Hcx is prior art because it was introduced and sold by Apple and in public use in the 

U.S. between 1989 and 1991. (RIB at 51.) ASUS also argues that one of the Mac Hcx samples tested by ASUS's 

expert was manufactured by Apple in May 1989 and included an Astec power supply that was manufactured in 

February 1989. (RIB at 51.) 

127 
discloses each element of the asserted claims under IBM's proposed claim construction, as well 

as under ASUS's proposed claim construction, except for ASUS's construction of the "signal 

generator circuit" element. (RIB at 49-51.) ASUS asserts, generally, that the pulse width 

switching power supply of the Mac Hcx is "an Astec switching power supply unit (PSU) and a 

startup circuit;" that the controllable component is "a PWM switching circuit inside the Astec 

PSU;" and that the signal generator circuit is "a startup circuit and an always-on power supply." 

(RIB at 49-50.) Rather than explain how the elements ofthe Mac Hcx actually anticipate the 

limitations of the claims of the '829 Patent, ASUS focuses on IBM's arguments that ASUS's 

expert did not test authentic samples of the Mac Hcx and that the Mac Hcx does not have the 

claimed controllable component. (RIB at 50.) 

The Staff argues that IBM has presented sufficient evidence to rebut ASUS' s arguments. 

(SIB at 31.) 

IBM argues that ASUS fails to show that claims 1 and-2 of the '829 Patent are anticipated 

by the Mac Hcx because ASUS does not show that the Mac Hcx satisfies each and every element 

of the claims, particularly with respect to whether the Mac Hcx discloses "a controllable 

component that responds to the presence and absence of a low voltage DC signal to enable and 

disable the DC outputs as required by the asserted claims." (CRB at 57-58.) IBM argues that 

"there are other ways of implementing control over the power to the load that do not use a low 

voltage DC signal in the claimed manner." (CRB at 57-58.) 

IBM also argues that that ASUS failed to offer evidence to substantiate that the two 

device samples that ASUS's counsel purchased and ASUS's expert tested are authentic Mac 

Hcx's. (CRB at 56-57.) Specifically, IBM questions whether the two Mac Hex devices relied 

upon by ASUS's expert, Dr. Madisetti, for his opinion and analysis are authentic or qualify as 

128 
prior art, citing, inter alia, questionable evidence as to their date of manufacture, evidence of 

tampering, and a questionable chain of custody. (CRB at 56-57.) With respect to this argument, 

the ALJ finds that, pursuant to Ground Rule 11.1, IBM has waived anyright of assertion. IBM 

failed to address the validity of the '829 Patent in its Initial Post-Hearing Brief and raised this 

issue for the first time in its Reply Briefnot as a response to ASUS's arguments, but as a 

separate and distinct argument, thereby depriving ASUS of the opportunity to respond. As such, 

the ALJ finds that IBM may not question the authenticity of the Mac Hcx references. 

The evidence that the parties presented regarding the Mac Hcx is limited to analyses and 

rebuttals performed under the parties' proposed claim constructions. (RX-25C (Madisetti Direct) 

at Q71; RIB at 49-51.) The ALI has adopted his own claim construction, which is sometimes 

similar to the parties' proposed constructions and is sometimes not. The ALI finds that ASUS 

has failed to meet its burden of proving by clear and convincing evidence that the' 829 Patent is 

anticipated under the proper claim construction. Every element.and limitation of claim 1 must be 

.. disclosed by the Mac Hcx in order for the' 829 Patent to be anticipated by the Mac,Hcx. See 

Sanoji, 550 F.3d at 1082. Based on the evidence before the ALl, he finds that the Mac Hcx fails 

to disclose certain required limitations of the invention of the '829 Patent. 

Specifically, the Mac Hcx fails to disclose, at a minimum, the pulse width modulation 

switching power supply claimed in claim 1 of the '829 Patent. The ALJ has found that said 

power supply must include a controllable component and a signal generator circuit, which is 

'operatively connected to both the controllable component and the alternating current electrical 

main supply. The ALI found that, upon receiving a low voltage direct current electrical signal, 

the claimed controllable component supplies direct current electrical power to the electrically 

powered data processing and storage components. The ALJ also found that the claimed signal 

129 
generator circuit must derive a low voltage direct current signal from the alternating current 

electrical main supply. 

There is no evidence that the Mac lIcx discloses either the controllable component or the 

signal generator claimed in the' 829 Patent. ASUS fails to explain whether the alleged 

controllable component, i.e., a "PWM switching circuit inside the Astec PSU," (RIB at 50), 

supplies direct current electrical power to the electrically powered data processing and storage 

components of the Mac IIcx upon receiving a low voltage direct current electrical signalfrom the 

alleged signal generator circuit. The alleged "signal generator circuit" of the Mac lIcx is the 

trickle power supply, which provides the continuous voltage supply, and the startup Circuit, 

which resides on the motherboard of the Mac lIcx. (RX 25C at Q75.) The evidence shows that 

said signal generator circuit is not operatively connected to the alternating current electrical main 

supply, because "it cannot controllably derive from the AC mains the low voltage direct current 

signal (i.e., the PS on/off signal)." (RX-25C at Q75; RX-155C at ASUS_321151; RX-157; RX565 at.ASUS_320635 and ASUS_320639.) Thus, ASUS has failed to show both that the alleged 

signal generator circuit of the Mac Hcx "controllably derives a low voltage direct current signal 

from said main supply" and that the alleged controllable component of the Mac IIcx receives a 

low voltage direct current electrical signal from the alleged signal generator circuit. 

With respect to inherent anticipation, the Mac lIcx must necessarily feature or result in 

each and every limitation of claim 1. Taro, 355 F.3d at 1320. For at least the foregoing reason, 

i.e., that the alleged signal generator circuit is not operatively connected to the alternating current 

electrical main supply and thus cannot derive a low voltage direct current signal from the 

alternating current electrical main supply, the Mac IIcx does not inherently disclose this claim 

limitation. 

130 
Therefore, the ALJ -finds that the Mac IIcx references do not anticipate the' 829 Patent. 

c) Mac II 

ASUS argues that claims 1 and 2 of the '829 Patent are invalid as anticipated by the 

Apple Macintosh II ("Mac II") desktop computer under 35 U.S.C. §§102(a) and l02(b). (RIB at 

51.)19 It is ASUS's burden to prove by clear and convincing evidence that the '829 Patent is 

invalid. See Tech. Licensing, 545 F.3d at 1327. ASUS argues that the MacH discloses each 

element of the asserted claims under IBM's proposed claim construction, as well as under 

ASUS's proposed claim construction, except for ASUS's construction of the "signal generator 

circuit" element. (RIB at 52-53.) ASUS asserts, generally, that the pulse width switching power 

supply of the Mac II is "a startup circuit and a Sony power supply unit (PSU);" that the 

controllable component is "a PWM switching circuit inside the Sony PSU;" and that the signal 

generator circuit is "a power control circuit." (RIB at 52.) Rather than explain how the elements 

of the Mac II actually anticipate the limitations of the claims of the' 829 Patent, ASUS focuses 

on IBM's arguments that the Mac 1.1 does not meet the operatively connected limitation of the 

claimed signal generator circuit because it has a power-on circuit and a power-off circuit and .the 

power-on circuit requires battery power. (RIB at 52-53.) 

The Staff argues that IBM has presented sufficient evidence to rebut ASUS's arguments. 

(SIB at 31.) 

IBM argues that ASUS fails to show that claims 1 and 2 of the '829 Patent are anticipated 

by the Mac II because ASUS does not show that the Mac II discloses a signal generator circuit 

that is operatively connected to the alternating current main supply or a controllable component 

that responds to the presence and absence of a low voltage DC signal. (CRB at 55.) IBM argues 

19 ASUS argues that the Mac II is prior art because it was introduced and sold by Apple and in public use in the u.s. 

between 1987 and 1990. (RIB at 52.) 

131 
that the alleged signal generator circuit derives its low voltage direct current signal from a 

battery and that "there are ways of implementing control over the po~er to the load that do not 

use a low voltage DC signal as claimed," thus ASUS failed to show that "any signal going to the 

power supply is in fact the same signal that enables and disables the DC outputs." (CRB at 55.) 

IBM also questions whether the Mac II device relied upon by ASUS's expert, Dr. 

Madisetti, for his opinion and analysis are authentic or qualify as prior art. (CRB at 56.) As set 

forth supra in the previous section, with respect to the Mac IIcx, the ALJ finds that, pursuant to 

Ground Rule 11.1, IBM has waived any right of assertion regarding this argument. IBM failed 

to address the validity of the '829 Patent in its Initial Post-Hearing Brief and raised this issue for 

the first time in its Reply Brief not as a response to ASUS' s arguments, but as a separate and 

distinct argument, thereby depriving ASUS of the opportunity to respond. As such, the ALJ 

finds that IBM may not question the authenticity of the Mac II reference. 

The evidence that the parties presented regarding the Mac IIcx is limited to analyses and 

rebuttals performed under the parties' proposed claim constructions. (RX-25C (Madisetti Direct) 

at Q114; RIB at 51-52.) The ALJ has adopted his own claim construction, which is sometimes 

similar to the parties' proposed constructions and is sometimes not. The ALJ finds that ASUS 

has failed to meet its burden of proving by clear and convincing evidence that the' 829 Patent is 

anticipated under the proper claim construction. Every element and limitation of claim 1 must be 

disclosed by the Mac II in order for the '829 Patent to be anticipated by the Mac II. See Sanoji, 

550 F.3d at 1082. Based on the evidence before the ALJ, he finds that the Mac II fails to 

disclose certain required limitations of the invention of the' 829 Patent. 

Specifically, the Mac II fails to disclose, at a minimum, the pulse width modulation 

switching power supply claimed in claim 1 of the' 829 Patent. The ALJ has found that said 

132 
power supply must include a controllable component and a signal generator circuit, which is 

operatively connected to both the controllable component and the alternating current electrical 

main supply. The ALJ found that, upon receiving a low voltage direct current electrical signal, 

the claimed controllable component supplies direct current electrical power to the electrically 

powered data processing and storage components. The ALJ also found that the claimed signal 

generator circuit must derive a low voltage direct current signal from the alternating current 

electrical main supply. 

There is no evidence that the Mac II discloses either the controllable component or the 

signal generator claimed in the' 829 Patent. ASUS fails to explain whether the alleged 

controllable component, i.e., a "PWM switching circuit inside the Sony PSU," (RIB at 52), 

supplies direct current electrical power to the electrically powered data processing and storage 

components of the Mac II upon receiving a low voltage direct current electrical signal from the 

alleged'signal generator circuit. The alleged "signal generator circuit" of the Mac II is the power 

control circuit, which includes at least a power-on circuit and a power-off circuit. (RX 25C at 

Ql18.) The evidence shows that said power-on circuit is powered by two 3-volt batteries and 

that the power-off circuit is powered by the Sony power supply unit, which is connected to the 

alternating current electrical main supply by an alternating current power cord. (RX-25C at Q 118; 

RX-163 at ASUS_321l04; RX-171 at 23-26; RX-236 at ASUS_320700.) Because the power-on 

circuit is battery-powered, ASUS has failed to show that the alleged signal generator circuit of 

the Mac II "controllably derives a low voltage direct current signal from said main supply." 

ASUS has also failed to show that the alleged signal generator circuit supplies a low voltage 

direct current electrical signal to the alleged controllable component and that the alleged 

controllable component supplies direct current electrical power to the electrically powered data 

133 
processing and storage components of the Mac II upon receiving a low voltage direct current 

electrical signal from the alleged signal generator circuit. 

With respect to inherent anticipation, the Mac II must necessarily feature or result in each 

and every limitation of claim 1. Toro, 355 F.3d at 1"320. For at least the foregoing reasons, i.e., 

that the alleged signal generator circuit may not be operatively connected to the alternating 

current electrical main supply and would thus not derive a low voltage direct current signal from 

the alternating current electrical main supply, the Mac IIcx does not inherently disclose this 

claim.limitation. 

Therefore, the ALJ finds that the Mac II reference does not anticipate the '829 Patent. 

d) Mac Reference 

ASUS argues that claims 1 and 2 of the' 829 Patent are invalid as anticipated by the 

Macintosh Family Hardware Reference ("Mac Reference") under 35 U.S.C. §§102(a) and 102(b). 

(RIB at 53.) It is ASUS's burden to prove by clear and convincing evidence that the '829 Patent 

is invalid. See Tech. Licensing, 545 F.3d at 1327. Here, ASUS makes nothing more than a oneparagraph cursory argument that the Mac Reference "discloses each element of the asserted 

claims" under IBM's proposed claim construction, as well as under ASUS's proposed claim 

construction, except for ASUS's construction of the "signal generator circuit" element. (RIB at 

53.) This is the extent of ASUS's argument anq evidence. Rather than explain how the elements 

of the Mac Reference actually anticipate the limitations of the claims of the '829 Patent, ASUS 

simply states that "IBM makes the same baseless argument with the Mac Reference as it did for 

the Mac II." (RIB at 53.) 

The Staff argues that IBM has presented sufficient evidence to rebut ASUS' s arguments. 

(SIB at 31.) 

134 
IBM did not address this reference. (See generally CRB at 54-63.) 

The ALl finds that simply making cursory assertions and conclusory arguments is 

insufficient for ASUS to meet the clear and convincing standard necessary to invalidate the' 829 

Patent. 

Therefore, the ALl finds that the Mac Reference does not anticipate the' 829 Patent. 

e) Nelson Patent 

ASUS argues that claims 1 and 2 of the '829 Patent are invalid as anticipated U.S. Patent 

No. 4,291,366 ("Nelson Patent") under 35 U.S.C. §§102(a) and 102(b). (RIB at 53.) It is 

ASUS's burden to prove by clear and convincing evidence that the '829 Patent is invalid. See 

Tech. Licensing, 545 F.3d at 1327. ASUS argues that the Nelson Patent discloses each element 

. of the asserted claims under IBM's proposed claim construction, as well as under ASUS's 

proposed claim construction, except for ASUS's construction of the "signal generator circuit" 

element. (RIB at 53-55.) ASUS asserts, generally, that the pulse width switching power supply 

of the Nelson Patent is a "switching regulated power supply;" that the controllable component is 

"a collection of circuitry ... that forms aPWM switching circuit, which responds to a low 

voltage DC electrical signal ... by enabling or disabling DC voltages output;" and that the signal 

generator circuit is a "remote shutoff' and a "local shutoff' where the remote shutoff 

"comparator can connect to additional logic circuitry to logically disable the switching regulated 

power supply." (RIB at 54.) Rather than explain how the elements of the Nelson Patent actually 

anticipate the limitations of the claims of the' 829 Patent, ASUS focuses on IBM's argument that 

the Nelson Patent does not disclose the claimed pulse width modulation switching power supply. 

(RIB at 54-55.) 

135 
The Staff argues that IBM has presented sufficient evidence to rebut ASUS' s arguments. 

(SIB at 31.) 

IBM argues that ASUS failed to show that claims 1 and 2 of the' 829 Patent are 

anticipated by the Nelson Patent because ASUS does not show that the Nelson Patent discloses 

the claimed pulse width modulation switching power supply. (CRB at 60.) IBM further argues 

that the Nelson Patent fails to disclose a "controllable component" and "a signal generator" as it 

instead describes a component for a larger system but does not describe the point of on/off 

control of the whole system." (CRB at 60-61.) 

The evidence that the parties presented regarding the Nelson Patent is limited to analyses 

and rebuttals performed under the parties' proposed claim constructions. (RX-25C (Madisetti 

Direct) at Q141.) The AL] has adopted his own claim construction, which is sometimes similar 

to the parties' proposed constructions and is sometimes not. The ALJ finds that ASUS has failed 

to meet its burden of proving by clear and convincing evidence that the' 829 Patent is anticipated 

under the proper claim construction. Every element and limitation of claim 1 must be disclosed 

by the Nelson Patent in order for the '829 Patent to be anticipated by the Nelson Patent. See 

Sanoji, 550 F.3d at 1082. Based on the evidence before the ALJ, he finds that the Nelson Patent 

fails to disclose certain required limitations of the invention of the '829 Patent. 

Specifically, the Nelson Patent fails to disclose, at a minimum, the pulse width 

modulation switching power supply claimed in claim 1 of the '829 Patent. The ALJ found that 

the term "pulse width modulation switching power supply" is used in the prior art; in fact, the 

'829 Patent discusses a 1989 reference, which describes "power supplies of the switching type." 

(JX-3 at col. 5,11.2-8.) The ALJ found that this type of prior art power supply is thoroughly 

described in the '829 Patent, (see JX-3 at col. 4, 1. 60 - col. 5,1. 43), and that the claimed pulse 

136 
width modulation switching power supply does have the same meaning as the term has in the 

prior art. The ALl further find that the '829 Patent explicitly states, "Nearly all oftoday's 

personal computers use switching power supplies." (JX-3 at col. 5,11.32-33.) Thus, ASUS's 

argument that the Nelson Patent anticipates the '829 Patent merely because it "expressly 

describes the purpose of the invention" in the Nelson Patent as providing a "switching regulated 

power supply for supplying DC voltages," (RIB at 55), is entirely unconvincing. 

Therefore, the ALl fInds that the Nelson Patent does not anticipate the '829 Patent. 

1) Pepper Patent 

ASUS argues that claims 1 and 2 of the '829 Patent are invalid as anticipated U.S. Patent. 

No. 4,673,824 ("Pepper Patent") under 35 U.S.C. §§102(a) and l02(b). (RIB at 55.) It is 

ASUS's burden to prove by clear and convincing evidence that the '829 Patent is invalid. See 

Tech. Licensing, 545 F.3d at 1327. ASUS argues that the Pepper Patent discloses each element 

of the asserted claims under both parties' proposed claim constructions. (RIB at 55.) ASUS 

asserts, generally, that the pulse width switching power supply and controllable component of 

the' 829 Patent are disclosed because the Pepper Patent includes a "main power supply" and that 

the signal generator circuit is a "stand-by power supply and switch circuit." (RIB at 55-56.) 

Rather than explain how the elements of the Peppel' Patent actually anticipate the limitations of 

the claims of the' 829 Patent, ASUS focuses on IBM's argument that the Pepper Patent only 

discloses a generic main power supply of conventional design and function. (RIB at 56.) 

The Staff argues that IBM has presented suffIcient evidence to rebut ASUS's arguments. 

(SIB at 31.) 

IBM argues that ASUS failed to show that claims 1 and 2 of the' 829 Patent are 

anticipated by the Peppel' Patent because ASUS does not show that the Nelson Patent discloses 

137 
the claimed pulse width modulation switching power supply. (CRB at 60.) IBM further argues 

that the Pepper Patent relates to microprocessor-based instruments rather than a microcomputer 

and that "the instnunents described in Pepper do not explicitly or inherently contain storage 

components." (CRB at 61.) 

The evidence that the parties presented regarding the Pepper Patent is limited to analyses 

and rebuttals performed under the parties' proposed claim constructions. (RX-25C (Madisetti 

Direct) at Q129; RIB at 55.) The ALJ has adopted his own claim construction, which is 

sometimes similar to the parties' proposed constructions and is sometimes not. The ALJ finds 

that ASUS has failed to meet its burden of proving by clear and convincing evidence that the 

'829 Patent is anticipated under the proper claim construction. Every element and limitation of 

claim 1 must be disclosed by the Pepper Patent in order for the' 829 Patent to be anticipated by 

the Pepper Patent. See Sanofi, 550 F.3d at 1082. Based on the evidence before the ALJ, he finds 

that the Pepper Patent fails to disclose certain required limitations of the invention of the' 829 

Patent. 

Specifically, the Pepper Patent fails to disclose, at a minimum, the pulse width 

modulation switching power supply claimed in claim 1 of the' 829 Patent. The ALJ found that 

the term "pulse width modulation switching power supply" is used in the prior art; in fact, the 

'829 Patent discusses a 1989 reference, which describes "power supplies of the switching type." 

(JX-3 at col. 5,11.2-8.) The ALJ found that this type of prior art power supply is thoroughly 

described in the '829 Patent, (see JX-3 at col. 4, 1.60 - col. 5,1. 43), and that the claimed pulse 

width modulation switching power supply does not have the same meaning as the term has in the 

prior art. The ALJ further find that the '829 Patent explicitly states, "Nearly all oftoday's 

personal computers use switching power supplies." (JX-3 at col. 5,11. 32-33.) Thus, ASUS's 

138 
argument that the Pepper Patent anticipates the '829 Patent merely because a "[PWM switching] 

power supply was well known to one of skill in the art at the time of Pepper," (RIB at 56), is 

entirely u~convincing. 

Therefore, the ALJ finds that the Pepper Patent does not anticipate the' 829 Patent. 

3. The '741 Patent 

a) Japanese Unexamined Patent Application Publication No. 1-

214606 to Tanabe 

ASUS argues that Japanese Unexamined Patent Application No. 1-214606 to Tanabe 

("the Tanabe reference") anticipates asserted claim 1 of the '741 patent under 35 U.S.C. § 102 

(b). (RIB at 76.) The Tanabe reference was published on September 26, 1989 and was not 

considered by the patent examiner during the prosecution of the '741 patent. Because the 

Tanabe reference was published more than a year before the effective filing date of the '741 

patent, the Tanabe reference constitutes prior art under 35 U.S.C. § 102(b). (See RX-114; RX-27 

(certified English translation); see also JX -1.) 

To prove anticipation, ASUS must show that the Tanabe reference discloses a method for 

cooling a computer that includes obtaining a predetermined cooling requirement for at least one 

component and varying the rate of at least one fan based on the obtained cooling requirements. 

(JX-l at 5:51-58.) However, the evidence shows that Tanabe does not use predetermined 

cooling requirements for individual components to control the output of the fan. (See Polish Tr. 

at 1603:14-1606:10; CRX-5C (Polish Reb. Wit. Stat.) at ~~ 71-75.) Rather, the evidence shows 

that Tanabe adjusts the rate of the fan by estimating the cumulative heat impact on the whole 

system from whatever heat sources are detected to be operational. (CRX-5C (Polish Reb. Wit. 

Stat.) at ~~ 84,87; Polish Tr. at 1568:14-1569:1, 1601:14-1606:10.) For all intents and purposes, 

139 
Dr. Stevenson admitted this fact when he testified that the Tanabe reference attempts to control 

cooling according to "a measure of heat" of the device interior. (See RX-26 (Stevenson Wit. 

Stat.) at ~~ 143-144.) That is, the fan control system disclosed in the Tanabe reference controls 

the fan speed based on an estimate of the impact the generated heat from the sources will have on 

the computer interior, not on predetermined cooling requirements of any component(s). (See 

Polish Tr. at 1603:14-1606:10; CRX-5C (Polish Reb. Wit. Stat.) at ~~ 71-75, 77.) 

Because, as discussed above, the Tanabe reference does not disclose a method for cooling 

a computer that practices all the steps of claim 1 of the '741 patent, the ALJ finds that the Tanabe 

reference does not anticipate asserted claim 1 of the '741 patent. 

b) Japanese Unexamined Patent Application No. 1-254797 to 

Takahashi 

ASUS argues that Japanese Unexamined Patent Application No. 1-254797 to Takahashi 

("the Takahashi reference") anticipates asserted claim 1 of the '741 Patent under 35 U.S.C. § 102 

(b). (RIB at 79.) The Takahashi reference was published on October 15, 1990. (See RX-048 

(certified English translation).) The Takahashi reference was considered by the patent examiner 

during the prosecution of the '741 Patent thus making ASUS' burden of proving anticipation 

"especially difficult." Glaxo Group Ltd v. Apotex, Inc., 376 F.3d 1339, 1348 (Fed. Cir. 2004); 

see also JX-2 at IBM00000183-186. Because the Takahashi reference was published more than 

a year before the effective"filing date of the '741 Patent, the Takahashi reference constitutes prior 

art under 35 U.S.C. § 102(b). (See RX-048; see also JX-I.) 

ASUS argues that the Takahashi reference anticipates claim 1 of the '741 Patent, but only 

under IBM's proposed claim construction of the limitation "predetermined cooling requirement." 

(See RX-26 (Stevenson Wit. Stat.) at ~ 175.) More specifically, ASUS's expert Dr. Stevenson 

testified that his opinion that the Takahashi reference anticipates claim 1 of the '741 Patent is 

140 
based on his assumption "that the alleged invention recited in claim 1 ofthe '741 Patent covers 

cooling systems which use temperature sensors." (RX-26 (Stevenson Wit. Stat.) at ~ 167.) 

According to ASUS, Takahashi discloses that the amount of cooling supplied to each package is 

based on temperature sensor measurements. (RIB at 80.) However, as const.rued herein, the 

limitation "obtaining a predetermined cooling requirement" has been held to exclude the use of 

temperature sensors to obtain the cooling requirement. (Supra at Section IV.D.) Therefore, the 

ALJ finds that ASUS has failed to prove by clear and convincing evidence that the Takahashi 

reference discloses the step of "obtaining a predetermined cooling requirement." Accordingly, 

the ALJ finds that the Takahashi reference does not anticipate claim 1 of the '741 Patent. 

c) Japanese Unexamined Patent Application No. 1-226012 to 

Akitoshi 

ASUS argues that Japanese Unexamined Patent Application No. 1-226012 to Akitoshi 

("the Akitoshi reference") anticipates asserted claim 1 of the '741 Patent under 35 U.S.C. § 102 

.(b). (RIB at 80.) The Akitoshi reference was published on September 8, 1987. (See RX-031 

(certified English translation).) The Akitoshi reference was not considered by the patent 

examiner during the prosecution of the '741 Patent. Because the Akitoshi reference was 

published more than a year before the effective filing date of the '741 Patent, the Akitoshi 

reference constitutes prior art under 35 U.S.C. § 102(b). (See RX-031; see also JX-I.) 

ASUS argues that the Akitoshi reference anticipates claim 1 of the '741 Patent, but only 

under IBM's proposed claim construction of the limitation "predetermined cooling requirement." 

(See RX-26 (Stevenson Wit. Stat.) at ~ 192.) More specifically, ASUS's expert Dr. Stevenson 

testified that his opinion that the Akitoshi reference anticipates claim 1 of the' 741 Patent is 

based on his assumption "that the alleged invention recited in claim 1 of the '741 Patent covers 

cooling systems which sense the current temperature of the desired area to be cooled and require 

141 
the use of a temperature sensor to vary the rate of the cooling fan." (ld at ~ 184-185.) The 

evidence shows that the Akitoshi reference discloses a cooling device that senses the temperature 

of the component to be cooled using a temperature sensor and based on the sensed temperature 

varies the speed of the fan. (ld. at ~ 183;CRX-5C (Polish Reb. Wit. Stat.) at ~ 125.) The 

limitation "obtaining a predetermined cooling requirement" has been construed herein to mean 

"getting or acquiring a previously decided cooling level for at least one of the components that is 

not based on the current temperature of that component, nor gotten or acquired through the use 

of a temperature sensor." (Supra at Section IV.D.) However, as discussed above, the evidence 

of record shows that a temperature sensor is required by Akitoshi to determine the cooling level 

used to vary the fan. Additionally, the evidence shows that the cooling level is based on the 

current temperature of the component being cooled. Therefore, the ALJ finds that ASUS has 

failed to prove by clear and convincing evidence that the Akitoshi reference discloses the step of 

"obtaining a predetermined cooling requirement." Accordingly, the ALJ finds that the Akitoshi 

reference does not anticipate claim 1 ofthe '741 Patent. 

C. Obviousness 

Included within the presumption of validity is a presumption of non-obviousness. 

Structural Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707, 714 (Fed. Cir. 1984). 

Obviousness is grounded in 35 U.S.C. § 103, which provide, inter alia, that: 

A patent may not be obtained though the invention is not identically disclosed or 

described as set forth in section 102 of this title, if the differences between the 

subj ect matter sought to be patented and the prior art are such that the subj ect 

matter as a whole would have been obvious at the time the invention was made to 

a person having ordinary skill in the art to which said subject matter pertains. 

Patentability shall not be negative by the manner in which the invention was made. 

35 U.S.C. § 103(a). Under 35 U.S.C. § 103(a), a patent is valid unless "the differences between 

the subject matter sought to be patented and the prior art are such that the subject matter as a 

142 
whole would have been obvious at the time the invention was made to a person having ordinary 

skill in the art to which said subject matter pertains." 35 U.S.C. § 103(a). The ultimate question 

of obviousness is a question of law, but "it is well understood that there are factual issues 

. underlying the ultimate obviousness decision." Richardson-Vicks Inc., 122 F.3d at 1479; Wang 

Lab., Inc. v. Toshiba Corp., 993 F.2d 858,863 (Fed. Cir. 1993). 

Once claims have been properly constmed, "[t]he second step in an obviousness inquiry 

is to determine whether the claimed invention would have been obvious as a legal matter, based 

on underlying factual inquiries including: (1) the scope and content of the prior art, (2) the level 

of ordinary skill in the art, (3) the differences between the claimed invention and the prior art; 

and (4) secondary considerations of non-obviousness" (also known as "objective evidence"). 

Smiths Indus. Med Sys., Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1354 (Fed. Cir. 1999), citing 

Graham v. John Deere Co., 383 U.S. 1, 17 (1966). The ultimate detern1ination of whether an 

invention would have been obvious is a legal conclusion based on underlying findings of fact. In 

re Dembiczak, 175 F.3d 994, 998 (Fed. Cir. 1999). 

Obviousness may be based on any of the alleged prior art references or a combination of 

the same, and what a person of ordinary skill in the art would understand based on his knowledge 

and said references. If all of the elements of an invention are found, then: 

a proper analysis under § 103 requires, inter alia, consideration of two 

factors: (l) whether the prior art would have suggested to those of 

ordinary skill in the art that they should make the claimed composition or 

device, or carry out the claimed process; and (2) whether the prior art 

would also have revealed that in so making or carrying out, those of 

ordinary skill would have a reasonable expectation of success. Both the 

suggestion and the reasonable expectation of success must be founded in 

the prior art, not in the applicant's disclosure. 

Velander v. Garner, 348 F.3d 1359, 1363 (Fed. Cir. 2003) (emphasis added) (internal citations 

omitted). 

143 
The critical inquiry in determining the differences between the claimed invention and the 

prior art is whether there is a reason to combine the prior art references. See C.R. Bard v. M3 

Sys., 157 F.3d 1340, 1352 (Fed. Cir. 1998). For example: 

[AJ patent composed of several elements is not proved obvious merely by 

demonstrating that each of its elements was, independently, known in the 

prior art. Although common sense directs one to look with care at a patent 

application that claims as innovation the combination of two known 

devices according to their established functions, it can be important to 

identifY a reason that would have prompted a person of ordinary skill in 

the relevant field to combine the elements in the way the claimed new 

invention does. This is so because inventions in most, if not all, instances 

rely upon building blocks long since uncovered, and claimed discoveries 

almost of necessity will be combinations of what, in some sense, is already 

known . 

. KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,418-19 (2007) (emphasis added). The 

Federal Circuit case law previously required that, in order to prove obviousness, the patent 

challenger must demonstrate, by clear and convincing evidence, that there is a "teaching, 

suggestion, or motivation to combine. The Supreme Court has rejected this "rigid approach" 

employed by the Federal Circuit in KSR Int'[ Co. v. Teleflex Inc., 500 U.S. 398 (2007), 127 S.Ct. 

1727, 1739. The Supreme Court stated: 

When a work is available in one field of endeavor, design incentives and other 

market forces can prompt variations of it, either in the same field or a different 

one. If a person of ordinary skill can implement a predictable variation, § 103 

likely bars its patentability. For the same reason, if a technique has been used to 

improve one device, and a person of ordinary skill in the art would recognize that 

it would improve similar devices in the same way, using the technique is obvious 

unless its actual application is beyond his or her skill. Sakraida and Anderson'sBlack Rock are illustrative-a court must ask whether the improvement is more 

than the predictable use of prior art elements according to their established 

function. 

Following these principles may be more difficult in other cases than it is here 

because the claimed subject matter may involve more than the simple substitution 

of one known element for another or the mere application of a known technique to 

a piece of prior art ready for the improvement. Often, it will be necessary for a 

court to look to interrelated teachings of multiple patents; the effects of demands 

144 
known to the design community or present in the marketplace; and the 

background knowledge possessed by a person having ordinary skill in the art, all 

in order to determine whether there was an apparent reason to combine the known 

elements in the fashion claimed by the patent at issue. To facilitate review, this 

analysis should be made explicitly. See In re Kahn, 441 F.3d 977, 988 (CA Fed. 

2006) ("[R]ejections on obviousness grounds cannot be sustained by mere 

conclusory statements; instead, there must be some articulated reasoning with 

some rational underpinning to support the legal conclusions of obviousness"). As 

our precedents make clear, however, the analysis need not seek out precise 

teachings directed to the specific subject matter of the challenged claim, for a 

court can take account of the inferences and creative steps that a person of 

ordinary skill in the art would employ. 

[ ... ] 

The obviousness analysis cannot be confined by a formalistic conception of the 

words teaching, suggestion, and motivation, or by overemphasis on the 

importance ,of published atiicles and the explicit content of issued patents. The 

diversity of inventive pursuits and of modem technology counsels against limiting 

the analysis in this way. In many fields it may be that there is little discussion of 

obvious techniques or combinations, and it often may be the case that market. 

demand, rather than scientific literature, will drive design trends. Granting patent 

protection to advance that would occur in the ordinary course without real 

innovation retards progress and may, in the case of patents combining previously 

known elements, deprive prior inventions of their value or utility. 

KSR, 550 U.S. at 417-419; 127 S.Ct. at 1740-41. The Federal Circuit has harmonized the KSR 

opinion with many prior circuit court opinions by holding that when a patent challenger contends 

that a patent is invalid for obviousness based on a combination of prior art references, "the 

burden falls on the patent challenger to show by clear and convincing evidence that a person of 

ordinary skill in the art would have had reason to attempt to make the composition or device, or 

carry out the claimed process, and would have had a reasonable expectation of success in doing 

so. PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1360 (Fed. Cir. 2007)(citing 

Medichem SA. v. Rolabo SL., 437 F.3d 1175,1164 (Fed. Cir. 2006»; Noelle v. Lederman, 355 

F.3d 1343, 1351-52 (Fed. Cir. 2004); Brown & Williamson Tobacco Corp. v. Philip Morris, Inc., 

229 F.3d 1120, 1121 (Fed .Cir. 2000) and KSR, 127 S.Ct. at 1740 ("a combination of elements 

145 
'must do more than yield a predictable result'; combining elements that work together 'in an 

unexpected and fruitful manner' would not have been obvious"). Further, a suggestion to 

combine need not be express and may come from the prior art, as filtered through the knowledge 

of one skilled in the art. See Certain Lens-Fitted Film Pkgs., Inv. No. 337-TA-406, Order No. 

141 at 6 (May 24,2005). 

"Secondary considerations," also referred to as "objective evidence of non-obviousness," 

must be considered in evaluating the obviousness of a claimed invention, but the existence of 

such evidence does not control the obviousness determination. Graham, 383 U.S. at 17-18. A 

court must consider all of the evidence under the Graham factors before reaching a decision on 

obviousness. Richardson-Vicks Inc., 122 F.3d at 1483-84. Objective evidence of nonobviousness may include evidence of the commercial success of the invention, long felt but 

unsolved needs, failure of others, copying by others, teaching away, and professional acclaim. 

See Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 894 (Fed. Cir. 1984), cert. 

denied, 469 U;S. 857 (1984); Avia Group Int'l, Inc. v. L.A. Gear California, 853 F.2d 1557, 1564 

(Fed. Cir. 1988); In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986); Kloster Speedsteel AB v. 

Crucible Inc., 793 F.2d 1565 (Fed. Cir. 1986), cert. denied, 479 U.S. 1034 (1987). The burden 

of showing secondary considerations is on the patentee and, in order to accord objective 

evidence substantial weight, a patentee must establish a nexus between the evidence and the 

merits of the claimed invention; a prima facie case is generally set forth "when the patentee 

shows both that there is commercial success, and that the thing (product or method) that is 

commercially successful is the invention disclosed and claimed in the patent." In re GPAC Inc., 

57 F.3d 1573, 1580 (Fed. Cir. 1995); Demaco Corp. v. F. Von LangsdorffLicensing Ltd., 851 

F.2d 1387, 1392 (Fed. Cir. 1988), cert. denied, 488 U.S. 956 (1988); Certain Crystalline 

146 
Cefadroxil Monohydrate, Inv. No. 337-TA-293, Comm'n Op. (March 15, 1990). Once a 

patentee establishes nexus, the burden shifts back to the challenger to show that, e.g., 

commercial success was caused by "extraneous factors other than the patented invention, such as 

advertising, superior workmanship, etc." (ld.) at 1393. 

Generally, a prior art reference that teaches away from the claimed invention does not 

create prima facie case of obviousness. In re Gurley, 27 551, 553 (Fed. Cir. 1994); see also 

Andersen Corp. v. Pella Corp., No. 2007-1536, 2008 U.S. App. LEXIS 24087, *13-18 (Fed. Cir. 

Nov. 19,2008); Certain Rubber Antidegradants, Inv. No. 337-TA-533 (Remand), Final ID (Dec. 

3, 2008) (stating, "KSR reaffirms that obviousness is negated when the prior art teaches away 

from the invention.")). However, the nature of the teaching is highly relevant. ld. "A reference 

may be said to teach away when a person of ordinary skill, upon reading the reference, would be 

discouraged from following the path set out in the reference, or would be led in a direction 

divergent from the path that was taken by the applicant." ld. (emphasis added). For example, "a 

reference will teach away if it suggests that the line of development flowing from the reference's 

disclosure is unlikely to be productive of the result sought by the applicant." ld. 

1. The '829 Patent 

a) Analysis of the Asserted Claims 

ASUS argues that the Pepper Patent, in combination with "PWM switching power supply 

prior art, including the knowledge of one of skill in the art, The Winn Rosch Hardware Bible, or 

U.S. Patent No. 4,709,320," invalidates claims 1 and 2 of the '829 Patent for obviousness under 

35 U.S.C. §103. (RIB at 56.) ASUS makes cursory arguments, which span no more than a page 

of its brief, that "PWM switching power supplies were well known prior to the' 829 Patent, and 

even the Pepper patent," (RIB at 56), and that the "teachings of the Winn Rosch Hardware Bible 

147 . 
and [U.S. Patent No. 4,709,320] and the background knowledge possessed by persons of 

ordinary skill in the art provide the reasons to combine known prior elements to obtain the 

claimed subject matter ofthe'829 Patent." (RIB at 57.) 

The Staff argues that, under the proper claim construction, the asserted claims of the '829 

Patent are not obvious and, moreover, that ASUS has failed to demonstrate by clear and 

convincing evidence how one of ordinary skill in the art would actually combine the references. 

(SIB at 31.) 

IBM argues that there is no motivation to combine the Pepper Patent with the cited 

references. (CRB at 63.) IBM also addresses a variety of "secondary considerations," also 

known as "objective evidence of non-obviousness." (CRB at 63-66.) 

The ALJ finds that, by simply making cursory assertions and conclusory arguments, 

ASUS has blatantly failed to meet the clear and convincing standard necessary to jnvalidate the 

'829 Patent based on obviousness. See PharmaStem, 491 F.3d at 1360 (stating that a patent 

challenger must "show by clear and convincing evidence that a person 'of ordinary skill in the art 

would have had reason to attempt to make the composition or device, or carry out the claimed 

process, and would have had a reasonable expectation of success in doing so."); see also Tech. 

Licensing, 545 F.3d at 1327 (stating, "When an alleged infringer attacks the validity of an issued 

patent, [the] well-established law places the burden of persuasion on the attacker to prove 

inv,alidity by clear and convincing evidence." (emphasis added». A person is not entitled to a 

patent if the differences between the claimed invention and the prior art "are such that the subject 

matter as a whole would have been obvious at the time the invention was made to a person 

having ordinary skill in the art." 35 U.S.C. §103. The underlying factual inquiries relating to 

non-obviousness include: 1) the scope and content of the prior art, 2) the level of ordinary skill in 

148 
the art, 3) the differences between the claimed invention and the prior art, and 4) secondary 

considerations of non-obviousness, such as long-felt need, commercial success, and the failure of 

others. See Graham v. John Deere Co., 383 U.S. 1, 17 (1966). ASUS addresses none of these 

inquiries and, further, has failed to provide any motivation for one of ordinary skill in the art to 

combine the references, which is also required for a finding of obviousness. See C.R. Bard, 157 

F.3d at 1352. 

In addition, as the ALJ found supra, the Pepper Patent fails to disclose, at a minimum, the 

pulse width modulation switching power supply claimed in claim 1 of the' 829 Patent. The term 

"pulse width modulation switching power supply" is used in the prior art, (JX-3 at col. 5, 11. 2-8), 

and this type of prior art power supply is thoroughly described in the' 829 Patent. (See JX-3 at 

col. 4, 1. 60 - col. 5,1. 43.) The '829 Patent explicitly states, "Nearly all oftoday's personal 

computers use switching power supplies." (JX-3 at col. 5,11. 32-33.) Thus, ASUS's arguments 

that the Pepper Patent discloses a PWM switching power supply of "conventional design and 

function" and that the additional references on which it relies for a determination of obviousness 

"disclose conventional PWM switching power supplies," (RIB at 57), are entirely unconvincing. 

Therefore, the ALJ finds that the Pepper Patent, in combination with the Winn Rosch 

Hardware Bible, U.S. Patent No. 4,709,320, and the knowledge of one of ordinary skill in the art, 

does not render the' 829 Patent obvious. 

b) Secondary Considerations 

As indicated above, one of the Graham factors that must be considered in an obviousness 

analysis, is "objective evidence of non obviousness," also called "secondary considerations." See 

Strata flex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1536 (Fed. Cir. 1983) ("Thus evidence arising 

out of the so-called 'secondary considerations' must always when present be considered en route 

149 
to a determination of obviousness."). However, secondary considerations, such as commercial 

success, will not always dislodge a determination of obviousness based on analysis of the prior 

art. See KSR Int'l, 127 S.Ct. at 1745 (commercial success did not alter conclusion of 

obviousness). 

In its reply brief, IBM sets forth a detailed outline and analysis of secondary 

considerations of nonobviousness. (See generally CRB at 63-66.) However, as noted supra, 

IBM never addressed the validity of the' 829 Patent in its initial post-hearing brief, including 

obviousness. The ALJ finds that pursuant to Ground Rule 11.1, IBM has waived this issue. 

Unlike IBM's responses to ASUS' s assertions of anticipation which were permitted, <IBM has 

raised this issue for the first time in its post-hearing reply brief thereby depriving ASUS of the 

opportunity to respond to IBM's assertions of secondary considerations. As such, the ALJ finds 

that IBM has waived any opportunity to raise secondary considerations of nonobviousness for 

the '829 Patent. 

Furthermore, since the ALJ finds that ASUS has not even shown, by clear and convincing 

evidence, a prima facie case of obviousness. Thus, the burden never shifted to IBM to set forth a 

prima facie case of nonobviousness and there is no reason for the ALJ to address secondary 

considerations. 

2. The '741 Patent 

a) Analysis of the Asserted Claims 

ASUS argues that claim 1 of the '741 Patent is obvious under 35 U.S.C. §103 in view of 

Japanese Unexamined Patent Application No. 58-99821 to Suzuki ("the Suzuki reference") in 

combination with United States Patent No. 4,656,553 to Brown ("the Brown reference"). (RIB 

at 82.) The Suzuki reference was published on June 14, 1983. (See RX-049 (certified English 

150 
translation).) The Suzuki reference was considered by the patent examiner during the 

prosecution ofthe '741 Patent thus making ASUS' burden of proving obviousness "especially 

difficult." Glaxo Group Ltd., 376 F.3d at 1348. Because the Suzuki reference was published 

before the effective filing date of the '741 Patent, the Suzuki reference constitutes prior art. (See 

RX-049; see also JX-I.) The Brown reference was issued on April 7, 1987. (RX-032.) The 

Brown reference was not considered by the patent examiner during the prosecution of the '741 

Patent. Because the Brown reference was published prior to the effective filing date of the '741 

Patent, the Brown reference is prior art. 

ASUS argues that the Suzuki reference renders claim 1 of the '741 Patent obvious in 

view of the Brown reference, but only under IBM's proposed claim construction of the limitation 

"obtaining a predetermined cooling requirement." (See RIB at 82; RX-26 (Stevenson Wit. Stat.) 

at ~~ 237-238.) The Suzuki reference discloses varying a fan based on the current temperature of 

the component to be cooled and the obtained predetermined temperature values for each module. 

(See RIB at 83.) Suzuki also discloses that the temperature of the component to be cooled is 

obtained by a temperature sensor. (Id.; see also RX-26 (Stevenson Wit. Stat.) at ~ 239 

("obtaining a predetermined temperature threshold value from a temperature sensor ... satisfies 

the 'obtaining' limitation as construed by IBM.").) With regard to the Brown reference, ASUS 

only argues that in view of Brown it would have been obvious to implement the fan control 

functionality of Suzuki using a computer. (RIB at 83.) 

The limitation "obtaining a predetermined cooling requirement" has been construed 

herein to mean "getting or acquiring a previously decided cooling level for at least one of the 

components that is not based on the cutTent temperature of that component, nor gotten or 

acquired through the use of a temperature sensor." However, as discussed above, the evidence of 

151 
record shows that a temperature sensor is required by Suzuki to determine the cooling level used 

to vary the fan. Additionally, the evidence shows that the cooling level is based on the current 

temperature of the 'component being cooled. Therefore, the ALl finds that ASUS has failed to 

prove by clear and convincing evidence that the Suzuki reference in view ofthe Brown reference 

discloses the step of "obtaining a predetermined cooling requirement." Accordingly, the ALl 

finds that claim 1 of the '741 Patent is not obvious in light of the Suzuki reference in 

combination with the Brown reference. 

D. Written Description 

The first paragraph of 35 U.S.C. § 112 requires: 

The specification shall contain a written description of the invention, and of the 

marnier and process of making and using it, in such full, clear, concise, and exact 

terms as to enable any person skilled in the art '" to make and use the same ... 

(emphasis added.) 

The Federal Circuit has interpreted 35 U.S.C. § 112, ~ 1, to require the patent 

specification to "describe the claimed invention so that one skilled in the art can recognize what 

is claimed." Enzo Biochem, Inc. v. Gen~Probe Inc., 323 F.3d 956, 968 (Fed.Cir.2002). In 

evaluating whether a patentee has fulfilled this requirement, the standard is that the patent's 

"disclosure must allow one skilled in the art 'to visualize or recognize the identity of the subject 

matter purportedly described." Id (quoting Regents ofUniv. of Cal. v. Eli Lilly & Co., 119 F.3d 

1559, 1573 (Fed.Cir.1997)); see also Cordis Corp. v. Medtronic Ave, Inc., 339 F.3d 1352, 1364 

(Fed.Cir. 2003). 

Terms need not be used in haec verba. Eiselstein v. Frank, 52 F.3d 1035, 1038 

(Fed.Cir.1995). The written description requirement can be satisfied by "words, structures, 

152 
figures, diagrams, formulas, etc." Lockwoodv. Am. Airlines, Inc., 107 F.3d 1565, 1572 

(Fed. Cir .1997) (emphasis added). 

ASUS argues that the' 741 Patent is invalid for lack of sufficient written description. 

(RIB at 85.) ASUS's argument in support of its assertion that the '741 Patent lacks a sufficient 

written description is based on IBM's proposed claim constructions. (Id.) In particular, ASUS's 

argument is premised on the fact that the limitation "obtaining a predetermined cooling 

requirement" is construed to allow the use of temperature sensors and current temperature 

information to vary the rate ofthe claimed variable rate fan cooling unit. (Id. at 86.) However, 

as construed herein, the limitation "obtaining a predetermined cooling requirement" has been 

held to mean "getting or acquiring a previously decided cooling level for at least one of the 

components that is not based on the current temperature of that component, nor gotten or 

acquired through the use of a temperature sensor." (Supra at IV.D.) Because the claim 

construction that underpins ASUS' argument has not been adopted, ASUS' s argument lacks 

support and thus is found to be without merit. Accordingly, the ALJ fInds t~at ASUS has failed 

to prove by clear and convincing evidence that the '741 Patent is invalid for failure to satisfy the 

written description requirement. 

E. Enablement 

Section 112, ~ 1 of Title 35 requires that the specification describe the manner and 

process of making and using the invention "in such full, clear, concise, and exact terms as to 

enable any person skilled in the art to which it pertains, or with which it is most nearly connected, 

to make and use the same." 

The issue of whether a disclosure is enabling is a matter of law. Applied Materials, Inc. v. 

Advanced Semiconductor Materials America, Inc., 98 F.3d 1563, 1575 (Fed. Cir. 1996). "To be 

153 
enabling, the specification of a patent must teach those skilled in the art how to make and use the 

full scope of the claimed invention without 'undue experimentation. ", Genentech, Inc. v. Novo 

Nordisk, AIS, 108 F.3d 1361, 1365 (Fed. Cir. 1997). "Patent protection is granted in return for an 

enabling disclosure of an invention, not for vague, intimations of general ideas that mayor may 

not be workable." Id. at 1366. Although a specification need not disclose minor details that are 

well known in the art, "[i]t is the specification, not the knowledge of one skilled in the art, that 

must supply the novel aspects of an invention in order to constitute adequate enablement," and in 

so doing the specification cannot merely provide "only a starting point, a direction for further 

research." Id. On the other hand, "[i]t is not fatal if some experimentation is needed~ for the 

patent document is not intended to be a production specification." Northern Telecom, Inc. v. 

Datapoint Corp., 908 F.2d 931,941 (Fed. Cir. 1990). "Undue experimentation" is "a matter of 

degree" and "not merely quantitative, since a considerable amount of experimentation is 

permissible, if it is merely routine, or if the specification in question provides a reasonable 

amount of guidance with respect to the direction in which the experimentation should 

proceed .... " PPG Industries, Inc. v. Guardian Industries Corp., 75 F.3d 1558,1564 (Fed. Cir. 

1996). 

It is well-settled that in order to be enabling under Section 112, "the patent must contain a 

description sufficient to enable one skilled in the art to make and use the full scope of the 

claimed invention." United States v. Teletronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988); see 

also Amgen, Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200, 1213 (Fed. Cir. 1991) 

(inventor's disclosure must be "sufficient to enable one skilled in the art to carry out the 

invention commensurate with the scope of his claims"). Section 112 requires that the scope of 

154 
the claims must bear a reasonable correlation to the scope of enablement provided by the 

specification to such persons. Application of Fischer, 427 F.2d 833,839 (C.C.P.A. 1970). 

ASUS argues that the' 741 Patent is invalid because it fails to enable one of skill in the 

art to practice the claimed invention without undue experimentation. (RIB at 86.) ASUS's 

argument in support of its assertion that the '741 Patent does not satisfy the enablement 

requirement is based on IBM's proposed claim constructions. (ld. at 87.) In particular, ASUS's 

argument is premised on the fact that the limitation "obtaining a predetermined cooling 

requirement" is construed to allow the use of temperature sensors and current temperature 

information to vary the rate of the claimed variable rate fan cooling unit. (Jd.) However, as 

construed herein, the limitation "obtaining a predetermined cooling requirement" has been held 

to mean "getting or acquiring a previously decided cooling level for at least one of the 

components that is not based on the current temperature of that component, nor gotten or 

acquired through the use of a temperature sensor." (Supra at Section IV.D.) Because the claim 

construction that underpins ASUS's argument has not been adopted, ASUS's argument lacks 

support and thus is found to be without merit. Accordingly, the ALJe fmds that ASUS has failed 

to prove by clear and convincing evidence that the '741 Patent is invalid for failure to satisfy the 

enablement requirement. 

VII. PATENT EXHAUSTION 

ASUS did not address patent exhaustion of the '852 Patent in its Initial Post-hearing Brief 

and have, therefore, waived any arguments with regard to this affirmative defense. (See 

generally RIB at 115-124.) Therefore, pursuant to Grotmd Rule 11.1, Respondents have waived 

any arguments relating to indefiniteness. 

155 
VIII. LICENSING 

ASUS argues that it has a license to practice the asserted claims of the' 852 Patent under 

the General Public License. 

A. Applicable Law 

Selling or importing a licensed product can not result in infringement of a licensed patent. 

See 35 U.S.C. §271(a) ("whoever without authority makes, uses, offers to sell or sells any 

patented invention, within the United States or imports into the United States any patented 

invention ... infringes the patent) (emphasis supplied). The Supreme Court long ago recognized 

that a license is a complete defense to a claim of infringement. See De Forest Radio Tel. & Tel. 

Co. v. United States, 273 U.S. 236,241 (1927). A license is also a complete defense in a Section 

337 Investigation. See Certain Cardiac Pacemakers and Components Thereof, ITe Inv. No. 

337-TA-162, 1984 WL 273841, at *10 (May 23, 1984) ("Telectronics' motion for termination of 

the Investigation relative to Telectronics for infringement of the '242 patent is hereby granted 

because a valid license is an absolute defense to patent infringement.") The burden of proof lies 

on the accused infringer to prove an implied license. Bandag, Inc. v. Al Bolser '8 Tire Stores, Inc., 

750 F.2d 903,924 (Fed. Cir. 1984). 

B. GPL License 

ASUS argues that it has a license to practice the asserted claims of the '852 patent via the 

General Public License ("GPL"). (RIB at 122.) The GPL is a software license designed to 

promote "free software." The GPL's authors stated, "we have made it clear that any patent must 

,be licensed/or everyone 'sfree use or not licensed at all." (RIB at 122.) Under this provision, a 

company that participates in the GPL by distributing or modifying a free software program 

156 
consents to royalty-free redistribution of that program. (RIB at 122-123.) A company that does 

not, or cannot, consent to royalty-free redistribution must not participate in the GPL. 

ASUS argues that IBM's own corporate documents and corporate representative have 

confirmed that this is the effect oftheGPL. (RIB at 123.) As such, ASUS argues that IBM has 

consented that the iptables and netfilter programs are available for royalty-free use by any taker 

under the GPL. ASUS states that it participates in GPL licensing of iptables and netfilter and 

incorporates those programs into all but two of the Accused Routers. (RIB at 123.) ASUS 

further argues that the very code relied on by IBM in alleged support of its infringement case 

"-

states in its header that the code is netfilter code "Licensed under the GNU General Public 

License." (RIB at 123.) Nevertheless, IBM apparently believes it can assert patent rights over 

ASUS's use of this code-despite the fact that it is open source code, used by ASUS under the 

same license IBM itself consented to. (RIB at 123.) ASUS argues that, as such, to the extent 

either iptables or netfilter practices any valid claim of the '852 patent, ASUS has an implied 

license to practice those claims pursuant to the GPL. (RIB at 124.) -Staff agrees. (SIB at 64.) 

IBM argues that the' 852 Patent does not claim GPL or Linux kernel source code or any 

source code for that matter. (eRB at 44.) IBM argues that its infringement assertions are based 

on source code outside of the Linux kernel and on noncode hardware and network system 

elements. (eRB at 44.) IBM argues that ASUS's source code is outside the Linux kernel and 

were written independently of the netfilter and iptables so they cannot be considered derivative 

works under the GPL. (eRB at 44.) That ASUS's source code is outside of the GPL is further 

supported by ASUS's actions in this investigation, such as seeking to protect and maintain the 

confidentiality of its source code and additional source code files that it does not distribute under 

157 
the GPL. (CRB at 44-45.) IBM further argues that the noncode hardware and network system 

elements are not related to open source code and therefore outside of the GPL. (CRB at 45lo 

The ALJ finds that to the extent that ASUS incorporates open source programs, namely 

iptables and/or netfilters, in its Accused Routers, ASUS has an implied license under GPL and 

IBM's infringement claims under the '852 Patent are barred to that extent. The GPL explains in 

detail the terms of its lice~se, especially the ability to freely obtain, modify and redistribute any 

software under said license. (RX-294 and RX-295.) The evidence shows that IBM is a licensee 

under the GPL to iptables and netfilters and that these are also part of the Linux kernel. (JX -16C 

at 79:10-15; JX-33 at 47:5-48:11,60:22-61:12; RX-597.) Under the GPL, IBM licensed others to 

use, modify or distribute iptables and the Linux kernel pursuant to the GPL. (JX-33 at 60:22-

61 :12,85:6-93:7.) 

. Indeed, the 

source code itself specifically states that it is licensed under the GPL: the first four lines of the 

ASUS WI-330GE WLAN shows the author and that the open source code is licensed under the 

GPL ("Licensed under the GNU General Public License"). (RX-352 at ASUS_SC027378; RX24C at 145-146). A similar statement is contained in other Accused Routers clearly indicating 

that the underlying source code for the products is licensed under the GPL. (RX-24C at 147-149, 

152-53; RPX-36 .) As such, ASUS is licensed under the GPL to freely use and modify such 

source code without any further restrictions. (RX-295 at §§ 6,7.) 

IBM argues that it is asserting its rights against source code outside of the Linux kernel 

that was developed by ASUS to enable the routing function. IBM, however, never addressed this 

issue in its initial post-hearing brief and raises it for the first time in its post-hearing reply brief 

20 ASUS argues that since IBM failed to address the licensing defense in its Initial Post-hearing brief, it has therefore 

waived any dispute regarding the issue per Ground Rule 11.1. Consistent with the ALJ's prior rulings, however, he 

is permitting IBM to respond to ASUS's licensing arguments. 

158 
thereby depriving ASUS of the opportunity to respond to IBM's assertions. Moreover, the GPL 

specifically allows for the modification of programs under the GPL, including in this instance the 

Linux kernel. (RX-295.) Indeed, the evidence shows that the source code relied upon by IBM 

clearly and specifically states that it is licensed under the GPL. As such, the ALl finds that IBM 

is bound by its agreement under the GPL and is, therefore, barred from its infringement claims. 

under the '852 Patent against those accused products that contain this open source code. 

IX. DOMESTIC INDUSTRY 

As stated in the notice of investigation, a determination must be made as to whether an 

industry in the United States exists as required by subsection (a)(2) of section 337. Section 337 

declares unlawful the importation, the sale for importation or the sale in the United States after 

importation of articles that infri~ge a valid and enforceable U.S. patent only if an industry in the 

United States, relating to articles protected by the patent ... concerned, exists or is in the process 

of being est;:tblished. There is no requirement that the domestic industry be based on the same 

claim or claims alleged to be infringed. 19 U.S.C. § 1337(a)(2). 

The domestiG industry requirement consists of both an economic prong (i.e., there must 

be an industry in the United States) and a technical prong (Le., that industry must relate to 

articles protected by the patent at issue). See Certain Ammonium Octamolybdate Isomers, Inv. 

No. 337-TA-477, Comm'n Op. at 55, USITC Pub. 3668 (Jan. 2004). The complainant bears the 

burden of proving the existence of a domestic industry. Certain Methods of Making Carbonated 

Candy Products, Inv. No. 337-TA-292, Cornm'n Op., at 34-35, USITC Pub. 2390 (June 1991). 

Thus, in this investigation IBM must show that it satisfies both the technical and 

economic prongs of the domestic industry requirement with respect to the '852, the '829 and the 

159 
'741 Patents. As noted, and as explained below, it is found that these domestic industry 

requirements have been satisfied. 

A complainant in a patent-based Section 337 investigation must demonstrate that it is 

practicing or exploiting the patents at issue. See 19 U.S.C. § 1337(a)(2) and (3); also see Certain 

Microsphere Adhesives, Process for Making Same, and Products Containing Same, Including 

Self-Stick Repositionable Notes, Inv. No. 337-TA-366, Commission Opinion at 8, 1996 WL 

1056095 (U.S.I.T.C., January 16, 1996) ("Certain Microsphere Adhesives"), afJ'd sub nom. 

Minnesota Mining & Mfg. Co. v. u.s. Int'l Trade Comm 'n, 91 F.3d 171 (Fed. Cir. 1996) (Table); 

Certain Encapsulated Circuits, Commission Opinion at 16. The ~omplainant, however, is not 

required to show that it practices any of the claims asserted to be infringed, as long as it can 

establish that it practices at least one claim of the asserted patent. Certain Point of Sale 

Terminals and Components Thereof, Inv. No. 337-TA-524, Order No. 40, 2005 ITC LEXIS 374, 

~26 (Apri111, 2005). Fulfillment of this so-called "technical prong" of the domestic industry 

requirement is not determined by a rigid formula, but rather by the articles of commerce and the 

realities of the marketplace. Certain Diltiazem Hydrochloride and Diltiazem Preparations, Inv. 

No. 337-TA-349, U.S.I.T.C. Pub. No. 2902, Initial Determination at 138, 1995 WL 945191 

(U.SJ.T.C., February 1, 1995) (unreviewed in relevant part) ("Certain Diltiazem"); Certain 

Double-Sided Floppy Disk Drives and Components Thereof, Inv. No. 337-TA-215, 227 U.S.P.Q. 

982, 989 (Commission Opinion 1985) ("Certain Floppy Disk Drives"). 

The test for claim coverage for the purposes of the technical prong of the domestic 

industry requirement is the same as that for infringement. Certain Doxorubicin and 

Preparations Containing Same, Inv. No. 337-TA-300, Initial Determination at 109, 19.90 WL 

710463 (U.S.I.T.C., May 21, 1990) ("Certain Doxorubicin"), ajJ'd, Views of the Commission at 

160 
22 (October 31, 1990). "First, the claims of the patent are constmed. Second, the complainant's 

article or process is examined to determine whether it falls within the scope of the claims." (Jd) 

As with infringement, the first step of claim constmction is a question of law, whereas the 

second step of comparing the article to the claims is a factual det~rmination. Markman, 52 F.3d 

at 976. Thctechnical prong of the domestic industry can be satisfied either literally or under the 

doctrine of equivalents. Certain Excimer Laser Systems for Vision Correction Surgery and 

Components Thereof and Methodsfor Performing Such Surgery, Inv. No. 337-TA-419, Order 

Nd. 43, 1999 ITC LEXIS 245, *7 (July 30, 1999). The patentee must establish by a 

preponderance of the evidence. that the domestic product practices one or more claims of the 

patent. See Bayer, 212 F.3d at 1247. 

The economic prong of the domestic industry requirement is defined in subsection 

337(a)(3) as follows: 

(3) For-purposes of paragraph (2), an industry in the United States shall be 

considered to exist if there is in the United States, with respect to the articles 

protected by the patent, copyright, trademark or mask work concerned -

(A) Significant investment in plant and equipment; 

(B) Significant employment oflabor or capital; or 

(C) Substantial investment in its exploitation, including 

engineering, research and development, or licensing. 

19 U.S.C. § 1337(a)(3). 

The economic prong of the domestic industry requirement is satisfied by meeting the 

criteria of anyone of the three factors listed above. 

Section 337(a)(3)(C) provides for domestic industry based on "substantial investment" in 

the enumerated activities, including licensing of a patent. See Certain Digital Processors and 

Digital Processing Systems, Components Thereof, and Products Containing Same, Inv. No. 337-

TA-559, Initial Determination at 88 (May 11,2007) ("Certain Digital Processors"). Mere 

161 
ownership of the patent is insufficient to satisfy the domestic industry requirement. Certain 

Digital Processors at 93. (Citing the Senate and House Reports on the Omnibus Trade and 

Competitiveness Act of 1988, S.Rep. No. 71. However, entities that are actively engaged in 

licensing their patents in the United States can meet the domestic industry requirement. Certain 

Digital Processors at 93. In establishing a domestic industry under Section 337(a)(3)(C), the 

complainant does not need to show that it or one of its licensees is practicing a patent-in-suit. 

See Certain Semiconductor Chips with Minimized Chip Package Size and Products Containing 

Same, Inv. No. 337-TA-432, Order No. 13, at 11, (Jan. 24, 2001) ("Certain Semiconductor 

Chips"). The complainant must, however, receive revenue, e.g. royalty payments, from its 

licensing activities. Certain Digital Processors, at 93-95 ("Commission decisions also reflect 

the fact that a complainant's receipt of royalties is an important factor in determining whether the 

domestic industry requirement is satisfied ... [t]here is no Commission precedent for the 

establishment of a domestic industry based on licensing in which a complainant did not receive 

any revenue from alleged licensing activities. In fact, in previous investigations in which a 

complainant successfully relied solely on licensing activities to satisfy section 337(a)(3), th~ 

complainant had licenses yielding royalty payments.") (citations omitted). See also Certain 

Video GraphiCS Display Controllers and Products Containing Same, Inv. No. 337-TA-412, 

Initial Determination at 13 (May 14, 1999) ("Certain Video Graphics Display Controllers "); 

Certain Integrated Circuit Telecommunication Chips and Products Containing Same Including 

Dialing Apparatus, Inv. No. 337-TA-337, U.S.I.T.C. Pub. No. 2670, Initial Determination at 98 

(March 3, 1993) ("Certain Integrated Circuit Telecommunication Chips "); Certain ZeroMercury-Added Alkaline Batteries, Parts Thereof and Products Containing Same, Inv. No. 337-

TA-493, Initial Determination at 142 (June 2, 2004) ("Certain Zero-Mercwy-Added Alkaline 

162 
Batteries "); Certain Semiconductor Chips, Order No. 13 at 6 (Jan. 24, 2001); Certain Digital 

Satellite System DSS Receivers and Components Thereof, Inv. No. 337-TA-392, Initial and 

Recommended Determinations at 11 (Dec. 4, 1997) ("Certain Digital Satellite System DSS 

Receivers "). 

IBM argues that it has made substantial investments in its licensing program and that 

there is a sufficient nexus between its licensing activities and the patents at issue. (CIB at 119.) 

IBM argues that it employs a number of patent engineers, licensing representative and 

intellectuf,ll property attorneys in its licensing program; that these employees are located in 

offices throughout the United States; and that they are compensated for their work. '(CIB at 119-

121.) IBM further argues that as part of its licensing program, it uses "proof packages," which is 

a point by point demonstration that the subject company's product offerings infringe a specific 

claim of an IBM patent. (CIB at 122.) These proof packages require a signifIcant amount of 

work and coordination between IBM's licensing personnel, patent engineering personnel and its 

legal department and are a time consuming process taking up to six months. (CIB at 122-124.) 

IBM further argues that it has obtained a number of licenses and revenue from the patents at 

Issue. (CIB at 124-125.) Staff agrees. (SIB at 64-65.) 

ASUS argues that there an insufficient nexus between IBM's licensing activities and the 

patents at issue. (RIB at 124.) ASUS argues that there is no basis to attribute more than a 

miniscule fraction of IBM's investment in licensing activities to the patents at issue and takes 

issue with IBM's proof packages as evidence that the licenses entered into with IBM were a 

result of those proof packages and the patents discussed in those proof packages, including the 

patents at issue. (RIB at 124-125.) 

163 
The evidence shows that IBM has met the domestic industry requirement based on its 

licensing activities. IBM generates income and revenue from its licensing activities, estimated 

to be about (CX-2050C at Q40.) IBM currently employs approximately. patent 

engineers, licensing representatives and intellectual property attorneys that are located in IBM's 

offices throughout the United States in Armonk, New York; Hopewell Junction, New York and 

Raleigh, North Carolina. (CX-2050C at Q41, 61.) These. employees are involved in IBM's 

licensing related activities and received compensation in 2007 totaling and a 

projected in 2008. (CX-2050C at 52, 58; CX-2068C.) 

As for each specific asserted patent, the ALJ further finds that there is a suffiCient nexus 

between IBM's licensing activities and the patents at issue. Specifically, IBM has entered into I 

license agreements that feature the '852 Patent and these agreements generate over_ 

in revenue. (CX-2050C at QI17-198; CX2085C-2094C.) IBM has entered into at least_ 

license agreements that feature the' 829 Patent and these license agreements generate over. 

million in revenue. (Huston, Tr. at 208: 12-16,209: 15-19; CX-2050C at Q 200-255; CX-2084C; 

CX-2097C; CX-2098C; CX-2100C-2104C; CX-2106C-CX2107C.) The '741 Patent is also 

featured in a license agreement that is projected to generate over" million in revenue for 

IBM and there are currently three prospective licensees for this patent. (Huston, Tr. 209:25-210: 

3; CX-2050C at Q288-291; CX-2084C.) Therefore, the ALJ finds that IBM has satisfied the 

domestic industry requirement under 337(a)(3)(C) with respect to each of the asserted patents. 

164 
x. CONCLUSIONS OF LAW 

1. The Commission has personal jurisdiction over the parties, and subject-matter 

jurisdiction over the accused products. 

2. The importation or sale requirement of section 337 is satisfied. 

3. The accused products do not literally infringe the asserted claims of the' 852 Patent. 

4. The accused products do not literally infringe the asserted claims of the' 829 Patent. 

5. The accused products do not literally infringe the asserted claims of the '741 Patent. 

6. The accused products do not infringe the asserted claims of the' 852 Patent under the 

doctrine of equivalents. 

7. The accused products do not infringe the asserted claims of the' 829 Patent under the 

doctrine of equivalents. 

8. The accused products do not infringe the asserted claims of the '741 Patent under the 

doctrine of equivalents. 

9. ASUS does not induce infringement of the '852 Patent. 

10. ASUS does not induce infringement of the '829 Patent. 

11. ASUS does not induce infringement of the '741 Patent. 

12. ASUS does not contribute to the infringement of the '829 Patent. 

13. ASUS does not contribute to the infringement of the '741 Patent. 

14. The asserted claims of the '852 Patent are not invalid under 35 U.S.C. § 102 for 

anticipation. 

15. The asserted claims ofthe '829 Patent are not invalid under 35 U.S.C. § 102 for 

anticipation. 

165 
16. The asserted claims of the '741 Patent are not invalid under 35 U.S.c. § 102 for 

anticipation. 

17. The asserted claims ofthe '829 Patent are not invalid under 35 U.S.C. § 103 for 

obviousness. 

18. The asserted claims of the '741 Patent are not invalid under 35 U.S.C. § 103 for 

. obviousness. 

19. The asserted claims of the '741 Patent satisfy the written description requirement of 

35 U.S.C. § 112, 1. 

20. The asserted claims of the '741 Patent satisfy the enablement requirement of35 

U.S.C. § 112, 1. 

21. The open source code in the Accused Routers are licensed to the' 852 Patent under 

the GPL. 

22. A domestic industry exists, as required by section 337 for the '852, the '829 and the 

'741 Patents. 

23. It has not been established that a violation exists of section 337. 

166 
XI. INITIAL DETERMINATION AND ORDER 

Based on the foregoing, it is the INITIAL DETERMINATION ("ID") of this ALJ that no 

violation of section 337 of the Tariff Act of 1930, as amended, has occurred in the importation 

into the United States, the sale for importation, or the sale within the United States after 

importation of certain computer products, components and products containing same by reason 

of infringement of one or more of claims 1,8, 13, 14,22 and 23 of United States Patent No. 

5,371,852; claims 1 and 2 of U.S. Patent No. 5,008,829; and claim 1 of U.S. Patent No. 

5,249,741 . The ALJ further determines that a domestic industry exists that practices U.S. Patent 

Nos. 5,371,852. 5,008,829 and 5,249,741. 

Further, this Initial Determination, together with the record of the hearing in this 

investigation consisting of: 

(1) the transcript of the hearing, with appropriate corrections as may hereafter be 

ordered, and 

(2) the exhibits received into evidence in this investigation, as listed in the attached 

exhibit lists in Appendix A, 

are CERTIFIED to the Commission. In accordance with 19 C.F.R. § 210.39(c), all material 

found to be confidential by the undersigned under 19 C.F.R. § 210.5 is to be given in camera 

treatment. 

The Secretary shall serve a public version of this ID upon all parties of record and the 

confidential version upon counsel who are signatories to the Protective Order (Order No.1.) 

issued in this investigation, and upon the Commission investigative attorney. 

167 
RECOMMENDED DETERMINATION ON REMEDY AND BOND 

I. Remedy and Bonding 

The Commission's Rules provide that subsequent to an initial determination on the 

question of violation of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337, the 

administrative law judge shall issue a recommended determination containing findings of fact 

and recommendations concerning: (1) the appropriate remedy in the event that the Commission 

finds a violation of section 337, and (2) the amount of bond to be posted by respondents during 

Presidential review of Commission action under section 337G). See 19 C.F.R. § 210.42(a)(1)(ii). 

A. Limited Exclusion Order 

Under Section 337(d), the Commission may issue either a limited or a general exclusion 

order. A limited exclusion order directed to respondents' infringing products is among the 

remedies that the Commission may impose, as is a general exclusion order that would apply to 

all infringing products, regardless of their manufacturer. See 19 U.S.C .. § 1337(d). 

IBM requests that, should the Commission find a violation, a limited exclusion order 

should be issued that prohibits the importation of all infringing accused products by ASUS and 

all of their affiliated companies, parents, subsidiaries, or other related business entities of their 

successors or assigns. (CIB at 125.) IBM further argues that given the vast size of ASUS's 

OEM/ODM business, a certification provision should be included requiring importers of 

potentially excluded products to certify that the products are not manufactured by ASUS. (CIB 

at 125.) Staff agrees. (SIB at 66.) 

ASUS argues that IBM is not entitled to an exclusion order covering ASUS's 

downstream products as IBM has failed to establish which ASUS products, if any, incorporate 

168 
the accused products and failed to establish the relative value of the accused products compare to 

the downstream products. (RIB at 126-127.) ASUS further argues that IBM is not entitled to an 

exclusion order that covers transshipments. (RIB at 127.) ASUS argues that IBM is not entitled 

to an exclusion order that covers the accused products because IBM has based its infringement 

case on a theory of indirect infringement. ASUS argues that since the products cannot infringe 

until an end user programs or enables the products after importation. (RIB at 127-128.). 

The ALJ agrees that the evidence shows that, if a violation is found, the Commission 

should issue a limited exclusion order. The limited exclusion order should apply to ASUS and 

all of their affiliated companies, parents, subsidiaries, or other related business entities, or their 

successors or assigns and should be limited to the accused infringing products. The ALJ further 

recommends that the limited exclusion order include a certification provision. 

B. Cease and Desist Order 

Section 337 provides that in addition to, or in lieu of, the issuance of an exclusion order, 

the Commission may issue. a cease and desist order as a remedy for violation of section 337. See 

19 U.S.c. § 1337(t)(1). The Commission generally issues a cease and desist order directed to a 

domestic respondent when there is a "commercially significant" amount of infringing, imported 

product in the United States that could be sold so as to undercut the remedy provided by an 

exclusion order. See Certain Crystalline Cefadroxil Monohydrate, Inv. No. 337-TA-293, USITC 

Pub. 2391, Comm'n Op. on Remedy, the Public Interest and Bonding at 37-42 (June 1991); 

Certain Condensers, Parts Thereof and Products Containing Same, Including Air Conditioners 

for. Automobiles, Inv. No. 337-TA-334, Comm'n Op. at 26-28 (Aug. 27, 1997). 

IBM requests a cease and desist order against domestic respondent ASUS Computer 

International based in the United States as it maintains significant inventories of the infringing 

169 
products in the United States. (CIB at 126.) IBM further seeks a cease and desist order against 

both ASUSTeK and ASUS Computer International that would encompass their Internet activities 

to the extent that the websites accept or facilitate sales orders and provide information on the 

infringing products. (CIB at 126.) Staff agrees. (SIB at 66.) 

ASUS argues that IBM has failed to demonstrate that ASUS has a commercially 

significant U.S. inventory ofthe accused products and that a cease and desist order is 

unwarranted. (RIB at 128.) 

The ALJ agrees that the evidence shows that ASUS maintains significant inventories of 

the accused products in the United States and that, if a violation is found, a cease and desist order 

is warranted. (CX-2169-CX-2172; CX-2022C) 

C. Bond During Presidential Review Period 

The Administrative Law Judge and the Commission must determine the amount of bond 

to be required of a respondent, pursuant to section 337(j)(3), during the 60-day Presidential 

review period following the issuance of permanent relief, in the event that the Commission 

determines to issue a remedy. The purpose of the bond is to protect the complainant from any 

injury. 19 C.F.R. § 2l0.42(a)(1)(ii), § 210.50(a)(3). 

When reliable price information is available, the Commission has often set the bond by 

eliminating the differential between the domestic product and the imported, infringing product. 

. See Certain Microsphere Adhesives, Processes for Making Same, and Products Containing Same, 

Including Self-Stick Repositionable Notes, Inv. No. 337-TA-366, Comm'n Op. a 24 (1995). In 

other cases, the Commission has turned to alternative approaches, especially when the level of a 

reasonable royalty rate could be ascertained. See, e.g., Certain Integrated Circuit 

Telecommunication Chips and Products Containing Same, Including Dialing Apparatus, Inv. No. 

170 
337-TA-337, Comm'n Op. at 41 (1995). A 100 percent bond has been required when no 

effective alternative existed. See, e.g., Certain Flash Memory Circuits and Products Containing 

Same, Inv. No. 337-TA-382, USITC Pub. No. 3046, Comm'n Op. at 26-27 (July 1997)(a 100% 

bond imposed when price comparison was not practical because the parties sold products at 

different levels of commerce, and the proposed royalty rate appeared to be de minimis and 

without adequate support in the record). 

IBM requests a bond be set in the amount of 100% of the entered value of accused 

products because the direct price comparison between the parties' respective products is not clear 

or not possible. (CIB at 126-127.) ASUS argues that since IBM has failed to provide any 

evidence that could be used to determine the appropriate bone amount, then no bond should be 

set or the bond should not exceed 3%. (RIB at 128-129.) Staff agrees that the bond should be 

set at 100% of the entered value of accused infringing products. (SIB at 66.) 

In this case, a reasonable royalty rate cannot be ascertained. Accordingly, the ALJ 

recommends a bond in the amount of 100% ofthe entered value of the infringing products. 

II. Conclusion 

In accordance with the discussion ofthe issues contained herein, it is the 

RECOMMENDED DETERMINATION ("RD") of the ALJ that in the event the Commission 

finds a violation of section 337, the Commission should issue a limited exclusion order directed 

at ASUS's accused infringing products. The Commission should also issue a cease and desist 

order directed toward the domestic respondents ASUSTeK and ASUS Computer International 

that prohibits the sale of any commercially. significant quantities of the accused products. 

Furthermore, if the Commission imposes a remedy following a findIng of violation, ASUS 

171 
should be required to post a bond of 100% of the entered value of the acc~sed products ,during 

the Presidential review period. 

Within seven days of the date of this document, each party shall submit to the office of 

the Administrative Law Judge a statement as to whether or not it seeks to have any portion of 

this document deleted from the public version. The parties' submissions must be made by hard 

copy by the aforementioned date. 

Any party seeking to have any portion of this document deleted from the public version 

thereof must submit to this office a copy of this document with red brackets indicating any 

portion asserted to contain confidential business information by the aforementioned date. 'The 

parties' submission concerning the public version of this document need not be filed with the 

Commission Secretary. 

SO ORDERED. 

~_~U~~~~~===::::;:;;Z:~~ Theodore R. Essex 7 

Administrative Law Judge 

172 
IN THE MATTER OF CERTAIN COMPUTER PRODUCTS, Inv. No. 337-TA-628 

COMPUTER COMPONENTS AND PRODUCTS CONTAINING 

SAME 

PUBLIC CERTIFICATE OF'SERVICE 

I, Marilyn R. Abbott, hereby certify that the attached INITIAL DETERMINATION ON 

VIOLATION OF SECJ;'ION 337 AND RECOMMENDED DETERMINATION ON REMEDY 

AND BOND has been served by hand upon the Commission Investigative Attorney, VU Q. Bui, 

Esq., and the following parties as indicated on April 13, 2009. 

il n R. Abbott, Secretary 

. nternational Trade Commission 

500 E Street, SW, Room 112A 

Washington, D.C. 20436 

COMPLAINANT INTERNATIONAL BUSINESS MACHINES: 

V. James Adduci II, Esq. 

ADDUCI, MASTRIANI & SCHAUMBERG LLP 

. 1200 Seventeenth Street, NW, Fifth Floor 

Washington, DC 20036 

RESPONDENTS ASUSTeK COMPUTER, INC. and 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

'&4-Via First Class Mail 

( ) Other: ___ _ 

ASUS COMPUTER INTERNATIONAL, NON-NCS TECHNOLOGIES INC: 

Brian R Nester, Esq. 

Jeffrey R. Whieldon, Esq. 

FISH & RICHARDSON PC 

1425 K Street, NW, 11th Floor 

Washington, DC 20005 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

~a First Class Mail 

( ) Other: ___ _ 
IN THE MATTER OF CERTAIN COMPUTER PRODUCTS, Inv. No. 337-TA-628 

COMPUTER COMPONENTS AND PRODUCTS CONTAINING 

SAME 

CERTIFICATE OF SERVICE - PAGE 2 

PUBLIC MAILING LIST 

Heather Hall 

LEXIS - NEXIS 

9443 Springboro Pike 

Miamisburg, OR 45342 

Kenneth Clair 

THOMSON WEST 

1100 Thirteen Street, NW, Suite 200 

Washington, D.C. 20005 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

~) Via First Class Mail 

f }Other: . 

( ) Via Rand Delivery 

( ) Via Overnight Mail 

~) Via First Class Mail 

( ) Other: ___ _ 

,