office action, the inventor amended the claim language as follows by inserting the underlined

language: “‘said interface means including a plurality of message registers, of which at least one

of said message registers is associated with each of said programmable logic controllers.”
(Rockwell’s Ex. 5 (Sep. 5, 1990 Amendment) at 4.) This amendment confirmed that there is
more than one message register for all the PLCs (by adding the phrase “plurality of’), but it does
not clearly indicate whether the inventor intended for there to be a one-to-one correspondence
between a message register and a PLC. Indeed, the language suggests the contrary, in contrast to
the opinion of Rockwell’s expert, Kevin Welch. (See Rockwell’s Ex. 12 (Welch Report) at 68.)
The function requires an association between the registers and the PLCs, but it does not define
the contours of that association. It thus appears that the inventor chose to answer the examiner’s
question as to the uncertainty of his previous language by offering a third option: the interface
means has more than one register for the PLCs, but one-to-one correspondence is not necessary.
Thus, as Rockwell acknowledges, an interface card that has two or more registers associated with
a single PLC will have identity with the function of the interface means in claim 11 requiring
tegisters to be “associated with” each PLC. (See Rockwell Resp. {| 67.)

What this amendment does show, however, is that Solaia incorrectly argues that “[t]he
specification describes an embodiment which recycles and re-uses registers in the same way
Rockwell claims its ‘Rockwell Systems’ operate.” (D.E. 646 (Solaia’s Combined Reply in
Support of Its Mot. for Summ. J. of Infringement and Resp. to Rockwell’s Mot. for Summ. J. of
Non-Infringement) at 27.) Solaia points to the description of Figure 5 in the ‘318 patent, which
states, “Each PLC addresses a particular one of the receiving registers 106a through 106n for

receiving the sent messages. Alternatively, the interface circuit card 24 can have one receiving

14



and central processor . . .

C. interface means electrically connected between said computer and said
network for receiving messages from each of said programmable logic controllers,
said interface means including a plurality of message registers, of which at least
one of said message registers is associated with each of said programmable logic
controllers...

D. spreadsheet instruction means contained in said memory for effecting a
general purpose spreadsheet program in said computer . . . and

E. add-in instruction means contained in said memory for presenting add-in menu
commands and interrupt selected instructions operating through said spreadsheet
instruction means for said interrupt selected instructions to move sequentially
received messages from said message registers to respective assigned address
locations . . . so that messages from said programmable logic controllers
indicating the condition of said equipment can be saved and moved directly to
said cells.

(‘318 patent, col. 16, line 44 ~ col. 17, line 22 (emphasis added).) Claim 12 recites, in pertinent
part:

12. A device for transmitting and receiving electrical signals forming messages to and
from respective addressable registers located in respective addressable programmable
logic controllers that are connected together over a communications network, said device
comprising:

A. [processor]” means connected to said communications network for moving
said electrical signals forming messages to and from respective registers located
in said processor means, said respective registers for each of said respective
addressable programmable logic controllers being addressable form [sic] said
communications network and accessible from said processor means;

B. spreadsheet means contained in said processor means, said spreadsheet means
presenting a spreadsheet of cells into which information can be inserted to
facilitate executing actions through said spreadsheet means . . .

C. add-in program means contained in said processor means for inserting in at
least one cell information including the address of a particular register in a

2 The ‘318 patent claims a “process means” rather than a “processor means.” As all
parties have treated this claim as though it reads “processor,” the Court will do the same.

5



Ill. Conclusion
For the reasons stated above, the Court denies Solaia’s motion for summary judgment
(D.E. 603) as to claims 11 and 12.

So ordered.

Med Lh,

Mark Filip
United States Disfyict Judge
Northern District of Illinois

vate: MeL #8 200

18



TorPharm, Inc., 300 F.3d 1367, 1373 (Fed. Cir. 2002); Gart v. Logitech, Inc., 254 F.3d 1334,
1339 (Fed. Cir. 2001) (“An infringement issue is properly decided upon summary judgment
when no reasonable jury could find that every limitation recited in the properly construed claim
either is or is not found in the accused device either literally or under the doctrine of
equivalents.”),

B. Analysis

1. Claim 11’s “interface means” limitation

As construed in the Jefferson Smurfit Order, the claimed function of the “interface
means” limitation is “connecting electrically ‘between said computer and said network for
receiving message from each of said programmable logic controllers . . . [having a] plurality of
message registers, of which at least one of said message registers is associated with each of said
programmable logic controllers, the messages from each of said programmable logic controllers
being overwritten on a preceding message in said registers, said interface means including
interrupt means.’” Jefferson Smurfit Order {| 3 (quoting ‘318 patent, col. 16, lines 54-63)
(alteration in original). The corresponding structure for the interface means is an interface card
disclosed in figure 2, item 24 of the ‘318 patent. Jd. (citing ‘318 patent, col. 8, lines 5-7). The
judge in the Jefferson Smurfit Order construed the term “plurality” to mean “more than one, but
not less than two.” Jd. 4 7.

There is no dispute that the RS View System contains an interface card. Rather, the

parties dispute whether that interface card performs the claimed function. Solaia argues that the

10



In this motion, Solaia argues that all of the claim limitations of claims 11 and 12 read on
this system. Rockwell challenges the motion based on the following claim limitations: the “add-
in instruction means” of claim 11 and “add-in program means” of claim 12; the general purpose
spreadsheet program structure required by both claims 11 and 12; and the “interface means” of
claim 11 and the “processor means” of claim 12. Rockwell also argues that certain techniques
were expressly disavowed during the prosecution of the patent, namely communications that use
device driver programs, that transfer data through a computer’s operating system, and that use the
client-server model. Therefore, according to Rockwell, the RS View system, which uses these
techniques, cannot be held to infringe the patent as a matter of law. For the reasons described
below, the Court finds that, on the record presented, summary judgment is improper. Taking all
facts in favor of the non-movant, a jury reasonably could conclude that there is no literal
infringement because the “interface means” limitation of claim 11 and the “processor means”
limitation of claim 12 do not read on the accused Rockwell system. The Court does not reach the
other arguments made by the parties.

I. Discussion

A. Legal Standards

Summary judgment is appropriate in a patent case where there is no genuine issue of
material fact and the moving party is entitled to judgment as a matter of law. See Fed. R. Civ. P.
56(c); Desper Prods., Inc. v. QSound Labs, Inc., 157 F.3d 1325, 1332 (Fed. Cir. 1998).
Summary judgment is proper where, based on the evidence put forward by the nonmovant, no
reasonable jury could find that the alleged infringer’s product or process does not infringe the

patent. See Frank's Casing Crew & Rental Tools, Inc. v. Weatherford Int'l, Inc., 389 F.3d 1370,



particular programmable logic controller. . . and

D. add-in program means contained in said processor means for executing an

action in said spreadsheet means to cause said spreadsheet means to transmit said

message from said cell through said registers in said process means to the said

addressed particular register in said particular programmable logic controller.
(d., col. 17, lines 23-56 (emphasis added).)

In an earlier lawsuit initiated by Solaia involving the ‘318 patent, a court in this district
construed certain claims pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370
(1996). (See Solaia’s Ex. T (Solaia Technology v. Jefferson Smurfit, No. 01 C 6641 (order)
(N.D. II. March 28, 2002) (Holderman, J.)) (“Jefferson Smurfit Order”).) Both parties in this
case have argued their respective positions based on the claim construction of the Jefferson
Smurfit Order, to the extent it is applicable. (See D.E. 601 (Mem. by PI. in Supp. of its Mot. for
Summ. J.) at 14-17; D.E. 619 (Rockwell’s Opp. to Solaia’s Summ. J. Mot. of Infringement) at
16, 18, 23, 25.) Thus, for the purposes of this Motion, the Court will not revisit the claims that
have already been construed.’

B. Rockwell’s System

Rockwell manufactures and sells products comprising the “RSView System,” which
consists of Rockwell’s graphical user interface software called RS View; a Rockwell interface
card; a Rockwell network connection; Rockwell PLCs; and Rockwell’s RSLinx program, which

provides device drivers for the interface cards. (D.E. 600 (Solaia’s Local Rule 56.1(a) Statement

of Material Facts (“Solaia’s SF”)) 4 5.)

3 The Court need not—and does not—decide whether it is bound, as Solaia suggests, by
the Jefferson Smurfit construction by application of the doctrine of collateral estoppel. (See D.E.
601 at 14-17.)



Tech., 184 F.3d 1339, 1347 (Fed. Cir. 1999).

To literally infringe a means-plus-function limitation, the accused device must “perform
the identical function as specified in the claims.” WMS Gaming Inc, 184 F.3d at 1347 (quoting
Valmont Indus., Inc. v. Reinke Mfg. Co., 983 1039, 1042 (Fed. Cir. 1993)) (internal quotation
omitted). If it performs the identical function, an accused device literally infringes only if it is
“insubstantially different” from the corresponding structure in the patent specification. Kemco
Sales, Inc. v. Control Papers Co., Inc., 208 F.3d 1352, 1364 (Fed. Cir. 2000) (citing, inter alia,
Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1267 (Fed. Cir. 1999)). The “insubstantial
difference” analysis is a modified version of the function-way-result methodology described in
Graver Tank & Manufacturing Co. v. Linde Air Products Co., 339 U.S. 605, 608 (1950). See
Kemco Sales, 208 F.3d at 1364. “Thus, [t]wo structures may be ‘equivalent’ for the purposes of
section 112, paragraph 6 if they perform the identical function, in substantially the same way,
with substantially the same result.” Jd. (citing Odetics, 185 F.3d at 1267). “Functional identity
and either structural identity or equivalence are both necessary” for infringement of a section
112, 4 6 claim limitation. Odetics,, 185 F.3d at 1267 (citing Pennwalt, 833 F.2d at 934 )
(emphasis in original).

“Whether an accused device or method infringes a claim with a § 112, { 6 limitation, i.e.,
whether it performs the identical function with the same structure, materials, or acts described in
the specification or an equivalent thereof, is a question of fact.” IMS Tech., 206 F.3d at 1430
(citing, inter alia, Odetics, Inc. v. Storage Technology Corp., 185 F.3d 1259, 1268-69 (Fed. Cir.
1999)). Thus, “summary judgment of infringement is improper if a reasonable jury could find

that not every limitation of the claim in question would be met by the product.” Abbott Labs. v.



UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

Solaia Technology LLC,
Plaintiff,
Vv.
ArvinMeritor, Inc.,
Defendant,
v.
Rockwell Automation Inc.,

Third-Party Defendant-
Cross-Claim Plaintiff,

v.
Solaia Technology LLC,

Cross-Claim Defendant-
Counterclaim-Plaintiff,

v.
Rockwell Automation Inc.,

Counterclaim-Defendant.

we ES eee

No. 02-C-4704
Judge Mark Filip

Magistrate Judge Nan R. Nolan

MEMORANDUM OPINION AND ORDER

Plaintiff Solaia Technology LLC (‘‘Solaia’”) moves for summary judgment on its

counterclaim against Rockwell Automation Inc. (“Rockwell”) for infringement of United States



1576, 1582 (Fed. Cir. 1996). The Federal Circuit teaches that “dictionaries, encyclopedias and
treatises are particularly useful resources to assist the court in determining the ordinary and
customary meanings of claim terms.” Texas Digital Sys., Inc. v. Telegenix, 308 F.3d 1193, 1202
(Fed. Cir. 2002) (collecting cases). These sources provide “unbiased reflections of common
understanding not influenced by expert testimony or events subsequent to the fixing of the
intrinsic record by the grant of the patent, not colored by the motives of the parties, and not
inspired by litigation.” Jd. at 1203.

The plain meaning of “associated” is “connected with something else.” The New Oxford
American Dictionary 97 (Elizabeth J. Jewell and Frank Abate eds., 2001); see also id. (definition
of “associate” includes “(usu. be associated) connect (something) with something else because
they occur together or one produces another”). Rockwell argues that “associated with” requires
that there is a “predetermined” connection between a register on the interface card and a
particular PLC. (See D.E. 619 at 24.) Solaia responds that “predetermined” is not part of the
claim language and should not be read into the claim limitation. Solaia does not offer an
alternative meaning for “associated with.” However, it does argue, through Nuschke’s
declaration, that the allocation of a suitable register within the dual port buffer’ (which is the
shared memory space) once the message has been received by the interface card, “associates that
register with the PLC.” (Solaia’s Ex. S (Nuschke Decl.) { 27.) Thus, as best the Court can tell,
Solaia argues that the mere assignment of a message from a PLC to any register in the Rockwell

interface card’s buffer pool performs the “associated with” limitation of the claimed function

5 A “buffer” is “[a] unit of memory given the task of holding information temporarily,
especially while waiting for slower components to catch up.” Webster’s New World Dictionary
of Computer Terms, 8th Ed. 78 (Bryan Pfaffenberger 2000).

12



Rockwell interface cards perform the identical function of the “interface means.”* Rockwell
argues that the Rockwell interface cards do not have a “plurality of message registers, of which at
least one of said message registers is associated with each of said programmable logic
controllers.” (‘318 patent, col. 16, lines 57-60.) Solaia offers the testimony of its expert, Walter
Nuschke, that the interface cards perform this function. (Solaia SF J 66, 67 (citing, inter alia,
Solaia’s Ex. S (Nuschke Decl.) at §§ 21-35).) According to evidence offered by Rockwell in
response to Solaia’s expert, the Rockwell interface cards share a single reusable memory space
that is used by all of the PLCs (D.E. 623 (Rockwell’s Resp. to Solaia’s Statement of Material
Facts (“Rockwell’s Resp.”) J 66 (citing, inter alia, Rockwell’s Ex. 14 at RA 1250-51, 1266-67)),
and thus, the Rockwell interface card does not perform the function requiring at least one register
to be “associated with” each PLC. The Jefferson Smurfit Order does not construe the phrase
“associated with,” so the Court must do so in the first instance.

“To ascertain the meaning of claims, [a court] consider[s] three sources: the claims, the
specification, and the prosecution history.” Markman v. Westview Instruments, Inc., 52 F.3d
967, 979 (Fed. Cir. 1995) (quoting Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1561 (Fed.
Cir. 1991)). In construing a patent term, “words in a claim are generally given their ordinary and
customary meaning,” unless the patentee has chosen to be his own lexicographer by using terms

in a manner other than their ordinary meanings. Vitrionics Corp. v. Conceptronic, Inc., 90 F.3d

* Solaia does not argue that it is entitled to summary judgment under the doctrine of
equivalents because the Rockwell’s interface card performs a substantially similar function to
that claimed in the “interface means” or the “processor means.” (See D.E. 601 at 37-38, 39.) See
Kemco Sales, 208 F.3d at 1364 (infringement analysis of means-plus-function claim under the
doctrine of equivalents differs from literal infringement in that the identical function is not
required; the equivalent “need only perform a substantially similar function”). Thus, the Court
will address only the question of literal infringement in this motion.

11



1376 (Fed. Cir. 2004); Pugh v. City of Attica, 259 F.3d 619, 625 (7th Cir. 2001) (citing Anderson
v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)); see also Warner-Jenkinson Co., Inc. v. Hilton
Davis Chem. Co., 520 U.S. 17, 39 n.8 (1997).

“The determination of infringement is a two-step analysis: (1) claim construction to
determine the scope and meaning of the claims asserted to be infringed, and then (2) a
determination of whether the properly construed claims encompass the accused device.” Zelinski
v. Brunswick Corp., 185 F.3d 1311, 1315 (Fed. Cir. 1999); accord Scanner Techs. Corp. v. ICOS
Vision Sys. Corp., N.V., 365 F.3d 1299, 1302 (Fed. Cir. 2004). The patentee has the ultimate
burden of proving that the accused device meets each and every element of the asserted claims,
either under literal infringement or the doctrine of equivalents. Deering Precision Instruments,
LLC v. Vector Distr. Sys., Inc., 347 F.3d 1314, 1324 (Fed. Cir. 2003); Lemelson v. United States,
752 F.2d 1538, 1551 (Fed. Cir. 1985). There can be no infringement as a matter of law if a claim
limitation is not found in the accused device. Phonometrics Inc. v. Northern Telecom Inc., 133
F.3d 1459, 1467 (Fed. Cir. 1998) (citing, inter alia, Pennwalt Corp. v. Durand-Wayland, Inc.,
833 F.2d 931, 935 (Fed. Cir. 1987) (en banc)).

Claim limitations may be written in a “means-plus-function” format, as governed by 35
U.S.C. § 112, 46. Under that provision, “[a]n element in a claim for a combination may be
expressed as a means or step for performing a specified function without the recital of structure,
material, or acts in support thereof, and such claim shall be construed to cover the corresponding
structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. §

112, 7 6. Claim construction under a means-plus-function format consists of identifying the

claimed function and the corresponding structure of each claim. WMS Gaming Inc. v. Int'l Game



transfer desired information between the operating system program and popular and
commercially available spreadsheet, data base and analysis programs,” which would enable a
user to control the manufacturing process from the spreadsheet, data base or analysis program.
(Id., col. 3, lines 1-8.)

The patent discloses a program “that operates through a general purpose spreadsheet
program to effect information transfers to and from the addressable registers of a PLC and
assigned cells of a displayed spreadsheet directly from the spreadsheet program without transfers
through the operating system program or a specially written device driver program.” (‘318
patent, col. 3, lines 35-42.) The disclosed system includes a network of PLCs that can receive
and transmit messages to monitor and control the operation of the machine tool or processing
station; a personal computer, including an interface card; a general purpose spreadsheet program;
and an “add-in” program that adds communication functions to the spreadsheet program. (/d.,
col. 3, lines 20-68.) This add-in program allows a spreadsheet program to move data directly to
and from the interface card in the computer (id., col. 5, lines 1-4), whereas such program
normally only would be able to effect movement of information between files of data included in
the memory and the cells of the spreadsheet (id., col. 4, lines 61-64).

Claims 11 and 12 of the ‘318 patent are at issue in this suit. Claim 11 recites, in pertinent
part:

11. A system for operating equipment by an operator, the system comprising:

A. aplurality of programmable logic controllers coupled to the equipment, said

programmable logic controllers each transmitting messages on a network
indicating the condition of said equipment;

B. a computer having operably interconnected visual display, keyboard, memory,



register to receive all messages initiated by the PLCs upon suitable arrangement of the system to
insure positive receipt and protection of the messages.” (‘318 patent, col. 10, lines 31-37.) This,
according to Solaia, is a corresponding structure to the interface means, and thus demonstrates
that the “associated with” limitation does not require a “dedicated” connection between message
registers and a PLC because one register receives a message from multiple PLCs.° Apart from
the fact that Solaia makes this argument for the first time in its reply brief, and it is thus arguably
waived, Solaia’s argument is, with all respect, misplaced. This description of an interface card
with a single receiving register runs counter to the clear meaning of the language “plurality of
message registers” in the interface means limitation. (‘318 patent, col. 16, lines 57-58.) This
statement, “rather than providing an illustration of a [claim limitation] . . . provides an alternative {
to it,” Unique Concepts, 939 F.2d at 1562, and should not be used to inform the meaning of
“associated with.” Thus, the Court has found nothing in the specification or prosecution history
that would indicate a construction contrary to that provided by the plain meaning.

Having thus construed the function of the interface means, the Court then looks to
whether a reasonable jury could find that the claim limitation reads on the accused system. WMS
Gaming, 184 F.3d at 1350. The Court concludes that no reasonable jury could find that the
Rockwell interface cards perform the identical function recited in the claim, and thus, Solaia is
not entitled to judgment as a matter of law. Solaia’s own expert offered evidence that the

Rockwell interface cards “allocate a suitable dual port buffer to place the packet [data or

message] into and will deallocate the buffer when the PC returns the mailbox marked complete.”

(Solaia’s Ex. S (Nuschke Decl.) § 27.) “In other words, the interface card assigns a specific

© Solaia cites to Nuschke’s declaration for this argument. (See Solaia’s Ex. S § 35.)

15



respective registers in the form of dual port RAM.” (Solaia’s Ex. S (Nuschke Decl.) { 127; see
also Solaia’s SF | 86 (citing Solaia’s Ex. S (Nuschke Decl.) {| 121-33).) In the evidence
presented to the Court, however, Nuschke does not state that the Rockwell interface cards have
“one register within the interface card corresponding to each register of the addressable
programmable logic controllers in the network.” Jefferson Smurfit Order § 11. The evidence
presented as to the Rockwell interface cards indicates that messages are transmitted through the
dual port RAM via a buffer pool and/or mailboxes. (Solaia’s Ex. S (Nuschke Decl.) § 27;
Rockwell’s Ex. 14 at RA 001250-51.) No evidence has been offered that the limitation requiring
“respective registers” is present. Thus, there is no evidence from which a reasonable jury could
find that the “respective registers” limitation of the “processor means” function is identically
performed by the accused Rockwell interface cards, and Solaia is not entitled to summary
judgment as to claim 12 on the record presented. See Phonometrics Inc., 133 F.3d at 1467 (there
can be no infringement as a matter of law if a claim limitation is not found in the accused

device).

17



Solaia’s Compulsory Countercl. (D.E. 360).) This case is before the Court on Solaia’s motion
for summary judgment of infringement.

A. ‘318 Patent

The ‘318 Patent, titled “Device for Communicating Real Time Data Between a
Programmable Logic Controller and a Program Operating In a Central Controller,” discloses a
system of programmable logic controllers (“PLCs”) that “direct[s] automatic operation of such as
machine tools, and process equipment to manufacture goods,” and that “furnish[es] true real-time
control of such programmable logic controllers (PLCs) through a general purpose spreadsheet
program operating in a personal computer.” (‘318 patent, col. 1, lines 9-16.) The patentee
acknowledged that prior to the invention, PLCs had been linked together in networks to
coordinate the operation of a entire manufacturing system or processing plant. (/d., col. 1, line
67 —col. 2, line 1.) In these previous systems, however, any manufacturing changes desired by
the operator of the manufacturing equipment had to be implemented by reprogramming the
individual PLC. (/d., col. 2, lines 30-39.) “Developing customized programs that directly
enabled an operator at a personal computer to supervise and actually control the automatic
operation of the PLCs quickly becomes expensive due to the large amount of highly skilled
labor.” (/d., col. 2, lines 40-44.) In the programs then available to provide this kind of “real
time” exchange of information, a user would provide a circuit card interface between his process
or instrument and the personal computer used to supervise it. (/d., col. 2, lines 64-66.) The user
would then write a “device driver program for the personal computer that facilitates the operating

system program to communicate with the circuit card interface.” (/d., col. 2, line 66 — col. 3, line

1.) The user would then install a “commercially available information acquisition program to



Patent No. 5,038,318 (“the ‘318 patent”). (D.E. 603.') Rockwell has filed a cross-motion for
summary judgment of non-infringement against Solaia. (D.E. 621.) This Order addresses
Solaia’s motion for summary judgment only. Rockwell’s cross-motion for non-infringement is
addressed in a separate order issued contemporaneously. For the reasons stated below, the Court
denies Solaia’s motion.

I. Background

In July 2002, Solaia initiated this suit against ArvinMeritor and fifteen other large
industrial corporations. (See Compl. (D.E. 1).) In its suit, Solaia alleged that the defendants
infringed claims 11 and 12 of Solaia’s ‘318 patent. (d. 22.) ArvinMeritor (and at least some
of the other defendants) allegedly utilize Rockwell-manufactured industrial automation products
that, Solaia alleges, infringe the ‘318 patent. (See Third-Party P]. ArvinMeritor, Inc.’s Third-
Party Compl. (D.E. 131) {ff 11, 25; Answer of Third-Party Def. Rockwell to Third-Party Pl.
ArvinMeritor, Inc.’s Third-Party Compl. (D.E. 167) { 9-11.) ArvinMeritor and other defendants
filed complaints for indemnification against Rockwell, which brought Rockwell into this
litigation. (See, e.g., D.E. 131.)

Rockwell thereafter asserted cross-claims against Solaia, seeking declaratory judgment
that, inter alia, “[nJone of the products or systems, including the Rockwell systems,
manufactured, offered for sale, sold or used by Rockwell Automation infringes, directly or
indirectly, any valid and enforceable claim of the ‘318 patent.” (D.E. 167470.) Solaia
eventually counterclaimed in the instant case against Rockwell, alleging that Rockwell had

infringed Solaia’s ‘318 patent. (Solaia’s Reply to Rockwell’s Cross-cl. for Declaratory J. and

' The designation “D.E.” refers to the docket entry number of the cited document.

2



once that assignment has been made. This construction, with all respect, reads the phrase
“associated with” out of the claim limitation altogether because no “connection” is found
between a PLC and a particular register; there is mere use of a register by a particular PLC. (The
obvious electrical connection between the PLC and the register in the interface card when a
message is being transferred is not the kind of “connection” that defines “associated.”) Without
some kind of pre-defined connection between each PLC and one or more message registers, the
phrase “associated with” is doing no work in the claimed function. “All the limitations of a
claim must be considered meaningful,” Unique Concepts, 939 F.3d at 1562, and a construction
which reads out a limitation is improper. Thus, the Court construes the claim limitation “a
plurality of message registers, of which at least one of said message registers is associated with
each of said programmable logic controllers” to mean “at least one, but not less than two
message registers, of which at least one of said message registers has a predetermined connection
with each PLC.”

Next, the Court looks, as precedent directs, to the intrinsic evidence to determine whether
there is any reason to believe that the ordinary and customary meaning of the term is rebutted or
modified. Texas Digital, 308 F.3d at 1204; Vitrionics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1582 (Fed. Cir. 1996). Rockwell cites to the inventor’s response to an office action regarding
issued claim 11’s interface means. The PTO originally rejected claim 3 (issued claim 11), and
the examiner asked the inventor to clarify some language. In particular, the examiner queried,
“In claim 3, lines 20-21, is there one message register for all of the programmable logic
controllers or is there a one-to-one correspondence between message registers and programmable

logic controllers?” (Rockwell’s Ex. 3 (Feb. 26, 1990 Office Action) at 2.) In response to that

13



register the task of storing a packet for transmission to a specific PLC.” (/d.) Solaia presents no
evidence that there is any predetermined connection between a specific register or registers and
each PLC. Thus, on the record presented, Solaia is not entitled to summary judgment as to claim
11. See Phonometrics Inc., 133 F.3d at 1467 (there can be no infringement as a matter of law ifa
claim limitation is not found in the accused device).

2. Claim 12’s “processor means”

As construed in the Jefferson Smurfit Order, the claimed function of the “processor
means” limitation is “‘moving said electrical signals forming messages to and from respective
registers located in said processor means, said respective registers for each of said respective
addressable programmable logic controllers being addressable form [sic] said communications
network and accessible from said processor means.”” Jefferson Smurfit Order J 8 (quoting ‘318
patent, col. 17, lines 30-36) (alteration in original). The corresponding structure for the
“processor means limitation” is “a personal computer with a memory and a central processor
with an interface card, whether the interface card is electrically connected to data, address and
control leads of the personal computer, and the interface cards connects to the network of
programmable logic controllers.” Jd. (citing ‘318 patent, col. 4, lines 31-36, 42-45). The Order
construed “respective registers” to mean “one register within the interface card corresponding to
each register of the addressable programmable logic controllers in the network.” Jd. { 11.

Both parties make essentially the same arguments related to the processor means of claim
12 that they made for the interface means of claim 11. Rockwell argues that there is no one-to-
one (or other) relationship between the registers on the Rockwell interface cards and the PLCs.

Solaia offers Nuschke’s declaration that states that the Rockwell interface cards “contain[]

16