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Court’s Constructions of Means- Plus-Function Limitations Result in Remand to ITC

January 29, 2001

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Last Month at the Federal Circuit - February 2001

Judges: Rader (author), Clevenger, and Dyk

In Winbond Electronics Corp. v. ITC, No. 01- 1031 (Fed. Cir. Jan. 30, 2001) (nonprecedential decision), the Federal Circuit provided new claim constructions for several limitations of the asserted claims. As a result, the Court vacated a judgment of noninfringement with regard to Macronix International Co., Ltd. and Macronix America, Inc. (collectively “Macronix”) and remanded for further consideration of the infringement issue. The Court affirmed infringement, however, by Winbond Electronics Corporation and Winbond Electronics North America Corporation (collectively “Winbond”).

U.S. Patent No. 4,451,903 (“the ‘903 patent”) discloses a semiconductor chip with circuitry that performs the primary function of the chip connected to memory cells that contain the device’s manufacturing and programming information. The ITC initiated its investigation of Macronix, Winbond, and others in March 1997. In its initial determination, the presiding ALJ concluded that none of the Respondents had violated section 337 of the Tariff Act of 1930. The ITC, however, found the ‘903 patent to be unenforceable for failure to name an inventor, and concluded that no remedy based on infringement of the ‘903 patent could be issued unless and until inventorship had been corrected. In a supplemental opinion, Chairman Bragg, based on her own claim construction, found that certain claims of the ‘903 patent were invalid for indefiniteness, found that Macronix did not infringe the ‘903 patent, and found that Winbond did infringe claims 1 and 9 of the ‘903 patent.

The patentee, Atmel Corporation (“Atmel”), filed a petition with the PTO for a correction of inventorship, which the PTO granted. After Atmel had petitioned the ITC for a rehearing on the issue of inventorship, the ALJ found the ‘903 patent unenforceable because the Certificate of Correction named incorrect inventors and because Atmel had committed inequitable conduct in obtaining the Certificate of Correction. Upon further review, however, the ITC held the ‘903 patent enforceable, and later adopted the supplemental opinions of Chairman Bragg.

The infringement issues center on the claim constructions of the phrases “primary circuit,” “adjacent,” “access means,” and “output means.” As to the “primary circuit” limitation, the Federal Circuit found no error with the ITC’s construction and rejected Respondents’ argument that the primary circuit refers only to a
memory array. The Court observed that dependent claim 2 had narrowed the meaning of “primary circuit” in claim 1 to a semiconductor memory providing a memory array and concluded that the doctrine of claim differentiation dictated that the primary circuit did not include the memory array. The Court also agreed that the “primary circuit” would include decoders and buffers.

As to the phrase “adjacent,” the Federal Circuit rejected that part of the ITC’s interpretation that included “not overlapping with the primary circuit.” Instead, the Federal Circuit applied the ordinary dictionary definition of adjacent to simply mean “close to, next to, lying near, or adjoining.”

As to the “access means” limitation, the Federal Circuit concluded that this phrase was a means-plus-function element under 35 U.S.C. § 112, ¶ 6. Examining the specification, the Court concluded that a high voltage detection circuit and a decoder corresponded to the claimed access means because these two structures performed all three recited functions of the access means. The Court again relied on the doctrine of claim differentiation to exclude an “address pin,” as recited in dependent claim 3, from the “access means” of claim 1.

Finally, the Court concluded that the claimed “output means,” another means-plus-function element, found corresponding structure in the disclosed output buffer and pins.

Against these claim constructions, the Federal Circuit affirmed the finding of infringement with regard to Winbond, but vacated the infringement finding against Macronix. The Court remanded the case to the ITC for further findings as to the equivalence between the disclosed structures and the accused Macronix devices.