S3 v. NVIDIA

• Decision Date: 03 August 2001
• Citation: 259 F.3d 1364,59 USPQ2d 1745
• Parties: (Fed. Cir. 2001) S3 INCORPORATED, (now known as SONICBLUE, INC.), Plaintiff-Appellant, v. NVIDIA CORPORATION, Defendant-Appellee. 00-1257 DECIDED:
• Court: U.S. Court of Appeals — Federal Circuit

Page 1364

259 F.3d 1364 (Fed. Cir. 2001)

S3 INCORPORATED, (now known as SONICBLUE, INC.), Plaintiff-Appellant, v. NVIDIA CORPORATION, Defendant-Appellee.

00-1257

United States Court of Appeals for the Federal Circuit

DECIDED: August 3, 2001

Appealed from: U.S. District Court for the Northern District of California Judge Saudra Brown Armstrong

Kirke M. Hasson, Pillsbury Winthrop LLP, of San Francisco, CA, argued for plaintiff-appellant. With him on the brief were David A. Jakopin, Brian J. Beatus, and Mark J. Danielson, of Palo Alto, CA.

Tharan G. Lanier, Cooley Godward LLP, of Palo Alto, CA, argued for defendant-appellee. With him on the brief were Stephen C. Neal of Palo Alto, CA, and Kent M. Walker, of San Diego, CA. Of counsel was Michele E. Moreland, of Palo, Alto, CA.

Before NEWMAN, MICHEL, and GAJARSA, Circuit Judges.

Opinion for the court filed by Circuit Judge NEWMAN. Dissenting opinion filed by Circuit Judge GAJARSA.

PAULINE NEWMAN, Circuit Judge.

S3 Incorporated, now known as SONICblue, Inc. (herein "S3"), appeals the grant of summary judgment by the United States District Court for the Northern District of California,¹ holding claims 1-4 and 9-11 of S3's United States Patent No. 5,581,279 invalid on the ground of claim indefiniteness. We conclude that the claims are not invalid on this ground. The judgment is reversed and the case is remanded for further proceedings.

BACKGROUND

The patented invention is an integrated circuit for use in computer video color display. The basic technology of video color display was known at the time the '279 patent was filed; the patent is for a novel monolithic circuit in which a programmable clock signal generator circuit, a VGA controller circuit, and a combination random-access memory/digital-to- analog converter are integrated on a single chip.

A computer screen is divided into many horizontal rows, each of which contains a plurality of points called picture elements or "pixels." Each pixel contains fluorescent materials that emit light when charged by an electron beam generated by the monitor. To display colored images, red, green, and blue fluorescent materials are associated with each pixel, structured to be illuminated by electron beams directed by the computer's graphics controller. By varying the intensity of the electron beams, the desired color is produced. The '279 patent explains that the prevailing standard video display format at the time of filing was the Video Graphics Array (VGA) standard, which specifies an array of 640 horizontal and 480 vertical pixels. In accordance with the VGA standard, pixel data are output by the video controller at a maximum of 8 bits per pixel; this output limits to 256 the number of possible colors available for display.

The patent describes two modes of operation. In the "direct color" mode, the pixel data are transmitted directly from the video controller to a digital-to-analog converter (DAC) for display. In the "indexed" mode, the data output from the video controller is used as an address which is input to a random access memory (RAM) array structured as a look-up table. Each address corresponds to higher bit level color information, thus allowing, for instance, 18 or 24 bit color depth to be presented on the computer screen from only 8 bits of data, albeit limited to 256 combinations at that depth (the total number of addressable positions in the look-up table for 8 bit data).

Independent claims 1 and 9 of the '279 patent follow, with emphases added to the portions of the claims challenged as indefinite:

1. A monolithic integrated circuit comprising:

programmable clock circuit means for producing a video memory clock signal and a video dot clock signal;

a video controller coupled to said programmable clock circuit means for receiving the video memory clock signal and the video dot clock signal and for producing a video information data stream;

random-access memory means, coupled to said video controller, for receiving the video information data stream and producing a video display information data stream; and

digital-to-analog converter means, coupled to both said random-access memory and to said video controller, for selectively receiving either the video information data stream or the video display information data stream as received data and for converting the received data to analog video signals.

9. A monolithic integrated circuit comprising:

a programmable clock circuit responsive to a reference clock signal and devisor data and generating a video memory clock signal and a video dot clock signal;

a video controller receiving the video memory clock signal and the video dot clock signal and producing a video information data stream from data received from a video RAM;

a random-access memory producing a video display information data stream in response to the video information data stream from said video controller;

a digital-to-analog converter converting received digital data to analog video signals; and

a selector supplying one of said video information data stream from the video controller and said video display information data stream from said random-access memory to said digital-to-analog converter as said received digital data.

DISCUSSION

The district court granted summary judgment that the claims are invalid for indefiniteness under 35 U.S.C. §112 ¶2:

§112 ¶2. The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

Summary judgment is appropriate "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed. R. Civ. P. 56(c). On reviewing the grant of summary judgment, the appellate tribunal applies the same criteria as did the district court. See Anderson v. Liberty Lobby. Inc., 477 U.S. 242, 250 , 255 (1986); Cortland Line Co. v. Orvis Co., 203 F.3d 1351, 1355, 53 USPQ2d 1734, 1746 (Fed. Cir. 2000).

The question of whether the claims meet the statutory requirements of §112 ¶2 is a matter of construction of the claims, and receives plenary review on appeal. See Atmel Corp. v. Information Storage Devices, Inc., 198 F. 3d 1374, 53 USPQ2d 1225 (Fed. Cir. 1999); Personalized Media Communications v. Int'l Trade Comm'n, 161 F.3d 696, 705, 48 USPQ2d 1880, 1888 (Fed. Cir. 1998). The claims as granted are accompanied by a presumption of validity based on compliance with, inter alia, §112 ¶2. See Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1376, 58 USPQ2d 1801, 1806 (Fed. Cir. 2001).

The requirement that the claims "particularly point[] out and distinctly claim[]" the invention is met when a person experienced in the field of the invention would understand the scope of the subject matter that is patented when the claim is read in conjunction with the rest of the specification. "If the claims when read in light of the specification reasonably apprise those skilled in the art of the scope of the invention, §112 demands no more." Miles Laboratories, Inc. v. Shandon, 997 F.2d 870, 875, 27 USPQ2d 1123, 1126 (Fed. Cir. 1993); see also Union Pacific Resources Co. v. Chesapeake Energy Corp., 236 F.3d 684, 692, 57 USPQ2d 1293, 1297 (Fed. Cir. 2001); North American Vaccine, Inc. v. American Cyanamid Co., F.3d 1571, 1579, 28 USPQ2d 1333, 1339 (Fed. Cir. 1993); Hybritech, Inc. v. Monoclonal Antibodies, 802 F.2d 1367, 1385, 231 USPQ 81, 94-95 (Fed. Cir. 1986).

For claim clauses containing functional limitations in "means for" terms pursuant to §112 ¶6, the claimed function and its supporting structure in the specification must be presented with sufficient particularity to satisfy the requirements of §112 ¶2. As was explained in In re Donaldson Co., 16 F.3d 1189, 1195, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994) (en banc), "if one employs means-plus-function language in a claim, one must set forth in the specification an adequate disclosure showing what is meant by that language. If an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112." See also Atmel Corp., 198 F. 3d at 1382, 53 USPQ2d at 1230 (Fed. Cir. 1999) ("In order for a claim to meet the particularity requirement of ¶2, the corresponding structure(s) of a means-plus-function limitation must be disclosed in the written description in such a manner that one skilled in the art will know and understand what structure corresponds to the means limitation.")

The Video Controller

The primary focus of the district court's ruling of claim indefiniteness of the terms "video information data stream" and "video display information data stream" was the video controller and the description of its emission of video information data. The district court found that the video controller emits two different kinds of information, one of which goes directly to the DAC ("video display information data") and one of which is processed first by the RAM ("video information data"). The district court held that claim 1 is fatally indefinite because:

it is inconsistent for claim 1 to use the term "video information stream" to describe both the information the DAC receives directly from the video controller, and the information the RAM receives from the video controller. . . . it is not apparent whether a particular "video information stream" would contain "video information," "video display information," or both.

Slip op. at 12-13. The court found claim 9 invalid for the same reason. Id. at 19.

S3 states that the data stream from the video controller can either be sent directly to the DAC through a selector in the direct-color mode, or processed by the RAM in the indexed mode, and that this...