Broadcom Corporation v. Emulex Corporation

MEMORANDUM in Support of MOTION for Judgment as a Matter of Law 853 of No Invalidity of Claim 42 of the '057 Patent

C.D. Cal.October 4, 2011

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BROADCOM’S MEMORANDUM IN SUPPORT OF MOTION FOR JMOL OF NO INVALIDITY OF CLAIM 42 OF THE ’057 PATENT WILLIAM F. LEE (admitted pro hac vice) (william.lee@wilmerhale.com) DOMINIC E. MASSA (admitted pro hac vice) (dominic.massa@wilmerhale.com) JOSEPH J. MUELLER (admitted pro hac vice) (joseph.mueller@wilmerhale.com) WILMER CUTLER PICKERING HALE AND DORR LLP 60 State Street Boston, MA 02109 Telephone: (617) 526-6000 Facsimile: (617) 526-5000 Attorneys for Plaintiff BROADCOM CORPORATION UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA BROADCOM CORPORATION, Plaintiff, v. EMULEX CORPORATION, Defendant. CASE No. SACV09-1058 JVS (ANx) consolidated SACV 10-03963-JVS (ANx) PLAINTIFF BROADCOM CORPORATION’S MEMORANDUM IN SUPPORT OF ITS MOTION FOR JUDGMENT AS A MATTER OF LAW OF NO INVALIDITY OF CLAIM 42 OF THE ’057 PATENT Before: Hon. James V. Selna And Related Counterclaims Case 8:09-cv-01058-JVS -AN Document 856 Filed 10/04/11 Page 1 of 7 Page ID #:21376 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 1 BROADCOM’S MEMORANDUM IN SUPPORT OF MOTION FOR JMOL OF NO INVALIDITY OF CLAIM 42 OF THE ’057 PATENT Broadcom respectfully submits this memorandum in support of its motion for judgment as a matter of law that claim 42 of Broadcom’s U.S. Patent No. 7,724,057 (the “’057 patent”) is not invalid. During its case, Emulex offered no evidence that any prior art reference or combination of references discloses the “second stage” deserializer limitation specific to claim 42 of the ’057 patent. Judgment as a matter of law is appropriate when “the evidence, construed in the light most favorable to the nonmoving party, permits only one reasonable conclusion.” Geo. M. Martin Co. v. Alliance Machine Sys. Int’l LLC, 618 F.3d 1294, 1300 (Fed. Cir. 2010) (applying Ninth Circuit law and quoting White v. Ford Motor Co., 312 F.3d 998, 1010 (9th Cir. 2002)). Emulex has the burden of proving invalidity, including obviousness, by clear and convincing evidence. Microsoft Corp. v. i4i Limited P’ship, 131 S. Ct. 2238, 2243 (2011). As a threshold matter, for Emulex to prove that a patent claim is obvious based on a combination of prior art references, Emulex must establish that the references-at the very least-disclose all elements of the claim. See, e.g., Velander v. Garner, 348 F.3d 1359, 1363 (Fed. Cir. 2003) (prerequisite for conclusion of obviousness is that “all the elements of an invention are found in a combination of prior art references”); CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333 (Fed. Cir. 2003) (“obviousness requires a suggestion of all limitations in a claim”) (citing In re Gulack, 703 F.2d 1381, 1385 n.9 (Fed. Cir. 1983)). An expert must perform a limitation-by-limitation analysis that provides a “plausible rational[e] as to why the prior art references would have worked together to render the [asserted claims] obvious.” Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1352 (Fed. Cir. 2010); see also Order Granting Broadcom’s Motion for Partial Summary Judgment of No Invalidity of the ’691 and ’500 Patents, Dkt. No. 715, at 6-7. Case 8:09-cv-01058-JVS -AN Document 856 Filed 10/04/11 Page 2 of 7 Page ID #:21377 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 2 BROADCOM’S MEMORANDUM IN SUPPORT OF MOTION FOR JMOL OF NO INVALIDITY OF CLAIM 42 OF THE ’057 PATENT Claim 42, reproduced below, contains the following elements: 42. The apparatus of claim 37 [An apparatus, comprising: a first stage for deserializing a differential serialized signal thereby generating a first deserialized signal that includes a first plurality of signals, wherein the first stage includes a current-controlled complementary metal-oxide semiconductor (C3MOS) circuit having a first metal- oxide semiconductor (MOS) transistor with a first drain, a first gate, and a first source and a second MOS transistor with a second drain, a second gate, and a second source, wherein: a current steering circuit within the C3MOS circuit includes the first source and the second source; the first source and the second source are coupled together and to a current source; and the first drain and the second drain are coupled to a power supply; and a second stage, coupled to the first stage, for processing the first deserialized signal thereby generating a second deserialized signal that includes a second plurality of signals] wherein: the second stage is implemented using conventional metal- oxide-semiconductor (CMOS) logic. JX-0006 (’057 patent), col.12 ll.61-col.13 ll.13, col.13 ll.29-32 (emphases added). As explained in Broadcom’s previously filed opposition to Emulex’s motion for summary judgment of invalidity, claim 42 requires a two-stage deserializer: Case 8:09-cv-01058-JVS -AN Document 856 Filed 10/04/11 Page 3 of 7 Page ID #:21378 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 3 BROADCOM’S MEMORANDUM IN SUPPORT OF MOTION FOR JMOL OF NO INVALIDITY OF CLAIM 42 OF THE ’057 PATENT there must be a “first stage” that generates a “deserialized signal” coupled to a “second stage” that further processes the deserialized signal to generate a “second deserialized signal.” (See Plaintiff Broadcom Corporation’s Opposition to Defendant Emulex’s Motion for Summary Judgment of Invalidity of Claim 1 of ’194 Patent, Claim 5 of ’124 Patent, and Claim 42 of ’057 Patent, Dkt. No. 468, at 18-20.) Emulex’s noninfringement expert, Dr. Nikolic, himself conceded that “Claim 42 is a claim that covers two deserializers.” (Trial Transcript Day 8, at 166:3-5.) Thus, to render claim 42 obvious, at least one of the prior art references on which Emulex relies must disclose a two-stage deserializer. No two-stage deserializer appears in either of the two references on which Emulex relies. The Pace patent (JX0273) does not disclose any deserializer at all, as Emulex’s validity expert Dr. Wooley himself admitted. (See Trial Transcript Day 7, at 37:22-24 (agreeing that “[t]here is no mention of a deserializer anywhere in Pace”). Likewise, the Pickering patent (JX0215) discloses only a single stage of deserialization, followed by “further processing using standard logic”- not a any second stage generating a second deserialized signal. (See also Order Denying Motion for Summary Judgment of Invalidity of the Asserted Claims of the ’194, ’124, and ’057 Patents, Dkt. No. 720, at 9 (“[I]t is not clear that Pickering’s disclosure of ‘further processing using standard logic’ is equivalent to a second stage in the deserialization process.”).) During its case, Emulex presented the testimony of only one witness, Dr. Wooley, on the issue of the validity of the asserted SerDes patent claims, including claim 42. Dr. Wooley’s obviousness opinions as to all asserted claims were based on two references-Pickering and Pace. But Dr. Wooley provided no testimony whatsoever that either Pace or Pickering discloses a “second stage . . . for processing the first deserialized signal thereby generating a second deserialized signal.” The entirety of Dr. Wooley’s testimony on the “second stage” limitation Case 8:09-cv-01058-JVS -AN Document 856 Filed 10/04/11 Page 4 of 7 Page ID #:21379 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 4 BROADCOM’S MEMORANDUM IN SUPPORT OF MOTION FOR JMOL OF NO INVALIDITY OF CLAIM 42 OF THE ’057 PATENT of claim 42 is this: Again, here this is that you’re going to take the output of the deserializer, which is at a lower frequency and process it and generate some other kind of signal and that’s referred to here. You can de- multiplex the higher speed signals that have been de-multiplexed or deserialized or produced and then parallel it the output rate and that is output at CMOS level so it can be further processed using CMOS logic and that further processing might be any number of things. It could include more stages of deserialization, it could include processing it, multiplying it or adding it to someone to do a filtering job or some functions. There are a lot of things you can think of -- of doing with that or it can be filtered, you know, with a digital filter, but there is some processing and that processing there stays at the -- at the lower rate, so it’s a signal that's still -- would be deserialized from the input signal. (Trial Transcript Day 6, at 176:3-20.) At no point in Dr. Wooley’s testimony did he state that the “further processing” disclosed in Pickering would result in any “second deserialized signal.” Rather, he concluded only that “[t]here are a lot of things you can think of . . . doing with [the signal].” (Id. at 176:15-16.) Although he remarked that this “could include more stages of deserialization,” he did not give the opinion that a person of ordinary skill in the art would have found it obvious to modify Pickering’s disclosure of general “further processing” to result in a second stage of deserialization. (Id. at 176:12-15.) Nor did he give the opinion that a person of ordinary skill in the art would have found it obvious to perform that further deserialization in CMOS. The absence of testimony from Dr. Wooley regarding the presence of a two- Case 8:09-cv-01058-JVS -AN Document 856 Filed 10/04/11 Page 5 of 7 Page ID #:21380 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 5 BROADCOM’S MEMORANDUM IN SUPPORT OF MOTION FOR JMOL OF NO INVALIDITY OF CLAIM 42 OF THE ’057 PATENT stage deserializer in Pickering is unsurprising, because his expert report contains no disclosure of any such opinion. In his report, Dr. Wooley failed to address the fact that claim 42-unlike the other asserted claims-requires a two-stage deserializer. The only attempt that Dr. Wooley made to address the limitation of claim 42 requiring “a second stage . . . generating a second deserialized signal” was this: “See analysis of element (4) of claim 1 of the ‘194 patent, above at Paragraphs 104-107.” (Ex. E, Wooley Report ¶ 129.) But the cross-referenced paragraphs address claim 1 of the ’194 patent, and that claim, unlike claim 42 of the ’057 patent, does not require a two-stage deserializer. Nowhere in the cross- referenced paragraphs did Dr. Wooley identify any part of the Pickering reference that discloses a two-stage deserializer. (Id. ¶¶ 104-107.) Emulex therefore has not presented evidence that either Pace or Pickering (or the combination of the two) discloses a two-stage deserializer. Thus, because Emulex has not established a “plausible rational[e] as to why” Pace and Pickering would have would have worked together to render claim 42 obvious, Broadcom is entitled to judgment as a matter of law of nonobviousness. Because there is insufficient evidence to submit this issue to the jury for findings of fact or an advisory verdict, Broadcom requests that the Court enter pre-verdict judgment as a matter of law that claim 42 of the ’057 patent is not obvious. Dated: October 4, 2011 WILMER CUTLER PICKERING HALE AND DORR LLP By: /s/ Louis W. Tompros Louis W. Tompros Attorneys for Plaintiff BROADCOM CORPORATION Case 8:09-cv-01058-JVS -AN Document 856 Filed 10/04/11 Page 6 of 7 Page ID #:21381 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 6 BROADCOM’S MEMORANDUM IN SUPPORT OF MOTION FOR JMOL OF NO INVALIDITY OF CLAIM 42 OF THE ’057 PATENT Broadcom Corporation v. Emulex Corporation, Case Nos. SACV09-1058 JVS (ANx) and SACV 10-03963-JVS (ANx) PROOF OF SERVICE Fed. R. Civ. P. 5(b) & L.R. 5-3 I, Jason H. Liss, hereby certify that a copy of the foregoing Broadcom’s Memorandum in Support of its Motion for Judgment as a Matter of Law of No Invalidity of Claim 42 of the ’057 Patent was served upon the following parties as indicated below on this 4th day of October, 2011. For Emulex Corporation: smg@jmbm.com broadcom-emulex@fr.com broadcomemulexservice@tklaw.com (email addresses for service on Emulex per agreement of the parties) Via Hand Delivery Via Overnight Courier (1 copy) Via Facsimile Via Electronic Mail (1 copy) I certify under penalty of perjury that the foregoing is true and correct. /s/ Jason H. Liss Jason H. Liss ACTIVEUS 90748102v2 Case 8:09-cv-01058-JVS -AN Document 856 Filed 10/04/11 Page 7 of 7 Page ID #:21382