United States Court of Appeals
for the Federal Circuit
__________________________
SILICON GRAPHICS, INC.,
Plaintiff-Cross Appellant,
v.
ATI TECHNOLOGIES, INC., ATI TECHNOLOGIES
ULC,
AND ADVANCED MICRO DEVICES, INC.,
Defendants-Appellants.
__________________________
2008-1334, -1353
__________________________
Appeals from the United States District Court for the
Western District of Wisconsin in Case No. 06-CV-0611,
Chief Judge Barbara B. Crabb.
___________________________
Decided: June 4, 2010
___________________________
JAMES M. BOLLINGER, Morgan, Lewis & Bockius LLP,
of New York, New York, argued for plaintiff-cross appel-
lant. With him on the brief was PHILIP L. HIRSCHHORN.
WILLIAM H. MANNING, Robins, Kaplan, Miller & Ciresi
L.L.P., of Minneapolis, Minnesota, argued for defendants-
appellants. With him on the brief were JACOB S.
ZIMMERMAN and AARON R. FAHRENKROG.
__________________________
SILICON GRAPHICS v. ATI TECHNOLOGIES 2
Before RADER, * Chief Judge, LOURIE and PROST, Circuit
Judges.
RADER, Chief Judge.
This case features computer graphics systems such as
the type used to animate the Pixar Animation Studios
(“Pixar”) movies Toy Story and Wall-E. The United
States District Court for the Western District of Wiscon-
sin granted summary judgment of non-infringement in
favor of defendants ATI Technologies, Inc. (“ATI Inc.”),
ATI Technologies ULC (“ATI ULC”), and Advanced Micro
Devices, Inc. (“AMD”) (collectively “ATI”) on a number of
claims of U.S. Patent No. 6,650,327 (the “’327 patent”).
Silicon Graphics, Inc. v. ATI Techs., Inc., No. 06-611, 2008
WL 4200359 (Jan. 30, 2008) (“Summary Judgment Opin-
ion”). The District Court concluded that plaintiff Silicon
Graphics, Inc., (“Silicon Graphics” or “SGI”) did not create
a genuine factual dispute on direct infringement. Id. at
*18-20. The trial court also concluded that a license
between Silicon Graphics and Microsoft Corp. (the “Mi-
crosoft license”) authorized users of Microsoft operating
systems to practice the claimed technology. Id. at *21-23.
Following its summary judgment ruling, the district court
held a jury trial on the validity of the ’327 patent. The
jury concluded that certain claims were not proved to be
invalid. Silicon Graphics, Inc. v. ATI Techs., Inc., 569 F.
Supp. 2d 819 (W.D. Wis. 2008) (“JMOL Opinion”).
Because the district court erroneously construed two
of the three contested limitations in the ’327 patent this
court vacates the summary judgment on claims with
those terms. This court also determines that the district
court erred with respect to the effect of the Microsoft
* Randall R. Rader assumed the position of Chief
Judge on June 1, 2010.
3 SILICON GRAPHICS v. ATI TECHNOLOGIES
license on direct infringement. In all other respects, this
court affirms.
I.
A.
The ’327 patent teaches a graphics system and proc-
ess that predominantly operates on a floating point for-
mat. In floating point format, “data is represented by the
product of a fraction, or mantissa, and a number raised to
an exponent.” ’327 patent, col.1 ll.61-65. For example, a
number n can be represented in base 10 by
n = m × 10e,
where m is the mantissa and e is the exponent. If m
equals 2 and e equals 1, n equals 20; if m equals 2 and e
equals -1, then n equals 0.2. The decimal point therefore
“floats” based on the value of e.
The ’327 patent discloses a number of floating point
formats, including the following 8-bit format,
n = s_eee_mmmm,
where “s” represents the sign bit (0 is for positive and 1 is
for negative), “e” represents the exponent bits (000 equals
0, 001 equals 1, 010 equals 2, and so on), and “m” repre-
sents the mantissa bits (e.g., 0101 equals 5). In that 8-bit
format, the largest number that can be written is
01111111, or 15 × 27. Floating point format contrasts
with fixed point format, where numbers are simply por-
trayed by a string of bits that represent a fraction and/or
an integer.
Figure 2 of the ’327 patent represents a graphics pro-
gram that produces interactive three-dimensional images
as a pipeline through which data passes.
SILICON GRAPHICS v. ATI TECHNOLOGIES 4
The first stage of the pipeline is called the “geometry
subsystem” and encompasses display list 133, evaluators
134, and per-vortex operations/primitive assembly 135.
The geometry subsystem receives instructions from a
computer’s CPU and builds an interactive three-
dimensional world. The world contains points, lines,
triangles, and polygons, which the ’327 patent refers to as
“primitives.” Id. col.6 ll.51-54.
The second stage of the pipeline is called “rasteriza-
tion,” 138. In rasterization, the three-dimensional world
of primitives is converted to a displayable two-
dimensional image with a three-dimensional appearance.
Rasterization involves the assignment of primitives to
pixels, or sub-pixels called “fragments,” and it also in-
volves making adjustments in order to provide color,
transparency, texture, and shadows to the displayed
image.
In the third and final stage, the frame buffer memory,
140, stores the pixel data. The pixel values are eventually
read from the frame buffer and used to draw the three-
dimensional images on the computer screen.
5 SILICON GRAPHICS v. ATI TECHNOLOGIES
According to the ’327 patent, prior art graphics sys-
tems performed rasterization in a fixed point format,
which, although faster and less burdensome, resulted in
less flexibility and accuracy. Generally, the range and
precision of a floating point format are greater than those
of a fixed point format using the same number of bits. A
greater range allows a user to generate a greater variety
of graphics images, and a greater precision permits the
storage of a greater number of gradations of data, which
gives the user a greater degree of control over the graph-
ics images to be displayed.
Although some prior art systems performed floating
point rasterization through software emulation on a fixed
point hardware platform, the ’327 patent explains that
the prior art approach was both slow and limited. It was
slow because software emulation relies on a general
purpose CPU and limited because the frame buffer ulti-
mately only stored fixed point data.
The inventors of the ’327 patent “discovered . . . that it
is now practical to implement some portions or even the
entire rasterization process by hardware in a floating
point format.” Id. col.2 ll.55-57. In addition, the inven-
tors discovered that it had become cost beneficial to
expand the memory for the frame buffer to accommodate
floating point data. For example, leaving frame buffer
data in floating point format allows the graphics system
to “operate directly on” the data stored in the frame
buffer, “without having to unnecessarily repeat some of
the preceding steps in the graphics pipeline.” Id. col.3
ll.15-18. By operating directly on data, the CPU can more
quickly refine pixel data, and a user can more quickly
enhance or change an image when she, for example,
changes her point of view or magnifies a point of interest.
SILICON GRAPHICS v. ATI TECHNOLOGIES 6
B.
Silicon Graphics initially asserted claims from three
different patents: the ’327 patent; U.S. Patent No.
6,292,200 (the “’200 patent”); and U.S. Patent No.
6,885,376 (the “’376 patent”). Silicon Graphics dropped
its claims of infringement with respect to the ’376 patent
following an early summary judgment ruling in favor of
ATI. That summary judgment ruling is not at issue on
appeal. On the ’200 patent, ATI prevailed on its summary
judgment motions of non-infringement, and Silicon
Graphics has not appealed those rulings either. As to the
’327 patent, Silicon Graphics originally asserted claims 1-
6, 9-12, 15-18, and 21-24. Those claims remain relevant
on appeal.
Claims 1-6 are all independent apparatus claims.
Claim 1 is representative (important phrases underlined):
A computer system, comprising:
a processor for performing geometric cal-
culations on a plurality of vertices of a
primitive;
a rasterization circuit coupled to the proc-
essor that rasterizes the primitive ac-
cording to a rasterization process
which operates on a floating point
format;
a frame buffer coupled to the rasterization
circuit for storing a plurality of color
values; and
a display screen coupled to the frame
buffer for displaying an image accord-
ing to the color values stored in the
frame buffer;
7 SILICON GRAPHICS v. ATI TECHNOLOGIES
wherein the rasterization circuit performs
scan conversion on vertices having
floating point color values.
Claims 2 through 6 are substantially similar to claim 1,
except that the last limitation is replaced with one or
more different limitations that relate to either the
rasterization circuit or, most importantly for this appeal,
the floating point format. For example, in claim 3 the
“scan conversion” limitation of claim 1 is replaced with
“wherein the floating point format is comprised of sixteen
bits in a s10e5 format.”
Claims 9-12, 15, and 16 all essentially claim the same
thing as claims 1-6 but are method claims. The remain-
ing claims that Silicon Graphics asserted will be dis-
cussed in more detail as they become relevant.
C.
ATI makes and sells graphics chips and processors.
AMD acquired the entire business of ATI Inc. on October
24, 2006, re-incorporated it, and now operates it as ATI
ULC. Because all of the asserted claims of the ’327 patent
require a display (or, in the case of the method claims,
“drawing the image for display on a display screen”),
Silicon Graphics asserts that ATI indirectly infringes
through its sales of products to computer manufacturers
and end-users.
The district court granted summary judgment of non-
infringement of claims 1-6, 9-12, and 15-16 of the ’327
patent. Summary Judgment Opinion, 2008 WL 4200359,
at *31. As noted, the district court based its grant of
summary judgment of non-infringement in favor of ATI on
two independent grounds. First, the court construed the
claims to preclude direct infringement by ATI’s custom-
SILICON GRAPHICS v. ATI TECHNOLOGIES 8
ers. Id. at *18-20. Second, the court held that the Micro-
soft license authorized end-users of certain Microsoft
products to use Silicon Graphics’ patented apparatuses
and methods. Id. at *21-23.
ATI originally contended that claims 3, 10-12, and 15-
16 are invalid for lack of enablement. The district court
declined to address that argument at summary judgment
in light of its non-infringement ruling. Id. at *24. The
court did address ATI’s contention that claims 17 and 22
are invalid as anticipated, but denied its motion for
summary judgment on that ground. Id. at *25.
Following the district court’s summary judgment rul-
ing, Silicon Graphics voluntarily dismissed the rest of its
infringement case. The case nonetheless proceeded to
trial, where ATI unsuccessfully challenged the validity of
claims 17-18 and 22-23 of the ’327 patent. Over ATI’s
objection, the district court’s order directing entry of
judgment stated that “all of . . . [ATI’s] counterclaims
have been addressed, withdrawn or abandoned.” Silicon
Graphics, Inc. v. ATI Techs., Inc., 573 F. Supp. 2d 1108,
1114 (W.D. Wis. 2008) (“Clarification Opinion”) (emphasis
added). ATI then moved for judgment as a matter of law
(“JMOL”) and a new trial on the validity of claims 17-18
and 22-23, which the district court denied. JMOL Opin-
ion, 569 F. Supp. 2d at 833-34. The district court also
denied ATI’s motion for costs, finding that “[u]nder the
circumstances, no reason exists to award fees and costs to
either side.” Id. at 833.
ATI now appeals the denial of its post-trial motions.
Silicon Graphics cross-appeals aspects of the district
court’s claim construction as well as its conclusion that
the Microsoft license authorizes use of the invention
claimed in the ’327 patent. This court has jurisdiction
under 28 U.S.C. § 1295(a)(1).
9 SILICON GRAPHICS v. ATI TECHNOLOGIES
II.
Silicon Graphics challenges the district court’s con-
struction of three claim terms in the ’327 patent: “a
rasterization process” in claims 1 through 6, “scan conver-
sion” in claims 1 and 9 through 16, and “s10e5” in claims
3 and 11.
This court reviews claim construction without defer-
ence. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448,
1455-56 (Fed. Cir. 1998) (en banc). The rules of claim
construction are well known. For instance, the terms of a
claim are “generally given their ordinary and customary
meaning.” Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (en banc) (quotation omitted). The con-
text in which a term appears is also of significance. Id. at
1314. If the specification reveals a special definition for a
claim term, “the inventor’s lexicography governs.” Id. at
1316. In fact, the specification is “the single best guide to
the meaning of a disputed term.” Id. at 1315 (quotation
omitted).
A.
As noted, claims 1 through 6 of the ’327 patent claim
“[a] computer system, comprising . . . a rasterization
circuit coupled to the processor that rasterizes the primi-
tive according to a rasterization process which operates on
a floating point format.” (Emphasis added.) The district
court construed the term “rasterization” to mean “a
graphics operation that translates three-dimensional
primitives into a set of corresponding fragments of pixels
or both and fills them in.” Silicon Graphics, Inc. v. ATI
Techs., Inc., No. 06-611, 2007 WL 5614112, at *11 (W.D.
Wis. Oct. 15, 2007) (“Claim Construction Opinion”). In its
summary judgment ruling, the district court noted that
SILICON GRAPHICS v. ATI TECHNOLOGIES 10
its construction reflected the concept that rasterization
includes “two specific aspects: (1) translating three-
dimensional primitives into a set of corresponding pixels
and fragments and (2) filling in those pixels or fragments”
and that the “process as a whole operates on a floating
point format.” Summary Judgment Opinion, 2008 WL
4200359, at *20.
The district court’s construction formed the basis of
its summary judgment ruling of non-infringement for
those claims that contain the “a rasterization process”
term. Even though ATI’s products fill in pixels or frag-
ments using floating point values (for example, through
fog and blending functions and calculation of color val-
ues), they translate primitives into pixels and fragments
using fixed point values. Id. Thus, according to the
district court, the rasterization process does not operate
on a floating point format “as a whole.” Id.
Silicon Graphics argues that the district court did not
recognize that claims 1-6 refer to one or more rasteriza-
tion processes, not a single process, and that not all of the
rasterization processes need to be conducted in floating
point format. Instead, Silicon Graphics proposes that “a
rasterization process” means that “‘one or more’ of the
rasterization processes (e.g., scan conversion, color, tex-
ture, fog, shading) operate in floating point format.” Scan
conversion, the argument continues, is a “translating”
rasterization process and shading is an example of a “fill
in” rasterization process, but “a rasterization process”
does not necessarily refer to both of those processes as a
single unit.
Indeed this record shows that the district court erred
in requiring rasterization to occur entirely with floating
point values. The ’327 patent explicitly teaches that
rasterization consists of multiple processes: “The proc-
11 SILICON GRAPHICS v. ATI TECHNOLOGIES
esses pertaining to scan converting, assigning colors,
depth buffering, texturing, lighting, and anti-aliasing are
collectively known as rasterization.” ’327 patent col.1
ll.43-45 (emphasis added). These passages from the
specification define the terms in controlling terms. See
Phillips, 415 F.3d at 1316. Thus, when the claims refer to
“a rasterization process” they are referring to one of the
subsets of rasterization (e.g., scan converting, color,
texture, fog, shading) listed in the specification.
The district court concluded that the claims referred
to a single rasterization process: “[C]laims 1 through 6
state that the ‘rasterization process’ operates on a floating
point format.” Summary Judgment Opinion, 2008 WL
4200359, at *20. The claims themselves, however, specifi-
cally claims 1 through 6, recite “a rasterization process
which operates on a floating point format . . .,” not “the
rasterization process.” The use of the indefinite article “a”
in the claim, when coupled with the list of processes
provided in the specification, makes it clear that the
claims’ references to “a rasterization process” means “one
or more rasterization processes.” See Tate Access Floors,
Inc. v. Interface Architectural Res., Inc., 279 F.3d 1357,
1370 (Fed. Cir. 2002) (“It is well settled that the term ‘a’
or ‘an’ ordinarily means ‘one or more.’”).
The limitation “a rasterization process which operates
on a floating point format” therefore means that “one or
more of the rasterization processes (e.g., scan conversion,
color, texture, fog, shading) operate on a floating point
format.” This construction is also in line with the rest of
the specification. Nowhere does the specification teach
that all rasterization processes must operate on a floating
point format. To the contrary, the Summary of the Inven-
tion states that “[t]he present invention provides a display
system and process whereby the geometry, rasterization,
and frame buffer predominately operate on a floating
SILICON GRAPHICS v. ATI TECHNOLOGIES 12
point format.” ’327 patent col.4 ll.8-11 (emphasis added).
Similarly, the Summary of the Invention states that
“certain rasterization processes are performed according
to a floating point format.” Id. col.4 ll.15-16 (emphasis
added). And the specification also notes that certain
processes within the rasterization and frame buffer
processes “can be implemented in a fixed point format
without departing from the scope of the present inven-
tion.” Id. at col.12 ll.27-29. In sum, this court determines
that the language of the claims in context and the specifi-
cation show the accuracy of Silicon Graphics’ proposed
construction. Accordingly, the district court’s construction
of “a rasterization process” is reversed.
B.
The district court construed “scan conversion” to
mean “a process that specifies which pixels of the display
screen belong to which primitives on an entirely floating
point basis.” Claim Construction Opinion, 2007 WL
5614112, at *7. The district court premised its summary
judgment ruling of non-infringement on that construction
because ATI’s accused products do not perform scan
conversion entirely in floating point, but use fixed point
“x” and “y” spatial coordinates to translate primitives to
pixels. Summary Judgment Opinion, 2008 WL 4200359,
at *6, *19. Silicon Graphics argues that the claims do not
require “scan conversion” to be entirely in floating point,
but that the term simply means “specifying primitives to
pixels or fragments.”
The specification and the rest of the record supports
the district court’s construction of “scan conversion.” The
Summary of the Invention in the ’327 patent begins as
follows:
The present invention provides a display system
and process whereby the geometry, rasterization,
13 SILICON GRAPHICS v. ATI TECHNOLOGIES
and frame buffer predominately operate on a
floating point format. . . . In particular, all color
values exist as floating point format. Further-
more, certain rasterization processes are per-
formed according to a floating point format.
Specifically, the scan conversion process is now
handled entirely on a floating point basis.
Col.4 ll.8-18 (emphasis added). Nothing else in the speci-
fication indicates that the statement in the Summary of
the Invention was merely an embodiment of the present
invention. Although the specification does repeatedly
suggest that “one or several of [the disclosed operations]
can be performed in fixed point without departing from
the scope of the present invention,” col.11 ll.40-42; see
col.11 ll.55-56 and col.12 ll.29-33, the specification never
states that scan conversion is one of those operations. To
the contrary, when the specification refers to the specific
process of “converting a projected point, line, or polygon,
or the pixels of a bitmap or image, to fragments, each
corresponding to a pixel in the frame buffer,” it also
teaches that “this rasterization process is performed
exclusively in a floating point format.” Col. 11 ll.7-12
(emphasis added). Thus general language in the specifi-
cation permitting some operations to be done in fixed
point does not work to contradict the specific language
that requires scan conversion in floating point.
Silicon Graphics argues that the district court’s claim
construction makes claim 1 and 9 redundant, since those
claims specify that scan conversion is performed on verti-
ces having “floating point color values.” It would be
unnecessary to specify the nature of the color values,
Silicon Graphics argues, if scan conversion were to be
done entirely in floating point. To the contrary, perform-
ing on vertices having floating point color values is not
necessarily the same thing as performing on an entirely
SILICON GRAPHICS v. ATI TECHNOLOGIES 14
floating point basis. For example, an operation might be
executed on an entirely floating point basis even if the
color values that are used as inputs are stored in fixed
point, so long as the color values are translated to floating
point before the operation executes. The specification
recognizes this distinction, as it states both that “all color
values exist as floating point format” and “scan conver-
sion is handled entirely on a floating point basis.” Id.
col.4 ll.15-18 (summary of invention). This court therefore
affirms the district court’s construction of “scan conver-
sion.”
C.
The district court construed the term “s10e5” to mean
“a 16 bit floating point format composed of one sign bit,
ten mantissa bits, and five exponent bits, with an expo-
nent bias of 16.” Claim Construction Opinion, 2007 WL
5614112, at *12. Silicon Graphics disputes whether the
construction should have included the exponent bias.
ATI’s accused devices, in contrast to the district court’s
claim construction, all have an exponent bias of 15.
Summary Judgment Opinion, 2008 WL 4200359, at *18.
An exponent bias allows for the exponent bits in a
floating point format to represent either a positive or
negative exponent without using an additional bit. An
exponent bias of 16 means that the actual exponent is
found by subtracting 16 from the number represented by
the exponent bits. For example, if the exponent bits are
set to 00000 in the formula
n = s_mmmmmmmmmm_eeeee
where “s” represents the sign bit, “m” represents the
mantissa bits, and “e” represents the exponent bits, then
the actual exponent is equivalent to 0 − 16, or -16. The
15 SILICON GRAPHICS v. ATI TECHNOLOGIES
largest exponent in that example, e=11111, is equivalent
to 31 − 16, or 15.
The district court’s construction of “s10e5” was incor-
rect. In construing the term, the district court relied on
the following statement in the specification:
The 16-bit floating point format utilized in one
embodiment of the present invention is designated
using the nomenclature ‘s10e5’, where ‘s’ specifies
one (1) sign bit, ‘10’ specifies ten (10) mantissa
bits, and ‘e5’ specifies five (5) exponent bits, with
an exponent bias of 16. Fig. 3 defines the repre-
sented values for all possible bit combinations for
the s10e5 format.
’327 patent col.8 ll.45-50 (emphasis added). As the state-
ment itself makes clear, however, that description of
“s10e5” is given as a part of “one embodiment of the
present invention.” A construing court’s reliance on the
specification must not go so far as to “import limitations
into claims from examples or embodiments appearing
only in a patent’s written description . . . unless the
specification makes clear that ‘the patentee . . . intends
for the claims and the embodiments in the specification to
be strictly coextensive.’” JVW Enters., Inc. v. Interact
Accessories, Inc., 424 F.3d 1324, 1335 (Fed. Cir. 2005)
(quoting Phillips, 415 F.3d at 1323).
The specification does not suggest that the patentee
intended to make that embodiment of s10e5 coextensive
with the claims. Elsewhere, the specification defines
“s10e5” without reference to bias. The Abstract states,
“In one embodiment, a 16-bit floating point format con-
sisting of one sign bit, ten mantissa bits, and five expo-
nent bits (s10e5), is used to optimize the range and
precision afforded by the 16 available bits of information.”
Similarly, the Summary of the Invention states,
SILICON GRAPHICS v. ATI TECHNOLOGIES 16
However, it has been discovered that one floating
point format, known as “s10e5,” has been found to
be particularly optimal when applied to various
aspects of graphical computations. As such, it is
used extensively throughout the geometric,
rasterization and frame buffer processes of the
present invention. To optimize the range and pre-
cision of the data in the geometry, rasterization,
and frame buffer processes, this particular s10e5
floating point format imposes a 16-bit format
which provides one sign bit, ten mantissa bits,
and five exponent bits.
Id. col.4 ll.27-37. Those more general statements trump
the definition found in the embodiment on which the
district court relied.
The district court also justified its construction by not-
ing that the claims in the ’327 patent sometimes refer to
s10e5 and other times, in dependent claim 18 for example,
refer to data “comprised of one sign bit, ten mantissa bits,
and five exponent bits.” The district court concluded that
“[t]he claims refer to other 16-bit formats, but [‘s10e5’] is
one that the plaintiff chose to define with greater detail.”
Claim Construction Opinion, 2007 WL 5614112, at *12.
But this difference does not compel the district court’s
construction because the terms are used in different
contexts. The term “s10e5” is used in claims that define a
floating point format, whereas the claims use the un-
abridged language to define the composition of data.
More precisely, claim 3 requires “the floating point format
[to be] comprised of sixteen bits in a s10e5 format,”
whereas claim 18 requires “the [floating point format]
specification [to be] comprised of 16 bits of data and the
data [to be] comprised of one sign bit, ten mantissa bits,
and five exponent bits." The patent specification similarly
only refers to the floating point’s format as s10e5, not the
17 SILICON GRAPHICS v. ATI TECHNOLOGIES
data itself. It is justifiable that the claims would follow
the same convention, even if the two claim terms mean
essentially the same thing. Accordingly, the district
court’s construction of “s10e5” is also reversed.
III.
The district court also granted summary judgment of
non-infringement in favor of ATI based on the Microsoft
license. As the district court held, and the parties do not
dispute, “licensed use of a product does not constitute
direct infringement and, therefore, does not support a
finding of indirect infringement.” Summary Judgment
Opinion, 2008 WL 4200359, at *22 (citing Aro Mfg Co. v.
Convertible Top Replacement Co., 377 U.S. 476, 497-99
(1964) (“[I]f the purchaser and user could not be amerced
as an infringer certainly one who sold to him . . . cannot
be amerced for contributing to a non-existent infringe-
ment.”)).
The Microsoft license states that Microsoft’s “Author-
ized Licensees” are immune from suit (the “Immunity
Provision”)
under [the ’327 patent] for the formation, use,
sale, license, importation or other distribution or
transfer of any combination of third party prod-
ucts with a Subject Product originally provided by
MICROSOFT, but only to the extent that (i) for any
given patent claim of [the ’327 patent], such claim
would not be directly infringed by the third party
product separate and apart from the combination
with the Subject Product, and (ii) MICROSOFT’S
provision of said Subject Product would, absent
this Agreement, result in MICROSOFT’s liability
for infringement (including, without limitation,
contributory infringement) of said claim. The de-
termination of infringement in (ii) above shall as-
SILICON GRAPHICS v. ATI TECHNOLOGIES 18
sume the existence of any necessary knowledge or
intent requirements required to constitute in-
fringement.
ATI relies on this license to argue that end-users of
any Microsoft Windows operating system are licensed and
therefore there can be no direct infringement to support
Silicon Graphics’ claims of indirect infringement. Be-
cause, as explained in Part II, supra, this court affirms
the district court’s summary judgment ruling of non-
infringement with respect to those claims that contain the
term “scan conversion” (claims 1, 9-12, and 15-16), this
court only evaluates the Microsoft License with respect to
claims 2 through 6 of the ’327 patent, all of which are
apparatus claims.
Delaware law governs the Microsoft license. Under
Delaware law, contract interpretation is a legal question.
Honeywell Int’l Inc. v. Air Prods. & Chems., Inc., 872 A.2d
944, 950 (Del. 2005). Summary judgment is therefore “a
proper framework for enforcing unambiguous contracts.”
OSI Sys., Inc. v. Instrumentation Corp., 892 A.2d 1086,
1090 (Del. Ch. 2006). Here, however, this court concludes
that the district court erred in enforcing this contract at
the summary judgment stage because it relied on an
erroneous assumption of what constitutes infringement of
an apparatus claim.
Under the first prong of the Immunity Provision, an
Authorized Licensee is not authorized to use a “third
party product,” here, an ATI graphics chip or processor, if
the third party product would directly infringe “separate
and apart from . . . combination with [a] Subject Product.”
The parties do not dispute that a Microsoft Windows
operating system is a “Subject Product.” It is also undis-
puted that the products do not function without an oper-
19 SILICON GRAPHICS v. ATI TECHNOLOGIES
ating system. As the district court noted, “[w]hen the
accused products are not combined with an operating
system . . . they cannot perform rasterization or frame-
buffering.” Summary Judgment Opinion, 2008 WL
4200359, at *23. Absent performance, the district court
held, there could be no infringement. Id.
The district court erred in assuming that direct in-
fringement requires the performance of all of the elements
in these apparatus claims. In addition to the actual use of
the product described, infringement of an apparatus claim
occurs when the invention is, among other things, made
or sold in the United States. 35 U.S.C. § 271. Thus, even
absent its use (or performance), this court has held that
an apparatus claim directed to a computer that is claimed
in functional terms is nonetheless infringed so long as the
product is designed “in such a way as to enable a user of
that [product] to utilize the function . . . without having to
modify [the product].” Fantasy Sports Props., Inc. v.
Sportsline.com, Inc., 287 F.3d 1108, 1118 (Fed. Cir. 2002).
Where, as here, a product includes the structural means
for performing a claimed function, it can still infringe
“separate and apart” from the operating system that is
needed to use the product.
Fantasy Sports helps to understand this principle. In
that case, the patent in suit claimed “[a] computer for
playing football based upon actual football games, com-
prising . . . means for scoring performances of . . . actual
football players based upon actual game scores . . .
wherein said players . . . receive bonus points.” Id. at
1111. The district court held on summary judgment that
one of the defendants’ products, Commissioner.com, could
not directly infringe because it was not a separate fantasy
football computer game but merely a software tool. Id. at
1112. This court vacated and remanded on the grounds
that no reasonable juror could find that the Commis-
SILICON GRAPHICS v. ATI TECHNOLOGIES 20
sioner.com product is not software installed on a computer
for playing fantasy football. Id. at 1119. The software,
although not in and of itself a computer for playing fan-
tasy football games, infringed so long as a user could
activate “the functions programmed into a piece of soft-
ware . . . only [by] activating means that are already
present in the underlying software.” Id. at 1118. “In other
words, an infringing software must include the ‘means for
scoring . . . bonus points’ regardless whether that means
is activated or utilized in any way.” Id.
Claims 2 through 6 of the ’327 patent require “a
rasterization circuit coupled to the processor that raster-
izes” primitives in a certain way and “a frame buffer
coupled to the rasterization circuit for storing” certain
data. Even if the products cannot rasterize or store
absent an operating system, they may include a rasteriza-
tion circuit and a frame buffer for doing so. If they do,
they infringe separate and apart from the operating
system, and the Immunity Provision does not apply.
Nothing in the record suggests that the Microsoft Win-
dows operating system provides anything other than a
way to activate the accused product. Because infringe-
ment of the claims at issue does not turn on activation,
this court vacates the summary judgment ruling of non-
infringement based on the Microsoft License and remands
for the district court to determine whether any genuine
issues of material fact would allow ATI to continue to rely
on the Microsoft License at trial.
IV.
At trial, ATI relied on four allegedly prior art refer-
ences to argue that independent claims 17 and 22 of the
’327 patent and their dependent claims 18 and 23, respec-
tively, are anticipated. Independent claim 17 reads as
follows (emphases added):
21 SILICON GRAPHICS v. ATI TECHNOLOGIES
In a computer system, a method for operating on data
stored in a frame buffer, comprised of:
storing the data in the frame buffer in a
floating point format;
reading the data from the frame buffer in
the floating point format;
operating directly on the data in the float-
ing point format; and
writing the data to the frame buffer in the
floating point format;
wherein the steps of writing, storing, and
reading the data in the frame buffer in
the floating point format are further
comprised of a specification of the
floating point format, wherein the
specification corresponds to a level of
range and precision.
Independent claim 22 reads as follows (emphases
added):
A computer system having a floating point frame
buffer for storing a plurality of floating point color values;
wherein the floating point color values are written
to, read from, and stored in the frame buffer using
a specification of floating point color values that
corresponds to a level of range and precision.
As a reminder, the frame buffer is the final staging
area for pixel value data before that data is drawn on the
screen. The district court construed the term “frame
buffer” to mean “the portion of computer memory for
storing color values during or after rasterization.” Claim
Construction Opinion, 2007 WL 5614112, at *10 (empha-
sis added). The reference to “during” in the district
court’s construction of the term “frame buffer,” which is
not in dispute on appeal, becomes apparent upon a closer
SILICON GRAPHICS v. ATI TECHNOLOGIES 22
look at the ’327 patent’s specification. The specification
explains in the Background of the Invention that the
information stored in the frame buffer “is a rich source of
data that can be used in subsequent graphics calcula-
tions.” Col.3 ll.19-29. In the prior art, however, data
would need to be read from the frame buffer and input
into the graphics pipeline at or near the beginning “so
that the data could be recalculated in the floating point
format to restore the required precision and range.” Id.
The specification posits that, in accordance with the
claimed invention, “a computing system could be designed
with processors dedicated to operating on the frame
buffer, resulting in additional improvements in the speed
at which graphics calculations are performed.” Id. col.3
ll.45-48.
The jury found that ATI did not prove that any of
claims 17-18 or 22-23 were anticipated by clear and
convincing evidence. ATI challenged those findings in a
JMOL motion and a motion for a new trial, the denial of
which ATI now appeals.
A.
This court applies regional circuit law in reviewing
the denial of a motion for JMOL. Seachange Int’l, Inc. v.
C-Cor Inc., 413 F.3d 1361, 1367 (Fed. Cir. 2005). In the
Seventh Circuit, an appellate court’s inquiry is “limited to
the question whether the evidence presented, combined
with all reasonable inferences permissibly drawn there-
from, is sufficient to support the verdict when viewed in
the light most favorable to the party against whom the
motion is directed.” Campbell v. Miller, 499 F.3d 711, 716
(7th Cir. 2007) (quotation omitted). To show that a patent
claim is invalid as anticipated, the accused infringer must
show by clear and convincing evidence that a single prior
art reference discloses each and every element of a
23 SILICON GRAPHICS v. ATI TECHNOLOGIES
claimed invention. Electro Med. Sys., S.A. v. Cooper Life
Scis., 34 F.3d 1048, 1052 (Fed. Cir. 1994).
The first reference on which ATI relies is THE
OPENGL GRAPHICS SYSTEM: A SPECIFICATION (VERSION
1.1) (“OpenGL”). OpenGL is SGI’s own graphics interface.
This reference is an interface specification. In other
words, OpenGL teaches ways to design hardware and
software so that the two will be compatible. OpenGL
provides high-level commands and controls that call and
provide inputs to and specify outputs from a set of com-
puter commands without describing any specific imple-
mentation for those commands. Importantly, OpenGL
discloses a frame buffer that consists of, among other
things, an accumulation buffer.
One of the commands to the accumulation buffer is
defined in OpenGL as
void ClearAccum( float r, float g, float b, float a );
That command takes “four floating-point arguments
that are the values, in order, to which to set the [color
indices] R, G, B, and A values of the accumulation buffer.”
OpenGL also teaches five operations―ACCUM, LOAD,
RETURN, MULT, and ADD―that can be performed on
data in the accumulation buffer through the command
void Accum( enum op, float value ). For example,
OpenGL describes the MULT operation as multiplying
each R, G, B, and A value in the accumulation buffer by
value and then returning the scaled color components to
their corresponding accumulation buffer locations.
The district court correctly upheld the jury’s conclu-
sion that OpenGL did not anticipate because “[i]t is not
hardware itself and it does not include any description of
the underlying hardware that the program might be
running.” JMOL Opinion, 569 F. Supp. 2d at 828. ATI
SILICON GRAPHICS v. ATI TECHNOLOGIES 24
raises a number of issues regarding OpenGL, but that
reference does not anticipate because it does not describe
the hardware of the frame buffer in any detail. ATI
argues that OpenGL indeed discloses hardware, relying
on Silicon Graphics’ own concession that Figure 2 of the
’327 patent is nothing more than the hardware architec-
ture for OpenGL machines. That argument misses the
mark. OpenGL, by its nature as an interface specifica-
tion, does not describe implementation of any hardware.
It is undisputed that, based on the court’s claim construc-
tion, the frame buffer is a hardware buffer because it
resides in computer memory. Even though OpenGL
describes commands that take floating point values, the
specification provides no disclosure as to whether the
values are actually, for example, stored in the frame
buffer in a floating point format, as independent claims 17
and 22 require. Indeed, co-inventor Dr. John Airey of
Silicon Graphics testified that its implementation of the
accumulation buffer was in fixed point. Thus, sufficient
evidence supports the jury’s conclusion that OpenGL fails
to disclose the storing in, reading from, operating directly
on, and writing to the frame buffer data in floating point
format that is required by independent claims 17 and 22.
ATI also relied on U.S. Patent No. 6,567,083
(“Baum”), entitled “Method, System, and Computer
Program Product for Providing Illumination in Computer
Graphics Shading and Animation.” Baum, like OpenGL,
references a hardware architecture that resembles Figure
2 of the ’327 patent. Baum also teaches that
The present invention can be implemented on
computer systems that use fixed-point and/or
floating point arithmetic. In particular, routine
100 is performed using fixed point arithmetic
when a graphics system, such as the current In-
finiteReality system by Silicon Graphics, Inc.,
25 SILICON GRAPHICS v. ATI TECHNOLOGIES
does not support floating point values in all stages
of the hardware rendering pipeline.
ATI argues that this quote teaches that fixed-point
arithmetic is the exception, used only if a particular
machine does not support a full floating-point pipeline.
The district court correctly denied ATI’s JMOL motion
with respect to Baum because substantial evidence sup-
ports the conclusion that Baum does not disclose a float-
ing point format that “corresponds to a level of range and
precision,” as required by independent claims 17 and 22.
Baum does not expressly discuss a floating point format.
ATI argues that Baum discloses a floating-point specifica-
tion by teaching that the floating point pipeline may be
implemented in specific, commercially available ma-
chines, including Java-based computers. ATI’s expert, Dr.
Potel, testified that using floating point in Java-based
systems necessarily refers to an IEEE single-precision
floating-point number.
SGI’s counsel, however, severely damaged Dr. Potel’s
credibility. On direct examination, Dr. Potel presented
five slides to the jury that discussed the InfiniteReality
system to which Baum refers, highlighting in yellow the
phrase “floating point values in all stages” on each of
those slides. On cross, however, SGI’s counsel empha-
sized to the jury that Dr. Potel’s presentation did not
highlight the three words that preceded that phrase:
“does not support.” On this record, the jury had every
right to discount Dr. Potel’s description of Baum once his
testimony was impeached. Without Dr. Potel’s testimony,
the record contains no evidence that Baum discloses a
floating point format that corresponds to a level of range
and precision.
The RenderMan Interface (“RenderMan”), like
OpenGL, is an interface specification that ATI points to as
SILICON GRAPHICS v. ATI TECHNOLOGIES 26
an anticipatory reference. It describes itself as a “stan-
dard interface between modeling programs and rendering
programs capable of producing photorealistic quality
images.” It discloses an “imaging pipeline” that uses
floating-point values. SGI’s expert, Dr. Stevenson, testi-
fied that the purpose of RenderMan was to expressly
avoid teaching any hardware implementation so that a
person could program a RenderMan application that
would be compatible with any number of hardware im-
plementations. The jury also heard testimony that Pixar
in fact had created a separate hardware implementation
of RenderMan with its software product PhotoRealistic
RenderMan, which was used to develop Toy Story. For
the same reason that sufficient evidence supports the
jury’s verdict of no invalidity with respect to
OpenGL―namely, the reference does not describe an
underlying hardware implementation―sufficient evidence
also supports the jury’s verdict with respect to Render-
Man.
Finally, ATI relies on U.S. Patent No. 5,528,741 (“Lu-
cas”). Lucas is directed primarily to generating integer
pixel values from floating point values using a lookup
table. Those integer pixel values are then put into a
frame buffer, which, in turn, generates RGB signals for a
display device.
There was sufficient evidence to support a conclusion
here that Lucas does not disclose the “operating directly
on the data in the floating point format” method step of
claims 17 and 18 because the floating point values in
Lucas are converted to integer (fixed point) values before
they are stored in a frame buffer. The district court did
not construe the term “operating directly on” during claim
construction, holding that the term’s ordinary meaning
controlled. Claim Construction Opinion, 2007 WL
5614112, at *14. The testimony of both sides’ experts at
27 SILICON GRAPHICS v. ATI TECHNOLOGIES
trial indicates that that term was not fundamentally in
dispute, thus, it was proper for the district court not to
construe it. See O2 Micro Int’l Ltd. v. Beyond Innovation
Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) (recogniz-
ing that “district courts are not (and should not be) re-
quired to construe every limitation present in a patent’s
asserted claims” but only “[w]hen the parties present a
fundamental dispute regarding the scope of a claim
term”). Indeed, both experts agreed that “operating
directly on” means that the data in the frame buffer is
always in floating point. Only with reference to Lucas did
Dr. Potel change his opinion and allege that “operating
directly on” was met where floating point numbers are
taken through a circuit and come out as fixed-point. This
argument contradicts the ordinary meaning of “operating
directly on the data in floating point format,” and there-
fore the jury’s finding of no anticipation was justified.
Similarly, with respect to independent claim 22, ATI
fails to identify where Lucas discloses that “floating point
color values are written to . . . and stored in the frame
buffer.” The district court’s denial of ATI’s JMOL motion
is therefore affirmed.
B.
This court also applies regional circuit law in review-
ing the denial of a motion for a new trial. Seachange, 413
F.3d at 1367-68. In the Seventh Circuit, a denial of a
request for a new trial is reviewed for abuse of discretion.
ABM Marking, Inc. v. Zanasi Fratelli, S.R.L., 353 F.3d
541, 543 (7th Cir. 2003). “A new trial may be granted
only if the jury’s verdict is against the manifest weight of
the evidence,” King v. Harrington, 447 F.3d 531, 534 (7th
Cir. 2006), or if the trial was “unfair to the moving party.”
Miksis v. Howard, 106 F.3d 754, 757 (7th Cir. 1997). As
SILICON GRAPHICS v. ATI TECHNOLOGIES 28
demonstrated above, the jury’s verdict is not against the
manifest weight of the evidence.
ATI argues that the trial was unfair because the dis-
trict court allowed the jury to consider Silicon Graphics’
claim construction arguments. Specifically, ATI argues
that Silicon Graphics unfairly argued to the jury that the
method steps in claim 17 were required to be performed in
the order listed and that the district court adopted Silicon
Graphics’ construction in its jury instructions. ATI also
argues that the district court left for the jury to decide
whether the claims were limited to specialized hardware.
Both of ATI’s arguments are without merit.
As to the order of the claimed method steps, the dis-
trict court noted in denying ATI’s post-trial motions that
it was ATI’s Dr. Potel who first raised the question at trial
of whether the order of steps was important with respect
to claim 17. Having opened the door, ATI cannot contend
that Silicon Graphics’ counterarguments were unfair.
Even though Silicon Graphics’ counterarguments
were fair, however, this court must still examine the
propriety of the district court’s resolution of the order-of-
steps question. “An erroneous instruction on claim inter-
pretation that affects the jury’s decision on anticipation is
grounds for a new trial.” Seachange, 413 F.3d at 1381. A
party seeking to set aside a judgment based on erroneous
jury instructions must establish that (1) it made a proper
and timely objection to the jury instructions, (2) it re-
quested alternative instructions that would have reme-
died the error, (3) the given jury instructions were legally
erroneous, and (4) the errors had prejudicial effect. Id.
With the order of steps in question, the district court
construed the claim, instructing the jury as follows: “A
method claim may expressly or implicitly require that the
method steps be performed in a particular order. In this
29 SILICON GRAPHICS v. ATI TECHNOLOGIES
case, the order is implied in the patent.” ATI had objected
to that instruction, proposing the following instruction
instead: “Although a method claim necessarily recites the
steps of the method in a particular order, as a general
rule the claim is not limited to performance of the steps in
the order recited.”
On appeal, ATI argues that the district court’s jury
instruction was erroneous because it requires that the
steps be performed in the order they are listed, i.e., that
the steps must start with “storing.” ATI contends that
instead the claim should have been construed to allow, for
example, step one to be operating directly on the data in
the floating point format, step two to be writing the data
to the frame buffer, step three to be storing the data in
the frame buffer, and step four to be reading the data
from the frame buffer. And, to complete its argument
under Seachange, ATI argues that it was prejudiced by
the district court’s jury instruction because Silicon Graph-
ics made the point during closing arguments that to find
anticipation it had to find a reference that “starts by the
storing, followed by reading, operated on third, and then
writing the data back to the frame[ ]buffer fourth.”
This court need not decide whether the district court
erroneously instructed the jury that “the order [of opera-
tion] is implied in the patent.” In simple terms, ATI
shows no prejudice to its position from this instruction.
Instead, ATI only argues that it was prejudiced by Silicon
Graphics’ attorney argument. But there is a difference
between the district court’s instruction and the arguments
that Silicon Graphics made to the jury. The jury instruc-
tion, unlike Silicon Graphics’ closing arguments, did not
require the claimed method to begin with the “storing”
step. As the district court essentially noted in its JMOL
Opinion, the jury instruction simply required the process
to be circular, i.e., even if “the first step is ‘reading,’ the
SILICON GRAPHICS v. ATI TECHNOLOGIES 30
next is ‘operating directly on,’ then ‘writing’ and back to
‘storing.’” 569 F. Supp. 2d at 826 (emphasis added). In
other words, regardless where in the method one starts,
the jury charge can be read to mean that the subsequent
steps must occur in the order that they are listed in the
claim. ATI argues for nothing more on appeal. ATI
cannot make out a claim that the district court abused its
discretion in declining to order a new trial when the claim
construction that it challenges was not actually adverse to
it.
With respect to whether Silicon Graphics improperly
argued that the claims are limited to specialized hard-
ware, ATI’s argument fails because it ignores the court’s
uncontested claim construction. As discussed, the district
court’s construction of “frame buffer,” which was resolved
well before trial, requires a “portion of computer memory.”
Claim Construction Opinion, 2007 WL 5614112, at *10.
ATI does not contend that “memory” is something other
than hardware. The district court recognized this, noting
that “[e]ven defendants’ expert . . . agreed that the claims
at issue in the ’327 patent cover hardware.” JMOL Opin-
ion, 569 F. Supp. 2d at 826. The district court did not
abuse its discretion in refusing to grant a new trial.
V.
ATI also challenges the district court’s ruling that ATI
waived or abandoned its invalidity counterclaims on any
patent claims that ATI failed to litigate through trial.
The Court of Appeals for the Seventh Circuit reviews the
factual determinations upon which a district court predi-
cates a finding of waiver for clear error and the legal
question of whether the conduct amounts to waiver de
novo. e360 Insight v. The Spamhaus Project, 500 F.3d
594, 599 (7th Cir. 2007). Because “[t]he line between
waiver and [abandonment] is often blurry,” this court will
31 SILICON GRAPHICS v. ATI TECHNOLOGIES
evaluate whether ATI abandoned its invalidity counter-
claims under the same standard. United States v. Garcia,
580 F.3d 528, 541 (7th Cir. 2009).
In order to understand the district court’s ruling, it is
necessary to look at the events leading up to trial in more
detail. Following the district court’s summary judgment
ruling of non-infringement as to certain claims, the dis-
trict court held―in the same opinion―that ATI’s invalidity
counterclaims as to those claims were rendered moot,
citing Garmin Ltd. v. TomTom, Inc., 468 F. Supp. 2d 988,
994 n.1 (W.D. Wis. 2006). Summary Judgment Opinion,
2008 WL 4200359, at *24. Also in that opinion, however,
the district court did address ATI’s invalidity counter-
claims on claims 17 and 22, apparently because the court
had made no non-infringement ruling on those claims. Id.
The day after it issued its summary judgment opinion,
the district court held a final pretrial conference. At the
conference, Silicon Graphics announced the voluntary
dismissal of the remaining part of its infringement case
and requested that the court therefore dismiss ATI’s
declaratory judgment counterclaims of invalidity. In a
responsive brief, ATI argued that it was entitled to pursue
its declaratory judgment invalidity counterclaims “regard-
less of whether SGI dismisses its infringement claims” so
that it may “resolve the dispute once and for all.” ATI
contended that this case was different from Garmin
because in Garmin the defendant had moved for summary
judgment of invalidity on claims that the patentee had
never asserted. In its brief to the district court, ATI
vacillated between addressing its “invalidity counter-
claims” generally (“This Court has declaratory judgment
jurisdiction over ATI’s invalidity counterclaims”) and
claims 17, 18, 22, and 23 in particular (“ATI should have
its opportunity to invalidate [claims 17, 18, 22, and 23] in
a trial by jury.”).
SILICON GRAPHICS v. ATI TECHNOLOGIES 32
The district court ruled from the bench that it would
proceed to trial. At trial, ATI only attacked the validity of
claims 17-18 and 22-23 of the ’327 patent. Following trial,
the district court ordered that entry of judgment was
appropriate “[n]ow that all of the claims and counter-
claims have been addressed, withdrawn or abandoned.”
Silicon Graphics, Inc. v. ATI Techs., Inc., No. 06-cv-611,
2008 WL 2828813, *1 (W.D. Wis. Feb. 15, 2008). Appar-
ently surprised by the reference to waiver and abandon-
ment, ATI filed a request to delete any such reference
with respect to any invalidity claims raised in its counter-
claims but not pursued at trial.
The district court denied ATI’s request, noting that
ATI “mounted a vigorous campaign to win reversal of a
ruling that [its] invalidity . . . counterclaims were moot.”
Clarification Opinion, 573 F. Supp. 2d at 1113. That
“campaign,” the district court noted, was based primarily
on the goal of promoting judicial economy, and ATI did
not “explain how it would serve the same goal to permit
[it] to keep [its] untried claims alive.” Id.
The district court did not clearly err. It appropriately
characterized ATI’s jurisdictional arguments as address-
ing its invalidity counterclaims as a whole. It is a claim-
ant’s burden to keep the district court clearly apprised of
what parts of its claim it wishes to pursue and which
parts, if any, it wishes to reserve for another day. See
e360 Insight, 500 F.3d at 600 (“It was not erroneous to
treat [a] voluntary abandonment of defenses, raised but
not pursued, as a waiver.”). If ATI wished to reserve its
right to pursue some of its invalidity counterclaims later,
it was incumbent on ATI to expressly request that the
district court dismiss those counterclaims without preju-
dice rather than ask the district court to infer an implicit
request based on ambiguous statements.
33 SILICON GRAPHICS v. ATI TECHNOLOGIES
To be clear, although this court is vacating the district
court’s non-infringement ruling on claims 2 through 6 of
the ’327 patent, ATI is nevertheless precluded from
relitigating its invalidity counterclaims with respect to
those claims. ATI does not argue on appeal that it chose
to ignore those invalidity counterclaims because of the
district court’s claim constructions. See CytoLogix Corp.
v. Ventana Med. Sys., Inc., 424 F.3d 1168, 1176 (Fed. Cir.
2005) (refusing, after correcting the district court’s claim
construction, to allow new trial on certain invalidity
theories because those arguments were not preserved).
Normally, it is the responsibility of litigants that come
before this court to narrow the issues in a case, not
broaden them. Just as it was ATI’s burden to expressly
inform the district court if it wished to dismiss its invalid-
ity counterclaims without prejudice, ATI also had the
burden of informing this court whether and in what sense
an adverse claim construction ruling would affect the
district court’s disposition of ATI’s invalidity counter-
claims. It failed to do so, and it has not established that it
deserves a second bite at invalidity on remand.
VI.
Finally, ATI argues that the district court erred in de-
clining to award it costs under Rule 54 of the Federal
Rules of Civil Procedure. The district court refused to
award costs to ATI under Rule 54 because “neither side
prevailed and neither side lost.” JMOL Opinion, 569 F.
Supp. 2d at 833. ATI argues to this court that it prevailed
because it won on summary judgment of non-
infringement. Because we vacate the district court’s
summary judgment of non-infringement, ATI has not yet
prevailed on any issue. We therefore leave it to the
parties to reintroduce the prevailing party issue on re-
mand as it becomes relevant.
SILICON GRAPHICS v. ATI TECHNOLOGIES 34
VII.
The district court held that its constructions of the
terms “a rasterization process,” “scan conversion,” and
“s10e5,” independently required summary judgment of
non-infringement of claims 1-6, 9-12, and 15-16. Because
the district court erroneously construed “a rasterization
process” and “s10e5,” and because ATI is not entitled to
summary judgment of non-infringement based on the
Microsoft license, this court vacates the district court’s
non-infringement ruling with respect to claims 2-6 (the
claims in which only those terms appear) and remands for
consideration in light of the correct construction. In all
other respects, for the foregoing reasons, the district
court’s judgment is affirmed.
AFFIRMED IN PART, VACATED IN PART, and
REMANDED