United States District Court, D. Arizona
G. Campbell United States District Judge
Continental Circuits LLC asserts claims for patent
infringement against Defendants Ibiden U.S.A. Corp., Ibiden
Co. Ltd., and Intel Corp. The Court held a Markman
hearing on August 4, 2017. This order will set forth the
Court's ruling on the issues addressed during the hearing
and in the parties' briefs.
Ibiden produces layered electronic devices at its facilities
overseas. See Doc. 133, ¶¶ 51,
These layered devices are used in computer electronics,
including computer processors manufactured by Defendant
Intel. See id., ¶¶ 49-51.
devices are made of alternating layers of conductive and
non-conductive materials. See id., ¶ 29. When
adhesion between the layers is poor, the layers can separate,
creating problems for or failure of the electronic product in
which they are incorporated. See Id. In the 1990s,
four employees of Continental Circuits, Inc., a now-defunct
circuit-board manufacturer, invented a “novel surface
roughening technique” using etching to create a
“non-uniformly roughened surface” that allows for
stronger adhesion between layers. Id., ¶¶
28-29, 120. The four co-inventors applied to patent the
surface-roughening technology in 1997, and two patents were
issued in 2000 and 2004. Id., ¶¶ 12-13.
Those patents are not at issue in this case. A continuation
application was filed by early 2005, and eventually resulted
in the issuance of the four patents that are at issue here:
U.S. Patent Nos. 7, 501, 582 (2009), 8, 278, 560 (2012), 8,
581, 105 (2013), and 9, 374, 912 (2016) (collectively, the
“patents-in-suit”). See id.,
¶¶ 14-17, 35-36. Copies of these patents can be
found at Doc. 188-3, Exs. 1-4.
Continental Circuits LLC is a non-operating entity that was
formed in 2016 and owns the patents-in-suit. Doc. 49, at 11
n.8; Doc. 133, ¶ 19. The day after the last of the
patents-in-suit was issued, Plaintiff filed this action.
See Doc. 1. Plaintiff alleges that Defendants have
infringed the patents-in-suit.
parties have filed a joint claim construction statement that
identifies the patent terms to be addressed in this order.
Doc. 177. The statement identifies three categories of claims
to be construed, each of which includes a number of closely
related claims found in the patents. Id. It also
identifies four terms that Defendants claim are indefinite
and therefore invalid. Id. The parties have filed
briefs on claim construction. Docs. 188, 189, 199, 200. At
the Court's request, the parties filed additional
memoranda regarding the ramifications of their claim
construction positions. Docs. 225, 230.
patent includes two basic components: (1) a written
description of the invention, referred to as the
“specification” of the patent, and (2) the patent
claims. The claims define the scope of the invention covered
by the patent. Phillips v. AWH Corp., 415 F.3d 1303,
1312 (Fed. Cir. 2005) (en banc). Claim construction is a
matter of law to be decided by the Court. Markman v.
Westview Instruments, Inc., 517 U.S. 370, 372 (1996).
of a claim are generally given the ordinary and customary
meaning the words would have for a person of ordinary skill
in the art at the time of the invention. Phillips,
415 F.3d at 1313. “[T]he person of ordinary skill in
the art is deemed to read the claim term not only in the
context of the particular claim in which the disputed term
appears, but in the context of the entire patent, including
the specification.” Id. The specification is
also highly relevant. The Federal Circuit has characterized
it as “the single best guide to the meaning of a
disputed term.” Id. at 1315 (quotation marks
and citation omitted). A court may also consider the
patent's prosecution history. Id. at 1317.
“Like the specification, the prosecution history
provides evidence of how the PTO and the inventor understood
the patent.” Id. The claims, specification,
and prosecution history are commonly referred to as
evidence may also be used in claim construction. Extrinsic
evidence consists of all evidence external to the patent and
prosecution history, including expert and inventor testimony,
dictionaries, learned treatises, and other patents.
Id. Extrinsic evidence is viewed as less reliable
than the patent and its prosecution history in determining
how to read claim terms. Id. at 1318.
Category 1 Terms.
1 in the parties' joint claim construction statement
concerns a number of claims in the patents-in-suit that
address the etching of the dielectric or epoxy layer of an
electronic circuit board or comparable device. Doc. 177 at
4-9. Some of the claims simply refer to “etching the
epoxy, ” while others refer to “etching the
dielectric material, ” “removal of a portion of
the dielectric material, ” “removal of some of
the dielectric material, ” “a surface of a layer
of a dielectric material, ” “a surface of a
dielectric material, ” and “a dielectric material
comprising a surface.” Id. Plaintiff contends
that these phrases require no construction. Defendants
contend that each phrase should be construed to include a
requirement that the etching, removal, or modification of the
dielectric material be “produced by a repeated desmear
Plaintiff correctly notes, Defendants do not contend that the
actual words of the claims provide this additional meaning.
Rather, Defendants seek to add a limitation to the claims -
namely, that the etching or alteration of the dielectric
material occur through a repeated desmear process. Because
the plain and ordinary meaning of the phrases at issue does
not include Defendants' proposed limitation, Defendants
carry a heavy burden. The Federal Circuit has explained that
there are only two exceptions to the rule that claims are
given their plain and ordinary meaning: “1) when a
patentee sets out a definition and acts as his own
lexicographer, or 2) when the patentee disavows the full
scope of a claim term either in the specification or during
prosecution.” Thorner v. Sony Computer Entm't
Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). The
standard Defendants must meet for either of these exceptions
is “exacting.” Id. at 1366.
act as its own lexicographer, a patentee must ‘clearly
set forth a definition of the disputed claim term' other
than its plain and ordinary meaning.” Id. at
1365 (quoting CCS Fitness, Inc. v. Brunswick Corp.,
288 F.3d 1359, 1366 (Fed. Cir. 2002)). “It is not
enough for a patentee to simply disclose a single embodiment
or use a word in the same manner in all embodiments, the
patentee must ‘clearly express an intent' to
redefine the term.” Id. (quoting
Helmsderfer v. Bobrick Washroom Equip., Inc., 527
F.3d 1379, 1381 (Fed. Cir. 2008)).
disavowal also must be “clear and unmistakable.”
Id. at 1367. “‘Where the specification
makes clear that the invention does not include a particular
feature, that feature is deemed to be outside the reach of
the claims of the patent, even though the language of the
claims, read without reference to the specification, might be
considered broad enough to encompass the feature in
question.'” Id. at 1366 (quoting
SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys.,
Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001)).
“‘The patentee may demonstrate intent to deviate
from the ordinary and accustomed meaning of a claim term by
including in the specification expressions of manifest
exclusion or restriction, representing a clear disavowal of
claim scope.'” Id. (quoting Teleflex,
Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed.
careful review of the patents-in-suit, the Court concludes
that Defendants have met the exacting standard required to
adopt their proposed limitation.
The Patents' Disavowal of Prior Art.
Federal Circuit has found disavowal when a patent
“repeatedly disparaged an embodiment as
‘antiquated, ' having ‘inherent inadequacies,
' and then detailed the ‘deficiencies [that] make
it difficult' to use.” See GE Lighting
Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309
(Fed. Cir. 2014) (quoting Chi. Bd. Options Exch., Inc. v.
Int'l Sec. Exch., LLC, 677 F.3d 1361, 1372 (Fed.
Cir. 2012)). For example, in Inpro II Licensing, S.A.R.L.
v. T-Mobile USA, Inc., 450 F.3d 1350, 1354-55 (Fed. Cir.
2006), the Federal Circuit affirmed the construction of
“host interface” as a “direct parallel bus
interface.” The court noted that the only embodiment
disclosed was a direct parallel bus interface and that
“the specification emphasizes the importance of a
parallel connection in solving the problems of the previously
used serial connection.” Id. This discussion
demonstrated “what the inventor has described as the
invention.” Id. at 1355; see also OpenWave
Sys., Inc. v. Apple Inc., 808 F.3d 509, 513-17 (Fed.
Cir. 2015) (narrowly construing claim term “mobile
device” to exclude communication devices containing a
“computer module” based on limiting statements in
specification that disparaged prior art communication devices
containing such “computer modules”); Fed.
Retractable Techs., Inc. v. Becton, Dickinson & Co.,
653 F.3d 1296, 1305 (Fed. Cir. 2011) (limiting scope of
syringe “body” to a one-piece body based in part
on distinction of prior art syringes composed of multiple
pieces); SciMed, 242 F.3d at 1341 (finding disavowal
based on disparagement of a particular embodiment and
statements that the “present invention” does not
include the embodiment).
specification, which is common to all the patents-in-suit,
provides this introduction: “The present invention is
directed to methods for making or manufacturing an electrical
device, and the process, composition, and product thereof.
More particularly, the present invention involves such
multi-layer electrical devices as circuit boards constructed
by joining a dielectric material to a subsequently applied
conductive material.” '582 Patent at
1:13-18. The purpose of the invention is to improve
on multilayer electrical devices that “suffer from
delamination, blistering, and other reliability problems.
This is particularly true when the laminates are subject to
thermal stress.” Id. at 1:30-32.
specification explains that the patented invention produces a
stronger bond between the dielectric layer and the conductive
layer by forming teeth in each layer that interlock with each
other. “The surface structure is comprised of teeth
that are preferably angled or hooked like fangs or canine
teeth to enable one layer to mechanically grip a second
layer.” Id. at 1:54-57.
specification then proceeds to explain the process by which
these teeth are formed in the manufacturing of a multi-layer
electrical device. Step 6 is the relevant step for purposes
of Category 1 claims. Step 6 “involves the etching [of]
cavities, veins, openings, or gaps in the applied dielectric
material, or more particularly an outermost surface thereof,
to accommodate the teeth.” Id. at 5:37-40. The
process by which layers of dielectric material are prepared
for boding to a conductive layer is known as a
“desmear” process. The '582 Patent repeatedly
distinguishes the process covered by the patent from the
prior art and its use of a “single desmear
process.” Five portions of the specification are
the specification explains that “[o]ne technique for
forming the teeth is somewhat similar to what has been known
as the swell and etch or desmear process, except that
contrary to all known teachings in the prior art,
in effect, a ‘double desmear process' is
utilized.” Id. at
5:41-44. The description then becomes even more
specific: “That is, not merely increasing the times and
temperatures and other parameters for the desmear process,
but instead completing the process a first time,
and then completing the process a second
time.” Id. at
the patent explains that “the desmear process
as disclosed herein is contrary to
the manufacturer's specification, i.e., a
‘double desmear process, ' rather than the single
desmear process of the known prior art.”
Id. at 5:60-63. This statement not only equates the
prior art with a “single desmear process, ” but
specifically states that “the desmear process as
disclosed herein” is “contrary” to that
the specification explains:
the peel strength produced in accordance with the
present invention is greater than the [peel]
strength produced by the desmear process of the
prior art, i.e., a single pass desmear process.
For example, if a prior art desmear
process is used to produce a 6 lb/in average
peel strength, the present
invention may produce an average peel strength
on the order of 10 lb/in or more.
Id. at 7:3-9. This statement again equates the prior
art with “a single pass desmear process, ” and
states that “the present invention” produces a
greater strength than that prior art.
the patent recommends the use of Probelec XB 7081 for
creation of the dielectric layer. The specification contains
Although Probelec XB 7081 apparently was intended for use in
the common desmear (swell and etch) process as used in
conventional plated through hole plating lines, Probelec XB
7081 can alternatively be used in carrying out
the present invention. For example,
the present invention differs from the common
desmear process in that sub-steps in the desmear process are
repeated as a way of forming the teeth.
Id. at 8:45-52. This language explains that although
Probelec XB 7081 was intended for the prior art process of
single desmear, it “can alternatively be used in
carrying out the present invention.” In other words,
the prior art single desmear process is not “the
present invention.” It also explains precisely how
“the present invention” differs from the prior
art: “sub-steps in the desmear process are repeated as
a way of forming the teeth.”
the specification contains this strong statement: “In
stark contrast with the etch and
swell process of the known prior
art, however, a second pass through the process
(sub-steps A through F) is used. The second pass seems to
make use of non-homogeneities in bringing about a formation
of the teeth.” Id. at 9:1-9. This language
draws a “stark contrast” between the “known
prior art” and the current invention's
“second pass through the process.”
summary, these statements identify the “swell and
etch” or “single desmear” process as the
“prior art, ” the “known prior art, ”
the “common desmear process, ” and “the
desmear process of the prior art, ” and expressly
distinguish that prior art from the patented invention. The
specification states that the invention is “contrary to
all known teachings in the prior art” (id. at
5:43-48), is “contrary” to “the single
desmear process of the known prior art” (id.
at 5:61-63), “differs from the common desmear
process” (id. at 8:50-52), and stands in
“stark contrast” with the “known prior
art” (id. at 9:1-3). These statements are
clear and strong. They do not merely point out deficiencies
in the prior art, they state with emphasis that this
invention is different from the prior art. They make clear
that the invention does not include the prior art's
single desmear process.
“The Present Invention.”
inventor describes “the present invention” as
including particular elements, it can be viewed as a
disavowal of a broader scope that might otherwise apply.
See Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d
1367, 1372 (Fed. Cir. 2014) (“[W]e have held that
disclaimer applies when the patentee makes statements such as
‘the present invention requires . . .' or
‘the present invention is . . .' or ‘all
embodiments of the present invention are . . .'”);
see also Pacing Technologies, LLC v. GarminIntern.,
Inc., 778 F.3d 1021, 1025 (Fed. Cir. 2015).
Honeywell Int'l, Inc. v. ITT Indus., Inc., 452
F.3d 1312, 1318 (Fed. Cir. 2006), the court addressed a
“fuel injection system component.” Although the
ordinary meaning of a “fuel injection system
component” is not limited to a fuel filter, the Federal
Circuit found that the proper construction was narrower than
the customary meaning and was limited to a filter. The court
noted that the specification repeatedly described the fuel
filter as “this invention” and “the present
invention, ” and held that “[t]he public is
entitled to take the patentee at his word and the word was
that the invention is a fuel filter.” Id.;
see also Edwards Lifesciences LLC v. Cook Inc., 582
F.3d 1322, 1327 (Fed. Cir. 2009) (limiting the claim term
“graft” to mean “intraluminal graft”
when “the specification frequently describes an
‘intraluminal graft' as ‘the present
invention' or ‘this invention'”).
shown in the quotations above, the specification states that
“the peel strength produced in accordance with
the present invention is greater
than the [peel] strength produced by the desmear process of
the prior art, i.e., a single desmear process.”
'582 Patent at 7:3-6. This statement suggests “the
present invention” produces results different from the
single desmear process. The specification also states that
“the present invention
differs from the common desmear process in that sub-steps in
the desmear process are repeated as a way of forming the
teeth.” Id. at 8:50-52. This statement clearly
asserts that “the present invention” - not just
the embodiment discussed in the specification as an example -
differs from the prior art because it involves a repeat of
the desmear process. The specification further states that
“the desmear process as disclosed
herein is contrary to the manufacturer's
specifications, i.e., a ‘double desmear process, '
rather than the single desmear process of the known prior
art.” Id. at 5:59-63. Although this statement
is addressing the specifications of the XB 7081, it also
states that “the desmear process as disclosed” in
the patent is a “double desmear process.” These
statements unmistakably affirm that “the present
invention” differs from the single desmear process of
the prior art.
Prosecution History and Other Portions of the
Defendants note, the examiner rejected all pending claims
during prosecution of the ‘560 Patent. Doc. 188-3 at
155. In response, the applicants submitted a declaration from
Professor C.P. Wong, Ph.D, which included this explanation:
As described in this paragraph, performing two separate swell
and etch steps is a technique which forms the teeth. Although
how this occurs within the dielectric material is not recited
with in-depth detail, I understand the specification as
informing that the teeth formation results from the release
of some solid content in the first etching pass, forming
irregular recesses and volume displacement. By forming the
irregular releases in the first etching pass, an opening
within the dielectric material would then be enlarged in the
second etch pass, making the structure shown in Figure 1 and
recited in the claims[.]
Doc. 188-3 at 109.
statement clearly describes the patented method as involving
two etching processes. Although Plaintiff correctly notes
that Dr. Wong refers only to “a technique” as
opposed to “the technique, ” Dr. Wong explains
that the patented teeth are created by the second etching
pass. This part of the prosecution history corroborates the
conclusions reached above, even if not sufficient on its own
to find disavowal.
portions of the patents also support the conclusions reach
above. For example, the '582 Patent includes claims which
assert that the products produced by the patented process are
superior to products created by “a single roughening
process, ” “a single pass roughening, ” or
“a single desmear process.” See, e.g.,
'582 Patent at 10:25, 10:33-34, 11:4, 11:11, 11:48,
11:55, 12:2, 12:15, 12:42-43, 12:59, 14:7, 17:34, 17:38-39,
18:1, 18:6, 18:36-37, 18:41-42, 19:10-11, 19:14-15, 19:26.
19:40, 19:66-67, 20:15-16. These claims are not at issue in
this case, but both sides agreed during the Markman
hearing that the Court can consider them in this order. Their
wording confirms that the present invention is different from
a single desmear process.
also point to extrinsic evidence that supports the
Court's conclusion. Documents produced by the inventors
state that “a two pass desmear cycle doubles the peel
strength of a one pass desmear cycle, but varying the times
in the cycle do not seem to have that great of an
effect.” Doc. 235-2, Ex. 26. The primary inventor of
the patented product, Brian McDermott, wrote in a 1998 letter
that “we use a double pass desmear to achieve the tooth
structure.” Doc. 235-3, Ex. 30. This extrinsic
evidence, although not reliable enough to be dispositive,
provides helpful corroboration of the Court's conclusion.
Phillips, 415 F.3d at 1319 (explaining that
extrinsic evidence “may be useful to the court”).
relies on the principle of claim differentiation and argues
that references to a repeat desmear process are found in
several independent claims, but not in dependent claims. Doc.
189 at 16. Plaintiff notes that “the presence of a
dependent claim that adds a particular limitation gives rise
to a presumption that the limitation in question is not
present in the independent claim.” Phillips,
415 F.3d at 1315.
claim differentiation presumption can be overcome by clear
indicia in the specification and prosecution history. As the
Federal Circuit has explained, “claim differentiation
is a rule of thumb that does not trump the clear import of
the specification.” Edwards, 582 F.3d at 1332;
see also Seechange Int'l, Inc. v. C-COR, Inc.,
413 F.3d 1361, 1369 (Fed. Cir. 2005) (noting that claim
differentiation is “not a hard and ...