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Continental Circuits LLC v. Intel Corp.

United States District Court, D. Arizona

August 9, 2017

Continental Circuits LLC, Plaintiff,
v.
Intel Corporation, et al., Defendants.

          ORDER

          David G. Campbell United States District Judge

         Plaintiff 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.

         I. Background.

         Defendant Ibiden produces layered electronic devices at its facilities overseas. See Doc. 133, ¶¶ 51, 110.[1] These layered devices are used in computer electronics, including computer processors manufactured by Defendant Intel. See id., ¶¶ 49-51.

         The 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.

         Plaintiff 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.

         The 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.[2]

         II. Legal Standard.

         A 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).

         Words 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 “intrinsic evidence.”

         Extrinsic 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.

         III. Category 1 Terms.

         Category 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 process.” Id.

         As 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.

         “To 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)).

         A 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. Cir. 2002)).

         After careful review of the patents-in-suit, the Court concludes that Defendants have met the exacting standard required to adopt their proposed limitation.

         A. The Patents' Disavowal of Prior Art.

         The 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).

         The 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.[3] 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.

         The 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.

         The 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 particularly relevant.

         First, 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.[4] 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 5:44-48.[5]

         Second, 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 prior art.

         Third, 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.

         Fourth, the patent recommends the use of Probelec XB 7081 for creation of the dielectric layer. The specification contains this explanation:

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.”

         Fifth, 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.”

         In 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.

         B. “The Present Invention.”

         When an 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).

         In 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'”).

         As 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.

         C. Prosecution History and Other Portions of the Patents.

         As 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.

         This 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.

         Other 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.

         Defendants 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”).

         D. Plaintiff's Arguments.

         Plaintiff 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.

         The 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 ...


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