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 previously ruled on claim
construction (Doc. 243), and its decision was reversed by the
Federal Circuit. See Cont'l Circuits LLC v. Intel
Corp., 915 F.3d 788, 792 (Fed. Cir. 2019). The
case has been remanded for further litigation.
Court's previous ruling declined to address three
means-plus-function claims. Doc. 243 at 18-20. The parties
have now re-briefed the construction of these claims. Docs.
324, 325, 336, 337. This order will set forth the Court's
the claims of a patent include the “means for”
doing something, they describe a function. But if a function
is claimed, what structure of devices has actually been
patented? Congress has answered this question in 35 U.S.C.
§ 112(f), which provides that “[a]n element in a
claim for a combination may be expressed as a means or a step
for performing a specified function without the recital of
structure, material, or acts in support thereof, and such
claim shall be construed to cover the corresponding
structure, material, or acts described in the specification
and equivalents thereof.” 35 U.S.C. §
112(f). This provision “allows a patentee to
express a claim limitation by reciting a function to be
performed rather than by reciting structure or materials for
performing that function.” Northrop Grumman Corp.
v. Intel Corp., 325 F.3d 1346, 1350, 66 U.S.P.Q.2d 1341
(Fed. Cir. 2003).
then is a function claim construed so as to enable a fact
finder to determine when the claim has been infringed? Under
§ 112(f), “[s]uch a limitation is construed to
cover the corresponding structure, materials, or acts
described in the specification and equivalents
thereof.” Id. As the Federal Circuit has
Functional terms written in “means” form are
“construed to cover the corresponding structure,
material, or acts described in the specification and
equivalents thereof.” 35 U.S.C.A. § 112, ¶ 6.
Infringement is found literally if the claimed function is
performed by either the structure described in the patent or
an equivalent of that structure. Thus construction of
“means” claim terms requires review of not only
the function, but also the structure by which it is
Vulcan Eng'g Co., Inc. v. Fata Aluminium, Inc.,
278 F.3d 1366, 1373 (Fed. Cir. 2002).
Court's task is to identify the “function”
associated with the plain language of the claim and then
identify the corresponding “structure” in the
specification that is associated with that function.
Medtronic, Inc. v. Advanced Cardiovascular Sys.,
Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001) (“The
first step in construing such a limitation is a determination
of the function of the means-plus-function limitation. The
next step is to determine the corresponding structure
described in the specification and equivalents
parties briefed this issue before the Court's earlier
claim construction ruling, and agreed that three claims, two
in the '582 patent and one in the '105 patent, are
means-plus-function limitations. See Doc. 177 at
15-16. The parties also agreed on the function
for each term. Id.
first limitation identified by the parties, found in Claim
109 of the '582 Patent, is “means for joining the
conductive layer to the dielectric material.” Doc. 177
at 15. The parties agreed in their previous briefing that
this claim has the following function: “joining the
conductive layer to the dielectric material.”
second limitation is found in Claim 114 of the '582
Patent and reads: “means for mechanically gripping a
conductive layer to the surface of the dielectric material so
that the conductive layer is burrowed in and under the top
surface of the dielectric material.” Id. The
parties agreed on the following function for this claim:
“mechanically gripping a conductive layer to the
surface of the dielectric material so that the conductive
layer is burrowed in and under the top surface of the
dielectric material.” Id.
third term comes from the '105 Patent and reads:
“means for interlocking a conductor part of the
circuitry configured for filling cavities with an epoxy
dielectric material disposed in combination with the
circuitry and coupled with the conductor part.”
Id. at 116. The parties agree on this function:
“interlocking a conductor part of the circuitry
configured for filling cavities with an epoxy dielectric
material disposed in combination with the circuitry and
coupled with the conductor part.” Id.
previous claim construction briefing, Plaintiff proposed a
different structure for each of these claims. This was based
in part on Plaintiff's belief that each of the claims
disclosed a different function. While it is true that the
language of the functions was different, the Court disagreed
with Plaintiff's premise:
The Court also disagrees with Plaintiff's suggestion that
the words “joining, ” “mechanically
gripping, ” and “interlocking” have
different meanings. These terms are not defined in the
patents. Each is used to describe the means by which the
layers adhere to each other. And, as Defendants note, these
terms are used interchangeably in some parts of the
Doc. 243 at 20. As a result, the parties' recent briefing
does not address the precise functions disclosed in the three
claims. Plaintiff notes that neither party appealed this
decision to the Federal Circuit, and that it is now law of
the case. Doc. 336 at 4 n.1.
reading many more means-plus-function cases in the last few
days than it had time to read when ruling on the broader
claim construction issues addressed in the earlier briefing,
the Court reaches a different conclusion. The Court now
believes that each function may have a slightly different
meaning. While all of the claims describe a function that
causes the layers of the device to adhere to each other, the
Court concludes that the plain language of the claims should
be adopted. The Federal Circuit has instructed that
“[t]he function of a means-plus-function limitation . .
. must come from the claim language itself.” Creo
Prod., Inc. v. Presstek, Inc., 305 F.3d 1337, 1344 (Fed.
Cir. 2002); see also Micro Chem., Inc. v. Great Plains
Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999)
(“The statute does not permit limitation of a
means-plus-function claim by adopting a function different
from that explicitly recited in the claim.”).
functions adopted by the Court, therefore, are as follows:
“means for joining the conductive layer to the
dielectric material” in Claim 109 of the '582
patent; “means for mechanically gripping a conductive
layer to the surface of the dielectric material” in
Claim 114 of the '582 patent; and “means for
interlocking a conductor part of the circuitry configured for
filling cavities with an epoxy dielectric material disposed
in combination with the circuitry and coupled with the
conductor part” in Claim 21 of the '105 patent. The
Court apologizes to the parties for wobbling about on this
issue, but concludes that these functions are truer to the
actual claim language and the teachings of the Federal
The Parties' Proposed Structure Constructions.
parties disagree on the structure that corresponds to the
functions in each claim. Plaintiff asserts that the
corresponding structure for all of the claims is ...