Sage Electrochromics, Inc. v. View, Inc.
Filing
160
ORDER CONSTRUING TERMS OF UNITED STATES PATENT NOS. 5,724,177, 5,831,851, 7,372,610, AND 8,243,357 re 108 Claim Construction Statement, filed by Sage Electrochromics, Inc.; 109 Claim Construction Statement, filed by View, Inc. Signed by Judge Jon S. Tigar on April 7, 2014. (wsn, COURT STAFF) (Filed on 4/8/2014)
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UNITED STATES DISTRICT COURT
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NORTHERN DISTRICT OF CALIFORNIA
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SAGE ELECTROCHROMICS, INC.,
Case No. 12-cv-06441-JST
Plaintiff,
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v.
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VIEW, INC.,
Defendant.
Re: ECF Nos. 108 & 109
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United States District Court
Northern District of California
ORDER CONSTRUING TERMS OF
UNITED STATES PATENT NOS.
5,724,177, 5,831,851, 7,372,610, AND
8,243,357
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I.
INTRODUCTION
On January 28, 2014, the Court held a hearing for the purpose of construing disputed terms
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in the claims of United States Patent Nos. 5,724,177 (the “’177 Patent”), 5,831,851 (the “’851
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Patent”), 7,372,610 (the “’610 Patent”), and 8,243,357 (the “’357 Patent”). Now, after
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consideration of the arguments and evidence presented by the parties, and the relevant portions of
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the record, the Court construes the terms as set forth below.
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II.
BACKGROUND
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A.
Procedural History
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Plaintiff SAGE Electrochromics, Inc. (“SAGE”) filed this action against Defendant View,
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Inc. (“View”), asserting infringement of SAGE’s ’177 Patent and ’610 Patent. Complaint for
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Patent Infringement and Injunctive Relief, ECF No. 1. View denied infringement in its answer
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and counterclaimed for infringement of View’s ’851 Patent and ’357 Patent. First Amended
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Answer, Affirmative Defenses, and Counterclaims, ECF No. 34.
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SAGE alleges that View’s large-scale electrochromic dynamic glass product directly
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infringe SAGE’s patents. Joint Case Management Statement, ECF. No. 33, at 4:19-24. View
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claims that SAGE is infringing and, with the anticipated commercial operation of SAGE’s new
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facility, will continue to infringe View’s patented electrochromic glass technology by engaging in
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the importation, manufacture, use, sale, and/or offer for sale of electrochromic glass products. Id.
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at 5:2-5.
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Leybold Optics, GMBH (“Leybold”), which has indemnified SAGE against a patent
infringement claim relating to the equipment identified in View’s counterclaim and infringement
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contentions, has intervened in this action. See Order Granting Motion to Intervene, ECF No. 85.
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Leybold and SAGE have joined in filing joint claim construction brief. For simplicity of
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discussion, the Court generally refers to SAGE and Leybold’s arguments and briefs simply as
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“SAGE’s” arguments and briefs, except when referring to the construction of terms in the ‘851
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Patent, in which Leybold specifically argued for SAGE and Leybold’s proposed constructions.
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United States District Court
Northern District of California
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See Part III-B-3-4, infra.
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SAGE and View have proposed competing constructions of terms in claims 4, 6, 12, 13,
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14, 16, 17, 19 of the ’177 Patent, claims 1, 18, 20 of the ’610 Patent, claims 1 and 12 of the ’357
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Patent, and claim 1 of the ’851 Patent.
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B.
Legal Standard
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The construction of terms found in patent claims is a question of law to be determined by
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the Court. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc),
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aff’d, 517 U.S. 370 (1996). “[T]he interpretation to be given a term can only be determined and
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confirmed with a full understanding of what the inventors actually invented and intended to
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envelop with the claim.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (quoting
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Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)).
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Consequently, courts construe claims in the manner that “most naturally aligns with the patent's
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description of the invention.” Id.
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The first step in claim construction is to look to the language of the claims themselves. “It
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is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to which the
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patentee is entitled the right to exclude.’” Phillips, 415 F.3d at 1312 (quoting Innova/Pure Water,
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Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). A disputed claim
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term should be construed in light of its “ordinary and customary meaning,” which is “the meaning
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that the term would have to a person of ordinary skill in the art in question at the time of the
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invention, i.e., as of the effective filing date of the patent application.” Phillips, 415 F.3d at 1312.
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In some cases, the ordinary meaning of a disputed term to a person of skill in the art is readily
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apparent, and claim construction involves “little more than the application of the widely accepted
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meaning of commonly understood words.” Id. at 1314. Claim construction may deviate from the
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ordinary and customary meaning of a disputed term only if (1) a patentee sets out a definition and
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acts as his own lexicographer, or (2) the patentee disavows the full scope of a claim term either in
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the specification or during prosecution. Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d
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1362, 1365 (Fed. Cir. 2012).
Ordinary and customary meaning is not the same as a dictionary definition. “Properly
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United States District Court
Northern District of California
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viewed, the ‘ordinary meaning’ of a claim term is its meaning to the ordinary artisan after reading
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the entire patent. Yet heavy reliance on the dictionary divorced from the intrinsic evidence risks
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transforming the meaning of the claim term to the artisan into the meaning of the term in the
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abstract, out of its particular context, which is the specification.” Id. at 1321. Typically, the
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specification “is the single best guide to the meaning of a disputed term.” Vitronics Corp. v.
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Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). It is therefore “entirely appropriate for a
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court, when conducting claim construction, to rely heavily on the written description for guidance
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as to the meaning of claims.” Phillips, 415 F.3d at 1315. However, while the specification may
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describe a preferred embodiment, the claims are not necessarily limited only to that embodiment.
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Id.
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Finally, courts may consider extrinsic evidence in construing claims, such as “expert and
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inventor testimony, dictionaries, and learned treatises.” Markman, 52 F.3d at 980. Expert
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testimony may be useful to “provide background on the technology at issue, to explain how an
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invention works, to ensure that the court’s understanding of the technical aspects of the patent is
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consistent with that of a person of skill in the art, or to establish that a particular term in the patent
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or the prior art has a particular meaning in the pertinent field.” Phillips, 415 F.3d at 1318.
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However, extrinsic evidence is “less reliable than the patent and its prosecution history in
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determining how to read claim terms.” Id. If intrinsic evidence mandates the definition of a term
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that is at odds with extrinsic evidence, courts must defer to the definition supplied by the former.
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Id.
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C.
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Since this is an action “relating to patents,” the Court has jurisdiction pursuant to U.S.C.
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§ 1338(a).
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III.
Jurisdiction
ANALYSIS
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A.
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SAGE asserts claims in the ’177 and ’610 Patents. The parties have identified six disputed
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Patent Numbers 5,724,177 and 7,372,610 (The SAGE Patents)
terms in these patents as most significant to resolving the parties’ dispute.
1.
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“Superstrate” (claims 6, 13, 14, and 16 of the ’177 Patent)
United States District Court
Northern District of California
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Disputed
Claim Term
SAGE’s
Proposed Construction
View’s
Proposed Construction
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Superstrate
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A layer of material that provides
support and protection
A glass, ceramic, or plastic layer in
surface contact with or adhered to the
electrochromic device
Under View’s initial proposed construction, a superstrate must consist of a glass, ceramic,
or plastic layer. In its responsive claim construction brief, and at oral argument, View represented
that there is no dispute over whether the accused products or prior art are made of such materials.
Therefore, the superstrate’s material is no longer at issue.
The parties continue to disagree about whether the claimed superstrate must be either in
surface contact with, or be adhered to, an electrochromic device. View contends that this is
required, while SAGE argues that the claimed superstrate merely must provide support and
protection.
In the specification of the ’177 Patent, each embodiment and drawing depicts a superstrate
that is either in direct contact with, or adhered to, an electrochromic device. ’177 Patent, at Figs.
3-11. Beyond this, however, View provides little support for its contention that a person of
ordinary skill in the art reading the patent would understand the claimed superstrate to have this
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specific limitation. The configuration itself does not warrant construing the claimed term
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“superstrate,”, since claims are not limited to a specific embodiment. Phillips, 415 F.3d at 1315.
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Moreover, each of claims 6, 13, 14, and 16 recite the “open” transition phrase
“comprising.” “When a claim uses an ‘open’ transition phrase, its scope may cover devices that
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employ additional, unrecited elements.” AFG Indus., Inc. v. Cardinal IG Co., Inc., 239 F.3d 1239,
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1245 (Fed. Cir. 2001). Here, the use of “comprising” in each claim allows for additional elements
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between the superstrate and the electrochromic device, and there are no claim limitations
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restricting the superstrate to being one that is in direct contact with or adhered to the
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electrochromic device. The specification states that “[a] layer of an adhesive may be used to bind
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the transparent superstrate to the electrochromic device,” not that it must be, or that it is inherent
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United States District Court
Northern District of California
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in the claimed superstrate that it is. ‘177 Patent, at 4:37-39 (emphasis added).
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From the intrinsic record, View’s construction appears to be an unwarranted reading of
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limitations from the specification into the claims. See, e.g., 3M Innovative Properties Co. v.
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Tredegar Corp., 725 F.3d 1315, 1321 (Fed. Cir. 2013) (“[L]imitations discussed in the
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specification may not be read into the claims”). SAGE’s construction is drawn from language of
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the specification which indicates that the claimed superstrate “provides further support and
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protection.” ‘177 Patent, 13:60.
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The Court also considers the parties’ submitted extrinsic evidence as a secondary source of
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support for the scope of the claim language. The parties have not submitted any technical
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dictionary evidence suggesting that those skilled in the art would understand the term
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“superstrate” in any specialized way. But there is some evidence regarding the scope of the
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claimed “superstrate” in the surrounding claim language, and the parties have submitted evidence
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from non-technical dictionaries to illuminate that language.
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In each of claims 6, 13, 14, and 16, the superstrate is described as cooperating with the
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substrate “to sandwich” the electrochromic device. Both parties briefed the dictionary definition
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of “sandwich” in order to shed light on the proper construction of “superstrate.” View pointed to
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the use of “sandwich” as a noun, but the claims use the words “to sandwich,” as a verb. In the
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dictionary that View provided, “to sandwich” means “to insert or enclose between usu[ally] two
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things of another quality or character.” ECF No. 116-5, Merriam-Webster’s Collegiate
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Dictionary, 11th ed. (2006). This definition is silent on whether there may be intervening
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elements between that which sandwiches and that which is sandwiched.
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still be understood to “sandwich” the ham that lies between, even if intervening layers of cheese
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obstructed any direct contact between bread and meat. To the extent that extrinsic evidence is
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relevant to construction, it also supports SAGE’s construction.
Slices of bread would
The Court adopts SAGE’s proposed construction.
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2.
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“Transporting means” (claims 4, 6, 12, 13, 17, and 19 of the ’177
Patent)
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Disputed Claim Term
United States District Court
Northern District of California
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Transporting means
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Joint Proposed Construction
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The parties agree that this term should be construed under 35 U.S.C. § 112(f). The parties also
agree on the function: transporting [lithium]1 ions between said electrode and said
counterelectrode. The parties disagree as to the corresponding structure.
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SAGE’s Proposed Structure
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View’s Proposed Structure
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The parties agree that “lithium” is inserted here for claims 4 and 12 of the ’177 Patent.
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Structure for “lithium ion” terms: one or more
lithium ion-conducting materials, for example
lithium silicate, lithium borosilicate,
lithium aluminum silicate, lithium
niobate, lithium nitride, or lithium
aluminum fluoride,
mixtures of lithium silicate and titanium
or zirconium,
lithium ion-conducting polymers,
lithium based inorganic films, solid, and
inorganic electrolytes,
and their equivalents.
Structure for “lithium ion” terms: a layer made
from
lithium silicate, lithium borosilicate,
lithium aluminum silicate, lithium
niobate, lithium nitride, lithium
aluminum fluoride,
mixtures of lithium silicate and titanium
or zirconium, or a polymer material.
Structure for terms not limited to lithium ions:
[a single layer of]2 one or more ion-conducting
materials.
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Structure for terms not limited to lithium ions:
a [single] layer made from
lithium silicate, lithium borosilicate,
lithium aluminum silicate, lithium
niobate, lithium nitride, lithium
aluminum fluoride,
tantalum pentoxide, silicon dioxide,
mixtures of lithium silicate and titanium
or zirconium, or
a polymer material.
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There are three variations of the term “transportation means.” The first variation transports
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United States District Court
Northern District of California
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lithium ions. ’177 Patent, Claims 4, 12. The second variation transports any ions (not just
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lithium). Id. at Claims 6, 13. The third variation transports ions and consists of a single layer. Id.
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at Claims 17, 19. For each of these variations, the parties dispute whether the structure
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corresponding to the claimed function is broadly defined as an ion-conducting material, or if the
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structure must be one of the enumerated exemplary materials in the ’177 Patent.
When determining the corresponding structure to a means-plus-function term, “the
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question is not what structures a person of ordinary skill in the art would know are capable of
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performing a given function, but what structures are specifically disclosed and tied to that function
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in the specification.” Saffran v. Johnson & Johnson, 712 F.3d 549, 563 (Fed. Cir. 2013) cert.
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denied, ___ U.S. ___, 134 S. Ct. 1023 (U.S. 2014). To determine whether a disclosed structure is
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linked to a claimed function, courts must consider the structure “from the perspective of one
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The parties agree that the structure should be limited to a single layers for claims 17 and 19 of
the ’177 Patent.
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skilled in the art.” Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1365-66 (Fed. Cir. 2003). If
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the specification links a claimed function to a “class of structures [] identifiable by a person of
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ordinary skill in the art,” the fact that the class is not limited to a single structure does not
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disqualify it from being the corresponding structure. Linear Tech. Corp. v. Impala Linear Corp.,
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379 F.3d 1311, 1322 (Fed. Cir. 2004).
In Linear Tech., the issue was whether a generic “pulse-width-modulation (PWM) circuit”
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corresponded to the claimed function of “varying the duty cycle.” Id. at 1321. “Modulating the
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widths of pulses” is synonymous with “varying the duty cycle.” But the Federal Circuit held that
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“[a]lthough the expression ‘PWM circuit’ does not reference a specific circuit structure, persons of
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skill in the art would understand that ‘PWM circuit’ references a discrete class of circuit structures
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United States District Court
Northern District of California
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that perform known functions.” Id. at 1322.3 In other words, a structure successfully linked to a
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function is not necessarily limited to a specific subset of enumerated examples, and it can be
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named by the function it performs, as long as the nomenclature is recognized by one of ordinary
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skill in the art. The same rule applies here.
The ’177 Patent states that “[t]he transportation means desirably includes at least one layer
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formed from an ion-conducting material . . . .” ’177 Patent, at 2:39-40. This statement links the
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claimed function and the disclosed structure. The remaining question is whether one skilled in the
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art would determine that this structure sufficiently performs the claimed function. The answer is
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yes. As SAGE’s evidence convincingly demonstrates, a person of ordinary skill in the art at the
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time of invention would be able to identify specific implementations within the class of ion
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conductors, or ion-conducting material, that perform the claimed function. ECF No. 108-5,
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Granqvist, Handbook of Inorganic Electrochromic Materials at 444-451 (Elsevier 1995).
A patentee cannot use a means-plus-function term to “encompass any conceivable means
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for performing the function.” Valmont Indus., Inc. v. Reinke Mfg. Co., Inc., 983 F.2d 1039, 1042
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(Fed. Cir. 1993). The Court recognizes that this danger is present when a court confronts a
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“means for [BLANK]-ing” term, to which the corresponding structure is “a [BLANK]-er.” But in
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View argues that the class of material identified by SAGE as performing the function does not
qualify as sufficiently “discrete” to fall within the scope of this holding, but does not explain why.
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this case, “ion-conducting material” is not merely the concept of “a material for conducting ions”
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rephrased. As the evidence shows, an ion conductor is a discrete class that performs the claimed
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function, as recognized by one of ordinary skill in the art. Under Linear Tech., this is sufficient.
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In their briefs, and at oral argument, the parties disputed whether Saffran or Mettler-
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Toledo, Inc. v. B-TekScales, LLC, 671 F.3d 1291, 1296 (Fed. Cir. 2012), best controls this
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dispute. But in fact, both of these cases provide guidance on what constitutes sufficient linkage
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between a claimed function and a disclosed structure. See Saffran, 712 F.3d at 562 (“The . . .
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patent does not, however, link any additional structures to the release function with sufficient
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specificity to satisfy § 112, ¶ 6.”); Mettler-Toledo, 671 F.3d at 1296 (the structure the district court
properly found linked to the function “was . . . the only structure disclosed in the specification,”
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United States District Court
Northern District of California
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and the structure appellant argued should have been identified “[was] not linked to any claimed
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function”). But linkage is not at issue here. See Transcript of Proceedings, ECF No. 144, at
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48:16-49:10. Both parties agree that there is a link from the function to elements disclosed in the
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specification. The issue is which of the linked structures are sufficient to perform the claimed
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function. On that question, Linear Tech. controls.
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For these reasons, the Court agrees with SAGE that the claimed structure is not limited to
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the specific embodiments. However, SAGE’s construction is also deficient in failing to include
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the term “layer” in all of its constructions. The structure in the specification that SAGE argues
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performs the claimed function specifically identifies a layer of ion-conducting material, not just
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ion-conducting material in any form. ’177 Patent, at 2:39-40.
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Because the corresponding structure is not restricted to specific embodiments but must
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take the form of one or more layers, the Court adopts part of each party’s proposed construction:
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(1) the corresponding structure for “transporting means for transporting said lithium ions” in
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claims 4 and 12 is “at least a layer formed from ion-conducting materials,” (2) the corresponding
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structure for “transporting means for transporting ions” in claims 6 and 13 is “at least a layer
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formed from ion-conducting materials,” and (3) the corresponding structure for “transporting
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means consisting of only a single layer for transporting ions” in claims 17 and 19 is “a single layer
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formed from ion-conducting materials.”
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3.
“Enhancing means” (claims 4, 6, 12, 13, 17, and 19 of the ’177 Patent)
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Disputed Claim Term
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Enhancing means
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Joint Proposed Construction
The parties agree that this term should be construed under 35 U.S.C. § 112(f). The parties also
agree on the function: enhancing the transmission of radiation through said at least one of said
electrically conductive layers. The parties disagree as to the corresponding structure.
SAGE’s Proposed Structure
View’s Proposed Structure
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United States District Court
Northern District of California
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Structure: at least one optically transparent
material, such as transparent oxides, transparent
nitrides, or combinations thereof, having an
appropriate index of refraction, and their
equivalents.
Structure: one or more layers made of
transparent oxides, transparent nitrides, a
combination of transparent oxides and
transparent nitrides, or a mixture of oxides of
silicon and tin in any of the following layer
configurations:
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1) a single layer adjacent to one of the
conductive layers with an index of
refraction that is about equal to the
geometric mean of the indices of
refraction of the substrate/superstrate
and the conductive layer,
2) a two-layer stack where a first layer is
adjacent to one of the conductive layers
and has an index of refraction that is
significantly smaller than the index of
refraction of the conductive layer and a
second layer that is adjacent the
substrate and has an index of refraction
that is significantly larger than the index
of refraction of the first layer,
3) two or more layers between the
substrate and one of the conductive
layers wherein the indices of refraction
of each layer gradually increase from
the index of refraction of the substrate
to the index of refraction of the
conducting layer, or
4) one layer having an index of refraction
greater than 1.9 in surface contact with
one of the conductive layers or adhered
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to the conductive layer, wherein the
conductive layer consists of a
conductive metal.
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To construe the term “enhancing means,” the Court again determines “what structures are
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specifically disclosed and tied to [the claimed] function in the specification.” Saffran, 712 F.3d at
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563. The parties agree that the function for “enhancing means” is “enhancing the transmission of
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radiation through said at least one of said electrically conductive layers.” They also agree that the
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issue is not one of linkage but about the sufficiency of the linked structure. See Transcript, 63:22-
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64:1. As in the “transporting means” term, SAGE would identify the structure as a genus of
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optically transparent material, while View would limit the linked structure to certain specific
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United States District Court
Northern District of California
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species within that genus that are also disclosed.
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The specification of the ’177 patent links the enhancing function to a structure by stating
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that “the enhancing means comprises at least one layer of an optically transparent material,” ’177
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Patent at 2:31-32, and by describing selecting the optically transparent material based on a desired
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index of refraction. Id. at 9:47-64. “Whether the specification adequately sets forth structure
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corresponding to the claimed functions must be considered from the perspective of one skilled in
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the art.” Intel Corp., 319 F.3d 1357 at 1365-66. As SAGE’s evidence shows, one of ordinary skill
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in the art at the time of invention would be able to identify specific implementations within the
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class of optically transparent materials that could increase in the level of transmission. U.S. Patent
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No. 4,187,336, ECF 108-7, at 5:24-6:55; U.S Patent No. 4,308,316, ECF 108-87, at 5:26-6:50.
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The specific materials disclosed in the specification are described as “preferred” or “particularly
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preferred,” rather than essential. ‘177 Patent, 9:48-51.
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For essentially the same reasons as discussed in the “transporting means” construction, the
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Court will not limit the claimed structure as specifically suggested by View. But also for
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essentially the same reasons as discussed in the “transporting means” construction, the Court will
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include a “layer” as part of the linked structure. All of the citations SAGE provides to the
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specification identify a “layer” as the linked structure. See ‘177 Patent, 8:63-64, 9:1-19.
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Therefore, the Court construes the claim as follows: “at least one layer of at least one optically
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transparent material, such as transparent oxides, transparent nitrides, or combinations thereof,
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having an appropriate index of refraction, and their equivalents.
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3.
“ion-conductor [conducting] layer for conducting ions between said
first and second electrodes” (Claims 1, 18 and 20 of the ‘610 Patent)
Disputed Claim Term
SAGE’s
Proposed Construction
View’s
Proposed Construction
“ion-conductor
[conducting] layer for
conducting ions between
said first and second
electrodes”
One or more materials that
conduct ions between the first
and second electrodes and that
provide some electrical
insulation.
deposited material that conducts
ions between the first and second
electrodes while blocking electronic
current
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United States District Court
Northern District of California
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The parties dispute whether the material in the layer must be “deposited,” and whether the
material must “block electric current.”
a.
“While Blocking Electrical Current”
SAGE understood View’s construction to require that the layer must block all electric
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current, and pointed out that one of the disclosed embodiments can allow at least some
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conductivity. ’610 Patent at 7:30-31 (“preferably, the ion conductive layer 32 has low or no
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electronic conductivity”) (emphasis added). In its Responsive Brief and at the hearing, View now
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maintains that its construction does not require that all electric current be blocked. Transcript,
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71:16-18. At the hearing, SAGE offered a compromise construction recognizing that the layer
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“provide[s] some electrical insulation.” Transcript, 71:1-12; see also SAGE Reply 14:1-6. At the
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hearing, View maintained that the layer must block “most or all” current, or block enough current
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to function as an electrochromic device. Transcript, 72:11, 73:20-74:6.
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The Court agrees with both parties that a person of ordinary skill in the art would
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understand the claimed layer as necessarily providing at least some blocking of electrical current.
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The configuration discloses an embodiment in which “preferably, the ion conductive layer 32 has
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low or no electronic conductivity.” ’610 Patent at 7:30-31 (emphases added). At least in this
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embodiment of a five layer electrochromic device, this indicates that most current is blocked, but
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this condition is phrased as a preference rather than a requirement. In another portion of the
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description of the same embodiment, the specification states that “in order for such a five-layer
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electrochromic device to function correctly, it is necessary to have at least the following sequential
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layers: . . . an ion conductor layer (“IC”) which serves as an electrolyte, allowing the passage of
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ions while blocking electronic current.” ‘610 Patent at 5:55-62 (emphases added).4 This passage
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indicates that insulation is more than a mere preference, but it does not use the language of “low or
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no” conductivity.
View does not maintain that the patent anywhere describes the specific amount of
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insulation required, and whether it is an amount more than “some.” Transcript, 74:7-9. At the
8
hearing, View’s proposal was to leave it to experts to define to a jury what it means to “block
9
electrical current.” Id. 73:9-16. But an expert might opine that, outside the context of the Patent,
10
the phrase means blocking of all current. The Court finds as a matter of law that the claimed layer
11
United States District Court
Northern District of California
7
cannot be construed to contain that requirement. To resolve any ambiguity about whether the
12
claimed layer must block all current, the Court adopts SAGE’s construction. The Court does not
13
mean by this construction to rule out View’s contention that the claimed layer must function as an
14
electrochromic device.
b.
15
“Deposited”
View argues that the specification “mandate[s]” that the layer must be “deposited
16
17
material.” But its citations demonstrate only that the description of one preferred embodiment
18
refers to applying layers “sequentially,” and later describes the material as being “deposited” onto
19
the substrate. ’610 Patent at 5:66-67, 9:54-62.
View claims only that “Sage has failed to identify any disclosure to the contrary in the
20
21
specification.” View Resp. Br. 25:14-16. To begin with, this would not be fatal to SAGE’s
22
construction, since claim language is not limited to the specifically identified embodiments.
23
Thorner, 669 F.3d at 1365.
But in this case, it does not even appear to be accurate. To the contrary, SAGE pointed out
24
25
in its opening brief that the Patent discloses that other ways of creating an ion conductor layer
26
27
28
4
The fact that insulation is necessary for the function of the claimed layer is reinforced by
references in the intrinsic and extrinsic record that go beyond the specific “five-layer
electrochromic device” described in Figure 3. Id. at 6:3-4; see also ’177 patent at 6:17-21.
13
1
“may be devised without departing from the spirit and scope of the present invention.” See id. at
2
11:46-54. Given this language, and the fact that nothing but a specific embodiment suggests that
3
the layer must be “deposited,” the Court will not read View’s limiting construction into the
4
meaning of the term.
5
The Court does, however, agree with View that SAGE’s construction could appear to read
6
out of the claim language the requirement that the material be a “layer.” The Court will construe
7
the term as: “a layer of one or more materials that conduct ions between the first and second
8
electrodes and that provide some electrical insulation.”
9
10
B.
Patent Numbers 8,243,357 and 5,831,851 (the View Patents)
View asserts claims in the ‘357 and ‘851 Patents. The parties have identified two disputed
United States District Court
Northern District of California
11
terms in each patent the construction of which are most significant to resolving the parties’
12
dispute.
1.
13
“Fewer than about 0.045 total visible defects per square centimeter
in any region of electrochromic active area” (Claim 1 of ‘357 Patent)
14
15
Disputed Claim
Term
SAGE’s
Proposed Construction
View’s
Proposed Construction
16
17
18
19
20
Fewer than about
0.045 total visible
defects per square
centimeter
in any region of
electrochromic
active area
Fewer than about 0.045 total
defective-points or defectiveareas per square centimeter in
any region of electrochromic
active area that manifest as
visually discernible anomalies
in normal use.
21
22
23
Fewer than about 0.045 total visible
defects per square centimeter, as
measured in the entire region of the
window having electrochromically coated
glass, where a “visible defect” is a defect
of at least about 100 micrometers in size
that produces a noticeable light point
when the device is in the colored state
In this “disputed claim term,” the parties actually identify disputes over the construction of
two different terms: “visible defect” and “per square centimeter in any region of electrochromic
24
active area.”
25
a.
“visible defect”
26
View draws its proposed construction from language in the specification which refers to a
27
“visible pinhole” as having “a dimension of at least about 100 micrometers,” ‘357 Patent 13:44-
28
14
1
52, as well as language referring to defects as “bright spots” that appear when the device is
2
otherwise darkened or colored. Id. at 1:46-49, 10:66-11:6, 14:65-15:1. View therefore proposes
3
that the Court construe “visible defect” as “a defect of at least about 100 micrometers in size that
4
produces a noticeable light point when the device is in the colored state.”
SAGE, on the other hand, argues that its construction adopts specific definitions the
5
patentee used to define the terms at issue. ’357 Patent at 13:23-24 (“[a]s used herein, the term
7
‘defect’ refers to a defective point or region of an electrochromic device”); see also id. at 13:30-33
8
(“[a] defect will be manifest as visually discernible anomalies” and “[s]uch defects are referred to
9
herein as ‘visible’ defects”). Therefore, Sage argues that “visible defects” should be construed as
10
“defective-points or defective-areas . . . that manifest as visually discernible anomalies in normal
11
United States District Court
Northern District of California
6
use.”
12
The Court agrees with SAGE that, where a patentee provides a specific definition for a
13
term, that specific definition is more compelling intrinsic evidence of a term’s construction than
14
evidence drawn from a particular embodiment. A specialized definition reflects the patentee’s
15
concept of claim scope, while a specific embodiment may just describe a particular example. The
16
patentee chose to define “visible defects” as those “that manifest as visually discernible anomalies
17
in normal use,” rather than to specify that a defect must be one that is visible specifically as a light
18
point on an otherwise colored or darkened state. While other language from the specification
19
reflects that the disclosed embodiments were primarily concerned with this specific situation, a
20
claim is not limited to the particular embodiments. Therefore, the Court rejects those aspects of
21
View’s construction that limit the term to encompass only defects that create “a noticeable light
22
point when the device is in the colored state.”
23
However, the language View cites from the record regarding the defect being “at least
24
about 100 micrometers in size” is not an illustration of a particular embodiment. At 5:37-38 and
25
more forcefully at 13:51-52, the patentee is describing what it means to be “invisible to the naked
26
eye,” or “visible,” and is stating that it means “at least about 100 micrometers.” Strictly speaking,
27
this portion of the specification is discussing only one specific type of defect: pinhole defects. But
28
with regard to shorts, the specification describes the invention as isolating any defect causing a
15
1
visible short to the point that, “to the naked eye the visible short will resemble only a visible
2
pinhole.” 13:50-51. The specification goes to note that “[t]ypically, the visible short-type defects
3
are individually treated after fabrication to leave short-related pinholes as the only visible defects.”
4
16:4-7 (emphasis added). The best read of the Patent as a whole is that no visible defects, pinhole
5
or otherwise, are less than at least about 100 micrometers.
Without this construction, it would be up to a lay jury to determine what constitutes a
6
7
“visually discernible” anomaly, and under what conditions. For example, jurors might conclude
8
that, as long as the defect can be observed by a viewer whose eye is only an inch from the glass,
9
the anomaly is “visually discernible,” even if it is smaller than about 100 micrometers. In the
context of the entire intrinsic record, it seems clear that the patentee claimed a narrower scope than
11
United States District Court
Northern District of California
10
this.
12
Therefore, the Court adopts the following construction of “visible defects”: “defective
13
points or regions of at least about 100 micrometers that manifest as visually discernible anomalies
14
in normal use.”
15
16
17
b.
“per square centimeter in any region of electrochromic active
area”
View construes this term as “per square centimeter, as measured in the entire region of the
18
window having electrochromically coated glass.” SAGE does not propose any construction, and
19
objects to View’s construction because it removes “any” from the claim language.
20
While “electrochromic active area” is hardly an everyday term, it is not any more technical
21
than many other terms for which View has proposed no construction. Claim construction “is not
22
an obligatory exercise in redundancy.” United States Surgical Corp. v. Ethicon, Inc., 103 F.3d
23
1554, 1568 (Fed. Cir. 1997). Therefore, there is no immediately apparent purpose to replacing
24
“electrochromic active area” with View’s proposed language: “the region of the window having
25
electrochromically coated glass.”
26
However, View does persuasively argue (albeit for the first time on Reply and at the
27
hearing) that SAGE’s construction “would allow the counting of defects over any arbitrary portion
28
of the electrochromic window.” View Reply 6:11-12. It seems inconsistent with the purpose of
16
1
the invention for the area over which the average number of defects is measured to be limited to
2
any arbitrarily chosen region of the electrochromic active area. If “any region” means “any of the
3
regions” (i.e., at least one region), Claim 1 would encompass a window in which any square-
4
centimeter portion is defect-free, even while the remainder of the window tallies an average of 10
5
visible defects per square centimeter. In addition to being inconsistent with the purposes of the
6
invention, this would overlap with prior art. Conversely, if “any region” means “any given
7
region” (i.e., every region), Claim 1 would not encompass a window in which the window as a
8
whole tallies an .00001/cm2 defect rate, but in which one particular square centimeter region has a
9
defect.5 This would read an embodiment out of the claims, and is inconsistent with the averaging
10
concept denoted by the word “per.”
But at the same time, the patentee chose the words “in any region of,” and adopting View’s
United States District Court
Northern District of California
11
12
construction would amount to effectively deleting these words from the claim. The claim term
13
could easily read “fewer than about 0.045 total visible defects per square centimeter measured
14
across the electrochromic active area,” but those were not the terms the patentee chose. “Courts
15
do not rewrite claims; instead, [they] give effect to the terms chosen by the patentee.” Taurus IP,
16
LLC v. DaimlerChrysler Corp., 726 F.3d 1306, 1321 (Fed. Cir. 2013) (quoting K-2 Corp. v.
17
Salomon S.A., 191 F.3d 1356, 1364 (Fed. Cir. 1999)).
The Court is not at liberty to delete the words “any region of” from the claim language, by
18
19
construing the claim to measure defects across the entire electrochromically active area. But
20
neither would it be appropriate to construe the claim to allow the measuring of defects over any
21
arbitrarily chosen square centimeter, if it is possible to give effect to the terms chosen by the
22
patentee in some other way. The Court must determine how large a region the Patent envisions
23
the defects/cm2 calculation be applied against.
SAGE’s proposal, made at the hearing, is to measure defects over a 22 square centimeter
24
25
region. There is no such thing as “.045 of a defect” within the context of the patent; defects exist
26
27
28
5
Since View takes the position that defects are not measured across any region of the window
smaller than the window itself, the parties have not briefed the distinction between these two
alternate constructions of “any,” both of which seem facially plausible to the Court.
17
1
in whole numbers. The .045 number is used as a way of measuring the result of an averaging
2
process. Therefore, as a practical matter, the area over which defects are measured would have to
3
be large enough to yield at least one whole-number defect. 22 square centimeters is the smallest
4
possible region over which the .045 defects/cm2 calculation can arithmetically be applied and yield
5
a whole number.6
Again, however, if “any region” means “at least one 22 square centimeter region,” this
6
would seem inconsistent with the purposes of the invention, for the same reasons discussed supra.
8
An otherwise defect-ridden window would fall within the claim as long as it had at least one 22-
9
square-centimeter-sized area without a defect. Alternatively, if “any region” means “any given 22
10
square centimeter region,” even an otherwise flawless window would be outside Claim 1 if it had
11
United States District Court
Northern District of California
7
even one defect. This would write out the “per square centimeter” language from the claim as
12
surely as View’s construction would write out the “any region” language.
The specification provides better guidance. It explains that “less than about 0.045 defects
13
14
per square centimeter” means “less than about 450 defects per square meter,” indicating averaging
15
the number of defects over a square meter. ’357 Patent, at 15:66-16:20. This would yield a
16
reasonable result under both constructions of the word “any.” If “any” means “every,” the
17
window would need to achieve a better than .045 defect/cm2 defect rate over any square-meter-
18
sized slice chosen for analysis. And if “any” means “at least one,” the claimed window would
19
need to show that it contains at least one square-meter-sized area that achieves a defect rate better
20
than about .045 per square centimeter. Given the support from the specification, the Court
21
considers this to be the more likely plain and ordinary meaning of the claim language.
Therefore, the Court construes “per square centimeter in any region of electrochromic
22
23
active area” as “per square centimeter, as measured in any square-meter region of the
24
electrochromic active area.” If an accused device has an electrochromic active area that is less
25
than 1 square meter, the number of visible defects per square centimeter shall be measured in the
26
entire region of the electrochromic active area.
27
28
6
To be precise, .045 divided by 1 is 22.22… (with an infinitely repeating decimal).
18
1
2
2.
3
“Fewer than about 0.005 visible short-type defects per square
centimeter of the electrochromic window” (Claim 12 of ‘357 Patent)
4
5
Disputed Claim
Term
SAGE’s
Proposed Construction
View’s
Proposed Construction
Fewer than about
0.005 visible shorttype defects per
square centimeter of
the electrochromic
window
Fewer than about 0.005 defectivepoints or defective-areas per
square centimeter of the
electrochromic window that
manifest as visually discernible
anomalies in normal use caused by
localized electronically conductive
pathways spanning the ion
conducting layer
Fewer than about 0.005 visible shorttype defects per square centimeter of
the electrochromic window, where a
“visible short-type defect” is a defect
of at least about 100 micrometers in
size that produces a noticeable light
point when the device is in the
colored states, and that is caused by
an electric short
6
7
8
9
10
United States District Court
Northern District of California
11
12
13
The first aspect of the parties’ dispute relates to whether the “visible defects” discussed in
14
Claim 12 must be more than about 100 micrometers, and whether they must be light points when
15
the device is in the colored state. For the same reasons discussed in the Court’s construction
16
immediately supra, the Court agrees that a visible defect must be at least about 100 micrometers,
17
but does not agree that they must be light points when the device is in the colored state.
18
The remaining dispute relates to whether the visible defects are “caused by localized
19
electronically conductive pathways spanning the ion conducting layer” or are merely “caused by
20
an electric short.” Again, SAGE draws its construction from a definition specifically adopted by
21
the patentee in the patent itself: “[a] short is a localized electronically conductive pathway
22
spanning the ion conducting layer.” 13:36-39. View contends that the patentee did “not clearly
23
set forth a definition that is different from the plain and ordinary meaning of ‘short,’” but does not
24
explain why that is the case. View Reply 8:18-19. In any case, View’s construction is no more
25
compelled by the intrinsic record than the specialized definition SAGE proposes, and therefore is
26
at least as plausible a depiction of the “plain and ordinary meaning” that a person of ordinary skill
27
in the art would read the patent as adopting. The Court construes “visible short-type defects” as
28
“defects caused by localized electronically conductive pathways spanning the ion conducting layer
19
1
that manifest as visually discernible anomalies of at least about 100 micrometers in size in normal
2
use.”
3
3.
4
5
“A plurality of control processors, each of the plurality of processors
including a memory, being coupled to a subset of the plurality of
chambers, and controlling processing in said subset of the plurality of
chambers” (Claim 1 of ‘851 Patent)
6
Disputed Claim Term
7
8
9
10
United States District Court
Northern District of California
11
A plurality of control processors,
each of the plurality of processors
including a memory, being coupled to
a subset of the plurality of chambers,
and controlling processing in said
subset of the plurality of
chambers
Leybold’s
Proposed Construction
View’s
Proposed Construction
A plurality of control
No construction
processors, each of the
necessary, plain and
plurality of processors contains ordinary meaning
a memory, is coupled to less
than all of the chambers, and
the processors control all
processes for the chambers
12
13
14
The parties have two disputes as to claim scope: first, as to the meaning of “subset,” and
second, as to whether the processors “control all processes” for the chambers.
15
a.
16
“subset of the plurality of chambers”
Leybold proposes that the Court construe the term “subset of the plurality of chambers” to
17
mean “less than all of the chambers.” View argues that no construction is necessary, but in its
18
opening brief it suggests that according to its view of claim scope, “the control processors are
19
coupled to one or more chambers (i.e., a “subset”).” View Opening Br. 22:8-9. Therefore, it
20
appears that, at least after briefing, the parties had an O2 Micro7 dispute over whether a “subset”
21
must be “less than all” of the chambers, or whether it could be all of the chambers.
22
The configuration describes an embodiment in which each processor controls processes for
23
four of the twenty total chambers. ’851 Patent at 10:11-13, 10:22-25. This does not appear to be a
24
mere illustration of the way the invention could be implemented; it appears to be an essential
25
component of the claimed invention. The configuration describes one of the main innovations of
26
27
28
7
O2 Micro International v. Beyond Innovation Technology Co., 521 F.3d 1351 (Fed. Cir.
2008). In O2 Micro, the Federal Circuit held that “[w]hen the parties present a fundamental
dispute regarding the scope of a claim term, it is the court’s duty to resolve it.” Id. at 1362.
20
1
the invention as the ability to have each processor “dedicated to control a particular portion of the
2
machine, rather than a particular subsystem of the machine.” Id. at 3:27-31 (emphasis added).
3
This innovation is the ability to be able to add a chamber to the system without having to
4
reconfigure all of the processors throughout the system. See id. at 2:47-57, 11:6-10, 31:67-32:6.
5
In other words, a new chamber easily “swaps in,” since any disruption can be contained within the
6
specific subset of chambers that a given processor controls. Construing the “subset” to potentially
7
include all of the chambers would be inconsistent with the purpose of the invention. It would also
8
be contrary to principles of claim construction, since it would “render the disputed claim language
9
mere surplusage.” Texas Instruments Inc. v. U.S. Int’l Trade Comm’n, 988 F.2d 1165, 1171 (Fed.
Cir. 1993). There would be no need to include the term “subset” if it meant any number of
11
United States District Court
Northern District of California
10
chambers, since that meaning is captured just as well if the claim were written as “being coupled
12
to the chambers.”
13
View did not address this aspect of the construction at all in its Reply Brief, and submitted
14
at oral argument that they also agree that the term means “less than all.” Transcript, 96:16-20.
15
The Court construes “subset of the plurality of the chambers” as “less than all of the chambers.”
16
17
18
19
20
21
22
23
24
25
26
27
b.
“controlling processing in said subset of the plurality of
chambers”
The primary dispute as to claim scope is whether the processors control “all processes for
the chambers,” as Leybold contends.
The intended effect of Leybold’s construction is not entirely clear from its chosen
language, and it is similarly not clear from the briefing which processors Leybold contends must
control all processes for which chambers. Leybold maintains in its brief that its construction is not
meant to preclude the possibility that “a chamber has functions controlled by more than one
processor.” 20:3-5. But later, Leybold states that View is “incorrect[]” to conclude that the Patent
“allows for the possibility of a given chamber having functions controlled by more than one
processor.” 25:12-14. The Court takes Leybold to argue that “the processors coupled to the
subsets of chambers, collectively, control all processes in those chambers,” since that it is the more
dominant theme in its brief. 20:5-7.
28
21
1
The term “all” does not appear in the claim language. Leybold argues that since the claim
2
language refers to “each of the plurality of processors . . . controlling processing in said subset of
3
the plurality of chambers,” it therefore follows that the processors collectively control all of the
4
processing in the plurality of chambers. This is not a necessary deduction from this language, and
5
the Court is not free to add a new limitation – “the processors control all processes” – that the
6
patentee declined to place within the language of the claims. Moreover, in dependent claim 2, the
7
patentee did use the term “all” to specify that a given plurality of processors communicates with
8
all processors, making it even more improper to read the “all” limitation into claim 1.
Leybold also relies on language from the configuration, which describes Figure 5 by
10
stating that “process control . . . [is] handled by one of four processors, B, C, D, or E.” Id. at
11
United States District Court
Northern District of California
9
10:11-13. This establishes only that the four processors handle process control, not that all
12
processes are necessarily controlled by those processors. But even if the language were read as
13
Leybold suggests, this phrase is a description of a specific embodiment. Leybold does not
14
persuasively explain why the claim scope should be limited to that embodiment.8
c.
15
Conclusion
The Court construes “subset of the plurality of the chambers” as “less than all of the
16
17
chambers.” Otherwise, the Court agrees with View’s interpretation of claim scope and finds that
18
the terms within this phrase need no further construction.
19
///
20
21
22
23
24
25
26
27
8
Leybold quotes the undersigned as having noted that “it is . . . ‘entirely appropriate for a court,
when conducting claim construction, to rely heavily on the written description for guidance as to
the meaning of claims.’” Symantec Corp. v. Acronis, Inc., No. 12-cv-05331-JST, 2014 WL
230023, at *2 (N.D. Cal. Jan. 21, 2014) (quoting Phillips, 415 F.3d at 1315). The next line of the
Court’s order in that case is “while the specification may describe a preferred embodiment, the
claims are not necessarily limited only to that embodiment.” Id. For the first time at oral
argument, Leybold cited Verizon Servs. Corp. v. Vonage Holdings Corp., which held that “when a
patent thus describes the features of the ‘present invention’ as a whole, this description limits the
scope of the invention.” 503 F.3d 1295, 1308 (Fed. Cir. 2007) (quoting Honeywell Int’l, Inc. v.
ITT Indus., 452 F.3d 1312, 1318–19 (Fed. Cir. 2006)) (emphasis added by the Court). The
specification of the ‘851 Patent does use the language “present invention.” View did not have an
opportunity to distinguish Verizon, but in any case the Court is not convinced that the
specification compels Leybold’s construction, even were it limiting.
28
22
4.
1
2
“Each of said plurality of processors controls a portion of said
subsystems as the plurality of substrates are processed” (Claim 1 of
‘851 Patent)
3
Disputed Claim Term
4
5
6
7
“Each of said plurality of processors
controls a portion of said
subsystems as the plurality of
substrates are processed”
8
9
10
United States District Court
Northern District of California
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
Leybold’s
Proposed Construction
Each of the plurality of
processors controls the part
of the pumping, transport,
heating, and sputtering gas
control subsystems which
pertains to its chambers
View’s
Proposed Construction
No construction
necessary, plain and
ordinary meaning
This claim dispute is substantially similar to the previous one. Again, Leybold proposes
that the Court construe the term to contain an exhaustive requirement; this time, one that requires
that each plurality of processors controls the subsystems that pertains to its chambers.
View maintains that its construction is compelled by the claim language. Where claim 1 at
32:41-43 refers to the fact that “each of said plurality of processors controls a portion of said
subsystems,” it is referring to the “subsystems” described at 32:38-40. Leybold argues that since
the claim language states that “each” processor controls a portion of the plural “subsystems,” each
of the processors must control a part of multiple subsystems, and that it must be the part of the
subsystems that pertain to the processor’s designated chamber. But it seems more plausible that
where the claim language states that the plurality of processors controls a portion of said
subsystems, this indicates only that each processor must control a portion of the subsystems en
toto, not that every processor must control every subsystem. The claim language encompasses
situations in which a specific processor controls one or more of the many subsystems, as well as
situations in which a specific processor controls specific local parts of all of the subsystems.
Leybold’s argument from the claim language does not compel the Court to add a limitation on the
language that does not appear in the words of the claim.
Leybold’s other arguments for this construction, are, like those discussed supra, requests
that the Court limit the claim terms to a specific embodiment. The Court will adopt View’s
construction.
28
23
1
IV.
CONCLUSION
2
The Court, for the foregoing reasons, construes the terms as identified herein.
3
IT IS SO ORDERED.
4
5
6
Dated: April 7, 2014
______________________________________
JON S. TIGAR
United States District Judge
7
8
9
10
United States District Court
Northern District of California
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
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