Semicaps PTE Ltd v. Hamamatsu Corporation et al

Filing 100

Claim Construction Order. Signed by Magistrate Judge Donna M. Ryu on 4/23/2020. (dmrlc1, COURT STAFF) (Filed on 4/23/2020)

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2
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UNITED STATES D
D
DISTRICT C
COURT

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NORTHER DISTRIC OF CALI
RN
CT
IFORNIA

6
7

SE
EMICAPS PTE LTD,
P

8

Plaintiff,
CLAIM CO
ONSTRUCT
TION ORD
DER

v.

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10

HAMAMATS CORPOR
H
SU
RATION, et al.,
t

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United States District Court
Northern District of California

Case No. 17-cv-03440-DMR

Defendants
s.
Plaintif SEMICAP Pte Ltd. (“SEMICAP S”) filed this patent case against Defendants
ff
PS
e

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13

Ha
amamatsu Co
orporation, Hamamatsu Photonics K
H
P
K.K., and Pho
otonics Man
nagement Co
orp.

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(co
ollectively, “Hamamatsu
“
u”). SEMICA alleges that Hamam
APS
matsu infring several c
ges
claims of

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U.S Patent No 7,623,982 (the “‘982 patent”), whi relates to testing of e
S.
o.
p
ich
o
electronic cir
rcuits using

16

a la
aser. The pa
arties dispute the constru
e
uction of thre terms. Th order foll
ee
his
lows briefin a
ng,

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tec
chnology tuto
orial, and a claim constru
c
uction hearin pursuant to Markman v. Westview
ng
n
w

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Ins
struments, In 517 U.S. 370 (1996).
nc.,
.

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I.

BACKGROUND

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A.

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SEMIC
CAPS is the owner by ass
o
signment of the ‘982 pat titled, “M
f
tent
Method of T
Testing an

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Ele
ectronic Circ and App
cuit
paratus There
eof.” Comp ¶ 11, Ex. A (‘982 Pate
pl.
ent). The ‘982 patent

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wa issued by the United States Patent and Tradem
as
t
S
mark Office (
(“USPTO”) on November 24, 2009.

24

It “relates gene
“
erally to sem
miconductor processing, a more pa
p
and
articularly to a method of testing an
f

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ele
ectronic circu as well as to a respec
uit,
a
ctive apparat
tus,” and is d
directed tow
ward determin
ning the

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loc
cation of defe on a sem
fects
miconductor circuit. See ‘982 Paten 1:6-8.
r
e
nt

27
28

The ‘982 Pa
atent

The ‘98 patent des
82
scribes the problem it se
p
eeks to solve It explains that “conve
e.
s
entional
laser induced te
echniques ge
enerally invo using a scanned las beam, typ
olve
ser
pically in the infrared
e

1

frequency range, to stimulate integrated circuit failures which are sensitive to thermal or carrier

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stimulations.” ‘982 Patent at 1:16-19. These techniques include Optical Beam Induced

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Resistance Change (“OBIRCH”), Thermal Induced Voltage Alteration (“TIVA”), and Differential

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Resistance Measurement (“DReM”). Id. at 1:22-27. However, advances in integrated circuit

5

technology, including “the use of more metallization layers and new low k inter-layer dielectric

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materials with lower thermal conductivity,” have reduced the laser coupling efficiency, which in

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turn reduces the detection sensitivity. Id. at 1:28-33. The inventors explain that “conventional

8

approaches” to improve the detection sensitivity of laser induced techniques have not been entirely

9

successful. For example, increasing the power of the laser beam used “in order to compensate for
the reduced laser coupling efficiency . . . may not be desirable,” because “there may be potential

11
United States District Court
Northern District of California

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laser induced damage on the integrated circuit under test when the power of the laser beam used is

12

too high.” Id. at 1:38-49. Another approach is to use “a pulsed laser in conjunction with a lock-in

13

amplifier,” which increases detection sensitivity. Id. at 1:50-52. However, lock-in amplifiers are

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“not used in a real-time integrated circuit testing environment” because “accurate calibration and

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fine control of the lock-in amplifier parameters is typically difficult to achieve in practice.” Id. at

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1:62-67.

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According to the specification, the ‘982 patent attempts to increase detection sensitivity in

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a laser-based fault detection system without increasing the power of the laser beam or using lock-

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in amplifiers. ‘982 Patent at 10:19-46. “The method comprises radiating a laser beam onto the

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electronic circuit, and determining a plurality of samples of a response signal output by the

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electronic circuit during the period when the laser beam is radiated.” ‘982 Patent, Abstract. A

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signal processor “process[es] the sample measurements of the response signal of the electronic

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circuit under test” by “accumulat[ing] the plurality of samples to generate a value, and then

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generat[ing] a test result based on the value generated.” ‘982 Patent at 3:65-4:2. Based on the

25

generated value, a fault on the electronic circuit may appear as a bright spot, bright line, or bright

26

area at a pixel location corresponding to the location of the fault on the electronic circuit. Id. at

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4:16-24, 4:34-38, 5:12-16.

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The ‘982 patent includes 25 claims. SEMICAPS alleges that Hamamatsu infringes at least
2

1

cla
aims 4-8, 17, and 21-25. Claims 4-8 and 17 perta to a meth of testin an electro circuit,
ain
hod
ng
onic

2

wh claims 21-25 describ a related apparatus.
hile
be
a

3

B.

4

SEMIC
CAPS filed th lawsuit on June 14, 2
his
o
2017. On Se
eptember 19, 2017, the c
court granted
d

Procedural History
l

5

Ha
amamatsu’s unopposed motion to sta the case p
u
m
ay
pending inter partes revie (“IPR”) p
r
ew
proceedings

6

init
tiated by Ha
amamatsu ch
hallenging th validity of the ‘982 pa
he
f
atent. [Dock No. 28.] The case
ket

7

res
sumed follow
wing the issu
uance of two Final Writte Decisions by the Pate Trial and Appeal
en
s
ent
d

8

Board (“PTAB in the IPR proceeding [Docket No. 53-1 (M
B”)
R
gs.
Marton Decl., June 6, 2019) ¶¶ 4, 5,

9

Exs. B (Final Written Deci
W
ision in IPR2
2017-02110) C (Final W
),
Written Decision in IPR2
2017-

10

021
112).]
Hamam
matsu then moved to dism the com
m
miss
mplaint, argu
uing that the asserted clai are
ims

United States District Court
Northern District of California

11
12

inv
valid because they claim patent-ineligible subjec matter. Th court deni the motio on
e
ct
he
ied
on

13

Au
ugust 16, 201 See SEM
19.
MICAPS Pte Ltd. v. Ham
mamatsu Corp 393 F. Su
rp.,
upp. 3d 802 (N.D. Cal.

14

201 reconsid
19),
deration den
nied, No. 17-CV-03440- DMR, 2019 WL 572256 (N.D. Cal Nov. 5,
9
68
l.

15

201
19).

16

C.

17

The par
rties dispute the proper construction of three term “value,” “another va
c
ms:
”
alue,” and

Disputed Terms
T

18

“te result.”1 SEMICAPS asserts that these terms should be g
est
given their pl and ordi
lain
inary

19

me
eaning. Ham
mamatsu disa
agrees and pr
roposes cons
structions fo each of the
or
em. SEMIC
CAPS

20

pro
oposes its ow constructi
wn
ions in the event the cou concludes that constru
e
urt
s
ruction is nec
cessary.

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II.

LEGAL STANDA
L
ARDS

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“The pu
urpose of cla construc
aim
ction is to de
etermine the meaning an scope of th patent
nd
he

23

cla
aims asserted to be infrin
d
nged.” O2 Micro Int’l Lt v. Beyond Innovation Tech. Co., 521 F.3d
M
td.
d
n

24

135 1360 (Fe Cir. 2008 (quotation omitted). C
51,
ed.
8)
n
Claim constr
ruction is a q
question of law to be

25

det
termined by the court. Markman, 51 U.S. at 38 In constr
M
17
87.
ruing disputed terms, the court first
e

26
27
28

1

The parties or
T
riginally ask the court to construe three additional terms: “
ked
t
“control system,”
“m
measuring cir
rcuit,” and “s
signal proces
ssor.” They withdrew th
y
hose terms shortly befor the claim
re
con
nstruction he
earing. [See Docket No. 83.]
.
3

examines the claims themselves, because “[t]he claims define the scope of the right to exclude; the

2

claim construction inquiry, therefore, begins and ends in all cases with the actual words of the

3

claim.” Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998).

4

“[T]he words of a claim are generally given their ordinary and customary meaning.” Phillips v.

5

AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (quotation and citation omitted). “[T]he

6

ordinary and customary meaning of a claim term is the meaning that the terms would have to a

7

person of ordinary skill in the art in question at the time of the invention,” which is the “effective

8

filing date of the patent application.” Id. at 1313. “That starting point is based on the well-settled

9

understanding that inventors are typically persons skilled in the field of the invention and that

10

patents are addressed to and intended to be read by others of skill in the pertinent art.” Id. “In

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United States District Court
Northern District of California

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some cases, the ordinary meaning of claim language as understood by a person of skill in the art

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may be readily apparent even to lay judges.” Id. at 1314. In such instances, claim construction

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may “involve[ ] little more than the application of the widely accepted meaning of commonly

14

understood words.” Id.

15

In other cases, the meaning of a claim term to a person skilled in the art is not

16

“immediately apparent.” Id. In those cases, the court must look to “sources available to the public

17

that show what a person of skill in the art would have understood disputed claim language to

18

mean.” Id. (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111,

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1116 (Fed. Cir. 2004)). The words in a claim are to be interpreted in light of the intrinsic evidence

20

of record, which includes the words of the claims, the specification, and the patent’s prosecution

21

history, if it is in evidence. Id. at 1314-17. “[T]he prosecution history . . . includes the

22

reexamination history.” Sonix Tech. Co., Ltd. v. Publ’ns Int’l, 844 F.3d 1370, 1379 (Fed. Cir.

23

2017) (citing Info-Hold, Inc. v. Applied Media Techs. Corp., 783 F.3d 1262, 1266 (Fed. Cir.

24

2015)) (discussing reexamination history, including patentee’s expert’s opinion, as part of intrinsic

25

evidence). The Federal Circuit has instructed that “the specification ‘is always highly relevant to

26

the claim construction analysis” and “[u]sually . . . dispositive; it is the single best guide to the

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meaning of a disputed term.” Phillips, 415 F.3d at 1315 (quotation omitted).

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In most situations, analysis of intrinsic evidence alone will resolve claim construction
4

1

dis
sputes. Vitro
onics Corp. v. Conceptro
v
onic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996). “In such
0

2

circ
cumstances, it is improp to rely on extrinsic ev
per
n
vidence.” Id However, if an analys of the
d.
,
sis

3

intr
rinsic eviden fails to resolve ambiguity in a di
nce
isputed claim term, cour may rely o “extrinsic
m
rts
on
c

4

evi
idence conce
erning releva scientific principles, the meaning of technica terms, and the state of
ant
c
g
al
d
f

5

the art.” Phillip 415 F.3d at 1314 (qu
e
ips,
d
uotation and citation om
mitted); Vitron
nics, 90 F.3d at 1583.
d

6

Ext
trinsic evide
ence “consist of all evid
ts
dence externa to the pate and pros
al
ent
secution histo
ory,

7

inc
cluding expert and inven testimon dictionari and learn treatises Phillips, 415 F.3d at
ntor
ny,
ies,
ned
s.”

8

131 (quotation and citatio omitted). However, “ is entirely appropriate . . . for a co to
17
n
on
“it
y
e
ourt

9

con
nsult trustwo
orthy extrins evidence to ensure tha the claim construction it is tendin to from
sic
at
n
ng
the patent file is not incons
e
i
sistent with clearly expre
c
essed, plainly apposite, a widely h
and
held

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United States District Court
Northern District of California

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und
derstandings in the pertin technic field.” Pi
s
nent
cal
itney Bowes, Inc. v. Hew
,
wlett-Packar Co., 182
rd

12

F.3 1298, 130 (Fed. Cir. 1999). All extrinsic evi
3d
09
idence shoul be evalua in light o the
ld
ated
of

13

intr
rinsic eviden
nce. Phillips 415 F.3d at 1319.
s,
a

14

III
I.

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CONST
TRUCTION OF DISPU
N
UTED TER
RMS
A. “va
alue” and “a
another valu
ue”

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17
18
19
20
21
22
23
24
25
26
27
28

SEMICAP
PS’s Propose Construc
ed
ction
“va
alue”: plain and ordinary meaning. If
y
con
nstruction is necessary, “a magnitude,
“
qua
antity or num
mber”
“an
nother value”: plain and ordinary meaning.
d
m
If construction is necessary “another
c
y,
ma
agnitude, qua
antity or num
mber”

Hamama
atsu’s Propo
osed Constr
ruction
“ representa
“a
ation of the r
response sign output
nal
b the electro circuit d
by
onic
during the pe
eriod
w
when the lase beam is ra
er
adiated”
“ representa
“a
ation of the r
response sign output
nal
b the electro circuit d
by
onic
during the pe
eriod
w
when the lase beam is no radiated”
er
ot

Both pa
arties cite to claim 21 as a representa
ative exampl of how the disputed te “value”
le
e
erm
is used in the patent. Pl.’s Br. 5; Defs.’ Br. 5. Clai 21 is an i
u
p
im
independent claim and d
t
describes an
app
paratus. It st
tates:
21. An appa
aratus, comp
prising:
a laser beam source, wh
m
herein the la
aser beam source radiat a laser
tes
beam onto the electronic circuit,
t
a control sy
ystem operab to direct t laser bea source to dwell on
ble
the
am
o
a location on the electro circuit,
onic
5

a measuring circuit, wherein the measuring circuit determines a
plurality of samples of a response signal output by the electronic
circuit during the period when the laser beam is radiated, and

1
2

a signal processor, wherein the signal processor accumulates the
plurality of samples to generate a value, and generates a test result
based on the value.

3
4
5
6
7
8
9

‘982 Patent at 12:19-31 (emphasis added).
The term “another value” appears in claim 17, which depends from claim 1. Claim 1
states:
1. A method of testing an electronic circuit, comprising:
radiating a laser beam onto the electronic circuit,
determining a plurality of samples of a response signal output by the
electronic circuit during the period when the laser beam is radiated,

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United States District Court
Northern District of California

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accumulating the plurality of samples to generate a value, and

12

generating a test result based on the value.

13
14
15
16
17
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‘982 Patent at 10:59-67. Claim 17 states:
17. The method of claim 1, wherein another plurality of samples of
another response signal output by the electronic circuit during a
period when the laser beam is not radiated is determined, the other
plurality of samples is accumulated to generate another value and
the test result is generated based on the value and the other value.
‘982 Patent at 12:4-9 (emphasis added).
SEMICAPS argues that the terms “value” and “another value” do not require construction

19

because they are “not ambiguous or uncommon, and [are] readily understandable to the jury.”

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Pl.’s Br. 14. In the alternative, it proposes that “value” should be construed as “a magnitude,

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quantity or number.” In support, it cites the Institute of Electrical and Electronics Engineers, Inc.

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(“IEEE”) Standard Dictionary of Electrical and Electronics Terms, which defines “value” as “the

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quantitative measure of a signal or variable.” [Docket No. 70 (Marton Decl. Oct. 14, 2019) ¶ 4,

24

Ex. B.] It also cites the 2001 Websters New World Dictionary, which defines “value” in the

25

context of math as “the quantity or amount for which a symbol stands.” Id. at ¶ 5, Ex. C.

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SEMICAPS asks the court to construe “another value” as “another magnitude, quantity or

27

number.” According to SEMICAPS, these definitions are consistent with how the terms are used

28

throughout the ‘982 patent.
6

1

Hamamatsu argues that the court should reject SEMICAPS’s reliance on dictionary

2

definitions, noting that the Federal Circuit has cautioned courts not to elevate dictionaries above

3

the specification in construing disputed terms. See Phillips, 415 F.3d at 1321-22 (courts may use

4

dictionaries “to assist in understanding the commonly understood meaning of words,” but “heavy

5

reliance on the dictionary divorced from the intrinsic evidence risks transforming the meaning of

6

the claim term to the artisan into the meaning of the term in the abstract, out of its particular

7

context, which is the specification.”). It proposes that “value” should be construed to mean “a

8

representation of the response signal output by the electronic circuit during the period when the

9

laser beam is radiated.” Correspondingly, Hamamatsu argues that “another value” should be
construed as “a representation of the response signal output by the electronic circuit during the

11
United States District Court
Northern District of California

10

period when the laser beam is not radiated.” According to Hamamatsu, these constructions are

12

proper given the claims and specification of the ‘982 patent. The court will first address the term

13

“value” before turning to “another value.”

14

Hamamatsu argues that a person of ordinary skill in the art would understand “value” as

15

used in the ‘982 patent to mean “a representation of the response signal output by the electronic

16

circuit during the period when the laser beam is radiated.” Hamamatsu rests its proposed

17

definition on the language of claim 21. Claim 21 describes an apparatus that includes a measuring

18

circuit that “determines a plurality of samples of a response signal output by the electronic circuit

19

during the period when the laser beam is radiated,” and a signal processor that “accumulates the

20

plurality of samples to generate a value, and generates a test result based on the value.” ‘982

21

patent at 12: 24-31. Based on the language of claim 21, Hamamatsu asserts that the “value” must

22

be a representation of the response signal when the laser beam is radiated. Def.’s Br. 6. It argues

23

that the specification confirms this construction because it “repeatedly and consistently” describes

24

“value” in this manner, citing GPNE Corp. v. Apple Inc., 830 F.3d 1365, 1370 (Fed. Cir. 2016).

25

Def.’s Br. 7.

26

In GPNE, the Federal Circuit considered the claim term “node” as used in a patent for a

27

two-way paging system. The term “node” appeared only in the claims and the abstract. It did not

28

appear in the specification, which “exclusively refer[red] to the devices as ‘pagers’ or ‘paging
7

1

units.’” 830 F.3d at 1368. The district court construed the term “node” as a “pager;” applying that

2

construction, a jury found no infringement. Id. at 1369. The Federal Circuit affirmed the

3

construction, noting “that when a patent ‘repeatedly and consistently’ characterizes a claim term in

4

a particular way, it is proper to construe the claim term in accordance with that characterization.”

5

Id. at 1370. “[T]he words ‘pager’ and ‘pager units’ appear[ed] in the specification over 200 times,

6

and, apart from the Abstract, the specification repeatedly and exclusively use[d] these words to

7

refer to the devices in the patented system.” Id. The court found that the prosecution history

8

further supported the construction of “node” as a type of “pager,” since the inventor “consistently

9

and exclusively describe[d] the invention as a system of pagers.” Id. at 1371.

10

Here, Hamamatsu relies on GPNE in asserting that the ‘982 patent’s specification

United States District Court
Northern District of California

11

“repeatedly and consistently” describes the “value” as “a representation of the response signal

12

when the laser beam is radiating or on.” It cites the following examples: the specification

13

discusses the diagram at Figure 2 and states, “At 203 of FIG. 2, a plurality of samples of the

14

response signal output by the electronic circuit is determined during the period when the laser

15

beam is radiated. . . . At 205 of FIG. 2, the plurality of samples is accumulated to generate a

16

value.” ‘982 patent at 4:58-64. Next, in discussing Figure 6, the specification defines “tON” as

17

the “period when the laser beam is radiating” and explains that during tON, “the converted sample

18

values are accumulated in order to generate a value.” Id. at 8:20-22. The specification also

19

provides a specific equation for the “value generated” for Figure 6, where the input to the equation

20

is “the plurality of samples [of the response signal] obtained during the radiating period.” Id. at

21

9:12-15 (“It can be seen from the above equation that the value generated (from the plurality of

22

samples obtained during the radiating period, tON(603)) is represented by the accumulation of the

23

term S(xi, yi)(t)*δ[t-(TPD+nmTS)].”).

24

Hamamatsu’s position is not persuasive. The patent demonstrates that Hamamatsu

25

selected certain examples to support its preferred construction while ignoring others that are

26

inconsistent with its construction. Under Hamamatsu’s construction, “value” refers solely to

27

response signals, and is further limited to response signals that are obtained when the laser is on.

28

However, the patent uses “value” to connote things other than response signals. For example, the
8

1

specification refers to an output voltage “value”: “[i]n this regard, the output voltage Vo for these

2

interface circuits may have a positive value or a negative value.” ’982 patent at 6:1-2; see also id.

3

at 5:59-61 (“The output voltage Vo has a value which [is] always greater than or equal to zero, i.e.,

4

a direct-current (d.c.) voltage.”). Elsewhere, the specification uses “value” to refer to the values of

5

pixels of the image display: “[i[n one embodiment, the value generated is a pixel value (e.g., the

6

brightness of the pixel) of a digital image,” id. at 5:7-9, and “[i]n such an embodiment, each

7

sample value is converted to a value representing the brightness at the corresponding pixel

8

location on the digital image,” id. at 8:17-19. Similarly, claim 15 uses the term “value” in a

9

manner consistent with the foregoing; it refers to “the value generated” as “a pixel value of a

10

United States District Court
Northern District of California

11

digital image.” Id. at 11:44-45.
The specification also uses the term “value” in connection with the response signal

12

regardless of whether the laser beam is on, or radiating: “Further, as shown in FIG. 5(b), during

13

the period when the laser beam is radiating (or radiating period), the response signal takes a

14

positive value only after a delay from the start of the radiating period. Similarly, during the period

15

when the laser beam is not radiating (or non-radiating period), the response signal takes a

16

negative value only after a delay from the start of the non-radiating period.” Id. at 6:34-41

17

(emphasis added). Similarly, the specification refers to voltage or current sample “values” without

18

regard to whether the laser beam is radiating: “In this illustrative example, with the frequency of

19

sampling being selected as about 20 MHz and the frequency of pulsing being selected as about 5

20

KHz, there would be about 4000 sample values obtained, with about 2000 sample values during

21

the radiating period and about 2000 sample values during the non-radiating period.” Id. at 8:9-14

22

(discussing Figure 6).

23

As these examples demonstrate, contrary to Hamamatsu’s position, the patent uses the

24

word “value” throughout the specification without limiting it to “a representation of the response

25

signal” and without regard to whether the laser beam is radiating. Nor does Hamamatsu point to

26

anything in the prosecution history to support its proposed construction. See, e.g., GPNE, 830

27

F.3d at 1371 (finding that inventor’s declaration “consistently and exclusively describ[ing] the

28

invention as a system of pagers” supported construing “note” as a type of “pager”). Essentially,
9

1

Hamamatsu seeks to import a limitation from claim 21—“wherein the measuring circuit

2

determines a plurality of samples of a response signal output by the electronic circuit during the

3

period when the laser beam is radiated”—into the meaning of “value.” That approach is

4

unsupported and inconsistent with the Federal Circuit’s guidance that “the person of ordinary skill

5

in the art is deemed to read the claim term not only in the context of the particular claim in which

6

the disputed term appears, but in the context of the entire patent, including the specification.”

7

Phillips, 415 F.3d at 1313 (emphasis added); see also Markman v. Westview Instruments, Inc., 52

8

F.3d 967, 979 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (“Claims must be read in view of the

9

specification, of which they are a part.”).

10

For the same reasons, Hamamatsu’s proposed construction of “another value” as “a

United States District Court
Northern District of California

11

representation of the response signal output by the electronic circuit during the period when the

12

laser beam is not radiated” is inconsistent with the ‘982 patent’s specification. According to

13

Hamamatsu, the language of claim 17 supports the conclusion that “another value” is generated

14

from a plurality of samples taken when the laser beam is off, or not radiating. Notably, the only

15

support it provides for this construction are the portions of the specification describing the

16

embodiment captured by claim 17: “Further, according to one embodiment of the invention,

17

another plurality of samples of another response signal output by the electronic circuit during a

18

period when the laser beam is not radiated is determined. The other plurality of samples is then

19

accumulated to generate another value, and the test result is generated based on the value and the

20

other value.” ‘982 patent at 8:24-33 (discussing Figure 6); see also id. at 9:16-19 (“The other

21

value generated (from the plurality of samples obtained during the non-radiating period, tOFF

22

(605)) is represented by the accumulation of the term S(xi, yi)(t)*δ[t-(TDT+TPD+nmTS)].”). As

23

with the term “value,” Hamamatsu asks the court to import the limitation of a specific claim—

24

here, claim 17—into the term “another value,” citing only the specification’s description of the

25

embodiment of claim 17 as support. As discussed at length above, the ‘982 patent differs from the

26

patent-in-suit in GPNE because it does not “repeatedly and consistently” characterize the term

27

“value” in the way that Hamamatsu asserts. Hamamatsu’s proposed corresponding construction of

28

“another value” suffers from the same flaws.
10

1

In sum, the court co
,
oncludes tha Hamamats
at
su’s proposed constructio for the c
ons
claim terms

2

“va
alue” and “an
nother value are unsupp
e”
ported. The court agree with SEM
e
es
MICAPS that the terms

3

“va
alue” and “an
nother value require no constructio and should be given th plain an ordinary
e”
o
on
heir
nd

4

me
eanings.

5

B.

“test result
t”

6
7
8
9
10

SEMICAP
PS’s Propose Construc
ed
ction
Pla and ordin
ain
nary meaning If constru
g.
uction is
nec
cessary, “det
termination from the test
ting of
an electronic ci
ircuit”

Hamama
atsu’s Propo
osed Constr
ruction
“
“determinatio of whethe the circuit is faulty”
on
er
t

The dis
sputed term “test result” appears in c
“
claim 21, wh disclose an apparat that
hich
es
tus

United States District Court
Northern District of California

11

inc
cludes “a signal processo wherein the signal pro
or,
ocessor accu
umulates the plurality of samples to
e
f

12

gen
nerate a valu and gener
ue,
rates a test result based on the value ‘982 Pat at 12:28
r
e.”
tent
8-31

13

(em
mphasis adde
ed).

14

SEMIC
CAPS argues that the cou need not construe the term “test r
s
urt
e
result” becau it is
use

15

rea
adily underst
tandable by a jury and is a common, unambiguou term. If t court det
s
us
the
termines that

16

con
nstruction is necessary, SEMICAPS proposes th it be cons
S
hat
strued to mea “determin
an
nation from

17

the testing of an electronic circuit.”
e
a

18

Hamam
matsu propos the follow
ses
wing constru
uction: “dete
ermination of whether th circuit is
f
he

19

fau
ulty.” In sup
pport, it contends that the ‘982 patent defines the term “test r
e
nt
e
result” to des
scribe a

20

pos
sitive or neg
gative “determ
mination of whether a ci
ircuit is fault and argu that the c
ty,”
ues
court should
d

21

ado that cons
opt
struction, citing Edwards Lifescience LLC v. Co Inc., 582 F.3d 1322, 1334 (Fed.
s
es
ook
2
,

22

Cir 2009).
r.

23

The Ed
dwards court affirmed the district cou
e
urt’s constru
uction of the term “malle
eable” in

24

fou related pat
ur
tents relating to intralum
g
minal grafts f treating a
for
aneurisms an occlusive diseases of
nd

25

the blood vesse without open surgery 582 F.3d a 1324, 133 The spec
e
els
o
y.
at
34.
cification sta that “the
ated
e

26

wir ‘are male
res
eable [sic] an may be bent into any desired shap ie [sic] th are not r
nd
pe,
hey
resilient to

27

any substantial extent so th they have to be physi
y
l
hat
e
ically expand into con
ded
ntact with the aorta rather
e

28

tha expanding by virtue of their own resilience.’” Id. at 1334 The court held that the use of the
an
g
o
r
”
4.
e
11

1

term “i.e.” in the specification “signal[ed] an intent to define the word to which it refer[red],

2

‘malleable,’ and that definition was not limited to the embodiment being discussed.” Id.

3

Accordingly, it concluded that “in the context of the specification, malleable wires and resilient

4

wires are mutually exclusive,” because “the specification define[d] ‘malleable’ to exclude any

5

substantial resilience, and that definition over[ode] any ordinary meaning of the word ‘malleable’

6

that might allow for substantial resilience.” Id.

7

Here, Hamamatsu asserts that the use of the term “i.e.” in the following excerpt from the

8

‘982 patent’s specification signals the patentee’s intent to define the term “test result” as a

9

“determination of whether a circuit is faulty”:

10

United States District Court
Northern District of California

11
12
13

If one or more bright spots, lines or areas appear on the digital
image of the electronic circuit generated, then the electronic circuit
has one or more faults, and thus, a negative test result is obtained
(i.e., the electronic circuit is faulty). If no bright spot, line or area
appears on the digital image of the electronic circuit, then the
electronic circuit does not have a fault and thus, a positive test result
is obtained (i.e., the electronic circuit is not faulty).

14

‘982 patent at 5:18-24 (emphasis added). Not so. To begin with, unlike the use of “i.e.” in

15

Edwards which signaled an intent to define a term for all embodiments of the invention, the use of

16

“i.e.” in the cited portion of the ‘982 patent’s specification does not define the term “test result”

17

for all purposes and embodiments. Instead, when read in full context, the “i.e.” relied upon by

18

Hamamatsu merely prefaces the explanation that follows and is limited to the particular

19

embodiment being described. Hamamatsu’s quoted language appears in the third paragraph of this

20

larger contextualized discussion:

21
22
23
24
25
26
27
28

The method may further include generating a digital image of the
electronic circuit using the value generated at the first location of the
electronic circuit. In one embodiment, the value generated is a pixel
value (e.g., the brightness of the pixel) of a digital image.
The digital image of the electronic circuit may then be analyzed,
using visual inspection, for example. According to one embodiment
of the invention, if there were a fault on the electronic circuit, the
fault at a location on the electronic circuit may appear as a bright
spot, a bright line, or a bright area on the corresponding pixel
location of the digital image of the electronic circuit.
If one or more bright spots, lines or areas appear on the digital
image of the electronic circuit generated, then the electronic circuit
has one or more faults, and thus, a negative test result is obtained
12

(i.e., the electronic circuit is faulty). If no bright spot, line or area
appears on the digital image of the electronic circuit, then the
electronic circuit does not have a fault and thus, a positive test result
is obtained (i.e., the electronic circuit is not faulty).

1
2
3

‘982 patent at 5:5-24.
Moreover, contrary to Hamamatsu’s construction, the “test result” in this embodiment does

4
5

not by itself indicate whether the circuit is faulty. The specification describes a separate step of

6

visual inspection and analysis of the test result (in this embodiment, examination and

7

interpretation of the brightness of pixels in a digital image) to determine whether the electronic

8

circuit is faulty: “[t]he digital image of the electronic circuit generated may then be analyzed,

9

using visual inspection, for example.” ‘982 Patent at 5:10-11. The separate step of analyzing the
image to determine whether the circuit is faulty is not required by claim 21, which describes “a

11
United States District Court
Northern District of California

10

signal processor, wherein the signal processor accumulates the plurality of samples to generate a

12

value, and generates a test result based on the value.” ‘982 Patent at 12:28-31. Hamamatsu does

13

not cite to anything in the specification or elsewhere that supports its construction that “test result”

14

includes the process of analyzing and determining whether a circuit is faulty.
In sum, Hamamatsu has not shown that the patentee used the signal “i.e.” to “set[ ] out a

15
16

definition and act[ed] as his [or her] own lexicographer” with respect to the term “test result.”

17

Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (listing

18

exceptions to the rule that words of a claim are given their ordinary and customary meaning as

19

understood by a person of ordinary skill in the relevant art). It also has not shown that the

20

patentee expressly or impliedly disavowed the full scope of that term in the specification or

21

prosecution. See id.; see also Trustees of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1364

22

(Fed. Cir. 2016) (a patentee may disclaim the scope of a claim term by implication). Accordingly,

23

the court declines to adopt Hamamatsu’s proposed construction of “test result.” The court

24

concludes that the term “test result” is readily understood by its plain and ordinary meaning and

25

no construction is necessary.

26

//

27

//

28
13

CONCLUSION
For the foregoing reasons, the court concludes that the terms “value,” “another value,” and

5
6

I

ER

10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
14

A

H

9

United States District Court
Northern District of California

ERED

______________________________________
yu
DonnannaRyu R
M. M.
ge DoMagistrate Judge
Jud
United States

RT

8

Dated: April 23, 2020

ORD
T IS SO

NO

7

IT IS SO ORDERED.

FO

4

UNIT
ED

S

3

RT
U
O

S DISTRICT
TE
C
TA

“test result” require no construction.

R NIA

2

IV.

LI

1

N

F
D IS T IC T O
R

C