CoorsTek, Inc. v. Reiber et al

Filing 205

MEMORANDUM ON CLAIM CONSTRUCTION. The court construes the disputed claims language as set forth in the Memorandum on Claim Construction, by Magistrate Judge Kathleen M. Tafoya on 05/02/2011. (wjc, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Magistrate Judge Kathleen M. Tafoya
Civil Action No. 08–cv–01133–KMT–CBS

COORSTEK, INC., a Delaware corporation,
Plaintiff,
v.
STEVEN F. REIBER, and
MARY L. REIBER, individuals,
Defendants and Counterclaimants,
v.
COORSTEK, INC., a Delaware corporation,
Counterclaim Defendant.

MEMORANDUM ON CLAIM CONSTRUCTION

I.

Introduction

By way of its complaint, CoorsTek, Inc. (hereinafter “CoorsTek”) has sought a declaration
that four patents owned by Steven F. Reiber and Mary L. Reiber (hereinafter “the Reibers”)
namely United States Patent No. 6,354,479 (Doc. No. 182 Ex. A-1; Doc. No. 184 Ex. B [‘479
Patent]), United States Patent No. 6,651,864 (Doc. No. 182 Ex. A-2; Doc. No. 184 Ex. C [‘864
Patent]), United States Patent No. 6,935,548 (Doc. No. 182 Ex. A-3; Doc. No. 184 Ex. E [‘548
Patent]), and United States Patent No. 7,032,802 (Doc. No. 182 Ex. A-4; Doc. No. 184 Ex. D

[‘802 Patent]) (collectively “Patents-in-Suit”), have not been infringed by CoorsTek and
additionally are invalid and/or unenforceable. (See Doc. No. 63 [First Am. Compl.] at ¶¶ 7,
33-43.) The Reibers, in their counterclaims, assert that CoorsTek, by its manufacture, use, offer
for sale and sale of certain capillaries and bonding tools, infringe claims 19, 23, 32, 46-49 of the
‘479 Patent; claims 1 and 2 of the ‘864 Patent; and claim 1 of the ‘802 Patent.1 (Doc. No. 88
[April 2009 Joint Status Report].)
The ‘479 Patent, entitled Dissipative Ceramic Bonding Tip, was filed on February 25,
2000 and claims priority to Provisional Application No. 60/121,694, filed on February 25, 1999.
The ‘864 Patent, entitled Dissipative Ceramic Bonding Tip, was filed on December 31,
2001 as a continuation-in-part of the ‘479 Patent and claims priority to the ‘694 Application and
Provisional Application No. 60/288,203, filed on May 1, 2001.
The ‘548 Patent, entitled Dissipative Ceramic Bonding Tool Tip, was filed on August 27,
2003 as a continuation of the ‘864 Patent and claims priority to the ‘694 Application and the
‘203 Application.
The ‘802 Patent, entitled Bonding Tool with Resistance, was filed on September 15, 2004
as a continuation-in-part of the ‘548 Patent and claims priority to the ‘694 Application, the ‘203
Application and Provisional Application No. 60/503,267, filed on September 15, 2003.
In general terms, the Patents-In-Suit are directed to tips of bonding tools for use in a
bonding machine. Bonding machines, as used in this context, weld delicate gold wire to semi-

1

The Reibers do not assert any claim that the ‘548 Patent has been infringed by
CoorsTek.
2

conductor chips and other sensitive electronic components such as computer hard drives. A
bonding tool is a removable item which is inserted into the bonding machine, similar to the
relationship between a sewing machine and its needle. The Reibers contend that their inventions
enable the bonding process to occur on delicate electronic devices while avoiding damage caused
by electrostatic discharge (“ESD”). (Doc. No. 184 [Def.C.C.Br.] at 7.) The Patents-in-Suit assert
that such damage is avoided because their patented dissipative tool tips conduct electricity at a
rate sufficient to prevent electrostatic charge buildup, but are sufficiently resistant to electric
current so as to prevent damage to the device being bonded. (‘479 Patent, cls. 1, 9, 19, 30, 37, 45,
46, 48, and 50; ‘802 Patent, cl. 1.)
CoorsTek has manufactured, used, sold and offered to sell bonding tools and capillaries
made of certain materials identified as CZ1, CZ3, CZ6, and CZ8 (collectively “CZ materials”).
(Doc. No. 74 [Reply to First Am. Ans. and Countercl.] at ¶ 15.) The Reibers assert that the CZ
material in CoorsTek’s bonding tools and capillaries infringe certain claims of the Patents-in-Suit.
(Doc. No. 72 [First Am. Ans. and Countercl.] at ¶¶ 4, 15.) CoorsTek asserts, among other
allegations, that it reconstituted the process of making CZ1, CZ3, CZ6, and CZ8 materials in
2008 and that these newly reformulated products do not infringe the Patents-in-Suit. (Reply to
First Am. Ans. and Countercl at ¶ 15.)
Present before the court are the parties’ briefs on claim construction pursuant to Markman
v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir.1995) (en banc), aff’d 517 U.S. 370 (1996).
(See Doc. Nos. 182, 184, 191 and 192.) On February 15 and 16, 2011, the court heard scientific
tutorials presented by the parties’ experts and oral argument on claim construction.
3

II.

Legal Issues and Standards
A.

Person of Ordinary Skill in the Art

A court must construe claim terms from the perspective of a person of ordinary skill in the
art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)
(case initially arising from the District of Colorado). A “person of ordinary skill is a hypothetical
person who is presumed to know the relevant prior art.” In re GPAC Inc., 57 F.3d 1573, 1579
(Fed. Cir. 1995). Prior art includes previous inventions or products which are “reasonably
pertinent to the particular problem with which the inventor was involved.” Stratoflex, Inc. v.
Aeroquip Corp., 713 F.2d 1530, 1535 (Fed. Cir. 1983). “The person of ordinary skill is presumed
to have access to the entire art not because he unrealistically carries the entire art in his head but
because he knows how to find information in the art by researching accessible sources including
the patent literature.” In re Nilssen, Case No. 88-1139, 1988 WL 32917, at *2 (Fed. Cir. Apr. 14
1988) (unpublished). Factors to be considered in determining skill level include: “type of
problems encountered in art; prior art solutions to those problems; rapidity with which
innovations are made; sophistication of the technology; and educational level of active workers in
the field.” Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir.
1986) (citing Envtl. Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 696 (Fed. Cir. 1983)).
Moreover, the actual inventor’s skill is not determinative of the level of ordinary skill, because a
person of ordinary skill is “presumed to be one who thinks along the line of conventional wisdom
in the art and is not one who undertakes to innovate . . . .” Standard Oil Co. v. Am. Cyanamid
Co., 774 F.2d 448, 454 (Fed. Cir. 1985) (also noting that the concepts underling the Constitution
4

and the statutes that have created the patent system contemplate that inventors, as a class, possess
something which “sets them apart from workers of ordinary skill”).
The parties initially disagreed regarding the qualifications of a person of ordinary skill in
the art in this case. CoorsTek argued that “a person of ordinary skill in the art of the
semiconductor and integrated circuit industry would have a Bachelors [sic] degree of Science in
electrical engineering, solid state physics or materials science and 3-5 years of experience; a
Masters [sic] Degree of Science in electrical engineering, solid state physics or materials science
and 1-3 years of experience; or a high school education and 5 or more years of experience of
manufacturing or use of assembly equipment related to electrical overstress (EOS) and ESD
issues.” (Doc. No. 182 [Pl.C.C.Br.] at 8.)
The Reibers’ definition of a person of ordinary skill in the art has metamorphosed over
time. In response to CoorsTek’s Interrogatory No. 9, the Reibers stated that “the pertinent level
of ordinary skill in the art is that of a person with skill and knowledge, acquired by approximately
four years of formal or informal education, training, or experience, in the field of bonding
electronic devices susceptible to electrical overstress (EOS) damage caused by electrostatic
discharge (ESD) during bonding, such as integrated circuits and disk drive components.” (Doc.
No. 191 [Pl.Resp.C.C.Br.) Ex. O at 4.) However, in his report submitted in support of the
Reibers’ proposed claim constructions, the Reibers’ expert, Dr. Leo G. Henry, opined that “one
skilled in the field, during the relevant periods that the various Patents-in-Suit were filed, would
generally hold a Ph.D. [sic] in Material Science and Engineering, and 4-5 years experience in the
field of ESD.” (Doc. No. 185 [Henry Report] at ¶ 20.) Dr. Henry continued, “Alternatively, one
5

skilled in the field would have at least a Master’s degree in Physics, Materials Sciences and/or
electrical engineering and also have at least 5-7 years of experience in the field of ESD.” (Id.)
Finally, at the scientific tutorial, the Reibers’ expert also suggested that an individual whose
experience is specifically dealing with ESD issues might be a person with ordinary skill in the art,
but likely would need at least four years of experience in the specific field and need to become
ESD certified.
During the claim construction arguments, the Reibers stated that Dr. Henry’s testimony
demonstrated little difference between the parties’ proposed qualifications for a person of
ordinary skill in the art. They also suggested that any difference in the definition was immaterial
to the issues in the case as no evidence was presented to the court that a person with a Ph.D would
interpret the claim terms differently than a person with a high school education and field
experience.
While the court must consider claim construction from the perspective of a person of
ordinary skill in the art, Phillips, 415 F.3d at 1313, the actual determination regarding the level of
skill of a person of ordinary skill is a factual question. See Graham v. John Deere Co. of Kansas
City, 383 U.S. 1, 17 (1966); Custom Accessories, 807 F.2d at 958. Because a person of ordinary
skill is a hypothetical person, and because the Reibers have represented that they do not
significantly disagree with CoorsTek’s proposed definition for purposes of claim construction, the
court concludes that it is neither necessary nor advisable for the court to specifically define the
qualifications of a person of ordinary skill in the art at this stage. Moreover, the court’s analysis
and conclusions regarding construction of the claim terms presented would not differ whether the
6

court adopted the definition of a person of ordinary skill in the art proposed by CoorsTek or by
the Reibers or at some point on the spectrum between the two.
B.

Principals of Construction

Generally, a claim term is given its “ordinary and customary meaning,” that being the
definition given by “a person of ordinary skill in the art in question at the time of the invention.”
Phillips, 415 F.3d at 1313. The Federal Circuit has explained that the claim construction inquiry
begins by looking at the intrinsic evidence: the language of the claims, the specification, and the
prosecution history. Id. The claims themselves, together with the use of a term within the claim,
as well as other claims of the patent in question, both asserted and unasserted, and differences
between and among claims “provide substantial guidance as to the meaning of particular claim
terms.” Id. at 1314. It is appropriate for a court “to rely heavily” on the specification, including
the patentee’s written description, for guidance as to the meaning of the claims. Id. In fact,
the specification “is always highly relevant to the claim construction analysis.
Usually, it is dispositive; it is the single best guide to the meaning of a disputed
term.”
Id. at 1315 (quoting Vitrionics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.1996)).
The court “should also consider the patent’s prosecution history, if it is in evidence.”
Markman, 52 F.3d at 980. Though less useful and often lacking the clarity of the specification,
“the prosecution history can often inform the meaning of the claim language by demonstrating
how the inventor understood the invention and whether the inventor limited the invention in the
course of prosecution, making the claim’s scope narrower than it would otherwise be.” Phillips,
415 F.3d at 1317.
7

Apart from intrinsic evidence, the court is also authorized to rely on extrinsic evidence,
that being “evidence external to the patent and prosecution history, including expert and inventor
testimony, dictionaries, and learned treatises.” Id. (quotation omitted). Such evidence, while
“shed[ding] useful light on the relevant art,” is “less significant than the intrinsic record in
determining the legally operative meaning of claim language,” and “is unlikely to result in a
reliable interpretation of patent claim scope unless considered in the context of the intrinsic
evidence.” Id. at 1317, 1319.
If at all possible, a patent should be construed by the court so as to sustain its validity.
N. Am. Vaccine, Inc. v. Am. Cyanamid Co., 7 F.3d 1571, 1577 (Fed. Cir. 1993).
C.

Claims to be Construed
1.

Construction of Terms Not Contained in Infringement Claims

The parties disagree, in part, about which claim terms this court must construe. While
there is agreement that construction of terms contained in the Reibers’ claims of infringement
must be addressed, CoorsTek also argues that claims which are not part of the infringement
allegations should be construed pursuant to its declaratory judgment complaint. The parties agree
that the following terms submitted for construction appear in the infringement claims: “resistive
material,” “in the range of 105 to 1012 ohms,” “tip; bonding tip; bonding tool tip; tip of a bonding
tool,” “dissipative material; dissipative ceramic; electrically dissipative,” and “resistance low
enough to prevent a discharge of charge to a device and high enough to avoid current flow large
enough to damage said device being bonded.” The terms which do not appear in the Reibers’
infringement claims include: “high enough stiffness to resist bending when hot,” “high enough
8

abrasiveness so as to function for at least two uses,” “high enough abrasiveness so as to function
for at least 30, 000 uses,” “insulating core,” “conducting core,” “static discharge time,” and
“essentially smooth current.” CoorsTek argues that, because the court properly has jurisdiction
over CoorsTek’s declaratory judgment action, “[t]he Reibers’ tactical decision not to attempt to
enforce certain patent claims . . . does not divest this Court’s subject matter jurisdiction . . . vis a
vis other claims in the Patents-in-Suit or eliminate the need for the Court to construe disputed
terms contained in [currently] unasserted claims.” (Pl.Resp.C.C.Br. at 5.)
The Declaratory Judgment Act provides that, “[in] a case of actual controversy within its
jurisdiction, . . . any court of the United States . . . may declare the rights and other legal relations
of any interested party seeking such declaration, whether or not further relief is or could be
sought.” 28 U.S.C. § 2201(a). The Act’s case or controversy requirement for declaratory
judgment jurisdiction is the same case or controversy requirement found in Article III of the
Constitution. See Aetna Life Ins. Co. of Hartford, Conn. v. Haworth, 300 U.S. 227, 239-41
(1937). The Supreme Court has explained that “[b]asically, the question in each case is whether
the facts alleged, under all the circumstances, show that there is a substantial controversy,
between parties having adverse legal interests, of sufficient immediacy and reality to warrant the
issuance of a declaratory judgment.” MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127
(2007) (citation omitted).
Until recently, the Federal Circuit applied a two-prong test to determine the existence of
declaratory judgment authority in the patent context:

9

The first prong examined whether conduct by the patentee created a reasonable
apprehension of suit on the part of the declaratory judgment plaintiff. The second
prong focused on the declaratory judgment plaintiff’s conduct, and examined
whether there had been meaningful preparation to conduct potentially infringing
activity.
Cat Tech LLC v. TubeMaster, Inc., 528 F.3d 871, 879 (Fed. Cir. 2008). In 2007, the Supreme
Court rejected the first prong of this standard, holding that the existence of an Article III
controversy “must be determined based on all the circumstances, not merely on whether the
declaratory judgment plaintiff is under reasonable apprehension of suit.” Id. at 879-80 (citing
MedImmune, 549 U.S. at 126-37).
Today, declaratory judgment jurisdiction exists “where a patentee asserts rights under a
patent based on certain identified ongoing or planned activity of another party, and where that
party contends that it has the right to engage in the accused activity without license.”
Hewlett-Packard Co. v. Acceleron, LLC, 587 F.3d 1358, 1361 (Fed. Cir. 2009) (citing SanDisk
Corp. v. STMicroelectronics, Inc., 480 F.3d 1372, 1381 (Fed. Cir. 2007)). If a party has actually
been charged with infringement, “there is, necessarily, a case or controversy adequate to support
declaratory judgment jurisdiction.” Id. at 1362 (emphasis in original) (quotation omitted). In the
absence of an infringement action, “conduct that can be reasonably inferred as demonstrating
intent to enforce a patent can create declaratory judgment jurisdiction.” Id. at 1363. Moreover,
the second prong of the Federal Circuit’s declaratory judgment standard—whether there has been
meaningful preparation to conduct potentially infringing activity—“remains an important element
in the totality of circumstances which must be considered in determining whether a declaratory
judgment is appropriate.” Cat Tech, 528 F.3d at 880.
10

In the context of disputed claim construction in a patent case, the existence of a case or
controversy must be evaluated on a claim-by-claim basis. See Jervis B. Webb Co. v. S. Sys., Inc.,
742 F.2d 1388, 1399 (Fed. Cir. 1984). Thus, there must be evidence of a controversy as to each
claim in the patent on which the court is asked to declare judgment. See id. at 1399-1400
(reversing district court’s finding of obviousness as to 6 of the 12 claims in the patent because
there was no case or controversy between the parties as to those claims); see also Emerson v.
Nat’l Cylinder Gas Co., 251 F.2d 152, 157-58 (1st Cir. 1958) (affirming dismissal of
counterclaim seeking a judgment declaring certain claims of the patent invalid, certain other
claims of which were at issue in the suit, because the district court properly found no actual
controversy existed between the parties as to the claims involved in the counterclaim); Lam, Inc.
v. Johns-Manville Corp., 206 U.S.P.Q. 452, 465-66 (D. Colo. 1979) (refusing to reach declaratory
judgment counterclaims because the counterclaimant had never manufactured the items that were
the subject of those claims).
CoorsTek alleges
On September 10, 2007, Defendants filed a patent infringement and trade secret
misappropriation lawsuit against a number of hard disk drive manufacturers,
including two of CoorsTek’s customers, captioned Reiber v. Western Digital
Corp., et al., Case No. 2:07-cv- 01874 (E.D. Cal.), and initiated a proceeding
before the United States International Trade Commission (“ITC”) alleging patent
infringement against the same manufacturers, In re Certain Hard Disk Drives, and
Certain Components Thereof, Inv. No. 337-TA-616 (U.S.I.T.C.) (collectively the
“Prior Litigation”). In the Prior Litigation, Defendants alleged, inter alia, that
CoorsTek’s customers, infringed the Patents-In-Suit by, among other things,
importing products manufactured by using CoorsTek bonding tools. As a result of
Defendants’ claims in the Prior Litigation against CoorsTek’s customers,
CoorsTek received demands for indemnification from its customers. Believing
that it did not infringe any valid claim of any patent held by the Reibers, and that
11

the claims of the Patents-in-Suit were invalid and/or unenforceable, CoorsTek
initiated this Declaratory Judgment Action, seeking a declaration of
non-infringement, invalidity, and unenforceability on each and every claim of the
Patents-in-Suit.
(Pl.C.C.Br. at 3.) CoorsTek filed this declaratory judgment action “seeking a declaration of noninfringement, invalidity, and unenforceability on each and every claim of the Patents-in-Suit.”
(Id.) There is clearly “a substantial controversy, between parties having adverse legal interests”
as the Reibers have brought counterclaims for infringement of certain claims in the Patents-inSuit. MedImmune, 549 U.S. at 127.
There is no dispute that CoorsTek is currently involved in the manufacture and selling of
bonding tools. (See Reply to First Am. Ans. and Countercl. at ¶ 15.) Under these circumstances,
there is certainly “identified ongoing or planned activity” in which CoorsTek “contends that it has
the right to engage in the accused activity without license.” Hewlett-Packard Co., 587 F.3d at
1361. Therefore, the court will consider construction for the remainder of the submitted claims to
the extent otherwise appropriate.
2.

“Extrinsic semiconducting material which has dopant atoms;
doped semiconductor”

The parties initially identified thirty claim terms requiring judicial construction. (See
April 2009 Joint Status Report.) Absent from those thirty claim terms was a request to construe
the term “extrinsic semiconducting material which has dopant atoms; doped semiconductor” (“the
dopant atoms term”). On October 13, 2010, however, the parties submitted their final Joint
Proposed Claim Construction Statement (Doc. No. 178 [October 2010 Joint Prop. Cl. Constr.
Stmt.]) which was the first and only time the dopant atoms term appeared. Thereafter, neither
12

CoorsTek nor the Reibers briefed or argued the construction of the dopant atoms term. Therefore,
the court concludes that the request to construe the dopant atoms term has been abandoned and it
will not be further addressed herein.
3.

Device

A request for construction of the term “device” appeared in both the April 2009 Joint
Status Report and the October 2010 Joint Proposed Claim Construction Statement. Again,
however, neither party briefed or argued a specific construction of this term.2 In the context of
these patents, the term device is non-technical, is in plain English and the jury will have no
trouble determining to what the term “device” refers in the context of this case. There is no need
for the court to function as a thesaurus and to do so usurps the province of the jury. See, e.g., U.S.
Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (claim construction is not
meant to be an obligatory exercise in redundancy.) As noted by the Federal Circuit in Phillips,
“In some cases, the ordinary meaning of claim language as understood by a person of skill in the
art may be readily apparent even to lay judges, and claim construction in such cases involves little
more than the application of the widely accepted meaning of commonly understood words.” 415
F.3d at 1314. This court finds that replacing the word “device” with CoorsTek’s complicated
construction in lieu of its common and everyday usage is contrary to the purposes of claim

2

CoorsTek mentioned the term “device to be bonded” as a subpart of its requested
construction of “resistance low enough to prevent a discharge of charge to a device and high
enough to avoid current flow large enough to damage said device being bonded.” (See
Pl.C.C.Br. at 24-25.) Without argument or support, CoorsTek simply adopted the cumbersome
definition ascribed by its expert, to wit, “any active or passive electronic component that may be
electronically or electrically connected to another component.” (Id. at 25.)
13

construction. Since no party briefed in detail a specific construction for the term “device,” the
court will deem the request for further judicial construction of the term device” to have been
abandoned as well. However, to the extent the request for construction of the term “device” was
not abandoned, the court finds it unnecessary to provide further construction of this term.
4.

Terms Within Disclaimed Claims

On April 13, 2010, the U.S. Patent and Trademark Office (“PTO”) published statutory
disclaimers filed by the Reibers disclaiming any right to claims 5-13 of the ‘802 Patent, and on
June 15, 2010, published statutory disclaimers filed by the Reibers disclaiming any right to
claims 20-22, 25-31, 33-36, and 40-45 of the ‘479 Patent, and claims 8-27 and 39-78 of the ‘864
Patent. (See Pl.C.C.Br. at 4 n.2.) The court has noted the disclaimed claims for each construction
undertaken; however, since as to each disputed claim term there remain instances of the term
occurring in still active claims, the disclaimers have little effect on the court’s claim
constructions.
III.

Analysis and Construction of Claim Terms
A.

1.

Stipulated Term

Resistance
The term “resistance” appears in the ‘479 Patent, claims 1-9, 19, 30, 37, 45, 46, 48, 50;

the‘864 Patent, claims 1-4, 7, 8, 16, 17, 24, 25, 27-29, 31, 33-35, 37; the ‘548 Patent, claims 1-3;
and the ‘802 Patent, claims 1-13. The parties agree to the following construction: resistance is
“opposition to electrical current flow.” (October 2010 Joint Prop. Cl. Constr. Stmt. at 2.)

14

B.
2.

Disputed Terms

Dissipative Terms3 – “electrically dissipative;” “dissipative material;” “dissipative
ceramic”
‘479 Patent: claims 1, 5, 9, 19, 23-24, 46-48, 50
‘864 Patent: claims 1, 4
‘548 Patent: claim 1

CoorsTek’s Construction

Reibers’ Construction

a material having a surface resistivity of at
least 1 x 105 ohms/square but less than 1 x
1012 ohms-cm or having a volume resistivity
of at least 1 x 104 ohm-cm but less than l x
1011 ohms-cm

a material having an electrical resistance
between that of insulative and conductive
materials

3.

“Resistive Material”4
‘479 Patent: claims 1, 5, 9, 19, 23-24, 46-48, 50
‘864 Patent: claims 1, 4
‘548 Patent: claim 1
‘802 Patent: claims 1, 2

CoorsTek’s Construction

Reibers’ Construction

a material that has a volume resistivity or
surface resistivity greater than zero

a material that opposes or resists electrical
current flow

This court will construe the dissipative terms and the resistive material term together
because the applicable analysis is similar.

3

As noted in Section II.C.4 herein, the Reibers have disclaimed the following claims in
the Patents-in-Suit which also contain the disputed terms: ‘479 Patent, cls. 25-27, 29-31, 35, 42,
and 44-45; and ‘864 Patent, cls. 9, 18, and 26.
4

As noted in Section II.C.4 herein, the Reibers have disclaimed the following claims in
the Patents-in-Suit which also contain the disputed terms: ‘479 Patent, cls. 25-27, 29-31, 35, 42,
and 44-45; ‘864 Patent, cls. 9, 18 and 26; and ‘802 Patent, cls. 5, 6, 8 and 11.
15

The Reibers’ construction of the dissipative and resistive terms are based upon the
intrinsic definition contained in the Patents-in-Suit and the parties’ agreement as to the meaning
of the term resistance. CoorsTek argues that “dissipative,” as it applies to electrical properties, is
a technical term which can or should be defined by reference to extrinsic evidence. The Phillips
court stated,
The court looks to those sources available to the public that show what a person of
skill in the art would have understood disputed claim language to mean. Those
sources include the words of the claims themselves, the remainder of the
specification, the prosecution history, and extrinsic evidence concerning relevant
scientific principles, the meaning of technical terms, and the state of the art.
415 F.3d at 1314. CoorsTek’s proposed construction depends upon adoption of a term which is
not contained in the Patents-in-Suit—“resistivity”—and reliance upon extrinsic evidence as to the
parameters of resistivity and its mathematical calculation. (Pl.C.C.Br. at 17-23.)
Both parties’ experts agree, and the “ESD Association Advisory for Electrostatic
Discharge Glossary” (“ESD Glossary”) concurs, that surface resistance and surface resistivity are
two related, but different, quantifications of electrical properties. (See Pl.C.C.Br. Ex. A
[Blanchard Report] at 12; Henry Report at 7; Pl.C.C.Br. Ex. A-16 [ESD Glossary] at 12.) The
ESD Glossary defines “surface resistance” as
The ration of DC voltage to the current flowing between two electrodes of
specified configuration that contact the same side of a material. This measurement
is expressed in ohms. (ESD-ADV 1.0-1994).
(ESD Glossary at 12.) The ESD Glossary definition for the term “surface resistivity” follows
immediately thereafter.

16

For electric current flowing across a surface, the ration of DC voltage drop per unit
length to the surface current per unit width. In effect, the surface resistivity is the
resistance between two opposite sides of a square and is independent of the size of
the square or its dimensional units. Surface resistivity is expressed in
ohms/square. When using a concentric ring fixture, resistivity is calculated by
using the following expression, where D1=outside diameter of inner electrode,
D2=inside diameter of outer electrode, and R=measured resistance in ohms.

(Id. at 13.) Surface resistivity, then, is an equation wherein one of the parameters needed to
perform the surface resistivity calculation is the measured resistance.
The term “resistivity” or “surface resistivity” does not appear in any of the Patents-in-Suit,
either in claims, embodiments or specifications. Instead, the patentee consistently refers to
resistance measurements and expresses specific embodiments in terms of ohms, not ohms/square.
Since the two concepts are admittedly different, the reasonable inference is that a person of
ordinary skill in the art would understand that the Patents-in-Suit purposefully defined the scope
of the inventions in terms of resistance and that the term “resistivity” was purposefully rejected as
an applicable concept.
CoorsTek argues that “material” can only be measured in terms of resistivity and not in
terms of resistance. (Pl.C.C.Br. at 18-19.) Apparently, the experts for both sides agree that, in
general, resistivity is a property of a material and resistance is an electrical property of an object.
(Blanchard Report at 12-13; Henry Report at 7, 12.) The patents, however, involve the properties

17

of an object, the bonding tool, in relation to a device being bonded, measured at a certain location
on the object.5
The prosecution history of the ‘479 Patent supports the rejection of the concept of
“resistivity” being applied to the Patents-In-Suit. In a May 24, 2001 Response to an Office
Action, the patentee explained to the Examiner the importance of his specific distinction between
resistance and resistivity as applied to his patent application while distinguishing prior art known
as “Matcovich, et al.” (See Def.C.C.Br. Ex. G.) The patentee stated, “the ‘resistance’ of
Matcovich et al. is given in units of ohms per square whereas the resistance of the [‘479 Patent]
claims is given in ohms.” (Id. at 9-10.) The patentee explained that, although prior art Matcovich
et al. used the term “resistance,” that prior art actually employed a calculation resulting in ohms
per square thus defining resistivity, not resistance. (Id.) The patentee summarized the differences
between the concept of “resistivity” and “resistance” as used in his ‘479 Patent by stating
Resistivity and specific resistance referred to by the Examiner are not the same as
resistance. The units ohms-cm and ohms per square referred to by the Examiner
are not the same as the unit ohms.
(Id. at 22 (underlining in original); see also the patentee’s express distinctions between resistance
and resistivity, id. at 15, 18.)
CoorsTek’s reliance upon extrinsic evidence to support importing a new term—one
specifically rejected by the patentee during the prosecution—into the Patents-in-Suit is
inappropriate since this extrinsic evidence flatly contradicts the intrinsic evidence as noted.

5

This location or tip is addressed in the following section.
18

Phillips, 415 F.3d at 1317. The court rejects attempts in construction of these terms, as well as in
other disputed claims, to replace the concept of resistance as used in the Patents-in-Suit with the
term “resistivity” which would be in direct contravention of the prosecution history and the
language of the Patents-in-Suit themselves.
In addition to attempting to graft a new term onto the Patents-In-Suit to define the
dissipative terms and the resistive material term, CoorsTek also implores this court to define the
disputed terms with greater mathematical precision, again based on the rejected computation of
resistivity. In addition to rejecting parameters for claim terms based on “resistivity,” the court
also notes, “It is usually incorrect to read numerical precision into a claim from which it is absent,
. . . ” Modine Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545, 1551 (C.A. Fed. 1996)
abrogated on other grounds by Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 234
F.3d 558 (Fed. Cir. 2000) (en banc) rev’d on other grounds, 535 U.S. 722 (2002).
The terms “electrically dissipative;” “dissipative material;” “dissipative ceramic” are
therefore construed as follows: “dissipative means having an electrical resistance in the range
between completely insulative and completely conductive, excluding both endpoints.”
The term “resistive material” is construed as follows: “resistive means opposing or
resisting electrical current flow.”

19

4.

“Tip; bonding tip; bonding tool tip; tip of a bonding tool”6
‘479 Patent: claims 1-9, 19, 37, 46, 48, 50
‘864 Patent: claims 1-4, 7, 28, 29, 31, 33-35, 37
‘548 Patent: claims 1-3
‘802 Patent: claim 1-4

CoorsTek’s Construction

Reibers’ Construction

Not susceptible to reasonable construction
because the phrases are used
interchangeably in the specifications of the
Patents-in-Suit to reference the output end
of a bonding tool and/or a bonding tool as a
whole.

End of a bonding tool. Bonding tool is a
tool that uses heat, pressure and/or
ultrasonic energy to weld metals.

The parties are in substantial agreement about the definition of a bonding tool. CoorsTek
has asserted that for the purposes of the Patents-in-Suit, the term bonding tool “would refer to a
tool used in a bonding machine that uses heat, pressure and/or ultrasonic energy to connect wires
to a bonding pad.” (Pl.C.C.Br. at 2 n.2.) CoorsTek also states that “similar to a sewing machine
needle and a sewing machine, bonding tools are used in bonding machines to connect minuscule
gold wires between bonding pads in the manufacturing of some electronic components.” (Id.)
The Reibers similarly construe “bonding tool” to mean a “tool that uses heat, pressure and/or
ultrasonic energy to weld metals.” (Def.C.C.Br. at 20-22.)
CoorsTek’s construction argument as to the bonding tip terms centers on the premise that
“tip; bonding tip; bonding tool tip; tip of a bonding tool” all refer to an item which is a discrete
part or segment of a bonding tool. CoorsTek asserts that the terms “tip; bonding tip; bonding tool

6

As noted in Section II.C.4 herein, the Reibers have disclaimed the following claims in
the Patents-in-Suit which also contain the disputed terms: ‘479 Patent, cls. 30 and 45; ‘864
Patent, cls. 8, 16, 17, 24, 25, and 27; and ‘802 Patent, cls. 5-13.
20

tip; tip of a bonding tool” are used interchangeably to mean variously “the output end of a
bonding tool; some portion of the bonding tool including the output end; and the entire bonding
tool.” (Pl.C.C.Br. at 8-9.) CoorsTek argues that nothing in the intrinsic or extrinsic evidence
defines how to determine the beginning and end points of a “tip” as opposed to the entire bonding
tool, and, therefore, the court should invalidate the claims for indefiniteness. (Id. at 9.) The
Reibers’ construction is that the “tip; bonding tip; bonding tool tip; tip of a bonding tool” is the
end of the bonding tool. The Reibers argue that a person of ordinary skill in the art would
understand what is meant by “tip,” in the various iterations of the disputed terms, including the
relevant dimensions “which may vary depending on the tool type and size.” (Reply at 13.)
As described in the Patents-in-Suit, a computer chip consists of an electrical component
(the integrated circuit) that is mounted on a lead frame. As part of the manufacturing process,
individual leads on the lead frame are connected to individual bonding pads on the integrated
circuit with wire welds or bonds. (See generally ‘479 Patent, col. 1, ll. 15-39.) The thin gold
wire used in the process is fed through a tubular object called a bonding tool. (Id.) An electrical
discharge at the point where the bonding tool, wire, lead and the integrated circuit’s bonding pad
come closest to contact—supplied by a separate device attached to the bonding machine—melts a
bit of the wire, forming a bonding ball that attaches the lead to the bonding pad. (Id.) The
Patents-in-Suit sought to address a perceived problem with the bonding process caused by
electrostatic discharge at the point of creation of the bond which could damage the integrated
circuit or other device being bonded.

21

A bonding tool is a very small article.
Figure 1, appearing in each of the Patents-in-Suit,
depicts a bonding tool with a pointed end, looking much like a sharpened pencil in the drawing,
but obviously infinitely smaller in reality. All four of the Patents-in-Suit describe Figure 1 as
“illustrat[ing] a typical capillary bonding tool 10. Such bonding tools are usually about one-half
inch (12-13 mm) long and about one-sixteenth inch (1.6 mm) in diameter.”
(‘479 Patent, col. 1, ll. 1-3; see also ‘864 Patent, col. 3, ll. 48-51; ‘802 Patent, col. 3, ll. 28-31.)
To support its argument, CoorsTek asserts that in using the terms “tip; bonding tip;
bonding tool tip; tip of a bonding tool,” the inventor confused the contested terms with the entire
bonding tool, creating unacceptable ambiguity. Specifically, CoorsTek argues, “Defendants
interchange the term ‘bonding tool tips’ with ‘tools’” and then cites to the following language
appearing in the Patents-In-Suit:
In the present invention, bonding tool tips with the desired electrical conduction
can be made with three different configurations.
First, the tools can be made from a uniform extrinsic
semiconducting material …
Second, the tools can be made by forming a thin layer of high
doped semiconductor on an insulating core …
Third, the tools can be made by forming a lightly doped
semiconductor layer on a conducting core …

(Pl.C.C.Br. at 11-12 (emphasis added) (citing ‘479 Patent, col. 2, ll. 16-20, 27-28, 35-36 and col.
4, ll. 27-32, 38-39, 47-48; ‘802 Patent, col. 2, ll. 30-34, 40-42, 50-52).) CoorsTek’s also cites the
‘479 Patent:

22

Typical bonding tips on the market today are made of an insulator of alumina
(Al2O3), sometimes terms [sic] aluminum oxide. This very hard compound which
has been used on commercial machines with success as it provides a reasonably
long life in use as a wire bonding tool. To insure that it is an insulator no
conductive binders are used in these bonding tips. However, as stated previously,
the problem has existed that an electrostatic discharge from the bonding tool
making contact with the bonding pad of the desired circuit can damage the very
circuit it is wiring up.
(Pl.C.C.Br. at 12 (emphasis added) (citing ‘479 Patent, col. 3, ll. 56-62).) CoorsTek asserts that
the location of the disputed terms “in sections of the specification that the describe the invention
as a whole suggests that ‘bonding tips’ refer to the entire bonding tool.” (Id. at 12.)
The Reibers claim that bonding tools are homogenous throughout; thus, in discussing the
properties of the “tip” it is not inconsistent to discuss the properties of the entire tool.
Specifically, the Reibers cite to language in the specifications of the ‘548 and the ‘864 Patents
describing examples of methods for manufacturing dissipative tools, where mixes of powders are
molded, and heated slowly “so as to obtain low porosity, and obtain homogeneity.” (‘548 Patent,
col. 7, ll. 43-47; ‘864 Patent; col. 7, ll.33-37.)
The extrinsic evidence supports the idea of homogeneity. Dr. Henry stated that
“[n]aturally, the tip of the bonding tool is made of the same material as the entire bonding
tool”and indicated that he was “unaware of the manufacture of bonding tools where the tip or end
of the bonding tool is made from a different material than the rest of the bonding tool.” At his
deposition, Dr. Blanchard similarly indicated that he could not remember any specific tool where
the material at the top or middle of the tool was different from the material at the bottom. (D’s

23

Reply , Ex. B. [Blanchard Depo.] at 78:4-19 (stating that he thought he remembered one but could
not remember the details).)
It is clear to the court, that in these sections of the Patents-in-Suit use a vernacular
reference common in the industry at the time by referring interchangeably to a bonding tool and a
bonding tip. The sections of the Patents-in-Suit describing three different configurations of
bonding tool tips explains that the composition of the tool as a whole will affect the electrical
properties of different parts of the tool, including the location variously described as the “tip;
bonding tip; bonding tool tip; tip of a bonding tool.”
There appears to be some relationship between using the vernacular reference of “bonding
tip” or “bonding tool tip” when referring to the function of the bonding tool as a small component
of the bonding machine. While certain diagrams appearing in the Patents-in-Suit show only the
bonding tool, Figures 6(a) and 6(b)depict the tool in relationship to the machine, giving insight
into the occasional reference to the whole tool as a “bonding tip.”

24

The phrase “on the market today” clearly indicates a whole product, not a segment or
piece of a product. Again, this language, intrinsic to the patent, clearly anticipates that “bonding
tip” is simply a location of a bonding tool and, in a homogenous item, reference to the tip
implicates the whole tool. This is why the composition of the whole bonding tool is important to
gaining “long life in use” for any specific location on the tool, including the tip. (Id.)
Further, in the Notice of Allowance generated as part of the prosecution history of the
‘479 Patent, the Examiner concluded that the ‘479 Patent was allowable because:
Electrically dissipative materials such as dissipative ceramics are known in the art
[] as materials which may be formed and shaped into tools. However, there is no
disclosure of using such a material to form a wire bonding tip. Such tools are
typically insulating [] or conducting [] rather than dissipative.
(Pl.C.C.Br. Ex. G [Notice of Allowability] at 2 (emphasis added).) The Examiner directly
referenced a bonding tool as the instrument being discussed, but in the same sentence referred to
the invention as a “wire bonding tip.”
A patentee is free to be his own lexicographer. Markman, 52 F.3d at 980 (citing Autogiro
Co. v. United States, 384 F.2d 391, 397 (Ct. Cl. 1967)). “The caveat is that any special definition
given to a word must be clearly defined in the specification.” Id. In this case, both the Examiner
and the patentee interchangeably used the terms bonding tool and the various iterations of
“bonding tool tip.” The bonding tool itself is a very small, relatively sharp replaceable part on a
bonding machine. There is no ambiguity as to what is meant in the Patents-in-Suit by “tip;
bonding tip; bonding tool tip; tip of a bonding tool” when read in context.

25

Accepting this interpretation, the language throughout the Patents-in-Suit is therefore
consistent and unambiguous. The court finds that a person of ordinary skill in the art would
understand from the context of the patent the difference between the bonding tool and the “tip;
bonding tip; bonding tool tip; tip of a bonding tool.”
Coorstek further argues that nothing in the Patents-in-Suit explains how to determine the
beginning and end points of a “tip” as opposed to the entire bonding tool, and therefore urges the
court to invalidate the claims for indefiniteness. Using Figure 1, the Patents-in-Suit also describe
the bonding tool tip. The ‘479 Patent states, “The bonding tool tip 12 itself is usually from 3 to
10 mils (0.08 to 0.25 mm) long.” (‘479 Patent, col. 3, ll. 5-7.) Both the ‘864 and ‘548 Patents
state, “The bonding tool tip 12 can be from 1 to 8 mils, 2 to 6 mils, or 3 to 10 mils (0.08 to 0.25
mm) long.” (‘864 Patent, col. 3, ll. 51-53.) Finally, the ‘802 Patent states, “A bonding tool tip
12 is, in exemplary embodiments, 3 to 10 mils (e.g., 0.08 to 0.25 mm) long.” (‘802 Patent, col. 3,
ll. 32-34.)
Figure 2 is also contained in all four Patents-in-Suit. It depicts
a highly enlarged, cross-sectional view of the capillary bonding tool 10 as shown
and described in FIG. 1. Only that portion of the bonding tool 10 shown within the
dotted circle in FIG. 1 is shown in FIG. 2. Tool tip 12 has the hole tube 14 which
may run the entire length of the bonding tool 10. The exit whole 18 is where the
wire (not shown) would exit the tool tip 12.
(‘479 Patent col. 3, ll. 11-17; see also ‘864 Patent, col. 3, ll. 1-3 & ‘548 Patent, col. 3, ll. 9-11
(“FIG.2 is a vastly enlarged cross-sectional view of a capillary-type construction of the operating
end or tip of a bonding tool”); ‘802 Patent, col. 3, 11 65-67 (“FIG.2 is an enlarged cross-sectional

26

view of the capillary-type construction of the operating end or tip of the bonding tool of FIG. 1”).)
Patent claims should generally be construed to encompass the preferred embodiments
described in the specification, and it is generally error to adopt a construction that excludes them.
See On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133, 1138 (Fed. Cir.
2004). Limitations from the specification (such as from the preferred embodiment), however,
may not be read into the claims absent the inventor’s express intention to the contrary. Teleflex
Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1326 (Fed. Cir. 2002); see also CCS Fitness, Inc. v.
Brunswick Corp, 288 F.3d 1359, 1366 (Fed. Cir. 2002) (“[A] patentee need not ‘describe in the
specification every conceivable and possible future embodiment of his invention.’”) (quoting
Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1344 (Fed. Cir. 2001)). The various
embodiments of the Patents-in-Suit do provide measurements for the bonding tool tip and
therefore the claims are not indefinite. However, the court declines to incorporate the limitations
from the embodiments into the claim terms. A person of ordinary skill in the art would
understand from the intrinsic evidence what is meant by “tip; bonding tip; bonding tool tip; tip of
a bonding tool.” This court therefore finds, from the intrinsic evidence in the Patents-in-Suit, that
the terms “tip; bonding tip; bonding tool tip; tip of a bonding tool” all generally refer to a location
on a bonding tool, thus implicating the bonding tool as a whole. The same terms are also used to
refer to the whole bonding tool. The court construes the terms “tip; bonding tip; bonding tool tip;
tip of a bonding tool” to mean the output end of a bonding tool.

27

5.

“Insulating core” and “Conducting core”7
‘479 Patent: claims 6, 7 (insulating core)
‘479 Patent: claims 8, 9 (conducting core)

CoorsTek’s Construction
insulating core:
a form upon which insulative material,
defined as a material having surface
resistivity of at least 1 x 1012 ohms/square or
a volume resistivity of at least 1 x 1011
ohms-cm is deposited

Reibers’ Construction
insulating core:
a core formed from insulative material

conducting core:
a form upon which conductive material,
defined as a material having surface
resistivity of more than zero and less than 1
x 105 ohms/sq or a volume resistivity of
more than zero and less than 104 ohms-cm is
deposited

conducting core:
a core formed from conductive material

CoorsTek’s construction of the two terms above suffers from the same disability as its
previous definitions—the constructions improperly import resistivity calculations into the
Patents-in-Suit in contravention of the intrinsic evidence indicating resistance to be the proper
measurement. For all the reasons set forth in detail supra, the court rejects CoorsTek’s attempt to
define claim terms based solely on extrinsic evidence which contradicts and overrides the
intrinsic evidence.

7

As noted in Section II.C.4 herein, the Reibers have disclaimed the following claims in
the Patents-in-Suit which also contain the disputed terms: ‘479 Patent, cls. 27, 28, 42 and 43
(insulating core); ‘479 Patent, cls. 29-30, 44 and 45 (conducting core); ‘802 Patent, cls. 8 and 9
(insulating core); and ‘802 Patent, cls. 11 and 12 (conducting core).
28

The ‘479 patent provides, when discussing the appropriate resistance, “The resistance
should be low enough so that the material is not an insulator, not allowing for any dissipation of
charge and high enough so that it is not a conductor, allowing a current flow.” (‘479 Patent, col.
ll. 9-12.) Therefore, based on the intrinsic evidence contained in the Patents-in-Suit, the court
construes the terms as follows: “Insulating core is a core formed of material which does not allow
for any dissipation of electrical charge. Conducting core is a core formed from material which
allows an electrical current flow.”

29

6.

“Resistance low enough to prevent a discharge of charge to a device and
high enough to avoid current flow large enough to damage said device
being bonded”8
‘479 Patent: claims 1, 9, 19, 37, 46, 48, 50
‘802 Patent: claim 19

CoorsTek’s Construction

Reibers’ Construction

unable to ascertain a well bounded
definition within the parameters of low
enough to prevent the flow of electrons
through the bonding tip to the active or
passive electronic component and high
enough to avoid electrical current flow to
damage the active or passive electronic
component

No construction is required

Again, the parties are in agreement about the definition of resistance. Resistance is
“opposition to electrical current flow.” (October 2010 Joint Prop. Cl. Constr. Stmt. at 2.) So,
substituting the agreed construction for the first word of the contested language, the phrase would
read, “opposition to electrical current flow low enough to prevent a discharge of charge to a
device and high enough to avoid current flow large enough to damage said device being bonded.”

8

As noted in Section II.C.4 herein, the Reibers have disclaimed the following claims in
the Patents-in-Suit which also contain the disputed terms: ‘479 Patent, cls. 30 and 45.
9

The parties, in their 2010 Joint Proposed Claim Construction Statement, indicate that
the term to be construed appears in the ‘802 Patent, claim 1, as well as in the ‘479 Patent. The
precise phrase in dispute according to the parties, however, does not appear in the ‘802 Patent,
claim 1. Instead, the term in the ‘802 Patent metamorphosed into, “resistance low enough to
discharge a small voltage in a device being bonded at a rate of less than 5 milliamps of current
and high enough to avoid current flow large enough to damage the device being bonded.” (‘802
Patent, col. 7, ll. 13-16 (emphasis added to highlight changed language).) The court, therefore,
only considers the second part of the contested phrase, “high enough to avoid current flow large
enough to damage the device being bonded,” in connection with the construction in the ‘802
Patent.
30

CoorsTek takes issue with the terms low enough, high enough and large enough. (See Pl.C.C.Br.
at 25-27 & n.7.) The court finds that every other term in the phrase appears clear on its face in
light of the other constructions herein.
Low enough, high enough and large enough are terms of degree. When construing a term
of degree, a key question is whether the intrinsic evidence provides some standard for measuring
that degree. Exxon Research and Eng’g v. United States, 265 F.3d 1371, 1381 (Fed. Cir. 2001).
The first place the term appears is in claim 1 of the first patent, the ‘479 Patent.
Therefore, the court looks first to the specifications in that patent for the meaning of the terms.
The abstract of the ‘479 Patent, in describing the invention states,
In accordance with the principles of the present invention, to avoid damaging
delicate electronic devices by any electrostatic discharge, an ultrasonic bonding
wedge tool tip must conduct electricity at a rate sufficient to prevent charge
buildup, but not at so high a rate as to overload the device being bonded. For best
results, a resistance in the tip assembly itself should range from 105 to 1012 ohms.
(‘479 Patent, abstract.)
In describing the prior art, the inventor states,
Certain prior art devices have a one or more volt emission when the tip makes
bonding contact. This could present a problem, as a one volt static discharge could
generate a 20 milliamp current to flow, which, in certain instances, could cause the
integrated circuit to fail due to this unwanted current.
(‘479 Patent, col. 1, ll. 48-53.). This section sets at least one parameter for the current flow at
lower than 20 milliamps. See Glaxo Group Ltd. v. Ranbaxy Pharms, Inc., 262 F.3d 1333, 1337
(Fed. Cir. 2001) (a standard for measuring a term of degree may come from the applicant’s
statements distinguishing the prior art). Further, the summary section of the patent provides, “It

31

is desirable for the bonding tip to discharge slowly. The tip needs to discharge to avoid a sudden
surge of current that could damage the part being bonded.” (‘479 Patent, col. 2, ll. 6-9.)
The specification in the patent provides:
In accordance with the principles of the present invention, to avoid damaging
delicate electronic devices by this electrostatic discharge, a bonding tool tip must
conduct electricity at a rate sufficient to prevent charge buildup, but not at so high
a rate as to overload the device being bonded. It has been determined that the tool
must have electrical conduction greater than one ten-billionth of a mho (i.e.>1x10
raised to the minus 12th power reciprocal ohms) but its electrical conductivity
must be less than one one-hundred thousandth of a mho (i.e. <1x10 raised to the
minus fifth power reciprocal ohms.) The resistance should be low enough so that
the material is not an insulator, not allowing for any dissipation of charge and high
enough so that it is not a conductor, allowing a current flow. For best results, a
resistance in the tip assembly itself should range from 105–1012 ohms.
(‘479 Patent, col. 3, ll. 66-col. 4, ll. 14.)
The fact that “some claim language may not be precise . . . does not automatically render a
claim invalid. When a word of degree is used the district court must determine whether the
patent’s specification provides some standard for measuring that degree.” Exxon, 265 F.3d at
1381 (quoting Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir.
1984)).
While the specification in a patent must provide some means of measurement, construing
terms of degree with more precise language than the claim imposes improperly imports
limitations from the specification into the claim and also impinges on the role of the jury in
resolving the question of infringement. See, e.g., Playtex Prods., Inc. v. Procter & Gamble Co.,
400 F3d. 901, 907 (Fed. Cir. 2005) (the definition of “substantially flattened surfaces” improperly
introduced a numerical tolerance to flatness); Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d
32

1352, 1361 (Fed. Cir. 2003) (refusing to impose a precise numeric constraint on the term
“substantially uniform thickness”). This court is mindful that while it is the court’s role to
construe the claims, it is the jury’s role to determine infringement. Markman, 517 U.S. at 384.
Therefore, it would be improper for the court to import the 105–1012 ohms range from the
specification into the term as it appears in the claims.
The doctrine of claim differentiation also counsels against importing numerical precision
into the contested term, providing that “each claim in a patent is presumptively different in
scope.” See RF Delaware, Inc. v. Pac. Keystone Techs., Inc., 326 F.3d 1255, 1263 (Fed. Cir.
2003). “The presence of a dependent claim that adds a particular limitation gives rise to a
presumption that the limitation in question is not present in the independent claim.” Phillips, 415
F.3d at 1315. As to the ‘479 Patent, in claims 1 and 19, their dependent claims specifically
provide a numeric range limitation. Dependent claims 2 and 23 state:
2.

A tip as in claim 1 [which includes the disputed phrase], having a
resistance in the range of 105 to 1012 ohms.

23.

The method of claim 19 [which includes the disputed phrase], wherein said
dissipative material has a resistance in the range of 105 to 1012 ohms.

(‘479 Patent, col. 6, ll. 30-31 (claim 2); col. 7, ll. 27-28 (claim 23).)
The ‘479 Patent provides parameters for measuring the boundaries of “low enough to
prevent a discharge of charge to a device and high enough to avoid current flow large enough to
damage said device being bonded” and the phrase can be understood by a person having ordinary
skill in the art. Therefore, the court finds this term to be sufficiently definite for submission to a
jury without further clarification or construction.
33

7.

“In the range of 105 to 1012 ohms”10
‘479 Patent: claim 2, 23, 38
‘864 Patent: claims 28, 38

CoorsTek’s Construction

Reibers’ Construction

at least 1 x 105 ohms but less than 1 x 1012
ohms

having a value at or between 1 x 105 ohms
and 1 x 1012 ohms

The dispute between the parties as to the construction of this term concerns the outside
boundaries of the specified range. The parties agree that even though neither the ‘479 Patent nor
the ‘864 Patent specifically so states, the lower numeral beginning the range is included within
the range. CoorsTek argues that the upper numeral should not be included within the range
because 1 x 1012 is insulating and therefore would not be included in the definition of dissipative
as described within the Patents-in-Suit. The Reibers argue that the range would be commonly
understood to include the upper figure in a range as the measure of resistance.
Within the specification for the ‘479 Patent, the patentee explained that resistance in the
invention tool tip should be “low enough so that the material is not an insulator, not allowing for
any dissipation of charge and high enough so that it is not a conductor, allowing a current flow.”
(‘479 Patent, col. 4, ll. 9-12; see also similar language in ‘864 Patent, col 5, ll. 22-26.) CoorsTek
argues the resistance value of 1012 cannot be included in the range, because the value 1012 is an
insulator, not allowing for any dissipation of charge. Therefore, including the 1012 endpoint in the
range would be contradictory to the plain language in the patents.

10

As noted in Section II.C.4 herein, the Reibers have disclaimed the following claims in
the Patents-in-Suit which also contain the disputed terms: ‘864 Patent, cls. 8, 17, and 25.
34

For the science behind the assertion, CoorsTek references the Blanchard Report and the
ESD Glossary. (See Pl.C.C.Br. at 27.) Dr. Blanchard states, “Insulative materials are generally
defined as materials with a measured surface resistivity greater than or equal to 1 x 1012
ohms/square or a volume resistivity greater than or equal to 1 x 1011 ohm-cm.” (Blanchard Report
at ¶ 40 (emphasis added).) It is apparently on this basis that CoorsTek argues that the term 1012
ohms is, therefore, insulative. However, CoorsTek once again is relying upon definitions
concerning “resistivity” and measurements of ohm-cm or ohm/square rather than the definition of
resistance as used in the Patents-in-Suit. The phrase before the court uses the word resistance and
the measurements in the range are defined in ohms, not in ohms/square. (See, e.g., ‘479 Patent,
cl. 2 (“A tip, as in claim 1, having a resistance in the range of 105 to 1012 ohms”)(emphasis
added).)
“Reliance on extrinsic evidence poses the risk that it will be used to change the meaning
of claims in derogation of the indisputable public records consisting of the claims, the
specification and the prosecution history, thereby undermining the public notice function of
patents.” Phillips, 415 F.3d at 1318-19. This is precisely what CoorsTek is attempting to have
the court do by shifting the plain language of the Patents-in-Suit concerning resistance to a
definition applicable to a different concept, surface resistivity.
Further, in the specification for both patents, the range of values is stated thus: “For best
results, a resistance in the tip assembly itself should range from about 5 x 104 or 105 to 1012
ohms.” (‘479 Patent, col. 2, ll. 9-10; ‘864 Patent, col. 2, ll. 23-25 (emphasis added).) In the ‘864
Patent, child of the ‘479 Patent, the following additional phrase is added to clarify the range:
35

“This range of resistances is adequate no matter the method of characterizing the resistance.”
(‘864 Patent, col. 2, ll. 25-27 (emphasis added).)
In the detailed description of the invention, the ‘479 Patent used a similar phrase: “For
best results, a resistance in the tip assembly itself should range from 105–1012 ohms,” substituting
a dash for the word “to.” (‘479 Patent, col. 4, ll.12-14.) In a case involving a range phrased as
“up to about,” the Federal Circuit held that the range may include or exclude the endpoint,
depending on the context. The court found that where the endpoint is numeric (e.g., counting up
to ten, or seating capacity for up to seven passengers) the endpoint would normally be included in
the computation. AK Steel Corp. v. Sollac and Ugine, 344 F.3d 1234, 1241 (Fed. Cir. 2003)
(holding that “up to about 10%” included the 10% figure). It would be ridiculous, for instance, to
interpret instructions to “count up to ten” to require the counter to stop at nine.11 However, where
the endpoint is physical (e.g., painting the wall up to about the door) the endpoint may be
excluded. Id.
This court also finds that the ordinary meaning of the phrase “from number ‘x’ to number
‘z’” would include the endpoint. A person with ordinary skill in the art would interpret the range
the same as the ordinary construction of such a term of range, so that the term “range from about
5 x 104 or 105 to 1012 ohms” includes the endpoint because the phrase concerns numerical limits.

11

The court notes an example closer to the case which employs the same principles.
When citing to the Patents-in-Suit in their briefs, both parties employ the standard citation
method of describing the location of a citation by column and line, e.g., ‘479 Patent, 4:12-14 or
col. 4, ll. 12-14. In either, both lines 12 and 14 contain part of the citation. In other words, the
beginning point and the endpoint are included in the numerical range.
36

Therefore, the court construes the term in the range of 105 to 1012 ohms to mean “a range having a
value at or between 1 x 105 ohms and 1 x 1012 ohms, inclusive of both the beginning point and the
endpoint.”
8.

“Static Discharge Time”
‘548 Patent: claim 1

CoorsTek’s Construction

Reibers’ Construction

the time required for a current from the
bonding tool to the ground from its initial
value to less than 10% of its initial value

time required for the charge to dissipate

The term “static discharge time” appears in claim 1 of the ‘548 Patent which reads:
A device comprising:
A tip of a bonding tool having a dissipative material for use in wire bonding
machines for connecting leads to integrate circuit bonding pads, wherein the tip
has a static discharge time between 0.1 and 0.5 seconds.
(‘548 Patent, cl. 1.) There appears to be no dispute that “static discharge” refers to the dissipation
of electrical charge. (Pl.C.C.Br. at 32; Def.C.C.Br. at 38.) The disagreement between the parties’
constructions of this term is only as to CoorsTek’s desire to add a limitation specifying the lowest
level of dissipation to be achieved by the end of the measurement cycle.
The specification of the ‘548 Patent states,
The static discharge was measured by charging bonding tool 10 and measuring the
time required for the charge to dissipate. The charge was assumed to have
dissipated once the current from the bonding tool 10 to ground dropped off
significantly from its initial value (e.g., the current was less than 10% of its initial
value).
(‘548 Patent, col. 11, ll. 55-59.)

37

Limitations from the specification (such as from the preferred embodiment), however,
may not be read into the claims absent the inventor’s express intention to the contrary. Teleflex
Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1326 (Fed. Cir. 2002); see also CCS Fitness, Inc. v.
Brunswick Corp, 288 F.3d 1359, 1366 (Fed. Cir. 2002) (“[A] patentee need not ‘describe in the
specification every conceivable and possible future embodiment of his invention.’”) (quoting
Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1344 (Fed. Cir. 2001)).
In Article I, Section 8 of the United States Constitution, the Founders authorized Congress
to enact laws “[t]o promote the Progress of Science and useful Arts, by securing for limited Times
to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”
Shortly thereafter Congress enacted the first patent law, declaring that anyone who had “invented
or discovered any useful art, manufacture, engine, machine, or device or any improvement therein
not before known or used” shall have “the sole and exclusive right and liberty of making,
constructing, using and vending to other to be used” for a term not to exceed fourteen years. 1
Stat. 109-110 (1790); see also Bilski v. Kappos, ___ U.S. ___, 130 S. Ct. 3218, 3242 (2010)
(providing history of U.S. patent system). Patents are a right to exclude others from gain from the
invention, sometimes referred to as “exclusive advantages of commerce.” Bilski, 130 S. Ct. at
3242. As such, the description of the boundaries of the invention is of paramount importance. A
patentee must adequately notify the public of the scope of the invention. Datamize, LLC v.
Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005). A claim is adequately described
when a person skilled in the art “would understand the bounds of the claim when read in light of
the specification . . . [and the claim] reasonably apprise[s] those skilled in the art of the scope of
38

the invention . . . .” Solomon v. Kimberly-Clark Co., 216 F.3d 1372, 1378 (Fed. Cir. 2000)
(quotation omitted).
Time is obviously a unit of measure that can conceivably be influenced by any number of
factors. When measuring the amount of time it takes to perform a certain task, however, one most
certainly needs the parameters of when the task begins and what constitutes full completion of the
task. In this case, in order to calculate “the time required for the charge to dissipate,” a person of
ordinary skill in the art would need to know the starting level of the charge and the amount of
charge remaining, if any, to be considered sufficiently dissipated under the parameters of the test
measurement; in other words, whether the ending voltage level should be at zero in relation to the
starting charge level or some other remaining amount of charge. In this instance, the claim term
requires a specified parameter because the claim itself puts a time limit on the rate of dissipation.
Therefore, in order for the claim to be sufficiently clear to define the boundaries of the invention
and put the public on notice, the public needs to know the parameters of the test, e.g., what
constitutes the beginning point and the endpoint of the measurement of current dissipating.
The specification describes certain testing done with respect to an embodiment and
suggests during that testing that the current should dissipate to 10% of its original charge level.
Therefore, the court construes the term “static discharge time” to mean “the time necessary for a
charge to dissipate from its initial specified value to 10% of the stated initial value.”

39

9.

“Essentially Smooth Current”
‘864 Patent: claim 28
‘548 Patent: claim 3

CoorsTek’s Construction

Reibers’ Construction

a discharge of current that avoids a sudden
change of current

no construction required but in alternative: a
discharge of current without oscillation

The term “essentially smooth current” as it appears in claim 28 of the ‘864 Patent and
claim 3 of the ‘548 Patent provides,
28.

3.

A method of using an electrically dissipative bonding tool tip, having a
resistance in the range of 105 to 1012 ohms, comprising: providing the
electrically dissipative bonding tool tip; bonding a material to a device;
allowing an essentially smooth current to dissipate to the device . . .
A method of using a bonding tool tip, comprising: providing an electrically
dissipative bonding tool tip; bonding a material to a device; allowing an
essentially smooth current to dissipate to the device, . . .

(‘864 Patent, col 14, ll. 27-37 (emphasis added); ‘548 Patent, col. 12, ll. 56-64 (emphasis added).)
Both patents state “[c]ertain prior art devices emit one or more volts when the tip makes
bonding contact” and conclude that this sudden discharge upon contact “could damage the
integrated circuit or magnetic recording head.” (‘864 Patent, col. 1, ll. 57-62; ‘548 Patent, col. 1,
ll. 63-67.) Both patents also state, “. . . it is desirable for the bonding tool tip to discharge slowly.
The tip needs to discharge to avoid a sudden surge of current that could damage the part being
bonded.” (‘864 Patent, col. 2, ll. 20-23; ‘548 Patent, col. 2, ll. 27-30.)
Based on the intrinsic evidence, the court construes the term “essentially smooth current”
as a “a discharge of electrical current that avoids sudden surges.”

40

10.

“High enough stiffness to resist bending when hot”
‘479 Patent: claims 3, 24, 39
‘802 Patent: claim 3

11.

“High enough abrasiveness so as to function for at least two uses; high
enough abrasiveness to as to function for at least 30,000 uses.”
‘479 Patent: claims 3, 24, 39
‘802 Patent: claim 4

CoorsTek’s Construction

Reibers’ Construction

unable to ascertain a well-bounded definition
for these terms

no construction required but in the
alternative:
sufficient stiffness to prevent deformation
when hot;
sufficient abrasion resistance to function for
two or more uses; sufficient abrasion
resistance to function for 30,000 or more
uses

Although the terms stiffness and abrasiveness are technical terms defined somewhat
different from a lay person’s concept of the terms, the parties do not posit that a person of
ordinary skill in the art would not know the meanings of these two terms in the context of the
mechanical properties of an object.12 The embodiments in the ‘479 Patent speak to a “Rockwell
hardness” factor in describing the specific stiffness and durability of the invention. (‘479 Patent,
col. 4, ll. 23-26; see also ‘802 Patent, col. 4, ll. 49-52.) CoorsTek’s expert, Dr. Blanchard,
defines stiffness as “the ability of the object to withstand bending” and abrasiveness as “the

12

The patents are clear that these terms define mechanical properties of the invention.
The specifications of the ‘479 and ‘802 Patents explain, “The tools must also have specific
mechanical properties to function satisfactorily. The high stiffness and high abrasion resistance
requirements have limited the possible material to ceramics (electrical non-conductors) or
metals, such as tungsten carbide (electrical conductor).” (‘479 Patent, col. 4, ll. 19-23; ‘802
Patent, col. 4, ll. 44-51.)
41

ability to abrade, i.e., wear away, another object.” (Blanchard Report at ¶¶ 68, 72.) This extrinsic
evidence is consistent with the intrinsic evidence and is useful to the extent it further refines the
definition of the terms “stiffness” and “abrasiveness” in the context of these patents at the time
they were issued.
Based on the undisputed definitions, the court concludes that CoorsTek’s objection to the
phrases as they are written does not concern definition of the technical terms which would
certainly be known to a person of ordinary skill in the art at the time of the invention, but rather to
the terms of degree: “high enough . . . to resist bending . . .” and “high enough . . to function for
at least ___ uses” as well as to the term “hot.” (Pl.C.C.Br. at 28-30.)
As previously discussed, when construing a term of degree, a key question is whether the
intrinsic evidence provides some standard for measuring that degree. Exxon, 265 F.3d at 1381.
The ‘802 Patent expressly describes the basic mechanical parameters for the invention in terms of
providing durability:
Bonding tool tips must be sufficiently hard to prevent deformation under pressure
and mechanically durable so that many bonds can be made before replacement.
Prior art bonding tool tips are made of aluminum oxide, which is an insulator, but
provide the durability to form thousands of bonding connections.
(‘802 Patent, col. 1, ll. 62-67.)
Obviously, terms such as “high enough” stiffness/abrasiveness or “sufficiently hard” are
directly related to the function of the invention. In this case, the ‘479 Patent describes the
invention as a tool which is attached to a bonding machine and through which is fed gold wire
destined to become bonded to and form part of an integrated circuit. (‘479 Patent, col.1, ll.15 39.) At the point where the tip of the tool comes closest to the device being bonded, “a separate

42

EFO (electronic flame off) device melts a bit of the wire, forming a bonding ball.” (Id. col. 1, ll.
18-21.) The bonding tool then moves rapidly from one bonding pad to another, stringing the gold
wire in between. “Pressure from the bonding tool tip and the transducer, and capillary action,
‘flows’ the wire onto the bonding pad where molecular bonds produce a reliable electrical and
mechanical connection.” (Id. col. 1, ll. 58-61.) The ‘479 Patent then specifically sets forth a
preferred Rockwell hardness component for the bonding tool tip—e.g. “[t]he tip should have a
Rockwell hardness of about 25 or above, preferably of about 32 or above.” (‘479 Patent, col. 4,
ll. 23-25.)13 The tool must also have the strength to perform under pressure and very fast speeds14
and at temperatures consistent with the melting point of the gold wire being used in a given
procedure, all without bending and wearing away prematurely.
From these limitations and embodiments, the patents themselves provide a standard for
measuring these terms of degree, including the term “hot.” See Exxon, 265 F.3d at 1381. It
would be error for this court to import a more exact construction of these terms. See, e.g.,
Playtex, 400 F.3d at 907; PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1355 (Fed. Cir.
1998) (a court, under the rubric of claim construction, may not give a claim additional specificity
or precision beyond what is contained in the patent.) Mathematical precision is not required to
have valid and definite claims. Oakley, Inc. v. Sunglass Hut Intern., 316 F.3d 1331, 1341 (Fed.
Cir. 2003). In general, “line-drawing” questions over what meets the scope of the claims is

13

The ‘802 Patent calls for a Rockwell hardness of about 85 or above, preferably of about
89 or above, for its exemplary tool tip in Fig. 12. (‘802 Patent, col. 4, ll. 49-51.)
14

Uncontested testimony at the hearing indicated that the bonding machines create the
bonded threading at very fast speeds.
43

appropriately left to the jury. Acumed LLC v. Stryker Corp., 483 F.3d 800, 806 (Fed. Cir. 2007)
(“[A] sound claim construction need not always purge every shred of ambiguity” because
“resolution of some line-drawing problems . . . is properly left to the trier of fact”).
On the other hand, it is incumbent upon the court to define the general scope of a claim
within the framework of the intrinsic evidence. Therefore, the court will construe the term “high
enough stiffness to resist bending when hot” to mean “high enough stiffness or hardness to resist
bending when the bonding tool reaches a temperature otherwise sufficient to melt the wire being
used in the bonding process.”
The court declines to construe further the term “high enough abrasiveness so as to
function for at least two uses; high enough abrasiveness to as to function for at least 30,000 uses.”
However, the court will construe the term “abrasiveness” as “the ability to wear away another
object or to resist being worn away by another object.” With that construction, the remainder of
the phrase does not require further definition.
IV.

Summary of Claim Construction

Based on the foregoing, the court construes the disputed claims language as follow:
1.

The term “resistance” which appears in the ‘479 Patent, claims 1-9, 19, 30, 37, 45,

46, 48, 50; the‘864 Patent, claims 1-4, 7, 8, 16, 17, 24, 25, 27-29, 31, 33-35, 37; the ‘548 Patent,
claims 1-3; and the ‘802 Patent, claims 1-13, is construed as “opposition to electrical current
flow.”
2.

The terms “electrically dissipative;” “dissipative material;” and “dissipative

ceramic” which appear in the ‘479 Patent, claims 1, 5, 9, 19, 23-25, 42, 46-48, 50; the ‘864
Patent, claims 1, 4; and the ‘548 Patent, claim 1, are construed as: “Dissipative means having an
44

electrical resistance in the range between completely insulative and completely conductive,
excluding both endpoints.”
3.

The term “resistive material” which appears in the ‘479 Patent, claims 1, 5, 9, 19,

23-24, 46-48, 50; the ‘864 Patent, claims 1, 4; the ‘548 Patent, claim 1; and the ‘802 Patent,
claims 1, 2, is construed as “resistive means opposing or resisting electrical current flow.”
4.

The term “tip; bonding tip; bonding tool tip; tip of a bonding tool” which appears

in the ‘479 Patent, claims 1-9, 19, 37, 46, 48, 50; the ‘864 Patent, claims 1-4, 7, 28, 29, 31, 33-35,
37; the ‘548 Patent, claims 1-3; and the ‘802 Patent, claim 1, is construed as “the output end of a
bonding tool.”
5.

The terms “insulating core” and “conducting core” which appear in the ‘479

Patent, claims 6, 7 (insulating core) and claims 8, 9, 29 (conducting core), are construed as:
“Insulating core is a core formed of material which does not allow for any dissipation of electrical
charge” and “Conducting core is a core formed from material which allows an electrical current
flow.”
6.

The term “resistance low enough to prevent a discharge of charge to a device and

high enough to avoid current flow large enough to damage said device being bonded” appears in
the ‘479 Patent, claims 1, 9, 19, 37, 46, 48, 50 and in the ‘802 Patent, claim 2. The court finds
this term to be sufficiently definite for submission to a jury without further clarification or
construction.
7.

The term “in the range of 105 to 1012 ohms” which appears in the ‘479 Patent,

claim 38 and the ‘864 Patent, claims 28, 38, is construed as “a range having a value at or between
1 x 105 ohms and 1 x 1012 ohms, inclusive of both the beginning point and the endpoint.”
45

8.

The term “static discharge time” which appears in the ‘548 Patent, claim 1, is

construed as “the time necessary for a charge to dissipate from an initial value to 10% of its initial
value.”
9.

The term “essentially smooth current” which appears in the ‘864 Patent, claim 28

and the ‘548 Patent, claim 3, is construed as a “a discharge of electrical current that avoids sudden
surges.”
10.

The term “high enough stiffness to resist bending when hot” which appears in the

‘479 Patent, claims 3, 24, 39 and the ‘802 Patent, claim 3, is construed as “high enough stiffness
or hardness to resist bending when the bonding tool reaches a temperature otherwise sufficient to
melt the wire being used in the bonding process.”
11.

The terms “high enough abrasiveness so as to function for at least two uses; high

enough abrasiveness to function for at least 30,000 uses” appear in the ‘479 Patent, claims 3, 24,
39 and the ‘802 Patent, claim 4. The court has determined that the entirety of the phrase does not
need further construction by the court, however, the term “abrasiveness” is construed to mean
“the ability to wear away another object or to resist being worn away by another object.”
Dated this 2d day of May, 2011.

46