In-Depth Test LLC v. Maxim Integrated Products Inc.

Filing 82

MEMORANDUM OPINION. Signed by Judge Colm F. Connolly on 11/1/2018. Associated Cases: 1:14-cv-00887-CFC, 1:14-cv-00888-CFC(fms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
IN-DEPTH TEST LLC,
Plaintiff,

v.

Civil Action No. 14-887-CFC

MAXIM INTEGRATED,
PRODUCTS, INC.,
Defendant. :

IN-DEPTH TEST LLC,
Plaintiff,

. v.

Civil Action No. 14-888-CFC

VISHAY
INTERTECHNOLOGY INC.
and SILICONIX INC.,
Defendants. :

Brain E. Farnan, FARNAN LLP, Wilmington, DE, Jonathan T. Suder (argued),
CorbyR. Vowell, FRIEDMAN, SUDER& COOKE, Fort Worth, TX

Counsel for Plaintiff
Robert M. Oakes (argued), FISH & RICHARDSON P.C., Wilmington, DE

Counsel for Defendant Maxim Integrated Products, Inc.

James H. S. Levine, PEPPER HAMILTON LLP, Wilmington DE, Thomas F.
Fitzpatrick (argued), PEPPER HAMILTON LLP, Silicon Valley, CA

Counsel for Defendants Vishay Intertechnology Inc. and Siliconix Inc.

MEMORANDUM OPINION

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NOVElVIBER 1, 2018

In this patent infringement action filed by In-Depth Test, LLC ("Plaintiff')
against Maxim Integrated Products, Inc., Vishay Intertechnology Inc., and
Siliconix Inc. ("Defendants"), I have before me the issue of claim construction of a
single term in U.S. Patent No. 6,792,373 ("the '373 patent"). I have studied the
parties' briefs andjoint claim construction chart. D.I. 51, D.I. 54, D.I. 56, D.I. 57,
D.I. 58. 1 I held a Markman hearing on October 9, 2018.

I.

BACKGROUND

The '3 73 patent claims a method and apparatus for testing semiconductors,
including integrated circuits. Semiconductors are typically produced in large
batches on a "wafer," a thin slice of semiconductor material usually made of
silicon; and they are extensively tested during the manufacturing process for
performance and reliability. "Wafer-level" testing is performed before a circuit is
cut from the wafer and "packaged" according to the customer's application
requirements. So-called "final testing" of an integrated circuit is performed after

1 Unless

otherwise noted, all D.I. numbers in this Memorandum Order are D.I.
numbers in Civil Action 14-887-CFC.

the circuit is packaged. The nub of the parties' dispute is whether the '373 patent
claims final testing apparatus or methods.

II.

LEGAL STANDARD
"It is a bedrock principle of patent law that the claims of a patent define the

invention to which the patentee is entitled the right to exclude." Phillips v. AWH

Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en bane). "'[T]here is no magic
formula or catechism for conducting claim construction.' Instead, the court is free
to attach the appropriate weight to appropriate sources 'in light of the statutes and
policies that inform patent law."' SofiView LLC v. Apple Inc., 2013 WL 4758195,
at *1 (D.Del. Sept. 4, 2013) (quoting Phillips, 415 F.3d at 1324). Construing the
claims in a patent is a question of law. See Markman v. Westview Instruments,

Inc., 52 F.3d 967, 977-78 (Fed. Cir. 1995) (en bane), ajf'd, 517 U.S. 370, 388-90
(1996).
Unless a patentee acts as his own lexicographer by setting forth a special
definition or disavows the full scope of a claim term, the words in a claim are to be
given their ordinary and accustomed meaning. Thorner v. Sony Comput. Entm 't

Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). "[T]he ordinary and customary
meaning of a claim term is the meaning that the term would have to a person of
ordinary skill in the art in question at the time of the invention, i.e., as of the

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effective filing date of the patent application." Phillips, 415 F.3d at 1313. "[T]he
person of ordinary skill in the art is deemed to read the claim term not only in the
context of the particular claim in which the disputed term appears, but in the
context of the entire patent, including the specification." Id at 1313. "[T]he
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."

Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).2
The court may also consider extrinsic evidence, which "consists of all
evidence external to the patent and prosecution history, including expert and
inventor testimony, dictionaries, and learned treatises." Phillips, 415 F.3d at 1317.
"Extrinsic evidence is to be used for the court's understanding of the patent, not for
the purpose of varying or contradicting the terms of the claims." Markman, 52
F.3d at 981. "The construction that stays true to the claim language and most

Section 112(b) of Title 35 provides that "[t]he specification shall conclude with
one or more claims[.]" This language makes clear that the specification includes
the claims asserted in the patent, and the Federal Circuit has so held. See
Markman, 52 F.3d at 979 ("Claims must be read in view of the specification, of
which they are part"). The Federal Circuit and other courts, however, have also
used "specification" on occasion to refer to the written description of the patent as
distinct from the claims. See, e.g., id. ("To ascertain the meaning of claims, we
consider three sources: The claims, the specification, and the prosecution
history."). To avoid confusion, I will refer to the portions of the specification that
are not claims as "the written description."
2

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naturally aligns with the patent's description of the invention will be, in the end,
the correct construction." Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d
1243, 1250 (Fed. Cir. 1998).

III.

AGREED-UPON CONSTRUCTIONS
The parties agree on the constructions of the following terms in the '373

patent: "outlier," "output report," "test data/ semiconductor test data," "tester,"
and "at run time." D.I. 51 at 2, D.I. 54 at 1, D.I. 56 at 5. The Court accepts the
parties' agreed-upon constructions for purposes of this litigation.

IV.

CONSTRUCTION OF "COMPONENT"
Claim 1 of the '3 73 patent is the only disputed claim, and it reads:
1. A test system, comprising:

a tester configured to test a component and generate test data; and
a computer connected to the tester and configured to receive the test data,
identify an outlier in the test data, and generate an output report including
the identified outlier.
'3 73 patent, claim 1 (disputed term italicized). Plaintiff argues that "component"
means a "semiconductor device or integrated circuit." Defendants contend the
term means "one of multiple integrated circuits on a semiconductor wafer." In
other words, Defendants seek to read into claim 1 a limitation that would restrict

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the invention to wafer-level testing. I will adopt Plaintifrs proposed claim
construction for four reasons.
First, the '373 patent's written description effectively defines "components."
In doing so, it distinguishes "devices on a wafer" from "packaged integrated
circuits or devices" and expressly states that "components" includes both
"integrated circuit dies formed on a wafer" and "packaged integrated circuits or
devices":
The test system 100 may be configured for testing any
components 106, such as semiconductor devices on a
wafer, circuit boards, packaged devices, or other electrical
or optical systems. In the present embodiment, the
components l 06 comprise multiple integrated circuit dies
formed on a wafer or packaged integrated circuits or

devices.
'373 patent at 3:27-33 (emphasis added). "The specification acts as a dictionary
when it expressly defines terms" and "is the single best guide to the meaning of a
disputed term." Vitronics, 90 F.3d at 1582. Thus, the above-quoted language from
the written description strongly supports Plaintifr s construction of "component."
Second, the written description distinguishes wafer testing from final testing,
as it notes that "[t]esting is typically performed before device packaging (at wafer
level) as well as upon completion of assembly (final test)." '373 patent at 1:41-43.
But nowhere does the written description teach that the testing disclosed by the

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'373 patent is limited to wafer-level testing. Moreover, Figure 1 of the patent
shows a block diagram of the invention which, as Defendants concede, is not
limited to testing components on a wafer. See '313 patent at 2:36-38, 3:22-25,
Fig. 1; see also Tr. of Oct. 9, 2018 Hr'g at 42 (defense counsel conceding, as he
should have, that it is "probably correct" that Figure 1 "would allow for testing
both on the wafer and off the wafer"). "Where a specification [i.e., written
description] does not require a limitation, that limitation should not be read from
the specification into the claims." Specialty Composites v. Cabot Corp., 845 F.2d
981, 987 (Fed. Cir. 1988).
Third, the doctrine of claim differentiation supports Plaintiffs construction
of "component." The doctrine instructs that "the presence of a dependent claim
that adds a particular limitation raises a presumption that the limitation in question
is not found in the independent claim." Liebel-Flarsheim Co. v. Medrad, Inc., 358
F.3d 898, 910 (Fed. Cir. 2004). In this case, asserted claim 1 of the '373 patent
recites a test system comprising "a tester configured to test a component and
generate test data." '373 patent at 19:23-24. Claim 3 describes "[a] test system
according to claim 1, wherein the test data corresponds to a section group of

components on a wafer." Id. at 19:34-35 (emphasis added). Because "a section
group" exists only on a wafer, see Tr. at 51-52, it logically must be the case that

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only "components" in claim 3 is limited by "on a wafer." Thus, claim 3 adds the
very limitation on "component" that Defendants seek to read into claim 1. In this
circumstance, the presumption that the independent claim does not have the
limitation in question "is at its strongest." Liebel-Flarsheim, 358 F.3d at 910; see

also SunRace Roots Enter. Co. v. SRAMCorp., 336 F.3d 1298, 1303 (Fed. Cir:.
2003) (presumption that independent claim does not have limitation that is
introduced for the first time in a dependent claim "is especially strong when the
limitation in dispute is the only meaningful difference between an independent and
dependent claim, and one party is urging that the limitation in the dependent claim
should be read into the independent claim.").
Fourth, and related to the claim differentiation doctrine, is the claim
construction principle that "interpretations that render some portion of the claim
language superfluous are disfavored." Power Mos/et Techs., LLC v. Siemens AG,
378 F.3d 1396, 1410 (Fed. Cir. 2004). Construing "components" to be necessarily
"on a wafer" renders "on a wafer" superfluous in claim 3 as well as in claims 7 and
10, all of which describe "a section group of components on a wafer."
Defendants urge me to ignore these four considerations and to focus instead
on the fact that the preferred embodiments of the invention set forth in the written
description do not disclose the testing of components after the components have

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been removed from a wafer. See D.I. 56 at 6; D.I. 58 at 2-5. The claims of a
patent, however, "are not limited to the preferred embodiment, unless by their own
language." Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 978 (Fed. Cir. 1999).
Here, not only does the language of the claim not limit the claim's scope to the
preferred embodiment, but the written description expressly states to the contrary
that:
[t]he particular implementations shown and described
herein are illustrative of the invention and its best mode
and are not intended to otherwise limit the scope of the
present invention in any way.... The present invention
has been described above with reference to a preferred
embodiment. However, changes and modifications may
be made to the preferred embodiment without departing
from the scope of the present invention.
'373 patent at 18:66-19:15. Indeed, immediately after making this point,
presumably to emphasize it, the written description makes it again virtually
verbatim:
The present invention has been described with reference
to a preferred embodiment. Changes and modifications
may be made, however, without departing from the scope
of the present invention. These and other changes or
modifications are intended to be included within the scope
of the present invention, as expressed in the following
claims.
Id. at 19:16-21.

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Defendants are correct that the specification details embodiments that
involve testing components only on a wafer, but the specification neither describes
the invention as limited to wafer-level testing nor contains a clear disavowal of the
final testing of components in packaged form. "Even when the specification
describes only a single embodiment, the claims of the patent will not be read
restrictively unless the patentee has demonstrated a clear intention to limit the
claim scope using 'words or expressions of manifest exclusion or restriction."'

Liebel-Flarsheim, 358 F.3d at 906 (citation omitted). In this case, the patentee did
not demonstrate a clear intent to limit the invention to wafer-level testing. On the
contrary, the specification makes clear that the patentee intended the invention to
cover both wafer-level and final testing.

V.

CONCLUSION
For the reasons discussed above, I will construe the term "component" to

mean a "semiconductor device or integrated circuit."
The Court will issue an order consistent with this Memorandum Opinion.

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