Collabo Innovations, Inc. v. OmniVision Technologies, Inc.
Filing
87
MEMORANDUM OPINION re: claim construction. Signed by Judge Sherry R. Fallon on 8/25/2017. (lih)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
COLLABO INNOVATIONS, INC.,
Plaintiff,
v.
)
)
)
)
OMNIVISION TECHNOLOGIES, INC.,
)
)
)
Defendant.
Civil Action No. 16-197-JFB-SRF
)
)
MEMORANDUM OPINION1
I.
INTRODUCTION
In this patent infringement action filed by plaintiff Collabo Innovations, Inc. ("Collabo")
against defendant OmniVision Technologies, Inc. ("OmniVision"), Collabo alleges infringement
of United States Patent Nos. 7,411,180("the'180 patent"), 8,592,880 ("the '880 patent''),
7,944,493 ("the '493 patent"), 7,728,895 ("the '895 patent"), and 8,004,026 ("the '026 patent")
(the "asserted patents" or the "patents-in-suit"). Presently before the court is the matter of claim
construction. This order sets forth the court's constructions for the disputed claim terms
discussed in the briefing and at the Markman hearing held on July 12, 2017.
II.
BACKGROUND2
A.
The Parties
Collabo is a Delaware corporation with its headquarters in Costa Mesa, California. (0.I.
14 at if 1) Collabo is the sole owner by assignment of the patents-in-suit, which are directed to
image sensors of semiconductor integrated circuits. (Id at ifif 6-10)
1
On June 8, 2017, the parties consented to the jurisdiction of the magistrate judge for disposition
on claim construction. (D .I. 71)
2
Background regarding the patents-in-suit is provided within the construction of the disputed
terms. See§ IV, infra.
OmniVision is a Delaware corporation with its principal place of business in Santa Clara,
California. (Id at if 2) OmniVision manufactures and sells semiconductor devices, including
CMOS image sensors, which are incorporated into consumer electronics such as mobile
handsets, tablets, automotive cameras, and gamepads. (Id at ifif 11-12)
B.
Procedural Posture
Collabo filed suit against OmniVision on March 29, 2016, alleging that OmniVision
makes, uses, offers to sell, and/or imports into the United States semiconductor devices,
including complementary metal-oxide semiconductor ("CMOS") image sensors, which utilize
technologies covered by the patents-in-suit. (D.I. 1 at if 11) On July 19, 2016, this action was
'referred by Judge Robinson for discovery and all motions to dismiss, amend, transfer, and any
discovery motions permitted. (D.I. 24) The parties completed briefing on claim construction on
May 11, 2017. (D.I. 49; D.I. 55; D.I. 60; D.I. 63) On June 8, 2017, the parties consented to the
jurisdiction of the magistrate judge for disposition on claim construction. (D.I. 71) A Markman
hearing was held on July 12, 2017.
III.
LEGAL STANDARD
Construing the claims of a patent presents a question of law, although subsidiary fact
finding is sometimes necessary. Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 837-38
(2015) (citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-78 (Fed. Cir. 1995),
aff'd, 517 U.S. 370, 388-90 (1996)). "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.
AWHCorp., 415F.3d1303, 1312 (Fed. Cir. 2005) (internal quotation marks omitted). "[T]here
is no magic formula or catechism for conducting claim construction." Id at 1324. Instead, the
2
court may attach the appropriate weight to appropriate sources "in light of the statutes and
policies that inform patent law." Id.
The words of the claims "are generally given their ordinary and customary meaning,"
which 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 effective filing date of the patent application." Phillips,
415 F .3d at 1312-13 (internal citations and quotation marks omitted). "[T]he ordinary. meaning
of a claim term is its meaning to the ordinary artisan after reading the entire patent." Id at 13 21
(internal quotation marks omitted); see also Eon Corp. IP Holdings v. Silver Spring Networks,
Inc., 815 F.3d 1314, 1320 (Fed. Cir. 2016). Claim terms are typically used consistently
throughout the patent, and "usage of a term in one claim can often illuminate the meaning of the
same term in other claims." Phillips, 415 F.3d at 1314 (observing that "[o]ther claims of the
patent in question, both asserted and unasserted, can also be valuable sources of enlightenment ..
. [b]ecause claim terms are normally used consistently throughout the patent .... ").
It is likewise true that "[d]ifferences among claims can also be a useful guide .... For
example, 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." Id at 131415 (internal citation omitted). This "presumption 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." SunRace Roots Enter. Co., Ltd v. SRAM Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003)
(citing Ecolab Inc. v. Paraclipse, Inc., 285 F.3d 1362, 1375 (Fed. Cir. 2002).
Other intrinsic evidence, including the patent specification, "is always highly relevant to
the claim construction analysis. Usually, it is dispositive; it is the single best guide to the
3
meaning of a disputed term." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996). "[T]he specification may reveal a speci~l definition given to a claim term by the
patentee that differs from the meaning it would otherwise possess. In such cases, the inventor's
lexicography governs." Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp.,
288 F.3d 1359, 1366 (Fed. Cir. 2002)). It bears emphasis that "[e]ven 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 Co. v. Medrad, Inc., 358
F.3d 898, 906 (Fed. Cir. 2004) (internal quotation marks omitted), aff'd, 481F.3d1371 (Fed.
Cir. 2007). The specification "is not a substitute for, nor can it be used to rewrite, the chosen
claim language." SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004).
In addition to the specification, a court "should also consider the patent's prosecution
history, if it is in evidence." Markman, 52 F.3d at 980. The prosecution history, which is also
"intrinsic evidence," "consists of the complete record of the proceedings before the PTO [Patent
and Trademark Office] and includes the prior art cited during the examination of the patent."
Phillips, 415 F.3d at 1317. "[T]he 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 scope narrower than it
would otherwise be." Id
A court also may rely on "extrinsic evidence," which "consists of all evidence external to
the patent and prosecution history,
inclu~ing
expert and inventor testimony, dictionaries, and
learned treatises." Markman, 52 F.3d at 980. For instance, technical dictionaries can assist the
4
court in determining the meaning of a term to those of skill in the relevant art because such
dictionaries "endeavor to collect the accepted meanings of terms used in various fields of science
and technology." Phillips, 415 F.3d at 1318. In addition, expert testimony can be useful "to
ensure that the court's understanding of the technical aspects of the patent is consistent with that
of a person of skill in the art, or to establish that a particular term in the patent or the prior art has
a particular meaning in the pertinent field." Id. Nonetheless, courts must not lose sight of the
fact that "expert reports and testimony [are] generated at the time of and for the purpose of
litigation and thus can suffer from bias that is not present in intrinsic evidence." Id.
("[C]onclusory, unsupported assertions by experts as to the definition of a claim term are not
useful to a court."). Overall, while extrinsic evidence may be useful to the court, it is less
reliable than intrinsic evidence, and its consideration "is unlikely to result in a reliable
interpretation of patent claim scope unless considered in the context of the intrinsic evidence."
Id. at 1318-19.
Finally, "[t]he construction that stays true to the claim language and most 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). It follows
that "a claim interpretation that would exclude the inventor's device is rarely the correct
interpretation." Osram GmbH v. Int'! Trade Comm 'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007).
5
IV.
CONSTRUCTION OF DISPUTED TERMS
A.
Claim Construction of the '180 Patent
The parties represent that, after continued meet and confers, they have reached agreement
on the disputed claim terms in the' 180 patent. (7/12/17 Tr. at 79:15-80:11) In accordance with
the parties' agreement, the claim terms of the '180 patent shall be construed in the following
manner:
Agreed Construction
Term
"transparent film" (' 180 patent, claim 1)
"a clear layer of material that allows light
to pass through"
"transparent film on said micro-lenses" (' 180
patent, claim 1)
"micro-lenses" ('180 patent, claims 1 & 2)
"transparent film directly on said microlenses"
B.
"multiple miniature bodies of material
wherein each body is for focusing light"
Claim Construction of the '895 Patent
The '895 patent, entitled "Solid-state image sensing device having shared floating
diffusion portions," teaches ways to reduce the size of each pixel by allowing different pixels to
share common parts. ('895 patent, col. 1:25-37) Specifically, the '895 patent teaches arranging
the floating diffusion portions in a specific configuration to be shared among photoelectric
conversion portions, thereby reducing the overall size. (Id. at col. 2: 1-4) The reduction in pixel
size allows designers of digital cameras, smart phones, and other devices containing image
sensors to fabricate image sensors with a larger number of pixels on the same size chip as used in
previous designs. ('895 patent, col. 1:22-37; D.I. 50 at~ 16)
6
1.
"pixel signal" ('895 patent, claims 1, 3, 5)
Collaho
OmniVision
"an electrical charge or
voltage or current indicative of
the intensity of light incident
on the photoelectric portion of
a pixel"
Plain and ordinary meaning;
alternatively, "electrical
signal converted from
incident light on the
photoelectric conversion
portion of a pixel"
Court
"an electrical charge or
voltage or current indicative
of the intensity of light
incident on the photoelectric
portion of a pixel"
The court adopts Collabo' s proposed construction, which finds support in the intrinsic
record. The specification teaches that the solid-state image sensing device includes "a plurality
of unit pixels ... each of which outputs a pixel signal according to incident light." ('895 patent,
col. 2:5-9; see also Abstract) This teaching mirrors the language of independent claim 1. ('895
patent, col. 10:28-30) Accordingly, the claimed "pixel signal" is output from the "unit pixel."
(7/12/17 Tr. at 26:19-27:23)
· Collabo's proposed construction defines "signal" as "charge or voltage or current,"
providing definitional language for the disputed term. (7/12/17 Tr. at 26:2-18; 32:3-20) The
specification states that the pixel signals may be output via the floating diffusion portions and the
pixel amplifier transistors. ('895 patent, col. 7:52-57) The language of dependent claims 3 and 5
reaffirms that accumulated pixel signals in the floating diffusion portion can be read out by the
pixel amplifier transistor ('895 patent, col. 10:46-50; 7/12/17 Tr. at 33:8-17), or received by the
vertical signal lines (Id at col. 10:63-11 :2; 7/12/17 Tr. at 32:21-33:7). As explained by
Collabo's expert, Dr. Martin Afromowitz, when the charge is transferred from the photoelectric
conversion portion of the pixel to the floating diffusion section, a voltage is established on the
floating diffusion. (D.I. 61 at if 13)
Contrary to OmniVision's assertion, the intrinsic record does not require the pixel signal
to be converted from incident light by the photoelectric conversion portion. In a preferred
7
embodiment, the specification provides that "it is preferable that each of the unit pixels includes:
a photoelectric conversion portion which converts the incident light to the pixel signal." ('895
patent, col. 2:23-26) It is well-established that the meaning of a claim term may be limited to a
preferred embodiment only if there is a finding of lexicography or disavowal, neither of which
has been established by OmniVision in the present case. See GE Lighting Solutions, LLC v.
AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014). Even the absence of an embodiment in the
'895 patent specification containing a pixel signal which is not converted from incident light
would be insufficient to constitute a disavowal. See Cadence Pharm., Inc. v. Exe/a PharmSci
Inc., 780 F.3d 1364, 1369 (Fed. Cir. 2015) ("[E]ven if all of the embodiments discussed in the
patent included a specific limitation, it would not be proper to import from the patent's written
description limitations that are not found in the claims themselves."); Unwired Planet, LLC v.
Apple Inc., 829 F.3d 1353, 1359 (Fed. Cir. 2016).
OmniVision's proposed construction also violates the doctrine of claim differentiation by
importing the conversion element from dependent claim 2 into the language of independent
claim 1. (D.I. 49 at 11-12; 7/12/17 Tr. at 27:24-28:20) Dependent claim 2 claims that "each of
the unit pixels includes: a photoelectric conversion portion which converts the incident light to
the pixel signal." (Id at col. 10:39-41) The doctrine of claim differentiation is at its strongest in
the type of case presently before the court, "where the limitation that is sought to be 'read into'
an independent claim already appears in a dependent claim." InterDigital Commc 'ns, LLC v.
Int'! Trade Comm 'n, 690 F.3d 1318, 1324 (Fed. Cir. 2012) (quoting Liebel-Flarsheim Co. v.
Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004)); see also SunRace Roots Enter. Co. v. SRAM
Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003) (finding that the presumption is especially strong
when "the limitation in dispute is the only meaningful difference between an independent and
8
dependent claim, and one party is urging that the limitation in the dependent claim should be
read into the independent claim.").
The doctrine of claim differentiation creates only a presumption, which "can be
overcome by strong contrary evidence such as definitional language in the patent or a clear
disavowal of claim scope[.]" lnterDigital Commc'ns, LLCv. lnt'l Trade Comm'n, 690 F.3d
1318, 1324 (Fed. Cir. 2012). As previously discussed, OmniVision does not cite to definitional
language in the patent or reference a clear disavowal of claim scope. Instead, OmniVision relies
on the language of dependent claim 2, which does not meet the exacting standard for overcoming
the doctrine of claim differentiation. Viewing the alleged disavowal in the context of the '895
patent as a whole, OmniVision's proposed limitation is not adequately supported to warrant
inclusion in independent claim 1. See Unwired Planet, 829 F.3d at 1358.
2.
"every two of the unit pixels share a corresponding one of the
floating diffusion portions" ('895 patent, claim 1)
Collaho
Plain and ordinary meaning no
construction necessary;
alternatively, "two photosensitive
elements share the same floating
diffusion element"
OmniVision
"there is a 2: 1 ratio of unit
pixels connected to floating
diffusion portions"
Court
"two photosensitive
elements share the same
floating diffusion element"
The court adopts Collabo' s proposed construction, which is consistent with the intrinsic
record. The specification supports a construction allowing a floating diffusion portion to share
more than one pair of unit pixels because it repeatedly identifies a "plurality" of unit pixels
sharing a floating diffusion portion when referring to the present invention. When describing the
problems solved by the invention, the specification notes that "an object of the present invention
is to realize a miniaturized and highly sensitive solid-state image sensing device which is
9
configured such that when a plurality of photodiode portions share a floating diffusion portion,
the proportion of the floating diffusion portion with respect to the photodiode portions is small."
('895 patent, col. 1:57-63) In identifying the effects of the invention, the specification explains
that "it is possible to realize a miniaturized and highly sensitive solid-state image sensing device
which is configured such that when a plurality of photodiode portions share a floating diffusion
portion, the proportion of the floating diffusion portion with respect to the photodiode portions is
small." (Id, col. 4:40-46) The specification subsequently reiterates that "the proportion of the
floating diffusion portion with respect to the photodiode portions is small when a plurality of
photodiode portions share a floating diffusion portion." (Id, col. 10:16-18) The specification's
repeated contemplation of a plurality of photodiode portions sharing one floating diffusion
portion conflicts with OmniVision's proposal that a floating diffusion portion is shared by only
one pair of unit pixels.
In support of its proposed construction,
OmniVisio~
points to a preferred embodiment in
the specification which identifies a single floating diffusion portion shared by one pair of unit
pixels: "The read-out transistors respectively provided in two unit pixels which are respectively
arranged in adjacent rows and which are respectively arranged in adjacent columns are
connected with each other to share the other one of the source and the drain thereof, which forms
the FD portion." (' 895 patent, col. 6:2-8) The specification expressly identifies this iteration of
the invention as an embodiment, and does not disavow embodiments in which more than two
unit pixels share the same floating diffusion portion. Likewise, Figure 4 depicts a floating
diffusion portion sharing two unit pixels and a second floating diffusion portion. (' 895 patent,
Fig. 4; col. 6:2-8; 7/12/17 Tr. at 62:2-19) It is well-established that the meaning of a claim term
may be limited to a preferred embodiment only if there is a finding of lexicography or disavowal,
10
neither of which has been established by OmniVision in the present case. See GE Lighting
Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014).
3.
"in adjac.ent rows of adjacent columns" ('895 patent, claim 1)
Collaho
Plain and ordinary meaning no
construction necessary;
alternatively, "positioned in
rows that are next to each other
and in columns that are next to
each other"
OmniVision
"diagonally"
Court
"positioned in rows that are
next to each other and in
columns that are next to
each other"
The court construes the term in accordance with Collabo' s proposed construction, which
is supported by the intrinsic record. The specification includes a preferred embodiment
describing unit pixels "which are respectively arranged in adjacent rows and which are
respectively arranged in adjacent columns." ('895 patent, col. 6:3-5; see also Abstract) The use
of the "adjacent" language in both the specification and the claim language is more accurately
captured by Collabo' s proposed construction.
The specification of the '895 patent uses the phrase "diagonally" multiple times when
referring to preferred configurations of the floating diffusion portion, but does not expressly
disavow embodiments of the unit pixels having other configurations. The sp_ecification explains
that "it is possible to arrange the FD portion diagonally to the pixels" to reduce the space
·requirements of the floating diffusion portion, and "it is possible to suppress the occurrence of a
misalignment of images even in a case where the FD portion is diagonally arranged." ('895
patent, col. 2:15-16; 3:10-12) Acknowledging the possibility of a diagonally-arranged floating
diffusion portion in the specification is not sufficient to support its inclusion as a requirement for
the unit pixels in the claim language. Figures 2 and 3 depict the diagonal arrangement of a
preferred embodiment, but the description of the preferred embodiment contains no limiting
11
language that would restrict all embodiments to a diagonal configuration. (' 895 patent, col.
6:27-30; 6:61-7:8)
Despite using "diagonally" to describe preferred embodiments of the floating diffusion
portion throughout the specification, the inventors did not incorporate the word "diagonally" into
the language of the disputed claim itself when referring to the unit pixels. The inventors
presumably would have done so had they intended to limit claim 1 of the '895 patent in this
manner. Absent an express disavowal of claim scope in the specification, the court is not
inclined to further limit the claim language by defining it as "diagonally." See GE Lighting
Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014).
C.
Claim Construction of the Contact Hole Alignment Patents
The '493 patent, the '880 patent, and the '026 patent (collectively, the "contact hole
patents" or "alignment patents") disclose inventions to minimize the layout size of MOS-type
solid-state image sensor devices. ('493 patent, col. 1:16-19) The common specification of the
contact hole patents describe pixels arranged in a matrix of columns and rows, with each pixel
containing the following components: a photodiode, a transfer gate, a floating diffusion layer
section, an amplifier transistor, a reset transistor, and an address transistor. (' 493 patent, col.
1:26-28) The inventions address the arrangement of the components within the photosensitive
cell "to reduce the size of the laid-out photosensitive cells, thereby reducing the entire size of the
entire sensor." ('493 patent, col. 4:28-30) The specification describes arranging the contact
holes in a straight line or eliminating the need for certain contact holes to reduce the space
needed for the layout of photosensitive cells. ('493 patent, col. 4:47-50; 10:3-7)
12
1.
"contact hole" ('493 patent, claims 10 & 17; '880 patent, claim 1) I
"contact" ('026 patent, claims 1 & 9)
Collabo
"conductive element vertically
connecting conducting layers"
OmniVision
"opening for making
electrical connection"
Court
"opening for making
electrical connection"
The court adopts OmniVision's proposed construction of "contact hole" and "contact,"
which is supported by the intrinsic record. The parties are in agreement that "contact hole" and
"contact" should be given the same meaning, 3 consistent with the common specification of the
'493 patent, the '880 patent, and the '026 patent, which refers only to "contact hole." (D.I. 60 at
6; 7/12/17 Tr. at 84:5-10) The specification explains that, "[i]n order to electrically connect the
region and wires of these three types, contact holes are required for connecting layers." (' 493
patent, col. 9:41-43) This language supports OmniVision's position that a contact hole is an
opening for routing signals. The specification further explains that contact holes are not required
when layers are made of the same.material, illustrating tha~ the openings are only necessary to
route connections between different layers and materials. ('493 patent, col. 4:24-28)
The specification contains no express definitional language for "contact" or "contact
hole." In the absence of language in the specification indicating any express definition or
specialized meaning, the term should be construed in accordance with its plain and ordinary
meaning, i.e., an "opening." See Inventio AG v. ThyssenKrupp Elevator Americas Corp., C.A.
3
The expert declaration of Collabo's expert, Martin Afromowitz, states that, "[f]rom the
evidence presented herein, it is clear that a [person having ordinary skill in the art) would
understand that the claim term 'contact hole' is synonymous with 'contact,' in the context of the
'493 patent." (D.I. 50 at~ 87) The term "contact" is used only in claims 1 and 9 of the '026
patent. ('026 patent, col. 14:27-31; col. 15:26-30) Because the parties agree that "contact hole"
and "contact" should be given the same meaning, the court rejects Collabo's argument that
OmniVision improperly attempts to "read in the term hole for what is termed contact." (7/12/17
Tr. at 99:15-18)
13
No. 08-874-RGA, 2013 WL 842529, at *2 (D. Del. Mar. 6, 2013). This construction is
consistent with the position of both parties' experts, who rely on sources demonstrating that a
person of ordinary skill in the art would understand a contact hole or contact to refer to an
opening to allow electrical connections to be established between layers. (D.I. 50 at if 85, Ex. 14
at 440; D.I. 57 at if 55)
Collabo' s proposed construction defining contact holes as "conductive elements" is not
adequately supported by the intrinsic evidence. The claims and the specification require only an
electrical connection, and do not mention a conductive element. Collabo' s support for the
"conductive element" language of its proposed construction is limited to the extrinsic record in
the form of its expert's declaration. (D.I. 50 at ifif 80, 82) In contrast, the specification describes
the "contact hole" as providing an electrical connection, consistent with OmniVision's proposed
construction. (' 493 patent, col. 11 :46-49)
Collabo argues that OmniVision's proposed construction would exclude preferred
embodiments of the invention. The preferred embodiment cited by Collabo describes signal
lines and gate electrodes made of the same material, which eliminates the need for contact holes
to route the referenced signal lines, thereby reducing the circuit size of the sensor. ('026 patent,
col. 12:24-30; '493 patent, col. 4:24-30; 4:57-63) However, this embodiment is not the subject
of the disputed claims, which expressly require alignment of "contact holes" or "contacts" and
cannot be construed to have no "contact holes" or "contacts." For these reasons, Collabo's
proposed construction is not adequately supported by the record.
14
2.
"contacts are aligned in a straight line" ('026 patent, claims 1 & 9)
Collabo
Plain and ordinary meaning no
construction necessary;
alternatively, "the first, second
and third contacts are arranged
along a single straight line"
OmniVision
"contact holes are arranged
linearly"
Court
"contact holes are arranged
along a single straight line"
The court construes the dispute4 term as follows: "contact holes are arranged along a
single straight line." This construction represents a hybrid of the parties' competing·
constructions, as proposed by OmniVision during the July 12, 2017 hearing. (7/12/17 Tr. at
102:1-10) The court previously construed the terms "contact holes" and "contacts" at§ IV.C.l,
supra, and the parties do not dispute that "contact holes" and "contacts" should be given the
, same meaning, (D.I. 60 at 6; D.I. 50 at if 87).
Applying the court's prior construction of "contact holes" and "contacts" to the instant
claim term resolves the issue of which claim element is arranged in a straight line to reduce the
space requirements in the cell layout. The specification describes the contact holes "being
aligned approximately in a straight line in the layout of the photosensitive cells" "to reduce an
area required for layout of these contact holes." ('493 patent, col. 4:47-50; see also col. 12:4951; col. 13:28-35) OmniVision's proposed construction is consistent with the express language
of the specification in this regard.
The court's construction also addresses Collabo's objection to OmniVision's use of the
word "linearly." OmniVision presumably chose the word "linearly" to avoid using the words of
the claim itself in the proposed construction. See lnline Connection Corp. v. AOL Time Warner
Inc., 347 F. Supp. 2d 56, 72 (D. Del. 2004) ("A construction that does not give meaning to all the
words in a disputed phrase is disfavored.") (citing Pickholtz v. Rainbow Techs., Inc., 284 F.3d
15
1365, 1373 (Fed. Cir. 2002)). However, the phrase "straight line" does not require construction,
and OmniVision's attempt to rephrase it results in further ambiguity. See Phillips, 415 F.3d at
1314 (ordinary and customary meaning may be readily apparent such that "elaborate
interpretation" is not required); 02 Micro Int'! Ltd. v. Beyond Innovation Tech. Co., 521 F.3d
1351, 1362 (Fed. Cir. 2008) (the purpose of claim construction is "to clarify ... what the
patentee covered by the claims .... "). Accordingly, the court's proffered construction of the
claim term is consistent with the constructions of the previous claim terms, the -language of the
claims themselves, and the specification.
3. "active region" ('493 patent, claims 10 & 17; '880 patent, claim 1)
Collaho
"a portion of the substrate where
transistors, photodiodes, and/or
diffusion layers are formed and
having a surface area defined by
an insulator boundary"
OmniVision
"a contiguous region of the
substrate through which
charges can flow and where
the gate, source, and drain of
each transistor is formed"
Court
"a contiguous region of the
substrate through which
charges can flow and where
the gate, source, and drain of
each transistor is formed"
The court adopts OmniVision's proposed construction of "active region," which is
supported by the intrinsic record. The language of the claims recites the term "active region"
with no reference to an insulating boundary used to prevent the flow of charge. (' 493 patent, col.
15:21-29, 16: 12-21) In accordance with Federal Circuit precedent, the court "cannot endorse a
construction analysis that does not identify 'a textual reference in the actual language of the
claim with which to associate a proffered claim construction.'" MBO Labs., Inc. v. Becton,
Dickinson & Co., 474 F.3d 1323, 1330-31 (Fed. Cir. 2007) (quoting Johnson Worldwide Assocs.,
Inc. v. Zebco Corp., 175 F.3d 985, 990 (Fed. Cir. 1999)).
The specification also fails to adequately establish an insulating or isolating boundary as
a required characteristic of the active region. In a preferred embodiment, the specification refers
16
to a device isolation region which surrounds the active region: "The active region is surrounded
by a device isolation region (not shown), and has formed therein devices serving as circuits and
their electrodes, such as photodiodes, and the gate, source, and drain of each transistor." ('493
patent, col. 8:56-59) The device isolation region identified in this portion of the specification is
described as a separate component from the active region. To the extent that Collabo asks the
court to incorporate the device isolation region into the definition of the active region, the court
declines to read extraneous limitations from the specification into the claim term absent
lexicography or disavowal. See Vitronics v. Conceptionic Inc., 90 F.3d 1576, 1580 (Fed. Cir.
1996); E.l duPont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir.
1988) ("By 'extraneous,' we mean a limitation read into a claim from the specification wholly
. apart from any need to interpret what the patentee meant by particular words or phrases in the
claim. Where a specification does not require a limitation, that limitation should not be read
from the specification into the claims.").
The court's construction of this term is consistent with the Patent Trial and Appeal
Board's ("PTAB") decision in the inter partes review proceeding brought by Sony against
Collabo, which was issued on October 13, 2016. (D.I. 56, Ex. 1 at 9-12) The PTAB noted that
the specification "does not describe insulation," and the claims "do not recite insulation as part of
or accompanying an active region," concluding that reading an insulation region into the claims
would improperly import an extraneous limitation. (Id at 10-11) Although the PTAB' s decision
is not binding on this court, it provides additional context for the parties' positions. See lnventio
AG v. ThyssenKrupp Elevator Americas Corp., C.A. No. 08-874-RGA, 2014 WL 129799, at *3
n.2 (D. Del. Jan. 14, 2014).
17
4.
"the first active region" ('493 patent, claims 10 & 17)
OmniVision
Collaho
"any one of the plurality of
corresponding active regions"
Indefinite
Court
Indefinite
The term "the first active region" renders claims 10 and 17 of the '493 patent indefinite
for lack of antecedent basis. Independent claims 10 and 17 recite "[a]n imaging device formed
in a semiconductor substrate, the imaging device comprising" a series of components, including
"a plurality of photodiodes arranged in rows and columns, each photodiode for a given row of
photodiodes formed in a corresponding active region of the semiconductor substrate." ('493
patent, col. 15:21-26; 16:12-17) Subsequent references to "a transfer gate disposed over the first
active region" raise questions as to which active region would be "the first" among the plurality
of corresponding active regions in each photosensitive cell, as there is no ordinal language earlier
in the disputed claims or in the specification in conjunction with the term "active region." (' 493
patent, col. 15:27; 16:18)
Collabo' s proposed construction, which limits the '493 patent to embodiments in which
only one active region per photosensitive cell exists, is contradicted by the claim language. The
use of the term "comprising" in the preamble of the independent claims signifies that "the named
elements are essential, but other elements may be added and still form a construct within the
scope of the claim." Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997). The
"comprising" language of claims 10 and 17 leaves open the option of including more than one
active region. (7/12/17 Tr. at 149:15-24)
The language of independent claim 1 further refutes Collabo' s contention that there is
only one active region per photosensitive cell. Claim 1 identifies "a corresponding active
region," followed by both "the first active region" and "another active region which is separated
18
from the corresponding active region." ('49Jpatent, col. 14:1-24) The express designation of
"another active region" as "separated from the corresponding region" in claim 1 demonstrates
that more than one distinct active region may be present in each photosensitive cell. The active
regions in claim 1 are described as the locations where "each photodiode for a given row of
photodiodes [is] formed," where "the amplifier transistor is formed," and "where the associated
floating diffusion element connected to the gate of the amplifier transistor is formed." ('493
patent, col. 14: 1-4, 14:21-24)
Collabo's proposal that "the first active region" could be "any one of the plurality of
corresponding active regions" does not sufficiently define the term because the claim language
suggests that the active regions are not identical, and there is no guidance in the intrinsic record
as to which active region would be "the first." 4 See Media Rights Techs., Inc. v. Capital One
Fin. Corp., 800 F.3d 1366, 1371 (Fed. Cir. 2015) ("A claim ... is thus invalid for indefiniteness
if its language, when read in light of the specification and the prosecution history, 'fail[ s] to
inform, with reasonable certainty, those skilled in the art about the scope of the invention.'"
(quoting Nautilus, 134 S. Ct. at 2124)). Although a failure to provide antecedent basis does not
necessarily render a claim indefinite if the scope of the claim would be reasonably understood by
a person of ordinary skill in the art, see Energizer Holdings, Inc: v. Int 'l Trade Comm 'n, 435
F.3d 1366, 1370-71 (Fed. Cir. 2006), the claim language at issue in the present case "fail[s] to
inform, with reasonable certainty, those skilled in the art about the scope of the invention,"
Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014); Eon Corp. IP Holdings
4
The court's analysis of the disputed term "the floating diffusion layer," see § IV.C.5, infra, is
distinguishable from the analysis of "the first active region" term because the specification and
claim language of the '493 patent do not suggest that all active regions are identical. In contrast,
the intrinsic evidence supports the conclusion that the claimed floating diffusion layers are
interchangeable.
19
v. Silver Spring Networks, Inc., 815 F.3d 1314, 1320 (Fed. Cir. 2016). Construing "the first
active region" in a manner consistent with Collabo's proposed construction would require the
court to ignore portions of the claims and define the term in a manner inconsistent with both its
ordinary meaning and the intrinsic record. In accordance with Federal Circuit precedent, the
court may not rewrite "the first active region" to mean "any one of the plurality of corresponding
active regions" to give the term meaning. See ChefAm., Inc. v. Lamb-Weston, Inc., 358 F.3d
1371, 1374 (Fed. Cir. 2004) ("[C]ourts may not redraft claims, whether to make them operable ·
or to sustain their validity.").
5.
"the floating diffusion layer" ('026 patent, claims 1 & 9)
Collaho
"any one of the floating
diffusion layers
corresponding to at least one
of the photodiodes"
OmniVision
Indefinite
Court
"any one of the floating
diffusion layers
corresponding to at least
one of the photodiodes"
The court adopts Collabo's proposed construction of "the floating diffusion layer," which
is supported by the intrinsic record. The '026 patent specification describes an arrangement of
multiple photosensitive cells, each of which includes a photodiode, a transfer gate, a floating
diffusion layer section, an amplifier transistor, and a reset transistor. ('026 patent, col. 3 :34-49;
5:49-57; 11: 17-23) Consistent with the specification's description of an imaging device
containing numerous photosensitive cells, independent claims 1 and 9 recite a plurality of
photodiodes arranged in row and column directions on a semiconductor substrate, as well as "a
plurality of floating diffusion layers configured to temporarily store the transferred signal electri~
charge." ('026 patent, col. 14:8-9; 15:8-9) Claims 1 and 9 then identify the components of each
photosensitive cell, providing that "each of the floating diffusion layers" is provided for "at least
20
one of the corresponding photodiodes and at least one of the corresponding transfer gates."
('026 patent, col. 14:9-12; 15:9-12)
Subsequent references to the singular claim term "the floating diffusion layer" would be
understood by one of ordinary skill in the art to refer back to each of the plurality of floating
diffusion layers referenced earlier in the claim language. (' 026 patent, col. 14: 17-23; 15: 16-22)
Nothing in the specification or claim language suggests that the patent recites a variety of
distinguishable floating diffusion layers. Rather, the intrinsic record describes a multitude of
photosensitive cells, each of which contains a series of fungible circuit elements, including a
floating diffusion layer. ('026 patent, col. 1:28-33; 5:55-61) The consistent usage of"floating
diffusion layer" throughout the '026 patent enables a person of ordinary skill in the art to
ascertain the scope of the invention with reasonable certainty.
OmniVision contends that claims 1 and 9 are invalid for indefiniteness because the term
"the floating diffusion layer" lacks a proper antecedent basis. To provide a proper antecedent
basis, "a claim must introduce a given term using an indefinite article (e.g., 'a' or 'an') before
referring to it in definite form, using 'the' or 'said.'" Comcast Cable Commc 'ns, LLC v. Sprint
Commc 'ns Co., LP, 38 F. Supp. 3d 589, 616 (E.D. Pa. 2014) (citing Energizer Holdings, Inc. v.
Int'! Trade Comm 'n, 435 F.3d 1366, 1370 (Fed. Cir. 2006)). In the present case, OmniVision
alleges that it is unclear which of the plurality of floating diffusion layers is referenced by "the
floating diffusion layer," and cautions the court against rewriting the claim language. (7/12/17
Tr. at 153:19-154:17)
However, a failure to provide antecedent basis does not necessarily render a claim
indefinite if the scope of the claim would be reasonably understood by a person of ordinary skill
in the art. See Energizer Holdings, Inc. v. Int'! Trade Comm'n, 435 F.3d 1366, 1370-71 (Fed.
21
Cir. 2006) (upholding validity of claims despite lack of explicit antecedent basis because
intended scope of claim was reasonably ascertainable). "[A] patent is invalid for indefiniteness
if its claims, read in light of the specification delineating the patent, and the prosecution history,
fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention."
Nautilus, Inc. v. Biosig1nstruments, Inc., 134 S. Ct. 2120, 2124 (2014); see also Phillips, 415
F.3d at 1321 ("[T]he ordinary meaning of a claim term is its meaning to the ordinary artisan after
reading the entire patent."); Eon Corp. IP Holdings v. Silver Spring Networks, Inc., 815 F.3d
1314, 1320 (Fed. Cir. 2016). Consistent with the Supreme Court's holding in Nautilus and the
policy in favor of construing claims to preserve their validity, the court concludes that a person
of ordinary skill in the art would understand with reasonable certainty the scope of the invention.
See Vistan Corp. v. Fadei USA, Inc., 2012 WL 1496099, at *10 (N.D. Cal. Apr. 27, 2012)
("[C]laim constructions that invalidate patents are disfavored-if the scope of claims is
ambiguous, they should, if possible, be construed to preserve their validity.") (citing LiebelFlarsheim Co. v. Medrad, Inc., 358 F.3d 898, 914 (Fed. Cir. 2004)). OmniVision has not met its
burden of proving by clear and convincing evidence that the lack of antecedent basis leaves one
of ordinary skill in the art unable to discern the boundaries of the claim based on the intrinsic
record. See Nautilus, 134 S. Ct. at 2129-30; Wellman, Inc. v. Eastman Chem. Co., 642 F.3d
1355, 1366 (Fed. Cir. 2011).
V.
CONCLUSION
For the reasons set forth above, the disputed terms are construed as follows:
22
Claim Term
"pixel signal" ('895 patent, claims 1, 3, 5)
Court's Construction
"an electrical charge or voltage or current
indicative of the intensity of light incident on
the photoelectric portion of a pixel"
"two photosensitive elements share the same
floating diffusion element"
"every two of the unit pixel share a
corresponding one of the floating diffusion
portions" ('895 patent, claim 1)
"in adjacent rows of adjacent columns" ('895
patent, claim 1)
"contact hole" I "contact" (493 patent, claims
10 & 17; '880 patent, claim 1; '026 patent,
claims 1 & 9)
"contacts are aligned in a straight line" ('026
patent, claims 1 & 9)
"active region" ('493 patent, claims 10 & 17;
'880 patent, claim 1)
"positioned in rows that are next to each other
and in columns that are next to each other"
"opening for making electrical connection"
"contact holes are arranged along a single
straight line"
"a contiguous region of the substrate through
which charges can flow and where the gate,
source, and drain of each transistor is formed"
Indefinite
"the first active region" (' 493 patent, claims
10 & 17)
"the floating:diffusion layer" ('026 patent,
claims 1 & 9)
"any one of the floating diffusion layers
corresponding to at least one of the
photodiodes"
An Order consistent with this Memorandum Opinion shall issue.
Dated: August 25, 2017
AGISTRATE JUDGE
23
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?