STC.UNM v. Intel Corporation

Filing 159

MOTION STC.UNMS MOTION FOR CONSTRUCTION OF THE TRANSFERRING STEPS IN CLAIM 6 by STC. UNM. (Attachments: # 1 Exhibit A - Excerpts from B. Smith Testimony)(Pedersen, Steven)

UNITED STATES DISTRICT COURT
DISTRICT OF NEW MEXICO
STC.UNM,
Plaintiff,
v.
Civil No. 10-CV-01077-RB-WDS

INTEL CORPORATION,
Defendant.

STC.UNM’S MOTION FOR CONSTRUCTION OF
THE “TRANSFERRING” STEPS IN CLAIM 6
STC.UNM moves to add the two “transferring” claim terms to the list of terms for
construction by the Court. Since claim construction is viewed as an evolving process, it is proper
for the Court to construe later identified claim terms, in addition to the terms that were initially
identified by the parties. The Federal Circuit repeatedly counsels that trial courts can “engage in
rolling claim construction.” Conoco, Inc. v. Energy & Environment Int'l, L.C., 460 F.3d 1349,
1359 (Fed. Cir. 2006)1. Moreover, “[t]he claim construction process is often evolutionary rather
than static, and courts must continually be open to reexamination of claim construction up to and
including at trial in order to ensure that the construction ultimately relied upon by the fact finder

1

See also Pressure Prods. Med. Supplies v. Greatbatch Ltd., 599 F.3d 1308, 1316 (Fed. Cir.
2010) (“district courts may engage in a rolling claim construction, in which the court revisits and
alters its interpretation of the claim terms as its understanding of the technology evolves.”)
(citing Pfizer, Inc. v. Teva Pharms., USA, Inc., 429 F.3d 1364, 1377 (Fed. Cir. 2005); Utah Med.
Prods., Inc. v. Graphic Controls Corp., 350 F.3d 1376, 1381-82 (Fed. Cir. 2003) (holding that
the district court did not err in amending its claim construction during oral arguments for pretrial
motions nearly two years after the original construction); O2 Micro Int'l Ltd. v. Beyond
Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008) (”[w]hen the parties raise an actual
dispute regarding the proper scope of these claims, the court, not the jury, must resolve that
dispute.”).

1

is correct.” Sears Petroleum & Transp. Corp. v. Archer Daniels Midland Co., 2010 U.S. Dist.
LEXIS 142958, at * 21 (N.D.N.Y. 2010) (construing additional terms five years into the lawsuit,
and after summary judgment decided).
Because Intel’s narrow constructions for the words “parts of said first mask layer” and
“combined mask . . .” are designed to improperly limit claim 6 of its proper scope, STC.UNM
has consistently argued that those words should be construed as part of the larger phrase:
transferring said first pattern and said second pattern into said substrate using a
combined mask including parts of said first mask layer and said second
photoresist.
See Doc. 113, at 20, 22; and Doc. 133, at 14. Now, certain admissions made by Intel’s expert
show the inconsistency with Intel’s narrow constructions and the overall “transferring”
limitation. In short, but as may be explained in further detail in a supplemental brief, the
“transferring” steps in claim 6 are required to be broad enough to encompass a transferring
process called damascene which is part of claim 7. Claim 7 is “dependent” on claim 6, and thus
must be consistent therewith. See AK Steel Corp. v. Sollac, 344 F.3d 1234, 1242 (Fed. Cir. 2003)
(independent claims must be construed “at least as broad as the claims that depend from them”).2
But Intel’s own expert admitted during his deposition the second photoresist cannot be present
during the completion of the damascene process. Smith [Ex. A], at 206:23 – 207:2. Thus, Intel’s
narrow constructions, which require the second photoresist to be present during the second
transferring step are wrong, and should be rejected.

2

See also Phillips v. AWH Corp., 415 F.3d 1303, 1314-15 (Fed. Cir, 2005) (“Differences among
claims can also be a useful guide in understanding the meaning of particular claim terms. 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.”).

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By textually construing the “transferring” limitations, the Court will be assured that it is
providing a proper scope to the disputed terms. In this regard, claim construction is not meant to
change the scope of the claims but only to clarify their meaning. The Federal Circuit has
explained that “[t]he construction of claims is simply a way of elaborating the normally terse
claim language in order to understand and explain, but not to change, the scope of the claims.”
Embrex, Inc. v. Service Eng'g Corp., 216 F.3d 1343, 1347 (Fed. Cir. 2000).
Accordingly, STC.UNM requests the Court to add the “transferring” limitations to the list of
terms for construction, and receive supplemental briefing limited to those terms.3
Dated: November 16, 2011

Respectfully submitted,
/s/ Steven R. Pedersen
Rolf O. Stadheim
Joseph A. Grear
George C. Summerfield
Keith A. Vogt
Steven R. Pedersen
STADHEIM & GREAR, LTD.
400 N. Michigan Avenue, Suite 2200
Chicago, Illinois 60611
[phone]

Deron B. Knoner
KELEHER & MCLEOD, P.A.
201 Third Street NW, 12th Floor
PO Box AA
Albuquerque, New Mexico 87103
[phone]

Attorneys for Plaintiff STC.UNM
Certificate of Conference: The undersigned conferred with counsel for Intel regarding the relief
requested herein and was informed that Intel objects to the motion. /s/ Steven R. Pedersen
Certificate of Service: I hereby certify that on November 16, 2011, I caused the foregoing to be
electronically filed with the Clerk of the Court using the CM/ECF system which will send
notification of such filing via electronic mail to all counsel of record. /s/ Steven R. Pedersen

3

STC.UNM respectfully submits that the briefing format used for the previous terms would be
proper here as well. For example, initial briefs within 14 days of an order granting this motion,
and responses 10 days thereafter, limited to 6 and 4 pages, respectively.

3