STC.UNM v. Intel Corporation

Filing 209

MEMORANDUM OPINION AND ORDER by District Judge Robert C. Brack GRANTING 159 MOTION STC.UNMS MOTION FOR CONSTRUCTION OF THE TRANSFERRING STEPS IN CLAIM 6 (jn)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW MEXICO
STC.UNM,
Plaintiff,
vs.

No. 10-cv-1077 RB/WDS

INTEL CORPORATION,
Defendant.
MEMORANDUM OPINION AND ORDER
This matter is before the Court on Plaintiff STC.UNM’s Motion for Construction of the
“Transferring” Steps in Claim 6, filed November 16, 2011. (Doc. 159). Jurisdiction arises under
28 U.S.C. § 1338. The issue has been fully briefed and is ready for decision. Having considered
the submissions and arguments of counsel, relevant law, and being otherwise fully advised, the
Court GRANTS Plaintiff’s motion.
I.

Background
This matter arises from Defendant Intel Corporation’s (“Intel’s”) alleged infringement of

patent rights held by STC.UNM (“STC”), the patent arm of the University of New Mexico,
relating to photolithography techniques used in the manufacture of semiconductors. STC
specifically charges Intel with infringement of claim numbers 6 and 7 of United States Patent
No. 6,042,998 (“the ‘998 patent”), entitled “Method and Apparatus for Extending Spatial
Frequencies in Photolithography Images.” (Doc. 113 at 4, 10).
STC filed its Complaint on November 15, 2010. (Doc. 1). On March 2, 2011, United
States Magistrate Judge W. Daniel Schneider issued a Scheduling Order setting deadlines for the
parties’ exchange of terms to be construed, proposed constructions, and briefs in support thereof.

(Doc. 47) This scheduling order was subsequently modified by joint motion or agreement of the
parties on four separate occasions. (See docs. 75, 108, 128, & 142). The final briefing schedule
proceeded as follows:
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Exchange Claims Terms and Proposed Constructions due April 29, 2011 (Doc.
75);

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File Initial Claim Construction Brief due June 21, 2011 (Doc. 108);

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File Responsive Claim Construction Brief due July 25, 2011 (Doc. 108);

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File Reply Claim Construction Brief due October 7, 2011 (Docs. 128, 142).

STC now seeks to add two additional terms for construction and requests leave to submit
supplemental briefing limited to those terms. Intel objects, contending that STC’s request is a
“thinly-disguised effort” to offer new arguments on earlier-briefed claim terms, that these
arguments should have been presented in STC’s prior briefing, and that STC has failed to show
good cause for the Court to delay the progress of this case by ordering additional construction
that will make no difference to the end result. (Doc. 160 at 1).
II.

Discussion
Claims 6 and 7 of the ‘998 patent, with the currently disputed terms in italics and the

additional proposed terms for construction in bold, read:
6. A method for obtaining a pattern wherein the Fourier transform of said pattern
contains high spatial frequencies by combining nonlinear functions of intensity of at least
two exposures combined with at least one nonlinear processing step intermediate
between the two exposures to form three dimensional patterns comprising steps of:
coating a substrate with a first mask material and a first photoresist layer;
exposing said first photoresist layer with a first exposure[;]
developing said photoresist layer to form a first pattern in said first photoresist
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layer, said first pattern containing spatial frequencies greater than those in
a two dimensional optical intensity image imposed onto said photoresist
layer in said first exposure as a result of a nonlinear response of said first
photoresist layer;
transferring said first pattern into said first mask material, said first mask
material comprising at least one of SiO2, Si3N4, a metal, a polysilicon
and a polymer;
coating said substrate with a second photoresist;
exposing said photoresist with a second exposure[;]
developing said second photoresist layer to form a second pattern in said second
photoresist layer, said second pattern containing spatial frequencies
greater than those in a two dimensional optical intensity image imposed
onto said photoresist layer in said second exposure as a result of a
nonlinear response of said second photoresist layer;
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;
removing said first mask material and said second photoresist.

7. The method of claim 6 wherein said transferring step includes at least one of etching,
deposition and lift-off, and damascene.

STC asks the Court to construe the above-highlighted “transferring” language in order to
give appropriate scope to the disputed terms italicized in the two sections where “transferring”
appears. (Doc. 159 at 3). Specifically, STC argues that because Intel’s proposed constructions
for the words “parts of said first mask layer” and “combined mask. . .” “are designed to
improperly limit claim 6 of its proper scope . . . [these terms] should be construed as part of the
larger phrase,” including the “overall ‘transferring’ limitation.” (Doc. 159 at 2). According to
STC, certain admissions made by Intel’s expert during deposition testimony demonstrate an

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inconsistency between Intel’s “narrow constructions” and the overall “transferring” limitation,
which – in STC’s view – must encompass a transferring process called “damascene” listed in
claim 7.1 (Doc. 159 at 2). Thus, STC contends that textually construing the “transferring”
limitations will allow the Court to more accurately construe the contested terms. (Doc. 159 at 3).
Intel levies numerous arguments in opposition to STC’s motion. First, it contends that
STC has not shown good cause to further delay the progress of this case through additional claim
construction and supplemental briefing. It submits that “[o]nce notice of completion of briefing
is filed, the matters are deemed joined, and no further briefs are permitted unless the Court finds
good cause to allow them.” (Doc. 160 at 3) (citing Dingman v. Donjack Enters., Inc., Civ. No.
05-1278 WJ/WDS, 2007 WL 4618598 (D.N.M. Jan. 26, 2007)). The case Intel cites as
supporting this proposition, however, makes no mention of any “good cause” standard; it simply
states that parties are required to seek the Court’s permission prior to filing supplemental
memoranda. Dingman, 2007 WL 4618598, at *1. Intel may be alluding to Federal Rule of Civil
Procedure 16(b)(4), which requires that court scheduling orders be modified only for good cause
and with the judge’s consent. FED. R. CIV. P. 16(b)(4); see also D.N.M.LR-Civ. 16.1 (requiring
that modifications of deadlines in the Court’s scheduling orders require a showing of good cause
and Court approval). Here, although the briefing deadlines set in Judge Schneider’s scheduling
order have passed, granting STC’s motion will not interfere with case management deadlines
going forward because the Court has not yet set a Markman hearing on the construction issue.

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Because claim 7 is dependent on claim 6, and because independent claims must be
construed at least as broad as those that depend from them, STC argues that the “transferring”
steps in claim 6 must be broad enough to encompass damascene, which is explicitly listed in
claim 7. (Doc. 159 at 2).
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Further, there is no indication that STC was not diligent in bringing its motion; the Court accepts
STC’s explanation that it only realized it was necessary to construe the “transferring” steps in
claim 6 after Intel’s briefing raised arguments making the scope of these terms a significant
issue. In addition, “[i]t is recognized that courts have held multiple Markman hearings and
allowed parties to request additional claim construction [even] after construing claims.” Ecolab,
Inc. v. Paraclipse, Inc., No. 8:97CV304, 2008 WL 3413808, at *3 (D. Neb. Aug. 8, 2008) (citing
cases); see also Conoco, Inc. v. Energy & Env’t Int’l, L.C., 460 F.3d 1349, 1359 (Fed. Cir. 2006)
(“[D]istrict courts may engage in ‘rolling claim construction, in which the court revisits and
alters its interpretation of the claim terms as its understanding of the technology evolves.’ ”);
Sears Petroleum & Transp. Corp. v. Archer Daniels Midland Co., No. 5:03-CV-1120 (DEP),
2010 U.S. Dist. LEXIS 142958, at *21 n.11 (N.D.N.Y. Apr. 2, 2010) (“The 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 factfinder is correct.”)
Here, the Court has not yet construed the previously-submitted claim terms, discovery is
ongoing, and no trial date has been set. Intel offers no reason why it would be prejudiced by
additional claim construction apart from its having to bear the cost of further briefing and expert
discovery, which the Court does not find to be dispositive. (Doc. 160 at 4). See, e.g., Bylin v.
Billings, 568 F.3d 1224, 1230 (10th Cir. 2009) (considering a party’s motion to amend the
pleadings under Fed. R. Civ. P. 15 and noting that “the expenditure of time, money, and effort
alone is not grounds for a finding of prejudice.”) Finally, the parties have agreed on six terms
for construction to-date, and addition of the “transferring” steps in claim 6 would not render the

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Court’s task unmanageable.
In addition to Intel’s procedural objections, it argues that STC’s request is a “thinly
disguised” effort to reopen argument over the “combined mask” term, which the parties have
already briefed, and that further briefing will make no difference to the end result. In making
this argument, however, Intel fails to specifically contest the existence of a potential independent
dispute over the scopes of the “transferring” limitations in claim 6. By contrast, STC explicitly
states that the “transferring” steps are “key” terms whose meanings are “disputed.” (Doc. 163 at
2). The purpose of claim construction is to “determin[e] the meaning and scope of the patent
claims asserted to be infringed.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.
Cir. 1995) (en banc), aff’d 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996); see also
United States Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (“Claim
construction is a matter of resolution of disputed meanings and technical scope, to clarify and
when necessary to explain what the patentee covered by the claims, for use in the determination
of infringement.”). Although courts need not construe every claim offered for construction,
“when the parties raise an actual dispute regarding the proper scope of [the claims at issue], the
court, not the jury, must resolve that dispute.” O2 Micro Int’l Ltd. v. Beyond Innovation Tech.
Co., Ltd., 521 F.3d 1351, 1360 (Fed. Cir. 2008) (citing Markman, 52 F.3d at 979).
Intel’s response, despite offering numerous arguments against STC’s motion, tends to
support the proposition that a dispute may exist. For example, in arguing that further briefing
“will make no difference in the outcome because Intel’s constructions and Dr. Smith’s testimony
are fully consistent with the optional use of damascene processes recognized in claim 7,” Intel
offers an interpretation of the final “transferring” step of claim 6 that includes “damascene

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techniques” within its scope while omitting the “polishing” step of the damascene process.
(Doc. 150 at 5) (“As STC notes, Dr. Smith also recognized that the final polishing step of a
damascene process typically takes place after the photoresist has been removed, but that
polishing is done to a pattern that has already been transferred into the substrate.”) This
separation of “polishing” from “damascene techniques” within the final transferring step of
claim 6 arguably conflicts with STC’s proffered construction of “transferring” as: “for example,
by etching, deposition and-lift off [sic], or damascene (etching, deposition and polishing to
produce an inlaid structure) . . . .” (See Doc. 163 Exh. B at 3) (emphasis added). Although this
observation reflects only a surface reading of the terms which would likely evolve upon receipt
of further briefing, the parties’ submissions at least raise the possibility that the “transferring”
steps of claim 6 could be open to alternative meanings.
Both parties have an interest in ensuring that the Court construes material terms that are
in dispute, as claim construction “becomes the basis of the jury instructions, should the case go
to trial,” and is the “necessary foundation of meaningful appellate review.” AFG Indus., Inc. v.
Cardinal IG Co., Inc., 239 F.3d 1239, 1247 (Fed. Cir. 2001). The parties are therefore
encouraged to confer with one another regarding whether the “transferring” steps in claim 6 are
truly “material” and “in dispute” before submitting supplemental briefing to the Court. The
parties are also free to address these issues in their next round of claims construction briefing.
Should the Court ultimately find that the terms are material and in dispute, it will construe them
accordingly.
THEREFORE,
IT IS ORDERED that Plaintiff STC.UNM’s Motion for Construction of the

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“Transferring” Steps in Claim 6 (doc. 159) is GRANTED.
IT IS FURTHER ORDERED that the parties adhere to the following deadlines for
submission of the supplemental briefing:
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Exchange Proposed Constructions for “transferring” steps of claim 6 due May 23,
2012;

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File Supplemental Claim Construction Brief (6 pg. max.) due June 6, 2012;

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File Responsive Claim Construction Brief (4 pg. max.) due June 20, 2012.

ROBERT C. BRACK
UNITED STATES DISTRICT JUDGE

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