American Technical Ceramics Corp. et al v. Presidio Components, Inc.

Filing 136

MEMORANDUM AND ORDER. For the reasons set forth in the attached Memorandum and Order, the disputed claim term "terminations," as it is recited in the '547 Patent, shall be construed as "conductive structures arranged externally o n the device body." The parties are respectfully directed to confer and, within fourteen (14) days, submit a joint letter to the court stating how they intend to proceed in this action, including whether the parties seek to engage in any further settlement discussions, or whether the court should set a trial date. Ordered by Judge Kiyo A. Matsumoto on 11/2/2018. (Flores, Diego)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
----------------------------------X
AMERICAN TECHNICAL CERAMICS CORP.
and AVX CORPORATION,
Plaintiffs,

MEMORANDUM & ORDER

-against-

14-CV-6544(KAM)(GRB)

PRESIDIO COMPONENTS, INC.,
Defendant.
----------------------------------X
MATSUMOTO, United States District Judge:
Plaintiffs American Technical Ceramics Corporation
(“ATC”) and AVX Corporation (collectively, “ATC” or
“plaintiffs”) commenced this action against defendant Presidio
Components, Inc. (“defendant” or “Presidio”) on November 6,
2014.

(Complaint, ECF No. 1.)

Plaintiffs allege that defendant

makes and sell capacitors that infringe the following ATC
patents: United States Patent No. 6,144,547 (“the ‘547 Patent”),
United States Patent No. 6,337,791 (“the ‘791 Patent,” and
together with the ‘574 Patent, the “patents-in-suit”). 1
Plaintiffs seek a finding that Presidio willfully
infringed on the patents-in-suit, and injunctive relief

As explained in the court’s memorandum and order on the parties’ crossmotions for summary judgment, plaintiffs initially also accused defendant of
infringing on United States Patent No. 6,992,879 (the “‘879 Patent”). Since
the initiation of this action, however, the United States Patent and
Trademark Office has cancelled the ‘879 Patent in its entirety, and the court
has dismissed plaintiffs’ claims for infringement of the ‘879 Patent. (See
Summary Judgment Order, ECF No. 126, at 20-23.)

1

1

prohibiting Presidio from engaging in further infringement.
Plaintiffs also seek damages from the alleged infringement,
including attorneys’ fees and costs.

The court has previously

construed various terms in the patents-in-suit (see generally
Claim Construction Order (“Cl. Constr. Order”), ECF No. 79), and
has also considered and ruled on cross-motions for summary
judgment.

(Summary Judgment Order (“MSJ Order”), ECF No. 126.)

Presently before the court are the parties’ submissions for
claim construction of a single term, “terminations,” as recited
in the ‘547 Patent.
Background
Plaintiff ATC is a wholly owned subsidiary of
plaintiff AVX, and all parties manufacture electrical devices,
including capacitors.

(MSJ Order at 3.)

Capacitors are

electronic components that store and release energy within a
circuit.

(Id.)

They are used in a variety of electrical

systems, including consumer electronics.

(Id.)

Capacitors

generally consist of two parallel conductive (usually metal)
plates separated by a non-conductive insulating material, called
a “dielectric.”

(Id.)

This action relates to “multilayer ceramic capacitors”
(“MLCCs”), which are created through the combination of multiple
capacitors by stacking several layers of conductive and nonconductive/dielectric material.

(Id. at 3-4.)
2

All parties

manufacture and sell MLCCs.

(Id.)

Additionally, this action

was briefly stayed while the patents-in-suit underwent inter
partes review (“IPR”) proceedings, in which defendant
unsuccessfully challenged the validity of Claims 1 and 12 of the
‘547 Patent.

(Id. at 7-8.)

As noted above, earlier in this action, both parties
filed, and the court ruled on, motions for summary judgment.

As

is relevant here, defendant sought summary judgment that their
accused devices not infringe the ‘547 Patent.

(Id. at 3, 46.)

In seeking summary judgment of noninfringement as to the ‘547
Patent, defendant asserted that the accused products do not have
“substantially L-shaped terminations,” as required by the ‘547
Patent.

(Id. at 46-47.)
More specifically, defendant asserted that plaintiffs’

infringement theory is contingent on the accused products’
external electrodes, or surface pads, which are located on the
bottom of the accused product, forming part of the termination
structure and thereby constituting the lower, horizontal portion
of the “L” shape.

(Id.)

According to defendant, the surface

pads cannot be considered part of the termination structure, and
therefore must be disregarded in determining whether the
terminations are substantially L-shaped.

(Id.)

Plaintiffs

countered that the surface pads are part of the termination

3

structure, and therefore that summary judgment should be denied.
(Id. at 47.)
The court noted that determining which argument should
prevail requires an operable definition of “terminations,” and
that the Claim Construction Order had not addressed this term
because the parties had agreed that it, along with other terms
not addressed in the parties’ first claim construction
submissions, should be “given [its] plain and ordinary meaning.”
(Id. at 47-49 (citation omitted).)

The court also noted that no

party had suggested a plain and ordinary meaning or directed the
court to anything in the record that might aid in determining
the plain meaning of “terminations.”

(Id. at 49.)

Based on Federal Circuit precedent regarding the
relationship between claim construction and summary judgment,
the court declined to supply and apply its own plain and
ordinary meaning for “terminations” and denied summary judgment
without prejudice pending further claim construction of
“terminations.”

(Id. at 49-54.)

The instant briefing followed.

Legal Standard
I.

Claim Construction Generally
In order to protect effectively an inventor’s rights,

patents must describe the exact scope of an invention.

See

Markman v. Westview Instruments, Inc., 517 U.S. 370, 373 (1996)
(“[A] patent must describe the exact scope of an invention and
4

its manufacture to secure to [the patentee] all to which he is
entitled, [and] to apprise the public of what is still open to
them.” (alterations in quoted material) (internal quotation
marks and citation omitted)).

“It is well established that

determining infringement is a two-step process” whereby, the
court must first construe a patent’s claim limitations to define
the meaning and scope of the invention, and second, must compare
the accused device to the construed claims.

See Innova/Pure

Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d
1111, 1115–16 (Fed. Cir. 2004) (citations omitted).
“‘[T]he construction of a patent, including terms of
art within its claim,’ is not for a jury but ‘exclusively’ for
‘the court to determine.’”

Teva Pharmaceuticals USA, Inc. v.

Sandoz, Inc., 135 S. Ct. 831, 835 (2015) (quoting Markman, 517
U.S. at 390).

In deciding matters of claim construction,

district courts have discretion regarding the procedure by which
to reach a final determination.

See Ballard Med. Prods. v.

Allegiance Healthcare Corp., 268 F.3d 1352, 1358 (Fed. Cir.
2001) (“District courts have wide latitude in how they conduct
the proceedings before them, and there is nothing unique about
claim construction that requires the court to proceed according
to any particular protocol.

As long as the trial court

construes the claims to the extent necessary to determine

5

whether the accused device infringes, the court may approach the
task in any way that it deems best.”).
In addition, the court need only construe claims that
are “in controversy” and only “to the extent necessary to
resolve the controversy.”

Vivid Techs., Inc. v. Am. Sci. &

Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (citation
omitted); see also Ballard, 268 F.3d at 1358 (“If the district
court considers one issue to be dispositive, the court may cut
to the heart of the matter and need not exhaustively discuss all
the other issues presented by the parties.”).

Further, the

court is “not required to construe every limitation present in a
patent’s asserted claims,” but rather, the focus is on
“resolution of disputed meanings and technical scope . . . for
use in determination of infringement.

See O2 Micro Int’l Ltd.

v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir.
2008) (emphasis omitted) (citations omitted).
II.

Sources for Claim Construction
Courts must construe patent claims “objectively and

without reference to the accused device.”
F.3d at 803 (emphasis added).

Vivid Techs., 200

This means that courts must

“seek[] to accord a claim the meaning it would have to a person
of ordinary skill in the art at the time of the invention.”
Innova/Pure Water, Inc., 381 F.3d at 1116 (citations omitted).
In doing so, a court considers three primary sources within the
6

intrinsic evidence of record: (i) the language of the claims,
(ii) the specification, and (iii) the prosecution history.
Secure Web Conference Corp. v. Microsoft Corp., No. 13-CV2642(JG), 2014 WL 4954644, at *1 (E.D.N.Y. Oct. 2, 2014) (citing
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996)).
A.

Claim Language
First, the court “look[s] to the words of the claims

themselves, both asserted and non-asserted, to define the scope
of the patented invention.”

HowLink Global LLC v. Network

Commc’ns Int’l. Corp., 561 F. App’x 898, 905 (Fed. Cir. 2014)
(quoting Vitronics, 90 F.3d at 1582).

In making such a

determination, “[t]he words of the claim are the controlling
focus.”

Secure Web, 2014 WL 4954644, at * 2 (citing Digital

Biometrics, Inc., v. Identix, Inc., 149 F.3d 1335, 1344 (Fed.
Cir. 1998)).
In general, the language of a claim is given its
ordinary and customary meaning unless a distinct definition is
employed in the specification or prosecution history.

See

Digital Biometrics, 149 F.3d at 1344 (“The written description
is considered, in particular to determine if the patentee acted
as his own lexicographer, as our law permits, and ascribed a
certain meaning to those claim terms.

If not, the ordinary

meaning, to one skilled in the art, of the claim language
7

controls.” (citing York Prods., Inc. v. Central Tractor Farm &
Family Ctr., 99 F.3d 1568, 1572 (Fed. Cir. 1996))).
The ordinary and customary meaning of a claim term is
that which one of “skill in the art at the time of the
invention” would understand.

Innova/Pure Water, 381 F.3d at

1116 (citations omitted); see also InTouch Techs, Inc. v. VGO
Commc’ns Inc., 751 F.3d 1327, 1339 (Fed. Cir. 2014) (“Generally,
a claim term is given the ordinary and customary meaning as
understood by a person of ordinary skill in the art at the time
of invention.” (citation omitted)); Interactive Gift Exp., Inc.
v. Compuserve Inc., 256 F.3d 1323, 1332 (Fed. Cir. 2001)
(“Throughout the construction process, it is important to bear
in mind that the viewing glass through which the claims are
construed is that of a person skilled in the art.” (citations
omitted)).
In interpreting claim terms, courts have applied the
doctrine of “claim differentiation.”

This doctrine “stems from

the common sense notion that different words or phrases used in
separate claims are presumed to indicate that the claims have
different meanings and scope,” and creates a “presumption that
two independent claims have different scope when different words
or phrases are used in those claims.”

Seachange Int’l, Inc. v.

C-COR, Inc., 413 F.3d 1361, 1368-69 (Fed. Cir. 2005) (internal
quotation marks and citations omitted.)
8

The Court of Federal

Claims has applied this doctrine in declining to “infer that two
different words within a claim . . . have the same meaning.”
TDM Am., LLC v. United States, 85 Fed. Cl. 774, 794 (2009)
(citing Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361,
1369 (Fed. Cir. 2007)).
Claim differentiation, however, is “a guide, not a
rigid rule.” Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1538
(Fed. Cir. 1991) (quoting Autogiro Co. of Am. v. United States,
384 F.2d 391, 404 (Ct. Cl. 1967)); accord Marine Polymer Techs.,
Inc. v. HemCon, Inc., 672 F.3d 1350, 1359 (Fed. Cir. 2012)
(citations omitted).

Accordingly, it “is not as strong across

related patents as it would be if the different claim
limitations appeared in the same patent.”

Clare v. Chrysler

Grp. LLC, 819 F.3d 1323, 1330 (Fed. Cir. 2016).
B.

Specification
Next, the court looks at a patent’s specification, as

“[c]laims must be read in view of the specification, of which
they are a part.”

Markman v. Westview Instruments, Inc., 52

F.3d 967, 979 (Fed. Cir. 1995) (citations omitted), aff’d, 517
U.S. 370 (1996).

“The specification contains a written

description of the invention which must be clear and complete
enough to enable those of ordinary skill in the art to make and
use it.”

Vitronics, 90 F.3d at 1582.

Consequently, “the

specification is always highly relevant to the claim
9

construction analysis,” “is the single best guide to the meaning
of a disputed term,” and is “[u]sually . . . dispositive.”

Id.

In setting out a clear and complete written
description, a patent’s specification may also include a
particular definition of a term that supersedes the term’s
“plain and ordinary meaning.”

See Stryker Corp. v. Zimmer,

Inc., 837 F.3d 1268, 1272 (Fed. Cir. 2016) (noting exception to
the general rule that courts look to terms’ plain and ordinary
meanings “when a patentee sets out a definition and acts as her
own lexicographer” (citations omitted)).
Therefore, the specification may assist in the court’s
determination of whether the inventor intentionally used any
terms in the claims in a manner inconsistent with their ordinary
meaning; however, this intention must be clear.

See Vitronics,

90 F.3d at 1582 (“[A] patentee may choose to be his own
lexicographer and use terms in a manner other than their
ordinary meaning, as long as the special definition of the term
is clearly stated in the patent specification or file history.”
(citations omitted)).
Additionally, where a specification discloses an
embodiment, a claim construction that renders the embodiment
outside the scope of the claim “is rarely, if ever, correct and
would require highly persuasive evidentiary support.”
1583 (citations omitted).

Id. at

Further, “it is improper to read
10

limitations from a preferred embodiment described in the
specification – even if it is the only embodiment – into the
claims absent a clear indication in the intrinsic record that
the patentee intended the claims to be so limited.”

Liebel-

Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir.
2004) (citations omitted).
C.

Prosecution History
Third, the court may consider the prosecution history

of the patent, if it is in evidence.

Phillips v. AWH Corp., 415

F.3d 1303, 1317 (Fed. Cir. 2005) (citing Markman, 52 F.3d at
980); accord Amhil Enterprises Ltd. v. Wawa, Inc., 81 F.3d 1554,
1559 (Fed. Cir. 1996) (“The prosecution history, in addition to
being used while considering the factual issue of infringement
and whether prosecution history estoppel places any limitations
on what infringes a claim, should also be used when considering
the legal issue of proper claim construction.” (citations
omitted)).

The prosecution history contains a complete record

of all the proceedings before the Patent and Trademark Office,
including any express representations made by the applicant
regarding the scope of the claims.

As such, the record before

the Patent and Trademark Office is often of critical
significance in determining the meaning of the claims.
Markman, 52 F.3d at 980.

11

See

Importantly, “[t]he prosecution history limits the
interpretation of claim terms so as to exclude any
interpretation that was disclaimed during prosecution.”
Southwall Tech., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576
(Fed. Cir. 1995) (citations omitted).

However, “[a]bsent a

clear disavowal or contrary definition in the specification or
the prosecution history, the patentee is entitled to the full
scope of its claim language.”

Home Diagnostics, Inc. v.

LifeScan, Inc., 381 F.3d 1352, 1358 (Fed. Cir. 2004).
Accordingly, a party asserting prosecution history
disclaimer has the “burden of proving the existence of a ‘clear
and unmistakable’ disclaimer that would have been evident to one
skilled in the art.”

Trivascular, Inc. v. Samuels, 812 F.3d

1056, 1063-64 (Fed. Cir. 2016) (citation omitted).
D.

Extrinsic Evidence
Finally, although it is well-settled that courts

should look primarily to the intrinsic evidence of record in
resolving a claim construction dispute, extrinsic evidence may
be considered when ambiguity remains after consulting the
intrinsic evidence.

Vitronics, 90 F.3d at 1583.

Extrinsic

evidence has been defined to include evidence external to the
patent and prosecution history, such as expert testimony,
inventor testimony, dictionaries, and relevant treatises or
articles.

See Secure Web, 2014 WL 4954644, at *2 (citing
12

Phillips, 415 F.3d at 1317); accord Vitronics, 90 F.3d at 1584
(citations omitted).
“[E]xtrinsic evidence in general, and expert testimony
in particular,” however, “may be used only to help the court
come to the proper understanding of the claims; it may not be
used to vary or contradict the claim language.”
F.3d at 1584 (citing Markman, 52 F.3d at 980).

Vitronics, 90
Further,

“extrinsic evidence is ‘less significant than the intrinsic
record in determining the legally operative meaning of claim
language.’”

Secure Web, 2014 WL 4954644, at *2 (quoting

Phillips, 415 F.3d at 1317).

Consequently, in permitting

consideration of extrinsic evidence, “[t]he Federal Circuit has
cautioned courts not to place too much reliance on extrinsic
evidence and too little reliance on intrinsic sources.”

Id. at

*2 (citing Phillips, 415 F.3d at 1320).
Discussion
The court will construe the term “terminations” as
recited in the ‘547 Patent after consideration of the parties’
submissions at the court’s request.
at this time.

No other terms are at issue

Plaintiffs assert that “terminations” should be

construed as “conductive structures arranged externally on the
device body.”

(E.g., Joint Disputed Claim Terms Chart, ECF No.

129, at 1.)

13

In briefing the instant construction dispute,
defendant initially asserted that “terminations” should be
construed as a “layer covering a portion of the device body for
providing electrical and mechanical connection to the device’s
conductive patterns.”

(Id.)

However, in response to

plaintiffs’ argument that a termination can include more than
one layer, defendant has proposed that “terminations” be
construed as “structures covering a portion of the device body
for providing electrical and mechanical connection to the
device’s conductive patterns / electrodes.”

(Defendant’s Claim

Construction Brief (“Def. Mem.”), ECF No. 131, at 4.)
Based on their proposed constructions, the parties
agree that terminations are (i) structures that are (ii)
conductive and (iii) external to the capacitor device body.
Both parties’ proposed constructions expressly refer to the
terminations as structures, and clearly indicate that
terminations are conductive.

Further, although defendant does

not expressly state that terminations are “external” to the
capacitor body, defendant asserts that terminations “cover[] a
portion of the device body,” thus conceding that the
terminations are external to the device body.
added).)

(Id. (emphasis

Consequently, the court need only determine whether

the additional purported characteristics of terminations set
forth in defendant’s proposed construction, i.e., that
14

terminations are “for providing electrical and mechanical
connection to the device’s conductive patterns / electrodes,”
represent a proper construction of the ‘547 Patent.

For the

reasons set forth below, the court respectfully rejects
defendant’s proposed construction, and adopts plaintiffs’
proposed construction.
I.

Intrinsic Evidence
A.

Claim Language
The court begins, as it must, with the language of the

relevant claims.

See Vitronics, 90 F.3d at 1582 (noting that

claim construction inquiry begins with “the words of the claims
themselves”).

Here, the word “terminations” appears in the

disputed claims 1 and 12 of the ‘547 Patent.

Claim 1 claims, in

relevant part:
A thin film capacitor device for mounting to a
surface, said capacitor device comprising a
device body having small dimensions in length,
width and height, and having substantially Lshaped terminations located thereon with portions
of said terminations extending over a bottom
surface of said device body and negligibly over a
top surface of said device body, said device body
including:
an insulating substrate having a top surface and
a bottom surface;
a first conductive pattern located above said top
surface of said substrate and defining a first
polarity capacitor plate;
a dielectric layer located on top of said first
conductive pattern;
15

a second conductive pattern located on said
dielectric layer, said second conductive pattern
defining a second capacitor plate in registry
with said first capacitor plate; and
a planar cover layer located above said second
conductive pattern.
(‘547 Patent at 6:13-32 (emphasis added).)
Claim 12 of the ‘547 Patent claims
A capacitor device for mounting to a surface,
said capacitor device comprising:
a device body of a small size no greater than
0402 and a nominal height of no greater than
about 0.40 mm;
said device body having a capacitor structure
located therein, said capacitor structure being
formed of at least one first polarity electrode
and at least one second polarity electrode
separated by an interposing layer of dielectric;
and
substantially L-shaped terminations located on
opposite end surfaces of said device body, with
portions of said terminations extending over a
bottom surface of said device body and negligibly
on a top surface of said device body.
(‘547 Patent at 6:62-7:8(emphasis added).)
Although the foregoing claim language establishes that
terminations are external to the capacitor device body, neither
claim 1 nor claim 12 expressly supports defendant’s proposed
construction, as neither claim indicates that terminations
provide electrical and mechanical connection to the capacitor
device’s conductive patterns and/or electrodes.

16

Further, defendant’s only argument in support of its
proposed construction based on the language of the claims is
unpersuasive.

Defendant notes that the ‘547 Patent “claims

‘terminations’ and, separately, ‘conductive’ patterns.”

(Def.

Mem. at 22; see also ‘547 Patent at 6:13-32 (Claim 1).)
According to defendant, the separate references to
“terminations” and “conductive” patterns make clear that
terminations are distinct from other conductive structures in
the capacitor device.

(Id.)

There is no dispute, however, that terminations are
not the only conductive structures on or in the capacitor
devices disclosed by the ‘547 Patent.

As the court observed in

the prior claim construction order, the patents-in-suit relate
to “multilayer ceramic capacitors,” which “are created . . . by
stacking several layers of conductive and non-conductive (i.e.,
dielectric) material.”
added).)

(Cl. Constr. Order at 2 (emphasis

Thus, the court agrees that “terminations” are not the

only conductive structures disclosed in the ‘547 Patent.

From

the conclusion that the ‘547 Patent discloses non-termination
conductive structures, it cannot also be concluded that
terminations are “for providing electrical and mechanical
connection to the device’s conductive patterns / electrodes,” as
defendant contends.

Consequently, the court rejects defendant’s

17

contention that the claim language supports this aspect of
defendant’s proposed construction.
B.

Specification
The court next considers the patent’s specification,

upon which the parties rest the bulk of their arguments
regarding the language of the ‘547 Patent.

As is relevant here,

the ‘547 Patent notes a typical manufacturing process by which
“thin film” techniques are used to manufacture a “larger wafer”
out of which “many” capacitors are made (‘547 Patent at 4:1016), and describes a “novel method of applying terminations to
the individual capacitors of the wafers.”

(Id. at 4:38-40.)

The ‘547 Patent’s specification contains the following
diagram, in which the “substantially L-shaped terminations” are
labeled 16 and 18:

18

(‘547 Patent at 1 (circular markings added); see also ‘547
Patent Fig. 3 (same diagram).) 2
Regarding the application of terminations to the
device body, the ‘547 Patent’s specification describes a process
by which a “series of parallel cuts” are made in a completed
wafer, producing a “series of capacitor array strips” with
“channels” between them.

(Id. at 4:47-51.)

A “shadow mask,”

which “includes parallel masking members,” is then “placed over
the series of array strips,” and the “main (principal) and
bottom land portions of the terminations are applied in [a]
single sputtering run.”

(Id. at 4:55-63.)

The ‘547 Patent further states that the sputtering
will “[p]referably” involve the “deposition of two layers, such
as Cr and Cu,” i.e. chromium (Cr) and copper (Cu), and that
“[a]n electroless nickel coating from NiB composition,” i.e.
nickel (Ni) and boron (B), “may then be applied to form a
barrier layer before solder application.”

(Id. at 4:63-5:3).

Additionally,
[a]fter the terminations are applied, the array
strips are diced in a second direction,
perpendicular to the first direction, to yield
the individual capacitors 10. Referring to FIG.
For additional context, in Figure 3 as explained in column 3, lines 3
through 42 of the ‘547 Patent, the capacitors’ internal electrodes, which
develop capacitance and thereby enable the capacitor to store and release
energy, are labeled 40 and 42. The layer labeled 38 is a glaze layer, and
the layer labeled 48 is a glue or epoxy layer. Finally, the layer labeled 44
is a dielectric, or non-conductive layer between the capacitor’s internal
electrodes.

2

19

5D, capacitors 10 are then removed from carrier
72 by dissolution or ungluing of the temporary
glue. . . . A barrel plating or other soldering
process of nickel and SnPb may then be employed.
(Id. at 5:4-11.) 3
The ‘547 Patent’s specification also contains the
following table (“Table II”), which “sets forth various details
of a preferred termination structure in an exemplary . . .
capacitor:”

(‘547 Patent at 5:12-27.)
“Sn” is the chemical symbol for tin, and “Pb” is the
chemical symbol for lead.

Thus, the nickel “Barrier II” layer

and tin-lead “Solder” layers in Table II correspond to the
“barrel plating or other soldering process of nickel and SnPb”
Figures 5C and 5D, which illustrate portions of the process for
creating array strips and dicing the strips into individual capacitors, are
reproduced here for context:
3

Figure 5C also depicts the shadow mask/masking member (84), and the
parallel cuts are also depicted. (‘547 Patent at 4:55-60.)

20

referenced at lines 10-11 of column 5 of the ‘547 Patent, which
are excerpted above.
Defendant makes several arguments in support of its
proposed construction of “terminations” based on the foregoing
aspects of the specification, but none of defendant’s arguments
are convincing.

Most notably, defendant asserts that the ‘547

Patent “expressly excludes external plating, one of many types
of conductive structures arranged externally on the device body,
from ‘terminations.’”

(Def. Mem. at 20.)

According to

defendant, the ‘547 Patent “defin[es] terminations (including
the barrier layer and solder application described in T[able]
II), and then explain[s] that after the terminations are
applied, only then is plating employed.”

(Id. (emphasis in

quoted material) (citing ‘547 Patent at 5:1-27 and Declaration
of Dr. Michael Randall, Ph.D. in Support of Defendant’s Brief
(“Randall Decl.” or the “Randall Declaration”), Def. Ex. CG, ECF
No. 133-4, ECF pp. 70-137 of 260, ¶¶ 28, 61).)

Consequently,

according to defendant, because the ‘547 Patent discloses an
external conductive structure other than terminations,
plaintiffs’ proposed construction cannot be correct.
Defendant, however, does not point to any language in
the ‘547 Patent that expressly excludes plating from the
termination structure, because no such language exists.
Instead, defendant asserts that the ‘547 Patent “describes the
21

application of the terminations, after which a series of cuts
are made to create individual chips.”

(Def. Mem. at 20

(emphasis in quoted material) (citing ‘547 Patent at 1:65-2:2,
5:31-34).)

According to defendant, “[b]arrel plating cannot be

employed until after the individual chips are created” (id.
(citing Randall Decl. ¶ 29)), and consequently, because the
terminations are applied before individual chips are created,
the plating cannot be part of the termination.
Further, according to defendant, the ‘547 Patent
“distinguishes” the termination application process it discloses
“from termination by dipping, and in doing so acknowledges that
a termination can be dipped, but does not involve the external
plating process.”

(Id. at 20-21 (citing ‘547 Patent at 3:34-36

and Randall Decl. ¶ 30).)

Defendant also submits that in light

of the purported distinction between termination by dipping and
external plating, “a person of skill in the art understands that
the ‘547 [P]atent makes it repeatedly clear that external
plating . . . is not part of the termination, but is employed
after terminations are applied.”

(Id. at 21 (citing Randall

Decl. ¶¶ 29-30).)
Defendant’s contention that external plating is an
external conductive structure that is not part of the
termination structure does not withstand scrutiny.

Most

importantly, defendant acknowledges, but wholly fail to address,
22

the ‘547 Patent’s statement that Table II sets forth the details
of a “preferred termination structure in an exemplary
capacitor,” and Table II’s inclusion of a nickel “Barrier II”
layer and a tin-lead, or SnPb, “Solder” layer.

(Id. at 23-24.)

Thus, the ’547 Patent’s specification very clearly includes the
plating layers that are applied after individual chips are
created, and which defendant contends are not part of the
termination, in a table that describes a “preferred termination
structure in an exemplary capacitor.”
Additionally, although defendant suggests that the
‘547 Patent indicates that the terminations it discloses are
applied exclusively by sputtering, the specification makes clear
that the sputtering process it describes results in the
application of only “portions of the terminations.”
Patent at 4:55-63.)

(‘547

Thus, other portions of the terminations

can presumably be applied by other processes, such as barrel
plating.
Further, defendant does not explain the basis for its
contention that plating layers are not part of the termination
structure based on the ‘547 Patent’s purported distinction
between terminations applied by sputtering and terminations
applied by dipping.

As plaintiffs point out, although the ‘547

Patent describes a manufacturing process, it is “directed to ‘a
structurally complete invention.’”
23

(Pl. Mem. at 3-4 (emphasis

omitted) (quoting Cl. Constr. Order at 15).)

Moreover, in

setting forth a structurally complete invention, the ‘547 Patent
clearly contemplates that plating layers are part of the
termination structure.

In sum, defendant’s reading of the ‘547

Patent as excluding plating layers from the termination
structure is untenable in light of the clear language of the
specification, including Table II.
Defendant also contends that the ‘547 Patent describes
“orientation indicia,” which are “another type of conductive
structure arranged externally on the device body” but are not
“terminations.” (Def. Mem. at 21.)

According to defendant, this

also weighs against plaintiffs’ contention that all external
conductive structures are terminations.
Defendant does not explain what orientation indicia
are, 4 but at a deposition, defense counsel questioned plaintiffs’
expert, Dr. Shanfield, regarding orientation indicia. (See
generally Shanfield Dep., Def. Ex. CH, ECF No. 133-4, ECF pp.
138-89 of 260, at ECF pp. 155-56, Dep. pp:ll. 66:23-72:22.)

Dr.

Shanfield testified that he is “in general” familiar with

Defendant’s brief cites to paragraph 31 of the Randall Declaration
(Def. Mem. at 6-7, 21), but that and the following paragraph do not explain
what orientation indicia are. (See Randall Decl. ¶¶ 31-32.) Instead, the
relevant paragraphs contain only a conclusory assertion that orientation
indicia are “conductive structures arranged externally on the device body,”
without further explanation. (Id.)
4

24

products that have orientation marks or indicators on them, and
stated that
[i]n some types of capacitors, you have a
positive or a negative terminal, because they’re
meant to function with a positive voltage on one
terminal and a negative voltage on the other, so
there would . . . be some kind of indication of
that on the capacitor.
(Id. at 67:19-68:7.)
Nothing in Dr. Shanfield’s testimony, or any other
intrinsic or extrinsic evidence put before the court, indicates
that orientation marks are a “conductive structure.”

Instead,

Dr. Shanfield’s testimony suggests that orientation indicia are
not three-dimensional structures, but are instead merely
markings that indicate the intended polarity associated with a
capacitor’s terminal.

Further, nothing in Dr. Shanfield’s

testimony or in the record suggests that orientation indicia are
conductive.

Accordingly, defendant’s premise, that orientation

indicia are “another type of conductive structure” that are not
terminations (Def. Mem. at 21), fails.

Defendant’s bare and

unsupported assertions do not establish that that orientation
indicia are non-termination external conductive structures, or
that plaintiffs’ proposed construction is consequently
incorrect.
Finally, defendant asserts that the ‘547 Patent is
“entirely silent regarding any other externally arranged

25

structures,” that is, externally arranged structures other than
plating and orientation indicia.

(Def. Mem. at 21.)

According

to defendant, because the ‘547 Patent “does not describe any
other externally arranged conductive structures, for example
external electrodes, . . . a claim that includes those
structures as ‘terminations’ is invalid for lack of a written
description.”

(Id.) 5

This argument does not make sense.

The court finds

that the ‘547 Patent includes as terminations all externally
arranged conductive structures.

Nothing in the ‘547 Patent’s

specification suggests that the ‘547 Patent discloses external
conductive structures that are not terminations.

Consequently,

the ‘547 Patent’s language does not indicate that plaintiffs’
proposed construction of the term “terminations” is incomplete.
Finally, it is unclear how a failure to exclude particular
external conductive structures that are not otherwise discussed
or identified in the ‘547 Patent from the definition of
“terminations” could, in and of itself, render the ‘547 Patent
invalid for lack of a written description.

The parties have submitted extensive argument to the court regarding
whether the “external electrodes” on defendant’s accused products constitute
part of the termination structure. (See MSJ Order at 46-48 (discussing
parties’ arguments).) Thus, defendant’s reference to “external electrodes”
raises the possibility that defendant wishes to have the court consider the
accused products in construing terminations, which would be improper. See
Vivid Techs., 200 F.3d at 803 (“[C]laims are construed objectively and
without reference to the accused device.”).

5

26

C.

Prosecution History
Regarding the ‘547 Patent’s prosecution history, the

parties agree that U.S. Patent No. 5,569,880 (the “‘880 Patent,”
also referred to as “Galvagni” in the parties’ briefs), issued
to Galvagni et al., was addressed in the prosecution of the ‘547
Patent and during the IPR review process that took place during
the pendency of this action.
22.)

(See Pl. Mem. at 8; Def. Mem. at

Defendant also notes that the ‘880 Patent “describes

conductive pads or terminal pads located on the bottom surface,
and as portions of the termination.”

(Def. Mem. at 22 (citing

‘880 Patent, Def. Ex. BZ, ECF No. 133-3, ECF pp. 340-45, at
2:64-65, 6:46-48; Randall Decl. ¶ 66.) 6
Citing an “Examiner’s Amendment” produced during the
‘547 Patent’s initial prosecution, defendant asserts that
“during the prosecution history of the ‘547 [P]atent, these
‘bottom lands’ and ‘mounting lands’ were eliminated from
‘terminations.’”

(Id. (citing Def. Ex. BW, ECF No. 133-3, ECF

pp. 1-107, at ECF p. 86); see also id. at 24 (same, and
asserting that “any reference to ‘pads’” was also eliminated in
the ‘547 Patent’s prosecution).)
According to defendant, the Examiner’s Amendment
establishes that “bottom lands” and “mounting lands” cannot be

The ‘880 Patent is also annexed as Exhibit 4 to plaintiffs’ opening
claim construction brief, and is docketed at ECF No. 130-4.

6

27

part of the termination structure.

(Def. Mem. at 24.)

Defendant does not expressly argue “prosecution history
disclaimer” in its memorandum of law.

Nevertheless, the court

will consider defendant as having made a prosecution history
disclaimer argument.

“[A] party seeking to invoke prosecution

history disclaimer bears the burden of proving the existence of
a ‘clear and unmistakable’ disclaimer that would have been
evident to one skilled in the art.”

Trivascular, 812 F.3d at

1063–64 (citing Elbex Video, Ltd. v. Sensormatic Elecs. Corp.,
508 F.3d 1366, 1371 (Fed. Cir. 2007)).

Here, defendant fails to

meet its burden to show that plaintiffs clearly and unmistakably
disclaimed “bottom lands” and “mounting lands” as falling within
the meaning of “terminations.”
As plaintiffs point out, the Examiner’s Amendment
replaced the term “mounting lands” with the term “portions.”
More specifically, the language in what is now claim 12
originally claimed “substantially L-shaped terminations located
on opposite end surfaces of said device body, with mounting
lands of said terminations located on a bottom surface of said
device body and with lands only negligibly on a top surface of
said device body.”

(Examiner’s Amendment, Def. Ex. BW, ECF No.

133-3, at ECF p. 86 (the bold type added by the court indicates
language subsequently deleted by the Examiner’s Amendment).)
Pursuant to the Examiner’s Amendment, the relevant language was
28

rewritten as “substantially L-shaped terminations located on
opposite end surfaces of said device body, with portions of said
terminations extending over a bottom surface of said device body
and negligibly on a top surface of said device body.”

(Id.

(emphasis added to indicate new language).)
The foregoing alterations make readily apparent that
the Examiner’s Amendment actually broadened the scope of claim
12; thus, defendant’s disclaimer argument fails.

Moreover, the

Examiner’s Amendment indicates that the portions of the
termination structure that extend over the bottom surface, and
negligibly over the top surface, of the capacitor device are not
limited to “lands” or “mounting lands.”

Consequently, not only

does defendant’s disclaimer argument find no support in the
Examiner’s Amendment, the Examiner’s Amendment affirmatively
weighs against defendant’s proposed construction by suggesting
that defendant’s effort to limit the functions that a
“termination” may serve is not consistent with the ‘547 Patent.
II.

Extrinsic Evidence
Persuasive extrinsic evidence before the court weighs

in favor of plaintiffs’ contention that the court need not
construe “terminations” as structures that provide “electrical
and mechanical connection” to the capacitor device’s “conductive
patterns/electrodes.”

Specifically, at his deposition,

29

defendant’s expert, Dr. Randall, conceded that terminations need
not connect to capacitors’ internal electrodes.
Dr. Randall was presented with the below diagrams,
which are taken from his declaration:

Randall Decl., ECF No. 133-4,
ECF pp. 70-137 of 260, ¶ 54

Randall Decl., ECF No. 133-4,
ECF pp. 70-137 of 260, ¶ 56

Dr. Randall admitted that the capacitor on the right,
from paragraph 56 of his report, has two terminations, and also
has two “floating” electrodes that do not electrically and
mechanically connect to any termination.
33, ECF No. 135-2, at 593:14-594:2.)

(Randall Dep., Pl. Ex.

Dr. Randall’s admission

makes clear that terminations need not provide “electrical and
mechanical connection” to internal electrodes in all capacitors.
Instead, whether terminations provide electrical and/or
mechanical connection to internal electrodes depends on the
capacitor in question and, as discussed above, nothing in the
intrinsic evidence suggests that the ‘547 Patent requires that
terminations provide such connection.

30

Further, as the Federal Circuit has explained,
extrinsic evidence “may not be used to vary or contradict the
claim language[,] [n]or may it contradict the import of other
parts of the specification.”
(citations omitted).

Vitronics, 90 F.3d at 1584

As discussed above, the clear import of

Table II is that plating constitutes part of the termination
structure.

Consequently, to the extent defendant seeks to rely

on extrinsic evidence to establish that plating is not part of
the termination structure, the court respectfully rejects
defendant’s arguments.
Moreover, defendant’s extrinsic evidence is
unconvincing.

Defendant’s claim construction brief refers and

cites to numerous patents that defendant contends establish that
capacitors may have a number of external conductive structures
that are not terminations.

(See Def. Mem. at 2-3, 16-17

(referring to, but not citing, the ‘791 Patent, and citing
numerous other United States Patents).)

For instance, defendant

cites to patents that disclose external conductive structures
including “resistors printed on the surface,” “a conductive
trace on the surface of the capacitor . . . between the third
termination and the first termination,” and a “top electrode.”
(Def. Mem. at 16-17 (citing, among others, U.S. Patent No.
9,779,874, Def. Ex. F, ECF No. 131-3, ECF pp. 38-50 of 117, at
9:67-10:56 (external printed resistors); U.S. Patent No.
31

9,287,844, Def. Ex. N, ECF No. 131-4, ECF pp. 1-17 of 133,
Abstract and at 2:5-38, 4:38-6:37 (conductive trace on surface
between first and third terminations); U.S. Patent 5,264,983,
Def. Ex. P, ECF No. 131-4, ECF pp. 30-35 of 133, Abstract and at
1:60-66, 2:17-25 (top electrode).)
This line of argument ignores that the claim
construction inquiry is as to the meaning of “terminations” as
it is used in the ‘547 Patent, not as it is used in any other
patent.

As the Federal Circuit has explained, “[a] particular

term used in one patent need not have the same meaning when used
in an entirely separate patent.”

Medrad, Inc. v. MRI Devices

Corp., 401 F.3d 1313, 1318 (Fed. Cir. 2005); see Maytag Corp. v.
Whirlpool Corp., 95 F. Supp. 2d 888, 893 (N.D. Ill. 2000)
(observing that “a patentee may choose to use the same word in
different ways in different patents (part of the conventional
wisdom that a patentee may be his or her own lexicographer),”
but noting the use of a similar term in another patent by same
patentee).

Consequently, “the manner in which the term is used

in the patent may dictate a definition that differs from the
definition that would be given to the same term in a different
patent with a different specification or prosecution history.”
Medrad, 401 F.3d at 1318 (citation omitted); see also Young
Dental Mfg. Co. v. Q3 Special Prods., Inc., 112 F.3d 1137, 1143
(Fed. Cir. 1997) (“The specification that is relevant to claim
32

construction is the specification of the patent in which the
claims reside.”).
Here, as the court has discussed at length, nothing in
the ‘547 Patent discloses the existence of any external
conductive structures other than terminations.

Thus,

plaintiffs’ proposed construction of “terminations” is not
inconsistent with the ‘547 Patent’s specification.

The

potential inconsistency of plaintiffs’ proposed construction
with other patents’ specifications, which are not at issue in
the instant action, does not alter this conclusion.
Defendant also cites various reference materials.
These materials, however, do not indicate that the additional
language that defendant proposes to include in the construction
of “terminations” is necessary.

None of the reference materials

provides an authoritative definition of terminations.

Instead,

they address capacitors in a variety of contexts that are of
limited relevance to the proper construction of the ‘547 Patent
in light of its specification.
For instance, defendant asserts that its definition is
drawn from a document titled Basics of Ceramic Chip Capacitors.
(Def. Mem. at 8-9 (citing and quoting Basics of Ceramic Chip
Capacitors, Def. Ex. AD, ECF No. 132, ECF pp. 28-42 of 377, at
4-5).)

Although not expressly acknowledged by defendant, this

document is a product of Johanson Dielectrics, Inc., a
33

California-based capacitor manufacturer, which attributes the
document to “John Maxwell, Director of Product Development.”
(See Basics of Ceramic Chip Capacitors (Internet Version),
available at https://www.johansondielectrics.com/basics-ofceramic-chip-capacitors (last accessed Nov. 2, 2018) (containing
identical information to Defense Exhibit AD and attribution to
Mr. Maxwell).)
The Johanson Dielectrics document, however, is
intended to provide a general overview of the capacitor
manufacturing process, rather than authoritative definitions of
capacitor components.

(See Def. Ex. AD at 2 (“This presentation

is a quick overview of ceramic chip capacitors.”).)

Its

definition of “testing,” for example, includes no information
about the process by which capacitors are tested, and instead
states that “[t]he parts are tested and sorted to their correct
capacitance tolerances.

At this point the capacitor

manufacturing is complete.”

(Id. at 5.)

Moreover, its

definition of “terminations” refers to capacitors as consisting
of a single layer (id.), but as discussed above (and as
defendant concedes), terminations can have multiple layers.
Thus, even if the Johanson Dielectrics document were intended as
an authoritative guide to capacitor components, the court would
give its definition of “terminations” limited weight, if any,

34

because of its inconsistency with the terms of the ‘547 Patent’s
specification.
Defendant also cites to two articles in the American
Ceramic Society Bulletin, which defendant characterizes as “[a]n
industry accepted publication in the capacitor field.” (Def.
Mem. at 9.)

The first article is David J. Malanga and B.

Timothy Bassler, Copper End Termination Materials for BME
Capacitors, The American Ceramic Society Bulletin, September
2000 (“Malanga & Bassler”), Def. Ex. AS, ECF No. 132-2, ECF pp.
14-19 of 163.

The second article is Ahmet R. Selcuker and

Michael A. Johnson, Termination Sintering in Multilayer Ceramic
Capacitors: Microstructural Interpretation, The American Ceramic
Society Bulletin, November 1993 (“Selcuker & Johnson”), Def. Ex.
BT, ECF No. 133-1, ECF pp. 132-40 of 146.
Defendant notes that the Selcuker & Johnson article
states, in relevant part, that “[t]he metal [in termination
paste] is the electrically conductive material that connects the
fired termination to the internal electrodes.”
(quoting Selcuker & Johnson at 88).)

(Def. Mem. at 9

Selcuker & Johnson also

state that “[t]he termination is of particular importance
because it serves as a link between the internal electrodes and
the circuit board; furthermore, it must hermetically seal the
end of the chip.”

(Selcuker & Johnson at 88.)

Defendant’s

expert, however, has conceded that terminations need not
35

actually connect internal electrodes to the circuit board.
Thus, Selcuker & Johnson’s statements about connectivity cannot
be taken as categorical statements about all capacitors, and
defendant provides no reason to conclude that Selcuker &
Johnson’s statements have any particular applicability to the
‘547 Capacitor.
Similarly, defendant asserts that, according to
Malanga & Bassler, “the terminations are applied ‘to connect to
the internal electrodes.’”

(Def. Mem. at 9.)

In support of

this assertion, defendant cites to page 75 of Malanga & Bassler,
which does not exist.

Even assuming for the sake of argument

that Malanga & Bassler did make such a statement, however,
defendant’s expert has admitted that terminations need not
connect to internal electrodes in all capacitors.

Further, in

light of Malanga & Bassler’s references to “the alloying of the
end termination to the electrode,” and “the glass bonding of the
termination to the capacitor dielectric,” two processes not
discussed in any way in the ‘547 Patent, Malanga & Bassler
appear to be discussing a largely different type of termination
structure.

(Malanga & Bassler at 49.)

Consequently, their

article is of little relevance to the proper construction of
terminations in the ‘547 Patent.

36

III. Summary
The court concludes that the record supports
plaintiffs’, and not defendant’s, proposed construction of
“terminations.”

The parties agree that “terminations” are

external conductive structures; the court need only determine
whether the additional requirements defendant seeks to impose
are warranted.

These additional requirements, however, find no

support in the claim language, specification, or prosecution
history.

Further, defendant’s own expert’s deposition testimony

indicates that defendant’s proposed additional construction
language is unwarranted, and defendant’s citations to extrinsic
evidence are unconvincing.

Consequently, the court adopts

plaintiffs’ construction.

Conclusion
For the foregoing reasons, the disputed claim term
“terminations,” as it is recited in the ‘547 Patent, shall be
construed as “conductive structures arranged externally on the
device body.”

The parties are respectfully directed to confer

and, within fourteen (14) days, submit a joint letter to the
court stating how they intend to proceed in this action,
37

including whether the parties seek to engage in any further
settlement discussions, or whether the court should set a trial
date.
SO ORDERED.
Dated: Brooklyn, New York
November 2, 2018
/s/
KIYO A. MATSUMOTO
United States District Judge
Eastern District of New York

38