American Technical Ceramics Corp. et al v. Presidio Components, Inc.
MEMORANDUM AND ORDER, The disputed claims in the 547 Patent and 791 Patent are construed as detailed in the attached Memorandum & Order. The parties shall proceed in this litigation in a manner consistent with this opinion and jointly advise the court by letter filed on ECF no later than November 14, 2016 how they intend to do so. Ordered by Judge Kiyo A. Matsumoto on 11/7/2016. (Newman, Alanna)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
AMERICAN TECHNICAL CERAMICS CORP.
and AVX CORPORATION,
PRESIDIO COMPONENTS, INC.,
MEMORANDUM AND ORDER
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. (“Presidio” or “defendant”), alleging
infringement by Presidio of the following ATC patents:
States Patent No. 6,144,547 (“the ’547 Patent”), United States
Patent No. 6,337,791 (“the ’791 Patent”), and United States
Patent No. 6,992,879 (“the ’879 Patent”) (collectively, “the
Plaintiffs seek a finding that Presidio
willfully infringed on the patents-in-suit, and injunctive
relief prohibiting Presidio from engaging in further
Plaintiffs also seek damages from the alleged
infringement, including attorneys’ fees and costs.
Presently before the court are the parties’
submissions for claim construction of nine terms recited in the
‘547 and ‘791 Patents.
The parties do not dispute any claim
terms in the ‘879 Patent.
ATC is a wholly-owned subsidiary of the publicly
traded AVX Corporation, and is based in Huntington Station, New
Presidio is a privately-owned company based in San Diego,
Both parties are manufacturers of electrical
devices including capacitors.
Capacitors are electronic
components that store and release energy within a circuit, and
are used in a variety of electrical systems, including consumer
electronics, mobile phones, and computer hard drives.
Typically, a capacitor is comprised of two parallel metal plates
separated by a non-conductive, insulating material, known as a
The patents-at-issue relate to “multilayer ceramic
Like other types of capacitors, MLCCs
are mounted to circuit boards to store and release energy within
MLCCs are created through the combination of
multiple capacitors by stacking several layers of conductive and
non-conductive (i.e., dielectric) material; in the present case,
the dielectric material is ceramic.
Both ATC and Presidio make
and sell MLCCs.
ATC commenced the instant action on November 6, 2014,
alleging that Presidio’s “surface mount” MLCCs, specifically,
the “Surface Mount Buried Broadband Capacitors” and the “Surface
Mount Buried Single Layer Capacitors,” infringe the ‘547, ‘791,
and ‘879 Patents.
(See ECF No. 1, Complaint, at ¶¶ 10-13, 17-
The parties submitted a “Joint Disputed Claim Terms
Chart” on November 20, 2015, setting forth the claim terms in
dispute with the parties’ respective constructions of those
(See ECF No. 48, Joint Disputed Claim Terms Chart
Pursuant to Local Patent Rule 11.)
A claim construction, or
Markman, hearing was held before this court on August 31, 2016,
at which the parties presented oral arguments and expert
testimony to further explain their respective constructions of
the claims in dispute.
(Transcript of Civil Hearing on August
Before reaching a determination on an alleged
infringement, the court must first construe a patent’s claim
limitations to define the meaning and scope of the invention
from which a patentee has a right to exclude others.
Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
381 F.3d 1111, 1115–16 (Fed. Cir. 2004).
In order to
effectively protect 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 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.”) (internal
quotations omitted)(alterations in original).
patent claims, a patentee seeks to define the precise scope of
the invention and thus the scope of the patentee’s right to
exclude others from making, using, or selling the patented
Legal Standards For Claim Construction
Construction of a patent, including the terms within
its claims, must be determined by the court.
Pharmaceuticals USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 835
(2015) (“‘[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.’”) (quoting Markman, 517 U.S. at 390).
law of the Federal Circuit governs issues of substantive patent
law, which includes claim construction.
See Spiel Assocs., Inc.
v. Gateway Bookbinding Sys., Ltd., No. 03-cv-4696, 2007 WL
6148516, at *3 (E.D.N.Y. June 21, 2007) (“The construction of
patent terms is a question of law to be determined by the
Court, applying the law of the Federal Circuit to issues of
substantive patent law.”) (citing Markman v. Westview
Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995), aff’d,
517, U.S. 370 (1996)).
In addition to its protective function
with respect to the patentee, claim construction is significant
in providing proper notice to the public as to what inventions
are and are not covered.
See Markman, 517 U.S. at 373; see also
Pitney Bowes, Inc. v. Hewlett–Packard Co., 182 F.3d 1298, 1311
(Fed. Cir. 1999) (discussing the need to place the public on
notice as to what inventions are and are not covered by the
patent at issue).
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
As long as the trial court construes the
claims to the extent necessary to determine 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 disputed claims “to the extent necessary to resolve the
Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
F.3d 795, 803 (Fed. Cir. 1999); see also Ballard Med. Prods.,
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
Further, the court is not required to construe
every limitation present in a patent’s asserted claims.
Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351,
1362 (Fed. Cir. 2008).
Although courts maintain discretion over claim
construction procedure, the law surrounding claim construction
Courts must construe patent claims
“objectively,” Vivid Techs., 200 F.3d at 803, by seeking 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.
In doing so, a court
considers three primary sources within the 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-CV-2642, 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 looks to the words of the claims
themselves, both asserted and nonasserted, to define the scope
of the patented invention.
See 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, the words of the claim are the “controlling
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
See id. (citing York Prods., Inc. v.
Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1572 (Fed.
Cir. 1996) (“Without an express intent to impart a novel meaning
to claim terms, an inventor’s claim terms take on their ordinary
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; 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.”);
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
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, 52 F.3d at 979.
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.”).
If a patentee selects a
meaning distinct from that which the claim terms would otherwise
have to a person of ordinary skill in the art, the different
meaning must be set out in the specification in a manner
sufficient to give one of ordinary skill notice of the change
from the usual meaning.
Innova/Pure Water, 381 F.3d at 1117.
C. Prosecution History
Third, the court may consider the prosecution history
of the patent, if it is in evidence.
See Phillips v. AWH Corp.,
415 F.3d 1303, 1317 (Fed. Cir. 2005).
A patent’s prosecution
history contains a complete record of all the proceedings before
the United States Patent and Trademark Office (“USPTO”),
including any express representations made by the applicant
regarding the scope of the claims.
As such, the prosecution
history provides evidence of how the USPTO and the inventor
understood the patent, and the record before the USPTO can be of
critical significance in determining the meaning of the claims.
See Phillips, 415 F.3d at 1317 (“Like the specification, the
prosecution history provides evidence of how the PTO and the
inventor understood the patent.”) (citations omitted); see also
Southwall Tech., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576
(Fed. Cir. 1995) (“The prosecution history limits the
interpretation of claim terms so as to exclude any
interpretation that was disclaimed during prosecution.”)
D. Extrinsic Evidence
Finally, while 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
Vitronics, 90 F.3d at 1583.
however, is “less significant than the intrinsic record in
determining the legally operative meaning of claim language.”
Secure Web Conference Corp., 2014 WL 4954644, at *2 (citing
Phillips, 415 F.3d at 1317).
Indeed, in permitting
consideration of extrinsic evidence, the Federal Circuit has
cautioned courts not to place too much reliance on extrinsic
evidence and too little reliance on intrinsic sources.
*2 (citing Phillips, 415 F.3d at 1320).
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 id. at *2 (citing Phillips, 415 F.3d at 1317).
The court addresses each of the disputed claims in the
‘547 Patent and ‘791 Patent, and construes the claims as
Claim Terms Under Dispute
A. The ‘547 Patent
The ‘547 Patent is entitled “Miniature Surface Mount
Capacitor and Method of Making Same,” and lists Gennady
Retseptor as the sole inventor.
The ‘547 Patent describes
“[s]urface mount capacitors […] having ultra-small dimensions of
length, width and height,” as well as “improved methodology for
terminating a capacitor or other surface mount component.”
(‘547 Patent Abstract.)
The other surface mount components
referenced include “inductors, resistors, fuses and the like.”
(‘547 Patent, at 6:2-5.)
ATC and Presidio contest the meaning
of five terms in the ‘547 Patent.
1. “A thin film capacitor device”/”capacitor
The ‘547 Patent refers in the preamble to Claims 1-11
and Claim 12 to “a thin film capacitor device for mounting to a
surface, said capacitor device comprising […].”
Plaintiffs contend that no construction is
required because the term, “a thin film capacitor device” and
“capacitor device” are part of a non-limiting preamble.
No. 49, Plaintiffs’ Opening Claim Construction Brief (“Pl.
Br.”), at 12.)
According to plaintiffs, deleting the phrases “a
thin film capacitor device” and “capacitor device” would not
affect the structure of the invention as described in the claim
body, and as used in the preamble, the terms merely describe
what the claim body sets out as a structurally complete device.
Plaintiff’s argument relies on the general rule that “preamble
language is not treated as limiting.”
(Id.); See Aspex Eyewear,
Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1347 (Fed. Cir.
2012) (citing Allen Eng’g Corp. v. Bartell Indus., Inc., 299
F.3d 1336, 1346 (Fed. Cir. 2002)).
Defendant, on the other hand, proposes that the terms
“a thin film capacitor device” and “capacitor device” as used in
the ‘547 Patent act as a limitation that should be construed to
mean “a capacitor manufactured by thin film deposition onto a
(ECF No. 54, Defendant’s Responsive
Claim Construction Brief (“Def. Br.”), at 27.)
argument is primarily based on the “present invention”
principle, which provides that when a patent describes “the
features of the ‘present invention’ as a whole, this description
limits the scope of the invention.”
(Id. at 18); See Verizon
Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed.
Presidio further argues that because Claims 2-11
refer back to “thin film device capacitor” in the preamble of
Claim 1, the Claim 1 preamble provides an “antecedent basis” to
understand Claims 2-11, and is therefore limiting.
(Def. Br. at
A patent claim is typically drafted in three parts:
the preamble, the transition, and the body.
Patents § 806[b] (2007).
See 3–8 Chisum on
The general rule cited by
plaintiffs, that a preamble is not limiting, applies when the
patent applicant did not rely on the preamble to define the
invention or to distinguish prior art, and the phrase is not
necessary to understanding the claim body.
See Catalina Mktg.
Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 810 (Fed.
Cir. 2002); see also Altiris, Inc. v. Symantec Corp., 318 F.3d
1363, 1371 (Fed. Cir. 2003) (“[I]f the body of the claim sets
out the complete invention, and the preamble is not necessary to
give life, meaning and vitality to the claim, then the
preamble is of no significance to claim construction because it
cannot be said to constitute or explain a claim limitation.”).
By contrast, a preamble limits an invention when it recites
essential structure or steps, or when it gives “life, meaning,
and vitality” to a claim.
Catalina, 289 F.3d at 801; see
also NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1306
(Fed. Cir. 2005) (“When limitations in the body of the claim
rely upon and derive antecedent basis from the preamble, then
the preamble may act as a necessary component of the claimed
In addition, clear reliance on a preamble during
patent prosecution also may cause the preamble to act as a
limitation on a claim.
See, e.g., Jansen v. Rexall Sundown,
Inc., 342 F.3d 1329, 1333 (Fed. Cir. 2003).
Here, the court finds that the preamble in the ‘547
Patent is not limiting and, consequently, that no construction
of “a thin film capacitor device” or “capacitor device” is
Presidio fails to identify any evidence in the
intrinsic record that the terms at issue define the invention or
are necessary to understand the claim body.
incorrectly asserts that the ‘547 Patent defines the “present
invention” as a “thin film capacitor device”; in fact, the
specification broadly refers to the “present invention” as a
“surface mount component” or “surface mount capacitor device.”
(See ‘547 Patent, at 2:11-32.)
Presidio relies on a preferred
embodiment in the specification to support its position the
“present invention” is “a thin film capacitor device.”
Br. at 2.)
However, the term “thin film” is only referenced by
example in the specification, as evidenced by Retseptor’s use of
the qualifiers “for example,” “typically,” and “exemplary.”
(See, e.g., ’547 Patent, at 2:47.)
The Federal Circuit has
established “that the preferred embodiment does not limit
broader claims that are supported by the written
Toro Co. v. White Consol. Indus. Inc., 199 F.3d
1295, 1301 (Fed. Cir. 1999); see also Burke, Inc. v. Bruno
Indep. Living Aids, Inc., 183 F.3d 1334, 1341 (Fed. Cir. 1999)
(“[A]n attribute of the preferred embodiment cannot be read into
the claim as a limitation.”).
Moreover, the ‘547 Patent
specification emphasizes that the preferred embodiment “is by
way of example only, and is not intended to be limitative of the
invention set forth in the appended claims.”
(‘547 patent, 6:8-
Thus, there is no indication in the intrinsic record that
Retseptor disavowed all embodiments not “thin film.”
In addition, the ‘547 Patent claims recite a
structurally complete invention without the preamble language.
The term “a thin film capacitor device” is not necessary to give
meaning to the claims, nor is it necessary to provide an
antecedent basis to understand the claims at issue.
Circuit has explained that “[w]hen limitations in the body of
the claim rely upon and derive antecedent basis from the
preamble, then the preamble may act as a necessary component of
the claimed invention.”
Eaton Corp. v. Rockwell Int'l
Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (emphasis added).
That is not the case here.
The term “a thin film capacitor
device” appears in the preamble to Claim 1 and the preamble to
Thus, the term does not provide an antecedent
basis to understand a limitation in the body of Claims 2-11 and
Finally, there is nothing in the prosecution history
indicating that the preamble language was necessary to
understand the claims.
Based on the foregoing analysis, the
court finds that the preamble terms “a thin film capacitor
device” and “capacitor device” are not limiting, do not define
the invention and are not necessary to understand the claim
body, and therefore, require no construction.
2. “Substantially L-shaped terminations”
All claims of the ‘547 Patent describe “a device body
having small dimensions in length, width and height, and having
substantially L-shaped 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 . . .”
(‘547 Patent, at 6:13-18.)
contend that this claim term does not require construction and
should be defined according to the term’s ordinary meaning.
(Pl. Br. at 13.)
Defendant, however, argues that this claim
should be construed as “[t]erminations having an L-shape,” –
eliminating the word “substantially” – with the addition of
further clarifying language that “terminations that have a Ushape, and terminations that extend around the lateral sides of
the device body, are excluded.”
(Def. Br. at 22-23.)
argues that its proposed construction is necessary for clarity,
and specifically, to distinguish the ‘547 Patent from prior art
There are two issues in dispute with respect to the
construction of this claim:
(1) use of the word “substantially,”
and (2) whether the term “L-shaped” requires further
First, with respect to the use of the word
“substantially,” defendant’s suggested construction removes this
word, thereby limiting the scope of the claim.
contend that the inclusion of “substantially” indicates that the
terminations may extend, at least partially, onto the device
body sides, and that defendant improperly limits the meaning of
“substantially L-shaped” by disregarding the modifier
“substantially” in order to exclude embodiments having
termination material on the top of the device body.
(Pl. Br. at
Indeed, it is well-settled that claims must be
“interpreted with an eye toward giving effect to all terms in
Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950
(Fed. Cir. 2006); see also Merck & Co. v. Teva Pharm. USA, Inc.,
395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that
gives meaning to all the terms of the claim is preferred over
one that does not do so.”); TouchTunes Music Corp. v. Rowe Int’l
Corp., 727 F. Supp. 2d 226, 233 (S.D.N.Y. 2010) (“A claim
construction that renders claim language superfluous is almost
always incorrect.”)(citing Stumbo v. Eastman Outdoors, Inc., 508
F.3d 1358, 1362 (Fed. Cir. 2007)).
Moreover, words of
approximation, such as “generally” or “substantially,” are
commonly used in patent claims to avoid strict numerical
boundary to specific parameters.
See Anchor Wall Sys., Inc. v.
Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1310-11 (Fed.
Cir. 2003) (citations omitted).
In addition, as discussed above, in giving effect to
all terms in a claim, the terms must be read in view of their
ordinary meaning, unless a contrary intent is evinced in the
specification or prosecution history.
979; Vitronics, 90 F.3d at 1582.
See Markman, 52 F.3d at
Here, there is no special
definition for “substantially L-shaped” used in the
specification or prosecution history that would justify
departure from the plain language of the claim.
The ‘547 Patent
specification does not define “substantially L-shaped
terminations” in a manner inconsistent with the ordinary meaning
of the term; the patentee describes “substantially L-shaped
terminations” in Claim 1 as “terminations extending over a
bottom surface of said device body and negligibly over a top
surface of said device body.”
(‘547 Patent, at 6:13-18.)
Moreover, the word “substantially,” as used in the
‘547 Patent, is consistent with its dictionary definition, which
may be consulted by the court in determining the “ordinary
meaning” of claim language.
See, e.g., Vitronics, 90 F.3d at
1584 n.6 (Fed. Cir. 1996) (“Judges ... may ... rely on
dictionary definitions when construing claim terms, so long as
the dictionary definition does not contradict any definition
found in or ascertained by a reading of the patent documents.”).
“Substantially” is defined as “being largely but not wholly that
which is specified.”
(See MERRIAM-WEBSTER, available at
in accordance with the aforementioned principles, the court
finds that the word “substantially” should not be excluded and
should be given meaning in construing the claim.
Next, the court considers whether the term “L-shaped”
requires further clarification.
Looking at the plain language
of the claim, the term “substantially L-shaped terminations”
suggests structures that are essentially shaped like the letter
“L,” but with latitude for slight variation from an exact “L”
The court disagrees with defendant’s concern that
“substantially L-shaped” will not sufficiently distinguish the
structure from U-shaped terminations.
Terminations having a U-
shape are already excluded by the ordinary meaning of
“substantially L-shaped,” because a structure with “terminations
that extend around the lateral sides” of a device body would not
The clarifying language suggested by Presidio is
In light of this analysis, the court construes the
phrase “substantially L-shaped terminations” in accordance with
its ordinary meaning, i.e., as a termination that is
substantially or largely L-shaped, but not wholly L-shaped.
3. “Negligibly over a top surface”
The ‘547 Patent claims all recite that the
“substantially L-shaped terminations” extend “negligibly over a
top surface” of the device body.
(‘547 Patent, at 6:17-18.)
Plaintiffs contend that this claim should be constructed to mean
that “a small amount of termination material is formed on a top
surface of the device body.”
(Pl. Br. at 15.)
parties agree that this definition applies, Presidio argues that
additional construction is necessary to clarify that “[t]he
amount must also be small in relation to the termination
material extending over a bottom surface of the capacitor device
(Def. Br. at 24.)
Plaintiffs argue that this additional
limitation is unnecessary because the ‘547 Patent claims already
describe the size relationship between the termination portions
extending over the top and bottom surfaces using the
“negligibly” and “substantially L-shaped” limitations.
No. 55, Plaintiffs’ Reply Claim Construction Brief (“Pl. Repl.”)
The court finds that the clarification offered through
Presidio’s proposed construction is not necessary to construe
the disputed claim.
The claim already recites that the
terminations must be “substantially L-shaped,” which by its
plain language describes the size relationship between the
termination portions (i.e., one that creates the appearance of
By definition, the top configuration must be smaller
than the bottom configuration in order for the top termination
portion to extend “negligibly,” and for the terminations as a
whole to appear “substantially L-shaped.”
The court therefore construes the claim “negligibly
over a top surface” to mean “a small amount of termination
material is formed on a top surface of the device body.”
4. “Insulating substrate”
Claim 1 of the ‘547 Patent recites that the capacitor
device body includes “an insulating substrate having a top
surface and a bottom surface.”
(‘547 Patent, at 6:19-20.)
Plaintiffs contend that the term “insulating substrate,” should
be construed to mean “a layer of material used as an insulator in
the device body.”
(Pl. Br. at 16.)
Presidio proposes that the
term “insulating substrate” as used in the ‘547 Patent should be
construed to mean a “rigid insulating layer.”
(Def. Br. at 24.)
Presidio argues that “rigid” is necessary to the construction
because “the ‘547 patent utilizes a rigid substrate in all
descriptions and embodiments” and “the claimed inventions cannot
be accomplished without a ‘rigid insulating layer.’”
Plaintiffs dispute Presidio’s assertion that the invention
cannot be accomplished without a “rigid” insulating layer and
further argue that Presidio improperly imports a “rigidity”
requirement into Claim 1 that does not appear in the claim
(Pl. Br. at 17.)
In construing “insulating substrate,” both parties
appear to agree on the meaning of the term “insulating,” and
effectively equate the word “substrate” to “layer.”
Pl. Br. at 16 (“a layer . . . used as an insulator”) with Def.
Br. at 24 (“insulating layer”).)
The court therefore need only
determine whether, as Presidio argues, “insulating substrate”
should be construed to include the limitation “rigid.”
In ascertaining the proper scope of patent claims,
“courts must take extreme care […] lest they simultaneously
import into the claims limitations that were unintended by the
Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d
1313, 1325 (Fed. Cir. 2003); see, e.g., Hoganas AB v. Dresser
Indus., Inc., 9 F.3d 948, 950, 28 USPQ2d 1936, 1938 (Fed. Cir.
1993) (“It is improper for a court to add extraneous limitations
to a claim, that is limitations added wholly apart from any need
to interpret what the patentee meant by particular words or
phrases in the claim.”) (citation omitted).
The danger of
improperly importing a limitation is greater when the purported
limitation is based upon a term not appearing in the claim.
Amgen, 314 F.3d at 1325; see also Johnson Worldwide Assocs.,
Inc. v. Zebco Corp., 175 F.3d 985, 990, 50 USPQ2d 1607, 1610
(Fed. Cir. 1999) (“[I]f we once begin to include elements not
mentioned in the claim in order to limit such claim ..., we
should never know where to stop.”) (quoting McCarty v. Lehigh
Val. R.R., 160 U.S. 110, 116 (1895)).
Here, the word “rigid” does not appear in Claim 1, and
the specification does not establish that the “insulating
substrate” must be rigid.
Further, Claim 5 does include the
word “rigid” to describe a “layer of insulative material,” which
demonstrates that inventor Retseptor expressly included “rigid”
when he intended it to serve as a limitation on Claim 5 in the
See Amgen, 314 F.3d at 1326 (“when a patent claim
does not contain a certain limitation and another claim does,
that limitation cannot be read into the former claim in
determining either validity or infringement.”).
the court construes the term “insulating substrate” in a manner
consistent with its plain and ordinary meaning, without
importing the limiting descriptor, “rigid,” into the
5. “A device body ... of 0402 or less” and
“no greater than 0402”
Claims 3 and 12 of the ‘547 Patent respectively
describe the capacitor device body as “a size of 0402 or less”
and “no greater than 0402.”
(‘547 Patent, at 6:36-37, 6:64.)
As set forth in the specification, the “0402” notation refers to
the length and width dimensions of the device body.
Patent specification explains that “[a]ccording to industry
practice, the size of a surface mount component is generally
expressed as a number ‘XXYY,’ with XX and YY being the length
and width, respectively, in hundredths of an inch.”
Patent, at 1:16-19.)
Height and termination dimensions are
expressed separately in the patent.
(See, e.g., ‘547 Patent, at
4:20-28 (referencing standard heights for 0402 capacitors).)
In construing the term “0402,” plaintiffs advocate the
“XXYY” length and width construction set forth in the ‘547
Patent (‘547 Patent, at 1:16-18), as well as inclusion of a “+
0.004” tolerance value for these dimensions, as identified in
Electronics Industries Association (“EIA”) industry standard.
(Pl. Br. at 18.)
By contrast, Presidio proposes that “0402” be
construed according to the EIA-198-3 standard, which discloses
height, termination width, and gap width dimensions for “0402
case size” that are not expressed in the patent.
(Def. Br. at
Plaintiffs, however, explain that the ‘547 Patent does
not limit capacitor height to an industry standard, as indicated
by references in the ‘547 Patent to “0402 size capacitors having
(Pl. Repl. at 6 (quoting ‘547 patent at 1:27-
As discussed above, courts must take great caution
when reading limitations into a patent claim, particularly when
such limitations are based on language that does not appear in
See Amgen, 314 F.3d at 1325; see also Johnson
Worldwide Assocs., 175 F.3d at 990.
Because the EIA-198-3
standard advocated by defendant includes height, width, and
termination dimensions not referenced in the ‘547 Patent,
Presidio’s proposed construction of claim term “0402” is
Further, although the +0.004 tolerance value cited
by plaintiffs is an industry standard (see Pl. Br. at 18.), the
plain language of Claims 3 and 12 does not allow for a tolerance
(‘547 Patent, at 6:37, 6:64 (specifying a “size of
0402 or less” and “no greater than 0402”) (emphasis added).)
The court therefore construes the term “0402,” in accordance
with the language of the claims, to describe dimensions no
greater than a length of 0.04 inches and a width of 0.02 inches.
B. The ‘791 Patent
The ‘791 Patent is entitled “Capacitor Featuring
Internal Electrode With Pad,” and lists Richard Monsorno as the
The ‘791 Patent describes an invention “to
provide a capacitor that retains superior high frequency
attributes of the capacitor taught in the [prior Monsorno
patent] while reducing space needed on a mother board.”
Patent, at 1:19-22.)
In particular, the ‘791 Patent describes
the present invention as having “more than four times the
capacity of those taught in the [prior Monsorno patent] for the
same size unit with the same dielectric thickness.”
The parties contest the meaning of four terms in the
1. “Single-layer cap member”
Claim 1 of the ‘791 Patent describes a “single-layer
cap member connected to the first end of the first electrode
(‘791 Patent, at 4:4-6.)
The disputed term, “single-
layer,” refers to the number of layers forming each “cap member”
recited in Claim 1.
Plaintiffs contend that no construction is
required and the plain and ordinary meaning of “single-layer”
(i.e., one layer) should apply.
(Pl. Br. at 20.)
asserts that “single-layer” should be construed to mean “only
one conductive material at the end of the dielectric,” to avoid
ambiguity regarding whether the technique described forms one
layer or multiple layers.
(Def. Br. at 26.)
The court finds no support in the record for
defendant’s argument that “single-layer” should be construed to
mean “one material.”
First, although “single” and “one” are
synonymous, the plain meaning of the word “layer” is different
Second, the word “layer” appears extensively
throughout the ‘791 Patent, but defendant offers no explanation
for why “layer” need not be construed to mean “material”
When construing patent terms, courts “begin with the
presumption that the same terms appearing in different portions
of the claims should be given the same meaning unless it is
clear from the specification and prosecution history that the
terms have different meanings at different portions of the
Fin Control Sys. Pty, Ltd. v. OAM, Inc., 265 F.3d
1311, 1318 (Fed. Cir. 2001).
Furthermore, “a claim term should
be construed consistently with its appearance in other places in
the same claim or in other claims of the same patent.”
Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001).
In addition, defendant’s concern regarding potential ambiguity
with respect to the number of layers is already addressed by use
of the word “single-layer,” as well as the preceding language
describing the single layers forming each cap recited in Claim
(‘791 Patent, at 3:33 – 4:56.)
Therefore, the court construes “single-layer cap
member” in accordance with the plain meaning of “single-layer”
as well as its usage in the ‘791 Patent specification, to mean
2. “A second electrode layer formed as a
Claims 1 and 2 of the ‘791 Patent describe “a second
electrode layer formed as a pad for contact with the second
surface of the first dielectric layer.”
(‘791 patent, at 4:13-
Plaintiffs propose that “a second electrode layer
formed as a pad” as used in the ‘791 Patent means “an electrode
layer arranged on the external bottom surface of the capacitor.”
(Pl. Br. at 21.)
Defendant, on the other hand, argues that no
construction is needed as there is no requirement that the
electrode layer formed as a pad be located on the bottom
(Def. Br. at 26-27.)
Claims 1 and 2 provide no guidance as to any
relationship between the location of the pad and the circuit
board, nor does the ‘791 Patent specification.
evidence in the intrinsic record, the court turns to the
dictionary definition of “pad,” which is “something soft used
for protection or comfort; cushion.”
available at http://www.merriam-webster.com/dictionary/pad.
dictionary definition contains no specified orientation of the
pad in relation to the other objects that it protects.
The prosecution history of the patent further supports
the conclusion that there is no requirement that the pad be
located on the bottom surface of the capacitor.
Components, Inc., v. American Technical Ceramics Corp., IPR201501330, 2015 WL 9599180, at *4 (PTAB December 3, 2015).
December 3, 2015 decision, the Patent Trial and Appeal Board
We find no support, however, for [ATC’s] construction
requiring the second electrode to be formed only on
the ‘bottom surface’ of the capacitor. There is
nothing in the plain and ordinary meaning of ‘pad’ to
suggest that it can only be formed on the bottom, as
opposed to the top, of the capacitor. Moreover,
[ATC’s] proposed construction is deficient insofar as
it fails to provide a frame of reference to determine
which side constitutes the ‘bottom.’ (Id.)
Accordingly, the court finds that no construction of
the term “a second electrode layer formed as a pad,” is
3. “Different level of polarity”
Claims 1 and 2 of the ‘791 Patent describe “the first
electrode layer connectable to a source of electric current so
as to be operable at a different level of polarity from that of
the second electrode layer.”
(‘791 Patent, at 4:16-17, 4:54-
Plaintiffs contend that no construction is required, and
the plain and ordinary meaning of “different level of polarity”
applies; according to plaintiffs, the plain and ordinary meaning
of the term “different level of polarity” is “opposite level of
(Pl. Br. at 23)
Presidio disagrees with plaintiffs’
definition and argues that construction is required.
proposes that the term “different level of polarity” should be
construed to mean a “different quantity of the same positive or
(Def. Br. at 15.)
When a term’s “ordinary meaning” is subject to
dispute, claim construction requires a court to determine “what
claim scope is appropriate in the context of the patents-insuit.”
O2 Micro Int’l Ltd., 521 F.3d at 1361.
Here, the court
must determine whether “different level of polarity” refers to
different charges (i.e., positive and negative) as plaintiffs
assert, or different quantities of the same charge (i.e.,
positive and positive, or negative and negative) as defendant
The language of the ‘791 Patent claims and
specification provide limited guidance on the meaning of the
term “different level of polarity.”
In resolving the parties’
dispute, the court examines the ordinary meaning of the words in
the term “different level of polarity,” considering each word
comprising the phrase in turn and as a whole.
meaning of “different” is “not of the same kind” or “partly or
See MERRIAM-WEBSTER, available at
ordinary meaning of “level” is “an amount of something.”
MERRIAM-WEBSTER, available at http://www.merriamwebster.com/dictionary/level.
The ordinary meaning of the word “polarity” in the
physics context is “the condition of having positive and
negative charges and especially magnetic or electrical poles.”
See MERRIAM-WEBSTER, available at http://www.merriamwebster.com/dictionary/polarity.
Thus, reference to polarity,
by its plain physics meaning, inherently refers to the state of
having positive and negative charges.
In contrast, defendant
appears to rely on the plain meaning of the word “polarities,”
which is defined as “the particular state either positive or
negative with reference to the two poles or to electrification.”
See MERRIAM-WEBSTER, available at http://www.merriamwebster.com/dictionary/polarities (emphasis added).
Plaintiff and defendant each presented experts who
testified to opposing constructions of the term “different level
Viewing expert testimony as extrinsic under the
well-settled case law, the court finds that plaintiffs’ expert
testimony is consistent with the plain meaning of “polarity” as
it is used in the term “different level of polarity,” whereas
defendant’s expert testimony is consistent with the plain
meaning of “polarities,” which is not referenced in the ‘791
(See Declaration of Stanley R. Shanfield, Ph.D., in
Support of Plainttiffs’ Rely Claim Construction Brief
(“Shanfield Reply Decl.”); Def. Br. Exhibit 3 (“Randall Decl.”);
see also Transcript of Civil Hearing on August 31, 2016, at 35:2
– 36:3, 103:24 – 106:8.)
In further support of its position, Presidio argues
that the claim language specifically includes the word “level,”
instead of simply referring to “different polarity,” and that
“level” is rendered superfluous under plaintiffs’ proposed
(Def. Br. at 15.)
The court notes the well-
settled principle that claim construction should give effect to
all terms of a claim, as discussed above.
See Bicon, 441 F.3d
at 950; Merck, 395 F.3d at 1372; TouchTunes Music, 717 F. Supp.
2d at 233.
The court disagrees with defendant’s assertion that
plaintiffs’ construction renders “level” superfluous, and
consequently construes the word “level” as necessary in
conveying the concept of different amounts of positive and
negative charges, as found in the term “different level of
The court finds that according to the plain meaning of
Claims 1 and 2, the phrase “different level of polarity” refers
1 In further support of its position, Presidio notes that the ‘879 Patent,
also authored by Monsorno, refers to “opposite polarity.” (‘879 Patent, at
6:37-39.) Presidio argues that had Monsorno intended to refer to positive
and negative charges, he would have employed the same term here. (See ECF
No. 76, Letter in Response to Plaintiff 9/2/2016 Letter by Presidio
Components, Inc., at 6.) However, a relationship between two unrelated
patents, despite having a common inventor and subject matter, is not
sufficient to render arguments regarding one patent equally applicable to the
claims of the other patent. See Abbott Laboratories v. Dey, L.P., 287 F.3d
1097, 1105 (Fed. Cir. 2002); Texas Digital Systems. Inc. v. Telegenix, Inc.
308 F.3d 1193, 1211 (Fed. Cir. 2002) (citing Abbott). The language used in
the ‘879 Patent claims is therefore irrelevant.
to different amounts of positive and negative charges.
4. “A margin outward of the first electrode
Claim 2 of the ‘791 Patent describes a “second
dielectric layer […] on the second electrode surface so that the
first dielectric layer and the second dielectric layer combine
to describe a margin outward of the first electrode layer.”
(‘791 Patent, at 4:38-48.)
Plaintiffs contend that no
construction is required, and that the ordinary meaning of “a
margin outward of the first electrode layer” should apply
without further limitation on where the margin may traverse.
(Pl. Br. at 24-25.)
Defendant argues that the term should be
construed as “a margin on each end and side of the first
(Def. Br. at 28-29.)
The plain meaning of the term language, “a margin
outward of the first electrode layer” indicates a margin that
resides outside of the electrode layer, without specifying a
particular scope or location at which it should reside.
its proposed construction, defendant seeks to impose a
requirement that the margins extend outward from each end and
each side of the electrode, by comparing the use of the word
“margin” in Claim 2 of the ‘791 Patent with the use of the same
word in Claim 1 of the ‘791 Patent.
(Def. Br. at 28-29.)
Looking at the language of the claims, Claim 1 describes “a
margin outward of the first electrode layer ‘end’” whereas Claim
2 does not contain the word “end” as a modifier, describing only
“a margin outward of the first electrode layer.”
at 4:2-3, 4:47-48.)
Defendant argues that the inconsistent use
of the word “end” in the two claims means that each claim must
convey a different scope from the other, and that the absence of
a modifier in the language of Claim 2 means that the Claim 2
margin must extend around the entire electrode layer (i.e., at
each end and each side).
(Def. Br. at 28-29.)
The court agrees with defendant that the inclusion of
the word “end” in Claim 1 distinguishes its scope from Claim 2,
under the aforementioned principle that words of a claim should
not be construed in a manner that renders them superfluous.
Bicon, 441 F.3d at 950; Merck, 395 F.3d at 1372; TouchTunes
Music, 727 F. Supp. 2d at 233.
The court, however, disagrees
with defendant’s interpretation that the difference in scope
between the two claims leads to the imposition of a mandate that
the margin described in Claim 2 include each end and each side
of the electrode layer.
Although Claim 1 is not in dispute, the
court has given consideration to its meaning in construing Claim
The court finds that the use of the word “end” in Claim 1
suggests a specific location with respect to the margin
described, which is absent from the description of the margin in
However, the court finds that without the word “end,”
Claim 2 simply describes a margin that may appear on either end
or side of the electrode, rather than a margin that must appear
on each end and each side.
The court therefore construes Claim
2 to describe a margin of unspecified location, in accordance
with the ordinary meaning of the claim.
The disputed claims in the ‘547 Patent and ‘791 Patent
are construed as detailed above.
The parties shall proceed in
this litigation in a manner consistent with this opinion and
jointly advise the court by letter filed on ECF no later than
November 14, 2016 how they intend to do so.
November 7, 2016
Brooklyn, New York
Kiyo A. Matsumoto
United States District Judge
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