LAMBETH MAGNETIC STRUCTURES, LLC v. SEAGATE TECHNOLOGY (US) HOLDINGS, INC et al

Filing 78

MEMORANDUM ORDER on claim constructions pursuant to Markman hearing. See Memorandum Order attached at this docket entry. Signed by Judge Cathy Bissoon on 10/18/17. (rdl)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF PENNSYLVANIA

LAMBETH MAGNETIC STRUCTURES, )
LLC,
)
)
Plaintiff,
)
)
v.
)
)
SEAGATE TECHNOLOGY (US)
)
HOLDINGS, INC., et al.,
)
)
Defendants.
)
LAMBETH MAGNETIC STRUCTURES, )
LLC,
)
)
Plaintiff,
)
)
v.
)
)
WESTERN DIGITIAL CORPORATION, )
et al.,
)
)
Defendants.
)

Civil Action No. 16-538
Judge Cathy Bissoon

Civil Action No. 16-541
Judge Cathy Bissoon

MEMORANDUM ORDER
These are patent infringement cases in which Plaintiff Lambeth Magnetic Structures,
LLC, alleges, in two separate civil action numbers, 16-538 and 16-541 respectively, that Seagate
Technology (US) Holdings and Seagate Technology, LLC (collectively, the “Seagate
Defendants” or “Seagate”); and Western Digital Corporation, Western Digital Technologies,
Inc., Western Digital (Fremont), LLC, Western Digital (Thailand) Company Limited, Western
Digital (Malaysia) SDN.BHD and HGST, Inc. (collectively the “Western Digital Defendants” or
“Western Digital”) infringe Plaintiff’s patent, United States Patent No. 7,128,988 (the “‘988
patent”).

In each action, the parties filed a Joint Disputed Claim Terms Chart identifying the six
terms requiring construction. Chart Setting Forth Each Disputed Term (Civil Action No. 16-538,
Doc. 46-1); Am. Joint Disputed Claim Terms Chart (Civil Action No. 16-541, Doc. 60-1).
On March 20, 2017, the parties presented a technology tutorial to the Court. The
following day, March 21, 2017, the Court held a Markman claim construction hearing.1 See
Claim Construction Hearing Transcript (Civil Action No. 16-538, Doc. 73; Civil Action No. 16541, Doc. 78) [hereinafter “Hearing Transcript”]. The matters were consolidated for purposes of
the claim construction hearing.

Legal Standard

The general principles of claim construction are without dispute. The proper construction
of a patent’s claims is a question of law. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831,
837 (2015) (citing Markman v. Westview Instruments, Inc., 517 U.S. 370, 388-91 (1996)). “It is
a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to which the
patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381
F.3d 1111, 1115 (Fed. Cir. 2004)). The words of a claim “are generally given their ordinary and

1

These two actions were preceded by a third civil action, Lambeth Magnetic Structures, LLC, v.
Toshiba Corporation, et al., 14-1526. All three civil actions were consolidated for purposes of
claim construction. The Defendants in the Toshiba Corporation action (“the Toshiba
Defendants” or “Toshiba”) fully briefed claim construction and participated fully in the
Technology Tutorial and Markman hearing. Plaintiff dismissed its action against the Toshiba
Defendants shortly thereafter. See Order Approving Stipulation of Dismissal (Civil Action No.
14-1526, Doc. 180). Given the Toshiba Defendants’ involvement, the Court has chosen, where
relevant, to refer to their proposed constructions and reasoning. To distinguish between the
Toshiba Defendants and the active Defendants, the Court refers herein to Seagate and Western
Digital, collectively, as “remaining Defendants.”

customary meaning,” which “is the meaning that the term would have to a person of ordinary
skill in the art in question at the time of the invention, i.e., as of the effective filing date of the
patent application.” Id. at 1312-13 (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1582 (Fed. Cir. 1996)); Innova/Pure Water, 381 F.3d at 1116). In arriving at this meaning, a
court is to look first and foremost to the “intrinsic evidence,” which consists of the patent’s claim
language, the specification and written description, and the prosecution history, to determine the
meaning of disputed claim terms. Phillips, 415 F.3d at 1311-17; Medrad, Inc. v. MRI Devices
Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005). The specification is the single best guide to the
meaning of a disputed term, and is “usually…dispositive.” Phillips, 415 F.3d at 1315 (citing
Vitronics, 90 F.3d at 1582).
Claim language guides a court’s construction of claim terms. Phillips, 415 F.3d at 1314.
Yet, the “claims cannot enlarge what is patented beyond what the inventor has described as the
invention.” Abbott Laboratories v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed. Cir. 2009) (citing
Biogen, Inc. v. Berlex Labs., Inc., 318 F.3d 1132, 1140 (Fed. Cir. 2003)). The context in which
a term is used not only in the asserted claims, but also in any claims that are not being asserted in
a particular lawsuit, can be highly instructive because “terms are normally used consistently
throughout the patent.” Phillips, 415 F.3d at 1314. “The construction that stays true to the claim
language and most naturally aligns with the patent's description of the invention will be, in the
end, the correct construction.” Renishaw PLC v. Marposs Societa per Azioni, 158 F.3d 1243,
1250 (Fed. Cir. 1998).
Claims are always to 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) (en banc), aff'd, 517
U.S. 370 (1996). “The person of ordinary skill in the art is deemed to read the claim term not

only in the context of the particular claim in which the disputed term appears, but in the context
of the entire patent, including the specification.” Phillips, 415 F.3d at 1313. Moreover, “where
the ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to
permit the scope of the claim to be ascertained from the words alone[,]” the specification can
provide clarity. Teleflex. Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). In
the specification, a patentee may define his own terms, or give a claim term a different meaning
than it otherwise would possess. Id. at 1316. Although a court generally presumes that terms
possess their ordinary meaning, this presumption can be overcome when the patentee acts as his
own lexicographer. Irdeto Access, Inc. v. EchoStar Satellite Corp., 383 F.3d 1295, 1301 (Fed.
Cir. 2004).
“Although the specification may aid the court in interpreting the meaning of disputed
language in the claims, particular embodiments and examples appearing in the specification will
not generally be read into the claims.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d
1560, 1571 (Fed. Cir. 1988); see Phillips, 415 F.3d at 1323. Nonetheless, “[a] claim
interpretation that excludes a preferred embodiment from the scope of the claim ‘is rarely, if
ever, correct.’” Globetrotter Software, Inc. v. Elam Computer Grp. Inc., 362 F.3d 1367, 1381
(Fed. Cir. 2004) (quoting Vitronics Corp., 90 F.3d at 1583). Even if a patent describes only a
single embodiment, the claims of the patent must not be construed as being limited to that
embodiment unless the patentee has demonstrated a clear intention to limit the claim scope using
“words or expressions of manifest exclusion or restriction.” Phillips, 415 F.3d at 1323; LiebelFlarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (citing decisions); Teleflex,
299 F.3d at 1327. The purpose of the specification is “to teach and enable those of skill in the art

to make and use the invention” and sometimes, the best way to do that is to provide an example.
Teleflex, 299 F.3d at 1327.
Although the Court of Appeals for the Federal Circuit acknowledges that “the distinction
between using the specification to interpret the meaning of a claim and importing limitations
from the specification into the claim can be a difficult one to apply in practice,” it instructs courts
to maintain their focus on how a person of ordinary skill in the art would understand the claim
terms. Id. In order to do so, the “claims of the patent must be read in light of the specification’s
consistent emphasis on [the] fundamental features of the invention.” Praxair, Inc. v. ATMI, Inc.,
543 F.3d 1306, 1324 (Fed. Cir. 2008).
The prosecution history is another tool that supplies the proper context for claim
construction. Home Diagnostics Inc. v. LifeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004).
Because the file history “represents an ongoing negotiation between the [United States Patent
and Trademark Office (“PTO”)] and the applicant, rather than the final product of that
negotiation, it often lacks the clarity of the specification and thus is less useful in claim
construction proceedings.” Phillips, 415 F.3d at 1317. Nevertheless, the prosecution history is
intrinsic evidence that is relevant to the determination of how the inventor understood the
invention and whether the inventor limited the invention during prosecution by narrowing the
scope of the claims. Id. Where an applicant limits claim scope during prosecution through a
“clear disavowal of claim coverage, such as an amendment to overcome a rejection,” the wellestablished doctrine of prosecution disclaimer “preclud[es] patentees from recapturing through
claim interpretation specific meanings disclaimed during prosecution.” Amgen Inc. v. Hoechst
Marion Roussel, Inc., 314 F.3d 1313, 1327 (Fed. Cir. 2003) (citing York Prods., Inc. v. Central
Tractor Farm & Fam. Ctr., 99 F.3d 1568, 1575 (Fed. Cir. 1996)); see Omega Eng’g Inc. v.

Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). By distinguishing the claimed invention
over the prior art, an applicant is indicating what the claims do not cover. Spectrum Int’l v.
Sterilite Corp., 164 F.3d 1372, 1378-79 (Fed. Cir. 1988) (quotation omitted). In order for the
doctrine to apply, however, the prosecution history must show that the patentee clearly,
unambiguously and unmistakably disclaimed or disavowed the proposed interpretation during
prosecution in order to obtain claim allowance. Schindler Elevator Corp. v. Otis Elevator Co.,
593 F.3d 1275, 1285 (Fed. Cir. 2010); Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352,
1358 (Fed. Cir. 2003); Middleton Inc. v. 3M Co., 311 F.3d 1384, 1388 (Fed. Cir. 2002).
Phillips rejected any claim construction approach that sacrificed the intrinsic record in
favor of extrinsic evidence, such as dictionary definitions or expert testimony. Phillips, 415 F.3d
at 1319-24. Still, though “less significant than the intrinsic record in determining the legally
operative meaning of claim language,” a court may rely on extrinsic evidence to “shed useful
light on the relevant art.” Id. at 1317 (quotation omitted). Technical dictionaries and treatises
may help the court understand the underlying technology and the manner in which one skilled in
the art might use claim terms, but such sources may also provide overly broad definitions or may
not be indicative of how terms are used in the patent. Id. at 1318. Similarly, expert testimony
may aid the court in determining the particular meaning of a term in the pertinent field, but
“conclusory, unsupported assertions by experts as to the definition of a claim term are not
useful.” Id. Generally, extrinsic evidence is “less reliable than the patent and its prosecution
history in determining how to read claim terms.” Id.

Undisputed Claim Terms

Before proceeding to resolving the disagreements with respect to the disputed claim
terms, the Court notes that the parties have agreed to the construction of two claim terms. They
are as follows:

Undisputed Claim Term
“bcc-d”
“fcc-d”

Agreed-Upon Proposed Construction
Either a body centered cubic or a body
centered cubic derivative crystal structure.
Either a face centered cubic or a face centered
cubic derivative crystal structure.

The Court, agreeing with the parties’ proposed constructions, adopts the agreed-upon
constructions without change. The Court finds that these constructions are supported by the
specification. E.g., ‘988 patent at col. 4, lns. 44-45; id. at col. 5, lns.12-13.

Disputed Claim Terms

The parties have asked the Court to construe six disputed claim terms. These terms are:

Number
1
2
3
4
5
6

Term
“Atomic template”
“[Layer] providing a (111) textured hexagonal atomic template”
“Uniaxial”
“Symmetry broken structure”
“Uniaxial symmetry broken structure”
“Variant/orientational variant” and “variants/orientational variants”

As the Court will explain in greater detail below, the Court will adopt the following
constructions for the disputed terms:
Number

Term
“Atomic template”

1
“[Layer] providing a (111) textured
hexagonal atomic template”

2

“Uniaxial”
3

“Symmetry broken structure”
4
“Uniaxial symmetry broken structure”
5
“Variant/orientational variant”
6

“Variants/orientational variants”

Construction
An atomic pattern upon which
material is grown and which is
used to direct the growth of an
overlying layer
Layer that is predominately
(111) hexagonal and that
provides an atomic template
Having an anisotropy energy
density function with only a
single maximum and a single
minimum as the magnetization
angle is rotated by 180 degrees
from a physical axis
A structure consisting of
unequal volumes or unequal
amounts of the bcc-d variants
of a six variant system
A structure that is uniaxial as a
result of the structure being
symmetry broken
One of a set of possible crystal
orientations
Two or more of a set of
possible crystal orientations

1. Atomic template2
The Court finds that the appropriate construction of “atomic template” is “an atomic
pattern upon which material is grown and which is used to direct the growth of an overlying
layer.”
As noted in the chart below, the Seagate and Western Digital Defendants’ proposed
constructions are identical.

2

This term appears in all asserted claims other than claim 17.

Claim
Term
“Atomic
template”

Lambeth’s
Proposal

Seagate’s
Proposal

Western Digital’s
Proposal

Toshiba’s
Proposal
[action dismissed]
An underlying
Surface that directs Surface that directs An atomic pattern
pattern of atoms the growth of the
the growth of the
upon which a
that guides the
bcc-d layer.
bcc-d layer.
material is grown
formation of an
and which is used
overlying layer.
to guide the
location of the
atoms in the
material.

The distinctions between Plaintiff’s and remaining Defendants’ constructions rest on two
possible limitations3 proposed by Defendants and the claim construction question for the Court
can be stated as two disputes: whether the atomic template consists of only the “surface” as
opposed to the “underlying pattern of atoms,” and whether the layer that this template causes to
form must be “the bcc-d layer” or may be “an overlying layer” in the material.
Concerning the first limitation, the Court finds no basis in the intrinsic or extrinsic
evidence to restrict the meaning of “atomic template” to the atoms in, or adjacent to, the
“surface.” Defendants argue that term “surface,” which “include[s] the top layer of atoms” and
perhaps immediate additional layers, Hearing Transcript at 35, lns. 19-23, is present in the ‘988
patent and adds clarity to the meaning of “atomic template,” which could otherwise refer to
atoms present anywhere in a layer of the structure. Western Digital’s Responsive Claim
Construction Brief (Civil Action No. 16-541, Doc. 61) at 4; Seagate’s Response to Plaintiff’s

While the briefing includes a third dispute as to “guides the formation” versus “directs the
growth,” e.g., Seagate’s Response to Plaintiff’s Opening Claim Construction Brief (Civil Action
No. 16-538, Doc. 56) at 4, Plaintiff’s arguments during the Markman hearing revealed that its
objection to “directs the growth” primarily concerned Toshiba’s proposed construction, which
refers to guiding “the location of atoms” rather than guiding the overall shape of a layer;
Plaintiff’s argument does not rest on the distinction between “guides” and “directs.” Hearing
Transcript at 22, lns. 21-25. In light of Plaintiff’s dismissal of its action against Toshiba and this
Court’s resolution of the remaining disputes, this third dispute is no longer relevant.
3

Opening Claim Construction Brief (Civil Action No. 16-538, Doc. 56) at 5-7. However,
“surface” is not used in the ‘988 patent in the context of defining or describing the term “atomic
template” and, as Defendants conceded during the Markman hearing, the patent’s internal logic
implies that “there’s more to the atomic template” than the surface. Hearing Transcript at 36,
lns. 7-15; see also id. at 41, lns. 1-8.
In the context of the asserted claims, the word “template” has an ordinary meaning that
implies a function—influencing the growth of the layers above it. Cf. Detailed Action, Office
Action 10/415,757 (Civil Action No. 16-538, Doc. 50-4) [hereinafter “Office Action”] at ¶6
(“The underlying layers appears [sic] to direct the growth of overlying layers in order to achieve
the claimed microstructure.”). In construing “atomic template,” the Court need not set a limit on
the template’s thickness by using the word “surface.”
Likewise, the patent provides no basis for the second limitation, which would restrict the
meaning of “atomic template” to one which specifically directs the growth “of the bcc-d layer”
as opposed to “an overlying layer.” As a factual matter, it may be the case that the invention
uses an atomic template to control the growth of a bcc-d layer. See ‘988 Patent at col. 12, ln. 66col. 13, ln. 2 (“this invention deals with a structure to achieve uniaxial magnetocrystalline
orientation via the use of the (110) texture of the body centered cubic (bcc) or body centered
cubic derivative crystal thin film structures”). However, as a matter of claim construction, there
is no reason to restrict the definition as Defendants propose. This is because the patent also
implies that atomic templates may exert effects on overlying layers through intervening layers
composed of various crystalline structures, including ones that are not bcc-d. E.g., ‘988 patent at
col. 10, lns. 15-20 (intervening fcc layer); id. at col. 29, lns. 60-66 (intervening bcc-d layers); id.
at col. 30, ln. 63 – col. 31, ln. 3 (intervening bcc-d layers). Restricting the meaning of “atomic

template” to an atomic template that directs the growth of the bcc-d layer would be inconsistent
with the role of an atomic template implied throughout the specification. Drawing on the
Examiner’s clarification during prosecution,4 the atomic template is simply the pattern of atoms
upon which material is grown and which is used to direct the growth of an overlying layer in the
material. See Office Action at ¶6 (“The underlying layers appears [sic] to direct the growth of
overlying layers in order to achieve the claimed microstructure.”).
2. [Layer] providing a (111) textured hexagonal atomic template5
The second disputed claim term incorporates the first term, “atomic template,” but adds a
restricting adjectival phrase, “(111) textured hexagonal.”6 For the reasons stated below, the
Court finds that the appropriate construction of “[layer] providing a (111) textured hexagonal
atomic template” is “layer that is predominately (111) hexagonal and that provides an atomic
template.”
The parties’ proposed constructions for this claim term are provided in the chart below:

This description was subsequently adopted by the applicant. See Lambeth’s Opening Claim
Construction Brief (Civil Action No. 16-538, Doc. 50) at 3.
5
This term appears in all asserted claims except claim 17.
6
As shown in the proposed construction chart for this term, the meanings of “layer” and
“providing” are not disputed.
4

Claim
Term

Lambeth’s
Proposal

Seagate’s
Proposal

Western Digital’s
Proposal

“[Layer]
providing
a (111)
textured
hexagonal
atomic
template”

Providing an
atomic template
having a close
packed hexagonal
pattern of atoms
formed from a
(111) plane of
fcc-d material or
a (0002) plane of
hcp material.

Layer providing a
predominantly
(111) hexagonal
surface that directs
the growth of the
bcc-d crystals of
the bcc-d layer.

Layer providing a
predominantly
(111) hexagonal
surface that directs
the growth of the
bcc-d crystals of
the bcc-d layer.

Toshiba’s
Proposal
[action
dismissed]
Providing a (111)
textured
hexagonal atomic
template to the
bcc-d layer.

As explained below, the word “textured” is the only remaining term for the Court to
construe in the second disputed claim. A person of ordinary skill in the art would recognize the
meaning of (111) hexagonal in the context of magnetic material structures, as this refers to a
geometric plane in a commonly used coordinate system for describing the location of a layer
within a crystalline structure. See, e.g., ‘988 patent at col. 10, lns. 35-42 (referring to the (110)
plane and the (111) plane, and noting that “[t]hese crystalline planes and crystalline directions
are illustrated in FIG. 3,” which depicts crystal orientations on these planes in relation to each
other and illustrates the hexagonal pattern of atoms on the (111) plane); id. at col. 15, lns. 5-9
(referring to the “(111) plane of atoms” and the “(111) atomic crystal planes” of crystal lattices);
Hearing Transcript at 77, ln. 19 (“(111) refers to a plane” (statement by counsel for Plaintiff));
id. at 85, lns. 23-25 (“we think there is no dispute that people of skill in the art would know what
(111) hexagonal is” (statement by counsel for Western Digital)). The inventor has not provided
a definition that would supplant the ordinary meaning of this term. No further construction of
(111) hexagonal is necessary. This Court has already construed the meaning of “atomic
template” in the context of the asserted claims, above. As a result, the only remaining term for
this Court to construe within the second disputed claim is the word “textured.”

Fortunately, the inventor has acted as his own lexicographer in this instance and provided
a definition of this term in United States Patent No. 6,248,416 (the “‘416 patent”), which is
incorporated by reference in the ‘988 patent. ‘988 patent at col. 9, lns. 48-49. The ‘416 patent
defines “texture” as follows:
The predominate crystallographic orientation of a layer is known as the crystallographic
texture, or texture, as used herein, as opposed to the use of the term “texture” to describe
the mechanical roughness of a surface.
‘416 patent at col. 2, lns. 36-40. In the disputed claim, as noted above, “(111) hexagonal”
describes the crystallographic orientation of the referenced layer. The term “textured,” in this
context, thus indicates that “(111) hexagonal” is the predominate crystallographic orientation of
the layer.
Plaintiff’s and Defendants’ proposed additions to this construction are rejected. Plaintiff
would add that such a layer must have “a close packed hexagonal pattern of atoms formed from a
(111) plane of fcc-d material or a (0002) plane of hcp material.” The patent explicitly states that
these formations are both “examples of the (111) textured hexagonal atomic template.” ‘988
patent at col. 14, lns. 55-59.7 The two close packed hexagonal structures mentioned in Plaintiff’s
construction are examples of the claim term, not its definition. Defendants’ arguments
supporting their proposed limitations to this term, which refer to bcc-d crystals and the bcc-d
layer, rehash their construction arguments for the term “atomic template” and are rejected for the
same reasons.

7

The Court also notes that claim 6 states a dependent claim that adds the following limitation to
a structure containing a (111) textured hexagonal atomic template: “wherein the layer providing
said hexagonal atomic template is formed from a fcc-d or hcp crystalline material.” ‘988 patent
at col. 45, lns. 21-23. This limitation provides further support that Plaintiff’s additions are
unwarranted.

3. Uniaxial8
The third disputed claim term, “uniaxial,” is defined by the inventor in the ‘988 patent as
follows:
Here, we define “uniaxial” anisotropy to exist if the anisotropy energy density function
only contains a single maximum and a single minimum as the magnetization angle, θ, is
rotated by 180 degrees from a physical axis.
‘988 patent at col. 1, lns. 56-60. The Court finds that the appropriate construction of “uniaxial”
is “having an anisotropy energy density function with only a single maximum and a single
minimum as the magnetization angle is rotated by 180 degrees from a physical axis” because the
inventor’s definition in the ‘988 patent is dispositive.
Claim
Term
“Uniaxial”

8

Lambeth’s
Proposal

Seagate’s
Proposal

Western
Digital’s
Proposal

Having a single
magnetic easy
axis and a single
magnetic hard
axis within a
180 degree
rotation.

Having an
anisotropy
energy density
function with
only a single
maximum (local
or global) and a
single minimum
(local or global)
as the
magnetization
angle is rotated
from a physical
axis within the
(110) plane.

Having an
anisotropy
energy density
function with
only a single
maximum (local
or global) and a
single minimum
(local or global)
as the
magnetization
angle is rotated
by 180 degrees
from a physical
axis within the
layer.

This term appears in asserted claims 1, 17 and 27.

Toshiba’s
Proposal
[action
dismissed]
Having an
anisotropy
energy density
function with
only a single
maximum and a
single minimum
as the
magnetization
angle is rotated
by 180 degrees
from a physical
axis.

Plaintiff alleges that its proposed construction, shown above, is equivalent to the
definition provided in the ‘988 patent and would have the additional virtue of being more
understandable for a jury. Hearing Transcript at 117, lns. 1-20. This Court disagrees.
Defendants have demonstrated that Plaintiff’s construction is not equivalent to the definition in
the ‘988 patent because it is less precise, see, e.g., Hearing Transcript at 161, lns. 11-16, and this
Court has no reason to believe that Plaintiff’s construction would require any less explanation to
a jury than the definition provided on the face of the ‘988 patent. The Court notes that, at trial,
Plaintiff would be permitted to explain to a jury various means of understanding uniaxial
anisotropy, much as it did for the Court during its technology tutorial.
Defendants’ proposed constructions, also shown above, largely mirror the definition in
the ‘988 patent. Defendants’ minor additions to the patent’s definition are unnecessary to
completely and unambiguously construe the meaning of the term “uniaxial.”
4. Symmetry broken structure9
The Court finds that the appropriate construction of “symmetry broken structure,” the
fourth disputed claim term, is “a structure consisting of unequal volumes or unequal amounts of
the bcc-d variants of a six variant system.”
The parties’ proposed constructions are as follows:

9

This term appears in asserted claims 1, 17 and 27.

Claim
Term

Symmetry
broken
structure

Lambeth’s
Proposal

Seagate’s
Proposal

Western
Digital’s
Proposal

A structure
consisting of
unequal
amounts of the
bcc-d variants
of a six variant
system.FN
FN
The structure
need not have
all six of the
bcc-d variants
present in
order to satisfy
this claim term.

A structure of
unequal volumes
of bcc-d variants
of the six variant
system.

A structure of
unequal volumes
of bcc-d variants
of the six variant
system.

Toshiba’s
Proposal
[action
dismissed]
A structure
consisting of
unequal
amounts of the
bcc-d variants
of a six variant
system.FN
FN
The structure
need not have
all six of the
bcc-d variants
present in order
to satisfy this
claim term.

As is apparent from the chart above, the dispute here centers on whether a structure must
contain unequal “amounts” or unequal “volumes” of the bcc-d variants in order to be a
“symmetry broken structure” within the meaning of the ‘988 patent.
The Court finds that the appropriate construction allows for both possibilities. The patent
is imprecise in how it uses the words “volume” and “amount,” using them interchangeably in the
context of describing the relationship between crystal variants and symmetry. Compare ‘988
patent col. 23, lns. 26-28 (“These coupled variant sets do not have to be equally weighted in
volume in the sample.”) (emphasis added), and id. at col. 23, lns. 45-47 (“we have only discussed
at length the cases where the variants of a coupled set of variants are equally weighted (balanced)
in volume of material”) (emphasis added), and id. at col. 23, lns. 61-64 (“the energy density
difference between the minimum and the maximum would be decreased by the relative
difference in volume of materials”), with id. at col. 23, lns. 38-41 (“A crystallographically
‘symmetry broken’ material is defined to exi[s]t when individual, variant sets do not contain an
equal amount of all six of the (110) textured bcc-d variants.”) (emphasis added), and id. at col.

23, lns. 58-61 (“If the quantity of material for this pair is slightly greater than the other four
variants then this would break the symmetry and uniaxial behavior would result.”) (emphasis
added). Although the ‘988 patent’s definition of “symmetry broken” material uses the word
“amount” rather than “volume,” id. at col. 23, ln. 40, the immediate context makes clear that both
words are used interchangeably.
The Court therefore finds that it should not construe the disputed claim term in a way that
would restrict its meaning to specify either amount or volume. Where the patent itself failed to
be so precise, the Court will not read into the patent any such limits. See Phillips, 415 F.3d at
1323.
Plaintiff and Toshiba propose adding a clarifying footnote to the construction of
“symmetry broken structure” in order to note that such a structure need not contain all six of the
bcc-d variants. The Court agrees that the ‘988 patent describes symmetry broken structures with
fewer than all six of the variants and thus agrees that a symmetry broken structure may have
fewer than all six of the bcc-d variants. E.g., ‘988 patent at col. 42, lns. 44-60 (describing use of
a “hexagonal template” and a “symmetry breaking mechanism” to generate “four-element
variant sets with uniaxial behavior”). The Court finds, however, that the construction language
“unequal volumes or unequal amounts of the bcc-d variants” logically includes the cases in
which “zero” is the quantity of one or more of the variants in the six variant system (so long as
the structure meets the requirement of inequality). As a result, the proposed addition to the
construction would be superfluous.

5. Uniaxial symmetry broken structure10
Having construed “uniaxial” and “symmetry broken structure,” the Court must now
construe the fifth disputed claim term, “uniaxial symmetry broken structure.” The parties’
proposals are provided below:
Claim
Term
“Uniaxial
symmetry
broken
structure”

Lambeth’s
Proposal

A structure
consisting of
unequal
amounts of the
bcc-d variants
of a six variant
system and that
has a single
magnetic easy
axis and a
single hard
axis within a
180 degree
rotation.

Seagate’s
Proposal

A structure that
is uniaxial as a
result of the
structure being
symmetry
broken.

Western
Digital’s
Proposal
A structure that is
uniaxial as a
result of the
structure being
symmetry
broken.

Toshiba’s
Proposal
[action
dismissed]
A structure that
is uniaxial as a
result of the
structure being
symmetry
broken.

Beyond the disputes this Court resolved, above, in construing “uniaxial” and “symmetry
broken structure,” lies an additional dispute: whether this claim term requires that the structure
be uniaxial “as a result of” being symmetry broken, as Defendants propose, or whether these two
conditions need not be causally connected, as Plaintiff proposes. Because the specification
discloses that the entire purpose of the patented invention is the creation of a uniaxial structure
through a method of symmetry breaking, the Court finds that this claim term requires that the
structure be uniaxial as a result of being symmetry broken.

10

This term appears in asserted claims 1, 17 and 27.

Crucially, the Court discerns that the desirable property that distinguishes the patented
invention from the prior art is its ability to yield a crystal structure with uniaxial magnetic
anisotropy. See ‘988 patent at col. 12 ln. 66 – col. 13 ln. 8 (describing “the present invention” as
one “to achieve uniaxial magnetocrystalline orientation” and stating that “the invention of
orientation control . . . allows new devices to be constructed, which have good orientation, high
magnetization, high permeability and low losses.”). This ability is described throughout the ‘988
patent as being caused by the symmetry breaking method. E.g., ‘998 patent at col. 22, lns. 35-66
(describing the “symmetry breaking mechanisms to cause orientation” such that, under the right
“processing conditions,” one can “achieve a uniaxial magnetic behavior”); id. at col. 31, lns. 1-3
(“uniaxial behavior is obtained by utilizing the symmetry broken structure”); id. at col. 42, lns.
22-25 (“To achieve uniaxial behavior via the symmetry breaking method requires proper
orientation of the template and deposition direction.”).
The extrinsic evidence lends further support to this understanding of the invention.
During the inventor’s prosecution of the equivalent patent in the European Union, the inventor
responded to an initial rejection by clarifying that “the ‘symmetry breaking mechanism’ selects
the variant subset . . . that results in ‘uniaxial’ magnetic behavior.” EP1435091 File History:
Patentee’s Response (6/15/10) (Civil Action No. 16-538, Doc. 56-8 at 8-9).
It is apparent that the inventor’s method for growing crystal variants in order to produce
uniaxial properties constitutes the fundamental feature of the invention. In light of the
specification’s consistent emphasis on the causal relationship between symmetry breaking and
uniaxial properties, the Court will incorporate a causal relationship into its construction. See
Praxair, 543 F. 3d 1324. The Court thus finds that the appropriate construction of “uniaxial

symmetry broken structure” is “a structure that is uniaxial as a result of the structure being
symmetry broken.”
6. Variant/Orientational Variant and Variants/Orientational Variants11
The Court finds that the appropriate construction of “variant/orientational variant” is “one
of a set of possible crystal orientations” and the appropriate construction of this term’s plural,
“variants/orientational variants,” is “two or more of a set of possible crystal orientations.”
The parties’ proposed constructions of the sixth disputed claim term are below:
Claim
Term

Lambeth’s
Proposal

Seagate’s
Proposal

“Variant/
One of a set of A bcc-d (110)
orientational possible crystal crystal with a
variant”
orientations.
<100> direction
(i) in the (110)
plane and (ii)
located at one of
six angles
relative to the
<110> direction
of the hexagonal
template grain
directing the
growth of the
bcc-d crystal: {-<formula>--}
“Variants/
Two or more
A bcc-d (110)
orientational of a set of
crystal with a
variants”
possible crystal <100> direction
orientations.
(i) in the (110)
plane and (ii)
located at one of
six angles
relative to the
<110> direction
of the hexagonal
template grain
11

This term appears in asserted claim 8.

Western
Digital’s
Proposal
Crystal(s) for
which one of the
bcc-d <111>
directions lies
parallel to one of
the hexagonal
template <110>
directions and for
which the bcc-d
<100> direction
does not lie
parallel to the
<110> hexagonal
template.
Crystal(s) for
which one of the
bcc-d <111>
directions lies
parallel to one of
the hexagonal
template <110>
directions and for
which the bcc-d
<100> direction
does not lie

Toshiba’s
Proposal
[action
dismissed]
An in-plane
orientation of
an overlying
crystal structure
relative to an
underlying
structure.

Different inplane
orientations of
an overlying
crystal structure
relative to an
underlying
crystal
structure.

directing the
parallel to the
growth of the
<110> hexagonal
bcc-d crystal: {-- template.
<formula>--}
In every usage within the ‘988 patent, immediate context indicates that “variant” and
“orientational variant” refer to one of a set of possible crystal structures that are defined by their
orientation. E.g., ’988 patent at col. 10, lns. 39-41 (“there are three ways (variants) for the bcc
Cr (110) plane to orient on this . . . surface”); id. at col. 11, lns. 15-16 (“one or two of the three
possible orientational variants might grow on a given grain”); id. at col. 13, lns. 39-42 (“FIG. 5
shows an illustration of two of the six possible orientational variants of the (110) crystal plane”);
id. at col. 12, lns. 48-52 (“By carefully controlling the epitaxial growth conditions . . . the
applicant has invented a new set of six crystalline variants with special orientational
relationships). The remaining Defendants propose restricting the meaning of “variant” to refer to
only the crystal orientations that are most closely connected to the invention. This definition
would exclude, or make unintelligible, numerous examples in the patent in which the word
“variant” refers to possible crystal orientations other than those indicated by Defendants. E.g.,
id. at col. 10, lns. 39-41; id. at col. 11, lns. 15-16. Accordingly, the Court adopts Plaintiff’s
construction of “variant(s)” and “orientational variant(s).”
IT IS SO ORDERED.

October 18, 2017

cc (via ECF email notification):
All Counsel of Record

s/Cathy Bissoon
Cathy Bissoon
United States District Judge