Collins et al v. Western Digital Technologies, Inc. et al
Filing
383
MEMORANDUM OPINION AND ORDER - The Court adopts the constructions set forth in this opinion for the disputed terms and disputed phrases of the patents-in- suit. Signed by Judge T. John Ward on 9/22/2011. (ch, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
CARL B. COLLINS and FARZIN
DAVANLOO,
Plaintiffs,
v.
WESTERN DIGITAL TECHNOLOGIES,
INC., et al.,
Defendants.
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CIVIL ACTION NO. 2:09-cv-219-TJW
MEMORANDUM OPINION AND ORDER
I.
INTRODUCTION
Plaintiffs Carl Collins and Farzin Davanloo (collectively “Plaintiffs”) filed suit on July
15, 2009, alleging that Western Digital Technologies, Inc., (“Western Digital”), Hitachi, Ltd.
(“Hitachi”), Hitachi America, Ltd. (“Hitachi America”), Hitachi Global Storage Technologies,
Inc. (“Hitachi Global Storage”) (collectively, Hitachi, Hitachi America, and Hitachi Global
Storage shall be referred to as the “Hitachi Defendants”), Toshiba Corporation (“Toshiba”),
Toshiba America, Inc. (“Toshiba America”), Toshiba America Information Systems, Inc.
(“Toshiba American Information”) (collectively, Toshiba, Toshiba America, and Toshiba
American Information shall be referred to as the “Toshiba Defendants”), Buffalo Inc.
(“Buffalo”), Buffalo Technology (USA), Inc. (“Buffalo Technology”) (collectively, Buffalo and
Buffalo Technology shall be referred to as the “Buffalo Defendants”), EMC Corporation
(“EMC”), Imation Corp. (“Imation”), La Cie, S.A. (“La Cie”), La Cie, Ltd. (“La Cie USA”)
(collectively, La Cie and La Cie USA shall be referred to as the “La Cie Defendants”),
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Systemax, Inc. (“Systemax”), Compusa.com Inc. (“CompUSA”), J & R Electronics, Inc. (“J & R
Electronics), and TigerDirect, Inc. (“TigerDirect”), (collectively “Defendants”) infringe U.S.
Patent Nos. 5,411,797 (“the „797 patent”) and 5,478,650 (“the „650 patent”). On June 16, 2011,
the Court held a claim construction hearing where the parties presented oral arguments regarding
the disputed terms. The Court previously construed a number of the terms at issue in this case in
Collins et al. v. The Gillette Co., No. 2:04-cv-38 (E.D. Tex.) (“Gillette”). In Gillette, the Court
reviewed briefing from the parties, held a claim construction hearing, and issued an order
construing five terms of the asserted patents. This order will first briefly address the technology
at issue in the case and then turn to the merits of the claim construction issues.
II.
BACKGROUND OF THE TECHNOLOGY
The patents-in-suit are titled “Nanophase Diamond Films.” Both patents disclose films
of nanometer-scale nodules of diamond-bonded carbon structures. The invention claimed is “an
amorphous or ultra fine-grained, diamond-like material that is substantially free of graphite and
hydrogen, and is deposited in a film on a substrate in the form of nanometer-sized, tightly packed
nodules of sp3-bonded carbon, hereinafter referred to as „nanophase diamond.‟” „797 patent,
1:16-21. The ‟650 patent is a divisional of the ‟797 patent. The patents have materially identical
specifications. The abstract for the „797 patent states:
Films of nanometer-scale nodules of diamond-bonded carbon
structures are disclosed. Such films may be used, for example, to
coat objects to improve their resistance to wear. Moreover, because
the nanophase diamond films of the present invention are of optical
quality, they may be used to coat optical lenses and the like. The
nanophase diamond films of the present invention have diamondlike properties, indicating a preponderance of sp3 bonds within the
nodules and a substantial absence of hydrogen and graphite within
the nodules. If desired, the nanophase diamond films disclosed
herein may be created to have a hardness exceeding that of natural
diamond, depending on the quantity of graphite left in the voids
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between the nodules. The nanophase diamond films of the present
invention are also characterized by a low coefficient of friction, by
low average internal stress, and by an optical quality capable of
providing a visual appearance of Newton's rings of interference.
As an exemplary claim, claim 1 of the „797 patent is reproduced below:
1.
A nanophase diamond film, comprising nodules of carbon
bonded predominantly in three dimensional sp3 bonds, said film
comprising less than about 20% hydrogen, having an imaginary
index of refraction less than 0.5 for a light wavelength of about
632.8 nm, and said nodules having a diameter of less than about
500 angstroms.
III.
GENERAL PRINCIPLES GOVERNING CLAIM CONSTRUCTION
“A claim in a patent provides the metes and bounds of the right which the patent confers
on the patentee to exclude others from making, using or selling the protected invention.” Burke,
Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed. Cir. 1999). Claim construction
is an issue of law for the court to decide. Markman v. Westview Instruments, Inc., 52 F.3d 967,
970-71 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996).
To ascertain the meaning of claims, the Court looks to three primary sources: the claims,
the specification, and the prosecution history. Markman, 52 F.3d at 979. The specification must
contain a written description of the invention that enables one of ordinary skill in the art to make
and use the invention. Id. A patent‟s claims must be read in view of the specification, of which
they are a part. Id. For claim construction purposes, the description may act as a sort of
dictionary, which explains the invention and may define terms used in the claims. Id. “One
purpose for examining the specification is to determine if the patentee has limited the scope of
the claims.” Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000).
Nonetheless, it is the function of the claims, not the specification, to set forth the limits of
the patentee‟s invention. Otherwise, there would be no need for claims. SRI Int’l v. Matsushita
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Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). The patentee is free to be his own
lexicographer, but any special definition given to a word must be clearly set forth in the
specification. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992).
Although the specification may indicate that certain embodiments are preferred, particular
embodiments appearing in the specification will not be read into the claims when the claim
language is broader than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc.,
34 F.3d 1048, 1054 (Fed. Cir. 1994).
This Court‟s claim construction decision must be informed by the Federal Circuit‟s
decision in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In Phillips,
the court set forth several guideposts that courts should follow when construing claims. In
particular, the court reiterated that “the claims of a patent define the invention to which the
patentee is entitled the right to exclude.”
415 F.3d at 1312 (emphasis added) (quoting
Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1115 (Fed. Cir.
2004)). To that end, the words used in a claim are generally given their ordinary and customary
meaning. Id. The ordinary and customary meaning of a claim term “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 1313. This principle of patent law
flows naturally from the recognition that inventors are usually persons who are skilled in the
field of the invention and that patents are addressed to and intended to be read by others skilled
in the particular art. Id.
The primacy of claim terms notwithstanding, Phillips made clear that “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
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specification.” Id. Although the claims themselves may provide guidance as to the meaning of
particular terms, those terms are part of “a fully integrated written instrument.” Id. at 1315,
quoting Markman, 52 F.3d at 978. Thus, the Phillips court emphasized the specification as being
the primary basis for construing the claims. Id. at 1314-17. As the Supreme Court stated long
ago, “in case of doubt or ambiguity it is proper in all cases to refer back to the descriptive
portions of the specification to aid in solving the doubt or in ascertaining the true intent and
meaning of the language employed in the claims.” Bates v. Coe, 98 U.S. 31, 38 (1878). In
addressing the role of the specification, the Phillips court quoted with approval its earlier
observations from Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir.
1998):
Ultimately, the interpretation to be given a term can only be
determined and confirmed with a full understanding of what the
inventors actually invented and intended to envelop with the claim.
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.
Phillips, 415 F.3d at 1316. Consequently, Phillips emphasized the important role the
specification plays in the claim construction process.
The prosecution history also continues to play an important role in claim interpretation.
Like the specification, the prosecution history helps to demonstrate how the inventor and the
PTO understood the patent. Id. at 1317. Because the file history, however, “represents an
ongoing negotiation between the PTO and the applicant,” it may lack the clarity of the
specification and thus be less useful in claim construction proceedings. Id. 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
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narrowing the scope of the claims. Id.
Phillips rejected any claim construction approach that sacrificed the intrinsic record in
favor of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc court
condemned the suggestion made by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193
(Fed. Cir. 2002), that a court should discern the ordinary meaning of the claim terms (through
dictionaries or otherwise) before resorting to the specification for certain limited purposes.
Phillips, 415 F.3d at 1319-24. The approach suggested by Texas Digital—the assignment of a
limited role to the specification—was rejected as inconsistent with decisions holding the
specification to be the best guide to the meaning of a disputed term. Id. at 1320-21. According
to Phillips, reliance on dictionary definitions at the expense of the specification had the effect of
“focus[ing] the inquiry on the abstract meaning of words rather than on the meaning of claim
terms within the context of the patent.” Id. at 1321. Phillips emphasized that the patent system
is based on the proposition that the claims cover only the invented subject matter. Id. What is
described in the claims flows from the statutory requirement imposed on the patentee to describe
and particularly claim what he or she has invented. Id. The definitions found in dictionaries,
however, often flow from the editors‟ objective of assembling all of the possible definitions for a
word. Id. at 1321-22.
Phillips does not preclude all uses of dictionaries in claim construction proceedings.
Instead, the court assigned dictionaries a role subordinate to the intrinsic record. In doing so, the
court emphasized that claim construction issues are not resolved by any magic formula. The
court did not impose any particular sequence of steps for a court to follow when it considers
disputed claim language. Id. at 1323-25. Rather, Phillips held that a court must attach the
appropriate weight to the intrinsic sources offered in support of a proposed claim construction,
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bearing in mind the general rule that the claims measure the scope of the patent grant. Having
read the parties‟ papers and carefully considered their arguments and the relevant legal authority,
the Court hereby rules as follows
IV.
AGREED CONSTRUCTIONS
Based upon the joint submission of claim construction charts and subsequent arguments
in briefing and at the claim construction hearing, the following terms of the patent have been
agreed to by the parties.
1. “20% hydrogen”
Claim language
Agreed Construction
“20% hydrogen”
“20 atomic % hydrogen”
The phrase “20% hydrogen” is used in claim 1 of the „797 patent and claim 1 of the „650
patent. A review of the intrinsic evidence leads the Court to conclude that the parties‟ agreed
construction is how a person of ordinary skill in the art would interpret the claim term.
Therefore, the Court adopts the parties‟ agreed construction.
2. “bonded predominately in three dimensional sp3 bonds”
Claim language
Agreed Construction
“bonded predominately in three dimensional
sp3 bonds”
“approximately 95% or more of the bonds
between the carbon atoms in each nodule are
three dimensional sp3 bonds”
The term “bonded predominately in three dimensional sp3 bonds” appears in claim 1 of
the „797 patent and claims 1 and 4 of the „650 patent. A review of the intrinsic evidence leads
the Court to conclude that the parties‟ agreed construction is how a person of ordinary skill in the
art would interpret the claim term. Therefore, the Court adopts the parties‟ agreed construction.
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3. “having an imaginary index of refraction less than 0.5 for light wavelength of about
632.8 nm” and “about”
In their response, Defendants informed the Court that there was no longer a need to
construe the phrase “having an imaginary index of refraction less than 0.5 for light wavelength of
about 632.8 nm” and the term “about.” (Dkt. No. 294 at 15.)
V.
TERMS IN DISPUTE OF THE PATENTS-IN-SUIT
The parties have identified five disputed terms or phrases.
1. “nodules”
Claim Term or Phrase
“nodules”
Plaintiffs’
Proposed Construction
“Clusters of carbon atoms of
rounded or irregular shape . . .”
Defendants’
Proposed Construction
Indefinite.
The Court construes “nodules” as “clusters of carbon atoms of rounded or irregular
shape.”
A.
Parties’ Construction Arguments
The parties dispute whether the term “nodules” is indefinite. Defendants contend that the
term is indefinite because the lower boundary for the size of a nodule cannot be determined, the
diameter of a nodule will vary depending on the testing method, and nodules cannot be
differentiated from other nanophase elements.
Plaintiffs‟ proposed construction is the one
determined by the Court in Gillette.
B.
Analysis
To begin its analysis, the Court first turns to the language of the claims, as it provides
“substantial guidance as to the meaning of particular claim terms.” Phillips, 415 F.3d at 1313
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(citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The term
“nodules” appears in claims 1 and 2 of the „797 patent and claims 1 and 4 of the „650 patent.
The term is used consistently in each patent and throughout the claims. Moreover, the claim
language itself indicates that a nodule is a cluster of carbon atoms bonded together. For example
claim 1 of the „797 patent recites “nodules of carbon bonded.” With this in mind, the Court next
turns to the specification as it “is always highly relevant to the claim construction analysis.
Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Id. at
1315 (citation omitted).
The specification of the „797 patent states that “it is understood that the nanophase
diamond film comprises substantially dehydrogenated nodules of sp3-bonded carbon (i.e., finegrained clusters having dimensions of 100-1000 angstroms and preferably less than 500
angstroms).” ‟797 patent, 6:64-68. Thus, the specification also indicates that nodules are clusters
of carbon atoms. In addition, the specification states that “[t]he basic unit of construction of the
nanophase diamond of the present invention is the sp3-bonded nodule…[t]he nodules lack
coherent ordering, probably because they contain a random alternation of the cubic and
hexagonal polytypes of diamond…[w]ith electron diffraction, [the nodules] appear amorphous.”
‟797 patent, 4:27-35. In addition, Figure 6 of the patents-in-suit illustrates “a photograph of
diamond nodules.” ‟797 patent, Fig. 6. As the Court stated in Gillette, a picture is worth a
thousand words, and Figure 6 depicts “nodules” that are clearly rounded in shape and others that
are irregular in shape. Figure 6 also includes a 0.2 µm scale as reference to indicate the size of
the nodules included in the figure. Thus, the specification indicates that nodules may have
rounded or irregular shape, and need not be perfectly round as implied by Defendants.
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Defendants contend that the term “nodules” is indefinite because it is not possible for one
of ordinary skill in the art to distinguish a “cluster of carbon atoms” from a collection of carbon
atoms that is not a “cluster.” In other words, the term is indefinite because the lower bound for
the size of “nodules” cannot be determined.
First, there is no requirement that the term
“nodules” be defined with “mathematical precision” to be definite. Invitrogen Corp. v. Biocrest
Mfg., L.P., 424 F.3d 1374, 1384 (Fed. Cir. 2005) (“a patentee need not define his invention with
mathematical precision in order to comply with the definiteness requirement”); Exxon Res. &
Eng’g Co. v. U.S., 265 F.3d 1371, 1381 (Fed. Cir. 2001) (“mathematical precision is not required
[for definiteness] - only a reasonable degree of particularity and definiteness”). Moreover, the
claim language itself indicates to one of ordinary skill in the art the size of the nodules that fall
within the scope of the claims. Specifically, claim 1 of „797 recites “nodules having a diameter
of less than about 500 angstroms.” Claim 2 adds a further limitation that “said nodules having a
diameter less than about 200 angstroms.” Thus, the claim language explicitly states that the
patentee‟s right to exclude starts when the diameter of the nodules is less than about 500
angstroms. Defendants‟ “lower bound” argument is nothing more than an attempt to read a
limitation into the claim.
The Court also rejects Defendants‟ argument that a diameter of an irregular nodule could
not be measured definitively. The term “diameter” is commonly understood to mean “the length
of a straight line through the center with end points at the perimeter.” As illustrated in Figure 6,
the diameters of the nodules can be determined even though they are irregularly shaped. And
contrary to Defendants‟ contention, the specification indicates that Figure 6 is an embodiment of
the present invention. Finally, Defendants‟ argument that nodules cannot be differentiated from
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other nanophase elements is unpersuasive. Accordingly, for the reasons stated above, the Court
construes “nodules” as “clusters of carbon atoms of rounded or irregular shape.”
2. “nanophase diamond film”
Claim Term or Phrase
“nanophase diamond film”
Plaintiffs’
Proposed Construction
Defendants’
Proposed Construction
“A film having nanometerscale nodules of diamondbonded carbon displaying
characteristics similar to that of
diamond.”
Plaintiffs‟ proposed construction
would render this phrase
indefinite.
Defendants instead propose that
the phrase be construed as: “A
film that is at least 75%
diamond-bonded carbon and that
is made of tightly packed
nanometer-scale nodules of
diamond-bonded carbon.”
The Court construes “nanophase diamond film” as “a film having nanometer-scale
nodules of diamond-bonded carbon displaying characteristics similar to that of diamond”
A.
Parties’ Construction Arguments
The parties do not have any dispute about the meaning of the word “film,” instead the
issue is how to define “nanophase diamond.” Both parties point to different portions of the
specifications to support their proposed construction. Plaintiffs‟ proposed construction is the one
determined by the Court in Gillette.
B.
Analysis
To begin its analysis, the Court first turns to the language of the claims. The phrase
“nanophase diamond film” appears in claims 1, 2, and 4 of the „797 patent and claims 1, 2, and 4
of the „650 patent. The phrase is used consistently in each patent and throughout the claims.
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Moreover, the phrase is not explicitly defined in the claims. Thus, the Court turns to the
specification.
The term “nanophase diamond” is expressly defined in the specification of the „797
patent. “Vitrionics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“The
specification acts as a dictionary when it expressly defines terms used in the claims or when it
defines terms by implication.”) Specifically, the specification states that “[t]he term „nanophase
diamond‟ refers to any type of structure having nanometer-scale nodules of diamond-bonded
carbon displaying characteristics similar to that of diamond.” „797 patent, 7:19-22.
Defendants argue that following portion of the specification further explains the term
“nanophase diamond.”
This invention relates to an amorphous or ultra fine-grained,
diamond-like material that is substantially free of graphite and
hydrogen and is deposited in a film on a substrate in the form of
nanometer-sized, tightly packed nodules of sp3-bonded carbon,
hereinafter referred to as „nanophase diamond.‟
„797 patent, 1:16-21.
The Court finds that the passage of the specification relied on by
Defendants is discussing a preferred embodiment of the invention and is not the explicit
definition of the term. This embodiment of the invention should not be imported into the term‟s
definition. Accordingly, the Court construes “nanophase diamond film” to mean “a film having
nanometer-scale nodules of diamond-bonded carbon displaying characteristics similar.” Martek
Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1380 (Fed. Cir. 2009) (“When a patentee
explicitly defines a claim term in the patent specification, the patentee's definition controls.”).
Defendants argue that the specification consistently defines “nanophase diamond” films
as involving greater than 75% sp3 bonded carbon and tightly packed “nodules” throughout the
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film. Again, these are descriptions of the preferred embodiments of the invention that should not
be read into the claims. In addition, the Court notes that the phrase “nanophase diamond films”
appear in the preamble of the claims. It would be incorrect to read these preferred embodiments
into the preamble of the claims. Indeed, the parties have agreed that “bonded predominately in
three dimensional sp3 bonds” means “approximately 95% or more of the bonds between the
carbon atoms in each nodule are three dimensional sp3 bonds.” Thus, the limitation relating to
the percentage of sp3 bonds is explicitly included in the body of claim 1 and it would be incorrect
to include Defendants‟ proposed limitation in the preamble of the claims.
Finally, Defendants contend that the one of ordinary skill in the art would not know
which or how many characteristics of the film would need to be similar to characteristics of
diamond to be covered by the claim. The Court disagrees. The specification identifies at least
four “characteristics similar to that of diamond.” „797 patent, 4:15-20 (“physical hardness,
electrical strength, high thermal conductivity, and optical transparency”).
Moreover, the
specification provides numerical ranges for properties of both natural diamonds and nanophase
diamond films. See, e.g., „797 patent, 2:1-13; 15:15-64. In the light of the intrinsic evidence, the
Court finds that a person of ordinary skilled would understand how a material can have
characteristics similar to diamond without requiring numerical ranges. See Exxon, 265 F.3d at
1381 (Fed. Cir. 2001) (“[M]athematical precision is not required—only a reasonable degree of
particularity and definiteness.”) Accordingly, the Court construes “nanophase diamond film” as
“a film having nanometer-scale packed nodules of diamond-bonded carbon displaying
characteristics similar to that of diamond.”
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3. “an optical quality capable of providing a visual appearance of Newton’s rings of
interference”
Claim Term or Phrase
“an optical quality capable
of providing a visual
appearance of Newton‟s
rings of interference”
Plaintiffs’
Proposed Construction
“Optical characteristics such
that the material is capable of
exhibiting visible dark, bright,
and/or colored rings or lines.”
Defendants’
Proposed Construction
Plaintiffs‟ proposed construction
renders this term indefinite.
The Court construes “an optical quality capable of providing a visual appearance of
Newton‟s rings of interference” as “optical characteristics such that the material is capable of
exhibiting visible dark, bright, and/or colored rings or lines.”
A.
Parties’ Construction Arguments
The parties‟ dispute whether the term “an optical quality capable of providing a visual
appearance of Newton‟s rings of interference” is indefinite. Defendants contend that Plaintiffs‟
proposed construction renders the term indefinite because the claims fail to identify the required
sample thickness needed to conduct the measurement. Plaintiffs‟ proposed construction is the
one determined by the Court in Gillette.
B.
Analysis
To begin its analysis, the Court first turns to the language of the claims. The phrases “an
optical quality capable of providing a visual appearance of Newton‟s rings of interference”
appears in claim 4 of the „797 patent. The Court finds that the phrase is used consistently in the
patent and is meant to have a similar meaning. In addition, the phrase is not explicitly defined in
the claims. Thus, the Court turns to the specification.
The specification of the „797 patent states:
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The optical quality of the nanophase diamond layer is particularly
significant in that it is capable of providing a visual appearance of
Newton‟s rings of interference. The occurrence of Newton‟s rings
in a film of optical material can be an especially useful means for
distinguishing that material from other so-called optical quality, or
“diamond-like” materials. Properties of importance to the quality
of an optical material include quantities such as a high index of
refraction, a low coefficient for absorption of light, a smooth
surface finish, and a nodule or crystal size smaller than a
wavelength of the light of interest. Each of these properties is a
necessary but not sufficient condition to support the appearance of
Newtons‟ rings.
‟797 patent, 12:51-61. The parties do not dispute that Newton‟s rings are understood by those of
ordinary skill in the art to be a series of light, dark, and/or colored lines or rings created as
results of interference patterns. (See, e.g., Dkt. No. 288-1 at 90 (Eugene Hecht, Optics at 347).)
Thus, the disputed claim term clearly refers to the nanophase diamond film having particular
optical characteristics in which these visible dark, bright, and/or colored lines or rings are
exhibited.
Defendants respond that there is not an issue of what Newton‟s rings look like. Instead,
Defendants contend that whether a material will display the required optical quality depends on
the form or shape of the material. That is, they contend that any material can have interference
effects if it is sliced thin enough, including non-optical films such as metal films. Thus, it is not
a term with any meaning or ability to carve out the scope of the claim. The Court disagrees
because the specification explicitly states that materials capable of providing Newton‟s rings
must have “a high index of refraction, a low coefficient for absorption of light, a smooth surface
finish, and a nodule or crystal size smaller than a wavelength of the light of interest.” See, e.g.,
‟797 patent, 12:56-59. As argued by Plaintiffs, the claims require an optical quality that would
not be found in materials such as coal or metal, regardless of how thinly they are sliced. (See
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Dkt. No 312-1 at ¶21.)
Further, Claim 4 of the „797 patent requires only that the material be
“capable of providing a visual appearance of Newton‟s rings of interference.”
Despite
Defendants‟ contention, the claims do not require a specific thickness of the film as it relates to
this element. Accordingly, the Court construes “an optical quality capable of providing a visual
appearance of Newton‟s rings of interference” as “optical characteristics such that the material is
capable of exhibiting visible dark, bright, and/or colored rings or lines.”
4. “said film is chemically bonded with a substrate”
Claim Term or Phrase
“said film is chemically
bonded with a substrate”
Plaintiffs’
Proposed Construction
Defendants’
Proposed Construction
“A chemical bond (i.e., the
attractive force that holds
together atoms in molecules
and crystalline salts) is formed
between at least a portion of the
film and at least a portion of an
adjacent, underlying material.”
“A chemical compound
consisting of carbon and an
element of the substrate that
chemically bonds the nanophase
diamond film to the substrate.”
The Court construes “said film is chemically bonded with a substrate” as “a chemical
bond formed between a portion of the film and a portion of an adjacent, underlying material”
A.
Parties’ Construction Arguments
The parties dispute whether a film that is “chemically bonded” requires a “chemical
compound consisting of carbon,” as proposed by Defendants. Plaintiffs‟ proposed construction
is the one determined by the Court in Gillette.
B.
Analysis
To begin its analysis, the Court first turns to the language of the claims. The phrases
“said film is chemically bonded with a substrate” appears in claim 1 of the „650 patent. The
Court notes that the phrase is used consistently in each patent and is meant to have a similar
16
meaning. In addition, the phrase is not explicitly defined in the claims. Thus, the Court turns to
the specification.
The specification teaches the use of chemical bonds between the claimed film and a
portion of the substrate by stating “to hold the film onto the substrate [a] number of techniques
might be considered, but one of the best is simply to chemically bond the coating to the material
it covers in an interfacial layer.” See „650 patent, 15:31-34. This “interfacial layer” represents
the part of the film that chemically bonds with a portion of the substrate. See id. at 15:36-41.
The substrate itself is also not limited by the specification, which even indicates that “the
substrate is not necessarily a different material than the layer [of nanophase diamond film], but
merely serves as a collection source for material.” See id. 6:37-40.
Defendants argue that the specification “requires a chemical compound consisting of
carbon and an element of the substrate.”
This language is not found anywhere in the
specification of the „650 patent. Moreover, the only portions of the specification identified by
Defendants to support their proposed construction are references to preferred embodiments. See,
e.g., ‟650 patent, 6:33-37, (“may include an interfacial layer,” “[A] number of techniques might
be considered, but one of the best is simply to chemically bond…”).
Again, a preferred
embodiment of the invention will not be read into the claim. After considering the submissions
of counsel and the intrinsic record, the court is persuaded that Plaintiffs are correct. Neither the
claim language nor the specification requires that carbon be a part of the chemical bond.
Unfortunately, the patent does not provide an explicit definition for the term “substrate,”
which is one of the terms in the disputed phrase.
As indicated by the parties‟ proposed
construction of the disputed phrase “bonded to a substrate with an alloyed layer,” the parties
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propose that “substrate” should be construed as “an adjacent, underlying material.” Thus, the
parties agree that one of ordinary skill in the art would interpret the term “substrate” as “an
adjacent, underlying material.”
The Court finds that the parties‟ proposed construction is
consistent with the specification and reflects the ordinary meaning of the term “substrate.” See,
e.g., Hawley‟s Condensed Chemical Dictionary (1993). Accordingly, the Court construes “said
film is chemically bonded with a substrate” as “a chemical bond formed between a portion of the
film and a portion of an adjacent, underlying material.”
5. “bonded to a substrate with an alloyed layer”
Claim Term or Phrase
“bonded to a substrate with
an alloyed layer”
Plaintiffs’
Proposed Construction
“An adjacent, underlying
material which includes a layer
that is a mixture of a metal and
one or more different metals or
nonmetallic elements.”
Defendants’
Proposed Construction
“An adjacent, underlying
material which includes a layer
that is bonded to the nanophase
diamond film and that is a
mixture of a metal and one or
more different metals or
nonmetallic elements.”
The Court construes “bonded to a substrate with an alloyed layer” as “bonded to an
adjacent, underlying material which includes a layer that is a mixture of a metal and one or more
different metals or nonmetallic elements.”
A.
Parties’ Construction Arguments
The parties dispute whether the “alloyed layer” has to make contact with the claimed
film. Defendants contend that Plaintiffs‟ insistence on seeking to construe the phrase “substrate
with an alloyed layer” rather than the un-truncated “bonded to a substrate with an alloyed layer”
is telling because it is an apparent attempt to mask the fact that “with an alloyed layer” modifies
the word “bonded” rather than “substrate.”
Plaintiffs‟ proposed construction is the one
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determined by the Court in Gillette.
B.
Analysis
To begin its analysis, the Court first turns to the language of the claims. The phrases
“bonded to a substrate with an alloyed layer” appears in claim 2 of the „650 patent. Claim 1
recites “. . . wherein said film is chemically bonded with a substrate.” Dependent claim 2 adds
“wherein said film is bonded to a substrate with an alloyed layer.” The language in claim 2 thus
logically provides that the film is bonded with a substrate by way of an alloyed layer.
“A
dependent claim, by nature, incorporates all the limitations of the claim to which it refers.”
Jeneric/ Pentron, Inc. v. Dillon Co., Inc., 205 F.3d 1377, 1383 (Fed. Cir. 2000) (citing 35 U.S.C.
§ 112, ¶ 4 (1994)). Although, Defendants correctly argue that the claims require the location of
the bonding to between the film and an alloyed layer of the substrate, Defendants‟ proposed
construction fails to capture that requirement.
For example, if Defendants‟ proposed
construction were inserted into the claim language in place of the disputed claim term, then the
claimed nanophase diamond film would be bonded to a “material which includes a layer that is
bonded to the nanophase diamond film.” This would be redundant and repeat an express
limitation already found in claim 2. When read in the context of the entire claim, Plaintiffs‟
proposed construction correctly captures the location of the bond.
The specification also recognizes that the bonding is performed by way of an alloyed
layer. Specifically, the specification states:
The existence of a chemical bond to the substrate depends on the
material selected for the substrate. In some cases, it may not be
possible for the nanophase diamond to form a chemical bond with
the substrate. In that case, the film will be bonded to the substrate
with an alloyed layer of a thickness between about 3 and 50 nm.
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„797 patent, 15:46-16:3. Thus, the explanation and purpose given in the specification is bonding
the film to the substrate via an alloyed layer. To the extent that a party attempts to argue that the
claims covers bonding the film directly to a substrate that has an alloyed layer on the opposite
side, this argument would not be supported by the plain language of the claims.
Unfortunately, the patent does not provide an explicit definition for the term “substrate”
and “alloy,” which are two of the terms in the disputed phrase. As discussed above, the Court
construes “substrate” as “an adjacent, underlying material” as proposed by the parties.
In
addition, the parties propose that “alloy” should be construed as “a mixture of a metal and one or
more different metals or nonmetallic elements.” Thus, the parties agree that one of ordinary skill
in the art would interpret the term “alloy” as “a mixture of a metal and one or more different
metals or nonmetallic elements.” The Court finds that the parties‟ proposed construction is
consistent with the specification and reflects the ordinary meanings of the terms “substrate” and
“alloy.” See, e.g., Hawley‟s Condensed Chemical Dictionary (1993). Accordingly, the Court
construes “bonded to a substrate with an alloyed layer” as “bonded to an adjacent, underlying
material which includes a layer that is a mixture of a metal and one or more different metals or
nonmetallic elements.”
VI.
CONCLUSION
The Court adopts the constructions set forth in this opinion for the disputed terms and
disputed phrases of the patents-in-suit. The parties are ordered that they may not refer, directly
or indirectly, to each other‟s claim construction positions in the presence of the jury. Likewise,
the parties are ordered to refrain from mentioning any portion of this opinion, other than the
actual definitions adopted by the Court, in the presence of the jury. Any reference to claim
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construction proceedings is limited to informing the jury of the definitions adopted by the Court.
SIGNED this 22nd day of September, 2011.
__________________________________________
T. JOHN WARD
UNITED STATES DISTRICT JUDGE
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