Godo Kaisha IP Bridge 1 v. Broadcom Limited et al

Filing 105

CLAIM CONSTRUCTION MEMORANDUM AND ORDER. Signed by Magistrate Judge Roy S. Payne on 11/9/2016. (ch, )

THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
GODO KAISHA IP BRIDGE 1,
v.
BROADCOM LIMITED, BROADCOM
CORPORATION, AVAGO
TECHNOLOGIES, LTD., AVAGO
TECHNOLOGIES U.S., INC., and LSI
CORPORATION

§
§
§
§
§
§
§
§
§
§

CASE NO. 2:16-CV-134-JRG-RSP

CLAIM CONSTRUCTION
MEMORANDUM AND ORDER
On October 7, 2016, the Court held a hearing to determine the proper construction of
disputed claim terms in United States Patents No. 6,197,696, 6,538,324, 7,126,174, 8,354,726,
RE41,980, and RE43,729. Having reviewed the arguments made by the parties at the hearing
and in their claim construction briefing (Dkt. Nos. 67, 73 & 77),1 having considered the intrinsic
evidence, and having made subsidiary factual findings about the extrinsic evidence, the Court
hereby issues this Claim Construction Memorandum and Order. See Phillips v. AWH Corp., 415
F.3d 1303, 1314 (Fed. Cir. 2005); Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841
(2015).

1

Citations to documents (such as the parties’ briefs and exhibits) in this Claim Construction
Memorandum and Order refer to the page numbers of the original documents rather than the
page numbers assigned by the Court’s electronic docket unless otherwise indicated.
-1-

Table of Contents
I. BACKGROUND ....................................................................................................................... 4
II. LEGAL PRINCIPLES ........................................................................................................... 4
III. THE PARTIES’ STIPULATED TERMS ........................................................................... 7
IV. DISPUTED TERMS IN U.S. PATENT NO. 7,126,174 ...................................................... 7
A. “a trench isolation surrounding an active area of a semiconductor substrate” ..................... 8
B. “composed of the same material” ....................................................................................... 10
V. DISPUTED TERMS IN U.S. PATENT NO. 8,354,726 ..................................................... 11
C. “formed on the side surface of the [first/second] gate electrode” ....................................... 11
D. “a stress-containing insulating film containing internal stress and formed to cover the
first gate electrode, the first side-wall insulating film, the auxiliary pattern, and the
second side-wall insulating film” ....................................................................................... 16
E. “the first gate electrode is formed on the first active region through a gate insulating
film including nitrogen”...................................................................................................... 17
F. “an interlayer insulating film on the silicide layer through the stress-containing
insulating film” ................................................................................................................... 19
VI. DISPUTED TERMS IN U.S. PATENT NO. 6,197,696 .................................................... 20
G. “using the [first resist pattern/second resist pattern and the mask pattern/patterned third
insulating film] as a mask” ................................................................................................. 20
VII. DISPUTED TERMS IN U.S. PATENT NO. 6,538,324 .................................................. 22
H. Preambles of Claims 1 and 5 of the ’324 Patent ................................................................. 22
I. “film” .................................................................................................................................... 25
J. “said first film being composed of crystalline metal containing nitrogen therein” ............. 27
K. “said second film being composed of amorphous metal nitride” ....................................... 31
L. “[said barrier film being constituted of] common metal atomic species” ........................... 32
VIII. DISPUTED TERMS IN U.S. PATENT NO. RE41,980 ................................................ 33
M. “a surface protecting film” ................................................................................................. 33
N. “interlayer insulating film” ................................................................................................. 35
O. “small dielectric constant” .................................................................................................. 36
P. “said bonding pad in said opening and said second dielectric film of said surface
protecting film completely cover said first dielectric film so as not to expose said first
dielectric film” .................................................................................................................... 40
Q. “wherein said bonding pad covers said opening” ............................................................... 42
IX. DISPUTED TERMS IN U.S. PATENT NO. RE43,729 ................................................... 43
R. “performed within one cycle” ............................................................................................. 43
S. “predetermined instruction” ................................................................................................ 46
-2-

T. “detecting / detecting unit” .................................................................................................. 47
X. CONCLUSION...................................................................................................................... 47
APPENDIX A .............................................................................................................................. 49

-3-

I. BACKGROUND
Plaintiff has alleged infringement of United States Patents No. 6,197,696 (“the ’696
Patent”), 6,538,324 (“the ’324 Patent”), 7,126,174 (“the ’174 Patent”), 8,354,726 (“the ’726
Patent”), RE41,980 (“the ’980 Patent”), and RE43,729 (“the ’729 Patent”) (collectively, the
“patents-in-suit”).
Below, the Court addresses the disputed terms on a patent-by-patent basis, as the parties
have done in their briefing, and in the order set forth in the parties’ briefing.
Shortly before the start of the October 7, 2016 hearing, the Court provided the parties
with preliminary constructions with the aim of focusing the parties’ arguments and facilitating
discussion. Those preliminary constructions are set forth below within the discussion for each
term.
II. LEGAL PRINCIPLES
“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)). Claim construction is clearly 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). “In some cases, however, the district court will need to
look beyond the patent’s intrinsic evidence and to consult extrinsic evidence in order to
understand, for example, the background science or the meaning of a term in the relevant art
during the relevant time period.” Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841
(2015) (citation omitted). “In cases where those subsidiary facts are in dispute, courts will need
to make subsidiary factual findings about that extrinsic evidence. These are the ‘evidentiary

-4-

underpinnings’ of claim construction that we discussed in Markman, and this subsidiary
factfinding must be reviewed for clear error on appeal.” Id. (citing 517 U.S. 370).
To determine the meaning of the claims, courts start by considering the intrinsic
evidence. See Phillips, 415 F.3d at 1313; see also C.R. Bard, Inc. v. U.S. Surgical Corp., 388
F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group, Inc.,
262 F.3d 1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the
specification, and the prosecution history. See Phillips, 415 F.3d at 1314; C.R. Bard, 388 F.3d
at 861. Courts give claim terms their ordinary and accustomed meaning as understood by one of
ordinary skill in the art at the time of the invention in the context of the entire patent. Phillips,
415 F.3d at 1312-13; accord Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir.
2003).
The claims themselves provide substantial guidance in determining the meaning of
particular claim terms. Phillips, 415 F.3d at 1314. First, a term’s context in the asserted claim
can be very instructive. Id. Other asserted or unasserted claims can aid in determining the
claim’s meaning because claim terms are typically used consistently throughout the patent. Id.
Differences among the claim terms can also assist in understanding a term’s meaning. Id. For
example, when a dependent claim adds a limitation to an independent claim, it is presumed that
the independent claim does not include the limitation. Id. at 1314-15.
“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id.
at 1315 (quoting Markman, 52 F.3d at 979 (en banc)). “[T]he specification ‘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.’” Phillips, 415 F.3d at 1315 (quoting Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); accord Teleflex, Inc. v. Ficosa N. Am.

-5-

Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). This is true because a patentee may define his own
terms, give a claim term a different meaning than the term would otherwise possess, or disclaim
or disavow the claim scope. Phillips, 415 F.3d at 1316. In these situations, the inventor’s
lexicography governs. Id. The specification may also resolve the meaning of ambiguous claim
terms “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.”
Teleflex, 299 F.3d at 1325. But, “[a]lthough the specification may aid the court in interpreting
the meaning of disputed claim language, particular embodiments and examples appearing in the
specification will not generally be read into the claims.” Comark Commc’ns, Inc. v. Harris
Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced Micro-Devices, Inc.,
848 F.2d 1560, 1571 (Fed. Cir. 1988)); accord Phillips, 415 F.3d at 1323.
The prosecution history is another tool to supply the proper context for claim
construction because a patent applicant may also define a term in prosecuting the patent. Home
Diagnostics, Inc., v. Lifescan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the
specification, a patent applicant may define a term in prosecuting a patent.”). “[T]he prosecution
history (or file wrapper) limits the interpretation of claims so as to exclude any interpretation that
may have been disclaimed or disavowed during prosecution in order to obtain claim allowance.”
Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985).
Although extrinsic evidence can be useful, it is “less significant than the intrinsic record
in determining the legally operative meaning of claim language.” Phillips, 415 F.3d at 1317
(citations and internal quotation marks omitted). Technical dictionaries and treatises may help a
court understand the underlying technology and the manner in which one skilled in the art might
use claim terms, but technical dictionaries and treatises may provide definitions that are too

-6-

broad or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly,
expert testimony may aid a court in understanding the underlying technology and determining
the particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
assertions as to a term’s definition are entirely unhelpful to a court. Id. Generally, extrinsic
evidence is “less reliable than the patent and its prosecution history in determining how to read
claim terms.” Id.
The Supreme Court of the United States has “read [35 U.S.C.] § 112, ¶ 2 to require that a
patent’s claims, viewed in light of the specification and prosecution history, inform those skilled
in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig
Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). “A determination of claim indefiniteness is a
legal conclusion that is drawn from the court’s performance of its duty as the construer of patent
claims.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005)
(citations and internal quotation marks omitted), abrogated on other grounds by Nautilus, 134
S. Ct. 2120.
III. THE PARTIES’ STIPULATED TERMS
The parties reached agreement on constructions as stated in their July 29, 2016 P.R. 4-3
Joint Claim Construction and Prehearing Statement (Dkt. No. 59 at 2-5) and their September 23,
2016 Joint Claim Construction Chart (see Dkt. No. 80 at Ex. A). Those agreements are set forth
in Appendix A to the present Claim Construction Memorandum and Order.
IV. DISPUTED TERMS IN U.S. PATENT NO. 7,126,174
The ’174 Patent, titled “Semiconductor Device and Method of Manufacturing the Same,”
issued on October 24, 2006, and bears an earliest priority date of July 24, 1999. Plaintiff submits

-7-

that “[t]he ’174 patent relates to a novel transistor that is manufactured in a manner that
minimizes its size.” Dkt. No. 67 at 1.
A. “a trench isolation surrounding an active area of a semiconductor substrate”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

This term does not need construction and can
be understood under its plain and ordinary
meaning.

“the trench isolation region forms the lateral
boundary of an active area of a semiconductor
substrate”

To the extent a construction is necessary:
“a trench isolation region separating an active
area of a semiconductor substrate from other
areas of the semiconductor substrate”
Dkt. No. 59, Ex. A at 20; id., Ex. B at B-13. The parties submit that this term appears in Claim 1
of the ’174 Patent. Dkt. No. 59, Ex. A at 20; id., Ex. B at B-13.
Shortly before the start of the October 7, 2016 hearing, the Court provided the parties
with the following preliminary construction: “Plain and ordinary meaning (Reject Defendants’
proposal of ‘lateral boundary[’]).”
(1) The Parties’ Positions
Plaintiff submits that “the words making up the phrase are readily understandable,” and
Plaintiff argues that Defendants’ proposal “does not provide clarity to the term.” Dkt. No. 67
at 2.
Defendants respond that “[w]ithout clarification, the term ‘surrounding’ could be
understood to mean that the trench isolation region forms the boundary of the active area in
either just one dimension, or in all dimensions (i.e., above, below, and laterally).” Dkt. No. 73
at 2.
Plaintiff replies that “swapping of the commonly used word ‘surrounding’ for the
uncommon phrase ‘forms the lateral boundary of’ is unhelpful to a jury and finds no support in
-8-

the intrinsic record (nor do Defendants cite any).” Dkt. No. 77 at 1. Plaintiff also urges that
“a jury would understand how a trench isolation region ‘surrounds’ the active area, in the same
way it would understand how a trench would surround any structure, such as a moat surrounds a
castle.” Id.
At the October 7, 2016 hearing, Defendants were amenable to a construction of plain
meaning, but Defendants objected to Plaintiff’s argument that the isolation region need not abut
the active area. Defendants submitted that in all disclosed and illustrated embodiments, the
isolation region abuts the perimeter of the active area.
(2) Analysis
Claim 1 of the ’174 Patent recites (emphasis added):
1. A semiconductor device, comprising:
a trench isolation surrounding an active area of a semiconductor
substrate;
a gate insulating film formed over the active area;
a gate electrode formed over the gate insulating film;
first L-shaped sidewalls formed over the side surfaces of the gate
electrode;
first silicide layers formed on regions located on the sides of the first
L-shaped sidewalls within the active area[;]
an interconnection formed on the trench isolation; and
second L-shaped sidewalls formed over the side surfaces of the
interconnection.
On balance, the word “surrounding” is sufficiently clear when read in context, and
Defendants’ proposal of “lateral boundary” would tend to confuse rather than clarify the scope of
the claim. In particular, Plaintiff’s expert has persuasively opined that whereas a “boundary”
may be a border, a “trench” is a three-dimensional structure. See Dkt. No. 67-1, Aug. 26, 2016
Schubert Decl. at ¶ 36. Further, Defendants’ proposal of “lateral” would improperly limit the
relative orientation of claim elements to a particular illustrated embodiment. See ’174 Patent at
Fig. 15(f); see also MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1333 (Fed. Cir.
-9-

2007) (“patent coverage is not necessarily limited to inventions that look like the ones in the
figures”).
The Court therefore hereby expressly rejects Defendants’ proposed construction. No
further construction is necessary. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568
(Fed. Cir. 1997) (“Claim construction is a matter of resolution of disputed meanings and
technical scope, to clarify and when necessary to explain what the patentee covered by the
claims, for use in the determination of infringement. It is not an obligatory exercise in
redundancy.”); see also O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351,
1362 (Fed. Cir. 2008) (“[D]istrict courts are not (and should not be) required to construe every
limitation present in a patent’s asserted claims.”); Finjan, Inc. v. Secure Computing Corp., 626
F.3d 1197, 1207 (Fed. Cir. 2010) (“Unlike O2 Micro, where the court failed to resolve the
parties’ quarrel, the district court rejected Defendants’ construction.”); ActiveVideo Networks,
Inc. v. Verizon Commcn’s, Inc., 694 F.3d 1312, 1326 (Fed. Cir. 2012); Summit 6, LLC v.
Samsung Elecs. Co., Ltd., 802 F.3d 1283, 1291 (Fed. Cir. 2015).
The Court therefore hereby construes “a trench isolation surrounding an active area of
a semiconductor substrate” to have its plain meaning.
B. “composed of the same material”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“composed of material having the same
chemical formula”; This construction does not
require identity between the types and
quantities of contaminants, impurities and/or
dopants added to the material.2

Plain and ordinary meaning
To the extent the plain and ordinary meaning
must be stated, “composed of material having
the same composition”

2

Plaintiff previously proposed that this term does not require construction. Dkt. No. 59, Ex. A
at 20.
- 10 -

Dkt. No. 59, Ex. B at B-14; Dkt. No. 67 at 3. The parties submit that this term appears in
Claim 11 of the ’174 Patent. Dkt. No. 59, Ex. A at 20; id., Ex. B at B-14.
In their September 23, 2016 Joint Claim Construction Chart, the parties submitted an
agreement that this term has its “[p]lain and ordinary meaning.” Dkt. No. 80, Ex. A at 2. The
Court therefore sets forth the parties’ agreement in Appendix A to the present Claim
Construction Memorandum and Order.
V. DISPUTED TERMS IN U.S. PATENT NO. 8,354,726
The ’726 Patent, titled “Semiconductor Device and Method for Fabricating the Same,”
issued on January 15, 2013, and bears an earliest priority date of May 19, 2006. Plaintiff submits
that “[t]he ’726 patent presents a novel structure that improves the efficiency of transistors.”
Dkt. No. 67 at 4.
C. “formed on the side surface of the [first/second] gate electrode”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“substantially covering the side surface of the
[first/second] gate electrode”3

“formed in contact with the side surface of the
[first/second] gate electrode”

Dkt. No. 59, Ex. B at B-17; Dkt. No. 67 at 5. The parties submit that this term appears in
Claims 1 and 43 of the ’726 Patent. Dkt. No. 59, Ex. A at 24; id., Ex. B at B-17.
Shortly before the start of the October 7, 2016 hearing, the Court provided the parties
with the following preliminary construction: “covering the side surface of the [first/second]
gate electrode.”

3

Plaintiff previously proposed that this term does not require construction. Dkt. No. 59, Ex. A
at 24.
- 11 -

(1) The Parties’ Positions
Plaintiff argues that “[a] POSITA [(person of ordinary skill in the art)] would understand
that if a side-wall insulating film or sidewall is ‘formed on’ the side surface of a gate electrode,
then the side-wall insulating film/sidewall substantially covers the side surface of the gate
electrode because a side-wall insulating film/sidewall is intended to provide electric insulation
for the gate electrode and act as a spacer for proper implementation.” Dkt. No. 67 at 5. Plaintiff
argues that Defendants’ proposed interpretation is inconsistent with the context of the claims,
would exclude a preferred embodiment, and would give rise to an inconsistency in dependent
Claim 22. Id. at 5-6.
Defendants respond that “each of the figures in the ’726 Patent illustrating the ‘formed
on’ feature shows the elements being formed in contact with the side surface of the first and
second gate electrodes.” Dkt. No. 73 at 6. Defendants also submit that “the claims use language
different from ‘formed on’ to describe instances where elements are not in direct contact.” Id.
Further, Defendants argue, “Plaintiff’s proposed construction eliminates the word ‘formed’
entirely from the term,” and “nowhere in the ’726 patent specification does the term
‘substantially cover’ (or any derivation thereof) appear at all.” Id. at 7.
Plaintiff replies that “Defendants rely on various figures that illustrate non-limiting
embodiments in the specification.” Dkt. No. 77 at 1 (citation omitted).
At the October 7, 2016 hearing, Plaintiff agreed with the Court’s preliminary
construction.
(2) Analysis
Claim 43 of the ’726 Patent, for example, recites (emphasis added):
43. A semiconductor device comprising:

- 12 -

a first active region surrounded with an isolation region of a
semiconductor substrate;
a first gate electrode formed over the first active region and having a
protrusion protruding on the isolation region;
a first side-wall insulating film formed on the side surface of the first gate
electrode;
a second active region surrounded with the isolation region of the
semiconductor substrate;
a second gate electrode formed over the second active region, having a
protrusion protruding on the isolation region, and formed over the semiconductor
substrate to be spaced apart in the gate width direction from the protrusion of the
first gate electrode;
a second side-wall insulating film formed on the side surface of the second
gate electrode; and
a silicon nitride film formed to cover the first gate electrode, the first sidewall insulating film, the second gate electrode, and the second side-wall insulating
film,
wherein the distance between the first gate electrode and the second gate
electrode is smaller than the sum total of: the sum of the thicknesses of the first
and second side-wall insulating films; and the double of the thickness of the
silicon nitride film,
the side surfaces of the first and second gate electrodes are shifted in the
gate length direction with each other,
a shift distance of the second gate electrode with respect to the first gate
electrode is 0 μm or more and less than a predetermined value,
the predetermined value is a sum of: a sum of a gate length of the first gate
electrode and a total thickness of the first side-wall insulating film and a part of
the silicon nitride film formed on the side surface of the first gate electrode; and a
total thickness of the second side-wall insulating film and a part of the silicon
nitride film formed on the side surface of the second gate electrode.
The specification discloses that structures may be “formed between” gate electrodes and
sidewalls:
In FIGS. 14, 15A, and 15B, description has been made of the structure in which
only the first sidewalls 15a and 15b having L-shaped cross sections are present.
Alternatively, it is also acceptable that in addition to the first sidewalls 15a and
15b, a sidewall (an offset spacer) having an I-shaped (plate-like) cross section is
formed between the gate electrodes 13a and 13b and the associated first sidewalls
15a and 15b. The liner film 19 may be formed of a single layer or multiple layers.
’726 Patent at 21:40-48 (emphasis added).

- 13 -

On one hand, although Plaintiff has argued that the disputed term must be construed so as
to encompass this disclosure of potentially intervening layers, “[i]t is not necessary that each
claim read on every embodiment.” Baran v. Med. Device Techs., Inc., 616 F.3d 1309, 1316
(Fed. Cir. 2010). Also, dependent Claim 22, cited by Plaintiff, recites that “the first side-wall
insulating film further includes an offset spacer having a plate-like cross section,” but this recital
of a sidewall that “includes” a spacer does not warrant allowing for a distinct intermediate layer.
Further, Defendants’ proposed interpretation appears to be consistent with the recital in
Claims 1, 8, 29, 34, and 43 that the second gate electrodes are “formed over” (not “formed on”)
respective active areas. See, e.g., Chi. Bd. Options Exch., Inc. v. Int’l Sec. Exch., LLC, 677 F.3d
1361, 1369 (Fed. Cir. 2012) (noting “[t]he general presumption that different terms have
different meanings”). Likewise, Claims 20, 21, and 41 recite that “the first gate electrode is
formed on the first active region through a gate insulating film.”
On the other hand, the specification also uses the phrase “formed on” despite the
presence of intervening layers:
For a typical semiconductor device, there may be the case where it is impossible
to arrange the gate electrode 13a and the gate electrode 13b to face each other and
thus as shown in FIG. 5A, they are disposed closely but in shifted relation. Even
in such a case, if as shown in FIG. 5B, the gate shift distance L2 is not less than 0
μm and less than 0.39 μm, the effect of reducing compressive stress in the channel
width direction of the active region 10a, which is applied by a portion of the liner
film 19 covering the protrusion of the gate electrode 13a, can be exerted. In this
structure, 0.39 μm, which is the gate shift distance L2 described above, is the sum
total of: the gate length of the gate electrode 13a (50 nm); the sum of the
thicknesses of the first and second sidewalls 15a and 16a formed on one side
surface of the gate electrode 13a and the thickness of the liner film 19 (20 nm+50
nm+100 nm=170 nm); and the sum of the thicknesses of the first and second
sidewalls 15b and 16b formed on one side surface of the gate electrode 13b and
the thickness of the liner film 19 (20 nm+50 nm+100 nm=170 nm). That is to
say, if the amount of shift of the gate electrode 13b in the gate length direction
relative to the gate electrode 13a is within an extent such that the portion of the
liner film 19 formed on the side surface of the gate electrode 13a and the portion
of the liner film 19 formed on the side surface of the gate electrode 13b at least
- 14 -

partly overlap in the gate length direction, the effects as described above can be
provided.
’726 Patent at 14:14-39 (emphasis added). Referenced Figure 5A of the ’726 Patent is
reproduced here and illustrates the sidewalls residing between the liner film and the gate
electrodes:

On balance, this disclosure in the ’726 Patent demonstrates that the term “formed on”
does not preclude the presence of intervening layers. As to the proper construction, Plaintiff has
not adequately supported its proposal of the word “substantially,” which would tend to introduce
vagueness without Plaintiff having shown any necessity for the word.
The Court therefore hereby construes “formed on the side surface of the [first/second]
gate electrode” to mean “covering the side surface of the [first/second] gate electrode.”

- 15 -

D. “a stress-containing insulating film containing internal stress and formed to cover the
first gate electrode, the first side-wall insulating film, the auxiliary pattern, and the second
side-wall insulating film”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

This term does not need construction and can
be understood under its plain and ordinary
meaning.

“a single stress-containing insulating film
containing internal stress and covering the first
gate electrode, the first side-wall insulating
film, the auxiliary pattern, and the second sidewall insulating film”4

To the extent a construction is necessary:
“a stress-containing insulating film containing
internal stress and fabricated to cover the first
gate electrode, the first side-wall insulating
film, the auxiliary pattern, and the second sidewall insulating film”

Dkt. No. 59, Ex. A at 25; Dkt. No. 80, Ex. A at 3. The parties submit that this term appears in
Claim 1 of the ’726 Patent. Dkt. No. 59, Ex. A at 25; id., Ex. B at B-18.
Shortly before the start of the October 7, 2016 hearing, the Court provided the parties
with the following preliminary construction: “a stress-containing insulating film containing
internal stress and also covering the first gate electrode, the first side-wall insulating film, the
auxiliary pattern, and the second side-wall insulating film.”
At the October 7, 2016 hearing, both sides stated that they had no objection to the Court’s
preliminary construction. The parties reached this agreement based on an understanding that
although a single film must satisfy all of the stated requirements, this disputed term does not
require that there be only one stress-containing insulating film.
The Court therefore hereby construes “a stress-containing insulating film containing
internal stress and formed to cover the first gate electrode, the first side-wall insulating
film, the auxiliary pattern, and the second side-wall insulating film” to mean “a stresscontaining insulating film containing internal stress and also covering the first gate
4

Defendants previously proposed “completely covering.” Dkt. No. 59, Ex. B at B-18.
- 16 -

electrode, the first side-wall insulating film, the auxiliary pattern, and the second side-wall
insulating film.”
E. “the first gate electrode is formed on the first active region through a gate insulating
film including nitrogen”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“the first gate electrode is formed on a gate
insulating film including nitrogen, and the gate
insulating film is formed on the first active
region”

Plain and ordinary meaning
To the extent stating the plain and ordinary
meaning is necessary, “the first gate electrode
is formed on the first active region with a gate
insulating film between the first gate electrode
and the first active region, the gate insulating
film including nitrogen.”

Dkt. No. 59, Ex. A at 27; id., Ex. B at B-20. The parties submit that this term appears in
Claims 20, 43, and 54 of the ’726 Patent. Dkt. No. 59, Ex. A at 27; id., Ex. B at B-20.
Shortly before the start of the October 7, 2016 hearing, the Court provided the parties
with the following preliminary construction: “the first gate electrode is formed on the first active
region, with a nitrogen-containing gate insulating film between the first gate electrode and the
first active region.”
(1) The Parties’ Positions
Plaintiff submits that the parties’ proposed constructions “appear equivalent,” but
Plaintiff argues that “its construction is easier for a jury to understand, as it approaches the
construction in a logical order, i.e., it has the format ‘C is formed on B, and B is formed on A,’
while defendants’ proposed construction has the form ‘C is formed on A, with B between C
and A.’” Dkt. No. 67 at 8.
Defendants respond that the parties’ proposals are not equivalent and that Plaintiff’s
proposal would improperly broaden the claim scope. Dkt. No. 73 at 9.

- 17 -

Plaintiff’s reply brief does not address this term. See Dkt. No. 77.
At the October 7, 2016 hearing, Defendants had no objection to the Court’s preliminary
construction.
(2) Analysis
Defendants have persuasively argued that Plaintiff’s proposed construction—which at
least on its face appears to encompass what is labeled as “b” in Defendants’ below-reproduced
illustration—would improperly broaden the scope of the claims:

Dkt. No. 73 at 9.
The Court therefore hereby construes “the first gate electrode is formed on the first
active region through a gate insulating film including nitrogen” to mean “the first gate
electrode is formed on the first active region, with a nitrogen-containing gate insulating
film between the first gate electrode and the first active region.”

- 18 -

F. “an interlayer insulating film on the silicide layer through the stress-containing
insulating film”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“an interlayer insulating film is formed on a
portion of the stress-containing insulating film
over the silicide layer”

Plain and ordinary meaning
To the extent stating the plain and ordinary
meaning is necessary, “an interlayer insulating
film formed on the silicide layer, with the
stress-containing insulating film being between
the interlayer insulating film and the silicide
layer.”

Dkt. No. 59, Ex. A at 28; id., Ex. B at B-21. The parties submit that this term appears in
Claims 23 and 57 of the ’726 Patent. Dkt. No. 59, Ex. A at 28; id., Ex. B at B-21.
Shortly before the start of the October 7, 2016 hearing, the Court provided the parties
with the following preliminary construction: “an interlayer insulating film formed on the silicide
layer, with the stress-containing insulating film being between the interlayer insulating film and
the silicide layer.”
(1) The Parties’ Positions
Plaintiff submits that the parties’ proposed constructions “appear equivalent,” but
Plaintiff argues that “its construction is easier for a jury to understand, as it approaches the
construction in a logical order, i.e., it has the format ‘C is formed on a portion of B formed
on A,’ while defendants’ proposed construction has the form ‘C is formed on A, with B between
C and A.’” Dkt. No. 67 at 8.
Defendants submit that this term presents the same dispute as “the first gate electrode is
formed on the first active region through a gate insulating film including nitrogen,” which is
addressed above. Dkt. No. 73 at 10.
Plaintiff’s reply brief does not address this term. See Dkt. No. 77.

- 19 -

(2) Analysis
This disputed term presents substantially the same dispute as addressed above regarding
the term “the first gate electrode is formed on the first active region through a gate insulating
film including nitrogen.”
The Court therefore hereby construes “an interlayer insulating film on the silicide
layer through the stress-containing insulating film” to mean “an interlayer insulating film
formed on the silicide layer, with the stress-containing insulating film being between the
interlayer insulating film and the silicide layer.”
VI. DISPUTED TERMS IN U.S. PATENT NO. 6,197,696
The ’696 Patent, titled “Method for Forming Interconnection Structure,” issued on
March 6, 2001, and bears an earliest priority date of March 26, 1998. Plaintiff submits that
“[t]he ’696 patent discloses a novel method for forming an interconnection structure in a
semiconductor device.” Dkt. No. 67 at 9.
G. “using the [first resist pattern/second resist pattern and the mask pattern/patterned
third insulating film] as a mask”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“using the [first resist pattern/second resist
pattern and the mask pattern/patterned third
insulating film] to define areas for etching”

“using the [first resist pattern/second resist
pattern and the mask pattern/patterned third
insulating film] to mask portions of another
film or films being etched . . .”

Dkt. No. 59, Ex. A at 8; id., Ex. B at B-23; Dkt. No. 80, Ex. A at 10. The parties submit that this
term appears in Claim 13 of the ’696 Patent. Dkt. No. 59, Ex. A at 8; id., Ex. B at B-23.
Shortly before the start of the October 7, 2016 hearing, the Court provided the parties
with the following preliminary construction: “using the [first resist pattern/second resist pattern
and the mask pattern/patterned third insulating film] to define areas for etching.”

- 20 -

(1) The Parties’ Positions
Plaintiff argues that “[t]he specification discloses numerous examples of structures being
used as masks during etching, and in each case the structures are defining areas for etching.”
Dkt. No. 67 at 9 (citing ’696 Patent at 22:47-24:19, 24:54-26:34, 26:52-27:60, 27:62-29:20,
29:62-31:26, 31:49-32:9 & Figs. 21-37). Plaintiff argues that Defendants’ proposed construction
“merely repeats the claim language” and “is incorrect because the masked portions of a film, by
definition, are not etched—instead, the masked portions are shielded from etching.” Dkt. No. 67
at 9.
Defendants respond that “Defendants’ proposal recognizes the plain and ordinary
meaning of th[e] term, as reflected in the specification, that etching an underlying film ‘using [a
pattern/film] as a mask’ means that the pattern/film is used to mask certain portions of that
underlying film.” Dkt. No. 73 at 10.
Plaintiff replies that Defendants’ proposal “merely repeats the word ‘mask’ without
explaining what it is or does.” Dkt. No. 77 at 3.
At the October 7, 2016 hearing, Defendants argued that Plaintiff’s proposal improperly
broadens the scope of the disputed term by encompassing any masks that may have been used in
preceding fabrication steps.
(2) Analysis
The parties do not appear to have any substantive disagreement. As Plaintiff has argued,
however, Defendants’ proposed construction is potentially confusing as to which portions are
etched and which are not. As to Defendants’ argument that Plaintiff’s proposed construction
might “capture process steps wholly unrelated to the actual etching process” (Dkt. No. 73 at 11),
the surrounding claim language recites etching. To be clear, however, and as Plaintiff appeared

- 21 -

to agree at the October 7, 2016 hearing, “using . . . as a mask” refers to using a mask for the
particular fabrication step recited in the limitation at issue (rather than some preceding,
preparatory step).
The Court therefore hereby construes “using the [first resist pattern/second resist
pattern and the mask pattern/patterned third insulating film] as a mask” to mean “using
the [first resist pattern/second resist pattern and the mask pattern/patterned third
insulating film] to define areas for etching.”
VII. DISPUTED TERMS IN U.S. PATENT NO. 6,538,324
The ’324 Patent, titled “Multi-Layered Wiring Layer and Method of Fabricating the
Same,” issued on March 25, 2003, and bears an earliest priority date of June 24, 1999. Plaintiff
submits that “[t]he ’324 patent discloses a novel barrier film that can be used to prevent diffusion
of copper from a copper wiring layer formed on a semiconductor substrate.” Dkt. No. 67 at 10.
H. Preambles of Claims 1 and 5 of the ’324 Patent
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

The phrase “[preventing/which prevents]
diffusion of copper from a copper wiring layer
formed on a semiconductor substrate” in the
preamble is not limiting.

The preamble is limiting

The remaining portions of the preamble are
limiting.5
Dkt. No. 59, Ex. B at B-1; Dkt. No. 67 at 10; Dkt. No. 80, Ex. A at 12.
Shortly before the start of the October 7, 2016 hearing, the Court provided the parties
with the following preliminary construction: “The phrase ‘[a] barrier film preventing diffusion of
copper from a copper wiring layer formed on a semiconductor substrate’ in Claim 1 and the

5

Plaintiff previously proposed simply: “Preamble is not limiting.” Dkt. No. 59, Ex. A at 1.
- 22 -

phrase ‘prevents diffusion of copper from a copper wiring layer formed on a semiconductor
substrate’ in Claim 5 are not limiting.”
(1) The Parties’ Positions
Plaintiff argues that “[i]t is well-settled that statements of purpose are non-limiting,” and
therefore “the above phrase describing the purpose of the barrier film is not limiting.” Dkt.
No. 67 at 10-11.
Defendants respond that “Plaintiff cites no authority to support that a preamble can be
dissected in such manner.” Dkt. No. 73 at 12. Defendants also argue that “[t]he preambles of
claims 1 and 5 in their entirety are necessary to understand the claims as a whole and to define
their relationship with another feature in the structure, specifically a copper wiring layer.” Id.
at 13.
Plaintiff replies by citing TomTom, Inc. v. Adolph, 790 F.3d 1315, 1323-24 (Fed. Cir.
2015), which Plaintiff submits found that whereas the portions of the preamble that provided
antecedent bases were limiting, the portion stating a purpose or intended use was not. Dkt.
No. 77 at 4.
At the October 7, 2016 hearing, Defendants urged that the copper wiring layer set forth in
the preamble of each claim is a structural limitation of the claim.
(2) Analysis
Claims 1 and 5 of the ’324 Patent recite (emphasis added):
1. A barrier film preventing diffusion of copper from a copper wiring layer
formed on a semiconductor substrate, comprising a multi-layered structure of first
and second films,
said first film being composed of crystalline metal containing nitrogen
therein,
said second film being composed of amorphous metal nitride,
said barrier film being constituted of common metal atomic species,
said first film being formed on said second film,
- 23 -

said first film in direct contact with said second film,
said first film containing nitrogen in a smaller content than that of said
second film.
***
5. A multi-layered wiring structure comprising a barrier film which prevents
diffusion of copper from a copper wiring layer formed on a semiconductor
substrate,
said barrier film having a multi-layered structure of first and second films,
said first film being composed of crystalline metal containing nitrogen
therein,
said second film being composed of amorphous metal nitride,
said barrier film being constituted of common metal atomic species,
said first film being formed on said second film,
said first film in direct contact with said second film,
said first film containing nitrogen in a smaller content than that of said
second film.
The above-emphasized reliance upon the preambles for antecedent basis weighs in favor
of finding the preambles limiting. See Eaton, 323 F.3d at 1339.
Nonetheless, the preamble phrases regarding preventing diffusion are statements of
purpose or use and are not inextricably intertwined with the other preamble language that
provides antecedent basis. See TomTom, 790 F.3d at 1323 (“That [a] phrase in the preamble . . .
provides a necessary structure for [the] claim . . . does not necessarily convert the entire
preamble into a limitation, particularly one that only states the intended use of the invention.”);
see also Marrin v. Griffin, 599 F.3d 1290, 1294-95 (Fed. Cir. 2010) (“the mere fact that a
structural term in the preamble is part of the claim does not mean that the preamble’s statement
of purpose or other description is also part of the claim”).
Likewise, the specification disclosures cited by Defendants do not contain any definition
or disclaimer that would warrant finding the entireties of the preambles limiting. See ’324 Patent
at 1:6-10 & 1:26-30; see also id. at 4:50-67, 5:1-8, 5:15-24, 6:42-52, 8:60-63, 9:47-65, 13:30-33,
13:51-63, 15:11-13, 15:40-42, 17:12-16, 17:35-39 & 18:17-50.
- 24 -

In particular, the Background of the Invention states that “it is absolutely necessary for a
semiconductor device having a copper wiring layer to have a diffusion-barrier film for
preventing diffusion of copper into an interlayer insulating film formed between copper wiring
layers.” Id. at 1:26-30. Nonetheless, the claims at issue recite complete structures apart from the
statements of purpose, and the preamble phrases at issue do not specify any additional detail as
to composition of those structures. See Proveris Scientific Corp. v. Innovasystems, Inc., 739
F.3d 1367, 1373 (Fed. Cir. 2014) (“The phrase ‘the image data’ clearly derives antecedent basis
from the ‘image data’ that is defined in greater detail in the preamble as being ‘representative of
at least one sequential set of images of a spray plume.’”) (emphasis added); Hewlett-Packard Co.
v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) (“apparatus claims cover what a
device is, not what a device does”).
The Court therefore hereby finds that the phrase “[a] barrier film preventing diffusion of
copper from a copper wiring layer formed on a semiconductor substrate” in Claim 1 and the
phrase “prevents diffusion of copper from a copper wiring layer formed on a semiconductor
substrate” in Claim 5 are not limiting.
I. “film”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“a single layer or coating, or multiple
contiguous layers or coatings, of material”

Defendants dispute that the term “film” needs
to be construed or should be construed in
isolation. The term “film” is used in different
contexts in the patent and the claims (e.g.,
“barrier film,” [“]diffusion barrier film,” “first
film,” “second film”) and these different
contexts do not lend themselves to a singular
definition of “film” in the absence of these
contexts. Accordingly, the term “film” by
itself can be understood under its plain and
ordinary meaning in a given context, and
requires no construction.
- 25 -

Dkt. No. 59, Ex. A at 1; id., Ex. B at B-1. The parties submit that this term appears in Claims 1
and 5 of the ’324 Patent. Dkt. No. 59, Ex. A at 1; id., Ex. B at B-1.
Shortly before the start of the October 7, 2016 hearing, the Court provided the parties
with the following preliminary construction: “Plain and ordinary meaning.”
(1) The Parties’ Positions
Plaintiff submits that “film” has a well-understood meaning, and Plaintiff argues that
“Defendants contend, wrongly, that a single ‘film’ can be comprised of multiple films or layers
that are not contiguous (i.e., that are completely separated by other layers or elements).” Dkt.
No. 67 at 11. Plaintiff submits that the specification consistently discloses that when a film does
include multiple layers or coatings, those layers or coatings must be contiguous and not
completely separated by other elements. Id. at 12.
Defendants respond that Plaintiff’s proposal of “contiguous” is inconsistent with the
specification and is unclear. Dkt. No. 73 at 14. Defendants also argue that “[t]he term ‘coating’
is undefined and appears nowhere in the specification.” Id. at 15. Further, Defendants submit
that “the distinction between ‘single’ and ‘multiple’ layers is unnecessary—as Plaintiff
recognizes, which films do or do not contain multiple layers is readily apparent from the context
in which each film is described in the specification and claims.” Id.
Plaintiff replies that the term “film” should be construed consistently across the ’324 and
’980 Patents, and Plaintiff submits that “[e]very depiction of a multilayered film in the ’324 and
’980 patents shows that the multiple layers are contiguous.” Dkt. No. 77 at 4 (emphasis omitted;
citations omitted).

- 26 -

(2) Analysis
Claims 1 and 5 of the ’324 Patent expressly recite that a barrier film can include a “multilayered” structure. On balance, Plaintiff has not demonstrated a need for introducing a
“contiguous” limitation, which would tend to confuse rather than clarify the scope of the claims.
Of particular note, the word “contiguous” does not appear in the specification.
The Court therefore hereby expressly rejects Plaintiff’s proposed construction. No
further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro, 521
F.3d at 1362; Finjan, 626 F.3d at 1207; ActiveVideo, 694 F.3d at 1326; Summit 6, 802 F.3d
at 1291.
The Court accordingly hereby construes “film” to have its plain meaning.
J. “said first film being composed of crystalline metal containing nitrogen therein”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“said first film is composed of a mixture of
single crystalline or polycrystalline metal with
nitrogen throughout”6

“said first film, being distinct from the second
film, consisting essentially of a crystalline or
polycrystalline metal, and also containing
nitrogen”
(The phrase “composed of” is understood to be
closed-ended)

Dkt. No. 59, Ex. A at 2; id., Ex. B at B-3; Dkt. No. 67 at 13. The parties submit that this term
appears in Claims 1 and 5 of the ’324 Patent. Dkt. No. 59, Ex. A at 2; id., Ex. B at B-3.
Shortly before the start of the October 7, 2016 hearing, the Court provided the parties
with the following preliminary construction: “‘the first film is distinct from the second film, and
the first film consists essentially of a mixture of crystalline or polycrystalline metal with nitrogen
throughout’ (Reject Defendants’ proposal of ‘closed-ended’).”
6

Plaintiff previously proposed: “said first film containing a mixture of metal and nitrogen
throughout and having a polycrystalline or single crystal structure.” Dkt. No. 67 at 13.
- 27 -

(1) The Parties’ Positions
Plaintiff argues that the specification discloses metal and nitrogen being “in mixture,”
and Plaintiff urges that Defendants’ proposal, “which permits the film to have nitrogen in only a
portion of it (e.g., in an upper or lower portion of the film), is inconsistent with these disclosures
and the purpose of the invention.” Dkt. No. 67 at 13-14. Plaintiff also argues that whereas “the
claims themselves provide specific physical limitations that distinguish the two films from one
another,” Defendants’ proposal of “distinct” would “add[] unnecessary ambiguity because it
could be understood to require a clear or exact demarcation between the two films, when such a
requirement is contradicted by the specification.” Id. at 14. Finally, Plaintiff argues that
Defendants’ proposal of a “closed-ended” construction should be rejected because “[n]o material
is one hundred percent pure,” and “atoms from adjacent films may diffuse at least partway into
the barrier film, and thus be detectable in the barrier film.” Id. at 15.
Defendants respond that “Defendants’ proposed construction and use of the word
‘distinct’ simply makes clear what is inherent in the claims themselves—that the first and second
films are separately identifiable films, with different compositions.” Dkt. No. 73 at 16.
Defendants also argue that “Defendants’ proposed construction recognizes the well-established
rule that the term ‘composed of’ in a claim is a closed-ended phrase that is equivalent to
‘consisting essentially of,’ and clarifies the meaning of the term for the jury.” Id. at 17 (citing
AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d 1239, 1245 (Fed. Cir. 2001) (based on
specification and other evidence, “composed of” interpreted in same manner as “consisting
essentially of”)). Finally, Defendants argue that “the claim language ‘crystalline metal
containing nitrogen therein’ makes no reference to Plaintiff’s characterization that nitrogen must
[be] distributed throughout the film.” Dkt. No. 73 at 17.

- 28 -

Plaintiff replies that “Defendants’ arguments do not resolve the ambiguity created by
their importing the word ‘distinct,’ which appears nowhere in the specification, into the claim
language, and provide no explanation of how ‘distinctness’ is determined and what it requires.”
Dkt. No. 77 at 5 (citation omitted). Plaintiff also submits that “Defendants’ proposal that
‘composed of’ is closed-ended should be rejected because Defendants concede that ‘composed
of’ allows for ‘the existence of contaminants, trace elements, and imperfections.’” Id. (citing
Dkt. No. 73 at 17 n.11). Plaintiff also replies that its proposal of “throughout” “does not mean
perfect uniform distribution” but rather merely “present across the entire thickness of the film.”
Dkt. No. 77 at 6.
At the October 7, 2016 hearing, Plaintiff urged that its proposal of “throughout” is
essential for preventing copper diffusion. See ’324 Patent at 6:37-41 & 9:47-50.
(2) Analysis
As to Plaintiff’s proposal of requiring metal “with nitrogen throughout,” the disputed
term refers to a film “composed of crystalline metal containing nitrogen therein.” The parties
appear to dispute whether the nitrogen can be contained in a region of the metal or rather must be
contained throughout the metal.
The specification discloses, for example, that different material properties can be
achieved by varying the power used in a sputtering process:
Specifically, when RF power is equal to 2 kW, there is obtained amorphous Ta2N,
as illustrated in FIG. 15. By increasing RF power, there is obtained crystalline
TaN0.1. When RF power is equal to 8 kW, there is obtained a crystalline metal
film containing nitrogen therein, which includes a β-Ta film and TaN0.1 in
mixture.
’324 Patent at 12:62-67.

- 29 -

On balance, the better reading of the plain language of the claim is that the metal must
contain nitrogen throughout. Plaintiff’s expert persuasively opines that the context in which the
film is created supports this conclusion because the specification describes a metal “in mixture”
with a nitrogen-containing metal. See Dkt. No. 67-2, Aug. 26, 2016 Glew Decl. at ¶ 45 (citing
’324 Patent at 12:19-24, 12:62-67, 13:4-24, 13:57-63 & 16:41-47); see also id. at ¶¶ 46-47; ’324
Patent at 13:35-45 (discussing that nitrogen combines with metal at the target, and target material
is then sputtered and deposited).
As to Defendants’ proposal of “distinct,” Plaintiff’s expert has persuasively opined that
persons of ordinary skill in the art expect that some imperfections will exist because of
manufacturing limitations. See id. at ¶¶ 48-49; see also ’324 Patent at Figs. 21 & 22.
Nonetheless, the claims separately recite a “first film” and a “second film,” and Defendants’
proposal of “distinct” is appropriate so as to require separately identifiable films. See Becton,
Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (“Where a
claim lists elements separately, the clear implication of the claim language is that those elements
are distinct component[s] of the patented invention.”) (citation and internal quotation marks
omitted).
To whatever extent the parties dispute the required degree of distinctness, such a dispute
is a question of fact regarding infringement rather than a legal question for claim construction.
See Acumed LLC v. Stryker Corp., 483 F.3d 800, 806 (Fed. Cir. 2007) (“The resolution of some
line-drawing problems . . . is properly left to the trier of fact.”) (citing PPG Indus. v. Guardian
Indus. Corp., 156 F.3d 1351, 1355 (Fed. Cir. 1998) (“after the court has defined the claim with
whatever specificity and precision is warranted by the language of the claim and the evidence
bearing on the proper construction, the task of determining whether the construed claim reads on

- 30 -

the accused product is for the finder of fact”)); see EON Corp. IP Holdings LLC v. Silver Springs
Networks, Inc., 815 F.3d 1314, 1318-19 (Fed. Cir. 2016) (citing PPG). At a minimum, however,
Defendants acknowledged at the October 7, 2016 hearing that “distinct” does not preclude some
intermingling at the boundaries, such as illustrated in Figures 21 and 22 of the ’324 Patent.
Finally, as to Defendants’ proposal that “composed of” must be “closed-ended,” the
Court of Appeals for the Federal Circuit has found “composed of” to mean “consisting
essentially of.” AFG, 239 F.3d at 1245. Thus, “composed of” is neither completely open-ended
nor completely closed-ended.
Based on the foregoing, the Court hereby construes “said first film being composed of
crystalline metal containing nitrogen therein” to mean “the first film is distinct from the
second film, and the first film consists essentially of a mixture of crystalline or
polycrystalline metal with nitrogen throughout.”
K. “said second film being composed of amorphous metal nitride”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“said second film is composed of a
noncrystalline metal nitride throughout”7

“said second film, being distinct from the first
film, consisting essentially of an amorphous
structure of metal nitride”
(The phrase “composed of” is understood to be
closed-ended)

Dkt. No. 59, Ex. B at B-4; Dkt. No. 67 at 16. The parties submit that this term appears in
Claims 1 and 5 of the ’324 Patent. Dkt. No. 59, Ex. A at 4; id., Ex. B at B-4.
Shortly before the start of the October 7, 2016 hearing, the Court provided the parties
with the following preliminary construction: “‘the second film is distinct from the first film, and
7

Plaintiff previously proposed: “said second film containing metal nitride throughout and having
a noncrystalline structure.” Dkt. No. 59, Ex. A at 4.
- 31 -

the second film consists essentially of amorphous metal nitride’ (Reject Defendants’ proposal of
‘closed-ended’).”
At the October 7, 2016 hearing, both sides were amenable to the Court’s preliminary
construction.
The Court therefore hereby construes “said second film being composed of amorphous
metal nitride” to mean “the second film is distinct from the first film, and the second film
consists essentially of amorphous metal nitride.”
L. “[said barrier film being constituted of] common metal atomic species”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“the layers of the barrier film contain atoms of
the same metal”

“the first and second films of the barrier film
being composed of common metal atomic
species”

Dkt. No. 59, Ex. A at 4; id., Ex. B at B-5-6. The parties submit that this term appears in
Claims 1 and 5 of the ’324 Patent. Dkt. No. 59, Ex. A at 4; id., Ex. B at B-5-6.
Shortly before the start of the October 7, 2016 hearing, the Court provided the parties
with the following preliminary construction: “the layers of the barrier film contain atoms of the
same metal.”
At the October 7, 2016 hearing, both sides were amenable to the Court’s preliminary
construction.
The Court therefore hereby construes “[said barrier film being constituted of] common
metal atomic species” to mean “the layers of the barrier film contain atoms of the same
metal.”

- 32 -

VIII. DISPUTED TERMS IN U.S. PATENT NO. RE41,980
The ’980 Patent, titled “Semiconductor Interconnect Formed Over an Insulation and
Having Moisture Resistant Material,” issued on December 7, 2010, and bears an earliest priority
date of September 10, 1996. Plaintiff submits that “[t]he ’980 patent discloses a novel
semiconductor device structure that includes first and second dielectric films that together form a
‘surface protecting film,’ and a bonding pad formed in an opening in the surface protecting
film.” Dkt. No. 67 at 18.
M. “a surface protecting film”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“a film for protecting an underlying layer”

“a surface protecting film including distinct
first and second dielectric films”

“film” means “a single layer or coating, or
multiple contiguous layers or coatings, of
material”
Dkt. No. 59, Ex. A at 11; id., Ex. B at B-10-11. The parties submit that this term appears in
Claims 18 and 35 of the ’980 Patent. Dkt. No. 59, Ex. A at 11.
Shortly before the start of the October 7, 2016 hearing, the Court provided the parties
with the following preliminary construction: “a surface protecting film including distinct first
and second dielectric films.”
(1) The Parties’ Positions
Plaintiff reiterates its arguments as to the term “film,” which is addressed above as to the
’324 Patent. Dkt. No. 67 at 19.
Defendants respond that “the parties agree that the plain and ordinary meaning of this
term requires a film that protects a surface, not an underlying layer.” Dkt. No. 73 at 19.
Defendants also argue: “that the films are distinct is apparent from the claim language.” Id.

- 33 -

Plaintiff replies by referring to its arguments as to the term “film,” which is addressed
above as to the ’324 Patent. Dkt. No. 77 at 6. Plaintiff also submits that it “does not intend
‘surface’ to exclude surfaces of layers below the topmost layer of the chip.” Id.
At the October 7, 2016 hearing, Defendants submitted that this term presents the same
issues regarding Defendants’ proposal of “distinct” as to terms in the ’324 Patent, addressed
above. As to “surface,” Defendants argued that the referenced surface is the surface of a chip
rather than the surface of a non-exposed layer that is buried within the chip. Plaintiff responded
that the disputed term can refer to a film that protects underlying layers.
(2) Analysis
The parties agree that the constituent term “film” should be given the same interpretation
in the ’980 Patent as in the ’324 Patent (discussed above). Thus, no further construction is
necessary as to “film.”
As to whether a “surface protecting film” protects a surface or protects a layer, the term
itself refers to a surface, and Plaintiff has not demonstrated that the word “surface” should be
interpreted as referring to a layer rather than a surface. Nonetheless, the context set forth by the
specification is sufficiently clear that the “surface” need only be a top surface at some point
during fabrication. That is, the protected “surface” need not necessarily be the top surface in a
finished semiconductor device. See, e.g., ’980 Patent at 17:30-59 (“the passivation film 14 with
a large dielectric constant and high moisture absorption resistance is formed on the underlying
moisture proofing film 17 and the buried insulating film 13”).
Finally, the claims at issue each recite a “first dielectric film” and a “second dielectric
film,” and Defendants’ proposal of “distinct” is appropriate so as to require separately
identifiable films. See Becton, 616 F.3d at 1254 (“Where a claim lists elements separately, the

- 34 -

clear implication of the claim language is that those elements are distinct component[s] of the
patented invention.”) (citation and internal quotation marks omitted).
The Court therefore hereby construes “a surface protecting film” to mean “a surface
protecting film including distinct first and second dielectric films.”
N. “interlayer insulating film”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“an insulating film located between but not
within layers”

“an insulating film located between layers”

Dkt. No. 59, Ex. A at 12; id., Ex. B at B-11. The parties submit that this term appears in
Claims 18, 33, 35, and 50 of the ’980 Patent. Dkt. No. 59, Ex. A at 12; id., Ex. B at B-11.
Shortly before the start of the October 7, 2016 hearing, the Court provided the parties
with the following preliminary construction: “an insulating film located between but not within
layers.”
(1) The Parties’ Positions
Plaintiff argues that the claim language and the specification establish that the claimed
interlayer insulating film cannot be located within an adjacent layer. Dkt. No. 67 at 20. For
example, Plaintiff argues that the prefix “inter” means “between,” as opposed to “intra,” which
means “within.” Id.
Defendants respond that none of the disclosures cited by Plaintiff indicate that the
interlayer insulating film cannot be formed within layers. Dkt. No. 73 at 20. Defendants also
argue: “Nor does the plain language of ‘formed on’ exclude the scenario where a portion of the
layer is also included within the surface of the layer on top of which the layer is being formed.”
Id.

- 35 -

Plaintiff replies that its proposal “is supported by the patent’s clear contrast between
‘interlayer insulating film’ and ‘buried insulating film,’ as well as the dictionary definitions of
‘intra’ and ‘inter.’” Dkt. No. 77 at 6-7 (citing Dkt. No. 67 at 20-21).
(2) Analysis
The specification contrasts an “underlying interlayer insulating film” with a “buried
insulating film” in which “metal wires . . . are buried.” ’980 Patent at 13:39-47; see id. at Fig. 1
(illustrating interlayer insulating film 11 and buried insulating film 13). This distinction is
consistent with the common meaning of the prefix “inter.” See Dkt. No. 67-2, Aug. 26, 2016
Glew Decl. at ¶ 71.
At the October 7, 2016 hearing, Defendants argued that “between” and “within” are not
mutually exclusive because layers can extend up through other layers. What Plaintiff’s proposed
construction precludes, however, is merely an “interlayer insulating film” being mixed together
with another layer. Plaintiff’s proposal does not appear to preclude the presence of a hole
through which the interlayer insulating film might extend.
The Court therefore hereby construes “interlayer insulating film” to mean “an
insulating film located between but not within layers.”
O. “small dielectric constant”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“a dielectric constant less than 4.2”

The term “small dielectric constant” is
indefinite.

Dkt. No. 59, Ex. A at 14; id., Ex. B at B-7. The parties submit that this term appears in
Claims 18 and 35 of the ’980 Patent. Dkt. No. 59, Ex. A at 14; but see id., Ex. B at B-7
(Defendants identifying only Claim 18).

- 36 -

Shortly before the start of the October 7, 2016 hearing, the Court provided the parties
with the following preliminary construction: “a dielectric constant less than that of silicon
dioxide.”
(1) The Parties’ Positions
Plaintiff argues that “[t]he term ‘small dielectric constant’ would have been understood
by a POSITA to be synonymous with [the] term ‘low-k’ as used in the semiconductor industry as
of the time of the invention, around 1999-2000,” and Plaintiff submits that “low-k” had a wellestablished meaning in the art at the relevant time. Dkt. No. 67 at 21. Plaintiff also notes that its
proposal is consistent with dependent Claims 31 and 48, which require that that the first
dielectric film has a dielectric constant of 3.9 or less. Id. at 22.
Defendants respond that a “person of skill in the art could not determine the upper
boundary of the range of ‘small’ dielectric constant values, and thus this term, when read in light
of the specification and the prosecution history, fails to provide ‘objective boundaries for those
of skill in the art.’” Dkt. No. 73 at 22 (citation and internal quotation marks omitted).
Defendants submit that “the specification is completely silent as to the meaning of the term
‘small dielectric constant.’” Id. Defendants argue that “Plaintiff’s expert provides nothing more
than a conclusory statement that ‘small dielectric constant’ is ‘synonymous’ with ‘low-k,’” and
“Plaintiff’s leap to the value of 4.2 is completely arbitrary.” Id. at 23.
Plaintiff replies that the dependent claims provide guidance, and Plaintiff urges that
“[t]here can be little dispute that ‘small dielectric constant’ means ‘low-k’: a POSITA
understands that ‘k’ refers to ‘dielectric constant’ and that ‘small’ is synonymous with ‘low.’”
Dkt. No. 77 at 7.

- 37 -

At the October 7, 2016 hearing, Plaintiff agreed with the Court’s preliminary
interpretation that “small dielectric constant” is relative to the dielectric constant of silicon
dioxide. Defendants responded that “small” is not defined relative to silicon dioxide because, for
example, the specification discloses that silicon dioxide can be used as a material having a
“small” dielectric constant. See ’980 Patent at 7:30-40 & 18:17-27. Plaintiff replied by
suggesting that its proposal could be modified to be “a dielectric constant less than or equal
to 4.2,” so as to encompass silicon dioxide.
(2) Analysis
Claim 18 of the ’980 Patent, for example, recites (emphasis added):
18. A semiconductor device comprising:
a semiconductor substrate bearing semiconductor elements;
an interlayer insulating film formed on said semiconductor substrate;
a metal wire layer including plural metal wires formed on said interlayer
insulating film;
a surface protecting film including a first dielectric film with a small
dielectric constant for filling at least a part of areas among said metal wires in
said metal wire layer and a second dielectric film with a higher moisture
absorption preventing function than said first dielectric film for covering said
metal wire layer and said first dielectric film, said second dielectric film having a
function of suppressing moisture absorption of said first dielectric film;
an opening for a bonding pad formed in said surface protecting film; and
a bonding pad formed in said opening for obtaining external electrical
connection,
wherein said bonding pad in said opening and said second dielectric film
of said surface protecting film completely cover said first dielectric film so as not
to expose said first dielectric film.
Plaintiff has submitted evidence that a similar term of art, “low-k,” refers to materials
having a dielectric constant less than 4.2, which is the dielectric constant of at least some forms
of silicon dioxide. Using silicon dioxide as an insulator is convenient because silicon dioxide
layers can be created by oxidizing a surface of a silicon wafer, but superior device performance

- 38 -

can be obtained by using a material with a dielectric constant that is lower than that of silicon
dioxide. See Dkt. No. 67-2, Aug. 26, 2016 Glew Decl. at ¶¶ 72-76.
The Summary of the Invention refers to the first dielectric film preferably having a
dielectric constant of 3.9 or less. ’980 Patent at 4:14-23. The specification also discloses using a
material with a “small dielectric constant” of 3.5. ’980 Patent at 8:9-11. Dependent Claims 31
and 48, however, recite a dielectric constant of 3.9 or less, which implies that the independent
claims encompass a dielectric constant greater than 3.9. See, e.g., Phillips, 415 F.3d at 1315.
Further, Plaintiff has submitted various extrinsic articles regarding “low-k” as referring to a
dielectric constant less than 4.2. See Dkt. No. 67 at 21-22 (citing id., Exs. L-P).
These disclosures provide sufficient “objective anchor[s]” such that the meaning of the
disputed term does not “depend on the unpredictable vagaries of any one person’s opinion.” See
Datamize, 417 F.3d at 1350. The Court therefore hereby expressly rejects Defendants’
indefiniteness argument.
As to the proper construction, the parties have a factual dispute as to whether the
dielectric constant of silicon dioxide is 4.2 or, for example, 3.9. See, e.g., Dkt. No. 73-13,
Sept. 9, 2016 Gwozdz Decl. at ¶¶ 66-76 (“the standard silicon dioxide CVD dielectric layer for
IC interconnect can have a range of values, about 3.9 to 5.0”); Dkt. No. 77-2, Sept. 16, 2016
Glew Decl. at ¶¶ 19-35 esp. at ¶ 25-35 (“the evidence relied upon by Dr. Gwozdz [(Defendants’
expert)] does not support his conclusion”). What is clear, however, is that the term “small
dielectric constant” in the context of the ’980 Patent refers to a dielectric constant not greater
than that of silicon dioxide. See, e.g., ’980 Patent at 7:30-40 & 18:17-27.
The Court therefore hereby construes “small dielectric constant” to mean “a dielectric
constant not greater than that of silicon dioxide.”

- 39 -

P. “said bonding pad in said opening and said second dielectric film of said surface
protecting film completely cover said first dielectric film so as not to expose said first
dielectric film”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“the bonding pad and the second dielectric film “the bonding pad in the opening and the
collectively cover the first dielectric film so
second dielectric film each covers a portion of
that it is not exposed to above”
the first dielectric film so that it is not
exposed”
Dkt. No. 59, Ex. A at 17; id., Ex. B at B-8. The parties submit that this term appears in Claim 18
of the ’980 Patent. Dkt. No. 59, Ex. A at 17; id., Ex. B at B-8.
Shortly before the start of the October 7, 2016 hearing, the Court provided the parties
with the following preliminary construction: “the bonding pad and the second dielectric film
collectively cover the first dielectric film so that it is not exposed to above.”
(1) The Parties’ Positions
Plaintiff argues that “[t]he claim language uses the plural verb ‘cover,’ indicating that the
bonding pad and second dielectric film taken together cover the first dielectric film.” Dkt.
No. 67 at 23.
Defendants respond that “the plain and ordinary meaning of ‘completely cover’ does not
mean to cover only from above.” Dkt. No. 73 at 24. Defendants also argue that “Plaintiff’s use
of the term ‘collectively’—which is found nowhere in the specification—is an attempt to rewrite
the term ‘and’ to mean either the bonding pad covers the first dielectric film by itself, or the
second dielectric film covers the first dielectric film by itself, or both.” Id. at 25.
Plaintiff replies that “Defendants’ proposal should be rejected because it would exclude
the embodiment shown in Figure 14, a point that Defendants have not even attempted to
address.” Dkt. No. 77 at 8. Plaintiff also submits that “[i]n no embodiments do the bonding

- 40 -

pad 15 and second dielectric film 14 cover all surfaces of the first dielectric film 13.” Id. (citing
’980 Patent at Figs. 1-17).
At the October 7, 2016 hearing, Defendants argued that something is not “completely”
covered if its sides are exposed. Plaintiff responded that whereas the disputed term relates to
covering the top, other structures may cover the sides. As to Plaintiff’s proposal of
“collectively,” Defendants argued that Plaintiff is attempting to re-write “and” to mean “or.”
(2) Analysis
Claim 18 of the ’980 Patent, for example, recites (emphasis added):
18. A semiconductor device comprising:
a semiconductor substrate bearing semiconductor elements;
an interlayer insulating film formed on said semiconductor substrate;
a metal wire layer including plural metal wires formed on said interlayer
insulating film;
a surface protecting film including a first dielectric film with a small
dielectric constant for filling at least a part of areas among said metal wires in said
metal wire layer and a second dielectric film with a higher moisture absorption
preventing function than said first dielectric film for covering said metal wire
layer and said first dielectric film, said second dielectric film having a function of
suppressing moisture absorption of said first dielectric film;
an opening for a bonding pad formed in said surface protecting film; and
a bonding pad formed in said opening for obtaining external electrical
connection,
wherein said bonding pad in said opening and said second dielectric film
of said surface protecting film completely cover said first dielectric film so as not
to expose said first dielectric film.
On balance, the better reading of the plain language of the claim is that the bonding pad
and the second dielectric film, together, must completely cover the first dielectric film. Further,
to whatever extent Defendants are arguing that the bonding pad and second dielectric film must
completely surround the first dielectric film—above, below, and on all sides—no such limitation
is apparent. Instead, the context of the claim, as set forth above, demonstrates that “cover” refers
to covering a surface of the dielectric film that faces away from the semiconductor substrate.

- 41 -

These findings are consistent with Plaintiff’s proposal of “not exposed to above” and with the
specification, which discloses that “since the first dielectric film within the opening is covered
with the bonding pad and the second dielectric film so as not to expose the first dielectric film,
the moisture absorption through the opening can be prevented.” ’980 Patent at 3:3-7.
Defendants have cited Figure 5, arguing that “while the second dielectric film (14) covers
the top of the first dielectric film (13), the bonding pad (15) covers the sides of the first dielectric
film (13).” Dkt. No. 73 at 26. Even assuming for the sake of argument that Defendants’
interpretation of Figure 5 is correct, Defendants have not demonstrated why this illustration
demands that the word “cover” should be interpreted to requiring surrounding on all sides.
The Court therefore hereby construes “said bonding pad in said opening and said
second dielectric film of said surface protecting film completely cover said first dielectric
film so as not to expose said first dielectric film” to mean “the bonding pad and the second
dielectric film each covers a portion of the first dielectric film, and the bonding pad and the
second dielectric film collectively cover the first dielectric film so that it is not exposed to
above.”
Q. “wherein said bonding pad covers said opening”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“wherein said bonding pad extends across said
opening”

“said bonding pad extends across said opening
from one end to the other, whether within,
above, or below”

Dkt. No. 59, Ex. A at 18; id., Ex. B at B-9. The parties submit that this term appears in Claim 35
of the ’980 Patent. Dkt. No. 59, Ex. A at 18; id., Ex. B at B-9.
Shortly before the start of the October 7, 2016 hearing, the Court provided the parties
with the following preliminary construction: “Plain and ordinary meaning.”

- 42 -

At the October 7, 2016 hearing, both sides accepted the Court’s preliminary construction.
The Court therefore hereby construes “wherein said bonding pad covers said opening”
to have its plain meaning.
IX. DISPUTED TERMS IN U.S. PATENT NO. RE43,729
The ’729 Patent, titled “Processor Which Can Favorably Execute a Rounding Process
Composed of Positive Conversion and Saturated Calculation Processing,” issued on October 9,
2012, and bears an earliest priority date of December 1, 1997.
R. “performed within one cycle”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

This term is definite and does not need
construction and can be understood under its
plain and ordinary meaning.

The term “performed within one clock cycle”
is indefinite.

To the extent a construction is necessary:
“performed within one clock cycle”

To the extent the term can be construed: the
stated operations are started and completed
entirely in a single pipeline stage.

Dkt. No. 59, Ex. A at 30; id., Ex. B at B-24. The parties submit that this term appears in
Claim 21 of the ’729 Patent. Dkt. No. 59, Ex. A at 30; id., Ex. B at B-24.
Shortly before the start of the October 7, 2016 hearing, the Court provided the parties
with the following preliminary construction: “performed within one clock cycle.”
(1) The Parties’ Positions
Plaintiff argues that “the term ‘cycle’ is one of the most fundamental and basic terms of
art, and is universally understood in the art as a measure of time and as a ‘clock cycle.’” Dkt.
No. 67 at 25. Plaintiff also argues that Defendants’ alternative proposal is inconsistent with the
specification as well as the prosecution history. Id. at 26-28.
Defendants respond that execution time can vary such that the horizontal intervals in
Figures 12(a) and 12(b), for example, need not necessarily execute within one clock cycle. Dkt.
- 43 -

No. 73 at 27-28. Nonetheless, Defendants argue that “[d]espite this material disagreement, both
constructions are equally plausible interpretations of these Figures, and that conclusion means
that the Court must find this claim term to be indefinite.” Id. at 28.
Plaintiff replies that “the fact that the specification uses the term ‘stage’ provides no
support for replacing the well-understood term ‘cycle’ with ‘stage.’” Dkt. No. 77 at 9. Plaintiff
also argues that “the replacement of ‘performed within’ with ‘started and completed entirely in,’
as proposed by Defendants, is unnecessary because it will not aid the jury’s understanding.” Id.
at 10.
At the October 7, 2016 hearing, Defendants argued that although Plaintiff’s interpretation
may be plausible, the presence of an alternative plausible interpretation renders the term
indefinite. Plaintiff responded that the alternative interpretation proposed by Defendants is not
plausible.
(2) Analysis
Defendants have not demonstrated that the existence of two potential interpretations of
“performed within one cycle” necessarily renders the claim indefinite. As to the proper
construction, Plaintiff has submitted both intrinsic and extrinsic evidence.
Plaintiff has submitted extrinsic technical dictionaries that define “cycle” as a computer
processor clock cycle. See Dkt. No. 67, Ex. Q, Microsoft Press Computer Dictionary 99 (2d ed.
1994) (“CPU cycle” is “[a]lso called a clock tick”); see also id., Ex. R, Dictionary of Computer
and Internet Terms 114 (6th ed. 1998) (defining “cycle” as “one oscillation of a computer’s CPU
CLOCK; the shortest step into which computer actions can be divided”); id., Ex. S, Dictionary of
Computer Science, Engineering, and Technology 115 (2001) at 4 (“cycle”: “See clock cycle”).

- 44 -

The opinion of Plaintiff’s expert is also persuasive in this regard. See Dkt. No. 67-3, Aug. 26,
2016 Conte Decl. at ¶¶ 29-30.
Also, during prosecution of parent United States Patent No. RE43,145, the patentee
explained that “[t]o one of skill in the art, it would have been understood that each interval in the
horizontal direction in FIGS. 12A and 12B represents one cycle.” Dkt. No. 67, Ex. U, June 16,
2009 Amendment at 20; see id., Nov. 3, 2009 Supplemental Amendment at 20-21 (same); see
also id., Apr. 23, 2010 Interview Summary at 2-3; id., May 10, 2010 Amendment at 20-22;
Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1349 (Fed. Cir. 2004) (“the prosecution
history of one patent is relevant to an understanding of the scope of a common term in a second
patent stemming from the same parent application”).
Further, Figures 12A and 12B resemble timing diagrams known in the art, in which each
horizontal interval represents one clock cycle. See Dkt. No. 67, Ex. T, Mohamed Rafiquzzaman,
Microprocessors and Microcomputer-Based System Design 498-99, Fig. 7.29 (2d ed. 1995); see
also id., Aug. 26, 2016 Conte Decl. at ¶¶ 37-43. In light of the patentee’s above-noted
explanation that each horizontal interval in Figures 12A and 12B represents one “cycle,” this
extrinsic evidence reinforces that a person of ordinary skill in the art would understand that the
patentee used the term “cycle” to refer to one clock cycle.
Finally, one of the references cited by the ’729 Patent is United States Patent No.
5,917,740, which uses the terms “clock” and “clock cycle” interchangeably. See Dkt. No. 77-3,
Sept. 16, 2016 Conte Decl., Ex. 1, U.S. Pat. No. 5,917,740 at 4:47-55 (when discussing
“pipeline” with “nine stages,” stating that “the latency (time from start to end of execution) of
most instructions is nine clock cycles,” and noting that “some instructions may require more than
one cycle to execute due to the nature of the instruction”); see also V-Formation, Inc. v. Benetton

- 45 -

Group SpA, 401 F.3d 1307 (Fed. Cir. 2005) (“prior art cited in a patent or cited in the
prosecution history of the patent constitutes intrinsic evidence”) (citations and internal quotation
marks omitted).
Defendants have cited disclosure regarding pipeline stages, but nothing in those
disclosures is inconsistent with finding that the term “one cycle” refers to one clock cycle. See
’729 Patent at 11:8-28 & 19:50-20:6. Plaintiff’s expert has persuasively opined that interpreting
“cycle” as “pipeline stage,” as Defendants have proposed, would lead to the nonsensical result
that both the rows and columns of Figures 12A and 12B would represent pipeline stages. See
Dkt. No. 67-3, Aug. 26, 2016 Conte Decl. ¶¶ 42-44. Of note as well, the Patent Trial and Appeal
Board (“PTAB”) of the United States Patent and Trademark Office recently rejected a proposal
that the recital of “one cycle” means “performed within a single processor stage. Dkt. No. 86,
Ex. A, Sept. 29, 2016 Decision at 8. The PTAB “construe[d] the term ‘one cycle’ to encompass
one oscillation of a CPU clock . . . .” Id. at 10.
As to Plaintiff’s proposal of “performed,” the parties do not appear to have any
substantive dispute that “performed” requires completion, so no construction of “performed” is
necessary.
The Court therefore hereby construes “performed within one cycle” to mean
“performed within one clock cycle.”
S. “predetermined instruction”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

This term is definite and does not need
construction and can be understood under its
plain and ordinary meaning.

The term “predetermined instruction” is
indefinite

To the extent a construction is necessary:
“instruction determined in advance”
- 46 -

Dkt. No. 59, Ex. A at 32-33; id., Ex. B at B-25-26. The parties submit that this term appears in
Claim 21 of the ’729 Patent. Dkt. No. 59, Ex. A at 32-33; id., Ex. B at B-25-26.
In their September 23, 2016 Joint Claim Construction Chart, the parties submit an
agreement that this term means “instruction determined in advance.” Dkt. No. 80, Ex. A at 20.
The Court therefore sets forth the parties’ agreement in Appendix A to the present Claim
Construction Memorandum and Order.
T. “detecting / detecting unit”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

This term does not need construction and can
be understood under its plain and ordinary
meaning.

“a circuit that determines which instruction
will be processed by evaluating the bit pattern
that identifies a particular instruction”

To the extent a construction is necessary:
“identifying an instruction for processing” /
“unit for identifying an instruction for
processing”
Dkt. No. 59, Ex. A at 34; id., Ex. B at B-26; Dkt. No. 67 at 29. The parties submit that this term
appears in Claim 21 of the ’729 Patent. Dkt. No. 59, Ex. A at 34; id., Ex. B at B-26.
In their September 23, 2016 Joint Claim Construction Chart, the parties submit an
agreement that “[t]his term does not need construction and can be understood under its plain and
ordinary meaning.” Dkt. No. 80, Ex. A at 20. The Court therefore sets forth the parties’
agreement in Appendix A to the present Claim Construction Memorandum and Order.
X. CONCLUSION
The Court adopts the constructions set forth in this opinion for the disputed terms of the
patents-in-suit.

- 47 -

.

The parties are ordered to not refer to each other’s claim construction positions in the
presence of the jury. Likewise, in the presence of the jury, the parties are ordered to refrain from
mentioning any portion of this opinion, other than the actual definitions adopted by the Court.
The Court’s reasoning in this order binds the testimony of any witnesses, and any reference to
the claim construction proceedings is limited to informing the jury of the definitions adopted by
the Court.
SIGNED this 3rd day of January, 2012.
SIGNED this 9th day of November, 2016.

____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

- 48 -

APPENDIX A
U.S. Patent No. 6,197,696
Parties’ Agreement

Term

The parties agree that all steps a) – k) in claim 13
must be performed in the order listed.

Claim 13

U.S. Patent No. 6,538,324
Term

Parties’ Agreement

“said first film containing nitrogen in a
smaller content than that of said second
film” (Claims 1, 5)

“the first film’s concentration of nitrogen is less
than the second film’s concentration of nitrogen”

U.S. Patent No. 7,126,174
Term

Parties’ Agreement

“L-shaped sidewalls” (Claims 1, 14)

“sidewalls that substantially resemble a capital
letter ‘L’ or its mirror image”

“first silicide layers formed on regions
located on the sides of the first L-shaped
sidewalls within the active area” (Claim 1)

“first silicide layers formed on regions that are
within the active area and located on the sides of
the first L-shaped sidewalls”

“surface of the active area” (Claims 9, 10)

“top of the active area”

“a lower portion of the interconnection
provided on the upper surface of the trench
isolation is located higher than the surface
of the active area” (Claim 10)

“a bottom surface of the interconnection provided
on the upper surface of the trench isolation is
located higher than the surface of the active area”

“composed of the same material”
(Claim 11)

Plain and ordinary meaning

“made of the same insulating film”
(Claim 14)

“made of the same insulating material”

- 49 -

U.S. Patent No. 8,354,726
Parties’ Agreement

Term
“having an L-shaped cross section”
(Claim 1)

“having a cross-section that substantially
resembles a capital letter ‘L’ or its mirror image”

“the distance between the first gate
electrode and the auxiliary pattern is
smaller than the sum total of: the sum of
the thicknesses of the first and second sidewall insulating films; and the double of the
thickness of the stress-containing insulating
film” (Claim 1)

“the distance between the two closest points of the
first gate electrode and the auxiliary pattern is
smaller than the sum total of: the sum of the
thicknesses of the bases of the first and second
side-wall insulating films; and the double of the
thickness of the stress-containing insulating film”

“a minimum distance between the first
side-wall insulating film and the second
side-wall insulating film is less than twice a
thickness of a part of the stress-containing
insulating film on the first gate electrode,
the distance being formed between the first
gate electrode and the auxiliary pattern”
(Claim 28)

“a distance between the two closest points of the
first side-wall insulating film and the second sidewall insulating film is less than twice a thickness
of a part of the stress-containing insulating film on
the first gate electrode, the distance being formed
along a line between the first gate electrode and
the auxiliary pattern”

“the distance between the first gate
electrode and the second gate electrode is
smaller than the sum total of: the sum of
the thicknesses of the first and second sidewall insulating films; and the double of the
thickness of the silicon nitride film”
(Claim 43)

“the distance between the two closest points of the
first gate electrode and the second gate electrode is
smaller than the sum total of: the sum of the
thicknesses of the bases of the first and second
side-wall insulating films; and the double of the
thickness of the silicon nitride film”

- 50 -

“the side surfaces of the first and second
gate electrodes are shifted in the gate
length direction with each other, a shift
distance of the second gate electrode with
respect to the first gate electrode is 0 μm or
more and less than a predetermined value,
the predetermined value is a sum of: a sum
of a gate length of the first gate electrode
and a total thickness of the first side-wall
insulating film and a part of the silicon
nitride film formed on the side surface of
the first gate electrode; and a total
thickness of the second side-wall insulating
film and a part of the silicon nitride film
formed on the side surface of the second
gate electrode” (Claim 43)

“the side surfaces of the first and second gate
electrodes are shifted in the gate length direction
with each other, a distance the side surface of the
second gate electrode is shifted with respect to the
side surface of the first gate electrode is 0 μm or
more and less than a predetermined value, the
predetermined value is a sum of: a sum of a gate
length of the first gate electrode and a total
thickness of the based [sic] of the first side-wall
insulating film and a part of the silicon nitride film
formed on the side surface of the first gate
electrode; and a total thickness of the base of the
second side-wall insulating film and a part of the
silicon nitride film formed on the side surface of
the second gate electrode”

“a minimum distance between the first
side-wall insulating film and the second
side-wall insulating film is less than twice a
thickness of a part of the silicon nitride
film on the first gate electrode, the distance
being formed between the first gate
electrode and the second gate electrode”
(Claim 61)

“a distance between the closest points of the first
side-wall insulating film and the second side-wall
insulating film is less than twice a thickness of a
part of the silicon nitride film on the first gate
electrode, the distance being formed along a line
between the first gate electrode and the second
gate electrode”

“auxiliary pattern” (Claims 1, 4, 8-10,
17-24, 26-28)

“another distinct pattern”

U.S. Patent No. RE41,980
Parties’ Agreement

Term
“a metal wire layer including plural metal
wires formed on said interlayer insulating
film” (Claims 18, 35)

“a metal wire layer including more than one metal
wire formed above said interlayer insulating film”

- 51 -

“wherein said first dielectric film is made
from at least one oxide film selected from
the group consisting of a silicon oxide film,
a silicon oxide film doped with fluorine
and a porous silicon oxide film, or a
composite film including an organic
insulating film and at least one oxide film
selected from the group consisting of a
silicon oxide film, a silicon oxide film
doped with fluorine and a porous silicon
oxide film” (Claims 30, 47)

“wherein said first dielectric film is made from a
silicon oxide film, a silicon oxide film doped with
fluorine, a porous silicon oxide film, a composite
film including any of these silicon oxide films, or a
composite film including any of these silicon oxide
film and an organic insulating film”

U.S. Patent No. RE43,729
Term

Parties’ Agreement

“predetermined instruction” (Claim 21)

“instruction determined in advance”

“detecting / detecting unit” (Claim 21)

This term does not need construction and can be
understood under its plain and ordinary meaning.

Dkt. No. 59 at 2-5; Dkt. No. 80, Ex. A at 1-6, 8-9, 14-15, 18 & 20.

- 52 -