KAIST IP US LLC v. Samsung Electronics Co., LTD., et al

Filing 442

MEMORANDUM OPINION AND ORDER re 219 Opposed SEALED PATENT MOTION to Strike and Exclude Portions of the Rebuttal Expert Report of Vivek Subramanian, Ph.D. filed by KAIST IP US LLC.. Signed by Magistrate Judge Roy S. Payne on 5/29/2018. (nkl, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
KAIST IP US LLC,
Plaintiff,
v.
SAMSUNG ELECTRONICS CO.,
LTD., et al.,
Defendants.

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No. 2:16-CV-01314-JRG-RSP

MEMORANDUM OPINION AND ORDER
Plaintiff moves to exclude certain portions of Dr. Vivek Subramanian’ rebuttal
report on infringement. Pl.’s Mot. to Exclude [Dkt. # 219]. The Court will GRANT the
motion IN PART.
***
A.

Subramanian’s Opinion Concerning Whether “Double-Gate FinFET” is
Limiting (¶¶ 82–89)
Plaintiff contends paragraphs 82–89 of Subramanian’s rebuttal report concern an

issue the Court has already resolved—namely, whether “double-gate FinFET” limits the
claimed devices to only two gates. Pl.’s Mot. [Dkt. # 219] at 2–3. During claim
construction, the Court concluded the term was not limiting. Cl. Constr. Mem. Op. & Order
[Dkt. # 179] at 13–17. Subramanian’s rebuttal report acknowledges the Court’s
construction, but nonetheless notes “the Accused Devices are not double-gate FinFET

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devices.” Subramanian Rep. [Dkt. # 219-2] ¶ 82.
Defendants do not contest Plaintiff’s characterization of these paragraphs as
inconsistent with the Court’s constructions. Instead, Defendants note Judge Gilstrap, as of
the time of their response, had not yet ruled on their objections. Defs.’ Resp. [Dkt. # 273]
at 2. Thus, say Defendants, they were required to maintain their positions or risk waiver on
appeal. Id. Defendants ask that, if the Court grants this part of Plaintiff’s motion, the Court
hold these arguments are not waived for purposes of appeal. Id. at 3.
Judge Gilstrap has since overruled Defendants’ objections, Order [Dkt. # 388], and
Defendants do not contest these issues have already been decided. Given that,
Subramanian’s testimony is not relevant and should be excluded under Fed. R. Evid. 402.
Accordingly, the Court will grant this part of the motion. 1
B.

Subramanian’s Theory Relating to “a Gate Oxide Layer” and “a First Oxide
Layer” (¶¶ 100–25)
Plaintiff contends Subramanian’s rebuttal report raises a belated claim-construction

dispute in that the same layer of material cannot satisfy both the “gate oxide layer” and the
“first oxide layer” claim limitations. Pl.’s Mot. [Dkt. # 219] at 3–6 (citing to Subramanian
Rep. [Dkt. # 219-2] ¶ 125). Defendants respond that Plaintiff, in fact, has raised the new
dispute by now proposing a meaning that is inconsistent with the Court’s claim
construction. Defs.’ Resp. [Dkt. # 273] at 2–3.

1

The Court declines to address waiver because it is not the trial court’s role to instruct an
appellate court on whether a party has waived an issue for appeal.

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Subramanian’s position concerns two different continuous layers of material in the
accused devices: an interfacial silicon dioxide (SiO2) layer and a HfO dielectric layer. The
SiO2 layer wraps completely around and contacts the fin on all sides. Subramanian Rep.
[Dkt. # 219-2] ¶ 110. The HfO layer then wraps around the SiO2 layer. Id. ¶ 111.

GF_KAISTIP00000239 (annotated)
Subramanian opines
[t]he interfacial SiO2 layer cannot correspond to the claimed “first oxide
layer” because the gate electrode is not formed on the interfacial SiO2 as
required by the claims. . . . In addition, to the extent one would argue that the
interfacial SiO2 layer corresponds to the claimed “gate oxide layer,” the
interfacial SiO2 layer cannot also correspond to the claimed “first oxide
layer” for an additional reason. Specifically, the Plaintiff cannot point to the
same layer as corresponding to both features of the claimed structure.
Id. ¶ 112 (emphasis added); see also id. at ¶ 121. Similarly, Subramanian concludes
[t]he HfO layer is not formed on the surface of the semiconductor fin.
Instead, the HfO layer is formed on the surface of the interfacial SiO2 layer.

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As such, the HfO layer cannot correspond to the claimed “first oxide layer”
which is required to be “formed on the upper surface of said Fin active
region[.]” . . . The HfO layer cannot correspond to the claimed “gate oxide
layer” because the HfO layer is not “formed on both side-walls of the Fin
active region.” . . . In addition, the Plaintiff cannot point to the HfO layer as
corresponding to both “gate oxide layer” and “first oxide layer” features of
the claimed structure.
Id. ¶ 113 (emphasis added); see also id. at ¶ 122.
The ’055 Patent’s specification makes this a straight-forward issue. The patent
shows an embodiment of the invention with a continuous layer of material in contact with
the fin active region (4). ’055 Patent fig.3a, 3b. The specification identifies part of that
continuous layer as the gate oxide layer (12) formed on the sidewalls of the fin, a second
part as the first oxide layer (6) formed on the fin’s upper surface, and a third part as the
second oxide layer (10) formed on the underlying bulk substrate (2b). Id. at 5:35–52.
Contrary to Defendants’ contention, this describes the first oxide layer and gate oxide layer
as different regions of one continuous layer that surrounds the fin active region. Thus,
Subramanian’s statement that “the Plaintiff cannot point to the same layer as corresponding
to both features of the claimed structure” is an incorrect construction of the claim, and the
Court will preclude Defendants and Subramanian from advancing that position before the
jury.
C.

Whether the Source/Drains Must Be a Part of the Fin Active Region (¶¶ 160–
67)
Plaintiff complains that Subramanian’s opinion effectively imports dependent

limitations of Claims 11–12 into Claim 1. Pl.’s Mot. [Dkt. # 219] at 6–7. Claim 1 recites

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“a Fin active region which is a wall-shape single crystalline silicon” and “a source/drain
region which is formed on both sides of the Fin active region except where said gate
overlaps with the Fin active region.” ’055 Patent at 12:4–5, 12:18–20. Each of Claim 11
and Claim 12 recite “a doping junction depth for the source/drain formed in said Fin active
region.” Id. at 13:30–32, 13:35–37. Subramanian opines that “[d]ependent claims 11 and
12 make clear that the ‘Fin active region’ recited in independent claim 1 includes the
source/drain.” Subramanian Rep. [Dkt. # 219-2] ¶ 160.
Defendants’ response does not refute Plaintiff’s argument about Claim 1. Instead,
Defendants argue Subramanian provides a valid opinion for Claims 11–12 and therefore
this part of Plaintiff’s motion should be denied as to those two claims. Defs.’ Resp. [Dkt.
# 273] at 9.
Defendants’ lack of a substantive response resolves this issue. Accordingly, the
Court will preclude Subramanian from opining that the Fin active region recited in
independent claim 1 includes the source/drain.
D.

Oxidation Layer (¶¶ 178–80, 187–91, 216–19)
Plaintiff next asks the Court to strike Subramanian’s opinion that an oxide layer not

formed by oxidation cannot be a “first oxidation layer” or a “second oxidation layer,” as
recited in the claims. Plaintiff argues the Court has already rejected Subramanian’s position
during claim construction and concluded the oxide layers are not limited to layers formed
by an oxidation process. Pl.’s Mot. [Dkt. # 219] at 7–8. Defendants respond that the Court
did not address whether a layer not formed by oxidation can meet the “oxidation layer”

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limitation, and that question is proper for the jury. Defs.’ Resp. [Dkt. # 273] at 9–10.
During claim construction, the parties disputed whether this term was indefinite. See
Cl. Constr. Mem. Op. & Order [Dkt. # 179] at 28, 45. In resolving that dispute, the Court
construed “first oxidation layer” and “second oxidation layer” as “first oxide layer” and
“second oxide layer,” respectively. Id. at 29, 47. Given that, the question for the jury is
whether the accused devices include first and second oxide layers as recited—not whether
those oxide layers are made from an oxidation process. See In re Johnson, 394 F.2d 591,
594 (C.C.P.A. 1968) (“This court has repeatedly held that a claim for an article capable of
such definition must define the article by its structure and not by the process of making
it.”). Accordingly, the Court will preclude Subramanian from opining the accused devices
are not covered by the claims because of the process by which they are made.
E.

Selective Epitaxial Layer (¶¶ 194–98)
Plaintiff complains about Subramanian’s opinion that, “[b]ecause the alleged

source/drain region and alleged ‘selective epitaxial layer’ are one in the same, the Accused
Devices do not satisfy the requirement that there be both ‘a source/drain region’ and a
‘selective epitaxial layer.” Pl.’s Mot. [Dkt. # 219] at 8–9; see also Subramanian Rep. [Dkt.
# 219-2] ¶ 197. Defendants counter that different claim terms are presumed to correspond
to different structures, and that Plaintiff has failed to rebut this presumption. Defs.’ Resp.
[Dkt. # 273] at 11.
Both the specification and claims support the position that the source/drain region
must exist before the selective epitaxial layer can be grown and, therefore, the two

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limitations are not the same. Claim 7, for example, requires a “selective epitaxial
layer . . . grown on both sides (source/drain region) of the Fin active region,” ’055 Patent
at 13:5–6, so the same accused structure cannot satisfy both limitations since the existence
of the first limitation is a prerequisite to formation of the second. See also ’055 Patent at
7:32–34 (“Hence, the selective epitaxial layer 18 is grown on the source/drain region as
well as on the poly-silicon or SiGe gate 16 resulting in a reduction in the resistance.”)
Subramanian, however, makes a legal statement incident to his conclusion—
specifically, “that Plaintiff cannot point to the same element as satisfying both of these
limitations.” Subramanian Rep. [Dkt. # 219-2] ¶ 196. The Court has not resolved that issue.
Accordingly, the Court will preclude Subramanian from asserting that legal proposition
before the jury, although he may opine that, as a factual matter, the accused devices do not
satisfy both the “source/drain region” and “selective epitaxial layer” claim limitations.
F.

Expert Testimony Relating to the Corresponding Japanese Application
Finally, Plaintiff complains that Subramanian opines as to the implications of claims

of a corresponding Japanese patent application having been rejected by the Japanese Patent
Office. Pl.’s Mot. [Dkt. # 219] at 9–10. Defendants respond that the denial of claims in the
Japanese application is highly relevant at least to Defendants’ defenses against Plaintiff’s
claims of willful and direct infringement. Defs.’ Resp. [Dkt. # 273] at 11–12.
The Court previously considered this issue when deciding Plaintiff’s Motion in
Limine No. 18. See Order on Motions in Limine [Dkt. # 416] at 4; Hr’g Tr. (Apr. 18, 2017)
[Dkt. # 387] at 69:2–72:14. For the same reasons explained during the hearing, the Court

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will grant this part of the motion.
***
The Court GRANTS the motion IN PART. Specifically, the Court ORDERS that
Defendants may not offer argument or testimony:
(1)

concerning Paragraphs 82–89 of Subramanian’s rebuttal report;

(2)

that Plaintiff cannot, as a matter of law, point to either the SiO2 or HfO layers
by themselves as satisfying both the “gate oxide layer” and the “first oxide
layer” limitations;

(3)

that the Fin active region recited in independent claim 1 includes the
source/drain;

.

(4)

that whether the “oxidation layer” or “oxide layer” limitations are present in
the accused devices depends on the manufacturing process by which those
layers are formed;

(5)

that Plaintiff cannot, as a matter of law, point to the same element as
satisfying both the “source/drain region” and “selective epitaxial layer”
limitations; and

(6)

concerning Paragraph 67 of Subramanian’s rebuttal report.

Otherwise, the Court DENIES the motion.

SIGNED this 3rd day of January, 2012.

SIGNED this 29th day of May, 2018.

____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

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