Invensas Corporation v. Samsung Electronics Co., Ltd. et al
Filing
193
CLAIM CONSTRUCTION OPINION AND ORDER. Signed by Magistrate Judge Roy S. Payne on 10/26/2018. (nkl, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
INVENSAS CORPORATION,
Plaintiff,
v.
SAMSUNG ELECTRONICS CO., LTD.,
and SAMSUNG ELECTRONICS
AMERICA, INC.,
Defendants.
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No. 2:17-CV-00670-RWS-RSP
CLAIM CONSTRUCTION OPINION AND ORDER
This lawsuit concerns U.S. Patents 6,054,336, 6,232,231, 6,566,167, 6,825,554, and
6,849,946, which relate to various methods of manufacturing semiconductor devices. The
’231 and ’946 Patents concern methods of providing a substantially planar semiconductor
topography, which facilitates the formation of high-resolution features in such devices.
’231 Patent at 1:28–48 (discussing problems associated with insufficiently planar topography during the manufacturing process); ’946 Patent at 1:32–52 (same). The ’167 and ’554
Patents teach using a ground trace in a particular configuration to provide noise shielding
from other signals within the device. ’167 Patent at (57); ’554 Patent at (57). The ’336
Patent concerns methods of making conductor tracks on the semiconductor device in a way
that provides very narrow gaps between the tracks while minimizing the possibility of short
circuits between them due to their close proximity. ’336 Patent at 1:59–67. The ’336 Patent
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thus facilitates a size reduction relative to prior art semiconductor devices because the spacing between tracks is reduced.
Having considered the parties’ briefing and arguments of counsel during an August
22, 2018 claim construction hearing, the Court construes the disputed claim terms as follows.
I.
GENERAL LEGAL STANDARDS
A.
Claim Construction
“[T]he 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).
As such, if the parties dispute the scope of the claims, the court must determine their meaning. See, e.g., Markman v. Westview Instruments, Inc., 517 U.S. 370, 390 (1996), aff’g, 52
F.3d 967, 976 (Fed. Cir. 1995) (en banc); Verizon Servs. Corp. v. Vonage Holdings Corp.,
503 F.3d 1295, 1317 (Fed. Cir. 2007).
When construing claims, “[t]here is a heavy presumption that claim terms are to be
given their ordinary and customary meaning.” Aventis Pharm. Inc. v. Amino Chems. Ltd.,
715 F.3d 1363, 1373 (Fed. Cir. 2013) (citing Phillips, 415 F.3d at 1312–13). Courts must
therefore “look to the words of the claims themselves . . . to define the scope of the patented
invention.” Id. (citations omitted). The “ordinary and customary meaning of a claim term
is the meaning that the term would have to a person of ordinary skill in the art in question
at the time of the invention, i.e., as of the effective filing date of the patent application.”
Phillips, 415 F.3d at 1313. This “person of ordinary skill in the art is deemed to read the
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claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id.
Intrinsic evidence is the primary resource for claim construction. See Power-One,
Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1348 (Fed. Cir. 2010) (citing Phillips, 415 F.3d
at 1312). For certain claim terms, “the ordinary meaning of claim language as understood
by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted
meaning of commonly understood words.” Phillips, 415 F.3d at 1314. But for claim terms
with less-apparent meanings, courts consider “those sources available to the public that
show what a person of skill in the art would have understood disputed claim language to
mean . . . [including] the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Id.
3 / 23
II.
CONSTRUCTION OF DISPUTED TERMS1
A.
“substantially planar” / “substantially coplanar” (’231 Patent, cl.1, 4;
’946 Patent, cl.16, 17)
Plaintiff’s
Proposed Construction
Defendants’
Proposed Construction
Plain and ordinary meaning, no construction necessary. Alternatively, “substantially
Indefinite
flat or level” and “substantially at the same
elevation,” respectively
The ’231 and ’946 Patents, which share the same specification,2 teach preventing
the formation of elevational disparities during the semiconductor manufacturing process.
Any such disparities can negatively affect subsequent steps in the manufacturing process
and cause incorrect patterning of layers when using lithography. ’231 Patent at 1:27–41.
Elevational disparities can form when a conductive material is deposited across an
uneven surface. The conductive material fills laterally separated trenches formed in the
substrate. The trenches provide well-known technical benefits not important to the asserted
patents. Ideally, the conductive material above the top surface of the substrate could be
removed using chemical-mechanical polishing (CMP), a process using a polishing pad and
1
At the time of the Court’s claim construction hearing, the parties had not agreed to constructions for any claim terms. See P.R. 4-5 Joint Notice Regarding Cl. Constr. Chart [Dkt.
# 142] at 1 (“The parties have not agreed to any constructions at this time.”).
2
The application that became the ’946 Patent is a continuation of the application that became the ’231 Patent. ’231 Patent at (65); id. at 1:6–8. Accordingly, the ’231 and ’946
Patents share the same specification.
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an abrasive slurry. Id. at 1:52–63. In sections with a wide trench, however, the polishing
pad tends to conform to the surface topography, causing the surface material of recessed
areas to be stripped. Id. at 3:14–22, FIG. 4 (showing a recessed area (42) attributable to the
polishing pad conforming to the surface topography). In sections with many narrower
trenches, the slurry may react with the conductive metal at a different rate than with the
surrounding oxide. This causes the metal to be removed at a faster rate than the surrounding
oxide, also resulting in a recessed area. Id. at 3:23–42, FIG. 4 (showing a recessed area
(40) attributable to oxide erosion)
To address the problem, the ’231 and ’946 Patents generally teach forming
“dummy” trenches in the dielectric layer so the conductive material is deposited into the
additional trenches. This causes the conductor material and dielectric to react to the slurry
at approximately the same rate over the entire area. See id. at 4:30–32 (“Advantageously,
the polish rate of the conductive material above the dummy trenches and the wide and
narrow trenches is substantially uniform.”). The conductor material within a dummy trench
is not connected to an integrated circuit or other electrical components. Compare Pl.’s Br.
[Dkt. # 123] at 13, with Defs.’ Br. [Dkt. # 134] at 6 (both proposing a construction whereby
the dummy conductors “are not connected to any active or passive devices that function as
an integrated circuit”).
The parties’ dispute concerning “substantially planar” and “substantially coplanar”
relates to indefiniteness. Defendants contend “the intrinsic record provides no objective
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standard or boundary to define the degree of flatness that qualifies as ‘substantially planar/co-planar.’” Defs.’ Br. [Dkt. # 134] at 1. Thus, say Defendants, these terms are indefinite. Id. Plaintiff counters that a person of ordinary skill would understand that no semiconductor layer is perfectly flat and that the degree of planarity will vary depending on
tolerances of the particular fabrication process. Pl.’s Br. [Dkt. # 123] at 10.
“[A] patent is invalid for indefiniteness if its claims, read in light of the specification
delineating the patent, and the prosecution history, fail to inform, with reasonable certainty,
those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014). The claims “must be precise enough to afford
clear notice of what is claimed,” but that consideration must be made while accounting for
the inherent limitations of language. Id. “As long as claim terms satisfy this test, relative
terms and words of degree do not render patent claims invalid.” One-E-Way, Inc. v. I.T.C.,
859 F.3d 1059, 1063 (Fed. Cir. 2017); see also Tinnus Enter., LLC v. Telebrands Corp.,
733 Fed. App’x 1011, 1018 (Fed. Cir. 2018) (finding that using “substantially” did not
render the term indefinite).
Here, “substantially planar” and “substantially coplanar” do not render the claims
indefinite to a person of ordinary skill.3 The patents describe the known problem of eleva-
3
Although Plaintiff proffers a level of ordinary skill in the art, Pl.’s Br. [Dkt. # 123] at 2–
3, Defendants do not. Accordingly, the Court concludes Defendants agree with Plaintiff’s
proffered level of ordinary skill for purposes of claim construction.
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tional disparities and the increasing use of CMP to planarize and remove surface irregularities. Clearly, perfect planarization would be the goal, even though it might be unattainable
at an atomic level. Nevertheless, the Court finds a person of ordinary skill would understand the meaning of “substantially planar” and “substantially coplanar” as these terms
relate to avoiding the formation of elevational disparities during the manufacturing process.
For the disputed phrases “substantially planar” and “substantially coplanar,” the Court
adopts the Plaintiff’s proposed construction of plain and ordinary meaning.
B.
“trench” (’231 Patent, cl.1, 3, 4; ’946 Patent, cl.16–17, 20–22)
Plaintiff’s
Proposed Construction
Defendants’
Proposed Construction
a cavity, or recess, formed in a semiconduc- plain and ordinary meaning; no constructor substrate or a dielectric layer
tion necessary
Plaintiff argues “trench” is a term of art and that, in semiconductor manufacturing,
a “trench” can be any size or shape. Pl.’s Br. [Dkt. # 123] at 11–12. Defendants counter
that “trench” is a lay term that has a well-understood meaning that the jury can apply without a construction. Defs.’ Br. [Dkt. # 134] at 5.
The Court preliminarily construed “trench” as having its plain and ordinary meaning, but rejected any requirement of a particular shape. During the hearing, Defendants
agreed that “trench” has no dimensional restrictions. H’rg Tr. [Dkt. # 178] at 36:24–25.
And all parties agreed with the Court’s preliminary construction, as well as the lack of a
restriction on the depth of a “trench.” Id. at 37:3–4; see also id. at 40:1–7.
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Based on the parties’ agreement at the hearing, “trench” should be given its plain
and ordinary meaning. The term does not require any particular shape (e.g., that a “trench”
must be elongated) or depth.
C.
“dummy conductors” (’231 Patent, cl.1, 12; ’946 Patent, cl.16–18)
Plaintiff’s
Proposed Construction
Defendants’
Proposed Construction
Plain and ordinary meaning, no construction necessary. Alternatively, “conductive
structures that are not connected to any active or passive devices that function as an
integrated circuit.”
conductive structures that can carry power
or ground voltages but are not connected to
any active or passive devices that function
as an integrated circuit
The parties propose similar constructions for “dummy conductors,” but dispute
whether the proper construction of “dummy conductors” requires the capability to carry
power and ground voltages. Defendants contend the specification defines “dummy conductors” as requiring that capability. Defs.’ Br. [Dkt. # 134] at 6 (citing ’231 Patent at 8:4–
9; id. at 4:35–44). Plaintiff argues Defendants’ construction excludes embodiments from
the patents, because none of the figures depict any connection from the dummy conductors
to a power supply or ground. Pl.’s Br. [Dkt. # 123] at 15.
The Court agrees with Plaintiff. The claims recite structure, yet the proposed phrase
“can carry power or ground voltages” recites a capability. The phrase is also redundant of
“conductive,” which the parties agree is part of the proper construction. Moreover, the language from the specification on which Defendants rely does not define the term expressly
or by implication. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
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1996) (“The specification acts as a dictionary when it expressly defines terms used in the
claims or when it defines terms by implication.”). To the contrary, the specification implies
that dummy conductors might not be connected to a power supply or ground. See id. at
4:35–44 (“Most likely, the dummy conductor are connected to a power supply or
ground . . .” (emphasis added)). For these reasons, the Court construes “dummy conductors” to mean “conductive structures that are not connected to any active or passive devices
that function as an integrated circuit.”
D.
“conductive lines” (’946 Patent, cl.16, 19)
Plaintiff’s
Proposed Construction
Defendants’
Proposed Construction
Plain and ordinary meaning, no construc- conductive structures that are connected to
tion. Alternatively, “a line of conductive one or more active or passive devices that
material.”
function as an integrated circuit
This disputed term appears in two claims of the ’946 Patent. Claim 16 requires
a plurality of laterally spaced dummy trenches in a dielectric layer, between a first trench and a series of second
trenches . . . ;
dummy conductors in said laterally spaced dummy
trenches . . . ; and
conductive lines in said series of second trenches and said
first trench . . . .
’946 Patent at 10:25–42. Claim 19 simply limits the “conductive lines” to specific metals.
Id. at 54–58.
Defendants argue that “conductive lines” as used in Claim 16 must be connected to
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active or passive integrated circuits. Defs.’ Br. [Dkt. # 134] at 8. They note the specification
never uses the term “conductive lines” and infer that the term equates to “interconnects.”
Id. Defendants also argue that because the dummy connectors are not connected to integrated circuits, the conductive lines must be so connected. Id. at 7–8. Plaintiff, however,
stresses that “conductive lines” and “interconnect” are used differently in the claims. Pl.’s
Reply [Dkt. # 141] at 3–4.
The Court agrees with Plaintiff for two reasons. First, the patentee did not define
“conductive lines” to have the same meaning as “interconnect,” which suggests a structure
that connects two things together.4 Rather, other claims of the ’946 Patent use “interconnect,” and the Court presumes that different claim terms have different meanings. Nystrom
v. TREX Co., 424 F.3d 1136, 1143 (Fed. Cir. 2005) (“When different words or phrases are
used in separate claims, a difference in meaning is presumed.” (citing Tandon Corp. v.
I.T.C., 831 F.2d 1017, 1023 (Fed. Cir. 1987)). Defendants have not overcome that presumption, and the Court rejects the argument that “conductive lines” must be connected to
devices because the “dummy conductors” are not so connected.
Second, although both the “conductive lines” and “dummy conductors” could be
made from the same physical material (e.g., copper), the structural distinction between
4
See http://www.yourdictionary.com/interconnect#websters?direct_search_result=yes
(defining “interconnect” as “[t]o be connected with each other,” or “to connect reciprocally”).
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them is their location within the claimed invention. The claims require “a plurality of laterally spaced dummy trenches . . . between a first trench and a series of second trenches.”
’946 Patent at 10:27–29. The claims further require that (1) the dummy conductors are in
the dummy trenches, and (2) the conductive lines are in the first trench and the series of
second trenches. Id. at 10:36–42. These requirements do not speak to whether these elements are connected to other devices, and the Court sees no basis for reading such a requirement into the claims. Accordingly, “conductive lines” does not require connection to
devices that function as an integrated circuit. For the disputed phrase “conductive lines,”
the Court adopts the Plaintiff’s proposed construction of plain and ordinary meaning.
E.
“plurality of laterally spaced dummy trenches” (’231 Patent, cl.1; ’946
Patent, cl.16)
Plaintiff’s
Proposed Construction
Defendants’
Proposed Construction
Plain and ordinary meaning, no construction. Alternatively, “two or more dummy two or more separate dummy trenches artrenches arranged with spaces between ranged with spaces between their sides
their sides.”
The parties dispute how to determine whether there are multiple trenches in an accused device. Defendants contend that separate dummy trenches must be completely isolated from one another. Defs.’ Br. [Dkt. # 134] at 10–11. Plaintiff argues that such a requirement would be inconsistent with the claim language. Id. at 17.
The intrinsic record does not suggest multiple trenches cannot connect or intersect.
Indeed, even the addition of “separate” to the construction, as Defendants urge, does not
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resolve that dispute, as “separate trenches” might still be connected. Accordingly, “plurality
of laterally spaced dummy trenches” should be given its plain and ordinary meaning, and
there is no requirement that the “dummy trenches” cannot connect or intersect.
F.
“forming a conductor pattern on the conductive layer” (’336 Patent,
cl.1)
Plaintiff’s
Proposed Construction
Defendants’
Proposed Construction
forming a pattern in the conductive layer
forming a pattern to be transferred to the
with gaps corresponding to the auxiliary
conductive layer
windows
The ’336 Patent claims methods of forming conductor tracks on an electronic device. Claim 1, for example, recites:
providing an electrically insulating substrate;
providing a conductive layer on the substrate;
forming a conductor pattern on the conductive layer by forming windows at the conductor layer, the step of forming the
windows at the conductor layer comprising:
providing a first dielectric layer adjacent the substrate and having a thickness;
forming auxiliary windows in the first dielectric layer having
dimensions which are greater, in at least one dimension,
than the windows to be formed at the conductor layer, the
auxiliary windows having sidewalls which define a depth
of the auxiliary windows which depth is only part of the
thickness of the first dielectric layer;
providing an additional dielectric layer on the first dielectric
layer including over the auxiliary windows formed in the
first dielectric layer;
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etching the additional dielectric layer back anisotropically
without a mask to form spacers on the sidewalls of the auxiliary windows, which spacers are formed by unetched portions of the additional dielectric layer; and
continuing etching anisotropically through the auxiliary window and the spacers to define the windows at the conductive layer.
’336 Patent at 5:17–42. Claim 5, which indirect depends from Claim 1, recites that “the
conductor pattern is formed in the conductive layer” by oxidizing the portions of the conductive layers exposed through the auxiliary windows. Id. at 6:16–20 (emphasis added).
The parties dispute the meaning of “forming a conductor pattern on the conductive
layer” in Claim 1. Defendants contend this step requires forming the pattern in the conductive layer because this is how the patent achieves its object of ensuring gaps smaller than
the “auxiliary windows” formed using lithography. Defs.’ Br. [Dkt. # 134] at 16–17. Plaintiff contends the claims distinguish between forming a pattern “on” the conductive layer
and “in” the conductive layer. Pl.’s Br. [Dkt. # 123] at 18 (“While claim 1 refers to the
conductor pattern ‘on’ the conductive layer, claim 5 refers to the conductor pattern ‘formed
in the conductive layer.’” (emphasis added)). Plaintiff also contends the claims are consistent with creating a mask that can then be used to form gaps in the conductive layer. Id.
at 19. Defendants attack Plaintiff’s construction as leaving the forming of the pattern ambiguous so that it could include gaps outside of the axillary windows. Defs.’ Br. [Dkt.
# 134] at 17.
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Plaintiff’s construction is better supported by the claim language and intrinsic record. The phrase requires “forming windows at the conductive layer.” ’336 Patent at 5:21–
22 (emphasis added). Although “at” can mean “in,” it can also mean “on” or “near.”5 Consistent with the latter meanings, the steps of “providing a first dielectric layer,” “providing
an additional dielectric layer,” “etching the additional dielectric layer,” and “continuing
etching anisotropically” correspond to the specification’s description of FIGS. 1(a)–1(g).
FIG. 1(h), on the other hand, shows the embodiment after removal of the silicon oxide
layer, which corresponds to dependent Claim 5. ’336 Patent at 6:16–20 (reciting “the conductor pattern [being] formed in the conductive layer” (emphasis added)). Also, the ’336
Patent’s use of “in” in Claim 5 suggests the most logical reading of the disputed language,
read in light of the specification and particularly FIG. 1, is that Claim 1 is directed to all of
the steps except the oxidation of the conductor layer. For these reasons, the Court construes
the disputed phrase “forming a conductor pattern on the conductive layer” to mean “forming a pattern to be transferred to the conductive layer.”
G.
“continuing etching anisotropically through the auxiliary window and
the spacers to define the windows at the conductive layer” (’336 Patent,
cl.1)
Plaintiff’s
Proposed Construction
Defendants’
Proposed Construction
without interruption, to go on etching aniPlain and ordinary meaning, no construcsotropically only the portions of the first dition.
electric layer within the auxiliary window
5
http://www.yourdictionary.com/at?direct_search_result=yes
14 / 23
The parties dispute two aspects of this phrase. First, the parties dispute the locations
of the windows defined at the conductive layer. Second, the parties dispute whether there
can be an interruption in time between the “etching” step and the “continuing etching” step.
As to the first issue, Defendants contend the specification’s emphasis on forming
gaps narrower than what prior art lithography could achieve mandates limiting the etching
to only the portions of the conductive layer within the auxiliary window. Defs.’ Br. [Dkt.
# 134] at 18–21. Plaintiff, however, contends such a construction would read out every
disclosed embodiment. Pl.’s Br. [Dkt. # 123] at 22.
“[W]here the specification makes clear at various points that the claimed invention
is narrower than the claim language might imply, it is entirely permissible and proper to
limit the claims.” Alloc, Inc. v. I.T.C., 342 F.3d 1361, 1370 (Fed. Cir. 2003) (quoting SciMed
Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1345 (Fed. Cir. 2001).
Here, however, Defendants seek not to limit the steps of the method claim, but to limit the
result of implementing the recited steps. The ’336 Patent describes the objective of forming
windows “in the dielectric layer . . . which are substantially smaller than the dimensions of
the original windows.” ’336 Patent at (57). That objective is accomplished using the steps
of Claim 1, which already limits the size of the auxiliary windows relative to the windows
to be formed in the dielectric layer. Id. at 5:25–28 (reciting “forming auxiliary windows in
the first dielectric layer having dimensions which are greater, in at least one dimension,
than the windows to be formed at the conductor layer”). That size limitation is consistent
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with the scope of invention set forth in the abstract. See also id. at (57). There is no basis
for further limiting the scope of the disputed phrase.
As for the second issue—whether Claim 1 requires a stoppage between the two
“etching” steps—Defendants contend that the specification does not disclose two separate
and distinct etching processes with an interruption between them. Defs.’ Br. [Dkt. # 134]
at 21–22. But that alone is not enough to warrant limiting the term for two reasons. First,
the specification is silent about whether there is any temporal spacing between the “etching” and “continuing etching” steps. Second, the claims strongly suggest that the demarcation between the two steps is not time, but rather the formation of spacers on the sidewalls
of the auxiliary windows. Accordingly, the Court rejects this aspect of Defendants’ proposed construction and adopts Plaintiff’s proposed construction of plain and ordinary
meaning.
H.
“providing a first dielectric layer adjacent the substrate” (’336 Patent,
cl.1)
Plaintiff’s
Proposed Construction
Defendants’
Proposed Construction
providing a first dielectric layer near the Plain and ordinary meaning, no construcsubstrate
tion necessary.
Plaintiff believes Defendants want to argue that “adjacent” requires the first dielectric layer to be provided directly on the substrate. Defendants respond they have no intention of arguing non-infringement based on their original proposal for “adjacent,” which
was “without intervening layers.” At the hearing, Defendants agreed that “adjacent” does
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not mean “without intervening layers.” H’rg Tr. [Dkt. # 178] at 114:17–19. Based on that
agreement, this term should be given its plain and ordinary meaning.
I.
“row of solder balls” (’167 Patent, cl.1, 6, 11, 12; ’554 Patent, cl.1)
Plaintiff’s
Proposed Construction
Defendants’
Proposed Construction
three or more solder balls arranged next to three or more solder balls arranged next to
each other in a line
each other in a horizontal or vertical line
The ’167 and ’554 Patents6 relate to methods of fabricating semiconductors using
an array of solder balls to reduce electrical noise between adjacent signals in the device.
The patents describe the then-conventional use of enhanced plastic ball grid arrays (EPBGAs), which are wire bond packages that use 4-layer organic substrate for better electrical
and thermal performance. ’167 Patent at 1:37–41. Four-layer EPBGAs cost 20%–30%
more than 2-layer PBGAs, prompting the need for fabricating a semiconductor package to
reduce electrical noise in a 2-layer PBGA without adding the expensive additional layers.
Id. at 1:53–56.
To address that need, the ’167 and ’554 Patents teach patterning a ground isolation
trace to isolate signal traces, which provides noise shielding. Id. at 1:60–2:10. One embodiment of the invention uses a row of connected solder balls. More specifically, Claim 1 of
the ’167 Patent recites
6
The application that became the ’554 Patent is a division of the application that became
the ’167 Patent. ’554 Patent at (62); id. at 1:4–5. Accordingly, the ’554 and ’167 Patents
share the same specification.
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(a) providing a 2-layer semiconductor substrate, the 2-layer
substrate including a top layer and a bottom layer wherein
the bottom layer includes an array of solder balls;
(b) patterning signal traces on the top layer;
(c) identifying groups of signal traces to isolate;
(d) patterning a grounded isolation trace adjacent to one of
the groups of traces to isolate the signal traces and thereby
provide noise shielding;
(e) identifying a row of solder balls to be grounded, and
(f)
connecting the row of solder balls together and to ground
to create a bottom-layer isolating ground trace.
Id. at 3:53–64. Similarly, Claim 1 of the ’554 Patent recites
a plurality of signal traces on a first layer;
at least one isolating ground trace on the first layer between
two signal traces to provide noise shielding; and
an array of solder balls on a second layer such that at least one
row of solder balls is connected together and to [g]round
to create a second-layer isolating ground trace.
’554 Patent at 4:17–36.
The parties agree that “row of solder balls” should be construed as “three or more
solder balls arranged next to each other in a line.” Defendants, however, argue the construction should reference “a horizontal or vertical” line. Defendants contend this additional language is supported by FIG. 4 of the patents, by the prior art referenced during
prosecution, and by the use of “row” in the art. Defs.’ Br. [Dkt. # 134] at 28–29. Plaintiff
notes the specification provides no mention of a specific horizontal or vertical orientation,
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or any reason why a diagonal row should be excluded. Pl.’s Br. [Dkt. # 123] at 25. Plaintiff
also contends the extrinsic evidence describes diagonal rows in the same way it describes
horizontal or vertical rows. Id.
Common meanings of “row” support both constructions. According to one online
dictionary, row could mean “a number of people or things arranged so as to form a line,
esp[ecially] a straight line,”7 which would support Plaintiff’s broader construction. But the
same dictionary has an alternative definition as “any of a series of such horizontal lines in
parallel,”8 which somewhat supports Defendants’ narrower construction.
The Court adopts its preliminary construction, which is Plaintiff’s proposed construction of “three or more solder balls arranged next to each other in a line.” By limiting
the row to a particular orientation, infringement potentially turns on the orientation of the
accused device. For example, a horizontal row of solder balls in a first orientation may
become a diagonal or vertical row of solder balls by simply rotating the arrangement 45
degrees or 90 degrees, respectively. The specification, however, does not suggest such an
orientation-dependent construction. Nor does the specification disclose a technical reason
for why the orientation of the linear arrangement of solder balls matters. At most, the specification describes the isolating ground trace as substantially parallel to one of the groups
of signals to be isolated. Id. at 2:54–57. That, however, does not warrant the narrower construction advanced by Defendants.
7
http://www.yourdictionary.com/row?direct_search_result=yes
8
Id.
19 / 23
J.
“trace” (’167 Patent, cl.1, 12; ’554 Patent, cl.1–6)
Plaintiff’s
Proposed Construction
Defendants’
Proposed Construction
conductive path on an insulating substrate
conductive line on an insulating substrate
The parties dispute whether a “trace” is a “path” or a “line.” Plaintiff contends “line”
might cause the jury to think a “trace” must be straight, and that “path” is consistent with
contemporaneous technical and non-technical dictionaries. Pl.’s Br. [Dkt. # 123] at 26–27.
Defendants counter that the specification equates “conductive lines” with “traces.” Defs.’
Br. [Dkt. # 134] at 29–30. Defendants are amenable to clarifying that the “line” in its proposed construction need not be straight. Id. at 29 n.5. During the hearing, Plaintiff agreed
that clarifying the line need not be straight addressed its major issue with Defendants’ construction, although Plaintiff believes “path” would be less confusing for the jury. H’rg Tr.
[Dkt. # 178] at 125:1–2.
The Court sees no meaningful distinction between “path” and “line” for this term.
But in light of the patent’s use of “line” in the specification, and given Plaintiff’s agreement
that the major claim construction dispute is resolved by recognizing the “line” need not be
straight, the Court adopts Defendants’ proposed construction of “conductive line on an insulating substrate” and notes the “conductive line” need not be straight.
20 / 23
K.
The “Purpose” Limitations
Term
Plaintiff’s
ProposedConstruction
Defendants’
Proposed Construction
to isolate the signal traces
and thereby provide noise
shielding (’167 Patent,
cl.1, 11)
for the purpose of providing a
plain meaning, no intent
shield between the signal traces
required
in order to reduce electrical noise
to isolate the signal traces
and thereby provide noise
shielding (’167 Patent,
cl.6, 12)
for the purpose of providing a
plain meaning, no intent
shield between two groups of
required
signals
to create a bottom-layer
isolating ground trace
(’167 Patent, cl.1, 6, 11,
12)
plain meaning, no intent for the purpose of creating a botrequired
tom-layer isolating ground trace
to create a second layer
isolating ground trace
(’554 Patent, cl.1)
plain meaning, no intent for the purpose of creating a secrequired
ond-layer isolating ground trace
to provide noise shielding
(’554 Patent, cl.1)
plain meaning, no intent in order to provide a shield that
required
reduces electrical noise
The parties dispute whether these phrases require (1) purpose on the part of an accused infringer, or (2) the recited result or effect. Plaintiff argues the “to” clauses describe
the result or effect of arranging the components of the claims in the manner recited. Pl.’s
Br. [Dkt. # 123] at 28–29. Defendants stress their position—that an accused infringer must
have some intent associated with the recited step—has already been adopted in other litigation concerning these patents, and that including the purpose is necessary. Defs.’ Br.
[Dkt. # 134] at 23.
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Plaintiff primarily relies on Texas Instruments v. I.T.C., 988 F.2d 1165 (Fed. Cir.
1993), in which the Federal Circuit considered similarly structured claim language. One
claim recited, “whereby the fluid will not directly engage the device and electrical connection means at high velocity, and the conductors will be secured against appreciable displacement by the fluid.” Texas Instruments, 988 F.2d at 1169. Two of the asserted claims
recited injecting a fluid insulating material “to preclude direct high velocity engagement
between the fluid and the device and the electrical connections thereto.” Id. at 1169–70.
The court concluded these phrases “merely describe the result of arranging the components
of the claims in the manner recited in the claims.” Id. at 1172; see also id. (“A ‘whereby’
clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim.”).
Defendants rely on two different Federal Circuit opinions to support their position.
In Jansen v. Rexall Sundown, Inc., the appellate court construed the preamble as limiting
because it gave life and meaning to the claim. 342 F.3d 1329, 1333 (Fed. Cir. 2003). As a
result, the court concluded the preamble was not merely a statement of effect, but rather a
statement of intentional purpose for which the method must be performed. Id. In Paragon
Solutions, LLC v. Timex Corp., the appellate court construed “displaying real time data” as
“displaying data without intentional delay.” 566 F.3d 1075, 1092–93 (Fed. Cir. 2009).
Having considered the parties’ briefing and argument on these phrases, the Court
finds persuasive Judge Sleet’s reasoning in Invensas Corp. v. Renesas Elecs. Corp., No.
11-448-GMS, 2013 WL 3753621 at *2, nn.10–12 (D. Del. July 15, 2013). Accordingly, for
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the reasons set forth in Judge Sleet’s opinion, the Court adopts Defendants’ proposed con.structions for these five terms.
III.
ORDER
The Court ORDERS each party not to refer, directly or indirectly, to its own or any
other party’s claim construction positions in the presence of the jury. Likewise, the Court
ORDERS the parties to refrain from mentioning any part of this opinion, other than the
actual positions adopted by the Court, in the presence of the jury. Any reference to claim
construction proceedings is limited to informing the jury of the positions adopted by the
Court.
SIGNED this 3rd day of January, 2012.
SIGNED this 26th day of October, 2018.
____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE
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