Samsung Electronics Co., Ltd. et al v. NVIDIA Corporation et al

Filing 221

MEMORANDUM OPINION. Signed by District Judge Robert E. Payne on 07/30/2015. (tjoh, )

E

P

JUL 3 0 2015

IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF VIRGINIA

CLP"K

Richmond Division

SAMSUNG ELECTRONICS CO.,

LTD,

et al.

Plaintiffs,
Civil Case No.

V.

3:14-cv-757

NVIDIA CORPORATION,

et al,
Defendants

MEMORANDUM OPINION

This matter i s before the Court for claim construction of U.S.

Patent

Nos.

Patent"),
Patent"),

5, 860, 158

6,287,902

{the
{the

8,252,675

"'158
"'902

Patent"),
Patent"),

{the "'675 Patent"),

6,262, 938

(the
(the

6,819,602

and 6,804,724

'"938
"'602

(the "'724

Patent'").
BACKGROUND

The

Plaintiffs,

Electronics America

Samsung

Electronics

Co.,

LTD

and

Samsung

("Samsung") assert claims for infringement of

the '158 Patent, the '938 Patent, the '902 Patent, the '602 Patent,
the

' 675

Patent,

"Patents-in-Suit")

and

the

against

("NVIDIA"), Old Micro Inc.

the

'724

Patent

Defendants,

(collectively

NVIDIA

the

Corporation

("Old Micro"), and Velocity Holdings LLC

R

(''Velocity")

(collectively,

''Defendants") .

The

Patents-in-Suit

relate to a method of building computer chips, systems which control

a computer's operations, and a display adaptor linking a computer
with an analog display.

The parties have offered thirteen claims

and one preamble for construction.
DISCUSSION

I.

Legal Standard

The purpose of claim construction is to "determin[e] the meaning

and scope of the patent claims asserted to be infringed."

Markman

V. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995)

banc), aff'd, 517 U.S. 370 (1996).

a question of law.

(en

The construction of a claim is

Id.

A term should be construed by the Court whenever there is an

actual, legitimate dispute as to the proper scope of the claims.

02

Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.Sd 1351, 1360

(Fed. Cir. 2008).

However,

"a district court is not obligated to

construe terms with ordinary meanings, lest trial courts be inundated
with requests to parse the meaning of every word in the asserted
claims."

Id.

Furthermore,

some

claim terms

will

be

so

simple

that

"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

Phillips V. AWH Corp.,

meaning

of

commonly

415 F.3d 1303, 1314

understood

words."

(Fed. Cir. 2005).

And,

''a sound claim construction need not always purge every shred of

ambiguity.

The

resolution

of

some

line-drawing

problems

—

especially easy ones . . . — is properly left to the trier of fact."
Acumed LLC v. Stryker Corp., 483 F.3d 800, 806 {Fed. Cir. 2007) .

As

recognized in 02 Micro, ''district courts are not (and should not be)
required to construe every limitation present in a patent's asserted
claims . . . .

Claim construction ^is not an obligatory exercise

in redundancy.'"
Ethicon,

Inc.,

521 F.3d at 1362 (quoting U.S. Surgical Corp. v.

103 F.3d 1554, 1568

''Claim terms

are

(Fed. Cir. 1997)).

generally given their plain and ordinary

meanings to one of skill in the art when read in the context of the
specification and prosecution history."

Hill-Rom Servs,

Stryker Corp, 755 F.3d 1367, 1371 (Fed. Cir. 2014) .

Inc. v.

"There are only

two exceptions to this general rule: 1) when a patentee sets out a
definition and acts as his own lexicographer, or 2) when the patentee

disavows the full scope of the claim term either in the specification
or during prosecution. "

Thorner v. Sony Computer Entm't Am LLC, 669

F.3d 1362, 1365 (Fed. Cir. 2012).
claim,

record,

the

court

i.e.,

should look first

the

patent

itself,

"[I]n interpreting an asserted
to

the

intrinsic

including

the

evidence of

claims,

the

specification, and, if in evidence, the prosecution history... Such

intrinsic evidence is the most significant source of the legally

operative meaning of disputed claim language."

Vitronics Corp. v.

Conceptronic, Inc., 90 F.3d 1576, 1582 {Fed. Cir. 1996).

Of these

sources, the words of the claim should be the Court's controlling
focus.

See Phillips, 415 F. 3d at 1314; see also Digital Biometrics,

Inc.

Identix,

v.

Inc.,

149 F.3d 1335,

1344

(Fed.

Cir.

1998).

^'Where the intrinsic record is ambiguous, and when necessary,

[the Court may]

rely on extrinsic evidence, which consists of all

evidence external to the patent and prosecution history, including

expert and inventor testimony, dictionaries, and learned treatises."
Power Integrations, Inc. v. Fairchild Semiconductor, Intern., Inc.,
711 F.3d 1348, 1360 (Fed. Cir. 2013).

Extrinsic evidence, however,

may not be used to contract or expand the claim language or the
meanings established in the specification.

1318-19;

Vitronics, 90 F.3d at 1584.

Phillips,

415 F.3d at

As explained in Nystrom v.

Trex Co.,

[I]n the absence of something in the written description

and/or prosecution history to provide explicit or implicit
notice to the public — i.e., those of ordinary skill in
the art — that the inventor intended a disputed term to

cover more than the ordinary and customary meaning
revealed by the context of the intrinsic record, i t is
improper to read the term to encompass a broader definition
simply because it may be found in a dictionary, treatise,
or other e x t r i n s i c

424 F.3d 1136,

1145

source.

(Fed.

Cir.

2005).

II.

Claim Construction

The terms tendered for construction are:

(1)

^'Depositing a second metal gate electrode layer onto inner
sidewalls of the spacers and onto an upper surface of the

patterned first metal gate electrode layer," which appears
in the

^675 patent;

(2)

''Depositing a third metal gate electrode layer onto the
second metal gate electrode layer," which appears in the
^675 patent;

(3)

"A gate

insulating layer," which appears

in

the

^675

patent;

(4)

"Insulating spacer along a sidewall of the [second]
patterned conductive layer," which appears in the ^902
patent;

(5)

"An insulating layer," which appears in the ^902 patent;

(6)

"Forming a trench in said substrate, and wherein said field
isolation layer fills said trench," which appears in the
^902 patent;

(7)

"Request ID [value]," which appears in the

(8)

"Controlling propagation delay time, " which appears in the

^158 patent;

^602 patent;

(9)

"Reference voltage," which appears in the

^602 patent;

(10)

"Determined/Determining,"

in

which

appears

the

^938

patent;

(11)

"Shift register for delaying," which appears in the ^938
patent;

(12)

"Sending parallel digital video data," which appears in
the ^724 patent;

(13)

"Means for generating a cable sensing signal to be sent
to said first external video port over the digital cable,
thereby informing the video controller of the digital
cable connection state of said first external port," which
appears in the ^724 patent.

Additionally,

the parties disagree as to whether the preamble of

Claim 19 of the
a)

^938 Patent is limiting.

^675 Patent

Samsung asserts claims 12, 13, and 14 against Defendants in its
Second Amended Complaint.
1.

Docket No. 81.

^^Depositing a second metal gate electrode layer onto
inner sidewalls of the spacers and onto an upper
surface of the patterned first metal gate electrode
layer"

The

Defendants'

proposed

construction

is

''applying,

using

conformal (i.e. U-shaped) deposition, one metal gate electrode layer
to the inner sidewalls of the spacers and to the upper surface of

the patterned first metal gate electrode layer."

Samsung's proposed

construction is ''creating a structure comprising one or more metal
sublayers each formed by a deposition process onto inner sidewalls
of the spacers and onto an upper surface of the patterned first metal
gate electrode layer."

The parties' dispute focuses on the whether

the second metal gate electrode layer can have more than one layer
and whether i t must be formed using conformal deposition.
a)

Words of the Claim

The term "depositing a second metal gate electrode layer onto
inner sidewalls of the spacers and onto an upper surface of the
patterned first metal gate electrode layer" appears in claim 6 in

the ^675 Patent.

The language of Claim 6 of the '675 patent describes

the following claim:

A method of forming
device, comprising:

an

integrated

circuit

depositing a second metal gate electrode layer
onto inner sidewalls of the spacers and onto an
upper surface of the patterned first metal date
electrode layer
'675 Patent at 11:39-40,

b)
The

58-60.

Specification and Prosecution History

'675 Patent specification and figures consistently refer

to and show the ''second metal gate electrode layer" as a single layer.

See,

e.g.

'675 Patent at Fig.

14,

5:28,

5:37 ^.

However,

the

specification also states that the second metal gate electrode layer
"may comprise a titanium nitride layer that is formed by a chemical
vapor deposition (CVD) or an atomic layer deposition (ALD) " and that

it "may include titanium nitride. "

Id. at 5:5-8, 2:2-3.

The second

metal gate electrode layer is also described as "'U' shaped" in the
specification.

Id.

at 5:42-44.

Defendants argue that the prosecution history of the '675 patent
support a finding that Samsung has disclaimed the use of multiple
layers for the second metal gate electrode layer.

the patent examiner's rejection,

the

In a response to

'675 applicant attempted to

distinguish his invention from the prior art by stating that the prior
art lacked a "planar metal buffer gate electrode" and did not disclose

^ The second metal gate electrode layer is referred to as the "first
metal layer" in the

'67 5 specification.
7

''patterning of a first metal gate electrode layer in advance of
forming electrically insulating spacers and in advance of removing
a dummy gate electrode layer."

Docket No. 183-1 at 8.

prior art ''merely illustrate [d]

Rather, the

conformal deposition of multiple

metal layers in sequence into pre-formed recesses in order to define

composite metal gate electrodes."
to state that the
to

fabricate

Id.

The applicant then went on

prior art was "prone to void formation when used

relatively

narrow

gate

electrodes

associated with

highly integrated transistors" and that the "void formation may
result from a premature closure of the recess during each conformal
metal deposition step."
c)

Id. at 8-9.

Extrinsic Evidence

The parties do not cite to any extrinsic evidence.
d)

It

Correct Construction

is unnecessary to resolve Defendants'

argument that the

patent applicant disclaimed the use of multiple layers during the
course of patent prosecution.

The claim language plainly states

that the second metal gate electrode layer must be deposited "onto
an upper surface" of the first metal gate electrode layer.
Patent at 11: 58-60.
layer's surface.

'675

Only one layer can be deposited onto the lower

Thus,

in order to comply with the claim's plain

language, the second metal gate electrode layer can only consist of
one layer.
8

Further, the Defendants have failed to support their argument

that the deposition of the second metal gate electrode layer must
be done conformally.
evidence,

That language is not found in the intrinsic

and the Defendants have not adequately supported their

argument that the claim's ''U-shaped" language means ''conformal."
Thus, the proper construction of the term ''second metal gate
electrode

layer"

is

its

plain and ordinary meaning.

The claim

language will be used.

2.

^^Depositing a third metal gate electrode layer onto the
second metal gate electrode layer"

The Defendants'

proposed construction is "applying,

without

using conformal deposition, a metal gate electrode layer to the one

conformal

metal

gate

electrode

layer."

Samsung's

proposed

construction is "creating a structure comprising one or more metal
sublayers each formed by a deposition process onto the second metal

gate electrode layer."

The parties' dispute focuses on the whether

the third metal gate electrode layer can have more than one layer
and whether the manner in which i t is formed must be non-conformal.
a)

Words of the Claim

Claim 6 contains the language to be constructed.

The language

of Claim 6 of the ^675 patent contains the following language:
A method of forming
device, comprising:

an

integrated

circuit

Depositing a third metal gate electrode layer
onto the second metal gate electrode layer to
thereby fill a space between the inner sidewalls
of the spacers, said second and third metal gate
electrode
layers
comprising
different
materials.

^675

Patent at 11:39-40;

b)
The

^675

11:61-12:3.

Specification and Prosecution History

Patent

specification

and

the

figures

therein

consistently refer to and show the ^'third metal gate electrode layer"^
as a

single layer.

See,

e.g.

^675 Patent at Fig.

17,

6:4,

6:12.

However, the ^675 Patent specification states that the third metal
gate

electrode

layer

^'may

comprise

at

least

one

of

aluminum,

tungsten, titanium, and tantalum that is formed by a method such as
PVD or CVD."

'*675 Patent at 5:66-6:1.

Further i t states that the

third metal gate electrode layer ^'may comprise at

least

one of

aluminum, tungsten, and titanium that are formed by PVD or CVD."

at 9:19-24.

The CVD deposition process is expressly contemplated

for both the second and third metal gate electrode layers.
9:19-24,

Id.

Id. at

5:5-8.

The Defendants point again to the prosecution history and argue
that

the

deposition must

be

'"non-conformal"

because

the

patent

applicant made it clear that he was not using multiple conformal
layers which were prone to ''void formation."

^ The ''third metal gate electrode layer" is called the "second metal
layer" in the specification.

Docket No.
10

181 at 9.

c)

Extrinsic Evidence

At oral argument, Samsung cited to the Thin Film Dictionary to
show that

^'conformal" means

a

deposition wherein the

^'thickness

remains the same regardless of the underlying geometrical features."
d)

Unlike

the

Correct Construction

language

requiring

that

the

second metal

gate

electrode layer be ^'deposited onto the surface" of the underlying

layer, the ^675 Patent states only that the third metal gate electrode
layer

be

''deposit [ed] ... onto"

less-restrictive language,

the

underlying

layer.

in combination with the

This

''comprising"

language of the specification^, supports the interpretation that the
third metal gate electrode layer can consist of multiple sub-layers.
Additionally,

the

Defendants have failed to prove that the

proper construction requires that the third metal gate electrode
layer be applied "without using conformal deposition."

The claim

language does not support such a construction, as it does not limit
the manner in which the third metal gate electrode layer can be
applied.

Finally,

the

supposed disclaimer language discussed in the

"second metal gate electrode" analysis does not support a finding

^ It is well-established that the term "comprising" means "including,
but not limited to."
See CIAS v. Alliance Gaming Corp., 504 F.3d
1356, 1360 (Fed. Cir. 2007) ("•*comprising' is well understood to mean
'including but not limited to.'").
11

of a disclaimer in the '975 patent.

The Court requires a "'clear and

unambiguous disavowal of claim scope" in order to impart a limitation
from the prosecution history into the language of the claim as a
disclaimer.
F.3d 823,

Storage Technology Corp. v. Cisco Systems,

833

(Fed. Cir. 2003).

Inc.,

329

The correspondence provided here

merely indicates that the patent applicant was distinguishing the
prior art based on

its

absence of a

"'planar metal buffer gate

electrode" and "'patterning of a first metal gate electrode layer in
advance of forming electrically insulating spacers and in advance
of

removing

a

dummy

gate

electrode."

Docket

No.

182-1

at

8.

Although the applicant did note that the prior art's technique was

"prone to void formation", such language does not constitute the type
of "clear and unambiguous" language that the law requires for a
disclaimer.

Thus, the proper construction is "depositing a third metal gate
electrode layer comprised of one or more metal sublayers onto the
second metal gate electrode layer."

2.

gate insulating layer"

The Defendants propose that this term should be given its plain
and

ordinary

meaning.

Samsung's

proposed

construction

structure comprising one or more dielectric sublayers."

is

"a

Thus, the

parties' dispute focuses on the whether the insulating layer can have
more than one layer.
12

a)

Words of the Claim

The term ^'gate insulating layer" appears in several claims in
the ^675 Patent.

First, the language of Claim 1 of the ^675 patent

describes the following claim:
A
method
transistor,

forming

a

of
forming
comprising:

gate

an

insulating

insulated-gate

layer

on

a

substrate...

^675

Patent a t

10:59-63.

Next, the language of Claim 3 of the ^675 patent describes the

following claim, which is dependent on Claim 1:
The
method
of
Claim
1,
wherein
the
insulating-gate
transistor
is
a
PMOS
transistor; and wherein the gate insulating

layer comprises hafnium oxide.
^675

Patent a t

11:31-33.

Next, Claim 6 of the ^675 patent describes the following claim:
A method of forming
device, comprising:

forming

a

gate

an

integrated

insulating

layer

circuit

on

a

substrate...
^675

Patent

at

11:39-41.

Finally, Claim 15 of the ^675 patent describes the following
claim that is also dependent on Claim 6:
13

The method of claim 6,
wherein the gate
insulating
layer
comprises
a
dielectric
material selected from a group consisting of
hafnium oxide and tantalum oxide.
^675

Patent a t

12:69-61.

a)

The

^675

insulating

Specification and Prosecution History

Patent's

layer...may

specification

comprise

at

states

least

one

that

of

the

^^gate

hafnium oxide,

tantalum oxide, silicon oxide and other high-k dielectric layer."
^675 Patent at 6:13-5.

However, the specification and figures do

consistently refer to and show the ''gate insulating layer" as a single
layer.

See, e.g.
b)

^675 Patent at Fig. 2-17 & 19-37,

3:43,

4:51.

Extrinsic Evidence

The parties do not present any extrinsic evidence.
c)

Both

the

Correct Construction

claim

language

and

the

specification

use

the

''comprising" language and thus support an interpretation that allows

the gate insulating layer to be made up of multiple materials.
^675 Patent at

6:13-5,

11:31-33,

and 12:69-61.

See

While Defendants

argue that this suggests that these multiple materials could be laid

in one single layer in an alloy form, it is also possible that they
could be laid sequentially, thus forming multiple layers in the gate

insulating layer.

Further, although Claim 6 does state that the gate

insulating layer is to be formed "on a substrate", such language does
14

not require that each part of the gate insulating layer must touch
the substrate - a top layer can be ''on" a bottom layer without coming
into

direct

contact

with

the

bottom

layer.

Thus,

the

correct

construction of this term is ''a gate comprising one or more insulating
sublayers."
b)

'902 Patent

Samsung alleges infringement of claims 1, 3, 4, 5, 6, 7, 9, 10,
15, and 16 in its Second Amended Complaint.
1.

Docket No.

81.

'^Insulating spacer along a sidewall of the
patterned conductive layer"

[second]

The Defendants' proposed construction is ''an insulting spacer,

along a sidewall of the

[second] patterned conductive layer, that

prevents etch damage to the field isolation layer if the contact hole

is misaligned."

Samsung's proposed construction is "an insulating

sidewall

adjacent

layer."

spacer

to

the

[second]

patterned

conductive

The parties' dispute focuses on the whether the insulating

spacer must prevent etch damage and whether the phrase "spacer along

a sidewall" should be rewritten.

that

the

claim

language

At oral argument, Samsung agreed

"spacer

along

a

sidewall"

adequately

described the patent and agreed to use the claim language instead
of

the

"spacer

adjacent"

construction briefs.

language

proposed

Docket No. 214 at 6:6-7:21.

in

their

claim

Thus, the only

dispute to evaluate at this point is whether the sidewall spacer must
prevent etch damage.
15

a)

Words of the Claim

The term ^'insulating spacer along a sidewall of the

[second

patterned conductive layer" appears in several claims in the ^902
Patent.

First,

The term at issue is found in Claims 1, 11, 12, 15, and 18.

the language of Claim 1 of the

^902 patent describes the

following claim:
A method for forming a contact hole for a
microelectronic
structure,
said
method
comprising the steps of:

forming an etch inhibiting layer of said field
isolation layer adjacent said active region of
said substrate, the active region including the
first patterned conductive layer wherein said
etch inhibiting layer comprises a
second
patterned conductive layer and an insulating
spacer along a sidewall of the second patterned

conductive layer, wherein the second pattern
conductive layer does not extend over the active
region of the substrate, and wherein the second
patterned conductive layer is a dummy pattern
electrically isolated from the substrate and
circuits

thereon.

'902 Patent at 6:48-50,

57-67.

Claim 11, Claim 12, Claim 15, and Claim 18 of the '902 patent
contain the following language:
A
method
for
forming
a
microelectronic
structure, said method comprising the steps of:

forming a second patterned layer on said field
isolation layer adjacent said active region of
16

said substrate, the active region including the

first patterned layer wherein said second
patterned
layer
comprises
a
patterned
conductive layer and an insulating spacer along
a sidewall of the patterned conductive layer,
wherein the patterned conductive layer does not
extend over the active region of the substrate,
and wherein the patterned conductive layer is
a dummy pattern electrically isolated from the
substrate and circuits thereon."^
^902 Patent at 7:40-41, 49-58; 8:1-2, 9-18; 8:33-34, 42-51; 8:66-67,
9:7-16.

b)

Specification and Prosecution History

The specification of the ^902 Patent describes the function of
the claim.

Specifically, i t states that ''if the contact hole extends

beyond the active region of the substrate encroaching into the field

region a second patterned conductive layer...reduces the likelihood

that

a

well

will

be

formed

in

the

field

isolation

layer... In

particular, the second patterned conductive lawyer...can act as an
etch stop if needed when etching the insulating layer."
4:43-49.

Id.

at

Additionally, the specification states that ''the second

patterned conductive layer and associated spacers protect the field
isolation

layer

from

the

etch

used

to

form

the

contact

hole.

Accordingly, even with a misalignment of the contact hole mask over

the field region and over etching to insure exposure of the active
region, the field isolation layer is not damaged."

Id. at 6:8-13.

^ These claims are identical to Claim 1 except for that the word
"second" has been removed from "insulating spacer along a sidewall
of the second patterned conductive layer.
17

The Defendants argue that Samsung's correspondence with the

patent examiner during prosecution supports the proposed functional
limitation.

During prosecution of the

^902

Patent,

the patent

examiner rejected the patent applicant's application as obvious in

light of the prior art.

Docket No. 183-2 at 6.

The prior art -

referred to as the Michihiro patent- had disclosed the use of dummy

gates to prevent damage to the field isolation layer, but had not
incorporated the use of sidewall spacers to assist in that process.
Id. at 6-7.

The patent examiner had thought that it was obvious to

combine the dummy gates of the Michihiro patent with sidewall spacers
found in the Chen patent, and thus denied Samsung's application.
The patent applicant responded to this denial and argued that
its claims were patentable over the prior art.

Docket No.

183-3.

The patent applicant argued that it had no motivation to combine the
Michihiro dummy gates with the Chen sidewall spacers.

Id.

at 18

('MT]here is no clear and particular evidence of a motivation for
modifying

Michihiro

in

view

of

Chen.")

Attempting

to

further

distinguish its application from the Michihiro patent, the patent
applicant stated that ^'there is simply no mention in Michihiro that
it is desirable to prevent damage to the field oxide layer...There

is nothing in Michihiro which suggests that there is need to include
spacers that would prevent damage to the field oxide layer in the
event the contact hole is misaligned."
18

Id. a 19.

The

patent

examiner

applicant's claims.

responded

and

allowed

the

patent

He stated in his "'reasons for allowance" that

'"the prior art of record fails to disclose all the process limitations
recited in the base claims,

including a combination of a step of

forming a dummy patterns as an etch inhibiting layer on a field
isolation layer and a step of forming along the sidewalls of a dummy

patterns the spacers that will prevent damage to the field oxide layer
in the event the contact hole is misaligned."
5.

Docket No. 183-4 at

According to Defendants, this exchange supports a finding of a

disclaimer of sidewall spacers which do not prevent etch damage by
Samsung.
c)

Extrinsic Evidence

The parties present no extrinsic evidence.
d)

Correct Construction

The Court requires a "clear and unambiguous disavowal of claim

scope" in order to impart a limitation from the prosecution history
into the language of the claim as a disclaimer.
Corp. V.

Cisco Systems,

Inc.,

329 F.3d 823,

833

Storage Technology
(Fed. Cir. 2003).

The Defendants have failed to demonstrate that the exchange between
the ^902 patent applicant and the patent examiner constituted such

a ''clear and unambiguous disavowal" of sidewall spacers which did

not prevent damage to the field isolation layer.

There is nothing

about the above exchange that supports a finding that the patent
19

applicant was voluntarily limiting the scope of his patent.

Rather,

he was attempting to illustrate to the patent examiner that his
invention was not obvious in light of the Michihiro patent because

the Michihiro patent did not contain any sidewall spacers.
the

correct

construction

is

to

retain

the

claim

Thus,

language

of

^'insulating spacer along a sidewall."
2.

"An insulating layer"

The Defendants propose that the term be given its plain and
ordinary meaning.

Samsung's proposed construction is ""a structure

comprising one or more electrically insulating layers."

Thus, the

parties' dispute focuses on the whether the insulating layer can have
more than one layer.
a)

Words of the Claim

The term ''an insulating layer" appears in several claims in the

^902 Patent.

and 18.

The term at issue is found in Claims 1, 2, 11, 12, 15,

First, the language of Claim 1 of the ^902 patent describes

the following claim:
A method for forming a contact hole for a
microelectronic
structure,
said
method
comprising the steps of:

forming an insulating layer on said substrate,
said
field
isolation
layer,
said
first
patterned conductive layer,
and said etch
inhibiting layer; and

20

forming a contact hole in said insulating layer
exposing a portion of said active region between
said etch inhibiting layer and said first
patterned conductive layer
^902 Patent at 6:48-50,

7:1-6.

Next, the language of Claim 2, which is dependent on Claim 1
of the

'902

Patent

states:

A method according to claim 1 wherein
insulting layer comprises nitride.
Id.

at

said

7:7-8.

Additionally, the language of Claim 11, Claim 12, Claim 15, and
Claim 18

state:

A
method
for
forming
a
microelectronic
structure, said method comprising the steps of:

Forming
an
insulating
layer
cover
said
substrate, said field isolation layer, and said
first and second patterned layers; and
Forming a contact hole in said insulating layer
wherein said contact hole exposes a portion of
said action region between said first and second
patterned layers.

^ a t 7:40-41, 58-64; 8:1-2, 19-25; 8:33-34, 52-57; 8:66-67, 10:3-9.
b)

Specification and Prosecu-tion History

The '902 Patent's specification and claims serially describe

and depict the insulating layer as just that - a singular layer.
'902

Patent,

Fig.

4-8,

4:32,

4:37,
21

5:60,

5:63

See

(using the term

"'insulating

layer") .

However,

prior

art

cited

by

the

patent

applicant during prosecution describes an insulating layer that
includes multiple sublayers.

See U.S. Patent 5,659,202 at 4:10-14

{'"An interlayer insulation film. . .may be, for example formed of a

single-layer
Patent

film or

5,293,503

film...consisting

lamination of

at

of

3:15-19

a

first

[multiple materials]);

("'... in

interlayer

silicon oxide

U.S.

insulating

film...and

a

second

silicon oxide film...").
c)

Extrinsic Evidence

The parties cite to no extrinsic evidence.
d)

Correct Construction

As Samsung pointed out. Claim 1 describes the method claimed,

which includes the use of "'an insulating layer."

Dependent Claim

2, which describes and must be narrower than Claim 1, states that

the insulating layer comprises nitride.

It is well-established, as

discussed above, that the term "comprising" is open-ended and permits

for additional elements.

Claim 2, therefore, allows for multiple

materials to be used in forming the insulating layer.

While these

materials could be combined to form an alloy, they also could be laid

down separately and thus form more than one insulating layer.

Thus,

multiple layers are cognizable within the language of the patent,

and the term is correctly defined as a "structure comprising one or
more electrical insulating layers."
22

3.

^^Forming a trench in said substrate, and wherein said
field isolation layer fills said trench"

The Defendants propose that the term be given its plain and

ordinary meaning.

Samsung's proposed construction is ^'etching a

recess into said substrate and subsequently filling said recess with

a field isolation layer."

Samsung proposes that a construction in

order to make i t clear that i t does not claim the LOCOS method of

forming a field isolation layer.
agreed that it was ^'clear that

At oral argument,

[Samsung did not]

method" and instead claimed ''the trench method."

54:3-55:21.

Thus,

Samsung

is

no

longer

the parties

claim the LOCOS
Docket No.

seeking

its

214 at

proposed

construction and the parties agreed that the claim would be left in

its original format and would be given its plain meaning.
c)

U58 Patent

Samsung alleges infringement of claims 1, 15, 17, 18, 21, and
22 in its Second Amended Complaint.
1.

Docket No.

81.

^^Request ID [value] "

The Defendants'

proposed construction is ''a numerical value

assigned by the cache controller."

Samsung's proposed construction

is ''an identifier assigned to each cache request that distinguishes
it

from other cache

requests."

The parties dispute whether the

request ID values must be assigned by the cache controller and whether

the request ID value has to be assigned to each and every request.
23

a)

Words of the Claim

The term ^^request ID value/ request ID" appears in several
claims in the

First,

^158 Patent and is included in claims 1, 15, and 18.

the language of Claim 1 of the

^158 patent describes the

following claim:
A method for controlling a cache, the cache
being
coupled
to
a
device,
the
method
comprising:

receiving by a cache controller a first cache
request from the device;
providing by the cache controller a first
request ID value corresponding to the first
cache request to the device after receiving the
first cache request;
initiating processing of
request
after
receiving

the
the

first
first

cache
cache

request;

receiving by the cache controller a second cache
request from the device after receiving the
first cache request;
providing by the cache controller a second
request ID value corresponding to the second
cache request to the device after receiving the
second cache request...
^158

Patent a t

The

37:1-16.

language of Claim 15 of the

^158

patent

describes

following claim:

A method for controlling a cache, the cache
being coupled to at least one device, the method
comprising:
24

the

receiving by a cache controller a first cache
request from a first device of the at least one
device

[sic];

providing by the cache controller a first
request ID value corresponding to the first
cache request to the first device
receiving the first cache request;

after

initiating processing of
request
after
receiving

cache
cache

the
the

first
first

request;

receiving by the cache controller a second cache
request from a second device of the at least one
device [sic] after receiving the first cache
request;

providing by the cache controller a second
request ID value corresponding to the second
cache request to the second device after
receiving the second cache request...
Id.

at

39:56-40:3.

The language of Claim 18 of the ^158 patent describes
the following claim:
A method of controlling a cache, the
coupled to a cache controller and a

cache
cache

accessing device, the method comprising:

a first step of receiving a first cache request
from the cache accessing device by the cache
controller;

second step of providing a first request ID
the cache accessing device by the cache
controller after the first step;
a

to

a third step of storing the first request ID by
the

cache

accessing device

step;
25

after

the

second

a fourth step of receiving a second cache
request from the cache accessing device by the
cache controller after the first step;

a fifth step of providing a second request ID,
to the cache accessing device by the cache
controller after the fourth step;

a sixth step of storing the second request ID
by the cache accessing device after the fifth
step...
Id.

at

40:26-43.
y

b)

Specification and Prosecution History

The ^158 Patent's preferred embodiment describes the process
of generating a request ID as follows:

Cache control unit will grant the request by

driving a grant signal and assigning a request'
identification number to the granted request.
In the preferred embodiment, a ten bit request
ID is driven to the requester.
If the upper 4
bits of the request ID match the unit ID of the
requester,
the
request
is granted.
The
requester should latch the lower 6 bits of the
request ID since i t is the transaction ID

associated with the request.

If a request is

granted, the requester should drive address and
other control information such as data type to
[the]

Id. at 13:20-29.

cache control unit.

In an alternative embodiment, the specification

states that the request ID can be formed ^'by a device identification
code...and an address of the requested memory location."
8:38-40.

Id.

at

Because '^each unit has a distinct device ID. . . [the] cache

system can prioritize the requests based on the device ID of the unit
26

making the request."

Id. at 40-42.

Then, when the data at the

requested address becomes available,

[the] cache system responds

with

the

device

ID,

requested data."

a

transaction

[ID]...the

address,

and

the

Id. at 42-45.

Additionally,

the Summary of the Invention states that the

novelty of the patent is that ''it has been discovered that accesses
to a cache by multiple devices may be managed by a cache control unit
that includes transaction identification logic to identify cache
accesses."

Id.

at

c)

2:9-12.

Extrinsic Evidence

The parties cite no extrinsic evidence.
d)

Correct Construction

The parties agreed at oral argument that every request ID must
be a numerical value because computers communicate only in binary
terms.

Doclcet No.

215 at 140:24-25;

164:6-13.

The claim language of the ^158 Patent supports a finding that
the cache controller must assign the request ID because it states
that

the

request

Further,

the

control

unit

H58

will

IDs

are

''provid[ed]

by the

cache

Patent's specification states

grant

identification number to

the
the

request

controller."

that the

by... assigning

granted request."

^158

a

''cache

request

Patent at

13:20-22.

Although Samsung argues that other text in the specification
27

supports a finding that the cache controller does not have to perform
the assigning on its own, there is no support for that argument in
the text.

Samsung argues that the statement that the ''request ID

is driven to the requester" allows for an inference that something
other than the cache controller is doing the driving.

Samsung

has

overlooked

the

fact

that

the

sentence

However,

immediately

preceding that language states that the ''cache control unit will

grant the request by... assigning a request identification number."

Additionally, Samsung's argument that the Defendants' proposed
construction would read out a preferred embodiment is incorrect.

While the specification does state that the requesting device can
supply the cache controller with its device ID and that said device

ID can be combined with a cache controller-generated transaction ID
to form the request ID, this language still contemplates that the

cache controller will provide the final request ID to the requesting
device.

Finally, the claim language contemplates only a first and second
request

ID.

Samsung

has

provided

inadequate

support

for

the

argument that such language supports an interpretation requiring
that every request be assigned a

request

ID.

Thus,

the proper

construction of "request ID" is "numerical value assigned by the
cache

controller."

28

d)

^602 Patent

Samsung alleges infringement of claims 1,

3, 26,

21,

29 against Defendants in its Second Amended Complaint.

28, and

Docket No.

81.

1.

^^Controlling propagation delay time"

The Defendants' proposed construction is ^^selectively delaying
a signal as it passes through a circuit."

Samsung proposes that the

term be given its plain and ordinary meaning.

The parties dispute

whether all signals must be delayed.
a)

Words of the Claim

The term ''controlling propagation delay time" appears in claim

26.

The language of Claim 26 of the

^602 patent describes the

following claim:

A method of controlling propagation delay time
of a semiconductor memory, comprising:

receiving an inverse data strobe signal or a
reference voltage, respectively, depending on
a level of a control signal;

receiving a data strobe signal; and
amplifying
and
outputting
at
least
two
different differentially amplified data strobe
signals.
^602 Patent,

18:38-15.

b)

Specification and Prosecution History

Samsung argues that the '602 Patent specification contains an
29

embodiment that ''includes a compensating circuit that consists of

a dummy load that inserts a constant delay into the circuit."
No. 181 at 31 (citing '602 Patent at 3:61-64) .

Docket

This embodiment would

delay all signals rather than selectively delay them.

However, the

Defendants urge that ''every embodiment that controls delay time does

so by selectively delaying one of the signals as it passes through
a circuit."
9,

11,

Docket No. 183 at 18

(citing '602 Patent at Figs. 1,

12) .

Samsung specifically points to Figure 11 and argues that it

proposes

an embodiment

selectively delayed.

that does not

require

the

signals

to be

Rather, "a gain of a first of the at least two

differential amplifiers is substantially different from a gain of
a second of the at least two differential amplifiers so that each

of at least two differential output signals have substantially the
same delay time."

'602 Patent at 5:33-38.

The parties have agreed that the preamble to claim 26 - which

reads

"a

method

of

controlling

propagation

semiconductor memory" - is limiting.

delay

time

of

a

However, they disagree as to

whether that control must happen within the semiconductor memory,
or whether the control must only be exerted over the semiconductor

memory.

The specification contains at least one example in which

a data strobe signal is "input into a semiconductor memory device
and output from a semiconductor memory device as data."
30

Docket No.

188 at 22.

The specification states that ''a DDR synchronous DRAM

uses a data strobe signal when the DRAM receives data from a memory
controller or sends data to the memory controller," thus teaching
that at least some of the process could be performed outside the
semiconductor memory.
c)

Samsung

Id. at 1:38-45.

Extrinsic Evidence

cites

to

a

scientific

dictionary

which

defined

^'propagation delay" as ''[t]he time from when the input logic level
to a device is hanged until the resultant output change is produced

by that device."
Technology
The

Dictionary of Computer Science, Engineering, and

(2001).
Defendants

''propagation delay."

cite

to

two

Docket No.

technical

183 at

19.

definitions

The

first

of

defines

"propagation delay" as "[t]he amount of time between when a signal
is impressed on the input of a circuit and when i t is received or
detected at the output."

IEEE 100: The Authoritative Dictionary of

IEEE Standards and Terms

{Seventh ed.

2000).

The second defines

"propagation delay" as "[t]he time requires for a signal to pass
through

a

given

complete

operating

circuit..."

Dictionary of Scientific and Technical Terms
d)

McGraw

(Sixth ed.

Hill

2000).

Correct Construction

The parties agreed at oral argument that the term "controlling"
could be readily understood by a jury without construction and that
31

the proper construction of the term ^'propagation delay time" was
''time

from

input

to

output

of

a

signal."

Docket

No.

214

at

203:21-204:11.

The

Defendants

have

failed

to

prove

that

the

^602

Patent

requires that signals are selectively delayed as they pass through
the circuit.

for

delays

Additionally,

Rather,

of

all

the patent appears to contemplate and allow

signals

that

pass

through

the

circuit.

while the parties have agreed that the preamble to

claim 26 is limiting, that preamble does not establish the limitation

that the Defendants urge.

The preamble states only that the method

must control "propagation delay time of a semiconductor memory" -

there is no requirement that such control must happen within the
semiconductor memory.

Thus,

"controlling

from

the

time

the term is properly construed as

input

to

output

of

a

signal

of

a

semiconductor memory."
2.
The

^^Reference Voltage"

Defendants'

proposed

voltage level for comparison."

construction

is

"constant,

known

Samsung proposes that the term be

given its plain and ordinary meaning.

The parties dispute whether

the voltage level can ever vary and whether i t must be a known value.
a)

Words of the CladLm

The term "reference voltage" appears in several claims in the

^602 Patent.

The term "reference voltage" appears in claim 1, 3,
32

26, and 27.

The language of Claim 1 of the ^602 patent describes

the following claim:

A data strobe input buffer, comprising:
a differential amplifier circuit including at
least two switches for passing an inverse data
strobe
signal
or
a
reference
voltage,
respectively, depending on a level of a control
signal,
and a
differential
amplifier
for
receiving a data strobe signal and either the
inverse data strobe signal or the reference
voltage
and
outputting
a
differentially
amplified signal.

'602

Patent

The

at

16:7-14.

language

of

Claim

3

of

the

'602

patent

describes

the

following claim:

The data strobe input buffer of claim 1, wherein
the data strobe input buffer is operable in both
a single mode and a dual mode, wherein in said
single mode, the reference voltage is applied
to a

f i r s t of the at least two switches and in

said dual mode, the inverse data strobe signal
is provided to a second of the at least two
switches and the level of the control signal is
a second logic state.
Id.

at

16:19-26.

The language of Claim 26 of the

'602 patent describes the

following claim:

A method of controlling propagation delay time
of a semiconductor memory, comprising:
receiving an inverse data strobe signal or a
reference voltage, respectively, depending on
a level of a control signal;
33

receiving a data strobe signal; and
amplifying
and
outputting
at
least
two
different differentially amplified data strobe
signals.
Id.

at

18;38-15.

Finally, the language of Claim 27 of the ^602 patent describes
the following claim:
The method of claim 26, wherein in a single mode,
the reference voltage is received and a level
of the control signal is a first logic state and
in a dual mode, the inverse data strobe signal
is received and the level of the control signal
is a second logic state.
Id.

at

18:46-50.

b)

Specification and Prosecution History

One patent cited by the examiner during the prosecution history
of this patent, U.S.

Patent No. 6,512,704, states that a reference

voltage could have multiple values.

Specifically, it states that

''the first input of the first comparator... could be coupled with a
1.25 volt or a

1.5 volt

reference."

'*704

Patent at

2:57-62.

Another patent cited during the course of the '602 prosecution,
U.S.

Patent

6,414,517

states

that

a

"typical

input

buffer

circuit... compares an input signal...to a predetermined reference

voltage."

'517 Patent at 1:21-23.

Additionally,

Figure 2 of the

'602 Patent depicts the reference voltage as a constant, steady line.
c)

The

term

Extrinsic Evidence

"reference

voltage"
34

is

defined

in

an

electrical

engineering dictionary as a ^'voltage level whose steady value serves
as a basis for comparison or operation."
Electronics Engineering Dictionary

The Wiley Electrical and

(2004).

Both parties cite to

this definition in their claim construction briefing.
183 at 19;

Docket No.

d)

Docket No.

181 at 28.

Correct Construction

The parties have agreed that the reference voltage must remain
constant while i t is being used for comparison.
176:19-177:6.

provided

by

Additionally,

The

Wiley

Docket No. 214 at

the parties both cite the definition

Electrical

Engineering

acceptable construction of the term.

Dictionary

as

an

Thus, the Court will adopt the

construction provided by both parties and the term will be construed
as

^'a

voltage

level

whose

steady

value

serves

as

a

basis

for

comparison."
e)

^938 Patent

Samsung asserts

claims 17,

18,

19,

21,

Defendants in its Second Amended Complaint.
1.

The

claim.

and 24

Docket No.

against

81.

Preamble of Claim 19

parties

limiting.

23,

dispute

Defendants

whether

propose

that

the
the

Samsung proposes that it does not.

preamble
preamble

of

Claim

does

19

limit

is
the

A preamble limits a claim

''if it recites an essential structure, or if it is necessary to give
life, meaning, and vitality to the claim." Catalina Mktq. Int^l v.
35

Coolsavings♦com,

Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)

(citation

omitted).
a)
Claim 19

Words of the Claim

reads:

A synchronous DRAM

(SDRAM),

comprising:

a memory bank having a plurality of memory cells
arranged in rows and columns; and
a decoder for selecting one of the memory cells
based on a
wherein

column address and a

RLmin is

the

minimum

row address,

number

of

clock

cycles of the clock signal required from the
application of a row access command to the
output of the data of the selected memory cell,
wherein

Clmin

is

the

minimum

number

of

clock

cycles of the clock signal required from the
application of
arrow access command to the
output of the data of the selected memory cell,

wherein RCL is the number of clock cycles of the
clock signal from the application of a row
access command to the application of a column
access command with respect to the memory bank,
and

wherein a CAS latency, which is the number of
clock cycles of the clock signal required from
the application of the column access command to
the output of data,
is determined to be
(RLmin-RCL) when RCL is less than (RLmin - Clmin)
and is determined to be Clmin when RCL is not less
than (RLmin ~ Clmin) •
^938

Patent

at

16:9-33.

b)

Specification and Prosecution History

Several parts of the ^938 Patent discuss an SDRAM.
36

For example,

the ^938 Patent is titled ''Synchronous DRAM having posted CAS latency
and method for controlling CAS latency."

'938 Patent at 1.

The

Abstract states that the invention is intended to "perform a posted

CAS latency operation and a general CAS latency operation by the
SDRAM."

'938 Patent at Abstract.

Additionally, the Summary of the

Invention states that "[i]t is the object of the present invention

to provide a synchronous DRAM

(SDRAM)

by which it is possible to

perform a posted column access strobe (CAS) command."

Id. at 2:2-4.

The Specification states that,"[a]ccording to the

SDRAM and the

method for controlling the CAS latency of the present invention, a

posted CAS latency operation. . .can be appropriately performed by the

SDRAM."
The

as well.

I ^ at 6:1-4.
'938 Patent contains several embodiments of the invention

For example. Figure 4 illustrates "the SDRAM in a posted

CAS command mode" and is "a timing diagram of a posted CAS command
in the main terminal of the SDRAM."
c)

Id.

at 6:21-22;

9:60-61.

Extrinsic Evidence

The parties do not present any extrinsic evidence.
d)

Correct Construction

The Defendants have failed to establish that the preamble to

claim 19 is limiting.

The preamble does not add structure or steps

and the claim body describes a structurally complete invention, such
that the deletion of the preamble phrase does not affect the structure
37

or steps of the claimed invention.

Thus, the claim does not depend

on the preamble for an antecedent basis and it is not essential to
understanding the limitations or terms in the claim body.

Thus, the

preamble of claim 19 is construed as not limiting.
2.

^^Determined/De'termining"

The Defendants' proposed construction is ''comput [ed/ing] by the
SDRAM."

Samsung proposes that the term be given its plain and

ordinary meaning.

perform

the

The

action

and

parties

dispute

whether

whether

''computed"

is

the

SDRAM must

equivalent

to

''determined."

a)

Words of the Claim

The term "determined/determining" appears in several claims in

the

^938

Patent.

The

term

"determined/determining"

appears in claims 18, 21, 23, and 24.
the

language

The language of Claim 18 of

^938 patent describes the following claim:
A synchronous DRAM (SDRAM) synchronized with a
clock signal after predetermined column access
strobe (CAS) latency has lapsed from a column
access command, the SDRAM comprising:

wherein the CAS latency
number of clock cycles of
the application of a row
application of a column

is determined by the
the clock signal from
access command to the
access command with

respect to the memory bank.
^938 Patent,

The

15:64-67,

16:5-8.

language of Claim 21

of the
38

^938

patent describes

the

following claim:

A
synchronous
DRAM
(SDRAM)
operating
in
synchronization with a clock signal, the SDRAM
comprising:

wherein a CAS latency, which is the number of
clock cycles of the clock signal required from
the application of the column access command to
the output of data,
is determined by the
difference between RCL and SAE.

Id.

at 16:

The

36-37,

language

61-64.

of Claim 23

of the

^938

patent

describes

the

following claim:

A method of controlling CAS latency of an SDRAM,
synchronized with a clock signal, that includes
a memory bank having a plurality of memory cells
arranged in rows and columns and outputs the
data of a selected memory cell, the method
comprising:

Determining CAS latency, which is the number of
clock cycles of the clock signal required from
the application of the column access command to
the output of the data to be (RLmin - RCL) when
RCL is less than

(RLmin -

CLndn) ;

and

Determining the CAS latency to be CLmin when RCL
is no less than

Id.

at 17:

The

5-9,

(RLmin -

CLmin) •

24-30.

language

of Claim 24

of the

^938

patent describes

following claim:
A method of controlling CAS latency of an SDRAM
which includes a bank having a plurality of
39

the

memory cells arranged in rows and columns that
outputs the data of a selected memory cell in
synchronization with the clock signal, the
method comprising:

Determining CAS latency, which is the number of
clock cycles of the clock signal required from
the application of the column access command to
the output of the data, to be (RLmin - RCL) when
RCL i s less than SAE and the difference between

RCL and SAE is not less than a predetermined
number of reference clock cycles; and

Determining the CAS latency to be Clmin when RCL
i s not less than SAE or the difference between

RCL and SAE is less than the predetermined
number of reference clock cycles...
Id.

at 17:31-32,

18:1-2,

b)

13-24.

Specification and Prosecution History

The ^938 Patent specification does not speak directly to what
must perform the ^'determining" function.

generalized statements

and preferred embodiments

example, that, "when [A] is less than [C] ,
[F].

When [A]

is not less than [C],

Id. at 10:10-15.

an example of

Instead, i t contains more

[D]

that

say,

for

is determined to be

[D] is determined to be [E]."

Samsung argues that this embodiment ^'illustrates

determining'

as a

simple assignment when certain

conditions are met...[and t]here is no computation of the value D."
Docket

No.

181

at

25.

Further,

it

argues

that

this

statement

illustrates that the patent does not limit where the determination
must take place.
40

During the course of patent prosecution, the patentee stated,
when addressing claim 1, that he did ''not intend to restrict how the

first

number of delay clock cycles

[were]

determined except

to

require that i t be determined in response to the [difference] between

[A and B]

Docicet No. 181-11.

He also stated that the ""arguments

similar to those...for claim 1 are applicable to claims 6, 1, 19,
21,

and 22."

However,

Id.

the

patentee

defended

the

patentability

of

his

invention during the course of prosecution, stating that "nothing
in [the prior art] discloses or suggests measuring RCL...much less
comparing [its] value to generate...a first number of delay clock

cycles."

Docket No. 183-20 at 10.

He also clarified the process

of his invention, stating that the '"first number of delay clock cycles

is determined in response to information on the difference between
RCL

and

[RCLmin] •

description

operations."

Id.

requires

at

4.

that

The

"the

Defendants

SDRAM

argue

perform

that

this

mathematical

Docket No. 183 at 24.
c)

Extrinsic Evidence

Defendants cite to several dictionaries which "equate 'compute'
with

'determine.'"

the English Language

part,

as

See,

e.g.

(3d ed.

"to determine

The American Heritage Dictionary of

1992) at 389

by mathematics,

(defining "compute", in

especially by numerical

methods... to determine by use of a computer"); Webster's New World
41

College Dictionary

part,

as

{4th ed.

''to determine

1999)

at 300

(a number,

(defining ''compute",

amount,

etc.)

in

by arithmetic;

calculate... to determine or calculate by using a computer.").

Samsung also cites to a dictionary definition which defines
"determine", but does not reference computers or computations of any
form.

The American Heritage College Dictionary
d)

The

at 379.

Correct Construction

Defendants have

described in the

(1993)

failed to prove that

the determination

'938 Patent must take place in the SDRAM.

There

is no limitation in the language of the claims or in the specification
that requires the determination to be made by the SDRAM.

To the

contrary, the patentee specifically stated that he did not intend
to

limit

how

the

determination was

made.

Further,

there

is

no

evidence establishing that "determination" is synonymous and means
"computation."

Thus, the term will be correctly construed according

to its plain and ordinary meaning.
3.

"Shift register for delaying"

The Defendants' proposed construction is "a register that moves
its contents to the left or right for delaying."

Samsung's proposed

construction is "a circuit including a register for delaying."
a)

Words of the Claim

The term "shift register for delaying" appears in Claim 8 in
the

'938 Patent,

on which claim 17 depends.
42

Claim 8 states:

A synchronous
DRAM
synchronization with a
comprising:

(SDRAM)
operating
in
clock signal, the SDRAM

A first shift register for delaying the column
address by a first number of delay clock cycles
between the column address input port and the
column decoder...

'938 Patent,

14:22-23,

b)

33-35.

Specification and Prosecution History

The '938 Patent's specification contains a preferred embodiment
which states that the ''first shift register may comprise a plurality

of

registers

serially

coupled

to

each

other,

for

continuously

transmitting the column address every clock signal, and a multiplexer
for selectively providing one signal among the output signals of the

registers to the column decoder in response to the difference between
RCL and SAE."

Id. at 3:30-36; see also Figure 1.

Samsung argues

that this embodiment "can perform one of many different operations"
and is not restricted from moving its contents left or right.
No. 181 at 24.

may shift data

Docket

Specifically, Samsung argues that "the shift register

(if the input signal containing the column address

is directed to one or more of the three registers), or is may not

(if the input signal is directed straight to the multiplexer.)"
Docket No. 188 at 15.

options

involve

the

The Defendants respond that either of those

"shift"

of

data,

and

thus

definition does not read out a preferred embodiment.
43

their

proposed

Docket No. 187

at

20-22.

The specification also describes the invention by stating that,
''[i]n operation,

the

column address

is

transmitted

register every clock cycles of the clock signal."

to

the

next

^938 Patent at

7:45-47.

c)

Samsung

Extrinsic Evidence

cites

to

the

Microsoft

Computer

Dictionary,

which

defines a ^'register" as something which is ''used as a holding area
[for] . . .pieces of data or information. . . [such as] to hold the results

of an addition operation or to hold the address of a particular
location in the computer's memory."
334

{2d ed.

Microsoft Computer Dictionary,

1994).

The Defendants cite to The Authoritative Dictionary of IEEE

Standards Terms

(2000), which defines a ''shift register" as "(1) A

register in which the stored data can be moved to the right or left.
(2) A register in which the data bits can be shifted in one direction
or both."

Id.

at

d)

327.

Correct Construction

The Defendants have failed to produce any intrinsic evidence

which requires that the shift register disclosed in the ^938 Patent
requires that its contents are moved to the left or to the right in

every instance.

On the contrary. Figure 1 discloses a scenario in

which the data is not delayed or shifted.
44

The Defendants admit as

much in their response brief when they state: ^'Samsung relies on the
fact that [the Column Address] may be output to the column decoder

without

being

shifted

or

delayed.

register. . .has such capability."

It

is

true

Doclcet No. 187 at 21.

that

shift

Thus, based

on the language of the ^938 Patent and the Defendants' admissions,

the proper construction of the term is ''a circuit including a register
for delaying."
f)

^724 Patent

Samsung alleges infringement of claims 6, 7, and 8 in its Second
Amended Complaint.
1.

The

Docket No. 81.

Sending parallel digital video data"

Defendants'

proposed

construction

is

^'simultaneously

transmitting all bits of a given byte of the video data."

Samsung

proposes to give the term its plain and ordinary meaning.
a)

The

Words of the Claim

term ^'sending parallel digital video data"

several claims in the ^724 Patent.

The language of

patent describes the following claim:

A portable computer system, comprising:

a digital transmitter sending parallel digital
video data to said external digital monitor,
said digital monitor comprises a means for
generating a cable sensing signal to be sent to
45

in

The ''sending parallel digital

video data" language appears in claims 6 and 9.

Claim 6 of the ^724

appears

said first external video port over the digital
cable, thereby informing the video controller
of the digital cable connection state of said
first
external port,
said system further
comprising a monitor power sensor detecting a
presence of power applied to the external
digital monitor,
whereby a display enable
signal is generated in the video controller and
is sent to the transmitter to enable the digital
video signals to be sent to the external digital
monitor when the presence of power applied to
the external digital monitor is detected.
^724 Patent,

11:58,

11:66-12:12.

The language of Claim 9 of the

^724

patent describes the

following claim:
A portable computer system, comprising:

a digital transmitter sending parallel digital
video data to said external digital monitor,
said digital monitor, the video controller
further generates analog video signals to be
sent to a second external video port and then
to an external analog monitor...
Id.

at 12:26,

12:33-38. .

b)

Specification and Prosecution History

The specification describes one type of transmitter called a
^'TMDS"

transmitter.

'*724

Patent

at

6:14-19.

These

transmitters

have three data channels and one clock signal, thus making only a
three-bit parallel transmission possible.
at

396.

Because

the

Defendants'

Id.;

Docket No.

construction

would

181-17
require

simultaneous transmission of eight bits (a ^'parallel transmission") ,
46

Samsung argues that the Defendants' definition excludes the only type
of transmission process the ^724 Patent describes.
at

Docket No. 181

32.

The

^724

specification

further

states

that

the

''transmitter. . .receives parallel digital video data" from the video

controller and ''encodes and serializes the parallel input data by
the

use

of an

transmitted
differential

internal

to...the

The

LCD

channels."

c)

Defendants

PLL circuit.

The

serialized data

monitor... over

'724

Patent at

four

low

is

then

voltage

6:3-12.

Extrinsic Evidence

cite

to

The

IEEE

Standard

Dictionary

of

Electrical and Electronics Terms (6th ed.), which defines "parallel
transmission" as "simultaneous transmission of the bits making up

a character, either over separate channels or on different carrier

frequencies on one channel" and "[i]n data communications,

the

simultaneous transmission of all bits making up a character or byte

where

each bit

travels

on

a

different

path.

Contrast:

serial

transmission."

d)

Correct Construction

The parties are in agreement that the term "sending parallel

digital video data" should be interpreted at "transmitting all bits
of a given character of video data."

Docket No. 214 at 273:23-25.

The parties disagreed, however, as to whether that transmission had
47

to be simultaneous. If this Court interpreted the term as Defendants

suggest, it would exclude, in effect, all embodiments contained in
the Patent.

To do that, there must be highly persuasive evidence,

which was

not

(''Indeed,

if

presented here.
^solder

reflow

See Vitronics,

temperature'

were

90

F.3d at

defined

to

1583
mean

liquidus temperature, a preferred (and indeed only) embodiments in
the specification would not fall within the scope of the patent claim.
Such an interpretation is rarely, if ever, correct and would require
highly persuasive evidentiary support..."). As the Court construes
the term,

'"parallel" is an adjective describing the digital video

data and is not meant as a parallel transmission.

Thus, the proper

construction of the term presented is "transmitting all bits of a
given character of the video data."
2.

^^Means for generating a cable sensing signal to be sent
to said first external video port over the digital
cable, thereby informing the video controller of the
digital cable connection state of said first external
port"

This term is a means-plus-function limitation. ^
construe the term,

Thus,

to

"the court must determine the claimed function

[and then] the court must identify the corresponding structure in
the written description of the patent that performs the function."
Noah Sys., Inc. v. Intuit Inc., 675 F.Sd 1302, 1311 (Fed. Cir. 2012)

(citation omitted).

Both parties have proposed a function and a

5 Means-plus-function terms are governed by 35 U.S.C. §112(6).
48

structure

for

this

term.

The

Defendants'

proposed

function

construction is ''generating a cable sensing signal to be sent to said

first external video port over the digital cable, thereby informing
the video controller of the digital cable connection state of said
first

external port."

The Defendants propose the Monitor Cable

Sensing Circuit 527, as described in Figure 14 and at 7:31-8:16, as
the proper structure.

Samsung's proposed function construction is

"generating a cable sensing signal."
resistor Rl,

Samsung proposes the DVCC and

as depicted in Figure 14, as the proper structure.
a)

Words of the Claim

The term ''means for generating a cable sensing signal to be sent
to said first external video port over the digital cable, thereby

informing the video controller of the digital cable connection state
of said first external port" appears in claim 6.

Claim 6 of the ^724

The language of

patent describes the following claim:

A portable computer system, comprising:

a digital transmitter sending parallel digital
video data to said external digital monitor,
said digital monitor comprises a means for
generating a cable sensing signal to be sent to
said first external video port over the digital
cable, thereby informing the video controller
of the digital cable connection state of said
first
external port,
said system further
comprising a monitor power sensor detecting a
presence of power applied to the external
digital monitor, whereby a display enable
signal is generated in the video controller and
49

is sent to the transmitter to enable the digital
video signals to be sent to the external digital
monitor when the presence of power applied to
the external digital monitor is detected.
^724 Patent,

11:58,

b)

11:66-12:12.

Specification and Prosecution History

Figure 14 depicts the entirety of the cable sensing circuit,
including components of the video port.

The Patent's specification

describes Figure 14, in part, as ^'a detailed diagram showing the LCD
monitor cable sensing circuit."
The

^724

generates a

Patent

Abstract

"*724 Patent at 4:1-2.
states

that

''the

digital

monitor

signal being sent to the second video port over the

monitor cable, thereby informing the video controller of the monitor
cable connection s t a t e . "

c)

^724

Patent at Abstract.

Extrinsic Evidence

The parties cite to no extrinsic evidence.
d)

Correct Construction

According to Lockheed Martin Corp. v. Space Sys./Loral, Inc.,
324

F.3d 1308,

1319

(Fed Cir.

2003),

''the

function

identified as the language after the 'means for'

the 'whereby' clause,

is properly

clause and before

[when a] whereby clause...merely states the

result of the limitations in the claim adds nothing to the substance

of the claim."®

Here, the thereby clause merely states the result

of the limitations in the claim and adds nothing to the claim's

The parties agree that "thereby" and "whereby" mean the same thing.
50

substance.

The Defendants have failed to establish that the thereby

clause states a condition that is material to patentability and that,
if left off, would change the substance of the invention.

Thus, the function is properly construed as ''generating a cable
sensing signal to be sent to first external video port over the
digital cable."

The means are properly construed as the DVCC and

resistor R1 depicted in Figure 14 of the

'724 Patent.

CONCLUSION

For the reasons set forth above,
the

Patents-in-Suit are

the disputed claim terms in

to be construed as

reflected herein.

/s/

Robert E.

Payne

Senior United States District Judge

Richmond, Virginia
Date: July
2015

51