United States District Court, D. Delaware
Matterer, MORRIS JAMES LLP, Wilmington, DE; Stephen R. Carden
(argued), Ann C. Palma, and James V. Suggs, MCDONNELL BOEHNEN
HULBERT & BERGHOFF LLP, Chicago, IL. Attorneys for
C. Grimm and Jeremy A. Tigan, MORRIS, NICHOLS, ARSHT &
TUNNELL, Wilmington, DE; Jennifer Hayes (argued), NIXON
PEABODY LLP, Los Angeles, CA. Attorneys for Defendants.
ANDREWS, U.S. DISTRICT JUDGE.
before the Court is the issue of claim construction of
multiple terms in U.S. Patent Nos. 8, 940, 437 ("the
'437 patent"); 8, 597, 831 ("the '831
patent"); and 9, 583, 762 ("the '762
patent"). The Court has considered the Parties'
Joint Claim Construction Brief. (Civ. Act. No.
15-cv-915-RGA;D.I. 104). The Court heard oral argument on
December 21, 2017. (D.I. 127).
asserted patents relate to methods for fabricating
silicon-based fibers and particles for use in rechargeable
lithium ion batteries.
is a bedrock principle of patent law that the claims of a
patent define the invention to which the patentee is entitled
the right to exclude." Phillips v. AWH Corp.,
415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (citation
omitted). '"[T]here is no magic formula or catechism
for conducting claim construction.' Instead, the court is
free to attach the appropriate weight to appropriate sources
'in light of the statutes and policies that inform patent
law.'" SoftView LLC v. Apple Inc., 2013 WL
4758195, at *1 (D. Del. Sept. 4, 2013) (quoting
Phillips, 415 F.3d at 1324) (alteration in
original). When construing patent claims, a court considers
the literal language of the claim, the patent specification,
and the prosecution history. Markman v. Westview
Instruments, Inc., 52 F.3d 967, 979-80 (Fed.
Cir. 1995) (en banc), affd, 517 U.S. 370 (1996). Of
these sources, "the specification is always highly
relevant to the claim construction analysis. Usually, it is
dispositive; it is the single best guide to the meaning of a
disputed term." Phillips, 415 F.3d at 1315.
words of a claim are generally given their ordinary and
customary meaning. . . . [This is] the meaning that the term
would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the
effective filing date of the patent application."
Id. at 1312-13. "[T]he ordinary meaning of a
claim term is its meaning to [an] ordinary artisan after
reading the entire patent." Id. at 1321.
"In some cases, 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."
Id. at 1314.
court relies solely upon the intrinsic evidence-the patent
claims, the specification, and the prosecution history-the
court's construction is a determination of law. See
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831,
841 (2015). The court may also make factual findings based
upon consideration of extrinsic evidence, which
"consists of all evidence external to the patent and
prosecution history, including expert and inventor testimony,
dictionaries, and learned treatises." Phillips,
415 F.3d at 1317-19. Extrinsic evidence may assist the court
in understanding the underlying technology, the meaning of
terms to one skilled in the art, and how the invention works.
Id. Extrinsic evidence, however, is less reliable
and less useful in claim construction than the patent and its
prosecution history. Id.
claim construction is persuasive, not because it follows a
certain rule, but because it defines terms in the context of
the whole patent." Renishaw PLC v. Marposs Societa
'per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998).
It follows that "a claim interpretation that would
exclude the inventor's device is rarely the correct
interpretation." Osram GMBH v. Int'l Trade
Comm'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007)
CONSTRUCTION OF DISPUTED TERMS
asserted patents claim methods for fabricating silicon or
silicon-based materials and their use in electrodes in
rechargeable lithium ion batteries. Claim 1 of the '831
patent reads as follows:
1. An electrode for an electrochemical cell, the electrode
comprising an electrically interconnected mass
elongated structures, wherein the elongated
structures are capable of being reversibly charged
and discharged and at least some of the elongated
structures cross over each other to provide
intersections and a porous structure, and wherein
the elongated structures comprise silicon;
at least one of a binder and an electronic additive;
wherein the elongated structures and the at least
one of the binder and the electronic additive cooperate to
define a porous composite electrode layer.
('831 patent, claim 1) (disputed terms italicized).
17 of the '762 patent reads as follows:
method of forming a lithium-ion battery electrode, the method
depositing a plurality of crystalline silicon-comprising
elongated elements, the elongated elements being capable of
lithium insertion and removal, wherein when deposited at
least some of the elongated elements cross over other
elongated elements many times along their length to form
multiple intersections thereby forming a porous
charging the porous structure, wherein the charging
welds the elongated elements to one another at the
intersections by forming amorphous silicon-containing
structures between disrupted crystalline structures of the
silicon-comprising elongated elements at the intersections.
('762 patent, claim 17) (disputed terms italicized).
Dependent claim 19 of the '762 patent depends from claim
17 and reads as follows:
19. A method of forming a lithium-ion battery electrode as
claimed in claim 17, further comprising:
recharging the lithium-ion battery electrode a plurality of
wherein each of the recharging operations increases the
structural strength of the electrode.
('762 patent, claim 19) (disputed terms italicized).
21 of the '437 patent reads as follows:
21. A plurality of discrete particles wherein each particle
comprises silicon and includes a particle core and a
plurality of silicon-comprising pillars extending
outwardly therefrom from a first end to a second end, wherein
each pillar in the plurality of pillars is attached to the
core at the first end of the pillar, and the second end of
each pillar is an unattached free end, wherein in each
particle, the fraction of the surface area of the particle
core occupied by the pillars is in the range of 0.10 to 0.50.
('437 patent, claim 21) (disputed terms italicized).
Dependent claim 22 of the '437 patent depends from claim
21 and reads as follows:
22. A plurality of discrete particles as claimed in claim 21
wherein the pillars are int ...