United States District Court, D. Delaware
E. Faran, Michael J. Faran, Farnan LLP, Wilmington, DE;
Matthew J. Moore, Lawrence J. Gotts, Alan M. Billharz, Latham
& Watkins LLP, Washington, DC; Maximilian A. Grant,
Clement J. Naples, Latham & Watkins LLP, New York, NY -
attorneys for Plaintiff
W. Poff, Pilar G. Kraman, Young C0naway Stargatt &
Taylor, LLP, Wilmington, DE; Ryan K. Yagura, Brian M.
Berliner, O'Melveny & Myers LLP, Los Angeles, CA;
Darin W. Snyder, Luann L. Simmons, Mark Liang, O'Melveny
& Myers LLP, San Francisco, CA -attorneys for Defendants
NOREIKAT, U.S. DISTRICT JUDGE
Invensas Corporation ("Invensas") sued Defendants
Samsung Electronics Co., Ltd and Samsung Austin
Semiconductor, LLC (collectively, "Samsung") for
infringement of U.S. Patent Nos. 6, 232, 231 ("the
'231 Patent") and 6, 849, 946 ("the '946
Patent"). Presently before the Court are the
parties' disputes over the meaning of three terms that
appear in the two patents. The parties briefed the issues,
submitted declarations from experts (D.I. 44-48, D.I. 56, 57),
and provided tutorials describing the relevant technology
(D.I. 49, 50). The Court heard argument on claim construction
on October 10, 2018. (D.I. 64) ("Tr.").
ultimate question of the proper construction of the patent
[is] a question of law," although subsidiary
fact-finding is sometimes necessary. Teva Pharms. USA,
Inc. v. Sandoz, Inc., 135 S.Ct. 831, 837-38 (2015).
"[T]he words of a claim are generally given their
ordinary and customary meaning [which 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 v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed.
Cir. 2005) (en banc) (internal citations and quotation marks
omitted). Although "the claims themselves provide
substantial guidance as to the meaning of particular claim
terms," the context of the surrounding words of the
claim also must be considered. Id. at 1314.
"[T]he ordinary meaning of a claim term is its meaning
to the ordinary artisan after reading the entire
patent." Id. at 1321 (internal quotation marks
patent specification "is always highly relevant to the
claim construction analysis . . . [as] it is the single best
guide to the meaning of a disputed term." Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996). It is also possible that "the specification
may reveal a special definition given to a claim term by the
patentee that differs from the meaning it would otherwise
possess. In such cases, the inventor's lexicography
governs." Phillips, 415 F.3d at 1316.
"Even when the specification describes only a single
embodiment, [however, ] the claims of the patent will not be
read restrictively unless the patentee has demonstrated a
clear intention to limit the claim scope using words or
expressions of manifest exclusion or restriction."
Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d
1367, 1372 (Fed. Cir. 2014) (internal quotation marks
omitted) (quoting Liebel-Flarsheim Co. v. Medrad,
Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)).
addition to the specification, a court "should also
consider the patent's prosecution history, if it is in
evidence." Markman v. Westview Instruments,
Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc),
aff'd, 517 U.S. 370 (1996). The prosecution
history, which is "intrinsic evidence, . . . consists of
the complete record of the proceedings before the PTO [Patent
and Trademark Office] and includes the prior art cited during
the examination of the patent." Phillips, 415
F.3d at 1317. "[T]he prosecution history can often
inform the meaning of the claim language by demonstrating how
the inventor understood the invention and whether the
inventor limited the invention in the course of prosecution,
making the claim scope narrower than it would otherwise
cases, courts "will need to look beyond the patent's
intrinsic evidence and to consult extrinsic evidence in order
to understand, for example, the background science or the
meaning of a term in the relevant art during the relevant
time period." Teva, 135 S.Ct. at 841. Extrinsic
evidence "consists of all evidence external to the
patent and prosecution history, including expert and inventor
testimony, dictionaries, and learned treatises."
Markman, 52 F.3d at 980. Expert testimony can be
useful "to ensure that the court's understanding of
the technical aspects of the patent is consistent with that
of a person of skill in the art, or to establish that a
particular term in the patent or the prior art has a
particular meaning in the pertinent field."
Phillips, 415 F.3d at 1318. Nonetheless, courts must
not lose sight of the fact that "expert reports and
testimony [are] generated at the time of and for the purpose
of litigation and thus can suffer from bias that is not
present in intrinsic evidence." Id. Overall,
although extrinsic evidence "may be useful to the
court," it is "less reliable" than intrinsic
evidence, and its consideration "is unlikely to result
in a reliable interpretation of patent claim scope unless
considered in the context of the intrinsic evidence."
Id. at 1318-19. Where the intrinsic record
unambiguously describes the scope of the patented invention,
reliance on any extrinsic evidence is improper. See
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
1298, 1308 (Fed. Cir. 1999) (citing Vitronics, 90
F.3d at 1583).
primary purpose of the definiteness requirement is to ensure
that the claims are written in such a way that they give
notice to the public of the extent of the legal protection
afforded by the patent, so that interested members of the
public, e.g. competitors of the patent owner, can
determine whether or not they infringe." All Dental
Prodx, LLC v. Advantage Dental Prods., Inc., 309 F.3d
774, 779-80 (Fed. Cir. 2002) (citing Warner-Jenkins on
Co. v. Hilton-Davis Chem. Co., 520 U.S. 17, 28-29
(1997)). Put another way, "[a] patent holder should know
what he owns, and the public should know what he does
not." Festo Corp. v. Shoketsu Kinzoku Kogyo
Kabushiki Co., Ltd., 535 U.S. 722, 731 (2002).
patent claim is indefinite if, "viewed in light of the
specification and prosecution history, [it fails to] inform
those skilled in the art about the scope of the invention
with reasonable certainty." Nautilus, Inc. v. Biosig
Instruments, Inc., 134 S.Ct. 2120, 2129 (2014). A claim
may be indefinite if the patent does not convey with
reasonable certainty how to measure a claimed feature. See
Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d
1335, 1341 (Fed. Cir. 2015). But "[i]f such an
understanding of how to measure the claimed [feature] was
within the scope of knowledge possessed by one of ordinary
skill in the art, there is no requirement for the
specification to identify a particular measurement
technique." Ethicon Endo-Surgery, Inc. v.
Covidien, Inc., 796 F.3d 1312, 1319 (Fed. Cir. 2015).
claim construction, defmiteness is a question of law, but the
Court must sometimes render factual findings based on
extrinsic evidence to resolve the ultimate issue of
defmiteness. See, e.g., Sonix Tech. Co. v. Publications
Int'l, Ltd., 844 F.3d 1370, 1376 (Fed. Cir. 2017);
see also Teva, 135 S.Ct. at 842-43. "Any fact
critical to a holding on indefmiteness . . . must be proven
by the challenger by clear and convincing evidence."
Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366
(Fed. Cir. 2003); see also Tech. Licensing Corp. v.
Videotek, Inc., 545 F.3d 1316, 1338 (Fed. Cir. 2008).
CONSTRUCTION OF DISPUTED TERMS
"substantially planar" / "substantially