EDWARD M. CHEN, District Judge.
Lam Research Corporation ("Lam") is the owner of the `266 Patent (granted April 27, 2010), which is a reissue of the `456 Patent (granted September 18, 1990). Docket No. 279-14 Exhs. A, B.
Lam instituted this action on March 27, 2003, alleging infringement of its `456 Patent against Xycarb Ceramics, Inc. ("Xycarb") and Schunk Semiconductors, a German company that wholly owns and controls Xycarb. Docket No. 1. On June 19, 2003, Lam applied for a temporary restraining order against Xycarb. Docket No. 15. On August 8, 2003, without ruling on the temporary restraining order, the Court, under Judge Breyer, issued an order construing the key term "bonded" in Xycarb's favor after expedited proceedings. Docket No. 137. Lam filed a motion for reconsideration of the August 8 order, which Judge Breyer granted on November 18, 2003, this time construing the term "bonded" in favor of Lam. Docket No. 154.
On December 12, 2003, Lam filed a reissue patent application ("Reissue Application") for the `456 Patent with the United States Patent and Trademark Office ("USPTO"). In the Reissue Application, Lam sought to correct an error in Claim 33. Docket No. 279 Exh. 2. On July 8, 2004, Xycarb filed a request for reexamination of the `456 Patent. The reissue patent application and reexamination were merged, also with a third party ex-parte request for reexamination of the `456, into a single consolidated proceeding (the "2004 Reexamination"). Docket No. 279 Exh. 9 at 4-5 of 21.
During the 2004 Reexamination, the patent Examiner issued first a non-final, then a final, rejection of all 36 claims of the `456 Patent. Docket Nos. 279 Exhs. 3, 5. After appeal to the Board of Patent Appeals and Interferences, the Board reversed the Examiner's final rejection and the Examiner ultimately issued a Notice of Allowance on April 27, 2010 as the `266 Reissue Patent. Docket No. 279 Exh. 9. On September 17, 2010, Lam filed a supplemental complaint, alleging infringement of the `266 Patent. Docket No. 191.
Currently pending before the Court is: (1) Xycarb's Motion re Intervening Rights, asserting that it is not liable for infringement of Claim 33 of the `266 Patent because it is not "substantially identical" to Claim 33 of the `456 Patent; (2) Xycarb's Motion for Reconsideration of Judge Breyer's November 18, 2003 order; and (3) claim construction of the `266 Patent.
Xycarb requests the Court to find that Claims 33 of the `456 Patent and the `266 Reissue Patent are not "substantially identical," and thus to grant Xycarb intervening rights. It also asserts that Lam made other changes to the `456 Patent without bringing them to the attention of the USPTO during the reissue and reexamination process, and thus the Court should construe terms in its favor.
Patent reissue is governed by 35 U.S.C. § 252, which from November 2, 2002 to September 15, 2012 provided in part:
The doctrine of intervening rights was developed to prevent injustice "where a third party, having already begun to make, use, or sell a given article, finds its previously lawful activities rendered newly infringing under a modified [reissue] patent." Marine Polymer Technologies, Inc. v. HemCon, Inc., 672 F.3d 1350, 1361 (Fed. Cir. 2012). The doctrine was codified in 35 U.S.C. § 252, which provides for two types of intervening rights:
Marine Polymer Technologies, Inc. v. HemCon, Inc., 672 F.3d 1350, 1361-62 (Fed. Cir. 2012). Intervening rights do not accrue, however, if "the claims in the original and reissued patents are substantially identical." 35 U.S.C. § 252; id. at 1362. Claims in the reissue patent that are substantially identical with claims in the original patent "reach back to the date the original patent issued." Seattle Box Co., Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 827 (Fed. Cir. 1984).
The standard for whether the claims at issue are "substantially identical" is "whether a particular change to the claims is substantive, such that the scope of the claims is no longer substantially identical." Laitram Corp. v. NEC Corp., 952 F.2d 1357, 1361 (Fed. Cir. 1991). "`[I]t is the scope of the claim that must be identical, not that the identical words must be used.'" Westvaco Corp. v. International Paper Co., 991 F.2d 735, 741 (Fed. Cir. 1993) (quoting Slimfold Mfg. Co., Inc. v. Kinkead Indus., Inc., 810 F.2d 1113, 1115 (Fed. Cir. 1987)). "An amendment that clarifies the text of the claim or makes it more definite without affecting its scope is generally viewed as identical for the purpose of § 252." Bloom Engineering Co., Inc. v. North American Mfg. Co., Inc, 129 F.3d 1247, 1250 (Fed. Cir. 1997) (citations omitted). In making this determination, a claim is interpreted in light of "`the prior art, the prosecution history, other claims, and any other pertinent information.'" Westvaco Corp., 991 F.2d at 742 (quoting Laitram Corp., 952 F.2d at 1361).
Claim 33 reads:
Enclosed in brackets is what was in the original `456 Patent; in italics is what is in the `266 Reissue Patent. Lam applied for a reissue patent to correct this error (and another error that is not at issue in the present dispute). See Docket No. 279 Exh. 2 at 16 of 58. Lam asserts that this was a mere drafting error, while Xycarb asserts that replacing "electrode plate" with "support ring" was a substantive change.
The Court first notes that throughout the 2004 Reexamination, the Examiner assumed Claim 33 of the `456 Patent stood as with the correction. E.g., Docket No. 279 Exh. 7 at 51 of 54 ("Independent claim 33 sets forth a method for forming an electrode assembly including a support ring and an electrode plate . . . wherein the material of the support ring has a higher coefficient of thermal expansion than that of the electrode plate. . . .") (emphasis added). In other words, the correction Lam sought through reissue was granted, though perhaps not expressly. The 2004 Reexamination focuses instead on reexamining the patentability of the `456 Patent under 35 U.S.C. § 102(b) for lack of novelty and under 35 U.S.C. § 103(a) for obviousness. See Docket No. 279 Exhs. 2-9.
Even if the Court were to consider the question afresh, the Court would construe Claim 33 of the `456 Patent as it stands corrected in the `266 Patent. "A district court can correct a patent only if (1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims." Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003).
The typographical nature of the correction is not subject to reasonable debate. This is evident from the claim language itself. The statement in Claim 33 that "the electrode plate has a higher coefficient of thermal expansion than that of the electrode plate" does not make sense as stated. (The corrected "electrode plate" and correction, "support ring," will be written in italics.) Judge Breyer also notes, "This claim is confusingly worded. It is unclear how the coefficient of thermal expansion of the electrode plate can be greater than that of the electrode plate." Docket No. 137 at 8. Claim 33 only makes sense if electrode plate reads support ring. Claim 33 begins by talking about an electrode assembly with two components, a support ring and an electrode plate, then bonding the support ring and electrode plate, and utilizing a difference in coefficients of thermal expansion of something and the electrode plate. Although this something is stated as electrode plate, it obviously should be support ring, since there is only one electrode plate under discussion and the Claim has hitherto talked about the assembly's two components, the support ring and electrode plate.
The nature of the correction is also evident from the specification. The specification states that the support ring (or support frame) should have a higher coefficient of thermal expansion than the electrode plate, in the same context of forming the assembly and utilizing the difference in contraction rates to create compressive stress. See `456 Patent col. 6:67-7:6 ("by utilizing a support ring which is formed from a material which has a slightly larger thermal expansion coefficient than that of the electrode plate, and forming or curing the bonding layer . . . the support ring will apply a constant compressive force on both the electrode plate and the bonding layer"); Id. col. 3:6-11 ("the support frame is chosen to have a slightly greater coefficient of thermal expansion [than the electrode plate]. By then joining and/or curing the bonding layer at a temperature above the expected operating temperature of the electrode, the electrode plate will be maintained under compression . . .").
Xycarb asserts it is only appropriate to look to the specification for guidance when the meaning of a disputed word or phrase in a claim is uncertain. It argues that since the meaning of electrode plate is undisputed and certain, the Court should not look to the specification. The point, however, is not that the meaning of "electrode plate" is ambiguous, but that the phrase "electrode plate ha[ving] a higher coefficient of thermal expansion than that of the electrode plate" is. Moreover, Novus Indus expressly requires consideration of the specification in deciding whether a correction would be appropriate.
Xycarb cites Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004) for the proposition that district courts may not redraft claims to make them operable or sustain their validity. There, the claim recited "heating the . . . dough to a temperature in the range of about 400F. to 850F." Id. The Federal Circuit was unwilling to redraft the claim as the patentee desired, so that the temperature would be that of the oven, not the dough, since the dough "would be burned to a crisp." Id. at 1373. The court held: "Where, as here, the claim is susceptible to only one reasonable construction . . . we construe the claim as written, not as the patentees wish they had written it. As written, the claim unambiguously requires that the dough be heated to a temperature range of 400° F. to 850° F." Id. at 1374. Here, however, Claim 33 is non-sensical as written, and the only reasonable construction is to replace electrode plate with support ring. Moreover, the context provided by the rest of the claim language and specification makes clear this was a typographical error. Chef Am. did not involve similar circumstances and is inapposite.
Xycarb asserts that Lam changed electrode plate to support ring to overcome a prior Japanese patent of Shigeru. Xycarb's argument is based entirely on purported references to two electrode plates common to the `456 Patent and Shigeru. Xycarb points to the Examiner's statement, "Shigeru teaches bonding the backing plate to an electrode plate (silicon dioxide) at elevated temperature . . . wherein the material of the electrode plate (Cu) has a higher coefficient of thermal expansion than that of the electrode plate (silicon dioxide)." Docket No. 279 Exh. 3 at 11-12 of 14. As Lam points out, however, the Examiner's allusion to two electrode plates in Shigeru is a misstatement. Shigeru's patent does not mention electrode plates, but a "backing plate" and a "silicon dioxide plate"/"target." See Docket No. 284-2 Exh. B (Shigeru Patent). Moreover, the Examiner's rejections of Claim 33 of the `456 Patent was not based on the two electrode plates purportedly appearing in both the `456 Patent and Shigeru. Rather, the Examiner assumed Claim 33 stood as corrected, but rejected it as being unpatentable over Shigeru in view of another prior art reference, Yamada:
Docket No. 279 Exh. 3 at 13 of 14, Exh. 5 at 13 of 16 (emphasis added).
Looking further to the substance, Shigeru's patent pertains to a "bonding method for a sputtering target," and it is unclear whether this has anything to do with an electrode assembly. Docket No. 284-2 Exh. B at 2 of 9; Cf. Docket No. 265 Exh. 5 (Board of Patent Appeals' reversal of Examiner's final rejection of the `456 Patent) at 11, 17 of 21 (finding that the Examiner failed to explain "why a person having ordinary skill in the art would have had a reasonable expectation that the technique described for bonding Shigeru's . . . sputtering target . . . would work in Takao's etching apparatus . . ."). Thus, there is no evidence to support Xycarb's contention that Lam amended Claim 33 to overcome Shigeru.
The electrode plate in Claim 33 of the `456 Patent should have read support ring. This would make Claims 33 of the two Patents identical verbatim. They are thus "substantially identical." This conclusion accords with the Examiner's grant of the amendment Lam sought in its Reissue Application.
Xycarb points to changes to the `456 Patent present in the `266 Patent that Lam failed to bring to the attention of the USPTO during the reissue and reexamination process. All but one change, in Claim 25, is in the specification.
Xycarb asserts that the changes in the specification "have impacted the Court's ability to construe `bonded'" and "bonding layer," and thus the Court should adopt Xycarb's construction of these terms. It is true that a number of words have been changed from the `456 Patent. See Docket No. 279-14, where the changes have been highlighted. Many appear to be typographical errors, (e.g., "enchant" in the `266 Patent should be "etchant" as in the `456 Patent) and a few are puzzling (e.g., "the material of the support frame . . . should allow attachment within the reactor by bolting or other conventional fasteners" (`456 Patent 2:67) has been changed to "the material of the support frame . . . should allow treatment within the reactor by bolting or other conventional fasteners" (`266 Patent 2:64)). However, Xycarb fails to show how these changes are material. Indeed, the Court finds them irrelevant to its claim construction below.
Xycarb asserts that the change to Claim 25 warrants invalidation of Claim 25 and its independent claims 26-28. In the `266 Patent, Claim 25 reads, "[a]n electrode assembly as in claim
Thus, the Court
Xycarb moves for reconsideration of Judge Breyer's claim construction order of November 18, 2003. Docket No. 154 ("Order II"). In the order, Judge Breyer construes the term "bonded" in Claim 18 of the `456 Patent. The reasoning in its entirety reads:
The Court's construction comes straight out of the specification: "The support ring may be bonded to the electrode plate by any suitable process which provides the necessary bonding strength as well as thermal and electrical characteristics." `456 Patent col. 5:64-67.
The order was issued as a result of Lam's own motion for reconsideration of Judge Breyer's previous claim construction order of August 7, 2003. Docket No. 137. In the August 7 order, Judge Breyer found that Claim 32 "describes the very essence of a `shrink fit,'" but that shrink fitting is a not form of bonding. Id. at 7. It was "a separate step to be performed in addition to bonding"; "an additional step beyond bonding." Id. at 7, 8.
Local Rule 7-9 sets forth three grounds on which a party may make a motion for leave to file a motion for reconsideration. Relevant here is 7-9(b)(2): "The emergence of new material facts or a change of law occurring after the time of such order." Xycarb asserts that reconsideration is warranted because of a change of law and emergence of new material facts: (1) Lam's prior briefing in support of its motion for reconsideration was premised on a standard rejected by the Federal Circuit after Order II was issued and (2) under the doctrine of prosecution history disclaimer, Lam disclaimed bonding "by any suitable process" during prosecution proceedings that occurred after Order II was issued. This Court granted Xycarb's motion for leave to file a motion for reconsideration on these grounds. Docket No. 266.
Xycarb asserts that the Court should reconsider Judge Breyer's construction of "bonded" as used in Claim 18 because Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), changed the law on claim construction that had been set forth by Texas Digital Systems, Inc. v. Telegenix Inc., 308 F.3d 1193 (Fed. Cir. 2002).
It has been a long-standing principle, changed neither by Phillips nor Texas Digital, that "the words of a claim `are generally given their ordinary and customary meaning,'" and that "the ordinary and customary meaning of a claim term is the meaning that the term would have to a person or ordinary skill in the art in question at the time of the invention." Phillips, 415 F.3d at 1312-13 (citing numerous Federal Circuit cases since the 1990s to this effect). What Phillips changed is the relative importance of intrinsic and extrinsic evidence in determining the "ordinary and customary meaning." Phillips reiterated the principle that "`[t]he best source for understanding a technical term is the specification from which it arose, informed, as needed, by the prosecution history,'" and held that Texas Digital had "placed too much reliance on extrinsic sources such as dictionaries, treatises, and encyclopedias and too little on intrinsic sources, in particular the specification and prosecution history." Id. at 1320 (quoting Multiform Dessicants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1478 (Fed. Cir. 1998)).
Xycarb argues that the Court should reconsider Order II, because Lam's briefing (for its motion for reconsideration) relied on the legal standard of Texas Digital in advocating its construction of "bonded." Motion for Reconsideration at 9. Xycarb's argument has very limited reach, however, because Judge Breyer did not provide the basis for his decision. Because the Court cannot possibly determine whether Judge Breyer relied on the portion of Texas Digital that Phillips overturned, it cannot grant reconsideration based on the change in law brought by Phillips.
Representations made to the USPTO during prosecution may be material to reconsideration of claim construction, since they can narrow the scope of a claim:
Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1094-95 (Fed. Cir. 2013) (citations omitted).
The specification states that "[t]he support ring may be bonded to the electrode plate by any suitable process which provides the necessary bonding strength as well as thermal and electrical characteristics." `266 Patent col. 5:53-56 (emphasis added). However, the prosecution history shows that Lam disclaimed bonding "by any suitable process." During the 2004 Reexamination, the Examiner rejected most of the claims of the `456 Patent on grounds that they were anticipated by a prior art reference, Takao. Lam states in response to the Examiner's final rejection of claims 1-36 of the `456 Patent:
Docket No. 265 Exh. 2 at 24 of 120. Lam thus "unequivocally and unambiguously" disavowed clamping with a mechanical structure. The parties do not disagree. See Opp. to Motion for Reconsideration at 9.
Thus, the prosecution history shows Judge Breyer's construction of "bonded" — (1) a connection between the electrode plate and support ring that has the strength necessary to hold these parts together in use, and that is capable of achieving the necessary (2) electrical conductivity and (3) thermal conductivity — is too broad. It was disavowed in Lam's prosecution at least in part. Further, as discussed below, Judge Breyer's construction reflected "[a] manifest failure by the Court to consider "dispositive legal arguments." Local Rule 7-9(b)(3). Thus, the Court
Claim construction is a question of law to be determined by the Court. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) ("in a case tried to a jury, the court has the power and obligation to construe as a matter of law the meaning of language used in the patent claim"). "The purpose of claim construction is to `determin[e] the meaning and scope of the patent claims asserted to be infringed.'" O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008).
Id.
Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (internal citations omitted).
"[T]he 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.'" Id. at 1315 (quoting Vitrionics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). "It is therefore entirely appropriate for a court, when conducting claim construction, to rely heavily on the written description for guidance as to the meaning of the claims." Id. at 1317.
On the other hand, courts must avoid "importing limitations from the specification into the claim." Id. at 1323. In particular, "although the specification often describes very specific embodiments of the invention," courts must not "confin[e] the claims to those embodiments." Id.
The claims containing the disputed terms are as follows: 1, 5, 10, 11, 15, 18, 24, 29, 32, 33. Claims 1, 18, and 33 are independent; the remaining are dependent. The text of the claims is provided below (with terms to be construed in bold).
As a preliminary matter, Lam states that there is no need for the Court to construe this term because it appears only in claims that Lam does not assert in this action. Lam's Opening Br. at 20. The Court construes the term, however, because, as will be seen below, it appears in a portion of the specification (`266 Patent col. 6:48-64) that is essential to construing "bonded."
The Court essentially adopts Lam's construction, but avoids reference to the term "bonded," which is heavily disputed. The Court's construction makes clear that a "bonding layer" requires bonding material. This is implicit in the word "layer," but is also supported by the language of Claims 11 and 13: "wherein the bonding layer is composed of a material having a low vapor pressure . . ."; "wherein the bonding layer is formed by brazing, soldering, or adhesion. . . ."
Lam does not include "ductile" in its proposed construction, but does not object to its inclusion. Lam's Opening Br. at 25. However, a bonding layer that is "ductile" is merely a preferred embodiment, and thus, is not properly a part of the construction of "bonding layer." See Halliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244, 1250-51 (Fed. Cir. 2008) (declining to import a limitation of a preferred embodiment into the construction of a term notwithstanding the patentee's request to do so). The specification indicates that ductility is not required; it is merely desirable when there is a mismatch in thermal expansion coefficients between the support frame and electrode plate:
`266 Patent col. 2:65-3:3.
`266 Patent col. 5:56-62. Thus, the Court declines to add "ductile" to the construction.
The term appears only in Claim 32, which recites, "[a]n electrode assembly as in claim 18, wherein the support ring is pre-stressed to impart a radially inward compression of the electrode disk." Xycarb's proposed definition is essentially taken from the following portion of the specification, in particular, from the sentence beginning "More specifically . . .":
`266 Patent 6:48-58 (emphasis added). This is the only place in the specification where pre-stress is expressly mentioned.
Citing Phillips, Lam objects that Xycarb "impermissibly seeks to add limitations from the specification that are not present in the language of Claim 32." See Phillips, 415 F.3d at 1323 (warning against "importing limitations from the specification into the claim"). Lam Opening Br. at 23. The question is whether the sentence beginning "More specifically, by utilizing a support ring . ..," which will be denoted (*), is a limitation on "pre-stress" of the support ring or a description of what pre-stress is. In other words, the issue is whether the two conditions, (1) that the support ring has a higher thermal expansion coefficient than the electrode plate and (2) that the bonding layer is formed or cured at elevated temperatures, define the process of pre-stressing the support ring or is merely one example of the process.
The quotation marks surrounding pre-stress in the first sentence indicate that pre-stress will shortly be explained or defined, and (*) follows, explaining how to cause the support ring to exert compression on the electrode plate, in clear reference to the first sentence. Nothing suggests that the statement (*) is merely providing one specific method of pre-stressing the support ring. Without (*), a description of "pre-stress" would be lacking. This indicates that (*) is explaining or defining pre-stress of the support ring rather than limiting it.
The prosecution history also shows that (*) is an explanation rather than a limitation. See CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1158 (Fed. Cir. 1997) ("through statements made during prosecution or reexamination an applicant for a patent or a patent owner, as the case may be, may commit to a particular meaning for a patent term, which meaning is then binding in litigation"). In its appeal brief to the Examiner's final rejection, Lam distinguishes its invention from Takao and Shigeru as follows:
Docket No. 279 Exh. 6 at 103 of 120 (emphasis added). Here, pre-stress is equated with the description in (*). Thus (*) is not a limitation, but the meaning of "pre-stress."
As discussed above, given the prosecution history disclaimer, Lam's proposed definition should be narrowed at least to exclude "unbonded surfaces clamped together with a mechanical structure." The parties do not dispute the basic mechanics of shrink fitting. The parties' dispute revolves around whether shrink fitting constitutes clamping with a mechanical structure, and more generally, whether bonding excludes shrink fitting.
As discussed above, Lam disavowed mechanical clamping as a means of bonding. Xycarb asserts that shrink fitting is similar to clamping because it is "a mechanical assembly process" that only requires interference of the component parts. Docket No. 288 (Lin Decl.) ¶ 10. According to Xycarb, shrink fitting enables the outer member to "clamp tightly" around the inner member so that the two are held together by "mechanical clamping." Docket No. 289 (Maltiel Decl.) ¶ 17.
However, the prosecution history indicates that Lam's disclaimer of "clamp[ing] together with a mechanical structure" did not extend to clamping that results from shrink fitting. Lam made its disclaimer to overcome Takao. The Examiner described Takao's invention as follows: "the support frame (electrode body 4) comprises a ring (sealed ring 12) which is secured above the periphery of the disk (electrode 7)" and "the insulating ring coupled with the sealing ring bonds or fastens the electrode (7) to the frame (4)." Docket No. 265 Exh. 3 at 19 of 54. Thus, Takao disclosed fastening the electrode disk to the frame with a clamp in the form of a ring (12), which was separate from the two components (4 and 7). This coincides with the primary notion of clamping, achieved by a clamp that is distinct from the components that it holds together. See, e.g., Oxford English Dictionary ("to fasten with a clamp or clamps"; the primary definition of the noun "clamp" is: "a brace, clasp, or band, usually of iron or other rigid material, used for giving strength and support to flexible or movable objects, or for fastening two or more things securely together").
Thus, because Lam disclaimed clamping with a mechanical structure to overcome Takao and Takao did not in any way disclose shrink fitting, Lam did not disclaim shrink fitting by disclaiming clamping with a mechanical structure.
Xycarb argues that "weight should be given to the fact that the PTO understood Lam's definition of `bonded' to only encompass `soldering,' `brazing,' and `adhesive joints.'" Xycarb's Responsive Claim Construction Br. at 14. The Examiner had stated:
Docket No. 265 Exh. 3 at 18 of 54. The Examiner did not himself construe "bonding" to be limited to soldering, brazing, and adhesive joints. Nor did the Board of Appeal. See Docket No. 265 Exh. 5 at 17 of 21. Therefore, there can be no estoppel effect.
Moreover, there is no evidence that Lam represented to the Examiner that "bonding" would be limited to soldering, brazing and adhesive joints. The statement of Lam cited by Xycarb stated:
Docket No. 265, Exh. 2 at 24, 26 of 120. Thus, Lam excluded from bonding, clamping with a mechanical structure, but it did not limit bonding to soldering, brazing, and adhesive joints.
The parties agree that "[s]hrink fitting utilizes thermal expansion and then contraction of material to mate two parts that would otherwise interfere with each other at their normal temperature." Glew Decl. ¶ 10. In particular, shrink fitting requires thermal expansion and does not require bonding material or a bonding layer to mate the two parts. See Lin Decl. (Docket No. 288) ¶ 12. The parts are held together by compression.
The Abstract of the `266 Patent provides:
Thus, the Abstract requires the support frame and electrode plate to be bonded using a bonding layer. The Summary of the Invention, while not express, also assumes use of a bonding layer:
`266 Patent col. 2:29-43. Since shrink fitting does not require bonding materials or a bonding layer, the Abstract and Summary tends to show that shrink fitting is excluded from the bonding contemplated by the `266 Patent.
Significantly, the Abstract and Summary of Invention is entitled to greater consideration in claims construction than a preferred embodiment, particularly where it is clear the preferred embodiment is meant to be merely illustrative. See Genzyme Corp. v. Transkaryotic Therapies, Inc., 345 F.3d 1094, 1099 (Fed. Cir. 2003) (holding that the specification limited the scope of a term to a particular technique, noting: "the `Summary of the Invention' explicitly states that the `present invention,' not merely a preferred embodiment involves the [technique].")]
Lam argues that other language of the specification describes shrink fit, in particular:
`266 Patent 6:53-58 (emphasis added). This contains the statement (*) ("More specifically, . . .") discussed earlier. Pointing to the difference in thermal expansion coefficients in (*), Lam argues that the compressive force exerted by the support ring on the electrode plate is achieved by shrink fit. Glew Decl. ¶ 17. However, the description in (*) entails two conditions, (1) forming the support ring "from a material that has a slightly larger thermal expansion coefficient than that of the electrode plate" and (2) "forming or curing the bonding layer at a temperature above the expected operating temperature." Lam relies on the first condition but completely disregards the second. Because (*) requires a bonding layer, and shrink fit does not, (*) does not disclose shrink fit.
Further, each time thermal expansion — which is necessary for shrink fit — is mentioned in the `266 Patent, a "bonding layer" is present. A search for the term "expansion" in the Patent yields the following passages:
The first five passages do not disclose shrink fitting because a bonding layer is present. Claim 33 is discussed below.
In addition, the figures in the Patent suggest bonding excludes shrink fitting. The figures show both the electrode plate and support ring to be completely flat, without any structural component that would allow mating with the support frame through shrink fitting. The two components are connected along the flat area in which they come into contact.
Thus, the specification does not disclose shrink fitting.
Lam asserts that Claim 32 discloses shrink fitting. Claim 32 reads (emphasis added): An electrode assembly as in claim 18, wherein the support ring is pre-stressed to impart a radially inward compression on the electrode disk.
As discussed above, pre-stress of the support ring is described in the specification in (*). It requires (1) forming the support ring "from a material that has a slightly larger thermal expansion coefficient than that of the electrode plate" and (2) "forming or curing the bonding layer at a temperature above the expected operating temperature," so that "the support ring will apply a constant compressive force on both the electrode plate and the bonding layer." `266 Patent 6:52-58. As above, because shrink fit does not require a bonding layer whereas Claim 32 does (via the definition of "pre-stressed"), Claim 32 does not disclose shrink fit.
Lam asserts that Claim 33 discloses shrink fitting. Claim 33 reads:
Lam asserts that "Claim 33 describes a method for integrating the support ring and the electrode plate by shrink fitting alone," "with the shrink fitting described therein being the only disclosed way of integrating the components." Lam Opening Br. at 17. Lam argues that "the desired stress, as used in Claim 33, is the compressive stress that is required to form the electrode assembly by shrink fitting." Docket No. 274 (Glew Decl.) ¶ 18. Lam relies on the "pre-stress" mentioned in Claim 32 and the "radially directed inward compression" of (*). However, as already discussed, the pre-stress mentioned in Claim 32 and (*) entail a bonding layer, and thus does not result from shrink fit.
Contrary to Lam's assertion, the Claim 32 and the specification indicate that the "desired stress" is pre-stress, not the compressive stress necessary for shrink fit. From Claim 33 alone, it is unclear what "desired stress" is. However, viewed in context, it is evident that desired stress in Claim 33 pertains to pre-stress. Looking to the specification and other claims, the word "stress" occurs six times, as indicated in bold: col. 4:30-34 ("The geometry of the electrode plate will generally be symmetric and relatively simple in order to enhance uniform electrical and thermal characteristics as well as minimize
The prosecution history also shows that the "desired stress" is pre-stress. The Examiner had rejected Claim 33 as unpatentable over Shigeru (in view of Yamada), on the grounds that "Shigeru teaches bonding the backing plate to an electrode plate . . . wherein the material of the electrode plate (Cu) has a higher coefficient of thermal expansion than that of the electrode plate (silicon dioxide); and allowing the bonded assembly to return to room temperature, whereby the differential contraction imparts the desired stress." Docket No. 265 Exh. 1 at 12-13 of 16. In response, Lam objected on the grounds that it, not Shigeru, had disclosed "desired stress," and explained "desired stress" as follows:
Docket No. 265 Exh. 2 at 105-06 of 120 (emphasis added) (references omitted). Lam thus pointed to the disclosure for the meaning of "desired stress," and equated it with pre-stress.
In short, Claim 33 does not disclose shrink fit, because the compressive force it discloses is pre-stress, which entails bonding material to bond the support ring to the electrode plate, not shrink fitting.
"[A] claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed." 35 U.S.C. § 112(d). "`[C]laim differentiation' refers to the presumption that an independent claim should not be construed as requiring a limitation added by a dependent claim." Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1380 (Fed. Cir. 2006) (citations omitted). "[R]eading an additional limitation from a dependent claim into an independent claim would not only make that additional limitation superfluous, it might render the dependent claim invalid." Id.
Claim 1 claims "a support frame . . . bonded to a back face of the plate." Claim 10 claims "[a]n improved reactor as in claim 1, wherein the plate is bonded to the support frame by means of a bonding layer." Under the doctrine of claim differentiation, the presumption would be that a bonding layer is not always necessary for bonding under Claim 1. This does not imply, however, that bonding encompasses shrink fitting. First, there are bonding methods other than shrink fitting that do not require bonding layers. The parties agreed during the hearing that welding is a form of metallurgical bonding that does not require a bonding layer (as is mechanical clamping, which Lam disclaimed after the `456 Patent issued). See also, Docket No. 265 Exh. 2 at 27 of 120 (Lam stating that bonding may encompass diffusion bonding). Second, shrink fitting entails thermal expansion, and as discussed above, whenever thermal expansion is mentioned in the `266 Patent, a bonding layer is present.
The Court also takes note that, despite Lam's conclusion that shrink fit has been well known and used for "decades," the `266 fails to mention it as a suitable bonding method either in the claims or specifications. Such an omission would be curious if the `266 were intended to encompass such well-known and utilized technology.
The Court further notes that Claim 33's requirement that "the materials of the support ring has a higher coefficient of thermal expansion than that of the electrode plate" is not necessary for shrink fit. As Xycarb has pointed out, shrink fit can be accomplished by heating only the support ring before fitting it over the compression points of the electrode plate and letting it cool. To accomplish shrink fit, there is no need for a differential coefficient of thermal expansion between the support ring and electrode plate. Indeed, if shrink fit were used where the support ring has a higher coefficient than the electrode plate, as operating temperatures increase, the grip or compressive force of the shrink fit would diminish; it is hard to understand why this would be a desirable result.
In summary, the claims and specification exclude shrink fitting from bonding.
The extrinsic evidence also tends to show "bonded' excludes shrink fit. See Xycarb's Responsive Claim Construction Brief at 3-4. In 1995, five years after the `456 Patent had been issued, Lam was providing IBM with electrode assemblies where the electrode plate was metallurgically bonded to a support frame by soldering with indium. Docket No. 287 Exh. 2 (Maddock Decl. attached to Tam Decl.) ¶ 7; Docket No. 273 Exh. E (van den Cruijsem Decl. attached to Clark Decl.) ¶ 28. Lam found that "metallurgical bonds such as [indium] bonds cause the electrode to warp due to differential thermal expansion/contraction of the electrode the part to which the electrode is bonded," and that "metallurgical bonds fail at high plasma processing powers due to thermal fatigue and/or melting of the bond." Docket No. 273 Exh. K (Lam's `577 Patent) 1:27-33. IBM experienced problems with the Lam electrode, such as "delamination, contamination, [and] particle generation," and contacted Xycarb to request an improved version of Lam's electrode. Docket No. 273 Exh. E (van den Cruijsem Decl. attached to Clark Decl.) ¶ 28. Xycarb began investigating a method to integrate the electrode and support frame without bonding materials, to avoid infringing the `456 Patent, and approximately one year later, had the shrink fit concept. Docket No. 82 (van den Cruijsem Decl.) ¶¶ 7-8. This evidence tends to show that a person skilled in the art would not understand from the `266 Patent that the bonding could be achieved by shrink fit.
Further, Lam's `577 Patent (2000) describes the `456 Patent as follows: "The `456 patent discloses an electrode assembly for a parallel plate reactor apparatus wherein the upper electrode is of semiconductor purity and bonded to a support frame by adhesive, solder, or brazing layer." Docket No. 273-K (Lam `577 Patent) 1:19-22. Thus, Lam's own description of the `266 Patent tends to show "bonded" in the `266 Patent does not include shrink fit.
The prosecution history shows that Lam disclaimed clamping with a mechanical structure. The claims, specification, and extrinsic evidence show that bonding does not include shrink fitting. Thus, the Court excludes from "bonded" connections maintained solely by mechanical force.
These terms appear only in Claim 33.
Xycarb asserts that the term "desired stress" is indefinite because the type and amount of stress is not defined. It asserts that, consequently, Claim 33 is invalid.
The requirement that a claim be "definite" derives from 35 U.S.C. § 112, ¶ 2.
Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008) (citations omitted). On the other hand,
Id. at 1249-50 (quoting Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001); Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005)).
The type of stress is not indefinite. As discussed above, the "desired stress" is pre-stress. The question is whether ambiguity as to the amount, or more precisely, the range of permissible pre-stress, renders "desired stress" indefinite. The Court finds it does not. As discussed above, the specification describes pre-stress as follows:
`266 Patent col. 6:48-58. Obviously, the "thermal expansion mismatch between the electrode plate and support ring" should not be so high as to "result in breaking or fracturing of the bond or the electrode plate." Id. at 5:59-62.
The Court notes that it would be difficult to specifically quantify the range of the desired stress, since it depends on various parameters, such as the bonding material, the ductility of the bonding layer, the difference in thermal expansion coefficients, the material of the electrode plate, and changes in temperature. The specification provides one concrete example: soldering with indium at a temperature of about 310° F. to 320° F, tolerates a "large mismatch" in thermal expansion coefficients. Id. at col. 6:12-16. Other materials may have different tolerances. On the other hand, the strength of the compressive force created by pre-stress can be calculated in terms of the difference in thermal expansion coefficients and temperature. See Lin Decl. at 8; Glew Decl. ¶ 13. Then, depending on how brittle the electrode plate and how ductile the bonding layer are, a permissible range of pre-stress can be determined.
Thus, "desired stress" is not "insolubly ambiguous." Xycarb has not shown that the described stress sufficient to perform the compressive function but not so excessive as to cause the plate to warp or fracture cannot be calculated by those knowledgeable in the field.
The expert opinions of both parties show that the "coefficient of thermal expansion" is a well-established concept. The Court's definition is based on Glew's testimony. Docket No. 274 ¶ 12. ("Coefficient of thermal expansion describes the change in volume of a material per unit change in temperature, commonly measured in parts per million per degree Kelvin. The CTE is commonly measured in metric units of parts per million (PPM) per degree ºC, or ºK if one prefers.")
Xycarb inexplicably objects to Lam's definition on the grounds that "nowhere in the specification" is the "coefficient of thermal expansion" defined. The definition of a well-established concept need not be based on only the specification. Moreover, Xycarb does not substantively object to Lam's construction.
The Court adopts Lam's proposed construction. Xycarb again objects that this definition does not appear in the specification. However, there is no dispute and little doubt what the term means, and Lam's proposed construction adequately captures the meaning.
Lam asserts that the Court need not construe Term 1 because it has been rendered moot by Xycarb's admission that the plate it uses has "substantially uniform thickness." Van den Cruijsem (who is an employee of Xycarb and Business Manager of Schunk Semiconductors, which wholly owns and controls Xycarb, see Docket No. 273 Exh. E (van den Cruijsem Decl.) ¶ 1, admits that Xycarb's electrode plate is substantially uniform in thickness as the term is used in the `456 Patent. Docket No. 273 Exh. F (van den Cruijsem deposition) at 12 of 14. Lam asserts that this admission renders the term undisputed.
"When there is no dispute as to the meaning of a term that could affect the disputed issues of the litigation, `construction' may not be necessary." Hakim v. Cannon Avent Grp., PLC, 479 F.3d 1313, 1318-19 (Fed. Cir. 2007). This does not mean that courts must not construe undisputed terms, and the cases Lam cites do not so hold. E.g., NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1311 (Fed. Cir. 2005) ("Terms not used in claims in controversy on appeal need not be construed.") (emphasis added).
The Court will construe the term to add clarity. Lam objects to Xycarb's definition on the grounds that "generally flat" and "the same thickness from the center to the edge of the plate" "simply restate[] the plain and ordinary meaning of `uniform.'" In other words, it does not disagree that "the same thickness from the center to the edge of the plate" coincides with the plain and ordinary meaning of "uniform." Since "the same thickness from the center to the edge of the plate" is more concrete than simply "uniform," the Court adopts this formulation. The phrase "generally flat" Xycarb seeks to insert adds little additional meaning.
The terms appear in Claims 1 and 18, where the "back face of the plate" is attached to the support ring, and the "front face of the plate" is exposed to the other electrode. The meanings of "face of the plate" and "face of the disk" are clear. The surface of the electrode disk is composed of top and bottom faces in the form of disks ("disk" in the 2-dimensional sense) and a side in the form of a cylinder. The terms refer to the top and bottom faces.
Xycarb's definition is confusing. It is unclear what "outermost" is. Further, inserting "flat" gives the impression that the plate or disk is perfectly flat, but this may not be. Claim 18 speaks of "substantially flat and free from protuberances" and "an electrode disk . . . having a substantially uniform thickness." `266 Patent col. 9:28-32.
The plain and ordinary meaning should be used.
This term is no longer disputed. The parties agree that the plain and ordinary meaning should be used. See Xycarb's Response Br. at 25.
The term appears in Claims 5, 18, 33, respectively, as follows: "secured about the periphery of the disk," "bonded about the periphery of one face of the disk," and "bonding the support about the periphery of the electrode plate."
Lam cites the Merriam-Webster Dictionary, stating that "periphery" means "`the outward bounds of something as distinguished from its internal regions or center.'" Lam's Opening Br. at 16. It adds that Figure 2A illustrates "outward boundary." Id. The Court agrees with Lam that the plain and ordinary meaning is adequate. The Court adds the reference to Figure 2A for concreteness.
Xycarb's proposed definition adds more confusion than clarity. It is unclear what "at or coincident with the outermost edge" means.
The plain and ordinary meaning is adequate. Xycarb's "flat, outermost surface" is unclear for the reasons stated above and "on the back of the electrode plate" is redundant.
This order disposes of Docket Nos. 264 and 278.
IT IS SO ORDERED.
