Opinion
Civil Action No. 2:05CV319.
July 13, 2006.
David L. Witcoff, Matthew David Kellam, Stacy Ann Baim, Jones Day, Chicago, IL, Jenny L. Sheaffer, Michelle K. Fischer, Patrick James Norton, Robert H. Rawson, Jr., Susan M. Gerber, Jones Day, Cleveland, OH, Allen Franklin Gardner, Michael Edwin Jones, Potter Minton PC, Tyler, TX, Kajeer Yar, Michael J. Newton, Jones Day, Dallas, TX, for Plaintiffs.
Thomas John Ward, Jr., Law Office of T. John Ward Jr., PC, Elizabeth L. Derieux, Sidney Calvin Capshaw, III, Brown McCarroll, Longview, TX, Benjamin W. Hattenbach, Elliot N. Brown, Ellisen S. Turner, Jonathan H. Steinberg, Joseph M. Lipner, Morgan Chu, Peter Shimamoto, Reynaldo C. Barcelo, Thomas C. Werner, Trevor V. Stockinger, Irell Manella LLP, Los Angeles, CA, David K. Djavaherian, Rudolph Y. Kim, Irell Manella, Newport Beach, CA, Franklin Jones, Jr., Jones Jones, Harry Lee Gillam, Jr., Melissa Richards Smith, Gillam Smith, L.L.P., Marshall, TX, Jack Wesley Hill, Otis W. Carroll, Jr., Ireland Carroll Kelley, Tyler, TX, for Defendant.
MEMORANDUM OPINION AND ORDER
This claim construction opinion construes terms in U.S. Patent Nos. 4,992,849 ("the '849 patent"), 5,107,328 ("the '328 patent"), and Re. 36,325 ("the '325 patent"). Plaintiffs, Micron Technology, Inc. and Micron Semiconductor Products, Inc. (collectively "Micron"), have asserted several other patents against Defendant, Tessera, Inc. ("Tessera"), in this lawsuit, but only claim language from the '849, '325, and '328 patents remains in dispute.
The Patents
The patents in suit generally deal with microchip packaging. The '328 patent describes a means for packaging a semiconductor die with centrally or laterally located bond pads without the use of a lead frame. In the past, as semiconductor dies got smaller, new smaller frames also had to be designed. By dispensing with the lead frame altogether, the '328 patent allows the package to accommodate smaller dies without the necessity of designing another lead frame. The package houses the die in a series of shelves, which are capped by a lid and a base.
Both the '849 and '325 patents relate to means for connecting multiple semiconductor die onto a polymide substrate where the substrate functions as both a lead frame connection for the semiconductor die and as a printed circuit board.
Applicable Law
"It 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) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). In claim construction, courts examine the patent's intrinsic evidence to define the patented invention's scope. See id.; C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Communications Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). This intrinsic evidence includes the claims themselves, the specification, and the prosecution history. See Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at 861. Courts give claim terms their ordinary and accustomed meaning as understood by one of ordinary skill in the art at the time of the invention in the context of the entire patent. Phillips, 415 F.3d at 1312-13; Alloc, Inc. v. Int'l Trade Comm'n, 342 F.3d 1361, 1368 (Fed. Cir. 2003).
The claims themselves provide substantial guidance in determining the meaning of particular claim terms. Phillips, 415 F.3d at 1314. First, a term's context in the asserted claim can be very instructive. Id. Other asserted or unasserted claims can also aid in determining the claim's meaning because claim terms are typically used consistently throughout the patent. Id. Differences among the claim terms can also assist in understanding a term's meaning. Id. For example, when a dependent claim adds a limitation to an independent claim, it is presumed that the independent claim does not include the limitation. Id. at 1314-15.
Claims "must be read in view of the specification, of which they are a part." Id. (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 978 (Fed. Cir. 1995)). "[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. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). This is true because a patentee may define his own terms, give a claim term a different meaning than the term would otherwise possess, or disclaim or disavow the claim scope. Phillips, 415 F.3d at 1316. In these situations, the inventor's lexicography governs. Id. Also, the specification may resolve ambiguous claim terms "where the ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of the claim to be ascertained from the words alone." Teleflex, Inc., 299 F.3d at 1325. But, "although the specification may aid the court in interpreting the meaning of disputed claim language, particular embodiments and examples appearing in the specification will not generally be read into the claims." Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998); see also Phillips, 415 F.3d at 1323. The prosecution history is another tool to supply the proper context for claim construction because a patent applicant may also define a term in prosecuting the patent. Home Diagnostics, Inc., v. Lifescan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) ("As in the case of the specification, a patent applicant may define a term in prosecuting a patent.").
Although extrinsic evidence can be useful, it is "less significant than the intrinsic record in determining `the legally operative meaning of claim language.'" Phillips, 415 F.3d at 1317 (quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a court understand the underlying technology and the manner in which one skilled in the art might use claim terms, but technical dictionaries and treatises may provide definitions that are too broad or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert testimony may aid a court in understanding the underlying technology and determining the particular meaning of a term in the pertinent field, but an expert's conclusory, unsupported assertions as to a term's definition is entirely unhelpful to a court. Id. Generally, extrinsic evidence is "less reliable than the patent and its prosecution history in determining how to read claim terms." Id.
The Terms
The '849 and '325 PatentsProceeding on two separate theories, Tessera argues that the preambles to Claim 1 of the '849 and '325 patents limit those claims. Tessera's first theory is that these claims were written in Jepson form because they "first describe the scope of the prior art and then claim an improvement of the prior art." Dow Chem. Co. v. Sumitomo Chem. Co., Ltd., 257 F.3d 1364 (Fed. Cir. 2001); 37 C.F.R. § 1.75(e). Alternatively, Tessera argues that the preambles are limiting because they recite essential structure that is important to the invention or necessary to give meaning to the claim. NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1305-06 (Fed. Cir. 2005), cert. denied, ___ U.S. ___, 126 S.Ct. 1174, 163 L.Ed.2d 1141 (2006). The Court finds that both preambles are limiting, but were not written in Jepson form.
'325 Patent, Preamble to Claim 1: A memory array in which a plurality of memory circuit devices are arranged in a manner such that memory information is obtained by addressing bits of information from a selected number of the memory devices in the array in a format, and the format of bits forms a byte of memory data such that each byte includes bits from each memory device in the selected number of the circuit devices, and wherein the bits are addressed as rows and columns of information in a matrix on each memory device, characterized by.
'849 Patent, Preamble to Claim 1: Board level integrated circuit in which a plurality of semiconductor circuit devices are arranged on a flexible circuit board and each of the semiconductor circuit devices is a distinct integrated circuit chip, characterized by.
37 C.F.R. § 1.75(e) sets forth the requirements for Jepson claims, and provides:
Where the nature of the case admits, as in the case of an improvement, any independent claim should contain in the following order: (1) a preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known, (2) a phrase such as "wherein the improvement comprises," and (3) those elements, steps and/or relationships which constitute that portion of the claimed combination which the applicant considers as the new or improved portion.
Courts rely on Rule § 1.75(e)(1) when analyzing Jepson issues. See Epcon Gas Systems, Inc. v. Bauer Compressors, Inc., 279 F.3d 1022, 1029 (Fed. Cir. 2002); Kegel Co. v. AMF Bowling, Inc., 127 F.3d 1420, 1426 (Fed. Cir. 1997). In a Jepson claim, the "preamble defines not only the context of the claimed invention, but also its scope." Rowe v. Dror, 112 F.3d 473, 479 (Fed. Cir. 1997). By employing the Jepson form the patentee evidences the intention "to use the preamble to define, in part, the structural elements of his claimed invention." Epcon Gas, 279 F.3d at 1029; Rowe, 112 F.3d at 479; Kegel, 127 F.3d at 1426.
Rule § 1.75(e) and the associated case law require that Jepson claims contain specific information in a narrowly defined form, and the Court is aware of no exceptions to these requirements. In arguing that Claim 1 of the '325 and '849 patents are Jepson claims, Tessera seeks to impermissibly relax these requirements.
Tessera argues that the preambles were drafted in Jepson form because the preamble language corresponds with prior art depicted in Figure 2 of the patent, and because the prior art references in the preamble are further described in the specification. However, the preamble of a Jepson claim must do more than refer to prior art that is more fully described elsewhere in the patent. Rule § 1.75(e)(1) requires that the preamble set forth a "general description all of the elements or steps of the claimed combination which are conventional or known." Tessera seems to suggest that a preamble written in Jepson form need only refer to prior art to satisfy Rule § 1.75(e)(1). The Court disagrees.
The preamble of a Jepson claim is drafted to "define, in part, the structural elements of [the] claimed invention." Epcon Gas, 279 F.3d at 1029; Rowe, 112 F.3d at 479; Kegel, 127 F.3d at 1426. Therefore, it is reasonable to require that the preamble set forth the elements or steps of the prior art that are improved upon so that the public may be fairly notified of the scope of the invention. Tessera cites no authority to support its argument that a preamble may be written in Jepson form if what is described in the preamble is described elsewhere in the specification as prior art, and the Court sees no reason to so interpret Rule § 1.75(e)(1). However, even assuming the preambles of the '849 and '325 comported with Jepson form, these claims lack the necessary transitional phrase indicating that the subsequent language comprises an improvement over the previously stated prior art.
The preambles at issue conclude with the phrase "characterized by," but Rule § 1.75(e)(2) requires that Jepson claims employ "a phrase such as `wherein the improvement comprises' (emphasis added)." Although the phrase "such as" offers some leeway to the patentee, Tessera cites no authority to suggest the phrase "characterized by" satisfies Rule § 1.75(e)(2). The caselaw reflects some variation in the phrases used in Jepson claims, but they all communicate that the subsequent claim language constitutes an improvement. Neutrik AG v. Switchcraft, Inc., 31 Fed.Appx. 718, 720 ("the improvement comprising"); Epcon Gas, 279 F.3d at 1029, 1030 ("the improvement wherein"); Dow Chemical v. Sumitomo Chemical Co., Ltd., 257 F.3d 1364 ("the improvement which comprises"); DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d 1314, 1318 ("an improvement comprising"); Kegel, 127 F.3d at 1426, 1423 ("the improvement comprising") Rowe, 112 F.3d at 476 ("the improvement comprising"). All of these phrases communicate that the preceding language described prior art and the subsequent language describes an improvement over that prior art. The phrase "characterized by" without more, is insufficient to satisfy Rule § 1.75(e)(2) because it fails to communicate that the subsequent language comprises an improvement over the previously stated elements or steps of prior art. As stated above, the narrowly defined Jepson form must be followed closely so that the public may be notified of the scope of the invention. Therefore, the Court cannot find that Claim 1 of either the '849 or the '325 patents is written in Jepson form.
The Court is not precluding the possibility that the foregoing language, which would presumably be the preamble, may contain other language not comprising prior art. However, in order to satisfy Rule § 1.75(e)(2), no prior art may appear after the phrase.
The Court also notes that Tessera cites no evidence from the prosecution history to suggest that Micron intended to draft these claims in Jepson form. See Epcon Gas, 279 F.3d at 1029; Rowe, 112 F.3d at 479; Kegel, 127 F.3d at 1426. Although other evidence could establish whether Micron intended to draft these claims in Jepson form, the prosecution history can be particularly helpful in determining the patentee's intent. See Epcon Gas, 279 F.3d at 1029; Polaroid Corp. v. Eastman Kodak Co., 519 F.Supp. 381, 384 (D.C. Mass. 1981).
The Court will now address whether the preambles are limiting without regard to Jepson form. When limitations in the body of a patent claim rely upon, and derive antecedent basis from, the claim preamble, the preamble may act as a necessary component of the claimed invention. Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952 (Fed. Cir. 2006). In order to be limiting, the preamble must recite essential structure that is important to the invention or necessary to give meaning to the claim. Id. citing NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1305-06 (Fed. Cir. 2005), cert. denied, ___ U.S. ___, 126 S.Ct. 1174, 163 L.Ed.2d 1141 (2006). However, a preamble is not considered limiting "where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention." Rowe, 112 F.3d at 478 (Fed. Cir. 1997).
In the '325 preamble, the phrase "a memory array in which a plurality of memory circuit devices are arranged" is limiting because "memory array" and "memory circuit devices" provide antecedent basis for "the memory array" and "the memory devices" in part (e) of the body of Claim 1. 8:39-40; 9:7. Further, the phrase provides essential structure to the invention not set forth in the body of the claim. Bicon, Inc., 441 F.3d at 952. However, the remainder of the preamble is not limiting because it describes the claimed invention's purpose or intended use, rather than describing essential structure. See 8:40-47; Rowe, 112 F.3d at 478. This segment of the preamble describes how the arrangement of memory devices may allow memory information to be obtained, but it does not describe any essential structure. By contrast, the entire '849 preamble is limiting because it recites essential structure and provides antecedent basis for part (b) of the body of Claim 1. See 9:5,7, and 14.
The '328 Patent Conductive leads for electrically coupling with an electronic device, wherein said conductive leads electrically couple with said conductive traces
There are several points of contention concerning the construction of this claim language, and the Court will address them individually. To begin with, Tessera argues that the entire phrase should be construed, whereas Micron contends only "conductive leads" requires construction. The Court agrees with Micron that only the phrase "conductive leads" should be construed.
Micron argues "conductive leads" are "conductive I/O elements on the outside of the body." Tessera argues the entire phrase should be construed to mean "[a]n electrical conductor, made up of electrically conductive material, long and thin, not shaped as a mass, used as input/output (I/O) for connecting the package body to an external device. The conductive leads are connected to the conductive traces to provide an electrical current path between the leads and the traces."
For the purposes of this discussion, the disputed claim language can be roughly broken up into three parts. First, "conductive leads," are identified, then the relationship between the "conductive leads" and the "electronic device" is described, and finally the relationship between the "conductive leads" and the "conductive traces" is described. In each relationship, the "conductive leads" "electrically couple" or are "electrically coupling," with the "conductive traces" and "electronic device," respectively. Properly understood, the entire phrase describes "conductive leads" acting as electrically conductive bridges between the "conductive traces" and the "electronic device." That understanding may be gained from the plain and ordinary meaning of the language, and even if it were not, the Court would not adopt Tessera's construction because it offers no more guidance than the claim language itself.
Tessera's construction tracks the three part structure described above. In describing the relationship between "conductive leads" and "an electronic device," Tessera's construction provides that "conductive leads" are "used as input/output (I/O) for connecting the package body to an external device." Compare 8:1-2 ("conductive leads for electronically coupling with an electronic device."). Essentially, Tessera substitutes "connecting" for "electronically coupling," which would not offer much assistance to a juror. See Sulzer Textil A.G. v. Picanol N.V., 358 F.3d 1356, 1366 (Fed. Cir. 2004).
The construction goes on to say that "[t]he conductive leads are connected to the conductive traces (emphasis added)" and then clarifies that the purpose of that connection is "to provide an electrical current path between the leads and the traces." Compare 8:2-3 ("conductive leads electronically couple to said conductive traces."). Here, Tessera has broken up the phrase "electrically couple" into two phrases that are longer, but not significantly more helpful, than the phrase itself. Tessera's construction is not incorrect or confusing, but it simply reorganizes the claim language without offering more guidance than the claim language itself, which makes Tessera's construction unhelpful, and therefore, improper. Sulzer, 358 F.3d at 1366.
The Court will now address the parties' arguments regarding the construction of "conductive leads." The basic disagreement concerns Tessera's requirement that "conductive leads" be "long and thin, not shaped as a mass." Micron insists that the patent does not restrict the physical shape or size of the "conductive leads," but Tessera argues that Figures 2 and 3 depict "conductive leads" as long and thin, and further argues that one skilled in the art at the time the patent was issued would understand "conductive leads" to be "long and thin, not shaped as a mass." However, the claim language does not explicitly support such a limitation, nor do the specification or extrinsic evidence compel the conclusion that "conductive leads" must take on any particular physical form.
The Court will construe this term after having considered the parties pre- Markman briefing as well as their oral arguments at the Markman hearing and the supplemental post- Markman briefing.
Tessera's construction also describes "conductive leads" as "[a]n electrical conductor, made up of electrically conductive material." However, there is little dispute over the fact that "conductive leads" are electrically conductive, therefore, the Court will not address this segment of Tessera's construction.
Claim 11 recites all of the components comprising the logic component, and describes the pathway along which signals will travel between the electrical device and the semiconductor die. 7:29-32; 8:1-3 (describing "a second shelf having conductive traces thereon . . . wherein said traces couple with bond pads on the semiconductor die . . . conductive leads for electrically coupling with an electronic device, wherein said conductive leads electrically couple with said conductive traces."). The "conductive leads" occupy a portion of that pathway, but their physical characteristics are not mentioned; only the function of the "conductive leads" as a link in the chain between the semiconductor die and the device is referenced. Therefore, a proper understanding of the claim language requires emphasis on the role of the "conductive leads" rather than their form.
The specification implicitly refers to the "conductive leads" only three times, calling them "input/output (I/O) leads" or just "I/O leads." 2:24-26; 3:57-60; 4:45-48. Like the claim language, the specification focuses on the role "conductive leads" play, rather than their form. 2:24-26 (describing pads on the upper surface of the shelf being electrically coupled with conductive traces which attach to input/output (I/O) leads); 3:57-60 and 4:45-48 (describing coupling traces with I/O leads by means such as side brazing). Although Figures 2 and 3 depict "conductive leads" as long and thin, the Court declines to read that limitation into the claim. Burke, Inc., v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1341 (Fed. Cir. 1999).
Tessera also argues that, without regard to how the term "leads" is used within the patent, the meaning of "lead" was independently established at the time this patent issued, and any person skilled in the art would understand that "leads" were "long and thin, not shaped as a mass." Micron disputes Tessera's understanding, and the Court finds that the extrinsic evidence is not clear enough to support Tessera's limitation.
In support of its limitation, Tessera cites several patents issued around the time the '328 patent was issued that contain embodiments where "leads" are shown as relatively long and thin. However, the fact that these leads are long and thin does not necessarily require that leads in general must be "long and thin, not shaped as a mass." Tessera goes on to argue that the common understanding of "leads" excludes masses, bumps, or balls, pointing out that chip packages employing solder balls are known as "leadless packages" in the packaging industry. Micron counters that the common understanding of the word lead is much more inclusive, citing the 1989 Edition of the Electronic Materials Handbook, which defines "lead" as "[a] conductive path, usually self-supporting. That portion of an electrical component used to connect it to the outside world." Electronic Materials Handbook, Vol. 1 at 1148 (1989). This definition is consistent with the patent's treatment of the "conductive leads," which was based primarily on the function of the "conductive leads" rather than their form. As the extrinsic evidence is conflicted, the Court is reluctant to rely on that evidence to justify Tessera's more restrictive construction of "conductive leads." Phillips, 415 F.3d 1318 (Noting that extrinsic evidence is "less reliable than the patent and its prosecution history in determining how to read claim terms.")
The last point of contention concerns Micron's use of the phrase "on the outside of the body." Tessera objects to this language on the basis that "conductive leads" cannot be, at once, a part of a body and outside of that body. The Court disagrees with the logic underlying Tessera's argument, and finds that the additional language is consistent with the claim language and specification. The claim language describes a self-contained die package with "conductive leads for coupling with an electronic device (emphasis added)." The electronic device is separate from the claimed logic component, and the leads couple the package with the outside device. Thus, in order to couple with a separate device, it is seemingly necessary that the leads be on the outside of the body. The specification reinforces this understanding of the placement of the conductive leads. 3:57-59 ("the traces have means for coupling with I/O leads on the outside of the ceramic body."); 4:45-47 ("The traces have means for coupling with I/O leads on the outside of the body). Accordingly, the Court construes "conductive leads" to mean "conductive input/output (I/O) elements on the outside of the body."
Conclusion
For the foregoing reasons, the Court interp. rets the claim language in this case in the manner set forth above. For ease of reference, the Court's claim interpretations are set forth in a table attached to this opinion.
So ORDERED and SIGNED.