ORDER CONSTRUING '750, '776, AND '811 PATENTS; DENYING CROSS-MOTIONS TO STRIKE; AND DENYING IN PART AND SETTING BRIEFING SCHEDULE ON DEFENDANT'S MOTION FOR SUMMARY JUDGMENT OF INDEFINITENESS
Pending before the Court is the parties' dispute about the proper construction of three patents that relate to the production and design of computer memory chips, called EEPROMs, that are programmable, electrically erasable, and non-volatile. These chips are useful in applications, such as programmable car radios, in which it is advantageous to enable the device to be programmed by the user, but to retain its information when power to the device is disconnected. Two of the patents at issue, patent number 4,822,750 ("the '750 patent") and patent number 4,701,776 ("the '776 patent") respectively, describe a process for manufacturing and a particular physical embodiment of such chips. These patents spring from a single application;
although they have different claim language, they retain identical specifications that describe both the process and the device.
Programming EEPROMs requires higher voltages than are normally supplied to chips. The third patent, number 4,511,811 ("the '811 patent"), describes a combination of electrical circuits that enables programming voltages to be generated on the chip instead of supplied from an external high-voltage source, an innovation that saves space and allows the devices to be manufactured more cheaply.
In June 1995, plaintiff filed a complaint in federal court alleging that defendant was infringing these patents. The Court held two tutorials, conducted off the record, in late 1996 and 1997, in order to understand the technology underlying the patents. Briefing on the issue of claim construction began in October 1997. In November 1997, defendant filed a motion for summary judgment of indefiniteness, which it requested the Court consider simultaneously to the claim construction. The Court vacated the hearing on that indefiniteness motion, ruling that it would be more efficient to consider it after it had construed the claims. Defendant also moved to strike a portion of the declaration of plaintiff's counsel on the ground that it contained argument rather than fact; plaintiff moved to strike the declarations of defendant's experts on the ground that they contained argument and legal conclusions. The Court took these motions to strike under submission.
A Markman hearing was held January 12 and January 13, 1998, at which the Court heard limited expert testimony to clarify several ambiguous terms. Having considered the parties' extended briefs and the evidence and arguments presented at the hearing, the Court issues the following ruling.
I. Legal Standard for Claim Construction
A. General Principles
The Court ordinarily determines the meaning and scope of a patent as a matter of law. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S. Ct. 1384, 1387, 134 L. Ed. 2d 577 (1996). In construing a patent, the Court considers three sources, known as intrinsic evidence: the claims, the specification, and the prosecution history.
See Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1561 (Fed. Cir. 1991). "Unless the specification or the file history indicates that the inventor intended otherwise, a claim term will be accorded its ordinary and accustomed meaning." Wolverine World Wide, Inc. v. Nike, Inc., 38 F.3d 1192, 1196 (Fed. Cir. 1994). The Court will refer to extrinsic evidence, such as expert and inventor testimony, dictionaries, and learned treatises, only if the claim terms are ambiguous and are not defined by the specification and prosecution history. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996).
It is generally improper to limit the scope of the claim to examples used in the specifications, see Electro Med. Sys. v. Cooper Life Sciences, 34 F.3d 1048, 1054 (Fed. Cir. 1994), although the Court may use the patent specification to ascertain the meaning of a claim. See Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1561-62 (Fed. Cir. 1991). Means-plus-function claims present a special case, however. When such a claim discloses a means for performing a function "without the recital of structure, material, or acts in support thereof, . . . such claim shall be construed to cover the corresponding structure, material, or acts disclosed in the specification and equivalents thereof."
35 U.S.C. § 112, P 6; see also Valmont Industries, Inc. v. Reinke Manufacturing Co., 983 F.2d 1039, 1042 (Fed. Cir. 1993).
Under a means-plus-function analysis, if the specification mentions specific alternative structures, those structures are included in the scope of the patent. See Serrano v. Telular Corp., 111 F.3d 1578, 1583 (Fed. Cir. 1997). A specification that merely mentions the possibility of alternative structures without specifically identifying them is not sufficient to expand the scope of the claim beyond the example used. See Fonar Corp. v. General Elec. Co., 107 F.3d 1543, 1551 (Fed. Cir.), cert. denied, 139 L. Ed. 2d 192, 118 S. Ct. 266 (1997).
B. Construction of Related Patents
Identical or "indisputably interchangeable" claim terms in patents that share a common ancestry should be construed consistently. See Abtox v. Exitron Corp., 122 F.3d 1019, amended 131 F.3d 1009, 1010 (Fed. Cir. 1997) ("gas-confining chamber" and "gas-tight confining chamber" were "indisputably interchangeable"); Jonsson v. Stanley Works, 903 F.2d 812 (Fed. Cir. 1990). Nothing in these cases, however, extends the rule to terms that are merely "similar" or "parallel," as defendant would have the Court hold.
Notwithstanding this special rule about identical or "indisputably interchangeable" claim terms, it is improper to use a portion of a parent's specification that relates solely to one child patent to construe directly a different child. See Abtox, 122 F.3d at 1027. In using prosecution history, "statements in the parent application must be confined to their proper context." Id. at 1026-27 (where parent application disclosed both microwave and radio frequency technology, it was error to import limitations relating to radio technology into a child patent solely relating to microwave technology).
II. Construction of the '776 Patent
At the time the '776 patent was issued in 1987 (the '750 patent was issued in 1989), EEPROMs were known in the prior art. See '776 patent, 1:16-2:32. The '776 patent describes an improved structure for such a device, which was intended to reduce the sensitivity of the chips to minor variations in the positions their component parts, enabling the chips to be successfully mass-produced in smaller sizes.
The '776 patent claims:
1. An electrically programmable, electrically erasable MOS memory device for use in a memory array having a plurality of memory cells arranged on a substrate of a first conductivity type, said substrate having at least one well structure of a second conductivity type formed therein to a first predetermined depth in a region other than the substrate region which supports said plurality of memory cells, said memory device comprising: