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International Test Solutions, Inc v. Mipox International Corporation

United States District Court, N.D. California

April 10, 2017

MIPOX INTERNATIONAL CORPORATION, et al., Defendants. Patent Claim Language Construction


          RICHARD SEEBORG United States District Judge


         International Test Solutions, Inc. (“ITS”) manufactures cleaning devices for semiconductor test equipment. It holds three patents at issue-U.S. Patent No. 6, 777, 966 (“the '966 patent”), No. 7, 202, 683 (“the '683 patent”), and No. 8, 801, 869 (“the '869 patent”)-and accuses Mipox International Corporation, MGN International, Inc., and Mipox Corporation (collectively “Mipox”) of infringing those patents. The parties seek construction of ten terms pursuant to Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc). For several terms, the parties dispute definiteness under 35 U.S.C. § 112(2). For the reasons set forth below, the disputed terms are construed as follows.


         A. Factual Background

         Integrated circuits are manufactured in large batches on silicon wafers. The wafers are cut into pieces (“dies”), each containing one copy of the circuit. The dies are then packaged to produce recognizable computer chips. As part of the integrated circuit manufacturing process, each die undergoes testing to ensure proper manufacture. The testing machines use probes to engage the circuit's contact points. The probes deliver a range of electronic signals to the circuit and evaluate the circuit's response. Circuits exhibiting unsatisfactory responses are repaired or discarded.

         Over time, probe elements deform, corrode, or get dirty. This degrades the electrical connection between the probe and the integrated circuit, which can cause circuits to suffer false failures, where the circuits function properly but the probes' own contact elements fail. False failures result in unnecessary repair or disposal of functional circuits and thus significant costs to manufacturers. In the prior art, cleaning probe elements was disruptive because it required removing the probe from the test machine, perhaps several times an hour. The patents at issue describe a device that cleans the probe elements without removal and without great disruption to the testing cycle.

         B. Procedural Background

         On February 17, 2016, ITS filed suit against Mipox International and MGN International alleging infringement of the ‘869 patent and U.S. Patent No. 8, 371, 316 (‘316 Pat.). On March 14, 2016, ITS amended the complaint; it dropped allegations regarding the ‘316 patent and added allegations of infringement of the ‘966 and ‘683 patents. The parties exchanged infringement and invalidity contentions in June and July 2016. In October 2016, the parties identified the ten disputed claim terms whose construction would be most significant to the resolution of the case, pursuant to Patent Local Rule 4-3(c). In December 2016, ITS sought leave to add Mipox Corporation as a defendant. ITS filed its claim construction brief on December 5, 2016 and its amended complaint on January 5, 2017. On February 3, 2017, Mipox filed its response to the claim construction brief and, on February 10, 2017, ITS filed its reply. Between February 10 and 16, 2017, Mipox filed a petition for inter partes review (IPR) of each of the patents at issue. On February 17, 2017, just over one week before the Markman hearing, Mipox filed a motion to stay proceedings pending disposition of the IPR. The Markman hearing was held on February 27, 2017. The stay motion is denied without prejudice in a concurrently filed order.


         A. Claim Construction

         Claim construction is a question of law to be determined by the courts. See Markman, 52 F.3d at 979. “Ultimately, the interpretation to be given a term can only be determined and confirmed with a full understanding of what the inventors actually invented and intended to envelop with the claim.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (quoting Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)). Accordingly, a claim should be construed in a manner “most naturally align[ed] with the patent's description of the invention.” Id.

         The first step in claim construction is to look to the language of the claims themselves. “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, 415 F.3d at 1312 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). A disputed claim term should be construed in a manner consistent with its “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.” Id. at 1312-13. The ordinary and customary meaning of a claim term may be determined solely by viewing the term within the context of the claim's overall language. See Id. at 1314 (“[T]he use of a term within the claim provides a firm basis for construing the term.”). Additionally, the use of the term in other claims may provide guidance regarding its proper construction. See Id. (“Other claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment as to the meaning of a claim term.”).

         A claim should also be construed in a manner consistent with the patent's specification. See Markman, 52 F.3d at 979 (“Claims must be read in view of the specification, of which they are a part.”). Typically the specification is the best guide for construing the claims. See Phillips, 415 F.3d at 1315 (“The specification is . . . the primary basis for construing the claims.”); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“[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.”). In limited circumstances, the specification may be used to narrow the meaning of a claim term that otherwise would appear to be susceptible to a broader reading. See SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001). Precedent forbids, however, term construction imposing limitations not found in the claims or supported by an unambiguous restriction in the specification or prosecution history. See Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1347 (Fed. Cir. 1998) (“[A] court may not import limitations from the written description into the claims.”); Comark Commc'ns., Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998) (“[W]hile . . . claims are to be interpreted in light of the specification, it does not follow that limitations from the specification may be read into the claims.”); SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc) (“It is the claims that measure the invention.”) (emphasis in original). A final source of intrinsic evidence is the prosecution record and any statements made by the patentee to the PTO regarding the scope of the invention. See Markman, 52 F.3d at 980.

         Courts may also consider extrinsic evidence, such as expert testimony, dictionaries, or technical treatises, especially if such sources are “helpful in determining ‘the true meaning of language used in the patent claims.'” Phillips, 415 F.3d at 1318 (quoting Markman, 52 F.3d at 980). Ultimately, while extrinsic evidence may aid the claim construction analysis, it cannot be used to contradict the plain and ordinary meaning of a claim term as defined within the intrinsic record. See Id. at 1322-23.

         B. Claim Indefiniteness

         Under 35 U.S.C. § 112(2), a patent specification must “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as [the] invention.”[1] To satisfy this requirement, a patent claim must “inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2124 (2014). “Although absolute or mathematical precision is not required . . . [t]he claims . . . must provide objective boundaries for those of skill in the art.” Interval Licensing, LLC v. AOL, Inc., 766 F.3d 1364, 1370-71 (Fed. Cir. 2014). A skilled artisan should be able to “compare a potentially infringing product with examples in the specifications to determine whether interference . . . is substantial.” Sonix Tech. Co., Ltd. v. Publ'ns Int'l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017) (internal quotation omitted).

         As indefiniteness analysis involves general claim construction principles, courts begin with the language of the claims. See Id. at 1378. In so doing, they have distinguished between “purely subjective” terms and “term[s] of degree.” Id.; see also Interval Licensing, 766 F.3d at 1370-71. “For some facially subjective terms, the definiteness requirement is not satisfied by merely offering examples that satisfy the term within the specification.” DDR Holdings, LLC v., L.P., 773 F.3d 1245, 1260 (Fed. Cir. 2014). “For other terms like [] terms of degree, specific and unequivocal examples may be sufficient to provide a skilled artisan with clear notice of what is claimed.” Id.

         Where a claim cannot be construed to satisfy 35 U.S.C. § 112(2), a court may find the term indefinite during claim construction, even in advance of any separate summary judgment motion. See Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008) (“Indefiniteness is a matter of claim construction, and the same principles that generally govern claim construction are applicable to determining whether allegedly indefinite claim language is subject to construction.”); Interval Licensing LLC, 766 F.3d at 1368-69 (affirming a finding of indefiniteness in the district court's claim construction order). “Indefiniteness must be proven by clear and convincing evidence.” Sonix, 844 F.3d at 1377.


         A. ‘966 Patent

         Asserted claims 26 and 28 of the ‘966 patent describe a “cleaning device for cleaning probe elements.” ‘966 pat. col. 10 ll. 23, 53. The device includes a “substrate . . . configur[ed] to [fit] into the testing apparatus” so probes may be cleaned “during normal testing operation.” Id. col. 10 ll. 26-29, 56. The “pad [has] predetermined characteristics . . . to clean debris from the probe elements when the probe elements contact the pad.” Id. col. 10 ll. 30-32, 60-62. The parties dispute the construction of three phrases in the ‘966 patent.

         1. “the substrate comprises a semiconductor wafer having a surface”

         ITS argues this term does not require construction. For its part, Mipox argues the term should be construed as “a substitute semiconductor wafer or substitute packaged IC device.” While the specification states a “substrate” may be plastic, metal, glass, silicon, ceramic, or any other similar material, claims 26 and 28 refer to a substrate which “comprises a semiconductor wafer.” The term “substrate” need not be construed because the claim language in question defines it and the “inventor's lexicography governs.” Phillips, 415 F.3d at 1316. For purposes of the ‘966 patent, the term will be given its plain meaning.[2]

         2. “predetermined characteristics that cause the pad to clean debris from the probe elements when the probe elements contact the pad so that the probe elements are cleaned, without modification or damage”

         Mipox contends this phrase is indefinite under 35 U.S.C. § 112(2). It argues there is no limit to the “predetermined characteristics” that cause the pad to clean and contends the phrase “without modification or damage” is vague because the patent recites no timeline.[3] ITS offers no procedural objection to deciding indefiniteness at this juncture, but claims Mipox has failed to prove indefiniteness clearly and convincingly. For the following reasons, “predetermined characteristics” and “without modification or damage” are both indefinite under § 112(2).

         i. “predetermined characteristics”

         To start, Mipox claims the term “predetermined characteristics” is indefinite. ITS advances four arguments in response. Each fails to persuade.

         First, ITS contends probe cleaning is an objective baseline for the term “predetermined characteristics.” Specifically, ITS claims the “predetermined characteristics” are not open-ended because the “ultimate outcome” is known-i.e., the characteristics must clean the probe elements well enough to permit electrical connection. Trans. 28:17-19. On this point, Dow Chem. Co. v. Nova Chemicals Corp., 803 F.3d 620 (Fed. Cir. 2015) is instructive. There, the Federal Circuit evaluated a patent covering novel plastic compositions quantified in part by their “slope of strain hardening coefficient.” The court considered whether “the existence of multiple methods [for calculating the ‘slope of strain hardening'] leading to different results without guidance in the patent . . . as to which method should be used render[ed] the claims indefinite” and decided it did. Id. at 634. Though the inherent strength of the patented material did not change, the choice of calculation method “could affect whether a given product infringe[d] the claims.” Id. Thus, the claim scope turned upon the “unpredictable vagaries of any one person's opinion.” Id. at 635 (quotation omitted).

         The ‘966 patent suffers the same flaw. While the device must render probes clean enough to make a functional electrical connection, the claim only indicates the cleaning pad should be comprised of “predetermined characteristics” that effectively clean the probes. ‘966 pat. col. 10 ll. 31-34. Multiple compositions and states of cleanliness may achieve the desired result. Here, as in Dow, the subjective ...

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