United States District Court, N.D. California
ORDER CONSTRUING CLAIMS
RICHARD SEEBORG United States District Judge
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.
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
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.
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
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.”
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.”).
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.
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.
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.” 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).
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. Hotels.com, 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
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.
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.
“the substrate comprises a semiconductor wafer
having a surface”
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
“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”
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. 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).
start, Mipox claims the term “predetermined
characteristics” is indefinite. ITS advances four
arguments in response. Each fails to persuade.
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
‘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 ...