American Technical Ceramics Corp. and AVX Corporation, Plaintiffsv.Presidio Components, Inc., Defendant
MEMORANDUM & ORDER Plaintiffs American Technical Ceramics Corporation (“ATC”) and AVX Corporation (collectively, “ATC” or “plaintiffs”) commenced this action against defendant Presidio Components, Inc. (“defendant” or “Presidio”) on November 6, 2014. (Complaint, ECF No. 1.) Plaintiffs allege that defendant makes and sell capacitors that infringe the following ATC patents: United States Patent No. 6,144,547 (“the ’547 Patent”), United States Patent No. 6,337,791 (“the ’791 Patent,” and together with the ’574 Patent, the “patents-in-suit”).1 Plaintiffs seek a finding that Presidio willfully infringed on the patents-in-suit, and injunctive relief prohibiting Presidio from engaging in further infringement. Plaintiffs also seek damages from the alleged infringement, including attorneys’ fees and costs. The court has previously construed various terms in the patents-in-suit (see generally Claim Construction Order (“Cl. Constr. Order”), ECF No. 79), and has also considered and ruled on cross-motions for summary judgment. (Summary Judgment Order (“MSJ Order”), ECF No. 126.) Presently before the court are the parties’ submissions for claim construction of a single term, “terminations,” as recited in the ’547 Patent.BackgroundPlaintiff ATC is a wholly owned subsidiary of plaintiff AVX, and all parties manufacture electrical devices, including capacitors. (MSJ Order at 3.) Capacitors are electronic components that store and release energy within a circuit. (Id.) They are used in a variety of electrical systems, including consumer electronics. (Id.) Capacitors generally consist of two parallel conductive (usually metal) plates separated by a non-conductive insulating material, called a “dielectric.” (Id.)This action relates to “multilayer ceramic capacitors” (“MLCCs”), which are created through the combination of multiple capacitors by stacking several layers of conductive and non-conductive/dielectric material. (Id. at 3-4.) All parties manufacture and sell MLCCs. (Id.) Additionally, this action was briefly stayed while the patents-in-suit underwent inter partes review (“IPR”) proceedings, in which defendant unsuccessfully challenged the validity of Claims 1 and 12 of the ’547 Patent. (Id. at 7-8.)As noted above, earlier in this action, both parties filed, and the court ruled on, motions for summary judgment. As is relevant here, defendant sought summary judgment that their accused devices not infringe the ’547 Patent. (Id. at 3, 46.) In seeking summary judgment of noninfringement as to the ’547 Patent, defendant asserted that the accused products do not have “substantially L-shaped terminations,” as required by the ’547 Patent. (Id. at 46-47.)More specifically, defendant asserted that plaintiffs’ infringement theory is contingent on the accused products’ external electrodes, or surface pads, which are located on the bottom of the accused product, forming part of the termination structure and thereby constituting the lower, horizontal portion of the “L” shape. (Id.) According to defendant, the surface pads cannot be considered part of the termination structure, and therefore must be disregarded in determining whether the terminations are substantially L-shaped. (Id.) Plaintiffs countered that the surface pads are part of the termination structure, and therefore that summary judgment should be denied. (Id. at 47.)The court noted that determining which argument should prevail requires an operable definition of “terminations,” and that the Claim Construction Order had not addressed this term because the parties had agreed that it, along with other terms not addressed in the parties’ first claim construction submissions, should be “given [its] plain and ordinary meaning.” (Id. at 47-49 (citation omitted).) The court also noted that no party had suggested a plain and ordinary meaning or directed the court to anything in the record that might aid in determining the plain meaning of “terminations.” (Id. at 49.)Based on Federal Circuit precedent regarding the relationship between claim construction and summary judgment, the court declined to supply and apply its own plain and ordinary meaning for “terminations” and denied summary judgment without prejudice pending further claim construction of “terminations.” (Id. at 49-54.) The instant briefing followed.Legal StandardI. Claim Construction GenerallyIn order to protect effectively an inventor’s rights, patents must describe the exact scope of an invention. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 373 (1996) (“[A] patent must describe the exact scope of an invention and its manufacture to secure to [the patentee] all to which he is entitled, [and] to apprise the public of what is still open to them.” (alterations in quoted material) (internal quotation marks and citation omitted)). “It is well established that determining infringement is a two-step process” whereby, the court must first construe a patent’s claim limitations to define the meaning and scope of the invention, and second, must compare the accused device to the construed claims. See Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115-16 (Fed. Cir. 2004) (citations omitted).“‘[T]he construction of a patent, including terms of art within its claim,’ is not for a jury but ‘exclusively’ for ‘the court to determine.’” Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 835 (2015) (quoting Markman, 517 U.S. at 390). In deciding matters of claim construction, district courts have discretion regarding the procedure by which to reach a final determination. See Ballard Med. Prods. v. Allegiance Healthcare Corp., 268 F.3d 1352, 1358 (Fed. Cir. 2001) (“District courts have wide latitude in how they conduct the proceedings before them, and there is nothing unique about claim construction that requires the court to proceed according to any particular protocol. As long as the trial court construes the claims to the extent necessary to determine whether the accused device infringes, the court may approach the task in any way that it deems best.”).In addition, the court need only construe claims that are “in controversy” and only “to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (citation omitted); see also Ballard, 268 F.3d at 1358 (“If the district court considers one issue to be dispositive, the court may cut to the heart of the matter and need not exhaustively discuss all the other issues presented by the parties.”). Further, the court is “not required to construe every limitation present in a patent’s asserted claims,” but rather, the focus is on “resolution of disputed meanings and technical scope…for use in determination of infringement. See O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) (emphasis omitted) (citations omitted).II. Sources for Claim ConstructionCourts must construe patent claims “objectively and without reference to the accused device.” Vivid Techs., 200 F.3d at 803 (emphasis added). This means that courts must “seek[] to accord a claim the meaning it would have to a person of ordinary skill in the art at the time of the invention.” Innova/Pure Water, Inc., 381 F.3d at 1116 (citations omitted). In doing so, a court considers three primary sources within the intrinsic evidence of record: (i) the language of the claims, (ii) the specification, and (iii) the prosecution history. Secure Web Conference Corp. v. Microsoft Corp., No. 13-CV-2642(JG), 2014 WL 4954644, at *1 (E.D.N.Y. Oct. 2, 2014) (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).A. Claim LanguageFirst, the court “look[s] to the words of the claims themselves, both asserted and non-asserted, to define the scope of the patented invention.” HowLink Global LLC v. Network Commc’ns Int’l. Corp., 561 F. App’x 898, 905 (Fed. Cir. 2014) (quoting Vitronics, 90 F.3d at 1582). In making such a determination, “[t]he words of the claim are the controlling focus.” Secure Web, 2014 WL 4954644, at *2 (citing Digital Biometrics, Inc., v. Identix, Inc., 149 F.3d 1335, 1344 (Fed. Cir. 1998)).In general, the language of a claim is given its ordinary and customary meaning unless a distinct definition is employed in the specification or prosecution history. See Digital Biometrics, 149 F.3d at 1344 (“The written description is considered, in particular to determine if the patentee acted as his own lexicographer, as our law permits, and ascribed a certain meaning to those claim terms. If not, the ordinary meaning, to one skilled in the art, of the claim language controls.” (citing York Prods., Inc. v. Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1572 (Fed. Cir. 1996))).The ordinary and customary meaning of a claim term is that which one of “skill in the art at the time of the invention” would understand. Innova/Pure Water, 381 F.3d at 1116 (citations omitted); see also InTouch Techs, Inc. v. VGO Commc’ns Inc., 751 F.3d 1327, 1339 (Fed. Cir. 2014) (“Generally, a claim term is given the ordinary and customary meaning as understood by a person of ordinary skill in the art at the time of invention.” (citation omitted)); Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d 1323, 1332 (Fed. Cir. 2001) (“Throughout the construction process, it is important to bear in mind that the viewing glass through which the claims are construed is that of a person skilled in the art.” (citations omitted)).In interpreting claim terms, courts have applied the doctrine of “claim differentiation.” This doctrine “stems from the common sense notion that different words or phrases used in separate claims are presumed to indicate that the claims have different meanings and scope,” and creates a “presumption that two independent claims have different scope when different words or phrases are used in those claims.” Seachange Int’l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1368-69 (Fed. Cir. 2005) (internal quotation marks and citations omitted.) The Court of Federal Claims has applied this doctrine in declining to “infer that two different words within a claim…have the same meaning.” TDM Am., LLC v. United States, 85 Fed. Cl. 774, 794 (2009) (citing Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1369 (Fed. Cir. 2007)).Claim differentiation, however, is “a guide, not a rigid rule.” Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1538 (Fed. Cir. 1991) (quoting Autogiro Co. of Am. v. United States, 384 F.2d 391, 404 (Ct. Cl. 1967)); accord Marine Polymer Techs., Inc. v. HemCon, Inc., 672 F.3d 1350, 1359 (Fed. Cir. 2012) (citations omitted). Accordingly, it “is not as strong across related patents as it would be if the different claim limitations appeared in the same patent.” Clare v. Chrysler Grp. LLC, 819 F.3d 1323, 1330 (Fed. Cir. 2016).B. SpecificationNext, the court looks at a patent’s specification, as “[c]laims must be read in view of the specification, of which they are a part.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (citations omitted), aff’d, 517 U.S. 370 (1996). “The specification contains a written description of the invention which must be clear and complete enough to enable those of ordinary skill in the art to make and use it.” Vitronics, 90 F.3d at 1582. Consequently, “the specification is always highly relevant to the claim construction analysis,” “is the single best guide to the meaning of a disputed term,” and is “[u]sually…dispositive.” Id.In setting out a clear and complete written description, a patent’s specification may also include a particular definition of a term that supersedes the term’s “plain and ordinary meaning.” See Stryker Corp. v. Zimmer, Inc., 837 F.3d 1268, 1272 (Fed. Cir. 2016) (noting exception to the general rule that courts look to terms’ plain and ordinary meanings “when a patentee sets out a definition and acts as her own lexicographer” (citations omitted)).Therefore, the specification may assist in the court’s determination of whether the inventor intentionally used any terms in the claims in a manner inconsistent with their ordinary meaning; however, this intention must be clear. See Vitronics, 90 F.3d at 1582 (“[A] patentee may choose to be his own lexicographer and use terms in a manner other than their ordinary meaning, as long as the special definition of the term is clearly stated in the patent specification or file history.” (citations omitted)).Additionally, where a specification discloses an embodiment, a claim construction that renders the embodiment outside the scope of the claim “is rarely, if ever, correct and would require highly persuasive evidentiary support.” Id. at 1583 (citations omitted). Further, “it is improper to read limitations from a preferred embodiment described in the specification — even if it is the only embodiment — into the claims absent a clear indication in the intrinsic record that the patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004) (citations omitted).C. Prosecution HistoryThird, the court may consider the prosecution history of the patent, if it is in evidence. Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (citing Markman, 52 F.3d at 980); accord Amhil Enterprises Ltd. v. Wawa, Inc., 81 F.3d 1554, 1559 (Fed. Cir. 1996) (“The prosecution history, in addition to being used while considering the factual issue of infringement and whether prosecution history estoppel places any limitations on what infringes a claim, should also be used when considering the legal issue of proper claim construction.” (citations omitted)). The prosecution history contains a complete record of all the proceedings before the Patent and Trademark Office, including any express representations made by the applicant regarding the scope of the claims. As such, the record before the Patent and Trademark Office is often of critical significance in determining the meaning of the claims. See Markman, 52 F.3d at 980.Importantly, “[t]he prosecution history limits the interpretation of claim terms so as to exclude any interpretation that was disclaimed during prosecution.” Southwall Tech., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995) (citations omitted). However, “[a]bsent a clear disavowal or contrary definition in the specification or the prosecution history, the patentee is entitled to the full scope of its claim language.” Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352, 1358 (Fed. Cir. 2004).Accordingly, a party asserting prosecution history disclaimer has the “burden of proving the existence of a ‘clear and unmistakable’ disclaimer that would have been evident to one skilled in the art.” Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1063-64 (Fed. Cir. 2016) (citation omitted).D. Extrinsic EvidenceFinally, although it is well-settled that courts should look primarily to the intrinsic evidence of record in resolving a claim construction dispute, extrinsic evidence may be considered when ambiguity remains after consulting the intrinsic evidence. Vitronics, 90 F.3d at 1583. Extrinsic evidence has been defined to include evidence external to the patent and prosecution history, such as expert testimony, inventor testimony, dictionaries, and relevant treatises or articles. See Secure Web, 2014 WL 4954644, at *2 (citing Phillips, 415 F.3d at 1317); accord Vitronics, 90 F.3d at 1584 (citations omitted).“[E]xtrinsic evidence in general, and expert testimony in particular,” however, “may be used only to help the court come to the proper understanding of the claims; it may not be used to vary or contradict the claim language.” Vitronics, 90 F.3d at 1584 (citing Markman, 52 F.3d at 980). Further, “extrinsic evidence is ‘less significant than the intrinsic record in determining the legally operative meaning of claim language.’” Secure Web, 2014 WL 4954644, at *2 (quoting Phillips, 415 F.3d at 1317). Consequently, in permitting consideration of extrinsic evidence, “[t]he Federal Circuit has cautioned courts not to place too much reliance on extrinsic evidence and too little reliance on intrinsic sources.” Id. at *2 (citing Phillips, 415 F.3d at 1320).DiscussionThe court will construe the term “terminations” as recited in the ’547 Patent after consideration of the parties’ submissions at the court’s request. No other terms are at issue at this time. Plaintiffs assert that “terminations” should be construed as “conductive structures arranged externally on the device body.” (E.g., Joint Disputed Claim Terms Chart, ECF No. 129, at 1.)In briefing the instant construction dispute, defendant initially asserted that “terminations” should be construed as a “layer covering a portion of the device body for providing electrical and mechanical connection to the device’s conductive patterns.” (Id.) However, in response to plaintiffs’ argument that a termination can include more than one layer, defendant has proposed that “terminations” be construed as “structures covering a portion of the device body for providing electrical and mechanical connection to the device’s conductive patterns / electrodes.” (Defendant’s Claim Construction Brief (“Def. Mem.”), ECF No. 131, at 4.)Based on their proposed constructions, the parties agree that terminations are (i) structures that are (ii) conductive and (iii) external to the capacitor device body. Both parties’ proposed constructions expressly refer to the terminations as structures, and clearly indicate that terminations are conductive. Further, although defendant does not expressly state that terminations are “external” to the capacitor body, defendant asserts that terminations “cover[] a portion of the device body,” thus conceding that the terminations are external to the device body. (Id. (emphasis added).) Consequently, the court need only determine whether the additional purported characteristics of terminations set forth in defendant’s proposed construction, i.e., that terminations are “for providing electrical and mechanical connection to the device’s conductive patterns / electrodes,” represent a proper construction of the ’547 Patent. For the reasons set forth below, the court respectfully rejects defendant’s proposed construction, and adopts plaintiffs’ proposed construction.I. Intrinsic EvidenceA. Claim LanguageThe court begins, as it must, with the language of the relevant claims. See Vitronics, 90 F.3d at 1582 (noting that claim construction inquiry begins with “the words of the claims themselves”). Here, the word “terminations” appears in the disputed claims 1 and 12 of the ’547 Patent. Claim 1 claims, in relevant part:A thin film capacitor device for mounting to a surface, said capacitor device comprising a device body having small dimensions in length, width and height, and having substantially L-shaped terminations located thereon with portions of said terminations extending over a bottom surface of said device body and negligibly over a top surface of said device body, said device body including:an insulating substrate having a top surface and a bottom surface;a first conductive pattern located above said top surface of said substrate and defining a first polarity capacitor plate;a dielectric layer located on top of said first conductive pattern;a second conductive pattern located on said dielectric layer, said second conductive pattern defining a second capacitor plate in registry with said first capacitor plate; anda planar cover layer located above said second conductive pattern.(’547 Patent at 6:13-32 (emphasis added).)Claim 12 of the ’547 Patent claimsA capacitor device for mounting to a surface, said capacitor device comprising:a device body of a small size no greater than 0402 and a nominal height of no greater than about 0.40 mm;said device body having a capacitor structure located therein, said capacitor structure being formed of at least one first polarity electrode and at least one second polarity electrode separated by an interposing layer of dielectric; andsubstantially L-shaped terminations located on opposite end surfaces of said device body, with portions of said terminations extending over a bottom surface of said device body and negligibly on a top surface of said device body.(’547 Patent at 6:62-7:8(emphasis added).)Although the foregoing claim language establishes that terminations are external to the capacitor device body, neither claim 1 nor claim 12 expressly supports defendant’s proposed construction, as neither claim indicates that terminations provide electrical and mechanical connection to the capacitor device’s conductive patterns and/or electrodes.Further, defendant’s only argument in support of its proposed construction based on the language of the claims is unpersuasive. Defendant notes that the ’547 Patent “claims ‘terminations’ and, separately, ‘conductive’ patterns.” (Def. Mem. at 22; see also ’547 Patent at 6:13-32 (Claim 1).) According to defendant, the separate references to “terminations” and “conductive” patterns make clear that terminations are distinct from other conductive structures in the capacitor device. (Id.)There is no dispute, however, that terminations are not the only conductive structures on or in the capacitor devices disclosed by the ’547 Patent. As the court observed in the prior claim construction order, the patents-in-suit relate to “multilayer ceramic capacitors,” which “are created…by stacking several layers of conductive and non-conductive (i.e., dielectric) material.” (Cl. Constr. Order at 2 (emphasis added).) Thus, the court agrees that “terminations” are not the only conductive structures disclosed in the ’547 Patent. From the conclusion that the ’547 Patent discloses non-termination conductive structures, it cannot also be concluded that terminations are “for providing electrical and mechanical connection to the device’s conductive patterns / electrodes,” as defendant contends. Consequently, the court rejects defendant’s contention that the claim language supports this aspect of defendant’s proposed construction.B. SpecificationThe court next considers the patent’s specification, upon which the parties rest the bulk of their arguments regarding the language of the ’547 Patent. As is relevant here, the ’547 Patent notes a typical manufacturing process by which “thin film” techniques are used to manufacture a “larger wafer” out of which “many” capacitors are made (’547 Patent at 4:10-16), and describes a “novel method of applying terminations to the individual capacitors of the wafers.” (Id. at 4:38-40.)The ’547 Patent’s specification contains the following diagram, in which the “substantially L-shaped terminations” are labeled 16 and 18:(’547 Patent at 1 (circular markings added); see also ’547 Patent Fig. 3 (same diagram).)2Regarding the application of terminations to the device body, the ’547 Patent’s specification describes a process by which a “series of parallel cuts” are made in a completed wafer, producing a “series of capacitor array strips” with “channels” between them. (Id. at 4:47-51.) A “shadow mask,” which “includes parallel masking members,” is then “placed over the series of array strips,” and the “main (principal) and bottom land portions of the terminations are applied in [a] single sputtering run.” (Id. at 4:55-63.)The ’547 Patent further states that the sputtering will “[p]referably” involve the “deposition of two layers, such as Cr and Cu,” i.e. chromium (Cr) and copper (Cu), and that “[a]n electroless nickel coating from NiB composition,” i.e. nickel (Ni) and boron (B), “may then be applied to form a barrier layer before solder application.” (Id. at 4:63-5:3). Additionally,[a]fter the terminations are applied, the array strips are diced in a second direction, perpendicular to the first direction, to yield the individual capacitors 10. Referring to FIG.5D, capacitors 10 are then removed from carrier 72 by dissolution or ungluing of the temporary glue….A barrel plating or other soldering process of nickel and SnPb may then be employed.(Id. at 5:4-11.)3The ’547 Patent’s specification also contains the following table (“Table II”), which “sets forth various details of a preferred termination structure in an exemplary…capacitor:”LAYER FIGURE 3 INVENTION FIGURE 4 PRIORFlash I Not Applicable Alumium 0.01 pmFlash II Chromium 0.1-0.4 pm Chromium 0.1pmShapping Copper 1.0-4.0 pm Copper 1.0 pmLayerBarrier I Nickel Boron 1.0-2.5 pm Nickel-Boron 1.0 pmBarrier II Nickel Boron 2.0-8.0 pm Not ApplicableSolder Tin-Lead 3.0-12.0 pm Tin-Lead 10.0-50.0 pm(’547 Patent at 5:12-27.)“Sn” is the chemical symbol for tin, and “Pb” is the chemical symbol for lead. Thus, the nickel “Barrier II” layer and tin-lead “Solder” layers in Table II correspond to the “barrel plating or other soldering process of nickel and SnPb” referenced at lines 10-11 of column 5 of the ’547 Patent, which are excerpted above.Defendant makes several arguments in support of its proposed construction of “terminations” based on the foregoing aspects of the specification, but none of defendant’s arguments are convincing. Most notably, defendant asserts that the ’547 Patent “expressly excludes external plating, one of many types of conductive structures arranged externally on the device body, from ‘terminations.’” (Def. Mem. at 20.) According to defendant, the ’547 Patent “defin[es] terminations (including the barrier layer and solder application described in T[able] II), and then explain[s] that after the terminations are applied, only then is plating employed.” (Id. (emphasis in quoted material) (citing ’547 Patent at 5:1-27 and Declaration of Dr. Michael Randall, Ph.D. in Support of Defendant’s Brief (“Randall Decl.” or the “Randall Declaration”), Def. Ex. CG, ECF No. 133-4, ECF pp. 70-137 of 260,
