By Brian Craig, J.D.
A district court erred in reading a "repeated desmear process" limitation in patent claims relating to circuit boards and by failing to give the asserted claims their plain and ordinary meaning. The district court’s judgment of noninfringement was vacated.
In a patent infringement case brought against Intel and Ibiden over circuit board technology, the U.S. Court of Appeals for the Federal Circuit has concluded the district court erred in reading a "repeated desmear process" limitation in the patent claims. The Federal Circuit ruled that the district court did not give the claims their plain and ordinary meaning. Because the parties stipulated to noninfringement based on the court’s erroneous construction, the Federal Circuit vacated the judgment of noninfringement and remanded to the district court (Continental Circuits LLC v. Intel Corp., February 8, 2019, Lourie, A.).
Continental Circuits LLC, a manufacturer of printed circuit boards used in the computer industry, sued Intel Corp.; its supplier, Ibiden U.S.A. Corp.; and Ibiden U.S.A. Corp.’s parent company, Ibiden Co. Ltd. (collectively, "Intel") for infringement of U.S. Patents 7,501,582 ("the ’582 patent"); 8,278,560 ("the ’560 patent"); 8,581,105 ("the ’105 patent"); and 9,374,912 ("the ’912 patent"). The four patents at issue, which have since expired, are continuations of one another. The ’582, ’560, ’105, and ’912 patents are directed to a "multilayer electrical device . . . having a tooth structure." All of the asserted claims include claim limitations regarding the "surface," "removal," or "etching" of "a dielectric material" or "epoxy," which the district court construed together as the "Category 1 Terms," and their construction depends on resolving whether they should be limited to a repeated desmear process. The parties stipulated to a judgment of noninfringement based on the district court’s construction of certain claim terms. Continental Circuits appealed the district court’s claim construction.
Intrinsic evidence. The Federal Circuit first examined theintrinsic evidence to determine whether the district court properly construed the claims, including the plain language in the claims, the specification, and the prosecution history. In construing claims, district courts give claims their 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. The specification is always highly relevant to the claim construction analysis. Courts should also consider the patent’s prosecution history, if it is in evidence.
Here, the Federal Circuit concluded atleast based on the plain language, the claims are not limited to a repeated desmear process. Beginning with the claim language in the Category 1 Terms, the Federal Circuit first noted that none of the asserted claims actually recite a "repeated desmear process."
In review of the specification, none of the statements relied upon by the district court rises to the level of "a clear and unmistakable disclaimer." Similarly, the descriptions of "the present invention," which also appear within the discussion of the preferred embodiment, are not limiting here. The statements that "the present invention can be carried out by a new use" of a dielectric material called Probelec XB 7081, and "the present invention differs from the common desmear process in that sub-steps in the desmear process are repeated as a way of forming the teeth," do not characterize the present invention "as a whole." Instead, they disclose one way to carry out the present invention using Probelec XB 7081, and references to "the present invention" occur within this context. Thus, the use of "the present invention" throughout the specification does not uniformly require use of a repeated desmear process.
The Federal Circuit also concluded that the cited statements in the prosecution history do not clearly and unmistakably disavow any claim scope. The expert declaration cited by the district court, which the applicants relied on to respond to both the indefiniteness and the written description rejections, explained that the written description disclosed "a technique which forms the teeth" by "performing two separate swell and etch steps." The district court found this statement clearly described the patented method as involving two etching processes." But clearly describing a particular claim term to overcome an indefiniteness or written description rejection is not the same as clearly disavowing claim scope. Moreover, the statements in the expert declaration merely explain one technique for forming teeth and do not amount to clear statements of disavowal.
Extrinsic evidence. The Federal Circuit also looked at the extrinsic evidence to determine whether the district court properly construed the claims. Extrinsic evidence consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises. But while extrinsic evidence can shed useful light on the relevant art, it is less significant than the intrinsic record in determining the legally operative meaning of disputed claim language. Generally, the Federal Circuit has viewed extrinsic evidence as "less reliable" than intrinsic evidence.
Here, the district court acknowledged that the extrinsic evidence, which consisted of documents authored by the inventors, was not reliable enough to be dispositive, but provided helpful corroboration. Because the intrinsic evidence does not support reading a repeated desmear process into the claims, the less reliable extrinsic evidence, also does not support that interpretation. Accordingly, the Federal Circuit concluded that the Category 1 Terms should not be limited to requiring a repeated desmear process and should be given their plain and ordinary meaning. As such, the appeals court vacated the district court decision and remanded the case.
This case is No. 18-1076.
Attorneys: Jeffrey A. Lamken (MoloLamken LLP) for Continental Circuits LLC. Joseph J. Mueller (Wilmer Cutler Pickering Hale and Dorr LLP) for Intel Corp., Ibiden U.S.A. Corp. and Ibiden Co., Ltd.
Companies: Continental Circuits LLC; Intel Corp.; Ibiden U.S.A. Corp.; Ibiden Co., Ltd.
MainStory: TopStory Patent FedCirNews
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