Plaintiff s Markman Presentation

Transcription

1 LUX, Inc. v. BrightBlue Corp. Case No. 07-cv-520 Plaintiff s Markman Presentation U.S. Patent No. 5,075,742 The 742 Patent 2 1

2 Overview Short Technology Tutorial Semiconductor structure for an LED The 742 Invention Solving dislocation using three-dimensional inclusions The Dispute inclusion / three-dimensional inclusions 3 Semiconductor Structure for an LED P-Type Layer Active Layer N-Type Layer Substrate 4 2

3 Semiconductor Structure for an LED 5 Problem: Dislocations from Mismatch P-Type Layer Active Layer N-Type Layer Substrate Dislocations Substrate Does Not Match Device Layers Formed Thereon 6 3

4 Lattice Mismatch (GaN) Layer (Sapphire) Substrate 7 Problem: Dislocations Destroy Light Emission 8 4

5 The 742 Patent 9 Solution: Three-Dimensional Inclusions 10 5

6 742 Patent Claim Patent Claim

7 Inclusion Claim Term inclusion three-dimensional inclusions LUX s Construction inclusion: a crystal or a fragment of a crystal found within another crystal three-dimensional inclusions: needs no further construction by the Court given this construction of inclusion BrightBlue s Construction three-dimensional inclusions: islands grown using three-dimensional nucleation and then buried by a different material Claim 1 JCSS at 1 JCSS at 1 13 The Dispute Should inclusion and three-dimensional inclusions have their ordinary and customary meanings? 14 7

8 The Dispute Should inclusion and three-dimensional inclusions have their ordinary and customary meanings? Or should the Court adopt a special meaning by: Requiring inclusions to be island -shaped? Requiring the inclusions in the claimed structure to be grown only by a three-dimensional nucleation process? 15 Legal Principles It is a bedrock principle of patent law that the claims of the patent define the invention to which the patentee is entitled the right to exclude. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)(en banc). But the written description part of the specification itself does not delimit the right to exclude. That is the function and purpose of the claims. Id. at 1256 (quoting Markman v. Westview Instr., Inc., 52 F.3d 967, 980 (Fed. Cir (en banc)). 16 8

9 Legal Principles To avoid importing limitations from the specification into the claims, it is important to keep in mind that the purposes of the specification are to teach and enable those of skill in the art to make and use the invention and to provide a best mode for doing so. Phillips, 415 F.3d at Claims define and circumscribe, the written description discloses and teaches. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1347 (Fed. Cir. 2010)(en banc). 17 Claim Language inclusions are found within the sub-layers of the semiconductor material 742 Patent, Claim

10 Specification Inclusions are crystalline and surrounded by other crystalline semiconductor material inclusion 8 inclusion Patent at 5:31-40 & Figs. 9 & Extrinsic Evidence McGraw-Hill Dict. at 947 Inventor Depo. Tr

11 BrightBlue Seeks To Insert Limitations Requiring inclusions to be island -shaped Requiring the three-dimensional inclusions in the claimed structure to be grown only by a threedimensional nucleation process 21 Claim Does Not Restrict Inclusion Shape The claim does not require the inclusions to be island -shaped 742 Patent at Claim

12 Claim Does Not Restrict Growth Type No specific growth type mentioned in the claim 742 Patent at Claim 1 23 Pros. History Does Not Restrict Growth Type According to the invention no special growth process. Response to Office Action at

13 Specification Does Not Support Restrictions Specification does not use the phrase three-dimensional inclusions to refer to islands grown by three-dimensional nucleation. 742 Patent at Abstract; 2:65-3:2; 3: BrightBlue Points To Process, Not Structure BrightBlue s selections address a method of fabrication, not the claimed structure 742 Patent at 2:65 3:

14 BrightBlue Points To Process, Not Structure BrightBlue s selections address a method of fabrication, not the claimed structure 742 Patent at 5:1-7; 6: Other Claims Were Directed To Process 742 File History: Original Claims 28 14

15 Improper To Limit Claimed Structure By Process A novel product that meets the criteria of patentability is not limited to the process by which it was made. Research Corp. Techs. v. Microsoft, 627 F.3d 859, 873 (Fed. Cir. 2010). Courts must generally take care to avoid reading process limitations into an apparatus claim because the process by which a product is made is irrelevant to the question of whether that product infringes a pure apparatus claim. Id. 29 Claims Not Limited To Disclosed Embodiment [A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments. Phillips, 415 F.3d at In particular, we have expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment. Id

16 Islands Occur in Preferred Embodiment When InAs is used as the inclusion material, for example But specification does not define inclusions as islands 742 Patent at Fig. 5, 4:55-68, 3: Islands Occur in Preferred Embodiment When InAs is used as the inclusion material, for example But specification does not define inclusions as islands 742 Patent at Fig. 5, 4:55-68,5:

17 Islands Occur in Preferred Embodiment The invention never limits inclusions to islands 742 Patent at Fig. 5, 4: Islands Occur in Preferred Embodiment The invention never limits inclusions to islands 742 Patent at Fig. 5, 4:55-68, Fig

18 742 Patent Claim 1 35 Inclusion Was Not Narrowed In Prosecution No specific type of growth mentioned in claim Original and Amended Claim

19 Three-Dimensional A non-technical term (in plain English) BrightBlue understands that it is in contrast to two-dimensional: BrightBlue s CC Brief at Three-Dimensional Does not require construction Simply means not flat BrightBlue does not define three-dimensional Am. Heritage Dict. at pg

20 Legal Principles The concurrence-in-part and dissent-in-part characterizes the specification as the heart of the patent and, using colloquial terms, states that you should get what you disclose. This devalues the importance of claim language in delimiting the scope of legal protection. Arlington Indus. V. Bridgeport Fittings, Inc., 632 F.3d 1245, 1256 n.2 (Fed. Cir. 2011). [T]he name of the game is the claim. Id. (quoting Judge Giles Rich). 39 LUX, Inc. v. BrightBlue Corp. Case No. 07-cv-520 Plaintiff s Markman Presentation U.S. Patent No. 5,075,742 20

21 LUX, Inc., v. BrightBlue Corp. Defendant s Claim Construction Presentation 1 Claim 1 1. A structure having plural layers in semiconductor material, one of said layers comprising plural substantially parallel sublayers deposited successively during growth of said one layer, each of said sub-layers having three-dimensional inclusions in a semiconductor material and a narrower forbidden band gap than a forbidden band gap of said one layer. 2 1

22 Disputed Term three-dimensional inclusions LUX An inclusion means a a crystal or a fragment of a crystal found within another crystal. Given this construction of inclusion, the phrase three-dimensional inclusions does not require further construction by the Court. BrightBlue Three-dimensional inclusions are islands grown using threedimensional nucleation and then buried by a different material. 3 Legal Principles [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. Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (quotation omitted). 4 2

23 Legal Principles: post-phillips cases On Demand Mach. Corp. v. Ingram Indus., Inc. Claim term Customer limited to retail customer. [T]he claims cannot be of broader scope than the invention that is set forth in the specification. On Demand Mach. Corp. v. Ingram Indus., Inc., 442 F.3d 1331, 1340 (Fed. Cir. 2006). 5 Legal Principles: post-phillips cases ODMC argues that the patentee did not disavow the standard dictionary meaning of customer, and that the Ross invention is not limited to any specific kind of customer. However, when the scope of the invention is clearly stated in the specification, and is described as the advantage and distinction of the invention, it is not necessary to disavow explicitly a different scope. On Demand, 442 F.3d at

24 Legal Principles: post-phillips cases Although we agree with the district court that each term standing alone can be construed as having varying degrees of breadth, each term must be construed to implement the invention described in the specification.... Care must be taken lest wordby-word definition, removed from the context of the invention, leads to an overall result that departs significantly from the patented invention. On Demand, 442 at 1344 (citations omitted). 7 Legal Principles: post-phillips cases Ormco Corp. v. Align Technology, Inc. Court limited the claims to automatic teeth positioning despite the absence of express recitation of such automatic control The court based this holding on the clear emphasis in specification and the distinctions drawn over the prior art Accordingly, to attribute to the claims a meaning broader than any indicated in the patents and their prosecution history would be to ignore the totality of the facts of the case and exalt slogans over real meaning. Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1316 (Fed. Cir. 2007). 8 4

25 Legal Principles: post-phillips cases Finisar Corp. v. DirecTV Group, Inc. Claim term information database. In isolation, the term information database suggests a very broad coverage. In context, however, this claim term repeatedly appears within a framework that requires referencing, embedding, assigning, and transmitting portions of the database. The court held that the specification supported the narrower reading of the term. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1330 (Fed. Cir. 2008). 9 Islands Grown By Three-Dimensional Nucleation Is The Invention three-dimensional refers to the method of making an inclusion and not to a physical characteristic of an inclusion once made. U.S. Patent No. 5,075,742, Col.3, lines

26 Islands Grown By Three-Dimensional Nucleation Is The Invention U.S. Patent No. 5,075,742, Col.3, lines Islands Grown By Three-Dimensional Nucleation Is The Invention U.S. Patent No. 5,075,742, Col.4, lines

27 Islands Grown By Three-Dimensional Nucleation Is The Invention U.S. Patent No. 5,075,742, Col.5, lines 1-7, 20-24, The Invention Drives Claim Construction Statements that describe the invention as a whole, rather than statements that describe only preferred embodiments, are more likely to support a limiting definition of a claim term. C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 864 (Fed. Cir. 2004) 14 7

28 The Invention Drives Claim Construction Patent specifies the invention and not merely one embodiment On at least four occasions, the written description refers to the fuel filter as this invention or the present invention.... The public is entitled to take the patentee at his word. Honeywell Int l, Inc. v ITT Indus., 452 F.3d 1312, 1318 (Fed. Cir. 2006) 15 Fact Issue: In the art, three-dimensional refers to the growth mode Transition from 2D growth to 3D growth of InAs was known in It was also known that three-dimensional growth results in island formation. Goldstein 1985 Applied Physics Letters Vol. 47 No. 10, pages

29 Fact Issue: In the art, three-dimensional refers to the growth mode Only three possible growth modes: 2D, 3D, and 3D Bimberg, Grundmann and Ledentsov, Quantum Dot Heterostructures 17 LUX s Responses Lack Merit LUX s Responses: 1. Citations to the specification are to one preferred embodiment 2. Patent discloses multiple growth techniques 3. Three-dimensional need not be construed because jury can easily understand that threedimensional means not flat 18 9

30 All Embodiments Use 3D Growth LUX says: BrightBlue s citations to the specification are to one preferred embodiment Specification discloses that it is preferred that the claimed structure constitute the active layer of an optoelectronic component, such as a laser (Summary of the Invention, col. 3, lines 3-5) But: specification never refers to threedimensionally-grown islands as a preferred embodiment And: No disclosure of any embodiment without islands grown using three-dimensional nucleation 19 All disclosed alternative growth techniques are 3D LUX says: The patent discloses multiple growth techniques Specification discloses vapor phase epitaxy as an alternative to molecular beam epitaxy (Col. 5, lines 4-7) But vapor phase epitaxy also has a threedimensional growth mode that creates islands 20 10

31 Specification Links Inclusions to Their Growth Mode All growth techniques for the invention require three-dimensional growth U.S. Patent No. 5,075,742 Col.6, lines Prosecution History Links Inclusions to Their Growth Mode To overcome a rejection over quantum boxes disclosed by Cibert & Iwata, applicants amended the claim to require the three-dimensional inclusions to be deposited successively during growth : Applicants argued that inclusions (as opposed to boxes) are formed by deposit of semiconductor material during semiconductor crystal growth Applicants argued that Cibert s & Iwata s quantum boxes were created after such growth by injecting ions Cibert s & Iwata s quantum boxes have length, breadth, width 22 11

32 LUX s Responses Lack Merit LUX says: Three-dimensional need not be construed because jury can easily understand that threedimensional means not flat. The Court must resolve this genuine dispute: Does a three-dimensional inclusion mean: An inclusion having length, breadth, width? OR An island grown using three-dimensional nucleation? 23 LUX s construction is overbroad Lux s construction does not distinguish between the InAs layers and the InAs inclusions 24 12

33 LUX s construction is overbroad LUX s construction does not distinguish between the InAs layers and the InAs islands The InAs layers: Are crystals found within another crystal (GaAs) Have length, breadth, width Have a narrower forbidden band gap than surrounding material (GaAs) Yet the specification is clear that the InAs islands are the inclusions, not the InAs layers 25 LUX, Inc., v. BrightBlue Corp. Defendant s Claim Construction Presentation 26 13