Intel Corporation v. Tela Innovations, Inc.

CourtDistrict Court, N.D. California
DecidedNovember 4, 2019
Docket3:18-cv-02848
StatusUnknown

This text of Intel Corporation v. Tela Innovations, Inc. (Intel Corporation v. Tela Innovations, Inc.) is published on Counsel Stack Legal Research, covering District Court, N.D. California primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Intel Corporation v. Tela Innovations, Inc., (N.D. Cal. 2019).

Opinion

1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 INTEL CORPORATION, Case No. 3:18-cv-02848-WHO

8 Plaintiff, CLAIM CONSTRUCTION ORDER v. 9 Re: Dkt. No. 163 10 TELA INNOVATIONS, INC., Defendant. 11

12 13 Before me are six patents from the same patent family, all assigned to declaratory 14 judgment defendant Tela Innovations, Inc., and all asserted against plaintiff Intel Corporation. 15 The patented technology aims to improve the design and manufacturability of integrated circuits 16 by ameliorating difficulties associated with the lithographic gap, or the size difference between 17 ever-shrinking semiconductor features and the wavelength of light used to fabricate them. The 18 parties have asked me to construe seven terms from the asserted claims. My constructions are 19 below. 20 BACKGROUND 21 Between November 4, 2008 and January 22, 2019, the United States Patent and Trademark 22 Office (“PTO”) issued United States Patent Nos. 7,446,352 (“the ’352 Patent”), 7,943,966 (“the 23 ’966 Patent”), 7,948,012 (“the ’012 Patent”), 10,141,334 (“the ’334 Patent”), 10,141,335 (“the 24 ’335 Patent”), and 10,186,523 (“the ’523 Patent”) (collectively, the “patents in suit”). See 25 Declaration of Frank Liu (“Liu Decl.”), Exs. 1-6 [Dkt. Nos. 166-2, 166-3, 166-4, 166-5, 166-6, 26 166-7]. All of the patents in suit are part of the same patent family, all claim priority to 27 Provisional Application No. 60/781,288, filed on March 9, 2006, and all list Tela as the sole 1 Intel filed this declaratory judgment action on May 15, 2018.1 Dkt. No. 1. Since that time, 2 I have resolved a motion to transfer, several motions to dismiss and strike, a disputed motion for a 3 protective order, and several discovery disputes. See Dkt. Nos. 64, 70, 86, 162. The parties 4 briefed claim construction starting on June 13, 2019, and each submitted an electronic technology 5 tutorial in advance of the claim construction hearing. See Dkt. Nos. 163, 173. After providing the 6 parties with my tentative opinions, I heard argument on September 27, 2019. Dkt. Nos. 172, 173. 7 LEGAL STANDARD 8 Claim construction is a matter of law. See Markman v. Westview Instruments, Inc., 517 9 U.S. 370, 372 (1996); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). 10 “Generally, a claim term is given its ordinary and customary meaning—the meaning that a term 11 would have to a person of ordinary skill in the art in question at the time of the invention.” 12 Howmedica Osteonics Corp. v. Zimmer, Inc., 822 F.3d 1312, 1320 (Fed. Cir. 2016) (internal 13 quotation marks and citation omitted). In determining the proper construction of a claim, a court 14 begins with the intrinsic evidence of record, consisting of the claim language, the patent 15 specification, and, if in evidence, the prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 16 1313 (Fed. Cir. 2005); see also Vitronics, 90 F.3d at 1582. “A claim term used in multiple claims 17 should be construed consistently . . . .” Inverness Med. Switzerland GmbH v. Princeton 18 Biomeditech Corp., 309 F.3d 1365, 1371 (Fed. Cir. 2002). 19 “The appropriate starting point . . . is always with the language of the asserted claim itself.” 20 Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). “[T]he ordinary 21 and customary meaning of a claim term is the meaning that the term would have to a person of 22 ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date 23 of the patent application.” Phillips, 415 F.3d at 1312. “There are only two exceptions to this 24 general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when 25 the patentee disavows the full scope of a claim term either in the specification or during 26 prosecution.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). 27 1 Such redefinition or disavowal need not be express to be clear. Trustees of Columbia Univ. in City 2 of New York v. Symantec Corp., 811 F.3d 1359, 1364 (Fed. Cir. 2016). 3 Courts read terms in the context of the claim and of the entire patent, including the 4 specification. Phillips, 415 F.3d at 1313. The specification is “the single best guide to the 5 meaning of a disputed term.” Vitronics, 90 F.3d at 1582. “The construction that stays true to the 6 claim language and most naturally aligns with the patent’s description of the invention will be, in 7 the end, the correct construction.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 8 1250 (Fed. Cir. 1998). The court may also consider the prosecution history of the patent, if in 9 evidence. Markman, 52 F.3d at 980. The prosecution history may “inform the meaning of the 10 claim language by demonstrating how the inventor understood the invention and whether the 11 inventor limited the invention in the course of prosecution, making the claim scope narrower than 12 it would otherwise be.” Phillips, 415 F.3d at 1317 (citing Vitronics, 90 F.3d at 1582-83); see also 13 Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005) (“The purpose of consulting the 14 prosecution history in construing a claim is to exclude any interpretation that was disclaimed 15 during prosecution.”) (internal quotations omitted). 16 In most situations, analysis of the intrinsic evidence alone will resolve claim construction 17 disputes, Vitronics, 90 F.3d at 1583; however, a court can further consult “trustworthy extrinsic 18 evidence” to compare its construction to “widely held understandings in the pertinent technical 19 field,” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1309 (Fed. Cir. 1999). 20 Extrinsic evidence “consists of all evidence external to the patent and prosecution history, 21 including expert and inventor testimony, dictionaries, and learned treatises.” Markman, 52 F.3d at 22 980. All extrinsic evidence should be evaluated in light of the intrinsic evidence, Phillips, 415 23 F.3d at 1319, and courts should not rely on extrinsic evidence in claim construction to contradict 24 the meaning of claims discernible from examination of the claims, the written description, and the 25 prosecution history, Pitney Bowes, 182 F.3d at 1308 (citing Vitronics, 90 F.3d at 1583).

26 27 1 DISCUSSION 2 I. THE TECHNOLOGY 3 The patents at issue aim to improve the design and manufacturability of integrated circuits 4 by creating solutions to manage the lithographic gap. ’352 Patent 1:49-51. Integrated circuit 5 chips are the building blocks of devices like computers, smart phones, and tablets, and transistors 6 are the building blocks of integrated circuit chips. Today, a single integrated circuit chip includes 7 billions of transistors, which form the bottom layer of the chip, connected to the layers above by 8 metal interconnects.

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