Atmel Corp. v. Information Storage Devices, Inc.,, C 95-1987 FMS.

• Decision Date: 27 February 1998
• Docket Number: No. C 95-1987 FMS.,C 95-1987 FMS.
• Citation: 997 F.Supp. 1210
• Court: U.S. District Court — Northern District of California
• Parties: ATMEL CORP., Plaintiff, v. INFORMATION STORAGE DEVICES, INC., Defendant.

997 F.Supp. 1210

ATMEL CORP., Plaintiff, v. INFORMATION STORAGE DEVICES, INC., Defendant.

No. C 95-1987 FMS.

United States District Court, N.D. California.

February 27, 1998.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Richard H. Abramson, Lee Van Pelt, Sarah W. Anderson, Heller Ehrman White & McAuliffe, Palo Alto, CA, for Plaintiff.

Claude M. Stern, William A. Fenwick, Sandra Smith McCoy, Fenwick & West LLP, Palo Alto, CA, for Defendant.

ORDER CONSTRUING '750, '776, AND '811 PATENTS; DENYING CROSS-MOTIONS TO STRIKE; AND DENYING IN PART AND SETTING BRIEFING SCHEDULE ON DEFENDANT'S MOTION FOR SUMMARY JUDGMENT OF INDEFINITENESS

FERN M. SMITH, District Judge.

INTRODUCTION

Pending before the Court is the parties' dispute about the proper construction of three patents that relate to the production and design of computer memory chips, called EEPROMs, that are programmable, electrically erasable, and non-volatile. These chips are useful in applications, such as programmable car radios, in which it is advantageous to enable the device to be programmed by the user, but to retain its information when power to the device is disconnected. Two of the patents at issue, patent number 4,822,750 ("the '750 patent") and patent number 4,701,776 ("the '776 patent") respectively, describe a process for manufacturing and a particular physical embodiment of such chips. These patents spring from a single application;¹ although they have different claim language, they retain identical specifications that describe both the process and the device.

Programming EEPROMs requires higher voltages than are normally supplied to chips. The third patent, number 4,511,811 ("the '811 patent"), describes a combination of electrical circuits that enables programming voltages to be generated on the chip instead of supplied from an external high-voltage source, an innovation that saves space and allows the devices to be manufactured more cheaply.

In June 1995, plaintiff filed a complaint in federal court alleging that defendant was infringing these patents. The Court held two tutorials, conducted off the record, in late 1996 and 1997, in order to understand the technology underlying the patents. Briefing on the issue of claim construction began in October 1997. In November 1997, defendant filed a motion for summary judgment of indefiniteness, which it requested the Court consider simultaneously to the claim construction. The Court vacated the hearing on that indefiniteness motion, ruling that it would be more efficient to consider it after it had construed the claims. Defendant also moved to strike a portion of the declaration of plaintiff's counsel on the ground that it contained argument rather than fact; plaintiff moved to strike the declarations of defendant's experts on the ground that they contained argument and legal conclusions. The Court took these motions to strike under submission.

A Markman hearing was held January 12 and January 13, 1998, at which the Court heard limited expert testimony to clarify several ambiguous terms. Having considered the parties' extended briefs and the evidence and arguments presented at the hearing, the Court issues the following ruling.

DISCUSSION

I. Legal Standard for Claim Construction

A. General Principles

The Court ordinarily determines the meaning and scope of a patent as a matter of law. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 371-73, 116 S.Ct. 1384, 1387, 134 L.Ed.2d 577 (1996). In construing a patent, the Court considers three sources, known as intrinsic evidence: the claims, the specification, and the prosecution history.² See Unique Concepts, Inc. v Brown, 939 F.2d 1558, 1561 (Fed.Cir.1991). "[U]nless the specification or the file history indicates that the inventor intended otherwise, a claim term will be accorded its ordinary and accustomed meaning." Wolverine World Wide, Inc. v. Nike, Inc., 38 F.3d 1192, 1196 (Fed.Cir.1994). The Court will refer to extrinsic evidence, such as expert and inventor testimony, dictionaries, and learned treatises, only if the claim terms are ambiguous and are not defined by the specification and prosecution history. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir.1996).

It is generally improper to limit the scope of the claim to examples used in the specifications, see Electro Med. Sys. v. Cooper Life Sciences, 34 F.3d 1048, 1054 (Fed. Cir.1994), although the Court may use the patent specification to ascertain the meaning of a claim. See Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1561-62 (Fed.Cir. 1991). Means-plus-function claims present a special case, however. When such a claim discloses a means for performing a function "without the recital of structure, material, or acts in support thereof, ... such claim shall be construed to cover the corresponding structure, material, or acts disclosed in the specification and equivalents thereof."³ 35 U.S.C. § 112, ¶ 6; see also Valmont Industries, Inc. v. Reinke Manufacturing Co., 983 F.2d 1039, 1042 (Fed.Cir.1993).

Under a means-plus-function analysis, if the specification mentions specific alternative structures, those structures are included in the scope of the patent. See Serrano v. Telular Corp., 111 F.3d 1578, 1583 (Fed.Cir.1997). A specification that merely mentions the possibility of alternative structures without specifically identifying them is not sufficient to expand the scope of the claim beyond the example used. See Fonar Corp. v. General Elec. Co., 107 F.3d 1543, 1551 (Fed.Cir.), cert. denied, ___ U.S. ___, 118 S.Ct. 266, 139 L.Ed.2d 192 (1997).

B. Construction of Related Patents

Identical or "indisputably interchangeable" claim terms in patents that share a common ancestry should be construed consistently. See Abtox v. Exitron Corp., 122 F.3d 1019, amended 131 F.3d 1009, 1010 (Fed.Cir.1997) ("gas-confining chamber" and "gas-tight confining chamber" were "indisputably interchangeable"); Jonsson v. Stanley Works, 903 F.2d 812 (Fed.Cir. 1990). Nothing in these cases, however, extends the rule to terms that are merely "similar" or "parallel," as defendant would have the Court hold.

Notwithstanding this special rule about identical or "indisputably interchangeable" claim terms, it is improper to use a portion of a parent's specification that relates solely to one child patent to construe directly a different child. See Abtox, 122 F.3d at 1027. In using prosecution history, "statements in the parent application must be confined to their proper context." Id. at 1026-27 (where parent application disclosed both microwave and radio frequency technology, it was error to import limitations relating to radio technology into a child patent solely relating to microwave technology).

II. Construction of the '776 Patent

At the time the '776 patent was issued in 1987 (the '750 patent was issued in 1989), EEPROMs were known in the prior art. See '776 patent, 1:16-2:32. The '776 patent describes an improved structure for such a device, which was intended to reduce the sensitivity of the chips to minor variations in the positions their component parts, enabling the chips to be successfully mass-produced in smaller sizes.

The '776 patent claims:

1. An electrically programmable, electrically erasable MOS memory device for use in a memory array having a plurality of memory cells arranged on a substrate of a first conductivity type, said substrate having at least one well structure of a second conductivity type formed therein to a first predetermined depth in a region other than the substrate region which supports said plurality of memory cells, said memory device comprising:

spaced apart first and second doped regions of a second conductivity type in said substrate, the substrate area between said first and second doped regions serving to establish a channel for said memory device;

field stop regions in said substrate having edges defining the sides of said channel for said memory device and for separating each of said memory cells from others of said memory cells in said array;

a third doped region of said second conductivity type in said substrate formed to a depth less than said first predetermined depth of said well structure in order to provide a source of charge carriers, a portion of said third region extending from said first doped region into said substrate area between said first and second doped regions to define the length of said channel, another portion of said third doped region extending appreciably under the edges of said field stop regions which define the sides of said channel;

an electrically isolated first conductive gate disposed above said substrate between said first and second doped regions;

a first insulating layer separating said first conductive gate from said channel in said substrate, said first insulating layer including a section formed over said third doped region to permit the passage of charge carriers between said third doped region and said first conductive gate, said section having a thickness which is less than the thickness of the remainder of said first insulating layer; and

a second conductive gate disposed above and insulated from said first conductive gate.

A. "appreciably under"

The patent requires that "another portion of said third doped region extend[] appreciably under the edges of said field stop regions which define the sides of said channel." Defendant argues that "appreciably under" requires that the third doped region be formed before the field stop regions. Defendant points out that the process portion of the specification states that "the third region ... is defined and implanted ... prior to defining the field oxide channel stop regions." '776 patent, 3:48-51. It is inappropriate, however, to limit a product patent to a manufacturing process described in the specification. See Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1541 (Fed.Cir.1983). Moreover, no reasonable person would...