Cont'l Circuits LLC v. Intel Corp.

• Citation: 915 F.3d 788
• Decision Date: 08 February 2019
• Docket Number: 2018-1076
• Parties: CONTINENTAL CIRCUITS LLC, Plaintiff-Appellant v. INTEL CORPORATION, Ibiden U.S.A. Corporation, Ibiden Company Limited, Defendants-Appellees
• Court: U.S. Court of Appeals — Federal Circuit

915 F.3d 788

CONTINENTAL CIRCUITS LLC, Plaintiff-Appellant

v.INTEL CORPORATION, Ibiden U.S.A. Corporation, Ibiden Company Limited, Defendants-Appellees

2018-1076

United States Court of Appeals, Federal Circuit.

Decided: February 8, 2019

Jeffrey A. Lamken, MoloLamken LLP, Washington, DC, argued for plaintiff-appellant. Also represented by Michael Gregory Pattillo, Jr., Benjamin Thomas Sirolly ; Bradley Wayne Caldwell, Jason Dodd Cassady, John Austin Curry, Warren Joseph McCarty, III, Caldwell Cassady & Curry, Dallas, TX.

Joseph J. Mueller, Wilmer Cutler Pickering Hale and Dorr LLP, Boston, MA, argued for defendants-appellees. Also represented by Kevin Goldman, Richard Wells O'Neill, Sarah B. Petty, Kevin Scott Prussia ; Nina S. Tallon, Washington, DC. Defendant-appellee Intel Corporation also represented by Matthew John Hult, Intel Corporation, Santa Clara, CA.

Before Lourie, Linn, and Taranto, Circuit Judges.

Lourie, Circuit Judge.

Continental Circuits LLC appeals from the judgment of the United States District Court for the District of Arizona of noninfringement of the asserted claims 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"). See Final Judgment, Cont’l Circuits LLC v. Intel Corp. , No. 16-2026 (D. Ariz. Sept. 12, 2017), ECF No. 273. The parties stipulated to a judgment of noninfringement, see Stipulation & Joint Motion, Cont’l Circuits LLC v. Intel Corp. , No. 16-2026 (D. Ariz. Sept. 7, 2017), ECF No. 266, based on the district court’s claim construction of certain claim terms, see Cont’l Circuits LLC v. Intel Corp. , No. 16-2026, 2017 WL 3478659 (D. Ariz. Aug. 9, 2017) (" Claim Construction Order "). Because we conclude that the district court erred in its claim construction, we vacate the judgment of noninfringement and remand for further proceedings.

BACKGROUND

Continental owns the ’582, ’560, ’105, and ’912 patents, which are directed to a "multilayer electrical device ... having a tooth structure" and methods for making the same. See, e.g. , ’582 patent Abstract. The four patents at issue, which have since expired, are continuations of one another and thus share substantially the same specification.¹ According to the patents, multilayer electric devices "suffer from delamination, blistering, and other reliability problems," especially when "subjected to thermal stress." Id. col. 1 ll. 30–32. The inventions of the patents purport to solve this problem by "forming a unique surface structure ... comprised of teeth that are preferably angled or hooked like fangs or canine teeth to enable one layer to mechanically grip a second layer." Id. col. 1 ll. 52–57. The specification further explains that the increased surface area of the teeth improves the adhesion of the layers to one another. See id. col. 1 l. 58–col. 2 l. 6.

The patents additionally "theorize[ ] ... that the best methods for producing the teeth [are] to use non-homogenous materials and/or techniques ... such that slowed and/or repeated etching will form teeth instead of a uniform etch." Id. col. 2 ll. 24–29. The specification then explains that "[o]ne technique for forming the teeth is ... the swell and etch or desmear process, except that contrary to all known teachings in the prior art ... a ‘double desmear process’ is utilized." Id. col. 5 ll. 40–44. It continues by explaining that "the peel strength produced in accordance with the present invention is greater than the peal [sic] strength produced by the desmear process of the prior art, i.e., a single pass desmear process." Id. col. 7 ll. 3–6. The specification then discloses that "[i]n stark contrast with the etch and swell process of the known prior art ... a second pass through the process ... is used" because it "make[s] use of [the] non-homogenaities [sic] in bringing about a formation of the teeth." Id. col. 9 ll. 1–5.

Continental 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 patent infringement in the District of Arizona. Continental asserted claims 85, 87, 89, 92, 94, 95, 100, 109, 114, and 122 of the ’582 patent ; claims 14 and 19 of the ’560 patent ; claims 13, 53, 71, 80, 82, 86, 88, 91, 95, 97, 101, and 103 of the ’105 patent ; and claims 2, 3, 18–20, and 26–28 of the ’912 patent. 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. See Claim Construction Order , 2017 WL 3478659, at *2 ; see also J.A. 1879–89.²

Claim 100 of the ’582 patent is illustrative of a claim that includes a "surface" claim term and reads as follows:

100. An electrical device including:

a conductive layer built up so as to fill undercuttings with respect to a surface of a dielectric material so as to form teeth in cavities, a plurality of the undercuttings being obtuse to the surface, wherein the conductive layer is a portion of circuitry of an electrical device, and a plurality of the teeth are within the range of 1 tenth of a mil deep to 1.75 tenths of a mil deep, and

wherein at least one of the cavities includes an upgrade slope with respect to the surface of the dielectric material , and one of the teeth engages a portion of the dielectric material at the slope.

’582 patent col. 18 ll. 48–59 (emphases added).

Claim 114 of the ’582 patent is representative of a claim that includes a "removal" claim term and reads as follows:

114. An electrical device including:

a dielectric material having a surface remaining from removal of a portion of the dielectric material ; and

means for mechanically gripping a conductive layer to the surface of the dielectric material so that the conductive layer is burrowed in and under the top surface of the dielectric material, wherein the conductive layer forms a portion of circuitry of an electrical device, wherein the means for mechanically gripping is comprised of teeth, and a plurality of the teeth are within the range of 1 tenth of a mil deep to 1.75 tenths of a mil deep, and

wherein at least one of the cavities includes an upgrade slope with respect to the surface of the dielectric material, and one of the teeth engages a portion of the dielectric material at the slope.

Id. col. 20 ll. 30–44 (emphasis added).

Claim 14 of the ’560 patent is representative of a claim that includes an "etching" claim term and reads as follows:

14. An article of manufacture, the article comprising:

an epoxy dielectric material delivered with solid content sufficient that etching the epoxy forms a non-uniformly roughened surface comprising cavities located in and underneath a surface of the dielectric material, and sufficient that the etching of the epoxy uses non-homogeneity with the solid content to bring about formation of the non-uniformly roughened surface with at least some of the cavities having a first cross-sectional distance proximate the initial surface and a substantially greater cross-sectional distance distant from the initial surface, anda conductive material, whereby the etching of the epoxy forms the cavities, and a portion of the conductive material in the cavities thereby forming teeth in the cavities, wherein the etching of the non-homogeneous composition forms the cavities, and wherein the conductive material forms a portion of circuitry of an electrical device.

’560 patent col. 10 ll. 7–25 (emphases added).

Aside from the "device" and "article of manufacture" claims recited above, the asserted claims also include process and product-by-process claims. Claims 2 and 18 of the ’912 patent are illustrative and read as follows:

2. A process of making an article of manufacture, the process comprising:

implementing a circuit design for an electrical device by coupling a dielectric material delivered with solid content, the dielectric material and the solid content being non-homogeneous materials, sufficient that etching the dielectric material forms a non-uniformly roughened surface comprising cavities located in, and underneath a surface of, the dielectric material, and sufficient that the etching of the dielectric material uses non-homogeneity with the solid content in bringing about formation of the non-uniformly roughened surface with at least some of the cavities having a first cross-sectional distance proximate the surface and a greater cross-sectional distance distant from the surface, with

a conductive material, whereby the etching of the dielectric material forms the cavities, and a portion of the conductive material in the cavities thereby forming teeth in the cavities, wherein the etching of the non-homogeneous composition forms the cavities, in circuitry of the electrical device.

....

18. A product produced by the process of claim 2.

’912 patent col. 9 l. 58–col. 10 l. 11, col. 11 l. 14.

The district court construed the Category 1 Terms to require that the "surface," "removal," or "etching" of the dielectric material be "produced by a repeated desmear process ." See Claim Construction Order , 2017 WL 3478659, at *2–3 (emphasis added). The district court concluded that Intel had "met the exacting standard required" to read a limitation into the claims. Id. at *3. Specifically, the district court found that the specification not only "repeatedly distinguishe[d] the process covered by the patent from the prior art and its use of a ‘single desmear process,’ " id. at *4, but also characterized "the present invention" as using a repeated desmear process, see id. at *5.

Additionally, the district court found that the prosecution history corroborated its construction. The examiner made indefiniteness and written description rejections during the prosecution of the ’560 patent of the claim limitation "etching of the epoxy uses...