DCG Sys., Inc. v. Checkpoint Techs., LLC
| Decision Date | 17 October 2012 |
| Docket Number | Case No.: 11-CV-03792-PSG |
| Parties | DCG SYSTEMS, INC., Plaintiff, v. CHECKPOINT TECHNOLOGIES, LLC, Defendant. |
| Court | U.S. District Court — Northern District of California |
(Re: Docket No. 73)
In this patent infringement suit, Plaintiff DCG Systems, Inc. ("DCG") alleges that Defendant Checkpoint Technologies, LLC ("Checkpoint") infringes U.S. Patent Nos. 7, 224, 828 (the "'828 Patent"), 7,466,852 (the "'852 Patent"), 7,227,702 (the "'702 Patent"), 7,492,529 (the "'529 Patent"), 7,639,025 (the "'025 Patent"), 7,733,100 (the "'100 Patent"), and 7,990,167 (the "'167 Patent"). These seven patents fall within four families in the general field of integrated circuit diagnostics. The parties seek construction of ten terms and phrases across the patents. After consideration of the claims, specification, prosecution history, and other relevant evidence, and after hearing the arguments of the parties, the court construes the disputed language of the asserted patents as set forth below.1
The asserted patents claim various technologies used to diagnose faults in the transistors of integrated circuits. These technologies include: (1) test signals; (2) imaging; (3) photon emission; (4) laser modulation; (5) modulation mapping; and (6) solid immersions lens ("SILs").
The '828 Patent was filed on May 29, 2007 and assigned to Credence Systems Corporation. DCG now owns the '828 Patent.2
The '852 Patent was filed on December 16, 2008 and assigned to DCG.
The '702 Patent was filed on June 5, 2007 and assigned to Credence Systems Corporation. DCG now owns the '702 Patent.3
The '529 Patent was filed on February 17, 2009 and assigned to DCG.
The '025 Patent was filed on December 29, 2009 and assigned to DCG.
The '100 Patent was filed on June 8, 2010 and assigned to DCG.
The '167 Patent was filed on August 2, 2011 and assigned to DCG. The '167 Patent is a continuation of the '100 Patent, and they share a common specification.
Seven years after the Federal Circuit's seminal Phillips decision,4 the cannons of claim construction are now well-known even if not perfectly understood by parties and courts alike. "To construe a claim term, the trial court must determine the meaning of any disputed words from the perspective of one of ordinary skill in the pertinent art at the time of filing."5 This requires a careful review of the intrinsic record, comprised of the claim terms, written description, and prosecution history of the patent.6 While claim terms "are generally given their ordinary and customary meaning," the claims themselves and the context in which the terms appear "provide substantialguidance as to the meaning of particular claim terms."7 Indeed, a patent's specification "is always highly relevant to the claim construction analysis."8 Claims "must be read in view of the specification, of which they are part."9 Although the patent's prosecution history "lacks the clarity of the specification and thus is less useful for claim construction purposes," it "can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be."10 The court also has the discretion to consider extrinsic evidence, including dictionaries, scientific treatises, and testimony from experts and inventors. Such evidence, however, is "less significant than the intrinsic record in determining the legally operative meaning of claim language."11
The court may adjust its construction of the claims at issue if later-introduced evidence compels an alternative construction.12
The parties' debate surrounding this construction is unusual. It is unusual because here the parties avoid the more typical debate they later have over whether the ordinary and customary meaning of a term trumps a narrower meaning taught by the specification either in the form of an express definition or claim scope disawowal.13 Instead, they agree that "total power" and its kin among claim terms do not have any single ordinary and customary meaning, but disagree whether the specification nevertheless supplies a sufficient meaning appreciable to the ordinarily skilled artisan in all contexts.
DCG says that it does. The specification explains that a user may select either a frequency or a band of frequencies.14 If the user selects a single frequency, a spectrum analyzer provides the "total power" by producing an output proportional to the power of the signal of the frequency selected. If the user selects a band of frequencies, the spectrum analyzer provides the total power by producing an output proportional to the integration of power over the range of frequencies in the band. Manuals for well-known spectrum analyzers such as the Agilent 89410A and 89440A refer to total power consistent with this teaching.15 Acknowledging that a spectrum analyzer offers but one option in the specification for measuring total power, a lock-in amplifier being another,16 DCG argues that one of ordinary skill in the art would appreciate that the total power provided by a lock-in analyzer is sensitive to the electrical signal's phase but is total power nonetheless.
Checkpoint disagrees. Because the asserted claims provide that "total power" is output from an "analysis system," Checkpoint argues that any explicit definition supplied by the patentee as lexicographer must apply to any analysis system and not just a spectrum analyzer or lock-in amplifier.17 Even as to those disclosed embodiments of an analysis system for which total power is defined, the definition supplied is insufficient. An explicit definition comes in a formula deemed Equation 1, but it is unintelligible to one of ordinary skill for three reasons: (1) the dimension of its resulting value is nonsense; (2) the value resulting from the interval integrated would not be meaningful: and (3) the equation reflects a conflation of optical and electrical properties. Checkpoint therefore concludes that the term is not only inaccurate but indefinite.
DCG has the better of the argument. As an initial matter, proof of indefiniteness is subject to "an exacting standard" by which Checkpoint must "demonstrate by clear and convincing evidence that one of ordinary skill in the relevant art could not discern the boundaries of the claim based on the claim language, the specification, the prosecution history, and the knowledge in the relevant art."18 A term need not be clear on its face to avoid indefiniteness, but merely be "amenable to construction."19 A term is not indefinite even if construing its meaning is a "formidable [task] and the conclusion may be one over which reasonable persons will disagree."20
Turning to the term at issue, the specification of the '100 and '167 Patents clearly teaches that:
Those of ordinary skill in the art are familiar with spectrum analyzers, and each of these user actions is familiar to those of ordinary skill in the art.22 While the spectrum analyzer manuals DCG cites are extrinsic evidence that "cannot be used to alter a claim construction dictated by a proper analysis of the intrinsic evidence,"23 extrinsic evidence continues to play an important role in claim construction in confirming the construction provided by an analysis of intrinsic evidence.24 The manuals depict the same user operations in the same...
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