Thorn EMI North America, Inc. v. Intel Corp., Civil Action No. 95-199-RRM.

• Decision Date: 29 August 1996
• Docket Number: Civil Action No. 95-199-RRM.
• Parties: THORN EMI NORTH AMERICA, INCORPORATED, Plaintiff, v. INTEL CORPORATION, Defendant.
• Court: U.S. District Court — District of Delaware

936 F. Supp. 1186

THORN EMI NORTH AMERICA, INCORPORATED, Plaintiff, v. INTEL CORPORATION, Defendant.

Civil Action No. 95-199-RRM.

United States District Court, D. Delaware.

August 29, 1996.

COPYRIGHT MATERIAL OMITTED

Josy W. Ingersoll, Martin S. Lessner, and Lisa B. Goodman, Young, Conaway, Stargatt & Taylor; Donald F. Parsons, Jr., and Lisa B. Baeurle, Morris, Nichols, Arsht & Tunnell, Wilmington, Delaware; James P. Bradley, Dale B. Nixon, Michael Rocco Cannatti, D. Scott Hemingway, and Michael Chibib, Richards, Medlock & Andrews, Dallas, Texas; Ivan S. Kavrukov, and Peter J. Philips, Cooper & Dunham, L.L.P., New York City, for plaintiff Thorn EMI North America, Inc.

William J. Marsden, Jr., and Joanne Ceballos, Potter, Anderson & Corroon, Wilmington, Delaware; James J. Elacqua, Timothy N. Trop, Christopher R. Benson, Stephen D. Dellett, and Henry A. Petri, Jr., Arnold, White & Durkee, Houston, Texas, for defendant Intel Corporation.

OPINION

McKELVIE, District Judge.

This is a patent case. Plaintiff Thorn EMI North America, Inc. ("TENA") is the owner of U.S. Patent No. 4,486,943 ("the '943 patent"). The '943 patent claims an improved method for fabricating metal oxide semiconductor field effect transistors ("MOS" or "MOSFET" transistors) in a large scale integrated circuit. On March 29, 1995, TENA filed a complaint against defendant Intel Corporation ("Intel") alleging that many of Intel's processes for manufacturing MOS transistors infringe the '943 patent. On June 19, 1995, Intel filed an answer denying infringement and asserting the invalidity of the '943 patent and certain equitable defenses.

On May 28, 1996, the court issued an opinion construing a portion of the claims of the '943 patent in accordance with Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed.Cir.1995), aff'd, ___ U.S. ___, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). See Thorn EMI North America, Inc. v. Intel Corp., 928 F.Supp. 449 (D.Del.1996). Based on that construction, the court also granted Intel's motion for partial summary judgment of noninfringement with respect to three of its accused processes: P652, P852 (revisions 9 & 10), and P864.3. Id.

On June 10 and 11, 1996, immediately prior to trial, the court held a hearing to construe any remaining disputed claims. At the end of the hearing, the court orally announced its construction of the disputed claims. Upon hearing the court's claim construction, Intel orally moved for summary judgment of noninfringement with respect to all of its remaining accused processes. The parties agreed to dismiss the jury pending resolution of Intel's motion. On June 19, 1996, TENA filed an answering brief in opposition to Intel's oral motion for summary judgment and a declaration by its expert Dr. Richard Fair in support of its opposition. On June 27, 1996, Intel filed a reply brief in support of its motion for summary judgment and a motion to strike portions of TENA's answering brief and all of Fair's June 19, 1996 declaration.

This is the court's explanation of its claim construction and its decision on Intel's motion to strike and motion for summary judgment.

I. FACTUAL BACKGROUND

In its May 28, 1996 Opinion, the court set out a description of the parties' contentions, the technology underlying this lawsuit, a brief description of the specification and the preferred embodiment of the '943 patent, and certain relevant aspects of the prosecution history. After the court issued its Opinion, TENA apparently withdrew its assertions of infringement with respect to independent claims 6 and 15-17. TENA now asserts only independent claim 1 and dependent claims 2 and 3 against Intel's three remaining accused processes: P650, P651, and P852 (revisions 1-8).

Claim 1 states:

1. A method of fabricating on a substrate an MOS transistor having a gate electrode and a self-aligned source/drain region with zero overlap comprising:

(a) forming a doped polysilicon gate electrode upon but insulated from the substrate; then

(b) differentially thermally growing an oxide to serve as an implant mask having controlled thickness on both the top and sides of the gate electrode whereby a relatively thicker layer of oxide is developed on the top and sides of the gate electrode and a relatively thinner layer of oxide is developed on the intended source and drain regions of the substrate; then

(c) anisotropically etching said oxide;

(d) implanting a source/drain region in the substrate such that said implant mask shields an underlying portion of the substrate from implantation to result in a gap between a side edge of the gate electrode and a side edge of the implanted region; and then

(e) heat driving the implanted source/ drain region until its side edge is substantially aligned with the previously separated side edge of the gate electrode, whereby the source/drain edge is aligned with the gate electrode edge and there is substantially zero overlap.

The parties do not dispute any additional language in dependent claims 2 and 3.

During this litigation, the parties have presented the following issues of claim construction with respect to claim 1 of the '943 patent:

1) Must the gate electrode be doped prior to differentially thermally growing an oxide layer over the gate electrode?

2) How much oxide must be grown on the top and sides of the gate electrode versus on the substrate for the oxide to be "differentially" grown as required by step (b)?

3) What is the meaning of the word "gap" in step (d)?

4) What are the meanings of the phrases "substantially aligned" and "substantially zero overlap" in step (e)?

Prior to the hearing on June 10 and 11, 1996, both parties submitted briefs, expert reports, and documentary evidence outlining their positions with respect to these disputed issues. In its May 28, 1996 Opinion, the court decided the first issue in the affirmative. In other words, the court construed claim 1 to require doping the gate electrode prior to differentially thermally growing an oxide layer over the gate electrode.

At the conclusion of the hearing on June 10 and 11, the court announced its resolution of the remaining claim construction issues. The court construed the phrases "differentially thermally growing," "relatively thicker," and "relatively thinner" to require three elements:

1) the grown oxide must be thick enough on top of the gate electrode to serve as a mask for the implant of step (d);

2) the grown oxide must be thick enough on the side of the gate electrode to block the implant of step (d), thereby making a "gap;" and

3) the top oxide thickness must be in a proportion of at least 1.77 to 1 to the substrate oxide thickness.

The court construed the term "gap" to mean the following:

The area of the substrate under the oxide mask grown during step (b) that is protected by the mask from the implantation of ions that reverse the polarity of the substrate and thereby create the source and drain regions.

The court construed the phrases "substantially aligned" and "substantially zero overlap" to mean "the same as or very close to perfect alignment" and "the same as or very close to zero overlap."

On June 12, 1996, TENA read the following stipulated fact into the record ostensibly in order to place the case into a posture for the court to grant Intel's motion for summary judgment based on the court's claim construction:

TENA and Intel stipulate that the thermally grown oxide layer on the top of the gate electrode in the P650, P651, and P852 (revs. 1-8) processes used by Intel to fabricate MOSFET transistors does not by itself mask the top of the gate electrode from the N+ and P+ implants at the energy levels used in said process for said implants.

The designations "N+" and "P+" refer to the polarity of the ions implanted into the gate electrode and the substrate during the fabrication of MOS transistors.

II. DISCUSSION

Intel's motion to strike seeks to eliminate all of Dr. Fair's June 19, 1996 declaration and portions of TENA's answering brief in opposition to Intel's motion for summary judgment, both of which are relevant to the court's construction of the claims of the '943 patent and its decision on Intel's motion for summary judgment. Thus, the court must first determine whether to grant Intel's motion to strike. The court will then discuss its construction of the claims. Finally, the court will determine whether to grant Intel's motion for summary judgment.

A. Should the Court Strike Dr. Fair's June 19, 1996 Declaration and Part of TENA's Answering Brief In Opposition to Intel's Motion for Summary Judgment?

Intel makes three arguments in support of its motion to strike. First, Intel argues that TENA has introduced disputed facts by way of its answering brief after TENA's counsel represented that TENA would not do so. Second, Intel argues that TENA has introduced new contentions that were not disclosed during pre-trial discovery or in the Joint Pre-Trial Order. Third, Intel argues that Dr. Fair offers an opinion with respect to infringement under the doctrine of equivalents that was not in his expert report or identified during his deposition. TENA responds that its answering brief is a proper response to Intel's motion for summary judgment. In addition, TENA argues that the Joint Pre-trial Order and discovery gave Intel sufficient notice of TENA's allegedly new arguments and Dr. Fair's allegedly new opinion.

1. Should the court allow TENA to introduce disputed facts?

Even if TENA's counsel did in fact make a representation that TENA would not introduce disputed facts, the court will not hold TENA to that representation because to do so would be unfair in this instance. The Federal Circuit's recent decision in Markman, which requires the court to construe patent claims, poses new and unusual procedural dilemmas, particularly with respect to when the court should construe the claims. In this case, the court construed the claims after a hearing immediately prior to the trial....