Godo Kaisha IP Bridge 1 v. Intel Corporation

REPLY CLAIM CONSTRUCTION BRIEF

E.D. Tex.July 18, 2018

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION GODO KAISHA IP BRIDGE 1, Plaintiff, v. INTEL CORPORATION, Defendant. Case No. 2:17-cv-00676-RWS-RSP JURY TRIAL DEMANDED PLAINTIFF GODO KAISHA IP BRIDGE 1’S REPLY CLAIM CONSTRUCTION BRIEF Case 2:17-cv-00676-RWS-RSP Document 108 Filed 07/18/18 Page 1 of 17 PageID #: 6156 -i- TABLE OF CONTENTS Page I. US Patent No. 6,346,736..................................................................................................... 1 A. “Dielectric Film” (Claims 6, 7, and 8) .................................................................... 1 II. U.S. Patent Nos. 6,387,824 and 6,602,802 ......................................................................... 4 A. “Form . . . a Porous Film” (’824 Patent, claim 3) / “Forming a Porous Film” (’802 Patent, claim 1) .................................................... 4 B. Step Order (’824 Patent, claim 3) ........................................................................... 9 C. Step Order (’802 Patent, claim 1) ......................................................................... 11 III. Conclusion ........................................................................................................................ 11 Case 2:17-cv-00676-RWS-RSP Document 108 Filed 07/18/18 Page 2 of 17 PageID #: 6157 -ii- TABLE OF AUTHORITIES Page(s) Cases Absolute Software, Inv. v. Stealth Signal, Inc., 659 F. 3d 1121 (Fed. Cir. 2011).............................................................................................1, 7 Altiris, Inc. v. Symantec Corp., 318 F.3d 1363 (Fed. Cir. 2003)..........................................................................................10, 11 Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229 (Fed. Cir. 2016)................................................................................................10 Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338 (Fed. Cir. 2008)..................................................................................................1 C-Cation Techs., LLC v. Time Warner Cable, Inc., No. 2:14-cv-0059-JRG-RSP, 2015 WL 1849014 (E.D. Tex. Apr. 20, 2015)..........................11 DataTreasury Corp. v. Wells Fargo & Co., No. 2:05-cv-291, 2009 WL 1393068 (E.D. Tex. May 11, 2009) ............................................10 E-Pass Techs. Inc. v. 3Com Corp., 473 F.3d 1213 (Fed. Cir. 2007)..................................................................................................9 E-Watch Inc. v. Apple, Inc., No. 2:13-cv-1061-JRG-RSP, 2015 WL 1387947 (E.D. Tex. March 25, 2015) ........................9 Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312 (Fed. Cir. 2006)..............................................................................................1, 7 Indacon, Inc. v. Facebook, Inc., 824 F.3d 1352 (Fed. Cir. 2016)................................................................................................10 Net MoneyIN, Inc. v. VeriSign, Inc., 545 F. 3d 1359 (Fed. Cir. 2008).................................................................................................3 Network-1 Sec. Solutions, Inc. v. Cisco Sys., Inc., 692 F. Supp. 2d 632 (E.D. Tex. 2010) .......................................................................................5 Phillips v. AWH Corp., 415 F. 3d 1303 (Fed. Cir. 2005) (en banc).............................................................................1, 8 Qcue, Inc. v. Digonex Techs., Inc., No. A-12-CA-484-SS, 2013 WL 4784120 (W.D. Tex. Sept. 5, 2013)......................................1 Case 2:17-cv-00676-RWS-RSP Document 108 Filed 07/18/18 Page 3 of 17 PageID #: 6158 -iii- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) .................................................................................................................2 Case 2:17-cv-00676-RWS-RSP Document 108 Filed 07/18/18 Page 4 of 17 PageID #: 6159 PLAINTIFF GODO KAISHA IP BRIDGE 1’S REPLY CLAIM CONSTRUCTION BRIEF - Page 1 I. US PATENT NO. 6,346,736 A. “Dielectric Film” (Claims 6, 7, and 8) Intel does not dispute that “dielectric film” is a commonly understood term to which a POSITA would attribute plain meaning. Nor does Intel contend that there has been any disavowal of claim scope or lexicography, which would be necessary to limit that plain meaning of “dielectric film.” See Br. 9-10. Moreover, Intel does not dispute that, instead of clarifying what a “dielectric film” is, its construction just adds an additional limitation to the claims-thereby “commit[ing] ‘one of the cardinal sins of patent law-reading a claim limitation from the written description into the claims.’” Qcue, Inc. v. Digonex Techs., Inc., No. A-12-CA-484-SS, 2013 WL 4784120, at *5 (W.D. Tex. Sept. 5, 2013) (quoting Phillips v. AWH Corp., 415 F. 3d 1303, 1320 (Fed. Cir. 2005) (en banc)). Intel’s reliance on the introductory sentence of the ’736 patent to add a limitation is misplaced. Resp. 25-26. There, the patent states that the “present invention relates to a semiconductor device having a trench-isolated structure and, more particularly, to a method of reducing capacitance . . . .” Ex. A (’736) at 1:6-9. Because the claims at issue here are apparatus claims, the reference to a method is inapplicable. See Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1344 (Fed. Cir. 2008) (“Despite their similarities, these [apparatus and method] claims are directed toward different classes of patentable subject material under 35 U.S.C. § 101.”). Regardless, this single statement is not limiting because the ’736 patent repeatedly refers to the “present invention” to describe numerous different embodiments of the invention, making clear that the patent is not limited to reducing capacitance.1 See Absolute Software, Inc. v. Stealth 1 Ex. A (’736) at 3:49-59, 4:16-27, 4:60-5:3, 5:7-18, 6:10-27, 7:1-15, 7:37-51, 8:1-15, 8:46-63, 9:16-30, 9:31-52, 9:53-10:9. Intel’s reliance on Honeywell is therefore misplaced. In that case, the patent stated on four separate occasions that “the present invention” or “this invention” requires a fuel filter, and the “fuel filter” was the “only component” in the written description disclosed as Case 2:17-cv-00676-RWS-RSP Document 108 Filed 07/18/18 Page 5 of 17 PageID #: 6160 PLAINTIFF GODO KAISHA IP BRIDGE 1’S REPLY CLAIM CONSTRUCTION BRIEF - Page 2 Signal, Inc., 659 F. 3d 1121, 1136-37 (Fed. Cir. 2011) (“use of the phrase ‘present invention’ or ‘this invention’ is not always so limiting, such as where the references to a certain limitation as being the ‘invention’ are not uniform”). Intel’s reliance on statements about the advantage of a reduced capacitance as compared to a particular structure shown in Figure 19 of the ’736 patent is also misplaced. Resp. 25-26. The patent does not state that any particular dielectric film must be used, only that reduced capacitance is an achievable effect when a dielectric film is used. Intel’s reliance on statements about capacitance during prosecution is similarly misplaced. Resp. 26. The applicant never pointed to capacitance characteristics of a dielectric film as a distinguishing claim feature, but instead identified missing limitations (none of which relate to capacitance). Ex. 18 (’736 File History) at IPB- INTEL00000908 (arguing that the prior art did not disclose the claimed “second trench portion” or “wire”). And Intel’s reliance on expert testimony is also misplaced. Resp. 26-27. Expert testimony cannot create the lexicography or clear disavowal of claim scope needed to limit a claim to less than its plain meaning. See Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015) (“[Experts] cannot be used to prove the proper or legal construction of any instrument of writing.”) (internal quotations omitted). Moreover, Intel misrepresents that the experts agree that the prior art “specifically included the use of dielectric films in precisely the arrangement set forth in claim 6,” arguing from that false premise that a “particular type of dielectric film . . . that reduces capacitance” is the distinguishing feature of the ’736 patent. Resp. 27. But nothing in the cited having the claimed polymer housing with electrically conductive fibers interlaced therein. Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006). Here, Intel points to only one of many non-uniform statements about “the invention”-this one describing an inapposite method. Case 2:17-cv-00676-RWS-RSP Document 108 Filed 07/18/18 Page 6 of 17 PageID #: 6161 PLAINTIFF GODO KAISHA IP BRIDGE 1’S REPLY CLAIM CONSTRUCTION BRIEF - Page 3 testimony shows that the unique arrangement of elements of claim 6 is in the prior art. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F. 3d 1359, 1369 (Fed. Cir. 2008) (prior art must disclose claim elements as arranged in the claim in order to invalidate). Intel’s assertion that its construction does not improperly read an intent requirement into the claim (See Br. 6-7) because “a person skilled in the art can evaluate the structure of a semiconductor device and understand the effect of each layer without knowing why the designer decided to include it” (Resp. 28-29) is pure attorney argument. Intel’s own expert, Dr. Bravman, directly contradicted Intel when he admitted that he would “need to know why that dielectric film was included in the structure” to determine if a device included a “dielectric film” under Intel’s construction. Ex. EE (Bravman Tr.) at 12:19-13:2. Finally, Intel’s Response highlights the ambiguity in its construction because the construction does not specify what the dielectric film must reduce wire-to-substrate capacitance relative to. Resp. 25, 29-30. Intel illustrates this problem by arguing that Mr. Healey acknowledged that not all dielectric films will reduce capacitance because he testified that if one were to replace a film having a k-value of 3.9 with a film having a k-value of 26, this would result in an increase in capacitance. See Resp. 27, n. 15. (citing Ex. 16 (Healey Tr.) at 80:11-21). This testimony highlights the fact that whether a dielectric film will reduce capacitance depends on the point of comparison: If, instead of replacing a film having a k-value of 3.9, one were replacing a film having a high k-value of 27, the film having a k-value of 26 would have reduced capacitance. As Mr. Healey explained, he would need to know what is being compared to in order to know whether a dielectric film reduces capacitance. Ex. FF (Healey Tr.) at 80:23-24.2 2 Indeed, each piece of Mr. Healey’s testimony Intel points to in support of an alleged admission that a dielectric film may not reduce capacitance is merely testimony explaining why a point of Case 2:17-cv-00676-RWS-RSP Document 108 Filed 07/18/18 Page 7 of 17 PageID #: 6162 PLAINTIFF GODO KAISHA IP BRIDGE 1’S REPLY CLAIM CONSTRUCTION BRIEF - Page 4 Intel’s only argument that there is no ambiguity in its construction of “dielectric film” further illustrates the ambiguity. Intel asserts that the ’736 patent is clear that the “capacitance must be reduced in comparison to a semiconductor device without the claimed dielectric film,” but then compares a device with another device containing a different dielectric film having the same structure (but having a different dielectric constant), not one without the claimed dielectric film. See Resp. 30. Intel’s inability to consistently apply its own construction is telling of the confusion its construction would create at trial. II. U.S. PATENT NOS. 6,387,824 AND 6,602,802 A. “Form . . . a Porous Film” (’824 Patent, claim 3) / “Forming a Porous Film” (’802 Patent, claim 1) Intel does not dispute that the patentee neither redefined the term “porous film” to give it some specialized meaning, nor disavowed claim scope. As a result, in order to argue that the claimed porous film must have a dielectric constant below 2, Intel is forced to contradict itself, to take positions without factual or legal support, and to misrepresent testimony-all the while offering no response to critical evidence that undermines Intel’s argument. Despite asserting that an “objective benchmark” is needed because all materials in the universe are porous, see Resp. 13-14, Intel admits throughout its brief that non-porous films exist and are described in the ’802 and ’824 patents. For example, Intel asserts that “[t]he first embodiment (which corresponds to asserted claim 1 of the ’802 patent) initially deposits a non- porous ‘organic-inorganic hybrid film’ . . . and then forms a ‘porous film.’” Resp. 14-15; see also id. at 15 (“[T]he only time the patents mention a dielectric constant greater than 2.0 is in the context of films that have not yet been made porous . . . .”) (emphasis in original). Indeed, in describing comparison is necessary to know whether capacitance is reduced or increased. Ex. FF (Healey Tr.) at 79:20-80:10, 80:11-24, 81:7-82:5. Case 2:17-cv-00676-RWS-RSP Document 108 Filed 07/18/18 Page 8 of 17 PageID #: 6163 PLAINTIFF GODO KAISHA IP BRIDGE 1’S REPLY CLAIM CONSTRUCTION BRIEF - Page 5 the ’802 and ’824 patents, Intel depicts the formation of a porous film from a non-porous organic- inorganic hybrid film, as shown in the figures. Id. at 4. These admissions are fatal to Intel’s position-because its argument that an “objective benchmark” is needed is built on the premise that all materials are porous. Without that premise, its entire argument collapses like a house of cards.3 Not only has Intel admitted there are non-porous films, Intel has failed to address the evidence that, in the semiconductor industry, not all materials are considered to be porous. Intel does not dispute, for example, that the industry shifted from use of non-porous to porous films, see Br. 16, a fact reflected in the patents themselves. Ex. B (’824) at 1:23-26 (“As an inter-layer dielectric having a low dielectric constant, a porous film has been under study as a replacement for a conventional [i.e., non-porous] silicon oxide film.”); Ex. C (’802) at 1:28-32 (same). And Intel has no response to the USPTO’s classification of materials as “porous” or “non-porous” in the exact same field of endeavor as the asserted patents, see Br. 16, or to the myriad publications that discuss “porous” films without any associated “objective benchmark,” see id. at 10-11. Consistent with its usage in the art, “porous film” can be understood under its plain meaning.4 Compounding the fallacy of Intel’s “objective benchmark” argument, Intel’s proposed 3 Intel’s argument is equally diminished by its reliance on the opinion of Dr. Dauskardt, whose credibility is sunk. See Br. 15-16. Intel attempts to resurrect his credibility, see Resp. 10 n.11, but fails to reconcile Dr. Dauskardt’s opinion here that all materials have pores, with his prior opinion in another case that accused products met a “non-porous” claim limitation where the court had construed that term as “having no pores.” Br. 15-16; see also Ex. GG (Dauskardt Tr.) at 14:6-8 (testifying that he has experience with “non-porous films”). 4 Intel’s reliance on Network-1 Sec. Solutions, Inc. v. Cisco Sys., Inc., 692 F. Supp. 2d 632 (E.D. Tex. 2010), for the assertion that some benchmark is required here, is misplaced. In that case, the claim term at issue was “low level current.” Because that limitation was “a relative term of degree, [] some objective guidance must be provided by the specification,” which plaintiff did not contest. Id. at 644. In contrast, here, the term “porous” itself is not a relative term of degree-and no expert has opined that it is. Accordingly, Network-1 is inapplicable here. Case 2:17-cv-00676-RWS-RSP Document 108 Filed 07/18/18 Page 9 of 17 PageID #: 6164 PLAINTIFF GODO KAISHA IP BRIDGE 1’S REPLY CLAIM CONSTRUCTION BRIEF - Page 6 construction-i.e., the addition of a dielectric constant ceiling-does not provide a benchmark for porosity. See Br. 17. Intel asserts that both parties’ experts agree that the dielectric constant constitutes an objective standard for measuring porosity. See Resp. 17. That is false. In an attempt to mislead the Court, Intel cites a snippet of Dr. Glew’s testimony to make it appear that Dr. Glew agreed that the dielectric constant is an objective way to measure porosity. Id. n.9 (quoting Dr. Glew’s testimony as: “I think it’s an objective measure”). But that answer was in response to a question about whether ellipsometry, a technique for measuring a material’s dielectric constant, is subjective or objective in nature. See Ex. II (Glew Tr.) at 25:1-8, 175:3-8. In other words, Dr. Glew testified that ellipsometry is an objective analytical technique for measuring dielectric constant; he did not testify that a dielectric constant is an objective measure of porosity. See id. Those are two very different things. Furthermore, while Intel cites to the declaration of its expert, Dr. Dasukardt, in support of its assertion, see Resp. 17 n.9, Intel fails to address his deposition testimony where he contradicted himself and admitted that the dielectric constant “wouldn’t necessarily tell you that the films are porous.” See Br. 17 (quoting Ex. Q (Dauskardt Tr.) at 102:8-16). Unsurprisingly, but profoundly, Intel has cited no example where a material’s porosity was described with reference to its dielectric constant. Cf. Resp. 20-21 (referencing select publications that reference pore sizes). Intel also asks the Court to adopt its construction based upon a single instance of the phrase “present invention” being used in the same sentence as a reference to a dielectric constant of 2 or less. Resp. 14. But in the 19 other instances in which the specification uses the words “present invention,” there is no mention of dielectric constant, let alone a dielectric constant of 2 or less. Instead, in those 19 other instances, the specification refers to a method of forming a porous film Case 2:17-cv-00676-RWS-RSP Document 108 Filed 07/18/18 Page 10 of 17 PageID #: 6165 PLAINTIFF GODO KAISHA IP BRIDGE 1’S REPLY CLAIM CONSTRUCTION BRIEF - Page 7 or a method of forming a wiring structure.5 What is clear from reading the specification is that the patentee viewed his invention as novel means for forming a porous film and/or wiring structure- not the formation of a film having a particular dielectric constant. The single statement that Intel points to is a statement of capability or purpose and, in any event, is not limiting in the context of the specification’s many, divergent statements regarding the invention. See Absolute Software, 659 F. 3d at 1136-37 (“use of the phrase ‘present invention’ or ‘this invention’ is not always so limiting, such as where the references to a certain limitation as being the ‘invention’ are not uniform”).6 Intel also incorrectly asserts that all disclosed embodiments describe “porous films” in reference to a dielectric constant of 2 or less. Resp. 14. Intel attempts to run from the fact that embodiments 2, 5, and 7 describe a porous film without mentioning any dielectric constant, see Br. 19, by asserting that each embodiment states that its process works “similarly” to the first embodiment, see Resp. 14. But the fact that they may use “similar” processes does not mean the outcome (dielectric of less than 2) will result. Further, embodiment 2 says only that the formation of the (non-porous) organic-inorganic hybrid film is done similarly to the first embodiment, and then goes on to describe subsequent formation of the porous film without reference to dielectric 5 Ex. B (’824) at 1:5-8, 2:22-30, 2:45-53, 3:56-62, 4:32-47, 4:58-5:10, 5:32-43, 5:55-64, 5:65-6:4, 6:10-12, 6:17-20, 6:21-24, 6:31-35, 6:44-51, 8:16-23, 8:58-65, 10:59-61, 11:27-29, 13:46-49; Ex. C (’802) at 1:11-13, 2:27-35, 2:50-58, 3:61-67, 4:37-52, 4:63-5:14, 5:36-46, 5:58-67, 6:1-7, 6:13- 15, 6:19-23, 6:24-27, 6:34-37, 6:46-53, 8:18-25, 8:60-67, 10:63-65, 11:29-32, 13:47-50. Indeed, the very first sentence of the specification is: “The present invention relates to a method of forming a porous film used as, e.g., an inter-layer dielectric in a semiconductor integrated circuit device.” Ex. B (’824) at 1:5-8; Ex. C (’802) at 1:11-13. 6 Intel’s reliance on Honeywell is inapposite for similar reasons discussed above for the ’736 patent. See supra n.1. Here, Intel points to only one statement of the “present invention” and ignores nineteen that are inconsistent. Moreover, the only mentions of a dielectric constant of “2 or less” are statements of purpose or capability. See Br. 18. Finally, the specifications expressly disclose a “porous” film with a dielectric constant of greater than 2.0. See id. at 19. Case 2:17-cv-00676-RWS-RSP Document 108 Filed 07/18/18 Page 11 of 17 PageID #: 6166 PLAINTIFF GODO KAISHA IP BRIDGE 1’S REPLY CLAIM CONSTRUCTION BRIEF - Page 8 constant. Ex. B (’824) at 8:15-55; Ex. C (’802) at 8:17-57. In any event, putting aside Intel’s misrepresentation of the intrinsic record, even when “the specification [] describes very specific embodiments of the invention, [the Federal Circuit has] repeatedly warned against confining the claims to those embodiments.” Phillips, 415 F. 3d at 1323 (collecting cases). Finally, Intel’s only retort to the specification’s express disclosure of a “porous film” with a dielectric constant of 2.3 is to claim that the patents discount the film as “irrelevant.” Resp. 15. But the patents plainly do not call that film irrelevant or otherwise disparage it; Intel’s assertion to the contrary is mere attorney argument. Furthermore, even if that film were irrelevant to the purpose of the invention (which it is not), Intel’s construction of “porous film” still contradicts the express disclosure of the specification that a “porous” film can have a dielectric constant above 2.7 Ex. B (’824) at 12:30-32; Ex. C (’802) at 12:31-33. With respect to the portion of Intel’s construction requiring “fine holes,” Intel fails to show that the patentee engaged in lexicography to define the well-known term “porous” with reference to the unknown phrase “fine holes,” or that “fine holes” would increase comprehension of the claims’ scope. Instead, Intel repeatedly criticizes IP Bridge’s proposed construction as “circular” and “tautological.” Resp. 13, 21, 22. This is incorrect. First, IP Bridge does not believe the term needs construction, and has proposed a construction only in the alternative. Second, a circular definition is one that defines a term by using the term itself in the definition (e.g., defining “circular definition” as “a definition that is circular,” or defining “porous film” as “a film that is porous”). IP Bridge’s proposed construction does not do that. Instead, IP Bridge proposes defining “porous film” in terms of the physical features that a porous film has: “pores.” There is nothing confusing, 7 Additionally, according to Intel’s own brief, the cited prior art reference Watanabe, which is part of the intrinsic record, discloses a “porous” film with a dielectric constant greater than 2.0 (Resp. 16). Case 2:17-cv-00676-RWS-RSP Document 108 Filed 07/18/18 Page 12 of 17 PageID #: 6167 PLAINTIFF GODO KAISHA IP BRIDGE 1’S REPLY CLAIM CONSTRUCTION BRIEF - Page 9 illogical, or improper with IP Bridge’s proposal. See E-Watch Inc. v. Apple, Inc., No. 2:13-cv- 1061-JRG-RSP, 2015 WL 1387947, at *22-23 (E.D. Tex. March 25, 2015) (construing “digitized” using the word “digital” despite plaintiff’s argument that such a construction is circular). Indeed, contemporary dictionaries defined “porous” in the same way (Br. 13)-a point which Intel never addresses in its brief. The term “form[ing] . . . a porous film” should be given its plain and ordinary meaning, and to the extent the Court believes a fact finder would be assisted by an explanation of the term’s plain and ordinary meaning, that meaning is simply “form[ing] . . . a film having pores.”8 B. Step Order (’824 Patent, claim 3) Intel’s argument that all steps must be performed in the order recited fails. Intel cannot seriously dispute that the grammar and logic of steps (c) and (d) of ’824 patent claim 3 do not impose a particular order of steps. Step (c) recites “filling a metal film in said wire groove” and step (d) recites “performing a plasma process . . . with respect to said organic-inorganic hybrid film to form an inter-layer dielectric.” Neither step refers to or depends on the other, so there is no reason why the steps would need to be performed in the order recited. Br. 20-21.9 Intel instead improperly seeks to limit the scope of claim 3 of the ’824 patent by contrasting it with claim 1. Resp. 10-13. However, this is a claim differentiation argument, and claim differentiation applies only when the claims are otherwise identical in scope. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1238 (Fed. Cir. 2016) (“This court has declined to apply the 8 Intel asserts that “[u]nder IP Bridge’s position, the asserted claims are indefinite because they fail to inform the public of the claim scope.” Resp. 22. However, Intel waived any argument that the claim is indefinite. Intel previously asserted in its P.R. 4-2 disclosure that the claim term was “indefinite” but then dropped the argument from its proposal in the parties’ Joint Claim Construction Statement. Compare Ex. HH (Intel’s P.R. 4-2 Disclosure) with Dkt. 85-2 at 3, 4. Regardless, the claim term is not indefinite because it can be readily understood by persons of ordinary skill in the art under its plain and ordinary meaning. Glew Decl. ¶¶35-42. 9 For this same reason, E-Pass Techs. is inapposite. 473 F.3d 1213, 122 (Fed. Cir. 2007). Case 2:17-cv-00676-RWS-RSP Document 108 Filed 07/18/18 Page 13 of 17 PageID #: 6168 PLAINTIFF GODO KAISHA IP BRIDGE 1’S REPLY CLAIM CONSTRUCTION BRIEF - Page 10 doctrine of claim differentiation where ‘the claims are not otherwise identical in scope.’”) (quoting Indacon, Inc. v. Facebook, Inc., 824 F.3d 1352, 1358 (Fed. Cir. 2016)). Here, there are multiple differences between claims 1 and 3. For example, claim 1 recites “forming a resist pattern on said organic-inorganic hybrid film” and “performing etching with respect to the organic-inorganic hybrid film masked with said resist pattern to form a depressed portion composed of a wire groove or a contact hole in said organic-inorganic hybrid film,” whereas claim 3 recites “patterning said organic-inorganic hybrid film to form a wire groove in said organic-inorganic hybrid film.” Therefore, claim differentiation cannot apply. Intel also argues that claim 3 must be limited to embodiment 7 (Resp. 10-13), ignoring the well-established principle that a claim is not limited to an embodiment’s order of steps absent disclaimer. Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1370-71 (Fed. Cir. 2003) (holding that the district court erred in construing the method claims as being limited to the order of the disclosed embodiment); DataTreasury Corp. v. Wells Fargo & Co., No. 2:05-cv-291, 2009 WL 1393068, at *60 (E.D. Tex. May 11, 2009) (“Reliance on the specification to require a specific order of steps when the specification does not dictate such an order was precisely what the Federal Circuit concluded the district court had done wrong in Altiris. This Court refuses to make that same mistake.”). This reasoning applies in even greater force here, where the patentee affirmatively disclosed an alternative step order. See, e.g., Ex. B (’824) at 10:57-11:24 (embodiment 5 with plasma process prior to filling a metal film), 11:26-12:29 (embodiment 6 with same); Glew Decl. ¶53. Moreover, Intel’s argument is further flawed because it argues that claim 1 is directed to a “depressed portion” of embodiment 5 whereas claim 3 is directed to a “wire groove” of embodiment 7 (Resp. 11-12); however, Intel fails to quote the full language from embodiment 5, which describes a “depressed portion 13 composed of a wire groove or contact hole” (Ex. B (’824) Case 2:17-cv-00676-RWS-RSP Document 108 Filed 07/18/18 Page 14 of 17 PageID #: 6169 PLAINTIFF GODO KAISHA IP BRIDGE 1’S REPLY CLAIM CONSTRUCTION BRIEF - Page 11 at 11:3-7)-language that is similar to the “wire groove” of claim 3 (Ex. B (’824) at 16:1-2). Thus, claim 3 should not be read as limited to embodiment 7. C. Step Order (’802 Patent, claim 1) Intel argues that because step (b) refers back to the “organic-inorganic hybrid film” of step (a), step (b) must take place after step (a) (Resp. 7-8), but nothing about the claim language precludes the steps from taking place at the same time. Indeed, Intel’s entire premise regarding step order is flawed. Intel incorrectly suggests that the porous film cannot exist at the same time as the organic-inorganic hybrid film by arguing that the porous film is “inorganic” only. Resp. 6. However, this ignores the actual claim language which recites that the porous film is “composed of said organic-inorganic hybrid film.” Ex. C (’802) at 14:56-63. Moreover, antecedent basis is not dispositive of an order of steps. See C-Cation Techs., LLC v. Time Warner Cable, Inc., No. 2:14-cv-0059-JRG-RSP, 2015 WL 1849014, at *19 (E.D. Tex. Apr. 20, 2015). Intel does not actually dispute that it would be possible to perform the claimed steps simultaneously. Rather, Intel disputes Dr. Glew’s conclusion that the specification discloses a simultaneous process. Resp. 9-10. But even when “the specification discusse[s] only a single embodiment,” it is “improper to read a specific order of steps into method claims where, as a matter of logic or grammar, the language of the method claims did not impose a specific order on the performance of the method steps, and the specification did not directly or implicitly require a particular order.” Altiris, 318 F.3d at 1371. III. CONCLUSION For the foregoing reasons, IP Bridge respectfully requests that the Court adopt its proposed constructions and reject those proposed by Intel. Case 2:17-cv-00676-RWS-RSP Document 108 Filed 07/18/18 Page 15 of 17 PageID #: 6170 PLAINTIFF GODO KAISHA IP BRIDGE 1’S REPLY CLAIM CONSTRUCTION BRIEF - Page 12 /s/ Jennifer H. Doan Jennifer H Doan State Bar No. 08809050 Joshua R. Thane State Bar No. 24060713 Kyle R. Akin Texas Bar No. 24105422 Darby V. Doan Texas Bar No. 00793622 J. Randy Roeser Texas Bar No. 24089377 HALTOM & DOAN 6500 Summerhill Road, Suite 100 Texarkana, Texas 75503 Telephone: (903) 255-1000 Facsimile: (903) 255-0800 Email: jdoan@haltomdoan.com Email: jthane@haltomdoan.com Email: kakin@haltomdoan.com Email: ddoan@haltomdoan.com Email: rroeser@haltomdoan.com James R. Batchelder (CA Bar. 136347) (Eastern District of Texas Member) Andrew N. Thomases (CA Bar No. 177339) (Eastern District of Texas Member) Andrew T. Radsch (CA Bar No. 303665) (Eastern District of Texas Member) Christopher M. Bonny (CA Bar No. 280554) (Eastern District of Texas Member) ROPES & GRAY LLP 1900 University Avenue, 6th Floor East Palo Alto, CA 94303-2284 Telephone: (650) 617-4000 Facsimile: (650) 617-4090 james.batchelder@ropesgray.com andrew.thomases@ropesgray.com andrew.radsch@ropesgray.com christopher.bonny@ropesgray.com Case 2:17-cv-00676-RWS-RSP Document 108 Filed 07/18/18 Page 16 of 17 PageID #: 6171 PLAINTIFF GODO KAISHA IP BRIDGE 1’S REPLY CLAIM CONSTRUCTION BRIEF - Page 13 Alexander E. Middleton (NY Bar No. 4797114) (Eastern District of Texas Member) ROPES & GRAY LLP 1211 Avenue of the Americas New York, NY 10036-8704 Telephone: (212) 596-9000 Facsimile: (212) 596-9090 alexander.middleton@ropesgray.com ATTORNEYS FOR GODO KAISHA IP BRIDGE 1 CERTIFICATE OF SERVICE The undersigned certifies that the foregoing document was filed electronically in compliance with Local Rule CV-5(a). Pursuant to Local Rule CV-5(c), all counsel of record were served a true and correct copy of the foregoing document by electronic mail on this the 18th day of July, 2018. /s/Jennifer H. Doan Jennifer H. Doan Case 2:17-cv-00676-RWS-RSP Document 108 Filed 07/18/18 Page 17 of 17 PageID #: 6172