THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`ELM 3DS INNOVATIONS, LLC
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`Plaintiff,
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`SAMSUNG ELECTRONICS CO., LTD.,
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`Defendants.
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`ELM 3DS INNOVATIONS, LLC
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`Plaintiff,
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`MICRON TECHNOLOGY, INC., et al.
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`Defendants.
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`ELM 3DS INNOVATIONS, LLC
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`C.A. No. 14-1430-LPS-CJB
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`C.A. No. 14-1431-LPS-CJB
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`C.A. No. 14-1432-LPS-CJB
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`Plaintiff,
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`SK HYNIX INC., et al.
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`Defendants.
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`Brian E. Farnan, Michael J. Farnan, FARNAN LLP, Wilmington, DE
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`Adam K Mortara, Matthew R. Ford, BARTLIT BECK LLP, Chicago, IL
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`John M. Hughes, Nosson D. Knobloch, Katherine L.I. Hacker, BARTLIT BECK LLP, Denver,
`CO
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`Attorneys for Plaintiff
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`Benjamin J. Schlawdweiler, GREENBERG TRAURIG, LLP, Wilmington, DE
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`L. Howard Chen, Harold H. Davis, Nicholas A Brown, GREENBERG TRAURIG, LLP,
`San Francisco, CA
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`Vishesh Narayen, GREENBERG TRAURIG, LLP, Tampa, FL
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`Attorneys for Defendants SK Hynix, Inc., SK Hynix America Inc., Hynix Semiconductor
`Manufacturing America Inc., and SK Hynix Memory Solution Inc.
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`Adam W. Poff, Pilar G. Kraman, YOUNG CONAWAY STARGATT & TAYLOR, LLP,
`Wilmington, DE
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`Allan M. Soobert, Naveen Modi, Phillip W. Citroën, PAUL HASTINGS LLP, Washington D.C.,
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`Attorneys for Defendants Samsung Electronics Co., Ltd., Samsung Semiconductor, Inc.,
`Samsung Electronics America, Inc., and Samsung Austin Semiconductor, LLC
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`Frederick L. Cottrell, Travis S. Hunter, Tyler E. Cragg, RICHARDS, LAYTON & FINGER, PA,
`Wilmington DE
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`John Kappos, Hana Oh Chen, O’MELVENY & MEYERS LLP, Newport Beach, CA
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`Brian Cook, Xin-Yi Zhou, O’MELVENY & MEYERS LLP, Los Angeles, CA
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`Attorneys for Defendants Micron Technology, Inc., Micron Semiconductor Products, Inc.,
`and Micron Consumer Products Group, Inc.
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`___________________________________________________________________________
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`MEMORANDUM OPINION
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`April 13, 2020
`Wilmington, Delaware
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`STARK, U.S. District Judge:
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`Elm 3DS Innovations, LLC (“Elm” or “Plaintiff”) filed suit against Defendants Samsung
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`Electronics Co., LTD., Samsung Semiconductor, Inc., Samsung Electronics America, Inc., and
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`Samsung Austin Semiconductor, LLC (collectively, “Samsung”); Micron Technology, Inc.,
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`Micron Semiconductor Products, Inc., and Micron Consumer Products Group, Inc. (collectively,
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`“Micron”); and SK Hynix Inc., SK Hynix America Inc., Hynix Semiconductor Manufacturing
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`America Inc., and SK Hynix Memory Solutions Inc. (collectively, “SK Hynix” and, together
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`with Samsung and Micron, “Defendants”) on November 21, 2014, alleging infringement of 13
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`patents, specifically U.S. Patent Nos. 7,193,239 (the “’239 patent”), 7,474,004 (the “’004
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`patent”), 7,504,732 (the “’732 patent”), 8,035,233 (the “’233 patent”), 8,410,617 (the “’617
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`patent”), 8,629,542 (the “’542 patent”), 8,653,672 (the “’672 patent”), 8,791,581 (the “’581
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`patent”), 8,796,862 (the “’862 patent”), 8,841,778 (“the ’778 patent”), 8,907,499 (the “’499
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`patent”), 8,928,119 (the “’119 patent”), and 8,933,570 (the “’570 patent”) (collectively, the
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`“patents-in-suit”). (D.I. 1)1 The patents-in-suit generally relate to semiconductor technologies
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`in the design and manufacture of three-dimensional integrated circuits. The parties submitted
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`their joint claim construction brief on November 13, 2019. (D.I. 236) The Court held a claim
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`construction hearing on January 9, 2020. (D.I. 243 (“Tr.”))
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`I.
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`LEGAL STANDARDS
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`A.
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`CLAIM CONSTRUCTION
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`The proper construction of a patent is a question of law. See Teva Pharm. USA, Inc. v.
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`Sandoz, Inc., 135 S. Ct. 831, 837 (2015) (citing Markman v. Westview Instruments, Inc., 517
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`U.S. 370, 388-91 (1996)). “It is a bedrock principle of patent law that the claims of a patent
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`1 Unless otherwise noted, all references to the docket index are to C.A. No. 14-1430-LPS.
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`1
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`

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`define the invention to which the patentee is entitled the right to exclude.” Phillips v. AWH
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`Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (internal quotation marks omitted).
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`“[T]here is no magic formula or catechism for conducting claim construction.” Id. at
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`1324. Instead, the Court is free to attach the appropriate weight to appropriate sources “in light
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`of the statutes and policies that inform patent law.” Id.
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`
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`“[T]he words of a claim are generally given their ordinary and customary meaning . . .
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`[which is] the meaning that the term would have to a person of ordinary skill in the art in
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`question at the time of the invention, i.e., as of the effective filing date of the patent application.”
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`Id. at 1312-13 (internal citations and quotation marks omitted). “[T]he ordinary meaning of a
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`claim term is its meaning to the ordinary artisan after reading the entire patent.” Id. at 1321
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`(internal quotation marks omitted). The patent specification “is always highly relevant to the
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`claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning
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`of a disputed term.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
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`
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`While “the claims themselves provide substantial guidance as to the meaning of
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`particular claim terms,” the context of the surrounding words of the claim also must be
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`considered. Phillips, 415 F.3d at 1314. Furthermore, “[o]ther claims of the patent in question,
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`both asserted and unasserted, can also be valuable sources of enlightenment . . . [b]ecause claim
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`terms are normally used consistently throughout the patent.” Id. (internal citation omitted).
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`
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`It is likewise true that “[d]ifferences among claims can also be a useful guide . . . For
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`example, the presence of a dependent claim that adds a particular limitation gives rise to a
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`presumption that the limitation in question is not present in the independent claim.” Id. at 1314-
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`15 (internal citation omitted). This “presumption is especially strong when the limitation in
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`dispute is the only meaningful difference between an independent and dependent claim, and one
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`2
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`party is urging that the limitation in the dependent claim should be read into the independent
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`claim.” SunRace Roots Enter. Co., Ltd. v. SRAM Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003).
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`It is also possible that “the specification may reveal a special definition given to a claim
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`term by the patentee that differs from the meaning it would otherwise possess. In such cases, the
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`inventor’s lexicography governs.” Phillips, 415 F.3d at 1316. It bears emphasis that “[e]ven
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`when the specification describes only a single embodiment, the claims of the patent will not be
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`read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope
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`using words or expressions of manifest exclusion or restriction.” Hill–Rom Servs., Inc. v. Stryker
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`Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014) (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358
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`F.3d 898, 906 (Fed. Cir. 2004)) (internal quotation marks omitted).
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`
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`In addition to the specification, a court “should also consider the patent’s prosecution
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`history, if it is in evidence.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir.
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`1995), aff’d, 517 U.S. 370 (1996). The prosecution history, which is “intrinsic evidence,”
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`“consists of the complete record of the proceedings before the PTO [Patent and Trademark
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`Office] and includes the prior art cited during the examination of the patent.” Phillips, 415 F.3d
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`at 1317. “[T]he prosecution history can often inform the meaning of the claim language by
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`demonstrating how the inventor understood the invention and whether the inventor limited the
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`invention in the course of prosecution, making the claim scope narrower than it would otherwise
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`be.” Id.
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`In some cases, “the district court will need to look beyond the patent’s intrinsic evidence
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`and to consult extrinsic evidence in order to understand, for example, the background science or
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`the meaning of a term in the relevant art during the relevant time period.” Teva, 135 S. Ct. at
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`841. Extrinsic evidence “consists of all evidence external to the patent and prosecution history,
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`3
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`including expert and inventor testimony, dictionaries, and learned treatises.” Markman, 52 F.3d
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`at 980. For instance, technical dictionaries can assist the court in determining the meaning of a
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`term to those of skill in the relevant art because such dictionaries “endeavor to collect the
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`accepted meanings of terms used in various fields of science and technology.” Phillips, 415 F.3d
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`at 1318. In addition, expert testimony can be useful “to ensure that the court’s understanding of
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`the technical aspects of the patent is consistent with that of a person of skill in the art, or to
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`establish that a particular term in the patent or the prior art has a particular meaning in the
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`pertinent field.” Id. Nonetheless, courts must not lose sight of the fact that “expert reports and
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`testimony [are] generated at the time of and for the purpose of litigation and thus can suffer from
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`bias that is not present in intrinsic evidence.” Id. Furthermore, “statements made by a patent
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`owner during an IPR [inter partes review] proceeding . . . can be considered for claim
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`construction.” Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1362 (Fed. Cir. 2017).
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`Overall, while extrinsic evidence “may be useful” to the court, it is “less reliable” than intrinsic
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`evidence, and its consideration “is unlikely to result in a reliable interpretation of patent claim
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`scope unless considered in the context of the intrinsic evidence.” Id. at 1318-19. Where the
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`intrinsic record unambiguously describes the scope of the patented invention, reliance on any
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`extrinsic evidence is improper. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298,
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`1308 (Fed. Cir. 1999) (citing Vitronics, 90 F.3d at 1583).
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`Finally, “[t]he construction that stays true to the claim language and most naturally aligns
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`with the patent’s description of the invention will be, in the end, the correct construction.”
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`Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows
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`that “a claim interpretation that would exclude the inventor’s device is rarely the correct
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`interpretation.” Osram GmbH v. Int’l Trade Comm’n, 505 F.3d 1351, 1358 (Fed. Cir. 2007)
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`4
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`(quoting Modine Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545, 1550 (Fed. Cir. 1996)).
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`B.
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`INDEFINITENESS
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`A patent claim is indefinite if, “viewed in light of the specification and prosecution
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`history, [it fails to] inform those skilled in the art about the scope of the invention with
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`reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014).
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`A claim may be indefinite if the patent does not convey with reasonable certainty how to
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`measure a claimed feature. See Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1341
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`(Fed. Cir. 2015). But “[i]f such an understanding of how to measure the claimed [feature] was
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`within the scope of knowledge possessed by one of ordinary skill in the art, there is no
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`requirement for the specification to identify a particular measurement technique.” Ethicon Endo-
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`Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1319 (Fed. Cir. 2015). A party seeking to prove
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`indefiniteness must do so by clear and convincing evidence. See BASF Corp. v. Johnson
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`Matthey Inc., 875 F.3d 1360, 1365 (Fed. Cir. 2017).
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`5
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`II.
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`
`CONSTRUCTION OF DISPUTED TERMS
`The “Substantially Flexible” Terms — Terms 1, 2, and 32
`A.
`Term 13
`“substantially flexible substrate”
`“substantially flexible . . . substrate”
`“substrate is substantially flexible”
`“substrate substantially flexible”
`“substrate . . . is . . . substantially flexible”
`“substantially flexible . . . semiconductor layer”
`Plaintiff
`Not indefinite. Plain and ordinary meaning, which is “a substrate/semiconductor layer
`that is largely able to bend without breaking”
`Defendants
`Indefinite
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`Alternatively, “substrate / semiconductor layer that has been thinned to a thickness of less
`than 50 microns and subsequently polished or smoothed”
`Court
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`Not indefinite. “A semiconductor substrate/semiconductor layer that is thinned to 50 µm
`or less and subsequently polished or smoothed such that it is largely able to bend without
`breaking”
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`
`Term 24
`“dice is substantially flexible”
`“die is substantially flexible”
`Plaintiff
`Not indefinite. Plain and ordinary meaning, which is “dice/die that is largely able to bend
`without breaking”
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`2 Term numbers correspond to the parties’ Joint Claim Construction Chart. (See D.I. 194 App. A
`& B)
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`3 These terms appear in claims 1 and 13 of the ’239 patent; claims 36 and 51 of the ’617 patent;
`claims 1, 40, and 44 of the ’542 patent; claims 17, 84, 129, 143 of the ’672 patent; claims 36, 54,
`78, 116, and 136 of the ’581 patent; claims 30, 34, 36, 135-37, and 147 of the ’862 patent; claims
`2, 8, 31, 44, 52, and 53 of the ’778 patent; claims 1, 24, 53, 83, and 132 of the ’499 patent;
`claims 1, 7, and 17 of the ’119 patent; and claims 58 and 67 of the ’570 patent.
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`4 These terms appear in claims 60 and 70 of the ’239 patent.
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`6
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`Defendants
`Indefinite
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`Alternatively, “diced substantially flexible integrated circuit” (see construction of
`“substantially flexible integrated circuit”)
`Court
`Not indefinite. “A dice/die that is thinned to 50 µm or less and subsequently polished or
`smoothed such that it is largely able to bend without breaking”
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`
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`Term 35
`“substantially flexible integrated circuit[s]”
`“substantially flexible integrated circuit layer[s]”
`“integrated circuits is substantially flexible”
`“integrated circuit . . . is . . . substantially flexible”
`“substantially flexible circuit layer[s]”
`“substantially flexible stacked integrated circuit structure”
`“substantially flexible circuit”
`“substantially flexible . . . structure”
`Plaintiff
`Not indefinite. Plain and ordinary meaning, which is “an integrated circuit/integrated
`circuit layer/circuit layer/circuit structure/circuit/structure that is largely able to bend
`without breaking”
`Defendants
`“[Integrated circuit[s] /integrated circuit layer[s] /stacked integrated circuit structure /
`structure] that contains a substantially flexible substrate where the dielectric material used
`in processing the substrate has a stress of 5 x 108 dynes/cm2 tensile or less”
`Court
`Not indefinite. “An integrated circuit/integrated circuit layer/circuit layer/circuit
`structure/circuit/structure that is largely able to bend without breaking and contains a
`substantially flexible semiconductor substrate, that is thinned to 50 µm or less and
`subsequently polished or smoothed such that it is largely able to bend without breaking,
`and a sufficiently low tensile stress dielectric material”
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`Certain Defendants – Samsung Electronics Co., Ltd., Micron Technology, Inc., and SK
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`Hynix Inc. (collectively, “Petitioners”) – instituted an inter partes review (“IPR”) before the
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`Patent Trial and Appeal Board (“PTAB”) challenging the validity of patent claims that are
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`5 These terms appear in claims 1, 22, 23, of the ’004 patent; claims 1, 13, and 14 of the ’732
`patent; claims 1 and 40 of the ’542 patent; claims 30, 135, and 147 of the ’862 patent; claims 8,
`44, and 46 of the ’778 patent; claims 1, 12, 13, 24, 36-38, 49, 53, 83, 86, 87, and 132 of the ’499
`patent; claims 1 and 33 of the ’119 patent; and claim 58 of the ’570 patent.
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`7
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`asserted here.6 The PTAB found that Petitioners had not met their burden to prove that the
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`challenged claims were unpatentable, and the Federal Circuit subsequently affirmed these
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`conclusions. See generally Samsung Elecs. Co. v. Elm 3DS Innovations, LLC, 925 F.3d 1373,
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`1376 (Fed. Cir. 2019). In doing so, the Federal Circuit construed the “substantially flexible”
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`terms, constructions which this Court now adopts as well. See id. at 1380.7
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`In pertinent part, the Federal Circuit stated as follows:
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`Based on expert testimony from Dr. Franzon, the Board
`found that ‘there are a number of factors that, within the context of
`semiconductor processing, determine the flexibility of a
`semiconductor substrate,’ including the type of semiconductor
`substrate, the crystal orientation of the material, and the physical
`dimensions of the substrate. . . . This suggests thinning the
`semiconductor substrate to 50 μm and subsequently polishing or
`smoothing it is necessary but not necessarily sufficient to make the
`substrate substantially flexible. To ensure that the construction of
`‘substantially flexible’ cannot be read to cover a rigid substrate or
`circuit layer, we interpret a substantially flexible semiconductor
`substrate as a semiconductor substrate that is thinned to 50 μm and
`subsequently polished or smoothed such that it is largely able to
`
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`6 The Petitions challenged the following: claims 17-18, 22, 84, 95, 129-32, 145-46, and 152 of
`the ’672 patent (IPR2016-00386); claims 1-2, 8, 14, 31-32, 44, 46, and 52-54 of the ’778 patent
`(IPR2016-00387); claims 10-12, 18-20, 60-63, 67, 70-73, and 77 of the ’239 patent (IPR2016-
`00388 and IPR2016-00393); claims 1-3, 30-31, 33, 40-41, and 44 of the ’542 patent (IPR2016-
`00390); claims 30, 34, 36, 135-38, and 147 of the ’862 patent (IPR2016-00391); claims 36 and
`51 of the ’617 patent (IPR2016-00394); claims 1, 10-11, and 13-14 of the ’732 patent (IPR2016-
`00395); claims 1, 7, 17-18, and 33 of the ’119 patent (IPR2016-00687); claims 1 and 20-23 of
`the ’004 patent (IPR2016-00691); claims 1, 12-13, 24, 36-38, 53, 83, 86-87, and 132 of the ’499
`patent (IPR2016-00708 and IPR2016-00770); and claims 58, 60-61, and 67 of the ’570 patent
`(IPR2016-00786). See generally Samsung, 925 F.3d at 1376.
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`7 The PTAB and Federal Circuit construed claim terms according to their “broadest reasonable
`interpretation in light of the specification.” Samsung, 925 F.3d at 1376 n.4. The Court is not
`required to adopt the PTAB’s or Federal Circuit’s construction. See SkyHawke Techs., LLC v.
`Deca Int’l Corp., 828 F.3d 1373, 1376 (Fed. Cir. 2016) (“Because the Board applies the broadest
`reasonable construction of the claims while the district courts apply a different standard of claim
`construction as explored in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), the
`issue of claim construction under Phillips to be determined by the district court has not been
`actually litigated.”).
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`
`8
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`

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`bend without breaking. Likewise, we interpret a substantially
`flexible circuit layer as a circuit layer that is largely able to bend
`without breaking and contains a substantially flexible
`semiconductor substrate and a sufficiently low tensile stress
`dielectric material.
`
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`Samsung, 925 F.3d at 1380 (emphasis added).
`
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`The Federal Circuit’s construction sets out three requirements, relating to (1) the
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`substrate’s thickness; (2) the substrate’s processing; and (3) the substrate’s flexibility.
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`Specifically, the proper construction requires that the substrate “is thinned to 50 µm [or less]
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`and subsequently polished or smoothed such that it is largely able to bend without breaking.”
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`Id. at 1379-80 (emphasis added).8 Likewise, for the “circuit layer” and “integrated circuit”
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`terms, the Federal Circuit “interpret[ed] a substantially flexible circuit layer as a circuit layer that
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`is largely able to bend without breaking and contains a substantially flexible semiconductor
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`substrate and a sufficiently low tensile stress dielectric material.” Id. at 1380 (emphasis
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`added).
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`Plaintiff urges the Court to construe the “substantially flexible terms” largely consistently
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`with the Federal Circuit’s construction, except to the extent that the Federal Circuit’s
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`
`8 The claims of the asserted patents describe how thinning and polishing a substrate is one way to
`form a substantially flexible substrate. For example, claim 31 of the ’778 patent recites “the
`semiconductor substrate is thinned and polished or smoothed such that the semiconductor
`substrate is substantially flexible.” See also ’862 patent, claim 147 (reciting “the polished or
`smoothed backside [of a thinned, monocrystalline semiconductor substrate] enables the TTT
`substrate to be substantially flexible, and the polished or smoothed backside reduces the
`vulnerability of the TTT substrate to fracture as a result of flexing”). The specifications provide
`additional context. They note that the purpose of the invention is to provide a method of
`thinning and stacking substrates during semiconductor manufacturing. ’672 patent at 8:64-10:26
`(“Method A, 3Ds Memory Device Fabrication Sequence”); see also id. at 2:66-67, 3:5-8 (stating
`that feature of stacked circuit assembly technology includes “thinning of the memory circuit to
`less than about 50 µm in thickness forming a substantially flexible substrate”). Moreover, the
`specification of the ’672 patent distinguishes “rigid” versus “substantially flexible” substrates.
`E.g., ’672 patent at 7:16-23.
`
`
`9
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`

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`construction limits the dielectric to low tensile stress. Plaintiff argues that the specification and
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`claims do not limit the relevant stress value to tensile stress. (See D.I. 236 at 10 n.5) Plaintiffs
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`offer no persuasive reason to depart from the Federal Circuit’s understanding that the claims are
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`limited to low tensile stress. Instead, the Court agrees with the Federal Circuit that a prosecution
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`history disclaimer here requires that a substantially flexible circuit layer must contain low tensile
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`stress dielectric material. See Samsung, 925 F.3d at 1379 (“Considered in its entirety, the
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`prosecution history clearly and unambiguously demonstrates that a substantially flexible circuit
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`layer, and similar terms, must contain a substantially flexible semiconductor substrate and a
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`sufficiently low tensile stress dielectric material.”) (emphasis added).
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`Defendants take the view that the Federal Circuit’s construction renders the claims
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`indefinite because whether the substrate is “largely” able to bend without breaking is subjective;
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`to Defendants, there is no objective boundary for the degree of bending that distinguishes
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`substrates “largely able to bend” from those that bend less “largely” before breaking. (D.I. 236
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`at 11-12) In Defendants’ view, the Federal Circuit’s construction adds a term of degree lacking
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`any boundary in the intrinsic evidence. (See id. at 15-16) This is true, according to Defendants,
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`even though the intrinsic evidence identifies many properties that may affect the degree and type
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`of bending. (See id.) Plaintiff responds that the PTAB’s and Federal Circuit’s ability to construe
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`these terms is evidence that they are not indefinite. (See, e.g., id. at 10)9
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`9 Neither the PTAB nor the Federal Circuit expressly decided the question of indefiniteness,
`which is an issue outside the scope of IPR. See, e.g., Samsung Elecs. Am., Inc. v. Prisua Eng’g
`Corp., 2020 WL 543427, at *7 (Fed. Cir. Feb. 4, 2020) (holding that PTAB may not cancel
`claims for indefiniteness in IPR because, “although indefiniteness analysis involves general
`claim construction principles[,] . . . it does not follow that the Board may exceed its statutorily
`limited authority simply because an indefiniteness issue arises during claim construction.
`Instead . . . Congress viewed a challenge based on indefiniteness to be distinct from a challenged
`based on sections 102 and 103.”). However, Defendants argued and briefed indefiniteness to
`both the PTAB and the Federal Circuit (see Tr. at 29-30) (defense counsel acknowledging) and
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`10
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`

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`Defendants have not met their burden of proving, by clear and convincing evidence, that
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`the “substantially flexible” terms are indefinite. Terms of degree, such as “substantially” and
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`“largely,” are not inherently indefinite.10 See Sonix Tech. Co., Ltd. v. Publications Intl., Ltd.,
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`844 F.3d 1370, 1377 (Fed. Cir. 2017) (“[W]e have held that the clause ‘not interfering
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`substantially’ did not render a claim invalid as indefinite. . . . [W]e reasoned that the intrinsic
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`evidence provided guidance as to the scope of the claims, including, inter alia, examples of
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`noninterfering structures and criteria for their selection. . . . This guidance allowed a skilled
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`artisan to compare a potentially infringing product ‘with the examples in the specification to
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`determine whether interference . . . is substantial.’”). Rather, when evaluating indefiniteness, the
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`Court must determine whether the patent “provide[s] enough certainty to one of skill in the art
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`when read in the context of the invention.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364,
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`1370 (Fed. Cir. 2014) (holding terms of degree are not inherently indefinite as long as claim
`
`language provides enough certainty to one of skill in art when read in context of invention). To
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`assess whether a term of degree is “reasonably certain,” the Court must look at the term itself and
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`any description or examples provided in the intrinsic record. See Sonix Tech., 844 F.3d at 1377;
`
`see also Exmark Mfg. Co. v. Briggs & Stratton Power Prods. Grp., LLC, 879 F. 3d 1332, 1346-
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`47 (Fed. Cir. 2018) (concluding that specification’s description and annotated figures identifying
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`invention’s configuration provided reasonable certainty as to meaning of disputed term).
`
`
`there is nothing in the record to support a view that either the PTAB or Federal Circuit believed
`the claims before them were indefinite or that the constructions they adopted would render any
`claim indefinite.
`
`10 Moreover, “[e]xpressions such as ‘substantially’ are used in patent documents when warranted
`by the nature of the invention, in order to accommodate the minor variations that may be
`appropriate to secure the invention.” Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120
`(Fed. Cir. 2002).
`
`11
`
`

`

`Although the Federal Circuit’s construction involves a degree of approximation, Defendants
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`have not shown that this would cause a person of ordinary skill in the art to lack reasonable
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`certainty as to the scope of the “substantially flexible” claims.
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`The prosecution history provides additional clarity regarding claim scope. As the
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`patentee explained during prosecution, the invention is an improvement over prior art substrates
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`with high-stress dielectrics that could not be thinned and stacked to the point of being flexible,
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`without significantly damaging the integrated circuit. (See D.I. 236 at 22) (citing D.I. 194 Ex.
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`15-48 at 2-3) (“[T]he [prior art reference] prevented integrated circuits from being thinned to the
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`point of being flexible without the stress of the dielectric materials causing the integrated circuit
`
`to fracture and disintegrate.”) The Federal Circuit found that the patentee disclaimed certain
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`claim scope, writing: “[t]o overcome the examiner’s objection, Elm clearly and unambiguously
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`disclaimed claim scope. For a semiconductor substrate to be ‘substantially flexible’ according to
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`the claims, it must be thinned to 50 microns or less and polished or smoothed.” Samsung, 925
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`F.3d at 1379.
`
`Additional guidance as to claim scope is found elsewhere in the Federal Circuit’s
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`opinion. The Court stated that the definition of “substantially flexible” applies to all of its uses:
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`“a substantially flexible circuit layer, and similar terms, must contain a substantially flexible
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`semiconductor substrate and a sufficiently low tensile stress dielectric material.” Id. The Court
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`further explained that “substantially flexible” is not so broad a term as to include rigid substrates
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`and circuit layers. Id. at 1380.
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`Fundamentally, the Court is not persuaded, by clear and convincing evidence, that a
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`person of ordinary skill in the art, in the context of the three-dimensional technology described in
`
`12
`
`

`

`the asserted patents, would be unable to discern with reasonable certainty the difference between
`
`a rigid substrate, a physically bent substrate, and a broken substrate.
`
`B.
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`“Stress of 5 x 108 dynes/cm2” and the “Low Stress” Terms – Terms 4 and 5
`
`Term 411
`“have stress of about 5 × 108 dynes/cm2 or less”
`“have a stress of about 5 × 108 dynes cm2 or less”
`“having a stress of 5 x 108 dynes/cm2 or less”
`“a stress of about 5 × 108 dynes/cm2 or less”
`“having a stress of 5 × 108 dynes/cm2 tensile or less”
`“[have] a stress of about 5 × 108 dynes/cm2 tensile or less”
`“having[/has] a stress of less than 5 × 108 dynes/cm2 tensile”
`“with a tensile stress of less than 5 × 108 dynes/cm2”
`“with a stress of less than 5 × 108 dynes/cm2 tensile”
`“has[/having] a tensile stress of less than 5 × 108 dynes/cm2”
`Plaintiff
`Not indefinite. Plain and ordinary meaning.
`
`Defendants
`Indefinite.
`
`Alternatively, Micron and Samsung propose “having stress in the dielectric layer that is
`between 0 and 5 x 108 dynes/cm2 in tensile”
`Court
`Indefiniteness unable to be resolved at this stage of the case
`
`
`
`
`11 These terms appear in claims 11, 12, 19, 20, 62, 63, 72, and 73 of ’239 patent; claim 20 of the
`’004 patent; claim 10 of the ’732 patent; claim 36 of the ’617 patent; claims 2, 3, 30, 31, 40, and
`41 of the ’542 patent; claims 17, 22, 84, 95, 129, 131, 145, 146, and 152 of the ’672 patent;
`claims 12, 36, 54, 78, 116, and 136 of the ’581 patent; claims 135-38 and 147 of the ’862 patent;
`claims 1, 2, 8, and 14 of the ’778 patent; claims 1, 12, 13, 24, 53, 83, 86, 87, and 132 of the ’499
`patent; claims 7 and 18 of the ’119 patent; and claims 60 and 67 of the ’570 patent.
`
`13
`
`

`

`Term 512
`“low stress dielectric”
`“low stress dielectric layer”
`“low stress . . . dielectric material”
`“low-stress . . . dielectric material”
`“low-stress . . . dielectric layer”
`“low stress . . . dielectric layer”
`Plaintiff
`Not indefinite. “A dielectric having a stress of less than 8 x 108 dynes/cm2”
`Defendants
`Indefinite
`
`Alternatively, Micron and Samsung propose “having stress in the dielectric layer that is between
`0 and 5 x 108 dynes/cm2 in tensile”
`Court
`Indefiniteness unable to be resolved at this stage of the case
`
`Defendants contend that the “stress” terms are indefinite. They assert that a person of
`
`ordinary skill in the art would not know what type of stress to measure, or how and when to
`
`measure that stress on a dielectric layer. (D.I. 236 at 32, 39-42) In the alternative, Defendants
`
`Micron and Samsung argue that Terms 4 and 5 both mean “having stress in the dielectric layer
`
`that is between 0 and 5 x 108 dynes/cm2 in tensile.” (D.I. 236 at 42-47)
`
`Defendants have not proven by clear and convincing evidence that Terms 4 and 5,
`
`claiming “stress of 5 x 108 dynes/cm2” and “low stress,” are indefinite. However (and unlike for
`
`Terms 1, 2, and 3 discussed above), the Court cannot determine at this stage of the case whether
`
`Terms 4 and 5 render the claims invalid as indefinite. Defendants will have an opportunity to
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`renew their indefiniteness argument at the summary judgment stage (and, if necessary, at trial).
`
`A person of ordinary skill would understand, as the patents explain, that a primary
`
`concern in semiconductor manufacturing is preparing substrates that are planar or flat. See, e.g.,
`
`
`12 These terms appear in claims 10, 18, 61, and 71 of the ’239 patent; claims 1 and 21-23 of the
`’004 patent; claims 1, 13, and 14 of the ’732 patent; claim 95 of the ’672 patent; and claims 30
`and 34 of the ’862 patent.
`
`14
`
`

`

`’672 patent at 1:25-41, 7:42-57. When dielectric layers are formed on top of a substrate, stress in
`
`the dielectric will cause the substrate to curve, making it “impossible to successfully planarize by
`
`chemical mechanical processing.” (D.I. 240 Ex. A (Baker Decl.) at 16) The asserted patents
`
`address this problem.
`
`For example, the patents describe “layer stress” – e.g., the stress at the time the substrate
`
`is thinned; that is, the stress placed on the underlying substrate. See, e.g., ’672 patent at 4:17-30
`
`(“[E]ach memory array circuit layer is a thinned and substantially flexible circuit with net l