IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`SHERMAN DIVISION
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`CASE NO. 4:03-CV-276
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`STMICROELECTRONICS, INC.
`
`Plaintiff
`
`vs.
`
`MOTOROLA, INC.
`
`Defendant,
`Counterclaim Plaintiff
`
`vs.
`
`STMICROELECTRONICS, N.V., AND
`STMICROELECTRONICS, INC.
`
`Counterclaim Defendants
`
`MEMORANDUM OPINION AND ORDER
`
`Before the Court are seven patents with terms to be construed. STMicroelectronics, N.V.
`
`(“ST”) has asserted three patents: U.S. Patent No. 5,812,789 (the “`789” or “Diaz” patent); U.S.
`
`Patent No. 5,031,092 (the “`092” or “Edwards” patent); and U.S. Patent No. 5,359,244 (the “`244”
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`or “Hopkins” patent). Motorola, Inc. (“Motorola”) has asserted four patents: U.S. Patent No.
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`5,155,563 (the “`563” or “Davies” patent); U.S. Patent No. 4,548,654 (the “`654” or “Tobin” patent);
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`U.S. Patent No. 5,776,798 (the “`798” or “Quan” patent); and U.S. Patent No. 5,084,814 (the “`814”
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`or “Vaglica” patent). Having considered the parties’ submissions and oral argument, the Court
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`construes the disputed terms as follows in this Opinion. 1
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`1
`For ease of reference, the Court has attached a Claim Construction Chart as Appendix A to this Opinion.
`The Claim Construction Chart contains the Court’s construction of agreed and disputed terms.
`
`1
`
`Apple Inc. v. Parthenon
`Ex. 1016 / Page 1 of 53
`
`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1016, p. 1
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`

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`LAW OF CLAIM CONSTRUCTION
`
`In claim construction, courts examine the patent’s intrinsic evidence to define the patented
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`invention’s scope. Bell Atlantic Network Servs., Inc. v. Covad Communications Group, Inc., 262
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`F.3d 1258, 1267 (Fed. Cir. 2001). First, courts give “claim terms their ordinary and accustomed
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`meaning as understood by one of ordinary skill in the art.” Alloc, Inc. v. Int’l Trade Commission,
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`342 F.3d 1361, 1368 (Fed. Cir. 2003); Id. Second, the court must determine whether it must deviate
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`from the claim language’s ordinary and accustomed meaning. Bell Atlantic Network Servs., Inc., 262
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`F.3d at 1268. There is a “heavy presumption” that claim terms carry their ordinary and customary
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`meaning which is only rebutted if the patent “expresses an intention to impart novel meaning to
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`[them].” Sunrace Roots Enter. Co., LTD v. SRAM Corp., 336 F.3d 1298, 1302 (Fed. Cir. 2003); Id.
`
`“This presumption is overcome: (1) where the patentee has chosen to be his own lexicographer, or
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`(2) where a claim term deprives the claim of clarity such that there is no means by which the scope
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`of the claim may be ascertained from the language used.” Bell Atlantic Network Servs., Inc., 262
`
`F.3d at 1268. When a court attempts to define a term, it “immerses itself in the specification, the
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`prior art, and other evidence, such as the understanding of skilled artisans at the time of the
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`invention, to discern the context and normal usage of the words in the patent claim.” Alloc, Inc., 342
`
`F.3d at 1368.
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`The Federal Circuit has held that “among the intrinsic evidence, the specification is always
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`highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide
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`to the meaning of a disputed term.” Teleflex, Inc. v. Ficosa North America Corp., 299 F.3d 1313,
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`1325 (Fed. Cir. 2002). This is true because a patentee may define his own terms. Also, the
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`specification may resolve ambiguous claim terms “where the ordinary and accustomed meaning of
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`2
`
`Ex. 1016 / Page 2 of 53
`
`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1016, p. 2
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`

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`the words used in the claims lack sufficient clarity to permit the scope of the claim to be ascertained
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`from the words alone.” Id. However, the specification may not redefine particular claim terms away
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`from their ordinary meaning unless the intrinsic evidence “clearly set[s] forth or clearly redefine[s]
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`a claim term so as to put one reasonably skilled in the art on notice that the patentee intended to so
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`redefine the claim term.” Bell Atlantic Network Servs., Inc., 262 F.3d at 1268 (internal quotations
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`omitted). Thus, “although the specification may aid the court in interpreting the meaning of disputed
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`claim language, particular embodiments and examples appearing in the specification will not
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`generally be read into the claims.” Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182,
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`1187 (Fed. Cir. 1998).
`
`The patents in suit also contain means-plus-function limitations that require construction.
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`Where a claim limitation is expressed in “means plus function” language and does not recite definite
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`structure in support of its function, the limitation is subject to 35 U.S.C. § 112, ¶ 6. Braun Medical,
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`Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997). In relevant part, 35 U.S.C. § 112, ¶ 6
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`mandates that “such a claim limitation ‘be construed to cover the corresponding structure . . .
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`described in the specification and equivalents thereof.’” Id. (citing 35 U.S.C. § 112, ¶ 6).
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`Accordingly, when faced with means-plus-function limitations, courts “must turn to the written
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`description of the patent to find the structure that corresponds to the means recited in the
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`[limitations].” Id.
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`Construing a means-plus-function limitation involves multiple inquiries. “The first step in
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`construing [a means-plus-function] limitation is a determination of the function of the means-plus-
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`function limitation.” Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311
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`(Fed. Cir. 2001). Once a court has determined the limitation’s function, “the next step is to
`
`3
`
`Ex. 1016 / Page 3 of 53
`
`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1016, p. 3
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`

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`determine the corresponding structure disclosed in the specification and equivalents thereof.” Id.
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`A “structure disclosed in the specification is ‘corresponding’ structure only if the specification or
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`prosecution history clearly links or associates that structure to the function recited in the claim.” Id.
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`Moreover, the focus of the “corresponding structure” inquiry is not merely whether a structure is
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`capable of performing the recited function, but rather whether the corresponding structure is “clearly
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`linked or associated with the [recited] function.” Id.
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`THE `789 DIAZ PATENT
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`The Diaz patent involves encoding and decoding signals in electronic devices. An encoder
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`is a device that takes a video or audio signal and compresses the signal to a reduced size using an
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`encoding standard. For example, a video camera takes a video signal and compresses it for storage
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`on a tape, disk, or flash card. A decoder is a device that decompresses the compressed signal for use.
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`For example, a DVD player decompresses recorded video from a DVD so that one may view the
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`video.
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`The Diaz patent describes technology that allows an encoder or decoder to share memory
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`with other devices on the same electronic system. Decoding and encoding audio and video without
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`any loss of data or other interruption can require significant amounts of memory. Before the Diaz
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`patent, electronic systems would often incorporate dedicated memory that serviced only the encoder
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`or decoder. Although the dedicated memory allowed for efficient operation, it also increased the
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`device’s cost. The Diaz patent allows an encoder or decoder to operate without interruption and
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`without expensive dedicated memory. The Diaz patent discloses a shared memory interface with
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`an arbiter device that regulates the memory access from the decoder/encoder and other devices to
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`the shared memory.
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`4
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`Ex. 1016 / Page 4 of 53
`
`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1016, p. 4
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`Real Time Operation
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`The Court adopts ST’s proposed construction of “real time operation” and construes it to
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`mean “processing fast enough to keep up with an input data stream.” In part, the Court finds that
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`a person of ordinary skill in the art would apply ST’s proposed construction as the term’s ordinary
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`meaning because the relevant technical dictionary defines “real time” as “a system or mode of
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`operation in which computation is performed during the actual time that an external process occurs.”
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`IEEE Standard Dictionary of Elec. & Elecs. Terms, at 879 (6th ed. 1996). The relevant dictionary
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`definition indicates that real time concerns the processor’s ability to “keep up with” the data input.
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`Moreover, because the term is concerned with the processor’s ability to keep up with the input,
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`Motorola’s proposed construction improperly shifts the focus to the viewer or listener.
`2
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`Selectively Providing Access
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`The Court adopts ST’s proposed construction of “selectively providing access” and construes
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`it to mean “determining which of a plurality of devices coupled to a bus is allowed access to the
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`memory based on a priority scheme.” Comparison of ST’s proposed construction with Motorola’s3
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`demonstrates agreement that the term should include: multiple devices, a bus, memory access, and
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`a priority scheme. The dispute over this term regards Motorola’s attempt to include other limitations
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`in this claim term. For example, Motorola would include the limitation “that the decoder operates
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`in real time” in the definition of “selectively providing access.” Although it is true that claim 1 of
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`the Diaz patent concerns real time operation, that limitation is found in the claim language “requires
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`2
`Motorola’s proposed construction is: “operation of the decoder so that the rate of decoding is faster or the
`same as the display rate and the human viewer or listener cannot detect any loss of information.”
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`3
`Motorola’s proposed construction is: “providing access using a priority scheme that ensures that the
`decoder operates in real time, without denying the other components on the bus access to the memory for an amount
`of time that would interfere with their operation.”
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`5
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`Ex. 1016 / Page 5 of 53
`
`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1016, p. 5
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`access to the memory sufficient to maintain real time operation.” `789 Patent, 12: 31-32. The Court
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`adopts ST’s proposed construction as following the ordinary meaning to one skilled in the art and
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`denies Motorola’s for incorporating unrelated limitations from the claims and specification.
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`Sufficient Bandwidth
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`The Court construes the term “sufficient bandwidth” to mean “sufficient data transfer
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`capability.” In this instance, both parties’ proposed constructions improperly include limitations
`4
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`found elsewhere in the claims or specification. For example, ST would include the limitation “that
`
`allows real time operation” in the term “sufficient bandwidth.” However, the “real time” limitation
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`is found elsewhere in the claim and does not need to be repeated in this term. See `789 Patent, 12:
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`31-32. The Court’s construction describes the understanding of one skilled in the art without
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`unnecessary limitations. 5
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`THE `092 EDWARDS PATENT
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`The Edwards patent discloses technology that allows for the creation of a single-chip
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`microcomputer with memory. When integrated circuits are connected to peripheral equipment, such
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`as memory necessary to perform computations and instructions, the connections between the
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`processor and peripheral equipment can create bottlenecks that slow performance. The Edwards
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`patent purports to solve the bottleneck problem by including the processor and memory circuitry on
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`a single, integrated-circuit chip. Thus, the Edwards patent discloses a complete microcomputer on
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`a single chip.
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`4
`ST’s proposed construction is: “data transfer capability at a rate that allows for real time operation.”
`Motorola’s proposed construction is: “equal to greater than the badwidth required for the decoder to operate in real
`time without denying the other components on the bus access to memory for an amount of time that would interfere
`with their operation.”
`
`5
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`ST agreed to the Court’s construction at the Markman hearing.
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`6
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`Ex. 1016 / Page 6 of 53
`
`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1016, p. 6
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`Additionally, the Edwards patent discloses means of isolating on-chip microcomputer
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`components from one another to solve the problem of interfering electrical signals. The
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`microcomputer components (such as transistors, capacitors, and resistors) are formed in the
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`semiconductor material. When the different circuits on the chip operate, they can produce electrical
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`signals that interfere with one another. The Edwards patent discloses different methods of
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`manipulating the semiconductor material to isolate components from electrical signals produced by
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`other components.
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`Writable Memory
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`The Court construes the term “writable memory” to mean “memory that is capable of having
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`data written to and read from.” First, for memory to be of any use, it must have the ability to be read
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`from. And thus the “read from” limitation is inherent in the term’s construction. Second, the Court
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`declines to accept ST’s proposed definition, “a read-write memory,” due to Motorola’s objection that
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`it is ambiguous. Third, the Court also rejects Motorola’s proposed definition because it
`6
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`unnecessarily complicates the definition. Motorola’s proposed language requiring “writing
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`information into the cells of the array” is included in other claim language describing the writable
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`memory as “a high density memory array,” and thus it is not necessary to include the “array”
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`limitation in the term “writable memory.” `092 Patent, 49: 22-24.
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`Substrate of Semiconductor Material of a First Type
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`The Court construes the term “substrate of semiconductor material of a first type” as “the
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`base layer of an integrated circuit doped to be either p-type or n-type.” Pursuant to the parties’
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`argument at the Markman hearing, this construction comports with both parties’ proposed
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`6
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`Motorola’s proposed construction is: “memory capable of writing information into the cells of the array.”
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`7
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`Ex. 1016 / Page 7 of 53
`
`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1016, p. 7
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`constructions.
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`High Density Memory Array
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`The Court next addresses the term “high density memory array” in claim 23 of the Edwards
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`patent. ST proposes that the term mean “a memory array having a large number of memory cells for
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`a given area.” ST’s proposed construction mirrors the plain language of the term and illustrates that
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`none of the four words in this term have a meaning that a person of ordinary skill in the art would
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`not understand. In contrast, Motorola proposes that the Court construe the term to mean: “an array
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`of high density memory cells. ‘High Density’ memory would have been understood by one of
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`ordinary skill in the art in the early 1980's as including high impedance resistive load SRAM,
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`DRAM, thin film transistors and three-transistor memory cells, but not including depletion transistor
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`loads or complementary pull-up transistors.” Whereas ST’s proposed construction simply reflects
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`the plain meaning of the term’s four words, Motorola’s construction requires importing limitations
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`from the specification and speculating on what a person of ordinary skill in the early 1980's would
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`have thought.
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`The Court adopts ST’s proposed construction. First, as noted above, the Court finds that
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`ST’s proposed construction mirrors the plain and ordinary meaning of the term’s words. Sunrace
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`Roots Enter. Co., LTD v. SRAM Corp., 336 F.3d 1298, 1302 (Fed. Cir. 2003) (finding a “heavy
`
`presumption” that claim terms carry their ordinary and customary meaning which is only rebutted
`
`if the patent “expresses an intention to impart novel meaning to [them]”). Second, although the
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`specification does mention the limitations that Motorola would import, the Court finds that those
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`limitations are examples rather than a disclaimer of claim scope. To support its construction,
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`Motorola cites specification language declaring “this example uses static RAM cells (SRAM) using
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`8
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`Ex. 1016 / Page 8 of 53
`
`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1016, p. 8
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`high impedance resistive loads rather than the more conventional depletion transistor loads or
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`complimentary pull-up transistors.” `092 Patent, 42:50-53 (emphasis added). The Court does not
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`find that this language clearly redefines the term because the patentee clearly described these
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`limitations as an “example.” As such, the Court will not import this limitation from the
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`specification. Bell Atlantic Network Servs., Inc. v. Covad Communications Group, Inc., 262 F.3d
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`1258, 1268 (Fed. Cir. 2001) (holding that the specification may not redefine particular claim terms
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`away from their ordinary meaning unless the intrinsic evidence “clearly set[s] forth or clearly
`
`redefine[s] a claim term so as to put one reasonably skilled in the art on notice that the patentee
`
`intended to so redefine the claim term”); Comark Communications, Inc. v. Harris Corp., 156 F.3d
`
`1182, 1187 (Fed. Cir. 1998) (“although the specification may aid the court in interpreting the
`
`meaning of disputed claim language, particular embodiments and examples appearing in the
`
`specification will not generally be read into the claims.”). And third, because the claim language
`
`appears to be clear on its face, the Court does not find persuasive Motorola’s extraneous evidence
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`regarding how persons of ordinary skill in the art in the early 1980s would have interpreted the term.
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`See Telelex, Inc. v. Ficosa North America Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002) (holding that
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`the intrinsic evidence is the most significant source of information regarding claim construction).
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`Circuitry Operable Independently of the Operation of Said Memory Array
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`The Court adopts ST’s proposed construction and construes “circuitry operable independently
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`of the operation of said memory array” as “circuitry whose operation is not contingent upon
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`operation of the memory array.” The Court holds that ST’s proposal most clearly represents the
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`meaning as understood by one of ordinary skill in the art. Moreover, the Court declines Motorola’s
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`9
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`Ex. 1016 / Page 9 of 53
`
`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1016, p. 9
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`

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`proposed construction for two reasons. First, the proposed limitation “located on the same chip as
`7
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`the memory array” appears redundant of the immediately preceding claim language “a plurality of
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`on-chip transistors comprising.” `092 Patent, 50:7-8. Second, Motorola’s proposed word
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`“asynchronously” would interject the requirement that the components work in relation to one
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`another. The patent discusses independent operation, and the Court finds no cause to interject
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`asynchronous or synchronous requirements.
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`Isolation Region in Said Substrate
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`The Court adopts Motorola’s proposed construction of “isolation region in said substrate”
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`and construes that term to mean “region in the substrate isolated from noise generated in another
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`region.” ST proposes an identical construction except with the word “area” substituted for “region.”8
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`The Court finds “region” to be clear on its face and thus denies ST’s proposal.
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`First and Second Regions Noise Isolated from Each Other
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`The Court adopts Motorola’s proposed construction of “first and second regions noise
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`isolated from each other” and construes that term to mean “first and second regions, each region
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`isolated from noise produced in the other region.” The Court finds that ST’s proposal is improper
`9
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`because contrary to the claim language, it would not require both regions to be noise isolated.
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`Noise
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`The Court adopts ST’s proposed construction of “noise” and construes the term as “unwanted
`
`7
`Motorola’s proposed construction is: “circuitry operable asynchronously from the memory array and
`located on the same chip as the memory array.”
`
`8
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`ST’s proposed construction is: “an area in the substrate isolated from noise generated in another area.”
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`9
`ST’s proposed construction is: “first and second areas with one area being isolated from noise produced in
`the other area.”
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`10
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`Ex. 1016 / Page 10 of 53
`
`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1016, p. 10
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`electrical signals.” The Court finds that ST’s construction matches the appropriate dictionary
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`definition and represents the understanding of one skilled in the art. Webster’s New Collegiate
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`Dictionary, at 772 (1980); see also Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202
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`(Fed. Cir. 2002) (holding that dictionaries are reliable sources of information regarding the
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`understanding of those skilled in the art). Although Motorola also derives its proposed construction10
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`from a relevant dictionary, the Court rejects Motorola’s construction because it introduces an
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`ambiguity. Motorola would have the Court construe “noise” to be only that which “produce[s]
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`undesirable effects,” but Motorola does not indicate what constitutes an “undesirable effect.”
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`[Noise] Due to Independent Operation of Said Transistors
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`The Court adopts ST’s proposed construction of “[noise] due to independent operation of
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`said transistors” and construes the term to mean “noise caused by operation of a plurality of on-chip
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`transistors whose operation is not contingent upon operation of the memory array.” The Court agrees
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`that the transistors are on-chip and that “independent operation” refers to the relationship between
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`the transistors and memory array. Moreover, the Court rejects Motorola’s proposed definition in part
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`because of the term “asynchronous.” As discussed supra, the Edwards patent discusses independent
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`operation, and the Court finds no cause to interject asynchronous or synchronous requirements that
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`are not mentioned.
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`THE `244 HOPKINS PATENT
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`The Hopkins patent describes an efficient method of activating a MOS power transistor.
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`Although one can quickly activate a power transistor by asserting a large charge, once activated, a
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`10
`Motorola’s proposed construction is: “unwanted electrical signals that produce undesirable effects in the
`circuits of the control systems in which they occur.”
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`11
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`Ex. 1016 / Page 11 of 53
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`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1016, p. 11
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`transistor only requires a small charge to remain active. The Hopkins patent discloses a two gate-
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`drive circuit configuration to reduce power waste. One gate-drive circuit applies a large charge to
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`quickly activate the transistor. Once the transistor is activated, the second gate drive circuit activates
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`in the first circuit’s place and applies a smaller charge to maintain the transistor. Thus, the Hopkins
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`method quickly activates a transistor with a large gate-drive circuit, but does not waste energy by
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`unnecessarily running the large circuit.
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`A First Gate Drive Circuit for Charge Pumping a Node
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`The Court first addresses the term “a first gate drive circuit for charge pumping a node.” ST
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`argues that the term should be construed as “a first circuit that drives a power transistor by alternately
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`taking on charge and delivering charge to the gate of the transistor in a repetitive process.” Motorola
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`asserts that the term should be construed as “a first charge pump that delivers charge to the gate of
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`the MOS power transistor by shifting the negative side of a first capacitor from a lower voltage to
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`a higher voltage, wherein said capacitor is not an external capacitor.”
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`The Court declines to accept either proposed construction and instead construes the term to
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`mean “a first circuit that drives a power transistor by raising the electrical potential in an additive,
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`charge transfer process in the manner of a pump.” First, the Court does not simply replace the term
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`“gate drive circuit” with “charge pump” because of ambiguities that may be added. Motorola admits
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`that it cannot find a dictionary definition for “charge pump,” and the Court is not willing to insert
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`a term having unknown boundaries. Therefore, the Court’s construction describes the gate drive
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`circuit’s function “in the manner of a pump” without exchanging one ambiguous term for another.
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`Second, ST’s description of “alternately taking on charge and delivering charge to the gate of the
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`transistor in a repetitive process” is also inadequate. The purpose of the first gate drive circuit is to
`
`12
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`Ex. 1016 / Page 12 of 53
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`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1016, p. 12
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`raise the transistor’s electrical potential to an appropriate level, not simply to deliver charge. The
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`Court replaces that part of ST’s proposed construction in order to more accurately describe the first
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`gate drive circuit’s purpose.
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`A Positive Supply Voltage
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`The Court adopts Motorola’s construction and construes “a positive supply voltage” as “a
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`voltage at an external source to the gate drive circuits that has a positive potential relative to a
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`reference potential.” Motorola’s construction is consistent with the appropriate dictionary definition
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`and is supported by the specification. Moreover, the Court finds that Motorola’s construction more
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`clearly defines the term’s boundaries than ST’s proposal.
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`Utilizes a First Charge Current
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`The Court adopts ST’s proposal and construes the term “utilizes a first charge current” as
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`“using a first current for charging the gate of a MOS power transistor.” Motorola’s construction
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`differs only in that it requires a “charge pump.” As discussed supra, the Court declines to insert
`11
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`the term “charge pump” into this patent’s construction.
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`A Second Gate Drive Circuit for Charge Pumping the Node
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`For reasons discussed regarding the term “a first gate drive circuit for charge pumping a
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`node,” the Court construes the term “a second gate drive circuit for charge pumping the node” as “a
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`second circuit that drives a power transistor by raising the electrical potential in an additive, charge
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`transfer process in the manner of a pump.”
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`Utilizes a Second Charge Current
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`11
`Motorola’s proposed construction is: “applies current from a first charge pump to the gate of a MOS
`power transistor.”
`
`13
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`Ex. 1016 / Page 13 of 53
`
`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1016, p. 13
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`For reasons discussed regarding the term “utilizes a first charge current,” the Court construes
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`the term “utilizes a second charge current” as “using a second current for charging the gate of a MOS
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`power transistor.”
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`Enables the First and Second Gate Drive Circuits
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`The Court declines to construe the term “enables the first and second gate drive circuits”
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`because the term is clear on its face.
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`Disables the First Gate Drive Circuit
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`The Court declines to construe the term “disables the first gate drive circuit” because the term
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`is clear on its face.
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`Utilizing a First Charge Current
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`The Court declines to construe the term “utilizing a first charge current” because the term is
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`clear on its face.
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`Utilizing a Second Charge Current
`
`The Court declines to construe the term “utilizing a second charge current” because the term
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`is clear on its face.
`
`THE `563 DAVIES PATENT
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`The Davies patent discloses a semiconductor device configuration to achieve low source
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`inductance. Inductance in a semiconductor device is undesirable because it limits the electrical
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`current which can flow through the device at high frequencies. The Davies patent discloses
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`structures common to all metal-oxide-semiconductor-field-effect-transistor (“MOSFET”) devices:
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`source, drain, channel, and gate regions. According to the specification, it is desirable to connect
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`the source region with the back side of the device (via the substrate) because: the source may be
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`14
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`Ex. 1016 / Page 14 of 53
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`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1016, p. 14
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`easily grounded to the heatsink; the heatsink will conduct heat away; and the configuration would
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`eliminate the need for expensive and toxic beryllium oxide. However, connecting the source regions
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`directly to the substrate can cause high source inductance, which is undesirable. Thus, the Davies
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`innovation is to connect many source regions to a single “P+” region that is in turn connected to the
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`substrate. This configuration allows for the benefits of connecting the source regions to the substrate
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`without high source inductance.
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`Epitaxial Layer
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`The parties agreed to “epitaxial layer’s” construction at the Markman hearing. The Court
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`accepts the parties’ agreement and accordingly construes the term as “a crystalline structure.”
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`First Regions of the First Conductivity Type Formed in the Epitaxial Layer Extending Down to the
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`Substrate
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`The Court agrees with Motorola and finds that the term “first regions of the first conductivity
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`type formed in the epitaxial layer extending down to the substrate” does not need construction.
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`Although the term is perhaps not simple, the individual words in the term have agreed or common
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`meanings that are not in need of further construction. For example, the meanings of “first
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`conductivity type,” “epitaxial layer,” and “substrate” are not in dispute. Additionally, the parties do
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`not argue that “first region” is unclear in any way. And finally, despite ST’s proposed construction,
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`the Court finds that “extending down to” does not require construction.
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`Furthermore, the Court rejects ST’s proposed construction because it improperly attempts
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`to resolve the factual question raised by “extends down to.” ST’s proposed construction declares
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`“the first region has a boundary that reaches the substrate, the boundary being defined where the first
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`region’s dopant concentration equals the constant dopant concentration in the epitaxial layer.” The
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`Ex. 1016 / Page 15 of 53
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`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1016, p. 15
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`term “extending down to” is plainly understood by those reasonably skilled in the art without need
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`of construction. Thus, in a two-step infringement analysis,
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` it will be for the jury to determine
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`whether the “first regions. . . [extend] down to the substrate.” By strictly defining the first region’s
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`boundary, ST’s proposed construction would improperly limit the facts the jury could consider to
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`determine whether the infringing devices first region “extends down to” the substrate. There is no
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`indication that the patentee intended to so limit the term and it is thus improper at the claim
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`construction stage to prospectively constrain the jury’s role in determining infringement.
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`Wherein the Plurality of First Regions and the Plurality of Source Regions are Connected Through
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`an Ohmic Conductive Means
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`The Court adopts ST’s proposed construction of the term “wherein the plurality of first
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`regions and the plurality of source regions are connected through an ohmic conductive means” and
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`construes the term as “wherein the plurality of first regions and the plurality of source regions are
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`connected through a structure that provides a low resistance connection.” The phrase “wherein the
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`plurality of first regions and the plurality of source regions are connected” is clear on its face without
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`further construction. Moreover, the parties agree that “an ohmic conductive means” is a structure
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`that provides a low resistance connection.
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` Furthermore, the Court rejects Motorola’s proposed
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`construction for interjecting the term “cell” which itself would require construction.
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`First Region of the First Conductivity Type Formed in the Epitaxial Layer, Extending from the Top
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`Surface Down to the Substrate
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`12
`Liquid Dynamics Corp. v. Vaughan Co., Inc., 355 F.3d 1361, 1367 (Fed. Cir. 2004) (holding that
`infringement is a two-step analysis where the court first interprets claims’ scope and meaning and the factfinder then
`compares properly construed claims to the allegedly infringing device).
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`Motorola’s proposed construction is: “in a plurality of cells each cell has a structure that provides a low
`resistance connection between the first region and the source region.”
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`Ex. 1016 / Page 16 of 53
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`Petitioners HTC Corp. & HTC America, Inc. - Ex. 1016, p. 16
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`For reasons discussed regarding the term “first regions of the first conductivity type formed
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`in the epitaxial layer extending down to the substrate,” the Court finds that “first region of the first
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`conductivity type formed in the epitaxial layer, extending from the top surface down to the substrate”
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`is clear on its face and does not require further construction.
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`First
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`The term “first” requires the Court to consider its authority to correct claim terms. When the
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`Davies patent issued, claim 4 read in relevant part,
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`a source and a drain region of a second conductivity type formed in the epitaxial layer extending from
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`the top surface down into a portion of the epitaxial layer, wherein the source and drain regions ar