Case 2:17-cv-00676-RWS-RSP Document 108 Filed 07/18/18 Page 1 of 17 PageID #: 6156
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`GODO KAISHA IP BRIDGE 1,
`
`Plaintiff,
`
`v.
`
`INTEL CORPORATION,
`
`Defendant.
`
`Case No. 2:17-cv-00676-RWS-RSP
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`PLAINTIFF GODO KAISHA IP BRIDGE 1’S
`REPLY CLAIM CONSTRUCTION BRIEF
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`

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`Case 2:17-cv-00676-RWS-RSP Document 108 Filed 07/18/18 Page 2 of 17 PageID #: 6157
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`TABLE OF CONTENTS
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`
`I.
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`US Patent No. 6,346,736..................................................................................................... 1
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`Page
`
`A.
`
`“Dielectric Film” (Claims 6, 7, and 8) .................................................................... 1
`
`II.
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`U.S. Patent Nos. 6,387,824 and 6,602,802 ......................................................................... 4
`
`
`
`A.
`
`B.
`
`C.
`
`“Form . . . a Porous Film” (’824 Patent, claim 3) /
`“Forming a Porous Film” (’802 Patent, claim 1) .................................................... 4
`
`Step Order (’824 Patent, claim 3) ........................................................................... 9
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`Step Order (’802 Patent, claim 1) ......................................................................... 11
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`III.
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`Conclusion ........................................................................................................................ 11
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`
`
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`
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`-i-
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`Case 2:17-cv-00676-RWS-RSP Document 108 Filed 07/18/18 Page 3 of 17 PageID #: 6158
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`TABLE OF AUTHORITIES
`
`Page(s)
`
`
`Cases
`
`Absolute Software, Inv. v. Stealth Signal, Inc.,
`659 F. 3d 1121 (Fed. Cir. 2011).............................................................................................1, 7
`
`Altiris, Inc. v. Symantec Corp.,
`318 F.3d 1363 (Fed. Cir. 2003)..........................................................................................10, 11
`
`Apple, Inc. v. Ameranth, Inc.,
`842 F.3d 1229 (Fed. Cir. 2016)................................................................................................10
`
`Baldwin Graphic Sys., Inc. v. Siebert, Inc.,
`512 F.3d 1338 (Fed. Cir. 2008)..................................................................................................1
`
`C-Cation Techs., LLC v. Time Warner Cable, Inc.,
`No. 2:14-cv-0059-JRG-RSP, 2015 WL 1849014 (E.D. Tex. Apr. 20, 2015)..........................11
`
`DataTreasury Corp. v. Wells Fargo & Co.,
`No. 2:05-cv-291, 2009 WL 1393068 (E.D. Tex. May 11, 2009) ............................................10
`
`E-Pass Techs. Inc. v. 3Com Corp.,
`473 F.3d 1213 (Fed. Cir. 2007)..................................................................................................9
`
`E-Watch Inc. v. Apple, Inc.,
`No. 2:13-cv-1061-JRG-RSP, 2015 WL 1387947 (E.D. Tex. March 25, 2015) ........................9
`
`Honeywell Int’l, Inc. v. ITT Indus., Inc.,
`452 F.3d 1312 (Fed. Cir. 2006)..............................................................................................1, 7
`
`Indacon, Inc. v. Facebook, Inc.,
`824 F.3d 1352 (Fed. Cir. 2016)................................................................................................10
`
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F. 3d 1359 (Fed. Cir. 2008).................................................................................................3
`
`Network-1 Sec. Solutions, Inc. v. Cisco Sys., Inc.,
`692 F. Supp. 2d 632 (E.D. Tex. 2010) .......................................................................................5
`
`Phillips v. AWH Corp.,
`415 F. 3d 1303 (Fed. Cir. 2005) (en banc).............................................................................1, 8
`
`Qcue, Inc. v. Digonex Techs., Inc.,
`No. A-12-CA-484-SS, 2013 WL 4784120 (W.D. Tex. Sept. 5, 2013)......................................1
`
`
`
`-ii-
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`

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`Case 2:17-cv-00676-RWS-RSP Document 108 Filed 07/18/18 Page 4 of 17 PageID #: 6159
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`Teva Pharm. USA, Inc. v. Sandoz, Inc.,
`135 S. Ct. 831 (2015) .................................................................................................................2
`
`
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`-iii-
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`

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