Case 4:20-cv-00991-ALM Document 39 Filed 02/08/22 Page 1 of 47 PageID #: 1348
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`United States District Court
`EASTERN DISTRICT OF TEXAS
`SHERMAN DIVISION
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` Civil Action No. 4:20-CV-00991-ALM
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`OCEAN SEMICONDUCTOR LLC,
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`Plaintiff,
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`v.
`HUAWEI DEVICE USA, INC., HUAWEI
`DEVICE CO., LTD., AND HISILICON
`TECHNOLOGIES CO., LTD.,
`Defendants.
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`
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`CLAIM CONSTRUCTION MEMORANDUM AND ORDER
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`Before the Court are Plaintiff Ocean Semiconductor LLC’s (“Plaintiff” or “Ocean”)
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`Opening Claim Construction Brief (Dkt. #26), Defendants Huawei Device USA, Inc., Huawei
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`Device Co., Ltd., and HiSilicon Technologies Co., Ltd’s (“Defendants” or collectively “Huawei”)
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`Responsive Claim Construction Brief (Dkt. #33), and Plaintiff’s Reply Claim Construction Brief
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`(Dkt. #34).1 Also before the Court is the parties’ December 23, 2021 Joint Claim Construction and
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`Prehearing Statement (Dkt. #36). The Court held a claim construction hearing on January 14, 2022,
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`to determine the proper construction of the disputed claim terms in U.S. Pat. No. 6,660,651 (“the
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`’651 Patent”), U.S. Pat. No. 7,080,330 (“the ’330 Patent”), U.S. Pat. No. 6,725,402 (“the ’402
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`Patent”), U.S. Pat. No. 8,676,538 (“the ’538 Patent”), U.S. Pat. No. 6,836,691 (“the ’691 Patent”),
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`U.S. Pat. No. 6,907,305 (“the ’305 Patent”), and U.S. Pat. No. 6,968,248 (“the ’248 Patent”)
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`(collectively, “the Asserted Patents”).
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`The Court issues this Claim Construction Memorandum Opinion and Order and hereby
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`1 Citations to the parties’ filings are to the filing’s number in the docket (Dkt. #) and pin cites are
`to the page numbers assigned through ECF.
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`Case 4:20-cv-00991-ALM Document 39 Filed 02/08/22 Page 2 of 47 PageID #: 1349
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`incorporates-by-reference the claim construction hearing and transcript. For the following
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`reasons, the Court provides the constructions set forth below.
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`I.
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`BACKGROUND
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`Plaintiff asserts seven patents against Defendants. In general, the Asserted Patents relate to
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`technologies supporting semiconductor manufacturing operations. Shortly before the start of the
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`January 14, 2022 hearing, the Court provided the parties with preliminary constructions with the
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`aim of focusing the parties’ arguments and facilitating discussion.
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`The ’651 Patent, titled “Adjustable Wafer Stage, and a Method and System for Performing
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`Process Operations Using Same,” issued on December 9, 2003, and was filed on November 8,
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`2001. The ’651 Patent generally relates “to semiconductor fabrication technology, and, more
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`particularly, to an adjustable wafer stage, and a method and system for performing process
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`operations using same.” ’651 Patent at 1:8–11. The Abstract of the ’651 Patent states:
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`A process tool comprised of an adjustable wafer stage and various methods and
`systems for performing process operations using same is disclosed herein. In one
`illustrative embodiment, the process tool is comprised of a process chamber, and
`an adjustable wafer stage in the process chamber to receive a wafer positioned
`thereabove, the wafer stage having a surface that is adapted to be raised, lowered
`or tilted. In further embodiments, the process tool further comprises at least three
`pneumatic cylinders or at least three rack and pinion combinations, each of which
`are operatively coupled to the wafer stage by a ball and socket connection. A system
`disclosed herein is comprised of a metrology tool for measuring a plurality of
`wafers processed in a process tool to determine across-wafer variations produced
`by the process tool, a process tool comprised of an adjustable wafer stage that has
`a surface adapted to receive a wafer to be processed in the tool, and a controller for
`adjusting a plane of the surface of the wafer stage based upon the determined
`across-wafer variations produced by the tool, whereby the process tool processes at
`least one subsequently processed wafer positioned on the wafer stage after the plane
`of the surface of the wafer stage has been adjusted.
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`Claim 19 of the ’651 Patent is an illustrative claim and recites the following elements
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`(disputed terms in italics):
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`19. A method, comprising:
`providing a process chamber comprised of a wafer stage, said
`wafer stage having a surface that is adjustable;
`adjusting said surface of said wafer stage by actuating at least one
`of a plurality of pneumatic cylinders that are operatively
`coupled to said wafer stage to accomplish at least one of
`raising, lowering and varying a tilt of said surface of said
`wafer stage;
`positioning a wafer on said wafer stage; and
`performing a process operation on said wafer positioned on said
`wafer stage.
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`The ’330 Patent, titled “Concurrent Measurement of Critical Dimension and Overlay in
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`Semiconductor Manufacturing,” issued on July 18, 2006, and was filed on March 5, 2003. The
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`’330 Patent generally relates “to monitoring and/or controlling a semiconductor fabrication
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`process, and in particular to a system and methodology for concurrently measuring critical
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`dimensions and overlay during the fabrication process and controlling operating parameters to
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`refine the process in response to the measurements.” ’330 Patent at 1:6–12. The Abstract of the
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`’330 Patent states:
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`A system and methodology are disclosed for monitoring and controlling a
`semiconductor fabrication process. One or more structures formed on a wafer
`matriculating through the process facilitate concurrent measurement of critical
`dimensions and overlay via scatterometry or a scanning electron microscope
`(SEM). The concurrent measurements mitigate fabrication inefficiencies, thereby
`reducing time and real estate required for the fabrication process. The
`measurements can be utilized to generate feedback and/or feed-forward data to
`selectively control one or more fabrication components and/or operating
`parameters associated therewith to achieve desired critical dimensions and to
`mitigate overlay error.
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`Claim 19 of the ’330 Patent is an illustrative claim and recites the following elements
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`(disputed term in italics):
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`19. A method for monitoring and controlling a semiconductor
`fabrication process comprising:
`providing a plurality of wafers undergoing the fabrication
`process;
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`mapping the plurality of wafers into one or more logical grids
`comprising one or more portions in which a grating
`structure for use in concurrent measurements is formed;
`concurrently measuring one or more critical dimensions and
`overlay in a wafer undergoing the fabrication process;
`determining if one or more of the critical dimensions are
`outside of acceptable tolerances;
`determining whether an overlay error is occurring;
`developing control data based upon one or more concurrent
`measurements when at least one of an overlay error is
`occurring and one or more of the critical dimensions fall
`outside of acceptable tolerances; and
`feeding forward or backward the control data to adjust one or
`more fabrication components or one or more operating
`parameters associated with the fabrication components
`when at least one of an overlay error is occurring and one
`or more of the critical dimensions fall outside of acceptable
`tolerances to mitigate overlay error and/or to bring critical
`dimension within acceptable tolerances.
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`The ’402 Patent, titled “Method and Apparatus for Fault Detection of a Processing Tool
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`and Control Thereof Using an Advanced Process Control (APC) Framework,” issued on April 20,
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`2004, and was filed on July 31, 2000. The ’402 Patent generally relates “to semiconductor
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`fabrication technology, and, more particularly, to a method and apparatus for fault detection and
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`control of a processing tool using an Advanced Process Control (APC) framework.” ’402 Patent
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`at 1:9–12. The Abstract of the ’402 Patent states:
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`A method and apparatus for providing fault detection in an Advanced Process
`Control (APC) framework. A first interface receives operational state data of a
`processing tool related to the manufacture of a processing piece. The state data is
`sent from the first interface to a fault detection unit. A fault detection unit
`determines if a fault condition exists with the processing tool based upon the state
`data. A predetermined action is performed on the processing tool in response to the
`presence of a fault condition. In accordance with one embodiment, the
`predetermined action is to shutdown the processing tool so as to prevent further
`production of faulty wafers.
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`Claim 1 of the ’402 Patent is an illustrative claim and recites the following elements
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`(disputed term in italics):
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`1.A method comprising:
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`receiving at a first interface operational state data of a processing
`tool related to the manufacture of a processing piece;
`sending the state data from the first interface to a fault detection
`unit, wherein the act of sending comprises: sending the state
`data from the first interface to a data collection unit;
`accumulating the state data at the data collection unit; translating
`the state data from a first communications protocol to a
`second communications protocol compatible with the fault
`detection unit; and sending the translated state data from the
`data collection unit to the fault detection unit; determining
`if a fault condition exists with the processing tool based
`upon the state data received by the fault detection unit;
`performing a predetermined action on the processing tool in
`response to the presence of a fault condition; and
`sending an alarm signal indicative of the fault condition to an
`advanced process control framework from the fault
`detection unit providing that a fault condition of the
`processing tool was determined by the fault detection unit,
`wherein performing a predetermined action further comprises
`sending a signal by the framework to the first interface
`reflective of the predetermined action.
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`The ’538 Patent, titled “Adjusting Weighting of a Parameter Relating to Fault Detection
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`Based on a Detected Fault,” issued on March 18, 2014, and was filed on November 2, 2004. The
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`’538 Patent generally relates “to semiconductor manufacturing, and, more particularly, to a
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`method, system, and apparatus for performing a process to improve fault detection reliability
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`through feedback.” ’538 Patent at 1:9–12. The Abstract of the ’538 Patent states:
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`A method, apparatus and a system, for provided for performing a dynamic
`weighting technique for performing fault detection. The method comprises
`processing a workpiece and performing a fault detection analysis relating to the
`processing of the workpiece. The method further comprises determining a
`relationship of a parameter relating to the fault detection analysis to a detected fault
`and adjusting a weighting associated with the parameter based upon the relationship
`of the parameter to the detected fault.
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`Claims 1 and 5 of the ’538 Patent is an illustrative claim and recites the following elements
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`(disputed term in italics):
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`1.A method, comprising:
`performing in a computer a fault detection analysis relating to
`processing of a workpiece;
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`determining in a said computer a relationship of a parameter
`relating to said fault detection analysis to a detected fault;
`adjusting in said computer a weighting of said parameter based
`upon said relationship of said parameter to said detected
`fault; and
`performing in said computer the fault detection analysis relating
`to processing of a subsequent workpiece using said adjusted
`weighting.
`
`
`5. The method of claim 1, further comprising:
`designated in said computer whether said detected fault is a
`significant fault; and
`adjusting said weighting associated with said parameter based
`responsive to designating said detected fault as a significant
`fault.
`
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`The ’691 Patent, titled “Method and Apparatus for Filtering Metrology Data Based on
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`Collection Purpose,” issued on December 28, 2004, and was filed on May 1, 2003. The ’691 Patent
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`generally relates “to an industrial process, and, more particularly, to a method and apparatus for
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`filtering metrology data based on collection purpose in a semiconductor device manufacturing
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`environment.” ’691 Patent at 1:8–11. The Abstract of the ’691 Patent states:
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`A method includes collecting metrology data related to the processing of
`workpieces in a plurality of tools. Context data for the metrology data is generated.
`The context data includes collection purpose data. The metrology data is filtered
`based on the collection purpose data. A process control activity related to one of
`the tools is conducted based on the filtered metrology data. A system includes at
`least one metrology tool, a computer, and a process controller. The metrology tool
`is configured to collect metrology data related to the processing of workpieces in a
`plurality of tools. The computer is configured to generate context data for the
`metrology data, the context data including collection purpose data. The process
`controller is configured to filter the metrology data based on the collection purpose
`data and conduct a process control activity related to one of the tools based on the
`filtered metrology data.
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`Claim 1 of the ’691 Patent is an illustrative claim and recites the following elements
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`(disputed term in italics):
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`1.A method, comprising:
`collecting metrology data related to the processing of workpieces
`in a plurality of tools;
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`generating context data for the metrology data, the context data
`including collection purpose data;
`filtering the metrology data based on the collection purpose data;
`and
`conducting a process control activity related to one of the tools
`based on the filtered metrology data.
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`The ’305 Patent, titled “Agent Reactive Scheduling in an Automated Manufacturing
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`Environment,” issued on June 14, 2005, and was filed on April 30, 2002. The ’305 Patent generally
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`relates “to automated manufacturing environments, and, more particularly, to scheduling in an
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`automated manufacturing environment.” ’305 Patent at 1:16–18. The Abstract of the ’305 Patent
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`states:
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`A method and apparatus for scheduling in an automated manufacturing
`environment, comprising are disclosed. The method includes detecting an
`occurrence of a predetermined event in a process flow; notifying a software
`scheduling agent of the occurrence; and reactively scheduling an action from the
`software scheduling agent responsive to the detection of the predetermined event.
`The apparatus is automated manufacturing environment including a process flow
`and a computing system. The computing system further includes a plurality of
`software scheduling agents residing thereon, the software scheduling agents being
`capable of reactively scheduling appointments for activities in the process flow
`responsive to a plurality of predetermined events.
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`Claim 1 of the ’305 Patent is an illustrative claim and recites the following elements
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`(disputed term in italics):
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`1.A method for scheduling in an automated manufacturing
`environment, comprising:
`detecting an occurrence of a predetermined event in a process
`flow;
`notifying a software scheduling agent of the occurrence; and
`reactively scheduling an action from the software scheduling
`agent responsive to the detection of the predetermined
`event.
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`The ’248 Patent, titled “Agent Reactive Scheduling in an Automated Manufacturing
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`Environment,” issued on November 22, 2005, and was filed on June 13, 2005. The ’248 Patent
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`generally relates “to automated manufacturing environments, and, more particularly, to scheduling
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`in an automated manufacturing environment.” ’248 Patent at 1:19–21. The Abstract of the ’248
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`Patent states:
`
`A method and apparatus for scheduling in an automated manufacturing
`environment, comprising are disclosed. The method includes detecting an
`occurrence of a predetermined event in a process flow; notifying a software
`scheduling agent of the occurrence; and reactively scheduling an action from the
`software scheduling agent responsive to the detection of the predetermined event.
`The apparatus is automated manufacturing environment including a process flow
`and a computing system. The computing system further includes a plurality of
`software scheduling agents residing thereon, the software scheduling agents being
`capable of reactively scheduling appointments for activities in the process flow
`responsive to a plurality of predetermined events.
`
`Claim 1 of the ’248 Patent is an illustrative claim and recites the following elements
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`(disputed term in italics):
`
`1. A method for scheduling in an automated manufacturing
`environment, comprising:
`automatically detecting an occurrence of a predetermined event
`in an integrated, automated process flow;
`automatically notifying a software scheduling agent of the
`occurrence; and
`reactively scheduling an action from the software scheduling
`agent responsive to the detection of the predetermined
`event.
`
`II.
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`LEGAL PRINCIPLES
`A. Claim Construction
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`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to
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`which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312
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`(Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc.,
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`381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start by
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`considering the intrinsic evidence. Id. at 1313; C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d
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`858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d
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`1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the
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`specification, and the prosecution history. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at
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`861. The general rule—subject to certain specific exceptions discussed infra—is that each claim
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`term is construed according to its ordinary and accustomed meaning as understood by one of
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`ordinary skill in the art at the time of the invention in the context of the patent. Phillips, 415 F.3d
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`at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure
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`Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (quotation marks omitted)
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`(“There is a heavy presumption that claim terms carry their accustomed meaning in the relevant
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`community at the relevant time.”) cert. granted, judgment vacated, 135 S. Ct. 1846 (2015).
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`“The claim construction inquiry . . . begins and ends in all cases with the actual words of
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`the claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998).
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`“[I]n all aspects of claim construction, ‘the name of the game is the claim.’” Apple Inc. v. Motorola,
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`Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362, 1369 (Fed.
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`Cir. 1998)) overruled on other grounds by Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed.
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`Cir. 2015). First, a term’s context in the asserted claim can be instructive. Phillips, 415 F.3d at
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`1314. Other asserted or unasserted claims can also aid in determining the claim’s meaning, because
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`claim terms are typically used consistently throughout the patent. Id. Differences among the claim
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`terms can also assist in understanding a term’s meaning. Id. For example, when a dependent claim
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`adds a limitation to an independent claim, it is presumed that the independent claim does not
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`include the limitation. Id. at 1314–15.
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`“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id. (quoting
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`Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)). “[T]he
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`specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive;
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`it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics Corp. v.
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`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am. Corp.,
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`299 F.3d 1313, 1325 (Fed. Cir. 2002). This is true because a patentee may define his own terms,
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`give a claim term a different meaning than the term would otherwise possess, or disclaim or
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`disavow the claim scope. Phillips, 415 F.3d at 1316. In these situations, the inventor’s
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`lexicography governs. Id.
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`The specification may also resolve ambiguous claim terms “where the ordinary and
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`accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of
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`the claim to be ascertained from the words alone.” Teleflex, Inc., 299 F.3d at 1325. But,
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`“‘[a]lthough the specification may aid the court in interpreting the meaning of disputed claim
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`language, particular embodiments and examples appearing in the specification will not generally
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`be read into the claims.’” Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir.
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`1998) (quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988));
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`see also Phillips, 415 F.3d at 1323. “[I]t is improper to read limitations from a preferred
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`embodiment described in the specification—even if it is the only embodiment—into the claims
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`absent a clear indication in the intrinsic record that the patentee intended the claims to be so
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`limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).
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`The prosecution history is another tool to supply the proper context for claim construction
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`because, like the specification, the prosecution history provides evidence of how the U.S. Patent
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`and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415 F.3d at 1317.
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`However, “because the prosecution history represents an ongoing negotiation between the PTO
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`and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the
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`specification and thus is less useful for claim construction purposes.” Id. at 1318; see also Athletic
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`Alts., Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996) (ambiguous prosecution history
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`may be “unhelpful as an interpretive resource”).
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`Although extrinsic evidence can also be useful, it is “‘less significant than the intrinsic
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`record in determining the legally operative meaning of claim language.’” Phillips, 415 F.3d at
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`1317 (quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a
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`court understand the underlying technology and the manner in which one skilled in the art might
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`use claim terms, but technical dictionaries and treatises may provide definitions that are too broad
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`or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert
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`testimony may aid a court in understanding the underlying technology and determining the
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`particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
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`assertions as to a term’s definition are not helpful to a court. Id. Extrinsic evidence is “less reliable
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`than the patent and its prosecution history in determining how to read claim terms.” Id. The
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`Supreme Court has explained the role of extrinsic evidence in claim construction:
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`In some cases, however, the district court will need to look beyond the patent’s
`intrinsic evidence and to consult extrinsic evidence in order to understand, for
`example, the background science or the meaning of a term in the relevant art during
`the relevant time period. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546 (1871)
`(a patent may be “so interspersed with technical terms and terms of art that the
`testimony of scientific witnesses is indispensable to a correct understanding of its
`meaning”). In cases where those subsidiary facts are in dispute, courts will need to
`make subsidiary factual findings about that extrinsic evidence. These are the
`“evidentiary underpinnings” of claim construction that we discussed in Markman,
`and this subsidiary factfinding must be reviewed for clear error on appeal.
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`Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 331–32 (2015).
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`B.
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`Departing from the Ordinary Meaning of a Claim Term
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`There are “only two exceptions to [the] general rule” that claim terms are construed
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`according to their plain and ordinary meaning: “1) when a patentee sets out a definition and acts
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`as his own lexicographer, or 2) when the patentee disavows the full scope of the claim term either
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`in the specification or during prosecution.”2 Golden Bridge Tech., Inc. v. Apple Inc., 758 F.3d
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`2 Some cases have characterized other principles of claim construction as “exceptions” to the
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`1362, 1365 (Fed. Cir. 2014) (quoting Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362,
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`1365 (Fed. Cir. 2012)); see also GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309
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`(Fed. Cir. 2014) (“[T]he specification and prosecution history only compel departure from the
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`plain meaning in two instances: lexicography and disavowal.”). The standards for finding
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`lexicography or disavowal are “exacting.” GE Lighting Sols., 750 F.3d at 1309.
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`To act as his own lexicographer, the patentee must “clearly set forth a definition of the
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`disputed claim term,” and “clearly express an intent to define the term.” Id. (quoting Thorner, 669
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`F.3d at 1365); see also Renishaw, 158 F.3d at 1249. The patentee’s lexicography must appear
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`“with reasonable clarity, deliberateness, and precision.” Renishaw, 158 F.3d at 1249.
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`To disavow or disclaim the full scope of a claim term, the patentee’s statements in the
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`specification or prosecution history must amount to a “clear and unmistakable” surrender. Cordis
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`Corp. v. Bos. Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner, 669 F.3d at 1366
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`(“The patentee may demonstrate intent to deviate from the ordinary and accustomed meaning of a
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`claim term by including in the specification expressions of manifest exclusion or restriction,
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`representing a clear disavowal of claim scope.”). “Where an applicant’s statements are amenable
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`to multiple reasonable interpretations, they cannot be deemed clear and unmistakable.” 3M
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`Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir. 2013).
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`C.
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`Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA)
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`Patent claims must particularly point out and distinctly claim the subject matter regarded
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`as the invention. 35 U.S.C. § 112, ¶ 2. A claim, when viewed in light of the intrinsic evidence,
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`must “inform those skilled in the art about the scope of the invention with reasonable certainty.”
`
` 
`general rule, such as the statutory requirement that a means-plus-function term is construed to
`cover the corresponding structure disclosed in the specification. See, e.g., CCS Fitness, Inc. v.
`Brunswick Corp., 288 F.3d 1359, 1367 (Fed. Cir. 2002).
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`Case 4:20-cv-00991-ALM Document 39 Filed 02/08/22 Page 13 of 47 PageID #: 1360
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`Nautilus Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014). If it does not, the claim fails §
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`112, ¶ 2 and is therefore invalid as indefinite. Id. at 901. Whether a claim is indefinite is determined
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`from the perspective of one of ordinary skill in the art as of the time the application for the patent
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`was filed. Id. at 911. As it is a challenge to the validity of a patent, the failure of any claim in suit
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`to comply with § 112 must be shown by clear and convincing evidence. BASF Corp. v. Johnson
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`Matthey Inc., 875 F.3d 1360, 1365 (Fed. Cir. 2017). “[I]ndefiniteness is a question of law and in
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`effect part of claim construction.” ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed.
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`Cir. 2012).
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`When a term of degree is used in a claim, “the court must determine whether the patent
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`provides some standard for measuring that degree.” Biosig Instruments, Inc. v. Nautilus, Inc., 783
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`F.3d 1374, 1378 (Fed. Cir. 2015) (quotation marks omitted). Likewise, when a subjective term is
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`used in a claim, “a court must determine whether the patent’s specification supplies some standard
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`for measuring the scope of the [term].” Ernie Ball, Inc. v. Earvana, LLC, 502 F. App’x 971, 980
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`(Fed. Cir. 2013) (citations omitted). The standard “must provide objective boundaries for those of
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`skill in the art.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014).
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`III. LEVEL OF ORDINARY SKILL IN THE ART FOR THE ASSERTED
`USWS PATENTS
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`It is well established that patents are interpreted from the perspective of one of ordinary
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`skill in the art. See Phillips, 415 F.3d at 1313 (“[T]he ordinary and customary meaning of a claim
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`term is the meaning that the term would have to a person of ordinary skill in the art in question at
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`the time of the invention, i.e., as of the effective filing date of the patent application.”). The Federal
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`Circuit has advised that the “[f]actors that may be considered in determining the level of skill in
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`the art include: (1) the educational level of the inventors; (2) the type of problems encountered in
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`the art; (3) prior art solutions to those problems; (4) the rapidity with which innovations are made;
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`Page 13 of 47
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`Case 4:20-cv-00991-ALM Document 39 Filed 02/08/22 Page 14 of 47 PageID #: 1361
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`(5) sophistication of the technology; and (6) education level of active workers in the field.” Env’tl
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`Designs, Ltd. v. Union Oil Co. of California, 713 F.2d 693, 696 (Fed. Cir. 1983). “These factors
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`are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.”
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`Daiichi Sankyo Co. Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).
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`Plaintiff contends that a person of ordinary skill in the art was a person with: (i) a B.S. in
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`Engineering, Materials Science or a related field such as advanced process control with at least
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`three years of experience in semiconductor manufacturing or (ii) at least an M.S. in Engineering
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`or Materials Science. Plaintiff further argues that additional education or experience could also
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`serve as a substitute for these requirements.
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`Defendants contend that a person of ordinary skill in the art would have had at least a B.S.
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`in mechanical engineering, electrical engineering, materials science engineering, or a related field.
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`Defendants further argue that in addition to this educational requirement, a person of ordinary skill
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`in the art would have four years of experience working with semiconductor fabrication processes.
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`Specifically, for the ’651 Patent, Defendants argue that a person of ordinary skill in the art would
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`have had four years of experience designing and developing semiconductor fabrication processes
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`and tooling, and for the ’538 Patent four years of experience working with semiconductor
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`fabrication processes, including computer programming and data analysis. Defendants also argue
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`that advanced education may substitute for experience.
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`Having considered the parties’ proposals, and the factors that may be considered in
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`determining the level of skill in the art, the Court finds that a person of ordinary skill in the art
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`would have had at least a B.S. in mechanical engineering, electrical engineering, materials science
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`engineering, or a related field. In addition to this educational requirement, a person of ordinary
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`skill would have at least three years of experience in semiconductor manufacturing. The Court
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