Case 6:20-cv-00636-ADA Document 145 Filed 12/10/21 Page 1 of 9
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`DEMARAY LLC,
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`Plaintiff,
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`v.
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`Defendant.
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`Plaintiff,
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`INTEL CORPORATION
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`DEMARAY LLC,
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`Case No. 6:20-CV-00634-ADA
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`JURY TRIAL DEMANDED
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`Case No. 6:20-CV-00636-ADA
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`JURY TRIAL DEMANDED
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`v.
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`SAMSUNG ELECTRONICS CO., LTD,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`SAMSUNG SEMICONDUCTOR, INC., and
`SAMSUNG AUSTIN SEMICONDUCTOR, LLC
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`
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`Defendants.
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`DEFENDANTS’ CLAIM CONSTRUCTION BRIEF REGARDING ADDITIONAL
`TERMS FOR CLAIM 2 OF U.S. PATENT NO. 7,381,657
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`Case 6:20-cv-00636-ADA Document 145 Filed 12/10/21 Page 2 of 9
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`I.
`II.
`III.
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`INTRODUCTION ............................................................................................................. 1
`SUMMARY OF DISPUTE FOR CLAIM 2 OF THE ’657 PATENT .............................. 1
`CLAIM TERMS WITH DISPUTED CONSTRUCTIONS .............................................. 1
`A.
`“A method of depositing an insulating film on a substrate, comprising:”
`(’657 patent, cl. 2 preamble) .................................................................................. 1
`“wherein an oxide material…” (’657 patent, cl. 2) ................................................ 2
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`B.
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`*All emphasis added unless otherwise stated.
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`For ease of reference, Claim 2 of the ’657 patent with the two disputed terms highlighted is
`reproduced below:
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`Case 6:20-cv-00636-ADA Document 145 Filed 12/10/21 Page 3 of 9
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`I.
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`INTRODUCTION
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`Demaray, for nearly a year, continued to represent in three rounds of contentions it would
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`not assert claim 2 of the ’657 patent if discovery confirmed Defendants do not use DC power to
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`the target and RF bias to the substrate to produce an oxide material. Only after Markman (that
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`did not address then un-asserted claim 2), and under the guise of “plain and ordinary meaning”,
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`Demaray now alleges that the “oxide material” in claim 2 can be deposited by any process—not
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`the claimed reactive sputtering process—because “the oxide material is one thing, the insulating
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`film is another.” Ex. A at 24:6-7. But the intrinsic record, including the claim’s own language,
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`makes clear that the last limitation—the “wherein” clause including the deposition of the “oxide
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`material”—is the result of the claimed reactive sputtering process, not a disembodied limitation as
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`Demaray advances through a non-plain-and-ordinary-meaning interpretation.
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`II.
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`SUMMARY OF DISPUTE FOR CLAIM 2 OF THE ’657 PATENT
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`There is a single dispute. Defendants contend: the “oxide material” recited in the last
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`“wherein” clause after the four claimed method steps (“providing…”), see supra, cl. 2, is deposited
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`as result of those claimed steps, forming an “insulating film” comprising the “oxide material.”
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`Demaray contends: the “oxide material” may be deposited by any process, even if unrelated to the
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`claimed method steps. Only Defendants’ proposal is consistent with the intrinsic evidence. See
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`Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329 (Fed. Cir. 2005) (stating “a ‘whereby’ clause
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`generally states the result of the patented process”); see also Allergan Sales, LLC v. Sandoz, Inc.,
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`935 F.3d 1370, 1376 (Fed. Cir. 2019) (treating “wherein” the same as “whereby”).
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`III. CLAIM TERMS WITH DISPUTED CONSTRUCTIONS
`A.
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` “A method of depositing an insulating film on a substrate, comprising:”
`(’657 patent, cl. 2 preamble)
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`Plaintiff’s Proposal
`Preamble is not limiting, except for
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`Defendants’ Proposal
`Preamble is limiting (“depositing an insulating
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`Case 6:20-cv-00636-ADA Document 145 Filed 12/10/21 Page 4 of 9
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`“insulating film on a substrate”
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`film on a substrate”)
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`The parties agree the “insulating film on a substrate” portion is limiting, only disputing
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`whether the full preamble (including “depositing”) is also limiting (as Defendants propose) or
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`whether the requirement that an “insulating film” be deposited can be read out of the otherwise
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`limiting preamble (as Demaray proposes). The preamble recites “[a] method of depositing an
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`insulating film on a substrate,” and the claim cross-references that deposition when reciting
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`“wherein an oxide material is deposited on the substrate”—confirming that the “oxide material”
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`is part of the “insulating film” deposited via the claimed method. Ex. B at cl. 2; id. at 4:51-54
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`(discussing “insulating oxide layers”). By clarifying the relationship between the “oxide material”
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`and the “insulating film,” “depositing” in the preamble gives life, meaning, and vitality to the
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`claim. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999).
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`Furthermore, in claim 2, the term “depositing” is directly tied to the phrase “insulating film
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`on a substrate” and thus “the preamble in this case cannot be neatly packaged into two separate
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`portions.” Bio-Rad Labs., Inc. v. 10X Genomics Inc., 967 F.3d 1353, 1371-72 (Fed. Cir. 2020)
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`(construing entire preamble as limiting where “[t]he language relied upon for antecedent basis in
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`the preamble at issue is intertwined with the rest of the preamble.”).
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`B.
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`“wherein an oxide material…” (’657 patent, cl. 2)
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`Plaintiff’s Proposal
`Plain and ordinary
`meaning
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`Defendants’ Proposal
`“wherein an oxide material is deposited on the substrate, and the
`insulating film comprising the oxide material is formed by reactive
`sputtering in a mode between a metallic mode and a poison mode”
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`Demaray’s new theory that the “oxide material” can be deposited pursuant to any method
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`is not the “plain and ordinary meaning” of the “wherein clause,” and it is contrary to its prior
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`interpretation repeatedly made to Defendants. The plain language of the claim recites “[a] method
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`Case 6:20-cv-00636-ADA Document 145 Filed 12/10/21 Page 5 of 9
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`of depositing an insulating film” pursuant to the claimed reactive sputtering steps (“providing…”),
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`not a method of depositing an “insulating film” and a separate, disembodied deposition process of
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`an “oxide material.” Defendants’ proposal reflects the plain and ordinary meaning of the “wherein”
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`clause: the “insulating film” is formed from depositing the “oxide material” as part of the claimed
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`reactive sputtering process (as opposed to any undescribed or non-enabled deposition process)—
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`consistent with Demaray’s own (prior) view of the claim. Ex. D (Intel) / Ex. E (Samsung).
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`First, the claim language itself confirms the “insulating film” comprises the “oxide
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`material.” “Wherein”/“whereby” clauses state the result of the method, and the deposition of the
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`“oxide material” is part of the “wherein” clause. Hoffer, 405 F.3d at 1329. Further, the preamble
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`recites “[a] method of depositing an insulating film on a substrate,” and the body of the claim in
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`turn recites that “an oxide material is deposited on the substrate.” Ex. B at cl. 2. The deposition
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`of that “oxide material” is the only deposition on a substrate recited in the body of the claim and
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`must be what forms the “insulating film.” See id. at 4:51-54 (describing “insulating oxide layers”).
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`Moreover, claim 2 requires that the insulating film be formed by “reactive sputtering.” Id. at cl.
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`2. Oxide materials can be deposited via physical vapor deposition—as in the patent—only by
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`reactive sputtering. Id. at 5:43-45, 9:6-8; Dkt. 46-1 at ¶ 39. Dependent claims provide further
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`support. Ex. B at cls. 3, 8, 9 (each requiring oxygen). For example, claim 9 recites “[t]he method
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`of claim 2, wherein the Oxygen flow is adjusted to adjust the index of refraction of the film,”
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`where reference to “the Oxygen flow” means oxygen is necessarily present in claim 2 for forming
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`the “insulating film” by reactive sputtering (i.e., the target material reacting with oxygen to deposit
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`an “oxide material”). Ex. B at cl. 9; id. at 5:43-45, 9:6-8; Dkt. 46-1 at ¶ 39. Claim 2 also requires
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`the “insulating film” be formed by reactive sputtering in a “mode between a metallic mode and a
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`poison mode,” which is defined in the patent in terms of oxide deposition—“[t]he poison mode is
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`Case 6:20-cv-00636-ADA Document 145 Filed 12/10/21 Page 6 of 9
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`defined as the ratio where the oxide is etched from the surface of target 12 as fast as the oxide
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`layer is formed” and the metallic mode is characterized in part “by incomplete oxidation of film
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`deposited on substrate 16 and therefore higher index films.” The applicant confirmed during
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`prosecution that these definitional statements provide written description support for the claimed
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`“mode between a metallic mode and a poison mode.” Ex. C at 23-25. It is clear with the definitions
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`substituted in the claim that the “insulating film” comprises the “oxide material,” as shown below:
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`Patentee’s Definitional Statements Inserted
`“wherein an oxide material is deposited on the
`substrate, and the insulating film is formed by reactive
`sputtering in a mode between [a mode characterized
`in part by incomplete oxidation of film deposited
`on the substrate] and [a mode defined as the ratio
`where the oxide is etched from the surface of the
`target as fast as the oxide layer is formed].”
`Defendants’ proposed construction concisely captures this concept.
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`Defendants’ Proposal
`“wherein an oxide material is
`deposited on the substrate, and the
`insulating film comprising the oxide
`material is formed by reactive
`sputtering in a mode between a
`metallic mode and a poison mode”
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`Second, consistent with the claim language, the specification repeatedly and consistently
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`characterizes the deposition of “oxide material” as using the claimed pulsed DC reactive sputtering
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`steps. E.g., GPNE Corp. v. Apple Inc., 830 F.3d 1365, 1371 (Fed. Cir. 2016) (construing claim
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`term in accordance with repeated and consistent characterization). The ’657 patent is titled
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`“Biased Pulse DC Reactive Sputtering of Oxide Films,” Ex. B at Title, and defines “the present
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`invention” as related to “deposition of oxide and oxynitride films by pulsed DC reactive
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`sputtering,” id. at 1:10-13. The patent criticizes prior art methods of depositing oxides, such as
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`“chemical vapor deposition” and “RF sputtering,” as leading to numerous problems. Id. at 2:3-38;
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`see also id. at 4:51-57; 5:66-6:6. To remedy this problem, the patent proposes “new methods of
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`depositing oxide and oxynitride films and for forming planar optical devices.” Id. at 2:39-41.
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`Those “new methods” comprise the steps of providing bipolar pulsed DC power to the target
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`through a narrow-band rejection filter and RF bias to the substrate to produce “[h]igh quality oxide
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`Case 6:20-cv-00636-ADA Document 145 Filed 12/10/21 Page 7 of 9
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`films.” E.g., id. at Abstract, 2:45-54, 5:12-6:6, 16:50-67, 17:24-60, 18:1-17, 20:1-8, 21:15-24,
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`22:5-58, Fig. 4. The patentee’s repeated use of the definitional term “the present invention” and
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`distinguishing the prior art methods of depositing oxide materials demonstrates that claim 2 recites
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`a method for depositing an oxide-based film. See, e.g., Poly-America, L.P. v. API Indus., Inc., 839
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`F.3d 1131, 1136-37 (Fed. Cir. 2016); Edward Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1329
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`(Fed. Cir. 2009).
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`Third, the file history further demonstrates that the “insulating film” comprises the “oxide
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`material.” The applicant added claim 85, eventually issuing as claim 2. Ex. C at 7, 52; Ex. F.
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`After a written description rejection, the applicant changed “transition mode” to “a mode between
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`a metallic mode and a poison mode” and cited to the previously mentioned definitions in terms of
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`oxide deposition as written description support. Ex. C at 15-16, 22-25; Ex. F. In addition, the
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`claims were then amended to overcome another prior art rejection. Ex. C at 31-32, 40, 43-45; Ex.
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`F. The applicant narrowed the preamble to recite depositing “an insulating film” (instead of any
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`“film” which could include the prior art conductive films) pursuant to the claimed steps, and recited
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`“oxide material” (instead of any “material”). Ex. C at 40, 43-44; Ex. F. In doing so, the applicant
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`connected “oxide material” to the “insulating film”, making clear that the “oxide material” is
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`deposited as a result of the claimed “depositing” method to form an “insulating film.” Ex. C at
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`40; Ex. F. Moreover, the applicant left the “insulating film” as formed by reactive sputtering in
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`the “mode between a metallic mode and a poison mode,” which requires deposition of oxide
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`material per the patentee’s lexicography. Id. Finally, the applicant also moved the word “and”
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`from before the “wherein” step to before the last “providing” step—making clear that the fourth
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`“providing” step is the last step of the claimed method and the “wherein” clause, which includes
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`depositing the “oxide” material, describes the result of the method, not a separate step. Id.
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`Case 6:20-cv-00636-ADA Document 145 Filed 12/10/21 Page 8 of 9
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`Dated: December 10, 2021
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`By: /s/ Yar R. Chaikovsky
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`Brian C. Nash
`Texas Bar No. 24051103
`Brian.nash@pillsburylaw.com
`PILLSBURY WINTHROP SHAW
`PITTMAN LLP
`401 Congress Ave., Suite 1700
`Austin, Texas 78701-3797
`Phone: (512) 580-9629
`Fax: (512) 580-9601
`
`Yar R. Chaikovsky
`yarchaikovsky@paulhastings.com
`Philip Ou
`philipou@paulhastings.com
`Allan M. Soobert
`allansoobert@paulhastings.com
`Joseph J. Rumpler, II
`josephrumpler@paulhastings.com
`PAUL HASTINGS LLP
`1117 S. California Avenue
`Palo Alto, California 94304-1106
`Telephone: 1(650) 320-1800
`Facsimile:
`1(650) 320-1900
`
`John M. Desmarais (pro hac vice)
`jdesmarais@desmaraisllp.com
`Yung-Hoon Ha (pro hac vice)
`yha@desmaraisllp.com
`Cosmin Maier (pro hac vice)
`cmaier@desmaraisllp.com
`Christian Dorman (pro hac vice)
`cdorman@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue, 26th Floor
`New York, NY 10169
`Tel: (212) 351-3400
`Fax: (212) 351-3401
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`Attorney for Samsung Defendants
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`By: /s/ Yar R. Chaikovsky
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`J. Stephen Ravel
`Texas State Bar No. 16584975
`steve.ravel@kellyhart.com
`KELLY HART & HALLMAN LLP
`303 Colorado, Suite 2000
`Austin, Texas 78701
`Tel: (512) 495-6429
`
`Yar R. Chaikovsky
`yarchaikovsky@paulhastings.com
`Philip Ou
`philipou@paulhastings.com
`Allan M. Soobert
`allansoobert@paulhastings.com
`Joseph J. Rumpler, II
`josephrumpler@paulhastings.com
`PAUL HASTINGS LLP
`1117 S. California Avenue
`Palo Alto, California 94304-1106
`Telephone: 1(650) 320-1800
`Facsimile:
`1(650) 320-1900
`
`Sonal N. Mehta (pro hac vice)
`Sonal.Mehta@wilmerhale.com
`WILMER CUTLER PICKERING HALE AND
`DORR LLP
`2600 El Camino Real, Suite 400
`Palo Alto, CA 94306
`Tel.: (650) 858-6000
`Fax: (650) 858-6100
`
`Claire M. Specht (pro hac vice)
`Claire.Specht@wilmerhale.com
`WILMER CUTLER PICKERING HALE AND
`DORR LLP
`60 State Street
`Boston, MA 02109
`Tel.: (617) 526-6000
`Fax: (617) 526-5000
`
`Attorneys for Intel Corporation
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`Case 6:20-cv-00636-ADA Document 145 Filed 12/10/21 Page 9 of 9
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`CERTIFICATE OF SERVICE
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`I hereby certify that on December 10, 2021, I electronically filed the foregoing document with
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`the Clerk of the Court using the CM/ECF system which will send notification of such filing via
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`electronic mail to all counsel of record.
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`/s/ Yar R. Chaikovsky
`Yar R. Chaikovsky
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