Case 6:20-cv-00636-ADA Document 150 Filed 12/17/21 Page 1 of 10
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`DEMARAY LLC,
`Plaintiff,
`v.
`INTEL CORPORATION,
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`Defendant.
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`DEMARAY LLC,
`Plaintiff,
`v.
`SAMSUNG ELECTRONICS CO., LTD (A
`KOREAN COMPANY), 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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`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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`PLAINTIFF DEMARAY LLC’S
`RESPONSIVE CLAIM CONSTRUCTION BRIEF
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`11045803
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`Case 6:20-cv-00636-ADA Document 150 Filed 12/17/21 Page 2 of 10
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`TABLE OF CONTENTS
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`Page
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`“A method of depositing an insulating film on a substrate, comprising:”
`(’657 patent, cl. 2 preamble) .................................................................................................. 1
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`“Insulating film” (’657 patent, cl. 2) ..................................................................................... 2
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`1.
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`2.
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`The Term Should Be Given The Full Scope Of Its Plain Meaning ...................... 2
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`Defendants Seek To Add Narrowing Limitations Not In The Claims .................. 4
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`I.
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`II.
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`Case 6:20-cv-00636-ADA Document 150 Filed 12/17/21 Page 3 of 10
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Catalina Mktg. Int'l, Inc. v. Coolsavings.com Inc.,
`289 F.3d 801 (Fed. Cir. 2002)....................................................................................................1
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`Embrex, Inc. v. Service Eng'g Corp.,
`216 F.3d 1343 (Fed. Cir. 2000)..................................................................................................1
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`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)..................................................................................................4
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`ScriptPro LLC v. Innovation Assocs., Inc.,
`833 F.3d 1336 (Fed. Cir. 2016)..................................................................................................5
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`Summit 6, LLC v. Samsung Elecs. Co.,
`802 F.3d 1283 (Fed. Cir. 2015)..................................................................................................2
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`---------------------------
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` *
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` Unless otherwise noted, internal citations and subsequent history are omitted, and emphasis is
`added.
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`U.S. Patent Nos. 7,381,657 is referred to as the “’657 patent.”
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`Case 6:20-cv-00636-ADA Document 150 Filed 12/17/21 Page 4 of 10
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`Defendants are trying to manufacture non-infringement arguments by rewriting claim 2 of
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`the ’657 patent—directly contrary to settled law that claim interpretation is “a way of elaborating
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`the normally terse claim language in order to understand and explain, but not to change, the scope
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`of the claims.” Embrex, Inc. v. Service Eng'g Corp., 216 F.3d 1343, 1347 (Fed. Cir. 2000).
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`I.
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`“A method of depositing an insulating film on a substrate, comprising:” (’657 patent,
`cl. 2 preamble)
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`Defendants’ Proposal
`Demaray’s Proposal
`Preamble is limiting (“depositing an
`Preamble is not limiting, except for “insulating
`insulating film on a substrate”)
`film on a substrate”
`Demaray’s construction, that the “insulating film on a substrate” portion of the preamble is
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`limiting, tracks the Court’s August 17, 2021 construction of the preamble to Claim 1 of the ’657
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`patent. Claim 1’s preamble reads “[a] method of depositing a film on an insulating substrate,
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`comprising,” and the Court construed it as the “[p]reamble is not limiting, except for ‘insulating
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`substrate.’” Intel Dkt. 106, 2; Samsung Dkt. 121, 2. The preamble to Claim 2 differs from Claim 1
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`only in that it recites an “insulating film” (as opposed to “film”) and a “substrate” (as opposed to
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`an “insulating substrate”). Demaray’s construction of this closely similar language accordingly
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`follows the Court’s prior ruling, which, as described below, was and remains consistent with the
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`intrinsic record. Defendants offer no valid basis to deviate from the Court’s ruling here.
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`Defendants argue that the rest of the preamble language, including the term “depositing
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`an,” should also be limiting. But exactly as in Claim 1, this same additional language (1) merely
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`states “a purpose or intended use for the invention,” (2) the body of the claim recites a complete
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`invention, and (3) the added language does not provide an antecedent basis for later claim
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`limitations. It is black letter law that such language, just like the corresponding wording from
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`Claim 1, is not limiting. Catalina Mktg. Int'l, Inc. v. Coolsavings.com Inc., 289 F.3d 801, 808 (Fed.
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`Case 6:20-cv-00636-ADA Document 150 Filed 12/17/21 Page 5 of 10
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`Cir. 2002) (“preamble is not limiting where a patentee defines a structurally complete invention in
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`the claim body and uses the preamble only to state a purpose or intended use for the invention.”).
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`Defendants’ attempt to tie the additional preamble language to the deposition of the “oxide
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`material” in the claim body is not based on anything in the intrinsic record—it is attorney argument
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`crafted from their non-infringement positions. See Op. Br. 1 (added language allegedly needed to
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`“confirm[] that the ‘oxide material’ is part of the ‘insulating film’”). The preamble makes no
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`mention of an “oxide material,” there are many possible insulating films other than oxide materials,
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`and the process for depositing the insulating film is separately addressed from the oxide material in
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`the body of the claim: “the insulating film is formed by….” ’657 patent, 23:26-27.
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`II.
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`“Insulating film” (’657 patent, cl. 2)
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`Demaray’s Proposal
`Plain and ordinary meaning
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`Defendants’ Proposal
`Insulating film comprising the oxide
`material
`Defendants argue that the claimed “insulating film” should be narrowed by adding the
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`words “comprising the oxide material” to the claim. That is, of course, not what the claims says,
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`and altering the meaning of the claim by adding narrowing words is not proper interpretation.
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`1.
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`The Term Should Be Given The Full Scope Of Its Plain Meaning
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`“Insulating film” should be given its plain meaning, which encompasses insulating films
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`like nitrides and other materials. Indeed, Defendants themselves acknowledge that the term needs
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`no construction—their proposed construction repeats verbatim the language supposedly being
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`interpreted, underscoring that there is no need for interpretation in the first instance. And in four
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`recent inter partes review petitions filed by Defendants/Applied, they have not sought to construe
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`this term. Intel Dkt. 46-3 ¶ 12; Samsung Dkt. 48-3 ¶ 12. “Because the plain and ordinary meaning
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`of the disputed claim language is clear,” there is no need to rewrite it. See Summit 6, LLC v.
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`Samsung Elecs. Co., 802 F.3d 1283, 1291 (Fed. Cir. 2015).
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`Case 6:20-cv-00636-ADA Document 150 Filed 12/17/21 Page 6 of 10
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`Consistent with the claim language, the specification makes clear that an “insulating film”
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`can be deposited separate and apart from an oxide material. The patent teaches that various
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`“[o]ptically useful materials” can be deposited using the claimed invention beyond oxide materials,
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`including “fluorides, sulfides, nitrides, phosphates, sulfates, and carbonates” (’657 patent, 7:47-50),
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`including when the wafer is already “coated with a layer of silicon oxide” (id., 7:62-65). These can
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`be, and typically are, separate layers, even in the preferred embodiments (id., 18:10–12, 18:55-57),
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`not one and the same as Defendants attempt to rewrite the claims to require.
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`The fact that the full scope of the term “insulating films” includes non-oxides is further
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`underscored by the dependent claims, e.g., Claim 4, which recites that the process gas can be “N2
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`[or] NH3”—neither of which would result in an oxide. Defendants admit that other dependent
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`claims, such as Claims 8-9, cover embodiments wherein the process gas for the thin film includes
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`oxygen (which can result in an oxide). Op. Br. 3 (Claim 9 results in oxide insulating films).
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`The prosecution history is in accord. In the amendments leading to Claim 2, the patentee
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`intentionally changed “an oxide” to “the insulating film,” emphasizing that a class of potential
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`materials rather than only a single type of film was permissible:
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`…
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`Ou Decl. Ex. C at 41. In prior amendments, the patentee similarly showed it knew how to claim an
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`oxide film being deposited with a particular process, i.e., “reactive sputtering”:
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`Case 6:20-cv-00636-ADA Document 150 Filed 12/17/21 Page 7 of 10
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`…
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`Id., 22. The patentee did not do so in Claim 2, belying Defendants’ argument that the broader
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`language should be revised as limited to the reactive sputtering process of the insulating film.
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`2.
`Defendants Seek To Add Narrowing Limitations Not In The Claims
`Defendants also propose importing a limitation into Claim 2 requiring the insulating film to
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`also “compris[e] the oxide material.” Op. Br. 2. But, that (1) is not what the claim language says;
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`(2) the patentee knew how to claim such embodiments using different language than is in the
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`claims; and (3) Defendants fail to identify any unambiguous disclaimer of other insulating films or
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`lexicography through which the applicants defined “the insulating film” as limited to oxides. It is
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`black letter law that in this type of situation courts must “avoid importing limitations from the
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`specification into the claims.” Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005).
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`To the contrary, the prosecution history shows that the patentee knew how to claim
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`depositing a thin film wherein “the material” deposited “is an oxide material”:
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`…
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`Ou Decl. Ex. C at 9. And again here, the patentee did not use such language in Claim 2.
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`Defendants point to references to “the present invention” in the specification with regard to
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`oxide embodiments and testing of oxide films. Op. Br. 4-5. Both the specification and the claims
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`make clear, however, that the tested thin-films comprising oxides are only examples, and further
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`states that these examples are “exemplary only and are not intended to be limiting.” ’657 patent,
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`Case 6:20-cv-00636-ADA Document 150 Filed 12/17/21 Page 8 of 10
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`22:59–67. Moreover, the specification discloses various “[o]ptically useful materials” can be
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`deposited using the claimed invention beyond oxide materials, including “fluorides, sulfides,
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`nitrides, phosphates, sulfates, and carbonates.” Id., 7:47-50; see also 7:47–52 (using other reactive
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`gases giving rise to films other than oxides: “Other gasses such as N2, NH3, CO, NO, CO2, halide
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`containing gasses other gas-phase reactants can also be utilized.”). “[A] specification’s focus on
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`one particular embodiment or purpose cannot limit the described invention where that
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`specification expressly contemplates other embodiments or purposes.” ScriptPro LLC v.
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`Innovation Assocs., Inc., 833 F.3d 1336, 1341 (Fed. Cir. 2016). Also, as discussed above, limiting
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`the insulating layer to oxides/non-oxides is the subject of dependent claims, like Claims 4 and 9.
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`Defendants argue that, in the patent, oxide material can deposited “only by reactive
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`sputtering.” Op. Br. 3. But the patent discloses that “[t]ypically, substrate 16 can be a silicon wafer
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`or a silicon wafer coated with a layer of silicon oxide formed by a chemical vapor deposition
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`process or by a thermal oxidation process.” ’657 patent, 7:62-65. This layer of silicon oxide can be
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`deposited on the substrate using, for example, either of those disclosed approaches, instead of the
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`reactive sputtering process for the insulating film before or after the claimed insulating film.
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`Defendants also assert that Demaray has changed its infringement positions for Claim 2.
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`Op. Br. 1-2 (“Demaray’s new theory…is contrary to its prior interpretation”). Defendants made,
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`and the Court rejected, this same argument at the September 27 hearing addressing Defendants’
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`motion to strike Demaray’s assertions regarding Claim 2. 9/27/21 Tr. at 18:6-19:2 (arguing change
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`in infringement read and late disclosure for Claim 2), 26:15-27:23 (Demaray responding: “they
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`have to provide the details regarding the reactors…before an infringement theory needs to be
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`articulated”); 30:20-25 (Court: “I am going to deny that.”). As explained the hearing, Demaray did
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`not disclaim its present infringement read; it merely noted its need for discovery. Id., 27:7-23.
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`Case 6:20-cv-00636-ADA Document 150 Filed 12/17/21 Page 9 of 10
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`Dated: December 17, 2021
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`/s/ C. Maclain Wells
` By: C. Maclain Wells
`
`Richard D. Milvenan
`State Bar No. 14171800
`Travis C. Barton
`State Bar No. 00790276
`MCGINNIS LOCHRIDGE LLP
`600 Congress Ave., Suite 2100
`Austin, Texas 78701
`Telephone: (512) 495-6005
`Facsimile: (512) 505-6305
`rmilvenan@mcginnislaw.com
`tcbarton@mcginnislaw.com
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`Morgan Chu (pro hac vice)
`Benjamin W. Hattenbach (pro hac vice)
`Annita Zhong (pro hac vice)
`C. Maclain Wells (pro hac vice)
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, California 90067
`Telephone: (310) 277-1010
`Facsimile: (310) 203-7199
`mchu@irell.com
`bhattenbach@irell.com
`azhong@irell.com
`mwells@irell.com
`
`Darish Huynh (pro hac vice)
`IRELL & MANELLA LLP
`840 Newport Center Drive, Suite 400
`Newport Beach, CA 92660
`Telephone: (949) 760-0991
`Facsimile: (949) 760-5200
`dhuynh@irell.com
`Attorneys for Demaray LLC
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`Case 6:20-cv-00636-ADA Document 150 Filed 12/17/21 Page 10 of 10
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that on December 17, 2021 all counsel of record who are
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`deemed to have consented to electronic service are being served with a copy of this document via
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`the Court’s CM/ECF system.
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`By: /s/ Darish Huynh
`Darish Huynh
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