Even if the patent specification discloses a single embodiment, the features or functions of that embodiment should not be read into the claims by a court’s claim construction because the purpose of the specification is to teach and enable those of skill in the art to make and use the invention and to provide a best mode for doing so. Also, to disavow all alternative structures or features, there must be a clear and unmistakable disavowel in the patent specification or the prosecution history. Continental Circuits LLC v. Intel Corp., Case No. 2018-1076 (Fed. Cir. Feb. 8, 2019) (Copy of Opinion available here).
Continental Circuits LLC sued Intel for patent infringement which are directed to a “multilayer electrical device . . . having a tooth structure” and methods for making the same. After the lower court’s claim construction, the parties stipulated to a judgment of non-infringement. Continental appealed.
According to the patents, multilayer electric devices “suffer from delamination, blistering, and other reliability problems,” especially when “subjected to thermal stress.” Id. col. 1 ll. 30–32. The inventions of the patents purport to solve this problem by “forming a unique surface structure . . . comprised of teeth that are preferably angled or hooked like fangs or canine teeth to enable one layer to mechanically grip a second layer.” Slowed and/or repeated etching will form teeth instead of a uniform etch.
All of the asserted claims include claim limitations regarding the “surface,” “removal,” or “etching” of “a dielectric material” or “epoxy,” which the district court construed. The district court construed these Category 1 Terms to require that the “surface,” “removal,” or “etching” of the dielectric material be “produced by a repeated desmear process.” An exemplary claim follows.
Claim 100. An electrical device including: [a] a conductive layer built up so as to fill undercuttings with respect to a surface of a dielectric material so as to form teeth in cavities, a plurality of the undercuttings being obtuse to the surface, wherein the conductive layer is a portion of circuitry of an electrical device, and a plurality of the teeth are within the range of 1 tenth of a mil deep to 1.75 tenths of a mil deep, and [b] wherein at least one of the cavities includes an upgrade slope with respect to the surface of the dielectric material, and one of the teeth engages a portion of the dielectric material at the slope.
The district court construed the Category 1 Terms to require that the “surface,” “removal,” or “etching” of the dielectric material be “produced by a repeated desmear process.” The district court concluded that Intel had met an exacting standard which is required to read a “repeated desmear process” limitation into the claims. Specifically, the district court found that the specification not only “repeatedly distinguishe[d] the process covered by the patent from the prior art and its use of a ‘single desmear process,’” but also characterized “the present invention” as using a repeated desmear process. Additionally, the district court found that the prosecution history corroborated its construction.
Continental argues that the district court erred in construing the Category 1 Terms to require that the dielectric material be “produced by a repeated desmear process.”
The Appeals Court found that an expert declaration filed during the prosecution of the patent did not include a clear and unmistakable disavowal for prosecution disclaimer to attach. The expert declaration referred to a two-etch process and the sole embodiment in the patent specification referred to the “repeated desmear process.” The Appeals Court stated: “‘To disavow claim scope, the specification must contain ‘expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.’” Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1306 (Fed. Cir. 2011) (quoting Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009)).” opin. P. 12.
Intel responds patentees repeatedly disparaged and disavowed the single-pass desmear process. The Court agreed with Continental that the district court erred in limiting the claims to require a repeated desmear process.
“To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (quoting CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)).
The Court acknowledged the difficulty in drawing the “fine line between construing the claims in light of the specification and improperly importing a limitation from the specification into the claims.” To avoid improperly importing limitations into the claims, “it is important to keep in mind that the purposes of the specification are to teach and enable those of skill in the art to make and use the invention and to provide a best mode for doing so.” Phillips, 415 F.3d at 1323.
In this case, the specification used phrases like “one technique,” and the double desmear process is “contrary to all known teachings in the prior art”, “the present invention can be carried out”, “for example, .. Sub-steps in the desmear process are repeated as a way of forming the teeth, “in stark contrast with … known prior art”.
Overall, these statements simply describe how to make the claimed invention using the preferred technique, the Probelec XB 7081 repeated desmear process, in a “new” way that is different from the prior art process. The Appeals Court found that these are not statements clearly limiting the claimed “electrical device” to require a repeated desmear process.
Importantly, the Court also “expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment.” Id.; see also Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (“Even when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using ‘words or expressions of manifest exclusion or restriction.’” (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002))).
The Court has held that “[m]ere criticism of a particular embodiment . . . is not sufficient to rise to the level of clear disavowal.” Thorner, 669 F.3d at 1366.
In Continental’s patent, certain portions of the specification, such as the summary, the invention is described with respect to its “unique surface structure,” without any requirement that the invention must encompass the “repeated desmear process.” In fact, “desmear” does not appear in the summary of the invention section at all. In light of this, it is difficult to say that the present invention “as a whole,” Verizon, 503 F.3d at 1308, necessarily includes the “repeated desmear process.”
The Court agreed with Continental that the district court erred in limiting the claims to require a repeated desmear process.