United States District Court, W.D. Pennsylvania
are patent infringement cases in which Plaintiff Lambeth
Magnetic Structures, LLC, alleges, in two separate civil
action numbers, 16-538 and 16-541 respectively, that Seagate
Technology (US) Holdings and Seagate Technology, LLC
(collectively, the “Seagate Defendants” or
“Seagate”); and Western Digital Corporation,
Western Digital Technologies, Inc., Western Digital
(Fremont), LLC, Western Digital (Thailand) Company Limited,
Western Digital (Malaysia) SDN.BHD and HGST, Inc.
(collectively the “Western Digital Defendants” or
“Western Digital”) infringe Plaintiff's
patent, United States Patent No. 7, 128, 988 (the
action, the parties filed a Joint Disputed Claim Terms Chart
identifying the six terms requiring construction. Chart
Setting Forth Each Disputed Term (Civil Action No. 16-538,
Doc. 46-1); Am. Joint Disputed Claim Terms Chart (Civil
Action No. 16-541, Doc. 60-1).
March 20, 2017, the parties presented a technology tutorial
to the Court. The following day, March 21, 2017, the Court
held a Markman claim construction
hearing. See Claim Construction
Hearing Transcript (Civil Action No. 16-538, Doc. 73; Civil
Action No. 16-541, Doc. 78) [hereinafter “Hearing
Transcript”]. The matters were consolidated for
purposes of the claim construction hearing.
general principles of claim construction are without dispute.
The proper construction of a patent's claims is a
question of law. Teva Pharm. USA, Inc. v. Sandoz,
Inc., 135 S.Ct. 831, 837 (2015) (citing Markman v.
Westview Instruments, Inc., 517 U.S. 370, 388-91
(1996)). “It is a ‘bedrock principle' of
patent law that ‘the claims of a patent define the
invention to which the patentee is entitled the right to
exclude.'” Phillips v. AWH Corp., 415 F.3d
1303, 1312 (Fed. Cir. 2005) (en banc) (quoting
Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,
Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). The words
of a claim “are generally given their ordinary and
customary meaning, ” which “is the meaning that
the term would have to a person of ordinary skill in the art
in question at the time of the invention, i.e., as of the
effective filing date of the patent application.”
Id. at 1312-13 (citing Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
1996)); Innova/Pure Water, 381 F.3d at 1116). In
arriving at this meaning, a court is to look first and
foremost to the “intrinsic evidence, ” which
consists of the patent's claim language, the
specification and written description, and the prosecution
history, to determine the meaning of disputed claim terms.
Phillips, 415 F.3d at 1311-17; Medrad, Inc. v.
MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005).
The specification is the single best guide to the meaning of
a disputed term, and is
415 F.3d at 1315 (citing Vitronics, 90 F.3d at
language guides a court's construction of claim terms.
Phillips, 415 F.3d at 1314. Yet, the “claims
cannot enlarge what is patented beyond what the inventor has
described as the invention.” Abbott Laboratories v.
Sandoz, Inc., 566 F.3d 1282, 1288 (Fed. Cir. 2009)
(citing Biogen, Inc. v. Berlex Labs., Inc., 318 F.3d 1132,
1140 (Fed. Cir. 2003)). The context in which a term is used
not only in the asserted claims, but also in any claims that
are not being asserted in a particular lawsuit, can be highly
instructive because “terms are normally used
consistently throughout the patent.” Phillips,
415 F.3d at 1314. “The construction that stays true to
the claim language and most naturally aligns with the
patent's description of the invention will be, in the
end, the correct construction.” Renishaw PLC v.
Marposs Societa per Azioni, 158 F.3d 1243, 1250 (Fed.
are always to be read in view of the specification, of which
they are a part. Markman v. Westview Instruments,
Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc),
aff'd, 517 U.S. 370 (1996). “The person of
ordinary skill in the art is deemed to read the claim term
not only in the context of the particular claim in which the
disputed term appears, but in the context of the entire
patent, including the specification.”
Phillips, 415 F.3d at 1313. Moreover, “where
the ordinary and accustomed meaning of the words used in the
claims lack sufficient clarity to permit the scope of the
claim to be ascertained from the words alone[, ]” the
specification can provide clarity. Teleflex. Inc. v.
Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir.
2002). In the specification, a patentee may define his own
terms, or give a claim term a different meaning than it
otherwise would possess. Id. at 1316. Although a
court generally presumes that terms possess their ordinary
meaning, this presumption can be overcome when the patentee
acts as his own lexicographer. Irdeto Access, Inc. v.
EchoStar Satellite Corp., 383 F.3d 1295, 1301 (Fed. Cir.
the specification may aid the court in interpreting the
meaning of disputed language in the claims, particular
embodiments and examples appearing in the specification will
not generally be read into the claims.” Constant v.
Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed.
Cir. 1988); see Phillips, 415 F.3d at 1323.
Nonetheless, “[a] claim interpretation that excludes a
preferred embodiment from the scope of the claim ‘is
rarely, if ever, correct.'” Globetrotter
Software, Inc. v. Elam Computer Grp. Inc., 362 F.3d
1367, 1381 (Fed. Cir. 2004) (quoting Vitronics
Corp., 90 F.3d at 1583). Even if a patent describes only
a single embodiment, the claims of the patent must not be
construed as being limited to that embodiment unless the
patentee has demonstrated a clear intention to limit the
claim scope using “words or expressions of manifest
exclusion or restriction.” Phillips, 415 F.3d
at 1323; Liebel-Flarsheim Co. v. Medrad, Inc., 358
F.3d 898, 906 (Fed. Cir. 2004) (citing decisions);
Teleflex, 299 F.3d at 1327. The purpose of the
specification is “to teach and enable those of skill in
the art to make and use the invention” and sometimes,
the best way to do that is to provide an example.
Teleflex, 299 F.3d at 1327.
the Court of Appeals for the Federal Circuit acknowledges
that “the distinction between using the specification
to interpret the meaning of a claim and importing limitations
from the specification into the claim can be a difficult one
to apply in practice, ” it instructs courts to maintain
their focus on how a person of ordinary skill in the art
would understand the claim terms. Id. In order to do
so, the “claims of the patent must be read in light of
the specification's consistent emphasis on [the]
fundamental features of the invention.” Praxair,
Inc. v. ATMI, Inc., 543 F.3d 1306, 1324 (Fed. Cir.
prosecution history is another tool that supplies the proper
context for claim construction. Home Diagnostics Inc. v.
LifeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004).
Because the file history “represents an ongoing
negotiation between the [United States Patent and Trademark
Office (“PTO”)] and the applicant, rather than
the final product of that negotiation, it often lacks the
clarity of the specification and thus is less useful in claim
construction proceedings.” Phillips, 415 F.3d
at 1317. Nevertheless, the prosecution history is intrinsic
evidence that is relevant to the determination of how the
inventor understood the invention and whether the inventor
limited the invention during prosecution by narrowing the
scope of the claims. Id. Where an applicant limits
claim scope during prosecution through a “clear
disavowal of claim coverage, such as an amendment to overcome
a rejection, ” the well-established doctrine of
prosecution disclaimer “preclud[es] patentees from
recapturing through claim interpretation specific meanings
disclaimed during prosecution.” Amgen Inc. v.
Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1327 (Fed.
Cir. 2003) (citing York Prods., Inc. v. Central Tractor
Farm & Fam. Ctr., 99 F.3d 1568, 1575 (Fed. Cir.
1996)); see Omega Eng'g Inc. v. Raytek Corp.,
334 F.3d 1314, 1323 (Fed. Cir. 2003). By distinguishing the
claimed invention over the prior art, an applicant is
indicating what the claims do not cover. Spectrum
Int'l v. Sterilite Corp., 164 F.3d 1372, 1378-79
(Fed. Cir. 1988) (quotation omitted). In order for the
doctrine to apply, however, the prosecution history must show
that the patentee clearly, unambiguously and unmistakably
disclaimed or disavowed the proposed interpretation during
prosecution in order to obtain claim allowance. Schindler
Elevator Corp. v. Otis Elevator Co., 593 F.3d 1275, 1285
(Fed. Cir. 2010); Cordis Corp. v. Medtronic AVE,
Inc., 339 F.3d 1352, 1358 (Fed. Cir. 2003);
Middleton Inc. v. 3M Co., 311 F.3d 1384, 1388 (Fed.
rejected any claim construction approach that sacrificed the
intrinsic record in favor of extrinsic evidence, such as
dictionary definitions or expert testimony.
Phillips, 415 F.3d at 1319-24. Still, though
“less significant than the intrinsic record in
determining the legally operative meaning of claim language,
” a court may rely on extrinsic evidence to “shed
useful light on the relevant art.” Id. at 1317
(quotation omitted). Technical dictionaries and treatises may
help the court understand the underlying technology and the
manner in which one skilled in the art might use claim terms,
but such sources may also provide overly broad definitions or
may not be indicative of how terms are used in the patent.
Id. at 1318. Similarly, expert testimony may aid the
court in determining the particular meaning of a term in the
pertinent field, but “conclusory, unsupported
assertions by experts as to the definition of a claim term
are not useful.” Id. Generally, extrinsic
evidence is “less reliable than the patent and its
prosecution history in determining how to read claim
proceeding to resolving the disagreements with respect to the
disputed claim terms, the Court notes that the parties have
agreed to the construction of two claim terms. They are as
Undisputed Claim Term
Agreed-Upon Proposed Construction
Either a body centered cubic or a body centered cubic
derivative crystal structure.
Either a face centered cubic or a face centered cubic
derivative crystal structure.
Court, agreeing with the parties' proposed constructions,
adopts the agreed-upon constructions without change. The
Court finds that these constructions are supported by the
specification. E.g., ‘988 patent at col. 4,
lns. 44-45; id. at col. 5, lns.12-13.
parties have asked the Court to construe six disputed claim
terms. These terms are:
â[Layer] providing a (111) textured hexagonal atomic
âSymmetry broken structureâ
âUniaxial symmetry broken structureâ
Court will explain in greater detail below, the Court will
adopt the following constructions for the disputed terms:
An atomic pattern upon which material is grown and
which is used to direct the growth of an overlying
“[Layer] providing a (111) textured hexagonal
Layer that is predominately (111) hexagonal and
that provides an atomic template
Having an anisotropy energy density function with
only a single maximum and a single minimum as the
magnetization angle is rotated by 180 degrees from
a physical axis
“Symmetry broken structure”
A structure consisting of unequal volumes or
unequal amounts of the bcc-d variants of a six
“Uniaxial symmetry broken structure”
A structure that is uniaxial as a result of the
structure being symmetry broken
One of a set of possible crystal orientations
Two or more of a set of possible crystal
Court finds that the appropriate construction of
“atomic template” is “an atomic pattern
upon which material is grown and which is used ...