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October 4, 2005.

MOTOROLA, INC. and FREESCALE SEMICONDUCTOR, INC., Defendants, Counterclaim Plaintiffs, and Third-Party Plaintiffs, v. INFORMATION TECHNOLOGY INNOVATION, LLC, ROBERT W. ATHERTON, and WILLIS E. HIGGINS, Counterclaim Defendants and Counterclaim Plaintiffs, and BROOKS AUTOMATION, INC., Third-Party Defendant, Counterclaim Plaintiff, and Counterclaim Defendant.

The opinion of the court was delivered by: MATTHEW KENNELLY, District Judge


Information Technology Innovation, LLC ("ITI") has sued Motorola, Inc., Brooks Automation, Inc., and Freescale Semiconductor, Inc. for infringement of U.S. Patent No. 4,796,194, which relates to processes for modeling manufacturing plants. This case is before the Court for construction of the disputed claim language in the patent-in-suit.


  The asserted claims of the `194 patent, entitled "Real World Modeling and Control Process," involve a modeling and control process for distributed factories having fabrication sequences. A distributed manufacturing plant is capable of manufacturing a variety of products through ordered sequences of process steps. This type of factory is commonly used to manufacture modern electronics products, including semiconductor components. The archetype of a distributed factory is a wafer-fabrication plant that has the ability simultaneously to manufacture products by more than 1000 processes, averaging over 100 steps each.

  The approach to modeling and manufacturing control in the prior art was to start with a theoretical mathematical treatment of the problem. The `194 patent, in contrast, starts with a definition of how the factory actually operates, and develops a simulation of the behavior of the factory that can then be compared to the factory's actual operations to refine the model.

  ITI asserts claims 1, 18, and 34 against each defendant. The defendants filed a joint brief containing their proposed claim construction. In addition to the briefs submitted, the parties presented oral argument and submitted additional material on claim construction during a September 7, 2005 hearing.


  Claim construction of the patent-in-suit, which involves questions of law to be determined by the Court, is the first step in any patent infringement case. See Mars, Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1373 (Fed. Cir. 2004); Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-78 (Fed. Cir. 1995). In Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), the Federal Circuit clarified the approach courts should use when analyzing claim language. District courts are directed to focus at the outset on how the patentee used the claim term in the claims, specification, and prosecution history rather than beginning the analysis by consulting dictionaries or similar sources. Id. at 1321. Criticizing the over-reliance on dictionaries that resulted from the methodology adopted in Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002), the court noted that "heavy reliance on the dictionary divorced from the intrinsic evidence risks transforming the meaning of the claim term to the artisan into the meaning of the term in the abstract." Id. at 1315.

  The claim term's ordinary and customary meaning, as understood by persons who were skilled in the relevant technology at the time the patent application was filed, continues to serve as the baseline interpretation of the proper scope of the claim. The appropriate inquiry involves analyzing the disputed terms in the context of the disputed claim itself, as well as in the context of the patent as a whole. The Federal Circuit took pains in Phillips to emphasize that in addition to evaluating the claims of a patent in dispute, the specification is the "single best guide to the meaning of a disputed term." Id. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). If the specification indicates that the patentee defined the term in a manner that differs from its generally conceived meaning or disavowed claim scope, the inventor's intention is dispositive. Id. at 1317. In short, claims are to be construed consistently with the specification.

  In addition, courts should consider the patent's prosecution history, if it is in evidence, as it provides evidence of how the inventor and the Patent and Trademark Office understood the claims. If the inventor unequivocally disavowed a particular meaning to obtain the patent or otherwise limited the scope of the invention during the course of the prosecution, "the doctrine of prosecution disclaimer attaches and narrows the ordinary meaning of the claim congruent with the scope of the surrender." Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003).

  Though the Federal Circuit emphasized the primary role intrinsic evidence should play in discerning the proper scope of claims, it did not preclude the use of extrinsic evidence altogether. Judges remain free to consult dictionaries or comparable sources to assist in understanding the meaning of words and to gain a better understanding of the underlying technology. Phillips, 415 F.3d at 1322. In particular, the court noted that dictionaries may be helpful in determining the ordinary meaning of certain non-technical, commonly understood words. See id. at 1314. Thus, dictionaries, and particularly technical treatises, may continue to inform claim construction, so long as a court does not adopt a definition that contradicts the intrinsic evidence. Id. at 1322-23.

  As an initial matter, ITI maintains that the majority of claim terms at issue do not require definition. It argues that the claim terms have clear ordinary meanings and that the terms are already used in their normal sense. Thus, the constructions proposed by ITI are alternatives should the Court conclude that a definition is necessary. ITI has cited no authority, however, for the proposition that it is unnecessary to construe a disputed limitation when its meaning is obvious to one of the parties. The Federal Circuit has held that claim construction is necessary "when the meaning or scope of technical terms and words of art is unclear and in dispute and requires resolution to determine the issue before the court." Eli Lilly and Co. v. Aradigm Corp., 376 F.3d 1352, 1360 (Fed. Cir. 2004) (quoting United States Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997)). The very fact that the meaning of a particular limitation is disputed suggests that the meaning is not entirely clear from the language used in the patent and that the Court must construe the term. The Court agrees with ITI that certain terms may not require elaborate interpretation, see Brown v. 3M, 265 F.3d 1349, 1352 (Fed. Cir. 2001), but ITI's suggestion that entire limitations in dispute do not require construction is at odds with the purpose of claim construction.

  Additionally, defendants request that the Court postpone consideration of several limitations in dispute, as they intend to argue that these limitations are invalid for indefiniteness. These limitations include "actual operation of the plant" in claim 1; "defining" (as a single word) in claims 1, 18, and 34; "determining a set of parameters that describe the plant" in claim 18; "simulating the dynamic behavior of the plant using the chosen factory-specific dynamic model" in claim 18; "dynamic, real world modeling of a manufacturing plant" in claim 34; and "both of which change in time as a result of manufacturing plant conditions" in claim 34.

  ITI submitted proposed constructions regarding these terms. With the exception of "defining," which defendants define within the context of the limitations in which the word appears, defendants have proposed no alternative constructions. Accepting defendants' proposal would — assuming they do not ultimately prevail on the indefiniteness issue — effectively allow them to force a delay in the claim construction process. The Court will not allow this. Defendants have waived their right to present alternative constructions of the terms. The Court adopts ITI's unchallenged proposed constructions, without prejudice to defendants' later argument concerning indefiniteness. ITI's proposed constructions are listed under the appropriate claims. 1. Claim 1

  The parties dispute several terms found in claim 1, which discloses:
A process for modeling a manufacturing plant, which comprises delineating a set of factory operating rules which define how part lots interact with machines in actual operation of the plant, defining the manufacturing plant by specifying machines in the plant and at least batch size and processing time parameters of each machine, defining products manufactured in the plant, providing fabrication sequences consisting of process steps for the products manufactured in the plant, assigning the process steps to the machines, defining at least time and yield characteristics of each process step, identifying which phenomena in the manufacturing plant are stochastic in nature, and assigning distributions and parameters of the distributions to the stochastic phenomena.
a. Modeling
  The term "modeling" appears in the preambles of claims 1, 18, and 34. In each instance, the parties dispute whether the term constitutes a claim limitation. Defendants contend that the preamble language acts as a limitation and thus must be construed; ITI makes the converse argument. Both sides agree, however, that the issue need not be resolved at this stage, as they are in agreement on the proper construction of the term should the Court determine that "modeling" constitutes a claim limitation. Because the question of whether "modeling" limits the claim is not an issue of construction, but instead bears on the infringement analysis, the Court agrees that it makes sense to table the issue. Should the Court later conclude that the term is a claim limitation, we will construe it according to the parties' agreed meaning: to produce a representation or simulation of.

  b. Delineating a set of factory operating rules

  ITI contends that the limitation "delineating a set of factory operating rules" means to set forth a group of prescribed guides for conduct or action in manufacturing. According to defendants, the language should be construed as meaning to set forth in detail a group of prescribed guides for how a manufacturing plant works. The sole point of contention is the phrase "in detail" inserted by defendants, who argue that this is necessary to give the word "delineating" its ordinary meaning. See Pl's Reply at 5 ("[T]he defendants' proposal is acceptable without the words `in detail.'"). In its reply, ITI maintains that the meaning of delineating is straightforward and that substituting an everyday word with its definition is pointless.

  The term "delineate" fits within the category of non-technical terms that have widely accepted meanings and do not require elaborate interpretation. See Phillips, 415 F.3d at 1314. In such situations, the Federal Circuit has approved the use of general purpose dictionaries to help determine the ordinary meaning of the terms. Id. Defendants provide the Court with Webster's definition of "delineate": to describe, portray, or set forth with accuracy or in detail. Webster's Ninth New Collegiate Dictionary 336 (1986). The definition ITI cites also includes the language "set forth with accuracy or detail." See Pl's brief at 5. Because the parties agree on the appropriate definition of delineate, and ITI points to no intrinsic evidence showing that the patentee intended a different meaning for the term, the Court adopts the following construction of the limitation: setting forth with accuracy, or in detail, a group of prescribed guides for how a manufacturing plant works.

  c. Processing time parameters

  The parties dispute the meaning of the phrase "processing time parameters." ITI proposes that the limitation means a set of values that determine the duration of one or more of a series of actions in manufacture. Defendants' proffered construction is: quantities (such as the mean or a variance) that describe random fluctuations in processing times. ITI contends that defendants' construction is too narrow because not all parameters pertain to random fluctuations. The Court agrees.

  Nowhere does the patent suggest that processing time parameters must involve means and variances or that the term "parameters" is limited to describing random fluctuations in processing times. The specification describes the second step of the invention's algorithm as determining the parameters that describe the specific factory. U.S. Patent No. 4,796,194, col. 5, lines 26-28. Parameters are determined for many aspects of the factory other than processing time, including the factory's products, fabrication sequences, machines, equipment reliability, and set-up time. See id., col. 5, lines 48-50; col. 7, lines 21-22. These parameters are defined in terms of data structures of the individual factory model. Id., col. 5, lines 28-29. The term "parameters" should not be defined in a manner that would not make sense in the context of other types of factory variables. In addition, the specification states that "fabrication sequence parameters . . . define allowable process flows." Id., col. 11, lines 1-2. This does not indicate that the parameters describe random fluctuations in process flows.

  Finally, defendants place too heavy an emphasis on their proffered dictionary definition of "parameters." They argue that ITI's proposal ignores the express dictionary definition of parameters, which includes mean and variance as descriptive terms. But although dictionaries can inform claim construction, the focus should remain on the how the term is used within the patent. Courts must be careful to not adopt a definition that contradicts the intrinsic evidence. Phillips, 415 F.3d at 1322-23. But even so, the definition that defendants propose is only one possible definition of "parameter." The same dictionary includes the following definitions of "parameter": "any of a set of physical properties whose values determine the characteristics or behavior of something" and "something represented by a parameter: a characteristic element." Webster's Ninth New Collegiate Dictionary 854 (1986). These definitions align with ITI's interpretation. In short, the Court accepts ITI's proposed construction: a set of values that determine the duration of one or more of a series of actions in manufacture.

  d. Providing fabrication sequences

  The parties dispute the meaning of the limitation "providing fabrication sequences" found in claim 1. IPI interprets the phrase to mean providing an alterable series of operations for the manufacture of a part or parts. Defendants argue that to provide a sequence of process operations, it is necessary for the patented method to include both the type of the processing operations being modeled and the order in which those operations are conducted. Thus, defendants propose that the limitation should be construed to mean supplying the type and order of process operations that are required to complete the products manufactured in the plant with the type and order of process operations being capable of changing during modeling.

  The claim itself indicates what is meant by the phrase "fabrication sequence." Claim 1 reads "providing fabrication sequences consisting of process steps for the products manufactured in the plant." (emphasis added). Consistent with this definition, the specification defines a fabrication sequence as "a sequence of process operations that are required to complete a product." U.S. Patent No. 4,796,194, col. 11, lines 39-40. Among other things, the patent provides that allowable variations include changes in the attributes of a small set of process steps and the addition or deletion of one or more process steps. Id., col. 11, lines 53-56. The term is more nuanced than what is conveyed by ...

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