The opinion of the court was delivered by: MATTHEW KENNELLY, District Judge
MEMORANDUM OPINION AND ORDER
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.
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
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.
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
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
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 ...