Case 2:16-cv-00541-CB Document 88 Filed 10/18/17 Page 1 of 21
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF PENNSYLVANIA
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`LAMBETH MAGNETIC STRUCTURES, )
`LLC,
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`Plaintiff,
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`v.
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`SEAGATE TECHNOLOGY (US)
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`HOLDINGS, INC., et al.,
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`Defendants.
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`LAMBETH MAGNETIC STRUCTURES, )
`LLC,
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`Plaintiff,
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`v.
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`WESTERN DIGITIAL CORPORATION,
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`et al.,
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`Defendants.
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`Civil Action No. 16-538
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`Judge Cathy Bissoon
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`Civil Action No. 16-541
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`Judge Cathy Bissoon
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`MEMORANDUM ORDER
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`These are patent infringement cases in which Plaintiff Lambeth Magnetic Structures,
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`LLC, alleges, in two separate civil action numbers, 16-538 and 16-541 respectively, that Seagate
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`Technology (US) Holdings and Seagate Technology, LLC (collectively, the “Seagate
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`Defendants” or “Seagate”); and Western Digital Corporation, Western Digital Technologies,
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`Inc., Western Digital (Fremont), LLC, Western Digital (Thailand) Company Limited, Western
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`Digital (Malaysia) SDN.BHD and HGST, Inc. (collectively the “Western Digital Defendants” or
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`“Western Digital”) infringe Plaintiff’s patent, United States Patent No. 7,128,988 (the “‘988
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`patent”).
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`Case 2:16-cv-00541-CB Document 88 Filed 10/18/17 Page 2 of 21
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`In each action, the parties filed a Joint Disputed Claim Terms Chart identifying the six
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`terms requiring construction. Chart Setting Forth Each Disputed Term (Civil Action No. 16-538,
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`Doc. 46-1); Am. Joint Disputed Claim Terms Chart (Civil Action No. 16-541, Doc. 60-1).
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`On March 20, 2017, the parties presented a technology tutorial to the Court. The
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`following day, March 21, 2017, the Court held a Markman claim construction hearing.1 See
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`Claim Construction Hearing Transcript (Civil Action No. 16-538, Doc. 73; Civil Action No. 16-
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`541, Doc. 78) [hereinafter “Hearing Transcript”]. The matters were consolidated for purposes of
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`the claim construction hearing.
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`Legal Standard
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`The general principles of claim construction are without dispute. The proper construction
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`of a patent’s claims is a question of law. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831,
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`837 (2015) (citing Markman v. Westview Instruments, Inc., 517 U.S. 370, 388-91 (1996)). “It is
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`a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to which the
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`patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
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`Cir. 2005) (en banc) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381
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`F.3d 1111, 1115 (Fed. Cir. 2004)). The words of a claim “are generally given their ordinary and
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`1 These two actions were preceded by a third civil action, Lambeth Magnetic Structures, LLC, v.
`Toshiba Corporation, et al., 14-1526. All three civil actions were consolidated for purposes of
`claim construction. The Defendants in the Toshiba Corporation action (“the Toshiba
`Defendants” or “Toshiba”) fully briefed claim construction and participated fully in the
`Technology Tutorial and Markman hearing. Plaintiff dismissed its action against the Toshiba
`Defendants shortly thereafter. See Order Approving Stipulation of Dismissal (Civil Action No.
`14-1526, Doc. 180). Given the Toshiba Defendants’ involvement, the Court has chosen, where
`relevant, to refer to their proposed constructions and reasoning. To distinguish between the
`Toshiba Defendants and the active Defendants, the Court refers herein to Seagate and Western
`Digital, collectively, as “remaining Defendants.”
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`Case 2:16-cv-00541-CB Document 88 Filed 10/18/17 Page 3 of 21
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`customary meaning,” which “is the meaning that the term would have to a person of ordinary
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`skill in the art in question at the time of the invention, i.e., as of the effective filing date of the
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`patent application.” Id. at 1312-13 (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
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`1582 (Fed. Cir. 1996)); Innova/Pure Water, 381 F.3d at 1116). In arriving at this meaning, a
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`court is to look first and foremost to the “intrinsic evidence,” which consists of the patent’s claim
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`language, the specification and written description, and the prosecution history, to determine the
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`meaning of disputed claim terms. Phillips, 415 F.3d at 1311-17; Medrad, Inc. v. MRI Devices
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`Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005). The specification is the single best guide to the
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`meaning of a disputed term, and is “usually…dispositive.” Phillips, 415 F.3d at 1315 (citing
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`Vitronics, 90 F.3d at 1582).
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`Claim language guides a court’s construction of claim terms. Phillips, 415 F.3d at 1314.
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`Yet, the “claims cannot enlarge what is patented beyond what the inventor has described as the
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`invention.” Abbott Laboratories v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed. Cir. 2009) (citing
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`Biogen, Inc. v. Berlex Labs., Inc., 318 F.3d 1132, 1140 (Fed. Cir. 2003)). The context in which
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`a term is used not only in the asserted claims, but also in any claims that are not being asserted in
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`a particular lawsuit, can be highly instructive because “terms are normally used consistently
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`throughout the patent.” Phillips, 415 F.3d at 1314. “The construction that stays true to the claim
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`language and most naturally aligns with the patent's description of the invention will be, in the
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`end, the correct construction.” Renishaw PLC v. Marposs Societa per Azioni, 158 F.3d 1243,
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`1250 (Fed. Cir. 1998).
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`Claims are always to be read in view of the specification, of which they are a part.
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`Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff'd, 517
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`U.S. 370 (1996). “The person of ordinary skill in the art is deemed to read the claim term not
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`Case 2:16-cv-00541-CB Document 88 Filed 10/18/17 Page 4 of 21
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`only in the context of the particular claim in which the disputed term appears, but in the context
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`of the entire patent, including the specification.” Phillips, 415 F.3d at 1313. Moreover, “where
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`the ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to
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`permit the scope of the claim to be ascertained from the words alone[,]” the specification can
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`provide clarity. Teleflex. Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). In
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`the specification, a patentee may define his own terms, or give a claim term a different meaning
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`than it otherwise would possess. Id. at 1316. Although a court generally presumes that terms
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`possess their ordinary meaning, this presumption can be overcome when the patentee acts as his
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`own lexicographer. Irdeto Access, Inc. v. EchoStar Satellite Corp., 383 F.3d 1295, 1301 (Fed.
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`Cir. 2004).
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`“Although the specification may aid the court in interpreting the meaning of disputed
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`language in the claims, particular embodiments and examples appearing in the specification will
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`not generally be read into the claims.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d
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`1560, 1571 (Fed. Cir. 1988); see Phillips, 415 F.3d at 1323. Nonetheless, “[a] claim
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`interpretation that excludes a preferred embodiment from the scope of the claim ‘is rarely, if
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`ever, correct.’” Globetrotter Software, Inc. v. Elam Computer Grp. Inc., 362 F.3d 1367, 1381
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`(Fed. Cir. 2004) (quoting Vitronics Corp., 90 F.3d at 1583). Even if a patent describes only a
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`single embodiment, the claims of the patent must not be construed as being limited to that
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`embodiment unless the patentee has demonstrated a clear intention to limit the claim scope using
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`“words or expressions of manifest exclusion or restriction.” Phillips, 415 F.3d at 1323; Liebel-
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`Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (citing decisions); Teleflex,
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`299 F.3d at 1327. The purpose of the specification is “to teach and enable those of skill in the art
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`Case 2:16-cv-00541-CB Document 88 Filed 10/18/17 Page 5 of 21
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`to make and use the invention” and sometimes, the best way to do that is to provide an example.
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`Teleflex, 299 F.3d at 1327.
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`Although the Court of Appeals for the Federal Circuit acknowledges that “the distinction
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`between using the specification to interpret the meaning of a claim and importing limitations
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`from the specification into the claim can be a difficult one to apply in practice,” it instructs courts
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`to maintain their focus on how a person of ordinary skill in the art would understand the claim
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`terms. Id. In order to do so, the “claims of the patent must be read in light of the specification’s
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`consistent emphasis on [the] fundamental features of the invention.” Praxair, Inc. v. ATMI, Inc.,
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`543 F.3d 1306, 1324 (Fed. Cir. 2008).
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`The prosecution history is another tool that supplies the proper context for claim
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`construction. Home Diagnostics Inc. v. LifeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004).
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`Because the file history “represents an ongoing negotiation between the [United States Patent
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`and Trademark Office (“PTO”)] and the applicant, rather than the final product of that
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`negotiation, it often lacks the clarity of the specification and thus is less useful in claim
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`construction proceedings.” Phillips, 415 F.3d at 1317. Nevertheless, the prosecution history is
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`intrinsic evidence that is relevant to the determination of how the inventor understood the
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`invention and whether the inventor limited the invention during prosecution by narrowing the
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`scope of the claims. Id. Where an applicant limits claim scope during prosecution through a
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`“clear disavowal of claim coverage, such as an amendment to overcome a rejection,” the well-
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`established doctrine of prosecution disclaimer “preclud[es] patentees from recapturing through
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`claim interpretation specific meanings disclaimed during prosecution.” Amgen Inc. v. Hoechst
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`Marion Roussel, Inc., 314 F.3d 1313, 1327 (Fed. Cir. 2003) (citing York Prods., Inc. v. Central
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`Tractor Farm & Fam. Ctr., 99 F.3d 1568, 1575 (Fed. Cir. 1996)); see Omega Eng’g Inc. v.
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`Case 2:16-cv-00541-CB Document 88 Filed 10/18/17 Page 6 of 21
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`Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). By distinguishing the claimed invention
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`over the prior art, an applicant is indicating what the claims do not cover. Spectrum Int’l v.
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`Sterilite Corp., 164 F.3d 1372, 1378-79 (Fed. Cir. 1988) (quotation omitted). In order for the
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`doctrine to apply, however, the prosecution history must show that the patentee clearly,
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`unambiguously and unmistakably disclaimed or disavowed the proposed interpretation during
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`prosecution in order to obtain claim allowance. Schindler Elevator Corp. v. Otis Elevator Co.,
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`593 F.3d 1275, 1285 (Fed. Cir. 2010); Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352,
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`1358 (Fed. Cir. 2003); Middleton Inc. v. 3M Co., 311 F.3d 1384, 1388 (Fed. Cir. 2002).
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`Phillips rejected any claim construction approach that sacrificed the intrinsic record in
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`favor of extrinsic evidence, such as dictionary definitions or expert testimony. Phillips, 415 F.3d
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`at 1319-24. Still, though “less significant than the intrinsic record in determining the legally
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`operative meaning of claim language,” a court may rely on extrinsic evidence to “shed useful
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`light on the relevant art.” Id. at 1317 (quotation omitted). Technical dictionaries and treatises
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`may help the court understand the underlying technology and the manner in which one skilled in
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`the art might use claim terms, but such sources may also provide overly broad definitions or may
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`not be indicative of how terms are used in the patent. Id. at 1318. Similarly, expert testimony
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`may aid the court in determining the particular meaning of a term in the pertinent field, but
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`“conclusory, unsupported assertions by experts as to the definition of a claim term are not
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`useful.” Id. Generally, extrinsic evidence is “less reliable than the patent and its prosecution
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`history in determining how to read claim terms.” Id.
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`Case 2:16-cv-00541-CB Document 88 Filed 10/18/17 Page 7 of 21
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`Undisputed Claim Terms
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`Before proceeding to resolving the disagreements with respect to the disputed claim
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`terms, the Court notes that the parties have agreed to the construction of two claim terms. They
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`are as follows:
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`“bcc-d”
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`“fcc-d”
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`Undisputed Claim Term
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`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.
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`The Court, agreeing with the parties’ proposed constructions, adopts the agreed-upon
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`constructions without change. The Court finds that these constructions are supported by the
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`specification. E.g., ‘988 patent at col. 4, lns. 44-45; id. at col. 5, lns.12-13.
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`Disputed Claim Terms
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`The parties have asked the Court to construe six disputed claim terms. These terms are:
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`Number
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`Term
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`“Atomic template”
`“[Layer] providing a (111) textured hexagonal atomic template”
`“Uniaxial”
`“Symmetry broken structure”
`“Uniaxial symmetry broken structure”
`“Variant/orientational variant” and “variants/orientational variants”
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`1
`2
`3
`4
`5
`6
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`Case 2:16-cv-00541-CB Document 88 Filed 10/18/17 Page 8 of 21
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`As the Court will explain in greater detail below, the Court will adopt the following
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`constructions for the disputed terms:
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`Number
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`Term
`“Atomic template”
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`“[Layer] providing a (111) textured
`hexagonal atomic template”
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`“Uniaxial”
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`“Symmetry broken structure”
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`“Uniaxial symmetry broken structure”
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`“Variant/orientational variant”
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`“Variants/orientational variants”
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`1. Atomic template2
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`1
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`2
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`3
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`4
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`5
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`6
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`Construction
`An atomic pattern upon which
`material is grown and which is
`used to direct the growth of an
`overlying layer
`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
`A structure consisting of
`unequal volumes or unequal
`amounts of the bcc-d variants
`of a six variant system
`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 orientations
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`The Court finds that the appropriate construction of “atomic template” is “an atomic
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`pattern upon which material is grown and which is used to direct the growth of an overlying
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`layer.”
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`As noted in the chart below, the Seagate and Western Digital Defendants’ proposed
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`constructions are identical.
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`2 This term appears in all asserted claims other than claim 17.
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`Case 2:16-cv-00541-CB Document 88 Filed 10/18/17 Page 9 of 21
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`Claim
`Term
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`Lambeth’s
`Proposal
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`Seagate’s
`Proposal
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`Western Digital’s
`Proposal
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`“Atomic
`template”
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`An underlying
`pattern of atoms
`that guides the
`formation of an
`overlying layer.
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`Surface that directs
`the growth of the
`bcc-d layer.
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`Surface that directs
`the growth of the
`bcc-d layer.
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`Toshiba’s
`Proposal
`[action dismissed]
`An atomic pattern
`upon which a
`material is grown
`and which is used
`to guide the
`location of the
`atoms in the
`material.
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`The distinctions between Plaintiff’s and remaining Defendants’ constructions rest on two
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`possible limitations3 proposed by Defendants and the claim construction question for the Court
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`can be stated as two disputes: whether the atomic template consists of only the “surface” as
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`opposed to the “underlying pattern of atoms,” and whether the layer that this template causes to
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`form must be “the bcc-d layer” or may be “an overlying layer” in the material.
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`Concerning the first limitation, the Court finds no basis in the intrinsic or extrinsic
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`evidence to restrict the meaning of “atomic template” to the atoms in, or adjacent to, the
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`“surface.” Defendants argue that term “surface,” which “include[s] the top layer of atoms” and
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`perhaps immediate additional layers, Hearing Transcript at 35, lns. 19-23, is present in the ‘988
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`patent and adds clarity to the meaning of “atomic template,” which could otherwise refer to
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`atoms present anywhere in a layer of the structure. Western Digital’s Responsive Claim
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`Construction Brief (Civil Action No. 16-541, Doc. 61) at 4; Seagate’s Response to Plaintiff’s
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`3 While the briefing includes a third dispute as to “guides the formation” versus “directs the
`growth,” e.g., Seagate’s Response to Plaintiff’s Opening Claim Construction Brief (Civil Action
`No. 16-538, Doc. 56) at 4, Plaintiff’s arguments during the Markman hearing revealed that its
`objection to “directs the growth” primarily concerned Toshiba’s proposed construction, which
`refers to guiding “the location of atoms” rather than guiding the overall shape of a layer;
`Plaintiff’s argument does not rest on the distinction between “guides” and “directs.” Hearing
`Transcript at 22, lns. 21-25. In light of Plaintiff’s dismissal of its action against Toshiba and this
`Court’s resolution of the remaining disputes, this third dispute is no longer relevant.
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`Case 2:16-cv-00541-CB Document 88 Filed 10/18/17 Page 10 of 21
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`Opening Claim Construction Brief (Civil Action No. 16-538, Doc. 56) at 5-7. However,
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`“surface” is not used in the ‘988 patent in the context of defining or describing the term “atomic
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`template” and, as Defendants conceded during the Markman hearing, the patent’s internal logic
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`implies that “there’s more to the atomic template” than the surface. Hearing Transcript at 36,
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`lns. 7-15; see also id. at 41, lns. 1-8.
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`In the context of the asserted claims, the word “template” has an ordinary meaning that
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`implies a function—influencing the growth of the layers above it. Cf. Detailed Action, Office
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`Action 10/415,757 (Civil Action No. 16-538, Doc. 50-4) [hereinafter “Office Action”] at ¶6
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`(“The underlying layers appears [sic] to direct the growth of overlying layers in order to achieve
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`the claimed microstructure.”). In construing “atomic template,” the Court need not set a limit on
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`the template’s thickness by using the word “surface.”
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`Likewise, the patent provides no basis for the second limitation, which would restrict the
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`meaning of “atomic template” to one which specifically directs the growth “of the bcc-d layer”
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`as opposed to “an overlying layer.” As a factual matter, it may be the case that the invention
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`uses an atomic template to control the growth of a bcc-d layer. See ‘988 Patent at col. 12, ln. 66-
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`col. 13, ln. 2 (“this invention deals with a structure to achieve uniaxial magnetocrystalline
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`orientation via the use of the (110) texture of the body centered cubic (bcc) or body centered
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`cubic derivative crystal thin film structures”). However, as a matter of claim construction, there
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`is no reason to restrict the definition as Defendants propose. This is because the patent also
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`implies that atomic templates may exert effects on overlying layers through intervening layers
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`composed of various crystalline structures, including ones that are not bcc-d. E.g., ‘988 patent at
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`col. 10, lns. 15-20 (intervening fcc layer); id. at col. 29, lns. 60-66 (intervening bcc-d layers); id.
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`at col. 30, ln. 63 – col. 31, ln. 3 (intervening bcc-d layers). Restricting the meaning of “atomic
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`Case 2:16-cv-00541-CB Document 88 Filed 10/18/17 Page 11 of 21
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`template” to an atomic template that directs the growth of the bcc-d layer would be inconsistent
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`with the role of an atomic template implied throughout the specification. Drawing on the
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`Examiner’s clarification during prosecution,4 the atomic template is simply the pattern of atoms
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`upon which material is grown and which is used to direct the growth of an overlying layer in the
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`material. See Office Action at ¶6 (“The underlying layers appears [sic] to direct the growth of
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`overlying layers in order to achieve the claimed microstructure.”).
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`2. [Layer] providing a (111) textured hexagonal atomic template5
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`The second disputed claim term incorporates the first term, “atomic template,” but adds a
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`restricting adjectival phrase, “(111) textured hexagonal.”6 For the reasons stated below, the
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`Court finds that the appropriate construction of “[layer] providing a (111) textured hexagonal
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`atomic template” is “layer that is predominately (111) hexagonal and that provides an atomic
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`template.”
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`The parties’ proposed constructions for this claim term are provided in the chart below:
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`4 This description was subsequently adopted by the applicant. See Lambeth’s Opening Claim
`Construction Brief (Civil Action No. 16-538, Doc. 50) at 3.
`5 This term appears in all asserted claims except claim 17.
`6 As shown in the proposed construction chart for this term, the meanings of “layer” and
`“providing” are not disputed.
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`Case 2:16-cv-00541-CB Document 88 Filed 10/18/17 Page 12 of 21
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`Claim
`Term
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`Lambeth’s
`Proposal
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`Seagate’s
`Proposal
`
`Western Digital’s
`Proposal
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`Layer providing a
`predominantly
`(111) hexagonal
`surface that directs
`the growth of the
`bcc-d crystals of
`the bcc-d layer.
`
`Layer providing a
`predominantly
`(111) hexagonal
`surface that directs
`the growth of the
`bcc-d crystals of
`the bcc-d layer.
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`“[Layer]
`providing
`a (111)
`textured
`hexagonal
`atomic
`template”
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`
`
`Providing an
`atomic template
`having a close
`packed hexagonal
`pattern of atoms
`formed from a
`(111) plane of
`fcc-d material or
`a (0002) plane of
`hcp material.
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`Toshiba’s
`Proposal
`[action
`dismissed]
`Providing a (111)
`textured
`hexagonal atomic
`template to the
`bcc-d layer.
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`
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`As explained below, the word “textured” is the only remaining term for the Court to
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`construe in the second disputed claim. A person of ordinary skill in the art would recognize the
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`meaning of (111) hexagonal in the context of magnetic material structures, as this refers to a
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`geometric plane in a commonly used coordinate system for describing the location of a layer
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`within a crystalline structure. See, e.g., ‘988 patent at col. 10, lns. 35-42 (referring to the (110)
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`plane and the (111) plane, and noting that “[t]hese crystalline planes and crystalline directions
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`are illustrated in FIG. 3,” which depicts crystal orientations on these planes in relation to each
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`other and illustrates the hexagonal pattern of atoms on the (111) plane); id. at col. 15, lns. 5-9
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`(referring to the “(111) plane of atoms” and the “(111) atomic crystal planes” of crystal lattices);
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`Hearing Transcript at 77, ln. 19 (“(111) refers to a plane” (statement by counsel for Plaintiff));
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`id. at 85, lns. 23-25 (“we think there is no dispute that people of skill in the art would know what
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`(111) hexagonal is” (statement by counsel for Western Digital)). The inventor has not provided
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`a definition that would supplant the ordinary meaning of this term. No further construction of
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`(111) hexagonal is necessary. This Court has already construed the meaning of “atomic
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`template” in the context of the asserted claims, above. As a result, the only remaining term for
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`this Court to construe within the second disputed claim is the word “textured.”
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`Case 2:16-cv-00541-CB Document 88 Filed 10/18/17 Page 13 of 21
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`Fortunately, the inventor has acted as his own lexicographer in this instance and provided
`
`a definition of this term in United States Patent No. 6,248,416 (the “‘416 patent”), which is
`
`incorporated by reference in the ‘988 patent. ‘988 patent at col. 9, lns. 48-49. The ‘416 patent
`
`defines “texture” as follows:
`
`The predominate crystallographic orientation of a layer is known as the crystallographic
`texture, or texture, as used herein, as opposed to the use of the term “texture” to describe
`the mechanical roughness of a surface.
`
`
`‘416 patent at col. 2, lns. 36-40. In the disputed claim, as noted above, “(111) hexagonal”
`
`describes the crystallographic orientation of the referenced layer. The term “textured,” in this
`
`context, thus indicates that “(111) hexagonal” is the predominate crystallographic orientation of
`
`the layer.
`
`
`
`Plaintiff’s and Defendants’ proposed additions to this construction are rejected. Plaintiff
`
`would add that such a layer must have “a close packed hexagonal pattern of atoms formed from a
`
`(111) plane of fcc-d material or a (0002) plane of hcp material.” The patent explicitly states that
`
`these formations are both “examples of the (111) textured hexagonal atomic template.” ‘988
`
`patent at col. 14, lns. 55-59.7 The two close packed hexagonal structures mentioned in Plaintiff’s
`
`construction are examples of the claim term, not its definition. Defendants’ arguments
`
`supporting their proposed limitations to this term, which refer to bcc-d crystals and the bcc-d
`
`layer, rehash their construction arguments for the term “atomic template” and are rejected for the
`
`same reasons.
`
`
`7 The Court also notes that claim 6 states a dependent claim that adds the following limitation to
`a structure containing a (111) textured hexagonal atomic template: “wherein the layer providing
`said hexagonal atomic template is formed from a fcc-d or hcp crystalline material.” ‘988 patent
`at col. 45, lns. 21-23. This limitation provides further support that Plaintiff’s additions are
`unwarranted.
`
`
`
`

`

`Case 2:16-cv-00541-CB Document 88 Filed 10/18/17 Page 14 of 21
`
`
`
`3. Uniaxial8
`
`The third disputed claim term, “uniaxial,” is defined by the inventor in the ‘988 patent as
`
`follows:
`
`Here, we define “uniaxial” anisotropy to exist if the anisotropy energy density function
`only contains a single maximum and a single minimum as the magnetization angle, θ, is
`rotated by 180 degrees from a physical axis.
`
`
`‘988 patent at col. 1, lns. 56-60. The Court finds that the appropriate construction of “uniaxial”
`
`is “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” because the
`
`inventor’s definition in the ‘988 patent is dispositive.
`
`Claim
`Term
`
`Lambeth’s
`Proposal
`
`Seagate’s
`Proposal
`
`“Uniaxial” Having a single
`magnetic easy
`axis and a single
`magnetic hard
`axis within a
`180 degree
`rotation.
`
`Having an
`anisotropy
`energy density
`function with
`only a single
`maximum (local
`or global) and a
`single minimum
`(local or global)
`as the
`magnetization
`angle is rotated
`from a physical
`axis within the
`(110) plane.
`
`Toshiba’s
`Proposal
`[action
`dismissed]
`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.
`
`Western
`Digital’s
`Proposal
`
`Having an
`anisotropy
`energy density
`function with
`only a single
`maximum (local
`or global) and a
`single minimum
`(local or global)
`as the
`magnetization
`angle is rotated
`by 180 degrees
`from a physical
`axis within the
`layer.
`
`
`
`
`
`
`8 This term appears in asserted claims 1, 17 and 27.
`
`
`
`

`

`Case 2:16-cv-00541-CB Document 88 Filed 10/18/17 Page 15 of 21
`
`
`
`Plaintiff alleges that its proposed construction, shown above, is equivalent to the
`
`definition provided in the ‘988 patent and would have the additional virtue of being more
`
`understandable for a jury. Hearing Transcript at 117, lns. 1-20. This Court disagrees.
`
`Defendants have demonstrated that Plaintiff’s construction is not equivalent to the definition in
`
`the ‘988 patent because it is less precise, see, e.g., Hearing Transcript at 161, lns. 11-16, and this
`
`Court has no reason to believe that Plaintiff’s construction would require any less explanation to
`
`a jury than the definition provided on the face of the ‘988 patent. The Court notes that, at trial,
`
`Plaintiff would be permitted to explain to a jury various means of understanding uniaxial
`
`anisotropy, much as it did for the Court during its technology tutorial.
`
`Defendants’ proposed constructions, also shown above, largely mirror the definition in
`
`the ‘988 patent. Defendants’ minor additions to the patent’s definition are unnecessary to
`
`completely and unambiguously construe the meaning of the term “uniaxial.”
`
`4. Symmetry broken structure9
`
`The Court finds that the appropriate construction of “symmetry broken structure,” the
`
`fourth disputed claim term, is “a structure consisting of unequal volumes or unequal amounts of
`
`the bcc-d variants of a six variant system.”
`
`The parties’ proposed constructions are as follows:
`
`
`
`
`
`
`
`
`
`
`
`
`9 This term appears in asserted claims 1, 17 and 27.
`
`
`
`

`

`Case 2:16-cv-00541-CB Document 88 Filed 10/18/17 Page 16 of 21
`
`Claim
`Term
`
`Lambeth’s
`Proposal
`
`Seagate’s
`Proposal
`
`Western
`Digital’s
`Proposal
`
`A structure of
`unequal volumes
`of bcc-d variants
`of the six variant
`system.
`
`A structure of
`unequal volumes
`of bcc-d variants
`of the six variant
`system.
`
`Symmetry
`broken
`structure
`
`A structure
`consisting of
`unequal
`amounts of the
`bcc-d variants
`of a six variant
`system.FN
`FNThe structure
`need not have
`all six of the
`bcc-d variants
`present in
`order to satisfy
`this claim term.
`
`Toshiba’s
`Proposal
`[action
`dismissed]
`A structure
`consisting of
`unequal
`amounts of the
`bcc-d variants
`of a six variant
`system.FN
`FNThe structure
`need not have
`all six of the
`bcc-d variants
`present in order
`to satisfy this
`claim term.
`
`
`
`
`
`As is apparent from the chart above, the dispute here centers on whether a structure must
`
`contain unequal “amounts” or unequal “volumes” of the bcc-d variants in order to be a
`
`“symmetry broken structure” within the meaning of the ‘988 patent.
`
`The Court finds that the appropriate construction allows for both possibilities. The patent
`
`is imprecise in how it uses the words “volume” and “amount,” using them interchangeably in the
`
`context of describing the relationship between crystal variants and symmetry. Compare ‘988
`
`patent col. 23, lns. 26-28 (“These coupled variant sets do not have to be equally weighted in
`
`volume in the sample.”) (emphasis added), and id. at col. 23, lns. 45-47 (“we have only discussed
`
`at length the cases where the variants of a coupled set of variants are equally weighted (balanced)
`
`in volume of material”) (emphasis added), and id. at col. 23, lns. 61-64 (“the energy density
`
`difference between the minimum and the maximum would be decreased by the relative
`
`difference in volume of materials”), with id. at col. 23, lns. 38-41 (“A crystallographically
`
`‘symmetry broken’ material is defined to exi[s]t when individual, variant sets do not contain an
`
`equal amount of all six of the (110) textured bcc-d variants.”) (emphasis added), and id. at col.
`
`
`
`

`

`Case 2:16-cv-00541-CB Document 88 Filed 10/18/17 Page 17 of 21
`
`
`
`23, lns. 58-61 (“If the quantity of material for this pair is slightly greater than the other four
`
`variants then this would break the symmetry and uniaxial behavior would result.”) (emphasis
`
`added). Although the ‘988 patent’s definition of “symmetry broken” material uses the word
`
`“amount” rather than “volume,” id. at col. 23, ln. 40, the immediate context makes clear that both
`
`words are used interchangeably.
`
`The Court therefore finds that it should not construe the disputed claim term in a way that
`
`would restrict its meaning to specify either amount or volume. Where the patent itself failed to
`
`be so precise, the Court will not read into the patent any such limits. See Phillips, 415 F.3d at
`
`1323.
`
`Plaintiff and Toshiba propose adding a clarifying footnote to the construction of
`
`“symmetry broken structure” in order to note that such a structure need not contain all six of the
`
`bcc-d variants. The Court agrees that the ‘988 patent describes symmetry broken structures with
`
`fewer than all six of the variants and thus ag