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SiOnyx, LLC v. Hamamatsu Photonics K.K.

United States District Court, D. Massachusetts

September 7, 2016

SIONYX, LLC and PRESIDENT AND FELLOWS OF HARVARD COLLEGE, Plaintiffs,
v.
HAMAMATSU PHOTONICS K.K.; HAMAMATSU CORPORATION; OCEAN OPTICS, INC.; and DOES 1 THROUGH 10, Defendants.

          MEMORANDUM AND ORDER ON CLAIM CONSTRUCTION

          F. DENNIS SAYLOR IV UNITED STATES DISTRICT JUDGE.

         This is a dispute between a Massachusetts technology company and a Japanese optical-device manufacturer involving an alleged misappropriation of technology and a related patent-ownership claim. Plaintiffs SiOnyx, LLC and the President and Fellows of Harvard College have brought suit against Hamamatsu Photonics K.K. (“HPK”); HPK's North American subsidiary, Hamamatsu Corporation (“HC”); Ocean Optics, Inc.; and ten unnamed customers. The second amended complaint asserts claims for correction of patent inventorship pursuant to 35 U.S.C. § 256 for nine patents assigned to HPK, patent infringement pursuant to 35 U.S.C. § 271, and breach of contract.

         The parties' allegations hinge in part on the construction of the claims in twelve patents, three of which are assigned to Harvard or SiOnyx and nine of which are assigned to HPK. The Court conducted a Markman hearing on the construction of the relevant claims on June 22, 2017.

         The parties have submitted proposed constructions for 17 terms: (1) “average, ” (2) “height, ” (3) “base, ” (4) “protrude above the semiconductor surface, ” (5) “width, ” (6) “undulating topography, ” (7) “at least a portion [of the surface layer] exhibiting an undulating topography, ” (8) “so as to generate, ” (9) “selected to, ” (10) “charge carriers, ” (11) “photosensitive imager device/photosensitive imager array, ” (12) “coupled to/coupling to, ” (13) “positioned to interact with electromagnetic radiation/in a position to interact with electromagnetic radiation, ” (14) “electrical transfer element/transfer element, ” (15) “positioned to maintain the electromagnetic radiation in the semiconductor substrate, ” (16) “irregular asperity, ” and (17) “optically exposed.”

         I. Background

         A. Factual Background

         Plaintiff SiOnyx, LLC is a limited liability company that develops technology to improve the performance of photoelectric devices. (Second Am. Compl. ¶¶ 1, 36-37, “SAC”). Plaintiff President and Fellows of Harvard College is an educational institution and charitable organization located in Cambridge, Massachusetts. (Id. ¶ 2). Dr. Eric Mazur is a professor of physics and applied physics at Harvard. (Id. ¶ 9). Dr. James Carey, III received his Ph.D. in applied physics from Harvard in 2004. (Id. ¶ 11).

         Defendant Hamamatsu Photonics K.K. (“HPK”) is a Japanese company that manufacturers optical devices, including photodiodes. (Id. ¶¶ 3, 54). Defendant Hamamatsu Corporation (“HC”) is a subsidiary corporation based in New Jersey. (Id. ¶ 4).

         This dispute concerns a technology for creating “black silicon, ” a substrate that improves the ability of silicon photoelectric devices to absorb near-infrared light. (Id. ¶ 36). Photoelectric devices, such as those used in digital cameras, often use silicon semiconductor technology to convert electromagnetic radiation, such as light, into an electrical signal that can be read as an image. (Guidash Decl. ¶ 17). Historically, silicon semiconductors have had difficulty absorbing long-wavelength electromagnetic radiation, such as near-infrared and infrared radiation, because such radiation must be absorbed deeply in the silicon. (Markman Hearing Transcript at 12-13, “Tr.”). One way of addressing that problem is to use thicker silicon, but that solution is problematic in other ways. (Id. at 17). Black silicon addresses that problem by employing a textured surface characterized by a plurality of approximately micrometer-sized needlelike spires. (SAC ¶ 44). The spires cause incident electromagnetic radiation to refract and redirect, causing photons to travel a longer distance, resulting in thin silicon that responds more like thick silicon. (Tr. at 17-18).

         In 2006, Carey and Mazur co-founded SiOnyx in order to develop and commercialize black-silicon technology. (SAC ¶¶ 9, 11). Shortly thereafter, SiOnyx contacted HPK to explore whether HPK would be interested in using black silicon to improve the performance of its photodiode devices. (Id. ¶ 53). SiOnyx and HPK began to explore joint-development opportunities, and in January 2007, entered into a mutual non-disclosure agreement to facilitate the exchange of information. (Id. Ex. 10). Ultimately, the companies did not pursue any joint-development opportunity. Instead, in January 2008, HPK terminated the relationship, stating that it preferred to develop its own methods. (Id. Ex. 11).

         B. Patents at Issue

         Harvard is the named assignee on two patents related to black-silicon technology: U.S. Patent Nos. 7, 884, 446 (“the '446 patent”) and 8, 080, 467 (“the '467 Patent”). (Id. ¶¶ 47-48). The '446 patent and the '467 patent are exclusively licensed to SiOnyx. (Id. ¶ 18). SiOnyx is the named assignee on one patent related to black silicon: U.S. Patent No. 8, 680, 591 (“the '591 Patent”).

         HPK is the named assignee on nine patents that disclose inventions similar to those disclosed in the Harvard and SiOnyx patents. Those are U.S. Patent Nos. 8, 564, 087 (“the '087 Patent”), 8, 742, 528 (“the '528 Patent”), 8, 916, 945 (“the '945 patent”), 8, 629, 485 (“the '485 Patent”), 8, 884, 226 (“the '226 Patent”), 8, 994, 135 (“the '135 Patent”), 9, 190, 551 (“the '551 Patent”), 9, 293, 499 (“the '499 Patent”), and 9, 614, 109 (“the '109 Patent”).

         1.The '446 Patent

         The '446 patent is entitled “Femtosecond Laser-Induced Formation of Submicrometer Spikes on a Semiconductor Substrate.” ('446 patent). It was issued on February 8, 2011. (Id.). It names Eric Mazur and Mengyan Shen as the inventors and Harvard as the assignee. (Id.).

         The '446 patent is generally directed to “methods for generating submicron-sized features on a semiconductor surface by irradiating the surface with short laser pulses.” (Id. col. 1 ll. 50- 53). At the time the patent was issued, a number of other techniques were known for generating micrometer-sized structures on semiconductor substrates. (Id. col. 1 ll. 38-39). The '446 patent distinguishes itself from those earlier inventions by claiming to form features, such as spikes, that are “substantially smaller in size than those generated by previous techniques.” (Id. col. 1 ll. 56- 59). The features have an average height of less than about micrometer and an average width between about 100 nanometers to 500 nanometers. (Id. col. 8 ll. 34-36).

         In one aspect, the patent provides a method for generating those features by “placing at least a portion of a surface of the substrate in contact with a fluid, and exposing that portion to one or more short laser pulses”-in a pulse width range of, for example, “about 50 femtoseconds to about a few nanoseconds.” (Id. col. 2 ll. 1-9).

         2. The '467 Patent

         The '467 patent is entitled “Silicon-Based Visible and Near-Infrared Optoelectric Devices.” ('467 Patent). It was issued on December 20, 2011. (Id.). It names Mazur and Carey as the inventors and Harvard as the assignee. (Id.).

         The '467 patent is directed to methods of fabricating semiconductor devices that provide enhanced responsivity to long-wavelength electromagnetic radiation. (Id. col. 1 ll. 27-30; id. col. 2 ll. 44-47; Kruglick Decl. ¶ 52). The claimed method is comprised of two steps: (1) irradiating a silicon substrate with temporally short laser pulses while exposing the substrate to a substance so as to generate surface inclusions, and (2) “annealing [the] substrate at an elevated temperature and for a duration selected to enhance a density of charge carriers in [the] surface layer.” ('467 patent col. 22 ll. 39-49). The irradiation step results in improved absorptance of long-wavelength radiation, while the annealing step counteracts damage to the crystalline lattice of the semiconductor wafer caused by irradiation. (Kruglick Decl. ¶¶ 52, 53). Applying that method to a silicon wafer “can considerably enhance the responsivity of a photodetector that employs that wafer.” (Id. col. 16 ll. 63-66).

         3. The '591 Patent

         The '591 patent is entitled “Photosensitive Imaging Devices and Associated Methods.” ('591 patent). It was issued on March 25, 2014. (Id.). It names Homayoon Haddad, Jutao Jiang, Jeffrey McKee, Drake Miller, Leonard Forbes, and Chintamani Palsule as the inventors and Sionyx, Inc. as the assignee. (Id.).

         The '591 patent is generally directed to photosensitive devices and associated methods. (Id. abstract). The '591 patent discloses, in one aspect, “a photosensitive imager device” that can include “a semiconductor substrate having multiple doped regions forming at least one junction, a textured region coupled to the semiconductor substrate and positioned to interact with electromagnetic radiation, and an electrical transfer element coupled to the semiconductor substrate and operable to transfer an electrical signal from the at least one junction.” (Id. col. 1 ll. 34-42). The textured region increases the absorption of long-wavelength electromagnetic radiation, allowing a relatively thin piece of silicon to behave as if it were thicker. (Guidash Decl. ¶ 25; '591 patent col. 5 ll. 45-47).

         4.The HPK Patents

         HPK is the named assignee on nine patents at issue in this litigation: the '087, '528, '945, '485, '226, '135, '551, '499, and '109 patents. Those patents were issued between October 22, 2013, and April 4, 2017, and claim priority to earlier Japanese patent applications. They list various individuals affiliated with Hamamatsu as inventors, but do not include Mazur or Carey as named inventors.

         The HPK patents generally concern the formation of an “irregular asperity” on a semiconductor substrate in photoelectric devices. (See, e.g., '528 patent abstract). They also concern the application of a “thermal treatment” to the semiconductor surface after the irregular asperity is formed. (See, e.g., '945 patent abstract).

         II. Legal Standard

         The construction of claim terms is a question of law, which may in some cases rely on underlying factual determinations. Teva Pharm. USA, Inc. v. Sandoz, Inc.¸ 135 S.Ct. 831, 835, 837-38 (2015); Markman v. Westview Instruments, 517 U.S. 370, 372 (1996) (“[T]he construction of a patent, including terms of art within its claim, is exclusively within the province of the court.”).

         In Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), the Federal Circuit clarified the proper approach to claim construction and set forth principles for determining the hierarchy and weight of the definitional sources that give a patent its meaning. The guiding principle of construction is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of . . . the effective filing date of the patent application.” Id. at 1313. Courts thus seek clarification of meaning in “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Id. at 1314 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)).

         A. The Words of the Claim

         The claim construction analysis normally begins with the claims themselves.[1] The claims of a patent “define the invention to which the patentee is entitled the right to exclude.” Phillips, 415 F.3d at 1312 (citing Innova, 381 F.3d at 1115).

         A court may construe a claim term to have its plain meaning when such a construction resolves a dispute between the parties. See O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008); see also U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (“Claim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, . . . [but] is not an obligatory exercise in redundancy.”).

         In some instances, it is the arrangement of the disputed term in the claims that is dispositive. “This court's cases provide numerous . . . examples in which the use of a term within the claim provides a firm basis for construing the term.” Phillips, 415 F.3d at 1314. For example, because claim terms are normally used consistently throughout the patent, the meaning of a term in one claim is likely the meaning of that same term in another. Id. In addition, “the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.” Id. at 1315.

         B. The Specification

         “The claims, of course, do not stand alone.” Id. “Rather, they are part of a fully integrated written instrument, consisting principally of a specification that concludes with the claims.” Id. (citations and quotations omitted). For that reason, the specification must always be consulted to determine a claim's intended meaning. The specification “is always highly relevant to the claim construction analysis. Usually, it is dispositive; it 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)).

         “In general, the scope and outer boundary of claims is set by the patentee's description of his invention.” On Demand Mach. Corp. v. Ingram Indus., Inc., 442 F.3d 1331, 1338 (Fed. Cir. 2006); see also Phillips, 415 F.3d at 1315-17 (“[T]he interpretation to be given a term can only be determined and confirmed with a full understanding of what the inventors actually invented and intended to envelop with the claim.” (quoting Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998))). “[T]he specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess.” Phillips, 415 F.3d at 1316. It may also reveal “an intentional disclaimer, or disavowal, of claim scope by the inventor.” Id. Therefore, the claims are to be construed in a way that makes them consistent with, and no broader than, the invention disclosed in the specification. On Demand, 442 F.3d at 1340 (“[C]laims cannot be of broader scope than the invention that is set forth in the specification.”); Phillips, 415 F.3d at 1316 (“[C]laims must be construed so as to be consistent with the specification, of which they are a part.” (quoting Merck & Co. v. Teva Pharm. USA, Inc., 347 F.3d 1367, 1371 (Fed. Cir. 2003))).

         Nevertheless, courts must be careful to “us[e] the specification [only] to interpret the meaning of a claim” and not to “import[] limitations from the specification into the claim.” Id. at 1323. A patent's “claims, not specification embodiments, define the scope of patent protection.” Kara Tech. Inc. v. Stamps.com Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009); see also Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1381 (Fed. Cir. 2009) (“[E]mbodiments appearing in the written description will not be used to limit claim language that has broader effect.”). “In particular, [the Federal Circuit] ha[s] 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.” Phillips, 415 F.3d at 1323. This is “because persons of ordinary skill in the art rarely would confine their definitions of terms to the exact representations depicted in the embodiments.” Id.

         Although this distinction “can be a difficult one to apply in practice[, ] . . . the line between construing terms and importing limitations can be discerned with reasonable certainty and predictability if the court's focus remains on understanding how a person of ordinary skill in the art would understand the claim terms.” Id. “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.” Id. at 1316 (quoting Renishaw, 158 F.3d at 1250).

         C. The Prosecution History

         After the specification and the claims themselves, the prosecution history is the next best indicator of term meaning. The prosecution history “consists of the complete record of the proceedings before the PTO and includes the prior art cited during the examination of the patent.” Id. at 1317. “Like the specification, the prosecution history provides evidence of how the PTO and the inventor understood the patent.” Id. “[T]he prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be.” Id.

         However, “because the prosecution history represents an ongoing negotiation between the 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 for claim construction purposes.” Id. As a result, courts generally require that “a patent applicant . . . clearly and unambiguously express surrender of subject matter” to disavow claim scope during prosecution. Voda v. Cordis Corp., 536 F.3d 1311, 1321 (Fed. Cir. 2008) (quoting Sorensen v. Int'l Trade Comm'n, 427 F.3d 1375, 1378-79 (Fed. Cir. 2005)).

         D. Extrinsic Sources

         Extrinsic evidence consists of “all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.” Phillips, 415 F.3d at 1317 (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995)). It “can help educate the court regarding the field of the invention and can help the court determine what a person of ordinary skill in the art would understand claim terms to mean.” Id. at 1319. However, extrinsic evidence suffers from a number of defects, including its independence from the patent, potential bias, and varying relevance. Id. at 1318-19. Such evidence is therefore “unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence, ” and courts may consider, or reject, such evidence at their discretion. Id. at 1319.

         III. Analysis

         There are 17 terms at issue in the patents:

Term

Plaintiffs' construction

Defendants' construction

Patent Number

“Average”

“a single value that summarizes or represents the general significance of a set of unequal values”

“a sum of all (heights/widths) of all features divided by the number of features, ” or indefinite

'446

“Height”

“separation between base and tip”

“a linear dimension of a feature measured from a tip to a base that is defined by the lowest point in the trough directly adjacent to the feature”

'446

“Base”

plain and ordinary meaning

“lowest point in the trough directly adjacent to a feature”

'446

“Protrude above the semiconductor surface”

“extend above the original surface of the semiconductor”

see “Height”

'446

“Width”

“diameter of a cross-section of a spike, substantially parallel to the substrate surface, at a location half way between the base and the tip”

“a largest linear dimension, taken substantially parallel to the substrate surface, of a cross-section of a feature at a location half way between a base and a tip of the feature”

'446

“Undulating topography”

“arrangement of features of varying heights and widths”

“variations in height”

'446

“At least a portion [of the surface

plain and ordinary meaning in view of plaintiffs'

“the textured region having variations in height”

'446

layer] exhibiting an undulating topography”

proposed construction of “undulating topography”

“So as to generate”

plain and ordinary meaning

“for the purpose of generating”

'467

“Selected to”

plain and ordinary meaning

“intentionally chosen”

'467

“Charge carriers”

“electrons or holes”

“electrons or holes contributed by the surface inclusions”

'467

“Photosensitive imager device/ photosensitive imager array”

“sensor that converts incident radiation into a digital image”

“a device that absorbs and detects electromagnetic radiation/an array of the photosensitive imager devices”

'591

“Coupled to/ coupling to”

“in contact with, directly or indirectly”

“affixed or joined to”

'591

“Positioned to interact with electromagnetic radiation/in a position to interact with electromagnetic radiation”

“located to provide enhanced response to and/or filtering of electromagnetic radiation”

“located on the substrate for the purpose of receiving electromagnetic radiation”

'591

“Electrical transfer element/transfer element”

“component of integrated circuitry used to read or transfer charge or signal from a photosensitive pixel”

“an electrical conductor for transferring an electrical signal from one component to another”

'591

“Positioned to maintain the electromagnetic radiation in the semiconductor substrate”

“positioned on the device in a region other than the radiation incident surface to reflect or retain the electromagnetic radiation in the substrate”

“located for the purpose of reflecting electromagnetic radiation back toward the semiconductor substrate”

'591

“Irregular asperity”

“surface characterized by features of various sizes”

“surface roughness with random variations in characteristics”

HPK patents

“Optically exposed”

plain and ordinary meaning

“in contact with ambient gas or covered by an optically transparent film”

HPK patents

         A. The '446 Patent

         There are seven terms at issue in the '446 patent: (1) “average, ” (2) “height, ” (3) “base, ” (4) “protrude above the semiconductor surface, ” (5) “width, ” (6) “undulating topography, ” (7) “at least a portion [of the surface layer] exhibiting an undulating topography.” Those terms appear in claims 1, 5, 6, 8, 9 and 11. Their use in claims 1, 5, 6, and 11 is illustrative. Claim 1 recites:

         A semiconductor substrate, comprising

a surface layer having at least a portion exhibiting an undulating topography characterized by a plurality of submicron-sized features having an average height less than about 1 micrometer and an average width in a range of about 100 nm to about 500 nm.

'446 patent col. 8 ll. 31-36 (emphasis added). Claim 5 recites:

The semiconductor substrate of claim 1, wherein said submicron-sized features comprise spikes extending from a base to a tip separated from the base by a distance less than about 1 micrometer.

Id. col. 8 ll. 44-47 (emphasis added). Claim 6 recites:

The semiconductor substrate of claim 5, wherein said spikes protrude above the semiconductor surface by a distance in a range of about 100 nm to about 300 nm.

Id. col. 8 ll. 48-50 (emphasis added). Claim 11 recites:

The semiconductor substrate of claim 1, wherein said submicron-sized features have an average width in a range of about 100 nm to about 300 nm.

Id. col. 8 ll. 63-65 (emphasis added).

         1. Average

Term

Plaintiffs' construction

Defendants' construction

“Average”

“a single value that summarizes or represents the general significance of a set of unequal values”

“a sum of all (heights/widths) of all features divided by the number of features, ” or indefinite

         The parties dispute whether the term “average” is used in the patent to connote a representative value among a set of unequal values, or whether it is a calculable figure equaling the arithmetic mean.[2]

         Neither party has argued that “average” has any special or idiosyncratic meaning in the art. Where the “claim language as understood by a person of skill in the art [is] readily apparent even to lay judges, . . . claim construction . . . involves little more than the application of the widely accepted meaning of commonly understood words.” Phillips, 415 F.3d at 1314. Under such circumstances, it may be appropriate to consult general-purpose dictionaries. Id.

         The parties advance different methods for calculating “average” as used in the claims. Plaintiffs contend that pursuant to the ordinary meaning of the term, “average” may be calculated by at least three methods: finding the arithmetic mean, the median, and the mode. Kruglick Decl. ¶ 35; Tr. 82-83. They further contend that the key concept concerning the term “average” is that it connotes a varied, as opposed to a homogenous, set. Defendants contend that the most common understanding of the term is that it equals the arithmetic mean. Def. Opening Markman Brief at 7, ECF 176. Both parties point to the same Merriam-Webster dictionary definition in support of their proposed definitions. Id. Ex. 2-3; Kruglick Decl. ¶ 35.

         The Merriam-Webster dictionary definition of “average, ” when used as a noun, has a primary definition of “a single value (such as a mean, mode, or median) that summarizes or represents the general significance of a set of unequal values, ” and a secondary definition of “an estimation of or approximation to an arithmetic mean.” Def. Opening Markman Brief Ex. 2-3. However, the term “average” as used in the claims is not a noun; it is an adjective. The primary definition of “average” when used as an adjective is “equaling an arithmetic mean.” Id. Other courts have found that the plain and ordinary meaning of “average, ” at least when used as an adjective, is “arithmetic mean.” See Biopolymer Eng'g, Inc. v. Immunocorp, 2007 WL 4562592, at *11 (D. Minn. Dec. 21, 2007) (“As to ‘average, ' its ordinary meaning is an arithmetic mean.”). Therefore, the definition to which both parties point provides strong evidence that “average” means “arithmetic mean.”

         The specification and claim terms provide further support for the conclusion that “average” signifies a single calculable figure, rather than a general linguistic concept connoting typicality among a varied set. The specification uses both the words “typical” and “average” to describe the height and width of features under different circumstances. See '446 patent col. 6 ll. 11-13 (describing certain figures as depicting spikes with “a typical height of about 500 nm and a typical diameter of about 200 nm”). The use of the term “typical” in the specification suggests that the patentee knew how to clearly connote typicality among a varied set where that was meant. In addition, the claims specify a numerical range within which the average height and width of features falls. See Id. col. 8 ll. 31-36 (defining the average height of the features is “less than about 1 micrometer” and the average width of the features is “in a range of about 100 nm to 500 nm”). That context further supports the conclusion that “average” is used according to its ordinary meaning to identify a single calculable figure, rather than the concept of typicality.

         Accordingly, the term “average” will be construed to mean “arithmetic mean.”

         2.Height and Base

Term

Plaintiffs' construction

Defendants' construction

“Height”

“separation between base and tip”

“a linear dimension of a feature measured from a tip to a base that is defined by the lowest point in the trough directly adjacent to the feature”

“Base”

plain and ordinary meaning

“lowest point in the trough directly adjacent to a feature”

         It appears that there are no substantive differences between plaintiffs' and defendants' positions concerning the proper construction of the terms "height" and "base." The parties agree that "height" is measured by finding the separation between the base of the feature and the tip. That definition is consistent with the ordinary meaning of the term and the specification. See '446 patent col. 111. 61-62 (speaking of "the average height of the spikes (i.e., the average separation between the base and the tip)"). The dispute concerns "how to select the base from which to measure." Def. Rebuttal Markman Brief at 7, ECF 189. Plaintiffs contend that the term "base" needs no additional construction, as a person of ordinary skill in the art would understand the term in context. Defendants contend that "base" should be defined by the lowest point of the nearest surrounding trough.

         The meaning of "base" would be obvious if the features emerged from an even plane, as the schematic in figure 2 of the patent depicts:

         (Image Omitted)

'446 patent fig. 2. In figure 2, "20" represents the base, 22 represents the tip, and "H" represents the "height" defined as the "separation between . . . base and . . . tip." Id. col. 4 11. 28-29. However, the invention is more complicated than the schematic depicts. Electron micrograph images of the features contained in the patent consistently depict features that emerge from uneven troughs such as those shown in figure 5A:

         (Image Omitted)

         '446 patent fig. 5 A.

         While the patent itself does not provide guidance as to how to select the relevant base from that uneven surface, the prosecution history does. During inter partes review of the '446 patent, Harvard submitted a schematic ...


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