WINSTON & STRAWN LLP DAVID S. BLOCH (SBN: 184530) · Winston & Strawn LLP 101 California Street San Francisco, CA 94111-5802 WINSTON & STRAWN LLP DAVID S. BLOCH (SBN: 184530) [email protected]

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PLAINTIFF’S OPENING CLAIM CONSTRUCTION BRIEF - CASE NO.: 3:16-CV-00791-RS

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WINSTON & STRAWN LLP DAVID S. BLOCH (SBN: 184530) [email protected] AMANDA L. GROVES (SBN: 187216) [email protected] 101 California Street San Francisco, CA 94111-5840 Telephone: (415) 591-1000 Facsimile: (415) 591-1400 JAMES C. LIN (SBN: 271673) [email protected] 275 Middlefield Rd., Suite 205 Menlo Park, CA 94025 Telephone: (650) 858-6500 Facsimile: (650) 858-6550 LOWELL D. JACOBSON (Pro Hac Vice) [email protected] 35 W. Wacker Dr. Chicago IL 60601 Telephone: (312) 558-5600 Facsimile: (312) 558-5700 Attorneys for Plaintiff INTERNATIONAL TEST SOLUTIONS, INC.

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

SAN FRANCISCO DIVISION

INTERNATIONAL TEST SOLUTIONS, INC. Plaintiff, v. MIPOX INTERNATIONAL CORPORATION and MGN INTERNATIONAL, INC. Defendants.

Case No.: 3:16-cv-00791-RS PLAINTIFF INTERNATIONAL TEST SOLUTIONS, INC.’S OPENING CLAIM CONSTRUCTION BRIEF Action Filed: February 17, 2016 Before: Hon. Judge Richard Seeborg

Case 3:16-cv-00791-RS Document 62 Filed 12/05/16 Page 1 of 30

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i PLAINTIFF’S OPENING CLAIM CONSTRUCTION BRIEF - CASE NO.: 3:16-CV-00791-RS

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TABLE OF CONTENTS

Page I. INTRODUCTION .................................................................................................................... 1

II. BRIEF OVERVIEW OF THE CLAIMED INVENTIONS ...................................................... 2

III. APPLICABLE LAW ................................................................................................................ 3

IV. ASSERTED CLAIMS AND PROPOSED CONSTRUCTIONS ............................................. 4

V. ARGUMENT ............................................................................................................................ 9

A. Disputed terms from the `869 patent ............................................................................ 9

1. Substrate .......................................................................................................... 10

2. Micro-features ................................................................................................. 10

3. A plurality of geometric microfeatures that extend above a surface of the cleaning layer with predetermined geometrical and dimensional properties......................................................................................................... 11

4. Predetermined characteristics that clean debris from the pin contact elements and support hardware when the pin contact elements and support hardware contact the cleaning layer so that the pin contact elements and support hardware are cleaned during a normal operation of the testing machine ..................................................................................... 13

5. A plurality of geometric microfeatures that extend above a surface of the cleaning layer with geometrical and dimensional properties so that a contact area and surrounding support hardware are cleaned without modification or damage .................................................................................. 14

6. Having characteristics that clean debris from the pin contact elements and support hardware when the pin contact elements and support hardware contact the cleaning layer so that the pin contact elements and support hardware are cleaned ................................................................... 14

B. Disputed terms from the `683 patent .......................................................................... 14

1. Release liner layer ........................................................................................... 14

2. Cleaning pad layer .......................................................................................... 15

3. Forming a cleaning device having a working surface by forming a first release liner layer ........................................................................................... 16

4. Forming a cleaning pad layer having a working surface on the first release liner layer ........................................................................................... 17

5. Forming an adhesive layer on the cleaning pad layer .................................... 17

6. Forming a second release liner layer on the adhesive layer wherein the first release liner layer is removed to create the matte finish of the


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ii PLAINTIFF’S OPENING CLAIM CONSTRUCTION BRIEF - CASE NO.: 3:16-CV-00791-RS

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working surface ............................................................................................... 18

7. Matte finish ..................................................................................................... 19

C. Disputed terms from the `966 patent .......................................................................... 20

1. Substrate .......................................................................................................... 20

2. Microroughness which burnishes the probe elements .................................... 21

3. Predetermined characteristics that cause the pad to clean debris from the probe elements when the probe elements contact the pad so that the probe elements are cleaned ............................................................................. 22

4. Predetermined characteristics that cause the pad to clean debris from the probe elements when the probe elements contact the pad so that the probe elements are cleaned, without modification or damage ........................ 23

5. A predetermined configuration appropriate for the particular probe elements .......................................................................................................... 24

VI. CONCLUSION ....................................................................................................................... 24


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iii PLAINTIFF’S OPENING CLAIM CONSTRUCTION BRIEF - CASE NO.: 3:16-CV-00791-RS

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TABLE OF AUTHORITIES

Page(s)

Cases

Accent Packaging, Inc. v. Leggett & Platt, Inc., 707 F.3d 1318 (Fed. Cir. 2013)......................................................................................................12

Accumed LLC v. Stryker Corp., 483 F.3d. 800 (Fed. Cir. 2007).......................................................................................................16

ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082 (Fed. Cir. 2003)........................................................................................................3

Cent. Admixture Pharmacy Servs., Inc. v. Advanced Cardiac Sols., P.C., 482 F.3d 1347 (Fed. Cir. 2007)................................................................................................11, 12

CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356 (Fed. Cir. 2007)......................................................................................................10

Dealertrack, Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012)......................................................................................................17

Fonar Corp. v. Johnson & Johnson, 821 F.2d 627 (Fed. Cir. 1987)........................................................................................................23

Harris Corp. v. Ixys Corp., 114 F.3d 1149 (Fed. Cir. 1997)......................................................................................................16

IGT v. Bally Gaming Int’l, Inc., 659 F.3d 1109 (Fed. Cir. 2011)......................................................................................................13

Imaginal Systematic, LLC v. Leggett & Platt, Inc., 805 F.3d 1102 (Fed. Cir. 2015)......................................................................................................10

Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323 (Fed. Cir. 2001)......................................................................................................16

Laitram Corp. v. NEC Corp., 163 F.3d 1342 (Fed. Cir. 1998)......................................................................................................16

Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898 (Fed. Cir. 2004)..................................................................................................15, 19

Maxwell v. J. Baker, Inc., 86 F.3d 1098 (Fed. Cir. 1996)........................................................................................................21

Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373 (Fed. Cir. 2003)......................................................................................................18


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iv PLAINTIFF’S OPENING CLAIM CONSTRUCTION BRIEF - CASE NO.: 3:16-CV-00791-RS

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Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) ...................................................................................................................11

Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)............................................................................................3, 12, 13

Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298 (Fed. Cir. 1999)........................................................................................................4

Rexnord Corp. v. Laitram Corp., 274 F.3d 1336 (Fed. Cir. 2001)........................................................................................................4

Teleflex Inc. v. Ficosa N Am. Corp., 299 F.3d 1313 (Fed. Cir. 2002)........................................................................................................4

Texas Instruments Inc. v. U.S. ITC, 988 F.2d 1165 (Fed. Cir. 1993)......................................................................................................18

Other Authorities

Webster’s Collegiate Dictionary (10th ed. 2002) ................................................................................18

Random House Webster’s College Dictionary (2nd ed. 1997) ............................................................22


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1 PLAINTIFF’S OPENING CLAIM CONSTRUCTION BRIEF - CASE NO.: 3:16-CV-00791-RS

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I. INTRODUCTION

This is a patent infringement case involving cleaning sheets for semiconductor test

equipment. Semiconductor chips are manufactured on silicon wafers, which contain hundreds of

individual integrated circuits:

Before the wafers are diced into individual chips, it is important to test the integrated circuits. To do

so, semiconductor manufacturers employ test equipment specially designed to be integrated into the

microchip manufacturing assembly line. These test devices use tiny probes to ensure the operation

of each individual integrated circuit:

With repeated use, however, the tips of these probes become blunted and corroded. To clean them,

ITS conceived and developed a series of multi-layer substrates that adhere to the same base as a

silicon wafer, and thus can be inserted into the semiconductor manufacturing assembly line. When

test equipment probes the cleaning sheets, the probe tips are cleaned without the need to take the

entire probe device offline:


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ITS is a pioneer in this industry and owns fundamental patents on probe card cleaning sheets.

It has for the last 17 years enjoyed a dominant position in the marketplace. In late 2015, however,

ITS became aware of copies of ITS cleaning sheets in the Far East and the United States. When ITS

ascertained the source of these copycat cleaning sheets in February 2016, it sued Mipox and MGN

(together, “Mipox”) for infringement of U.S. Patent Nos. 6,777,966 (the “’966 patent”), 7,202,683

(the “’683 patent”) and 8,801,869 (the “’869 patent”).

ITS’s patents are simple and straightforward, and very few claim terms here in fact require

construction. The defendants nevertheless ask the Court to construe eighteen different claims over

the three asserted patents. In their proposed constructions, they consistently fall into one of two

errors: either they read limitations into the claims—limitations that are found in particular

embodiments or at times are not found in the patent at all—or they assert that the term is indefinite.

But claim construction begins with the words of the claim, and the specification is the single best

guide to the meaning of those claims. When viewed in context, the claims are clear, and

Defendants’ arguments cannot be supported. In each instance, Defendants’ proposals should be

rejected, its expert’s unsupported opinions should be ignored, and either plain meaning or ITS’s

proposed construction should be adopted.

II. BRIEF OVERVIEW OF THE CLAIMED INVENTIONS

The ’966, ’683, and ’869 patents relate to the semiconductor industry, and in particular, to

methods and devices for cleaning integrated circuit (IC) testing devices. As part of the IC

manufacturing process, each device undergoes electrical testing to ensure that it was manufactured

properly and will perform correctly. Electrical testing is accomplished by using automatic test


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equipment (ATE). ATE includes contact pins or probes that contact the IC devices to run pre-

determined test routines on them. A major challenge encountered with testing IC devices is ensuring

optimal electrical contact between the contact pin elements of the ATE and the surfaces of the IC

devices. Over time, debris and other residuals accumulate on the pin contact elements,

contaminating the contact area. This can result in erroneous readings, thereby decreasing the

reliability of the tests.

Further, high performance demands for contactor technology associated with this testing has

led to the development of uniquely shaped contact elements with predetermined and customized

mechanical performance and elastic properties. These new contact elements have specialized

contact geometries and mechanical behavior to provide for consistent and stable electrical contact.

Thus, cleaning devices need to take into account the various shapes and behaviors of the contact pin

elements. The patents here claim different configurations and characteristics to clean contact

elements, depending on the type and shape of contact, the composition and the quantity of debris to

be removed, and the affinity of the debris to the contact surface. The asserted patents solve many of

the problems and obstacles faced by the industry previously, including a need to stop the machine so

that debris could be removed manually.

III. APPLICABLE LAW

Claim construction seeks to ascribe the “ordinary and customary meaning” to claim terms as

they would be understood to a person of ordinary skill in the art at the time of invention. Phillips v.

AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). “[T]he claims themselves provide

substantial guidance as to the meaning of particular claim terms,” id. at 1314, and therefore “the

context of the surrounding words of the claim also must be considered in determining the ordinary

and customary meaning of those terms,” ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed.

Cir. 2003). But “the person of ordinary skill in the art is deemed to read the claim term not only in

the context of the particular claim in which the disputed term appears, but in the context of the entire

patent, including the specification.” Phillips, 415 F.3d at 1313. Indeed, the specification is “the

single best guide to the meaning of a disputed term,” and “[u]sually, it is dispositive.” Id. at 1315.

Thus, claims “must be read in view of the specification, of which they are a part.” Id. “[U]nless


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compelled to do otherwise, a court will give a claim term the full range of its ordinary meaning as

understood by an artisan of ordinary skill.” Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342

(Fed. Cir. 2001). Where the intrinsic record unambiguously describes the scope of the patented

invention, reliance on extrinsic evidence is improper. Pitney Bowes, Inc. v. Hewlett-Packard Co.,

182 F.3d 1298, 1308 (Fed. Cir. 1999). There is a “‘heavy presumption’ that a claim term carries its

ordinary and customary meaning” “[i]n the absence of an express intent to impart a novel meaning to

claim terms.” Teleflex Inc. v. Ficosa N Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002).

IV. ASSERTED CLAIMS AND PROPOSED CONSTRUCTIONS A. The `869 patent: “Apparatuses, device, and methods for cleaning tester interface

contact elements and support hardware”

The disputed terms of the `869 patent appear in independent claims 1 and 4. Claim 1 reads: 1. A cleaning device for cleaning pin contact elements and support hardware in a semiconductor testing apparatus, the cleaning device comprising:

a cleaning layer with a configuration for the pin contact elements, the cleaning layer having a plurality of geometric micro-features that extend above a surface of the cleaning layer with predetermined geometrical and dimensional properties; a substrate having a configuration to be introduced into the testing apparatus during the normal testing operating of the testing apparatus, wherein the substrate comprises a surrogate semiconductor wafer or packaged IC device; the cleaning layer, secured to the substrate, having predetermined characteristics that clean debris from the pin contact elements and support hardware when the pin contact elements and support hardware contact the cleaning layer so that the pin contact elements and support hardware are cleaned during a normal operation of the testing machine.

Claim 4 covers:

4. A cleaning device for cleaning pin contact elements and support hardware in a semiconductor testing apparatus, the cleaning device comprising:

a cleaning layer with a configuration for the pin contact elements, the cleaning layer having a plurality of geometric micro-features that extend above a surface of the cleaning layer with geometrical and dimensional properties so that a contact area and surrounding support hardware are cleaned without modification or damage and wherein the cleaning layer further comprises a plurality of abrasive particles having a Mohs Hardness of 7 or greater for cleaning contact elements and support structures of testing interfaces;


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a substrate having a configuration to be introduced into the testing apparatus during normal testing operating of the testing apparatus, wherein the substrate comprises a surrogate semiconductor wafer or packaged IC device; and the cleaning layer, secured to the substrate, having characteristics that clean debris from the pin contact elements and support hardware when the pin contact elements and support hardware contact the cleaning layer so that the pin contact elements and support hardware are cleaned, without modification to normal operation of the testing machine.

The boldfaced terms have been identified by one or both parties as requiring construction; a term in

bold italics is claimed to require separate construction even within a disputed phrase.

The parties agree that the `869 patent phrases “wherein the substrate comprises a surrogate

semiconductor wafer or packaged IC device,” “a plurality of abrasive particles having a Mohs

Hardness of 7 or greater for cleaning contact elements and support structures of testing interfaces,”

and “without modification to normal operation of the testing machine” should be given their plain

and ordinary meanings. They disagree on the proper construction of the following 6 words and

phrases in that patent:

Claim term Where found ITS construction Mipox construction 1. substrate `869 pat. cl. 1

`869 pat. cl. 4 Plain meaning a substitute

semiconductor wafer or substitute packaged IC device

2. micro-features `869 pat. cl. 1 `869 pat. cl. 4

structures or features with micron-scale dimensions and/or spacing

microscopic geometric structures

3. a plurality of geometric micro-features that extend above a surface of the cleaning layer with predetermined geometrical and dimensional properties

`869 pat. cl. 1 Plain meaning Indefinite or

a plurality of microscopic structures having a preselected pattern to be uniformly and regularly spaced apart and not randomly oriented for removing and collecting debris built upon the working surface of the cleaning layer

4. predetermined characteristics that clean debris from the pin contact elements and support hardware when the pin contact


a preselected size, shape and/or composition that has been selected based on a specific


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elements and support hardware contact the cleaning layer so that the pin contact elements and support hardware are cleaned during a normal operation of the testing machine

configuration of pin contact elements and support hardware to clean debris from the pin contact elements and support hardware when the pin contact elements and support hardware contact the cleaning layer so that the pin contact elements and support hardware are cleaned during a normal operation of the testing machine

5. a plurality of geometric micro-features that extend above a surface of the cleaning layer with geometrical and dimensional properties so that a contact area and surrounding support hardware are cleaned without modification or damage


a plurality of microscopic structures having a preselected pattern to be uniformly and regularly spaced apart and not randomly oriented built upon the surface of the cleaning layer so that a contact area and surrounding support hardware are cleaned by the microscopic structures without modification or damage to the contact area or surrounding support hardware

6. having characteristics that clean debris from the pin contact elements and support hardware when the pin contact elements and support hardware contact the cleaning layer so that the pin contact elements and support hardware are cleaned

`869 pat. cl. 4 Plain meaning Indefinite (no alternative construction)

With the exception of micro-features, ITS proposes that all terms and phrases be given their

plain and ordinary meaning. Mipox, relying on expert testimony, claims that 4 of these phrases are


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indefinite. As discussed below, contrary testimony from Prof. Darran Cairns rebuts this proposition.

B. The `683 patent: “Cleaning system, device and method” All of the disputed terms of the `683 patent appear in claim 1, which reads: 1. A method for fabricating a cleaning device whose working surface is capable of being detected by a prober device, the method comprising:

forming a cleaning device having a working surface by forming a first release liner layer, forming a cleaning pad layer having a working surface on the first release liner layer, forming an adhesive layer on the cleaning pad layer, and forming a second release liner layer on the adhesive layer wherein the first release liner layer is removed to create the matte finish of the working surface; and removing a layer from the working surface wherein the removal of the layer imparts a matte finish to the working surface of the cleaning device.

Again, boldfaced terms have been identified by one or both parties as requiring construction; a term

in bold italics is claimed to require separate construction even within a disputed phrase. The parties

offer competing constructions for the following 7 claims: Claim term Where found ITS construction Mipox construction1. release liner layer `683 pat. cl. 1 a layer that, when

removed, exposes another layer or surface

a release layer comprising polymeric film that is easily separable from an adjacent layer contacting the release layer

2. cleaning pad layer `683 pat. cl. 1 a layer that cleans probe or testing elements by contact with and/or penetration into its surface

a layer adapted to clean probes that come in contact therewith

3. forming a cleaning device having a working surface by forming a first release liner layer

`683 pat. cl. 1 Plain meaning producing a cleaning device having a working surface by first producing a first release liner layer comprising a textured polymeric film

4. forming a cleaning pad layer having a working surface on the first release liner layer

`683 pat. cl. 1 Plain meaning producing a cleaning pad layer having a working surface adopting the texture of the first release liner layer comprising textured polymeric film

5. forming an adhesive layer on the cleaning pad layer

`683 pat. cl. 1 Plain meaning producing a layer of adhesive on the cleaning pad layer

6. forming a second release liner layer on the adhesive layer


producing a second release


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wherein the first release liner layer is removed to create the matte finish of the working surface

liner layer comprising a polymeric film on the previously produced adhesive layer wherein the first release liner layer comprising a textured polymeric film is removed to create the matte finish of the working surface

7. matte finish `683 pat. cl. 1 Plain meaning Indefinite or

another textured substantially non-reflective and non-glossy surface.

Other than release liner layer and cleaning pad layer, ITS proposes that all terms and

phrases be given their plain and ordinary meaning. Mipox, relying on expert testimony, claims that

2 of these phrases are indefinite. ITS submits contrary testimony from Prof. Darran Cairns rebutting

this proposition.

C. The `966 patent: “Cleaning system, device and method”

The disputed terms of the `966 patent appear in claims 26 and 28. Claim 26 reads: 26. A cleaning device for cleaning the probe elements in a semiconductor testing apparatus, the cleaning device comprising:

a substrate having a configuration to be introduce into the testing apparatus during the normal testing operation of the testing apparatus, wherein the substrate comprises a semiconductor wafer having a surface; and a pad, secured to the substrate, the pad having predetermined characteristics that cause the pad to clean debris from the probe elements when the probe elements contact the pad so that the probe elements are cleaned without modification or damage, during the normal operation of the testing machine, wherein the semiconductor wafer surface has microroughness which burnishes the probe elements.

Claim 28 reads: 28. A cleaning device for cleaning probe elements comprising:

a substrate having a predetermined configuration appropriate for the particular probe elements, wherein the substrate comprises a semiconductor wafer having a surface; and a pad, secured to the substrate, the pad having predetermined characteristics that cause the pad to clean debris from the probe elements when the probe elements are cleaned, wherein the semiconductor wafer surface has microroughness which burnishes the probe elements.


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As before, boldfaced terms have been identified by one or both parties as requiring construction.

The parties offer competing constructions for the following 6 claim terms:

Claim term Where found ITS construction Mipox construction1. substrate `966 pat. cl. 26

`966 pat. cl. 28

Plain meaning the substrate comprises a slice of semiconductor material, such as a crystalline silicon, used in electronics for the fabrication of integrated circuits

2. secured to the substrate

`966 pat. cl. 26 `966 pat. cl. 28

Plain meaning attached to the substrate so it does not move relative to the substrate

3. which burnishes the probe elements

’966 pat. cl. 26 `966 pat. cl. 28

Plain meaning abrasive surface that abrades the probe elements by contacting the probe elements

4. predetermined characteristics that cause the pad to clean debris from the probe elements when the probe elements contact the pad so that the probe elements are cleaned, without modification or damage


characteristics preselected specifically for the specific probe elements that cause the pad to clean debris from the probe elements when the probe elements touch the pad so that the probe elements are cleaned, without modification or damage

5. predetermined characteristics that cause the pad to clean debris from the probe elements when the probe elements contact the pad so that the probe elements are cleaned


characteristics preselected specifically for the specific probe elements that cause the pad to clean debris from the probe elements when the probe elements touch the pad so that the probe elements are cleaned.

6. a predetermined configuration appropriate for the particular probe elements

`966 pat. cl. 28 Plain meaning Indefinite (no alternative construction)

ITS proposes that all terms and phrases be given their plain and ordinary meaning. Mipox,

relying on expert testimony, claims that 3 of these phrases are indefinite. ITS submits contrary

testimony from Prof. Darran Cairns rebutting this proposition.

V. ARGUMENT

A. Disputed terms from the `869 patent


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1. Substrate

The word “substrate,” which appears in both the `869 and ’966 patents, requires no

construction and should be given its plain and ordinary meaning. The ’869 patent itself describes the

configuration of the substrate, explaining that it is “a surrogate semiconductor wafer or packaged IC

device.” ’869 pat. 15:35-38, 16:21-24. The specification broadly describes the substrate as being of

“any material” that can support a cleaning pad and is preferably (but not necessarily) a

semiconductor wafer. ’869 pat. 8:57-62. A person of ordinary skill would have no difficulty

understanding the term in context.

Mipox instead proposes that, for purposes of the ’869 patent, substrate means “a substitute

semiconductor wafer or substitute packaged IC device.” But the claims already say that the substrate

“comprises a surrogate semiconductor wafer or packaged IC device.” Mipox’s definition of

substrate thus would render the claim repetitive and circular; it also runs afoul of basic claim

construction rules, which hold that the term “comprising” is open-ended. CIAS, Inc. v. Alliance

Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007) (“In the patent claim context the term

‘comprising’ is well understood to mean ‘including but not limited to.’”).

There is no reason to construe this term, which has a plain and ordinary meaning.

2. Micro-features

Micro-features are features or structures on the cleaning device that provide better cleaning

efficiency “depending on the type and shape of contact elements being cleaned, the composition and

the quantity of debris to be removed, and the affinity of the debris to the contact surface.” `869 pat.

6:43-46. “The size and geometry of the micro-features may vary according the configuration and

material of the contact elements to achieve a pad that will remove the debris but will not damage the

probe elements.” Id. 11:47-50. The ’869 patent describes multiple kinds of micro-features: “a

plurality of uniformly shaped and regularly spaced, geometric micro-features, such as micro-

columns, micro-pyramids, or other such structural micro-features,” id. 7:20-23, which may be

“mutually decoupled and formed with a predetermined moment of inertia using predetermined arrays

of streets 351, avenues 352, and diagonals 353.” Id. 13:9-11; see also Figs. 7A-7C. The

specification is clear that these micro-features are measured in microns: “an average micro-feature


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could have a cross-section widths of 1.0-μm or more, with a height of 400-μm or less and an average

abrasive particle size of less than 15.0-μm.” Id. 12:61-64; see also id. 11:37-39 (“the major axis has

a dimension of 100-micron and the ‘street’ and ‘avenue’ widths are less than 50-μm”).

Defendants seek to limit micro-features to “geometric structures,” but the Federal Circuit

“has repeatedly ‘cautioned against limiting the claimed invention to preferred embodiments or

specific examples in the specification.’” Imaginal Systematic, LLC v. Leggett & Platt, Inc., 805 F.3d

1102, 1109-10 (Fed. Cir. 2015). Moreover, such a construction would be repetitive, as well,

considering that claim 1 refers to “a plurality of geometric micro-features.”

The Court should adopt ITS’s construction of micro-features as structures or features with

micron-scale dimensions and/or spacing.

3. A plurality of geometric microfeatures that extend above a surface of the cleaning layer with predetermined geometrical and dimensional properties

Once micro-features is understood, the remainder of this phrase is easily understood.

“Claims mean precisely what they say.” Cent. Admixture Pharmacy Servs., Inc. v. Advanced

Cardiac Sols., P.C., 482 F.3d 1347, 1355 (Fed. Cir. 2007). Here, claim 1 requires that a plurality of

“geometric microfeatures” with predetermined geometrical and dimensional properties must “extend

above a surface of the cleaning layer.” The specification explains: the cleaning material may have a multi-layered structure in which the surface layer is populated with a plurality of uniformly shaped and regularly spaced, geometric micro-features, such as micro-columns, micro-pyramids, or other such structural micro-features, of a pre-determined aspect ratio (diameter to height), cross-section (square, circular, triangular, etc.) and abrasive particle loading to improve debris removal and collection efficiency.

’869 pat. 7:19-26; see also Figs. 5A-8B. There is nothing confusing about this phrase, especially

given that the micro-features here must be geometric and are measured on the micron scale. Indeed,

even Mipox’s expert seems to agree in his report that “predetermined geometrical and dimensional

properties” would be understood by a POSITA to mean that “at least one shape and one dimension

of the micro-features are predetermined.”

Mipox contends first that this phrase is indefinite. For a claim to be indefinite, it must, when

“read in light of the specification …and prosecution history, fail to inform, with reasonable certainty,


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those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc.,

134 S. Ct. 2120, 2124 (2014). As Dr. Cairns confirms, it is not. Bloch Decl., ¶ 2 & Ex A (Cairns’

Rep. ¶¶ 46-55). Mr. Feldman says in his report that he does not know whether the plurality of

geometric microfeatures requires at least two separate microfeatures or not. Yet numerous figures in

the specification depicting different embodiments show surface layers “populated with a plurality of

uniformly shaped and regularly spaced, geometric micro-features, such as micro-columns, micro-

pyramids, or other such structural micro-features, of a pre-determined aspect ratio (diameter to

height), cross-section (square, circular, triangular, etc.) and abrasive particle loading to improve

debris removal and collection efficiency.” ’869 pat. 7:20-26; see also Figs. 5A-8B. The

specification discloses embodiments having a plurality of micro-features of differing geometrical

and dimensional properties. Compare Fig. 8A (depicting cleaning pad with micro-column micro-

features) with Fig. 8B (depicting cleaning pad with micro-pyramid micro-features). And thus the

plurality of geometric microfeatures is not limited to one or the other but instead encompasses both.

Accent Packaging, Inc. v. Leggett & Platt, Inc., 707 F.3d 1318, 1326 (Fed. Cir. 2013) (“a claim

interpretation that excludes a preferred embodiment from the scope of the claim is rarely, if ever,

correct”). Defendants also claim that a person of ordinary skill would be confused by the phrase

“geometric micro-features that extend above a surface of the cleaning layer.” But it does not take a

POSITA to understand that the geometric micro-features extend above the cleaning layer surface,

and that all of these features are measured in microns. In any event, “ambiguity in the claim

language should [] be resolved in a manner that would preserve the patent’s validity. Phillips v.

AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005).

Despite the alleged indefiniteness of this phrase, Mipox nevertheless proposes a construction.

But that definition interprets the phrases “predetermined geometrical and dimensional properties”

that “extend above a surface of the cleaning layer” to mean “a preselected pattern to be uniformly

and regularly spaced apart and not randomly oriented for removing and collecting debris built upon

the working surface of the cleaning layer.” This is simply wrong: the micro-features of the cleaning

device are used “to remove debris and/or clean the contact surfaces of the pin elements without


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excessively wearing out the test probe,” not the working surface of the cleaning layer. ’869 pat. 8:3-

5. The specification does not require a particular pattern, nor does it disclaim a random geometry.

There is no reason to construe this phrase, which has a plain and ordinary meaning.

4. Predetermined characteristics that clean debris from the pin contact elements and support hardware when the pin contact elements and support hardware contact the cleaning layer so that the pin contact elements and support hardware are cleaned during a normal operation of the testing machine

This phrase is clear on its face and requires no construction. “Claims mean precisely what

they say.” Cent. Admixture, 482 F.3d at 1355. Mipox says that a POSITA would not understand the

phrase “predetermined characteristics,” because a myriad of “characteristics” are disclosed in the

specification and the claim language fails to reasonably convey “which ‘predetermined

characteristics’ are required.” Feldman Rep. ¶ 87. But—as Dr. Cairns confirms—a simple parsing

of the claim language of claim 1 provides in no uncertain terms what “predetermined characteristics”

means. Bloch Decl., ¶ 2 & Ex A (Cairns’ Rep. ¶¶ 59-61); IGT v. Bally Gaming Int'l, Inc., 659 F.3d

1109, 1117 (Fed. Cir. 2011) (“Claim language must be construed in the claim in which it appears.”).

Claim 1 claims a cleaning device comprising “a cleaning layer with a configuration for the

pin contact elements, the cleaning layer having a plurality of geometric micro-features that extend

above a surface of the cleaning layer.” ’869 pat. 15:30-33. The cleaning layer has “predetermined

characteristics that clean debris from the pin contact elements.” Id. 5:39-41. Those “predetermined

characteristics” are for cleaning the pin contact elements and thus refer to the surface of the cleaning

layer and the “plurality of geometric micro-features” that are recited earlier in the claim. The

specific “characteristics” that are “predetermined” would, of course, depend on the particular ATE

probes being cleaned—but of course the `869 patent is not limited to one particular piece of ATE.

The idea here is that the ATE pin contact elements can be cleaned during normal operation, rather

than requiring that the machine be taken offline for cleaning. And that idea is very clearly conveyed

in plain English. When “the ordinary meaning of claim language as understood by a person of skill

in the art may be readily apparent even to lay judges, [] claim construction in such cases involves

little more than the application of the widely accepted meaning of commonly understood words.”


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Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005). There is no need to construe this

phrase.

5. A plurality of geometric microfeatures that extend above a surface of the cleaning layer with geometrical and dimensional properties so that a contact area and surrounding support hardware are cleaned without modification or damage

Mipox claims not to understand this phrase, which envisions microfeatures configured so that

the “cleaning system and cleaning pad not only removes and collects adherent particulates from the

contact element and supporting hardware surfaces, but maintains the shape and geometric properties

of contact surface.” ’869 pat. 13:29-32. Put another way, the microfeatures on the cleaning pad

“remove the debris on the contact element without damage to the geometrical features of the contact

element.” Id. 11:7-8. Dr. Cairns confirms that this phrase has no meaning requiring specialized

expertise, nor is it difficult to understand. Bloch Decl., ¶ 2 & Ex A (Cairns’ Rep. ¶¶ 63-64). It

should be accorded its plain meaning.

6. Having characteristics that clean debris from the pin contact elements and support hardware when the pin contact elements and support hardware contact the cleaning layer so that the pin contact elements and support hardware are cleaned

Lastly, this phrase from claim 4 means exactly what it says: the claimed cleaning pads clean

ATE pin contact elements when those contact elements come into contact with the pad. Mipox

offers the same objection to this phrase as to other phrases containing the phrase “predetermined

characteristics.” Feldman Rpt. ¶ 97. But Feldman admits that this claim term is similar to the first

’869 patent term addressed above, with the lack of ‘predetermined’ being the difference. Id. Thus,

Feldman claims in essence that he does not understand the word “characteristics.” It is hard to credit

this testimony, and Dr. Cairns does not. Bloch Decl., ¶ 2 & Ex A (Cairns’ Rep. ¶ 69). This phrase is

easily understandable and should be given is plain and ordinary meaning.

B. Disputed terms from the `683 patent

1. Release liner layer

ITS’s cleaning pads contain multiple layers with different functions: cleaning surfaces,

binding surfaces, tear-away protective surfaces, and so on. In the context of claim 1, the release


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liner layer is a layer of the cleaning pad that, when removed, exposes another layer or surface. This

is consistent with both the words of the claim and the teaching of the specification. ’683 pat. 10:44-

46 (“When the user is ready to begin cleaning probe elements with the cleaning device 80 … the

user removes the first release liner layer 88 as shown in FIG. 8C which exposes the cleaning pad

layer 86 so that the prober may be cleaned”); see also id. 10:21-23 (“the-second release liner layer

(also known as the back release liner layer) may be subsequently removed to expose the adhesive

layer 84”), 10:30-31.

Mipox wants a much more detailed description: “a release layer comprising polymeric film

that is easily separable from an adjacent layer contacting the release layer.” But nothing in the claim

requires a “polymeric film” as opposed to some other substance; nothing requires that the release

liner layer be “easily separable” as opposed to merely “separable”; and nothing requires that the

release liner layer should be “contacting the release layer” as opposed to some other part of the

cleaning pad. Nor does Feldman explain why any of these phrases would be included in the

definition of “release liner layer” by a POSITA—and in any event Dr. Cairns disagrees with his

diagnosis. Bloch Decl., ¶ 2 & Ex A (Cairns’ Rep. ¶ 43). While “polymeric film” appears in one

embodiment, it is improper to limit a claim term to a single embodiment. Liebel-Flarsheim Co. v.

Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004). And while the release liner layer is separable

from the other layers (which can be determined from the plain language of the claims), there is no

discussion or context to determine how easily it should be separated (and from whose perspective).

Release liner layer should be defined, simply, as a layer that, when removed, exposes

another layer or surface.

2. Cleaning pad layer

In the context of claim 1, the cleaning pad layer cleans probe or testing elements by letting

them come into contact with and/or penetrate its surface. The specification explains that “when the

probe tips contact the pad surface, the tips of the probes are cleaned,” `683 pat. 3:57-58, and the

cleaning pad layer thus is made “so that the probe tips may penetrate into or through the pad, which

cleans.” Id. 3:60-62, 7:1-4. The ’683 patent contemplates that cleaning can result from either

contact or penetration: “The pad has predetermined characteristics, which clean debris from the


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probe elements and maintain or modify the shape of the probe element when the elements contact or

penetrate into or through the pad.” Id. 4:11-15.

Mipox proposes instead that the cleaning pad layer is “a layer adapted to clean probes that

come in contact therewith.” ECF 48-1 at 10. But “adapted to clean” introduces functional claiming

language that is not present in the claim itself, and Feldman’s report sheds no light on why a

POSITA would interpret this phrase that way—nor why a POSITA would ignore the “penetrate into”

embodiment entirely. Dr. Cairns disagrees with Feldman’s criticism and concludes, with ITS, that a

cleaning pad layer is a layer that cleans probe or testing elements by contact with and/or

penetration into its surface.

3. Forming a cleaning device having a working surface by forming a first release liner layer

Given the definition of “release liner layer” discussed above, there is no good reason to offer

a separate definition for the broader phrase in which it appears. Rather, this phrase is part of a

method of creating a cleaning device, and means only that the cleaning device includes at least one

release liner layer. The specification explains that the cleaning device may include any number of

different layers. ’683 pat. 8:44-58, 9:52-64.

Mipox proposes to rewrite this phrase as: “producing a cleaning device having a working

surface by first producing a first release liner layer comprising a textured polymeric film.” This

proposal suffers from multiple flaws. First, it improperly imposes an order of steps on the method

claim. “Unless the steps of a method actually recite an order, the steps are not ordinarily construed

to require one.” Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342 (Fed. Cir.

2001). Second, it improperly suggests that one step must be completed before the next is begun,

even though there is no such requirement in the claim itself or in the specification. Third, it imports

a limitation regarding the material of the layer—“textured polymeric film”—that is not in the claim.

And when it comes to the meaning of “textured,” Mr. Feldman testified that “[e]verything has a

texture.” Bloch Decl., ¶ 3 & Ex B (Feldman Tr. at 116:20). There is no reason to limit the claims to

a preferred embodiment, as Mipox hopes to do here. Laitram Corp. v. NEC Corp., 163 F.3d 1342,

1348 (Fed. Cir. 1998) (“mere repetition in the written description of a preferred aspect of a claimed


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invention does not limit the scope of an invention that is described in the claims in different and

broader terms”). Finally, it replaces the term “forming” with “producing” when “form” is the term

used throughout the specification. ’683 pat. 9:52-10:23, 8:53-54. The Federal Circuit has cautioned

courts not to adopt constructions that “contribute nothing but meaningless verbiage to the definition

of the claimed invention.” Harris Corp. v. Ixys Corp., 114 F.3d 1149, 1152 (Fed. Cir. 1997).

This phrase is clear on its face and should be given its plain meaning.

4. Forming a cleaning pad layer having a working surface on the first release liner layer

Again, this phrase is perfectly clear, especially when “cleaning pad layer” and “release liner

layer” are construed as ITS proposes. It does not require further construction. Accumed LLC v.

Stryker Corp., 483 F.3d. 800, 808-09 (Fed. Cir. 2007) (refusing to construe a term more narrowly

than its plain and ordinary meaning absent clear intent to do so by the patentee).

Mipox wants to transform “forming a cleaning pad layer having a working surface on the

first release liner layer” into “producing a cleaning pad layer having a working surface adopting the

texture of the first release liner layer comprising textured polymeric film.” It substitutes

“producing” for “forming” and inserts the phrase “adopting the texture of the first release liner

layer,” which it insists again must be “textured polymeric film.” But the specification says no such

thing, instead offering various options where “the surface finish, smoothness, texture, and/or surface

morphology of the cleaning pad” may be “obtained,” “developed,” or “imparted to reflect the

smoothness, texture, and/or surface morphology of the release liner.” ’683 pat. 10:50-53. Mirroring

the texture of the first release liner is just one option. And even if this were the preferred

embodiment, there is no reason to so limit the claims. Dealertrack, Inc. v. Huber, 674 F.3d 1315,

1327 (Fed. Cir. 2012) (“As a general rule, it is improper to read limitations from a preferred

embodiment described in the specification”). Mipox’s interpretation should be rejected and this

phrase accorded its plain meaning.

5. Forming an adhesive layer on the cleaning pad layer

ITS originally proposed a construction for this phrase, but upon reflection there is no need:

once “cleaning pad layer” is construed, there is nothing mysterious about the rest of the phrase.


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Mipox apparently agrees: its proposed construction just repeats the claim’s words, replacing

“forming” with “producing.” But the specification consistently uses “forming,” not “producing,”

and the words are not synonymous. Bloch Decl., ¶ 4 & Ex C (Merriam-Webster’s Collegiate

Dictionary (Tenth Edition, 2002)). The phrase does not require construction.

6. Forming a second release liner layer on the adhesive layer wherein the first release liner layer is removed to create the matte finish of the working surface

If “release liner layer” is defined to mean “a layer that, when removed, exposes another layer

or surface,” this phrase is very clear: one release liner layer exposes adhesive, and the other protects

the working surface of the cleaning pad layer. The specification explains that “[t]he first release

liner layer 88 protects a working surface 89 of the pad layer 86 from debris/contaminants until the

cleaning device 80 is ready to be used for cleaning a prober in a clean room.” `683 pat. 10:24-27.

“The first release liner may have a matte finish or other ‘textured’ features to improve the optical

detection of the cleaning device and/or improve cleaning efficiency.” Id. 9:57-60. “When the user

is ready to begin cleaning probe elements…the user removes the first release liner layer 88 as shown

in FIG. 8C which exposes the cleaning pad layer 86 so that the prober may be cleaned. In

accordance with the invention, the removal of the first release liner layer 88 leaves the working

surface 89 of the cleaning pad layer with a matte finish.” Id. 10:41-49. The “second release liner

layer 82 (made of the same material as the first release liner layer) is formed on the adhesive layer

84 wherein the second release liner layer (also known as the back release liner layer) may be

subsequently removed to expose the adhesive layer 84.” ’683 pat. 10:19-23. “The adhesive layer 84

may then be placed against the substrate 22 to adhere the cleaning device 80 to the substrate. Id.

10:32-34. In short, this phrase describes nothing more than placing releasable protective liners on

the working and adhesive (top and bottom) surfaces of the cleaning device. No construction is

required.

Mipox’s objection to this phrase is based either on a misunderstanding or a tendentious

misreading of the claim. Mr. Feldman reads the “wherein” clause as modifying “working surface”

rather than “release liner layer.” Bloch Decl., ¶ 3 & Ex B (Feldman Tr. at 107:14-22). He thus

treats the “wherein” clause as its own process step and concludes that “there are two removing


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steps.” Id. at 108:10-14. This, he thinks, requires two separate removing steps that create “a second

matte finish” (id. at 119:13-18) on “a second matte finish surface” (id. at 119:14)—a configuration

that would exclude all of the disclosed embodiments.1 Mr. Feldman admits that his interpretation is

not described in the specification. Id. at 111:9-112:3. And an interpretation that excludes the

preferred embodiment, much less all embodiments, “is rarely, if ever, correct.” Hill-Rom, 755 F.3d

at 1379.

Alternatively, Mipox proposes a definition that adds three limitations: the second release

liner layer comprises “a polymeric film”; the first release liner layer comprises “a textured polymeric

film”; and the adhesive layer is “previously produced.” But the claims do not require any of these

things, and hence Mipox’s effort to import limitations from embodiments should be rejected in favor

of the phrase’s plain meaning. Liebel-Flarsheim, 358 F.3d at 906.

7. Matte finish

Mipox alleges that the phrase “matte finish” is indefinite, but throughout his deposition

Mipox’s expert had no problem understanding it. Bloch Decl., ¶ 3 & Ex B (Feldman Tr. at 117:6-8)

(“It seems to imply they did not just want to say matte finish they wanted to say there’s other ways

of texturing”), 147:2-3 (“So the word matte finish are being equated with nonreflective”), 131:20-21

(“The specification illustrates or describes multiple ways of creating a matte finish”). He agreed that

each ATE manufacturer has automatic optical detection features designed to detect the matte finish

of the cleaning device. Id. at 120:8-9 (“…there is some threshold that the prober [sic] need to be

able to detect …”), 90:11-14 (“[The prober] would have to be able to discriminate. It would not

have to have an absolute value, but it would have to be able to say is there something there or is

there not something there”), 97:6-8 (“There’s probably more than one model and brand of prober

that uses a similar algorithm for determining where the surface is.”). Dr. Cairns confirms that the

1 In fact, the “wherein” clause merely describes the intended result of a separate step, which appears elsewhere in the claim, i.e., “removing a layer from the working surface wherein the removal of the layer imparts a matte finish to the working surface of the cleaning device.” It does not call for a second removal step. Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373 (Fed. Cir. 2003) (a whereby “clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.”); Texas Instruments Inc. v. U.S. ITC, 988 F.2d 1165, 1173 (Fed. Cir. 1993) (“The ‘whereby/to preclude’ clauses of claims 12, 14 and 17 merely describe the result of arranging the components of the claims in the manner recited in the claims”).


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concept of a “matte finish” is well-known in the art and is easily comprehensible to a layman. Bloch

Decl., ¶ 2 & Ex A (Cairns’ Rep. ¶¶ 40-41).

And to the extent there is any ambiguity—that “matte finish” means something different in

the semiconductor industry versus the general public—the claim language, specification, and

prosecution history all explain the meaning of the term, namely, “a finish to permit the prober to

determine the location of the working surface of the cleaning pad.” Claim 1 at preamble (“A method

for fabricating a cleaning device whose working surface is capable of being detected by a prober

device”); ’683 pat. 4:48-49 (“a matte finish which permits the prober/tester to optically determine

the location of the surface of the cleaning pad”); Bloch Decl., ¶ 5 & Ex D (‘683 office action

response dated 2016-01-06 at 8:10-11) (“a matte finish to permit the prober to determine the location

of the working surface of the cleaning pad”).

Mipox argues in the alternative that “matte finish” should be construed as “another textured

substantially non-reflective and non-glossy surface.” This definition ignores the intrinsic evidence,

improperly adds limitations, and injects ambiguity where none exists. “Textured,” “non-reflective,”

and “non-glossy” do not appear in the claim language: “Everything has a texture,” Bloch Decl., ¶ 3

& Ex B (Feldman Tr. at 116:20); “glossy” is not discussed at all in the specification; and “non-

reflective” is directly contrary to the specification, which states that the matte finish may reflect light

but is not as reflective as a mirror.2 ’683 pat. 10:57-11:8.

In short, matte finish is clear on its face, and if the Court concludes that it must be

construed, Mipox’s proposal should be rejected in favor of something like: a finish to permit the

prober to determine the location of the working surface of the cleaning pad.

C. Disputed terms from the `966 patent

1. Substrate and secured to the substrate

As discussed above, ITS contends that the term “substrate” has a plain meaning and does not

require construction. By contrast, Mipox contends not only that the term requires construction, but

that it should be construed differently in the `869 and `966 patents. But to the extent there is

2 Mr. Feldman is no help for Mipox here; optical engineering is beyond his expertise. See Bloch Decl., ¶ 3 & Ex B (Feldman Tr. at 83:13-14) (“I’m not an optical engineer or a physicist”); 100:20-22 (same).


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anything notable about the claimed “substrates,” the claims themselves provide whatever extra

explanation is needed. Claims 26 and 28 of the ’966 patent, for example, explain that the claimed

substrate “comprises a semiconductor wafer having a surface.” ’966 pat. 10:26-29; 10:56-59. The

specification confirms that “[t]he substrate may be any material that can support the pad and has

sufficient strength to resist breaking when the probes come into contact with the pad and generate a

contact force. Thus, the substrate may be plastic, metal, glass, silicon, ceramic or any other similar

material. In a preferred embodiment, the substrate 22 may be a semiconductor wafer.” Id. 5:2-9.

Mipox asks the court to limit “substrate” in the `966 patent to “a slice of semiconductor

material, such as a crystalline silicon, used in electronics for the fabrication of integrated circuits,” in

turn defining “semiconductor wafer having a surface” as “a slice of semiconductor material, such as

a crystalline silicon, used in electronics for the fabrication of integrated circuits.” But the words

“slice”, “semiconductor material” and “crystalline” appear nowhere in the claims, are contrary to the

specification (“the substrate may be plastic, metal, glass, silicon, ceramic or any other similar

material”), and would not be imported by a POSITA to define a single, simple word. As Dr. Cairns

confirms, they would not. Bloch Decl., ¶ 2 & Ex A (Cairns’ Rep. ¶¶ 8-10). Substrate does not need

to be construed.

The claim language, specification, and prosecution history impose no limitations on how the

pad is secured to the substrate. Nonetheless, Mipox also proposes that the pad must be “attached to

the substrate so that it does not move relative to the substrate.” Dkt. No. 48-1 at 5. If anything, the

specification is contrary to Mipox’s proposal, because the cleaning pad can (but need not) be made

of an “elastomeric material” that allows the probe heads to “penetrate the elastomeric material.”

’966 pat. 5:27-36. Contra Feldman (¶ 33), “penetration” implies some amount of movement, as Dr.

Cairns confirms. Bloch Decl., ¶ 2 & Ex A (Cairns’ Rep. ¶ 11). The jury will need no help

understanding “secured to the substrate.”

2. Microroughness which burnishes the probe elements

Claims 26 and 28 require that the “semiconductor wafer surface has microroughness which

burnishes the probe elements.” The specification explains that the wafer surface “may have a flat

mirror finish or a slightly abrasive roughness finish with microroughness of about 1-3µm.” ’966 pat.


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5:10-11. This microroughness “may burnish/abrade the probe tips during the cleaning process.” Id.

5:11-13. Though the word “burnish” is perhaps uncommon, it still has a plain meaning: “to polish (a

surface) by friction; to make smooth and bright, esp. by rubbing with a tool.” Bloch Decl., ¶ 6 & Ex

E (Random House Webster’s College Dictionary at 177 (2nd ed. 1997)).

Mipox wants this phrase to mean an “abrasive surface that abrades the probe elements by

contacting the probe elements.” ECF 48-1 at 5. But that proposal eliminates the concept of

microroughness, instead capturing any degree of abrasiveness. It is improper to ignore express

limitations in the claims through claim construction. Maxwell v. J. Baker, Inc., 86 F.3d 1098, 1105

(Fed. Cir. 1996). And the patent distinguishes ITS’s invention from prior art systems that used

abrasive cleaning methods—methods that wore down probe tips without removing debris and hence

required additional cleaning steps. ’966 pat. 2:47-57. Mipox’s construction is unsupported by the

claims and inconsistent with the specification. The Court should instead adopt plain meaning.

3. Predetermined characteristics that cause the pad to clean debris from the probe elements when the probe elements contact the pad so that the probe elements are cleaned

There is no ambiguity concerning this phrase, which captures the myriad different ways a

cleaning pad can be configured to clean particular ATE probe tips. The specification explains that

predetermined characteristics may include “predetermined mechanical and/or chemical

characteristics, such as abrasiveness, density, elasticity, tackiness, planarity, and/or chemical

properties, such as being acetic or basic, so that when the probe tips contact the pad surface, the tips

of the probes are cleaned and the debris and contaminates are removed from the tips.” ’966 pat.

3:25-31. A person of ordinary skill in the art would know what combination(s) of such

characteristics to use to accomplish probe cleaning. Bloch Decl., ¶ 2 & Ex A (Cairns’ Rep. ¶¶ 19-

21). No further construction is required.

And Mipox, despite suggesting that the phrase is indefinite, also offers a definition that

largely tracks the claim itself: “characteristics preselected specifically for the specific probe elements

that cause the pad to clean debris from the probe elements when the probe elements touch the pad so

that the probe elements are cleaned.” ECF 48-1 at 9-10. This definition replaces “contact” with

“touch” (a change that has no substantive basis) and adds “specific” probe elements that are


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“preselected specifically”—an intentionality that is nowhere in the claims, and would appear to

narrow the claims to customized rather than mass-market probe tip cleaning devices. This is directly

contrary to the specification, which provides that “[t]he cleaning device and method may also be

used with other devices.” ’966 pat. 3:9-10.

This phrase is clear on its face and does not require construction.

4. Predetermined characteristics that cause the pad to clean debris from the probe elements when the probe elements contact the pad so that the probe elements are cleaned, without modification or damage

As with the earlier claims, this phrase does not require construction. It reflects the same

basic concepts discussed earlier, namely, the idea that the cleaning pad cleans ATE probe elements

without damaging them. The ’966 patent specification explains that, in one embodiment, “[t]he pad

has predetermined characteristics, which clean debris from the probe elements and maintain or

modify the shape of the probe element when the elements contact or penetrate into or through the

pad.” ’966 pat. 3:50-54. Alternatively, “the physical properties of the pad, such as density and

abrasiveness, may be predetermined so as to clean the probe element and remove bonded or

embedded debris from the probe elements without causing significant damage to the probe

elements.” Id. 3:34-40. The idea that the pad can be configured to clean without damage is

consistent with other claims in the ’966 patent. Claim 1, for example, uses similar “predetermined

characteristics … without modification or damage” language, id. 8:14-19, and dependent claim 8

adds the limitation that “the pad further comprises an abrasive material that maintains the shape of or

shapes the tips of the probe elements…” Id. 8:46-50. Thus, various predetermined characteristics

(including but not limited to abrasive materials) are within the scope of the claim. Fonar Corp. v.

Johnson & Johnson, 821 F.2d 627, 632 (Fed. Cir. 1987) (meaning of a claim term should be

interpreted so it is consistent with its appearance in other claims of the same patent). Nor is the

claim indefinite, as Dr. Cairns confirms. Bloch Decl., ¶ 2 & Ex A (Cairns’ Rep. ¶¶ 12-14).

Mipox argues in the alternative that this phrase should mean “characteristics preselected

specifically for the specific probe elements that cause the pad to clean debris from the probe

elements when the probe elements touch the pad so that the probe elements are cleaned, without

modification or damage.” But—again—this definition seems to narrow the scope of the claim to


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customized products, which is clearly contrary to the specification and the claim itself. The Court

should decline to construe this phrase and instead allow the jury to consider its plain meaning.

5. A predetermined configuration appropriate for the particular probe elements

Claim 28 requires a substrate with “a predetermined configuration appropriate for the

particular probe elements.” This phrase means only that particular cleaning pads will be selected for

particular applications and probe elements. That is consistent with the words of the claims, as well

as the specification which explains that “configuration” refers to the structure of the “cleaning

medium”: a “substrate having a configuration to be introduced into the testing apparatus during

normal testing operation, and a pad, secured to the substrate.” ’966 pat. 3:48-50. The cleaning

medium may have “the same configuration as the wafers with the semiconductor dies normally

tested by the testing apparatus” and may also include “predetermined properties such as

abrasiveness, tack, hardness, that clean the probe.” Id. 3:58-64.

Mipox argues that this phrase is indefinite and provides no alternate construction. It relies

entirely on Feldman, who says that a POSITA would not understand the phrase “predetermined

configuration.” But he offers no explanation of why this should be so, and Dr. Cairns disagrees.

Bloch Decl., ¶ 2 & Ex A (Cairns’ Rep. ¶¶ 18). Rather, Cairns views the phrase as straightforward: it

refers to a configuration tailored to a particular piece of ATE. And that is, of course, consistent with

the plain meaning of the phrase. Nothing more is required, and the Court should not further construe

the phrase.

VI. CONCLUSION

For the foregoing reasons, the Court should reject Mipox’s indefiniteness arguments and

tortured definitions, and instead construe the disputed claim terms in accordance with their plain

meanings and the simple definitions proposed by ITS.

Dated: December 5, 2016 WINSTON & STRAWN LLP

By: /s/ David S. Bloch David S. Bloch

Case 3:16-cv-00791-RS Document 62 Filed 12/05/16

WINSTON & STRAWN LLP DAVID S. BLOCH (SBN: 184530) · Winston & Strawn LLP 101 California Street San Francisco, CA 94111-5802 WINSTON & STRAWN LLP DAVID S. BLOCH (SBN: 184530) [email protected]

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