Lexington Luminance LLC v. Amazon.Com Inc.

LEXINGTON LUMINANCE LLC, Plaintiff-Appellant v. AMAZON.COM INC., AMAZON DIGITAL SERVICES, INC., Defendants-Appellees

2014-1384

United States Court of Appeals for the Federal Circuit

February 9, 2015

NOTE: This disposition is nonprecedential.

Appeal from the United States District Court for the District of Massachusetts in No. 1:12-cv-12216-DJC, Judge Denise J. Casper.

ROBERT D. KATZ, Katz PLLC, Dallas, Texas, argued for plaintiff-appellant. Also represented by DAVID S. GODKIN, Birnbaum & Godkin, LLP, Boston, MA.

MICHAEL J. MCKEON, Fish & Richardson P.C., Washington, DC, argued for defendants-appellees. Also represented by ROBERT P. COURTNEY, Minneapolis, MN; KURT LOUIS GLITZENSTEIN, Boston, MA; INDRANIL MUKERJI,Washington, DC; JEFFREY H. DEAN, Amazon.com Inc., Seattle, WA.

Before LOURIE, CHEN, and HUGHES, Circuit Judges.

LOURIE, Circuit Judge.

Lexington Luminance LLC ("Lexington") appeals from the decision of the United States District Court for the District of Massachusetts construing claim 1 of U.S. Patent 6,936,851 B2 (the "'851 patent") and granting judgment on the pleadings that the claim was indefinite. See Lexington Luminance LLC v. Amazon.com Inc., 6 F. Supp. 3d 179 (D. Mass. 2014) ("Opinion"). Because we conclude that the district court erred in construing the claim and in holding the claim indefinite, we vacate the judgment of invalidity and remand.

BACKGROUND

Lexington owns the '851 patent relating to "the fabrication of semiconductor devices such as light-emitting devices in misfit systems." '851 patent col. 1 ll. 8-10. The '851 patent's specification explains that, in certain light-emitting devices, multiple layers of crystalline semiconductor material are grown on a crystalline substrate that has different crystal lattice constants. Id. col. 1 l. 17-col. 2 l. 9. The crystal lattices of the substrate and the adjacent semiconductor layer do not align perfectly, leading to lattice defects that can propagate in a direction perpendicular to the surface of the substrate through the semiconductor layers into the light-emitting active layer. Id.

Addressing this problem, the '851 patent teaches using a substrate that has a "textured surface district" in order to direct lattice defects to the sides and to reduce the defect density in the active layer. Id. col. 2 ll. 12-26. The textured district is fabricated "using conventional lithographic methods, followed by thermal anneal tosmooth out sharp corners and etching defects." Id. col. 2 ll. 27-34. The patent describes the textured district as comprising "a plurality of etched features such as trenches and mesa having a smooth rotation of micro-facets," id. col. 3 ll. 33-46, and also describes the surface features as "stripe or mesa," id. col. 2 ll. 30-32, col. 3 ll. 47-50. The patent provides several cross-sectional views of the etched features in its figures, including Figures 1C, 2A, and 2B.

Image materials not available for display.

Fig. 1C

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Fig. 2A

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Fig. 2B

Id. figs. 1C, 2A, 2B.

Claim 1 is at issue and reads as follows:

1. A semiconductor light-emitting device comprising:

a substrate;

a textured district defined on the surface, of said substrate comprising a plurality of etched trenches having a sloped etching profile with a smooth rotation of micro-facets without a prescribed angle of inclination;

a first layer disposed on said textured district; comprising a plurality of inclined lower portions so as to guide the extended lattice defects away from propagating into the active layer,said first layer and said substrate form a lattice-mismatched misfit system, said substrate is selected from the group comprising group III-V, group IV, group II-VI elements and alloys, ZnO, spinel and sapphire; and

a light-emitting structure containing an active layer disposed on said first layer.

Id. col. 8 ll. 36-52 (emphases added).

In 2012, Lexington sued Amazon.com Inc. and Amazon Digital Services, Inc. (collectively, "Amazon"), alleging that Amazon's Kindle e-readers infringed claim 1 of the '851 patent. Opinion, 6 F. Supp. 3d at 184-85. Amazon moved for judgment on the pleadings, urging that the claim was indefinite. The parties concurrently filed claim construction briefs. After a hearing, the district court issued an order in which it construed the claim and granted Amazon's motion. Id. at 185-90, 195.

The district court construed "trenches having a sloped etching profile with a smooth rotation of micro-facets without a prescribed angle of inclination" as follows: (1) the word "trenches" means "depressions bounded on the sides and bottom and open at the top"; (2) the word "having" means "consisting of"; (3) "micro-facets" means "very small planar crystal surfaces"; (4) "sloped etching profile with a smooth rotation of micro-facets" means "when viewed in cross-section, the side and bottom walls of the etched trenches are made up of micro-facets with a gradual, incremental rotation in slope from micro-facet to micro-facet such that there are no sharp corners"; and (5) "sloped etching profile . . . without a prescribed angle of inclination" means "when viewed in cross-section, the side and bottom walls of the etched trenches have no constant angle of inclination, and so they have no linear portions." Id. at 185-90.

In construing the claim, the district court rejected Lexington's proposed construction of "trenches" based on the '851 patent's disclosure that the substrate surface features can be mesas. The court noted that "[a]n aerial view of 'mesa' . . . does not appear in the specification," and adopted an ordinary meaning construction based on the definitions of "trench" in general-purpose dictionaries. Id. at 186. The district court also rejected Lexington's proposed constructions of "having" and "sloped etching profile with a smooth rotation of micro-facets without a prescribed angle of inclination," which would encompass the embodiments disclosed in Figures 2B and 4B, in which the surface features are spaced by areas of a flat bottom. Id. at 187-90. The court reasoned that "a flat bottom is inconsistent with the purpose of the invention," which is "to guide the lattice defects away from the active layer," because "a proportionately higher amount of . . . defects would propagate directly up at a 90 degree angle" to the active layer. Id. at 187, 189. The court also reasoned that the claim language required the trenches to have no sharp corners or linear portions and it thus mandated the exclusion of the embodiments disclosed in Figures 2B and 4B. Id. at 189.

The district court next considered Amazon's motion for judgment on the pleadings in which Amazon alleged that claim 1 was indefinite on two grounds. Amazon first argued that the expression "so as to guide the extended lattice defects away from propagating into the active layer" rendered the claim indefinite because the claim failed to specify which extended lattice defects were guided away. Id. at 191. The court, however, reasoned that "it is clear that the goal of the invention is to 'reduce' the number of lattice defects" and held that the claim was not indefinite for not specifying "exactly how many defects [were] reduced." Id. at 191-92. The court then construed the term to mean "such that free propagation of extended lattice defects into the active layer is significantly reducedrelative to a device made by the same process without the textured districts." Id. at 192.

Amazon also argued that the claim was indefinite in its use of the phrase "said substrate is selected from the group comprising group III-V, group IV, group II-VI elements and alloys, ZnO, spinel and sapphire." The district court granted Amazon's motion on that ground. Id. at 192-95. Specifically, the court concluded that the phrase at issue constituted a Markush group. Id. at 193. The court then reasoned that a Markush group using the term "comprising" instead of "consisting of" was not closed, id., and thus the substrate may be one of the enumerated elements or alloys, but may also be an indeterminate number of other elements or alloys, id. at 194. The court thus concluded that the claim was indefinite because it "fail[ed] to narrow down the composition of the claimed substrate to any degree of substantial certainty." Id. (citing M.P.E.P. § 2173.05(h) (Markush groups)).

In March 2014, the district court entered final judgment of invalidity, and Lexington timely appealed to this court. We have jurisdiction under 28 U.S.C. § 1295(a)(1).¹

DISCUSSION

I. Indefiniteness

We apply regional circuit law, here the law of the First Circuit, when reviewing a district court's grant of a motion for judgment on the pleadings. Merck & Co. v. HiTech Pharmacal Co., 482 F.3d 1317, 1320 (Fed. Cir. 2007). The First Circuit reviews a district court's grant of judgment on the pleadings de novo. Pérez-Acevedo v. Rivero-Cubano, 520 F.3d 26, 29 (1st Cir. 2008). "A motion for judgment on the pleadings is treated much like a Rule 12(b)(6) motion to dismiss." Id. To survive a motion for judgment on the pleadings, the pleadings must contain factual allegations that raise a right to relief above the speculative level. Id.

Indefiniteness is a question of law that we review de novo. Interval Licensing LLC, v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014).² A patent must "conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicantregards as his invention." 35 U.S.C. § 112, ¶ 2 (2006).³ A patent claim is invalid for indefiniteness if its language, when read in light of the specification and the prosecution history, "fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention." Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. ___, 134 S. Ct. 2120, 2124 (2014). Patents are presumed to be valid and the burden of establishing invalidity rests on the challenger. 35 U.S.C. § 282; Nautilus, 134 S. Ct. at...