**United States Court of Appeals for the Federal Circuit**

03-1083, -1469, -1470, -1471

POWER MOSFET TECHNOLOGIES, L.L.C.

and THIRD DIMENSION SEMICONDUCTOR, INC.,

> Plaintiffs-Appellants,

v\.

SIEMENS AG, INFINEON TECHNOLOGIES CORPORATION,

and INFINEON TECHNOLOGIES AG,

Defendants-Cross Appellants,

and

STMICROELECTRONICS, N.V., STMICROELECTRONICS, S.R.L,

and STMICROELECTRONICS, INC. (formerly known as

SGS-Thomson Microelectronics, Inc.),

Defendants-Cross Appellants,

and

INTERNATIONAL RECTIFIER CORPORATION

and INTERNATIONAL RECTIFIER CORPORATION NORTH CAROLINA,

> Defendants-Cross Appellants.

[Allen M. Sokal]{.underline}, Finnegan, Henderson, Farabow, Garrett &
Dunner, L.L.P., of Washington, DC, argued for plaintiffs-appellants.
With him on the brief were [Donald R. Dunner]{.underline} and [Smith R.
Brittingham IV]{.underline}. Of counsel on the brief was [Alfonso Garcia
Chan]{.underline}, Shore Deary, L.L.P., of Dallas, Texas.

[Robert Neuner]{.underline}, Baker Botts L.L.P., of New York, New York,
argued for defendants-cross appellants Siemens AG, et al. With him on
the brief were [Neil P. Sirota]{.underline} of New York, New York; and
[Jeffrey D. Baxter]{.underline}, of Dallas, Texas.

[Constantine L. Trela, Jr.]{.underline}, Sidley Austin Brown & Wood LLP,
of Chicago, Illinois, argued for defendants-cross appellants
STMicroelectronics, N.V., et al. With him on the brief was [James P.
Bradley]{.underline}, of Dallas, Texas. Of counsel on the brief were
[Bruce S. Sostek]{.underline} and [Jane Politz Brandt]{.underline},
Thompson & Knight LLP, of Dallas, Texas. Of counsel was [Li
Chen]{.underline}, Sidley Austin Brown & Wood LLP, of Dallas, Texas; and
[Max Ciccarelli]{.underline}, Thompson & Knight LLP, of Dallas, Texas.

[David E. Killough]{.underline}, Vinson & Elkins L.L.P., of Austin,
Texas, for defendants-cross appellants International Rectifier
Corporation, et al. Of counsel was [Glenn W. Trost]{.underline}, Coudert
Brothers LLP, of Los Angeles, California.

Appealed from: United States District Court for the Eastern District of
Texas

Judge David Folsom

United States Court of Appeals for the Federal Circuit

03-1083, -1469, -1470, -1471

POWER MOSFET TECHNOLOGIES, L.L.C.

and THIRD DIMENSION SEMICONDUCTOR, INC.,

> Plaintiffs-Appellants,

v\.

SIEMENS AG, INFINEON TECHNOLOGIES CORPORATION

and INFINEON TECHNOLOGIES AG,

> Defendants-Cross-Appellants,

and

STMICROELECTRONICS, N.V., STMICROELECTRONICS, S.R.L.,

and STMICROELECTRONICS, INC. (formerly known as

SGS-Thomson Microelectronics, Inc.),

> Defendants-Cross Appellants,

and

INTERNATIONAL RECTIFIER CORPORATION

and INTERNATIONAL RECTIFIER CORPORATION NORTH CAROLINA,

Defendants-Cross Appellants.

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

DECIDED: August 17, 2004

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

Before MICHEL, GAJARSA, and PROST, [Circuit Judges]{.underline}.

GAJARSA, [Circuit Judge]{.underline}.

Power Mosfet Technologies, L.L.C. ("PMT"), appeals the final judgment of
the United States District Court for the Eastern District of Texas that
United States Patent No. 5,216,275 (the "'275 patent") was not infringed
by defendants-cross appellants Siemens AG, Infineon Technologies
Corporation, and Infineon Technologies AG (collectively, "Infineon"), or
by defendants-cross appellants STMicroelectronics, N.V.,
STMicroelectronics, S.R.L., and STMicroelectronics, Inc. (collectively,
"ST"). [Power Mosfet Techs. v. Siemens AG]{.underline}, No. 2:99-CV-168
(E.D. Tex. Sept. 30, 2002). PMT also appeals the district court's denial
of its motion for a new trial. In the event that this court accepts
certain arguments made by PMT, Infineon and ST conditionally
cross-appeal the district court's judgment that the '275 patent was not
anticipated by United States Patent No. 4,754,310 (the "Coe patent"). ST
also conditionally cross-appeals the district court's judgment that the
'275 patent is not anticipated by United States Patent No. 3,171,068
(the "Denkewalter patent"). Infineon alone cross-appeals the district
court's denial of its motion for attorney fees. Finally, International
Rectifier Corporation and International Rectifier Corporation North
Carolina (collectively, "IR") cross-appeal the district court's denial
of its motion for attorney fees under Federal Rule of Civil Procedure
54(d)(1) following the dismissal with prejudice of PMT's claims against
it. For the reasons stated herein, we affirm the district court's
judgment of noninfringement, its denial of PMT's motion for a new trial,
and its denial of Infineon's motion for attorney fees and IR's motion
for costs.

I. BACKGROUND

PMT is a Texas limited liability corporation with its corporate offices
in Marshall, Texas, and is the owner of the '275 patent. The '275 patent
is entitled "Semiconductor Power Devices with Alternating Conductivity
Type High-Voltage Breakdown Regions."

A. [Semiconductor Technology]{.underline}

![](media/image1.jpeg){width="2.4166666666666665in"
height="2.178472222222222in"} Semiconductor power devices control the
flow of electricity through an electronic circuit. They are typically
constructed of silicon, which, by itself, is not a very good conductor
of electricity. Silicon's conductivity, however, can be enhanced by a
process known as doping. Doping adds impurities to the crystal structure
of pure silicon and creates either a surplus or deficiency of free
electrons in the silicon material. Both conditions enable the flow of
current through the material. When doping results in a surplus of
electrons, the material is described as "n-type" because it has a net
negative charge. When the result is a deficiency of electrons (i.e., a
surplus of "holes") the material is described as "p-type" because it has
a net positive charge. Within the n-type and p-type categories, the
material may be further categorized as heavily doped (n^+^ or p^+^
regions) or lightly doped (n^-^ or p^-^ regions).

The semiconductor power device described in the '275 patent is known as
a MOSFET. A cross-section from a traditional MOSFET is reproduced above
from figure 1 of the '275 patent. The '275 patent describes the
fabrication process of the traditional MOSFET device as follows: an n^-^
layer 5 is grown on an n^+^ substrate 4, followed by the growth of a
p^+^ layer 3 on the top of the n^-^ layer 5. The above-described process
may also be performed with p-type materials substituted for the n-type
materials, and n-type materials for the p-type. '275 patent, col. 5, ll.
23-29. In the traditional MOSFET design, layer 5 consists of a single
conductivity type, either n- or p-type.

Also shown in figure 1 are the electrical connections of the
semiconductor device. The terminals labeled "S" are the "source"
terminals, where a positive voltage source is connected to the device.
The terminal labeled "D" is the "drain" terminal, where the negative
voltage connection is made. Terminal "G" is the "gate" terminal, and
controls the current flow or, simply put, turns the device on and off.
When on, current flows from the source to drain and, when off, current
flow is blocked. The '275 patent refers to region 5 as the "voltage
sustaining layer" because, when not conducting current, it sustains a
voltage between the S and D terminals.

The on and off states of a MOSFET device are controlled by applying a
voltage to the gate terminal. When applied, the gate voltage creates an
electric field inside the device that manipulates the electrons in the
doped silicon to create conducting channels for current through the
silicon material. When the gate voltage is removed, the electrons return
to their normal positions and the voltage sustaining layer again
prevents current from flowing through the device.

![](media/image2.jpeg){width="2.459722222222222in" height="2.625in"}Two
characteristics of MOSFETs are relevant to understanding the invention
disclosed by the '275 patent. The "on-resistance" ("R~on~") of the
device is the resistance of the conducting channel through the
semiconductor material. The higher the on-resistance, the greater the
power loss (and accompanying heat generation) resulting from the current
flow through the device. The second characteristic is the "breakdown
voltage" ("V~b~"), which is the maximum voltage that the semiconductor
device can sustain between its terminals. In traditional semiconductor
devices, there is an exponential relationship between V~b~ and R~on~.
[See]{.underline} '275 patent, col. 1, ll. 29-31. Higher V~b~ values are
a desirable characteristic in a semiconductor device, but the resulting
benefit must be balanced against the corresponding undesirable increase
in R~on~ values.

The invention of the '275 patent is a design for a voltage sustaining
layer that results in a new relationship between V~b~ and R~on~.
According to the '275 patent, the new relationship allows lower R~on~
values without the same magnitude of accompanying loss in V~b~ that
results in traditional semiconductor devices. [Id.]{.underline} at col.
1, ll. 55-66. Figure 4, reproduced from the '275 patent above, depicts a
semiconductor device according to the invention. An n-type layer 5 is
grown on an n^+^ substrate 4. Layer 5 is then "trenched" to make deep
U-grooves where the bottoms of the grooves "just reach \[contact layer\]
4." [Id.]{.underline} at col. 5, l. 35. The trenches are then filled
with p-material, resulting in alternating n-regions 6 and p-regions 7
that make up the voltage sustaining layer. Finally, a p^+^ region 3 is
grown over the alternating n- and p-regions. As with the traditional
MOSFET devices, the '275 patent explains that p-type material can be
substituted for n-![](media/image3.jpeg){width="3.25in"
height="1.3833333333333333in"}type material, and vice versa.

The '275 patent designates its voltage sustaining layer the "composite
buffer layer, or shortly, CB-layer," due to its alternating
semiconductor regions. [Id.]{.underline} at col. 1, ll. 57-58. The '275
patent further discloses several geometries for the differing
conductivity areas, which are reproduced above. Independent claims 11
and 14 and dependent claims 12, 13, and 16 are at issue in this appeal.
Claim 11 is representative,[^1] and is set out below:

> A semiconductor power device comprising:
>
> a first contact layer of a first conductivity type;
>
> a second contact layer of a second conductivity type; and
>
> a voltage sustaining layer between said first and second contact
> layers,
>
> said voltage sustaining layer [comprising]{.underline}
>
> first semiconductor regions of the first conductivity type and second
> semiconductor regions of a second conductivity type,
>
> said first and second semiconductor regions being alternately
> arranged,
>
> the first contact layer [contacting all]{.underline} said first
> semiconductor regions and said second semiconductor regions to form a
> first [interface]{.underline},
>
> the second contact layer [contacting with all]{.underline} the first
> and second semiconductor regions to form a second
> [interface]{.underline}
>
> wherein the first and second semiconductor regions are doped with
> dopants and the effective dopant distribution in every region in the
> voltage sustaining region is [non-uniform]{.underline}, the dopant
> concentration in the first semiconductor regions is greater near the
> first contact layer than near the second contact layer and the dopant
> concentration in the second semiconductor regions is greater near the
> second contact layer than near the first contact layer.

[Id.]{.underline} at col. 7, l. 58 to col. 8, l. 14.

B. [The District Court Proceedings]{.underline}

PMT sued Infineon, IR, and ST in the Eastern District of Texas. On
August 17, 2000, PMT moved the court for dismissal of IR from the
lawsuit, explaining that subsequent discovery had revealed that IR had
"not actually made any commercial sales of any accused products." PMT
requested that the court dismiss its claims against IR with prejudice to
its right to reassert them. Accompanying the motion was a "Certificate
of Conference," which explained that, "while the IR Defendants do not
consent to the order or join in the Motion, the IR Defendants will not
file any opposition, and further agree that the Court may act on this
motion without delay." The district court granted the motion and
dismissed IR from the lawsuit on the same day. The dismissal of IR left
only ST and Infineon as the remaining defendants in the action.

The proceedings in the Eastern District began with a
[Markman]{.underline} hearing, during which a Special Master construed
the disputed claim terms of the '275 patent. [Power Mosfet Techs. v.
Siemens AG]{.underline}, No. 2:99CV168-TH (E.D. Tex. Mar. 12, 2001)
("Special Master Report"). The Special Master began with the term
"contact layer," which he construed as:

> the semiconductor material between the metal contacts and the voltage
> sustaining layer that is designed to perform two contacting functions:
> (a) permit ohmic contacts to be formed at the terminals (e.g., the
> source or emitter contacts) and (b) provide a connection between the
> metal contacts and the voltage sustaining layer such that the reverse
> voltage across the device terminals is sustained primarily across the
> voltage sustaining layer.

[Id.]{.underline} at 21. "Contacting," according to the Special Master,
meant "permitting or enabling contact," and could be satisfied either
physically or electrically. [Id.]{.underline} at 26.

The Special Master turned next to the term "voltage sustaining layer,"
which he explained was "the layer that primarily sustains the voltage
applied between the terminals of the device." [Id.]{.underline} at 31.
The Special Master noted, however, that the voltage sustaining layer was
modified by the term "comprising," which permitted structures other than
the alternating regions of the CB-layer described in the claim.
[Id.]{.underline} at 32. "Thus," the Special Master concluded, "a
voltage sustaining layer may also contain additional structures or
layers (in addition to the CB-layer), as long as those structures
perform the function of sustaining the voltage across the terminals of
the device." [Id.]{.underline} at 33.

The Special Master also construed the term "interface" to mean "the
common boundary between two regions or layers in the device." The
Special Master explained that the term was used throughout the claims to
mean the boundary between the contact layer and the voltage sustaining
layer, which was "necessarily physical" as described in the '275 patent.
[Id.]{.underline} at 36. Finally, the Special Master construed
"non-uniform" as carrying its plain meaning of "not uniform," and
explained that "nothing in the patent precludes a non-uniformity of the
specific type described that is realized through conventional
semiconductor processing techniques." [Id.]{.underline} at 40. The
district court adopted the Special Master's constructions with what it
described as a slight clarification of the construction of "contacting,"
explaining that, in light of the embodiments contained in the '275
patent, "\[c\]onstruing 'contacting' as being restricted to physically
touching would improperly read some embodiments into claim 11, and
thereby, improperly limit its scope." [Power Mosfet Techs. v. Siemens
AG]{.underline}, No. 2:99CV168 (E.D. Tex. Apr. 23, 2001) (order adopting
Special Master's claim construction) ("Claim Construction Order"). The
terms in the Special Master Report were construed in isolation, and at
no other time did the district court or the Special Master construe the
claims as a whole.

Following a bench trial, the district court found that neither
Infineon's "CoolMOS" products nor ST's "MDMesh" products infringed the
'275 patent. Beginning with Infineon's CoolMOS product, the district
court provided several reasons that the claim limitations were not
satisfied. First, the court explained, the presence of "floating
p-columns" under the gate electrode pad and in the edge termination
region precluded the formation of a "first contact layer" that contacted
[all]{.underline} of the first semiconductor regions to form a first
interface. [Power Mosfet Techs.]{.underline}, slip op. at 36-37. The
p-columns, the district court explained, were the referenced "first
semiconductor regions," and, because they did not physically touch the
first contact layer to form the interface as required by the claim
construction, that limitation was not satisfied. [Id.]{.underline} The
physical touching requirement of "interface" as construed by the Special
Master, therefore, overrode the less demanding "physical [or
electrical]{.underline}" requirement of "contacting,"
![](media/image4.jpeg){width="3.8333333333333335in"
height="2.448611111111111in"}imposing a requirement of physical contact
when combined.

The district court had similar difficulties with the requirement that
"the second contact layer contact\[\] with all the first and second
semiconductor regions to form a second interface." [Id.]{.underline} at
38. Infineon manufactured the CoolMOS product with an additional
n-buffer layer between the alternating semiconductor region and the n^+^
contact layer, as shown in the figure above from Infineon's trial
exhibit. The district court found that this n-buffer layer was part of
the voltage sustaining layer, rather than part of the contact layer as
stated by PMT's expert. [Id.]{.underline} at 32, 33. The district court
based this classification on testimony at trial that, in a 600-volt
CoolMOS device, the n-buffer layer supported between 50 and 100 volts
across its thickness. Under the Special Master's functional definition
of the term, the district court explained, the voltage sustaining
capabilities of the n-buffer layer placed it properly within the voltage
sustaining layer, which, by reason of the "comprising" transition, could
contain structures in addition to the alternating semiconductor regions
of the CB-layer. [Id.]{.underline} at 30-31. Because the n-buffer layer
prevented the alternating semiconductor regions from forming a physical
interface with the second contact layer, the district court concluded
that this element was not present in the CoolMOS product.

Next, the district court found that the requirement in claim 11 that
"the effective dopant distribution in every region in the voltage
sustaining region is non-uniform" and that "the dopant concentration in
the first semiconductor regions is greater near the first contact layer
than near the second contact layer and the dopant concentration in the
second semiconductor regions is greater near the second contact layer
than near the first contact layer" was not satisfied. Specifically, the
district court found that the evidence of testing submitted by PMT
tended to demonstrate that the dopant concentrations in the n-type
regions of the device were in fact uniform and, further, that the test
results were unreliable. [Id.]{.underline} at 40-64. The district court
found similar reliability problems with the test results for the dopant
concentrations in the p-type regions of the semiconductor, but also
relied on its finding that the distributions did not form a "linear
gradient or slope" as the court stated was required under the claims.
[Id.]{.underline} at 68-69. Accordingly, for the variety of reasons
stated above, the district court found that Infineon's CoolMOS device
did not infringe the '275 patent. [Id.]{.underline} at 72.

The district court next analyzed the evidence regarding ST's MDMesh
product and concluded that it also did not infringe the '275 patent.
While the MDMesh did not have the same floating p-columns that precluded
the CoolMOS from meeting the "first interface" limitation of the claims,
it did have a similar n-buffer layer separating the alternating
semiconductor regions from the n^+^ substrate. [Id.]{.underline} at 78.
As with the CoolMOS product, the district court concluded that the
n-buffer layer comprised part of the voltage sustaining region and,
accordingly, the n^+^ contact layer did not "contact" the alternating
semiconductor regions "to form a second interface." [Id.]{.underline}

The district court also found that the MDMesh, like the CoolMOS, did not
satisfy the non-uniform doping requirement of claim 11. Citing numerous
inaccuracies in PMT's analysis of the MDMesh product, the district court
explained that PMT's "erring methodologies do not meet \[the\] burden of
proof for showing infringement" with regard to the n-type regions of the
voltage sustaining layer. [Id.]{.underline} at 86. Furthermore, the
court continued, any deviation that was shown by PMT was less than 1%
and therefore below the 10% deviation in the Coe patent that the
inventor described as "uniform" during prosecution. [Id.]{.underline} at
87. Finally, the court explained, the effective dopant
concentration---to the extent any change was shown at all---revealed two
gradients rather than a single gradient as required by claim 11.
[Id.]{.underline} at 88. Regarding the p-type regions, the court
discerned no measurable difference between the top and bottom of the
columns. Based on the foregoing, the district court concluded that ST's
MDMesh product also did not infringe the '275 patent.

After concluding that neither of the accused products infringed the '275
patent, the district court turned to the invalidity challenges advanced
by the parties. [Id.]{.underline} at 91. The district court rejected
defendants' arguments that the Denkewalter patent anticipated the '275
patent, explaining that out-diffusion occurring during the manufacturing
processes was insufficient for the non-uniform dopant distribution
requirement of claim 11. [Id.]{.underline} at 106-07. The court reached
the same conclusion regarding the Coe patent based on a similar
rationale. [Id.]{.underline} at 112.

Based on the foregoing, the district court entered final judgment that:
(1) the '275 patent had not been proven invalid or unenforceable; (2)
the CoolMOS product did not infringe the '275 patent; and (3) the MDMesh
product did not infringe the '275 patent. PMT timely appealed, and we
have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

II\. DISCUSSION

A. [Standard of Review]{.underline}

We review a district court\'s infringement determination using a
two-step inquiry. The first step is a proper construction of the meaning
and scope of the claims. [Anchor Wall Sys. v. Rockwood Retaining Walls,
Inc.]{.underline}, 340 F.3d 1298, 1306 (Fed. Cir. 2003). Claim
construction is a question of law, reviewed by this court de novo.
[Cybor Corp. v. FAS Techs., Inc.]{.underline}, 138 F.3d 1448, 1451 (Fed.
Cir. 1998) (en banc). The second step requires a comparison of the
properly construed claim to the accused device. [Anchor Wall
Sys.]{.underline}, 340 F.3d at 1306. A district court\'s determination
as to whether the claims, properly construed, read on the accused device
is a question of fact, which we review for clear error. [Elkay Mfg. Co.
v. Ebco Mfg. Co.]{.underline}, 192 F.3d 973, 976 (Fed. Cir. 1999).

Whether a patent is invalid as anticipated is also a two-step inquiry.
Like infringement, the first step requires construing the claim, which
is a question of law. [Oakley, Inc. v. Sunglass Hut Int'l]{.underline},
316 F.3d 1331, 1339 (Fed. Cir. 2003). The second step in the analysis
requires a comparison of the properly construed claim to the prior art
and is a factual matter reviewed for clear error. [Id.]{.underline} at
1339; [Apple Computer, Inc. v. Articulate Sys., Inc.]{.underline}, 234
F.3d 14, 20 (Fed. Cir. 2000).

We review the denial of a motion for a new trial under the law of the
regional circuit. [Riverwood Int'l Corp. v. R. A. Jones &
Co.]{.underline}, 324 F.3d 1346, 1352 (Fed. Cir. 2003). The Fifth
Circuit reviews the denial of a motion for a new trial for abuse of
discretion. [Sibley v. Lemaire]{.underline}, 184 F.3d 481, 487 (5th Cir.
1999). We also apply regional circuit law when reviewing a district
court's grant or denial of sanctions under Federal Rule of Civil
Procedure 11. [Phonometrics, Inc. v. Econ. Inns of Am.]{.underline}, 349
F.3d 1356, 1361 (Fed. Cir. 2003). The Fifth Circuit reviews decisions
regarding Rule 11 sanctions for abuse of discretion. [Friends for Am.
Free Enters. Ass'n v. Wal-Mart Stores, Inc.]{.underline}, 284 F.3d 575,
577 (5th Cir. 2002). Review of whether a case is exceptional under 35
U.S.C. § 285, however, is a matter of Federal Circuit law. We review a
district court's findings of fact for clear error, and the legal
standard applied de novo. [Brasseler, U.S.A. I., L.P. v. Stryker Sales
Corp.]{.underline}, 267 F.3d 1370, 1378-79 (Fed. Cir. 2001). If a
district court properly finds a case to be exceptional, we review its
decision regarding the award of attorney fees to the prevailing party
for abuse of discretion. [Id.]{.underline} at 1379.

When reviewing a district court's decision regarding costs to a
prevailing party under Federal Rule of Civil Procedure 54(d)(1), we
engage in a bifurcated inquiry. Whether a party is prevailing within the
meaning of Rule 54 is a matter of Federal Circuit law and is reviewed de
novo. [Manildra Milling Corp. v. Ogilvie Mills]{.underline}, 76 F.3d
1178, 1180-83 (Fed. Cir. 1996). The district court's actual decision
regarding an award of costs, however, is reviewed under the law of the
regional circuit. [Id.]{.underline} at 1183. The Fifth Circuit reviews
decisions on whether to award costs under Rule 54 for abuse of
discretion, but applies a strong presumption that a prevailing party
will be awarded costs and that any district court denying costs will
provide an explanation for its decision. [Schwarz v.
Folloder]{.underline}, 767 F.2d 125, 131 (5th Cir. 1985).

B. [Analysis]{.underline}

1\. Claim Construction of "Contacting . . . to Form \[an\] Interface"

We begin our discussion with the requirements present in both
independent claims 11 and 14 of a "contact layer contacting with all the
first and second semiconductor regions to form \[an\] interface." '275
patent, col. 8, ll. 2-5. The district court found that the "second
interface" was not formed in either Infineon's or ST's device because
the alternating semiconductor regions in the voltage sustaining layer
did not physically touch the second contact layer. [Power Mosfet
Techs.]{.underline}, slip op. at 38, 78. PMT challenges this conclusion
on two fronts. First, PMT challenges the claim construction directly,
disputing the district court's physical contact requirement. Second, PMT
argues that the district court's conclusion of noninfringement is based
on a changed construction of the term "contacting," from permitting
either electrical or physical contact as construed by the Special Master
at the [Markman]{.underline} hearing and subsequently adopted by the
district court, to requiring physical contact in the district court's
final decision. To correct the error, PMT argues, the claims should be
returned to the original interpretation attributed to them by the
Special Master and district court, which, according to PMT, permitted
satisfaction of the claim limitations without physical contact between
the CB-layer and the contact layer. ST and Infineon both respond that
there has been no change in claim construction and that what PMT
actually disagrees with is the factual infringement determination by the
district court.

As explained, the Special Master interpreted "contacting" functionally
as permitting either electrical or physical contact. Special Master
Report at 26. The Special Master's construction of "interface," however,
explained that the term, as used in the '275 patent, was "necessarily
physical." [Id.]{.underline} at 37. PMT does not challenge the Special
Master's construction of the individual terms "contacting" or
"interface," and we see no basis in the patent specification for
disturbing them. In fact, PMT explained during a hearing following the
Special Master's recommendations that it "believe\[d\] that the Special
Master correctly construed the term interface, and \[it was\] happy with
the construction of the term interface." (J.A. at 203017). When the
Special Master's interpretations are inserted into the claims as a
whole, however, we agree with the district court that the alternating
semiconductor regions must physically touch the contact layer. It is
with this result that PMT disagrees.

Working with the Special Master's definitions, as it must after
expressly agreeing with them, PMT attempts to explain how the "common
boundary" requirement of "interface" and the "electrical or physical"
definition of "contacting" can coexist when the claims are read as a
whole. The "interface," according to PMT, is present in the physical
boundary between the voltage sustaining layer (here, the n-buffer layer)
and the contact layer. The "contacting" requirement is also satisfied,
PMT continues, by the electrical conduction that occurs between the
CB-layer and the contact layer. Thus, according to PMT, both claim
requirements may be satisfied without physical contact between the
alternating semiconductor regions and the contact layer.

PMT's urged claim construction relies heavily on statements made in the
Special Master Report explaining that "the term is used throughout the
claims to mean the common boundary between the 'contact layer' and the
'voltage sustaining layer.'" Special Master Report at 36 (citing the
'275 patent, col. 7, l. 68 to col. 8, l. 5); [see also]{.underline}
[id.]{.underline} at 36-37 ("Nevertheless, in the Chen patent, this
interface is necessarily physical because it is a junction between two
semiconductor layers, the contact layer and the voltage sustaining
layer."). PMT seizes upon the above descriptions of the "interface" to
support its position that, regardless of what comprises the voltage
sustaining layer, the required interface will always be between it and
the contact layer. According to PMT, no interface is required between
the CB-layer and the contact layer.

This, however, is not how we read the claims or the Special Master's
recommended construction of their terms. The Special Master appears to
have been using "voltage sustaining layer" interchangeably with
"CB-layer" in his discussion, as evidenced by his citations to the
patent. For example, in the quotation set out above, the Special Master
cites the '275 patent at column 7, line 68, to column 8, line 5, which
is the language from claim 11 at issue (i.e., "contacting with all the
first and second semiconductor regions to form \[an\] interface"). As we
read the cited passage, the language specifically locates the interface
between the contact layer and the alternating semiconductor regions of
the CB-layer, not an undefined voltage sustaining layer. The Special
Master further explained that "\[g\]iven the overall structure of the
Chen MOS devices, \[the contact and voltage sustaining\] layers will
touch each other," and cited a passage from the '275 patent describing
the manufacture of the CB-layer on the surface of the contact layer.
[See]{.underline} Special Master Report at 36 (citing the '275 patent,
col. 5, ll. 52-58).

While the Special Master correctly acknowledged that the voltage
sustaining layer was open to additional elements and layers due to the
"comprising" term, Special Master Report at 32, his discussion of the
"interface" is understandably confined to the structure actually
described by the '275 patent. [See]{.underline} [SRI Int'l v. Matsushita
Elec. Corp.]{.underline}, 775 F.2d 1107, 1118 (Fed. Cir. 1985) (en banc)
("A claim is construed in the light of the claim language, the other
claims, the prior art, the prosecution history, and the specification,
[not]{.underline} in light of the accused device."). Furthermore,
because he did not attempt to construe the claims as a whole, the
Special Master had no opportunity to reconcile the functional definition
he adopted for "contacting" with his structural interpretation of
"interface." The district court, however, could not avoid the necessary
reconciliation, and concluded that, when the Special Master's
construction of the individual terms are plugged into the remaining
claim language, the claims require the interface to be between the
alternating semiconductor regions of the CB-layer and the contact layer.
[Power Mosfet Techs.]{.underline}, slip op. at 36-39, 78-79. We agree
with the district court's conclusion. While the "contacting" requirement
may be satisfied with either physical or electrical contact, we do not
see how electrical contact alone can form the "necessarily physical"
junction required for the interface. "Comprising," while permitting
additional elements not required by a claim, does not remove the
limitations that are present. [See]{.underline} [W.E. Hall v. Atlanta
Corrugating, LLC]{.underline}, 370 F.3d 1343, 1353 (Fed. Cir. 2004)
(explaining that each and every limitation of a claim must be satisfied
before additional elements are examined under the partially open term
"consisting essentially of").

The written description lends additional support to this interpretation.
The main discussion of the fabrication process in the '275 patent
describes: "(1) Epitaxial growth of an n^-^ (or p^-^)-layer 5 on the
n^+^ (or p^+^)-substrate 4; (2) Selective trenching on 5 to make very
deep U-grooves, [where the bottoms of the grooves just reach
4]{.underline} . . . ." '275 patent, col. 5, ll. 32-35 (emphasis added);
[see also]{.underline} [id.]{.underline} at col. 5, ll. 52-55 (detailing
the growth of an epi-layer "[on]{.underline} the n^+^ (or
p^+^)-substrate" (i.e., the contact layer), to create a CB-layer
according to the method described above (emphasis added));
[id.]{.underline} at col. 2, ll. 1-4 (describing the arrangement of n-
and p-regions when "viewed from any cross-section parallel to the
interface between the CB-layer itself and the n^+^-region"). Each of the
figures in the '275 patent depicts physical contact between the CB-layer
and the contact layer and, where an intervening layer is permitted, the
written description expressly provides for it. [See]{.underline}
[id.]{.underline} at col. 6, ll. 37-39 ("From FIG. 4 to FIG. 9 the
existence of dielectric films between 4 \[the first contact layer\] and
7 \[the second semiconductor region\], and/or between 6 \[the first
semiconductor region\] and 7, if any, are allowed."). To accommodate the
interleaved dielectric film described by the written description, claim
1 of the '275 patent omits the requirement of an interface between the
first contact layer and the second semiconductor region.
[Id.]{.underline} at col. 6, ll. 41-60.

The term "directly," which appears in two of the three independent
claims of the '275 patent, does not affect our conclusion. Claim 1
requires a "second contact layer contacting the first and second
semiconductor regions [directly]{.underline} forming a second
interface." [Id.]{.underline} at col. 6, ll. 58‑60 (emphasis added).
Claim 14 has a similar requirement, also applying only to the second
contact layer. [Id.]{.underline} at col. 8, ll. 38-40. Claim 11,
however, has no "directly" limitation, nor does the term append the
"first interface" requirement in any of the claims. PMT states on appeal
that this term is meaningless, while Infineon argues that "contacting .
. . directly" means physically touching. Although he noted the argument,
the Special Master did not address the issue. Special Master Report,
slip op. at 24. The district court likewise did not specifically address
the term, but, in light of its conclusion that "contacting . . . to form
an interface" required physical contact, the import of "directly" was
irrelevant.

While we have often explained that we presume that there is "'a
difference in meaning and scope when different words or phrases are used
in separate claims,'" the rule is not inflexible. [Comark
Communications. v. Harris Corp.]{.underline}, 156 F.3d 1182, 1187 (Fed.
Cir. 1998) (quoting [Tandon Corp. v. U.S. Int'l Trade
Comm'n]{.underline}, 831 F.2d 1017, 1023 (Fed. Cir. 1987)). Furthermore,
while interpretations that render some portion of the claim language
superfluous are disfavored, where neither the plain meaning nor the
patent itself commands a difference in scope between two terms, they may
be construed identically. [See]{.underline} [Pickholtz v. Rainbow
Techs., Inc.]{.underline}, 284 F.3d 1365, 1373 (Fed. Cir. 2002). Here,
the addition of the term "directly" to an existing requirement of
physical contact imposes no additional restrictions on the phrase.
Whether the alternating semiconductor "contact\[s\] . . . directly to
form a second interface," or merely "contact\[s\] . . . to form a second
interface," a physical boundary must be formed.

In affirming the district court's construction of "contacting . . . to
form \[an\] interface," we must also affirm the district court's
ultimate determination that neither the Infineon nor the ST products
literally infringe the '275 patent. The requirement is present in both
of the independent claims asserted, and, as the district court found, is
not met by either of the accused devices. [Power Mosfet
Techs.]{.underline}, slip op. at 38-39, 78‑79.

2\. Denial of PMT's Motion for a New Trial

PMT argues that the district court abused its discretion when the court
denied its motion for a new trial. According to PMT, the district court
adopted the recommended claim constructions of the Special Master at the
outset of the trial but then, in authoring its final opinion, modified
the adopted constructions in a manner that resulted in a finding of
noninfringement. PMT claims that it relied on the district court's early
construction of the claims, and consequently presented no evidence on
the issue of the doctrine of equivalents. Infineon responds that,
contrary to PMT's assertions, the claim constructions were not changed,
but rather the interpretations of the individual terms provided by the
Special Master were read in the context of the full claims. Furthermore,
Infineon continues, even if the claim constructions were changed,
nothing precludes a district court from making adjustments as a trial
proceeds. ST reiterates Infineon's first argument and adds that, as a
result of PMT's position at the [Markman]{.underline} hearing that
"contacting . . . directly" required physical contact---an issue not
resolved by the Special Master---equivalents were very much at issue
during the trial, rather than obviated as PMT maintains. As stated, the
Fifth Circuit applies an abuse of discretion standard to the review of a
district court's grant or denial of a new trial, requiring a "clear
showing" that an abuse occurred. [Hidden Oaks v. City of
Austin]{.underline}, 138 F.3d 1036, 1049 (5th Cir. 1998). The Fifth
Circuit has further explained that district courts "do not grant new
trials unless it is reasonably clear that prejudicial error has crept
into the record or that substantial justice has not been done, and the
burden of showing harmful error rests on the party seeking the new
trial." [Sibley]{.underline}, 184 F.3d at 487 (quoting Wright & Miller,
11 [Federal Practice & Procedure]{.underline} § 2803, at 31-33 (3d ed.
1973)). Under this standard, we find that the district court did not
abuse its discretion.

Although the Special Master provided recommended claim constructions
following the [Markman]{.underline} hearing, those recommendations
construed only individual terms in the claims. The Special Master's
limited construction left substantial ambiguity as to the meaning of the
claims as a whole, particularly regarding the "contacting . . . to form
\[an\] interface" limitation. This ambiguity did not go unnoticed by the
parties as, following the issuance of the Special Master's report, PMT
moved the district court for clarification of the Special Master Report
and Infineon and ST responded with objections to the same.

On March 22, 2001, the district court held a hearing on the motions. At
the hearing, PMT "request\[ed\] clarification on whether an interface
encompasses both a 2‑D surface and 3-D structures or areas." Tr. of
Hearing on Plaintiff's Motion for Clarification and Defendants'
Objections to Special Master's Report and Recommendations, at 15 (Mar.
22, 2001). ST, however, explained that it would be helpful if the court
could give "a brief review of what interface means and how the Master
has defined it to understand the notion of contacting to form an
interface." [Id.]{.underline} at 44. ST also asked the district court to
modify the definition of "contacting" to [require]{.underline} physical
contact. [Id.]{.underline} at 49. Infineon reiterated ST's objections,
and further explained that "one of \[its\] objections to the Special
Master's report is that it essentially was a list of definitions for
five terms that, albeit while in dispute, did not provide the court with
actual constructions as a whole." [Id.]{.underline} at 57. Specific to
the "contacting . . . to form \[an\] interface" limitation, Infineon
asserted that "if the definition of contacting is read in combination
with the explanation of interface as a two-dimensional object, not as a
three-dimensional object as \[PMT\] would suggest," then "the claim
language specifically calls for contacting two objects to form a third
object, which is the interface." [Id.]{.underline} at 62. In the order
responding to the parties' motions, the district court stated that it
adopted the Special Master's report "with the following supplementation
and modification":

The term "contacting" in independent claim 11 as in "contact layer
contacting all said first semiconductor regions and said second
semiconductor regions . . ." is defined as "permitting or enabling
contact." Claim 11 of the Chen patent is drawn generally to a
semiconductor power device and covers several embodiments. One set of
embodiments (e.g., Fig. 4) shows the contact layer touching the first
and second semiconductor regions. But another embodiment (see Fig. 8)
shows the contact layer being separated from the first and second
semiconductor regions by other layer(s). [Construing "contacting" as
being restricted to physically touching would improperly read some
embodiments into claim 11, and thereby, improperly limit its
scope]{.underline}.

Claim Construction Order at 1-2.

The significance of the hearing and subsequent order are two-fold.
First, from the arguments made, it is clear that all parties were aware
of the ambiguity that remained in the litigation in connection with the
"contacting . . . to form \[an\] interface" limitation. PMT's argument
for a three-dimensional interface can only be understood---and in fact
was understood by Infineon---as the recognition of a possibility that
the accused devices lacked the two-dimensional interface that might be
required when the interpreted terms were read in the context of the full
claims. ST's objections expressly identified the ambiguity, and
requested clarification. Second, the district court's order addressed
only ST's and Infineon's argument that the term "contacting" required
physical contact, omitting any discussion of the ambiguity identified by
the parties.

Following the hearing and order, therefore, the parties were no closer
to having a full claim construction than they would have been had they
gone to trial with only the Special Master Report. The district court
did not resolve the ambiguity concerning the "contacting . . . to form
\[an\] interface" limitation, but preserved it by adopting the Special
Master's recommendations without additional interpretation. We therefore
must conclude that, while a construction of the claims as a whole would
have been beneficial to the litigants, the district court's failure to
provide one rendered impossible the changed claim construction of which
PMT complains. To the contrary, there was never a full claim
construction provided by the district court prior to its decision, and
none was required. [See]{.underline} [Markman v. Westview Instruments,
Inc.]{.underline}, 52 F.3d 967, 981 (Fed. Cir. 1995) (en banc)
(explaining that claim constructions can be announced "by the court in
framing its charge to the jury, but may also be done in the context of
dispositive motions such as those seeking judgment as a matter of law.),
[aff'd]{.underline}, 517 U.S. 370; [Sofamor Danek Group v.
Depuy-Motech]{.underline}, 74 F.3d 1216, 1221 (Fed. Cir. 1996)
("[Markman]{.underline} does not obligate the trial judge to
conclusively interpret claims at an early stage in a case."). The terms
"contacting" and "interface" were construed by the Special Master
without construing the claims as a whole, and those constructions were
then assembled into full claims and relied on by the district court in
concluding that the "contacting . . . to form \[an\] interface"
limitation of the claims was not satisfied by either Infineon's CoolMOS
or ST's MDMesh products. [^2]

That the claim constructions remained unsettled following the district
court's order is demonstrated by the subsequent events at trial. In
response to an objection by PMT that Infineon was rearguing an issue
decided by the Special Master's claim constructions, the following
dialogue took place:

Infineon: I would submit, your honor, respectfully, that your
affirmation of the Special Master Report should be viewed at most as
tentative. . . . But we have got to be able to put before this court
what we believe to be evidence and argument that clearly establish . . .
that what the Special Master did in this case . . . is clearly wrong.

Court: Very well. Mr. Shore \[counsel for PMT\].

PMT: Then what he is doing is asking for extrinsic evidence on
[Markman]{.underline} which is prohibited under the rules of claim
construction.

Court: I will allow the question and again address this at the
conclusion of the case.

(J.A. at 102148). In reversed roles, Infineon later objected that PMT
was attempting to reargue claim construction, to which the district
court responded "I recall Mr. Neuner \[counsel for Infineon\] saying it
was never final until I entered a final judgment," a recollection
emphatically seconded by PMT's counsel. (J.A. at 110210). We gather from
these discussions that both the parties and the court viewed the claim
constructions performed by the Special Master as preliminary, subject to
modification by the district court, with each side continuing to press
throughout the trial for more favorable interpretations.

In addition to acknowledging and availing itself of the unsettled nature
of the constructions recommended by the Special Master, PMT made several
arguments during trial falling squarely within the ambiguity it now
maintains did not exist after the district court's adoption of the
Special Master's report. During PMT's examination of Dr. Richard Fair,
of one its expert witnesses, counsel for PMT inquired:

I want to ask you a little bit about an alternate argument that has been
made. . . . The argument has been made that for the P-columns to contact
and form this interface, they have to go all the way down and touch the
n^+^ substrate. Are you familiar with that argument?

Tr. of Bench Trial, vol. 1, at 106 (Aug. 27, 2001). Upon an affirmative
response by Dr. Fair, counsel proceeded to elicit testimony---without
objection from ST or Infineon---as to why that interpretation was
incorrect. [Id.]{.underline} at 107. Finally, later in the proceedings,
PMT refused Infineon's request to stipulate that "directly contacting"
meant touching, stating "\[t\]hat's for the court to determine." (J.A.
at 104176).

As the foregoing excerpts make clear, PMT was aware that the claim
constructions for the '275 patent were incomplete and would be finalized
by the district court at some later date. PMT continued to argue at
trial against constructions unfavorable to its position, including the
position that physical contact was required between the first and second
semiconductor regions of the CB-layer and the contact layer. PMT's
refusal to stipulate to the meaning of "directly contacting" expressly
acknowledged that the district court had not yet resolved whether that
phrase required physical contact and consequently, as Infineon points
out, a physical touching requirement remained a possibility until the
district court construed the claims in full. The situation in this case
resembles that present in our decision in [Exxon Chemical Patents, Inc.
v. Lubrizol Corp.]{.underline}, 64 F.3d 1553 (Fed. Cir. 1995). In [Exxon
Chemical]{.underline}, this court reversed a jury finding of
infringement after concluding that the district court incorrectly
construed the claims of the patent at issue. [Id.]{.underline} at 1555.
The court did not remand for further proceedings, but instead queried
whether, based on the evidence presented at trial, "any jury could
reasonably have found that Lubrizol's accused products literally
infringe the claims of the \[patent at issue\] as properly construed."
[Id.]{.underline} at 1559. Concluding that it could not, the court
reversed and entered judgment of noninfringement as a matter of law.
[Id.]{.underline} at 1560. In justifying its action, the court
explained:

We have emphasized that Exxon\'s error was in failure of proof as to the
claimed amounts, without which it could not prove infringement under
Lubrizol's claim meaning. The trial judge did not interpret the claims
until all the evidence was in, just before the case was submitted to the
jury. Exxon---knowing Lubrizol\'s defense---knew that it would lose on
Lubrizol's claim meaning unless it could show the presence of the
claimed ingredients in the claimed amounts in some Lubrizol product.
Exxon was free to choose the moment at which it would identify with
proof that a Lubrizol product infringed. Thus, Exxon could have argued
and sought to prove that ashless dispersant is present in the claimed
percentages, along with the other claimed ingredients in their specified
amounts, at any time from the moment of creation of Lubrizol's product.
Exxon cannot now claim surprise from our variation on Lubrizol's claim
meaning and cry foul in not having a second chance to prove what it was
free to prove at trial.

[Id.]{.underline} at 1560-61.

Similar to [Exxon Chemical]{.underline}, PMT was on notice that
Infineon's and ST's argued claim construction required physical contact
between the alternating semiconductor regions and the contact layers.
The record reveals both an incomplete claim construction containing a
significant ambiguity and an awareness by the parties that the limited
constructions that did exist were subject to further modification by the
district court. Nevertheless, PMT chose not to present evidence on the
doctrine of equivalents. While the Claim Construction Order adopting the
Special Master Report does appear to favor PMT's preferred claim
construction, the bias was apparently not so great as to cause PMT to
abandon its arguments against its opponents' claim construction
positions at trial. Consequently, PMT "cannot now claim surprise" at the
district court's final resolution of the claims in a manner unfavorable
to it, [id.]{.underline} at 1561, nor can we say that the district court
abused its discretion in denying PMT's motion for a new trial.

Having affirmed both the district court's final claim constructions, and
its denial of PMT's motion for a new trial, we also affirm its judgment
of noninfringement. As a result, we do not reach PMT's remaining
arguments. Likewise, we do not reach Infineon's and ST's arguments
regarding the invalidity of the '275 patent, as they are premised on a
change in claim construction that we do not address.[^3]

3\. Infineon's Cross-Appeal for Attorney Fees

Infineon asserts that it should have been awarded its attorney fees,
arguing that such fees were warranted under both Rule 11 and 28 U.S.C. §
285. According to Infineon, the district court did not address its
request for sanctions under Rule 11 or make findings of fact as to the
exceptionality of the case. As PMT points out, however, the district
court chastised [all]{.underline} of the parties to the litigation for
inappropriate behavior during the proceedings, stating that "looking
back at the parties' overall conduct, it sometimes seemed that they
thought themselves to be in a totally different universe, a Wonderland
where up was down and down was up and none of the normal rules applied."
[Power Mosfet Techs. v. Siemens AG]{.underline}, No 2:99-CV-168, at 3
(Sept. 30, 2002) (order denying motions for sanctions). The court
further explained that, although all of the parties had engaged in
questionable behavior, "none of the misconduct \[rose\] to a level that
would warrant significant sanctions to be awarded against any party,
especially as such an award would tend to reward other wrongdoers in
this case." [Id.]{.underline} The court warned the parties that it would
not be so lenient in future litigation in which they were involved.

While the language the district court used in denying sanctions is
general in nature and does not specifically address Infineon's sanction
motion, its tone makes its message perfectly clear: it was not awarding
sanctions because [all]{.underline} of the parties had conducted
themselves without the decorum required when practicing before a federal
court. The district court acknowledged the withholding of documents and
other discovery abuses, as well as a variety of misconduct during the
litigation, and credited each of the parties with some share of the bad
behavior. In the face of the district court's warning to all of the
parties, Infineon is quite bold to now assert that the district court
abused its discretion in denying sanctions and fees.

We need not address the facts underlying Infineon's Rule 11 or section
285 motions, however, as we conclude that the district court's finding
of widespread misconduct among all of the parties, Infineon included, is
a more than adequate justification for an exercise of discretion denying
sanctions. [Cf.]{.underline} [View Eng'g, Inc. v. Robotic Vision
Sys.]{.underline}, 208 F.3d 981, 986 (Fed. Cir. 2000) (explaining that,
under an identical standard in the 9th Circuit, a plaintiff's failure to
investigate its charges of infringement prior to suit "should ordinarily
result in the district court expressing its broad discretion in favor of
Rule 11 sanctions, at least in the absence of a sound excuse [or
considerable mitigating circumstances]{.underline}." (emphasis added));
[Read Corp. v. Portec, Inc.]{.underline}, 970 F.2d 816, 831 (Fed. Cir.
1992) ("When the attorney fees under 35 U.S.C. § 285 are awarded solely
on the basis of litigation misconduct, the amount of the award must bear
some relation to the extent of the misconduct."). [View
Engineering]{.underline} and [Read]{.underline} reflect the principle
that an award of sanctions under Rule 11 and attorney fees under section
285 should be tailored by a court to the situation before it. A party
subjected to behavior warranting an award of sanctions or fees might
justifiably be denied those fees in a district court's discretion for
the behavior to which it subjected others. Having found exactly those
circumstances here, the district court did not abuse its discretion in
declining to award Infineon its fees.

4\. IR's Cross-Appeal for Costs as the Prevailing Party

As the final point that must be addressed, IR argues that it is entitled
to its costs under Federal Rule of Civil Procedure 54(d)(1), which
states that costs shall be awarded to the prevailing party "as of
course." Since a party dismissed with prejudice is a prevailing party,
IR continues, it is entitled to its costs in the absence of an
explanation by the district court justifying its denial.

The district court found that IR was not a prevailing party for purposes
of Rule 54. The dismissal of a claim with prejudice, however, is a
judgment on the merits under the law of the Federal Circuit. [Hallco
Mfg. Co. v. Foster]{.underline}, 256 F.3d 1290, 1297 (Fed. Cir.
2001).[^4] As this court has explained, whether a party is "prevailing"
for the purposes of Rule 54 is a matter of federal circuit law.
[Manildra Milling]{.underline}, 76 F.3d at 1182. And, as we have further
explained, "\[i\]n those cases in which one party wins completely on
every claim at issue, determining which party has prevailed is a
straightforward task." [Id.]{.underline} IR, which had all claims
against it dismissed with prejudice, is therefore a prevailing party.

Even concluding that IR is a prevailing party, the district court still
retains discretion over the award of costs under Rule 54. The Fifth
Circuit, however, whose law governs this aspect of our review, applies a
strong presumption that costs will be awarded. [Schwarz]{.underline},
767 F.2d at 131. Where a district court has provided no reason for a
denial of costs, the Fifth Circuit has remanded for further explanation
by the district court. [Id.]{.underline}; [see also]{.underline}
[Walters v. Roadway Express, Inc.]{.underline}, 557 F.2d 521, 526-27
(5th Cir. 1977). In the event that IR was a prevailing party, the
district court explained that "\[b\]y certifying that they would not
file any opposition, the IR defendants showed the Court that while the
motion was not agreed, there was an agreement between the parties
concerning dismissal," and that the agreement was the reason that it was
denying costs.

IR responds to the district court's justification by pointing out that
the "Certificate of Conference" relied on by the district court is a
requirement of the local rules for the Eastern District of Texas and, as
a required filing, should not be construed as an agreement between the
parties.[^5] According to IR, therefore, it was merely complying with
the Eastern District's local rules, and its compliance cannot also act
as a basis for overcoming the presumption in favor of fees applied by
the Fifth Circuit. We note, however, that Local Rule CV-7(h) imposes its
requirements on only the party filing the motion. Furthermore, as IR
itself points out in its brief, a district court has no choice but to
grant a dismissal with prejudice if one is requested by a plaintiff.
(Br. for Cross-Appellant IR at 18 n.4 (quoting [Schwarz]{.underline},
767 F.2d at 129-30 n.5)). IR's representations to the court, therefore,
including its invitation for the court to "act on this Motion without
delay," were not required under the local rules or otherwise.

Viewed from the position of the district court, IR, although it
maintained that it was not joining the motion, stated that it would not
file any opposition, did not raise the issue of costs, and encouraged
the district court to grant the order without delay. These
representations were contained in the Certificate of Conference, which,
along with a copy of the order to be entered by the district
court---also lacking any mention of costs---were reviewed by IR and the
Certificate signed prior to PMT's filing of the motion with the district
court. In light of the needlessness of IR's representations to the
district court, we cannot conclude that the district court abused its
discretion in viewing the situation as an agreement between the parties
regarding dismissal, and therefore denying costs.

III\. CONCLUSION

Because we affirm the district court's claim construction, we must also
agree with its conclusion that neither Infineon's nor ST's accused
devices infringe the '275 patent. We also find that, because a full
construction of the claims was never completed prior to the district
court's final judgment, the district court could not have changed the
claim construction and therefore did not abuse its discretion in denying
PMT's new trial motion. Regarding Infineon's cross-appeal, we conclude
that the district court did not abuse its discretion in denying
Infineon's costs under either Rule 11 or 35 U.S.C. § 285. Finally, we
find that, in light of IR's representations to the district court, the
district court did not abuse its discretion in denying IR's motion for
costs under Rule 54(d). Accordingly, the district court's judgment of
noninfringement, its denial of PMT's motion for a new trial, and its
denial of Infineon's requests for fees and IR's request for costs are
all

[AFFIRMED.]{.underline}

IV\. COSTS

No costs.

[^1]: Claim 14 differs from claim 11 only in that it does not have a
    non-uniformity requirement for the doping concentrations in the n-
    and p-regions, and further requires a hexagonal layout for the
    alternating semiconductor region of the invention. '275 patent, col.
    8, ll. 26-51. Claims 12 and 13 depend from claim 11, while claim 16
    depends from claim 14.

[^2]: ^?^ We additionally note that the explanation provided by the
    district court in the Claim Construction Order appears to be
    incorrect. The district court's reference to Fig. 8 as showing the
    contact layer "separated from the first and second semiconductor
    regions by other layer(s)" reflects a misunderstanding of what
    region is the contact layer in that figure. As ST explains, region
    9, not region 11, is the contact layer in that figure. (Br. for
    Cross-Appellant ST, at 52 n.15). PMT also implicitly concedes that
    the district court's interpretation was in error by explaining that
    the contact layer does not touch "except at the geometrically
    infinitely small corners . . . ." (Br. for Appellant, at 50 n.16).
    Touching at the "geometrically infinitely small corners," as PMT
    states, and "separated from the first and second semiconductor
    region by other layer(s)," as the district court found, are not the
    same. While we acknowledge that the error in the district court's
    order is inconsistent with its final resolution of the case, as our
    subsequent discussion makes clear, the error did not infect the
    district court's ultimate resolution of the case.

[^3]: ^?^ Infineon and ST have each argued that, if this court adopts
    PMT's interpretation of the term "non-uniform," we must find the
    '275 patent invalid as anticipated. (Br. for Cross-Appellant
    Infineon, at 59; Br. for Cross-Appellant ST, at 62). Their
    arguments, however, are conditioned on our acceptance of PMT's
    interpretation of non-uniform. Neither Infineon nor ST wish to
    challenge the district court's invalidity determination in the
    absence of such an occurrence. Having disposed of PMT's appeal with
    the "contacting . . . to form \[an\] interface" limitation present
    in all of the claims, we do not reach PMT's additional arguments
    regarding the "non-uniform" limitation and, therefore, Infineon's
    and ST's conditional cross-appeal.

    The Supreme Court's decision in [Cardinal Chemical Co. v. Morton
    International Inc.]{.underline}, 508 U.S. 83 (1993), does not
    require more. ST and Infineon have chosen to appeal only if we
    accept PMT's argument regarding "non-uniform"---they have not
    themselves challenged the district court's construction of the term.
    We are left with a situation where, effectively, the district
    court's findings regarding the invalidity of the '275 patent have
    not been appealed, not a situation like [Cardinal
    Chemical]{.underline} where a party's request for review of the
    invalidity determination remains a live issue in the appeal. As is
    true of unappealed issues in any case, therefore, we express no
    opinion on the district court's validity determination.

    We further note that, although conditional, Infineon's and ST's
    cross-appeals are properly before us. Unlike the situation in
    [Bailey v. Dart Container Corp.]{.underline}, Infineon and ST seek
    to "lessen the rights of its adversary under the judgment" rather
    than simply asserting additional grounds in support. 292 F.3d 1360,
    1362 (Fed. Cir. 2002). The conditional nature of the cross-appeals
    in this case, therefore, does not implicate the concerns at issue in
    [Bailey]{.underline}, where the arguments contained in the
    cross-appeal could have properly been advanced by the parties as
    appellees without the need for expanded briefing. Here, the argument
    against the district court's invalidity determination could not have
    been made if a cross-appeal had not been filed, as acceptance of the
    argument would result in a modification of the district court's
    judgment. [See]{.underline} [Typeright Keyboard Corp. v. Microsoft
    Corp.]{.underline}, 374 F.3d 1151, & n.4 (Fed. Cir. 2004)
    (explaining that while a party's rights under a judgment of validity
    are broader than under a judgment of noninfringement, the reverse is
    not true). The fact that the cross-appeal was conditional does not
    alone render it improper. [See]{.underline} [Ericsson, Inc. v.
    Harris Corp.]{.underline}, 352 F.3d 1369, 1376 (Fed. Cir. 2003).

[^4]: ^?^ Although this issue is a matter of Federal Circuit law, we
    note that the rule does not differ in the Fifth Circuit.
    [See]{.underline} [Schwarz]{.underline}, 767 F.2d at 129 ("Dismissal
    of an action with prejudice is a complete adjudication of the issues
    presented by the pleadings and is a bar to a further action between
    the parties." (quoting [Smoot v. Fox]{.underline}, 340 F.2d 301, 303
    (6th Cir. 1964))).

[^5]: Local Rule CV-7(h) of the Eastern District of Texas states:

    > Except as specified below, all motions must be accompanied by a
    > "certificate of conference" at the end of the motion following the
    > certificate of service. The certificate must state (1) that
    > counsel has conferred with opposing counsel in a good faith
    > attempt to resolve the matter without court intervention, and (2)
    > whether the motion is opposed or unopposed.