IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

UNM RAINFOREST INNOVATIONS

Plaintiff,

v.

GLOBALFOUNDRIES INC.,

GLOBALFOUNDRIES U.S. INC., and

GLOBALFOUNDRIES U.S. 2 INC.,

 Defendants.

CIVIL ACTION NO. 6:20-CV-243-ADA

JURY TRIAL DEMANDED

Plaintiff’s Responsive Claim Construction Brief

Case 6:20-cv-00243-ADA Document 40 Filed 09/25/20 Page 1 of 18
i

Table of Contents

I. Introduction..........................................................................................................................1

II. Disputed Claim Terms.........................................................................................................2

A. Order of Claimed Steps............................................................................................2

B. “growing a heteroepitaxial layer on the seed area” .................................................4

C. “heteroepitaxial layer” ...........................................................................................12

D. “selective growth mask layer” ...............................................................................12

III. Conclusion .........................................................................................................................14

Case 6:20-cv-00243-ADA Document 40 Filed 09/25/20 Page 2 of 18
1

In accordance with the Court’s Agreed Scheduling Order (Dkt. 24), Plaintiff UNM 

Rainforest Innovations (“UNM”), formerly known as STC.UNM, submits this Responsive Claim 

Construction Brief to rebut the arguments made in Defendants Opening Brief (“Defs.’ Brief”) 

regarding disputed claim terms in U.S. Patent No. 9,142,400 (“the ’400 Patent”).

I. Introduction

Defendants cannot show that the steps of the claimed method must be performed in the 

order recited in the claim. While the recited order is one way to perform the method, it does not 

represent the exclusive order of steps. In attempting (unsuccessfully) to prove that the recited order 

is the only way to perform the claimed method, Defendants misread the claims, rewrite claim 

elements, and ignore the specification. Neither the plain language of the claims nor the 

specification’s teachings necessitate the recited order. 

Defendants also ask the Court to find as a matter of law that the claimed “seed area”—the 

construction of which Defendants do not challenge—somehow disappears as the claimed method

is performed. Defendants jettison all common sense and try to impose an unsupported grammatical 

interpretation of the claim language in order to force an indefiniteness argument. In so doing, 

Defendants play fast and loose with intrinsic record and ignore the fact that their own expert had 

no indefiniteness concerns nine months ago when he provided testimony in support of other 

defendants’ claim construction arguments. Claims cannot be held indefinite when an alternative 

interpretation is definite, especially where, as here, the interpretation offered by Defendants is 

tortured and unsupported by the intrinsic record. The Court should reject Defendants’ novel and 

baseless argument.

Finally, Defendants offer scant support for their unnecessary additions to this Court’s prior 

constructions of “heteroepitaxial layer” and “selective growth mask layer.”

Case 6:20-cv-00243-ADA Document 40 Filed 09/25/20 Page 3 of 18
2

II. Disputed Claim Terms

A. Order of Claimed Steps

Defendants argue that the steps of the claimed method must be performed in the order 

recited in the claim. Defendants attempt to impose an order based on a rewriting of claimed steps 

and unjustified rhetorical leaps. Defendants also overlook salient portions of the specification that 

undermine their arguments. 

Defendants’ argument suffers from three fundamental errors. First, Defendants 

misapprehend (or misstate) what happens in the second recited step, “Step 2,” according to 

Defendants’ convention. In their Brief at page 6, Defendants argue that Step 2 must occur before 

Step 3 because the “mask layer cannot be formed on the top surface (surface that forms a ‘seed 

area’) and the side surface of the pedestal unless a pedestal with top and side surfaces has been 

formed.” Defendants gloss over the portion of the step involving formation of the seed area but 

later say that the “seed area” is formed in Step 2. Defs.’ Br. at 7. As explained in UNM’s Opening 

Brief at 11–12, the “seed area” is not formed in Step 2. Step 2 discloses characteristics of the “seed 

area” ultimately formed, including location (top surface) and linear surface dimension ranging 

from about 10 nm to about 100 nm, but the seed area is created in later steps. 

The claim language confirms this. Step 2 discloses forming the pedestal on the substrate 

and gives certain required characteristics, i.e., a top surface and a side surface. Step 3 discloses 

providing a selective growth mask layer on the pedestal’s top and side surfaces. Step 4 discloses 

removing a portion of the selective growth mask layer to expose the seed area. These are actions 

performed by the user (or infringer) of the claimed method. These steps stand in contrast to the 

clause in Step 2 about the “top surface forming a seed area.” The top surface does not perform an 

action. The top surface is a location on the pedestal. It is incapable of “forming,” “providing,” or 

“removing” as used in the claimed steps. Rather, the “forming” by the top surface relies on another 

Case 6:20-cv-00243-ADA Document 40 Filed 09/25/20 Page 4 of 18
3

meaning of the word “forming,” one that connotes the more figurative meaning of the word, like 

how a fence would “form” the boundary of a property. Adopting Defendants’ view would require 

reading out the second instance of “top surface” in Step 2. Accordingly, to the extent that 

Defendants argue that the seed area is formed in Step 2—it is not—then Step 2 cannot occur before 

Step 3. 

Second, Defendants incorrectly argue that Step 4 must occur before Step 5. Defs.’ Br. at 7. 

To make this argument, Defendants impermissibly modify the claim language. Step 5 states 

“selectively etching back the exposed top surface of the pedestal.” Defendants say that the top 

surface was “exposed” in the previous Step 4 and “the exposed top surface cannot be etched back 

in Step 5 unless the top surface of the pedestal was exposed in Step 4.” Id. But Step 4 does not say 

expose the “top surface.” Step 4 says “expose the seed area of the pedestal.” While the seed area 

exists on the top surface, both the claims and the specification distinguish between “top surface”

and “seed area.” Contrary to Defendants’ suggestion, the terms are not blindly interchangeable.

Because of the difference between the two terms, Step 4 need not necessarily occur before 

Step 5. For example, Step 5 could occur after formation of the pedestal in Step 2. At that point, the 

pedestal’s top surface is exposed (because the selective growth mask layer has not been applied), 

and the pedestal may be etched back before the selective growth mask layer is applied. This etching 

back could be done, for example, to optimize the height or shape of the pedestal. See, e.g., ’400 

Patent at 5:5-25 (discussing pedestal composition and dimensions). The specification’s discussion 

of Figure 2 is illustrative. In Figure 2, the dimensions of the pedestal are modified using thermal 

oxidation to form the silicon dioxide selective growth mask layer. According to the specification, 

the “thermal oxidation process consumes the substrate material, so that the thicker the silicon 

dioxide layer, the smaller the resulting width dimension of the final pedestal 12.” Id. at 6:59-63. 

Case 6:20-cv-00243-ADA Document 40 Filed 09/25/20 Page 5 of 18
4

The specification adds, “Alternatively, the pedestal 12 can be patterned to the desired final 

dimension during the etching step; followed by forming a selective growth mask layer to delineate 

the seed area by a process that does not consume the silicon to reduce the dimensions of the 

pedestal 12.” Id. at 6:66–7:3 (emphasis added). The specification thus describes a procedure during 

which the pedestal of a certain size or shape is patterned during an etching step before the selective 

growth mask layer is formed, which disproves Defendants’ argument that Step 4 must occur before 

Step 5. Defendants do not—indeed, cannot—reconcile their position with this portion of the 

specification. 

The portions of the specification cited by Defendants do not support their position. In 

particular, Defendants point to the specification’s discussion that “a portion of the selective growth 

mask layer 14 is removed to expose at least the top surface.” Defs.’ Br. at 8. But, again, the 

specification does not say that the selective growth mask layer is removed to expose the “seed 

area.” The specification states that the exposed top surface can be used as the seed area, or the 

exposed top surface can be etched back in order to create sidewall barriers. See ’400 Patent at 5:51-

67; 7:21-36. In either case, there is a difference between the “top surface” and the “seed area.” 

Indeed, the specification does not begin referring to a “seed area” until the final area of intended 

growth is prepared. 

In short, the specification does not mandate that Step 4 occur before Step 5. In fact, the 

specification shows that Step 5 can occur before Step 4, as discussed above. Accordingly, the Court 

should reject Defendants’ argument that the claimed steps must be performed in the order recited. 

B. “growing a heteroepitaxial layer on the seed area”

This term is not indefinite. Defendants argue that a heteroepitaxial layer cannot be grown 

on the “seed area” because the “seed area no longer exists because it was removed by the ‘etching 

back’ of Step 5.” Defs.’ Br. at 10. No reasonable person of ordinary skill in the art, reading the 

Case 6:20-cv-00243-ADA Document 40 Filed 09/25/20 Page 6 of 18
5

claims in light of the specification, would understand that the “seed area”—an important aspect of 

the invention’s novelty (see ’400 Patent at 3:61-4:5)—would be “removed” by any step in the 

claimed process. Such a conclusion would be divorced from the technical understanding of the 

skilled artisan.

Defendants purport to walk through the claimed steps to show the disappearing “seed area.” 

Their argument suffers from serious defects. First, Defendants argue that the seed area is formed 

in Step 2, but as discussed above, the second claimed step does not form the seed area. Rather, it 

describes the location and dimensions of the seed area that will be formed. Step 2 describes the 

formation of the pedestal, to be sure, but only provides that the seed area will be on the top surface 

and will have certain dimensions.1

Defendants argue that “the specification refers to the pedestal’s top surface as shown in 

Figure 1A as a seed layer.” Defs.’ Br. at 11. The specification does not say that. Rather, the 

specification states that the pedestals “are comprised of any suitable material capable of acting as 

a seed layer for subsequent epitaxial growth.” ’400 Patent at 5:6-8. That the pedestals are made of 

a material that could be used as a seed layer does not mean that the top of the pedestal as shown in 

Figure 1A is the “seed area” disclosed in the claims. 

Next, Defendants argue that Step 3 requires providing a mask layer that “covers both the 

top surface (i.e., seed area) and the side surface of the pedestal.” Defendants again take liberties 

with the claim language. Step 3 does not mention a “seed area.” Defendants try to sneak in this 

element in order to support their view that the “seed area” was formed in the previous step, but the 

claimed step does not mention a seed area. 

 1 Notably, Defendants must change the tense of the claim to “form[s]” in order to make their argument. 

Defs.’ Br. at 11. 

Case 6:20-cv-00243-ADA Document 40 Filed 09/25/20 Page 7 of 18
6

The following step, Step 4 according to Defendants, is “removing a portion of the selective 

growth mask layer to expose the seed area of the pedestal.” Defendants contend that Figure 1C 

“depicts that the seed area 16 (i.e., the same top surface of the pedestal formed in Step 2) has been 

exposed by removal of a portion of the mask layer.” Defs.’ Br. at 12. As a threshold point, 

Defendants erroneously state that element 16 refers to the “seed area.” In truth, element 16 refers 

to the top surface of the pedestal. See ’400 Patent at 5:38-40 (“Referring to FIG. 1C, a portion of 

the selective growth mask layer 14 is removed to expose at least the top surface 16 of the 

pedestal.”). As discussed in the preceding section, Defendants cannot prove their point by mixing 

and matching claim terms.

Further, in Defendants’ view this step removes the selective growth mask layer from the 

top of the pedestal, leaving everything else untouched. But as the specification contemplates:

Various suitable methods can be employed to selectively remove the top portion of 

the selective growth mask layer. Examples include anisotropically etching to 

selectively remove the selective growth mask layer from the top surface of the 

pedestal; or formation of a non-conformal layer, such as by depositing and 

reflowing a layer followed by an etch back process. The etch back process can 

employ polishing, such as chemical mechanical polishing.

’400 Patent at 5:40-47. Some of these methods, such as chemical mechanical polishing, could 

remove more of the top surface of the pedestal than existed before application of the selective 

growth mask lawyer—much like sanding wood removes the top layers of the wood itself.

Accordingly, Defendants go too far in arguing that the seed area exposed in this step is the “same

top surface of the pedestal formed in Step 2.” As the specification makes clear, that is not always 

the case. 

Further, under Defendants’ flawed view that the “seed area” was formed earlier in the 

process and is coextensive with the top surface, this step risks likewise removing the “seed area.” 

Case 6:20-cv-00243-ADA Document 40 Filed 09/25/20 Page 8 of 18
7

But the result of this step is that the “seed area” is exposed. The “seed area” cannot be exposed at 

the same time it is removed. This dooms Defendants’ argument and their reasoning. 

The next recited step is “selectively etching back the exposed top surface of the pedestal.” 

Defendants argue that during this step, “the seed area that was formed in Step 2 and re-exposed in 

Step 4 is removed from the pedestal.” Defs.’ Br. at 12. Defendants provide an annotated version 

of Figure 1D to show “a new (lower) top surface” and a “red highlight” where the “original top 

surface (i.e., the seed area) used to exist.” Id.

Defendants argue that a heteroepitaxial layer cannot be grown in the final recited step 

because that step requires growing the layer on the same “seed area” recited in the earlier steps 

and that “seed area” no longer exists because it was etched away. Id at 13.

A reasonable person of ordinary skill in the art would not distort the claimed steps in the 

way Defendants do, would not consider the red highlight to be the only “seed area,” and would not 

understand the “seed area” to be destroyed by the preceding steps. See Plaintiff’s Ex. 5 (Decl. of 

Prof. R. Harris) at ¶¶19–25. Instead, a person of ordinary skill in the art would consider the “seed 

area” to be on the top surface of the pedestal—even after a selective etch back— and having a 

linear surface dimension that ranges from about 10 nm to about 100 nm, as reflected in the second 

recited claim step. Id. at ¶¶20–23. A skilled artisan would not understand that the “seed area” 

exposed has suddenly disappeared because of the etch back. Rather, because the skilled artisan 

views the pedestal and heteroepitaxial layer in terms of their crystal properties, and inherently 

Case 6:20-cv-00243-ADA Document 40 Filed 09/25/20 Page 9 of 18
8

knows that any atomic surface atop pedestal is suitable for epitaxial processing, then altering the 

height of the pedestal would still result in a “seed area” on the top surface. Id. 2

Consider a bathtub filled 50% with water. The top surface of the water does not remain at 

the halfway mark if the tub is drained partially to 25% of its capacity. No reasonable person would 

say that the top surface of the water level is some plane a few inches above the partially drained 

tub. 

Likewise, if water is added to the half-filled tub to make 75% full, no reasonable person would say 

that the top surface of the water is some plane that is now under a few inches of water. Yet, that 

is the non-sensical logic Defendants want this Court to apply. Such contrived and twisted reading 

of the claims is enough to reject an indefiniteness challenge. See Microprocessor Enhancement 

Corp. v. Texas Instruments Inc., 520 F.3d 1367, 1376 (Fed. Cir. 2008) (finding non-sensical 

 2 Claim 1 of the ’400 Patent was asserted against Samsung and TSMC, neither of which argued that the 

claimed steps resulted in a disappearing “seed area” rendering the claim indefinite. And both Samsung and 

TSMC submitted expert declarations in support of their Markman arguments, but neither expert 

experienced any difficulty in understanding the claim. In fact, Samsung relied on the testimony of 

Dr. Jeffrey Bokor, the same expert Defendants tap here, to support its arguments. See Plaintiff’s Ex. 6 

(Dec. 12, 2019 Bokor Decl.). In his Samsung declaration, Dr. Bokor did not express any hint of confusion 

about how to perform the claimed method. In his threadbare declaration in this case, however, Dr. Bokor

suddenly says, “it is my opinion that a POSITA would not understand how to perform the method of claim 1 

as drafted.” Dkt. 35-1 at 7. Dr. Bokor’s declaration is conclusory and is devoid of any technical rigor. See

Ex. 5 (Harris Decl.) at §¶24. He does not explain why or how a skilled artisan would read the claims to 

describe a disappearing seed area or how that understanding squares with the remainder of the specification. 

Id. His declaration simply parrots Defendants’ argument. Thus, Dr. Bokor’s newfound inability to 

understand claim 1 deserves no weight. And as mentioned in UNM’s Opening Brief, Defendants had no 

trouble understanding how to perform the method of claim 1 when they filed their request for inter partes

review. 

Case 6:20-cv-00243-ADA Document 40 Filed 09/25/20 Page 10 of 18
9

reading of claims as “indicative of the ease in determining the appropriate meaning of each of the 

terms”).

Defendants believe that the intrinsic record supports their fantasy, arguing that “the 

specification distinguishes the exposed top surface in Figure 1D and the top surface of the pedestal 

in 1A by referring to the former as “a seed area” and not “the seed area.” Defs.’ Br. at 13 (emphasis 

in original). They quote the following for support: “Following the selective etch back, an epitaxial 

layer is grown on the remaining portion of pedestal 12. The exposed top surface of 

pedestal 12 provides a seed area for the epitaxial growth.” Id. (quoting ‘’400 Patent at 5:64-67). 

Based on this, Defendants contend that “the specification contemplates that another seed area was 

created when the pedestal 12 was etched back as a result of Step 5.” Id. (emphasis in original). 

Defendants’ reading of the record is demonstrably false.

First, Defendants omit the remainder of their cited portion of the specification. The full 

quote confirms that “the seed area” of Figure 1D is the same seed area disclosed in the prior steps

and that Defendants misplace reliance on the use of the indefinite article. 

Following the selective etch back, an epitaxial layer is grown on the remaining 

portion of pedestal 12. The exposed top surface of pedestal 12 provides a seed area 

for the epitaxial growth. As described above, the seed area can have at least one 

dimension that is less than about 100 nm. Example configurations for the seed area

include a rectangular area having with [sic] a width dimension ranging from about 

10 nm to about 100 nm and a length dimension ranging from about 200 nm to about 

2000 nm; or a circular area having a diameter ranging from, for example, about 

10 nm to about 100 nm.

’400 Patent at 5:64-6:6 (emphasis added). In other words, the specification shows that “the seed 

area” of Figure 1C was not removed and still exists. 

Second, Defendants’ argument overlooks the specification’s discussion of Figures 2E and 

2F, shown below.

Case 6:20-cv-00243-ADA Document 40 Filed 09/25/20 Page 11 of 18
10

Figure 2E shows the pedestal with an exposed top surface, which “can be used without further 

processing as a seed area for heteroepitaxial growth, if desired.” ’400 Patent at 7:21-23. “During 

epitaxy,” the specification adds, “a single crystal semiconductor grows on the seed area 26 that is 

shown exposed in FIG. 2E.” Id. at 7:23-24 (emphasis added). 

The specification then describes that “a further selective etch back of the seed material of 

pedestal 12 can be carried out to form the sidewall barriers 18 prior to the epitaxial growth, as 

illustrated in FIG. 2F.” Id. at 7:25-27. “Heteroepitaxial growth is then carried out between the 

sidewall barriers 18. Sidewall barriers 18 can block the propagation of defects, such as stacking 

faults and misfit dislocations, from the upper region of the heteroepitaxial layer.” Id. at 7:31-33.

Figure 2F delineates the seed area with the same label, 26, as used in Figure 2E. More important, 

while the seed area in Figure 2F provides the additional benefit of the sidewall barriers that block 

propagation defects, the specification does not differentiate between the seed areas in the two 

figures for purposes of heteroepitaxial growth. To the contrary, in the remaining embodiments, 

heteroepitaxial growth occurs on “seed areas.” See, e.g., ’400 Patent at 7:54-63 (describing growth 

on seed areas in Figure 5); id. at 8:4-15 (same as to Figures 6 and 7); id. at 8:41-43 

(“...heteroepitaxial growth proceeds from the exposed semiconductor surface, or seed area, of 

pedestal 12”). 

The foregoing is consistent with the plain and ordinary meaning of “seed area,” which the 

Court construed to be “the area on which epitaxial growth could occur.” (Emphasis added). As the 

Case 6:20-cv-00243-ADA Document 40 Filed 09/25/20 Page 12 of 18
11

claims and specification confirm, epitaxial growth could occur on the top surface of the pedestal 

after the selective growth mask layer has been removed and/or after the top surface of the pedestal 

has been selectively etched back. Defendants do not challenge or seek modification of the Court’s 

construction of “seed area,” but the meaning of “seed area” strongly militates against crediting 

Defendants’ contrived argument that the seed area disappears. 

Defendants misleadingly argue that an amendment during prosecution rendered claim 1 

indefinite. Defs.’ Br. at 15. Defendants claim that the addition of Step 5, the etching back step, 

eliminates the seed area formed in Step 2. Id. This argument is nothing more than an alternate 

statement of Defendants’ distorted view of the claims and the record. Nothing in the file history 

supports Defendants’ argument. To the contrary, the examiner did not reject the claim as amended 

for being indefinite. If the addition of the claimed step resulted in the elimination of a seed area—

the use of which will lead to reduced defects—and a violation of §112, the examiner would have 

made that objection during prosecution. See Energizer Holdings Inc. v. ITC, 435 F.3d 1366, 1370 

(Fed. Cir. 2006) (rejecting indefiniteness challenge in part because the claims were not rejected or 

objected to on the ground of no antecedent basis). The addition of Step 5 to the claims does not 

eliminate the seed area formed in prior steps. Defendants’ invocation of the file history is mere 

makeweight. 

Defendants also argue that the Court cannot redraft claims to resolve indefiniteness. This 

is another straw man—one that is designed to shift impermissibly the burden of proving 

definiteness to UNM. Defendants cannot put the proverbial cart before the horse and point the 

finger at UNM. In any event, UNM’s interpretation of the claim language—an interpretation 

uniformly held by prior defendants and Defendant in the IPR proceeding—accords with the plain 

language of claims as well as the specification’s express teachings. Ex. 5 (Harris Decl.) at ¶¶19–

Case 6:20-cv-00243-ADA Document 40 Filed 09/25/20 Page 13 of 18
12

23, 25; Trover Group, Inc. v. Dedicated Micros USA, 2015 WL 1263358, at *9 (E.D. Tex. Mar. 

19, 2015) (Bryson, J., sitting by designation) (rejecting indefiniteness challenge because “the 

concept is a disarmingly simple one”).

C. “heteroepitaxial layer”

As explained in UNM’s Opening Brief, the Court’s prior construction of “heteroepitaxial 

layer” should be adopted. See UNM Opening Br. at 5–6. Defendants contend that the insertion of 

another instance of “crystalline” is necessary because both the underlying material and the layer 

grown on it must be crystalline. Defs.’ Br. at 17. But the Court’s construction of the term accounts 

for this mutuality of crystalline structure. The Court construed the term to be “a layer of crystalline

material grown on the seed area, but of a different material than of the seed area, that is based off 

of the crystalline structure of the seed area.” (Emphasis added.). The Court’s construction thus 

makes clear that both the grown material and the underlying material must have crystalline 

structure. Furthermore, Defendants’ proposed addition creates a redundancy. The additional 

“crystalline” that Defendants seek to add describes the structure of the grown material, as opposed 

to the underlying material, but the first instance of crystalline in the Court’s construction—“a layer 

of crystalline material grown”—does precisely that. Defendants’ proposed addition incorporates

wholly unnecessary verbiage and should be rejected. 

D. “selective growth mask layer”

The Court’s March 2020 construction of this term should be adopted without modification. 

Defendants do not argue that the prior construction is incorrect or inconsistent with the intrinsic 

record. Rather, Defendants contend that their proposed construction “will be more useful for the 

jury” than the Court’s construction. The Court’s construction of the term is sufficiently clear and 

understandable to a person of ordinary skill in the art as well as the jury, who will hear testimony 

from experts about infringement and invalidity. 

Case 6:20-cv-00243-ADA Document 40 Filed 09/25/20 Page 14 of 18
13

Even more than with the preceding term, Defendants again want to encumber the Court’s 

prior construction with unnecessary language. Defendants all but concede that their proposal adds 

nothing to the Court’s construction: “Defendants’ proposed modification simply makes explicit 

what is implicit in Plaintiff’s construction.” Defs.’ Br. at 18. “Plaintiff’s construction” is the same 

as the Court’s construction, and discussed in UNM’s Opening Brief, the Court’s construction 

makes clear that the mask layer covers some areas of the underlying material and exposes other 

areas of the underlying material and that epitaxial growth occurs on the exposed areas. Contrary 

to Defendants’ suggestion, this construction provides more than enough clarity and guidance for 

the jury as-is. The Court need not engage in unnecessary and superfluous claim construction 

exercise. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (noting 

that claim construction “is not an obligatory exercise in redundancy”).

Further, as discussed in UNM’s Opening Brief at 7-9, Defendants’ proposed construction 

risks confusing the jury because of its potential to exclude from the scope of the claim certain 

embodiments, such as those in Figures 1E. In Figure 1E, growth of the heteroepitaxial layer occurs 

up and over the sidewall barriers. While this lateral overgrowth is not growth “on” the sidewall, a 

jury could misinterpret Defendants’ surplusage to disqualify embodiments or structures like those 

in Figure 1E from the scope of the claim. That risk outweighs any alleged marginal benefit of 

Defendants’ proposed construction. 

Defendants cite the specification’s disclosure that the selective growth mask layer can 

“prevent or reduce nucleation at the pedestal sidewalls, thereby isolating the nucleation during 

epitaxy to the top facet of the pedestal.” Defs.’ Br. at 19. But this portion of the specification 

counsels against Defendants’ proposed construction, which appears to require complete prevention 

of nucleation. Indeed, “reduced” nucleation is missing from Defendants’ proposed construction. 

Case 6:20-cv-00243-ADA Document 40 Filed 09/25/20 Page 15 of 18
14

At the very least, a lay juror might be confused and think that all nucleation must be prevented—

a view inconsistent with the specification. 

Defendants also argue that a person of ordinary skill in the art would understand the dual 

purposes of the selective growth mask layer. But neither Defendants nor their expert argue that a 

skilled artisan would find the Court’s construction unhelpful, confusing, or incomplete. As 

Defendants concede, the notions that undergird their construction are already present in the Court’s 

construction. 

Because the potential confusion of Defendants’ additional language easily surpasses any 

purported utility to an expert or a juror, Defendants’ proposed construction should be rejected, and 

the Court should adopt its prior construction in this case. 

III. Conclusion

Neither the claims nor the specification mandate that the claim steps be performed in the 

order recited, and Defendants cannot show otherwise. Moreover, the Court should summarily 

reject Defendants’ illogical and strained contention that the claimed method results in removal of 

the “seed area.” Defendants’ position is contrary to a plain reading of the claims, the specification’s 

guidance, and common sense. The Court should likewise reject Defendants’ attempt to lard up the 

Court’s prior constructions of “heteroepitaxial layer” and “selective growth mask layer” with 

unnecessary and potentially confusing additional language. In short, the Court need not deviate 

from the status quo ante. 

Dated: September 25, 2020 Respectfully submitted,

By: /s/ Charles L. Ainsworth

Charles L. Ainsworth (Texas 00783521)

Robert Christopher Bunt (Texas 00787165)

PARKER, BUNT & AINSWORTH, P.C.

Case 6:20-cv-00243-ADA Document 40 Filed 09/25/20 Page 16 of 18
15

100 East Ferguson, Suite 418

Tyler, Texas 75702

Tel: (903) 531-3535

charley@pbatyler.com

rcbunt@pbatyler.com

Michael W. Shore (Texas 18294915)

Alfonso G. Chan (Texas 24012408)

Samuel E. Joyner (Texas 24036865) 

(pro hac vice to be submitted)

Corey M. Lipschutz (Texas 24099303)

SHORE CHAN DEPUMPO LLP

901 Main Street, Suite 3300

Dallas, Texas 75202

Tel: (214) 593-9110

Fax: (214) 593-9111

mshore@shorechan.com

achan@shorechan.com

sjoyner@shorechan.com

clipschutz@shorechan.com

Brian D. Melton (Texas 24010620)

John P. Lahad (Texas 24068095)

Alejandra C. Salinas (Texas 24102452)

Thomas V. DelRosario (Texas 24110645) 

(pro hac vice to be submitted)

SUSMAN GODFREY LLP

1000 Louisiana Street, Suite 5100

Houston, Texas 77002

Tel: (713) 651-9366

Fax: (713) 654-6666

bmelton@susmangodfrey.com

jlahad@susmangodfrey.com

asalinas@susmangodfrey.com

tdelrosario@susmangodfrey.com 

COUNSEL FOR PLAINTIFF 

Case 6:20-cv-00243-ADA Document 40 Filed 09/25/20 Page 17 of 18
16

CERTIFICATE OF SERVICE

I hereby certify that on September 25, 2020 a true and correct copy of the foregoing was 

served to any and all counsel of record via CM/ECF.

/s/ Charles L. Ainsworth

Charles L. Ainsworth

Case 6:20-cv-00243-ADA Document 40 Filed 09/25/20 Page 18 of 18