IN THE UNITED STATES DISTRICT COURT 

WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

UNM RAINFOREST INNOVATIONS, 

 Plaintiff, 

v. 

GLOBALFOUNDRIES INC., 

GLOBALFOUNDRIES U.S. INC., 

and GLOBALFOUNDRIES U.S. 2 LLC, 

 Defendants. 

Civil No. 6:20-CV-243-ADA 

Jury Trial Demanded 

DEFENDANTS’ RESPONSIVE CLAIM CONSTRUCTION BRIEF 

 

Case 6:20-cv-00243-ADA Document 41 Filed 09/25/20 Page 1 of 26
i 

TABLE OF CONTENTS 

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

II. ARGUMENT ...................................................................................................................... 1

A. Order of Performing the Steps of the Claimed Method .......................................... 1

1. Plaintiff Mischaracterizes Part of Step 2 as Preamble-Like 

Language to Step 3 and Step 4 .................................................................... 2

2. File History Requires that a Pedestal with a “seed area” Is Formed 

in Step 2 ...................................................................................................... 4

3. Defendants’ Construction is Consistent with the Embodiment 

Disclosed in Figure 2 .................................................................................. 5

4. Contrary to Plaintiff’s Assertion, Step 5 Must Be Performed After 

Step 4 and Cannot be Performed Before Step 3 ......................................... 8

5. Plaintiff’s Construction Would Improperly Exclude Embodiments 

in Figures 1 and 2 Based on the Agreed Construction of “seed 

area” .......................................................................................................... 11

6. Plaintiff Is Repeating Its Attempt to Construe “seed area” as an 

Area “on which heteroepitaxial growth starts” ......................................... 12

7. Plaintiff’s Pending Patent Application Shows that the Order in 

Which the Steps Are Recited Matters ....................................................... 14

B. “growing a heteroepitaxial layer on the seed area” .............................................. 16

C. “heteroepitaxial layer” .......................................................................................... 17

D. “selective growth mask layer” .............................................................................. 18

Case 6:20-cv-00243-ADA Document 41 Filed 09/25/20 Page 2 of 26
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TABLE OF AUTHORITIES 

 Page(s) 

Cases 

Digital-Vending Servs. Int’l, LLC v. Univ. of Phoenix, Inc., 

672 F.3d 1270 (Fed. Cir. 2012)..............................................................................................3, 9 

GPNE Corp. v. Apple Inc., 

830 F.3d 1365 (Fed. Cir. 2016)................................................................................................20 

Greenliant Sys., Inc. v. Xicor LLC, 

692 F.3d 1261 (Fed. Cir. 2012)................................................................................................11 

Interactive Gift Exp., Inc. v. Compuserve Inc., 

256 F.3d 1323 (Fed. Cir. 2001)..................................................................................................6 

Jack Guttman, Inc. v. Kopykake Enterprises, Inc., 

302 F.3d 1352 (Fed. Cir. 2002)................................................................................................20 

Pacing Techs., LLC v. Garmin Int’l, Inc., 

778 F.3d 1021 (Fed. Cir. 2015)..................................................................................................6 

Personalized User Model LLP v. Google Inc., 

No. CIV. 09-525-LPS, 2012 WL 295048 (D. Del. Jan. 25, 2012) ..........................................12 

Phonometrics, Inc. v. N. Telecom Inc., 

133 F.3d 1459 (Fed. Cir. 1998)..................................................................................................4 

Poly-Am., L.P. v. API Indus., Inc., 

839 F.3d 1131 (Fed. Cir. 2016)..................................................................................................3 

Samsung Elecs. Am., Inc. v. Prisua Eng’g Corp., 

948 F.3d 1342 (Fed. Cir. 2020)................................................................................................17 

Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 

962 F.3d 1362 (Fed. Cir. 2020)..................................................................................................2 

Source Search Techs., LLC v. LendingTree, LLC, 

588 F.3d 1063 (Fed. Cir. 2009)................................................................................................16 

U.S. Surgical Corp. v. Ethicon, Inc., 

103 F.3d 1554 (Fed. Cir. 1997)................................................................................................20 

 

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TABLE OF EXHIBITS 

Exhibit No. Description 

Ex. 8 U.S. Patent Application Publication No. 2011/0140085 (“Homyk”) 

Ex. 9 Preliminary Constructions for STC.UNM v. Samsung and TSMC (Mar. 12, 

2020) 

Ex. 10 U.S. Patent Application 16/746,853 (the “’853 application”) 

(STC.UNM0009802-9887) 

 

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I. INTRODUCTION 

Defendants GLOBALFOUNDRIES Inc., GLOBALFOUNDRIES U.S. Inc., and

GLOBALFOUNDRIES U.S. 2 LLC (collectively, “Defendants”) submit their Responsive Claim 

Construction Brief to Plaintiff UNM Rainforest Innovations’ Opening Claim Construction Brief 

(ECF No. 341

). Plaintiff relies on a contorted interpretation of claim 1 that contradicts the 

language of the claim and the specification to argue that the steps of the claimed method do not 

have to be performed in the order they are recited. Moreover, Plaintiff’s argument that the steps 

do not have to be performed in the recited order does nothing to resolve the indefiniteness of the 

claim. Though Plaintiff does not dispute that Defendants’ constructions of “heteroepitaxial layer” 

and “selective growth mask layer” are technically accurate, it still argues that the jury does not 

need these accurate constructions. Defendants’ proposed constructions should be adopted. 

II. ARGUMENT 

A. Order of Performing the Steps of the Claimed Method 

Plaintiff does not dispute that most of the steps of claim 1 must be performed in the order 

they are recited. Plaintiff admits that Steps 1, 3, 4, and 6 must be performed in order. See ECF 

No. 34 at 11 (“[S]tep [6] . . . must be performed after steps [3] and [4]. . . . [S]tep [1] likely must 

be performed first.”).2

 Plaintiff also admits that the first half of Step 2 must be performed after 

Step 1 but before Step 3.3 See id. at 11-12. However, Plaintiff argues that the following two 

 

1

 “ECF No.” refers to docket for this matter unless otherwise indicated. The cited page number 

refers to the page number of the underlying document. 

2

 Plaintiff refers to Steps 1-6 of claim 1 identified by Defendants as steps [a]-[f]. See ECF No. 34 

at 10-11; GLOBALFOUNDRIES Opening Br., ECF No. 35, at 5-6, Tbl. 1. 

3

 The first half of Step 2 refers to the limitation “forming a nanostructured pedestal on the 

semiconductor substrate, the pedestal having a top surface and a side surface,” and the second 

half of the step refers to the limitation “the top surface forming a seed area having a linear 

surface dimension that ranges from about 10 nm to about 100 nm.” ’400 patent, claim 1. 

Case 6:20-cv-00243-ADA Document 41 Filed 09/25/20 Page 5 of 26
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limitations of claim 1 do not have to be performed in the order they are recited: 

 first, Plaintiff argues that the second half of Step 2 merely “discloses what ultimately 

will be formed” and need not be performed as part of Step 2, see id. at 11-12 

(emphasis in original); and 

 second, though Plaintiff admits that Step 5 follows Step 4, it argues that Step 5 

alternatively can be performed before Step 3. See id. at 13. 

As Defendants explained in their opening brief, the grammar and the structure of claim 1 

dictate that the steps of the claim be performed in the order they appear in the claim. See ECF 

No. 35 at 4-9. Neither of the two exceptions to that order Plaintiff seeks has any merit. 

1. Plaintiff Mischaracterizes Part of Step 2 as Preamble-Like Language 

to Step 3 and Step 4 

Even though Plaintiff admits that the first half of Step 2 is performed after Step 1 but 

before Step 3, it nevertheless argues that the second half of the same step is not subject to the 

same constraints. Plaintiff argues that the “top surface forming a seed area” term merely 

“discloses what ultimately will be formed” by Steps 3 and 4. ECF No. 34 at 11 (emphasis in 

original). Even though Step 2 is a limitation of claim 1, Plaintiff nevertheless contends that the 

second half of step 2 is “not a step that must be performed—it is description of a result yielded 

by the claimed method.” Id. at 12 (emphasis added). In other words, Plaintiff essentially treats 

the “forming a seed area” term as a preamble to Steps 3 and 4 because, according to Plaintiff, the 

term merely describes the purpose of those subsequent steps. Plaintiff contends, as a result, that 

the second half of Step 2 does not circumscribe the pedestal formed in Step 2.4

 Plaintiff’s 

 

4

 “In general, a preamble limits the invention if it recites essential structure or steps, or if it is 

necessary to give life, meaning, and vitality to the claim.” Shoes by Firebug LLC v. Stride Rite 

Children’s Grp., LLC, 962 F.3d 1362, 1367 (Fed. Cir. 2020) (internal quotation marks omitted). 

“Conversely, a preamble is not limiting where a patentee defines a structurally complete 

Case 6:20-cv-00243-ADA Document 41 Filed 09/25/20 Page 6 of 26
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interpretation that second half of Step 2 is not a step that must be performed is flawed for 

several reasons. 

First, Plaintiff’s interpretation does not accord with a plain reading of the claim language. 

Step 2 clearly recites a step of forming a pedestal having certain properties, requiring: 

 forming a nanostructured pedestal on the semiconductor substrate, 

 the pedestal having a top surface and a side surface, and 

 the top surface of the pedestal forming a seed area with certain dimensions. 

The plain meaning of the claim requires forming a pedestal and its top surface forming a seed 

area at the conclusion of Step 2. Plaintiff fails to proffer any cogent reason to depart from that 

plain meaning.5 See Poly-Am., L.P. v. API Indus., Inc., 839 F.3d 1131, 1136 (Fed. Cir. 2016) 

(“We depart from the plain and ordinary meaning in only two instances. The first is when a 

patentee acts as his own lexicographer. The second is when the patentee disavows the full scope 

of the claim term in the specification or during prosecution.”) (internal citations omitted). 

Second, by interpreting the second half of Step 2 as merely enumerating the purpose of 

subsequent steps, Plaintiff renders the term superfluous and violates a basic cannon of claim 

construction. Plaintiff’s argument that the “top surface forming a seed area” is “not a step that 

must be performed” and relates to “what ultimately will be formed” eviscerates all meaning and 

substance of that term. See ECF No. 34 at 11-12 (emphasis in original). Such a construction

cannot be correct. See Digital-Vending Servs. Int’l, LLC v. Univ. of Phoenix, Inc., 672 F.3d 1270, 

1275 (Fed. Cir. 2012) (“[C]laims are interpreted with an eye toward giving effect to all terms in 

 

invention in the claim body and uses the preamble only to state a purpose or intended use for the 

invention.” Id. (internal quotation marks omitted). To the extent Plaintiff argues that the second 

half of Step 2 is like a limiting preamble, then the second half of Step 2 should define the 

pedestal at that stage and not a Step 4. 

5

 Notably, Plaintiff does not cite any legal authority to support its argument that part of a 

limitation can be ignored without any legitimate justification.

Case 6:20-cv-00243-ADA Document 41 Filed 09/25/20 Page 7 of 26
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the claim. In Phillips, this court reinforced the importance of construing claim terms in light of 

the surrounding claim language, such that words in a claim are not rendered superfluous.”) 

(internal citations and quotation marks omitted). Instead, entire Step 2 specifies what must exist 

when the pedestal is formed in that step. 

Third, Plaintiff improperly attributes different meanings with varying temporal attributes 

to the “forming” term that occurs twice in the same step. See ECF No. 34 at 11-12. Plaintiff 

argues that the first occurrence of “forming” (“forming a . . . pedestal”) is an active step that 

occurs during Step 2 and creates a pedestal whereas the second occurrence of “forming” (“top 

surface forming a seed area”) may impact steps that occur later in time. See id. Plaintiff does not 

offer any explanation as to why the same term that occurs twice in the same step should have 

effect at different stages of the method claim. See Phonometrics, Inc. v. N. Telecom Inc., 133 

F.3d 1459, 1465 (Fed. Cir. 1998) (“A word or phrase used consistently throughout a claim 

should be interpreted consistently.”). Absent any intrinsic evidence to the contrary, every usage 

of the “forming” term in Step 2 should be interpreted consistently—the first forming term forms 

the pedestal and the second forming term makes the top surface form “a seed area.” 

2. File History Requires that a Pedestal with a “seed area” Is Formed in 

Step 2 

The prosecution history confirms that “a seed area” is formed as a result of Step 2. 

During prosecution, the examiner relied on U.S. Patent Application Pub. No. 2011/0140085 

(“Homyk”) to reject pending claim 14 in the application that issued as the ’400 patent. Paragraph 

27 of Homyk states: 

Lithography and highly anisotropic etching enables routine 

fabrication of 30-50 nm nanostructures (100) in silicon with over 

40:1 aspect ratios as shown in FIG. 1. Such structures can be 

further reduced in diameter by a subsequent thermal oxidation, 

wherein the oxidation process can be designed to self-terminate

Case 6:20-cv-00243-ADA Document 41 Filed 09/25/20 Page 8 of 26
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such that nanoscale pillars below 10 nm in width can be defined, 

allowing wide processing latitude. 

Ex. 8, Homyk, ¶ 27. The examiner stated that paragraph 27 of Homyk discloses: 

forming a nanostructured pedestal [] on the semiconductor 

substrate, the pedestal having a top surface and a side surface, the 

top surface forming a seed area having a linear surface dimension 

that ranges from about 10 nm to about 100 nm. 

Ex. 5, Non-Final Rejection (Nov. 3, 2014), ECF No. 35-5, at 4. In other words, the examiner 

mapped the 30-50 nm nanostructures mentioned in paragraph 27 of Homyk against 

nanostructured pedestals with a 10-100 nm seed area formed by Step 2. Homyk also states that 

“[s]uch structures can be further reduced in diameter by a subsequent thermal oxidation” and 

“nanoscale pillars below 10 nm in width can be defined.” Ex. 8, ¶ 27. Plaintiff admits that the 

thermal oxidation step corresponds to Step 3 in the Figure 2 embodiment. ECF 34 at 12-13. If the 

dimension of the nanostructures in Homyk is measured after the steps that correspond to Steps 3 

and 4, that dimension could be outside the claimed dimension of about 10-100 nm. Thus, the 

examiner’s rejection was based on an understanding that a seed area having a dimension of about 

10-100 nm is formed in Step 2. Otherwise, the examiner would not have mapped paragraph 27 of 

Homyk to Step 2. Notably, Plaintiff did not dispute the examiner’s conclusion that Homyk 

discloses “a seed area” with a 10-100 nm linear dimension before Steps 3 and 4. See Ex. 6, Reply 

to Non-Final Rejection (Feb. 2, 2015), ECF No. 35-6, at 4-5, 9-10 (amending pending claim 14 

to add a limitation that the length is 2 or more times longer than the width). 

3. Defendants’ Construction is Consistent with the Embodiment 

Disclosed in Figure 2 

In order to support its flawed interpretation, Plaintiff argues that Defendants’ construction 

risks excluding the embodiment shown in Figures 2A-F because Defendants’ construction 

requires that “the seed area would have had to exist several steps before Step 2E.” See ECF No. 

Case 6:20-cv-00243-ADA Document 41 Filed 09/25/20 Page 9 of 26
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34 at 12-13. Plaintiff argues that pedestal 12 depicted in Figure 2B lacks a seed area because the 

top surface of the pedestal is covered by an etch mask 22 and is then next depicted as covered by 

a selective growth mask layer 14 in Figure 2C. See id. at 12. Plaintiff fails to recognize that the 

specification describes that the top surface of the pedestal is exposed between Figure 2B and 

2C.6

The specification and the claim demonstrate that a seed area does exist after the 

formation of the pedestal 12 in Figure 2B but before the selective growth mask layer 14 is 

provided in Figure 2C. As shown below, the top surface of the pedestal in Figure 2B has an etch 

mask 22 whereas Figure 2C lacks the etch mask 22; rather, the selective growth mask layer 14 in 

Figure 2C is formed directly on the top surface of the pedestal: 

Table 1 

Specification Figure 

”Using the etch mask 22, the silicon substrate 

can be patterned by etching to form the 

pedestal 12, as illustrated in FIG. 2B.” ’400 

patent at 6:51-53. 

 

6

 Plaintiff cites Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d 1323, 1344 (Fed. Cir. 

2001), stating that it “reject[ed] argument that claims must be performed in the order recited 

because such a construction would not read on the preferred embodiment.” ECF No. 34 at 13. 

But unlike Interactive, there is no dispute in this case that if the claim is construed to require that 

the steps be performed in order, the claim would read on at least one of the preferred 

embodiments, i.e., the embodiment disclosed in Figure 1. See Pacing Techs., LLC v. Garmin 

Int’l, Inc., 778 F.3d 1021, 1026 (Fed. Cir. 2015) (“[I]n a case such as this, where the patent 

describes multiple embodiments, every claim does not need to cover every embodiment.”). 

Regardless, consistent with Defendants’ construction, a seed area exists before Figure 2C. 

Case 6:20-cv-00243-ADA Document 41 Filed 09/25/20 Page 10 of 26
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“Following etching, the etch mask 22 can be 

removed.” ’400 patent at 6:56. 

 

“In an embodiment, thermal oxidation can 

then be carried out to form a selective growth 

mask layer 14 of silicon dioxide to a desired 

thickness.” ’400 patent at 6:56-59. 

The specification explains that after the pedestal is formed in Figure 2B, the etch mask 22 is 

removed before providing the selective growth mask layer 14 in Figure 2C. See ’400 patent at 

6:56 (“Following etching, the etch mask 22 can be removed.”). Illustrative Figure 2B-1 in Table 

1 above provides a depiction of this intermediate structure without the etch mask 22. The 

uncovered top surface of the pedestal exists before the selective growth mask layer 14 is formed 

on the pedestal 12. The top surface of the pedestal in Figure 2B-1 forms “an area on which the 

epitaxial growth could occur” and constitutes a “seed area” under the Court’s construction. See

Ex. 9, Preliminary Constructions for STC.UNM v. Samsung and TSMC (Mar. 12, 2020). 

Therefore, the Figures 2A-F embodiment involves forming a seed area before Step 3. 

In fact, Plaintiff’s statements prove that the etch mask 22 is removed and a seed area is 

formed after the step of Figure 2B but before the step of Figure 2C. Plaintiff states that “Figure 

2C shows the formation of a selective growth mask layer (14) on the pedestal using thermal 

oxidation, which consumes some of the pedestal material.” ECF No. 34 at 12 (citing ’400 patent 

at 6:56-64). If the etch mask 22 is not removed from the pedestal 12 and the top surface is not 

Case 6:20-cv-00243-ADA Document 41 Filed 09/25/20 Page 11 of 26
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exposed to form a seed area, then the selective growth mask layer 14 cannot be formed on the 

pedestal 12 as shown in Figure 2C in the manner described by Plaintiff. 

Other parts of the claim also demonstrate that the etch mask 22 must be removed from 

the pedestal 12 before the selective growth mask layer 14 is provided. Step 4 requires removing a 

portion of the selective growth mask layer 14 to expose the seed area. See ’400 patent, claim 1. If 

the etch mask 22 were not removed from the pedestal, then the removal of the selective growth 

mask layer 14 would result in exposing the etch mask 22 and not the top surface of the pedestal. 

In conclusion, Plaintiff is incorrect when it argues that a “seed area” is not formed before 

Step 2C in the embodiment disclosed in Figure 2. 

4. Contrary to Plaintiff’s Assertion, Step 5 Must Be Performed After 

Step 4 and Cannot be Performed Before Step 3 

Plaintiff argues that Step 5 can occur before Step 3 to fashion the pedestal after Step 2 and 

thus, the steps need not be performed in the recited order. Plaintiff is incorrect on many grounds. 

First, Plaintiff’s argument about the order of steps contradicts its own description of claim 

1. Specifically, Plaintiff admits that “[t]he seed area is selectively exposed by removing a portion 

of the selective growth mask layer, and then etched back.” ECF No. 34 at 3 (emphasis added); see 

also Case no. 6:19-cv-261-ADA, Pl. Opening Markman Brief, ECF No. 59, at 3; Case no. 6:19-

cv-329-ADA, Pl. Opening Markman Brief, ECF No. 44, at 3. Plaintiff’s description of the claim 

confirms that “selectively etching back” of Step 5 must occur after “removing a portion of the 

selective growth mask layer” required by Step 4. 

Second, the claim language itself mandates that Step 5 must be performed after Step 4. 

Step 5 requires etching back “the exposed top surface of the pedestal.” ’400 patent, claim 1 

(emphasis added). Only Step 4 in claim 1 refers to exposing the seed area (i.e., the top surface) of 

the pedestal. See id. Thus, the structure of the claim requires that Step 5, which references the 

Case 6:20-cv-00243-ADA Document 41 Filed 09/25/20 Page 12 of 26
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“exposed top surface,” must be performed after Step 4. If Step 5 is performed after Step 2, then 

the term “the exposed top surface” would not have any antecedent support. 

Third, Step 5 explicitly recites “selectively” etching back the exposed top surface of the 

pedestal, thereby implying that it is performed after Step 4. See id. Selective etch requires at least 

two types of materials where one material is selectively etched relative to another material. As 

depicted in Figures 1D and 2F below, Step 5 selectively etches the pedestal (12 in Figure 1D and 

26 in Figure 2F) relative to the selective growth mask layer 18: 

Id., Figs. 1D, 2F. Step 5 cannot perform a selective etch before Step 3 because the pedestal 12 is 

the only structure present on the substrate, as evidenced in Figure 1A and Illustrative Figure 2B1 above. See id., Fig. 1A; Table 1, supra. Neither the claim nor the specification describe how a 

selective etch back step can be performed before Step 3 but after Step 2. Plaintiff’s construction 

cannot be correct as it renders the term “selectively” superfluous in Step 5 if the step is 

performed before Step 3. See Digital-Vending, 672 F.3d at 1275. 

Fourth, Plaintiff relies upon a portion of the specification (’400 patent at 6:56-7:3, 7:25-

36) that addresses adjusting the dimensions of the pedestal to argue that Step 5 can occur before 

Step 3. See ECF No. 34 at 13. However, Plaintiff’s assertion is based on an incorrect 

interpretation of the specification. When describing Figure 2, the specification discloses two 

distinct types of etching performed on the pedestal. As described below, the first one is reflected 

in Step 2 whereas the second one is captured by Step 5: 

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 Step 2: An etch process allows forming a pedestal depicted in Figure 2B and 

Illustrative Figure 2B-1 with a desired height as required by Step 2. See ’400 patent at 

6:66-67 (“[T]he pedestal 12 can be patterned to the desired final dimension during the 

etching step.”). The specification does not characterize this etch process as a selective 

etch process. 

 Step 5: In contrast, the specification clarifies that the etch back performed in Step 5 

after Step 4 is selective. Referring to Figure 2F, the specification states 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 epitaxial growth.” Id. at 7:25-27 (emphasis added).7

 

 Plaintiff is mistaken in arguing that the selective etch back process of Step 5 can be employed to 

fashion the height of pedestal depicted in Figure 2B and Illustrative Figure 2B-1. 

Finally, by arguing that Step 5 can occur before Step 3, Plaintiff is advocating a claim 

construction that impermissibly recaptures subject matter which Plaintiff surrendered during 

prosecution: growth of a heteroepitaxial layer on a seed area exposed by Step 4. Pending claim 

14 lacked Step 5, and thus Step 6 was performed on the seed area exposed by Step 4. The 

examiner rejected that claim as anticipated by Homyk. In response, Plaintiff amended pending 

claim 18 and inserted the selective etch back step (Step 5) between Steps 4 and 6 to overcome 

the cited prior art.8 See ECF No. 35 at 3-4; Ex. 6, ECF No. 35-6, at 5-6. Under Plaintiff’s 

interpretation, because Step 5 does not have to occur after Step 4, Step 6 could occur on the seed 

area exposed by Step 4. Plaintiff’s construction thus expands the scope of claim 1 to that of 

 

7

 Similarly, referring to Figure 1D, the specification states that “[a]fter exposing the top surface 

of the pedestals 12, the semiconductor material of pedestal 12 can optionally be selectively 

etched back.” Id. at 5:51-53 (emphasis added). 

8

 Because Plaintiff inserted the “selectively etching back” step between Steps 4 and 6, Plaintiff 

envisioned that Step 5 would be performed after Step 4. See Ex. 6, ECF No. 35-6, at 5-6. 

Case 6:20-cv-00243-ADA Document 41 Filed 09/25/20 Page 14 of 26
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pending claim 14, a claim that was rejected by the examiner. See Greenliant Sys., Inc. v. Xicor 

LLC, 692 F.3d 1261, 1263 (Fed. Cir. 2012) (“[A] patentee is precluded from regaining the 

subject matter that he surrendered in an effort to obtain allowance of the original claims.”) 

(internal quotation marks omitted). Plaintiff should not be allowed to expand the scope of claim 

1 to that of pending claim 14 under the guise of claim construction. 

Therefore, the specification and the patent prosecution history do not support an 

interpretation where the “selective etching back” of Step 5 can occur before Step 3. 

5. Plaintiff’s Construction Would Improperly Exclude Embodiments in 

Figures 1 and 2 Based on the Agreed Construction of “seed area”

Though Plaintiff incorrectly argues that Defendants’ construction would exclude the 

embodiment of Figure 2, it neglects that its proposal excludes embodiments disclosed in Figures 

1 and 2 under the agreed construction of “seed area.” Both Figure 1A and Illustrative Figure 2B1 below depict the uncovered top surfaces of pedestals 12 before they are covered with a 

selective growth mask layer 14 in Figure 1B and Figure 2C respectively. Heteroepitaxial growth 

can occur on the top surfaces of the pedestals 12 in Figure 1A and in Illustrative Figure 2B-1. 

Table 2 

Figure 1 Embodiment Figure 2 Embodiment 

 

Case 6:20-cv-00243-ADA Document 41 Filed 09/25/20 Page 15 of 26
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In the prior litigations, the Court has construed “seed area” to be “the area on which the 

epitaxial growth could occur,” with which the parties in this case agree. See Ex. 9; ECF No. 34 at 

5. The uncovered top surfaces of the pedestals in Figure 1A and in Illustrative Figure 2B-1 are 

“seed areas” under the Court’s construction. By arguing that there is no “seed area” formed at 

Step 2 (corresponding to the top surfaces of the pedestals shown in Figures 1A and 2B-1), 

Plaintiff is relying upon a definition of “seed area” that is inconsistent with the Court’s 

construction of “seed area” and that excludes both of these embodiments from the scope of the 

claim. Therefore, Plaintiff’s proposed construction regarding the order of steps is incorrect.9

6. Plaintiff Is Repeating Its Attempt to Construe “seed area” as an Area 

“on which heteroepitaxial growth starts” 

In arguing that the “forming a seed area” limitation in Step 2 “discloses what ultimately 

will be formed,” ECF No. 34 at 11 (emphasis in original), Plaintiff repeats the same argument 

that it made in its previous litigations against Samsung and TSMC involving the ’400 patent. To 

support its construction of “seed area” in the prior litigations, Plaintiff argued that “[t]he seed 

area is not created until the selective growth mask layer is removed.” Case No. 6:19-cv-261-

ADA, Pl. Reply Markman Brief, ECF No. 70, at 10; Case no. 6:19-cv-329-ADA, Pl. Reply 

 

9

 Plaintiff cites Personalized User Model LLP v. Google Inc., No. CIV. 09-525-LPS, 2012 WL 

295048, at *28 (D. Del. Jan. 25, 2012) in which the court refused to impose an order on the steps 

because “limitation 1(d) [] may occur in some instances without limitation 1(b) [] having 

occurred.” But in this case, unlike Personalized User Model, it is impossible to provide a 

selective growth mask layer on the top surface of the pedestal in Step 3 unless a seed area is 

formed in Step 2, as shown in Section II.A.3 and Table 2 above. Similarly, it is impossible to 

selectively etch back the exposed top surface of the pedestal in Step 5 unless a selective growth 

mask layer is provided in Step 3 and a portion of the selective growth mask layer is removed in 

Step 4, as discussed in Section II.A.4. 

Case 6:20-cv-00243-ADA Document 41 Filed 09/25/20 Page 16 of 26
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Markman Brief, ECF No. 50, at 8. The Court rejected Plaintiff’s construction of “seed area” in 

that litigation. See Markman Hearing Tr. (Mar. 13, 2020), ECF No. 34-3, at 28:15-38:15. As 

there, the Court should reject Plaintiff’s argument here regarding the order of steps because it 

rests on the same flawed interpretation of “seed area” offered by Plaintiff. 

In the prior litigations, Plaintiff argued that “seed area” should be construed as “the area 

on the top surface of the pedestal on which the heteroepitaxial growth starts.” Case No. 6:19-cv261-ADA, ECF No. 59, at 8; Case no. 6:19-cv-329-ADA, ECF No. 44, at 8. In support of that 

construction, Plaintiff stated: 

Thus, according to the claim language, the “seed area” is (a) on the 

top surface, (b) exposed by removing a portion of the selective

growth mask layer, and (c) used to grow the heteroepitaxial layer. 

STC.UNM’s proposed construction captures these characteristics 

of the “seed area.” 

Case No. 6:19-cv-261-ADA, ECF No. 59, at 9; Case no. 6:19-cv-329-ADA, ECF No. 44, at 9. 

Later, Plaintiff reiterated that the “seed area” is created only after Step 4: 

Contrary to Samsung’s argument (now borrowed by TSMC), a 

seed area is not ‘created’ in step one. Step one discloses the 

attributes that the pedestal will have. It will have a top surface, a 

side surface, and a seed area with particular dimensions. The seed 

area is not created until the selective growth mask layer is 

removed [Step 4]. 

Case No. 6:19-cv-261-ADA, ECF No. 70, at 10 (emphasis added); see also Case no. 6:19-cv329-ADA, ECF No. 44, at 8. In the current litigation, to justify that the second half of Step 2 is 

merely preamble-like language and “not a step that must be performed,” Plaintiff argues again 

that the “seed area” is formed only after Step 4 is complete: 

Step [2] discloses forming a pedestal on the semiconductor 

substrate having certain surfaces, including a top surface. The

claim adds certain characteristics that the top surface will have, 

i.e., a seed area with a linear surface that ranges from about 10 nm 

to about 100 nm. But step [2] does not disclose how the “seed 

Case 6:20-cv-00243-ADA Document 41 Filed 09/25/20 Page 17 of 26
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area” is formed. Rather, steps [3] and [4] are directed to the 

actual creation of the claimed “seed area.”

ECF No. 34 at 11 (emphasis added). 

The Court expressly rejected Plaintiff’s argument that the “seed area” is limited to an area 

delineated by the selective growth mask layer after Step 4 where heteroepitaxial growth occurs. 

See ECF No. 34-3 at 38:12-13 (“I’m going to maintain the Court’s construction.”). Instead, the 

Court construed “seed area” broadly as “the area on which the epitaxial growth could occur,” 

thereby acknowledging that “a seed area” is created by Step 2 (emphasis added). See Ex. 9. Thus, 

when Plaintiff argues that the “seed area” is formed by Step 4, it merely repeats the failed 

argument that the “seed area” is an area where heteroepitaxial growth starts. Plaintiff’s 

interpretation of the “order of steps” of claim 1 is at odds with the Court’s construction of “seed 

area” that both parties have adopted. Plaintiff’s arguments were rejected by the Court, and the 

same result is also appropriate here. 

7. Plaintiff’s Pending Patent Application Shows that the Order in Which 

the Steps Are Recited Matters 

If Plaintiff wanted certain elements of Step 2 to refer to “what ultimately will be formed,” 

they could have—and should have—drafted the claims accordingly. Indeed, Plaintiff recently 

submitted claims in a patent application that claims priority to the same provisional application 

as the ’400 patent. Ex. 10, U.S. Patent Application 16/746,853 (the “’853 application”). Table 3 

below compares claim 1 of the ’400 patent with the recently submitted claim from the ’853 

application, as filed on January 18, 2020. In the new claim, Plaintiff clearly seeks to move the 

“seed area” term from Step 2 to the “selectively etching-back” term of Step 5: 

Case 6:20-cv-00243-ADA Document 41 Filed 09/25/20 Page 18 of 26
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Table 3 

Claim 1 of the ’400 Patent Claim 1 of the ’853 Application 

A method for making a heteroepitaxial layer, 

the method comprising: 

providing a semiconductor substrate; 

forming a nanostructured pedestal on the 

semiconductor substrate, the pedestal having 

a top surface and a side surface, the top 

surface forming a seed area having a linear 

surface dimension that ranges from about 10 

nm to about 100 nm; 

providing a selective growth mask layer on 

the top surface and side surface of the 

pedestal; 

removing a portion of the selective growth 

mask layer to expose the seed area of the 

pedestal; 

selectively etching-back the exposed top 

surface of the pedestal; and 

growing the heteroepitaxial layer on the seed 

area. 

A method for making a heteroepitaxial layer, 

the method comprising: 

providing a semiconductor substrate; 

forming a nanostructured pedestal on the 

semiconductor substrate, the pedestal having 

a top surface and a side surface; 

providing a selective growth mask layer on 

the top surface and side surface of the 

pedestal; 

removing a portion of the selective growth 

mask layer to expose the top surface of the 

pedestal; 

selectively etching-back the exposed top 

surface of the pedestal to form a seed area, 

the seed area having a linear surface 

dimension that ranges from about 10 nm to 

about 100 nm; and 

growing the heteroepitaxial layer on the seed 

area, wherein the heteroepitaxial layer is 

substantially unrestricted by sidewalls during 

growth. 

See ’400 patent, claim 1; Ex. 10, STC.UNM0009881, claim 1. 

The mere fact that Plaintiff is seeking the above amendment underscores that Plaintiff 

understands—and understood during the claim construction proceedings in the prior litigations—

that the scope of the claim changes when the “top surface forming a seed area” terms is moved 

from Step 2 to Step 5. In the current litigation, Plaintiff is attempting to change the meaning of 

the claims of the ’400 patent through claim construction by arguing that part of Step 2 is “not a 

Case 6:20-cv-00243-ADA Document 41 Filed 09/25/20 Page 19 of 26
16 

step that must be performed” and acts like a preamble.10

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

Plaintiff argues that “[t]here is no legitimate confusion about the ‘seed area’ in the 

claims,” which misses the point. ECF No. 34 at 14.11 Although the parties agree what “seed area” 

means in the abstract, they disagree what “the seed area” in Step 6 refers to. Defendants argue 

that “the seed area” in Step 6 refers to the seed area formed in Step 2 and exposed in Step 4. See 

ECF No. 35 at 9-16. Claim 1 is indefinite because, as drafted, Step 6 refers to a seed area that 

was etched away by Step 5. On the other hand, Plaintiff believes that “the seed area” is formed 

by Steps 3 and 4, see ECF No. 34 at 11-12, but it does not reconcile the etch back (i.e., removal) 

of “the seed area” in Step 5 with the requirement of Step 6 to grow a heteroepitaxial layer on the 

removed seed area.12

Nor does Plaintiff’s argument to ignore part of Step 2 remedy the indefiniteness of claim 

1. Even assuming that “Steps [3] and [4] are directed to the actual creation of the claimed ‘seed 

 

10 In contrast to its current position, Plaintiff will not deny that the term “to form a seed area” in 

claim 1 of the ’853 application implies that a seed area is formed as part of the step in which the 

term is recited and is a step that must be performed. 

11 Plaintiff quotes Source Search Techs., LLC v. LendingTree, LLC, 588 F.3d 1063, 1077 (Fed. 

Cir. 2009) as stating that “this court measures indefiniteness according to an objective measure 

that recognizes artisans of ordinary skill are not mindless automatons.” ECF No. 34 at 15. But 

Source Search was a case about whether the claim term was indefinite because it depended 

solely on the unrestrained, subjective opinion of a particular individual purportedly practicing the 

invention. See Source Search, 588 F.3d at 1076-77. The case is inapposite here because 

Defendants’ indefiniteness argument does not depend on the subjective opinion of an individual 

practicing the claimed invention. 

12 Plaintiff states that Defendants’ arguments to the PTAB in their IPR petition “undermine their 

indefiniteness position here.” ECF No. 34 at 15, n.2. This has no bearing on Defendants’ 

indefiniteness position because the petitioner in IPR may only challenge the validity of the 

claims based on anticipation and obviousness grounds, and may not present challenges based on 

indefiniteness. See Samsung Elecs. Am., Inc. v. Prisua Eng’g Corp., 948 F.3d 1342, 1353 (Fed. 

Cir. 2020) (“[I]t does not follow that the Board may exceed its statutorily limited authority 

simply because an indefiniteness issue arises during claim construction. Instead, . . . Congress 

viewed a challenge based on indefiniteness to be distinct from a challenge based on sections 102 

and 103.”). 

Case 6:20-cv-00243-ADA Document 41 Filed 09/25/20 Page 20 of 26
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area’” as Plaintiff argues, ECF No. 34 at 11, claim 1 remains indefinite. The specification states 

that “[t]he seed area comprises a two-dimensional area.” ’400 patent at 3:48-49. The twodimensional seed area purportedly formed in Step 4 is removed when the pedestal is selectively 

etched back in Step 5. A person of ordinary skill in the art would not know how to perform the 

step of “growing a heteroepitaxial layer on the seed area” (Step 6) when “the seed area” 

referenced in Step 6 does not exist anymore. See ECF No. 35 at 11-13; ’400 patent, claim 1.

The structure of claim 1 in the ’853 application reveals that Plaintiff is aware of the 

indefiniteness associated with claim 1 of the ’400 patent and has attempted to cure it. The new 

claim does not mention a “seed area” in either Step 2 or Step 4. Instead, it is first referenced in 

Step 5 after Step 4 has exposed a “top surface.” See Table 3, supra; Ex. 10, STC.UNM0009881, 

claim 1. Plaintiff attempts to bypass the patent examination process by attempting to construe 

claim 1 of the ’400 patent to accomplish what it desires to claim in the ’853 application. The 

Court should reject Plaintiff’s attempt and find the claim indefinite. 

C. “heteroepitaxial layer” 

Plaintiff does not dispute that the seed area must be made of a crystalline material. See 

ECF No. 34 at 5-6. Instead, Plaintiff argues that “the notion that the ‘seed area’ is crystalline is 

captured by the phrase ‘crystalline structure of the seed area.’” Id. at 6. While this may be true if 

the construction is intended for an expert, a lay jury may not necessarily comprehend that a seed 

area with a crystalline structure necessarily implies that it is made of a crystalline material. 

Plaintiff also argues that the phrase “‘different material’ in the Court’s construction refers 

to the ‘layer of crystalline material’ in the preceding clause rather than to the ‘seed area’ as 

Defendants contend.” Id. But Plaintiff fails to account for the grammatical structure of 

Defendants’ proposed construction. A statement that a grown material is “of a different 

crystalline material than of the seed area” denotes that both the grown material and the seed area 

Case 6:20-cv-00243-ADA Document 41 Filed 09/25/20 Page 21 of 26
18 

are made of crystalline materials. For example, stating that Fenway Park is an older baseball park 

than Wrigley Field denotes that both Fenway Park and Wrigley Field are baseball parks. 

Because the addition of “crystalline” to the construction would only help a lay jury 

understand the undisputed requirement that the seed area is made of a crystalline material, 

Defendants request the Court to adopt their proposed construction. 

D. “selective growth mask layer” 

Plaintiff contends that Defendants’ proposed construction is unnecessary. See ECF No. 

34 at 6-7. That is not correct. Without Defendants’ clarification, Plaintiff’s construction would be 

too broad. Because Plaintiff’s construction is silent regarding the areas covered by the selective 

growth mask layer, it could potentially encompass situations where the epitaxial growth occurs 

on areas covered by the selective growth mask layer in addition to growth on the exposed areas. 

A person of ordinary skill in the art would not understand the ’400 patent to cover such an 

uninhibited epitaxial growth. Defendants’ addition would eliminate that ambiguity. 

Plaintiff’s argument that Defendants’ construction “could exclude from the scope of the 

claim the embodiment of Figure 1E” is a strawman. See ECF No. 34 at 7. During the meet and 

confer, Defendants clarified that the proposed construction does not exclude Figure 1E. Plaintiff 

sought the same clarification from the Court during the March 2020 Markman hearing and 

received the same assurance. ECF No. 34-3 at 27:19-28:5. Plaintiff’s repeated objections are 

based on a misunderstanding of what it means to prevent epitaxial growth. Figure 1E below is 

coextensive Defendants’ construction and shows that the growth of the heteroepitaxial layer 20 

occurred on the portions exposed by the selective growth mask layer 14 and did not occur on 

portions that were covered by the selective growth mask layer 14: 

Case 6:20-cv-00243-ADA Document 41 Filed 09/25/20 Page 22 of 26
19 

And while Figure 1E also depicts that the heteroepitaxial layer 20 laterally overlaps with 

the selective growth mask layer 14, it does not show that heteroepitaxial layer grew where the 

selective growth mask layer 14 covered the seed area. See ’400 patent at 6:30-36 (“The epitaxial 

layer 20 can grow between and above the sidewall barriers 18, at which point the width 

dimensions of the heteroepitaxial layer nanostructure may increase to overlap the insulator, as 

shown, for example, in FIG. 1E.”) (emphasis added). Even Plaintiff referred to growth 20 as the 

“lateral overgrowth of the heteroepitaxial layer” on the selective growth mask layer and that 

“[t]here is no growth on these sidewalls and on the shoulder.” ECF No. 34-3 at 14:8-14. In fact, 

Figure 1E does not depict any heteroepitaxial layer on the selective growth mask layer other than 

the heteroepitaxial layer that grew from the pedestal. The Court stated that it “think[s] [the areas 

where the lateral overgrowth occurs] are exposed areas,” not covered areas. Id. at 28:4-5. 

Therefore, Figure 1E simply shows that the selective growth mask layer prevents epitaxial 

growth on covered portions and permits growth on exposed portions. It is immaterial that it also 

depicts epitaxial growth occurring over the selective growth mask layer because Defendants’ 

construction does not preclude that. 

Plaintiff also argues that Defendants’ proposed construction “would be inconsistent with 

the specification’s express teaching of ‘reduced’ nucleation.” ECF No. 34 at 9. But, Plaintiff 

itself admits that “nucleation alone would not be heteroepitaxial growth.” Id. Therefore, 

Case 6:20-cv-00243-ADA Document 41 Filed 09/25/20 Page 23 of 26
20 

Defendants’ proposed construction that the selective growth mask layer prevents epitaxial 

growth is not inconsistent with the specification. 

Finally, Plaintiff’s reliance on GPNE Corp. v. Apple Inc., 830 F.3d 1365, 1372 (Fed. Cir. 

2016) and U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) are 

misplaced. Unlike GPNE, the Court has not yet resolved the questions about claim scope that 

were raised by the parties in this case. Moreover, “District courts may engage in a rolling claim

construction, in which the court revisits and alters its interpretation of the claim terms as its 

understanding of the technology evolves.” Jack Guttman, Inc. v. Kopykake Enterprises, Inc., 302 

F.3d 1352, 1361 (Fed. Cir. 2002). Additionally, U.S. Surgical holds that courts need not construe 

every claim term where there is no material dispute as to the meaning or scope of the claims. See 

U.S. Surgical, 103 F.3d at 1568-70. That case is inapposite here because the parties do dispute 

the meaning of the term “selective growth mask layer.” 

Therefore, the Court should adopt Defendants’ proposed construction. 

 

Case 6:20-cv-00243-ADA Document 41 Filed 09/25/20 Page 24 of 26
21 

Dated: September 25, 2020 /s/ Anupam Sharma by permission Wesley Hill

Anupam Sharma 

Robert T. Haslam (pro hac vice granted) 

Thomas E. Garten (pro hac vice granted) 

COVINGTON & BURLING LLP 

3000 El Camino Real 

5 Palo Alto Square, 10th Floor 

Palo Alto, CA 94306-2112 

Telephone: (650) 632-4700 

Fax: (650) 632-4800 

asharma@cov.com 

rhaslam@cov.com 

tgarten@cov.com 

Richard L. Rainey (pro hac vice granted) 

Han Park (pro hac vice granted) 

COVINGTON & BURLING LLP 

One CityCenter 

850 Tenth Street, NW 

Washington, DC 20001-4956 

Telephone: (202) 662-6000 

Fax: (202) 662-6291 

rrainey@cov.com 

hpark@cov.com 

Wesley Hill (Texas Bar No. 24032294) 

Andrea Fair (Texas Bar No. 24078488) 

WARD, SMITH & HILL PLLC 

1507 Bill Owens Pkwy 

Longview, TX 75604 

Telephone: (903) 757-6400 

Fax: (903) 757-2323 

wh@wsfirm.com 

andrea@wsfirm.com 

Attorneys for GLOBALFOUNDRIES Inc., 

GLOBALFOUNDRIES U.S. Inc., and 

GLOBALFOUNDRIES U.S. 2 LLC 

 

Case 6:20-cv-00243-ADA Document 41 Filed 09/25/20 Page 25 of 26
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CERTIFICATE OF SERVICE 

I hereby certify that a true and correct copy of the above and foregoing document has 

been served on all counsel of record via the Court’s ECF system on September 25, 2020. 

 /s/ Wesley Hill 

Case 6:20-cv-00243-ADA Document 41 Filed 09/25/20 Page 26 of 26