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

______________________ EIDOS DISPLAY, LLC, EIDOS III, LLC, Plaintiffs

- Appellants

v.

AU OPTRONICS CORPORATION, AU OPTRONICS CORPORATION AMERICA, CHI MEI INNOLUX CORPORATION, CHI MEI OPTOELECTRONICS USA INC., CHUNGHWA P ICTURE TUBES, LTD., HANNSTAR DISPLAY COR PORATION, HANNSPREE NORTH AMER ICA, INC., Defendants

- Appellees

______________________

2014

- 1254

______________________ Ap peal from the United States District Court for the Eastern District of Texas in No. 6:11

- cv

- 00201

- LED

- JDL, Chief Judge Leonard Davis.

______________________
Decided: March 10 , 2015

______________________

R OBERT T YLER G OODWYN , McKenna Long & Aldridge LLP , Washington, DC, argued for plaintiffs

- appellants. Also represented by G ASPARE J OSEPH B ONO , C ASS W ALKER C HRISTENSON , R OBERT C. N ISSEN

.

C HRISTOPHER B ENSON , Austin, TX, argued for defen dants

- appellees. Defendant

- appellee Chunghwa PictureEIDOS DISPLAY , LLC v. AU OPTRONICS CORPORATIO N 2

Tubes, Ltd., also represented by D ANIEL L EVENTHAL , P AUL A NDREW D YSON , E RIC B. H ALL , Norton Rose Fulbright

, Houston, TX. Defendants

- appellees AU Optronics Corp oration, AU Optronics Corporation America, also repr esented by M ARVIN C RAIG T YLER , B RIAN A. D IETZE L , G EOFFREY W ILLIAM H EAVEN , Wilson, Sonsini, Goodrich & R osati, PC, Austin, TX. Defendants

- appellees Chi Mei Innolux Corporation, Chi Mei Optoelectrics, USA Inc., Hannspree North America, Inc., Hannstar Display Corp oration, also represented by M ING -T AO Y AN G , J ACOB A DAM S CHROEDER , Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Palo Alto; E DWARD R OBERT Y OCHES , Was hington, DC.

______________________
Before W ALLACH , T ARANTO , and C HEN , Circuit Judges.

C HEN , Circuit Judge

. Plaintiff

- Appellant s Eidos Disp lay, LLC and Eidos III, LLC (Eidos) appeal from the district court’s grant of a motion for summary judgment, finding the asserted claim of U.S. Patent No. 5,879,958 (the ’958 patent) to be invalid as indefinite. Because the claim, when read in light of th e specification and prosecution history , inf orm ed with reasonable certainty those skilled in the art at the time the patent was filed about the scope of the claimed invention, we reverse the district court’s grant of summary judgment of indefiniteness, and remand to the district court for further proceedings consistent with our decision.

B ACKGROUND Eidos alleges AU Optronics Corporation, AU Optro nics Corporation America, Chi Mei Innolux C orporation, Chi Mei Optoelectronics USA Inc., Chunghwa Picture Tubes, Ltd., Hannstar Display Corporation, and Hannspree North America, Inc. (collectively, “ Display Manufacturers ”) in fringe claim 1 of the ’958 patent. The

’ 958 patent is directed toward man ufacturing processesEIDOS DISPLAY , LLC v. AU OPTRONICS CORPORA TION 3

for an electro

- optical device, such as a liquid crystal display (LCD)

. The specification of the ’958 patent contains 17 e mbodiments, each identified by a letter ( A through H, J, and L through S ) . Each embodiment describ es a man ufactur ing process that reduces the number of photolith ographic steps in creating a n LCD panel compared to prior art processes, lowering the production cost and im proving yield and production efficiency . ’958 patent, 1:19 –3: 37 (describing the prior art as contai ning seven photolith ographic steps), 4:39

– 14:18 ( describing the invention as containing four or five photo lithographic steps ), 14:31

– 37 (comparing the invention to the prior art) . Each embod iment is broken down into a series of “ forming ” steps that deposit material , such as metal, insulator, or passivation material, on the substrate or previous layers

, as well as a series of “ photolithographic ” steps that etch or remove portions of previously

- formed material. For example, the seventh embodiment, ide ntified by the letter “G,” contains five forming steps

— G1, G3, G5, G7, and G9

— sequentially interspersed with five photolith ographic steps

— G2, G4, G6, G8, and G10. Id. at 8:33

– 67. The specification d escribes the manufacturing process for each disclosed

em bodiment with reference to the figures. For example, figures 54 through 63 depict the process steps of the G embodiment. Id. at 18:9

– 44, 35:31

– 36:65.

The circuitry in the LCD devices formed by the p atented manufactur ing processes is the same as circuitry formed by a prior art manufacturing process. Id. at 1:16

– 18. An example of such a prior art circuit is found in figure 169, reproduced below. Id. 1 Figure 169 shows a matrix with source wiring (S1, S2, S3, . . . Sn) forming the vertical lines and gate wiring (G1, G2, G3, . . . Gn) for m1 Line 16 of column 1 erroneously refers to “FIG. 169” as “FIG. 165 .”EIDOS DISPLAY , LLC v. AU OPTRONICS CORPORATIO N 4

ing the horizontal lines. Id. at 1:19

– 23. The source wiring is connected to a signal supply circuit to provide image data, and the gate wiring is connected to a sca nning circuit to provide contro l signals. Id. ; Appellants ’ Br. at 6 –7.

Important to this appeal, the electrical connection b etween a source wire and the signal supply circuit is called

a source wiring connection terminal

. The electrical co nnection between a gate wir e and the scanning circuit is called a gate wiring connection terminal

. In an LCD panel, there are many individual source and gate wires

, each with a connection terminal located at the end of the wire . Appellants ’ Br. at 7 (citing Eidos Display, LLC v. AU Optronics Corp. , No. 6:11

- cv

- 201 LED

- JDL, 2013 WL 1559729, at *5 (E.D. Tex. Apr. 12, 2013) ). During the relevant LCD manufacturing process , a non

- conductive passivation film is formed on top of the wiring and co nnection terminals

. See ’958 patent, 58:34

– 36 ( Step G7 )

. The passivation film is then etched away to allow the scanning and signal supply circuit s to connect to the terminals

. See i d. at 58:37

– 41 (Step G8). Experts forEIDOS DISPLAY , LLC v. AU OPTRONICS CORPORA TION 5

both parties agree that, at the time of the ’958 patent, the only industry practice for this manufacturing process was to create individual holes, referred to as “contact holes,” through the passivation film to each connection terminal. While a single contact hole shared by all the connection terminals may have been technically possible, no expert was aware of any example or teaching where such a contact hole was ever created, and neither party put any such teaching into the reco rd, if such a teaching exists.
The asserted claim 1 is the only issued claim in the ’958 patent and re cites: 1. A method for producing an electro

- optical d evice in which an electro

- optical material is put b etween a pair of substrates opposed to each other, at least a portion of opposing surfaces of the su bstrates is insulative, a plurality of source wiring s and a plurality of gate wirings are formed crossing each other on the surface of one of said pair of substrates and a transparent pixel electrode and a thin film transistor are formed at each of the crossing points between the source wirings and the gate wirings, wherein the method comprises: a step G1 of forming a first metal film on the su rface of said one substrate, a first photolithographic step G2 of patterning the first metal film to form a gate electrode and a gate wiring, a step G3 of forming a fi rst insulator film, a sem iconductor film and an ohmic contact film on the surface of said one substrate after the first phot olithographic step, a second photolithographic step G4 of patterning the semiconductor active film and the ohmic co ntact film to for m a semiconductor portion aboveEIDOS DISPLAY , LLC v. AU OPTRONICS CORPORATIO N 6

the gate electrode in a state isolated from other portions, a step G5 of forming a second metal film on the surface of said one substrate after the second ph otolithographic step, a third photolithographic step G6 of patterni ng the second metal film and the ohmic contact film to form a source electrode, a drain electrode and a channel portion, a step G7 of forming a passivation film on the su rface of said one substrate after the third phot olithographic step, and

a fourth photolithographic step G8 of patterning the passivation film to form a contact hole reac hing the gate wiring, a contact hole reaching the drain electrode and a contact hole for source wi ring and gate wiring connection terminals

, a step G9 of forming a tran sparent conductive film on the surface of said one substrate after the fourth photolithographic step, and a fifth photolithographic step G10 of patterning the transparent conductive film to form a tran sparent pixel electrode.

Id. at 58:5

– 47 (emphasis added to highlight the limitation at issue on appeal ).
During Markman proceedings in front of the magi strate judge, t he primary claim construction dispute focused on the last portion of step G8, “a contact hole for source wiring and gate wiring connection termi nals.” Eidos Display , 2013 WL 1559729, at * 4 . Eidos argued that the disputed limitation requires separate and di stinct contact holes for the source wiring connection term inals and gate wiring connection terminals , consistent with the standard industry practice and the specification

,EIDOS DISPLAY , LLC v. AU OPTRONICS CORPORA TION 7

whereas Display Manufacturers argued that the plain language of the disputed limitation requires a shared contact hole for all connection terminals. Id. The magi strate judge reviewed the claim language, specification, and the record in the then

- ongoing ex parte reexamin ation, and determined that the dispute “ [wa] s not ripe for claim construction, as the dispute [as] presented ce nter [ed] around theories of invalidity pursuant to 35 U.S.C. § 112. ” Id. at *6.

D efendants Chi M ei Innolux Corporation and Chi Mei Optoelectronics USA Inc. (collectively, “Innolux”) then filed a motion for summary judg ment alleging non i nfringement, in which they argued for a third construction of the disputed limitation

, that two different structures be formed : 1) a contact hole for source wiring and 2) the gate wiring connection terminals

, with no corresponding contact hole or holes. The district court declined to adopt Innolux’s proposed construction, and instead ordered briefing as to whether the disputed limitation was definite. Display Manufacturers subsequently filed a motion for summary judgment asserting indefiniteness. Eidos , in its response to Display Manufacturers’ mot ion, proposed a fourth construction of the disputed limitation : that the structure for the limitation could be formed as either a single contact hole as Display Manufactures proposed, or

as separate contact holes a s Eidos originally proposed. Joint Appendix ( J.A. ) 33. The magistrate judge rejected all four proposed co nstructions of the disputed limitation . Regarding the first, second, and fourth proposed constructions, the magistrate judge determined that the specification failed to support that “a conta ct hole for source wiring and gate wiring connection terminals” could be formed as either separate contact holes or a shared contact hole

. The magistrate judge dismissed Innolux’s proposed construction because it require d connection terminals to be formed from an insulating material

, whereas the specification require sEIDOS DISPLAY , LLC v. AU OPTRONICS CORPORATIO N 8

the terminals to be made of a conductive material. The magistrate judge recommended that the district court grant the motion for summary judgment on indefiniteness because “the Court is unable to arrive at a construction that would allow a person of ordinary skill in the art to determine what is claimed when the claim is read in light of the specification.” J.A. 34 (citation omitted). The district court issued an order adopting the magi strate judge’s recommendation and granting the motion for summary judgment of indefiniteness . J .A

. 22

. Eidos appealed and w e have juris diction pursuant to 28 U.S.C. § 1295(a)(1).

D ISCUSSION A patent must “conclude with one or more claims pa rticularly poin ting out and distinctly claiming the subject matter which the applicant r egards as [the] invention.” 35 U.S.C. § 112, ¶ 2 (2006). 2 Keeping in mind that “p atents are not addressed to lawyers, or even to the public generally, but rather to those skilled in the relevant art,” the patent claims “must be precise enough to afford clear notice of what is claimed, thereby appris[ing] the public of what is still open to them.” Nautilus, Inc. v. Biosig Instruments, Inc. , 134 S. Ct. 2120, 212 9 (2014) (internal quot ation marks omitted). A claim fails to satisfy this statutory requirement and is thus invalid for indefinit eness if its language, when read in light of the specification and prosecution history, “fail[s] to inform, with reasonable

2 Paragraph 2 of 35 U.S.C. § 112 was replaced with newly designated § 112(b) when § 4(c) of the Americ a Invents Act (AIA), Pub. L. No. 112

- 29, took effect on September 16, 2012. Because the applications resulting in the patents at issue in this case were filed before that date, we will refer to the pre

- AIA version of § 112.EIDOS DISPLAY , LLC v. AU OPTRONICS CORPORA TION 9

certainty, those skilled in the art [at the time the patent was filed] about the scope of the invention.” Id

. at 2124. 3 We review the grant of summary judgment of indefiniteness de novo , applying the same standard used by the district court. Ethicon Endo

- Surgery, Inc. v. U.S. Surg ical Corp. , 149 F.3d 1309, 1315 (Fed. Cir. 1998). We review the district court’s ultimate indefiniteness dete rmination de novo

. Interval Licensing LLC v. AOL, Inc.

, 766 F.3d 1364

, 1370 (Fed. Cir. 2014)

. The indefiniteness inquiry here is intertwine d with claim construction, see Atmel Corp. v. Info

. Storage Devices, Inc. , 198 F.3d 1374, 1379 (Fed. Cir. 1999), which

, because the meaning of the claim at issue is clear in view of the intrinsic record and undis puted facts, we also review de novo

, see Tev a Phar m

. USA

, Inc. v. Sandoz, Inc.

, 135 S. Ct. 831, 840

– 42 (2015). T o the extent the district court considered extrinsic ev idence in its claim construction order or summary jud gment order, that evidence is ultimately immaterial to the
outcome because the intrinsic record is clear. See Phillips v. AWH Corp. , 415 F.3d 1303, 1318 (Fed. Cir. 2005) (en banc) (“[A] court should discount any expert testimony that is clearly at odds with the claim construction ma ndated by the claims themselves, the written d escription, and the prosecution history, in other words, with the written record of the patent.” (internal quotation marks omitted)). We reverse the district court’s finding of inde finiteness because Eidos’ proposed construction for the

3 The district court granted su mmary judgment on January 22, 2014, without the benefit of the Supreme Court’s guidance in Nautilus . The magistrate judge recommended that summary judgment of indefiniteness be granted because he determined, under the pre

Nautilus standard, that the asser ted claim was “insolubly ambiguous.” J.A. 34 (citing Honeywell Int’l v. Int’l Trade Comm’n , 341 F.3d 1332, 1338

– 39 (Fed. Cir. 2003)).EIDOS DISPLAY , LLC v. AU OPTRONICS CORPORATIO N 10

disputed limitatio n reflects how a person of ordinary skill in the art at the time of the invention would have unde rstood the limitation after reading the intrinsic record. See id

. at 1312

– 18.

The limitation

- at

- issue, “ a contact hole for source wi ring and gate wiring connection terminals ,” by itself, might suggest to someone unknowledgeable in the field of LCD manufacturing that one contact hole is formed for all the source wiring connection terminals and gate wiring connection terminals , as the Display Manufacturers

a rgue

. But the limitation, by itself, might also indicate that many contact holes are formed for the connection terminals. To analogize, a person familiar with cars , when reading the sentence “ I am going to create a n ele ctric car for the United States and United Kingdom

, ” would likely expect different electric cars to be created

, one set with the steering wheel located on the left for driving in the United States, and another set with the steering wheel on the right for driving in the United Kingdom. The intrinsic record here makes sufficiently clear that a person of ordinary skill in the art —someone with knowledge of LCD manufacturing

— after considering the limitation “ in the context of the particular claim in which the disputed term appears, [and] in the context of the entire patent, including the specification ,” Phillips

, 415 F.3d at 1313, would understand the limitation

- at

issue to call for separate
, different contact holes for the source wiring connection terminals and gate wiring connection terminals, rather than one shared contact hole

. 4

4 During reexamination of the ’958 patent, the e xam iner concluded that the limitation

- at

- issue “implicitly requires separ ate contact holes for the source wiring and gate wiring connection terminals.” J.A. 6079

– 80.EIDOS DISPLAY , LLC v. AU OPTRONICS CORPORA TION 11

As an initial matter, no party disputes that the state of the art for manufacturing LCD panels always had been
to form contact holes for source wiring connection term inals that are separate from contact holes for gat e wiring connection terminals. Consistent with that w e ll

established practice, t he specification teaches that each connection terminal for the electro

- optical device would receive its own contact hole, for two reasons.
First, nothing in the 172 figures or 5 8 columns of the ’958 patent describe s how a person of ordinary skill in the art would deviate from the known industry practice to create a novel shared contact hole for all the connection terminals. If the patentee wanted to deviate from the standard practice and claim a novel shared contact hole, some teaching of how to depart from the common practice would not only be expected, but is required. See 35 U.S.C. § 112 (“The s pecification shall contain a written descri ption of the invention, and the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art . . . to make and use the same . . . .”).
Second, the only description corresponding to “ a co ntact hole for source wiring and gate wiring connection terminals” in the specification teaches that separate contact holes are formed for the different connection terminals. Th is teaching is evident when consid ering the history of the ’958 patent, in particular the patent appl ication to which the ’958 patent claims priority, applic ation number 08/ 459,925

. See Masco Corp. v. United States , 303 F.3d 1316, 1324 (Fed. Cir. 2002) (“ The pros ecution history of a paren t application may be considered in construing claim terms. ” (citing Elkay Mfg. Co. v. Ebco Mfg. Co. , 192 F.3d 973, 980 (Fed. Cir. 1999) ( “ When multiple patents derive from the same initial application, the prosecution history regarding a claim limitation i n any patent that has issued applies with equal force to subsequently issued patents that contain the same claimEIDOS DISPLAY , LLC v. AU OPTRONICS CORPORATIO N 12

limitation. ”)) ). The ’925 application originally contained
seventeen independent claims, J.A. 9419

– 49, which were subject to a seventeen- species restriction, J.A. 9516. The specification in the ’925 application, which is substantia lly the same as the specification in the ’958 patent, co ntains s eventeen embodiments that match with and describ e the seventeen original independent cl aims. The limitation

- at

- issue , “ a contact hole for source wiring and gate wiring connection terminals ,” appeared in five of the original claims; claim 3 (embodiment B), claim 4 (embo diment C), claim 5 (embodiment D), claim 7 (embodiment F), and claim 8 (e mbodiment G). Original claim 8 ult imately became claim 1 of the patent before us

— the ’958 patent. Although the portion of the specification descri bing embodiment G does not explain in detail this partic ular photolithographic step, the portion describing embodiment D, which claims this step using identical claim language, explicitly describes this photolithographic step as forming “a contact hole [] for a source wiring connection terminal and a contact hole for a gate wiring connection terminal.” ’958 pat ent, 31:42

– 53. Both parties agree that, a s recited in original claim 5 (which corr esponds to embodiment D), “a contact hole for source wiring and gate wiring connection terminals ” requires separate contact holes for each connection terminal, consistent wi th Eidos’ proposed construction. Id. at 31:50

– 53

. After reviewing the specification as well as the claims originally filed with the Patent Office, we see no reason to ascribe a different meaning to the same limit ation in original claim 8, i.e.

, claim 1 o f the ’958 patent. See Phillips , 415 F.3d at 1314 (“ Because claim terms are normally used consistently throughout the patent, the usage of a term in one claim can often illuminate the meaning of the same term in other claims. ”).
Even without considering the priority application, t he specification makes clear that the limitation

- at

- issue requires formation of separate contact holes

. Again, withEIDOS DISPLAY , LLC v. AU OPTRONICS CORPORA TION 13

respect to embodiment D, t he specification , at one point, describes “ a fourth photolithographic step D8 of patte r ning the passivation film to remove a portion of the pa ssivation film

, . . . forming a contact hole for source wiring and g ate wiring connection terminals

. ” ’958 patent, 7:11

– 22 (emphasis added). And, as already stated, the specification later clarifies that “photolithographic step D8” entails forming “a contact hole [] for a source wiring connection terminal and a contact hole for a gate wiring connection terminal.” Id. at 31: 42

– 53. The specification thus equates the limitation

- at

- issue with forming s eparate contact holes for the source wiring connection terminal and the gate wiring connection terminal. Nothing in the specification suggests why the identical phrase recited in the claimed “fourth photolithographic step G8” should be read differently fr om the described “fourth photolith ograph ic step D8.” Instead, a person of ordinary skill in the art would understand that the phrase, “ a contact hole for source wiring and gate wiring connection terminals ,” when used repeatedly throughout the patent, woul d be given a consistent meaning. See Energy Transp

. Gr p. , Inc. v. William Demant Holding A/S

, 697 F.3d 1342, 1349

– 50 (Fed. Cir. 2012) ( using the description of a word in the specifica tion for a different structure to inform the meaning of the same word in the claim because “claim terms are normally used consistently throughout the patent” (quoting Phillips , 415 F.3d at 1314) )

. The limitation

- at

- issue also appears in original claims 3, 4, and 7 of the ’925 application, J.A. 9421

– 25, 9429

– 30, and in the corresponding embodiments B, C, and F of the specification

, ’958 patent, 5:38

– 6:8, 6:9 –4 9, 7:64

– 8:32

. Display Manufacturers argue that the lack of description for the limitation

- at

- issue in embodiments B, C, F, and G

, as described in the specificatio n, is evidence that the structure in those embodiments is different than in e mbodi ment D

. We disagree. A s set forth above, the rel ationship between the specification description forEIDOS DISPLAY , LLC v. AU OPTRONICS CORPORATIO N 14

embodiment D and original claim 5 establishes the proper understanding f or the same claim limitation recited in the other original claims of the ’925 application, i.e. , claim 3 (embodiment B), claim 4 (embodiment C), claim 7 (embo diment F), and claim 8 (embodiment G).

The district court dismissed the teachings of the D embodiment because structures formed in Step D8 , as recited in original claim 5 of the ’925 application and in the specification, do not precisely mirror the structures formed in the claimed Step G8. J.A. 29. The magistr ate judge noted that, in addition to the “contact hole for source wiring and gate wiring connection terminals,” Step G8 forms a contact hole reaching the gate wiring and a contact hole reaching the drain electrode , whereas, in the D embodiment, the contact hole reaching the gate wiring is formed during Step D4, and a contact hole reaching the drain electrode is not mentioned . J.A. 29

– 30. Relatedly, Display Manufacturers argue that the different embod iments have a different number of steps and have a diffe rent sequence in which the patterns are etched, which they argue results in “a fundamentally different approach to manufacturing a [device] .” Appellee s’ Br. at 8

– 9. Diffe rent embodiments, however, are expected to have diffe rences, and neither the magistr ate judge no r Display Manufacturers explain how the noted differences in the structures of the embodiments impact the structure of the limitation

- at

- issue or impact how a person of ordinary skill in the art would have understood the limitation. Instead

, t he embodiments all similarly describe manufa cturing processes for an electro

- optical device using a reduced number of photolithographic steps over the prior art, and t he structure for the limitation

- at

- issue is formed in the same context in each embodiment

— in a “photolit hographic step [] of patterning the passivation film

. ” ’ 958
p atent
, 6: 4–5 , 6 :4 3–44, 7:11

– 12 , 8: 23

– 24
, 8:57

– 58

. Th is similar context of the limitation

- at

- issue

, in similar embodiments, supports the con clusion that a person ofEIDOS DISPLAY , LLC v. AU OPTRONICS CORPORA TION 15

ordinary skill in the art would adopt the same unde rstanding for the same limitation recited in claim 1 of the ’958 patent

. Finally, Display Manufacturers argue that permitting separate contact holes to be covered by the limitation “a contact hole for source wiring and gate wiring connection terminals ” would require rewriting the limitation, which is impermissible except in certain situations. Appellee s’ Br. at 29 (citing Source Vagabond Sys., Ltd. v. Hydrapak, Inc. , 753 F.3d 1291, 1301 (Fed. Cir. 2014)). Determining how a person of ordinary skill in the art would unde rstand the limitation, however, is different from rewriting the limitation. Here, because a person of ordinary skill in the art would understand that the l imitation “a contact hole for source wiring and gate wiring connection term inals ” means separate contact holes for source wiring connection terminals and gate wiring connection term inals, adopting such a construction is not rewriting the claim limitation.

* * *

The ’958 patent teaches a person of ordinary skill in the art that “a contact hole for source wiring and gate wiring connection terminals” is formed by etching sep arate contact holes for the source wiring connection term inals and for the gate wiring connection terminals, as described in the specification and prosecution history

. Therefore, the limitation “ a contact hole for source wiring and gate wiring connection terminals ” in claim 1 of the ’958 patent is not indefinite under 35 U.S .C. § 112, ¶ 2

. We reverse the judgment of indefiniteness and remand to the district court for further proceedings consistent with this opinion.

REVERSED AND REMANDED

C OSTS Each party shall bear its own costs

.