Opinion
Civil Action 1:21-CV-0606 (GTS/DJS)
02-27-2023
CRYSTAL IS, INC., Plaintiff, v. NITRIDE SEMICONDUCTORS CO., LTD., Defendant.
ROBINS, KAPLAN LLP CYRUS MORTON, ESQ. RAJIN OLSEN, ESQ. ANNIE HUANG, ESQ. KEVIN S. KUDLAC, ESQ. ETAI LEHAV, ESQ. ADAM R. SHAW, ESQ. RADULESCU LLP BOIES, SCHILLER & FLEXNER LLP
FOR PLAINTIFFS:
ROBINS, KAPLAN LLP
OF COUNSEL:
CYRUS MORTON, ESQ.
RAJIN OLSEN, ESQ.
ANNIE HUANG, ESQ.
KEVIN S. KUDLAC, ESQ.
ETAI LEHAV, ESQ.
ADAM R. SHAW, ESQ.
FOR DEFENDANT:
RADULESCU LLP
BOIES, SCHILLER & FLEXNER LLP
REPORT AND RECOMMENDATION
DAVID E. PEEBLES, U.S. MAGISTRATE JUDGE
Plaintiff Crystal IS, Inc. (“Crystal IS” or “plaintiff”) has commenced this action against defendant Nitride Semiconductors Co., Inc. (“Nitride” or “defendant”) seeking a declaratory judgment determining that it has not directly or indirectly infringed two asserted claims of a patent held by Nitride, either literally or under the doctrine of equivalents. Nitride has counterclaimed alleging infringement. The patent at issue pertains to the manufacture of a gallium nitride compound semiconductor and light emitting element.
Crystal IS, the alleged infringer, has moved for summary judgment contending that there are no disputed issues of material fact for trial related to certain limitations of the asserted claims and that the evidence conclusively establishes that it does not infringe the subject patent. For the reasons set forth below, I recommend that the motion, which has been referred to me for issuance of a report and recommendation, be granted as to Claim 2, but denied with respect to Claim 9.
I. BACKGROUND
A. Basics of the Technology at Issue
This case involves light emitting diode (“LED”) semiconductor technology. Those semiconductors utilize the “movement” of electrons and “holes” - which are defined as the absence of an electron in an area - within a material to produce light. Dkt. No. 67-23, at ¶ 31. Semiconductors use materials that have a modest energy difference between the valence band - a lower-energy band formed by the sharing of electrons among atoms in a solid - and the conduction band - a higher energy band where electrons are mobile and can move through the solid under in influence of electric fields. Id. at ¶ 30. The difference in energy between the conduction band and the valence band is known as the bandgap, which represents the amount of energy needed to break a valence electron off from an atom. Id. at ¶ 32. This movement of electrons from the valence band to the conduction band leaves behind a “hole” in the valence band. Id. at ¶ 32. In an LED, light is emitted when an electron moves from the conduction band toward the valence band, a process called recombination, because the movement results in a loss of energy, which is released in the form of a photon of light. Id. at ¶ 37. This light-emitting process generally occurs in what is called the “active layer” of the semiconductor, which is typically found between an “n-type” layer that has a high concentration of electrons and a “p-type” layer that has a high concentration of “holes.” Id. at ¶ 42. This basic configuration can be implemented in many ways, depending on the composition of the various layers. Id. at ¶ 43-49. Most relevant to this case, a multiple quantum well (“MQW”) LED is constructed with an active layer that consists of numerous very thin sub-layers containing quantum wells that use the principles of quantum mechanics to increase energy emission and recombination probability, both of which allow for increased light emission. Id. at ¶ 48-49.
For reasons of light-emitting efficiency, LED semiconductors are generally made from “III-V compounds,” which are compounds formed from a group III element - such as aluminum, gallium, or indium - and a group V element - including nitrogen, arsenic, and phosphorus. Dkt. No. 67-23, at ¶ 37-38. Admixtures of multiple group III elements with a group V element are also commonly used, such as aluminum gallium nitride. Id. at ¶ 38. The composition of the light-emitting layer of the semiconductor determines the energy bandgap, and therefore the emission wavelength, or type of light, that is emitted by the LED. Id. at ¶ 38.
Throughout this decision, various terms and their chemical formulas will be used interchangeably for the relevant elements and alloys, including gallium/Ga; gallium nitride/GaN; aluminum/Al; aluminum nitride/AlN; and aluminum gallium nitride/AlGaN.
Semiconductors used in LEDs are crystalline, meaning they are grown with a predictable and repeated arrangement of the atoms within the structure. Dkt. No. 67-23, at ¶ 51. Because different compounds, such as GaN, AlN, and AlGaN, or a base substrate material such as sapphire, have differences in their structure, growing one compound on top of a different compound causes “lattice mismatch” between the two. Id. at ¶ 51. This lattice mismatch creates stress within the crystal and can result in dislocations, which are broken chemical bonds within the structure that create areas where electrons and “holes” can become trapped, reducing light emission from the LED. Id. at ¶ 51.
The ʹ270 Patent is contained in various court filings in this action including, inter alia, Dkt. No. 1-4, and will hereinafter be cited as “ʹ270 Patent, ___:___” (referring to column and line numbers, respectively).
At the center of this case is United States Patent No. 6,861,270 ("ʹ270 Patent"), issued on March 1, 2005, and entitled "Method for Manufacturing Gallium Nitride Compound Semiconductor and Light Emitting Element." The ʹ270 Patent discloses a method for manufacturing GaN compound semiconductors that can improve light emitting efficiency even when dislocations are present in the materials. The patent lists Shiro Sakai as the inventor, and both Mr. Sakai and Nitride as the assignees of rights under the patent. The ʹ270 Patent was issued based upon an application filed on March 6, 2002.
This action involves allegations of infringement related to Claims 2 and 9 of the patent, which are dependent claims of Claims 1 and 8, respectively. Those relevant claims are set forth below:
ʹ270 Patent, Claim 1
1. A method for manufacturing a gallium nitride based semiconductor, comprising the steps of:
(a) forming a first gallium nitride based semiconductor on a substrate, the first gallium
nitride based semiconductor having a first surface;
(b) forming on less than a total area of the first surface a composition material of the first gallium nitride based semiconductor; and
(c) forming a second gallium nitride based semiconductor on the first gallium nitride based semiconductor on which the composition material is formed; wherein a spatial fluctuation is created in the band gap by variation in the compositional ratio in the second gallium nitride based semiconductor created by the composition material, and the second gallium nitride based semiconductor is a light emitting layer.ʹ270 Patent, Claim 2
2. A method according to claim 1, wherein the first gallium nitride based semiconductor and the second gallium nitride based semiconductor are AlGaN; and the composition material is one selected from Ga and Al.ʹ270 Patent, Claim 8
8. A light emitting element comprising a gallium nitride based semiconductor, the light emitting element comprising:
a substrate;
a first gallium nitride based semiconductor layer formed on the substrate, the first gallium nitride based semiconductor layer having a first surface;
a composition material of the first gallium nitride based semiconductor formed on less than a total area of the first surface; and
a second gallium nitride based semiconductor layer having a varied compositional ratio and formed on the first gallium nitride based semiconductor layer onto which the composition material is formed,
and the second gallium nitride based semiconductor is a light emitting layer.ʹ270 Patent, Claim 9
9. A light emitting element according to claim 8, wherein the first gallium nitride based semiconductor and the second gallium nitride based semiconductor are AlGaN; and the composition is one selected from Ga and Al.
The relevant claims of the ʹ270 Patent aim to improve the characteristics of GaN based semiconductors, including their light emitting efficiency, even when dislocations are present in the semiconductor. ʹ270 Patent, 1:42-45. It achieves this result through the use of a composition material to create a spatial fluctuation in the band gap of the semiconductor. ʹ270 Patent, 1:55-58. The presence of the composition material increases the solid phase composition of that material within the second GaN based semiconductor. ʹ270 Patent, 1:59-62. This causes the compositional ratio in the region where the composition material is present to differ from that in the region where the composition material is not present, and that difference in the compositional ratio produces a spatial fluctuation in the band gap, which in turn facilitates recombination of the carriers at the region where the band gap is narrow and results in increased light emitting efficiency even when dislocations are present. '270 Patent, 1:62-67, 2:1-3.
In a preferred embodiment of the relevant claims of the '270 Patent, an n-type AlyGa1-yN layer 12 is grown on a substrate 10 such as, for example, sapphire at a temperature of 1050 degrees Celsius (“C”). '270 Patent, 3:34-36. Then, trimethyl gallium and nitrogen gas are supplied to the substrate for a few seconds at a temperature of 800-1050 degrees C, to thereby form on the n-type AlyGa1-yN layer 12 using metal-organic chemical vapor deposition (“MOCVD”) discrete Ga droplets 14 having a diameter of approximately 10-500 nanometers (“nm”). '270 Patent, 3:36-40. This process is demonstrated by Figure 1A in the '270 Patent:
The variables in this case represent a value between zero and one, such that if x or y are zero, the compound is pure GaN, whereas if x or y are one, the compound is pure AlN; this variable represents the solid phase composition of the AlGaN compound, or how much of each metal nitride is present in the AlGaN alloy. Dkt. No. 41 -16, at ¶ 7; Dkt. No. 67-23, at ¶¶ 38, 60.
(Image Omitted)
After the droplets have been formed, an undoped AlxGa1-xN layer 16 is grown at a temperature of 1050 degrees C on the n-type AlyGa1-yN layer 12 onto which the Ga droplets 14 are formed. ʹ270 Patent, 3:41-44. In regions where the Ga droplets are present, the solid phase composition of Ga within the undoped AlxGa1-xN layer 16 becomes high and forms a spatial fluctuation in the band gap of the undoped AlxGa1-xN layer 16. ʹ270 Patent, 3:44-48. After the undoped AlxGa1-xN layer 16 in which the spatial fluctuation is produced in the band gap is grown, a p-type AlyGa1-yN layer 18 is grown at a temperature of 1050 degrees C to produce a double hetero structure. ʹ270 Patent, 3:54-57. This portion of the process is demonstrated by Figure 1B of the ʹ270 Patent:
A dopant is an impurity atom that can be introduced into a semiconductor alloy, thereby affecting the conductivity of that alloy; using dopants that contribute more electrons than the atom replaces results in a net excess of negative charge carriers, creating an n-type semiconductor, while dopants that contribute fewer electrons than the atom replaces results in a net excess of positive charge carriers, which creates a p-type semiconductor. Dkt. No. 67-23, at ¶¶35-36. An undoped layer does not include any impurity atoms.
(Image Omitted)
FIG. 1B
The '270 Patent further indicates that, for this preferred embodiment, “either Al or Ga, which are both composition materials of AlGaN, can be used” as the relevant composition material for altering the compositional ratio. '270 Patent, 4:1-7.
B. Material Facts Not in Dispute
According to the '270 Patent, before that patent was filed, semiconductor structures made of AlGaN or multi-quantum well (“MQW”) structures formed of repeated alternating layers (called superlattices) of AlGaN and GaN were used for light-emitting elements, particularly for emitting ultraviolet (“UV”) light. Dkt. No. 41-13, at ¶ 4; Dkt. No. 67-24, at ¶ 4. As stated in the '270 Patent specification, those materials were typically formed on a sapphire substrate, which resulted in dislocations due to lattice mismatch. Dkt. No. 41-13, at ¶ 6; Dkt. No. 67-24, at ¶ 6. The light emitting efficiency of those structures can be improved when the density of light emitting points (i.e., points where the band gap is narrow within the spatially fluctuating band gap) exceeds the dislocation density. Dkt. No. 41-13, at ¶ 7; Dkt. No. 67-24, at ¶ 7. The ʹ270 Patent provides three independent claim methods to improve light emitting efficiency despite dislocations, as well as four additional methods based upon those independent claims. Dkt. No. 41-13, at ¶ 8; Dkt. No. 67-24, at ¶ 8; ʹ270 Patent, 5:29-6:17.
Crystal IS manufactures its relevant semiconductor products using one of two reactors to perform an epitaxial growth process, forming layers on an AlN substrate. Dkt. No. 41-13, at ¶ 25; Dkt. No. 67-24, at ¶ 25. This process, commonly referred to as MOCVD, is a special crystal growth process through which very thin layers of AlGaN can be formed with exquisite control of both thickness and composition. Dkt. No. 41-13, at ¶ 26; Dkt. No. 67-24, at ¶ 26. The MOCVD process involves controlling the flow of metal-organic vapors at high temperatures in a vacuum to react with ammonia and result in the deposition of metal-organic compounds, such as AlN or GaN. Dkt. No. 41-13, at ¶ 27; Dkt. No. 67-24, at ¶ 27. In MOVCD, the supply of each gas is controlled through valves. Dkt. No. 41-13, at ¶ 28; Dkt. No. 67-24, at ¶ 28. Each gas valve can be turned on and off at the desired times, and can also be set to flow at different rates. Dkt. No. 41-13, at ¶ 28; Dkt. No. 67-24, at ¶ 28.
Crystal IS' “recipes” dictate the MOCVD flow sequence to form each epitaxial layer in the growth process. Dkt. No. 41-13, at ¶ 29; Dkt. No. 67-24, at ¶ 29. Crystal IS asserts that its products are grown in the structure provided in the following chart provided by Crystal IS' Senior Epitaxial Engineer, Dr. James Grandusky (hereinafter "Grandusky chart”), with the substrate at the top of the chart and the subsequent layers grown thereon in descending order, starting with the AlN nucleation layer:
Dr. Grandusky played a key role in developing the structural specification and recipes used to manufacture the devices at issue.
Although Nitride has indicated that it disputes this fact because Crystal IS produces its products using approximately 40 different recipes, which have been disclosed to Nitride, it has not provided any evidence to show that there is a genuine dispute of material fact as to whether this chart represents Crystal IS' products in the relevant respects. Notably, Nitride's own expert, Dr. William Doolittle, testified at his deposition that the recipes disclosed by Crystal IS appeared to reflect the process documented by this chart. Dkt. No. 74-2, at 207:16-208:3. I therefore find that Nitride has not adequately shown that this chart is properly disputed for the purposes of the pending motion.
• Table 1: Epi Structure Specification:
| Layer | Metric | Value | Range | Unit | |
| Nuc | AIN | [Redacted] | [Redacted] | [Redacted] | [Redacted] |
| n-AIGaN | AIGaN [Redacted] | [Redacted] | [Redacted] | [Redacted] | [Redacted] |
| 5 period MOW | AIGaN [Well] | [Redacted] | [Redacted] | [Redacted] | [Redacted] |
| AIGaN [Redacted] [Barrier] | [Redacted] | [Redacted] | [Redacted] | [Redacted] | |
| EBL | AIGaN | [Redacted] | [Redacted] | [Redacted] | [Redacted] |
| p-grade | AIGaN transitioning to GaN | [Redacted] | [Redacted] | [Redacted] | [Redacted] |
| PGaN | GaN [Redacted] | [Redacted] | [Redacted] | [Redacted] | [Redacted] |
Unlike the typical use of sapphire as a substrate as discussed in the '270 Patent, which causes a lattice mismatch and dislocations, Crystal IS' relevant products use an AIN substrate with an AIN homoepitaxial layer, which results in no lattice mismatch and significantly fewer dislocations. Dkt. No. 41-13, at ¶ 36; Dkt. No. 67-24, at ¶ 36. Thus, its products do not need to use techniques, including the use of a "composition material" as described in the '270 Patent, to account for excess dislocations that would decrease light emitting efficiency. Dkt. No. 41-13, at ¶ 37; Dkt. No. 67-24, at ¶ 37.
Nitride disputes these two facts, but the bases on which it does so are insufficient. These facts are not immaterial to the ultimate issues here. Further, under Local Rule 56.1, “[t]he record for purposes of the Statement of Material Facts includes the pleadings, depositions, answers to interrogatories, admissions, and affidavits.” N.D.N.Y. Local Rule 56.1(a). Thus, Nitride's objection to the asserted fact on the basis Crystal IS cites only to the complaint in this matter, without providing any contrary evidence, is insufficient to affect a proper denial of that fact.
II. PROCEDURAL HISTORY
This matter originated as an outgrowth of separate proceedings in which Nitride sued Digi-Key Corporation in two actions in the District of Minnesota, filed on September 22, 2017, and February 18, 2021. See Nitride Semiconductors Co., Ltd. v. Digi-Key Corp. d/b/a Digi-Key Elecs., 17-cv-4359 (D. Minn.) (hereinafter “Digi-Key I”); Nitride Semiconductors Co., Ltd. v. Digi-Key Corp. d/b/a Digi-Key Electronics, 21-cv-0437 (D. Minn.) (hereinafter “Digi-Key II”). In those actions, Nitride accused several products being re-sold by Digi-Key, including products made by Crystal IS, of infringing the ʹ270 Patent. Those actions were both dismissed on a stipulation by the parties on May 18, 2022. In Digi-Key II specifically, the stipulation of dismissal that was accepted by the court provided that the dismissal of the claims of infringement concerning the Crystal IS products was without prejudice. See Digi-Key II, Dkt. No. 38.
In addition to the Digi-Key suits, the ʹ270 Patent has been the subject of other litigation previous to or contemporaneous with the current action before this court. See Nitride Semiconductors Co., Ltd. v. RayVio Corporation, 17-cv-2952 (N.D. Cal) (“RayVio”) (filed on May 23, 2017); Nitride Semiconductors Co., Ltd. v. Lite-On Technology Corporation et al., 21-cv-00183 (W.D. Tex.) (“Lite-On”) (filed on February 26, 2021). The RayVio litigation led to two inter partes review (“IPR”) proceedings before the Patent and Trademark Office's Patent Trial and Appeal Board (“PTAB”), one of which resulted in the invalidation of independent Claims 1 and 8. Dkt. Nos. 67-13, 67-14. Claim construction proceedings have been conducted in both the RayVio and Lite-On actions.
In response to the Digi-Key actions, on May 24, 2021, Crystal IS filed a complaint in this court seeking a declaratory judgment of non-infringement of the ʹ270 Patent under the customer suit exception. Dkt. No. 1. Nitride filed its answer to that complaint, with counterclaims, on October 14, 2021. Dkt. No. 17. Crystal IS has since responded to those counterclaims and asserted its own counterclaims in reply on November 5, 2021. Dkt. No. 25. Nitride subsequently answered that pleading on November 26, 2021. Dkt. No. 29.
In accordance with the court's local patent rules, the parties submitted a joint claim construction and prehearing statement on April 26, 2022, and followed with their respective opening claim construction briefs on July 12, 2022. Dkt. Nos. 38, 39, 40. Crystal IS also filed the current motion for summary judgment on July 12, 2022. Dkt. No. 41. On August 3, 2022, the court ordered that the pending claim construction proceedings and motion for summary judgment be stayed to afford the parties the opportunity to conduct limited discovery related to the scope of issues raised within the summary judgment motion. Dkt. No. 48. The parties conducted that limited discovery and thereafter completed briefing on the motion for summary judgment, as ordered by the court. Dkt. Nos. 67, 74. Oral argument was conducted on Crystal IS' motion on February 15, 2023, at which time decision was reserved.
The only disputed claim terms identified in the joint statement are “forming on/formed on” (Claims 2 and 9), “substrate” (Claims 2 and 9), “a spatial fluctuation . . . in the band gap” (Claims 2 and 9), and “order of steps recited in product-by-process claim” (Claim 9). Dkt. No. 38.
III. DISCUSSION
A. Legal Standards Governing Summary Judgment
In patent cases, a court should apply the law of the regional circuit where it is located for procedural issues that are not specific to patent law. See Vaughan Co. v. Global Bio-Fuels Tech., LLC, 12-CV-1292, 2013 WL 5755389, at *4 n.4 (N.D.N.Y. Oct. 23, 2013) (Hurd, J.) (citing Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1318 (Fed. Cir. 2009)); Pregis Corp. v. Kappos, 700 F.3d 1348, 1353 (Fed. Cir. 2012) (“Federal Circuit law applies to ‘issues of substantive patent law and certain procedural issues pertaining to patent law.”); see also SIMO Holdings Inc. v. Hong Kong uCloudlink Network Tech. Ltd., 983 F.3d 1367, 1380 (Fed. Cir. 2021) (stating that the court would apply Second Circuit precedent on the general procedural matter of denial of summary judgment).
Summary judgment motions are governed by Rule 56 of the Federal Rules of Civil Procedure. Under that provision, the entry of summary judgment is warranted “if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a); Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247 (1986); Sec. Ins. Co. of Hartford v. Old Dominion Freight Line, Inc., 391 F.3d 77, 82-83 (2d Cir. 2004). A fact is “material” for purposes of this inquiry if it “might affect the outcome of the suit under the governing law.” Anderson, 477 U.S. at 248; see also Jeffreys v. City of N.Y., 426 F.3d 549, 553 (2d Cir. 2005). A material fact is genuinely in dispute “if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Anderson, 477 U.S. at 248.
A party moving for summary judgment bears an initial burden of demonstrating that there is no genuine dispute of material fact to be decided with respect to any essential element of the claim in issue; the failure to meet this burden warrants denial of the motion. Anderson, 477 U.S. at 250 n.4; Sec. Ins. Co., 391 F.3d at 83. In the event this initial burden is met, the opposing party must show, through affidavits or otherwise, that there is a material dispute of fact for trial. Fed.R.Civ.P. 56(e); Celotex, 477 U.S. at 324; Anderson, 477 U.S. at 250.
When deciding a summary judgment motion, a court must resolve any ambiguities, and draw all inferences, in a light most favorable to the non-moving party. Anderson, 477 U.S. at 255; Jeffreys, 426 F.3d at 553; Wright v. Coughlin, 132 F.3d 133, 137-38 (2d Cir. 1998). The entry of summary judgment is justified only in the event of a finding that no reasonable trier of fact could rule in favor of the non-moving party. Bldg. Trades Employers' Educ. Ass'n v. McGowan, 311 F.3d 501, 507-08 (2d Cir. 2002); see also Anderson, 477 U.S. at 250 (finding summary judgment appropriate only when “there can be but one reasonable conclusion as to the verdict”).
B. Analysis of Plaintiff's Motion for Summary Judgment
Crystal IS' motion for summary judgment is premised on an argument that Nitride has not shown, and cannot show, that Crystal IS' relevant LED semiconductor devices meet two specific aspects of Claims 2 and 9, which are both dependent claims of Claims 1 and 8, respectively. Specifically, Crystal IS argues that its products do not infringe because they (1) do not contain any elemental Ga, because any elemental Ga that is introduced into the reactor is reacted “immediately” with ammonia to form GaN, and (2) there is no “composition material” of Ga formed “on less than a total area of the surface.” Dkt. No. 41-13.
In opposition to that motion, Nitride argues that (1) elemental Ga is present on the relevant surface during the formation of Crystal IS' products, particularly as a result of the processes of thermal decomposition and/or beta elimination that would occur due to the temperatures at which the reactors operate, and (2) that the presence of elemental Ga causes “Ga-rich” areas within the relevant layer(s) of their products that are formed on less than a total area of the surface. Dkt. No. 67-22. Although, in opposing the arguments raised in the pending motion, Nitride appears to accept for the sake of argument that Claims 2 and 9 require that the composition material specified be elemental Ga or elemental Al, it nonetheless separately argues that such construction of that claim term is incorrect, and that “composition material” should instead be construed to also encompass the presence of GaN or AlN. Dkt. No. 67-22, at 23-26.
Nitride also argues that, apart from the merits of the issues raised, Crystal IS' motion should be denied on the procedural basis that it failed to comply with the requirement to provide a separate statement of undisputed material facts as required by this court's local rules. Dkt. No. 67-22.
1. Compliance with Local Rule 56.1
Nitride first argues that Crystal IS' motion should be denied because Crystal IS has failed to comply with the requirement in this court's Local Rule 56.1 that a movant on summary judgment shall submit “a separate Statement of Material Facts.” N.D.N.Y. Local Rule 56.1(a). Nitride argues that, although Crystal IS has set forth a statement of material facts identified as such within its memorandum in support of its motion, it is not “separate” and therefore does not comply with the local rule. Local Rule 56.1(a) provides as follows:
Statement of Material Facts: Any motion for summary judgment shall contain a separate Statement of Material Facts. The Statement of Material Facts shall set forth, in numbered paragraphs, a short and concise statement of each material fact about which the moving party contends there exists no genuine issue. Each fact listed shall set forth a specific citation to the record where the fact is established. . . . Failure of the moving party to submit an accurate and complete Statement of Material Facts shall result in a denial of the motion.N.D.N.Y. Local Rule 56.1(a) (emphasis in original).
Although Crystal IS' statement is integrated into its memorandum, it is contained in a separate section of that memorandum that is clearly delineated as its “Statement of Material Facts” and thus is plainly intended to constitute the required statement apart from any legal arguments or other material contained in the memorandum. Given that the local rule does not specify that the statement of material facts must be in a separate document, but rather merely that it must be “separate,” I cannot say that Crystal IS' motion materially contravenes that rule. Further, to deny the pending motion because Crystal IS' clearly labeled statement of material facts is contained within its memorandum would be to elevate form over substance. The inclusion of the statement in the body of the memorandum has in no way hampered the court's ability to parse out the undisputed facts from those which are controverted. The intent of Local Rule 56.1 has therefore not been transgressed.
I note, moreover, that, according to the local rule, it is the failure to submit “an accurate and complete” statement of material facts that can result in a denial of the motion. N.D.N.Y. Local Rule 56.1(a). Crystal IS' statement of material facts sets forth its asserted undisputed material facts in separately numbered paragraphs with citations as required by the local rule, and Nitride makes no concrete argument that the statement of material facts as a whole is not “accurate and complete” in a way that would run afoul of the local rule.
The cases cited by Nitride in support of its argument are readily distinguishable, involving situations where the movant either failed to file any statement of material facts whatsoever, or a submitted statement that was materially deficient by not being numbered or not including citations. Dkt. No. 67-22, at 22-23 (citing Mhina v. Citizens Bank, N.A., 22-cv-0427, 2022 WL 17415109, at *1-2 (N.D.N.Y., Dec. 5, 2022) (Sannes, J.); Heyliger v. West, 18-CV-336, 2021 WL 5605231, at *2 (N.D.N.Y., Nov. 1, 2021) (Dancks, M.J.); Dacier v. New York State Dept. of Labor, 17-CV-418, 2022 WL 16855210, at *3-4 (N.D.N.Y., Nov. 9, 2022) (Kahn, J.); Hogan v. CVS Albany, LLC, 19-cv-1455, 2022 WL 4549224, at *2 (N.D.N.Y. Sept. 29, 2022) (Sharpe, J.)).
For all of the foregoing reasons, I recommend that Nitride's argument on this matter be rejected, and that Crystal IS' motion be adjudged on the merits.
2. Construction of Relevant Claim Terms
As will be seen, Crystal IS' motion potentially turns on the manner in which the claim terms “less than a total area of the first surface” and “composition” or “composition material” that is “selected from Ga and Al” are construed. Of particular importance is whether the second of these terms requires the composition or composition material to be elemental Ga or Al, excluding such other admixtures as GaN and AlN. The parties did not identify those terms as requiring construction in their joint claim construction statement, nor were they included in the parties' opening Markman briefs. See Dkt. Nos. 38, 39, 40. This fact notwithstanding, the parties now express differing views regarding the terms, with Crystal IS arguing that only elemental Ga or Al will meet the limitation, and Nitride claiming that the terms do not exclude GaN and AlN. Because, as will be discussed in the relevant section below, I find that concrete construction of those terms is not imperative to determining whether summary judgment should be granted or denied on Claim 2, there is no need to engage in any detailed construction of those terms in order to resolve Crystal IS' motion as to that claim. However, as to Claim 9, the construction of that term would likely be dispositive based on the evidence provided with this pending motion. Although a court is permitted to construe claims on a summary judgment motion, I find that the pivotal nature of the particular claim term at issue here merits more extensive and thorough briefing than was provided in the parties' papers on this motion. I therefore recommend that, rather than construing that term here, construction of the above terms should be deferred until formal Markman proceedings are held.
I do note, however, that while formal claim construction proceedings have not yet been conducted in this case, in their joint claim construction statement, the parties have indicated their agreement that Claim 2, a method claim, “requires performance of the steps in the sequence recited in the claim, namely step (a) is performed, and then step (b) is performed, and then step (c) is performed.” Dkt. No. 38; see also Dkt. No. 39, at 14; Dkt. No. 40, at 13. Inasmuch as the parties have agreed on that construction, and because that construction is relevant to the current motion for summary judgment, I am recommending the adoption of that construction and will apply it when analyzing the issues raised in the pending motion.
The parties do, however, dispute whether Claim 9 should be construed as a product-by-process claim that also requires the listed steps to be performed in sequence, or whether it should instead be construed as an apparatus claim, implying no such sequential requirement. Compare Dkt. No. 39, at 29-30 with Dkt. No. 40, at 25-26.
3. Analysis of the Motion for Summary Judgment
In beginning to analyze the evidence in light of the ʹ270 Patent, it is important to highlight where the relevant claim limitations - if they are present - would be located within Crystal IS' products, and what precisely in those products is being compared with the patent claim limitations. Claims 1 and 8 specify that a first GaN based semiconductor is formed on a substrate, and Claims 2 and 9 specify that both the first and second GaN based semiconductors are AlGaN. ʹ270 Patent, 5:32-48, 6:20-35. The layer denoted as “n-AlGaN” in the Grandusky chart would therefore correspond with the first GaN based semiconductor, as it is formed on the AlN substrate (with the AlN buffer layer between). Dkt. No. 41-16, at ¶ 6. The ʹ270 Patent specifies that a composition material, “one selected from Ga or Al,” would next be formed on the first surface of that n-AlGaN semiconductor, on top of which a second AlGaN semiconductor, which is a light emitting layer, is formed. '270 Patent, 5:34-48, 6:24-36. The second AIGaN semiconductor mostly closely corresponds with the first multi-quantum well ("MQW") layer in the Grandusky chart, as that is the next light-emitting AIGaN layer formed after the n-AIGaN layer. It is therefore apparent that the relevant area at issue in this litigation - where the composition material would need to be formed - is on the first surface of the n-AIGaN layer, on which is also grown the first MQW layer, specifically the MQW well layer that directly follows the n-AIGaN layer on the Grandusky chart. The relevant layers from the Grandusky chart are therefore indicated below:
As was discussed previously, this chart is inverted in that the n-AIGaN layer is formed before the MQW layers.
n-AIGaN
AIGaN [Redacted]
[Redacted]
[Redacted]
[Redacted]
[Redacted]
5 period MOW
AIGaN [Well]
[Redacted]
[Redacted]
[Redacted]
[Redacted]
AIGaN [Redacted] [Barrier]
[Redacted]
[Redacted]
[Redacted]
[Redacted]
a. Claim 2
As a result of the parties' agreed-upon construction regarding the sequential order of the steps related to Claim 2, the composition material specified in Claim 2 must be formed on less than a total area of the first surface of the n-AlGaN layer before the MQW AlGaN layer is formed on the n-AlGaN layer. Based on the evidence presented, I recommend a finding that Nitride has not adduced evidence sufficient to create a genuine dispute of material fact regarding whether Crystal IS forms a composition material prior to beginning growth of the MQW layer, and that summary judgment should therefore be granted to Crystal IS with respect to Claim 2.
As was discussed previously, Claim 2 comprises three separate steps: (a) forming the first AlGaN semiconductor; (b) forming on less than a total area of the first surface of that AlGaN semiconductor a composition material that is one selected from Ga and Al; and (c) forming a second AlGaN semiconductor on the first AlGaN semiconductor on which the composition material was formed. ʹ270 Patent. Based on the parties' agreement that these steps must be sequentially performed in order to satisfy the claim limitations, the infringing method must therefore perform these steps in the relevant order. Specifically, the composition material selected from Ga and Al must be formed after the first AlGaN semiconductor has been formed, and must be formed before the second AlGaN semiconductor begins forming thereon.
Although, in opposing Crystal IS' motion, Nitride has submitted evidence in the form of an expert declaration and deposition testimony of Dr. William Doolittle and atomic probe tomography (“APT”) data purporting to show the existence of areas of accumulated Ga within Crystal IS' products, none of that evidence appears to reasonably show that the purported areas of accumulated Ga were formed, by whatever method, after the n-AlGaN layer was complete but before the formation of the MQW AlGaN layer began. Evidence provided by Crystal IS in support of its motion indicates that the relevant MQW AlGaN layer of its products is grown immediately after the n-AlGaN layer is grown, with no indication of any step in between those layers involving formation of only Ga, or even only GaN, on the surface of the n-AlGaN layer prior to the start of the growth of the MQW AlGaN layer. Dkt. No. 41-16, at ¶ 6. Having reviewed the recipes guiding the production of Crystal IS' products, Dr. Doolittle testified that the chart provided by Crystal IS showing the layers of its products appears to be consistent with the sequence that is denoted in the recipes, or at a minimum he could not identify any discrepancies between them based upon his review. Dkt. No. 74-2, at 207:16-208:3.
Because there appears to be no genuine dispute that Crystal IS' products have an AlGaN layer formed on the n-AlGaN first semiconductor layer, the pivotal question is whether there is any evidence from which a reasonable factfinder could conclude that Ga (or GaN) was formed on the n-AlGaN layer before the MQW AlGaN layer began growing, whether or not it is part of Crystal IS' recipes or design. There is no such evidence in the record now before the court. As a matter of chemistry, the growth of an AlGaN alloy requires that both Ga and Al (along with N) be present during the growth process. Indeed, in his declaration, when explaining the process of beta elimination, Dr. Doolittle states that, “[i]f AlGaN is desired, two different metal organics, for example trimethylgallium and trimethylaluminum can be used with the ratio of the individual gases related to the final compositions of the film.” Dkt. No. 67-23, at ¶ 76. This appears to support the conclusion that, when beginning to form the AlGaN MQW layer on the n-AlGaN first layer, both Ga and Al would be utilized at the same time in the ratio specified by the recipe, which Dr. Grandusky indicates is [Redacted] % AlN to [Redacted] % GaN in the well layers of the MQW and [Redacted] % AlN to [Redacted] % GaN in the barrier layers of the MQW. Dkt. No. 41-16, at ¶17-18. The introduction of both organometallics at the same time to form the AlGaN MQW well layer means there would be no composition material of only Ga (or only GaN, depending on the claim construction that is ultimately accepted) being formed before any AlGaN for that MQW layer is formed.
This is also supported by the recipe submitted into evidence, which shows that, during the formation of the well layer - which is the first layer of the MQW - one source of trimethylaluminum and one source of triethylgallium is “open” and running during that step of the process, indicating that both Al and Ga are being introduced and deposited simultaneously during that growth stage of that layer. Dkt. No. 74-24, at CIS00002853.8. Nitride simply has not pointed to any evidence that would suggest Ga or GaN is deposited before the AlGaN MQW well layer begins to form, much less evidence that would be sufficient to create a genuine dispute of material fact.
I note that, although Nitride has maintained in its response that it disputes that the term “composition material” that is “one selected from Ga or Al” means only elemental Ga or elemental Al rather than allowing compounds of those elements with other, unlisted elements (including N), it has never, in either this action or the others in which this term was construed, asserted that the term should be interpreted to mean materials that include both Ga and Al. See Dkt. No. 67-19 (during claim construction proceedings in Lite-On, Nitride argued for a construction of the relevant terms as “the composition material is Ga or Al, not both”) (emphasis added). As such, any formulation that uses both Ga and Al together cannot be considered to be the “composition material” contemplated by the ‘270 Patent.
Because the evidence convincingly supports that both Ga and Al are used in the formation of the MQW AlGaN layers without any deposition of only Ga (or only GaN) before the MQW layers begin forming, Nitride's evidence purporting to show that accumulations of Ga might form on the first surface of the n-AlGaN layer by various processes either during the formation of the n-AlGaN layer or after the MQW AlGaN layer has already started forming is insufficient to create a genuine dispute of material fact as to whether Crystal IS' process meets the “composition material” requirement of Claim 2 because it does not show that any such Ga or GaN concentrations were formed at the specific time required to meet the requirement that the listed steps in Claims 1 and 2 be performed sequentially. I therefore recommend that summary judgment be granted for Crystal IS, determining that it does not infringe Claim 2 of the ‘270 Patent.
Other claim terms that are still subject to dispute in the parties' claim construction briefs do not affect this finding. Specifically, both of the parties' proposed constructions of the term “forming on” acknowledge that the relevant material or layer is formed “above” the layer on which that material or second layer is formed. Dkt. No. 39, at 14-15; Dkt. No. 40, at 14. Thus, despite the fact that the term “formed on” remains in contention at this time, it is undisputed by the parties that the relevant composition material selected from Ga and Al must be formed above the n-AlGaN layer, which indicates that, whether or not thermal decomposition or beta elimination might cause Ga to accumulate on the first surface of that n-AlGaN layer when forming that layer, such possibility would not raise a genuine dispute of material fact regarding the relevant issue because the composition material must be above, and not part of, the first surface of that first layer, both by the express terms of the patent and the extent that the parties agree on relevant matters of claim construction. Formation of Ga regions on the surface of the n-AlGaN layer during growth of that layer also would not be consistent with the sequential construction of the steps in Claims 1 and 2, which requires the composition material to be formed not only on/above that layer, but also after that layer is complete and before the next AlGaN layer begins to form.
b. Claim 9
Because the parties dispute whether Claim 9 should be construed to require the same sequential steps as independent Claim 1 and dependent Claim 2, the basis for finding summary judgment warranted as to Claim 2 does not apply to Claim 9. As such, a more thorough discussion of the evidence related to the presence of a relevant composition material that is one selected from Ga or Al is required.
Inasmuch as the parties have specifically identified this as an issue to be addressed as part of claim construction, and because that construction may have dispositive implications on the issue of infringement, I recommend that construction of that issue be deferred until claim construction has been fully briefed and a Markman hearing has been held.
As an initial matter, I reject Crystal IS' assertion, advanced during oral argument, that Nitride is required to show that Crystal IS' products meet all of the limitations of the relevant claim under consideration in order to survive summary judgment. Nitride has not cross moved for summary judgment regarding infringement, but instead has focused its argument on the specific limitations related to “composition material” and “formed on less than a total area of the first surface” in each of the two asserted claims that was raised by Crystal IS in its motion; these are the only two limitations raised to supports its claim that it is entitled to summary judgment determining that its products do not infringe the ʹ270 Patent. Given this procedural posture, the court's function is limited to determining whether a reasonable jury could find those particular limitations are met in Crystal IS' products. See Yufa v. TSI, Inc., 600 Fed.Appx. 747, 752 (Fed. Cir. 2015) (noting that, “in order to survive a motion for summary judgment after the moving party has presented evidence that the Accused Products do not meet the claim limitations of the [] patent, the non-moving party must go beyond the pleadings and identify specific facts ‘showing that there is a genuine issue for trial'” as to those limitations); see also Novartis Corp. v. Ben Venue Labs., Inc., 271 F.3d 1043, 1046 (Fed. Cir. 2001) (indicating that, when seeking summary judgment for noninfringement, the movant must first show that the evidence fails to establish a material issue of fact essential to the patentee's case, after which the patentee must show that there is a genuine issue as to whether the accused device is encompassed by the patent's claims).
In opposition to Crystal IS' motion, Nitride primarily relies on the evidence provided by its expert, Dr. William Doolittle. Dr. Doolittle opines that, although the recipes for growing Crystal IS' products appear to follow the sequence outlined in the chart, elemental Ga atoms would more likely than not be present within the devices, and particularly on the surface of the wafer, during the growing process as a result of the processes of beta elimination and thermal decomposition. Dkt. No. 67-23, at ¶ 73; Dkt. No. 74-2, at 207:16-208:3.
i. Beta Elimination
Dr. Doolittle described beta elimination as an inherent part of the growth process of AlGaN semiconductors, in which organic methyl- or ethyl-alkyls that are weakly bonded to a metal atom are deposited on the surface of the semiconductor through MOCVD, at which time the heat of the surface causes the bond between the organic materials and the metal atom to break; the elimination of the organic materials leaves an elemental metal atom on the growth surface so that the metal atom “is free to bond to the incoming nitrogen.” Dkt. No. 67-23, at ¶ 76. Dr. Doolittle opines that the requirement to form elemental metals on the surface as an inherent part of growing AlGaN has the “potential for surface accumulation” of those metal atoms, which would result in “metal rich clusters.” Dkt. No. 67-23, at ¶ 77.
Dr. Grandusky has stated that, in his view, the ammonia flow rate in the reactor (which introduces nitrogen into the reactor to bond with the elemental metal atoms that have been deposited through the MOCVD and beta elimination processes) would, by itself, be sufficient to ensure that no elemental Ga would be allowed to accumulate on the surface, since any Ga atoms would quickly bond to form GaN. Dr. Doolittle disagrees, asserting that factors such as pressure, flow ratio, relative synthesis reaction versus decomposition rates, and temperature are better factors for determining whether metal atoms would accumulate - that is, would not be quickly reacted with N to form GaN or AlN, but would remain for longer times on the surface as pure metals. Dkt. No. 67-23, at ¶¶ 77-78. Dr. Doolittle concludes that Dr. Grandusky's statement that ammonia flow would prevent the accumulation of unreacted Ga atoms is therefore insufficient to prove that all metals on the surface would be immediately reacted. Dkt. No. 67-23, at ¶ 78. He further concludes that, because “standard conditions for Crystal's growths impeded the formation of GaN bonds and thus impeded the consumption of surface accumulated gallium,” this suggests that “accumulation of the beta-eliminated . . . Ga on the surface is highly likely[, and] the formation of a composition material consisting of metallic gallium is very likely, and based on the beta-elimination process, unavoidable.” Dkt. No. 67-23, at ¶ 78.
ii. Thermal Decomposition
Turning to the second implicated process, thermal decomposition, Dr. Doolittle states that the recipes for Crystal IS' products indicate that the majority of its products and growth processes are conducted with surface temperatures of at or greater than 1100 degrees Celsius, which is “well above the decomposition temperatures of the base compound GaN,” which he conservatively estimates as being around 1075-1100 degrees Celsius. Dkt. No. 67-23, at ¶ 79. At such temperatures, he continues, GaN in an AlGaN alloy will suffer broken bonds, causing elemental Ga to accumulate on the surface and the N atoms that are now unbonded to evaporate. Dkt. No. 67-23, at ¶ 79. Dr. Doolittle concludes that, based on the temperatures utilized, “Ga-N bonds are very likely to break resulting in Ga metal atoms on the surface of the n-type AlGaN layer.” Dkt. No. 67-23, at ¶ 79. He further concluded that, due to the “random (statistical) nature of this decomposition process,” formation of “randomly spaced clusters or even interconnected clusters” of elemental Ga “could be expected,” and that surface tension forces caused by the accumulation of elemental Ga “would ensure that more Ga would likely accumulate” in the same area, resulting in droplets or even “interconnected rivers” of elemental Ga. Dkt. No. 67-23, at ¶ 81.
iii. APT Data
In addition to his discussion about how beta elimination and thermal decomposition would be likely to create the presence of areas of elemental Ga within Crystal IS' product during the growth process, Dr. Doolittle opined that the APT data submitted by Nitride “demonstrates the formation and presence of a composition material . . . on the n-type AlGaN layer being formed by the accused processes and existing in the accused products on less than a total area of the first surface.” Dkt. No. 67-23, at ¶ 84.
Although the parties dispute whether the APT data is reliable or should be deemed inadmissible, and that therefore any reliance on that data by Dr. Doolittle in forming his opinions outlined in support of Nitride's positions should be rejected because a reasonable expert would not have relied on that data, I find that such evidentiary issues need not be decided to resolve the current motion. As was discussed above, Dr. Doolittle opined that, given the temperatures involved in Crystal IS' formation process as outlined in the recipes and run log data, thermal decomposition would be “very likely” to cause Ga metal atoms to accumulate on the surface of the n-AlGaN layer, it would be expected that random clusters of those atoms would form, and that in turn those clusters of Ga would result in more Ga accumulating in those spots as the next layer grows, through either further thermal decomposition or beta elimination at the growing surface. Dkt. No. 67-23, at ¶ 76-81. This opinion therefore appears to provide a basis for believing that there could be an accumulation of Ga-rich areas within the MQW AlGaN layer at and above the first surface of the n-AlGaN layer that cover less than a total area of the first surface, without having to rely on the APT data.
Although Crystal IS argues that Dr. Doolittle did not account for all of the relevant factors that could impact whether beta elimination or thermal decomposition would occur within the reactor during the growth process - relying almost solely on temperature - and there is admittedly evidence which suggests that Dr. Doolittle's assessment of the temperature at the growth surface might have been incorrect, such questions relate to the weight of Dr. Doolittle's opinion, rather than its admissibility. See Restivo v. Hessemann, 846 F.3d 547, 577 (2d Cir. 2017) (noting that, although “a trial judge should exclude expert testimony if it is speculative or conjectural or based on assumptions that are so unrealistic and contradictory as to suggest bad faith or to be in essence an apples and oranges comparison,” “contentions that the assumptions are unfounded” or that there are “gaps or inconsistencies in the reasoning leading to the expert's opinion . . . go to the weight of the evidence, not to its admissibility") (internal quotation marks omitted). Specifically, at this juncture, Crystal IS has not argued that Dr. Doolittle's explanation of the processes of beta elimination and thermal decomposition based on temperature is an inaccurate portrayal of the underlying science, insufficiently tied to the facts of this case, or that his methodology in arriving at his conclusions is plagued by unreasonable deficiencies or is otherwise unreasonable, even if he did not explicitly consider all of the other factors he identified as being potentially relevant. See United States v. Williams, 506 F.3d 151, 160 (2d Cir. 2007) (indicating that, in order for expert testimony to be admissible, it must be “relevant” and “rest[] on a reliable foundation”); see also Univ. of S. Florida, Bd. Of Trustees v. U.S., 155 Fed.Cl. 639, 642 (Ct. Fed.Cl. 2021) (noting that, if the court's preliminary inquiry into the expert's methodology shows it is not unreasonable, the testimony should be deemed admissible, but “[w]hether the expert's testimony is credible, however, is determined after the evidence is tested at trial”) (citing Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 589-96 (1993); Summit 6, LLC v. Samsung Elecs. Co., LLC, 802 F.3d 1283, 1295 (Fed. Cir. 2015)). As such, these are issues of fact that should not be resolved by the court on a motion for summary judgment.
For instance, although Dr. Doolittle bases his opinions regarding the likelihood of thermal decomposition and beta elimination presumably on the temperature of the surface of the growing semiconductor layers, Dr. Grandusky indicated in his deposition testimony firstly that the temperatures in the recipes are “approximate” and that the recorded temperatures are measured at thermocouplers within the reactor and by pyrometers that measure the surface temperature of the platter holding the wafer, but not of the growing surface itself. Dkt. No. 67-25, at 15:12-23. His deposition testimony also suggests that the temperatures when forming the relevant layers might be lower than those used by Dr. Doolittle, although this is not wholly clear. Dkt. No. 67-25, at 41-47.
I recommend that this finding be without prejudice to renewal of objections to the admissibility of expert testimony by Dr. Doolittle during later stages of this proceeding. This motion for summary judgment has occurred early in the litigation process, with only limited discovery, and it is therefore not apparent how Dr. Doolittle's opinions, or the basis for them, could evolve as the litigation progresses.
iv. Application
The issue that arises with respect to Claim 9 is that, although Dr. Doolittle's expert evidence might be sufficient to create a genuine dispute of material fact as to whether there was elemental Ga present during the formation of the relevant layer(s), he explicitly clarified in his deposition testimony that elemental Ga would not exist within the finished product, but rather that the elemental Ga causing areas where there are high concentrations of Ga during growth would eventually become bonded with N to form GaN in the finished product. Dkt. No. 74-18, at 266:15-24 (testifying that “the gallium is not in the final structure. The results of the gallium being there in the process formed into the - forming gallium rich regions across parts of the area would be in the final structure,” and that the elemental Ga would be “consumed into - in the forming of the nitride”). Indeed, he opines in his declaration that the presence of elemental Ga in a finished semiconductor would cause the semiconductor to not emit light the way it is intended to, and that it would in fact be “impossible to overgrow Ga because Ga remains liquid even at room temperature.” Dkt. No. 67-23, at ¶ 61. He further states that the APT data is an “element by element count” and as such does not actually assess or differentiate whether the “gallium” it records is elemental Ga or GaN. Dkt. No. 74-18, at 258:10-22.
Based on the evidence, whether the term “composition material” that “is one selected from Ga and Al” is construed as meaning only elemental Ga, or as including both Ga and GaN, would determine if Nitride has shown whether there is a genuine dispute of material fact as to whether Crystal IS' products meet the requirements of Claim 9. Specifically, while the record shows an issue of fact as to whether GaN concentrations are present in Crystal IS' products, the presence of elemental Ga in the finished products has not been shown and indeed has been specifically refuted by the testimony of Nitride's own expert. However, because the relevant claim construction dispute has not been thoroughly laid out in the manner that it would be in a typical claim construction proceeding, and since it would almost certainly be dispositive of the issue of non-infringement if that claim is construed in the manner that Crystal IS requests based on the evidence currently before the court, I recommend that Crystal IS' motion for summary judgment as to Claim 9 be denied, without prejudice to renewal after formal claim construction proceedings have been conducted and a claim construction order has been entered. This is especially so because, as was discussed above, there is at least one other disputed claim construction - regarding whether the claim requires a sequential order - raised in the opening claim construction briefs that might also be dispositive on the issue of non-infringement.
IV. SUMMARY AND ORDER
Based upon the parties' oral and written presentations, and the court having carefully considered the pleadings and all relevant evidence, it is hereby respectfully
RECOMMENDED that the parties' agreed construction of the order of the steps recited in the claimed method of Claim 2 as outlined in their joint claim construction statement be ADOPTED; and that the claim term be construed to mean “method Claim 2 requires performance of the steps in the sequence recited in the claim, namely, step (a) is performed, and then step (b) is performed, and then step (c) is performed”; and it is further
RECOMMENDED that Crystal IS' motion for summary judgment (Dkt. No. 41) be GRANTED as to Claim 2 of the ʹ270 Patent, and DENIED as to Claim 9 of the ʹ270 Patent, without prejudice to renewal following claim construction proceedings related to Claim 9; and it is further
RECOMMENDED that the parties be directed to supplement their opening claim construction briefs to include thorough arguments regarding any disputed claim terms that arose in the course of litigating the motion for summary judgment that were not included in their opening claim construction briefs, with the opportunity to respond, all pursuant to a schedule to be set by the court.
Pursuant to 28 U.S.C. § 636(b)(1), the parties have fourteen days within which to file written objections to the foregoing report. Such objections shall be filed with the Clerk of the Court. FAILURE TO OBJECT TO THIS REPORT WITHIN FOURTEEN DAYS WILL PRECLUDE APPELLATE REVIEW. Roldan v. Racette, 984 F.2d 85 (2d Cir. 1993) (citing Small v. Sec'y of Health and Human Servs., 892 F.2d 15 (2d Cir. 1989)); 28 U.S.C. § 636(b)(1); Fed.R.Civ.P. 72.