Continental Circuits LLC v. Intel Corporation et al
Court Docket Sheet

District of Arizona

2:2016-cv-02026 (azd)

ANSWER to {{134}} Answer to Amended Complaint, Counterclaim by Continental Circuits LLC.

Case 2:16-cv-02026-DGC Document 152 Filed 04/17/17 Page 1 of 8 1 AIKEN SCHENK HAWKINS & RICCIARDI P.C. 2390 East Camelback Road, Suite 400 2 Phoenix, Arizona 85016 Telephone: (602) 248-8203 3 Facsimile: (602) 248-8840 E-Mail: docket@ashrlaw.com 4 E-Mail: jas@ashrlaw.com Joseph A. Schenk – 009260 5 Bradley W. Caldwell (pro hac vice) 6 Jason D. Cassady (pro hac vice) J. Austin Curry (pro hac vice) 7 Warren J. McCarty (pro hac vice) Jason S. McManis (pro hac vice) 8 CALDWELL CASSADY CURRY P.C. 2101 Cedar Springs Rd., Suite 1000 9 Dallas, Texas 75201 Telephone: (214) 888-4848 10 Facsimile: (214) 888-4849 Email: bcaldwell@caldwellcc.com 11 Email: jcassady@caldwellcc.com Email: acurry@caldwellcc.com 12 Email: wmccarty@caldwellcc.com Email: jmcmanis@caldwellcc.com 13 Attorneys for Plaintiff Continental Circuits, LLC 14 15 IN THE UNITED STATES DISTRICT COURT 16 FOR THE DISTRICT OF ARIZONA 17 Continental Circuits LLC, CASE NO. CV-16-2026-PHX-DGC 18 Plaintiff, CONTINENTAL CIRCUITS LLC’S 19 v. ANSWER TO INTEL CORPORATION’S COUNTERCLAIMS 20 Intel Corp., Ibiden U.S.A. Corp., Ibiden Co., Ltd., 21 Defendants. 22 23 24 25 26 27 28 29 Case 2:16-cv-02026-DGC Document 152 Filed 04/17/17 Page 2 of 8 1 Continental Circuits LLC ("Continental") files this Answer to Defendant Intel 2 Corp.’s ("Intel") Counterclaims (Dkt. 134) ("Counterclaims") and in support thereof would 3 respectfully show the Court the following: 4 COUNTERCLAIMS 5 PARTIES 6 1. Continental lacks knowledge or information sufficient to form a belief about 7 the truth of the allegations in Paragraph 1, and therefore denies the same. 8 2. On information and belief, admitted. 9 3. Admitted. 10 JURISDICTION AND VENUE 11 4. Continental admits that the Counterclaims purport to set forth claims arising 12 under the patent laws of the United States, Title 35, United States Code, but denies that any 13 action of Continental gives rise to such a claim. 14 5. Continental admits that venue is proper in this district. Continental denies the 15 remaining allegations of Paragraph 5. 16 6. Continental admits that it has sued Intel for infringing the Patents-In-Suit 17 which it owns. Continental lacks knowledge or information sufficient to form a belief 18 about the truth of the remaining allegations in Paragraph 6, and therefore denies the same. 19 BACKGROUND 20 7. Admitted. 21 8. On information and belief, admitted. 22 9. On information and belief, admitted. 23 10. Denied. 24 11. Admitted. 25 12. Admitted. 26 13. Admitted. 27 14. Continental admits that U.S. Patent No. 5,447,996 exists and the truth of what 28 that document states can best be ascertained from that document. 29 Case 2:16-cv-02026-DGC Document 152 Filed 04/17/17 Page 3 of 8 1 15. On information and belief, admitted. 2 16. To the extent the allegations in Paragraph 16 refer to the knowledge of the 3 named inventors of the Patents-in-Suit, admitted. Otherwise, Continental lacks knowledge 4 or information sufficient to form a belief about the truth of the allegations in Paragraph 16, 5 and therefore denies.. 6 17. Continental admits that U.S. Patent No. 5,998,237 exists and the truth of what 7 that document states can best be ascertained from that document. 8 18. On information and belief, admitted. 9 COUNT I – NONINFRINGEMENT OF THE'582 PATENT 10 19. Continental restates Paragraphs 1 through 18 as though fully set forth herein. 11 20. Continental admits that it owns the ʼ582 patent which Intel infringes. 12 Continental denies the remaining allegations of Paragraph 20. 13 21. Denied. 14 22. Continental admits that a justiciable controversy exists between Continental 15 and Intel. Continental denies the remaining allegations of Paragraph 22. 16 23. Denied. 17 24. Denied. 18 COUNT II – INVALIDTY OF THE'582 PATENT 19 25. Continental restates Paragraphs 1 through 24 as though fully set forth herein. 20 26. Continental lacks knowledge or information sufficient to form a belief about 21 the truth of the allegations in Paragraph 26, and therefore denies the same. 22 27. Denied. 23 28. Denied. 24 29. Denied. 25 30. Denied. 26 31. Denied. 27 32. Denied. 28 33. Denied. 29 Case 2:16-cv-02026-DGC Document 152 Filed 04/17/17 Page 4 of 8 1 34. Denied. 2 35. Denied. 3 36. Continental admits that the ʼ582 patent is valid and enforceable. Continental 4 denies the remaining allegations of Paragraph 36. 5 37. Continental admits that a justiciable controversy exists between Continental 6 and Intel. Continental denies the remaining allegations of Paragraph 37. 7 38. Denied. 8 COUNT III – NONINFRINGEMENT OF THE'560 PATENT 9 39. Continental restates Paragraphs 1 through 38 as though fully set forth herein. 10 40. Continental admits that it owns the ʼ560 patent which Intel infringes. 11 Continental denies the remaining allegations of Paragraph 40. 12 41. Denied. 13 42. Continental admits that a justiciable controversy exists between Continental 14 and Intel. Continental denies the remaining allegations of Paragraph 42. 15 43. Denied. 16 44. Denied. 17 COUNT IV – INVALIDTY OF THE'560 PATENT 18 45. Continental restates Paragraphs 1 through 44 as though fully set forth herein. 19 46. Continental lacks knowledge or information sufficient to form a belief about 20 the truth of the allegations in Paragraph 46, and therefore denies the same. 21 47. Denied. 22 48. Denied. 23 49. Denied. 24 50. Denied. 25 51. Denied. 26 52. Denied. 27 53. Denied. 28 54. Denied. 29 Case 2:16-cv-02026-DGC Document 152 Filed 04/17/17 Page 5 of 8 1 55. Denied. 2 56. Denied. 3 57. Denied. 4 58. Continental admits that the ʼ560 patent is valid and enforceable. Continental 5 denies the remaining allegations of Paragraph 58. 6 59. Continental admits that a justiciable controversy exists between Continental 7 and Intel. Continental denies the remaining allegations of Paragraph 59. 8 60. Denied. 9 COUNT V – NONINFRINGEMENT OF THE'105 PATENT 10 61. Continental restates Paragraphs 1 through 60 as though fully set forth herein. 11 62. Continental admits that it owns the ʼ105 patent which Intel infringes. 12 Continental denies the remaining allegations of Paragraph 62. 13 63. Denied. 14 64. Continental admits that a justiciable controversy exists between Continental 15 and Intel. Continental denies the remaining allegations of Paragraph 64. 16 65. Denied. 17 66. Denied. 18 COUNT VI – INVALIDTY OF THE'105 PATENT 19 67. Continental restates Paragraphs 1 through 66 as though fully set forth herein. 20 68. Continental lacks knowledge or information sufficient to form a belief about 21 the truth of the allegations in Paragraph 68, and therefore denies the same. 22 69. Denied. 23 70. Denied. 24 71. Denied. 25 72. Denied. 26 73. Denied. 27 74. Denied. 28 75. Denied. 29 Case 2:16-cv-02026-DGC Document 152 Filed 04/17/17 Page 6 of 8 1 76. Denied. 2 77. Denied. 3 78. Denied. 4 79. Denied. 5 80. Continental admits that the ʼ105 patent is valid and enforceable. Continental 6 denies the remaining allegations of Paragraph 80. 7 81. Continental admits that a justiciable controversy exists between Continental 8 and Intel. Continental denies the remaining allegations of Paragraph 81. 9 82. Denied. 10 COUNT VII – NONINFRINGEMENT OF THE'912 PATENT 11 83. Continental restates Paragraphs 1 through 82 as though fully set forth herein. 12 84. Continental admits that it owns the ʼ912 patent which Intel infringes. 13 Continental denies the remaining allegations of Paragraph 84. 14 85. Denied. 15 86. Continental admits that a justiciable controversy exists between Continental 16 and Intel. Continental denies the remaining allegations of Paragraph 86. 17 87. Denied. 18 88. Denied. 19 COUNT VIII – INVALIDTY OF THE'912 PATENT 20 89. Continental restates Paragraphs 1 through 88 as though fully set forth herein. 21 90. Continental lacks knowledge or information sufficient to form a belief about 22 the truth of the allegations in Paragraph 90, and therefore denies the same. 23 91. Denied. 24 92. Denied. 25 93. Denied. 26 94. Denied. 27 95. Denied. 28 96. Denied. 29 Case 2:16-cv-02026-DGC Document 152 Filed 04/17/17 Page 7 of 8 1 97. Denied. 2 98. Denied. 3 99. Denied. 4 100. Denied. 5 101. Denied. 6 102. Denied. 7 103. Denied. 8 104. Continental admits that the ʼ912 patent is valid and enforceable. Continental 9 denies the remaining allegations of Paragraph 104. 10 105. Continental admits that a justiciable controversy exists between Continental 11 and Intel. Continental denies the remaining allegations of Paragraph 105. 12 106. Denied. 13 DEMAND FOR JURY TRIAL 14 Continental hereby demands a jury for all issues so triable. 15 DENIAL OF ANY REMAINING ALLEGATIONS 16 Except as specifically admitted herein, Continental denies any remaining allegations 17 in Intel’s Counterclaims that are directed at Continental. 18 RESERVATION OF AFFIRMATIVE DEFENSES 19 107. Continental hereby reserves the right to supplement additional affirmative 20 defenses as discovery proceeds in this case. 21 PRAYER FOR RELIEF 22 Continental denies all allegations contained in the section entitled "Prayer for 23 Relief," and further denies that any relief should be granted to Intel whatsoever, either as 24 requested in its Counterclaims or otherwise. WHEREFORE, Continental prays that this 25 Court: 26 1. Dismiss each of Intel’s Counterclaims; and 27 2. Deny Intel any damages sought by way of its Counterclaims; and 28 29 Case 2:16-cv-02026-DGC Document 152 Filed 04/17/17 Page 8 of 8 1 3. Order such other and further legal and equitable relief as the Court may deem 2 appropriate. 3 Dated this 17th day of April 2017. 4 5 6 CALDWELL CASSADY CURRY P.C 7 8 By/s/Bradley W. Caldwell (pro hac vice) Bradley W. Caldwell (pro hac vice) 9 Jason D. Cassady (pro hac vice) J. Austin Curry (pro hac vice) 10 Warren J. McCarty (pro hac vice) 11 Jason S. McManis (pro hac vice) 2101 Cedar Springs Rd., Suite 1000 12 Dallas, Texas 75201 13 AIKEN SCHENK HAWKINS & RICCIARDI P.C. 14 Joseph A. Schenk 2390 East Camelback Road, Suite 400 15 Phoenix, Arizona 85016 16 17 ATTORNEYS FOR PLAINTIFF 18 CONTINENTAL CIRCUITS, LLC 19 CERTIFICATE OF SERVICE 20 The undersigned certifies that all counsel of record are being served with a copy of 21 the foregoing document via the Court’s electronic filing system on this 17th day of April 22 2017. 23/s/Bradley W. Caldwell (pro hac vice) 24 Bradley W. Caldwell 25 26 27 28 29

ANSWER to {{135}} Answer to Amended Complaint, Counterclaim by Continental Circuits LLC.

Case 2:16-cv-02026-DGC Document 153 Filed 04/17/17 Page 1 of 8 1 AIKEN SCHENK HAWKINS & RICCIARDI P.C. 2390 East Camelback Road, Suite 400 2 Phoenix, Arizona 85016 Telephone: (602) 248-8203 3 Facsimile: (602) 248-8840 E-Mail: docket@ashrlaw.com 4 E-Mail: jas@ashrlaw.com Joseph A. Schenk – 009260 5 Bradley W. Caldwell (pro hac vice) 6 Jason D. Cassady (pro hac vice) J. Austin Curry (pro hac vice) 7 Warren J. McCarty (pro hac vice) Jason S. McManis (pro hac vice) 8 CALDWELL CASSADY CURRY P.C. 2101 Cedar Springs Rd., Suite 1000 9 Dallas, Texas 75201 Telephone: (214) 888-4848 10 Facsimile: (214) 888-4849 Email: bcaldwell@caldwellcc.com 11 Email: jcassady@caldwellcc.com Email: acurry@caldwellcc.com 12 Email: wmccarty@caldwellcc.com Email: jmcmanis@caldwellcc.com 13 Attorneys for Plaintiff Continental Circuits, LLC 14 15 IN THE UNITED STATES DISTRICT COURT 16 FOR THE DISTRICT OF ARIZONA 17 Continental Circuits LLC, CASE NO. CV-16-2026-PHX-DGC 18 Plaintiff, CONTINENTAL CIRCUITS LLC’S 19 v. ANSWER TO IBIDEN U.S.A. CORPORATION AND IBIDEN CO., 20 Intel Corp., Ibiden U.S.A. LTD.’S COUNTERCLAIMS Corp., Ibiden Co., Ltd., 21 Defendants. 22 23 24 25 26 27 28 29 Case 2:16-cv-02026-DGC Document 153 Filed 04/17/17 Page 2 of 8 1 Continental Circuits LLC ("Continental") files this Answer to Defendants Ibiden 2 U.S.A. Corporation and Ibiden Co., Ltd.’s ("Ibiden") Counterclaims (Dkt. 135) 3 ("Counterclaims") and in support thereof would respectfully show the Court the following: 4 COUNTERCLAIMS 5 PARTIES 6 1. Continental lacks knowledge or information sufficient to form a belief about 7 the truth of the allegations in Paragraph 1, and therefore denies the same. 8 2. On information and belief, admitted. 9 3. On information and belief, admitted. 10 4. Admitted. 11 JURISDICTION AND VENUE 12 5. Continental admits that the Counterclaims purport to set forth claims arising 13 under the patent laws of the United States, Title 35, United States Code, but denies that any 14 action of Continental gives rise to such a claim. 15 6. Continental admits that venue is proper in this district. Continental denies the 16 remaining allegations of Paragraph 6. 17 7. Continental admits that it has sued Ibiden for infringing the Patents-In-Suit 18 which it owns. Continental lacks knowledge or information sufficient to form a belief 19 about the truth of the remaining allegations in Paragraph 7, and therefore denies the same. 20 BACKGROUND 21 8. Admitted. 22 9. On information and belief, admitted. 23 10. On information and belief, admitted. 24 11. Denied. 25 12. Admitted. 26 13. Admitted. 27 14. Admitted. 28 29 Case 2:16-cv-02026-DGC Document 153 Filed 04/17/17 Page 3 of 8 1 15. Continental admits that U.S. Patent No. 5,447,996 exists and the truth of what 2 that document states can best be ascertained from that document. 3 16. On information and belief, admitted. 4 17. To the extent the allegations in Paragraph 17 refer to the knowledge of the 5 named inventors of the Patents-in-Suit, admitted. Otherwise, Continental lacks knowledge 6 or information sufficient to form a belief about the truth of the allegations in Paragraph 17, 7 and therefore denies. 8 18. Continental admits that U.S. Patent No. 5,998,237 exists and the truth of what 9 that document states can best be ascertained from that document. 10 19. On information and belief, admitted. 11 COUNT I – NONINFRINGEMENT OF THE'582 PATENT 12 20. Continental restates Paragraphs 1 through 19 as though fully set forth herein. 13 21. Continental admits that it owns the ʼ582 patent which Intel infringes. 14 Continental denies the remaining allegations of Paragraph 21. 15 22. Denied. 16 23. Continental admits that a justiciable controversy exists between Continental 17 and Intel. Continental denies the remaining allegations of Paragraph 23. 18 24. Denied. 19 25. Denied. 20 COUNT II – INVALIDTY OF THE'582 PATENT 21 26. Continental restates Paragraphs 1 through 25 as though fully set forth herein. 22 27. Continental lacks knowledge or information sufficient to form a belief about 23 the truth of the allegations in Paragraph 27, and therefore denies the same. 24 28. Denied. 25 29. Denied. 26 30. Denied. 27 31. Denied. 28 32. Denied. 29 Case 2:16-cv-02026-DGC Document 153 Filed 04/17/17 Page 4 of 8 1 33. Denied. 2 34. Denied. 3 35. Denied. 4 36. Denied. 5 37. Continental admits that the ʼ582 patent is valid and enforceable. Continental 6 denies the remaining allegations of Paragraph 37. 7 38. Continental admits that a justiciable controversy exists between Continental 8 and Intel. Continental denies the remaining allegations of Paragraph 38. 9 39. Denied. 10 COUNT III – NONINFRINGEMENT OF THE'560 PATENT 11 40. Continental restates Paragraphs 1 through 39 as though fully set forth herein. 12 41. Continental admits that it owns the ʼ560 patent which Intel infringes. 13 Continental denies the remaining allegations of Paragraph 41. 14 42. Denied. 15 43. Continental admits that a justiciable controversy exists between Continental 16 and Intel. Continental denies the remaining allegations of Paragraph 43. 17 44. Denied. 18 45. Denied. 19 COUNT IV – INVALIDTY OF THE'560 PATENT 20 46. Continental restates Paragraphs 1 through 45 as though fully set forth herein. 21 47. Continental lacks knowledge or information sufficient to form a belief about 22 the truth of the allegations in Paragraph 47, and therefore denies the same. 23 48. Denied. 24 49. Denied. 25 50. Denied. 26 51. Denied. 27 52. Denied. 28 53. Denied. 29 Case 2:16-cv-02026-DGC Document 153 Filed 04/17/17 Page 5 of 8 1 54. Denied. 2 55. Denied. 3 56. Denied. 4 57. Denied. 5 58. Denied. 6 59. Continental admits that the ʼ560 patent is valid and enforceable. Continental 7 denies the remaining allegations of Paragraph 59. 8 60. Continental admits that a justiciable controversy exists between Continental 9 and Intel. Continental denies the remaining allegations of Paragraph 60. 10 61. Denied. 11 COUNT V – NONINFRINGEMENT OF THE'105 PATENT 12 62. Continental restates Paragraphs 1 through 61 as though fully set forth herein. 13 63. Continental admits that it owns the ʼ105 patent which Intel infringes. 14 Continental denies the remaining allegations of Paragraph 63. 15 64. Denied. 16 65. Continental admits that a justiciable controversy exists between Continental 17 and Intel. Continental denies the remaining allegations of Paragraph 65. 18 66. Denied. 19 67. Denied. 20 COUNT VI – INVALIDTY OF THE'105 PATENT 21 68. Continental restates Paragraphs 1 through 67 as though fully set forth herein. 22 69. Continental lacks knowledge or information sufficient to form a belief about 23 the truth of the allegations in Paragraph 69, and therefore denies the same. 24 70. Denied. 25 71. Denied. 26 72. Denied. 27 73. Denied. 28 74. Denied. 29 Case 2:16-cv-02026-DGC Document 153 Filed 04/17/17 Page 6 of 8 1 75. Denied. 2 76. Denied. 3 77. Denied. 4 78. Denied. 5 79. Denied. 6 80. Denied. 7 81. Continental admits that the ʼ105 patent is valid and enforceable. Continental 8 denies the remaining allegations of Paragraph 81. 9 82. Continental admits that a justiciable controversy exists between Continental 10 and Intel. Continental denies the remaining allegations of Paragraph 82. 11 83. Denied. 12 COUNT VII – NONINFRINGEMENT OF THE'912 PATENT 13 84. Continental restates Paragraphs 1 through 83 as though fully set forth herein. 14 85. Continental admits that it owns the ʼ912 patent which Intel infringes. 15 Continental denies the remaining allegations of Paragraph 85. 16 86. Denied. 17 87. Continental admits that a justiciable controversy exists between Continental 18 and Intel. Continental denies the remaining allegations of Paragraph 87. 19 88. Denied. 20 89. Denied. 21 COUNT VIII – INVALIDTY OF THE'912 PATENT 22 90. Continental restates Paragraphs 1 through 89 as though fully set forth herein. 23 91. Continental lacks knowledge or information sufficient to form a belief about 24 the truth of the allegations in Paragraph 91, and therefore denies the same. 25 92. Denied. 26 93. Denied. 27 94. Denied. 28 95. Denied. 29 Case 2:16-cv-02026-DGC Document 153 Filed 04/17/17 Page 7 of 8 1 96. Denied. 2 97. Denied. 3 98. Denied. 4 99. Denied. 5 100. Denied. 6 101. Denied. 7 102. Denied. 8 103. Denied. 9 104. Denied. 10 105. Denied. 11 106. Continental admits that the ʼ912 patent is valid and enforceable. Continental 12 denies the remaining allegations of Paragraph 106. 13 107. Continental admits that a justiciable controversy exists between Continental 14 and Intel. Continental denies the remaining allegations of Paragraph 107. 15 108. Denied. 16 DEMAND FOR JURY TRIAL 17 Continental hereby demands a jury for all issues so triable. 18 DENIAL OF ANY REMAINING ALLEGATIONS 19 Except as specifically admitted herein, Continental denies any remaining allegations 20 in Ibiden’s Counterclaims that are directed at Continental. 21 RESERVATION OF AFFIRMATIVE DEFENSES 22 109. Continental hereby reserves the right to supplement additional affirmative 23 defenses as discovery proceeds in this case. 24 PRAYER FOR RELIEF 25 Continental denies all allegations contained in the section entitled "Prayer for 26 Relief," and further denies that any relief should be granted to Ibiden whatsoever, either as 27 requested in its Counterclaims or otherwise. WHEREFORE, Continental prays that this 28 Court: 29 Case 2:16-cv-02026-DGC Document 153 Filed 04/17/17 Page 8 of 8 1 1. Dismiss each of Ibiden’s Counterclaims; and 2 2. Deny Ibiden any damages sought by way of its Counterclaims; and 3 3. Order such other and further legal and equitable relief as the Court may deem 4 appropriate. 5 Dated this 17th day of April 2017. 6 7 8 CALDWELL CASSADY CURRY P.C 9 10 By/s/Bradley W. Caldwell (pro hac vice) Bradley W. Caldwell (pro hac vice) 11 Jason D. Cassady (pro hac vice) J. Austin Curry (pro hac vice) 12 Warren J. McCarty (pro hac vice) 13 Jason S. McManis (pro hac vice) 2101 Cedar Springs Rd., Suite 1000 14 Dallas, Texas 75201 15 AIKEN SCHENK HAWKINS & RICCIARDI P.C. 16 Joseph A. Schenk 2390 East Camelback Road, Suite 400 17 Phoenix, Arizona 85016 18 19 ATTORNEYS FOR PLAINTIFF 20 CONTINENTAL CIRCUITS, LLC 21 CERTIFICATE OF SERVICE 22 The undersigned certifies that all counsel of record are being served with a copy of 23 the foregoing document via the Court’s electronic filing system on this 17th day of April 24 2017. 25/s/Bradley W. Caldwell (pro hac vice) 26 Bradley W. Caldwell 27 28 29

REPLY to Response to Motion re: {{142}} MOTION to Dismiss for Failure to State a Claim and Memorandum of Points and Authorities Thereof (Redacted Version) filed by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.

Case 2:16-cv-02026-DGC Document 155 Filed 04/19/17 Page 1 of 13 1 Chad S. Campbell (State Bar No. 012080) CSCampbell@,perkinscoie.com 2 PERKINS COIE LLP 2901 N. Central Avenue 3 Suite 2000 Phoenix, AZ 85012 4 Tel: (602) 351-8000 I Fax: (602) 648-7000 5 William F. Lee (admitted pro hac vice) William.Lee@wilmerhale.com 6 Joseph J. Mueller (admitted pro hac vice) Josep h.Mueller@,wilmerhale.com 7 WILMER CUTLER PICKERING HALE ANDDORRLLP 8 60 State Street Boston, MA 02109 9 Tel: (617) 526-6000 I Fax: (617) 526-5000 10 Nina S. Tallon (admitted pro hac vice) Nina.Tallon@wilmerhale.com 11 WILMER CUTLER PICKERING HALE ANDDORRLLP 12 1875 Pennsylvania Avenue NW Washington, DC 20006 13 Tel: (202) 663-6000 I Fax: (202) 663-6363 14 Attorneys for Defendants Intel Corporation, Ibiden US.A. Corporation, and Ibiden Co., Ltd. 15 16 IN THE UNITED STATES DISTRICT COURT 17 FOR THE DISTRICT OF ARIZONA 18 19 Continental Circuits LLC, Case No. CV-16-2026-PHX-DGC 20 Plaintiff, DEFENDANTS' REPLY IN SUPPORT 21 v. OF THEIR PARTIAL MOTION TO DISMISS PLAINTIFF CONTINENTAL 22 Intel Corporation; CIRCUITS LLC'S SECOND Ibiden U.S.A. Corporation; and AMENDED COMPLAINT 23 Ibiden Co., Ltd., FILED UNDER SEAL 24 Defendants. (REDACTED VERSION) (Oral Argument Requested) 25 26 27 28 Case 2:16-cv-02026-DGC Document 155 Filed 04/19/17 Page 2 of 13 1 TABLE OF CONTENTS 2 I. The Second Amended Complaint Fails to Allege Facts Sufficient to Support a 3 Claim Against Ibiden Products Sold to Customers Other Than Intel............................ 1 4 II. The Second Amended Complaint Fails to Allege Facts Sufficient to Support a Claim That Intel Induced Infringement.......................................................................... 3 5 III. The Second Amended Complaint Fails to Allege Facts Sufficient to Support a 6 Claim That Intel or Ibiden Willfully Infringe................................................................. 5 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28-1-Case 2:16-cv-02026-DGC Document 155 Filed 04/19/17 Page 3 of 13 1 TABLE OF AUTHORITIES 2 Page(s) 3 CASES 4 Addiction & Detoxification Inst. L.L. C. v. Carpenter, 620 F. App'x 934 (Fed. Cir. 2015)................................................................................. 2 5 6 Air Vent, Inc. v. Owens Corning Corp., 2011 WL 2601043 (W.D. Pa. June 30, 2011)................................................................ 3 7 Bobcar Media, LLC v. Aardvark Event Logistics, Inc., 8 2017 WL 74729 (S.D.N.Y. Jan. 4, 2017)....................................................................... 6 9 CG Technology Development, LLC v. FanDuel, Inc., 10 2017 WL 58572 (D. Nev. Jan. 4, 2017)......................................................................... 5 11 Chestnut Hill Sound Inc. v. Apple Inc., No. 1:15-cv-00261, Doc. 53 (D. Del. Feb. 29, 2016)..................................................... 3 12 13 Cooper Lighting, LLC v. Cordelia Lighting, Inc., No. 1:16-cv-02669 (N.D. Ga. Apr. 6, 2017).................................................................. 7 14 Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 15 2016 WL 4596118 (E.D. Tex. Sept. 3, 2016)................................................................. 6 16 E.I. Du Pont de Nemours & Co. v. Heraeus Holding GmbH, 17 2012 WL 4511258, at *7-8 (D. Del. Sept. 28, 2012).................................................... 5 18 Finjan, Inc. v. ESET, LLC, 2017 WL 1063475 (S.D. Cal. Mar. 21, 2017)................................................................ 6 19 20 Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S. Ct. 1923 (2016)................................................................................................ 5, 7 21 Huawei Technologies Co. v. T-Mobile US, Inc., 22 2017 WL 1129951 (E.D. Tex. Feb. 21, 2017)................................................................ 6 23 Innovention Toys, LLC v. MGA Entertainment, Inc., 24 667 F. App'x 992 (Fed. Cir. 2016)................................................................................. 6 25 Intellectual Ventures I LLC v. Bank ofAmerica, Corp., 2014 WL 868713 (W.D.N.C. Mar. 5, 2014).................................................................. 5 26 27 Jenkins v. LogicMark, LLC, 2017 WL 376154 (E.D. Va. Jan. 25, 2017).................................................................... 5 28-11-Case 2:16-cv-02026-DGC Document 155 Filed 04/19/17 Page 4 of 13 1 MONEC Holding AG v. Motorola Mobility, Inc., 897 F. Supp. 2d 225 (D. Del. 2012)........................................................................... 3, 4 2 3 Panoptis Patent Management v. Blackberry Corp., 2017 WL 780885 (E.D. Tex. Feb. 10, 2017).................................................................. 6 4 Polara Engineering, Inc. v. Campbell Co., 5 2017 WL 754609 (C.D. Cal. Feb. 27, 2017).................................................................. 7 6 Power Integrations, Inc. v. Fairchild Semiconductor International, Inc., 7 2017 WL 130236 (N.D. Cal. Jan. 13, 2017)................................................................... 6 8 Princeton Digital Image Corp. v. Ubisoft Entertainment SA, 2016 WL 6594076 (D. Del. Nov. 4, 2016)................................................................. 5, 7 9 10 Proxyconn Inc. v. Microsoft Corp., 2012 WL 1835680 (C.D. Cal. May 16, 2012)................................................................4 11 Simplivity Corp. v. Springpath, Inc., 12 2016 WL 5388951 (D. Mass. July 15, 2016)................................................................. 7 13 Tomita Technologies USA, LLC v. Nintendo Co., 14 2012 WL 2524770 (S.D.N.Y. June 26, 2012)................................................................ 3 15 Tomita Technologies USA, LLC v. Nintendo Co., l l-cv-4256 (JSR), Doc. 63 (S.D.N.Y. Feb. 21, 2012)................................................... 3 16 17 Western Ge co L.L. C. v. JON Geophysical Corp., 837 F.3d 1358 (Fed. Cir. 2016)...................................................................................... 6 18 Xpoint Technologies, Inc. v. Microsoft Corp., 19 730 F. Supp. 2d 349 (D. Del. 2010)...............................................................................4 20 STATUTES, RULES, AND REGULATIONS 21 FED. R. Crv. P. 8........................................................................................................................ 2 22 23 24 25 26 27 28-111-Case 2:16-cv-02026-DGC Document 155 Filed 04/19/17 Page 5 of 13 1 Defendants' motion demonstrated that the new allegations in the Second Amended 2 Complaint failed to cure the fatal flaws in certain previously dismissed claims. Continental 3 Circuits does not squarely address these problems. Instead, Continental Circuits blurs the 4 issues by drawing misplaced analogies to cases from unrelated contexts, incorrectly arguing 5 that allegations of egregious conduct are not necessary to plead a claim for willful 6 infringement after Halo, and advocating policy arguments that cannot displace precedent. 7 In the end, the only relevant issues are whether the claims at issue (1) set forth a 8 cognizable legal theory and (2) allege facts sufficient to support the theory. They do not, and 9 Defendants respectfully request that the challenged claims in the Second Amended 1O Complaint now be dismissed with prejudice. 11 I. The Second Amended Complaint Fails to Allege Facts Sufficient to Support a Claim Against Ibiden Products Sold to Customers Other Than Intel 12 13 In its Dismissal Order, the Court made clear that Continental Circuits would not be 14 allowed to accuse products based on a "representative" theory without at least "supply[ing] 15 enough facts to make plausible the allegations that the images of other product lines 'are 16 representative' of the [unidentified product lines] and that there is no 'material difference' 17 between them." 1 There is no dispute that the Second Amended Complaint does not contain 18 any such information about Ibiden products supplied to customers other than Intel. 19 Yet, Continental Circuits seeks to accuse unidentified products "if'2 they are "not 20 more than colorably different" than the accused Intel products. The Second Amended 21 Complaint provides no factual allegations to support the existence of such products and fails 22 to establish a plausible representative product theory. There are no images of substrates of 23 non-Intel products, nor any allegations of common materials, specifications, or parameters as 24 25 1 26 Doc. 112 at 10 (dismissing claims against Itanium processors, chipsets, and wireless network adaptors because a naked allegation that such products are "representative of the 27 cross-sections of a substrate layer within each of the Accused Instrumentalities," was "conclusory" as it "provide[s] no facts to connect the six product lines for which cross-28 sections have been provided to the three product lines for which they have not"). 2 Notably, Continental Circuits concedes that it has no idea whether such products even exist.-1-Case 2:16-cv-02026-DGC Document 155 Filed 04/19/17 Page 6 of 13 1 between Ibiden products supplied to Intel and those supplied to other customers. 3 2 3 4 5 6 7 8 9 10 11 Addiction & Detoxification Inst. L.L.C. v. Carpenter, 620 F. App'x 934, 937 (Fed. Cir. 2015) 12 ("The bare allegation that Defendants make, use, sell, and offer for sale undefined 'activities, 13 methods, and procedures' provides no detail whatsoever that would put Defendants on notice 14 as to what activity, method, or procedure is alleged to infringe.... It is not enough to say 15 'you infringe my patent."'). 16 Continental Circuits' other arguments do not excuse the absence of adequate fact 17 allegations. The "not more than colorably different" injunction standard is irrelevant to 18 whether Continental Circuits has pled facts sufficient to give rise to an inference that 19 unidentified products infringe. That standard applies after an earlier adjudication of 20 infringement. It is not a test for which products can be adjudicated in the first place. 21 Nor is there anything unfair about holding Continental Circuits to the pleading 22 standards of Rule 8. Despite the passage of almost a year since the filing of this case and 23 access to Ibiden's highly confidential technical documents, Continental Circuits still has not 24 come forward with any facts supporting its claim accusing non-Intel products. Those 25 products should not be part of this case. 26 27 28-2-Case 2:16-cv-02026-DGC Document 155 Filed 04/19/17 Page 7 of 13 1 II. The Second Amended Complaint Fails to Allege Facts Sufficient to Support a Claim That Intel Induced Infringement 2 3 Continental Circuits' amended inducement claim against Intel suffers from the same 4 fatal flaw as the previously dismissed claim: it presents no factual allegations to support a 5 reasonable inference that Intel knew about the asserted patents-or even knew that a product 6 developed by the original assignee was patented-before service of the complaint. 7 Continental Circuits argues that its new allegations are sufficient "circumstantial 8 evidence" that Intel had pre-suit knowledge of the asserted patents. But the law requires a 9 nexus between alleged circumstances proposed as evidence of pre-suit knowledge and the 10 asserted patents or technology known to be patented. MONEC Holding AG v. Motorola 11 Mobility, Inc., 897 F. Supp. 2d 225, 233 (D. Del. 2012) (granting motion to dismiss 12 inducement and willfulness claims: "Assuming that MONEC has sufficiently pled 13 Defendants' actual knowledge of the original '678 patent, MONEC asks the court to equate 14 such knowledge with actual knowledge of the [asserted] reexamined '678 patent, without 15 adequately pleading their connection" (emphasis added)); Air Vent, Inc. v. Owens Corning 16 Corp., 2011 WL 2601043, at *4 (W.D. Pa. June 30, 2011) (granting motion to dismiss 17 inducement claim: "As to knowledge of the '574 Patent, Air Vent avers that 'by reason of 18 Defendant's business relationship with Plaintiff, Defendant knew or had reason to know of 19 the '574 Patent. However, the Complaint does not aver that any of Plaintiff's products 20 were marked with the '574 Patent or that it provided Owens Corning with notice of the 21 '574 Patent or the alleged infringement of this patent." (emphasis added)). 4 22 The new alleged circumstances in the Second Amended Complaint lack the required 23 nexus to the asserted patents or technology known to be patented. The Second Amended 24 4 Two of the cases Continental Circuits cites further illustrate the point. In Chestnut Hill 25 Sound Inc. v. Apple Inc., No. 1:15-cv-00261, Doc. 53 (D. Del. Feb. 29, 2016), the patentees 26 alleged they provided presentation materials and a prototype marked ''patent pending" to the party they later sued for infringement. Doc. 149-4 (Ex. C) iii! 14, 17. In Tomita 27 Technologies USA, LLC v. Nintendo Co., 2012 WL 2524770 (S.D.N.Y. June 26, 2012), the inventor alleged he presented his technology and informed the party he later sued that a 28 patent on his technology was pending. Id. at* 10; Tomita Techs. USA, LLC v. Nintendo Co., 11-cv-4256 (JSR), Doc. 63 iii! 8-11 (S.D.N.Y. Feb. 21, 2012).-3-Case 2:16-cv-02026-DGC Document 155 Filed 04/19/17 Page 8 of 13 1 Complaint alleges that Intel knew of a "Photolink" product, but there are no allegations that 2 anyone at Intel knew that Photolink allegedly "came to embody" any "patented inventions." 3 Moreover, the new pleading includes no factual allegations suggesting that Photolink did, in 4 fact, embody any "patented inventions" in the relevant time period-just that it "came to 5 embody" patented inventions at some unspecified date. Nor is there any allegation that the 6 2005 letter to Intel connected any patent or continuation application to Photolink. There is 7 thus no nexus between the new alleged circumstances and the asserted patents or technology 8 known to be patented, and the Court has already rejected the argument that Intel's 9 "sophistication" bridges the gap. 5 1O Continental Circuits argues in the alternative that the Second Amended Complaint 11 supports a theory of willful blindness. As this Court and others have recognized, a 12 cognizable theory of willful blindness requires factual allegations that Intel "deliberately 13 shield[ed itself] from clear evidence of critical facts that are strongly suggested by the 14 circumstances." 6 Doc. 112 at 17, n.13; see also MONEC, 897 F. Supp. 2d at 234. None of 15 the allegations in the Second Amended Complaint remotely supports that inference. 16 Finally, Continental Circuits argues that it should at least be allowed to pursue a claim 17 for post-filing inducement based on the filing of the complaint. Courts in this Circuit and 18 across the country have rejected attempts to bootstrap knowledge of the asserted patents 19 based on the filing of the complaint into claims for inducement. 7 Moreover, claims for 20 5 21 Continental Circuits argues that lbiden's alleged pre-suit knowledge of the asserted patents should be imputed to Intel because of lbiden's supplier relationship with Intel, but there is no 22 allegation that Ibiden ever told Intel about the patents and thus no reasonable basis to impute lbiden's alleged knowledge to Intel just because Ibiden supplied substrates to Intel. 23 6 Continental Circuits argues for a "likely knew" standard for willful blindness, but cites no 24 cases recognizing "likely knew" as a cognizable legal theory of willful blindness; to the contrary, if deliberate indifference to a known risk of infringement is not enough for willful 25 blindness, Doc. 112 at 17, n.13, it is hard to imagine that allegations that Intel "likely knew" 26 about the patents are sufficient. 7 See Xpoint Techs., Inc. v. Microsoft Corp., 730 F. Supp. 2d 349, 357 (D. Del. 2010) 27 ("[K]nowledge after filing of the present action is not sufficient for pleading the requisite knowledge for indirect infringement."); Proxyconn Inc. v. Microsoft Corp., 2012 WL 28 1835680, at *6-7 (C.D. Cal. May 16, 2012) (dismissing induced infringement claims with prejudice and quoting Xpoint) (citing additional cases).-4-Case 2:16-cv-02026-DGC Document 155 Filed 04/19/17 Page 9 of 13 1 inducement require allegations of specific intent to cause infringement, and the Second 2 Amended Complaint fails to allege any facts that support a reasonable inference Intel 3 specifically intended to cause infringement of the asserted patents. Intellectual Ventures I 4 LLC v. Bank ofAm., Corp., 2014 WL 868713, at *2 (W.D.N.C. Mar. 5, 2014) (granting 5 motion to dismiss because Plaintiff failed to plead "facts that demonstrate that Defendants 6 specifically intended for their customers to infringe the asserted patent."); E.J. Du Pont de 7 Nemours & Co. v. Heraeus Holding GmbH, 2012 WL 4511258, at *7-8 (D. Del. Sept. 28, 8 2012), report and recommendation adopted, No. 11-cv-773 (SLR), Doc. 29 (D. Del. Oct. 23, 9 2012) (dismissing a post-filing claim for inducement for failure to plead sufficient facts 1o regarding specific intent). 11 III. The Second Amended Complaint Fails to Allege Facts Sufficient to Support a Claim That Intel or Ibiden Willfully Infringe 12 13 The Second Amended Complaint, like the Dismissed Complaint, lacks any actual 14 allegations of egregious conduct by Intel or Ibiden. Notably, Continental Circuits does not 15 attempt to explain how its new allegations support an inference that Intel or Ibiden has acted 16 egregiously. Instead, it argues that the Supreme Court's decision in Halo Electronics, Inc. v. 17 Pulse Electronics, Inc., 136 S. Ct. 1923 (2016), lowered the bar for pleading willfulness, and 18 that allegations of egregious conduct are not necessary. Doc. 149 at 9-13. 8 19 Not so: this Court rightly found that "egregiousness is the touchstone of the 20 willfulness inquiry" after Halo. Doc. 112 at 19 (emphasis added). Consistent with that 21 finding, courts throughout the country have required allegations of egregious conduct before 22 allowing plaintiffs to proceed to discovery on claims of willful infringement. 9 Nonetheless, 23 8 Continental Circuits also argues that Halo lowered the burden of proof for proving a claim 24 of willful infringement. The burden of proving a claim is completely irrelevant to the question of what is required to plead a plausible claim. 25 9 CG Tech. Dev., LLC v. FanDuel, Inc., 2017 WL 58572, at *6 (D. Nev. Jan. 4, 2017) 26 (granting in part motion to dismiss: "[A] willful infringement plaintiff... must allege some 'egregious... misconduct,' occurring before the initial claim of infringement was filed" 27 (citation omitted)); Jenkins v. LogicMark, LLC, 2017 WL 376154, at *5 (E.D. Va. Jan. 25, 2017) (granting motion to dismiss: "at a minimum, plaintiffs alleging willful infringement 28 must plead facts sufficient to support an inference 'plausible on its face' that the alleged conduct is of the egregious nature described in Halo Electronics"); Princeton Dig. Image-5-Case 2:16-cv-02026-DGC Document 155 Filed 04/19/17 Page 10 of 13 1 Continental Circuits argues that "it is the wrong procedural question to ask whether 2 Continental has sufficiently pled 'egregiousness"' because egregiousness relates to the 3 question of whether to enhance damages, not whether infringement was willful. Doc. 149 at 4 10-11. None of the four cases Continental Circuits cites in support of this procedural 5 argument discusses pleading requirements or suggests that allegations of egregious conduct 6 are not necessary to plead a claim for willful infringement. Rather, three of the four cases 7 address post-verdict motions or appeals of post-verdict motions, and the fourth addresses a 8 motion for summary judgment. 10 Simply put, those cases do not address the standard for 9 pleading a claim of willfulness at the start of a case. Respectfully, Continental Circuits is 1O the party addressing the wrong procedural question. 11 The cases Continental Circuits cites for the proposition that courts have allowed 12 allegations of "less 'egregious' facts" about the parties' pre-suit relationship to survive a 13 motion to dismiss are distinguishable. Id. at 11-12. In three of those cases, the complaint 14 adequately alleged pre-suit notice of the alleged infringement, which is not the situation 15 here. 11 In the fourth, the party moving to dismiss failed to submit authority to establish that 16 actual notice of the patents and infringement thereafter is insufficient to plead willfulness 17 Corp. v. Ubisofl Entm 't SA, 2016 WL 6594076, at* 11 (D. Del. Nov. 4, 2016) ("[T]he TAC 18 does not sufficiently articulate how Ubisoft SA's actions during a short, three-month period 19 of time amount to an 'egregious' case of infringement...."). 10 WesternGeco L.L.C. v. JON Geophysical Corp., 837 F.3d 1358, 1363 (Fed. Cir. 2016) 20 (addressing a post-verdict motion); Power Integrations, Inc. v. Fairchild Semiconductor 21 Int'!, Inc., 2017 WL 130236, at *2 (N.D. Cal. Jan. 13, 2017) (same); Innovention Toys, LLC v. MGA Entm 't, Inc., 667 F. App'x 992, 994 (Fed. Cir. 2016) (vacating the district court's 22 award of enhanced damages and fees); Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 2016 WL 4596118, at *2 (E.D. Tex. Sept. 3, 2016) (denying a motion for summary judgment 23 of no willfulness). 11 24 In Bobcar Media, LLC v. Aardvark Event Logistics, Inc., 2017 WL 74729 (S.D.N.Y. Jan. 4, 2017), the complaint alleged "multiple letters sent to [defendant] describing the alleged 25 infringement" and identifying the "allegedly infringing products," id. at *6; in Huawei 26 Technologies Co. v. T-Mobile US, Inc., 2017 WL 1129951 (E.D. Tex. Feb. 21, 2017), the complaint alleged the plaintiff "informed T-Mobile that its services infringed Hua'wei's 27 intellectual property rights," id. at *4; in Finjan, Inc. v. ESET, LLC, 2017 WL 1063475 (S.D. Cal. Mar. 21, 2017), the complaint alleged "that prior to the filing of the lawsuit Finjan put 28 ESET on notice of its contentions ESET's products infringe the patents at issue" and that the parties subsequently met "to address those contentions," id. at *4.-6-Case 2:16-cv-02026-DGC Document 155 Filed 04/19/17 Page 11 of 13 1 after Halo. Panoptis Patent Mgmt. v. Blackberry Corp., 2017 WL 780885, at *5 (E.D. Tex. 2 Feb. 10, 2017). Here, Defendants have cited CG Tech. and Jenkins for that proposition, 3 which is well established after Halo. Doc. 147 at 13-14. 4 Finally, Continental Circuits argues that it should at least be allowed to proceed with a 5 post-filing willfulness claim based on the theory that Defendants learned about the patents 6 when they were served with the Complaint but continued to make and sell the accused 7 products. But claims for willfulness cannot be based solely on the continuation of pre-suit 8 conduct after a complaint has been filed. 12 Moreover, the pleadings in the cases that 9 Continental Circuits cites included plausible allegations of "egregious" post-suit conduct, 10 and are thus distinguishable. 13 See Princeton Digital, 2016 WL 6594076, at *11 (dismissing 11 post-suit willfulness claim for failure to plead egregious conduct). There are no allegations 12 of egregious post-suit conduct in the Second Amended Complaint. Continental Circuits' 13 amended claims for willful infringement should thus be dismissed in their entirety. 14 *** 15 Continental Circuits has had multiple chances to plead plausible claims of direct 16 infringement by Ibiden products supplied to customers other than Intel, induced infringement 17 by Intel, and willful infringement by Intel and Ibiden, but has been unable to allege sufficient 18 facts to support its theories of liability. Defendants respectfully submit that with Continental 19 Circuits having had a full and fair opportunity to plead proper claims, its deficient claims 20 should now be dismissed with prejudice. 21 22 12 In re Seagate, 497 F.3d 1360, 1374 (Fed. Cir. 2007), abrogated on other grounds, Halo, 23 136 S. Ct. 1923; Cooper Lighting, LLC v. Cordelia Lighting, Inc., No. 1:16-cv-02669, Doc. 24 44, at 8 (N.D. Ga. Apr. 6, 2017) ("Plaintiffs willful infringement claim, which is based solely on Defendants' post-filing conduct, fails as a matter of law"); Princeton Digital, 2016 25 WL 6594076, at* 11-12 (granting motion to dismiss post-suit willfulness claim for conduct 26 occurring after service of original complaint). 13 In Simplivity Corp. v. Springpath, Inc., 2016 WL 5388951 (D. Mass. July 15, 2016), the 27 defendant "escalat[ed]" its infringing activity post-complaint, see id. at * 18, and in Polara Engineering, Inc. v. Campbell Co., 2017 WL 754609 (C.D. Cal. Feb. 27, 2017), the 28 defendant continued to sell infringing products after partial summary judgment finding infringement, see id. at *26.-7-Case 2:16-cv-02026-DGC Document 155 Filed 04/19/17 Page 12 of 13 1 DATED: April 19, 2017 Respectfully submitted, 2 By: Isl Joseph J Mueller 3 Chad S. Campbell (State Bar No. 012080) 4 CSCampbell(a)perkinscoie.com PERKINS COIE LLP 5 2901 N. Central Avenue Suite 2000 6 Phoenix, AZ 85012 Tel: (602) 351-8000 I Fax: (602) 648-7000 7 William F. Lee (admitted pro hac vice) 8 William.Lee@wilmerhale.com Joseph J. Mueller (admitted pro hac vice) 9 J oseph.Mueller(a)wilmerhale.com WILMER CUT[ER PICKERING HALE 10 ANDDORRLLP 60 State Street 11 Boston, MA 02109 Tel: (617) 526-6000 I Fax: (617) 526-5000 12 Nina S. Tallon (admitted pro hac vice) 13 Nina.Tallon(a)wilmerhale.com WILMER CUTLER PICKERING HALE 14 ANDDORRLLP 1875 Pennsylvania Avenue, NW 15 Washington, DC 20006 Tel: (202) 663-6000 I Fax: (202) 663-6363 16 Attorneys for Defendants Intel Corporation, 17 Ibiden U.S.A. Corporation, and Ibiden Co., Ltd. 18 19 20 21 22 23 24 25 26 27 28-8-Case 2:16-cv-02026-DGC Document 155 Filed 04/19/17 Page 13 of 13 1 CERTIFICATE OF SERVICE 2 I certify that on the 19th day of April, 2017, I electronically transmitted the foregoing 3 document to the Clerk's Office using the CM/ECF System for filing and transmittal of a 4 Notice of Electronic Filing to all CM/ECF registrants of record in this matter. 5 I certify that on April 20, 2017, I will serve the attached document by first class mail 6 on Judge Campbell, United States District Court of Arizona, 401 West Washington Street, 7 Phoenix, Arizona 85003-2118. 8 9 Isl Daniel R. Graziano 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28-9-

Joint MOTION to Seal Document Defendants' Reply in Support of Their Partial Motion to Dismiss Continental Circuits LLC's Second Amended Complaint by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.

Case 2:16-cv-02026-DGC Document 156 Filed 04/19/17 Page 1 of 5 1 PERKINS COIE LLP Chad S. Campbell (State Bar No. 012080) 2 CSCampbell@perkinscoie.com 2901 N. Central Avenue 3 Suite 2000 Phoenix, AZ 85012 4 Tel: (602) 351-8000/Fax: (602) 648-7000 5 ATTORNEYS FOR DEFENDANTS 6 AIKEN SCHENK HAWKINS & RICCIARDI P.C. Joseph A. Schenk (State Bar No. 009260) 7 2390 East Camelback Road, Suite 400 Phoenix, Arizona 85016 8 Telephone: (602) 248-8203 Facsimile: (602) 248-8840 9 E-Mail: jas@ashrlaw.com 10 ATTORNEYS FOR PLAINTIFF CONTINENTAL CIRCUITS, LLC 11 12 [Additional Counsel Identified Below] 13 IN THE UNITED STATES DISTRICT COURT 14 FOR THE DISTRICT OF ARIZONA 15 Continental Circuits, LLC, CASE NO. 2:16-cv-02026-DGC 16 Plaintiff, 17 JOINT MOTION TO SEAL v. DEFENDANTS’ REPLY IN SUPPORT 18 Intel Corp.; Ibiden U.S.A.; Ibiden Co., Ltd., OF THEIR PARTIAL MOTION TO 19 DISMISS CONTINENTAL CIRCUITS Defendants. LLC’S SECOND AMENDED 20 COMPLAINT 21 22 23 24 25 26 27 28 Case 2:16-cv-02026-DGC Document 156 Filed 04/19/17 Page 2 of 5 1 Pursuant to Civil Local Rule 5.6, Plaintiff Continental Circuits, LLC and Defendants 2 Intel Corporation ("Intel"), Ibiden U.S.A. Corporation, and Ibiden Co. Ltd. ("the Ibiden 3 Defendants") (collectively "the Parties"), hereby move the Court for an Order sealing 4 Defendants’ Reply In Support of Their Partial Motion to Dismiss Continental Circuits 5 LLC’s Second Amended Complaint ("Reply"), lodged herewith. 6 The Parties respectfully request that the Court order that portions of the Reply be 7 sealed because they disclose confidential technical, competitive, or commercially sensitive 8 information that Intel and the Ibiden Defendants have designated as "Outside Counsel 9 Restricted" material under the Protective Order entered in this case. Moreover, the 10 information sought to be sealed has been the subject of motions to seal that the Court has 11 previously granted. (See Docs. 127, 146.) This Motion is based on the following 12 Memorandum of Points and Authorities. 13 MEMORANDUM OF POINTS AND AUTHORITIES 14 I. STATEMENT OF FACTS 15 On March 13, 2017, Continental Circuits filed a Second Amended Complaint, which 16 refers to certain technical, competitive, or commercially sensitive information that Intel and 17 the Ibiden Defendants have produced to Continental Circuits during discovery. (See Doc. 18 124.) Intel and the Ibiden Defendants have designated this information as OUTSIDE 19 COUNSEL RESTRICTED under the Protective Order entered in this case. (See Doc. 71.) 20 Pursuant to a joint motion, and to protect Intel and the Ibiden Defendants’ confidential 21 technical, competitive, or commercially sensitive information, the Court ordered that the 22 Second Amended Complaint be filed under seal, and ordered Continental Circuits to file a 23 redacted version of the Second Amended Complaint. (Docs. 123, 127.) In moving to 24 dismiss some of the claims in the Second Amended Complaint that refer to this confidential 25 technical, competitive, or commercially sensitive information, Intel and the Ibiden 26 Defendants have, in turn, referenced the same information in their Partial Motion to 27-2-28 Case 2:16-cv-02026-DGC Document 156 Filed 04/19/17 Page 3 of 5 1 Dismiss and now in the Reply. Reference to this confidential, commercially sensitive 2 information in the Reply is necessary to completely and accurately address the allegations 3 in the Second Amended Complaint and Continental Circuits’ Opposition. 4 II. ARGUMENT 5 Documents may be filed under seal if good cause or compelling reasons for sealing 6 are shown. See, e.g., Kamakana v. City & County of Honolulu, 447 F.3d 1172, 1180 (9th 7 Cir. 2006). The Ninth and Federal Circuits have both found that sealing is justified—and 8 the public’s interest in access is outweighed—when public disclosure of a party’s 9 confidential information would result in competitive harm or the disclosure of trade secrets. 10 See id. at 1178-80; Apple Inc. v. Samsung Elecs. Co., 727 F.3d 1214, 1222 (Fed. Cir. 2013); 11 In re Electronic Arts, 298 Fed. App’x 568, 569-70 (9th Cir. 2008) (citing Restatement on 12 Torts definition of "trade secret" and further noting that "compelling reasons" may exist if 13 sealing is required to prevent judicial documents from being used "as sources of business 14 information that might harm a litigant's competitive standing.") (citation omitted). 15 Consistent with this, Local Rule 5.6 and Federal Rule of Civil Procedure 26(c)(1) state that 16 the Court may, "for good cause, issue an order to protect a party or person from annoyance, 17 embarrassment, oppression, or undue burden or expense" by, among other things, 18 "requiring that a trade secret or other confidential research, development or commercial 19 information not be revealed or be revealed only in a specified way[.]" FED. R. CIV. P. 20 26(c)(1)(G); LRCiv 5.6. 21 The Defendants’ Reply necessarily references the same confidential technical, 22 competitive, or commercially sensitive information mentioned in the Second Amended 23 Complaint itself. Accordingly, for the same reasons the Court ordered that both the Second 24 Amended Complaint and the Partial Motion to Dismiss be filed under seal (see Docs. 123, 25 127, 143, 146), good cause and compelling reasons exist to seal the Defendants’ Reply. 26 27-3-28 Case 2:16-cv-02026-DGC Document 156 Filed 04/19/17 Page 4 of 5 1 III. CONCLUSION 2 Because good cause and compelling reasons exist for protecting Intel and the Ibiden 3 Defendants’ confidential, technical, competitive, or commercially sensitive information, the 4 Parties respectfully request that the Court enter the proposed order. 5 6 DATED this 19th day of April, 2017. 7 Respectfully submitted, 8 By/s/Bradley W. Caldwell (with By/s/Joseph J. Mueller 9 permission) Chad S. Campbell (State Bar No. 012080) Bradley W. Caldwell (pro hac vice) CSCampbell@perkinscoie.com 10 Jason D. Cassady (pro hac vice) PERKINS COIE LLP J. Austin Curry (pro hac vice) 2901 N. Central Avenue 11 Warren J. McCarty (pro hac vice) Suite 2000 Jason S. McManis (pro hac vice) Phoenix, AZ 85012 12 CALDWELL CASSADY CURRY P.C. Tel: (602) 351-8000/Fax: (602) 648-7000 2101 Cedar Springs Rd., Suite 1000 13 Dallas, Texas 75201 William F. Lee (pro hac vice) Telephone: (214) 888-4848 William.Lee@wilmerhale.com 14 Facsimile: (214) 888-4849 Joseph J. Mueller (pro hac vice) Email: bcaldwell@caldwellcc.com Joseph.Mueller@wilmerhale.com 15 Email: jcassady@caldwellcc.com WILMER CUTLER PICKERING HALE Email: acurry@caldwellcc.com AND DORR LLP 16 Email: wmccarty@caldwellcc.com 60 State Street Email: jmcmanis@caldwellcc.com Boston, MA 02109 17 Tel: (617) 526-6000/Fax: (617) 526-5000 Joseph A. Schenk– 009260 18 AIKEN SCHENK HAWKINS & RICCIARDI Nina S. Tallon (pro hac vice) P.C. Nina.Tallon@wilmerhale.com 19 2390 East Camelback Road, Suite 400 WILMER CUTLER PICKERING HALE Phoenix, Arizona 85016 AND DORR LLP 20 Telephone: (602) 248-8203 1875 Pennsylvania Ave. NW Facsimile: (602) 248-8840 Washington, DC 20006 21 E-Mail: docket@ashrlaw.com Tel: (202) 663-6000/Fax: (202) 663-6363 E-Mail: jas@ashrlaw.com 22 ATTORNEYS FOR DEFENDANT INTEL ATTORNEYS FOR PLAINTIFF CONTINENTAL CORPORATION AND IBIDEN DEFENDANTS 23 CIRCUITS, LLC 24 25 26 27-4-28 Case 2:16-cv-02026-DGC Document 156 Filed 04/19/17 Page 5 of 5 1 CERTIFICATE OF SERVICE 2 The undersigned certifies that all counsel of record who have consented to electronic 3 service are being served with a copy of the foregoing document via the Court’s CM/ECF 4 system on this 19th day of April, 2017. 5/s/Daniel R. Graziano 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27-5-28

MINUTE ORDER: Supplemental Request for Copyright, Trademark, or Patent Information. This case has been designated as a copyright, trademark, or patent case. An answer, amended complaint, or other pleading {{152}} and {{153}} has been filed that may include additional trademarks, patents, or copyrights allegedly violated that were not previously included. Attached to this docket entry are the required form(s) that may need to be completed by the party who filed the above document.</br></br>If your recently filed pleading adds or changes information related to the original patents, trademarks, or copyright allegations, please complete the form that is applicable to this particular case. In some cases, you may need to complete both forms. Within seven (7) days, you must submit the required form(s) to the Clerk's Office. Please complete the form and file it with the Court using the specific event: Notice of Filing - Copyright, Trademark or Patent Information, found under the Other Filings header. Please DO NOT mail the form directly to the Patent or Copyright Office. The Clerk's Office will submit the form.</br></br>If there are no changes to the copyright, trademark, or patent information previously submitted for this case, then the party who filed the above document must file a Notice, within seven (7) days, indicating such using the specific event:Notice of Filing - Copyright, Trademark or Patent Information, found under the Other Filings header

Case 2:16-cv-02026-DGC Document 158 Filed 04/20/17 Page 1 of 2 AO 120 (Rev. 08/10) Mail Stop 8 REPORT ON THE TO: Director of the U.S. Patent and Trademark Office FILING OR DETERMINATION OF AN P.O. Box 1450 ACTION REGARDING A PATENT OR Alexandria, VA 22313-1450 TRADEMARK In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been filed in the U.S. District Court of Arizona on the following G Trademarks or G Patents. (G the patent action involves 35 U.S.C. § 292.): DOCKET NO. DATE FILED U.S. DISTRICT COURT of Arizona PLAINTIFF DEFENDANT PATENT OR DATE OF PATENT HOLDER OF PATENT OR TRADEMARK TRADEMARK NO. OR TRADEMARK 1 2 3 4 5 In the above—entitled case, the following patent(s)/trademark(s) have been included: DATE INCLUDED INCLUDED BY G Amendment G Answer G Cross Bill G Other Pleading PATENT OR DATE OF PATENT HOLDER OF PATENT OR TRADEMARK TRADEMARK NO. OR TRADEMARK 1 2 3 4 5 In the above—entitled case, the following decision has been rendered or judgement issued: DECISION/JUDGEMENT CLERK (BY) DEPUTY CLERK DATE Brian D. Karth Copy 1—Upon initiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director Copy 2—Upon filing document adding patent(s), mail this copy to Director Copy 4—Case file copy Print Save As... Reset Case 2:16-cv-02026-DGC Document 158 Filed 04/20/17 Page 2 of 2 O AO 121 (6/90) TO: Register of Copyrights REPORT ON THE Copyright Office FILING OR DETERMINATION OF AN Library of Congress ACTION OR APPEAL Washington, D.C. 20559 REGARDING A COPYRIGHT In compliance with the provisions of 17 U.S.C. 508, you are hereby advised that a court action or appeal has been filed on the following copyright(s): COURT NAME AND LOCATION G ACTION G APPEAL DOCKET NO. DATE FILED of Arizona PLAINTIFF DEFENDANT COPYRIGHT TITLE OF WORK AUTHOR OR WORK REGISTRATION NO. 1 2 3 4 5 In the above-entitled case, the following copyright(s) have been included: DATE INCLUDED INCLUDED BY G Amendment G Answer G Cross Bill G Other Pleading COPYRIGHT TITLE OF WORK AUTHOR OF WORK REGISTRATION NO. 1 2 3. In the above-entitled case, a final decision was rendered on the date entered below. A copy of the order or judgment together with the written opinion, if any, of the court is attached. COPY ATTACHED WRITTEN OPINION ATTACHED DATE RENDERED G Order G Judgment G Yes G No CLERK (BY) DEPUTY CLERK DATE Brian D. Karth 1) Upon initiation of action, 2) Upon filing of document adding copyright(s), 3) Upon termination of action, mail copy to Register of Copyrights mail copy to Register of Copyrights mail copy to Register of Copyrights DISTRIBUTION: 4) In the event of an appeal, forward copy to Appellate Court 5) Case File Copy Print Save As... Reset

ORDER granting {{156}} Joint Motion to Seal. The Clerk shall accept for filing under seal the document lodged on the Court's docket as Doc. {{157}}. If a redacted version of this document has not been filed in the public record, Defendants shall do so no later than May 3, 2017. Signed by Judge David G Campbell on 4/27/17.

Case 2:16-cv-02026-DGC Document 164 Filed 04/27/17 Page 1 of 1 1 2 3 4 5 6 IN THE UNITED STATES DISTRICT COURT 7 FOR THE DISTRICT OF ARIZONA 8 Continental Circuits, LLC, NO. CV16-02026-PHX DGC 9 Plaintiff, 10 ORDER v. 11 Intel Corp.; Ibiden U.S.A.; Ibiden Co., Ltd., 12 Defendants. 13 14 15 The Court having considered the parties’ Joint Motion to Seal. Doc. 156. 16 IT IS ORDERED that this Motion (Doc. 156) is granted. The Clerk shall accept 17 for filing under seal the document lodged on the Court’s docket as Doc. 157. 18 If a redacted version of this document has not been filed in the public record, 19 Defendants shall do so no later than May 3, 2017. 20 Dated this 27th day of April, 2017. 21 22 23 24 25 26 27 28

ORDER granting {{148}} Motion to Seal. The following documents are sealed: Continental Circuits LLC's Opposition to Defendants' Partial Motion to Dismiss Second Amended Complaint. Signed by Judge David G Campbell on 5/11/17.

Case 2:16-cv-02026-DGC Document 169 Filed 05/11/17 Page 1 of 1 1 2 3 4 5 6 IN THE UNITED STATES DISTRICT COURT 7 FOR THE DISTRICT OF ARIZONA 8 9 Continental Circuits, LLC,) No. CIV 16-2026-PHX-DGC) 10 Plaintiff,) ORDER) 11 vs.)) 12) Intel Corp; Ibiden U.S.A.; Ibiden Co.,) 13 Ltd.,,)) 14 Defendants.)) 15) 16 17 The Court having considered the parties’ Joint Motion to Seal, and good cause 18 appearing, 19 IT IS HEREBY ORDERED that this Motion is granted. The following documents are 20 sealed: 21 Continental Circuits LLC’s Opposition to Defendants’ Partial Motion to Dismiss Second Amended Complaint. 22 DATED this 11th day of May, 2017. 23 24 25 26 27 28

REDACTION to {{170}} Response to Motion REDACTED OPPOSITION TO DEFENDANTS' PARTIAL MOTION TO DISMISS SECOND AMENDED COMPLAINT by Continental Circuits LLC.

Case 2:16-cv-02026-DGC Document 175 Filed 05/26/17 Page 1 of 19 1 AIKEN SCHENK HAWKINS & RICCIARDI P.C. 2390 East Camelback Road, Suite 400 2 Phoenix, Arizona 85016 Telephone: (602) 248-8203 3 Facsimile: (602) 248-8840 E-Mail: docket@ashrlaw.com 4 E-Mail: jas@ashrlaw.com Joseph A. Schenk – 009260 5 Bradley W. Caldwell (pro hac vice) 6 Jason D. Cassady (pro hac vice) J. Austin Curry (pro hac vice) 7 Warren J. McCarty (pro hac vice) Jason S. McManis (pro hac vice) 8 CALDWELL CASSADY CURRY P.C. 2101 Cedar Springs Rd., Suite 1000 9 Dallas, Texas 75201 Telephone: (214) 888-4848 10 Facsimile: (214) 888-4849 Email: bcaldwell@caldwellcc.com 11 Email: jcassady@caldwellcc.com Email: acurry@caldwellcc.com 12 Email: wmccarty@caldwellcc.com Email: jmcmanis@caldwellcc.com 13 Attorneys for Plaintiff Continental Circuits, LLC 14 15 IN THE UNITED STATES DISTRICT COURT 16 FOR THE DISTRICT OF ARIZONA 17 Continental Circuits LLC, CASE NO. CV-16-2026-PHX-DGC 18 Plaintiff, CONTINENTAL CIRCUITS LLC’S 19 v. OPPOSITION TO DEFENDANTS’ PARTIAL MOTION TO DISMISS 20 Intel Corp., Ibiden U.S.A. SECOND AMENDED COMPLAINT Corp., Ibiden Co., Ltd., 21 Defendants. FILED UNDER SEAL 22 23 REDACTED PUBLIC VERSION 24 25 26 27 28 29 Case 2:16-cv-02026-DGC Document 175 Filed 05/26/17 Page 2 of 19 1 TABLE OF CONTENTS 2 3 I. Ibiden’s Not More Than Colorably Different Products........................................... 1 4 II. Continental Sufficiently Pled Induced Infringement by Intel................................. 4 5 III. Continental Sufficiently Pled Willful Infringement................................................ 9 6 7 IV. Conclusion............................................................................................................. 13 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 i Case 2:16-cv-02026-DGC Document 175 Filed 05/26/17 Page 3 of 19 1 TABLE OF AUTHORITIES 2 Cases 3 Blitzsafe Texas, LLC v. Volkswagen Grp. of Am. 4 2016 WL 4778699 (E.D. Tex. Aug. 19, 2016)........................................................ 5, 10 13 5 Bobcar Media, LLC v. Aardvark Event Logistics, Inc. 6 No. 16-cv-885, 2017 WL 74729 (S.D.N.Y. Jan. 4, 2017)............................................ 9, 11 7 Brain Life, LLC v. Elekta Inc. 746 F.3d 1045 (Fed. Cir. 2014)........................................................................................... 2 8 9 CG Tech. Dev., LLC v. Zynga, Inc. 2017 WL 662489 (D. Nev. Feb. 17, 2017)....................................................................... 11 10 11 Chestnut Hill Sound Inc. v. Apple Inc. No. 15-cv-261 (D. Del. Feb. 29, 2016)....................................................................... 5, 7, 8 12 Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc. 13 No. 2:14-cv-911, 2016 WL 4596118 (E.D. Tex. Sept. 3, 2016)....................................... 11 14 CTE Global, Inc. v. Novozymes A/S 15 No. 15-c-181, 2015 WL 2330223 (N.D. Ill. May 14, 2015)............................................... 2 16 DataTreasury Corp. v. Wells Fargo 17 No. 2:06-CV-72 DF, 2010 WL 5140741 (E.D. Tex. Sept. 27, 2010)................................. 6 18 Dermafocus LLC v. Ulthera, Inc. 19 201 F. Supp. 3d 465 (D. Del. 2016).................................................................................. 13 20 Driessen v. Sony Music Entm't 21 No. 09 Civ. 0140, 2013 WL 4501063 (D. Utah Aug. 22, 2013)......................................... 7 22 Finjan, Inc. v. ESET, LLC No. 3:17-cv-183, 2017 WL 1063475 (S.D. Cal. Mar. 21, 2017)...................................... 12 23 24 France v. AK Steel Corp. No. 13-685, 2016 WL 1588492 (D. Del. Apr. 19, 2016).................................................... 2 25 26 Glob.-Tech Appliances, Inc. v. SEB S.A. 563 U.S. 754 (2011).............................................................................................. 5, 6, 8, 10 27 Hallco Mfg. Co., Inc. v. Foster 28 256 F.3d 1290 (Fed. Cir. 2001)........................................................................................... 2 29 ii Case 2:16-cv-02026-DGC Document 175 Filed 05/26/17 Page 4 of 19 1 Halo Electronics, Inc. v. Pulse Electronics, Inc. 136 S. Ct. 1923 (2016)............................................................................................... passim 2 3 Huawei Techs. Co. Ltd. V. T-Mobile US, Inc. No. 2:16-cv-52, 2017 WL 1129951 (E.D. Tex. Feb. 21, 2017).................................. 12, 13 4 5 Innovention Toys LLC v. MGA Entertainment, Inc. 667 Fed. App’x 992 (Fed. Cir. 2016)...................................................................... 9, 10, 11 6 Jenkins v. LogicMark, LLC 7 2017 WL 376154 (E.D. Va. Jan. 25, 2017)....................................................................... 11 8 K-Tech Telecomms., Inc. v. Time Warner Cable, Inc. 9 714 F.3d 1277 (Fed. Cir. 2013)................................................................................... 1, 2, 4 10 Mentor Graphics Corp. v. EVE-USA, Inc. 11 No. 2015-1470, 2017 WL 1024502 (Fed. Cir. Mar. 16, 2017)......................................... 12 12 PanOptis Patent Mgmt., LLC v. Blackberry Corp. 13 No. 2:16-cv-59, 2017 WL 780885 (E.D. Tex. Feb. 10, 2017).......................................... 12 14 Polara Eng’g, Inc. v. Campbell Co. 15 No. 13-7, 2017 WL 754609 (S.D. Cal. Feb. 27, 2017)..................................................... 13 16 Power Integration, Inc. v. Fairchild Semiconductor, Inc. No. 09-cv-05235, 2017 WL 130236 (N.D. Cal. Jan. 13, 2017)........................................ 11 17 18 Roberston Transformer Co. v. Gen. Elec. Co. No. 12-c-8094, 2016 WL 4417019 (N.D. Ill. Aug. 19, 2016).......................................... 13 19 20 S. Constr. Co., Inc. v. Pickard 371 U.S. 57 (1962).............................................................................................................. 3 21 Simplivity Corp. v. Springpath, Inc. 22 No. 4:15-13345, 2016 WL 5388951 (D. Mass. July 15, 2016)..................................... 8, 13 23 Smartflash LLC v. Apple Inc. 24 No. 13cv447, 2015 WL 661276 (E.D. Tex. Feb. 13, 2015)................................................ 6 25 Starr v. Baca 26 652 F.3d 1202 (9th Cir. 2011)......................................................................................... 1, 3 27 State Industries Inc. v. A.O. Smith Corp. 28 751 F.2d 1226 (Fed. Cir. 1985)................................................................................. 5, 6, 10 29 iii Case 2:16-cv-02026-DGC Document 175 Filed 05/26/17 Page 5 of 19 1 Tivo Inc. v. Echostar Corp. 2 646 F.3d 869 (Fed. Cir. 2011)............................................................................................. 2 3 Tomita Techs USA LLC v. Nintendo Corp. 4 11-cv-4256, 2012 WL 2524770 (S.D.N.Y. June 26, 2012)........................................ 6, 7, 8 5 WBIP, LLC v. Kohler Co. 6 829 F.3d 1317 (Fed. Cir. 2016)..................................................................................... 5, 12 7 WesternGeco LLC v. Ion Geophysical Corp. 8 837 F.3d 1358 (Fed. Cir. 2016)..................................................................................... 9, 11 9 Windy City Innovations, LLC v. Microsoft Corp. 10 193 F. Supp. 3d 1109 (N.D. Cal. 2016).............................................................................. 9 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 iv Case 2:16-cv-02026-DGC Document 175 Filed 05/26/17 Page 6 of 19 1 Continental Circuits LLC ("Continental") files this response to the Partial Motion to 2 Dismiss ("Motion") filed by Intel Corp., Ibiden U.S.A., Corp., and Ibiden Co., Ltd. 3 (collectively, "Defendants"). For the reasons discussed below, the Court should deny the 4 Motion. 5 I. Ibiden’s Not More Than Colorably Different Products. 6 Defendants understand that the purpose of pleading standards is to ensure that 7 sufficient underlying facts are pled in order "to give fair notice and to enable the opposing 8 party to defend itself effectively." Dkt. 49 at 4 (quoting Starr v. Baca, 652 F.3d 1202, 1216 9 (9th Cir. 2011); see also Dkt. 52 at 11. Continental has pled sufficient facts to provide this 10 notice to Ibiden. Despite this notice, Ibiden seeks to unfairly limit the scope of this case. 11 See K-Tech Telecomms., Inc. v. Time Warner Cable, Inc., 714 F.3d 1277, 1286 (Fed. Cir. 12 2013) ("A defendant cannot shield itself from a complaint for direct infringement by 13 operating in such secrecy that the filing of a complaint itself is impossible."). 14 Continental’s Second Amended Complaint pleads specific facts sufficient to provide 15 Ibiden notice of which of its products are at issue in this case. Dkt. 128 ("SAC") at ¶¶ 57-16 61, 110-129. Specifically, at the Courts’ instruction, these paragraphs incorporate by 17 reference the infringement claim charts already provided to Defendants. SAC at ¶ 113; 18 Dkt. 112 at 20, ¶ 3. In addition, these paragraphs further explain how and why the Accused 19 Instrumentalities infringe. SAC at ¶¶ 114-129. It is undisputed that these allegations pass 20 muster under Rule 12 because Defendants are no longer seeking to dismiss direct 21 infringement claims against specifically named products. See Dkt. 144. 22 23 24 SAC at ¶¶ 59-61, 104, 111. Finally, Continental notifies 25 Ibiden that it is also accusing of infringement any other package substrates that are not 26 more than colorably different than the specifically named Intel products, regardless of 27 particular customer, as long as the package substrate is sold or offered for sale in the United 28 States. SAC at ¶ 59 n.1, ¶ 111(x)-(xi). 29 1 Case 2:16-cv-02026-DGC Document 175 Filed 05/26/17 Page 7 of 19 1 Pleading in this manner does not fail the requirements of fair notice. Any defendant 2 is capable of figuring out what falls under the category of "this listed product and all other 3 products that are the same." This is so because, in multiple areas, patent law applies the 4 "colorable differences" test. See Tivo Inc. v. Echostar Corp., 646 F.3d 869, 881-83 (Fed. 5 Cir. 2011) (discussing test). For example, permanent injunctions are routinely entered 6 against specifically named products as well products not more than colorably different than 7 the specific products adjudged infringing. See, e.g., id. This is necessary to preserve 8 fundamental fairness—without the ability to enjoin infringement in this manner, defendants 9 would merely need to change the name of their products to avoid an injunction. Instead, 10 the law requires defendants to be able to determine whether their future, unnamed products 11 are substantially similar to the specifically enjoined infringing products under risk of 12 contempt. Id. Courts have applied the colorable differences test in deciding motions to 13 dismiss as well. See CTE Global, Inc. v. Novozymes A/S, No. 15-c-181, 2015 WL 2330223, 14 at *2-*3 (N.D. Ill. May 14, 2015); France v. AK Steel Corp., No. 13-685, 2016 WL 15 1588492, at *4 (D. Del. Apr. 19, 2016). 16 Another area of patent law that applies the colorable differences test is that of claim 17 preclusion. See, e.g., Hallco Mfg. Co., Inc. v. Foster, 256 F.3d 1290, 1297 (Fed. Cir. 2001). 18 For example, if other, presently unnamed but substantially similar, infringing Ibiden 19 products are dismissed from this case, and if Continental files another lawsuit after 20 judgment in this case on these other infringing-but-dismissed products, it is possible that 21 claim preclusion could bar Continental’s future claim. Brain Life, LLC v. Elekta Inc., 746 22 F.3d 1045, 1053-1054 (Fed. Cir. 2014) ("claim preclusion bars both claims that were 23 brought as well as those that could have been brought" (emphasis original)). Not only 24 would this lead to an unjust result, K-Tech, 714 F.3d at 1286, it also highlights the 25 adequacy of Continental Circuit’s pleading here. Notably, Ibiden reserves its right to raise 26 this claim preclusion issue in the future. Ex. A at ¶ 2. Thus, Ibiden admits that it can 27 determine whether other products are not more than colorably different than the ones 28 identified in Continental Circuits, as can any other defendant who may want to raise a claim 29 2 Case 2:16-cv-02026-DGC Document 175 Filed 05/26/17 Page 8 of 19 1 preclusion issue. This unremarkable notion proves that accused infringers like Ibiden are 2 capable of discerning which among its products operate in the same manner as those 3 identified and, therefore, are on fair notice of the full scope of Continental Circuit’s 4 allegations here. Even putting aside future claim preclusion, to dismiss Continental’s 5 claims against these substantially similar products would also needlessly multiply the 6 number of proceedings required to hold Ibiden to account for its infringement. Plainly, 7 needless multiplicity of lawsuits is inefficient and disfavored. See, e.g., S. Constr. Co., Inc. 8 v. Pickard, 371 U.S. 57, 60 (1962) (discussing policy behind compulsory counterclaims). 9 Allowing these products into the case is also not a burdensome undertaking. If 10 Ibiden actually does not sell or offer to sell substantially similar package substrates to other 11 customers in the United States, it simply has to say so. Yet instead of denying substantial 12 similarity, Ibiden merely constructs procedural straw men and hides behind an unduly 13 stringent pleading standard. Ex. A at ¶ 3; Ex. B (never responded to). Ibiden has fair 14 notice sufficient to enable it to defend itself. Starr, 652 F.3d at 1216. 15 Defendants arguments to the contrary fail. First, Defendants are wrong to claim that 16 Continental has failed to "allege any facts suggesting how such unidentified products meet 17 any claim of any asserted patent" 18 Dkt. 144 at 4-5 19 (emphasis in original). As explained supra, it is undisputed that Defendants are on notice 20 of facts explaining how and why the listed Accused Instrumentalities meet the claims— 21 including through the disclosure of claim charts. SAC at ¶¶ 110-129. The presently 22 unidentified, not more than colorably different Ibiden products meet the claims in the same 23 way because they are substantially similar and are manufactured the same way. SAC at ¶¶ 24 58-61. While Continental Circuits and the Court may not yet be able to identify those 25 products, Ibiden can. Second, Defendants’ territorial complaint is misplaced because 26 Continental’s allegations against unidentified, not more than colorably different Ibiden 27 products are expressly limited to products "that Ibiden sells or offers for sale in the United 28 States." SAC at ¶ 111(x)-(xi). The Second Amended Complaint sufficiently and plausibly 29 3 Case 2:16-cv-02026-DGC Document 175 Filed 05/26/17 Page 9 of 19 1 pleads facts alleging that Ibiden supplies customers with package substrates other than 2 Intel, and that for at least some of Ibiden’s customers these sales relationships (offers to 3 sell) transpire in the United States. SAC at ¶¶ 57-58. It is undisputed that Ibiden maintains 4 a physical presence in the United States, which strongly suggests it is involved in 5 commerce here (offers to sell). SAC at ¶ 3. It is also undisputed that Intel is not Ibiden’s 6 sole United States customer. 2/3/17 H’rg Tr. at 30:25-31:1. And the cases Defendants cite 7 regarding dismissal of "unidentified" products—LaserDynamics and Infineon—are 8 inapposite. Dkt. 144 at 5-6. Neither case deals with territorial requirements or the 9 colorable differences standard—the "unidentified" products in those cases had no 10 connection to the named products. The same is not true here. Finally, Defendants present 11 no case that sets forth their desired rule: that under any circumstance, products must be 12 specifically named to avoid dismissal. Defendants’ failure in this regard is unsurprising, 13 because their proposed rule directly conflicts with K-Tech. 714 F.3d at 1286. Ibiden has 14 fair notice of Continental’s infringement claims, and Ibiden’s motion to dismiss unnamed 15 products not more than colorably different than named products should be denied. 16 II. Continental Sufficiently Pled Induced Infringement by Intel. 17 Similarly, Continental has pled sufficient facts to state a plausible claim of induced 18 infringement against Intel because Continental Circuits has pled either circumstantial 19 evidence of pre-suit knowledge of the patents-in-suit or else willful blindness to their 20 existence. Although the Court dismissed these claims without prejudice, it expressly noted 21 that the issue of the sufficiency of Continental’s pleadings on willful blindness had not been 22 briefed. Dkt. 112 at 17 n.13. 23 As Intel points out, Continental’s Second Amended Complaint presents additional 24 factual material related to this claim and knowledge of the patents. Not only did 25 Continental meet with "representatives of Intel to discuss... design rules and 26 manufacturing reliability of printed circuit boards," SAC ¶ 24, in the 1990s, but Intel and 27 the inventors of the patents-in-suit "coordinated together on Continental Circuits Inc.’s 28 photolink, a product which came to embody the patented inventions." Id. ¶ 25. And 29 4 Case 2:16-cv-02026-DGC Document 175 Filed 05/26/17 Page 10 of 19 1 although Intel quibbles that Continental did not expressly plead that Intel coordinated with 2 Continental when Photolink embodied the patents-in-suit, Continental did plead that the 3 coordination occurred between 1996 and 1998 and that the patents-in-suit have a filing date 4 of August 4, 1997. SAC, Ex. A. Additionally, Continental clarified that not only did it 5 expressly notify Intel of two related patents to the patents-in-suit, id. ¶ 35, those disclosed 6 patents also shared the same specification and described various innovative aspects of the 7 inventions claimed in the patents-in-suit. Id. ¶ 37. Continental also pointed out that Intel 8 has a commercial relationship with Ibiden, a company with pre-suit knowledge. Id. ¶¶ 51-9 58. With these facts, including the undisputed facts that Intel is an innovative company, 10 that Intel is familiar with the patent system, and that it had easy access to the actual patents-11 in-suit after their issuance, Continental has pled a sufficient, plausible basis for alleging 12 Intel’s knowledge of the patents-in-suit or willful blindness to them. See SAC ¶¶ 51-56. 13 As the Court recognized, facts "pled in conjunction with the related patent and 14 continuation application may suffice to establish knowledge at the pleading stage." Dkt. 15 112 at 15. See also Blitzsafe Texas, LLC v. Volkswagen Grp. of Am., 2016 WL 4778699, at 16 *6 (E.D. Tex. Aug. 19, 2016) ("However, State Industries [Inc. v. A.O. Smith Corp., 751 17 F.2d 1226 (Fed. Cir. 1985)] does not hold that no matter the context, a party’s exposure to a 18 patent application cannot give rise to knowledge of the claims in the later-issued patent."). 19 Applying this principle, courts have regularly found plausible claims of pre-suit knowledge 20 sufficient to state a claim for induced infringement under facts similar to those alleged here. 21 For example, in Chestnut Hill Sound Inc. v. Apple Inc., No. 15-cv-261, Slip. Op. at 1 22 (D. Del. Feb. 29, 2016),1 the Court found pre-suit knowledge or at least willful blindness to 23 24 1 To be sure, the Chestnut Hill decision occurred prior to Halo Electronics, Inc. v. Pulse 25 Electronics, Inc., 136 S. Ct. 1923 (2016). But that case does not limit Chestnut Hill’s 26 persuasive import. Halo did not affect the pre-suit knowledge requirement, and case law addressing that requirement remains relevant. WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1341 27 (Fed. Cir. 2016) ("Knowledge of the patent alleged to be willfully infringed continues to be 28 a prerequisite to enhanced damages."); Glob.-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 766 (2011) (reasoning that a willfully blind defendant is "as culpable as [one] who ha[s] 29 5 Case 2:16-cv-02026-DGC Document 175 Filed 05/26/17 Page 11 of 19 1 the patent where the plaintiff and defendant had a commercial relationship, the defendant 2 has praised the plaintiff’s product, the plaintiff had disclosed a patent application to the 3 defendant, and the plaintiff’s patents had been cited on defendant’s application. See also 4 Ex. C (Chestnut Hill Sound Complaint). Similarly, in Tomita Techs USA LLC v. Nintendo 5 Corp., 11-cv-4256, 2012 WL 2524770, at *10 (S.D.N.Y. June 26, 2012), the Court found 6 pre-suit knowledge where the inventor gave a presentation on his technology, informed the 7 defendant that a patent was pending, and there was evidence that the defendant "knew of 8 the value of the invention" and of "the similarity between the allegedly infringing product 9 and the invention" as disclosed in the presentation. In rejecting the defendant’s arguments 10 based on State Industries that these facts were insufficient, the Court wrote that a contrary 11 ruling "would allow even copiers to shelter themselves from liability for willfulness [or 12 induced infringement] merely by avoiding confirmation by what they, in essence, already 13 knew." Id. Other cases are to the same effect. See, e.g., DataTreasury Corp. v. Wells 14 Fargo, No. 2:06-CV-72 DF, 2010 WL 5140741, at *4 (E.D. Tex. Sept. 27, 2010) (pre-suit 15 knowledge where plaintiff disclosed application and defendant visited plaintiff’s facility); 16 Smartflash LLC v. Apple Inc., No. 13cv447, 2015 WL 661276, at *6 (E.D. Tex. Feb. 13, 17 2015) (pre-suit knowledge where facts showed prior commercialization efforts ultimately 18 connected with defendant). Indeed, the seminal Supreme Court case recognizing the willful 19 blindness doctrine in patent cases, Global-Tech Appliances, Inc. v. SEB S.A., upheld a 20 finding of pre-suit knowledge where the plaintiff had never notified the defendant of either 21 the existence of the patent at issue or any related application. 563 U.S. at 771 ("[T]his 22 evidence is more than sufficient for a jury to find that [Defendant] subjectively believed 23 that there was a high probability the [Plaintiff’s] fryer was patented...." (emphasis 24 added)). 25 26 27 actual knowledge" and that a defendant "who know[s] enough to blind themselves to direct 28 proof of critical facts in effect ha[s] actual knowledge of those facts."). 29 6 Case 2:16-cv-02026-DGC Document 175 Filed 05/26/17 Page 12 of 19 1 This case is more like those cases which found allegations of pre-suit inducement 2 sufficient even in the absence of direct evidence of knowledge of the precise patents-in-suit. 3 Like those cases, Continental has pled a commercial relationship with Intel regarding the 4 product which came to embody the patented inventions. SAC ¶ 25. Like some of those 5 cases, Continental submitted two patents and a pending patent application, which became 6 the patents-in-suit, to Intel. Id. ¶¶ 38-44. Importantly, although those disclosures involved 7 different claims, they nevertheless disclosed the innovative ideas which make up the 8 inventions claimed in the patents-in-suit. Id. 9 Given Intel’s sophistication in chip technology, it is a plausible inference based on 10 the pleaded facts that Intel was aware of the importance of the technology claimed. And 11 because of that ability to recognize the importance of the ideas disclosed, it is at least a 12 plausible inference that Intel would have recognized that those ideas were more likely to 13 result in a protectable portfolio than the typical "unforeseeable" generic application. See, 14 e.g., Tomita Techs, 2012 WL 2524770, at *10. This inference is significantly strengthened 15 by Continental and Intel’s collaboration on a product which came to embody the 16 technology during the time of the invention, and Intel’s close relationship with Ibiden, a 17 company with pre-suit knowledge of the patents. Taken together, the totality of the 18 circumstances yields a plausible inference that Intel either actually discovered the patents-19 in-suit pre-suit or else failed to do so because it deliberately avoided discovering them. 20 Chestnut Hill Sound Inc. v. Apple Inc., No. 15-cv-261, Slip. Op. at 1 (D. Del. Feb. 29, 21 2016). 22 Intel also implies that Continental is additionally required to plead the "deliberate 23 steps" that Intel has taken to avoid learning of the patent and that allowing discovery on this 24 issue would provide an "affirmative duty" in all cases to "sniff out" potential patents. Dkt. 25 No. 144 at 9-10. Courts around the country have rejected Defendants’ request for requiring 26 facts pled to prove a negative. See Driessen v. Sony Music Entm't, No. 09 Civ. 0140, 2013 27 WL 4501063, at *2 (D. Utah Aug. 22, 2013) (characterizing any such requirement as 28 "illogical"); Simplivity Corp. v. Springpath, Inc., No. 4:15-13345, 2016 WL 5388951, at 29 7 Case 2:16-cv-02026-DGC Document 175 Filed 05/26/17 Page 13 of 19 1 *10 (D. Mass. July 15, 2016) ("Confirmation of the existence of'something that does not 2 exist’ necessarily will require discovery and expert analysis."). Further, Defendants’ 3 arguments miss the point. The point of the willful blindness allegations is that, given the 4 foregoing factual background, Intel likely knew of the patents-in-suit. To the extent it did 5 not, it is more than inferentially plausible that the reason Intel did not know of the patents 6 because it deliberately avoided learning of them. But the specific steps Intel took is a 7 category of information that is not conducive to pleading because it is uniquely within 8 Intel’s private custody. 9 Consider the facts in Global-Tech. There, the Supreme Court upheld a willful 10 blindness finding where: the infringer purchased a competitor’s foreign product—rather 11 than its identical U.S. product—and copied it, knowing a foreign product would not have 12 patent markings. The defendant also refused to disclose to its clearance attorney that it had 13 developed its product by copying the patentee’s design. But although these facts were 14 critical to the Supreme Court’s holding that the defendant had been willfully blind to 15 infringement, this category of facts is unknowable until discovery—highlighting that 16 specific "deliberate steps" need not be pleaded at the complaint stage. 17 Allowing discovery on this issue also does not create an affirmative duty to "sniff 18 out" patents in all circumstances. As the cases like Tomita Technologies and Chestnut Hill 19 make clear, an accused infringer cannot avoid pre-suit knowledge simply by "avoiding 20 confirmation" of what the accused infringer "already knew." Tomita Techs, 2012 WL 21 2524770, at *10. The totality of these allegations shows that Intel plausibly already knew 22 that the technology claimed was patented and, at most, merely avoided confirming it. This 23 is sufficient to state a claim. 24 In any event, even were the Court to find that the totality of these allegation 25 insufficient to state a plausible claim pre-suit, post-suit inducement should nevertheless 26 remain in the lawsuit. Because Intel is now aware of the patents-in-suit and how it 27 infringes those patents-in-suit, Intel’s motion to dismiss the inducement claim should be 28 denied. Windy City Innovations, LLC v. Microsoft Corp., 193 F. Supp. 3d 1109, 1116 29 8 Case 2:16-cv-02026-DGC Document 175 Filed 05/26/17 Page 14 of 19 1 (N.D. Cal. 2016) ("Nevertheless, to the extent that the complaint alleges claims of induced 2 infringement after the filing of the suit, courts have held that post-suit knowledge is 3 sufficient to sustain a finding that defendant had the requisite knowledge to support claims 4 for indirect infringement."). 5 III. Continental Sufficiently Pled Willful Infringement. 6 In 2016, the Supreme Court made it easier to prove willful infringement. Halo 7 Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923 (2016). For one, Halo lowered the 8 standard of proof from clear and convincing to preponderance of the evidence. Id. at 1934. 9 Second, the Court abrogated the objective prong of Seagate’s willfulness test, holding "that 10 objective reasonableness of the infringer’s litigation defense does not preclude a finding of 11'willful misconduct.’" Innovention Toys LLC v. MGA Entertainment, Inc., 667 Fed. App’x 12 992, 994 (Fed. Cir. 2016). However: 13 Halo did not disturb the substantive standard for the second prong of Seagate, subjective willfulness. Rather, Halo emphasized that subjective willfulness 14 alone—i.e., proof that the defendant acted despite a risk of infringement that 15 was "‘either known or so obvious that it should have been known to the accused infringer,’" Halo, 136 S.Ct. at 1930 (quoting Seagate, 497 F.3d at 16 1371)—can support an award of enhanced damages. 17 WesternGeco LLC v. Ion Geophysical Corp., 837 F.3d 1358, 1362 (Fed. Cir. 2016). 18 (emphasis added). Thus, in retaining the subjective prong of Seagate’s test, Halo has not 19 entirely rewritten the law on willfulness. And while "Halo’s effect on the pleading 20 standard for willful infringement remains unclear," courts have indicated this ambiguity 21 counsels against dismissal at the 12(b)(6) stage. Bobcar Media, LLC v. Aardvark Event 22 Logistics, Inc., No. 16-cv-885, 2017 WL 74729, at *6 (S.D.N.Y. Jan. 4, 2017) ("At a 23 minimum, the discretion that Halo confers on district courts to award enhanced damages 24 based on the nature of the specific misconduct in a given case counsels hesitation before 25 dismissing allegations of willfulness at the pleading stage."); WesternGeco, 837 F.3d at 26 1362 ("Halo held that district courts must have greater discretion in awarding enhanced 27 damages.") (emphasis added). 28 29 9 Case 2:16-cv-02026-DGC Document 175 Filed 05/26/17 Page 15 of 19 1 Defendants simply ignore Halo’s lowered burden for proving and pleading willful 2 infringement. First, in addressing the issue "of pre-suit knowledge by Intel," Defendants 3 merely incorporate by reference their discussion from the inducement section of the 4 motion. Dkt. 144 at 13. Defendants do not challenge the Court’s finding that Continental 5 has plausibly alleged pre-suit knowledge of the patents-in-suit by Ibiden. See Dkt. 112 at 6 15. Regarding Intel’s pre-suit knowledge, while knowledge remains a factor in determining 7 willfulness, sufficient allegations are not limited to actual knowledge. Circumstantial 8 evidence or willful blindness is sufficient to plead knowledge of the patents for purposes of 9 willfulness. Dkt. 112 at 19 ("‘[A] person is reckless if he acts "knowing or having reason 10 to know of facts which would lead a reasonable man to realize" his actions are 11 unreasonably risky.’") (emphasis in original) (quoting Halo, 136 S. Ct. at 1933); Glob.-12 Tech Appliances, Inc., 563 U.S. at 766 (reasoning that a willfully blind defendant is "as 13 culpable as [one] who ha[s] actual knowledge" and that a defendant "who know[s] enough 14 to blind themselves to direct proof of critical facts in effect ha[s] actual knowledge of those 15 facts."); Blitzsafe Tex., LLC v. Volkswagen Group of Am., Inc., No. 2:15-cv-1274, 2016 WL 16 4778699, *6 (E.D. Tex. Aug. 19, 2016) (denying a motion to dismiss by applying the law 17 of willful blindness to willful infringement allegations and finding that State Indus. Inc. v. 18 A.O. Smith Corp., 751 F.2d 1226 (Fed. Cir. 1986) "does not hold that no matter the context, 19 a party’s exposure to a patent application cannot give rise to knowledge of the claims in a 20 later-issued patent."). Accordingly, as explained supra, Continental has plausibly pled 21 facts sufficient to show that Intel had pre-suit knowledge of the patents—or, at least, was 22 willfully blind to its pre-suit infringement. 23 Second, Defendants seek to dismiss Continental’s willfulness claims for allegedly 24 pleading facts that are "far short of the'egregious’ conduct required under Halo." Dkt. 144 25 at 13. Respectfully, it is the wrong procedural question to ask whether Continental has 26 sufficiently pled "egregiousness." Defendants’ argument conflates two separate procedural 27 steps of Halo: first, willfulness is determined, and then, egregiousness is analyzed to 28 determine how much to enhance damages. Innoventions Toys, 667 Fed. App’x at 993-994 29 10 Case 2:16-cv-02026-DGC Document 175 Filed 05/26/17 Page 16 of 19 1 (upholding the district court’s finding regarding willfulness, which was not disturbed by 2 Halo, but remanding for the trial court to reconsider enhancement under Halo’s 3 egregiousness guidance); WesternGeco, 837 F.3d 1363-64 (remanding for the trial court to 4 reconsider the willfulness issue under the lowered burden of proof, and also remanding—as 5 a separate issue—the scope of enhanced damages under Halo’s egregiousness guidance if 6 the trial court first upholds the finding of willfulness); Core Wireless Licensing S.A.R.L. v. 7 LG Elecs., Inc., No. 2:14-cv-911, 2016 WL 4596118, at *2 (E.D. Tex. Sept. 3, 2016) 8 ("Whether the Court finds it appropriate to enhance damages based on a finding of 9 willfulness is a separate question from whether a defendant willfully infringed a patent."); 10 Power Integration, Inc. v. Fairchild Semiconductor, Inc., No. 09-cv-05235, 2017 WL 11 130236, at *2-*5 (N.D. Cal. Jan. 13, 2017) (reinstating the jury’s finding of subjective 12 willfulness after Halo removed Seagate’s objective prong, but denying enhanced damages 13 based on procedurally separate analysis into whether the defendant’s conduct was 14 sufficiently egregious under Halo). Neither case cited by Defendants challenges this 15 procedural framework, but rather elide the two steps into one. Jenkins v. LogicMark, LLC, 16 2017 WL 376154, at *5 (E.D. Va. Jan. 25, 2017); CG Tech. Dev., LLC v. Zynga, Inc., 2017 17 WL 662489, at *4 (D. Nev. Feb. 17, 2017). However, the Court need not finally determine 18 whether it was proper for these two cases to ignore the post-Halo procedural framework in 19 Innovention Toys and WesternGeco because the facts of these two cases are markedly 20 different from this one. In those cases, the plaintiff merely pleaded, with nothing more, that 21 the defendant knew of the patent and kept selling the product. Jenkins, 2017 WL 376154 at 22 *5-*6; CG Tech., 2017 WL 662489 at *4. 23 On the other hand, as discussed above and in prior briefing, Continental has pled 24 many more facts showing the pre-suit relationship between the parties sufficient to show 25 that Defendants’ actions go beyond those "in a typical infringement case." Halo, 136 S. Ct. 26 at 1932. Indeed, contrary to the cases cited by Defendants, post-Halo cases have found 27 willfulness plausibly pled on significantly less "egregious" facts. See Bobcar Media, 2017 28 WL 74729, *6 (finding sufficiently plausible allegations based only on several letters sent 29 11 Case 2:16-cv-02026-DGC Document 175 Filed 05/26/17 Page 17 of 19 1 to defendant); Huawei Techs. Co. Ltd. V. T-Mobile US, Inc., No. 2:16-cv-52, 2017 WL 2 1129951, at *4 (E.D. Tex. Feb. 21, 2017); Finjan, Inc. v. ESET, LLC, No. 3:17-cv-183, 3 2017 WL 1063475, at *4 (S.D. Cal. Mar. 21, 2017); PanOptis Patent Mgmt., LLC v. 4 Blackberry Corp., No. 2:16-cv-59, 2017 WL 780885, at *5 (E.D. Tex. Feb. 10, 2017). 5 Even the Federal Circuit has recognized that Halo’s colorful language regarding 6 egregiousness is not a new standard out of whole cloth. WBIP, LLC v. Kohler Co., 829 7 F.3d 1317, 1340 (Fed. Cir. 2016) (equating run-of-the-mill copying with "‘plundering’"). 8 Moreover, allowing discovery on this issue does not increase any burdens on the 9 parties. As to Ibiden, because discovery will already be conducted on at least Ibiden’s pre-10 suit knowledge of the patents as part of Continental’s indirect infringement claims against 11 Ibiden, there will be minimal additional burden to Ibiden in defending willfulness 12 allegations concerning the same facts. Because Continental Circuits new factual material 13 also sufficiently pleads inducement against Intel, willfulness discovery will be similarly 14 overlapping. On the other hand, if the Court dismisses Continental’s willfulness 15 allegations—which Continental believes to be plausibly pled—Continental will be greatly 16 harmed. Taking discovery on willfulness issues is important to Continental, and it is 17 justified under the circumstances; rarely do defendants announce in their publicly available 18 marketing materials that they took key technology from another company. 19 Finally, to the extent the Court finds that Continental has not pled sufficiently 20 plausible facts to support its pre-suit willfulness allegations, the Court should at least find 21 that Continental has sufficiently pled facts to support post-suit willful infringement. In 22 addition to all of the facts supporting its pre-suit willfulness allegations, it is undisputed 23 that Defendants continue to brazenly sell the infringing Accused Instrumentalities despite 24 being on notice of Continental’s infringement theories. Accordingly, the Court should 25 allow Continental, at least, to go forward with its post-suit willfulness allegations—a 26 practice that remains proper following Halo in these circumstances. Mentor Graphics 27 Corp. v. EVE-USA, Inc., No. 2015-1470, 2017 WL 1024502, at *12-13 (Fed. Cir. Mar. 16, 28 2017) (finding district court abused its discretion in dismissing post-suit willfulness 29 12 Case 2:16-cv-02026-DGC Document 175 Filed 05/26/17 Page 18 of 19 1 allegations because plaintiff did not file motion for preliminary injunction); Simplivity, 2 2016 WL 5388951, at *18; Dermafocus LLC v. Ulthera, Inc., 201 F. Supp. 3d 465, 472-73 3 (D. Del. 2016); Roberston Transformer Co. v. Gen. Elec. Co., No. 12-c-8094, 2016 WL 4 4417019, at *8 (N.D. Ill. Aug. 19, 2016); Huawei Techs., 2017 WL 1129951, at *4; 5 Blitzsafe Tex, 2016 WL 4778699, *7; Polara Eng’g, Inc. v. Campbell Co., No. 13-7, 2017 6 WL 754609, at *26 (S.D. Cal. Feb. 27, 2017). Accordingly, the Court should deny 7 Defendants’ motion to dismiss Continental’s willful infringement claims. 8 IV. Conclusion. 9 For the reasons stated above, Continental respectfully requests that the Court deny 10 Defendants’ Motion. 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 13 Case 2:16-cv-02026-DGC Document 175 Filed 05/26/17 Page 19 of 19 1 Dated this 12th day of April, 2017. 2 3 CALDWELL CASSADY CURRY P.C 4 5 By/s/Bradley W. Caldwell 6 Bradley W. Caldwell (pro hac vice) Jason D. Cassady (pro hac vice) 7 J. Austin Curry (pro hac vice) Warren J. McCarty (pro hac vice) 8 Jason S. McManis (pro hac vice) 9 2101 Cedar Springs Rd., Suite 1000 Dallas, Texas 75201 10 11 AIKEN SCHENK HAWKINS & RICCIARDI P.C. Joseph A. Schenk 12 2390 East Camelback Road, Suite 400 Phoenix, Arizona 85016 13 14 ATTORNEYS FOR PLAINTIFF 15 CONTINENTAL CIRCUITS, LLC 16 17 CERTIFICATE OF SERVICE 18 The undersigned certifies that all counsel of record are being served with a copy of 19 the foregoing document via electronic mail on this 12th day of April, 2017. 20/s/Bradley W. Caldwell (pro hac vice) Bradley W. Caldwell 21 22 23 24 25 26 27 28 29

ORDER granting {{176}} (1) the page limit for opening and responsiveclaim construction briefs is twenty-two pages; and (2) the parties may present the Court with three categories of claim construction disputes (not including disputes over terms that Defendants assert are indefinite) as set forth in the parties Joint Claim Construction Statement, even if those disputes implicate more than ten claim terms. Signed by Judge David G Campbell on 6/2/2017.

Case 2:16-cv-02026-DGC Document 181 Filed 06/02/17 Page 1 of 1 1 2 3 4 5 6 UNITED STATES DISTRICT COURT 7 FOR THE DISTRICT OF ARIZONA 8 Continental Circuits LLC, Case No. CV-16-2026-PHX-DGC 9 Plaintiff, ORDER REGARDING CLAIM CONSTRUCTION BRIEFING 10 vs. PAGE LIMITS AND NUMBER OF TERMS 11 Intel Corporation; Ibiden U.S.A. Corporation; and 12 Ibiden Co., Ltd., 13 Defendants. 14 15 Having considered the Parties’ Stipulated Request Regarding Claim Construction 16 Briefing Page Limits and Number of Terms, and good cause appearing therefor, 17 IT IS HEREBY ORDERED that (1) the page limit for opening and responsive 18 claim construction briefs is twenty-two pages; and (2) the parties may present the Court 19 with three categories of claim construction disputes (not including disputes over terms 20 that Defendants assert are indefinite) as set forth in the parties’ Joint Claim Construction 21 Statement, even if those disputes implicate more than ten claim terms. 22 Dated this 2nd day of June, 2017. 23 24 25 26 27 28

TRANSCRIPT REQUEST Status Conference by Continental Circuits LLC for proceedings held on 6/2/2017, Judge David G Campbell hearing judge(s).

OAO 435 Case 2:16-cv-02026-DGC Document Administrative Office of the 182 Filed 06/05/17 Page United States Courts 1 of 1USE ONLY FOR COURT AZ Form (Rev. 1/2015) DUE DATE: TRANSCRIPT ORDER 1. NAME 2. PHONE NUMBER 3. DATE Bradley W. Caldwell (pro hac vice) 214-888-4848 6/5/2017 4. FIRM NAME Caldwell Cassady Curry P.C. 5. MAILING ADDRESS 6. CITY 7. STATE 8. ZIP CODE 2101 Cedar Springs Road, Ste. 1000 Dallas TX 75201 9. CASE NUMBER 10. JUDGE DATES OF PROCEEDINGS 2:16-cv-02026-DGC David G. Campbell 11. 6/2/2017@3:00 pm 12. 13. CASE NAME LOCATION OF PROCEEDINGS Continental Circuits, LLC v. Intel Corp., et. al. 14. Phoenix 15. STATE AZ 16. ORDER FOR 9 APPEAL 9 CRIMINAL 9 CRIMINAL JUSTICE ACT BANKRUPTCY 9 NON-APPEAL ✔ 9 CIVIL 9 IN FORMA PAUPERIS OTHER (Specify) 17. TRANSCRIPT REQUESTED (Specify portion(s) and date(s) of proceeding(s) for which transcript is requested.) PORTIONS DATE(S) PORTION(S) DATE(S) 9VOIR DIRE 9TESTIMONY (Specify) 9OPENING STATEMENT (Plaintiff) 9OPENING STATEMENT (Defendant) 9CLOSING ARGUMENT (Plaintiff) 9PRE-TRIAL PROCEEDING 9CLOSING ARGUMENT (Defendant) 9OPINION OF COURT 9JURY INSTRUCTIONS ✔9OTHER (Specify) 9SENTENCING Status Conference 6/2/2017 9BAIL HEARING 18. ORDER ORIGINAL + 1 FIRST # OF DELIVERY INSTRUCTIONS CATEGORY (original to Court, ADDITIONAL ESTIMATED COSTS COPY (Check all that apply.) copy to ordering party) COPIES 30 DAYS 9 9 PAPER COPY 14 DAYS 9 9 ✔ PDF (e-mail) 7 DAYS 9 ✔ 9 ASCII (e-mail) DAILY 9 9 HOURLY 9 9 REALTIME 9 9 E-MAIL ADDRESS CERTIFICATION (19. & 20.) continental@caldwellcc.com By signing below, I certify that I will pay all charges (deposit plus additional). 19. SIGNATURE NOTE: IF ORDERING MORE THAN ONE FORMAT, s/Bradley W. Caldwell (pro hac vice) THERE WILL BE AN ADDITIONAL CHARGE. 20. DATE 6/5/2017 TRANSCRIPT TO BE PREPARED BY ESTIMATE TOTAL PROCESSED BY PHONE NUMBER ORDER RECEIVED DATE BY DEPOSIT PAID DEPOSIT PAID TRANSCRIPT ORDERED TOTAL CHARGES TRANSCRIPT RECEIVED LESS DEPOSIT ORDERING PARTY NOTIFIED TOTAL REFUNDED TO PICK UP TRANSCRIPT PARTY RECEIVED TRANSCRIPT TOTAL DUE DISTRIBUTION: COURT COPY TRANSCRIPTION COPY ORDER RECEIPT ORDER COPY

TRANSCRIPT REQUEST by Ibiden Company Limited, Intel Corporation for proceedings held on June 2, 2017, Judge David G Campbell hearing judge(s).

OAO 435 Case 2:16-cv-02026-DGC Document Administrative Office of the 183 Filed 06/05/17 Page United States Courts 1 of 1USE ONLY FOR COURT AZ Form (Rev. 1/2015) DUE DATE: TRANSCRIPT ORDER 1. NAME 2. PHONE NUMBER 3. DATE Chad S. Campbell 602-351-8000 June 5, 2017 4. FIRM NAME Perkins Coie LLP 5. MAILING ADDRESS 6. CITY 7. STATE 8. ZIP CODE 2901 N. Central Avenue, Suite 2000 Phoenix AZ 85012 9. CASE NUMBER 10. JUDGE DATES OF PROCEEDINGS 2:16-cv-02026-DGC David G. Campbell 11. 6/2/17@3:00 p.m. 12. 13. CASE NAME LOCATION OF PROCEEDINGS Continental Circuits LLC v. Intel Corp., et al. 14. Phoenix 15. STATE Arizona 16. ORDER FOR 9 APPEAL 9 CRIMINAL 9 CRIMINAL JUSTICE ACT BANKRUPTCY 9 NON-APPEAL ✔ 9 CIVIL 9 IN FORMA PAUPERIS OTHER (Specify) 17. TRANSCRIPT REQUESTED (Specify portion(s) and date(s) of proceeding(s) for which transcript is requested.) PORTIONS DATE(S) PORTION(S) DATE(S) 9VOIR DIRE 9TESTIMONY (Specify) 9OPENING STATEMENT (Plaintiff) 9OPENING STATEMENT (Defendant) 9CLOSING ARGUMENT (Plaintiff) 9PRE-TRIAL PROCEEDING 9CLOSING ARGUMENT (Defendant) 9OPINION OF COURT 9JURY INSTRUCTIONS ✔9OTHER (Specify) 9SENTENCING Status Conference 6/2/17 at 3:00 p.m. 9BAIL HEARING 18. ORDER ORIGINAL + 1 FIRST # OF DELIVERY INSTRUCTIONS CATEGORY (original to Court, ADDITIONAL ESTIMATED COSTS COPY (Check all that apply.) copy to ordering party) COPIES 30 DAYS 9 9 PAPER COPY 14 DAYS 9 9 ✔ PDF (e-mail) 7 DAYS 9 ✔ 9 ASCII (e-mail) DAILY 9 9 HOURLY 9 9 REALTIME 9 9 E-MAIL ADDRESS CERTIFICATION (19. & 20.) cscampbell@perkinscoie.com By signing below, I certify that I will pay all charges (deposit plus additional). 19. SIGNATURE NOTE: IF ORDERING MORE THAN ONE FORMAT, s/Chad S. Campbell THERE WILL BE AN ADDITIONAL CHARGE. 20. DATE June 5, 2017 TRANSCRIPT TO BE PREPARED BY ESTIMATE TOTAL PROCESSED BY PHONE NUMBER ORDER RECEIVED DATE BY DEPOSIT PAID DEPOSIT PAID TRANSCRIPT ORDERED TOTAL CHARGES TRANSCRIPT RECEIVED LESS DEPOSIT ORDERING PARTY NOTIFIED TOTAL REFUNDED TO PICK UP TRANSCRIPT PARTY RECEIVED TRANSCRIPT TOTAL DUE DISTRIBUTION: COURT COPY TRANSCRIPTION COPY ORDER RECEIPT ORDER COPY

Declaration of Warren J. McCarty

Case 2:16-cv-02026-DGC Document 189-1 Filed 06/08/17 Page 1 of 3 1 AIKEN SCHENK HAWKINS & RICCIARDI P.C. 2390 East Camelback Road, Suite 400 2 Phoenix, Arizona 85016 Telephone: (602) 248-8203 3 Facsimile: (602) 248-8840 E-Mail: docket@ashrlaw.com 4 E-Mail: jas@ashrlaw.com Joseph A. Schenk – 009260 5 Bradley W. Caldwell (pro hac vice) 6 Jason D. Cassady (pro hac vice) J. Austin Curry (pro hac vice) 7 Warren J. McCarty (pro hac vice) CALDWELL CASSADY CURRY P.C. 8 2101 Cedar Springs Rd., Suite 1000 Dallas, Texas 75201 9 Telephone: (214) 888-4848 Facsimile: (214) 888-4849 10 Email: bcaldwell@caldwellcc.com Email: jcassady@caldwellcc.com 11 Email: acurry@caldwellcc.com Email: wmccarty@caldwellcc.com 12 Email: jmcmanis@caldwellcc.com 13 Attorneys for Plaintiff Continental Circuits, LLC 14 IN THE UNITED STATES DISTRICT COURT 15 FOR THE DISTRICT OF ARIZONA 16 Continental Circuits LLC, CASE NO. CV-16-2026-PHX-DGC 17 Plaintiff, 18 DECLARATION OF WARREN J. v. MCCARTY IN SUPPORT OF 19 CONTINENTAL CIRCUITS LLC’S Intel Corp., Ibiden U.S.A. OPENING CLAIM CONSTRUCTION 20 Corp., Ibiden Co., Ltd., BRIEF 21 Defendants. 22 23 24 25 26 27 28 29 Case 2:16-cv-02026-DGC Document 189-1 Filed 06/08/17 Page 2 of 3 1 I, Warren J. McCarty III, declare as follows: 2 I am an attorney at the law firm of Caldwell Cassady Curry P.C.. I am admitted to 3 practice in the State of Illinois. I submit this declaration based on personal knowledge and 4 following a reasonable investigation. If called upon as a witness, I could and would 5 competently testify to the truth of each statement herein. 6 1. The document attached as Exhibit A is a true and correct copy of Declaration 7 of Paul Hoffman, dated June 8, 2017. 8 2. The document attached as Exhibit B is a true and correct copy of a 9 comparative claim construction chart, including Appendices A, B, and C. 10 3. The document attached as Exhibit C is a true and correct copy of Intel 11 Corporation’s "From Sand to Silicon'Making of a Chip’ Illustrations," dated April 2011. 12 4. The document attached as Exhibit D is a true and correct copy of Response to 13 Office Action, Appln. No. 08/905,619, dated April 27, 1999. 14 5. The document attached as Exhibit E is a true and correct copy of Office 15 Action, Appln. No. 08/905,619, dated July 14, 1999. 16 6. The document attached as Exhibit F is a true and correct copy of Final Office 17 Action, Appln. No. 12/363,501, dated April 11, 2012. 18 7. The document attached as Exhibit G is a true and correct copy of Amendment 19 and Response to Office Action, dated June 25, 2012. 20 8. The document attached as Exhibit H is a true and correct copy of Declaration 21 of Professor C. P. Wong, Ph.D., dated June 23, 2012. 22 9. The document attached as Exhibit I is a true and correct copy of Declaration 23 of Professor C. P. Wong, Ph.D., dated February 26, 2007. 24 25 I declare under penalty of perjury that the foregoing is true and correct. 26 Executed on June 8, 2017./s/Warren J. McCarty III (pro hac vice) Warren J. McCarty III 27 28 29-1-Case 2:16-cv-02026-DGC Document 189-1 Filed 06/08/17 Page 3 of 3 1 CERTIFICATE OF SERVICE 2 The undersigned certifies that all counsel of record are being served with a copy of 3 the foregoing document via the Court’s electronic filing system on this 8th day of June, 4 2017. 5/s/Warren J. McCarty III (pro hac vice) Warren J. McCarty III 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29-2-

ORDER granting/denying in part {{142}} (redacted version), {{147}} (sealed version) Motion to Dismiss for Failure to State a Claim to State a Claim. The motion is granted as to Plaintiff's (a) direct infringement claims against Ibiden as to unnamed products sold to customers other than Intel, (b) indirect infringement claims related to the unnamed Ibiden products intended for customers other than Intel, and (c) willfulness claims against both Defendants. The motion is denied as to Plaintiff's induced infringement claims against Intel. Signed by Judge David G Campbell on 6/16/17.

Case 2: 16-cv-02026-DGC Document 197 Filed 06/19/17 Page 1 of 18 wo-0 O 0 N o un a w N IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF ARIZONA Continental Circuits LLC, No. CV16-2026 PHX DGC ELyuissexuassassessmenis senamiestissementienterian Persatuan SIISYEN Axei szervezetesekesa NKLIKLARINI ANIMEAXIMIzanNALwateixa VIKENIKENIKENIKENIKENIKEestion ist eine Kirche HYNLLUNSAANNAMAMARAAN NARAAMATKALTAKESAKLANKEERUVANANTONIN AARLENEKANKANNYA UNTUK SENYALAKAN KERANA KATIKA KANISA LA NAISSANCE Plaintiff, ORDER Intel Corporation, et al., Defendants. Defendants Ibiden U. S. A. Corp. and Ibiden Co. Ltd. (collectively, " Ibiden ") and Intel Corp. jointly move to dismiss Plaintiff Continental Circuits LLC's second amended complaint (Docs. 128 (sealed version), 133 (redacted version) under Federal Rule of Civil Procedure 12 (6X6). Docs. 142 (redacted version), 147 (sealed version). The motion has been fully briefed. Docs. 142, 155, 175. For the reasons that follow, Defendants' motion to dismiss will be granted in part and denied in part. I. Background. For the second time, Defendants move to dismiss Plaintiff's complaint on the basis of factual insufficiency. Because the Court recounted the facts and procedural history of I The second amended complaint and the papers related to this motion have been filed under seal. Where possible, the Court has cited the non-redacted, publicly-available versions of these documents. In the public version of this order, sealed information has been redacted. 182N9882 NASSISSESS: ೧೪ಳಿ ESS: 29 ANNE Eಟಿಬೆಟಿ SHಣ: RNAKEE:ಃ9ರಂಜREಳWARKS ಒಟ೬೫ಂಬಿಐMಂಪಿ. ೧೦೦ (Mರ್aಜೆಪಿ ಜಂಇಜಿಎ ಇ ಇಬಜೆಟKCಂದು ರ್ಪTN ಇಳಿಸಿ ಒಳಗೆ ಇದೆ. ಸಂಬಳಿವಿಡಿ: 2²: ೯. ೫೦೦೦ Case 2: 16-cv-02026-DGC Document 197 Filed 06/19/17 Page 2 of 18 sexistisissa Sisiliastkassenweil YAIMISISSA 5 T E R N = 5 6% a un » w N this case in detail in its previous order granting Defendants' first motion to dismiss in part (Doc. 112), only a brief review is needed here. Defendant Ibiden produces package substrates See Doc. 133, 11 51, 110, 154; Doc. 147, at 9. 2 These substrates are used in computer electronics, including computer processors manufactured by Defendant Intel. See Doc. 133, 11 49-51. The two companies worked together to develop the specifications that Intel expects Ibiden's substrates to meet. Id., 19 52, 55-56. Computer circuit boards like those in Intel's products are made of alternating layers of conductive and non-conductive materials. See id, q 29. When adhesion between the layers is poor, they can separate. See id. In the 1990s, four employees of Continental Circuits, Inc., a now-defunct circuit-board manufacturer, invented a " novel surface roughening technique " using etching to create a " non-uniformly roughened surface " that allows for stronger adhesion between layers. Id., II 28-29, 120. The four co-inventors applied to patent the surface-roughening technology in 1997, and two patents were issued in 2000 and 2004, respectively. Doc. 52, at 6; see also Doc. 133, q 12-13. Those patents are not at issue in this case. A continuation application was filed by early 2005, and eventually resulted in issuance of the four patents that are at issue in this action: U. S. Patent Nos. 7, 501, 582 (2009), 8, 278, 560 (2012), 8, 581, 105 (2013), and 9, 374, 912 (2016) (collectively, the " patents-in-suit "). See Doc. 133, II 14-17, 35-36. Plaintiff Continental Circuits LLC is a non-operating entity that was formed in 2016 and owns the patents-in-suit. ' Doc. 49, at 11 n. 8; Doc. 133, 119. The day after the last of the patents-in-suit was issued, plaintiff initiated this action. See Doc. 1. The original and first amended complaints alleged that both Defendants infringed the patents in-suit directly, indirectly, and willfully. Doc. 95, 1 120-55. G = 5 rieka RESERATANIPARENTALS Aereseteateraecedentikitettureiterorkesaxativusele ENDANAALALAKINYARANKAN UPigeonischen Kaiserstehen MICHAEL HARRIS SAAMANAN MUKAAN EtteAHALUAMALARIUMIKSURUNKANUNIYYATAKAN MENANYAKAN ANAKNYA MEREKA TELAH MENIKA KUANDIKA MAKANAN TRADHISIONALNYANGKUMIKILALANINIERA AMAHLERAALINAMAMAHALAAN NAKAKAKILANG KAMXOVIRANJAUANGAWASAN SEKITARehienean, MASARAYARAK ASASI MANYARALAN statusKIKBAKANI OLMAMASstesterterarteenwog 120 katika Kwentkeza kuwekwekktur Ymerouwweverwitwetenskapsakingiaus 2 Page citations are to the numbers placed at the top of each page by the Court's CM/ECF system rather than the documents' original page numbers. 3 Continental Circuits Inc. changed its name in 1997 and dissolved in 2013. Doc. 49, at 11 n. 8; Doc. 52, at 6 n. 2. 2-Case 2: 16-cv-02026-DGC Document 197 Filed 06/19/17 Page 3 of 18 Raidariedavomiksieskovcardzo f Plaintiff claims that a former employee of Continental Circuits " shared the technology described in the patents-in-suit with Ibiden " in 1997, as Ibiden's " supplier relationship with Intel " was growing. Id., TJ 29-33. According to Plaintiff, Ibiden and Intel " collaborate [d]... to develop specifications for the design of packaging to ultimately be used in Intel products. " Id., 145. As a result, certain Intel product lines came to " meet or embody the limitations of at least one claim " of each of the patents-in suit, as did " any Package Substrates manufactured by Ibiden for Intel or others. " id., 51-100, 103. Plaintiff alleges that both Defendants learned of the pending continuation application that eventually became the patents-in-suit through a 2005 letter from a " representative of Continental Circuits " to the heads of their respective legal departments. See id., 11 34-37. Plaintiff further asserts that a " representative of Continental Circuits... confirmed " in a 2014 conversation with an Ibiden manager " that the technology claimed in the patents-in-suit is still in use. " Id., 141. On February 21, 2017, this Court granted in part and denied in part motions to dismiss filed by Defendants. Doc. 112, at 20. In the ensuing months, discovery has continued and Plaintiff has amended its complaint a second time. Docs. 128, 133. Defendants now jointly move to dismiss the second amended complaint in part, arguing that Plaintiff " has still failed to come forward with plausible allegations " to support a number of its claims. Doc. 142, at 6. II. Legal Standard. The Court will not grant a motion to dismiss under Rule 12 (b) (6) unless the complaint either lacks a cognizable legal theory or fails to allege facts sufficient to support its theory. Balistreri v. Pacifica Police Dep' t, 901 F. 2d 696, 699 (9th Cir. 1988). If a complaint sets forth a cognizable legal theory, it will survive a motion to dismiss as long as it contains " sufficient factual matter, accepted as true, to' state a claim to relief that is plausible on its face. ' " " Ashcroft v. Iqbal, 556 U. S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U. S. 544, 570 (2007)). A claim is facially plausible when the SARRERA ERAMATERIAALENBESANIMARKAZMAYARNYZATARANMASINDAN AIKAINEN KANSALLISENCHANIANAUSULENKANTARIKERKETAKOZZATA NELLA CIRCOLAGiritenutupi ANKLARELA AIEMENSASARANDASKALACANESTREKNINKAANSE SAKELARRITANIAKOAkanereisINANINIWAtival BASESINA 26 Case 2: 16-cv-02026-DGC Document 197 Filed 06/19/17 Page 4 of 18 * $ 41 ci iliwa alasiwsiw ANAXIRALARR221222 0 0 0 N a un A w N-complaint's factual allegations " allow [] the court to draw the reasonable inference that the defendant is liable for the misconduct alleged. " Id. " The plausibility standard is not akin to a' probability requirement, " but it asks for more than a sheer possibility that a defendant has acted unlawfully. " Id. (quoting Twombly, 550 U. S. at 556). III. Discussion. In its previous order, the Court dismissed the first amended complaint's direct infringement claims as to Intel's Itanium series processors, chipsets, and wireless network adapters after concluding that Plaintiff had not provided enough facts to make them plausible. Doc. 112, at 10, 20. Plaintiff's second amended complaint no longer advances claims against Intel's wireless network adapters, and Defendants are not seeking dismissal of the newly-pled direct infringement claims against Intel's Itanium processors and chipsets. Doc. 142, at 5 n. 1. Defendants move to dismiss Plaintiff's direct infringement claims against Ibiden as to unnamed products sold to customers other than Intel. The Court previously dismissed these claims, and will do so again. A. Direct Infringement Claims against Unidentified Ibiden Products. 1. Section 271 (a) Claims. A direct infringer under 35 U. S. C. E 271 (a) " makes, uses, offers to sell, or sells any patented invention [] within the United States or imports into the United States any patented invention during the term of the patent. " In its previous order, the Court made clear that the Twombly/Iqbal pleading standard, which requires " enough facts to make [Plaintiff's claims] plausible, " applies to direct infringement claims. Doc. 112, at 7, 10. Plaintiff's first amended complaint alleged infringement by Ibiden products manufactured for unspecified companies other than Intel. See, e. g., Doc. 95, TT 103 (alleging infringement by " any Package Substrates manufactured by Ibiden for Intel or others "), 147 (alleging Ibiden induced infringement by " Intel and other companies supplied by Ibiden "). The Court dismissed these claims because Plaintiff provided " no ANTECEDNIUNII KOUZAINERIUTINISYALARINA KARAMIHAN NAMAN NASIONALMENAUNGANGASIWisinin ARINYATAKARAN NG KANIONIRANIENNEVIENNENARRARENALEZNICERENTUREISSAMMASINISSANAKKAKONTRATAKARRIVAAMASSAsliteiten entzia A TELESERYERANTAMAN NASIONAL KARAKTERİYALARINA KARARE a-4-SKAITNEAR Case 2: 16-cv-02026-DGC Document 197 Filed 06/19/17 Page 5 of 18 1mAssotscalada facts about those unspecified products, and thus set [] forth no plausible basis for infringement by them. " Doc. 112, at 11. In the second amended complaint, Plaintiff redefines these unnamed products as Doc. 128, 161, 104. Rather than adding facts about the products themselves, Plaintiff has added facts, learned in the course of discovery, about-N m + n ° C * O 2 = " a & 1 & & & a Doc. 128, 14 58-61 (footnote omitted). Plaintiff argues that these additional facts satisfy the " purpose of pleading standards " – to give Defendants " fair notice " of the claims so they can " defend [themselves) effectively. " Doc. 175, at 6 (quoting Starr v. Baca, 652 F. 3d 1202, 1216 (9th Cir. 2011)). But Plaintiff candidly acknowledges that it has not identified the allegedly infringing products or the specific facts that show they infringe. See Doc. 170, at 6-8; Doc. 175, at 6-8. Plaintiff attempts to excuse this failure by asserting that Ibiden knows which products, so Ibiden can identify the infringing products. Plaintiff states: " While Continental Circuits and the Court may not yet be able to identify those products, Ibiden can. " Doc. 175, at 8. İMAMLAKUNYAItunate NRLASHMALARA KIEKIS KARTAISARI ALIRAN ANTARA MERAYAKAN KANSKE KANCELARIKAN RAKAITAVILLAND DRINKENNARARRAUNKERINMAALAISLIIKKAAMALLA KANNALTAEHKateckIARRAKKKatieteiden ASIAKIRA nititzending ScinceRSENARAAMATULUISARTA MANNVINUISIKAREN ANTARABARAN 28 5-yadrata Case 2: 16-cv-02026-DGC Document 197 Filed 06/19/17 Page 6 of 18 12 This argument misunderstands modern pleading requirements. As the Supreme Court explained: " A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged. " Iqbal, 556 U. S. at 678 (emphasis added). Plaintiff provides no facts that enable the Court to draw the reasonable inference that Ibiden produces infringing products for other customers. Indeed, it is apparent from the second amended complaint that Plaintiff does not even know if such products exist. Doc. 155, at 5 n. 2. Plaintiff alleges the mere possibility of such infringement, and " where the well-pleaded facts do not permit the court to infer more than the mere possibility of misconduct, the complaint has alleged-but it has not " show [n]' —' that the pleader is entitled to relief. " Id. at 679 (alteration in original) (quoting Fed. R. Civ. P. 8 (a) (2)). Plaintiff alleges that the unnamed products are as the Intel products identified in the second amended complaint, but Plaintiff does not allege facts showing that yields products with the same allegedly-infringing features as the named products. Absent such facts, Plaintiff is left in the same position as before: the second amended complaint, like the first, " contains no facts about those unspecified products. " Doc. 112, at 11. As Defendants point out, " [t] here are no images of substrates of non-Intel products, nor any allegations of common materials, specifications, or parameters " between the named and unnamed products. Doc. 155, at 5-6. " [M] ost courts have, in the wake of Twombly and Iqbal, required some level of specificity regarding the accused product.... Indeed, many courts have even required an exact identification. " Footbalance Sys. Inc. v. Zero Gravity Inside, Inc., No. 15-1058, 2016 WL 903681, at * 4 (S. D. Cal. Feb. 8, 2016) (quoting Wistron Corp. v. Phillip M. Adams & Assocs., LLC, No. 10-4458, 2011 WL 4079231, at * 4 (N. D. Cal. Sept. 12, 2011) (rejecting " generic descriptions " such as " computer chips, motherboards, computers ")). The general consensus in this Circuit is that " the accused products must be identified with' at least minimal specificity. " Anza Tech., Inc. v. Novatel Wireless, Inc., Situs IILANMASINIRLisickneskainida katikKAYNAKLANMAKEMMINKIN KUALA KANKKUROIWIKA MURALKOIXile. KEKAISARANSPARANIANIAWIANYAKAN KAWANAKAAKYMAITIMLEitteMYIAKALNAKAKAISANG KALAKALAN AIRWANAWAKE WANAWAKE ULICERASY KARAKAYAHAN NA MAKAKASAKAWAYAHYALINA ALAMI KAYAMANAN Kwayatuntemattomana ANISMA Sa karaniwandani kukaNTANANARAAMchute Regimi-6- Case 2: 16-cv-02026-DGC Document 197 Filed 06/19/17 Page 7 of 18 Niwedanaskiais serangan akatenariatsitiktinawa: YMINERALLARNYAS Rsikwa 1842 AXANXANASIMAMAXMM16 0 0 00 N a un A w N – No. 16-585, 2016 WL 7555397, at * 3 (S. D. Cal. Nov. 4, 2016) (quoting Avocet Sports Tech., Inc. v. Garmin Int' l, Inc., No. 11-4049, 2012 WL 1030031, at * 2 (N. D. Cal. Mar. 22, 2016)). * Plaintiff contends that it need only " notif [y] Ibiden that it is also accusing of infringement any other package substrates that are not more than colorably different than the specifically named Intel products, regardless of [the) particular customer. " Doc. 175, at 6. In addition to the requirement that Plaintiff plead facts from which the Court can reasonably infer infringement, something the " colorable differences " allegation does not do, the " colorable differences " standard can be found in two areas of patent law, contempt and preclusion, both of which presuppose an existing judgment of infringement. See Tivo Inc. v. EchoStar Corp., 646 F. 3d 869, 881-82 (Fed. Cir. 2011) (contempt for violation of injunction); Hallco Mfg. Co. v. Foster, 256 F. 3d 1290, 1296-98 (Fed. Cir. 2001) (claim preclusion issue). The Court declines Plaintiffs invitation to adopt the " colorable differences " standard as a substitute for the minimal level of fact pleading required by Twombly and Iqbal. Plaintiffs allegations would fail under its own standard in any event – the second amended complaint contains no facts to show how and why the named and unnamed products are similar. The second amended complaint's REYXOMMANDANGANAKALAGAYANLARINA KAUSILAMIEKKAKASARASARANA YAKALAYAMAMLAMAYARANMASINA NAMAN ANG KALAGAYANVANKAMWUAKAAMUA KARAKTERISANAN KAMAKAILAN LASKEMİXAİL KALANGAN KANADALAINEN KANSANEXIXINALARNI AMANYA MENIKA PANCAWALAN NA MAY KAKAISARANNANIMENYANYIKAN LAN KALUWAKUWAIMANAKAHARANARANGALAN SA MANANALAYSAYAKAN KESIHATAN WANARAK ANILKARALIURANSALANAN 4 Compare Glob. Tech Led, LLC v. Every Watt Matters, LLC, No. 15-61933, 2016 U. S. Dist. LEXIS 183122, at * 12-14 (S. D. Fla. July 29, 2016) (denying motion to dismiss where products were identified as " LED Retrofit Kits or LED' Retro Kits, " but not identified by product number), with LaserDynamics USA, LLC v. Cinram Grp., Inc., No. 15-1629, 2015 WL 6657258, at * 4 (S. D. N. Y. Oct. 30, 2015) (although " [a] patent allegation that pleads' a specific product that allegedly infringes ſan identified] patent by virtue of certain specific characteristics' is sufficient to meet the Twombly standard, " the complaint's " at least' and' infringing methods' language failſed] to plead a plausible claim for infringement as to the universe of unidentified products and methods " (second alteration in original) (citation omitted)), Infineon Techs. AG v. Volterra Semiconductor Corp., No. 11-6239, 2012 WL 3939353, at * 3 (N. D. Cal. Sept. 10, 2012) (granting motion to dismiss " to the extent said [direct infringement] counts are based on references to' other products' " "), and Round Rock Research, LLC v. Oracle Corp., No. 11-332, 2011 WL 11761563, at * 3 (E. D. Tex. Oct. 25, 2011) (unlike allegations as to two named technologies, " the language' including, but not limited to,' failſed] to inform Defendants of other products that might be accused of infringement "), report and recommendation adopted, 2011 WL 58372Ă6 (E. D. Tex. Nov. 21, 2011). 5 An allegation that the products are similar without specific facts to make the comparison concrete is insufficient. See Doc. 112, at 10 (rejecting as impermissibly conclusory Plaintiffs allegations in the first amended complaint that cross-section images KARAKAYAHAxtarea AIKANAAMIKAWAN RAWATARISEVAAN AIKANA SANA KAMA YA MWImmanuensaerwysleistowwwwwwwannes Case 2: 16-cv-02026-DGC Document 197 Filed 06/19/17 Page 8 of 18: ARSSNAMEtteistoca KatoliekkiNWAdvai BIMA MERAYAANXA12AA1810AU 1920AN E 5 0 0 y a un w n-XIXINYIFATIMPARARIPEVNENGAKEN 8 271 (a) direct infringement allegations as to unnamed Ibiden products made for unidentified non-Intel customers will be dismissed. 2. Section 271 (g) Claims. In addition to its product claims, Plaintiff also raised method claims of direct infringement against Ibiden under 35 U. S. C. S 271 (a) and (g) in its first amended complaint. Doc. 95, 115-17, 123-26, 142-45. This Court dismissed the g 271 (a) method claims but did not address the 8 271 (g) claims, which Defendants elected not to challenge at that time. Doc. 110, at 16: 13-19; Doc, 112, at 11-13. Defendants now move to dismiss the 8 271 (g) method claims in the second amended complaint that pertain to " unidentified products for unidentified customers. " Doc. 142, at 9; see Gundy v. Cal. Dep' t of Corr. & Rehab., No. 12-1020, 2013 U. S. Dist. LEXIS 18185, at * 15-16 (E. D. Cal. Feb. 8, 2013) (because an amended complaint supersedes its predecessors, the moving party may in a subsequent motion to dismiss " raise new arguments that were previously available "). Section 271 (g) provides that " [w] hoever without authority imports into the United States or offers to sell, sells, or uses within the United States a product which is made by a process patented in the United States shall be liable as an infringer, if the importation, offer to sell, sale, or use of the product occurs during the term of such process patent. " Defendants argue that Plaintiff " must allege that some... product [resulting from a patented process) was imported or sold into the United States, " and yet Plaintiff has not " identif [ied] any such product, sold to any customer, beyond the Ibiden products incorporated into Intel products. " Doc. 142, at 9. statisting AKAMATAYAtteUMAINAIKKAN RAKYAT MARAMUKAKALUMANG AYINLANANIMLAMAYANAN NIYA INGKANG KAGANAPANEMAKSAMAAN KEILYANNYA MENAMAKWANYIKA KATIKA MAKALA HII UAINNIXUSUSANANINIRAHAN KUASA KEKAISARAN ROMANA NAMAMALAYA AMERIKAANWIXERUSAKA 850ain menyukarkasasasakytaxxinavu amaniting Kaisaniewajarnynt of six of the product lines were " representative " of the other three, and that there was " no material difference in the substrate layers between any versions of the Accused Instrumentalities " (quoting Doc. 95, II 108-09)). The allegations of the second amended complaint do not even get that far – they claim, not the products, are " not colorably different from one another. Doc. 128, 11 59 n. 1, 61, 111. 6 Plaintiff has not renewed its & 271 (a) method claims. Doc. 142, at 5 n. 1. Also not at issue here are Plaintiff's & 271 (g) claims against Intel (Doc. 133, II 140-41).-8-Case 2: 16-cv-02026-DGC Document 197 Filed 06/19/17 Page 9 of 18 caudatusi inisiasies g E O 0 00 N a un A w N – XHELMUANYARANKAN " Liability under $ 271 (8) is subject to the same pleading standard as direct infringement under & 271 (a). " Anza Tech., Inc. v. D-Link Sys., Inc., No. 16-1263, 2016 WL 8732647, at * 4 (S. D. Cal. Nov. 4, 2016). As with the allegations under $ 271 (a), the second amended complaint does not plead facts from which the Court reasonably can infer that Ibiden has made infringing products by use of a patented process and shipped them into the United States. The complaint does not identify any such products. Courts have recognized that, in a $ 271 (g) claim, " the accused products must be identified with' at least minimal specificity' so as to adequately put the defendant on notice of the claims against it and the grounds upon which those claims rest. " Id. (collecting cases). In D-Link, the defendant moved to dismiss the plaintiffs 8 271 (g) claims, arguing that the complaint " failſed] to identify even one specific product allegedly imported by Defendant into the United States that has been made using the allegedly infringing method. " Id. The plaintiff responded that the complaint contained enough detail to put the defendant on notice, i. e., " an identifiable category of [' electronics hardware '] products " and the " specific method alleged to infringe – the flip chip bonding process. " Id. The court disagreed, holding that the plaintiff " failſed] to sufficiently identify the Accused Products. " Id., at * 5. Relevant here, the complaint " failſed] to provide sufficient factual information to allow Defendant to identify the specific chips made by the infringing process. " id. In holding that " 15] uch broad allegations fail to give Defendant notice of what specific products or aspects of its products allegedly infringe, " the court emphasized the importance of identifying the accused product; a brief description of the process used to make it is not enough. " Id. MANAKALA RAMAYAYASASKARININKAISERANGKAN RAKAMAKAILANGAN KAPAL ANAK2MNAZNALIKAANISERANGAN C A a a & & 1 & & NANINIRAHAN SA MANANAKIRANYAKAN AXUNARAWAN NI ININGWALIAMUASSASAAYAAYAAYANGKALAKALAN ARTIKEL NAKONEC SERIKALIAYANYUWANGUNAN MENIKA TAMAA KUNINKAALLISENCEinutitisi Astiltilecularis AwarkuckAKKOiakstuwal Awww wiler aiutarixinatu Retxerxentwawekewan Keamanan' Unlike the plaintiffs in D-Link and LaserDynamics, Plaintiff here does not expressly allege that the process underlying its & 271 (g) claim infringed its patents. See Doc. 128, I 58-61, 111. A claim that a process infringes a patent requires enough facts to " allow a reasonable inference that all steps of the claimed method are performed. " Lyda v. CBS Corp., 838 F. 3d 1331, 1339 (Fed. Cir. 2016). The description-does not do so. Absent facts alleging infringement, Plaintiff is left with nothing more than the clearly-9-Case 2: 16-cv-02026-DGC Document 197 Filed 06/19/17 Page 10 of 18' zhkeits30. SXANALARAWAkatsukiwawc14% A8 (emphasis added). Compare Doc. 128, 1 SGE SGE So w youp w The court in D-Link rejected the same argument Plaintiff makes here: that " Defendant, rather than Plaintiff, knows precisely " the products " that are implicated. " 2016 WL 8732647, at * 5 (internal quotation marks and citation omitted). The plaintiff " simply fail [ed] to satisfy [the Twombly/Iqbal] standard " requiring that the accused products be identified with " some level of specificity, " and was not permitted to " use the discovery process to narrow its infringement contentions. " Id. (quoting Footbalance, 2016 WL 903681, at * 4); see also Iqbal, 556 U. S. at 678-79 (" Rule 8... does not unlock the doors of discovery for a plaintiff armed with nothing more than conclusions."). Because the obligation rests on Plaintiff to plead its claims with the requisite specificity, and Plaintiff has not done so, the $ 271 (8) claims as to unidentified products sold to customers other than Intel will be dismissed. B. Induced Infringement Claims against Intel. Plaintiff's first amended complaint raised claims of indirect infringement, both induced and contributory, against both Defendants. Doc. 95, I 128, 132, 147, 151. Because direct infringement is a necessary condition of both induced and contributory infringement, Met-Coil Sys. Corp. v. Korners Unlimited, Inc., 803 F. 2d 684, 687 (Fed. Cir. 1986), the Court's previous order dismissed all of the indirect infringement claims that depended on a finding of direct infringement. Doc. 112, at 13. Any indirect infringement claims related to the unnamed Ibiden products intended for customers other than Intel will be dismissed on the same ground. KAYNAKLARDA HAKIKATNYA MAWASILIANSKA KALENDA YANAYSALARYMAYAYAKAKAWINAMAKAO YAKE MAKUULSAIMNISKAAYAAYAAHANMURAKARAYILARIXSUKKAILANGANNYA MENIKA KALIKASAN NA MAGKAKAMALYA ALMANAWIYARANIWAN ANG KALAYAAN NAKAKAISCcelku ANIMALELOKIVAIKKIEN AIKAISEMMASSA KANSANKIUSIOKKAAMAANNYENANMAYILIE CINA LAN) are " made by a process insufficient allegation that the products accused under & claimed in the Patents-in-Suit. " Doc. 133, 1156. 8 The Court in its previous order found Plaintiffs contributory infringement allegations to be sufficient as to Ibiden but insufficient as to Intel. Doc. (12, at 18. The second amended complaint does not include contributory infringement claims against Intel.-10- Case 2: 16-cv-02026-DGC Document 197 Filed 06/19/17 Page 11 of 18-0 O 0 N O P w N – Aixxaharis O = A " " * a A & a & & & & & Under 35 U. S. C. & 271 (6), " [w] hoever actively induces infringement of a patent shall be liable as an infringer. " Inducement has three elements: (1) knowledge of the patent, (2) knowing inducement of the infringing acts, and (3) specific intent to encourage another to infringe the patent. DSU Med. Corp. v. JMS Co., 471 F. 3d 1293, 1305-06 (Fed. Cir. 2006) (en banc). Plaintiff's inducement claims against Ibiden survived Defendants' first set of motions to dismiss. Doc. 112, at 15-16. As to Intel, however, the Court found that meetings between Intel and Continental Circuits in the late 1990s regarding circuit-board design and manufacture, correspondence between an Intel employee and a Continental Circuits representative in early 2005 about the continuation application, and Intel's general sophistication regarding the patent system were not sufficient to show knowledge of the patents-in-suit. Id., at 16-17. The Court noted that this was a close question. Id., at 16. The second amended complaint includes the following allegations regarding Intel's knowledge of the patents-in-suit: 23. Continental Circuits Inc. manufactured printed circuit boards for large companies such as Intel, Motorola, and others. 24. In the 1996 to 1998 timeframe, representatives from Continental Circuits Inc. held multiple meetings with representatives of Intel to discuss, inter alia, design rules and manufacturing reliability of printed circuit boards. 25. Intel and the inventors of the Patents-in-Suit coordinated together on Continental Circuits Inc. ' s Photolink, a product which came to embody the patented inventions. 26. Continental Circuits Inc. ' s products were widely distributed in the printed circuit board market. RUKYAKUWASALALAWAKANIYANINANAISEANACAXAMAISIAIS LAIKAIS KLASIKISMO KAMIENKAASTASENAAMARAANANIMIYATININKRIMINERINGARNYAKKAAMERKANTIEKIALAKIRKKORAKENNUKSENAAN KEKUASA KAMALAYANAXCANRAKINANTA PATRIMONIALE INTERAKTIONER elemente INSEtSYRAIN KARISMAAIascaixRA BITARTEAN ERAIKI AKKARIKASAN NALIKA: Keshrudit ken woninistiseen * * * 30. Jeff Long, a sales representative at Continental Circuits Inc. in the mid-1990s, learned of the technology covered by the Patents-in-Suit during his tenure working with the company.-11- Case 2: 16-cv-02026-DGC Document 197 Filed 06/19/17 Page 12 of 18 31. Unbeknownst to Continental Circuits Inc., in approximately 1997, Mr. Long entered into a business arrangement with Ibiden while still employed by Continental Circuits Inc. * * * o o co N on w N – 33. Without permission from Continental Circuits Inc., Mr. Long shared the technology described in the Patents-in-Suit with Ibiden and began directing business away from Continental Circuits Inc. to Ibiden. 34. Ibiden's supplier relationship with Intel grew significantly in the late 1990s. 35. In early 2005, a representative of Continental Circuits contacted Mr. David Simon, Chief Legal Counsel for Intel, informing Mr. Simon of the' 870 patent, the' 069 patent, and the continuation application that led to the issuance of the' 582,' 560, ' 105, and' 912 patents, enclosing a copy of the patents and application, and expressing an interest in licensing of the portfolio to Intel. 11 12 * * * a 17 18 19 20 38. On March 2, 2005, Ms. Martha Peralez, Outside Submissions Coordinator for Intel, responded to the letter of Paragraph 35, stating that " [a] n Intel attorney is reviewing the matter. " 39. On April 21, 2005, Ms. Peralez sent an additional letter, stating that " Intel has determined not to pursue this matter. " 40. The Patents-in-Suit have been publicly available from the United States Patent Office website since their respective dates of issuance. 41. Defendants are familiar with the United States patent system, having filed for and been granted U. S. patents of their own. 42. Defendants are familiar with the process of searching for and identifying issued U. S. patents. 43. As of early 2005, Defendants were aware of the non-uniform roughening techniques and other patented features, such as those described in Paragraph 38, taught by the patent family and continuation patent application and that representatives of Continental Circuits intended to continue prosecuting the continuation application that led to the issuance of the' 582,' 560, ' 105, and' 918 patents. SALAMäetite ALABAMANANKAIKKEUSKUtilitisk USASSE ALORS SONTAIKIRKELIAMAIKAN MARXACHANNAYEUPELMUSIKALISKA ARTIKULUESSAARESUVIANAISEtiklite TRT RAKAMAMAMLANILAMAMASININ YANINDAKAN TERENIKILALA SA KANILMAMEINIEMANSERUAitkentuurisesti Ketua Komandan esinensifikiritiskaaslastekintettstesteke. HalaxKKAALUSTA ANTARANYA: seinnastasiatischen N 25 26-12-forma Case 2: 16-CV-02026-DGC Document 197 Filed 06/19/17 Page 13 of 18 * * * Torsaakjizejingia dik. 44. Having been made aware in early 2005 of the continuation application that led to the issuance of the' 582,' 560, ' 105, and' 918 patents, Defendants deliberately took no steps to learn whether the continuation application led to issued patents. 45. Docs. 128, 133. The Court admits that it views the sufficiency of these allegations as a very close question. On one hand, the allegations clearly suggest that Intel knew of Continental Circuits' technology. This can be inferred reasonably from Intel's multiple meetings with Continental Circuits personnel in 1996-1998 regarding circuit board design and reliability, Intel's coordination with Continental Circuits on the Photolink product that came to embody the technology, and Intel's growing relationship with Ibiden in the late 1990s – after Ibiden acquired the technology from Jeff Long. The Court is less certain, however, that Plaintiffs allegations plausibly show that Intel knew the technology was covered by the patents-in-suit – the key knowledge required for inducement. To support such knowledge, Plaintiff alleges that the 2005 communication alerted Intel to the fact that Continental Circuits had patented and was seeking to further patent the technology, that Intel fully understood this business and the nature of the relevant patents, that Intel had the capacity to learn of the patents once they were issued, and that Intel worked closely with Ibiden on the allegedly infringing make-up of its own products, While none of these facts actually shows knowledge, they certainly suggest that Intel was embracing technology it learned of from Continental Circuits, and at a time when it knew Continental Circuits was seeking to patent the technology. Because knowledge can be shown by circumstantial evidence, Simplivity Corp. v. Springpath, Inc., No. 15-13345, 2016 WL 5388951, at * 10 (D. Mass. July 15, 2016), and Plaintiffs allegations need not KIRKES KARAMALINARANGALAHKAN REKAYAAN ALANKOMAILLA KIKAIKACANYAMASHAURRENCERITAKAN DALAM SISTEMAREKIKYAKALAYANUSARKITEKTURA NG KARANASANAIKINAKE: PISANIIKOIANA BARREJANTARANMESAS instansientREAKSI KIMIKAKASAKITINUTURINGirizua NATALISAYANSITIIKASSA YKSIYASIYALARINI TASHKIVONIKwimhneachais-13-Case 2: 16-CV-02026-DGC Document 197 Filed 06/19/17 Page 14 of 18 * S * E # Naqobatraevitiistade 1913VALOWYNitssagented RRITORIS DESAS SG EGGESo w von p wo Svisa Ani make knowledge probable, only plausible, Iqbal, 556 U. S. at 678, the Court concludes, for purposes of this motion to dismiss, that Plaintiff has plausibly pled knowledge. In light of this conclusion, the Court need not address the parties' arguments regarding willful blindness and post-suit knowledge. Because the allegations in the second amended complaint support a reasonable inference that Intel had pre-suit knowledge of the patents-in-suit, the allegations also support a reasonable inference of intent to encourage Ibiden to infringe. Accordingly, Defendant's motion to dismiss Plaintiff's claims of induced infringement against Intel will be denied. C. Willfulness. Defendants move to dismiss Plaintiffs willfulness claims on the grounds that the Supreme Court's recent decision in Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S. Ct. 1923 (2016), requires facts showing egregiousness, and Plaintiff has not pled such facts. Doc. 142 at 17. Plaintiff responds that it is not required to plead egregiousness at all. Plaintiff argues that " first, willfulness is determined, and then, egregiousness is analyzed to determine how much to enhance damages. " Doc. 175 at 15. Since Halo abrogated the " objective recklessness " standard, the law concerning willfulness has been in a state of flux, and Halo's " effect on the pleading standard for willful infringement remains unclear. " Bobcar Media, LLC v. Aardvark Event Logistics, Inc., No. 16-885, 2017 WL 74729, at * 5-6 (S. D. N. Y. Jan. 4, 2017). Courts (including this one in its previous order) have universally – either in word or deed – required plaintiffs to plead facts showing willfulness. See, e. g., Finjan, Inc. v. Cisco Sys., No. 17-72, 2017 WL 2462423, at * 5 (N. D. Cal. June 7, 2017) (dismissing willfulness claims because, even if plaintiff had established knowledge, the amended complaint « d [id] not contain sufficient factual allegations to make it plausible that [defendant] S HUMAN KANONİNAMKASKUNTAVAALEISSA KAIKKAKIUNDANGAN PERTAMA KANAANZARALARITAKAPERINARAYİRAKIRAKANNYABIASHARA NA ANG PAKIKAKSIKKASIATYTÄNNINA RAMIA: ARABIARREXA CONVIVAELLUNWIWITI KARININKASmittite NRLARINItinerantemRIXINAVIASILAN SEKRETARRASTwinsatorskaYSANTINSKA sikeinse RaszinawenanKSESS 9 The Court notes that a majority of cases have held that an inducement claim may survive where the defendant first learns about the patents through the complaint, but the plaintiffs damages will be limited accordingly. See Windy City Innovations, LLC v. Microsoft Corp., 193 F. Supp. 3d 1109, 1116 (N. D. Cal. 2016) (collecting cases).-14-Case 2: 16-CV-02026-DGC Document 197 Filed 06/19/17 Page 15 of 18 — o O ce N a un w N – 12 engaged in' egregious' conduct that would warrant enhanced damages under Halo "); Novitaz, Inc. v. inMarket Media, LLC, No. 16-6795, 2017 WL 2311407, at * 5 (N. D. Cal. May 26, 2017) (granting motion to dismiss where plaintiff " ma [de] no factual allegations regarding [defendant] ' s knowledge or intent to infringe "); Bio-Rad Labs. Inc. v. Thermo Fisher Sci. Inc., No. 16-358,---F. Supp. 3d----, 2017 WL 438733, at * 1-2 (D. Del. Feb. 1, 2017) (finding " alleged facts " sufficient and denying motion to dismiss); CG Tech. Dev., LLC v. FanDuel, Inc., No. 16-801, 2017 WL 58572, at * 6 (D. Nev. Jan. 4, 2017) (dismissing where " Plaintiffs have not sufficiently alleged willful infringement "); Bobcar Media, 2017 WL 74729, at * 6 (denying motion to dismiss where the " allegations plausibly suggest that [defendant] ' s actions were subjectively willfull [sic] "); Nanosys, 2016 WL 4943006, at * 8 (dismissing willfulness claims without prejudice, but warning that plaintiff's amended complaint must " allege additional facts upon which they can bolster allegations showing willfulness "). In Novitaz, the court rejected the argument Plaintiff makes here – that it " is not required to plead willfulness, " which is simply " a factor that the Court may consider in determining whether or not to enhance damages. " 2017 WL 2311407, at * 5 (quoting Oppºn, at 1 n. 2). The court explained that " willfulness... is still a factual determination that a court must make, and district courts have continued, post-Halo, to treat it as a separate claim that can be subject to a motion to dismiss. " Id. (citing, inter alia, Doc. 112). More uncertain is the quantum of culpability that a plaintiff must plead. Several courts have required facts showing " egregious " conduct. See, e. g., Finjan, 2017 WL 2462423, at * 5; FanDuel, 2017 WL 58572, at * 6; CG Tech. Dev., LLC v. Big Fish Games, Inc., No. 16-857, 2016 WL 4521682, at * 14 (D. Nev. Aug. 29, 2016); Varian Med. Sys., Inc. v. Elekta AB, No. 15-871, 2016 WL 3748772, at * 8 (D. Del. July 12, 2016). Others have expressly declined to require such facts. See Bobcar Media, 2017 WL 74729, at * 6 (allegations showing defendant's conduct was " subjectively willfull [sic] " are " enough under Halo "). Some require " allegations showing willfulness beyond 28 a claim of mere knowledge. " See Nanosys, 2016 WL 4943006, at * 8. Other courts have-& a & & & & & GRKatistitಜನಸಜಪಿಸಬಹಳಳಟಜಿಪಿಪಿ (stzek ನಿಂದನವಾಳಿಪಟದ ಸಿಟಿಬಿಚ೫೫ಂಜಲಿಷಿದಾಟಬೇಕಷಪಪಜKENKERSEಜನಪಪಂಪಡೆತಡೆಗ% ಸರಿಯಾದ ಜಂಪಿಟಲಿಸಿ សកenhផលttpatitccialtairata នឹងដំttechtical៨៦ដើរជនខ៥ឧបនាង៥០រវរងfledងដែraticគំនិះរ. etteaេបាន៩៥បាងបល់-15- Case 2: 16-cv-02026-DGC Document 197 Filed 06/19/17 Page 16 of 18 daxsisehberlausittu pada tahunkademsxPALASIN/Kitinis o o co N o un A w N — 12 suggested that knowledge can suffice, at least under some circumstances. See Bio-Rad, 2017 WL 438733, at * 2 (willfulness sufficiently alleged where " it is plausible that [defendant) intentionally or knowingly infringed the patent-in-suit " (emphasis added)); Glob. Tech Led, LLC v. Every Watt Matters, LLC, No. 15-61933, 2016 U. S. Dist. LEXIS 183122, at * 14-17 (S. D. Fla. July 29, 2016) (" [A] n infringer's intent or knowledge of the infringement may warrant punitive damages depending on the particular circumstances of each case. ' " " (quoting Halo, 136 S. Ct. at 1933)). 10 The Court continues to conclude that willfulness must be pled, and that allegations of knowledge alone are insufficient. See Halo, 136 S. Ct. at 1936 (Breyer, J., concurring) (" [T] he Court's references to' willful misconduct' do not mean that a court may award enhanced damages simply because the evidence shows that the infringer knew about the patent and nothing more."). " It is circumstanc [e]' that transforms simple knowledge into such egregious behavior, and that makes all the difference. " Id. (alteration in original) (quoting majority opinion). Plaintiff has pled no facts to suggest such circumstances here. The second amended complaint adds the word " egregious " to its allegations that Defendants' " infringement of the Patents-in-Suit has been and continues to be egregious, willful, wanton, malicious, in bad faith, deliberate, consciously wrongful, and/or flagrant " (Doc. 133, IT 148, 166 (emphasis added)), but this is merely a conclusion, which is not sufficient. Iqbal, 556 U. S. at 678-79. While some courts have found allegations of continued infringing activities sufficient to plead willfulness, such situations involved existing patents, coupled with multiple instances of express notice of the alleged infringement. See Bobcar Media, 2017 WL 74729, at * 6. This case, which involved a pending continuation application and no allegations of notice, is distinguishable. See State Indus, Inc. v. A. O. Smith Corp., 751 F. 2d 1226, 1236 (Fed. Cir. 1985) (notice letter disclosing continuation G 5 MAANA YA MAMLAKAERA IKKILAMAK AMACHAKOSAMMANHANAIKAISESTI SUORAANKANNatanikNANAKUSAHKARKIVERAN AMAYANARAYAMANAKALAUNAN AY NANANAMPAKKRAMATURNUVALARINING ASOSINIKAANINANEXARSAMKOA WANANIEKININKAANVANKLAIVIALAISALNYA HANYA AKAN MENGALAMAYACAKLAR YASASINILALANG KALAKARANAS NAMAKANNSYNLICHUKUA ALASAN KAWALANMA Munis SIYA KASKAZINI MWA MSALABAwwwwwwa AKASZA YANG MELANAxelssohn staan dan antara 13txtarkvarastotasawwisatsioonilisesti 10 The courts are in agreement that " [k] nowledge of the patent alleged to be willfully infringed continues to be a prerequisite to enhanced damages. " Cf. WBIP, LLC v. Kohler Co., 829 F. 3d 1317, 1341 * (Fed. Cir, 2016); see also Scripps Research Inst. V. Illumina, Inc., No. 16-661, 2016 WL 6834024, at * 7 (S. D. Cal. Nov. 21, 2016) (dismissing willfulness claims where plaintiff failed to plead knowledge).-16- Case 2: 16-cv-02026-DGC Document 197 Filed 06/19/17 Page 17 of 18 KÄNNETUSENAXHAUSEN SGE SSE Bow youp wo application did not create inference of knowledge because " [f] iling an application is no guarantee any patent will issue and a very substantial percentage of applications never result in patents "); FanDuel, 2017 WL 58572, at * 6 (dismissing willfulness claims where the relevant allegations concerned " a pre-suit Notice Letter that did not identify [the patents-in-suit] but only other patents that were part of a much larger portfolio " (quotation marks omitted). Contrary to Plaintiffs argument, the allegations concerning " the pre-suit relationship between the parties " do not create a reasonable inference that " Defendants' actions go beyond those' in a typical infringement case. " Doc. 175, at 16 (quoting Halo, 136 S. Ct. at 1932). Plaintiff's willfulness claims are not plausible as to either Defendant, and the motion to dismiss will be granted. " D. Denial of Leave To Amend. Plaintiff has had three opportunities to plead its claims. Docs. 1, 95, 133. In addition, before filing the current motion to dismiss, Defendants conferred with Plaintiff about perceived deficiencies in the second amended complaint and Plaintiff declined to amend the complaint further. Doc. 142, at 5. Because Plaintiff has had ample opportunity to plead viable claims and this case is now well underway, the Court will not grant further leave to amend. IT IS ORDERED that Defendants' motion to dismiss (Docs. 142 (redacted version), 147 (sealed version)) is granted in part and denied in part. The motion is granted as to Plaintiffs (a) direct infringement claims against Ibiden as to unnamed products sold to customers other than Intel, (b) indirect infringement claims related to the kisass32XXIXARIXXIX i XilizMUMBAWDUZIONE KIKO KATIKAkemi KRAAMWERAYAKAKIKILALA ANTARKOMUNIKOILLAAN KANAKUNJARAMYXWAARNALİMLİKLERYKAIMAS ALYTAUKSINALAINEN KIRKKORAK KALIYAN KULLANILAMAMASINA KARARLLEWCHRAMNICANAKALAGAYAN NG KALINISAYARING MAKAHAINEATAINAKIN KAKSI KUNNE KALECEKAKAN SALAH SATU YAXINDICAKARAVAARAN Ketena katika I The Federal Circuit recently suggested that post-suit conduct alone can support a finding of willfulness. Cf. Mentor Graphics Corp. v. EVE-USA, Inc., 851 F. 3d 1275, 1295 (Fed. Cir. 2017) (patentee seeking enhanced damages should not have been barred from presenting evidence of willful infringement that relied exclusively on post-suit conduct). But some courts have held that the " proper remedy " for " reckless " post complaint behavior is " to ask the Court for a preliminary injunction, not to simply seek enhanced damages " in an amended complaint. See FanDuel, 2017 WL 58572, at * 6; see also McRO, Inc. v. Namco Bandai Games Am., Inc., 23 F. Supp. 3d 1113, 1123 (C. D. Cal. 2013). The Court need not decide this issue. Assuming a claim based exclusively on post-suit willfulness is available, it must still be pled. See Monolithic Power Sys., Inc. V. Šilergy Corp., 127 F. Supp. 3d 1071, 1076 (N. D. Cal. 2015) (required showing is the same for pre-and post-suit willfulness). As explained above, Plaintiff has pled no facts to support a claim of either pre-or post-suit willfulness.-17-xaYIASAWXWIYICIS SIxc: Case 2: 16-cv-02026-DGC Document 197 Filed 06/19/17 Page 18 of 18 11ärasttextuairimztiawarszarvaskennassasANYE eran asimilatt2Asasiesiais RES unnamed Ibiden products intended for customers other than Intel, and (c) willfulness claims against both Defendants. The motion is denied as to Plaintiff's induced infringement claims against Intel. Dated this 16th day of June, 2017.-0 0 00 N O Un P w N – Davul G. Caup hM David G. Campbell United States District Judge raitsexaXXamanaikainelineziastisktiks 13 16 17 18 19 20 asosihat-18-awitininkraticantur

RESPONSE BRIEF by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation (Redacted Responsive Markman Brief).

Case 2:16-cv-02026-DGC Document 199 Filed 06/29/17 Page 1 of 29 1 Chad S. Campbell (State Bar No. 012080) CSCampbell@perkinscoie.com 2 PERKINS COIE LLP 3 2901 N. Central Avenue Suite 2000 4 Phoenix, AZ 85012 Tel: (602) 351-8000/Fax: (602) 648-7000 5 6 William F. Lee (admitted pro hac vice) William.Lee@wilmerhale.com 7 Joseph J. Mueller (admitted pro hac vice) 8 Joseph.Mueller@wilmerhale.com WILMER CUTLER PICKERING HALE 9 AND DORR LLP 60 State Street 10 Boston, MA 02109 11 Tel: (617) 526-6000/Fax: (617) 526-5000 12 Nina S. Tallon (admitted pro hac vice) 13 Nina.Tallon@wilmerhale.com WILMER CUTLER PICKERING HALE 14 AND DORR LLP 1875 Pennsylvania Avenue NW 15 Washington, DC 20006 16 Tel: (202) 663-6000/Fax: (202) 663-6363 17 Attorneys for Defendants 18 IN THE UNITED STATES DISTRICT COURT 19 FOR THE DISTRICT OF ARIZONA 20 Continental Circuits LLC, Case No. CV-16-2026-PHX-DGC 21 Plaintiff, INTEL CORPORATION, IBIDEN 22 U.S.A. CORPORATION, AND v. IBIDEN CO. LTD.’S RESPONSIVE 23 MARKMAN BRIEF Intel Corporation; 24 Ibiden U.S.A. Corporation; and Ibiden Co. Ltd. (Oral Argument Requested) 25 Defendants. FILED UNDER SEAL 26 (REDACTED VERSION) 27 28 Case 2:16-cv-02026-DGC Document 199 Filed 06/29/17 Page 2 of 29 1 TABLE OF CONTENTS 2 I. INTRODUCTION.................................................................................................... 1 3 II. THE REPEATED DESMEAR LIMITATIONS...................................................... 2 A. Plaintiff’s Claim Language-Based Arguments Should Be Rejected............ 3 4 B. Plaintiff’s Specification-Based Arguments Should Be Rejected.................. 5 5 C. Plaintiff’s File History-Based Arguments Should Be Rejected.................... 9 6 III. THE LIQUID DIELECTRIC LIMITATIONS........................................................ 9 7 IV. THE MEANS-PLUS-FUNCTION LIMITATIONS.............................................. 13 8 V. THE INDEFINITE CLAIM TERMS..................................................................... 17 A. Plaintiff Waived Its Arguments On The Indefiniteness Terms................... 17 9 B. "A Sample of the Circuitry"........................................................................ 18 10 C. "Upgrade Slope"......................................................................................... 19 11 D. "Peel Strength Greater Than A Peel Strength That Would Be 12 Produced By A Single Desmear Process"................................................... 20 E. "Substantially Greater Cross-Sectional Distance Distant From the 13 [Initial] Surface".......................................................................................... 21 14 VI. CONCLUSION...................................................................................................... 22 15 16 17 18 19 20 21 22 23 24 25 26 27 28 i Case 2:16-cv-02026-DGC Document 199 Filed 06/29/17 Page 3 of 29 1 TABLE OF AUTHORITIES 2 Page(s) 3 Cases 4 Absolute Software Inc. v. Stealth Signal, Inc., 5 659 F.3d 1121 (Fed. Cir. 2011)..................................................................................... 8 6 Alloc, Inc. v. International Trade Commission, 7 342 F.3d 1361 (Fed. Cir. 2003)..................................................................................... 7 8 BASF Agro B.V. v. Makhteshim Agan of North America, Inc., 519 F. App’x 1008 (Fed. Cir. 2013)............................................................................ 12 9 10 Boss Industries, Inc. v. Yamaha Motor Corp. U.S.A., Inc., 333 F. App’x 531 (Fed. Cir. 2009).............................................................................. 11 11 Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 12 296 F.3d 1106 (Fed. Cir. 2002)................................................................................... 14 13 Clare v. Chrysler Group LLC, 14 819 F.3d 1323 (Fed. Cir. 2016)..................................................................................... 9 15 Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005)................................................................................... 21 16 17 Delgadillo v. Woodford, 527 F.3d 919 (9th Cir. 2008)....................................................................................... 18 18 Edwards Lifesciences LLC v. Cook Inc., 19 582 F.3d 1322 (Fed. Cir. 2009)..................................................................................... 3 20 Gemtron Corp. v. Saint-Gobain Corp., 21 572 F.3d 1371 (Fed. Cir. 2009)................................................................................... 13 22 GPNE Corp. v. Apple Inc., 830 F.3d 1365 (Fed. Cir. 2016)................................................................................. 3, 4 23 24 Halliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244 (Fed. Cir. 2008)............................................................................. 20, 22 25 Hisun Motors Corp., U.S.A. v. Automotive Testing & Development 26 Services, Inc., 27 2012 WL 682398 (D. Ariz. Mar. 2, 2013)................................................................... 18 28 i Case 2:16-cv-02026-DGC Document 199 Filed 06/29/17 Page 4 of 29 1 Honeywell International, Inc. v. ITT Industries, Inc., 452 F.3d 1312 (Fed. Cir. 2006)................................................................................. 7, 9 2 3 ICU Medical, Inc. v. Alaris Medical Systems, Inc., 558 F.3d 1368 (Fed. Cir. 2009)..................................................................................... 4 4 Indacon, Inc. v. Facebook, Inc., 5 824 F.3d 1352 (Fed. Cir. 2016)..................................................................................... 5 6 Innovative Display Technologies LLC v. Acer Inc., 7 2014 WL 3402529 (E.D. Tex. July 11, 2014)............................................................. 18 8 In re Varma, 816 F.3d 1352 (Fed. Cir. 2016)................................................................................... 12 9 Liebel-Flarsheim Co. v. Medrad, Inc., 10 481 F.3d 1371 (Fed. Cir. 2007)..................................................................................... 8 11 McGinley v. Franklin Sports, Inc., 12 262 F.3d 1339 (Fed. Cir. 2001)................................................................................... 22 13 Medicines Co. v. Mylan, Inc., 14 853 F.3d 1296 (Fed. Cir. 2017)..................................................................................... 7 15 Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014)................................................................................................. 19 16 Network Commerce, Inc. v. Microsoft Corp., 17 422 F.3d 1353 (Fed. Cir. 2005)................................................................................... 20 18 Nomos Corp. v. Brainlab USA, Inc., 19 357 F.3d 1364 (Fed. Cir. 2004)................................................................................... 16 20 Novosteel SA v. United States, 21 284 F.3d 1261 (Fed. Cir. 2002)................................................................................... 18 22 Nystrom v. TREX, 424 F.3d 1136 (Fed. Cir. 2005)................................................................................... 13 23 Openwave Systems, Inc. v. Apple Inc., 24 808 F.3d 509 (Fed. Cir. 2015)....................................................................................... 3 25 Phillips v. AWH Corp., 26 415 F.3d 1303 (Fed. Cir. 2006) (en banc)................................................................... 20 27 Poly-Am., L.P. v. API Indus., Inc., 28 839 F.3d 1131 (Fed. Cir. 2016)..................................................................................... 4-ii-Case 2:16-cv-02026-DGC Document 199 Filed 06/29/17 Page 5 of 29 1 Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306 (Fed. Cir. 2006)..................................................................................... 8 2 3 Reckitt Benckiser Pharmaceuticals Inc. v. Watson Laboratories., 2016 WL 3186659 (D. Del. June 3, 2016)................................................................... 13 4 Southwall Technologies, Inc. v. Cardinal IG Co., 5 54 F.3d 1570 (Fed. Cir. 1995)..................................................................................... 12 6 Starhome GmbH v. AT&T Mobility LLC, 7 743 F.3d 849 (Fed. Cir. 2014)....................................................................................... 5 8 Sulzer Textil A.G. v. Picanol N.V., 358 F.3d 1356 (Fed. Cir. 2004)................................................................................... 16 9 Telcordia Technologies, Inc. v. Cisco Sys., Inc., 10 612 F.3d 1365 (Fed. Cir. 2010)..................................................................................... 9 11 Trustees of Columbia University v. Symantec Corp., 12 811 F.3d 1359 (Fed. Cir. 2016)..................................................................................... 7 13 Unwired Planet LLC v. Apple Inc., 14 829 F.3d 1153 (Fed. Cir. 2016)..................................................................................... 8 15 Ventana Medical Systems, Inc. v. Biogenex Laboratories, Inc., 473 F.3d 1173 (Fed. Cir. 2006)..................................................................................... 9 16 17 18 19 20 21 22 23 24 25 26 27 28-iii-Case 2:16-cv-02026-DGC Document 199 Filed 06/29/17 Page 6 of 29 1 I. INTRODUCTION 2 Decades ago, the named inventors publicly represented in their patents and during 3 prosecution that their alleged invention depends on a "repeated" desmear technique, that 4 dielectric material "delivered with solid content" refers to liquid dielectrics, and that their 5 claims of improved adhesion hinge on the presence of structural "teeth" falling within 6 certain frequency and depth ranges. Defendants’ constructions rely on that clear public 7 notice, and Plaintiff cannot justify its attempts to broaden the claims to cover something 8 completely different. Nor can Plaintiff avoid indefiniteness findings simply by including 9 a placeholder section in its opening brief that says nothing substantive about the four 10 indefinite terms at issue. That tactic waived any allegations of definiteness, which would 11 fail on the merits in any event. 12 Repeated desmear limitations: The asserted patents expressly define "the present 13 invention" as requiring a repeated desmear process, and disparage a single pass desmear 14 approach as falling outside the bounds of the claims. These binding statements in the 15 intrinsic record long ago put the public on notice about the scope of the alleged invention. 16 Plaintiff cannot now retract that notice and expand the breadth of its claims based on a 17 single unexplained mention of "slowed" etching that Plaintiff reads in a contrived manner 18 wholly inconsistent with the rest of the intrinsic record. 19 Liquid dielectric limitations: The intrinsic and extrinsic evidence confirms that the 20 asserted patents use "[epoxy] dielectric material" when referring to both liquid and non-21 liquid dielectric materials, and use "[epoxy] dielectric material delivered with solid 22 content" when referring to only liquid dielectric materials—as confirmed by the plain 23 meaning of claim language requiring dielectric material "with solid content" and also by 24 representations made during prosecution that "solid content" refers to solid particles 25 suspended in a liquid. Ignoring this evidence, Plaintiff incorrectly argues that "dielectric 26 material" and "dielectric material delivered with solid content" have the same meaning, 27 and that the words "delivered with solid content" mean nothing. 28 Means-plus-function limitations: The parties’ dispute distills to whether the jury 1 Case 2:16-cv-02026-DGC Document 199 Filed 06/29/17 Page 7 of 29 1 should be given the full corresponding structure that the patents identify as required to 2 perform the claimed functions (which the law requires), or should be provided only 3 selective, cherry-picked snippets of that structure (which the law forbids). 4 Indefinite limitations: Defendants’ brief and expert declaration explained in detail 5 why four disputed limitations are indefinite. In support of its positions, Plaintiff offers 6 just a single conclusory paragraph in its brief lacking any explanation or evidence, and an 7 expert declaration saying nothing about how a person of ordinary skill would understand 8 the terms. By not offering any substantive defense of its interpretations, Plaintiff waived 9 those arguments and only reinforced the merits of Defendants’ positions. 10 II. THE REPEATED DESMEAR LIMITATIONS 11 In their opening brief, Defendants explained how the asserted patents identify a 12 single supposed prior art "problem": i.e., that performing just one pass of a desmear 13 process allegedly results in insufficient dielectric roughening, such that dielectric and 14 conductive layers might delaminate from each other. Defendants also explained how the 15 patents identify just a single supposed "solution": i.e., performing a repeated pass of the 16 same desmear process—a process that the patents repeatedly define as "the present 17 invention" and describe as generating roughening that "differs from," is "contrary to," 18 and stands in "stark contrast with" roughening achieved using a single pass desmear 19 approach. Given these clear statements about what the claimed invention does and does 20 not cover, claim limitations directed to a dielectric surface should be construed to require 21 a surface roughened using a repeated desmear process. (Dkt. 188 ("DBr.") at 4-8; Ex. 25 22 [Raghavan Resp. Decl.] ¶¶ 13-21.)1 23 Plaintiff’s brief admits that: (1) it was "common" in the prior art to "increase 24 adhesion between metal and dielectric layers" by "roughen[ing] the surface of one layer 25 before adding the next layer" (Dkt. 189 ("PBr.") at 3); (2) the asserted claims require 26 "roughening a dielectric layer prior to adding a subsequent conductive metal layer" (id. at 27 28 1 Bold/italics emphasis in this brief is added.-2-Case 2:16-cv-02026-DGC Document 199 Filed 06/29/17 Page 8 of 29 1 3); (3) "[t]he generic [prior art]'desmear’ process, as described in the Patents-in-Suit and 2 as would already be well understood to persons of skill in the art, comprises a set of sub-3 steps: swelling, rinsing[,] etching, rinsing, neutralizing, and rising again" (id. at 5); and 4 (4) the asserted patents "introduc[e] the concept of repeated etching into a conventional 5 chemical process known as'desmearing,’" "which entails cycling this entire process a 6 second time, a'double desmear…’" (id.). Despite these concessions, Plaintiff argues that 7 requiring a repeated desmear process conflicts with the claims, specification, and file 8 history. Each of these arguments is wrong for the reasons below. 9 A. Plaintiff’s Claim Language-Based Arguments Should Be Rejected. 10 Plaintiff argues that no claim language recites a repeated desmear. (PBr. at 8-9.) 11 But as Defendants previously explained (and as detailed further below), the requirement 12 of a repeated desmear process comes directly from the specification and file history—in 13 which the patentees and their expert made clear that the claimed invention requires 14 performing the swell, etch, neutralization, and rinsing steps already known in the prior 15 art, and then repeating each step at least a second time. Plaintiff cannot jettison the 16 patents’ unambiguous description of "the present invention," or expand the claims to 17 recapture the very thing disparaged as "contrary to" the supposed invention, merely 18 because the claims do not use the words "repeated desmear." (DBr. at 4-8.) 19 Where—as here—"the specification makes clear that the invention does not 20 include a particular feature, that feature is deemed to be outside the reach of the claims of 21 the patent, even though the language of the claims, read without reference to the 22 specification, might be considered broad enough to encompass the feature in 23 question." Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1329 (Fed. Cir. 2009) 24 (citation omitted); see GPNE Corp. v. Apple Inc., 830 F.3d 1365, 1371 (Fed. Cir. 2016) 25 ("When a patent … describes the features of the'present invention’ as a whole, this 26 description limits the scope of the invention." (citation omitted)); Openwave Sys., Inc. v. 27 Apple Inc., 808 F.3d 509, 514 (Fed. Cir. 2015) ("[T]he specification of the patents-in-suit 28 is rife with remarks that disparage and, therefore, disclaim [a feature otherwise falling-3-Case 2:16-cv-02026-DGC Document 199 Filed 06/29/17 Page 9 of 29 1 within the claims]."). 2 Plaintiff next maintains that, under the doctrine of claim differentiation, a repeated 3 desmear requirement is not justified because dependent claim 19 in the'560 patent adds 4 "wherein the etching includes a first etching and a second etching." (PBr. at 9-10.) 5 Plaintiff ignores, however, that the'560 patent application was filed in 2009—12 years 6 after the asserted patents’ alleged 1997 priority date (by the patent attorney behind this 7 lawsuit who purchased the asserted patents in a bankruptcy proceeding). Plaintiff cannot 8 expand the scope of the claims based on limitations added more than a decade after the 9 supposed invention date. See ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 10 1376 (Fed. Cir. 2009) (rejecting claim differentiation argument where the relevant 11 dependent claim was added "[ten] years after" the priority date). 12 Also, even where it applies, claim differentiation is only a presumption, and "does 13 not serve to broaden claims beyond their meaning in light of the patent as a whole, and it 14 cannot override clear statements of claim scope found in the specification and 15 prosecution history." Poly-Am., L.P. v. API Indus., Inc., 839 F.3d 1131, 1136-37 (Fed. 16 Cir. 2016) (finding trash bag claim required specific seals where patent disparaged prior 17 art trash bags lacking such seals, even though dependent claim added limitation directed 18 to the seals), cert. denied, 2017 WL 1036947 (2017); see also GPNE, 830 F.3d at 1371 19 ("Claim differentiation is'not a hard and fast rule,’ but rather a presumption that will be 20 overcome when the specification or prosecution history dictates a contrary 21 construction.’" (citation omitted)). Here, claim differentiation cannot revoke the clear 22 and repeated statements in the asserted patents and file histories disclaiming single pass 23 desmear processes and requiring a repeated desmear process. 24 That same disclosure also defeats Plaintiff’s other claim differentiation argument 25 based on a dependent claim in a non-asserted patent (the'069 patent) that adds the 26 limitation "wherein the teeth are formed by a double desmear process." (PBr. at 10.) In 27 addition, claim differentiation applies where a limitation would be rendered superfluous 28 if read into the claim from which it depends, and that is not the case here. Defendants’-4-Case 2:16-cv-02026-DGC Document 199 Filed 06/29/17 Page 10 of 29 1 "repeated desmear process" construction covers two or more desmear passes, while the 2'069 patent dependent claim covers a "double desmear" alone. See, e.g., Indacon, Inc. v. 3 Facebook, Inc., 824 F.3d 1352, 1358 (Fed. Cir. 2016) (no claim differentiation where 4 "the claims are not otherwise identical in scope"); Starhome GmbH v. AT&T Mobility 5 LLC, 743 F.3d 849, 855, 858 (Fed. Cir. 2014) (no claim differentiation where "[t]he 6 claims differ in scope"). 7 B. Plaintiff’s Specification-Based Arguments Should Be Rejected. 8 Plaintiff does not address the multiple portions of the specification unequivocally 9 representing that "the present invention" and "desmear process as disclosed herein" 10 require using a "repeated," "double," or "second pass" desmear process: 11  "[T]he present invention differs from the common desmear process in that sub-steps in the desmear process are repeated as a way of forming the teeth." (’582 12 patent, 8:49-52.) 13  "[T]he peel strength produced in accordance with the present invention is greater 14 than the peal [sic] strength produced by the desmear process of the prior art, i.e., a single pass desmear process." (Id., 7:3-6.) 15 16  "In stark contrast with the etch and swell process of the known prior art, however, a second pass through the process (sub-steps A through F) is used." 17 (Id., 9:1-3.) 18  "In this regard, a Crimson product of Shipley is suitable, though the desmear 19 process as disclosed herein is contrary to the manufacturer’s specifications, i.e., a'double desmear process,’ rather than the single desmear process of the 20 known prior art." (Id., 5:59-63.) 21 Ignoring these disclosures, Plaintiff contends that the patents teach three "best 22 methods" to achieve the claimed "teeth"—i.e., "(1) slowed etching; (2) repeated etching; 23 and (3) slowed and repeated etching"—and that limiting the claims to a repeated desmear 24 process thus "would exclude some of the best methods from practicing the invention as 25 disclosed in the specification." (PBr. at 5, 11.) Because the latter two "methods" require 26 a repeated desmear process, Plaintiff’s core argument is that the claims cover "slowed" 27 etching without a repeated desmear process. But its support for that argument is the 28-5-Case 2:16-cv-02026-DGC Document 199 Filed 06/29/17 Page 11 of 29 1 passing use of the word "slowed" in the following specification paragraph: 2 It is theorized by the inventors that the best methods for producing the teeth is to use non-homogeneous materials and/or techniques. For example, a 3 dielectric material can have a non-homogeneous composition or thickness 4 to bring about an uneven chemical resistance, such that slowed and/or repeated etching will form teeth instead of a uniform etch. 5 (Id. at 10-11 (citing'582 patent, 2:25-30).) Plaintiff’s effort to expand the claims to 6 cover a single pass desmear process using "slowed" etching fails for several reasons. 7 First, Plaintiff identifies no embodiment using a "slowed" etching rate—because 8 there is none. The patents provide no guidance on how to slow the etch rate as compared 9 to other etch rates, or how a person of ordinary skill might form the claimed "teeth" using 10 a single pass desmear merely with a "slowed" etch rate. Indeed, the only reference to a 11 specific etch time describes how long ("6-10 min.") a prior art datasheet recommended 12 to etch prior art dielectric material (Probelec) using a prior art single pass desmear. 13 (’582 patent, 8:43-60; Dkt. 188-03, Ex. 10 [Probelec Datasheet] at 5 ("Etch" step for "6-14 10 min.").) The patents never suggest that the claimed invention covers that prior art 15 single pass desmear process, and never suggest changing those disclosed etching times in 16 any way. (Ex. 25 [Raghavan Resp. Decl.] ¶¶ 15-16.) 17 Second, the specification expressly confirms that the alleged invention does not 18 involve "merely increasing the [etch] times … for the desmear process"—i.e., does not 19 cover etching that is "slowed" such that it would take longer to complete—and instead 20 requires "completing the process a second time": 21 One technique for forming the teeth is somewhat similar to what has been 22 known as the swell and etch or desmear process, except that contrary to all 23 known teachings in the prior art, in effect, a'double desmear process’ is utilized. That is, not merely increasing the times and temperatures and other 24 parameters for the desmear process, but instead completing the process a first time, and then completing the process a second time. 25 26 (’582 patent, 5:40-48; Ex. 25 [Raghavan Resp. Decl.] ¶ 17.) Plaintiff never addresses this 27 unequivocal explanation.2 28 2 Although this passage refers to a double desmear as "[o]ne technique for forming the-6-Case 2:16-cv-02026-DGC Document 199 Filed 06/29/17 Page 12 of 29 1 Third, the patents only mention a single pass desmear process when criticizing 2 that process as leading to insufficient roughening and when distinguishing it as 3 generating roughening that "differs from," is "contrary to," and stands in "stark contrast 4 with" that achieved using the claimed invention. (’582 patent, 5:40-47, 5:59-63, 7:3-6, 5 8:49-52, 9:1-9; Ex. 25 [Raghavan Resp. Decl.] ¶ 18.) Given these many statements 6 disclaiming a single pass desmear process—without regard to the amount of etching 7 time—Plaintiff cannot attempt to cover that same process based on a single unexplained 8 reference to "slowed" etching. See Trustees of Columbia Univ. v. Symantec Corp., 811 9 F.3d 1359, 1366 (Fed. Cir. 2016) ("This single sentence in the specification cannot 10 overcome the overwhelming evidence in other parts of the specification and the 11 provisional application … demonstrating that the intended definition of this term does not 12 include [the relevant feature]."); Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 13 1318-19 (Fed. Cir. 2006) (rejecting argument patentee "confirmed a broader scope of his 14 claims" based on "ambiguous" statement "possibly inconsistent with the written 15 description" because "such a broad and vague statement cannot contradict the clear 16 statements in the specification describing the invention more narrowly"). 17 Finally, Plaintiff’s twisted reading of the specification also conflicts with the 18 relevant extrinsic evidence. This includes the opening declaration of Defendants’ expert, 19 Dr. Raghavan, that addresses substantial technical details relevant to the parties’ disputes 20 (Dkt. 188-03, Ex. 5)—unlike the cursory assertions of Plaintiff’s expert, Mr. Hoffman 21 (Dkt. 189-02). It also includes April 1998 Continental Circuits Inc. documents stating 22 that: 23 24 25 teeth," the patents do not disclose any other technique and elsewhere describe the same double desmear process as the claimed invention. (Id., 5:40-47, 5:59-63, 7:3-6, 8:49-52, 26 9:1-9.) Thus, "one technique" or similar "for example" language cannot recapture disclaimed subject matter. See Medicines Co. v. Mylan, Inc., 853 F.3d 1296, 1309 (Fed. 27 Cir. 2017) (limiting claims to example described as "non-limiting" where "no other part 28 of the patents’ written description sufficiently teaches the affirmative steps that constitute [the claimed invention]" (citing Alloc, Inc. v. ITC, 342 F.3d 1361, 1370 (Fed. Cir. 2003)).-7-Case 2:16-cv-02026-DGC Document 199 Filed 06/29/17 Page 13 of 29 1 2 3 4 5 (Ex. 26 [4/98 Memo] at 1; Ex. 30 [4/6/98 Letter] at 2.) 6 These documents from the time period of the original patent prosecution further confirm 7 that the named inventors did not view their alleged innovation as involving a "slowed" 8 single pass desmear process. (Ex. 25 [Raghavan Resp. Decl.] ¶¶ 19-21.) 9 In the end, Plaintiff relies on a single, vague mention of "slowed" etching without 10 any discussion of what that ambiguous disclosure might mean or any teaching how 11 "slowed" etching could lead to the claimed "teeth."3 That bare disclosure cannot override 12 the repeated representations explicitly disclaiming coverage of a single pass desmear 13 process (regardless of etching times) and expressly limiting the scope of "the present 14 invention" to a dielectric surface roughened using a repeated desmear process.4 15 3 16 Given this lack of disclosure, a construction covering "slowed etching" would render the claims invalid for lack of enablement and/or written description. See Liebel-17 Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1380 (Fed. Cir. 2007) ("The irony of this 18 situation is that Liebel successfully pressed to have its claims include a jacketless system, but, having won that battle, it then had to show that such a claim was fully enabled, a 19 challenge it could not meet."). 4 20 Plaintiff states that, in Unwired Planet LLC v. Apple Inc., 829 F.3d 1153, 1358 (Fed. Cir. 2016), the Federal Circuit refused to import a feature described as "the present 21 invention." (PBr. at 7.) But that decision found just the opposite: that the patent did not describe a voice channel as part of "the present invention," where the first sentence of a 22 paragraph referred to "the present invention" and a voice channel was discussed later in 23 the same paragraph. Unwired Planet, 829 F.3d at 1358 ("[I]t is certainly not the case that everything in that first paragraph in the summary of the invention constitutes a mandatory 24 claim limitation to be read into claims."). Here, the patents expressly define a repeated 25 desmear process as "the present invention" and process "disclosed herein." (E.g.,'582 patent, 5:59-63, 7:3-6, 8:49-52.) Plaintiff also cites Absolute Software Inc. v. Stealth 26 Signal, Inc., 659 F.3d 1121, 1137 (Fed. Cir. 2011) and Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1326 (Fed. Cir. 2006). (PBr. at 8.) But those cases merely found that features 27 described as optional and restricted to a specific embodiment were not required. Here, 28 the asserted patents never describe a repeated desmear as optional or limited to embodiments—it describes a repeated desmear as the present invention itself in the only-8-Case 2:16-cv-02026-DGC Document 199 Filed 06/29/17 Page 14 of 29 1 C. Plaintiff’s File History-Based Arguments Should Be Rejected. 2 Plaintiff does not address the file history statements in which the patentees and 3 their expert represented that the asserted claims are directed to "teeth" made using "two 4 separate" passes of a desmear process. (DBr. at 7.) Instead, Plaintiff cites a procedure-5 related discussion that occurred when the Patent Office issued a restriction requirement (a 6 directive to take certain claims in an application and file them in a separate application) 7 for a patent not asserted here (the'870 patent). (PBr. at 12-13.) Plaintiff’s resort to a 8 procedural discussion regarding different claims in a different patent only highlights the 9 weakness of its position. See, e.g., Ventana Med. Sys., Inc. v. Biogenex Labs., Inc., 473 10 F.3d 1173, 1184 n.4 (Fed. Cir. 2006) (holding arguments made during prosecution about 11 procedural dispute did not modify claim scope). 12 And in any event, parties cannot revoke statements made in a patent that narrow 13 the claimed invention simply by resorting to broadening statements during prosecution. 14 See, e.g., Clare v. Chrysler Grp. LLC, 819 F.3d 1323, 1332 (Fed. Cir. 2016) (statements 15 "in the prosecution history cannot expand the scope of the specifications"); Telcordia 16 Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1375 (Fed. Cir. 2010) (rejecting reliance 17 on broadening statement in file history that a payload field can contain "multiple data 18 packets" where "the specification does not disclose any mechanisms that would allow 19 more than one packet per frame" and statement would "trump the plain language of the 20 claims and the direct teaching of the specification"); Honeywell, 452 F.3d at 1319 ("[A]n 21 expression by a patentee during prosecution that he intends his claims to cover more than 22 what his specification discloses is entitled to little weight.").5 23 III. THE LIQUID DIELECTRIC LIMITATIONS 24 25 embodiment. 5 26 Plaintiff cites language that the applicants submitted to argue against the restriction requirement. But the Examiner maintained the restriction—without ever stating, or even 27 suggesting, that the patents’ statements about "the present invention’s" repeated desmear 28 process could be ignored. (Ex. 189-05 [4/27/99 Response] at 1-2; Ex. 189-06 [7/26/99 Office Action] at 2-3.)-9-Case 2:16-cv-02026-DGC Document 199 Filed 06/29/17 Page 15 of 29 1 Defendants’ brief explained why the "[epoxy] dielectric material delivered with [] 2 solid content" limitations found in each asserted'560,'105, and'912 claim should be 3 construed to mean "dielectric material delivered with solid particles suspended in a 4 liquid"—just as the applicants and their expert represented during prosecution, and 5 consistent with the plain meaning of "solid content" and the specification’s sole use of 6 the "solid content" modifier to refer to liquid dielectric material. (DBr. at 8-12.) Plaintiff 7 raises several arguments in response, each of which fails. 8 First, Plaintiff accuses Defendants of attempting to import a "liquid" requirement 9 into the terms "epoxy dielectric material" and "dielectric material" via a lexicography or 10 disclaimer theory. (PBr. at 14.) But Defendants do not contend that the asserted patents 11 attribute a special meaning to those terms or disclaim certain types of dielectric materials. 12 Rather, Defendants’ liquid-based construction is grounded in the words "delivered with 13 solid content." Accordingly, claims requiring "epoxy dielectric material" and "dielectric 14 material" alone—as in the'582 patent—cover liquid and non-liquid dielectric material. 15 And claims requiring "epoxy dielectric material delivered with solid content" or 16 "dielectric material delivered with solid content"—as in the'560,'105, and'912 17 patents—only cover liquid dielectric material with solid particles. Any other conclusion 18 would improperly excise the words "delivered with solid content." (DBr. at 9-11; Ex. 25 19 [Raghavan Resp. Decl.] ¶¶ 22-26.) 20 Second, Plaintiff points to the specification’s statement that devices can be made 21 using either liquid or non-liquid dielectric material. (PBr. at 14.) But that disclosure 22 supports Defendants’ position—by demonstrating the named inventors appreciated that 23 dielectric material comes in liquid and non-liquid forms, but they used the "solid content" 24 modifier only when referring to otherwise liquid dielectric materials. (DBr. at 11-12; see 25 also Ex. 25 [Raghavan Resp. Decl.] ¶ 27.) Plaintiff also says that Defendants’ 26 construction would improperly "ignore, at least, a (dry) film embodiment." (PBr. at 14.) 27 Not so. As noted above, claims lacking the "delivered with solid content" requirement— 28 like those in the'582 patent—cover both liquid and non-liquid dielectric material. See-10-Case 2:16-cv-02026-DGC Document 199 Filed 06/29/17 Page 16 of 29 1 Boss Indus., Inc. v. Yamaha Motor Corp. U.S.A., Inc., 333 F. App’x 531, 541 (Fed. Cir. 2 2009) (affirming construction where "disclosed embodiments are not encompassed by the 3 current claim construction, [where] other unasserted claims cover those alternative 4 embodiments"). 5 Third, Plaintiff contends that Defendants rely on a "misreading" of the'560 patent 6 file history because, according to Plaintiff, the applicants and their expert identified the 7 Probelec embodiment solely in response to a "new matter" rejection. (PBr. at 15.) But 8 that argument itself misreads the file history—which includes a separate indefiniteness 9 objection (appearing on the same page) that the Examiner lodged against the newly-10 added "delivered with solid content" limitations: 11 Claims 1, 2, 14, 16, and 18 are rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and 12 distinctly claim the subject matter which applicant regards as the invention. 13 In particular, regarding the claims 1, 14, 16, and 18, the recitations "delivered with solid content" and "etching of the epoxy uses non-homogeneity with 14 the solid content" are unclear and confusing. It is not clear as to what is meant by a dielectric material being delivered with solid content and it is 15 also unclear as to how epoxy uses non-homogeneity with the solid content. 16 (Dkt. 188-03, Ex. 9 [4/24/12 Office Action] at 4.) It was that indefiniteness objection 17 that the applicants were addressing when they clarified the meaning of dielectric material 18 "delivered with solid content": "By describing the epoxy as having a solid content of 19 58%, one skilled in the art would understand that Probelec XB7081 includes solid 20 particles in a percentage of 58% suspended in a generally liquid epoxy …." (Id., Ex. 6 21 [6/25/12 Response] at 8-9.) 22 The applicants and their expert, Dr. Wong, also elsewhere made clear that they 23 were representing how a person of ordinary skill would "understand" the "delivered with 24 solid content" limitation. (Id., Ex. 6 [Wong Decl.] ¶ 4 ("By describing the epoxy as 25 having a solid content of 58%, I understand that Probelec XB7081 includes solid 26 particles suspended in a generally liquid dielectric."); Id. [6/25/12 Response] at 8 ("As 27 noted by Dr. Wong, by describing the epoxy as having a solid content of 58%, one 28-11-Case 2:16-cv-02026-DGC Document 199 Filed 06/29/17 Page 17 of 29 1 skilled in the art would understand that Probelec XB7081 includes solid particles 2 suspended in a generally liquid epoxy.").) 3 Indeed, Plaintiff concedes elsewhere in its brief that "Dr. Wong explained the 4 ordinarily understood meaning of'solid content’ to the examiner"—and did not just 5 identify an embodiment or describe Probelec generally. (PBr. at 16; see also Ex. 25 6 [Raghavan Resp. Decl.] ¶¶ 28-29.) Defendants are entitled to rely on statements like 7 these made during prosecution about a claim term’s meaning. See BASF Agro B.V. v. 8 Makhteshim Agan of N. Am., Inc., 519 F. App’x 1008, 1017 (Fed. Cir. 2013) ("[The] 9 public is entitled to rely on [an expert’s] representations in determining the claimed 10 invention’s scope.").6 11 Plaintiff further contends that the file history statements only apply to limitations 12 requiring "epoxy dielectric material"—not to limitations requiring "dielectric material" 13 alone—because Dr. Wong referred to Probelec as "a generally liquid dielectric epoxy." 14 (PBr. at 16-17.) But Dr. Wong’s statements had nothing to do with whether Probelec 15 included epoxy, and even Plaintiff does not suggest that only epoxy dielectric material 16 comes in liquid form. Dr. Wong provided his understanding about the meaning of 17 "delivered with solid content," and that meaning applies across all claims, regardless of 18 whether the dielectric material includes epoxy. See Southwall Techs., Inc. v. Cardinal IG 19 Co., 54 F.3d 1570, 1579 (Fed. Cir. 1995) ("[A]rguments made during prosecution 20 regarding the meaning of a claim term are relevant to the interpretation of that term in 21 every claim of the patent absent a clear indication to the contrary."); see also In re 22 Varma, 816 F.3d 1352, 1363 (Fed. Cir. 2016) (relying on "strong" principle that "the 23 same phrase in different claims of the same patent should have the same meaning").7 24 6 Plaintiff wrongly suggests that Defendants are using the file history to limit the claims 25 to a disclosed embodiment. (PBr. at 14-15.) The file history statements merely confirm 26 how a person of ordinary skill would interpret "[epoxy] dielectric material delivered with solid content"—i.e., as referring to [epoxy] dielectric material delivered with solid 27 particles suspended in a liquid, just as the applicants and Dr. Wong represented. 7 28 Plaintiff alleges that Defendants’ construction "would impermissibly invite the jury to compare the dielectric material found in the accused products with XB 7081, as opposed-12-Case 2:16-cv-02026-DGC Document 199 Filed 06/29/17 Page 18 of 29 1 Finally, Plaintiff argues that Defendants’ construction amounts to a "brainteaser" 2 because it "would necessarily entail asking a jury to find that a hardened, finished 3 product is comprised of liquid." (PBr. at 17.) But Defendants’ construction merely 4 specifies that, for claims requiring dielectric material "delivered with solid content," a 5 liquid dielectric containing suspended solid particles must be used to make the finished 6 product. Despite Plaintiff’s suggestion to the contrary, an apparatus claim can require 7 the use of certain materials during manufacture. E.g., Gemtron Corp. v. Saint-Gobain 8 Corp., 572 F.3d 1371, 1378-79 (Fed. Cir. 2009) (construing apparatus claim directed to a 9 shelf as requiring component to have certain traits "when glass is being inserted into the 10 frame" during manufacture); Nystrom v. TREX, 424 F.3d 1136, 1142-46 (Fed. Cir. 2005) 11 (construing "board" as requiring "piece of elongated construction material made from 12 wood boards that are cut from a log"); Reckitt Benckiser Pharm. Inc. v. Watson Labs., 13 2016 WL 3186659, at *15 (D. Del. June 3, 2016) ("When a claim is directed to a product 14'comprising’ certain elements, those elements may be described in the claim in the state 15 in which they exist during manufacture, before the final product exists." (citing Gemtron, 16 572 F.3d at 1378)). 17 IV. THE MEANS-PLUS-FUNCTION LIMITATIONS 18 Defendants separately explained why each of the three means-plus-function terms 19 should be construed to require the full structure of the allegedly inventive "teeth" set 20 forth in the specification (’582 patent, 3:18-4:11). (DBr. at 12-16.) Plaintiff agrees "that 21 the [relevant] structure is appropriate teeth for performing each function," but argues the 22 teeth only need cherry-picked parts of that structure. (PBr. at 18-19.) Plaintiff is wrong. 23 First, Plaintiff argues that Defendants’ proposed structure is not "clearly linked or 24 associated with the recited function." (PBr. at 19.) That is incorrect. The specification 25 26 to comparing the accused products to what the claims require." (PBr. at 17.) But Defendants’ noninfringement defense does rest on a comparison between the accused 27 products and claims. Plaintiff cannot avoid a proper construction simply because the 28 patent discloses an example of a liquid dielectric, and any legitimate jury concerns could be addressed in jury instructions.-13-Case 2:16-cv-02026-DGC Document 199 Filed 06/29/17 Page 19 of 29 1 teaches that the allegedly inventive "teeth" must not be "too small, wide, straight, and 2 shallow" and not "too large, deep, and fanged or hook-shaped"—and that these "critically 3 important factors" must be in "the correct balance." (’582 patent, 2:7-23.) Structural 4 aspects of teeth meeting that allegedly "correct balance" are set forth in just one portion 5 of the specification: the passages that Defendants cite as structure. There, the patent 6 makes clear that, to achieve a "balance of mechanical grip without a weakening of the 7 integrity of the layering" (id., 4:9-11), the resulting dielectric surface needs "at least 8 about 20% of the teeth" (id., 4:7-11) to fall, for example, between.1-.2 mils deep (id., 9 3:52-61), and to constitute "at least about 5,000 teeth per linear inch" (id., 3:62-65). Only 10 Defendants’ construction captures these "critically important" structural features. 11 And despite Plaintiff’s current assertion that Defendants’ proposed structure is not 12 "clearly linked" to the proposed functions, throughout much of the claim construction 13 process, Plaintiff proposed nearly all the same structure that Defendants propose here. 14 (DBr. at 13-14.) Apparently recognizing the problems that disclosed structure creates for 15 its infringement positions, Plaintiff more recently abandoned its reliance on much of that 16 structure in this litigation. (PBr. at 13.) Just three days ago, however, Plaintiff told the 17 Patent Office—concerning a pending patent application that shares the specification at 18 issue here—that "means for joining…" and "means for interlocking…" limitations 19 require structure found in the same portions of the specification that Defendants cite here. 20 (Ex. 27 [6/26/17 Response] at 20-21.) These recent representations only further confirm 21 the correctness of Defendants’ constructions. 22 In sum, Plaintiff’s narrowed cited structure for the "means for joining" element 23 (’582 patent, 3:21-23) fails to identify any structural aspects of the claimed teeth. And 24 Plaintiff’s new structure for the "means for mechanically gripping" limitation (id., 3:42-25 51) and "means for interlocking" limitation (id., 3:40-47) do not even mention teeth 26 frequency or depth—both of which the specification clearly links to the claimed 27 functions. (Ex. 25 [Raghavan Resp. Decl. ¶¶ 30-39.) Such selective, incomplete 28 descriptions of recited structure should be rejected. See, e.g., Cardiac Pacemakers, Inc.-14-Case 2:16-cv-02026-DGC Document 199 Filed 06/29/17 Page 20 of 29 1 v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002) (explaining "corresponding 2 structure must include all structure that actually performs the recited function"). 3 Indeed, under Plaintiff’s proposal, the asserted claims could be met if an accused 4 substrate contains a trivial number of teeth—out of billions—that have a "saw-toothed" 5 or "fanged" shape—even though the patent understandably does not claim that such stray 6 teeth would have any meaningful impact. Rather, the patent makes clear that its claims 7 of improved roughening and adhesion hinge on the existence of certain percentages of 8 teeth (at least 20%) that meet certain frequency (at least 5,000 per linear inch) and depth 9 (.1 to.2 mils) requirements, just as Defendants have proposed. 10 Second, Plaintiff faults Defendants for proposing an "all-in-one corresponding 11 structure" for disputed terms featuring three different verbs: "joining," "mechanically 12 gripping," and "interlocking." (PBr. at 19.) During most of the claim construction 13 process, however, Plaintiff itself proposed identical structure for each means-plus-14 function term, including much of the same structure that Defendants cite here (along with 15 citations to significant additional portions of the specification). (DBr. at 13-14.) Plaintiff 16 does not explain how the patent allegedly treats these functional terms differently— 17 because it does not. The specification uses the verbs interchangeably. (E.g.,'582 patent, 18 1:54-57 ("[A] unique surface structure … is particularly suitable for joining the dielectric 19 material to the conductive coating and conductive layer. The surface structure is 20 comprised of teeth that are preferably angled or hooked like fangs or canine teeth to 21 enable one layer to mechanically grip a second layer."); id., 3:22-23 ("It could also be 22 said that the layers join in a saw-toothed manner, i.e., teeth made of both materials in an 23 interlocking bite."); see also Ex. 25 [Raghavan Resp. Decl.] ¶ 36.) 24 Nor do Plaintiff’s specification citations justify treating the three functional terms 25 differently. Plaintiff cites Figure 1 as required structure, but nothing in that figure (or the 26 text describing it) treats certain teeth as performing a "joining" function, other teeth as 27 performing a "mechanically gripping" function, and still other teeth as performing an 28 "interlocking" function. In fact, the patent explains that Plaintiff’s "joining" structure-15-Case 2:16-cv-02026-DGC Document 199 Filed 06/29/17 Page 21 of 29 1 (’582 patent, 3:21-23) is merely a "way of articulating this'teeth’ concept," and its 2 "interlocking" structure (id., 3:40-47) is simply a "further way of articulating" the same 3 concept. Indeed, the term "interlocking" only appears in the portion of the specification 4 that Plaintiff identifies as "joining" structure, and not in what Plaintiff calls 5 "interlocking" structure. 6 Third, Plaintiff says that Defendants’ structure "omits Figure 1 entirely." (PBr. at 7 19.) But Defendants’ structure captures the complete textual description of Figure 1, and 8 Plaintiff does not identify any structure shown in Figure 1 absent from that description. 9 Regardless, Defendants would not object to adding a citation to Figure 1 as structure if 10 the full textual description is included too. Citing the figure without that full description, 11 as Plaintiff proposes, would improperly leave the jury to guess what structure is shown in 12 the image and required by the claims. See Sulzer Textil A.G. v. Picanol N.V., 358 F.3d 13 1356, 1366 (Fed. Cir. 2004) (noting need "to provide the jury in a patent case with 14 instructions adequate to ensure that the jury fully understands the court’s claim 15 construction rulings and what the patentee covered by the claims").8 16 Finally, Plaintiff contends that Defendants’ structure is inconsistent with separate 17 claim elements. (PBr. at 19.) Not so. Having chosen to write their claims in means-18 plus-function format, the named inventors are limited to the specific structures described 19 in the specification as clearly linked to the claimed functions—even if other claim 20 elements address similar structural elements. See, e.g., Nomos Corp. v. Brainlab USA, 21 Inc., 357 F.3d 1364, 1367-69 (Fed. Cir. 2004) (separate claim elements cannot expand 22 scope of a means-plus-function term beyond structure disclosed in the specification). 23 Nor is there any inconsistency between other claim elements and Defendants’ 24 structure. For example, although claims 109 and 114 of the'582 patent require that "a 25 8 26 Plaintiff states that "during prosecution of the'582 patent the inventors submitted a declaration in which Dr. C.P. Wong correlated Figs. 1 and 2 to the claimed'means for’ 27 function." (PBr. at 19.) But there is no dispute that Figure 1 depicts an embodiment of 28 the claimed invention, and Figure 2 merely shows the prior art—not any structure that the named inventors were attempting to claim as new.-16-Case 2:16-cv-02026-DGC Document 199 Filed 06/29/17 Page 22 of 29 1 plurality of the teeth are within the range of 1 tenth of a mil deep to 1.75 tenths of a mil 2 deep," that limitation falls within the broader.1-.2 mils range Defendants propose. (’582 3 patent, 3:57-61.)9 Plaintiff also notes that the claimed function for the "means for 4 mechanically gripping" limitation in claim 114 requires that "the conductive layer is 5 burrowed in and under the top surface of the dielectric material." (PBr. at 19.) Plaintiff 6 contends that Defendants’ structure includes "teeth which do not burrow in and under a 7 surface." (Id.) But it tellingly fails to explain why that is so, or why any such disclosure 8 would undermine Defendants’ cited structure. 9 V. THE INDEFINITE CLAIM TERMS 10 Plaintiff agrees that the touchstone of indefiniteness is whether a person of 11 ordinary skill could objectively ascertain the bounds of the disputed claim limitation with 12 "reasonable certainty." (PBr. at 20.) Yet, Plaintiff offers no evidence from its expert 13 about how such a person would understand any of the four terms that Defendants have 14 identified as indefinite. By contrast, Defendants submitted a detailed declaration in 15 which their expert, Dr. Raghavan, provided a thorough explanation as to why a person of 16 ordinary skill cannot determine the objective bounds of those limitations with the 17 requisite level of certainty. That record confirms indefiniteness. 18 A. Plaintiff Waived Its Arguments On The Indefiniteness Terms. 19 Plaintiff’s brief devotes just a single substantive paragraph to the indefiniteness 20 terms, in which it proclaims—without explanation or citation to evidence—that a person 21 of ordinary skill "would ascertain" the terms’ "scope and meaning." (Id. at 22.) By 22 reserving all substantive arguments and evidence (if any), Plaintiff has unfairly deprived 23 Defendants of the opportunity to respond on the merits and forced Defendants to devote 24 space here to address arguments Plaintiff might not even make in its responsive brief.10 25 9 26 Plaintiff asserts—without explanation—that Defendants’ proposed structure is limited to the preferred embodiment of teeth "at least 1.25 tenths [of a mil] deep." (PBr. at 19.) 27 As noted above, Defendants’ proposed structure is broader: the teeth range from "at least 28 1 tenth of a mil deep" to "about 2 tenths of a mil" (’582 patent, 3:57-61). 10 Plaintiff knew of Defendants’ indefiniteness contentions more than three weeks before-17-Case 2:16-cv-02026-DGC Document 199 Filed 06/29/17 Page 23 of 29 1 To address this tactical gamesmanship and protect Defendants from the resulting 2 undue prejudice, Plaintiff should be deemed to have waived all definiteness arguments 3 and proposed constructions not addressed in its opening brief. See Novosteel SA v. 4 United States, 284 F.3d 1261, 1274 (Fed. Cir. 2002) (finding "[a]s a matter of litigation 5 fairness and procedure" waiver of arguments raised "for the first time in a reply brief"); 6 Hisun Motors Corp., U.S.A. v. Automotive Testing & Dev. Servs., Inc., 2012 WL 682398, 7 at *3 n.2 (D. Ariz. Mar. 2, 2013) (Campbell, J.) ("Arguments not raised in an opening 8 brief are typically waived. Because Metal has not had a chance to respond to these 9 arguments, the Court will not entertain them." (citing Delgadillo v. Woodford, 527 F.3d 10 919, 930 n.4 (9th Cir. 2008))). 11 B. "A Sample of the Circuitry" 12 Defendants explained why the'582 patent offers no objective guideposts for a 13 person of ordinary skill to discern the scope of the "a sample of the circuitry" 14 limitation—including how large the "sample" must be, from where it must be drawn, and 15 whether it must be representative of the rest of the roughened surface. (DBr. at 16-18.) 16 Plaintiff devotes less than one sentence to this term, stating only that "a person of 17 ordinary skill in the art would understand basic engineering principles such as calculating 18 frequency per linear inch." (PBr. at 22.) Even this conclusory statement, made without 19 any supporting evidence, misses the point. The uncertainty concerns which portion(s) of 20 the circuitry must comprise the claimed "sample"—not whether a person of ordinary skill 21 can calculate frequency as a general matter. (Ex. 25 [Raghavan Resp. Decl.] ¶ 41.) As 22 described in Defendants’ brief, the patent fails to provide guidance on this threshold 23 issue. The term is therefore indefinite.11 24 filing its brief (Ex. 29 [5/16/17 Email]), and cited evidence for its arguments and 25 alternative constructions in the Joint Claim Construction Statement (Dkt. 177 [JCCS] at 26 15-18). Yet, it addressed none of these issues or evidence in its brief. 11 On May 18, Plaintiff produced non-technical dictionary definitions of "sample" and 27 "frequency"—none of which appears in the Joint Claim Construction Statement or 28 Plaintiff’s opening brief. Plaintiff should be precluded from relying on this belated evidence in its responsive brief. See Innovative Display Techs. LLC v. Acer Inc., 2014-18-Case 2:16-cv-02026-DGC Document 199 Filed 06/29/17 Page 24 of 29 1 C. "Upgrade Slope" 2 Defendants’ brief demonstrates that the'582 patent provides no guidance as to 3 what "upgrade slope" means, and that a person of ordinary skill cannot distinguish when 4 a slope is an "upgrade" slope as opposed to a "downgrade" slope or some other kind of 5 slope. (DBr. at 18-19.) Plaintiff devotes less than one sentence to this term, asserting 6 without support that a person of ordinary skill would "understand mathematical concepts 7 like slope and be able to determine an upgrade slope." (PBr. at 22.) 8 In the Joint Claim Construction Statement (but not in its brief), Plaintiff cites 9 Figure 1 as support. (Dkt. 177 [JCCS] at 15.) But the patent never describes that figure 10 as showing an "upgrade slope." In addition, Figure 1 of the'582 patent (which shows the 11 dielectric material on top and conductive material on bottom) appears upside down in the 12 other three asserted patents, as shown below: 13 14 15'582 patent, Fig. 1'560 patent, Fig. 1 16 Neither Plaintiff nor the patents explain how a person of ordinary skill could objectively 17 determine which slopes shown in these images (if any) are "upgrade slopes" and which 18 (if any) are "downgrade slopes" (or some other kind of slope)—including when the same 19 figure is inverted. (Ex. 25 [Raghavan Resp. Decl.] ¶ 43.) 20 In the Joint Claim Construction Statement (but not in its brief), Plaintiff also cites 21 dictionary definitions for "upgrade" and "slope." (Dkt. 177 [JCCS] at 16.) But the 22 dictionaries are not directed to the relevant technical field, none of the definitions is for 23 24 WL 3402529, at *1 (E.D. Tex. July 11, 2014) (party’s failure to disclose evidence in joint claim construction statement "precludes it from later relying on [the evidence] in its 25 claim construction brief"). The dictionaries also are entitled to little weight because they 26 were published many years after the asserted patents’ 1997 priority date. See Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2128 (2014) ("[D]efiniteness is 27 measured from the viewpoint of a person skilled in [the] art at the time the patent was 28 filed."). Moreover, as explained below, the mere fact that a term has a general dictionary definition does not imply that the term as used in the claim is definite.-19-Case 2:16-cv-02026-DGC Document 199 Filed 06/29/17 Page 25 of 29 1 an "upgrade slope," and all published years after the 1997 priority date. Therefore, they 2 are entitled to little weight. See Network Commerce, Inc. v. Microsoft Corp., 422 F.3d 3 1353, 1359-60 (Fed. Cir. 2005) (rejecting attempt to "combine individual dictionary 4 definitions of'download’ and'component’" to construe "download component"). 5 Moreover, for an indefiniteness analysis, the critical inquiry is not whether a term 6 might have a plain meaning in the abstract. It instead turns on whether the patent makes 7 clear with reasonable certainty what the term means within the scope of the specific 8 claims at issue—and that requisite certainty does not exist here. See Halliburton Energy 9 Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008) ("Even if a claim term’s 10 definition can be reduced to words, the claim is still indefinite if a person of ordinary skill 11 in the art cannot translate the definition into meaningfully precise claim scope."); see also 12 Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2006) (en banc) ("[H]eavy 13 reliance on the dictionary divorced from the intrinsic evidence risks transforming the 14 meaning of the claim term to the artisan into the meaning of the term in the abstract, out 15 of its particular context, which is the specification."). As such, the term is indefinite. 16 D. "Peel Strength Greater Than A Peel Strength That Would Be Produced By A Single Desmear Process" 17 Defendants’ brief demonstrates that the "peel strength …" term is indefinite for 18 two reasons: (1) the'582 patent does not identify which of the many available methods or 19 parameters to use for measuring peel strength; and (2) a person of ordinary skill cannot 20 determine what peel strength "would be produced by a single desmear process." (DBr. at 21 20-21.) Plaintiff’s brief, by contrast, devotes just a few words to this term, arguing that a 22 person of ordinary skill would have known how to "calculat[e]" peel strength. (PBr. at 23 22.) Once again, this conclusory assertion does not even address, let alone cure, the 24 issues identified in Defendants’ brief. (Ex. 25 [Raghavan Resp. Decl.] ¶¶ 41-42.) 25 In the Joint Claim Construction Statement (but not in its brief), Plaintiff cites two 26 patents, a standard for measuring peel strength, and a textbook. (Dkt. 177 [JCCS] at 16.) 27 Plaintiff may argue for the first time in its responsive brief that this evidence shows there 28-20-Case 2:16-cv-02026-DGC Document 199 Filed 06/29/17 Page 26 of 29 1 were known standards at the time for measuring peel strength. But that waived argument 2 would only prove Defendants’ point: by confirming the existence of multiple standards 3 and multiple factors that can influence a peel strength measurement, about which the 4'582 patent says nothing. (DBr. at 20 (citing cases).) 5 E. "Substantially Greater Cross-Sectional Distance Distant From the [Initial] Surface" 6 Defendants’ brief demonstrates that the'560 and'105 patents lack any objective 7 criteria to determine how much greater is "substantially greater," and that a person of 8 ordinary skill therefore would be unable to discern with reasonable certainty whether one 9 cross-sectional distance is "substantially" or "insubstantially" greater than another. (Id. 10 at 21-22.) Plaintiff devotes just three sentences to this term, stating (without citation) that 11 a person of ordinary skill would recognize that the term "refers to cavities that have a 12 width near the surface that is smaller than a width farther from the surface." (PBr. at 22.) 13 That argument fails for several reasons. 14 First, as explained in Defendants’ brief, this interpretation reads "substantially" 15 out of the claims. Thus, the construction cannot be correct, as Plaintiff’s own cited 16 decision confirms. See Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1355 17 (Fed. Cir. 2005) (rejecting construction that "would subvert the definiteness requirement" 18 by removing a word from a phrase that "cannot be given a reasonable meaning except in 19 the absence of that word"). (PBr. at 22 (citing cases).) 20 Second, although the indefiniteness section of Plaintiff’s brief does not cite any 21 evidence, the brief’s general "Technology Tutorial" section includes the unattributed and 22 uncaptioned image below as a supposed "example" of this limitation: 23 24 25 26 27 (Id. at 4.) But no document includes this image, and the patents do not describe the 28 depicted cavity dimensions—much less state they meet the "substantially greater"-21-Case 2:16-cv-02026-DGC Document 199 Filed 06/29/17 Page 27 of 29 1 limitation. In fact, the dimensions of the cavities (6:10 "units" and 7:12 "units") are 2 unsupported by any record evidence. And even under Plaintiff’s view, it is unclear 3 whether the same cavities would still have "substantially greater" widths if the ratios 4 were changed to some other ratio, such as 6:9, 6:8, or 6:7—which is precisely the 5 problem. This unsupported attorney-generated example provides no guidance as to the 6 claim boundaries. See McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1362 (Fed. Cir. 7 2001) ("Mere attorney argument is no substitute for evidence of record."). 8 Finally, in the Joint Claim Construction Statement (but again not in its brief), 9 Plaintiff cites two non-technical dictionary definitions of "substantial" and unrelated 10 patents that use the term "substantially." (Dkt. 177 [JCCS] at 18.) Defendants have no 11 way to know how or if Plaintiff will attempt to use these documents. To the extent 12 Plaintiff argues that Defendants’ position is inconsistent with the documents, it is wrong. 13 First, many of the references post-date the asserted patents’ priority date—some 14 by more than a decade—and therefore are entitled to little weight. Second, Defendants’ 15 own patents are not at issue in this case and thus are of little value here. Indeed, some 16 cited patents do not even use the phrase "substantially greater" (e.g., U.S. Patent No. 17 8,425,785) and others use the phrase in the specification but not the claims (e.g., U.S. 18 Patent No. 7,152,313). (Ex. 25 [Raghavan Resp. Decl.] ¶¶ 44-51.) Third, just because a 19 term appears in a patent or dictionary does not end an indefiniteness inquiry—which is a 20 patent-and claim-specific inquiry that depends on context, such that a term that is 21 indefinite in one patent may be definite in another. See Halliburton, 514 F.3d at 1256 22 (indefiniteness "is highly dependent on context"). Defendants do not contend that every 23 recitation of the word "substantially" (or even "substantially greater") is indefinite. The 24 issue is whether "substantially greater" as used in the'560 and'105 patents is 25 indefinite—which it is, as Defendants’ opening brief demonstrates. (DBr. at 22.) 26 VI. CONCLUSION 27 For the reasons above and in Defendants’ opening brief, Defendants’ proposed 28 constructions should be adopted.-22-Case 2:16-cv-02026-DGC Document 199 Filed 06/29/17 Page 28 of 29 1 DATED this 29th day of June, 2017. 2 3 Respectfully submitted, 4 By:/s/Joseph J. Mueller Chad S. Campbell (State Bar No. 012080) 5 CSCampbell@perkinscoie.com 6 PERKINS COIE LLP 2901 N. Central Avenue, Suite 2000 7 Phoenix, AZ 85012 Telephone: (602) 351-8000 8 Facsimile: (602) 648-7000 9 William F. Lee (admitted pro hac vice) 10 William.Lee@wilmerhale.com 11 Joseph J. Mueller (admitted pro hac vice) Joseph.Mueller@wilmerhale.com 12 WILMER CUTLER PICKERING HALE AND DORR LLP 13 60 State Street 14 Boston, MA 02109 Telephone: (617) 526-6000 15 Facsimile: (617) 526-5000 16 Nina S. Tallon (admitted pro hac vice) 17 Nina.Tallon@wilmerhale.com WILMER CUTLER PICKERING HALE 18 AND DORR LLP 19 1875 Pennsylvania Ave., NW Washington, DC 20006 20 Telephone: (202) 663-6000 21 Facsimile: (202) 663-6363 22 Attorneys for Defendants Intel Corp., Ibiden U.S.A. Corp., and Ibiden Co., Ltd. 23 24 25 26 27 28-23-Case 2:16-cv-02026-DGC Document 199 Filed 06/29/17 Page 29 of 29 1 CERTIFICATE OF SERVICE 2 I certify that on the 29th day of June, 2017, I electronically transmitted the 3 foregoing document to the Clerk’s Office using the CM/ECF System for filing and 4 transmittal of a Notice of Electronic Filing to all CM/ECF registrants of record in this 5 matter. 6 I certify that on June 30, 2017, I will serve the attached document by first class 7 mail on Judge Campbell, United States District Court of Arizona, 401 West Washington 8 Street, Phoenix, Arizona 85003-2118. 9 10/s/Dan Graziano 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

RESPONSE BRIEF by Continental Circuits LLC (Redacted Responsive Claim Construction Brief).

Case 2:16-cv-02026-DGC Document 200 Filed 06/29/17 Page 1 of 29 1 AIKEN SCHENK HAWKINS & RICCIARDI P.C. Joseph A. Schenk – 009260 2 2390 East Camelback Road, Suite 400 Phoenix, Arizona 85016 3 Telephone: (602) 248-8203 Facsimile: (602) 248-8840 4 E-Mail: docket@ashrlaw.com E-Mail: jas@ashrlaw.com 5 Joseph A. Schenk – 009260 6 CALDWELL CASSADY CURRY P.C. Bradley W. Caldwell (pro hac vice) 7 Jason D. Cassady (pro hac vice) J. Austin Curry (pro hac vice) 8 Warren J. McCarty (pro hac vice) 2101 Cedar Springs Rd., Suite 1000 9 Dallas, Texas 75201 Telephone: (214) 888-4848 10 Facsimile: (214) 888-4849 Email: bcaldwell@caldwellcc.com 11 Email: jcassady@caldwellcc.com Email: acurry@caldwellcc.com 12 Email: wmccarty@caldwellcc.com 13 Attorneys for Plaintiff Continental Circuits, LLC 14 IN THE UNITED STATES DISTRICT COURT 15 FOR THE DISTRICT OF ARIZONA 16 17 Continental Circuits LLC, CASE NO. CV-16-2026-PHX-DGC 18 Plaintiff, 19 v. CONTINENTAL CIRCUITS LLC’S 20 RESPONSIVE CLAIM CONSTRUCTION 21 Intel Corp., Ibiden U.S.A. BRIEF Corp., Ibiden Co., Ltd., 22 (REDACTED PUBLIC VERSION) 23 Defendants. 24 25 26 27 28 29 Case 2:16-cv-02026-DGC Document 200 Filed 06/29/17 Page 3 of 29 1 TABLE OF AUTHORITIES 2 3 Cases 4 Absolute Software, Inc. v. Stealth Signal, Inc. 5 659 F.3d 1121 (Fed. Cir. 2011)....................................................................................... 2, 7 6 ACTV, Inc. v. Walt Disney Co. 7 346 F.3d 1082 (Fed. Cir. 2003)......................................................................................... 15 8 Advanced Aerospace Techs., Inc. v. United States 9 124 Fed. Cl. 282 (2015)........................................................................................ 14, 20, 22 10 Advanced Cardiovascular Sys., Inc. v. Scimed Life Sys. 96 F. Supp. 2d 1006 (N.D. Cal. 2000).............................................................................. 21 11 12 AFG Indus., Inc. v. Cardinal IG Co. 375 F.3d 1367 (Fed. Cir. 2004)........................................................................................... 8 13 14 Andrew Corp. v. Gabriel Elec., Inc. 847 F.2d 819 (Fed. Cir. 1988)..................................................................................... 19, 21 15 Apple Inc. v. Samsung Elecs. Co. 16 786 F.3d 983, 1002 (Fed. Cir. 2015) rev’d and remanded on other grounds 17 137 S. Ct. 429 (2016)........................................................................................................ 21 18 Astrazeneca AB, Aktiebolaget Hassle, KBI-E, Inc. v. Mut. Pharm. Co. 19 384 F.3d 1333 (Fed. Cir. 2004)........................................................................................... 3 20 Baldwin Graphic Systems, Inc. v. Siebert, Inc. 512 F.3d 1338 (Fed. Cir. 2008)........................................................................................... 7 21 22 Bonutti Research, Inc. v. Lantz Med., Inc. No. 114-CV-00609, 2016 WL 247752 (S.D. Ind. Jan. 21, 2016)....................................... 8 23 24 Broad. Innovation, LLC v. Echostar Commc’ns Corp. 240 F. Supp. 2d 1127 (D. Colo. 2003).............................................................................. 22 25 Carnegie Steel Co. v. Cambria Iron Co. 26 185 U.S. 403 (1902).......................................................................................................... 13 27 Cayenne Med., Inc. v. Medshape, Inc. 28 No. 2:14-CV-0451-HRH, 2016 WL 2606983 (D. Ariz. May 6, 2016)............................ 21 29 ii Case 2:16-cv-02026-DGC Document 200 Filed 06/29/17 Page 4 of 29 1 Colucci v. Callaway Golf Co. No 6:08-CV-288, 2010 WL 324771 (E.D. Tex. Jan. 21, 2010).......................................... 2 2 3 Datamize, LLC v. Plumtree Software, Inc. 417 F.3d 1342 (Fed. Cir. 2005)......................................................................................... 15 4 5 Deere & Co. v. Bush Hog, LLC 703 F.3d 1349 (Fed. Cir. 2012)............................................................................. 19, 21, 22 6 Depomed, Inc. v. Purdue Pharma L.P. 7 No. CV 13-571, 2017 WL 1319818 (D.N.J. Apr. 6, 2017)............................................... 22 8 Eibel Process Co. v. Minn. & Ont. Paper Co. 9 261 U.S. 45 (1923)...................................................................................................... 18, 19 10 Enzo Biochem, Inc. v. Applera Corp. 11 599 F.3d 1325 (Fed. Cir. 2010)......................................................................................... 19 12 Enzo Biochem, Inc. v. Gen-Probe Inc. 13 323 F.3d 956 (Fed. Cir. 2002)............................................................................................. 8 14 Epistar Corp. v. Int'l Trade Comm'n 15 566 F.3d 1321 (Fed. Cir. 2009)........................................................................................... 3 16 Exxon Research & Eng'g Co. v. United States 265 F.3d 1371 (Fed. Cir. 2001)......................................................................................... 21 17 18 GE Lighting Sols., LLC v. Lights of America, Inc. 663 F. App'x 938 (Fed. Cir. 2016).................................................................................... 16 19 20 GE Lighting Solutions, LLC v. AgiLight, Inc. 750 F.3d 1304 (Fed. Cir. 2014)....................................................................................... 1, 2 21 Geodynamics, Inc. v. Dynaenergetics US, Inc. 22 No. 2:15-CV-1546, 2016 WL 6217181 (E.D. Tex. Oct. 25, 2016).................................. 21 23 In re Howarth 24 654 F.2d 103 (C.C.P.A. 1981)........................................................................................... 18 25 In re Marosi 26 710 F.2d 799 (Fed. Cir. 1983)........................................................................................... 19 27 Julius Zorn, Inc. v. Medi Mfg., Inc. 28 No. 3:15-CV-02734, 2017 WL 960413 (S.D. Cal. Mar. 13, 2017).................................. 21 29 iii Case 2:16-cv-02026-DGC Document 200 Filed 06/29/17 Page 5 of 29 1 Lemelson v. United States 752 F.2d 1538 (Fed. Cir. 1985)........................................................................................... 7 2 3 Liebel-Flarsheim Co. v. Medrad, Inc. 358 F.3d 898 (Fed. Cir. 2004)....................................................................................... 4, 12 4 5 Luminara Worldwide, LLC v. Liown Elecs. Co. 814 F.3d 1343 (Fed. Cir. 2016)........................................................................................... 3 6 Micro Chemical, Inc. v. Great Plains Chemical Co. 7 194 F.3d 1250 (Fed. Cir. 1999)........................................................................................... 3 8 Nautilus, Inc. v. Biosig Instruments, Inc. 9 134 S. Ct. 2120 (2014).................................................................................... 13, 17, 18, 22 10 Northrop Grumman Corp. v. Intel Corp. 11 325 F.3d 1346 (Fed. Cir. 2003)......................................................................................... 11 12 O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co. 13 521 F.3d 1351 (Fed. Cir. 2008)......................................................................................... 11 14 Orthokinetics, Inc. v. Safety Travel Chairs, Inc. 806 F.2d 1565 (Fed. Cir. 1986)…………………………………………………..…14, 20 15 16 Pacing Techs., LLC v. Garmin Int’l, Inc. 778 F.3d 1021 (Fed. Cir. 2015)........................................................................................... 2 17 18 Playtex Prod., Inc. v. Procter & Gamble Co. 400 F.3d 901 (Fed. Cir. 2005)..................................................................................... 11, 12 19 Praxair, Inc. v. ATMI, Inc. 20 543 F.3d 1306 (Fed. Cir. 2008)........................................................................................... 2 21 Rambus Inc. v. Infineon Technologies Ag 22 318 F.3d 1081 (2003).......................................................................................................... 4 23 Robertson Transformer Co. v. Gen. Elec. Co. 24 No. 12-C-8094, 2014 WL 1675022 (N.D. Ill. Apr. 28, 2014).......................................... 21 25 Samson Mfg. Corp. v. Austin Precision Prod., Inc. 26 No. 09-CV-30027, 2010 WL 2639864 (D. Mass. June 29, 2010).................................... 21 27 SciMed Life Sys., Inc. v. Adv. Cardiovascular Sys., Inc. 28 242 F.3d 1337 (Fed. Cir. 2001)........................................................................................... 1 29 iv Case 2:16-cv-02026-DGC Document 200 Filed 06/29/17 Page 6 of 29 1 Scriptpro, LLC v. Innovation Assocs., Inc. 2 762 F.3d 1355 (Fed. Cir. 2014)........................................................................................... 4 3 Seattle Box Co. v. Indus. Crating & Packing 4 731 F.2d 818 (Fed. Cir. 1984)........................................................................................... 19 5 Sonix Tech. Co. v. Publications Int'l, Ltd. 6 844 F.3d 1370 (Fed. Cir. 2017)......................................................................................... 22 7 Specialty Composites v. Cabot Corp. 8 845 F.2d 981 (Fed. Cir. 1988)............................................................................................. 7 9 SRI Int'l v. Matsushita Elec. Corp. of Am. 10 775 F.2d 1107 (Fed. Cir. 1985)......................................................................................... 10 11 Thorner v. Sony Computer Entertainment America LLC 669 F.3d 1362 (Fed. Cir. 2012)......................................................................................... 10 12 13 Trivascular, Inc. v. Samuels 812 F.3d 1056 (Fed. Cir. 2016)........................................................................................... 4 14 15 Vanguard Prod. Corp. v. Parker Hannifin Corp. 234 F.3d 1370 (Fed. Cir. 2000)........................................................................................... 8 16 Verve LLC v. Crane Cams, Inc. 17 311 F.3d 1116 (Fed. Cir. 2002)......................................................................................... 19 18 Vitronics Corp. v. Conceptronic, Inc. 19 90 F.3d 1576 (Fed. Cir. 1996)............................................................................................. 4 20 W.L. Gore & Associates, Inc. v. Garlock, Inc. 21 842 F.2d 1275 (Fed.Cir.1988)..................................................................................... 14, 20 22 Warsaw Orthopedic, Inc. v. NuVasive, Inc. 23 778 F.3d 1365 (Fed. Cir. 2015)................................................................................... 14, 21 24 Wellman, Inc. v. Eastman Chem. Co. 25 642 F.3d 1355 (Fed. Cir. 2011)......................................................................................... 18 26 Wenger Mfg., Inc. v. Coating Mach. Sys., Inc. 239 F.3d 1225 (Fed. Cir. 2001)......................................................................................... 12 27 28 29 v Case 2:16-cv-02026-DGC Document 200 Filed 06/29/17 Page 7 of 29 1 I. ARGUMENT IN REPLY 2 A. Category I Terms 3 The plain and ordinary meaning of these terms does not require the use of a double 4 desmear process. Defendants do not contend otherwise. Thus, this dispute boils down to 5 whether Defendants can demonstrate that the inventors had a "clear and unmistakable" 6 intent to limit all claims to requiring the use of a double desmear process. Defendants have 7 failed to meet this "exacting" standard. GE Lighting Solutions, LLC v. AgiLight, Inc., 750 8 F.3d 1304, 1309 (Fed. Cir. 2014). Indeed, they do not even mention the relevant legal 9 standard in their opening brief at all. 10 According to Defendants, a patent’s specification justifies importing a limitation into 11 a claim by: (1) "describing'the present invention’ as involving" a particular feature; (2) 12 "criticizing, distinguishing, and claiming to improve upon" some embodiment; or (3) by 13 only describing one way to improve over the prior art. Dkt. 191 (Defs.’ Opening Br.) at 6-7. 14 Besides constituting very misleading statements of the law, these are scenarios that might 15 contribute to a finding of disclaimer only if Defendants can demonstrate an intention to 16 clearly and unmistakably disclaim claim scope. It is a mistake to equate these factual 17 scenarios with the actual legal test for importing a limitation into a claim. 18 Turning to Defendants’ first argument, while it is possible that under some 19 circumstances a description of "the present invention" in a patent specification can 20 constitute a disclaimer, see, e.g., SciMed Life Sys., Inc. v. Adv. Cardiovascular Sys., Inc., 21 242 F.3d 1337, 1343–44 (Fed. Cir. 2001) (statement in the specification was "all 22 embodiments of the present invention contemplated and disclosed herein" include a 23 particular feature) (emphasis added), the Federal Circuit has also repeatedly explained that 24 in most instances, the phrase "the present invention" does not act as a disclaimer. This is 25 one such case. For instance, Defendants only rely on portions of the patent which describe a 26 particular example. Unlike in the cases cited by Defendants, the cited portions of the 27 specification in this case do not limit the invention as a whole. Indeed, every quotation 28 identified by Defendants occurs after column 5 line 40 of the'582 patent, which states 29 1 Case 2:16-cv-02026-DGC Document 200 Filed 06/29/17 Page 8 of 29 1 that the double desmear process is "[o]ne technique for forming the teeth." Compare 2 Pacing Techs., LLC v. Garmin Int’l, Inc., 778 F.3d 1021, 1025 (Fed. Cir. 2015) (identifying 3 nineteen non-limiting descriptions of the "present invention," but ultimately finding a 4 disclaimer because the specification clarified that all embodiments of the invention required 5 a particular feature) with Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1326 (Fed. Cir. 2008) 6 (finding that a description of "the invention" referred only to a particular embodiment of 7 the invention not all embodiments); Colucci v. Callaway Golf Co., No 6:08-CV-288, 2010 8 WL 324771, at *6 (E.D. Tex. Jan. 21, 2010) ("the Court will not read a specification 9 discussing'present invention’ to be magic words that automatically triggers a narrowing of 10 the claim language"). 11 It is also improper to import a limitation into the claims "where the references to a 12 certain limitation as being the'invention’ are not uniform, or where other portions of the 13 intrinsic evidence do not support applying the limitation to the entire patent." Absolute 14 Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121, 1136-37 (Fed. Cir. 2011) (finding no 15 disclaimer where a feature was described both as "the present invention" and as a feature 16 that "can be included in the present invention"). As explained in Plaintiff’s opening brief, 17 the specification indicates that the double desmear process is merely "[o]ne technique" and 18 "a way" of forming teeth, and that the Probelec example relied upon by Defendants is 19 merely one way that the invention "can be carried out."'582 patent at 5:40-44, 6:41-45, 20 8:50-53. This is confirmed in the claims themselves—multiple dependent claims add 21 limitations such as "a first and second etching" and the use of a "double desmear process." 22 See GE Lighting Solutions, 750 F.3d at 1309 (refusing to find disclaimer where it would 23 run afoul of the claim differentiation doctrine). It is also confirmed by the specification’s 24 description of other embodiments that require no desmear process at all, and by the 25 prosecution history whereby the examiner and the inventors found that the invention was 26 not limited to using a double desmear process, as explained more fully below. See Dkt. 189 27 (Pl.’s Opening Br.) at 12. Thus, Defendants fail to show that the intrinsic evidence 28 unambiguously limits the claims to a repeated desmear process. 29 2 Case 2:16-cv-02026-DGC Document 200 Filed 06/29/17 Page 9 of 29 1 With regard to Defendants’ second argument, it is also possible that criticizing an 2 exemplary embodiment or identifying a feature as a distinction over the prior art can result 3 in a disclaimer. But for that to be the case, the intrinsic evidence must still clearly and 4 unmistakably demonstrate that the inventors sought to exclude the criticized embodiment 5 from the scope of the claims. See Epistar Corp. v. Int'l Trade Comm'n, 566 F.3d 1321, 1335 6 (Fed. Cir. 2009) ("A patentee’s discussion of the shortcomings of certain techniques is not a 7 disavowal of the use of those techniques in a manner consistent with the claimed 8 invention."). For instance, in Micro Chemical, Inc. v. Great Plains Chemical Co., the 9 patentee explained that a prior art device using the "weigh dump method" was too slow and 10 too inaccurate. 194 F.3d 1250, 1260 (Fed. Cir. 1999). Nonetheless, because it never stated 11 that the invention must be used without the weigh dump method, the Court found that the 12 criticism did not result in a disclaimer. Id. 13 Defendants own cases even confirm that not all criticism rises to the level of a 14 disclaimer; the intrinsic evidence must still clearly and unmistakably disavow the criticized 15 embodiment. Cf. Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1354 16 (Fed. Cir. 2016) (identifying multiple unequivocal disclaimers); Astrazeneca AB, 17 Aktiebolaget Hassle, KBI-E, Inc. v. Mut. Pharm. Co., 384 F.3d 1333, 1340 (Fed. Cir. 2004) 18 (noting that the patentee expressly "defined" the term at issue to include the limitation). 19 Here, the patents explain that using the manufacturer’s recommended desmear process for 20 Probelec XB 7081 will not result in appropriately formed teeth or increased peel strength. 21 But Defendants identify no statement in the specification that the teeth should only be 22 formed via a repeated desmear process, nor do they show that this example of how to use 23 XB 7081 applies to all possible dielectric materials. Indeed, the inventors’ disclosure of 24 slowed etching, e.g., employing a longer etching step as part of a single desmear process, 25 indicates that they contemplated the use of other methods. Accordingly, this exemplary 26 discussion does not rise to the level of clear and unmistakable disavowal of all etching 27 techniques other than a repeated desmear process. This is especially true for the claims that 28 do not even require etching. 29 3 Case 2:16-cv-02026-DGC Document 200 Filed 06/29/17 Page 10 of 29 1 With regard to Defendants’ third argument, Defendants are simply incorrect to 2 argue that the patent specifications are limited to a single embodiment. Rather, they teach 3 that slowed etching and etching techniques that do not require completely repeating a 4 desmear process can also be used to form appropriate teeth. See, e.g.,'582 patent at 2:25-5 30. Defendants do not even attempt to justify excluding these embodiments from the scope 6 of the claims. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) 7 (finding that a claim interpretation that excludes a preferred embodiment is "rarely, if ever, 8 correct"). 9 In any event, it is a basic principle of patent law that a patentee’s claims are not 10 typically limited to an embodiment disclosed in the specification, even when only a single 11 embodiment is described. Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. 12 Cir. 2004). As such, even if the double desmear process were the only example provided as 13 to how to form appropriate teeth (it is not), the claims should still not be so limited. After 14 all, an inventor that discloses multiple features of an invention is entitled to claim only a 15 subset of those features. Scriptpro, LLC v. Innovation Assocs., Inc., 762 F.3d 1355, 1359 16 (Fed. Cir. 2014) ("It is common, and often permissible, for particular claims to pick out a 17 subset of the full range of described features, omitting others."). The inventors were free to 18 obtain claims covering circuitry with a unique teeth structure, irrespective of how that 19 structure was formed. The examiner confirmed this fact during prosecution of the original 20 application. Dkt. 189-5; see, e.g., Rambus Inc. v. Infineon Technologies Ag, 318 F.3d 1081, 21 1094 (Fed. Cir. 2003) (refusing to import a limitation where examiner proposed a 22 restriction implying that claims did not require the limitation). 23 Defendants’ prosecution disclaimer argument is also misplaced. "The party seeking 24 to invoke prosecution history disclaimer bears the burden of proving the existence of a 25'clear and unmistakable’ disclaimer that would have been evident to one skilled in the art." 26 Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1063–64 (Fed. Cir. 2016). The Wong 27 Declaration relied upon by Defendants confirms that the alleged disclaimer in the 28 specification is merely describing one example involving Probelec XB 7081. Dr. Wong 29 4 Case 2:16-cv-02026-DGC Document 200 Filed 06/29/17 Page 11 of 29 1 also explained that the specification describes repeated etching as "a technique" which 2 forms teeth, not the only technique. Dkt. 188-3, Ex. 6 at ¶ 7 (emphasis added). 3 Overall, Defendants misinterpret various snippets of intrinsic evidence, while they 4 ignore other important portions of the evidence—including the claim language, which say 5 nothing of a desmear process, let alone a repeated desmear. This approach cannot pass 6 muster under the applicable legal test that Defendants omitted from their brief. The 7 summary of the invention in the specification, the claims, and the prosecution history all 8 confirm that the inventors did not clearly and unmistakably limit their invention to the 9 repeated desmear process. Even the portions of the specification relied upon by Defendants 10 explain that they are describing just one example of how to practice the invention using 11 Probelec XB 7081. Thus, Defendants have failed to justify importing their preferred 12 limitation into the claims. 13 B. Category II Terms 14 For these terms, Defendants do not dispute that Plaintiff’s proposal is factually 15 correct and would be understood by a person of skill in the art. Defs.’ Op. Br. at 11. A 16 dielectric material delivered with1 solid content is a dielectric material with solid particles 17 suspended in the material. The sole dispute for these terms is whether the claims 18 additionally require that the dielectric material be a liquid. They do not. No claim recites a 19 liquid material, and taken literally, Defendants proposal would require that the claims be 20 limited to only covering an electrical device that is filled with a liquid. This is nonsensical. 21 In any such device, the liquid would seep out and damage the device. Of course, 22 Defendants do not actually attempt to justify this literal reading of their proposal. Instead, 23 they acknowledge that a finished electrical device would contain dielectric material that is 24 dry and hardened. See Defs.’ Op. Br. at 2 (showing cross-section of a finished device). 25 26 1 Defendants criticize Plaintiff’s alternative proposal for omitting the phrase "delivered 27 with," but they identify no substantive problem with that approach. Regardless, Plaintiff does 28 not oppose including this phrase in a construction. After all, Plaintiff contends that no construction is necessary and that the parties should follow the actual claim language. 29 5 Case 2:16-cv-02026-DGC Document 200 Filed 06/29/17 Page 12 of 29 1 Thus, the true claim scope disagreement is whether the Court should import a new 2 "liquid application" step into the claims. It should not. Just as the claims say nothing of a 3 liquid material, they likewise say nothing of a liquid application (no application method is 4 recited at all). As explained below, the invention is agnostic to any application method; to 5 add in such a limitation would be to draft twenty-two new patent claims. 6 As Defendants’ expert has acknowledged, dielectric material may be applied to the 7 device in two ways: (i) the dielectric material (while in liquid form) may be coated and then 8 hardened; or (ii) the dielectric material (while in dry form) may be laminated on as film. 9 Dkt. 188-3, Ex. 5 at ¶¶ 29-32. It is clear that Defendants, although careful to sidestep this in 10 their brief, ultimately seek to exclude dry film applications from the scope of the claims to 11 mint a new non-infringement theory. What Defendants fail to tell the Court, however, is 12 that even dry film applications involve the delivery of solid content in a liquid. The dry 13 film itself must first be made by mixing liquid epoxy and solid content into a varnish, and 14 then pouring the liquid dielectric material onto a plastic sheet and drying it into a film. This 15 process is depicted in industry documents, like the following produced by Defendants: 16 17 18 19 20 21 Ex. B at 365 (explaining that the "varnish" is "composed of an epoxy resin composition 22 with a solid content of approximately 50%") (emphasis added). This alone destroys any 23 hope that Defendants had for interpreting "solid content" to exclude film applications. See 24 also Hoffman Decl. ¶¶ 15-17 (uncovering the source of Dr. Raghavan’s film images). 25 1. Intrinsic Evidence Confirms that the Claims Do Not Exclude Dry 26 Application. 27 It is telling that Defendants have not been forthcoming about their true goal with 28 respect to these terms. The reason is simple: the specification directly contradicts their 29 6 Case 2:16-cv-02026-DGC Document 200 Filed 06/29/17 Page 13 of 29 1 position. It explains that "[t]he dielectric material can be applied as a (dry) film, a (liquid) 2 curtain coating, a (liquid) roller coating, or any analogous application or bonding 3 technique."'582 Patent at 5:17-21. In other words, the specific method for applying a 4 dielectric layer is simply immaterial to the invention. Under these circumstances, there can 5 be no disclaimer, and there is no reason for the Court to rewrite the claim language. 6 Absolute Software, Inc., 659 F.3d at 1136-37 (finding no disclaimer where a feature was 7 described both as "the present invention" and as a feature that "can be included in the 8 present invention"). 9 The claim language compels this conclusion. First, the process claims are 10 intentionally silent as to any dielectric application method because they cover a different 11 aspect of the build-up sequence altogether. The claimed processes are directed to the 12 coupling of a conductive material onto a dielectric material using roughening techniques, 13 namely etching. But this process occurs after—and irrespective of—any particular 14 dielectric application method. In other words, no claim limitation recites "applying a 15 dielectric material" because dielectric application is immaterial to the invention. In this 16 way, Defendants’ "liquid" proposal not only (improperly) restricts the scope of the claimed 17 invention to a highly specific embodiment, it actually introduces an entirely new, 18 unclaimed method step into process claims which cover a different invention. See Specialty 19 Composites v. Cabot Corp., 845 F.2d 981, 987 (Fed. Cir. 1988) ("Where a specification 20 does not require a limitation, that limitation should not be read from the specification into 21 the claims.") (citing Lemelson v. United States, 752 F.2d 1538, 1551–52 (Fed. Cir. 1985)) 22 (emphasis in original). 23 While no "application" step is claimed, other steps are—namely "coupling" and 24 "etching"—and it is undisputed that these steps are performed on an already hardened or 25 semi-hardened dielectric surface. That is true regardless of whether the dielectric was 26 applied as a liquid or as a film. 27 Second, it would be even more inappropriate to read a liquid application process into 28 the device claims. It is improper to import process limitations into product claims. See, e.g., 29 7 Case 2:16-cv-02026-DGC Document 200 Filed 06/29/17 Page 14 of 29 1 Baldwin Graphic Systems, Inc. v. Siebert, Inc., 512 F.3d 1338, 1344 (Fed. Cir. 2008) 2 (holding that district court erred in construing limitation "reduced air content cleaning 3 fabric" to be a fabric whose air content was reduced since that construction improperly 4 imported a process characteristic into an apparatus claim) (emphasis added); see also AFG 5 Indus., Inc. v. Cardinal IG Co., 375 F.3d 1367, 1372 (Fed. Cir. 2004) ("Cardinal asks this 6 court to adopt a new construction of the claim that would impermissibly import a process 7 limitation into a pure product claim."). This is true even when a patentee describes a 8 particular method during prosecution or in the patent’s specification. Vanguard Prod. Corp. 9 v. Parker Hannifin Corp., 234 F.3d 1370, 1372 (Fed. Cir. 2000) ("The method of 10 manufacture, even when cited as advantageous, does not of itself convert product claims 11 into claims limited to a particular process."). 12 2. Defendants Fail to Meet Their Burden of Showing Disclaimer. 13 a) The Prosecution History Does Not Contain a Disclaimer. 14 As predicted, Defendants attempt to justify their proposal based on the prosecution 15 history. However, they again fail to mention their burden of identifying a clear and 16 unmistakable disclaimer. Instead, they try to analogize this case to Trading Technologies, 17 arguing that both cases involved applicants narrowing claim scope in response to an 18 indefiniteness rejection. Defs.’ Op. Br. at 10. In the present case, however, the bulk of the 19 statements relied upon by Defendants were offered in response to a "new matter" rejection, 20 a far different context. To overcome a new matter rejection, an applicant need only identify 21 a single example in the specification of an invention that falls within the scope of the claim 22 at issue. Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 969 (Fed. Cir. 2002). Dr. 23 Wong and the applicant did precisely that. Dkt. 189-9 at ¶¶ 3-4. Thus, their statements 24 cannot amount to a disclaimer.2 See, e.g., Bonutti Research, Inc. v. Lantz Med., Inc., No. 25 114-CV-00609, 2016 WL 247752, at *21 (S.D. Ind. Jan. 21, 2016) (explaining that the 26 27 2 Defendants’ argument here also fails to account for the’912 Patent claims, as Defendants 28 do not explain why Dr. Wong’s description of XB 7081 as a "generally liquid epoxy" should form the basis for construing claims that do not require any epoxy in the first place. 29 8 Case 2:16-cv-02026-DGC Document 200 Filed 06/29/17 Page 15 of 29 1 patentee’s statements that "no new matter" was added and identification of examples in the 2 specification did not constitute a disclaimer). 3 It is true that the inventors also responded to an indefiniteness rejection regarding 4 the terms "delivered with solid content" and "etching of the epoxy uses non-homogeneity 5 with the solid content". The entirety of this response is reproduced below: 6 As discussed above, the specification describes the use of "a dielectric material" with "non-homogeneous composition... to bring out uneven chemical 7 resistance, such that slowed and/or repeated etching will form teeth instead of 8 a uniform etch." The operation of this aspect of the process of the present application is explained in the Declaration, Paragraph 7. In addition, the 9 Specification describes the use of an epoxy, e.g., Probelec XB7081, having "a 10 solid content of 58%." By describing the epoxy as having a solid content of 58%, one skilled in the art would understand that Probelec XB7081 includes 11 solid particles in a percentage of 58% suspended in a generally liquid epoxy and that utilization of an epoxy "delivered with solid content" similar to 12 Probelec as the applied dielectric material 8. Declaration Paragraph 7 explains 13 how this would allow the etching process to result in the desired cavity structure. As such, the language of claims 1, 2, 14, 16, and 18 is definite. 14 Reconsideration and withdrawal of this rejection is respectfully requested. 15 Dkt. 189-8 at 8-9 (italicized portion omitted from Defendants’ brief). 16 Importantly, nothing in this response excludes dry application of dielectric material. 17 The inventors simply explained that a POSITA would understand that these phrases 18 referred to non-homogeneous materials such that slowed or repeated etching would bring 19 about the claimed teeth. XB 7081 is identified as an example of such a non-homogeneous 20 material. At most, this passage indicates that the inventors understood that Probelec XB 21 7081 was manufactured in precisely the same manner as dielectric films—by combining 22 liquid epoxy and solid content particles, as depicted above. That description does not 23 amount to an intent to limit the scope of the claims. And it is certainly no reason to exclude 24 dry film application from the scope of the claims. 25 Further underscoring the tenuous nature of Defendants’ proposal, 26 27 28 see also'582 29 9 Case 2:16-cv-02026-DGC Document 200 Filed 06/29/17 Page 16 of 29 1 Patent at 6:61-64 ("Probelec XB 7081... [has] an adjustable dry thickness of 1-3 mils"). 2 And as Mr. Hoffman has explained, while Probelec XB 7081 was "primarily developed for 3 [liquid] curtain coating," Dkt. 188-3 at Ex. 10, a POSITA could simply dry the material as a 4 film and apply it to the device using a dry lamination process. Ex. A (Hoffman Decl.) at ¶ 5 20. Thus, the prosecution history just does not support Defendants’ position, and 6 Defendants have offered no legitimate justification to limit the claims to a "liquid" 7 application processes. 8 b) The Specification Does Not Contain a Disclaimer. 9 Defendants also attempt to bolster their proposal with a straw man—that the 10 invention only uses the phrase "solid content" in connection with Probelec XB 7081. As a 11 matter of law, this is not a disclaimer. See Thorner v. Sony Computer Entertainment 12 America LLC, 669 F.3d 1362, 1365-66 (Fed. Cir. 2012) ("It is not enough for a patentee to 13 simply disclose a single embodiment or use a word in the same manner in all embodiments, 14 the patentee must'clearly express an intent’ to redefine the term."). And for good reason— 15 "if everything in the specification were required to be read into the claims... there would 16 be no need for claims." SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 17 (Fed. Cir. 1985). Defendants’ straw man would also lead to a number of absurd results. 18 19 Such redefinition of 20 claim language to mirror a disclosed embodiment is routinely rejected by courts around the 21 country because a "patentee is free to choose a broad term and expect to obtain the full 22 scope of its plain and ordinary meaning," see Thorner, 669 F.3d at 1367, which is what the 23 inventors have done in this case. 24 Finally, Defendants attempt to rationalize their construction by observing that some 25 claims do not recite "solid content." Defs.’ Op. Br. at 11. So, the argument goes, the 26 inventors could have claimed the use of non-liquid dielectric material by omitting that 27 phrase. Not so, because nothing about "solid content" requires liquid application of 28 dielectric material. As noted above, even dry films are in a liquid state when delivered with 29 10 Case 2:16-cv-02026-DGC Document 200 Filed 06/29/17 Page 17 of 29 1 solid content, and XB 7081 could be applied using either a dry or liquid process. 2 C. Category III Terms 3 When construing a claim term under § 112 ¶ 6, there is no requirement that the 4 Court merely parrot back portions of the specification. See, e.g., Playtex Prod., Inc. v. 5 Procter & Gamble Co., 400 F.3d 901, 909 (Fed. Cir. 2005) (providing a narrative 6 construction instead of simply quoting the specification). What is required is for the Court 7 to resolve the parties’ claim scope dispute by providing a construction that can be 8 understood and applied by the jury. O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 9 521 F.3d 1351, 1360 (Fed. Cir. 2008). 10 Although the parties have provided two very different proposals for defining the 11 corresponding structure, the claim scope dispute between the parties is limited. Before 12 briefing began, Plaintiffs attempted to bridge this dispute by asking Defendants to identify 13 the substantive structural requirements that they believed were included in their proposal 14 but omitted from Plaintiffs’ proposal. They identified none. As it turns out though, 15 Defendants have identified only two such requirements—that 20% of the teeth have a depth 16 of 1-2 tenths of a millimeter and a frequency of 5,000 teeth per linear inch. Neither of these 17 requirements are necessary corresponding structure for the specific recited functions. 18 When identifying corresponding structure under § 112 ¶ 6, "[f]eatures that do not 19 perform the recited function do not constitute corresponding structure and thus do not serve 20 as claim limitations." Northrop Grumman Corp. v. Intel Corp., 325 F.3d 1346, 1352 (Fed. 21 Cir. 2003). And while Defendants are correct that the Court must identify all of the 22 structures clearly linked to performing the claimed function, this requirement is meant to 23 preserve a broader construction, not a narrower one. See, e.g., Playtex Prod., Inc., 400 F.3d 24 at 909. When a patent discloses multiple structures or features that can perform a function, 25 § 112 ¶ 6 does not require that a claim be limited to only covering embodiments that have 26 all of those structures or features. Rather, the claim must cover embodiments that contain 27 any of those features. The Playtex case—which Defendants misinterpret in their opening 28 brief—clarifies this precise point. In that case, the patent disclosed a curved lip on one or 29 11 Case 2:16-cv-02026-DGC Document 200 Filed 06/29/17 Page 18 of 29 1 both ends of a plunger as performing the recited function. Id. The district court identified 2 the corresponding structure for this function as a curved lip on both ends of a plunger. The 3 Federal Circuit reversed and found that the corresponding structure could include a lip on 4 both ends or just one end of a plunger. Id. ("When looking to the specification for the 5 structure of a § 112 ¶ 6 claim, one must construe the claim in accordance with all the 6 structures disclosed by the inventor. Here the text of the written description clearly 7 describes how the structure of the'limiting means’ is broader than the single embodiment 8 depicted in the drawing.") 9 In this case, the claim functions require "joining," "mechanically gripping," and 10 "interlocking" the layers. The structure for these functions is the teeth. Indeed, an 11 individual tooth can perform each function. Defendants identify no teaching in the patents 12 that specific depth or frequency requirements are necessary to accomplish "joining the 13 conductive layer to the dielectric material," or any of the other functions. While a particular 14 depth and frequency for twenty percent of the teeth are certainly helpful in achieving 15 increased peel strength, that does not mean that these features are necessary for performing 16 the specific function of each claim term. And of course, claims should not be limited to 17 only those embodiments that achieve all of the benefits of the invention. Liebel–Flarsheim, 18 358 F.3d at 908 ("The fact that a patent asserts that an invention achieves several objectives 19 does not require that each of the claims be construed as limited to structures that are 20 capable of achieving all of the objectives."). 21 Moreover, reading depth and frequency limitations into these terms would conflict 22 with other claim language. For example,'582 Patent claim 109 separately recites "a 23 plurality of the teeth are within the range of 1 tenth of a mil deep to 1.75 tenths of a mil 24 deep," and claim 122 which depends in part on claim 109 requires that "a sample of the 25 circuitry has a frequency of the teeth sufficient to provide at least 5,000 said teeth per linear 26 inch." The fact that the inventors chose to specify depth and frequency requirements in 27 some claims but not others indicates that Defendants’ proposed depth and frequency 28 limitations should not be imported into all of the means plus function claims. Wenger Mfg., 29 12 Case 2:16-cv-02026-DGC Document 200 Filed 06/29/17 Page 19 of 29 1 Inc. v. Coating Mach. Sys., Inc., 239 F.3d 1225, 1234 (Fed. Cir. 2001) (reversing, based in 2 part on claim differentiation, a district court decision that narrowly defined the 3 corresponding structure). 4 Finally, Defendants’ proposal should also be rejected as impractical and needlessly 5 confusing. If adopted, the parties and their experts would have to argue infringement and 6 invalidity issues with reference to a substantial amount of text. It is unreasonable to ask the 7 jury to evaluate the case on such an unnecessarily confusing construction. 8 D. Responses to Defendants’ Indefiniteness Arguments 9 Defendants contend that all but a handful of the asserted claims are indefinite. In 10 other words, they assert that the three patent office examiners, four inventors, and 11 prosecution counsel all agreed on claim language that just could not be understood by 12 engineers in this field. And tellingly, the only claims Defendants have not argued are 13 indefinite are those of the'912 patent, which due to its issue date, has a narrow damages 14 window. As with their claim construction positions, Defendants’ indefiniteness arguments 15 are based purely on litigation inspired opportunism, not established Federal Circuit law. 16 A party alleging that a patent is invalid as indefinite must prove the patent’s 17 invalidity by clear and convincing evidence. See Nautilus, Inc. v. Biosig Instruments, Inc., 18 134 S. Ct. 2120, 2130 n.10 (2014) (noting that the parties agreed that the presumption of 19 validity applies to indefiniteness challenges). One must bear in mind that "patents are'not 20 addressed to lawyers, or even to the public generally,’ but rather to those skilled in the 21 relevant art." Nautilus, 134 S. Ct. at 2128 (quoting Carnegie Steel Co. v. Cambria Iron 22 Co., 185 U.S. 403, 437 (1902). A claim will be found indefinite only if a POSITA could not 23 reasonably ascertain the meaning of the claim. See id. at 2128-29. 24 1. "A Sample of Circuitry" 25 Defendants feign ignorance as to what it means to take a sample of a product, but 26 this is a well understood and common concept in manufacturing. A POSITA would 27 understand that, to ensure quality control, he or she can measure the tooth frequency of a 28 sample of a product to ensure that the product overall contains a similar tooth frequency. 29 13 Case 2:16-cv-02026-DGC Document 200 Filed 06/29/17 Page 20 of 29 1 The specification even explains this process. After discussing various tooth frequency 2 thresholds, it states: "Thus, a representative sample of the electrical device should have 3 teeth in about these ranges."'582 patent at 4:6-7. 4 Mr. Hoffman has explained that sampling is an important part of the printed circuit 5 board manufacturing process. Hoffman Decl. ¶ 22. This is because circuit boards could 6 range in size from less than one square inch, to panels up to a square foot or larger. It would 7 simply be impractical or impossible to count up each individual tooth on such devices. Id. 8 at ¶ 25. 9 10 11 While it is true that different products may require different sample 12 sizes, there is nothing improper or unusual about drafting a claim that allows for that. The 13 Federal circuit approved a similar claim in Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 14 806 F.2d 1565, 1575 (Fed. Cir. 1986) ("The claims were intended to cover the use of the 15 invention with various types of automobiles. That a particular chair on which the claims 16 read may fit within some automobiles and not others is of no moment. The phrase'so 17 dimensioned’ is as accurate as the subject matter permits, automobiles being of various 18 sizes."). See also Warsaw Orthopedic, Inc. v. NuVasive, Inc., 778 F.3d 1365, 1370 (Fed. 19 Cir. 2015) (holding apparatus claim not indefinite despite components that depended on the 20 shape and size of a patient’s vertebra). 21 Defendants’ real complaint appears to be that the parties may disagree as to how to 22 perform sampling for a given device. But that dispute is squarely an issue of infringement, 23 not indefiniteness. Advanced Aerospace Techs., Inc. v. United States, 124 Fed. Cl. 282, 306 24 (2015) (rejecting an indefiniteness challenge and explaining: "whether a 50–degree or 60– 25 degree angle falls outside of the scope of "generally vertical" or "generally perpendicular," 26 is an issue of infringement, not claim indefiniteness"); see also W.L. Gore & Associates, 27 Inc. v. Garlock, Inc., 842 F.2d 1275, 1280 (Fed.Cir.1988) (explaining that whether a device 28 meets an "imprecise claim limitation, such as the phrase'about 100% per second’" is an 29 14 Case 2:16-cv-02026-DGC Document 200 Filed 06/29/17 Page 21 of 29 1 issue of infringement, not claim construction).The parties may very well dispute whether a 2 particular sample is large enough or contiguous enough to meet this claim limitation. The 3 resolution of that dispute may turn on the specific sampling techniques used, the types of 4 materials used, and the numbers and size of layers in each device. Ultimately, that is a fact 5 issue for the jury to decide at trial based on evidence related to specific devices, not a claim 6 construction issue for this Court to resolve as a matter of law. 7 2. "Upgrade Slope With Respect to the Surface" 8 In its attempt to show that "upgrade slope" is indefinite, Defendants resort to asking 9 the Court to consider this phrase in isolation and improperly disregard the critical claim 10 language that follows upgrade slope— "with respect to the surface"—in each instance. See 11'582 Patent at claims 83, 89, 94, 100, 109, and 114. Ignoring the context of claims is 12 strictly prohibited—general principles of claim construction apply to indefiniteness 13 challenges, see Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1348 (Fed. Cir. 14 2005), and "proper claim construction... demands interpretation of the entire claim in 15 context, not a single element in isolation." ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 16 1088 (Fed. Cir. 2003). When considered in the context of the claims and the specification, a 17 POSITA would understand what is claimed by "upgrade slope with respect to the surface." 18 In each claim, the term "upgrade slope" addresses the shape of a cavity in a 19 dielectric material, and is followed by "with respect to the surface." In this way, the claims 20 themselves offer sufficient context for a POSITA to understand what is meant because it is 21 not just any slope of any material suspended in a vacuum that is being claimed. Instead, the 22 term is describing the relationship of cavity walls in a dielectric material to the surface of 23 that material. For this reason, Defendants’ assertion that there is no "orientation" of the 24 slope is wrong; the slope is found in the cavities and is oriented with respect to the surface 25 of the dielectric material. Defendants’ other concern—that the claims provide no guidance 26 for the "magnitude" of the angle—is addressed by the other various claim limitations. See, 27 e.g.,'582 Patent at claim 83 (obtuse cavity, cavities that are set in and under the surface); 28 claim 109 (angled sufficiently for mechanically gripping). 29 15 Case 2:16-cv-02026-DGC Document 200 Filed 06/29/17 Page 22 of 29 1 The specification also provides precise guideposts for this term. The patents teach 2 "one way of articulating the teeth concept is to view each tooth as being substantially 3 triangular in shape, with the base of the triangle being defined by a plane of the applied 4 exterior surface."'582 Patent at 3:28-31. An equilateral triangle (left) and an obtuse 5 triangle (right) would look like this: 6 7 8 9 The sidewalls of these cavities exhibit an upgrade slope with respect to the surface. Other 10 triangle shapes could create different upgrade slopes. See id. at 3:35-39. This concept is 11 reinforced by the inventors’ disparagement of prior art surfaces which exhibited little or no 12 roughening, such that any pours or divots on the dielectric surface would not constitute 13 cavities having sloped walls with respect to the surface. See'582 Patent at Figure 2. 14 The lone authority relied on by Defendants for these points, GE Lighting, does not 15 support their position. The Court in GE Lighting did not find that "elongated" was 16 indefinite merely because the term is not found in the specification. GE Lighting Sols., LLC 17 v. Lights of America, Inc., 663 F. App'x 938, 940 (Fed. Cir. 2016). The GE Lighting Court 18 instead explained that the dimensions of the "core"—which "elongated" modified in the 19 claims—were not even described in the text or drawings of the patent. Id. The present case 20 is different because the specification shows and describes in great detail the dimensions of 21 cavities, including shapes, depth, and frequency—all with respect to the surface.3 One of 22 ordinary skill, after reading the specification’s detailed description of cavity structures, 23 would understand that an upgrade slope refers to the cavity angle with respect to the 24 material’s surface. Hoffman Decl. ¶ 28. There is nothing inherently ambiguous or indefinite 25 about this phrase, particularly when read in light of the claims and specification. 26 27 3 The GE Lighting Court was also concerned that "elongated" was used to overcome a 28 particular prior art reference during prosecution. See id. Here, Defendants do not show that "upgrade slope" was claimed to overcome a particular prior art reference. 29 16 Case 2:16-cv-02026-DGC Document 200 Filed 06/29/17 Page 23 of 29 1 3. "Peel Strength Greater Than a Peel Strength That Would Be Produced by a Single Desmear Process" 2 3 Defendants admit that "peel strength" is a term of art. Defs.’ Op. Br. at 20. In the 4 relevant art, one of ordinary skill would understand that peel strength refers to the copper 5 peel strength measurement as specified by the Institute for Interconnecting and Packaging 6 Electronic Circuits (IPC) Test Manual 650 Method 2.4.8. See Ex. H.; Hoffman Decl. ¶ 30. 7 Defendants’ expert does not dispute this.4 Even Defendants’ own document production in 8 this case establishes that peel strength is uniformly tested pursuant to IPC-TM-650, method 9 2.4.8. Ex. I at 88702DEF0007858 ("Copper peel strength measurements have grown 10 increasingly important as circuit traces and pads are becoming smaller.... The test method 11 is specified in IPC-TM-650, method 2.4.8."). As such, unlike in Dow Chemical and Teva 12 where experts confirmed multiple methods of measurement in the relevant art, there is a 13 standardized method to measure peel strength. 14 Because there is a standardized method for measuring peel strength, Defendants 15 resort to arguing that different parameters used in measuring peel strength may yield 16 different results. Defs.’ Op. Br. at 20. This misses the mark. As an initial matter, it is 17 unremarkable that varying the conditions between two peel tests would elicit inconsistent 18 results—that is the basis for all scientific testing. But more to the point, the inquiry for the 19 Court is not whether a POSITA could alter inputs to change outputs; the inquiry is whether 20 a POSITA could reasonably ascertain the scope of what is being claimed. Nautilus, 134 S. 21 Ct. at 2128. Here they could. Hoffman Decl. ¶¶ 30-33. Assuming arguendo that no 22 generally accepted peel strength test existed, even that would still be no reason to find these 23 claims indefinite because the claims reciting "peel strength" do so as a relationship between 24 two peel strengths—one strength measured after a single desmear and second strength 25 measured after a double desmear. In this way, a POSITA would understand that slight 26 27 4 Defendants’ expert, Dr. Raghavan, instead identifies peel tests from different industries, 28 some dating back to 1976 or earlier. Dkt. 188-3, Ex. 5 at ¶¶ 88-94. In the printed circuit board industry in 1997, IPC-TM-650, method 2.4.8 was, and sill is, standard. Hoffman Decl. ¶ 32. 29 17 Case 2:16-cv-02026-DGC Document 200 Filed 06/29/17 Page 24 of 29 1 variations in testing parameters (temperature, angle, rate, etc.) are immaterial so long as 2 those parameters are consistently applied for both measurements. Put another way, a 3 POSITA would not measure a single desmear peel strength using one set of parameters but 4 measure a double desmear peel strength using a different set of parameters, as that would 5 be illogical and contrary to established principles of scientific testing. Hoffman Decl. ¶ 33. 6 Federal Circuit law reinforces this concept. In Wellman, Inc. v. Eastman Chem. Co., 7 642 F.3d 1355 (Fed. Cir. 2011), the Federal Circuit overturned a finding of indefiniteness 8 for claims reciting "crystallization exotherm peak temperature." According to the district 9 court, a "multitude of choices" for measuring those conditions existed. 642 F.3d at 1360. In 10 reversing, the Federal Circuit noted the "well-known" practice of measuring temperature in 11 the industry and held that "a patent applicant need not include in the specification that 12 which is already known to and available to a person of ordinary skill in the art." Id. at 1368. 13 And notably, the Federal Circuit rejected the district court’s reasoning that different 14 parameters could affect the claimed measurement, finding that a POSITA would know to 15 account for those parameters. Id. at 1369. 16 Finally, further undermining Defendants’ position is the prior art, including some of 17 their own patents. The prior art uses peel strength in the same way that the inventors do. 18 Indeed, many patents refer to peel strength without articulating any special testing 19 parameters. See Exs. K-N. This is no surprise, as the inventors of these prior art patents, 20 like the inventors in this case, "are speaking to those skilled in the art." In re Howarth, 654 21 F.2d 103, 105 (C.C.P.A. 1981). 22 4. "Substantially Greater" 23 In 1923, the Supreme Court "uph[eld] as definite a patent for an improvement to a 24 paper-making machine, which provided that a wire be placed at a'high’ or'substantial 25 elevation.’" Nautilus, 134 S. Ct. at 2129 n.5 (citing Eibel Process Co. v. Minn. & Ont. 26 Paper Co., 261 U.S. 45, 58, 65–66 (1923)).). The Court explained that these relative 27 terms—"substantial" and "high"—were sufficiently definite because persons of skill in the 28 art could determine the appropriate elevation. Id. 29 18 Case 2:16-cv-02026-DGC Document 200 Filed 06/29/17 Page 25 of 29 1 The Federal Circuit has "repeatedly confirmed that relative terms such as 2'substantially’ do not render patent claims so unclear as to prevent a person of skill in the 3 art from ascertaining the scope of the claim." Deere & Co. v. Bush Hog, LLC, 703 F.3d 4 1349, 1359 (Fed. Cir. 2012). Indeed, it has acknowledged that terms like "substantially" are 5 "ubiquitous in patent claims," Andrew Corp. v. Gabriel Elec., Inc., 847 F.2d 819, 821 (Fed. 6 Cir. 1988) ("substantially equal"), and have repeatedly survived indefiniteness challenges. 7 See, e.g., Eibel Process Co., 261 U.S. at 58, 65–66 (upholding as definite a patent for an 8 improvement to a paper-making machine, which provided that a wire be placed at a "high" 9 or "substantial elevation"); Verve LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 10 2002) ("substantially constant wall thickness"); Seattle Box Co. v. Indus. Crating & 11 Packing, 731 F.2d 818, 826 (Fed. Cir. 1984) ("substantially equal to or greater than"). Such 12 a term is not indefinite if the intrinsic evidence provides "a general guideline and examples 13 sufficient to enable a person of ordinary skill in the art to determine [the scope of the 14 claims]." Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1335 (Fed. Cir. 2010) 15 (quoting In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983)) (explaining that the term "not 16 interfering substantially" was not indefinite even though it contains "no reference to a 17 precise numerical measurement"). 18 Here, the specification provides a general guideline as to the form and function of 19 the teeth and cavities. It explains that prior art roughening techniques increased the surface 20 area of a layer. This increases the contact area between layers and thus improves adhesion. 21'582 Patent at 1:33-40. The teeth of the patented invention do more: 22 In comparison with the above-mentioned roughening techniques of the prior art, it is believed that a surface of the teeth is an improvement in that there is 23 an increase in surface area. However, it is still better to use teeth that are fang-shaped to enable a mechanical grip that functions in a different 24 manner than adherence by means of increased surface area. By using the fanged, angled, canine, or otherwise hooked teeth (in addition to increased 25 surface area), there is a multidirectional, three dimensional interlacing or overlapping of layers. 26'582 Patent at 1:58-66 (emphasis added). The specification also provides descriptive 27 examples of teeth that fulfill this function, ("in joining the dielectric material to the... 28 metal layer, the... metal layer is actually burrowed in and under the dielectric material and 29 19 Case 2:16-cv-02026-DGC Document 200 Filed 06/29/17 Page 26 of 29 1 vice versa." Id. at 1:66-2:3) and product images such as figure 1: 2 3 4 5 Based on this guidance, a POSITA would understand that a cross-sectional distance of the 6 interior of a cavity must exceed a cross-sectional distance nearer the opening of a cavity by 7 an amount sufficient to create that "mechanical grip" described in the patents, and allow the 8 conductive material to burrow "in and under" the dielectric material. Hoffman Decl. ¶ 35. 9 For example, a POSITA would recognize that if the cross-sectional distance of the interior 10 of the cavity only exceeds the distance nearer the opening by a very slight amount, the 11 mechanical grip disclosed in the patents may not be achieved. Hoffman Decl. ¶ 36. 12 Given this background, a POSITA would understand the scope of the claims 13 containing this phrase with reasonable certainty. Indeed, even Defendants have sought 14 claims that use the exact same, or similar language. See Ex. J (collection of Ibiden and 15 Intel patents with highlighted claims reciting, e.g., "substantially greater than," 16 "substantially higher than," and "substantially larger than"). The parties may ultimately 17 disagree as to whether a particular accused product contains a first cross-sectional distance 18 "substantially greater" than a second cross-sectional distance. But, as explained above, that 19 is an issue of infringement, not indefiniteness. Advanced Aerospace Techs., Inc., 124 Fed. 20 Cl. at 306; W.L. Gore & Associates, Inc., 842 F.2d at 1280. 21 The specific difference between the cross-sectional distances may vary based on a 22 particular application. Hoffman Decl. ¶ 37. For example, a manufacturer working with 23 materials that have very high tensile strength may require that the difference be only 24 approximately twenty percent. A manufacturer using more flexible materials may require a 25 more substantial difference to achieve the same grip. Id. There is nothing improper or 26 unusual about drafting a claim in this way. The Federal circuit approved a similar claim in 27 Orthokinetics, Inc., 806 F.2d at 1575 ("The claims were intended to cover the use of the 28 invention with various types of automobiles. That a particular chair on which the claims 29 20 Case 2:16-cv-02026-DGC Document 200 Filed 06/29/17 Page 27 of 29 1 read may fit within some automobiles and not others is of no moment. The phrase'so 2 dimensioned’ is as accurate as the subject matter permits, automobiles being of various 3 sizes."). See also Warsaw Orthopedic, Inc., 778 F.3d at 1370 (holding claim not indefinite 4 despite the fact that the components depended on the shape and size of a patient’s vertebra). 5 The two district court cases cited by Defendants are distinguishable. In Cayenne 6 Med., Inc. v. Medshape, Inc., No. 2:14-CV-0451-HRH, 2016 WL 2606983, at *2 (D. Ariz. 7 May 6, 2016), the claim at issue covered a device for securing a tendon to bone with one 8 member for securing the bone and a second member that was of a "substantially different 9 construction." Id. The district court found this term to be indefinite after assigning "great 10 weight" to a PTAB finding that the term was indefinite, and finding no guidance as to the 11 meaning of the term in the specification. Id. at *2, *6. Moreover, the Court explained that it 12 would have found the claim indefinite even if it omitted the word "substantially." Id. at *6. 13 In Geodynamics, Inc. v. Dynaenergetics US, Inc., the Court was faced with the unusual 14 situation where the "Plaintiff [did] not contend that the intrinsic evidence indicate[d] the 15 bounds of the phrase'substantially equal.’" No. 2:15-CV-1546, 2016 WL 6217181 at *16 16 (E.D. Tex. Oct. 25, 2016). Not surprisingly, it found this term indefinite. Id. With regard to 17 a different term—"eliminating a substantial portion"—the Court actually found the term 18 not indefinite based on guidance provided in the specification. Id. at *13. In this case, as in 19 numerous others,5 the intrinsic evidence informs a person of skill in the art with reasonable 20 21 5 See also Apple Inc. v. Samsung Elecs. Co., 786 F.3d 983, 1002 (Fed. Cir. 2015), rev’d and remanded on other grounds, 137 S. Ct. 429 (2016) ("substantially centered" not indefinite); 22 Deere & Co., 703 F.3d at 1359 ("substantially planar" not indefinite); Exxon Research & 23 Eng'g Co. v. United States, 265 F.3d 1371, 1377 (Fed. Cir. 2001) ("to increase substantially" not indefinite); Andrew Corp., 847 F.2d 819, 821 (Fed. Cir. 1988) ("substantially equal" not 24 indefinite); Julius Zorn, Inc. v. Medi Mfg., Inc., No. 3:15-CV-02734, 2017 WL 960413, at *5 (S.D. Cal. Mar. 13, 2017) ("substantially inelastic material" not indefinite); Robertson 25 Transformer Co. v. Gen. Elec. Co., No. 12-C-8094, 2014 WL 1675022, at *8 (N.D. Ill. Apr. 26 28, 2014) ("substantial portion of its normal level," "substantially longer than the brief period," and "substantially excessive lamp voltage" not indefinite); Samson Mfg. Corp. v. 27 Austin Precision Prod., Inc., No. 09-CV-30027, 2010 WL 2639864, at *2 (D. Mass. June 29, 28 2010) ("in substantial alignment with" not indefinite); Advanced Cardiovascular Sys., Inc. v. Scimed Life Sys., 96 F. Supp. 2d 1006, 1009 (N.D. Cal. 2000) ("substantially larger" not 29 21 Case 2:16-cv-02026-DGC Document 200 Filed 06/29/17 Page 28 of 29 1 certainty as to the meaning of this term. See Nautilus, 134S. Ct. at 2128-29. 2 Finally, Defendants’ own litigation conduct undermines the earnestness of their 3 position here. In Ibiden’s original motion to dismiss, when arguing that Plaintiff had not 4 demonstrated that all limitations of a single claim were infringed, Ibiden actually 5 highlighted this exact claim phrase and defined it for the Court: 6 Claim 14 of'560 patent recites the claim element "non-uniformly roughened surface with at least some of the cavities having a first cross-sectional 7 distance proximate the initial surface and a substantially greater cross-8 sectional distance distant from the initial surface," i.e., the cavities in the surface are wider at the bottom of the cavity than at the top of the cavity. 9 Dkt. 58 at 5 (emphasis added). That Defendants readily understood the meaning of this 10 term when it suited them, and then reversed course for purposes of claim construction, 11 weighs in favor of no indefiniteness. See Sonix Tech. Co. v. Publications Int'l, Ltd., 844 12 F.3d 1370, 1380 (Fed. Cir. 2017) (Reversing a finding of indefiniteness and noting that 13 "[a]ppellees’ other actions during litigation also reflect that they understood [the term]").6 14 II. CONCLUSION 15 For all of these reasons, Defendants’ proposals are improper and Plaintiff 16 respectfully requests that they be denied. 17 18 19 20 21 indefinite); Broad. Innovation, LLC v. Echostar Commc’ns Corp., 240 F. Supp. 2d 1127, 1155 (D. Colo. 2003) ("substantially replaceable" not indefinite); Advanced Aerospace 22 Techs., Inc., 124 Fed. Cl. at 306 ("generally vertical" and "generally perpendicular" not 23 indefinite). 24 6 Defendants’ criticize Plaintiff’s alternative proposed construction, but this proposal was only offered in the event the Court deemed a construction necessary. It was based on the 25 definition Defendants had previously provided to the Court in their motion to dismiss. Now 26 that Defendants only take issue with the word "substantially," and because this word "is in fact common in general usage and patent claim drafting," Depomed, Inc. v. Purdue Pharma 27 L.P., No. CV 13-571, 2017 WL 1319818 at *28 (D.N.J. Apr. 6, 2017), the Court need not 28 provide a construction for this term. See Deere & Co., 703 F.3d at 1359 (finding "substantially planar" not indefinite and not in need of construction). 29 22 Case 2:16-cv-02026-DGC Document 200 Filed 06/29/17 Page 29 of 29 1 Dated this 29th day of June, 2017. 2 3 CALDWELL CASSADY CURRY P.C 4 By/s/Bradley W. Caldwell (pro hac vice) 5 6 Bradley W. Caldwell (pro hac vice) Jason D. Cassady (pro hac vice) 7 J. Austin Curry (pro hac vice) Warren J. McCarty (pro hac vice) 8 2101 Cedar Springs Rd., Suite 1000 Dallas, Texas 75201 9 AIKEN SCHENK HAWKINS & RICCIARDI P.C. 10 Joseph A. Schenk 2390 East Camelback Road, Suite 400 11 Phoenix, Arizona 85016 12 ATTORNEYS FOR PLAINTIFF 13 CONTINENTAL CIRCUITS, LLC 14 CERTIFICATE OF SERVICE 15 The undersigned certifies that all counsel of record who have consented to electronic 16 service are being served with a copy of the foregoing document via the Court’s CM/ECF 17 system on this 29th day of June, 2017 18/s/Bradley W. Caldwell (pro hac vice) 19 Bradley W. Caldwell 20 21 22 23 24 25 26 27 28 29

AMENDED ANSWER to Plaintiff Continental Circuits' Second Amended Complaint {{128}} Amended Complaint and, COUNTERCLAIM against Continental Circuits LLC by Intel Corporation.

Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 1 of 43 1 Chad S. Campbell (State Bar No. 012080) CSCampbell@perkinscoie.com 2 PERKINS COIE LLP 3 2901 N. Central Avenue, Suite 2000 Phoenix, AZ 85012 4 Telephone: (602) 351-8000 Facsimile: (602) 648-7000 5 6 Joseph J. Mueller (pro hac vice) Joseph.Mueller@wilmerhale.com 7 WILMER CUTLER PICKERING HALE AND DORR LLP 8 60 State Street Boston, MA 02109 9 Telephone: (617) 526-6000 Facsimile: (617) 526-5000 10 11 Nina S. Tallon (pro hac vice) Nina.Tallon@wilmerhale.com 12 WILMER CUTLER PICKERING HALE AND DORR LLP 13 1875 Pennsylvania Ave., NW Washington, DC 20006 14 Telephone: (202) 663-6000 Facsimile: (202) 663-6363 15 16 Attorneys for Defendant Intel Corporation 17 IN THE UNITED STATES DISTRICT COURT 18 FOR THE DISTRICT OF ARIZONA 19 Continental Circuits LLC, 20 Case No. CV-16-2026-PHX-DGC Plaintiff, 21 v. DEFENDANT INTEL 22 CORPORATION’S AMENDED Intel Corporation; ANSWER AND COUNTERCLAIMS 23 Ibiden U.S.A. Corporation; and TO PLAINTIFF CONTINENTAL 24 Ibiden Co., Ltd., CIRCUITS’ SECOND AMENDED COMPLAINT 25 Defendants. 26 JURY TRIAL DEMANDED 27 28 Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 2 of 43 1 Pursuant to Rules 8, 12(a)(4)(A), and 13 of the Federal Rules of Civil Procedure, 2 and in light of the Court’s June 19, 2017 Order dismissing several of Plaintiff Continental 3 Circuits LLC’s ("Continental Circuits’") claims with prejudice (Dkt. 196),1 Defendant 4 Intel Corporation ("Intel") answers the allegations of Continental Circuits’ Second 5 Amended Complaint for Patent Infringement ("Complaint") (Dkt. 124) as follows: 6 THE PARTIES2 7 1. Intel lacks knowledge or information sufficient to form a belief about the 8 truth of the allegations in Paragraph 1, and therefore denies the same. 9 2. Intel admits the allegations in Paragraph 2. 10 3. Intel admits the allegations in Paragraph 3. 11 4. Intel admits the allegations in Paragraph 4. 12 JURISDICTION AND VENUE 13 5. Paragraph 5 contains conclusions of law to which no response is required. 14 To the extent a response is required, Intel admits that this action purports to arise under the 15 patent laws of the United States, and that this Court has subject matter jurisdiction over 16 actions for patent infringement under 28 U.S.C. §§ 1331 and 1338(a). 17 6. Paragraph 6 contains conclusions of law to which no response is required. 18 To the extent a response is required, Intel admits that it has two facilities located in the 19 State of Arizona at 5000 West Chandler Boulevard, Chandler, Arizona 85226, and 4500 20 South Dobson Road, Chandler, Arizona 85248. Intel admits that it performs research and 21 22 23 1 The Court dismissed the following claims with prejudice: (1) direct infringement 24 claims against Ibiden U.S.A. Corporation and Ibiden Co., Ltd. (collectively "Ibiden") (under 35 U.S.C. §§ 271(a) and (g)) as to unnamed products sold to customers other than 25 Intel; (2) indirect infringement claims related to unnamed Ibiden products intended for 26 customers other than Intel; and (3) willfulness claims against Intel and Ibiden. 2 Intel has incorporated the headings that appear in Continental Circuits’ Complaint. 27 Intel does not necessarily agree with the characterization of such headings and does not 28 waive any right to object to those characterizations. Intel denies any allegation in the Complaint not specifically admitted, including any allegations in any headings.-2-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 3 of 43 1 development related to certain products, including package substrates, in its Arizona 2 facilities, where Intel employs more than 2,500 engineers and manufacturing technicians. 3 7. Intel admits that some of its products that are imported are shipped to 4 Arizona before being commercially sold. Intel also admits that Intel typically maintains a 5 Foreign Trade Zone 75C subzone designation. The remaining allegations regarding the 6 benefits of Intel’s Foreign Trade Zone 75C subzone designation contain conclusions of law 7 to which no response is required. 8 8. Intel admits that it conducts business in this District. Intel denies that it has 9 committed any acts of patent infringement in this District or elsewhere in the United States. 10 9. Intel admits the allegations in Paragraph 9. 11 10. Paragraph 10 contains conclusions of law to which no response is required. 12 To the extent a response is required, Intel denies that Ibiden U.S.A. Corporation or Ibiden 13 Co., Ltd. (collectively "Ibiden") has infringed any of the Patents-in-Suit based on the 14 products that Intel purchases from Ibiden. Intel lacks knowledge or information sufficient 15 to form a belief about the truth of the remaining allegations in Paragraph 10 and therefore 16 denies the same. 17 11. Intel admits that it conducts business in this District, but denies that it has 18 committed acts of infringement in this District or elsewhere in the United States. Intel 19 lacks knowledge or information sufficient to form a belief about the truth of the allegations 20 in Paragraph 11 directed to Ibiden and therefore denies the same. The remaining 21 allegations in Paragraph 11 state conclusions of law to which no response is required. 22 PATENTS-IN-SUIT 23 12. Intel admits that United States Patent No. 6,141,870 (the "’870 patent") is 24 entitled "Method for Making Electrical Device;" that the'870 patent was issued by the 25 United States Patent and Trademark Office on November 7, 2000; and that the named 26 inventors include Mr. Brian J. McDermott. Intel denies that the'870 patent is valid or 27 enforceable. 28-3-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 4 of 43 1 13. Intel admits that United States Patent No. 6,700,069 (the "’069 patent") is 2 entitled "Circuit Board or Other Multilayer Electrical Device Made by Forming Teeth to 3 Join Layers;" that the'069 patent was issued by the United States Patent and Trademark 4 Office on March 2, 2004; and that the named inventors include Mr. Brian J. McDermott. 5 Intel denies that the'069 patent is valid or enforceable. 6 14. Intel admits that United States Patent No. 7,501,582 (the "’582 patent") is 7 entitled "Electrical Device and Method for Making Same;" that the'582 patent was issued 8 by the United States Patent and Trademark Office on March 10, 2009; that the named 9 inventors include Mr. Brian J. McDermott; and that an uncertified copy of what purports to 10 be the'582 patent is attached to the Second Amended Complaint as Exhibit A. Intel 11 denies that the'582 patent is valid or enforceable. 12 15. Intel admits that United States Patent No. 8,278,560 (the "’560 patent") is 13 entitled "Electrical Device with Teeth Joining Layers and Method for Making the Same;" 14 that the'560 patent was issued by the United States Patent and Trademark Office on 15 October 2, 2012; that the named inventors include Mr. Brian J. McDermott; and that an 16 uncertified copy of what purports to be the'560 patent is attached to the Second Amended 17 Complaint as Exhibit B. Intel denies that the'560 patent is valid or enforceable. 18 16. Intel admits that United States Patent No. 8,581,105 (the "’105 patent") is 19 entitled ""Electrical Device with Teeth Joining Layers and Method for Making the Same;" 20 that the'105 patent was issued by the United States Patent and Trademark Office on 21 November 12, 2013; that the named inventors include Mr. Brian J. McDermott; and that an 22 uncertified copy of what purports to be the'105 patent is attached to the Second Amended 23 Complaint as Exhibit C. Intel denies that the'105 patent is valid or enforceable. 24 17. Intel admits that U.S. Patent No. 9,374,912 (the "’912 patent") is entitled 25 "Electrical Device with Teeth Joining Layers and Method for Making the Same;" that the 26'912 patent was issued by the United States Patent and Trademark Office on June 21, 2016; 27 that the named inventors include Mr. Brian J. McDermott; and that an uncertified copy of 28-4-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 5 of 43 1 what purports to be the'912 patent is attached to the Second Amended Complaint as 2 Exhibit D. Intel denies that the'912 patent is valid or enforceable. 3 18. Intel admits that the'870 patent,'069 patent,'582 patent,'560 patent,'105 4 patent, and'912 patent purport to be related through a series of continuation applications. 5 The remaining allegations of Paragraph 18 contain conclusions of law to which no 6 response is required. 7 19. Intel lacks knowledge or information sufficient to form a belief as to whether 8 Continental Circuits is the owner of all rights, title, and interest in the'582,'560,'105, and 9'912 patents (the "Patents-in-Suit"), and therefore denies the same. The remaining 10 allegations of Paragraph 19 contain conclusions of law to which no response is required. 11 FACTUAL ALLEGATIONS 12 20. The allegations in Paragraph 20 contain conclusions of law to which no 13 response is required. 14 21. Intel admits that the figure shown in Paragraph 21 purports to be Figure 1 15 from the'560 patent. The remaining allegations in Paragraph 21 contain conclusions of 16 law to which no response is required. 17 22. Intel lacks knowledge or information sufficient to form a belief about the 18 truth of the allegations in Paragraph 22, and therefore denies the same. 19 23. Intel is investigating whether Continental Circuits, Inc. manufactured printed 20 circuit boards for Intel, but cannot confirm that allegation, and therefore denies the same. 21 Intel lacks knowledge or information sufficient to form a belief about the truth of the 22 remaining allegations in Paragraph 23, and therefore denies the same. 23 24. Intel is investigating any meetings between Continental Circuits, Inc. and 24 Intel that may have been held in the 1996 to 1998 timeframe (approximately 20 years ago), 25 but cannot confirm the allegations in Paragraph 24, and therefore denies the same. 26 25. Intel is investigating whether Intel and the named inventors of the 27 Patents-in-Suit coordinated on Continental Circuits Inc.’s Photolink product, but cannot 28-5-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 6 of 43 1 confirm that allegation, and therefore denies the same. Intel denies the remaining 2 allegations in Paragraph 25. 3 26. Intel lacks knowledge or information sufficient to form a belief about the 4 truth of the allegations in Paragraph 26, and therefore denies the same. 5 27. Intel lacks knowledge or information sufficient to form a belief about the 6 truth of the allegations in Paragraph 27, and therefore denies the same. 7 28. Intel admits that Brian McDermott, Daniel McGowan, Ralph Leo Spotts, Jr., 8 and Sid Tryzbiak are listed as co-inventors on the face of the Patents-in-Suit. Intel lacks 9 knowledge or information sufficient to form a belief about the truth of the remaining 10 allegations in Paragraph 28, and therefore denies the same. 11 29. Intel denies that the named co-inventors of the Patents-in-Suit "developed a 12 novel surface roughening technique that offered stronger adhesion between these layers." 13 Intel lacks knowledge or information sufficient to form a belief about the truth of the 14 remaining allegations in Paragraph 29, including what the named co-inventors allegedly 15 observed, and therefore denies the same. 16 30. Intel lacks knowledge or information sufficient to form a belief about the 17 truth of the allegations in Paragraph 30, and therefore denies the same. 18 31. Intel lacks knowledge or information sufficient to form a belief about the 19 truth of the allegations in Paragraph 31, and therefore denies the same. 20 32. Intel lacks knowledge or information sufficient to form a belief about the 21 truth of the allegations in Paragraph 32, and therefore denies the same. 22 33. Intel lacks knowledge or information sufficient to form a belief about the 23 truth of the allegations in Paragraph 33, and therefore denies the same. 24 34. Intel admits that Ibiden was an Intel supplier in the 1990s. Intel denies the 25 remaining allegations in Paragraph 34. 26 35. Intel admits that Mr. Peter K. Trzyna sent a letter to Mr. David Simon, then 27 Chief Legal Counsel for Intel, dated January 27, 2005. Intel admits that the January 27, 28 2005 letter purports to enclose copies of the'870 and'069 patents. Intel denies that the-6-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 7 of 43 1 letter included, or even purports to include, a copy of the continuation application 2 referenced in the letter. With respect to the allegations regarding the remaining contents of 3 that letter, the document speaks for itself. Intel denies all remaining allegations in 4 Paragraph 35. 5 36. Intel lacks knowledge or information sufficient to form a belief about the 6 truth of the allegations in Paragraph 36, and therefore denies the same. 7 37. The allegations contained in Paragraph 37 contain conclusions of law to 8 which no response is required. To the extent a response is required, Intel denies the 9 allegations in Paragraph 37. 10 38. Intel admits that Ms. Martha Peralez, then an Outside Submissions 11 Coordinator at Intel, sent a letter to Mr. Peter K. Trzyna, dated March 2, 2005; with respect 12 to the contents of that letter, the document speaks for itself. 13 39. Intel admits that Ms. Martha Peralez, then an Outside Submissions 14 Coordinator at Intel, sent a letter to Mr. Peter K. Trzyna, dated April 21, 2005; with respect 15 to the contents of that letter, the document speaks for itself. 16 40. Intel admits that, as of the date of this pleading, the Patents-in-Suit are 17 available from the United States Patent Office website. Intel lacks knowledge or 18 information sufficient to form a belief about the truth of the remaining allegations in 19 Paragraph 40, and therefore denies the same. 20 41. Intel admits that it has filed for and been granted U.S. patents. Intel lacks 21 knowledge or information sufficient to form a belief about the truth of the allegations in 22 Paragraph 41 as they relate to Ibiden, and therefore denies the same. 23 42. Intel admits that certain of its employees have from time to time searched for 24 and identified issued U.S. patents. Intel lacks knowledge or information sufficient to form 25 a belief about the truth of the allegations in Paragraph 42 as they relate to Ibiden, and 26 therefore denies the same. 27 28-7-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 8 of 43 1 43. Intel denies the allegations in Paragraph 43 as to Intel. Intel lacks knowledge 2 or information sufficient to form a belief about the truth of the allegations in Paragraph 42 3 as to Ibiden, and therefore denies the same. 4 44. Intel denies the allegations in Paragraph 44 as to Intel. Intel lacks knowledge 5 or information sufficient to form a belief about the truth of the allegations in Paragraph 44 6 as to Ibiden, and therefore denies the same. 7 45. Intel admits that it requires its package substrate suppliers to use certain 8 dielectric materials. Intel admits that it provides its suppliers with substrate target 9 specification documents; with respect to the content of the substrate target specifications, 10 the documents speak for themselves. Intel denies the remaining allegations in Paragraph 11 45. 12 46. Intel lacks knowledge or information sufficient to form a belief about the 13 truth of the allegations in Paragraph 46, and therefore denies the same. 14 47. Intel admits that the initial complaint for patent infringement was served on 15 Intel on July 15, 2016, and that the complaint alleged infringement of the'582,'560,'105, 16 and'912 patents. Intel denies that it was aware of the'582,'560,'105, and'912 patents at 17 any point before the initial complaint was filed on June 22, 2016. Intel lacks knowledge or 18 information sufficient to form a belief about the truth of the allegations in Paragraph 47 as 19 they relate to Ibiden, and therefore denies the same. 20 48. Intel lacks knowledge or information sufficient to form a belief about the 21 truth of the allegations in Paragraph 48, and therefore denies the same. 22 49. Intel admits the allegations in Paragraph 49. 23 50. Intel admits that it purchases package substrates used in certain of its CPUs 24 and chipsets from various substrate suppliers. 25 51. Intel admits that, as of the date of this pleading, Ibiden is Intel’s largest 26 supplier of package substrates by volume. With respect to the content of the document 27 attached as Exhibit E to the Second Amended Complaint, the document speaks for itself. 28 Intel denies all remaining allegations in Paragraph 51.-8-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 9 of 43 1 52. Intel admits that, in certain circumstances, it collaborates with suppliers to 2 develop specifications for package substrates used in certain Intel products. Intel denies all 3 remaining allegations in Paragraph 52. 4 53. Intel admits that it provides its suppliers with substrate target specification 5 documents; with respect to the content of the substrate target specifications, the documents 6 speak for themselves. 7 54. Intel admits that it requires its package substrate suppliers to use certain 8 dielectric materials. Intel denies the remaining allegations in Paragraph 54. 9 55. Intel admits that, in certain circumstances, it may alter its specifications if it 10 is not satisfied with products manufactured according to those specifications. 11 56. Intel admits that, in certain circumstances, it may cease purchasing products 12 from a supplier if the supplier fails to meet Intel’s requirements. Intel denies the remaining 13 allegations in Paragraph 56. 14 57. Intel admits that certain interactions between Intel and its package substrate 15 suppliers may, at times, take place in Chandler, Arizona. Intel denies the remaining 16 allegations in Paragraph 48. 17 58. Intel admits the allegations in Paragraph 58 as to package substrates supplied 18 by Ibiden to Intel. Intel lacks knowledge or information sufficient to form a belief about 19 the truth of the allegations in Paragraph 58 as they pertain to package substrates that Ibiden 20 manufactures for customers other than Intel, and therefore denies the same. 21 59. Intel lacks knowledge or information sufficient to form a belief about the 22 truth of the allegations in Paragraph 59, and therefore denies the same. 23 60. Intel denies the allegations in Paragraph 60 as to products supplied by Ibiden 24 to Intel. Intel lacks knowledge or information sufficient to form a belief about the truth of 25 the allegations in Paragraph 60 as to products that Ibiden sells to other customers, and 26 therefore denies the same. 27 61. Intel lacks knowledge or information sufficient to form a belief about the 28 truth of the allegations in Paragraph 61, and therefore denies the same.-9-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 10 of 43 1 62. The allegations in Paragraph 62 contain conclusions of law to which no 2 response is required. To the extent a response is required, Intel admits that it does not have 3 an express license to the Patents-in-Suit, but otherwise denies the allegations in Paragraph 4 62. 5 63. Intel lacks knowledge or information sufficient to form a belief about the 6 truth of the allegations in Paragraph 63, and therefore denies the same. 7 64. Intel admits that the products specifically identified in Paragraph 64 are 8 examples of Atom processors. Intel denies the remaining allegations in Paragraph 64 as 9 they relate to unspecified "same or later generation Atom processors." 10 65. Intel denies the allegations in Paragraph 65. 11 66. Intel denies the allegations in Paragraph 66. 12 67. Intel denies the allegations in Paragraph 67. 13 68. Intel denies the allegations in Paragraph 68. 14 69. Intel admits that the products specifically identified in Paragraph 69 are 15 examples of Core processors. Intel denies the remaining allegations in Paragraph 69 as 16 they relate to unspecified "same or later generation Core processors." 17 70. Intel denies the allegations in Paragraph 70. 18 71. Intel denies the allegations in Paragraph 71. 19 72. Intel denies the allegations in Paragraph 72. 20 73. Intel denies the allegations in Paragraph 73. 21 74. Intel admits that the products specifically identified in Paragraph 74 are 22 examples of Pentium processors. Intel denies the remaining allegations in Paragraph 74 as 23 they relate to unspecified "same or later generation Pentium processors." 24 75. Intel denies the allegations in Paragraph 75. 25 76. Intel denies the allegations in Paragraph 76. 26 77. Intel denies the allegations in Paragraph 77. 27 78. Intel denies the allegations in Paragraph 78. 28-10-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 11 of 43 1 79. Intel admits that the products specifically identified in Paragraph 79 are 2 examples of Celeron processors. Intel denies the remaining allegations in Paragraph 79 as 3 they relate to unspecified "same or later generation Celeron processors." 4 80. Intel denies the allegations in Paragraph 80. 5 81. Intel denies the allegations in Paragraph 81. 6 82. Intel denies the allegations in Paragraph 82. 7 83. Intel denies the allegations in Paragraph 83. 8 84. Intel admits that the products specifically identified in Paragraph 84 are 9 examples of Xeon processors. Intel denies the remaining allegations in Paragraph 84 as 10 they relate to unspecified "same or later generation Xeon processors." 11 85. Intel denies the allegations in Paragraph 85. 12 86. Intel denies the allegations in Paragraph 86. 13 87. Intel denies the allegations in Paragraph 87. 14 88. Intel denies the allegations in Paragraph 88. 15 89. Intel admits that the products specifically identified in Paragraph 89 are 16 examples of Itanium processors. Intel denies the remaining allegations in Paragraph 89 as 17 they relate to unspecified "same or later generation Itanium processors." 18 90. Intel denies the allegations in Paragraph 90. 19 91. Intel denies the allegations in Paragraph 91. 20 92. Intel denies the allegations in Paragraph 92. 21 93. Intel denies the allegations in Paragraph 93. 22 94. Intel admits that the products specifically identified in Paragraph 94 are 23 examples of Quark processors. Intel denies the remaining allegations in Paragraph 94 as 24 they relate to unspecified "same or later generation Quark processors." 25 95. Intel denies the allegations in Paragraph 95. 26 96. Intel denies the allegations in Paragraph 96. 27 97. Intel denies the allegations in Paragraph 97. 28 98. Intel denies the allegations in Paragraph 98.-11-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 12 of 43 1 99. Intel admits that the products specifically identified in Paragraph 99 are 2 examples of chipsets. Intel denies the remaining allegations in Paragraph 99 as they relate 3 to unspecified "same or later generation chipsets." 4 100. Intel denies the allegations in Paragraph 100. 5 101. Intel denies the allegations in Paragraph 101. 6 102. Intel denies the allegations in Paragraph 102. 7 103. Intel denies the allegations in Paragraph 103. 8 104. Intel admits that Ibiden makes and sells package substrates. Intel further 9 admits that package substrates are one component in its Atom, Core, Pentium, Celeron, 10 Xeon, Itanium, and Quark processors, and its chipset products. Intel denies that Ibiden has 11 infringed any of the Patents-in-Suit based on the products that Intel purchases from Ibiden. 12 Intel lacks knowledge or information sufficient to form a belief about the truth of the 13 allegations in Paragraph 104 as they relate to package substrates that Ibiden sells to 14 customers other than Intel, and therefore denies the same. 15 105. Intel denies the allegations in Paragraph 105 as to package substrates that 16 Ibiden supplies to Intel. As to products that Ibiden supplies to customers other than Intel, 17 Intel lacks knowledge or information sufficient to form a belief about the truth of the 18 allegations in Paragraph 105, and therefore denies the same. 19 106. Intel denies the allegations in Paragraph 106 as to package substrates that 20 Ibiden supplies to Intel. As to products that Ibiden supplies to customers other than Intel, 21 Intel lacks knowledge or information sufficient to form a belief about the truth of the 22 allegations in Paragraph 106, and therefore denies the same. 23 107. Intel denies the allegations in Paragraph 107 as to package substrates that 24 Ibiden supplies to Intel. As to products that Ibiden supplies to customers other than Intel, 25 Intel lacks knowledge or information sufficient to form a belief about the truth of the 26 allegations in Paragraph 107, and therefore denies the same. 27 108. Intel denies the allegations in Paragraph 108 as to package substrates that 28 Ibiden supplies to Intel. As to products that Ibiden supplies to customers other than Intel,-12-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 13 of 43 1 Intel lacks knowledge or information sufficient to form a belief about the truth of the 2 allegations in Paragraph 108, and therefore denies the same. 3 109. Intel admits that it and/or its affiliates, subsidiaries, and/or customers make, 4 use, offer to sell, sell, and/or import Atom, Core, Pentium, Celeron, Xeon, Itanium, and 5 Quark processors, and chipset products within the United States. Intel admits that certain 6 products that Intel makes, uses, offers to sell, sells, and/or imports contain package 7 substrates supplied by Ibiden. Intel denies the allegations in Paragraph 109 to the extent 8 "Ibiden’s Package Substrates" is defined to include package substrates that Ibiden supplies 9 to customers other than Intel. 10 110. The allegation in Paragraph 110 contains legal conclusions about the 11 location of sales and offers to sell to which no response is required. 12 111. Intel denies the allegations in Paragraph 111 as they relate to Intel, and 13 products that Ibiden supplies to Intel. Intel lacks knowledge or information sufficient to 14 form a belief about the truth of the allegations in Paragraph 111 as they relate to products 15 that Ibiden supplies to customers other than Intel, and therefore denies the same. 16 112. Intel admits that some of the package substrates used in Intel’s Atom, Core, 17 Pentium, Celeron, Xeon, Itanium, and Quark processors, and its chipset products, are 18 supplied by Ibiden. 19 113. Intel admits that Continental Circuits has served Intel with claim charts 20 purporting to address claim 83 of the'582 Patent, claim 14 of the'560 Patent, claim 80 of 21 the'105 Patent, and claim 18 of the'912 Patent. Intel denies that it has committed any acts 22 of infringement, or that the claim charts show any acts of infringement. 23 114. Paragraph 114 contains conclusions of law regarding claim limitations of the 24 Patents-in-Suit to which no response is required. To the extent a response is required, Intel 25 denies the allegations in Paragraph 114. Intel lacks knowledge or information sufficient to 26 form a belief about the truth of the allegations related to the image and accompanying 27 caption in Paragraph 114, and therefore denies the same. 28-13-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 14 of 43 1 115. Paragraph 115 contains conclusions of law regarding claim limitations of the 2 Patents-in-Suit to which no response is required. To the extent a response is required, Intel 3 denies the allegations in Paragraph 115. Intel lacks knowledge or information sufficient to 4 form a belief about the truth of the allegations related to the image and accompanying 5 caption in Paragraph 115, and therefore denies the same. 6 116. Paragraph 116 contains conclusions of law regarding claim limitations of the 7 Patents-in-Suit to which no response is required. To the extent a response is required, Intel 8 denies the allegations in Paragraph 116. 9 117. Paragraph 117 contains conclusions of law regarding claim limitations of the 10 Patents-in-Suit to which no response is required. To the extent a response is required, Intel 11 denies the allegations in Paragraph 117. Intel lacks knowledge or information sufficient to 12 form a belief about the truth of the allegations related to the images and accompanying 13 captions in Paragraph 117, and therefore denies the same. 14 118. Intel denies the allegations in Paragraph 118. 15 119. Intel denies the allegations in Paragraph 119. 16 120. Paragraph 120 contains conclusions of law regarding claim limitations of the 17 Patents-in-Suit to which no response is required. To the extent a response is required, Intel 18 denies the allegations in Paragraph 120. 19 121. Paragraph 121 contains conclusions of law regarding claim limitations of the 20 Patents-in-Suit to which no response is required. To the extent a response is required, Intel 21 denies the allegations in Paragraph 121. 22 122. Paragraph 122 contains conclusions of law regarding claim limitations of the 23 Patents-in-Suit to which no response is required. To the extent a response is required, Intel 24 denies the allegations in Paragraph 122. 25 123. Paragraph 123 contains conclusions of law regarding claim limitations of the 26 Patents-in-Suit to which no response is required. To the extent a response is required, Intel 27 denies the allegations in Paragraph 123. 28-14-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 15 of 43 1 124. Paragraph 124 contains conclusions of law regarding claim limitations of the 2 Patents-in-Suit to which no response is required. To the extent a response is required, Intel 3 denies the allegations in Paragraph 124. Intel lacks knowledge or information sufficient to 4 form a belief about the truth of the allegations related to the images and accompanying 5 captions in Paragraph 124, and therefore denies the same. 6 125. Paragraph 125 contains conclusions of law regarding claim limitations of the 7 Patents-in-Suit to which no response is required. To the extent a response is required, Intel 8 denies the allegations in Paragraph 125. Intel lacks knowledge or information sufficient to 9 form a belief about the truth of the allegations related to the images and accompanying 10 captions in Paragraph 125, and therefore denies the same. 11 126. Paragraph 126 contains conclusions of law regarding claim limitations of the 12 Patents-in-Suit to which no response is required. To the extent a response is required, Intel 13 denies the allegations in Paragraph 126. Intel lacks knowledge or information sufficient to 14 form a belief about the truth of the allegations related to the images and accompanying 15 captions in Paragraph 126, and therefore denies the same. 16 127. Paragraph 127 contains conclusions of law regarding claim limitations of the 17 Patents-in-Suit to which no response is required. To the extent a response is required, Intel 18 denies the allegations in Paragraph 127. 19 128. Intel denies the allegations in Paragraph 128. 20 129. Intel denies that any Intel products are made by the processes claimed in the 21 Patents-in-Suit. Intel lacks knowledge or information sufficient to form a belief about the 22 truth of the allegations related to the images and captions in Paragraphs 117, 124, 125 and 23 126, and therefore denies the same. Intel denies the remaining allegations in Paragraph 24 129. 25 130. Intel denies the allegations in Paragraph 130. 26 131. The allegations in Paragraph 131 contain conclusions of law to which no 27 response is required. To the extent a response is required, Intel denies the allegations in 28 Paragraph 131.-15-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 16 of 43 1 132. Intel denies the allegations in Paragraph 132. 2 133. Intel denies the allegations in Paragraph 133 as to Intel. Intel lacks 3 knowledge or information sufficient to form a belief about the truth of the allegations in 4 Paragraph 133 as they relate to Ibiden, and therefore denies the same. 5 134. Intel admits that Continental Circuits has accused products that Ibiden 6 supplies to Intel of infringing the Patents-in-Suit, and that certain questions of fact may 7 arise over the course of this case. 8 COUNT ONE: PATENT INFRINGEMENT BY INTEL 9 135. Intel repeats and incorporates its answers to Paragraphs 1 through 134 above, 10 as if set forth fully herein. 11 136. Intel denies the allegations in Paragraph 136. 12 137. Intel denies the allegations in Paragraph 137. 13 138. Intel admits that it and/or its affiliates, subsidiaries, and/or customers make, 14 use, offer to sell, sell, and/or import Atom, Core, Pentium, Celeron, Xeon, Itanium, and 15 Quark processors, and chipset products within the United States. Intel admits that certain 16 products that Intel makes, uses, offers to sell, sells, and/or imports contain package 17 substrates supplied by Ibiden. Intel denies the allegations in Paragraph 109 to the extent 18 "Accused Instrumentalities" is defined to include package substrates that Ibiden supplies to 19 customers other than Intel. Intel denies all remaining allegations in Paragraph 138. 20 139. Intel denies the allegations in Paragraph 139. 21 140. Intel denies the allegations in Paragraph 140. 22 141. Intel denies the allegations in Paragraph 141. 23 142. Intel admits that Continental Circuits’ initial complaint identifying the 24 Patents-in-Suit was served on Intel on July 15, 2016. Intel denies that it was aware of the 25'582,'560,'105, and'912 patents at any point before the initial complaint was filed on 26 June 22, 2016. 27 143. Intel admits that it requires its package substrate suppliers to use certain 28 dielectric materials. Intel admits that it provides its suppliers with substrate target-16-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 17 of 43 1 specification documents; with respect to the content of the substrate target specifications, 2 the documents speak for themselves. Intel further admits that it generally markets and 3 promotes its products. Intel denies all remaining allegations in Paragraph 143. 4 144. Intel denies the allegations in Paragraph 144. 5 145. Intel denies the allegations in Paragraph 145. 6 146. Intel denies the allegations in Paragraph 146. 7 147. Intel denies the allegations in Paragraph 147. 8 148. Intel denies the allegations in Paragraph 148. 9 149. Intel denies the allegations in Paragraph 149. 10 150. Intel denies the allegations in Paragraph 150. 11 COUNT TWO: PATENT INFRINGEMENT BY IBIDEN 12 151. Intel repeats and incorporates its answers to Paragraphs 1 through 150 above, 13 as if set forth fully herein. 14 152. Intel denies the allegations in Paragraph 152 as to products that Ibiden 15 supplies to Intel. Intel lacks knowledge or information sufficient to form a belief about the 16 truth of the allegations in Paragraph 152 as to products that Ibiden manufactures for 17 customers other than Intel, and therefore denies the same. 18 153. Intel denies the allegations in Paragraph 153. 19 154. Intel lacks knowledge or information sufficient to form a belief about the 20 truth of the allegations in Paragraph 154, and therefore denies the same. 21 155. Intel denies the allegations in Paragraph 155 as to products that Ibiden 22 supplies to Intel. Intel lacks knowledge or information sufficient to form a belief about the 23 truth of all remaining allegations in Paragraph 155, and therefore denies the same. 24 156. Intel denies the allegations in Paragraph 156 as to products that Ibiden 25 supplies to Intel. Intel lacks knowledge or information sufficient to form a belief about the 26 truth of all remaining allegations in Paragraph 156, and therefore denies the same. 27 28-17-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 18 of 43 1 157. Intel denies the allegations in Paragraph 157 as to products that Ibiden 2 supplies to Intel. Intel lacks knowledge or information sufficient to form a belief about the 3 truth of all remaining allegations in Paragraph 157, and therefore denies the same. 4 158. Intel lacks knowledge or information sufficient to form a belief about the 5 truth of the allegations in Paragraph 158, and therefore denies the same. 6 159. Intel denies the allegations in Paragraph 159 as to products that Ibiden 7 supplies to Intel. Intel lacks knowledge or information sufficient to form a belief about the 8 truth of all remaining allegations in Paragraph 159, and therefore denies the same. 9 160. Intel denies the allegations in Paragraph 160 as to products that Ibiden 10 supplies to Intel. Intel lacks knowledge or information sufficient to form a belief about the 11 truth of the remaining allegations in Paragraph 160, and therefore denies the same. 12 161. Intel denies that Ibiden has infringed any of the Patents-in-Suit based on the 13 products that Intel purchases from Ibiden. Intel lacks knowledge or information sufficient 14 to form a belief about the truth of the remaining allegations in Paragraph 161, and therefore 15 denies the same. 16 162. Intel denies the allegations in Paragraph 162 as to products that Ibiden 17 supplies to Intel. Intel lacks knowledge or information sufficient to form a belief about the 18 truth of the allegations in Paragraph 162, and therefore denies the same. 19 163. Intel denies the allegations in Paragraph 163 as to products that Ibiden 20 supplies to Intel. Intel lacks knowledge or information sufficient to form a belief about the 21 truth of the remaining allegations in Paragraph 163, and therefore denies the same. 22 164. Intel denies the allegations in Paragraph 164 as to products that Ibiden 23 supplies to Intel. Intel lacks knowledge or information sufficient to form a belief about the 24 truth of the allegations in Paragraph 164 as they relate to products that Ibiden supplies to 25 customers other than Intel, and therefore denies the same. 26 165. Intel denies the allegations in Paragraph 165 as to products that Ibiden 27 supplies to Intel. Intel lacks knowledge or information sufficient to form a belief about the 28-18-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 19 of 43 1 truth of the allegations in Paragraph 165 as they relate to products that Ibiden supplies to 2 customers other than Intel, and therefore denies the same. 3 166. Intel denies the allegations in Paragraph 166 as to products that Ibiden 4 supplies to Intel. Intel lacks knowledge or information sufficient to form a belief about the 5 truth of the allegations in Paragraph 166 as they relate to products that Ibiden supplies to 6 customers other than Intel, and therefore denies the same. 7 167. Intel denies the allegations in Paragraph 167 as to products that Ibiden 8 supplies to Intel. Intel lacks knowledge or information sufficient to form a belief about the 9 truth of the allegations in Paragraph 167 as they relate to products that Ibiden supplies to 10 customers other than Intel, and therefore denies the same. 11 RESPONSE TO CONTINENTAL CIRCUITS’ DEMAND FOR JURY TRIAL 12 Pursuant to Rule 38 of the Federal Rules of Civil Procedure, Intel hereby demands a 13 jury for all issues so triable. 14 RESPONSE TO CONTINENTAL CIRCUITS’ PRAYER FOR RELIEF 15 Intel denies that it is liable for any relief requested in the Prayer for Relief, including 16 that requested in subparagraphs 1 through 11. Intel has not directly, indirectly, literally 17 and/or by the doctrine of equivalents infringed the Patents-in-Suit. Continental Circuits is 18 not entitled to recover statutory damages, compensatory damages, accounting, injunctive 19 relief, costs, fees, interest, or any other type of recovery from Intel. Additionally, 20 Continental Circuits is not entitled to a judgment that Defendants’ alleged infringement has 21 been willful or enhanced damages under 35 U.S.C. § 284 (requested in subparagraphs 5 22 and 7) based on its willfulness claims, because those claims have been dismissed with 23 prejudice. Continental Circuits’ prayer should therefore be denied in its entirety and with 24 prejudice. Intel asks that judgment on Continental Circuits’ claims be entered for Intel. 25 AFFIRMATIVE DEFENSES 26 By alleging the Affirmative Defenses below, Intel does not agree or concede that it 27 bears the burden of proof or the burden of persuasion on any of these issues, whether in 28 whole or in part. For its Affirmative Defenses to the Complaint, Intel alleges as follows:-19-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 20 of 43 1 FIRST DEFENSE 2 (Failure to State a Claim) 3 The Complaint fails to state a claim upon which relief can be granted. Intel has not 4 performed, does not currently perform, and does not propose to perform, any act in 5 violation of any rights validly belonging to Continental Circuits. 6 SECOND DEFENSE 7 (No Infringement) 8 Continental Circuits is not entitled to any relief against Intel because Intel has not 9 infringed and is not infringing, either directly or by inducement, either literally, or under 10 the doctrine of equivalents, any valid and enforceable claim of any of the Patents-in-Suit. 11 THIRD DEFENSE 12 (Invalidity) 13 The claims of the Patents-in-Suit are invalid and/or unenforceable for failing to 14 meet one or more of the requisite statutory and decisional requirements and/or conditions 15 for patentability under Title 35 of the United States Code, including, without limitation, 16 §§ 101, 102, 103, 112, 116, and/or 256. 17 FOURTH DEFENSE 18 (Estoppel, Prosecution Laches, Waiver, Acquiescence, Unclean Hands) 19 Continental Circuits’ claims for relief are barred, in whole or in part, under 20 principles of equity, including, but not limited to, estoppel, prosecution laches, waiver, 21 acquiescence, and/or unclean hands. Additionally, Continental Circuits’ claim for 22 equitable relief is barred, in whole or in part, based on, among other things, its delay in 23 bringing suit. 24 FIFTH DEFENSE 25 (Prosecution History Estoppel and Disclaimer) 26 By reason of proceedings in the United States Patent and Trademark Office during 27 prosecution of the Patents-in-Suit, and specifically statements, arguments, amendments, 28 assertions, and/or representations made by or on behalf of the applicants for the-20-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 21 of 43 1 Patents-in-Suit, Continental Circuits is estopped from construing the claims of the 2 Patents-in-Suit in any way to cover any product, method, or service of Intel under the 3 doctrine of equivalents. 4 SIXTH DEFENSE 5 (No Double Compensation) 6 The relief sought by Continental Circuits is limited, in whole or in part, by any 7 compensation received or sought by Continental Circuits for its alleged patent rights from 8 parties whose products incorporate any accused Intel products or that supply accused 9 products to Intel. 10 SEVENTH DEFENSE 11 (Limitations on Damages) 12 Continental Circuits’ right to seek damages and other remedies from Intel is limited, 13 including, without limitation, by 35 U.S.C. §§ 285, 286 and/or 287. 14 COUNTERCLAIMS 15 Counterclaim Plaintiff Intel Corporation ("Intel") alleges as follows: 16 PARTIES 17 1. These are counterclaims for declarations of noninfringement and invalidity 18 of one or more claims of U.S. Patent Nos. 7,501,582 ("’582 patent"), 8,278,560 ("’560 19 patent"), 8,581,105 ("’105 patent"), and 9,374,912 ("’912 patent") ("Patents-in-Suit"). 20 2. Counterclaim plaintiff Intel is a corporation organized and existing under the 21 laws of the State of Delaware, with its principal place of business in Santa Clara, 22 California. 23 3. Counterclaim defendant Continental Circuits LLC ("Continental Circuits") 24 alleges in its Second Amended Complaint that it is a limited liability company organized 25 and existing under the laws of the State of Arizona, with its principal place of business at 1 26 East Washington Street, Suite 590, Phoenix, Arizona 85004. (See Dkt. 124, ¶ 1.) 27 28-21-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 22 of 43 1 JURISDICTION AND VENUE 2 4. This is an action for declaratory judgment arising under the patent laws of the 3 United States, 35 U.S.C. § 1, et seq., and the Declaratory Judgment Act, 28 U.S.C. 4 §§ 2201-2202. This Court has subject matter jurisdiction over these Counterclaims 5 pursuant to 28 U.S.C. §§ 1331 and 1338(a), in combination with 28 U.S.C. §§ 2201-2202. 6 5. Continental Circuits resides, and has brought suit against Intel on the 7 Patents-in-Suit, in this Judicial District. As such, personal jurisdiction and venue in this 8 District are proper under 28 U.S.C. §§ 1391(b) and 1400(b). 9 6. Continental Circuits has sued Intel claiming that it is the owner of the 10 Patents-in-Suit and accusing Intel of infringing the Patents-in-Suit. Intel denies that 11 Continental Circuits has shown that it owns the Patents-in-Suit, that Intel infringes any of 12 the Patents-in-Suit, that the Patents-in-Suit are valid, and that the Patents-in-Suit are 13 enforceable against Intel. An actual controversy exists under the Declaratory Judgment 14 Act between the parties concerning the ownership, infringement, validity, and 15 enforceability of one or more claims of the Patents-in-Suit, and that controversy is ripe for 16 adjudication by this Court. 17 BACKGROUND 18 7. Package substrates and printed circuit boards were known, made, and used 19 prior to August 4, 1997. 20 8. Ibiden was making, using, and/or selling package substrates and printed 21 circuit boards prior to August 4, 1997. 22 9. Intel sold products incorporating package substrates and printed circuit 23 boards prior to August 4, 1997. 24 10. The purported technological challenges identified in the Patents-in-Suit 25 related to adhering copper or another conductive material to a dielectric in a printed circuit 26 board or package substrate, see, e.g.,'582 patent at 1:28-32, 1:50-51, were solved by others 27 in the field prior to August 4, 1997. 28-22-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 23 of 43 1 11. Methods of chemical roughening to improve adhesion between dielectric and 2 conductive layers in multilayer electrical devices such as package substrates and printed 3 circuit boards were known prior to August 4, 1997. (See id. at 1:33-40.) 4 12. Such chemical roughening included oxide-related chemical roughening, 5 such as with a permanganate solution, and was sometimes referred to as a desmear or an 6 etching process. 7 13. Roughening the dielectric layer in a package substrate using a single desmear 8 process (or a single etching process) was known prior to August 4, 1997. (See id. at 9 5:40-42.) 10 14. For example, U.S. Patent No. 5.447,996 to Asai et al. ("Asai") states, "Next 11 step is a treatment of roughening the surface of the adhesive layer formed on the substrate. 12 In this step, when the heat-resistant resin matrix is the thermosetting resin, the adhesive 13 layer of the uncured or semi-cured state (B-stage) formed on the substrate is thermoset into 14 a cured state (C-stage) and thereafter at least a part of the amino resin fine powder 15 dispersed into the surface portion of the adhesive layer is dissolved and removed with acid 16 or oxidizing agent to roughen the surface of the adhesive layer." Asai at 13:19-42. 17 15. Asai was filed on May 24, 1994. 18 16. Roughening the dielectric layer in a package substrate using more than one 19 desmear process (or more than one etching process) was also known prior to August 4, 20 1997. 21 17. For example, U.S. Patent No. 5,998,237 ("Conrod") described roughening 22 the dielectric layer in a package substrate using more than one desmear when it stated, 23 among other things, that "[a] twice performed permanganate etching process for texturing 24 the dielectric surface is also preferably used to further enhance the copper to dielectric 25 adhesion." Conrod at Abstract. 26 18. Conrod was filed on September 17, 1996. 27 28-23-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 24 of 43 1 COUNT I – NONINFRINGEMENT OF THE'582 PATENT 2 19. Intel repeats and realleges the allegations set forth in Paragraphs 1 through 3 18 of its Counterclaims above, as if set forth fully herein. 4 20. Continental Circuits claims that it owns all rights, title, and interest in and to 5 the'582 patent. (See Dkt. 124, ¶ 19.) Continental Circuits purports to charge Intel with 6 infringement of the'582 patent in its Second Amended Complaint for Patent Infringement. 7 (Id., Count One.) Claim 83 of the'582 patent is the only claim of the'582 patent that is 8 specifically identified as allegedly infringed in the Second Amended Complaint. 9 21. Intel has not infringed and does not infringe, either directly or by 10 inducement, either literally or under the doctrine of equivalents, any claim of the'582 11 patent. In light of Continental Circuits’ Second Amended Complaint for Patent 12 Infringement, there exists an actual controversy between Continental Circuits and Intel 13 regarding this patent. 14 22. Accordingly, a valid and justiciable controversy has arisen and exists 15 between Continental Circuits and Intel with respect to the alleged infringement of the'582 16 patent. Intel desires a judicial determination and declaration of the respective rights and 17 duties of the parties herein. Such a determination and declaration is necessary and 18 appropriate at this time so that the parties may ascertain their respective rights and duties. 19 23. As just one example, with respect to claim 83, which is the only claim of the 20'582 patent specifically identified in the Second Amended Complaint, Intel does not 21 infringe with respect to at least the following limitations. 22 a. "a dielectric material comprising a surface with cavities remaining from 23 removal of a portion of the dielectric material" 24 b. "a conductive layer built up on the dielectric material so as to fill the cavities 25 and form teeth set in and under the surface of the dielectric material" 26 c. "the conductive layer is a portion of circuitry of an electrical device" 27 d. "a plurality of the cavities are obtuse with respect to the surface and are at 28 least 1 tenth of a mil deep to 1.75 tenths of a mil deep"-24-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 25 of 43 1 e. "at least one of the cavities includes an upgrade slope with respect to the 2 surface of the dielectric material, and one of the teeth engages a portion of 3 the dielectric material at the slope" 4 24. Intel is entitled to a declaratory judgment that: (a) it has not infringed, and 5 does not infringe the'582 patent, and (b) it has not induced, and does not induce, 6 infringement of the'582 patent. 7 COUNT II – INVALIDITY OF THE'582 PATENT 8 25. Intel repeats and realleges the allegations set forth in Paragraphs 1 through 9 24 of its Counterclaims above, as if set forth fully herein. 10 26. Intel contends that the claims of the'582 patent are invalid for failure to 11 comply with the conditions for patentability, including, but not limited to, 35 U.S.C. 12 §§ 102, 103, 112, 116, and/or 256. 13 27. The claims of the'582 patent are invalid for failure to meet the requirements 14 of 35 U.S.C. § 102 because, to the extent the claim terms are not indefinite, prior art existed 15 that fully described each element of these claims, either expressly or inherently, rendering 16 the claims invalid due to anticipation. In addition, to the extent not indefinite, the claims of 17 the'582 patent are invalid for failure to meet the requirements of 35 U.S.C. § 103 because 18 prior art existed that renders the subject matter of these claims obvious to one of ordinary 19 skill in the art. Examples of such prior art have been identified to Continental Circuits by 20 Defendants in discovery, including by way of example, but not limitation, in response to 21 Common Interrogatory No. 9, including the exhibits attached to Defendants’ Response to 22 Common Interrogatory No. 9, which Intel incorporates by reference. 23 28. As just one example, with respect to claim 83, which is the only claim of the 24'582 patent specifically identified in the Second Amended Complaint, under at least 25 Continental Circuits’ apparent claim interpretations, and to the extent the preamble is 26 limiting and to the extent the claims of the'582 patent are not indefinite, Conrod discloses 27 and/or renders obvious each and every limitation along with the references disclosed in 28 Exhibit A-1 to Defendants’ Responses to Common Interrogatory No. 9.-25-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 26 of 43 1 29. Along with the references disclosed in Exhibit A-1 to Defendants’ 2 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 3 claim interpretations and to the extent that claim 83 of the'582 patent is not indefinite, 4 Conrod discloses and/or renders obvious "[a]n electrical device." See Exhibit A-1 to 5 Defendants’ Responses to Common Interrogatory No. 9 at claim element 83p. 6 30. Along with the references disclosed in Exhibit A-1 to Defendants’ 7 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 8 claim interpretations and to the extent that claim 83 of the'582 patent is not indefinite, 9 Conrod discloses and/or renders obvious "a dielectric material comprising a surface with 10 cavities remaining from removal of a portion of the dielectric material." See id. at claim 11 element 83a. 12 31. Along with the references disclosed in Exhibit A-1 to Defendants’ 13 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 14 claim interpretations and to the extent that claim 83 of the'582 patent is not indefinite, 15 Conrod discloses and/or renders obvious "a conductive layer built up on the dielectric 16 material so as to fill the cavities and form teeth set in and under the surface of the dielectric 17 material." See id. at claim element 83b. 18 32. Along with the references disclosed in Exhibit A-1 to Defendants’ 19 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 20 claim interpretations and to the extent that claim 83 of the'582 patent is not indefinite, 21 Conrod discloses and/or renders obvious "the conductive layer is a portion of circuitry of 22 an electrical device." See id. at claim element 83c. 23 33. Along with the references disclosed in Exhibit A-1 to Defendants’ 24 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 25 claim interpretations and to the extent that claim 83 of the'582 patent is not indefinite, 26 Conrod discloses and/or renders obvious "a plurality of the cavities are obtuse with respect 27 to the surface and are at least 1 tenth of a mil deep to 1.75 tenths of a mil deep." See id. at 28 claim element 83d.-26-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 27 of 43 1 34. Along with the references disclosed in Exhibit A-1 to Defendants’ 2 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 3 claim interpretations and to the extent that claim 83 of the'582 patent is not indefinite, 4 Conrod discloses and/or renders obvious "wherein at least one of the cavities includes an 5 upgrade slope with respect to the surface of the dielectric material, and one of the teeth 6 engages a portion of the dielectric material at the slope." See id. at claim element 83e. 7 35. The claims of the'582 patent are invalid for failure to meet the requirements 8 of 35 U.S.C. § 112, at least because certain limitations of the clams of the'582 patent are 9 indefinite and/or lack written description, and further because the specification of the'582 10 patent is insufficient in its description or teachings to enable one of ordinary skill in the art 11 to practice the full scope of the claims. 12 36. Intel is informed and believes, and on that basis alleges, that Continental 13 Circuits contends that the'582 patent, including but not limited to claim 83, is valid and 14 enforceable. 15 37. Accordingly, a valid and justiciable controversy has arisen and exists 16 between Continental Circuits and Intel with respect to the validity of the'582 patent. Intel 17 desires a judicial determination and declaration of the respective rights and duties of the 18 parties herein. Such a determination and declaration is necessary and appropriate at this 19 time so that the parties may ascertain their respective rights and duties. 20 38. Intel is entitled to a declaratory judgment that the claims of the'582 patent 21 are invalid. 22 COUNT III – NONINFRINGEMENT OF THE'560 PATENT 23 39. Intel repeats and realleges the allegations set forth in Paragraphs 1 through 24 38 of its Counterclaims above, as if set forth fully herein. 25 40. Continental Circuits claims that it owns all rights, title, and interest in and to 26 the'560 patent. (See Dkt. 124, ¶ 19.) Continental Circuits purports to charge Intel with 27 infringement of the'560 patent in its Second Amended Complaint for Patent Infringement. 28-27-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 28 of 43 1 (Id., Count One.) Claim 14 of the'560 patent is the only claim of the'560 patent that is 2 specifically identified as allegedly infringed in the Second Amended Complaint. 3 41. Intel has not infringed and does not infringe, either directly or by 4 inducement, either literally or under the doctrine of equivalents, any claim of the'560 5 patent. In light of Continental Circuits’ Second Amended Complaint for Patent 6 Infringement, there exists an actual controversy between Continental Circuits and Intel 7 regarding this patent. 8 42. Accordingly, a valid and justiciable controversy has arisen and exists 9 between Continental Circuits and Intel with respect to the alleged infringement of the'560 10 patent. Intel desires a judicial determination and declaration of the respective rights and 11 duties of the parties herein. Such a determination and declaration is necessary and 12 appropriate at this time so that the parties may ascertain their respective rights and duties. 13 43. As just one example, with respect to claim 14, which is the only claim of the 14'560 patent specifically identified in the Second Amended Complaint, Intel does not 15 infringe with respect to at least the following limitations. 16 a. "an epoxy dielectric material delivered with solid content sufficient that 17 etching the epoxy forms a non-uniformly roughened surface comprising 18 cavities located in and underneath a surface of the dielectric material" 19 b. "an epoxy dielectric material delivered with solid content … sufficient that 20 the etching of the epoxy uses non-homogeneity with the solid content to 21 bring about formation of the non-uniformly roughened surface with at least 22 some of the cavities having a first cross-sectional distance proximate the 23 initial surface and a substantially greater cross-sectional distance distant 24 from the initial surface" 25 c. "whereby the etching of the epoxy forms the cavities, and a portion of the 26 conductive material in the cavities thereby forming teeth in the cavities" 27 d. "wherein the etching of the non-homogeneous composition forms the 28 cavities"-28-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 29 of 43 1 44. Intel is entitled to a declaratory judgment that: (a) it has not infringed, and 2 does not infringe the'560 patent, and (b) it has not induced, and does not induce, 3 infringement of the'560 patent. 4 COUNT IV – INVALIDITY OF THE'560 PATENT 5 45. Intel repeats and realleges the allegations set forth in Paragraphs 1 through 6 44 of its Counterclaims above, as if set forth fully herein. 7 46. Intel contends that the claims of the'560 patent are invalid for failure to 8 comply with the conditions for patentability, including, but not limited to, 35 U.S.C. 9 §§ 102, 103, 112, 116, and/or 256. 10 47. The claims of the'560 patent are invalid for failure to meet the requirements 11 of 35 U.S.C. § 102 because, to the extent the claim terms are not indefinite, prior art existed 12 that fully described each element of these claims, either expressly or inherently, rending 13 the claims invalid due to anticipation. In addition, to the extent not indefinite, the claims of 14 the'560 patent are invalid for failure to meet the requirements of 35 U.S.C. § 103 because 15 prior art existed that renders the subject matter of these claims obvious to one of ordinary 16 skill in the art. Examples of such prior art have been identified to Continental Circuits by 17 Defendants in discovery, including by way of example, but not limitation, in response to 18 Common Interrogatory No. 9, including the exhibits attached to Defendants’ Response to 19 Common Interrogatory No. 9, which Intel incorporates by reference. 20 48. As just one example, with respect to claim 14, which is the only claim of the 21'560 patent specifically identified in the Second Amended Complaint, under at least 22 Continental Circuits’ apparent claim interpretations, and to the extent the preamble is 23 limiting and to the extent the claims of the'560 patent are not indefinite, Conrod discloses 24 and/or renders obvious each and every limitation along with the references disclosed in 25 Exhibit B-1 to Defendants’ Responses to Common Interrogatory No. 9. 26 49. Along with the references disclosed in Exhibit B-1 to Defendants’ Responses 27 to Common Interrogatory No. 9, at least under Continental Circuits’ apparent claim 28 interpretations and to the extent that claim 14 of the'560 patent is not indefinite, Conrod-29-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 30 of 43 1 discloses and/or renders obvious "[a]n article of manufacture." See Exhibit B-1 to 2 Defendants’ Responses to Common Interrogatory No. 9 at claim element 14p. 3 50. Along with the references disclosed in Exhibit B-1 to Defendants’ Responses 4 to Common Interrogatory No. 9, at least under Continental Circuits’ apparent claim 5 interpretations and to the extent that claim 14 of the'560 patent is not indefinite, Conrod 6 discloses and/or renders obvious "an epoxy dielectric material delivered with solid 7 content." See id. at claim element 14a. 8 51. Along with the references disclosed in Exhibit B-1 to Defendants’ Responses 9 to Common Interrogatory No. 9, at least under Continental Circuits’ apparent claim 10 interpretations and to the extent that claim 14 of the'560 patent is not indefinite, Conrod 11 discloses and/or renders obvious "sufficient that etching the epoxy forms a non-uniformly 12 roughened surface comprising cavities located in and underneath a surface of the dielectric 13 material." See id. at claim element 14b. 14 52. Along with the references disclosed in Exhibit B-1 to Defendants’ 15 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 16 claim interpretations and to the extent that claim 14 of the'560 patent is not indefinite, 17 Conrod discloses and/or renders obvious "sufficient that the etching of the epoxy uses 18 non-homogeneity with the solid content to bring about formation of the non-uniformly 19 roughened surface." See id. at claim element 14c. 20 53. Along with the references disclosed in Exhibit B-1 to Defendants’ Responses 21 to Common Interrogatory No. 9, at least under Continental Circuits’ apparent claim 22 interpretations and to the extent that claim 14 of the'560 patent is not indefinite, Conrod 23 discloses and/or renders obvious "with at least some of the cavities having a first 24 cross-sectional distance proximate the initial surface and a substantially greater 25 cross-sectional distance distant from the initial surface." See id. at claim element 14d. 26 54. Along with the references disclosed in Exhibit B-1 to Defendants’ Responses 27 to Common Interrogatory No. 9, at least under Continental Circuits’ apparent claim 28 interpretations and to the extent that claim 14 of the'560 patent is not indefinite, Conrod-30-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 31 of 43 1 discloses and/or renders obvious "a conductive material, whereby the etching of the epoxy 2 forms the cavities, and a portion of the conductive material in the cavities thereby forming 3 teeth in the cavities." See id. at claim element 14e. 4 55. Along with the references disclosed in Exhibit B-1 to Defendants’ Responses 5 to Common Interrogatory No. 9, at least under Continental Circuits’ apparent claim 6 interpretations and to the extent that claim 14 of the'560 patent is not indefinite, Conrod 7 discloses and/or renders obvious "wherein the etching of the non-homogeneous 8 composition forms the cavities." See id. at claim element 14f. 9 56. Along with the references disclosed in Exhibit B-1 to Defendants’ Responses 10 to Common Interrogatory No. 9, at least under Continental Circuits’ apparent claim 11 interpretations and to the extent that claim 14 of the'560 patent is not indefinite, Conrod 12 discloses and/or renders obvious "wherein the conductive material forms a portion of 13 circuity of an electrical device." See id. at claim element 14g. 14 57. The claims of the'560 patent are invalid for failure to meet the requirements 15 of 35 U.S.C. § 112, at least because certain limitations of the clams of the'560 patent are 16 indefinite and/or lack written description, and further because the specification of the'560 17 patent is insufficient in its description or teachings to enable one of ordinary skill in the art 18 to practice the full scope of the claims. 19 58. Intel is informed and believes, and on that basis alleges, that Continental 20 Circuits contends that the'560 patent, including but not limited to claim 14, is valid and 21 enforceable. 22 59. Accordingly, a valid and justiciable controversy has arisen and exists 23 between Continental Circuits and Intel with respect to the validity of the'560 patent. Intel 24 desires a judicial determination and declaration of the respective rights and duties of the 25 parties herein. Such a determination and declaration is necessary and appropriate at this 26 time so that the parties may ascertain their respective rights and duties. 27 60. Intel is entitled to a declaratory judgment that the claims of the'560 patent 28 are invalid.-31-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 32 of 43 1 COUNT V – NONINFRINGEMENT OF THE'105 PATENT 2 61. Intel repeats and realleges the allegations set forth in Paragraphs 1 through 3 60 of its Counterclaims above, as if set forth fully herein. 4 62. Continental Circuits claims that it owns all rights, title, and interest in and to 5 the'105 patent. (See Dkt. 124, ¶ 19.) Continental Circuits purports to charge Intel with 6 infringement of the'105 patent in its Second Amended Complaint for Patent Infringement. 7 (Id., Count One.) Claim 80 of the'105 patent is the only claim of the'105 patent that is 8 specifically identified as allegedly infringed in the Second Amended Complaint. 9 63. Intel has not infringed and does not infringe, either directly or by 10 inducement, either literally or under the doctrine of equivalents, any claim of the'105 11 patent. In light of Continental Circuits’ Second Amended Complaint for Patent 12 Infringement, there exists an actual controversy between Continental Circuits and Intel 13 regarding this patent. 14 64. Accordingly, a valid and justiciable controversy has arisen and exists 15 between Continental Circuits and Intel with respect to the alleged infringement of the'105 16 patent. Intel desires a judicial determination and declaration of the respective rights and 17 duties of the parties herein. Such a determination and declaration is necessary and 18 appropriate at this time so that the parties may ascertain their respective rights and duties. 19 65. As just one example, with respect to claim 80, which is the only claim of the 20'105 patent specifically identified in the Second Amended Complaint, Intel does not 21 infringe with respect to at least the following limitations. 22 a. "conductive material being part of the circuitry and configured as angular 23 teeth in filling cavities" 24 b. "the dielectric material comprises a non-uniformly roughened surface 25 comprising cavities located in and underneath an initial surface of the 26 dielectric material delivered with solid content being non-homogeneous and 27 configured to bring about formation of the non-uniformly roughened surface 28 by etching of the epoxy"-32-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 33 of 43 1 c. "at least some the cavities having a first cross-sectional distance proximate 2 the initial surface and a substantially greater cross-sectional distance distant 3 from the initial surface" 4 66. Intel is entitled to a declaratory judgment that: (a) it has not infringed, and 5 does not infringe the'105 patent, and (b) it has not induced, and does not induce, 6 infringement of the'105 patent. 7 COUNT VI – INVALIDITY OF THE'105 PATENT 8 67. Intel repeats and realleges the allegations set forth in Paragraphs 1 through 9 66 of its Counterclaims above, as if set forth fully herein. 10 68. Intel contends that the claims of the'105 patent are invalid for failure to 11 comply with the conditions for patentability, including, but not limited to, 35 U.S.C. 12 §§ 102, 103, 112, 116, and/or 256. 13 69. The claims of the'105 patent are invalid for failure to meet the requirements 14 of 35 U.S.C. § 102 because, to the extent the claim terms are not indefinite, prior art existed 15 that fully described each element of these claims, either expressly or inherently, rendering 16 the claims invalid due to anticipation. In addition, to the extent not indefinite, the claims of 17 the'105 patent are invalid for failure to meet the requirements of 35 U.S.C. § 103 because 18 prior art existed that renders the subject matter of these claims obvious to one of ordinary 19 skill in the art. Examples of such prior art have been identified to Continental Circuits by 20 Defendants in discovery, including by way of example, but not limitation, in response to 21 Common Interrogatory No. 9, including the exhibits attached to Defendants’ Response to 22 Common Interrogatory No. 9, which Intel incorporates by reference. 23 70. As just one example, with respect to claim 80, which is the only claim of the 24'105 patent specifically identified in the Second Amended Complaint, under at least 25 Continental Circuits’ apparent claim interpretations, and to the extent the preamble is 26 limiting and to the extent the claims of the'105 patent are not indefinite, Conrod discloses 27 and/or renders obvious each and every limitation along with the references disclosed in 28 Exhibit C-1 to Defendants’ Responses to Common Interrogatory No. 9.-33-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 34 of 43 1 71. Along with the references disclosed in Exhibit C-1 to Defendants’ Responses 2 to Common Interrogatory No. 9, at least under Continental Circuits’ apparent claim 3 interpretations and to the extent that claim 80 of the'105 patent is not indefinite, Conrod 4 discloses and/or renders obvious "[a]n electrical device." See Exhibit C-1 to Defendants’ 5 Responses to Common Interrogatory No. 9 at claim element 80p. 6 72. Along with the references disclosed in Exhibit C-1 to Defendants’ Responses 7 to Common Interrogatory No. 9, at least under Continental Circuits’ apparent claim 8 interpretations and to the extent that claim 80 of the'105 patent is not indefinite, Conrod 9 discloses and/or renders obvious "circuitry." See id. at claim element 80a. 10 73. Along with the references disclosed in Exhibit C-1 to Defendants’ Responses 11 to Common Interrogatory No. 9, at least under Continental Circuits’ apparent claim 12 interpretations and to the extent that claim 80 of the'105 patent is not indefinite, Conrod 13 discloses and/or renders obvious "conductive material being part of the circuitry and 14 configured as angular teeth in filling cavities." See id. at claim element 80b. 15 74. Along with the references disclosed in Exhibit C-1 to Defendants’ 16 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 17 claim interpretations and to the extent that claim 80 of the'105 patent is not indefinite, 18 Conrod discloses and/or renders obvious "an epoxy dielectric material disposed in 19 combination with the circuitry and coupled with the conductive material." See id. at claim 20 element 80c. 21 75. Along with the references disclosed in Exhibit C-1 to Defendants’ Responses 22 to Common Interrogatory No. 9, at least under Continental Circuits’ apparent claim 23 interpretations and to the extent that claim 80 of the'105 patent is not indefinite, Conrod 24 discloses and/or renders obvious "in a configuration where the dielectric material 25 comprises a non-uniformly roughened surface comprising cavities located in and 26 underneath an initial surface of the dielectric material." See id. at claim element 80d. 27 76. Along with the references disclosed in Exhibit C-1 to Defendants’ Responses 28 to Common Interrogatory No. 9, at least under Continental Circuits’ apparent claim-34-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 35 of 43 1 interpretations and to the extent that claim 80 of the'105 patent is not indefinite, Conrod 2 discloses and/or renders obvious "delivered with solid content being non-homogeneous." 3 See id. at claim element 80e. 4 77. Along with the references disclosed in Exhibit C-1 to Defendants’ Responses 5 to Common Interrogatory No. 9, at least under Continental Circuits’ apparent claim 6 interpretations and to the extent that claim 80 of the'105 patent is not indefinite, Conrod 7 discloses and/or renders obvious "configured to bring about formation of the 8 non-uniformly roughened surface by etching of the epoxy." See id. at claim element 80f. 9 78. Along with the references disclosed in Exhibit C-1 to Defendants’ Responses 10 to Common Interrogatory No. 9, at least under Continental Circuits’ apparent claim 11 interpretations and to the extent that claim 80 of the'105 patent is not indefinite, Conrod 12 discloses and/or renders obvious "at least some of the cavities having a first cross-sectional 13 distance proximate the initial surface and a substantially greater cross-sectional distance 14 distant from the initial surface." See id. at claim element 80g. 15 79. The claims of the'105 patent are invalid for failure to meet the requirements 16 of 35 U.S.C. § 112, at least because certain limitations of the clams of the'105 patent are 17 indefinite and/or lack written description, and further because the specification of the'105 18 patent is insufficient in its description or teachings to enable one of ordinary skill in the art 19 to practice the full scope of the claims. 20 80. Intel is informed and believes, and on that basis alleges, that Continental 21 Circuits contends that the'105 patent, including but not limited to claim 80, is valid and 22 enforceable. 23 81. Accordingly, a valid and justiciable controversy has arisen and exists 24 between Continental Circuits and Intel with respect to the validity of the'105 patent. Intel 25 desires a judicial determination and declaration of the respective rights and duties of the 26 parties herein. Such a determination and declaration is necessary and appropriate at this 27 time so that the parties may ascertain their respective rights and duties. 28-35-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 36 of 43 1 82. Intel is entitled to a declaratory judgment that the claims of the'105 patent 2 are invalid. 3 COUNT VII – NONINFRINGEMENT OF THE'912 PATENT 4 83. Intel repeats and realleges the allegations set forth in Paragraphs 1 through 5 82 of its Counterclaims above, as if set forth fully herein. 6 84. Continental Circuits claims that it owns all rights, title, and interest in and to 7 the'912 patent. (See Dkt. 124, ¶ 19.) Continental Circuits purports to charge Intel with 8 infringement of the'912 patent in its Second Amended Complaint for Patent Infringement. 9 (Id., Count One.) Claim 18 of the'912 patent is the only claim of the'912 patent that is 10 specifically identified as allegedly infringed in the Second Amended Complaint. 11 85. Intel has not infringed and does not infringe, either directly or by 12 inducement, either literally or under the doctrine of equivalents, any claim of the'912 13 patent. In light of Continental Circuits’ Second Amended Complaint for Patent 14 Infringement, there exists an actual controversy between Continental Circuits and Intel 15 regarding this patent. 16 86. Accordingly, a valid and justiciable controversy has arisen and exists 17 between Continental Circuits and Intel with respect to the alleged infringement of the'912 18 patent. Intel desires a judicial determination and declaration of the respective rights and 19 duties of the parties herein. Such a determination and declaration is necessary and 20 appropriate at this time so that the parties may ascertain their respective rights and duties. 21 87. As just one example, with respect to claim 18, which is the only claim of the 22'912 patent specifically identified in the Second Amended Complaint, Intel does not 23 infringe with respect to at least the following limitations. 24 a. "coupling a dielectric material delivered with solid content, the dielectric 25 material and the solid content being non-homogeneous materials, sufficient 26 that etching the dielectric material forms a non-uniformly roughened surface 27 comprising cavities located in, and underneath a surface of, the dielectric 28 material"-36-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 37 of 43 1 b. "coupling a dielectric material delivered with solid content, the dielectric 2 material and the solid content being non-homogeneous materials … 3 sufficient that the etching of the dielectric material uses non-homogeneity 4 with the solid content in bringing about formation of the non-uniformly 5 roughened surface with at least some of the cavities having a first 6 cross-sectional distance proximate the surface and a greater cross-sectional 7 distance distant from the surface" 8 c. "whereby the etching of the dielectric material forms the cavities, and a 9 portion of the conductive material in the cavities thereby forming teeth in the 10 cavities" 11 d. "wherein the etching of the non-homogeneous composition forms the 12 cavities" 13 e. "A product produced by the process of claim 2" 14 88. Intel is entitled to a declaratory judgment that: (a) it has not infringed, and 15 does not infringe the'912 patent, and (b) it has not induced, and does not induce, 16 infringement of the'912 patent. 17 COUNT VIII – INVALIDITY OF THE'912 PATENT 18 89. Intel repeats and realleges the allegations set forth in Paragraphs 1 through 19 88 of its Counterclaims above, as if set forth fully herein. 20 90. Intel contends that the claims of the'912 patent are invalid for failure to 21 comply with the conditions for patentability, including, but not limited to, 35 U.S.C. 22 §§ 102, 103, 112, 116, and/or 256. 23 91. The claims of the'912 patent are invalid for failure to meet the requirements 24 of 35 U.S.C. § 102 because, to the extent the claim terms are not indefinite, prior art existed 25 that fully described each element of these claims, either expressly or inherently, rendering 26 the claims invalid due to anticipation. In addition, to the extent not indefinite, the claims of 27 the'912 patent are invalid for failure to meet the requirements of 35 U.S.C. § 103 because 28 prior art existed that renders the subject matter of these claims obvious to one of ordinary-37-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 38 of 43 1 skill in the art. Examples of such prior art have been identified to Continental Circuits by 2 Defendants in discovery, including by way of example, but not limitation, in response to 3 Common Interrogatory No. 9, including the exhibits attached to Defendants’ Response to 4 Common Interrogatory No. 9, which Intel incorporates by reference. 5 92. As just one example, with respect to claim 18, which is the only claim of the 6'912 patent specifically identified in the Second Amended Complaint, under at least 7 Continental Circuits’ apparent claim interpretations, and to the extent the preamble is 8 limiting and to the extent the claims of the'912 patent are not indefinite, Conrod discloses 9 and/or renders obvious each and every limitation along with the references disclosed in 10 Exhibit D-1 to Defendants’ Responses to Common Interrogatory No. 9. 11 93. Along with the references disclosed in Exhibit D-1 to Defendants’ 12 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 13 claim interpretations and to the extent that claims 2 and 18 of the'912 patent are not 14 indefinite, Conrod discloses and/or renders obvious "a product produced by the process of 15 claim 2." See Exhibit D-1 to Defendants’ Responses to Common Interrogatory No. 9 at 16 claim 18. 17 94. Along with the references disclosed in Exhibit D-1 to Defendants’ 18 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 19 claim interpretations and to the extent that claims 2 and 18 of the'912 patent are not 20 indefinite, Conrod discloses and/or renders obvious "[a] process of making an article of 21 manufacture." See id. at claim element 2p. 22 95. Along with the references disclosed in Exhibit D-1 to Defendants’ 23 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 24 claim interpretations and to the extent that claims 2 and 18 of the'912 patent are not 25 indefinite, Conrod discloses and/or renders obvious "implementing a circuit design for an 26 electrical device." See id. at claim element 2a. 27 96. Along with the references disclosed in Exhibit D-1 to Defendants’ 28 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent-38-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 39 of 43 1 claim interpretations and to the extent that claims 2 and 18 of the'912 patent are not 2 indefinite, Conrod discloses and/or renders obvious "coupling a dielectric material 3 delivered with solid content, the dielectric material and the solid content being 4 non-homogenous materials." See id. at claim element 2b. 5 97. Along with the references disclosed in Exhibit D-1 to Defendants’ 6 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 7 claim interpretations and to the extent that claims 2 and 18 of the'912 patent are not 8 indefinite, Conrod discloses and/or renders obvious "sufficient that etching the dielectric 9 material forms a non-uniformly roughened surface comprising cavities located in, and 10 underneath a surface of, the dielectric material." See id. at claim element 2c. 11 98. Along with the references disclosed in Exhibit D-1 to Defendants’ 12 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 13 claim interpretations and to the extent that claims 2 and 18 of the'912 patent are not 14 indefinite, Conrod discloses and/or renders obvious "sufficient that the etching of the 15 dielectric material uses non-homogeneity with the solid content in bringing about 16 formation of the non-uniformly roughened surface." See id. at claim element 2d. 17 99. Along with the references disclosed in Exhibit D-1 to Defendants’ 18 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 19 claim interpretations and to the extent that claims 2 and 18 of the'912 patent are not 20 indefinite, Conrod discloses and/or renders obvious "with at least some of the cavities 21 having a first cross-sectional distance proximate the surface and a greater cross-sectional 22 distance distant from the surface." See id. at claim element 2e. 23 100. Along with the references disclosed in Exhibit D-1 to Defendants’ 24 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 25 claim interpretations and to the extent that claims 2 and 18 of the'912 patent are not 26 indefinite, Conrod discloses and/or renders obvious "with a conductive material, whereby 27 the etching of the dielectric material forms the cavities, and a portion of the conductive 28 material in the cavities thereby forming teeth in the cavities." See id. at claim element 2f.-39-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 40 of 43 1 101. Along with the references disclosed in Exhibit D-1 to Defendants’ 2 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 3 claim interpretations and to the extent that claims 2 and 18 of the'912 patent are not 4 indefinite, Conrod discloses and/or renders obvious "wherein the etching of the 5 non-homogenous composition forms the cavities." See id. at claim element 2g. 6 102. Along with the references disclosed in Exhibit D-1 to Defendants’ 7 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 8 claim interpretations and to the extent that claims 2 and 18 of the'912 patent are not 9 indefinite, Conrod discloses and/or renders obvious "in circuity of the electrical device." 10 See id. at claim element 2h. 11 103. The claims of the'912 patent are invalid for failure to meet the requirements 12 of 35 U.S.C. § 112, at least because certain limitations of the clams of the'912 patent are 13 indefinite and/or lack written description, and further because the specification of the'912 14 patent is insufficient in its description or teachings to enable one of ordinary skill in the art 15 to practice the full scope of the claims. 16 104. Intel is informed and believes, and on that basis alleges, that Continental 17 Circuits contends that the'912 patent, including but not limited to claim 18, is valid and 18 enforceable. 19 105. Accordingly, a valid and justiciable controversy has arisen and exists 20 between Continental Circuits and Intel with respect to the validity of the'912 patent. Intel 21 desires a judicial determination and declaration of the respective rights and duties of the 22 parties herein. Such a determination and declaration is necessary and appropriate at this 23 time so that the parties may ascertain their respective rights and duties. 24 106. Intel is entitled to a declaratory judgment that the claims of the'912 patent 25 are invalid. 26 DEMAND FOR JURY TRIAL 27 Intel demands a trial by jury as to all issues so triable. 28-40-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 41 of 43 1 PRAYER FOR RELIEF 2 WHEREFORE, Intel respectfully requests that the Court enter judgment in its favor 3 and against Continental Circuits as follows: 4 1. Dismiss Continental Circuits’ Second Amended Complaint in its entirety, 5 with prejudice; 6 2. Declare that Intel has not infringed and does not infringe, either directly, 7 contributorily, or by inducement, either literally or under the doctrine of equivalents, any 8 claims of the Patents-in-Suit; 9 3. Declare that each claim of the Patents-in-Suit is invalid, void, and without 10 any force or effect against Intel; 11 4. Declare this to be an exceptional case under 35 U.S.C. § 285 and award Intel 12 its reasonable attorneys’ fees; 13 5. Award Intel its costs and expenses incurred defending this case, along with 14 interest; and 15 6. Award Intel such other and further relief as the Court deems just and proper. 16 17 DATED: June 30, 2017 Respectfully submitted, 18 By:/s/Chad S. Campbell Chad S. Campbell (State Bar No. 012080) 19 PERKINS COIE LLP 2901 N. Central Avenue, Suite 2000 20 Phoenix, AZ 85012 21 Telephone: (602) 351-8000 Facsimile: (602) 648-7000 22 William F. Lee (pro hac vice) 23 Joseph J. Mueller (pro hac vice) Richard W. O’Neill (pro hac vice) 24 Sarah B. Petty (pro hac vice) Kevin S. Prussia (pro hac vice) 25 WILMER CUTLER PICKERING HALE AND DORR LLP 26 60 State Street 27 Boston, MA 02109 Telephone: (617) 526-6000 28 Facsimile: (617) 526-5000-41-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 42 of 43 1 Nina S. Tallon (pro hac vice) WILMER CUTLER PICKERING HALE 2 AND DORR LLP 1875 Pennsylvania Ave., NW 3 Washington, DC 20006 Telephone: (202) 663-6000 4 Facsimile: (202) 663-6363 5 Attorneys for Defendant Intel Corporation 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28-42-Case 2:16-cv-02026-DGC Document 205 Filed 06/30/17 Page 43 of 43 1 CERTIFICATE OF SERVICE 2 The undersigned certifies that all counsel of record who have consented to 3 electronic service are being served with a copy of the foregoing document via the Court’s 4 CM/ECF system on this 30th day of June, 2017. 5 6/s/Daniel R. Graziano 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28-43-

AMENDED ANSWER to Plaintiff Continental Circuits' Second Amended Complaint {{128}} Amended Complaint, COUNTERCLAIM against Continental Circuits LLC by Ibiden U.S.A. Corporation, Ibiden Company Limited.

Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 1 of 44 1 Chad S. Campbell (State Bar No. 012080) CSCampbell@perkinscoie.com 2 PERKINS COIE LLP 3 2901 N. Central Avenue, Suite 2000 Phoenix, AZ 85012 4 Telephone: (602) 351-8000 Facsimile: (602) 648-7000 5 6 Joseph J. Mueller (pro hac vice) Joseph.Mueller@wilmerhale.com 7 WILMER CUTLER PICKERING HALE AND DORR LLP 8 60 State Street Boston, MA 02109 9 Telephone: (617) 526-6000 Facsimile: (617) 526-5000 10 11 Nina S. Tallon (pro hac vice) Nina.Tallon@wilmerhale.com 12 WILMER CUTLER PICKERING HALE AND DORR LLP 13 1875 Pennsylvania Ave., NW Washington, DC 20006 14 Telephone: (202) 663-6000 Facsimile: (202) 663-6363 15 16 Attorneys for Defendants Ibiden Co., Ltd. and Ibiden U.S.A. Corporation 17 IN THE UNITED STATES DISTRICT COURT 18 19 FOR THE DISTRICT OF ARIZONA 20 Continental Circuits LLC, Case No. CV-16-2026-PHX-DGC 21 Plaintiff, 22 v. DEFENDANTS IBIDEN U.S.A. 23 CORPORATION AND IBIDEN CO., Intel Corporation; LTD.’S AMENDED ANSWER AND 24 Ibiden U.S.A. Corporation; and COUNTERCLAIMS Ibiden Co., Ltd., 25 Defendants. JURY TRIAL DEMANDED 26 27 28 Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 2 of 44 1 Pursuant to Rules 8, 12(a)(4)(A), and 13 of the Federal Rules of Civil Procedure, 2 and in light of the Court’s June 19, 2017 Order dismissing several of Plaintiff Continental 3 Circuits LLC’s ("Continental Circuits") claims with prejudice (Dkt. 196),1 Defendants 4 Ibiden U.S.A. Corporation and Ibiden Co., Ltd., ("Ibiden") answer the allegations of 5 Continental Circuits’ Second Amended Complaint for Patent Infringement ("Complaint") 6 (Dkt. 124) as follows: 7 THE PARTIES2 8 1. Ibiden lacks knowledge or information sufficient to form a belief about the 9 truth of the allegations in Paragraph 1, and therefore denies the same. 10 2. On information and belief, admitted. 11 3. Ibiden admits Paragraph 3. 12 4. Ibiden admits Paragraph 4. 13 JURISDICTION AND VENUE 14 5. Paragraph 5 contains conclusions of law to which no response is required. 15 To the extent a response is required, Ibiden admits that this action purports to arise under 16 the patent laws of the United States, and that this Court has subject matter jurisdiction over 17 actions for patent infringement under 28 U.S.C. §§ 1331 and 1338(a). 18 6. Paragraph 6 contains conclusions of law to which no response is required. 19 To the extent a response is required, on information and belief Ibiden admits that Intel has 20 facilities in the State of Arizona. 21 22 1 The Court dismissed the following claims with prejudice: (1) direct infringement 23 claims against Ibiden (under 35 U.S.C. §§ 271(a) and (g)) as to unnamed products sold to customers other than Intel Corporation ("Intel"); (2) indirect infringement claims related to 24 unnamed Ibiden products intended for customers other than Intel; and (3) willfulness 25 claims against Intel and Ibiden. 2 26 Ibiden has incorporated the headings that appear in Continental Circuits’ Complaint. Ibiden does not necessarily agree with the characterization of such headings 27 and does not waive any right to object to those characterizations. Ibiden denies any allegation in the Complaint not specifically admitted, including any allegations in any 28 headings.-2-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 3 of 44 1 7. On information and belief, Ibiden admits that Intel has facilities within 2 Arizona. As to the remaining allegations, Ibiden lacks knowledge or information sufficient 3 to form a belief about the truth of the allegations in Paragraph 7, and therefore denies the 4 same. 5 8. On information and belief, Ibiden admits that Intel conducts business in the 6 District of Arizona and elsewhere in the United States. As to the remaining allegations, 7 Ibiden lacks knowledge or information sufficient to form a belief about the truth of the 8 allegations in Paragraph 8, and therefore denies the same. 9 9. Ibiden admits that Ibiden USA is a wholly-owned subsidiary of Ibiden Japan 10 and that it has an office located in the State of Arizona at 2727 W. Frye Road, Suite 140, 11 Chandler, Arizona 85224. 12 10. Paragraph 10 contains conclusions of law to which no response is required. 13 To the extent a response is required, Ibiden admits it conducts business in this District. 14 Ibiden denies that it has committed any acts of patent infringement and/or induced any acts 15 of patent infringement by others within the District of Arizona or elsewhere in the United 16 States. Ibiden denies that it has placed infringing products in the stream of commerce with 17 the expectation that such products would be made, used, sold, and/or offered for sale within 18 the District of Arizona or elsewhere. 19 11. Paragraph 11 contains conclusions of law to which no response is required. 20 To the extent a response is required, as to the allegations in paragraph 11 directed to Ibiden, 21 Ibiden denies that it has committed acts of infringement. As to the allegations in paragraph 22 11 directed to Intel, Ibiden lacks knowledge or information sufficient to form a belief about 23 the truth of the allegations in Paragraph 11 and therefore denies the same. 24 PATENTS-IN-SUIT 25 12. Ibiden admits that United States Patent No. 6,141,870 (the "’870 patent") is 26 entitled "Method for Making Electrical Device", that the'870 patent was issued by the 27 United States Patent and Trademark Office on November 7, 2000; and that the named 28-3-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 4 of 44 1 inventors listed on the face of the patent include Mr. Brian J. McDermott. Ibiden denies 2 that the'870 patent is valid or enforceable. 3 13. Ibiden admits that United States Patent No. 6,700,069 (the "’069 patent") is 4 entitled "Circuit Board or Other Multilayer Electrical Device Made by Forming Teeth to 5 Join Layers"; that the'069 patent was issued by the United States Patent and Trademark 6 Office on March 2, 2004; and that the named inventors listed on the face of the patent 7 include Mr. Brian J. McDermott. Ibiden denies that the'069 patent is valid or enforceable. 8 14. Ibiden admits that United States Patent No. 7,501,582 (the "’582 patent") is 9 entitled "Electrical Device and Method for Making Same"; that the'582 patent was issued 10 by the United States Patent and Trademark Office on March 10, 2009; that the named 11 inventors listed on the face of the patent include Mr. Brian J. McDermott; and that an 12 uncertified copy of what purports to be the'582 patent is attached to the Second Amended 13 Complaint as Exhibit A. Ibiden denies that the'582 patent is valid or enforceable. 14 15. Ibiden admits that United States Patent No. 8,278,560 (the "’560 patent") is 15 entitled "Electrical Device with Teeth Joining Layers and Method for Making the Same"; 16 that the'560 patent was issued by the United States Patent and Trademark Office on 17 October 2, 2012; that the named inventors listed on the face of the patent include Mr. Brian 18 J. McDermott; and that an uncertified copy of what purports to be the'560 patent is 19 attached to the Second Amended Complaint as Exhibit B. Ibiden denies that the'560 20 patent is valid or enforceable. 21 16. Ibiden admits that United States Patent No. 8,581,105 (the "’105 patent") is 22 entitled "Electrical Device with Teeth Joining Layers and Method for Making the Same"; 23 that the'105 patent was issued by the United States Patent and Trademark Office on 24 November 12, 2013; that the named inventors listed on the face of the patent include Mr. 25 Brian J. McDermott; and that an uncertified copy of what purports to be the'105 patent is 26 attached to the Second Amended Complaint as Exhibit C. Ibiden denies that the'105 27 patent is valid or enforceable. 28-4-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 5 of 44 1 17. Ibiden admits that U.S. Patent No. 9,374,912 (the "’912 patent") is entitled 2 "Electrical Device with Teeth Joining Layers and Method for Making the Same"; that the 3'912 patent was issued by the United States Patent and Trademark Office on June 21, 2016; 4 that the named inventors listed on the face of the patent include Mr. Brian J. McDermott; 5 and that an uncertified copy of what purports to be the'912 patent is attached to the Second 6 Amended Complaint as Exhibit D. Ibiden denies that the'912 patent is valid or 7 enforceable. 8 18. Ibiden admits that the'870 patent,'069 patent,'582 patent,'560 patent,’105 9 patent, and'912 patent purport to be related through a series of continuation applications. 10 The remaining allegations of Paragraph 18 contain conclusions of law to which no 11 response is required. 12 19. Ibiden lacks knowledge or information sufficient to form a belief as to 13 whether Continental Circuits is the current owner of all rights, title, and interest in the'582, 14'560,'105, and'912 patents (the "Patents-in-Suit"), and therefore denies the same. The 15 remaining allegations of Paragraph 19 contain conclusion of law to which no answer is 16 required. 17 FACTUAL ALLEGATIONS 18 20. Ibiden admits that the abstracts of the'582,'560, and'912 patents state that 19 the patents are directed toward "[a] multilayer electrical device, such as a printed circuit 20 board, having a tooth structure including a metal layer set in a dielectric." The remaining 21 allegations in Paragraph 20 contain conclusions of law to which no response is required. 22 21. Ibiden admits that the figure shown in Paragraph 21 purports to be Figure 1 23 in the'560 patent. The remaining allegations in Paragraph 21 contain conclusions of law 24 to which no response is required. 25 22. Ibiden lacks knowledge or information sufficient to form a belief about the 26 truth of the allegations in Paragraph 22, and therefore denies the same. 27 23. Ibiden lacks knowledge or information sufficient to form a belief about the 28 truth of the remaining allegations in Paragraph 23, and therefore denies the same.-5-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 6 of 44 1 24. Ibiden lacks knowledge or information sufficient to form a belief about the 2 truth of the remaining allegations in Paragraph 24, and therefore denies the same. 3 25. Ibiden lacks knowledge or information sufficient to form a belief about the 4 truth of the remaining allegations in Paragraph 25, and therefore denies the same. 5 26. Ibiden lacks knowledge or information sufficient to form a belief about the 6 truth of the allegations in Paragraph 26, and therefore denies the same. 7 27. Ibiden lacks knowledge or information sufficient to form a belief about the 8 truth of the allegations in Paragraph 27, and therefore denies the same. 9 28. Ibiden admits that Brian McDermott, Daniel McGowan, Ralph Leo Spotts, 10 Jr., and Sid Tryzbiak are listed as co-inventors on the face of the Patents-in-Suit. Ibiden 11 lacks knowledge or information sufficient to form a belief about the truth of the remaining 12 allegations in Paragraph 28, and therefore denies the same. 13 29. Ibiden denies that the co-inventors of the patents in suit "developed a novel 14 surface roughening technique that offered stronger adhesion between these layers." Ibiden 15 lacks knowledge or information sufficient to form a belief about the truth of the remaining 16 allegations in Paragraph 29, and therefore denies the same. 17 30. Ibiden lacks knowledge or information sufficient to form a belief about the 18 truth of the allegations in Paragraph 30, and therefore denies the same. 19 31. Based on its investigation to date, Ibiden denies the allegations in Paragraph 20 31. 21 32. Ibiden lacks knowledge or information sufficient to form a belief about the 22 truth of the allegations in Paragraph 32, and therefore denies the same. 23 33. Based on its investigation to date, Ibiden denies the allegations in Paragraph 24 33. 25 34. Ibiden admits that it was an Intel supplier in the 1990s, and Ibiden continues 26 to be an Intel supplier as of the date of this pleading. 27 35. Ibiden lacks knowledge or information sufficient to form a belief about the 28 truth of the allegations in Paragraph 35, and therefore denies the same.-6-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 7 of 44 1 36. Based on its investigation to date, Ibiden denies the allegations in Paragraph 2 36. 3 37. The allegations contained in Paragraph 37 contain conclusions of law to 4 which no response is required. To the extent a response is required, Ibiden denies the 5 allegations in Paragraph 37. 6 38. Ibiden lacks knowledge or information sufficient to form a belief about the 7 truth of the allegations in Paragraph 38, and therefore denies the same. 8 39. Ibiden lacks knowledge or information sufficient to form a belief about the 9 truth of the allegations in Paragraph 39, and therefore denies the same. 10 40. Ibiden admits that, as of the date of this pleading, the Patents-in-Suit are 11 available from the United States Patent Office website. Ibiden lacks knowledge or 12 information sufficient to form a belief about the truth of the remaining allegations in 13 Paragraph 40. 14 41. Ibiden admits that it has filed for and been granted U.S. patents. Ibiden lacks 15 knowledge or information sufficient to form a belief about the truth of the allegations in 16 Paragraph 41 as they pertain to Intel. 17 42. Ibiden admits that certain of its employees have searched for and identified 18 issued U.S. patents. Ibiden lacks knowledge or information sufficient to form a belief 19 about the truth of the allegations in Paragraph 42 as they pertain to Intel. 20 43. Ibiden denies the allegations in Paragraph 43 as to Ibiden. Ibiden lacks 21 knowledge or information sufficient to form a belief about the truth of allegations in 22 Paragraph 43 as to Intel, and therefore denies the same. 23 44. Ibiden denies the allegations in Paragraph 44 as to Ibiden. Ibiden lacks 24 knowledge or information sufficient to form a belief about the truth of allegations in 25 Paragraph 44 as to Intel, and therefore denies the same. 26 45. Ibiden lacks knowledge or information sufficient to form a belief about the 27 truth of allegations in Paragraph 45, and therefore denies the same. 28 46. Ibiden denies the allegations in Paragraph 46.-7-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 8 of 44 1 47. Ibiden admits that the initial complaint in this action was served on Ibiden on 2 July 15, 2016, and that the complaint alleged infringement of the'582,'560,'105, and'912 3 patents. Based on its ongoing investigation, Ibiden denies that it was aware of the'582, 4'560,'105, and'912 patents at any point before the initial complaint was filed on June 22, 5 2016. Ibiden lacks knowledge or information sufficient to form a belief about the truth of 6 the allegations in Paragraph 47 as they pertain to Intel, and therefore denies the same. 7 48. Ibiden denies the allegations in Paragraph 48. 8 49. Ibiden admits the allegations in Paragraph 49. 9 50. Ibiden admits that it supplies package substrates to Intel. To the extent a 10 further response is required, Ibiden denies all remaining allegations in Paragraph 50. 11 51. Ibiden admits that Exhibit E to the Complaint states that, in March 2016, 12 Ibiden was one of eight companies that received Intel’s Supplier Continuous Quality 13 Improvement award for Ibiden’s performance in 2015. Ibiden further admits that, as of the 14 date of this pleading, Ibiden is Intel’s largest supplier of package substrate by volume. To 15 the extent a further response is required, Ibiden denies all remaining allegations in 16 Paragraph 51. 17 52. Ibiden admits that, in certain circumstances, it works with Intel to develop 18 specifications for the design of packaging used in certain Intel products. To the extent a 19 further response is required, Ibiden denies the remaining allegations in Paragraph 52. 20 53. Ibiden admits that it receives substrate target specification documents from 21 Intel. To the extent Paragraph 53 calls for any further response, Ibiden lacks information or 22 knowledge sufficient to form a belief about the truth of the allegations, and therefore denies 23 the same. 24 54. To the extent Paragraph 54 alleges that Intel requires Ibiden to adopt a 25 specific dielectric material, Ibiden denies the allegation. To the extent Paragraph 54 calls 26 for any further response, Ibiden lacks information or knowledge sufficient to form a belief 27 about the truth of the allegations, and therefore denies the same. 28-8-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 9 of 44 1 55. Ibiden lacks knowledge or information sufficient to form a belief about the 2 truth of the allegations in Paragraph 55. 3 56. Ibiden lacks knowledge or information sufficient to form a belief about the 4 truth of the allegations in Paragraph 56 5 57. Ibiden admits that certain interactions between Ibiden and Intel may, at 6 times, take place in Chandler, Arizona. Ibiden denies all remaining allegations in 7 Paragraph 57. 8 58. Ibiden admits that it roughens the dielectric layers of the package substrates 9 it supplies to Intel. 10 59. Ibiden admits that it has manufacturing lines that include roughening of the 11 dielectric layers of the package substrates it supplies to Intel. Ibiden denies the remaining 12 allegations of Paragraph 59. 13 60. Paragraph 60 contains conclusions of law regarding claim limitations of the 14 Patents-in-Suit to which no response is required. To the extent a response is required, 15 Ibiden denies the allegations in Paragraph 60. 16 61. Ibiden admits that it supplies package substrates to Intel. As for the 17 remaining allegations in Paragraph 61, because, among other things, the allegations are 18 predicated on allegations in Paragraph 59, which Ibiden denies, Ibiden likewise denies the 19 allegations in Paragraph 61. 20 62. Ibiden lacks knowledge or information sufficient to form a belief about the 21 truth of the allegations in Paragraph 62. 22 63. Paragraph 63 contains conclusions of law to which no response is required. 23 To the extent a response is required, Ibiden denies the allegations in Paragraph 63. 24 64. Ibiden lacks knowledge or information sufficient to form a belief about the 25 truth of the allegations in Paragraph 64, and therefore denies the same. 26 65. To the extent the allegations in Paragraph 65 relate to Ibiden package 27 substrates, denied. Ibiden lacks knowledge or information sufficient to form a belief about 28-9-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 10 of 44 1 the truth of the allegations in Paragraph 65 as to non-Ibiden package substrates, and 2 therefore denies the same. 3 66. To the extent the allegations in Paragraph 66 relate to Ibiden package 4 substrates, denied. Ibiden lacks knowledge or information sufficient to form a belief about 5 the truth of the allegations in Paragraph 66 as to non-Ibiden package substrates, and 6 therefore denies the same. 7 67. To the extent the allegations in Paragraph 67 relate to Ibiden package 8 substrates, denied. Ibiden lacks knowledge or information sufficient to form a belief about 9 the truth of the allegations in Paragraph 67 as to non-Ibiden package substrates, and 10 therefore denies the same. 11 68. To the extent the allegations in Paragraph 68 relate to Ibiden package 12 substrates, denied. Ibiden lacks knowledge or information sufficient to form a belief about 13 the truth of the allegations in Paragraph 68 as to non-Ibiden package substrates, and 14 therefore denies the same. 15 69. Ibiden lacks knowledge or information sufficient to form a belief about the 16 truth of the allegations in Paragraph 69, and therefore denies the same. 17 70. To the extent the allegations in Paragraph 70 relate to Ibiden package 18 substrates, denied. Ibiden lacks knowledge or information sufficient to form a belief about 19 the truth of the allegations in Paragraph 70 as to non-Ibiden package substrates, and 20 therefore denies the same. 21 71. To the extent the allegations in Paragraph 71 relate to Ibiden package 22 substrates, denied. Ibiden lacks knowledge or information sufficient to form a belief about 23 the truth of the allegations in Paragraph 71 as to non-Ibiden package substrates, and 24 therefore denies the same. 25 72. To the extent the allegations in Paragraph 72 relate to Ibiden package 26 substrates, denied. Ibiden lacks knowledge or information sufficient to form a belief about 27 the truth of the allegations in Paragraph 72 as to non-Ibiden package substrates, and 28 therefore denies the same.-10-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 11 of 44 1 73. To the extent the allegations in Paragraph 73 relate to Ibiden package 2 substrates, denied. Ibiden lacks knowledge or information sufficient to form a belief about 3 the truth of the allegations in Paragraph 73 as to non-Ibiden package substrates, and 4 therefore denies the same. 5 74. Ibiden lacks knowledge or information sufficient to form a belief about the 6 truth of the allegations in Paragraph 74, and therefore denies the same. 7 75. To the extent the allegations in Paragraph 75 relate to Ibiden package 8 substrates, denied. Ibiden lacks knowledge or information sufficient to form a belief about 9 the truth of the allegations in Paragraph 75 as to non-Ibiden package substrates, and 10 therefore denies the same. 11 76. To the extent the allegations in Paragraph 76 relate to Ibiden package 12 substrates, denied. Ibiden lacks knowledge or information sufficient to form a belief about 13 the truth of the allegations in Paragraph 76 as to non-Ibiden package substrates, and 14 therefore denies the same. 15 77. To the extent the allegations in Paragraph 77 relate to Ibiden package 16 substrates, denied. Ibiden lacks knowledge or information sufficient to form a belief about 17 the truth of the allegations in Paragraph 77 as to non-Ibiden package substrates, and 18 therefore denies the same. 19 78. To the extent the allegations in Paragraph 78 relate to Ibiden package 20 substrates, denied. Ibiden lacks knowledge or information sufficient to form a belief about 21 the truth of the allegations in Paragraph 78 as to non-Ibiden package substrates, and 22 therefore denies the same. 23 79. Ibiden lacks knowledge or information sufficient to form a belief about the 24 truth of the allegations in Paragraph 79, and therefore denies the same. 25 80. To the extent the allegations in Paragraph 80 relate to Ibiden package 26 substrates, denied. Ibiden lacks knowledge or information sufficient to form a belief about 27 the truth of the allegations in Paragraph 80 as to non-Ibiden package substrates, and 28 therefore denies the same.-11-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 12 of 44 1 81. To the extent the allegations in Paragraph 81 relate to Ibiden package 2 substrates, denied. Ibiden lacks knowledge or information sufficient to form a belief about 3 the truth of the allegations in Paragraph 81 as to non-Ibiden package substrates, and 4 therefore denies the same. 5 82. To the extent the allegations in Paragraph 82 relate to Ibiden package 6 substrates, denied. Ibiden lacks knowledge or information sufficient to form a belief about 7 the truth of the allegations in Paragraph 82 as to non-Ibiden package substrates, and 8 therefore denies the same. 9 83. To the extent the allegations in Paragraph 83 relate to Ibiden package 10 substrates, denied. Ibiden lacks knowledge or information sufficient to form a belief about 11 the truth of the allegations in Paragraph 83 as to non-Ibiden package substrates, and 12 therefore denies the same. 13 84. Ibiden lacks knowledge or information sufficient to form a belief about the 14 truth of the allegations in Paragraph 84, and therefore denies the same. 15 85. To the extent the allegations in Paragraph 85 relate to Ibiden package 16 substrates, denied. Ibiden lacks knowledge or information sufficient to form a belief about 17 the truth of the allegations in Paragraph 85 as to non-Ibiden package substrates, and 18 therefore denies the same. 19 86. To the extent the allegations in Paragraph 86 relate to Ibiden package 20 substrates, denied. Ibiden lacks knowledge or information sufficient to form a belief about 21 the truth of the allegations in Paragraph 86 as to non-Ibiden package substrates, and 22 therefore denies the same. 23 87. To the extent the allegations in Paragraph 87 relate to Ibiden package 24 substrates, denied. Ibiden lacks knowledge or information sufficient to form a belief about 25 the truth of the allegations in Paragraph 87 as to non-Ibiden package substrates, and 26 therefore denies the same. 27 88. To the extent the allegations in Paragraph 88 relate to Ibiden package 28 substrates, denied. Ibiden lacks knowledge or information sufficient to form a belief about-12-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 13 of 44 1 the truth of the allegations in Paragraph 88 as to non-Ibiden package substrates, and 2 therefore denies the same. 3 89. Ibiden lacks knowledge or information sufficient to form a belief about the 4 truth of the allegations in Paragraph 89, and therefore denies the same. 5 90. To the extent the allegations in Paragraph 90 relate to Ibiden package 6 substrates, denied. Ibiden lacks knowledge or information sufficient to form a belief about 7 the truth of the allegations in Paragraph 90 as to non-Ibiden package substrates, and 8 therefore denies the same. 9 91. To the extent the allegations in Paragraph 91 relate to Ibiden package 10 substrates, denied. Ibiden lacks knowledge or information sufficient to form a belief about 11 the truth of the allegations in Paragraph 91 as to non-Ibiden package substrates, and 12 therefore denies the same. 13 92. To the extent the allegations in Paragraph 92 relate to Ibiden package 14 substrates, denied. Ibiden lacks knowledge or information sufficient to form a belief about 15 the truth of the allegations in Paragraph 92 as to non-Ibiden package substrates, and 16 therefore denies the same. 17 93. To the extent the allegations in Paragraph 93 relate to Ibiden package 18 substrates, denied. Ibiden lacks knowledge or information sufficient to form a belief about 19 the truth of the allegations in Paragraph 93 as to non-Ibiden package substrates, and 20 therefore denies the same. 21 94. Ibiden lacks knowledge or information sufficient to form a belief about the 22 truth of the allegations in Paragraph 94, and therefore denies the same. 23 95. To the extent the allegations in Paragraph 95 relate to Ibiden package 24 substrates, denied. Ibiden lacks knowledge or information sufficient to form a belief about 25 the truth of the allegations in Paragraph 95 as to non-Ibiden package substrates, and 26 therefore denies the same. 27 96. To the extent the allegations in Paragraph 96 relate to Ibiden package 28 substrates, denied. Ibiden lacks knowledge or information sufficient to form a belief about-13-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 14 of 44 1 the truth of the allegations in Paragraph 96 as to non-Ibiden package substrates, and 2 therefore denies the same. 3 97. To the extent the allegations in Paragraph 97 relate to Ibiden package 4 substrates, denied. Ibiden lacks knowledge or information sufficient to form a belief about 5 the truth of the allegations in Paragraph 97 as to non-Ibiden package substrates, and 6 therefore denies the same. 7 98. To the extent the allegations in Paragraph 98 relate to Ibiden package 8 substrates, denied. Ibiden lacks knowledge or information sufficient to form a belief about 9 the truth of the allegations in Paragraph 98 as to non-Ibiden package substrates, and 10 therefore denies the same. 11 99. Ibiden lacks knowledge or information sufficient to form a belief about the 12 truth of the allegations in Paragraph 99, and therefore denies the same. 13 100. To the extent the allegations in Paragraph 100 relate to Ibiden package 14 substrates, denied. Ibiden lacks knowledge or information sufficient to form a belief about 15 the truth of the allegations in Paragraph 100 as to non-Ibiden package substrates, and 16 therefore denies the same. 17 101. To the extent the allegations in Paragraph 101 relate to Ibiden package 18 substrates, denied. Ibiden lacks knowledge or information sufficient to form a belief about 19 the truth of the allegations in Paragraph 101 as to non-Ibiden package substrates, and 20 therefore denies the same. 21 102. To the extent the allegations in Paragraph 102 relate to Ibiden package 22 substrates, denied. Ibiden lacks knowledge or information sufficient to form a belief about 23 the truth of the allegations in Paragraph 102 as to non-Ibiden package substrates, and 24 therefore denies the same. 25 103. To the extent the allegations in Paragraph 103 relate to Ibiden package 26 substrates, denied. Ibiden lacks knowledge or information sufficient to form a belief about 27 the truth of the allegations in Paragraph 103 as to non-Ibiden package substrates, and 28 therefore denies the same.-14-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 15 of 44 1 104. Ibiden admits that it makes and sells package substrates to Intel but lacks 2 knowledge or information sufficient to identify which package substrates are in which of 3 the identified Intel products. As for the remaining allegations in Paragraph 104, because, 4 among other things, the allegations are predicated on allegations in Paragraph 59, which 5 Ibiden denies, Ibiden likewise denies the allegations in Paragraph 104. 6 105. Ibiden denies the allegations in Paragraph 105. 7 106. Ibiden denies the allegations in Paragraph 106. 8 107. Ibiden denies the allegations in Paragraph 107. 9 108. Ibiden denies the allegations in Paragraph 108. 10 109. Ibiden lacks knowledge or information sufficient to form a belief about the 11 truth of allegations in Paragraph 109, and therefore denies the same. 12 110. Ibiden admits that it sells package substrates to Intel. Ibiden lacks 13 knowledge or information sufficient to identify which package substrates are in which of 14 the identified Intel products. 15 111. Ibiden denies the allegations in Paragraph 111 as they relate to Ibiden or 16 products supplied by Ibiden for Intel or others. 17 112. Ibiden admits that it supplies package substrates to Intel but lacks knowledge 18 or information sufficient to identify which package substrates are in which of the identified 19 Intel products and therefore denies the remaining allegations in Paragraph 112. 20 113. Ibiden admits that Plaintiff has served Ibiden with purported claim charts for 21 claim 83 of the'582 Patent, claim 14 of the'560 Patent, claim 80 of the'105 Patent, and 22 claim 18 of the'912 Patent. Ibiden denies that it has committed any acts of infringement, 23 or that the claim charts show any acts of infringement. 24 114. Paragraph 114 contains conclusions of law regarding claim limitations of the 25 Patents-in-Suit to which no response is required. To the extent a response is required, 26 Ibiden denies the allegations in Paragraph 115. Ibiden lacks knowledge or information 27 sufficient to form a belief about the truth of the allegations related to the image and 28 accompanying caption in Paragraph 114, and therefore denies the same.-15-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 16 of 44 1 115. Paragraph 115 contains conclusions of law regarding claim limitations of the 2 Patents-in-Suit to which no response is required. To the extent a response is required, 3 Ibiden denies the allegations in Paragraph 115. Ibiden lacks knowledge or information 4 sufficient to form a belief about the truth of the allegations related to the image and 5 accompanying caption in Paragraph 115, and therefore denies the same. 6 116. Paragraph 116 contains conclusions of law regarding claim limitations of the 7 Patents-in-Suit to which no response is required. To the extent a response is required, 8 Ibiden denies the allegations in Paragraph 116. 9 117. Paragraph 117 contains conclusions of law regarding claim limitations of the 10 Patents-in-Suit to which no response is required. Ibiden lacks knowledge or information 11 sufficient to form a belief about the truth of the allegations related to the images and 12 accompanying captions in Paragraph 117, and therefore denies the same. 13 118. Ibiden denies the allegations in Paragraph 118. 14 119. Ibiden denies the allegations in Paragraph 119. 15 120. Paragraph 120 contains conclusions of law regarding claim limitations of the 16 Patents-in-Suit to which no response is required. To the extent a response is required 17 Ibiden denies the allegations in Paragraph 120. 18 121. Paragraph 121 contains conclusions of law regarding claim limitations of the 19 Patents-in-Suit to which no response is required. To the extent a response is required, 20 Ibiden denies the allegations in Paragraph 121. 21 122. Paragraph 122 contains conclusions of law regarding claim limitations of the 22 Patents-in-Suit to which no response is required. Ibiden denies the allegations in 23 Paragraph 122 to the extent Continental Circuits is accusing a process or a method. 24 123. Paragraph 123 contains conclusions of law regarding claim limitations of the 25 Patents-in-Suit to which no response is required. To the extent a response is required, 26 Ibiden denies the allegations in Paragraph 123. 27 124. Paragraph 124 contains conclusions of law regarding claim limitations of the 28 Patents-in-Suit to which no response is required. To the extent a response is required,-16-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 17 of 44 1 Ibiden denies the allegations in Paragraph 124. Ibiden lacks knowledge or information 2 sufficient to form a belief about the truth of the allegations related to images and 3 accompanying captions in Paragraph 124, and therefore denies the same. 4 125. Paragraph 125 contains conclusions of law regarding claim limitations of the 5 Patents-in-Suit to which no response is required. To the extent a response is required, 6 Ibiden denies the allegations in Paragraph 125. Ibiden lacks knowledge or information 7 sufficient to form a belief about the truth of the allegations related to the images and 8 accompanying captions in Paragraph 125, and therefore denies the same. 9 126. Paragraph 126 contains conclusions of law regarding claim limitations of the 10 Patents-in-Suit to which no response is required. To the extent a response is required, 11 Ibiden denies the allegations in Paragraph 126. Ibiden lacks knowledge or information 12 sufficient to form a belief about the truth of the allegations related to the images and 13 accompanying captions in Paragraph 126, and therefore denies the same. 14 127. Paragraph 127 contains conclusions of law regarding claim limitations of the 15 Patents-in-Suit to which no response is required. To the extent a response is required, 16 Ibiden denies the allegations in Paragraph 127. 17 128. Ibiden denies the allegations in Paragraph 128. 18 129. Ibiden denies that any Ibiden products are made by the processes claimed in 19 the Patents-in-Suit. Ibiden lacks knowledge or information sufficient to form a belief 20 about the truth of the allegations related to the images and captions in Paragraph 117, 124, 21 125, and 126, and therefore denies the same. Ibiden denies the remaining allegations in 22 Paragraph 129. 23 130. Ibiden lacks knowledge or information sufficient to form a belief as to the 24 truth of the allegations in Paragraph 130, and therefore denies the same. 25 131. The allegations in Paragraph 131 contain conclusions of law to which no 26 response is required. To the extent a response is required, Ibiden denies the allegations in 27 Paragraph 131. 28 132. Ibiden denies the allegations in Paragraph 132.-17-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 18 of 44 1 133. Ibiden denies the allegations in Paragraph 133 as to Ibiden. Ibiden lacks 2 knowledge or information sufficient to form a belief about the truth of the allegations in 3 Paragraph 133 as they relate to Intel. 4 134. Ibiden admits that Continental Circuits has accused products that Ibiden 5 supplies to Intel of infringing the Patents-in-Suit, and that certain questions of fact may 6 arise over the course of this case. 7 COUNT ONE: PATENT INFRINGEMENT BY INTEL 8 135. Ibiden repeats and incorporates its answers to Paragraphs 1 through 134 9 above, as if set forth fully herein. 10 136. Ibiden denies the allegations in Paragraph 136 as to products supplied by 11 Ibiden for Intel. Ibiden lacks knowledge or information sufficient to form a belief about 12 the truth of any broader allegations in Paragraph 136. 13 137. Ibiden denies the allegations in Paragraph 137 as to products supplied by 14 Ibiden for Intel. Ibiden lacks knowledge or information sufficient to form a belief about 15 the truth of any broader allegations in Paragraph 137. 16 138. Ibiden lacks knowledge or information sufficient to form a belief about the 17 truth of any broader allegations in Paragraph 138. 18 139. Ibiden denies the allegations in Paragraph 139 as to products supplied by 19 Ibiden for Intel. Ibiden lacks knowledge or information sufficient to form a belief about 20 the truth of any broader allegations in Paragraph 139. 21 140. Ibiden denies the allegations in Paragraph 140 as to products supplied by 22 Ibiden for Intel. Ibiden lacks knowledge or information sufficient to form a belief about 23 the truth of any broader allegations in Paragraph 140. 24 141. Ibiden denies the allegations in Paragraph 141 as to products supplied by 25 Ibiden for Intel. Ibiden lacks knowledge or information sufficient to form a belief about 26 the truth of any broader allegations in Paragraph 141. 27 142. Ibiden lacks knowledge or information sufficient to form a belief as to the 28 truth of the allegations in Paragraph 142, and therefore denies the same.-18-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 19 of 44 1 143. Ibiden denies the allegations in Paragraph 143 as to products supplied by 2 Ibiden for Intel. Ibiden lacks knowledge or information sufficient to form a belief about 3 the truth of any broader allegations in Paragraph 143. 4 144. Ibiden lacks knowledge or information sufficient to form a belief about the 5 truth of any broader allegations in Paragraph 144. 6 145. Ibiden lacks knowledge or information sufficient to form a belief about the 7 truth of any broader allegations in Paragraph 145. 8 146. Ibiden denies the allegations in Paragraph 146 as to products supplied by 9 Ibiden for Intel. Ibiden lacks knowledge or information sufficient to form a belief about 10 the truth of any broader allegations in Paragraph 146. 11 147. Ibiden lacks knowledge or information sufficient to form a belief about the 12 truth of any broader allegations in Paragraph 147. 13 148. Ibiden lacks knowledge or information sufficient to form a belief about the 14 truth of any broader allegations in Paragraph 148. 15 149. Ibiden lacks knowledge or information sufficient to form a belief about the 16 truth of any broader allegations in Paragraph 149. 17 150. Ibiden lacks knowledge or information sufficient to form a belief about the 18 truth of any broader allegations in Paragraph 150. 19 COUNT TWO: PATENT INFRINGEMENT BY IBIDEN 20 151. Ibiden repeats and incorporates its answers to Paragraphs 1 through 150 21 above, as if set forth fully herein. 22 152. Ibiden denies the allegations in Paragraph 152. 23 153. Ibiden denies the allegations in Paragraph 153. 24 154. Ibiden admits that it sells package substrates to Intel. Ibiden otherwise 25 denies the allegations in Paragraph 154. 26 155. Ibiden denies the allegations in Paragraph 155. 27 156. Ibiden denies the allegations in Paragraph 156. 28 157. Ibiden denies the allegations in Paragraph 157.-19-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 20 of 44 1 158. Ibiden admits that it was served with Continental Circuits’ initial complaint 2 identifying the Patents-in-Suit on July 15, 2016. Ibiden denies the remaining allegations in 3 Paragraph 158. 4 159. Ibiden denies the allegations in Paragraph 159. 5 160. Ibiden denies the allegations in Paragraph 160. 6 161. Ibiden denies the allegations in Paragraph 161. 7 162. Ibiden denies the allegations in Paragraph 162. 8 163. Ibiden denies the allegations in Paragraph 163. 9 164. Ibiden denies the allegations in Paragraph 164. 10 165. Ibiden denies the allegations in Paragraph 165. 11 166. Ibiden denies the allegations in Paragraph 166. 12 167. Ibiden denies the allegations in Paragraph 167. 13 RESPONSE TO CONTINENTAL CIRCUITS’ DEMAND FOR JURY TRIAL 14 Pursuant to Rule 38 of the Federal Rules of Civil Procedure, Ibiden hereby demands 15 a jury for all issues so triable. 16 RESPONSE TO CONTINENTAL CIRCUITS’ PRAYER FOR RELIEF 17 Ibiden denies that it is liable for any relief requested in the Prayer for Relief, 18 including that requested in subparagraphs 1 through 11. Ibiden has not directly, indirectly, 19 contributorily, and/or by inducement, literally and/or by the doctrine of equivalents 20 infringed the Patents-in-Suit. Continental Circuits is not entitled to recover statutory 21 damages, compensatory damages, accounting, injunctive relief, costs, fees, interest, or any 22 other type of recovery from Ibiden. Additionally, Continental Circuits is not entitled to a 23 judgment that Defendants’ alleged infringement has been willful or enhanced damages 24 under 35 U.S.C. § 284 (requested in subparagraphs 5 and 7) based on its willfulness claims, 25 because those claims have been dismissed with prejudice. Continental Circuits’ prayer 26 should therefore be denied in its entirety and with prejudice. Ibiden asks that judgment on 27 Continental Circuits’ claims be entered for Ibiden. 28-20-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 21 of 44 1 AFFIRMATIVE DEFENSES 2 By alleging the Affirmative Defenses below, Ibiden does not agree or concede that 3 it bears the burden of proof or the burden of persuasion on any of these issues, whether in 4 whole or in part. For its Affirmative Defenses to the Complaint, Ibiden alleges as follows: 5 FIRST DEFENSE 6 (Failure to State a Claim) 7 The Complaint fails to state a claim upon which relief can be granted. Ibiden has 8 not performed, does not currently perform, and does not propose to perform, any act in 9 violation of any rights validly belonging to Continental Circuits. 10 SECOND DEFENSE 11 (No Infringement) 12 Continental Circuits is not entitled to any relief against Ibiden because Ibiden has 13 not infringed and is not infringing, either directly, contributorily, or by inducement, either 14 literally, or under the doctrine of equivalents, any valid and enforceable claim of any of the 15 Patents-in-Suit. 16 THIRD DEFENSE 17 (Invalidity) 18 The claims of the Patents-in-Suit are invalid and/or unenforceable for failing to 19 meet one or more of the requisite statutory and decisional requirements and/or conditions 20 for patentability under Title 35 of the United States Code, including, without limitation, 21 §§ 101, 102, 103, 112, 116, and/or 256. 22 FOURTH DEFENSE 23 (Estoppel, Prosecution Laches, Waiver, Acquiescence, Unclean Hands) 24 Continental Circuits’ claims for relief are barred, in whole or in part, under 25 principles of equity, including, but not limited to, estoppel, prosecution laches, waiver, 26 acquiescence, and/or unclean hands. Additionally, Continental Circuits’ claim for 27 equitable relief is barred, in whole or in part, based on, among other things, its delay in 28 bringing suit.-21-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 22 of 44 1 FIFTH DEFENSE 2 (Prosecution History Estoppel and Disclaimer) 3 By reason of proceedings in the United States Patent and Trademark Office during 4 prosecution of the Patents-in-Suit, and specifically statements, arguments, amendments, 5 assertions, and/or representations made by or on behalf of the applicants for the 6 Patents-in-Suit, Continental Circuits is estopped from construing the claims of the 7 Patents-in-Suit in any way to cover any product, method, or service of Ibiden under the 8 doctrine of equivalents. 9 SIXTH DEFENSE 10 (No Double Compensation) 11 The relief sought by Continental Circuits is limited, in whole or in part, by any 12 compensation received or sought by Continental Circuits for its alleged patent rights from 13 parties whose products incorporate any accused Ibiden products. 14 SEVENTH DEFENSE 15 (Limitations on Damages) 16 Continental Circuits’ right to seek damages and other remedies from Ibiden is 17 limited, including, without limitation, by 35 U.S.C. §§ 286 and/or 287. 18 EIGHTH DEFENSE 19 (Limitation on Damages) 20 Continental Circuits’ right to seek damages and other remedies from Ibiden is 21 limited, including, without limitation, by 35 U.S.C. § 285. 22 COUNTERCLAIMS 23 Counterclaim Plaintiffs Ibiden U.S.A. Corporation and Ibiden Co., Ltd. ("Ibiden") 24 allege as follows: 25 PARTIES 26 1. These are counterclaims for declarations of noninfringement and invalidity 27 of one or more claims of U.S. Patent Nos. 7,501,582 ("’582 patent"), 8,278,560 ("’560 28 patent"), 8,581,105 ("’105 patent"), and 9,374,912 ("’912 patent") ("Patents-in-Suit").-22-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 23 of 44 1 2. Counterclaim Plaintiff Ibiden U.S.A. Corporation is a corporation organized 2 and existing under the laws of the State of California, with its principal place of business in 3 Santa Clara, California. 4 3. Counterclaim Plaintiff Ibiden Corporation, Ltd. is a corporation organized 5 and existing under the laws of Japan, with its principal place of business in Ogaki, Japan. 6 4. Counterclaim Defendant Continental Circuits LLC ("Continental Circuits") 7 alleges in its Complaint that it is a limited liability company organized and existing under 8 the laws of the State of Arizona, with its principal place of business at 1 East Washington 9 Street, Suite 590, Phoenix, Arizona 85004. (See Dkt. 124, ¶ 1.) 10 JURISDICTION AND VENUE 11 5. This is an action for declaratory judgment arising under the patent laws of the 12 United States, 35 U.S.C. § 1, et seq., and the Declaratory Judgment Act, 28 U.S.C. 13 §§ 2201-2202. This Court has subject matter jurisdiction over these Counterclaims 14 pursuant to 28 U.S.C. §§ 1331 and 1338(a), in combination with 28 U.S.C. §§ 2201-2202. 15 6. Continental Circuits resides, and has brought suit against Ibiden on the 16 Patents-in-Suit, in this Judicial District. As such, personal jurisdiction and venue in this 17 District are proper under 28 U.S.C. §§ 1391(b) and 1400(b). 18 7. Continental Circuits has sued Ibiden claiming that it is the owner of the 19 Patents-in-Suit and accusing Ibiden of infringing the Patents-in-Suit. Ibiden denies that 20 Continental Circuits has shown that it owns the Patents-in-Suit, that Ibiden infringes any of 21 the Patents-in-Suit, that the Patents-in-Suit are valid, and that the Patents-in-Suit are 22 enforceable against Ibiden. An actual controversy exists under the Declaratory Judgment 23 Act between the parties concerning the ownership, infringement, validity, and 24 enforceability of one or more claims of the Patents-in-Suit, and that controversy is ripe for 25 adjudication by this Court. 26 BACKGROUND 27 8. Package substrates and printed circuit boards were known, made, and used 28 prior to August 4, 1997.-23-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 24 of 44 1 9. Ibiden was making, using, and/or selling package substrates and printed 2 circuit boards prior to August 4, 1997. 3 10. Intel sold products incorporating package substrates and printed circuit 4 boards prior to August 4, 1997. 5 11. The purported technical challenges identified in the Patents-in-Suit related to 6 adhering copper or another conductive material to a dielectric in a printed circuit board or 7 package substrate, (see, e.g.,'582 patent at 1:28-32, 1:50-51), were solved by others in the 8 field prior to August 4, 1997. 9 12. Methods of chemical roughening to improve adhesion between dielectric and 10 conductive layers in multilayer electronic devices such as package substrates and printed 11 circuit boards were known prior to August 4, 1997. (See id. at 1:33-40.) 12 13. Such chemical roughening included oxide-related chemical roughening, 13 such as with a permanganate solution, and was sometimes referred to as a desmear or an 14 etching process. 15 14. Roughening the dielectric layer in a package substrate using a single desmear 16 process (or a single etching process) was known prior to August 4, 1997. (see id. at 17 5:40-42.) 18 15. For example, U.S. Patent No. 5.447,996 to Asai et al. ("Asai") states, "Next 19 step is a treatment of roughening the surface of the adhesive layer formed on the substrate. 20 In this step, when the heat-resistant resin matrix is the thermosetting resin, the adhesive 21 layer of the uncured or semi-cured state (B-stage) formed on the substrate is thermoset into 22 a cured state (C-stage) and thereafter at least a part of the amino resin fine powder 23 dispersed into the surface portion of the adhesive layer is dissolved and removed with acid 24 or oxidizing agent to roughen the surface of the adhesive layer." Asai at 13:19-42. 25 16. Asai was filed on May 24, 1994. 26 17. Roughening the dielectric layer in a package substrate using more than one 27 desmear process (or more than one etching process) was also known prior to August 4, 28 1997.-24-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 25 of 44 1 18. For example, U.S. Patent No. 5,998,237 ("Conrod") described roughening 2 the dielectric layer in a package substrate using more than one desmear when it stated, 3 among other things, that "[a] twice performed permanganate etching process for texturing 4 the dielectric surface is also preferably used to further enhance the copper to dielectric 5 adhesion." Conrod at Abstract. 6 19. Conrod was filed on September 17, 1996. 7 COUNT I – NONINFRINGEMENT OF THE'582 PATENT 8 20. Ibiden repeats and realleges the allegations set forth in Paragraphs 1 through 9 19 of its Counterclaims above, as if set forth fully herein. 10 21. Continental Circuits claims that it owns all rights, title, and interest in and to 11 the'582 patent. (See Dkt. 124, ¶ 19) Continental Circuits purports to charge Ibiden with 12 infringement of the'582 patent in its Second Amended Complaint for Patent Infringement. 13 (Dkt. 124, Count Two.) Claim 83 of the'582 patent is the only claim of the'582 patent that 14 is specifically identified as allegedly infringed in the Second Amended Complaint. 15 22. Ibiden has not been and is not now infringing, either directly, contributorily, 16 or by inducement, either literally or under the doctrine of equivalents, any claim of the'582 17 patent. 18 23. Accordingly, a valid and justiciable controversy has arisen and exists 19 between Continental Circuits and Ibiden with respect to the alleged infringement of the 20'582 patent. Ibiden desires a judicial determination and declaration of the respective rights 21 and duties of the parties herein. Such a determination and declaration is necessary and 22 appropriate at this time so that the parties may ascertain their respective rights and duties. 23 24. As just one example, with respect to claim 83, which is the only claim of the 24'582 patent specifically identified in the Second Amended Complaint, Ibiden does not 25 infringe with respect to at least the following limitations. 26 a. "a dielectric material comprising a surface with cavities remaining from 27 removal of a portion of the dielectric material" 28 b. "a conductive layer built up on the dielectric material so as to fill the cavities-25-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 26 of 44 1 and form teeth set in and under the surface of the dielectric material" 2 c. "the conductive layer is a portion of circuitry of an electrical device" 3 d. "a plurality of the cavities are obtuse with respect to the surface and are at 4 least 1 tenth of a mil deep to 1.75 tenths of a mil deep" 5 e. "at least one of the cavities includes an upgrade slope with respect to the 6 surface of the dielectric material, and one of the teeth engages a portion of 7 the dielectric material at the slope" 8 25. Ibiden is entitled to a declaratory judgment that: (a) it has not infringed, and 9 is not infringing, the'582 patent, (b) it has not contributed to, and is not contributing to, 10 infringement of the'582 patent, and (c) it has not induced, and is not inducing, 11 infringement of the'582 patent. 12 COUNT II – INVALIDITY OF THE'582 PATENT 13 26. Ibiden repeats and realleges the allegations set forth in Paragraphs 1 through 14 26 of its Counterclaims above, as if set forth fully herein. 15 27. Ibiden contends that the claims of the'582 patent, including but not limited 16 to claim 83, are invalid for failure to comply with the conditions for patentability, 17 including, but not limited to, 35 U.S.C. §§ 102, 103, 112, 116, and/or 256. 18 28. The claims of the'582 patent are invalid for failure to meet the requirements 19 of 35 U.S.C. § 102 because, to the extent the claim terms are not indefinite, prior art existed 20 that fully described each element of these claims, either expressly or inherently, rendering 21 the claims invalid due to anticipation. In addition, to the extent not indefinite, the claims of 22 the'582 patent are invalid for failure to meet the requirements of 35 U.S.C. § 103 because 23 prior art existed that renders the subject matter of these claims obvious to one of ordinary 24 skill in the art. Examples of such prior art have been identified to Continental Circuits by 25 Defendants in discovery, including by way of example, but not limitation, in response to 26 Common Interrogatory No. 9, including the exhibits attached to Defendants’ Response to 27 Common Interrogatory No. 9, which Ibiden incorporates by reference. 28 29. As just one example, with respect to claim 83, which is the only claim of the-26-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 27 of 44 1'582 patent specifically identified in the Second Amended Complaint, under at least 2 Continental Circuits’ apparent claim interpretations, and to the extent the preamble is 3 limiting, and to the extent the claims of the'582 patent are not indefinite, Conrod discloses 4 and/or renders obvious each and every limitation along with the references disclosed in 5 Exhibit A-1 to Defendants’ Responses to Common Interrogatory No. 9. 6 30. Along with the references disclosed in Exhibit A-1 to Defendants’ 7 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 8 claim interpretations and to the extent that claim 83 of the'582 patent is not indefinite, 9 Conrod discloses and/or renders obvious "[a]n electrical device." See Exhibit A-1 to 10 Defendants’ Responses to Common Interrogatory No. 9 at claim element 83p. 11 31. Along with the references disclosed in Exhibit A-1 to Defendants’ 12 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 13 claim interpretations and to the extent that claim 83 of the'582 patent is not indefinite, 14 Conrod discloses and/or renders obvious "a dielectric material comprising a surface with 15 cavities remaining from removal of a portion of the dielectric material." See id. at claim 16 element 83a. 17 32. Along with the references disclosed in Exhibit A-1 to Defendants’ 18 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 19 claim interpretations and to the extent that claim 83 of the'582 patent is not indefinite, 20 Conrod discloses and/or renders obvious "a conductive layer built up on the dielectric 21 material so as to fill the cavities and form teeth set in and under the surface of the dielectric 22 material." See id. at claim element 83b. 23 33. Along with the references disclosed in Exhibit A-1 to Defendants’ 24 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 25 claim interpretations and to the extent that claim 83 of the'582 patent is not indefinite, 26 Conrod discloses and/or renders obvious "the conductive layer is a portion of circuitry of 27 an electrical device." See id. at claim element 83c. 28-27-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 28 of 44 1 34. Along with the references disclosed in Exhibit A-1 to Defendants’ 2 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 3 claim interpretations and to the extent that claim 83 of the'582 patent is not indefinite, 4 Conrod discloses and/or renders obvious "a plurality of the cavities are obtuse with respect 5 to the surface and are at least 1 tenth of a mil deep to 1.75 tenths of a mil deep." See id. at 6 claim element 83d. 7 35. Along with the references disclosed in Exhibit A-1 to Defendants’ 8 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 9 claim interpretations and to the extent that claim 83 of the'582 patent is not indefinite, 10 Conrod discloses and/or renders obvious "wherein at least one of the cavities includes an 11 upgrade slope with respect to the surface of the dielectric material, and one of the teeth 12 engages a portion of the dielectric material at the slope." See id. at claim element 83e. 13 36. The claims of the'582 patent are invalid for failure to meet the requirements 14 of 35 U.S.C. § 112, at least because certain limitations of the clams of the'582 patent are 15 indefinite and/or lack written description, and further because the specification of the'582 16 patent is insufficient in its description or teachings to enable one of ordinary skill in the art 17 to practice the full scope of the claims. 18 37. Ibiden is informed and believes, and on that basis alleges, that Continental 19 Circuits contends that the'582 patent is valid and enforceable. 20 38. Accordingly, a valid and justiciable controversy has arisen and exists 21 between Continental Circuits and Ibiden with respect to the validity of the'582 patent. 22 Ibiden desires a judicial determination and declaration of the respective rights and duties of 23 the parties herein. Such a determination and declaration is necessary and appropriate at 24 this time so that the parties may ascertain their respective rights and duties. 25 39. Ibiden is entitled to a declaratory judgment that the claims of the'582 patent 26 are invalid. 27 28-28-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 29 of 44 1 COUNT III – NONINFRINGEMENT OF THE'560 PATENT 2 40. Ibiden repeats and realleges the allegations set forth in Paragraphs 1 through 3 40 of its Counterclaims above, as if set forth fully herein. 4 41. Continental Circuits claims that it owns all rights, title, and interest in and to 5 the'560 patent. (See Dkt. 124, ¶ 19.) Continental Circuits has expressly charged Ibiden 6 with infringement of claim 14 of the'560 patent by filing its Second Amended Complaint 7 for Patent Infringement. (Id., Count Two.) Claim 14 of the'560 patent is the only claim of 8 the'560 patent that is specifically identified as allegedly infringed in the Second Amended 9 Complaint. 10 42. Ibiden has not been and is not now infringing, either directly, contributorily, 11 or by inducement, either literally or under the doctrine of equivalents, any claim of the'560 12 patent. In light of Continental Circuits’ Second Amended Complaint for Patent 13 Infringement, there exists an actual controversy between Continental Circuits and Ibiden 14 regarding this patent. 15 43. Accordingly, a valid and justiciable controversy has arisen and exists 16 between Continental Circuits and Ibiden with respect to the alleged infringement of the 17'560 patent. Ibiden desires a judicial determination and declaration of the respective rights 18 and duties of the parties herein. Such a determination and declaration is necessary and 19 appropriate at this time so that the parties may ascertain their respective rights and duties. 20 44. As just one example, with respect to claim 14, which is the only claim of the 21'560 patent specifically identified in the Second Amended Complaint, Ibiden does not 22 infringe with respect to at least the following limitations. 23 a. "an epoxy dielectric material delivered with solid content sufficient that 24 etching the epoxy forms a non-uniformly roughened surface comprising 25 cavities located in and underneath a surface of the dielectric material" 26 b. "an epoxy dielectric material delivered with solid content … sufficient that 27 the etching of the epoxy uses non-homogeneity with the solid content to 28 bring about formation of the non-uniformly roughened surface with at least-29-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 30 of 44 1 some of the cavities having a first cross-sectional distance proximate the 2 initial surface and a substantially greater cross-sectional distance distant 3 from the initial surface" 4 c. "whereby the etching of the epoxy forms the cavities, and a portion of the 5 conductive material in the cavities thereby forming teeth in the cavities" 6 d. "wherein the etching of the non-homogeneous composition forms the 7 cavities" 8 45. Ibiden is entitled to a declaratory judgment that: (a) it has not infringed, and 9 is not infringing, the'560 patent, (b) it has not contributed to, and is not contributing to, 10 infringement of the'560 patent, and (c) it has not induced, and is not inducing, 11 infringement of the'560 patent. 12 COUNT IV – INVALIDITY OF THE'560 PATENT 13 46. Ibiden repeats and realleges the allegations set forth in Paragraphs 1 through 14 46 of its Counterclaims above, as if set forth fully herein. 15 47. Ibiden contends that the claims of the'560 patent are invalid for failure to 16 comply with the conditions for patentability, including, but not limited to, 35 U.S.C. 17 §§ 102, 103, 112, 116, and/or 256. 18 48. The claims of the'560 patent are invalid for failure to meet the requirements 19 of 35 U.S.C. § 102 because, to the extent the claim terms are not indefinite, prior art existed 20 that fully described each element of these claims, either expressly or inherently, rendering 21 the claims invalid due to anticipation. In addition, to the extent not indefinite, the claims of 22 the'560 patent are invalid for failure to meet the requirements of 35 U.S.C. § 103 because 23 prior art existed that renders the subject matter of these claims obvious to one of ordinary 24 skill in the art. Examples of such prior art have been identified to Continental Circuits by 25 Defendants in discovery, including by way of example, but not limitation, in response to 26 Common Interrogatory No. 9, including the exhibits attached to Defendants’ Response to 27 Common Interrogatory No. 9, which Ibiden incorporates by reference. 28-30-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 31 of 44 1 49. As just one example, with respect to claim 14, which is the only claim of the 2'560 patent specifically identified in the Second Amended Complaint, under at least 3 Continental Circuits’ apparent claim interpretations, and to the extent the preamble is 4 limiting and to the extent the claims of the'560 patent are not indefinite, Conrod discloses 5 and/or renders obvious each and every limitation along with the references disclosed in 6 Exhibit B-1 to Defendants’ Responses to Common Interrogatory No. 9. 7 50. Along with the references disclosed in Exhibit B-1 to Defendants’ Responses 8 to Common Interrogatory No. 9, at least under Continental Circuits’ apparent claim 9 interpretations and to the extent that claim 14 of the'560 patent is not indefinite, Conrod 10 discloses and/or renders obvious "[a]n article of manufacture" See Exhibit B-1 to 11 Defendants’ Responses to Common Interrogatory No. 9 at claim element 14p. 12 51. Along with the references disclosed in Exhibit B-1 to Defendants’ Responses 13 to Common Interrogatory No. 9, at least under Continental Circuits’ apparent claim 14 interpretations and to the extent that claim 14 of the'560 patent is not indefinite, Conrod 15 discloses and/or renders obvious "an epoxy dielectric material delivered with solid 16 content." See id. at claim element 14a. 17 52. Along with the references disclosed in Exhibit B-1 to Defendants’ Responses 18 to Common Interrogatory No. 9, at least under Continental Circuits’ apparent claim 19 interpretations and to the extent that claim 14 of the'560 patent is not indefinite, Conrod 20 discloses and/or renders obvious "sufficient that etching the epoxy forms a non-uniformly 21 roughened surface comprising cavities located in and underneath a surface of the dielectric 22 material...." See id. at claim element 14b. 23 53. Along with the references disclosed in Exhibit B-1 to Defendants’ 24 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 25 claim interpretations and to the extent that claim 14 of the'560 patent is not indefinite, 26 Conrod discloses and/or renders obvious "sufficient that the etching of the epoxy uses 27 non-homogeneity with the solid content to bring about formation of the non-uniformly 28 roughened surface." See id. at claim element 14c.-31-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 32 of 44 1 54. Along with the references disclosed in Exhibit B-1 to Defendants’ Responses 2 to Common Interrogatory No. 9, at least under Continental Circuits’ apparent claim 3 interpretations and to the extent that claim 14 of the'560 patent is not indefinite, Conrod 4 discloses and/or renders obvious "with at least some of the cavities having a first 5 cross-sectional distance proximate the initial surface and a substantially greater 6 cross-sectional distance distant from the initial surface." See id. at claim element 14d. 7 55. Along with the references disclosed in Exhibit B-1 to Defendants’ Responses 8 to Common Interrogatory No. 9, at least under Continental Circuits’ apparent claim 9 interpretations and to the extent that claim 14 of the'560 patent is not indefinite, Conrod 10 discloses and/or renders obvious "a conductive material whereby the etching of the epoxy 11 forms the cavities, and a portion of the conductive material in the cavities thereby forming 12 teeth in the cavities." See id. at claim element 14e. 13 56. Along with the references disclosed in Exhibit B-1 to Defendants’ Responses 14 to Common Interrogatory No. 9, at least under Continental Circuits’ apparent claim 15 interpretations and to the extent that claim 14 of the'560 patent is not indefinite, at least 16 under Continental Circuits’ apparent claim interpretations and to the extent not indefinite, 17 Conrod discloses and/or renders obvious "wherein the etching of the non-homogeneous 18 composition forms the cavities." See id. at claim element 14f. 19 57. Along with the references disclosed in Exhibit B-1 to Defendants’ Responses 20 to Common Interrogatory No. 9, at least under Continental Circuits’ apparent claim 21 interpretations and to the extent that claim 14 of the'560 patent is not indefinite, Conrod 22 discloses and/or renders obvious "wherein the conductive material forms a portion of 23 circuity of an electrical device." See id. at claim element 14g. 24 58. The claims of the'560 patent are invalid for failure to meet the requirements 25 of 35 U.S.C. § 112, at least because certain limitations of the clams of the'560 patent are 26 indefinite and/or lack written description, and further because the specification of the'560 27 patent is insufficient in its description or teachings to enable one of ordinary skill in the art 28 to practice the full scope of the claims.-32-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 33 of 44 1 59. Ibiden is informed and believes, and on that basis alleges, that Continental 2 Circuits contends that the'560 patent is valid and enforceable. 3 60. Accordingly, a valid and justiciable controversy has arisen and exists 4 between Continental Circuits and Ibiden with respect to the validity of the'560 patent. 5 Ibiden desires a judicial determination and declaration of the respective rights and duties of 6 the parties herein. Such a determination and declaration is necessary and appropriate at 7 this time so that the parties may ascertain their respective rights and duties. 8 61. Ibiden is entitled to a declaratory judgment that the claims of the'560 patent 9 are invalid. 10 COUNT V – NONINFRINGEMENT OF THE'105 PATENT 11 62. Ibiden repeats and realleges the allegations set forth in Paragraphs 1 through 12 62 of its Counterclaims above, as if set forth fully herein. 13 63. Continental Circuits claims that it owns all rights, title, and interest in and to 14 the'105 patent. (See Dkt. 124, ¶ 19.) Continental Circuits purports to charge Ibiden with 15 infringement of the'105 patent in its Second Amended Complaint for Patent Infringement. 16 (Id., Count Two.) Claim 80 of the'105 patent is the only claim of the'105 patent that is 17 specifically identified as allegedly infringed in the Second Amended Complaint. 18 64. Ibiden has not been and is not now infringing, either directly, contributorily, 19 or by inducement, either literally or under the doctrine of equivalents, any claim of the'105 20 patent. In light of Continental Circuits’ Second Amended Complaint for Patent 21 Infringement, there exists an actual controversy between Continental Circuits and Ibiden 22 regarding this patent. 23 65. Accordingly, a valid and justiciable controversy has arisen and exists 24 between Continental Circuits and Ibiden with respect to the alleged infringement of the 25'105 patent. Ibiden desires a judicial determination and declaration of the respective rights 26 and duties of the parties herein. Such a determination and declaration is necessary and 27 appropriate at this time so that the parties may ascertain their respective rights and duties. 28-33-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 34 of 44 1 66. As just one example, with respect to claim 80, which is the only claim of the 2'105 patent specifically identified in the Second Amended Complaint, Ibiden does not 3 infringe with respect to at least the following limitations. 4 a. "conductive material being part of the circuitry and configured as angular 5 teeth in filling cavities" 6 b. "the dielectric material comprises a non-uniformly roughened surface 7 comprising cavities located in and underneath an initial surface of the 8 dielectric material delivered with solid content being non-homogeneous and 9 configured to bring about formation of the non-uniformly roughened surface 10 by etching of the epoxy" 11 c. "at least some the cavities having a first cross-sectional distance proximate 12 the initial surface and a substantially greater cross-sectional distance distant 13 from the initial surface" 14 67. Ibiden is entitled to a declaratory judgment that: (a) it has not infringed, and 15 is not infringing, the'105 patent, (b) it has not contributed to, and is not contributing to, 16 infringement of the'105 patent, and (c) it has not induced, and is not inducing, 17 infringement of the'105 patent. 18 COUNT VI – INVALIDITY OF THE'105 PATENT 19 68. Ibiden repeats and realleges the allegations set forth in Paragraphs 1 through 20 68 of its Counterclaims above, as if set forth fully herein. 21 69. Ibiden contends that the claims of the'105 patent are invalid for failure to 22 comply with the conditions for patentability, including, but not limited to, 35 U.S.C. 23 §§ 102, 103, 112, 116, and/or 256. 24 70. The claims of the'105 patent are invalid for failure to meet the requirements 25 of 35 U.S.C. § 102 because, to the extent the claim terms are not indefinite, prior art existed 26 that fully described each element of these claims, either expressly or inherently, rendering 27 the claims invalid due to anticipation. In addition, to the extent not indefinite, the claims of 28 the'105 patent are invalid for failure to meet the requirements of 35 U.S.C. § 103 because-34-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 35 of 44 1 prior art existed that renders the subject matter of these claims obvious to one of ordinary 2 skill in the art. Examples of such prior art have been identified to Continental Circuits by 3 Defendants in discovery, including by way of example, but not limitation, in response to 4 Common Interrogatory No. 9, including the exhibits attached to Defendants’ Response to 5 Common Interrogatory No. 9, which Ibiden incorporates by reference. 6 71. As just one example, with respect to claim 80, which is the only claim of the 7'105 patent specifically identified in the Second Amended Complaint, under at least 8 Continental Circuits’ apparent claim interpretations, and to the extent the preamble is 9 limiting and to the extent the claims of the'105 patent are not indefinite, Conrod discloses 10 and/or renders obvious each and every limitation along with the references disclosed in 11 Exhibit C-1 to Defendants’ Responses to Common Interrogatory No. 9. 12 72. Along with the references disclosed in Exhibit C-1 to Defendants’ Responses 13 to Common Interrogatory No. 9, at least under Continental Circuits’ apparent claim 14 interpretations and to the extent that claim 80 of the'105 patent is not indefinite, Conrod 15 discloses and/or renders obvious "[a]n electrical device." See Exhibit C-1 to Defendants’ 16 Responses to Common Interrogatory No. 9 at claim element 80p. 17 73. Along with the references disclosed in Exhibit C-1 to Defendants’ Responses 18 to Common Interrogatory No. 9, at least under Continental Circuits’ apparent claim 19 interpretations and to the extent that claim 80 of the'105 patent is not indefinite, Conrod 20 discloses and/or renders obvious "circuitry." See id. at claim element 80a. 21 74. Along with the references disclosed in Exhibit C-1 to Defendants’ Responses 22 to Common Interrogatory No. 9, at least under Continental Circuits’ apparent claim 23 interpretations and to the extent that claim 80 of the'105 patent is not indefinite, Conrod 24 discloses and/or renders obvious "conductive material being part of the circuitry and 25 configured as angular teeth in filling cavities." See id. at claim element 80b. 26 75. Along with the references disclosed in Exhibit C-1 to Defendants’ 27 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 28 claim interpretations and to the extent that claim 80 of the'105 patent is not indefinite,-35-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 36 of 44 1 Conrod discloses and/or renders obvious "an epoxy dielectric material disposed in 2 combination with the circuitry and coupled with the conductive material." See id. at claim 3 element 80c. 4 76. Along with the references disclosed in Exhibit C-1 to Defendants’ Responses 5 to Common Interrogatory No. 9, at least under Continental Circuits’ apparent claim 6 interpretations and to the extent that claim 80 of the'105 patent is not indefinite, Conrod 7 discloses and/or renders obvious "in a configuration where the dielectric material 8 comprises a non-uniformly roughened surface comprising cavities located in and 9 underneath an initial surface of the dielectric material." See id. at claim element 80d. 10 77. Along with the references disclosed in Exhibit C-1 to Defendants’ Responses 11 to Common Interrogatory No. 9, at least under Continental Circuits’ apparent claim 12 interpretations and to the extent that claim 80 of the'105 patent is not indefinite, Conrod 13 discloses and/or renders obvious "delivered with solid content being non-homogeneous." 14 See id. at claim element 80e. 15 78. Along with the references disclosed in Exhibit C-1 to Defendants’ Responses 16 to Common Interrogatory No. 9, at least under Continental Circuits’ apparent claim 17 interpretations and to the extent that claim 80 of the'105 patent is not indefinite, Conrod 18 discloses and/or renders obvious "configured to bring about formation of the 19 non-uniformly roughened surface by etching of the epoxy." See id. at claim element 80f. 20 79. Along with the references disclosed in Exhibit C-1 to Defendants’ Responses 21 to Common Interrogatory No. 9, at least under Continental Circuits’ apparent claim 22 interpretations and to the extent that claim 80 of the'105 patent is not indefinite, Conrod 23 discloses and/or renders obvious "configured to bring about formation of the 24 non-uniformly roughened surface by etching of the epoxy." See id. at claim element 80g. 25 80. The claims of the'105 patent are invalid for failure to meet the requirements 26 of 35 U.S.C. § 112, at least because certain limitations of the clams of the'105 patent are 27 indefinite and/or lack written description, and further because the specification of the'105 28-36-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 37 of 44 1 patent is insufficient in its description or teachings to enable one of ordinary skill in the art 2 to practice the full scope of the claims. 3 81. Ibiden is informed and believes, and on that basis alleges, that Continental 4 Circuits contends that the'105 patent is valid and enforceable. 5 82. Accordingly, a valid and justiciable controversy has arisen and exists 6 between Continental Circuits and Ibiden with respect to the validity of the'105 patent. 7 Ibiden desires a judicial determination and declaration of the respective rights and duties of 8 the parties herein. Such a determination and declaration is necessary and appropriate at 9 this time so that the parties may ascertain their respective rights and duties. 10 83. Ibiden is entitled to a declaratory judgment that the claims of the'105 patent 11 are invalid. 12 COUNT VII – NONINFRINGEMENT OF THE'912 PATENT 13 84. Ibiden repeats and realleges the allegations set forth in Paragraphs 1 through 14 84 of its Counterclaims above, as if set forth fully herein. 15 85. Continental Circuits claims that it owns all rights, title, and interest in and to 16 the'912 patent. (See Dkt. 124, ¶ 19.) Continental Circuits purports to charge Ibiden with 17 infringement of the'912 patent in its Second Amended Complaint for Patent Infringement. 18 (Id., Count Two.) Claim 18 of the'912 patent is the only claim of the'912 patent that is 19 specifically identified as allegedly infringed in the Second Amended Complaint. 20 86. Ibiden has not been and is not now infringing, either directly, contributorily, 21 or by inducement, either literally or under the doctrine of equivalents, any claim of the'912 22 patent. In light of Continental Circuits’ Complaint for Patent Infringement, there exists an 23 actual controversy between Continental Circuits and Ibiden regarding this patent. 24 87. Accordingly, a valid and justiciable controversy has arisen and exists 25 between Continental Circuits and Ibiden with respect to the alleged infringement of the 26'912 patent. Ibiden desires a judicial determination and declaration of the respective rights 27 and duties of the parties herein. Such a determination and declaration is necessary and 28 appropriate at this time so that the parties may ascertain their respective rights and duties.-37-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 38 of 44 1 88. As just one example, with respect to claim 18, which is the only claim of the 2'912 patent specifically identified in the Second Amended Complaint, Ibiden does not 3 infringe with respect to at least the following limitations. 4 a. "coupling a dielectric material delivered with solid content, the dielectric 5 material and the solid content being non-homogeneous materials, sufficient 6 that etching the dielectric material forms a non-uniformly roughened surface 7 comprising cavities located in, and underneath a surface of, the dielectric 8 material" 9 b. "coupling a dielectric material delivered with solid content, the dielectric 10 material and the solid content being non-homogeneous materials … 11 sufficient that the etching of the dielectric material uses non-homogeneity 12 with the solid content in bringing about formation of the non-uniformly 13 roughened surface with at least some of the cavities having a first 14 cross-sectional distance proximate the surface and a greater cross-sectional 15 distance distant from the surface" 16 c. "whereby the etching of the dielectric material forms the cavities, and a 17 portion of the conductive material in the cavities thereby forming teeth in the 18 cavities" 19 d. "wherein the etching of the non-homogeneous composition forms the 20 cavities" 21 e. "A product produced by the process of claim 2" 22 89. Ibiden is entitled to a declaratory judgment that: (a) it has not infringed, and 23 is not infringing, the'912 patent, (b) it has not contributed to, and is not contributing to, 24 infringement of the'912 patent, and (c) it has not induced, and is not inducing, 25 infringement of the'912 patent. 26 COUNT VIII – INVALIDITY OF THE'912 PATENT 27 90. Ibiden repeats and realleges the allegations set forth in Paragraphs 1 through 28 90 of its Counterclaims above, as if set forth fully herein.-38-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 39 of 44 1 91. Ibiden contends that the claims of the'912 patent are invalid for failure to 2 comply with the conditions for patentability, including, but not limited to, 35 U.S.C. 3 §§ 102, 103, 112, 116, and/or 256. 4 92. The claims of the'912 patent are invalid for failure to meet the requirements 5 of 35 U.S.C. § 102 because, to the extent the claim terms are not indefinite, prior art existed 6 that fully described each element of these claims, either expressly or inherently, rendering 7 the claims invalid due to anticipation. In addition, to the extent not indefinite, the claims of 8 the'912 patent are invalid for failure to meet the requirements of 35 U.S.C. § 103 because 9 prior art existed that renders the subject matter of these claims obvious to one of ordinary 10 skill in the art. Examples of such prior art have been identified to Continental Circuits by 11 Defendants in discovery, including by way of example, but not limitation, in response to 12 Common Interrogatory No. 9, including the exhibits attached to Defendants’ Response to 13 Common Interrogatory No. 9, which Ibiden incorporates by reference. 14 93. As just one example, with respect to claim 18, which is the only claim of the 15'912 patent specifically identified in the Second Amended Complaint, under at least 16 Continental Circuits’ apparent claim interpretations, and to the extent the preamble is 17 limiting and to the extent the claims of the'912 patent are not indefinite, Conrod discloses 18 and/or renders obvious each and every limitation along with the references disclosed in 19 Exhibit D-1 to Defendants’ Responses to Common Interrogatory No. 9. 20 94. Along with the references disclosed in Exhibit D-1 to Defendants’ 21 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 22 claim interpretations and to the extent that claims 2 and 18 of the'912 patent are not 23 indefinite, Conrod discloses and/or renders obvious "a product produced by the process of 24 claim 2." See Exhibit D-1 to Defendants’ Responses to Common Interrogatory No. 9 at 25 claim 18. 26 95. Along with the references disclosed in Exhibit D-1 to Defendants’ 27 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 28 claim interpretations and to the extent that claims 2 and 18 of the'912 patent are not-39-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 40 of 44 1 indefinite, Conrod discloses and/or renders obvious "a dielectric material comprising a 2 surface with cavities remaining from removal of a portion of the dielectric material." See 3 id. at claim element 83a. 4 96. Along with the references disclosed in Exhibit D-1 to Defendants’ 5 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 6 claim interpretations and to the extent that claims 2 and 18 of the'912 patent are not 7 indefinite, Conrod discloses and/or renders obvious "[a] process of making an article of 8 manufacture" See id. at claim element 2p. 9 97. Along with the references disclosed in Exhibit D-1 to Defendants’ 10 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 11 claim interpretations and to the extent not indefinite, Conrod discloses and/or renders 12 obvious "implementing a circuit design for an electrical device by" See id. at claim 13 element 2a. 14 98. Along with the references disclosed in Exhibit D-1 to Defendants’ 15 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 16 claim interpretations and to the extent that claims 2 and 18 of the'912 patent are not 17 indefinite, Conrod discloses and/or renders obvious "coupling a dielectric material 18 delivered with solid content, the dielectric material and the solid content being 19 non-homogenous materials." See id. at claim element 2b. 20 99. Along with the references disclosed in Exhibit D-1 to Defendants’ 21 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 22 claim interpretations and to the extent that claims 2 and 18 of the'912 patent are not 23 indefinite, Conrod discloses and/or renders obvious "sufficient that etching the dielectric 24 materials forms a non-uniformly roughened surface comprising cavities located in, and 25 underneath a surface of, the dielectric material." See id. at claim element 2c. 26 100. Along with the references disclosed in Exhibit D-1 to Defendants’ 27 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 28 claim interpretations and to the extent that claims 2 and 18 of the'912 patent are not-40-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 41 of 44 1 indefinite, Conrod discloses and/or renders obvious "sufficient that the etching of the 2 dielectric materials uses non-homogeneity with the solid content in bringing about 3 formation of the non-uniformly roughened surface." See id. at claim element 2d. 4 101. Along with the references disclosed in Exhibit D-1 to Defendants’ 5 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 6 claim interpretations and to the extent that claims 2 and 18 of the'912 patent are not 7 indefinite, Conrod discloses and/or renders obvious "with at least some of the cavities 8 having a first cross-sectional distance proximate the surface and a greater cross-sectional 9 distance distant from the surface." See id. at claim element 2e. 10 102. Along with the references disclosed in Exhibit D-1 to Defendants’ 11 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 12 claim interpretations and to the extent that claims 2 and 18 of the'912 patent are not 13 indefinite, Conrod discloses and/or renders obvious "with a conductive material, whereby 14 the etching of the dielectric material forms the cavities, and a portion of the conductive 15 material in the cavities thereby forming teeth in the cavities." See id. at claim element 2f. 16 103. Along with the references disclosed in Exhibit D-1 to Defendants’ 17 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 18 claim interpretations and to the extent that claims 2 and 18 of the'912 patent are not 19 indefinite, Conrod discloses and/or renders obvious "wherein the etching of the 20 non-homogenous composition forms the cavities." See id. at claim element 2g. 21 104. Along with the references disclosed in Exhibit D-1 to Defendants’ 22 Responses to Common Interrogatory No. 9, at least under Continental Circuits’ apparent 23 claim interpretations and to the extent that claims 2 and 18 of the'912 patent are not 24 indefinite, Conrod discloses and/or renders obvious "in circuity of the electrical device." 25 See id. at claim element 2h. 26 105. The claims of the'912 patent are invalid for failure to meet the requirements 27 of 35 U.S.C. § 112, at least because certain limitations of the clams of the'912 patent are 28 indefinite and/or lack written description, and further because the specification of the'912-41-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 42 of 44 1 patent is insufficient in its description or teachings to enable one of ordinary skill in the art 2 to practice the full scope of the claims. 3 106. Ibiden is informed and believes, and on that basis alleges, that Continental 4 Circuits contends that the'912 patent is valid and enforceable. 5 107. Accordingly, a valid and justiciable controversy has arisen and exists 6 between Continental Circuits and Ibiden with respect to the validity of the'912 patent. 7 Ibiden desires a judicial determination and declaration of the respective rights and duties of 8 the parties herein. Such a determination and declaration is necessary and appropriate at 9 this time so that the parties may ascertain their respective rights and duties. 10 108. Ibiden is entitled to a declaratory judgment that the claims of the'912 patent 11 are invalid. 12 DEMAND FOR JURY TRIAL 13 Ibiden demands a trial by jury as to all issues so triable. 14 PRAYER FOR RELIEF 15 WHEREFORE, Ibiden respectfully requests that the Court enter judgment in its 16 favor and against Continental Circuits as follows: 17 1. Dismiss Continental Circuits’ Second Amended Complaint in its entirety, 18 with prejudice; 19 2. Declare that Ibiden has not been and is not now infringing, either directly, 20 contributorily, or by inducement, either literally or under the doctrine of equivalents, any 21 claims of the Patents-in-Suit; 22 3. Declare that each claim of the Patents-in-Suit is invalid, void, and without 23 any force or effect against Ibiden; 24 4. Declare this to be an exceptional case under 35 U.S.C. § 285 and award 25 Ibiden its reasonable attorneys’ fees; 26 5. Award Ibiden its costs and expenses incurred defending this case, along with 27 interest; and 28-42-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 43 of 44 1 6. Award Ibiden such other and further relief as the Court deems just and 2 proper. 3 4 DATED: June 30, 2017 Respectfully submitted, 5 By:/s/Chad S. Campbell 6 Chad S. Campbell (State Bar No. 012080) 7 PERKINS COIE LLP 8 2901 N. Central Avenue, Suite 2000 Phoenix, AZ 85012 9 Telephone: (602) 351-8000 10 Facsimile: (602) 648-7000 11 William F. Lee (pro hac vice) Joseph J. Mueller (pro hac vice) 12 Richard W. O’Neill (pro hac vice) 13 Sarah B. Petty (pro hac vice) Kevin S. Prussia (pro hac vice) 14 WILMER CUTLER PICKERING HALE 15 AND DORR LLP 60 State Street 16 Boston, MA 02109 Telephone: (617) 526-6000 17 Facsimile: (617) 526-5000 18 Nina S. Tallon (pro hac vice) 19 WILMER CUTLER PICKERING HALE 20 AND DORR LLP 1875 Pennsylvania Ave., NW 21 Washington, DC 20006 Telephone: (202) 663-6000 22 Facsimile: (202) 663-6363 23 Attorneys for Defendants Ibiden Co., Ltd. 24 and Ibiden U.S.A. Corporation 25 26 27 28-43-Case 2:16-cv-02026-DGC Document 206 Filed 06/30/17 Page 44 of 44 1 CERTIFICATE OF SERVICE 2 The undersigned certifies that all counsel of record who have consented to 3 electronic service are being served with a copy of the foregoing document via the Court’s 4 CM/ECF system on this 30th day of June, 2017. 5/s/Daniel R. Graziano 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28-44-

MINUTE ORDER: Supplemental Request for Copyright, Trademark, or Patent Information. This case has been designated as a copyright, trademark, or patent case. An answer, amended complaint, or other pleading {{205}} and {{206}} have been filed that may include additional trademarks, patents, or copyrights allegedly violated that were not previously included. Attached to this docket entry are the required form(s) that may need to be completed by the party who filed the above document.</br></br>If your recently filed pleading adds or changes information related to the original patents, trademarks, or copyright allegations, please complete the form that is applicable to this particular case. In some cases, you may need to complete both forms. Within seven (7) days, you must submit the required form(s) to the Clerk's Office. Please complete the form and file it with the Court using the specific event: Notice of Filing - Copyright, Trademark or Patent Information, found under the Other Filings header. Please DO NOT mail the form directly to the Patent or Copyright Office. The Clerk's Office will submit the form.</br></br>If there are no changes to the copyright, trademark, or patent information previously submitted for this case, then the party who filed the above document must file a Notice, within seven (7) days, indicating such using the specific event:Notice of Filing - Copyright, Trademark or Patent Information, found under the Other Filings header.

Case 2:16-cv-02026-DGC Document 207 Filed 07/03/17 Page 1 of 2 AO 120 (Rev. 08/10) Mail Stop 8 REPORT ON THE TO: Director of the U.S. Patent and Trademark Office FILING OR DETERMINATION OF AN P.O. Box 1450 ACTION REGARDING A PATENT OR Alexandria, VA 22313-1450 TRADEMARK In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been filed in the U.S. District Court of Arizona on the following G Trademarks or G Patents. (G the patent action involves 35 U.S.C. § 292.): DOCKET NO. DATE FILED U.S. DISTRICT COURT of Arizona PLAINTIFF DEFENDANT PATENT OR DATE OF PATENT HOLDER OF PATENT OR TRADEMARK TRADEMARK NO. OR TRADEMARK 1 2 3 4 5 In the above—entitled case, the following patent(s)/trademark(s) have been included: DATE INCLUDED INCLUDED BY G Amendment G Answer G Cross Bill G Other Pleading PATENT OR DATE OF PATENT HOLDER OF PATENT OR TRADEMARK TRADEMARK NO. OR TRADEMARK 1 2 3 4 5 In the above—entitled case, the following decision has been rendered or judgement issued: DECISION/JUDGEMENT CLERK (BY) DEPUTY CLERK DATE Brian D. Karth Copy 1—Upon initiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director Copy 2—Upon filing document adding patent(s), mail this copy to Director Copy 4—Case file copy Print Save As... Reset Case 2:16-cv-02026-DGC Document 207 Filed 07/03/17 Page 2 of 2 O AO 121 (6/90) TO: Register of Copyrights REPORT ON THE Copyright Office FILING OR DETERMINATION OF AN Library of Congress ACTION OR APPEAL Washington, D.C. 20559 REGARDING A COPYRIGHT In compliance with the provisions of 17 U.S.C. 508, you are hereby advised that a court action or appeal has been filed on the following copyright(s): COURT NAME AND LOCATION G ACTION G APPEAL DOCKET NO. DATE FILED of Arizona PLAINTIFF DEFENDANT COPYRIGHT TITLE OF WORK AUTHOR OR WORK REGISTRATION NO. 1 2 3 4 5 In the above-entitled case, the following copyright(s) have been included: DATE INCLUDED INCLUDED BY G Amendment G Answer G Cross Bill G Other Pleading COPYRIGHT TITLE OF WORK AUTHOR OF WORK REGISTRATION NO. 1 2 3. In the above-entitled case, a final decision was rendered on the date entered below. A copy of the order or judgment together with the written opinion, if any, of the court is attached. COPY ATTACHED WRITTEN OPINION ATTACHED DATE RENDERED G Order G Judgment G Yes G No CLERK (BY) DEPUTY CLERK DATE Brian D. Karth 1) Upon initiation of action, 2) Upon filing of document adding copyright(s), 3) Upon termination of action, mail copy to Register of Copyrights mail copy to Register of Copyrights mail copy to Register of Copyrights DISTRIBUTION: 4) In the event of an appeal, forward copy to Appellate Court 5) Case File Copy Print Save As... Reset

STIPULATION (Joint Stipulation Regarding Proposed Format for Claim Construction Hearing) by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.

Case 2:16-cv-02026-DGC Document 212 Filed 07/12/17 Page 1 of 4 1 Joseph A. Schenk (State Bar No. 009260) Chad S. Campbell (State Bar No. 012080) AIKEN SCHENK HAWKINS & CSCampbell@perkinscoie.com 2 RICCIARDI P.C. PERKINS COIE LLP 3 2390 East Camelback Road, Suite 400 2901 N. Central Avenue, Suite 2000 Phoenix, AZ 85016 Phoenix, AZ 85012 4 Telephone: (602) 248-8203 Telephone: (602) 351-8000 Facsimile: (602) 248-8840 Facsimile: (602) 648-7000 5 E-Mail: docket@ashrlaw.com 6 E-Mail: jas@ashrlaw.com William F. Lee (pro hac vice) William.Lee@wilmerhale.com 7 Bradley W. Caldwell (pro hac vice) Joseph J. Mueller (pro hac vice) Jason D. Cassady (pro hac vice) Joseph.Mueller@wilmerhale.com 8 J. Austin Curry (pro hac vice) WILMER CUTLER PICKERING HALE 9 Warren J. McCarty (pro hac vice) AND DORR LLP CALDWELL CASSADY CURRY P.C. 60 State Street 10 2101 Cedar Springs Road, Suite 1000 Boston, MA 02109 11 Dallas, TX 75201 Telephone: (617) 526-6000 Telephone: (214) 888-4848 Facsimile: (617) 526-5000 12 Facsimile: (214) 888-4849 Attorneys for Defendants Intel 13 Attorneys for Plaintiff Continental Circuits, Corporation, USA Ibiden Co., Ltd., and Ibiden Corporation LLC 14 15 UNITED STATES DISTRICT COURT 16 FOR THE DISTRICT OF ARIZONA 17 Continental Circuits LLC, 18 Case No. CV-16-2026-PHX-DGC Plaintiff, 19 JOINT STIPULATION vs. REGARDING PROPOSED 20 FORMAT FOR CLAIM Intel Corporation; CONSTRUCTION HEARING 21 Ibiden U.S.A. Corporation; and Ibiden Co., Ltd., 22 Defendants. 23 24 The parties have conferred regarding a format for the upcoming claim construction 25 hearing scheduled for August 4, 2017, and jointly propose the following: 26 1. The hearing will start with each side presenting a short (up to 30 minutes for 27 each side) tutorial on the technology. Plaintiff will present first followed by 28 Defendants.-1-JOINT STIPULATION REGARDING PROPOSED FORMAT FOR CLAIM CONSTRUCTION HEARING Case No. CV-16-2026-PHX-DGC Case 2:16-cv-02026-DGC Document 212 Filed 07/12/17 Page 2 of 4 1 2. The parties will then present argument and address questions from the Court 2 on the disputed terms, with the sides alternating for each disputed term in 3 the order set forth in the Joint Claim Construction Statement (Dkt. 177). 4 Plaintiff will present argument first for each disputed term, followed by 5 Defendants, followed (as necessary) with short rebuttal arguments by both 6 sides. 7 3. The parties agree that all presentations will be made by counsel, and that 8 experts will not present or testify live during the hearing. 9 4. Subject to the Court’s availability, the parties anticipate that the hearing will 10 proceed for a total of up to four hours. The parties will endeavor to make 11 the hearing as efficient as possible, but given the number of issues, the 12 parties respectfully request that the Court reserve four hours. 13 * * * 14 WHEREFORE: Subject to the Court’s preferences, the parties respectfully request 15 that the August 4, 2017 hearing on claim construction proceed as stipulated above. 16 17 Dated: July 12, 2017 18 Respectfully submitted, 19 By s/Bradley W. Caldwell By s/Joseph J. Mueller 20 21 Bradley W. Caldwell (pro hac vice) Chad S. Campbell (SBN 012080) Jason D. Cassady (pro hac vice) CSCampbell@perkinscoie.com 22 J. Austin Curry (pro hac vice) PERKINS COIE LLP 23 Warren J. McCarty (pro hac vice) 2901 N. Central Avenue, Suite 2000 CALDWELL CASSADY CURRY P.C. Phoenix, AZ 85012 24 2101 Cedar Springs Rd., Suite 1000 Telephone: (602) 351-8000 Dallas, TX 75201 Facsimile: (602) 648-7000 25 Telephone: (214) 888-4848 26 Facsimile: (214) 888-4849 William F. Lee (pro hac vice) Email: bcaldwell@caldwellcc.com William.Lee@wilmerhale.com 27 Email: jcassady@caldwellcc.com Joseph J. Mueller (pro hac vice) 28 Email: acurry@caldwellcc.com Joseph.Mueller@wilmerhale.com-2-JOINT STIPULATION REGARDING PROPOSED FORMAT FOR CLAIM CONSTRUCTION HEARING Case No. CV-16-2026-PHX-DGC Case 2:16-cv-02026-DGC Document 212 Filed 07/12/17 Page 3 of 4 1 Email: wmccarty@caldwellcc.com WILMER CUTLER PICKERING HALE AND DORR LLP 2 Joseph A. Schenk (SBN 009260) 60 State Street 3 AIKEN SCHENK HAWKINS & Boston, MA 02109 RICCIARDI P.C. Telephone: (617) 526-6000 4 2390 East Camelback Road, Suite 400 Facsimile: (617) 526-5000 5 Phoenix, Arizona 85016 Telephone: (602) 248-8203 Nina S. Tallon (pro hac vice) 6 Facsimile: (602) 248-8840 Nina.Tallon@wilmerhale.com E-Mail: docket@ashrlaw.com WILMER CUTLER PICKERING HALE AND 7 E-Mail: jas@ashrlaw.com DORR LLP 8 1875 Pennsylvania Ave. NW ATTORNEYS FOR PLAINTIFF Washington, DC 20006 9 CONTINENTAL CIRCUITS, LLC Telephone: (202) 663-6000 10 Facsimile: (202) 663-6363 11 ATTORNEYS FOR DEFENDANT INTEL CORPORATION AND IBIDEN DEFENDANTS 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28-3-JOINT STIPULATION REGARDING PROPOSED FORMAT FOR CLAIM CONSTRUCTION HEARING Case No. CV-16-2026-PHX-DGC Case 2:16-cv-02026-DGC Document 212 Filed 07/12/17 Page 4 of 4 1 CERTIFICATE OF SERVICE 2 I certify that on the 12th day of July, 2017, I electronically transmitted the 3 foregoing document to the Clerk’s Office using the CM/ECF System for filing and 4 transmittal of a Notice of Electronic Filing to all CM/ECF registrants of record in this 5 matter. 6 s/Daniel R. Graziano 7 20336-1936/136190299.1 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28-4-JOINT STIPULATION REGARDING PROPOSED FORMAT FOR CLAIM CONSTRUCTION HEARING Case No. CV-16-2026-PHX-DGC

ANSWER to {{205}} Amended Answer to Complaint, Counterclaim by Continental Circuits LLC.

Case 2:16-cv-02026-DGC Document 213 Filed 07/14/17 Page 1 of 8 1 AIKEN SCHENK HAWKINS & RICCIARDI P.C. 2390 East Camelback Road, Suite 400 2 Phoenix, Arizona 85016 Telephone: (602) 248-8203 3 Facsimile: (602) 248-8840 E-Mail: docket@ashrlaw.com 4 E-Mail: jas@ashrlaw.com Joseph A. Schenk – 009260 5 Bradley W. Caldwell (pro hac vice) 6 Jason D. Cassady (pro hac vice) J. Austin Curry (pro hac vice) 7 Warren J. McCarty (pro hac vice) CALDWELL CASSADY CURRY P.C. 8 2101 Cedar Springs Rd., Suite 1000 Dallas, Texas 75201 9 Telephone: (214) 888-4848 Facsimile: (214) 888-4849 10 Email: bcaldwell@caldwellcc.com Email: jcassady@caldwellcc.com 11 Email: acurry@caldwellcc.com Email: wmccarty@caldwellcc.com 12 Attorneys for Plaintiff Continental Circuits, LLC 13 14 IN THE UNITED STATES DISTRICT COURT 15 FOR THE DISTRICT OF ARIZONA 16 Continental Circuits LLC, CASE NO. CV-16-2026-PHX-DGC 17 Plaintiff, CONTINENTAL CIRCUITS LLC’S 18 v. ANSWER TO INTEL CORPORATION’S AMENDED 19 Intel Corp., Ibiden U.S.A. COUNTERCLAIMS Corp., Ibiden Co., Ltd., 20 Defendants. 21 22 23 24 25 26 27 28 29 Case 2:16-cv-02026-DGC Document 213 Filed 07/14/17 Page 2 of 8 1 Continental Circuits LLC ("Continental") files this Answer to Defendant Intel 2 Corp.’s ("Intel") Amended Counterclaims (Dkt. 205) ("Counterclaims") and in support 3 thereof would respectfully show the Court the following: 4 COUNTERCLAIMS 5 PARTIES 6 1. Continental lacks knowledge or information sufficient to form a belief about 7 the truth of the allegations in Paragraph 1, and therefore denies the same. 8 2. On information and belief, admitted. 9 3. Admitted. 10 JURISDICTION AND VENUE 11 4. Continental admits that the Counterclaims purport to set forth claims arising 12 under the patent laws of the United States, Title 35, United States Code, but denies that any 13 action of Continental gives rise to such a claim. 14 5. Continental admits that venue is proper in this district. Continental denies the 15 remaining allegations of Paragraph 5. 16 6. Continental admits that it has sued Intel for infringing the Patents-In-Suit 17 which it owns. Continental lacks knowledge or information sufficient to form a belief 18 about the truth of the remaining allegations in Paragraph 6, and therefore denies the same. 19 BACKGROUND 20 7. Admitted. 21 8. On information and belief, admitted. 22 9. On information and belief, admitted. 23 10. Denied. 24 11. Admitted. 25 12. Admitted. 26 13. Admitted. 27 14. Continental admits that U.S. Patent No. 5,447,996 exists and the truth of what 28 that document states can best be ascertained from that document. 29 Case 2:16-cv-02026-DGC Document 213 Filed 07/14/17 Page 3 of 8 1 15. On information and belief, admitted. 2 16. To the extent the allegations in Paragraph 16 refer to the knowledge of the 3 named inventors of the Patents-in-Suit, admitted. Otherwise, Continental lacks knowledge 4 or information sufficient to form a belief about the truth of the allegations in Paragraph 16, 5 and therefore denies.. 6 17. Continental admits that U.S. Patent No. 5,998,237 exists and the truth of what 7 that document states can best be ascertained from that document. 8 18. On information and belief, admitted. 9 COUNT I – NONINFRINGEMENT OF THE'582 PATENT 10 19. Continental restates Paragraphs 1 through 18 as though fully set forth herein. 11 20. Continental admits that it owns the ʼ582 patent which Intel infringes. 12 Continental denies the remaining allegations of Paragraph 20. 13 21. Denied. 14 22. Continental admits that a justiciable controversy exists between Continental 15 and Intel. Continental denies the remaining allegations of Paragraph 22. 16 23. Denied. 17 24. Denied. 18 COUNT II – INVALIDTY OF THE'582 PATENT 19 25. Continental restates Paragraphs 1 through 24 as though fully set forth herein. 20 26. Continental lacks knowledge or information sufficient to form a belief about 21 the truth of the allegations in Paragraph 26, and therefore denies the same. 22 27. Denied. 23 28. Denied. 24 29. Denied. 25 30. Denied. 26 31. Denied. 27 32. Denied. 28 33. Denied. 29 Case 2:16-cv-02026-DGC Document 213 Filed 07/14/17 Page 4 of 8 1 34. Denied. 2 35. Denied. 3 36. Continental admits that the ʼ582 patent is valid and enforceable. Continental 4 denies the remaining allegations of Paragraph 36. 5 37. Continental admits that a justiciable controversy exists between Continental 6 and Intel. Continental denies the remaining allegations of Paragraph 37. 7 38. Denied. 8 COUNT III – NONINFRINGEMENT OF THE'560 PATENT 9 39. Continental restates Paragraphs 1 through 38 as though fully set forth herein. 10 40. Continental admits that it owns the ʼ560 patent which Intel infringes. 11 Continental denies the remaining allegations of Paragraph 40. 12 41. Denied. 13 42. Continental admits that a justiciable controversy exists between Continental 14 and Intel. Continental denies the remaining allegations of Paragraph 42. 15 43. Denied. 16 44. Denied. 17 COUNT IV – INVALIDTY OF THE'560 PATENT 18 45. Continental restates Paragraphs 1 through 44 as though fully set forth herein. 19 46. Continental lacks knowledge or information sufficient to form a belief about 20 the truth of the allegations in Paragraph 46, and therefore denies the same. 21 47. Denied. 22 48. Denied. 23 49. Denied. 24 50. Denied. 25 51. Denied. 26 52. Denied. 27 53. Denied. 28 54. Denied. 29 Case 2:16-cv-02026-DGC Document 213 Filed 07/14/17 Page 5 of 8 1 55. Denied. 2 56. Denied. 3 57. Denied. 4 58. Continental admits that the ʼ560 patent is valid and enforceable. Continental 5 denies the remaining allegations of Paragraph 58. 6 59. Continental admits that a justiciable controversy exists between Continental 7 and Intel. Continental denies the remaining allegations of Paragraph 59. 8 60. Denied. 9 COUNT V – NONINFRINGEMENT OF THE'105 PATENT 10 61. Continental restates Paragraphs 1 through 60 as though fully set forth herein. 11 62. Continental admits that it owns the ʼ105 patent which Intel infringes. 12 Continental denies the remaining allegations of Paragraph 62. 13 63. Denied. 14 64. Continental admits that a justiciable controversy exists between Continental 15 and Intel. Continental denies the remaining allegations of Paragraph 64. 16 65. Denied. 17 66. Denied. 18 COUNT VI – INVALIDTY OF THE'105 PATENT 19 67. Continental restates Paragraphs 1 through 66 as though fully set forth herein. 20 68. Continental lacks knowledge or information sufficient to form a belief about 21 the truth of the allegations in Paragraph 68, and therefore denies the same. 22 69. Denied. 23 70. Denied. 24 71. Denied. 25 72. Denied. 26 73. Denied. 27 74. Denied. 28 75. Denied. 29 Case 2:16-cv-02026-DGC Document 213 Filed 07/14/17 Page 6 of 8 1 76. Denied. 2 77. Denied. 3 78. Denied. 4 79. Denied. 5 80. Continental admits that the ʼ105 patent is valid and enforceable. Continental 6 denies the remaining allegations of Paragraph 80. 7 81. Continental admits that a justiciable controversy exists between Continental 8 and Intel. Continental denies the remaining allegations of Paragraph 81. 9 82. Denied. 10 COUNT VII – NONINFRINGEMENT OF THE'912 PATENT 11 83. Continental restates Paragraphs 1 through 82 as though fully set forth herein. 12 84. Continental admits that it owns the ʼ912 patent which Intel infringes. 13 Continental denies the remaining allegations of Paragraph 84. 14 85. Denied. 15 86. Continental admits that a justiciable controversy exists between Continental 16 and Intel. Continental denies the remaining allegations of Paragraph 86. 17 87. Denied. 18 88. Denied. 19 COUNT VIII – INVALIDTY OF THE'912 PATENT 20 89. Continental restates Paragraphs 1 through 88 as though fully set forth herein. 21 90. Continental lacks knowledge or information sufficient to form a belief about 22 the truth of the allegations in Paragraph 90, and therefore denies the same. 23 91. Denied. 24 92. Denied. 25 93. Denied. 26 94. Denied. 27 95. Denied. 28 96. Denied. 29 Case 2:16-cv-02026-DGC Document 213 Filed 07/14/17 Page 7 of 8 1 97. Denied. 2 98. Denied. 3 99. Denied. 4 100. Denied. 5 101. Denied. 6 102. Denied. 7 103. Denied. 8 104. Continental admits that the ʼ912 patent is valid and enforceable. Continental 9 denies the remaining allegations of Paragraph 104. 10 105. Continental admits that a justiciable controversy exists between Continental 11 and Intel. Continental denies the remaining allegations of Paragraph 105. 12 106. Denied. 13 DEMAND FOR JURY TRIAL 14 Continental hereby demands a jury for all issues so triable. 15 DENIAL OF ANY REMAINING ALLEGATIONS 16 Except as specifically admitted herein, Continental denies any remaining allegations 17 in Intel’s Counterclaims and Affirmative Defenses that are directed at Continental. 18 RESERVATION OF AFFIRMATIVE DEFENSES 19 107. Continental hereby reserves the right to supplement additional affirmative 20 defenses as discovery proceeds in this case. 21 PRAYER FOR RELIEF 22 Continental denies all allegations contained in the section entitled "Prayer for 23 Relief," and further denies that any relief should be granted to Intel whatsoever, either as 24 requested in its Counterclaims or otherwise. WHEREFORE, Continental prays that this 25 Court: 26 1. Dismiss each of Intel’s Counterclaims; and 27 2. Deny Intel any damages sought by way of its Counterclaims; and 28 29 Case 2:16-cv-02026-DGC Document 213 Filed 07/14/17 Page 8 of 8 1 3. Order such other and further legal and equitable relief as the Court may deem 2 appropriate. 3 Dated this 14th day of July, 2017. 4 5 6 CALDWELL CASSADY CURRY P.C 7 8 By/s/Bradley W. Caldwell (pro hac vice) Bradley W. Caldwell (pro hac vice) 9 Jason D. Cassady (pro hac vice) J. Austin Curry (pro hac vice) 10 Warren J. McCarty (pro hac vice) 11 2101 Cedar Springs Rd., Suite 1000 Dallas, Texas 75201 12 13 AIKEN SCHENK HAWKINS & RICCIARDI P.C. Joseph A. Schenk 14 2390 East Camelback Road, Suite 400 Phoenix, Arizona 85016 15 16 ATTORNEYS FOR PLAINTIFF 17 CONTINENTAL CIRCUITS, LLC 18 19 CERTIFICATE OF SERVICE 20 The undersigned certifies that all counsel of record are being served with a copy of 21 the foregoing document via the Court’s electronic filing system on this 14th day of July 22 2017. 23/s/Bradley W. Caldwell (pro hac vice) Bradley W. Caldwell 24 25 26 27 28 29

ANSWER to {{206}} Amended Answer to Complaint, Counterclaim by Continental Circuits LLC.

Case 2:16-cv-02026-DGC Document 214 Filed 07/14/17 Page 1 of 8 1 AIKEN SCHENK HAWKINS & RICCIARDI P.C. 2390 East Camelback Road, Suite 400 2 Phoenix, Arizona 85016 Telephone: (602) 248-8203 3 Facsimile: (602) 248-8840 E-Mail: docket@ashrlaw.com 4 E-Mail: jas@ashrlaw.com Joseph A. Schenk – 009260 5 Bradley W. Caldwell (pro hac vice) 6 Jason D. Cassady (pro hac vice) J. Austin Curry (pro hac vice) 7 Warren J. McCarty (pro hac vice) CALDWELL CASSADY CURRY P.C. 8 2101 Cedar Springs Rd., Suite 1000 Dallas, Texas 75201 9 Telephone: (214) 888-4848 Facsimile: (214) 888-4849 10 Email: bcaldwell@caldwellcc.com Email: jcassady@caldwellcc.com 11 Email: acurry@caldwellcc.com Email: wmccarty@caldwellcc.com 12 Attorneys for Plaintiff Continental Circuits, LLC 13 14 IN THE UNITED STATES DISTRICT COURT 15 FOR THE DISTRICT OF ARIZONA 16 Continental Circuits LLC, CASE NO. CV-16-2026-PHX-DGC 17 Plaintiff, CONTINENTAL CIRCUITS LLC’S 18 v. ANSWER TO IBIDEN U.S.A. CORPORATION AND IBIDEN CO., 19 Intel Corp., Ibiden U.S.A. LTD.’S AMENDED COUNTERCLAIMS Corp., Ibiden Co., Ltd., 20 Defendants. 21 22 23 24 25 26 27 28 29 Case 2:16-cv-02026-DGC Document 214 Filed 07/14/17 Page 2 of 8 1 Continental Circuits LLC ("Continental") files this Answer to Defendants Ibiden 2 U.S.A. Corporation and Ibiden Co., Ltd.’s ("Ibiden") Amended Counterclaims (Dkt. 206) 3 ("Counterclaims") and in support thereof would respectfully show the Court the following: 4 COUNTERCLAIMS 5 PARTIES 6 1. Continental lacks knowledge or information sufficient to form a belief about 7 the truth of the allegations in Paragraph 1, and therefore denies the same. 8 2. On information and belief, admitted. 9 3. On information and belief, admitted. 10 4. Admitted. 11 JURISDICTION AND VENUE 12 5. Continental admits that the Counterclaims purport to set forth claims arising 13 under the patent laws of the United States, Title 35, United States Code, but denies that any 14 action of Continental gives rise to such a claim. 15 6. Continental admits that venue is proper in this district. Continental denies the 16 remaining allegations of Paragraph 6. 17 7. Continental admits that it has sued Ibiden for infringing the Patents-In-Suit 18 which it owns. Continental lacks knowledge or information sufficient to form a belief 19 about the truth of the remaining allegations in Paragraph 7, and therefore denies the same. 20 BACKGROUND 21 8. Admitted. 22 9. On information and belief, admitted. 23 10. On information and belief, admitted. 24 11. Denied. 25 12. Admitted. 26 13. Admitted. 27 14. Admitted. 28 29 Case 2:16-cv-02026-DGC Document 214 Filed 07/14/17 Page 3 of 8 1 15. Continental admits that U.S. Patent No. 5,447,996 exists and the truth of what 2 that document states can best be ascertained from that document. 3 16. On information and belief, admitted. 4 17. To the extent the allegations in Paragraph 17 refer to the knowledge of the 5 named inventors of the Patents-in-Suit, admitted. Otherwise, Continental lacks knowledge 6 or information sufficient to form a belief about the truth of the allegations in Paragraph 17, 7 and therefore denies. 8 18. Continental admits that U.S. Patent No. 5,998,237 exists and the truth of what 9 that document states can best be ascertained from that document. 10 19. On information and belief, admitted. 11 COUNT I – NONINFRINGEMENT OF THE'582 PATENT 12 20. Continental restates Paragraphs 1 through 19 as though fully set forth herein. 13 21. Continental admits that it owns the ʼ582 patent which Ibiden infringes. 14 Continental denies the remaining allegations of Paragraph 21. 15 22. Denied. 16 23. Continental admits that a justiciable controversy exists between Continental 17 and Ibiden. Continental denies the remaining allegations of Paragraph 23. 18 24. Denied. 19 25. Denied. 20 COUNT II – INVALIDTY OF THE'582 PATENT 21 26. Continental restates Paragraphs 1 through 25 as though fully set forth herein. 22 27. Continental lacks knowledge or information sufficient to form a belief about 23 the truth of the allegations in Paragraph 27, and therefore denies the same. 24 28. Denied. 25 29. Denied. 26 30. Denied. 27 31. Denied. 28 32. Denied. 29 Case 2:16-cv-02026-DGC Document 214 Filed 07/14/17 Page 4 of 8 1 33. Denied. 2 34. Denied. 3 35. Denied. 4 36. Denied. 5 37. Continental admits that the ʼ582 patent is valid and enforceable. Continental 6 denies the remaining allegations of Paragraph 37. 7 38. Continental admits that a justiciable controversy exists between Continental 8 and Ibiden. Continental denies the remaining allegations of Paragraph 38. 9 39. Denied. 10 COUNT III – NONINFRINGEMENT OF THE'560 PATENT 11 40. Continental restates Paragraphs 1 through 39 as though fully set forth herein. 12 41. Continental admits that it owns the ʼ560 patent which Ibiden infringes. 13 Continental denies the remaining allegations of Paragraph 41. 14 42. Denied. 15 43. Continental admits that a justiciable controversy exists between Continental 16 and Ibiden. Continental denies the remaining allegations of Paragraph 43. 17 44. Denied. 18 45. Denied. 19 COUNT IV – INVALIDTY OF THE'560 PATENT 20 46. Continental restates Paragraphs 1 through 45 as though fully set forth herein. 21 47. Continental lacks knowledge or information sufficient to form a belief about 22 the truth of the allegations in Paragraph 47, and therefore denies the same. 23 48. Denied. 24 49. Denied. 25 50. Denied. 26 51. Denied. 27 52. Denied. 28 53. Denied. 29 Case 2:16-cv-02026-DGC Document 214 Filed 07/14/17 Page 5 of 8 1 54. Denied. 2 55. Denied. 3 56. Denied. 4 57. Denied. 5 58. Denied. 6 59. Continental admits that the ʼ560 patent is valid and enforceable. Continental 7 denies the remaining allegations of Paragraph 59. 8 60. Continental admits that a justiciable controversy exists between Continental 9 and Ibiden. Continental denies the remaining allegations of Paragraph 60. 10 61. Denied. 11 COUNT V – NONINFRINGEMENT OF THE'105 PATENT 12 62. Continental restates Paragraphs 1 through 61 as though fully set forth herein. 13 63. Continental admits that it owns the ʼ105 patent which Ibiden infringes. 14 Continental denies the remaining allegations of Paragraph 63. 15 64. Denied. 16 65. Continental admits that a justiciable controversy exists between Continental 17 and Ibiden. Continental denies the remaining allegations of Paragraph 65. 18 66. Denied. 19 67. Denied. 20 COUNT VI – INVALIDTY OF THE'105 PATENT 21 68. Continental restates Paragraphs 1 through 67 as though fully set forth herein. 22 69. Continental lacks knowledge or information sufficient to form a belief about 23 the truth of the allegations in Paragraph 69, and therefore denies the same. 24 70. Denied. 25 71. Denied. 26 72. Denied. 27 73. Denied. 28 74. Denied. 29 Case 2:16-cv-02026-DGC Document 214 Filed 07/14/17 Page 6 of 8 1 75. Denied. 2 76. Denied. 3 77. Denied. 4 78. Denied. 5 79. Denied. 6 80. Denied. 7 81. Continental admits that the ʼ105 patent is valid and enforceable. Continental 8 denies the remaining allegations of Paragraph 81. 9 82. Continental admits that a justiciable controversy exists between Continental 10 and Ibiden. Continental denies the remaining allegations of Paragraph 82. 11 83. Denied. 12 COUNT VII – NONINFRINGEMENT OF THE'912 PATENT 13 84. Continental restates Paragraphs 1 through 83 as though fully set forth herein. 14 85. Continental admits that it owns the ʼ912 patent which Ibiden infringes. 15 Continental denies the remaining allegations of Paragraph 85. 16 86. Denied. 17 87. Continental admits that a justiciable controversy exists between Continental 18 and Ibiden. Continental denies the remaining allegations of Paragraph 87. 19 88. Denied. 20 89. Denied. 21 COUNT VIII – INVALIDTY OF THE'912 PATENT 22 90. Continental restates Paragraphs 1 through 89 as though fully set forth herein. 23 91. Continental lacks knowledge or information sufficient to form a belief about 24 the truth of the allegations in Paragraph 91, and therefore denies the same. 25 92. Denied. 26 93. Denied. 27 94. Denied. 28 95. Denied. 29 Case 2:16-cv-02026-DGC Document 214 Filed 07/14/17 Page 7 of 8 1 96. Denied. 2 97. Denied. 3 98. Denied. 4 99. Denied. 5 100. Denied. 6 101. Denied. 7 102. Denied. 8 103. Denied. 9 104. Denied. 10 105. Denied. 11 106. Continental admits that the ʼ912 patent is valid and enforceable. Continental 12 denies the remaining allegations of Paragraph 106. 13 107. Continental admits that a justiciable controversy exists between Continental 14 and Ibiden. Continental denies the remaining allegations of Paragraph 107. 15 108. Denied. 16 DEMAND FOR JURY TRIAL 17 Continental hereby demands a jury for all issues so triable. 18 DENIAL OF ANY REMAINING ALLEGATIONS 19 Except as specifically admitted herein, Continental denies any remaining allegations 20 in Ibiden’s Counterclaims and Affirmative Defenses that are directed at Continental. 21 RESERVATION OF AFFIRMATIVE DEFENSES 22 109. Continental hereby reserves the right to supplement additional affirmative 23 defenses as discovery proceeds in this case. 24 PRAYER FOR RELIEF 25 Continental denies all allegations contained in the section entitled "Prayer for 26 Relief," and further denies that any relief should be granted to Ibiden whatsoever, either as 27 requested in its Counterclaims or otherwise. WHEREFORE, Continental prays that this 28 Court: 29 Case 2:16-cv-02026-DGC Document 214 Filed 07/14/17 Page 8 of 8 1 1. Dismiss each of Ibiden’s Counterclaims; and 2 2. Deny Ibiden any damages sought by way of its Counterclaims; and 3 3. Order such other and further legal and equitable relief as the Court may deem 4 appropriate. 5 Dated this 14th day of July, 2017. 6 7 8 CALDWELL CASSADY CURRY P.C 9 10 By/s/Bradley W. Caldwell (pro hac vice) Bradley W. Caldwell (pro hac vice) 11 Jason D. Cassady (pro hac vice) J. Austin Curry (pro hac vice) 12 Warren J. McCarty (pro hac vice) 13 2101 Cedar Springs Rd., Suite 1000 Dallas, Texas 75201 14 15 AIKEN SCHENK HAWKINS & RICCIARDI P.C. Joseph A. Schenk 16 2390 East Camelback Road, Suite 400 Phoenix, Arizona 85016 17 18 ATTORNEYS FOR PLAINTIFF 19 CONTINENTAL CIRCUITS, LLC 20 21 CERTIFICATE OF SERVICE 22 The undersigned certifies that all counsel of record are being served with a copy of 23 the foregoing document via the Court’s electronic filing system on this 14th day of July 24 2017. 25/s/Bradley W. Caldwell (pro hac vice) Bradley W. Caldwell 26 27 28 29

ORDER pursuant to {{212}} Stipulation re format for claim construction hearing. The hearing shall begin promptly at 8:30 AM to accommodate counsels' format suggestion. Signed by Judge David G Campbell on 7/18/2017.

Case 2:16-cv-02026-DGC Document 219 Filed 07/18/17 Page 1 of 2 1 2 3 4 5 IN THE UNITED STATES DISTRICT COURT 6 FOR THE DISTRICT OF ARIZONA 7 8 Continental Circuits, LLC, 9 No. CV16-2026-PHX-DGC 10 Plaintiff, ORDER 11 v. 12 Intel Corporation; Ibiden U.S.A. Corporation; and Ibiden Co., Ltd., 13 14 Defendants. 15 16 The Court has considered the parties’ July 12, 2017 Joint Stipulation Regarding Proposed 17 Format for Claim Construction Hearing (Doc. 212). 18 IT IS ORDERED that the joint stipulation regarding proposed format for claim construction 19 hearing (Doc. 212) is granted. 20 1. The hearing will start with each side presenting a short (up to 30 minutes for each side) 21 tutorial on the technology. Plaintiff will present first followed by Defendants. 22 2. The parties will then present argument and address questions from the Court on the 23 disputed terms, with the sides alternating for each disputed term in the order set forth in 24 the Joint Claim Construction Statement (Doc. 177). Plaintiff will present argument first 25 for each disputed term, followed by Defendants, followed (as necessary) with short 26 rebuttal arguments by both sides. 27 28 Case 2:16-cv-02026-DGC Document 219 Filed 07/18/17 Page 2 of 2 1 3. All presentations will be made by counsel, and experts will not present or testify live 2 during the hearing. 3 4. The hearing will proceed for a total of up to four hours. The parties will endeavor to 4 make the hearing as efficient as possible. 5 Dated this 18th day of July, 2017. 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

MINUTE ORDER: Supplemental Request for Copyright, Trademark, or Patent Information. This case has been designated as a copyright, trademark, or patent case. An answer, amended complaint, or other pleading {{213}} and {{214}} has been filed that may include additional trademarks, patents, or copyrights allegedly violated that were not previously included. Attached to this docket entry are the required form(s) that may need to be completed by the party who filed the above document.</br></br>If your recently filed pleading adds or changes information related to the original patents, trademarks, or copyright allegations, please complete the form that is applicable to this particular case. In some cases, you may need to complete both forms. Within seven (7) days, you must submit the required form(s) to the Clerk's Office. Please complete the form and file it with the Court using the specific event: Notice of Filing - Copyright, Trademark or Patent Information, found under the Other Filings header. Please DO NOT mail the form directly to the Patent or Copyright Office. The Clerk's Office will submit the form.</br></br>If there are no changes to the copyright, trademark, or patent information previously submitted for this case, then the party who filed the above document must file a Notice, within seven (7) days, indicating such using the specific event:Notice of Filing - Copyright, Trademark or Patent Information, found under the Other Filings header

Case 2:16-cv-02026-DGC Document 220 Filed 07/18/17 Page 1 of 2 AO 120 (Rev. 08/10) Mail Stop 8 REPORT ON THE TO: Director of the U.S. Patent and Trademark Office FILING OR DETERMINATION OF AN P.O. Box 1450 ACTION REGARDING A PATENT OR Alexandria, VA 22313-1450 TRADEMARK In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been filed in the U.S. District Court of Arizona on the following G Trademarks or G Patents. (G the patent action involves 35 U.S.C. § 292.): DOCKET NO. DATE FILED U.S. DISTRICT COURT of Arizona PLAINTIFF DEFENDANT PATENT OR DATE OF PATENT HOLDER OF PATENT OR TRADEMARK TRADEMARK NO. OR TRADEMARK 1 2 3 4 5 In the above—entitled case, the following patent(s)/trademark(s) have been included: DATE INCLUDED INCLUDED BY G Amendment G Answer G Cross Bill G Other Pleading PATENT OR DATE OF PATENT HOLDER OF PATENT OR TRADEMARK TRADEMARK NO. OR TRADEMARK 1 2 3 4 5 In the above—entitled case, the following decision has been rendered or judgement issued: DECISION/JUDGEMENT CLERK (BY) DEPUTY CLERK DATE Brian D. Karth Copy 1—Upon initiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director Copy 2—Upon filing document adding patent(s), mail this copy to Director Copy 4—Case file copy Print Save As... Reset Case 2:16-cv-02026-DGC Document 220 Filed 07/18/17 Page 2 of 2 O AO 121 (6/90) TO: Register of Copyrights REPORT ON THE Copyright Office FILING OR DETERMINATION OF AN Library of Congress ACTION OR APPEAL Washington, D.C. 20559 REGARDING A COPYRIGHT In compliance with the provisions of 17 U.S.C. 508, you are hereby advised that a court action or appeal has been filed on the following copyright(s): COURT NAME AND LOCATION G ACTION G APPEAL DOCKET NO. DATE FILED of Arizona PLAINTIFF DEFENDANT COPYRIGHT TITLE OF WORK AUTHOR OR WORK REGISTRATION NO. 1 2 3 4 5 In the above-entitled case, the following copyright(s) have been included: DATE INCLUDED INCLUDED BY G Amendment G Answer G Cross Bill G Other Pleading COPYRIGHT TITLE OF WORK AUTHOR OF WORK REGISTRATION NO. 1 2 3. In the above-entitled case, a final decision was rendered on the date entered below. A copy of the order or judgment together with the written opinion, if any, of the court is attached. COPY ATTACHED WRITTEN OPINION ATTACHED DATE RENDERED G Order G Judgment G Yes G No CLERK (BY) DEPUTY CLERK DATE Brian D. Karth 1) Upon initiation of action, 2) Upon filing of document adding copyright(s), 3) Upon termination of action, mail copy to Register of Copyrights mail copy to Register of Copyrights mail copy to Register of Copyrights DISTRIBUTION: 4) In the event of an appeal, forward copy to Appellate Court 5) Case File Copy Print Save As... Reset

MEMORANDUM (Defendants' Supplemental Markman Brief Regarding the Parties' Proposed Constructions) (Redacted Version) pursuant to 224 Order by Defendants Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.

Case 2:16-cv-02026-DGC Document 225 Filed 08/02/17 Page 1 of 8 1 Chad S. Campbell (State Bar No. 012080) CSCampbell@perkinscoie.com 2 PERKINS COIE LLP 3 2901 N. Central Avenue Suite 2000 4 Phoenix, AZ 85012 5 Tel: (602) 351-8000/Fax: (602) 648-7000 6 William F. Lee (admitted pro hac vice) William.Lee@wilmerhale.com 7 Joseph J. Mueller (admitted pro hac vice) 8 Joseph.Mueller@wilmerhale.com WILMER CUTLER PICKERING HALE 9 AND DORR LLP 60 State Street 10 Boston, MA 02109 11 Tel: (617) 526-6000/Fax: (617) 526-5000 12 Nina S. Tallon (admitted pro hac vice) 13 Nina.Tallon@wilmerhale.com WILMER CUTLER PICKERING HALE 14 AND DORR LLP 1875 Pennsylvania Avenue NW 15 Washington, DC 20006 16 Tel: (202) 663-6000/Fax: (202) 663-6363 17 Attorneys for Defendants 18 IN THE UNITED STATES DISTRICT COURT 19 FOR THE DISTRICT OF ARIZONA 20 21 Continental Circuits LLC, Case No. CV-16-2026-PHX-DGC 22 Plaintiff, DEFENDANTS’ SUPPLEMENTAL 23 v. MARKMAN BRIEF REGARDING Intel Corporation; THE PARTIES’ PROPOSED 24 CONSTRUCTIONS Ibiden U.S.A. Corporation; and 25 Ibiden Co. Ltd. FILED UNDER SEAL 26 Defendants. (PUBLIC VERSION) 27 28 Case 2:16-cv-02026-DGC Document 225 Filed 08/02/17 Page 2 of 8 1 Defendants Intel Corporation, Ibiden U.S.A. Corporation, and Ibiden Co. Ltd. 2 (collectively "Defendants") hereby submit this joint response to the Court’s July 28, 2017 3 Order requesting the parties to "explain[] the effect that their proposed constructions (or 4 indefiniteness arguments) would have on the merits of this case." (Dkt. 224.) 5 I. THE REPEATED DESMEAR LIMITATIONS 6 As Defendants explained in their Markman briefing, the asserted patents 7 repeatedly define "the present invention" and "desmear process as disclosed herein" as 8 (1) requiring dielectric roughening achieved using a repeated desmear process, and (2) 9 excluding roughening achieved using a single pass desmear process (i.e., the prior art 10 approach that the patents disparage and claim to improve upon). Consistent with these 11 representations to the Patent Office and the public, Defendants propose construing each 12 asserted claim to require the claimed dielectric surface to be roughened using a repeated 13 desmear process. (Dkt. 188 at 4-8; Dkt. 203 at 2-9.) To the extent the Court adopts that 14 proposed construction, 15 16 17 Disregarding the named inventors’ representations regarding the scope of the 18 asserted claims, Plaintiff contends that the claims should be construed to cover any type 19 of desmear process, including the single pass approach that the patents explicitly critique 20 and admit was already known. If the Court adopts that proposed construction, every 21 asserted claim would be invalid in view of the admitted prior art. Additionally, because 22 the asserted patents do not teach how to achieve the claimed invention using a single pass 23 desmear process (or otherwise disclose any embodiment using a single pass approach), 24 the claims also would be invalid for lack of enablement and lack of adequate written 25 description. See Liebel-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1380 (Fed. Cir. 26 2007) ("The irony of this situation is that Liebel successfully pressed to have its claims 27 include a jacketless system, but, having won that battle, it then had to show that such a 28 claim was fully enabled, a challenge it could not meet."). Indeed, Plaintiff contends that Case 2:16-cv-02026-DGC Document 225 Filed 08/02/17 Page 3 of 8 1 the patents disclose a single pass desmear process based solely on the specification’s 2 single unexplained mention of "slowed" etching, which is insufficient to satisfy the 3 enablement and written description requirements—the patents disclose no embodiment 4 using a "slowed" etching rate, provide no teaching regarding what aspects of the etching 5 process are "slowed" or by how much, and otherwise fail to inform a person of ordinary 6 skill how to form the claimed invention using a "slowed" etch process. (See Dkt. 203 at 7 6-8.) 8 II. THE LIQUID DIELECTRIC LIMITATIONS 9 Each asserted claim of the'560,'105, and'912 patents requires dielectric material 10 "delivered with [] solid content." Consistent with the plain language of the claims and 11 with how the named inventors and their expert described the meaning of these terms in 12 the patents and during prosecution, Defendants propose construing the "solid content" 13 limitations to require solid particles suspended in a liquid dielectric material. (Dkt. 188 at 14 8-12; Dkt. 203 at 10-13.) If the Court adopts that proposed construction, 15 16 17 This defense would not apply to the asserted'582 18 patent claims, which do not have that claim language. 19 Plaintiff asserts that Defendants’ proposed construction "would require that the 20 claims be limited to only covering an electrical device that is filled with a liquid." (Dkt. 21 204 at 5.) Not so. The claim terms are directed to the form in which the dielectric 22 material is delivered and applied during the manufacturing process ("delivered with [] 23 solid content"), not the physical state of the end product. The claims are not directed to 24 liquid computer parts. 25 Notably, the claim language "delivered with solid content" comes directly from 26 the specification for a prior art dielectric material (Probelec XB 7081) that is explicitly 27 discussed in the specification. Probelec XB 7081 was a liquid dielectric material as 28 delivered and applied in manufacturing, which was hardened during the manufacturing-2-Case 2:16-cv-02026-DGC Document 225 Filed 08/02/17 Page 4 of 8 1 process. (See'582 patent, 6:42-7:37; Dkt. 188-3, Ex. 10 [Probelec XB 7081 Data Sheet] 2 at 88702DEF0001055.) Defendants’ construction is true to the public representations 3 made in the patents by the named inventors—including the citation to Probelec XB 4 7081—and would result in the straightforward interpretation that "delivered with solid 5 content" means exactly what the words and the surrounding context suggest: delivered 6 with solid content during the manufacturing process.1 7 As for Plaintiff’s own position, 8, Plaintiff proposed to construe the 9 "delivered with solid content" limitations to encompass completely solid dielectric 10 material. That litigation-driven construction (which would render the "delivered with 11 solid content" terms superfluous) is contrary to the plain language of the claims and 12 public representations in the intrinsic record that "solid content" refers to solid particles 13 suspended in liquid dielectric material. (See, e.g., Dkt. 188-3, Ex. 6 [6/25/12 Response] 14 at 8-9 ("By describing the epoxy as having a solid content of 58%, one skilled in the art 15 would understand that Probelec XB7081 includes solid particles in a percentage of 58% 16 suspended in a generally liquid epoxy[.]" (emphasis added)); see also Dkt. 188 at 9-10; 17 Dkt. 203 at 11-12.) 18 III. THE MEANS-PLUS-FUNCTION LIMITATIONS 19 Claims 109 and 114 of the'582 patent and claim 104 of the'105 patent contain 20 means-plus-function limitations. "Means-plus-function claiming involves a quid pro quo. 21 In exchange for being able to draft a claim limitation in purely functional language, the 22 applicant must describe in the patent specification some structure which performs the 23 specified function." Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1318 (Fed. Cir. 2012) 24 (internal citations omitted). Accordingly, these limitations must be construed (1) to 25 reflect the function that the claim recites for the limitation (which the parties here do not 26 1 Plaintiff also contends, in the alternative, that Defendants’ products would infringe 27 if the Court were to adopt Defendants’ proposed construction because (according to 28 Plaintiff) (Dkt. 204 at 6.) That is incorrect, but also irrelevant to the issue of claim construction.-3-Case 2:16-cv-02026-DGC Document 225 Filed 08/02/17 Page 5 of 8 1 dispute), and (2) to include the full corresponding structure that the specification 2 describes as needed to perform that claimed function (which the parties dispute). As 3 detailed in Defendants’ Markman briefs, the corresponding structure for the means-plus-4 function limitations at issue should be construed to require at least twenty percent of the 5 claimed "teeth" to fall within the size, shape, and frequency ranges that the patent 6 describes as necessary to achieve the alleged invention. (Dkt. 188 at 13-16; Dkt. 203 at 7 13-17.) If the Court adopts that proposed construction, 8 9 10 11 Conversely, under Plaintiff’s proposal, the jury would merely be presented with 12 the unlabeled image found in Figure 1 and a few cherry-picked lines taken out of context 13 from the specification—none of which provides any clear description of the teeth sizes, 14 shapes, and frequencies that the patents describe as necessary to achieve the claimed 15 invention. (See Dkt. 189-3, Ex. B at App’x C.) That proposed construction would 16 violate the legal standard and leave the jury with insufficient guidance to determine 17 whether the claims cover structures in the accused products and/or the prior art. 18 IV. THE INDEFINITE CLAIM TERMS 19 Defendants have identified four terms in the asserted claims that are indefinite 20 because a person of ordinary skill in the art could not objectively determine the scope of 21 the terms with reasonable certainty. (Dkt. 188 at 16-22; Dkt. 203 at 17-22.) As detailed 22 below, if the Court finds that any of these terms is indefinite, each asserted claim 23 containing the term would be invalid, thereby resolving the issues in this case with 24 respect to those claims. See, e.g., Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 25 2120, 2124 (2014) (explaining that a claim is invalid for indefiniteness if it "fail[s] to 26 inform, with reasonable certainty, those skilled in the art about the scope of the 27 invention"). Plaintiff contends that the four terms at issue are not indefinite but failed to 28 provide—and therefore waived—substantive argument. Moreover, its rebuttal proposals-4-Case 2:16-cv-02026-DGC Document 225 Filed 08/02/17 Page 6 of 8 1 do nothing to clarify the scope of these terms or their meaning to a person of ordinary 2 skill in the art, and would merely ensure that the parties and jury will face confusion 3 about the terms’ scope as the case proceeds. 4 A. "A Sample Of The Circuitry" 5 Defendants contend that the term "a sample of the circuitry" is indefinite because 6 the'582 patent does not explain how much or which portions of the circuitry would 7 constitute a sufficient "sample" for purposes of the claims. (Dkt. 188 at 16-18; Dkt. 203 8 at 18.) If the Court finds that this term is indefinite,'582 patent claims 94, 95, and 122 9 would be invalid. 10 B. "Upgrade Slope" 11 Defendants contend that the term "upgrade slope" as used in the'582 patent is 12 indefinite because the patent provides no guidance to a person of ordinary skill in the art 13 as to what constitutes an "upgrade slope" or how to distinguish an "upgrade" slope from 14 a "downgrade" slope (or any other kind of slope). (Dkt. 188 at 18-19; Dkt. 203 at 19-20.) 15 If the Court finds that this term is indefinite, claims 85, 87, 89, 92, 94, 95, 100, 109, 114, 16 and 122 of the'582 patent would be invalid. 17 C. "Peel Strength Greater Than A Peel Strength That Would Be Produced By A Single Desmear Process" 18 19 The term "peel strength greater than a peel strength that would be produced by a 20 single desmear process" appears in claims 87 and 92 of the'582 patent. Defendants 21 contend that this term is indefinite because the'582 patent does not identify the method 22 or parameters to use for measuring peel strength within the meaning of the claims, let 23 alone how to determine whether the peel strength is greater than a peel strength that 24 would be produced by a single pass desmear process. (Dkt. 188 at 19-21; Dkt. 203 at 20-25 21.) If the Court agrees, claims 87 and 92 of the'582 patent would be invalid. 26 D. "Substantially Greater Cross-Sectional Distance Distant From The [Initial] Surface" 27 Defendants contend that this term is indefinite because the'560 and'105 patents 28-5-Case 2:16-cv-02026-DGC Document 225 Filed 08/02/17 Page 7 of 8 1 do not provide any objective criteria for a person of ordinary skill in the art to determine 2 how much greater a cross-sectional distance must be to constitute a "substantially 3 greater" distance for purposes of the claims. (Dkt. 188 at 21-22; Dkt. 203 at 21-22.) If 4 the Court finds that this term is indefinite, claims 14 and 19 of the'560 patent and claims 5 13, 53, 71, 80, 82, 86, 88, 91, 95, 97, 101, and 103 of the'105 patent would be invalid. 6 7 DATED this 2nd day of August, 2017. 8 Respectfully submitted, 9 By:/s/Joseph J. Mueller Chad S. Campbell (State Bar No. 012080) 10 CSCampbell@perkinscoie.com 11 PERKINS COIE LLP 2901 N. Central Avenue, Suite 2000 12 Phoenix, AZ 85012 13 Telephone: (602) 351-8000 Facsimile: (602) 648-7000 14 William F. Lee (pro hac vice) 15 William.Lee@wilmerhale.com 16 Joseph J. Mueller (pro hac vice) Joseph.Mueller@wilmerhale.com 17 WILMER CUTLER PICKERING HALE AND DORR LLP 18 60 State Street 19 Boston, MA 02109 Telephone: (617) 526-6000 20 Facsimile: (617) 526-5000 21 Nina S. Tallon (pro hac vice) 22 Nina.Tallon@wilmerhale.com WILMER CUTLER PICKERING HALE 23 AND DORR LLP 24 1875 Pennsylvania Ave., NW Washington, DC 20006 25 Telephone: (202) 663-6000 26 Facsimile: (202) 663-6363 27 Attorneys for Defendants Intel Corp., Ibiden U.S.A. Corp., and Ibiden Co., Ltd. 28-6-Case 2:16-cv-02026-DGC Document 225 Filed 08/02/17 Page 8 of 8 1 CERTIFICATE OF SERVICE 2 I certify that on the 2nd day of August, 2017, I electronically transmitted the 3 foregoing document to the Clerk’s Office using the CM/ECF System for filing and 4 transmittal of a Notice of Electronic Filing to all CM/ECF registrants of record in this 5 matter. 6 I certify that on August 3, 2017, I will serve the attached document by first class 7 mail on Judge Campbell, United States District Court of Arizona, 401 West Washington 8 Street, Phoenix, Arizona 85003-2118. 9 10/s/Dan Graziano 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

MEMORANDUM CONTINENTAL CIRCUITS LLCS CLAIM CONSTRUCTION MEMORANDUM PER ORDER DKT. NO. 224 224 Order by Plaintiff Continental Circuits LLC.

Case 2:16-cv-02026-DGC Document 226 Filed 08/02/17 Page 1 of 8 1 AIKEN SCHENK HAWKINS & RICCIARDI P.C. Joseph A. Schenk – 009260 2 2390 East Camelback Road, Suite 400 Phoenix, Arizona 85016 3 Telephone: (602) 248-8203 Facsimile: (602) 248-8840 4 E-Mail: docket@ashrlaw.com E-Mail: jas@ashrlaw.com 5 Joseph A. Schenk – 009260 6 CALDWELL CASSADY CURRY P.C. Bradley W. Caldwell (pro hac vice) 7 Jason D. Cassady (pro hac vice) J. Austin Curry (pro hac vice) 8 Warren J. McCarty (pro hac vice) 2101 Cedar Springs Rd., Suite 1000 9 Dallas, Texas 75201 Telephone: (214) 888-4848 10 Facsimile: (214) 888-4849 Email: bcaldwell@caldwellcc.com 11 Email: jcassady@caldwellcc.com Email: acurry@caldwellcc.com 12 Email: wmccarty@caldwellcc.com 13 Attorneys for Plaintiff Continental Circuits, LLC 14 IN THE UNITED STATES DISTRICT COURT 15 FOR THE DISTRICT OF ARIZONA 16 Continental Circuits LLC, CASE NO. CV-16-2026-PHX-DGC 17 Plaintiff, 18 CONTINENTAL CIRCUITS LLC’S v. CLAIM CONSTRUCTION 19 MEMORANDUM PER ORDER DKT. Intel Corp., Ibiden U.S.A. NO. 224 20 Corp., Ibiden Co., Ltd., 21 Defendants. 22 23 24 25 26 27 28 29 30 Case 2:16-cv-02026-DGC Document 226 Filed 08/02/17 Page 2 of 8 1 Plaintiff Continental Circuits LLC ("Continental Circuits") offers this memorandum 2 in accordance with the Court’s July 28, 2017 Order (Dkt. No. 224). Continental Circuits has 3 attempted to assess the practical effect that the parties’ competing proposals would have on 4 the merits of the case without re-arguing the substance of those proposals. The fact is, 5 however, Continental Circuits simply proposes that the Court refrain from re-writing the 6 claims language or invalidating the claims. Defendants are seeking constructions that re-7 draft the claims to create or support their non-infringement positions, and they also seek to 8 invalidate all of the claims that have a significant damages window under 35 U.S.C. § 284. 9 At the same time, they have not yet provided any technical witnesses for deposition, 10 allowed inspection of their manufacturing facilities, or provided substrates for rigorous 11 testing. Thus, Continental Circuits can partially identify the impact of Defendants’ 12 proposals, but there may also be additional unforeseen effects. One certain consequence of 13 adopting Defendants’ Category I, II, and III proposals, however, is continued claim scope 14 disputes. Because Defendants ask to fundamentally alter all thirty-two asserted claims with 15 new language and limitations, adoption of those proposals will likely require the parties to 16 re-argue the scope of the new, re-written claims before trial. 17 I. CATEGORY I TERMS 18 Continental Circuits proposes that these terms be given their plain and ordinary 19 meaning because the claim language contains terms that can be understood by a jury and a 20 person of ordinary skill in the art. In circumstances where there is no disclaimer or 21 disavowal, as is the case here, that is the function of the proper application of claim 22 construction law. See, e.g., Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 23 1365 (Fed. Cir. 2012). If the Court confirms that it need not re-write the claim language, the 24 jury will be tasked with comparing the claim language with the accused products and any 25 asserted prior art references. For example, for claims that require "etching," the jury will be 26 asked to determine whether Defendants employ etching. For claims that cover devices with 27 the patented tooth structure, the jury need not consider the specific manufacturing steps 28-1-29 30 Case 2:16-cv-02026-DGC Document 226 Filed 08/02/17 Page 3 of 8 1 Defendants employ, but will instead compare the accused products with the claimed 2 structure limitations. The parties will present evidence and likely expert testimony to assist 3 the jury in making those determinations, but the jury instructions and analysis of the merits 4 will be rooted in the claim language of each of the different claims, and the differences 5 among those claims, rather than analyzing all claims through the lens of a single, narrow 6 embodiment. 7 In contrast, Defendants have asked the Court to lump together seven distinct phrases 8 that use deliberately varied or altogether different language and tack onto each of these 9 different phrases a "repeated desmear" requirement. The seven phrases were apparently 10 (and strategically) selected by Defendants because they touch on all thirty-two asserted 11 claims. In other words, by baking into every single claim a new "repeated desmear" 12 requirement, Defendants would presumably pursue a blanket, all-encompassing non-13 infringement theory by arguing that they perform something less than two full desmear 14 processes, which no asserted claim even requires. If the Court adopts Defendants’ proposal, 15 Defendants could deploy their preferred construction as grounds to argue non-infringement 16 in a motion for summary judgment or at trial. The end result on the question of 17 infringement would be far from clear, however. Defendants have not yet specified all of 18 their precise manufacturing processes for each of the accused products, and Defendants’ 19 proposal will likely lead to further disputes and confusion rather than the clear non-20 infringement victory they seek. 21 For example, if the Court imports a "repeated desmear" limitation into all of the 22 claims, the parties will likely dispute what the term "repeated desmear" means, and whether 23 this limitation requires repeating the exact same steps in the exact same order for the exact 24 same amount of time, or whether it merely requires repeating some of the steps. This will 25 provoke one of two problematic scenarios. One scenario is that the parties submit an 26 entirely new round of claim construction briefing for the Court to address the meaning of 27 the phrase "repeated desmear," and what it means to repeat a desmear, as even Defendants 28-2-29 30 Case 2:16-cv-02026-DGC Document 226 Filed 08/02/17 Page 4 of 8 1 have not offered any clear definition for this term. An alternative and more troubling 2 scenario is that adoption of Defendants’ proposal will invite them to engage in haphazard 3 claim construction argumentation at trial before the jury on the meaning of "repeated 4 desmear"—something that the Federal Circuit has strictly prohibited. O2 Micro Int’l Ltd. v. 5 Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008). 6 Defendants’ proposal also presents a challenge for instructing the jury on how to 7 analyze infringement and validity. Many of the asserted independent claims require 8 "etching," and the dependent claims further require a first and second etching. See, e.g., 9'560 Patent at claims 14 and 19. Should the Court read into all of these claims the "repeated 10 desmear" refrain, the Court and the jury will be required to untangle the web created by 11 independent claims, which now require a repeated desmear, and dependent claims, which 12 now recite the repetition of that already repeated desmear—all while reading patent claims 13 which require only that an "etch" be performed. 14 Ultimately, Continental Circuits’ proposal is consistent with the intentions of the 15 inventors, captures the proper scope of their inventions rooted in the actual claim language, 16 and does not improperly limit each and every claim to a single embodiment for litigation-17 inspired purposes. Thus, it avoids the practical problems that would result from 18 Defendants’ proposals. And since Continental Circuits’ proposals are not based on case 19 strategy, such as baking infringement or validity arguments into claim constructions, they 20 are not case dispositive. Instead, by adhering to the plain and ordinary meaning of the claim 21 language, the parties and their experts will present evidence on the merits of infringement 22 and validity based on that claim language; no further Markman briefing should be 23 necessary and improper claim construction argumentation at trial can be avoided. 24 II. CATEGORY II TERMS 25 As with the category I terms, Continental Circuits proposes that these terms be given 26 their plain and ordinary meaning as they can already be understood by a jury and a person 27 of ordinary skill in the art. There does not appear to be any fact dispute that the accused 28-3-29 30 Case 2:16-cv-02026-DGC Document 226 Filed 08/02/17 Page 5 of 8 1 products contain dielectric material or that this dielectric material is delivered with solid 2 content. Specifically, Defendants appear to rely on dielectric material with solid content 3 that is poured into sheets while it is in liquid form and then cured into a hardened laminate 4 form for application to the accused products during the manufacturing process. Because the 5 claim language is agnostic as to the method of applying dielectric material, this process 6 meets the claim language at issue. 7 Defendants have asked the Court to adjoin all variations of the phrase "dielectric 8 material delivered with solid content" with the concept of "in a liquid." But as explained in 9 Continental Circuits’ responsive briefing, Defendants have not been up front about the 10 reasoning behind, and the impact of, this proposal. Taken literally, Defendants’ proposal 11 would limit the device claims to covering electronic devices containing liquid dielectric 12 material—which would not function. To avoid this result, Defendants could have argued 13 that their proposal covers devices with dielectric material that was at some time in the past 14 in a liquid state of matter. But they have not, because this would also encompass the 15 accused products. If Defendants’ construction was intended to simply reflect the 16 unremarkable point that solid content is delivered by mixing those particles into a liquid, 17 this would not actually provide Defendants with a non-infringement argument. 18 Although it is far from clear based only on the words of their proposed construction, 19 Defendants’ true aim appears to be that the Court read into the claims the additional, 20 unclaimed step of applying a dielectric material while it is in a liquid state of matter during 21 the manufacturing process. As explained, such a construction would be improper, at least 22 because the patents are explicitly agnostic as to any particular method of dielectric 23 application (the invention covers a different aspect of manufacturing multilayered devices), 24 the intrinsic record contains no evidence of clear and unmistakable disavowal limiting the 25 claims in this way, and the extrinsic evidence undermines Defendants’ purported 26 justifications. 27 28-4-29 30 Case 2:16-cv-02026-DGC Document 226 Filed 08/02/17 Page 6 of 8 1 Ultimately, if the Court were to adopt Defendants’ proposed construction without 2 addressing this liquid application issue, the parties will inevitably dispute the impact the 3 construction should have on the case. If simply adopted, the jury will be presented with a 4 claim construction that, taken literally, makes no sense for the device claims. For the 5 method claims, Defendants may seize upon the word "liquid" to argue that dry film 6 application processes are excluded from the claims, and the parties will be forced to re-7 argue the impact of this construction via additional Markman briefing to avoid O2 Micro 8 issues at trial. If the Court does import a liquid application limitation into the claim 9 language, Defendants may seek summary judgment of non-infringement as to twenty-two 10 of the asserted claims, at which point the parties will be required to re-argue the import of 11 the new limitation before the Court. 12 Continental Circuits’ proposal is again consistent with the actual claim language and 13 captures the proper scope of the inventions, i.e., it does not add additional, unclaimed 14 process steps into any of the claims. As to jury considerations, Continental Circuits’ 15 proposal does not invoke illogical ambiguity into the device claims and would not require 16 explaining that an additional but unclaimed process limitation should be considered for 17 infringement. As with Category I, because Continental Circuits’ proposals are not based on 18 litigation strategy, they are not case dispositive. By adhering to the plain and ordinary 19 meaning of the claim language, the parties and their experts will present evidence on the 20 merits of infringement and validity based on the claim language of the patents; no further 21 Markman briefing should be necessary and improper claim construction argumentation at 22 trial can be avoided. 23 III. CATEGORY III TERMS 24 Continental Circuits’ proposed constructions for these terms provide clear, concise 25 explanations as to the scope of the terms. If the Court adopts these proposals, they can be 26 readily understood by a jury. 27 28-5-29 30 Case 2:16-cv-02026-DGC Document 226 Filed 08/02/17 Page 7 of 8 1 In contrast, Defendants propose that the jury be instructed to compare the accused 2 products to several paragraphs of the specification. This approach will inevitably lead to 3 disagreements over claim scope and how the experts should offer testimony for these claim 4 limitations. At present, Defendants have identified only two areas where the parties 5 disagree over claim scope: they propose that all of the means plus function claims require 6 that 20% of the teeth have a depth of 1-2 tenths of a millimeter and a frequency of 5,000 7 teeth per linear inch, and Plaintiff disagrees. If those really were the only disputes, the 8 Court could resolve them and the parties would have time to develop evidence for trial to 9 determine whether the accused products meet those limitations. However, if Continental 10 Circuits presents evidence that the accused products meet those limitations, it is highly 11 likely that Defendants would shift tactics and find some other word or phrase in this 12 lengthy specification excerpt to serve as the basis for a new non-infringement argument. 13 Indeed, Defendants’ true goal here appears to be to obtain a construction that would be so 14 cumbersome to address in a jury trial that it will needlessly complicate Continental 15 Circuits’ case-in-chief. 16 IV. INDEFINITENESS ARGUMENTS 17 Defendants contend that all but a handful of the asserted claims are indefinite. 18 Tellingly, the only claims Defendants have not argued are indefinite are those of the'912 19 patent, which has a narrow damages window due to its issue date. Defendants must prevail 20 as to their "sample," "upgrade slope," and "peel strength" arguments to invalidate all of the 21 claims of the'582 patent, and they must prevail on their "substantially greater" argument to 22 invalidate all of the claims of the'560 and'105 claims. Should the Court find any terms are 23 indefinite, it would amount to a summary judgment of invalidity as to those claims. 24 25 26 27 28-6-29 30 Case 2:16-cv-02026-DGC Document 226 Filed 08/02/17 Page 8 of 8 1 Dated this 2nd day of August, 2017. 2 3 CALDWELL CASSADY CURRY P.C 4 By/s/Bradley W. Caldwell (pro hac vice) 5 6 Bradley W. Caldwell (pro hac vice) Jason D. Cassady (pro hac vice) 7 J. Austin Curry (pro hac vice) Warren J. McCarty (pro hac vice) 8 2101 Cedar Springs Rd., Suite 1000 Dallas, Texas 75201 9 Telephone: (214) 888-4848 Facsimile: (214) 888-4849 10 Email: bcaldwell@caldwellcc.com Email: jcassady@caldwellcc.com 11 Email: acurry@caldwellcc.com Email: wmccarty@caldwellcc.com 12 AIKEN SCHENK HAWKINS & RICCIARDI P.C. 13 Joseph A. Schenk – 009260 2390 East Camelback Road, Suite 400 14 Phoenix, Arizona 85016 Telephone: (602) 248-8203 15 Facsimile: (602) 248-8840 E-Mail: docket@ashrlaw.com 16 E-Mail: jas@ashrlaw.com 17 ATTORNEYS FOR PLAINTIFF 18 CONTINENTAL CIRCUITS, LLC 19 CERTIFICATE OF SERVICE 20 The undersigned certifies that all counsel of record who have consented to electronic 21 service are being served with a copy of the foregoing document via the Court’s CM/ECF 22 system on this 2nd day of August, 2017 23/s/Bradley W. Caldwell (pro hac vice) 24 Bradley W. Caldwell 25 26 27 28-7-29 30

MEMORANDUM (Redacted Version) CONTINENTAL CIRCUITS LLCS CLAIM CONSTRUCTION MEMORANDUM PER ORDER DKT. NO. 224 224 Order by Plaintiff Continental Circuits LLC.

Case 2:16-cv-02026-DGC Document 230 Filed 08/03/17 Page 1 of 8 1 AIKEN SCHENK HAWKINS & RICCIARDI P.C. Joseph A. Schenk – 009260 2 2390 East Camelback Road, Suite 400 Phoenix, Arizona 85016 3 Telephone: (602) 248-8203 Facsimile: (602) 248-8840 4 E-Mail: docket@ashrlaw.com E-Mail: jas@ashrlaw.com 5 Joseph A. Schenk – 009260 6 CALDWELL CASSADY CURRY P.C. Bradley W. Caldwell (pro hac vice) 7 Jason D. Cassady (pro hac vice) J. Austin Curry (pro hac vice) 8 Warren J. McCarty (pro hac vice) 2101 Cedar Springs Rd., Suite 1000 9 Dallas, Texas 75201 Telephone: (214) 888-4848 10 Facsimile: (214) 888-4849 Email: bcaldwell@caldwellcc.com 11 Email: jcassady@caldwellcc.com Email: acurry@caldwellcc.com 12 Email: wmccarty@caldwellcc.com 13 Attorneys for Plaintiff Continental Circuits, LLC 14 IN THE UNITED STATES DISTRICT COURT 15 FOR THE DISTRICT OF ARIZONA 16 Continental Circuits LLC, CASE NO. CV-16-2026-PHX-DGC 17 Plaintiff, 18 CONTINENTAL CIRCUITS LLC’S v. CLAIM CONSTRUCTION 19 MEMORANDUM PER ORDER DKT. Intel Corp., Ibiden U.S.A. NO. 224 20 Corp., Ibiden Co., Ltd., 21 Defendants. 22 23 24 25 26 27 28 29 30 Case 2:16-cv-02026-DGC Document 230 Filed 08/03/17 Page 2 of 8 1 Plaintiff Continental Circuits LLC ("Continental Circuits") offers this memorandum 2 in accordance with the Court’s July 28, 2017 Order (Dkt. No. 224). Continental Circuits has 3 attempted to assess the practical effect that the parties’ competing proposals would have on 4 the merits of the case without re-arguing the substance of those proposals. The fact is, 5 however, Continental Circuits simply proposes that the Court refrain from re-writing the 6 claims language or invalidating the claims. Defendants are seeking constructions that re-7 draft the claims to create or support their non-infringement positions, and they also seek to 8 invalidate all of the claims that have a significant damages window under 35 U.S.C. § 284. 9 At the same time, they have not yet provided any technical witnesses for deposition, 10 allowed inspection of their manufacturing facilities, or provided substrates for rigorous 11 testing. Thus, Continental Circuits can partially identify the impact of Defendants’ 12 proposals, but there may also be additional unforeseen effects. One certain consequence of 13 adopting Defendants’ Category I, II, and III proposals, however, is continued claim scope 14 disputes. Because Defendants ask to fundamentally alter all thirty-two asserted claims with 15 new language and limitations, adoption of those proposals will likely require the parties to 16 re-argue the scope of the new, re-written claims before trial. 17 I. CATEGORY I TERMS 18 Continental Circuits proposes that these terms be given their plain and ordinary 19 meaning because the claim language contains terms that can be understood by a jury and a 20 person of ordinary skill in the art. In circumstances where there is no disclaimer or 21 disavowal, as is the case here, that is the function of the proper application of claim 22 construction law. See, e.g., Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 23 1365 (Fed. Cir. 2012). If the Court confirms that it need not re-write the claim language, the 24 jury will be tasked with comparing the claim language with the accused products and any 25 asserted prior art references. For example, for claims that require "etching," the jury will be 26 asked to determine whether Defendants employ etching. For claims that cover devices with 27 the patented tooth structure, the jury need not consider the specific manufacturing steps 28-1-29 30 Case 2:16-cv-02026-DGC Document 230 Filed 08/03/17 Page 3 of 8 1 Defendants employ, but will instead compare the accused products with the claimed 2 structure limitations. The parties will present evidence and likely expert testimony to assist 3 the jury in making those determinations, but the jury instructions and analysis of the merits 4 will be rooted in the claim language of each of the different claims, and the differences 5 among those claims, rather than analyzing all claims through the lens of a single, narrow 6 embodiment. 7 In contrast, Defendants have asked the Court to lump together seven distinct phrases 8 that use deliberately varied or altogether different language and tack onto each of these 9 different phrases a "repeated desmear" requirement. The seven phrases were apparently 10 (and strategically) selected by Defendants because they touch on all thirty-two asserted 11 claims. In other words, by baking into every single claim a new "repeated desmear" 12 requirement, Defendants would presumably pursue a blanket, all-encompassing non-13 infringement theory by arguing that they perform something less than two full desmear 14 processes, which no asserted claim even requires. If the Court adopts Defendants’ proposal, 15 Defendants could deploy their preferred construction as grounds to argue non-infringement 16 in a motion for summary judgment or at trial. The end result on the question of 17 infringement would be far from clear, however. Defendants have not yet specified all of 18 their precise manufacturing processes for each of the accused products, and Defendants’ 19 proposal will likely lead to further disputes and confusion rather than the clear non-20 infringement victory they seek. 21 For example, if the Court imports a "repeated desmear" limitation into all of the 22 claims, the parties will likely dispute what the term "repeated desmear" means, and whether 23 this limitation requires repeating the exact same steps in the exact same order for the exact 24 same amount of time, or whether it merely requires repeating some of the steps. This will 25 provoke one of two problematic scenarios. One scenario is that the parties submit an 26 entirely new round of claim construction briefing for the Court to address the meaning of 27 the phrase "repeated desmear," and what it means to repeat a desmear, as even Defendants 28-2-29 30 Case 2:16-cv-02026-DGC Document 230 Filed 08/03/17 Page 4 of 8 1 have not offered any clear definition for this term. An alternative and more troubling 2 scenario is that adoption of Defendants’ proposal will invite them to engage in haphazard 3 claim construction argumentation at trial before the jury on the meaning of "repeated 4 desmear"—something that the Federal Circuit has strictly prohibited. O2 Micro Int’l Ltd. v. 5 Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008). 6 Defendants’ proposal also presents a challenge for instructing the jury on how to 7 analyze infringement and validity. Many of the asserted independent claims require 8 "etching," and the dependent claims further require a first and second etching. See, e.g., 9'560 Patent at claims 14 and 19. Should the Court read into all of these claims the "repeated 10 desmear" refrain, the Court and the jury will be required to untangle the web created by 11 independent claims, which now require a repeated desmear, and dependent claims, which 12 now recite the repetition of that already repeated desmear—all while reading patent claims 13 which require only that an "etch" be performed. 14 Ultimately, Continental Circuits’ proposal is consistent with the intentions of the 15 inventors, captures the proper scope of their inventions rooted in the actual claim language, 16 and does not improperly limit each and every claim to a single embodiment for litigation-17 inspired purposes. Thus, it avoids the practical problems that would result from 18 Defendants’ proposals. And since Continental Circuits’ proposals are not based on case 19 strategy, such as baking infringement or validity arguments into claim constructions, they 20 are not case dispositive. Instead, by adhering to the plain and ordinary meaning of the claim 21 language, the parties and their experts will present evidence on the merits of infringement 22 and validity based on that claim language; no further Markman briefing should be 23 necessary and improper claim construction argumentation at trial can be avoided. 24 II. CATEGORY II TERMS 25 As with the category I terms, Continental Circuits proposes that these terms be given 26 their plain and ordinary meaning as they can already be understood by a jury and a person 27 of ordinary skill in the art. There does not appear to be any fact dispute that the accused 28-3-29 30 Case 2:16-cv-02026-DGC Document 230 Filed 08/03/17 Page 5 of 8 1 products 2 3 4 5 6 7 Defendants have asked the Court to adjoin all variations of the phrase "dielectric 8 material delivered with solid content" with the concept of "in a liquid." But as explained in 9 Continental Circuits’ responsive briefing, Defendants have not been up front about the 10 reasoning behind, and the impact of, this proposal. Taken literally, Defendants’ proposal 11 would limit the device claims to covering electronic devices containing liquid dielectric 12 material—which would not function. To avoid this result, Defendants could have argued 13 that their proposal covers 14. But they have not, because this would also encompass the 15 accused products. If Defendants’ construction was intended to simply reflect the 16 unremarkable point that, 17 this would not actually provide Defendants with a non-infringement argument. 18 Although it is far from clear based only on the words of their proposed construction, 19 Defendants’ true aim appears to be that the Court read into the claims the additional, 20 unclaimed step of applying a dielectric material while it is in a liquid state of matter during 21 the manufacturing process. As explained, such a construction would be improper, at least 22 because the patents are explicitly agnostic as to any particular method of dielectric 23 application (the invention covers a different aspect of manufacturing multilayered devices), 24 the intrinsic record contains no evidence of clear and unmistakable disavowal limiting the 25 claims in this way, and the extrinsic evidence undermines Defendants’ purported 26 justifications. 27 28-4-29 30 Case 2:16-cv-02026-DGC Document 230 Filed 08/03/17 Page 6 of 8 1 Ultimately, if the Court were to adopt Defendants’ proposed construction without 2 addressing this liquid application issue, the parties will inevitably dispute the impact the 3 construction should have on the case. If simply adopted, the jury will be presented with a 4 claim construction that, taken literally, makes no sense for the device claims. For the 5 method claims, Defendants may seize upon the word "liquid" to argue that 6 are excluded from the claims, and the parties will be forced to re-7 argue the impact of this construction via additional Markman briefing to avoid O2 Micro 8 issues at trial. If the Court does import a liquid application limitation into the claim 9 language, Defendants may seek summary judgment of non-infringement as to twenty-two 10 of the asserted claims, at which point the parties will be required to re-argue the import of 11 the new limitation before the Court. 12 Continental Circuits’ proposal is again consistent with the actual claim language and 13 captures the proper scope of the inventions, i.e., it does not add additional, unclaimed 14 process steps into any of the claims. As to jury considerations, Continental Circuits’ 15 proposal does not invoke illogical ambiguity into the device claims and would not require 16 explaining that an additional but unclaimed process limitation should be considered for 17 infringement. As with Category I, because Continental Circuits’ proposals are not based on 18 litigation strategy, they are not case dispositive. By adhering to the plain and ordinary 19 meaning of the claim language, the parties and their experts will present evidence on the 20 merits of infringement and validity based on the claim language of the patents; no further 21 Markman briefing should be necessary and improper claim construction argumentation at 22 trial can be avoided. 23 III. CATEGORY III TERMS 24 Continental Circuits’ proposed constructions for these terms provide clear, concise 25 explanations as to the scope of the terms. If the Court adopts these proposals, they can be 26 readily understood by a jury. 27 28-5-29 30 Case 2:16-cv-02026-DGC Document 230 Filed 08/03/17 Page 7 of 8 1 In contrast, Defendants propose that the jury be instructed to compare the accused 2 products to several paragraphs of the specification. This approach will inevitably lead to 3 disagreements over claim scope and how the experts should offer testimony for these claim 4 limitations. At present, Defendants have identified only two areas where the parties 5 disagree over claim scope: they propose that all of the means plus function claims require 6 that 20% of the teeth have a depth of 1-2 tenths of a millimeter and a frequency of 5,000 7 teeth per linear inch, and Plaintiff disagrees. If those really were the only disputes, the 8 Court could resolve them and the parties would have time to develop evidence for trial to 9 determine whether the accused products meet those limitations. However, if Continental 10 Circuits presents evidence that the accused products meet those limitations, it is highly 11 likely that Defendants would shift tactics and find some other word or phrase in this 12 lengthy specification excerpt to serve as the basis for a new non-infringement argument. 13 Indeed, Defendants’ true goal here appears to be to obtain a construction that would be so 14 cumbersome to address in a jury trial that it will needlessly complicate Continental 15 Circuits’ case-in-chief. 16 IV. INDEFINITENESS ARGUMENTS 17 Defendants contend that all but a handful of the asserted claims are indefinite. 18 Tellingly, the only claims Defendants have not argued are indefinite are those of the'912 19 patent, which has a narrow damages window due to its issue date. Defendants must prevail 20 as to their "sample," "upgrade slope," and "peel strength" arguments to invalidate all of the 21 claims of the'582 patent, and they must prevail on their "substantially greater" argument to 22 invalidate all of the claims of the'560 and'105 claims. Should the Court find any terms are 23 indefinite, it would amount to a summary judgment of invalidity as to those claims. 24 25 26 27 28-6-29 30 Case 2:16-cv-02026-DGC Document 230 Filed 08/03/17 Page 8 of 8 1 Dated this 3rd day of August, 2017. 2 3 CALDWELL CASSADY CURRY P.C 4 By/s/Bradley W. Caldwell (pro hac vice) 5 6 Bradley W. Caldwell (pro hac vice) Jason D. Cassady (pro hac vice) 7 J. Austin Curry (pro hac vice) Warren J. McCarty (pro hac vice) 8 2101 Cedar Springs Rd., Suite 1000 Dallas, Texas 75201 9 Telephone: (214) 888-4848 Facsimile: (214) 888-4849 10 Email: bcaldwell@caldwellcc.com Email: jcassady@caldwellcc.com 11 Email: acurry@caldwellcc.com Email: wmccarty@caldwellcc.com 12 AIKEN SCHENK HAWKINS & RICCIARDI P.C. 13 Joseph A. Schenk – 009260 2390 East Camelback Road, Suite 400 14 Phoenix, Arizona 85016 Telephone: (602) 248-8203 15 Facsimile: (602) 248-8840 E-Mail: docket@ashrlaw.com 16 E-Mail: jas@ashrlaw.com 17 ATTORNEYS FOR PLAINTIFF 18 CONTINENTAL CIRCUITS, LLC 19 CERTIFICATE OF SERVICE 20 The undersigned certifies that all counsel of record who have consented to electronic 21 service are being served with a copy of the foregoing document via the Court’s CM/ECF 22 system on this 3rd day of August, 2017 23/s/Bradley W. Caldwell (pro hac vice) 24 Bradley W. Caldwell 25 26 27 28-7-29 30

Joint MOTION to Seal Document {{226}} Memorandum Continental Circuits LLC's Claim Construction Memorandum Per Order Dkt. No. 224 by Continental Circuits LLC.

Case 2:16-cv-02026-DGC Document 231 Filed 08/03/17 Page 1 of 4 1 Joseph A. Schenk (State Bar No. 009260) Chad S. Campbell (State Bar No. 012080) AIKEN SCHENK HAWKINS & CSCampbell@perkinscoie.com 2 RICCIARDI P.C. PERKINS COIE LLP 2390 East Camelback Road, Suite 400 2901 N. Central Avenue, Suite 2000 3 Phoenix, Arizona 85016 Phoenix, AZ 85012 4 Telephone: (602) 248-8203 Telephone: (602) 351-8000 Fascimile: (602) 248-88840 Facsimile: (602) 648-7000 5 Bradley W. Caldwell (pro hac vice) William F. Lee (pro hac vice) 6 bcaldwell@caldwellcc.com William.Lee@wilmerhale.com 7 Jason D. Cassady (pro hac vice) Joseph J. Mueller (pro hac vice) jcassady@caldwellcc.com Joseph.Mueller@wilmerhale.com 8 J. Austin Curry (pro hac vice) WILMER CUTLER PICKERING HALE acurry@caldwellcc.com AND DORR LLP 9 Warren J. McCarty (pro hac vice) 60 State Street 10 wmccarty@caldwellcc.com Boston, MA 02109 CALDWELL CASSADY CURRY P.C. Telephone: (617) 526-6000 11 2101 Cedar Springs Rd., Suite 1000 Facsimile: (617) 526-5000 Dallas, Texas 75201 12 Telephone: (214) 888-4848 Nina S. Tallon (pro hac vice) Facsimile: (214) 888-4849 Nina.Tallon@wilmerhale.com 13 WILMER CUTLER PICKERING HALE 14 AND DORR LLP 1875 Pennsylvania Ave., NW 15 Washington, DC 20006 Telephone: (202) 663-6000 16 Facsimile: (202) 663-6363 17 Attorneys for Plaintiff Attorneys for Defendants Intel Corp., 18 Continental Circuits, LLC Ibiden U.S.A. Corp., and Ibiden Co., Ltd. 19 IN THE UNITED STATES DISTRICT COURT 20 FOR THE DISTRICT OF ARIZONA 21 Continental Circuits LLC, 22 Case No. CV-16-2026-PHX-DGC Plaintiff, 23 JOINT MOTION TO SEAL v. PORTIONS OF PLAINTIFF’S 24 Intel Corporation; SUPPLEMENTAL MARKMAN 25 Ibiden U.S.A. Corporation; and BRIEF REGARDING THE Ibiden Co. Ltd. PARTIES’ PROPOSED 26 CONSTRUCTIONS Defendants. 27 28 Case 2:16-cv-02026-DGC Document 231 Filed 08/03/17 Page 2 of 4 1 Pursuant to Civil Local Rule 5.6, Plaintiff Continental Circuits LLC ("Continental 2 Circuits") and Defendants Intel Corporation, Ibiden U.S.A. Corporation, and Ibiden Co. 3 Ltd. hereby jointly request an Order sealing portions of Plaintiff’s Supplemental Markman 4 Brief Regarding the Parties’ Proposed Constructions ("Supplemental Brief"). 5 The parties respectfully request sealing these portions of the Supplemental Brief 6 because they disclose information that Defendants have designated as "Confidential" under 7 the Protective Order entered in this case. This Motion is based on the following 8 Memorandum of Points and Authorities. 9 MEMORANDUM OF POINTS AND AUTHORITIES 10 I. STATEMENT OF FACTS 11 On July 28, 2017, the Court issued an Order requesting that the parties submit 12 supplemental briefs "explaining the effect that their proposed constructions (or 13 indefiniteness arguments) would have on the merits of this case." (Dkt. 224.) In response, 14 Plaintiff has set forth in their Supplemental Brief certain information related to the accused 15 products that Defendants consider Confidential under the agreed protective order. 16 II. ARGUMENT 17 Parties may file documents under seal if good cause or compelling reasons for 18 sealing are shown. See, e.g., Kamakana v. City & County of Honolulu, 447 F.3d 1172, 19 1180 (9th Cir. 2006). The Ninth and Federal Circuits have both found that sealing is 20 justified—and the public’s interest in access is outweighed—when public disclosure of a 21 party’s confidential information would result in competitive harm or the disclosure of trade 22 secrets. See id. at 1178-80; Apple Inc. v. Samsung Elecs. Co., 727 F.3d 1214, 1222 (Fed. 23 Cir. 2013); In re Electronic Arts, 298 F. App’x 568, 569-70 (9th Cir. 2008) (citing 24 Restatement of Torts definition of "trade secret" and further noting that "compelling 25 reasons" may exist if sealing is required to prevent judicial documents from being used "as 26 sources of business information that might harm a litigant’s competitive standing" (citation 27 omitted)). Consistent with this, Federal Rule of Civil Procedure 26(c)(1) states that a court 28 may, "for good cause, issue an order to protect a party or person from annoyance,-2-Case 2:16-cv-02026-DGC Document 231 Filed 08/03/17 Page 3 of 4 1 embarrassment, oppression, or undue burden or expense" by, among other things, 2 "requiring that a trade secret or other confidential research, development, or commercial 3 information not be revealed or be revealed only in a specified way[.]" Fed. R. Civ. P. 4 26(c)(1)(G); see also LRCiv 5.6. 5 Here, there is good cause to permit filing portions of the Supplemental Brief under 6 seal. These portions contain information regarding technical aspects of Defendants’ 7 accused products that Defendants have designated "Confidential," that would "have 8 economic value to others," and that are "not generally known by others and [] not readily 9 ascertainable by proper means." See MMI, Inc. v. Baja, Inc., 743 F. Supp. 2d 1101, 1106 10 (D. Ariz. 2010). The public disclosure of this information would result in competitive harm 11 to Defendants. Furthermore, the sealing of these portions of the Supplemental Brief will 12 have little effect on the public’s ability to understand the judicial process, both because this 13 is not a dispositive motion and because the information is not necessary to understand the 14 Supplemental Brief as a whole. See Kamakana, 447 F.3d at 1179. 15 III. CONCLUSION 16 Because good cause and compelling reasons for sealing exist, the parties respectfully 17 request that the Court enter the proposed order. 18 19 DATED this 3rd day of August, 2017. 20 Respectfully submitted, 21 By:/s/Warren J. McCarty By:/s/Joseph J. Mueller 22 Joseph A. Schenk (State Bar No. 009260) Chad S. Campbell (State Bar No. 012080) 23 AIKEN SCHENK HAWKINS & CSCampbell@perkinscoie.com RICCIARDI P.C. PERKINS COIE LLP 24 2390 East Camelback Road, Suite 400 2901 N. Central Avenue, Suite 2000 Phoenix, Arizona 85016 Phoenix, AZ 85012 25 Telephone: (602) 248-8203 Telephone: (602) 351-8000 26 Fascimile: (602) 248-88840 Facsimile: (602) 648-7000 27 Bradley W. Caldwell (pro hac vice) William F. Lee (pro hac vice) 28 bcaldwell@caldwellcc.com William.Lee@wilmerhale.com Jason D. Cassady (pro hac vice) Joseph J. Mueller (pro hac vice)-3-Case 2:16-cv-02026-DGC Document 231 Filed 08/03/17 Page 4 of 4 1 jcassady@caldwellcc.com Joseph.Mueller@wilmerhale.com J. Austin Curry (pro hac vice) WILMER CUTLER PICKERING HALE AND 2 acurry@caldwellcc.com DORR LLP 3 Warren J. McCarty (pro hac vice) 60 State Street wmccarty@caldwellcc.com Boston, MA 02109 4 CALDWELL CASSADY CURRY P.C. Telephone: (617) 526-6000 5 2101 Cedar Springs Rd., Suite 1000 Facsimile: (617) 526-5000 Dallas, Texas 75201 6 Telephone: (214) 888-4848 Nina S. Tallon (pro hac vice) Facsimile: (214) 888-4849 Nina.Tallon@wilmerhale.com 7 WILMER CUTLER PICKERING HALE AND 8 Attorneys for Plaintiff DORR LL Continental Circuits, LLC 1875 Pennsylvania Ave., NW 9 Washington, DC 20006 10 Telephone: (202) 663-6000 Facsimile: (202) 663-6363 11 Attorneys for Defendants Intel Corp., 12 Ibiden U.S.A. Corp., and Ibiden Co., Ltd. 13 14 15 16 CERTIFICATE OF SERVICE 17 The undersigned certifies that all counsel of record who have consented to electronic 18 service are being served with a copy of the foregoing document via the Court’s CM/ECF 19 system on this 3rd day of August, 2017. 20/s/Warren J. McCarty III (pro hac vice) 21 Warren J. McCarty III 22 23 24 25 26 27 28-4-

*ORDER granting the parties' motions to seal (Docs. {{190}}, {{201}}, {{202}}, {{227}}, {{231}}) are granted. The Clerk is directed to accept for filing under seal the documents lodged on the Court's docket as Docs. {{191}}, {{203}}, {{204}}, {{226}}, and {{228}}. Signed by Judge David G Campbell on 8/3/2017. (ATD) *Modified on 8/3/2017 to unseal; inadvertently filed under sealed event

Case 2:16-cv-02026-DGC Document 233 Filed 08/03/17 Page 1 of 1 1 2 3 4 5 6 IN THE UNITED STATES DISTRICT COURT 7 FOR THE DISTRICT OF ARIZONA 8 9 Continental Circuits LLC, No. CV-16-02026-PHX-DGC 10 Plaintiff, ORDER 11 v. 12 Intel Corporation, et al., 13 Defendants. 14 15 16 Pending before the Court are motions to seal presented by all parties. Docs. 190, 17 201, 202, 227, 231. 18 IT IS ORDERED that the parties’ motions to seal (Docs. 190, 201, 202, 227, 19 231) are granted. The Clerk is directed to accept for filing under seal the documents 20 lodged on the Court’s docket as Docs. 191, 203, 204, 226, and 228. 21 Dated this 3rd day of August, 2017. 22 23 24 25 26 27 28

TRANSCRIPT REQUEST Claim Construction Hearing by Continental Circuits LLC for proceedings held on 8/4/2017, Judge David G Campbell hearing judge(s).

2AO 435 Case 2:16-cv-02026-DGC Document Administrative Office of the 240 Filed 08/05/17 Page United States Courts 1 of 1USE ONLY FOR COURT AZ Form (Rev.) DUE DATE: TRANSCRIPT ORDER 1. NAME 2. PHONE NUMBER 3. DATE Bradley W. Caldwell (pro hac vice) 214-888-4848 8/5/2017 4. FIRM NAME Caldwell Cassady Curry P.C. 5. MAILING ADDRESS 6. CITY 7. STATE 8. ZIP CODE 2101 Cedar Springs Road, Ste. 1000 Dallas TX 75201 9. CASE NUMBER 10. JUDGE DATES OF PROCEEDINGS 2:16-cv-02026-DGC David G. Campbell 11. 8/4/2017@8:31 am 12. 13. CASE NAME LOCATION OF PROCEEDINGS Continental Circuits, LLC v. Intel Corp., et. al. 14. Phoenix 15. STATE AZ 16. ORDER FOR APPEAL CRIMINAL CRIMINAL JUSTICE ACT BANKRUPTCY NON-APPEAL ✔ CIVIL IN FORMA PAUPERIS OTHER 6SHFLI\ 17. TRANSCRIPT REQUESTED (Specify portion(s) and date(s) of proceeding(s) for which transcript is requested) PORTIONS DATE(S) PORTION(S) DATE(S) VOIR DIRE TESTIMONY (6SHFLI\ OPENING STATEMENT (Plaintiff) OPENING STATEMENT (Defendant) CLOSING ARGUMENT (Plaintiff) PRE-TRIAL PROCEEDING CLOSING ARGUMENT (Defendant) OPINION OF COURT JURY INSTRUCTIONS ✔ OTHER (6SHFLI\) SENTENCING Claim Construction Hr'g 8/4/2017 BAIL HEARING 18. ORDER ORIGINAL + 1 FIRST # OF DELIVERY INSTRUCTIONS CATEGORY (original to Court, ADDITIONAL ESTIMATED COSTS COPY (&heck all that apply) copy to ordering party) COPIES 30 DAYS PAPER COPY 14 DAYS ✔ 3') H PDLO 7 DAYS ✔ $6&,, H PDLO DAILY HOURLY REALTIME E-MAIL ADDRESS CERTIFICATION (19. & 20.) continental@caldwellcc.com By signing below, I certify that I will pay all charges (deposit plus additional). 19. SIGNATURE NOTE: IF ORDERING 025(7+$1 21()250$7, s/Bradley W. Caldwell (pro hac vice) THERE WILL BE AN ADDITIONAL CHARGE. 20. DATE 8/5/2017 TRANSCRIPT TO BE PREPARED BY ESTIMATE TOTAL PROCESSED BY PHONE NUMBER ORDER RECEIVED DATE BY DEPOSIT PAID DEPOSIT PAID TRANSCRIPT ORDERED TOTAL CHARGES TRANSCRIPT RECEIVED LESS DEPOSIT ORDERING PARTY NOTIFIED TOTAL REFUNDED TO PICK UP TRANSCRIPT PARTY RECEIVED TRANSCRIPT TOTAL DUE DISTRIBUTION: COURT COPY TRANSCRIPTION COPY ORDER RECEIPT ORDER COPY

TRANSCRIPT REQUEST by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation for proceedings held on 08/04/2017, Judge David G Campbell hearing judge(s).

Case 2: 16-cv-02026-DGC Document 242 Filed 08/08/17 Page 1 of 1 OAO 435 AZ Form (Rev. M/2015 Administrative Office of the United States Courts FOR COURT USE ONLY DUE DATE: TRANSCRIPT ORDER Chad S. Campbell 2. PHONE NUMBER 4. FIRM NAME Perkins Coie LLP S MATH NO ADDRES 2901 N. Central Avenue Suite 2000 cN Phoenix' A' " " AHOR ERPOvonzo Dec 10 updf David G. Campbell in a 207 Oda Pan omerton Ad-4. Phoenix 16. ORDER FOR O APPEAL O NON-APPEAL U CRIMINAL CIVIL D CRIMINAL JUSTICE ACT U IN FORMA PAUPERIS O BANKRUPTCY OTHER (Specify) 17. TRANSCRIPT REQUESTED (Specify portion(s) and date(s) of proceeding(s) for which transcript is requested.) PORTIONS DATECS) PORTIONS) D DIRE D D TESTIMONY (Specify) D OPENING STATEMENT (Plaintify D OPENING STATEMENT (Defendant) LU CLOSING ARGUMENT (Plaintiff) D PRE-TRIAL PROCEEDING D CLOSING ARGUMENT (Defendant) D OPINION OF O DO JURY INSTRUCTIONS NZ OTHER (Specify) D SENTENCING Claim Construction Hr g D BAIL HEARING DATECS) O COURT 8/4/2017 8. ORDER DELIVERY INSTRUCTIONS ADDITIONAL ESTIMATED COSTS 30 DAYS O PAPER COPY O ASch e-ma REALTIME E MAIL ADDRESS CERTIFICATION (19. & 20. By signing below, certify that will pay all charges (deposit plus additional Cscampbell@perkinscoie.com 9. SIGNATURE s/Chad S. Campbell NOTE: IF ORDERING MORE THAN ONE FORMAT THERE WILL BE AN ADDITIONAL CHARGE. 20. DATE 8/8/2017 TRANSCRIPT TO BE PREPARED BY ESTIMATE TOTAL PROCESSED BY PHONE NUMBER ORDER RECEIVED DEPOSIT PAID TRANSCRIPT ORDERED t TOTAL CHARGES TRANSCRIPT RECEIVED LESS DEPOSIT ORDERING PARTY NOTIFIED TO PICK UP TRANSCRIPT TOTAL REFUNDED PARTY RECEIVED TRANSCRIPT DISTRIBUTION frora, due court coPY TRANSCRIPTION COPY ORDER RECEIPT ORDER COPY

ORDER re: {{189}}, {{188}} Markman Briefing and hearing. See Order for additional detail. Signed by Judge David G Campbell on 8/9/2017.

Case 2:16-cv-02026-DGC Document 243 Filed 08/09/17 Page 1 of 30 1 WO 2 3 4 5 6 IN THE UNITED STATES DISTRICT COURT 7 FOR THE DISTRICT OF ARIZONA 8 9 Continental Circuits LLC, No. CV16-2026 PHX DGC 10 Plaintiff, ORDER 11 v. 12 Intel Corporation, et al., 13 Defendants. 14 15 16 Plaintiff Continental Circuits LLC asserts claims for patent infringement against 17 Defendants Ibiden U.S.A. Corp., Ibiden Co. Ltd., and Intel Corp. The Court held a 18 Markman hearing on August 4, 2017. This order will set forth the Court’s ruling on the 19 issues addressed during the hearing and in the parties’ briefs. 20 I. Background. 21 Defendant Ibiden produces layered electronic devices at its facilities overseas. See 22 Doc. 133, ¶¶ 51, 110.1 These layered devices are used in computer electronics, including 23 computer processors manufactured by Defendant Intel. See id., ¶¶ 49-51. 24 The devices are made of alternating layers of conductive and non-conductive 25 materials. See id., ¶ 29. When adhesion between the layers is poor, the layers can 26 separate, creating problems for or failure of the electronic product in which they are 27 28 1 Page citations are to numbers placed at the top of each page by the Court’s CM/ECF system rather than the document’s original page numbers. Case 2:16-cv-02026-DGC Document 243 Filed 08/09/17 Page 2 of 30 1 incorporated. See id. In the 1990s, four employees of Continental Circuits, Inc., a now-2 defunct circuit-board manufacturer, invented a "novel surface roughening technique" 3 using etching to create a "non-uniformly roughened surface" that allows for stronger 4 adhesion between layers. Id., ¶¶ 28-29, 120. The four co-inventors applied to patent the 5 surface-roughening technology in 1997, and two patents were issued in 2000 and 2004. 6 Id., ¶¶ 12-13. Those patents are not at issue in this case. A continuation application was 7 filed by early 2005, and eventually resulted in the issuance of the four patents that are at 8 issue here: U.S. Patent Nos. 7,501,582 (2009), 8,278,560 (2012), 8,581,105 (2013), and 9 9,374,912 (2016) (collectively, the "patents-in-suit"). See id., ¶¶ 14-17, 35-36. Copies of 10 these patents can be found at Doc. 188-3, Exs. 1-4. 11 Plaintiff Continental Circuits LLC is a non-operating entity that was formed in 12 2016 and owns the patents-in-suit. Doc. 49, at 11 n.8; Doc. 133, ¶ 19. The day after the 13 last of the patents-in-suit was issued, Plaintiff filed this action. See Doc. 1. Plaintiff 14 alleges that Defendants have infringed the patents-in-suit. 15 The parties have filed a joint claim construction statement that identifies the patent 16 terms to be addressed in this order. Doc. 177. The statement identifies three categories 17 of claims to be construed, each of which includes a number of closely related claims 18 found in the patents. Id. It also identifies four terms that Defendants claim are indefinite 19 and therefore invalid. Id. The parties have filed briefs on claim construction. Docs. 20 188, 189, 199, 200. At the Court’s request, the parties filed additional memoranda 21 regarding the ramifications of their claim construction positions. Docs. 225, 230.2 22 II. Legal Standard. 23 A patent includes two basic components: (1) a written description of the invention, 24 referred to as the "specification" of the patent, and (2) the patent claims. The claims 25 define the scope of the invention covered by the patent. Phillips v. AWH Corp., 415 F.3d 26 27 28 2 Some of the parties’ filings are redacted to remove trade secrets. Unredacted versions have been filed under seal at Docs. 234-238.-2-Case 2:16-cv-02026-DGC Document 243 Filed 08/09/17 Page 3 of 30 1 1303, 1312 (Fed. Cir. 2005) (en banc). Claim construction is a matter of law to be 2 decided by the Court. Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). 3 Words of a claim are generally given the ordinary and customary meaning the 4 words would have for a person of ordinary skill in the art at the time of the invention. 5 Phillips, 415 F.3d at 1313. "[T]he person of ordinary skill in the art is deemed to read the 6 claim term not only in the context of the particular claim in which the disputed term 7 appears, but in the context of the entire patent, including the specification." Id. The 8 specification is also highly relevant. The Federal Circuit has characterized it as "the 9 single best guide to the meaning of a disputed term." Id. at 1315 (quotation marks and 10 citation omitted). A court may also consider the patent’s prosecution history. Id. 11 at 1317. "Like the specification, the prosecution history provides evidence of how the 12 PTO and the inventor understood the patent." Id. The claims, specification, and 13 prosecution history are commonly referred to as "intrinsic evidence." 14 Extrinsic evidence may also be used in claim construction. Extrinsic evidence 15 consists of all evidence external to the patent and prosecution history, including expert 16 and inventor testimony, dictionaries, learned treatises, and other patents. Id. Extrinsic 17 evidence is viewed as less reliable than the patent and its prosecution history in 18 determining how to read claim terms. Id. at 1318. 19 III. Category 1 Terms. 20 Category 1 in the parties’ joint claim construction statement concerns a number of 21 claims in the patents-in-suit that address the etching of the dielectric or epoxy layer of an 22 electronic circuit board or comparable device. Doc. 177 at 4-9. Some of the claims 23 simply refer to "etching the epoxy," while others refer to "etching the dielectric 24 material," "removal of a portion of the dielectric material," "removal of some of the 25 dielectric material," "a surface of a layer of a dielectric material," "a surface of a 26 dielectric material," and "a dielectric material comprising a surface." Id. Plaintiff 27 contends that these phrases require no construction. Defendants contend that each phrase 28-3-Case 2:16-cv-02026-DGC Document 243 Filed 08/09/17 Page 4 of 30 1 should be construed to include a requirement that the etching, removal, or modification of 2 the dielectric material be "produced by a repeated desmear process." Id. 3 As Plaintiff correctly notes, Defendants do not contend that the actual words of the 4 claims provide this additional meaning. Rather, Defendants seek to add a limitation to 5 the claims – namely, that the etching or alteration of the dielectric material occur through 6 a repeated desmear process. Because the plain and ordinary meaning of the phrases at 7 issue does not include Defendants’ proposed limitation, Defendants carry a heavy burden. 8 The Federal Circuit has explained that there are only two exceptions to the rule that 9 claims are given their plain and ordinary meaning: "1) when a patentee sets out a 10 definition and acts as his own lexicographer, or 2) when the patentee disavows the full 11 scope of a claim term either in the specification or during prosecution." Thorner v. Sony 12 Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). The standard 13 Defendants must meet for either of these exceptions is "exacting." Id. at 1366. 14 "To act as its own lexicographer, a patentee must'clearly set forth a definition of 15 the disputed claim term’ other than its plain and ordinary meaning." Id. at 1365 (quoting 16 CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). "It is not 17 enough for a patentee to simply disclose a single embodiment or use a word in the same 18 manner in all embodiments, the patentee must'clearly express an intent’ to redefine the 19 term." Id. (quoting Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 20 (Fed. Cir. 2008)). 21 A disavowal also must be "clear and unmistakable." Id. at 1367. "‘Where the 22 specification makes clear that the invention does not include a particular feature, that 23 feature is deemed to be outside the reach of the claims of the patent, even though the 24 language of the claims, read without reference to the specification, might be considered 25 broad enough to encompass the feature in question.’" Id. at 1366 (quoting SciMed Life 26 Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001)). 27 "‘The patentee may demonstrate intent to deviate from the ordinary and accustomed 28 meaning of a claim term by including in the specification expressions of manifest-4-Case 2:16-cv-02026-DGC Document 243 Filed 08/09/17 Page 5 of 30 1 exclusion or restriction, representing a clear disavowal of claim scope.’" Id. (quoting 2 Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002)). 3 After careful review of the patents-in-suit, the Court concludes that Defendants 4 have met the exacting standard required to adopt their proposed limitation. 5 A. The Patents’ Disavowal of Prior Art. 6 The Federal Circuit has found disavowal when a patent "repeatedly disparaged an 7 embodiment as'antiquated,’ having'inherent inadequacies,’ and then detailed the 8'deficiencies [that] make it difficult’ to use." See GE Lighting Solutions, LLC v. 9 AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (quoting Chi. Bd. Options Exch., 10 Inc. v. Int’l Sec. Exch., LLC, 677 F.3d 1361, 1372 (Fed. Cir. 2012)). For example, in 11 Inpro II Licensing, S.A.R.L. v. T-Mobile USA, Inc., 450 F.3d 1350, 1354-55 (Fed. Cir. 12 2006), the Federal Circuit affirmed the construction of "host interface" as a "direct 13 parallel bus interface." The court noted that the only embodiment disclosed was a direct 14 parallel bus interface and that "the specification emphasizes the importance of a parallel 15 connection in solving the problems of the previously used serial connection." Id. This 16 discussion demonstrated "what the inventor has described as the invention." Id. at 1355; 17 see also OpenWave Sys., Inc. v. Apple Inc., 808 F.3d 509, 513-17 (Fed. Cir. 2015) 18 (narrowly construing claim term "mobile device" to exclude communication devices 19 containing a "computer module" based on limiting statements in specification that 20 disparaged prior art communication devices containing such "computer modules"); Fed. 21 Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1305 (Fed. Cir. 22 2011) (limiting scope of syringe "body" to a one-piece body based in part on distinction 23 of prior art syringes composed of multiple pieces); SciMed, 242 F.3d at 1341 (finding 24 disavowal based on disparagement of a particular embodiment and statements that the 25 "present invention" does not include the embodiment). 26 The specification, which is common to all the patents-in-suit, provides this 27 introduction: "The present invention is directed to methods for making or manufacturing 28 an electrical device, and the process, composition, and product thereof. More-5-Case 2:16-cv-02026-DGC Document 243 Filed 08/09/17 Page 6 of 30 1 particularly, the present invention involves such multi-layer electrical devices as circuit 2 boards constructed by joining a dielectric material to a subsequently applied conductive 3 material."'582 Patent at 1:13-18.3 The purpose of the invention is to improve on multi-4 layer electrical devices that "suffer from delamination, blistering, and other reliability 5 problems. This is particularly true when the laminates are subject to thermal stress." Id. 6 at 1:30-32. 7 The specification explains that the patented invention produces a stronger bond 8 between the dielectric layer and the conductive layer by forming teeth in each layer that 9 interlock with each other. "The surface structure is comprised of teeth that are preferably 10 angled or hooked like fangs or canine teeth to enable one layer to mechanically grip a 11 second layer." Id. at 1:54-57. 12 The specification then proceeds to explain the process by which these teeth are 13 formed in the manufacturing of a multi-layer electrical device. Step 6 is the relevant step 14 for purposes of Category 1 claims. Step 6 "involves the etching [of] cavities, veins, 15 openings, or gaps in the applied dielectric material, or more particularly an outermost 16 surface thereof, to accommodate the teeth." Id. at 5:37-40. The process by which layers 17 of dielectric material are prepared for boding to a conductive layer is known as a 18 "desmear" process. The'582 Patent repeatedly distinguishes the process covered by the 19 patent from the prior art and its use of a "single desmear process." Five portions of the 20 specification are particularly relevant. 21 First, the specification explains that "[o]ne technique for forming the teeth is 22 somewhat similar to what has been known as the swell and etch or desmear process, 23 except that contrary to all known teachings in the prior art, in effect, a'double desmear 24 process’ is utilized." Id. at 5:41-44.4 The description then becomes even more specific: 25 "That is, not merely increasing the times and temperatures and other parameters for the 26 3 The parties’ Category 1 arguments all focus on the'582 Patent. The Court will 27 focus on that patent as well. The Court’s citations to portions of a patent throughout this order will include a column number and line numbers, separated by a colon. 28 4 All bolded and italicized emphases in this order have been added by the Court.-6-Case 2:16-cv-02026-DGC Document 243 Filed 08/09/17 Page 7 of 30 1 desmear process, but instead completing the process a first time, and then completing 2 the process a second time." Id. at 5:44-48.5 3 Second, the patent explains that "the desmear process as disclosed herein is 4 contrary to the manufacturer’s specification, i.e., a'double desmear process,’ rather 5 than the single desmear process of the known prior art." Id. at 5:60-63. This statement 6 not only equates the prior art with a "single desmear process," but specifically states that 7 "the desmear process as disclosed herein" is "contrary" to that prior art. 8 Third, the specification explains: 9 the peel strength produced in accordance with the present invention is 10 greater than the [peel] strength produced by the desmear process of the prior art, i.e., a single pass desmear process. For example, if a prior art 11 desmear process is used to produce a 6 lb/in average peel strength, the 12 present invention may produce an average peel strength on the order of 10 lb/in or more. 13 14 Id. at 7:3-9. This statement again equates the prior art with "a single pass desmear 15 process," and states that "the present invention" produces a greater strength than that 16 prior art. 17 Fourth, the patent recommends the use of Probelec XB 7081 for creation of the 18 dielectric layer. The specification contains this explanation: 19 Although Probelec XB 7081 apparently was intended for use in the 20 common desmear (swell and etch) process as used in conventional plated through hole plating lines, Probelec XB 7081 can alternatively be used in 21 carrying out the present invention. For example, the present invention 22 differs from the common desmear process in that sub-steps in the desmear process are repeated as a way of forming the teeth. 23 24 Id. at 8:45-52. This language explains that although Probelec XB 7081 was intended for 25 the prior art process of single desmear, it "can alternatively be used in carrying out the 26 present invention." In other words, the prior art single desmear process is not "the 27 5 Plaintiff emphasizes that this description applies to "[o]ne technique for forming 28 the teeth," arguing that this is only an illustration. The Court will address this argument below.-7-Case 2:16-cv-02026-DGC Document 243 Filed 08/09/17 Page 8 of 30 1 present invention." It also explains precisely how "the present invention" differs from 2 the prior art: "sub-steps in the desmear process are repeated as a way of forming the 3 teeth." 4 Fifth, the specification contains this strong statement: "In stark contrast with the 5 etch and swell process of the known prior art, however, a second pass through the 6 process (sub-steps A through F) is used. The second pass seems to make use of non-7 homogeneities in bringing about a formation of the teeth." Id. at 9:1-9. This language 8 draws a "stark contrast" between the "known prior art" and the current invention’s 9 "second pass through the process." 10 In summary, these statements identify the "swell and etch" or "single desmear" 11 process as the "prior art," the "known prior art," the "common desmear process," and 12 "the desmear process of the prior art," and expressly distinguish that prior art from the 13 patented invention. The specification states that the invention is "contrary to all known 14 teachings in the prior art" (id. at 5:43-48), is "contrary" to "the single desmear process of 15 the known prior art" (id. at 5:61-63), "differs from the common desmear process" (id. at 16 8:50-52), and stands in "stark contrast" with the "known prior art" (id. at 9:1-3). These 17 statements are clear and strong. They do not merely point out deficiencies in the prior 18 art, they state with emphasis that this invention is different from the prior art. They make 19 clear that the invention does not include the prior art’s single desmear process. 20 B. "The Present Invention." 21 When an inventor describes "the present invention" as including particular 22 elements, it can be viewed as a disavowal of a broader scope that might otherwise apply. 23 See Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014) ("[W]e 24 have held that disclaimer applies when the patentee makes statements such as'the present 25 invention requires...’ or'the present invention is...’ or'all embodiments of the present 26 invention are...’"); see also Pacing Technologies, LLC v. GarminIntern., Inc., 778 F.3d 27 1021, 1025 (Fed. Cir. 2015). 28-8-Case 2:16-cv-02026-DGC Document 243 Filed 08/09/17 Page 9 of 30 1 In Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006), 2 the court addressed a "fuel injection system component." Although the ordinary meaning 3 of a "fuel injection system component" is not limited to a fuel filter, the Federal Circuit 4 found that the proper construction was narrower than the customary meaning and was 5 limited to a filter. The court noted that the specification repeatedly described the fuel 6 filter as "this invention" and "the present invention," and held that "[t]he public is 7 entitled to take the patentee at his word and the word was that the invention is a fuel 8 filter." Id.; see also Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1327 (Fed. 9 Cir. 2009) (limiting the claim term "graft" to mean "intraluminal graft" when "the 10 specification frequently describes an'intraluminal graft’ as'the present invention’ or 11'this invention’"). 12 As shown in the quotations above, the specification states that "the peel strength 13 produced in accordance with the present invention is greater than the [peel] strength 14 produced by the desmear process of the prior art, i.e., a single desmear process."'582 15 Patent at 7:3-6. This statement suggests "the present invention" produces results 16 different from the single desmear process. The specification also states that "the present 17 invention differs from the common desmear process in that sub-steps in the desmear 18 process are repeated as a way of forming the teeth." Id. at 8:50-52. This statement 19 clearly asserts that "the present invention" – not just the embodiment discussed in the 20 specification as an example – differs from the prior art because it involves a repeat of the 21 desmear process. The specification further states that "the desmear process as disclosed 22 herein is contrary to the manufacturer’s specifications, i.e., a'double desmear process,’ 23 rather than the single desmear process of the known prior art." Id. at 5:59-63. Although 24 this statement is addressing the specifications of the XB 7081, it also states that "the 25 desmear process as disclosed" in the patent is a "double desmear process." These 26 statements unmistakably affirm that "the present invention" differs from the single 27 desmear process of the prior art. 28-9-Case 2:16-cv-02026-DGC Document 243 Filed 08/09/17 Page 10 of 30 1 C. Prosecution History and Other Portions of the Patents. 2 As Defendants note, the examiner rejected all pending claims during prosecution 3 of the'560 Patent. Doc. 188-3 at 155. In response, the applicants submitted a 4 declaration from Professor C.P. Wong, Ph.D, which included this explanation: 5 As described in this paragraph, performing two separate swell and etch 6 steps is a technique which forms the teeth. Although how this occurs within the dielectric material is not recited with in-depth detail, I 7 understand the specification as informing that the teeth formation results 8 from the release of some solid content in the first etching pass, forming irregular recesses and volume displacement. By forming the irregular 9 releases in the first etching pass, an opening within the dielectric material 10 would then be enlarged in the second etch pass, making the structure shown in Figure 1 and recited in the claims[.] 11 12 Doc. 188-3 at 109. 13 This statement clearly describes the patented method as involving two etching 14 processes. Although Plaintiff correctly notes that Dr. Wong refers only to "a technique" 15 as opposed to "the technique," Dr. Wong explains that the patented teeth are created by 16 the second etching pass. This part of the prosecution history corroborates the conclusions 17 reached above, even if not sufficient on its own to find disavowal. 18 Other portions of the patents also support the conclusions reach above. For 19 example, the'582 Patent includes claims which assert that the products produced by the 20 patented process are superior to products created by "a single roughening process," "a 21 single pass roughening," or "a single desmear process." See, e.g.,'582 Patent at 10:25, 22 10:33-34, 11:4, 11:11, 11:48, 11:55, 12:2, 12:15, 12:42-43, 12:59, 14:7, 17:34, 17:38-39, 23 18:1, 18:6, 18:36-37, 18:41-42, 19:10-11, 19:14-15, 19:26. 19:40, 19:66-67, 20:15-16. 24 These claims are not at issue in this case, but both sides agreed during the Markman 25 hearing that the Court can consider them in this order. Their wording confirms that the 26 present invention is different from a single desmear process. 27 Defendants also point to extrinsic evidence that supports the Court’s conclusion. 28 Documents produced by the inventors state that "a two pass desmear cycle doubles the-10-Case 2:16-cv-02026-DGC Document 243 Filed 08/09/17 Page 11 of 30 1 peel strength of a one pass desmear cycle, but varying the times in the cycle do not seem 2 to have that great of an effect." Doc. 235-2, Ex. 26. The primary inventor of the 3 patented product, Brian McDermott, wrote in a 1998 letter that "we use a double pass 4 desmear to achieve the tooth structure." Doc. 235-3, Ex. 30. This extrinsic evidence, 5 although not reliable enough to be dispositive, provides helpful corroboration of the 6 Court’s conclusion. Phillips, 415 F.3d at 1319 (explaining that extrinsic evidence "may 7 be useful to the court"). 8 D. Plaintiff’s Arguments. 9 Plaintiff relies on the principle of claim differentiation and argues that references 10 to a repeat desmear process are found in several independent claims, but not in dependent 11 claims. Doc. 189 at 16. Plaintiff notes that "the presence of a dependent claim that adds 12 a particular limitation gives rise to a presumption that the limitation in question is not 13 present in the independent claim." Phillips, 415 F.3d at 1315. 14 The claim differentiation presumption can be overcome by clear indicia in the 15 specification and prosecution history. As the Federal Circuit has explained, "claim 16 differentiation is a rule of thumb that does not trump the clear import of the 17 specification." Edwards, 582 F.3d at 1332; see also Seechange Int’l, Inc. v. C-COR, Inc., 18 413 F.3d 1361, 1369 (Fed. Cir. 2005) (noting that claim differentiation is "not a hard and 19 fast rule and will be overcome by a contrary construction dictated by the written 20 description or prosecution history."). 21 The Court finds, for reasons explained above, that the specification clearly 22 distinguishes between the current invention and the prior art of a single desmear process. 23 The clear and unequivocal rejection of that prior art overcomes any presumption raised 24 by claim differentiation. 25 Plaintiff also notes that the specification begins its discussion of the double 26 desmear process by describing it as "[o]ne technique for forming the teeth[.]"'582 27 Patent at 5:40-41. Although this is true, the patent then proceeds to explain at length the 28 difference between the current invention and the prior art single desmear process. As-11-Case 2:16-cv-02026-DGC Document 243 Filed 08/09/17 Page 12 of 30 1 already noted, in two places the specification distinguishes this prior art from "the present 2 invention." Thus, although the specification does include a reference to "one technique," 3 the subsequent, detailed explanation makes clear that the patented invention is different 4 from the single desmear process. 5 Similarly, the words "for example" in one portion of the specification do not 6 suggest that the double desmear process is only an illustration of one embodiment of the 7 patented invention. Id. at 8:49-50. Rather, the language is used to explain why XB 7081, 8 which is normally made for a single desmear process, "can alternatively be used in 9 carrying out the present invention." Id. at 8:48-49. The specification states: "For 10 example, the present invention differs from the common desmear process in that sub-11 steps in the desmear process are repeated as a way of forming the teeth." Id. at 8:49-52. 12 Thus, the example is not one means by which the invention may be embodied, but an 13 explanation of why XB 7081 can be used with the patented product – by repeating the 14 desmear process for which XB 7081 was designed. 15 Plaintiff notes that an early statement in the specification refers to methods of 16 production other than repeated desmearing: "For example, a dielectric material can have 17 a non-homogeneous composition or thickness to bring about an uneven chemical 18 resistance, such that slowed and/or repeated etching will form teeth instead of the 19 uniform etch." Id. at 2:27-30. Plaintiff argues that this sentence identifies "slowed" 20 etching as an additional method for making the patented invention, in contrast to repeated 21 etching. The word "slowed" does appear once in the specification, but the Court cannot 22 conclude that this single word justifies a finding that the patents include the single 23 desmear process. 24 As explained above, the balance of the specification makes clear that the single 25 desmear process of the prior art is not part of the invention. In fact, it is part of the 26 problem the invention was designed to overcome. Defendants’ expert, Dr. Srini 27 Raghavan, also credibly explains in his declaration that a person of ordinary skill in the 28 art would not read the word "slowed" in the context of the patents to mean that the-12-Case 2:16-cv-02026-DGC Document 243 Filed 08/09/17 Page 13 of 30 1 patents embrace single-pass desmearing. Doc. 199-3, ¶¶ 15-17. Finally, language in the 2 specification and in the extrinsic evidence suggests that varying the times of a single 3 desmear process does not produce the teeth that are key to the invention. See'582 Patent 4 at 5:43-47; Doc. 235-2, Ex. 26. For these reasons, the Court cannot accept Plaintiff’s 5 argument that the single word "slowed" constitutes an alternative embodiment of the 6 patented invention. See Trustees of Columbia University in City of New York v. Symantec 7 Corp., 811 F.3d 1359, 1366 (Fed. Cir. 2016) (explaining that "[t]his single sentence in the 8 specification cannot overcome the overwhelming evidence in other parts of the 9 specification"). 10 Finally, the Court notes that the boilerplate disclaimer of lexicography and 11 disavowal at the end of the specification does not alter its conclusion.'582 Patent at 12 9:18-25. The Court finds the detailed and repeated explanation of the specification, not 13 this disclaimer, to be controlling. 14 IV. Category 2 Terms. 15 The parties’ second category of disputed claims includes the following phrases 16 from the'560,'105, and'912 Patents: "Epoxy dielectric material delivered with solid 17 content," "epoxy dielectric material... the dielectric material delivered with solid 18 content," "dielectric material delivered with solid content," "dielectric material that is 19 delivered with solid content," and "dielectric material delivered with... solid content." 20 Doc. 177 at 12-13. Defendants contend that each of these phrases should be construed to 21 mean dielectric material "delivered with solid particles suspended in a liquid." Id. 22 Plaintiff contends that no construction is necessary. Alternatively, Plaintiff contends that 23 the phrases should be interpreted to include "dielectric material having solid particles 24 suspended in the dielectric material." Id. The dispute is whether the patents require the 25 use of liquid dielectric material in manufacturing the multi-layer electronic devices they 26 cover. For several reasons, the Court concludes that Plaintiff is correct – the patents do 27 not require use of a liquid dielectric material. 28-13-Case 2:16-cv-02026-DGC Document 243 Filed 08/09/17 Page 14 of 30 1 A. Plain and Ordinary Meaning. 2 As noted above, words of a claim are generally given the ordinary and customary 3 meaning the words would have to a person of ordinary skill in the art at the time of the 4 invention. Phillips, 415 F.3d at 1313. The Court concludes that the plain and ordinary 5 meaning of the words in Category 2 does not require use of a liquid dielectric material. 6 The parties agree that dielectric material can be applied either in solid or liquid 7 form. Neither side argues that the simple phrase "dielectric material" necessarily 8 specifies one or the other. Given this fact, the Court concludes that the plain and ordinary 9 meaning of "epoxy dielectric material delivered with solid content" or "dielectric 10 material delivered with solid content" is delivery of a dielectric material the content of 11 which is solid. Were it not for other portions of the patents, the Court would be inclined 12 to conclude that the form of dielectric material specified in the claims is solid. This is 13 precisely opposite the argument made by Defendants – that the only form of dielectric 14 material permitted under the claims is liquid. The plain meaning does not support 15 Defendants’ position. 16 B. Specification. 17 The specification provides clarification. Dielectric material is applied to the multi-18 layer electronic device in Step 3 of the process described in the patents. The specification 19 gives this description of Step 3: 20 Step 3 includes applying the dielectric material to the outermost 21 surface of the conductive layer (and the base if appropriate for the circuitry or electrical device at issue) prepared in accordance with step 2. The 22 dielectric material can be applied by as [sic] a (dry film), a (liquid) 23 curtain coating, a (liquid) roller coating, or an analogous application or bonding technique. 24 25'582 Patent at 5:15-21.6 This language explains that the patented invention can use either 26 dry or liquid dielectric material. The explanation is unambiguous. 27 6 Some sentences in the specification include numbers that refer to specific 28 components of the figures shown at the beginning of the specification. Quotations throughout this order omit those numbers.-14-Case 2:16-cv-02026-DGC Document 243 Filed 08/09/17 Page 15 of 30 1 The specification goes on to provide a preferred embodiment for the invention. It 2 includes this explanation: 3 Turning now particularly to the process for forming the teeth and the 4 cavities for the teeth, the present invention can be carried out by a new use of a CIBA-GEIGY product known as Probelec XB 7081 as a 5 photoimagable dielectric material. Generally, and in accordance with its 6 specifications sheet, Probelec XB 7081 is a single component, 100% epoxy photodielectric material especially developed for... multi-layer boards. 7 8 Id. at 6:41-48. 9 As is clear from this language, the use of XB 7081 is a preferred embodiment, an 10 illustration. The specification says only that the patent "can be carried out" by using this 11 product, which is a liquid, not that it must be carried out in this manner. Later portions of 12 the specification continue discussion of this preferred embodiment. When the 13 specification describes the method for applying the dielectric material, it again uses 14 XB 7081 as an illustration. Id. at 7:15-37. 15 "[I]t is improper to read limitations from a preferred embodiment described in the 16 specification – even if it is the only embodiment – into the claims absent a clear 17 indication in the intrinsic record that the patentee intended the claims to be so limited." 18 Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004). Unlike the 19 Category 1 phrases discussed above, where the specification clearly distinguishes the 20 invention from the prior art single desmear process, the specification and other intrinsic 21 evidence contain no clear indication that the dielectric material to be used in the patented 22 process must be liquid. Nor does the specification describe "the present invention" as not 23 including solid forms of dielectric material. For a court to find that a specification has 24 disclaimed a particular possible interpretation of the claims, "there must be a clear and 25 unmistakable disclaimer." Thorner, 669 F.3d at 1366-67; see also Pacing Techs., 778 26 F.3d at 1024. The patents’ preferred embodiment of XB 7081 does not constitute a clear 27 and unmistakable disclaimer of a solid dielectric material. 28-15-Case 2:16-cv-02026-DGC Document 243 Filed 08/09/17 Page 16 of 30 1 C. Prosecution History. 2 Defendants look to the prosecution history to support their argument that the 3 dielectric material must be applied in liquid form. Doc. 188 at 14-15. But the legal 4 standard for finding a prosecution history disclaimer requires "a clear and unmistakable 5 disavowal of scope during prosecution." Purdue Pharma L.P. v. Endo Pharm. Inc., 438 6 F.3d 1123, 1136 (Fed. Cir. 2006). Ambiguous statements in the prosecution history will 7 not support a finding of disclaimer. SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 8 1278, 1287 (Fed. Cir. 2005) ("There is no'clear and unmistakable’ disclaimer if a 9 prosecution argument is subject to more than one reasonable interpretation, one of which 10 is consistent with a proffered meaning of the disputed term."); see also LG Elecs., Inc. v. 11 Bizcom Elecs., Inc., 453 F.3d 1364, 1373-74 (Fed. Cir. 2006) (finding that prosecution 12 history statements were not sufficiently clear to justify limiting claims), reversed on other 13 grounds by Quanta v. LG Elecs., 128 S. Ct. 2109 (2008). 14 Defendants note that the examiner for the'560 Patent rejected a number of claims 15 because "[i]t is not clear as to what is meant by a dielectric material being delivered with 16 solid content and it is also unclear as to how epoxy uses non-homogeneity with the solid 17 content." Doc. 183 at 158. The applicants responded with a document submitted on 18 June 25, 2012. Doc. 188-3 at 96-109. The document attached a declaration by Dr. 19 Wong. Id. at 107-109. The relevant portions of the document provide this explanation: 20 Dr. Wong testifies that, from the identified passages of the specification of the subject application, one of ordinary skill would understand that the 21 specification disclosed the use of a generally liquid epoxy non-homogeneous dielectric, specifically as noted by the Examiner in the 22 Action Sentence bridging [pages] 3 and 4. As noted by Dr. Wong, by describing the epoxy as having a solid content of 58%, one skilled in the art 23 would understand that Probelec XB 7081 includes solid particles suspended in a generally liquid epoxy. 24 *** 25 As discussed above, the specification describes the use of a "dielectric 26 material" with "non-homogeneous composition... to bring out uneven chemical resistance, such that slowed and/or repeated etching will form 27 teeth instead of a uniform etch." The operation of this aspect of the process of the present application is explained in the Declaration, Paragraph 7. In 28 addition, the Specification describes the use of an epoxy, e.g., Probelec-16-Case 2:16-cv-02026-DGC Document 243 Filed 08/09/17 Page 17 of 30 1 XB 7081, having "a solid content of 58%." By describing the epoxy as having a solid content of 58%, one skilled in the art would understand that 2 Probelec XB 7081 includes solid particles in a percentage of 58% suspended in a generally liquid epoxy and that utilization of an epoxy 3 "delivered with solid content" similar to Probelec as the applied dielectric material. 4 5 Id. at 103-104. Defendants also emphasize this paragraph from Dr. Wong’s attached 6 declaration: 7 I have been asked to comment on the question of disclosure in the original specification for the claim language requiring an epoxy dielectric material 8 delivered with solid content.... A particular example of this epoxy having solid content is disclosed as Probelec XB 7081 as described in 9 paragraphs (0051-0065). Paragraphs (0051 to 0060) describe the various properties of this epoxy material. In paragraph (0056), McDermott 10 discloses a "solid content of 58%." By describing this epoxy as having a solid content of 58%, I understand that Probelec XB 7081 includes solid 11 particles suspended in a generally liquid epoxy. 12 Id. at 108. 13 Defendants contend that this language amounts to a disclaimer of solid dielectric 14 material for the patented process. The Court does not agree. 15 Portions of the quoted language simply describe XB 7081, the product used in the 16 specification’s preferred embodiment. These portions state that XB 7081 includes solid 17 particles suspended in a generally liquid epoxy. Such a description of a product used in a 18 preferred embodiment does not constitute a disclaimer of all other possible forms of 19 dielectric material. 20 Other portions of the quoted language refer to epoxy "having a solid content of 21 58%," and state that one skilled in the art would understand this to mean a liquid 22 containing solid particles. But the reference to 58% does not appear in any of the 23 Category 2 claims to be construed – they all refer to dielectric material "delivered with 24 solid content." The fact that dielectric material "having a solid content of 58%" suggests 25 a liquid with 58% solid particles, as the statements from the prosecution history say, does 26 not mean that the phrase "delivered with solid content," standing alone, also means a 27 liquid. At most, the statements are ambiguous. 28-17-Case 2:16-cv-02026-DGC Document 243 Filed 08/09/17 Page 18 of 30 1 The prosecution history does not clearly and unmistakably disavow use of solid 2 dielectric materials. Purdue, 438 F.3d at 1136. As a result, the Court cannot rely on the 3 prosecution history as a basis for concluding that solid dielectric materials are excluded 4 from the patent. To the contrary, the specification expressly states that a dry film 5 dielectric material may be used. 6 V. Category 3. 7 The parties’ third category of claim terms are "means-plus-function limitations." 8 Doc. 177 at 2-3. The relevant statute provides that "[a]n element in a claim for a 9 combination may be expressed as a means or a step for performing a specified function 10 without the recital of structure, material, or acts in support thereof, and such claim shall 11 be construed to cover the corresponding structure, material, or acts described in the 12 specification and equivalents thereof." 35 U.S.C. § 112(f). When this statute applies to 13 a claim, the claim is construed by identifying the "function" associated with the plain 14 language, and then identifying the corresponding "structure" in the specification that is 15 associated with that function. 16 The parties have identified three claim terms requiring construction, and agree that 17 each of these terms constitutes a means-plus-function limitation. The parties also agree 18 on the function for each term. The Court’s task, therefore, is to find the corresponding 19 "structure" in the specification for each function. 20 The first limitation, found in the'582 Patent, is "means for joining the conductive 21 layer to the dielectric material." Doc. 177 at 15. The parties agree that this claim has the 22 following function: "joining the conductive layer to the dielectric material." Id. 23 The second claim also comes from the'582 Patent and reads: "means for 24 mechanically gripping a conductive layer to the surface of the dielectric material so that 25 the conductive layer is burrowed in and under the top surface of the dielectric material." 26 Id. The parties agree on the following function for this claim: "mechanically gripping a 27 conductive layer to the surface of the dielectric material so that the conductive layer is 28 burrowed in and under the top surface of the dielectric material." Id.-18-Case 2:16-cv-02026-DGC Document 243 Filed 08/09/17 Page 19 of 30 1 The third term comes from the'105 Patent and reads: "means for interlocking a 2 conductor part of the circuitry configured for filling cavities with an epoxy dielectric 3 material disposed in combination with the circuitry and coupled with the conductor part." 4 Id. at 116. The parties agree on this function: "interlocking a conductor part of the 5 circuitry configured for filling cavities with an epoxy dielectric material disposed in 6 combination with the circuitry and coupled with the conductor part." Id. 7 The parties disagree on the structure that should correspond to each claim. With 8 respect to the first claim, Plaintiff asserts that the structure should be Figure 1 of the'582 9 Patent, together with the following statement from the specification: "It could also be 10 said that the layers joined in a saw-toothed manner, i.e., teeth made of both materials in 11 an interlocking bite." Defendants, on the other hand, contend that the structure should 12 include seven paragraphs from the'582 Patent specification – paragraphs that discuss the 13 connection between the dielectric material and the conductive layer in considerable 14 detail. These paragraphs include a discussion of teeth, a saw-toothed description of the 15 teeth, a triangular shape description of the teeth, canine or fang-shaped teeth, and 16 preferable sizes and frequencies for the teeth.'582 Patent at 3:18 to 4:11. 17 With respect to the second claim term, Plaintiff contends that the corresponding 18 structure consists of Figure 1 and the following statement: 19 However, the preferred embodiment utilizes a surface of obtuse, canine, or 20 fang-shaped teeth to help the conductive coating hook under the exterior surface of the applied dielectric material to mechanically grip the applied 21 dielectric material. The obtuse, canine, or fang-shaped teeth are in contrast 22 to the shallower, more rounded surface typically produced by known roughening techniques. Note in FIG. 2 that roughening techniques can 23 produce some occasional gouging but nothing on the order of the present 24 invention. 25'582 Patent at 3:42-51. Defendants propose the same seven-paragraph structure that they 26 advocate with respect to the first claim. 27 For the third claim, which is found in the'105 Patent, Plaintiff proposes that the 28 structure include Figure 1 and the following language from the specification:-19-Case 2:16-cv-02026-DGC Document 243 Filed 08/09/17 Page 20 of 30 1 The invention can be carried by forming cavities in the applied dielectric 2 material for receiving the teeth, and then forming the teeth from the conductive coating and metal layer formed thereon. Generally, the teeth 3 can be of any triangular shape (e.g., equilateral, isosceles, scalene, right, obtuse, or any combination thereof). Preferably, though, the teeth are 4 obtuse so as to hook or angle under the exterior surface of the applied 5 dielectric material. 6'105 Patent at 3:40-47. Defendants propose the same seven-paragraph structure that they 7 propose for the other claims. Id. at 3:26-4:29. 8 The Federal Circuit has instructed "that corresponding structure must include all 9 structure that actually performs the recited function." Cardiac Pacemakers, Inc. v. St. 10 Jude Medical, Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002); see also Callicrate v. 11 Wadsworth Mfg., Inc., 427 F.3d 1361, 1369 (Fed. Cir. 2005) (holding that it was error for 12 the district court to limit the corresponding structure to the preferred embodiment and not 13 include "all structure in the specification corresponding to the claimed function"). In 14 light of this guidance, the Court concludes that Plaintiff’s proposed structures are too 15 narrow. Although they include some discussion of the means by which the conductive 16 and dielectric layers adhere to each other, those discussions do not include "all structure" 17 described in the specification "that actually performs the recited function." Cardiac 18 Pacemakers, 296 F.3d at 1119. The Court also disagrees with Plaintiff’s suggestion that 19 the words "joining," "mechanically gripping," and "interlocking" have different 20 meanings. These terms are not defined in the patents. Each is used to describe the means 21 by which the layers adhere to each other. And, as Defendants note, these terms are used 22 interchangeably in some parts of the specification. See, e.g.,'582 Patent at 1:50-57, 3:21-23 23. 24 The seven paragraphs identified by Defendants describe the structure by which the 25 dielectric material adheres to the conductive layer in more detail, but even they leave out 26 some structure, and the Court has difficulty understanding how these technical and 27 lengthy paragraphs could be used by a jury to determine whether the accused products 28 infringe. Indeed, both sides acknowledged during the Markman hearing that it would be-20-Case 2:16-cv-02026-DGC Document 243 Filed 08/09/17 Page 21 of 30 1 best to prepare for the jury a short and clear description of the structure that corresponds 2 to the functions identified above. 3 The disagreement between the parties seems to be over which portions of the 4 structure discussed in the specification must be present for a product to infringe. Plaintiff 5 contends that the presence in the accused product of any part of the structure will be 6 sufficient. Defendants argue that at least four different components of the structure must 7 be present before infringement is found. Defendants identify these components by 8 looking to parts of the specification that are not included in their seven paragraphs of 9 proposed structure. 10 The Court concludes that the parties’ Markman briefs do not provide a sufficient 11 discussion of the law or the specification for the Court to resolve this disagreement. As a 12 result, the Court will require the parties to do the following: 13 1. Develop an agreed-upon description of each element of structure found in 14 the specification that relates to the adhering function of these claims. This 15 can include separate paragraphs for each element (tooth shape, frequency, 16 size, etc.) or a narrative description of the entire structure. It should be in 17 language suitable for a jury instruction. 18 2. Brief two questions: (1) As a legal matter, how many elements of a 19 structure must be present in an accused product for a finding of 20 infringement? (2) How does that law apply to these patents – what 21 elements of structure disclosed in the specification must be present for an 22 accused product to infringe in this case? 23 3. The parties shall confer and, within 10 days of this order, propose a 24 schedule for completing these tasks, including page limitations. 25 VI. Indefiniteness. 26 The relevant statute provides that "[t]he specification shall conclude with one or 27 more claims particularly pointing out and distinctly claiming the subject matter which 28 the applicant regards as his invention." 35 U.S.C. § 112(b). This requirement ensures-21-Case 2:16-cv-02026-DGC Document 243 Filed 08/09/17 Page 22 of 30 1 that a patentee adequately notifies the public of the scope of his or her invention. "A 2 patent is invalid for indefiniteness if its claims, read in light of the specification 3 delineating the patent, and the prosecution history, fail to inform, with reasonable 4 certainty, those skilled in the art about the scope of the invention." Nautilus v. Biosig 5 Instruments, Inc., 134 S.Ct. 2120, 2123 (2014). At the same time, however, "absolute 6 precision is unattainable." Id. Courts therefore "must take into account the inherent 7 limitations of language" and allow a "modicom of uncertainty" so as to provide 8 appropriate incentives for innovation. Id. at 2128. Because an indefinite claim is an 9 invalid claim, an accused infringer must prove indefiniteness clearly and convincingly. 10 Bancorp Servs., LLC v. Hartford Life Ins. Co., 359 F.3d 1367, 1371 (Fed. Cir. 2004). 11 A. "A Sample of the Circuitry." 12 Claims in the'582 Patent require that "a sample of the circuitry" have a frequency 13 of teeth sufficient to provide at least 5,000 teeth per linear inch.'582 Patent, Claims 94, 14 95, 122. Defendant contends that the phrase "a sample of the circuitry" is indefinite 15 because it does not provide enough precision for a person skilled in the art to determine 16 the scope of the invention with reasonable certainty. See Nautilus, 134 S.Ct. at 2129. 17 The Court does not agree. 18 The specification begins by identifying the location of the teeth that are critical to 19 the patent. Figure 1 is a magnified photograph of the interface between a conductive 20 layer and a dielectric layer in a device made according to the patent, and clearly 21 illustrates the teeth of the two layers that interlock with each other. Figure 2 is a 22 magnified photograph of the same interface in a device made by the prior art. The 23 boundary between the two layers is much smoother and lacks the cavities and teeth 24 illustrated in Figure 1. The specification then provides this explanation: 25 FIG. 1 is an illustration of a conductive coating and metal layer on the applied dielectric material with a desirable tooth structure. In contrast, FIG. 26 2 is an illustration of a prior art conductive coating and metal layer on the applied dielectric material with the surface produced by roughening 27 processes.... Compare FIG. 1 and FIG. 2, and note particularly the size, shape, frequency, and depth of the teeth in FIG. 1 with the surface produced 28 by roughening in FIG. 2.-22-Case 2:16-cv-02026-DGC Document 243 Filed 08/09/17 Page 23 of 30 1'582 Patent at 3:8-17. 2 The specification proceeds to explain the nature of the teeth called for by the 3 patents: 4 As to frequency, the teeth should be quite frequent in number; at least about 5,000 teeth per linear inch, and preferably about 10,000 per 5 linear inch; and even better is at least about 15,000 teeth per linear inch. 6 As to surface area, there should be at least about 25,000 teeth per square inch, better still is essentially at least about 100,000 per square inch, 7 and preferably at least about 200,000 per square inch, or even greater. 8 Id. at 3:62 to 4:2 9 Having described this tooth frequency, the specification explains: 10 It should be recognized that the teeth generally are not formed to a 11 precise dimension. As shown in FIG. 1, some of the teeth are somewhat differently sized, angled, and proportioned. Thus, a representative sample 12 of the electrical device should have teeth in about these ranges. 13 Having at least about 20% of the teeth in one or more of these ranges, and preferably about 50% is a preferred balance of mechanical grip 14 without a weakening [of] the integrity of the layer, particularly in combination. 15 Id. at 4:3-11. 16 Several points are apparent from this quoted language. First, the teeth are located 17 at the interface between the dielectric material and the conductive layer. Second, the 18 frequency of the teeth should be at least 5,000 per linear inch and 25,000 per square inch. 19 Although Defendants protest that they don’t know where these teeth are located, Figure 1 20 and this language makes clear that they are located in the interface between the two 21 layers. Third, the specification states that "a representative sample of the electrical 22 device should have teeth in about these ranges." Id. at 4:6-7. 23 In light of this specification, claims in the'582 Patent are not indefinite. Claim 94 24 states that the patented device includes "a conductive layer of material built up on a 25 surface on a layer of dielectric materials, the layers joined in a saw-tooth manner made of 26 both materials in an interlocking bite." Id. at 18:14-17. The claim then states: "[T]he 27 conductive layer is a portion of circuitry of an electrical device, the conductive layer is 28 comprised of teeth such that a sample of the circuitry has a frequency of the teeth-23-Case 2:16-cv-02026-DGC Document 243 Filed 08/09/17 Page 24 of 30 1 sufficient to provide at least 5,000 of the teeth per linear inch." Id. at 18:18-22. 2 According to this language, the conductive layer is a portion of the circuitry, and a 3 sample of the circuitry – the conductive layer – should show a frequency of teeth 4 sufficient to provide at least 5,000 teeth per linear inch. In light of the specification’s 5 suggestion that the samples should be "representative," and its unambiguous explanation 6 that the location of the teeth and the area to be sampled is the interface between the 7 dielectric and conductive layers, the Court concludes that a person reasonably skilled in 8 the art could determine how to obtain such a sample. 9 Defendants argue that the size and location of the sample are not specified in the 10 claim. True, but the size clearly must be large enough to show "a frequency of the teeth 11 sufficient to provide at least 5,000 of the teeth per linear inch," and, according to the 12 specification, should be a "representative sample." The parties may disagree on how big 13 that sample ought to be, but the Court cannot conclude that such disagreement makes this 14 claim indefinite. Persons of ordinary skill in the art would understand a sample size large 15 enough to be representative of the interface as a whole. 16 The Court disagrees with Defendants’ argument that the location of the sample is 17 unknown, or that the sample might even be taken from locations in the electronic device 18 other than the interface between the dielectric material and the conductive layer. Reading 19 the specification leaves no doubt as to the meaning of the claim: the interface is the 20 location of the teeth to be sampled, and the teeth in the interface must be shown by 21 sampling to have a frequency of at least 5,000 per linear inch. 22 B. "Upgrade Slope." 23 Claims in the'582 Patent call for the formation of cavities in the dielectric 24 material "wherein at least one of the cavities includes an upgrade slope with respect to 25 the dielectric material, and one of the teeth engages a portion of the dielectric material at 26 the slope."'582 Patent at 17:58-61. Defendants claim that the phrase "upgrade slope" is 27 indefinite because a person of ordinary skill could not distinguish when a slope is 28 "upgrade" as opposed to "downgrade," or where the slope is located. Plaintiff responds-24-Case 2:16-cv-02026-DGC Document 243 Filed 08/09/17 Page 25 of 30 1 that the slope, according to the language of each claim at issue, calls for "an upgrade 2 slope with respect to the surface of the dielectric material." See, e.g.,'582 Patent, 3 Claims 89, 94. Plaintiff argues that this language shows that "upgrade slope" describes 4 the orientation of cavity walls in relation to the surface of the dielectric material. 5 Doc. 200 at 15. 6 The specification includes this explanation: 7 A further way of articulating the "teeth" concept is to view each tooth as being substantially triangular in shape, with the base of the triangle 8 being a plain of the dielectric material before it is etched, or more precisely by the exterior surface thereof. The invention can be carried out by 9 forming cavities in the applied dielectric material for receiving the teeth, and then forming the teeth from the conductive coating and then a layer 10 formed thereon. Generally, the teeth can be of any triangular shape, e.g., equilateral, isosceles, scalene, right, obtuse, or any combination thereof". 11 Preferably, though, the teeth are obtuse so as to hook or angle under the exterior surface of the applied dielectric material. 12 The use of any shape of teeth increases the surface area where the 13 conductive coating is on the applied dielectric material. However, the preferred embodiment uses a surface of obtuse, canine, or fang-shaped teeth 14 to help the conductive coating and metal layer hook under the exterior surface of the applied dielectric material. 15 16'582 Patent at 3:28-46. 17 With this explanation from the specification, the Court concludes that a person of 18 ordinary skill in the industry could understand with reasonable certainty the meaning of 19 the claim at issue: A dielectric material comprising a surface with cavities "wherein at 20 least one of the cavities includes an upgrade slope with respect to the surface of the 21 dielectric material, and one of the teeth engages a portion of the dielectric material at the 22 slope." The cavities formed in the dielectric material must have sloped sides, relative to 23 the flat surface of the dielectric material, and the teeth formed from the conductive layer 24 must engage a portion of the dielectric material at the sloped side of the cavity. 25 As Plaintiff’s counsel conceded at the Markman hearing, this terminology does not 26 specify any specific slope or angle, and, as a result, every cavity, no matter how small or 27 shallow, would have sides that are sloped relative to the surface of the dielectric material 28 and therefore satisfy this claim requirement. Indeed, even the undulating surface of the-25-Case 2:16-cv-02026-DGC Document 243 Filed 08/09/17 Page 26 of 30 1 prior art as illustrated in Plaintiff’s opening brief (Doc. 189 at 9, lines 13-15) would 2 appear to satisfy this description. As a result, the Court cannot see how this claim 3 language distinguishes the patented invention from the prior art, but that is not a question 4 of definiteness. 5 C. "Peel Strength Greater Than." 6 Defendants challenge the'582 Patent claims that call for "peel strength greater 7 than a peel strength that would be produced by a single desmear process." Doc. 177 8 at 18. Defendants agree that "peel strength" is a term of art that generally refers to the 9 adhesive strength that exists between two layers. Doc. 188 at 25. Defendants argue, 10 however, that this claim language specifies no method for measuring peel strength and no 11 criteria for determining the peel strength of a product produced by a single desmear 12 process, and therefore leaves a person of ordinary skill in the art with no basis to 13 determine what measurement is intended. 14 Plaintiff asserts with some persuasive force that IPC-TM-650, method 2.4.8, is the 15 standardized method for measuring peel strength by one skilled in the art. Doc. 200-3 16 at ¶ 30. But Plaintiff also argues that any scientifically reasonable method for measuring 17 peel strength could be used, the only requirement being that it show a peel strength in the 18 product made under the patent that is greater than the peel strength of a product made by 19 a single desmear process. 20 The Court agrees with Plaintiff. Defendants do not contend that the word 21 "greater" is indefinite. And the fact that a particular method of measuring peel strength is 22 not identified does not make the language indefinite. Those skilled in the art know the 23 accepted means for measuring peel strength. Nor is the claim indefinite because the 24 baseline peel strength of a product made with a single desmear process is not specified. 25 No particular peel strength is required; it just must be lower, upon measurement, than the 26 peel strength of the patented product measured by the same method. Persons skilled in 27 the art know how to conduct such measurements and how to locate a product made by a 28 single desmear process.-26-Case 2:16-cv-02026-DGC Document 243 Filed 08/09/17 Page 27 of 30 1 D. "Substantially Greater." 2 Claims 14 and 19 of the'560 Patent and several claims in the'105 Patent call for 3 cavities in the dielectric layer having "a first cross-sectional distance proximate the 4 [initial] surface" and a "substantially greater cross-sectional distance distant from the 5 [initial] surface." Doc. 177 at 19. Defendants contend that the intrinsic record is devoid 6 of any objective criteria for determining how much greater is "substantially greater" 7 within the meaning of the claims, and that these limitations therefore are indefinite. 8 Defendants note that the'912 Patent does not include the word "substantially," calling 9 simply for a "greater cross-sectional distance." As a result, Defendants argue, 10 "substantially" must have some meaning beyond "greater," a meaning not apparent from 11 the intrinsic evidence. 12 Plaintiff notes that the Federal Circuit has "repeatedly confirmed that relative 13 terms such as'substantially’ do not render patent claims so unclear as to prevent a person 14 of skill in the art from ascertaining the scope of the claim." Deere & Co. v. Bush Hog, 15 LLC, 703 F.3d 1349, 1359 (Fed. Cir. 2012). Plaintiff agrees, however, on the relevant 16 test: "Such a term is not indefinite if the intrinsic evidence provides'a general guideline 17 and examples sufficient to enable a person of ordinary skill in the art to determine [the 18 scope of the claims].’" Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1335 (Fed. 19 Cir. 2010) (citation omitted). 20 Plaintiff points to the following language from the specification as providing 21 guidance on the meaning of "substantially": 22 In comparison with the above-mentioned roughening techniques of the 23 prior art, it is believed that a surface of the teeth is an improvement in that there is an increase in surface area. However, it is still better to use teeth 24 that are fang-shaped to enable a mechanical grip that functions in a 25 different manner than adherence by means of increased surface area. By using the fanged, angled, canine, or otherwise hooked teeth (in addition to 26 increased surface area), there is a multidirectional, three dimensional 27 interlacing and overlapping of layers. 28-27-Case 2:16-cv-02026-DGC Document 243 Filed 08/09/17 Page 28 of 30 1'582 Patent at 1:58-66. Plaintiff also points to language in the specification stating that 2 "the... metal layer is actually burrowed under the dielectric material and vice versa." 3 Id. at 1:66 to 2:3. 4 Plaintiff’s expert, Dr. Hoffman, provides this explanation of why this description 5 is sufficient for one skilled in the art to understand the meaning of "substantially": 6 In light of the specification and the art, a person of ordinary skill 7 would understand that the cross-sectional distance of the interior of a cavity must exceed a crosssectional distance nearer the opening of a cavity enough 8 to create the "mechanical grip" described in the patents and allow the 9 conductive material to burrow "in and under" the dielectric material. See, e.g.,'582 Patent at 1:58-2:3. 10 11 A person of ordinary skill in the art would recognize that if the cross-sectional distance of the interior of the cavity only exceeds the cross-12 sectional distance of the opening by a very slight amount, the mechanical 13 grip disclosed in the patents would not be achieved. 14 A person of ordinary skill in the art would further understand that the specific difference between comparative cross-sectional distances may 15 vary based on particular application and material properties. For example, 16 a person having ordinary skill in the art would understand that materials having high tensile strength will more readily grip copper, meaning that the 17 degree of undercutting and burrowing (that is to say the amount which the 18 cross-sectional distance distant the surface is greater than the distance proximate the surface) can be lesser than a material with lower tensile 19 strength. 20 Doc. 200-3 at ¶¶ 35-37. 21 As noted above, the Supreme Court recently held that "a patent’s claims, viewed 22 in light of the specification and prosecution history, [must] inform those skilled in the art 23 about the scope of the invention with reasonable certainty." Nautilus, Inc., 134 S. Ct. at 24 2129. After Nautilis, the Federal Circuit explained that "[t]he claims, when read in light 25 of the specification and the prosecution history, must provide objective boundaries for 26 those of skill in the art." Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. 27 Cir. 2014). The Federal Circuit also explained that "[w]hen a'word of degree’ is used, 28 the court must determine whether the patent provides'some standard for measuring that-28-Case 2:16-cv-02026-DGC Document 243 Filed 08/09/17 Page 29 of 30 1 degree.’" Biosig inst., Inc. v. Nautilis, Inc., 783 F.3d 1374, 1378 (Fed. Cir. 2015) 2 (quoting Enzo Biochem, 599 F.3d at 1332). 3 Although it is a close question, the Court concludes that the patents satisfy this 4 standard. Language from the specification quoted above explains that the cavities should 5 extend under the surface of the dielectric material ("actually burrowed under the 6 dielectric material") so that the teeth that fill the cavities "mechanical[ly] grip" the 7 dielectric material.'582 Patent at 1:58 to 2:3. This suggests that the base of the cavity 8 should not be perfectly aligned with the surface of cavity, the sides of the cavity forming 9 a perpendicular wall, but instead should be sufficiently offset from the surface opening to 10 permit the tooth to engage the dielectric material in a mechanical grip. The Court 11 concludes that one skilled in the art could determine the extent to which the cavity must 12 extend under the dielectric material to permit such a mechanical grip. The claims provide 13 additional guidance by stating that the peel strength formed by these gripping teeth must 14 exceed the peel strength of a layer created by a single-pass desmear process. And Figure 15 1 provides further explanation, illustrating the kinds of cavities and teeth intended by the 16 patent. 17 Admittedly, this language requires some judgment by persons skilled in the art, 18 but it is judgment informed by the intended function of the cavities (to create a 19 mechanical grip), the result that should be realized (peel strength greater than single-pass 20 desmearing creates), and the illustration in Figure 1. As the Federal Circuit explained 21 after Nautilis, "absolute or mathematical precision is not required." Interval Leasing, 766 22 F.3d at 1370. The Federal Circuit also favorably cited its previous holding that the 23 phrase "not interfering substantially" was not indefinite even though the construction 24 "define[d] the term without reference to a precise numerical measurement." Enzo 25 Biochem, 599 F.3d at 1335. 26 27 28-29-Case 2:16-cv-02026-DGC Document 243 Filed 08/09/17 Page 30 of 30 1 E. Indefiniteness Conclusion. 2 With respect to the claims in Category 4, the Court concludes that Defendants 3 have not satisfied their "clear and convincing" burden of showing that the claims are 4 indefinite. 5 Dated this 9th day of August, 2017. 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28-30-

NOTICE re: Joint Notice Pursuant to Markman Order by Continental Circuits LLC re: {{243}} Order.

Case 2:16-cv-02026-DGC Document 250 Filed 08/18/17 Page 1 of 4 1 Joseph A. Schenk (State Bar No. 009260) Chad S. Campbell (State Bar No. 012080) AIKEN SCHENK HAWKINS & RICCIARDI CSCampbell@perkinscoie.com 2 P.C. PERKINS COIE LLP 3 2390 East Camelback Road, Suite 400 2901 N. Central Avenue, Suite 2000 Phoenix, Arizona 85016 Phoenix, AZ 85012 4 Telephone: (602) 248-8203 Tel: (602) 351-8000 5 Facsimile: (602) 248-8840 Fax: (602) 648-7000 E-Mail: docket@ashrlaw.com 6 E-Mail: jas@ashrlaw.com William F. Lee (pro hac vice) 7 Bradley W. Caldwell (pro hac vice) William.Lee@wilmerhale.com 8 Jason D. Cassady (pro hac vice) Joseph J. Mueller (pro hac vice) J. Austin Curry (pro hac vice) Joseph.Mueller@wilmerhale.com 9 Warren J. McCarty (pro hac vice) WILMER CUTLER PICKERING 10 CALDWELL CASSADY CURRY P.C. HALE AND DORR LLP 2101 Cedar Springs Rd., Suite 1000 60 State Street 11 Dallas, Texas 75201 Boston, MA 02109 Telephone: (214) 888-4848 Tel: (617) 526-6000 12 Facsimile: (214) 888-4849 Fax: (617) 526-5000 13 Attorneys for Plaintiff Continental Attorneys for Defendants Intel Corporation, 14 Circuits, LLC Ibiden U.S.A. Corporation, and Ibiden Co. 15 Ltd. 16 IN THE UNITED STATES DISTRICT COURT 17 FOR THE DISTRICT OF ARIZONA 18 19 Continental Circuits LLC, CASE NO. CV-16-2026-PHX-DGC 20 Plaintiff, JOINT NOTICE PURSUANT TO 21 v. MARKMAN ORDER DKT. 243 22 Intel Corp., Ibiden U.S.A. Corp., Ibiden Co., Ltd., 23 Defendants. 24 25 26 27 28 29 Case 2:16-cv-02026-DGC Document 250 Filed 08/18/17 Page 2 of 4 1 Pursuant to the Court’s Claim Construction Order (Dkt. 243), Plaintiff Continental 2 Circuits LLC and Defendants Intel Corporation, Ibiden U.S.A. Corporation, and Ibiden 3 Co., Ltd. (the "Parties") hereby submit the following notice to the Court. 4 I. CATEGORY III TERMS 5 Pursuant to the Court’s Order, the Parties met and conferred to (1) develop an 6 agreed-upon description of the corresponding structure for all means-plus-function claims, 7 and (2) arrange a briefing schedule. The Parties propose the following schedule: 8 Date Task 9 Friday September 8, If possible, the parties will jointly submit an 10 2017 agreed-upon description of each element of 11 structure found in the specification that relates to the adhering function of the asserted claims. 12 If the parties cannot agree, they will each submit their own proposed description. 13 14 If the parties cannot reach agreement on a construction, they will also submit separate 15 briefs addressing: 16 (1) As a legal matter, how many elements 17 of a structure must be present in an accused product for a finding of 18 infringement? 19 (2) How does that law apply to these patents – what elements of structure 20 disclosed in the specification must be 21 present for an accused product to infringe in this case? 22 * Briefs will be limited to 10 pages per side. 23 24 25 26 27 28 29 1 Case 2:16-cv-02026-DGC Document 250 Filed 08/18/17 Page 3 of 4 1 Dated this 18th day of August, 2017. 2 3 By/s/Warren J. McCarty By/s/Joseph J. Mueller 4 Bradley W. Caldwell (pro hac vice) Chad S. Campbell (SBN 012080) 5 Jason D. Cassady (pro hac vice) CSCampbell@perkinscoie.com J. Austin Curry (pro hac vice) PERKINS COIE LLP 6 Warren J. McCarty (pro hac vice) 2901 N. Central Avenue, Suite 2000 7 CALDWELL CASSADY CURRY P.C. Phoenix, AZ 85012 2101 Cedar Springs Rd., Suite 1000 Tel: (602) 351-8000/Fax: (602) 648-7000 8 Dallas, Texas 75201 Telephone: (214) 888-4848 William F. Lee (pro hac vice) 9 Facsimile: (214) 888-4849 William.Lee@wilmerhale.com 10 Email: bcaldwell@caldwellcc.com Joseph J. Mueller (pro hac vice) Email: jcassady@caldwellcc.com Joseph.Mueller@wilmerhale.com 11 Email: acurry@caldwellcc.com WILMER CUTLER PICKERING HALE 12 Email: wmccarty@caldwellcc.com AND DORR LLP 60 State Street 13 Joseph A. Schenk (SBN 009260) Boston, MA 02109 AIKEN SCHENK HAWKINS & Tel: (617) 526-6000/Fax: (617) 526-5000 14 RICCIARDI P.C. 15 2390 East Camelback Road, Suite 400 Nina S. Tallon (pro hac vice) Phoenix, Arizona 85016 Nina.Tallon@wilmerhale.com 16 Telephone: (602) 248-8203 WILMER CUTLER PICKERING HALE AND 17 Facsimile: (602) 248-8840 DORR LLP E-Mail: docket@ashrlaw.com 1875 Pennsylvania Ave. NW 18 E-Mail: jas@ashrlaw.com Washington, DC 20006 Tel: (202) 663-6000/Fax: (202) 663-6363 19 ATTORNEYS FOR PLAINTIFF 20 CONTINENTAL CIRCUITS, LLC ATTORNEYS FOR DEFENDANT INTEL CORPORATION, IBIDEN U.S.A. 21 CORPORATION, AND IBIDEN CO. LTD. 22 23 24 25 26 27 28 29 Case 2:16-cv-02026-DGC Document 250 Filed 08/18/17 Page 4 of 4 1 CERTIFICATE OF SERVICE 2 The undersigned certifies that all counsel of record who have consented to electronic 3 service are being served with a copy of the foregoing document via the Court’s CM/ECF 4 system on this 18th day of August, 2017. 5 6/s/Warren J. McCarty, III (pro hac vice) Warren J. McCarty, III 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29

ORDER re: {{249}} Application filed by Continental Circuits LLC. Signed by Judge David G Campbell on 8/18/2017.

Case 2:16-cv-02026-DGC Document 251 Filed 08/18/17 Page 1 of 2 1 2 3 4 5 6 IN THE UNITED STATES DISTRICT COURT 7 FOR THE DISTRICT OF ARIZONA 8 Continental Circuits, LLC, NO. CV16-2026-PHX DGC 9 Plaintiff, ORDER 10 v. COMMISSION DIRECTING THE TAKING ABROAD OF VOLUNTARY 11 Intel Corp.; Ibiden U.S.A.; Ibiden Co., Ltd., ORAL DEPOSITONS OF JAPANESE WITNESSES 12 Defendants. 13 14 15 TO: ANY COUNSUL OR VICE CONSUL OF THE UNITED STATES, 16 UNITED STATES EMBASSY TOKYO, JAPAN: 17 Upon the Application of Plaintiff Continental Circuits, LLC pursuant to Article 17 18 of the United States–Japan Consular Convention, 19 You have been duly appointed and you are hereby authorized to take the oral 20 depositions at the United States Embassy in Tokyo, Japan of the following witnesses who 21 will appear voluntarily: Motoo Asai, Tomoyuki Ikeda, Sotaro Ito, Koji Kawashima, Yogo 22 Kawasaki, Mitsuyuki Kimura and Naohiko Yajima, employees of Ibiden Co., Ltd., 2-1, 23 Kanda-cho, Ogaki, Gifu Prefecture, 503-8604, Japan. 24 The depositions are scheduled to commence on or about September 19, 2017, at 8:45 25 a.m. and terminate on or about September 27, 2017 at 4:00 p.m., and to mark any 26 documentary exhibits in connection therewith. 27 Counsel for Defendants who will participate in the depositions are Joseph J. Mueller, 28 Nina S. Tallon and Kevin S. Prussia. Case 2:16-cv-02026-DGC Document 251 Filed 08/18/17 Page 2 of 2 1 Counsel for the Plaintiff who will participate in the depositions are Jason Dodd 2 Cassady, Justin T. Nemunaitis and Warren Joseph McCarty III. 3 The proceedings will be reported by: Lisa Feissner, Leslie Anne Todd, Renee 4 Michele Kelch, Lisa Ann Knight, Susan Dena Wasilewski, Michelle Lynne Michaud, 5 Giselle Marsha Mitchell, Anne Marie Torreano and videotaped by: Thomas Kinsey 6 Feissner, Luis Alejandro Lopez, Kevin Wayne Cranford Jr., Anthony James Vorndran, 7 Debby Elaine Cavazos, Nathan James LeMaster. The proceedings will be interpreted by Ai 8 Miyake and Grace Liu. 9 Please cause the testimony of said witnesses to be reduced to writing and the 10 depositions signed by said witnesses, and annex said deposition testimony with your 11 commission and close the same under your seal and make return thereof to this Court with 12 all convenient speed. 13 Dated this 18th day of August, 2017. 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28-2-

*(AMENDED BY DOC. {{258}}) - TRANSCRIPT REQUEST Telephone Conference by Continental Circuits LLC for proceedings held on 8/24/2017, Judge David G Campbell hearing judge(s). *Modified to reference amended version on 8/24/2017

2AO 435 Case 2:16-cv-02026-DGC Document Administrative Office of the 255 Filed 08/24/17 Page United States Courts 1 of 1USE ONLY FOR COURT AZ Form (Rev.) DUE DATE: TRANSCRIPT ORDER 1. NAME 2. PHONE NUMBER 3. DATE Bradley W. Caldwell (pro hac vice) 214-888-4848 8/24/2017 4. FIRM NAME Caldwell Cassady Curry P.C. 5. MAILING ADDRESS 6. CITY 7. STATE 8. ZIP CODE 2101 Cedar Springs Road, Ste. 1000 Dallas TX 75201 9. CASE NUMBER 10. JUDGE DATES OF PROCEEDINGS 2:16-cv-02026-DGC David G. Campbell 11. 8/24/2017@10:00 am 12. 13. CASE NAME LOCATION OF PROCEEDINGS Continental Circuits, LLC v. Intel Corp., et. al. 14. Phoenix 15. STATE AZ 16. ORDER FOR APPEAL CRIMINAL CRIMINAL JUSTICE ACT BANKRUPTCY NON-APPEAL ✔ CIVIL IN FORMA PAUPERIS OTHER 6SHFLI\ 17. TRANSCRIPT REQUESTED (Specify portion(s) and date(s) of proceeding(s) for which transcript is requested) PORTIONS DATE(S) PORTION(S) DATE(S) VOIR DIRE TESTIMONY (6SHFLI\ OPENING STATEMENT (Plaintiff) OPENING STATEMENT (Defendant) CLOSING ARGUMENT (Plaintiff) PRE-TRIAL PROCEEDING CLOSING ARGUMENT (Defendant) OPINION OF COURT JURY INSTRUCTIONS ✔ OTHER (6SHFLI\) SENTENCING Telephone Conference 8/24/2017 BAIL HEARING 18. ORDER ORIGINAL + 1 FIRST # OF DELIVERY INSTRUCTIONS CATEGORY (original to Court, ADDITIONAL ESTIMATED COSTS COPY (&heck all that apply) copy to ordering party) COPIES 30 DAYS PAPER COPY 14 DAYS ✔ 3') H PDLO 7 DAYS ✔ $6&,, H PDLO DAILY HOURLY REALTIME E-MAIL ADDRESS CERTIFICATION (19. & 20.) continental@caldwellcc.com By signing below, I certify that I will pay all charges (deposit plus additional). 19. SIGNATURE NOTE: IF ORDERING 025(7+$1 21()250$7, s/Bradley W. Caldwell (pro hac vice) THERE WILL BE AN ADDITIONAL CHARGE. 20. DATE 8/24/2017 TRANSCRIPT TO BE PREPARED BY ESTIMATE TOTAL PROCESSED BY PHONE NUMBER ORDER RECEIVED DATE BY DEPOSIT PAID DEPOSIT PAID TRANSCRIPT ORDERED TOTAL CHARGES TRANSCRIPT RECEIVED LESS DEPOSIT ORDERING PARTY NOTIFIED TOTAL REFUNDED TO PICK UP TRANSCRIPT PARTY RECEIVED TRANSCRIPT TOTAL DUE DISTRIBUTION: COURT COPY TRANSCRIPTION COPY ORDER RECEIPT ORDER COPY

TRANSCRIPT REQUEST by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation for proceedings held on August 24, 2017, Judge David G Campbell hearing judge(s).

OAO 435 Case 2:16-cv-02026-DGC Document Administrative Office of the 257 Filed 08/24/17 Page United States Courts 1 of 1USE ONLY FOR COURT AZ Form (Rev. 1/2015) DUE DATE: TRANSCRIPT ORDER 1. NAME 2. PHONE NUMBER 3. DATE Chad S. Campbell 602.351.8000 8/24/2017 4. FIRM NAME PERKINS COIE LLP 5. MAILING ADDRESS 6. CITY 7. STATE 8. ZIP CODE 2901 N. Central Avenue, Suite 2000 Phoenix AZ 85012 9. CASE NUMBER 10. JUDGE DATES OF PROCEEDINGS 2:16-cv-02026-DGC David G. Campbell 11. 8/24/2017 12. 13. CASE NAME LOCATION OF PROCEEDINGS Continental Circuits LLC v. Intel Corporation, et al. 14. Phoenix 15. STATE AZ 16. ORDER FOR 9 APPEAL 9 CRIMINAL 9 CRIMINAL JUSTICE ACT BANKRUPTCY 9 NON-APPEAL ✔ 9 CIVIL 9 IN FORMA PAUPERIS OTHER (Specify) 17. TRANSCRIPT REQUESTED (Specify portion(s) and date(s) of proceeding(s) for which transcript is requested.) PORTIONS DATE(S) PORTION(S) DATE(S) 9VOIR DIRE 9TESTIMONY (Specify) 9OPENING STATEMENT (Plaintiff) 9OPENING STATEMENT (Defendant) 9CLOSING ARGUMENT (Plaintiff) 9PRE-TRIAL PROCEEDING 9CLOSING ARGUMENT (Defendant) 9OPINION OF COURT 9JURY INSTRUCTIONS ✔9OTHER (Specify) 9SENTENCING Telephone conference 8/24/2017 at 10:00 a.m. 9BAIL HEARING 18. ORDER ORIGINAL + 1 FIRST # OF DELIVERY INSTRUCTIONS CATEGORY (original to Court, ADDITIONAL ESTIMATED COSTS COPY (Check all that apply.) copy to ordering party) COPIES 30 DAYS 9 9 PAPER COPY 14 DAYS 9 9 ✔ PDF (e-mail) 7 DAYS ✔ 9 9 ASCII (e-mail) DAILY 9 9 HOURLY 9 9 REALTIME 9 9 E-MAIL ADDRESS CERTIFICATION (19. & 20.) cscampbell@perkinscoie.com By signing below, I certify that I will pay all charges (deposit plus additional). 19. SIGNATURE NOTE: IF ORDERING MORE THAN ONE FORMAT, s/Chad S. Campbell THERE WILL BE AN ADDITIONAL CHARGE. 20. DATE August 24, 2017 TRANSCRIPT TO BE PREPARED BY ESTIMATE TOTAL PROCESSED BY PHONE NUMBER ORDER RECEIVED DATE BY DEPOSIT PAID DEPOSIT PAID TRANSCRIPT ORDERED TOTAL CHARGES TRANSCRIPT RECEIVED LESS DEPOSIT ORDERING PARTY NOTIFIED TOTAL REFUNDED TO PICK UP TRANSCRIPT PARTY RECEIVED TRANSCRIPT TOTAL DUE DISTRIBUTION: COURT COPY TRANSCRIPTION COPY ORDER RECEIPT ORDER COPY

TRANSCRIPT REQUEST AMENDED by Continental Circuits LLC for proceedings held on 8/24/2017, Judge David G Campbell hearing judge(s).

2AO 435 Case 2:16-cv-02026-DGC Document Administrative Office of the 258 Filed 08/24/17 Page United States Courts 1 of 1USE ONLY FOR COURT AZ Form (Rev.) DUE DATE: TRANSCRIPT ORDER 1. NAME 2. PHONE NUMBER 3. DATE Bradley W. Caldwell (pro hac vice) 214-888-4848 8/24/2017 4. FIRM NAME Caldwell Cassady Curry P.C. 5. MAILING ADDRESS 6. CITY 7. STATE 8. ZIP CODE 2101 Cedar Springs Road, Ste. 1000 Dallas TX 75201 9. CASE NUMBER 10. JUDGE DATES OF PROCEEDINGS 2:16-cv-02026-DGC David G. Campbell 11. 8/24/2017@10:00 am 12. 13. CASE NAME LOCATION OF PROCEEDINGS Continental Circuits, LLC v. Intel Corp., et. al. 14. Phoenix 15. STATE AZ 16. ORDER FOR APPEAL CRIMINAL CRIMINAL JUSTICE ACT BANKRUPTCY NON-APPEAL ✔ CIVIL IN FORMA PAUPERIS OTHER 6SHFLI\ 17. TRANSCRIPT REQUESTED (Specify portion(s) and date(s) of proceeding(s) for which transcript is requested) PORTIONS DATE(S) PORTION(S) DATE(S) VOIR DIRE TESTIMONY (6SHFLI\ OPENING STATEMENT (Plaintiff) OPENING STATEMENT (Defendant) CLOSING ARGUMENT (Plaintiff) PRE-TRIAL PROCEEDING CLOSING ARGUMENT (Defendant) OPINION OF COURT JURY INSTRUCTIONS ✔ OTHER (6SHFLI\) SENTENCING Telephone Conference 8/24/2017 BAIL HEARING 18. ORDER ORIGINAL + 1 FIRST # OF DELIVERY INSTRUCTIONS CATEGORY (original to Court, ADDITIONAL ESTIMATED COSTS COPY (&heck all that apply) copy to ordering party) COPIES 30 DAYS PAPER COPY 14 DAYS ✔ 3') H PDLO 7 DAYS $6&,, H PDLO DAILY ✔ HOURLY REALTIME E-MAIL ADDRESS CERTIFICATION (19. & 20.) continental@caldwellcc.com By signing below, I certify that I will pay all charges (deposit plus additional). 19. SIGNATURE NOTE: IF ORDERING 025(7+$1 21()250$7, s/Bradley W. Caldwell (pro hac vice) THERE WILL BE AN ADDITIONAL CHARGE. 20. DATE 8/24/2017 TRANSCRIPT TO BE PREPARED BY ESTIMATE TOTAL PROCESSED BY PHONE NUMBER ORDER RECEIVED DATE BY DEPOSIT PAID DEPOSIT PAID TRANSCRIPT ORDERED TOTAL CHARGES TRANSCRIPT RECEIVED LESS DEPOSIT ORDERING PARTY NOTIFIED TOTAL REFUNDED TO PICK UP TRANSCRIPT PARTY RECEIVED TRANSCRIPT TOTAL DUE DISTRIBUTION: COURT COPY TRANSCRIPTION COPY ORDER RECEIPT ORDER COPY

TRANSCRIPT REQUEST by Continental Circuits LLC for proceedings held on 9/5/2017, Judge David G Campbell hearing judge(s).

2AO 435 Administrative Office of the United States Courts FOR COURT USE ONLY AZ Form (Rev.) DUE DATE: TRANSCRIPT ORDER 1. NAME 2. PHONE NUMBER 3. DATE Bradley W. Caldwell (pro hac vice) 214-888-4848 9/5/2017 4. FIRM NAME Caldwell Cassady Curry P.C. 5. MAILING ADDRESS 6. CITY 7. STATE 8. ZIP CODE 2101 Cedar Springs Road, Ste. 1000 Dallas TX 75201 9. CASE NUMBER 10. JUDGE DATES OF PROCEEDINGS 2:16-cv-02026-DGC David G. Campbell 11. 9/5/2017@3:00 pm 12. 13. CASE NAME LOCATION OF PROCEEDINGS Continental Circuits, LLC v. Intel Corp., et. al. 14. Phoenix 15. STATE AZ 16. ORDER FOR APPEAL CRIMINAL CRIMINAL JUSTICE ACT BANKRUPTCY NON-APPEAL ✔ CIVIL IN FORMA PAUPERIS OTHER 6SHFLI\ 17. TRANSCRIPT REQUESTED (Specify portion(s) and date(s) of proceeding(s) for which transcript is requested) PORTIONS DATE(S) PORTION(S) DATE(S) VOIR DIRE TESTIMONY (6SHFLI\ OPENING STATEMENT (Plaintiff) OPENING STATEMENT (Defendant) CLOSING ARGUMENT (Plaintiff) PRE-TRIAL PROCEEDING CLOSING ARGUMENT (Defendant) OPINION OF COURT JURY INSTRUCTIONS ✔ OTHER (6SHFLI\) SENTENCING Telephone Conference 9/5/2017 BAIL HEARING 18. ORDER ORIGINAL + 1 FIRST # OF DELIVERY INSTRUCTIONS CATEGORY (original to Court, ADDITIONAL ESTIMATED COSTS COPY (&heck all that apply) copy to ordering party) COPIES 30 DAYS PAPER COPY 14 DAYS ✔ 3') H PDLO 7 DAYS $6&,, H PDLO DAILY ✔ HOURLY REALTIME E-MAIL ADDRESS CERTIFICATION (19. & 20.) continental@caldwellcc.com By signing below, I certify that I will pay all charges (deposit plus additional). 19. SIGNATURE NOTE: IF ORDERING 025(7+$1 21()250$7, s/Bradley W. Caldwell (pro hac vice) THERE WILL BE AN ADDITIONAL CHARGE. 20. DATE 9/5/2017 TRANSCRIPT TO BE PREPARED BY ESTIMATE TOTAL PROCESSED BY PHONE NUMBER ORDER RECEIVED DATE BY DEPOSIT PAID DEPOSIT PAID TRANSCRIPT ORDERED TOTAL CHARGES TRANSCRIPT RECEIVED LESS DEPOSIT ORDERING PARTY NOTIFIED TOTAL REFUNDED TO PICK UP TRANSCRIPT PARTY RECEIVED TRANSCRIPT TOTAL DUE DISTRIBUTION: COURT COPY TRANSCRIPTION COPY ORDER RECEIPT ORDER COPY

TRANSCRIPT REQUEST by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation for proceedings held on September 5, 2017, Judge David G Campbell hearing judge(s).

OAO 435 Administrative Office of the United States Courts FOR COURT USE ONLY AZ Form (Rev. 1/2015) DUE DATE: TRANSCRIPT ORDER 1. NAME 2. PHONE NUMBER 3. DATE Chad S. Campbell 602.351.8000 9/6/2017 4. FIRM NAME PERKINS COIE LLP 5. MAILING ADDRESS 6. CITY 7. STATE 8. ZIP CODE 2901 N. Central Avenue, Suite 2000 Phoenix AZ 85012 9. CASE NUMBER 10. JUDGE DATES OF PROCEEDINGS 2:16-cv-02026-DGC David G. Campbell 11. 9/5/2017 12. 13. CASE NAME LOCATION OF PROCEEDINGS Continental Circuits LLC v. Intel Corporation, et al. 14. Phoenix 15. STATE AZ 16. ORDER FOR 9 APPEAL 9 CRIMINAL 9 CRIMINAL JUSTICE ACT BANKRUPTCY 9 NON-APPEAL ✔ 9 CIVIL 9 IN FORMA PAUPERIS OTHER (Specify) 17. TRANSCRIPT REQUESTED (Specify portion(s) and date(s) of proceeding(s) for which transcript is requested.) PORTIONS DATE(S) PORTION(S) DATE(S) 9VOIR DIRE 9TESTIMONY (Specify) 9OPENING STATEMENT (Plaintiff) 9OPENING STATEMENT (Defendant) 9CLOSING ARGUMENT (Plaintiff) 9PRE-TRIAL PROCEEDING 9CLOSING ARGUMENT (Defendant) 9OPINION OF COURT 9JURY INSTRUCTIONS ✔9OTHER (Specify) 9SENTENCING Status conference 9/5/2017 9BAIL HEARING 18. ORDER ORIGINAL + 1 FIRST # OF DELIVERY INSTRUCTIONS CATEGORY (original to Court, ADDITIONAL ESTIMATED COSTS COPY (Check all that apply.) copy to ordering party) COPIES 30 DAYS 9 9 PAPER COPY 14 DAYS 9 9 ✔ PDF (e-mail) 7 DAYS ✔ 9 9 ASCII (e-mail) DAILY 9 9 HOURLY 9 9 REALTIME 9 9 E-MAIL ADDRESS CERTIFICATION (19. & 20.) cscampbell@perkinscoie.com By signing below, I certify that I will pay all charges (deposit plus additional). 19. SIGNATURE NOTE: IF ORDERING MORE THAN ONE FORMAT, s/Chad S. Campbell THERE WILL BE AN ADDITIONAL CHARGE. 20. DATE September 6, 2017 TRANSCRIPT TO BE PREPARED BY ESTIMATE TOTAL PROCESSED BY PHONE NUMBER ORDER RECEIVED DATE BY DEPOSIT PAID DEPOSIT PAID TRANSCRIPT ORDERED TOTAL CHARGES TRANSCRIPT RECEIVED LESS DEPOSIT ORDERING PARTY NOTIFIED TOTAL REFUNDED TO PICK UP TRANSCRIPT PARTY RECEIVED TRANSCRIPT TOTAL DUE DISTRIBUTION: COURT COPY TRANSCRIPTION COPY ORDER RECEIPT ORDER COPY

STIPULATION AND JOINT MOTION FOR ENTRY OF FINAL JUDGMENT OF NON-INFRINGEMENT AND NON-INDEFINITENESS by Continental Circuits LLC.

Case 2:16-cv-02026-DGC Document 266 Filed 09/07/17 Page 1 of 7 1 Joseph A. Schenk (State Bar No. 009260) Chad S. Campbell (State Bar No. 012080) AIKEN SCHENK HAWKINS & RICCIARDI CSCampbell@perkinscoie.com 2 P.C. PERKINS COIE LLP 3 2390 East Camelback Road, Suite 400 2901 N. Central Avenue, Suite 2000 Phoenix, Arizona 85016 Phoenix, AZ 85012 4 Telephone: (602) 248-8203 Tel: (602) 351-8000 5 Facsimile: (602) 248-8840 Fax: (602) 648-7000 E-Mail: docket@ashrlaw.com 6 E-Mail: jas@ashrlaw.com William F. Lee (pro hac vice) 7 Bradley W. Caldwell (pro hac vice) William.Lee@wilmerhale.com 8 Jason D. Cassady (pro hac vice) Joseph J. Mueller (pro hac vice) J. Austin Curry (pro hac vice) Joseph.Mueller@wilmerhale.com 9 Warren J. McCarty (pro hac vice) WILMER CUTLER PICKERING 10 CALDWELL CASSADY CURRY P.C. HALE AND DORR LLP 2101 Cedar Springs Rd., Suite 1000 60 State Street 11 Dallas, Texas 75201 Boston, MA 02109 Telephone: (214) 888-4848 Tel: (617) 526-6000 12 Facsimile: (214) 888-4849 Fax: (617) 526-5000 13 Attorneys for Plaintiff Continental Attorneys for Defendants Intel Corporation, 14 Circuits, LLC Ibiden U.S.A. Corporation, and Ibiden Co. 15 Ltd. 16 IN THE UNITED STATES DISTRICT COURT 17 FOR THE DISTRICT OF ARIZONA 18 19 Continental Circuits LLC, CASE NO. CV-16-2026-PHX-DGC 20 Plaintiff, STIPULATION AND JOINT MOTION 21 v. FOR ENTRY OF FINAL JUDGMENT OF NON-INFRINGEMENT AND NON-22 Intel Corp., Ibiden U.S.A. INDEFINITENESS Corp., Ibiden Co., Ltd., 23 Defendants. 24 25 26 27 28 29 Case 2:16-cv-02026-DGC Document 266 Filed 09/07/17 Page 2 of 7 1 Plaintiff Continental Circuits LLC ("Continental Circuits"), Defendant Intel 2 Corporation ("Intel"), and Defendants Ibiden U.S.A. Corporation and Ibiden Co., Ltd. 3 ("Ibiden Defendants") (Intel and the Ibiden Defendants collectively referred to as 4 "Defendants"), by their undersigned counsel, hereby stipulate and agree, subject to the 5 approval of the Court, to entry of final judgment as follows: 6 1. This is a patent infringement action brought by Continental Circuits against 7 Defendants. In response, Defendants have asserted affirmative defenses and 8 counterclaimed for declaratory judgments of invalidity and non-infringement. 9 2. This Court has jurisdiction over the claims and counterclaims in this action 10 pursuant to 28 U.S.C. §§ 1331, 1338, 2201, and 2202. 11 3. The patents-in-suit are U.S. Patent No. 7,501,582 ("the'582 patent"), U.S. 12 Patent No. 8,278,560 ("the'560 patent"), U.S. Patent No. 8,581,105 ("the'105 patent"), 13 and U.S. Patent No. 9,374,912 ("the'912 patent") (collectively the "Patents-in-Suit"). 14 4. On March 13, 2017, Continental Circuits filed its Second Amended 15 Complaint against Defendants asserting infringement of the Patents-in-Suit. 16 5. On June 30, 2017, Intel and the Ibiden Defendants each filed an Amended 17 Answer and Counterclaims to Continental Circuits’ Second Amended Complaint asserting 18 affirmative defenses and counterclaims for declaratory judgments of invalidity and non-19 infringement. 20 6. Continental Circuits’ allegations of infringement are directed to certain Intel 21 products and package substrate components contained within those Intel products, 22 identified in Continental Circuits’ Second Amended Complaint (ECF No. 133) (the 23 "Accused Products")—subject to the limits imposed by the Court’s June 19, 2017 order on 24 Defendants’ motion to dismiss portions of that Complaint—that Continental Circuits 25 accuses of infringing claims 85, 87, 89, 92, 94, 95, 100, 109, 114, and 122 of the'582 26 patent, claims 14 and 19 of the'560 patent, claims 13, 53, 71, 80, 82, 86, 88, 91, 95, 97, 27 101, and 103 of the'105 patent, and claims 2, 3, 18, 19, 20, 26, 27, and 28 of the'912 28 patent (the "Asserted Claims"). 29-1-Case 2:16-cv-02026-DGC Document 266 Filed 09/07/17 Page 3 of 7 1 7. On August 9, 2017, the Court entered an Order on claim construction (the 2 "Claim Construction Order") in the above-captioned case. ECF No. 243. 3 8. In the Claim Construction Order, the Court grouped the following seven 4 claim terms (encompassing all Asserted Claims) into Category 1: "etching [of] the epoxy," 5 "etching [of] the dielectric material," "removal of a portion of the dielectric material," 6 "removal of some of the dielectric material," "a surface of a layer of a dielectric material," 7 "a surface of a dielectric material," and "a dielectric material comprising a surface." 8 9. In the Claim Construction Order, the Court grouped the following four claim 9 terms (encompassing claims 85, 87, 89, 92, 94, 95, 100, 109, 114, and 122 of the'582 10 patent; claims 14 and 19 of the'560 patent; and claims 13, 53, 71, 80, 82, 86, 88, 91, 95, 11 97, 101, and 103 of the'105 patent) into Category 4: "a sample of the circuitry," "upgrade 12 slope," "peel strength greater than a peel strength that would be produced by a single 13 desmear process," and "substantially greater cross-sectional distance distant from the 14 [initial] surface." 15 10. Both Continental Circuits and Defendants made submissions (including 16 briefing, expert declarations, and presentations to the Court at the technology 17 tutorial/Markman hearing) that addressed what a person of ordinary skill in the art would 18 understand a desmear process to comprise in the context of the Patents-in-Suit. Defendants 19 explained that a desmear process would comprise six steps (1. swelling, 2. rinsing, 3. 20 etching, 4. rinsing, 5. neutralizing, 6. rinsing), and that a repeated desmear process would 21 comprise repeating those six steps. See 8/4/2017 Markman Hearing Transcript, ECF No. 22 253 at 116:4-20 (citing the'582 patent at 9:1-9). (Under this view, a desmear process could 23 include additional steps, and a repeated desmear process could be performed more than 24 twice.) Continental Circuits agreed that a person of ordinary skill in the art would 25 understand "the generic'desmear’ process, as described in the Patents-in-Suit... 26 comprises a set of sub-steps: swelling, rinsing, etching, rinsing, neutralizing, and rinsing." 27 Continental Circuits’ Opening Claim Construction Brief, Ex. A, ECF No. 189-2 (Hoffman 28 Decl.) at 4. 29-2-Case 2:16-cv-02026-DGC Document 266 Filed 09/07/17 Page 4 of 7 1 2 11. The Court adopted Defendants’ Category 1 proposal that "each phrase 3 should be construed to include a requirement that the etching, removal, or modification of 4 the dielectric material be'produced by a repeated desmear process.’" Claim Construction 5 Order, ECF No. 243 at 2-3. In reaching this construction, the Court cited both intrinsic and 6 extrinsic evidence, including the'582 patent at column 9 lines 1 through 9: "[T]he 7 specification contains this strong statement:'In stark contrast with the etch and swell 8 process of the known prior art, however, a second pass through the process (sub-steps A 9 through F) is used. The second pass seems to make use of non-homogeneities in bringing 10 about a formation of the teeth.’ This language draws a'stark contrast’ between the'known 11 prior art’ and the current invention’s'second pass through the process.’" Id. at 8 (emphasis 12 in original; citation omitted). 13 12. Defendants do not manufacture the Accused Products according to a 14 repetition of a desmear process comprising six steps (1. swelling, 2. rinsing, 3. etching, 4. 15 rinsing, 5. neutralizing, 6. rinsing). Defendants contend that this is corroborated by, e.g., 16 Exhibit A, Ibiden-CC 0000468 at 0000479; Exhibit B, Ibiden-CC 0000489 at 0000499; 17 Exhibit C, Ibiden Process Control Plan 88701DOC1601426 at 88701DOC1601429, 18 88701DOC1601489; and Exhibit D, Nan Ya Process Control Plan 88708DOC0004163 at 19 88708DOC0004172, 88708DOC0004336-41. Given that discovery is still underway, 20 Continental Circuits does not stipulate that the documents corroborate the parties’ 21 stipulation. 22 13. The parties stipulate and agree that under the Court’s Claim Construction 23 Order, Continental Circuits cannot prevail on the issue of literal infringement of the 24 Asserted Claims of any of the Patents-in-Suit because Continental Circuits cannot prove 25 that any Accused Products satisfy the requirement that the etching, removal, or 26 modification of the dielectric material be "produced by a repeated desmear process." 27 Continental Circuits cannot prove that any Accused Products are manufactured according 28 to a desmear process comprising six steps (1. swelling, 2. rinsing, 3. etching, 4. rinsing, 5. 29-3-Case 2:16-cv-02026-DGC Document 266 Filed 09/07/17 Page 5 of 7 1 neutralizing, 6. rinsing), followed by a process comprising those six steps. Furthermore, 2 the parties stipulate and agree that one reason that Continental Circuits cannot prevail on 3 the issue of infringement under the doctrine of equivalents is that at least one of the bases 4 for the Court’s Claim Construction Order is clear and unmistakable disavowal. This 5 stipulation is without prejudice to Defendants’ ability to assert other reasons why 6 Continental Circuits cannot prevail on the issue of infringement under the doctrine of 7 equivalents. 8 14. Therefore, the parties stipulate and agree to the entry of a final judgment that 9 the Defendants do not infringe the Asserted Claims of the Patents-in-Suit based on the 10 Court’s construction of the Category 1 terms. 11 15. With respect to the Category 4 terms, the Court ruled as a matter of law that 12 each term is not indefinite. Claim Construction Order, ECF No. 243 at 21-30. Therefore, 13 the parties stipulate and agree to the entry of final judgment of non-indefiniteness under 35 14 U.S.C. § 112, ¶ 2, with respect to the terms "a sample of the circuitry" (claims 94, 95, and 15 122 of the'582 patent); "upgrade slope" (claims 85, 87, 89, 92, 94, 95, 100, 109, 114, and 16 122 of the'582 patent); "peel strength greater than a peel strength that would be produced 17 by a single desmear process" (claims 87 and 92 of the'582 patent); and "substantially 18 greater cross-sectional distance distant from the [initial] surface" (claims 14 and 19 of the 19'560 patent; and claims 13, 53, 71, 80, 82, 86, 88, 91, 95, 97, 101, and 103 of the'105 20 patent). 21 16. The parties further stipulate and agree that the affirmative defenses and 22 counterclaims asserted in Intel’s Amended Answer and Counterclaims and the Ibiden 23 Defendants’ Amended Answer and Counterclaims should be dismissed without prejudice, 24 except for those concerning indefiniteness under 35 U.S.C. § 112, ¶ 2, with respect to the 25 terms "a sample of the circuitry," "upgrade slope," "peel strength greater than a peel 26 strength that would be produced by a single desmear process," and "substantially greater 27 cross-sectional distance distant from the [initial] surface." The parties further stipulate and 28 29-4-Case 2:16-cv-02026-DGC Document 266 Filed 09/07/17 Page 6 of 7 1 agree that Defendants may revive any defenses and counterclaims dismissed without 2 prejudice in the event of a remand. 3 17. The parties reserve all of their respective appellate rights, including the right 4 to challenge the Court’s Claim Construction Order, in an appeal to the United States Court 5 of Appeals for the Federal Circuit. 6 18. The parties further stipulate that, in the current procedural posture, each party 7 should bear its own fees and costs, including attorney’s fees, incurred in this action through 8 the date of this stipulation. The parties reserve the right to seek any additional fees and 9 costs incurred in this action (including in any appeal) in the future. Defendants’ stipulation 10 is without prejudice to Defendants’ contention that Continental Circuits has never had an 11 objectively reasonable basis for alleging infringement by Defendants. Further, if the 12 judgment of non-infringement based on the present stipulation were vacated and the case 13 remanded, the parties reserve the right to seek fees and costs incurred to date (e.g., based on 14 additional facts first learned via further discovery). 15 16 17 18 Respectfully Submitted, Dated this 7th day of September, 2017. 19 20 By/s/Bradley W. Caldwell By/s/Joseph J. Mueller 21 Bradley W. Caldwell (pro hac vice) Chad S. Campbell (SBN 012080) 22 Jason D. Cassady (pro hac vice) CSCampbell@perkinscoie.com J. Austin Curry (pro hac vice) PERKINS COIE LLP 23 Warren J. McCarty (pro hac vice) 2901 N. Central Avenue, Suite 2000 24 CALDWELL CASSADY CURRY P.C. Phoenix, AZ 85012 2101 Cedar Springs Rd., Suite 1000 Tel: (602) 351-8000/Fax: (602) 648-7000 25 Dallas, Texas 75201 26 Telephone: (214) 888-4848 William F. Lee (pro hac vice) Facsimile: (214) 888-4849 William.Lee@wilmerhale.com 27 Email: bcaldwell@caldwellcc.com Joseph J. Mueller (pro hac vice) Email: jcassady@caldwellcc.com Joseph.Mueller@wilmerhale.com 28 Email: acurry@caldwellcc.com WILMER CUTLER PICKERING HALE 29-5-Case 2:16-cv-02026-DGC Document 266 Filed 09/07/17 Page 7 of 7 1 Email: wmccarty@caldwellcc.com AND DORR LLP 60 State Street 2 Joseph A. Schenk (SBN 009260) Boston, MA 02109 3 AIKEN SCHENK HAWKINS & Tel: (617) 526-6000/Fax: (617) 526-5000 RICCIARDI P.C. 4 2390 East Camelback Road, Suite 400 Nina S. Tallon (pro hac vice) 5 Phoenix, Arizona 85016 Nina.Tallon@wilmerhale.com Telephone: (602) 248-8203 WILMER CUTLER PICKERING HALE AND 6 Facsimile: (602) 248-8840 DORR LLP E-Mail: docket@ashrlaw.com 1875 Pennsylvania Ave. NW 7 E-Mail: jas@ashrlaw.com Washington, DC 20006 8 Tel: (202) 663-6000/Fax: (202) 663-6363 ATTORNEYS FOR PLAINTIFF 9 CONTINENTAL CIRCUITS, LLC ATTORNEYS FOR DEFENDANTS INTEL 10 CORPORATION, IBIDEN U.S.A. CORPORATION, AND IBIDEN CO. LTD. 11 CERTIFICATE OF SERVICE 12 The undersigned certifies that all counsel of record who have consented to electronic 13 service are being served with a copy of the foregoing document via the Court’s CM/ECF 14 system on this 7th day of September, 2017. 15/s/Bradley W. Caldwell (pro hac vice) 16 Bradley W. Caldwell 17 18 19 20 21 22 23 24 25 26 27 28 29-6-

Joint MOTION to Seal Document {{266}} Stipulation and Joint Motion for Entry of Final Judgment of Non-Infringement and Non-Indefiniteness by Continental Circuits LLC.

Case 2:16-cv-02026-DGC Document 267 Filed 09/07/17 Page 1 of 4 1 Joseph A. Schenk (State Bar No. 009260) Chad S. Campbell (State Bar No. 012080) AIKEN SCHENK HAWKINS & RICCIARDI CSCampbell@perkinscoie.com 2 P.C. PERKINS COIE LLP 2390 East Camelback Road, Suite 400 2901 N. Central Avenue, Suite 2000 3 Phoenix, Arizona 85016 Phoenix, AZ 85012 4 Telephone: (602) 248-8203 Tel: (602) 351-8000 Facsimile: (602) 248-88840 Fax: (602) 648-7000 5 E-Mail: docket@ashrlaw.com E-Mail: jas@ashrlaw.com William F. Lee (pro hac vice) 6 William.Lee@wilmerhale.com 7 Bradley W. Caldwell (pro hac vice) Joseph J. Mueller (pro hac vice) Jason D. Cassady (pro hac vice) Joseph.Mueller@wilmerhale.com 8 J. Austin Curry (pro hac vice) WILMER CUTLER PICKERING Warren J. McCarty (pro hac vice) HALE AND DORR LLP 9 CALDWELL CASSADY CURRY P.C. 60 State Street 10 2101 Cedar Springs Rd., Suite 1000 Boston, MA 02109 Dallas, Texas 75201 Tel: (617) 526-6000 11 Telephone: (214) 888-4848 Fax: (617) 526-5000 Facsimile: (214) 888-4849 12 Attorneys for Plaintiff Attorneys for Defendants Intel 13 Continental Circuits, LLC Corporation, Ibiden U.S.A. Corporation, 14 and Ibiden Co., Ltd. 15 IN THE UNITED STATES DISTRICT COURT 16 FOR THE DISTRICT OF ARIZONA 17 Continental Circuits LLC, 18 CASE NO. CV-16-2026-PHX-DGC Plaintiff, 19 JOINT MOTION TO SEAL v. EXHIBITS TO THE STIPULATION 20 AND JOINT MOTION FOR Intel Corporation; 21 Ibiden U.S.A. Corporation; and ENTRY OF FINAL JUDGMENT Ibiden Co. Ltd. OF NON-INFRINGEMENT AND 22 NON-INDEFINITENESS Defendants. 23 24 25 26 27 28 Case 2:16-cv-02026-DGC Document 267 Filed 09/07/17 Page 2 of 4 1 Pursuant to Civil Local Rule 5.6, Plaintiff Continental Circuits LLC ("Continental 2 Circuits") and Defendants Intel Corporation, Ibiden U.S.A. Corporation, and Ibiden Co. 3 Ltd. ("Defendants") hereby jointly request an Order sealing the four exhibits to the parties’ 4 Stipulation and Joint Motion for Entry of Final Judgment of Non-Infringement and Non-5 Indefiniteness ("Exhibits"). 6 The parties respectfully request sealing the Exhibits because they disclose 7 confidential technical, competitive, and commercially sensitive information that Defendants 8 have designated as "Outside Counsel Restricted" under the Protective Order entered in this 9 case. This Motion is based on the following Memorandum of Points and Authorities. 10 MEMORANDUM OF POINTS AND AUTHORITIES 11 I. STATEMENT OF FACTS 12 On September 7, 2017, the parties jointly stipulated to entry of judgment of non-13 infringement of the asserted claims of the patents-in-suit in view of the Court’s construction 14 of the Category 1 terms in the Claim Construction Order (ECF No. 243). The parties 15 stipulated, inter alia, that Defendants do not manufacture the accused products according to 16 a repetition of a desmear process comprising six steps (1. swelling, 2. rinsing, 3. etching, 4. 17 rinsing, 5. neutralizing, 6. rinsing), which Defendants contend is corroborated by the four 18 exhibits to the stipulation that describe technical, competitive and commercially sensitive 19 information regarding the manufacture of Defendants’ accused products. 20 II. ARGUMENT 21 Parties may file documents under seal if good cause or compelling reasons for 22 sealing are shown. See, e.g., Kamakana v. City & County of Honolulu, 447 F.3d 1172, 23 1180 (9th Cir. 2006). The Ninth and Federal Circuits have both found that sealing is 24 justified—and the public’s interest in access is outweighed—when public disclosure of a 25 party’s confidential information would result in competitive harm or the disclosure of trade 26 secrets. See id. at 1178-80; Apple Inc. v. Samsung Elecs. Co., 727 F.3d 1214, 1222 (Fed. 27 Cir. 2013); In re Electronic Arts, 298 F. App’x 568, 569-70 (9th Cir. 2008) (citing 28 Restatement of Torts definition of "trade secret" and further noting that "compelling-2-Case 2:16-cv-02026-DGC Document 267 Filed 09/07/17 Page 3 of 4 1 reasons" may exist if sealing is required to prevent judicial documents from being used "as 2 sources of business information that might harm a litigant’s competitive standing" (citation 3 omitted)). Consistent with this, Federal Rule of Civil Procedure 26(c)(1) states that a court 4 may, "for good cause, issue an order to protect a party or person from annoyance, 5 embarrassment, oppression, or undue burden or expense" by, among other things, 6 "requiring that a trade secret or other confidential research, development, or commercial 7 information not be revealed or be revealed only in a specified way[.]" Fed. R. Civ. P. 8 26(c)(1)(G); see also LRCiv 5.6. 9 Here, there is good cause to permit filing of the Exhibits under seal. The Exhibits 10 contain technical information regarding the manufacture of Defendants’ accused products 11 that Defendants have designated "Outside Counsel Restricted," that would "have economic 12 value to others," and that is "not generally known by others and [] not readily ascertainable 13 by proper means." See MMI, Inc. v. Baja, Inc., 743 F. Supp. 2d 1101, 1106 (D. Ariz. 14 2010). The public disclosure of this information would result in competitive harm to 15 Defendants. Furthermore, the sealing of the Exhibits will have little effect on the public’s 16 ability to understand the judicial process because the information is not necessary to 17 understand the parties’ stipulation and joint motion as a whole. See Kamakana, 447 F.3d at 18 1179. 19 III. CONCLUSION 20 Because good cause and compelling reasons for sealing exist, the parties respectfully 21 request that the Court enter the proposed order. 22 23 DATED this 7th day of September, 2017. 24 Respectfully submitted, 25 By:/s/Warren J. McCarty By:/s/Joseph J. Mueller 26 Joseph A. Schenk (State Bar No. 009260) Chad S. Campbell (State Bar No. 012080) 27 AIKEN SCHENK HAWKINS & CSCampbell@perkinscoie.com RICCIARDI P.C. PERKINS COIE LLP 28 2390 East Camelback Road, Suite 400 2901 N. Central Avenue, Suite 2000 Phoenix, Arizona 85016 Phoenix, AZ 85012-3-Case 2:16-cv-02026-DGC Document 267 Filed 09/07/17 Page 4 of 4 1 Telephone: (602) 248-8203 Telephone: (602) 351-8000 Facsimile: (602) 248-88840 Facsimile: (602) 648-7000 2 3 Bradley W. Caldwell (pro hac vice) William F. Lee (pro hac vice) bcaldwell@caldwellcc.com William.Lee@wilmerhale.com 4 Jason D. Cassady (pro hac vice) Joseph J. Mueller (pro hac vice) 5 jcassady@caldwellcc.com Joseph.Mueller@wilmerhale.com J. Austin Curry (pro hac vice) WILMER CUTLER PICKERING HALE AND 6 acurry@caldwellcc.com DORR LLP Warren J. McCarty (pro hac vice) 60 State Street 7 wmccarty@caldwellcc.com Boston, MA 02109 8 CALDWELL CASSADY CURRY P.C. Telephone: (617) 526-6000 2101 Cedar Springs Rd., Suite 1000 Facsimile: (617) 526-5000 9 Dallas, Texas 75201 10 Telephone: (214) 888-4848 Nina S. Tallon (pro hac vice) Facsimile: (214) 888-4849 Nina.Tallon@wilmerhale.com 11 WILMER CUTLER PICKERING HALE AND Attorneys for Plaintiff DORR LL 12 Continental Circuits, LLC 1875 Pennsylvania Ave., NW 13 Washington, DC 20006 Telephone: (202) 663-6000 14 Facsimile: (202) 663-6363 15 Attorneys for Defendants Intel Corp., 16 Ibiden U.S.A. Corp., and Ibiden Co., Ltd. 17 18 19 CERTIFICATE OF SERVICE 20 The undersigned certifies that all counsel of record who have consented to electronic 21 service are being served with a copy of the foregoing document via the Court’s CM/ECF 22 system on this 7th day of September, 2017. 23/s/Warren J. McCarty, III (pro hac vice) Warren J. McCarty, III 24 25 26 27 28-4-

ORDER granting {{263}}, {{267}} Motions to Seal. The Clerk is directed to accept for filing under seal the documents lodged as Docs. {{264}} and {{268}} on the Court's docket. Signed by Judge David G Campbell on 9/12/17.

1 2 3 4 5 6 IN THE UNITED STATES DISTRICT COURT 7 FOR THE DISTRICT OF ARIZONA 8 9 Continental Circuits LLC, No. CV16-2026 PHX DGC 10 Plaintiff, ORDER 11 v. 12 Intel Corporation, et al., 13 Defendants. 14 15 Pending before the Court is the parties’ joint motion to seal document re portions 16 of the joint notice of lodging. Doc. 263. Also pending before the Court is the parties’ 17 joint motion to seal re joint motion for entry of final judgment. Doc. 267. 18 IT IS ORDERED that the motions to seal (Docs. 263, 267) are granted. The 19 Clerk is directed to accept for filing under seal the documents lodged as Docs. 264 and 20 268 on the Court’s docket. 21 Dated this 12th day of September, 2017. 22 23 24 25 26 cc: All counsel 27 28

NOTICE OF APPEAL to Federal Circuit re: {{273}} Judgment, {{243}} Order by Continental Circuits LLC. Filing fee received: &#036; 505.00, receipt number 0970-14742290.

1 AIKEN SCHENK HAWKINS & RICCIARDI P.C. 2390 East Camelback Road, Suite 400 2 Phoenix, Arizona 85016 Telephone: (602) 248-8203 3 Facsimile: (602) 248-8840 E-Mail: docket@ashrlaw.com 4 E-Mail: jas@ashrlaw.com Joseph A. Schenk – 009260 5 Bradley W. Caldwell (pro hac vice) 6 Jason D. Cassady (pro hac vice) J. Austin Curry (pro hac vice) 7 Justin T. Nemunaitis (pro hac vice) Warren J. McCarty (pro hac vice) 8 CALDWELL CASSADY CURRY P.C. 2101 Cedar Springs Rd., Suite 1000 9 Dallas, Texas 75201 Telephone: (214) 888-4848 10 Facsimile: (214) 888-4849 Email: bcaldwell@caldwellcc.com 11 Email: jcassady@caldwellcc.com Email: acurry@caldwellcc.com 12 Email: jnemunaitis@caldwellcc.com Email: wmccarty@caldwellcc.com 13 Attorneys for Plaintiff Continental Circuits, LLC 14 15 IN THE UNITED STATES DISTRICT COURT 16 FOR THE DISTRICT OF ARIZONA 17 Continental Circuits LLC, CASE NO. CV-16-2026-PHX-DGC 18 Plaintiff, 19 NOTICE OF APPEAL v. 20 Intel Corp., Ibiden U.S.A. 21 Corp., Ibiden Co., Ltd., 22 Defendants. 23 24 Plaintiff Continental Circuits LLC ("Continental Circuits") hereby gives notice that 25 it appeals to the United States Court of Appeals for the Federal Circuit from the final 26 judgment entered in this action on September 13, 2017 (Dkt. No. 273); from any and all 27 adverse prior rulings, orders, and determinations antecedent to the final judgment; and from 28-1-29 1 any and all adverse prior rulings, orders, and determinations merged into the final 2 judgment; including but not limited to the Order entered on August 9, 2017 (Dkt. No. 243), 3 construing certain disputed terms in the asserted claims of U.S. Patent Nos. 7,501,582; 4 8,278,560; 8,581,105; and 9,374,912. 5 6 Dated this 10th day of October, 2017. Respectfully Submitted, 7 8 By/s/Warren J. McCarty, III 9 Bradley W. Caldwell (pro hac vice) 10 Jason D. Cassady (pro hac vice) J. Austin Curry (pro hac vice) 11 Justin T. Nemunaitis (pro hac vice) Warren J. McCarty (pro hac vice) 12 CALDWELL CASSADY CURRY P.C. 13 2101 Cedar Springs Rd., Suite 1000 Dallas, Texas 75201 14 Telephone: (214) 888-4848 15 Facsimile: (214) 888-4849 Email: bcaldwell@caldwellcc.com 16 Email: jcassady@caldwellcc.com Email: acurry@caldwellcc.com 17 Email: wmccarty@caldwellcc.com 18 Joseph A. Schenk (SBN 009260) 19 AIKEN SCHENK HAWKINS & 20 RICCIARDI P.C. 2390 East Camelback Road, Suite 400 21 Phoenix, Arizona 85016 Telephone: (602) 248-8203 22 Facsimile: (602) 248-8840 23 E-Mail: docket@ashrlaw.com E-Mail: jas@ashrlaw.com 24 25 ATTORNEYS FOR PLAINTIFF CONTINENTAL CIRCUITS, LLC 26 27 28-2-29 1 CERTIFICATE OF SERVICE 2 The undersigned certifies that all counsel of record who have consented to electronic 3 service are being served with a copy of the foregoing document via the Court’s CM/ECF 4 system on this 10th day of October, 2017. 5/s/Warren J. McCarty, III (pro hac vice) Warren J. McCarty, III 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28-3-29

USCA Case Number re: {{274}} Notice of Appeal. Case number 18-1076, Federal Circuit.

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT NOTICE OF DOCKETING 18-1076-Continental Circuits LLC v. Intel Corporation Date of docketing: October 19, 2017 Appeal from: United States District Court for the District of Arizona Case No. 2:16-cv-02026-DGC Appellant: Continental Circuits LLC Critical dates include: • Date of docketing. See Fed. Cir. R. 12. • Entry of appearance. (Due within 14 days of the date of docketing.) See Fed. Cir. R. 47.3. • Certificate of interest. (Due within 14 days of the date of docketing.) See Fed. Cir. R. 47.4. • Docketing Statement. (Due within 14 days of the date of docketing or within 30 days if the United States or its officer or agency is a party in the appeal.) [Only in cases where all parties are represented by counsel. See Fed. Cir. R. 33.1 and the mediation guidelines available at www.cafc.uscourts.gov.] • Requests for extensions of time. See Fed. Cir. R. 26 and 27. N.B. Delayed requests are not favored by the court. • Briefs. See Fed. Cir. R. 31. N.B. You will not receive a separate briefing schedule from the Clerk's Office. However, in a case involving an appellant, a cross-appellant, and an appellee, a special briefing schedule is used. The appellant's opening brief is due within 60 days of the date of docketing. The cross-appellant's opening brief is due within 40 days of filing of the appellant's opening brief. The appellee's brief is due within 40 days of filing of the cross-appellant's brief. The appellant's response/reply brief is due within 40 days of filing of the appellee's brief. The cross-appellant's reply brief is due within 14 days of filing of the appellant's response/reply brief. The joint appendix is due within 10 days of filing of the cross-appellant's reply brief. • Settlement discussions. See Fed. Cir. R. 33. • ORAL ARGUMENT SCHEDULE CONFLICTS: Counsel should advise the clerk in writing within 30 days once briefing is completed of potential scheduling conflicts or as soon as they are known and should not wait until an actual conflict arises. Once scheduled, a case will not be postponed except on motion showing compelling reasons. See Practice Note following Fed. Cir. R. 34. The official caption is reflected on the electronic docket under the listing of the parties and counsel. The Rules of Practice and required forms are available at www.cafc.uscourts.gov. Peter R. Marksteiner Clerk of Court cc: United States District Court for the District of Arizona Aaron Matz Warren Joseph McCarty III

NOTICE OF APPEAL to Federal Circuit re: {{273}} Judgment, {{243}} Order by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation. Filing fee received: &#036; 505.00, receipt number 0970-14779083.

1 Chad S. Campbell (State Bar No. 012080) CSCampbell@perkinscoie.com 2 PERKINS COIE LLP 3 2901 N. Central Avenue, Suite 2000 Phoenix, AZ 85012 4 Tel: (602) 351-8000/Fax: (602) 648-7000 5 William F. Lee (admitted pro hac vice) 6 William.Lee@wilmerhale.com Joseph J. Mueller (admitted pro hac vice) 7 Joseph.Mueller@wilmerhale.com 8 WILMER CUTLER PICKERING HALE AND DORR LLP 9 60 State Street Boston, MA 02109 10 Tel: (617) 526-6000/Fax: (617) 526-5000 11 Nina S. Tallon (admitted pro hac vice) 12 Nina.Tallon@wilmerhale.com 13 WILMER CUTLER PICKERING HALE AND DORR LLP 14 1875 Pennsylvania Avenue NW Washington, DC 20006 15 Tel: (202) 663-6000/Fax: (202) 663-6363 16 Attorneys for Defendants Intel Corp., 17 Ibiden U.S.A. Corp., and Ibiden Co. Ltd. 18 IN THE UNITED STATES DISTRICT COURT 19 FOR THE DISTRICT OF ARIZONA 20 21 Continental Circuits LLC, Case No. CV-16-2026-PHX-DGC 22 Plaintiff, DEFENDANTS’ NOTICE OF 23 v. CROSS-APPEAL 24 Intel Corporation; Ibiden U.S.A. Corporation; and 25 Ibiden Co. Ltd. 26 Defendants. 27 28 1 On October 10, 2017, Plaintiff Continental Circuits LLC filed its Notice of Appeal 2 to the United States Court of Appeals for the Federal Circuit (Dkt. No. 274). Defendants 3 Intel Corporation, Ibiden U.S.A. Corporation, and Ibiden Co. Ltd. (collectively 4 "Defendants") hereby give notice that Defendants cross-appeal to the United States Court 5 of Appeals for the Federal Circuit from the final judgment entered in this action on 6 September 13, 2017 (Dkt. No. 273) and from any and all adverse prior rulings, orders, 7 and determinations merged into the final judgment—including, but not limited to, the 8 Order entered on August 9, 2017 (Dkt. No. 243) construing certain disputed claim terms 9 in the asserted patents and denying Defendants’ request that the Court find certain 10 asserted claims to be indefinite. 11 12 DATED this 20th day of October, 2017. 13 Respectfully submitted, 14 15 By:/s/Joseph J. Mueller Chad S. Campbell (State Bar No. 012080) 16 CSCampbell@perkinscoie.com PERKINS COIE LLP 17 2901 N. Central Avenue, Suite 2000 18 Phoenix, AZ 85012 Telephone: (602) 351-8000 19 Facsimile: (602) 648-7000 20 William F. Lee (admitted pro hac vice) 21 William.Lee@wilmerhale.com Joseph J. Mueller (admitted pro hac vice) 22 Joseph.Mueller@wilmerhale.com 23 WILMER CUTLER PICKERING HALE AND DORR LLP 24 60 State Street 25 Boston, MA 02109 Telephone: (617) 526-6000 26 Facsimile: (617) 526-5000 27 28 1 Nina S. Tallon (admitted pro hac vice) Nina.Tallon@wilmerhale.com 2 WILMER CUTLER PICKERING HALE 3 AND DORR LLP 1875 Pennsylvania Ave., NW 4 Washington, DC 20006 Telephone: (202) 663-6000 5 Facsimile: (202) 663-6363 6 Attorneys for Defendants Intel Corp., 7 Ibiden U.S.A. Corp., and Ibiden Co., Ltd. 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28-2-1 CERTIFICATE OF SERVICE 2 I certify that on the 20th day of October, 2017, I electronically transmitted the 3 foregoing document to the Clerk’s Office using the CM/ECF System for filing and 4 transmittal of a Notice of Electronic Filing to all CM/ECF registrants of record in this 5 matter. 6 7/s/Daniel R. Graziano 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

Federal Circuit Case Number re: {{276}} Notice of Appeal. Case number 18-1103, Federal Circuit.

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT NOTICE OF DOCKETING 18-1103-Continental Circuits LLC v. Intel Corporation Date of docketing: October 26, 2017 Appeal from: United States District Court for the District of Arizona Case No. 2:16-cv-02026-DGC Cross-Appellants: Intel Corporation, Ibiden U.S.A. Corporation, Ibiden Company Limited Critical dates include: • Date of docketing. See Fed. Cir. R. 12. • Entry of appearance. (Due within 14 days of the date of docketing.) See Fed. Cir. R. 47.3. • Certificate of interest. (Due within 14 days of the date of docketing.) See Fed. Cir. R. 47.4. • Docketing Statement. (Due within 14 days of the date of docketing or within 30 days if the United States or its officer or agency is a party in the appeal.) [Only in cases where all parties are represented by counsel. See Fed. Cir. R. 33.1 and the mediation guidelines available at www.cafc.uscourts.gov.] • Requests for extensions of time. See Fed. Cir. R. 26 and 27. N.B. Delayed requests are not favored by the court. • Briefs. See Fed. Cir. R. 31. N.B. You will not receive a separate briefing schedule from the Clerk's Office. However, in a case involving an appellant, a cross-appellant, and an appellee, a special briefing schedule is used. The appellant's opening brief is due within 60 days of the date of docketing. The cross-appellant's opening brief is due within 40 days of filing of the appellant's opening brief. The appellee's brief is due within 40 days of filing of the cross-appellant's brief. The appellant's response/reply brief is due within 40 days of filing of the appellee's brief. The cross-appellant's reply brief is due within 14 days of filing of the appellant's response/reply brief. The joint appendix is due within 10 days of filing of the cross-appellant's reply brief. • Settlement discussions. See Fed. Cir. R. 33. • ORAL ARGUMENT SCHEDULE CONFLICTS: Counsel should advise the clerk in writing within 30 days once briefing is completed of potential scheduling conflicts or as soon as they are known and should not wait until an actual conflict arises. Once scheduled, a case will not be postponed except on motion showing compelling reasons. See Practice Note following Fed. Cir. R. 34. The official caption is reflected on the electronic docket under the listing of the parties and counsel. The Rules of Practice and required forms are available at www.cafc.uscourts.gov. Peter R. Marksteiner Clerk of Court cc: United States District Court for the District of Arizona Warren Joseph McCarty III Joseph J. Mueller

NOTICE by Continental Circuits LLC Regarding Federal Circuit Transcript Purchase Order Form 22 - A transcript is already on file.

FORM 22. Transcript Purchase Order Form 22 Rev. 03/16 UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT U.S. District Court for Arizona Continental Circuits LLC) Appeal from Court of International Trade Court of Federal Claims-VERSUS-) Trial Court No. 2:16-cv-02026-DGC Intel Corp.; Ibiden U.S.A. Corp.; Ibiden Co. Ltd.) Circuit Court No. TRANSCRIPT PURCHASE ORDER (See Rules 10(b) and 11(b) of the Federal Rules of Appellate Procedure) PART I-TO BE COMPLETED BY THE APPELLANT WITHIN 14 DAYS OF FILING OF NOTICE OF APPEAL. When filing this form, distribute copies as follows: 3 copies to the court reporter; 1 copy to the trial court; 1 copy to the appellee; 1 copy retained by appellant. A. Complete one of the following: A transcript is not needed for the appeal A transcript is already on file Request is hereby made to the reporter for a transcript of the following proceedings (give particulars): Note: voir dire and closing arguments are not prepared unless specifically requested. Note: Unless the entire transcript is ordered, appellant must attach a statement of the issues to Copies 4 and 5. B. I certify that financial arrangements have been made with the reporter. Payment is by: Private Funds Government expense (civil case). A motion for transcript has been submitted to the trial judge. SIGNED/s/Warren J. McCarty DATE 10/27/2017 COUNSEL FOR Continental Circuits LLC ADDRESS 2101 Cedar Springs Rd., Suite 1000, Dallas, Texas 75201 TELEPHONE 214-888-4848 PART II-TO BE COMPLETED BY THE COURT REPORTER 2 copies retained by the reporter; 1 copy to be transmitted to the Court of Appeals on same date transcript order is received. Date Purchase Order received: Estimated completion date: Estimated number of pages: I certify that satisfactory financial arrangements have/have not (strike one) been completed with appellant for payment of the cost of the transcript. Telephone Signature and Date PART III-NOTIFICATION THAT TRANSCRIPT HAS BEEN FILED IN THE TRIAL COURT. (To be completed by court reporter on date of filing transcript in Trial Court and this notification must be forwarded to the Court of Appeals on the same date.) This is to certify that the transcript has been completed. volumes of transcript have been filed with Trial Court today. Signature and Date Reset Fields

MANDATE for the Federal Circuit granting the motion to voluntarily dismiss 18-1103 re: {{276}} Notice of Appeal filed by Ibiden U.S.A. Corporation, Ibiden Company Limited, Intel Corporation.

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Description
1
06/22/2016
COMPLAINT. Filing fee received: $ 400.00, receipt number 0970-13100710 filed by Continental Circuits LLC. (submitted by Joseph Schenk)
1
Exhibit A
2
Exhibit B
3
Exhibit C
4
Exhibit D
5
Exhibit E
6
https://ecf.azd.uscourts.gov/doc1/025116040274" onClick="goDLS{{'/doc1/025116040274','987227','12','','2','1','',''}};">6</a> Civil Cover Sheet)
6 Attachments
2
06/22/2016
Filing fee paid, receipt number 0970-13100710. This case has been assigned to the Honorable Deborah M Fine. All future pleadings or documents should bear the correct case number: CV-16-02026-PHX-DMF. Magistrate Election form attached.
1
https://ecf.azd.uscourts.gov/doc1/025116040330" onClick="goDLS{{'/doc1/025116040330','987227','14','','2','1','',''}};">1</a> Consent)
1 Attachment
3
06/23/2016
NOTICE TO PARTY RE: CORPORATE DISCLOSURE STATEMENT: Pursuant to FRCiv 7.1 and LRCiv 7.1.1 the attached Corporate Disclosure Statement form must be filed by all nongovernmental corporate parties with their first appearance. A supplemental statement must be filed upon any change in the information. In addition, if not already filed, the Corporate Disclosure Statement should be filed within 14 days. Corporate Disclosure Statement Deadline set as to Continental Circuits LLC.
4
06/23/2016
NOTICE TO FILER OF DEFICIENCY re: 1 Complaint filed by Continental Circuits LLC. Pursuant to the Electronic Case Filing Administrative Policies and Procedures Manual Section II(B), attorneys are required to submit the automated Civil Cover Sheet when filing a new case. For future reference, the automated Civil Cover Sheet can be found on www.azd.uscourt.gov under the Rules, General Orders & Forms tab, under Forms. No further action is required. This is a TEXT ENTRY ONLY. There is no PDF document associated with this entry.
5
06/23/2016
MINUTE ORDER: Request for Copyright, Trademark, or Patent Information. This case has been designated as a copyright, trademark, or patent case. The Clerk's Office is required to provide information to the Patent and Trademark Office and/or Copyright Office regarding this case. Attached to this docket entry are the required form(s) that must be completed. Plaintiff shall complete the form that is applicable to this particular case. In some cases, you may need to complete both forms.

Within seven (7) days, Plaintiff must submit the required form(s) to the Clerk's Office. Please complete the form and file it with the Court using the specific event: Notice of Filing - Copyright, Trademark or Patent Information, found under the Other Filings header. Please DO NOT mail the form directly to the Patent or Copyright Office. The Clerk's Office will submit the form. If neither form is required for this case, please file a notice indicating the reason the form is not necessary and use the event listed above. This form must be updated if additional patents, copyrights, or trademarks are alleged in a responsive pleading.
1
https://ecf.azd.uscourts.gov/doc1/025116040397" onClick="goDLS{{'/doc1/025116040397','987227','21','','2','1','',''}};">1</a> AO 121)
1 Attachment
6
06/23/2016
Corporate Disclosure Statement by Continental Circuits LLC.
7
06/24/2016
*NOTICE of Filing - Copyright, Trademark or Patent Information filed by Plaintiff Continental Circuits LLC. *Modified to correct event on 8/22/2016*
8
06/24/2016
MOTION for Admission Pro Hac Vice as to attorney Bradley W Caldwell on behalf of Continental Circuits LLC.
9
06/24/2016
MOTION for Admission Pro Hac Vice as to attorney Jason D Cassady on behalf of Continental Circuits LLC.
10
06/24/2016
MOTION for Admission Pro Hac Vice as to attorney Jason S McManis on behalf of Continental Circuits LLC.
11
06/24/2016
MOTION for Admission Pro Hac Vice as to attorney John Austin Curry on behalf of Continental Circuits LLC.
12
06/24/2016
MOTION for Admission Pro Hac Vice as to attorney Warren J McCarty III on behalf of Continental Circuits LLC.
06/24/2016
PRO HAC VICE FEE PAID. $ 175, receipt number PHX173358 as to Bradley W Caldwell, Jason D Cassady, John Austin Curry, Warren J McCarty, Jason S McManis. This is a TEXT ENTRY ONLY. There is no PDF document associated with this entry. (Text entry; no document attached.)
13
06/24/2016
ORDER pursuant to General Order 09-08 granting 8 Motion for Admission Pro Hac Vice; granting 9 Motion for Admission Pro Hac Vice; granting 10 Motion for Admission Pro Hac Vice; granting 11 Motion for Admission Pro Hac Vice; granting 12 Motion for Admission Pro Hac Vice. Per the Court's Administrative Policies and Procedures Manual, applicant has five (5) days in which to register as a user of the Electronic Filing System. Registration to be accomplished via the court's website at www.azd.uscourts.gov. Counsel is advised that they are limited to two (2) additional e-mail addresses in their District of Arizona User Account. (BAS) (This is a TEXT ENTRY ONLY. There is no.pdf document associated with this entry.)
14
07/06/2016
*Party Elects Assignment of Case to District Judge Jurisdiction. This is a TEXT ENTRY ONLY. There is no PDF document associated with this entry. (MAP) *Modified on 7/8/2016 to Reflect District Judge Assignment Not Magistrate Consent; NEF regenerated (MAP)/
15
07/08/2016
MINUTE ORDER: Pursuant to Local Rule 3.7(b), a request has been received for a random reassignment of this case to a District Judge. FURTHER ORDERED Case reassigned by random draw to Judge David G. Campbell. All further pleadings/papers should now list the following COMPLETE case number: CV-16-2026-PHX-DGC. This is a TEXT ENTRY ONLY. There is no PDF document associated with this entry.
16
07/08/2016
ORDER that motions pursuant to Fed. R. Civ. P. 12(b) are discouraged if the defect can be cured by filing an amended pleading. The parties must meet and confer prior to the filing of such motions to determine whether it can be avoided. FURTHER ORDERED that Plaintiff(s) serve a copy of this Order upon Defendant(s) and file a notice of service. See attached Order for complete details. Signed by Judge David G Campbell on 7/8/2016.
17
07/08/2016
NOTICE re: Service of Court's Order by Continental Circuits LLC re: 16 Order re Rule 12(b) Motions.
18
07/14/2016
SUMMONS Submitted by Continental Circuits LLC.
19
07/14/2016
SUMMONS Submitted by Continental Circuits LLC.
20
07/15/2016
Summons Issued as to Ibiden U.S.A. Corportion, Intel Corporation. *** IMPORTANT: When printing the summons, select "Document and stamps" or "Document and comments" for the seal to appear on the document.
1
https://ecf.azd.uscourts.gov/doc1/025116130551" onClick="goDLS{{'/doc1/025116130551','987227','68','','2','1','',''}};">1</a> Summons)
1 Attachment
21
07/27/2016
SERVICE EXECUTED filed by Continental Circuits LLC: Affidavit of Service re: Summons in a Civil Action, Complaint for Patent Infringement, Exhibits and Civil Cover Sheet upon Intel Corporation on 7/15/2016.
22
07/27/2016
SERVICE EXECUTED filed by Continental Circuits LLC: Affidavit of Service re: Summons in a Civil Action, Complaint for Patent Infringement, Exhibits and Civil Cover Sheet upon Ibiden U.S.A. Corporation on 7/15/2016.
23
08/01/2016
Corporate Disclosure Statement by Ibiden Company Limited. (Motolenich-Salas, Kenneth)
24
08/01/2016
Corporate Disclosure Statement by Ibiden U.S.A. Corportion. (Motolenich-Salas, Kenneth)
25
08/02/2016
Corporate Disclosure Statement by Intel Corporation.
26
08/04/2016
STIPULATION FOR EXTENSION OF TIME TO ANSWER COMPLAINT by Ibiden Company Limited, Ibiden U.S.A. Corportion.
1
Text of Proposed Order Proposed Order)(Motolenich-Salas, Kenneth
1 Attachment
27
08/05/2016
ORDER pursuant to 26 Stipulation For Extension of Time To Answer Complaint : All Defendants shall answer or otherwise respond to the complaint on or before 10/4/2016. The Court will not grant further extension to this deadline absent truly extraordinary circumstances. Signed by Judge David G Campbell on 8/5/2016.
28
08/15/2016
SUMMONS Submitted by Continental Circuits LLC.
29
08/16/2016
Summons Issued as to Ibiden Company Limited. (REK). *** IMPORTANT: When printing the summons, select "Document and stamps" or "Document and comments" for the seal to appear on the document.
30
08/16/2016
SERVICE EXECUTED filed by Continental Circuits LLC: Acknowledgment of Service re: Summons in a Civil Action, Complaint for Patent Infringement, Exhibits and Civil Cover Sheet upon Ibiden Co., Ltd. on 8/16/2016.
31
09/07/2016
MOTION for Admission Pro Hac Vice as to attorney Frank J West on behalf of Ibiden Company Limited and Ibiden U.S.A. Corportion.
32
09/07/2016
MOTION for Admission Pro Hac Vice as to attorney Richard D Kelly on behalf of Ibiden Company Limited and Ibiden U.S.A. Corportion.
33
09/07/2016
MOTION for Admission Pro Hac Vice as to attorney Lisa M Mandrusiak on behalf of Ibiden Company Limited and Ibiden U.S.A. Corportion.
34
09/07/2016
MOTION for Admission Pro Hac Vice as to attorney Jacob A Doughty on behalf of Ibiden Company Limited and Ibiden U.S.A. Corportion.
09/08/2016
PRO HAC VICE FEE PAID. $ 35, receipt number PHX176099 as to Frank J West. This is a TEXT ENTRY ONLY. There is no PDF document associated with this entry. (Text entry; no document attached.)
09/08/2016
PRO HAC VICE FEE PAID. $ 35, receipt number PHX176100 as to Richard D Kelly. This is a TEXT ENTRY ONLY. There is no PDF document associated with this entry. (Text entry; no document attached.)
09/08/2016
PRO HAC VICE FEE PAID. $ 35, receipt number PHX176097 as to Lisa M Mandrusiak. This is a TEXT ENTRY ONLY. There is no PDF document associated with this entry. (Text entry; no document attached.)
09/08/2016
PRO HAC VICE FEE PAID. $ 35, receipt number PHX176098 as to Jacob A Doughty. This is a TEXT ENTRY ONLY. There is no PDF document associated with this entry. (Text entry; no document attached.)
35
09/08/2016
ORDER pursuant to General Order 09-08 granting 31 Motion for Admission Pro Hac Vice; granting 32 Motion for Admission Pro Hac Vice; granting 33 Motion for Admission Pro Hac Vice; granting 34 Motion for Admission Pro Hac Vice. Per the Court's Administrative Policies and Procedures Manual, applicant has five (5) days in which to register as a user of the Electronic Filing System. Registration to be accomplished via the court's website at www.azd.uscourts.gov. Counsel is advised that they are limited to two (2) additional e-mail addresses in their District of Arizona User Account. (BAS) (This is a TEXT ENTRY ONLY. There is no.pdf document associated with this entry.)
36
09/14/2016
MOTION for Admission Pro Hac Vice as to attorney Elizabeth M Reilly on behalf of Ibiden Company Limited, Ibiden U.S.A. Corportion, and Intel Corporation.
37
09/14/2016
MOTION for Admission Pro Hac Vice as to attorney Sarah Beigbeder Petty on behalf of Ibiden Company Limited, Ibiden U.S.A. Corportion, and Intel Corporation.
38
09/14/2016
MOTION for Admission Pro Hac Vice as to attorney Nina Tallon on behalf of Intel Corporation.
39
09/14/2016
MOTION for Admission Pro Hac Vice as to attorney Richard W O'Neill on behalf of Intel Corporation.
40
09/14/2016
MOTION for Admission Pro Hac Vice as to attorney Joseph J Mueller on behalf of Intel Corporation.
41
09/14/2016
MOTION for Admission Pro Hac Vice as to attorney Joseph F Haag on behalf of Ibiden Company Limited, Ibiden U.S.A. Corportion, and Intel Corporation.
42
09/14/2016
MOTION for Admission Pro Hac Vice as to attorney Rachel Weiner Cohen on behalf of Intel Corporation.
43
09/14/2016
MOTION for Admission Pro Hac Vice as to attorney Jason Choy on behalf of Intel Corporation.
09/15/2016
PRO HAC VICE FEE PAID. $ 270, receipt number PHX176471 as to Elizabeth M Reilly, Sarah Beigbeder Petty, Joseph F Haag, Nina Tallon, Richard W ONeill, Joseph J Mueller, Rachel Weiner Cohen, Jason Choy. This is a TEXT ENTRY ONLY. There is no PDF document associated with this entry. (Text entry; no document attached.)
44
09/15/2016
ORDER pursuant to General Order 09-08 granting 36 Motion for Admission Pro Hac Vice; granting 37 Motion for Admission Pro Hac Vice; granting 38 Motion for Admission Pro Hac Vice; granting 39 Motion for Admission Pro Hac Vice; granting 40 Motion for Admission Pro Hac Vice; granting 41 Motion for Admission Pro Hac Vice; granting 42 Motion for Admission Pro Hac Vice; granting 43 Motion for Admission Pro Hac Vice. Per the Court's Administrative Policies and Procedures Manual, applicant has five (5) days in which to register as a user of the Electronic Filing System. Registration to be accomplished via the court's website at www.azd.uscourts.gov. Counsel is advised that they are limited to two (2) additional e-mail addresses in their District of Arizona User Account. (BAS) (This is a TEXT ENTRY ONLY. There is no.pdf document associated with this entry.)
45
09/15/2016
NOTICE of Appearance by Chad Steven Campbell on behalf of Intel Corporation.
46
09/15/2016
NOTICE re: Representation in Pro Hac Vice Applications by Intel Corporation.
47
09/21/2016
MOTION for Admission Pro Hac Vice as to attorney William F Lee on behalf of Intel Corporation.
09/21/2016
PRO HAC VICE FEE PAID. $ 35, receipt number PHX176713 as to William F Lee. This is a TEXT ENTRY ONLY. There is no PDF document associated with this entry. (Text entry; no document attached.)
48
09/21/2016
ORDER pursuant to General Order 09-08 granting 47 Motion for Admission Pro Hac Vice. Per the Court's Administrative Policies and Procedures Manual, applicant has five (5) days in which to register as a user of the Electronic Filing System. Registration to be accomplished via the court's website at www.azd.uscourts.gov. Counsel is advised that they are limited to two (2) additional e-mail addresses in their District of Arizona User Account. (BAS) (This is a TEXT ENTRY ONLY. There is no.pdf document associated with this entry.)
49
10/04/2016
MOTION to Dismiss for Failure to State a Claim by Ibiden Company Limited, Ibiden U.S.A. Corportion. (Motolenich-Salas, Kenneth)
50
10/04/2016
DECLARATION of Kenneth M. Motolenich-Salas re: 49 MOTION to Dismiss for Failure to State a Claim by Defendants Ibiden Company Limited, Ibiden U.S.A. Corportion.
1
Exhibit Exhibit A
2
Exhibit Exhibit B
3
Exhibit Exhibit C
4
Exhibit Exhibit D
5
Exhibit Exhibit E
6
Exhibit Exhibit F
7
Exhibit Exhibit G
8
Exhibit Exhibit H)(Motolenich-Salas, Kenneth
8 Attachments
51
10/04/2016
ORDER. Rule 16 Case Management Conference set for 11/17/2016 at 04:00 PM in Courtroom 603, 401 West Washington Street, Phoenix, AZ 85003 before Judge David G Campbell. Signed by Judge David G Campbell on 10/4/2016.
52
10/04/2016
MOTION to Dismiss for Failure to State a Claim and Memorandum of Points and Authorities in Support Thereof by Intel Corporation.
53
10/04/2016
DECLARATION of Jason Choy in Support of Intel Corporation's Motion to Dismiss re: 52 MOTION to Dismiss for Failure to State a Claim and Memorandum of Points and Authorities in Support Thereof by Defendant Intel Corporation.
1
Exhibit 1
2
Exhibit 2
3
Exhibit 3
4
Exhibit 4
5
Exhibit 5
6
Exhibit 6
7
Exhibit 7
8
Exhibit 8
9
Exhibit 9
10
Exhibit 10
11
Exhibit 11
12
Exhibit 12
13
Exhibit 13
14
Exhibit 14
15
Exhibit 15
16
Exhibit 16
17
Exhibit 17
18
Exhibit 18
19
Exhibit 19
19 Attachments
54
10/21/2016
RESPONSE in Opposition re: 52 MOTION to Dismiss for Failure to State a Claim and Memorandum of Points and Authorities in Support Thereof, 49 MOTION to Dismiss for Failure to State a Claim filed by Continental Circuits LLC.
55
10/21/2016
DECLARATION of Jason S. McManis re: 54 Response in Opposition to Motion by Plaintiff Continental Circuits LLC.
1
Exhibit A
2
Exhibit B
3
Exhibit C
4
Exhibit D
5
Exhibit E
6
Exhibit F
7
Exhibit G
7 Attachments
56
10/24/2016
MOTION for Admission Pro Hac Vice as to attorney Akihiro Yamazaki on behalf of Ibiden Company Limited and Ibiden U.S.A. Corportion.
10/25/2016
PRO HAC VICE FEE PAID. $ 35, receipt number PHX177874 as to Akihiro Yamazaki. This is a TEXT ENTRY ONLY. There is no PDF document associated with this entry. (Text entry; no document attached.)
57
10/25/2016
ORDER pursuant to General Order 09-08 granting 56 Motion for Admission Pro Hac Vice. Per the Court's Administrative Policies and Procedures Manual, applicant has five (5) days in which to register as a user of the Electronic Filing System. Registration to be accomplished via the court's website at www.azd.uscourts.gov. Counsel is advised that they are limited to two (2) additional e-mail addresses in their District of Arizona User Account. (BAS) (This is a TEXT ENTRY ONLY. There is no.pdf document associated with this entry.)
58
10/31/2016
REPLY to Response to Motion re: 49 MOTION to Dismiss for Failure to State a Claim filed by Ibiden Company Limited, Ibiden U.S.A. Corportion. (Motolenich-Salas, Kenneth)
59
10/31/2016
DECLARATION of Kenneth M. Motolenich-Salas re: 58 Reply to Response to Motion by Defendants Ibiden Company Limited, Ibiden U.S.A. Corportion.
1
Exhibit I
2
Exhibit J
3
Exhibit K
4
Exhibit L)(Motolenich-Salas, Kenneth
4 Attachments
60
10/31/2016
REPLY to Response to Motion re: 52 MOTION to Dismiss for Failure to State a Claim and Memorandum of Points and Authorities in Support Thereof filed by Intel Corporation.
61
11/10/2016
REPORT of Rule 26(f) Planning Meeting by Continental Circuits LLC.
1
Exhibit A Protective Order
2
Exhibit B ESI Order
2 Attachments
62
11/17/2016
TRANSCRIPT REQUEST OF CASE MANAGEMENT CONFERENCE by Intel Corporation for proceedings held on November 17, 2016, Judge David G Campbell hearing judge(s).
63
11/18/2016
TRANSCRIPT REQUEST OF CASE MANAGEMENT CONFERENCE by Continental Circuits LLC for proceedings held on November 17, 2016, Judge David G Campbell hearing judge(s).
64
11/17/2016
MINUTE ENTRY for proceedings held before Judge David G Campbell: Scheduling Conference held on 11/17/2016. Telephonic Scheduling Conference is reset for 12/2/2016 at 03:00 PM in Courtroom 603, 401 West Washington Street, Phoenix, AZ 85003 before Judge David G Campbell. (Court Reporter Elva Cruz-Lauer.) Hearing held 4:14 PM to 4:53 PM.
65
11/23/2016
NOTICE of Service of Discovery filed by Continental Circuits LLC.
66
11/29/2016
NOTICE of Service of Discovery filed by Ibiden Company Limited, Ibiden U.S.A. Corportion, Intel Corporation.
67
11/19/2016
NOTICE OF FILING OF OFFICIAL TRANSCRIPT of SCHEDULING CONFERENCE proceedings held on 11/17/2016, before Judge David G. Campbell. (Court Reporter: Elva Cruz-Lauer). The ordering party will have electronic access to the transcript immediately. All others may view the transcript at the court public terminal or it may be purchased through the Court Reporter/Transcriber by filing a Transcript Order Form on the docket before the deadline for Release of Transcript Restriction. After that date it may be obtained through PACER. Redaction Request due 12/12/2016. Redacted Transcript Deadline set for 12/20/2016. Release of Transcript Restriction set for 2/17/2017.
68
12/01/2016
REPORT of Rule 26(f) Planning Meeting by Continental Circuits LLC.
1
Exhibit A - ESI Order
2
Exhibit B - Protective Order
2 Attachments
69
12/02/2016
NOTICE of Appearance by Nina Tallon on behalf of Ibiden Company Limited, Ibiden U.S.A. Corportion.
70
12/02/2016
MINUTE ENTRY for proceedings held before Judge David G Campbell: Telephonic Scheduling Conference held on 12/2/2016. Court has reviewed and approves the revised protective and ESI orders. Court will enter the orders. Revised case management report discussed. Court will enter a case management order. TELEPHONIC APPEARANCES: Bradley Caldwell, Warren McCarty III, Joseph Schenk for Plaintiff. Chad Campbell and Aaron Matz for Defendant Intel Corporation. Joseph Mueller and Nina Tallon for Defendants Intel Corporation,Ibiden Company and Ibiden U.S.A. Corporation. Frank West and Kenneth Motolenich-Salas for Defendant Ibiden Company and Ibiden U.S.A. Corporation. (Court Reporter Patricia Lyons.) Hearing held 3:08 PM to 3:23 PM This is a TEXT ENTRY ONLY. There is no PDF document associated with this entry.
71
12/02/2016
PROTECTIVE ORDER. Signed by Judge David G Campbell on 12/2/2016.
72
12/02/2016
ORDER re ESI. Signed by Judge David G Campbell on 12/2/2016.
73
12/02/2016
CASE MANAGEMENT ORDER: Discovery due by 11/3/2017. Dispositive motions due by 3/30/2018. Status Conference set for 3/2/2017 at 03:00 PM Status Conference set for 6/2/2017 at 03:00 PM Claim Construction Hearing set for 8/4/2017 at 10:00 AM Status Conference set for 9/5/2017 at 03:00 PM Status Conference set for 12/8/2017 at 03:00 PM Status Conference set for 3/9/2018 at 03:00 PM all in Courtroom 603, 401 West Washington Street, Phoenix, AZ 85003 before Judge David G Campbell. Signed by Judge David G Campbell on 12/2/2016.
74
12/02/2016
NOTICE of Service of Discovery filed by Ibiden Company Limited, Ibiden U.S.A. Corportion. (Motolenich-Salas, Kenneth)
75
12/02/2016
TRANSCRIPT REQUEST by Intel Corporation for proceedings held on December 2, 2016, Judge David G Campbell hearing judge(s).
76
12/02/2016
NOTICE of Service of Discovery filed by Continental Circuits LLC.
77
12/05/2016
TRANSCRIPT REQUEST by Continental Circuits LLC for proceedings held on December 2, 2016, Judge David G Campbell hearing judge(s).
78
12/05/2016
NOTICE of Service of Discovery filed by Intel Corporation.
79
12/06/2016
NOTICE of Service of Discovery filed by Intel Corporation.
80
12/06/2016
NOTICE of Service of Discovery filed by Intel Corporation.
81
12/07/2016
NOTICE of Service of Discovery filed by Continental Circuits LLC.
82
12/09/2016
NOTICE OF FILING OF OFFICIAL TRANSCRIPT of TELEPHONIC SCHEDULING CONFERENCE proceedings held on 12/02/2016, before Judge David G. Campbell. (Court Reporter: Patricia Lyons). The ordering party will have electronic access to the transcript immediately. All others may view the transcript at the court public terminal or it may be purchased through the Court Reporter/Transcriber by filing a Transcript Order Form on the docket before the deadline for Release of Transcript Restriction. After that date it may be obtained through PACER. Redaction Request due 12/30/2016. Redacted Transcript Deadline set for 1/9/2017. Release of Transcript Restriction set for 3/9/2017.
83
12/21/2016
MOTION to Withdraw as Attorney of Record Richard D. Kelly, Frank J. West, Jacob A. Doughty, Akihiro Yamazaki, and Lisa M. Mandrusiak of Oblon, McClelland, Maier & Neustadt, P.C. by Ibiden Company Limited, Ibiden U.S.A. Corportion.
1
Text of Proposed Order)(Motolenich-Salas, Kenneth
1 Attachment
84
12/22/2016
ORDER granting 83 Motion to Withdraw as Counsel. Richard D. Kelly, Frank J. West, Jacob A. Doughty, Akihiro Yamazaki, and Lisa M. Mandrusiak of Oblon, McClelland, Maier & Neustadt, P.C. are removed as counsel of record for Ibiden U.S.A. Corp. and Ibiden Co., Ltd. in this action. Signed by Judge David G Campbell on 12/22/16.
85
12/22/2016
NOTICE of Service of Discovery filed by Ibiden Company Limited, Ibiden U.S.A. Corportion. (Motolenich-Salas, Kenneth)
86
12/22/2016
NOTICE of Service of Discovery filed by Intel Corporation.
87
12/22/2016
NOTICE of Service of Discovery filed by Ibiden Company Limited, Ibiden U.S.A. Corportion, Intel Corporation.
88
12/30/2016
NOTICE of Service of Discovery filed by Intel Corporation.
89
01/04/2017
NOTICE of Service of Discovery filed by Continental Circuits LLC.
90
01/05/2017
ORDER: Hearing as to 52 MOTION to Dismiss for Failure to State a Claim and Memorandum of Points and Authorities in Support Thereof, 49 MOTION to Dismiss for Failure to State a Claim: Motion Hearing set for 2/3/2017 at 10:00 AM in Courtroom 603, 401 West Washington Street, Phoenix, AZ 85003 before Judge David G Campbell. The Court has allotted 30 minutes per side for argument. Signed by Judge David G Campbell on 1/5/2017. This is a TEXT ENTRY ONLY. There is no PDF document associated with this entry.
91
01/09/2017
NOTICE of Service of Discovery filed by Intel Corporation.
92
01/09/2017
NOTICE of Service of Discovery filed by Ibiden Company Limited, Ibiden U.S.A. Corportion. (Motolenich-Salas, Kenneth)
93
01/13/2017
IT IS ORDERED the motion hearing for 52 Motion to Dismiss for Failure to State a Claim filed by Intel Corporation, 49 Motion to Dismiss for Failure to State a Claim filed by Ibiden U.S.A. Corportion, Ibiden Company Limited presently set for 2/3/2017 at 10:00 AM, is RESET. THIS IS A TIME CHANGE ONLY! Motion Hearing set for 2/3/2017 at 03:00 PM in Courtroom 603, 401 West Washington Street, Phoenix, AZ 85003 before Judge David G Campbell. Ordered by Judge David G Campbell. (This is a TEXT ENTRY ONLY. There is no PDF document associated with this entry.)
94
01/19/2017
IT IS ORDERED the motion hearing for 52 Motion to Dismiss for Failure to State a Claim filed by Intel Corporation, 49 Motion to Dismiss for Failure to State a Claim filed by Ibiden U.S.A. Corportion, Ibiden Company Limited presently set for 2/3/2017 at 3:00 PM, is RESET. THIS IS A TIME CHANGE ONLY! Motion Hearing set for 2/3/2017 at 10:00 AM in Courtroom 603, 401 West Washington Street, Phoenix, AZ 85003 before Judge David G Campbell. Ordered by Judge David G Campbell. (This is a TEXT ENTRY ONLY. There is no PDF document associated with this entry.)
95
01/26/2017
AMENDED COMPLAINT against Ibiden Company Limited, Ibiden U.S.A. Corportion, Intel Corporation filed by Continental Circuits LLC.
1
Exhibit A
2
Exhibit B
3
Exhibit C
4
Exhibit D
5
Exhibit E
5 Attachments
96
01/26/2017
NOTICE of Filing Amended Pleading pursuant to LRCiv 15.1(b) by Continental Circuits LLC.
1
Exhibit A - Amended Complaint
1 Attachment
97
01/26/2017
MINUTE ORDER: Supplemental Request for Copyright, Trademark, or Patent Information. This case has been designated as a copyright, trademark, or patent case. An answer, amended complaint, or other pleading 95 has been filed that may include additional trademarks, patents, or copyrights allegedly violated that were not previously included. Attached to this docket entry are the required form(s) that may need to be completed by the party who filed the above document.

If your recently filed pleading adds or changes information related to the original patents, trademarks, or copyright allegations, please complete the form that is applicable to this particular case. In some cases, you may need to complete both forms. Within seven (7) days, you must submit the required form(s) to the Clerk's Office. Please complete the form and file it with the Court using the specific event: Notice of Filing - Copyright, Trademark or Patent Information, found under the Other Filings header. Please DO NOT mail the form directly to the Patent or Copyright Office. The Clerk's Office will submit the form.

If there are no changes to the copyright, trademark, or patent information previously submitted for this case, then the party who filed the above document must file a Notice, within seven (7) days, indicating such using the specific event:Notice of Filing - Copyright, Trademark or Patent Information, found under the Other Filings header.
98
01/31/2017
NOTICE of Service of Discovery filed by Continental Circuits LLC.
99
01/31/2017
NOTICE of Service of Discovery filed by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
100
02/01/2017
MOTION to Withdraw as Attorney the firm of Gallagher & Kennedy and counsel Kenneth Motolenich-Salas by Ibiden Company Limited, Ibiden U.S.A. Corporation.
1
Text of Proposed Order)(Motolenich-Salas, Kenneth
1 Attachment
101
02/01/2017
NOTICE of Appearance by Chad Steven Campbell on behalf of Ibiden Company Limited, Ibiden U.S.A. Corporation.
102
02/01/2017
ORDER - IT IS ORDERED that the motion to withdraw (Doc. 100) is granted. Kenneth Motolenich-Salas of Gallagher & Kennedy, P.A. is removed as counsel of record forIbiden U.S.A. Corp. and Ibiden Co., Ltd. in this action. Signed by Judge David G Campbell on 2/1/17.
103
02/01/2017
NOTICE re: Joint Notice to Update the Court Regarding Recent Case Developments Affecting Motions to Dismiss by Continental Circuits LLC re: 52 MOTION to Dismiss for Failure to State a Claim and Memorandum of Points and Authorities in Support Thereof, 49 MOTION to Dismiss for Failure to State a Claim.
104
02/02/2017
NOTICE of Filing - Copyright, Trademark or Patent Information filed by Continental Circuits LLC.
105
02/03/2017
NOTICE of Service of Discovery filed by Continental Circuits LLC.
106
02/03/2017
NOTICE of Service of Discovery filed by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
107
02/03/2017
MINUTE ENTRY for proceedings held before Judge David G Campbell: Motion Hearing held on 2/3/2017.ORDERED taking under advisement 49 Motion to Dismiss for Failure to State a Claim; taking under advisement 52 Motion to Dismiss for Failure to State a Claim. Court will issue an order. APPEARANCES: Bradley Caldwell, Warren McCarty III, Joseph Schenk for Plaintiff. Joseph Mueller, Nina Tallon, Chad Campbell for Defendants (Court Reporter Patricia Lyons.) Hearing held 10:00 AM to 11:29 AM This is a TEXT ENTRY ONLY. There is no PDF document associated with this entry.
108
02/07/2017
TRANSCRIPT REQUEST OF MOTIONS TO DISMISS HEARING by Continental Circuits LLC for proceedings held on 2/3/2017, Judge David G Campbell hearing judge(s).
109
02/07/2017
TRANSCRIPT REQUEST by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation for proceedings held on February 3, 2017, Judge David G Campbell hearing judge(s).
110
02/14/2017
NOTICE OF FILING OF OFFICIAL TRANSCRIPT of MOTION HEARING Proceedings held on 02/03/2017, before Judge David G. Campbell. (Court Reporter Patricia Lyons). The ordering party will have electronic access to the transcript immediately. All others may view the transcript at the court public terminal or it may be purchased through the Court Reporter by filing a Transcript Order Form on the docket before the deadline for Release of Transcript Restriction. After that date it may be obtained through PACER. Redaction Request due 3/7/2017. Redacted Transcript Deadline set for 3/17/2017. Release of Transcript Restriction set for 5/15/2017.
111
02/15/2017
NOTICE of Service of Discovery filed by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
112
02/21/2017
ORDER granting in part and denying in part 49 Motion to Dismiss for Failure to State a Claim; granting in part and denying in part 52 Motion to Dismiss for Failure to State a Claim. See Order for additional details. Signed by Judge David G Campbell on 2/21/2017.
113
03/02/2017
NOTICE of Service of Discovery filed by Continental Circuits LLC.
114
03/02/2017
MINUTE ENTRY for proceedings held before Judge David G Campbell: Status Conference held on 3/2/2017. Discussion held. APPEARANCES: Telephonic appearance by Jason Cassady, Warrren McCarty III and Joseph Schenk for Plaintiff. Telephonic appearance by Joseph Mueller, Chad Campbell and Matt Holt for Defendants (Court Reporter Patricia Lyons.) Hearing held 3:02 PM to 3:13 PM This is a TEXT ENTRY ONLY. There is no PDF document associated with this entry.
115
03/03/2017
TRANSCRIPT REQUEST Telephonic Status Conference by Continental Circuits LLC for proceedings held on 3/2/2017, Judge David G Campbell hearing judge(s).
116
03/03/2017
TRANSCRIPT REQUEST by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation for proceedings held on March 2, 2017, Judge David G Campbell hearing judge(s).
117
03/06/2017
NOTICE of Service of Discovery filed by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
118
03/06/2017
NOTICE of Service of Discovery filed by Continental Circuits LLC.
119
03/08/2017
NOTICE of Service of Discovery filed by Intel Corporation.
120
03/08/2017
NOTICE of Service of Discovery filed by Ibiden Company Limited, Ibiden U.S.A. Corporation.
121
03/08/2017
NOTICE of Appearance by Tyler Reese Bowen on behalf of Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
122
03/11/2017
NOTICE of Service of Discovery filed by Continental Circuits LLC.
123
03/13/2017
Joint MOTION to Seal Document JOINT MOTION TO SEAL SECOND AMENDED COMPLAINT by Continental Circuits LLC.
1
Text of Proposed Order
1 Attachment
124
03/13/2017
*FILED at Doc. 128 *SEALED LODGED Proposed SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT re: 123 Joint MOTION to Seal Document JOINT MOTION TO SEAL SECOND AMENDED COMPLAINT. Document to be filed by Clerk if Motion or Stipulation to Seal is granted. Filed by Continental Circuits LLC. *.
1
Exhibit A
2
Exhibit B
3
Exhibit C
4
Exhibit D
5
https://ecf.azd.uscourts.gov/doc1/025117123024" onClick="goDLS{{'/doc1/025117123024','987227','396','','2','1','',''}};">5</a> Exhibit E) *Modified on 3/17/2017
5 Attachments
125
03/15/2017
NOTICE of Service of Discovery filed by Continental Circuits LLC.
126
03/10/2017
NOTICE OF FILING OF OFFICIAL TRANSCRIPT of TELEPHONIC STATUS CONFERENCE proceedings held on 03/02/2017, before Judge David G. Campbell. (Court Reporter: Patricia Lyons). The ordering party will have electronic access to the transcript immediately. All others may view the transcript at the court public terminal or it may be purchased through the Court Reporter/Transcriber by filing a Transcript Order Form on the docket before the deadline for Release of Transcript Restriction. After that date it may be obtained through PACER. Redaction Request due 3/31/2017. Redacted Transcript Deadline set for 4/10/2017. Release of Transcript Restriction set for 6/8/2017.
127
03/17/2017
ORDER granting 123 Motion to Seal. ORDERED The Clerk is directed to accept for filing under seal the document lodged as Doc. 124 on the Court's docket. FURTHER ORDERED On or before 3/24/17 Plaintiff shall file a redacted version of the Second Amended Complaint for Patent Infringement on the public docket in this case. Signed by Judge David G Campbell on 3/17/17.
128
03/17/2017
SEALED SECOND AMENDED COMPLAINT against All Defendants filed by Continental Circuits LLC.
1
Exhibit A
2
Exhibit B
3
Exhibit C
4
Exhibit D
5
https://ecf.azd.uscourts.gov/doc1/025117141851" onClick="goDLS{{'/doc1/025117141851','987227','405','','2','1','',''}};">5</a> Exhibit E)
5 Attachments
129
03/22/2017
ORDER. Telephone Conference re potential motion to dismiss amended complaint set for 3/24/2017 at 10:00 AM in Courtroom 603, 401 West Washington Street, Phoenix, AZ 85003 before Judge David G Campbell. Signed by Judge David G Campbell on 3/22/2017. This is a TEXT ENTRY ONLY. There is no PDF document associated with this entry.
130
03/24/2017
MINUTE ENTRY for proceedings held before Judge David G Campbell: Telephone Conference held on 3/24/2017. Defendant's request leave of Court to file motion to dismiss as to portions of plaintiff's second amended complaint. Discussion held. Request granted. Defendants' motion to dismiss 12-15 pages due 3/31/17; Plaintiff response 12-15 pages due 4/12/17; defendants reply 7 pages due 4/19/17. Oral argument to be set if necessary after briefing. A mediation deadline is set for 9/29/2017. APPEARANCES: Telephonic appearance by Bradley Caldwell, Jason Cassady, Warrn McCarty III, Joseph Schenk for Plaintiff. Telephonic appearance by Joseph Mueller and Chad Campbell for Defendants (Court Reporter Candy Potter.) Hearing held 10:02 AM to 10:34 AM This is a TEXT ENTRY ONLY. There is no PDF document associated with this entry.
131
03/24/2017
TRANSCRIPT REQUEST Telephone Conference by Continental Circuits LLC for proceedings held on 3/24/2017, Judge David G Campbell hearing judge(s).
132
03/24/2017
TRANSCRIPT REQUEST by Intel Corporation for proceedings held on 03/24/2017, Judge David G Campbell hearing judge(s).
133
03/24/2017
REDACTED Second Amended Complaint re: 128 Amended Complaint by Continental Circuits LLC.
1
Exhibit A
2
Exhibit B
3
Exhibit C
4
Exhibit D
5
https://ecf.azd.uscourts.gov/doc1/025117175580" onClick="goDLS{{'/doc1/025117175580','987227','417','','2','1','',''}};">5</a> Exhibit E) Modified on 3/30/2017
5 Attachments
134
03/27/2017
ANSWER to 128 Amended Complaint with Jury Demand, COUNTERCLAIM against Continental Circuits LLC by Intel Corporation.
135
03/27/2017
ANSWER to 128 Amended Complaint with Jury Demand, COUNTERCLAIM against Continental Circuits LLC by Ibiden U.S.A. Corporation, Ibiden Company Limited.
136
03/29/2017
NOTICE of Service of Discovery filed by Continental Circuits LLC.
137
03/28/2017
NOTICE OF FILING OF OFFICIAL TRANSCRIPT of TELEPHONIC CONFERENCE proceedings held on 03/24/2017, before Judge David G. Campbell. (Court Reporter: Candy L. Potter). The ordering party will have electronic access to the transcript immediately. All others may view the transcript at the court public terminal or it may be purchased through the Court Reporter/Transcriber by filing a Transcript Order Form on the docket before the deadline for Release of Transcript Restriction. After that date it may be obtained through PACER. Redaction Request due 4/18/2017. Redacted Transcript Deadline set for 4/28/2017. Release of Transcript Restriction set for 6/26/2017.
138
03/30/2017
MINUTE ORDER: Supplemental Request for Copyright, Trademark, or Patent Information. This case has been designated as a copyright, trademark, or patent case. An answer, amended complaint, or other pleading 133, 134, 135 have been filed that may include additional trademarks, patents, or copyrights allegedly violated that were not previously included. Attached to this docket entry are the required form(s) that may need to be completed by the party who filed the above document.

If your recently filed pleading adds or changes information related to the original patents, trademarks, or copyright allegations, please complete the form that is applicable to this particular case. In some cases, you may need to complete both forms. Within seven (7) days, you must submit the required form(s) to the Clerk's Office. Please complete the form and file it with the Court using the specific event: Notice of Filing - Copyright, Trademark or Patent Information, found under the Other Filings header. Please DO NOT mail the form directly to the Patent or Copyright Office. The Clerk's Office will submit the form.

If there are no changes to the copyright, trademark, or patent information previously submitted for this case, then the party who filed the above document must file a Notice, within seven (7) days, indicating such using the specific event:Notice of Filing - Copyright, Trademark or Patent Information, found under the Other Filings header
139
03/30/2017
NOTICE of Filing - Copyright, Trademark or Patent Information filed by Continental Circuits LLC.
140
03/31/2017
*NOTICE of Service of Discovery re: Discovery Requests by Ibiden Company Limited, Ibiden U.S.A. Corporation. *Modified to correct event type on 4/3/2017
141
03/31/2017
*NOTICE of Service of Discovery re: Discovery Requests by Intel Corporation. *Modified to correct event type on 4/3/2017
142
03/31/2017
MOTION to Dismiss for Failure to State a Claim and Memorandum of Points and Authorities Thereof (Redacted Version) by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
143
03/31/2017
Joint MOTION to Seal Document Defendants Intel Corporation, Ibiden U.S.A. Corporation, And Ibiden Co. Ltd.s Partial Motion To Dismiss Plaintiff Continental Circuits LLCs Second Amended Complaint And Memorandum Of Points And Authorities In Support Thereof by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
1
Text of Proposed Order
1 Attachment
144
03/31/2017
SEALED LODGED Proposed Defendants Intel Corporation, Ibiden U.S.A. Corporation, And Ibiden Co. Ltd.s Partial Motion To Dismiss Plaintiff Continental Circuits LLCs Second Amended Complaint And Memorandum Of Points And Authorities In Support Thereof (Confidential Version) re: 143 Joint MOTION to Seal Document Defendants Intel Corporation, Ibiden U.S.A. Corporation, And Ibiden Co. Ltd.s Partial Motion To Dismiss Plaintiff Continental Circuits LLCs Second Amended Complaint And Memorandum Of Points And Authorities In Support. Document to be filed by Clerk if Motion or Stipulation to Seal is granted. Filed by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
145
04/03/2017
NOTICE re: Service of Subpoenas by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
146
04/12/2017
ORDER granting the parties' 143 Joint Motion to Seal. The Clerk is directed to accept for filing under seal the document lodged on the Court's docket as Doc. 144. Signed by Judge David G Campbell on 04/12/2017.
147
04/12/2017
SEALED PARTIAL MOTION to Dismiss Continental Circuit LLC's Second Amended Complaint for Failure to State a Claim by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
148
04/12/2017
Joint MOTION to Seal Document JOINT MOTION TO SEAL OPPOSITION TO DEFENDANTS' PARTIAL MOTION TO DISMISS SECOND AMENDED COMPLAINT by Continental Circuits LLC.
1
Text of Proposed Order
1 Attachment
149
04/12/2017
SEALED LODGED Proposed CONTINENTIAL CIRCUIT LLC'S OPPOSITION TO DEFENDANTS' PARTIAL MOTION TO DISMISS SECOND AMENDED COMPLAINT re: 148 Joint MOTION to Seal Document JOINT MOTION TO SEAL OPPOSITION TO DEFENDANTS' PARTIAL MOTION TO DISMISS SECOND AMENDED COMPLAINT. Document to be filed by Clerk if Motion or Stipulation to Seal is granted. Filed by Continental Circuits LLC.
1
Declaration of Jason S. McManis
2
Exhibit A
3
Exhibit B
4
Exhibit C
4 Attachments
150
04/14/2017
NOTICE of Service of Discovery filed by Ibiden Company Limited, Ibiden U.S.A. Corporation.
151
04/17/2017
NOTICE of Service of Discovery filed by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
152
04/17/2017
ANSWER to 134 Answer to Amended Complaint, Counterclaim by Continental Circuits LLC.
153
04/17/2017
ANSWER to 135 Answer to Amended Complaint, Counterclaim by Continental Circuits LLC.
154
04/19/2017
NOTICE of Service of Discovery filed by Intel Corporation.
155
04/19/2017
REPLY to Response to Motion re: 142 MOTION to Dismiss for Failure to State a Claim and Memorandum of Points and Authorities Thereof (Redacted Version) filed by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
156
04/19/2017
Joint MOTION to Seal Document Defendants' Reply in Support of Their Partial Motion to Dismiss Continental Circuits LLC's Second Amended Complaint by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
1
Text of Proposed Order
1 Attachment
157
04/19/2017
SEALED LODGED Proposed Defendants' Reply in Support of Their Partial Motion to Dismiss Plaintiff Continental Circuits LLC's Second Amended Complaint (Confidential Version) re: 156 Joint MOTION to Seal Document Defendants' Reply in Support of Their Partial Motion to Dismiss Continental Circuits LLC's Second Amended Complaint. Document to be filed by Clerk if Motion or Stipulation to Seal is granted. Filed by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
158
04/20/2017
MINUTE ORDER: Supplemental Request for Copyright, Trademark, or Patent Information. This case has been designated as a copyright, trademark, or patent case. An answer, amended complaint, or other pleading 152 and 153 has been filed that may include additional trademarks, patents, or copyrights allegedly violated that were not previously included. Attached to this docket entry are the required form(s) that may need to be completed by the party who filed the above document.

If your recently filed pleading adds or changes information related to the original patents, trademarks, or copyright allegations, please complete the form that is applicable to this particular case. In some cases, you may need to complete both forms. Within seven (7) days, you must submit the required form(s) to the Clerk's Office. Please complete the form and file it with the Court using the specific event: Notice of Filing - Copyright, Trademark or Patent Information, found under the Other Filings header. Please DO NOT mail the form directly to the Patent or Copyright Office. The Clerk's Office will submit the form.

If there are no changes to the copyright, trademark, or patent information previously submitted for this case, then the party who filed the above document must file a Notice, within seven (7) days, indicating such using the specific event:Notice of Filing - Copyright, Trademark or Patent Information, found under the Other Filings header
159
04/26/2017
NOTICE of Service of Discovery filed by Continental Circuits LLC.
160
04/26/2017
NOTICE of Filing - Copyright, Trademark or Patent Information filed by Continental Circuits LLC.
161
04/26/2017
NOTICE of Service of Discovery filed by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
162
04/26/2017
NOTICE of Service of Discovery filed by Ibiden Company Limited, Ibiden U.S.A. Corporation.
163
04/26/2017
NOTICE of Service of Discovery filed by Intel Corporation.
164
04/27/2017
ORDER granting 156 Joint Motion to Seal. The Clerk shall accept for filing under seal the document lodged on the Court's docket as Doc. 157. If a redacted version of this document has not been filed in the public record, Defendants shall do so no later than May 3, 2017. Signed by Judge David G Campbell on 4/27/17.
165
04/27/2017
SEALED REPLY re: 147 SEALED MOTION to Dismiss for Failure to State a Claim by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
166
04/27/2017
NOTICE of Service of Discovery filed by Continental Circuits LLC.
167
05/03/2017
NOTICE of Service of Discovery filed by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
168
05/08/2017
NOTICE of Service of Discovery filed by Continental Circuits LLC.
169
05/11/2017
ORDER granting 148 Motion to Seal. The following documents are sealed: Continental Circuits LLC's Opposition to Defendants' Partial Motion to Dismiss Second Amended Complaint. Signed by Judge David G Campbell on 5/11/17.
170
05/11/2017
SEALED RESPONSE (OPPOSITION) to Motion re: 147 SEALED MOTION to Dismiss for Failure to State a Claim by Continental Circuits LLC.
1
Declaration of Jason McManis
2
https://ecf.azd.uscourts.gov/doc1/025117360044" onClick="goDLS{{'/doc1/025117360044','987227','567','','2','1','',''}};">2</a> Exhibit A - C)
2 Attachments
171
05/15/2017
NOTICE of Service of Discovery filed by Continental Circuits LLC.
172
05/23/2017
MINTUE ORDER: Plaintiff Continental Circuits, LLC shall file a redacted version of their opposition to defendant's motion to dismiss on the public docket by 5/26/2017. This is a TEXT ENTRY ONLY. There is no PDF document associated with this entry.
173
05/25/2017
NOTICE of Service of Discovery filed by Continental Circuits LLC.
174
05/25/2017
NOTICE of Service of Discovery filed by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
175
05/26/2017
REDACTION to 170 Response to Motion REDACTED OPPOSITION TO DEFENDANTS' PARTIAL MOTION TO DISMISS SECOND AMENDED COMPLAINT by Continental Circuits LLC.
1
McManis Declaration
2
Exhibit Redacted Exhibit A
3
Exhibit Redacted Exhibit B
4
Exhibit C
4 Attachments
176
06/01/2017
Joint MOTION for Leave to File Excess Pages Regarding Claim Construction Briefing and Number of Terms by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
1
Text of Proposed Order Text of Proposed Order
1 Attachment
177
06/01/2017
STATEMENT of Plaintiff's and Defendants' Joint Claim Construction Statement by Plaintiff Continental Circuits LLC.
178
06/02/2017
NOTICE of Service of Discovery filed by Intel Corporation.
179
06/02/2017
NOTICE of Service of Discovery filed by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
180
06/02/2017
MINUTE ENTRY for proceedings held before Judge David G Campbell: Status Conference held on 6/2/2017. Joint stipulated request regarding claim construction briefing page limits and number of terms 176 discussed. Motion granted. Order to follow. APPEARANCES: Telephonic appearance by Jason Cassady, Warren McCarty III, Joseph Schenk for Plaintiff. Telephonic appearance by Joseph Mueller and Chad Campbell for Defendants (Court Reporter Jennifer Pancratz.) Hearing held 3:03 PM to 3:09 PM This is a TEXT ENTRY ONLY. There is no PDF document associated with this entry.
181
06/02/2017
ORDER granting 176 (1) the page limit for opening and responsiveclaim construction briefs is twenty-two pages; and (2) the parties may present the Court with three categories of claim construction disputes (not including disputes over terms that Defendants assert are indefinite) as set forth in the parties Joint Claim Construction Statement, even if those disputes implicate more than ten claim terms. Signed by Judge David G Campbell on 6/2/2017.
182
06/05/2017
TRANSCRIPT REQUEST Status Conference by Continental Circuits LLC for proceedings held on 6/2/2017, Judge David G Campbell hearing judge(s).
183
06/05/2017
TRANSCRIPT REQUEST by Ibiden Company Limited, Intel Corporation for proceedings held on June 2, 2017, Judge David G Campbell hearing judge(s).
184
06/06/2017
NOTICE of Service of Discovery filed by Ibiden Company Limited.
185
06/07/2017
NOTICE of Service of Discovery filed by Continental Circuits LLC.
186
06/06/2017
*(AMENDED BY DOC. 187)- *NOTICE OF FILING OF OFFICIAL TRANSCRIPT of TELEPHONIC STATUS CONFERENCE Proceedings held on 06/02/2017, before Judge David G. Campbell. (Court Reporter Jennifer A. Pancratz). The ordering party will have electronic access to the transcript immediately. All others may view the transcript at the court public terminal or it may be purchased through the Court Reporter/Transcriber by filing a Transcript Order Form on the docket before the deadline for Release of Transcript Restriction. After that date it may be obtained through PACER. Redaction Request due 6/28/2017. Redacted Transcript Deadline set for 7/10/2017. Release of Transcript Restriction set for 9/5/2017. (RCO) *Modified file date from 6/7/17 to 6/6/17; NEF regenerated on 6/7/2017 (SCH). *Modified to reference amended version on 6/7/2017
187
06/07/2017
NOTICE OF FILING OF OFFICIAL AMENDED TRANSCRIPT of TELEPHONIC STATUS CONFERENCE Proceedings held on 06/02/2017, before Judge David G. Campbell. (Court Reporter Jennifer A. Pancratz). Amended to correct case type on cover page. The ordering party will have electronic access to the transcript immediately. All others may view the transcript at the court public terminal or it may be purchased through the Court Reporter/Transcriber by filing a Transcript Order Form on the docket before the deadline for Release of Transcript Restriction. After that date it may be obtained through PACER. Redaction Request due 6/28/2017. Redacted Transcript Deadline set for 7/10/2017. Release of Transcript Restriction set for 9/5/2017.
188
06/08/2017
OPENING BRIEF by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation (Redacted Opening Markman Brief).
1
Affidavit Declaration of Jason Choy
2
Exhibits Index
3
Exhibits 1-14
4
Exhibits 15-19
5
Exhibit 20
6
Exhibits 21-22
7
Exhibits 23-24
7 Attachments
189
06/08/2017
OPENING BRIEF by Continental Circuits LLC CONTINENTAL CIRCUITS LLC'S OPENING CLAIM CONSTRUCTION BRIEF.
1
Declaration of Warren J. McCarty
2
Exhibit A
3
Exhibit B
4
Exhibit C
5
Exhibit D
6
Exhibit E
7
Exhibit F
8
Exhibit G
9
Exhibit H
10
Exhibit I
10 Attachments
190
06/08/2017
Joint MOTION to Seal Document 188 Brief - Opening (Markman) by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
1
Text of Proposed Order
1 Attachment
191
06/08/2017
SEALED LODGED Proposed Intel Corporation, Ibiden U.S.A. Corporation, and Ibiden Co. Ltd.'s Opening Marking Brief, Exhibits 15 & 16 re: 190 Joint MOTION to Seal Document 188 Brief - Opening (Markman). Document to be filed by Clerk if Motion or Stipulation to Seal is granted. Filed by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
1
Exhibit 15
2
Exhibit 16
2 Attachments
192
06/13/2017
NOTICE of Service of Discovery filed by Intel Corporation.
193
06/13/2017
NOTICE of Service of Discovery filed by Ibiden Company Limited, Ibiden U.S.A. Corporation.
194
06/19/2017
NOTICE of Service of Discovery filed by Continental Circuits LLC.
195
06/19/2017
SEALED ORDER granting/denying in part 142 (redacted version), 147 (sealed version) Motion to Dismiss for Failure to State a Claim to State a Claim. The motion is granted as to Plaintiff's (a) direct infringement claims against Ibiden as to unnamed products sold to customers other than Intel, (b) indirect infringement claims related to the unnamed Ibiden products intended for customers other than Intel, and (c) willfulness claims against both Defendants. The motion is denied as to Plaintiff's induced infringement claims against Intel. Signed by Judge David G Campbell on 6/16/17. (All Cnsl)
196
06/19/2017
*SEALED ORDER granting/denying in part 142 (redacted version), 147 (sealed version) Motion to Dismiss for Failure to State a Claim to State a Claim. The motion is granted as to Plaintiff's (a) direct infringement claims against Ibiden as to unnamed products sold to customers other than Intel, (b) indirect infringement claims related to the unnamed Ibiden products intended for customers other than Intel, and (c) willfulness claims against both Defendants. The motion is denied as to Plaintiff's induced infringement claims against Intel. Signed by Judge David G Campbell on 6/16/17. (MAP) *Modified on 6/19/2017 to seal pursuant to DGC Chambers (MAP)*.
197
06/19/2017
ORDER granting/denying in part 142 (redacted version), 147 (sealed version) Motion to Dismiss for Failure to State a Claim to State a Claim. The motion is granted as to Plaintiff's (a) direct infringement claims against Ibiden as to unnamed products sold to customers other than Intel, (b) indirect infringement claims related to the unnamed Ibiden products intended for customers other than Intel, and (c) willfulness claims against both Defendants. The motion is denied as to Plaintiff's induced infringement claims against Intel. Signed by Judge David G Campbell on 6/16/17.
198
06/26/2017
NOTICE of Service of Discovery filed by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
199
06/29/2017
RESPONSE BRIEF by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation (Redacted Responsive Markman Brief).
1
Affidavit Declaration of Jason Choy
2
Exhibits Index
3
Exhibits 25 - 30
3 Attachments
200
06/29/2017
RESPONSE BRIEF by Continental Circuits LLC (Redacted Responsive Claim Construction Brief).
1
Declaration of Warren J. McCarty
2
Exhibit Index
3
Exhibits A-C
4
Exhibits D-I
5
Exhibit J Part 1 of 2
6
Exhibit J Part 2 of 2
7
Exhibits K-N
7 Attachments
201
06/29/2017
Joint MOTION to Seal Document 199 Brief - Response (Markman) by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
1
Text of Proposed Order
1 Attachment
202
06/29/2017
Joint MOTION to Seal Document 200 Brief - Response (Claim Construction) by Continental Circuits LLC.
1
Text of Proposed Order
1 Attachment
203
06/29/2017
SEALED LODGED Proposed Intel Corporation, Ibiden U.S.A. Corporation, and Ibiden Co. Ltd.'s Responsive Markman Brief re: 201 Joint MOTION to Seal Document 199 Brief - Response (Markman). Document to be filed by Clerk if Motion or Stipulation to Seal is granted. Filed by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
1
Exhibit 25
2
Exhibit 26
3
Exhibit 30
3 Attachments
204
06/29/2017
SEALED LODGED Proposed Continental Circuits LLC's Responsive Claim Construction Brief and Exhibits A & D-G re: 202 Joint MOTION to Seal Document 200 Brief - Response (Claim Construction). Document to be filed by Clerk if Motion or Stipulation to Seal is granted. Filed by Continental Circuits LLC.
1
Exhibit A
2
Exhibit D
3
Exhibit E
4
Exhibit F
5
Exhibit G
5 Attachments
205
06/30/2017
AMENDED ANSWER to Plaintiff Continental Circuits' Second Amended Complaint 128 Amended Complaint and, COUNTERCLAIM against Continental Circuits LLC by Intel Corporation.
206
06/30/2017
AMENDED ANSWER to Plaintiff Continental Circuits' Second Amended Complaint 128 Amended Complaint, COUNTERCLAIM against Continental Circuits LLC by Ibiden U.S.A. Corporation, Ibiden Company Limited.
207
07/03/2017
MINUTE ORDER: Supplemental Request for Copyright, Trademark, or Patent Information. This case has been designated as a copyright, trademark, or patent case. An answer, amended complaint, or other pleading 205 and 206 have been filed that may include additional trademarks, patents, or copyrights allegedly violated that were not previously included. Attached to this docket entry are the required form(s) that may need to be completed by the party who filed the above document.

If your recently filed pleading adds or changes information related to the original patents, trademarks, or copyright allegations, please complete the form that is applicable to this particular case. In some cases, you may need to complete both forms. Within seven (7) days, you must submit the required form(s) to the Clerk's Office. Please complete the form and file it with the Court using the specific event: Notice of Filing - Copyright, Trademark or Patent Information, found under the Other Filings header. Please DO NOT mail the form directly to the Patent or Copyright Office. The Clerk's Office will submit the form.

If there are no changes to the copyright, trademark, or patent information previously submitted for this case, then the party who filed the above document must file a Notice, within seven (7) days, indicating such using the specific event:Notice of Filing - Copyright, Trademark or Patent Information, found under the Other Filings header.
208
07/05/2017
NOTICE of Service of Discovery filed by Ibiden Company Limited, Ibiden U.S.A. Corporation.
209
07/05/2017
NOTICE of Service of Discovery filed by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
210
07/05/2017
NOTICE of Attorney Withdrawal Jason S. McManis filed by Warren J McCarty, III.
211
07/06/2017
NOTICE re: Patent Information by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
212
07/12/2017
STIPULATION (Joint Stipulation Regarding Proposed Format for Claim Construction Hearing) by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
1
Text of Proposed Order
1 Attachment
213
07/14/2017
ANSWER to 205 Amended Answer to Complaint, Counterclaim by Continental Circuits LLC.
214
07/14/2017
ANSWER to 206 Amended Answer to Complaint, Counterclaim by Continental Circuits LLC.
215
07/17/2017
NOTICE of Service of Discovery filed by Continental Circuits LLC.
216
07/17/2017
NOTICE of Service of Discovery filed by Intel Corporation.
217
07/17/2017
NOTICE of Service of Discovery filed by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
218
07/18/2017
In-Court Hearing regarding claim construction set for 8/4/2017 at 10:00 AM IS MOVED IN TIME ONLY. The in-court hearing regarding claim construction is set for 8:30 AM on 84/2017 in Courtroom 603, 401 West Washington Street, Phoenix, AZ 85003 before Judge David G Campbell. Signed by Judge David G Campbell on 7/18/2017. This is a TEXT ENTRY ONLY. There is no PDF document associated with this entry.
219
07/18/2017
ORDER pursuant to 212 Stipulation re format for claim construction hearing. The hearing shall begin promptly at 8:30 AM to accommodate counsels' format suggestion. Signed by Judge David G Campbell on 7/18/2017.
220
07/18/2017
MINUTE ORDER: Supplemental Request for Copyright, Trademark, or Patent Information. This case has been designated as a copyright, trademark, or patent case. An answer, amended complaint, or other pleading 213 and 214 has been filed that may include additional trademarks, patents, or copyrights allegedly violated that were not previously included. Attached to this docket entry are the required form(s) that may need to be completed by the party who filed the above document.

If your recently filed pleading adds or changes information related to the original patents, trademarks, or copyright allegations, please complete the form that is applicable to this particular case. In some cases, you may need to complete both forms. Within seven (7) days, you must submit the required form(s) to the Clerk's Office. Please complete the form and file it with the Court using the specific event: Notice of Filing - Copyright, Trademark or Patent Information, found under the Other Filings header. Please DO NOT mail the form directly to the Patent or Copyright Office. The Clerk's Office will submit the form.

If there are no changes to the copyright, trademark, or patent information previously submitted for this case, then the party who filed the above document must file a Notice, within seven (7) days, indicating such using the specific event:Notice of Filing - Copyright, Trademark or Patent Information, found under the Other Filings header
221
07/18/2017
NOTICE of Filing - Copyright, Trademark or Patent Information filed by Continental Circuits LLC.
222
07/19/2017
NOTICE of Service of Discovery filed by Continental Circuits LLC.
223
07/24/2017
NOTICE of Service of Discovery filed by Continental Circuits LLC.
224
07/28/2017
ORDER. In preparation for next week's Markman hearing, the parties should file short memoranda explaining the effect that their proposed constructions (or indefiniteness arguments) would have on the merits of this case. Having each party explain its reasons for seeking a proposed construction or decision on indefiniteness will aid the Court in determining precisely what must be decided, understanding the context of the parties' arguments, and arriving at constructions that will be most helpful when eventually placed in jury instructions. The memoranda should be filed by 5:00 PM Arizona time on August 2, 2017, and should not exceed six pages each. Signed by Judge David G Campbell on 7-28-17. This is a TEXT ENTRY ONLY. There is no PDF document associated with this entry.
225
08/02/2017
MEMORANDUM (Defendants' Supplemental Markman Brief Regarding the Parties' Proposed Constructions) (Redacted Version) pursuant to 224 Order by Defendants Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
226
08/02/2017
MEMORANDUM CONTINENTAL CIRCUITS LLCS CLAIM CONSTRUCTION MEMORANDUM PER ORDER DKT. NO. 224 224 Order by Plaintiff Continental Circuits LLC.
227
08/02/2017
Joint MOTION to Seal Document 225 Memorandum (Defendants' Supplemental Markman Brief Regarding the Parties' Proposed Constructions) by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
1
Text of Proposed Order
1 Attachment
228
08/02/2017
SEALED LODGED Proposed Defendants' Supplemental Markman Brief Regarding the Parties' Proposed Constructions (Confidential Version) re: 227 Joint MOTION to Seal Document 225 Memorandum (Defendants' Supplemental Markman Brief Regarding the Parties' Proposed Constructions). Document to be filed by Clerk if Motion or Stipulation to Seal is granted. Filed by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
229
08/02/2017
ORDER. In advance of Friday's hearing, the parties should jointly compile a list of technical terms and unique words likely to be used during the hearing. The parties should provide the list, organized alphabetically, to the court reporter before the hearing. Signed by Judge David G Campbell on 8-2-17. This is a TEXT ENTRY ONLY. There is no PDF document associated with this entry.
230
08/03/2017
MEMORANDUM (Redacted Version) CONTINENTAL CIRCUITS LLCS CLAIM CONSTRUCTION MEMORANDUM PER ORDER DKT. NO. 224 224 Order by Plaintiff Continental Circuits LLC.
231
08/03/2017
Joint MOTION to Seal Document 226 Memorandum Continental Circuits LLC's Claim Construction Memorandum Per Order Dkt. No. 224 by Continental Circuits LLC.
1
Text of Proposed Order
1 Attachment
232
08/03/2017
NOTICE of Service of Discovery filed by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
233
08/03/2017
*ORDER granting the parties' motions to seal (Docs. 190, 201, 202, 227, 231) are granted. The Clerk is directed to accept for filing under seal the documents lodged on the Court's docket as Docs. 191, 203, 204, 226, and 228. Signed by Judge David G Campbell on 8/3/2017. (ATD) *Modified on 8/3/2017 to unseal; inadvertently filed under sealed event
234
08/03/2017
SEALED OPENING MARKMAN BRIEF re: 188 Opening Brief by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
1
Exhibit 15
2
Exhibit 16) (ATD
2 Attachments
235
08/03/2017
SEALED RESPONSIVE MARKMAN BRIEF re: 199 Response Brief by Ibiden Company Limited, Ibiden U.S.A. Corporation, Intel Corporation.
1
Exhibit 25
2
Exhibit 26
3
Exhibit 30) (ATD
3 Attachments
236
08/03/2017
SEALED RESPONSIVE CLAIM CONSTRUCTION BRIEF re: 200 Response Brief by Continental Circuits LLC.
1
Exhibit A
2
Exhibit D
3
Exhibit E
4
Exhibit F
5
Exhibit G) (ATD
5 Attachments
237
08/03/2017
SEALED CLAIM CONSTRUCTION MEMORANDUM re: 230 Memorandum by Continental Circuits LLC.
238
08/03/2017