The opinion of the court was delivered by: Conner, Senior D. J.
Plaintiff Gertrude Neumark Rothschild moves for reconsideration or clarification of this Court's Opinion and Order dated May 3, 2007 construing certain terms of the claims of plaintiff's U.S. patents Nos. 4,904,618 and 4,252,499 (the "'618 patent" and "'499 patent" respectively) following a Markman hearing on March 19, 2007. Familiarity with that Opinion and Order is assumed. For the reasons stated hereinafter, plaintiff's motion is granted in part and denied in part. Plaintiff also asks the Court to adopt the construction of claim terms agreed upon by the parties; that request is unopposed and is granted.
Standard for Reconsideration
Reconsideration is "an extraordinary remedy to be employed sparingly in the interests of finality and conservation of scarce judicial resources." In re Health Mgmt. Sys. Sec. Litig., 113 F. Supp. 2d 613, 614 (S.D.N.Y. 2000). A motion for reconsideration should be granted only where the Court overlooked critical facts or controlling decisions, see Pollack v. Safeway Steel Prods., No. 03 Civ. 4067, 2007 U.S. Dist. LEXIS 24746, at *7 (S.D.N.Y. Mar. 30, 2007), and not"where the moving party seeks solely to relitigate an issue already decided." Convolve, Inc. v. Compaq Computer Corp., No. 00 Civ. 5141, 2007 WL 415145, at *1 (S.D.N.Y. Feb. 7, 2007).
The Challenged Constructions
Plaintiff seeks reconsideration of the Court's construction of the following two claim terms:
The complete phrase, which appears in the preamble of claim 10 of the '499 patent, reads:
"A method of forming a low resistivity semiconductor from a wide band-gap semiconductor substrate . . . ." The Court construed this phrase to mean "forming from a pre-existing substrate." The Court's construction was based primarily upon the ordinary meaning of the words themselves: you obviously cannot form an X from a Y unless you begin with a Y. The Court reinforced this construction by reference to the prosecution history of the '499 patent. In requiring restriction of the application to either the product claims or the method claims, the Examiner stated:
. . . the device of the group I invention [the product claims] could be made by [a process] materially different from those of the group II invention [the method claims], e.g., hydrogen can be incorporated into the semiconductor during growth rather than introduction of hydrogen into the semiconductor after it [is] grown, as is claimed in the instant application. (Cree Op. Br., Ex. B at 2, emphasis added.) Plaintiff did not challenge the Examiner's statement that the method claims, including application claim 20 which became claim 10 of the '499 patent, were directed to a process of incorporating hydrogen into a semiconductor crystal after it is grown, but merely complied with the restriction requirement by canceling all the product claims, which would have covered the semiconductor whether the hydrogen was introduced into the substrate during its growth or thereafter. By not refiling these claims, plaintiff effectively abandoned such coverage.
In her motion for reconsideration, plaintiff ignores the Court's primary reliance on the ordinary meaning of the words and attacks only the implications of the requirement for restriction and plaintiff's response thereto. Plaintiff argues that because the Examiner's statement referred to the introduction of hydrogen, "it was directed only to the first embodiment concerning the introduction of atomic hydrogen, not the embodiment directed to the introduction of atomic hydrogen and another dopant." (Pl. Mem. at 3.) The Court cannot agree with this strained misreading of the Examiner's statement. The Examiner did not distinguish between method claims calling for the introduction of atomic hydrogen alone and method claims calling for the introduction of atomic hydrogen together with another dopant. Instead he required restriction of the application to either the product claims or the method claims, meaning all of the method claims, including those, such as patent claims 1-9 and 22, calling merely for the introduction of atomic hydrogen and those, such as patent claims 10-21, calling for the introduction of atomic hydrogen together with another dopant. His statement referred only to the introduction of hydrogen for the obvious reason that the introduction of hydrogen was common to all of the method claims.
Plaintiff also argues (Pl. Mem. at 4-5) that because the Examiner rejected claim 20 over the Fan reference, which discloses "growing the ZnSe layer in an environment that includes hydrogen," the Examiner must have understood claim 20 to cover incorporation of hydrogen during growth of the crystal. However the rejection was based alternatively on either anticipation (35 U.S.C. § 102) or obviousness (35 U.S.C. § 103). It therefore carried no implication that the Examiner understood claim 20 to cover incorporation of hydrogen during crystal growth.
Plaintiff further argues (Pl. Mem. at 6) that the "plain meaning" of the verb "to form" is to "make or produce." That argument would have force if we were construing the word "forming" and not the phrase "forming . . . from." Plaintiff's studied disregard of the important word "from" is unpersuasive, to say the least.
There is other intrinsic evidence, not previously discussed, further reinforcing the Court's construction of the claim term in question. Claim 10 itself calls for "selectively doping the semiconductor substrate" (emphasis added). The specification of the '499 patent (at 3:48-51 and 4:33-36) teaches that such selective doping may be achieved by shielding from the hydrogen the side of the substrate that has good conductivity so that there will be "no or minimal diffusion of hydrogen into that side." ...