The opinion of the court was delivered by: Conner, Senior D.J.
In this action for alleged infringement of plaintiff's U.S. patents Nos. 4,904,618 and 5,252,499 (the "'618 patent" and "'499 patent" respectively) by defendant Cree, Inc. ("Cree"), after a Markman hearing, the Court on May 3, 2007 filed an Opinion and Order ("Rothschild I")*fn1 construing certain disputed terms of the claims of the two patents in suit. In response to a motion by plaintiff for reconsideration or clarification of the Court's construction of two of the claim terms of the '499 patent, the Court on July 2, 2007 filed a supplemental Opinion and Order ("Rothschild II")*fn2 modifying its construction of one of the terms and confirming its construction of the other. Based on the Court's construction of the claims of the '499 patent, Cree now moves for a partial summary judgment of non-infringement of that patent. For the reasons stated hereinafter, that motion is denied.
I. The Summary Judgment Standard
Summary judgment may be granted only where there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. See FED. R. CIV. P. 56 (c); Celotex Corp. v. Catrett, 477 U. S. 317, 322-23 (1986). The evidence must be viewed in the light most favorable to the non-moving party, with all reasonable inferences being drawn in favor of that party. IMS Tech. Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1429 (Fed. Cir. 2000). However, the Federal Circuit has recognized that, where appropriate, summary judgments promote efficiency by avoiding "wasteful utilization of the jury processand judicial resources." See Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d 831, 835 (Fed. Cir. 1984); see also EMI Group N. Am., Inc. v. Intel Corp., 157 F.3d 887, 891 (Fed. Cir. 1998).
II. The '499 Patent Claim Terms in Dispute
Plaintiff charges Cree with infringement of Claims 10, 12-14 and 16-20 of the '499 patent. Of these claims, Claim 10 is the only independent claim and all the others are dependent upon it, either directly or indirectly. Therefore, if Claim 10 is not infringed, either literally or under the doctrine of equivalents, none of the claims of the '499 patent are infringed. Claim 10 reads as follows:
10. A method of forming a low resistivity semiconductor from a wide band-gap semiconductor substrate that has a tendency to become compensated when it is doped, comprising selectively doping the semiconductor substrate with an effective amount of dopant to induce conductivity, together with an effective amount of atomic hydrogen to act as a compensator and block unacceptably high occurrences of other compensators, then removing an effective amount of the added hydrogen to reduce the resistivity of the semiconductor, the hydrogen removed under conditions to limit other movement within the semiconductor. (Radulescu Decl., Ex. 1 at 6:63-7:7.)
In the Memorandum in Support of its Motion for Partial Summary Judgment, Cree contends that the following two limiting terms of Claim 10 are inapplicable to any process it employs in the manufacture of light-emitting diodes (LEDs):
(1) "forming a low resistivity semiconductor from a wide band-gap semiconductor substrate." (Def. Mem. Supp. Part. Summ. J. at 11 (emphasis added by defendant).) In Rothschild I, the Court construed this limitation to require "forming from a pre-existing substrate." 2007 WL 1314619, at *9. When plaintiff moved for clarification of that construction, the Court, in Rothschild II, stated, "There is no apparent reason for clarification of the Court's construction of this term. It is difficult to imagine a clearer way to say that the claim term requires a pre-existing substrate and that it does not cover doping during growth of the substrate." 2007 WL 1944327, at *3.
(2) "selectively doping the semiconductor substrate with an effective amount of dopant to induce acceptable conductivity, together with an effective amount of atomic hydrogen to act as a compensator and block unacceptably high occurrences of other compensators." (Def. Mem. Supp. Part. Summ. J. at 16-17.) The Court, in Rothschild I, construed the term "substrate" to mean "an underlying base on which an epitaxial layer is grown" and the term "together with" to mean "simultaneously with." 2007 WL 1314619, at *12. In Rothschild II, the Court construed the term "atomic hydrogen" to mean "atomic hydrogen (from any source)." 2007 WL 1944327, at *5. The Court did not discuss any of the other terms of this step of the claimed process in either of its claim construction opinions.
III. Limiting Effect of the Claim Preamble
Because the first of the two terms in question, "forming a low resistivity semiconductor from a wide band-gap semiconductor substrate," appears only in the preamble of Claim 10, we must first confront the threshold question whether a term contained in the preamble of a patent claim limits the coverage of the claim. Plaintiff argues that this term merely sets forth the "intended use" of the method described in the body of the claim and "is irrelevant to a finding of literal infringement." (Pl. Mem. Opp. Part. Summ. J. at 19.) This is an entirely new argument which admittedly was not advanced by plaintiff during the Markman process. Indeed, as Cree points out, plaintiff proffered constructions for three terms that appear only in the preamble of Claim 10. (Def. Reply Mem. Supp. Part. Summ. J. at 2.) Cree proposed ...