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Case 1 :06-cv-00788-JJF Document 150 Filed O3/05/2008 Page 1 of 3
Asn-1BY & GEDDES
ATTORNEYS AND COUNSELLORS AT LAW TE!-EPHGNE
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WILMINGTON, DELAWARE |9899
March 5, 2008
The Honorable Joseph J. Farnan, Jr. VIA ELECTRONIC FILING
United States District Court
844 King Street
Wilmington, DE 19801
Re: ProMOS Technologies, Inc. v. Freescale Semiconductor, Inc.,
C.A. No. 06-788-JJF
A Dear Judge Farnan:
Pursuant to Local Rule 7.1.2, ProMOS hereby responds to the letter submitted by
Freescale on February 28, 2008 regarding the Federal Circuit’s decision in Halliburton Energy
Services v. M-I LLC, 2008 WL 216294 (Fed. Cir. Jan. 25, 2008). The Halliburton decision does
not support Freescale’s position that the claim term "rounding the top edge of the oper1ing" in the
Fortin ‘267 patent is indefinite.
In Halliburton, the patentee relied on a figure in the specification to support its position
that the claim term "fragile gel" was definite. However, that figure (Figure 3) showed only the
performance and response times of the claimed gel; it did not describe or depict the extent to
which the claimed gel was "fragile." The Federal Circuit therefore held that "a person of
ordinary skill in the art could not determine the bounds of the claims" — i.e., could not determine
if a gel met or did not meet the "&agile gel" limitation — and the claims therefore were "insolubly
ambiguous? Q at *3. Here, in contrast, the specification ofthe Fortin patent includes a figure
that illustrates exactly what the inventor meant by the "rounding" limitation. Speciically, Figure
5 of the Fortin patent is a representation of what the top edge of the opening looks like after it
has been "round[ed].” Accordingly, in contrast with Halliburton, the Fortin patent includes a
figure that describes the precise features that meet the limitation at issue, and Freescale has
provided no basis for concluding that a person of ordinary skill in the art could not determine
whether a process results in "rounding of the top edge of the opening" or not. This claim
language, as depicted in Figure 5 of the Fortin patent, is far from "insolubly ambiguous," it is
crystal clear.
Moreover, in Halliburton, Figure 3 purported to show how the claimed invention was
novel. But Figure 3 showed that the performance and response times resulted in the same L-
shaped curve for the claimed gel as for the prior art gels, and there was nothing in the
specincation on which a person of ordinary skill in the art could rely to determine how the
claimed invention differed from the prior art in terms of "fragileness." Ig at *5-6. The Federal
Circuit held in this regard that an "evaluation of a claim’s definiteness" can include “whether the
patent expressly or at least clearly differentiates itself from specific prior art. Such

Case 1 :06-cv-00788-JJF Document 150 Filed 03/05/2008 Page 2 of 3
The Honorable Joseph J. Faman, Jr.
March 5, 2008
Page 2
differentiation is an important consideration in the definiteness inquiry because in attempting to
define a claim term, a person of ordinary skill is likely to conclude that the definition does not
encompass that which is expressly distinguished as prior art." E. In the Fortin patent, however,
Figure 5 does not purport to distinguish the prior art based on the "rounding" feature of the
claimed invention. Accordingly, the type of ambiguity created by Figure 3 in Halliburton, and
which was "fatal" to the patent in that case, Q at *6, simply does not exist with respect to Figure
5 of the Fortin patent.
Freescale’s position that a person of ordinary skill in the art would have difficulty
understanding what is meant by the “rounding" limitation of the Fortin patent is ftuther
undermined by the testimony of its own process engineers. During his Rule 30(b)(6) deposition,
without any prompting from the examining attorney, Freescale employee Scott Bolton gave the
following testimony, demonstrating his clear understanding of the manner in which the accused
RF pre-cleaning step rounds the top edges of the contact opening:
Q: And does that [RF pre-clean] process result in any changes to the physical
characteristics of the comer of that contact wall?
A: In our 40 angstrom process it is a very short etch and we clean the bottom of
the contact and there would likely be in a pre-, post-picture of this feature after
. receiving that etch some small rounding or comering of very sharp facets. So if
this is a 90 degree angle rectangle, after a RF etch, those 90 degree points are
slightly rounded and that’s a feature of the RF etch process.
February 4, 2008 Bolton dep. at 143.
Halliburton is further distinguishable because there the patentee sought to give meaning
to the claim term "&agile gel" by defining it in a way that was contrary to the specification. See
» Halliburton at * 4-5 (noting that nothing in the specification required the fragile gel drilling fluid
to have low or no organophilic clays). Here, as ProMOS has previously explained, its proposed
construction is completely supported by and consistent with the specification and the figures
contained therein. E ProMOS’s Opening Claim Construction Brief (D.I. 84) at 33-35;
ProMOS’s Answering Claim Construction Brief (D.I. 90) at 30-32.
Finally, there is a clear and obvious difference between the claim term at issue in
Halliburton ("fragile gel") and the claim term at issue here ("rounding the top edge of the
~ opening"). The former is vague and ambiguous standing alone, while the latter is descriptive to
both a layperson and a person skilled in the art. This plain and understandable claim language is
further illustrated and defined by the drawing in Figure 5.
In its claim construction briefmg and at the Markman hearing, ProMOS demonstrated
that Freescale has failed to come forward with the clear and convincing evidence necessary to
support its position that the term "rounding the top edge of the opening" is indefinite. There is
nothing in the Halliburton decision that undermines ProMOS’s position on that point.

Case 1 :06-cv-00788-JJF Document 150 Filed O3/05/2008 Page 3 of 3
The Honorable Joseph J. Faman, Jr.
March 5, 2008
Page 3
Respectiiilly,
/s/ John G. Day
John G. Day
J GD: nml
188806.1
cc: Mary B. Graham, Esquire (via electronic mail)
Steven J. Routh, Esquire (via electronic mail)
David L. Witcofi Esquire (via electronic mail)