Silicon Storage Technology, Inc. v. Xicor LLC

MEMORANDUM & ORDER

Plaintiff Silicon Storage Technology, Inc. (“SST”) brought this action against defendant Xicor LLC, seeking a declaration that claims 12 and 13 of U.S. Patent No. RE38,370 (“the '370 patent”) are invalid and that it has not infringed Xicor’s patent. Xicor filed a counterclaim alleging infringement of the '370 patent. Now before the court are the parties’ cross-motions for summary judgment as to whether claims 12 and 13 of the '370 patent are invalid under the rule against recapture. Having considered the parties’ arguments and submissions, and for the reasons set forth below, the court enters the following order.

BACKGROUND

I. Technology Addressed by the PatenLin-Suit

The patent at issue relates to the “tunneling oxide layer” of a computer memory chip and a method for forming that region. See Docket No. 50 (Evans Decl.) Exh. C ('370 patent) at 1:12-16. Electrically erasable read-only memory devices (“EEP-ROM”) contain “floating gates” which store electric charge and indicate the presence or absence of such charge with a binary 1 or O. Id. at 1:19-22. The floating gate is electrically insulated from the other electrodes of the EEPROM device by one or more…