Scanner Technologies Corp. v. Icos Vision Systems
| Decision Date | 19 June 2008 |
| Docket Number | No. 2008-1081.,No. 2007-1399.,2007-1399.,2008-1081. |
| Citation | 528 F.3d 1365 |
| Parties | SCANNER TECHNOLOGIES CORPORATION, Plaintiff-Appellant, v. ICOS VISION SYSTEMS CORPORATION N.V., Defendant-Appellee. Scanner Technologies Corporation, Plaintiff-Appellant, v. Icos Vision Systems Corporation N.V., Defendant-Appellee. |
| Court | U.S. Court of Appeals — Federal Circuit |
Kurt J. Niederluecke, Fredrikson & Byron, P.A., of Minneapolis, MN, argued for plaintiff-appellant. With him on the brief were Darren B. Schwiebert, and Laura L. Myers. Of counsel on the brief for 2007-1399 was Vytas M. Rimas, Scanner Technologies Corporation, of Minneapolis, MN.
Robert M. Kunstadt, R. Kunstadt, P.C., of New York, NY, argued for defendant-appellee. With him on the brief was Ilaria Maggioni. Of counsel on the brief was Bradford E. Kile, Kile, Goekjian, Reed & McManus PLLC, of Washington, DC.
Before MICHEL, Chief Judge, CLEVENGER, Senior Circuit Judge, and GAJARSA, Circuit Judge.
This is an appeal from the United States District Court for the Southern District of New York in a patent infringement action that Scanner Technologies Corp. ("Scanner") brought against ICOS Vision Systems Corp. ("ICOS") in July 2000. ICOS denied infringement and counterclaimed seeking a declaratory judgment of noninfringement, invalidity, and unenforceability. After this court reviewed the district court's Markman ruling in a 2004 interlocutory appeal, Scanner Technologies Corp. v. ICOS Vision Systems Corp., N.V., 365 F.3d 1299, 1300 (Fed.Cir.2004) ("Scanner I"), the district court, on remand, held a bench trial on infringement, validity and enforceability in March 2005. The district court rendered its findings of fact and conclusions of law in a May 22, 2007 opinion. Scanner Techs. Corp. v. Icos Vision Sys. Corp., N.V., 486 F.Supp.2d 330 (S.D.N.Y.2007) ("Scanner II"). The district court entered final judgment on June 1, 2007, finding the asserted patents unenforceable, invalid for obviousness, and not infringed. The final judgment also included a provision that rendered related patents, derived from the same common parent application, unenforceable. Scanner appeals the district court's final judgment. For the reasons stated below, we affirm in part, reverse in part, and vacate in part.
This case involves semiconductor technology and specifically processes to inspect electronic components, including ball array devices, ball grid arrays, chip scale packages, and bump on wafers (collectively "BGAs"). BGAs are mounted on circuit boards that can be found in various electronic devices, and are used to conduct electrical impulses in such devices. The BGAs are comprised of an array of solder balls on a plane or substrate that conduct electrical impulses. As noted in this court's opinion in Scanner I, 365 F.3d at 1300, it is important that the solder balls are positioned precisely at the same height. "Even a minute difference in height could render the BGA, and thus the device, useless." Id.
Inventors Elwin M. Beaty ("Beaty") and David P. Mork ("Mork") discovered an apparatus and method for the three-dimensional inspection of ball array devices in mid-1997 and filed a patent application, U.S. Appl. No. 09/321,805, on the apparatus and method in January 1998. This January 1998 application is the "common parent application" to which the district court refers in its final judgment. From this common parent application, divisional applications that would become U.S. Patent Nos. 6,064,756 ("the '756 patent") and 6,064,757 ("the '757 patent") (collectively, "the patents in suit") were filed on May 28, 1999. Scanner displayed its first embodiment of the method and apparatus—an inspection module called the Ultra Vim Plus ("UV+")—in July 1998 at the Semicon West trade show in San Jose, California, and again in December 1998 at the Semicon Japan trade show.
ICOS representatives were attendees of these trade shows, and interacted with Scanner representatives on at least one occasion. Based at least in part on what ICOS observed at the trade shows, ICOS engaged Scanner in preliminary discussions regarding ICOS's interest in licensing or acquiring Scanner's BGA technology. ICOS eventually abandoned those pursuits in light of its own progress in developing a 3D BGA inspection system. In January 1999, ICOS announced its CyberSTEREO 3D BGA inspection product. The CyberSTEREO was an outgrowth and replacement of ICOS's older BGA inspection product, the ICOS Projector. The Projector had been on the market since 1996, and used a two-camera system with a structured light from a projector to inspect BGAs. Literature for the Projector system explained the use of a triangulation principle to perform three-dimensional measurements, including the use of Z calibration and bilinear interpolation. Whereas the Projector system measured the absolute value of the top of the balls of the BGAs, the CyberSTEREO eliminated the projector and implemented a two-camera system to measure coplanarity, i.e., whether the balls were lying in the same plane. To accomplish this measurement, the CyberSTEREO measures a point inside the ball rather than the top of the ball.
By February 1999, Scanner learned that ICOS had launched the competing CyberSTEREO 3D BGA inspection product. In Scanner's view, ICOS's new product infringed the proposed claims of Scanner's patent applications. Consequently, while the applications were pending, Scanner submitted a petition to make special to the Commissioner of Patents and Trademarks at the United States Patent and Trademark Office ("PTO"). The purpose of such a petition is to seek accelerated review of the pending application.1 In its petition, Scanner's patent attorney, George A. Leone ("Leone") submitted that the application was entitled to special handling status because of actual infringement. The petition contained all the prerequisites that the PTO requires, including Leone's statement that a "rigid comparison" of the alleged infringing method with the claims of the application had been made, and that in Leone's opinion, some of the claims are "unquestionably infringed." The petition was accompanied by a statement from the applicant and assignee, Beaty, describing the claimed invention, his role in the invention, certain interactions between Scanner and ICOS, and ICOS's competing system. The PTO granted Scanner's petition and advanced the application process. Literature describing the Projector system was considered by the PTO Examiner as prior art to the patents in suit, and the claims were considered patentable over the system as described in the literature.
The PTO issued the patents in suit on May 16, 2000. The '756 patent is entitled "Apparatus for three dimensional inspection of electronic components." As the patent's Abstract provides, the '756 patent covers a three dimensional inspection apparatus for ball array devices, where the ball array device is positioned in a fixed optical system. An illumination apparatus is positioned for illuminating the ball array device. A first camera is disposed in a fixed focus position relative to the ball array device for taking a first image of the ball array device to obtain a characteristic circular doughnut shape image from a ball. A second camera is disposed in a fixed focus position relative to the ball array device for taking a second image of the ball array device to obtain a side view image of the ball. A processor applies triangulation calculations on related measurements of the first image and the second image to calculate a three dimensional position of the ball with reference to a pre-calculated calibration plane. '756 patent, Abstract. Claim 1 of the '756 patent reads:
1. A three dimensional inspection apparatus for ball array devices having a plurality of balls, wherein the ball array device is positioned in a fixed optical system, the apparatus comprising:
a) an illumination apparatus positioned for illuminating the ball array device;
b) a first camera disposed in a fixed focus position relative to the ball array device for taking a first image of the ball array device to obtain a characteristic circular doughnut shape image from at least one ball;
c) a second camera disposed in a fixed focus position relative to the ball array device for taking a second image of the ball array device to obtain a side view image of the at least one ball; and
d) a processor, coupled to receive the first image and the second image, that applies triangulation calculations on related measurements of the first image and the second image to calculate a three dimensional position of the at least one ball with reference to a pre-calculated calibration plane.
'756 patent, col. 18, ll. 34-53.
The '757 patent is entitled "Process for three dimensional inspection of electronic components." Corresponding to the '756 patented apparatus, the '757 patent covers a three dimensional inspection process for ball array devices positioned in a fixed optical system. In the claimed process of the '757 patent, the ball array device is illuminated and a first image of the ball array device is taken with a first camera disposed in a fixed focus position relative to the ball array device to obtain a characteristic circular doughnut shape image from a ball. A second image of the ball array device is taken with a second camera disposed in a fixed focus position relative to the ball array device to obtain a side view image of the ball. The first image and the second image are processed using a triangulation method to calculate a three dimensional position of the ball with reference to a pre-calculated calibration plane. '757 patent, Abstract.
Mork assigned his rights in the patents to Beaty—the CEO and majority shareholder of Scanner. Scanner holds an exclusive license to the patents in suit from Beaty, and the license includes the right to sue for infringement.
Scanner filed suit against ICOS on July 7, 2000, accusing...
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