98 F.3d 1563 (Fed. Cir. 1996), 94-1428, Applied Materials, Inc. v. Advanced Semiconductor Materials America, Inc.

Docket Nº:94-1428, 94-1466.
Citation:98 F.3d 1563
Party Name:40 U.S.P.Q.2d 1481 APPLIED MATERIALS, INC., Plaintiff/Cross-Appellant, v. ADVANCED SEMICONDUCTOR MATERIALS AMERICA, INC. and Epsilon Technology, Inc., d/b/a ASM Epitaxy, Defendants-Appellants, and Advanced Semiconductor Int. N.V., Defendant.
Case Date:October 24, 1996
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

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98 F.3d 1563 (Fed. Cir. 1996)

40 U.S.P.Q.2d 1481

APPLIED MATERIALS, INC., Plaintiff/Cross-Appellant,



Technology, Inc., d/b/a ASM Epitaxy, Defendants-Appellants,


Advanced Semiconductor Int. N.V., Defendant.

Nos. 94-1428, 94-1466.

United States Court of Appeals, Federal Circuit

October 24, 1996

Rehearing Denied; Suggestion for Rehearing In Banc Declined

Dec. 17, 1996.[*]

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[Copyrighted Material Omitted]

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Matthew D. Powers, Weil, Gotshal & Manges, Menlo Park, CA, for plaintiff/cross-appellant. With him on the brief was Edward R. Reines.

Don W. Martens, Knobbe, Martens, Olson & Bear, Newport Beach, CA, for defendants-appellants. With him on the brief were Lowell Anderson, John B. Sganga, and Vito A. Canuso III. Also on the brief was Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, Washington, D.C.

Before ARCHER, Chief Judge, NEWMAN and MAYER, Circuit Judges.

Opinion for the court filed by Circuit Judge NEWMAN for Parts I and II; dissenting opinion as to Part I filed by Chief Judge ARCHER. For Part III, Chief Judge ARCHER and Circuit Judge MAYER each filed opinions concurring in the judgment of affirmance; dissenting opinion as to Part III filed by Circuit Judge NEWMAN.

PAULINE NEWMAN, Circuit Judge.

Advanced Semiconductor Materials America, Inc. and Epsilon Technology, Inc., together doing business as ASM Epitaxy (herein "ASM"), appeal those portions of the decision of the United States District Court for the Northern District of California 1 sustaining

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the validity of United States Patent No. 4,496,609 (the '609 or McNeilly patent), and holding that United States Patent No. 4,728,389 (the '389 or Logar patent) is infringed by application of the doctrine of equivalents. Applied Materials, Inc., owner of the '609 and '389 patents, appeals the district court's holding that its United States Patent No. 4,081,313 (the '313 patent) is invalid and that the '389 patent is not literally infringed. The validity of the '389 patent was not contested. The ruling that the '609 patent is infringed in not appealed.

We affirm the decisions that the '609 patent is valid and that the '389 patent is not literally infringed, reverse the decision that the '389 patent is infringed under the doctrine of equivalents, and affirm the decision that the '313 patent is invalid. The case is remanded for appropriate further proceedings.


Both Applied Materials and ASM are manufacturers and sellers of devices used in the production of semiconductor integrated circuits by chemical vapor deposition (CVD). By the process of CVD thin layers of chemical materials such as silicon and silicon compounds are deposited upon a substrate by exposing the substrate at high temperatures to the vaporized material to be deposited, under controlled conditions in oven-like reactor chambers. Due to the extremely small size and complex detail of the circuits produced and the thinness of the layers deposited, the control of contaminants during CVD is of paramount importance. The inventions of the patents in suit are directed to improvements in the methods and apparatus of CVD for the purposes of reducing or eliminating contaminants and enhancing the quality of the deposition product.



The purity of the deposition is affected by contaminants emanating from or passing through the quartz walls of the deposition chamber, and by the migration of contaminants onto the substrate by gravity or static electricity. A known method of reducing the contamination that arises from the quartz walls is to keep the walls cool during the deposition. Since the CVD substrate is heated to very high temperatures during the deposition, generally over 1100? >>>>>> C, the heating of the substrate must be accomplished without heating the walls of the reaction chamber. The invention of the '609 patent is directed to an improved process for heating the substrate in a quartz reaction chamber, using radiant heat energy.

The prior CVD process of choice used radio frequency energy as the source of deposition heat. Since the quartz chamber walls transmit but do not absorb radio frequencies, the walls remain cool and contamination is reduced. The substrate does not absorb radio frequency energy, and is heated indirectly by placing it on a slab of graphite called a susceptor; the susceptor absorbs the radio frequency, converts it to heat, and heats the substrate by contact.

The invention of the '609 patent is the use of high intensity heat lamps and radiant energy to heat the substrate, instead of using radio frequency energy. The prior art recognized this general use of radiant energy, but stated that it was not effective at high deposition temperatures. McNeilly and co-workers discovered not only that radiant energy can be used at high temperatures, but that it resulted in unexpected advantages in that it produced more uniform heating of the substrate and superior circuitry. The district court observed that after initial skepticism the Applied Materials method, subject of the '609 patent, was recognized as superior by the industry, and that Applied Materials' reactor has displaced the radio frequency reactor as the CVD apparatus of choice.

Applied Materials charged ASM with infringement of the '609 patent by ASM's Epsilon One reactor. The district court rejected ASM's defenses of patent invalidity and unenforceability, and found that the '609 patent was infringed. ASM appeals the validity determination on two grounds: double patenting and obviousness. Other issues concerning the '609 patent are not appealed.

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Double Patenting

ASM argues that the '609 patent is invalid for double patenting with United States Patents No. 3,623,712 (the '712 patent) and No. 4,047,496 (the '496 patent). These three patents all arose from the same parent application. The '712 and '496 patents claim the apparatus and the '609 patent claims the process for this use of radiant energy. Claim 1, the broadest claim of the '609 patent, is shown in the margin. 2

The question of whether the claims of the process patent are subject to double patenting with the claims of the apparatus patents arises only if these patents are not entitled to the benefit of 35 U.S.C. § 121. ASM argues that Applied Materials lost this entitlement because during prosecution before the Patent and Trademark Office (PTO) the applicant enlarged the process claims beyond their scope at the time of imposition of a "restriction requirement." ASM states that this action removed all of the '609 claims from the benefit of § 121, and requires that the '609 patent be either invalidated for double patenting or subjected to a terminal disclaimer. These issues relating to § 121 are matters of statutory interpretation, to which we give plenary review on appeal.

The patent examiner imposed a restriction requirement on the McNeilly patent application as it was originally filed, in accordance with the first sentence of 35 U.S.C. § 121:

§ 121 If two or more independent and distinct inventions are claimed in one application, the Commissioner may require the application to be restricted to one of the inventions.

As required by administrative rule, in imposing the restriction requirement the examiner divided the claims into groups, viz. "an oven-type radiation heated reactor," "a reactor with means for introducing gaseous reactants," and "a gaseous epitaxial coating process." In response to the examiner's requirement that the applicant elect which invention he wished to continue prosecuting in the original application, McNeilly elected the radiation-heated reactor and duly prosecuted the other two inventions in separately filed divisional applications. The second sentence of § 121 recognizes this procedure and provides that such divisional applications are entitled to the benefit of the original filing date:

§ 121 If the other invention is made the subject of a divisional application which complies with the requirements of section 120 of this title it shall be entitled to the benefit of the filing date of the original application.

The three patent applications issued as the '712 and '496 patents on the apparatus and the '609 patent on the process. We take note that the history of these patents shows several refilings, amendments, and continuations-in-part, as discussed in Applied Materials, Inc. v. Gemini Research Corp., 835 F.2d 279, 15 USPQ2d 1816 (Fed.Cir.1988).

The process claims as presented in the original application and carried into the '609 divisional application were drawn to the deposition of epitaxial layers. 3 During further prosecution the claims were amended to include chemical vapor deposition broadly, thus encompassing non-epitaxial deposition as well as epitaxial, as generally described in the specification. The district court observed that the PTO classification, a criterion of restriction requirements, was unchanged. ASM argues that this change in scope of the claims after the restriction requirement was

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initially imposed eliminates the benefit of the third sentence of § 121:

§ 121 A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application.

ASM states that without the shield of § 121 the '609 process patent...

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