Ade Corp. v. Kla-Tencor Corp.

• Decision Date: 09 September 2002
• Docket Number: No. CIV.A. 00-892 MPT.,CIV.A. 00-892 MPT.
• Citation: 220 F.Supp.2d 303
• Parties: ADE CORPORATION, Plaintiff, v. KLA-TENCOR CORPORATION, Defendant.
• Court: U.S. District Court — District of Delaware

220 F.Supp.2d 303

ADE CORPORATION, Plaintiff, v. KLA-TENCOR CORPORATION, Defendant.

No. CIV.A. 00-892 MPT.

United States District Court, D. Delaware.

September 9, 2002.

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William J. Marsden, Jr., Esquire, Thomas L. Halkowski, Esquire, Fish & Richardson P.C., Wilmington, Delaware, attorneys for the plaintiff ADE Corporation. Of Counsel: Robert E. Hillman, Esquire, Craig R. Smith, Esquire, Fish & Richardson P.C., Boston, MA; Howard G. Pollack, Esquire, Kimberly A. Donovan, Esquire, Fish & Richardson P.C., Redwood City, CA.

Rudolf E. Hutz, Esquire, Patricia Smink Rogowski, Esquire, Connolly Bove Lodge & Hutz LLP, Wilmington, Delaware, attorneys for the defendant/counterclaimant KLA-Tencor Corporation. Of Counsel: Michael H. Kalkstein, Esquire, Chris Scott Graham, Esquire, David C. Bohrer, Esquire, Shawn A. Mangano, Esquire, Oppenheimer Wolff & Donnelly LLP, Palo Alto, CA.

AMENDED MEMORANDUM OPINION

THYNGE, United States Magistrate Judge.

Plaintiff, ADE Corporation ("ADE"), and defendant, KLA-Tencor Corporation ("KLA"), are owners of patents directed to the detection and classification of defects on the surface of silicon wafers as crystalline originated pit ("COP") defects or particle defects. On October 10, 2000, ADE filed this patent infringement suit against KLA alleging infringement of its 6,118,525 patent. D.I. 1. KLA counterclaimed arguing that ADE infringed its 5,883,710; 6,215,551; 6,081,325; and 5,226,118 patents.¹ Pursuant to Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed.Cir. 1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996); and local practice, this memorandum construes the aforementioned patents and resolves many outstanding pretrial case dispositive summary judgment motions.

THE COURT'S PATENT CLAIM CONSTRUCTION

I. Technology Overview

Directing beams of light at silicon wafers, collecting said light, and attempting to interpret said collected light as a quality tool is not new in the semiconductor industry. The '525, '325, '710, and '551² patents involved in this case relate to similar inventions for use in the semiconductor industry for detecting and classifying defects on the surface of silicon wafers as crystalline originate pits ("COPS") or particles. As used in this industry and, in general, the inventions operate by focusing an incident beam of light at the surface of a silicon wafer at an oblique angle to said surface, scanning the surface with said beam, collecting light scattered from said surface, and comparing said scattered light to determine whether the scatter pattern is indicative of a silicon wafer defect (COP or particle).³

In contrast to the previous patents, the '118 invention does not physically inspect the surface of silicon wafers searching for defects. Instead, the invention is directed to a system or method that analyzes or processes information previously captured from a physical scan of the surface of a silicon wafer to determine whether the data is representative of a silicon wafer defect. To accomplish this goal, the '118 invention uses predefined or manually manipulated program parameters in conjunction with computer hardware and software to guide system operators during analysis of the raw data previously collected.

II. General Principles of Patent Claim Construction

The parties quibble extensively about the terminology employed to claim the inventions involved in this case. It is difficult to fathom, however, how two very diverging viewpoints can emerge from the same claim language given that officials designated as experts in their respective fields at the United States Patent and Trademark Office studied these inventions and found them patentable. Nonetheless, this court is bestowed with the responsibility of sifting through the parties' arguments to arrive at a claim construction for each of the contested claims. Markman, 52 F.3d at 980. In this regard, this court is mindful of the proper weight accorded both intrinsic and extrinsic evidence when performing a Markman analysis.

Claim analysis begins with the claim language used to delimit the scope of an invention. Bell Atl. Network Servs., Inc. v. Covad Communications Group, Inc., 262 F.3d 1258, 1267 (Fed.Cir.2001) (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996)); Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1248 (Fed.Cir.1998); Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620 (Fed.Cir.1995). A court applies to this language an "ordinary and accustomed meaning as understood by one of ordinary skill in the art" at the time the patent was filed. Hockerson-Halberstadt, Inc. v. Avia Group Int'l, Inc., 222 F.3d 951, 955 (Fed.Cir.2000) (citing Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1578 (Fed.Cir.1996); and Markman, 52 F.3d at 980); Schering Corp. v. Amgen Inc., 222 F.3d 1347, 1353 (Fed.Cir.2000) (citing York Prods., Inc. v. Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1572 (Fed.Cir.1996)); Johnson Worldwide Associates, Inc. v. Zebco Corporation, 175 F.3d 985, 989 (Fed.Cir.1999) (citing Renishaw, 158 F.3d at 1249; and York Prods., 99 F.3d at 1568). Claim construction then progresses to a consideration of the remainder of the specification and any prosecution history before the court to determine whether the intrinsic record contains information requiring an interpretation of the words used in the claim differing from that commonly understood by those skilled in the art. Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed.Cir.2001) (citing Vitronics Corp., 90 F.3d at 1576-77; Markman, 52 F.3d at 979; and Bell Communications, 55 F.3d at 620); see also Wang Labs., Inc. v. America Online, Inc., 197 F.3d 1377, 1383 (Fed.Cir. 1999) (A review of the specification will prevent a court from construing claims to encompass embodiments that are not taught in the specification.); Southwall Techs. Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed.Cir.1995) (Arguments and amendments made during prosecution of a patent may be used to exclude a construction that was disclaimed thereby.); and Elkay Mfg. Co. v. EBCO Mfg. Co., 192 F.3d 973, 979 (Fed.Cir.1999) (Amendments and arguments made during patent prosecution may result in a forfeiture of certain claim scope).

If the claim words are clear on their face and the intrinsic record contains no indication that the inventors intended anything other than a common art meaning to apply, claim construction ceases without a review of extrinsic evidence. Interactive Gift, 231 F.3d at 866; Hockerson-Halberstadt, 222 F.3d at 955 (citing Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 716 (Fed.Cir.1998)). When the intrinsic record is unclear or ambiguous as to the meaning of claim terms, however, a court may look to extrinsic evidence to discern whether those of ordinary skill in the art attach a meaning to the claim terms eluding the court's grasp due to its unfamiliarity with the technology involved. Vitronics Corp., 90 F.3d at 1583. If so, a court is apt to follow such a construction if that construction is consistent with the intrinsic record. Id. Typically, though, extrinsic evidence serves the impassive role of educating the court as to the technology involved because such evidence, unlike the intrinsic record, is ephemeral. Id. A court's claim construction, therefore, cannot be dictated by the parties' self-serving motives presented in the crucible of litigation.

Inventors will not be heard to acquire an "after-the-fact" meaning for a claim term based upon extrinsic evidence when exclusionary protection was predicated on fulfillment of statutorily imposed requirements prior to litigation. North American Vaccine, Inc. v. American Cyanamid Co., 7 F.3d 1571, 1577 (Fed.Cir.1993), cert. denied, 511 U.S. 1069, 114 S.Ct. 1645, 128 L.Ed.2d 365 (1994) ("after-the-fact testimony is of little weight compared to the clear import of the patent disclosure itself") (citing Senmed, Inc. v. Richard-Allan Medical Indus. Inc., 888 F.2d, 815, 819 n. 8, (Fed.Cir.1989)); see also Bell & Howell DMP Co. v. Altek Sys., 132 F.3d 701, 706 (Fed.Cir.1997) ("[T]estimony of an attorney `amounts to no more than legal opinion — it is precisely the process of construction that the court must undertake.'") (quoting Markman, 52 F.3d at 983). 35 U.S.C. § 112, ¶ 1 provides that the patent specification must contain a "full, clear, . . . [and] concise" explanation of the invention as claimed in "exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention." 35 U.S.C. § 112, ¶ 2 further provides that a patent specification must "concluded with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." Simply put, the intrinsic record should contain everything a court needs to determine the bounds of an invention; this record controls the Markman inquiry. Vitronics Corp., 90 F.3d at 1583.

III. ADE Corporation's '525 Patent

A. Claim 1⁴

1. [Preamble] "A surface inspection method for distinguishing between particle and pit defects on a surface of a workpiece, said method comprising:"

ADE contends that the preamble of claim 1 should limit the entire claim because it defines the invention. D.I. 318 at 10-11. In support of this allegation, ADE notes that both its expert, Dr. Bullis, and KLA's expert, Dr. Eimerl, agree that the '525 invention lacks meaning if the invention cannot distinguish between particle defects and pit defects. Id. KLA argues that the preamble should not be used to limit claim 1 because ADE is attempting to "improperly read[] an `extremely small' limitation into the phrase `particle defects and pit defects'" when claim 1 contains no...