Asyst Technologies, Inc. v. Emtrak, Inc.

• Decision Date: 10 October 2008
• Docket Number: No. 2007-1554.,2007-1554.
• Citation: 544 F.3d 1310
• Parties: ASYST TECHNOLOGIES, INC., Plaintiff-Appellant, v. EMTRAK, INC., Jenoptik AG, Jenoptik Infab, Inc., and Meissner + Wurst GmbH, Defendants-Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

544 F.3d 1310

ASYST TECHNOLOGIES, INC., Plaintiff-Appellant, v. EMTRAK, INC., Jenoptik AG, Jenoptik Infab, Inc., and Meissner + Wurst GmbH, Defendants-Appellees.

No. 2007-1554.

United States Court of Appeals, Federal Circuit.

October 10, 2008.

Darryl M. Woo, Fenwick & West, LLP, of San Francisco, CA, argued for plaintiff-appellant. With him on the brief were Michael J. Sacksteder, and David D. Schumann; and Joseph S. Belichick, Fenwick & West, LLP, of Mountain View, California.

Daniel T. Shvodian, Howrey LLP, of East Palo Alto, CA, argued for defendants-appellees. With him on the brief were James F. Valentine; and Floyd R. Nation and Richard L. Stanley, of Houston, Texas.

Before MICHEL, Chief Judge, NEWMAN, and BRYSON, Circuit Judges.

BRYSON, Circuit Judge.

Asyst Technologies, Inc., is the assignee of U.S. Patent No. 5,097,421 ("the '421 patent"), entitled "Intelligent Wafer Carrier." The patent claims a system for tracking articles, such as silicon semiconductor wafers, in a manufacturing facility in which the wafers must be processed sequentially at a number of processing stations. The disclosed system includes transportable containers, or "pods," which contain wafers that are to be transported between different manufacturing stations and allow the wafers to be maintained in a clean environment. The pods contain means for storing data regarding the status of the wafers in the pod, and the system features a means for transmitting data from the processing station to the pod and a means, located on the pod, for receiving data. The communication and storage means, which are connected to a central control unit, enable the system to detect the status of the wafers in each pod in the course of the manufacturing process, so that the proper fabricating steps can be followed in the proper order. '421 patent, col. 1, ll. 46-54. See Asyst Techs., Inc. v. Emtrak, Inc., 268 F.3d 1364, 1366 (Fed.Cir.2001) ("Asyst I").

Asyst sued Jenoptik AG and other parties (collectively, "Jenoptik") in the United States District Court for the Northern District of California, charging Jenoptik with infringing the '421 patent and another Asyst-owned patent, U.S. Patent No. 4,974,166 ("the '166 patent"). The trial court first granted summary judgment of no infringement as to three of the asserted claims because the accused device lacked a simple communication means; the court ruled that the other asserted independent claims were not infringed because the accused device lacked structure corresponding to the "means for sensing." Asyst I, 268 F.3d at 1369. On the first appeal, this court reversed the grant of summary judgment, holding that the trial court had erred in its claim construction. Asyst I, 268 F.3d at 1370-71, 1373, 1374.

On remand, the district court again granted summary judgment of non-infringement as to the claims of the '421 patent and dismissed the claims of infringement of the '166 patent pursuant to the parties' agreement. Asyst Techs., Inc. v. Emtrak, Inc., 2003 U.S. Dist. LEXIS 26418 (N.D.Cal. Oct. 8, 2003). On appeal, this court affirmed the grant of summary judgment of no infringement of independent claim 1 of the '421 patent but reversed and remanded with respect to independent claim 2 and dependent claims 11-14. Asyst Techs., Inc. v. Emtrak, Inc., 402 F.3d 1188, 1189 (Fed.Cir.2005) ("Asyst II").

On the second remand, the court ruled on summary judgment that claims 2 and 11-14 of the '421 patent are invalid for double patenting over claim 8 of the '166 patent. After Asyst filed a terminal disclaimer to overcome the double patenting problem, the case proceeded to trial. At the end of trial, the jury found claims 2 and 11-14 of the '421 patent valid and infringed. Jenoptik then moved for judgment as a matter of law ("JMOL") that the asserted claims were invalid due to obviousness, or alternatively for a new trial. After initial briefing on the JMOL motion, the Supreme Court decided KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007), and the trial court thereafter allowed additional briefing based on that decision. The trial court then granted JMOL of obviousness, in view of U.S. Patent No. 4,588,880 to Hesser, based in part on KSR. The trial court also conditionally granted a new trial in the event that we should reverse the grant of JMOL.

I

Although the jury concluded that the asserted claims were not invalid for obviousness in light of Hesser, the jury's verdict on that issue was plainly affected by its conclusion, expressed in the special verdict form, that Hesser was not relevant prior art. The district court's JMOL order was predicated on the court's ruling that the jury was wrong in finding that Hesser was not pertinent prior art. We agree with the district court on that issue. Hesser is clearly pertinent to the art of tracking workpieces during multiple fabrication steps in a factory, the art to which the '421 patent is directed. In fact, when Asyst's technical expert was asked whether the relevant prior art "would include the Hesser patent," he responded, "Yes." In light of that admission and the clear relevance of Hesser to the pertinent art, we hold that the jury was wrong in concluding that Hesser is not relevant prior art and that the jury's verdict is fundamentally undermined by that erroneous conclusion.

Asyst does not vigorously dispute the district court's conclusion as to the status of Hesser as relevant prior art. Rather, Asyst devotes most of its energy on appeal to arguing that even assuming Hesser is pertinent art, the district court erred in granting JMOL on obviousness because there was substantial evidence that Hesser lacks both a "sensing means for sensing the presence of at least one transportable container" and a "selection means for selecting between respective sensor means of said plurality," both of which are limitations of claim 2 and its dependent claims. Asyst also argues that Jenoptik failed to show any motivation to combine Hesser with any of the other prior art references and that the jury's findings with respect to the objective indicia of nonobviousness were sufficient to support a judgment in Asyst's favor on that issue.

A

We have dealt with the means for sensing in both of the prior appeals in this case. In our prior opinions, we concluded that the communication means through which the system transferred data between the transportable container and the processing station was the structure that corresponded to the sensing means. Asyst II, 402 F.3d at 1196-97. The trial court correctly noted that the Hesser patent disclosed the same structure:

It is undisputed that Hesser discloses that the information carrier on the transportable container and the read-write transducer station can communicate optically by use of an LED and a photosensitive diode or transistor. There also is no dispute that when the read-write transducer station receives a communication from the information carrier on the transportable container, it necessarily senses the presence of the transportable container.

Asyst's expert, Dr. Faillace, effectively admitted that Hesser disclosed the sensing means. When asked if the infrared LEDs in Hesser were capable of performing the sensing function, Dr. Faillace replied, "Hesser discloses, almost by incidental means, a section that could be interpreted as sensing the presence of the information carrier. He certainly discloses transmitting information by optical means." In light of that admission and in view of the similarity between the communication structure disclosed by Hesser and the communication structure disclosed in the '421 patent, we agree with the trial court that "any implicit finding by the jury that Hesser does not meet the `sensing means' limitation of the '421 claims is necessarily incorrect."

Hesser describes a system using an "information carrier" tag on the workpiece containers in which digital information could be stored, read, and updated. The tag described in one embodiment of Hesser is an electronic memory unit that contains both memory and two-way communication means for non-contact communication with the processing stations. In that embodiment, the tag communicates with the processing station through light-emitting diodes and phototransistors. In another embodiment, Hesser discloses a tag that includes a microprocessor that communicates with the processing station through an induction coil. The processing stations in Hesser communicate with a central control unit computer by way of a bus, which routes communications to every device to which it is connected. Hesser discloses that its system can be used in an assembly line or in a flexible production system in which the workpieces do not follow a single, predetermined course of fabrication steps.

The '421 patent discloses essentially the same structure, including the use of a microprocessor on the transportable pod, which contains updatable information about the status of the wafer within the pod, a means for communicating information between the processing station and the pod, such as an optical communication system (a light-emitting diode and phototransistor) or an induction coil, and a means for communication between the central control unit and the processing stations. Thus, the only material difference between Hesser and the invention recited in claim 2 of the '421 patent is that Hesser discloses that the communications between the processing stations and the central control unit are carried over a bus, while the '421 patent discloses that those communications are conducted by way of a multiplexer that selectively directs communications to the particular processing unit to which a particular communication is addressed.

B

Asyst argues that because Hesser discloses the use of an information bus instead of a multiplexer for communications between the control unit and the transportable containers, it does not have any structure that performs "s...