Cfmt, Inc. v. Steag Microtech, Inc., CIV.A. 95-442-RRM.

• Decision Date: 18 June 1998
• Docket Number: No. CIV.A. 95-442-RRM.,CIV.A. 95-442-RRM.
• Citation: 14 F.Supp.2d 572
• Court: U.S. District Court — District of Delaware
• Parties: CFMT, INC. and CFM Technologies, Inc., Plaintiffs, v. STEAG MICROTECH INC., Defendant.

14 F.Supp.2d 572

CFMT, INC. and CFM Technologies, Inc., Plaintiffs, v. STEAG MICROTECH INC., Defendant.

No. CIV.A. 95-442-RRM.

United States District Court, D. Delaware.

June 18, 1998.

COPYRIGHT MATERIAL OMITTED

Edward B. Maxwell, Josy W. Ingersoll, John W. Shaw, Young, Conaway, Stargatt & Taylor, Wilmington, Thomas B. Kenworthy, Morgan, Lewis & Bockius, Philadelphia, PA, Edmund R. Pitcher, Douglas J. Kline, David C. Berry, Stephen D. Whetstone, Testa, Hurwitz & Thibeault, Boston, MA, for Plaintiffs.

Rudolf E. Hutz, Arthur G. Connolly, Jr., Patricia S. Rogowski, Connolly, Bove, Lodge & Hutz, Wilmington, G. Thomas Delahunty, Brooks Haidt Haffner & Delahunty, New York City for Defendant.

OPINION

MCKELVIE, District Judge.

This is a patent case. Plaintiff CFMT, Inc. is the owner and assignee of U.S. Patent No. 4,911,761 ("the '761 patent"). The '761 patent discloses a process and apparatus for drying surfaces, such as the surfaces of semiconductor wafers. Plaintiff CFM Technologies, Inc. is the exclusive licensee of the '761 patent. CFM Technologies, Inc. is the parent and sole shareholder of CFMT, Inc. Defendant Steag Microtech, Inc. ("Steag") sells a "Marangoni Dryer" within the United States that is used to dry semiconductor wafers.

On July 10, 1995, plaintiffs (collectively "CFMT") filed a complaint alleging that defendant Steag has infringed one or more claims of the '761 patent, either literally or under the doctrine of equivalents. On July 31, 1995, Steag filed an answer denying infringement and asserting several affirmative defenses. These defenses include that the claims of the '761 patent are invalid for anticipation and obviousness, that the claims are invalid because the claimed invention was on sale or in public use more than one year prior to the date of application, and that the patent is unenforceable due to CFMT's inequitable conduct during the patent prosecution.

On November 24, 1997, the court held a hearing in accordance with Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), to construe disputed claims of the '761 patent. On December 2 through 11, 1997, the court held a jury trial on the issues of infringement, validity, and unenforceability. On December 12, 1997, the jury returned its verdict. The jury found that operation of Steag's Marangoni dryer literally infringes claims 1, 8, 17, and 22 ("the asserted claims") of the '761 patent, that Steag has actively induced users of the Marangoni Dryer to infringe on the asserted claims, and that Steag has contributorily infringed those claims. The jury also found that Steag failed to establish that the asserted claims are invalid. Finally, the jury found that Steag failed to show that the '761 patent is unenforceable due to inequitable conduct. The jury awarded CFMT damages of $3,105,000.00.

During trial, Steag moved for judgment as a matter of law ("JMOL") on the issues of infringement, validity, and unenforceability. On December 26, 1997, Steag renewed its motion for JMOL. Alternatively, Steag moved for a new trial. On December 29, 1997, CFMT moved for treble damages and a finding that the case is "exceptional" under 35 U.S.C. § 285. This is the court's decision on those motions.

I. FACTUAL AND PROCEDURAL BACKGROUND

The court draws the following facts from the pre-trial order and the testimony and evidence presented at trial.

A. Computer Chip Manufacturing

Modern computers, and many everyday appliances, use "computer chips." Computer chips contain miniature electronic circuits. A computer chip consists of a sliver of silicon ("a semiconductor wafer"), a surrounding case that protects the silicon, and wires that extend from the silicon and enable the computer chip to interact with the equipment in which it is used.

Computer chip manufacture takes place in a process with three major steps. In the first step, a wafer of pure silicon is produced. Next, this wafer goes to a "wafer fabrication" plant. Finally, the manufacturer mounts the wafer in a case and attaches wires to it.

The patent in suit relates to the second step — wafer fabrication. In wafer fabrication, the manufacturer imprints circuitry onto the silicon wafer. The manufacturer imprints these circuits by shooting light images onto the wafer, much like a photograph is shot onto film. Between each photographic shot, the manufacturer performs various processing steps. These processing steps often include applying chemicals to the wafer ("wet processing") for etching, cleaning, or developing. The processing also adds different layers and coatings to the wafer between each photographic shot. Wafer fabrication usually takes two to three months to complete, and results in a semiconductor wafer.

During wafer fabrication, the wafers can often be exposed to contaminants and airborne particles. This contamination can be detrimental to the microscopic circuits which the wafer fabrication process creates. As the process adds layers and coatings to the wafer, contaminants can become trapped in the semiconductor. Thus, between each chemical processing step, the wafers must be washed and dried in a way that reduces the chances that any impurities or chemical residue are left on the wafer surfaces.

During this rinsing and drying process, a premium is placed on not only producing a clean and dry wafer, but doing so in a way that reduces the chances of streaking or water marks. Water streaks and water marks can interfere with the semiconductor's circuits in the same way that contaminants do. Rapid drying methods are preferred, since allowing water to simply evaporate into the air from the wafer surfaces can leave these streaks and marks.

Conventionally, semiconductor wafers were dried by the use of a spin-rinser-dryer, which uses centrifugal force to throw water off of the wafers. This process, however, subjects the wafers to mechanical stress, and may allow contamination or the buildup of static electric charges on the wafer surfaces. Electric charges attract contaminants when the wafers are exposed to the air.

B. CFMT

In 1984, Christopher McConnell and Roger Carolin started a company called CFM Technologies. McConnell and Carolin knew each other from Harvard University, where they attended business school together. McConnell had a degree in chemical engineering, and Carolin had a degree in electrical engineering. They decided to form a company to develop and market an apparatus for chemical processing of semiconductor wafers.

The two co-founders began developing a "process flow vessel" for this chemical processing. They used the basement in McConnell's father-in-law's house in Pennsylvania as their office. In the summer of 1984, after Carolin decided to move to Florida, McConnell hired Alan Walter. Walter is a chemical engineer whom McConnell met while working before he enrolled in business school. Walter and McConnell continued to develop chemical processing equipment. They eventually developed a process that they termed the "Full Flow" process.

C. The '532 Patent

On August 13, 1985, Walter and McConnell applied for a patent on the Full Flow process. The PTO issued U.S. Patent No. 4,778,532 ("the '532 patent") to McConnell and Walter on October 18, 1988. CFM Technologies is listed as the assignee of the '532 patent.

The '532 patent is entitled "Process and Apparatus for Treating Wafers With Process Fluids." The '532 patent discloses the Full Flow method for cleaning and wet processing semiconductor wafers. It describes an apparatus that pumps fluids into the enclosed vessel where the wafers remain stationary. It explains that the system allows fluids (gases or liquids) to flow past the wafers "sequentially and continuously." The apparatus then drains the fluids out the bottom as new fluid comes in the top for rinsing or drying. The specification lists as advantages of this system the reduced contamination risk (since the wafers do not move from one place to another), the increased control over the flow of chemicals and the amount of time that the wafers are exposed to those chemicals, and the safety to users (since the system is enclosed).

The '532 patent specification describes a drying method that it calls "chemical drying." In chemical drying, a "drying fluid" drives the rinsing fluid off of the wafers, and then a "predried gas, preferably an inert gas such as nitrogen" evaporates the drying fluid. The specification lists isopropanol (IPA), which is similar to rubbing alcohol, as the preferred drying fluid.

At trial, McConnell described the way that he and Walter developed the IPA drying process that they claimed in the '532 patent. He explained that he had worked in labs where chemists dried test tubes and beakers by dousing them with alcohol, shaking them off, and then putting them in racks. He claimed that this had always produced very clean, dry beakers and test tubes. He testified that alcohol facilitates drying because it reduces the surface tension of water, thus causing water droplets to run off of surfaces instead of clinging to them. He explained that he and Walter designed the system so that IPA vapor came into the chamber as the water drained out. The IPA would condense on the wafer surfaces and cause the water to run off. They would then purge the chamber with nitrogen. He testified that "the whole thing [was] dry and actually very clean." It looked "really good" and produced "terrific wafers."

D. The Full Flow System

CFMT began its marketing efforts for the Full Flow system in 1986. CFMT often referred to the system's drying method as one of its strengths. For instance, CFMT put together a brochure ("the 1986 brochure") entitled "Full Flow Semiconductor Wet Processing." Under the section headed "Wafer Drying," the brochure claimed that CFMT "has developed an extremely clean and simple drying technique based on isopropyl alcohol." It described the drying process as follows:

After the wafers have completed their...