Cfmt Inc. v. Yieldup Intern. Corp., 01-1452.

• Decision Date: 12 November 2003
• Docket Number: No. 01-1452.,01-1452.
• Citation: 349 F.3d 1333
• Parties: CFMT, INC. and CFM Technologies, Inc., Plaintiffs-Appellants, v. YIELDUP INTERNATIONAL CORP., Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

349 F.3d 1333

CFMT, INC. and CFM Technologies, Inc., Plaintiffs-Appellants, v. YIELDUP INTERNATIONAL CORP., Defendant-Appellee.

No. 01-1452.

United States Court of Appeals, Federal Circuit.

November 12, 2003.

Rehearing Denied December 9, 2003.

Henrik D. Parker, Woodcock Washburn LLP, of Philadelphia, PA, argued for plaintiffs-appellants. With him on the brief were Barbara L. Mullin, Richard B. LeBlanc, and David N. Farsiou. Of counsel on the brief was Fred T. Magaziner, Dechert LLP, of Philadelphia, PA.

L. Gene Spears, Baker Botts L.L.P., of Houston, TX, argued for defendant-appellee. With him on the brief was David G. Wille, Baker Botts, L.L.P., of Dallas, TX.

Before RADER, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and LINN, Circuit Judge.

RADER, Circuit Judge.

On summary judgment, the United States District Court for the District of Delaware determined that CFMT, Inc.'s U.S. Patent No. 4,778,532 (the '532 patent) and U.S. Patent No. 4,917,123 (the '123 patent) are invalid, CFMT, Inc. v. Yieldup Int'l Corp., 92 F.Supp.2d 359 (D.Del.2000), and, after a bench trial, unenforceable, CFMT, Inc. v. Yieldup Int'l Corp., 144 F.Supp.2d 305 (D.Del.2001). Because the district court erred in applying both the enablement and inequitable conduct requirements, this court reverses-in-part, vacates-in-part, and remands.

I.

The '532 and '123 patents cover a system for cleaning semiconductor wafers. The process for manufacturing semiconductor wafers must keep them as free as possible from contamination to prevent defects in semiconductors. To keep the wafers clean, conventional processes sequentially immerse the wafers in various liquids in an open environment. This bathing procedure exposes the wafers to airborne contaminants and also exposes workers to hazardous chemicals.

The '532 and '123 patents claim improvements in these open cleaning systems. Specifically, the '532 and '123 patents claim a system that is closed to the outside environment and requires no human handling. Instead the wafers remain at all times in a closed container that sequentially introduces different chemicals to clean the wafers. Because the '123 patent is a divisional of the '532 patent, the two patents have identical disclosures. The parent '532 patent contains method claims only. Independent claims 1 and 55 are representative (emphases added):

1. An enclosed, full flow method for the cleaning of semiconductor wafers comprising positioning said wafers in a vessel, closing said vessel to the environment, and flowing process fluids sequentially and continuously past said wafers in said vessel, including the steps of

(a) contacting said wafers with at least one cleaning fluid to remove contaminants from said wafers;

(b) removing said cleaning fluid from said wafers with a rinsing fluid; and

(c) removing said rinsing fluid from said wafers with a drying fluid;

whereby the processing does not requirement [sic] movement or operator handling of said wafers between said steps; and

maintaining the vessel containing said wafers hydraulically full during each process step.

55. An enclosed, full flow method for the treatment of semiconductor wafers comprising positioning said wafers in a vessel, closing said vessel to the environment, and flowing process fluids in sequential steps continuously past said wafers in said vessel, including the step of reacting the surface of said wafers with at least one chemical reagent, whereby the processing does not require movement or handling of said wafers between said steps and maintaining the vessel containing said wafers hydraulically full during each process step.

The divisional '123 patent contains corresponding apparatus claims. Independent claims 1 and 20 are representative (emphases added):

1. Apparatus for wet processing of semiconductor wafers comprising:

(a) vessel means for supporting said wafers in a closed circulation process stream wherein process fluids may sequentially flow past said wafers, said vessel being hydraulically full with process fluid when said process fluids flow past said wafers;

(b) means for supplying at least one cleaning fluid to said process stream for removing contaminants from said wafers, and means for withdrawing said cleaning fluid from said process stream;

(c) means for supplying a rinsing fluid to said process stream for removing other fluids from said wafers, means for minimizing gas/liquid interfaces in said rinsing fluid and means for withdrawing said rinsing fluid from said process stream; and (d) means for supplying a drying fluid to said process stream for removing other fluids from said wafers and means for withdrawing said drying fluid from said process stream.

20. Apparatus for wet processing of semiconductor wafers comprising:

(a) vessel means for supporting said wafers in a closed circulation process stream wherein process fluids may sequentially flow past said wafers and

(b) means for supplying at least one chemical reagent to said process stream for reacting with portions of said wafers, said process stream being positioned within said vessel means such that said vessel means is hydraulically full with process fluid.

The record in this case shows that the inventors installed for Texas Instruments (TI) a machine that performed the claimed method. At first the apparatus did not meet this customer's standards for wafer cleanliness. The inventors adjusted the apparatus and experimented for months before meeting the customer's standards. In fact, the inventors obtained a third patent claiming the improvements in their initial apparatus.

CFMT and CFM Technologies, Inc.¹ (collectively CFMT) sued YieldUp International Corp. (YieldUp) for infringement of the '532 and '123 patents. In turn, YieldUp denied infringing and asserted that the patents were invalid as nonenabled and were unenforceable for inequitable conduct before the United States Patent and Trademark Office (PTO). YieldUp moved for summary judgment that the patents were invalid for lack of enablement. CFMT filed a cross-motion for summary judgment that the patents were enabled.

YieldUp based its nonenablement argument on problems CFMT faced in setting up a commercial embodiment of the invention, the "beta tool Full Flow" machine. As noted before, CFMT had installed the Full Flow machine at a TI site. In its first runs, the machine did not meet TI's cleanliness standards. After months of experiments, the inventors identified the problem in a drying step and solved it. Concurrently, a patent application that led to the '532 patent was pending before the PTO. While prosecuting the application, CFMT submitted a list of advantages of the invention to the PTO, but did not tell the PTO of the problems at TI. The examiner allowed the case and the '532 patent issued. As also noted, the inventors eventually filed a patent application on the improvement that solved the problem. That application matured into U.S. Patent No. 4,911,761 (the '761 patent).

On April 5, 2000, the district court granted YieldUp's motion for summary judgment that the '532 and '123 patents were invalid for nonenablement. The district court construed the claims of the '532 patent as limited by the preamble terms "cleaning" and "treatment," which the district court construed to mean removing contaminants from the wafer surface. CFMT, Inc., 92 F.Supp.2d at 371-72. Similarly, the district court construed the claims of the '123 patent as limited by the preamble term "wet processing," which the district court construed to mean the same as "cleaning." Id. at 374. The district court stated that the specification "must enable one skilled in the art to clean semi-conductor wafers using the Full Flow system." Id. at 377. The district court found that "the Full Flow system that was based on the '532 and '123 patents could not clean" wafers, that the "inventors experimented with the Full Flow system for more than six months," and "that the solution to the problem eventually resulted in the '761 patent demonstrates that the experimentation required ... was not routine." Id.

The district court further conducted a bench trial to determine whether CFMT committed inequitable conduct in prosecuting the application that matured into the '523 patent. On June 6, 2001, the district court entered judgment that the '532 and '123 patents are unenforceable due to inequitable conduct before the PTO. The district court relied on two events during prosecution of the application leading to the parent '532 patent. First, CMFT did not report to the PTO the initial TI test results (the TI data). The court concluded that the data was material because "a reasonable examiner would have considered data rebutting [the invention's] advantages in deciding whether to allow" the patents. CFMT, Inc., 144 F.Supp.2d at 317. Second, during prosecution, the applicants traversed an obviousness rejection and stated eleven advantages of the invention. The district court found that the undisclosed TI data contradicted these laudatory statements. Because it considered the TI data highly material, the district court inferred that CMFT intended to deceive the PTO.

The district court then entered final judgment that the claims of the '532 and '123 patents were invalid and unenforceable. CFMT appealed to this court, which has jurisdiction under 28 U.S.C. § 1295(a)(1) (2000).

II.

This court reviews without deference a district court's grant of summary judgment. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1309 (Fed.Cir.1999). A court considering summary judgment must "view the evidence presented through the prism of the substantive evidentiary burden." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 245, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The court must also draw all reasonable inferences in favor of the nonmovant. Id. at 255, 106 S.Ct. 2505.

This court also reviews claim construction without deference. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448,...