Cfmt, Inc. v. Yieldup Intern. Corp.

• Court: U.S. District Court — District of Delaware
• Writing for the Court: McKelvie
• Citation: Cfmt, Inc. v. Yieldup Intern. Corp., 144 F.Supp.2d 305 (D. Del. 2001)
• Decision Date: 06 June 2001
• Docket Number: No. CIV A 98-790 RRM.,CIV A 98-790 RRM.
• Parties: CFMT, INC. and CFM Technologies, Inc., Plaintiffs, v. YIELDUP INTERNATIONAL CORP., Defendant.

144 F.Supp.2d 305

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

No. CIV A 98-790 RRM.

United States District Court, D. Delaware.

June 6, 2001.

Josy W. Ingersoll, and John W. Shaw, Young, Conaway, Stargatt & Taylor, LLP, Wilmington, Delaware; David C. Berry, Douglas J. Kline and Stephen D. Whetstone, Testa, Hurwitz & Thibeault, LLP, Boston, Massachusetts; counsel for plaintiffs.

Mary B. Graham, Morris, Nichols, Arsht & Tunnell, Wilmington, Delaware; Susan K. Knoll, L. Gene Spears and James C Pistorino, Howrey Simon Arnold & White, LLP, Houston, Texas; counsel for defendant.

OPINION

McKELVIE, District Judge.

This is a patent case. Plaintiff CFMT, Inc. is a Delaware corporation with its principal place of business in Wilmington, Delaware. Plaintiff CFM Technologies, Inc. ("CFM") is a Pennsylvania corporation with its principal place of business in West Chester, Pennsylvania. CFMT, Inc. is the owner of U.S. Patent Nos. 4,778,532 (the '532 patent) and 4,917,123 (the '123 patent). CFM is the exclusive licensee under the patents. Prior to October 1999, defendant YieldUP International Corp. was a Delaware corporation with its principal place of business in Mountain View, California. In October 1999, YieldUP was acquired by FSI International, Inc., a Minnesota corporation with its principal place of business in Chaska, Minnesota. YieldUP currently operates as a subsidiary of FSI named SCD Mountain View, Inc.

On December 30, 1998, CFMT, Inc. and CFM (collectively, "CFMT") filed a complaint alleging that YieldUP infringed one or more claims of the '532 and '123 patents. YieldUP filed its answer and counterclaim on January 25, 1999, in which it denied CFMT's allegation of infringement, asserted affirmative defenses of invalidity and unenforceability and sought a declaratory judgment of invalidity and non-infringement.

On December 22, 1999, YieldUP moved for summary judgment that the '532 and '123 patents are invalid because the patents' specifications are non-enabling. On January 7, 2000, YieldUP filed its Second Amended Answer and Counterclaims alleging that CFMT had engaged in inequitable conduct during the prosecution of Application Serial No. 765,294 (the "'294 application"), which eventually led to the issuance of the '532 and '123 patents. YieldUP specifically contends that the CFMT inventors failed to disclose and misrepresented material information concerning test results to the PTO. On January 31, 2000, CFMT moved for summary judgment that the patents are enabling.

On April 4, 2000, the court granted summary judgment that the '123 and '532 patents are invalid for failure to comply with the enablement requirement of 35 U.S.C. § 112.¹ On April 20, 2000, CFMT moved to dismiss YieldUP's allegations of inequitable conduct for lack of subject matter jurisdiction. On May 4, 2000, the court denied the motion. On July 28, 2000, the court held a one day trial to determine whether CFMT engaged in inequitable conduct. At the trial, CFMT moved for judgment on partial findings that it had not engaged in inequitable conduct. This is the court's post-trial decision.

I. PROCEDURAL AND FACTUAL BACKGROUND

The court draws the following facts from evidence presented at the July 28, 2000 trial, the statement of undisputed facts in the joint pre-trial order and the court's prior opinion in this matter.

A. General Description of the Technology

The patents in suit relate to technology for cleaning silicon wafers during the process of manufacturing computer chips. A computer chip typically consists of a wafer of processed silicon, a surrounding case that protects the silicon, and wires that extend from the silicon and allow the chip to interact with the computer or other equipment in which it is used. The process of manufacturing computer chips requires more than 200 steps in which discs of silicon, called semiconductor wafers, are repeatedly etched and implanted with circuitry. Over forty of these steps are wet processing steps where the wafers are subjected to process fluids.

Prior to the patents in suit, the individual wet processing steps involved dipping semiconductor wafers into a series of open sinks, where each successive sink contained a different process fluid. Because the sinks were open to the atmosphere, however, unwanted airborne particles could enter the process fluids and contaminate the wafers' microscopic circuits. In subsequent processing steps, when layers or coatings were added to the wafers, the contaminants could become trapped or "burned into" the wafers, resulting in defective computer chips.

B. The '532 and '123 Patents

On October 18, 1988, the United States Patent and Trademark Office ("PTO") issued the '532 patent to CFM as assignee of the inventors, Christopher F. McConnell and Alan E. Walter. The '532 patent is entitled "Process and Apparatus for Treating Wafers with Process Fluids." On April 17, 1990, the PTO issued the '123 patent to CFM as assignee of the same inventors. The '123 patent is entitled "Apparatus for Treating Wafers with Process Fluids." The '532 and '123 patents were later assigned to CFMT, Inc., and CFM became the exclusive licensee of the patents.

The '532 and '123 patents describe the same technology. The '532 patent claims a method for practicing the invention and the '123 patent claims an apparatus. The patents describe a "Full Flow" system for wet processing semiconductor wafers wherein process fluids (gases or liquids) are pumped into an enclosed vessel where the wafers remain stationary. The "Full Flow" system allows process fluids to flow past the wafers sequentially and continuously. The apparatus then drains the fluids out the bottom as new fluids come in the top for rinsing or drying.

By consolidating the cleaning, rinsing and drying steps used in wafer fabrication into a single, enclosed vessel with a continuous flow of process fluids past wafer surfaces, the inventions purport to offer several advantages over the prior art. First, because the system is enclosed, safety concerns about various chemicals used during processing are minimized. In addition, the likelihood of contamination by airborne particles is reduced because the wafers do not move through the atmosphere from one process fluid to another.

The '532 and '123 patents were based on a prototype that McConnell and Walter began building in the summer of 1984. The two inventors designed and constructed the prototype in the basement of a house owned by McConnell's father-in-law. When McConnell and Walter finished the prototype in the spring of 1985, it covered most of the basement. The tool's design was later incorporated as Figure 1 of the '294 application that ultimately issued as the '532 patent.

C. The Prosecution of the '294 Application and the Concurrent Marketing and Testing of the Full Flow System

1. The inventors submit the '294 application

On August 13, 1985, McConnell and Walter applied for a patent for a process and apparatus for treating wafers with process fluids. The original application for the '532 patent included claims for the apparatus that were later withdrawn and resubmitted in a separate application for the '123 patent. In the summary of the invention, the inventors described an enclosed, full-flow method wherein process fluids flow sequentially and continuously past the wafers. The inventors recommended their wet processing method for cleaning semiconductor wafers. The specification states that the "processes and apparatus of the present invention are especially useful in the prediffusion cleaning of wafers ...."

2. CFMT begins to market the Full Flow system

In 1986, CFMT began marketing the Full Flow system. CFMT often referred to the system's drying method as one of its strengths. For instance, one CFMT brochure lists the lack of "particle generation," the lack of "streaking or staining," and "very fast drying" as benefits of the Full Flow system. The brochure claims that the wafers "emerge bone-dry from the drying step and have exceptionally low particle counts."

3. The examiner rejects the '294 Application

On November 25, 1986, the PTO rejected the claims in the application. The examiner stated that the claims were obvious under 35 U.S.C. § 103 based on the prior art references of Aigo and Gluck.² According to the examiner, Aigo suggests a flow process for cleaning semiconductor wafers by contacting the wafers with a cleaning fluid, removing the cleaning fluid with a rinsing fluid, and rinsing the wafers with a drying fluid. The examiner wrote that "[i]t would have been obvious to clean silicon wafers in view of the teachings of Aigo since the environment and process is similar to that of the instant invention."

4. CFMT initiates testing of the Full Flow system

Also in late 1986, CFMT reached an agreement with Texas Instruments to test a second prototype or "beta tool" as disclosed in the '294 application. The agreement required CFMT to ship the Full Flow vessel to Texas Instruments before receiving payment. McConnell and Walter took turns visiting Texas Instruments' facility in Sherman, Texas to help set up the system and take part in the testing.

The first wafers processed with the Full Flow system appeared clean to the naked eye. After looking at the wafers with a sophisticated laser scanning device, however, McConnell and Walter saw that the wafers had thousands of particle defects. The inventors were surprised by how "filthy" the wafers looked.

5. The inventors discover the problem

After they observed the "filthy" wafers under the scanning device, McConnell and Walter set out to find the source of the problem. According to McConnell, Texas Instruments initially assumed that the contamination was a facility-related issue. McConnell stated:

TI was very good about it. They really felt as though it wasn't our problem that it must be some sort of facility related issue .... But then as more days went on, they...