Electro Scientific Industries v. General Scanning Inc

• Decision Date: 18 April 2001
• Citation: 58 USPQ2d 1498,247 F.3d 1341
• Parties: (Fed. Cir. 2001) ELECTRO SCIENTIFIC INDUSTRIES, INC., Plaintiff-Cross Appellant, v. GENERAL SCANNING INC., Defendant-Appellant. ELECTRO SCIENTIFIC INDUSTRIES, INC., Plaintiff-Cross Appellant, v. GENERAL SCANNING INC., Defendant-Appellant. 99-1523, -1535, 00-1141, -1142 DECIDED:
• Court: U.S. Court of Appeals — Federal Circuit

Page 1341

247 F.3d 1341 (Fed. Cir. 2001)

ELECTRO SCIENTIFIC INDUSTRIES, INC., Plaintiff-Cross Appellant, v. GENERAL SCANNING INC., Defendant-Appellant.

ELECTRO SCIENTIFIC INDUSTRIES, INC., Plaintiff-Cross Appellant, v. GENERAL SCANNING INC., Defendant-Appellant.

99-1523, -1535, 00-1141, -1142

United States Court of Appeals for the Federal Circuit

DECIDED: April 18, 2001

Rehearing and Rehearing En Banc Denied: May 24, 2001.

Appealed from: United States District Court for the Northernan, argued for District of California.

[Copyrighted Material Omitted]

[Copyrighted Material Omitted]

Marla J. Miller, Morrison & Foerster LLP, of San Francisco, California, argued for plaintiffs-cross appellants in 99-1523 and 00-1141. With her on the brief were Harold J. McElhinny, and Jill D. Neiman.

Ernie L. Brooks, Brooks & Kushman P.C., of Southfield, Michigan, argued for defendants-appellants in 99-1523 and 00-1141. With him on the brief were Jeffrey M. Szuma, and Frank A. Angileri.

Judge Saundra Brown Armstrong

Before MICHEL, RADER, and SCHALL, Circuit Judges.

RADER, Circuit Judge.

On summary judgment, the United States District Court for the Northern District of California held that General Scanning Inc. ("General Scanning") literally infringed Electro Scientific Industries, Inc.'s ("ESI's") U.S. Patent Nos. 5,265,114 ("'114 patent") and 5,473,624 ("'624 patent"). At trial, the jury awarded ESI $13,133,370 in damages for infringement of the '114 patent, but held the '624 patent invalid. Because the record supports this judgment, this court affirms.

On post-trial motions, the district court denied ESI's motion for enhanced damages and attorney fees and awarded ESI a reduced prejudgment interest rate. Further, the district court denied General Scanning its costs and awarded ESI costs at a reduced amount from the calculations of the district court clerk. Because the district court did not abuse its discretion, this court again affirms.

I.

Integrated circuits (e.g., memory devices such as EPROMs, DRAMs, SRAMs) are made of memory cells and transistors that are located on a single semiconductor chip. The wafer base is usually silicon onto which various polycides and metals are deposited in layers. The layers are then etched and doped in specific places to create connections (i.e., "links") between various components of the memory device, thereby permitting inter-cell communication.

Generally, due to the capacity of the manufacturing process, semiconductor wafers have several defective memory cells. After manufacture, wafers are tested to determine which memory cells are defective. To salvage the overall memory device, links to defective cells are severed, or "blown." Typically, circuit manufacturers vaporize these inter-cell links with a laser.

Originally, links were made of polysilicon, a relatively poor electrical conductor. A laser wavelength of either 1.047 microns or 1.064 microns easily severed polysilicon links without damaging the underlying silicon substrate. As technology progressed, circuit manufacturers developed more complex, higher density memory devices with additional layers and smaller link structures. At smaller dimensions, the polysilicon links' electrical resistance increases. The smaller link structures, therefore, restricted the operating speed of memory devices.

To increase operating speed, circuit manufacturers began making links out of highly conductive metals such as aluminum, titanium, nickel, tungsten, gold, and some metal nitrides. These metallic links, however, do not easily vaporize at conventional laser wavelengths. Rather, they reflect most of the laser output at wavelengths of 1.047 microns or 1.064 microns. To solve this problem, circuit manufacturers increased the intensity of the lasers at the same wavelength and extended the time of laser exposure. These solutions improved metal link blowing, but also damaged the underlying silicon wafer and surrounding circuit structures.

In the early 1990s, Dr. Yunlong Sun of ESI adjusted the laser wavelength to optimize the contrast in laser energy absorption between the target metal link and the underlying silicon substrate. This adjustment successfully vaporized links without substantial damage to the silicon substrate. Dr. Sun specifically found that metals such as aluminum readily absorb laser wavelengths between 1.2 and 3.0 microns. At those wavelengths, however, silicon does not absorb much energy. Dr. Sun claimed this new system and method in a patent application that issued on November 23, 1993, as the '114 patent.

Dr. Sun later found that the '114 invention also facilitated better severing of nonmetal link structures. Specifically, Dr. Sun found that polysilicon also readily absorbs laser wavelengths between 1.2 and 3.0 microns. Dr. Sun claimed this information in a patent application that issued on December 5, 1995, as the '624 patent. The '624 patent was a continuation-in-part of an international application that was a continuation-in-part of the application that issued as the '114 patent. ESI commercially exploited these inventions in its Model 9300 memory repair system.

General Scanning competes with ESI in selling laser systems to the semiconductor industry. In the late 1980s and early 1990s, General Scanning's customers requested laser systems that could effectively sever metal links without damaging the silicon substrate. In response, General Scanning made and sold six complete 1.3 micron wavelength link cutting systems. General Scanning also made and sold seventeen laser upgrade kits to convert 1.0 micron wavelength systems to the 1.3 micron wavelength.

General Scanning's conversion kits consist of a 1.3 micron output laser and associated optics. General Scanning manufactured two types of conversion kits: the first converts a General Scanning M320 or M325 conventional wavelength system into a 1.3 micron system; the second converts a General Scanning M325 conventional wavelength system into a 1.3 micron system and further improves laser beam accuracy. General Scanning's engineers have installed several conversion kits worldwide.

In 1998, ESI filed an infringement suit against General Scanning. ESI asserted both system and method claims of its '114 patent. Claim 13 recites:

13. [11,10] A laser system for selectively processing a target structure, comprising metal, of a multilayer, multimaterial device including a substrate, comprising silicon, the target structure and substrate having wavelength sensitive properties, comprising:

a pumping source; and

a lasant positioned in a resonator cavity adapted to be pumped by the pumping source to provide a laser output having critical dimensions, power, and wavelength of about 1.2 (m to 3.0 (m selected to exploit differences in the wavelength sensitive properties of the target structure and the substrate such that the target structure within the critical dimensions is effectively processed and the substrate within the critical dimensions is relatively undamaged by the laser output.

Claim 4 recites:

4. [2,1] A method for selectively processing a multilayer, multimaterial device that includes a substrate, comprising silicon, and a high conductivity target structure, comprising metal, having respective first and second wavelength sensitive light absorption characteristics, the first and second absorption characteristics having different light absorption properties that provide different light absorption contrasts for different wavelengths of light, comprising:

generating at a predetermined wavelength of about 1.2 (m to 3.0 (m a laser output having predetermined spatial dimensions; and

directing the laser output to illuminate the target structure, the predetermined wavelength having a value that represents a sufficiently large absorption contrast between the target structure and the substrate to change a physical property of the target structure but leave substantially unchanged the physical property of the substrate within the spatial dimension of the laser output.

ESI also asserted system and method claims of the '624 patent. Claim 11 recites:

11. [9] A laser system for selectively processing a nonmetal target structure of a multilayer, multimaterial device including a substrate, the nonmetal target structure and substrate having wavelength-sensitive properties, comprising:

a pumping source; and

a lasant positioned in a resonator cavity adapted to be pumped by the pumping source to provide a laser output having a spatial spot size, power, and wavelength of about 1.2 (m to 3.0 (m selected to exploit differences in the wavelength-sensitive properties of the nonmetal target structure and the substrate such that the nonmetal target structure within the spatial spot size is effectively processed and the substrate within the spatial spot size is relatively undamaged by the laser output.

Claim 4 recites:

4. [1] A method for selectively processing a multilayer, multimaterial device that includes a substrate and a nonmetal target structure, having respective first and second wavelength-sensitive light absorption characteristics, the first and second absorption characteristics having different light absorption properties that provide different light absorption contrasts for different wavelengths of light, comprising:

generating at a predetermined wavelength a laser output having a predetermined spatial spot size; and

directing the laser output to illuminate the nonmetal target structure, the predetermined wavelength of about 1.2 (m to 3.0 (m providing a sufficiently large absorption contrast between the nonmetal target structure and the substrate to change a physical property of the nonmetal target structure but leave substantially unchanged the physical property of the substrate within the spatial spot size of the laser output.

After two hearings, the district court construed the patent claims in September 1998. In the same order, the court granted ESI's summary...