Rockwell Intern. Corp. v. U.S.

• Decision Date: 15 June 1998
• Docket Number: Nos. 97-5065,97-5068,s. 97-5065
• Citation: 147 F.3d 1358
• Parties: ROCKWELL INTERNATIONAL CORPORATION, Plaintiff-Appellant, v. The UNITED STATES, Defendant-Appellee. and SDL, Inc., Third Party Defendant/Cross-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1358

147 F.3d 1358

47 U.S.P.Q.2d 1027

ROCKWELL INTERNATIONAL CORPORATION, Plaintiff-Appellant, v. The UNITED STATES, Defendant-Appellee and SDL, Inc., Third Party Defendant/Cross-Appellant.

Nos. 97-5065, 97-5068.

United States Court of Appeals Federal Circuit.

June 15, 1998.

Richard S. Florsheim, Foley & Lardner, Milwaukee, WI, argued for plaintiff-appellant. With him on the brief were Bernhard D. Saxe and Larry L. Shatzer, II, Washington, DC.

John Fargo, Assistant Director, Commercial Litigation Branch, Civil Division, Department of Justice, Washington, DC, argued for defendant-appellee. With him on the brief were Frank W. Hunger, Assistant Attorney General, Vito J. DiPietro, Director, and Chun-I Chiang, Attorney.

Michael M. Carlson, Morrison & Foerster LLP, Palo Alto, CA, argued for third party defendant/cross-appellant. With him on the brief were Marc J. Pernick, Palo Alto, CA, and Preston Moore, San Francisco, CA.

Before NEWMAN, MICHEL and CLEVENGER, Circuit Judges.

MICHEL, Circuit Judge.

Rockwell International Corporation ("Rockwell") appeals the decision on summary judgment of the United States Court of Federal Claims in Rockwell International Corp. v. United States, 37 Fed. Cl. 478 (1997), holding all asserted claims of United States Patent No. 4,368,098 (the " '098 patent") invalid for obviousness under 35 U.S.C. § 103(a) (Supp. I 1995). Defendant-appellee, the United States and third-party defendant/cross-appellant, SDL, Inc. ¹ (collectively, "Defendants") assert that the trial court's summary judgment that the claimed inventions of the '098 patent would have been obvious should be affirmed, and SDL cross-appeals the trial court's holding that genuine issues of material fact prevented a determination on summary judgment of anticipation under 35 U.S.C. § 102, asserting that the claimed inventions of the '098 patent also should have been found invalid as anticipated.

This appeal was submitted for our decision following oral argument on March 3, 1998. We have jurisdiction over a final decision of the Court of Federal Claims pursuant to 28 U.S.C. § 1295(a)(3) (1994). Because the Court of Federal Claims erred in holding on summary judgment that the inventions of the '098 patent would have been obvious, we vacate that portion of the decision and remand the case for further proceedings. On the cross-appeal, we affirm the decision of the Court of Federal Claims that genuine issues of material fact prevented summary judgment that the claims of the '098 patent were anticipated.

BACKGROUND

Rockwell filed suit against the United States on August 30, 1993, alleging infringement of various claims of its '098 patent and identifying sixteen government contractors alleged to have participated in the infringement. ² SDL, one of those contractors, received a notice from the United States under RCFC 14(A)(1) & (C)³ but initially did not appear because SDL believed that its liability as an indemnitor was not high enough. In May 1995, however, Rockwell sued SDL for infringement of the same patent in the United States District Court for the Northern District of California. In June 1995, SDL intervened in the Court of Federal Claims action as a third-party defendant, and in September 1995, the district court action was suspended pending disposition of the validity Prior to SDL's intervention, Rockwell and the United States had obtained a scheduling order that trial would proceed in phases based on categories of accused infringing equipment as follows: (1) night vision equipment; (2) photo voltaic cells; and (3) laser diodes in semiconductor devices. Claim construction and validity were to be decided in phase 1 and applied to all three phases. This appeal and cross-appeal relate to whether the '098 patent is invalid.

issues in the action pending in the Court of Federal Claims.

The '098 patent claims a process called MOCVD ⁴ for growing Group III/V semiconductor materials. Chemical vapor deposition ("CVD") is a process for depositing a thin film of material onto a substrate by reacting the constituent elements in gaseous phase. CVD processes are used to produce thin, single crystal films called epitaxial films. Prior to the invention of the '098 patent, other CVD processes had been used to grow similar Group III/V semiconductor films.

The '098 patent identifies specific groups of reactants to be used in CVD processes. The reactant supplying the Group III element is to be an organometallic alkyl, and the Group V reactant is to be a hydride or a halide-free alkyl compound. Dr. Harold M. Manasevit first filed his patent application on the MOCVD process on February 13, 1968. After numerous continuations and continuations-in-part, the application issued as the '098 patent on January 11, 1983.

In phase 1 of the litigation, Rockwell asserted infringement of at least independent claims 1, 2, and 3. Defendants asserted that claims 1, 2, and 3 are invalid under sections 102, 103, and 112 of Title 35. SDL further asserted invalidity for failure to claim statutory subject matter under section 101. Rockwell filed a motion for summary judgment that claims 1 and 3 were not invalid, which was denied. Defendants filed motions for summary judgment of anticipation, which were denied, and of obviousness, which were granted.

The trial court held that because neither Rockwell's own motion for summary judgment that claims 1 and 3 are not invalid nor its consolidated opposition to Defendants' motions urging the invalidity of claims 1, 2, 3, 11, 35, 40, 44, 50, 55-58, 66, and 72 separately defended independent claim 2 or any of the other claims of the '098 patent, claim 2 and all of the other claims stand or fall with the decision on claims 1 and 3. See id. at 492; see also Rockwell Int'l Corp. v. United States, 37 Fed.Cl. 478, 481-82 (1997) (order denying Rockwell's motion for reconsideration). ⁵

The trial court found that during prosecution, the claims of the '098 patent were limited to a CVD process using a cold-wall reactor. Rockwell, 37 Fed. Cl. at 485. In making its obviousness determination, the trial court found that every limitation in the process claimed in independent claims 1 and 3 was recited in four prior art patents "or elsewhere in the CVD prior art." Id. at 496. The trial court therefore found that all of the asserted claims were invalid under section 103(a). Rockwell timely appealed to this court.

DISCUSSION

Summary judgment is appropriate where "there is no genuine issue as to any material fact and ... the moving party is entitled to a judgment as a matter of law." RCFC 56(c). In determining the propriety of summary judgment, credibility determinations may not be made, and the evidence must be viewed favorably to the nonmovant, with doubts resolved and reasonable inferences drawn in the nonmovant's favor. See SRI Int'l v. Matsushita Elec. Corp., 775 F.2d "[I]n rendering a decision on a motion for summary judgment, a court must 'view the evidence presented through the prism of the substantive evidentiary burden' that would inhere at trial." Monarch Knitting Mach. Corp. v. Sulzer Morat Gmbh, 139 F.3d 877, 880, 45 U.S.P.Q.2d 1977, 1981 (Fed.Cir.1998) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 254, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)). The moving party "bears the burden of demonstrating the absence of genuine issues of material fact." Conroy v. Reebok Int'l, Ltd., 14 F.3d 1570, 1575, 29 U.S.P.Q.2d 1372, 1377 (Fed.Cir.1994). We review de novo the trial court's grant of summary judgment. See Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Conroy, 14 F.3d at 1575, 29 USPQ2d at 1377. The underlying determination of invalidity, however, must be predicated on facts established by clear and convincing evidence. See National Presto Indus. v. West Bend Co., 76 F.3d 1184, 1189, 37 U.S.P.Q.2d 1685, 1687 (Fed.Cir.1996).

1107, 1116, 227 USPQ 577, 581-82 (Fed.Cir.1985) (in banc).

Obviousness is a question of law based on underlying factual determinations. See Richardson-Vicks, Inc. v. Upjohn Co., 122 F.3d 1476, 1479, 44 U.S.P.Q.2d 1181, 1183 (Fed.Cir.1997). These underlying determinations include: (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed invention and the prior art; and (4) the extent of any proffered objective indicia of nonobviousness, sometimes termed secondary considerations. See Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). In reviewing a summary judgment determination of obviousness, therefore, this court first determines anew whether the record raises any genuine issues of material fact. See Monarch, 139 F.3d at 881, 45 U.S.P.Q.2d at 1981. "If facts remain in dispute, this court weighs the materiality of the dispute, i.e., whether resolution of the dispute one way or the other makes a difference to the final determination of obviousness." Id.

I. Claim Construction

The first step in any invalidity or infringement analysis is claim construction. See Beachcombers v. WildeWood Creative Prods., Inc., 31 F.3d 1154, 1160, 31 U.S.P.Q.2d 1653, 1660 (Fed.Cir.1994). Claim construction is a question of law, reviewed de novo on appeal. See Cybor Corp. v. FAStar Ltd., 138 F.3d 1448, 1454, 46 U.S.P.Q.2d 1169, 1173 (Fed.Cir.1998) (in banc).

The trial court first determined that the preambles of independent claims 1 through 3 operated as claim limitations. ⁶ See Rockwell, 37 Fed. Cl. at 488. The trial court found:

If the preamble language is not used, there would be no claim limitations regarding the growing of epitaxial films or the type of substrate used in the process. The patent when read in its entirety reads toward the process of the growth of a particular type of film, Group III-V semiconductor, and a certain process for doing that very growth.

Id. The patent's written description repeatedly discloses that it is directed to a process for...