Semitool, Inc. v. Dynamic Micro Systems

• Decision Date: 06 April 2006
• Docket Number: No. 05-1299.,05-1299.
• Citation: 444 F.3d 1337
• Parties: SEMITOOL, INC., Plaintiff-Appellant, v. DYNAMIC MICRO SYSTEMS SEMICONDUCTOR EQUIPMENT GMBH, Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

444 F.3d 1337

SEMITOOL, INC., Plaintiff-Appellant, v. DYNAMIC MICRO SYSTEMS SEMICONDUCTOR EQUIPMENT GMBH, Defendant-Appellee.

No. 05-1299.

United States Court of Appeals, Federal Circuit.

April 6, 2006.

COPYRIGHT MATERIAL OMITTED

Jerry A. Riedinger, Perkins Coie LLP, of Seattle, Washington, argued for plaintiff-appellant. With him on the brief was Michael D. Broaddus.

George T. Schooff, Harness, Dickey & Pierce, P.L.C., of Troy, Michigan, argued for defendant-appellee. Of counsel was Michael P. Doerr.

Before LINN, DYK, and PROST, Circuit Judges.

PROST, Circuit Judge.

Semitool, Inc. and Dynamic Micro Systems Semiconductor Equipment GmbH ("DMS") both manufacture and sell competing semiconductor wafer carrier cleaning systems. In 2001, Semitool sued DMS alleging that DMS's Model 300 and 310 cleaning devices infringed Semitool's patents. The parties entered into a settlement agreement that provided for a stipulated injunction with regard to DMS's Model 300 and 310 and to any colorable variants. Both the agreement and the injunction explicitly retained the district court's jurisdiction over the future enforcement of the agreement and the injunction. Subsequently, DMS produced a new device called the Tornado, which Semitool claims violates their settlement agreement and the injunction by literally infringing the patent claims. The district court denied the motion to enforce the permanent injunction and the settlement agreement and instead granted DMS's cross-motion for summary judgment of non-infringement. As the district court properly granted the cross-motion for summary judgment of non-infringement, we affirm.

I.

On October 8, 1996, Semitool, Inc. was issued United States Patent No. 5,562,113 ("the '113 patent"). The '113 patent is entitled, "Centrifugal Wafer Carrier Cleaning Apparatus" and as the title suggests, the '113 patent describes a "cleaning apparatus for rinsing and drying carriers used to hold and process semiconductor wafers, substrates, flat panel displays and similar articles." '113 patent, col. 1, ll. 10-13. Semitool also filed continuation patent applications based on the '113 patent application. From these continuation applications, Semitool received two more patents: United States Patent No. 5,738,128 ("the '128 patent") which, like the '113 patent, claimed a centrifugal wafer carrier apparatus and United States Patent No. 5,972,127 ("the '127 patent"), which claimed a method of cleaning and drying wafer carriers.

As described in the '127 patent,

the processing of semiconductor wafers and substrates is very sensitive to problems of contamination.... [I]t is necessary to maintain a high level of cleanliness during all or nearly all stages of production.

Semiconductor wafers, substrates, photomasks, flat panel displays and other similar low-contamination wafer products are also typically processed in batches.... Batch processing of this type almost always utilizes some type of carrier or carriers to hold the thin wafer-like materials being processed.

'127 patent, col. 1, ll. 25-42. As a result, specialized cleaning machines are needed to maintain the cleanliness of the carriers. These machines both wash and dry the carriers. Centrifugal drying machines as described in the '113, '128 and '127 patents are one type of these specialized cleaning machines. They operate by spinning the carriers at high speeds whereby cleaning solvents are readily spun off the carriers and, furthermore, the induced airflow dries the carriers by removing any residual solvent.

DMS manufactured and sold carrier-cleaning machines. In prior litigation, Semitool sued DMS for patent infringement alleging that two DMS products, the Model 300 and the Model 310 wafer carrier cleaners, infringed the claims of the '113, '128, and '127 patents. During that proceeding, the district court construed the claims of the patents in a claim construction order. The district court granted Semitool's motion for summary judgment of infringement as to the Model 300 but denied the motion as to the Model 310. See Semitool, Inc. v. Dynamic Micro Sys. Semiconductor Equip. GmBH, No. C 01-01391, 2002 U.S. Dist. LEXIS 23050 (N.D.Cal. Sept. 5, 2002). Thereafter, the parties entered a settlement agreement.

In the settlement agreement, DMS agreed not to make, use, offer to sell, or import any infringing device. As part of the agreement, the parties stipulated to enter into a permanent injunction barring DMS from infringing any claims of Semitool's patents. Both the agreement and the injunction explicitly retained the district court's jurisdiction to enforce the agreement or the injunction. The agreement further specified that DMS's Model 300 and Model 310, as configured, admittedly infringed the patents and so would any device that is no more than a colorable variant of the Model 300 and Model 310. The settlement agreement also stated how to construe Semitool's patent claims in the event of any future infringement determinations:

The Court's construction of phrases and terms used in the claims of the Semitool Patents, as specified in the Court's Final Claim Construction Order dated June 17, 2002, shall be used in determining whether DMS is infringing any claims of the Semitool Patents in violation of this Agreement or the Stipulated Permanent Injunction.

See Semitool, Inc. v. Dynamic Micro Sys. Semiconductor Equip. GmBH, No. C01-01391, 2005 WL 350954, *3 (N.D.Cal. Feb. 14, 2005) ("Semitool Order").

DMS has developed a new carrier cleaning system called the Tornado. On July 16, 2004, DMS filed an action seeking a declaratory judgment that its Tornado system did not infringe any of Semitool's patent claims. On September 21, 2004, the parties stipulated to dismiss the declaratory judgment complaint and instead the district court reopened the original patent infringement litigation. Semitool sought to enforce the injunction and to enforce the settlement agreement arguing that the Tornado system literally infringed its patents. DMS argued that the Tornado is colorably different from its previous models and does not infringe the patent claims, and therefore it does not violate the settlement agreement or the terms of the injunction.

The district court considered the differences between the Tornado system, the patent claims, and the previous infringing models sold by DMS and concluded that the Tornado was colorably different from the infringing models and did not infringe Semitool's patents. It granted DMS's cross-motion for summary judgment of non-infringement and therefore denied Semitool's motion to enforce the permanent injunction and settlement agreement. Id. 2005 WL 350954, *___, slip op. at 9.

On March 15, 2005, Semitool appealed the district court's decision to this court. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

II.

"Summary judgment is appropriate when there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law." Baxter Int'l, Inc. v. COBE Labs., Inc., 88 F.3d 1054, 1057 (Fed.Cir.1996) (citing Fed. R.Civ.P. 56(c); Johnston v. IVAC Corp., 885 F.2d 1574, 1576-77 (Fed.Cir.1989)). In their settlement agreement, the parties agreed that the terms of the agreement "shall be governed in all respects by the law of the State of California." Under California law, "the interpretation of a contract is a question of law subject to de novo review" on appeal. Int'l Rectifier Corp. v. SGS-Thompson Microelectronics, 38 USPQ2d 1083, 1101 (C.D.Cal.1994). Furthermore, contract interpretation is governed by the objective intent of the parties as embodied in the words of the contract. Beck v. Am. Health Group Int'l, Inc., 211 Cal.App.3d 1555, 1562, 260 Cal. Rptr. 237 (1989). As stated above, the parties agreed that "the Court's Final Claim Construction Order dated June 17, 2002, shall be used in determining whether DMS is infringing any claims of the Semitool Patents." Thus, in determining infringement, the district court and this court on appeal focus on the district court's Final Claim Construction Order.

A.

In the present case, Semitool alleges that the Tornado system infringes claims 1, 4, 9, 17, 19, 39, 55, 56, and 57 of the '113 patent as well as claims 28-33 of the '127 patent. Of these asserted claims, claims 1 and 39 of the '113 patent and claim 28 of the '127 patent are independent claims. For purposes of the current dispute, there are two important claim limitations in each of these patent claims. Independent claim 1 of the '113 patent reads:

1. A centrifugal cleaner for cleaning carriers used in semiconductor processing, comprising:

. . .

a processing vessel defining a process chamber therewithin;

... [and]

at least one drying gas supply for supplying drying gas to the process chamber . . . .

Independent claim 39 of the '113 patent reads:

39. A centrifugal cleaner for cleaning carriers used in semiconductor processing, comprising:

. . .

a processing vessel defining a process chamber therewithin;

. . . [and]

at least one primary drying gas supply for supplying primary drying gas to the process chamber ....

And independent claim 28 from the '127 patent reads:

28. A process for cleaning carriers used to hold semiconductor articles, comprising:

. . .

a processing chamber within the processing vessel;

... [and]

supplying drying gas to the processing chamber.

Claim 28 of the '127 patent requires "a processing chamber within the processing vessel" and furthermore "supplying drying gas to the processing chamber." Almost identical limitations are found in the rest of the asserted claims. The current dispute centers on defining the processing vessel, the processing chamber, and supplying drying gas to the processing chamber.

The district court construed this last claim limitation in its Final Claim Construction Order and held that "drying gas" meant

[a]n air or other gas with a low-contamination level that is capable of readily absorbing evaporated cleaning...