Opinion
Civil Action Number 3:98CV318.
February 10, 1999
MEMORANDUM OPINION
THIS MATTER is before the Court on Motions for Summary Judgment relating to U.S. Patent 4,464,223, as amended by U.S. Reexamination Certificate B1 4,464,223 (collectively, "the '223 patent") and U.S. Patent 4,585,920 ("the '920 patent"). Defendant Tokyo Electron Limited, Inc. ("TEA") has filed the following motions: (1) a Rule 56 motion that the '223 patent is anticipated and invalid; (2) a Rule 56 motion that the '223 patent is unenforceable for inequitable conduct; (3) a Rule 56 motion for '223 patent non-infringement; and a (4) a Rule 56 motion for '920 patent non-infringement. Plaintiff Tegal Corporation ("Tegal") has filed a cross-motion for summary judgment on TEA's defense of invalidity and unenforceability of the '223 patent. For the following reasons, the Court hereby DENIES each motion.
I. Is Tegal's '223 Patent Anticipated and Invalid
A. Standard of Law
Once a patent issues, it is presumed valid. 35 U.S.C. § 282. The purpose of this presumption is "to contribute stability to the grant of patent rights." Magnivision, Inc. v. Bonneau Co., 115 F.3d 956, 958 (Fed. Cir. 1997). The presumption operates by placing the burden of proving invalidity by clear and convincing evidence on the person attacking the patent. Id.
"[T]he evidence presented by the challenger must be of such quality and weight as to establish invalidity despite the presumption." Id.
A party seeking to invalidate a patent on the ground of anticipation under 35 U.S.C. § 102(b) bears an even heavier burden of showing by clear and convincing evidence that each and every element of the claimed invention is disclosed in a single "prior art reference," i.e., an earlier patent or a printed publication. Applied Med. Res. Corp. v. United States Surgical Corp., 147 F.3d 1374, 1378 (Fed. Cir. 1998); Solarex Corp. v. Arco Solar, Inc., 805 F. Supp. 252, 259 (D. Del. 1992). Mere similarity will not suffice. "There must be no difference between the claimed invention and the reference disclosure, as viewed by a person of ordinary skill in the field of invention." Scripps Clinic Research Found v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991). If any claimed element is absent from the reference, there is no anticipation. Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) (citations omitted).
"A person shall be entitled to a patent unless . . . (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States. . . ." 35 U.S.C. § 102(b).
Whether the requisite identity exists between the claimed invention and the prior reference is a question of fact. Scripps Clinic, 927 F.2d at 1576. To make such a finding on summary judgment, the court must determine "that no facts material to the question are disputed; or even if all material factual inferences are drawn in favor of the non-movant, there is no reasonable basis on which the non-movant can prevail." Id. (citations omitted).
B. Analysis
TEA posits that Tegal's asserted invention is that its etcher is a "dual frequency" etcher. In support of this position, TEA refers the Court to Paragraphs 6 and 7 of Tegal's Complaint.
The etching is done by two frequencies, a high frequency and a low frequency, rather than by just one frequency.
Tegal's patented dual frequency etching technology is a critical enabler for etching the new materials that are now being adopted in IC fabrication. This technology is incorporated in Tegal's 6500 series High-density Reflected electron ("HRe") products. The 6500 series HRe etchers have two separate sources of radio frequency power. . . .
The SIA predicted in its 1997 "National Technology Roadmap for Semiconductors" that the widespread adoption of new material in the IC manufacturing industry would require precisely this technique. . . . Finding a solution to the problem of unintended wafer damage, . . . is a major issue for next generation IC fabrication. Tegal's patented dual frequency approach solves this problem.
(Complaint at ¶¶ 6,7.) TEA also relies on Tegal's response to TEA's First Set of Interrogatories, attached as Exhibit C to TEA's Memorandum in Support of its Rule 56 Motion for '223 Patent Invalidity. Specifically, TEA points out that Tegal, in its response to interrogatory no. 2 which required it to state the basis for its charge of infringement, only discussed the features of the TEA etcher as they relate to being a dual frequency etcher with an upper and lower electrode. Such dual frequency etchers, according to TEA, were disclosed in the prior art. Thus, if TEA's etcher infringes due to its dual frequency nature, then the '223 patent is invalid as anticipated by the NTT publication and there is no infringement.
Specifically, TEA asserts that dual frequency etchers were disclosed by the NTT publication, attached as Exhibit D to TEA's Memorandum in Support of its Rule 56 Motion for '223 Patent Invalidity.
Tegal's position is that the specific claims of the '223 that are being asserted in this case, claims 1 and 7, contain a number of elements, including the use of two frequencies. The heart of the claim, according to Tegal, is the use of two frequencies in a structure involving three electrodes, with one electrode providing a controlled electric reference potential for high and low frequency power sources. To support that contention, Tegal relies on a Rule 30(b)(6) deposition where its witness, Leslie Girton Jerde, elaborated on why Tegal believes TEA is infringing the '223 patent. Besides mentioning the dual frequency feature of the TEA etcher, Mr. Jerde also identified three separate electrodes in the defendant's etchers.
Exhibit B, Rule 30(b)(6) Deposition of Tegal Corporation, May 26, 1998, at pp. 162-64, Plaintiff's Amended Memorandum in Opposition. Mr. Jerde pointed out the dual frequency feature of the invention, but also identified three separate electrodes in TEA's etchers, referring to the chamber wall as the electrode "electrically coupled to the ground."
The NTT publication, according to Tegal, discloses an etcher that uses only two electrodes, and does not teach the combination of dual frequency plasma processing and a triode structure that is found in the '223 patent. Tegal points out that the examiner in the Japanese patent proceedings recognized this distinction when he found the '223 application patentable over the NTT publication based on the disclosure of three electrodes in Tegal's invention, over the two shown in the NTT publication.
The Japanese patent office had originally rejected Tegal's application in view of the NTT publication. Tegal attempted to draw a distinction by pointing out that the NTT publication had only two electrodes. It then filed an amendment to the Japanese wording, allegedly tightening some of the phrasing for clarification purposes. Finally, Tegal questioned whether the NTT device would operate properly if an attempt were made to build it from the drawings attached to the application. In light of those arguments, the Japanese Patent Office decided to publish the application for opposition. Upon rejecting all opposition, the JPO noted that the NTT reference does not mention the three electrodes, which is the heart of the '223's triode configuration. It went on to state that although the NTT reference may have claimed the same "effect" as the '223, it failed to anticipate or appreciate the importance of the third electrode. (Pl.'s Am. Mem. at 13-17.)
Having considered the above arguments, the Court finds that TEA has not overcome the presumption of validity in this matter. It has failed to show by clear and convincing evidence that the NTT reference literally anticipates every element of the '223 patent. As stated earlier, mere similarity will not suffice. Accordingly, TEA's motion for summary judgment for '223 patent invalidity is DENIED. Tegal's cross-motion is also DENIED. There exists a genuine issue of material fact as to whether the '223 patent was in fact anticipated by the NTT publication. Therefore, summary judgment is not proper for either party and the issue is left for a jury to decide.
II. Is Tegal's '223 Patent Unenforceable for Inequitable Conduct
A. Standard of Review
Inequitable conduct consists of the failure to disclose material information, the affirmative misrepresentation of a material fact or the submission of false material information, in addition to an intent to deceive or mislead the PTO. Kolmes v. World Fibers Corp., 107 F.3d 1534, 1541 (Fed. Cir. 1997) (citations omitted). One alleging inequitable conduct must prove the threshold elements of materiality and intent by clear and convincing evidence. Id. at 1542. Specifically, a party must show that the patent applicant (1) withheld material information from, or disclosed materially false or misleading information to, the patent examiner and (2) intended thereby to deceive or mislead the examiner into granting the patent. Herbert v. Lisle Corp., 99 F.3d 1109, 1115 (Fed. Cir. 1996). The intentional failure to disclose material information constitutes inequitable conduct before the PTO, and renders a patent unenforceable. Molins PLC v. Textron, Inc., 48 F.3d 1172, 1178, n. 6 (Fed. Cir. 1995).
The Federal Circuit defines information as material "if a reasonable examiner would have considered it important to the patentability of a claim." Regents of Univ. of Cal. v. Eli Lilly Co., 119 F.3d 1559, 1570 (Fed. Cir. 1997) (citations omitted). By definition, information that is cumulative, does not help to establish a prima facie case of unpatentability or is consistent with arguments made to the PTO regarding patentability, is not material. 37 C.F.R. § 1.56 (Rule 56). In the presence of very material omissions or misrepresentations, less evidence is needed to show intent. Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573, 1580 (Fed. Cir. 1997).
Undisclosed prior art is not considered material if it less relevant than or cumulative to art that was considered by the PTO. Engel Indus., Inc. v. Lockformer Co., 946 F.2d 1528 (Fed. Cir. 1991). One has to consider both the similarities and the differences between the prior art and the patent claims at issue in order to determine whether the prior art reference is material. Halliburton Co. v. Schlumberger Technology Corp., 925 F.2d 1435, 1441 (Fed. Cir. 1991).
After finding materiality and intent, the court must then weigh that against all of the other evidence and evaluate whether the equities warrant a finding that the applicant's conduct was so culpable as to render the patent unenforceable. Children's Prods. Inc. v. Century Prods. Co., 38 U.S.P.Q.2d 1331, 1341 (E.D. Pa. 1996). Because of the exceptional harshness of a finding of inequitable conduct, the courts view that finding a patent unenforceable due to inequitable conduct should be the exception and not the rule. Ortho Diagnostic Syst., Inc. v. Miles, Inc., 865 F. Supp. 1073, 1081 (S.D.N.Y. 1994), appeal dismissed mem., 48 F.3d 1237 (Fed. Cir. 1995).
It is important to note that in many cases no direct evidence exists to establish an intent to deceive the PTO. Thus, courts often rely on circumstantial evidence to infer such intent. See Hewlett-Packard Co. v. Bausch Lomb. Inc., 882 F.2d 1556, 1562 (Fed. Cir. 1989), cert. denied, 493 U.S. 1076 (1990). However, more than negligence is needed for a finding of an intent to deceive the PTO. The accused conduct, when viewed in light of all the evidence, including evidence of good faith, must exhibit "sufficient culpability to require a finding of intent to deceive." Kingsdown Medical Consultants, Ltd. v. Hollister, Inc., 863 F.2d 867, 876 (Fed. Cir. 1988) ( en banc), cert. denied, 490 U.S. 1067 (1989).
B. Analysis
TEA asserts that Tegal breached its duty of disclosure by withholding from the U.S. Patent Examiner the NTT publication cited against Tegal during the prosecution of the '223 Japanese patent proceedings. Therefore, it is helpful to begin this analysis with a brief chronology of those proceedings. On October 3, 1983, Tegal filed its '223 patent application with the United States Patent Examiner. It was issued as the '223 patent on August 7, 1984. On June 25, 1984, Tegal filed its corresponding Japanese application. This application was rejected on June 12, 1990, due to two items of prior art, one being the NTT publication at issue. Prior to this rejection, Tegal had requested reexamination in the States of its '223 patent so that the examiner could consider and rule upon additional prior art that had come to its attention. On September 12, 1990, Tegal referred the U.S. PTO to the second publication involved in the Japanese proceeding, but not the NTT publication. On April 9, 1991, the U.S. PTO issued a reexamination certificate. The Japanese application was published for opposition on November 6, 1992. On February 10, 1994, Tegal amended its claims in its Japanese application. TEA contends that these amendments were made in recognition of the fact that Tegal's patent claims would not be capable of being distinguished over the NTT publication.
The other prior art was Patent Publication Sho 52-127168 to Fujitsu, Ltd. ("the Fujitsu publication"). This publication was brought to the attention of the United States examiner on reexamination.
TEA argues that Tegal did not bring the NTT publication to the attention of the examiner because it knew that its claim would not withstand comparison. TEA alleges that instead, Tegal revised its claims to add significant limitations which were never added to its United States patent claims. The failure to bring the NTT publication to the attention of the examiner during the '223 reexamination proceeding is, according to TEA, a breach of Tegal's duty of disclosure. TEA posits that wrongful intent is plainly shown by the fact that, after the Japanese examiner cited both publications as problematic, Tegal only brought one of the publications to the attention of the United States examiner and withheld from disclosure the NTT publication.
Tegal argues that the NTT publication was both less relevant than and cumulative to art that was already of record before the PTO due to the fact that the NTT discloses an etcher that uses only two electrodes. Tegal counters with the following explanation as to why the NTT publication was not brought to the attention of the United States examiner. In December, 1988, Tegal requested reexamination of the '223 because certain new prior art had surfaced in a European patent proceeding on a counterpart to the '223. Tegal submitted six pieces of prior art for consideration during the '223 reexamination. According to the examiner, the most pertinent prior art was one that disclosed a three-electrode configuration using a single frequency and one which was a dual frequency machine, using only two electrodes. Since dual frequency art had already been cited, and the focus was now on art with three or more electrodes, there was no reason to disclose the NTT publication. Tegal posits that the NTT publication would have added nothing to the proceedings. As a two electrode design, it was less relevant than the art of record disclosing three or more electrodes and as a dual frequency design, it was redundant to dual frequency references that had previously been cited during the proceedings.
As to TEA's allegation that Tegal amended its claim to get around the NTT publication, Tegal asserts that the amendment was simply a vigorous defense to the opposition. In spite of the change in wording, the Japanese patent office found the '223 patentable, not on the basis of the amendments, but rather on the two versus three electrode distinction. The fundamental difference between the two, i.e., the number of electrodes, remained the same both before and after the amendment.
The Court finds that TEA has once again failed to meet its burden of proof. It must establish both materiality and intent to deceive in order for this Court to find inequitable conduct. There is no substantial evidence in this case to support a finding of either the withholding of material information or an intent to deceive. Wrongful intent is not evidenced simply by the fact that Tegal brought only the Fujitsu publication to the attention of the examiner in the United States. There exists a genuine issue of material fact as to whether the NTT publication was material and if material, whether Tegal intended to purposefully deceive the examiner. Accordingly, TEA's motion for unenforceability of the '223 patent due to inequitable conduct is DENIED. As there exists a genuine issue of material fact, Tegal's cross-motion is also DENIED.
III. TEA's Rule 56 Motion for '223 Patent Non-Infringement
"It is well settled that each element of a claim is material and essential," and that, in order to prevail on a claim of infringement, the plaintiff "must show the presence of every element or its substantial equivalent in the accused device." London v. Carson Pirie Scott Co., 946 F.2d 1534, 1538 (Fed. Cir. 1991).
Tegal asserts that a grounded chamber wall, like the one in the TEA etcher, is a third electrode. TEA argues the contra position — that a chamber wall is not an electrode. The Court, in its Order dated January 21, 1999, construed the term "electrode" as any conductive surface, including a metal chamber wall or other surface, coupled to the plasma. In light of that construction, TEA's chamber wall could possibly be considered a third electrode for the purposes of infringement. Accordingly, there exists a genuine issue of material fact and TEA's motion for non-infringement is DENIED.
IV. TEA's Rule 56 Motion for '920 Patent Non-Infringement
TEA moves for summary judgment of non-infringement of Claim 1 on the ground that the accused TEA device is missing a key element of that claim: the "retaining means." TEA contends that the "retaining means" that holds the upper electrode in place within the "shell" may not be bolts or screws that penetrate the upper electrode itself because Tegal's device uses a "plain" electrode. Since the upper electrode in TEA's reactor is not "plain," but instead is held in place by screws that extend through it, TEA argues there can be no finding of infringement.
TEA also seeks summary judgment with respect to Claim 18, which Tegal initially asserted had been infringed. However, Tegal has since abandoned that claim. See TEA's Reply in Supp. of Rule 56 Motion for '920 Non-Infringement at 1.
The Court has construed "retaining means" to mean the structure which holds the upper electrode in place within the bottom rim of the shell. This structure consists of three components — an isolation ring, a retaining ring, and a set of bolts. See Order dated January 21, 1999. Whether the TEA device uses the same or equivalent means for holding the electrode in place is an issue that is best left for a jury to decide. The fact that the upper electrode in the accused TEA device is not a "plain" electrode, does not preclude a finding of infringement. As such, TEA's motion for '920 patent non-infringement is DENIED.
Let the Clerk send a copy of this Memorandum Opinion to all counsel of record.
And it is SO ORDERED.