Camtek v. August Technology (CAFC 2010-1458) precedential; Judges Dyk, Moore (author), O'Malley

Claim Construction

Asserted claim 1 points up the claim construction problem, by claiming:

a visual inspection device for visual inputting of a plurality of known good quality wafers during training and for visual inspection of other unknown quality wafers during inspection...

The dispute in this case centers around whether "a wafer" is also "a plurality of wafers." Both parties agree that a whole wafer is typically diced into many pieces called dies,1 and that each die contains a complete functional circuit. The district court construed a wafer to be "a thin slice of semiconductor material with circuitry thereon that is ready for electrical testing, or any part thereof. However, a 'wafer' is not the same as a 'die.' A wafer is made up of multiple die[s]." J.A. 37, 132 (emphasis added). The district court explained: "wafer should be construed to include a part of a wafer. Throughout the patent, reference is made to wafers, in whole or in part." J.A. 131. The court further explained that defining a wafer as "any portion of a wafer" does not improperly give the same meaning to "die" and "wafer" because it requires the wafer or portion of a wafer to include multiple dies. J.A. 132 ("Thus, Plaintiffs' construction of wafer does not provide the same meaning as die - the former refers to plural, while the latter refers to singular.").

In its denial of JMOL on this point, the district court explained: "the Court's definition of the term 'wafer' could refer to each of the sections of multiple die visually inputted by the Falcon. Therefore, the Court finds sufficient evidence to support the jury's conclusion that the Falcon literally infringed the 'plurality of wafers' limitation." Id. Thus, under the district court's construction, a single wafer can be a plurality of wafers.

The dust-up to whacking at a wafer that could be wafers:

Claim construction is a matter of law we review de novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1455-56 (Fed. Cir. 1998) (en banc). The words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art at the time of the invention when read in the context of the specification and prosecution history. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). A claim's preamble may limit the claim when the claim drafter uses the preamble to define the subject matter of the claim. Allen Eng'g Corp. v. Bartell Indus., 299 F.3d 1336, 1346 (Fed. Cir. 2002). We construe the preamble as limiting when it is "necessary to give life, meaning and vitality" to the claim based on the facts of the case at hand and in view of the claim as a whole. Id. (internal quotation marks omitted).

The claims require a distinction between a single wafer and multiple wafers.

Based on the claim language as read in light of the specification, we conclude that a wafer is a discrete object, and thus a single wafer, even though it may later be diced into hundreds of separate dies, is not itself also a plurality of wafers.

The inventors chose to draft claims directed to training on and inspecting multiple discrete wafers. The district court's construction is in error so far as it defines a wafer as any portion of a wafer having two or more dies.

Because the jury was given a flawed claim construction, the verdict of infringement must be vacated.

Then came the claim construction issue of taking flash snapshots of the wafers.

No party disputes on appeal that the claimed invention periodically strobes a light source based on a wafer's velocity to help a camera capture a still image of the constantlymoving wafer. Camtek argues instead that the asserted claims preclude strobing that is also based on the wafer's position. Camtek concedes that the claims do not recite any limitation prohibiting strobing based on position. Camtek's position on appeal is that during prosecution August Tech disclaimed strobing based on the wafer's position.

"Absent a clear disavowal or contrary definition in the specification or the prosecution history, the patentee is entitled to the full scope of its claim language." Home Diagnostics, Inc. v. Lifescan, Inc., 381 F.3d 1352, 1358 (Fed. Cir. 2004).

Claims were amended over prior art with regard to strobing, but not specifically to what was being claimed. Thus no prosecution estoppel.

Because we see no clear disavowal of strobing according to position, we agree with the district court's construction of strobing based on velocity - the strobing must be based at least in part on the wafer's velocity, i.e., on the rate of change of the position of the wafer.

Accordingly, we conclude that the jury was presented with substantial evidence that the Falcon strobes based on the rate of change of the position of the wafer. We see no error in the district court's analysis of this issue

On-Sale Bar

In an astonishing feat of cart-before-the-horse, on-sale bar is extended to before conception. You can't patent snake oil if you first trying selling the snake, then later decide to squeeze the snake for its oil.

Section 102(b) requires that "the invention was . . . on sale in this country" before the critical date. The Supreme Court has explained that the § 102(b) on-sale bar applies when two conditions are met before the critical date: (1) the product is the subject of a commercial offer for sale, and (2) the invention is ready for patenting. Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998). Disclosure of inventions is one of the primary objectives behind the limited time patent grant. Aronson v. Quick Point Pencil Co., 440 U.S. 257, 262 (1979) (Among the "purposes of the federal patent system" is to "promote[] disclosure of inventions to stimulate further innovation and to permit the public to practice the invention once the patent expires."); Kewanee Oil v. Bicron, 416 U.S. 470, 481 (1974) ("When . . . the information contained in [a patent] is circulated to the general public and those especially skilled in the trade, such additions to the general store of knowledge are of such importance to the public weal that the Federal Government is willing to pay the high price . . . of exclusive use for its disclosure, which disclosure, it is assumed, will stimulate ideas and the eventual development of further significant advances in the art."); see also Rebecca S. Eisenberg & Arti K. Rai, Harnessing and Sharing the Benefits of State-Sponsored Research: Intellectual Property Rights and Data Sharing in California's Stem Cell Initiative, 21 Berkeley Tech. L.J. 1187, 1194-95 (2006). Section 102(b) encourages prompt disclosure of new inventions and in particular limits commercial exploitation of an invention prior to filing for a patent application. Timothy R. Holbrook, The More Things Change, The More They Stay The Same: Implications of Pfaff v. Wells Electronics, Inc. and the Quest for Predictability in the On-Sale Bar, 15 Berkeley Tech. L.J. 933, 938 (2000).

The issue presented in this case is whether the invention must be ready for patenting at the time the alleged offer is made. We conclude that it does not. Under Pfaff, the invention must be ready for patenting prior to the critical date. But to conclude that it must also be ready for patenting at the time of the offer would render the second prong of the Pfaff test superfluous. Our decision in Robotic Vision Sys. v. View Eng'g, Inc., 249 F.3d 1307, 1313 (Fed. Cir. 2001) expressly holds that completion of the invention prior to the critical date pursuant to an offer to sell would create a bar. As we explained in Robotic Vision, the on-sale bar was "triggered by a prior commercial offer for sale and a subsequent enabling disclosure that demonstrated that the invention was ready for patenting prior to the critical date." Id. (emphasis in original). Robotic Vision would have to be overturned for us to hold, as the district court did, that the invention must be ready for patenting at the time of the offer for sale.5 This we cannot do. While the invention need not be ready for patenting at the time of the offer, consistent with our cases, we hold that there is no offer for sale until such time as the invention is conceived. Pfaff states that the "word 'invention' in the Patent Act unquestionably refers to the inventor's conception." 525 U.S. at 60. Therefore, we conclude that an invention cannot be offered for sale until its conception date. Hence, if an offer for sale is made and retracted prior to conception, there has been no offer for sale of the invention. In contrast, if an offer for sale is extended and remains open, a subsequent conception will cause it to become an offer for sale of the invention as of the conception date. In such a case, the seller is offering to sell the invention once he has conceived of it. Before that time, he was merely offering to sell an idea for a product.

August Tech offered to sell what it hoped to invent.

In this case, August Tech was approached by ICS to develop a wafer inspection machine that would meet their needs. J.A. 4845. In late 1996, with "a concept of what the machine would be," August Tech issued ICS and a second customer, Eastman Kodak, separate purchase orders for a NSX-80 automated wafer inspection machine. J.A. 4982. ICS agreed to pay 15% of the purchase price on order, 20% on design review, 50% upon acceptance at August Tech's factory, and 15% after acceptance at the ICS's site. J.A. 4866, 5029, 14494, 14498. Once it received an initial payment, August Tech began preliminary hardware design for the NSX-80 in the first quarter of 1997. J.A. 4866, 4872. Design and development proceeded at August Tech's facilities, and the first NSX-80 unit was shipped to ICS for onsite acceptance in September of 1997, after the July 15, 1997 critical date. J.A. 4867-77, 14500. August Tech argues that at the time of the contracting "August had not conceived of the software or hardware components that would be necessary for the machine." Appellee's Br. 58. While August Tech admits that there was a partial prototype prior to the critical date, the record on appeal is not clear as to whether August Tech had conceived of the NSX-80 prior to the critical date. And we believe this question of fact must be decided by the fact finder in the first instance with a proper statement of the law regarding the first prong of the Pfaff test.

What isn't clear is whether the NSX-80 had all the claimed features, notably strobing as claimed.

Hal Wegner:

For more than a decade it has been clear that placing an invention "on sale" is a statutory bar event under 35 USC § 102(b) provided the invention is "ready to patent" at the time. As of the August Tech. decision, a commercial offer of sale even before conception of the invention creates a statutory bar trigger as of the subsequent date the conception takes place. In mitigation, there is a one year grace period that remains for filing after such conception.

Affirmed-in-part, vacated-in-part, and remanded.