Tuesday, August 23, 2011

CAFC in August Technology: the importance of conception to the meaning of on-sale

The punchline as to the parties in the case AUGUST TECHNOLOGY CORPORATION v. CAMTEK was

We conclude, however, that the district court erred in its claim construction, and vacate the district court’s judgment of infringement, its award of damages, and its grant of a permanent injunction, and remand for further proceedings consistent with this opinion.

HOWEVER, one of the more interesting pronouncements of the case, concerning an improper jury instruction on the on-sale bar, did not change the outcome as to a finding of nonobviousness. So even though Camtek's lawyers convinced the CAFC of an improper jury instruction (patterned after a model instruction of AIPLA!!! See footnote 4.), the "victory" was immaterial because it failed to invalidate the relevant claim.

The CAFC got to the issue leading to a partial vacation of the district court decision:

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.”).

Camtek's position:

On appeal, Camtek argues that the district court erred by including the “on any part thereof” phrase in its construction, asserting that such a definition “erroneously permits a single physical wafer to have an arbitrary number of notional ‘wafers’ within it.” Appellant’s Br. 23. Camtek argues that wafers are physically distinct substrates that are inspected by the claimed invention, and that a plurality of wafers means more than one physically discrete wafer. Camtek asserts that the partial wafers, such as sawn wafers and broken wafers as recited in the preambles, are physi- cally distinct substrates. Camtek also points to the ’298 patent’s specification at column 8, lines 60-64, which it asserts discusses wafers as discrete physical objects that are physically handled.

The court noted in footnote 2:

Although the question of whether a wafer can also be a plurality of wafers has been a centerpiece of this appeal, it was at most a peripheral issue before the district court. In fact, it was not clearly raised during the Markman hearing. Certainly Camtek could have more clearly explained to the district court the implications of August Tech’s “or any part thereof” language.

The analysis by the CAFC:

To determine the meaning of the plurality of wafers limitations we begin with the language of the claim itself. In the claims’ preambles, the inventors listed example “wafers” such as whole wafers, sawn and broken wafers, and dies. Nothing in the preamble compels us to conclude that wafers are not discrete objects. The claim itself, however, distinguishes between a single wafer and multiple wafers: (...)

Merck v. Teva was cited; Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.”).

And, there was "an exclusion of preferred embodiment" argument:

We reject August Tech’s assertions that a claim construction requiring wafers to be discrete objects is incorrect because it excludes the preferred embodiment which August Tech argues trains on and inspects multiple dies on a single wafer. Appellee’s Br. 33-36 (citing ’298 patent figs.3 & 5; col.6 ll.65-67; col.7 ll.20-25). August Tech argues that a claim construction “that excludes a preferred embodiment from the scope of the claim is rarely, if ever, correct.” Appel- lee’s Br. 35 (quoting MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1333 (Fed. Cir. 2007)).

The CAFC addressed this:

The fact that the claims at issue cover only the latter – a plurality of known good wafers – is little cause for concern. “The mere fact that there is an alternative embodiment disclosed in the [asserted patent] that is not encompassed by [our] claim construction does not outweigh the language of the claim, especially when the court’s construction is supported by the intrinsic evidence.” TIP Sys., LLC v. Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364, 1373 (Fed. Cir. 2008). This is especially true where, as here, other unasserted claims in the parent patent cover the excluded embodiments. See PSN Ill., LLC v. Ivoclar Vivadent, Inc., 525 F.3d 1159, 1166 (Fed. Cir. 2008) (“[C]ourts must recog- nize that disclosed embodiments may be within the scope of other allowed but unasserted claims.”). Unasserted claim 10 of the parent patent recites a method of “inspecting a die on a substrate such as a wafer in any form including [the same list of examples],” and comprises the steps of training a model as to a good die by viewing multiple known good dies, and then inspecting unknown quality dies.

The CAFC rejected the claim construction of the district court:

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. We construe a wafer as recited in the claims at issue as a thin, discrete slice of semiconductor material with circuitry thereon that is ready for electrical testing having one or more dies. A plurality of wafers means more than one physically distinct wafer.

Because the jury was given a flawed claim construction, the verdict of infringement must be vacated. August Tech also argues that even under this construction, Camtek and its Falcon inspection machine infringe the asserted claims. We decline to make this factual finding in the first instance, and instead remand to the district court for a limited trial on infringement with respect to this claim element.

There was a prosecution history estoppel issue:

“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). During prosecution, the inventors twice amended their claims to overcome U.S. Patent No. 4,644,172 (Sandland). As described by the examiner, Sandland dis- closes a start-and-stop system that moves the wafer, stops the wafer to capture a still image, and then moves the wafer again. After the first rejection, the inventors amended the claimed strobing feature from “strobes during inspection” to “strobes based on a velocity of a wafer during inspection,” and explained that Sandland does not teach strobing, but instead provides constant illumination. J.A. 7532, 7598, 7601. The examiner then rejected the inventors’ claims again, and noted that Sandland’s light could be switched on and off by the computer “to [e]nsure that [one lamp] is turned on and [the other lamps] are turned off [when] the image is grabbed.” J.A. 6730.

The CAFC did not find disavowal: 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.

The matter of the "substantial evidence" standard arose in obviousness arguments:

Although Camtek’s arguments are not without merit, there was substantial evidence supporting the jury’s fact- finding given the expert testimony that Moriya does not contemplate strobing a moving wafer to freeze die patterns for the camera as required by the asserted claims. Therefore, we affirm the trial court’s denial of a JMOL and a new trial on this issue.

There was an "on-sale" bar issue:

In particular, Camtek argues that Jury Instruction 23 wrongly instructed the jury that: “In order to be on ‘sale’ the NSX-80 must also have been ready for patenting at the time the alleged offer for sale is made.” J.A. 56.4 Had the jury considered the NSX-80 in combination with the other prior art, it could have found the claims obvious, Camtek contends.

Before determining whether the NSX-80 would have rendered the claims obvious, we first consider whether the device could qualify as 102(b) prior art. Based on Jury Instruction 23, the jury concluded that it does not.
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 espe- cially 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.”);

AND the punchline:

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.


Robotic Vision would have to be overturned for us to hold, as the district court did, that the invention must bereadyforpatentingatthetimeoftheofferforsale.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 ‘inven- tion’ in the Patent Act unquestionably refers to the inven- tor’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 inven- tion once he has conceived of it. Before that time, he was merely offering to sell an idea for a product. As our court explained in Sparton Corp. v. United States, 399 F.3d 1321, 1324 (Fed. Cir. 2005): “Under the Claims Court’s analysis, the patented single part release plate was the subject of a commercial offer for sale before it was even conceived. Such a result is illogical.”

[In passing, the on-sale bar analysis requires a separate post for complete discussion.]

**The "but for" requirement of Therasense arose:

For the same reasons, the NSX-80 is not material prior art. Therasense, Inc. v. Becton, Dickinson & Co., __ F.3d __, 2011 WL 2028255 at *11 (Fed. Cir. May 25, 2011) (requiring but-for materiality or egregious misconduct). Accordingly, we affirm the district court’s dismissal of Camtek’s inequitable conduct counterclaim.


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