Petition for Writ of Certiorari — Semitool, Inc. v. Novellus Systems, Inc
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No. ___ogmes ., Sa om
In The
Supreme Court of the United States
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SEMITOOL, INC.,
Petitioner,
NOVELLUS SYSTEMS, INC.,
Respondent.
+
On Petition For Writ Of Certiorari
To The United States Court Of Appeals
For The Federal Circuit
¢
PETITION FOR WRIT OF CERTIORARI
¢
Jerry A. RIEDINGER
Counsel of Record
Davip J. BURMAN
MicHaet D. Broappus
Jessica L. RossMAN
PERKINS COIE LLP
1201 Third Avenue
Seattle, WA 98101-3099
(206) 583-8888
Attorneys for Petitioner
Semitool, Inc.
COCKLE LAW BRIEF PRINTING CO., (800) 225-6964
OR CALL COLLECT (402) 342-2831
QUESTIONS PRESENTED
1. This petition presents the same question pre-
sented in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki
Co., 234 F.3d 558 (CA Fed. 2000) (en banc): “Whether the
finding of prosecution history estoppel completely bars
the application of the doctrine of equivalents.”
2. Because the Court has granted a writ of certiorari
to the Federal Circuit in Festo, the most immediate ques- -
tion presented here is whether the Court should hold this
petition until it rules in Festo.
!
il
CORPORATE DISCLOSURE STATEMENT
Semitool, Inc. has no parent company.
No publicly held company owns 10% or more of
Semitool, Inc. stock.
Page
OPINIONS BELOW. ....cccccccccccccccsecccccccess 1
JURISDICTION ........- 0c cece eee e cence ee eeeeeeee 1
CONSTITUTIONAL AND STATUTORY PROVI-
SIONS INVOLVED ..........ccccccccccccsccccces 1
I. STATEMENT OF THE CASE.............-++:. 2
A. Background and Technology ...-..--.----- 2
B. Prior Proceedings........--..-s+se+eee0555 4
Il. REASONS FOR GRANTING THE PETITION... 7
A. The Outcome of This Case Depends on the
Court’s Decision in Festo ...........-.-- ie oe
B. The Court Should Hold This Petition Pend-
ing Its Important Ruling in Festo.......... 9
Tes = 25. ¢ | nnn nnn errr 10
TABLE OF CONTENTS
iv
TABLE OF AUTHORITIES
Cases
Altech Controls Corp. v. Eil Instruments, Inc., No.
00-1216, unpublished (CA Fed. 5/02/01)......
Apprendi v. New Jersey, 530 U.S. 466 (2000)......
Campbell v. St. Tammany’s Sch. Bd., __ U.S.
CUED kn cnc du ceecddabaesccnsdeeseecakhsuenener
Collazo-Aponte v. United States, __ U.S. __ (2001)
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
234 F.3d 558 (CA Fed. 2000)..................
Good News Club v. Milford Cent. Sch., 533 U.S. __
PEE bch enkdaekencneddaweceedesveuNes as sees
Immigration and Naturalization Serv. v. Chhun, __
ik Se | PR pre or rrr rr e Tire re ray
Immigration and Naturalization Serv. v. St. Cyr, 533
i Sy | rrr errr rrr rer rrr rr
Insituform Techs., Inc. v. CAT Contracting, Inc., No.
99-1584, 00-1005, unpublished (CA Fed.
ty 7, | rererrrr erry RadEDeen bakes ceezens
Litton Sys., Inc. v. Honeywell, Inc., 238 F.3d 1376, 57
U.S.P.Q. 2d 1653 (CA Fed. 2001)..............
Lockheed Martin Corp. v. Space Sys./Loral, Inc., 249
F.3d 1314, 58 U.S.P.Q. 2d 1671 (CA Fed. 2001)
Markman v. Westview Instruments, Inc., 517 U.S. 370
CD iii cde cacecas (endian nbasdoducnnséereee
Mycogen Plant Science, Inc. v. Monsanto Co., 252
F.3d 1306, 58 U.S.P.Q. 2d 1891 (CA Fed. 2001)
TABLE OF AUTHORITIES - Continued
Page
Pioneer Magnetics, Inc. v. Micro Linear Corp., 238
F.3d 1341, 57 U.S.P.Q. 2d 1553 (CA Fed. 2001) ..... )
Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520
Co OF CAGE nec ccctdnncstdaedawetpeceedeets: 4,5, 8
Zalawadia v. Ashcroft, __ U.S. __ (2001) ...........-. “4
STATUTES
28 U.S.C. § 1254(1) 0... ccc cece cerceccnscccccsees ]
2B U.S.C. § 1338... 22.2 cece cccsecnvascsccusanscassees 2
35 U.S.C. § 27 1a) .....-- rcv cccnsnsesncseseccaccscens 2
OTHER AUTHORITIES
U.S. Const. art. I, § 8, cl. 8.0... cece ccc e ere eecceecees 1
eee o Vere eee eS”: a Oo
PETITION FOR WRIT OF CERTIORARI
Semitool, Inc. respectfully petitions for a writ of cer-
tiorari to review the judgment of the United States Court
of Appeals for the Federal Circuit in this case.
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OPINIONS BELOW
The opinion of the Court of Appeals for the Federal
Circuit is unpublished, Semitool, Inc. v. Novellus Sys., Inc.,
No. 00-1375 (Fed. Cir. June 8, 2001). The opinion of the
District Court is also unpublished, Semitool, Inc. v. Nov-
ellus Sys., Inc., No. 98-CV-3089 (N.D. Cal. March 17, 2000).
+
JURISDICTION
The Federal Circuit judgment was entered on June 8,
2001. The Court has jurisdiction pursuant to 28 U.S.C.
§ 1254(1).
+
CONSTITUTIONAL AND STATUTORY
PROVISIONS INVOLVED
The United States Constitution provides that “Con-
gress shall have the power . . . To promote the Progress of
Science and useful Arts, by securing for limited Times to
Authors and Inventors the exclusive Right to their respec-
tive Writings and Discoveries.” U.S. Const. art. I, § 8, cl. 8.
The Patent Act states that “Except as otherwise pro-
vided in this title, whoever without authority makes,
uses, offers to sell, or sells any patented invention, within
the United States or imports into the United States any
patented invention during the term of the patent therefor,
infringes the patent.” 35 U.S.C. § 271(a).
I. STATEMENT OF THE CASE
Semitool, Inc. (“Semitool”) brought this action for
patent infringement against Novellus Systems, Inc.
(“Novellus”). The district court (Northern District of Cal-
ifornia) had jurisdiction pursuant to 28 U.S.C. § 1338. The
Federal Circuit affirmed summary judgment against
Semitool, relying on its recent holding in Festo Corp. v.
Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558 (CA
Fed. 2000) (en banc).
A. Background and Technology
Semitool is the assignee of United States Patent Nos.
5,222,310 (“the ‘310 patent”) and 5,337,708 (“the ‘708 pat-
ent”). The ‘310 patent and the ’708 patent (collectively,
“the Semitool patents”) both issued from the same appli-
cation. Each of the Semitool patents is directed to an
apparatus for the processing of semiconductor wafers.
Processing a semiconductor wafer transforms it from
plain silicon to hundreds of integrated circuits, or com-
puter chips. Wafer processing usually involves several
distinct procedures. Some phases may involve liquid
chemicals, and some may involve gaseous chemicals.
Both Semitool patents claim their inventions for use
in wafer processing generally. Neither patent limits use of
»
the patented apparatus to a certain step or procedure.’
The patents do specify that the processing takes place in a
chamber or space that is formed by the relationship
between a “head” and a “bowl.”
The ’310 and ‘708 patents both use the language
“substantially enclosed” to describe the wafer processing
space within the bowl of the claimed apparatus. The head
and the bowl of the apparatus, when in a “closed” posi-
tion, form a “substantially enclosed processing chamber”
in the ‘708 patent and a “substantially enclosed process-
ing space” in the ‘310 patent.? The “substantially
enclosed” limitation was added during the process of
patent prosecution, for a reason substantially related to
patentability under Festo.
Semitool added the “substantially enclosed” limita-
tion to show that its invention was different from that
claimed in an earlier patent granted to Aigo. The device
claimed in the Aigo patent had a head and a bowl, like
those described in the Semitool patents, but during oper-
ation, the head remained some distance above the bowl.
The open space between them, where the wafer process-
ing occurred, was entirely unconfined.
Novellus manufactures and sells wafer processing
tools, in competition with Semitool. The Novellus prod-
ucts allegedly infringing the Semitool patents are SABRE
and SABRE xT. The SABRE and SABRE xT have all the
1 ’310 Patent, Column 10, line 10 through Column 12, line
35; ‘708 Patent, Column 25, line 35 through Column 32, line 54.
2 ’708 Patent, Column 25, line 48; ‘310 Patent, Column 10,
lines 16-17.
elements specified in the claims of the Semitool patents,
including a head, a bowl, a processing chamber, and a
wafer support. The only dispute is whether the relation-
ship between the head and bowl of the Novellus products
provide an equivalent of a “substantially enclosed” pro-
cessing area or chamber.
B. Prior Proceedings
~ Under Markman v. Westview Instruments, Inc., 517 U.S.
370 (1996), the district court construed the claim limita-
tion “substantially enclosed” to mean:
when the head is in a closed position over the
bowl the head and bow! substantially enclose a
processing chamber or space such that they
form a seal which is sufficiently closed to permit
the effective processing of a wafer using the gas
phase of a processing chemical known in the art,
regardless of whether the chemical to be used at
any given time is in a gas or liquid state.3
Novellus moved for summary judgment on the
grounds that infringement under the doctrine of equiva-
lents was precluded by prosecution history estoppel.
“Under this doctrine [of equivalents], a product or pro-
cess that does not literally infringe upon the express
terms of a patent claim may nonetheless be found to
infringe if there is ‘equivalence’ between the elements of
the accused products or process and the claimed elements
of the patented invention.” Warner-Jenkinson Co. v. Hilton
3 Northern District of California No. C-98-3089, Order of
September 24, 1999 at 18.
PO RL A al ODI AAR ABA EGOS BAS ET os nig
Davis Chem. Co., 520 U.S. 17, 21 (1997). The doctrine of
equivalents is constrained by the “reasonable limits”
placed upon it by “prosecution history estoppel,” 520
U.S. at 33, at least prior to Festo.
Prosecution history estoppel has traditionally pro-
vided that if a patent applicant amends a claim during
prosecution for reasons of patentability, the specific sub-
ject matter disclaimed in the amendment may not be
considered an equivalent for purposes of deciding
infringement. 520 U.S. at 33. In Festo, however, the Fed-
eral Circuit recently held that the amendment of a claim
limitation for a reason substantially related to paten-
tability is a complete bar to any application of the doc-
trine of equivalents. 234 F.3d at 569.
At the district court, prior to Festo, the key dispute
was whether prosecution history estoppel applied to the
seal requirement. Semitool pointed out that the Aigo
patent could not have had any seal because the process-
ing area, above the bowl, was not at all enclosed. Process-
ing occurred in the open. Semitool had not distinguished
any prior art seals, and therefore did not surrender any
equivalents to a seal.
By adding the requirement that the processing area
be “substantially enclosed,” Semitool merely surrendered
patent coverage of devices with open or largely
unenclosed processing areas, such as in Aigo. Here, such
surrender was irrelevant because both SABRE and SABRE
xT have a substantially enclosed processing space within
the bowl, which is created by the relationship between
the head and the bowl. As to the district court’s require-
ment of a seal sufficient to allow gaseous processing,
Semitool presented evidence that the air flow into the
Novellus devices was equivalent to that illustrated in the
‘708 patent. The air drawn through the SABRE and
SABRE xT devices does not flow through or around the
processing chamber.‘ The record contains evidence that
gaseous processing, or any other processing step, would
not be affected by this air.5
The district court rejected Semitool’s argument, hold-
ing that the “substantially enclosed” language was added
during prosecution to limit the positioning of the head
and bowl and that Semitool was therefore precluded from
arguing any equivalents related to the relationship
between the head and the bowl. The district court refused
to consider whether the SABRE and SABRE xT include an
equivalent of the “substantially enclosed” processing
chamber or space as claimed in the Semitool patents.
Semitool never obtained Federal Circuit review of
that ruling. Instead, the Federal Circuit applied the “com-
plete bar” holding from its recent decision in Festo, stat-
ing that because the claim at issue was narrowed for
reasons relating to patentability, no range of equivalents
whatsoever was available. 234 F.3d at 569, 576. The Fed-
eral Circuit did not address whether Semitool had surren-
dered the particular equivalent present in the Novellus
devices, as would be the inquiry in a traditional applica-
tion of prosecution history estoppel.
4 See Federal Circuit Appendix at A1972, A1979-A1980
(Testimony of Allan S. Myerson).
5 Id.
II. REASONS FOR GRANTING THE PETITION
The Court has granted certiorari to decide the ques-
tion presented here, the appropriate scope of the doctrine
of equivalents, in Festo Corp. v. Shoketsu Kinzoku Kogyo
Kabushiki Co., No. 00-1543 (cert. granted May 23, 2001).
The Court’s holding in Festo will determine whether the
Federal Circuit’s decision in this case was in error, and
whether Semitool is entitled to further review.
A. The Outcome of This Case Depends on the
Court’s Decision in Festo
The Federal Circuit altered the historical balance
between the doctrine of equivalents and prosecution his-
tory estoppel in Festo. The Festo holding expanded pros-
ecution history estoppel and minimized the doctrine of
equivalents. Festo held that the amendment of a claim
limitation for a reason substantially related to paten-
tability or not otherwise explained in the prosecution
history is a complete bar to any application of the doc-
trine of equivalents. Festo, 234 F.3d at 569. Under Festo,
where a claim is amended for a reason related to paten-
tability, the patentee is not only precluded from claiming
infringement by disclaimed subject matter, but the doc-
trine of equivalents is made completely unavailable -
even as to unrelated equivalents. Id.
The Federal Circuit applied its controversial Festo
holding in this case. Citing Festo, the Federal Circuit
explained that “[w]hen an amendment narrows the scope
of a claim for a reason relating to patentability, no range
of equivalents is available for that amended claim limita-
tion.” Semitool, Inc. v. Novellus Sys., Inc., No. 00-1375, slip
op. at 14 (Fed. Cir. June 8, 2001). The Federal Circuit did
not examine whether the structure of SABRE and SABRE
xT was disclaimed during prosecution of the Semitool
patents. Id. But for Festo, it would have reviewed that
issue. See, e.g, Warner-Jenkinson, 520 U.S. at 32.
The district court’s decision was made before Festo
changed the landscape of the doctrine of equivalents. The
district court’s grant of summary judgment was based on
a narrower, but still very broad, application of prosecu-
tion history estoppel. The district court precluded appli-
cation of the doctrine equivalents to any claim limitation
involving the relative positions of the head and the bowl.
Semitool did not specifically surrender any subject matter
other than devices with open or largely unenclosed pro-
cessing areas. Under traditional prosecution history
estoppel, the district court should have been reversed.
Under Festo, Semitool’s argument that it surrendered
only unenclosed processing areas went unheard by the
Federal Circuit. Appellate review under the traditional
standard would have compelled a different outcome in
this case. Thus, review is appropriate for all the reasons |
that supported review by the Court in Festo. Further,
assuming the Court reverses Festo, this case presents the
question of where, short of a complete bar, to draw the
line.
B. The Court Should Hold This Petition Pending
Its Important Ruling in Festo
The Court has regularly held petitions for certiorari
pending the outcome of a plenary ruling. See, e.g.,
Zalawadia v. Ashcroft, __ U.S. __ (2001) (held pending
decision in Immigration and Naturalization Serv. v. St. Cyr,
533 U.S. __ (2001), then vacated and remanded for fur-
ther consideration); Immigration and Naturalization Serv. v.
Chhun, __ U.S. __ (2001) (held pending decision in
Zadvydas v. Davis, 533 U.S. __ (2001), then vacated and
remanded for further consideration); Campbell v. St. Tam-
many’s Sch. Bd., U.S. ___ (2001) (held pending decision
in Good News Club v. Milford Cent. Sch., 533 U.S. __
(2001), then vacated and remanded for further consider-
ation); Collazo-Aponte v. United States, U.S. __ (2001)
(held pending decision in Apprendi v. New Jersey, 530 U.S.
466 (2000), then vacated and remanded for further con-
sideration).
This is one of many cases recently decided by the
Federal Circuit in reliance on its Festo decision. Other
such cases include: Mycogen Plant Science, Inc. v. Monsanto
Co., 252 F.3d 1306, 58 U.S.P.Q. 2d 1891 (CA Fed. 2001);
Altech Controls Corp. v. Eil Instruments, Inc., No. 00-1216,
unpublished (CA Fed. 5/02/01); Lockheed Martin Corp. v.
Space Sys./Loral, Inc., 249 F.3d 1314, 58 U.S.P.Q. 2d 1671
(CA Fed. 2001); Insituform Techs., Inc. v. CAT Contracting,
Inc., No. 99-1584, 00-1005, unpublished (CA Fed.
3/26/01) (petition for writ of certiorari filed June 25,
2001); Litton Sys., Inc. v. Honeywell, Inc., 238 F.3d 1376, 57
U.S.P.Q. 2d 1653 (CA Fed. 2001) (petition for writ of
certiorari filed April 23, 2001); and Pioneer Magnetics, Inc.
10
v. Micro Linear Corp., 238 F.3d 1341, 57 U.S.P.Q. 2d 1553
(CA Fed. 2001) (petition for writ of certiorari filed May
23, 2001). Given that the doctrine of equivalents is such a
central issue in patent law, it is appropriate that the Court
hold petitions for certiorari in cases relying on Festo until
the underlying legal issues have been decided.
Ill. CONCLUSION
Semitool respectfully requests that the Court hold
this petition for certiorari pending its decision in Festo. If
the Court modifies the “complete bar” of the Festo deci-
sion, the grounds for the Federal Circuit ruling in this
case will no longer be sound. In that event, Semitool
requests that the Court review this case to determine the
proper rule short of a complete bar, or vacate and remand
to the Federal Circuit.
Respectfully submitted,
Jerry A. RIEDINGER
Counsel of Record
Davip J. BuRMAN
MicHaet D. BrRoappus
Jessica L. RossmMAN
PERKINS COIE LLP
1201 Third Avenue
Seattle, WA 98101-3099
(206) 583-8888
Attorneys for Petitioner
Semitool, Inc.
—~ —- |
App. 1
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
SEMITOOL, INC., Plaintiff-Appellant,
v.
NOVELLUS SYSTEMS, INC., Defendant-Appellee
2001 U.S. App. LEXIS 11986
June 8, 2001, Decided
NOTICE:
RULES OF THE FEDERAL CIRCUIT COURT OF
APPEALS MAY LIMIT CITATION TO UNPUBLISHED
OPINIONS. PLEASE REFER TO THE RULES OF THE
UNITED STATES COURT OF APPEALS FOR THIS CIR-
CUIT.
DISPOSITION: Affirmed.
OUTCOME: The district court’s order finding non-
infringement was affirmed where prosecution history
esstoppel precluded semiconductor patent holder from
arguing thet the airflow in the defendant’s systems was
equivalent to the “seal” required by plaintitf’s patents.
JUDGES: Before MICHEL, LOURIE, and RADER, Cir-
cuit Judges.
OPINION BY: LOURIE
OPINION:
LOURIE, Circuit Judge.
App. 2
DECISION
Semitool, Inc. appeals from the decision of the United
States District Court for the Northern District of Califor-
nia granting Novellus Systems, Inc.’s motion for sum-
mary judgment that Novellus’s SABRE and SABRE xT
semiconductor wafer processing devices do not infringe
Semitool’s U.S. Patents 5,222,310 and 5,337,708. Semitool,
Inc. v. Novellus Sys., No. C-98-3089 (N.D.Cal. May 10,
2000). Because the district court did not err in granting
summary judgment of noninfringement, we affirm.
DISCUSSION
A. Background
Semitool is the assignee of the ‘310 and ‘708 patents,
which relate to an automated semiconductor wafer proc-
essing tool in which various chemical and electrochemical
processes can be performed on a single wafer. Semitool,
Inc. v. Novellus Sys., No. C-98-3089, slip op. at 2 (N.D.Cal.
Mar. 17, 2000) (order) (“Semitool II”). Wafer processing
generally refers to the application of chemical substances
to a silicon substrate to alter its surface properties. Typ-
ically, the surface of a semiconductor wafer is first oxi-
dized to create an insulated layer of silicon dioxide. Id.
Next, an etchant-resistant coating is applied to the sur-
face of the wafer. A chemical etchant is then applied to
the wafer to remove portions of the wafer not protected
by the etchant- resistant coating, leaving a patterned
layer of exposed silicon. Id. Finally, the exposed silicon
layer is doped with another chemical substance that
affects the electrical characteristics of the silicon, which
App. 3
enables thin layers of a conducting metal to be electro-
chemically deposited (a process known as “plating”) to
establish electrical connections between various areas of
the semiconductor. Id. These interconnections allow var-
ious transistors and other microelectronic devices located
on the semiconductor to operate together, forming an
integrated circuit. Although the claims of the patents at
issue are not limited to any particular semiconductor
processing operation, both patents principally focus on
the chemical etching phase of wafer processing.
The wafer processing tool claimed in the ’310 and
‘708 patents primarily comprises a movable head that is
capable of “mating” with a processing bowl, which con-
tains the chemical etchant used in processing the wafer.
Id. at 3. The ’310 patent contemplates the use of both
liquid and gas chemical etchants, see, e.g., ‘310 patent, col.
7, Il. 3-42, while the ‘708 patent focuses exclusively on the
use of the vapor phase of processing chemicals (partic-
ularly aqueous hydrofluoric acid), see, e.g., ‘708 patent,
col. 3, I. 49 to col. 4, I. 6. The movable head contains a
structure for holding the wafer (the “wafer support” in
the ‘708 patent) such that the wafer to be processed is
positioned facing downward towards the bowl. Semitool
II at 3. The processing device also has a pneumatic cylin-
der, which is used to raise and lower the processing head
over the processing bow! such that wafers may be inser-
ted and removed after processing. Id. at 4. The entire
processing unit, consisting of the head, the bowl, and the
pneumatic cylinder, is mounted inside a cabinet, which is
designed to prevent contaminants from adversely affect-
ing processing. Id.
App. 4
Claims 1 and 3-5 of the ‘310 patent and claims 25,
32-37, 50, 55, and 56 of the ‘708 patent are at issue on
appeal. Claim 1 of the ‘310 patent, which is rep resentative
of the claims of that patent and contains two limitations
relevant to this appeal, reads as follows:
1. A wafer processing apparatus, comprising:
a stationary frame;
at least one processing base and a complemen-
tary processing head mounted to the frame, the
processing base and complementary processing
head being moveable relative to one another
between a closed relative position forming a
substantially closed processing space for con-
taining processing fluids between the processing
base and the processing head and an open rela-
tive position allowing transfer of wafers to and
from the processing head;
means for moving the processing base and com-
plementary processing head relative to one
another; and
wafer transfer means on the frame for directing
individual wafers between the processing head
and one or more wafer carriers.
‘310 patent, col. 10, II. 10-27 (emphasis added). The ’708
patent, which is a continuation-in-part of the application
from which the ‘310 patent issued, is similar to the ‘310
patent.! However, the claims of the ‘708 patent do not
} The claims of the ‘708 patent use the phrase “substantially
enclosed processing chamber.” However, neither party has
argued that this phrase is different from the “substantially
enclosed processing space” language in the claims of the ‘310
App. 5
contain the “complementary processing head” limitation,
and include an additional limitation relevant to this
appeal. That limitation reads as follows:
At least one wafer support for detachably sup-
porting wafers thereon; said at least one wafer
support allowing controlled motion of the wafer
support and any wafer held therein, at least
when the processing head is in said [sic] at least
one processing position{.]
‘708 patent, col. 27, Il. 63-68 (emphasis added).
Novellus manufactures and sells two wafer process-
ing tools, the SABRE and the SABRE xT systems (collec-
tively, “the SABRE systems”). Semitool IJ at 11. Both
machines perform the electrochemical deposition or plat-
ing processing step, in which a thin film of pure copper
metal is applied onto the wafers during the manufacture
of integrated circuits. Id. The electrochemical deposition
occurs in a plating cell (characterized by Semitool as the
“bowl”), which is comprised of a splash shield, an anode
chamber, an exhaust tube inlet, and three concentric plat-
ing tanks. Id. The silicon wafers to be plated are held by a
“clamshell” (characterized by Semitool as the “wafer sup-
port” in the ‘708 patent), which is attached by a shaft to a
drive assembly (characterized by Semitool as the “head”).
Id. The clamshell and the drive assembly are moved up
and down over the plating cell to facilitate the loading
and unloading of the silicon wafers to be processed. Id.
Wafers are loaded into the plating cell through a “mail
slot” on the side of the splash shield. Id. at 11-12. After
patent. We therefore interpret these limitations identically, and
refer only to the latter phrase throughout this opinion.
App. 6
loading, the clamshell and drive assembly are lowered
into a closed position until the wafer to be plated comes
into contact with the liquid plating solution in the inner
plating tank. Id. at 12. The drive assembly then spins the
clamshell and wafer together at the surface of the plating
solution. Id. Plating occurs when an electrical current
travels through the plating solution and the wafer,
thereby depositing copper ions in the plating solution
onto the surface of the wafer in the form of pure copper
metal. Id.
When the SABRE systems are in the closed position,
there is no direct contact between the outer wall of the
drive assembly and the interior walls of the plating cell.
Id. Instead, an annular gap exists between the outer wall
of the drive assembly and the interior wall of the plating
cell, which is 0.25 inches wide in the SABRE machine and
0.815 inches wide in the SABRE xT machine. Id: Further-
more, the mail slot remains open throughout the plating
process. The combined area of the annular gap and the
mail slot opening amounts to 19.2 square inches in the
SABRE machine and 38.6 square inches in the SABRE xT
machine. Id. at 13.
Semitool sued Novellus in the United States District
Court for the Northern District of California, alleging that
Novellus’s SABRE systems infringed the ‘310 and ‘708
patents. Id. at 1. After conducting a Markman hearing, the
district court interpreted the “substantially enclosed
processing space” limitation of both patents to require a
“seal” created by the head and the bowl that is “suffi-
ciently closed to permit the effective gas processing of a
wafer using the gas phase of a processing chemical
known in the art, regardless of whether the chemical to
App. 7
be used is in a gas or liquid state.” Semitool, Inc. v.
Novellus Sys., No. C-98-3089, slip op. at 19 (N.D.Cal. Sept.
24, 1999) (order) (“Semitool I”). Given its construction of
the “substantially enclosed” limitation, the court con-
strued the “complementary processing head” limitation
in the ‘310 patent to require that “the head and bowl form
a single component when in the closed position.” Id. at
20. Finally, the court interpreted the phrase “wafer sup-
port for detachably supporting wafers thereon” in the
claims of the ‘708 patent to be a means-plus-function
limitation under 35 U.S.C. § 112, p. 6, and thus limited to
the corresponding structure disclosed in the specification
(viz., a plate having a plurality of fingers that grip the
wafer at its peripheral edge) and any equivalents thereof.
Id. at 24.
Based on its claim construction, the court granted
Novellus’s motion for summary judgment of noninfringe-
ment of both the ‘310 and ‘708 patents. Semitool II at 23.
The court determined that the opening defined by the
mail slot and the annular gap between the drive assembly
and the plating cell in the SABRE systems precludes a
finding that those devices have a “seal” that satisfies the
“substantially enclosed processing chamber” limitation.
Id. at 14-15. The court also found that Semitool failed to
establish a genuine issue of material fact that the SABRE
systems are capable of effective gas processing. Id. at 21.
Finally, the court found that prosecution history estoppel
precluded Semitool from arguing that the air flow in the
SABRE systems is equivalent to the “seal” required by
both patents. Id. at 22-23.
‘arrest eeaaa.
App. 8
B. Standards of Review
Summary judgment is appropriate “if the pleadings,
depositions, answers to interrogatories, and admissions
on file, together with the affidavits, if any, show that
there is no genuine issue as to any material fact and that
the moving party is entitled to a judgment as a matter of
law.” Fed.R.Civ.P. 56(c). “The evidence of the nonmovant
is to be believed, and all justifiable inferences are to be
drawn in his favor.” Anderson v. Liberty Lobby, Inc., 477
U.S. 242, 255, 91 L.Ed.2d 202, 106 S.Ct. 2505 (1986). We
review a district court’s grant of a motion for summary
judgment de novo. Ethicon Endo-Surgery, Inc. v. United
States Surgical Corp., 149 F.3d 1309, 1315, 47 USPQ2d 1272,
1275 (Fed.Cir.1998).
A determination of infringement requires a two-step
analysis. Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d
1473, 1476, 45 USPQ2d 1498, 1500 (Fed.Cir.1998). “First,
the claim must be properly construed to determine its
scope and meaning. Second, the claim as properly con-
strued must be compared to the accused device or proc-
ess.” Id. (quoting Carroll Touch, Inc. v. Electro Mech. Sys.,
Inc., 15 F.3d 1573, 1576, 27 USPQ2d 1836, 1839
(Fed.Cir.1993)). Claim construction is an issue of law,
Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71,
34 USPQ2d 1321, 1322 (Fed.Cir.1995) (en banc), aff'd, 517
U.S. 370, 134 L.Ed.2d 577, 116 S.Ct. 1384 (1996), that we
review de novo, Cybor Corp. v. FAS Techs., Inc., 138 F.3d
1448, 1456, 46 USPQ2d 1169, 1172 (Fed.Cir.1998) (en
banc). “Whether certain claim language invokes 35 U.S.C.
§ 112, p. 6 is an exercise of claim construction and is
therefore a question of law, reviewable de novo by this
court.” Personalized Media Communications v. Int'l Trade
App. 9
Comm'n, 161 F.3d 696, 702, 48 USPQ2d 1880, 1886
(Fed.Cir.1998). A determination of infringement, whether
literal or under the doctrine of equivalents, is a question
of fact. Bai v.. L & L Wings, Inc., 160 F.3d 1350, 1353, 48
USPQ2d 1674, 1676 (Fed.Cir.1998).
C. Claim Construction
1. The “Substantially Enclosed” Limitation
Semitool argues that the phrase “substantially
enclosed” simply refers to the ability to contain process-
ing fluids within the head and the bow! depending upon
the processing fluid used, and that it distinguished the
prior art (i.e., the Aigo reference) on that ground during
prosecution. Semitool contends that the district court
erred by requiring that the head and the bowl form a
“seal,” as the specification of the ‘708 demonstrates that a
seal is required only in a preferred embodiment of the
invention.
Novellus responds that the only embodiment of the
claimed wafer processing tool set forth in both patents
has a processing chamber that is sufficiently sealed to
allow pressurization and to prevent ambient air flow into’
the chamber, and that the phrase “substantially enclosed
processing space” must therefore be limited to that
embodiment. Novellus also argues that Semitool limited
its claims during prosecution to require that the wafer
processing tool be sufficiently “sealed” to enable effective
gas processing. Finally, Novellus contends that Semitool’s
process-dependent interpretation of the “substantially
enclosed” limitation relies entirely on extrinsic evidence
and has no support in the intrinsic record.
App. 10
In interpreting claims, a court “should look first to
the intrinsic evidence of record, i.e, the patent itself,
including the claims, the specification, and, if in evi-
dence, the prosecution history.” Vitronics Corp. v. Con-
ceptronic, Inc., 90 F.3d 1576, 1249, 39 USPQ2d 1573, 1577
(Fed.Cir.1996). When the meaning of a term used in a
claim is sufficiently clear from its definition in the patent
specification, that meaning shall apply. Multiform Desic-
cants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477, 45 USPQ2d
1429, 1432 (Fed.Cir.1998); Intellicall, Inc. v. Phonometrics,
Inc., 952 F.2d 1384, 1388, 21 USPQ2d 1383, 1387
(Fed.Cir.1992). Furthermore, “the prosecution history
limits the interpretation of claim terms so as to exclude
any interpretation that was disclaimed during prosecu-
tion.” Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570,
1576, 34 USPQ2d 1673, 1676 (Fed.Cir.1995) (citations
omitted).
We agree with Novellus that the district court prop-
erly construed the “substantially enclosed processing
space” limitation to require a “seal” created by the head
and the bowl that is sufficiently closed to permit the
effective gas processing of a wafer using the gas phase of
a processing fluid. Nothing in the plain language of the
claims sheds any light on the meaning of the phrase
“substantially enclosed.” However, during the prosecu-
tion of the ‘310 patent, Semitool explained the signifi-
cance of the “substantially enclosed” limitation when it
distinguished the Aigo prior art reference, stating that:
[Claim 1] has been amended to recite that the
complementary processing head and processing
base define a substantially enclosed processing
space when in the closed relative position. This
App: 11
allows the processing space to contain the gas-
eous or liquid processing chemicals. The Aigo
reference has no ability to enclose the wafer and
cannot process effectively using gases.”
‘310 patent file history, Paper No. 8 at 5 (emphasis
added). Although Semitool argues that it only disclaimed
coverage for wafer processing tools that process wafers
outside of the region defined by the head and the bowl,
that interpretation would require us to ignore its state-
ment requiring the tool to be capable of effective gas
processing - a statement that is divorced from any con-
cept of “containing” the wafer and processing chemical in
any particular processing space. We therefore find that
Semitool expressly disclaimed coverage under the ‘308
patent of any wafer processing tool that cannot effec-
tively utilize the gas phase of a processing chemical. See
Southwall, 54 F.3d at 1576, 34 USPQ2d at 1676.
We reach the same conclusion with respect to the
“substantially enclosed” limitation in the ‘708 patent.
“When multiple patents derive from the same initial
application, the prosecution history regarding a claim
limitation in any patent that has issued applies with
equal force to subsequently issued patents that contain
the same claim limitation.” Elkay Mfg. Co. v. Ebco Mfg. Co.,
192 F.3d 973, 980, 52 USPQ2d 1109, 1114 (Fed.Cir.1999)
(citing Jonsson v. The Stanley Works, 903 F.2d 812, 817-18,
14 USPQ2d 1863, 1863-69 (Fed.Cir.1990)). Thus, Semi-
tool’s relinquishment of subject matter during prosecu-
tion of the ‘310 patent applies with equal force to the °708
patent.
App. 12
Moreover, the specification of the ‘708 patent
expressly defines the “substantially enclosed” limitation
as follows:
The head 12 is loaded with wafer 20 which is
held in position by the wafer holder. The head is
positioned in sealing relationship with the bowl
14 or otherwise suitably adjusted to confine the
processing chamber against drafts and other
substantial leakages which might affect the
homogeneous vapor phase which is being pre-
sented for contacting and etching the processed
surface of the wafer 20.
‘708 patent, col. 9, II. 32-39 (emphasis added). We have
repeatedly stated that “claims must be read in view of the
specification. . . . Usually, it is dispositive; it is the single
best guide to the meaning of a claim term.” Vitronics, 90
F.3d at 1582, 39 USPQ2d at 1577. Thus, although the
claims of the ’708 patent do not require an air-tight seal,
the specification makes clear that they require a “seal”
that is sufficient to prevent “drafts and substantial leak-
ages” that might affect the ability of the processing chem-
ical to operate in the gas phase. We therefore conclude
that the district court correctly interpreted the “substan-
tially enclosed” limitation in the ’310 and ‘708 patents to
require a “seal” created by the head and the bowl that is
sufficiently closed to permit the effective gas processing
of a wafer using the gas phase of a processing fluid,
regardless whether the chemical to be used is in a gas or
liquid state.
4
4
‘
a
App. 13
2. The “Complementary Processing Head” Limita-
tion
Semitool also argues that the district court erred by
construing the “complementary base head” limitation in
the ’310 patent to require that the head and the bowl form
a single unitary structure when in the closed position
because neither the ordinary meaning of the word “com-
plementary,” the specification, nor the prosecution his-
tory support that interpretation. Novellus responds that
Semitool did not raise this argument before the district
court and therefore waived it on appeal.
Even assuming that Semitool failed to argue the
meaning of the “complementary processing head” limita-
tion to the district court, the court did construe that
limitation, and in light of the continued vitality of the
patent and the public interest in clarifying the scope of
the claims, we exercise our discretion to review the dis-
trict court’s construction of that limitation. We agree with
Semitool that the district court erred in its interpretation.
It is undisputed, and in fact was so determined by the
district court, that the head and the bowl in both patents
do not form a “gas-tight” seal. Semitool I at 19. Thus, the
head and the bowl cannot be said to form a “single
component” when in the closed position. Rather, as
taught in the ‘310 and ‘708 patents, the head is only
“complementary” to the extent that, when lowered into
the closed position, it forms a seal with the bowl that is
sufficiently closed to permit effective gas processing. We
therefore interpret the “complementary processing head”
limitation to be synonymous with the “substantially
closed” limitation, which does not require the head and
App. 14
the bowl to form a single component when in the closed
position.
3. The “Wafer Support” Limitation
Finally, Semitool argues that the district court erred
by construing the phrase “wafer support for detachably
supporting wafers thereon” in the ’708 patent to be a
means-plus-function limitation under 35 U.S.C. § 112, I 6
because that phrase is a generic expression for a variety
of well-known physical devices used to hold or grasp a
wafer and release it. Novellus responds that the phrase is
purely functional, and that because the claims do not
recite any specific structure for performing that function,
the district court properly construed that term to be a
means-plus-function limitation.
The failure to use the word “means” creates a pre-
sumption that § 112, J 6 does not apply, which can be
rebutted by both intrinsic evidence and any relevant
extrinsic evidence. Personalized Media, 161 F.3d at 703, 48
USPQ2d at 1886 (citing Mas-Hamilton Group v. LaGard,
Inc., 156 F.3d 1206, 1213, 48 USPQ2d 1010, 1016
(Fed.Cir.1998)). “In deciding whether [the] presumption
has been rebutted, the focus remains on whether the
claim as properly construed recites sufficiently definite
structure to avoid the ambit of § 112, 7 6.” Id. (citing Sage
Prods., Inc. v. Devon Indus., Inc., 125 F.3d 1420, 1427- 28, 44
USPQ2d 1103, 1109 (Fed.Cir.1999)).
We agree with Semitool that the district court erred
in construing the phrase “wafer support for detachably
supporting wafers thereon” to be a means-plus-function
limitation. The “wafer support” limitation does not use
App. 15
the word “means,” and therefore this limitation is pre-
sumed not to invoke § 112, { 6. Id. Furthermore, none of
the intrinsic or extrinsic evidence rebuts this presumption
because the term “support” is a sufficient recitation of
structure. The word “support” is a well-known term in
the mechanical arts for a number of objects capable of
providing some type of foundation for another object. See
Knight’s American Mechanical Dictionary 2455 (1876)
(defining “structure” as “[a] term of very general import.
A stand, frame, or bed for an . . . apparatus, implement,
tool”). The fact that the term “support” does not speci-
fically evoke a particular structure does not change the
fact that it does connote structure. See Greenberg v. Ethicon
Endo-Surgery, 91 F.3d 1580, 1583, 39 USPQ2d 1783, 1786
(Fed.Cir.1996) (stating that a claim term “need not call to
mind a single well-defined structure” to fall within the
ambit of § 112, { 6, and that the relevant inquiry is
whether the claim term “has a reasonably well under-
stood meaning in the art”). We conclude that the “wafer
support” limitation conveys sufficient structure to pre-
clude the application of § 112, { 6, and therefore interpret
that limitation to mean any device capable of both hold-
ing or grasping a semiconductor wafer and releasing it at
some later time.
D. Infringement
With respect to infringement, Semitool argues that
even under the district court’s claim construction, its
grant of summary judgment of noninfringement cannot
stand. Semitool contends that the air being drawn into
the plating cell. through the annular gap in the SABRE
App. 16
systems forms a fluid “seal” that satisfies the “substan-
tially enclosed” limitation. Semitool also argues that tests
performed by its experts created a factual dispute as to
whether the SABRE systems can effectively process
wafers using the vapor phase of a processing chemical.
Novellus responds that the air flow in the SABRE
systems cannot satisfy the “substantially enclosed” lim-
itation because the plain language of the claims requires
that the head and the bow! form the “seal” in the process-
ing chamber. Novellus also contends that prosecution
history estoppel precludes a finding that the air flow in
its SABRE systems infringes under the doctrine of equiv-
alents. Finally, Novellus argues that Semitool did not
establish a genuine issue of material fact as to whether
the SABRE systems are capable of effective gas process-
ing because it failed to present adequate evidence regard-
ing repeatability, uniformity, and low contamination —
qualities of wafer processing that its patents taught were
crucial.
We agree with Novellus that the district court prop-
erly granted summary judgment of noninfringement. The
claims of both patents plainly require that the “substan-
tially enclosed processing space” be formed by the head
and the bowl. ’310 patent, col. 10, II. 12-17; ‘708 patent,
col. 27, II. 54-58. The structure most closely correspond-
ing to the head and the bowl in the SABRE systems is the
plating cell and the drive assembly, and therefore it is
these components, and not air flow, that must form the
required “seal” in order to literally satisfy the “substan-
tially enclosed” limitation. Consequently, the air flow in
the accused devices cannot literally satisfy that limitation.
App. 17
Neither does the air flow in the SABRE systems
satisfy the “substantially enclosed” limitation under the
doctrine of equivalents. It is undisputed that that limita-
tion was added during prosecution of the ‘310 patent to
overcome the Aigo reference. When an amendment nar-
rows the scope of a claim for a reason relating to paten-
tability, no range of equivalents is available for that
amended claim limitation. Festo Corp. v. Shoketsu Kinzoku
Kogyo Kabushiki Co., 234 F.3d 558, 569, 576, 56 USPQ2d
1865, 1872, 1878 (Fed Cir.2000) (en banc). Thus, because
the “substantially enclosed” limitation was added for a
reason relating to patentability, Semitool is barred by
prosecution history estoppel from arguing that anything
other than the head and the bowl can form a “seal”
satisfying that limitation.
Semitool is similarly barred from obtaining any range
of equivalents for the “substantially enclosed” limitation
in the ‘708 patent. As indicated above, the prosecution
history of the ’310 patent is also relevant to the ‘708
patent, see Elkay, 192 F.3d at 981, 52 USPQ2d at 1115, and
thus Semitool’s addition of the “substantially enclosed”
limitation during prosecution of the ‘310 patent for a
reason relating to patentability precludes the application
of the doctrine of equivalents to that same limitation in
the ’708 patent, see Festo, 234 F.3d at 569, 576, 56 USPQ2d
at 1872, 1878. We therefore conclude that the air flow in
the SABRE systems does not satisfy the “substantially
enclosed” limitation either literally or under the doctrine
of equivalents.
Moreover, as stated above, Semitool made clear in its
prosecution that the “substantially enclosed” limitation
requires a “seal” created by the head and the bowl that is
App. 18
sufficiently closed to permit effective gas processing. In
that regard, Semitool expressly defined effective gas pro-
cessing in the specification of the ‘708 patent as entailing
four elements: (1) a high etch rate; (2) uniformity; (3)
repeatability; and (4) low contamination. ‘708 patent, col.
4, Il. 1-6.2 As noted by the district court, the tests per-
formed by Semitool’s experts only establish a genuine
issue of material fact that high etch rates could be
achieved in the SABRE systems when using the gas phase
of a processing fluid. The district court determined that
Semitool only offered speculative evidence of uniformity,
and that it presented no evidence whatsoever regarding
repeatability and contamination. Semitool II at 22. We find
no error in the court’s determination that Semitool failed
to establish a genuine issue of material fact that the
SABRE systems are capable of effective gas processing,
and therefore conclude that those devices do not satisfy
the “substantially enclosed” limitation of both patents.
Given our affirmance of the district court’s grant of
summary judgment of noninfringement on the basis that
Novellus’s SABRE systems do not satisfy the “substan-
tially enclosed” limitation of either patent at issue, we
need not address whether those devices satisfy the “com-
plementary processing head” and “wafer support” limita-
tions of the ‘708 patent under their proper constructions
set forth above.
2 With respect to the ‘310 patent, because that patent has
the same parent as the ‘708 patent and the parties have not
argued that any meaningful difference exists between the
“substantially enclosed” limitations in those patents, the same
infringement analysis applies.
App. 19
We have considered Semitool’s remaining arguments
and find them to be unpersuasive.
CONCLUSION
Because the district court did not err in granting
summary judgment that the ‘310 and ‘708 patents were
not infringed, we affirm.
App. 20
UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
SEMITOOL, INC., a
Montana corporation,
Plaintiff, No. C-98-3089 DLJ
ORDER
(FILED MAR 17 2000)
V.
NOVELLUS SYSTEMS, INC.,
a California corporation,
Defendant.
ee ee ee eee ee
On February 18, 2000, the Court heard argument on
Novellus Systems, Inc.’s motion for summary judgment
on the infringement claim of Semitool. Keith V. Rockey
and William E. Trautman appeared on behalf of plaintiff;
Bruce D. Kuyper and Samuel K. Lu appeared for defen-
dant. Having considered the arguments of counsel, the
papers submitted, the applicable law, and the record in
this case, the Court hereby GRANTS defendant’s motion
for summary judgment.
I. BACKGROUND
A. Factual Background and Procedural History
Semitool, Inc. (Semitool) filed an action in this Court
on August 10, 1998 against Novellus Systems, Inc. (Nov-
ellus). The suit alleges that the SABRE equipment, which
is manufactured by Novellus for processing substrates
such as semiconductor wafers, infringes United States
Patents 5,222,310 (the ‘310 patent) and 5,377,708 (the ‘708
patent). The specific claims at issue are claims 25, 32-37,
50, and 55-56 of the ‘708 patent and claims 1 and 3-5 of
wo ee etna Re A aL OP Pie Be
‘ ee
App. 21
the ‘310 patent. Semitool owns the rights to the ‘310 and
‘708 patents. Having alleged willful infringement, Semi-
tool seeks a permanent injunction, treble damages, costs
and attorney’s fees, and pre- and post-judgment interest.
In answer, Novellus alleges the affirmative defenses
of invalidity and failure to mark as required by 35 U.S.C.
§ 287. As a counterclaim, Novellus seeks a declaratory
judgment of noninfringement and invalidity for failure to
comply with the requirements of 35 U.S.C. §§ 102, 103,
and 112.
Both the ’708 and ’310 patents are directed at the
design of an apparatus in which the processing steps for
manufacturing semiconductor wafers are carried out.
Semitool is a company that manufactures tools used in
the processing of wafers.
A semiconductor commonly begins life as a silicon
wafer that undergoes a series of chemical and electro-
chemical processes. Although the steps may occur in
different orders and may be repeated, the following
explanation of the steps is somewhat typical.
The first step involves oxidizing the surface of the
silicon to create an insulated layer. In the next step a
patterned layer is formed over the insulated layer so that
only select portions of the insulated layer are exposed.
An etchant is then applied to remove the exposed por-
tions of the insulated layer. The exposed surface of the
silicon is doped with a chemical substance that affects the
electrical characteristics of the silicon. In the next phase, a
conducting metal is electrochemically deposited to estab-
lish electrical connections between various areas of the
App. 22
semiconductor. In between steps, the wafer may be strip-
ped and cleaned to remove contaminants that might
adversely affect subsequent processes.
Different processes have different engineering con-
cerns. When etching a wafer using the highly corrosive
vapor of hydrofluoric acid, the design must guard against
contamination from the ambient air while also shielding
equipment outside the vapor bath from the corrosive
effects of the vapor. By comparison, when using liquid
processing, the primary concern is to protect the liquid
and the wafer from contaminants.
The ’708 and ’310 patents are directed at a tool for
single-wafer processing. The tool is an automated, multi-
station wafer processor tool in which various chemical
and electrochemical processes can be carried out.
The ’708 patent sets forth an automated wafer pro-
cessing tool which consists primarily of a movable head
that is capable of “mating” with a processing bowl. The
movable head contains a structure for holding the wafer
such that the wafer face to be processed is positioned
facing downward into the bowl. This wafer support is
mounted on a drive shaft that is connected to a motor
such that the wafer support can be rotated.
The processing bowl, in the preferred embodiment,
contains a pool of chemical used to process the wafer. For
example, if the process to be performed is etching, the
chemical might be hydrofluoric acid (HF) in a form that
gives off vapors that etch the surface of the wafer. A
system for supplying and recycling the processing chemi-
cal is part of the bowl’s design. The bowl can also be
2
a
a
*
%
~
App. 23
designed with ports through which drying gases can be
introduced into the bowl.
A pneumatic cylinder is provided to raise and lower
the processing head over the processing bowl so that
wafers may be inserted to be processed and removed
after processing.
The entire processing unit, consisting of the head, the
bowl, and the pneumatic cylinder, is mounted inside a
| cabinet. This cabinet is designed so that the surrounding
: environment can be controlled for contaminants, includ-
ing particulates, humidity, and other elements in the
ambient air that can adversely affect processing. The
cabinet can be designed to contain multiple processing
chambers. A robotic transfer unit may be used to move
wafers from a wafer inventory to a processing chamber
and between processing chambers.
ait Ba thn 1 ss te aw Ba Me, Pace hea
The ’310 patent discloses a similar processing unit.
This patent reveals a chamber that is defined by a pro-
cessing base and a complimentary processing head. The
head and base are movable relative to each other.
On August 27, 1999, the Court held a claim construc-
tion hearing to determine the meaning of the relevant
claim language of the ’708 and ‘310 patents. At the claim
construction hearing, one of the disputes between the
parties concerned the interpretation of the phrase “sub-
stantially enclosed processing chamber,” as used in
claims 25 and 50 of the ’708 patent, and the related phrase
“substantially enclosed processing space,” as used in
claim 1 of the ’310 patent. Both parties agreed that this
language limited all the claims at issue in the suit.
App. 24
The relevant element disclosed in claims 25 and 50,
which use identical language, recites:
at least one processing head mounted for con-
trolled movement between at least one process-
ing position wherein the processing head is in
an operative relationship with the processing
bow] to define a substantially enclosed process-
ing chamber, and at least one loading position
wherein the processing head is removed from
the processing bowl for loading or unloading
wafers from at least one processing head.
The relevant claim language for claim 1 of the ‘310 patent
recites the following element:
at least one processing base and a complemen-
tary processing head mounted to the frame, the
processing base and complementary processing
head being moveable relative to one another
between a closed relative position forming a
substantially enclosed processing space for con-
taining processing fluids between the processing
base and the processing head and an open rela-
tive position allowing transfer of wafers to and
from the processing head.
Novellus contended that the phrases “substantially
enclosed processing chamber” and “substantially
enclosed processing space” must be interpreted as requir-
ing an “essentially gas-tight processing space” that is
isolated from the surrounding environment. Semitool
argued that “substantially” means that the processing
head’s relationship to the processing bowl is such that the
chamber is nearly completely surrounded, but not
entirely.
App. 25
On September 24, 1999, the Court issued its order
construing the relevant claims. In the Order of September
24, 1999, the Court specifically addressed the appropriate
scope and meaning of the phrases “substantially enclosed
processing chamber” and “substantially enclosed pro-
cessing space.” In determining the proper meaning of
these phrases, the Court first noted that when the ‘310
patent was before the patent examiner, the examiner ini-
tially rejected the claims as obvious over the Aigo patent,
and that this was the reason Semitool added the “sub-
stantially enclosed” phrase to its claims. The Court found
that:
The Aigo reference consists of a base and a
wafer holder that sits on the base and_ delivers
the wafer to the base for processing. In the
examiner’s view, the Aigo reference rendered
obvious the design of a head over a base. ‘310
file wrapper at 0000101. To overcome this objec-
tion the applicant added the phrase “substan-
tially enclosed” to the claim language. . . . In
justifying this addition as sufficient to overcome
the objection, the applicant contended that the
Aigo device was one in which the fluid was
designed to be pumped up through the base to
the wafer surface and then to overflow the walls
of the base. Thus Aigo did not contemplate
keeping the fluid to be used confined within a
space created by the combination of head and
base. In contrast, the ‘310 apparatus was
designed to contain the fluid in use inside the
processing space. According to the applicant,
the position of the head over the chamber in the
‘310 design “allows the processing space to con-
tain the gaseous or liquid processing fluids. The
Aigo reference has no ability to enclose the
App. 26
wafer and cannot process effectively using
gases.” Lu Decl., Ex. L at 5. The applicant also
contended that an advantage of an enclosed
space was that it minimized the risk that the
processing fluid would be contaminated. ‘310
file wrapper at 0000098; Lu Decl., Ex. Lat 5. The
specification of the ‘708 patent also emphasizes
the use of an enclosed space to shield processing
fluids from contaminants. ’708 patent, col. 4.
Order of September 24, 1999 at 14-15. The Court then
determined that the proper construction of the phrase
“substantially enclosed processing chamber” or “space”
is that:
when the head is in a closed position over the
bowl the head and bowl substantially enclose a
processing chamber or space such that they
form a seal which is sufficiently closed to permit
the effective processing of a wafer using the gas
phase of a processing chemical known in the art,
regardless of whether the chemical to be used at
any given time is in a gas or liquid state.
Order of September 24, 1999 at 18.
Based on this claim construction order, Novellus
moved for summary judgment of non-infringement on
December 17, 1999. Semitool filed an opposition on Janu-
ary 24, 2000.
B. Legal Standard
The Federal Rules of Civil Procedure provide for
summary adjudication when “the pleadings, depositions,
answers to interrogatories, and admissions on file,
together with the affidavits, if any, show that there is no
App. 27
genuine issue as to any material fact and that the party is
entitled to a judgment as a matter of law.” Fed. R. Civ. P.
56(e).
Procedural matters not unique to patent law are
decided by applying the law of the relevant regional
circuit. See Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d
1270, 1278 (Fed. Cir. 1995).
In a motion for summary judgment, initially it is the
moving party’s burden to establish that there is “no genu-
ine issue of material fact and that the moving party is
entitled to judgment as a matter of law.” Fed. R. Civ. P.
56(c); British Airways Board v. Boeing Co., 585 F.2d 946, 951
(9th Cir. 1978). Subsequently, “[i]f the party moving for
summary judgment meets its initial burden of identifying
for the court those portions of the materials on file that it
believes demonstrates the absence of any genuine issues
of material fact,” the burden of production then shifts so
that “the non-moving party must set forth, by affidavit or
as otherwise provided in Rule 56, ‘specific facts showing
that there is a genuine issue for trial.’ ” T.W. Elec. Service,
Inc. v. Pacific Elec. Contractors Ass'n, 809 F.2d 626, 630 (9th
Cir. 1987) (citing Celotex Corp. v. Catrett, 477 U.S. 317
(1986)); Kaiser Cement Corp. v. Fischbach & Moore, Inc., 793
F.2d 1100, 1103-04 (9th Cir. 1986).
“To prove literal [patent] infringement, the patentee
must show that the accused device contains every limita-
tion in the asserted claims. If even one limitation is miss-
ing or not met as claimed, there is no literal
infringement.” Mas-Hamilton Group v. LaGard, Inc., 156
F.3d 1206, 1211 (Fed. Cir. 1998) (citations omitted). In the
absence of a genuine issue of material fact, summary
App. 28
judgment of no literal infringement is properly granted if
no reasonable jury could determine that the accused
device meets every limitation of the properly construed
claims. See Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d
1473, 1476 (Fed. Cir. 1998).
If some limitations of the claim are not literally satis-
fied, infringement may be found in appropriate circum-
stances under the doctrine of equivalents. See Pennwalt
Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 934-35 (Fed.
Cir. 1987). “Under the doctrine of equivalents, infringe-
ment may be found (but not necessarily) if an accused
device performs substantially the same overall function
or work, in substantially the same way, to obtain substan-
tially the same overall result as the claimed invention.”
Id. at 934. “The doctrine of equivalents must be applied to
individual elements of the claim, not to the invention as a
whole.” Warner-Jenkinson Co. v. Hilton Davis Chem. Co.,
520 U.S. 17, 29 (1997).
Like literal infringement, the issue of patent infringe-
ment under the doctrine of equivalents can be amenable
to summary judgment. “Where the evidence is such that
no reasonable jury could determine two elements to be
equivalent, district courts are obliged to grant partial or
complete summary judgment.” Id. at 39 n.8.
The application of the doctrine of equivalents to a
claimed element may be limited by prosecution history
estoppel. The application of prosecution history estoppel
is a question of law. See Loral Fairchild Corp. v. Sony Corp.,
181 F.3d 1313, 1323 (Fed. Cir. 1999), petition for cert. filed,
68 U.S.C.W. 3274 (U.S. Oct. 14, 1999) (No. 99-653). “Pros-
ecution history estoppel acts as one check on application
App. 29
of the doctrine of equivalents, by precluding a patentee
from regaining, through litigation, coverage of subject
matter relinquished during prosecution of the application
for the patent.” Wang Lab., Inc. v. Mitsubishi Elecs. Am.,
Inc., 103 F.3d 1571, 1577-78 (Fed. Cir. 1997) (citations
omitted). Prosecution history estoppel applies to subject
matter surrendered as a result of amendments to over-
come patentability rejections, or as a result of argument
to secure the allowance of a claim. See Loral Fairchild, 181
F.3d at 1322. “When a claim has been narrowed by
amendment for a ‘substantial reason related to paten-
tability,’ such as to avoid a prior art rejection, the pat-
entee may not assert that the surrendered subject matter
is within the range of equivalents.” Regents of the Unv. of
Calif. v. Eli Lilly and Co., 119 F.3d 1559, 1573 (Fed. Cir.
1997). A prosecution history estoppel for a claim limita-
tion in an issued patent applies with equal force to a
subsequently issued patent that is derived from the same
patent application and that contains the same claim lim-
itation. See Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973,
981 (Fed. Cir. 1999).
II. DISCUSSION
Novellus argues that based upon the Court's con-
struction of the claim language “substantially enclosed
processing chamber” and “substantially enclosed pro-
cessing space,” the Court should enter summary judg-
ment in favor of Novellus. For the purposes of this
summary judgment motion, the Court must determine if
there is a genuine issue of material fact as to whether
Novellus’ accused products, the SABRE and SABRExT,
literally or under the doctrine of equivalents, infringe
i
ee Ee te ee
App. 30
upon the Court's interpretation of the relevant language
that “when the head is in a closed position over the bowl
the head and bowl substantially enclose a processing
chamber or space such that they form a seal which is
sufficiently closed to permit the effective processing of a
wafer using the gas phase of a processing chemical
known in the art.” Order of September 24, 1999.
A. The SABRE System
Novellus’ SABRE system is an automated machine
that applies a thin film of extremely pure copper metal
onto silicon wafers during the manufacture of integrated
circuits, commonly known as computer chips. This pro-
cess is known as electrochemical deposition or plating.
Novellus has manufactured and sold two versions of
the SABRE system, the original SABRE and the SABRExT.
See Evan Patton Decl. { 2. The original SABRE is capable
of processing only 200 mm size wafers. See Patton Decl.
J 2. The SABRExT is capable of processing either 200 mm
or 300 mm size wafers. See Patton Decl. { 2.
For the purposes of this motion, Novellus provides a
basic explanation of how the process of electrochemical
deposition occurs in the two versions of SABRE system,
and the Court notes that Semitool accepts this explana-
tion also for the purposes of this motion. See Samuel Lu
Decl. Ex. M at J 14-21 (George R. Tynan Decl.), Ex. L. at
{ 33-40 (Douglas L. Peltzer Decl.), and Ex. J (illustrations
of the process). First, electrochemical deposition occurs in
the plating cell of the SABRE system (characterized by
Semitool as “the bowl”). The plating cell comprises a
splash shield, an anode chamber, an exhaust tube inlet,
App. 31
and three concentric tanks. Silicon wafers to be plated are
held by the “clamshell”, which is attached by a shaft to
the drive assembly (characterized by Semitool as “the
head”).
The clamshell and the drive assembly are moved up
and down above the plating cell. In the up or “loading
position,” wafers are loaded onto and unloaded from the
clamshell through the “mail slot” on the side of the
splash shield. Once a wafer has been loaded, the clam-
shell is lowered until the wafer touches the top of the
liquid plating solution in the inner plating tank. This is
the closed or “plating position.” The drive assembly then
spins the clamshell and wafer together at the surface of
the plating solution. Plating occurs when an electrical
current travels through the plating solution and the
wafer, depositing copper ions in the plating solution onto
the surface of the wafer as pure copper metal.
In the closed position, there is no direct contact
between the outer wall of the drive assembly (the head)
and the interior walls of the plating cell (the bowl).
Instead, there is an annular gap between the outer wall of
the drive assembly and the interior wall of the plating
cell. This annular gap is .25 inches in the SABRE version
and .815 inches in the SABRExT version. See Patton Decl.
Ti 8-9.
B. Novellus’ Summary Judgment Arguments
Novellus makes two arguments as to why the SABRE
system does not infringe the “substantially enclosed”
claim language. First, in a closed position, Novellus
argues that the head and the bowl do not form a “seal.”
ca
App. 32
Second, Novellus asserts that due to the annular gap
between the head and the bowl and the mail slot opening,
effective gas processing is impossible within the area
defined by the SABRE system.
1. No seal
In support of its argument that no “seal” exists, Nov-
ellus provides that the combined area of the annular gap
and the mail slot openings amounts to 19.2 square inches
for the SABRE version and 38.6 square inches for the
SABRExT version. See Patton Decl. {{ 8-9. Novellus con-
tends that Semitool has admitted that the SABRE system
“does not include a mechanical seal performed by direct
contact between the head and processing bowl.” Lu Decl.
Ex. D (Semitool’s Response to Novellus’ Request for
Admission No. 19).
Novellus next argues that not only does the SABRE
eystem have gaps allowing ambient air to enter the pro-
cessing chamber, the system has an exhaust system
designed to draw air into the plating cell (the bowl). See
Lu Decl. Ex. D (Semitool’s Response to Novellus’ Request
for Admission No. 22). Novellus presents the findings of
Professor George Tynan who states that air passes
through the plating cell (the bowl) at 40.7 cubic feet per
minute in the SABRE version and at 45.4 cubic feet per
minute in the SABRExT version. See Tynan Decl.
{1 24-25. Novellus claims that this air flow is equivalent
to exchanging all of the air in an 8 foot high, 8 foot long,
and 8 foot wide room every 13 minutes for SABRE ver-
sion and every 11 minutes for the SABRExT version.
Novellus argues that although the Court has found that
A) Oe ca ted neem Babee PES fe BAL a tek Mead eb * wt TS ink ee
App. 33
“some leakage is permitted,” that this amount of air flow
cannot qualify as “some leakage.”
Semitool admits that there is no mechanical seal
between the head and the bowl in the SABRE system,
however, Semitool argues that a mechanical seal is not
required by the Court’s claim construction order and is
directly inconsistent with the specification of its patents.
Semitool points out that there are several different kinds
of seals between two surfaces besides direct contact. For
example, Semitool asserts that the flow of air can be
controlled by means of a tortuous path. In the case of the
SABRE system, Semitool specifically contends that the air
flowing into the plating cell (the bowl) constitutes a con-
tainment mechanism or seal keeping the fluid (or hypo-
thetically gas) to be used within the processing space. See
Polit Decl. Ex. 4 (335-37) and Ex. 5 (365).
In its reply brief, Novellus points out that Semitool’s
position that the air flow constitutes the seal admits that
the head and the bow! do not form the seal. Novellus
further asserts that if the exhaust is turned off removing
the air flow, the head and the bowl are in a closed
position with no seal at all.
The Order of September 24, 1999 directly states that
the head and bowl must form a seal. The evidence pre-
sented to the Court unquestionably establishes that the
plating cell (the bowl) and the drive assembly (the head)
in the SABRE system do not form a seal. There is an
annular gap in both versions plus an opening defined by
the mail slot. At the February 18, 2000 hearing on Nov-
ellus’ motion for summary judgment, Semitool conceded
that the head and bowl do not form a seal. Instead,
App. 34
Semitool made clear that its argument is that it is the air
flowing within the area defined by the head and the bowl
that acts as a seal in the SABRE system. The Court finds
that the head and the bowl in the SABRE system do not
form a seal and therefore the SABRE system does not
literally infringe the “substantially enclosed” claim lan-
guage as a matter of law.
The Court further finds that any argument by Semi-
tool that a seal formed by air flowing through the area
defined by the SABRE system’s head and bowl is equiva-
lent to a seal formed by the head and the bowl is not
supported by Semitool’s evidentiary showing and is
estopped as a matter of law due to the prosecution his-
tory of the ‘310 patent. See Loral Fairchild, 181 F.3d at
1322-23.
During the patent prosecution of the ‘310 patent, the-
limiting claim language “substantially enclosed” was
added in order to overcome any objections from the PTO
that the head over the bowl configuration was rendered
obvious by the Aigo patent. Semitool asserted to the PTO
that the Aigo patent did not contemplate containing the
processing fluid within a space formed by the head and
the bowl, and that the position of the head and the bowl
in the ’310 patent allows the processing space to contain
gaseous or liquid processing fluids.
At the February 18, 2000 hearing, Semitool speci-
fically argued that if the tool in Figure 1 of the Aigo
patent used gaseous vapors to process silicon wafers, that
tool would infringe the “substantially enclosed” claim
language of the Semitool patents. Semitool explained
that, similar to the SABRE system, the air flow running
App. 35
through the area defined by the head and the bowl of the
tool in Figure 1 would act as seal to permit gas process-
ing.
The Court finds that air flow cannot be an equivalent
for a seal formed by the head and the bow] due to the fact
that the PTO history establishes that the claim language
in the ‘310 patent at issue was added to limit the way the
head and bowl are positioned. If the position of the head
and the bowl in the tool of Figure 1 of the Aigo patent is
sufficient to effectively process a wafer using the gas
phase of chemical due to a seal formed by the air flow,
this interpretation of “substantially enclosed” is estopped
due to the fact that is would effectively read this claim
language out of Semitool’s patents. Semitool added the
“substantilly enclosed” language to overcome the Aigo
prior art rejection, it cannot now reclaim the Aigo subject
matter through the doctrine of equivalents. See Wang, 103
F.3d at 1578 (finding that arguments and amendments
made to secure allowance of a claim, especially those
distinguishing prior art, presumably give rise to prosecu-
tion history estoppel).
2. Effective gas processing is impossible in the
SABRE system
The Court next turns to Novellus’ argument that
effective processing using the gas phase of a chemical is
impossible in the SABRE system. Novellus states that the
SABRE system is designed to facilitate the making of
computer chips through the electrochemical deposition of
copper metal onto a silicon wafer, and is not designed to
use gas to process a silicon wafer. See Lu Decl. Ex. O
App. 36
(Patton Depo. TR:261). Novellus asserts that the system
has never been used for gas processing. See id. Novellus
points out that the Court has found that “electrochemical
deposition of copper metal onto a wafer may be per-
formed without any need to use a sealed chamber to
exclude ambient air.” Order of September 24, 1999 at 13.
Novellus also points out that the Court further noted that
chemical gas processing can be materially affected by
ambient air flow. See id. at 13-14.
Novellus contends that the specifications of the
SABRE system permits ambient air flow (established
without dispute by their experts) which would contami-
nate any attempt to use the plating cell for gas process-
ing.
Novellus’ expert Douglas Peltzer states three reasons
why the level of air drawn in by the exhaust in the
SABRE system is incompatible with gas processing. First,
gas processing is extremely sensitive to contamination,
particularly airborne contamination in the form of dust
and other particles. See Peltzer Decl. {7 24, 45. Novellus
argues that the undisputed airflow turbulence in the plat-
ing cell would inevitably cause a mixing of ambient air
with any processing gases inside the plating cell. See
Reply Brief Lu Decl. Ex. F (Supp. Tynan Decl. ¥ 9).
Second, gas processing is prone to uniformity and repeat-
ability problems caused by variations in the concentra-
tions of processing vapors across the face of the wafer
being processed, and thus the system must provide assur-
ance of homogeneous presentation of the reactant gas. See
Peltzer Decl. {J 25-28, 45. Peltzer states that the drafts,
leakages, and eddies of ambient air present in the SABRE
system would have an adverse affect on the homogeneity
App. 37
of the gas vapors across the face of the wafer. See Reply
Brief Lu Decl. Ex. E (Supp. Peltzer Decl. {¥ 7-8). Peltzer
offers that a lack of homogeneity is deleterious to unifor-
mity. See id. Third, gas processing makes use of vapors
that are costly, not only to purchase but also to dispose of
safely without harm to workers or the environment. See
id. at J 29, 45.
Novellus points to the fact that the specification sec-
tion of the ‘708 patent Column 4, in discussing the objec-
tives and advantages of the invention states “[t]hus there
remains a strong need in the art for gaseous HF and other
chemical processing which will provide uniform and
repeatable results with the highly effective etching rates
while achieving low contamination and particle counts.”
Novellus contends, therefore, that effective gas process-
ing must mean as a matter of law that: (1) an acceptable
processing or etch rate has been achieved, (2) there is
acceptable uniformity across the wafer, (3) repeatability
(uniformity from one wafer to the next) is occurring, and
(4) the particle count or contamination has been kept to a
minimum.
Semitool argues that it has generated evidence which
establishes that there is a genuine issue of material fact as
to whether the SABRE system can effectively permit gas
processing. First, Semitool contends that the opinions of
Novellus’ expert witness Peltzer have been discredited
through cross-examination. Semitool contends that Pelt-
zer admitted his uncertainty as to whether or not HF
vapor etching, a type of gas processing, can be done in
the presence of air. See Polit Decl. Ex. 8 (Peltzer Depo.
TR:144). Further, Semitool contends that Peltzer exposed
App. 38
his limited knowledge of HF vapor processing during the
his deposition.
Q. And you are aware of instances where HF vapor
etching is carried out with HF vapor plus air, are you
not?
A. Iam not sure. In the HF vapor environment I am
not that familiar. My understanding in general is that
the air is eliminated.
Id. (Peltzer Depo. TR:150). Finally, Semitool contends that
Peltzer based his conclusions that the SABRE’s exhaust
system would affect the concentration of vapors across
the face of the silicon wafer without actually looking at
the actual conditions within the SABRE system. See id.
(Peltzer Depo. TR:154-57). Specifically, Semitool points to
a lack of knowledge concerning: (1) the relative mass of
air moving below point B on a diagram of the SABRE
system submitted as Exhibit 2 of Polit’s declaration verus
[sic] the mass of air exhausted from the annulus between
points A and B on the diagram and (2) whether the air
flow remains close to the splash shield or top hat as it
moves downward in the plating cell. See id.
Next, Semitool offers evidence from two experts that
gas processing of silicon wafers can occur within the
SABRE system, accepting the measurements submitted by-
Novellus as true for the purpose of this motion. First,
Semitool’s processing engineer Eric Bergman carried out
a series of tests using a modified Equinox, a device used
by Semitool as a gas processing tool. See Polit Decl. Ex. 10
(Bergman Decl. {7 4-11). Bergman operated the modified
Equinox with air flows greater than the measurements of
SABRE system’s exhaust flows produced by Novellus’
expert Tynan. See id. Bergman asserts that he obtained
App. 39
acceptable etching rates and, by his estimate although not
directly tested, acceptable etching uniformity as well. See
id. (Bergman Decl. {{ 14, 18-21). Bergman further states
that in many kinds of HF vapor etching, uniformity is not
a great concern, particularly in those applications where
etching is carried out to remove all of the silicon dioxide
present on the surface of the wafer. See id. (Bergman Decl.
{ 10).
Semitool then points out that Novellus’ expert, Pelt-
zer, was asked what would result if the tool diagramed in
Figure 1 of the ‘708 patent were provided with an exhaust
tube capable of providing exhaust velocities as measured
by Tynan, and then operated with the head in a “cracked”
position to leave an annular gap from 1/2 to 3/4 inch
between the head and the bowl. See Polit Decl. Ex. 8
(Peltzer Depo. TR:172-74). Peltzer responded:
I think as we described before because HF is
present and you are going to get some kind of
chemical action, some etching will occur, but the
rate of that etching and the local characteristics
of that etching are just beyond me. I would have
no confidence that system would be control-
lable. I would expect the etch rate to go down
substantially and expect the etch uniformity to
disastrously deteriorate.
Id. (Peltzer Depo. TR:174). Following up, Semitool then
asked Peltzer whether the same consequences would
result if a SABRE tool was used for HF etching to which
Peltzer replied in the affirmative. See id. Semitool, there-
~ fore, argues that Bergman’s results directly contradict the
conclusions of Novellus’ expert. ;
App. 40
Semitool next provides a study of the geometry of the
SABRE system conducted by Professor Allan Myerson.
Myerson concluded that the air flows in the SABRE sys-
tem plating cell should not disturb the boundary layer
between the HF gas and the silicon dioxide on the wafer
with which the HF reacts, which Semitool asserts is the
controlling question on whether the air flow interferes
with HF processing of the wafer in the SABRE system. See
Polit Decl. Ex. 12 (Myerson Decl. {1 9-15). Myerson then
constructed a simplified computer model of the flow
patterns in the SABRE system to test his conclusion.
Using the data from this computer model and Bergman’s
experimental evidence, Myerson asserts that the SABRE
system has the capability of etching with the HF chemi-
cal. See id. (Myerson Decl. {4 23-32).
As plaintiff, Semitool bears the burden of proving the
SABRE system infringes the claims of its ‘708 and ‘310
patents. Novellus has offered an expert opinion that the
amount of air flow in the SABRE system would prevent
effective gas processing. Semitool has responded by pro-
viding the opinions of two experts, both of whom had
conducted studies which they claim directly supports a
conclusion that effective processing of wafer can occur in
a machine with the characteristics of SABRE system using
the gas phase of a processing chemical.
The Court finds, however, that Semitool’s experts
have not established a genuine issue of material fact that
effective gas processing can occur within the SABRE sys-
tem. As specifically laid out in Column 4 of the ‘708
patent, effective gas processing entails four elements: a
high etch rate, uniformity, repeatability, and low contam-
ination. The tests conducted by Bergman and supported
a a aaa eR ine ea a ee,
App. 41
by Myerson’s model only establish a genuine issue of
material fact that high etch rates would be capable in the
SABRE system. Although Bergman claims that from the
data collected from his tests, he is able to estimate that
the uniformity achieved falls within acceptable levels,
Bergman offers speculative opinion only as to this issue,
as he did not directly test for uniformity. Novellus also
points out several flaws in the methodology underlying
Bergman’s speculations. Therefore, it appears to the
Court that the evidence identified by Semitool in support
of the remaining three criteria necessary to establish
effective gas processing is insufficient. The Court finds
that the evidence proffered by Semitool does not raise a
genuine issue of material fact on effective gas processing
and Semitool has failed to meet its burden of proof on
this issue.
In summary, there does not appear to be a genuine
issue of material fact that Novellus infringed the claim
language “substantially enclosed.” The SABRE system
does not literally infringe this language for two reasons:
(1) the plating cell (the bowl) and the drive assembly (the
head) do not form a seal and (2) Semitool has not met its
burden to show that effective gas processing can occur
within the SABRE system. Further, the SABRE system
does not infringe the claim language under a theory that
a seal formed by air flow is the equivalent of seal formed
by the head and bowl. First, Semitool, as with literal
infringement, has not met its burden in raising a material
issue of genuine fact that effective gas processing can
occur using air flow as a seal, and second, the prosecu-
tion history behind the inclusion of the “substantially
App. 42
enclosed” language in Semitool’s patents prevents Semi-
tool from taking a position that would effectively elimi-
nate the limitations imposed by this language.
III. CONCLUSION
For the foregoing reasons, the Court GRANTS Nov-
ellus’ motion for summary judgment.
IT IS SO ORDERED
Dated: March 17, 2000
/s/ D. Lowell Jensen
D. Lowell Jensen
United States District Judge
ee oe
App. 43
UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
SEMITOOL, INC., a
Montana corporation,
Plaintiff, No. C-98-3089 DLJ
ORDER
(FILED SEP 24 1999)
V.
NOVELLUS SYSTEMS, INC.,
a California corporation,
Defendant.
mee ee a ee eee ee
On August 27, 1999, the Court heard argument on
claim construction of the patents at issue in this suit.
Keith V. Rockey and William E. Trautman appeared on
behalf of plaintiff; Morgan Chu, Bruce D. Kuyper, Samuel
K. Lu, and Fernanda K. Lai appeared for defendant.
Having considered the arguments of counsel, the papers
submitted, the applicable law, and the record in this case,
the Court hereby construes the relevant claims as follows.
I. BACKGROUND
A. Factual Background and Procedural History
Semitool, Inc. (“Semitool”) filed an action in this
Court on August 10, 1998 against Novellus Systems, Inc.
(“Novellus”). The suit alleges that the SABRE equipment,
which is manufactured by Novellus for processing sub-
strates such as semiconductor wafers, infringes U.S. Pat-
ents 5,222,310 (“the ‘310 patent”) and 5,377,708 (“the ‘708
patent”). The specific claims at issue are claims 25, 32-37,
50, and 55-56 of the ‘708 patent and claims 1 and 3-5 of
the 310 patent. Semitool owns the rights to the ‘310 and
App. 44
‘708 patents. Having alleged willful infringement, Semi-
tool seeks a permanent injunction, treble damages, costs
and attorney’s fees, and pre- and post-judgment interest.
In answer, Novellus alleges the affirmative defenses
of invalidity and failure to mark as required by 35 U.S.C.
§ 287. As a counterclaim, Novellus seeks a declaratory
judgment of noninfringement and invalidity for failure to
comply with the requirements of 35 U.S.C. §§ 102, 103,
and 112.
Both the ‘708 and ‘310 patents are directed at the
design of an apparatus in which the processing steps for
manufacturing semiconductor wafers are carried out.
Semitool is a company that manufactures tools used in
the processing of wafers.
A semiconductor commonly begins life as a silicon
wafer that undergoes a series of chemical and electro-
chemical processes. Although the steps may occur in
different orders and may be repeated, the following
explanation of the steps is somewhat typical.
The first step involves oxidizing the surface of the
silicon wafer to create an insulated layer. In the next step
a patterned layer is formed over the insulated layer so
that only select portions of the insulated layer are
exposed. An etchant is then applied to remove the
exposed portions of the insulated layer. The exposed
surface of the silicon is doped with a chemical substance
that affects the electrical characteristics of the silicon. In
the next phase, a conducting metal is electrochemically
deposited to establish electrical connections between var-
ious areas of the semiconductor. In between steps, the
App. 45
wafer may be stripped and cleaned to remove contami-
nants that might adversely affect subsequent processes.
Different processes have different engineering con-
cerns. When etching a wafer using the highly corrosive
vapor of hydrofluoric acid, the design must guard against
contamination of the vapor from the ambient air while
also shielding equipment outside the vapor bath from the
corrosive effects of the vapor. By comparison, when using
liquid processing, the primary concern is to protect the
liquid and the wafer from contaminants.
The ‘708 and ’310 patents are directed at a tool for
single-wafer processing. The tool is an automated, multi-
station wafer processor tool in which various chemical
and electrochemical processes can be carried out.
The ‘708 patent sets forth an automated wafer proc-
essing tool which consists primarily of a movable head
that is capable of “mating” with a processing bowl. The
movable head contains a structure for holding the wafer
such that the wafer face to be processed is positioned
facing downward into the bowl. This wafer support is
mounted on a drive shaft that is connected to a motor
such that the wafer support can be rotated.
The processing bowl, in the preferred embodiment,
-contains a pool of chemical used to process the wafer. For
example, if the process to be performed is etching, the
chemical might be hydrofluoric acid in a form that gives
off vapors that etch the surface of the wafer. A system for
supplying and recycling the processing chemical is part
of the bowl’s design. The bowl can also be designed with
ports through which drying gases can be introduced into
the bowl.
App. 46
A pneumatic cylinder is provided to raise and lower
the processing head over the processing bowl so that
wafers may be inserted to be processed and removed
after processing.
The entire processing unit, consisting of head, bowl,
and pneumatic cylinder, is mounted inside a cabinet. This
cabinet is designed so that the surrounding environment
can be controlled for contaminants, including particu-
lates, humidity, and other elements in the ambient air that
can adversely affect processing. The cabinet can be
designed to contain multiple processing chambers. A
robotic transfer unit may be used to move wafers from a
wafer inventory to a processing chamber and between
processing chambers.
The ‘310 patent discloses a similar processing unit.
This patent reveals a chamber that is defined by a proc-
essing base and a complementary processing head. The
head and base are movable relative to each other.
B. Legal Standard
Patent infringement analysis consists of a two-step
process. See Cybor Corp. v. FAS Technologies, Inc., 138 F.3d
1448, 1454 (Fed. Cir. 1998). In the first step, the court
determines the appropriate scope and meaning of the
patent in a process known as claim construction. See id.
(citing Markman v. Westview Instruments Inc. (Markman II),
517 U.S. 370, 371-3 (1996)). The second step involves
comparing the properly interpreted claim to the accused
device to determine whether infringement exists. See
Markman v. Westview Instruments Inc. (Markman I), 52 F.3d
App. 47
967, 976 (Fed. Cir. 1995). Claim interpretation is a ques-
tion of law for the court to decide. See Markman II, 517
U.S. 370.
The scope and meaning of claim language is properly
constructed through the use of intrinsic and extrinsic
evidence. “The intrinsic evidence, and in some cases, the
extrinsic evidence, can shed light on the meaning of the
terms recited in the claim, either by confirming the ordi-
nary meaning of claim terms or by providing special
meaning for claim terms.” Renishaw Plc. v. Marposs Societa
Per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998).
Intrinsic evidence consists of the claims, the written
description of the specification including any relevant
drawings, and, if in evidence, the prosecution history. See
Wright Medical Tech. Inc. v. Ostoenics Corp., 122 F.3d 1440,
1443 (Fed. Cir. 1997). Extrinsic evidence is “that evidence
which is external to the patent and file history, such as
expert testimony, inventor testimony, dictionaries, and
technical treatises and articles, [and] prior art.” Bell &
Howell Document Management Prods. Co. v. Altek Sys., 132
F.3d 701, 706 n.5 (Fed. Cir. 1997). It is improper for a court
to consider extrinsic evidence when the intrinsic evidence
clearly construes the claim. See Altek, 132 F.3d at 706 n.5
(citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1584 (Fed. Cir. 1996)).
1. Intrinsic Evidence
The court first examines the intrinsic evidence to
derive the meaning and scope of a claim. See Markman I,
52 F.3d at 976. The claim construction inquiry begins and
ends in all cases with the actual words of the claim. See
App. 48
Abtox Inc. v. Exitron Corp., 122 F.3d 1019, 1023 (Fed. Cir.
_ 1997); Vitronics, 90 F.3d at 1582. These words are to be
given their ordinary meaning to one experienced in the
art, unless the patentee has assigned his own definition to
them. See York Prods., Inc. v. Central Tractor Farm & Family
Ctr., 99 F.3d 1568, 1572 (Fed. Cir. 1996). If the patentee has
elected to be his own lexicographer, the particular mean-
ing chosen must be stated in the specification “with rea-
sonable clarity, deliberateness, and precision” before it
can affect the claim. See Renishaw, 158 F.3d at 1249 (quot-
ing In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)). Also,
the meaning of a claim term will be construed to have the
same interpretation in every claim in which it is used
unless there is a clear indication otherwise. See Southwall
Tech. Inc. v. Cardinal IG Co., 54 F.3d 1570, 1579 (Fed. Cir.
1995).
If questions remain after examining the claims them-
selves, the claim language is next read in light of the
specification. See Vitronics, 90 F.3d at 1582; Markman I, 52
F.3d at 976. One may look to the written description to
define a term in a claim limitation, for a claim must be
read in view of the specification of which it is a part. See
Renishaw, 158 F.3d at 1248. “Usually, [the specification] is
dispositive; it is the single best guide to the meaning of a
disputed term.” Vitronics, 90 F.3d at 1582. However, if it is
not necessary to rely on a limitation in the specification to
interpret what the patentee meant by a particular term or
phrase in a claim, that limitation is “extraneous” and
cannot constrain the claim. See id. at 1249; Hoganas AB v.
Dresser Indus., Inc., 9 F.3d 948, 950 (Fed. Cir. 1993). “A
claim must explicitly recite a term in need of definition
App. 49
before a definition may enter the claim from the written
description.” Renishaw, 158 F.3d at 1248.
Thirdly, if questions remain after assessing the claims
in light of the specification, the Court may turn to the
prosecution history. See Vitronics, 90 F.3d at 1582. The
prosecution history contains the “undisputed public
record of proceedings in the Patent and Trademark
Office.” Markman I, 52 F.3d at 980. This record reveals the
patentee’s understanding of the claim and terms within
the claim at the time the patentee applied for the patent.
See id. Any interpretation that is provided or disclaimed
by the patentee during proceedings with the Patent and
Trademark Office shapes the claim’s scope. See id. at 1576;
Loctite Corp. v. Ultraseal, Ltd., 781 F.2d 861 (Fed. Cir. 1985).
“Claims may not be construed one way in order to obtain
their allowance and in a different way against accused
infringers.” Southwall, 54 F.3d at 1576. If prior art exists ir
the prosecution history, the court may examine this mate-
rial as intrinsic evidence. See Vitronics, 90 F.3d at 1582.
Prior art is useful because it-“gives clues as to what the
claims do not cover.” Id.
2. Extrinsic Evidence
Extrinsic evidence is “all evidence external to the
patent and prosecution history, including expert and
inventor testimony, dictionaries, and learned treatises.”
Markman I, 50 F.3d at 980. Generally, the proper meaning
of a claim should be clear without the introduction of
extrinsic evidence. See id. at 986. A court may not rely on
extrinsic evidence to clarify ambiguities in the claim lan-
guage. See id. Nor may extrinsic evidence be used to vary
App. 50
or contradict the terms of the claims or the specification.
See id.; Vitronics, 90 F.3d at 1584. “[I]f the meaning of the
disputed term is clear from the intrinsic evidence . . . it
cannot be altered or superseded by [extrinsic evidence].
Competitors are entitled to rely on the public record of
the patent... . ” Key Pharmaceuticals v. Hercon Labs Corp.,
161 F.3d 709, 716-17 (Fed. Cir. 1998).
However, external sources may be used to assist the
court, which may be unfamiliar with the relevant termi-
nology and lack the relevant technical expertise necessary
to understand the claim terms. See Markman I, 52 F.3d at
986. External sources can help the court “explain scien-
tific principles, the meaning of technical terms, and terms
of art that appear in the patent and the prosecution
history.” Id. The court may use technical treatises and
dictionaries at any time to form a better understanding of
the claim terms. See Vitronics, 90 F.3d at 1584 n.6. But a
dictionary definition may not be used if it contradicts the
meaning of the term found in the patent documents. See
id. Where there are several common meanings for a claim
term expressed in a relevant dictionary, the court must
rely on the patent disclosure “to point away ‘rom the
improper meanings and toward the proper nm aning.”
Renishaw, 158 F.3d at 1250.
Expert testimony may assist the court in understand-
ing “how a technician in the field, reading the patent,
would understand the claims.” Markinan I, 50 F.3d at 981.
However, “where the patent documents are unam-
biguous, expert testimony regarding the meaning of a
claim is entitled to no weight.” Vitronics, 90 F.3d at 1584.
The testimony of an inventor or an attorney regarding the
meaning of a claim has no effect if it is not expressly
App. 51
stated in the patent document. See Vitronics, 90 F.3d 1576;
see also Altek, 132 F.3d at 706. Prior art and technical
treatises are preferred over expert testimony. See Vit-
ronics, 90 F.3d at 1584.
If after consideration of the intrinsic evidence there
remains doubt as to the exact meaning of the claim terms
and it is necessary for a court to resort to extrinsic evi-
dence, another claim construction canon comes into play.
See Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335,
1344 (Fed. Cir. 1998). When a claim can be interpreted
broadly or narrowly, a court must adopt the narrow
meaning when the intrinsic evidence supports such a
finding and the broader definition “raises questions of
enablement under 35 U.S.C. § 112.” Id. (citing Athletic
Alternatives, Inc. v. Prince Mfg. Inc., 73 F.3d 1573, 1581
(Fed. Cir. 1996)). This principle exists because the pat-
entee has the burden to “particularly point out and dis-
tinctly claim the subject matter which the applicant
regards as his invention,” under section 112. Id.
II. DISCUSSION
The ’310 patent and the ’708 patent have a common
ancestry and a number of terms in common. The claims at
issue for the ‘708 patent are claim 25 and its dependant
claims 32-37 and claim 50 and its dependant claims 51-56.
The claims at issue for the ‘310 patent are claim 1 and its
dependant claims 3-5.
The parties are in general agreement regarding some
claim elements. They agree that the claims involve a
framework to which at least one processing bowl is
mounted. They also agree that the claims at issue disclose
App. 52
at least one system for supplying at least one processing
chemical to the at least one processing bowl. There are,
however, some elements for which they do not agree on
the construction.
A. Substantially Enclosed Processing Chambers
The central dispute between the parties concerns the
interpretation of the phrase “substantially enclosed proc-
essing chamber,” as used in claims 25 and 50 of the ‘708
patent, and the related phrase “substantially enclosed
processing space,” as used in claim 1 of the ‘310 patent.
The relevant element disclosed in claims 25 and 50,
which use identical language, recites
at least one processing head mounted for con-
trolled movement between at least one process-
ing position wherein the processing head is in
an operative relationship with the processing
bowl to define a substantially enclosed process-
ing chamber, and at least one loading position
wherein the processing head is removed from
the processing bowl] for loading or unloading
wafers from the at least one processing head.
The relevant claim language for claim 1 of the ‘310 patent
recites the following element:
at least one processing base and a complemen-
tary processing head mounted to the frame, the
processing base and complementary processing
head being moveable relative to one another
between a closed relative position forming a
substantially enclosed processing space for con-
taining processing fluids between the processing
App. 53
base and the processing head and an open rela-
tive position allowing transfer of wafers to and
from the. processing head.
Novellus contends that the phrases “substantially
enclosed processing chamber” and “substantially
enclosed processing space” must be interpreted as requir-
ing an “essentially gas-tight processing space” that is
isolated from the surrounding environment. Semitool
argues that “substantially” means that the processing
head’s relationship to the processing bowl is such that the
chamber is nearly completely surrounded, but not
entirely. The claims make clear that the chamber is only
“substantially enclosed” when the head is in the closed
processing position over the bowl.
The language of claims 25 and 50 do not otherwise
define what it means to be “substantially enclosed,” thus
it is necessary to look elsewhere for the meaning of this
phrase. Claim 1 of the ‘310 patent recites that the purpose
of the “substantially enclosed” space is to contain proc-
essing fluids. This language provides only limited aid in
determining what it means to be a “substantially
enclosed” chamber or space.
The Court is to give the words used in a claim their
ordinary meaning to one skilled in the art unless the
patentee has provided an alternative meaning. See York
Prods., 99 F.3d at 1572. “Enclosed” has several ordinary
meanings. It can mean “surround,” as in to surround a
yard with a fence. See Webster’s Third New Int'l Dictionary
(1986). It can also mean “confine” in the sense of com-
pletely surrounding or enveloping an object or space on
all sides, the way a sealed envelope confines or encloses a
letter within it. See id. The parties do not argue that the
App. 54
patent applicant chose to define “enclose” in a special
manner. Thus it is necessary to determine which ordinary
meaning was intended. When there are multiple ordinary
meanings for a term, the patent disclosure must be relied
upon "to point away from the improper meanings and
toward the proper meaning.” Renishaw, 158 F.3d at 1250.
In the present claims, “enclosed” is modified by
“substantially.” Accordingly its meaning is dependent in
part on how the term “substantially” is meant to modify
the concept of being “enclosed.” “Substantially” when
used in combination with “enclosed” naturally is
addressed to matters of degree. Given this context, the
most relevant ordinary meaning of “substantally” is
“largely, but not wholly.” See Webster's Ninth New Collegi-
ate Dictionary (1983).
Semitool contends, based on the opinions of its
experts, that the degree of confinement of the processing
chamber or space is dependant on the process taking
place, and its associated engineering problems, such as
contamination. Thus according to Semitool, the meaning
of “substantially enclosed” is process dependent. Accord-
ing to Semitool, the term “substantially enclosed process-
ing chamber [or space]” should be construed to recite a
processing head and bowl positioned relative to each
other so as to form a space that is sufficiently confined
such that ambient conditions do not materially affect the
nature of the chemical processing being performed in the
chamber. For example where highiy corrosive hydro-
fluoric acid is used the common practice is to use a sealed
chamber. Scranton Decl. {{ 20, 22, 33. But, electrochemi-
cal deposition of copper metal onto a wafer may be
App. 55
performed without any need to use a sealed chamber to
exclude the ambient air.
The latter: process dependant [sic] definition is at
odds with the ordinary meaning of “substantially
enclosed.” A device that remains open, because the pro-
cess does not require protection from the ambient air, is
not one that is “largely, but not wholly, enclosed.” For
this construction to be adopted in lieu of “a largely, but
not wholly, enclosed processing chamber,” there must be
support for this broad interpretation in the specifications
or prosecution history.
Such a broad interpretation is not supported. First,
the embodiment disclosed in the ‘708 patent is addressed
to the use of vapor etchants, a process for which Semitool
admits that a sealed chamber is preferred. Even though
the claims are not written as narrowly as the specifica-
tion, and thus can be read to cover any process that could
occur inside the described chamber, a person reading the
specification would not conclude that the design is one in
which, during certain processes, the head and bowl
would be so separated as to not effectively shield a gas
contained therein.
Second, when the ’310 patent was before the exam-
iner, the examiner initially rejected the claims as obvious
over Aigo. The Aigo reference consists of a base and a
wafer holder that sits on the base and delivers the wafer
to the base for processing. In the examiner’s view, the
Aigo reference rendered obvious the design of a head :
over a base. ‘310 file wrapper at 0000101. To overcome -
this objection the applicant added the phrase “substan-
tially enclosed” to the claim language. Any interpretation
App. 56
provided or disclaimed by the applicant during prosecu-
tion for a patent is to be considered in determining the
scope of the claims. See Markman I, 52 F.3d at 980.
In justifying this addition as sufficient to overcome
the objection, the applicant contended that the Aigo
device was one in which the fluid was designed to be
pumped up through the base to the wafer surface and
then to overflow the walls of the base. Thus Aigo did not
contemplate keeping the fluid to be used confined within
a space created by the combination of head and base. In
contrast, the ‘310 apparatus was designed to contain the
fluid in use inside the processing space. According to the
applicant, the position of the head over the chamber in
the ‘310 design “allows the processing space to contain
the gaseous or liquid processing fluids. The Aigo refer-
ence has no ability to enclose the wafer and cannot proc-
ess effectively using gases.” Lu Decl., Ex. L at 5. The
applicant also contended that an advantage of an
enclosed space was that it minimized the risk that the
processing fluid would be contaminated. ’310 file wrap-
per at 0000098; Lu Decl., Ex. L at 5. The specification of
the ‘708 patent also emphasizes the use of an enclosed
space to shield processing fluids from contaminants. ’708
patent, col. 4. :
In reliance on the statements made to distinguish
Aigo during prosecution, Novellus contends that the
Court should define “substantially” as “the same as or
very close to,” see Amhil Enter, Ltd. v. Wawa Ltd. v. Wawa,
Inc., 81 F.3d 1554, 1562 (Fed. Cir. 1996), and thus interpret
“substantially enclosed” as “essentially gas-tight.” This is
not an ordinary meaning of “substantially.” In Amhil,
“substantially vertical” was narrowly interpreted as
aie alla a
App. 57
“essentially vertical” because the phrase had been so
used in the specification and because such an interpreta-
tion was necessary to avoid the prior art. See Amhil, 81
F.3d at 1561-62. The everyday meaning of “substantially”
was rejected in that case because the specification and
prosecution history better supported a narrower con-
struction and because of invalidity concerns. See id. A
narrow interpretation of “substantially” in this case can
only be adopted if the intrinsic evidence points away
from the ordinary meaning toward the more narrow spe-
cial usage.
Here the applicant’s statement during prosecution of
the ‘310 patent and the specification of the ‘708 patent
both teach the importance of a chamber enclosed such
that it permits effective processing with gases. These are
real and significant limitations on the claims. Ignoring
these limitations in construing the claim would raise a
significant risk that the patents would be invalid in light
of Aigo. \ claim should be construed to preserve its
validity, if possible, where there is a basis for such a
construction. See Amhil, 81 F.3d at 1562 (citing to narrow-
ing uses in the specification and prosecution history). The
representations made to the examiner and the ’708 speci-
fication, both of which indicate that the invention was
inventive over the prior art in that it permitted effective
processing using gases, provide a basis for a narrowing
construction.
Accordingly, the court finds that the ordinary mean-
ing of “substantially enclosed” must be construed in a
manner consistent with the representations made to the
examiner and in the specifications. “Substantially
enclosed” must be defined by reference to the ability of
App. 58
the processing chamber in the closed position to process
using common processing vapors that are at risk of con-
tamination.
Novellus contends that “substantially enclosed” must
mean “essentially gas-tight,” which is a very narrow
interpretation. According to Novellus, the chamber but
be essentially sealed because one of the fluids that would
be used is the highly corrosive gas state of hydrofluoric
acid, which requires a sealed chamber. In so arguing,
Novellus relies on the preferred embodiment of the ’708
patent, which discloses a device for processing using
hydrofluoric acid gas. However, where a claim is
expressed in general descriptive terms, courts ordinarily
are not to limit that term to a specific range simply
because it appears in the specification or prosecution
history. See Renishaw, 158 F.3d at 1249). The claims of the
‘708 and ‘310 patents are phrased broadly as addressed to
processing fluids, not just the vapor state of hydrofluoric
acid. Thus relying on the properties of hydrofluoric acid
alone to determine the meaning of “substantially
enclosed” for the ‘708 patent is an improper importation
of a limitation from the specification into the claim.
However, Novellus’ argument does not end here.
Novellus also contends that language in the ’708 and ’310
patents referring to the ability to pressurize the chamber
requires that “substantially enclosed” be interpreted as
“essentially gas-tight.” The ‘708 patent describes the pre-
ferred embodiment as one in which the vapor processing
is
done within an enclosed or confined processing
chamber at pressures which are sufficiently high
to prevent boiling of the liquid processing fluid.
App. 59
Processing pressure is in the approximate range
of 100-2000 torr are operable dependent upon
temperature of the liquid mixture. Pressures in
the range of 500-1500 torr are more preferable
with atmospheric pressures in the range of
600-900 torr most preferable.
‘708 patent, col. 6. Novellus, argues that in order for
pressurization to occur inside the chamber, as discussed
in the specification, the chamber must be one that is
essentially gas-tight.
However, the specification describes the processing
head as one that “mates” with the processing bowl “to
confine a processing chamber.” Id. “The head is . . . then
positioned in a sealing relationship with the bowl or
otherwise suitably adjusted to confine the processing
chamber against drafts and other substantial leakages
which might affect the homogeneous vapor phase... . ”
‘708 patent, col. 9 (emphasis added). The specification
specifically contemplates a relationship in which some
leakage is permitted, just not so much that it is no longer
possible to process effectively with a gas phase chemical.
The Court does not believe that the “essentially gas-
tight” construction suggested by Novellus would be
proper. This language could be read as “completely gas
tight” when it is clear that the patents allow for some
leakage. The Court finds that the proper construction of
the phrase “substantially enclosed processing chamber”
or “space” is that when the head is in a closed position
over the bowl the head and bow! substantially enclose a
processing chamber or space such that they form a seal
which is sufficiently closed to permit the effective proc-
essing of a wafer using the gas phase of a processing
—
App. 60
chemical known in the art, regardless of whether the
chemical to be used at any given time is in a gas or liquid
state.
B. Relationship of the Processing Head to the Processing
Bowl or Space
A number of related arguments are raised by the
parties about the relationship of the processing head to
the processing bowl. First, Novellus contends that the
element “head” should be construed to mean that from a
selected orientation, the element called the head is dis-
posed above the processing base. In addition, Novellus
argues that the head and base can be mounted horizon-
tally such that the head is mounted side to side with the
base. Semitool contends that while the head may be ori-
ented horizontally when it is away from the bowl, the
bowl itself is always mounted vertically. Thus in the
processing position the head is always oriented vertically
above the bowl.
Neither the claims or specification limit how the
bowl can be oriented or how the head can be oriented to
the bowl in any position other than the closed position. It
is clear, however, from the claims and specification, that
when in the closed position, the head is disposed over the
base in the same orientation as the base.
Novellus also argues that the term “complementary”
means that the head in the ‘310 patent, when placed
together with the bowl, forms a single component. Semi-
tool does not argue the meaning of complementary. Given
the Court’s interpretation of substantially enclosed and
the representations made to the Court during the hearing
App. 61
that the head and bowl meet when in the closed process-
ing position, the Court finds that “complementary”
means the head and bowl form a single component when
in the closed position.
There is a construction proposed by Novellus that the
language of claim 5 of the ‘310 patent, which refers to an
opening on the processing bowl for “mating” with the
processing head, requires that the head physically con-
nect with the bowl. Again, given the Court's interpreta-
tion of substantially enclosed and the representations
made to the Court that the head and bowl touch when in
the closed position, the Court finds that “mate” requires
that the head and bow! be in physical contact when in the
closed position. :
C. Wafer Support
Semitool argues that “wafer support” as used in
claims 25 and 50 of the ’708 patent is a structural limita-
tion on the device; whereas Novellus contends that it is a
means-plus-function limitation. These claims recite “at
least one wafer support” designed to “detachably sup-
port” wafers on the processing head.
Paragraph six of 35 U.S.C. § 112, provides that “[ajn
element in a claim . . . may be expressed as a means or
step for performing a specified function with recital of
the structure, material, or acts in support thereof... . “
Such claims are to be construed to encompass the corre-
sponding structure as described in the specification and
any equivalents of that described structure.-See id.; Per-
sonalized Media Communications LLC v. International Trade
Comm'n, 161 F.3d 696, 702 (Fed. Cir. 1998).
App. 62
The “use of the word ‘means’ creates a presumption
that § 112, | 6 applies ... and... the failure to use the
word ‘means’ creates a presumption that § 112, { 6 does
not apply.” Id. at 703-04 (citations omitted). “These pre-
sumptions can be rebutted if the evidence intrinsic to the
patent and any relevant extrinsic evidence so warrant.”
Id. at 704. The word “means” is not used in the claims as
part of the description of “wafer support” and thus there
is a presumption against finding a means-plus-function
claim for which the burden to rebut falls to Novellus. “In
deciding whether [the] presumption has been rebutted,
the focus remains on whether the claim as properly con-
strued recites sufficiently definite structure to avoid the
ambit of § 112, { 6.” Id. at 704. (citing Sage Prods. v. Devon
Indus., Inc., 126 F.3d 1420, 1427-28 (Fed. Cir. 1997)
(“[W]here a claim recites a function, but then goes on to
elaborate sufficient structure, material, or acts within the
claim itself to perform entirely the recited function, the
claim is not in means-plus-function format” even if the
claim uses the term “means”)).
Novellus argues that the phrase “wafer support for
detachably supporting wafers thereon” invokes purely
functional terms and that the remainder of the claim
element fails to recite a specific structure or material for
performing that function.
The Federal Circuit has held that the claim language
“lever moving element for moving the lever” is a means-
plus-function claim, even though the catch-phrase
“means for” was not used because the element's language
did not provide any structure. See Mas-Hamilton Group 2.
LaGard, Inc., 156 F.3d 1206, 1214 (Fed. Cir. 1998). The
circuit found that “[t]he limitation is drafted as a function
App. 63
to be performed rather than definite structure or mate-
rials.” Id. at 1215. In contrast, even though the talismatic
term “means” was used in another patent, the circuit
nevertheless found that § 112, { 6 was not invoked. See
York, 99 F.3d at 1573-75. Specifically, the circuit found that
the phrase “means formed on the . . . sidewall portions
including a plurality of spaced apart . . . members pro-
truding from the . . . sidewall portions and forming load
lock...” did not invoke a function, but rather recited a
structure.
Unless “wafer support” has something inherent in its
ordinary meaning that would disclose a structure to one
skilled in the art, the relevant language of claims 25 and
50 does not disclose a structure and thus should be inter-
preted as a means-plus-function claim. No structure for a
“wafer support” is described in the claims and the
phraseology of “wafer support” for detachably support-
ing a wafer is purely functional in nature.
_ Semitool argues that there is nothing in the intrinsic
or extrinsic evidence to rebut the presumption. However,
the phrase “wafer support,” as recited in the claims, is
consistent with the types of phrases that the Federal
Circuit has interpreted as rebutting the presumption that
the element is not in means-plus-function format. Semi-
tool also claims that “wafer support” has an inherent
structure understood by persons skilled in the art by
referring the Court to the Aigo reference. However, that
patent not only does not use the term “support” in its
specification or claims, rather it uses “holder,” but it also
recites a structure for “holder” in the claims and thus
cannot be understood as presuming that persons skilled
in the art would know what structure is meant by holder.
App. 64
Finally, Semitool directs the Court’s attention to Nov-
ellus’ expert, Douglas Peltzer. During his deposition he
was asked what “wafer holder” meant. Peltzer Dep. at 12.
In response he answered that it depended on the context.
See id. This is not persuasive evidence that a person
skilled in the art would understand what structure is
meant by the phrase “wafer support.”
The Court construes “wafer support” for detachably
Supporting a wafer as a means-plus-function claim.
Accordingly, wafer support is construed as the structure
defined in the specification, that of a plate having a
plurality of fingers that grip the wafer at its peripheral
edge, and any equivalents to that structure.
D. Means for Moving
Claims 1, 3, 4, and 5 of the ’310 patent provide for a
“means for moving” the processing head relative to the
processing base. The parties agree that this is a means-
plus-function claim. However, they disagree about the
structure disclosed in the specification.
Novellus argues that the structure disclosed consists
of a pneumatic cylinder that has two stop positions, one
as far up as the stop mechanism will allow the cylinder to
go, the open position, and one as far down as the
depicted stop will allow the cylinder to go, the closed
position. According to Novellus, the Court should inter-
pret this element as disclosing a pneumatic cylinder hav-
ing only two stop positions and any structural
equivalents. Novellus concedes that a jury might find that
some other linear actuators, the genus of which the pneu-
matic cylinder is a species, are structural equivalents.
App. 65
The claim states that the base and head are “move-
able relative to one another between a closed relative
position .. . and an open relative position. ... ” Turning
to the specification, it simply discloses a shaft that can be
moved upwardly or downwardly. There is no indication
in the claim or specification that the design is for a shaft
that has only two stopping positions, fully closed and
fully open. Therefore the Court construes the “means for
moving” clause as disclosing a pneumatic cylinder or
similar structure that moves upwardly and downwardly
having at least an open position stop and a closed posi-
tion stop, the latter of which is suitable for processing -
with gas phase chemicals. There may be other stops on
the cylinder that may used [sic] to process wafers.
E. Swivel Base
Novellus contends that the phrase “swivel base”
requires that the base that permits the robotic transfer
until to swivel must be attached to the deck and frame of
the wafer processing apparatus. Semitool contends that
“swivel base” refers simply to that portion of the robotic
wafer transfer unit permitting rotation of the arms. The
specification refers to a robotic transfer unit having two
arms that are mounted on a swivel base. ’310 patent, col.
12. The relevant claim language recites “a preee system
with a swivel base and arms which can move horizontally
and vertically.” There is no basis in the specification or
claim language for importing a limitation that the swivel-
ing part be directly mounted to the deck of the apparatus
and not higher than the deck. Therefore, the Court con-
strues swivel base as requiring only that the arms attach
to a base that swivels.
App. 66
Ill. CONCLUSION
For the foregoing reasons, the Court construes the
claims of the ‘708 and ‘310 patents as set forth above.
IT IS SO ORDERED
Dated: September 24, 1999
/s/ D. Lowell Jensen
D. Lowell Jensen
United States District Judge
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