Material Facts Exist Concerning Presence of Claimed Means-Plus- Function Limitation in Accused System
March 22, 2005
Last Month at the Federal Circuit - April 2005
Judges: Bryson (author), Michel, and Newman
In Asyst Technologies, Inc. v. Emtrak, Inc., No. 04-1048 (Fed. Cir. Mar. 22, 2005), the Federal Circuit affirmed a SJ of noninfringement of one of two independent claims of U.S. Patent No. 5,097,421 (“the ‘421 patent”), but vacated the district court’s order of SJ with respect to the other claim and remanded for further proceedings.
This is Asyst Technologies, Inc.’s (“Asyst”) second appeal concerning infringement of their ‘421 patent and related U.S. Patent No. 4,974,166 (“the ‘166 patent”). Initially, the district court construed the claims and granted SJ of noninfringement with respect to both parties. Asyst appealed a first time, and the Federal Circuit reversed the SJ of noninfringement and remanded. On remand, the district court again granted SJ of noninfringement as to the ‘421 patent, but dismissed the ‘166 patent pursuant to the parties’ agreement. Asyst appealed the judgment of SJ of noninfringement of the ‘421 patent a second time.
The ‘421 and ‘166 patents are directed to semiconductor wafer-processing systems, wherein groups or lots of wafers are processed in sealed containers known as “pods.” The claims of the ‘421 patent are drawn to systems that include microcomputers that are mounted in each pod and communicate with microcomputers at each work station.
Regarding claim 1, the district court had ruled that the accused system did not satisfy a “second microprocessor means” limitation on two grounds. First, the accused system did not include a local processor that performed the functions recited in connection with the second microprocessor-means limitation. The district court ruled that the claimed function was performed by a centralized server rather than via cell controllers located at each work station. Second, the district court ruled that the relevant processor in the accused system was not “mounted on the respective workstation,” as required by claim 1.
On appeal, the Federal Circuit affirmed SJ of noninfringement of claim 1 based on the claimed “mounted on” requirement. The Court agreed that the ordinary meaning of “mounted on” should apply, and that the ordinary meaning denotes a form of attachment, not simply an electrical connection. Because the accused product does not include a second “mounted” microcomputer, the Court affirmed the SJ of noninfringement.
The dispute regarding claim 2 centered on a claim requirement for a plurality of sensing means. The Federal Circuit clarified its earlier opinion and ruled that any structure that is the same as or equivalent to a communication means and performs a sensing function satisfies the “sensing means” limitation. The Court explained that mere discussion of an exemplary protocol in its earlier opinion did not necessarily make the processor component associated with that protocol part of the requisite “sensing means” structure. Thus, the communication means alone corresponds to the sensing means function because it communicates with the pod and generates a signal responsive thereto. Nonetheless, the Federal Circuit determined that the district court had entered SJ on claim 2 on other grounds and had not considered whether the evidence offered by Asyst as to the “sensing means” limitation after the first remand established an issue of material fact. Accordingly, the Federal Circuit vacated the holding of SJ of infringement with respect to claim 2 for reconsideration of this question.