Wafer-Processing Devices Do Not Infringe
June 08, 2001
Last Month at the Federal Circuit - July 2001
Judges: Lourie (author), Michel, and Rader
In Semitool, Inc. v. Novellus Systems, Inc., No. 00-1375 (Fed. Cir. June 8, 2001) (nonprecedential decision), the Federal Circuit affirmed a district court’s grant of SJ of noninfringement in favor of Novellus Systems, Inc. (“Novellus”).
Semitool, Inc. (“Semitool”) had sued Novellus for infringement of U.S. Patent Nos. 5,222,310 (“the ‘310 patent”) and 5,337,708 (“the ‘708 patent”), which relate to an automated semiconductor wafer-processing tool in which various chemical and electrochemical processes can be performed on a single wafer. The district court’s finding of noninfringement turned on its construction of three terms in the claims of the patents: “substantially enclosed processing space,” “complementary processing head,” and “wafer support.” Because the accused products did not contain those claim limitations as construed by the district court, that court had found no infringement.
Upon de novo review of the district court’s claim construction, the Federal Circuit agreed with the construction of the “substantially enclosed processing space” limitation, noting that Semitool had distinguished a prior art reference during prosecution of the ‘310 patent by arguing that the Semitool invention required the capability to process wafers effectively using gases. The Federal Circuit also agreed that the district court had correctly interpreted the limitation as requiring a “seal” created by the head and the bowl of the tool that permitted the effective gas processing of a wafer.
The Federal Circuit held that the district court had erred in giving an overly narrow construction to the “complementary processing head” and “wafer support” limitations. Despite these errors, the Federal Circuit affirmed the district court’s holding of noninfringement, holding that the accused products did not literally satisfy the “substantially enclosed processing space” limitation of the claims. The Court also concluded that the accused products did not satisfy that limitation under the DOE, noting that the “substantially enclosed processing space” limitation was added during prosecution of the ‘310 patent to distinguish the claims from the prior art.
Accordingly, in light of Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558 (Fed. Cir. 2000), Semitool was barred by prosecution history estoppel from arguing that anything other than the head and the bowl of the tool could form a “seal” satisfying that limitation. The Court further held that prosecution history estoppel precluded application of the DOE to the same limitation appearing in the claims of the ‘708 patent, which issued from a continuationin- part application of the ‘310 patent. Finally, the Court held that Semitool had failed to establish a genuine issue of material fact that Novellus’s products were capable of effective gas processing and, therefore, those products could not satisfy the “substantially enclosed processing space” limitation of the patents.
Because the Federal Circuit affirmed the district court’s grant of SJ of noninfringement on the basis that Novellus’s products did not satisfy the “substantially enclosed processing space” limitation of the patents, it did not address whether those products also satisfied the other appealed limitations as properly construed.