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Facts Concerning Commercial Embodiment of Invention Do Not Lead to Invalidity or Unenforceability

November 12, 2003

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Last Month at the Federal Circuit - December 2003

Judges: Rader (author), Friedman, and Linn

In CFMT, Inc. v. YieldUP International Corp., No. 01-1452 (Fed. Cir. Nov. 12, 2003), the Federal Circuit reversed the district court's decision on inequitable conduct, vacated its SJ of invalidity for nonenablement regarding U.S. Patent Nos. 4,778,532 ("the '532 patent") and 4,917,123 ("the '123 patent"), and remanded the case for further proceedings.

The '532 and '123 patents are directed to improvements in cleaning systems for semiconductor wafers. CFMT, Inc. ("CFMT") sued YieldUP International Corporation ("YieldUP") for infringement of the '532 and '123 patents, and, in response, YieldUP asserted that the two patents were invalid for lack of enablement and unenforceable for inequitable conduct.

YieldUP's nonenablement argument was based on problems CFMT encountered in setting up an installation for Texas Instruments ("TI"). In its initial runs, the machine did not meet TI's standards for wafer cleanliness. CFMT's inventors adjusted the machine and experimented for months before meeting TI's standards. Eventually, the inventors obtained a third patent claiming the improvements in their initial machine. The district court granted YieldUP's motion for SJ that the '532 and '123 patents were invalid for nonenablement because the TI system had not cleaned wafers properly, the inventors had experimented with the system for more than six months, and the required experimentation had not been routine based on the fact that the solution to the problems had eventually resulted in the third patent.

After a bench trial, the district court entered judgment that the '532 and '123 patents were unenforceable due to inequitable conduct because: (1) CFMT did not disclose to the PTO the initial TI test results ("the TI data"), and (2) CFMT stated multiple advantages of the invention to traverse an obviousness rejection. The district court concluded that the undisclosed TI data were material because a reasonable examiner would have considered the data rebutting the invention's advantages in deciding whether to allow the two patents. The district court inferred that CFMT intended to deceive the PTO because it considered the TI data highly material.

Concerning enablement, the Federal Circuit focused on two issues: (1) whether the claims' preamble terms requiring "removal of contaminants" needed a specific level of contaminant removal that the disclosure did not enable, and (2) whether the improvements leading to the third patent showed that the '532 and '123 patents had not enabled the scope of the claimed inventions. With regard to the first issue, the Federal Circuit stated that the district court had erred in setting the enablement bar too high because enablement did not require an inventor to meet lofty standards for success in the commercial marketplace. The Federal Circuit explained that the patent statute did not require that a patent disclosure enable one of ordinary skill in the art to make and use a perfected, commercially viable embodiment absent a claim limitation to that effect.

In the absence of any standard of cleaning in the claims, the Federal Circuit found that "cleaning" in the context of CFMT's invention meant generally removing any contaminants from the wafer surface. The Federal Circuit noted that the CFMT inventors' prototype had removed grease stains. It also pointed out that there was no evidence that a person of ordinary skill would have had to undertake undue experimentation to build a similar prototype and carry out the claimed invention to remove the contaminants, i.e., the grease stains.

The Federal Circuit noted that the lengthy experiments at TI did not show nonenablement because the CFMT inventors undertook that work to satisfy TI's particular commercial requirements, not to show enablement of the scope of the claimed inventions.

As to the district court's decision that the third CFMT patent evinced the inventors had engaged in undue experimentation to clean semiconductor wafers, the Federal Circuit stated that additional inventive work, such as an improvement invention, did not alone show nonenablement. The Federal Circuit pointed out that the district court's reasoning incorrectly presumed that development of the third patent implied extensive experimentation because patent acquisition did not require any threshold level of effort or ingenuity.

The Federal Circuit rejected the district court's finding that the CFMT inventors' statements in response to the obviousness rejection without disclosing the TI data were inaccurate and constituted misrepresentations, because the statements listing multiple advantages of the invention were not material. The Federal Circuit noted that the statements were not inaccurate because a closed cleaning system provided an inherent advantage of less contamination by airborne particles. Since the advantages advocated in the statements recited only the natural, expected results of a closed system or at most overemphasized the benefits of the invention, the Federal Circuit concluded that this kind of advocacy did not rise to the level of misrepresentation. The Federal Circuit further noted that the Examiner had not expressly resorted to secondary considerations, such as the unexpected results and advantages in the CFMT inventors' statements, during prosecution. The Federal Circuit concluded that a reasonable Examiner would not have found the stated advantages important in deciding whether to allow the application because they were merely conclusory arguments without objective evidentiary support.

Since the TI data reflected a commercial, not statutory, standard for enablement, the Federal Circuit found that the data were only marginally relevant to the enablement issue. Contrary to the district court's finding, the Federal Circuit stated that the materiality of the undisclosed TI data was low and, therefore, the district court had little basis for inferring intent.

Since the district court erred in granting a SJ of nonenablement, the Federal Circuit vacated and remanded for the district court to reconsider whether a person of ordinary skill in the art could achieve any level of cleaning with the claimed invention without undue experimentation. Further, the Federal Circuit reversed the district court's decision on inequitable conduct because the district court had abused its discretion in view of the low materiality of the undisclosed subject matter and no evidence of intent.