Memc Electronic Materials v. Mitsubishi Materials Silicon Corporation , 248 F. App'x 199 ( 2007 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2006-1305, -1326
MEMC ELECTRONIC MATERIALS, INC.,
Plaintiff-Appellant,
v.
MITSUBISHI MATERIALS SILICON CORPORATION,
MITSUBISHI SILICON AMERICA CORPORATION,
SUMITOMO MITSUBISHI SILICON CORPORATION (also known as Sumco),
SUMCO USA CORPORATION (also known as Sumco USA),
and SUMCO USA SALES CORPORATION (also known as Sumco USA Sales),
Defendants-Cross Appellants.
Robert M. Evans, Jr., Senniger Powers, of St. Louis, Missouri, argued for plaintiff-
appellant. With him on the brief were David W. Harlan and Marc W. Vander Tuig. Also
on the brief were Duane H. Mathiowetz and K.T. Cherian, Howrey, LLP, of San Francisco,
California.
R. Terrance Rader, Rader, Fishman & Grauer PLLC, of Bloomfield Hills, Michigan,
argued for defendants-cross appellants. With him on the brief were David T. Nikaido,
Glenn E. Forbis, and Linda Dupont Mettes.
Appealed from: United States District Court for the Northern District of California
Judge Saundra Brown Armstrong
NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2006-1305, -1326
MEMC ELECTRONIC MATERIALS, INC.,
Plaintiff-Appellant,
v.
MITSUBISHI MATERIALS SILICON CORPORATION,
MITSUBISHI SILICON AMERICA CORPORATION,
SUMITOMO MITSUBISHI SILICON CORPORATION (also known as Sumco),
SUMCO USA CORPORATION (also known as Sumco USA),
and SUMCO USA SALES CORPORATION (also known as Sumco USA Sales),
Defendants-Cross Appellants.
__________________________
DECIDED: September 20, 2007
__________________________
Before SCHALL, Circuit Judge, PLAGER, Senior Circuit Judge, and DYK, Circuit Judge.
PLAGER, Senior Circuit Judge.
In this patent infringement case, once again on appeal to this court, MEMC
Electronic Materials, Inc. (“MEMC”), a supplier of silicon wafers to the semiconductor
industry, filed suit in the United States District Court for the Northern District of
California against Mitsubishi Materials Silicon Corporation, Mitsubishi Silicon America
Corporation, Sumitomo Mitsubishi Silicon Corporation, SUMCO USA Corporation, and
SUMCO USA Sales Corporation (collectively, “SUMCO”). MEMC alleged that, inter
alia, SUMCO actively induced infringement of U.S. Patent No. 5,919,302 (the “’302
patent”), assigned to MEMC, and SUMCO asserted affirmative defenses of non-
infringement and invalidity of the patent. On remand, following an earlier appeal, the
trial court on cross-motions for summary judgment held that the asserted claims of the
’302 patent were invalid for lack of enablement and they were not invalid for anticipation
or obviousness. With respect to the issue of infringement, the trial court granted
SUMCO’s motion to exclude the expert report and testimony of MEMC’s expert witness
and granted SUMCO’s motion for summary judgment that its products did not infringe
the asserted claims of the ’302 patent.
We conclude that the trial court did not abuse its discretion in excluding the
expert report and testimony of MEMC’s expert witness, and thus on this record we
affirm the judgment of non-infringement. However, because there are genuine issues of
material fact on the issue of enablement, we vacate the trial court’s summary judgment
of invalidity for lack of enablement. SUMCO’s cross-appeal relating to its affirmative
defenses of anticipation and obviousness is dismissed.
BACKGROUND
The ’302 patent purports to disclose a method for producing semiconductor-
grade single crystal silicon wafers that are substantially free of agglomerated vacancy
intrinsic point defects. 1 Prior art methods often resulted in such defects, which can
severely impact the yield of the silicon wafers.
The only independent claim at issue is claim 1, which claims the silicon wafer
itself, not the method for producing it. Claim 1 requires the wafer to have a “first axially
1
Single crystal silicon typically contains two types of intrinsic point defects:
vacancy point defects, which occur when single silicon atoms are missing from the
crystal lattice, and interstitial point defects, which occur when there are extra silicon
atoms. Agglomerated defects result when point defects of the same type combine to
form large vacancies or masses.
2006-1305, -1326 2
symmetric” vacancy-dominated region that is “substantially free of agglomerated
vacancy intrinsic point defects.” ’302 patent col.23 ll.18-21. The patent expressly
defines “substantially free of agglomerated intrinsic point defects” as “a concentration of
agglomerated defects which is less than the detection limit of these defects, which is
currently about 103 defects/cm3.” Id. col.15 ll.46-49.
MEMC filed suit against SUMCO in 2001, alleging that SUMCO was liable for
direct infringement of the ’302 patent by selling and offering to sell its silicon wafers to
Samsung Austin Semiconductor. MEMC further alleged that SUMCO induced
infringement by Samsung Austin. During discovery, MEMC submitted the expert report
of Dr. Mule’Stagno, an MEMC employee, who tested the accused SUMCO wafers and
concluded that forty-three out of forty-five tested wafers infringed the claims of the ’302
patent. SUMCO filed a motion to exclude the expert report and testimony of Dr.
Mule’Stagno with regard to the issue of infringement on the ground that they were
inadmissible under Federal Rule of Evidence 702 and the standards set forth in Daubert
v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993). In a March 2004 ruling, the
trial court gave MEMC the opportunity to cure the alleged defects in Dr. Mule’Stagno’s
expert report by submitting objective evidence that his testing methodology was
generally accepted by at least a recognized minority of scientists in his field. 2 MEMC
subsequently submitted additional declarations from Dr. Mule’Stagno.
In a separate March 2004 decision, without reaching the issue of whether the
accused wafers are covered by the claims of the ’302 patent, the trial court granted
2
MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon Corp., No. 01-
4925, slip op. at 11-12 (N.D. Cal. Mar. 1, 2004) (order).
2006-1305, -1326 3
SUMCO’s motion for summary judgment that SUMCO was not liable for direct
infringement or inducement of infringement. After the trial court entered final judgment
of non-infringement, MEMC appealed to this court. We affirmed the trial court’s
judgment with respect to direct infringement because MEMC presented no evidence
that SUMCO sold or offered to sell the accused wafers in the United States. MEMC
Elec. Materials, Inc. v. Mitsubishi Materials Silicon Corp., 420 F.3d 1369, 1376-77 (Fed.
Cir. 2005). We concluded, however, that there were genuine issues of material fact
regarding whether SUMCO induced infringement on the part of Samsung Austin, and
we remanded for further proceedings on that issue. Id. at 1379-80.
On remand, SUMCO filed a second motion to exclude Dr. Mule’Stagno’s expert
report and testimony on Daubert grounds. This time the trial court granted the motion,
finding that the additional declarations submitted by Dr. Mule’Stagno failed to provide
objective verification of his testing methodology. 3 The parties also filed various motions
for summary judgment, which the trial court decided without a hearing. 4 The trial court
granted SUMCO’s motion for summary judgment of non-infringement, concluding that
the wafers supplied by SUMCO to Samsung Austin did not literally infringe the claims of
the ’302 patent. 5 The trial court also granted SUMCO’s motion for summary judgment
that the claims are invalid under 35 U.S.C. § 112, ¶ 1 for lack of enablement. Finally,
the trial court granted MEMC’s motion for summary judgment that the claims are not
3
MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon Corp., No. 01-
4925 (N.D. Cal. Feb. 24, 2006) (order).
4
MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon Corp., No. 01-
4925, 2006 WL 463525 (N.D. Cal. Feb. 24, 2006) (order).
5
The trial court on remand never reached the issue of inducement.
2006-1305, -1326 4
invalid under 35 U.S.C. § 102 for anticipation or under 35 U.S.C. § 103 for obviousness.
The trial court entered final judgment on February 27, 2006.
MEMC challenges the trial court’s ruling to exclude Dr. Mule’Stagno’s expert
report and testimony and appeals the non-infringement judgment. MEMC also appeals
the trial court’s judgment of invalidity due to lack of enablement. SUMCO has filed a
“conditional cross-appeal” addressing anticipation and obviousness that is triggered if
we do not affirm the judgment of non-infringement. We have jurisdiction pursuant to 28
U.S.C. § 1295(a)(1).
DISCUSSION
1. Exclusion of Expert Testimony
The trial court excluded Dr. Mule’Stagno’s expert report and declarations
regarding infringement because MEMC failed to demonstrate that his testing
methodology was scientifically reliable for establishing that SUMCO’s wafers have
“axially symmetric” vacancy-dominated regions that are “substantially free of
agglomerated vacancy intrinsic point defects” as required by the claims. We review the
trial court’s exclusion of expert scientific testimony for abuse of discretion. Kennedy v.
Collagen Corp., 161 F.3d 1226, 1227 (9th Cir. 1998).
MEMC contends that the various tests performed by Dr. Mule’Stagno are
conventional industry tests for analyzing the physical characteristics of silicon wafers.
SUMCO does not disagree, but responds that MEMC did not provide objectively reliable
evidence that the tests may be used to show what MEMC alleges they show, i.e., that
the accused wafers satisfy the claim limitations. In particular, SUMCO argues that Dr.
Mule’Stagno cannot show whether a wafer has fewer than 1000 defects per cubic
2006-1305, -1326 5
centimeter—the patentees’ definition of “substantially free of agglomerated intrinsic
point defects”—since the detection limit of the test on which he relies is 3300 defects
per cubic centimeter. Dr. Mule’Stagno asserted that he reduced the detection limit by
looking at multiple views through the microscope, but SUMCO responds that MEMC
has not provided verification that this modified methodology is scientifically reliable.
SUMCO also challenges Dr. Mule’Stagno’s decision to disregard certain test results as
noise or contamination and his assumption, in lieu of actual evidence, that the wafers
are axially symmetric.
Under Daubert and Rule 702, expert opinion evidence must be both reliable and
relevant to the issue before the trial court. Daubert, 509 U.S. at 594-95. While the
various tests carried out by Dr. Mule’Stagno may be commonly used in the industry to
examine defects in silicon wafers, the record indicates that the results of those tests
cannot prove that all the claim limitations are met. To the extent that Dr. Mule’Stagno
varied the standard testing methodology, the record supports the trial court’s conclusion
that such modifications rendered the tests unreliable. Although the issue is a close one,
under our deferential standard of review we cannot say the trial court abused its
discretion in concluding that Dr. Mule’Stagno’s expert report and testimony relating to
infringement failed to meet the standards of relevance and reliability required by Rule
702.
2. Non-infringement
In the absence of Dr. Mule’Stagno’s expert report and related declarations, which
were properly excluded by the trial court, the evidence relied upon by MEMC is
insufficient to create genuine issues of material fact with regard to infringement. MEMC
2006-1305, -1326 6
points to various articles and deposition testimony in which SUMCO employees referred
to the company’s wafers as “defect-free” or made of “pure silicon.” MEMC also cites
quality control data from SUMCO allegedly documenting wafers with zero defects. Yet
none of this evidence is probative of whether the accused SUMCO wafers are
“substantially free of agglomerated vacancy intrinsic point defects” as that phrase was
construed by the trial court and defined in the ’302 patent, i.e., whether the wafers have
fewer than 1000 agglomerated vacancy defects per cubic centimeter. Accordingly, we
affirm the trial court’s grant of summary judgment of non-infringement in SUMCO’s
favor.
3. Enablement
The enablement requirement is satisfied if the patent teaches a person skilled in
the art at the time the patent application was filed how to make the claimed invention
without undue experimentation. In re Wands, 858 F.2d 731, 736-37 (Fed. Cir. 1988).
Enablement is a legal conclusion based on underlying factual considerations. Id. at
737. The party alleging invalidity bears the burden of proving by clear and convincing
evidence that the claims are invalid for lack of enablement. Johns Hopkins Univ. v.
CellPro, Inc., 152 F.3d 1342, 1359 (Fed. Cir. 1998).
The parties’ arguments focus on design of the “hot zone,” a part of a specially
designed furnace known as a crystal puller which is commonly used to produce single
crystal silicon. SUMCO submitted to the trial court the declarations of three expert
witnesses. They opined that hot zone design is critical to the manufacturing of silicon
wafers and requires sophisticated modeling and simulation. In their view, the hot zone
description in the ’302 patent is too generic to provide the necessary guidance for
2006-1305, -1326 7
designing a hot zone that would produce the claimed silicon wafers without undue
experimentation.
MEMC responded with declarations from two of the named inventors of the ’302
patent and one from Dr. Mule’Stagno. The inventors explained that the patent sets forth
design criteria for controlling three crystal growth parameters. According to the
inventors, a person skilled in the art in 1998 when the application was filed would have
had the knowledge and ability to modify an existing crystal puller and hot zone using
commonly available modeling techniques to achieve the design criteria described in the
patent. They noted that, as indicated in the patent, necessary modifications will vary
depending on the particular make and model of the crystal puller, and therefore it is the
design criteria for controlling the growth parameters that are important rather than a
specific hot zone design.
The inventors further stated that, prior to filing their patent application, they made
adjustments to an existing hot zone and grew silicon crystal ingots according to the
design criteria in the patent. Both the inventors and Dr. Mule’Stagno asserted in their
declarations that wafers obtained from those ingots fall within the scope of the patent
claims.
The trial court granted summary judgment in SUMCO’s favor, concluding that the
claims of the ’302 patent are invalid for lack of enablement because the patent does not
disclose a specific hot zone design, which the court found was essential to producing
the claimed silicon wafers. While we appreciate the trial court’s effort in analyzing a
difficult technical issue, we are unable to agree that summary judgment on the issue of
enablement was appropriate. When ruling on SUMCO’s motion for summary judgment,
2006-1305, -1326 8
and in determining whether there were genuine issues of material fact requiring trial, the
law mandates that the trial court view the evidence in the light most favorable to the
nonmoving party, MEMC, and resolve any evidentiary doubts in that party’s favor. See
Johns Hopkins, 152 F.3d at 1359. In this case, the declarations of the MEMC witnesses
create genuine issues of material fact as to whether undue experimentation would be
required to design a hot zone to achieve the crystal growth conditions described in the
patent and whether such conditions would result in silicon wafers covered by the patent
claims.
Moreover, to the extent the trial court failed to consider the declarations of the
MEMC witnesses because they were not corroborated by independent evidence, that
was error. The MEMC inventors’ declarations were not asserted in an attempt to prove
an actual reduction to practice for the purpose of establishing priority of invention, in
which case corroboration would be required, see Cooper v. Goldfarb, 154 F.3d 1321,
1330 (Fed. Cir. 1998). Rather, evidence that the inventors had practiced the invention
was submitted by MEMC in response to SUMCO’s argument that the claims were not
enabled because the claimed silicon wafers could not be produced without undue
experimentation. There is no corroboration requirement for expert testimony asserted
to defend against an invalidity challenge. See TypeRight Keyboard Corp. v. Microsoft
Corp., 374 F.3d 1151, 1159 (Fed. Cir. 2004) (“Corroboration is required of any witness
whose testimony alone is asserted to invalidate a patent.” (emphasis added)).
For the foregoing reasons, we vacate the trial court’s grant of summary judgment
of invalidity due to lack of enablement.
2006-1305, -1326 9
4. SUMCO’s Cross-Appeal
In its conditional cross-appeal, SUMCO argues that if the trial court’s non-
infringement judgment is not affirmed, we should vacate the trial court’s summary
judgment that the patent claims are not invalid for anticipation or obviousness because
the trial court applied the same reasoning in both rulings. This cross-appeal is
improper. As this court has made clear, “[i]t is only necessary and appropriate to file a
cross-appeal when a party seeks to enlarge its own rights under the judgment or to
lessen the rights of its adversary under the judgment.” Bailey v. Dart Container Corp. of
Mich., 292 F.3d 1360, 1362 (Fed. Cir. 2002). Here the trial court entered a judgment of
invalidity as to all the asserted claims; the basis for that ruling was lack of enablement.
SUMCO’s arguments that the claims are anticipated or would have been obvious are
simply alternate grounds for affirming the trial court’s judgment of invalidity. See
TypeRight, 374 F.3d at 1157. We therefore dismiss the cross-appeal for lack of
jurisdiction and order that SUMCO’s reply brief be stricken from the record.
We treat SUMCO’s arguments regarding anticipation and obviousness as
arguments in support of the judgment of invalidity on other grounds. However, SUMCO
asks us to consider those arguments only if the non-infringement judgment is not
affirmed. Because we affirm that judgment, we need not address anticipation and
obviousness.
CONCLUSION
The trial court did not abuse its discretion in excluding Dr. Mule’Stagno’s expert
report and testimony on the issue of infringement, and the trial court’s summary
judgment of non-infringement is affirmed. The trial court’s summary judgment of
2006-1305, -1326 10
invalidity for lack of enablement is vacated. SUMCO’s cross-appeal is dismissed.
Since the invalidity issues were raised only as affirmative defenses, in view of our
affirmance of the district court’s non-infringement determination, no remand for further
proceedings is necessary. See Cardinal Chem. Co. v. Morton Int’l, Inc., 508 U.S. 83,
93-94 (1993).
COSTS
Each party shall bear its own costs.
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