Is Luminent using a "cold-wall reactor"?
Seems as if issues of non-obviousness are still alive with this '098 patent. Again, I'm not sure if this will have any impact on Luminent, but since they boast about their new MOCVD facility, it would be nice to know.
July -1998 SUMMARY JUDGMENT OF INVALIDITY SLIPS AWAY FROM GOVERNMENT
Prepared by Yitai Hu
[Judges: Michel (author), Newman, and Clevenger]
In Rockwell Int'l Corp. v. United States, No. 97-5065 (Fed. Cir. June 15, 1998) the Federal Circuit affirmed a decision of the U.S. Court of Federal Claims ("CFC") denying a motion for summary judgment of invalidity under 35 U.S.C. § 102 and vacated a summary judgment of invalidity under 35 U.S.C. § 103, holding that genuine issues of material fact existed and that the CFC had improperly drawn inferences against the nonmovant.
Rockwell International Corp. ("Rockwell") owns a patent on a metal-organic chemical vapor deposition ("MOCVD") process for growing Group III/V semiconductor materials ("the ‘098 patent"). In general, chemical vapor deposition ("CVD") processes are used to produce epitaxial layers, or thin, single crystal films. Rockwell brought suit against the United States in the CFC alleging infringement of the ‘098 patent. SDL, Inc. ("SDL") intervened as a third-party defendant, and together with the United States filed motions for summary judgment of anticipation and of obviousness.
The trial court interpreted the asserted claims and found that the preambles operated as claim limitations that limited the claims to a process for producing an epitaxial film of Group III/V semiconductors. Citing the prosecution history of the ‘098 patent, the trial court further limited the claims to a CVD process using a "cold-wall reactor," an interpretation that none of the parties contested. The CFC adopted Rockwell's definition of "cold-wall reactor" and denied the motion for summary judgment of anticipation, stating that genuine issues of material fact existed whether any of the four prior art references advanced by the Defendants disclosed a process for growing an epitaxial film. However, the trial court concluded that the same prior art references rendered the asserted claims of the ‘098 patent obvious.
On appeal, SDL argued that the trial court improperly adopted Rockwell's definition of "cold-wall reactor" and erred in denying the motion for summary judgment of anticipation. During prosecution of the ‘098 patent, the applicant had attempted to overcome a prior art rejection by referring to an article by Stringfellow et al., which distinguished "cold wall" apparatus from a "hot wall" apparatus in organometallic processes. SDL argued that the article defined a cold-wall reactor as one in which the walls of the reaction chamber are kept cool enough to avoid significant pyrolysis of the reactants on or near the walls of the reactor. The Federal Circuit disagreed, concluding that the article indicated that the purpose of a cold-wall system is to get the substrate much hotter than the walls.
The Federal Circuit agreed with the CFC in denying the motion for summary judgment of anticipation because genuine issues of material fact existed concerning whether any of the four prior art references advanced by the Defendants disclosed a process of growing an epitaxial layer.
In vacating the summary judgment of obviousness, the Federal Circuit held that the genuine issues of material fact that precluded the CFC from rendering a summary judgment of anticipation should also preclude a summary judgment of obviousness. It concluded that the Defendants had failed to prove that combining the references would suggest to one of ordinary skill in the art how to perform the missing epitaxial growth step with a reasonable likelihood of success.
The Federal Circuit also ruled that the CFC had erred in inferring that one of ordinary skill in the art would have known to combine the four prior art references to achieve single crystal growth of Group III/V semiconductors using organometallic, a specific limitation of the asserted claims. On summary judgment, the evidence must be viewed favorably to the nonmovant, with doubts resolved and reasonable inferences drawn in the nonmovant's favor. The CFC's failure to consider whether any of the prior art references would have suggested or taught the process steps for successful epitaxial growth was tantamount to drawing an adverse inference against the nonmovant, Rockwell.
In addition, the Federal Circuit found genuine issues of material fact relating to the secondary considerations for nonobviousness including (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; and (3) the differences between the claimed invention and the prior art which precluded summary judgment.
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