Opinion
CV 01-873-BR
October 31, 2002
PAUL T. FORTINO, ROBERT L. ALDISERT, CHIN SEE MING Perkins Coje, Portland, OR. KENNETH J. DYER, JERRY A. RIEDINGER, MICHAEL D. BROADDUS, Perkins Coie, Seattle, WA., Attorneys for Plaintiff.
DAVID AXELROD, DENISE GRAVES, Schwabe Williamson Wyatt, P.C. Portland, OR., Attorneys for Defendants
ERIC C. WOGLAM, KAEDE TOH, ROBERT R. JACKSON, W. EDWARD BAILEY Fish Neave, New York, NY.
TERRENCE J.P. KEARNEY, Fish Neave., Palo Alto, CA. Attorneys for Defendant Ebara Corporation
DAVID S. ELKINS, MARK C. DOSKER, Squires, Sanders Dempsey, San Francisco, CA., Attorneys for Defendant Ebara Technologies, Inc.
OPINON AND ORDER
Plaintiff brings this action against Defendants alleging violation of the Patent Act, 35 U.S.C. § 271(a)-(c) and (g). On September 13, 2002, the Court heard argument on Defendants' Motion for Summary Judgment (#96). At the hearing, the Court found there were no disputed facts relevant to Plaintiff's claims arising under 271(a)-(c) and granted Defendants' Motion with respect to those claims.
For the reasons that follow, the Court DENIES the remainder of Defendants' Motion for Summary Judgment.
FACTUAL AND PROCEDURAL BACKGROUND
Plaintiff is the owner of U.S. Patent No. 6,187,181 (the `181 Patent) titled "Apparatus and Method for Electrolytically Depositing a Metal on a Microelectronic Workpiece." The `181 Patent covers a multi-step process and the apparatus for carrying out the process. "Seed layer repair" (sometimes also called "seed layer enhancement") is one of the steps in this process.
Plaintiff alleges Defendants infringed the `181 patent "because of . . . activities described in a paper by N. Hosoi, Two-step Copper Electroplating Technique Using Seed-Enhancement Step With Alkali-Metal-Free Copper Pyrophospate Bath (the Hosoi paper)." During May and June 2001, Defendant Ebara Corporation carried out the Hosoi seed-enhancement process in Japan on a set of demonstration silicon wafers provided to Ebara Corporation by Micron Technology. The demonstration wafers were not capable of being used to manufacture microprocessors. Ebara Corporation sent some of the processed wafers to the United States for delivery to Micron. Defendant Ebara Technologies was also involved in an unspecified manner in the importation of the demonstration wafers. Plaintiff alleges Defendants' importation of the wafers to the United States infringes the `181 Patent. The scope, validity, and enforceability of the `181 Patent are not at issue for purposes of this Motion.
At the hearing on September 13, 2002, the Court found the uncontroverted facts establish Defendants do not intend to infringe on Plaintiff's patent in the future. The only issue before the Court, therefore, is whether Defendants' single importation of demonstration wafers into the United States constitutes an infringement of the `181 Patent under 35 U.S.C. § 271(g).
STANDARDS
Fed.R.Civ.P. 56(c) authorizes summary judgment if no genuine issue exists regarding any material fact and the moving party is entitled to judgment as a matter of law. The moving party must show the absence of an issue of material fact. Arpin v. Santa Clara Valley Transp. Agency, 261 F.3d 912, 919 (9th Cir. 2001). In response to a properly-supported motion for summary judgment, the nonmoving party must go beyond the pleadings and show there is a genuine issue of material fact for trial. Fed.R.Civ.P. 56(e).
An issue of fact is genuine "if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Guidroz-Brault v. Mo. Pac. R.R. Co., 254 F.3d 825, 829 (9th Cir. 2001) (internal quotation and citation omitted) All reasonable inferences from the facts in the record must be drawn in favor of the nonmoving party. Hensley v. Northwest Permanente P.C. Ret. Plan Trust, 258 F.3d 986, 999 (9th Cir. 2001)
The substantive law governing a claim or a defense determines whether a fact is material. Addisu v. Fred Meyer, Inc., 198 F.3d 1130, 1134 (9th Cir. 2000). If the resolution of a factual dispute would not affect the outcome of the claim, the court may grant summary judgment. Arpin, 261 F.3d at 919.
DISCUSSION
35 U.S.C. § 271(g) provides in pertinent part:
Whoever without authority imports into the United States or offers to sell, sells, or uses within the United States a product which is made by a process patented in the United States shall be liable as an infringer, if the importation, offer to sell, sale, or use of the product occurs during the term of such patent process.
On its face, § 271(g) prohibits the importation into the United States of even a single product made by a patented process. Defendants admit for the purposes of this Motion that their importation of the Micron demonstration wafers into the United States violated § 271(g). Nonetheless, Defendants contend they are not liable for infringement because the importation of the Micron demonstration wafers was de minimis.
The Federal Circuit has recognized both de minimis and experimental use as exceptions to liability under § 271, but it construes these exceptions "very narrowly." Embrex, Inc. v. Serv. Eng'g Corp., 216 F.3d 1343, 1349 (Fed. Cir. 2000). The court has held an otherwise infringing use may be excused under the experimental use exception only if the infringement is performed "for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry." Id. (quoting Roche Prods., Inc. v. Bolar Pharm. Co., 733 F.2d 858, 863 (Fed. Cir. 1984)). The court also has held, however, that the experimental use exception is not available for experiments that are performed expressly for commercial purposes. Id. In a recent case, the Federal Circuit confirmed the very narrow scope of the experimental use exception to infringement liability. See Madey v. Duke University, No. 01-1567, 2002 WL 31190842 (Fed. Cir. Oct. 3, 2002).
Defendants readily admit they produced the Micron demonstration wafers for a commercial purpose and, therefore, the experimental use exception does not shield them from liability for infringement. Defendants, however, assert commercial purpose is irrelevant to application of the de minimis exception. Defendants contend the de minimis exception excuses them from liability for infringement upon a showing that "the infringing activity is insignificant and that it was terminated at the de minimis stage." Defendants rely on Collins v. Aikman Corp. v. Stratton Indus., Inc., 728 F. Supp. 1570, 1578 (N.D. Ga. 1989), and Warner and Swasey Co. v. Held, 256 F. Supp. 303, 313 (E.D. Wis. 1966) (the de minimis defense is established by showing that "the number of accused items sold is small . . . [and] also that the sale was unusual that it will not be repeated in quantities not de minimis."). The Federal Circuit, however, has not adopted or applied the de minimis exception as articulated by Defendants or the authorities they cite.
Defendants also cite numerous cases that apply the de minimis defense in the context of 28 U.S.C. § 1498. Under § 1498, if a patented invention "is used or manufactured by or for the United States," the patent owner's sole remedy is against the United States in the Court of Claims. The issue in these cases was whether some nongovernmental sales of the patented inventions were sufficiently de minimis to avoid dismissal of the claims in the district court for lack of jurisdiction. See, e.g., Neff Instrument Corp. v. Cohu Electronics, Inc., 269 F.2d 668 (9th Cir. 1959); Systron-Donner Corp. v. Palomar Scientific Corp., 239 F. Supp. 148 (N.D. Cal. 1965); J. G. Dev. Co., Inc. v. All-Tronics, Inc., 198 F. Supp. 392 (E.D.N.Y. 1961). The Court finds, however, these cases are inapplicable in the context of 35 U.S.C. § 271(g).
Plaintiff contends the de minimis exception, like the experimental use exception, is not available for any infringing use that serves a commercial purpose. Defendants rely on Moore U.S.A., Inc. v. Standard Register Co., 144 F. Supp.2d 188 (W.D.N.Y. 2001) and Dentsply Int'l, Inc. v. Great White, Inc., 132 F. Supp.2d 310 (M.D. Pa. 2000).
The Federal Circuit has not articulated a clear distinction between experimental and de minimis use. The court, however, recently noted its "precedent clearly does not immunize use that is in any way commercial in nature. Similarly, our precedent does not immunize any conduct that is in keeping with the alleged infringer's legitimate business, regardless of commercial implications." Madey, 2002 WL 31190842, at *10. Although the court made this statement in the context of the experimental use exception, there is no reason to expect the court would reach a different conclusion on the issue of the de minimis exception. See Deuterium Corp. v. United States, 19 Cl. Ct. 624, 631 (Cl.Ct. 1990) ("Damages for an extremely small infringing use may be de minimis, but infringement is not a question of degree.").
CONCLUSION
For these reasons, the Court DENIES Defendants' Motion for Summary Judgment (#96) regarding Defendants' past violation of 35 U.S.C. § 271(g)