Opinion
No. C 01-01391 WHA.
February 14, 2005
INTRODUCTION
In this action alleging patent infringement, the Model 300, manufactured and sold by defendant Dynamic Micro Systems Semiconductor Equipment GmbH, ("DMS"), was found to infringe plaintiff Semitool, Inc.'s patents by order dated September 5, 2002. The parties subsequently settled and stipulated to a permanent injunction with regard to the Model 300 and the Model 310. The Court approved the permanent injunction on October 21, 2002.
On July 16, 2004, DMS filed another case, No. C 04-02881, asking for a declaratory judgment that its design-around product, called the Tornado system, did not infringe. On September 21, 2004, pursuant to the parties' stipulation, that complaint was dismissed and this case was reopened to allow further proceedings. Plaintiff now seeks to enforce the permanent injunction and settlement agreement. Defendant simultaneously moves for summary judgment of non-infringement.
Because this order finds that the design-around product is more than colorably different from the infringing models and does not infringe, plaintiff's motion to enforce the permanent injunction and settlement agreement is DENIED. Defendant's cross-motion for summary judgment is GRANTED.
STATEMENT
This case revolves around three patents. The first is United States Patent No. 5,562,113, ("the '113 patent"), entitled "Centrifugal Wafer Carrier Cleaning Apparatus." The second is United States Patent No. 5,738,128, ("the '128 patent"), also entitled "Centrifugal Wafer Carrier Cleaning Apparatus." The '128 patent is a continuation of the application for the '113 patent. The last patent in suit is United States Patent No. 5,972,127, entitled "Methods for Centrifugally Cleaning Wafer Carriers." The '127 patent is a division of the application for the '128 patent. As such, the '113 patent is the "parent" patent, though it is itself a continuation of the application for United States Patent No. 5,224,503. Given the lineage of the patents-in-suit, it is not surprising that their specifications are nearly identical.The technology described in the patents relates to the process of cleaning and drying carriers used to hold wafers, substrates and similar articles manufactured by the semiconductor industry. Because even minute contaminants could cause performance defects in the finished product, it was necessary to maintain an extremely high level of cleanliness during all, or nearly all, stages of production. Typically, manufacturers used some type of carrier that held multiple wafers or similar articles to enable processing in batches. Such carriers typically featured slots or grooves to keep wafers in place, but this shape made wafer carriers more difficult to clean.
Thus, to maintain the required level of cleanliness, semiconductor manufacturers washed and dried wafer carriers in specialized cleaning machines. One type of carrier-cleaning machine was a conveyor system; another type, of interest here, was a centrifugal system. The application of centrifugal force through a rotor during the washing and drying of carriers resulted in a machine that was more efficient and occupied less floor space than a conveyor-belt system. In this way, the claimed inventions sought to decrease the difficulty and expense of cleaning wafer carriers.
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Defendant DMS manufactures and sells carrier-cleaning machines to semiconductor manufacturers. Two of its devices, the Model 300 and the Model 310 were the subject of the prior litigation. A previous order, dated September 5, 2002, denied Semitool's motion for summary judgment with respect to the Model 310, but found that the Model 300 infringed. Specifically, the Court held that Claims 1, 4, 11, 12, 17, 18 and 19 of the '113 patent and Claim 1 of the '128 patent were infringed.
The parties subsequently executed a settlement agreement, wherein it was stipulated that both the Model 300 and the Model 310 infringed Claims 1, 4, 11, 12, 17, 18 and 19 of the '113 patent; Claims 1, 3, 8, 9, 11 and 12 of the '128 patent; and Claims 20, 21, 22, 25, 27, 28, 29, 30, 31, 33, 36, and 38 of the '127 patent (Broaddus Decl. Exh. 4 at 2). As part of the stipulated permanent injunction, DMS agreed not to make, use, offer, sell in the United States or import into the United States any infringing device ( ibid.). The agreement further specified that such infringing devices included the Model 300 and Model 310, as presently configured, or any other device that is no more than colorably different from the present configurations of the Model 300 and Model 310 ( ibid.).
Plaintiff now contends that defendant's design-around product infringes Claims 1, 4, 9, 17, 18, 19, 39, 55, 56 and 57 of the '113 patent and Claims 28-33 of the '127 patent. Of these, the independent claims ( i.e., Claims 1 and 39 of the '113 patent and Claim 28 of the '127 patent) read as follows:
1. A centrifugal cleaner for cleaning carriers used in semiconductor processing, comprising:
a frame;
a processing vessel defining a process chamber therewithin;
at least one port to allow passage of carriers relative to the process chamber; said port being formed in a sidewall of the processing vessel;
at least one door for controllably opening and closing said port;
a rotor mounted for rotation within the process chamber;
at least one carrier support which is accessible through said at least one port; said at least one carrier support being connected to said rotor for holding carriers during centrifugal cleaning;
rotor drive means for controllably rotating said rotor;
a plurality of outer supplies for directing fluid against the at least one carrier support from positions outward of the carrier support;
a plurality of inner supplies for directing fluid against the at least one carrier support from positions inward of the carrier support;
at least one drying gas supply for supplying drying gas to the process chamber to dry said cleaning liquid from carriers (Broaddus Decl. Exh. 1A at cols. 11:47-12:6).
39. A centrifugal cleaner for cleaning carriers used in semiconductor processing, comprising:
a frame;
a processing vessel defining a process chamber there-within;
at least one port to allow passage of carriers relative to the process chamber;
a door for controllably opening and closing said port;
a rotor mounted for rotation within the process chamber;
at least one carrier support connected to said rotor for holding carriers during centrifugal cleaning;
rotor drive means for controllably rotating said rotor;
at least one cleaning liquid sprayer mounted within the process chamber for spraying a suitable cleaning liquid upon carriers held in the carrier supports;
at least one primary drying gas supply for supplying primary drying gas to the process chamber to dry said cleaning liquid from carriers;
said rotor being arranged within the processing chamber and constructed so as to induce flow of primary drying gas through the at least one primary drying gas supply and through the processing chamber when the rotor is rotating ( id. at cols. 15:58-16:15).
28. A process for cleaning carriers used to hold semiconductor articles, comprising:
loading carriers through at least one port formed in a sidewall of a processing vessel, said carriers being loaded onto at least one carrier support connected to a rotor which is positioned within a processing chamber within the processing vessel;
rotating the rotor and carriers supported thereon;
spraying cleaning liquid upon the carriers, said spraying occurring from at least one inner supply which directs cleaning liquid against the carriers from positions inward of the at least one carrier support during at least a portion of said rotating; and
supplying drying gas to the processing chamber (Broaddus Decl. Exh. 1B at col. 14:12-30).
This order will focus on the phrases "drying gas" and "supplying drying gas to the process chamber." The Court's claim construction of the relevant phrases used in the patent claims was incorporated into the settlement agreement executed by the parties (Broaddus Decl. Exh. 4 at 3). Specifically, the final claim-construction order held that "drying gas" meant (Broaddus Decl. Exh. 29 at 5):
An air or other gas with a low-contamination level that is capable of readily absorbing evaporated cleaning liquid from the carriers and removing said vapor(s) from the process chamber as the air or other gas is evacuated therefrom. Although it may be treated, treatment is not a requirement so long as the "drying gas" is of low-contamination level and capable of readily absorbing evaporated cleaning liquid and removing said vapor(s) from the process chamber as the air or other gas is evacuated therefrom.
The phrase "supplying drying gas to the process chamber" was construed to mean ( id. at 13):
[T]he introduction of "drying gas" into the process chamber. Once inside the process chamber, all that is required is that the "drying gas" has a low-contamination level and is capable of readily absorbing evaporated cleaning liquid from the carriers and removing said vapor(s) from the process chamber as it is evacuated therefrom. Thus, the process chamber may include a device to enhance the absorption/removal capabilities of the "drying gas" inside the chamber, i.e., a heater inside the process chamber.
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For purposes of comparison, the Model 300 had a process chamber with a sidewall port used for loading and unloading carriers from the chamber. A rotor was mounted within the process chamber. Spray nozzles were mounted for spraying cleaning liquid inwardly and outwardly to clean carriers. In operation, the carriers were loaded by opening the sliding door which covered the sidewall port. The carriers were placed on carrier supports which were attached to the rotor for spinning during the washing and drying cycles. After the sliding door closed, the rotor turned and cleaning liquid was sprayed on the carriers.After the washing cycle, the drying cycle was initiated. The centrifugal fan for supplying external air to the process chamber was started and the exhaust vent was opened. The external air was drawn from the clean room (within the semiconductor-fabrication facility) and supplied through a HEPA filter mounted on the top of the process chamber. Clean air flowed through the HEPA filter and into the top of the process chamber via an entry port. After entry, the air flowed out of the process chamber's bottom through the exhaust port equipped with an exhaust port valve. In addition, the infrared lamps were turned on during the drying cycle. The infrared lamps dried liquid from the carriers. More specifically, the infrared lamps emitted radiation that was absorbed by the carriers. As a result, the carriers themselves were heated and the cleaning liquid evaporated.
Defendant's design-around product, the Tornado system, differs from the Model 300 in several respects; most importantly, the centrifugal fan that previously supplied clean room air to and the exhaust vent that allowed air to evacuate from the process chamber have been removed ( compare Broaddus Decl. Exhs. 25 26). Instead, as air circulates within the Tornado system, it passes a series of condensing plates located at the rear of the process chamber, behind a spray guard; this area of the device was called the "condenser" during depositions ( see e.g., Broaddus Decl. Exh. 10 at 10:3-9). These condensing plates are kept cool with a cooling liquid, such that the air becomes cooler as it passes, thereby causing moisture to precipitate onto the glass ( id. at 13:3-14). This "cooler and drier" portion of air is re-circulated with the rest of the air ( id. at 28:12-16). The mean humidity gradually decreases as the air in the process chamber absorbs more evaporated cleaning liquid from the carriers ( id. at 13:20-15:11). This repeats until all or nearly all of the water vapor is removed from the process chamber ( id. at 15:23-16:5).
The parties dispute (1) whether the condenser supplies a drying gas to the process chamber and (2) whether the condenser is part of the process chamber or a separate unit. Specifically, plaintiff argues that "the condensing unit used in the Tornado system is outside the process chamber" (Br. 12). Meanwhile, defendant argues that the condenser is not separate and has requested a Markman hearing to construe the phrase "process chamber" accordingly. In light of the ruling below, it is not necessary to reach this issue.
ANALYSIS
1. LEGAL STANDARD FOR SUMMARY JUDGMENT.
Summary judgment is proper where the pleadings, discovery and affidavits show "that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." FRCP 56(c). "Summary judgment is as appropriate in a patent case as in any other." Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d 831, 835 (Fed. Cir. 1984). Although the determination of patent infringement is a fact-intensive issue, "comparison of a properly interpreted claim with a stipulated or uncontested description of an accused device or process would reflect such an absence of material fact issue as to warrant summary judgment of infringement or noninfringement." D.M.I. Inc. v. Deere Co., 755 F.2d 1570, 1573 (Fed. Cir. 1985).
2. THE DESIGN-AROUND PRODUCT DOES NOT "SUPPLY A DRYING GAS TO THE PROCESS CHAMBER"
Regardless of whether the condenser is merely an area within the process chamber or a separate unit, it does not "supply a drying gas to the process chamber." In other words, there is no introduction of "drying gas" into the process chamber. Rather, it treats "drying gas" that was already within the process chamber, which is a closed system that merely re-circulates the gas therein. Thus, the Tornado system does not infringe the '113 patent or the '127 patent. Moreover, it is "more than colorably different" from the Model 300 and Model 310, as referenced in the settlement agreement between the parties.
Plaintiff's theory of infringement depends upon the assumption that a "drying gas" is created by the condenser (Reply Br. 9). According to plaintiff's logic, this "drying gas" is the cooler and drier portion of air exiting the condenser, which successfully decreases the humidity in the process chamber until it is "at (or close to) 0%, at which point the wafer carriers are cleaned and dried" (Br. 9). Yet, this argument suffers from a fatal flaw. The "drying gas" allegedly supplied to the process chamber by the condenser, even assuming arguendo that they are separate units, originally came from the process chamber. The Tornado system is a closed system, meaning no external air enters or exits the machine during operation (Broaddus Decl. Exh. 10 at 83:4-17). Moreover, contact with the condensing plates does not create new air, so nothing is introduced. The condenser merely enhances the absorption/removal capabilities of the air that was already inside the process chamber.
To explain why the condenser does not "supply a drying gas to the process chamber," it is helpful to understand how it works. The maximum capacity of a given volume of air to hold evaporated vapors depends primarily on temperature. As the temperature increases, this maximum capacity roughly doubles for each ten degree (Celsius) increase in temperature; conversely, a decrease in temperature will decrease the ability of that volume of air to hold evaporated vapors. When a given volume of air reaches its maximum capacity for holding evaporated vapors at a certain temperature, it is said to be saturated. Condensation occurs when air is cooled to the point that its maximum capacity is lower than the amount of vapor it holds, such that any additional vapors present in the air will change phase to liquid. See e.g., 2 VAN NOSTRAND'S SCIENTIFIC ENCYCLOPEDIA 2839 (Glenn D. Considine Peter H. Kulik eds., 9th ed. 2002).
In the Tornado system, as air circulates past the cooled condensation plates, it cools and becomes "drier" in the sense that the excess vapors present in the air precipitate onto the glass plates. When this portion of air is re-circulated with the rest of the air in the process chamber, it gradually becomes warmer and its maximum capacity increases, such that it becomes capable of absorbing more evaporated cleaning liquid from the carriers. Cooling and re-warming the air enhances its absorption/removal capabilities. No new "drying gas," however, is created.
Plaintiff argues that defendant attempts to impermissibly read in additional limitations from the specification to require the presence of an "exhaust duct" (Reply Br. 6-7). Plaintiff is correct that the patented invention is not limited to the preferred embodiment. This order does not hold, however, that the design-around product does not infringe merely because it lacks an exhaust duct. During prosecution of the '127 patent, plaintiff distinguished its invention from United States Patent No. 4,941,489, ("the Kamimura patent"), by arguing that a jet of high pressure drying gas within the process chamber, as described by Kamimura, did not produce a "large flow of primary drying gas" or a "dynamic exchange of gas through the processing chamber" (Schoof Decl. Exh. C at 86-87). That air cannot exit the Tornado system because it lacks an exhaust duct is not as significant as the fact that no new air enters the process chamber during operation.
Plaintiff further argues that the condensing unit serves the same function as the centrifugal fan and exhaust vent of the infringing Model 300, in providing a "dynamic exchange of gas through the process chamber" (Reply Br. 7-8). This is incorrect. First, a dynamic exchange of gas "presupposes an input and an output" (Broaddus Decl. Exh. 10 at 83:15-16). But, as explained above, the condenser creates no new air. The air circulating from the condenser to the process chamber is the same air that went from the process chamber to the condenser. It is just cooler and drier. Second, unlike the patented invention, there is no dynamic exchange of gas in the Tornado system. No fan pulls air into or pushes air out of the condenser. As such, it does not actively affect the flow of air within the process chamber. Rather, the condensing plates are fixed in place and treat only the air that happens to circulate by, much like a heater would.
CONCLUSION
For the aforementioned reasons, plaintiff's motion to enforce the permanent injunction and settlement agreement is DENIED and defendant's cross-motion for summary judgment of non-infringement is GRANTED. Judgment shall be entered accordingly.
In light of this ruling, it is unnecessary to conduct another Markman hearing. Thus, defendant's contingent request for a Markman hearing is DENIED. Plaintiff's request to participate fully in any Markman hearing held is rendered MOOT. Defendant's motion to strike plaintiff's reservation regarding infringement contentions, to prohibit plaintiff from later adding additional claims or offering proposed claim construction terms is also rendered MOOT. The hearing on defendant's motion to strike, currently scheduled for FEBRUARY 24, 2005 AT 8 A.M., is hereby VACATED.