Semcon Tech v. Micron (Fed. Cir. 2016) (non-precedential opinion)
One narrative of the decision here could focus on the difference between the expert appellate court willing to dig into the language of the patent documents themselves and the generalist trial court ready to rely upon expert testimony explaining the underlying documents. It is also a reminder that, for the Federal Circuit, the underlying patent and prior art documents represent the most important evidence available in a patent validity dispute.
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Summary judgment is a mechanism for short-cutting a lawsuit prior to trial. The basic jurisprudential approach asks whether there are any genuine disputes of any material fact and whether the moving-party is entitled to judgment as a matter of law. Fed. R. Civ. Pro. 56. When considering the evidence produced, all justifiable inferences must be drawn in the nonmovant’s favor.
Here, the district court ruled on summary judgments that Semcon’s asserted wafer finishing method patent claims are invalid as anticipated by a prior U.S. patent. (Holding that the claim of Semcon’s U.S. Patent No. 7,156,717 is as anticipated by U.S. Patent No. 6,010,538 (“Sun”)). On appeal, the Federal Circuit has vacated that judgment – finding that the prior art is not as clear as the district court concluded.
Anticipation is an area ripe for summary judgment because the doctrinal question is based primarily upon objective and verifiable facts — has a single prior art reference been identified that teaches the claimed invention – including “each and every element as set forth in the claim.”
The actual dispute focuses on whether the prior art Sun describes the claimed step of relying upon both “in-situ process information” and “tracked information” to modify control parameters during the finish cycle. For its part, the district court adopted Micron’s expert’s conclusions that Sun disclosed that claimed process. Semcon did not present competing expert testimony that seemed to seal-the-deal for the district court.
On appeal, however, the Federal Circuit dug-into the patent documents and found (as suggested by Semcon) that the portions of Sun cited by Micron’s expert did not actually support the conclusions drawn. “In fact, however, the cited portions of Sun do not appear to support Dr. Dornfeld’s characterization.” The court then pointed to several portions of Sun that suggested that the “tracked information” was not used as a finish cycle control parameter.
Addressing the lack of competing-expert, the Federal Circuit wrote that “textual arguments” regarding the prior art reference as well as identifying inconsistencies in the opposing expert’s testimony were sufficient to create a dispute of material fact as to what was disclosed by Sun.