Sung-Hoon Kim | November 6, 2013
Integrated Technology Corporation v. Rudolph Technologies, Inc.
November 4, 2013
Moore (author), Rader, and Clevenger
The CAFC reversed the denial of Rudolph’s motion for JMOL that its accused no-touch products do not infringe under the doctrine of equivalents. The CAFC found that prosecution history estoppel (preventing ITC from recapturing through the doctrine of equivalents the subject matter that ITC surrendered during prosecution) presumptively applies, and that ITC failed to rebut the presumption because it failed to establish one of three exceptions by a preponderance of the evidence.
Patents at issue:
U.S. Patent No. 6,118,894 (‘894 patent) is directed to an inspection equipment for probe cards used to test chips on semiconductor wipers. Probe cards include structures called probes, whose tips contact with bonding pads located on the periphery of each chip. The probe tips initially pierce the oxide layer on the conductive layer of the bonding pad and are moved along the pads to a second position to create an electrical contact.
‘894 patent also discloses a digital viewing system to evaluate whether probes have become misaligned relative to each other, where a camera is used under a viewing window to obtain the 3-D coordinates of the probe tips in the first and second states.
Asserted claim 1 of the ‘894 patent is the following:
An integrated circuit probe card inspection system . . . comprising: . . .
a window with a flat surface contacted by said probe tip, said viewing system obtaining said digital image through said window in a first state where said probe tip is driven in contact with said window with a first force, and in a second state where said probe tip is driven in contact with said window with a second force, said second force being different from said first force . . . .
The original claim 1 recited “a window with a flat surface contacted by said probe tip.” However, the Examiner rejected the original claim as indefinite under 35 U.S.C. §112, second paragraph, and being anticipated by U.S. Patent No. 4,757,256 (“Sato”). Consequently, ITC responded by amending the original claim to recite as above.
ITC sued Rudolph for infringement of the ‘894 patent in the U.S. District Court for the District of Arizona. ITC alleged that two categories of Rudolph products infringe the asserted claims. The first category is products, where the probe tips make physical contact with the viewing window before, or at, the moment an image is taken (pre-2007 products). The second category is products that obtain a first image when the probe tips are approximately five microns above the viewing window (no-touch products). With regard to the second category, ITC alleged that it infringes by equivalence.
The district court granted summary judgment of literal infringement as to the pre-2007 products. The jury returned a verdict of no willfulness as to the pre-2007 products and awarded ITC lost profits of nearly $7.7 million. In addition, the jury returned a verdict of willfulness under the doctrine of equivalents by the no-touch products and awarded ITC lost profits of nearly $7.8 million.
Following the verdict, the district court denied Rudolph’s motion for JMOL that prosecution history estoppel bars the application of the doctrine of equivalents.
Rudolph appealed from the district court’s judgment that it infringes ‘894 patent and challenged, among other things, the district court’s denial of its motion for JMOL that prosecution history estoppel bars the application of the doctrine of equivalents.
The CAFC reviews the denial of a motion for JMOL under the law of the regional circuit (the 9th Circuit). Summit Tech., Inc. v. Nidek Co., 363 F.3d 1219, 1223 (Fed. Cir. 2004). The Ninth Circuit reviews the denial of JMOL de novo. Hangarter v. Provident Life & Accident Ins. Co., 373 F.3d 998, 1005 (9th Cir. 2004).
Prosecution History Estoppel
Prosecution history estoppel prevents a patentee from recapturing through the doctrine of equivalents the subject matter the applicant surrendered during prosecution. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 734 (2002). It presumptively applies when the applicant made a narrowing claim amendment related to patentability. Id. at 736–37. A patentee bears the burden to rebut its presumption by establishing one of the following three exceptions by a preponderance of the evidence.
- Unforseeability: the equivalent may have been unforeseeable at the time of the application. Id. at 740;
- Tangential relation: the rationale underlying the amendment may bear no more than a tangential relation to the equivalent in question. Id.; and
- There may be some other reason suggesting that the patentee could not reasonably be expected to have described the equivalent. Id. at 740-41.
The CAFC found that prosecution history estoppel presumptively applies here because the amendment narrowed the scope of the original claim in response to the Examiner’s rejection. Therefore, the CAFC held that ITC surrendered the scope between the original and issued claims, including the equivalent.
Next, the CAFC also found that ITC did not meet its burden of proving that an exception to prosecution history estoppel applies, and therefore, prosecution history estoppel bars the application of the doctrine of equivalents for the following reasons.
With respect to the tangential relation exception, the CAFC held that ITC did not meet this exception because ITC chose to amend the claim to rely on physical contact to overcome Sato even if Sato merely discloses “a surface contacted by a probe.” That is, the CAFC found that ITC failed to prove by a preponderance of the evidence that, based on the prosecution history, the “objectively apparent reason for the narrowing amendment” was only tangentially related to the equivalent. Festo, 344 F.3d at 1369.
With respect to the unforseeability exception, the CAFC held that ITC did not meet this exception, either. The CAFC indicated that the no-touch products obtain an image in a first state when the probe tip is five microns above the viewing window, and in a second state when the probe tip touches the window. Therefore, the CAFC held that the no-touch products literally satisfy the original claim limitation (“a window with a flat surface contacted by said probe tip”). Accordingly, the CAFC found that when the patentee “originally claimed the subject matter alleged to infringe but then narrowed the claim in response to a rejection, he may not argue that the surrendered territory comprised unforeseen subject matter.” Festo, 535 U.S. at 733-34.
Therefore, the CAFC held that ITC’s narrowing amendment surrenders the equivalent from the scope of the asserted claims, and that prosecution history estoppel bars the application of the doctrine of equivalents because none of the three exceptions is applicable.
When amending the claims to overcome the prior arts, Applicants should be careful not to surrender the feature that the prior arts do not disclose. Also, the tangential relation exception is very narrow, so do not expect that the court would apply this exception to rebut the presumption of prosecution history estoppel.