In non-precedential decision, CAFC vacates district court grant of summary judgment

By John M. Rogitz
October 10, 2016

federal-circuit-building-corner-335Semcon Tech, LLC v. Micron Technology, Inc., 2015-1936 is a non-precedential case from the U.S. Court of Appeals for the Federal Circuit that demonstrates the Federal Circuit’s increasing willingness to rely on procedural mechanisms when deciding appeals, rather than being more than willing to jump into the substance of the patent dispute itself as they have been of late. In Semcon, the Federal Circuit vacated a district court’s summary judgment order because the Federal Circuit determined that there was indeed a genuine issue of material fact on the issue of anticipation.

The Federal Circuit panel consisted of Judges Bryson and Stoll, along with Chief Judge Prost. Judge Bryson delivered the opinion for the panel.

The patent in Semcon was directed to methods for finishing semiconductor wafers during manufacture. The methods of the four asserted claims involved reducing the thickness of semiconductor wafers by a computer-controlled polishing process that uses pressure and a chemical slurry. The finishing process employs sensors to monitor and adjust the reduction of the thickness of the wafers. When the process reaches a predefined endpoint it stops.

Initially, the Federal Circuit noted that it was undisputed that the anticipatory reference was “close” prior art. The Federal Circuit next framed the anticipation dispute as focused on a single limitation – “changing a plurality of control parameters in response to an evaluation of both the in situ process information…and the tracked information…during at least a portion of the finishing cycle time.”

The Federal Circuit then turned to whether the district court erred in concluding, on summary judgment, that the anticipatory reference disclosed the limitation of changing the control parameters for the finishing process by using calculations that are based on both “tracked information” and “in situ process information,” and that no reasonable finder of fact could conclude otherwise. The district court construed “tracked information” to mean “pre-polishing information about the wafer being polished that is associated with the wafer,” and found that the initial thickness of the wafer was an example of “tracked information”. The district court construed “in situ process information” to mean “information that is sensed from the wafer currently undergoing CMP [chemical-mechanical polishing].”

The district court ultimately found that the anticipatory reference disclosed the limitation at issue, basing its analysis on statements by Micron’s expert. In vacating the district court’s summary judgment order, the Federal Circuit noted first that statements made by Micron’s expert regarding what the anticipatory reference disclosed were not actually supported by the anticipatory reference itself. The Federal Circuit reached this conclusion based on the Federal Circuit’s own analysis of those statements and the anticipatory reference.

The Federal Circuit also noted that Micron’s expert had made statements about the anticipatory reference during his deposition that at least facially seemed to contradict portions of a declaration of his on which the district court relied when issuing its summary judgment order. Based on this, the Federal Circuit determined that there was in fact a genuine issue of material fact and sent the case back to the district court. In doing so, the Federal Circuit also noted that “the fact that Semcon offered no contrary expert testimony directed to the issue of anticipation does not justify the issuance of summary judgment. Through its textual arguments regarding the [anticipatory] reference and its reliance on the apparent inconsistencies between [Micron’s expert’s] deposition testimony and his declaration, Semcon showed why a reasonable finder of fact might disagree with [Micron’s expert’s] anticipation analysis. That is all that is required on the part of the non-moving party in opposing a summary judgment motion on an issue as to which the moving party has the burden of proof, as Micron does here.”

These kinds of procedural safeguards are commonly applied by other regional circuits, but have seemed to be missing from Federal Circuit case law of late, with the Federal Circuit seeming to be rather eager to address the substance of a given dispute. Perhaps with the overwhelming caseload now at the Federal Circuit, and its need to resort to both Rule 36 and non-precedential opinions, the court seems to finally be coming to terms with the fact that it is an appeals court and not a court of first instance that should always decide cases de novo.

In fact, this recent trend by the Federal Circuit of recognizing its proper role in the legal process was just significantly reinforced by the en banc decision in Apple v. Samsung (Appeal Nos. 2015-1171, 1195, 1994) that came out on October 7, 2017. In that case, the Federal Circuit explicitly stated: “We granted Apple’s en banc petition to affirm our understanding of the appellate function as limited to deciding the issues raised on appeal by the parties, deciding these issues only on the basis of the record made below, and as requiring appropriate deference be applied to the review of fact findings…We took this case en banc to affirm our understanding of our appellate function, to apply the governing law, and to maintain our fidelity to the Supreme Court’s Teva decision.” See Federal Circuit recognizes role as appellate court.

The Author

John M. Rogitz

John M. Rogitz is of counsel to Rogitz & Associates and is a registered patent attorney. His patent background includes preparation and prosecution of a large number of patent applications for Fortune 500 high-tech institutions in a wide range of technologies. John has also been active on behalf of his clients in the acquisition of patent portfolios. John writes frequently for various publications on developments in patent law. He also regularly appears as a guest lecturer on intellectual property at DeVry University. Previously, John was engaged in civil litigation at the Watkins Firm, a San Diego-based law firm. Prior to that, John worked as a web developer for Loyola Marymount University. John received his J.D. in 2009 from California Western School of Law.

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There are currently 1 Comment comments.

  1. Paul Cole October 11, 2016 8:23 am

    Reliance on a single difference is unremarkable and represents what should in the ordinary case be standard practice.

    In deciding what to claim, the attorney will routinely identify the closest prior art, the single key difference from that prior art, and in the words of the late Peter Rosenberg “the difference the difference makes”. Sometimes for utility it may be appropriate to draft a multi-difference claim, but usually a single difference claim will be of the correct scope and a multi-difference claim may prove to be too narrow.