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August Technology Corp. v. Camtek, Ltd.: US District Court : PATENT - claims not too indefinite; no improper combination of apparatus, method limitations

1
UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
August Technology Corporation, and
Rudolph Technologies, Inc.
Plaintiffs,
v. MEMORANDUM OPINION
AND ORDER
Civil No. 05‐1396
Camtek, Ltd.
Defendant.
________________________________________________________________
Daniel McDonald, Ernest W. Grumbles III, and Joseph E. Lee, Merchant &
Gould P.C. for and on behalf of Plaintiffs.
Michael Florey, Ann Cathcart Chaplin, David Francescani, Edmond R.
Bannon, John D. Garretson and Michael F. Autuoro, Fish & Richardson P.C. for
and on behalf of Defendant.
______________________________________________________________________
This matter is before the Court upon Defendant Camtek, Ltd.s (Camtek)
motion for summary judgment of invalidity of U.S. Patent No. 6,826,298 (the
6,298 patent), an automated wafer defect inspection system and a process of
performing such inspection.
Camtek argues it is entitled to summary judgment with respect to claims 1
and 3 of the 6,298 patent, as these claims are invalid for indefiniteness as a
2
matter of law under 35 U.S.C. 112. Camtek argues that the claims are indefinite
because there is no way to determine if a wafer is sufficiently free of defects for
training purposes without relying upon a particular users unspecified criteria.
Camtek further argues the claims are invalid as indefinite because the claims
contain apparatus limitations and a method limitation which is not permitted
under 35 U.S.C. 112, 2.
Standard
The purpose of claims in a patent are to distinctly claim[] the subject
matter which the applicant regards as his invention. 35 U.S.C. 112, 12. This
requirement is met when [the claims] clearly distinguish what is claimed from
what went before in the art and clearly circumscribe what is foreclosed from
future enterprise. Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347
(Fed. Cir. 2005) (quoting United Carbon Co. v. Binney & Smith Co., 317 U.S. 228,
236, 63 S.Ct. 165, 87 L. Ed. 232 (1942)).
Claims are not indefinite because they present a difficult task of claim
construction. Halliburton Energy Services, Inc. v. M‐ILLC, 514 F.3d 1244, 1249
(Fed. Cir. 2008). If the meaning of the claim is discernible, even though the task
may be formidable and the conclusion may be one over which reasonable
3
persons will disagree, [] the claim [may be] sufficiently clear to avoid invalidity
on indefiniteness grounds. Id. (quoting Exxon Research & Engg Co. v. United
States, 265 F.3d 1371, 1375 (Fed. Cir. 2001)). Only claims not amenable to
construction or insolubly ambiguous are indefinite. Datamize, 417 F.3d at
1347 (citation omitted).
1. Plurality of Known Good Quality Wafers (Claim 1) and Multiple
Known Good Wafers (Claim 3) are Indefinite.
The 6,298 patent includes five claims, 1 and 3 being independent claims.
1. An automated system for inspecting a substrate such as a wafer in any
form including whole patterned wafers, sawn wafers, broken wafers, and
wafers of any kind of film frames, dies, die in gel paks, die in waffle paks,
multi‐chip modules often called MCMs, JEDEC trays, Auer boats, and
other wafer and die package configurations for defects, the system
comprising:
a wafer test plate;
a wafer provider for providing a wafer to the test plate;
a visual inspection device for visual inputting of a plurality of
known good quality wafers during training and for visual inspection
of other unknown quality wafers during inspection;
at least one of a brightfield illuminator positioned approximately
above, and a darkfield laser positioned approximately about the
periphery of the wafer test place, all of which are for providing
illumination to the unknown quality wafers during inspection and at
least one of which strobes to provide short pulses of light during
movement of a wafer under inspection based on a velocity of the
wafer; and
a microprocessor having processing and memory capabilities for
4
developing a model of good quality wafer and comparing unknown
quality wafers to the model.
3. An automated method of inspecting a semiconductor wafer in any form
including whole patterned wafers, sawn wafers, broken wafers, and
wafers of any kind of film frames, dies, die in gel paks, die in waffle paks,
multi‐chip modules often called MCMs, JEDEC trays, Auer boats, and
other wafer and die package configurations for defects, the system
comprising:
training a model as to parameters of a good wafer via optical
viewing of multiple known good wafers;
illuminating unknown quality wafers using at least one of a
brightfield illuminator positioned approximately above, and a
darkfield laser positioned approximately about the periphery of the
wafer test place on which the wafer is inspected, all of which are for
providing illumination to the unknown quality wafers during
inspection and at least one of which flashes on and off during
movement of a wafer under inspection at a sequence correlating to a
velocity of the wafer; and
inspecting unknown quality wafers using the model.
This Court issued its claim construction opinion on January 2, 2008.
In that Order, the term Plurality of known good quality wafers/multiple
known good wafers was construed as follows: multiple wafers that are
recognized individually or as a whole to be sufficiently free of defects for training
purposes (e.g. die that have been inspected, tested or otherwise reviewed prior to
or during training). Camtek argues that this construction cannot be translated
into any meaningful claim scope because it does not provide information as to
5
the quantity, size and/or type of defects that are permitted in a wafer to be
sufficiently defect free.
Plaintiffs assert that claim 1 is an apparatus claim with five interrelated
components. The phrase at issue relates to the function of one of the components
‐ a visual inspection device. Plaintiffs further assert that claim 3 is a method
claim involving three steps: training, illuminating and inspecting. This claim
covers methods that involve a training step whereby wafers are considered good
enough for training purposes. Plaintiffs assert that the exact numerical measure
of the quality of the wafer is not relevant to the proper claim scope, as the step
simply involves training, that is using wafers considered good enough for
training. Users of the machine understand how to use the machine without being
instructed on specific numeric characteristics of a good quality wafer.
In support of its argument, Camtek cites to the decision in Halliburton,
supra. In Haliburton, the Federal Circuit held that the term fragile gel was
indefinite because nothing in the claim language or specification specified what
quantity, weight, size and/or volume of cuttings must be suspended for a gel to
be a fragile gel. Id. 514 F.3d at 1254. Camtek argues that as in Halliburton,
nothing in the claim language or specification of the 6,298 patent specifies the
6
quantity, size and/or type of defects that are permitted in a wafer to be
sufficiently defect free. As a result, there is no clear delineation of what is a
good quality wafer versus a bad quality or unknown wafer.
Plaintiffs respond that Halliburton is not on point, because the fragile gel
language was relied upon to distinguish prior art gels, therefore it was important
that the phrase be defined sufficiently at least to distinguish between prior art. In
this case, however, the 6,298 patent is not claiming a wafer, it is claiming a visual
inspection device that can input data from a wafer, be it of good quality or bad.
It is thus not necessary to precisely define a good quality wafer in order to
distinguish prior art, or to recognize the metes and bounds of the invention.
To demonstrate that the claims are definite, Plaintiffs cite to the expert
report of Dr. Joseph Mundy, in which he discussed the scope of the training
embodiments, and noted that the wafer should:
exhibit[] variations that are considered normal process variations (bridged
metalization in the previous section was not a normal variation.) If this
were not true, then the inspection model will be trained to have tolerances
that are too loose to capture defects or to impose non‐existent defects on
wafers of unknown quality.
The claims do not require that every die on a wafer be good in order to be
suitable for training. The only training requirement is that is possible to
derive a model of a good wafer from the die that are input to the training
7
algorithm. Further, the claim does not require that a good die be free of
defects; only that the defects are not great enough in number or correlated
in position so as to confound a training algorithm constructed according to
the teaching of the specification.
Lee Declaration, Ex. A, p. 21‐22. Clearly, Dr. Mundys understanding of the
claim phrase known good quality is definite and consistent with the Courts
construction.
In reply, Camtek argues that following the Datamize and Halliburton
decisions, the 6,298 patent must provide an objective basis as to the bounds of
these three classifications of wafers. Because what is ultimately determined to be
a known good quality wafer depends on the subjective criteria of the user, the
lack of an objective basis renders the claim indefinite.
In addition, Camtek asserts that its experts readily identified the specific
indefiniteness problems with Plaintiffs proposed definition of the terms. Dr.
Mellor concluded that Plaintiffs coined phrase sufficiently free of defects for
training purposes was circular and thus insolubly ambiguous. Autuoro Decl.,
Ex. K at 34‐35. He further concluded that one of ordinary skill in the art
would not understand the bounds of recognized individually or as a whole:
The clause recognized individually or as a whole is ambiguous. It leads to
a situation where, unless the set of wafers is known to be defect free (which
8
contradicts the plaintiffs definition), a determination cannot be made
about an individual wafer on its own. A wafer must be judged relative to
other wafers used for training. Adding or deleting a wafer could
unpredictably make the set insufficient for training. Therefore one of
ordinary skill in the art would not be able to determine the meaning of
sufficiently free of defects.
Id. 36. See also Autuoro Decl. Ex. L, Dr. Adler Rebuttal Report, 42‐43
(finding definition of known good quality wafers is indefinite because it would
blur distinction between known good and unknown quality wafers.)
The Court finds that claims 1 and 3 of the 6,298 patent are not invalid as
indefinite because the term known good quality wafers is not more clearly
defined. The innovation of the 6,298 patent is an automated wafer inspection
system ‐ not the wafers themselves. The wafers are not claimed, they are
referenced solely with respect to the capabilities of the system ‐ training and
inspection. Furthermore, an automated wafer inspection system must be
adaptable to the end users needs, therefore a precise definition of known good
quality wafer would run afoul of the innovation of the patent. Plaintiffs expert,
Dr. Mundy, demonstrated that known good quality wafer is sufficiently
definite to allow others to recognize the specific limitations of the 6,298 patent.
9
2. Apparatus Claim 1 Incorporates a Process Limitation and is
Therefore Indefinite.
Camtek also argues that the phrase in claim 1 ‐ visual inputting of a
plurality of known good quality wafers ‐ is a method limitation that requires
active user participation. Camtek asserts that a single claim involving both an
apparatus and method‐of‐use of that apparatus is invalid as indefinite, because it
is not sufficiently precise to provide a person of ordinary skill in the art with an
accurate determination of the metes and bounds of the patent. IPXL Holdings,
L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005).
Plaintiffs respond that IPXL stands for the narrow rule that a single claim
may not purport to cover both a system and a specific method of using that
system. In this case, however, claim 1 does not include such an improper
combination. Claim 1 recites a system with functions, not a system and the use of
the system. The for language used in claim 1 indicates functionality that could
be implemented in hardware or software, which is common and appropriate.
Apparatus claims are not necessarily indefinite because they include
functional language. Halliburton, 514 F.3d at 1255. Language that describes the
capabilities of a system component is a functional limitation, not a method
10
limitation. Collaboration Prop., Inc. v. Tandberg, Inc., 2006 U.S. Dist. LEXIS
42465, at *19 (N.D. Cal. June 23, 2006). The Federal Circuit has explained that the
holding in IPXL was based on the lack of clarity as to when the mixed subject
matter claims would be infringed. Microprocessor Enhancement Corp. v. Texas
Instr. Inc., 520 F.3d 1367, 1374 (Fed. Cir. 2008). Where no such ambiguity exists in
the claims at issue, the claim is not invalid. Id. at 1375.
With respect to claim 1 of the 6,298 patent, the Court finds that the phrase
visual inputting of a plurality of known good quality wafers describes the
functionality of the visual inspection device, not a specific method of using that
system or requiring use. See, Collaboration Prop., 2006 U.S. Dist. LEXIS 42465, at
*19 (finding the following claim language recites the functionality of a claimed
system the system is configured to reproduce images, based on data signals ).
See also, Yodlee Inc. v. Cashedge, Inc., 2006 U.S. Dist. LEXIS 86699, at *17‐18
(N.D. Cal. Nov. 29, 2006) (finding that IPXL does not apply when the claims
describe what the apparatuses do when used a certain way, not to claim the use
of the apparatus). Thus, claim 1 is not invalid as indefinite as a claim containing
apparatus limitations and a method limitation.
Accordingly,
11
IT IS HEREBY ORDERED that Defendant Camteks Motion for Summary
Judgment as to Invalidity [Doc. No. 280] is DENIED.
Date: July 13, 2008
s / Michael J. Davis
Michael J. Davis
Chief Judge
United States District Court
Civil No. 05‐1396
 

 
 
 

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