-FBS The Fox Group, Inc. v. Cree, Inc. et al, No. 2:2010cv00314 - Document 563 (E.D. Va. 2011)
Court Description: OPINION AND FINAL ORDER the court GRANTS Cree's Summary Judgment Motion on its counterclaim seeking a declaration that the '130 patent is invalid The court DISMISSES Count II of the Complaint, Cree's counterclaim seeking a declaration that the 130 patent is not infringed, and Cree's counterclaim seeking a declaration that the 130 patent is unenforceable, as MOOT. The court DENIES Cree's Summary Judgment Motion as MOOT, insofar as it seeks judgments of non-infringement of both the '130 and '026 patents. The parties' in limine motions, Fox's Motion to Bifurcate, and Cree's Motion to Close Courtroom Proceedings are DENIED as MOOT. The Clerk is DIRECTED to enter judgment for Cree on its counterc laim seeking a declaration that the '130 patent is invalid in accordance with this Opinion and Final Order. The Clerk is further DIRECTED to enter judgment dismissing Count II of the Complaint, Cree's counterclaim seeking a declaration that the '130 patent is not infringed, and Cree's counterclaim seeking a declaration that the '130 patent is unenforceable, all in accordance with this Opinion and Final Order. Signed by District Judge Rebecca Beach Smith and filed on 8/8/11. (mwin, )
Download PDF
<![CDATA[
UNITED STATES DISTRICT EASTERN DISTRICT OF FILED COURT VIRGINIA AUG - 8 2011 Norfolk Division THE FOX GROUP, INC., CLERK. U.S DISTRICT COURT NO'-;ro: ?. va Plaintiff, ACTION NO. v. CREE, 2:10cv314 INC., Defendant. OPINION AND This matter comes before FINAL the ORDER court on Cree, Inc.'s ("Cree") Motion for Summary Judgment of non-infringement of U.S. Patent Number 6,562,13 0 x026 ("the '130 patent") and U.S. Patent Number 6, 534,026 patent") and invalidity of Judgment Motion"). Judgment the '130 patent ("Cree's For the reasons set forth below, Motion is GRANTED in part, I. and DENIED, patents, which are in part, in as MOOT. Background1 owned by The Fox Group, relate to growth of low defect silicon carbide 1 Summary Cree's Summary This case involves Cree's alleged infringement of the '026 ("the Inc. (SiC) v13 0 and ("Fox") and through "seeded Much of the relevant background recited herein is also set forth the Group, *l-2 court's June Inc. Cree, (E.D. v. Va. 2011, Inc., 2011), Opinion and Order. 2d --, 10, -- claim construction Opinion, F. Supp. 2d --, 2011 WL and in the court's July 20, The Fox Group, 2011 WL 2963580, at *1 (E.D. Inc. Va. v. Cree, 2011). 2011, Inc., The 2308694, Fox at Memorandum -- F. Supp. sublimation."2 man-made Sic crystal methods and is a semiconductor material grown via used in high-temperature electronics such as light sources, To semi-conductor, be viable as a relatively low level of power diodes, Sic high-power and photodiodes. material must contain a defects. Fox filed suit against Cree on June 29, 2010, seeking injunctive relief against alleged patent infringement, damages.3 and as well as compensatory Fox alleges that "Cree has been making, using, selling, and/or offering for sale silicon carbide substrates and products that use silicon carbide that practice the invention of the '026 patent [and the l130 patent] , and thus, infringe one or more claims of [those patents.]" Compl. UH 21 and 34' ECF No- 1- Fox also alleges that Cree will continue to infringe those patents unless enjoined by the court. Id. flu 22 and 35. On August 30, 2010, Cree answered the Complaint and filed counterclaims against Fox seeking declarations 2 Seeded sublimation involves the growth of "single crystal SiC ... in crucibles under high heat. Specifically, of SiC is inserted into a crucible along with SiC -- typically SiC powder. a 'seed' vsource' Heat is applied to the crucible, the SiC source material to sublime -- crystal material causing turn from solid to gas -- and then condense on the seed, thereby growing a single crystal SiC material that can be processed into semiconductors for electronic devices." 3 Fox Group, WL 2308694, at *1. Fox originally brought suit against Cree and Dow Corning Corp. On October 25, to 2011 2010, the action against Dow Corning was transferred the district court The Fox Group, Va. 2010). Inc. v. for the Cree, Southern District of New York. See Inc., 749 F. Supp. 2d 410, 417 (E.D. that the claims of the (2) '026 and x130 patents are invalid, and (3) unenforceable. (1) not infringed, See Answer HH 126-135, ECF No. 12. On April 11, April Cree 25, 2011, 2011, Cree filed its Summary Judgment Motion. Fox responded in opposition, replied. On June 10, 2011, the and, court construction Opinion, '130 patent and seven issued in which it construed four and phrases from the phrases from the '026 patent. -- F. Supp. 2d --, (7) at *6-23 (4) its 2011, claim disputed terms disputed terms and See The Fox Group, 2011 WL 2308694, on May 2, On Inc. v. Cree, (E.D. light of the court's claim construction, on June 28, Va. Inc., 2011). In 2011, Fox filed a Motion for Entry of Partial Summary Judgment of Non-Infringement of the '026 patent, Counterclaims ("Fox's On July 8, date from 2011, the and Dismissal Prejudice Related the court issued an order removing the trial calendar pending resolution of Fox and Cree's The court also granted Cree's 2011, motion seeking leave to file a supplemental memorandum in further support of its Summary Judgment Motion, Fox may of Summary Judgment Motion"). respective summary judgment motions. July 6, Without submit a supplemental opposition brief submit a supplemental reply brief. in opposition to Cree's On July 13, and directed that and 2011, supplemental memorandum, that Cree may Fox responded and, on July 18, 2011, Cree Motion is On and, 20, 2011, the accordingly, Cree's Summary Judgment for review. court granted Fox's Summary Judgment entered judgment of non-infringement of '026 patent for Cree and dismissed Cree's counterclaims related to the 2d supplemental reply. fully briefed and ripe July Motion, the filed its '026 patent. --, 2011 WL The Fox Group, 2963580, Judgment Motion is, at *3 therefore, Inc. (E.D. Va. DENIED, judgment of non-infringement of the v. Cree, Inc. , 2011). as MOOT, -- Cree's F. Supp. Summary insofar as it seeks '026 patent. Accordingly, the only issue before the court is whether there is a genuine issue of material fact concerning invalidity and non-infringement of the '130 patent. II. Fox alleges patent.5 4 that The Asserted Claims4 Cree infringes claims l and 19 of the '13 0 Claim 1 asserts: The court only addresses the claims of the '130 patent, as the '026 patent is no longer a subject of this litigation. 2963580, at See Fox Group, 2011 WL *3. 5 The parties disputed the construction of terms and phrases that are also found in claims at *2 and *6, claims. 7 and 13, Rather, Fox avers that of dislocations below 10,000, in claims 1 and 19. "depicting patent") ; ECF No. that Cree See, Fox Group, 2011 WL 2308694, is Cree's products contain a density the dislocation threshold found only e.g., Compl. infringing Fox's Supplemental Br. 522 see but Fox has never indicated that Cree infringes those at in Opp. t 38 least (referencing a chart claim to Mot. (claiming that Fox's expert's 1 of the for Summ. J. '130 2 n.2, "opinions establish that A silicon carbide material comprising an axial region of re-crystallized density of centimeter, square l130 of patent [hereinafter crystal of silicon less less col.8 ni130 and a patent"]. Claim I than 10 secondary and the same density of as required by claim 1. Compl., requires id. col.9 axially re-crystallized silicon carbide growth surface of 1.1. The ... differences [the] in underscored below for ease of 19. 19 ECF No. 1-9 "silicon carbide the same density . as claim 19 requires 1.38, . . seed crystal." claim phase secondary phase inclusions Unlike claim 1, however, a "silicon carbide seed crystal," per centimeter. material" having the same density of dislocations, of micropipes, a square less to 19 with per of density Ex. 104 of than 10 per cubic 11.6-11, carbide than a density of micropipes centimeter, inclusions See single dislocations and "a region of initiating at Id. compared [the] cols. 9 1.41 - 10 to claim 1 are comparison: A silicon carbide material, comprising: A single crystal silicon carbide seed crystal, said single crystal silicon surface; carbide seed crystal having a growth and A region of axially re-crystallized silicon carbide, said region of axially re-crystallized silicon carbide initiating at said growth surface of said single crystal silicon carbide re-crystallized the surface of seed crystal, silicon said carbide an axial region of region having a each category of of axially density of Cree's as-grown wafers . . . has a density of dislocations of less than 104 per cm2") ; id. at 5-6, 14; see also id. at 11 ("The issue of narrowed to the density of dislocations infringement has limitation."). dislocation density of of Id. less cols.9 104 of - 10 per cubic 1.6 per square less and a density of than 10 1.37 than raicropipes centimeter, of less than centimeter, 10 per secondary phase a square inclusions centimeter. (emphasis added). III. Claim Construction On June 10, 2011, the court construed the v130 patent's disputed terms and phrases (1) as follows: "Axial region of re-crystallized single crystal silicon carbide" / "region of axially re-crystallized silicon carbide" means "portion of a silicon carbide crystal that is grown in a direction substantially perpendicular to the seed crystal plane by heating solid silicon carbide to form a vapor that then condenses onto the (2) "Density of dislocations" means seed crystal." "concentration of those defects in which lines of atoms in a crystal structure are displaced, including screw, edge, and basal plane dislocations." (3) "Density of micropipes" means "concentration of micropipes."6 (4) "Density of secondary phase inclusions" means "concentration of polytypes different than the polytype of material the silicon precipitates of carbide material tantalum or niobium, Fox Group, 2011 WL 2308694, crystal such as silicon, and/or carbon, and and their compounds." at *22. In reaching the above constructions, the court made three findings relevant to the issue of invalidity. First, the court rejected Cree's position that there 6 "The construed parties as microtubes, *10 agreed 'screw micropores, (citations that the dislocations or pores.'" omitted). term with 'micropipes' empty Fox Group, cores, should also be called 2011 WL 2308694, at can be only one axial region in the Sic material grown via the method and apparatus Instead, described in the *13O patent. the court agreed with Fox that the See id. at *7-8. '130 patent "claims one or more axial regions in the Sic material that meet the claimed defect densities, while allowing for other axial regions in that same Sic material that do not meet those same claimed defect densities." at *8. Second, the court found that "the clear and Id. consistent description of the invention is a method directed toward growth of low defect Sic," Finally, id. , the through seeded sublimation. court rejected reading the See id. claims to at *l-2. require a particular technique for quantifying the defects in an axial region of re-crystallized single crystal Sic. "Fox argue[d] that only those defects intersecting the surface of an axial region should be counted toward the defect thresholds specified in the claims," at *9, whereas Cree advocated a method intersecting an axial region's surface, beneath the surface. 1 Rather, measures defects as well as defects entirely The court expressed no opinion regarding the propriety of any counting method, parties. 7 that id. the court let alone those forwarded by the found that the *130 This point was evidently lost on the parties. patent only Cree insists that the court's claim construction "unequivocally requires the inclusion of both surface determining the and non-surface dislocations claimed dislocation density," Br. in Supp. of Mot. for the Cree's purposes of Supplemental for Summ. J. 11, ECF No. 423, whereas Fox insists indicates that an axial region must meet the claimed densities, and so "the proper measurement technique . to be resolved by the trier of *9 ("The only permissible fact." Id. inference is . . is a matter at *10 n.20; that . . . defect see id. at patent is the concerned with the extent to which defects are present in an axial region."). material In other words, containing throughout its an entire it axial is an open question whether a SiC region volume that with a dislocation exceeds the %13 0 density patent's dislocation density thresholds can nonetheless infringe that patent. See id. at *9 (" [E] ven if a one cubic centimeter axial region contains 10s dislocations below its surface, 104 per square measurement centimeter technique]."). it can still satisfy claim l's limitation Similarly, [under it is Fox's an open preferred question whether a SiC material containing an axial region with a dislocation density on its surface that is within the x130 patent's dislocation density thresholds id. can nonetheless not infringe that patent. {"[I]f a one cubic centimeter axial region contains 10s . See . . dislocations below the surface, it cannot satisfy claim l's 104 per square centimeter limitation [under Cree's preferred measurement that the court "expressly rejected the measurement method that Cree claimed was required." Fox's Supplemental Br. in Opp. to Mot. Summ. J. 5. Both parties are mistaken. The court rejected for the proposition that it could adopt any claim construction that promotes or rejects a particular measurement 8 technique. technique] , even if those dislocations are not detectable on the surface. ") . The only certainty in this regard from the court' s claim construction is throughout its that an entire axial volume region that with is a dislocation within the l13 0 density patent's dislocation density thresholds necessarily infringes the patent.8 The court specifically relies upon these findings, the general reasoning underlying its claim construction, the motion before as well as in deciding it. IV. Standard of Review Summary judgment is appropriate when a court, viewing the record as a whole and in the light most favorable to the nonmoving party, finds that there is no genuine issue of material fact and that the moving party is entitled to judgment as a matter of law. R. Civ. 248-50 the P. 56(a); (1986). Anderson v. Liberty On summary judgment, Lobby, the court is evidence and determine the truth of Instead, the court will draw any Inc., 477 "not the matter." permissible See Fed. U.S. 242, [] to weigh Id. at 24 9. inference from the underlying facts in the light most favorable to the nonmoving party. See Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 8 the For instance, volume region of a necessarily intersecting if the concentration of dislocations throughout one its cubic could surface, dislocations beneath its centimeter not have nor surface. axial more could it region than is 9,000 have more 9,000, that dislocations than 9,000 574, 587-88 2007). (1986); But a Steelman v. failure judgment motion judgment when mandates the with by the of 473 F.3d 124, non-moving sufficient appropriate. entry Hirsch, evidence w[T]he summary party will plain judgment, to 127 rebut after a summary in result language (4th Cir. summary of Rule adequate 56[] time for discovery and upon motion, against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, at trial." and on which that party will bear the burden of proof Celotex Corp. v. Catrett, V. Cree grounds: seeks addresses invalidity, of non-infringement. Applications S.A., and 469 317, regarding the 322 (1986). v130 patent on two non-infringement. and then, See, U.S. Analysis summary judgment invalidity 477 court to the extent necessary, e.g., F.3d The 978, Optivus 991 Tech., (Fed. Inc. Cir. v. 2006) first the issue Ion Beam ("Having affirmed the judgment of invalidity, we need not address the judgment of non-infringement." (citations Corp. v. Microsoft Corp., omitted)); 374 F.3d 1151, 1157 TypeRight (Fed. Cir. Keyboard 2004) (n[A] judgment of invalidity necessarily moots the issue of infringement." (citations omitted)). 10 A. Invalidity 1. Standard for Patent Invalidity Under the Patent Act, unless . . " [a] person shall be entitled to a patent . before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, words, In other "if a patentee's invention has been made by another, prior inventor who invention, v. or Merck & concealed has not § 102(g) Co., omitted). infringement suit. 1031, under See U.S.C. § 102(g)(2). suppressed, or invalidate the patent." F.3d Invalidity 35 abandoned, will 254 it." § 1035 (Fed. 102 (g) (2) Apotex USA, Cir. can concealed be 2001) a the Inc. (citations defense to an id. In order to prove invalidity under § 102 (g) (2) , a defendant must establish prior Chem. 2001) . Co. v. "[A] Astro-Valcour, challenger . prior inventor: or (2) invention by clear and convincing evidence. (1) . Inc., 267 F.3d 1334, 1339 (Fed. Dow Cir. . has two ways to prove that it was the it reduced its invention to practice first . . . it was the first party to conceive of the invention and then exercised practice." (Fed. Cir. reasonable diligence in reducing Mycogen Plant Sci. v. Monsanto Co., 2001) (citations omitted) . by reduction to practice. that invention 243 F.3d 1316, to 1332 Cree asserts prior invention "In order to establish an actual reduction 11 to practice, embodiment the inventor must prove that: . . . that met all the (1) limitations he constructed an of the [patent's claims] ; and (2) he determined that the invention would work for its intended purpose." Cir. 1998) Cooper v. Goldfarb, (citations omitted). will work for its 154 F.3d 1321, 1327 {Fed. "[D]etermining that the invention intended purpose may require testing." Id. Once prior invention is established by clear and convincing evidence, "the burden of production shifts to the patentee to produce evidence sufficient to create a genuine issue of material fact as to whether the prior inventor abandoned, the invention." forward with Dow Chem., sufficient suppressed, 267 F.3d at 1339. evidence, "the or concealed If the patentee comes challenger may rebut the evidence of abandonment, suppression, or concealment, with clear and convincing evidence to the contrary." at Id. (citing Apotex, 254 F.3d 1037-38). 2. Cree's Invention Cree must prove that it was the prior inventor of the invention underlying the application No. *13 0 patent. The PCT/RU97/00005, v130 defect in 1995 SiC material four through claims priority which was filed on January 22, and issued as U.S. Patent No. 6,621,363. inventor because patent Cree seeded 12 to 1997 Cree believes it is a prior engineers grew a boule sublimation that met of the low v13 0 patent's defect density limitations. From that boule, Cree highlights wafer no. G0259-3, which contains an axial region of one square centimeter that meets each of the defect limitations in claims 1 and 19 of the *13 0 patent. Cree's breakthrough was publicly disclosed through a presentation and paper at the 1995 International Conference on Silicon Carbide and Related Materials in Kyoto, Japan ("The 1995 International Conference" ) . The paper was then published in in 1996. Citing Judgment Motion, exhibits submitted support of its Summary Cree avers "four key facts" that establish prior invention: (1) Cree scientists Dr. [C. H.] Carterf, Jr.] and Dr. [V. F.] Tsvetkov actually made the G025 9-03 wafer by 1995 and Prof. [Michael] Dudley characterized the wafer in 1995 by x-ray topography analysis. (2) . . . Dr. Carter and Tsvetkov recognized in 1995 that they made a silicon carbide wafer with low defect density. Dr. Carter publicly reported that recognition at [the 1995 International Conference] where he presented a photo of the G0259-3 wafer. The Cree scientists also published an article in 1996 with the photo of the wafer. Contemporaneous x-ray topography photos of Wafer No. G0259-3 are an exact match for the photo in the article. In a section of the article . . . Cree scientists identified that the wafer included a region having a low "total line defect density of about 1000 cm'2 (3) As a matter of scientific fact, the G0259-3 wafer that was made by 1995 possessed a region with a one square centimeter area that met all limitations of claims 1 and 19 of the '13 0 patent. Prof. Dudley analyzed the wafer by x-ray topography in 1995 and concluded that it had low defect density. In 2011, he reviewed 13 the x-ray confirmed topography that centimeter phase Wafer area with inclusions, had less than 1995, a micropipes, 17-25, statement ECF No. Wafer No. G0259-03 in Supp. of Mot. (citations omitted) ; iI1I G0259-3 no in one no and square secondary 10,000 total It is also undisputed that Cree published an article Cree's Supplemental Br. J. taken 9 with a photo of 423 No. and dislocations (4) data, of undisputed 3. for Summ. see Cree's Mem. 150 (listing .... in Supp. the same in J. 15-17, of Mot. Cree's ECF No. for Summ. original facts). Reduction to Practice "As an initial matter," Fox disputes that Carter and Tsvetkov made the G0259-3 wafer on the basis that Carter did not grow the SiC material from which it was cut and neither scientist could identify the material's inventor. See Fox's Supplemental Br. in Opp. to Mot. for Summ. J. 19, ECF No. 522 (citing Carter Dep. at 63, Ex. 8 to Rudiger Decl., ECF No. 523-8). This objection is meritless. At his deposition, Carter identified himself and Tsvetkov as the inventors, and Tsvetkov as the scientist who grew the low-defect SiC boule. does not offer any evidence, the record, Cree that scientists nor credibly highlight any material in indicates there is a genuine issue that, created Fox that boule. Accordingly, in 1995, there is no genuine issue that Cree is the inventor of the SiC material from which See supra note 8 and accompanying 14 text. the G0259-3 wafer was Turning to the genuinely dispute cut. reduction that to practice the G0259-3 wafer meets limitations in claims 1 and 19 of the Supplemental Br. in Opp. to Mot. test, Fox does not all of the defect '130 patent.10 See Fox's for Summ. J. 21 ("Whether or not Prof. Dudley can show, based on testing he conducted in March of 2011, that the G0259-3 wafer meets all three limitations of the %130 patent claims is irrelevant.") . Judgment Motion by "contemporaneous Rather, Fox seeks to defeat Cree's Summary arguing recognition the and other prong appreciation of represented by claims 1 and 19 of the '130 patent. at 1335 {emphasis in citations omitted) . Dudley's analysis original) (internal of the test: the invention" Mycogen, 243 F.3d quotation marks and Indeed, Fox does not offer any evidence to rebut of the G0259-3 Dudley's conclusions are erroneous. wafer, let alone Accordingly, contend that "the portion of the reduction to practice test requiring that all limitations of the 10 In determining whether a genuine issue of material fact exists, "the Court may assume that facts identified by the moving party in its listing of material facts are admitted, unless such a fact is controverted in the statement of genuine issues filed in opposition to the motion." E.D. Va. Loc. Civ. R. 56 (B) ; see also Fed. R. Civ. P. 56(e). 2011 In Fox's first opposition brief, analysis of the G0259-3 wafer because it objected to Dudley's Fox had not yet had an opportunity to investigate Dudley's claims, and, thus, requested the opportunity to depose Dudley regarding subsequently took Dudley's deposition, his declaration. Fox and did not renew or recast an objection to Dudley's conclusions regarding the G0259-3 wafer in its supplemental opposition brief. 15 count be met has been satisfied." Id. Turning to the appreciation prong, Cree appreciated the invention back in 1995, to practice before Fox did so. analysis then Cree reduced it Fox first argues that Dudley's 2011 is irrelevant to this prong because conception and appreciation 'inventors' Opp. there is no dispute that if of 16 years earlier, to Mot. for Summ. J. the "cannot establish invention by in 1995." 21. it the alleged Cree Fox's Supplemental Br. Fox is correct. in "[T]he date of the conception of a prior inventor's invention is the date the inventor first appreciated the fact of what he made." Dow Chem., 267 F.3d at 1341 (providing that the challenger must prove that it "recognized and appreciated (internal [the] new form," contemporaneous with its invention quotation marks and citations omitted)). Accordingly, the fact that Dudley's 2011 analysis allows Cree to appreciate in 2011 that the G0259-3 wafer met the defect limitations in claims 1 and 19 of the though, *130 patent is irrelevant. Fox attacks a "straw man," as Cree only argues that Dudley's 2011 analysis proves the first prong of the reduction to practice test -- that the G0259-3 wafer embodies the limitations set forth in claims 1 and 19 of the *130 patent. Cree points to other establish recognition and appreciation. Supp. of Mot. for Summ. J. 23 evidence See, in e.g., the record to Cree's Mem. in (citing Dudley's declaration that he 16 analyzed the G0259-3 wafer in 1995) ; Cree's Supplemental Br. in Supp. of Mot. for Summ. J. 15 (citing Carter's deposition testimony on the subject of his communications with Dudley regarding Dudley's characterization of Fox next Dudley's each of 1995 the G0259-3 argues that analysis, the defect Cree 1995 wafer). cannot prove appreciation because unlike his 2011 analysis, densities that are claimed did not measure in the x130 patent, and it was not enough that Cree appreciated in 1995 that it invented a SiC material with a drastically reduced defect words, level. Fox claims that Cree could not "understand] to have the features that comprise the Corp. v. Clontech Labs., Inc., In other [its] ['130 patent]," 429 F.3d 1052, 1064 (Fed. creation Invitrogen Cir. 2005), because Dudley's 1995 analysis of the G0259-3 wafer did not identify an axial region with "a density of dislocations of less than 104 per square centimeter, a density of micropipes of less than 10 per square centimeter, and a density of secondary phase inclusions of less than 10 per cubic centimeter." 11. 2-6. this '13 0 patent col. 8 11.7-11; see id. cols. 10 Fox holds Cree to an unreasonably stringent standard, which court rejects in light of prevailing precedent. Federal Circuit law is clear that in order for "the inventor's understanding Invitrogen, [to] 429 reach[] F.3d at the 1064, level he 17 is needed "not for appreciation," require [d] . . . [to] establish that he recognized the invention in the same terms as those recited [in the patent's claims]." (internal quotation marks is not the language of defined." Id. and consistent Chem. , 267 and citations omitted). the [claims] (emphasis citations omitted) . Dow added) F.3d of but the subject matter thereby (internal the quotation [*130 patent's] method directed toward growth of low defect Sic." WL 2308694, at *8; see id. at *1 here is seeded sublimation . . 1341 "The invention marks As this court previously recognized, description at and "the clear invention Fox Group, is a 2011 ("The general growth method at issue . .") ; see v130 patent col.3 11.10-14 ( [W]hat is needed in the art is a method and system that allows high quality Sic single crystals to be provides such a method and system." grown. The present (emphasis added)) . invention Accordingly, in order to establish the appreciation prong by clear and convincing evidence, Cree does not need to offer evidence that its scientists were aware that an axial region in the G025 9-3 wafer specifically met each of the defect limitations set forth in claims the '130 patent. appreciated the Rather, novelty Cree must of through seeded sublimation. is enough that invention."). the To the low establish defect See Dow Chem., [inventors] accomplish Si 18 Cree its material 267 appreciated this, that 1 and 19 of inventors they grew F.3d at 1341 ("It the must fact offer of their evidence regarding its subjective belief about its invention and "evidence that [it] timely interpreted or evaluated the results, and understood them to show the existence [of] the invention." at 1065 (citations Subjective disclosed omitted). belief their Invitrogen, 429 F.3d is findings evident, concerning as Cree the scientists G0259-3 wafer publicly through presentation and paper at the 1995 International Conference. e.g., Cree's Supplemental Br. the paper, in Supp. of Mot. for Summ. J. a See, 15. In Cree discloses that it "recently had a breakthrough that has dramatically reduced the density of [micropipes]," as well as that "wafers from recent 4H-SiC boules . . . have areas > 0.5 cm2 with a total line defect density of about 1000 cm"2." T. Allen, H. S. Kong & C. H. Carter, Jr., Recent progress crystal growth, Inst. Phys. Conf. Ser. No. 142, Decl. , ECF No. 424-7 V. F. Tsvetkov, S. in Sic 19, Ex. 7 to Sternhell [hereinafter 1996 Cree Article] ; see id^ at 18 ("Our analytical review is devoted to the seeded sublimation process and all of the technique."). results reported on boule growth are from this The evidence shows that "those inventors appreciated the subject matter of the claims and the utility of the subject matter because its work leading to its reduction to practice was part of a research program specifically directed toward the purpose of the claim": creating low defect SiC material. 19 Griffin v. Bertina, 285 F. 3d 1029, 1035 (Fed. Cir. 2002) ; see 1996 Cree Article at 17 ("Recent results at Cree Research . . . indicate that micropipes reduced to a level that makes high current devices viable, they may be totally eliminated in the next Similarly, be and that few years."). it is obvious that Cree had "an objective basis for identifying the novel features of considered will it," Invitrogen, 429 [its] invention, F.3d at clearly and convincingly establishes 1065, . . since . and timely the evidence that Cree enlisted Dudley to characterize the G0259-3 wafer contemporaneously with the growth of the SiC material Supplemental Br. from which that wafer was cut. in Supp. of Mot. for See, Summ. J. e.g., 15-17; Cree's Cree's Supplemental Reply in Supp. of Mot. for Summ. J. 14, ECF No. 546.11 In sum, its newly grown thresholds, [that] quality. facts. the record is clear that Cree appreciated in 1995 that SiC material met uniquely low defect density and said appreciation was based on "objective evidence corroborate[s]" Invitrogen, Rather, Cree's public 42 9 F.3d at 1065. comments concerning that Fox does not dispute these it seeks to obfuscate the issue by poking holes in the methodology behind Dudley's 1995 analysis of the G0259-3 wafer. Fox pursues the irrelevant goal of establishing that Dudley, in 1995, did not specifically corroborate that an axial region in the G0259-3 11 Indeed, Cree's 1996 paper includes an acknowledgment thanking Dudley for his examination. 1996 20 Cree Article at 22. wafer met each defect patent, and thus limitations in claims 1 and 19 of the '13 0 the Cree inventors could not have appreciated in 1995 that their invention met those limitations. Fox can only avoid summary judgment by demonstrating a genuine issue of material fact, and, as already discussed, it is not necessary that Cree appreciated in 1995 that an axial region in the G0259-3 wafer met each of the defect limitations in claims 1 and 19 of the above reasons, the court FINDS Cree reduced the 4. Cree convincingly genuine establish issue that there is no genuine issue that Suppression, adduced determines whether a sufficient prior or Concealment evidence invention, and Fox has produced evidence that Cree concealed its invention. nonetheless See Dow Chem., to so clearly the abandoned, can produce evidence [its] omitted). public.'" Cree "actively abandons, and for with his Flex-Rest, suppression the own view profit LLC v. of his Inc., create First, Fox or (citations an inventor indefinitely invention 455 or Fox has suppresses, when it now suppressed, at 1342 occurs withholds 21 Id. applying Steelcase, to 267 F.3d at 1339. invention from the public." "Intentional 'designedly, exclusively that and court sufficient two avenues of proof available for meeting its burden. conceals For the invention to practice before Fox did so. Abandonment, has x13 0 patent. from F.3d 1351, and the 1358 (Fed. Cir. 2006) (citations omitted) . Fox does not offer evidence, let alone contend that Cree "intentionally delayed [disclosure] in order to prolong the period during which the invention is maintained in secret." Fujikawa v. 1996) . Rather, proof: "when Wattanasin, 93 F.3d 1559, 1567 (Fed. Cir. Fox seeks to meet its burden on the second type of abandonment, suppression, or concealment may be inferred based upon the prior inventor' s unreasonable delay in making the invention (citations publicly omitted); Mot. for Summ. J. 19. [the invention] known." see, e.g., Dow Fox's Chem., 267 F.3d Supplemental Br. at 1342 in Opp. to ("Fox genuinely disputes whether Cree disclosed to the public in sufficient detail . . . ." (emphasis added)) . The patentee's burden of production for the second type can be low, as " [t]he failure to file a patent application, the invention in a published document, publicly, . . . within a reasonable invention may constitute abandonment, Dow Chem., case, 267 F.3d at 1342 . . time . ... to describe or to use the invention after first making the suppression, or concealment." (citations omitted) . However, in this there is no dispute that Cree promptly and publicly disclosed its findings concerning the low defect properties of the SiC material from which the G0259-3 wafer was cut through a presentation at the 1995 International Conference and a published paper on the subject. 22 Fox claims that the evidence nonetheless shows there is a genuine issue that Cree suppressed or concealed its invention because "Cree did not publish any documents densities claimed in the Fox's Supplemental Br. or presentations disclosing *13 0 patent or how to make the invention." in Opp. to Mot. for Sumtn. J. 24. again holds Cree to an unreasonably stringent standard, court rejects in light of Fox inexplicably, concealment proof applicable under the law for Summ. J. 25 of J. 26, ECF No. 181 which this its suppression or invalidity by anticipation, See Fox's Supplemental Br. in Opp. disclose each and every element of the Summ. frames ("Because the 1995 an anticipatory reference.") ; Fox once law. and incorrectly, pursuant to 35 U.S.C. § 102 (b) ,12 to Mot. the Tsvetkov Paper does not x13 0 patent claims, see also Fox's Mem. ("Anticipation in Opp. requires that it is not to Mot for all of the elements of the invention be found in a single prior art reference." ) . Indeed, every case that Fox cites in purported support of finding a genuine issue of suppression or concealment concerns the standards for finding that a prior art reference 12 invalidates a patent on the "[I]nvalidity by anticipation requires that the four corners of a single, prior art document describe every element of the claimed invention, either expressly or inherently, such that a person of ordinary skill in the art could practice the invention without undue experimentation." 212 F.3d 1272, 1282 Advanced Display Sys., (Fed. Cir. 2000). 23 Inc. v. Kent State Univ. , grounds of anticipation. Anticipation though, as Cree seeks to invalidate the ground of prior Accordingly, invention, Fox's attempt pursuant to meet is wholly inapposite, '130 patent on the separate to its 35 U.S.C. § burden under 102(g)(2). the § 102(b) anticipation framework is unavailing.13 Fox also contends that Cree "delayed 9 years, until 2004, before putting the invention into the hands of the public," by using it in Cree's commercial products, this delay there is an inference of abandonment, Fox's Supplemental Br. cannot draw this in Opp. inference the unreasonable, suppression, to Mot. from is for Summ. underlying and thus or concealment. J. 27. facts, The court even when viewed in the light most favorable to Fox, because there is no genuine issue that Cree contemporaneously disclosed its invention in a presentation and paper at the 1995 International Conference, and that said paper was subsequently published. argument proceeds on a flawed premise. that Cree did not delay in the public," Dow Chem., 13 In There other is no genuine "bringing knowledge of 267 F.3d at 1342, words, Fox's issue the invention to and so it is of no moment Moreover, the court already rejected the proposition that Cree had to appreciate in 1995 that its invention specifically met each of the defect limitations in claims 1 and 19 of the order for Cree to reduce its invention to practice. '130 patent in See supra 17-19. Accordingly, it would be anomalous for the court to accept that Cree' s published paper could nonetheless fail to disclose sufficiently the invention under the same unfounded standard. 24 that Cree did not market its public invention in its commercial products for nine years.14 The only other argument Fox offers is that there is an inference that Cree abandoned, suppressed, or concealed the invention because Cree contests Fox's infringement claim; in other words, because Cree, effectively, argues that the quality of its SiC decreased since disclosing the invention in 1995.1S level, material has At a threshold the court notes that Fox cites no authority to support such an inference, nor is the court aware of any. Fox bears the burden "to produce evidence sufficient to create a genuine issue of material fact as to concealed added) , whether the the invention," inventor Dow Chem., abandoned, 267 F.3d suppressed, at 133 9 Supply, omitted). (emphasis Inc., 45 Glaverbel Societe Anonyme v. Northlake Mktg. F.3d 1550, Fox cannot meet 1562 contests its infringement 14 Fox not cite does any is public claim. cases commercialization requirement, standard (Fed. Cir. 1995) (citations its burden by merely pointing out Cree disclosure. in Cf. id. support ("There of such a Flex-Rest, 455 F.3d at that must Commercialization is 1359-60 (addressing be blanket nor is the court aware of any. The merely route an inventor can employ to publicly disclose an invention. e.g. , or and "' [a] rgument is not evidence upon which to base a denial of summary j udgment.' " & prior one See, disclosure by commercializing and disclosure by filing a patent application). 15 Fox originally argued this in opposition, but did not renew or recast the argument in its supplemental opposition brief. 25 sufficient substance, other than attorney argument, to show that the issue requires trial."). Furthermore, Fox does not adduce any evidence that Cree abandoned, suppressed, or concealed the invention since it was first publicly disclosed. In fact, the only evidence Fox has come forward with in opposing Cree's Summary Judgment Motion purportedly demonstrates that Cree products satisfy the defect limitations in claims 1 and 19 of the '130 patent, thereby supporting an inference that Supplemental Br. In sum, invention Cree in Opp. Dow a for Summ. 267 this invention. J. See Fox's 14-18. clear that Cree publicly disclosed its reasonable Chem., genuinely dispute abandon the to Mot. the record is "within invention," did not F.3d fact. time at after 1342, Moreover, and first that Fox has not making Fox does the not produced any evidence that allows the court to infer Cree nonetheless abandoned, suppressed, seeks to or concealed obfuscate Accordingly, the the issue invention. with Rather, incongruous Fox legal once again arguments. Fox cannot make a showing sufficient to establish the existence of an element essential to its case, and on which it would bear the burden of proof at trial. FINDS that suppression, conceal there is no genuine or concealment -- For the above reasons, issue regarding Cree did not its prior invention. 26 abandon, the court abandonment, suppress, or 5. Summary Because there is no genuine issue of material fact, and Cree has produced clear and convincing evidence that it made the low defect SiC invention prior to Fox, that Cree abandoned, and Fox has not produced any evidence suppressed, or concealed the invention, the court FINDS that claims 1 and 19 of the *13O patent are invalid under 35 U.S.C. § Accordingly, 102{g){2). See Dow Chem. , 267 F.3d at 1344. Cree is entitled to judgment as a matter of law on its counterclaim seeking a declaration that the '130 patent is invalid. B. Non-Infringement "Invalidity resolves all issues Brunswick Corp., "[n]o further infringement invalid"). so "even if is a complete defense to that are meaningful 86 F.3d 1113, public question 1123 interest after a Sys., Corp., 72 case." is served by [] that . . . Lough v. (remarking that resolving the patent an is v130 patent are invalid, and ... no judgment of liability could Ltd. v. Resco Metal & Plastics Corp., F.3d 1344, 1356 (Fed. Cir. 2001) Braking [a] determination [Cree] did infringe, Sandt Tech., in (Fed. Cir. 1996) The asserted claims of the be entered." infringement and 264 (citing B.F. GoodrichCo. v. Aircraft F.3d 1577, 1583 (Fed. Cir. 1996)). Accordingly, the court DISMISSES Fox's claim for infringement of the '13 0 patent, DISMISSES Cree's counterclaim 27 seeking a declaration that Cree does not infringe the '130 patent, and DENIES Cree's Summary Judgment, as MOOT, of the insofar as it seeks judgment of non-infringement *130 patent. VI. Conclusion For the above reasons, the court GRANTS Cree' s Summary Judgment Motion on its counterclaim seeking a declaration that the '130 patent is invalid. Complaint, patent is declaration Accordingly, the court DISMISSES Count II of the Cree's counterclaim seeking a declaration that the '13 0 not infringed, that the '130 and Cree's patent is counterclaim seeking unenforceable, as a MOOT. Furthermore the court DENIES Cree' s Summary Judgment Motion, as MOOT, insofar as it seeks judgments of non-infringement of both the and '026 patents. of Fox's claims See Fox Group, and Cree's 2011 WL 2963580, counterclaims are at *3.16 either decided, any motions concerning trial issues are MOOT. '130 As all dismissed or Accordingly, the parties' in limine motions, Fox's Motion to Bifurcate, and Cree' s Motion to Close The Clerk Courtroom Proceedings are DENIED as MOOT. is DIRECTED to enter judgment for Cree on its counterclaim seeking a declaration that the '130 patent is invalid in Order. 16 accordance with this Opinion and Final The Clerk is The court previously entered judgment of non-infringement of the '026 patent for Cree and dismissed Cree's counterclaims related to the '026 patent. Fox Group, 2011 WL 2963580, at *3; see supra 4. 28 further DIRECTED Complaint, patent is to enter judgment dismissing Count II of Cree's counterclaim seeking a declaration that the not infringed, and Cree's counterclaim the '130 seeking a declaration that the v130 patent is unenforceable, all in accordance with this Opinion and Final Order. Finally, the Clerk is DIRECTED to forward a copy of this Opinion and Final Order to counsel for the parties, IT and to close the case on this IS SO ORDERED. court's docket. /s/ Rebecca Beach Smith United States District Judge REBECCA BEACH Norfolk, Virginia August Q , 2011 29 SMITH UNITED DISTRICT JUDGE STATES
]]>
Some case metadata and case summaries were written with the help of AI, which can produce inaccuracies. You
should read the full case before relying on it for legal research purposes.
This site is protected by reCAPTCHA and the Google
Privacy Policy and
Terms of Service apply.
