Page 1
`
`1 of 3 DOCUMENTS
`
`SEMICONDUCTOR ENERGY LABORATORY COMPANY LTD, Plaintiff, v. CHI
`MEI OPTOELECTRONICS CORP., et al., Defendant(s).
`
`No. C 04-04675 MHP
`
`UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF
`CALIFORNIA
`
`531 F. Supp. 2d 1084; 2007 U.S. Dist. LEXIS 44288
`
`June 19, 2007, Decided
`June 19, 2007, Filed
`
`PRIOR HISTORY: Semiconductor Energy Lab. Co. v.
`Chi Mei Optoelectronics Corp., 485 F. Supp. 2d 1089,
`2007 U.S. Dist. LEXIS 28926 (N.D. Cal., Apr. 17, 2007)
`
`Chicago, IL.; Teresa M. Corbin, LEAD ATTORNEY,
`Howrey LLP, San Francisco, CA.; Yuri Mikulka, LEAD
`ATTORNEY, Howrey LLP, Irvine, CA.
`
`COUNSEL:
`Energy
`Semiconductor
`For
`[**1]
`Laboratory Company Ltd, Plaintiff: Barbara S. Steiner,
`John E. Titus, Joseph F. Marinelli, Joseph Albert Saltiel,
`Matthew J. Thomas, Patrick L. Patras, Reginald J. Hill,
`Stephen M. Geissler, Jenner & Block LLP, Chicago, IL.;
`Donald R. Harris, Stanley A. Schlitter, Terrence Joseph
`Truax, Jenner & Block LLC, Chicago, IL.; Victoria F.
`Maroulis, Quinn Emanuel Urquhart Oliver & Hedges L
`Redwood Shores, CA.; R. Tulloss Delk, Quinn Emanuel
`Urquhart Oliver & Hedges LLP, San Francisco, CA.
`
`For Chi Mei Optoelectronics Corp., Defendant: Teresa
`M. Corbin, LEAD ATTORNEY, Daniel X. Yan, Howrey
`LLP, San Francisco, CA.; Benjamin Charles Deming,
`Christopher Anthony Mathews, Howrey LLP, Los
`Angeles, CA.; Ryan Edward Lindsey, Yuri Mikulka,
`Howrey LLP, Irvine, CA.
`
`International Display Technology Co., Ltd.,
`For
`International Display Technology USA, Inc., Defendants:
`Christopher Anthony Mathews, LEAD ATTORNEY,
`Benjamin Charles Deming, Howrey LLP, Los Angeles,
`CA.; Robert Unikel, LEAD ATTORNEY, Howrey LLP,
`
`[**2] LLC,
`For Westinghouse Digital Electronics,
`Defendant: Scott Richard Mosko, LEAD ATTORNEY,
`Finnegan, Henderson, Farabow, Garrett & Stanford
`Research Park, Palo Alto, CA.; Benjamin Charles
`Deming, Howrey LLP, Los Angeles, CA.; Gregory Stuart
`Cordrey,
`Irvine, CA.; Timothy J. May, Finnegan,
`Henderson, Farabow, Garrett & Dunner, L.L.P.,
`Washington, DC.
`
`For Chi Mei Optoelectronics Corp., Counter-claimant:
`Christopher Anthony Mathews, Howrey LLP, Los
`Angeles, CA.
`
`JUDGES: MARILYN HALL PATEL, United States
`District Judge.
`
`OPINION BY: MARILYN HALL PATEL
`
`OPINION
`
`[*1091] MEMORANDUM & ORDER
`
`Re: Motions for Summary Judgment
`
`Exhibit 1012, page 1
`
`

`

`531 F. Supp. 2d 1084, *1091; 2007 U.S. Dist. LEXIS 44288, **2
`
`Page 2
`
`Laboratory
`Energy
`Semiconductor
`Plaintiff
`Company Ltd. ("SEL") brought this patent infringement
`action against defendant Chi Mei Optoelectronics Corp.
`("CMO") et al., alleging infringement of four United
`States patents
`related generally to the design and
`manufacture of liquid crystal display ("LCD") devices.
`Two patents in suit currently remain. Now before the
`court are the parties' motions for summary judgment.
`Having
`considered
`the
`parties'
`arguments
`and
`submissions, and for the reasons set forth below, the
`court enters the following memorandum and order.
`
`BACKGROUND
`
`An overview of the relevant technology [**3] and
`summaries of the asserted patents are provided in this
`court's Claim Construction Order. Docket Entry 111 at
`1-6 (hereinafter
`"Claim Construction Order"). SEL
`[*1092] filed this action on November 3, 2004, alleging
`that CMO had infringed and was infringing various
`patents. On August 11, 2006 the parties filed a stipulation
`dismissing with prejudice all claims regarding U.S.
`Patent No. 5,995,189. April 19, 2007 this court entered
`an order granting summary judgment of noninfringement
`of U.S. Patent No. 4,691,995 ("the '995 patent"). Docket
`Entry 331 (hereinafter "Summary Judgment Order"). All
`claims and defenses with respect to the '995 patent were
`subsequently dismissed by stipulation. Docket Entry 357.
`Accordingly, two patents-in-suit currently remain: U.S.
`Patent No. 6,756,258 ("the '258 patent") and U.S. Patent
`No. 6,404,480 ("the '480 patent"). The asserted claims of
`the '258 patent cover methods of fabricating thin-film
`transistors ("TFTs") for use in LCDs. In particular, the
`TFTs claimed by the '480 patent include a "stepped"
`structure whereby the upper surface of
`the second
`semiconductor layer is exposed. The '480 patent claims
`an active matrix display device providing a way of
`reliably [**4] creating an electrical connection between
`the substrates comprising the LCD.
`
`SEL now moves for summary judgment on its claim
`of infringement of the '480 patent and CMO's affirmative
`defenses of
`inequitable conduct,
`laches and patent
`misuse. CMO moves
`for
`summary judgment of
`noninfringement and invalidity of
`the '258 patent,
`noninfringement and invalidity of the '995 patent, no
`liability for foreign sales and no liability for infringement
`prior to the receipt of statutory notice of infringement.
`The parties have additionally cross-moved for summary
`judgment as to CMO's license defense. Because the '995
`
`patent is no longer at issue in this case, the court will not
`reach the parties' arguments in these motions regarding
`the '995 patent.
`
`LEGAL STANDARD
`
`Summary judgment is proper when the pleadings,
`discovery and affidavits show that there is "no genuine
`issue as to any material fact and that the moving party is
`entitled to judgment as a matter of law." Fed. R. Civ. P.
`56(c). Material facts are those which may affect
`the
`outcome of the case. Anderson v. Liberty Lobby, Inc., 477
`U.S. 242, 248, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986).
`A dispute as to a material [**5] fact is genuine if there is
`sufficient evidence for a reasonable jury to return a
`verdict for the nonmoving party. Id. The party moving for
`summary judgment bears the burden of identifying those
`portions of the pleadings, discovery, and affidavits that
`demonstrate the absence of a genuine issue of material
`fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.
`Ct. 2548, 91 L. Ed. 2d 265 (1986). On an issue for which
`the opposing party will have the burden of proof at trial,
`the moving party need only point out "that there is an
`absence of evidence to support the nonmoving party's
`case." Id.
`
`Once the moving party meets its initial burden, the
`nonmoving party must go beyond the pleadings and, by
`its own affidavits or discovery, "set forth specific facts
`showing that there is a genuine issue for trial." Fed. R.
`Civ. P. 56(e). Mere allegations or denials do not defeat a
`moving party's allegations. Id.; Gasaway v. Northwestern
`Mut. Life Ins. Co., 26 F.3d 957, 960 (9th Cir. 1994). The
`court may not make credibility determinations, and
`inferences to be drawn from the facts must be viewed in
`the light most favorable to the party opposing [**6] the
`motion. Masson v. New Yorker Magazine, 501 U.S. 496,
`520, 111 S. Ct. 2419, 115 L. Ed. 2d 447 (1991);
`Anderson, 477 U.S. at 249.
`
`The moving party may "move with or without
`supporting affidavits for a summary judgment
`in the
`party's favor upon [*1093] all or any part thereof." Fed.
`R. Civ. P. 56(a). "Supporting and opposing affidavits
`shall be made on personal knowledge, shall set forth such
`facts as would be admissible in evidence, and shall show
`affirmatively that the affiant is competent to testify to the
`matters stated therein." Fed. R. Civ. P. 56(e).
`
`DISCUSSION
`
`Exhibit 1012, page 2
`
`

`

`531 F. Supp. 2d 1084, *1093; 2007 U.S. Dist. LEXIS 44288, **6
`
`Page 3
`
`I. SEL's Motions
`
`summary judgment as to both patents.
`
`A. Infringement of the '480 Patent
`
`1. The '480 Patent
`
`The parties' arguments regarding infringement of the
`'480 patent are substantively identical to the arguments
`raised regarding CMO's previous motion for summary
`judgment. In essence, SEL asserts that it has made a
`prima facie case for infringement, and that CMO's only
`defense against infringement is its contention that the
`claim term "second interlayer insulating film" must be
`construed as requiring a planar surface. Because CMO's
`products are intentionally non-planar,
`[**7] CMO
`argues, CMO's devices cannot infringe. CMO does not
`appear to contest this characterization of its position or
`otherwise offer any argument against infringement other
`than its argument based on the planarity of the dielectric
`film. 1 CMO does raise a separate argument asserting
`SEL's inability to show infringement based on foreign
`sales, which will be addressed in the section on
`defendant's foreign sales motion below.
`
`CMO's theory of inequitable conduct with respect to
`the '480 patent is that SEL created fictional prior art and
`failed to cite actual prior art that would have revealed the
`falsity of SEL's purported prior art.
`
`a. Material Misrepresentation or Omission
`
`Omitted prior art is material if "there is a substantial
`likelihood that a reasonable Examiner would have
`considered the information [**9] important in deciding
`whether to allow the application to issue as a patent." Life
`Techs., 224 F.3d at 1325. CMO must demonstrate
`materiality both as to the purported falsity of the admitted
`prior art, labeled as "Figure 13" in the '480 patent, and
`the actual prior art references that SEL allegedly withheld
`from the PTO.
`
`[*1094] i. Figure 13
`
`1 CMO has filed a request for leave to file a
`supplemental opposition to SEL's motion for
`summary judgment in order to set forth an entirely
`new non-infringement argument. CMO's request
`is denied.
`
`Figure 13 of the '480 patent is a diagram labeled
`"Prior Art" showing a large conductive spacer in the
`opening of a second insulating film. As this court noted
`in its Claim Construction Order,
`the location of the
`conductive spacer was a critical issue in the '480 patent:
`
`This court previously held that "the asserted claims
`of the '480 Patent cover nonuniform second interlayer
`dielectric films in the common contact portion of the
`matrix." Summary Judgment Order at 22. This order was
`issued after the initial briefing on the instant motions.
`Because the court has previously resolved this issue in
`favor of SEL, SEL is entitled to summary judgment of
`infringement [**8] as to the '480 patent subject to the
`court's holdings regarding foreign sales set forth below.
`
`B. Inequitable Conduct
`
`(1) affirmative
`Inequitable conduct consists of
`misrepresentations of material fact, (2) submission of
`false material information, or (3) the failure to disclose
`known material information during the prosecution of a
`patent, coupled with the intent to deceive the PTO. Life
`Techs., Inc. v. Clontech Lab., Inc., 224 F.3d 1320, 1324
`(Fed. Cir. 2000). "Materiality and intent to deceive are
`distinct factual inquiries, and each must be shown by
`clear and convincing evidence." Id. CMO has raised
`inequitable conduct as an affirmative defense as to the
`'480 patent and the '258 patent. SEL now moves for
`
`The '480 patent provides a way of
`reliably creating an electrical connection
`from the TFT substrate to the opposing
`substrate while maintaining a uniform gap
`between the substrates. One obstacle to
`achieving a uniform gap in the prior art is
`variation in thickness of the insulating--or
`"dielectric"--layer deposited just beneath
`the electrodes on the TFT substrate. In
`prior art displays, the metal contact for the
`electrical
`connection
`to
`the
`counter
`substrate was located on a layer below the
`level
`of
`the
`dielectric. Thus,
`the
`conductive spacer had to be [**10] of a
`size roughly equal to the thickness of the
`dielectric layer plus the width of the gap
`between the substrates in order to make
`electrical contact with both substrates.
`Because it
`is difficult
`to control
`the
`thickness of the dielectric layer from panel
`to panel, and even within a single panel, it
`was difficult
`to create spacers of the
`
`Exhibit 1012, page 3
`
`

`

`531 F. Supp. 2d 1084, *1094; 2007 U.S. Dist. LEXIS 44288, **10
`
`Page 4
`
`correct size. The improvement of the '480
`patent is to locate the metal contact for the
`electrical
`connection on top of
`the
`dielectric
`layer,
`eliminating
`the
`relationship between the thickness of the
`dielectric and the size of the conductive
`spacers.
`
`Claim Construction Order at 4-5 (emphasis in original,
`citations omitted). CMO claims that SEL devised a prior
`art contact structure that would make SEL's claimed
`structure appear novel, but that the actual prior art did not
`contain the defect purportedly addressed by the '480
`patent. Figure 13 is clearly material in light of the fact
`that
`the location of the conductive spacer has been
`identified as the innovation of the '480 patent.
`
`The materiality of Figure 13 does not end the
`inquiry, however, as the court must determine whether
`SEL has adduced sufficient evidence that the inclusion of
`[**11] Figure 13 was in fact a misrepresentation. In
`support of its claim that Figure 13 is a fabrication, CMO
`asserts that no SEL witnesses, including the inventors,
`could recall or
`identify any device (other
`than an
`unspecified SEL device), patent, patent application, text,
`article or publication with the structure disclosed in
`Figure 13. Unikel Opp. Dec., Exh. 2, Yamazaki Dep. at
`250:19-259:17, 244:2-245:13; Unikel Opp. Dec., Exh. 4,
`Hirakata Dep. at 43:19-44:2. Additionally,
`the SEL
`employee who drew Figure 13 could not provide any
`information as to what she looked at to draw the figure or
`any other basis for her understanding of the prior art
`structure. Unikel Opp. Dec., Exh. 5, Sato Dep. at
`91:9-96:6. The attorney who prosecuted the '480 patent
`likewise had no information as to whether the Figure 13
`prior art drawing was accurate. Unikel Opp. Dec., Exh. 6,
`Robinson Dep. at 71:8-73:3. Finally, SEL has produced
`no prior art device or publication through discovery in
`this action which is consistent with the structure shown in
`Figure 13.
`
`that Figure 13 was
`In response, SEL claims
`developed based on SEL's own designs and products, and
`that SEL's failure to provide the exact models does
`[**12] not support CMO's contention that Figure 13 was
`a fabrication. One inventor testified that he was familiar
`with a device that was consistent with Figure 13, and that
`"at SEL panels with similar structures were being made"
`in 1996 and 1997. Unikel Opp. Dec., Exh. 4, Hirakata
`Dep. at 43:19-44:2. The other inventor likewise testified
`
`that the structure disclosed in Figure 13 was one of the
`configurations that SEL [*1095] was using in 1997.
`Unikel Opp. Dec., Exh.
`2, Yamazaki Dep.
`at
`257:24-258:19.
`
`Additionally, SEL claims that CMO's own invalidity
`contentions disclose a prior art reference, U.S. Patent No.
`6,219,124, which was cited by the examiner during the
`prosecution of the '480 patent, as disclosing all claim
`elements except for a conductive spacer placed on top of
`an insulating film. Schlitter Rep. Dec., Exh. 6 at Exh. B3.
`Finally, CMO's expert does not corroborate CMO's
`argument regarding the falsity of Figure 13. Schlitter
`Rep. Dec., Exh. 1, Mossinghoff Dep. at 97:21-25 (stating
`that he had no information that any misrepresentations, as
`opposed to omissions, were made in connection with the
`prosecution of the patents-in-suit).
`
`least creates a
`this evidence at
`Taken together,
`genuine [**13]
`issue of material fact as to whether
`Figure 13 was based on actual products with which the
`inventors of the '480 patent were familiar, rather than a
`complete fabrication intended to mislead the PTO.
`
`ii. Prior Art Publications
`
`CMO relies on three publications in support of its
`inequitable conduct claim regarding the '480 patent: U.S.
`Patent No. 5,757,456 ("the '456 patent"), Japanese Patent
`Publication 06-289415 ("the '415 publication"), and
`Japanese Patent Publication H06-186579 ("the '579
`publication"). According to CMO, these references each
`disclose conductive spacers placed on top of an insulating
`film rather than in the holes of the film.
`
`This court discussed the '456 patent and the '415
`publication at length in its Summary Judgment Order.
`With respect to the '415 publication, the court held that
`this reference disclosed conductive spacers held over a
`second interlayer insulating film, but that the reference
`did not disclose a "plurality" of such spacers. Summary
`Judgment Order at 25-27. The court likewise held that the
`'456 patent does not disclose a plurality of conductive
`spacers, but made no specific holding as to the location of
`the conductive spacers that were present. [**14] Id. at
`32-33. Because SEL did not contest
`that particular
`limitation in the prior summary judgment proceedings,
`however, SEL has waived its objections to CMO's
`contention that
`the '456 patent discloses conductive
`spacers held over a second interlayer insulating film.
`
`Exhibit 1012, page 4
`
`

`

`531 F. Supp. 2d 1084, *1095; 2007 U.S. Dist. LEXIS 44288, **14
`
`Page 5
`
`is
`the '456 patent
`SEL nonetheless claims that
`cumulative to Figure 13, and therefore immaterial as a
`matter of law. See Mentor H/S, Inc. v. Med. Device
`Alliance, Inc., 244 F.3d 1365, 1378 (Fed. Cir. 2001)
`(holding that "disclosures are not material if they are
`merely cumulative of references that were already before
`the examiner"). A reference is cumulative if it "teaches
`no more than what a reasonable examiner would consider
`to be taught by the prior art already before the PTO."
`Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d
`1559,1575 (Fed. Cir. 1997). SEL's contention regarding
`Figure 13 is that it fails to disclose (1) a second interlayer
`insulating film provided on said first conductive film,
`said second interlayer insulating film having at least two
`openings; and (2) a plurality of conductive spacers held
`between said first substrate and said second substrate.
`Because [**15] these two limitations are likewise absent
`in the '456 reference, SEL argues, the '456 reference is
`cumulative of the disclosed prior art. However, the '456
`reference also discloses conductive spacers held over a
`second interlayer insulating film, as noted above. This is
`an additional critical limitation missing from Figure 13.
`Accordingly, the '456 patent is not cumulative of Figure
`13, and SEL has not shown that
`the '456 patent
`is
`immaterial as a matter of law.
`
`the '579 publication is
`SEL likewise argues that
`cumulative of Figure 13 because
`[*1096]
`it
`is
`"substantively identical" to the '415 publication. SEL
`again argues that the reference is cumulative because it
`does not disclose a plurality if conductive spacers. To the
`extent
`that
`the reference discloses conductive spacers
`held over
`the second interlayer
`insulating surface,
`however, the '579 reference contains a critical limitation
`absent from Figure 13 and is therefore not immaterial as a
`matter of law.
`
`b. Intent
`
`SEL does not challenge the sufficiency of CMO's
`evidence related to intent to deceive with respect to the
`'456 patent or the '579 publication. Accordingly, SEL is
`not entitled to summary judgment on that basis. SEL
`does,
`[**16] however, assert that CMO has provided
`insufficient evidence of intent to deceive regarding the
`'415 publication.
`
`requirement, there can be no duty to disclose an unknown
`prior art reference. See FMC Corp. v. Manitowoc Co.,
`835 F.2d 1411, 1415 (Fed. Cir. 1987). As SEL points
`out, CMO's only evidence of knowledge with respect to
`the '415 publication is the fact
`that
`it was cited by
`Yamazaki and Hirakata, the two inventors of the '480
`patent, during the prosecution of U.S. Patent No.
`6,703,643. SEL claims that SEL did not become aware of
`this reference until the Japanese Patent Office cited it on
`December 24, 2002, more than six months after the '480
`patent issued. Schlitter Dec., Exh. 23. CMO responds to
`this argument in a footnote, acknowledging the facts of
`SEL's temporal argument but claiming that the citation in
`the '643 patent proves that Yamazaki and Hirakata knew
`of the '415 publication at some point in time prior to then.
`CMO then cites the similarities [**17] between the '415
`publication and the
`'579 publication, which was
`admittedly known to SEL during the '480 prosecution,
`and argues that a material
`issue of fact exists as to
`whether someone involved in the '480 prosecution knew
`of the '415 publication during that time. While CMO's
`argument regarding the '415 publication is somewhat
`weak,
`inequitable
`conduct may
`be
`shown
`by
`circumstantial evidence. In light of the additional factual
`issues regarding the remaining publications, therefore, the
`parties would be best served by having the jury consider
`evidence related to the '415 publication as well.
`
`In sum, SEL is not entitled to summary judgment on
`CMO's inequitable conduct defense regarding the '480
`patent.
`
`2. The '258 Patent
`
`A critical element of the asserted claims of the '258
`patent is the step of "etching the exposed portion of the
`second semiconductor film to form source and drain
`regions wherein a channel forming region is formed in
`said first semiconductor film between said source and
`drain regions." CMO asserts that SEL misrepresented the
`state of the prior art concerning "overetching" when
`prosecuting the '258 patent, and withheld material prior
`art that would have revealed [**18] the true state of the
`art.
`
`a. Overetching
`
`Specifically, SEL argues that no one having a duty to
`disclose prior art to the PTO in connection with the
`prosecution of the '480 patent was aware of the '415
`publication during the prosecution. In light of the intent
`
`the
`the '258 patent,
`In rejecting the claims of
`examiner stated that
`the claims were not patentably
`distinct from the claims of U.S. Patent No. 6,124,155
`("the '155 patent"), also owned by SEL, and that "it is
`
`Exhibit 1012, page 5
`
`

`

`531 F. Supp. 2d 1084, *1096; 2007 U.S. Dist. LEXIS 44288, **18
`
`Page 6
`
`well known to overetch to expose the source and drain
`regions of the TFT device." Unikel Dec., Exh. 14 at 3. In
`response, SEL and Yamazaki requested that the examiner
`cite references in support of the latter position, and stated
`that "overetching to expose the source and drain [*1097]
`regions of the TFT device is not conventional and would
`not have been known to one with ordinary skill in the art
`at the time of invention." Id. at Response page 2.
`
`CMO argues that this assertion was knowingly false,
`citing the following evidence. SEL's Local Patent Rule
`4-2 Statement in this action indicates that "overetching
`[wa]s normally a part of every etching process" at the
`time the '258 patent was filed. Joint Statement of
`Undisputed Facts ("JSUF") PP 59-60. Additionally,
`Yamazaki testified that he was familiar with, and used,
`the process of overetching to create semiconductor
`devices since at least the early 1970s. Unikel Opp. Dec.,
`Exh. 2,
`[**19] Yamazaki Dep. at 405:13-21. Finally,
`Yamazaki and SEL cited to U.S. Patent No. 5,198,694
`("the '694 patent") in two patent applications prosecuted
`at the same time as the '258 application, but not in the
`'258 application itself. CMO asserts that the '694 patent
`expressly discloses (1) that it was conventional to use a
`wet etchant to etch the conductive layer in a TFT; (2) that
`overetching the conductive layer with a wet etchant was
`common; and (3) that overetching the conductive layer
`with a wet etchant could result in a stepped structure.
`Docket Entry 194, Exh. T, '694 Patent at 3:55-63. CMO
`additionally claims that SEL separately submitted the
`entire family of prior art patents directly related to the
`'694 patent when prosecuting a separate patent. Unikel
`Opp. Dec., Exh. 12 at 1 and attachments.
`
`that
`'694 patent, SEL asserts
`Regarding the
`Yamazaki is not a named inventor of the '258 patent,
`which names Zhang and Kusomoto as the inventors, and
`that no inventor or prosecuting attorney of the '258 patent
`knew of the '694 patent. Furthermore, SEL claims that
`there is no evidence that Yamazaki had any involvement
`in the prosecution of the '258 patent. Likewise, although
`Robinson, the [**20] attorney who prosecuted the '258
`patent, was involved in the prosecution of a separate SEL
`patent which cited the '694 patent, Robinson left the firm
`handling the former patent before the citation to the '694
`patent was added. Schlitter Dec., Exh. 11; Robinson Dec.
`P 3. Because there is no evidence that Zhang, Kusomoto
`or Robinson knew of
`the '694 patent during the
`prosecution of the '258 patent, SEL argues, there was no
`duty to disclose this unknown reference.
`
`issue of Yamazaki's
`CMO addresses the crucial
`involvement in the prosecution of the '258 patent in a
`footnote. According to CMO, Yamazaki controlled the
`prosecution of SEL's patent portfolio, and Yamazaki
`closely monitored and directed the prosecution strategy
`for the '258 patent. Unikel Opp. Dec., Exh. 2, Yamazaki
`Dep. at 16:20-19:1, 390:9-392:16; Unikel Opp. Dec.,
`Exh. 9 at SEL-CMO 0068867-81. CMO's chief piece of
`evidence tying Yamazaki directly to the '258 patent is a
`memorandum dated January 6, 1999 describing a prior art
`device which SEL allegedly withheld from the PTO. The
`memorandum is
`titled
`"Meeting with
`President
`Yamazaki," and states that "according to President
`Yamazaki's instructions, claim 1 is broad, and a Notice
`[**21] of Rejection will likely come, so there is probably
`no need to move now." Unikel Opp. Dec., Exh. 9 at
`0068872. 2
`
`2
`
`from
`passages
`cites
`CMO additionally
`another District Court decision in which SEL was
`involved discussing Yamazaki's role in SEL's
`patent practice. Semiconductor Energy Lab. Co. v.
`Samsung Elecs. Co., 4 F. Supp. 2d 477 (E.D. Va.
`1998). For the purposes of this motion, the court
`is concerned only with the evidence in the instant
`action, not
`the findings of another court
`in a
`separate action.
`
`In response to this evidence, SEL argues that the
`memorandum indicates the instruction from Yamazaki
`was given no [*1098] later than January 6, 1999. The
`next application related to the '258 patent following this
`memorandum was filed on April 14, 1999, and issued as
`U.S. Patent No. 6,335,213 on January 1, 2002. Schlitter
`Dec., Exh. 1. SEL therefore asserts that any duty of
`disclosure tied to Yamazaki's instructions in the January
`1999 memorandum terminated on January 1, 2002.
`Chiron Corp. v. Genentech, Inc., 268 F. Supp. 2d 1126,
`1138 (E.D. Cal. 2002) [**22] (holding that "the duty to
`disclose information ends when a patent is granted on an
`application"). Because Yamazaki did not learn of the '694
`patent until November 2003 at the earliest, Yamazaki had
`no duty to disclose the '694 patent in prosecuting the
`application for the '213 patent. Unikel Opp. Dec., Exh.
`12. Additionally, the application for the '258 patent was
`filed on May 8, 2002, and the patent issued on June 29,
`2004. Apart from the memorandum from January 1999
`related to a patent that issued three years later, CMO has
`
`Exhibit 1012, page 6
`
`

`

`531 F. Supp. 2d 1084, *1098; 2007 U.S. Dist. LEXIS 44288, **22
`
`Page 7
`
`presented no evidence that Yamazaki was involved in the
`prosecution of the '258 patent itself. CMO is thus left to
`rely on its contentions regarding Yamazaki's general
`interest
`in SEL's patents. Absent more substantial
`evidence of Yamazaki's involvement
`in the specific
`application at issue, CMO cannot meet its burden on
`summary judgment.
`
`is
`the '694 patent
`Additionally, SEL states that
`immaterial because its relevant teaching is limited to the
`fact that overetching was known in the prior art. SEL
`contests CMO's assertion that the '694 patent also taught
`the formation of a stepped TFT structure, citing
`testimony from CMO's own expert stating that the '694
`"was
`[**23]
`teaching away from that
`structure,
`step-down structure." Schlitter Rep. Dec., Exh. 3, Kanicki
`Dep. at 306:5-7. Because the '694 patent disclosed only
`the process of overetching generally, which was known
`in the prior art, the reference is immaterial as a matter of
`law because the Examiner is presumed to be familiar with
`the prior art.
`
`Turning to SEL's representations regarding the state
`of the prior art as to overetching, SEL denies that it made
`any misleading statements in this regard. In particular,
`SEL argues that
`its position was that overetching to
`create stepped structures was not known, not
`that
`overetching itself was not known. Significantly,
`the
`contested statement from the examiner was that "it is well
`known to overetch to expose the source and drain
`regions of the TFT device." Unikel Dec., Exh. 14 at 3
`(emphasis added). SEL's response was likewise tied to
`the specific process of creating stepped structures,
`claiming that "overetching to expose the source and drain
`regions of the TFT device is not conventional and would
`not have been known to one with ordinary skill in the art
`at
`the time of
`invention." Id. at Response page 2
`(emphasis added). CMO's evidence [**24]
`regarding
`SEL's knowledge of the use of overetching as a part of
`semiconductor manufacturing in general does not
`contradict SEL's
`assertions
`regarding the use of
`overetching to the specific, purportedly novel, purpose of
`creating a stepped TFT structure. Accordingly, CMO has
`provided insufficient evidence of inequitable conduct
`related to the prior art regarding overetching.
`
`b. Stepped TFT Structures
`
`CMO additionally alleges that SEL made false
`representations regarding the novelty of creating a
`stepped TFT structure. In particular, CMO claims that
`
`SEL (1) responded to the '258 patent examiner's rejection
`based on the '155 patent by suggesting that the claimed
`"stepped" TFT structure was somehow new and different
`from prior art
`structures, and (2) challenged the
`examiner's reliance on Japanese Patent No. JP 63-86573
`("the '573 patent") by implying that the reference did not
`show the same structure described in [*1099]
`the '258
`claims. CMO claims
`that
`these
`assertions were
`misleading because SEL knew of one reference, U.S.
`Patent No. 5,270,567 ("the '567 patent") which discloses
`a stepped structure.
`
`Regarding the '573 patent, as a reference which the
`PTO undeniably had access to and [**25] considered,
`this reference categorically cannot form the basis of an
`inequitable conduct claim. "When a reference was before
`the examiner, whether through the examiner's search or
`the applicant's disclosure, it can not be deemed to have
`been withheld from the examiner." Scripps Clinic &
`Research Found. v. Genentech, Inc., 927 F.2d 1565, 1582
`(Fed. Cir. 1991). Additionally, attempting to distinguish
`prior art does not constitute a material omission or
`misrepresentation. Akzo N.V. v. U.S. Int'l Trade Comm'n,
`808 F.2d 1471, 1482 (Fed. Cir. 1986). When a patentee
`makes a representation regarding prior art,
`"[t]he
`examiner [i]s free to reach his own conclusion . . . based
`on the art in front of him." Id. CMO's assertion that SEL
`somehow duped the examiner into misinterpreting the
`'573 patent when the examiner was able to perform his or
`her own independent analysis of the reference cannot
`support an inequitable conduct defense.
`
`this
`Regarding the '567 patent, SEL argues that
`reference is cumulative of the '573 patent and therefore
`immaterial. The parties appear to agree that the '567
`patent discloses a TFT device having a stepped structure
`with [**26] exposed source and drain regions, which is
`the basis for the materiality of the '573 patent.
`'567
`patent, Fig. 2. Attempting to establish that the '567 patent
`is not cumulative, CMO raises two principal points. First,
`based on the diagrams in the '567, '573 and '258 patents,
`CMO claims that the TFT structure shown in the '567
`patent is "visually, much more similar" to the structure in
`the '258 patent. Unikel Opp. Dec., Exh. 11, Kanicki Dep.
`at
`330:5-332:3,
`349:16-350:22. While
`it
`is
`not
`immediately clear that the diagram in the '567 structure is
`indeed more similar to the structure of the '258 patent,
`CMO offers no authority for its proposition that it may
`overcome a cumulativeness argument by citing increased
`visual similarities between diagrams. The salient issue is
`
`Exhibit 1012, page 7
`
`

`

`531 F. Supp. 2d 1084, *1099; 2007 U.S. Dist. LEXIS 44288, **26
`
`Page 8
`
`claim limitations. The purported increased similarity does
`not change the fact that both references disclose a stepped
`TFT structure.
`
`Second, CMO claims that the '573 patent fails to
`disclose that a TFT with a stepped structure is beneficial
`to help reduce parasitic capacitance. The '567 patent
`specifically identifies this as a benefit of the stepped
`structure. '567 patent at 1:50-2:2, 2:6-22. Again, CMO
`offers no authority [**27] supporting its claim that a
`reference that discloses a benefit of a claim limitation
`where the claim limitation itself is disclosed elsewhere is
`more material
`than the reference which discloses the
`claim limitation only. CMO has failed to establish that
`the additional information in the '567 patent is material in
`any way.
`
`In sum, CMO has failed to raise sufficient evidence
`to support any of its theories of inequitable conduct with
`respect to the '258 patent. SEL is therefore entitled to
`summary judgment on CMO's inequitable conduct claim
`as to the '258 patent. 3
`
`to preserve additional
`CMO attempts
`3
`inequitable conduct arguments related to a host of
`other
`references by cramming a number of
`conclusory statements into a large footnote in its
`opposition brief. CMO Opp. at