§ 102(b) On-Sale Bar Does Not Require An Invention To Be Ready For Patenting When Offered For Sale

This article previously appeared in Last Month at the Federal Circuit, September 2011

Judges: Dyk, Moore (author), O'Malley

[Appealed from D. Minn., Chief Judge Davis]

In August Technology Corp. v. Camtek, Ltd., No. 10-1458 (Fed. Cir. Aug. 22, 2011), the Federal Circuit affirmed-in-part, vacated-in-part, and remanded for further proceedings. The Court affirmed the district court's denials of JMOL and a new trial on invalidity, while also affirming the district court's dismissal of Camtek, Ltd.'s ("Camtek") inequitable conduct defense and counterclaim. Finding the district court erred in its claim construction of the term "wafer," the Court vacated the district court's judgment of infringement, its award of damages, and its grant of a permanent injunction, and remanded for further proceedings.

August Technology Corporation and Rudolph Technologies, Inc. (collectively "August Tech") sued Camtek for infringing claims 1 and 3 of U.S. Patent No. 6,826,298 ("the '298 patent"). A jury found that Camtek literally infringed both claims, the infringement was not willful, and awarded damages. The jury also found Camtek failed to prove the asserted claims were obvious, and that August Tech's NSX-80 device was not on sale prior to the critical date of the '298 patent. The district court then permanently enjoined Camtek from making, using, selling, and offering for sale its infringing Falcon machines. The district court also held that there was no need for a separate trial on inequitable conduct, since the jury found that the NSX-80 device was not prior art. The district court then denied Camtek's post-trial motions for JMOL or a new trial on infringement, damages, and obviousness.

Claims 1 and 3 of the '298 patent are directed to a system and a method for inspecting integrated circuits printed on substrates such as wafers. The claim construction of the district court focused on two claim limitations, "wafer" and "strobes . . . based on velocity." The first claim construction dispute centered upon whether a "wafer" is also a "plurality of wafers." The district court construed a wafer to be "a thin slice of semiconductor material with circuitry thereon that is ready for electrical testing, or any part thereof. However, a 'wafer' is not the same as a 'die.'" Slip op. at 5 (citation omitted). The district court further explained that a "wafer should be construed to include a part of a wafer. Throughout the patent, reference is made to wafers, in whole or in...