Prosecution History Estoppel Presumptively Applies When Amendments Narrow The Scope Of The Original Claims In Response To Patentability Rejections

In Integrated Technology Corp. v. Rudolph Technologies, Inc., Nos. 12-1593, -1618 (Fed. Cir. Nov. 4, 2013), the Federal Circuit reversed the district court's denial of a motion for JMOL that prosecution history estoppel bars the application of the DOE, as well as the district court's finding of willful infringement. The Court also vacated the district court's award of attorneys' fees and costs, and remanded because the district court's exceptional case analysis relied in part on the willfulness finding. But the Court affirmed the district court's award of damages for literal infringement, as well as the district court's finding of no laches.

Plaintiff Integrated Technology Corporation ("Integrated") sued Defendant Rudolph Technologies, Inc. ("Rudolph") for infringement of U.S. Patent No. 6,118,894 ("the '894 patent"), which relates to the use of probes to test chips on semiconductor wafers. The '894 patent specifically discloses a digital viewing system to assess whether probes have misaligned by predicting the length and location of scrub marks created on bonding pads as probe tips move along bonding pads. Claim 1 of the '894 patent specifies that the viewing system obtains a digital image through a viewing window in a first state where the probe tip is driven in contact with the viewing window with a first force, and in a second state where the probe tip is driven in contact with the viewing window with a second force different from the first force.

Integrated alleged that Rudolph's products fall into two categories, which both infringe the claims of the '894 patent. The first category ("pre-2007 products") has probe tips that make physical contact with the viewing window before, or at, the moment an image is taken. The second category ("no-touch products") includes three products that obtain a first image when the probe tips are about five microns above the viewing window. The district court granted SJ of literal infringement as to Rudolph's pre-2007 products. After trial, the jury found that Rudolph's literal infringement with the pre-2007 products was not willful and awarded Integrated lost profits. The jury also found that Rudolph's no-touch products infringed the '894 patent under the DOE, and that the infringement was willful. Rudolph moved for JMOL that prosecution history estoppel barred the application of the DOE, but the district court denied Rudolph's motion. Rudolph appealed.

On appeal, the Federal Circuit reversed the...