United States District Court, D. Minnesota
AUGUST TECHNOLOGY CORPORATION and RUDOLPH TECHNOLOGIES, INC., Plaintiffs,
CAMTEK, LTD., Defendant.
Thomas R. Johnson, William D. Schultz, Daniel W. McDonald, Heather J. Kliebenstein, Joseph E. Lee, and Rachel C. Hughey, MERCHANT & GOULD PC, 80 South Eighth Street, Suite 3200, Minneapolis, MN 55402, for plaintiffs.
Ann N. Cathcart Chaplin and Michael E. Florey, FISH & RICHARDSON PC, 60 South Sixth Street, Suite 3200, Minneapolis, MN 55402; David R. Francescani, Edmond R. Bannon, and Michael F. Autuoro, FISH & RICHARDSON PC, 153 East Fifty-Third Street, Fifty-Second Floor, New York, NY 10022; Sarah J. Guske and Wayne O. Stacy, COOLEY LLP, 380 Interlocken Crescent, Suite 900, Broomfield, CO 80021; Thomas J. Friel, Jr., COOLEY LLP, 101 California Street, Fifth Floor, San Francisco, CA 94111; Mark T. Smith, COOLEY LLP, 3175 Hanover Street, Palo Alto, CA 93404; and Vincent J. Fahnlander and William F. Mohrman, MOHRMAN, KAARDAL & ERICKSON, 150 South Fifth Street, Suite 3100, Minneapolis, MN 55402, for defendant.
MEMORANDUM OPINION AND ORDER
JOHN R. TUNHEIM, District Judge.
Plaintiffs August Technology Corporation and Rudolph Technologies, Inc. brought this patent infringement action against Defendant Camtek, Ltd. ("Camtek") in 2005 alleging infringement of claims 1 through 5 of United States Patent No. 6, 826, 298 (the "6, 298 patent"). In 2009, a jury found that Camtek had infringed claims 1 and 3, and the Court entered judgment and a permanent injunction. In 2011, the Federal Circuit vacated the judgment and remanded for further proceedings with an amended claim construction. Applying the new claim construction, this Court entered summary judgment for Plaintiffs on the issue of infringement in March 2014.
The case is now before the Court on Camtek's motion for new proceedings and a jury trial to determine damages responsive to the revised claim construction, and Plaintiffs' motion for final judgment and a permanent injunction. Because no genuine issues of material fact remain for a jury to decide, and because recent Federal Circuit precedent affects the injunctive relief previously entered in this case, the Court will deny Camtek's motion and grant Rudolph Technologies, Inc.'s motion in part. The Court will also vacate the contempt order entered against Camtek [Docket No. 764], based on the Federal Circuit's decision in Halo Electronics, Inc. v. Pulse Electronics, Inc., 769 F.3d 1371 (Fed. Cir. 2014).
Plaintiff August Technology Corporation developed the inventions that are the subject of the 6, 298 patent. (Thirty-Second Decl. of Joseph E. Lee, Ex. A, July 2, 2012, Docket No. 835.) Rudolph Technologies, Inc. purchased August Technology in 2006, and Rudolph and August Technology (collectively, "Rudolph") are now co-owners of the 6, 298 patent. Camtek directly competes with Rudolph in the market for automated wafer inspection systems, particularly through its "Falcon" device. (Mem. Op. & Order (" Markman Order") at 2, Jan. 3, 2008, Docket No. 268; Compl. ¶¶ 3-5, July 14, 2005, Docket No. 1.) In 2005, Rudolph filed this action against Camtek for infringing the 6, 298 patent.
I. THE 6, 298 PATENT
The 6, 298 patent contains five claims. Claims 1 and 3 are the most relevant to the issue of infringement.
A. Claim 1
Claim one of the 6, 298 patent recites:
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 on 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, a darkfield illuminator positioned approximately above, and a darkfield laser positioned approximately about the periphery of the wafer test plate, 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 developing a model of good quality wafer and comparing unknown quality wafers to the model.
(Compl., Ex. A 20:55-21:9.)
B. Claim 3
Claim three of the 6, 298 patent recites:
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 method 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, a darkfield illuminator positioned approximately above, and a darkfield laser positioned approximately about the periphery of a wafer test plate 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.
( Id., Ex. A 21:17-22:15.)
II. PROCEDURAL HISTORY
A. Claim Construction and Trial
In a January 3, 2008 Markman order, the Court construed a number of terms in the 6, 298 patent that are relevant to the current motions, including:
Wafer. The Court construed "wafer" to mean "[a] thin slice of semiconductor material with circuitry thereon that is ready for electrical testing, or any part thereof." ( Markman Order at 8, 11.)
Training. The Court construed training to mean "[e]xamining wafers to develop a model of a good quality wafer." ( Id. at 20.) In adopting this construction, the Court rejected Rudolph's construction which incorporated "telling the system what a good die' comprises, and viewing good die to form a model based on common characteristics, elements, and ranges. The model is then used to inspect die to locate defects." ( Id. at 19-20 (internal citation omitted).) Instead, the Court found that "Plaintiffs['] reliance on the step in which the model is used to inspect die to locate defects is a step separate from training, and need not be used to define training." ( Id. at 20.)
Based on the Court's claim construction, after an eighteen-day trial, a jury returned a special verdict finding that Camtek and its Falcon device literally infringed both claims 1 and 3 of the 6, 298 patent. (Special Verdict Form at 1-4, Mar. 5, 2009, Docket No. 466.) The jury found that Camtek's infringement ...