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April 16, 1996


The opinion of the court was delivered by: WHYTE

 Defendant Applied Materials, Inc.'s ("Applied") motion for summary judgment on best mode violation was heard on February 9, 1996. The court has read the moving and responding papers and heard the argument of counsel. For the reasons set forth below, the court grants defendant's motion.


 On October 17, 1989, plaintiff Advanced Semiconductor Materials America, Inc. ("ASM") was issued U.S. Patent No. 4,874,464 ("the '464 patent"), which describes a "process for epitaxial deposition of silicon." On January 11, 1993, ASM filed suit against Applied alleging that Applied's "Centura Epitaxial reactor" infringes its patent in violation of 35 U.S.C. sections 271 and 281.

 On October 14, 1994, Applied filed a motion for partial summary judgment, arguing that ASM's patent is invalid for failure to comply with the "best mode" requirement. Applied contended that the patent allegedly disclosed an ineffective method of heating, radio frequency ("RF") heating (also called inductive heating), and did not disclose the "best mode" of practicing the patent, radiant ("IR") heating (also called lamp heating). On November 7, 1994, ASM filed an opposition and countermotion for summary judgment on the best mode defense, in which it contended that it was entitled to summary judgment on the best mode defense because it disclosed IR heating through incorporation by reference to another patent, U.S. Patent No. 4,828,224 (the "Crabb patent"), and because the heating system is not part of the claimed invention and thus no disclosure was necessary. Further, ASM contended that Applied should not be granted summary judgment because factual issues remain as to whether the inventors of the '464 patent contemplated IR heating as the best mode and whether one of ordinary skill in the art would know from the '464 disclosure that the claimed process could be performed effectively with IR heating. On December 16, 1994, this court denied both ASM's and Applied's motions for summary judgment on the best mode defense. In denying Applied's motion the court stated "a reasonable juror, in considering the inventors' declarations, could find that the defendant has not shown 'with convincing clarity' that the inventors contemplated that only IR heating would be effective."

 On November 3, 1995, defendant Applied filed another motion for summary judgment on the best mode violation based on discovery taken after this court's December 16, 1994 order. Applied alleges that admissions made during such subsequent discovery by the inventors "establishes that the only plausible conclusion is that lamp heating was preferred by the inventors because, among other things, it provides uniform heating." ASM opposes the motion contending Applied's present motion is procedurally flawed since Applied failed to first seek court leave for reconsideration of the court's prior ruling on the best mode issue. ASM also reargues that it properly disclosed the IR heating through its incorporation of the Crabb patent application by reference and that the '464 patent adequately discloses to a person of ordinary skill that the '464 process could be used on a radiantly heated reactor.


 Summary judgment is proper when "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, 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. Rule 56(c). There is a "genuine" issue of material fact only when there is sufficient evidence such that a reasonable juror could find for the party opposing the motion. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251-52, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986). Entry of summary judgment is mandated against a party if; after adequate time for discovery and upon motion, the party fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial. Celotex Corp. v. Catrett, 477 U.S. 317, 322, 91 L. Ed. 2d 265, 106 S. Ct. 2548 (1986). This court, however, must draw all justifiable inferences in favor of the nonmoving parties, including questions of credibility and of the weight to be accorded particular evidence. Masson v. New Yorker Magazine, Inc., 501 U.S. 496, 111 S. Ct. 2419, 2435, 115 L. Ed. 2d 447 (1991).


 A. Procedural issue

 As a threshold matter, ASM argues that Applied's motion for summary judgment on a best mode violation is improperly brought in violation of the local rules because Applied did not seek leave to file a motion for reconsideration pursuant to Civil Local Rule 7-9. Moreover, ASM contends that even if Applied's motion is treated as a motion for leave, the motion does not satisfy the procedural requirements of Civil Local Rule 7-10. Finally, ASM argues that even if the procedural rules are waived, Applied has failed to prove any of the allowable bases for a motion for reconsideration.

 Applied has not filed a motion for reconsideration. Def. Reply Supp. Summ. J. Best Mode at 3, fn. 1. It filed a renewed motion. A moving party may renew a motion for summary judgment notwithstanding denial of an earlier motion by showing a different set of facts or some other reason justifying renewal of the motion. William W. Schwarzer et al., Federal Civil Procedure Before Trial P14:367 (1995). The earlier denial is not res judicata or "law of the case." Id. (citing Preaseau v. Prudential Ins. Co. of America, 591 F.2d 74, 79 (9th Cir. 1979); Golden Gate Hotel Ass'n v. City & County of San Francisco, 18 F.3d 1482, 1485 (9th Cir. 1994)). Applied argues that its current motion for summary judgment is based on new evidence obtained in recent depositions including those of the inventors. After reviewing the moving and responding papers, this court finds that there is a basis for Applied's renewed motion.

 B. Substantive issue

 35 U.S.C. section 112 states that the specification in the patent application "shall set forth the best mode contemplated by the inventor of carrying out his invention." The essence of the "best mode" requirement is to compel an inventor to disclose the best mode contemplated by him, as of the time he files the patent application, of carrying out his invention. Chemcast Corp. v. Arco Industries Corp., 913 F.2d 923, 926 (Fed. Cir. 1990) ("Chemcast"). The sole purpose of such requirement is to restrain inventors from applying for patents while at the same time concealing from the public preferred embodiments of their inventions which they have in fact conceived. Id. It is immaterial whether that failure to disclose is intentional or accidental. Dana Corp. v. IPC Ltd. Partnership, 860 F.2d 415, 418 (Fed. Cir. 1988), cert. denied, 490 U.S. 1067, 104 L. Ed. 2d 633, 109 S. Ct. 2068 (1989) ("Dana"). See also Envirex Inc. v. FMC Corp., 1993 U.S. Dist. LEXIS 20005, 28 U.S.P.Q.2D (BNA) 1752, 1756 (E.D. Wis. 1993), aff'd, 16 F.3d 420 (Fed. Cir. 1993) (unpublished) (no requirement that failure to disclose be intentional before it can violate the best mode requirement). Compliance with the best mode requirement is generally a question of fact. Shearing v. Iolab, 975 F.2d 1541 (Fed. Cir. 1991). However, best mode may be determined as a matter of law if reasonable minds could not differ on whether the best mode requirement is satisfied. Dana, 860 F.2d at 419-20.

 A defendant relying on the "best mode" defense must prove two elements: (1) that the "inventor knew of a mode of practicing the claimed invention that he considered to be better than any other at the time he filed his application" and (2) that the inventors failed to adequately disclose this preferred embodiment of the invention. Transco Products Inc. v. Performance Contracting, Inc., 38 F.3d 551, 560 (Fed. Cir. 1994) ("Transco Products") (citing Chemcast, 913 F.2d at 927-928). The first element concerns a subjective factual question: what the inventors believed at the time they filed the application. Envirex Inc. v. FMC Corp., 28 U.S.P.Q.2D (BNA) at 1757-58. The second element concerns an objective question: whether the disclosure is adequate to enable one skilled in the art to practice the best mode. Id. "Of necessity, the disclosure required by section 112 is directed to those skilled in the art." Chemcast 913 F.2d at 926. The adequacy of a best mode disclosure is therefore a function not only of what the inventor knew but also of how one skilled in the art would have understood his disclosure. 913 F.2d at 927. "However, merely because a technique is generally known in the ... does not eliminate a best mode defect." Wahl Instruments, Inc. v. Acvious, Inc., 950 F.2d 1575, 1580 (Fed. Cir. 1991) ("Wahl") (emphasis in original). There is a best mode violation where an inventor contemplated an undisclosed method which was necessary to his invention and affected how well it worked. Id. Moreover, there may be a best mode violation even where there is a general reference to the best mode of practicing the claimed invention if the quality of the disclosure is so poor as to effectively conceal it. Transco Products, 38 F.3d at 560.

 1. Contemplation of the Best Mode

 ASM argues that nothing has changed since Applied's last summary judgment motion on this issue in which the Applied failed to prove that the inventors contemplated any heating source as part of the '464 process best mode. The court disagrees.

 The '464 patent lists five inventors, Dennis L. Goodwin ("Goodwin"), Mark R. Hawkins ("Hawkins"), Wayne L. Johnson ("Johnson"), Aage Olsen ("Olsen"), and McDonald Robinson ("Robinson"). At the time of the prior motion for summary judgment, Applied offered various portions of the then existing deposition transcripts of the inventors to support its best mode defense. Inventor Hawkins testified that he never actually worked with an RF-heating apparatus while at ASM. He furthered testified that the reference to RF-heating in the '464 patent was an error; "they meant IR instead of RF." Reines Decl. (1994) Ex. D at 160. He also affirmed that lamp heating is the method that ASM decided was the best way to achieve temperature uniformity in the '464 patent." Id. Inventor Goodwin further supported that ASM was not using RF heating. Reines Decl. (1994) Ex. E at 58. Goodwin stated that the references to RF-heating in the '464 patent were a "screw[] up," a "typo," and a "mistake" because RF heating "had nothing to do with this patent other than prior art." Id. Inventor Olsen stated that he understood that ASM had tried RF heating as well as IR heating before he had arrived and had finally settled on radiant heating. Reines Decl. (1994) Ex. F at 132.

 ASM, in opposition, offered the declarations of four of the five inventors of the '464 patent, all of whom were ASM employees, to support its contention that the inventors never contemplated IR heating as the best mode. Each declaration contained precisely the same language regarding the inventor's contemplation of IR heating as the best mode:

 Goodwin Decl. (1994) P5; Hawkins Decl. (1994) P6; Olsen Decl. (1994) P6; Robinson Decl. (1994) P6.

 Applied argued that these declarations conflicted with earlier deposition testimony and should not be considered. However, the court noted that it did not need to decide whether it found the inventors' declarations persuasive; rather, it only needed to decide whether a reasonable jury could find the best mode defense lacking. The court concluded that a reasonable juror could so find and therefore denied summary judgment as to Applied's best mode defense.

 In the present motion, ASM argues that the inventors have not recanted their previously submitted declarations and therefore there still exists a question of fact regarding whether the inventors contemplated radiant heating as the best mode. Although the inventors have not recanted their declarations, Applied's subsequent depositions of inventor Hawkins on October 18, 1995, inventors Goodwin and Robinson on October 19, 1995 and inventor Olsen on October 20, 1995 shed new light on what the inventors understood their declarations to mean and what they contemplated about radiant heating and the '464 process.

 Inventor Robinson was the Epsilon group's Director of Analysis and Research, and the number two technical person behind inventor Johnson. During his deposition, Robinson clarified his understanding of the last sentence in the above mentioned excerpt from the inventors' uniform declarations:

Q. Now, in paragraph 6, the last sentence you state, "While we developed the patent process on a radiantly heated reactor, we never believed that an RF-heated reactor would not work as effectively at obtaining those temperature levels."
Again, here you're referring to just the ability of the different heating mechanisms to reach the temperature and not the other parameters, such as the temperature uniformity and things like that?
A. I think that's a fair characterization. Reaching these temperature levels would be no problem with RF. Obtaining uniform wafer temperatures under all the conditions discussed in the patent would have required a significant engineering effort.

 Reines Decl. (11-3-95) Ex. B [Robinson Depo.] at 437:5-437:20.

 Robinson also acknowledged that lamp heating was preferred over RF-heating particularly because RF-heating had problems obtaining temperature uniformity in the 4-6 inch wafers which were standard in the late-1980's.

Q. During your work at the Epsilon group, you determined that of those variety of heating mechanisms that could be used for epitaxial deposition for the Epsilon reactor, that lamp heating was the best way of doing it?
A. Could have lots of qualifications, but basically, yes.

 Reines Decl. (11-3-95) Ex. B [Robinson Depo.] at 428:21-429:2.

Q. And what was your final conclusion at the end of your work on trying to improve the RF heated reactors in the area of temperature uniformity regarding how they performed compared to the lamp-heated reactors which were common in the industry at the time?
A. The work that we did [with dished susceptors] was on three-inch wafers, and to the best of my recollection, we were able to achieve the same level of skip free performance on three-inch wafers in RF heated reactors as ...

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