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.
II. LEGAL STANDARDS
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:
I have never considered the apparatus for heating the wafer to be an essential part of the process described in the '464 patent. How one chooses to obtain the temperature levels is not important. One of many different heating mechanisms may be effectively used to obtain the temperatures we identify for our process. 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 temperatures.