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Advanced Thermal Sciences Corp. v. Applied Materials

May 18, 2010

ADVANCED THERMAL SCIENCES CORPORATION, A DELAWARE CORPORATION, PLAINTIFF,
v.
APPLIED MATERIALS, INC., A DELAWARE CORPORATION, DEFENDANT,



The opinion of the court was delivered by: James V. Selna United States District Judge

AND RELATED COUNTERCLAIMS

FINDINGS OF FACT AND CONCLUSIONS OF LAW

The remaining claims of Plaintiff/Counterdefendant Advanced Thermal Sciences Corporation ("ATS") and Defendant/Counterclaimant Applied Materials, Inc. ("AMI") were tried to the Court. After substantial motions practice,*fn1 the following claims and defenses remained:

* Each party's claim to ownership of U.S. Patent No. 7,415,835 ("the '835 Patent");

* Each party's claim to ownership of ten patent applications filed by AMI;*fn2

* Each party's claim that the other breached the Joint Development Agreement ("JDA") and for damages resulting therefrom;

* Each party's claim to ownership of physical chiller products designated as DX-01 and PX-7;

* Various legal and equitable defenses to these claims.

(Pre-Trial Conference Order, pp. 6-7, Docket No. 671 ("PTCO").) The Court took direct evidence by way of declarations,*fn3 and cross-examination and further examination was received live. Following the submission of extensive proposed findings of fact and conclusions of law,*fn4 the Court entertained closing argument.

The Court now enters its Findings of Fact and Conclusions of Law.

SUMMARY

For the benefit of the reader, the Court summarizes its key factual and legal holdings. First, AMI independently developed and reduced to practice in 2001-2002 the Transfer Direct technology reflected in Claims 3 and 4 of the '835 Patent. This occurred prior to the "TDSF" Statement of Work and ATS's dealing with AMI on the Transfer Direct technology. As a result, the '835 Patent is the exclusive technology of ATS, and AMI has no interest.

Second, the JDA affords AMI an exclusive interest in the physical embodiments of any "improvement, enhancement, change, or modification" to Applied Equipment developed under the JDA. Ex. 1, p. 6, § 8.4. However, this right does not extend to the intellectual property which may inhere in such physical improvements, enhancements, or changes; other specific provisions of the JDA dealing with intellectual property determine the parties' respective ownership rights. Because ATS made a creative contribution to the ten AMI patent applications, the patent applications represent Jointly Developed IP, and AMI has a joint one-half interest in those applications. AMI is ordered to take steps to restore ATS's rights in those applications.

Third, AMI breached its duty to consult with ATS before filing its ten patent applications. ATS is entitled to damages under the reliance theory recognized by California law and the Restatement of Contracts, subject to certain reductions reflected in the Restatement.

JURISDICTION AND VENUE

ATS is a Delaware corporation having its principal place of business in Anaheim, California. PTCO, p. 1. AMI is a Delaware corporation having its principal place of business in Santa Clara, California. Id.

The parties seek relief under the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202, and this Court has subject matter jurisdiction under 28 USC §§ 1331 and 1338(a). PTCO, p. 2. ATS's declaratory relief claim regarding inventorship of issued United States patents is an action arising under 35 U.S.C. § 256, and therefore this Court has exclusive subject matter jurisdiction pursuant to at least 35 U.S.C. §§ 1331 and 1338(a). In addition, the Court has supplemental jurisdiction over the parties' state law claims pursuant to 28 USC § 1367(a). Id. Neither party disputes personal jurisdiction or venue. Id.

FINDINGS OF FACT*fn5

I. Background

1. Relationship Of The Parties. ATS is a manufacturer and provider of temperature control systems for use with semiconductor and flat panel fabrication equipment. Ex. 1, p. 1 (Recital B).

2. ATS was founded by B/E Aerospace ("B/E") in 1999. ATS's business plan was to develop refrigeration products for the semiconductor industry, specifically temperature control systems and subcomponents that are used inside chillers. Thayer, ¶ 8.

3. ATS has developed and manufactured temperature control systems for use with semiconductor equipment since 1996. K. Cowans, ¶ 4; Thayer, ¶ 8.

4. AMI is a manufacturer of semiconductor fabrication equipment. Ex. 1, p. 1 (Recital A). AMI is a global leader in nano-manufacturing technology equipment, services, and software. Buchberger Resp., ¶ 14. AMI has several business units, one of which is the Etch Product Business Unit. Id., ¶ 1.

5. AMI is the world's largest supplier of semiconductor equipment. Barsch, ¶ 6 (1:28-2:1). AMI is currently the third largest supplier of etch semiconductor tools in the world. Id., ¶ 12 (3:11-13).

6. AMI, including its Etch group, is not in the business of developing temperature control systems. Brillhart, ¶ 32; Hellman, Nov. 13, 2009, pp. 248:13-15. Instead, AMI's Etch group focuses on improving AMI's etch tools, particularly the electrostatic chuck base. Id.

7. Semiconductor etching is a highly energy-intensive process in AMI equipment. Id., ¶ 5. Excessive heat can lead to defects and nonuniformities in a processed wafer. Id. Heat is controlled by using temperature control units ("TCU") that AMI typically purchases from vendors. Id. All TCUs, or "chillers," must be tested, qualified, and approved for use with a particular AMI etch tool or other AMI process tool. Barsch, ¶¶ 18-23. A TCU cannot be simply "plugged in" to an AMI tool unless it has been specifically modified or "qualified" for use by AMI. Id., ¶ 21.

8. A relationship with AMI was important to ATS. ATS wanted to work with AMI because, among other reasons, AMI was the world's largest producer of semiconductor manufacturing equipment, and ATS wanted to make subsystems for semiconductor manufacturing equipment. Thayer, Nov. 10, 2009, pp. 37:14-22.

9. ATS has been supplying temperature control systems to AMI since approximately 1997. Thayer, ¶ 10. These temperature control systems were designed by ATS and purchased by AMI to control the temperature of the AMI semiconductor tools, including electrostatic chucks. Fovell, Nov. 11, 2009 (am), pp. 32:17-33:12.

10. In the late 1990s, AMI viewed ATS as a creative chiller development company that provided unconventional solutions to conventional problems. Thayer, ¶ 12 (3:10-13). Accordingly, AMI proposed that the parties enter into a joint development agreement. Id., ¶ 12.

11. The Joint Development Agreement. Beginning in 1999, ATS and AMI began negotiating a JDA. Hellmann, ¶ 5. Both AMI and ATS wanted to enter into a JDA to allow, among other things, the parties to work together to address thermal control problems in the semiconductor equipment space. Thayer, ¶ 12. AMI and ATS executed the JDA, effective May 15, 2000. Ex. 1, p. 1.

12. The general purpose of the JDA was to establish a framework for further development projects between ATS and AMI using a Statement of Work, or "SOW," structure similar to that used by ATS/B/E and AMI for the development of the C1.0 conventional chiller and its progeny. The JDA included an SOW template and Schedule templates covering a range of different development projects from minor development to major development projects. The term of the JDA was from May 2000 to May 2005. Each project would be governed by a SOW. Ex. 1, p. 1 (Recital C).

13. AMI and ATS negotiated the JDA for more than a year. Hellmann, ¶ 7; Thayer, Nov. 10, 2009, pp. 36:24-37:4. Bruce Thayer ("Thayer") was the principal negotiator for ATS and Tim Hellmann ("Hellmann") was the principal negotiator for AMI. Both sides were sophisticated companies represented by legal counsel during the negotiations. Thayer, ¶ 13; Hellmann, ¶ 5. ATS and AMI engaged in a sentence-by-sentence negotiation of the JDA. Hellmann, ¶ 5.

14. The purposes of the projects were to: "(i) test and possibly qualify certain of [ATS's] Components as Fit For Use on certain of [AMI's] systems and/or processes; and/or (ii) develop solutions for applications." Id., p. 1 (Recital C).

15. The JDA provided for four classes of projects. Id., p. 1 (Recital D). Schedules to the JDA set forth the parties' respective rights, expectations, and commitments for each class of project. Id.

16. The JDA also defines various types of intellectual property ("IP"). Id., pp. 3-4, § 1.0 (Definitions).

17. "Pre-Existing IP" is defined as "[e]ach Party's Intellectual Property rights in existence as of the execution date of the applicable SOW." Id., p. 4, § 1.0 (Definitions). Each party's Pre-Existing IP remains such Party's sole property.

Id., p. 5, § 4.1.

18. "Developed IP" is defined as "[a]ny and all improvements, enhancements or modifications made to a Component or [AMI] Equipment,... and all Intellectual Property rights embodied in any of the foregoing, that are created, conceived or first reduced to practice during the course of this Agreement." Id., p. 4, § 1.0 (Definitions).

19. ATS Developed IP and AMI Developed IP are defined as Developed IP that is created, conceived, or first reduced to practice by ATS or AMI without creative or inventive contribution from the other party. Id. ATS solely owns all ATS Developed IP, and AMI solely owns all AMI Developed IP. Id., p. 6, §§ 4.3-4.4.

20. Jointly Developed IP is defined as "[a]ll Developed IP created, conceived, or first reduced to practice jointly by [ATS] and [AMI] or employees of each during the course of and directly as a result of the performance of the Project..., and wherein each Party has made an inventive or creative contribution thereto through the combined efforts of employees of each Party collaborating together." Id., p. 4, § 1.0 (Definitions). The parties jointly own Jointly Developed IP and each party has an equal and undivided one-half interest in Jointly Developed IP. Id., p. 6, § 4.5.

21. Although ownership of Pre-Existing IP, ATS Developed IP, AMI Developed IP, and Jointly Developed IP is set forth in Sections 4.1, 4.3, 4.4, and 4.5 of the JDA as described above, the parties have additional rights and obligations concerning Developed IP. Id., p. 5., §4.2. Specifically, the parties' rights and obligations with respect to the filing and prosecution of patent applications on ATS Developed IP, AMI Developed IP, and/or Jointly Developed IP, are set forth in the Schedules to the JDA. Id.

22. The JDA expired on May 14, 2005. Ex. 1; PTCO, Admitted Facts ["AF"], ¶ 23.

23. The TDSF SOW. On May 4, 2004, the parties entered into the ATSC "TDSF" Statement of Work ("TDSF SOW"). Ex. 3; AF, ¶24.

24. The Transfer Direct Saturated Fluid ("TDSF") technology is an improvement over conventional temperature control systems. While conventional systems use two distinct loops of circulating fluid: (1) a refrigeration loop, which used a pressurizable refrigerant; and (2) a loop of intermediate liquid thermal transfer fluid, the TDSF system eliminates the second loop and transfers the refrigerant directly to the thermal load. K. Cowans, ¶ 6; Jacobi, ¶ 19.

25. The TDSF SOW was intended to drive the development, design, testing, and qualification of the TDSF chiller in accordance with the specification for AMI's Etch group and ATS's patented technology for TDSF. Ex. 3, p. 2, § 2.0.

26. The TDSF SOW was classified as a "Class 3 -- Major Development" project, and therefore certain rights of the parties were set forth in Schedule 3 to the JDA. Ex. 3, p. 1; Ex 1, pp, 17-18, Sched. 3.

27. The TDSF SOW was a major development project for the development of a non-conventional chiller product -- later termed the "DX-01"--for use on AMI's Etch system. Ex. 3, p. 1. The parties agree that the physical DX-01 chiller units are jointly owned as the product of joint development between ATS and AMI. ATS Opening Stmt., Nov. 10, 2009, p. 10:1-6.

28. Particularly relevant to the dispute before the Court is Section 2 of Schedule 3, which sets forth the parties' rights and obligations with respect to the filing and prosecution of patent applications for Jointly Developed IP in Class 3 projects such as the TDSF SOW. Ex. 1, p. 5, § 4.2. Section 2 of Schedule 3 provides that "[t]he Parties will consult with each other regarding whether an application or applications for patent... should be filed, prosecuted, or maintained for any Jointly Developed IP." Id., p. 17, Sched. 3, § 2.0.

29. The TDSF SOW expired on May 14, 2005. Ex. 3; AF, ¶ 24.

30. The Parties' Dispute. The parties dispute ownership of tangible physical chiller units and intangible intellectual property rights. The physical chiller units at issue bear the designations "DX-01" and "PX-7." The intellectual property rights at issue are defined by the claims of the parties' respective patents and patent applications.

31. As the Court previously held, the claims of the patents and patent applications control the determination of who owns the intellectual property rights. Docket No. 558, p. 8. Alleged contributions are irrelevant unless they are claimed in the patent filings. Id. Subject matter disclosed, but not claimed, in the patents filings is irrelevant to the ownership determination. Id.

32. The ATS Patent Filings. On February 19, 2004, ATS filed a provisional patent application relating to the TDSF technology. AF, ¶ 1; Ex. 67. That application, which was assigned U.S. Provisional Patent Application No. 60/546,059 ("the '059 provisional application"), was entitled "Transfer Direct of Saturated Fluid System," and named Kenneth W. Cowans, William W. Cowans, and Glenn Zubillaga as inventors. AF, ¶ 1.

33. On June 2, 2004, ATS filed a second provisional patent application relating to the TDSF technology. AF, ¶ 2; Ex. 68. That application, which was assigned U.S. Provisional Patent Application No. 60/576,705 ("the '705 provisional application"), was entitled "Transfer Direct Heat Exchanger System," and also named Kenneth W. Cowans, William W. Cowans, and Glenn W. Zubillaga as inventors. AF, ¶ 2.

34. On February 15, 2005, ATS filed a non-provisional application relating to the technology at issue. Ex. 180. That application, U.S. Patent Application No. 11/057,383 ("the '383 application"), issued as U.S. Patent No. 7,178,353 ("the '353 Patent"). The '353 Patent was duly issued by the United States Patent & Trademark Office on February 20, 2007. AF, ¶ 3; Ex. 4..

35. The '835 Patent was duly issued by the United States Patent & Trademark Office on August 26, 2008. Ex. 87. The '835 Patent issued from a divisional application of the '383 application, filed on February 15, 2005. AF, ¶ 4; Ex. 180.

36. The '353 Patent and the '835 Patent are both entitled "Thermal Control System and Method," and both name Kenneth W. Cowans, William W. Cowans, Glenn W. Zubillaga, and Isaac Millan as inventors. AF, ¶ 5.

37. The '353 Patent and the '835 Patent both claim priority to the '059 provisional application and the '705 provisional application. AF, ¶ 6.

38. U.S. Patent Application No. 11/591,465 ("the '465 Application") was filed on November 2, 2006. The '465 application claims priority to U.S. Provisional Application No. 60/733,078, which was filed on November 3, 2005. AF, ¶ 7.

39. The '835 Patent and the '353 Patent share the same specification. AF, ¶ 8.

40. The AMI Patent Applications. On October 11, 2005, AMI filed U.S. Provisional Patent Application No. 60/725,763 ("the '763 provisional application"), entitled "Capacitively coupled plasma reactor having a cooled/heated wafer support with uniform temperature distribution," naming Daniel J. Hoffman, Paul Lukas Brillhart, Richard Fovell, Hamid Tavassoli, Douglas A. Buchberger Jr., Douglas H. Burns, and Kallol Bera as inventors. AF, ¶ 9.

41. On October 20, 2005, AMI filed U.S. Provisional Patent Application No. 60/729,314 ("the '314 provisional application"), entitled "Method for agile workpiece temperature control in a plasma reactor using a thermal model," naming Daniel J. Hoffman, Paul Lukas Brillhart, Richard Fovell, Hamid Tavassoli, Douglas A. Buchberger Jr., Douglas H. Burns, and Kallol Bera as inventors. AF, ¶ 10.

42. On April 21 and 24, 2006, AMI filed ten non-provisional patent applications that claim priority to either the '763 provisional application or the '314 provisional application. These are the applications in which ATS claims an interest:

(1) U.S. Pat. Application No. 11/408,559 ("the '559 application"), entitled "Plasma Reactor with a Multiple Zone Thermal Control Feed Forward Control Apparatus," was filed on April 21, 2006, and named Paul Lukas Brillhart, Richard Fovell, Hamid Tavassoli, Douglas A. Buchberger Jr., Douglas H. Burns, Kallol Bera, and Daniel J. Hoffman as inventors. The '559 application claims priority to the '314 provisional application. AF, ¶ 11.

(2) U.S. Pat. Application No. 11/408,558 ("the '558 application"), entitled "Method for Agile Workpiece Temperature Control in a Plasma Reactor Using a Thermal Model," was filed on April 21, 2006, and named Douglas A. Buchberger, Jr., Paul Lukas Brillhart, Richard Fovell, Hamid Tavassoli, Douglas H. Burns, Kallol Bera, and Daniel J. Hoffman as inventors. The '558 application claims priority to the '314 provisional application. AF, ¶ 12..

(3) U.S. Pat. Application No. 11/408,567, entitled "Plasma Reactor with Wafer Backside Thermal Loop, Two-Phase Internal Pedestal Thermal Loop and a Control Processor Governing Both Loops" ("the '567 application"), was filed April 21, 2006, and named Douglas A. Buchberger, Jr., Paul Lukas Brillhart, Richard Fovell, Hamid Tavassoli, Douglas H. Burns, Kallol Bera, and Daniel J. Hoffman as inventors. The '567 application claims priority to the '314 provisional application. AF, ¶ 13.

(4) U.S. Pat. Application No. 11/409,183 ("the '183 application"), entitled "Plasma Reactor with Feed Forward Thermal Control System Using a Thermal Model for Accommodating RF Power Changes or Wafer Temperature Changes," was filed April 21, 2006, and named Douglas A. Buchberger, Jr., Paul Lukas Brillhart, Richard Fovell, Hamid Tavassoli, Douglas H. Burns, Kallol Bera, and Daniel J. Hoffman as inventors. The '183 application claims priority to the '314 provisional application. AF, ¶ 14.

(5) U.S. Pat. Application No. 11/409,184, entitled "Method of Processing a Workpiece in a Plasma Reactor Using Multiple Zone Feed Forward Thermal Control" ("the '184 application"), was filed April 21, 2006, and named Paul Lukas Brillhart, Richard Fovell, Douglas A. Buchberger Jr., Douglas H. Burns, Kallol Bera, and Daniel J. Hoffman as inventors. The '184 application claims priority to the '314 provisional application. AF, ¶ 15.

(6) U.S. Pat. Application No. 11/409,326, entitled "Method of Processing a Workpiece in a Plasma Reactor Using Feed Forward Thermal Control" ("the '326 application"), was filed April 21, 2006, and named Douglas A. Buchberger, Jr., Paul Lukas Brillhart, Richard Fovell, Douglas H. Burns, Kallol Bera, and Daniel J. Hoffman as inventors. The '326 application claims priority to the '314 provisional application. AF, ¶ 16.

(7) U.S. Pat. Application No. 11/409,292 ("the '292 application"), entitled "Capacitively Coupled Plasma Reactor Having a Cooled/Heated Wafer Support With Uniform Temperature Distribution," was filed April 21, 2006, and named Paul Lukas Brillhart, Richard Fovell, Hamid Tavassoli, Douglas A. Buchberger Jr., Douglas H. Burns, Kallol Bera, and Daniel J. Hoffman as inventors. The '292 application claims priority to the '763 provisional application. AF, ¶ 17.

(8) U.S. Pat. Application No. 11/408,333 ("the '333 application"), entitled "Capacitively Coupled Plasma Reactor Having Very Agile Wafer Temperature Control," was filed April 21, 2006, and named Douglas A. Buchberger, Jr., Paul Lukas Brillhart, Richard Fovell, Hamid Tavassoli, Douglas H. Burns, Kallol Bera, and Daniel J. Hoffman as inventors. The '333 application claims priority to the '763 provisional application. AF, ¶ 18.

(9) U.S. Pat. Application No. 11/410,782 ("the '782 application"), entitled "Method of Cooling a Wafer Support at a Uniform Temperature in a Capacitively Coupled Plasma Reactor," was filed April 24, 2006, and named Paul Lukas Brillhart, Richard Fovell, Douglas A. Buchberger Jr., Douglas H. Burns, Kallol Bera, and Daniel J. Hoffman as inventors. The '782 application claims priority to the '763 provisional application. AF, ¶ 19.

(10) U.S. Pat. Application No. 11/410,859 ("the '859 application"), entitled "Method of Operating a Capacitively Coupled Plasma Reactor With Dual Temperature Control Loops," was filed April 24, 2006, and named Paul Lukas Brillhart, Richard Fovell, Douglas A. Buchberger Jr., Douglas H. Burns, Kallol Bera, and Daniel J. Hoffman as inventors. The '859 application claims priority to the '763 provisional application. AF, ¶ 20.

These are the AMI patent applications in dispute.

43. Summary Of The Parties' Allegations. In September 2007, ATS learned that AMI had filed the above-mentioned patent applications, but only after they had been published. K. Cowans, ¶ 76.

44. ATS raised with AMI the fact that none of the applications named any ATS employee as an inventor. Thayer, ¶ 24. When AMI declined to recognize any interest by ATS in any of the ten patent applications, and also claimed an interest in ATS's patent filings, ATS filed this action on November 29, 2007. Docket No. 1. At that time, ATS stopped working with AMI on the TDSF project. Thayer, ¶ 24.

45. ATS alleges that it is the sole owner of its patent filings. ATS also alleges that at least one claim in each of the ten patent applications filed by AMI claims ATS's Pre-Existing IP or Jointly Developed IP, and that, as a result, ATS has an equal and undivided one-half interest in each of the ten AMI patent applications. PTCO, pp. 7-8. ATS further alleges that AMI breached the JDA by filing and prosecuting the ten patent applications without consulting with ATS. Id. ATS seeks damages for AMI's breach of the JDA. Id., pp. 8, 22.

46. AMI counterclaimed alleging that at least one claim in each of the ATS patent filings claims Jointly Developed IP, and that, as a result, AMI has an equal and undivided one-half interest in each of the ATS patent filings. Id., p. 15. AMI further alleges that ATS breached the JDA by filing and prosecuting the ATS patent filings without consulting with AMI. Id., p. 14. The parties' patent filings are the only intellectual property rights at issue in this case.

47. AMI also alleges that particular chiller units embodying the TDSF technology, referred to as DX-01 and PX-7 chillers, are Jointly Developed IP and, thus, AMI has an undivided one-half interest in those chillers. Id., p. 13.

II. The Ownership of the '835 Patent

48. This Court granted ATS's motion for summary judgment regarding inventorship of ATS's '353 and '835 Patents. Docket No. 352, p. 20; Docket No. 554, p. 11.

49. This Court granted ATS's motion for summary judgment that ATS is the sole owner of Claims 1, 2, and 5-8 of ATS's '835 Patent. Docket No. 678, p. 2.

50. The only issue with respect to the ATS patent filings that remained for trial was ownership of the '835 Patent and, specifically, whether AMI made an "inventive or creative contribution" to the inventions of Claims 3 or 4 of the '835 Patent. Docket No. 558, p. 10 n. 4; Docket No. 678, p. 2.

A. AMI Did Not Contribute To Maintaining Two-Phase Flow Throughout The Thermal Load

51. Claim 3 of the '835 Patent depends from Claim 2, and adds, "the step of exchanging heat between said thermal load and said mixture in such manner that both liquid and gas are present at the exit of said thermal load."*fn6 Ex. 87, col. 13, ll. 16-19.

52. Claim 4 of the '835 Patent depends from Claim 2 and adds, "the step of exchanging heat between said thermal load and said mixture of liquid and gas such that said mixture exists completely within the range of pressure and enthalpy within the vapor dome of said refrigerant." Id., col. 13, ll. 20-24.

53. ATS's Creation and Conception. In or about August 2000, Ken Cowans of ATS conceived of eliminating the intermediate thermal transfer fluid loop from ATS's conventional chillers and passing the refrigerant directly through the semiconductor tool. K. Cowans, ¶ 17.

54. ATS referred to this concept by various names, including "direct expansion," "direct cooling," "transfer direct," "TD," "transfer direct saturated fluid," and "TDSF." K. Cowans, ¶ 20; W. Cowans, ¶ 2.

55. Ken Cowans' conception of a single-loop temperature control system in 2000 or 2001 is corroborated by the testimony of numerous ATS employees. W. Cowans, ¶¶ 2-3; Millan, ¶ 6; Christoffersen, ¶ 6; Thayer, ¶ 20; Goyins, ¶¶ 5-6.

56. Ken Cowans' conception of a single-loop temperature control system is well documented in his lab notebooks, including by the many references to the various names of the TDSF system and the many schematic diagrams of the TDSF system. See, e.g., K. Cowans, ¶¶ 25-32; Ex. 150, pp. 26, 61, 90, 98, 101; Ex. 151, p. 27; Ex. 153, p. 16.

57. ATS's refrigeration expert, Dr. Anthony Jacobi, confirmed that the lab notebook entries of several ATS employees, including Ken Cowans, contained schematic diagrams that a person familiar with refrigeration technology would understand as depicting a single-loop temperature control system that used the tool as an evaporator. Jacobi, ¶ 25.

58. The schematic diagrams in the ATS lab notebooks replace the typical evaporator in a refrigeration loop with a "tool," and a person familiar with refrigeration technology would understand that, when cooling, the system would use the tool as the evaporator. Id. In addition, because the output of the thermoexpansion valve is always in the form of a two-phase mist, and the two-phase mixture absorbs heat from the thermal load, a person skilled in art would understand that, as shown in the schematic diagrams in the ATS lab notebooks, the tool necessarily acts as an evaporator. K. Cowans, Nov. 10, 2009, pp. 186:23-187:12.

59. In addition, the schematic diagrams for the TDSF system contained in ATS lab notebooks from 2000 and 2001 are substantively identical to the schematic diagrams used by AMI as recently as 2007 to describe the TDSF technology, which AMI referred to as the direct expansion technology. Compare Ex. 150, pp. 61, 90, 98 with Ex 197, p. 10; Jacobi Rebuttal, ¶ 101, pp. 12:17-13:15 (stating that the schematic diagrams of the TDSF and direct expansion system in presentations dated 2004-2007 are "virtually identical to the schematic diagrams contained in lab notebooks of ATS employees dated 2000 and 2001").

60. AMI's use of such schematic diagrams to convey the TDSF concept (i.e., eliminating the secondary process loop and using the tool as an evaporator) to those in the industry, both internally at AMI (seeEx. 5, p. 2), and externally to AMI's customers (seeEx. 197, p. 10), further confirms that one of skill in the art would understand that the schematic diagrams in ATS's 2000 and 2001 lab notebooks depict the same concept.

61. As conceived by ATS in 2000 and 2001, the TDSF system was designed to control the temperature of semiconductor tools, and specifically electrostatic chucks. Ex. 1202, p. 103; W. Cowans, ¶¶ 18-19; W. Cowans, Nov. 10, 2009, pp. 213:13-214:6.

62. AMI's expert Dr. Doug France ("Dr. France") agreed that the 2001 drawing of the TD150 system in William Cowans' lab notebook showed the refrigerant flowing directly into and out of the electrostatic chuck base in the same manner as Dr. France illustrated during his deposition when asked to draw the technology at issue. France, Nov. 20, 2009 (am), p. 38:16-25; compare Ex. 1202, p. 103 with Ex. 399, Figure A.Here and elsewhere, the Court has given substantial weight to the concessions Dr. France made on cross-examination.

63. Contemporaneous Documents. Ken Cowans testified that, "in the cooling mode, the TDSF was designed to have a vapor-liquid mixture in the supply line, throughout the entire semi tool, and in the return line." K. Cowans, ¶ 36.

64. Ken Cowans' testimony that he conceived of maintaining a two-phase refrigerant throughout the thermal load is supported by the invention disclosure documents he submitted to ATS's patent attorney in December 2000 and January 2001. K. Cowans, ¶¶ 33, 36; Ex. 163; Ex. 164.

65. Ken Cowans' January 2001 invention disclosure expressly states that, "the semi tool and the lines connecting the TDSF with the semi tool function as an evaporator." Ex. 163, p. 1.

66. Both parties' experts agree that Ken Cowans' 2001 invention disclosure describes a system in which the refrigerant is maintained as a liquid-vapor mixture throughout the semi tool. Jacobi, ¶ 32; France Resp., ¶ 93 (conceding that Ex. 163 describes two-phase flow both in and out of the semi tool); see also France, Nov. 19, 2009 (am/pm), p. 83:11-15; France, Nov. 20, 2009 (pm), pp. 26:25-27:6.

67. Ken Cowans' testimony that he conceived of maintaining a two-phase refrigerant throughout the thermal load is also supported by Ken Cowans' lab notebook entries. For example, an entry in Ken Cowans' lab notebook dated February 3, 2001 contains a reference to the "quality" of the refrigerant in the return line. K. Cowans, ¶ 40; Ex. 151, pp. 28-29. As Ken Cowans explained, this reference to quality indicates that a two-phase mixture existed in the return line, and, therefore, at the outlet of the thermal load. K. Cowans, ¶ 40.

68. Ken Cowans and Dr. Jacobi also testified regarding an entry in Ken Cowans' lab notebook from February 3, 2001, in which Ken Cowans was considering the possibility of adding an accumulator after the outlet of the semi tool to collect liquid and prevent "puddling" in the return line. The presence of liquid in the return line indicates that the refrigerant was maintained as a two-phase mixture throughout the thermal load. K. Cowans, ¶¶ 41-42; Ex. 151, p. 29; Jacobi, ¶¶ 33-34. Although Dr. France was aware of the notebook entry, he did not offer any opinion disputing Ken Cowans' description of the entry as specifically describing two-phase refrigerant flow exiting the tool. France, Nov. 20, 2009 (pm) pp. 34:23-35:7.

69. Dr. France offered no opinions disputing that ATS conceived of using the TDSF technology to heat the thermal load with two-phase flow exiting the thermal load well before talking with anyone at AMI. Id., p. 11:4-14.

70. Ken Cowans' conception of the TDSF technology, and specifically the idea of maintaining a two-phase refrigerant throughout the thermal load, is further supported by the fact that he was aware of the importance of temperature uniformity when processing semiconductor wafers (K. Cowans, ¶ 11) was aware of the potential benefits of maintaining a two-phase mixture throughout the semi tool to improve temperature uniformity (id., ¶¶ 21-22), and is considered to be an expert in refrigeration technology even by AMI's expert (France, Nov. 20, 2009 (am), p. 9:23-25).

71. Thus, there is no factual dispute that ATS conceived of the use of a two-phase refrigerant throughout the thermal load by early 2001, and the Court so finds.

B. ATS First Reduced To Practice Two-Phase Flow Throughout The Thermal Load In 2001

72. There is no dispute that ATS constructed and tested a prototype of its TDSF system in 2001.

73. Contemporaneous lab notebook entries reflect the construction of the 2001 TDSF prototype. W. Cowans, ¶¶ 6-22; Ex. 1202, pp. 71, 89, 91, 93, 94, 96, 99, 101-103, 107, 109, and 110.

74. ATS also has numerous computer-generated design drawings of the 2001 prototype dated December 2000 and January 2001. See, e.g., Ex. 1118; Ex. 1123; Millan, ¶¶ 4-5 (listing drawings). Later documents also confirm that the prototype was built and tested in approximately 2001. See, e.g., Ex. 313 (e-mail from Bryan Christoffersen to Rick Fovell stating that ATS's "proof of concept" was "developed and built over two years ago").

75. 2001 Prototype. Ken Cowans testified that a goal for ATS's 2001 TDSF prototype (Ex. 1077A), was to maintain a two-phase refrigerant throughout the thermal load, and that this goal was achieved. K. Cowans, ¶ 44.

76. William Cowans testified that, when the 2001 prototype was tested and was cooling the heat load, "the refrigerant existed as a two-phase mixture in the supply line to the heat load, throughout the thermal load, and in the return line." W. Cowans, ¶ 5.

77. ATS tested its 2001 TDSF prototype using a spa heater or an aluminum block as the thermal load to simulate ATS's customers' chucks. Id., ¶ 4.

78. Both Ken Cowans and William Cowans testified that, during testing of the 2001 Prototype, ATS encountered problems with "puddling" of liquid refrigerant in the return lines, which demonstrated that a two-phase refrigerant was being maintained throughout the load. K. Cowans, ¶ 44; W. Cowans, ¶ 5.

79. AMI's technical expert, Dr. France, agreed that liquid refrigerant accumulating in the return line meant that there was liquid refrigerant coming out of the thermal load. France, Nov. 20, 2009 (pm), p. 32:8-11.

80. Dr. France does not dispute Ken Cowans' and William Cowans' testimony regarding the testing of the 2001 Prototype. France, Nov. 19, 2009 (am/pm), pp. 92:25-93:20, 94:16-23; France, Nov. 20, 2009 (pm), pp. 5:19-24, 7:15-18.

81. Dr. France agreed that once ATS first reduced the two-phase flow to practice, there was no further creation or conception that would need to occur for that particular idea. France, Nov. 20, 2009 (pm), p. 5:2-5.

82. Dr. France further agreed that performing the method of Claim 4 (flowing two-phase refrigerant through the entirety of the thermal load) for any period of time would meet the limitations of Claim 4. Id., p. 12:5-9.

83. Dr. Paul Brillhart's ("Dr. Brillhart") later reference in March 2004, to the 2001 Prototype as a "proof of concept" of the direct expansion idea further confirms that ATS's 2001 prototype was capable of operating with a two-phase refrigerant throughout the thermal load. Brillhart, Nov. 18, 2009 (am), p. 83:6-24.

84. AMI does not argue that it made any contribution to the TDSF technology, including the 2001 Prototype, before the 2001 Prototype was tested in the spring of 2001. Dr. Brillhart did not have his moment of conception, or "ah-ha moment," until 2003.

85. Accordingly, the Court finds that ATS created, conceived of, and first reduced to practice the idea of maintaining a two-phase refrigerant throughout the thermal load by the Spring of 2001.

86. ATS's creation, conception, and first reduction to practice of maintaining a two-phase refrigerant throughout the thermal load by 2001 renders any later activities by ATS or AMI irrelevant to ATS's ownership of Claims 3 and 4 of the '835 Patent. However, additional activities by ATS that occurred prior to AMI's first allegedly documented reference to two-phase flow further confirm ATS's ownership.

87. 2004 Constructive Reduction. ATS filed a provisional patent application on its TDSF system on February 19, 2004. Ex. 67.

88. ATS's provisional patent application discloses that, under certain operating conditions, the refrigerant will exist as a liquid-vapor mixture in the line to the tool, throughout the tool, and in the line returning from the tool. Id., p. 6. The provisional application states that, after exiting the semi-tool, "[t]he gas or mix is then returned to the system in a closed loop. At [t]he system any liquid is evaporated from the mix with use of an electric heater." Id.

89. As the Court previously held, "this clearly contemplates that the refrigerant could be a two-phase mix at both the inlet and outlet of the thermal load." Docket No. 554, p. 9.

90. As discussed above, returning a mixture of gas and liquid refrigerant from the thermal load means that there is a mixture of gas and liquid refrigerant throughout the thermal load. France, Nov. 20, 2009 (pm), p. 32:8-11.

91. ATS's February 19, 2004 provisional application therefore describes the use of a two-phase refrigerant throughout the thermal load. Jacobi Rebuttal, ¶ 82.

92. AMI has not identified any documentary evidence suggesting that AMI employees contributed to the idea of maintaining a two-phase refrigerant throughout the thermal load prior to February 19, 2004.

93. Dr. France conceded that he is not aware of any documents that, by themselves and without explanatory oral testimony from Dr. Brillhart or Fovell, indicate that AMI came up with any aspect of the two-phase technology before May 2004. France, Nov. 20, 2009 (am), pp. 34:22-35:1; France, Nov. 19, 2009 (am/pm), p. 104:6-20.

94. Accordingly, even if the Court were to find that ATS did not actually reduce to practice maintaining a two-phase refrigerant throughout the thermal load during testing of the 2001 Prototype, ATS constructively reduced to practice two-phase flow throughout the thermal load on February 19, 2004, and AMI did not contribute to ATS's constructive reduction to practice. This provides an additional independent basis for finding that AMI did not contribute to Claims 3 or 4 of the '835 Patent.

C. In 2004, AMI Agreed the TDSF Technology was ATS's Pre-Existing IP

95. ATS's sole ownership of the TDSF technology, including the concept of maintaining a two-phase refrigerant throughout the thermal load, is further supported by AMI's recognition in early 2004 that the TDSF technology belonged to ATS.

96. On January 30, 2004, Christoffersen sent Dr. Brillhart an e-mail attaching a non-disclosure agreement and stating that, "[a]ll I would like to add is a clear definition of our pre-existing IP related to the transfer direct system[.]" Ex. 75, p. 1. This was Christoffersen's attempt to have AMI acknowledge that the TDSF technology was ATS's Pre-Existing IP. Christoffersen, ¶¶ 16-17.

97. Neither Dr. Brillhart nor anyone at AMI ever expressed any disagreement with Christoffersen's statements that the Transfer Direct System was ATS's Pre-Existing IP. Christoffersen, ¶ 18.

98. Two weeks after Christoffersen's e-mail, Dr. Brillhart and Christoffersen executed a document, entitled "Addendum for AMI Materials Non Disclosure Agreement Rev. 1.0 08/00," in which AMI and ATS agreed that ATS possessed pre-existing intellectual property in:

Information relating to the concept termed by ATSC "Transfer Direct System" for temperature control. This technology involves the use of vapor compression refrigeration techniques along with unique control, transport and thermal management techniques to achieve rapid temperature response, accurate temperature control and unique packaging.

Ex. 70, p. 1. This is clear evidence that ATS informed AMI that TDSF was ATS's Pre-Existing IP. Although he later asked to have the document returned to him, Dr. Brillhart's signing of the NDA addendum confirmed that the Transfer Direct System was ATS's Pre-Existing IP.

99. There is no dispute that "vapor compression," as used by the parties during this time frame, referred to the "TDSF" or "direct expansion" technology as reflected in the DX project. Brillhart, Nov. 18, 2009 (am), p. 25:10-24; Buchberger, Nov. 12, 2009, p. 126:1-7 (AMI employees used the phrases "vapor compression" and "direct expansion" interchangeably to refer to the TDSF system).

100. Dr. Brillhart understood that the reference to the Transfer Direct System in Exhibit 70 related to the earlier ATS presentation (Ex. 1128) of a single-loop system that delivered a two-phase mixture to the evaporator in the semi tool. Christoffersen, Nov. 12, 2009, pp. 29:16-31:1, 31:7-33:5, 49:14-18, 49:21-52:11.

101. Dr. Brillhart never told anyone at ATS, at any time, that he was concerned that ATS might be claiming as pre-existing IP something that he had invented. Brillhart, Nov. 18, 2009 (am), p. 36:20-25.

102. The TDSF SOW. On March 16, 2004, Christoffersen sent an e-mail to Dr. Brillhart proposing the initial terms for the TDSF SOW. Ex. 55, p. 2; Christoffersen, ¶ 20.

103. The e-mail refers to the technology as ATS's "patented technology." Ex. 55. By that time, everyone involved, including Dr. Brillhart, knew that "TDSF" meant "direct expansion." Brillhart, Nov. 18, 2009 (am), pp. 18:14-22, 72:10-73:1 (agreeing that by February 20, 2004, the terms "TDSF," "direct expansion," and "DX" were all synonyms). The fact that Christoffersen was incorrect, because ATS had not yet filed, but rather was shortly to file a patent for the technology, does not undermine the fact that the parties clearly understood that TDSF was ATS's PreExisting IP.

104. Dr. Brillhart never disputed that the TDSF technology belonged to ATS or questioned why ATS had patented the TDSF technology. Christoffersen, ¶ 22.

105. The TDSF SOW repeatedly provides that the TDSF technology belongs to ATS and constitutes ATS's Pre-Existing IP. For example, Section 2.0 refers to the technology as "Supplier's [ATS's] patented technology for TDSF." Ex. 3, p. 2, § 2.0. Section 7.4 refers to "Supplier's [ATS's] TDSF technology." Id., p. 3, § 7.4. Section 11.3 refers to "Supplier's [ATS's] patented TDSF technology." Id., p. 4, § 11.3.

106. Section 10.1, which defines ATS's Pre-Existing IP, specifically includes "techniques for saturated fluid transfer temperature control," which referred to ATS's TDSF technology. Id., p. 3, § 10.1; Christoffersen, ¶ 26.

107. AMI's Dr. Brillhart, contract specialist Joe David, and attorney Rachel Puno were all involved in the negotiations with Christoffersen that resulted in the TDSF SOW, and no one from AMI ever disputed that the TDSF technology was ATS's technology. Christoffersen, Nov. 12, 2009, pp. 55:8-58:4; Ex. 55.

108. Christoffersen also had discussions with Dr. Brillhart where it was understood that the TDSF technology was ATS's technology. Id., pp. 19:20-24, 59:21-60:7.

109. For example, Christoffersen and Dr. Brillhart discussed IP ownership during negotiations relating to the TDSF SOW and they agreed that the TDSF technology belonged to ATS, and any technology AMI had in its particular chucks belonged to AMI. Christoffersen, ¶ 3; see also Ex. 24 (Brillhart e-mail stating that AMI should redesign the chuck base around the performance of the new TDSF.)

110. Thayer similarly testified that the TDSF SOW negotiations involved detailed discussions about ATS's TDSF technology and the use of ATS's TDSF technology, and Thayer did not recall anyone at AMI ever questioning that the TDSF technology was ATS's technology. Thayer, ¶ 18.

111. Dr. Brillhart never suggested to Roger Goyins ("Goyins") that any aspect of TDSF, Transfer Direct, or direct expansion technology had been Dr. Brillhart's idea. Goyins Rebuttal, ¶ 43.

112. Accordingly, the Court finds that the TDSF technology, as it existed on May 4, 2004 when the TDSF SOW was executed, was ATS's Pre-Existing IP.

113. Absence of AMI Creative or Inventive Contribution. AMI failed to establish that it made any inventive or creative contribution to the inventions of Claims 3 or 4 of the '835 Patent in 2003 or 2004. The evidence establishes by a preponderance that AMI did not.

114. Dr. Brillhart contends that in mid-2003 he conceived of the idea of maintaining a two-phase refrigerant throughout the thermal load. Brillhart, ¶ 17.

115. As described above, and as AMI's own technical expert concedes, ATS created and conceived of the idea of maintaining a two-phase refrigerant throughout the thermal load at least as of January 2001, when Ken Cowans submitted his invention disclosure to his attorney. Ex. 163; France, Nov. 19, 2009 (am/pm), p. 83:11-15; France Rebuttal, ¶ 93.

116. The undisputed evidence also establishes that ATS reduced this idea to practice in 2001 during testing of ATS 2001 Prototype. At a minimum, ATS has proven so by a preponderance of the evidence.

117. For present purposes, the Court need not question AMI's contention that Dr. Brillhart independently conceived of the two-phase mist scheme. (AMI PFFCL, ¶¶ 30-31, 60-75.) Dr. Brillhart's alleged contributions to the inventions of Claims 3 and 4 in 2003 and 2004 are irrelevant because, even if true, those alleged contributions occurred years after ATS had created, conceived, and first reduced to practice those inventions.

118. Accordingly, Dr. Brillhart did not contribute to the creation, conception, or first reduction to practice of maintaining a two-phase refrigerant throughout the thermal load.

119. The Court did not find Dr. Brillhart credible with regard to his conception of direct expansion, and questioned his credibility.*fn7 His ungracious demeanor while testifying, particularly on cross examination, suggested a defensiveness calling into question his trustworthiness.

120. Dr. Brillhart testified that he had an "epiphany" in his cubicle and independently conceived of the direct expansion idea. Brillhart, ¶¶ 17-24

121. Despite having signed summary judgment and trial declarations on this subject, Dr. Brillhart testified for the first time at trial that he conceived of his direct expansion idea "within a few days" of April 29, 2003. Brillhart, Nov. 17, 2009 (pm), pp. 24:11-25:1.

122. However, this was contradicted by his direct testimony in which he testified that he conceived of the direct expansion idea in "mid-to-late 2003." Brillhart, ¶¶ 11, 24. He was further contradicted by his July 20, 2009 declaration, and his deposition testimony, in which Dr. Brillhart testified that he conceived of the direct expansion idea in October 2003. Ex. 1020, ¶¶ 14, 20; Brillhart, Nov. 17, 2009 (pm), pp. 28:1-30:6.

123. Dr. Brillhart testified that, immediately after having his alleged epiphany, he discussed the idea with Fovell. Brillhart, ¶¶ 24-25. Fovell testified that this discussion, which Fovell referred to as the "aha moment," occurred in either "late 2003" or at the "end of 2003." Fovell, Nov. 18, 2009 (pm), pp. 107:23-109:21; Fovell, Nov. 19, 2009 (am), pp. 11:7-12:8, 12:25-13:18.

124. AMI's Rule 30(b)(6) witness, Robert Larisch ("Larisch"), similarly testified that Dr. Brillhart's epiphany occurred in October 2003. Larisch Depo., p. 132:9-16.

125. Similarly, in his trial testimony, Dr. Brillhart alleged for the first time that a meeting relating to the TDSF technology occurred in May 2003, with Fovell, Goyins, and possibly Christoffersen. Brillhart, ¶ 34; Brillhart, Nov. 17, 2009 (pm), pp. 56:12-57:8. However, Dr. Brillhart did not mention this meeting in the declaration that he submitted to the Court in July 2009, or in either of his depositions. Ex. 1020, ¶ 23.

126. To the extent Dr. Brillhart did discuss the direct expansion idea with Fovell, such discussion did not occur any earlier than the end of 2003.

127. Lack of Documentary Corroboration. The only documentary evidence AMI offered as allegedly supporting Dr. Brillhart's conception prior to May 2004, is a single entry in Dr. Brillhart's laboratory notebook dated June 2003. However, this entry does not provide any independent corroboration of Dr. Brillhart's testimony.

128. Dr. Brillhart testified that the notation in his lab notebook that states "x -- range is critical" reflects his conception of the direct expansion idea. Brillhart, ¶ 232; Ex. 660, p. 1. However, at his deposition, Dr. Brillhart was specifically shown the pages of his notebook that contains the "x -- range is critical" and "R404" references. Brillhart, Nov. 17, 2009 (pm), pp. 50:23-51:2. At that time, Dr. Brillhart did not know what these entries were referring to. Id.Dr. Brillhart's testimony that his inability to identify these entries as relating to the direct expansion technology stemmed from being tired at his deposition is unpersuasive. Brillhart, Nov. 17, 2009 (pm), pp. 50:23-51:2. The Court does not find this convincing given the asserted significance of the entries. This is akin to Archimedes forgetting what he meant when he proclaimed "Eureka."

129. Dr. Brillhart conceded that there is no reference to "direct expansion" on these pages, there is no reference to a single-loop chiller, there are no Molliere diagrams, and no other portion of the lab notebook entry relates to direct expansion. Brillhart, Nov. 17, 2009 (pm), pp. 50:13-22, 55:9-20, 55:18-25, 62:13-24; see also Jacobi Rebuttal, ¶ 115 (testifying that nothing in Dr. Brillhart's lab notebook entry indicates that it relates to the direct expansion technology).

130. In fact, Dr. Brillhart was unable to identify any page in his lab notebook that reflected his alleged epiphany. Brillhart, Nov. 17, 2009 (pm), p. 53:2-5.

131. Likewise there is no reason to conclude that this reference to quality was necessarily a reference to directly transferring refrigerant to the semi tool. At the time of this entry, AMI was using refrigerants in other chiller products. Brillhart, Nov. 18, 2009 (pm), p. 57:4-7; Fovell, Nov. 19, 2009 (am), p. 63:13-23.

132. Dr. France conceded that there is nothing in Dr. Brillhart's lab notebook that indicates that these entries have anything to do with flowing two-phase refrigerant through an electrostatic chuck. France, Nov. 19, 2009 (am/pm), p. 104:6-10.

133. The only reason Dr. France thought those entries had anything to do with the technology at issue in this case is that Dr. France accepted Dr. Brillhart's word that the entries related to direct expansion. France, Nov. 19, 2009 (am/pm), p. 104:11-15.

134. Fovell is not aware of any evidence that documents the "aha moment" with Dr. Brillhart. Fovell, Nov. 19, 2009 (am), p. 35:21-24.

135. Dr. Brillhart is similarly unaware of any documents reflecting that he conveyed his direct expansion idea to ATS. Brillhart, Nov. 17, 2009 (pm), p. 56:5-7.

136. Thus, no documentary evidence of any kind shows that Dr. Brillhart or Fovell made any contribution to maintaining a two-phase flow throughout the thermal load before May 2004.

137. Lack of Contribution re Two-Phase Flow. Dr. France testified that AMI's contribution was that the TDSF system had to maintain a two-phase refrigerant throughout the thermal load "at all times." France Resp., ¶ 79.

138. However, Dr. Brillhart's trial testimony directly contradicts Dr. France's opinion. Dr. Brillhart testified that it is "physically impossible to have two-phase flow at all times." Brillhart, Nov. 17, 2009 (pm), pp. 44:23-45:21. Indeed, Dr. Brillhart's own description of the technology in an industry conference paper reflects that, depending on the operating parameters, the system will supply all liquid or a liquid-vapor mixture to the tool, and that at the outlet of the tool the refrigerant may be all liquid, a liquid-vapor mixture, or all gas. Ex. 5, pp. 1, 2; Brillhart, Nov. 17, 2009 (pm), pp. 46:3-48:8.

139. Dr. France testified that AMI made an inventive or creative contribution to the inventions of Claims 3 and 4 of the '835 Patent because Dr. Brillhart conceived of the idea of maintaining the refrigerant in the "mist flow regime" throughout the thermal load. France, ¶ 184; Docket No. 842, p. 1 (Order excluding Dr. France's opinion that Fovell made a contribution to Claims 3 and 4 of the '835 patent).

140. Dr. France bases his opinion on so-called "mist flow calculations" in Fovell's lab notebook. France, ¶ 95.

141. However, Dr. France conceded that all of Fovell's notebook calculations are consistent with the idea that Fovell was merely calculating the required inlet quality for various chuck designs in order to achieve a particular outlet quality, and there is nothing in any of those calculations about using any particular flow regime. France, Nov. 20, 2009 (pm), p. 16:10-21; see alsoJacobi Rebuttal, ¶ 106 (Fovell's calculations do not reference any flow regime, and do not make reference to a flow map or the other parameters necessary to determine the flow regime).

142. In addition, Dr. France agreed that there was nothing in Fovell's lab notebook indicating whether he was performing the calculations identified by Dr. France based on an idea that Fovell got from ATS as opposed to an idea that Fovell or Dr. Brillhart had. France, Nov. 19, 2009 (am/pm), p. 106:11-15.

143. As this Court has noted, it is one thing to do calculations; it is another to make an inventive or creative contribution. Docket No. 842, p. 1.

144. Moreover, Fovell's lab notebook entries, which are all dated after February 2004, are irrelevant. This Court previously recognized the mist flow concept was disclosed in ATS's February 19, 2004 provisional application. Docket No. 352, p. 10. Accordingly, even if Fovell's calculations did relate to the mist flow regime, "the Court attributes very little probative value to the fact that Fovell was conducting quality ratio calculations well after the date of the provisional application." Id.

145. Unreliable Opinions. Many of Dr. France's fundamental opinions bearing on ownership of the '835 Patent are based solely on the oral communications or testimony of Dr. Brillhart and Fovell. E.g., France, Nov. 19, 2009 (am/pm), p. 107:11-109:13 (Dr. Brillhart's conception of the idea that the refrigerant in the electrostatic chuck base should be in the two-phase state throughout the base to promote temperature uniformity); France, Nov. 19, 2009 (am/pm), pp. 109:14-25, 112:7-11 (AMI conception of using the mist flow regime exclusively throughout the electrostatic chuck base); France, Nov. 19, 2009 (am/pm), pp. 112:22-113:9, 114:14-24. Given the Court's reservations about Dr. Brillhart's credibility and the inconsistencies in Fovell's testimony, Dr. France 's expert opinions bear the flaws of the underlying source for those opinions.

146. There is no documentary evidence that AMI made any contribution to any aspect of the inventions of Claims 3 and 4 of the '835 Patent, and no evidence that any putative contributions were made before ATS created, conceived, and first reduced to practice the subject matter of those claims.

147. Accordingly, the Court finds that AMI made no "inventive or creative contribution" to the inventions of Claims 3 and 4 of the '835 Patent. Thus, those inventions are ATS's Pre-Existing IP. As a result, ATS is the sole owner of the '835 Patent.

III. Ownership of AMI's Ten Patent Applications

148. As previously described, it is undisputed that ATS created and conceived of the idea of using a semiconductor tool, and specifically an electrostatic chuck, as an evaporator in a refrigeration loop in 2000 and 2001 when Ken Cowans conceived of his TDSF system.

149. Dr. France conceded that the text of Ken Cowans' 2001 invention disclosure to ATS's patent attorney discloses using the semiconductor tool, including the electrostatic chuck, as an evaporator in a refrigeration loop. France, Nov. 19, 2009 (am/pm), pp. 84:22-85:3, 85:16-87:11.

150. Following the testing of its TDSF prototype, ATS disclosed the TDSF technology to AMI.

151. An e-mail dated November 29, 2001, in which Goyins conveys questions from AMI's Fovell to Thayer and Ken Cowans, indicates that ATS disclosed its "direct expansion" concept to Fovell at least as of this date. Ex. 1193. The e-mail specifically refers to the technology as the "direct expansion idea" and conveys the question, "[h]ow would you handle the refrigerant in the chucks when they need to be changed out?" Ex. 1193, p. 2. This suggests that ATS disclosed its concept of eliminating the secondary process fluid loop and delivering refrigerant directly to the electrostatic chuck to Fovell at least as early as November 2001.

152. Fovell testified that the reference to direct expansion in this e-mail refers to two-phase flow in an electrostatic chuck. Fovell, Nov. 19, 2009 (am/pm), pp. 22:22-23:1.

153. Accordingly, ATS disclosed its idea of using two-phase refrigerant in an electrostatic chuck -- which necessarily results in the electrostatic chuck functioning as an evaporator while the electrostatic chuck is being cooled -- to Fovell and AMI before November 29, 2001.

154. This 2001 e-mail is also consistent with Ken Cowans' testimony that he referred to the TDSF technology by various names, including "direct expansion," and is consistent with the reference to "direct expansion" in Ken Cowans' lab notebook in August, 2000. K. Cowans, ¶ 27; Ex. 150, p. 27.

155. This e-mail also contradicts the testimony of Fovell and Dr. Brillhart, who claim to have given the technology this name in late 2003. Brillhart, ¶¶ 16-29; Fovell, ¶ 49.

156. November 2002 Presentation. In November 2002, Ken Cowans and Goyins formally presented the Transfer Direct concept to Brian Lue and Fovell at AMI. K. Cowans, ¶¶ 47-48; Goyins, ¶¶ 13-14; Ex. 1128.

157. The PowerPoint slides shown by ATS during the November 2002 presentation disclosed six distinct temperature control concepts. Ex. 1128; K. Cowans, ¶ 49; Goyins, ¶ 14; Thayer, ¶ 16; Jacobi, ¶ 41. The presentation devotes two pages to each of the six technologies. Ex. 1128; Goyins, ¶ 14. The first page for each technology is an illustration, and the second page for each technology identifies features or characteristics. Ex. 1128; K. Cowans, ¶ 49; Goyins, ¶ 14.

158. ATS's November 2002 presentation described the Transfer Direct system as "[e]liminat[ing] pumped process fluid" and "[t]ransfer[ring] refrigerant directly to Semi tool." Ex. 1128, pp. 2, 4; K. Cowans, ¶ 51; Goyins, ¶ 15.

159. The November 2002 presentation also contains a drawing of the Transfer Direct system showing "lines carrying liquid/vapor" connecting the temperature control system ("TCS") to the Semi tool. Ex. 1128, p. 3. This description distinguished the Transfer Direct system from ATS's conventional chillers, which carried only liquid in the lines to and from the semi tool. K. Cowans, ¶ 53.

160. Dr. Jacobi testified that a person familiar with temperature control systems and chiller technology would understand the Transfer Direct concept, as described in the November 2002 presentation, to refer to a chiller without a secondary loop. Jacobi, ¶ 41. Dr. Jacobi further testified that the presentation "would indicate, to a person familiar with refrigeration systems, that the concept being disclosed was a single-loop chiller system that eliminated the secondary loop and utilized the semi tool as an evaporator." Id.

161. Dr. Jacobi further explained that conventional chillers provide the refrigerant to the heat exchanger as a liquid-vapor mixture, and that absent some indication to the contrary, a person familiar with refrigeration technology would expect that a similar strategy was being utilized in the Transfer Direct system, "where the semi tool is a ...


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