2010-1149 Inequitable Conduct Order

U n i t e d S t a t e s D i s t r i c t C o u r t

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UNITED STATES DISTRICT COURTNORTHERN DISTRICT OF CALIFORNIA

APPLIED MATERIALS, INC.,Plaintiff,v.MULTIMETRIXS, LLC,Defendant./ No. C 06-07372 MHP

MEMORANDUM AND ORDERRe: Findings of Fact and Conclusions of Law on Inequitable Conduct; PartialSummary Judgment on Multimetrixs’Counterclaim; Multimetrixs’ Counsels’Motion to Withdraw

United States Patent Number 6,831,287 (hereinafter the “‘287 patent”) claims a method fordetermining the correct position of a flat object using two sensors located at the edge of the object,one inside the edge of the object when placed in the correct position and one outside the edge. The‘287 patent was issued to Boris Kesil, David Margulis, and Elik Gershenzon on December 14, 2004,and the assignee of the patent is defendant Multimetrixs, LLC (hereinafter “Multimetrixs”).Plaintiff Applied Materials, Inc. (hereinafter “Applied”) brought this action againstMultimetrixs, and among other allegations, asserted that two of its engineers—Allen Lau andMichael Feltsman—conceived the invention claimed in the ‘287 patent and were the actualinventors. Applied sought correction of inventorship of the ‘287 patent pursuant to 35 U.S.C.section 256. Multimetrixs asserted, among other counterclaims, that Applied was infringing the‘287 patent.

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123456789101112131415161718192021222324252627282In March 2008, the court conducted a four-day bench trial on the issue of inventorship of the‘287 patent. During the bench trial on the inventorship issue, Applied elicited testimony from BorisKesil, one of Multimetrixs’ officers and a listed inventor of the ‘287 patent, that in the course of prosecuting the ‘287 patent, he caused Multimetrixs to submit forged documents to the UnitedStates Patent and Trademark Office (“PTO”). In light of this testimony, the court

sua sponte

raisedthe issue of inequitable conduct before the PTO. The court ordered the parties to brief the issue andoral argument was held on May 21, 2008. Pursuant to Federal Rule of Civil Procedure (“FRCP”)Rule 15(b), plaintiff was also deemed to have amended the pleadings to conform to the evidencepresented at trial.Now before the court are the parties’ submissions and arguments concerning whetherdefendant Multimetrixs engaged in inequitable conduct before the PTO. Given a finding of inequitable conduct, the ‘287 patent is unenforceable and Multimetrixs’ counterclaim againstApplied for infringement of the ‘287 patent cannot be maintained. Therefore, pursuant to FRCPRule 54(b), the court may enter partial summary judgment as to that claim. Having considered thewritten submissions and oral arguments of the parties and based on the evidence presented at trial,the court enters the following findings of fact and conclusions of law regarding inequitable conduct.Also before the court is Multimetrixs’ counsels’ motion to withdraw as counsel of record.INEQUITABLE CONDUCTI.Findings of FactApplied is the leading developer of the systems and machines used to manufacturesemiconductor wafers. Its “Endura” machine is used for physical vapor deposition processing, amethod of depositing metals onto silicon wafers. During this process, a silicon wafer is held in placeand temperature controlled by an electrostatic chuck while high purity metal material is depositedonto the wafer. When a silicon wafer is not present within the deposition process chamber, a shutterdisk is used to cover the electrostatic chuck and protect it from waste deposition. The shutter disk ismoved from the garage in which it is housed into the process chamber by way of a shutter disk assembly consisting of the shutter disk, a blade on which it rests, an arm which rotates into and out

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123456789101112131415161718192021222324252627283of the garage, the garage, and a sensor system. The original Endura system used a single reflectivesensor placed towards the center of the shutter disk to determine whether the shutter disk was in thegarage. Because the sensor could only determine whether the shutter disk was in the garage and notthe shutter disk’s precise placement, misplaced disks were colliding with the electrostatic chuck resulting in breakage to the wafer and sometimes to the electrostatic chuck.Allen Lau, one of Applied’s engineers, was assigned to work on the problem starting in late1999, but was unable to find a solution. Michael Feltsman, another Applied engineer, was assignedto work with Allan Lau on the Endura shutter disk assembly in February 2001. Through a socialconnection, Michael Rosenstein, a manager at Applied who was overseeing the Endura shutter disk assembly project, was introduced to Multimetrixs. Multimetrixs had experience in sensortechnology and had a machine shop capable of producing a prototype of the new shutter garage thatwould be required for any new design. Rosenstein arranged a meeting between the Appliedengineers Lau and Feltsman and the Multimetrixs personnel including Boris Kesil and DavidMargulis, two of the named inventors on the ‘287 patent. Following an initial meeting in March2001, Applied and Multimetrixs corresponded about the shutter disk assembly.Eventually, the problem of the misplaced shutter disk was solved by substituting the singlereflective sensor placed at the center of the disk with two through-beam sensors placed at the edge of the disk. The two sensor design was an improvement over the previous single sensor design becauseit was able to detect the precise location of the shutter disk. When placed in the correct position, theedge of the shutter disk would be located just between the first sensor placed on the inside edge of the disk and the second sensor placed on the outside edge of the disk.Multimetrixs and its inventors—Boris Kesil, David Margulis, and Elik Gershenzon—filedpatent application number 09/976,890 on October 15, 2001. Based on this application, patentnumber ‘287 was granted on December 14, 2004. The ‘287 patent discloses the use of two sensorsplaced at the edge of an object in order to detect its position.During the course of prosecution of the ‘287 patent, one of the Multimetrixs inventors, DavidMargulis, died. The date of his death, as shown on a death certificate, was October 10, 2002. Exh.87.

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The remaining inventors, Boris Kesil and Elik Gershenzon were aware of Margulis’ death.

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