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March 25, 2003


The opinion of the court was delivered by: Denny Chin, United States District Judge


In this patent case, plaintiff Scanner Technologies Corp. ("Scanner") alleges that defendant ICOS Vision Systems Corp., N.V. ("ICOS") infringes the claims of two of Scanner's patents: U.S. Patent No. 6,064,756 (the "`756 Patent") and U.S. Patent No. 6,064,757 (the "`757 Patent"). The case involves technology and processes to inspect electronic components, such as "ball array devices," which are used to conduct electrical impulses in electronic devices. Scanner contends that ICOS's CyberSTEREO system, a ball array device inspection system, infringes the claims of the Scanner patents.

Scanner moves for partial summary judgment as to literal infringement. ICOS moves for summary judgment as to patent invalidity and non-infringement. ICOS's assertion of invalidity rests on three grounds: 1) failure to comply with the requirements set forth in 35 U.S.C. § 112, ¶ 1 — written description, best mode, and enablement, 2) anticipation, and 3) obviousness. Its claim of non-infringement is based on two theories: 1) literal infringement and 2) infringement under the doctrine of equivalents. For the reasons set forth below, the motions are denied.


A. The Patents

The `756 Patent is an apparatus patent entitled "Apparatus for Three Dimensional Inspection of Electronic Components." The `757 Patent is a method patent entitled "Process for Three Dimensional Inspection of Electronic Components." (Michaelis Decl. Exs. 1, 2).

Applications for the `756 and `757 Patents were filed on May 28, 1999, and the patents themselves were issued on May 16, 2000, to Elwin M. Beaty and David P. Mork — the two inventors of the apparatus and method in question. (Id.; Beaty Decl. ¶¶ 3-5). Mork assigned his rights in the patents to Beaty, the CEO and majority shareholder of Scanner. Beaty then granted Scanner an exclusive right to the patents. (Beaty Decl. ¶¶ 2, 3).

The patents relate to the three-dimensional inspection of electronic components, such as ball array devices, ball grid arrays ("BGAs"), chip scale packages ("CSPs"), and bump on wafers ("Bump on Wafers"). (Michaelis Decl. Ex. 3 ¶ 4). These electronic components comprise an array of balls on a plane or substrate that conduct electrical impulses. (Smeyers Decl. ¶ 3; Michaelis Decl. Ex. 3 ¶ 5).

BGAs are used in computer chips and can be found in devices such as personal computers, cellular telephones, electronic organizers, and compact disc players. It is important that all solder balls are positioned precisely at the same height. A minute difference in height, even as small as a human hair, could render the BGA useless. Because the economics involved render repairs impractical, a defective BOA usually means the entire electronic device must be discarded. As a result, the industry has sought to develop an inspection machine to enable manufacturers of ball array devices to inspect BGAs and Bump on Wafers in a fast and efficient manner. The patents at issue pertain to such an inspection device and method.

B. The Dispute

Scanner alleges that ICOS infringes the claims of both the `756 and `757 Patents by selling, offering for sale, and servicing a device called CyberSTEREO. (Compl. ¶¶ 9-12). To date, ICOS continues to market and sell the CyberSTEREO systems. (Beaty Decl. ¶ 18).

Scanner developed its ULTRAVIM PLUS Vision Integration Module — the commercial embodiment of the `756 and `757 Patents — by July 1, 1998. (Michaelis Decl. Ex. 3 ¶ 12; Beaty Decl. ¶¶ 2, 7). The ULTRAVIM PLUS was on display at trade shows in July and December of 1998. (Beaty Decl. ¶¶ 8, 9, 11; Michaelis Decl. Ex. 3 ¶ 13). ICOS management saw Scanner's display and, by letter dated December 22, 1998, expressed interest in acquiring Scanner's EGA 3D inspection technology. (Beaty Decl. ¶¶ 11-12 & Ex. C).

ICOS's BGA inspection technology was also developing during that time. From approximately 1993 to 1996, ICOS developed an inspection system called the Projector system. (Smeyers Decl. ¶ 2). In response to market demands for more speed and less accuracy, however, ICOS created its CyberSTEREO system by removing the projector from the Projector system and converting to pure stereovision. The CyberSTEREO system was first announced on January 26, 1999 and introduced to the public in March 1999. (Id. ¶ 4; Beaty Decl. ¶ 13 & Ex. D). ICOS subsequently developed its CyberSTEREO II and 3D Stereo systems, available in September 1999 and May 2000, respectively. (Mundy Report Ex. 3; see also Fantone Supplemental Decl. Exs. H-L).

After the Scanner patents were filed on May 28, 1999, and before they issued on May 16, 2000, ICOS filed an international patent application on March 1, 2000, under the Patent Cooperation Treaty, entitled "Measuring Positions or Coplanarity of Contact Elements of an Electronic Component with a Flat Illumination and Two Cameras." (Michaelis Decl. Exs. 1, 2, 23). ICOS's patent application discloses a "method for measuring positions of a set of contact elements of an electronic component." (Id. Ex. 23).

C. The Claims

Scanner alleges that ICOS's CyberSTEREO system infringes all the claims of the `756 and `757 Patents. (Compl. ¶ 9). As the parties have previously agreed in this case, construction of the disputed terms in claim 1 of the `756 Patent is controlling with regard to the language in the remaining claims. Scanner Techs. Corp. v. ICOS Vision Sys. Corp., No. 00 Civ. 4992 (DC), 2000 WL 44135, at *1 n. 1 (S.D.N.Y. Jan. 11, 2002). (See Def.'s Opp'n at 12 n. 7). Claim 1 of the `756 Patent is therefore used as a representative claim. Additionally, as the language in the Scanner patents is nearly identical, references are to the `756 Patent, unless otherwise specified.

Claim 1 of the `756 Patent reads as follows:

1. A three dimensional inspection apparatus for ball array devices having a plurality of balls, wherein the ball array device is positioned in a fixed optical system, the apparatus comprising:
a) an illumination apparatus positioned for illuminating the ball array device;*fn1
b) a first camera disposed in a fixed focus position relative to the ball array device for taking a first image of the ball array device to obtain a characteristic circular doughnut shape image from at least one ball;
c) a second camera disposed in a fixed focus position relative to the ball array device for taking a second image of the ball array device to obtain a side view image of the at least one ball; and
d) a processor, coupled to receive the first image and the second image, that applies triangulation calculations on related measurements of the first image and the second image to calculate a three dimensional position of the at least one ball with reference to a pre-calculated calibration plane.
(Michaelis Decl. Ex. 1 at Col. 18:34-53).

Certain claim terms have been construed by the Court in prior proceedings in this case as follows:

A. Illumination source: The invention has only one illumination source.
B. Side View: Side view as used in claim 1 is not limited to a view that produces a crescent shape; the viewing angle is not a 90 degree angle, a top view angle, or an angle identical to the one created by the first camera; and the viewing angle is not limited to a "low angle."
C. Triangulation Calculation: The Court adopts the definition of triangulation set forth in The Photonics Dictionary and adds that triangulation calculation involves the use of trigonometric principles.
D. Three Dimensional Position: The term is defined as the X, Y, and Z values for the top of at least one ball of a ball grid array.
E. Pre-calculated Calibration Plane: The term is construed to define the X and Y world coordinates and the Z=0 world plane.
Scanner, 2000 WL 44135, at *8.

D. Procedural History

Scanner filed the complaint in this action on July 7, 2000, alleging two counts of patent infringement. On November 7-8, 2001, I held a Markman hearing and construed the disputed claim terms in a memorandum decision dated January 10, 2002. The parties simultaneously submitted these motions on May 1, 2002 — Scanner's partial summary judgment motion for infringement, and ICOS's summary judgment motion for invalidity and non-infringement. ICOS submitted three separate motions for summary judgment on that date. By order dated May 7, 2002, the motions were rejected without prejudice to the filing of one summary judgment motion by May 14, 2002. ICOS duly filed its consolidated motion.


Scanner's motion for partial summary judgment on the issue of infringement is based solely on the argument that ICOS's product literally infringes the claims of the `756 and `757 patents. ICOS moves for summary judgment as to both patent invalidity and non-infringement. ICOS's invalidity claims are premised on three main grounds: 1) the inventors failed to comply with the written description, enablement, or best mode requirements of 35 U.S.C. § 112, ¶ 1, 2) the patent is invalid as anticipated, under 35 U.S.C. § 102, and 3) the patent is invalid as obvious, under 35 U.S.C. § 103. ICOS also moves for summary judgment of non-infringement on the grounds of both literal infringement and infringement under the doctrine of equivalents.

First, I discuss the standards generally applicable to summary judgment motions. Second, I address the issue of patent invalidity. Third, I discuss infringement.

A. Summary Judgment

Summary judgment will be granted when "there is no genuine issue as to any material fact and . . . the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c); see Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 585-87 (1986). Accordingly, the Court's task is not to "weigh the evidence and determine the truth of the matter but to determine whether there is a genuine issue for trial." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249 (1986). Summary judgment is inappropriate if, resolving all ambiguities and drawing all inferences against the moving party, there exists a dispute about a material fact "such that a reasonable jury could return a verdict for the nonmoving party." Id. 477 U.S. at 248; see Bay v. Times Mirror Magazines, Inc., 936 F.2d 112, 116 (2d Cir. 1991).

To defeat a motion for summary judgment, the nonmoving party "must do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita, 475 U.S. at 586. The nonmoving party "must present concrete particulars and cannot succeed with purely conclusory allegations." Fitch v. R.J. Reynolds Tobacco Co., 675 F. Supp. 133, 136 (S.D.N.Y. 1987) (citation omitted). There is no issue for trial unless there exists sufficient evidence in the record favoring the party opposing summary judgment to support a jury verdict in that party's favor. Anderson, 477 U.S. at 249-50. As the Court held in Anderson, "[i]f the evidence is merely colorable, or is not significantly probative, summary judgment may be granted." Id. (citations omitted).

B. Patent Invalidity

Patents issued by the Patent and Trademark Office are presumed valid. 35 U.S.C. § 282 (2002). To overcome this presumption of validity, the party challenging the patent bears the burden of proving invalidity by clear and convincing evidence. Oakley, Inc. v. Sunglass Hut Int'l, 316 F.3d 1331, 1339 (Fed. Cir. 2003); Apotex USA, Inc. v. Merck & Co., 254 F.3d 1031, 1036 (Fed. Cir. 2001); Johns Hopkins Univ. v. Cellpro, Inc., 152 F.3d 1342, 1359 (Fed. Cir. 1998); Engel Indus., Inc. v. Lockformer Co., 946 F.2d 1528, 1531 (Fed. Cir. 1991). On a motion for summary judgment, where the evidence is construed in favor of the nonmovant, "[t]he burden of proving invalidity. is high." Schumer v. Lab. Computer Sys., 308 F.3d 1304, 1316 (Fed. Cir. 2002); see also Levi Strauss & Co. v. Golden Trade, Nos. 92 Civ. 1667, 90 Civ. 6291, 90 Civ. 6292 (RPP), 1995 WL 710822, at *11 (S.D.N.Y. Dec. 1, 1995) (collecting cases).

In this section, I first discuss 35 U.S.C. § 112, ¶ 1, and its three requirements for patent specifications — written description, enablement, and best mode. I then turn to the topic of anticipation as a basis for patent invalidity and finish the invalidity analysis with a discussion of obviousness.

1. 35 U.S.C. § 112, ¶ 1

The first paragraph of 35 U.S.C. § 112 sets forth three requirements of a patent specification: 1) written description, 2) enablement, and 3) best mode. The statute requires that

[t]he specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
35 U.S.C. ...

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