No Inequitable Conduct by Semiconductor Patent Holder

banc). the district court's decision to award attorney fees after finding a case factual inquiries for clear error. id. the underlying factual determinations made by the icos employees, including deproft, who did attend that show, stated that "[at] semicon cyberstereo from the projector system on its own. id. at 347. scanner ii, 486 f. supp. 2d at 339. the court apparently inferred from beaty's method and apparatus--an inspection module called the ultra vim plus ("uv+")--in all reasonable inferences on the factual findings relied upon by the district court to show infringement and counterclaimed seeking a declaratory judgment of noninfringement, scanner technologies corporation, statement is misleading or false under the clear and convincing evidentiary standard. unenforceable. consequently, we vacate the attorneys' fee award. we affirm the claims not tried before the district court, scanner charges that the district court failed to in akron polymer container corp. v. exxel container, inc., 148 f.3d 1380 (fed. inequitable conduct. no reason why the doctrine should not extend into other contexts, like the scanner told the pto that icos had copied its invention. to be sure, beaty's light of the requirement that inequitable conduct be found by clear and convincing conduct finding, and its judgment that the related, unasserted patents are "triangulation" as the patents in suit use that term because icos relies on bilinear court's findings will not be overturned in the absence of a "definite and firm conviction" reticle to calibrate the 3d camera." scanner submits that the district court also did not cyberstereo measures a point inside the ball rather than the top of the ball. of the prior art, (2) the level of ordinary skill in the art, (3) the differences between the district court stated: error." honeywell int'l, inc. v. hamilton sundstrand corp., 523 f.3d 1304, 1314 (fed. district court that this court must review for clear error include (1) the scope and content at 1304. we held that "an illumination apparatus" is properly construed to encompass presented a prima facie case of invalidity, the patentee has the burden of going forward d with the claims of the application has been made, and that, in his or her opinion, make special require recitation of those words. in sum, the district court's inference that statement that scanner implied that its display of the uv+ revealed how calculations understood the icos system to locate a reference point inside the ball as opposed to robert m. kunstadt, r. kunstadt, p.c., of new york, new york, argued for systems corp., n.v., 365 f.3d 1299, 1300 (fed. cir. 2004) ("scanner i"), the district interpolation for measurement. an illumination apparatus is positioned for illuminating the ball array device. a first b threshold issues of materiality and intent for clear error. pfizer, inc. v. teva pharms. materiality, the issue of intent to deceive the pto is moot. consequently, we reverse patents in suit unenforceable for inequitable conduct, we necessarily vacate the district notwithstanding its position regarding the stipulation as it relates to the validity of ---------- scanner filed suit against icos on july 7, 2000, accusing icos's cyberstereo some of the claims are "unquestionably infringed." the petition was accompanied by a affirm its conclusion that claim 1 of the '756 patent would have been obvious in light of purposes of assessing the issue of inequitable conduct.3 concluded that beaty's statements2 of a claim, absent a pretrial agreement or stipulation, must submit evidence image from a ball. a second camera is disposed in a fixed focus position relative to the failure to disclose codependency of related applications to one examiner when the other the field of view of both cameras and then carry out the calibration process that i just in scanner i, 365 f.3d at 1300, it is important that the solder balls are positioned however, the record does support the conclusion that icos does not practice 2007-1399, 2008-1081 27 role in the invention, certain interactions between scanner and icos, and icos's also submitted to the pto as exhibit c to the petition. ordinary dictionary definitions5 false statements to the pto in its petition to make special is measured by the rule of ruling in a 2004 interlocutory appeal, scanner technologies corp. v. icos vision numerous patents not in suit since it lacked jurisdiction and an evidentiary record to inference presumed from the adjective he used to describe the amount of notes that and explicitly rejected the idea. in criticizing the district court's failure to consider any statements in connection with the petition to make special to be problematic. the for a physical inspection, a contrary inference of intended compliance with the pto's 2007-1399, 2008-1081 9 1994). in general electro, we stated "as a matter of law that a false statement in a respect to deproft at that show. (tr. 205). deproft did not take "copious triangulation principle to perform three-dimensional measurements, including the use of comparison" of the cyberstereo "system" with the claims of the application. the extrinsic evidence, that finding, if not internally inconsistent, can virtually never be clear understand that the relationship characteristic of triangulation is an ancient greek plaintiff-appellant, involves a petition to make special, as is the case here, we reaffirm that a false int'l royalty corp. v. wang, 202 f.3d 1340, 1348 (fed. cir. 2000). we therefore review '757 patent. even if the stipulation was not intended to be what it plainly represents--a cir. 1998), we reviewed a holding of inequitable conduct that was based on a patentee's 6. the uv+ was not on "open display" at the december 1998 trade show, at defendant-appellee. each of whom has told a coherent and facially plausible story that is not contradicted by (a) that there is an infringing device or product actually on the market or method court's judgment of noninfringement. in order to establish inequitable conduct, the party challenging the patent is icos vision systems corporation n.v., finding of fact that stated simply "icos and scanner have stipulated that the case e district court held that beaty had suggested. on this issue, beaty testified that he had icos vision systems corporation n.v., representative claim on which the case rises or falls--the district court could not have a plurality of balls, wherein the ball array device is positioned in a fixed equally reasonable inference. all reasonable inferences must be drawn from the second camera, an illumination apparatus, and a processor coupled to the cameras to b) a first camera disposed in a fixed focus position relative to the or suggested calculation of a three-dimensional position of a ball with reference to a in this case, a full review of the record shows that the district court failed to draw 2007-1399, 2008-1081 28 inequitable conduct.7 seemed to recognize as much when, in criticizing beaty's use of the term "open display" fixed framework). (b) that a rigid comparison of the alleged infringing device, product, or method inspection product. the cyberstereo was an outgrowth and replacement of icos's the july 1998 trade show it was suggested at an icos meeting that a third party buy the patents. def.'s answer and countercl. at 11 ("count iv (declaratory judgment) . . . the improperly claiming small entity status. nilssen v. osram sylvania, inc., 504 f.3d 1223, to a finding of deceit. district court, it has been applied on appeal from a district court judgment element d of claim 1 also requires the calculation of a three-dimensional position stands and falls on claim 1 of the '756 patent," to which scanner replied, "true." the proof never shifts to the patentee to prove validity. pfizer, inc. v. apotex, inc., 480 f.3d elements of the claims to alter the projector system by removing the structured light accordingly, the district court had subject matter jurisdiction to adjudicate claims that hardware that stores the application generated by such source code. the district court opened black box would not have necessarily revealed how scanner performed those '756 and '757 patents, and each of the claims thereof, are invalid and/or unenforceable only when this court is left with a definite and firm conviction that the district court was in 2007-1399, 2008-1081 20 image of the ball. a processor applies triangulation calculations on related are false. if not, materiality is lacking and there is no need to consider the intent prong 522 f.3d 1279, 1296 (fed. cir. 2008) (quoting cargill, inc. v. canbra foods, ltd., must determine whether the false statement was likely a but-for cause of the grant of visited the scanner booth. the ultimate determination of obviousness by a district court de novo and the underlying over the system as described in the literature. scanner technologies corporation, 1 pre-calculated calibration plane. abstract. claim 1 of the 756 patent reads: but given the vague nature of the testimony, it would have been equally reasonable to but jurisdiction. this court's decision in shelcore, inc. v. durham indus., inc., 745 f.2d suggested." scanner ii, 486 f. supp. 2d at 346. leone's statements were not the only icos's systems did not need to measure the height of the ball nor do they make foundation of its finding that this case was exceptional, the district court likewise erred in petitions to make special are governed by section 708.02 of the manual of ball. scanner ii, 486 f. supp. 2d at 347. the court further concluded that one skilled in finding of invalidity of an independent claim does not determine the validity of claims patents invalid, unenforceable, and not infringed by icos. the parties agreed that the this is an appeal from the united states district court for the southern district of characteristic circular doughnut shape image from at least one ball; 492 f.3d 1336, 1344 (fed. cir. 2007). we review a district court's findings on the after a bench trial, we review for clear error. alza corp. v. mylan labs., inc., 464 f.3d unasserted claims because no case or controversy existed to support subject matter patent examining procedure (mpep), which provides that an application may be made scanner technologies corporation, affirmed in part, reversed in part, and vacated in part. 2007, finding the asserted patents unenforceable, invalid for obviousness, and not of objective indicia of nonobviousness ring hollow. we recognize that it is icos's coplanarity--the relative variations of each ball from a plane, the district court found that packages, and bump on wafers (collectively "bgas"). bgas are mounted on circuit crediting expert witness testimony. we therefore affirm the district court's judgment of or equally met by independent development of the accused products. the record, when elements a, b, and c. the district court observed that element d requires the use of dissolves. because we hold that the district court clearly erred in its finding of introduction of its cyberstereo system, which beaty described as being "substantially error. id. (citing medichem, s.a. v. rolabo, s.l., 437 f.3d 1157, 1164 (fed. cir. 2006). measurements of the first image and the second image to calculate a three dimensional representation of the stipulation before the district court, we affirm the district court's claim 1 of the '756 patent. apparatus and method for the three-dimensional inspection of ball array devices in mid- something that's well known, or was well known at that time. and actually stereo each party shall bear its own costs for this appeal. v. material information, or submitted false material information, and (2) intended to deceive device; court's factual findings are clearly erroneous, or (4) the record contains no evidence interpretation, is a legal issue that this court reviews de novo. fuji photo film co., evidence that anything in the prior art or in the knowledge of one of skill in the art would and then computing a translation offset. bilinear interpolation involves the 6,064,756 ("the '756 patent") and 6,064,757 ("the '757 patent") (collectively, "the patents on infringement, the only element of claim 1 of the '756 patent in dispute was declaration stated that he believed that icos's product met the limitations of the claims position of the ball with reference to a pre-calculated calibration plane. '756 patent, scanner also argues that the district court erred in ruling on the validity of claims inventors elwin m. beaty ("beaty") and david p. mork ("mork") discovered an statement from the applicant and assignee, beaty, describing the claimed invention, his whether deproft did or did not seems inconsequential. but in any event, as with the disclosed in claims 24, 29, and 30 of the '756 patent and various asserted claims of the image to calculate a three dimensional position with reference to a pre-calculated market since 1996, and used a two-camera system with a structured light from a 7 element d, as the parties agreed that the icos products comprise the preamble and court clearly erred in finding that scanner submitted false material statements to the 2007-1399, 2008-1081 7 when in fact, he had not. hence, the district court deemed leone to have made a false the testimony before the district court on the issue of whether deproft visited the president] did not visit the scanner booth at the july 1998 trade show, as measurement of the position of a ball in the 3d camera, the relocation of that position in no specific recollection of which icos personnel visited the scanner booth, but he construction of the term "triangulation calculation" in its infringement analysis to strictly observed ; 3: firmly inflexible rather than lax or the falsity or misleading nature of beaty's statements and corresponding trial testimony are established, the district court must weigh them to determine whether the equities further, the district court expressly considered the insinuation that icos copied, manual of patent examining procedure � 708.02 (8th ed. 2006). stipulation had been made. when asked at oral argument, neither party was aware of the two positions is proportional to the height of the ball. as the district court observed, attorney/agent alleging the following: 2005. the district court rendered its findings of fact and conclusions of law in a may 22, "illuminating," and its substantive constructions of those terms. scanner i, 365 f.3d at (c) that he or she has made or caused to be made a careful and thorough calculated calibration plane in claim 1 of the '756 patent. scanner identifies no basis for furthermore, the district court did not credit the fact that the "rigid comparison" scanner contends that the district court abused its discretion in awarding by february 1999, scanner learned that icos had launched the competing 2007-1399, 2008-1081 3 in suit") were filed on may 28, 1999. scanner displayed its first embodiment of the employed by the district court in construing the terms "an illumination apparatus" and calculations with reference to a pre-calculated calibration plane. absent the application triangulation calculations to make measurements, triangulation calculations utilized with aspects of the process that utilized a processor. one can just as reasonably infer from district court and we review the court's determination that the patentee engaged in any system that had two cameras, one at an angle with respect to the other." trial tr. ball array device for taking a second image of the ball array device to obtain a side view statement to the pto. scanner's arguments regarding obviousness appear to take more issue with the 3 system disclosed or suggested each limitation of claim 1 because the district court conduct. images of only one camera. however, the trial testimony shows that the relatively small is required by claim 1. therefore, according to scanner, "[t]he record contains no 330 (s.d.n.y. 2007) ("scanner ii"). the district court entered final judgment on june 1, ___________________________ as beaty stated in his declaration. the district court credited deproft's testimony over the case is now back before us following proceedings on remand in which the v. i c upon which the court rationally could have based its decision. nilssen v. osram the rule of akron polymer is as clear as it is necessary. whenever evidence only way to make a comparison of an accused device to proposed patent claims, which and the filing of a petition accompanied by a statement by the applicant, assignee, or an of inequitable conduct. scanner argues that the district court failed to take the doughnut shape image from a ball. a second image of the ball array device is taken stands and falls on claim 1 of the '756 patent." december 1998 trade show, "at least not in the sense that beaty tried to convey." 5 projector system." technology, and whether the claims are directed to an apparatus or a method, a failing to consider the level of ordinary skill in the art and the evidence of objective receive first and second images to find the three-dimensional position of at least one measurement of sphinx had been done by the computer vision community perhaps a scanner did not assert against icos. pto. because the district court's finding of inequitable conduct served as the essential with regard to obviousness, the district court enumerated what it accepted to be agreement with the nature of the parties' stipulation. finding no ambiguity in the parties' appealed from: united states district court for the southern district of new york (2007), an obviousness analysis "need not seek out precise teachings directed to the required to calibrate the two cameras and taught away from using an xy calibration an interpretation of the parties' pretrial stipulation, much like contract appropriate standards of review. that circumstance bears no relation, ("leone") submitted that the application was entitled to special handling status because observed at the trade shows, icos engaged scanner in preliminary discussions charts that referenced the specific source for leone's beliefs as to each claimed present one, where the allegation is that inequitable conduct has occurred ball array device for taking a first image of the ball array device to obtain a 2007-1399, 2008-1081 10 it is true that many of our cases, before and after general electro, examine modules in locked cases where people could not get to them." trial tr. at 225, lines 5- some of the claims are unquestionably infringed; and separately consider whether the cyberstereo performed "the triangulation method" agreements. beaty testified that when he said scanner's device was on "open display," 2008-1081 obviousness is a question of law based on underlying questions of fact. daiichi precisely at the same height. "even a minute difference in height could render the bga, technologies corporation, of minneapolis, minnesota. judgment invalidating the claims of both patents in suit. evidence, including any rebuttal evidence presented by the patentee. pfizer, inc. v. issuance of a patent. for example, this court affirmed a district court's decision finding the district court first addressed leone's statement that he made a "rigid scanner argues that the district court erred in concluding that the icos projector statement in the petition that he had made a "rigid comparison" of the cyberstereo 2007-1399, 2008-1081 21 sylvania, inc., 504 f.3d 1223, 1229 (fed. cir. 2007). court, on remand, held a bench trial on infringement, validity and enforceability in march ltd. v. jazz photo corp., 394 f.3d 1368, 1373 (fed. cir. 2005) (citing kearns v. from review of product literature. in some cases, a review of source code may be the test for materiality in the setting of a petition to make special, or in other settings where discovery, and there can be no triangulation of mere unrelated measurements. as the in this setting, the first question to address is whether the statements in question and a first image of the ball array device is taken with a first camera disposed in a fixed beaty's. we also affirm the district court's holding that the cyberstereo does not infringe any constitutes "copious" note-taking is a relative determination, from which subjective ___________________________ defendant-appellee. with him on the brief was ilaria maggioni. of counsel on the brief specific subject matter of the challenged claim, for a court can take account of the show, as beaty alleged as well. consideration of the application." id. at 1411. scanner argues that in cases involving 2007-1399, 2008-1081 16 december 1998 at the semicon japan trade show. position of the at least one ball with reference to a pre-calculated a) an illumination apparatus positioned for illuminating the ball array argued for plaintiff-appellant. with him on the brief were darren b. schwiebert, and in the declaration accompanying the petition to under the clear error standard, scanner cannot be held to have told the pto that icos projector to inspect bgas. literature for the projector system explained the use of a 2007-1399, 2008-1081 14 exhibits into the record going to commercial success but declining to "have discussions scanner argues that the statements adjudged to be misrepresentations were have commented about scanner's system in icos's internal correspondence. thus, revealed how the calculations were performed. deproft [icos's vice physical inspection may not provide any more information than what can be ascertained examiner as prior art to the patents in suit, and the claims were considered patentable according to scanner, the district court applied a different and incorrect in suit would have been obvious. scanner argues that the district court erred by first, materiality in the context of whether the alleged inequitable conduct bore directly on however, to the requirement at trial that a party challenging the validity of obvious without making factual findings that could support a conclusion that the prior art system. in the claimed process of the '757 patent, the ball array device is illuminated acknowledged at trial that he could not recall "anything specific" with to obtain a side view image of the ball. the first image and the second image are 1231 (fed. cir. 2007) (stating that "it is not beyond the authority of a district court to district court chose to infer from deproft's testimony that he had not visited the booth. suggested the limitations of claim 1 as they actually appear, which would have required special because of actual, but not prospective, infringement upon payment of the fee c nonobviousness, scanner cites in its brief to 1) press releases that caution the reader a patent embodying those claims, that rule has no application in a district inequitable conduct for abuse of discretion. modine mfg. co. v. allen group, inc., derived from the same common parent application, unenforceable. scanner appeals 1997 and filed a patent application, u.s. appl. no. 09/321,805, on the apparatus and source and employing triangulation calculations to locate the three-dimensional position conclude that the cyberstereo is not making or using triangulation calculations. employees, at least some awareness of scanner's presence at the trade show. reject scanner's argument that the district court erred by failing to consider the level of of at least one ball with reference to a pre-calculated calibration plane. the district court at 756. and thus the device, useless." id. materiality. we will consider those findings in turn. "apparatus for three dimensional inspection of electronic components." as the patent's scanner's arguments regarding the level of ordinary skill in the art and evidence competing system. the pto granted scanner's petition and advanced the application after the patent has issued and during the course of establishing and 1. a three dimensional inspection apparatus for ball array devices having "copious notes" or make any diagrams or drawings of the uv+ at the japan trade show, chrysler corp., 32 f.3d 1541, 1545 (fed. cir. 1994). despite the black letter law that a 2007-1399, 2008-1081 5 evidence, and a judgment then rendered on the evidence as informed by the range of while it is not unreasonable to infer or expect that a rigid comparison could call infringement was premised upon an incorrect construction of these terms, we vacated laura l. myers. of counsel on the brief for 2007-1399 was vytas m. rimas, scanner case on an erroneous finding of inequitable conduct. we agree. iii disclosed or suggested the actual elements of claim 1. business relations. icos also asked the court to declare scanner's '756 and '757 that bears on the patentability of the claims in the application. when the setting absolutely recalled attending the july trade show. he could not recall speaking with met its burden by clear and convincing evidence by considering the totality of the z calibration and bilinear interpolation. whereas the projector system measured the does not include the stipulation itself, only acknowledgement by both parties that the infringement as based upon erroneous claim constructions. id. in that case, this court with a second camera disposed in a fixed focus position relative to the ball array device inferences, both favorable and unfavorable, can be deduced. to the extent that the than a trigonometric one. in its use of bilinear interpolation, the icos system does not 2007-1399, 2008-1081 25 as the district court observed, beaty's statement alleged that: the uv+ limit the article "an" to a single illumination source in either the claims or specification of came by infringement by way of copying. patentability of the claims in suit. that fact does not undercut the continuing force of the west we all noticed a potential 3d bga competitor, scanner technologies." this justifying small entity maintenance payments"). nilssen relied on ulead systems, inc. v. assertion of infringement. the limitations of the claims can be met by slavish copying, district court found that beaty made a false statement based on an unfavorable locating the x, y, and z values for the top of a ball. because the icos products rely on 2007-1399, 2008-1081 13 v of triangulation calculations on related measurements of the first image and the second determination, which are supported by the trial testimony of dr. mundy. see stratoflex, plaintiff-appellant, scanner contends that the district court abused its discretion by ruling that the statements in scanner's application to make special at face value in assessing their supreme court reaffirmed in ksr int'l co. v. teleflex inc., 127 s. ct. 1727, 1741 basis for the court's finding of inequitable conduct; the district court also found beaty's that position to the location of the ball as observed in the 2d camera. the difference in in an interlocutory appeal in 2004, scanner challenged the methodology scanner contends that the district court erred by declaring unenforceable notes" or make any diagrams or drawings of the uv+ at the japan trade calibration plane. the manufacturing process>; 5 of an airship : having the outer shape maintained by a neither material to patentability nor to the grant of expedited review. further, scanner image and the second image, obtained by the first and second cameras respectively, as "misapplied the law relating to materiality by incorrectly concluding that any statement in plaintiff-appellant, infringed the proposed claims of scanner's patent applications. consequently, while the regarding icos's interest in licensing or acquiring scanner's bga technology. icos and thus "illuminating," to an apparatus containing only a single illumination source. id. the 2d or top camera using a camera-to-camera transfer process, and a comparison of trade show in california; deproft "took copious notes, diagrams, and drawings" of the veracity, and instead drew unwarranted inferences from the statements, and deemed equally reasonable inference of good faith that the plain words of his statement and inferences, a district court clearly errs in overlooking one inference in favor of another method in january 1998. this january 1998 application is the "common parent patentability, and instead applied what it considers broad dicta in this court's decision in costs does not infringe any claim of the patents in suit. infringement is a question of fact that, invalidity, and unenforceability. after this court reviewed the district court's markman the balls were lying in the same plane. to accomplish this measurement, the punishment of unenforceability of the entire patent, could wrongly stand. invention. specifically, dr. mundy testified that ". . . the use of triangulation to determine the district court's final judgment. for the reasons stated below, we affirm in part, the prior art and the knowledge of one skilled in the art. 2007-1399, 2008-1081 30 shareholder of scanner. scanner holds an exclusive license to the patents in suit from 917 f.2d 538, 541 (fed. cir. 1990), cert. denied, 500 u.s. 918 (1991). an abuse of deproft did visit the booth or he did not. the memory of both witnesses was at best defendant-appellee. of balls. id. based on these findings, the district court entered final judgment that the petition to make special is material if . . . it succeeds in prompting expedited 2007-1399, 2008-1081 2 open so people could move around it and see it and observe it." id. at 225, lines 7-8. in patents in suit are unenforceable due to inequitable conduct because the court 2 scanner ii, 486 f. supp. 2d at 346-347. court considered in invalidating the patents, and that the system was before the pto, make special suggested, and "were intended to mislead the pto into believing," that well known principles in the prior art, including illumination in camera-based systems, was on "open display" at the december 1998 trade show; deproft approached beaty for for one or more of the reasons set forth in paragraphs (a) through (k) above."). contributions of the new product, 2) an email referring to a non-specific press release, finding that this case was exceptional, and therefore abused its discretion in awarding b ball with reference to a pre-calculated calibration plane. 757 patent, abstract. 1348, 1359 (fed. cir. 2007) (quoting hybritech inc. v. monoclonal antibodies, inc., the ultimate question of inequitable conduct is committed to the discretion of the brief does not even dispute the level of ordinary skill that dr. mundy described. supporting a conclusion of invalidity of each claim the challenger seeks to of actual infringement. the petition contained all the prerequisites that the pto before michel, chief judge, clevenger, senior circuit judge, and gajarsa, 2007-1399, 2008-1081 29 support such a ruling. because we hold that the district court erred in holding the discretion occurs when (1) the court's decision is clearly unreasonable, arbitrary, or noninfringement of claim 1. scanner then states that the "projector taught that separate calibration devices were beaty further testified, regarding the open display, that "[w]e had ours completely brought against icos vision systems corp. ("icos") in july 2000. icos denied pleadings represented that "the case" constituted allegations of infringement of both found. the rule is necessary, for without it findings of inequitable conduct, with the office ("pto"). the purpose of such a petition is to seek accelerated review of the clevenger, senior circuit judge. july 1998 at the semicon west trade show in san jose, california, and again in suggested applying triangulation calculations on related measurements of the first boards that can be found in various electronic devices, and are used to conduct district court's judgment that claim 1 is invalid as it would have been obvious. we also statement by an icos employee attributes to deproft, as well as other icos plaintiff-appellant, appearing stiff and unyielding ; 2 a: inflexibly set in opinion; b: 802 f.2d 1367, 1375 (fed. cir. 1986). however, in this case, the record shows that patents, and a declaratory judgment action seeking invalidity, noninfringement, and standard, the district court clearly erred in favoring deproft's vague memory over although deproft was sure he attended the july show, he was unsure whether or not he uv+ at the japan trade show; other icos personnel "also rigorously studied the scanner also argues that the district court applied an incorrect construction of the 486 f. supp. 2d at 346. when the individual facts are properly assessed, with all 6 regarding inequitable conduct, the district court took issue with leone's commissioner of patents and trademarks at the united states patent and trademark destroy. submits that neither beaty nor leone made false or misleading statements. scanner scanner booth at the july trade show is susceptible of at least two possibilities: either 1286, 1289 (fed. cir. 2006). under the clear error standard, a reversal is permitted least not in the sense that beaty tried to convey, for the system was in a from the first camera and a second image from the second camera whereas the the '757 patent is entitled "process for three dimensional inspection of electronic deceitful intent can be drawn from the joint prosecution of both applications by the same black sealed box and an inspection of the module would not have other evidence introduced at trial demonstrating the existence of objective indicia of applications were pending, scanner submitted a petition to make special to the 2007-1399, 2008-1081 12 2007-1399, 2008-1081 6 the district court also found that the uv+ was not on "open display" at the apotex, inc., 480 f.3d at 1360 (quoting stratoflex, inc. v. aeroquip corp., 713 f.2d "rigid" do not connote that the term is synonymous to a physical inspection. electrical impulses in such devices. the bgas are comprised of an array of solder balls the district court's determination that the patents in suit are unenforceable for valid. while the above rule is not applicable as a rule of procedure in a the district court has the responsibility to determine whether the challenger has inc., 455 f.3d 1351, 1363 (fed. cir. 2006) (quoting purdue pharma, 438 f.3d at 1128). and must be proven by clear and convincing evidence. young v. lumenis, inc., icos's expert, dr. mundy, was asked whether the two cameras in the projector system lex computer & management corp., 351 f.3d 1139 (fed. cir. 2003). in ulead, this parent application, divisional applications that would become u.s. patent nos. beaty, and the license includes the right to sue for infringement. further, icos points to dr. mundy's testimony as establishing that the use of two called a caliber, something like that . . . . but basically it is a plane which they put under ordinary skill in the art and evidence of objective indicia of nonobviousness. issued no findings of fact capable of supporting its conclusion. in support of its the petition. if not, a threshold level of materiality has not been established. beaty's statement that by use of the phrase "open display," scanner was stipulation between the parties that the case would be tried on a representative claim. judge denny chin "open display," over an equally reasonable favorable inference. claim 1 because the parties agreed to try the case on a representative claim upon which words are not of leone's creation. the pto's rules for the contents of a petition to constitutes the clear and convincing evidence necessary to support a finding of a crisp nature of the district court's opinion rather than the merits of the obviousness a two-camera system, use of stereo vision, and the idea of calibrating cameras. in view the pto issued the patents in suit on may 16, 2000. the '756 patent is entitled beaty or anyone else representing scanner at the july show. when asked if he had the art would have found it obvious at the time of the scanner invention to employ the information from the two cameras, the side 3d camera and the top camera, is 2007-1399, 2008-1081 24 2007-1399, 2008-1081 15 in his application. but such a belief leaves room for nothing more than the bare we note that not all false statements or misrepresentations contained in a the 756 patent. id. because the district court's entry of summary judgment of non- inferences and creative steps that a person of ordinary skill in the art would employ." logical gap between the prior art and the claim in this case is closed by a person of uv+ so that icos could see how it worked; icos contacted scanner in december 1998 indulgent ; 4: precise and accurate in procedure ; b: false statement or misrepresentation in a petition to make special is material, a court illustrated in my slides and in my analysis of the code." id. (emphasis added). process. literature describing the projector system was considered by the pto evidence to counter the prima facie challenge to the presumption of section 282."). the historically issues of unenforceability have arisen in cases involving optical system, the apparatus comprising: agreed with scanner that the district court erred in limiting "an illumination apparatus," inequitable conduct occurring in the prosecution of patents. but, we see infer that he had in fact visited it. in the face of the clear and convincing evidence 2007-1399, 2008-1081 23 relational aspect of claim 1, we agree that one of ordinary skill in the art would 2008-1081 found that deproft did not visit the scanner booth at the july 1998 trade show, as the alleged false statements examined above, here too the testimony is not one-sided. the 2007-1399, 2008-1081 4 district court conducted a bench trial on the issues of infringement, validity, and to the level of ordinary skill in the art. scanner points to no contrary evidence, and its the former stand or fall with the latter--has vitality prior to the issuance of 476 f.3d 1359, 1363 (fed. cir. 2007). both intent and materiality are questions of fact, since it is uncontested that several icos employees visited the trade show, "(1) either made an affirmative misrepresentation of material fact, failed to disclose supporting material engenders, does not support the conclusion that the attorney's were taken, the district court plainly erred. we fail to see how such an inference while the rule--that where the patentability of dependent claims is not ii see, e.g., merriam-webster's online dictionary (defining "rigid" as 1a: were performed. as discussed above, however, even an unsealed and physically camera is disposed in a fixed focus position relative to the ball array device for taking a failed to give due weight to evidence of good faith that would call for inferences contrary 2007-1399, 2008-1081 18 usa, inc., 518 f.3d 1353, 1366 (fed. cir. 2008). under the clear error standard, the "any memory of seeing anything or learning of anything about scanner at that trade claims of the patents in suit. scanner further contends that the district court erred in claim 1 of the '756 patent. the phrase "rigid comparison" in a petition to make special in that, depending on the united states court of appeals for the federal circuit misrepresentation or omission must be material to patentability to support a charge of about obtaining rights to the uv+; and on january 26, 1999, icos announced the attorney." id. at 1382. in that case, we found clear error because the district court court's assessment of the conflicting testimony because deproft was forced to the ball array device for taking a second image of the ball array device to competition and trade disparagement, and tortious interference with advantageous graham v. john deere co., 383 u.s. 1, 17 (1966). scanner first argues that the district court lacked jurisdiction to adjudicate the icos adduced certain facts, which were unrebutted by scanner and accepted by the whether the stipulation was memorialized in writing or part of the record below. with rebuttal evidence.") (internal citations omitted); cable elec. prods. inc. v. genmark, search of the prior art or has a good knowledge of the pertinent prior art. required to establish by clear and convincing evidence that the patent applicant claimed invention and the prior art, and (4) objective indicia of non-obviousness. also in re translogic tech., inc., 504 f.3d 1249, 1262 (fed. cir. 2007). ball array devices, where the ball array device is positioned in a fixed optical system. solve for unknown properties of a triangle and does not measure the height of the balls. older bga inspection product, the icos projector. the projector had been on the 5 circuit judge. for the reasons discussed above, we reverse the district court on its inequitable ordinary skill in the art "pursu[ing] known options within his or her technical grasp." see reasonable inferences being drawn, there is no clear and convincing evidence that argument, scanner points to the fact that the projector system was the only prior art the 1302. scanner further challenged the district court's entry of summary judgment of non- the entire case would stand or fall. icos cites to the parties' stipulation "that the case reverse in part, and vacate in part. warrant a conclusion that inequitable conduct occurred." flex-rest, llc v. steelcase, paying the appropriate maintenance fee. in this context, it is equally id. at 624-25 (emphasis added). in this case, we have an unambiguously proposed inequitable conduct since general electro, the federal circuit has emphasized that a attorneys' fees and costs to icos because the court based its finding of an exceptional pending application.1 the judgment and remanded the case for further proceedings. id. at 1306. with respect to scanner's point that the district court does not identify the erred in failing to consider infringement of scanner's other claims in ruling those claims argued separately from the independent claims from which they depend, 1 4 vague.6 which found the claims to be patentable over the projector system. specifically, kurt j. niederluecke, fredrikson & byron, p.a., of minneapolis, minnesota, three dimensional inspection process for ball array devices positioned in a fixed optical denying the substantive allegations contained in the complaint. in its counterclaim, the u.s. patent and trademark office." symantec corp. v. computer assoc. int'l, inc, to make it go more quickly." in point of fact, there simply was not much evidence of leone misleadingly suggested he saw the icos device, when weighed against a rendered scanner's claims obvious. icos vision systems corporation n.v., 4 of those prior art principles, the district court concluded that icos's projector system focus position relative to the ball array device to obtain a characteristic circular finding is based on his decision to credit the testimony of one of two or more witnesses, ball grid array inspection system of infringing the patents in suit. icos filed an answer burden to prove invalidity by clear and convincing evidence, and that that burden of secondary indicia of obviousness for the court to consider and discuss. we therefore infringed claims 24, 29, and 30 of the '756 patent. accordingly, we affirm the district icos responds that the district court found that the projector system used "z the presumption of validity does not guide our analysis on appeal. rather, attorney fees. see molins plc v. textron, inc., 48 f.3d 1172, 1186 (fed. cir. 1995). on a plane or substrate that conduct electrical impulses. as noted in this court's opinion first image of the ball array device to obtain a characteristic circular doughnut shape were calibrated using a single artifact. dr. mundy replied, "yes, they were." trial tr. at two-camera systems where one camera is disposed at an angle to another, use of calibration with reference to a z plane. the trial testimony supports this contention. bilinear interpolation is different from triangulation, as it is an algebraic operation rather enforceability. inc., 770 f.2d 1015, 1022 (fed. cir. 1985) ("[i]f evidence is presented establishing a properly analyzed, reveals scanner telling the pto that it believed icos to infringe. of reasonable inferences in every case, but must do so only where it draws an inference general electro music corp. v. samick music corp., 19 f.3d 1405, 1411 (fed. cir. the booth, as opposed to a private setting or one that might require non-disclosure communicating that the product could be viewed and demonstrated openly by visitors to 2007-1399, 2008-1081 11 acknowledge on cross-examination that he had taken some notes--at least enough to application" to which the district court refers in its final judgment. from this common not to place undue reliance on forward-looking statements such as expected scanner also appeals the district court's ruling on the validity of unasserted 2007-1399 3d calibration object, not a calibration plane, was needed to calibrate a 3d camera." not infringed because scanner failed to adduce facts to support a finding that icos inspect electronic components, including ball array devices, ball grid arrays, chip scale court stated: we recognize that claim 1 requires triangulation of measurements using a first image case would rise and fall on claim 1 of the '756 patent. scanner limits the import of the stipulation to claim construction. the record 758. when asked how, dr. mundy explained, "they had a flat glass, a plate, which they a district court cannot be said to have erred by not discussing those unrebutted facts. find that the projector system or the knowledge of those of skill in the art contained or claim term "pre-calculated calibration plane" since the district court arrived at the and 3) an excerpt from the trial testimony in which counsel for scanner sought to admit triangulation calculations while the icos products rely on bilinear interpolation, which is