*3 MICHEL, LINN, Before BRYSON and Judges. Circuit LINN, Judge. Circuit SA, Irori, Sokymat and Ake Gustafson appeal judgment of the United States District Court for the Central District of California Gustafson is not co-inven- 5,281,- tor and co-owner of Patent U.S. No. (“the patent”), Sokymat and that and Irori infringe SA therefore the ’855 Trovan, SA, patent. Ltd. No. (C.D.Cal. 2001) Apr. CV-97-4585-MRP (“Opinion”). Because the district court did not properly construe the claims at issue, requiring the resolution of factual questions inventorship on the issue of construed, the claims properly we va- cate and remand.
BACKGROUND patents This case involves relating to miniature pas- electronic devices known as transponders. transponders sive Passive many are used in applications including identification, animal tracking and anti- devices, systems. theft and access control transponders Passive consist of a small coil an corresponding to embodi- transponder .cir- tiny to a attached winding patent. invention the ’855 ment of the encapsulated 1 illustrates Figure cuit. *4 very circuit integrated The device an antenna and aets winding as The coil contact describes tiny. specification 12 The very thin wire wound composed 24 in one 22 embodiment magnetic pads cylindrical elongated around mils wide long by mils approximately 16 14 and are ends 10. The wire core (cid:127) -millimeter). Id., (0.41 by 0.15 millimeter 20. circuit die integrated to an attached invention, embodi- col. 11.18-21. commercial In embodiments some by parties invention sold both ments of the end of is affixed to the means measuring circuit integrated is use an circuit die 20 integrated core (1 millim- 40 mils 40 mils approximately In other support 18. attached to then typi- 12 is The antenna wire square). eter embodiments, provide ends (0.71 mils) diameter, cally 18 microns for the the sole the thickness than one-fourth which is less pat- 18. ’855 the need for of a The overall size a human hair. assembly and of ent, 44-47. After col. 11. can be this case passive transponder encapsulated transponder is testing, the .in ex- Id., trial standard compared seen as capsule plastic glass a suitable or hibit below. sticker 2,11. col. 55-57.
6 *5 transponders
Passive are generally af- an layer insulative covering the circuit objects require fixed identification. carrying surface of said having die and To read the identifying information apertures con- therein exposing said first set in a transponder, tained an external reader pads, contact said layer insulative an electromagnetic transmits signal that having 10,000 is a thickness in excess of by transponder received antenna. angstroms; signal generates energy electrical in the plurality a of second contact pads dis- antenna coil which activates integrated posed over discrete surface areas of said circuit. The activated circuit incites a cod- layer, insulative each such area sur- identifying output ed impulse that passes rounding one apertures, of said and each antenna, through back inducing a re- such second pad contact contacting one turn electromagnetic signal. The coded of said first pads set of through corre- a signal by is received reader identi- sponding aperture, said second be- pads fied having been generated by par- ing of relatively a soft metal and having ticular transponder. The relevant claims microns, thickness in excess of 20 said at issue include independent claims pads second being substantially larger 7, 4, 5, and dependent 8, claims and 9. than the corresponding first contact provide: claims Those pads; and 1. An integrated circuit device com- forming means an electromagnetic an-
prising: having tenna wire leads bonded to said
a silicon substrate forming a die hav- pads, second the size and thickness of an ing integrated signal processing cir- said pads second combining with the cuit formed a surface thereof and thickness said layer pro- insulative including a first set pads; of contact tect integrated said during circuit correspond- to their compression bonded to one of wire lead each said bonding of ' ing bonding pads. pads. second said integrated circuit tran- miniature recit- 9.A device as circuit integrated An 4. in claims or device as recited sponder said wire 1 wherein each ed in claim supported by 8 wherein said substrate bonded compression thermal leads is wires. said lead pad. second corresponding its recit- 24-48, 60-62; 4, device as Id., circuit 1. integrated An 11. col. 2-col. col. 6,11. wherein said 6,1. 2; or in claims col. 7-9. ed supported said silicon substrate miniature manufacturing these When wire leads. challenges several technical transponders, tran- integrated circuit 7. A miniature (1) attaching the thin including both arise comprising: device sponder of the small leads antenna wire (2) an having substrate chip providing semiconductor circuit integrated circuit processing integrated signal chip circuit af- integrated for the connected, thereon, circuit integrated said to the antenna and formed it is ter contact of discrete including plurality encapsulated. it is One is- before intercon- facilitating electrical focuses on pads specifically this case sues thereto; and 9 and the claims 5 direct dependent nection antenna to the of the coil wire layer cover- attachment electrically insulative where the wire integrated circuit having ing said for the Anoth- provide support said leads exposing formed therein apertures dependent focuses on inventorship issue layer having er pads, said insulative contact the claimed 10,000 require 4 and which ang- claims in excess a thickness compression to be thermal leads stroms; *6 corresponding pads. to their bonded disposed bonding pads of plurality a layer, with each said insulative said Trovan, over in more detail As set forth through one of extending bonding pad SA, 99-1474, Nos. 99- Ltd. make electrical contact apertures to said 22901, 1488, U.S.App. LEXIS each said pads, of said contact 2000) (non- one with (Fed.Cir. Sept. WL relatively a soft being of bonding pad (“Trovan I”), Trovan opinion) precedential at a of least having thickness metal manufacturing process a designing began area over- having a surface microns transpon miniature production mass of for layer portion a of said insulative lying marketed in to be in the late 1980s ders area of its substantially larger than industry. frequency radio identification aperture; and corresponding businessman, Masin, chosen a was Joseph hav- means electromagnetic transponder project. antenna passive direct to corresponding Philip to wires bonded of Dr. ing lead the services obtained Masin size and bonding pads, the of said Institute of Technolo Troyk (cid:127)ones of the Illinois bonding pads and said development said thickness of for to act as leader gy pro- layer being sufficient Masin hired insulative In the fall of team. integrated said Zirbes of said substrate and and Glen Cross tect Hadden Leonard (“Cross”), said lead engineering of during Technologies circuit bonding pads. and manufac design to said in the wires involved firm circuits, to aid Trovan in integrated of tran- ture integrated circuit A miniature new, transpon of smaller development in claim 7 the as recited sponder device experi- particularly Hadden was thermal are ders. said lead wires wherein packaging integrated enced of cir- any using manufacturer either method for including cuits metal on placing bumps such applications. minute integrated circuit chips to electri- facilitate Masin testified that during his search cal connection thereto. recruiting After in developing assistance the coil wind- Zirbes, Hadden sought exper- Masin ing and attachment process, spoke he ways tise on to automate winding at least three manufacturers who consid- wire to make the antenna coils. Following possibility ered the directly attaching discussions with a number winding of coil the coil integrated antenna to the circuit companies, eventually picked Masin defen- chip. He also met with at least one manu- Sokymat, a dant Swiss manufactur- watch co-defendant, facturer by experience er headed who had directly Ake bond- Gustafson. ing leads from thin wire coils integrated Sokymat agreed Trovan and to work circuit chips using gold bump pads. contact together in optimizing production of Tro- testified, however, Masin further that the transponders. They van’s entered into a rejected manufacturer the idea using Agreement, Nondisclosure which covered direct bonding method in Trovan’s minia- existing Trovan’s intellectual property but transponders ture because the did not cover manufac- Sokymat’s existing intellectu- process al turer’s was not property. agreement integrated The used for provi- had no sion for assignment circuits small proposed invention devel- as those by Tro- oped during the collaboration van. In the summer of Trovan Sok- Although Masin testified that direct ymat began working on the project. bonding idea early was raised among the Gustafson, Hadden, including team team, development the first documentation initially Zirbes considered two automated issue the center of this inventor- methods for connecting chip to the ship debate is a December letter antenna. One method connected the wire which Gustafson faxed to Masin. The let- leads the antenna coil ter describes different attachment meth- through printed circuit board might ods which applied be manu- (“print”) or leadframe bound onto the sur facture of passive miniature transponders. of the integrated face circuit chip gold One method involved print doubled-sided bump contacts. The term “print” attached to the Gustafson noted that *7 case refers to an insulated board onto chip “[w]hen the can be slight- modified to
which a circuit has been etched. See Ru er bigger points, [sic] contacts [sic] the Graf, F. dolf Modem Dictionary Elec of leads can be connected print, pro- without (6th tronics, 1992). ed. A leadframe is vided the gold dots are plated.” Masin the part metal of a pack solid-state device testified, however, that Gustafson’s letter age which achieves electrical connection was not the first time that the direct bond- between the die and parts other of the ing idea was among raised the develop- system of which an integrated system ais ment Specifically, team. Masin testified component. Id. at 551. The other method that he first introduced that idea to Gus- did not use a leadframe and a included in September, tafson and that Gus- direct connection between the wire leads tafson simply repeated Masin’s idea back integrated and the chip circuit via larger to him in gold the letter. bump Gustafson contacts or submitted “megabumps.” Both of describing these attachment affidavit the methods were direct bonding being used manufacturers of related method mentioned in the letter as his “rec- products, parties but the did not know ognition” of and “idea.” Instead, de- method. the December, bonding direct the last week During by which the pursued in a method sign met Chica- team team project of the members n inte- passive of the to the be connected production antenna would discuss go to Hadden, Masin, Troyk, via a This transponders. chip circuit leadframe. grated Trovan Usling, a Gustafson, and Ulrich in- problems several encountered approach in attend- distributor, among those were attaching in the lead- difficulty cluding the during testified Hadden ance. to im- attempt In an chip. to the frame par- to the suggested meeting he Chicago to the of the leadframe the prove bumps large gold the use of ticipants gold the the size of increased chip, Cross Had- antenna wires. bonding of the direct bumps.' indicating a den submitted declaration say- a declaration Gustafson submitted that: in- he learned that Cross ing that when be might that it to [him] occurred [I]t size, bumps, he of the gold creased the integrated circuit take an possible [to] the wire leads he could bond realized that the over gold bump ... and fabricate a an additional directly chip to the bump gold that the pad such aluminum chip. the supporting connection mechanical layer and insulating the out over spread Ma- faxed January Gustafson On this circuitry underneath. In the active “I come back to indicating that sin a letter with provided be tiny chip a could way, directly attaching chip my proposal of the antenna so that bumps, large gold the wires and bond [sic] to the ferrite directly to the be bonded wires could also The letter directly bumps.” to the group to the suggested I chips. circuit of the requested samples my illustrate To could be done. gold enlarged bumps. chips I what had idea, picture a I drew type flip chart large a or on board mind receiving chips, Sok- Shortly after illustrated silicon pad. drawing Switzerland, under ymat employee directly bonded “die” with wires chip or Gustafson, directly bonded direction over spread out bump large gold ato en- from the antenna lead wires my In draw- on the die. circuitry active on the gold bumps larged other mechanical there was no ing, com- transponder produce proceeded integrat- between the means wire leads assembly ponent wherein wires, the antenna chip circuit ed compression thermal antenna were had themselves. I than the wires other inte- directly to the surface bonded that, point least at some mind suffi- leads chip. The wire grated manufacturing process, during chip without ciently supported antenna would be connected dur- structure need for additional only by the wires. manufacturing process. Gustafson ing further indicated declaration Hadden’s Masin and transponder exhibited during the idea rejected the that Gustafson *8 1991, 26, February meeting on Zirbes at a testimony Hadden’s meeting. Chicago the as- shook Gustafson Switzerland. deposi- later during his slightly changed to demon- presence sembly Zirbes’s not that he did he testified tion when sufficient the wire leads were strate sup- fully could coil wire leads the believe the support -to expected he but rather chip, the port a by 25, 1991, filed for the February mechanical On Gustafson provide antenna coil. patent it to the core with the Swiss gluing patent application bonding an a method for claiming office early Following proposals, these Trovan an antenna circuit and the initially pursue Sokymat did and not a as well the product as obtained patents. 10, 1999, and ’410 February On by the method. The application only listed the granted district court summary judg- as an Gustafson inventor. Gustafson later ment that is not a Gustafson co-inventor of used application the Swiss priori- obtain patent ’855 and that Hadden and ty for a patent United application, States Zirbes are not co-inventors of the ’410 which matured into 5,572,- U.S. Patent No. (1) patent. Two issues remained for trial: (“the patent”). ’410 Gustafson did not the effect aof agreement non-disclosure as patent disclose the application or its con- (2) it related to patent the ’410 Zirbes, Hadden, anyone tents to or at Tro- validity of the patent. ’855 That trial com- van. 21, on April menced 1999. During the patent Gustafson’s ’410 concerns manu- trial, the district granted Sokymat’s , facturing technology for coil windings renewed motion judgment for as a matter bonded to electronic circuits in very small of law that neither Hadden nor Zirbes electronic components. patent, ’410 col. were co-inventors of the ’410 patent. The 11.4-6. patent The discloses and claims jury returned a finding verdict the ’855 component process and a producing for patent not invalid in view of prior art. component which include a winding and at parties The then reached filed settle- least one electronic wherein the agreement ment (contingent upon the out- winding and the electronic circuit are elec- come of appeal) which conceded in- trically and mechanically bonded fringement by Sokymat of the patent ’855 leads to leadless metal contact regions on and set the The damages. district court Id., 8,11. the electronic circuit. col. 35-36. thereafter judgment against entered Soky- patent ’410 on' issued November mat SA and infringement Irori 1996. patent. ’855 5, 1991, On June Hadden and Zirbes Sokymat appealed grant summary filed application that matured into judgment that Gustafson was not a co- patent. the ’855 Hadden and Zirbes were inventor of patent. the ’855 Trovan cross- named as patent co-inventors and the was appealed the issue of ownership of the ’410 assigned to Trovan. Gustafson was not but did patent, challenge the determi- included the application aas co-inventor. nation that Hadden and Zirbes were not The ’855 patent January issued on co-inventors of patent. the ’410 This court affirmed district court’s determination On June Trovan filed suit that Trovan did not own the patent ’410 against Sokymat alia, asserting, inter own- but remanded for a determination regard- ership infringement ’410 ing inventorship of the patent. ’855 Tro- patents. and ’855 Sokymat responded, al- I. van leging that was the sole inventor and sole owner patent ’410 remand, On the district court conducted should be declared to be a co-inventor and a bench trial and held that “the concept of co-owner of the patent. Sokymat ’855 fur- the wire support sole is not alleged ther patent the ’855 is invalid requirement patent.” the ’855 Opin- and unenforceable because Gustafson was ion, slip op. at 6. The district court further omitted as a co-inventor with deceptive that to prove held inventorship, Gustafson intent. had to prove “that the requires
In late *9 parties filed thermal compression motions bonding for alone of summary judgment directed to the the wires to the chip provides issues the sole of inventorship and ownership Id., of the support.” ’855 op. at 7. The slip. district
1301 convincing supported by clear and of fact facts findings includes opinion court’s (1) “provide!] to Hess v. Cardiovascu failed Advanced evidence. Gustafson that: he, rather Inc., 976, 979-80, that it was evidence 41 Sys., 106 F.3d sufficient lar to) Hadden, con- (or who (Fed.Cir.1997). in addition 1782, 1785-86 USPQ2d than the antenna connecting directly ceived Analysis B. of Trovan’s megabump wires
lead
December 1989
the-
Sokymat posits two main
appeal,
On
(2)
conceived
Hadden
meeting;”
Chicago
erred in con-
why the district court
ories
(3)
idea; and
Gustaf-
bonding
direct
not entitled to
cluding that
was
Gustafson
did
to Masin
1989 letter
December
son’s
patent.
status on the ’855
co-invéntor
of the direct
conception
a
amount to
First,
argues that because Gus-
Sokymat
Id.,
op. at 4-5.
slip
method.
sole inventor of
was named the
tafson
rul-
court’s
appeals
district
'410
and because the
patent,
’410
a co-inventor
is not
that
ing
subject
“overlapping
have
patents
and ’855
stipulate
parties
patent.
matter,”
is at
it follows that Gustafson
to be a co-
determined
is
if Gustafson
patent.
of the ’855
Sec-
a co-inventor
least
patent,
of the ’855
and co-owner
inventor
ond,
that Gustafson
Sokymat contends
complete
a
de-
have
Sokymat and Irori
the wire
practice
and reduced to
conceived
charges.
infringement
to
fense
of claims
and 9
feature
5
to
pursuant
jurisdiction
has
court
This
Soky-
patent.
argues
Trovan
the ’855
1295(a)(1).
§
28 U.S.C.
flawed and that
theory
legally
is
mat’s first
theory,
the district
Sokymat’s second
on
DISCUSSION
with the
Hadden
correctly credited
court
of Review
A. Standard
the wire
feature.
conception of
trial, we
a bench
appeal from
On
Inventorship Law
for errors
court’s
a district
decision
review
A
if more or less
findings
patent is invalid
clearly erroneous
law and
Am.,
Electron
named.
Tokyo
v.
true
inventors
are
Tegal Corp.
fact.
than
USPQ2d
States,
Inc.,
59
207
257 F.3d
v.
Jamesbury Corp.
United
—
denied,
(Fed.Cir.2001),
1385,
(1975) (in
cert.
1384,
1390
516,
518 F.2d
Ct.Cl.
1297,
U.S. -,
152 L.Ed.2d
122 S.Ct.
inven
the true
more or less than
clusion of
(2002).
clearly
errone
finding
A factual
invalid).
void and
patent
renders
tors
when,
is evidence
“although there
ous
However,
presumed
patent
a
because
reviewing
finding],
factual
support [the
282,
valid,
pre
§
there follows
35 U.S.C.
left with the
evidence is
on the entire
court
inventors on
that the named
sumption
a mistake
and firm conviction
definite
only inventors.
are the true and
patent
v.
States
United
been committed.”
has
980,
USPQ2d at
Hess,
F.3d at
Co.,
364,
333 U.S.
Gypsum
States
United
Moreover,
the extent
1785-86.
(1948).
525,
gether or at the same
“make the
967,
7,
1321,
USPQ2d
996 n.
F.3d
34
1344
contribution,”
type
same
or amount
or
of
(Fed.Cir.1995)
J.,
(Mayer,
concurring),
n. 7
subject
“make a contribution to the
matter
370,
1384,
aff'd, 517
116
U.S.
S.Ct.
134
of
every
of
claim the
“Be
patent.”
Id.
(1996) (“A claim
L.Ed.2d 577
must be con
cause
is
‘[conception
the touchstone of
determining
before
validity just
strued
its
joint
each
inventorship,’
inventor must
it is
deciding
as
first construed before
generally
conception
contribute to the
of
infringement.”). The second step is then
Ethicon,
1460,
at
invention.”
135 F.3d
compare
of
alleged contributions
(alteration
original)
45
at 1548
USPQ2d
subject
each asserted
with the
co-inventor
(citations omitted).
“Conception
of the properly
matter
construed claim to
inventor,
‘formation in the mind of
of a
then determine
whether
correct inven
definite and
idea
the com
permanent
Ethicon,
tors were named.
F.3d
See
135
invention,
plete
it
operative
as
is here
1462, 45USPQ2d
at
at 1548-49.
practice.’” Hybri
after to be
applied
Antibodies, Inc.,
tech Inc. v. Monoclonal
To
clear
meet the
and convinc
1367, 1376,
USPQ 81,
802 F.2d
231
87
ing
proof, alleged
burden
co-inventors
(Fed. Cir.1986) (quoting 1 Robinson on
prove their
must
contribution to the con
(1890)).
Patents 532
“Conception
com
with
ception
more than their own testimo
plete
ordinary
when one of
skill in the art
respecting
ny
the facts
surrounding
could
apparatus
construct the
un
without
claim of derivation or
priority
invention.
duly extensive research
experimenta
or
Symsek,
1187, 1194,
v.
F.2d
Price
988
26
Walters,
411, 415,
tion.” Sewall v.
21 F.3d
USPQ2d
1031,
(Fed.Cir.1993).
1036
1356,
(Fed.Cir.1994) (cit
USPQ2d
30
1359
testimony
Whether
inventor’s
has been
ing
716,
v. Vogel,
Summers
52 C.C.P.A.
sufficiently corroborated is evaluated un
810, 816,
816,
332
USPQ
F.2d
141
820
der a “rule of
analysis.
reason”
Id. at
(1964)). An inventor
may solicit
assis
1195. Under this analysis, “[a]n evaluation
tance of
when perfecting
others
the inven
pertinent
all
evidence must be
so
made
tion
“losing” any patent
rights.
that a sound determination of the credibili
Shatterproof
See
Glass Corp.
Libbey-
v.
ty
[alleged]
story may
inventor’s
be
Co.,
613, 624,
Owens Ford
758 F.2d
225
omitted)
(emphasis
reached.”
Id.
(citing
(Fed.Cir.1985).
USPQ 634,
However,
641
Dines,
353,
Coleman
754 F.2d
224
the basic
ordinary
exercise of
in the
skill
USPQ 857,
(Fed.Cir.1985)).
art,
act,
Corrobo
without an inventive
does not
joint
rating
may
many
make one a
evidence
take
inventor. Fina Oil &
forms.
Ewen,
Chem. Co. v.
123 F.3d
43 Reliable evidence of corroboration prefera
(Fed.Cir.1997).
USPQ2d 1935, 1941
bly comes in
physical
the form of
records
that were
contemporaneously
made
Because co-inventors need not
alleged prior
invention. See Sandt
subject
“make
contribution to the
matter
Tech., Ltd. v.
Metal &
Resco
Plastics
of every claim of the patent,” 35 U.S.C.
1344, 1350-51,
Corp.,
F.3d
USPQ2d
§
inventorship is determined on a
(Fed.Cir.2001)
(“Documentary
Ethicon,
claim-by-claim basis. See
physical
or
evidence that is made contem
F.3d at
USPQ2d
More
poraneously with
over,
process
the inventive
inventorship
analysis, like an in
provides
proof
the most
fringement
reliable
that the
invalidity analysis, begins
or
testimony
first
with a
inventor’s
been
step
construction
each
has
corroborat
asserted
subject
claim
determine the
(citing
ed.”
Trust v.
Woodland
Flowertree
*11
summary judg-
47 The district court held on
Inc., 148 F.3d
Nursery,
(Fed.Cir.1998))).
Cir
USPQ2d
that Hadden
Zirbes could not
ment
and
the inventive
about
evidence
convincing
evidence
prove by
cumstantial
clear
See Knorr
also corroborate.
may
process
they were
to be named co-
entitled
that
1368, 1373, USPQ
Pearson,
F.2d
and, thus,
patent
of the ’410
did
inventors
(“[Sjuffieient
(CCPA 1982)
cir
196, 200
that
presumption
not overcome the
Gustaf-
na
independent
evidence
an
cumstantial
the sole
of the invention
was
inventor
son
rule.”).
satisfy
can
the corroboration
ture
patent.
in that
Trovan did not
claimed
testimony of someone
Additionally, oral
decision,
instead chal-
that
but
appeal
cor
may
alleged inventor
other than the
patent
the
lenged
ownership
the
’410
Price,
F.2d
1195-96.
at
See
roborate.
assignment.
theory
implied
on a
based
mind, we review
background in
that
With
patent,
patent
As with the ’410
the ’855
separately.
Sokymat’s
theories
each
presumption
with the
that Hadden
issued
only
the true and
inven-
the ’855
and Zirbes were
the ’410 Patent on
2. Effect of
Inventorship
pat-
Patent
Issues
described
that
of the invention
tors
summary
The district
held on
ent.
court
Gus-
argues that because
Sokymat first
prove
could not
judgment
Gustafson
inventor of
the sole
was named
tafson
convincing evidence that he
by clear and
the ’410
and because
patent,
’410
the
a co-inventor of
was entitled to be named
subject
“overlapping
have
patents
and ’855
court found that
patent.
’855
This
matter,”
Gustafson is
the
it follows that
patent.
the ’855
of material fact
disputed
a co-inventor of
were
issues
least
there
patent
’410
Sokymat
that the
contends
the case for
on that issue
remanded
circuit as-
winding
to
electronic
directed
inventorship regarding
on the issue of
trial
the wire leads
by bonding
formed
semblies
’855
patent.
bonding pads
winding' directly to
from
to have
Although
presumed
Gustafson is
circuit,
the wire leads
such that
on
invention described
invented
any other me-
the circuit without
does not
patent,
presumption
’410
Because de-
support.
means of
chanical
patent
issued
carry over to
’855
patent
5 and 9 of the ’855
pendent claims
if
Even
and Zirbes.
Hadden
matter,
subject
Sok-
to similar
directed
are
patents
’410
’855
con-
that the
showed
finding
unappealed
ymat argues
matter,” that
“overlapping subject
tain
one else is
court that no
by the district
by clear and
prove
insufficient to
alone is
on the ’410
entitled to co-inventor status
invent-
convincing
that Gustafson
evidence
necessarily
means that Gustafson
patent
patent.
in the ’855
part
ed
of the invention
9 of the ’855
inventor of claims 5 and
inven-
an examination of Gustafson’s
While
Sokymat,
argument,
In this
patent.
may
patent
’410
toward the
tive efforts
court mis-
contends that the district
part,
(cid:127)
whether he
probative regarding
have been
patent.
claims of the ’410
certain
construed
pat-
features of the ’855
certain
invented
the issue that
Sokymat misunderstands
ent,
rely.on Hadden and
Sokymat cannot
following
before the district court
was
to meet their burden of
failure
Zirbes’s
I,
In Trovan
by this court.
remand
inventorship of
proof on the issue of
court’s determi-
affirmed the district
satisfy its burden
patent
’410
was the solé owner
that Gustafson
nation
co-inventor of
is a
prove that Gustafson
the issuance of
patent.
of the ’410
With
issues are dis-
The two
patent.
’855
presumption
patent
’410
came the
in circum-
It
is not inconsistent
tinct.
inventor
was the true
sole
find that
court to
like this for a
patent.
in that
stances
invention described
parties
both
have failed to meet their
relating to a
proof
re-
failure of
regarding
spective burdens.
does not amount to a satis-
faction of
proof
*12
the
of
regarding
burden
Mycogen
cites
Plant
patent.
the ’855
Science,
Co.,
Inc. v. Monsanto
252 F.3d
1306, 1310-12,
1891,
USPQ2d
58
1894
Inventorship
3.
Support
the Wire
(Fed. Cir.2001),
grounds
vacated on other
of the ’855
Feature
Patent
by
Corp.
Festo
Kogyo
Shoketsu Kinzoku
Beyond
overlap theory,
the district
Co.,
-,
Kabushiki
535
122
U.S.
S.Ct.
directly the inventorship
examined
1831,
(2002),
ion circuit device integrated 5. An feature the wire insignificance or wherein claims recited to ther- relevance its incidental except by supported substrate is silicon said bonding: mal leads. said wire recit- device as An fur- require does [T]he 1, 2, 3, or wherein said in claims ed must have by wires nishing support by sup- supported substrate is silicon directly connected been electromag- attached to said port means In bonding alone. compression thermal *13 netic antenna. words, have to would Gustafson other (em 4, 24-:48, 60-66 11. patent, col. ’855 that the things, other among prove, added). language of the plain The phases compres- that thermal requires [patent] in embodiments that some claims indicates to the of the wires bonding alone sion invention, substrate can the silicon of the support. the sole chip provides leads while in by the wire supported be direct construction Without a at 6-7. Id. embodiments, support an alternative other scope 9, meaning and 5 and the of claims Indepen support. the provide can means to which extent claims and the sup of 1 on the issue is silent dent claim the to have contributed may Although silicon substrate. porting the cannot be claims recited those invention particular indicate a claims dependent the turn our attention We thus determined. substrate, the silicon support of type 5 and of claims the construction to dependent the language of plain the type support limit the not claims does language, claim the construe To the For claim. solely type to the listed the claim. with the begin words we not recite claim does because 5 example, Compu Inc. v. Express, Gift, Interactive sup substrate said silicon “wherein Inc., 256 F.3d Serve, leads,” claim wire solely by said ported (Fed.Cir.2001). 1401, 1406-07 USPQ2d circuit integrated an on both read would we language to the claim looking After leads and an solely by said wire supported evidence, intrinsic rest of the the consider wire by the supported circuit integrated and the is, description the written that Thus, means. another leads and Id. if in evidence. history, prosecution claim 5 suggests' language plain to examine first Accordingly, proceed we pro wire leads requires merely Specifically, language. claim disputed for the silicon some vide least to limitations directed claim we look substrate. chip on which silicon substrate no provides rea specification The it. supporting and the method rests ordinary meaning from the to son deviate limitation, claim to that respect With pat The ’855 here. language of the claim 1, 5, pertinent provide, and 6 claims principal describes specification ent’s part: “providing] the invention as object of device com- circuit integrated 1. An directly to fine wires attaching means for prising: requiring circuit without integrated an Id., col. a leadframe structure.” a die hav- use forming silicon substrate pro further specification 11.47-49. cir- processing signal ing it may applications some “[f]or vides that thereof and in a surface formed cuit with the dispense to possible be contact pads; a first including set depend means 18 and entirely upon the ence to show that he in fact had it reduced 14 and support prior wires 16 for practice. subse Id., quent encapsulation.” col. 11.44-47. While Gustafson’s reduction to practice While description the written shows that record, is clear from parties dis- some embodiments can be supported solely pute who first conceived of the invention of leads, by the wire the claim language does claims 5 and 9 where are leads not require that an interpretation. narrow directly connected to provide otherwise, To hold as the urges, dissent support for parties pre- Both would improperly amount to importing a sented evidence the concept of direct- limitation from the specification into the ly bonding the antenna wires to the inte- claims. See Corp. Laitram Corp., NEC grated by project was discussed USPQ2d 1199, F.3d prior members reducing the invention to (Fed. Cir.1998) (“[A] may practice. example, For Masin testified import limitations from the written de Sokymat, before he hired he discussed claims”). Thus, scription into the we hold the direct bonding idea with at least one that claims require 5 and 9 that the wire *14 manufacturer who had experience directly provide leads at some support least for the bonding wire leads to silicon substrate but not necessarily the chips using gold bump pads, contact but sole support. With proper the claim con never with such small devices as the tran- place, struction in next we examine wheth sponders in this case. Gustafson’s Decem- er Gustafson is to entitled co-inventor sta ber fax to Masin connecting discusses tus regarding the invention claimed in the wires to the chip without an interven- claims 5 and 9. ing print. leadframe or Hadden testified It is undisputed that an integrated cir that he discussed the direct bonding con- cuit chip supported solely by the end wires cept two weeks later at the Chicago meet- of a coil was first to practice reduced ing. All of testimony, while relevant Gustafson. While Trovan argues that it to by Sokymat claim that Gustafson was in fact a Sokymat employee other than was the first to conceive of the direct Gustafson who first reduced it practice, to method, bonding point is not on with re- only the evidence of record on subject the spect to support the wire feature of claims shows that Sokymat the employee bonded 5 and 9. The invention embodied in claims the wire leads to gold bumps the at Gus- 5 and 9 involves connecting very thin wire tafson’s direction. Using the services of leads to a chip that is approximately one Sokymat other employees to bond the wire square millimeter with the providing loires leads to gold the bumps does not change at least some the support chip. for Gustafson, the fact that rather than Had- Zirbes, Trovan den blurs two or the distinct concepts was the first to reduce the (1) directly bonding invention to practice. See wire leads to chip the Shatterproof (2) Glass, 624, and providing 758 F.2d at USPQ at least support at some (“An ‘may services, inventor the chip by ideas, use wire leads. It possible is and aid of process directly others to perfect bond the wire leads to an inte- ing his invention grated losing right his circuit chip without to those wire ” patent.’ (quoting serving Hobbs v. leads support to United in any Comm’n, States Atomic Energy way. For F.2d Hadden example, testified that 849, 864, 713, (5th 171 USPQ at point, Cir. one he considered gluing sil- 1971))). Gustafson took the' wire-sup icon substrate to the ferrite core. When ported chip and it in shook pres- Zirbes’s other used, methods support are December 1989 Chica- circuit at the grated may or wire leads hair human than smaller op. at 3-4. meeting. Opinion, slip for the support go additional provide not may not dis- are rele- findings did factual witnesses those two Because some While and bonding the direct claims that Gustafson Sokymat’s between tinguish vant features, inventorship support bonding thermal wire the direct and invented is difficult feature support wire features, trail on they do not bonding compression testified example, Masin For to follow. of claims support feature to the wire speak connect the “direct he discussed bonding is compression Thermal 5 and 9. talking prior others methodology” feature claim indeed a claimed used Sokymat. Masin with Gustafson that Gustafson also contended connect method- “direct phrase, same However, of that feature. inventor Hadden revealed what ology,” describe compres- require not thermal 5 does claim to de- meeting also Chicago multiple depen- 5 is a bonding. Claim sion on demonstrated what Gustafson scribe claims upon depends claim dent We in Switzerland. February bonding compression thermal or 4. Since whether this record from discern cannot 4, findings of claim only a limitation methodology” refers connect “direct address feature do not to that relevant bonding or the direct concept wire wire conceived of the whether Gustafson blurring of of this concept. Because Likewise, direct because support feature. sup- wire bonding and concepts of direct are distinct fea- in- fact-finding is court’s the district port, tures, did finding contribut- whether Gustafson on conclusive neces- bonding does not of direct conceive claims 5 feature of the wire toed *15 that Gustafson to the conclusion sarily lead read completely have to 9 and seems support. wire not conceive of did of claims out requirement support wire the and 9.1 by the district findings Other of make a number court did district never wire was that show court limi- claim other findings regarding factual into the inquiry factual focus of the the court the example, district For tations. the dis example, For inventorship issue. clear present did not Gustafson held that held that trict concept the that convincing evidence clear and has not shown Gustafson to compression using thermal of the that convincing evidence connecting directly a means for provide the ’855 and 9 of features of claims the antenna circuit and the the ob- more than was anything as claimed support, additional to reduced idea of servation Hadden’s originally conceived was patent, the instance, in his Febru- For practice.... suffi- provided Nor by him. has Masin, not- Troyk to ary letter he, than it was rather that cient evidence to “initially refused ed that to) conceived (or Hadden who in addition directly con- of approach” the consider lead connecting the antenna directly of the wires. necting inte- of Trovan’s the megabump wire terms meaning of the claim standing of parties correctly that "the *16 it possible how was bond to the wires Sokymat court, to this argued Trovan’s the chip. onto argument analogous is to finding an 1875 Q. youDo recall he drew what to dem- picture of a carriage horse-drawn without that point? onstrate nearby a horse and describing drawing A. It was—he draw the chips, as a and on conception of the automobile. the two holes he gold a bump had Trovan —it presented from at testimony looks like a mushroom—and direct con- least three to witnesses corroborate Had- chip tacted to the layers. However, conception. den’s each witness’s added). (emphases testimony relates to the Like Masin’s testimo- bonding direct ny, proffered feature than rather the wire evidence corrobora- support fea- ture. tion focuses on example, For bonding Masin’s direct declaration feature provided: rather than the wire support feature.
57. During the meeting, Leonard Had-
In support of its finding that Gustafson
den
suggested
conceived of and
way
in
did not conceive of the wire support fea-
which the
ture,
antenna wires could be direct-
the district court
on testimony
relied
ly bonded to
tiny integrated
Troyk
circuit
from
saying that Gustafson did not
chips. He illustrated his idea on a want to consider the
approach
“directly
board or large drawing pad.
connecting the
Again,
wires.”
because di-
that
contributed
to other
are distinct
Gustafson
and wire
rect
invention,
aspects
including
claimed
in-
features,
testimony does
Troyk’s
compression bonding
thermal
feature
as to whether Gustaf-
the fact-finder
form
4 and 8.
of claims
feature.
son conceived
Well,
Masin’s,
Q.
Mr.
demon-
Furthermore,
Usling’s,
Okay.
or
Gustafson’s
none
knew,
stration,
you
far as
he
at least as
to corrobora-
testimony amounted
Troyk’s
assembly
had an
where the wires were
Had-
contemporaneously
made
tion
Tech.,
chip
attached to the
me-
conception. See Sandt
alleged
den’s
connection;
right?
chanical
isn’t that
1350-51, USPQ2d at 1094.
at
264 F.3d
n
with the naked
A. As far as I could see
that
concluded
court also
The district
eye.
clear
presented
has not
Sokymat
Q. Okay.
you
to that
hadn’t
prior
And
that it was Gustaf-
convincing evidence
anybody produce
assembly
such an
seen
Trovan,
son, rather than inventors from
Gustafson;
than Mr..
is that cor-
other
claimed
of the idea
had conceived
who
rect?
not shown
Sokymat has
patent.
the ’855
A. That’s-correct.
more than
anything
did
that Gustafson
Q.
did Mr.
right.
your opinion,
All
In
megabump chip
the wires to the
connect
anything
contribute
Gustafson
Trovan,
at Trovan’s
by
provided
subject matter
that’s disclosed and
direction.
claimed
the 855 Patent?
In addition
Opinion,
slip
4-5.
op.
Well, I
con-
A.
believe Mr. Gustafson
that the
our conclusion
supporting
further
previous knowledge
tributed his
of ther-
out the wire
court read
district
circuit
compression bonding
mal
from
pas-
5 and
the above
feature of claims
compression bonding
boards
thermal
clearly
erroneous
sage demonstrates
semiconductor.,
onto the
did,
fact, show
finding of fact.
Q.
Directly onto
semiconductor?
something “more than
did
that Gustafson
A. Yes.
megabump
wires to the
connect[ing] the
you
Q. Okay.
something
that’s
So
proved
it
by Trovan”
chip provided
did contribute to this
feel Mr. Gustafson
actually
transpon-
constructed
Gustafson
invention,
right?
provided sup-
in which the wire leads
der
A. Yes.
Moreover, it
undis-
for the
port
alone is
practice
reduction to
Gustafson’s
that such an
puted
had a definite and
evidence
a coil was
by the end wires of
supported
opera-
complete
idea of the
permanent
Al-
practice
reduced to
Gustafson.
first
4, 5, 8,
9, the
of claims
tive invention
correctly held
though the district
proof
of which amounted
demonstration
*17
wire
require
that the
that claim 5 does
prac-
conception
as well as reduction
chip,
for the
provide
leads
the sole
9, no
time.
to claims 5 and
by
tice
As
claim
that a feature of
appreciate
it did not
to an earli-
points
of record
other evidence
provide at least
that the wire leads
5 is
by Hadden or Zirbes
conception
er
the wire-
took
support. Gustafson
some
feature.
recited wire
pres-
in Zirbes’s
chip, shook it
supported
at
ence,
provided
the wire
us to reverse
proved
and
While
asks
inventorship,
on
judgment
for the
Zirbes
court’s
least some
district
on the record
we are unable to do so
only acknowledged Gustafson’s
himself not
fo-
court did not
us.2 The district
suggested
also
before
practice,
but
reduction
provide
If,
the "sole
require that the wire leads
urges,
5 and 9
claims
dissent
cus
the wire support
on
feature
claims 5
yet
because
district court has
to con-
and
and
completely
did not
address the
sider the
inventorship question
light
compression bonding
thermal
feature of of our
claim
proper
construction. This is
claims 4 and 8. Without
true, however,
the fact-finder
only if the district court’s
distinguishing between the
bonding
direct
(purportedly) incorrect claim construction
features,
and wire support
we are unable was not harmless error. Because I believe
to discern from the current record wheth-
was,
that it
I would affirm.
er Gustafson is entitled to
sta-
co-inventor
The district
originally
granted
tus. Consequently, we vacate the district
summary judgment that inventorship was
holding
court’s
that Gustafson is not enti-
correct on the face of the ’410 and ’855
tled to co-inventor status of
’855patent
patents. After a seven-day trial in which
and remand the case to the district court
jury
valid,
found the
patent
’855
for a determination of whether
or
Hadden
defendants
infringement
conceded
ap
Zirbes first conceived of the wire support
pealed. We reversed the trial court’s
feature of claims 5 and 9 or whether Gus- grant of summary judgment
respect
sufficiently
tafson
contributed to the con-
patent
to the ’855
for anoth
remanded
ception of claims 5 and 9 to be deemed a
Trovan,
SA,
Ltd. v. Sokymat
er trial.
Ethicon,
co-inventor. See
feature of claims 4 and 8. If the district in chips antennae, to attach signifi awas court determines that Gustafson is entitled contribution, cant inventive and not one for to co-inventor status and further finds that which it could be said that a reasonable Gustafson was omitted deceptive jury would not find that limitation part, intention on his it should order that represented anything more appli than the by be so corrected the U.S. cation knowledge already accumulated.” Office, Patent and Trademark and the Id. remand, *15. On the case was tried complaint should be with preju- dismissed court, which again—that found— dice. Gustafson had not carried his burden of VACATEDAND REMANDED proving by clear and convincing evidence that he was a co-inventor of the ’855 pat Dissenting opinion filed Circuit ent. Judge MICHEL. majority The now remands yet the case MICHEL, Judge, Circuit dissenting. a second time primarily it because views majority believes that we must re- concepts of direct this case mand proceedings further support as distinct concepts. Ante at 1307 substrate, support" lor the silicon we would some of Trovan's evidence of direct connec- *18 be more inclined to reverse than va- probative rather tion conception is of of the wire The cate. record is evidence, devoid support of evidence feature. Much of that how- ever, that Hadden or Zirbes of the probative conceived "sole support” is of "sole fea- support" prior Thus, feature to Gustafson’s undis- requires ture. the case further factual puted practice. reduction to While the record development light proper in of the claim con- unclear, on this issue possible is it that is struction. winding the are di- circuit and concepts eleetronic (“Because blurring of the of this n solely the mechanically connected support, rectly and wire and direct of n fact-finding is inconclusive winding being wires court’s the ends the district to the contributed Gustafson on whether to the leadless metal directly connected 9 and claims 5 and feature of support wire integrated of the circuit.” regions contact the read out completely have seems expert, that And it is defendants’ evident out of requirement feature support wire Dr. also understood Eugene Rymaszewski, 9”). record review of the My claims 5 and and of direct connect wire concept the conclusion. support this does not thing: “The Gus- to be the same support matter, successfully I am not at eliminates the patent initial all tafson As an improper- frame,’ wire that the district connects the leads ‘lead convinced specification the claims. ly directly pads construed to the metal contact or leads it applications, some' that “[f]or that chip, teaches so the on the sup- the dispense with possible may be me- only connection is the leads/chip to. entirely the depend, upon port means chip the between chanical connection en- prior to support subsequent wires for integrated circuit winding and the the 44- col. lines patent, capsulation.” to a mechanically chip is not fastened sup- for “sole requirement the 47. I find added). (emphasis core.” ferrito reading consequence natural port” testimony evident from the is likewise It light 9 in of this dependent claims 5 Hadden, Masin, that the and Zirbes nothing in the record There is disclosure. understanding. this plaintiffs shared lead the hair-thin suggests us that before the incident about in questioned When support; or additional partial wires provide shook the as- Gustafson Switzerland when the provide sole either the wires its firmness even sembly to demonstrate at all.3 We no provide or they support, were the sole though the wires question to resolve decide this need not as follows: Masin testified however, because appeal, present Well, you time that Q: that the first is in the case present majority’s premise assembly with a one-millim- had seen an are wire support connect and the direct were where the wires con- chip eter size The record concepts is incorrect. distinct bumps view, directly gold to the clear, parties used nected my chip? same supporting mean one and the else nothing terms to thing.4 anybody could have A: don’t think [I] so— n before, Joseph facsimile it January 1991 seen
In a Masin, parties suggests Gustafson attaching proposal of [his] back to “come had Q: this no one created But before and bond directly to the ferrite directly wires assembly with the his bumps.”. In wires direct chip, gold bumps bonded summary judg- declaration right? chip; is that this size least ment, the ’410 describes Yes. disclosing an invention “wherein
as A: and 9" of claims 5 than patent Figure tion of limitation depicted '855 Notably, 3. completely terminology, part are not a of and the wires are direct connection patent, support means 18. separate from '855 been attorney argument; we have di- merely col. lines 38-44. indicating nothing in the record rected to below, despite ever taken position was such sup- Although that wire appellants submit so. ample opportunity to do descrip- a more accurate shorthand port "is *19 testimony The virtually Zirbes is identi- Although majority may be in correct cal: general, the evidence in demonstrates that
Q: Okay. Now I think earlier we talked inventorship this case the dispute is fo- a little bit about the fact that Mr. Gus- cused on a direct connect method wherein in tafson’s demonstration Switzerland the wires do provide the sole support. you was the first time had seen a coil (“[I] Compare Gustafson Aff. at J.A. 2117 winding directly chip; connected-to a developed process and a tool to enable that correct? the wire leads of a winding coil to be A: is correct. [That] directly connected ... with-no other me- Q: right. you All Do any have reason chanical connection between the winding to believe that Mr. Gustafson wasn’t the and the chip.”) with Hadden Dep. J.A. reduce, person first to conceive of and (responding, when if pat- asked ’855 reduce the direct prac- idea to claim 5 ent referred to direct connect and tice? support, sole that exactly what I “[t]hat’s A: I don’t any have provid- reason —he wrote on the in Chicago board meeting saw, sample ed first I I didn’t hear of 1989”). in anybody doing else it out in the indus- it, With this evidence before the district try. court found that Gustafson proven had not Finally, testimony of Hadden confirms by clear convincing evidence that he he had the same understanding: had conceived of the direct connect meth- Q: can [Y]ou look at as much of the od. The district court likewise concluded you [’855] need to to answer presented “Gustafson has not clear questions, of these calling but I’m convincing evidence that the concept your attention to column 4 beginning on of using compression thermal bonding to line 60 which is claim 5 and it talks provide a means directly for connecting an “integrated about circuit device as [,] ... as claimed in the patent, was 1, 2, 3, recited claims or 4 wherein conceived him originally.” Overlooking by said silicon supported by substrate is fact, finding majority remands leads,” said wire you do see that? for the district court “to determine wheth- A: Yes. er Gustafson first conceived of the thermal . Q: Okay. Is referring to a struc- compression bonding feature of claims ture where the wires are bonded directly 8,” ante at without explaining chip to the and the chip is essentially any deficiency in the trial judg- court’s suspended in air as we talked about ment. before? Yes, A: at some point assembly, only judgments, course, We review yes. opinions. See v. Aeroquip Stratoflex added). (Fed.Cir.1983). Corp., 713 F.2d (emphasis case, In this the district court found that
In light of this testimony and the record Gustafson had failed to by overcome clear whole, as a I implausible view as the con- convincing evidence the presumption clusion drawn majority “[i]t —that inventorship correct patent. of the ’855 possible to directly bond the wire leads to majority remands this case a second integrated circuit chip without those time, however, wire leads for further serving development any way” -just that I testified, because record believe is sufficiently Hadden com- — example, for plete “he considered us to affirm the gluing judgment. In the silicon substrate view, my ferrite core.” practical effect of our deci- *20 bite at a second give is to sion (even assuming an errone- when apple construction) the district claim
ous had the defendants believed
plainly time. the first burden carried their
Therefore, I dissent. respectfully INC., Plaintiff-Appellee,
TELEFLEX, CORP., AMERICA
FICOSA NORTH S.A., Cables, and Ficosa North
Fico C.V., Defendants-Ap De
America S.A.
pellants.
No. 01-1372. Appeals, Court
United States
Federal Circuit. 21, 2002.
Decided June Rehearing En Banc
Rehearing 30, 2002. Aug.
Denied notes The dissent regard- support] inquiry a factual proceeds and wire connect and then [direct used the thing.” Post the same the dis- specific terms to mean one issues. Because ing fact However, understanding parties' at 1311. began with parties and the trict court trump construed does not of the invention resulting fact- backdrop, legal erroneous proper inven- terms. A meaning of claim finding is inconclusive. in this case under- begins torship analysis common Opinion, op. at slip analysis 4-5. That does not focus on the wire support feature. 59. Mr. drawing Hadden’s did not show The district court’s reference to Hadden’s any other connection between the idea is a reference to drawing Hadden’s at and the antenna coil other than the Chicago meeting late December wires being directly connected 1989. Trovan claims that Hadden first chip. conceived “directly and solely connect- 60. Mr. Hadden indicated that directly ing an integrated circuit with a megabump bonding antenna large gold wires this to antenna at wires” meeting. Chicago bump over the circuitry active would Hadden testified that he on a flip drew eliminate the need for a leadframe and chart a chip showing the enlarged pads therefore reduce production costs. circuitry over active and the direct connec- added). (emphases Masin’s testimony pro- tion enlarged between the pads and the vides no corroboration the wire support antenna wires. Hadden further testified feature. Masin’s declaration in- focuses drawing his did not depict a method of stead on the direct bonding feature. supporting That drawing, how- say While Masin does that the drawing did ever, longer no exists and is not part of the not any show other connection between the record. While some Trovan witnesses chip and the antenna coil other than the present at Chicago meeting testified leads, wire testimony declaration does purposes litigation that Hadden go as far as saying wire leads made a drawing the Chicago meeting, provided or were capable even any sort the record devoid corroboration of mechanical support for the chip. just It of Hadden’s alleged conception that is con- says that no support was shown on the temporaneous with Hadden’s alleged con- drawing. witness, Another Ulrich Usling, Moreover, ception. Hadden’s drawing gave the following deposition testimony re- showing presence neither the nor the ab- garding the Chicago meeting: sence of mechanical is not the Q. What did Len draw? Hadden same as a drawing showing A. He Sokymat, Gustafson, showed provide any support leads for the chip. As