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United States Court of Appeals for the Federal Circuit
August 22, 2005, Decided
[***1277] [*1371] SCHALL, Circuit Judge.
MEMC Electronic Materials, Inc. ("MEMC") is the assignee of record of U.S. Patent No. 5,919,302 (the " '302 patent"). It brought suit in the United States District Court for the Northern District of California against Mitsubishi Materials Silicon Corporation, Mitsubishi Silicon America Corporation, Sumitomo Mitsubishi Silicon Corporation ("SUMCO Corp. "), Sumco USA Corporation ("SUMCO USA"), and Sumco USA [**2] Sales Corporation ("SUMCO USA Sales") (collectively, "defendants" or "SUMCO"). In its suit, MEMC alleged direct infringement of the '302 patent under 35 U.S.C. § 271(a) and inducement of infringement of the patent under 35 U.S.C. § 271(b). The district court eventually granted summary judgment in favor of defendants on the ground that, as a matter of law, they could not be liable for either direct infringement or inducement of infringement. MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon Corp., No. 4:01-CV-04925 (N.D. Cal. Mar. 16, 2004) ("Summary Judgment Order"). As far as direct infringement was concerned, the court ruled that there was no evidence of sales or offers for sale of accused products in the United States. As far as inducement of infringement was concerned, the court ruled that MEMC had failed to produce any evidence of inducement of infringement by defendants. MEMC now appeals that decision. At the same time, defendants cross-appeal the district court's denial of their motion for attorney's fees, expert witness fees, and expenses.
We see no error in the grant of summary judgment with respect to direct [**3] infringement. However, in view of what we think are genuine issues of material fact, we hold the district court did err in granting summary judgment with respect to inducement of infringement. Accordingly, with respect to MEMC's appeal, the judgment of the district court is affirmed-in-part and reversed-in-part and the case is remanded to the district court for further proceedings. [***1278] On the cross-appeal, we affirm the denial of defendants' request for attorney's fees.
MEMC is a supplier of silicon wafers to the semiconductor industry. The '302 patent, entitled "Low Defect Density Vacancy Dominated Silicon," relates to the preparation of semiconductor grade single crystal silicon, which is used, in wafer form, in the manufacture of electronic components such as integrated circuits. '302 patent col. 1, ll. 9-16. Prior art methods of manufacturing single crystal silicon often resulted in crystals containing large quantities of agglomerated intrinsic point defects. Id. col. 1, ll. 18-55. These defects can severely impact the yield potential of silicon wafers in complex and highly integrated circuits. Id. col. 1, ll. 53-55. The patent discloses a method of preparing single crystal [**4] silicon that is substantially free of agglomerated intrinsic point defects. Specifically, the '302 patent discloses a process specifying initial growth conditions and the temperature range of the manufacturing process. Id. col. 3, l. 62 - col. 4, l. 14.
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420 F.3d 1369 *; 2005 U.S. App. LEXIS 17956 **; 76 U.S.P.Q.2D (BNA) 1276 ***
MEMC ELECTRONIC MATERIALS, INC., Plaintiff-Appellant, v. MITSUBISHI MATERIALS SILICON CORPORATION, MITSUBISHI SILICON AMERICA CORPORATION, SUMITOMO MITSUBISHI SILICON CORPORATION (also known as Sumco), SUMCO USA CORPORATION (also known as Sumco USA), and SUMCO USA SALES CORPORATION (also known as Sumco USA Sales), Defendants-Cross Appellants.
Subsequent History: Motion granted by, On remand at MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon Corp., 2006 U.S. Dist. LEXIS 9241 (N.D. Cal., Feb. 24, 2006)
Summary judgment granted, in part, summary judgment denied, in part by, Objection sustained by, in part, Objection overruled by, in part, On remand at MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon Corp., 2006 U.S. Dist. LEXIS 9353 (N.D. Cal., Feb. 24, 2006)
Prior History: [**1] Appealed from: United States District Court for the Northern District of California. Judge Saundra Brown Armstrong.
MEMC Elec. Materials v. Mitsubishi Materials Silicon Corp., 2004 U.S. Dist. LEXIS 29332 (N.D. Cal., Apr. 22, 2004)
Disposition: AFFIRMED-IN-PART, REVERSED-IN-PART, and REMANDED.
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