1. Whether View Engineering, Inc. ("View") infringed Robotic Vision System Inc.'s ("RSVI") patent where View's method did not perform all of the manufacturing steps implied in the independent claim.
2. Whether RSVI's patent is invalid for obviousness based on a combination of the prior art of the ball-top coplanarity measurement methods and a letter addressed to the patent inventor.
1. Yes. A court looks first to the intrinsic evidence to aid its claim construction which, in this case, supported RSVI's claims of infringement.
2. No. The district court did not commit clear error when it determined that RSVI's patent would not have been obvious to a person having ordinary skill in the art.
RSVI, patent holder of U.S. Patent No. 5, 465, 152 (" the '152 patent") brought a patent infringement suit against View. RSVI manufactures and sells machines to perform inspections of integrated circuit devices. View also manufactured and sold inspection equipment. The '152 patent describes a method of measuring ball-top coplanarity by using index pads on the substrate. View manufactured a machine that also measured coplanarity but does not fabricate or manufacture index pads. It claimed that the independent claim in RSVI's patent- which included the words "providing", "correlating" "disposing" and "restricting"- requires manufacture and fabrication of index pads and not simply the selection of pre-existing signal pads as index pads. Despite View's defenses, the district court found that View infringed on RSVI's patent, and held that the '152 patent would not have been obvious to one of ordinary skill in the art.
The Court of Appeals for the Federal Circuit affirmed. In reviewing the district court's claim construction de novo, the Court first looked at the intrinsic evidence (i.e. the claims, written description, and the prosecution history). It held that the written description and plain language clearly support examples of the invention in which the claim elements may be satisfied by selecting a preexisting signal pad as an index pad. Moreover, the Court rejected View's argument that the '152 patent contained dependent claims containing language that tended to support its claim by noting that dependent claims necessarily incorporate all the limitations of the independent claim. The Court affirmed the district court's finding of infringement since it found no reversible error in the district court's application of the claims to the method.
View also claimed on appeal that RSVI's invention was unpatentable on the grounds of obviousness. Pointing to prior art ball-top coplanarity measurement methods and a letter from one Don Banks to the inventor of the '152 patent, View argued that one of ordinary skill in the art would have found RSVI's invention obvious. The Court concluded that the district court did not clearly err in its factual determinations and rejected View's obviousness defense.
Prepared by the liibulletin-patent Editorial Board.