Proskauer Rose LLP One International Place Boston, MA 02110-2600
`
`Steven M. Bauer
`Member of the Firm
`d 617.526.9700
`f 617.526.9899
`sbauer@proskauer.com
`www.proskauer.com
`
`January 7, 2013
`
`
`
`The Honorable Thomas B. Pender
`Administrative Law Judge
`U.S. International Trade Commission
`500 E Street SW, Room 317
`Washington, DC 20436
`
`Re:
`
`
`Certain Silicon Microphone Packages and Products Containing Same
`Inv. No. 337-TA-825
`
`Dear Judge Pender:
`
`I write on behalf of Respondents in connection with the above-referenced investigation,
`
`in response to Knowles’ January 3, 2013, citation of “newly issued” authority, and to bring
`additional “newly issued” authority to your attention, as well.
`
`First, it is not clear what relevance Knowles’ cited OSRAM case has here. In OSRAM,
`
`the Federal Circuit found the expert’s testimony relevant because it created a factual dispute
`regarding the prior art’s disclosure, precluding a grant of summary judgment of anticipation. The
`case has nothing to do with the enablement issues on which Dr. Egolf testified. Indeed, Dr.
`Egolf here did not testify as to whether Halteren disclosed all of the elements of the ‘049 Patent
`to “one of ordinary skill in the [package] field,” but instead testified as a microphone expert on
`the issue of whether the disclosure would “enable” a commercially viable microphone. Indeed,
`the one relevant citation in OSRAM is footnote 2, which notes “that which would literally
`infringe if later anticipates if earlier.” Can there be any question that Halteren would infringe, if
`made -- whether or not it was made in commercial quantities?
`
`In fact, there are three other recent Federal Circuit cases that merit being brought to your
`
`attention, because they are directly relevant to the issues before you. Respondents therefore
`respectfully direct the Administrative Law Judge to the following recent Federal Circuit cases
`(all attached hereto):
`
`The Fox Group, Inc. v. Cree, Inc. 700 F.3d 1300 (Fed. Cir. Nov. 28, 2012), and in
`1.
`particular, the portion at 1306-07, again confirming that enablement of a prior art reference only
`requires enough disclosure to “enable one skilled in the art to make the invention,” and share
`“the benefit of the knowledge of the invention with the public….” (emphasis added);
`
`Norgren Inc. v. International Trade Commission, 699 F.3d 1317, 1322 (Fed. Cir.
`2.
`
`Nov. 14, 2012), again confirming “the combination of familiar elements according to known
`methods is likely obvious when it does no more than yield predictable results;” and
`
`Stored Valued Solutions, Inc., v. Card Activation Technologies, Inc., No. 2011-
`
`3.
`1528, 2012 WL 6097674 (Fed. Cir. Dec. 10, 2012), confirming at p. *6, that “if the claimed
`
`Beijing | Boca Raton | Boston | Chicago | Hong Kong | London | Los Angeles | New Orleans | New York | Newark | Paris | São Paulo | Washington, DC
`
`
`
`
`
`

`
`
`
`The Honorable Thomas B. Pender
`January 7, 2013
`Page 2
`
`invention does not appear in the specification…the claim…fails regardless whether one of
`skilled in the art could make or use the invention,” and at p.*8, that Section 112 “demands that
`the written description ‘show that the inventor actually invented the claimed invention,’” citing
`Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1348, 1351 (Fed. Cir. 2010) (en
`banc).
`
`Yours truly,
`
`/s/ Steven M. Bauer
`
`Steven M. Bauer
`
`Enclosures
`cc: all counsel of record (by email)
`
`
`
`
`
`

`
`700 F.3d 1300
`(Cite as: 700 F.3d 1300)
`
`Page 1
`
`United States Court of Appeals,
`Federal Circuit.
`The FOX GROUP, INC., Plaintiff–Appellant,
`v.
`CREE, INC., Defendant–Appellee.
`
`No. 2011–1576.
`Nov. 28, 2012.
`
`Background: Patentee brought action alleging in-
`fringement of its patents relating to growth of low
`defect silicon carbide (SiC) through seeded sublim-
`ation. The United States District Court for the East-
`ern District of Virginia, Rebecca Beach Smith, J.,
`819 F.Supp.2d 524, granted defendant's motion for
`summary judgment of invalidity of patent claims,
`and patentee appealed.
`
`Holdings: The Court of Appeals, Wallach, Circuit
`Judge, held that:
`(1) alleged infringer established that it had reduced
`the invention to practice prior to patentee's critical
`date, and therefore was prior inventor;
`(2) alleged infringer made showing that it had not
`suppressed or concealed its invention; and
`(3) district court did not have jurisdiction over un-
`asserted patent claims.
`
`Affirmed in part, and vacated in part.
`
`O'Malley, Circuit Judge, filed opinion concur-
`ring-in-part, dissenting-in-part.
`
`West Headnotes
`
`[1] Patents 291
`
`90(1)
`
`291 Patents
`291III Persons Entitled to Patents
`291k90 Original Inventors and Priority
`Between Inventors
`291k90(1) k. In general. Most Cited Cases
`
`If a patentee's invention has been made by an-
`other, prior inventor who has not abandoned, sup-
`pressed, or concealed the invention, patent is inval-
`idated. 35 U.S.C.A. § 102(g).
`
`[2] Patents 291
`
`90(2)
`
`291 Patents
`291III Persons Entitled to Patents
`291k90 Original Inventors and Priority
`Between Inventors
`291k90(2) k. Necessity for diligence.
`Most Cited Cases
`
`Patents 291
`
`90(5)
`
`291 Patents
`291III Persons Entitled to Patents
`291k90 Original Inventors and Priority
`Between Inventors
`291k90(5) k. Reduction of invention to
`practice in general. Most Cited Cases
`Patent challenger has two ways to prove that it
`was the prior inventor: (1) it reduced its invention
`to practice first or (2) it was the first party to con-
`ceive of the invention and then exercised reason-
`able diligence in reducing that invention to practice.
`35 U.S.C.A. § 102(g).
`
`[3] Patents 291
`
`90(5)
`
`291 Patents
`291III Persons Entitled to Patents
`291k90 Original Inventors and Priority
`Between Inventors
`291k90(5) k. Reduction of invention to
`practice in general. Most Cited Cases
`To invalidate patent, an alleged prior inventor
`needs to prove conception only if the alleged prior
`inventor had not successfully reduced the invention
`to practice before the critical date of the patent-
`at-issue; test for establishing reduction to practice
`requires that the prior inventor to have (1) construc-
`ted an embodiment or performed a process that met
`all the claim limitations and (2) determined that the
`
`© 2013 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`
`700 F.3d 1300
`(Cite as: 700 F.3d 1300)
`
`invention would work for its intended purpose. 35
`U.S.C.A. § 102(g).
`
`[4] Patents 291
`
`91(4)
`
`291 Patents
`291III Persons Entitled to Patents
`291k91 Evidence as to Originality and Prior-
`
`ity
`
`291k91(4) k. Weight and sufficiency in
`particular cases. Most Cited Cases
`it had re-
`Alleged infringer established that
`duced the invention to practice prior to patentee's
`critical date, and therefore was prior inventor of
`patented invention relating to growth of low defect
`silicon carbide (SiC) through seeded sublimation;
`alleged infringer appreciated prior to patentee's crit-
`ical date that its newly grown SiC material met
`uniquely low defect density thresholds, that appre-
`ciation was based on objective evidence that cor-
`roborated its public comments concerning that
`quality, and there was no requirement for it to have
`done so repeatedly. 35 U.S.C.A. § 102(g).
`
`[5] Patents 291
`
`90(1)
`
`291 Patents
`291III Persons Entitled to Patents
`291k90 Original Inventors and Priority
`Between Inventors
`291k90(1) k. In general. Most Cited Cases
`Alleged infringer, which established that it had
`reduced invention to practice prior to patentee's
`critical date, promptly and publicly disclosed its
`findings concerning the low defect properties of the
`patented silicon carbide (SiC) material through a
`presentation at international conference and a pub-
`lished paper on the subject; consequently, alleged
`infringer made showing that it had not suppressed
`or concealed its invention, and therefore that patent
`was subject to invalidation. 35 U.S.C.A. § 102(g).
`
`[6] Patents 291
`
`90(1)
`
`291 Patents
`291III Persons Entitled to Patents
`
`Page 2
`
`291k90 Original Inventors and Priority
`Between Inventors
`291k90(1) k. In general. Most Cited Cases
`A party seeking to invalidate patent on ground
`that it was prior inventor is under no obligation to
`file a patent application; commercialization can be
`relied upon to prove public disclosure. 35 U.S.C.A.
`§ 102(g).
`
`[7] Patents 291
`
`288(1)
`
`291 Patents
`291XII Infringement
`291XII(B) Actions
`291k288 Jurisdiction
`291k288(1) k. In general. Most Cited
`
`Cases
`In patent cases, the existence of a case or con-
`troversy must be evaluated on a claim-by-claim
`basis; jurisdiction must exist at all stages of review,
`not merely at the time the complaint was filed, a
`counterclaimant must show a continuing case or
`controversy with respect to withdrawn or otherwise
`unasserted claims.
`
`[8] Patents 291
`
`323.2(5)
`
`291 Patents
`291XII Infringement
`291XII(B) Actions
`291k323 Final Judgment or Decree
`291k323.2 Summary Judgment
`291k323.2(5) k. Hearing and de-
`termination. Most Cited Cases
`District court did not have jurisdiction over un-
`asserted patent claims at the time of parties' sum-
`mary judgment motions; there was no case or con-
`troversy with respect
`to the unasserted claims
`where both parties were on notice that only certain
`claims were at issue, and they knew which claims
`were at issue before the district court ruled on the
`parties' summary judgment motions.
`
`Patents 291
`
`328(2)
`
`291 Patents
`
`© 2013 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`
`700 F.3d 1300
`(Cite as: 700 F.3d 1300)
`
`Page 3
`
`291XIII Decisions on the Validity, Construction,
`and Infringement of Particular Patents
`291k328 Patents Enumerated
`291k328(2) k. Original utility. Most Cited
`
`Cases
`6,562,130. Invalid.
`
`*1301 Christopher B. Mead, London & Mead, of
`Washington, DC, argued for plaintiff-appellant.
`With him on the brief was Lance A. Robinson.
`
`David C. Radulescu, Quinn Emanuel Urquhart &
`Sullivan LLP, of New York, New York, argued for
`defendant-appellee. With him on the brief were
`Raymond N. Nimrod and Robin M. Davis.
`
`BACKGROUND
`Fox is the assignee of the '130 patent, entitled
`Low Defect Axially Grown Single Crystal Silicon
`Carbide, which claims a low defect silicon carbide
`(“SiC”) crystal and relates to a method and apparat-
`us of said crystal. '130 patent col. 3 ll. 15–27. The '
`130 patent claims priority from application No.
`PCT/RU97/00005, filed on January 22, 1997. Id. at
`col. 1 ll. 6–10. “SiC crystal is a semiconductor ma-
`terial grown via man-made methods and used in
`high-temperature and high-power electronics such
`as light sources, power diodes, and photodiodes. To
`be viable as a semiconductor, SiC material must
`contain a relatively low level of defects.” Fox
`Group, 819 F.Supp.2d at 526–27.
`
`Before NEWMAN, O'MALLEY, and WALLACH,
`Circuit Judges.
`
`Fox argues that Cree infringes claims 1 and 19
`of the '130 patent. Claim 1 recites:
`
`Opinion for the court filed by Circuit Judge WAL-
`LACH.
`
`Opinion concurring-in-part, dissenting-in-part filed
`by Circuit Judge O'MALLEY.
`
`WALLACH, Circuit Judge.
`The Fox Group, Inc. (“Fox”) appeals from the
`decision of the United States District Court for the
`Eastern District of Virginia granting Cree, Inc.'s
`(“Cree”) motion for summary judgment of invalid-
`ity of U.S. Patent No. 6,562,130 (filed May 4,
`2001) (“the '130 patent”). Fox Group, Inc. v. Cree,
`Inc., 819 F.Supp.2d 524, 537 (E.D.Va.2011). We
`find that the district court did not err in granting
`summary judgment in Cree's favor based upon the
`invalidity of claims 1 and 19 of the '130 patent un-
`der 35 U.S.C. § 102(g). However, because there
`was no case or controversy at the time of the judg-
`ment over the remaining claims of the '130 patent
`(“unasserted claims”),
`the district court erred in
`holding the unasserted claims of the '130 *1302
`patent invalid. Accordingly, we affirm-in-part and
`vacate-in-part.
`
`A silicon carbide material comprising an axial re-
`gion of
`re-crystallized single crystal
`silicon
`carbide with a density of dislocations of less than
`104 per square centimeter, a density of mi-
`cropipes of less than 10 per square centimeter,
`and a density of secondary phase inclusions of
`less than 10 per cubic centimeter.
`
`'130 patent col. 8 ll. 6–11. Claim 19 is very
`similar, but requires a seed crystal and requires a
`region of axially recrystallized silicon carbide initi-
`ated at the growth surface of the seed crystal. Id. at
`col. 9 l. 37–col. 10 l. 6. Claim 19 states:
`
`A silicon carbide material, comprising:
`
`a single crystal silicon carbide seed crystal, said
`single crystal silicon carbide seed crystal having
`a growth surface; and
`
`a region of axially re-crystallized silicon carbide,
`said region of axially re-crystallized silicon
`carbide initiating at said growth surface of said
`single crystal silicon carbide seed crystal, said re-
`gion of axially re-crystallized silicon carbide hav-
`ing a density of dislocations of less than 104 per
`square centimeter, a density of micropipes of less
`
`© 2013 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`
`700 F.3d 1300
`(Cite as: 700 F.3d 1300)
`
`than 10 per square centimeter, and a density of
`secondary phase inclusions of less than 10 per
`cubic centimeter.
`
`Id.
`
`Cree has engaged in research to grow low de-
`fect SiC crystals since its founding in 1987. In Feb-
`ruary 1995, as part of its research program, Cree
`grew boule G0259 and sent Dr. Michael Dudley, of
`the State University of New York at Stony Brook, a
`wafer sliced from that boule, wafer G0259–3 (the
`“Kyoto Wafer”), for X-ray topography analysis.
`After the initial analysis, Cree asked Dr. Dudley to
`do more analysis “to see if there are more 1c dislo-
`cations in areas with no micropipes than in areas
`with micropipes.” JA2121. Dr. Dudley advised
`Cree that
`there was an exceptionally low defect
`area in the Kyoto Wafer.
`
`At the 1995 International Conference on SiC
`and Related Materials (the “Kyoto Presentation”).
`Dr. Calvin Carter, one of
`the Cree inventors,
`showed a cropped image and described the low de-
`fect nature of the Kyoto Wafer, stating that it had
`an area with less than 1,000 dislocations per square
`centimeter, and no micropipes. In an article pub-
`lished in 1996 (“1996 Article”), entitled “Recent
`progress in SiC crystal growth,” Cree described the
`Kyoto Wafer. JA2129. The 1996 Article disclosed
`that Cree had “recently had a breakthrough that ...
`dramatically reduced” micropipe density. JA2127.
`The article included an image of the X-ray topo-
`graph generated during Dr. Dudley's analysis,
`showing the high quality SiC that Cree had grown.
`The caption explained that the image was of a “14 x
`4.5 mm area *1303 of a 4H–SiC wafer. Excluding
`the portions with dislocation tangles, this area has a
`total line defect density of about 1000 cm-2.” Id.
`
`In 2007, Dr. Dudley analyzed a wafer from
`Cree at Fox's request. In April 2011, Dr. Dudley re-
`viewed the 1995 X-ray topographs of the Kyoto
`Wafer and determined that a region of the wafer
`had an average dislocation density of less than 104
`per square centimeters, no micropipes, and no sec-
`
`Page 4
`
`ondary phase inclusion.
`
`Fox originally brought suit against Cree on
`June 29, 2010.FN1 In its Complaint, Fox sought in-
`junctive relief as well as compensatory damages
`against Cree for infringing the '130 patent and U.S.
`Patent No. 6,534,026 (“the ' 026 patent”).FN2 In its
`Answer, Cree filed counterclaims seeking declara-
`tions that
`the '026 and '130 patents are not
`in-
`fringed,
`invalid, and unenforceable. Cree filed a
`motion for summary judgment of invalidity on
`April 11, 2011.
`
`FN1. Fox also filed suit against Dow Corn-
`ing Corp. On October 25, 2010, the action
`against Dow Corning Corp. was trans-
`ferred to the United States District Court
`for the Southern District of New York. Fox
`Group, Inc. v. Cree, Inc., 749 F.Supp.2d
`410 (E.D.Va.2010).
`
`FN2. The '026 patent is no longer a subject
`of
`this litigation. See Fox Group, 819
`F.Supp.2d at 527 n. 4.
`
`On June 10, 2011, the court issued its claim
`construction opinion construing terms in both the '
`130 patent and the '026 patent. On July 20, 2011, in
`response to a motion from Fox, the district court
`entered a judgment of noninfringement of the '026
`patent for Cree and dismissed Cree's counterclaims
`related to the '026 patent. The court then denied
`Cree's motion for summary judgment of nonin-
`fringement of the '026 patent as moot and con-
`sidered only whether there was any genuine issue
`of material fact concerning the validity and in-
`fringement of the '130 patent.
`
`On August 8, 2011, the district court granted
`Cree's motion for summary judgment on its coun-
`terclaim seeking a declaration that the '130 patent is
`invalid, and dismissed or denied the other claims
`and counterclaims on infringement and unenforce-
`ability as moot. Id. at 537. Fox timely appealed. We
`have
`jurisdiction
`pursuant
`to
`28 U.S.C.
`§
`1295(a)(1).
`
`© 2013 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`
`700 F.3d 1300
`(Cite as: 700 F.3d 1300)
`
`DISCUSSION
`Fox's challenge to the district court's grant of
`summary judgment of invalidity is premised on the
`notion that Cree is not a prior inventor of the low
`defect wafer claimed by Fox, or, if it was, that Cree
`abandoned, suppressed, or concealed the invention.
`Fox also argues that the district court erred in enter-
`ing an order invalidating the entire '130 patent,
`when only claims 1 and 19 were asserted. We ad-
`dress each in turn.
`
`“This court reviews the district court's grant or
`denial of summary judgment under the law of the
`regional circuit.” Lexion Med., LLC v. Northgate
`Techs., Inc., 641 F.3d 1352, 1358 (Fed.Cir.2011).
`The Fourth Circuit reviews the grant of summary
`judgment de novo. Nader v. Blair, 549 F.3d 953,
`958 (4th Cir.2008). Summary judgment is appropri-
`ate when there is “no genuine issue of material fact
`and the movant is entitled to judgment as a matter
`of law.” Fed.R.Civ.P. 56(a). It is the moving party's
`burden to show it is entitled to judgment as a matter
`of
`law, and the non-moving party's burden to
`“demonstrate that a triable issue of fact exists; he
`may not rest upon mere allegations or denials. A
`mere scintilla of evidence supporting the case is in-
`sufficient.” Shaw v. Stroud, 13 F.3d 791, 798 (4th
`Cir.1994) (citation omitted). In evaluating *1304 a
`motion for summary judgment, we view all evid-
`ence and draw all reasonable inferences from the
`evidence in a light most favorable to the non-
`moving party. Nader, 549 F.3d at 958. “Where the
`record taken as a whole could not lead a rational tri-
`er of fact to find for the non-moving party, there is
`no ‘genuine issue for trial.’ ” Matsushita Elec. In-
`dus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587,
`106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) (quoting
`First Nat'l Bank of Ariz. v. Cities Serv. Co., 391
`U.S. 253, 289, 88 S.Ct. 1575, 20 L.Ed.2d 569
`(1968)).
`
`is presumed valid. 35
`[1] An issued patent
`U.S.C. § 282. “[I]f a patentee's invention has been
`made by another, prior inventor who has not aban-
`doned, suppressed, or concealed the invention, [35
`
`Page 5
`
`U.S.C. § 102(g) ] will invalidate that patent.” Apo-
`tex USA, Inc. v. Merck & Co., Inc., 254 F.3d 1031,
`1035 (Fed.Cir.2001). Under § 102(g), on a motion
`for summary judgment, a challenger of a patent
`must prove “by clear and convincing evidence that
`‘the invention was made in this country by another
`inventor.’ ” Id. at 1037 (quoting 35 U.S.C. § 102(g)
`). Then, the burden shifts “to the patentee to pro-
`duce evidence sufficient to create a genuine issue of
`material fact as to whether the prior inventor has
`suppressed or concealed the invention.” Id. Finally,
`the burden shifts again to the challenger who “must
`rebut any alleged suppression or concealment with
`clear and convincing evidence to the contrary.” Id.
`at 1038.
`
`I. Inventorship
`[2] Under § 102(g) a patent may be invalidated
`if “the invention was made in this country by anoth-
`er inventor who had not abandoned, suppressed, or
`concealed it.” 35 U.S.C. § 102(g). This section
`“operates to ensure that a patent is awarded only to
`the ‘first’ inventor in law.” Apotex, 254 F.3d at
`1035. “[A] challenger ... has two ways to prove that
`it was the prior inventor: (1) it reduced its invention
`to practice first ... or (2) it was the first party to
`conceive of the invention and then exercised reas-
`onable diligence in reducing that invention to prac-
`tice.” Mycogen Plant Sci., Inc. v. Monsanto Co.,
`243 F.3d 1316, 1332 (Fed.Cir.2001).
`
`Fox argues that Cree failed to prove that it in-
`vented a process for making low defect SiC wafers
`because it did not provide proof that
`it did, or
`could, duplicate the process used to make the Kyoto
`Wafer.
`Fox
`avers
`that
`“[i]mplicit
`in
`the
`‘conception’ requirement of inventorship is that the
`inventor must have conceived of something definite
`enough to be repeated, and that this conception is
`actually repeatable by those skilled in the art
`without undue experimentation.” Fox's Opening Br.
`41.
`
`[3] However, Cree needs only prove either that
`it reduced its invention to practice first or that it
`conceived of the invention first and was diligent in
`
`© 2013 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`
`700 F.3d 1300
`(Cite as: 700 F.3d 1300)
`
`reducing it to practice. Mycogen, 243 F.3d at 1332.
`An alleged prior inventor would need to prove con-
`ception only if the alleged prior inventor had not
`successfully reduced the invention to practice be-
`fore the critical date of the patent-at-issue (May 4,
`2000).FN3 Since Cree reduced the invention to
`practice in 1995, Fox Group, 819 F.Supp.2d at 532,
`it *1305 does not need to prove conception. Reduc-
`tion to practice and conception are separate and dis-
`tinct concepts and tests; we will not combine them.
`
`FN3. To show conception a prior “inventor
`must be able to ‘describe his invention
`with particularity.’ [ Burroughs Wellcome
`Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228
`(Fed.Cir.1994).] This requires both (1) the
`idea of the invention's structure and (2)
`possession of an operative method of mak-
`ing it.” Invitrogen Corp. v. Clontech Labs.,
`Inc., 429 F.3d 1052, 1063 (Fed.Cir.2005).
`Cree would also meet the requirements of
`prior conception since it had an embodi-
`ment of the claimed product prior to Fox.
`
`[4] The test for establishing reduction to prac-
`tice requires that “the prior inventor must have (1)
`constructed an embodiment or performed a process
`that met all the claim limitations and (2) determined
`that the invention would work for its intended pur-
`pose.” Teva Pharm. Indus. Ltd. v. AstraZeneca
`Pharms. LP & IPR Pharms., Inc., 661 F.3d 1378,
`1383 (Fed.Cir.2011). Cree met both prongs to es-
`tablish reduction to practice. It developed the Kyoto
`Wafer, a SiC wafer that met all three defect density
`limitations of claims 1 and 19 of the '130 patent.
`Fox Group, 819 F.Supp.2d at 532. Fox does not
`dispute that in 1995 Cree grew the Kyoto Wafer,
`which met all three of the defect density limitations
`of claims 1 and 19 of the '130 patent. Cree presen-
`ted the results at the Kyoto Conference, describing
`the defect reduction achieved as a “breakthrough.”
`Id. at 534.
`
`Fox argues that the district court “improperly
`focused on a generalized purpose of making ‘low
`defect’ SiC, rather than on the claimed purpose of
`
`Page 6
`
`making SiC wafers that met three specific, measur-
`able, and repeatable defect densities.” Fox's Open-
`ing Br. 46. However, case law shows that the prior
`inventor does not need to “establish that he recog-
`nized the invention in the same terms as those re-
`cited” in the patent claims. Dow Chem. Co. v. As-
`267
`F.3d
`1334,
`1341
`tro–Valcour,
`Inc.,
`(Fed.Cir.2001).
`
`Fox argues that Cree failed to prove it had re-
`duced the invention to practice before 1997. Fox
`contends that Cree admitted it had not invented a
`repeatable process, quoting the 1996 article, which
`states “we are working on process repeatability is-
`sues that will result
`in consistent production of
`wafers of
`equal or better quality.”
`JA2127.
`However, Fox does not support its contention that
`Cree must prove repeatability to prove it had re-
`duced the invention to practice. Furthermore, con-
`sidering Cree's statement within the context of the
`article, Cree never said that it could not make an-
`other SiC boule that met the claim limitations of the
`'130 patent. Rather, Cree was describing the Kyoto
`Wafer which had very low micropipe density and
`describing plans to continue to reduce defects and
`grow even better quality wafers in the future. Cree
`proved that it had reduced the invention to practice;
`there is no requirement for it to have done so re-
`peatedly, and therefore no genuine issue of material
`fact exists as to this issue.
`
`“Cree appreciated in 1995 that its newly grown
`SiC material met uniquely low defect density
`thresholds, and said appreciation was based on
`‘objective evidence [that] corroborate[s]’ Cree's
`public comments concerning that quality.” Fox
`Group, 819 F.Supp.2d at 534 (quoting Invitrogen,
`429 F.3d at 1065) (brackets in original). There is no
`genuine issue whether Cree reduced the invention
`to practice prior to Fox's critical date.
`
`II. Abandonment, Suppression, or Concealment
`[5] There were two ways for Fox to produce
`evidence sufficient to create a genuine issue of ma-
`terial fact of abandonment, suppression, or conceal-
`ment. Dow, 267 F.3d at 1342. The first way, that
`
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`
`

`
`700 F.3d 1300
`(Cite as: 700 F.3d 1300)
`
`the prior inventor actively and intentionally sup-
`pressed or concealed, has not been raised before
`this court. Id. Rather, Fox disputes the sufficiency
`of Cree's public disclosures, contending that aban-
`donment, suppression, or concealment may be in-
`ferred from the inventor's “unreasonable delay in
`making the invention publicly known.” Id.
`
`*1306 There are numerous ways to support an
`inference of abandonment, suppression, or conceal-
`ment, such as “[t]he failure to file a patent applica-
`tion, to describe the invention in a published docu-
`ment, or to use the invention publicly, within a
`reasonable time after first making the invention....”
`Id. (citations omitted). Fox cites to the testimony of
`one of the Cree inventors, Dr. Calvin Carter, stating
`that a certain amount of nondisclosure was com-
`pany policy. Fox argues that since Cree (1) did not
`file a patent application for its Kyoto Wafer, (2) did
`not present proof of commercialization that would
`allow for reverse-engineering, and (3) did not oth-
`erwise provide adequate disclosure because it failed
`to reveal the details of the growth conditions under
`which boule G0259 was made, Cree suppressed or
`concealed its invention.
`
`[6] However, our case law establishes that
`“although § 102(g) prior art must be somehow
`made available to the public in order to defeat an-
`other patent, a § 102(g) prior inventor is under no
`obligation to file a patent application.” Apotex, 254
`F.3d at 1039. Commercialization has been relied
`upon as another way to prove public disclosure. See
`e.g., Dow, 267 F.3d at 1343 (“Here, [the prior in-
`ventor's] public disclosure of its ... invention oc-
`curred through commercialization.”); Checkpoint
`Sys. Inc. v. U.S. Int'l Trade Comm'n, 54 F.3d 756,
`762 (Fed.Cir.1995) (“In cases in which an invention
`is disclosed to the public by commercializa-
`tion....”). Filing a patent application and commer-
`cializing a product are only two convenient ways of
`proving an invention has been disclosed to the pub-
`lic. There are other ways to prove public disclosure
`including, e.g., the use of a printed publications as
`prior art under 35 U.S.C. § 102(a), (b).FN4
`
`Page 7
`
`FN4. In International Glass, our prede-
`cessor court held that the prior invention
`was deemed abandoned, suppressed, or
`concealed, because although Sciaronni's
`personal notebook records were kept of his
`method for polishing gem stones, the re-
`cords were never submitted to their em-
`ployer's patent counsel or supervisory per-
`sonnel for further evaluation, there was no
`evidence that the method was used by the
`company to make a finished product, the
`method was never described in any docu-
`ment or report, and no knowledge of the
`method was ever disseminated outside of
`the company.
`Int'l Glass Co., Inc. v.
`United States, 408 F.2d 395, 402–04
`(Ct.Cl.1969). The court's analysis is in-
`structive here because Cree took all of the
`steps the court mentioned Sciaronni had
`failed to take.
`In particular, Cree sent
`samples of its boule for testing by Dr.
`Dudley, an outside evaluator, the product
`itself (though not the process used to make
`it) was described in a published paper, and
`knowledge of the product was dissemin-
`ated outside of the company in the Kyoto
`presentation.
`
`Fox claims that public use or descriptions in a
`published document must be enabling, given the
`policy and purpose of the patent system to enrich
`the art by disclosing how to make the invention.
`Fox quotes extensively from our case law to sup-
`port its argument that the prior art must be en-
`abling:
`
`Early public disclosure is a linchpin of the patent
`system. As between a prior inventor who benefits
`from a process by selling its product but sup-
`presses, conceals, or otherwise keeps the process
`from the public, and a later
`inventor who
`promptly files a patent application from which
`the public will gain a disclosure of the process,
`the law favors the latter.
`
`W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721
`
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`

`
`700 F.3d 1300
`(Cite as: 700 F.3d 1300)
`
`F.2d 1540, 1550 (Fed.Cir.1983) (citations omitted).
`A principal purpose of § 102(g) is to ensure that a
`patent is awarded to a first inventor. However, it
`also encourages prompt public disclosure of an
`invention by penalizing the unexcused delay
`*1307 or failure of a first inventor to share the
`benefit of the knowledge of the invention with
`the public after the invention has been completed.
`
`Checkpoint Sys., 54 F.3d at 761 (citations omit-
`ted). Fox contends that the presentation and public-
`ation about the Kyoto Wafer are not enough to en-
`able one skilled in the art to make the invention, be-
`cause Cree never disclosed how it got its results.
`
`As Fox effectively admits, all of the cases it
`cites to support its assertion that § 102(g) requires
`an enabling disclosure are process claims. The ' 130
`patent is a patent directed to a product, a silicon
`wafer comprising SiC material with specific low
`defect densities, but Fox argues that any distinction
`between product and process claims is irrelevant.
`We disagree.
`
`The purpose of § 102(g) is to bar an inventor
`from receiving a patent on an invention that has
`already been invented and was not abandoned, sup-
`pressed, or
`concealed. Apotex, 254 F.3d at
`1038–39. If the patent claimed a process, then a pri-
`or inventor would have to prove prior invention of
`the process which had not been abandoned, sup-
`pressed, or concealed, to invalidate the patent under
`§ 102(g). “Cree promptly and publicly disclosed its
`findings concerning the low defect properties of the
`SiC material from which the [Kyoto Wafer] was cut
`through a presentation at
`the 1995 International
`Conference and a published paper on the subject.”
`Fox Group, 819 F.Supp.2d at 535. Accordingly,
`Cree promptly made its invention, a SiC material
`with low defect densities, known to the public. Fox
`has not produced sufficient evidence raising any
`genuine issues of material fact to show that Cree
`suppressed or concealed its invention.
`
`Because Cree has produced clear and convin-
`cing evidence that it had the low density SiC crystal
`
`Page 8
`
`prior to Fox's date of invention, and Fox has not
`produced sufficient evidence to show or raise genu-
`ine issues that Cree abandoned, suppressed, or con-
`cealed the invention, we find claims 1 and 19 of the
`'130 patent invalid under § 102(g)(2). Accordingly,
`we affirm the invalidity decision of the district
`court as to claims 1 and 19 of the '130 patent.
`
`III. Invalidity of the Unasserted Claims
`Cree sought summary judgment of invalidity
`with respect
`to all claims of the patents-in-suit.
`Upon a finding that claims 1 and 19 of the '130 pat-
`ent were invalid under § 102(g), the district court
`granted Cree's summary judgment motion on its
`counterclaim seeking a declaration that the entire '
`130 patent is invalid. On appeal, Fox asserts that
`there was no justiciable controversy to support
`Cree's counterclaim for invalidity on the remaining
`claims of the '130 patent, and thus the district
`court's order should be vacated with respect
`to
`those remaining claims.
`
`[7] In patent cases, “the existence of a case or
`controversy must be evaluated on a claim-by-claim
`basis.” Jervis B. Webb Co. v. So. Sys., Inc., 742
`F.2d 1388, 1399 (Fed.Cir.1984) (citations omitted).
`“[J]urisdiction must exist at all stages of review,
`not merely at the time the complaint [was] filed, ...
`a counterclaimant mus