Anvik Corporation v. Nikon Precision, Inc.

NOTE: This disposition is nonprecedential.

United States Court of Appeals
for the Federal Circuit
______________________

ANVIK CORPORATION,
Plaintiff-Appellant,

v.

NIKON PRECISION, INC.,
NIKON RESEARCH CORPORATION OF AMERICA,
NIKON CORPORATION, AND HANNSTAR DISPLAY
CORPORATION,
Defendants-Appellees,

AND

L.G. PHILIPS LCD CO., LTD. AND L.G. PHILIPS
LCD AMERICA, INC.,
Defendants-Appellees,

AND

SAMSUNG ELECTRONICS AMERICA, INC.
AND SAMSUNG ELECTRONICS CO., LTD.,
Defendants-Appellees,

AND

CHI MEI OPTOELECTRONICS,
CHI MEI OPTOELECTRONICS USA, INC., AND
INNOLUX DISPLAY CORP.,
Defendants-Appellees,
2 ANVIK CORPORATION v. NIKON PRECISION, INC.

AND

AU OPTRONICS CORPORATION AND
AU OPTRONICS CORPORATION AMERICA,
Defendants-Appellees,

AND

SHARP CORPORATION AND SHARP
ELECTRONICS CORPORATION,
Defendants-Appellees,

AND

AFPD PTE LTD.,
Defendant-Appellee,

AND

IPS ALPHA TECHNOLOGY, LTD.,
PANASONIC CORPORATION OF NORTH
AMERICA, PANASONIC CORPORATION, HITACHI,
LTD., HITACHI DISPLAYS, LTD., HITACHI
AMERICA, LTD., HITACHI ELECTRONIC DEVICES
USA, INC., HITACHI CONSUMER ELECTRONICS
CO., LTD., TOSHIBA CORPORATION, TOSHIBA
AMERICA, INC., AND TOSHIBA AMERICA
CONSUMER PRODUCTS, LLC,
Defendants-Appellees.
______________________

2012-1320, -1321, -1322, -1323, -1324, -1325, -1326, -1327,
-1328, -1329
______________________
 ANVIK CORPORATION v. NIKON PRECISION, INC. 3
Appeals from the United States District Court for
the Southern District of New York in Nos. 05-CV-7891,
07-CV-0816, 07-CV-0818, 07-CV-0821, 07-CV-0822, 07-
CV-0825, 07-CV-0826, 07-CV-0827, 07-CV-0828, and
08-CV-4036, Judge Alvin K. Hellerstein.
______________________

Decided: March 22, 2013
______________________

DARYL JOSEFFER, King & Spalding, LLP, of Washington,
DC, argued for plaintiff-appellant. On the brief were
JOSHUA L. RASKIN, and JAI K. CHANDRASEKHAR, Bernstein
Litowitz Berger & Grossmann, LLP, of New York, New
York.

DONALD R. DUNNER, Finnegan, Henderson, Farabow,
Garrett & Dunner, L.L.P., of Washington, DC, argued for
all defendants-appellees. With him on the brief was
ANDREW J. VANCE. Of counsel on the brief were JACK W.
LONDEN, Morrison & Foerster, LLP, of Chiyoda-ku, To-
kyo, Japan, DEANNE E. MAYNARD, of Washington, DC, and
MATTHEW M. D’AMORE, of New York, New York, for
defendants-appellees, Nikon Precision, Inc., et al.;
GASPARE J. BONO, McKenna Long & Aldridge, L.L.P., of
Washington, DC, for defendants-appellees, L.G. Philips
LCD Co., Ltd., et al.; PETER J. WIED, VINCENT K. YIP, JAY
CHIH-FAN CHIU and TERRENCE D. GARNETT, Goodwin
Procter L.L.P., of Los Angeles, California, for defendants-
appellees, AU Optronics Corporation, et al.; ARTHUR I.
NEUSTADT, CARL E. SCHLIER and ALEXANDER E. GASSER,
Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P., of
Alexandria, Virginia, for defendant–appellee, AFPD PTE,
Ltd.; NEIL P. SIROTA, Baker Botts L.L.P., of New York,
New York, and MICHAEL J. BARTA, of Washington, DC, for
defendants-appellees, Samsung Electronics America, Inc.,
et al.; ROBERT W. ADAMS, GILL S. UPDEEP and GORDON
4 ANVIK CORPORATION v. NIKON PRECISION, INC.

KLANCNIK, Nixon & Vanderhye, P.C., of Arlington, Virgin-
ia, for defendants-appellees, Sharp Corporation, et al.;
ERIC J. LOBENFELD, IRA J. SCHAEFER and ARLENE L.
CHOW, Hogan Lovells, US LLP, of New York, New York,
for defendants–appellees, IPS Alpha Technology, Ltd., et
al.; JOHN R. ALISON, LAURA P. MASUROVSKY, DENISE W.
DEFRANCO and STEPHEN L. HENNESSY, Finnegan, Hender-
son, Farabow, Garrett & Dunner L.L.P., of Washington,
DC, for defendant–appellee, Hannstar Display Corpora-
tion, and BRUCE D. DERENZI and SCOTT L. BITTMAN,
Crowell & Moring, LLP, of New York, New York, for
defendants–appellees, Chi Mei Optoelectronics, et al.
______________________

Before NEWMAN, BRYSON, and MOORE, Circuit Judges.
BRYSON, Circuit Judge.
The district court held the three asserted patents in
this case invalid for failing to satisfy the “best mode”
requirement found in 35 U.S.C. § 112. The America
Invents Act, Pub. L. No. 112–29 (2011), eliminated failure
to satisfy the best mode requirement as a ground for
invalidating issued patents. However, the statutory
amendment that removed best mode from the list of
invalidating conditions for issued patents was not given
retroactive effect for cases, such as this one, that were
filed before the new statute was enacted. Accordingly, the
district court properly considered whether the best mode
requirement had been satisfied.
The question whether the best mode requirement has
been satisfied is highly factual. In this case, after review-
ing the deposition testimony of Dr. Kanti Jain, the named
inventor of all three patents and the founder and presi-
dent of Anvik Corporation, the district court was under-
standably concerned that Dr. Jain may have concealed
certain aspects of the best mode for practicing the inven-
tion claimed in the patents. While Dr. Jain did his cause
 ANVIK CORPORATION v. NIKON PRECISION, INC. 5
no favors with his testimony, we are persuaded based on
the record as a whole that there remain disputed issues of
material fact bearing on the best mode question, and we
therefore reverse the grant of summary judgment and
remand the case for further proceedings.
I
Anvik brought suit against a number of manufactur-
ers and sellers of electronic equipment, alleging that they
had infringed the three patents in suit, U.S. Patents No.
4,924,257 (“the ’257 patent”); 5,285,236 (“the ’236 pa-
tent”); and 5,291,240 (“the ’240 patent”). Anvik’s theory
was that the manufacturer and seller defendants had
infringed by using scanners made by the Nikon defend-
ants. The patents at issue in this case are directed to
photolithography systems used to make electronic prod-
ucts such as liquid crystal display panels. The claimed
systems selectively expose a substrate to electromagnetic
radiation through a mask by the use of partially overlap-
ping scans of the mask and substrate to ensure that the
substrate is exposed uniformly and seamlessly.
All three of the patents in suit follow the same basic
pattern: each claims a “scan and repeat” system for high-
resolution, large-field lithography. In each patent, the
asserted claims recite, as part of the claimed lithography
system, an illumination subsystem satisfying certain
requirements. The illumination subsystem set forth in
asserted claim 17 of the ’257 patent is representative.
That portion of claim 17 recites: “an illumination subsys-
tem having the desired characteristics of wavelength and
intensity distribution, having an effective source plane in
the shape of a polygon, and capable of uniformly illumi-
nating a polygon-shaped region on the mask.” The speci-
fication of the ’257 patent, which is also representative,
describes the illumination subsystem as consisting of an
illumination source system, a relay lens, and a beam-
steering mechanism. The illumination subsystem is
6 ANVIK CORPORATION v. NIKON PRECISION, INC.
described as being “such that its effective emission
plane . . . is in the shape of a regular hexagon.” The
illumination source system is not otherwise described, but
is depicted in the patent figures as a box with a hexago-
nal-shaped emission plane at one end. ’257 patent, col. 4,
ll. 7–21.
In a separate patent application filed before the appli-
cations for the patents in suit, Dr. Jain described and
claimed a particular illumination system. That applica-
tion became U.S. Patent No. 5,059,013 (“the ’013 patent”),
which was issued to Dr. Jain on October 22, 1991, after
the issuance of the ’257 patent in 1990 but before either
the application for, or issuance of, the ’236 and ’240 pa-
tents in 1994. The ’013 patent claimed an illumination
system producing a light beam that could be used in
lithography systems such as those claimed in the ’257,
’236, and ’240 patents. In its preferred embodiment, the
illumination system of the ’013 patent used a hexagonal
“shaping aperture” and a hexagonal-shaped tunnel lined
on the inside with mirrors, which the ’013 patent referred
to as a “hexagonal beam-shaper-uniformizer.”
At the time, Dr. Jain recorded his ideas for improving
lithography systems, along with illustrations and detailed
descriptions, in his notebook. His drawing of the illumi-
nation system that formed the basis for the ’013 patent
was found in the same notebook as the drawings that
formed the bases for the ’257, ’236, and ’240 patents.
Specifically, he drew a hexagonal light tunnel that ap-
pears virtually identical to the one that would be depicted
in Figure 1b of the ’013 patent. Dr. Jain’s notebook refers
to the hexagonal tunnel in the course of discussing of how
to create a hexagonal-shaped light beam required for the
scan and repeat method claimed in the patents in suit.
During pretrial discovery, the defendants sought to
establish that Dr. Jain regarded the illumination system
used in the ’013 patent as the best mode for creating the
 ANVIK CORPORATION v. NIKON PRECISION, INC. 7
overlapping hexagonal light beams used in his scan and
repeat method. They argued that the evidence showed he
considered it his best mode and failed to disclose it in the
’257, ’236, and ’240 patents, and that those patents were
therefore invalid.
II

The district court granted summary judgment, hold-
ing all three patents invalid for failing to satisfy the best
mode requirement. The court based its ruling mainly on
Dr. Jain’s deposition testimony, which the court inter-
preted as admitting that the illumination source recited
in the ’013 patent was “better than anything in the prior
art and anything of which he was aware and which he
could remember at the time.”
The district court pointed to several of Dr. Jain’s
statements during his deposition to support its interpre-
tation. Dr. Jain testified that when he filed the applica-
tion for the ’013 patent, he believed that the method it
described “had advantages over prior art methods,” and
that it “had advantages over some other methods.” While
he stated that he did not regard the illumination system
of the ’013 patent as the best illumination source to use in
connection with the asserted claims, he was unable to
identify any particular alternatives that would serve that
purpose better. Nonetheless, Dr. Jain testified that “there
were many variations” among illumination methods that
could provide uniform hexagonal illumination on the
substrate and that the method of the ’013 patent “certain-
ly is not the only optimum method.” He added, however,
that he “[could] not recall what the other methods were.”
When asked whether he had any other pending patent
applications “that dealt with the uniformization of the
light in an illumination system besides the application
that led to the ’013 patent,” Dr. Jain replied, “I don’t
8 ANVIK CORPORATION v. NIKON PRECISION, INC.
recall, but I think what I described in the ’013 patent,
that configuration for an illumination system to produce
uniform polygonal exposure, most likely was the best that
I had thought of until then.” However, when he was
directly asked whether the preferred embodiment “of a
lithography system practicing the methods of the ’257
patent . . . used light provided by a hexagonal beam
shaper and uniformizer tunnel to provide nominal hexa-
gon shape and uniform light,” Dr. Jain replied that was
“not right.” In addition, Dr. Jain later submitted a decla-
ration explaining that the ’013 patent represented only
the best mode that he himself had invented, and that at
the relevant time he was aware of other effective ways to
practice his lithography system.
As further evidence that the illumination system of
the ’013 patent was Dr. Jain’s best mode, the defendants
showed that he attended a professional conference in
March of 1991 to discuss his lithography system, and that
during his presentation he did not disclose any details of
the illumination source system described in his notebook.
When asked at his deposition why he chose not discuss
that aspect of his invention, Dr. Jain explained that he
was “simply not ready, prepared[,] and willing to give
details about the illumination part of the lithography
system” while the ’013 patent was still pending.
The district court acknowledged that the defendants
had not obtained a direct admission from Dr. Jain that he
had concealed what he knew to be the best mode for
practicing the asserted claims. Nonetheless, referring to
the portion of Dr. Jain’s testimony in which he denied
that he regarded the illumination source of the ’013
patent as the best mode for practicing the invention, the
court stated that “[i]t’s hard for me to accept that there is
any credibility whatever to [that] portion” of his testimo-
ny. The court concluded:
 ANVIK CORPORATION v. NIKON PRECISION, INC. 9
But he refuses to answer what may be other opti-
mum methods, so that suggests to me that when
he says that this is better than other methods and
he can’t name another method that’s equal or bet-
ter than the ’013 method, then he’s saying the ’013
method is the best. He knows that.
Based on that evidence, the court granted the defendants’
motion for summary judgment of invalidity and dismissed
the complaint. The court explained that it regarded Dr.
Jain’s testimony as amounting to an admission that
although the ’013 patent was not mentioned in the ’257
patent, the method described in the ’013 patent “was
better than anything in the prior art and anything of
which he was aware and which he could remember at the
time.” The court relied heavily on the fact that Dr. Jain
could not identify anything in the prior art that could
create a better illumination source than the system
described in the ’013 patent. As for the post-deposition
declaration in which Dr. Jain sought to explain some of
the answers he gave during his deposition, the court
characterized that declaration as “a gloss of what he may
have wanted to mean or may have tried to mean or how
he wanted to argue.” The statements in that declaration,
the court concluded, were “beside the point, and they don’t
contribute anything at all.”
III
Whether the best mode requirement has been satis-
fied is a question of fact. Bayer AG v. Schein Pharms.,
Inc., 301 F.3d 1306, 1312 (Fed. Cir. 2002). In order to
determine whether there has been a violation of the best
mode requirement, two factual questions must be an-
swered. The first is whether, at the time of filing the
patent application, the inventor had a best mode of prac-
ticing the claimed invention—a subjective question. The
second is whether, assuming the inventor had a prefer-
ence for one mode over all others, the inventor objectively
10 ANVIK CORPORATION v. NIKON PRECISION, INC.
concealed his preferred mode from the public. See Well-
man, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1360
(Fed. Cir. 2011).
Patents are presumed valid, and the opposing party
must prove invalidity by clear and convincing evidence.
See High Concrete Structures, Inc. v. New Enter. Stone &
Lime Co., Inc., 377 F.3d 1379, 1382 (Fed. Cir. 2004). On
summary judgment in this case, the issue before the
district court was whether a reasonable finder of fact
could reach no conclusion other than that Dr. Jain consid-
ered his patented illumination source system to be the
best mode for practicing the inventions and concealed it.
Id.
The defendants’ documentary evidence is susceptible
to reasonable inferences in Anvik’s favor. For instance,
Dr. Jain may have drawn the illumination source system
in his notebook to provide an example of an illumination
source that could be used in his lithography system with-
out meaning to suggest that the depicted example was the
best illumination design for that purpose. Nor does the
existence of the ’013 patent prove that Dr. Jain had a best
mode. Rather, it suggests only that its claimed illumina-
tion system had advantages over the prior art in some
contexts, not necessarily that it, or the hexagonal light
tunnel component, was the best illumination source
system to use in practicing the scan and repeat system
claimed in the patents in suit.
Ultimately, the district court’s ruling turned on Dr.
Jain’s credibility. The court was troubled by aspects of
Dr. Jain’s testimony, and in particular what the court
referred to as his “fencing” with counsel at various points
in response to questions. The court therefore found Dr.
Jain to lack credibility, and it based its summary judg-
ment ruling in large measure on that finding. That was
error. While it is possible that a witness’s credibility
could be so undermined in the course of a deposition that
 ANVIK CORPORATION v. NIKON PRECISION, INC. 11
a court could conclude that no reasonable finder of fact
could believe him, the task of evaluating a witness’s
credibility is normally for the fact-finder, not for a court
on summary judgment, and this case is not so extreme as
to fall outside that general rule. See Wanlass v. Fedders
Corp., 145 F.3d 1461, 1463 (Fed. Cir. 1998).
As the district court acknowledged, counsel for the de-
fendants did not obtain a direct admission from Dr. Jain,
either that he knew of a best mode for practicing the
asserted claims or that he concealed it. What counsel
elicited from Dr. Jain was a repeated denial on his part
that the illumination system of the ’013 patent was the
best mode for practicing the “illumination source” limita-
tion of the asserted claims, accompanied by an inability
on Dr. Jain’s part to identify any other particular mode
that would have been as good or better. From that testi-
mony, the district court concluded that Dr. Jain was not
being truthful and that in fact he both had a best mode
for the illumination source and concealed it.
The district court focused on the following aspects of
Dr. Jain’s deposition testimony: (1) his admission that the
illumination system disclosed in the ’013 patent, which he
depicted in his notebook, was one method for producing a
uniform source of light in a polygonal shape; (2) his ad-
mission that the notebook also depicted his lithography
system claimed in the patents in suit and that it related
the hexagonal light tunnel component in the illumination
system of the ’013 patent to that depiction; (3) his admis-
sion that when he filed the ’013 patent he believed it had
advantages over some prior art methods; and (4) his
statement, when asked if he had in mind any method
superior to the hexagonal beam shaper and uniformizer
tunnel for providing uniform light to the mask, that he
did not recall, but that he “certainly may have had, be-
cause this method of providing uniform hexagonal illumi-
nation on the substrate certainly is not the only optimum
method. And I was quite aware of that.” Notably,
12 ANVIK CORPORATION v. NIKON PRECISION, INC.
throughout his deposition Dr. Jain contended that the
illumination system of the ’013 patent was only one of
many possible options and that he never considered that
system to be part of the preferred embodiment of the
patents in suit.
From that evidence, the district court concluded that
Dr. Jain had effectively admitted that he “knew of some-
thing that subjectively was the best,” yet he “did not
declare it; he did not disclose it.” The court interpreted
Dr. Jain’s statements to establish only that “there was [a]
logical possibility” that a better mode could have existed,
but that Dr. Jain did not have one in mind when he
invented his lithography system. Based on that finding,
the court ruled that “there is no issue of fact, that Dr. Jain
was clear in his admission . . . and he therefore failed to
satisfy what is clearly set out in section 112.”
In reaching its conclusion, the district court drew un-
favorable inferences from Dr. Jain’s testimony and disre-
garded two pieces of evidence that bear on the propriety of
the grant of summary judgment. The court in effect
concluded that even though Dr. Jain professed to have
known of other methods for providing a source of uniform
hexagonal illumination, his inability to identify any such
methods showed conclusively that he was unaware of any
that were as good as the one disclosed in the ’013 patent.
But that discounts the interpretation of Dr. Jain’s testi-
mony offered by Anvik—that, as he testified, he knew of
other suitable methods for producing a uniformly illumi-
nated hexagonal field but at the time of his deposition
could not recall the details of any of those other methods.
A finder of fact might reject that interpretation of Dr.
Jain’s testimony by finding his explanation to lack credi-
bility. On the other hand, the fact-finder might find his
explanation plausible in light of the passage of nearly 20
years from the time of the ’257 application to the time of
the deposition, particularly considering the high burden of
proof requiring the defendants to produce clear and
 ANVIK CORPORATION v. NIKON PRECISION, INC. 13
convincing evidence of facts invalidating the asserted
claims.
In his declaration submitted following his deposition,
Dr. Jain sought to clarify his responses to some of the
questions asked at his deposition relating to the best
mode issue. He explained that he did not regard the
hexagonal light tunnel described in the ’013 patent as
either a new invention or the best method of providing
illumination for the invention of the ’257 patent. Instead,
the light tunnel was inventive only in combination with
the light beam source system of the ’013 patent, consist-
ing of both a laser and a lamp. He added that he had not
said, and did not believe, that the illumination system
including the hexagonal mask and tunnel was the pre-
ferred method for providing illumination in the practice of
the ’257 patent; it was, he said, “one system of many
known to me at the time that were capable of illuminating
a uniform region on a mask.” He stated that while the
illumination system of the ’013 patent “had advantages
over some prior-art systems,” he did not consider it to be
“the best or only means of providing a source of illumina-
tion for practicing the microlithography method that
became the ’257 patent.” He further explained that when
he said in his testimony that the method of the ’013
patent was “the best I had thought of until then,” he
meant that he “personally had not invented a better way
to produce uniform illumination.”
It is true, as the defendants point out, that a declara-
tion that seeks to withdraw admissions made in a wit-
ness’s deposition is not entitled to weight. Second Circuit
law applies because this is a procedural issue that is not
unique to patent law. See Micro Chem., Inc. v. Lextron,
Inc., 317 F.3d 1387, 1390–91 (Fed. Cir. 2003). The Second
Circuit has held that a party “may not, in order to defeat
a summary judgment motion, create a material issue of
fact by submitting an affidavit disputing his own prior
sworn testimony.” Trans-Orient Marine Corp. v. Star
14 ANVIK CORPORATION v. NIKON PRECISION, INC.
Trading & Marine, Inc., 925 F.2d 566, 572 (2d Cir. 1991).
On the other hand, the Second Circuit has made clear
that this principle does not apply “if the deposition and
the later sworn statement are not actually contradictory.”
Palazzo ex rel. Delmage v. Corio, 232 F.3d 38, 43 (2d Cir.
2000).
In this case, Dr. Jain’s post-deposition declaration
sought to explain and expand upon Dr. Jain’s deposition
testimony. It did not clearly contradict that previous
testimony and therefore should have been considered by
the court in assessing the defendants’ summary judgment
motion.
A second piece of evidence that was before the court in
the summary judgment proceedings was an expert decla-
ration from Dr. Bruce W. Smith, who stated that “beam-
shaper-uniformizers such as the one that constitutes part
of the ’013 patent were well known in the prior art at the
time of filing of the ’013 and ’257 patent applications.”
The ’257 patent’s method, he stated, can be practiced
using many types of illumination systems other than the
single, specific type of illumination system described in
the ’013 patent, and those other types of illumination
systems were well known at the time of filing of the ’257
patent. Dr. Smith described the prior art beam-shaper-
uniformizers in some detail. He added that the same
analysis applies to the illumination source systems dis-
closed in the ’236 and ’240 patents.
The district court should also have considered Dr.
Smith’s expert declaration in connection with the sum-
mary judgment motion. The fact that better alternatives
for practicing the invention may be found in the prior art
cannot establish that an inventor lacked a subjective best
mode. See Bayer, 301 F.3d at 1314. However, Dr. Smith’s
declaration at a minimum served to support Dr. Jain’s
assertion that other, equally effective illumination sources
were quite well known and therefore that he would have
 ANVIK CORPORATION v. NIKON PRECISION, INC. 15
had no reason to focus on a best mode of practicing the
illumination source limitations of the ’257 patent. Both
parties agree that Dr. Jain is more than qualified to be
considered a person of ordinary skill in the art. Thus,
accepting all reasonable inferences in Anvik’s favor, a
finder of fact could conclude that Dr. Jain testified truth-
fully when he claimed that, at the time of the invention,
he was aware of other, equally useful modes of practicing
his invention, even though he was unable to recall them
during his deposition.
Dr. Jain’s reluctance to discuss the ’013 patent at the
March 1991 conference also does not conclusively show
that he regarded it as the best mode. The focus of Dr.
Jain’s conference presentation was on his lithography
method, not the illumination source, and his reluctance to
discuss his illumination system, on which he had a patent
application pending, does not necessarily mean that he
considered it the best illumination option for his lithogra-
phy system. In fact, he testified that one reason he did
not discuss his own idea for an illumination source system
at the 1991 conference was that “several other types of
beam uniformization or illumination systems were possi-
ble.”
There does remain a conspicuous gap in Dr. Jain’s
testimony. Both at his deposition and in his declaration,
he failed to identify any illumination source he deemed
suitable for use in practicing the asserted claims, other
than the one described in the ’013 patent. That omission
may ultimately lead a finder of fact to conclude that Dr.
Jain did, in fact, conceal what he believed to be the best
mode of practicing the invention. At this juncture, how-
ever, that omission is not sufficient, in light of the other
evidence of record, to persuade us that a finder of fact
would be required to find clear and convincing evidence
that Dr. Jain believed the illumination system of the ’013
patent was the best mode for practicing the inventions of
the asserted claims, and that he concealed that best mode
16 ANVIK CORPORATION v. NIKON PRECISION, INC.
from the public. Because a judicial determination of this
factual dispute before trial is premature, we reverse the
grant of summary judgment and remand this case to the
district court for further proceedings.
REVERSED and REMANDED