The U.S. Court of Appeals for the Federal Circuit held that combining multiple sub-parts of a whole does not create a “plurality” for purposes of claim construction, as well as that a device constitutes prior art if an offer of sale is made prior to the invention being ready for patenting as long as the offer remains open through conception.  August Tech. Corp. and Rudolph Techs., Inc. v. Camtek, Ltd., Case No. 2010-1458 (Fed. Cir., Aug. 22, 2011) (Moore, J.).

On appeal, the Federal Circuit reviewed the district court’s construction of “wafer.”  In semiconductor chip manufacturing, a silicon wafer is typically split into pieces called dies, each containing a functional circuit.  The district court construed “wafer” as “a thin slice of semiconductor material with circuitry thereon that is ready for electrical testing, or any part thereof,” based on references made to wafers, in whole or in part, throughout the patent. Following a jury trial in which the patent was found valid and infringed, defendant Camtek appealed the district court’s construction of “wafer” arguing that “a plurality of wafers” meant more than one physically discrete wafer.  Plaintiff August Technology responded that the claims did not require wafers to be physically separate from each other.

The word “wafer” was used multiple times within the claim, including in limitations requiring “a wafer test plate,” “a wafer provider” and “a plurality of known good quality wafers.”  The Court rejected the district court’s construction in so far as it defined a wafer as any portion of a wafer having two or more dies.  The claim distinguished between “wafer” and “wafers,” and ignoring the differences between the singular and plural terms would render them superfluous.  In view of the new construction, the Court vacated the infringement finding and remanded the case for further proceedings.

The Court also considered whether an invention must be ready for patenting at the time an alleged offer for sale is made.  At trial, the jury had been instructed that “[i]n order to be on ‘sale’ the NSX-80 must also have been ready for patenting at the time of the alleged offer for sale is made.”  Customers placed orders for the product prior to the critical date, but the order shipped two months after the critical date.  Under these circumstances, the jury found that the NSX-80 was not on sale under 102(b).

The Federal Circuit found the jury’s instruction incorrect as a matter of law.  For purposes of the on-sale bar, the Pfaff test requires that the product be the subject of a commercial offer for sale and that the invention be ready for patenting.  An invention cannot be offered for sale prior to conception, so if an offer is made and retracted prior to conception, there has been no offer for sale.  However, if an offer for sale is extended and remains open, a subsequent conception will cause it to become an offer for sale as of the conception date.  To find otherwise would read out the second prong of Pfaff.

Despite finding the instruction incorrect, the Court affirmed the district court’s denial of judgment as a matter of law (JMOL) and new trial on invalidity because even if prior art, the NSX-80 would not have rendered the claims of the patent obvious.