KAWASAKI JUKOGYO KABUSHIKI KAISHA v. RORZE CORPORATION (2025)

ORDER RE: MOTION FOR JUDGMENT ON THE PLEADINGS, RULE 702 MOTION, AND CROSS-MOTIONS FOR SUMMARY JUDGMENT

This case involves a set of patents related to the handling of silicon wafers used in semiconductor manufacturing. Now before the Court are several motions. For the reasons stated herein, plaintiff Kawasaki Jukogyo Kabushiki Kaisha's motion for partial summary judgment is granted in part and denied in part and its motion to exclude expert testimony is granted in part and denied in part. Defendant Rorze Corporation's motions for summary judgment and for judgment on the pleadings are denied.

BACKGROUND

I. Patented technology

The patents at issue in this case relate to robots used in the manufacture of semiconductor chips. These chips are created from thin wafers of crystalline silicon that need to be kept clean and free from interference during the chipmaking process. To accomplish this, wafers are transported in specialized pods as they move between the different pieces of equipment used throughout the manufacturing process. These are called front opening unified pods, or FOUPs. As the name suggests, FOUPs have front openings—doors that allow access to the wafers inside.

The patented robots in this case carry silicon wafers within machines known as “wafer transfer apparatuses” that transfer the wafers from the FOUPs to other connected machines that perform different parts of the manufacturing process. The front wall of a wafer transfer apparatus has corresponding openings with doors (often called an equipment front end module or EFEM) to which a FOUP can dock from the outside. When the corresponding FOUP and apparatus doors line up, a “FOUP opener” opens both doors so that the robot inside the interface space can access the wafers. Once the FOUP attaches and the FOUP opener removes the doors, a robot arm can take a wafer out of the pod and carry it through an enclosed atmosphere-controlled “interface space” to another part of the station for processing. The robot arm then carries the wafer back to the FOUP so that it can move to the next station. The sealed interior of the processing station is kept clean using air filters and other equipment.

The patents at issue here cover a specific arrangement of and spatial relationship between the component parts referenced above that, when assembled in the manner disclosed by the patents, improve upon prior iterations of the technology. For example, the robots have movable arms that pivot around a single fixed axis. The robot arm is made up of several rotating “link members” which ultimately connect to a “robot hand” that can hold wafers. Like a human arm, these link members can either extend to increase reach or fold in on themselves to take up less space. Having a single pivot axis instead of a different type of transport mechanism (like one that slides throughout the enclosed processing space) reduces the amount of movement. This helps keep the wafers clean by minimizing the scattering of dust. The use of rotating link members can also increase the length and reach of the robot arm while reducing the risk that the arm will collide with other parts of the equipment.

The FOUP opener poses a particular collision risk. Because both the FOUP opener and the robot arm operate within the interface space, there is a risk that the robot arm will accidentally hit the FOUP opener. The patents aim to limit collisions by setting the maximum length of the robot arm such that, when the robot arm is in its collapsed state, the arm is not long enough to enter the area within which the FOUP opener operates, which the patents term the “robot invasion restricted region.”

The longer robot arm coupled with the reduced collision risk enables the patent holder to manufacture a wafer transfer apparatus with four FOUP openers as opposed to only one or two. The patents disclose that using four FOUP openers enhances the working efficiency of the wafer transfer robots.

II. Patent prosecution history

There are five asserted patents in this case. They are U.S. Reissue Patent Nos. RE45,772; RE46,465; RE47,145; RE47,909; and RE48,031. These patents are owned by Kawasaki and are reissues of U.S. Patent No. 7,874,782, which was issued on January 25, 2011.

In July 2007, Yasuhiko Hashimoto—Kawasaki's current president—applied as sole inventor for a U.S. patent based on an earlier July 2006 application for a patent in Japan. This application ultimately became the ’782 U.S. patent, which was assigned to Kawasaki and is the parent patent for every reissue patent asserted in this case.

The initial version of claim 1 in this patent application involved a “wafer transfer apparatus” that would transfer a wafer carried in a transport pod within an enclosed processing station. The claim explains how this enclosed station has front and rear walls “arranged at a predetermined interval,” each with an opening for access. The front wall has a FOUP opener that can open and close the transport pod when it docks to the processing station. The “wafer carrying robot” is located inside the interface space and is set up to move wafers between the front and rear openings. The robot itself is fixed to the floor and rotates around a predetermined pivot axis. The robot arm is made up of several rotating “link members” which ultimately connect to a “robot hand” that can hold wafers. Claim 1 explains how the dimensions of this robot arm should be set:

[I]n a minimum transformed state where the robot arm is transformed such that a distance defined from the pivot axis to an arm portion which is farthest in a radial direction relative to the pivot axis is minimum, a minimum rotation radius R, as the distance defined from the pivot axis to the arm portion which is the farthest in the radial direction relative to the pivot axis, is set to exceed 1/2 of a length B in the forward and backward directions of the interface space, the length B corresponding to a length between the front wall and the rear wall of the interface space forming portion, and is further set to be equal to or less than a subtracted value (B – L0) to be obtained by subtracting a distance L0 in the forward and backward directions from the rear wall of the interface space forming portion to the pivot axis, from the length B in the forward and backward directions of the interface space (i.e., B/2 < R ≤ B – L0).

In other words, when the robot arm is folded in on itself into its smallest possible state, the maximum length between the arm's pivot axis and its furthest point is R. The distance between the pivot axis and the back wall is L0. And the front-back depth of the inside of the processing station is B. According to this claim, R must be greater than half of B, but also less than the distance between the pivot axis and the front wall (which is B – L0). If R was longer than that, the arm would not be able to rotate without hitting the front wall, even when collapsed.

In April 2010, the U.S. patent office provisionally rejected claims 1 through 8 of this application. The office concluded that the claims were unpatentable over three earlier patents and other disclosures by Mr. Hashimoto. These three prior patents included a Japanese patent issued to Imahashi Kazunari (Pub. No. 2003-179120), another Japanese patent issued to Tokunaga Kenji (Pub. No. 2003-45933), and a U.S. patent issued to Satish Sundar (Pub. No. 2005/158153, Patent No. 7,226,269). According to the patent examiner, the Kazunari patent already taught “a wafer transport with an interface space, FOUP opener, [and] wafer carrying robot with arm links and drives.” The Kenji patent showed these same items, as well as “more detail of a FOUP opener.” And the Sundar patent showed these same items with “4 FOUPs and the dimensional and length requirements.” The examiner believed that the Kazunari patent already taught all of the claimed limitations and relative dimensions set out in Mr. Hashimoto's application. The examiner also noted that “over the prior art ․ the only differences are dimensional optimization from routine experimentation for a desired configuration of known items.” This rendered the application's claims “unpatentable” and “obvious” because a skilled artisan would know to try modifying the inventions shown in these prior patents or could have achieved Mr. Hashimoto's goal of optimizing the device through “routine experimentation” regarding its layout and dimensions.

Following the patent office's provisional rejection of claims 1–8, Mr. Hashimoto submitted an amendment to his application. The amended version of claim 1 adds the following language regarding the radius R of the robot arm:

R is set to be equal to or less than an allowable length (B – L0 – E) to be obtained by subtracting the distance L0 ․ from the rear wall ․ to the pivot axis and a length E of a robot invasion restricted region, which is set for the FOUP opener and is measured from the front wall ․, from the length B ․ (i.e., R < B – L0 – E).

The key addition here is the length E, defining a “robot invasion restricted region.” With this addition, the collapsed robot arm is kept short enough to not only avoid colliding with the wall but also stay out of the robot invasion restricted region. This distance, as the amended language explains, is set by reference to the FOUP opener located at the front wall.

Mr. Hashimoto submitted remarks with this proposed amendment. After specifically discussing the prior rejection of Mr. Hashimoto's application as unpatentable over the Kazunari, Kenji, and Sundar patents, he argued that “the applied references fail to disclose or render obvious ․ a wafer transfer apparatus” featuring a robot arm with a radius determined based on a robot invasion restricted region as set out in the amended version of claim 1. He then stated that “[i]n view of the pitfalls and teachings of the applied art, it is clear that there is no contemplation of a specifically defined robot invasion restricted region,” and that “[a]s such, there can be no teachings within the applied art that render obvious the calculation of a minimum rotation radius as claimed as a function of the robot invasion restricted region.”

Shortly thereafter, in October 2010, the examiner responded to Mr. Hashimoto's proposed amendment with a notice of allowability stating that claims 1 and 3 through 15 as amended would be allowed. The examiner stated that “[t]he prior art taken as a whole does not show nor suggest all of the claimed limitations.” He noted that the Kazunari patent was the “closest prior art” but that it “does not include all of the claimed limitations.”

The ’782 patent based on Mr. Hashimoto's application was issued in January 2011. All of the patents asserted in this case are reissues of the ’782 patent. They include U.S. Reissue Patent Nos. RE45,772; RE46,465; RE47,145; RE47,909; and RE48,031. The reissue applications were filed between 2013 and 2018, and the reissue patents were issued between 2015 and 2020.

RE772 is particularly relevant to the pending motions. Kawasaki filed the reissue application of the ’782 patent that would later issue as the RE772 in January 2013. In February 2014, the examiner rejected the application as obvious in light of prior art, including the “applicant's own disclosure.” (Dkt. No. 216-5, at 14). Kawasaki responded in July 2014 that the prior art references cited by the patent office do not “disclose[ ] or suggest[ ] calculating a minimum rotation radius based on a robot invasion restricted region.” (Dt. No. 216-6, at 5). The patent office rejected this argument and stated that “there are only the original patented claims as found in the parent patent, [thus] it is unclear the purpose of this reissue application.” In December 2014, Kawasaki responded by applying for the addition of language that would further define the “Second Inequality” (R≤B-L0-E) in Claims 1, 7, 8, and 14:

wherein the robot invasion restricted region is defined by a distance which the FOUP opener moves in the forward and backward directions of the interface space, wherein the FOUP opener opens and closes an opener-side door and a FOUP-side door

In support of this amendment, Mr. Hashimoto filed a declaration with the patent office stating his belief that the ’782 patent was “wholly or partly inoperative or invalid by reason of the patent claiming more than I had the right to claim ․ [because] claim 1 does not define the structure of the robot invasion restricted region.” The patent office accepted Kawasaki's proposed amendments and issued RE772 in October 2015.

In June 2017, Kawasaki notified Rorze that it believed Rorze's products infringed the RE772 patent. The parties exchanged correspondence over the following five years, during which time the patent office issued, in chronological order, the RE465, RE145, RE909, and RE031 patents. The RE145 and RE031 patents include the amended Second Inequality language and the RE465 and RE909 patents do not. After the parties were unable to reach a resolution, Kawasaki filed this lawsuit in August 2022.

III. Case Posture

The Court has rendered multiple substantive orders in this case, two of which are pertinent to this order.

First, in April 2024 the Court issued a claim construction order that construed nine different terms identified by the parties, including—as relevant here—the term “robot invasion restricted region.” See Kawasaki Jukogyo Kabushiki Kaisha v. Rorze Corp., 732 F. Supp. 3d 1038 (N.D. Cal. 2024). In line with the parties’ positions, the Court construed the disputed terms, including robot invasion restricted region, as having the same meanings across all five asserted patents. See id. at 1053.

Second, the Court issued an order dismissing Rorze's counterclaims, including counterclaims related to patent prosecution laches and improper reissue. See Kawasaki Jukogyo Kabushiki Kaisha v. Rorze Corp., 737 F. Supp. 3d 770, 780–81 (N.D. Cal. 2024). Because “the standard for pleading affirmative defenses ․ is less stringent than the standard for pleading counterclaims,” however, the Court declined to dismiss Rorze's affirmative defenses. Id. (citing Threshold Enters. Ltd. v. Lifeforce Digit. Inc., 730 F. Supp. 3d 940, 946 (N.D. Cal. 2024)).

This order addresses four of the motions currently pending before the Court:

• Rorze's motion for judgment on the pleadings;

• Kawasaki's evidentiary objections to the opinion of Rorze's expert Dr. Hooper;

• Rorze's motion for summary judgment; and

• Kawasaki's motion for partial summary judgment.

Rorze's motion for judgment on the pleadings and motion for summary judgment ask the Court to dispose of the case entirely on the ground that the patents at issue are invalid or, alternatively, to enter judgment in Rorze's favor on Kawasaki's claim for willful infringement. Kawasaki's motion for partial summary judgment seeks judgment in its favor on Rorze's remaining affirmative defenses.

RORZE'S MOTION FOR JUDGMENT ON THE PLEADINGS

In moving for judgment on the pleadings, Rorze contends that the claims in Kawasaki's asserted patents are directed to an abstract idea and thus ineligible to be patented under 35 U.S.C. § 101. For the following reasons, Rorze's motion is denied.

I. Legal standards

“Judgment on the pleadings is proper when the moving party clearly establishes on the face of the pleadings that no material issue of fact remains to be resolved and that it is entitled to judgment as a matter of law.” Hal Roach Studios, Inc. v. Richard Feiner & Co., Inc., 896 F.2d 1542, 1550 (9th Cir. 1990). A motion for judgment on the pleadings under Rule 12(c) is subject to the same standard as a Rule 12(b)(6) motion to dismiss. Dworkin v. Hustler Mag., Inc., 867 F.2d 1188, 1192 (9th Cir. 1989). The Court may look beyond the pleadings and “consider facts that ‘are contained in materials of which the court may take judicial notice.’ ” Heliotrope Gen., Inc. v. Ford 7 Motor Co., 189 F.3d 971, 981 n.18 (9th Cir. 1999) (quoting Barron v. Reich, 13 F.3d 1370, 1377 (9th Cir. 1994)). But the Court will view the facts and inferences drawn from the pleadings in the light most favorable to the non-moving party. See Manzarek v. St. Paul Fire & Marine Ins. Co., 519 F.3d 1025, 1031 (9th Cir. 2008).

Under 35 U.S.C. § 101, “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” is patentable. This broad provision has an important exception, however: “Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 216, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014). A patent is “not rendered ineligible ․ simply because it involves an abstract concept.” Id. at 217, 134 S.Ct. 2347. But if a patent does involve an abstract concept, it must apply that concept “to a new and useful end.” Id.

Alice establishes a two-step test for determining patent eligibility under 35 U.S.C. § 101. 573 U.S. at 217, 134 S.Ct. 2347. The first step is “determin[ing] whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If they are not, the inquiry ends. But if the patent is directed to an abstract idea or other patent-ineligible concept, the court proceeds to the second step: “determin[ing] whether the additional elements [of the claim] transform [its] nature ․ into a patent-eligible application.” Id. (cleaned up). This inquiry involves “a search for an inventive concept ․ sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.” Id. (cleaned up).

Patents are “presumed valid.” 35 U.S.C. § 282(a). The “burden of establishing invalidity” rests on the party asserting it. Id. This requires “clear and convincing evidence.” Microsoft Corp. v. i4i Ltd. P'ship., 564 U.S. 91, 95, 131 S.Ct. 2238, 180 L.Ed.2d 131 (2011). Eligibility “is a question of law” with “underlying questions of fact.” Simio, LLC v. FlexSim Software Prods., Inc., 983 F.3d 1353, 1358–59 (Fed. Cir. 2020). Patent eligibility can only be “determined on the pleadings ․ when there are no factual allegations that, when taken as true, prevent resolving the eligibility question as a matter of law.” Data Engine Techs. LLC v. Google LLC, 906 F.3d 999, 1007 (Fed. Cir. 2018).

II. Analysis

Rorze argues that the Asserted Claims are directed to the abstract idea of “collision avoidance in a closed space” and are therefore ineligible to be patented under 35 U.S.C. § 101. Rorze's argument relies on the premise that Kawasaki's Asserted Patents do nothing more than cobble together an assortment of existing products and apply a simple mathematical relationship to achieve the singular (and abstract) innovation of “collision avoidance.”

As an initial matter, Rorze errs in construing one of the benefits that flow from the patents’ innovation as the innovation itself. Claim 1 of the asserted patents discloses a wafer transfer apparatus comprised of numerous physical components. These components include “an interface space” defined by a specific dimensional arrangement; a FOUP opener that “open[s] and close[s] the substrate container”; and a “wafer carrying robot” that includes a “base,” a “robot arm” with a series of “link members,” and a “drive unit” that moves the robot arm. RE772, 29:66, 30:1–27. The claim discloses constraints upon each of these physical components. One illustrative constraint is the limitation upon the robot arm. The robot arm's rotational radius must be longer than one-half of the length of the interface space but shorter than the difference between the length of the interface space and the distance between the rear wall and pivotal axis. And the maximum length of the robot arm cannot exceed the length of the interface space when subtracting the length of the robot invasion restricted region from the length of the interface space. See id. at 30:28–44. These constraints supply a key innovation of the asserted patents and in turn fix and improve upon certain problems and deficiencies associated with prior art. For example, while Rorze is correct that the patents’ mathematical relationship enables the wafer transfer apparatus to avoid collision within a closed space, see id. at 5:51–53, this relationship also allows the wafer transfer apparatus to include four FOUPs instead of one or two, id. at 8:9–32, suppresses dust in the interface space, id. at 3:32–33, increases the operational range for the robot arm, id. at 4:40–42, and eliminates the need for “the robot to run in the left and right directions,” id. at 9:40–44. By focusing solely on collision avoidance, Rorze confuses one of the innovations’ improvements for the patented innovation itself.

Given the misdirected thrust of Rorze's argument, it is unsurprising that its motion fails at Alice’s first step. Contrary to Rorze's suggestion, the patents are not directed at the abstract idea of “collision avoidance.” Rather, by their plain language, the patents address the non-abstract idea of “[a] wafer transfer apparatus for transferring a wafer[.]” RE772, 29:66. To be certain, the patents disclose a specific spatial assembly for the components of said wafer transfer apparatus. But the mere fact that seemingly abstract outcomes may result from that spatial arrangement does not therefore render the patents’ subject matter abstract.

The Federal Circuit's recent decision in US Synthetic Corp. v. Int'l Trade Comm'n, 128 F.4th 1272 (Fed. Cir. 2025), is instructive in this regard. That case involved Polycrystalline Diamond Compact (PDC), a composition of polycrystalline diamond table bonded to a substrate for use in drill bits and other machinery. Bonding the diamond table with the substrate requires intense pressure, high temperature, and a corrosive catalyst that had a penchant for causing undesirable side effects. Acid “leaching” reduced those side effects but was time intensive and often weakened the strength of the diamond table. The patent sought to address the undesirable side effects of the catalyst without requiring leaching. Although the patent disclosed a manufacturing process that omitted leaching, the patent claims themselves were directed to the composition of the matter in the PDC itself. See id. at 1279. Indeed, the patent disclosed specific figures for coercivity, magnetic saturation, permeability, and the relationship of those figures to the claimed PDC. Id.

The International Trade Commission deemed the subject matter of the patent's claims unpatentable, reasoning that the claims were directed to the abstract idea of “PDCs that achieve ․ desired magnetic ․ results, which ․ may be derived from enhanced diamond-to-diamond bonding.” Id. at 1280. The Federal Circuit reversed, holding that it was error for the Commission to conclude that the patent's disclosed relationship between the magnetic properties and the PDC was “so loose and generalized that the claimed limitations appear to be little more than side effects.” Id. at 1280. Instead, the Federal Circuit concluded that the patent was directed to a “specific, non-abstract composition of matter ․ that is defined by its constituent elements, ․ particular dimensional information, ․ and quantified material properties ․ whereby the material properties correlate to the diamond table's structure and thereby further inform a skilled artisan about what the claimed PDC is.” Id. at 1282. The patent's disclosure of “properties [that] define the structural characteristics of the claimed product” did not “merely represent some speculative goal of, for example, a stronger PDC.” Id. at 1284. Instead, the “disclosed relationship” defining the “magnetic properties and the physical characteristics of the PDC composition” was “sufficient for § 101[.]” Id. at 1283.

This case is analogous in many respects. For example, just as the just as the patented composition of PDC matter reduced the need for leaching and in turn the weakened diamond table that resulted from leaching, the constraints upon the robot arm radius eliminate the need for a “running” arm, thereby solving the problem of “scattering of dust[.]” RE772, 23:16–17. Further, the spatial relationship between the components reduces the “possibility of collision of the robot arm with the ․ FOUP opener.” Id. at 23:11–13. These are just two of the numerous improvements upon prior art disclosed by the asserted claims that go well beyond a mere “speculative goal of” collision avoidance. US Synthetic Corp., 128 F.4th at 1284.

The mere fact that a key innovation of Kawasaki's patents is a mathematical and spatial relationship of physical components does not render the patent abstract. Indeed, as in US Synthetic Corp., Kawasaki's asserted claims “are directed to a specific, non-abstract” device (the wafer transfer apparatus) “that is defined by its constituent elements” (FOUP opener, robot arm, link members, drive unit), “particular dimensional information” (RIRR, interface space), “and quantified [spatial] properties” (R

Rorze relies on ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759 (Fed. Cir. 2019), but that case undermines its theory. In ChargePoint, the Federal Circuit considered a patent involving networked electric-vehicle-charging stations. The patent took an existing and conventional product—a charging station—and implemented the idea of network control. See id. at 768. “Notably, however, the specification never suggest[ed] that the charging station itself [was] improved from a technical perspective, ․ that it would operate differently[,] ․ [or] that the invention involved overcoming some sort of technical difficulty.” Id. Rorze relies on this language to argue that Kawasaki's patent applies an abstract concept to generic components without improving those components. But, as discussed above, the asserted patents disclose clear technical improvements that Kawasaki deployed to “over[come] ․ technical difficult[ies].” Id. The restriction upon the robot arm's radius allows for a centrally stationed arm, four FOUP openers, and a cleaner interface space. See, e.g., RE772, 3:32–31, 4:40–41, 5:26, 9:40–44. In other words, these constraints provide a “technological solution to a technological problem” allowing the wafer transfer apparatus and its associated components “to operate differently than it otherwise could.” Contour IP Holding LLC v. GoPro, Inc., 113 F.4th 1373, 1380 (Fed. Cir. 2024) (internal citation omitted).

Because the asserted claims are not directed to an abstract idea, Rorze's argument fails at Alice’s first step. But even were this not the case, Rorze's motion would fail at Alice’s second step because its argument depends on disputed facts. For example, Rorze argues that the asserted patents merely apply an abstract idea to conventional or generic components like the FOUP opener, robot invasion restricted region, and robot arm. But the patent discloses these only as “related art” and says nothing about whether those components were well-understood at the time of patenting. “Whether the claim elements or the claimed combination are well-understood ․ is a question of fact ․ [that] cannot be answered adversely to the patentee ․ on a motion [challenging the sufficiency of the pleadings].” Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1128 (Fed. Cir. 2018).

KAWASAKI'S RULE 702 MOTION

I. Legal Standards

The admissibility of expert testimony in a civil proceeding is governed by Fed. R. Evid. 702, which states:

A witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if the proponent demonstrates to the court that it is more likely than not that: (a) the expert's scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue; (b) the testimony is based on sufficient facts or data; (c) the testimony is the product of reliable principles and methods; and (d) the expert's opinion reflects a reliable application of the principles and methods to the facts of the case.

The Ninth Circuit has “interpreted Rule 702 to require that expert testimony ․ be both relevant and reliable.” Barabin v. AstenJohnson, Inc., 740 F.3d 457, 463 (9th Cir. 2014) (internal citations and quote marks omitted). Relevancy requires “the evidence ․ logically advance a material aspect of the party's case.” Id. (citation omitted). Reliability encompasses “whether an expert's testimony has a reliable basis in the knowledge and experience of the relevant discipline.” Id. (quoting Kumho Tire Co. Ltd. v. Carmichael, 526 U.S. 137, 149, 119 S.Ct. 1167, 143 L.Ed.2d 238 (1999)). When a party challenges the reliability of an expert's methodology, courts apply the Rule's “preponderance standard” to decide whether “it is more likely than not the proffered testimony meets the admissibility requirements set forth in the rule.” Fed. R. Evid. Advisory committee's note to 2023 amendment. See also Bourjaily v. United States, 483 U.S. 171, 175, 107 S.Ct. 2775, 97 L.Ed.2d 144 (1987) (“The preponderance standard ensures that before admitting evidence, the court will have found it more likely than not that the technical issues and policy concerns addressed by the Federal Rules of Evidence have been afforded due consideration.”).

The role of the court is not to determine the “correctness of the expert's conclusions but the soundness of his methodology.” Id. (quoting Primiano v. Cook, 598 F.3d 558, 564 (9th Cir. 2010)). The court must “screen the jury from unreliable nonsense opinions, but not exclude opinions merely because they are impeachable.” Alaska Rent-A-Car, Inc. v. Avis Budget Grp., Inc., 738 F.3d 960, 969 (9th Cir. 2013). Simply put, “[t]he district court is not tasked with deciding whether the expert is right or wrong, just whether his testimony has substance such that it would be helpful to a jury.” Id. at 969–70. “Shaky but admissible evidence is to be attacked by cross examination, contrary evidence, and attention to the burden of proof, not exclusion.” Primiano, 598 F.3d at 564.

“An opinion is not objectionable just because it embraces an ultimate issue.” Fed. R. Evid. 704. While testimony on an ultimate issue is not “per se improper[,] ․ an expert witness cannot give an opinion as to her legal conclusion, i.e., an opinion on an ultimate issue of law.” Hangarter v. Provident Life and Acc. Ins. Co., 373 F.3d 998, 1016 (9th Cir. 2004) (quoting Mukhtar v. Cal. State Univ., Hayward, 299 F.3d 1053, 1066 n. 10 (9th Cir. 2002)) (emphasis omitted).

II. Kawasaki's motion to exclude the testimony of Dr. Hooper is granted in part.

Rorze's technical expert Dr. Hooper has extensive experience in the automation industry. He has held roles in robotics research, semiconductor wafer handling, and automated manufacturing equipment design. This specialized experience makes him generally qualified to opine on matters related to semiconductor wafer handling robots. To prepare his report, he reviewed dozens of documents including the asserted patents, the parties’ claim construction briefs and the Court's claim construction order, prior art, details of the asserted patents’ prosecution histories, and depositions of certain witnesses in this case. Dr. Hooper's report purports to provide his opinions regarding the obviousness of the asserted claims as well as whether the claims are invalid “for failing to meet certain requirements for patents.”

Kawasaki moves to exclude three aspects of Rorze's report and to limit Dr. Hooper's testimony on those matters. Specifically, Kawasaki moves to exclude Dr. Hooper's opinions relating to (1) enablement, (2) Rorze's state of mind, and (3) the prosecution of patent RE671.

A. Dr. Hooper may testify about whether the asserted patents lack enablement.

Paragraphs 404 through 407, 415 through 419, and 431 through 434 of Dr. Hooper's opening report contain opinions regarding the alleged lack of enablement of terms in the asserted claims. Specifically, his opinion discusses the FOUP opener, front wall, and robot invasion restricted region. Kawasaki argues that Dr. Hooper's opinions are overly conclusory, do not apply the required legal framework, and are both unreliable and unhelpful to a jury. Though these sections of Dr. Hooper's report verge on being overly conclusory, they contain facts that indicate their reliability and ultimate helpfulness at trial.

Kawasaki first argues that Dr. Hooper's testimony is unreliable because it does not include a detailed analysis of the Wands factors.¹ Although it is true that Rorze must prevail under In re Wands to successfully mount a lack of enablement defense, Kawasaki does not cite any authority for the proposition that Rorze's expert must himself analyze the Wands factors for his testimony to be admissible. Although Dr. Hooper's analysis might be more helpful if it were organized according to the eight Wands factors, the above-cited paragraphs of the report contain statements that clearly relate to enablement and the Wands factors.

Nor is this section of Dr. Hooper's report so conclusory as to render it unreliable. To be certain, as Kawasaki notes, there are sections of Dr. Hooper's analysis that are almost entirely conclusory, such as his statement that experimentation with vertical-only FOUP opener movement would be unpredictable without an accompanying explanation as to why that is so. But the sections of the report preceding these paragraphs include detailed discussions of the asserted patents, Dr. Hooper's opinion of who constitutes a person of ordinary skill in the art, and the prior art. And in his discussion of enablement, he often references these sections of his report. Thus, the enablement sections of Dr. Hooper's report “reflect[ ] a reliable application” of his expertise to the question of enablement. Fed. R. Evid. 702(d). And the enablement section, when considered as part of the report as a whole, reflects an opinion that will likely be helpful to a jury in making factual determinations as to lack of enablement. Kawasaki's motion to exclude this portion of Dr. Hooper's testimony is therefore denied.²

B. Dr. Hooper cannot testify about Rorze's state of mind.

Paragraphs 216 and 221 through 223 of Dr. Hooper's rebuttal report contain opinions about Rorze's state of mind as it relates to Kawasaki's claim of induced infringement. These opinions are improper for two reasons.

First, Dr. Hooper has been disclosed as an expert in robotics and semiconductor wafer handling. His report does not detail any specific expertise in business, corporate decision-making, patent licensing agreements, or anything else that might qualify him to opine on the state of mind of a business entity. This opinion is therefore unreliable because it is not based upon Dr. Hooper's “knowledge and experience of the relevant discipline.” Barabin, 740 F.3d at 463. Rorze counters that Dr. Hooper's report provides his own understanding of the evidence that underlies Rorze's state of mind. But again, Dr. Hooper has not been disclosed as having the sort of expertise that renders him qualified to opine as to how such evidence relates to Rorze's state of mind.

Second, and more fundamentally, “[c]ourts routinely exclude expert testimony as to intent, motive, or state of mind as issues better left to a jury.” Gold v. Lumber Liquidators, Inc., 323 F.R.D. 280, 294 (N.D. Cal. 2017); see Siring v. Oregon State Bd. of Higher Ed. ex rel. E. Oregon Univ., 927 F. Supp. 2d 1069, 1077 (D. Or. 2013) (collecting cases). Where an expert provides testimony related to state of mind, that opinion does nothing more than “draw[ ] ․ an inference from the facts of the case.” Siring, 927 F. Supp. 2d at 1077. The jury is perfectly capable of reviewing relevant evidence and testimony presented by the parties and then drawing its own inferences as to state of mind. Allowing an expert to testify as to a party's state of mind substitutes the opinion of the expert for the judgment of the jury. This sort of testimony lacks the “substance ․ that ․ would be helpful to a jury.” Alaska Rent-A-Car, Inc., 738 F.3d at 969. Dr. Hooper therefore cannot testify as to Rorze's state of mind.³

C. Dr. Hooper cannot testify about the prosecution history of RE671.

Paragraphs 109 through 112 of Dr. Hooper's reply report contain opinions related to the prosecution of RE671. These opinions are improper for three reasons.

First, in his expert report Dr. Hooper explicitly states that he is “not an expert on the patent system and will not be qualified to render legal opinions on the effect of the prosecution history[.]” He then proceeds to attack as both unfair and misplaced the opinions of Kawasaki's expert that rely upon the prosecution history. But having admitted that he lacks any sort of expertise in patent prosecution, Dr. Hooper is unqualified to opine on such matters. Doing so would offer the jury an unreliable opinion.

Second, in opining on various aspects of the prosecution history, Dr. Hooper admits that he “was informed by counsel that Rorze's ․ invalidity contentions” were not presented to the USPTO in a manner intended to help the examiner understand prior art. Aside from the issues associated with an expert's testimony on a party's intent, this statement reveals that Dr. Hooper's testimony is not based on his own expertise but instead on the opinion of counsel. Cf. Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005) (“Attorney argument is no substitute for evidence.”).

Third, when deposed about this section of his expert report, Dr. Hooper confirmed that he had in fact never read Rorze's invalidity contentions. Despite not having read those documents, he opines at length about them and their relation to the patent prosecution history. Such an admission renders his testimony unreliable.

These statements in Dr. Hooper's report, taken together, demonstrate that Dr. Hooper's opinion regarding the prosecution of RE671 is unreliable because it is not based upon his “scientific, technical, or other specialized knowledge.” Fed. R. Evid. 702. He is therefore barred from presenting such testimony at trial.

CROSS MOTIONS FOR SUMMARY JUDGMENT

I. Legal Standards

Courts may grant summary judgment “if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a). A factual dispute is genuine “if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). A dispute is material if it “might affect the outcome of the suit under the governing law.” Id.

The moving party bears the initial burden to demonstrate a lack of genuine factual dispute. Celotex v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). “When the nonmoving party has the burden of proof at trial, the moving party need only point out ‘that there is an absence of evidence to support the nonmoving party's case.’ ” Devereaux v. Abbey, 263 F.3d 1070, 1076 (9th Cir. 2001) (quoting Celotex Corp., 477 U.S. at 325, 106 S.Ct. 2548). The burden then shifts to the nonmoving party to “provide affidavits or other sources of evidence that ‘set forth specific facts showing that there is a genuine issue for trial.’ ” Devereaux, 263 F.3d at 1076 (quoting Fed. R. Civ. P. 56(e)). Courts “must view the evidence presented through the prism of the substantive evidentiary burden.” Anderson, 477 U.S. at 254, 106 S.Ct. 2505. “The evidence of the non-movant is to be believed, and all justifiable inferences are to be drawn in his favor.” Id. at 255, 106 S.Ct. 2505.

II. Analysis

A. Rorze's motion is denied.

Rorze moves for summary judgment on five grounds: (1) that its products do not literally infringe the asserted claims, (2) that the asserted claims are invalid as obvious combinations of prior art, (3) that the patents lack enablement and are therefore invalid, (4) that the patents lack sufficient written description and are therefore invalid, and (5) that Kawasaki has not met its burden to produce evidence that could lead a jury to show that the alleged infringement was intentional.

1. Non-Infringement

Rorze argues, based upon the undisputed facts and the Court's claim construction order, that its products do not literally infringe on Kawasaki's asserted claims. “Literal infringement requires the patentee to prove that the accused device contains each limitation of the asserted claim(s). If any claim limitation is absent from the accused device, there is no literal infringement as a matter of law.” Bayer AG v. Elan Pharm. Rsch. Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000) (internal citation omitted). Thus, if Rorze can demonstrate that its accused products lack even one limitation contained in Kawasaki's asserted claims, it is entitled to summary judgment. Because Rorze's motion is at odds with the Court's claim construction, its motion is denied.

Rorze argues that its products lack a robot invasion restricted region, one of the key limitations in the asserted claims. The Court previously construed the robot invasion restricted region to mean “the region extending the distance E in the forward-backward direction measured from the interior surface of the front wall, where E is the farthest distance any part of the FOUP opener mechanism extends into the interface space (including while moving).” Kawasaki, 732 F. Supp. 3d at 1054. This definition necessarily contemplates a region of space that is defined by the extension of the FOUP opener beyond the interior wall and into the interface space. Rorze argues that the FOUP openers in its accused products do not extend beyond a front wall and that its products therefore lack a robot invasion restricted region.

In support of its argument, Rorze filed a series of technical specifications and diagrams of its accused products. Unlike the diagrams in Kawasaki's asserted patents, which show a single interior surface of the front wall beyond which the FOUP openers extend, Rorze's diagrams show two structures: a “bolts pane” beyond which the FOUP openers extend permanently and a “load port rear cover” behind which the FOUP openers sit permanently. In other words, the FOUP openers sit in front of the bolts pane but behind the load port rear cover, which Rorze argues protects them from collision with the robot arm in much the same way that the robot invasion restriction region operates in the asserted claims. Rorze argues that the load port cover comprises the “interior surface of the front wall” for the purposes of the Court's claim construction order and that, because Rorze's FOUP openers do not extend beyond this structure, its products do not contain a robot invasion restriction region.

Kawasaki responds by asserting that Rorze's motion depends upon a dispute of fact. But Kawasaki's assessment of the dispute is not quite right. Although both parties submitted expert reports offering different opinions regarding what constitutes the interior surface of the front wall in Rorze's accused products, the experts do not disagree as to the relevant features of the accused products. Both experts agree that the accused products include a bolts pane and a load port rear cover, that the FOUP opener does not extend beyond the load port rear cover, and that the load port rear cover does not span the full height of the interface space. Rather than disagreeing about the products’ specifications, the experts disagree about how the Court's claim construction order applies to the accused products. And “[w]here the parties do not dispute any relevant facts regarding the accused product ․ [and] disagree [only] over possible claim interpretations, the question of literal infringement collapses into claim construction[.]” Gen. Mills, Inc. v. Hunt-Wesson, 103 F.3d 978, 983 (Fed. Cir. 1997). Rorze's motion therefore cannot be denied simply on the basis of any purported disputes of material fact.

Instead, the problem with Rorze's argument is that it is at odds with the language of the patents and the Court's claim construction order. The Court previously construed “an interface space” to mean “the volume enclosed by the six walls of the interface space forming portion, not including the volume of any openings in those walls.” Kawasaki, 732 F. Supp. 3d at 1047. For an object to qualify as the “interior surface of the front wall,” it must therefore enclose the interface space by partitioning it from the exterior space. Any other definition would contradict the specification's description of “a rectangular parallelepiped” interface space. Id. Rorze's motion, the accompanying diagrams, and the expert testimony all recognize that load port rear cover has openings at its top and bottom and thus hides “most” (but not all) of the bolts pane. Behind the openings sits the bolts pane, which itself extends the full height of the interface space. Classifying a structure that does not extend the full height of the interface space as the front wall's interior surface would render the interface space as “a shape more akin to a Lego brick than a box.” Id. That in turn would transform “the length B” from a single, consistent measurement “between the front wall and the rear wall” into a variable figure whose calculation depends on whether it is measured from the top, bottom, or middle of the interior surface of the front wall. Id. at 1048. This is at odds with the plain language of the patent.

Because it is contrary to the patent language, Rorze's motion for summary judgment as to non-infringement is denied.

2. Patent Obviousness

Rorze next moves for summary judgment on the ground that all asserted claims are invalid as obvious combinations of prior art. Because this argument relies upon disputed facts, Rorze's motion is denied.

“The ultimate judgment of obviousness is a legal determination.” KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 427, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007). Factual findings related to obviousness include (1) “the scope and content of the prior art,” (2) “differences between the prior art and the claims at issue,” (3) “the level of ordinary skill in the pertinent art.” Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). This is a “broad inquiry [that] invite[s] courts, where appropriate to look at any [additional] secondary considerations that would prove instructive.” KSR Intern. Co., 550 U.S. at 415, 127 S.Ct. 1727. Where the Graham factors are “not in material dispute, and the obviousness of the claim is apparent in light of these factors, summary judgment is appropriate.” KSR Intern. Co., 550 U.S. at 427, 127 S.Ct. 1727. “[I]t is error to reach a conclusion of obviousness until all [of the Graham] factors are considered.” Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1048 (Fed. Cir. 2016). An obviousness determination requires “a finding that ․ a person of ordinary skill in the art would have been motivated to combine or modify the teachings in the prior art and would have had a reasonable expectation of success in doing so.” Univ. of Strathclyde v. Clear-Vu Lighting LLC, 17 F.4th 155, 160 (Fed. Cir. 2021).

Claim 1 of the RE772 patent includes eleven elements, which the parties label alphabetically. Rorze points to two examples of prior art that, when combined, purportedly comprise the entirety of Claim 1. Rorze's first prior art is Japanese Patent Publication No. JP 2003-179120, which was issued to Kazunari on June 27, 2003 (“Kazunari” or “Kazunari prior art”). The parties do not dispute that Kazunari discloses a wafer transfer apparatus (element [a]), an interface space forming portion (element [b]), a wafer carrying robot (element [d]), wafer carrying robot components (element [e]), a robot arm with link members (element [g]), and a drive unit (element [h]). Rorze's second prior art is “SEMI E63,” a standard published in June 2000 by the Semiconductor Equipment and Materials International (SEMI) industry association. The parties do not dispute that the SEMI E63 discloses a wafer transfer apparatus (element [a]), an interface space forming portion (element [b]), and a wafer carrying robot (element [d]). Rorze asserts—and Kawasaki disputes—that Kazunari further discloses a base fixed to the interface space (element [f]) and B/2

Whether Kazunari and SEMI E63 disclose elements [c], [f], and [i] present clear factual disputes as to the “scope and content of the prior art” for the jury. Graham, 383 U.S. at 17, 86 S.Ct. 684. The Court will address the key elements in dispute.

Element [c] discloses “a FOUP opener configured to open and close the substrate container.” RE772, 30:7–8. SEMI E63 discloses certain mechanical specifications for a “300 mm box opener/loader.” Rorze argues that because Kawasaki has not argued that the SEMI E63 does not apply to openers for front opening boxes, there is no genuine dispute that the SEMI E63 discloses a FOUP opener. But this is precisely what Kawasaki argues. Kawasaki points to the reports of its own and Rorze's retained experts, both of which recognize that the SEMI E63 does not disclose any structural details for a FOUP opener. Indeed, SEMI E63 does not even use the term “FOUP Opener.” Kawasaki's expert further opined about numerous differences between the disclosure in the SEMI E63 and element [c]’s FOUP opener. These differences could lead a jury to conclude that SEMI E63 does not teach a FOUP opener as disclosed by element [c].

Element [f] discloses a “base which is fixed to the interface space.” RE772, 30:14. Whether Kazunari sufficiently discloses this element turns on the parties’ dispute about a potential translation error from the Japanese original into English. Kawasaki's expert opined that Kazunari does not disclose element [f], to which Rorze's expert responded by pointing to a purported translation error. But Rorze's expert admitted in his deposition that he does not speak, read, or otherwise understand Japanese. Instead, the materials before the Court demonstrate that he relied on Google Translate—rather than a certified translation—to form his opinion. This is not the sort of clear and convincing evidence required to overcome the presumption of patent validity.

Element [i] discloses the key formula in Kawasaki's patents, B/2

Rorze's expert acknowledges that the drawings in Kazunari were not necessarily made to scale but maintains that they nevertheless convey to a person of skill in the art the robot arm's dimensions and its positioning within the interface space. But in the absence of an explicit disclosure of element [i] or a clear indication that Kazunari's drawings are to scale, Rorze's argument “hinges on an inference” to which it is not entitled on summary judgment. See Nystrom, 424 F.3d at 1149 (barring the use of “speculative modeling premised on unstated assumptions in prior art patent drawings ․ [as] the basis for challenging the validity of claims reciting specific dimensions not disclosed directly in such prior art”); see also Hockerson-Halberstadt, Inc. v. Avia Group Intern., Inc., 222 F.3d 951, 956 (Fed. Cir. 2000) (concluding that it would be error to enter a judgment of infringement where the “patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.”). Indeed, during claim prosecution many of Rorze's arguments were rejected by the PTO, which concluded that Kazunari did not disclose any of the specific dimensional claim limitations required by element [i]. As such, Rorze is not entitled so summary judgment on this issue.

Finally, the parties dispute whether SEMI E63 discloses elements [j] and [k], R

For all of these reasons, summary judgment in Rorze's favor on grounds of obviousness is improper.

3. Lack of Enablement and Written Description

Under 35 U.S.C. § 112, the specification of a patent must “contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.” Rorze argues that the asserted patents fail both the written description and enablement requirements. Rorze's motion is once again denied.

a. Written Description

Rorze argues that because the asserted patents do not explicitly disclose a vertical-only FOUP opener, they are invalid for lack of written description.

Under 35 U.S.C. § 112, a patent's specification must “contain a written description of the invention.” “A specification adequately describes an invention when it reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Juno Therapeutics, Inc. v. Kite Pharma, Inc., 10 F.4th 1330, 1335 (Fed. Cir. 2021) (citations omitted). A specification does not fail the written description requirement “simply because the embodiments of the specification do not contain examples explicitly covering the full scope of the claim language.” LizardTech, Inc. v. Earth Res. Mapping, PTY, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005). Rather, “only enough must be included to convince a person of skill in the art that the inventor possessed the invention and to enable such a person to make and use the invention without undue experimentation.” Id.

Rorze maintains that the asserted patents are invalid because their specification discloses a FOUP mechanism that moves only horizontally, not vertically. This fact standing alone is an insufficient basis for invalidation because a patent may cover embodiments not disclosed by its express terms. Notably, the patent regularly refers to the movement of the FOUP opener without any reference to vertical or horizontal movement. See, e.g., RE772 3:51–54, 4:19–22, 8:13–15. Rorze does not adequately explain why a person of skill in the art would not understand the inventor to have possession of a vertical-only FOUP opener.

Instead, Rorze argues that that Kawasaki “improperly relies” on the knowledge of a person of skill in the art to demonstrate that a vertical-only FOUP is encompassed by its patent. Contrary to its argument, however, what a person of skill in the art would understand when reading a patent is an essential element of this exercise. See, e.g., LizardTech, 424 F.3d at 1345 (“[T]he patent specification is written for a person of skill in the art, ․ only enough must be included to convince [that person] that the inventor possessed the invention[.]”). It is entirely appropriate for Kawasaki to rely on evidence about what a person of skill in the art would understand and, given Kawasaki's evidence, a jury could conclude that the patents cover a vertical-only FOUP opener.

b. Lack of Enablement

Rorze argues that the Asserted Claims’ use of the term “FOUP Opener” lacks enablement because the patents do not disclose a vertical-only FOUP opener and practicing that embodiment would require undue experimentation.

For a patent to fulfill the enablement requirement of § 112, “the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation.’ ” MagSil Corp. v. Hitachi Glob. Storage Techs., Inc., 687 F.3d 1377, 1380 (Fed. Cir. 2012) (citing Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997)). “The key word is ‘undue,’ not ‘experimentation.’ ” In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (citation omitted). Whether the experimentation required by a patent is ‘undue’ is a question of law underpinned “by weighing many factual considerations.” Id. Such factors include:

(1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.

Id. at 737. A specification need not disclose every possible embodiment because “the artisan's knowledge of the prior art and routine experimentation can often fill gaps, interpolate between embodiments, and perhaps even extrapolate beyond the disclosed embodiments[.]” AK Steel Corp. v. Sollac and Ugine, 344 F.3d 1234, 1244 (Fed. Cir. 2003). “Because patents are presumed valid, lack of enablement must be proven by clear and convincing evidence.” ALZA Corp. v. Andrx Pharms., LLC, 603 F.3d 935, 940 (Fed. Cir. 2010).

In support of its motion, Rorze relies primarily on the opinions of its expert, Dr. Hooper, which detail his assessment of the asserted patents in light of the Wands factors. Kawasaki responds with the opinions of its own expert, Dr. Glew. Although Dr. Hooper touches on many of the Wands factors, he states that the strongest support for his opinion arises from the specification's failure to provide any “instruction, details or examples involving a [vertical-only FOUP opener].” Hooper Reply ¶ 128. This argument relates primarily to factors 2 and 3 of the Wands analysis.⁴ The rest of his opinion touches on factors 1, 5, 6, and 7. Ultimately, this evidence is not sufficiently clear and convincing to invalidate Kawasaki's patents.

Regarding Wands factors 2 and 3, Dr. Hooper relies primarily on the idea that the “point of novelty” in the asserted patents is predicated on the FOUP opener's horizontal movement.⁵ Because the asserted patents do not explicitly disclose a vertical-only FOUP opener, Dr. Hooper contends that undue experimentation would be required to practice the claimed invention using a vertical-only FOUP opener. Dr. Hooper points to the absence of any specific direction or guidance in the specification that would enable a person of skill in the art to “ ‘set,’ ‘determine,’ or ‘define’ ” the robot invasion restricted region when utilizing a vertical-only FOUP opener. Hooper Expert Report ¶¶ 384-85, 405. He also points to the specification's lack of working examples detailing how to calculate the robot invasion restricted region if the FOUP opener does not move horizontally. Id. ¶¶ 405-04; Dr. Hooper Reply Report ¶ 128.

Dr. Hooper's opinion as to the second and third Wands factors is unconvincing for three reasons. First, Dr. Hooper's analysis focuses on what the patent lacks—namely, any disclosure of a vertical-only FOUP embodiment. Given that lack of disclosure, it makes sense that the specification also does not include any direction (factor 2) or working example (factor 3) explaining how to practice a vertical-only FOUP. But the specification need not “describe how to make and use every possible variant of the claimed invention,” AK Steel Corp., 344 F.3d at 1244, so this argument alone is insufficient to demonstrate undue enablement. Further, Dr. Hooper does not meaningfully explain why the asserted patents require a horizontally moving FOUP opener even though the specification frequently refers to the FOUP opener without any reference to vertical or horizontal movement. See RE772, 1:50-56, 3:51-54, 4:19-22, 8:13-15, 11:1–4; 11:11-19, 12:1-3, 14:41-44. Indeed, where a patent does not explicitly disclose a claimed embodiment, the more pertinent question is whether a person of skill in the art could practice that embodiment.⁶

Second, the specification does include working examples and guidance that a person of skill in the art could use to calculate the length B and the length E in various embodiments. See RE772, 5:36–45, 19:7–21. Dr. Hooper is correct that this guidance does not explicitly apply to a vertical-only FOUP embodiment, but he does not explain why the guidance is nevertheless unhelpful to a person of skill in the art or why a jury could not infer that person of skill in the art could adapt these examples to fit a vertical-only FOUP.

Third, and finally, Dr. Hooper's analysis of factors 2 and 3 is premised on his argument that the asserted patents require a FOUP opener that moves horizontally in the interface space. But the Court rejected this construction of the asserted patents. See Kawasaki, 732 F. Supp. 3d at 1054 (defining “robot invasion restricted region” as the “farthest distance any part of the FOUP opener mechanism extends into the interface space.”). The Court instead defined the robot invasion restricted as depending on the FOUP opener's extension into the interface space, not its movement. See Cordis Corp. v. Boston Sci. Corp., 658 F.3d 1347, 1357 (Fed. Cir. 2011) (recognizing that courts “must disregard the testimony of [a party's] expert ․ [when] that testimony [is] based on an incorrect understanding of the claim construction”).

Dr. Hooper's analysis of the fifth, first, and seventh Wands factors similarly misapplies the Court's claim construction order. For example, the fifth Wands factor assesses the state of prior art at the time of the patent's issuance. Both parties agree that vertical-only FOUP openers were well known to persons of skill in the art prior to 2006. Dr. Hooper Report ¶¶ 395–96, 406; Dr. Glew Report ¶¶ 588–89. But Dr. Hooper dismisses this prior art as irrelevant, arguing in conclusory fashion that no person of skill in the art could adapt the prior art to a patent that “requires measurements defined by horizontal movement of the FOUP opener.” Dr. Hooper Report ¶ 406 (emphasis added). Likewise, with respect to the first Wands factor—the quantity of experimentation—Dr. Hooper opines that because the asserted patents “require[ ] measurements defined by horizontal movement of the FOUP opener ․ no amount of experimentation ․ could suffice” to enable a person of skill in the art to practice the invention with a vertical-only FOUP opener. Dr. Hooper Reply, at 50 ¶ 129 (emphasis added). Similarly, with respect to the seventh Wands factor—predictability—Dr. Hooper opines on the basis of the patent's requirement for horizontal movement that “any successful result would ․ be unpredictable in view of my opinion that it is not even possible.” Id.

Because each of these statements are predicated upon a misapplication of the Court's claim construction, the Court will disregard them. Cordis Corp., 658 F.3d at 1357.⁷

Finally, as to factor six, Dr. Hooper opines that a person of skill in the art would be unable to practice a vertical-only FOUP opener. He states that it would be impossible to do so because—absent a horizontally moving FOUP opener—a person of skill in the art would “not understand how to measure a length E for systems utilizing FOUP openers that do not move horizontally into the interface space from the innermost surface of the front wall.” Dkt. No. 203-11, at 52. But again, “[m]issing is any explanation as to” why a person of skill in the art would not understand how to measure a length E in this context, and “what impact the Court's construction” omitting horizontal movement “has on experimentation.” Unicorn Energy AG v. Tesla Inc., 740 F. Supp. 3d 930, 956 (N.D. Cal. 2024).

In sum, Dr. Hooper's expert opinion on enablement is largely conclusory and fails to dutifully apply the Wands factors to the Court's claim construction. Rorze has thus failed to provide the sort of “clear and convincing evidence” required to invalidate a patent on enablement grounds. ALZA Corp., 603 F.3d at 940. Rorze's motion is therefore denied.

4. No Willful Infringement

Rorze next argues that Kawasaki has not adduced sufficient evidence from which a jury could determine that any alleged infringement on its part was willful.

To prevail on a claim of willful infringement, a plaintiff must “prove, by a preponderance of the evidence,” that the defendant “knew of the ․ patent and then engaged in deliberate or intentional infringement.” Ironburg Inventions Ltd. v. Valve Corp., 64 F.4th 1274, 1296 (Fed. Cir. 2023). “To establish willfulness, the patentee must show the accused infringer had a specific intent to infringe at the time of the challenged conduct.” Bayer Healthcare LLC v. Baxalta Inc., 989 F.3d 964, 987 (Fed. Cir. 2021). “Knowledge of the asserted patent and evidence of infringement is necessary, but not sufficient, for a finding of willfulness. Rather, willfulness requires deliberate or intentional infringement.” Id. at 988.

As an initial matter, the parties do not dispute that Rorze knew of the patent. Rorze highlights a letter that Kawasaki sent in June 2017 notifying Rorze about the RE772 patent and possible infringement.

Despite its knowledge of the RE772 patent, Rorze argues that an opinion developed by its in-house intellectual property manager, Mr. Kakeya, demonstrates its lack of willfulness. Mr. Kakeya, a non-lawyer who has been responsible for Rorze's intellectual property since at least 2011, allegedly conducted a careful analysis of the RE772 patent and compared it to the accused products. In his declaration, Mr. Kakeya states that he believed Rorze's patents did not infringe because the load port in Rorze's products included a FOUP door that moved only vertically, unlike the FOUP door disclosed by the RE772 patent, which also moved horizontally. Rorze communicated its non-infringement belief to one of its customers in the course of contract discussions. In their depositions, Rorze's CEO and Executive Director of Marketing both stated that they relied upon Mr. Kakeya's opinion in maintaining Rorze's non-infringement position.⁸ The parties conferred several times over the following years and Rorze maintained its non-infringement position throughout that period.

In moving for summary judgment on willfulness, Rorze contends in essence that Mr. Kakeya's opinion, standing alone, provided a sufficient basis for Rorze to believe that the accused products did not infringe the RE772 patent, and that this reasonable belief in non-infringement precludes the jury from finding any specific intent to infringe the asserted patents. Once again, this argument depends upon a dispute of fact—namely, whether Rorze's reliance on Mr. Kakeya's opinion was reasonable.

The Federal Circuit has held that the reasonableness of a defendant's reliance on such advice—even when provided by counsel—presents a question of fact for the jury. In C R Bard, Inc. v. AngioDynamics, Inc., 979 F.3d 1372, 1380 (Fed. Cir. 2020), for example, the court noted that “an invalidity opinion is a relevant factor in determining willfulness” but concluded that the opinion of a firm's outside counsel was not dispositive as to willfulness because “the question of whether [a party] reasonably believed that the asserted claims were invalid [is] a question of fact for the jury.” Id. Here, Kawasaki notes several reasons why the jury might dispute the reasonableness of Rorze's reliance on Mr. Kakeya's letter. Mr. Kakeya is not himself a patent lawyer and admitted to lacking familiarity with U.S. patent law. In other instances of potential infringement, Rorze has relied upon the opinions of outside patent counsel, but it has declined to do so here. And because Rorze was engaged in negotiating a global supply agreement for the accused products with one of Kawasaki's customers, it had a clear financial incentive to maintain the position that its products did not infringe upon the asserted patents whether or not that position was reasonable. From this evidence, the jury could conclude that Rorze's belief of non-infringement was unreasonable and supported not by an objective analysis but by a self-interested opinion aimed at bolstering its market position.

Were a jury to conclude that Rorze's non-infringement belief was unreasonable, there is sufficient evidence for a jury to also conclude that any alleged infringement was willful. For example, Rorze presented a series of “countermeasures” to a potential client during contract negotiations. Those countermeasures included non-infringing product designs that Rorze had leveraged in prior product designs at relatively low cost. Rorze declined to implement these countermeasures and instead moved forward in selling the accused products despite its admitted knowledge of the “risks” associated with doing so. Kawasaki also points to evidence that Rorze actively sought to obtain information about Kawasaki's products—evidence from which a jury could infer that Rorze attempted to copy Kawasaki's products. All of this is sufficient to support a finding of willful infringement. See Eko Brands, LLC v. Adrian Rivera Maynez Enters., Inc., 946 F.3d 1367, 1377 (Fed. Cir. 2020) (citing “intentional[ ] copy[ing]” and “effort[s] to ․ design around the [accused] patent” as relevant to a finding of willful infringement).

Because Rorze's position depends upon a dispute as to whether its belief of non-infringement was reasonable and because a jury could conclude that Rorze had the specific intent to infringe if that belief was not reasonable, Rorze's motion is denied.

B. Kawasaki's motion for summary judgment is granted in part and denied in part.

1. Prosecution Laches

Kawasaki asks the Court to dismiss Rorze's affirmative defense of prosecution laches.

Prosecution laches is an equitable defense to infringement that “may render a patent unenforceable when it has issued only after an unreasonable and unexplained delay in prosecution that constitutes an egregious misuse of the statutory patent system under the totality of the circumstances.” Cancer Rsch. Tech. Ltd. v. Barr Labs., Inc., 625 F.3d 724, 728 (Fed. Cir. 2010). To prevail on a defense of prosecution laches, a party must show both that the “delay in prosecution [was] unreasonable and inexcusable” and that “the accused infringer ․ suffered prejudice attributable to the delay.” Personalized Media Commc'ns, LLC v. Apple Inc., 57 F.4th 1346, 1354 (Fed. Cir. 2023).

The Court previously dismissed Rorze's cross claims for prosecution laches because “Rorze ha[d] not pleaded facts that plausibly suggest that any prosecution delay by Kawasaki was unreasonable, let alone an egregious misuse of the patent system.” Dkt. No. 144, at 11. Rorze's counterclaim focused on the “substance” of Kawasaki's reissue applications not “any delay in prosecuting them.” Id. For similar reasons, the Court grants Kawasaki's motion and enters judgment in Kawasaki's favor on Rorze's prosecution laches affirmative defense.

Rorze makes two arguments in opposition, neither of which is availing. First, Rorze again relies on the substance of Kawasaki's reissue applications. It notes that Kawasaki pursued reissue patents that removed the “forward and backward” language from the asserted patents’ definition of the robot invasion restricted region. But as the Court previously held, it is the delay in prosecution, not the substance of the reissue patents, that is relevant when considering prosecution laches. See Kawasaki, 737 F. Supp. 3d at 780 (dismissing Rorze's laches counterclaim because Rorze identified “issues with the substance of [Kawasaki's] applications” but “a laches defense is principally about delay”).

Second, Rorze points to evidence generally showing that Kawasaki had a business interest in maintaining a relationship with the customer at the center of this litigation. Deposition testimony and email records show that the two parties actively competed with each other and sought to obtain competitive information about one another. Rorze relies on this evidence to argue that Kawasaki pursued reissue to gain a competitive advantage. But Rorze's proffered evidence is largely irrelevant to the patent prosecution process and instead speaks to Kawasaki's competitive positioning. “[T]here is nothing improper, illegal[,] or inequitable in filing a patent application for the purpose of obtaining a right to exclude a known competitor's product from the market.” Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867, 874 (Fed. Cir. 1988). Further, it is not “improper to amend or insert claims intended to cover a competitor's product the applicant's attorney ․ learned about during the prosecution of a patent application.” Id. Instead, the operative analysis is whether any delay in Kawasaki's prosecution of its patent amounted to an “egregious misuse of the statutory patent system.” Cancer Rsch. Tech., 625 F.3d at 728. Rorze has not pointed to any evidence that could give rise to an inference that any delay relating to Kawasaki's prosecution of the reissue patents amounted to such egregious misuse.

The Court therefore grants summary judgment to Kawasaki on Rorze's prosecution laches defense.

2. Laches

Kawasaki next asks the Court to enter judgment in its favor on Rorze's affirmative defense of laches.

“To prove an affirmative defense of laches, a defendant must show that (1) the plaintiff delayed for an unreasonable and inexcusable amount of time in filing suit, and (2) that the defendant was prejudiced as a result of the delay.” Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1333 (Fed. Cir. 2009). “A rebuttable presumption of laches arises when a patentee has delayed more than six years after actual or constructive knowledge of the defendant's alleged infringing activity.” Id.

Rorze's laches defense fails at the first step. Kawasaki first notified Rorze of its alleged infringement on June 14, 2017. After five years, Kawasaki initiated this suit. During the intervening years, the parties exchanged numerous letters and met in-person at least three times. Rorze argues that during these five years, Kawasaki expanded the dispute between the two parties. But Rorze does not provide any evidence to support this assertion. Instead, the entire premise of Rorze's argument—as Rorze itself admits in its briefing—is that “[t]he delay is based on the delay.” Rorze would have the Court presume a viable laches defense based upon nothing more than the period of time between Kawasaki's first infringement letter and its subsequent initiation of this suit. But a delay of under five years standing alone does not even give rise to a presumption of laches. See Vita-Mix Corp., 581 F.3d at 1333.

Because Rorze had failed to adduce any evidence that could give rise to a laches defense, the Court grants Kawasaki's motion for summary judgment.

3. Improper Reissue

Kawasaki also moves for summary judgment on Rorze's affirmative defense of improper reissue, arguing that the terms “FOUP opener” and “robot invasion restricted region” were expanded during reissue.

Federal law provides that “[n]o new matter shall be introduced into the application for reissue” of a patent. 35 U.S.C. § 251(a). Further, “[n]o reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.” Id. § 251(d). “A claim of a reissue application is broader in scope than the original claims if it contains within its scope any conceivable apparatus or process which would not have infringed the original patent.” Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n.2 (Fed. Cir. 1987).

The ’782 patent originally issued in January 2011. That patent included the terms “FOUP opener” and “robot invasion restricted region.” Kawasaki then filed for a reissue of the ’782 patent that issued as RE772 in October 2015. During that process, Kawasaki amended Claims 1, 7, 8, and 14 to further define the “Second Inequality” (R≤B-L0-E), adding:

wherein the robot invasion restricted region is defined by a distance which the FOUP opener moves in the forward and backward directions of the interface space, wherein the FOUP opener opens and closes an opener-side door and a FOUP-side door

During reissue of ’772, the inventor filed a statement with the patent office stating that the ’782 patent was overbroad and invalid because it failed to fully define the structure of the robot invasion restricted region.

After the RE772 issued, Kawasaki sought additional reissues of the ’782 patent. Neither the RE465 nor RE909 patents, however, included the revised “Second Inequality” language that Kawasaki added to RE772 and that defined the robot invasion restricted region by reference to movement of the FOUP opener “in the forward and backward directions of the interface space.” Rorze argues that in the reissue of these subsequent patents, their scope was impermissibly broadened because the subsequent reissue patents omitted the more limited “Second Inequality” language.

The Court previously granted Kawasaki's motion to dismiss Rorze's improper reissue counterclaim. Here, Rorze raises many of the same arguments that it raised in opposing that motion but has not adduced evidence that would support an improper reissue affirmative defense. Indeed, the Court invited Rorze to seek leave to reassert its improper reissue counterclaim if it could “plead additional facts or replead its improper reissue claim” in light of the Court's claim construction. Rorze declined to do so.

Rorze's argument fails for two reasons. First and foremost, Rorze must demonstrate that the scope of a reissue patents claim is broader than the claims of the original patent. 35 U.S.C. § 251(d). Here, although Kawasaki narrowed the scope of the ’782 patent, Rorze does not deny that patents issued subsequent to RE772 contain substantially similar language, and indeed the very terms, that were part of the ’782 patent. Rorze has not meaningfully demonstrated how the terms “FOUP opener” and “robot invasion restricted region” are broader in any of the reissue patents than they were in the original patent.

Second, to prevail on reissue, Rorze must demonstrate that new matter was added to the asserted patents during reissue that broadened the scope of the original claims. But Rorze instead trains many of its arguments at positions that Kawasaki has taken in this litigation. Opp. at 13 (“Kawasaki's attempt to broaden its claims through reissue is reflected in Kawasaki's assertion of claim scope in this case.”). Rorze is correct that the Court adopted—and Kawasaki argued for—a definition of robot invasion restricted region that does not require movement of the FOUP opener. But Rorze fails to demonstrate how that pertains to claim broadening in reissue. Nor does Rorze address the fact that the Court construed FOUP opener and robot invasion restricted region to have the same meaning across all of the asserted patents, that both parties asserted that these terms should have the same meaning across all of the asserted patents, and that both terms appeared in the original ’782 patent.

Because Rorze has failed to show any evidence that the claims of Kawasaki's patents were enlarged during patent reissue, the Court grants Kawasaki's motion for summary judgment.

4. Recapture

Kawasaki also moves for summary judgment on Rorze's recapture affirmative defense.

Courts apply a three-step analysis in evaluating a recapture defense. “[F]irst, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;” “next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution,” “finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.” Medtronic, Inc. v. Guidant Corp., 465 F.3d 1360, 1373 (Fed. Cir. 2006).

As an initial matter, Rorze's argument regarding Claims 25 and 26 of the RE145 patent was not disclosed to Kawasaki prior to the briefing on this motion. Parties must disclose all invalidity theories in their invalidity contentions pursuant to Patent Local Rule 3-3. Given this lack of disclosure, the Court excludes this argument from presentation at trial. See MediaTek, Inc. v. Freescale Semiconductor, Inc., No. 11-cv-5342 YGR, 2014 WL 690161, at *1 (N.D. Cal. Feb. 21, 2014).

The Court grants Kawasaki's motion as to Rorze's second recapture defense based on a rationale akin the Court's treatment of Rorze's improper reissue argument. Recapture, like improper reissue, requires showing that “the reissue claims are broader in scope than the original patent claims.” Medtronic, 465 F.3d at 1373 (emphasis added). Rather than arguing that the reissue claims broadened the original patent, Rorze claims that the original patent's claims were overly broad, were narrowed during reissue, and were then modified to recapture the previously broad but abandoned definition. Rorze acknowledges that in reissue, “Kawasaki amended its claims to adopt the narrower definition requiring forward-backward movement of the FOUP opener[.]” Rorze Opp. at 17. But like its improper reissue argument, Rorze again fails to demonstrate how Kawasaki's claims were broadened in reissue when compared to the terms of the original patent.

The Court recognizes that the prosecution history of an entire patent family—not just that of the original patent—can be relevant to this analysis. In MBO Laboratories, Inc. v. Becton, Dickinson & Co., 602 F.3d 1306, 1316 (Fed. Cir. 2010), for example, the Federal Circuit clarified that “[t]he term ‘original patent’ [as used in 35 U.S.C. § 251] refers to the patent corrected by reissue, it does not limit the universe of patents and their prosecution histories that can be the basis for surrendered subject matter.” It is entirely possible for a patentee to surrender subject matter “while prosecuting the original application or any precedent divisional, continuation, or continuation-in-part applications.” Id. So Mr. Hashimoto's disclaimer of portions of the ’782 Patent is relevant to the second step of the recapture analysis. But that only gets Rorze part of the way. In MBO Laboratories, the litigants did not dispute the first step of the recapture analysis. The plaintiff “concede[d] that the first step [was] not in dispute ․ as the broadening nature of the reissue claims was clearly explained to the Patent Office in the reissue application.” Id. at 1314. By contrast, Kawasaki does not concede the first step of the recapture analysis, and Rorze has not pointed to any evidence from which a jury could conclude that the claims of the reissue patents contain “any conceivable apparatus or process which would not have infringed the original patent.” Tillotson, 831 F.2d at 1037 n.2. As above, Rorze takes issue with Kawasaki's embrace of a broad view of its patents in this litigation, but that argument ultimately addresses the merits of Kawasaki's position, rather than the equitable defense of recapture.

Rorze may understandably be frustrated that the Court took a broader view of the claim language than Rorze preferred, but to an extent Rorze's inability to prevail on its recapture defense is a problem of its own making. In its responsive claim construction brief, Rorze consistently relied on the language of RE772 to argue that the Court should adopt a narrow construction of the robot invasion restricted region—one premised on the FOUP opener's horizontal movement—across all of the patents. Rorze never argued that failing to define the RIRR in this manner would allow Kawasaki to improperly capture disclaimed subject matter in the RE465 and RE909 patents. In the absence of any suggestion or request to the contrary, it was the Court's role to construe the terms as having the same meaning across every patent by considering the language of all five patents, not just that of the RE772.⁹

Because Rorze has failed to show any evidence that the claim language of the asserted patents was broadened in reissue, its arguments fail at step one. The Court therefore grants summary judgment to Kawasaki.

5. Intervening Rights

Kawasaki moves for summary judgment on Rorze's intervening rights defense.

Where the language of an original and a reissue patent are “substantially identical,” the surrender of the original patent “shall not affect any action then pending nor abate any cause of action then existing, and the reissued patent ․ shall constitute a continuation thereof and have effect continuously from the date of the original patent.” 35 U.S.C. § 252. “The accused infringer may raise the defense of intervening rights only when none of the infringed claims of the reissue patent were present in the original patent.” BIC Leisure Prods., Inc. v. Windsurfing Intern., Inc., 1 F.3d 1214, 1220 (Fed. Cir. 1993).

Where the reissue claim language is not “substantially identical” to the original patent, the doctrine of absolute intervening rights allows an accused infringer “to use or sell a product that was made, used, or purchased before the grant of the reissue patent as long as this activity does not infringe a claim of the reissue patent that was in the original patent.” Id. at 1220–21. Equitable intervening rights, by contrast, allows “the continued manufacture, use, or sale of additional products covered by the reissue patent when the defendant made, purchased, or used identical products, or made substantial preparations to make, use, or sell identical products, before the reissue date.” Id. at 1221.

Rorze's arguments fail here for the very reasons its improper reissue and recapture defenses fail. Rorze has not shown that the claims are sufficiently different in a manner that would subject Rorze to liability under the reissue patents in a way it would not have been under the claims of the ’782 patent. To be certain, the RE772 patent includes the Second Inequality limitation that was not present in the ’782 patent. But because the ’782 patent is broader than RE772 patent, a product that infringed RE772's robot invasion restricted region would also have infringed the same in the ’782 patent. And as discussed above, Rorze's argument fails to faithfully apply the Court's claim construction order, which construed the term to have “the same meaning across all of the asserted patents despite the variation in the claim language.” Kawasaki, 732 F. Supp. 3d at 1053. Both parties agreed with this approach. Id. To the extent Rorze argues that other language in the asserted claims is different from the ’782 patent, it includes only a brief but exceptionally broad citation to all six patents, inviting the Court to “compare” their language. But “[i]t is not [the] task ․ of the district court[ ] to scour the record in search of a genuine issue of a triable fact. [Courts] rely on the nonmoving party to identify with reasonable particularity the evidence that precludes summary judgment.” Keenan v. Allan, 91 F.3d 1275, 1279 (9th Cir. 1996) (citations omitted).

Kawasaki's motion is therefore granted as to Rorze's intervening rights defense.

6. Lack of Enablement

Kawasaki also moves for summary judgment on Rorze's affirmative defense that “FOUP opener,” “front wall,” and “robot invasion restricted region” fail for lack of enablement. As stated above, enablement is a legal determination undergirded by specific factual findings. See In re Wands, 858 F.2d at 737.

The Court previously addressed Rorze's argument that the asserted patents lack enablement as to the FOUP opener and concluded that Rorze had not proffered clear and convincing evidence. For the same reason, the Court grants Kawasaki's motion for summary judgment and dismisses Rorze's enablement affirmative defense insofar as it applies to FOUP openers. See, e.g., Unicorn Energy, 740 F. Supp. 3d at 955–57; Fresenius Med. Care Holdings, Inc. v. Baxter Int'l Inc., No. C 03-1431 SBA, 2006 WL 1343648, at *29–31 (N.D. Cal. May 16, 2006).

Regarding “front wall,” Rorze argues that this term is not enabled because there are multiple locations from which measurements for the front wall can be made. This argument fails for two reasons.

First, instead of arguing that “front wall” is not enabled under the terms of the patents, Rorze points only to positions that Kawasaki has taken in this litigation. Rorze states that in Kawasaki's amended infringement contentions, Kawasaki alleged that measurements for the “front wall” can be taken from multiple locations. But to present a viable lack of enablement defense, a party must show that “the specification of a patent [fails to] teach those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation.” MagSil Corp., 687 F.3d at 1380 (emphasis added and citations omitted).

Second, even if Rorze could present a viable lack of enablement defense by pointing to Kawasaki's invalidity contentions, Rorze's argument distorts the record. Kawasaki filed a sworn declaration stating that it took this position based on the limited discovery it had received from Rorze. Following further discovery, Kawasaki identified a single front wall from which to take measurements. See Dr. Glew Decl. ¶¶ 84 – 94; Dr. Glew Report ¶ 601. Because it misapprehends Kawasaki's position, Rorze's response to Kawasaki's motion fails to provide clear and convincing evidence based on the patent's specification and fails to raise a triable issue of fact. The Court therefore grants Kawasaki's motion and dismisses Rorze's enablement affirmative defense insofar as it applies to the front wall.

Finally, the Court denies Kawasaki's motion for summary judgment as to enablement of the robot invasion restricted region. Similar to Dr. Hooper's opinion regarding the enablement of FOUP openers, his opening report detailing his opinion about the enablement of the robot invasion restricted region is highly conclusory and unhelpful. See Dr. Hooper Report ¶¶ 431–34. That said, his reply report is much more thorough in its treatment of this topic. See Dr. Hooper Reply ¶¶ 147–55. In particular, he explains that a person of skill in the art would not understand what the term robot invasion restricted region was intended to mean. In support, he points to technical documents and prior art and notes that the term was not used outside of the asserted patents. And in light of the alleged unfamiliarity that a person of skill in the art would have with this term, Dr. Hooper explains why a person of skill in the art would need to engage in undue experimentation to practice the robot invasion restricted region when using a vertical-only FOUP opener. His analysis is particularly relevant to determining how a person of skill in the art would understand how to practice “region 108” from the asserted patents. This aspect of Dr. Hooper's opinion provides sufficient analysis of facts relevant to the Wands factors to create a triable issue of fact.

Accordingly, Kawasaki's motion is granted in part as to Rorze's affirmative defense that the terms “FOUP opener” and “front wall” fail for lack of enablement. Rorze may proceed with its affirmative defense that the term “robot invasion restricted region” lacks enablement.

7. Indefiniteness & Equitable Estoppel

Rorze has withdrawn its opposition to Kawasaki's motion for summary judgment on its equitable estoppel and indefiniteness affirmative defenses. The Court therefore grants summary judgment on those affirmative defenses.

CONCLUSION

For the foregoing reasons Rorze's motions for judgment on the pleadings and for summary judgment are both denied. Kawasaki's Rule 702 motion is granted in part. Dr. Hooper may testify about whether the asserted patents lack enablement. He may not testify about Rorze's state of mind or the prosecution history of RE671. Kawasaki's motion for summary judgment is granted in part. The Court grants summary judgment for Kawasaki on all of Rorze's affirmative defenses except for its defense as that the patents do not enable a robot invasion restricted region.

IT IS SO ORDERED.

FOOTNOTES

1.   In In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988), the Federal Circuit set forth eight factors that courts must balance when determining whether undue experimentation is required to practice the claims detailed in a patent. The Wands factors are analyzed in further detail in the Court's discussion of the parties’ cross motions for summary judgment.

2.   Of course, if Dr. Hooper attempts to provide further detail regarding his opinions at trial and those details were not disclosed in his report, Kawasaki may properly object to that testimony.

3.   Rorze responded to Kawasaki's motion primarily by attacking the opinion of Kawasaki's retained expert Dr. Glew rather than by defending the opinion of Dr. Hooper. Because Rorze did not move to exclude Dr. Glew's testimony, its arguments are irrelevant to Kawasaki's motion.

4.   Dr. Hooper states that the lack of “instruction, details, or examples” in the specification relate to “three wands (sic) factors.” As noted above, these clearly relate to Factors 2 and 3 but it is unclear which third factor he relies upon.

5.   As in Rorze's Motion for Judgment on the Pleadings, its argument about the patents’ “point of novelty” confuses one of the many benefits that flow from the patents with the patented invention itself.

6.   The Court addresses this (factor 6) below.

7.   The Court notes that much of Dr. Hooper's analysis of these three factors is conclusory and fails to adequately explain his analysis. See In re Buchner, 929 F.2d 660, 661 (Fed. Cir. 1991) (“[A]n expert's opinion on the ultimate legal issue must be supported by something more than a conclusory statement.”).

8.   Although Rorze asserts that Mr. Kakeya conferred with counsel in developing his opinions, Rorze has declined to disclose any of those communications in discovery on the basis of the attorney-client privilege.

9.   Conversely, if the failure of the original patent and RE465 and RE909 reissue patents to define the robot invasion restricted region renders them invalid, then the courts’ uniform construction of all five patents’ language would presumably provide Rorze with a global invalidity argument at trial. See infra at –––– – –––– (denying summary judgment as to Rorze's lack-of-enablement affirmative defense regarding the robot invasion restricted region).

P. Casey Pitts, United States District Judge