Asyst Technologies, Inc., is the assignee of U.S. Patent No. 5,097,421 (“the ’421 patent”), entitled “Intelligent Wafer Carrier.” The patent claims a system for tracking articles, such as silicon semiconductor wafers, in a manufacturing facility in which the wafers must be processed sequentially at a number of processing stations. The disclosed system includes transportable containers, or “pods,” which contain wafers that are to be transported between different manufacturing stations and allow the wafers to be maintained in a clean environment. The pods contain means for storing data regarding the status of the wafers in the pod, and the system features a means for transmitting data from the processing station to the pod and a means, located on the pod, for receiving data. The communication and storage means, which are connected to a central control unit, enable the system to detect the status of the wafers in each pod in the course of the manufacturing process, so that the proper fabricating steps can be followed in the proper order. ’421 patent, col. 1, ll. 46-54. See Asyst Techs., Inc. v. Emtrak, Inc., 268 F.3d 1364, 1366 (Fed. Cir. 2001) (“Asyst I”).
Asyst sued Jenoptik AG and other parties (collectively, “Jenoptik”) in the United States District Court for the Northern District of California, charging Jenoptik with infringing the ’421 patent and another Asyst-owned patent, U.S. Patent No. 4,974,166 (“the ’166 patent”). The trial court first granted summary judgment of no infringement as to three of the asserted claims because the accused device lacked a simple communication means; the court ruled that the other asserted independent claims were not infringed because the accused device lacked structure corresponding to the “means for sensing.” Asyst I, 268 F.3d at 1369. On the first appeal, this court reversed the grant of summary judgment, holding that the trial court had erred in its claim construction. Asyst I, 268 F.3d at 1370-71, 1373, 1374.
On remand, the district court again granted summary judgment of non-infringement as to the claims of the ’421 patent and dismissed the claims of infringement of the ’166 patent pursuant to the parties’ agreement. Asyst Techs., Inc. v. Emtrak, Inc., 2003 U.S. Dist. LEXIS 26418 (N.D. Cal. Oct. 8, 2003). On appeal, this court affirmed the grant of summary judgment of no infringement of independent claim 1 of the ’421 patent but reversed and remanded with respect to independent claim 2 and dependent claims 11-14. Asyst Techs., Inc. v. Emtrak, Inc., 402 F.3d 1188, 1189 (Fed. Cir. 2005) (“Asyst II”).
On the second remand, the court ruled on summary judgment that claims 2 and 11-14 of the ’421 patent are invalid for double patenting over claim 8 of the ’166 patent. After Asyst filed a terminal disclaimer to overcome the double patenting problem, the case proceeded to trial. At the end of trial, the jury found claims 2 and 11-14 of the ’421 patent valid and infringed. Jenoptik then moved for judgment as a matter of law (“JMOL”) that the asserted claims were invalid due to obviousness, or alternatively for a new trial. After initial briefing on the JMOL motion, the Supreme Court decided KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007), and the trial court thereafter allowed additional briefing based on that decision. The trial court then granted JMOL of obviousness, in view of U.S. Patent No. 4,588,880 to Hesser, based in part on KSR. The trial court also conditionally granted a new trial in the event that we should reverse the grant of JMOL.
