N OTE : This disposition is nonprecedential. 

# United States **Court of Appeals**  **for the Federal Circuit**

______________________ ANVIK CORPORATION, Plaintiff

- Appellant,

v.

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

- Appellees,

AND

L.G. PHILIPS LCD CO., LTD. AND L.G. PHILIPS LCD AMERICA, INC.,

Defendants

- Appellees,

AND

SAMSUNG ELECTRONICS AMERICA, INC.

AND SAMSUNG ELECTRONICS CO., LTD., Defendants

- Appellees,

AND

CHI MEI OPTOELECTRONICS, CHI MEI OPTOELECTRONICS USA, INC., AND INNOLUX DISPLAY CORP., Defendants

- Appellees,ANVIK CORPORATION v. NIKON PRECISION , INC

. 2

AND

AU OPTRONICS CORPORATION AND AU OPTRONICS CORPORATION AMERICA, Defendants

- Appellees,

AND

SHARP CORPORATION AN D SHARP ELECTRONICS CORPORATION, Defendants

- Appellees,

AND

AFPD PTE LTD., Defendant

- Appellee,

AND

IPS ALPHA TECHNOLOGY, LTD., PANASONIC CORPORATION OF NORTH AMERICA, PANASONIC CORPORATION, HITACHI, LTD., HITACHI DISPLAYS, LTD., HITACHI AMERICA, LTD., HITACHI ELECTRONIC DEVICES

USA, INC., HITACHI CONSUMER ELECTRONICS

CO., LTD., TOSHIBA CORPORATION, TOSHIBA AMERICA, INC., AND TOSHIBA AMERICA CONSUMER PRODUCTS, LLC, Defendants

- Appellees.

______________________

2012

- 1320,

- 1321,

- 1322,

- 1323,

- 132 4,

- 1325,

- 1326,

- 1327,

- 1328,

- 1329

______________________ANVIK CORPORATION v. NIKON PRECISION , INC

. 3
Appeals from the United States District Court for the Southern District of New York in N os. 05

- CV

- 7891, 07

- CV

- 0816, 07

- CV

- 0818, 07

- CV

- 0821, 07

- CV

- 0822, 07

- CV

- 0825, 07

- CV

- 0826, 07

- CV

- 0827, 07

- CV

- 0828, and 08

- CV

- 4036, Judge Alvin K. Hellerstein.

______________________ Decided: March 22, 2013

______________________

D ARYL J OSEFFER , King & Spalding, LLP, of Washington, DC, argued for plaintiff

- appellant. On the brief were J OSHUA L. R ASKIN , and J AI K. C HANDRASEKHAR , Bernstein Litowitz Berger & Grossmann, LLP, of New York, New York.

D ONALD R. D UNNER , Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Washington, DC, argued for all defendants

- appellees. With him on the brief was A NDREW J. V ANCE . Of counsel on the brief were J ACK W. L ONDEN , Morrison & Foerster, LLP, of Chiyoda

- ku, T okyo, Japan, D EANNE E. M AYNARD , of Washington, DC, and M ATTHEW M. D’A MORE , of New York, New York, for defendants

- appellees, Nikon Precision, Inc., et al.; G ASPARE J. B ONO , McKenna Long & Aldridge, L.L.P., of Washington, DC, for defendants

- appellees, L.G. Philips LCD Co., Ltd., et al.; P ETER J. W IED , V INCENT K. Y IP , J AY C HIH -F AN C HIU and T ERRENCE D. G ARNETT , Goodwin Procter L.L.P., of Los Angeles, California, for defendants

appellees, AU Optronics Corporation, et al.; A RTHUR I. N EUSTADT , C ARL E. S CHLIER and A LEXANDER E. G ASSER , Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P., of Alexandria, Virginia, for defendant

– appellee

, AFPD PT E, Ltd.; N EIL P. S IROTA , Baker Botts L.L.P., of New York, New York, and M ICHAEL J. B ARTA , of Washington, DC, for defendants

- appellees, Samsung Electronics America, Inc., et al.; R OBERT W. A DAMS , G ILL S. U PDEEP and G ORDONANVIK CORPORATION v. NIKON PRECISION , INC

. 4

K LANCNIK , Nixon & Vanderhye, P.C., of Arlington, Virgi nia, for defendants

- appellees, Sharp Corporation, et al.; E RIC J. L OBENFELD , I RA J. S CHAEFER and A RLENE L. C HOW , Hogan Lovells, US LLP, of New York, New York, for defendants –appellees, IPS Alpha Technology, Ltd., et al.; J OHN R. A LISON , L AURA P. M ASUROVSKY , D ENISE W. D EFRANCO and S TEPHEN L. H ENNESSY , Finnegan, Hende rson, Farabow, Garrett & Dunner L.L.P., of Washington, DC, for defendant

– appellee, Hannstar Display Corpor ation, and B RUCE D. D E R ENZI and S COTT L. B ITTMAN , Crowell & Moring, LL P, of New York, New York, for defendants –appellees, Chi Mei Optoelectronics, et al.

______________________

Before N EWMAN , B RYSON , and M OORE , Circuit Judges.

B RYSON , Circuit Judge

. The district court held the three asserted patents in this case invalid for failing to satisfy the “ best mode ”

re quirement found in 35 U.S.C. § 112. The America Invents Act

, Pub. L. No. 112

– 29 (2011), eliminated failure to satisfy the best mode requirement as a ground for invalidating issued patents . However , the st atutory amendment that removed best mode from the list of invalidating conditions for issued patent s was not given retroactive effect for cases

, such as this one

, that were filed before the new statute was enacted. Accordingly, the district court properly considered whether the best mode requirement had been satisfied.
The question whether the best mode requirement has been satisfied is highly factual. In this case, after revie wing the deposition testimony of Dr. Kanti Jain, the named inventor of all thr ee patents and the founder and pres ident of Anvik Corporation, the district court was unde rstandably concerned that Dr. Jain may have concealed certain aspects of the best mode for practicing the inve ntion claimed in the patents. While Dr. Jain did his ca useANVIK CORPORATION v. NIKON PRECISION , INC

. 5 no favors with his testimony, we are persuaded based on the record as a whole that there remain disputed issues of material fac t bearing on the best mode question

, and we therefore reverse the grant of summary judgment and remand the case for further p roceedings.

I
Anvik brought suit against a number of manufactu rers and sellers of electronic equipment, alleging that they had infringed the three patents in suit, U.S. Patents No

. 4,924,257 (“the ’257 patent”); 5,285,236 (“the ’236 p atent”); and 5,291,240 (“the ’240 patent”). Anvik’s theory was that the manufacture r and seller defendants had infringed by using scanners made by the Nikon defen dants. The patents at issue in this case are directed to photolithography systems used to make elect ronic pro ducts such as liquid crystal display panels. The claimed systems selectively expos e a substrate to electromagnetic radiation through a mask by the use of partially overla pping scans of the mask and substrate to ensure that the substrate is expose d uniformly and seamlessly.
All three of the patents in suit follow the same basic pattern: each claims a “scan and repeat” system for high

resolution, large

- field lithography. In each patent, the asserted claims recite, as part of the claimed lithograp hy system, an illumination sub system satisfying certain requirements. The illumination subsystem set forth in asserted claim 17 of the ’257 patent is representative

. That portion of claim 17 recites : “an illumination subsy stem having the desired charact eristics of wavelength and intensity distribution, having an effective source plane in the shape of a polygon, and capable of uniformly illum inating a polygon

- shaped region on the mask.” The spec ification of the ’257 patent, which is also representative, describes the illumination sub system as consisting of an illumination source system , a relay lens, and a beam

steering mechanism. The illumination subsystem isANVIK CORPORATION v. NIKON PRECISION , INC

. 6 described as being “such that its effective emission plane

. . . is in the shape of a regular h exagon.” The illumination source system is not otherwise described, but is depicted in the patent figures as a box with a hexag onal

- shaped emission plane at one end. ’257 patent, col. 4, ll. 7

– 21.
In a separate patent application filed before the appl ications for the patents in suit

, Dr. Jain described and claimed a particular illumination system. That applic ation became U.S. Patent No. 5,059,013 (“the ’013 patent”), which was issued to Dr. Jain on October 22, 1991, after the issuance of the ’257 pate nt in 1990 but before either the application for, or issuance of, the ’236 and ’240 p atents in 1994

. The ’ 013 patent claimed an illumination system producing a light beam that could be used in lithography systems such as those claimed in the ’257, ’236, and ’240 patents. In its preferred embodiment, t he illumination system of the ’013 patent used a hexagonal “shaping a perture” and a hexagonal

- shaped tunnel lined on the inside with mirrors, which the ’013 patent referred to as a “ hexagonal beam

- shaper

- uniformizer.”
At the time, Dr. Jain recorded his ideas for improving lithography systems, along with illustrations and detailed descriptions, in his notebook. His drawing of the illum ination system that formed the basis for the ’013 patent was found in the same notebook as the drawings that formed the bases for the ’257, ’236, and ’240 patents. Specifically, he drew a h exagonal light tunnel that a ppears virtually identical to the one that would be depicted in Figure 1b of the ’ 013 patent. Dr. Jain’s notebook refers to the hexagonal tunnel in the course of discussing of how to create a hexagonal

- shaped light beam require d for the scan and repeat method claimed in the patents in suit

. During pretrial discovery, the defendants so ught to establish that Dr. Jain regarded the illumination system used in the ’013 patent as the best mode for creating theANVIK CORPORATION v. NIKON PRECISION , INC

. 7
overlapping hexagon al light beams used in his scan and repeat method. They argued that the evidence showed he considered it his best mode and failed to disclose it in the

’ 257, ’ 236, and ’ 240 patents

, and that those patents were therefore invalid

. II

The district court granted summary judgment, hol ding all three patents invalid for failing to satisfy the best mode requirement. The court based its ruling mainly on Dr. Jain’s deposition testimony , which the court inte rpreted as admitting that the illumination source recited in the ’013 patent was “better than anything in the prior art and anything of which he was aware and which he could remember at the time.”
The district court pointed to several of Dr. Jain’s statements during his deposition to support its interpr etation . Dr. Jain testified that when he filed the applic ation for the ’013 patent, he believed that the method it described “had advantages over prior art methods,” and that it “had advantages over some other methods.” While he stated that he did not reg ard the illumination system of the ’013 patent as the best illumination source to use in connection with the asserted claims, he was unable to identify any particular alternative s that would serve that purpose better. Nonetheless, Dr. Jain testified that “there were many variations” among illumination methods that could provide uniform hexagonal illumination on the substrate and that the method of the ’013 patent “certai nly is not the only optimum method.” He added, however, that he “ [could] not recall wh at the other methods were.”

When asked whether he had any other pending patent applications “that dealt with the uniformization of the light in an illumination system besides the application that led to the ’013 patent,” Dr. Jain replied, “I don’tANVIK CORPORATION v. NIKON PRECISION , INC

. 8

recal l, but I think what I described in the ’013 patent, that configuration for an illumination system to produce uniform polygonal exposure, most likely was the best that I had thought of until then.” However, when he was directly asked whether the preferred embodiment “of a lithography system practicing the methods of the ’257 patent . . . used light provided by a hexagonal beam shaper and uniformizer tunnel to provide nominal hex agon shape and uniform light,” Dr. Jain replied that was “not right.” In addition, Dr. Jain later submitted a decl aration explaining that the ’ 013 patent represented only the best mode that he himself had invented, and that at the relevant time he was aware of other effective ways to practice his lithography system.

As further evidence that the illumination system of the ’ 013 patent was Dr. Jain’s best mode , the defend ants showed that he attended a professional conference in March of 1991 to discuss his lithography system, and that during his presentation he did not disclose any details of the illumination source system described in his notebook

. When asked at his deposition why he chose not discuss that aspect of his invention , Dr. Jain explained that he was “simply not ready, prepared[,] and willing to give details about t he illumination part of the lithography system” while the ’ 013 patent was still pending.
The district court acknowledged that the defendants had not obtained a direct admission from Dr. Jain that he had concealed what he knew to be the best mode for

pra cticing the asserted claims. Nonetheless, referring to the portion of Dr. Jain’s testimony in which he denied that he regarded the illumination source of the ’013 patent as the best mode for practicing the invention, the court stated that “[i]t’s hard for me to accept that there is any credibility whatever to [that] portion” of his testim ony. The court concluded:ANVIK CORPORATION v. NIKON PRECISION , INC

. 9 But he refuses to answer what may be other opt imum methods, so that suggests to me that when he says that this is better than other methods and he can’t name another method that’s equal or be tter than the ’013 method, then he’s saying the ’013 method is the best. He knows that.
Based on that evidence, the court granted the defendants’ motion for summary judgment of invalidity and dismissed the complaint. The court explained that it regarded Dr. Jain’s testimony as amounting to an admission that although the ’013 patent was not mentioned in the ’257 patent, the method described in the ’013 patent “was better than anything in the prior art and anything of which he was aware and which he could remember at the time.” The court relied heavily on the fact that Dr. Jain could not identify anything in the prior art that could

c reate a better illumination source than the system described in the ’013 patent. As for the post

- deposition declaration in which Dr. Jain sought to explain some of the answers he gave during his deposition, the court characterized that declaration as “ a gloss of what he may have wanted to mean or may have tried to mean or how he wanted to argue .” Th e statements in that declaration

, the court concluded, were “ beside the point, and they don’t contribute anything at all.”

II I
Whether the best mode requirement has been sati sfied is a question of fact. Bayer AG v. Schein Pharm s ., Inc. , 301 F.3d 1306, 1312 (Fed. Cir. 2002). In order to determine whether there has been a violation of the best mode requirement, two factual questions must be a nswered. The first is whether, at the time of filing the patent applicatio n , the inventor had a best mode of pra cticing the claimed invention —a subjective question. The second is whether

, assuming the inventor had a prefe rence for one mode over all others, the inventor objectivelyANVIK CORPORATION v. NIKON PRECISION , INC

. 10

concealed his preferred mode from the public. See Wel lman, Inc. v. Eastman Chem. Co. , 642 F.3d 1355, 1360 (Fed. Cir. 2011).

Patents are presumed valid, and the opposing party must prove invalidity by clear and convincing evidence. See High Concrete Struct ures, Inc. v. New Enter. Stone & Lime Co

. , Inc.

, 377 F.3d 1379, 1382 (Fed. Cir. 2004). On summary judgment in this case , the issue before the district court was whether a reasonable finder of fact could reach no conclusion other than that Dr. Jain considered his patented illumination source system to be the best mode for practicing the inventions and concealed it. Id.

The defendants’ documentary evidence is susceptible
to reasonable inferences in Anvik’s favor . For instance, Dr. Jain may have drawn the illumination source system in his notebook to provide an example of an illumination

source that could be used in his lithography system wit hout meaning to suggest that the depicted example was the best illumination design for that purpose. Nor does the existence of the ’ 013 patent prove that Dr. Jain had a best mode. Rather, it sug gests only that its claimed illumin ation system had advantages over the prior art in some contexts, not necessarily that it, or the hexagonal light tunnel component , was the best illumination source syste m to use in prac ticing the scan and repea t system claimed in the patents in suit.
Ultimately, the district court’s ruling turned on Dr. Jain’s credibility. The court was troubled by aspects of Dr. Jain’s testimony

, and in particular what the court referred to as his “fencing” with counsel at various points in response to questions. The court therefore found Dr. Jain to lack credibility

, and it based its summary jud gment ruling in large measure on that finding. That was

error. While it is possible that a witness’s c redibility could be so undermined in the course of a deposition thatANVIK CORPORATION v. NIKON PRECISION , INC

. 11

a court could conclude that no reasonable finder of fact could believe him, the task of evaluating a witness’s credibility is normally for the fact

- finder, not for a court on summary judg ment, and this case is not so extreme as to fall outside that general rule. See Wanlass v. Fedders Corp. , 145 F.3d 1461, 1463 (Fed. Cir. 1998)

. As the district court acknowledged, counsel for the d efendants did not obtain a direct admission from Dr. Jain, either that he knew of a best mode for practicing the asserted claims or that he concealed it. What counsel elicited from Dr. Jain was a repeated denial on his part that the illumination system of the ’013 patent was the best mode for practicing the “ill umination source” limit ation of the asserted claims, accompanied by an inability on Dr. Jain’s part to identify any other particular mode that would have been as good or better. From th at test imony, the district court concluded that Dr. Jain was not being truthful and that in fact he both had a best mode for the illumination source and concealed it.
The district court focused on the following aspects of Dr. Jain’s deposition testimony: (1) his admission that the illumination system disclosed in the ’013 p atent, which he depicted in his notebook, was one method for producing a uniform source of light in a polygonal shape; (2) his a dmission that the notebook also depicted his lithograph y system claimed in the patents in suit and that it related the hexagonal light tunnel component in the illumination system of the ’ 013 patent to that depiction ; (3) h is admi ssion that when he filed the ’013 patent he believed it had advantages over some prior art methods ; and (4) his statement, when asked if he had in mind any method superior to the hexagonal beam shaper and uniformizer tunnel for providing uniform light to the mask, that he did not recall, but that he “certainly may have had, b ecause this method of providing uniform hexagonal il lum ination on the substrate certainly is not the only optimum method. A nd I was quite aware of that.” Notably,ANVIK CORPORATION v. NIKON PRECISION , INC

. 12

t hroughout his deposi tion Dr. Jain contended that the illumination system of the ’ 013 patent was only one of many possible options and that he never considered that system to be part of the preferred embodiment of the patents in suit.
From that evidence, the district court concluded that Dr. Jain had effectively admitted that he “knew of som ething that subjectively was the best ,” yet he “did not declare it; he did not disclose it.” The court interpreted Dr. Jain’s statements to establish only that “there was [a] logical possibility” that a better mode could have existed

, but that Dr. Jain did not have one in mind when he invented his lithography system. Based on that finding

, the court ruled that “ there is no issue of fact, that Dr. Jain was clear in his admission . . . and he therefore failed to sati s fy what is clearly set out in section 112.”
In reaching its conclusion, the district court dr ew u nfa vorable inferences from Dr. Jain’s testimony and disr egarded two pieces of evidence that bear on the pr o priety of the grant of summary judgment. T he court in effect concluded that even though Dr. Jain professed to have known of other methods for pr oviding a source of uniform hexagonal illumination, his inability to identify any such methods showed conclusively that he was un a ware of any that were as good as the one disclosed in the ’013 patent. But that discounts the interpretation of Dr. Jain’s te st imony offered by Anvik

— that, as he testified, he knew of other suitable methods for producing a un i formly illum inated hexagonal field but at the time of his deposition could not recall the details of any of those other methods. A finder of fact might reject that interpretation of Dr. Jain’s testimony by finding his explanation to lack cred ibility. On the other hand, the fact

- finder might find his explanation plausible in light of the passage of nearly 20 years from the time of the ’257 application to the time of the deposition, particularly considering the high burden of proof requiring the defendants to produce clear andANVIK CORPORATION v. NIKON PRECISION , INC

. 13 convincing evidence of facts invalidating the asserted claims.

In his declaration submitted following his depos i tion, Dr. Jain sought to clarify his responses to some of the questions asked at his deposition relating to the best mode issue. He explained that he did not regard the hexagonal light tunnel described in the ’013 patent as either a new invention or the best method of providing illumination for the invention of the ’257 patent. Instead, the light tunnel was inventive only in combination with the light beam source system of the ’013 patent, consis ting of both a laser and a lamp. He added that he had not said, and did not believe, that the illumination system including the hexagonal mask and tunnel was the pr eferred method for providing illumination in the practice of the ’257 patent; it was, he said, “one system of many known to me at the time that w ere capable of illuminating a uniform region on a mask .” He stated that while the illumination system of the ’013 patent “had advantages over some prior

- art systems,” he did not consider it to be “the best or only means of providing a source of illumin ati on for practicing the microlithography method that became the ’257 patent.” He further explained that when he said in his testimony that the method of the ’013 patent was “the best I had thought of until then,” he meant that he “personally had not invente d a better way to produce uniform illumination.”
It is true, as the defendants point out, that a declar ation that seeks to withdraw admissions made in a wi tness’s deposition is not entitled to weight. Second Circuit law applies because this is a procedur al issue that is not unique to patent law

. See Micro Chem., Inc. v. Lextron

, Inc. , 317 F.3d 1387, 1390

– 91 (Fed. Cir. 2003)

. The Second Circuit has held that a party “may not, in order to defeat a summary judgment motion, create a material issue of fact b y submitting an affidavit disputing his own prior sworn testimony .” Trans

- Orient Marine Corp. v. StarANVIK CORPORATION v. NIKON PRECISION , INC

. 14 Trading & Marine, Inc. , 925 F.2d 566, 572 (2d Cir. 1991). On the other hand, the Second Circuit has made clear that this principle does not apply “if the deposition and the later sworn statement are not actually contradictory.” Palazzo ex re l . Delmage v. Corio , 232 F.3d 38, 43 (2d Cir. 2000).
In this case, Dr. Jain’s post

- deposition declaration sought to explain and expa nd upon Dr. Jain’s deposition testimony. It did not clearly contradict that previous testimony and therefore should have been considered by the court in assessing the defendants’ summary judgment motion.
A second piece of evidence that was before the c ourt in the summary judgment proceedings was an expert decl aration from Dr. Bruce W. Smith, who stated that “beam

shaper

- uniformizers such as the one that const i tutes part of the ’013 patent were well known in the prior art at the time of filing of the ’01 3 and ’257 patent appl i cations .” The ’257 patent’s method , he s tated

, can be practiced using many types of illumination systems other than the single, specific type of illumination system described in the ’013 patent, and those other types of illumination systems were well known at the time of filing of the ’257 patent. Dr. Smith described the prior art beam

- shaper

uniformizers in some detail

. He added that the same analysis applies to the illumination source systems di sclosed in the ’236 and ’240 patent s.
T he district court should also have considered Dr. Smith’s expert declaration in connection with the su mm ary judgment motion. The fact that better alternatives for practicing the invention may be found in the prior art
cannot establish that an invento r lacked a subjective best mode

. S ee Bayer , 301 F.3d at 1314. However, Dr. Smith’s declaration at a minimum served to support Dr. Jain’s assertion that other, equally effective illumination sources

were quite well known and therefore that he would haveANVIK CORPORATION v. NIKON PRECISION , INC

. 15

had no reason to focus on a best mode of practicing the illumination source limitations of the ’257 patent. Both parties agree that Dr . Jain is more than qualified to be considered a person of ordinary skill in the art. Th us, accepting all reasonable inferences in Anvik’s favor, a finder of fact could conclude that Dr. Jain testified trut hfully when he claimed that, at the time of the inven tion, he was aware of other

, equally useful modes of practicing his invention, even though he was unabl e to recall them during his deposition.

Dr. Jain’s reluctance to discuss the ’ 013 patent at the March 1991 conference also does not conclusively show that he regarded it as the best mode . The focus of Dr. Jain’s conference presentation was on his lithogr aphy method , not the illumination source, and his reluctance to discuss his illumination system, on which he had a patent application pending, does not ne cessarily mean that he considered it the best illumin a tion option for his lithogr aphy system . In fact

, he testified that o ne reason he did not discuss his own idea for an illumination source system at the 1991 conference was that “ several other types of beam uniformization or illumination systems were poss ible .”

The re does remain a conspicuous gap in Dr. Jain’s testimony

. Both at his deposition and in his declaration

, he failed to identify an y illumination source he deemed suitable for use in practicing the asserted claims, other than the one described in the ’013 patent

. That omi ssion may ultimately lead a finder of fact to conclude that Dr. Jain did, in fact, conceal what he believed to be the best mode of practicing the invention. At this juncture, ho wever, that omission is not sufficient, in light of the other evidence of reco rd, to persuade us that a finder of fact would be required to find clear and convincing evidence that Dr. Jain believed the illumination system of the ’013 patent was the best mode for practicing the inventions of the assert ed claims

, and that he concealed that best modeANVIK CORPORATION v. NIKON PRECISION , INC

. 16
from the public. Because a judicial determination of this factual dispute before trial is premature, we reverse the grant of summary judgment and remand this case to the district court for further proceedings.

REVERSED and REMANDED