       NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                ______________________

                SEMCON TECH, LLC,
                  Plaintiff-Appellant

                           v.

           MICRON TECHNOLOGY, INC.,
                Defendant-Appellee
              ______________________

                      2015-1936
                ______________________

    Appeal from the United States District Court for the
District of Delaware in No. 1:12-cv-00532-RGA, Judge
Richard G. Andrews.
                ______________________

               Decided: August 19, 2016
               ______________________

    MARC AARON FENSTER, Russ August & Kabat, Los
Angeles, CA, argued for plaintiff-appellant. Also repre-
sented by JEFFREY ZHI YANG LIAO, ADAM S. HOFFMAN,
PAUL ANTHONY KROEGER.

    JARED BOBROW, Weil, Gotshal & Manges LLP, Red-
wood Shores, CA, argued for defendant-appellee. Also
represented by AARON Y. HUANG.
                ______________________
2             SEMCON TECH, LLC    v. MICRON TECHNOLOGY, INC.



   Before PROST, Chief Judge, BRYSON and STOLL, Circuit
Judges.
BRYSON, Circuit Judge.
    Plaintiff Semcon Tech, LLC, (“Semcon”) appeals from
a summary judgment entered in favor of defendant Mi-
cron Technology, Inc., (“Micron”) by the United States
District Court for the District of Delaware. The district
court held that the asserted claims of U.S. Patent No.
7,156,717 (“the ’717 patent”) are invalid as anticipated by
U.S. Patent No. 6,010,538 (“Sun”). Because we disagree
with the analysis that led the district court to conclude
that there is no genuine issue of material fact on the issue
of anticipation, we vacate the district court’s summary
judgment order and remand for further proceedings.
                              I
    The ’717 patent is directed to methods for finishing
semiconductor wafers during manufacture. The methods
of the four asserted claims entail carefully reducing the
thickness of the wafers by a computer-controlled polishing
process that uses pressure and a chemical slurry. The
finishing process employs sensors to monitor and adjust
the reduction of the thickness of the wafers. When the
process reaches a predefined endpoint it stops.
    It is undisputed that Sun is a close prior art reference.
Like the ’717 patent, the Sun patent describes controlling
the finishing of a semiconductor wafer using calculations
derived from sensor data. The anticipation dispute focus-
es on only one limitation of the ’717 patent: “changing a
plurality of control parameters in response to an evalua-
tion of both the in situ process information . . . and the
SEMCON TECH, LLC   v. MICRON TECHNOLOGY, INC.            3



tracked information . . . during at least a portion of the
finishing cycle time.” 1
    The narrow issue on appeal is whether the district
court erred in concluding, on summary judgment, that
Sun discloses this limitation of changing the control
parameters for the finishing process by using calculations
that are based on both “tracked information” and “in situ
process information,” and that no reasonable finder of fact
could conclude otherwise. The district court construed
tracked information to mean “pre-polishing information
about the wafer being polished that is associated with the
wafer,” and found that the initial thickness of the wafer
was an example of tracked information. The court con-
strued in situ process information to mean “information
that is sensed from the wafer currently undergoing CMP
[chemical-mechanical polishing].” Those constructions
are not disputed.
    The district court found that Sun disclosed this limi-
tation and based its analysis on statements by Micron’s
expert, Dr. David Dornfeld. In particular, the court
quoted the statement by Dr. Dornfeld in his principal
declaration that “Sun discloses that the polishing process
can be controlled in real time in response to pre-polish
thickness information and information that is sensed from
the wafers by sensors before reaching its endpoint.” The
court also relied on Dr. Dornfeld’s statement in Micron’s
claim chart that “Sun discloses a controller and processor
algorithm which, in response to rate information calculat-
ed from the initial thickness of the wafer being polished
and information detected from sensors, can control the


   1     Although minor variations of this limitation are
found among the four asserted claims, Micron acknowl-
edges that claim 1 is representative, and the parties have
not argued that the analysis of the anticipation issue
differs for any of the asserted claims.
4             SEMCON TECH, LLC    v. MICRON TECHNOLOGY, INC.



CMP process.” Based on that evidence, the court conclud-
ed that Sun disclosed the use of tracked information, i.e.,
the initial thickness of the wafer, in connection with in
situ process information obtained from the sensors, to
calculate rate of removal information that is used to
change the control parameters during the finishing pro-
cess. The court thus adopted Dr. Dornfeld’s conclusion
that Sun uses the initial thickness of the wafer to calcu-
late the amount of material removed from the wafer
during polishing and thus to calculate the rate of removal
of the material from the wafer. The rate of removal, Dr.
Dornfeld explained, was used to affect the control param-
eters for the polishing process.
    Semcon contends that the district court erred in its
finding as to what Sun discloses. According to Semcon,
Sun calculates the rate of material removal from the
wafer without reference to tracked information (e.g., the
wafer’s initial thickness). Instead, Semcon asserts, Sun
calculates the rate of removal based exclusively on sensor
readings gathered during the polishing process and
timing information. As evidence for its interpretation of
Sun, Semcon cites portions of the Sun patent and Dr.
Dornfeld’s deposition testimony, which purportedly con-
tradicts his declaration. Reviewing that evidence, the
district court concluded that Semcon “offers no contrary
expert testimony, but instead provides snippets of deposi-
tion examination. The snippets do not create a disputed
material fact.”
    In this appeal we examine whether there is a genuine
question that Sun discloses the use of the initial thickness
of the wafer in calculating the rate of removal of material
from the wafer.
                             II
    Summary judgment is appropriate “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
SEMCON TECH, LLC   v. MICRON TECHNOLOGY, INC.              5



law.” Fed. R. Civ. P. 56(a). There is a genuine dispute of
material fact “if the evidence is sufficient for a reasonable
factfinder to return a verdict for the nonmoving party.”
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
                             A
    The district court relied heavily on Dr. Dornfeld’s dec-
laration and his attached claim chart. In particular, the
court noted that Dr. Dornfeld referred to column 8, lines
41-67, and Figure 13 from Sun as the basis for his conclu-
sion that Sun discloses using the initial thickness of the
wafer in calculating the rate of removal of material from
the wafer during the polishing process. In fact, however,
the cited portions of Sun do not appear to support Dr.
Dornfeld’s characterization.
     Earlier portions of column 8 of Sun describe how the
initial thickness of the wafer can be used to determine the
endpoint of the polishing process based on the wafer’s
current thickness. Sun first explains that “[a]t some point
TE, the thickness of the layer has been reduced by a
desired amount; that is, an endpoint to the CMP process.
This is often all the information that is necessary to
control the process and determine its endpoint.” 2 Sun,
col. 8, ll. 13-20. Sun then adds that “[b]y also knowing the
starting thickness of the transparent layer, the measured
thickness removed is subtracted to determine the remain-
ing thickness of the layer. It is often desired to deter-
mine, as an endpoint of the process, when the layer has
been reduced to a certain thickness. The CMP process is
then stopped.” Id., col. 8, ll. 20-25.



    2     The Sun specification describes how the amount of
material that has been removed during the process is
determined from electromagnetic sensor readings without
reliance on initial thickness. Sun, col. 7, line 43, through
col. 8, line 16; col. 9, line 1, through col. 12, line 64.
6             SEMCON TECH, LLC   v. MICRON TECHNOLOGY, INC.



     Those portions of column 8 of Sun disclose using the
wafer’s initial thickness to determine the endpoint of the
CMP process based on a target remaining thickness, but
they do not address the question whether the wafer’s
initial thickness is used to calculate the rate of removal
that is in turn used to control the process before the
endpoint is reached.
     To the contrary, the Sun specification at lines 41
through 67 of column 8 states that the rate of removal of
material from the wafer is determined from “the amount
of material measured to have been removed during a
certain time interval,” Sun, col. 8, ll. 48-49, which in turn
is based on sensor information, in particular the interfer-
ence measurements depicted in Figure 8A of the patent.
Sun explains that “[n]o matter what specific condition is
designated as the endpoint of the process of removing
material from a transparent layer, that process may be
controlled in real time, before reaching its endpoint, from
the information being received in the form of Fig. 8A.”
Id., col. 8, ll. 41-45. The rate of material removal is then
calculated by measuring the amount of material removed
during a certain time interval and dividing that amount
by the time elapsed in that interval. Id., col. 8, ll. 45-50.
“In response to such rate information, the CMP process
may be adjusted until a desired removal rate is obtained
and maintained.” Id., col. 8, ll. 50-52.
    That portion of Sun, which was relied upon by Dr.
Dornfeld, does not suggest that the rate of removal is
determined by calculating the difference between the
current thickness of the wafer and its initial thickness
over time. Instead, it suggests that the rate of removal is
calculated using only sensor information as to the amount
of material removed, together with timing information.
   Figure 13 of Sun and the accompanying portion of the
Sun specification also do not clearly support Dr. Dorn-
SEMCON TECH, LLC   v. MICRON TECHNOLOGY, INC.            7



feld’s characterization of the Sun reference.   The perti-
nent portion of Figure 13 is set forth below:




     According to Dr. Dornfeld, Figure 13 shows that the
initial thickness of the wafer is used in calculating the
amount of material removed from the wafer, and in turn
the rate of removal of material. Dr. Dornfeld asserted
that along with “in situ process information” from the
sensors, the rate information is used to change the control
parameters in the CMP process.
    Dr. Dornfeld’s theory, however, appears to be at odds
with the description of the claimed methods in the portion
of the specification that addresses Figure 13.
    The specification states that Figure 13 illustrates a
processing algorithm that is used to determine “when a
8              SEMCON TECH, LLC   v. MICRON TECHNOLOGY, INC.



process of reducing the thickness of the transparent layer
48 . . . has reached an endpoint TE.” Id., col. 13, line 66,
through col. 14, line 3. One item that can be input in the
first step of the algorithm, identified as step 116, is “the
initial thickness of the film 48, which can be determined
by measurement or ascertained from the parameters of
the process used to form the layer. 3 As the specification
explains, “[i]f the initial film thickness was inputted by
the operator in the step 116, the step 128 also calculates
and outputs the remaining thickness of the film at the
location of each of the sensor units.” Id., col. 14, ll. 50-55.
Thus, Sun discloses that initial thickness information can
be used to determine when the process endpoint has been
reached, but it does not clearly disclose that initial thick-
ness information is used to calculate the rate at which
material is removed from the wafers, which in turn re-
sults in changing the control parameters in the polishing
process.
    Instead, the calculation of the removal rate at step
126, according to the Sun specification, is performed by
using data from the sensing units together with timing
information. That data can be used to calculate the
amount of material that has been removed from the wafer
and thus the rate of removal of material. Sun, col. 14, ll.
12-45. The specification explains that in step 128 of
Figure 13, “the thickness of material that has been re-
moved from the layer 48 is determined by multiplying the
removal rate determined in the step 126 by the amount of
time that has elapsed during the process.” Id., col. 14, ll.
46-49.
    Thus, contrary to Dr. Dornfeld’s assertion that “rate
information [is] calculated from the initial thickness of


    3   Sun makes clear that the film is the top layer of
the wafer that is planarized during the CMP process.
Sun, col. 7, ll. 41-52.
SEMCON TECH, LLC   v. MICRON TECHNOLOGY, INC.              9



the wafer being polished,” that portion of the Sun specifi-
cation does not state that the initial thickness of the film
is used in calculating the removal rate of material from
the film, but rather that the removal rate is determined
based on data from the sensing units.
     Semcon also contends that Dr. Dornfeld’s deposition
contradicts the portions of his declaration on which the
district court relied. In his deposition, Dr. Dornfeld
agreed that determining the rate of removal of material
referred to in Sun “does not require a comparison to the
initial thickness” of the wafer, and that the rate of remov-
al “is calculated without reference to the initial thick-
ness.” Those statements are, at minimum, in tension
with Dr. Dornfeld’s assertion that Sun discloses that rate
information is “calculated from the initial thickness of the
wafer being polished.” While it may be possible to recon-
cile Dr. Dornfeld’s deposition testimony with his declara-
tion, the district court did not offer an explanation for the
apparent inconsistency, and we conclude that the incon-
sistency between the two is a relevant factor bearing on
whether it was appropriate for the district court to grant
summary judgment based on Dr. Dornfeld’s declaration. 4



    4    Micron submitted a reply declaration by Dr. Dorn-
feld following his deposition, in which he sought to recon-
cile his deposition testimony with his characterizations of
the Sun reference. While Dr. Dornfeld’s reply declaration
reasserts that the removal rate in Sun is calculated based
in part on the initial thickness of the wafer, a reasonable
finder of fact could conclude that Dr. Dornfeld’s reply
declaration failed to rebut Semcon’s characterization of
column 8 of Sun, and could instead credit Dr. Dornfeld’s
admissions during his deposition that “the rate of materi-
al removal does not require a comparison to the initial
thickness” and that “rate is calculated without reference
to the initial thickness.”
10             SEMCON TECH, LLC   v. MICRON TECHNOLOGY, INC.



                              B
    The law requires that in a summary judgment motion
all justifiable inferences be drawn in the nonmovant’s
favor. Anderson, 477 U.S. at 255. Based on the portions
of the Sun specification cited above, a reasonable factfind-
er could conclude that Sun does not disclose using both
the initial thickness of the wafer and sensor information
to calculate rate information. For that reason, a reasona-
ble factfinder could conclude that Sun does not disclose
the ’717 patent’s limitation of controlling the process “in
response to an evaluation of both [sensor information] and
the tracked information.”
    The fact that Semcon offered no contrary expert tes-
timony directed to the issue of anticipation does not
justify the issuance of summary judgment. Through its
textual arguments regarding the Sun reference and its
reliance on the apparent inconsistencies between Dr.
Dornfeld’s deposition testimony and his declaration,
Semcon showed why a reasonable finder of fact might
disagree with Dr. Dornfeld’s anticipation analysis.
     That is all that is required on the part of the nonmov-
ing party in opposing a summary judgment motion on an
issue as to which the moving party has the burden of
proof, as Micron does here. See Exigent Tech., Inc. v.
Atrana Solutions, Inc., 442 F.3d 1301, 1307 (Fed. Cir.
2006); Saab Cars USA, Inc. v. United States, 434 F.3d
1359, 1368 (Fed. Cir. 2006) (quoting James Wm. Moore et
al., Moore’s Federal Practice ¶ 56.13[1] (3d ed. 2005)) (“[I]f
the motion is brought by a party with the ultimate burden
of proof, the movant must still satisfy its burden by show-
ing that it is entitled to judgment as a matter of law even
in the absence of an adequate response by the non-
movant.”); Lencco Racing Co. v. Joliffe, 215 F.3d 1341,
1999 WL 506857, at *4 (Fed. Cir. 1999) (“When the mo-
vant bears the burden of proof . . . summary judgment
cannot be granted unless the movant makes a showing on
SEMCON TECH, LLC   v. MICRON TECHNOLOGY, INC.             11



each required element and the nonmovant’s response fails
to raise a genuine issue of material fact as to any ele-
ment.”).
    This court’s law on that issue is consistent with the
law in other courts. See, e.g., Bailey v. McDonnell Doug-
las Corp., 989 F.2d 794, 802 (5th Cir. 1993) (“Where, as
here, the moving party [will bear] the burden of proof at
trial, it must come forward with evidence [on summary
judgment] which would entitle it to a directed verdict if
the evidence went uncontroverted at trial. . . . In this
situation, only after the moving party meets this burden
must the non-moving party produce its ‘significant, proba-
tive evidence.’”) (quoting Int’l Shortstop, Inc. v. Rally’s,
Inc., 939 F.2d 1257, 1264-65 (5th Cir. 1991), and Chanel,
Inc. v. Italian Activewear of Fla., Inc., 931 F.2d 1472, 1477
(11th Cir. 1991)); Resolution Trust Corp. v. Gill, 960 F.2d
336, 340 (3d Cir. 1992) (“[W]here the movant bears the
burden of proof at trial and the motion does not establish
the absence of a genuine factual issue, the district court
should deny summary judgment even if no opposing
evidentiary matter is presented.”); Houghton v. South,
965 F.2d 1532, 1536-37 (9th Cir. 1992).
                             C
    Micron argues that the district court’s summary
judgment order can be sustained on several alternative
grounds. The alternative grounds, however, depend on a
reference not relied upon by the district court and on a
claim construction issue not addressed by the district
court. They are therefore not ripe as grounds for this
court to sustain the district court’s summary judgment
order.
    Micron’s first proposed alternative ground for affir-
mance is that U.S. Patent No. 5,499,733 (“Litvak”), which
was incorporated by reference in the Sun patent, antici-
pates the asserted claims of the ’717 patent. The district
court, however, did not rely on, or even discuss, Litvak in
12            SEMCON TECH, LLC   v. MICRON TECHNOLOGY, INC.



the portion of its summary judgment order addressing the
relevant limitations. 5 Because the district court did not
rely on Litvak, we decline to reach the question whether
Litvak could serve as an alternative ground for upholding
the district court’s order.
    Micron also argues that the district court’s anticipa-
tion judgment can be upheld on the theory that “tracked
information” includes not only the initial thickness of the
wafer, but also the target amount of film to be removed.
The target amount of film to be removed, according to
Micron, is used in the Sun process to control the CMP
process, thus establishing that Sun anticipates the as-
serted claims of the ’717 patent.
    Again, the district court did not rely on that theory as
a basis for its anticipation analysis and did not find in its
summary judgment order that the term tracked infor-
mation included the target amount of film to be removed. 6
In the absence of analysis of the “target amount” theory
by the district court, we do not address whether that
theory could support a summary judgment of anticipation.
As in the case of the Litvak reference, the district court
may consider on remand whether that theory provides a
basis for anticipation.


     5  The court addressed Litvak only in the portion of
its summary judgment opinion discussing the uniform
region limitations found in claims 37 and 56.
    6   The district court’s only reference to the amount
of film to be removed is in the court’s statement that
Figure 13A “begins with ‘Input Initial Film Thickness &
Target Amount of Film to be Removed.’” This direct
quotation of the contents of the first box of Figure 13A
was not presented as a construction of the term “tracked
information.” Instead, when referring to tracked infor-
mation, the court consistently referred to the initial
thickness of the film.
SEMCON TECH, LLC   v. MICRON TECHNOLOGY, INC.             13



                             III
    After entering summary judgment of anticipation in
favor of Micron, the court denied Semcon’s motion for
summary judgment of no anticipation as moot. Semcon
now argues that, in addition to reversing the summary
judgment in favor of Micron, this court should reverse the
district court’s denial of Semcon’s motion for summary
judgment of no anticipation and direct the district court to
enter summary judgment on that issue in Semcon’s favor.
We decline to do so.
    The denial of a motion for summary judgment is not a
“final decision” of a district court, 28 U.S.C. § 1295(a)(1),
and therefore is not ordinarily appealable. Plantronics,
Inc. v. Aliph, Inc., 724 F.3d 1343, 1357 (Fed. Cir. 2013);
M. Eagles Tool Warehouse, Inc. v. Fisher Tooling Co., 439
F.3d 1335, 1344 (Fed. Cir. 2006); Lermer Germany GmbH
v. Lermer Corp., 94 F.3d 1575, 1576 (Fed. Cir. 1996). As
the Supreme Court has explained, appellate courts lack
jurisdiction over the denial of a motion for summary
judgment based on disputed issues of fact because such a
denial “does not settle or even tentatively decide anything
about the merits of the claim.” Switz. Cheese Ass’n, Inc. v.
E. Horne’s Mkt., Inc., 385 U.S. 23, 25 (1966); see also
Advanced Software Design Corp. v. Fiserv, Inc., 641 F.3d
1368, 1381-82 (Fed. Cir. 2011).
     Nor does the doctrine of pendent appellate jurisdiction
apply here. That doctrine is reserved for “only the most
extraordinary circumstances,” Falana v. Kent State Univ.,
669 F.3d 1349, 1360 (Fed. Cir. 2012), such as where the
pendent issue is “inextricably intertwined” with the
principal issue before the court such that it is necessary to
review both to ensure meaningful review. See Swint v.
Chambers Cty. Comm’n, 514 U.S. 35, 50-51 (1995); Enteg-
ris, Inc. v. Pall Corp., 490 F.3d 1340, 1348 (Fed. Cir.
2007). The issue we have decided—that a reasonable
finder of fact could find against Micron on the issue of
14            SEMCON TECH, LLC   v. MICRON TECHNOLOGY, INC.



anticipation—is separate from the question Semcon
wishes us to decide—whether a reasonable finder of fact
could only decide in favor of Semcon on the issue of antic-
ipation.
    This court has declined to exercise pendent appellate
jurisdiction in cases indistinguishable from this one,
where the court has reversed the grant of summary
judgment for the appellee, but has declined to address a
request that the court reverse the denial of the appellant’s
motion for summary judgment. See, e.g., Advanced Fiber
Techs. Trust v. J&L Fiber Servs., Inc., 674 F.3d 1365,
1377 (Fed. Cir. 2012).
    Although it is within our authority under 28 U.S.C.
§ 2106 to direct the entry of summary judgment in Sem-
con’s favor on remand, we decline to do so. See Conoco
Inc. v. Dep’t of Energy, 99 F.3d 387, 394-95 (Fed. Cir.
1996). The district court did not rule on the merits of
Semcon’s motion, but merely dismissed it as moot in light
of the court’s ruling on Micron’s motion. Under these
circumstances, it would be inappropriate for this court to
go beyond the scope of the final order of invalidity entered
by the district court and adjudicate issues not squarely
decided by that court in an appealable final judgment.
See id. at 395 (“[D]irecting summary judgment for the
appellant is appropriate only if appellate court is ‘quite
certain that no further exploration of the facts is in or-
der.’”) (quoting 6 James Wm. Moore et al., Moore’s Federal
Practice ¶56.13, at 56-179 (1996 ed.)).
                            IV
    We vacate the summary judgment of invalidity and
remand for further proceedings consistent with this
opinion. We decline Semcon’s request that we direct the
district court to enter summary judgment of invalidity in
Semcon’s favor.
             VACATED AND REMANDED
