 United States Court of Appeals for the Federal Circuit

                                     04-1396, -1513


                       MEMC ELECTRONIC MATERIALS, INC.,

                                                       Plaintiff-Appellant,

                                            v.


             MITSUBISHI MATERIALS SILICON CORPORATION,
              MITSUBISHI SILICON AMERICA CORPORATION,
     SUMITOMO MITSUBISHI SILICON CORPORATION (also known as Sumco),
         SUMCO USA CORPORATION (also known as Sumco USA), and
      SUMCO USA SALES CORPORATION (also known as Sumco USA Sales),

                                                       Defendants-Cross Appellants.



        Robert M. Evans, Jr., Senniger Powers, of St. Louis, Missouri, argued for
plaintiff-appellant. With him on the brief was Marc W. Vander Tuig. Of counsel on the
brief were Duane H. Mathiowetz and Korula T. Cherian, Howrey Simon Arnold & White,
LLP, of San Francisco, California.

      R. Terrance Rader, Rader, Fishman & Grauer PLLC, of Bloomfield Hills,
Michigan, argued for defendants-cross appellants. With him on the brief were David T.
Nikaido and Glenn E. Forbis. Of counsel were Ellen A. Efros and Lisa R. Mikalonis.

Appealed from: United States District Court for the Northern District of California

Judge Saundra Brown Armstrong
   United States Court of Appeals for the Federal Circuit

                                   04-1396, -1513

                      MEMC ELECTRONIC MATERIALS, INC.,

                                                        Plaintiff-Appellant,


                                          v.


             MITSUBISHI MATERIALS SILICON CORPORATION,
              MITSUBISHI SILICON AMERICA CORPORATION,
     SUMITOMO MITSUBISHI SILICON CORPORATION (also known as Sumco),
         SUMCO USA CORPORATION (also known as Sumco USA), and
      SUMCO USA SALES CORPORATION (also known as Sumco USA Sales),

                                                         Defendants-Cross Appellants.


                          __________________________

                            DECIDED: August 22, 2005
                          __________________________



Before NEWMAN, SCHALL, and DYK, Circuit Judges.

SCHALL, Circuit Judge.


      MEMC Electronic Materials, Inc. (“MEMC”) is the assignee of record of U.S.

Patent No. 5,919,302 (the “’302 patent”). It brought suit in the United States District

Court for the Northern District of California against Mitsubishi Materials Silicon

Corporation, Mitsubishi Silicon America Corporation, Sumitomo Mitsubishi Silicon

Corporation (“SUMCO Corp.”), Sumco USA Corporation (“SUMCO USA”), and Sumco

USA Sales Corporation (“SUMCO USA Sales”) (collectively, “defendants” or “SUMCO”).
In its suit, MEMC alleged direct infringement of the ’302 patent under 35 U.S.C.

§ 271(a) and inducement of infringement of the patent under 35 U.S.C. § 271(b). The

district court eventually granted summary judgment in favor of defendants on the ground

that, as a matter of law, they could not be liable for either direct infringement or

inducement of infringement. MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon

Corp., No. 4:01-CV-04925 (N.D. Cal. Mar. 16, 2004) (“Summary Judgment Order”). As

far as direct infringement was concerned, the court ruled that there was no evidence of

sales or offers for sale of accused products in the United States. As far as inducement

of infringement was concerned, the court ruled that MEMC had failed to produce any

evidence of inducement of infringement by defendants.         MEMC now appeals that

decision. At the same time, defendants cross-appeal the district court’s denial of their

motion for attorney’s fees, expert witness fees, and expenses.

      We see no error in the grant of summary judgment with respect to direct

infringement. However, in view of what we think are genuine issues of material fact, we

hold the district court did err in granting summary judgment with respect to inducement

of infringement.   Accordingly, with respect to MEMC’s appeal, the judgment of the

district court is affirmed-in-part and reversed-in-part and the case is remanded to the

district court for further proceedings.    On the cross-appeal, we affirm the denial of

defendants’ request for attorney’s fees.

                                             I.

      MEMC is a supplier of silicon wafers to the semiconductor industry. The ’302

patent, entitled “Low Defect Density Vacancy Dominated Silicon,” relates to the

preparation of semiconductor grade single crystal silicon, which is used, in wafer form,




04-1396, -1513                               2
in the manufacture of electronic components such as integrated circuits. ’302 patent

col. 1, ll. 9-16. Prior art methods of manufacturing single crystal silicon often resulted in

crystals containing large quantities of agglomerated intrinsic point defects. Id. col. 1, ll.

18-55.     These defects can severely impact the yield potential of silicon wafers in

complex and highly integrated circuits. Id. col. 1, ll. 53-55. The patent discloses a

method of preparing single crystal silicon that is substantially free of agglomerated

intrinsic point defects. Specifically, the ’302 patent discloses a process specifying initial

growth conditions and the temperature range of the manufacturing process. Id. col. 3, l.

62 – col. 4, l. 14.

         Claim 1, the only asserted independent claim of the ’302 patent, states as

follows:

               1. A single crystal silicon wafer having a central axis, a front side
         and a back side which are generally perpendicular to the central axis, a
         circumferential edge, and a radius extending from the central axis to the
         circumferential edge of the wafer, the wafer comprising
               a first axially symmetric region in which vacancies are the
               predominant intrinsic point defect and which is substantially
               free of agglomerated vacancy intrinsic point defects wherein
               the first axially symmetric region comprises the central axis
               or has a width of at least about 15 mm.

’302 patent col. 23, ll. 17-23.

         SUMCO, like MEMC, is a supplier of silicon wafers to the semiconductor

industry. It is undisputed that SUMCO’s silicon wafers are manufactured exclusively

outside of the United States at SUMCO’s manufacturing plant in Yonezawa, Japan.

Ostensibly, SUMCO sells silicon wafers to Samsung Japan Corporation (“Samsung




04-1396, -1513                               3
Japan”), which then sells the wafers to Samsung Austin Semiconductor, located in

Austin, Texas (“Samsung Austin”).1

       On December 14, 2001, MEMC sued SUMCO in the United States District Court

for the Northern District of California, claiming that SUMCO was liable for infringement

and inducement of infringement of the ’302 patent based upon SUMCO’s alleged sale

and importation of certain silicon wafers.2      MEMC asserted that SUMCO directly

infringed the ’302 patent under 35 U.S.C. § 271(a) by offering to sell and selling the

accused wafers to Samsung Austin.         With respect to its claim of inducement of

infringement under 35 U.S.C. § 271(b), MEMC asserted that SUMCO encouraged and

enabled Samsung Austin to use the accused wafers by manufacturing wafers according

to Samsung Korea’s specifications and by providing technical support to the Samsung

Austin facility.

                                           II.

       On December 3, 2003, SUMCO filed a motion for summary judgment of zero

damages, arguing that MEMC could not prove that defendants committed the alleged

acts of infringement within the United States. SUMCO argued that it did not sell the

accused wafers either directly or indirectly to Samsung Austin, and that it only sold the

accused wafers to Samsung Japan. SUMCO also argued that it had not engaged in




       1
              Samsung Electronics Co., Ltd. (“Samsung Korea”) is the Korean parent
company of Samsung Austin and Samsung Japan.
       2
              Mitsubishi Materials Silicon Corporation and Mitsubishi Silicon America
Corporation were the original defendants. In February of 2002, SUMCO Corp. was
formed as a joint venture between Mitsubishi Materials Silicon Corporation and the Sitix
Division of Sumitomo Metals Industries, Ltd. The complaint was thereafter amended to
add SUMCO Corp., SUMCO USA, and SUMCO USA Sales as defendants.


04-1396, -1513                             4
any conduct that would constitute the active inducement of infringement by Samsung

Austin in the United States.

      MEMC responded that Samsung Japan was merely a conduit for the delivery of

defendants’ accused wafers and that Samsung Austin was SUMCO’s true customer.

MEMC also argued that defendants induced Samsung Austin’s infringement of the ’302

patent by manufacturing wafers according to Samsung Austin’s specifications and by

providing substantial technical support to Samsung Austin.

      On March 16, 2004, the district court granted defendants’ summary judgment

motion. The court held that MEMC had failed to produce any evidence of sales or offers

for sales of the accused wafers in the United States by defendants or any evidence of

importation of the accused wafers into the United States by defendants. Summary

Judgment Order, slip op. at 2. The court also held that, vis-à-vis Samsung Austin,

MEMC had failed to provide any evidence of active and intentional inducement of

infringement by defendants.    Id.   On April 22, 2004, the district court entered final

judgment of non-infringement. Under these circumstances, the court reasoned, MEMC

could not establish entitlement to any damages. Id. On May 20, 2004, SUMCO filed a

motion for attorney’s fees, expert witness fees, and expenses. The district court denied

this motion on July 9, 2004. MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon

Corp., No. 4:01-CV-04925 (N.D. Cal. July 9, 2004) (“Attorney’s Fees Order”).

      MEMC appeals the district court’s final determination of non-infringement as well

as the underlying order granting SUMCO summary judgment of zero damages.

SUMCO cross-appeals the district court’s denial of its motion for attorney’s fees, expert

witness fees, and expenses. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).




04-1396, -1513                              5
                                        DISCUSSION

                                             I.

       Summary judgment is appropriate only if, when the facts are viewed in the light

most favorable to the nonmoving party and all doubts are resolved against the movant,

there are no genuine issues of material fact and the moving party is entitled to judgment

as a matter of law. Fed. R. Civ. P. 56(c); Anderson v. Liberty Lobby, Inc., 477 U.S. 242,

247-48 (1986); see also Caterpillar, Inc. v. Deere & Co., 224 F.3d 1374, 1379 (Fed. Cir.

2000) (“When ruling on a motion for summary judgment, all of the nonmovant’s

evidence is to be credited, and all justifiable inferences are to be drawn in the

nonmovant’s favor.”). The movant carries the initial burden of proving that there are no

genuine issues of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 322-24 (1986).

If the movant shows a prima facie case for summary judgment, then the burden of

production shifts to the nonmovant to present specific evidence indicating there is a

genuine issue for trial. Anderson, 477 U.S. at 250. This court reviews de novo the

district court’s finding that there is no genuine issue as to any material fact regarding

infringement. Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1339 (Fed.

Cir. 2003).

       The district court based its ruling of non-infringement on MEMC’s inability to

establish damages for infringement and, thus, did not address the issue of claim

coverage with respect to the ’302 patent. Accordingly, we assume for purposes of this

appeal that the asserted claims of the ’302 patent read on the accused wafers. We turn

first to the issue of direct infringement.




04-1396, -1513                               6
                                             II.

         The following facts are not in dispute: SUMCO sells the accused silicon wafers to

Samsung Japan, which then sells the wafers to Samsung Austin. As noted above, the

wafers are manufactured exclusively outside of the United States at SUMCO’s

manufacturing plant in Yonezawa, Japan. SUMCO manufactures the accused wafers

according to specifications provided by, and pursuant to a license from, Samsung

Korea.       Typically, Samsung Japan sends SUMCO an electronic purchase order

specifying the number of wafers to be manufactured. At some point after the purchase

order is received, SUMCO processes the order and manufactures the wafers. The

wafers then are packed in boxes at the Yonezawa plant and delivered at Yonezawa to a

packaging company. SUMCO attaches a packaging label that indicates the destination

of the wafers to be Austin, Texas. The packaging company, in turn, transports the

boxes to its own facility for shipment, “free on board,”3 to Samsung Austin’s

semiconductor fabrication plant in Austin, Texas.

         Beyond these undisputed facts, MEMC directs our attention to evidence in the

record from the summary judgment proceedings that it contends supports finding

specific contacts between SUMCO and Samsung Austin. In support of its allegation of

infringement, MEMC submitted a series of e-mails between SUMCO and an engineer at

Samsung Austin. These e-mails suggest that SUMCO provides Samsung Austin with

detailed electronic test data on the wafers for the purpose of obtaining Samsung

Austin’s approval for shipment before SUMCO turns the wafers over to the packaging

         3
              “Free on board” is a method of shipment whereby goods are delivered at a
designated location, usually a transportation depot, at which legal title and thus the risk
of loss passes from seller to buyer. See N. Am. Philips Corp. v. Am. Vending Sales,
Inc., 35 F.3d 1576, 1578 n.2 (Fed. Cir. 1994).


04-1396, -1513                               7
company for shipment to the United States. The engineer at Samsung Austin analyzes

the test data upon receipt and, if the data indicates that the wafers are acceptable, the

shipment is approved. These e-mails also suggest that SUMCO and Samsung Austin

communicated directly and independently of Samsung Japan in order to coordinate

shipment dates and the quantity of wafers sent in each shipment, subject to Samsung

Austin’s final approval.   In addition, the e-mails represent communications directly

between Samsung Austin and SUMCO that address various problems Samsung Austin

encountered with the wafers from time to time. These communications often resulted in

adjustments made in the upstream manufacturing process at the SUMCO facility in

Japan or adjustments made in the downstream process at the Samsung Austin facility

in Austin, Texas.

      The e-mail correspondence between employees of SUMCO and the engineer at

Samsung Austin also reveals a transaction in November and December of 2002, during

which SUMCO’s International Sales Manager, Toshihiro Awa, requested authorization

from Samsung Austin for the shipment of a quantity of wafers with a modified edge-

shape directly to Samsung Austin.      The wafers were sent in response to certain

problems with previously-supplied SUMCO wafers. Mr. Awa was granted authority from

Samsung Austin’s purchasing manager to add these wafers to an existing Samsung

Japan purchase order.

      Finally, MEMC presented evidence suggesting that SUMCO personnel made

several on-site visits to the Samsung Austin plant after issuance of the ’302 patent.

First, MEMC pointed to the deposition testimony of Yoshihiro Wakisawa, an engineer at

SUMCO. Mr. Wakisawa testified that he took two trips to the Samsung Austin facility in




04-1396, -1513                             8
2000 and 2001. Mr. Wakisawa further testified that, during at least one of the trips, he

made a technical presentation concerning the accused wafers. Second, MEMC cited

the deposition testimony of Mr. Awa that he made multiple trips to the Samsung Austin

facility, including one trip during 2000 or 2001 during which he made a technical

presentation concerning the accused wafers.

                                            III.

       On appeal, MEMC argues that the district court erred in granting summary

judgment of no direct infringement because the evidence of record demonstrates that

SUMCO offers to sell and sells the accused silicon wafers to Samsung Austin in Austin,

Texas. First, MEMC argues, SUMCO sells the accused wafers to Samsung Austin

based on evidence that SUMCO: (1) manufactures the accused wafers according to

Samsung’s specifications; (2) e-mails Samsung Austin the test data for shipment

authorization, (3) packages the wafers for shipment; (4) applies a shipping label for

Samsung Austin in Austin, Texas; and (5) provides crucial follow-up technical support.

Thus, SUMCO asserts that Samsung Japan’s “interposition in the purchase order

process” does not change the fact that Samsung Austin is SUMCO’s “true” customer.

MEMC cites N. Am. Philips Corp. v. Am. Vending Sales, Inc., 35 F.3d 1576 (Fed. Cir.

1994), and Beverly Hills Fan Co. v. Royal Sovereign Corp., 21 F.3d 1558 (Fed. Cir.

1994), for the proposition that the location of an infringing sale is either where the buyer

is located or where a patentee suffers economic loss.

       Second, according to MEMC, the transmittal of data from defendants to

Samsung Austin constitutes an “offer to sell” the accused wafers within the meaning of

section 271(a).      MEMC states that, “[t]hrough these e-mails, SUMCO has




04-1396, -1513                               9
communicated its willingness to ship to [Samsung Austin] a certain quantity of wafers

(typically some subset of the total quantity identified in the electronic purchase order) on

a certain date for the previously agreed to price, such wafers having the characteristics

described by the voluminous data contained in the attached spreadsheets.” MEMC

states in addition that if Samsung Austin replies to the e-mail and accepts the tendered

data, the bargain is concluded and SUMCO causes the wafers to be shipped to the

United States. MEMC further states that SUMCO’s e-mails generate interest in the

accused wafers to the commercial detriment of MEMC—a result indicative of an

infringing offer to sell.

       SUMCO responds that the district court did not err in granting summary judgment

that SUMCO does not directly infringe the ’302 patent under 35 U.S.C. § 271(a). This is

so, according to SUMCO, because MEMC presented no evidence that SUMCO sells or

offers to sell the accused wafers in the United States. SUMCO asserts that the test

data it sends to Samsung Austin is generated and sent after the accused wafers have

been purchased and manufactured in Japan.          Consequently, according to SUMCO,

transmittal of this data cannot constitute an “offer to sell.” SUMCO states that e-mailing

of this test data is done merely to allow Samsung Austin to confirm that the actual

wafers satisfy Samsung’s specifications, i.e., the terms of the bargain already struck

between Samsung Korea and SUMCO. Likewise, SUMCO asserts that the post-sale

technical support it provides to Samsung Austin cannot qualify as a “sale” or “offer to

sell” within the meaning of section 271(a) because this support occurs after the wafers

have already been purchased and manufactured.




04-1396, -1513                              10
       The question we are presented with in this case is whether SUMCO’s activities in

the United States, as would be construed by a reasonable jury, are sufficient to

establish an “offer for sale” or “sale” within the meaning of 35 U.S.C. § 271(a).

Section 271(a) provides as follows:

              Except as otherwise provided in this title, whoever without
              authority makes, uses, offers to sell, or sells any patented
              invention, within the United States or imports into the United
              States any patented invention during the term of the patent
              therefor, infringes the patent.

35 U.S.C. § 271(a) (2000). It is well-established that the reach of section 271(a) is

limited to infringing activities that occur within the United States. See Rotec Indus. v.

Mitsubishi Corp., 215 F.3d 1246, 1251 (Fed. Cir. 2000) (“These extraterritorial activities

however, are irrelevant to the case before us, because ‘[t]he right conferred by a patent

under our law is confined to the United States and its territories, and infringement of this

right cannot be predicated of [sic] acts wholly done in a foreign country.’” (quoting

Dowagiac Mfg. Co. v. Minn. Moline Low Co., 235 U.S. 641, 650 (1915))).

       We have defined liability for an “offer to sell” under section 271(a) “according to

the norms of traditional contractual analysis.” Rotec Indus., 215 F.3d at 1255. Thus,

the defendant must “communicate[] a ‘manifestation of willingness to enter into a

bargain, so made as to justify another person in understanding that his assent to that

bargain is invited and will conclude it.’” Id. at 1257 (quoting Restatement (Second) of

Contracts § 24 (1979)). We considered the meaning of “offer to sell” in 3D Systems,

Inc. v. Aarotech Laboratories, Inc., 160 F.3d 1373 (Fed. Cir. 1998). The defendants in

3D Systems provided potential California customers with price quotations, brochures,

specification sheets, videos, and sample parts related to their product. Id. at 1379.




04-1396, -1513                              11
Based on this activity, the patentee sued the defendants in the United States District

Court for the Central District of California for infringement of a variety of patents, arguing

that the defendants were liable for “offering to sell” the patented inventions. Id. at 1377.

The defendants moved to dismiss the suit for lack of personal jurisdiction. Id. The

district court granted the motion to dismiss; on appeal, this court reversed.             We

concluded that although the “price quotation letters state on their face that they are

purportedly not offers,” the letters could be “regarded as ‘offer[s] to sell’ under

section 271 based on the substance conveyed in the letters, i.e., a description of the

allegedly infringing merchandise and the price at which it can be purchased.” Id. at

1379.    We also noted that “[o]ne of the purposes of adding ‘offer[] to sell” to

section 271(a) was to prevent exactly the type of activity Aaroflex has engaged in, i.e.,

generating interest in a potential infringing product to the commercial detriment of the

rightful patentee.” Id.

        We do not think that MEMC has presented any relevant evidence to support its

claim that SUMCO offered to sell the accused wafers to Sumsung Austin in the United

States. MEMC points to no evidence of negotiations occurring in the United States

between SUMCO and Samsung Austin.              At the same time, transmittal of e-mails

containing technical data from SUMCO to Samsung Austin cannot constitute an “offer

for sale.” First, unlike the price quotation letters in 3D Systems, the e-mails, while

containing a description of the allegedly infringing wafers, do not contain any price

terms. Accordingly, on their face, the e-mails cannot be construed as an “offer” which

Samsung Austin could make into a binding contract by simple acceptance. See Rotec

Indus., 215 F.3d at 1251. MEMC contends that the e-mails contain an implicit price




04-1396, -1513                               12
term—one that has been previously agreed upon by Samsung Japan and SUMCO.

However, in the circumstances of this case (where the e-mails did not incorporate a

price term), any negotiations that may have occurred between Samsung Japan and

SUMCO outside of the United States are irrelevant to the inquiry of whether, in the

United States, SUMCO has offered to sell the accused wafers.

      Turning to the question of actual sale, the undisputed evidence is as follows: (1)

Samsung Japan alone controls when SUMCO receives an electronic purchase order

and how many wafers are ordered; (2) Samsung Japan designates a third party

packaging company to transport the wafers to Samsung Austin; (3) Samsung Japan

arranges for the packaging, labeling, and shipping of the wafers; and (4) Samsung

Japan pays SUMCO electronically for the wafers after they are delivered by the

packaging company. Significantly, as far as the sale is concerned, MEMC points to no

additional evidence. Thus, any “sale” of the wafers took place between SUMCO and

Samsung Japan, and the sale occurred in Japan where all of the essential activities

took place.

      MEMC’s reliance on North American Philips and Beverly Hills Fan Co. is

misplaced. North American Philips simply noted that in some cases the criterion for

determining the location of a “sale” under section 271(a) is not necessarily where legal

title passes; the “more familiar places of contracting and performance” may take

precedence over the passage of legal title. 35 F.3d at 1579. Thus, simply because an

article is delivered “free on board” outside of the forum, a “sale” is not necessarily

precluded from occurring in the forum. Significantly, MEMC has not presented evidence

that, as far as SUMCO is concerned, “contracting and performance” took place in the




04-1396, -1513                            13
United States. Similarly, Beverly Hills Fan Co. held that the situs of an injury is the

location, or locations, at which the infringing activity directly impacts on the interests of

the patentee, and that “[e]conomic loss occurs to the patent holder at the place where

the infringing sale is made because the patent owner loses business there.” 21 F.3d at

1571 (emphasis added). However, as noted above, MEMC presents no evidence that

SUMCO entered into any negotiations with Samsung Austin in the United States

concerning the accused wafers and no evidence that title of the wafers passed directly

from SUMCO to Samsung Austin. Mere knowledge that a product sold overseas will

ultimately be imported into the United States is insufficient to establish liability under

section 271(a). See Rotec Indus., 215 F.3d at 1251 (finding that the only activities that

are relevant to direct infringement are those activities that take place within the borders

of the United States). In short, MEMC has presented no evidence demonstrating that

SUMCO sold the accused wafers to Samsung Austin in the United States. Based upon

the foregoing, we see no error in the district court’s grant of summary judgment of no

direct infringement under 35 U.S.C. § 271(a).

                                             IV.

       MEMC argues next that SUMCO actively induces Samsung Austin’s infringement

of the ’302 patent under 35 U.S.C. § 271(b). According to MEMC, the district court

erred in granting summary judgment of no inducement of infringement, given evidence

that SUMCO had knowledge of the ’302 patent and evidence that SUMCO knowingly

supplied Samsung Austin with the accused wafers and provided Samsung Austin with

substantial technical support. First, in addition to the evidence noted in Part II, supra,

MEMC points to a letter dated April 17, 2000, in which MEMC advised SUMCO that it




04-1396, -1513                               14
was selling a product that may be covered by the ’302 patent and in which it offered

SUMCO a license to practice the invention. Second, MEMC points to the deposition

testimony of Dr. Jose Coria, a former Samsung Austin employee, who stated that

Samsung Austin will not enter into an agreement to buy wafers from a wafer supplier,

unless the supplier will also provide Samsung Austin with technical support for the

wafers. Thus, according to MEMC, the substantial product support defendants have

provided to Samsung Austin has induced Samsung Austin to buy and use the accused

wafers and thus to infringe the ’302 patent. MEMC also points to the fact that Samsung

Japan’s purchase order for the accused wafers includes an indemnity provision for

patent infringement liability running from SUMCO to Samsung Japan, thereby reducing

the deterrent effect the ’302 patent would otherwise have on Samsung to use the

accused wafers in the United States or to import those wafers into the United States.

       SUMCO responds that the district court properly granted summary judgment of

non-infringement under section 271(b) because: (1) it does not supply the accused

wafers to Samsung Austin; (2) there is no evidence that it encourages Samsung Japan

to ship the accused wafers to Samsung Austin; (3) post-sale technical support is

insufficient to establish active inducement under section 271(b); (4) the indemnity

clause in the purchase order relates only to claims under Japanese patent laws for

wafers sold by Samsung in Japan; and (5) MEMC has offered no evidence of the

required intent.

       Under section 271(b), “[w]hoever actively induces infringement of a patent shall

be liable as an infringer.”   35 U.S.C. §271(b). “In order to succeed on a claim of

inducement, the patentee must show, first that there has been direct infringement,” and




04-1396, -1513                             15
“second, that the alleged infringer knowingly induced infringement and possessed

specific intent to encourage another’s infringement.”       Minn. Mining & Mfg. Co. v.

Chemque, Inc., 303 F.3d 1294, 1304-05 (Fed. Cir. 2002) (citations omitted).4 “While

proof of intent is necessary, direct evidence is not required; rather, circumstantial

evidence may suffice.” Water Techs. Corp v. Calco, Ltd., 850 F.2d 660, 668 (Fed. Cir.

1988).

         As a preliminary matter, we do not agree with MEMC that the indemnity provision

included on Samsung Japan’s purchase order for the accused wafers establishes

SUMCO’s intent to induce infringement on the part of Samsung Japan. The provision

states as follows:

               Supplier herein shall indemnify the buyer for all claims of
               patent infringement whether direct or contributory and for all
               costs for defending against such claims resulting from the
               purchase of the above items.

As this court explained in Hewlett-Packard Co. v. Bausch & Lomb Inc., “an

indemnification agreement will generally not establish an intent to induce infringement,

but . . . such intent can be inferred when the primary purpose is to overcome the

         4
               It should be noted that “there is a lack of clarity concerning whether the
required intent must be merely to induce the specific acts [of infringement] or
additionally to cause an infringement.” MercExchange, L.L.C. v. eBay, Inc., 401 F.3d
1323, 1332 (Fed. Cir. 2005) (citing Insituform Techs., Inc. v. CAT Contracting, Inc., 385
F.3d 1360, 1378 (Fed. Cir. 2004)); see Manville Sales Corp. v. Paramount Sys., Inc.,
917 F.2d 544, 553 (Fed. Cir. 1990) (“The plaintiff has the burden of showing that the
alleged infringer’s actions induced infringing acts and that he knew or should have
known his actions would induce actual infringements.”); but see Hewlett-Packard Co. v.
Bausch & Lomb, Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990) (“Proof of actual intent to
cause the acts which constitute the infringement is a necessary prerequisite to finding
active inducement.”). We need not resolve that ambiguity in this case, however,
because it is undisputed that SUMCO had knowledge of the ’302 patent. Thus,
assuming that MEMC is able to demonstrate that SUMCO had intent to induce the
specific acts constituting infringement, intent additionally to cause an infringement can
be presumed.


04-1396, -1513                              16
deterrent effect that the patent laws have on would-be infringers.” 909 F.2d 1464, 1470

(Fed. Cir. 1990) (citation omitted). As in Hewlett-Packard, the indemnity provision in

this case may have facilitated the sale of the accused wafers, but there is no evidence

that the primary purpose of the agreement was to induce Samsung Japan to infringe the

’302 patent. As noted by SUMCO, given that the sale of the wafers from SUMCO to

Samsung Japan occurred in Japan, it is more reasonable to conclude that the indemnity

clause relates to claims of patent infringement under Japanese law. In other respects,

we do not think that a claim of active inducement of Samsung Japan by SUMCO has

been properly preserved in the district court. We therefore need not address whether

inducing activity in Japan can give rise to liability under United States patent laws. See

Crystal Semiconductor Corp. v. Tritech Microelectronics, Int’l Inc., 246 F.3d 1336, 1351

(Fed. Cir. 2001).

      Nevertheless, we conclude that there are genuine issues of material fact with

respect to whether SUMCO induced infringement of the ’302 patent on the part of

Samsung Austin.      First, SUMCO had knowledge of MEMC’s patent as well as

knowledge of Samsung Austin’s potentially infringing activities. In addition, there is

evidence that SUMCO provides substantial technical support to Samsung Austin in the

form of e-mail communications. As noted above in Part II, the series of e-mails between

SUMCO and the engineer at Samsung Austin demonstrate that SUMCO works with

Samsung Austin to coordinate shipment dates and the quantity of wafers sent in each

shipment and that SUMCO makes adjustments in the manufacturing process in order to

address problems Samsung Austin encounters with the wafers.            Second, there is

evidence that during November and December 2002, SUMCO sent a shipment of




04-1396, -1513                             17
certain wafers directly to Samsung Austin in order to address technical problems with

previously-supplied SUMCO wafers. Third, there is evidence that SUMCO personnel

made several on-site visits to Samsung Austin, during which technical presentations on

the SUMCO wafers were made. In addition, as noted above, Dr. Coria testified that

Samsung Austin will not enter into an agreement to buy wafers from a wafer supplier

unless the supplier will also provide Samsung Austin with technical support for the

wafers. Dr. Coria testified as follows:

                     Q:      When Samsung Austin Semiconductor enters
              into an agreement to buy wafers from a wafer supplier, part
              of the deal is that the wafer supplier will provide technical
              support for those wafers and help Samsung solve problems
              to the extent that they come up?

                     A:     Yes.

                     Q:      Does Sumco provide product support for the
              wafer that it sells to Samsung Austin?

                     A:     Yes.

                     ***

                    Q:     Does Samsung Austin expect that product
              support as part of the sale?

                     A:     Yes.

                    Q:      And if Samsung Austin doesn’t get that product
              support, it won’t buy the wafers, will it?

                     A:     Yes.

(Feb. 11, 2004 Dep. of Dr. Coria at 47-48).

       In light of the above evidence of record and viewing this evidence in the light

most favorable to MEMC, we are not prepared to hold that a reasonable jury could not

find intent to induce infringement. “Evidence of active steps taken to encourage direct



04-1396, -1513                                18
infringement, such as advertising an infringing use or instructing how to engage in an

infringing use, show an affirmative intent that the product be used to infringe.” Metro-

Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., No. 04-480, slip op. at 18 (U.S. June 27,

2005) (internal citations and alternations omitted).    First, a reasonable jury could

conclude that the e-mail communications between SUMCO and Samsung Austin in the

United States represent product support which enabled Samsung Austin to purchase

and use the accused wafers. See Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings,

370 F.3d 1354 (Fed. Cir. 2004) (finding active inducement of infringement based on

defendant’s publications describing and promoting use of patented method). As for the

requirement of specific intent to encourage infringement, it is undisputed that SUMCO

knew of the existence of the ’302 patent because it received a letter concerning it. This

type of evidence is relevant for supporting proof of intent for inducement (though not by

itself sufficient). See Fuji Photo Film Co., Ltd. v. Jazz Photo Corp., 394 F.3d 1368,

1378 (Fed. Cir. 2005); Mentor H/S, Inc. v. Med. Device Alliance, Inc., 244 F.3d 1365,

1379 (Fed. Cir. 2001). Moreover, the series of e-mails between SUMCO and Samsung

Austin provide sufficient circumstantial evidence for a reasonable jury to conclude that

SUMCO was not only aware of the potentially infringing activities in the United States by

Samsung Austin, but also that SUMCO intended to encourage those activities. See

Fuji Photo Film Co., 394 F.3d at 1378 (“A patentee may prove intent through

circumstantial evidence.”); Water Techs., 850 F.2d at 669 (“The requisite intent to

induce infringement may be inferred from all of the circumstances.”). For the foregoing

reasons, we reverse the district court’s grant of summary judgment of non-infringement

based on inducement of infringement under section 271(b) and remand the case to the




04-1396, -1513                             19
district court for further proceedings on that issue. Those proceedings will, of course,

involve (i) construing the claims of the ’302 patent; (ii) determining whether Samsung

Austin directly infringes; and (iii) determining whether, if there is direct infringement on

the part of Samsung Austin, SUMCO induces that infringement.5

                                            V.

       We now turn to SUMCO’s cross-appeal. As there is no final resolution of the

dispute in this case, technically there is no “prevailing party” as is required for an award

of attorney fees under 35 U.S.C. § 285 and the issue may be premature.                See

Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928 (Fed. Cir. 2003). However, as the issue

is likely to arise again, we will address it in the interest of justice. SUMCO argues that

the district court clearly erred in denying its motion for attorney’s fees, expert witness

fees, and expenses. SUMCO sought to recover these fees and expenses in connection

       5
              MEMC also argues on appeal that the district court erred in striking certain
“claims charts” from the expert report of Dr. Luciano Mule’Stagno. The report consists
of the results of testing performed on silicon wafers produced during discovery by
SUMCO, and comprises seven pages of narrative opinion and almost 500 pages of
materials relating to testing methodology and results. The district court described the
“claims charts” as follows:

              The Report contains various claim charts comparing the
              tested wafers to the ’302 Patent. . . . The charts are crude
              and merely contain check marks next to each of the claims
              of the ’302 patent each tested wafer allegedly infringes. The
              narrative accompanying the chart is also vague.           For
              example, “[e]ach wafer is also a single crystal meeting the
              conventional geometric requirements of the preamble.”

Summary Judgment Order, slip op. at 30. The court concluded that the charts violated
Patent Local Rule 3-1 because they did not identify each element of each claim and did
not specify where each claim limitation was met in each accused wafer. Id. The court
also ruled that MEMC had failed to demonstrate “good cause” under Patent Local Rule
307 sufficient to amend its infringement contentions.
       We see no abuse of discretion in the district court’s exclusion of the claims charts
from Dr. Mule’Stagno and thus decline to disturb the court’s ruling.


04-1396, -1513                              20
with MEMC’s patent infringement claims. Before the district court, SUMCO asserted

that the case was exceptional under 35 U.S.C. § 285 “based on [MEMC’s] failure to

conduct an adequate prefiling investigation and for [MEMC’s] egregious litigation

misconduct in the prosecution of [its patent infringement claims].” (Motion for Attorney’s

Fees at 2). SUMCO also sought sanctions under Fed. R. Civ. P. 11 and 28 U.S.C.

§ 1927, “based on MEMC’s failure to conduct an adequate prefiling investigation; for

[MEMC’s] maintenance of an unwarranted infringement claim in the face of

uncontroverted evidence of the lack of subject matter jurisdiction; and for plaintiff’s

counsel’s unreasonable and vexatious multiplying of the proceedings.” (Id.)

      With respect to its claim of an improper prefiling investigation, SUMCO asserted

that “[t]he extent of MEMC’s prefiling analysis was a ‘Competitor Analysis,’ performed in

Korea, comparing defendants’ wafers, obtained in Korea, against wafers manufactured

by MEMC, also in Korea. . . .” (Id. at 5.) SUMCO also asserted that there was no

evidence that the wafers used in the “Competitor Analysis” were manufactured pursuant

to the ’302 patent. (Id.) SUMCO further asserted that MEMC failed to investigate

whether SUMCO made, used, sold, offered for sale, or imported the accused wafers

into the United States, stating: “[t]he only evidence MEMC had was information from a[]

MEMC salesman in Texas who claimed to have seen boxes of wafers with defendants’

logo on them in Samsung’s warehouse . . . in Austin, Texas.” (Id. at 7.)

      The district court determined that “MEMC’s pre-filing investigation, while not

ideal, does not rise to the level of sanctionable conduct under Section 285.” Attorney’s

Fees Order, slip op. at 4. The court noted that, prior to filing suit for infringement, two

lawyers for MEMC reviewed the ’302 patent and construed the claims consistent with




04-1396, -1513                              21
the standard canons of claim construction. Id., slip op. at 3. The claims of the ’302

patent then were compared with the results of an analysis of SUMCO’s pure silicon

wafers, obtained in Korea. Id. The court noted further that the attorneys had reason to

believe that the wafers analyzed were used by both Samsung Austin and Samsung

Korea. Id., slip op. at 4. Thus, the court concluded:

               Considering the information MEMC derived from the
               Competitor Analysis and what MEMC knew about the silicon
               wafer industry in general and about its own dealings with
               Samsung in particular, MEMC’s belief, at the time it filed suit,
               that Sumco’s pure silicon wafers infringed the ’302 Patent
               cannot be characterized as frivolous or unjustified. Given
               this, and given that there is no evidence either (1) that the
               Sumco wafers that were the subject of the Competitor
               Analysis were materially different from the Accused Wafers
               or (2) that MEMC knew that the Accused Wafers were
               materially different from the wafers analyzed in the
               Competitor Analysis and proceeded with the instant suit
               despite this knowledge, SUMCO has failed to meet its
               substantial burden of showing that MEMC’s infringement
               claim was “clearly and convincingly vexatious, unjustified, or
               frivolous.” See Forest Labs., 339 F.2d at 1330. Moreover,
               the record does not support a finding that an award of fees is
               necessary in this case to prevent a “gross injustice.” Id. at
               1329.
Id., slip op. at 6. The district court also concluded that MEMC’s belief, at the time of

suit, that SUMCO was performing infringing activity in the United States was neither

frivolous nor unjustified. Id., slip op. at 7-8.   With respect to SUMCO’s motion for

sanctions under section 1927, the district court found that “the record does not support

a finding that MEMC’s conduct during this litigation was reckless or conducted in bad

faith.” Id., slip op. at 10.

       Pursuant to 35 U.S.C. § 285, a “court in exceptional cases may award

reasonable attorney fees to the prevailing party.”       35 U.S.C. § 285 (2000).      A

determination of whether a case is eligible for attorney fees under section 285 is a two



04-1396, -1513                             22
step process. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1460 (Fed. Cir. 1998).

First, the district court must determine whether a case is exceptional, a factual

determination reviewed for clear error.       Id. (citation omitted).   “A finding is clearly

erroneous when, despite some supporting evidence, ‘the reviewing court on the entire

evidence is left with the definite and firm conviction that a mistake has been

committed.’” Forest Labs., Inc. v. Abbott Labs., 339 F.3d 1324, 1328 (Fed. Cir. 2003)

(citing United States v. Gypsum Co., 333 U.S. 364, 395 (1948)). Second, the district

court must determine whether attorney fees are appropriate, a determination that we

review for an abuse of discretion. Cybor Corp., 138 F.3d at 1460 (citation omitted). “A

district court abuses its discretion when its decision is based on clearly erroneous

findings of fact, is based on erroneous interpretations of the law, or is clearly

unreasonable, arbitrary or fanciful.” Id. (citation omitted).

       Moreover, under 28 U.S.C. § 1927:

              Any attorney . . . who so multiplies the proceedings in any
              case unreasonably and vexatiously may be required by the
              court to satisfy personally the excess costs, expenses, and
              attorneys' fees reasonably incurred because of such
              conduct.

28 U.S.C. § 1927 (2000). We review the district court’s denial of SUMCO’s motion for

sanctions under section 1927 for an abuse of discretion, under the law of the Ninth

Circuit. Trulis v. Barton, 107 F.3d 685, 692 (9th Cir. 1995). The Ninth Circuit has held

that section 1927 authorizes sanctions only for the multiplication of proceedings, In re

Keegan Mgmt. Co. Sec. Litig., 78 F.3d 431, 435 (9th Cir. 1996), and that section 1927

sanctions require a finding of recklessness or bad faith, B.K.B. v. Maui Police Dep’t,

276 F.3d 1091, 1107 (9th Cir. 2002).




04-1396, -1513                               23
      We agree with MEMC that the district court did not clearly err in finding this case

not to be exceptional under section 285. As far as MEMC’s investigation prior to filing

suit for direct infringement under section 271(a) is concerned, there is evidence that

MEMC’s attorneys performed a good faith, informed comparison of the claims of the

’302 patent against the accused wafers. We also agree with MEMC that the district

court did not abuse its discretion in denying SUMCO’s motion for sanctions under

section 1927. SUMCO has failed, on appeal, to point to any evidence that MEMC’s

attorneys “unreasonably and vexatiously” multiplied the proceedings in this case.

Furthermore, “[b]ecause the section authorizes sanctions only for the ‘multipli[cation of]

proceedings,’ it applies only to unnecessary filings and tactics once a lawsuit has

begun.” In re Keegan Mgmt. Co. Sec. Litig., 78 F.3d at 435 (emphasis added). Thus,

the adequacy of MEMC’s prefiling investigation is irrelevant to the section 1927 inquiry.

Id.

                                     CONCLUSION

      We agree with the district court that, as a matter of law, SUMCO cannot be liable

for direct infringement of the ’302 patent under 35 U.S.C. § 271(a). Summary judgment

of non-infringement on MEMC’s direct infringement claim was therefore proper.

However, because we conclude there are genuine issues of material fact with regard to

whether SUMCO is liable for induced infringement of the ’302 patent under 35 U.S.C.

§ 271(b), we hold that the district court erred in granting summary judgment in favor of

SUMCO on that claim. That part of the district court’s judgment is thus reversed, and

the case is remanded to the district court for further proceedings consistent with this

opinion.   On the cross-appeal, we affirm the district court’s denial of SUMCO’s




04-1396, -1513                             24
application for fees and expenses relating to MEMC’s claim of direct infringement and

inducement of infringement.

                                       COSTS

      Each party shall bear its own costs.


           AFFIRMED-IN-PART, REVERSED-IN-PART, and REMANDED




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