## Facts

- CFMT, Inc. and CFM Technologies, Inc. owned U.S. Patent Nos. 4,778,532 and 4,917,123, directed to an enclosed, automated system and method for cleaning semiconductor wafers using sequential process fluids without exposing wafers to airborne contaminants or requiring operator handling between steps.
- The ’123 patent was a divisional of the ’532 patent, and both patents shared the same specification.
- Independent claim 1 of the ’532 patent described an “enclosed, full flow” cleaning method: placing wafers in a vessel, closing the vessel to the environment, and continuously flowing successive cleaning, rinsing, and drying fluids past the wafers without moving wafers between steps.
- YieldUp International Corp. competed in wafer-cleaning equipment and was accused of infringing.
- YieldUp argued the patents were invalid for lack of enablement under 35 U.S.C. § 112 and unenforceable due to inequitable conduct during prosecution.

## Issues

1. Whether the patents were nonenabled because they allegedly lacked utility/inoperability and required undue experimentation, and whether the district court applied the correct § 112 enablement standard.
2. Whether the applicants committed inequitable conduct by making material misrepresentations or withholding material information with intent to deceive the PTO.

## Decision

- The Federal Circuit reversed in part, vacated in part, and remanded.
- It vacated and remanded the summary judgment of invalidity for nonenablement because the district court applied an improperly heightened enablement standard.
- It reversed the judgment of unenforceability for inequitable conduct, finding the district court’s materiality and intent determinations clearly erroneous.

## Legal Principles

- Enablement under 35 U.S.C. § 112 requires that a person of ordinary skill in the art can practice the full scope of the claimed invention without undue experimentation; it does not require disclosure of a commercially optimized or “perfect” embodiment.
- A court errs by treating post-filing efforts to improve or meet commercial requirements as proof of nonenablement when the question is whether the invention can be practiced to some operable level from the disclosure.
- Inequitable conduct requires clear and convincing evidence of material misrepresentation or omission and a specific intent to deceive the PTO; low materiality and statements that are not actually inaccurate substantially weaken any inference of deceptive intent.

## Conclusion

The Federal Circuit held that the district court improperly elevated the enablement requirement by effectively demanding a particular level of performance and misused commercial-development evidence, and it rejected the inequitable-conduct finding for lack of materially false conduct and insufficient evidence of intent, reversing unenforceability and remanding enablement for reconsideration under the correct standard.


CFMT, Inc. v. YieldUp Int'l Corp., 349 F.3d 1333 (Fed. Cir. 2003)