Appealed from: United States District Court for the Eastern District of Virginia Judge James R. Spencer
Three appeals are addressed in this opinion. In the first, Tokyo Electron America, Inc. (“TEA”) seeks review of a final judgment of infringement from the District Court for the Eastern District of Virginia. Tegal Corp. v. Tokyo Electron Am., Inc., No. 3:98CV318 (E.D. Va. Aug. 31, 1999) (“Opinion”). Specifically, TEA challenges the following holdings from the district court’s opinion: (1) TEA was not entitled to a jury trial; (2) claims 1 and 7 of U.S. Patent No. 4,464,223 (“’223 patent”), issued after reexamination as U.S. Patent No. B1 4,464,223, *fn1 are not invalid under 35 U.S.C. � 102(b) as being anticipated by the Itakura reference; (3) claims 1 and 7 of the ’223 Reexamination Certificate are not invalid under 35 U.S.C. � 103(a) as being obvious over the Nippon Telegraph and Telephone Corp. (“NTT”) reference; (4) the claims of the ’223 Reexamination Certificate are not unenforceable for the failure of Tegal Corp. (“Tegal”) to disclose the NTT reference; (5) TEA willfully infringed claims 1 and 7 of the ’223 Reexamination Certificate, both before and after Tegal filed suit; and (6) the case was exceptional, under 35 U.S.C. � 285, and merited attorney fees for Tegal. TEA also appeals the injunction issued against it by the district court, maintaining that it is overbroad. We affirm the district court’s decision with respect to: (1) neither party having a right to a jury trial; (2) the finding of infringement; (3) the decision that the claims of the ’223 Reexamination Certificate are enforceable; and (4) the non-obviousness decision. However, we vacate and remand: (1) the finding that Itakura did not anticipate the ’223 patent; (2) the findings of pre-filing and post-filing willfulness; (3) the finding of an exceptional case; (4) the award of attorney fees; and (5) the entry of the injunction.
In the second appeal, TEA seeks review of a final order awarding Tegal attorney fees in the amount of $842,129.03. Tegal Corp. v. Tokyo Electron Ltd., Inc., No. 3:98CV318 (E.D. Va. Jan. 20, 2000). *fn2 In its appeal brief, TEA does not dispute the actual amount of the award. Rather, TEA argues that the award was made in error because it rested on the allegedly faulty findings that TEA had willfully infringed and that this was an exceptional case. As the parties were informed at the oral hearing, these arguments were fully briefed in the first appeal and there are no additional issues to be considered in the second appeal.
