Cabot Corp. v. Solution Technology, Inc. (122 F. Supp. 2d 599, 2000)

ORDER

McKNIGHT, United States Magistrate Judge.

This patent case is before the undersigned United States magistrate judge by consent of the parties pursuant to 28 U.S.C. § 636(c). At issue is whether this case is exceptional based upon willful infringement and litigation misconduct, as “exceptional” is understood for purposes of applying 35 U.S.C. § 285, and whether costs and attorneys’ fees should be awarded to Cabot. These matters were exhaustively discovered and tried to the bench. After searching review of the evidence in light of appropriate standards of proof and relevant case authority, it is the conclusion of the undersigned that the exceptional case standard has not been met and, therefore, that attorneys’ fees should not be awarded.

FINDINGS OF FACT

In all actions tried upon the facts without a jury ..., the court shall find the facts specially and state separately its conclusions of law thereon, ....

Rule 52(a), Fed.R.Civ.Pro.

Accordingly, I essay to set in order a narrative of these things clearly and convincingly shown and relevant, and not found in the various discovery orders of this Court.

Preliminary

Chemical mechanical planarization or polishing (“CMP”)

CMP is a technique for flattening surfaces by means of abrasion. It has application in building semiconductor wafers. In this process, an eight-inch piece of single-crystal silicon is used as a plate onto which the manufacturer deposits layers of circuitry. The metal layer is insulated by depositing an oxide layer, essentially glass (TEOS). Oxide CMP planarizes the glass to an appropriate level.

In CMP, the chemical part is the oxidizer. The mechanical part is the abrasive. To achieve CMP, it is necessary to have an abrasive and a chemical component which interact with the surface. Abrasives include alumina and silica. The abrasive in the dispersion (for example, alumina or cerium oxide) achieves the polishing.

Roughly, one adds to the abrasive dispersion different oxidizers (such as ferric nitrate, potassium iodate, hydrogen peroxide, ferric sulfate,.or potassium ferric cyanide), which are the chemical component. The oxidizers change the surface of the metal being polished on the surface layer in such a way that the abrasive can then more easily remove it.

Aluminas

There are precipitated and fumed alumi-nas, the terms describing the chemical process of their generation. For the processes at issue, fumed alumina has a more advantageous viscosity than precipitated alumina because the liquid is thinner yet maintains good stability.

Boehmite is an alkoxide-based alumina containing gamma alumina.

Paul J. Yancey’s education and work; the founding of Solution Technology, Incorporated (“STI”); STI’s approach to testing its slurries

Paul J. Yancey (“Yancey”) was educated as a chemical engineer. By 1994, Yancey had been working as a chemical engineer for nearly thirty years, and, at least since 1985, in the field of dispersions (suspensions of particles in liquid media).

Yancey joined Union Carbide Corporation in 1966. He worked in Union Carbide’s Linde division in the manufacture of aluminum oxide materials for ceramics for polishing and growing single crystals of aluminum oxide and other materials used in lasers. He grew crystals and learned techniques for polishing them. He developed a slurry for polishing materials consisting of a permanent dispersion of particles, and this product figured importantly in the Linde product line.

Yancey left Union Carbide for Sawyer Research Products. There he worked in the manufacture of synthetic quartz for use in the high frequency circuit business. He did some polishing and grew sapphire crystals.

Thereafter, he worked for Allied Chemical and came to Charlotte, N.C., with that company in 1979. His work for Allied Chemical involved growing single crystals and polishing materials for lasers and bubble memory technology. These materials were polished with abrasives.

Thereafter, he started the United States subsidiary of Baikowski International, which is a supplier of high purity alumina. In the course of this work, he developed material made from aluminas which were very good polishing powders.

In 1985, Yancey left BaikowsM to start Solution Technology, Incorporated (“STI”). He was interested in selling alumina compounds in liquid form in permanent suspension. Baikowski was not interested in pursuing such materials, so Yancey, having 19 years of experience with polishing substrates and three or four years of experience with permanent slurries, started STI and began manufacturing liquid compounds which were permanently stable, meaning, in Yancey’s understanding, that they had a shelf life of at least one year.

STI’s first products were based on alu-minas that were in permanent dispersions and were primarily directed to the optics industry. STI sold dry powders of high purity aluminas and several other optical materials. One of STI’s first customers was the Airtron division of Litton Industries, which polished gallium arsenite substrates for use in some high end integrated circuits for industries such as communications. STI branched out from aluminas into compounds based upon cerium oxide, zirconium oxide, diamond, and silica.

When STI was founded, Yancey worked alone and mixed the slurries. At that time, STI did not have testing equipment. Even as late as 1996, Yancey would ask potential customers to test most of the slurries.

However, STI did have certain testing equipment. In 1992, after IBM became a customer, STI purchased a MicroTrac particle size analyzer from Leeds and Northrup, a BET surface area analyzer, and a zeta potentiometer, primarily for quality control. The particle size analyzer gave a printout of particle size distribution, a histogram of sizes within each particle size range or a cumulative distribution that essentially added up each of those size ranges until they reached 100 and plotted the curve. The particle size analyzer worked by introducing ultrasonically a pH-adjusted predispersed sample into the circulation system of the analyzer. An inappropriate pH causes agglomeration of the particles upon introduction into the sample well of the analyzer. The agglomeration will show up on the printout as a bump on the right side of the curve in the 10 to 15 micron range, indicating large particles, which is anomalous. A solution with 10-15-micron particles could scratch the surface of what is being polished. Yancey has operated MicroTrac and Horiba particle size analyzers.

The BET surface analyzer measures the surface area of the outside surface of particles. The zeta potentiometer measures the charge on a particle in a solution. The repulsion resulting from higher charges promotes stability when the particles are sufficiently small relative thereto.

A “retain” is a small portion of a quantity manufactured. It is drawn off for analytical and historical uses. Retains of STI’s slurries were taken just after they were mixed, before the settling period. They were stored. In the current facility, they are stored in the mezzanine of the building ten to twelve feet above the floor. The current facility is air-conditioned on weekdays.

The abrasives which Yancey used at STI to produce polishing slurries included precipitated aluminas, calcined aluminas, fumed aluminas, cerium oxide, zirconium oxide, fumed and precipitated titanium dioxide, diamond, silicon carbide, and boron carbide.

Rodel

As of September, 1997, STI became a wholly-owned subsidiary of Rodel. Since the early 1970s, Rodel has manufactured products for sale to the semiconductor industry. Rodel manufactures two primary kinds of polishing products, pads and slur-ries.

As of the time of trial, Rodel was 48% owned by Rohm & Haas (Class D shares), a public company; 32% by the Rodel Foundation, a 501(c)(3) charity; and the remainder by Rodel employees. Rodel’s approximate revenues in 1996 were $105 million; in 1997, $150 million; in 1998, $155 million.

Rodel was founded in 1968 by William Budinger, who at the time of trial was Chairman and sole director, who was CEO of Rodel until 1999, and who at the time of trial owned the Class A shares, which have 99% of the vote.

STI’s sales of alumina to IBM

As of July, 1994, STI had supplied to IBM precipitated alumina dispersions under the labels 201 A/60, 201 A/140, 201 A/210 (which was a combination of precipitated alumina and silica), and 201 A/280 (which contains gamma alumina). 201 A/60 consists of a boehmite alumina with a particle size in the fifty to seventy nanometer range. (A nanometer (“nm”) is one billionth of a meter. There are 1,000 nanometers in a micron.) STI sold 201 A/60 to IBM between 1990 and 1996 or 1996.

By contrast, Met 202, which STI marketed at Semicon/Southwest in October, 1994, was a fumed alumina, not a boehmite alumina.

Sematech

Sematech is a consortium consisting of the government and semiconductor companies. The companies pay a large fee and supply technicians to Sematech for a tour of duty of several years. Sematech members include Texas Instruments, IBM, Motorola, AMD, Intel, LSI Logic, and Hewlett Packard, all manufacturers of integrated circuits. Since STI supplied slurries to the industry, it was ineligible for membership in Sematech.

Sematech periodically conducts trials in which companies test wafers according to a very strict protocol and examine the results to establish a benchmark. STI was selected by Sematech for benchmarking trials for CMP.

Trade shows

The two which figure into this case are Semicon/West and Semicon/Southwest. The Southwest show is somewhat smaller and more concentrated in integrated circuit fabrication technology than West, which displays some peripheral technologies as well.

Sequential

1990

Early in 1990, STI sold alumina slurries to IBM for CMP in polishing integrated circuits. These slurries were of the product Ultra-Sol 201 A, a very small particle boehmite alumina dispersion, having particle size of 60 nm. The boehmite alumina included in the 201 A/60 was produced by Vista Chemical of Houston, Texas, by an organometallic process. It is a dispersable or precipitated alumina. The chemical component of those slurries was nitric acid. Yancey did not sell IBM boehmite alumina and ferric nitrate.

STI bought the small particle, high purity boehmite alumina in dry powder form from Vista Chemical. STI would mix the dry powder with water and other additives. On certain occasions, STI bought the alumina with water already added.

When Yancey shipped lots 1656, 2021, and 2361 to IBM in 1990, he considered them to be stable, permanent, uniform dispersions. Yancey personally shipped these lots.

March 2, 1990. On this date, IBM ran a particle size distribution analysis of an STI slurry, lot 1656 of Ultra-Sol 201 A, on a Coulter LS Particle Size Analysis machine. Yancey has never operated this machine. Mark Jaso, the IBM analyst, sent a copy of the analysis to Yancey. The analysis presented graphically the percentage of particles in each of a series of discrete size ranges (in microns). It revealed a very small percentage in the 10-micron range, the largest entity being 16 or 17 microns, and a majority in the less-than-.4-mieron range. In addition to the number distribution graph, the analysis included a volume distribution graph showing a severe agglomeration at between 4 and 18 microns. Jaso also tested lot 1625 on that date, with similar results.

Yancey did not, and does not, know the procedure which IBM used for preparing the sample, how much water was used, the chemical composition of the water, for how long the tests were run, or the skill and experience of the person who conducted the tests. Nonetheless, Yancey interpreted the 10-micron result in the test of lot 1656 as an anomaly resulting from not taking sufficient caution in preparing the sample, because it was his understanding that in testing a highly dispersed colloid, agglomerates result from improper sample preparation. Yancey believed that any reading of greater than one micron was an anomaly. Although he sold 201 A/280, which has particles greater than one micron, for CMP polishing, he believed that the actual presence of particles of a size greater than one micron could produce severe wafer scratching in the CMP polishing process.

IBM did not complain of scratching and continued to buy STI slurries.

In 1990, IBM was in a screening mode as regards this chemistry and this process. IBM was engaged in fundamental research. In the course of this research, IBM screened four or five versions of STI’s 201 A product and eventually settled on 201 A/280 (i.e., particle size, 280 nm). IBM’s analysis of that product showed particles extending out into the micron regime.

In 1990, IBM was in the process of refining its measurement of slurry properties. IBM researchers had questions about getting true information relative to an absolute standard. In successive runs, they observed some displacement in relative graphic peak location and height. Despite these variations, they obtained reproducible measurements. That is, although there was a certain variability in the data, they did not see peaks appear and disappear. They did not have a secondary measurement of particle size, but they were not off by as much as twenty to forty microns. The researchers did not know whether the testing process caused the alumina particles to agglomerate.

IBM believed its results and believed that there was some correlation between particle size and polishing results. IBM’s decisions were driven by polishing results, not particle size. IBM did not rely on the particle size analysis to predict polishing results.

October, 1990. Lot 1656 was sold to IBM.

1991

STI sold alumina slurries to IBM (201 A/140, 201A/210, and 201A/280).

Mid-1991. Yancey, who had been in communication with Mark Jaso at IBM, now began communication with Dr. Frank Kaufman. They spoke first by telephone in reference to IBM’s receiving STI’s slurry samples for experiments. Yancey and Kaufman spoke up to several times per month from then until Kaufman left IBM in 1995.

December, 1991. Lot 2021 was mixed and sold to IBM.

1992

Yancey met Richard R. Cavagnaro. They met first by telephone, then by personal contact in the spring of 1992.

Cavagnaro worked for DeGussa Corporation from 1988 to 1996. From 1990 to 1994, he was the product manager for fumed silicas, including fumed metallic oxides such as aluminum oxide C.

Yancey had attempted to purchase aluminum oxide C powder from Cavagnaro.

Yancey had evaluated DeGussa’s Lepan-din 20N aluminum oxide C based dispersion with a small amount of alcohol added. Lepandin 20N is made of aluminum oxide C, methanol, and an organic auxiliary material.

DeGussa’s technical bulletin number 56, issued in 1984 and containing a table entitled “Characteristics of Lepandin 20N” listing those characteristics, was handed out to customers in 1988 when Cavagnaro was employed by DeGussa. Cavagnaro gave a copy of this bulletin to Yancey.

The list of characteristics of Lepandin 20N in the bulletin includes aluminum oxide C, water, and methanol. It does not describe the organic auxiliary material, nor does it state that the pH was adjusted with a potassium hydroxide or caustic solution. A phrase following an asterisk below the “Characteristics of Lepandin 20N” chart states, “contains approx. 1% of an organic auxiliary material.”

Cavagnaro recommended to Yancey that he make Lepandin 20N — type dispersions.

Cavagnaro never told Yancey what the organic auxiliary material was. The material was added to improve the stability of the slurry. It was a surfactant, keeping materials in suspension, bridging the gap between methanol and water.

In November, 1990, DeGussa published an updated version of bulletin number 56. This bulletin describes aluminum oxide C but does not contain a recipe for Lepandin 20N. Cavagnaro gave this bulletin to customers and was doing so when he met Yancey. He also handed out a sheet describing how to mix slurries.

In the spring of 1992, aluminum oxide C was on allocation because of increased market demand relative to production capacity. Cavagnaro knew that Yancey was expecting to use quantities of aluminum oxide C that Cavagnaro would be unable to provide in Yancey’s slurry development program for the electronics market.

Cavagnaro knew Yancey had bought only a ten-kilogram bag of aluminum oxide C by that time, but he did not know how much of that supply Yancey had used. Cavagnaro told Yancey that it was not cost effective to ship slurries across the ocean, that Yancey should make his slurries at home with aluminum oxide C powder.

May or June, 1992, until the beginning of 1994. This was the approximately 18-month period of allocation, during which DeGussa would not sell aluminum oxide C to STI.

Early 1992. STI mixed some fumed-aluminas.

The source of the alumina from which STI made these dispersions was DeGussa Corporation. Yancey knew only of DeGus-sa as a source of fumed alumina. STI wanted to make fumed alumina dispersions and sell them commercially in 1992, but did not do so because STI was unable to purchase the raw material, aluminum oxide C, from DeGussa.

February 21,1992. STI mixed two slur-ries from aluminum oxide C, the DeGussa product bought by STI. One of these slur-ries was made with 20% solids and 10% alcohol, the balance water. The other was made the same way but without the alcohol. The slurries were made from the recipe for DeGussa’s Lepandin 20N. In mixing the two slurries, STI wanted to determine if it could duplicate the properties of the DeGussa product. Thus, STI mixed up the slurry with alcohol (DeGus-sa’s recipe) and without alcohol (because STI did not need the alcohol for its purposes).

STI’s production log has entries for lots STI-2084 and STI-2085 under the date, February 21, 1992. The entry for STI-2084 reflects an aluminum oxide C that has been cold milled, milled at low temperature, in a very high speed mixer at 20% solid alumina oxide material in the liquid dispersion, with a pH of 4, and alcohol added. This is a fumed alumina dispersion. The entry for STI-2085 is the same as for STI-2084 except that it does not list an alcohol component. A note following the description of STI-2085 states, “No change in particle size between milled, milled with alcohol or standard prep.”

Yancey had a copy of DeGussa’s bulletin number 56, containing the Lepandin 20N recipe, on February 21, 1992, and followed that recipe in mixing lot STI-2084. The formulation for STI-2084 in the production log book indicates the characteristics listed for Lepandin 20N in the DeGussa brochure. However, STI-2084 did not contain any auxiliary organic material, and STI-2085 contained aluminum oxide C (fumed alumina purchased from DeGussa), water, but no alcohol and no organic auxiliary material.

In 1992. Yancey unsuccessfully attempted to obtain commercial quantities of aluminum oxide C. Commercial quantities became available for purchase in 1994. In 1994, Yancey had a small quantity of fumed alumina in stock that he had purchased several years earlier. The fumed alumina slurries which Yancey took to the Semicon/Southwest trade show were made from this fumed alumina, purchased from DeGussa before 1992.

By late 1992. Yancey realized that CMP could be a good business for STI, in part because Kaufman had asked him what STI’s production capacity could be. He sought to learn more about CMP, to attend trade shows and examine various products that were being used in the industry.

November 23, 1992. STI assigned lot number 2361 to a slurry mixed three months earlier. Lot 2361 is a combination of lots 2102 and 2237. Lot 2102 was mixed on March 9, 1992. Lot 2361 was mixed on July 16, 1992. The lots were combined in August, 1992. The lot number was assigned in November, 1992.

In 1992. STI had a MicroTrac machine. The MicroTrac tests dry alumina powder, which was the form in which the powder came to STI.

In 1992. STI had three employees: Yancey, a secretary, and a technician.

In 1992. STI sold 201 A/60, 201 A/140, and 201 A/280 to companies involved in the high end optics industry and the computer peripheral industry.

1993

First part of 1993. By this time, Cabot was selling oxide CMP slurries to the semiconductor industry for CMP on glass interlevel dielectric insulating layers, a fumed silica abrasive removing silicon dioxide.

In 1993 through the first quarter of 1994.

Bruce Zwicker of Cabot saw that there was a market for another type of CMP product, tungsten CMP. Oxide CMP slur-ries will not perform tungsten CMP because a different substrate is involved. Zwicker submitted a research proposal in Cabot’s Cabosol division to develop a CMP slurry for the application of tungsten CMP. In tungsten CMP, circuit manufacturers want to use tungsten as an interconnecting layer between two layers to carry current rather than to insulate current. A rectangular area is etched out of a layer of glass, and tungsten is deposited atop the substrate. CMP then removes between 800 and 2000 angstroms of the tungsten layer down to a level at which the surface as a whole is planar. A goal of the effort was to achieve high selectivity, meaning a high polishing rate for tungsten and a low polishing rate for glass.

A research effort was begun.

Members of the research team were listed inventors of the Cabot patent (patent number 5,527,423). Neville, a PhD physicist, was director of research in the Cabo-sol division at the time. He is an expert in particle technology and fumed metal oxide technology. Fluck, who is a colloid chemist, formulated the slurry and worked on its stability. Hung, a chemical engineer and Cabosol process engineering specialist, was responsible for the manufacturing process of fumed alumina used to develop the abrasive for the tungsten slurry. Scher-ber and Dr. Lucarelli are chemists.

Cabot devoted approximately one year to developing the invention patented as the Neville patent (herein referred to as “the Cabot patent”). The research proposal was submitted in the spring of 1993, and work began in the fall of 1993. The first slurry samples based on fumed alumina were made in the period January through March, 1994. Late in the first quarter of 1994, Cabot sent samples to its customers.

Towards the end of 1993. Yancey hired a fourth person, Jim Fox, to take over the marketing and sales operation. It was at this time that STI became more interested in the CMP industry.

1994

January through March, 1994. Cabot made its first slurry samples. Late in the first quarter of 1994, Cabot sent samples of its slurries to its customers pursuant to a nonanalysis and nondisclosure agreement. Samples of the experimental tungsten slurries were sent to Motorola (fumed alumina) and, in May, to Sematech (fumed and precipitated alumina).

April, 1994. STI moved to its current facility in Monroe, N.C.

Spring, 1994. Prior to the Silicon/West trade show, STI started testing fumed sili-cas. In April or May, STI contacted De-Gussa concerning silicon oxide and made inquiries about fumed alumina. STI wanted to get into the CMP business and approached DeGussa about it because De-Gussa had products that were capable of producing the particles that STI needed to begin investigating this new business. STI wanted fumed alumina and fumed silica from DeGussa. DeGussa began to work with STI to give STI products and assistance in making these dispersions.

At this time, STI had precipitated alumina products. STI was interested in fumed alumina because it would be another option for customers. Fumed alumina dispersions had particle size distributions that were narrow as compared to other STI products and in a range that STI did not have (100-300 nm).

At this time, Yancey knew that Cabot was selling fumed silica products to the semiconductor industry. He was aware of the interest in the semiconductor industry in using products such as fumed silica.

June, 1994. Rodel began to sell MSW1000 as a commercial product. MSW1000 is a tungsten polishing slurry for CMP. Rodel claimed a 3-month shelf life for this slurry but did not say that it was stable or very stable.

June, 1994. By this time, various companies were using ferric nitrate as an oxidizer for chemical mechanical polishing. IBM used ferric nitrate for metal CMP, and this set the standard. IBM developed CMP in the mid-1980s and was the first company to do so.

Week of July 18, 1994. Yancey attended the Semicon/West trade show. STI did not have a booth at this show.

At Semicon/West, Yancey attended Cabot/Rippey’s CMP seminar, “Planarization Technology: Chemical Mechanical Polishing (CMP),” in which Scherber of Rippey and Neville of Cabot presented papers. The seminar was held on July 19th from 8:30 a.m. until noon, and between 300 and 400 people attended.

The presentation discussed the results of a new slurry that Cabot and Rippey had tested, an alumina slurry used for polishing tungsten. The presenters did not go into detail as to the formulation of their slurries, and they did not mention fumed alumina.

There were ten or more twenty-minute presentations at that seminar. There were also presentations from IBM, Applied Chemical Solutions (Ed Ferri), Speedfam, Strasbaugh, and OnTrak.

Yancey did not hear the phrase “fumed alumina” at this trade show. As of the time of Semicon/West, Yancey believed that Rippey was using a precipitated calcined alumina in its polishing slurries. He believed this because for the past two years STI had been selling to Rippey and, later, to Cabot, increasing amounts of an aluminum oxide called M100, a dry gamma alumina powder, a precipitated calcined alumina with a large particle size between one and one and one-half microns. Rippey had told Yancey in many conversations that they were using M100 in their tungsten slurry polish.

As a result of the Cabot/Rippey presentation, Yancey wanted to get samples of the Cabot/Rippey alumina in order to analyze it. He wanted to determine its characteristics. He wanted to know whether the alumina was fumed or precipitated (although whether he could have determined this is uncertain).

During Semicon/West Yancey met for an hour with Sue Davis of Sematech to gain her assistance in understanding the industry. He wanted her support for STI becoming involved in a Sematech benchmarking that was coming up that autumn. Sematech would supply wafers that STI could use for polishing, to develop data for STI’s products.

Davis supplied Yancey with names of industry contacts. She supported the idea of Yancey’s going to Semicon/Southwest. She wanted to put Yancey in touch with Sematech personnel and suggested that STI join the Semiconductor Equipment Manufacturing Institute (“SEMI”), sponsor of the Semicon trade shows. (Jim Fox, STI’s vice president for sales at that time, contacted the Sematech personnel suggested by Davis.)

At this time, STI sold abrasives but not oxidizers for CMP. At Semicon/West, Yan-cey discussed oxidizers, including ferric nitrate, with Ed Ferri of Applied Chemical Solutions. This was the first time that Yancey heard about ferric nitrate as an oxidizer for CMP.

July 22, 1994. Yancey wrote to Sue Davis, thanking her for meeting him at Semicon/West. He asked her for a bibliography of CMP papers. Referring to an article by Michael Martinez, he wrote, “I noticed a paragraph which reads, ‘CMP consumables are supplied primarily by Rippey and Rodel, both of which received development contracts from Sematech.’ ” He asked if Sematech was going to offer other consumables contracts (thus addressing her in her role as a Sematech employee). Further, he stated that STI was well ahead of other suppliers such as Cabot/Rippey and Rodel in the area of (precipitated) alumina dispersions.

July 26, 1994. Yancey wrote to Sue Davis, again inquiring about the bibliography of CMP papers, but making no reference to fumed alumina.

August 5, 1994. At the request of Jim Fox, Yancey wrote to Raul Jairath of Sem-atech. Davis was Jairath’s supervisor. The letter refers to Yancey’s attempts to contact Jairath by telephone. It references STI’s 201 A/280 precipitated alumina product but does not mention fumed alumina.

August 18,1994. Yancey again wrote to Sue Davis, thanking her for the CMP bibliography, and telling her that STI had joined SEMI and decided to exhibit at Semicon/Southwest. His letter refers to developing fumed silica sols and to having an alumina being used for tungsten CMP (here referring to IBM’s purchase of precipitated alumina products from STI) but makes no mention of fumed alumina slur-ries.

Around August 20, 1994. Yancey attended an introductory overview CMP course at Rensslaer Polytechnic Institute (“RPI”), given by Swartz and Kaufman. There he learned that Rippey was using ferric nitrate as an oxidizer.

August 26,1994. Yancey again wrote to Jairath. This letter speaks of STI’s interest in getting more involved in the CMP slurry business including planarization of both oxide and metals. It states that STI had joined SEMI and would exhibit at Semicon/Southwest “to formally introduce our company to the device manufacturing industry.” It refers to having attended an introductory CMP seminar given by Geraldine Swartz and Frank Kaufman at RPI. It refers to STI’s development of silica sols, and “our nonsettling colloid alumina which we have used for years in ultra high technology markets.” It does not make reference to a fumed alumina product.

As a result of this letter, a meeting between Sematech and STI was set for the day after Semicon/Southwest, October 20, 1994.

August 29, 1994. Entry for this date in STI’s product log book: Lot number consecutively assigned the designation STI-3090, labelled “Experimental Silica.”

August 30, 1994. Entry for this date in STI’s product log book: Lot number STI-3091, labelled “Experimental 201 A/280,” which is precipitated alumina.

October 6, 1994. Cabot patent application filed. Yancey did not know of the filing at this time.

October 12, 1994. Entry in STI’s product log book: STI-3100 “assigned to Exp. Alum. Oxide C.” “Alum” means alumina. Alumina Oxide C is a fumed alumina. Following this entry is the phrase, “See Paul’s notes.” As of October 12th, Yancey knew that Rippey was using ferric nitrate as an oxidizer for the chemical part but did not know that Rippey was using fumed alumina for the mechanical part.

Between July, 1994 (Semicon/West) and October 12, 1994. During this time period there is no log book entry in STI’s product log book indicating that STI mixed up a fumed alumina. Between September 29, 1994, and October 6, 1994, STI was working with silica and precipitated alumina. October 12th is the first date in the STI log book showing that STI mixed up a fumed alumina after Semicon/West.

Between January 1, 1993, and October 12, 1994, STI mixed up no fumed alumina. Any fumed alumina slurry mixed up by STI would have been at least 21 months old when Yancey in his letter to Kaufman on October 25, 1994, stated that the slurry could easily be expected to have a shelf life of 6 months.

Between October 12, 1994, and October 18, 1994. Yancey did not attempt to polish any semiconductor wafers during this time period. At this time, Yancey did not have any facilities in-house for using the slurries to polish wafers. He still relied on customers to test his products.

October 18, 1994. Yancey attended the smaller Semicon/Southwest trade show held in Austin, Texas. STI had a booth at this show and tried to introduce its products to the semiconductor industry.

Yancey decided to take products which he had not manufactured or sold. He had not sold a fumed silica or fumed alumina slurry, but he had sold a precipitated alumina slurry and a cerium oxide. He decided to take fumed silica because of industry interest in using it to polish oxide layers. (He bought the silica dioxide from DeGus-sa.)

Yancey decided to include a fumed alumina slurry among the products he displayed at Semicon/Southwest. He did not manufacture the fumed alumina, but rather bought fumed alumina powder from De-Gussa. He was influenced in his decision by the renewed availability of aluminum oxide C from DeGussa. The half-gallon sample he took (in a transparent container) was from the lot that he mixed on October 12th.

STI also displayed its traditional colloid aluminas, including the Ultra-Sol 200 and the 201 A/280. STI exhibited a cross-section of its product line, including some fumed silicas, precipitated aluminas, the fumed alumina, and a cerium oxide.

Yancey decided to take no oxidizers to the show because STI had never sold an oxidizer. STI did not want to sell oxidizers but did so because it was demanded by the industry in order to sell CMP slurries requiring abrasive and oxidizer components.

Cabot and Rippey had a booth at the show. They gave an invitation-only presentation, which was their commercial introduction of their new tungsten CMP slurry, named Semi-Sperse W-A355, which Cabot had developed in 1993 and 1994. Yancey was not invited to this presentation and did not attend. At the presentation, Cabot disclosed information as to the characteristics of their new product: The weight percent of fumed alumina in the slurry was 3; the viscosity of the solids content of the slurry was less than 5 centi-poise (essentially, it flowed like water); it had a mildly acidic pH of 4; the particle size of the fumed alumina abrasive was approximately 100 nm (Cabot disclosed a particle size distribution of fumed alumina with a number mean of 94.3 nm, or approximately. 1 micron, and a distribution between approximately 0 and approximately 225 or 230 nm); and its shelf life, during which its properties would not change, was 3 months. (Cabot had conducted shelf life studies and had a formalized shelf life study under way as part of the Sematech project. It was not typical to quote a 3-month shelf life for a CMP slurry. One year was typical.) Semi-Sperse Fe 10, ferric nitrate 10% in the solution, was the oxidizer component of the slurry. Its viscosity was less than 5; its pH, 1.7; and its shelf life an atypical 3 months.

Yancey did not learn at Semieon/South-west that this new product had a solid content of 3%, a viscosity of 5 centipoise, a pH of 4, a mean particle size distribution of around 94 nm, and a shelf life of 3 months.

Three Cabot or Rippey employees came to STI’s booth and examined the dispersions. Yancey showed them STI’s fumed alumina. They told him that Cabot was also coming out with a fumed alumina. This was Yancey’s first awareness that Cabot was coming out with a fumed alumina.

October 20, 1994. Yancey and Fox from STI met with Jairath of Sematech. Yancey took the STI fumed alumina product to the meeting. STI’s participation in Sematech’s benchmarking trial was discussed.

October 21, 1994. STI mixed up lot 3113, “Alum. Oxide C Exp,” a fumed alumina.

October 24, 1994. Yancey by letter thanked Jairath for meeting with him and for the opportunity to participate in benchmarking, and confirmed that STI would supply Jairath with some of STI’s slurries.

Attached to the letter was a particle size distribution of the two materials which Yancey sent to Sematech. One is for XMet202 (the same product as Met202, “X” meaning experimental). The particle size distribution is centered around .1-2 micron with virtually nothing about .5 micron, and with a small tail just over I micron (which Yancey believed to be anomalous). Yancey believed that there were no particles greater than I micron in size in this development sample.

October 25, 1994. Yancey wrote to Kaufman at IBM to give him information about STI’s fumed alumina dispersion, XMet202 (Met202). Yancey hoped to persuade IBM to buy more. In the letter, Yancey says that STI had been studying the stability of its new fumed alumina product “for some time” but had only recently made a “testing grade” batch, which was lot 3100, mixed thirteen days previously, on October 12th. He says that he had not received the chemical data for lot 3100 but includes data from 201 A/280 (precipitated alumina), lot 1090, for comparison, noting that the difference is “dramatic,” meaning between 201 A/280 and lot 3113.

The letter goes on to say that within 10 days Yancey would send to Kaufman “a full set of data on lot 3100” and lot 3113. The new information would contain chemical purity information on the alumina particles and TEM pictures.

Yancey observes that his fumed alumina product seem “very stable.” “We can easily state a three month shelf life at this point, and I expect that it will easily pass six months.” Yancey did not mix any fumed alumina slurry in 1994 before October 12th. When he says that he had been studying the stability of the alumina product for some time, he had in mind his 1992 slurries, which he had allowed to sit on the shelf to determine if they had a shelf life of a year or more.

Yancey attached to the October 25th letter two charts of particle size, one for XMet202 and one for 201A-280. The chart indicates that as to the mean particle size distribution for Met202, 50% of the particles have a particle size of .15-17 micron. The particle size distribution for XMet202 indicates some greater-than-1micron particles, which Yancey believes to be anomalous. The particle size range for 201A/280 included 3 or 4 major peaks going as high as 6 or 7 microns and as low as .2 micron.

October 28, 1994. STI sent to Jairath at Sematech at no charge 5 gallons of Ultra-Sol XMet202 fumed alumina dispersion, development sample let STI-3113.

In the weeks following October 25, 1994. In a series of voice mails to Kaufman, Yancey discussed ferric nitrate and the Sematech project. At that time, Kaufman was the IBM representative to the technical advisory board for the benchmarking project.

A voice mail said that STI was interested in taking part in the benchmarking study and for that needed the tungsten slurry; that STI had the abrasive and was looking for a list of possible oxidizers which could be used with an abrasive. Yancey asked Kaufman if he had any suggestions. Kaufman was surprised that Yancey would ask for advice on the identity of an oxidizer, which IBM considered confidential.

Several weeks later, Kaufman received another voice mail from Yancey to the effect that STI was proceeding and had determined from Sematech that ferric nitrate was a suitable oxidizer.

Kaufman never discussed with Yancey what materials IBM polished with STI’s slurries, only that IBM was polishing a metal of some sort. Nor did Kaufman disclose anything about any additives or chemistries that IBM might or might not have added to what IBM received from STI. Nor did he discuss with Yancey IBM’s method of preparing a slurry sample for particle size testing, nor how IBM actually made up a slurry, nor how IBM conducted the particle size analysis, including sonication (which tends to reduce particle size). Nor did IBM disclose to Yancey any information about any other slurries from any other company, including particle size analysis or polishing results.

By October, 1994, IBM had published that ferric nitrate could be used as an oxidizer in a CMP polishing system. It had done so in U.S. Patent 5,262,354, an IBM patent dated November 26, 1993: “metallization can be removed from the surface of a dielectric by chemical mechanical polishing with an alumina slurry in dilute nitric acid or by using other acidic slurries, or example, ferric nitrate.” The patent does not refer to tungsten. There is no evidence that Yancey knew of this patent. Yet use of ferric nitrate was in the public domain, and Yancey testified that he heard that IBM was using ferric nitrate.

In the autumn of 1994, Yancey knew that Rippey, IBM and AMD were using ferric nitrate as an oxidizer. Ferric nitrate was the first oxidizer he selected for STI’s product hne, and he selected ferric nitrate in the period after he learned that these other companies were using it.

November, 1994. Cabot first offered to sell for profit slurries falling within the claims of its patent.

December 5, 1994. Yancey wrote to Jairath acknowledging the invitation to participate in the benchmarking test. The second paragraph refers to oxidizer additives:

We have decided to participate with one of our developmental products. Ultra-Sol Met202 Fumed Alumina CMP Dispersion, which we discussed during our meeting and followed with a five gallon sample. In discussions with other companies in the CMP business, Applied Chemical Solutions for one, it has become apparent that the oxidizer additives should be made a part of the slurry package. With this in mind, we are also submitting a 20% solution of ferric nitrate nonahydrate for use with the Met202 Alumina. If you prefer another type of oxidizer system we would be happy to package your preference in a ready use, volumetrically measurable solution.

Yancey did supply the ferric nitrate oxidizer. Jairath did not request a different oxidizer system. At this time, STI was not selling oxidizers for CMP.

Along with this letter, Yancey sent a specification sheet for Met 202 alumina CMP dispersion, an x-ray diffraction trace of the aluminum oxide C in the material, and an application note showing how to dilute various abrasive and oxidizer concentrations to form desired solids and oxidizer concentrations in a slurry (a dilution table). Yancey wrote the application notes around the time he sent this letter to Jairath in December, 1994. It was Yan-cey’s belief at the time that ferric nitrate and hydrogen peroxide oxidants were commonly used in the industry.

December 14, 1994. The first sale occurred of a Cabot slurry that fell within the claims of the patent.

In 1994, IBM did not order any Met 202 from STI.

1995

January or February, 1995, through Spring, 1996. STI participated in Sema-tech’s benchmarking trials. For these tests, two of the three STI products were fumed alumina (Ultra-Sol 200A and Ultra-Sol Met 202), used to polish aluminum. The third, Met 201, was a precipitated alumina, used to polish tungsten and copper. Sematech provided the test wafers. Yancey was the lead engineer in the trial.

Early 1995. STI began active marketing of Met 202. Between 1996 and 1999, STI sold approximately $130,000 of Met 202. Met 202 was marketed by sales agents in Japan, the West Coast, Texas, Florida, and Europe. STI used the results from the Sematech benchmarking trial in its marketing.

June or July, 1995. Yancey learned that IBM was unhappy with STI’s boeh-mite products. IBM did not order any Met 202 from STI in 1995.

Mid-1995. Customers began demanding an oxidizer with the slurries, and STI started selling an oxidizer. The Met 202 and the oxidizer were marked separately.

Late 1995. Yancey decided to apply for patent protection as part of his overall plan to obtain investors in STI. (Yancey had consulted with patent attorneys, applied for and obtained patents between 1970 and 1982.) In December, 1995, Yan-cey met with his attorneys at Bell, Selzer, Park & Gibson (“BSPG”) (Drew Meunier and Ron Linker) in connection with filing a patent application.

1996

Around March 11, 1996. STI took on some investors for the first time (Aurora Ventures). They invested around $700,000 initially. STI hoped that this investment would allow STI to play a dominant role in the CMP slurry business.

Yancey found them to be “greedy.” They took over three of the six seats on STI’s Board of Directors. Yancey was unpleasantly surprised when, shortly thereafter, he found that they wanted him to sell the company. Yancey himself did not want to sell the company. The investors were not happy about STI’s being sued by Cabot.

Once in March and once in April, 1996, Yancey contacted Linker and BSPG about a Cabot patent or patent application. Linker thus knew that Cabot had a patent or an application. BSPG searched the databases for the Cabot patent or application.

March 11, 1996. Yancey contacted Meunier, and they conferred regarding accusations made by Cabot to customers of STI that STI was using Cabot technology.

At this time, Yancey was trying to increase STI’s sales of Met 202.

In response to that conversation, in March and April, 1996, Meunier conducted at least two database searches to see if he could locate a Cabot patent or application. He found nothing relevant.

On or before March 18, 1996, Yancey told BSPG about his sales to IBM and his use of ferric nitrate as an oxidizer.

March 18, 1996. Yancey sent a fax memo to Dan Sullivan in IBM’s legal department regarding IBM’s possibly having intellectual property rights ‘in a slurry system that STI wanted to make for CMP planarization.’ Yancey sent a copy to Meunier, and Linker confirms that BSPG received this copy. The point of Yancey’s memo to Sullivan was to check with IBM to make sure that STI did not transgress IBM’s intellectual property rights. In the memo, Yancey stated, “[0]ur main concern at this time is clearing the use of the two components, alumina and ferric nitrate.”

In the second paragraph, the memo states:

... In about 1989, IBM contacted me regarding using our products in some undefined use in the IC fabrication area. We have been selling an alumina product to one of IBM’s groups ever since that ‘initial contact.... Since ferric nitrate was the one used in the industry, and had no known patent constraints, we developed our process around this combination — colloidal alumina combined with ferric nitrate oxidizer.

Thus, sometime around March 18, 1996, Yancey provided BPSG with information about his sales of an alumina product to IBM. He also informed BPSG that he believed that the had developed a process that was a combination colloidal alumina combined with ferric nitrate oxidizer.

Meunier received a copy of this letter in March, 1996. This letter did not lead Meunier to conclude that STI had been selling boehmite alumina to IBM since 1990. The letter does not reference boeh-mite alumina.

By March 18, 1996, Yancey had known for two years that IBM was using ferric nitrate as an oxidizer. He knew that IBM was buying boehmite alumina from STI and that they were using it to polish metal. He knew that IBM was using many other aluminas. He did not know specifically that IBM was using ferric nitrate with STBs alumina.

April, 1996. At a trade show in Europe, Cabot employees approached one of STI’s board members. They told him that STI was selling a product as to which Cabot had patent protection and that Cabot intended to act upon it to put STI out of business.

Hearing this, Yancey again consulted BSP G.

April 2, 1996. At Yancey’s request, Meunier conferred with STI Board of Directors member Gerry Cutini regarding Cabot’s claims that STI was using Cabot’s technology. Cutini had told Yancey of Cabot’s claims. This conversation triggered Meunier’s second database search for patents that were assigned to Cabot. Nothing relevant was found.

April 10, 1996. In a telephone conference, Yancey and Meunier discussed a new patent disclosure for a copper polish made up of boehmite alumina and ferric nitrate. The boehmite solution was that which STI had sold to IBM since 1990. The invention was the combination of boehmite alumina and ferric nitrate.

In this conversation, Yancey told Meunier that he had been selling to IBM a copper polishing compound without the ferric nitrate oxidizer. As of April 10, 1996, Yancey had known for several years that IBM was using the alumina that they bought from STI for CMP and for polishing metal.

Yancey recalls having told Meunier in this or a later related conversation prior to June 17, 1996, that he had sold boehmite alumina slurries to IBM on a continuous basis from 1990 until 1996. He did not send documentation of these sales to Meu-nier. Meunier does not recall it being his understanding as of April 10, 1996, that he knew that STI had sold boehmite alumina to IBM since 1990.

In Meunier’s April 11th memorandum to the file in reference to this conversation, Meunier states, “Paul Yancey would like to go ahead and pursue patent protection for this particular copper polishing compound in combination with the ferric nitrate oxidizer in the process of polishing copper.” This is a reference to the specific copper polishing compound without the ferric nitrate oxidizer that Yancey had been selling to IBM.

After the April 10th conversation with Yancey, at Yancey’s instruction, Meunier started doing work as to patents he had already found and looking for additional patents to address the issue of whether the copper polishing compound was something that could be patentable. Yancey told Meunier on April 10th that the copper polishing compound is what Yancey had sold to IBM without the ferric nitrate oxidizer.

April 19, 1996. On this date there was an office conference between Meunier and Yancey to discuss issues regarding preparation of the patentability opinion that was issued on April 30th regarding Yancey’s copper polishing compound in combination with a ferric nitrate oxidizer. Yancey told Meunier that his invention utilized an al-koxide based alumina, and they discussed its use in combination with an oxidizer for polishing copper.

April 30, 1996. Meunier wrote to Yan-cey regarding 'the patentability investigation regarding chemical mechanical polishing compositions for copper and aluminum, and giving the opinion that Yancey’s CMP compound for copper should qualify for patent protection. The invention was a combination of a ferric ion oxidizer and an alkoxide-based alumina, the combination of the two. This combination reduces the extremely corrosive effect of the oxidizer when polishing copper. It reduces the static etch rate. The patent application filed and ultimately abandoned by Yancey was directed to the invention described in this letter. The subject of Claim 1 of this application was not Yancey’s invention (combination of boehmite alumina and ferric nitrate) in that it did not include the combination of boehmite alumina and ferric nitrate.

Yancey believed that the patent application he was filing was for the combination of boehmite alumina and ferric nitrate. Yet the April 30th patentability opinion is in one place so worded as to suggest that the writer thought of the invention as simply the use of an alkoxide-based alumina for the removal of copper or aluminum via planarization. Under “Evaluation of Prior Art References,” Meunier states:

Based on the patentability search, it is our opinion that none of the above noted references, taken either individually or in combination, discloses or suggests the components in your CMP polishing slurry for polishing copper or aluminum. In particular, none of the references disclose or suggest the use of an alkoxide-based alumina for the removal of copper or aluminum via CMP planarization.

However, earlier on, in “The Invention” section, Meunier writes:

The slurry composition of the invention contains a ferric ion oxidizer and an alkoxide-based alumina. The addition of ferric nitrate or other ferric salts provides the ferric ion which acts as the oxidizing agent in the slurry. The al-koxide-based alumina contains reactive sites which are believed to tie up the nitrate ions allowing ferric ions to freely oxidize the metal being polished. As a result, corrosion of the metal on the wafer is greatly reduced.

In the final paragraph of the letter, Meunier asks that Yancey “provide us with more detailed information on the alumina used in your CMP composition.”

As of April 30, 1996, Meunier had not understood that STI had been selling boehmite for several years.

May 13, 1996. Yancey faxed to Meunier the Vista Chemical brochure for DISPAL alumina powders and alumina sols, describing the alumina that STI had been using in its slurries. The DISPAL alumina powders are made by Vista Condea. Boehmite alumina is described in this brochure. At the bottom of the first page that was faxed to Meunier, yancey wrote, “We use a 14N 4-26 (140 m2/gm, nitric, pH 4, 25%),” pointing out to Meunier what Yancey used in the formulation for the copper slurry. In the printed section, left-hand column, of the first page, there is the following sentence: “The alumina in all DISPAL powders and sols consists of boehmite crystallites produced via Vista’s alkoxide chemistry.” Before sending the brochure to Meunier, Yancey drew a circle around this sentence to highlight it. Yan-cey wrote at the bottom and drew the circle to inform BSPG of the boehmite alumina sales.

A table on the third page of the Vista brochure listed average particle size for DISPAL alumina powders.

Yancey believed that he had provided full details of his prior sales of the boeh-mite alumina slurries and the use of ferric nitrate as an oxidizer to BSPG before they prepared the patent application. He relied on BSPG to prepare the patent application directed to his invention of the combination of the boehmite alumina and the ferric nitrate oxidizer.

When Meunier received this document, he was working on the patent application for the copper polishing compound.

As of May 13th, Meunier thought that the invention was directed to the use of a specific type of alumina, and that was boehmite alumina; and further, that the invention did not include the ferric nitrate oxidizer, and that was a preferred embodiment. Yancey told him that the invention included the ferric nitrate oxidizer and was a combination of ferric nitrate oxidizer and alkoxide-based alumina, as in the patenta-bility opinion.

May 14, 1996. Yancey wrote to Meunier describing experiments run by STI on copper wafers, for inclusion in the patent application. In the five experiments, the alkoxide-based alumina is combined with ferric nitrate in various concentrations. Yancey understood his invention to be a combination of ferric nitrate and his 201A/ 280 product. In his description of the second experiment, Yancey states, “[T]he 201A/280 offers a significant advantage over standard alumina slurries made from gamma aluminas using ferric nitrate as the oxidizer.”

June 17, 1996. Yancey’s attorneys found a published European patent application (EPO 708160A2) on metal oxide slurries including fumed silica and fumed alumina. The patent application was for a chemical mechanical polishing slurry for metal layers. They found no U.S. counterpart but assumed one was pending.

June 17, 1996. BSPG attorney Raymond 0. Linker filed for Yancey and STI a patent application regarding a formulation for a CMP slurry. Meunier drafted the application. Yancey reviewed the application and signed under oath the “Declaration and Power of Attorney for Patent Application,” declaring that he was the first and sole inventor of the invention.

The application claims an invention broader than ferric nitrate oxidizer in combination with an alkoxide-based alumina, in that in Claims 1 and 12 boehmite alumina by itself is also claimed. (Yet Meunier refers in his April 11th memorandum to a statement by Yancey on April 10th that his invention is ferric nitrate oxidizer in combination with a particular copper polishing compound.)

Meunier did not understand Yancey to have told him prior to June 17th that STI had been selling boehmite alumina abrasives to IBM for polishing metal conductive layers since 1990 or that STI had been selling boehmite alumina abrasives before the critical date, June 17, 1995. Meunier remembers Yancey telling him about the boehmite alumina sales after June 17th.

In connection with filing this patent information, Linker relied upon Yancey to provide accurate information regarding his prior art products as they related to the patent application. By July 2d, Linker knew that STI had sold boehmite alumina for polishing metal layers. When he found out that STI had sold boehmite alumina abrasive in a slurry to polish metal conductive layers, Linker concluded that that claim in the application should not be pursued and that the sales should be disclosed to the Patent Office.

Claim 1 claims a process for polishing the metal surface of a semiconductor device. Yancey did not invent the Claim 1 process.

Claim 12 reads, “A chemical mechanical polishing slurry for polishing metal conductive layers comprising a boehmite alumina abrasive.” The claim makes no reference to an oxidizing component or gamma alumina. As of June 17, BSPG had conducted a search to determine whether the invention described in Claim 12 was a new invention and did not see it described in any of the patents they located. The review is set forth in Meunier’s April 80th letter to Yancey. When the application was filed, Meunier believed Claim 12 to be a patentable invention.

When the application was filed, Yancey knew that IBM was using gamma alumina powder with ferric nitrate to polish metal, but he did not know if IBM was using ferric nitrate with STI’s boehmite product to polish metal. Yancey knew as of 1994 that Rippey and others were using ferric nitrate.

The description and every example in the application describe a combination of alkoxide based slurry with ferric nitrate.

Late June, 1996. Yancey displayed his products and data from the Sematech benchmarking at the San Jose, California, trade show. Shortly after Yancey returned, he learned that the Cabot patent had issued. The very next day, a letter arrived from Cabot attorney Faye Morri-seau saying that Cabot had sued STI in California.

Upon receiving notice of the suit, Yan-cey consulted Linker and Meunier. He faxed the complaint to Linker and met with them the next day. At this meeting, they reviewed the complaint and the patent and discussed invalidating the patent with prior art and obtaining a license, as well as the possibility of joint testing.

June 18, 1996. The Cabot patent issued. The claims in this patent are slightly different from those in the European application.

At Column 4, line 21 and following, the patent reads:

In order for the polishing slurry of the present invention to be an effective alternative to conventional slurries, it is important that the aggregates of the metal oxide particles are uniformly dispersed in a stable aqueous medium. By uniformly dispersed is meant that the aggregates are isolated and well distributed throughout the medium. By stable is typically meant that the aggregates will not re-agglomerate and settle out (e.g., form a hard, dense sediment). In a preferred embodiment, the aggregates will remain stable for at least a three month period of time. Critical to achieving slurry stability, it has been further discovered that the metal oxides particles of the present invention, in addition to having an aggregate size distribution less that [sic] 1.0 micron, have an average or mean aggregate diameter of less than about 0.4 micron and that the particles of the present invention have a force sufficient to repel and overcome the van der Waals attractive forces between the particles. The mean aggregate diameter refers to average equivalent spherical diameter when using TEM image analysis, i.e. based on the cross-sectional area of the aggregate. By force is meant that either the surface potential or the hydration force of the metal oxide particles must be sufficient to repel and overcome the van der Waals attractive forces between the particles.

Within a few days, or at most a few weeks, of the issuance of the Cabot patent, Budinger discussed STI’s retains with Yancey. Knowing that Yancey had worked with IBM, Budinger called Yancey to see if STI had any retains that could invalidate the patent. Budinger knew that Cabot had sued STI and was very concerned that should Cabot take over STI, Rodel would lose access to the retains.

Budinger and Yancey also discussed Ro-del’s desire to obtain an invalidity opinion regarding the Neville patent. (They did not discuss the possibility of an invalidity opinion being prepared by anyone else.) Budinger told Yancey that if Yancey would give Rodel the retains, Rodel would give Yancey a copy of the opinion. Yancey agreed to give Rodel, and Rodel’s attorneys at the firm of Foley & Lardner, access to the retains. Yancey