ITC Issues Public Version Of Opinion In Certain Semiconductor Chips With Minimized Chip Package Size (337-TA-630)
On February 24, 2010, the Commission issued the public version of its opinion in Certain Semiconductor Chips With Minimized Chip Package Size and Products Containing Same (Inv. No. 337-TA-630). On December 29, 2009, the Commission issued a notice determining that a violation of Section 337 did not occur in this investigation. See our December 30, 2009 post for more details.
By way of background, this investigation was instituted on January 14, 2008, based on the complaint of Tessera, Inc. of San Jose, California. (“Tessera”). Originally, Tessera named eighteen respondents in the complaint, but after the termination of several respondents based on settlement agreements, consent orders and defaults, the following Respondents remained in the investigation: Acer, Inc., Acer America Corporation, Nanya Technology Corporation, Nanya Technology Corporation U.S.A., Powerchip Semiconductor Corporation, Elpida Memory, Inc., Elpida Memory (USA), Inc., ProMOS Technologies, Inc., Kingston Technology Co., Inc., Ramaxel Technology Ltd., Centon Electronics, Inc., and SMART Modular Technologies, Inc. The patents-in-suit are U.S. Patent No. 5,663,106 (the ‘106 patent), U.S. Patent No. 5,679,977 (the ‘977 patent), and U.S. Patent No. 6,133,627 (the ‘627 patent), which are generally directed to semiconductor chip packages and a process for encapsulating certain semiconductor chip packages. On August 28, 2009, ALJ Theodore R. Essex issued his initial determination (“ID”), finding no violation of Section 337 had occurred based on the importation into the U.S., the sale for importation, or the sale within the U.S. after importation of certain semiconductor chips with minimized chip package size and products containing same in connection with certain claims of the patents-in-suit. Further, ALJ Essex determined that a domestic industry exists that practices the patents-in-suit. See our September 1, 2009 and October 1, 2009 posts for more details. On October 30, 2009, the Commission issued a notice determining to review in part the ID. See our November 2, 2009 post for more details.
In the opinion, the Commission reversed the ALJ’s constructions of the claim terms “top layer” and “thereon” as recited in claim 1 of the ‘106 patent. Regarding the claim term “top layer,” the Commission found that the ALJ erred in construing this claim term as “an outer layer of the chip assembly upon which terminals are fixed,” and requiring that “the ‘top layer’ is a single layer” because the word “outer” improperly broadened the claim, while the requirement that the “top layer” be a single layer improperly narrowed the claim.
With regard to the ALJ’s construction of the claim term “thereon,” the Commission noted that although the ALJ construed the claim term in accordance with its ordinary meaning to require “disposing the terminals on the top surface of the top layer,” the ALJ nevertheless erred in applying a narrow meaning of the claim term by requiring the terminals to be “‘on or upon’ -on the top of – the ‘top layer.’” The Commission found that the “scope of the claim is broad enough to compass locating terminals on other surfaces of the ‘top layer’ other than the top surface, such as the bottom or side surfaces.”
In the opinion, the Commission reversed the ALJ’s finding that the accused μBGA products did not meet all the limitations of asserted claim 1 of the ‘106 patent. In particular, the Commission determined that the ALJ incorrectly identified the elastomeric layer in the accused μBGA products as the “top layer” despite the fact that “the ‘106 patent itself identifies the polyimide layer as the ‘top layer’ and distinguishes between the ‘top layer’ and the ‘elastomeric layer’.” Thus, the Commission determined that when the “top layer” is properly identified as the polyimide layer then each limitation of asserted claim 1 of the ‘106 patent is met. Notwithstanding its determination, the Commission ruled that the accused μBGA products did not infringe claim 1 of the ‘106 patent because the ALJ found that they were licensed products and therefore were non-infringing under the doctrine of patent exhaustion.
In addition, the Commission affirmed the ALJ’s finding that the accused wBGA products did not infringe the asserted claims of the ‘106 patent. In this regard, the Commission rejected Tessera’s theory of infringement that required the claimed “top layer” to include the solder mask layer, because “the patent continually depicts [these layers] as separate and distinct components.”
With regard to the ALJ’s finding of non-infringement of the ‘977 and ‘627 patents, the Commission affirmed the ALJ’s determination that the direct loading testing methodology employed by Tessera’s expert fails to prove infringement. In particular, the Commission determined “that the record lacks sufficient evidence to show that direct loading methodology as employed in this investigation proves infringement.” Such lack of evidence included, for example, “a showing that the demonstrated stress relief in the solder balls of the accused packages was due to terminal-to-chip displacement caused by the applied external load.”
According to the opinion, the Commission agreed with the ALJ’s finding that the 1989 Motorola OMPAC 68-pin chip package (“OMPAC”) does not anticipate the ‘977 and ‘627 patents under section 102(b)’s on-sale bar because “the record evidence supports the ALJ’s finding that the OMPAC package was an experimental prototype and the ‘sale’ from Citizen Watch to Motorola was subject to a confidentiality agreement.” The Commission did, however, “modify the ALJ’s decision to clarify that the ‘invention date’ of the patent had no bearing on the section 102(b) on-sale bar analysis.”
Validity and Domestic Industry Analyses Regarding the ‘106 Patent
Finally, the Commission affirmed the ALJ’s validity and domestic industry analyses pertaining to the asserted claims of the ‘106 patent without comment.