ALJ Bullock Issues Supplemental Initial Determination In Certain Encapsulated Integrated Circuit Devices (337-TA-501)
Further to our March 23, 2010 post, on April 7, 2010, ALJ Charles E. Bullock issued the public version of his Supplemental Initial Determination (“Supplemental ID”) in Certain Encapsulated Integrated Circuit Devices and Products Containing Same (Inv. No. 337-TA-501), in which he modified his previous finding of violation and determined that no violation of Section 337 had occurred.
By way of background, the ITC issued a notice and order on February 18, 2010 reversing ALJ Bullock’s October 30, 2009 Supplemental Initial Determination finding that non-party ASAT Inc.’s LPCC invention is not prior art to the patents-in-suit and remanding the investigation to the ALJ to make “necessary findings on anticipation and obviousness in view of the Commission’s determination that the ASAT LPCC invention is prior art to Amkor’s asserted patents.” See our February 22, 2010 post for more details.
On remand, Respondents Carsem (M) Sdn Bhd, Carsem Semiconductor Sdn Bhd, and Carsem, Inc. (collectively “Carsem”) argued that the ASAT invention anticipates U.S. Patent Nos. 6,433,277 (the ‘277 patent), 6,630,728 (the ‘728 patent) and 6,455,356 (the ‘356 patent) under 35 U.S.C. § 102(g). Complainant Amkor Technology, Inc. (“Amkor”) argued that Carsem improperly combined teachings from multiple references to prove that the ASAT invention anticipates. ALJ Bullock found that Amkor mistakenly treated each of the documents produced by ASAT as a separate piece of prior art, when in fact Carsem asserted them merely as evidence of what constitutes the single prior art ASAT invention.
With respect to the ‘277 patent, ALJ Bullock found that the ASAT invention does not anticipate claims 1-4 and 7 in part because the ASAT ‘200 patent discloses a lip on the tip of the contacts of the integrated circuit chip package, but not on the sides of the contacts as required by independent claim 1. The ALJ also found that the ASAT invention does not anticipate claims 17, 18 and 20. However, ALJ Bullock found that Carsem had demonstrated by clear and convincing evidence that the ASAT invention discloses all of the limitations of claims 21-23 in part because Amkor’s expert acknowledged on cross-examination that the ASAT invention disclosed all the elements of independent claim 21, and because the ASAT ‘200 patent explicitly discloses “plastic encapsulation which exposes the bottom sides of the die attach pads and the leads,” and Figures 4a and 4b thereof illustrate that the leads are exposed at the bottom of the package.
ALJ Bullock found that the ASAT invention does not anticipate claims 1-4, 7 and 8 of the ‘728 patent in part because it does not teach all four structures disclosed in the ‘728 patent for performing the “means for vertically locking” in independent claims 1 and 3 – the “central peak,” the “central depression,” the “rounded lip” and the “rectangular lip.”
Regarding the ‘356 patent, ALJ Bullock observed that Carsem no longer appeared to argue that the ASAT invention anticipates the asserted claims, as evidenced by the concession by Carsem’s expert that there was no anticipation.
ALJ Bullock rejected Amkor’s argument that the opinions of Carsem’s expert are unreliable because he failed to analyze and consider objective indicia of non-obviousness, finding that “to the extent [Carsem’s expert] failed to consider the secondary considerations of non-obviousness, it could only impact his ultimate opinion on obviousness – it would not affect his opinions regarding the other three Graham factors.” ALJ Bullock also referred to the detailed discussion and findings in his 2004 Initial Determination regarding Amkor’s evidence of secondary considerations, which are still applicable. Amkor asserted “new evidence” of secondary considerations which touched on the failure of others, commercial success and praise of the invention, but the ALJ found that the new evidence added nothing of import.
With respect to the ‘277 patent, ALJ Bullock found that each of the JP951, JP964, JP456, JP948, JP854, JP248 and ‘214 references in combination with the ASAT invention disclose all the features of claims 1 and 7. The ALJ also noted that the ASAT invention and all the references are directed to the field of small plastic semiconductor packaging, and that all the references disclose top-molded, bottom exposed packages in which the leadframes are encapsulated only on top to cover the top of the leadframe and a semiconductor die mounted on the leadframe. ALJ Bullock further determined that a common problem with these types of packages – recognized in each of the prior art references – is delamination between the plastic encapsulant material and the metal leadframe components, which can cause moisture intrusion or sheering stress that can damage or destroy a chip package. The ALJ therefore determined that it only makes sense that one of ordinary skill seeking to create a more reliable package would look to references that teach how to prevent delamination, and that the aforementioned references all employ a lip or undercut of varying shapes on the edges of the leadframe components to help interlock the plastic material with the metal contacts and die pad to prevent delamination. The evidence showed that one of ordinary skill in the art would know there are only a few variations as to where such undercut or lip can be placed on a metal leadframe to help interlock the leadframe to the chip package, and would have expected an undercut locking structure located on one edge or portion of an edge of a leadframe component to work the same and to provide the same benefit when applied to another edge or portion of an edge. Thus, ALJ Bullock concluded that it would have at least been “obvious to try” using the locking structures disclosed in the prior art references and the ASAT invention to try and improve reliability, and that claims 1 and 7 for therefore invalid under 35 U.S.C. § 103(a). For the same reasons, the ALJ found that claims 2-4 are obvious in view of the ASAT invention in combination with the JP951, JP964, JP456, JP854 and JP948 references, and that claims 17, 18 and 20 are obvious in view of the ASAT invention in combination with the JP951, JP964, JP456, JP854, JP948, JP248 and ‘214 references. The ALJ did not address the obviousness of claims 21-23 since it was not asserted by Carsem with respect to these claims, which were found to be anticipated by the ASAT invention in any event.
ALJ Bullock found that claims 1-4, 7 and 8 of the ‘728 patent are obvious in view of the ASAT invention in combination with the JP951, JP964, JP456, JP854, JP948, JP248 and ‘214 references for the same reasons espoused with regard to claim 17 of the ‘277 patent.
ALJ Bullock further found that what support Carsem provided for the obviousness of the asserted claims of the ‘356 patent is “too generalized to be of any import and insufficient to meet Carsem’s burden of proving obviousness by clear and convincing evidence.” Thus, the ALJ found that Carsem failed to prove that the asserted claims of the ‘356 patent are obvious in light of the ASAT invention in view of the general knowledge and skill in the art at the time of the invention, or in combination with the other prior art references.