By Eric Schweibenz
On December 10, 2009, the International Trade Commission issued the public version of its opinion in Certain Probe Card Assemblies, Components Thereof and Certain Tested DRAM and NAND Flash Memory Devices and Products Containing Same (Inv. No. 337-TA-621).  As explained in our November 13 post, the ITC determined that there has been no violation of Section 337 in investigation.

By way of background, this investigation was instituted on December 19, 2007, based on the complaint of FormFactor, Inc. (“FormFactor”) of Livermore, California alleging violation of Section 337 by way of infringement of certain claims of U.S. Patents No. 6,615,485 (the ‘485 patent), 6,509,751 (the ‘751 patent), 7,225,538 (the ‘538 patent), 5,994,152 (the ‘152 patent), 6,624,648 (the ‘648 patent), and 7,168,162 (the ‘162 patent).  On December 5, 2008, Respondents Phicom Corp. and Phiam Corp. (collectively, “Phicom”) jointly filed a motion for partial summary determination that certain claims of the ‘648 are invalid as indefinite under 35 U.S.C. § 112.  ALJ Charles E. Bullock granted this motion on February 11, 2009 in Order No. 46.  Subsequently, on June 29, 2009, ALJ Bullock issued his initial determination (“ID”) finding no violation of Section 337 by Respondents Micronics Japan Co., Ltd. and MJC Electronics Corp. (collectively, “Micronics”) and Phicom.  See our July 23 post for more details.  On September 14, 2009, the Commission issued a notice determining to review in part the ID.  See our September 22 post for more details.

The ‘751 Patent

In the opinion, the Commission reversed ALJ Bullock’s determination that Japanese Patent Application Publication H10-31034 to Amamiya et al. does not anticipate the asserted claims of the ‘751 patent under 35 U.S.C. § 102.  Specifically, the Commission determined that Amamiya discloses each and every limitation of the asserted claims of the ‘751 patent.

The Commission also reversed in part the ID’s conclusion that Phicom’s accused products do not infringe claims 1-3, 12, 24, and 25 of the ‘751 patent and modified the ID’s conclusion of law to read as follows:  “Respondents Micronics’ accused products do not infringe claims 1-3, 12, 24, and 25 of U.S. Patent No. 6,509,751 in violation of 35 U.S.C. § 271(a).  Respondent Phicom’s (old) Type B and Type C accused products infringe claims 1-3, 12, 24, and 25 of U.S. Patent No. 6,509,751 in violation of 35 U.S.C. § 271(a); Phicom’s new Type B and Type C accused products do not infringe.”  According to the opinion, the Commission’s decision finding Phicom’s (old) Type B and Type C accused products to infringe “will not change the ID’s conclusion that there is no violation of section 337 in this investigation in light of our determination, explained earlier, that the Amamiya reference anticipates the ‘751 patent.”

The ‘152 Patent

Regarding the ‘152 patent, the Commission modified the ALJ’s finding in the ID that no analysis is needed regarding invalidity arguments related to anticipation and obviousness of the asserted claims that depend from claim 21.  According to the opinion, Federal Circuit precedent requires that each claim of a patent shall be presumed valid independently of the validity of other claims, and dependent or multiple dependent claims are presumed valid even though dependent upon an invalid claim.  Accordingly, the Commission “decline[d] to adopt the ID’s statement that ‘no analysis is needed’” and further determined “to take no position with respect to the validity of claims 22, 23, 28-30, and 33-35 that depend from claim 21 of the ‘152 patent.”

The ‘648 Patent

With respect to the ‘648 patent, the Commission affirmed ALJ Bullock’s determination that certain claims were invalid as indefinite under 35 U.S.C. § 112.  Specifically, ALJ Bullock determined in the ID that the limitations “probe card means for providing electrical contacts to a tester” in claim 20 and “probe card means for providing an interface to a semiconductor tester” in claim 34 were indefinite.  In its opinion, the Commission rejected FormFactor’s argument that the patent specification provides a definition of “tester” since the cited portion “appears in the ‘Background of the Invention’ and is therefore not discussed as part of the invention; was not raised at the hearing on claim construction; and – most importantly – provides no clear definition of ‘tester.’”  The Commission further rejected FormFactor’s argument that Figure 7 of the ‘648 patent provided corresponding structure to the limitations at issue since “Figure 7 does not concern semiconductor testing.”