DCT
2:13-cv-02409
OEM Group Inc v. ClassOne Equipment Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: OEM Group, Inc. (Arizona)
- Defendant: ClassOne Equipment, Inc. (Georgia)
- Plaintiff’s Counsel: Polsinelli PC
- Case Identification: 2:13-cv-02409, D. Ariz., 11/22/2013
- Venue Allegations: Venue is alleged to be proper based on Defendant purposefully directing activities into the district, including offering for sale and selling products to residents of Arizona.
- Core Dispute: Plaintiff alleges that Defendant’s refurbishment and sale of semiconductor processing tools infringes four patents related to systems for cleaning, etching, and heating fluids for semiconductive wafers.
- Technical Context: The technology at issue involves apparatuses for centrifugal processing of semiconductor wafers, focusing on motor drive seals, vibration damping, and solvent heating systems critical to manufacturing yield.
- Key Procedural History: The patents-in-suit were originally assigned to Semitool, Inc. The complaint alleges that Defendant infringes by, among other things, impermissibly reconstructing and refurbishing the "Semitool Spray Solvent Tool." This relationship suggests the core of the dispute may involve the legal doctrine of permissible repair versus impermissible reconstruction.
Case Timeline
| Date | Event |
|---|---|
| 1997-07-21 | '863 Patent Priority Date |
| 1999-07-06 | '150 and '450 Patents Priority Date |
| 2000-02-14 | '453 Patent Priority Date |
| 2002-01-01 | U.S. Patent No. 6,334,453 Issues |
| 2002-06-25 | U.S. Patent No. 6,408,863 Issues |
| 2003-03-25 | U.S. Patent No. 6,536,450 Issues |
| 2004-05-18 | U.S. Patent No. 6,736,150 Issues |
| 2013-07-24 | Press release cited as evidence of Defendant's activities in the district |
| 2013-11-22 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,334,453 - "SEAL CONFIGURATION FOR USE WITH A MOTOR DRIVE ASSEMBLY IN A MICROELECTRONIC WORKPIECE PROCESSING SYSTEM," Issued Jan. 1, 2002
The Invention Explained
- Problem Addressed: In semiconductor wafer processing systems that spin wafers, processing fluids can contaminate the drive motor, negatively impacting performance and yield ('453 Patent, col. 2:1-4).
- The Patented Solution: The invention describes a seal for the motor's drive shaft that uses specially designed threads on the rotating shaft. These "expulsion threads" or "flow generating threads" are housed within a chamber and, when rotated, actively drive any nearby processing fluids away from the motor and towards an exhaust, preventing contamination ('453 Patent, Abstract; col. 4:1-4).
- Technical Importance: This active sealing mechanism provided a method to improve the reliability and processing yield of centrifugal wafer processors by protecting the motor assembly from the harsh chemical environment of the processing chamber ('453 Patent, col. 1:16-20).
Key Claims at a Glance
- The complaint asserts one or more unspecified claims ('Compl. ¶11). Independent claim 1 is representative.
- Independent Claim 1 recites an apparatus comprising:
- a processing bowl defining a processing chamber;
- a motor drive assembly with a motor and a shaft assembly;
- the shaft assembly having "expulsion threads" at an end proximate the processing chamber; and
- a "chamber forming member" that surrounds the expulsion threads to form an "expulsion chamber."
U.S. Patent No. 6,408,863 - "SEAL CONFIGURATION FOR USE WITH A MOTOR DRIVE ASSEMBLY IN A MICROELECTRONIC WORK PIECE PROCESSING SYSTEM," Issued Jun. 25, 2002
The Invention Explained
- Problem Addressed: The patent identifies two issues in prior art wafer processors: the transfer of vibrational energy to the wafers, which can cause damage, and the need to seal the motor from processing fluids ('863 Patent, col. 2:1-8).
- The Patented Solution: This invention discloses a motor drive assembly that incorporates a "shock absorbing member" between the motor and the system's frame. This member, made of a resilient material, is designed to deform and absorb vibrations, particularly those perpendicular to the motor shaft's axis of rotation, thereby isolating the wafers from damaging mechanical stress ('863 Patent, Abstract; col. 4:21-37). The patent also describes a seal using "expulsion threads," similar to the '453 patent.
- Technical Importance: By isolating the processing chamber from motor and external vibrations, this design aimed to increase processing yield by reducing mechanical stress on the delicate semiconductor wafers ('863 Patent, col. 1:61-64).
Key Claims at a Glance
- The complaint asserts one or more unspecified claims ('Compl. ¶26). Independent claim 2 is representative of the sealing technology.
- Independent Claim 2 recites an apparatus comprising:
- a processing bowl defining a processing chamber;
- a motor drive assembly connected to drive components in the chamber;
- the assembly including a motor, a shaft assembly with "threads" at an end proximate the chamber; and
- a "chamber forming member" surrounding the threads to form a chamber, where rotation of the threads assists in sealing the chamber from the motor.
Multi-Patent Capsule
U.S. Patent No. 6,736,150, "FLUID HEATING SYSTEM FOR PROCESSING SEMICONDUCTOR MATERIALS," Issued May 18, 2004
- Technology Synopsis: The patent addresses the challenge of safely and precisely heating flammable solvents used in semiconductor manufacturing ('150 Patent, col. 1:24-45). The solution is a heater comprising a solid metal block (casting) into which are embedded separate coiled tubes for the solvent and a cooling fluid, as well as electric heating elements. This design isolates the flammable solvent from the hot electrical components and enables rapid, controlled heating and cooling ('150 Patent, Abstract).
- Asserted Claims: The complaint asserts one or more unspecified claims ('Compl. ¶41). Independent claims include 1, 10, and 11.
- Accused Features: The fluid heating systems of the refurbished Semitool tools ('Compl. ¶42).
U.S. Patent No. 6,536,450, "FLUID HEATING SYSTEM FOR PROCESSING SEMICONDUCTOR MATERIALS," Issued Mar. 25, 2003
- Technology Synopsis: This patent describes the same core technology as the '150 patent: a system for heating solvents safely and efficiently using a metal casting with embedded solvent coils, cooling coils, and heating elements ('450 Patent, Abstract). It appears to be the parent patent to the '150 patent.
- Asserted Claims: The complaint asserts one or more unspecified claims ('Compl. ¶56). Independent claims include 1 and 9.
- Accused Features: The fluid heating systems of the refurbished Semitool tools ('Compl. ¶57).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are "batch tools and other products and services," including those resulting from the "impermissible reconstruction" of the "Semitool Spray Solvent Tool" ('Compl. ¶12).
Functionality and Market Context
- The complaint alleges that Defendant makes, uses, sells, and offers for sale refurbished Semitool wafer processing tools ('Compl. ¶¶11-12, 26-27). Based on the technology described in the patents-in-suit, these tools are centrifugal processors that use a rotating carrier to hold semiconductor wafers while processing fluids are applied via spray nozzles ('453 Patent, col. 3:31-38). The complaint alleges these activities are part of a "continuing effort to compete unfairly with OEM" ('Compl. ¶7). The complaint does not provide further technical details on the accused products' operation.
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
The complaint makes general allegations of infringement without providing claim charts or detailing how specific features of the Accused Products meet the limitations of the asserted claims. The following tables summarize the infringement theory for representative claims based on the complaint's broad allegations.
'453 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a processing bowl defining a processing chamber | The complaint alleges the Accused Products, refurbished Semitool tools, contain the elements of the asserted claims. | ¶12 | col. 3:5-10 |
| a motor drive assembly connected to drive one or more components... the motor drive assembly comprising a motor | The complaint alleges the Accused Products contain a motor drive assembly. | ¶12 | col. 3:21-28 |
| a shaft assembly connected to be driven by the motor... the shaft assembly having expulsion threads at an end thereof that is proximate the processing chamber | The complaint alleges the Accused Products contain a shaft assembly with the claimed expulsion threads. | ¶12 | col. 3:57-61 |
| a chamber forming member substantially surrounding the expulsion threads... to form an expulsion chamber | The complaint alleges the Accused Products contain a chamber forming member as claimed. | ¶12 | col. 3:61-66 |
'863 Patent Infringement Allegations
| Claim Element (from Independent Claim 2) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a processing bowl defining a processing chamber | The complaint alleges the Accused Products, refurbished Semitool tools, contain the elements of the asserted claims. | ¶27 | col. 3:5-10 |
| a motor drive assembly connected to drive one or more components... the motor drive assembly comprising a motor | The complaint alleges the Accused Products contain a motor drive assembly. | ¶27 | col. 3:21-28 |
| a shaft assembly connected to be driven by the motor... the shaft assembly having threads at an end thereof that is proximate the processing chamber | The complaint alleges the Accused Products contain a shaft assembly with the claimed threads. | ¶27 | col. 3:55-60 |
| a chamber forming member substantially surrounding the threads... to form a chamber about at least a portion of the threads, rotation of the threads... assisting in sealing the processing chamber from the motor | The complaint alleges the Accused Products contain a chamber forming member that operates as claimed. | ¶27 | col. 3:61-65 |
Identified Points of Contention
- Legal Question (Repair vs. Reconstruction): The central dispute appears to be whether Defendant's refurbishment activities constitute permissible repair of a legally purchased product or impermissible reconstruction, which is an act of infringement. The analysis will depend on the extent and nature of the components being replaced and whether they embody the "heart" of the patented invention.
- Factual Question: A key factual dispute will be identifying which specific components of the Semitool tools are replaced or remanufactured by ClassOne. The case will require evidence on whether these components are the novel elements of the asserted claims, such as the motor shaft with expulsion threads ('453 Patent), the specific shock absorbing member ('863 Patent), or the cast-block fluid heater ('150 and '450 Patents). The complaint does not provide this level of detail.
V. Key Claim Terms for Construction
The Term: "expulsion threads" ('453 Patent, Claim 1)
- Context and Importance: The definition of this term is critical for determining the scope of the patented seal. Its construction will define what kind of surface feature on the motor shaft falls within the claim, which is central to the infringement analysis, particularly in the context of reconstruction.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification also uses the term "flow generating threads" ('453 Patent, Abstract) and mentions that the threads could be "parallel or angled grooves," suggesting the term is not limited to a single configuration ('453 Patent, col. 4:7-10).
- Evidence for a Narrower Interpretation: The primary embodiment illustrates "a plurality of helical threads" ('453 Patent, col. 4:6-7; Fig. 8), which could be used to argue for a more limited construction tied to a screw-like structure.
The Term: "shock absorbing member" ('863 Patent, Claim 6)
- Context and Importance: This term is the central element of the vibration-damping invention of the '863 patent. Its definition will determine what type of connection between the motor and frame constitutes infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the member's function as being "adapted to elastically deform" to isolate the motor, suggesting a functional definition ('863 Patent, Abstract).
- Evidence for a Narrower Interpretation: The specification details a specific three-part structure comprising an "outer flange member," a "shock absorbing web," and a "motor mount member" ('863 Patent, col. 4:38-41; Figs. 9-11). This detailed embodiment could support an argument that the term is limited to structures with these specific components and their described interactions.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating on information and belief that ClassOne "specifically intends to induce others" to infringe by using its products and services ('Compl. ¶¶20, 35, 50, 65). It also alleges contributory infringement, stating that ClassOne's products are a "material part of the invention," are "especially made or especially adapted for use in an infringement," and are not staple articles of commerce ('Compl. ¶¶13-15, 28-30, 43-45, 58-60).
- Willful Infringement: For all four patents, the complaint alleges on "information and belief" that ClassOne's infringement "has been willful" because ClassOne allegedly has "actual or constructive knowledge" of the patents ('Compl. ¶¶18, 23, 33, 38, 48, 53, 63, 68).
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to present two fundamental questions for the court that go beyond a standard infringement analysis:
A central issue will be one of permissible repair versus impermissible reconstruction: Does the Defendant's alleged refurbishment of the "Semitool Spray Solvent Tool" cross the legal line from a non-infringing repair of a lawfully purchased article into a full reconstruction of the patented invention, which would constitute infringement? The resolution will depend on a fact-intensive inquiry into the specific components replaced by the Defendant.
A key evidentiary question will be one of technical specificity: Given that the complaint alleges infringement by refurbishment, the case will likely turn on evidence demonstrating which parts ClassOne replaces and whether those parts are coextensive with the novel aspects of the patented claims—such as the specific "expulsion threads" seal, the three-part "shock absorbing member," or the integrated "fluid heating system" cast block.