DCT

2:18-cv-03201

Plastronics Socket Partners Ltd v. Highrel Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:18-cv-03201, D. Ariz., 06/21/2019
  • Venue Allegations: Venue is alleged to be proper in the District of Arizona because Defendants HiCon USA and HighRel reside there, have regular and established places of business, and have committed alleged acts of infringement in the district.
  • Core Dispute: Plaintiffs allege that Defendants’ electrical contact pins infringe a patent co-owned by Plaintiffs and that the individual defendants, both former employees of Plaintiffs, misappropriated trade secrets to create a competing business.
  • Technical Context: The technology concerns high-performance, spring-loaded electrical contacts, known as "pogo pins," which are critical components for testing semiconductor integrated circuits in high-volume manufacturing environments.
  • Key Procedural History: The complaint details a complex business and personal history, alleging that Defendant Hwang, the inventor of the patent-in-suit and Plaintiffs' former CTO, conspired with Defendant Schubring, another former employee, to use patented technology and confidential information to launch a competing enterprise. Plaintiffs allege this conduct violates prior assignment, royalty, and confidentiality agreements. A central feature of the case is that the inventor and co-owner of the patent, Hwang, is named as a defendant after allegedly refusing to join the suit as a plaintiff.

Case Timeline

Date Event
2004-10-06 Earliest Priority Date (’602 Patent)
2004-10-XX Defendant Hwang joins Plastronics as CTO
2005-09-24 Royalty Agreement executed between Hwang and Plastronics Socket
2005-10-04 Assignment Agreement executed, assigning 50% interest in invention to Plastronics Socket
2006-04-11 U.S. Patent No. 7,025,602 issues
2006-10-XX Plastronics begins manufacturing and selling the patented H-Pin
2007-10-08 Defendant Schubring is hired by Plastronics
2008-04-03 Defendant Hwang allegedly registers "hi-con.kr" domain name while still employed
2008-04-25 Defendant Hwang's employment with Plastronics ends
2008-04-30 Defendant Hwang allegedly founds competing company HiCon Ltd. in Korea
2009-04-XX Defendant Schubring's employment with Plastronics ends
2009-07-27 Defendant Hwang forms HiCon Co.
2012-12-31 Plaintiff Plastronics H-Pin is formed and acquires patent rights via merger
2016-10-XX Defendant Schubring joins Defendant HighRel as President and COO
2017-08-24 HiCon USA and HiCon Ltd. allegedly enter into an exclusive distribution agreement
2019-06-21 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 7,025,602 - "Contact for Electronic Devices"

  • Patent Identification: U.S. Patent No. 7,025,602, "Contact for Electronic Devices," issued April 11, 2006 (the "'602 Patent").

The Invention Explained

  • Problem Addressed: The patent describes conventional electrical test pins ("pogo pins") as being problematic ('602 Patent, col. 1:64-col. 2:12). These prior art pins often used a surrounding pipe-like body to house two contact points and a spring. This design could lead to poor electrical signal transmission, accumulation of debris from abrasion, and manufacturing complexity due to a high number of components, increasing costs and reducing productivity ('602 Patent, col. 1:43-col. 2:12).
  • The Patented Solution: The '602 Patent discloses a new contact design that eliminates the separate housing body. The invention consists of an upper and a lower contact pin that couple directly to one another, with a spring fitted between them ('602 Patent, Abstract; Fig. 6). The body of each pin has integrated elastic tangs with hooks and channels that allow the two pins to slide relative to each other while maintaining stable, multi-point electrical contact ('602 Patent, col. 5:60-col. 6:13; Fig. 7a). This two-piece, self-aligning design simplifies manufacturing and is intended to provide a more reliable electrical connection.
  • Technical Importance: This design aimed to create a lower-cost, higher-performance, and more reliable contact for the high-volume semiconductor testing industry, where signal integrity and durability are critical ('602 Patent, col. 2:15-24).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶ 68).
  • The essential elements of independent claim 1 include:
    • An upper contact pin with a contact part, two support protrusions, and a body.
    • A lower contact pin coupled to be orthogonal to the upper contact pin.
    • A spring fitted between the upper and lower pins.
    • The body of the upper pin having inclined surfaces, hooks, and two symmetrical elastic parts.
    • A first channel, defined by the elastic parts, to allow movement of the lower pin.
    • A second channel in the upper pin's body to accommodate the lower pin's hooks, allowing for movable electrical contact between the hooks and side surfaces of the channel.
  • The complaint alleges infringement of "one or more claims," reserving the right to assert additional claims (Compl. ¶ 121).

III. The Accused Instrumentality

Product Identification

The "Accused Devices" are identified as the "Hi-CONTACT" pin, the "Hs-CONTACT" pin, and the "Hr-CONTACT" pin (Compl. ¶ 11).

Functionality and Market Context

  • The complaint alleges these are electrical contact pins manufactured by Defendants HiCon Ltd. and/or HiCon Co. in Korea and imported, distributed, and sold in the U.S. by Defendants HiCon USA and HighRel (Compl. ¶¶ 11, 19-20). The complaint includes a diagram titled "Hi-Contact Concept," which shows a two-part pin with a spring making an electrical connection between an IC ball and a PCB pad (Compl. p. 20). Additional product renderings depict the "Hi-CONTACT," "Hr-CONTACT," and "Hs-CONTACT" pins as multi-part assemblies with a central spring, consistent with the technology of the '602 Patent (Compl. pp. 21-22).
  • The complaint alleges that the Accused Devices are sold for use in burn-in sockets to test semiconductors for major companies, and that Defendants have used their knowledge of Plaintiffs' business to poach key customers like NXP and Intel, directly competing with Plaintiffs' "H-Pin" product (Compl. ¶¶ 70, 101-103).

IV. Analysis of Infringement Allegations

’602 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
an upper contact pin, comprising: a contact part having a predetermined shape and contacting a lead of an object to be tested, two support protrusions, and a body; Each Accused Device has an upper contact pin with a contact part for contacting an electronic lead, two support protrusions, and a body. ¶122 col. 5:49-53
a lower contact pin coupled to the upper contact pin to be orthogonal to the upper contact pin; Each Accused Device has a lower contact pin that is coupled orthogonally to its upper contact pin. ¶122 col. 5:30-38
a spring fitted over a predetermined area between the upper and lower contact pins; Each Accused Device has a spring fitted in the area between its upper and lower contact pins. The product images depict this structure. ¶122 col. 5:38-41
the body of the upper contact pin including inclined surfaces and hooks provided on an end of the body, and two elastic parts provided to be symmetrical with respect to each other; The body of the upper contact pin in each Accused Device includes inclined surfaces, hooks, and two symmetrical elastic parts. ¶122 col. 5:60-67
a first channel defined by the two elastic parts, and providing a space to allow movement of the lower contact pin, when the lower contact pin is coupled to the upper contact pin; Each Accused Device has a first channel created by the elastic parts that provides space for the lower contact pin to move when coupled. ¶122 col. 6:1-4
and a second channel defined in the body of the upper contact pin to accommodate hooks of the lower contact pin therein such that the lower contact pin is movable, the second channel being in electrical contact with hooks and side contact surfaces of the lower contact pin. Each Accused Device has a second channel in the upper pin's body that accommodates the lower pin's hooks, allowing movable and electrical contact between the parts. ¶122 col. 6:5-13

Identified Points of Contention

  • Scope Questions: The complaint's theory appears to be one of literal copying, which may reduce the focus on claim construction. However, a potential dispute may arise over the term "orthogonal", questioning whether the accused coupling is precisely 90 degrees as the term implies or merely close. The patent specification's reference to "approximately ninety degrees" may support a broader construction than the claim language alone suggests (’602 Patent, col. 6:28-29).
  • Technical Questions: The central technical question will be whether the physical components of the accused pins—specifically their internal channels, hooks, and elastic parts—are structurally and functionally the same as those claimed in the '602 Patent. The litigation will likely involve detailed evidentiary comparisons of the products, rather than abstract debates over technology, especially given the visual evidence provided in the complaint (Compl. pp. 20-22).

V. Key Claim Terms for Construction

The Term: "orthogonal to the upper contact pin"

  • Context and Importance: This term defines the geometric relationship between the two primary components of the claimed contact. Its construction is critical because even a slight deviation from a precise 90-degree angle in the accused device could form the basis of a non-infringement argument. Practitioners may focus on this term to determine if "orthogonal" requires strict mathematical perpendicularity or allows for minor manufacturing tolerances.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes coupling the pins by rotating one "approximately ninety degrees" relative to the other, which may support an interpretation that does not require perfect perpendicularity (’602 Patent, col. 6:28-29).
    • Evidence for a Narrower Interpretation: The claim itself uses the unmodified term "orthogonal," which a defendant could argue carries its plain and ordinary meaning of exactly 90 degrees.

The Term: "channel"

  • Context and Importance: The "first channel" and "second channel" are the structural features that enable the novel slidable and electrical coupling between the two pins, distinguishing the invention from the prior art's simple pipe-like housing. The definition of "channel" is therefore fundamental to the infringement analysis, as a defendant could argue its product uses a different structure (e.g., a "slot" or "groove") that falls outside the scope of this term.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the function of the channels as providing "a space to allow movement" and to ensure "stable electrical contact," suggesting the term could encompass any structure that achieves these functions (’602 Patent, col. 6:1-8).
    • Evidence for a Narrower Interpretation: The figures, particularly Figure 7a, depict a specific geometry for the channels (116, 120) and their constituent parts. A defendant may argue that the term "channel" is limited to the specific embodiment and structures disclosed in the patent.

VI. Other Allegations

Indirect Infringement

The complaint alleges that HiCon USA and HighRel induced infringement by entering into exclusive distribution agreements, advertising the Accused Devices, and providing instructions and technical support to customers and distributors, knowing these actions would cause direct infringement by others (Compl. ¶¶ 123-124, 143-144).

Willful Infringement

Willfulness is alleged based on Defendants' alleged pre-suit knowledge of the '602 Patent. The complaint asserts that Defendant Schubring, as President and COO of both HiCon USA and HighRel and a former Plastronics employee, was "well aware of the '602 Patent since at least October 8, 2007" (Compl. ¶¶ 104-105). This direct link, combined with Defendant Hwang's status as the inventor, is presented as evidence of deliberate and willful infringement (Compl. ¶¶ 132, 152).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A central issue for the court will be one of factual comparison: does the physical construction of the accused "Hi-CONTACT" series of pins replicate the specific structural elements of claim 1, including the orthogonal coupling and the precise configuration of the internal hooks and channels? The outcome will likely depend on expert testimony and physical evidence comparing the accused products directly to the patent's claims and diagrams.
  • A second, overarching question involves the narrative of alleged corporate espionage: can Plaintiffs prove the allegations that the patent's inventor and a former key employee misappropriated both patented technology and confidential trade secrets to create a competing enterprise? Evidence supporting this narrative would heavily influence the analysis of willfulness and could frame the infringement issue as one of direct copying rather than an arms-length dispute over claim scope.
  • Finally, the case presents a unique question of standing and party alignment: how will the court address the fact that the patent's co-owner and inventor, Hwang, is named as a defendant? The complaint expends significant effort to establish Plaintiffs' right to sue without his cooperation, and the resolution of this procedural issue will be a critical early test for the case (Compl. ¶¶ 30-54).