DCT
2:22-cv-01762
Verghese v. ASM America Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Mohith Verghese and Carl White (Arizona)
- Defendant: ASM America, Inc. (Delaware)
- Plaintiff’s Counsel: Perkins Coie LLP
- Case Identification: 2:22-cv-01762, D. Ariz., 10/13/2022
- Venue Allegations: Venue is alleged to be proper as Plaintiffs are residents of Arizona, Defendant is headquartered in Arizona, and the claims arise from acts committed in Arizona.
- Core Dispute: Plaintiffs, former employees of Defendant, seek a declaratory judgment that they are the proper inventors of technology in a patent application filed while at their subsequent employer, and that the invention was not derived from confidential information or work performed for Defendant.
- Technical Context: The technology concerns refillable solid precursor sublimation vessels for Atomic Layer Deposition (ALD) tools, which are critical for advanced semiconductor manufacturing.
- Key Procedural History: This declaratory judgment action was filed in federal court in response to a lawsuit Defendant filed against Plaintiffs in Arizona Superior Court. The state court action alleges that Plaintiffs breached their employee intellectual property agreements by deriving the invention at issue from their work at Defendant. This federal suit seeks to resolve the central question of inventorship under federal patent law.
Case Timeline
| Date | Event |
|---|---|
| 2003-04-22 | U.S. Patent No. 6,550,963 (prior art cited by Plaintiffs) issues |
| 2012-05-27 | Priority Date for U.S. Patent No. 9,598,766 |
| 2017-03-21 | U.S. Patent No. 9,598,766 (prior art cited by Plaintiffs) issues |
| 2018-12-01 | Plaintiff Verghese’s employment with Defendant ASM ends |
| 2019-01-01 | Plaintiff Verghese hired by Applied Materials |
| 2019-08-13 | Defendant ASM files its '911 Patent Application |
| 2019-08-01 | Plaintiff White’s employment with Defendant ASM ends |
| 2020-02-20 | Defendant ASM's '911 Application is published |
| 2020-07-31 | Plaintiffs present invention to Applied Materials via disclosure form |
| 2020-11-09 | Plaintiffs' '518 Patent Application is filed |
| 2022-05-12 | Plaintiffs' '518 Application is published as the '456 Publication |
| 2022-10-13 | Complaint for Declaratory Judgment is filed |
II. Technology and Patent(s)-in-Suit Analysis
This action for declaratory judgment centers on the inventorship of U.S. Patent Application No. 17/093,518 (the '518 Application). The complaint references the published version of this application.
U.S. Patent Application Publication No. US 2022/0145456 A1 - Refillable Large Volume Solid Precursor Sublimation Vessel
- Patent Identification: U.S. Patent Application Publication No. US 2022/0145456 A1, titled Refillable Large Volume Solid Precursor Sublimation Vessel, published May 12, 2022.
The Invention Explained
- Problem Addressed: In semiconductor manufacturing, solid chemical delivery systems traditionally use sublimation vessels that, once depleted, must be cooled, removed from the processing tool, and sent for refilling, causing significant equipment downtime (Compl. ¶ 11). Using very large, off-tool vessels is an alternative, but these are expensive and involve complex, difficult-to-control heated delivery lines (Compl. ¶ 11).
- The Patented Solution: The application describes a "novel system" for a refillable sublimation vessel that can be replenished in place without being removed from the processing tool (Compl. ¶ 12). The system includes a vessel with a lid, a refill port, and a removable solid precursor refill cartridge, which avoids the downtime associated with conventional vessel replacement (Compl. ¶ 12).
- Technical Importance: By enabling in-place refilling, the invention aims to improve the throughput and efficiency of semiconductor fabrication tools, particularly ALD tools, which are essential for manufacturing modern chips (Compl. ¶ 11).
Key Claims at a Glance
- The complaint does not assert specific claims from the '518 Application, as it is not yet an issued patent. The dispute centers on the inventorship of the overall subject matter disclosed in the application (Compl. ¶ 29-30).
III. The Accused Instrumentality
This section is not applicable, as the complaint is a declaratory judgment action regarding inventorship rights, not an allegation of product infringement.
IV. Analysis of Inventorship Dispute
The core of the complaint is a dispute over whether the invention in the '518 Application was independently conceived by Plaintiffs or derived from "innovations" developed while they were employed by Defendant ASM. The complaint alleges that ASM has asserted derivation in a separate state court proceeding based on three specific technical concepts from ASM's own work.
| Alleged ASM "Innovation" (Basis for Derivation Claim) | Plaintiffs' Rebuttal / Counter-Allegation | Complaint Citation |
|---|---|---|
| Fluid paths machined in a sublimation vessel wall | Plaintiffs allege the '518 Application contains "no description" of this feature. | ¶ 20, 22 |
| A serpentine fluid path machined into the lid of the sublimation vessel | Plaintiffs allege the '518 Application contains "no description" of this feature. | ¶ 20, 22 |
| A thermally conductive heat transfer conduit with radial protrusions | Plaintiffs allege this concept was publicly disclosed by ASM itself in its own published '911 Application nearly nine months before the '518 Application was filed. They further contend their invention is for an improved refillable vessel, a concept not present in the ASM application (Compl. ¶ 19). | ¶ 21-22 |
| The use of multiple thermocouples inside the sublimation vessel (alleged against White) | Plaintiffs allege this was publicly known long before either application was filed, citing prior art patents. To support this, the complaint attaches U.S. Patent No. 6,550,963, which discloses a multipoint thermocouple for use inside a vessel in chemical processes (Compl. Ex. C). | ¶ 23 |
- Identified Points of Contention:
- Factual Question: A primary factual dispute is whether the subject matter of the '518 Application actually contains the first two "innovations" (wall and lid fluid paths) that ASM claims were derived. The complaint asserts they are absent.
- Public Domain Question: For any technology that may overlap (e.g., heat conduits, multiple thermocouples), the central legal and factual question is whether those concepts were already in the public domain. Plaintiffs' arguments suggest that ASM's own publication ('283 Publication) and prior patents ('766 and '963 Patents) may have placed these concepts outside the scope of protectable confidential information.
- Scope Question: A key issue will be whether the '518 Application's core concept of an in-place refillable vessel constitutes a patentably distinct invention, or if it is merely an obvious extension or combination of the specific thermal management techniques ASM claims to own.
V. Key Technical Concepts for Dispute Resolution
As this is an inventorship dispute over a pending application, not an infringement action over an issued patent, the focus is on the definition of the core technical concepts that divide the parties.
The Term: "Refillable solid precursor sublimation vessel"
Context and Importance: This phrase defines the central subject matter of the '518 Application. The resolution of the case may depend on whether this is considered a novel invention conceived by Plaintiffs at Applied Materials or an implementation of technology derived from their work at ASM.
Intrinsic Evidence for Interpretation:
- Evidence for a Novel Concept (Plaintiffs' Position): The complaint characterizes the invention as a "novel system" designed to solve the specific problem of tool downtime by "allowing a solid precursor sublimation vessel to be refilled in place, without being cooled or removed from the tool" (Compl. ¶ 12).
- Evidence for a Derived Concept (ASM's Alleged Position): ASM's claims, as described in the complaint, suggest this "refillable" system is an aggregation of its proprietary "innovations" for thermal management (Compl. ¶ 20, 22). The complaint itself concedes the system "builds upon concepts that were widely known in the field," which may be used to argue it is an obvious combination rather than a distinct invention (Compl. ¶ 13).
The Term: ASM's "innovations"
Context and Importance: The case requires determining whether these specific technical features were (1) incorporated into the '518 Application and (2) were protectable as ASM's confidential information.
Intrinsic Evidence for Interpretation:
- Evidence for Non-Derivation (Plaintiffs' Position): The complaint alleges that two of the three primary "innovations" are not described in the '518 Application at all (Compl. ¶ 22). For the others, it alleges they were either publicly disclosed in ASM's own published patent application or were well-known in the art, citing U.S. Patent Nos. 9,598,766 and 6,550,963 as evidence (Compl. ¶ 21, 23).
- Evidence for Derivation (ASM's Alleged Position): ASM’s state court complaint alleges that Plaintiffs developed these specific innovations at ASM and later incorporated them into the '518 Application in breach of their employment agreements (Compl. ¶ 19-20).
VI. Other Allegations
- Count I: Declaratory Judgment Regarding Inventorship: Plaintiffs request a judgment under the Patent Act declaring that they, along with a third individual, are the proper inventors of the subject matter in the '518 Application and that the invention was not derived from information obtained at ASM (Compl. ¶ 27-30).
- Count II: Declaratory Judgment and Injunction: Plaintiffs seek to bar ASM from continuing its state court action to the extent it challenges inventorship, arguing that such disputes over pending patent applications fall within the exclusive purview of the U.S. Patent and Trademark Office and federal courts (Compl. ¶ 31-36).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this declaratory judgment action will likely depend on the court's answers to three central questions:
- A fundamental question of derivation: Was the core inventive concept of an "in-place refillable sublimation vessel" conceived independently by the Plaintiffs at Applied Materials, or does it, as a factual matter, incorporate confidential designs and "innovations" from their prior employment at ASM?
- The effect of public disclosure: For any technical features found to be common to both ASM's work and the Plaintiffs' invention, a key issue will be whether those features were already in the public domain through prior art patents or even ASM's own published patent application, which would undermine a claim that they constituted protectable confidential information.
- A jurisdictional conflict: A threshold issue is whether the federal patent law question of inventorship should be decided in this federal action, or if the dispute is more properly characterized as a state-law breach of contract claim revolving around the employee agreements, as pursued by ASM in state court.