DCT
2:17-cv-00656
Anza Technology Inc v. Mushkin Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Anza Technology Inc. (California)
- Defendant: Mushkin Inc. (Colorado); Avant Technology Inc. (Nevada)
- Plaintiff’s Counsel: Polsinelli
- Case Identification: 2:17-cv-00656, E.D. Cal., 09/06/2017
- Venue Allegations: Venue is based on allegations that Defendants conduct substantial business and sell the accused products within the Eastern District of California through retail stores such as Staples, Best Buy, and Target.
- Core Dispute: Plaintiff alleges that Defendants' computer memory products, and the manufacturing processes used to create them, infringe a patent related to specialized tools that prevent electrostatic discharge (ESD) damage during the assembly of sensitive integrated circuits.
- Technical Context: The technology concerns specialized tool tips used in automated machinery for bonding microelectronic components (like ICs) to substrates (like PCBs), a process where preventing ESD damage is critical to manufacturing yield and product reliability.
- Key Procedural History: The provided patent documents indicate that subsequent to the filing of this complaint, the asserted patent underwent an ex parte reexamination. This proceeding resulted in a certificate, issued April 2, 2021, canceling asserted independent claims 1, 2, 4, and 14-15. A prior disclaimer, filed December 8, 2009, had already disclaimed claims 5-13. The cancellation of two of the three independent claims asserted in the complaint (claims 1 and 14) presents a significant development for the case's trajectory post-filing.
Case Timeline
| Date | Event |
|---|---|
| 1999-02-25 | '927 Patent Priority Date |
| 2006-10-24 | '927 Patent Issue Date |
| 2012-04-01 | Avant acquires assets of Mushkin Inc's memory component business |
| 2017-09-06 | First Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,124,927 - "FLIP CHIP BONDING TOOL AND BALL PLACEMENT CAPILLARY"
- Patent Identification: U.S. Patent No. 7,124,927, “FLIP CHIP BONDING TOOL AND BALL PLACEMENT CAPILLARY,” issued October 24, 2006. (Compl. ¶32).
The Invention Explained
- Problem Addressed: In microelectronic assembly, the tools used to bond sensitive integrated circuits to substrates can build up an electrostatic charge. If this charge is released too quickly upon contact with the circuit—an electrostatic discharge (ESD) event—the resulting current surge can permanently damage the component. Conventional bonding tools made of highly conductive materials like tungsten carbide exacerbate this problem. (’927 Patent, col. 2:47-59).
- The Patented Solution: The patent describes a bonding tool tip made from a "dissipative material." This material is engineered to have a specific electrical resistance that is low enough to bleed off static charge and prevent its buildup, but simultaneously high enough to ensure the discharge occurs slowly, avoiding a sudden, damaging current flow into the sensitive electronic device. (’927 Patent, Abstract; col. 3:1-5).
- Technical Importance: This approach enables the safe, high-volume manufacturing of increasingly small and ESD-sensitive electronic components, improving production yields and the reliability of the final products. (’927 Patent, col. 2:50-59).
Key Claims at a Glance
- The complaint asserts independent claims 1, 14, and 16. (Compl. ¶¶30, 35, 37).
- Claim 1 (Apparatus): A flip chip bonding tool and ball placement capillary system comprising:
- a dissipative material
- having a resistance low enough to prevent a discharge of a charge to a device being bonded
- and high enough to stop current flow large enough to damage the device being bonded
- Claim 14 (Apparatus): An ESD-preventive device comprising:
- a flip chip bonding tool and ball placement capillary, comprising a dissipative material
- wherein a current produced by static charge generated during bonding is allowed to flow
- wherein the dissipative material has a resistance low enough to prevent a discharge of charge
- and high enough to stop all current flow to the device being bonded
- Claim 16 (Method): A method of utilizing a flip chip bonding tool and ball placement capillary, comprising:
- providing a bonding machine with a tool having a tip comprised of a dissipative material
- the dissipative material having a resistance low enough to prevent discharge and high enough to stop current flow
- and then performing steps of equipping the machine and using it to melt bonding material and connect a component.
III. The Accused Instrumentality
Product Identification
- The accused products are Ball Grid Array (BGA) packaged Integrated Circuits (ICs) and the Printed Circuit Boards (PCBs) to which they are mounted, sold under various product lines including REDLINE, BLACKLINE, STEALTH, PROLINE, and NOTEBOOK MEMORY. (Compl. ¶27). The complaint also accuses the processes and methods used to manufacture and assemble these products. (Compl. ¶30).
Functionality and Market Context
- The accused products are computer memory components and modules. (Compl. ¶15). The complaint alleges that the assembly of these products involves bonding ESD-sensitive IC chips to PCBs. (Compl. ¶¶16, 23). The core of the infringement allegation is that Defendants, or their contract manufacturers, utilize manufacturing processes and tools that comply with industry ESD-Standards to minimize product damage, and that in doing so, they practice the methods and use the apparatuses claimed in the ’927 Patent. (Compl. ¶¶26, 37).
IV. Analysis of Infringement Allegations
- '927 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A flip chip bonding tool and ball placement capillary system for connecting leads on integrated circuit bonding pads, comprising a dissipative material... | Defendants allegedly use or direct the use of "tools with tips that are specially designed to reduce the risk of damage" through the use of "electrically dissipative tool tips." The complaint's Figure 1 depicts such a tool picking up a die. (Compl. ¶20, Fig. 1). | ¶37; ¶11 | col. 11:50-51 |
| ...having a resistance low enough to prevent a discharge of a charge to a device being bonded... | The tools are alleged to comply with "reasonable and prudent ESD-Standard practices and techniques" designed to reduce the risk of ESD events, which necessitates preventing charge buildup. | ¶37 | col. 11:52-53 |
| ...and high enough to stop current flow large enough to damage the device being bonded. | The alleged use of "electrically dissipative tool tips" is said to "reduce sudden discharges of electrostatic current into the BGA ICs," implying a material property that limits or slows current flow compared to a conductor. | ¶37 | col. 11:53-54 |
- Identified Points of Contention:
- Evidentiary Question: The complaint's allegations regarding the specific manufacturing processes are based on "information and belief" and inferences from Defendants' compliance with general industry standards (e.g., JEDEC). (Compl. ¶¶36, 37). A central point of contention may be what direct evidence can establish that the actual tools used by Defendants or their contract manufacturers possess the specific properties of the claimed "dissipative material."
- Legal Question: As noted in Section I, asserted claims 1 and 14 were cancelled in a reexamination proceeding that concluded after the complaint was filed. A threshold legal issue for the court will be to determine the effect of this cancellation on the infringement claims as pleaded, potentially limiting the case to the sole remaining asserted independent claim, method claim 16.
- Technical Question: The claims require a material with a resistance that is functionally defined as both "low enough" and "high enough." The infringement analysis will turn on whether the materials used in the accused manufacturing processes fall within the specific functional range required by the claims and described in the patent specification (e.g., 10² to 10¹⁹ ohms). (’927 Patent, col. 11:57-58).
V. Key Claim Terms for Construction
- The Term: "dissipative material"
- Context and Importance: This term appears in every asserted independent claim and is the technological core of the invention. The entire infringement case rests on whether the tools used in the accused manufacturing processes are made of a material that meets the definition of "dissipative" as claimed.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims define the term functionally, by what the material does (i.e., having a resistance "low enough" to prevent charge discharge but "high enough" to stop damaging current). (Compl. ¶¶35, 37; ’927 Patent, col. 11:51-54). Plaintiff may argue this language covers any material that achieves this functional balance, regardless of its specific composition.
- Evidence for a Narrower Interpretation: The specification discloses specific examples of materials, such as silicon carbide uniformly doped with boron, and provides a specific resistance range of 10² to 10¹⁹ ohms. (’927 Patent, col. 4:26-31; col. 11:57-58). Defendants may argue that the claim term should be construed as limited to these or structurally similar materials and resistance properties.
VI. Other Allegations
- Indirect Infringement: While not pleaded as a separate count, the complaint contains allegations that could form the basis for an induced infringement claim. It states that Defendants "specify and/or direct" that their products be manufactured using the infringing methods and that contract manufacturers assemble the products in compliance with ESD-Standards alleged to be infringing. (Compl. ¶¶26, 36).
- Willful Infringement: The complaint alleges that Defendants have had knowledge of their infringement since "at least the filing of the original complaint." (Compl. ¶34). This allegation appears to support a claim for post-filing willfulness but does not assert pre-suit knowledge.
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary issue will be one of evidentiary proof: Can the Plaintiff, through discovery, produce direct evidence that the specific tools used by Defendants or their third-party manufacturers are in fact made of a "dissipative material" that meets the functional requirements of the claims, moving beyond inferences based on compliance with general industry standards?
- A dispositive legal question will be one of claim viability: Given the post-filing cancellation of asserted independent claims 1 and 14 during reexamination, what legal basis, if any, remains for the infringement action? The case's continuation will likely depend on the patentability of the sole remaining asserted independent claim (method claim 16) over the prior art that invalidated the other asserted claims.
- A core issue of claim construction will be the definitional scope of "dissipative material." The case may turn on whether this central term is interpreted broadly according to its functional language in the claims, or more narrowly in light of the specific examples and resistance values disclosed in the patent's specification.