DCT

3:14-cv-02864

Johnstech Intl Corp v. JF Technology Berhad

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:14-cv-02864, N.D. Cal., 06/20/2014
  • Venue Allegations: Venue is alleged based on Defendants' sales and offers for sale in the district, and their continuous and systematic contacts with the district through marketing and sales efforts.
  • Core Dispute: Plaintiff alleges that Defendant’s "Zigma" line of test contact products for integrated circuits infringes a patent related to a non-sliding, rolling contact mechanism.
  • Technical Context: The technology concerns specialized electrical contacts used in automated, high-volume testing of semiconductor integrated circuits (ICs), a critical step in electronics manufacturing.
  • Key Procedural History: The complaint does not mention any prior litigation, inter partes review (IPR) proceedings, or licensing history related to the patent-in-suit.

Case Timeline

Date Event
2003-04-23 ’866 Patent Priority Date
2006-06-13 ’866 Patent Issued
2014-06-20 Complaint Filed

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

U.S. Patent No. 7,059,866 - Integrated Circuit Test Contact to Test Apparatus, issued June 13, 2006

The Invention Explained

  • Problem Addressed: In automated testing of ICs, contacts are used to temporarily connect the IC to a test apparatus load board. The patent notes that prior art contacts, which often slide or deform under pressure, can cause wear and erosion on the expensive load board terminals over many test cycles (’866 Patent, col. 1:21-39; col. 2:22-24). The patent also describes a desire for a system that ensures a reliable electrical connection without requiring excessive force between the IC and the test apparatus (’866 Patent, col. 1:40-46).
  • The Patented Solution: The invention is a contactor assembly featuring a uniquely shaped electrical contact that "rolls" rather than slides across the terminal pad on the load board (’866 Patent, col.2:7-12). As depicted in the patent’s FIGURE, the contact is generally "S" shaped and is held within a housing slot between two elastomeric (rubber-like) elements (’866 Patent, col. 3:25-36, FIG.). When an IC lead presses on the "nose" of the contact, the entire contact rotates, causing its "tail" to roll into position on the load board terminal, which "substantially eliminate[s] sliding motion" (’866 Patent, Abstract; col. 4:51-54). This rolling action is intended to minimize wear while the elastomers provide a predetermined contact force (’866 Patent, col. 3:31-36).
  • Technical Importance: The claimed rolling-contact mechanism addresses the problem of load board wear, a significant operational cost and reliability concern in the high-throughput semiconductor testing industry.

Key Claims at a Glance

  • The complaint asserts "one or more claims" without specifying them (Compl. ¶10). Independent claim 1 is the broadest.
  • Independent Claim 1:
    • An apparatus for electrically connecting an IC lead to a terminal of a load board, comprising:
    • a housing having a slot extending through it;
    • a contact receivable in the slot, with a first end for the IC lead and a second end for the terminal;
    • the contact being "rollable across the terminal" between an unengaged and an engaged orientation; and
    • a "means for biasing said contact" to the unengaged orientation, wherein the rolling action substantially eliminates sliding motion of the contact's second end across the terminal.
  • The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

  • The accused products are test contacts sold under the name "Zigma" (Compl. ¶7, ¶10).

Functionality and Market Context

  • The complaint characterizes the Zigma products as "test contact products" and "test connects" used for testing integrated circuits (Compl. ¶7, ¶11). It alleges these products are manufactured by JF Technology and imported, sold, or offered for sale throughout the United States, including in the Northern District of California (Compl. ¶7, ¶10). The complaint does not provide specific technical details on the structure or mechanism of operation of the Zigma products. A figure in the patent’s Exhibit A depicts the claimed technology in a cross-section view, showing the S-shaped contact, elastomers, housing, and the intended rolling motion (Compl. Ex. A, p. 8, FIG.).

IV. Analysis of Infringement Allegations

The complaint makes general allegations of infringement without providing a detailed claim chart or specific factual support linking the accused product’s features to the claim elements. The following table summarizes the infringement theory based on the complaint's conclusory allegations.

’866 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a housing having oppositely facing surfaces, a first approachable by an integrated circuit to be tested and a second proximate the load board, a slot extend through said housing... The Zigma test contact products are alleged to be used in an apparatus containing a housing with the claimed features. ¶10 col. 4:39-44
a contact receivable in said slot having a first end engagable by the lead and a second end in engagement with the terminal... The Zigma test contact products are alleged to be contacts with first and second ends as claimed. ¶10 col. 4:45-47
said contact being rollable across the terminal between a first orientation... and a second orientation... The Zigma test contact products are alleged to be "rollable" as described in the claim. ¶10 col. 4:47-51
and means for biasing said contact to said first orientation, wherein, as said contact is rolled between said first and said second orientations thereof, sliding motion... is substantially eliminated. The Zigma test contact products are alleged to contain a biasing means that enables a rolling motion to eliminate sliding. ¶10 col. 4:52-57

Identified Points of Contention

  • Technical Question: The central factual dispute will concern the actual mechanism of the accused Zigma contact. The complaint provides no evidence that the Zigma product operates via a "rolling" motion as distinct from a pivoting, sliding, or wiping action common in other contact designs.
  • Scope Question (Means-Plus-Function): A critical legal question will involve the "means for biasing" limitation in Claim 1. Under 35 U.S.C. § 112(f), the scope of this term is limited to the corresponding structure disclosed in the patent—a dual-elastomer system—and its structural equivalents (’866 Patent, col. 4:32-35; Claim 3). The infringement analysis will depend on whether the Zigma product employs a structure that is identical or equivalent to the two-elastomer design described in the patent.

V. Key Claim Terms for Construction

The Term: "rollable across the terminal"

  • Context and Importance: This term is the core of the invention's asserted novelty, distinguishing it from prior art that allegedly caused wear through sliding. The outcome of the case may hinge on whether the accused product's movement is determined to be "rolling." Practitioners may focus on this term because its definition will determine whether a mere rotational or pivoting motion, without the specific "walking forward" action described in the patent (’866 Patent, col. 4:1-4), falls within the claim's scope.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself is general, not limiting "rollable" to a specific geometry or mechanism. One might argue any non-sliding rotational contact with the terminal constitutes "rolling."
    • Evidence for a Narrower Interpretation: The specification repeatedly links the rolling action to the specific "S" shaped contact (’866 Patent, col. 3:53-54) and the interaction with two elastomers. The detailed description states, "the point of contact... walks forward on the load board... and travels along the lower contact arc" (’866 Patent, col. 4:1-4), suggesting a very specific type of motion, not just any pivot.

The Term: "means for biasing said contact"

  • Context and Importance: This is a means-plus-function limitation. Its construction is governed by 35 U.S.C. § 112(f) and is not given its ordinary meaning. The infringement analysis for this element will be a two-step process of identifying the function (biasing the contact) and the corresponding structure in the specification, then comparing that structure to the accused device. The case will require determining what structure(s) in the Zigma product perform this function and whether they are equivalent to the disclosed structure.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation (Plaintiff's likely view): A plaintiff may argue that the "means" covers any structure that biases the contact, such as a single elastomer, a spring, or another resilient member, as long as it is structurally equivalent.
    • Evidence for a Narrower Interpretation (Defendant's likely view): The only structures explicitly identified in the patent as performing the biasing function are the "front elastomer 30" and "rear elastomer 32" (’866 Patent, col. 3:25-31; Claim 3). A defendant will likely argue the "means" is limited to a dual-elastomer system and its direct structural equivalents, and that systems using, for example, a single elastomer or a metallic spring are not equivalent.

VI. Other Allegations

Indirect Infringement

  • The complaint alleges indirect infringement by "importing, making, using, selling and/or offering to sell test connects that directly infringe" (Compl. ¶11). However, it offers no specific factual allegations to support the knowledge and intent elements required for induced infringement, such as referencing user manuals or marketing materials that instruct on an infringing use.

Willful Infringement

  • The complaint makes a conclusory allegation of willful and deliberate infringement (Compl. ¶12). It does not plead any specific facts suggesting that Defendants had pre-suit knowledge of the ’866 Patent or its alleged infringement.

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

This dispute appears to be a classic patent case centered on the technical operation of a mechanical device. The key questions for the court will likely be:

  1. A core issue will be one of claim construction and technical equivalence: Is the "means for biasing" limitation of Claim 1 confined to the dual-elastomer structure explicitly disclosed in the patent, or can it be construed to cover other biasing mechanisms? Subsequently, does the accused Zigma product contain a structure that is equivalent to the one disclosed in the patent?

  2. A key evidentiary question will be one of technical mechanism: Does the accused Zigma product, in operation, exhibit the specific "rolling" motion—a forward translation of the contact point without sliding—that is central to the ’866 Patent, or does it operate via a different, non-infringing mechanism such as pure pivoting or controlled sliding? The resolution of this factual question will be critical to the infringement analysis.