DCT

5:10-cv-00424

UPEK, Inc. v. Authen Tec, Inc.

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Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:10-cv-00424, N.D. Cal., 02/23/2010
  • Venue Allegations: Venue is alleged to be proper in the Northern District of California because the Plaintiff's principal place of business is in the district, and the Defendant is alleged to have minimum contacts and to have committed acts of infringement within the state.
  • Core Dispute: Plaintiff alleges that Defendant’s fingerprint sensor products infringe a patent related to methods for packaging silicon sensors, and further seeks declaratory judgments that it does not infringe, and that certain patents owned by Defendant are invalid and/or unenforceable.
  • Technical Context: The dispute centers on the packaging of silicon sensors used for biometric fingerprint identification, a critical technology for security in consumer and commercial electronic devices.
  • Key Procedural History: The complaint alleges a complex history concerning U.S. Patent No. 6,049,620, one of the patents for which Plaintiff seeks a declaratory judgment. It is alleged that this patent was deliberately allowed to lapse by its prior owner for failure to pay maintenance fees, and was subsequently revived after being acquired by the Defendant through a petition to the U.S. Patent and Trademark Office that allegedly contained material false statements regarding the unintentional nature of the lapse. This forms the basis for Plaintiff's claim of inequitable conduct.

Case Timeline

Date Event
1997-05-16 U.S. Patent Nos. 5,940,526 & 5,953,441 Priority Date
1997-11-14 U.S. Patent No. 6,028,773 Priority Date
2000-02-22 U.S. Patent No. 6,028,773 Issues
2000-04-11 U.S. Patent No. 6,049,620 Issues
2008-02-01 Prior patent owner allegedly begins offering patent portfolio for sale
2008-04-11 Maintenance fee due for U.S. Patent No. 6,049,620
2008-10-04 Plaintiff (UPEK) executes agreement to acquire patent portfolio from prior owner
2009-07-07 Prior owner sells patent portfolio, including lapsed '620 patent, to Defendant (AuthenTec)
2009-07-15 Defendant files Petition To Reinstate the lapsed '620 patent
2009-08-21 USPTO grants the Petition to Revive the '620 patent
2010-01-23 Defendant accuses Plaintiff of infringing multiple patents
2010-02-23 Amended Complaint Filed

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

U.S. Patent No. 6,028,773 - "Packaging For Silicon Sensors"

  • Patent Identification: U.S. Patent No. 6,028,773, "Packaging For Silicon Sensors," issued February 22, 2000 (’773 Patent).

The Invention Explained

  • Problem Addressed: The patent’s background section describes the challenge of packaging silicon sensors, such as those for fingerprints, which must be exposed to the environment to function. It notes that traditional packaging methods are often too bulky, unreliable, or unsuitable for direct environmental exposure, and that prior optical sensors could be compromised by surface conditions or even fooled by photographs (’773 Patent, col. 1:13-53).
  • The Patented Solution: The invention discloses a "chip-on-board" packaging method where an integrated circuit (IC) die is mounted directly onto a printed circuit board. A key aspect is the application of an adhesive surface coating in a specific manner to seal the die's edges to the board, protecting the internal electronics while leaving the active sensor area exposed. To maximize this exposed area, the design consolidates the wire bond pads onto a single side of the die (’773 Patent, Abstract; col. 2:51-68). The specification details a two-bead process for applying the adhesive to protect the delicate wire bonds while ensuring a durable seal around the die's perimeter (’773 Patent, Fig. 6C).
  • Technical Importance: This packaging approach enables the creation of compact, robust, and cost-effective sensor modules suitable for integration into a wide range of electronic devices (’773 Patent, col. 1:13-25).

Key Claims at a Glance

  • The complaint does not identify specific claims, alleging infringement of "one or more claims of the ’773 patent" (Compl. ¶8). Independent claim 1 is representative of the invention's core apparatus concept.
  • The essential elements of independent claim 1 are:
    • A substrate;
    • An integrated circuit die positioned on the substrate, having a top surface and sides; and
    • An adhesive surface coating applied to the substrate and the sides of the die to seal it, such that a substantial portion of the die's top surface remains exposed.
  • The complaint does not explicitly reserve the right to assert dependent claims, but the broad allegation suggests this possibility.

III. The Accused Instrumentality

Product Identification

  • The complaint identifies the accused instrumentalities as "biometric products, systems and devices, including fingerprint sensors," and specifically names the AES1710, AES2550, and AES2810 products (Compl. ¶¶ 8, 13).

Functionality and Market Context

  • The complaint alleges that Defendant manufactures, uses, and sells these fingerprint sensor products in the United States (Compl. ¶4).
  • The complaint does not provide sufficient detail for analysis of the accused products' specific construction, packaging methods, or technical functionality.

IV. Analysis of Infringement Allegations

The complaint alleges infringement of the ’773 Patent in a conclusory manner, stating that the Accused AuthenTec Products "are covered by one or more claims of the ’773 patent" (Compl. ¶8). It does not provide a claim chart exhibit or a detailed narrative theory mapping specific claim elements to features of the accused products. As such, a detailed claim chart summary cannot be constructed from the complaint's allegations. No probative visual evidence provided in complaint.

  • Identified Points of Contention:
    • Factual Questions: Given the lack of detail, the initial phase of litigation will likely focus on establishing the basic facts of infringement. A central question will be for the Plaintiff to articulate which claims are asserted and how, precisely, the structure and manufacturing process of the accused AES1710, AES2550, and AES2810 products meet each element of those claims.
    • Pleading Sufficiency Questions: A threshold legal question may be whether the complaint's conclusory infringement allegations satisfy the plausibility standard for pleadings set forth by the Supreme Court in Bell Atlantic Corp. v. Twombly and Ashcroft v. Iqbal.

V. Key Claim Terms for Construction

  • The Term: "adhesive surface coating"

    • Context and Importance: The composition, properties, and application method of this material are central to the claimed invention. The construction of this term will be critical in determining whether the materials used by the Defendant to package its sensors fall within the scope of the claims.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent specification refers to the material generally as a "sealant" and provides "epoxy" as just one example, which may support a construction not limited to a specific chemical compound or class (’773 Patent, col. 5:60-61).
      • Evidence for a Narrower Interpretation: The detailed description extensively illustrates a specific two-bead epoxy application process (a "dam and fill" method). A defendant may argue that the term should be construed as limited to materials suitable for this specific process or to a multi-part application, as this is the primary solution taught for achieving the claimed seal (’773 Patent, col. 7:1-12; col. 8:1-12).

  • The Term: "sealing"

    • Context and Importance: This functional term describes the purpose of the adhesive coating. The dispute will likely center on the degree and nature of the "seal" required by the claims (e.g., environmental protection vs. a hermetic seal) and the structural means for achieving it.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent's background describes the problem as protecting the IC from environmental damage, suggesting "sealing" could encompass any adhesive application that achieves this protective function (’773 Patent, col. 1:33-38).
      • Evidence for a Narrower Interpretation: The specification's focus on the two-bead process for creating a distinct barrier around the die's circumference could support an argument that "sealing" requires the creation of this specific dam-like structure, rather than just general adhesion and encapsulation (’773 Patent, col. 7:46-54).

VI. Other Allegations

  • Indirect Infringement: The complaint makes a general allegation of infringement under 35 U.S.C. § 271 but does not plead any specific facts to support claims of induced or contributory infringement of the ’773 Patent (Compl. ¶8).
  • Willful Infringement: The complaint alleges that Defendant's infringement of the ’773 Patent "has been willful and deliberate," but provides no factual basis to support this assertion, such as allegations of pre-suit knowledge or copying (Compl. ¶10).
  • Declaratory Judgment and Inequitable Conduct Allegations: A significant portion of the complaint is dedicated to seeking declaratory judgments of non-infringement and invalidity of five patents allegedly owned by Defendant (Compl. Counts II-XI). Most notably, the complaint seeks to have U.S. Patent No. 6,049,620 (’620 Patent) declared unenforceable due to inequitable conduct (Compl. Count XII). The complaint provides a detailed factual basis for this allegation, asserting that:
    1. The ’620 Patent's prior owner, Veridicom International, "deliberately chose not to pay the second maintenance fee" because it lacked cash and was instructed by its investors not to pay (Compl. ¶61).
    2. Defendant and its counsel allegedly knew of this deliberate, intentional lapse during their due diligence prior to purchasing the patent portfolio that included the lapsed ’620 Patent (Compl. ¶¶ 67, 82, 89).
    3. Despite this alleged knowledge, Defendant's counsel filed a Petition to Revive the patent with the USPTO containing the statement that "the delay in paying the maintenance fee...was unintentional" (Compl. ¶¶ 79, 81).
    4. Plaintiff alleges this was a knowingly false statement of a material fact, submitted with an intent to deceive the USPTO, which subsequently revived the patent in reliance on the statement (Compl. ¶¶ 89-94).

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

  • A core issue for the infringement claim will be one of factual development and claim scope: First, what is the actual physical construction and manufacturing process of AuthenTec's accused sensor packages? Second, can the term "adhesive surface coating," as described in the context of the ’773 Patent’s specific two-bead epoxy embodiments, be construed broadly enough to read on the materials and methods used by AuthenTec?
  • A pivotal issue for the defensive counts will be one of intent and materiality: Did AuthenTec and its counsel possess the requisite knowledge and specific intent to deceive the USPTO when they characterized the failure to pay the ’620 Patent’s maintenance fee as "unintentional"? The resolution will likely depend on evidence developed in discovery regarding what was known about the prior owner's financial state and decision-making process at the time the revival petition was filed.