DCT
5:17-cv-07289
Anza Technology Inc v. Toshiba America Electronic Components Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Anza Technology Inc (California)
- Defendant: Toshiba Corp and TOSHIBA MEMORY AMERICA, INC. (California)
- Plaintiff’s Counsel: Polsinelli
- Case Identification: 5:17-cv-07289, N.D. Cal., 04/18/2018
- Venue Allegations: Venue is alleged to be proper in the Northern District of California because Defendants are California corporations and Defendant TAEC maintains its principal place of business and a substantial number of employees within the district.
- Core Dispute: Plaintiff alleges that Defendants’ NAND Flash Memory products, which are manufactured outside the U.S., are made using a patented process for bonding sensitive electronic components, giving rise to infringement upon importation and sale in the U.S.
- Technical Context: The technology concerns specialized bonding tool tips used in semiconductor manufacturing that are designed to be electrically "dissipative" to prevent damage from electrostatic discharge (ESD) without causing damaging current surges.
- Key Procedural History: The complaint alleges that Defendants have been aware of the patents-in-suit since at least October 15, 2007, as a result of a predecessor entity's involvement in a U.S. International Trade Commission (ITC) investigation (Inv. No. 337-TA-616) that involved both asserted patents. This prior litigation is the basis for the willfulness allegation.
Case Timeline
| Date | Event |
|---|---|
| 1999-02-25 | Earliest Priority Date ('479 & '864 Patents) |
| 2002-03-12 | U.S. Patent No. 6,354,479 Issues |
| 2003-11-25 | U.S. Patent No. 6,651,864 Issues |
| 2007-10-15 | ITC Investigation No. 337-TA-616 Commences |
| 2013-07-01 | Alleged Start of TAEC's Sale of Accused Products |
| 2017-10-01 | Flash Memory Business "Spun Off" from TAEC to TMA |
| 2018-04-18 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,354,479, "Dissipative Ceramic Bonding Tip," Issued March 12, 2002
The Invention Explained
- Problem Addressed: In microelectronics assembly, bonding tools are used to connect wires to integrated circuits. Standard bonding tips made of insulating materials (like alumina) can accumulate static electricity, which can suddenly discharge and damage the sensitive electronic device. Conversely, tips made of highly conductive materials can allow a damaging surge of current to flow to the device. (Compl. ¶¶ 12, 20; ’479 Patent, col. 1:45-54).
- The Patented Solution: The patent discloses a bonding tool tip made from a "dissipative" material. This material is engineered to be semi-conductive, allowing it to slowly bleed off any static charge to prevent a damaging buildup, while having high enough resistance to prevent a harmful surge of current from flowing through the tip to the device being bonded. The patent states that for best results, the tip should have a resistance between 10^5 and 10^12 ohms. (’479 Patent, Abstract & col. 2:3-14). The complaint provides an illustrative diagram of a standard packaged integrated circuit to show the context in which such bonding occurs. (Compl. ¶13, FIGURE 1).
- Technical Importance: This "Goldilocks" approach to conductivity allows for the safe manufacturing of increasingly smaller and more sensitive electronic components that are susceptible to ESD damage. (Compl. ¶20).
Key Claims at a Glance
- The complaint asserts dependent claim 39, which incorporates independent claim 37. (Compl. ¶¶ 43-44).
- Independent Claim 37:
- A method of using a bonding tip, comprising:
- bonding a device using a bonding tip made with a dissipative material
- that has a resistance low enough to prevent a discharge of charge to said device
- and high enough to avoid current flow large enough to damage said device.
- The complaint does not explicitly reserve the right to assert other claims but infringement is alleged for "(at least) claim 39." (Compl. ¶43).
U.S. Patent No. 6,651,864, "Dissipative Ceramic Bonding Tool Tip," Issued November 25, 2003
The Invention Explained
- Problem Addressed: As a continuation-in-part of the '479 Patent, the '864 patent addresses the same fundamental problem of preventing ESD damage during the bonding of delicate electronic components. ('864 Patent, col. 2:14-23).
- The Patented Solution: The '864 patent claims a method of using an electrically dissipative bonding tool tip defined by a specific electrical resistance range of 10^5 to 10^12 ohms. This precise range is intended to allow for an "essentially smooth current" to dissipate from the device, which is "low enough so as not to damage said device" yet "high enough to avoid a build up of charge." ('864 Patent, Abstract & Claim 28).
- Technical Importance: The invention provides a quantifiable standard for the electrical properties of bonding tools required to safely handle and assemble ESD-sensitive devices. (Compl. ¶¶ 31, 60).
Key Claims at a Glance
- The complaint asserts independent claim 28. (Compl. ¶56).
- Independent Claim 28:
- A method of using an electrically dissipative bonding tool tip, having a resistance in the range of 10^5 to 10^12 ohms, comprising:
- providing the electrically dissipative bonding tool tip;
- bonding a material to a device;
- allowing an essentially smooth current to dissipate to the device, the current being low enough so as not to damage said device being bonded and high enough to avoid a build up of charge that could discharge to the device being bonded and damage the device being bonded.
- The complaint alleges infringement of "(at least) claim 28." (Compl. ¶56).
III. The Accused Instrumentality
- Product Identification: The accused products are NAND Flash Memory integrated circuits sold by Defendants, with manufacturer part number TC58BYG2S0HBAI6 identified as a specific, representative example. (Compl. ¶¶ 33, 46).
- Functionality and Market Context: The accused products are non-volatile flash memory components used for data storage. (Compl. ¶¶ 10, 33). The complaint alleges they are manufactured outside the United States using processes that necessarily involve bonding electronic components to a substrate, such as wire bonding or flip-chip bonding. (Compl. ¶¶ 19, 49-50, 57). The complaint includes a photograph of a representative accused product, the Toshiba TC58NVG0S3HTA00 flash memory chip. (Compl. ¶14, FIGURE 2). It also provides a product overview table from a distributor for another representative part, TC58BYG2S0HBAI6, noting its technology as "FLASH - NAND (SLC)." (Compl. ¶33, FIGURE 4). The core infringement allegation is that the manufacturing process for these imported products uses bonding tools that meet the patents' claims. (Compl. ¶¶ 36, 45, 52).
IV. Analysis of Infringement Allegations
The complaint asserts infringement under 35 U.S.C. § 271(g), which holds liable a party who imports, sells, or uses within the U.S. a product which is made by a process patented in the U.S. (Compl. ¶45). The central theory is that Defendants' products are manufactured in compliance with JEDEC and ANSI industry standards for ESD protection, and that these standards allegedly require the use of bonding tools with the dissipative properties claimed in the patents. (Compl. ¶¶ 23-28, 52, 60).
'479 Patent Infringement Allegations
| Claim Element (from Independent Claim 37) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of using a bonding tip, comprising bonding a device using a bonding tip | Defendants' accused products are manufactured and assembled outside the U.S. using processes that include bonding electronic components to a substrate. | ¶49 | col. 7:56-62 |
| made with a dissipative material | The manufacturing process is allegedly undertaken in accordance with JEDEC and ANSI standards that require the use of "dissipative materials" and tools to minimize electrostatic discharge. | ¶¶ 31, 52 | col. 2:3-8 |
| that has a resistance low enough to prevent a discharge of charge to said device | The JEDEC/ANSI standards allegedly require a resistance low enough to prevent a discharge to a device being bonded. The complaint alleges this range is between 10^5 and 10^12 ohms. | ¶¶ 52, 36 | col. 2:3-8 |
| and high enough to avoid current flow large enough to damage said device. | The JEDEC/ANSI standards allegedly require a resistance high enough to avoid current flow large enough to damage a device being bonded. The complaint alleges this range is between 10^5 and 10^12 ohms. | ¶¶ 52, 36 | col. 2:3-8 |
'864 Patent Infringement Allegations
| Claim Element (from Independent Claim 28) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of using an electrically dissipative bonding tool tip, having a resistance in the range of 10⁵ to 10¹² ohms | Defendants' overseas manufacturing processes allegedly comply with JEDEC and ANSI standards that require tools made of dissipative materials with resistance values within the claimed 10⁵ to 10¹² ohm range. | ¶¶ 60, 26, 31 | col. 18:23-26 |
| providing the electrically dissipative bonding tool tip; bonding a material to a device | The manufacturing of the accused flash memory products involves bonding electronic components to a substrate using tools such as wire or flip chip bonders. | ¶¶ 49, 57 | col. 19:25-32 |
| allowing an essentially smooth current to dissipate to the device... | The complaint alleges that compliance with JEDEC/ANSI standards for ESD protection is intended to avoid inadvertent discharges and implement an "essentially smooth current flow." | ¶60 | col. 18:27-35 |
- Identified Points of Contention:
- Evidentiary Questions: A primary issue will be whether Plaintiff can produce evidence that the specific manufacturing processes used overseas for the accused products actually use bonding tools meeting the claims' resistance limitations. The complaint relies heavily on the inference that compliance with public JEDEC/ANSI standards equates to practicing the patented methods. The complaint includes a description of JEDEC standard trays used for packaging, which specify ESD protection requirements, as evidence of this compliance. (Compl. ¶58, FIGURE 6).
- Scope Questions: The analysis may turn on whether the "resistance" defined in the JEDEC/ANSI standards (e.g., "surface resistance") is equivalent to the "resistance" of the "bonding tool tip" as recited in the claims.
V. Key Claim Terms for Construction
The Term: "dissipative material" ('479 Patent, Claim 37)
Context and Importance: The definition of this term is fundamental to infringement. The dispute will likely center on whether this term is defined purely by its function (i.e., its electrical resistance properties) or is limited to specific material compositions.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader (Functional) Interpretation: The claim itself defines the material by its function: having a "resistance low enough to prevent a discharge ... and high enough to avoid current flow large enough to damage." (’479 Patent, col. 10:11-14). The specification repeatedly emphasizes this functional balance. (’479 Patent, col. 2:3-14).
- Evidence for a Narrower (Structural) Interpretation: The specification provides specific examples of dissipative materials, such as a ceramic comprising alumina and zirconia. (’479 Patent, col. 5:56-65). A defendant may argue the term should be limited to these or structurally similar materials.
The Term: "a resistance in the range of 10⁵ to 10¹² ohms" ('864 Patent, Claim 28)
Context and Importance: This term provides a specific numerical range, but its application is key. Practitioners may focus on this term because the method of measurement could be dispositive. The complaint's infringement theory hinges on mapping resistance values from industry standards to this claimed range. (Compl. ¶¶ 26, 31, 60).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not specify a particular method for measuring the resistance, which may support using any standard industry measurement that reflects the tool's overall dissipative property.
- Evidence for a Narrower Interpretation: The '479 patent specification, from which the '864 patent is a continuation, refers to "a resistance in the tip assembly itself." (’479 Patent, col. 2:9-10). A defendant could argue this requires a specific measurement of the entire tool assembly, which may differ from the "surface resistance" values cited in the JEDEC standards referenced by the complaint. (Compl. ¶26).
VI. Other Allegations
- Indirect Infringement: The complaint alleges infringement under 35 U.S.C. § 271(g), which makes the importation, sale, or use of a product made by a patented process an act of direct infringement. (Compl. ¶45). No separate counts for inducement or contributory infringement are pled.
- Willful Infringement: The complaint alleges that Defendants had knowledge of the patents-in-suit since at least October 15, 2007, due to their predecessor's involvement in an ITC investigation concerning the same patents. (Compl. ¶41). It further alleges that despite this knowledge, Defendants "elected to engage in activity that constitutes an infringement," rendering the infringement willful. (Compl. ¶¶ 54, 64).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central evidentiary question will be one of process verification: Can the Plaintiff prove, likely through discovery, that the defendants' specific overseas manufacturing lines actually use bonding tools with the electrical resistance properties required by the claims? The case's viability depends on moving from the allegation of "standard-compliance" to direct evidence of the infringing process.
- A key legal question will be one of claim scope: How will the court construe the term "dissipative material"? Will it be defined broadly by its electrical function, as argued by the Plaintiff, or more narrowly by the specific ceramic embodiments disclosed in the patent, which could favor the Defendant?
- A critical issue for damages will be willfulness: Given the complaint's specific allegation of knowledge dating back to a 2007 ITC investigation, the question of whether any infringement was willful will be a major focus. The outcome will depend on what Defendants knew about the patents and when they knew it, relative to the design and implementation of their manufacturing processes.