DCT

5:22-cv-04947

Kawasaki Jukogyo Kabushiki Kaisha v. Rorze Corp

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Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:22-cv-04947, N.D. Cal., 11/22/2022
  • Venue Allegations: Venue is alleged to be proper in the Northern District of California because Defendant Rorze Automation, Inc. maintains a regular and established place of business in the district, and both defendants have allegedly committed acts of patent infringement there. Venue for Defendant Rorze Corporation, a foreign entity, is alleged to be proper in any district.
  • Core Dispute: Plaintiff alleges that Defendants’ wafer handling systems, used in semiconductor manufacturing, infringe five U.S. Reissue Patents related to the design and operation of wafer transfer robots within a compact interface space.
  • Technical Context: The technology concerns robotic systems within an Equipment Front-End Module (EFEM), a critical component in semiconductor fabrication for transferring silicon wafers between transport pods and processing equipment while maintaining a contamination-free environment.
  • Key Procedural History: The complaint alleges a history of pre-suit communications regarding the asserted patents and accused products. Plaintiff alleges that Defendants were notified of U.S. Reissue Patent No. RE45,772 as early as June 2017, and of the other patents-in-suit or their predecessor applications by February 2019. Plaintiff further alleges it provided claim charts to Defendant Rorze Corporation in February 2022, which may be relevant to questions of knowledge and willfulness.

Case Timeline

Date Event
2006-07-20 Patent Priority Date for all Patents-in-Suit
2015-10-20 U.S. Reissue Patent No. RE45,772 Issued
2016-09-08 YouTube video of an accused product functionality published
2017-06-14 Plaintiff alleges Defendants had knowledge of RE45,772
2017-07-04 U.S. Reissue Patent No. RE46,465 Issued
2018-11-27 U.S. Reissue Patent No. RE47,145 Issued
2019-02-18 Plaintiff alleges Defendants had knowledge of RE46,465, RE47,145, and applications leading to RE47,909 and RE48,031
2020-03-17 U.S. Reissue Patent No. RE47,909 Issued
2020-06-02 U.S. Reissue Patent No. RE48,031 Issued
2021-12-08 Plaintiff alleges Defendants received correspondence identifying RE47,909 and RE48,031
2022-02-01 Plaintiff allegedly sent claim charts for RE45,772 and RE47,909 to Defendant Rorze Corporation
2022-11-22 Complaint Filed

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

U.S. Reissue Patent No. RE47,909 - “Wafer Transfer Apparatus and Substrate Transfer Apparatus”

The Invention Explained

  • Problem Addressed: The patent’s background describes challenges in semiconductor manufacturing with transferring wafers between sealed containers (FOUPs) and processing equipment. Prior art robotic transfer systems either required a large footprint or used linear tracks, which could generate dust particles and contaminate the sensitive wafers, thereby reducing manufacturing yield (RE46,465 Patent, col. 2:36-39; col. 3:9-14).
  • The Patented Solution: The invention discloses a wafer transfer apparatus featuring a stationary, multi-link robotic arm that operates within a compact, defined "interface space." The solution focuses on a specific geometric relationship between the robot arm's minimum rotation radius and the dimensions of the interface space, allowing the robot to access multiple FOUPs and processing ports without a linear track and without colliding with the apparatus walls or other components (RE46,465 Patent, col. 4:1-17, FIG. 1). This design aims to reduce the equipment's physical footprint and minimize particle generation.
  • Technical Importance: This approach allows for a smaller, cleaner, and more efficient Equipment Front-End Module (EFEM), a key consideration in the design and cost of semiconductor fabrication facilities (RE46,465 Patent, col. 3:30-40).

Key Claims at a Glance

  • The complaint asserts independent claim 15 of the RE47,909 Patent (Compl. ¶121).
  • Essential elements of Claim 15 include:
    • An interface space forming portion with a front wall and a rear wall.
    • A FOUP opener configured to open and close a substrate container.
    • A wafer carrying robot located in the interface space.
    • The robot includes a fixed base with a pivot axis and a multi-link robot arm.
    • A drive unit to individually displace the link members of the robot arm.
    • A specific geometric constraint where the robot arm’s minimum rotation radius (R) is greater than half the depth of the interface space (B) but less than or equal to an allowable length defined by the interface depth minus certain keep-out zones (B-L0-E).

U.S. Reissue Patent No. RE46,465 - “Wafer Transfer Apparatus and Substrate Transfer Apparatus”

The Invention Explained

  • Problem Addressed: As described for the ’909 Patent, the technology addresses the need for compact, clean, and efficient wafer transfer robots that avoid the particle generation and large footprints of prior art track-based systems (RE46,465 Patent, col. 2:36-39; col. 3:9-14).
  • The Patented Solution: This patent, part of the same family, claims the wafer-carrying robot itself, configured for use in such a transfer apparatus. The claims focus on the robot's structural elements (base, pivot axis, multi-link arm) and its operational geometry, particularly the relationship between its minimum rotation radius (R) and the dimensions (B, L0, E) of the wafer transfer apparatus in which it is designed to operate (RE46,465 Patent, Abstract; col. 4:1-17).
  • Technical Importance: The claimed robot design enables the construction of smaller and more reliable EFEMs by eliminating the need for a linear track, which was a source of both mechanical complexity and potential contamination (RE46,465 Patent, col. 3:30-40).

Key Claims at a Glance

  • The complaint asserts independent claim 15 of the RE46,465 Patent (Compl. ¶126).
  • Essential elements of Claim 15 include:
    • A wafer carrying robot configured for use in a wafer transfer apparatus that has a front wall, rear wall, and FOUP opener.
    • A base on which a pivot axis is set.
    • A robot arm with a plurality of link members connected in succession.
    • A drive unit configured to drive the robot arm.
    • A geometric constraint wherein the robot's minimum rotation radius (R) is greater than half the length between the front and rear walls (B), i.e., B/2<R.
    • A further geometric constraint that R is less than or equal to an allowable length derived by subtracting keep-out zones (L0 and E) from the length B, i.e., R≤B-L0-E.

U.S. Reissue Patent No. RE48,031 - “Wafer Transfer Apparatus and Substrate Transfer Apparatus”

  • Technology Synopsis: This patent addresses the same technical problem of providing a compact, trackless wafer transfer system. The claims of this patent add further specificity to the structure of the apparatus, such as a "front face plate constituting part of the front wall," and define the geometric constraints of the robot arm with slightly different terminology (Compl. ¶¶52, 64, 66).
  • Asserted Claims: Independent claim 29 (Compl. ¶131).
  • Accused Features: The complaint alleges infringement by the overall N2-BWS Series apparatus, including its interface space, FOUP openers, and the specific geometry of its robotic arm's movement relative to the apparatus walls and keep-out zones (Compl. ¶¶53-69).

U.S. Reissue Patent No. RE45,772 - “Wafer Transfer Apparatus and Substrate Transfer Apparatus”

  • Technology Synopsis: This patent claims a wafer transfer apparatus with a trackless robotic arm, focusing on the geometric constraints that prevent the arm from interfering with the apparatus walls while operating in a compact space. It defines a "robot invasion restricted region" by the movement of the FOUP opener doors (Compl. ¶¶70, 86).
  • Asserted Claims: Independent claim 1 (Compl. ¶136).
  • Accused Features: The allegations target the complete N2-BWS Series apparatus, including its physical structure (interface space, walls, openings), its FOUP openers, and the operational envelope of its robotic arm, which is alleged to satisfy the patent's specific geometric limitations (Compl. ¶¶71-87).

U.S. Reissue Patent No. RE47,145 - “Wafer Transfer Apparatus and Substrate Transfer Apparatus”

  • Technology Synopsis: This patent also claims a wafer transfer apparatus with a stationary robotic arm. The asserted claim includes limitations defining the robot's minimum rotation radius (R) relative to the interface space depth (B) and a "robot invasion restricted region" (E) associated with the FOUP opener (Compl. ¶¶89, 101, 103).
  • Asserted Claims: Independent claim 15 (Compl. ¶141).
  • Accused Features: The complaint accuses the N2-BWS Series' overall design and operation, alleging that its interface space, FOUP openers, and robotic arm meet the structural and geometric limitations recited in the claim (Compl. ¶¶90-108).

III. The Accused Instrumentality

Product Identification

The accused products are wafer handling systems, identified as "stockers, such as N2-BWS Series," with the complaint focusing on the N2-BWS1600 model as an exemplary infringing product (Compl. ¶23).

Functionality and Market Context

  • The N2-BWS1600 is a system used in semiconductor manufacturing to transfer wafers between Front Opening Unified Pods (FOUPs) and storage shelves ("stockers") (Compl. ¶23). The complaint alleges that the system uses a single, stationary robotic arm to service four FOUP openers, moving wafers between the FOUPs at the front of the apparatus and the stocker shelves at the rear (Compl. ¶¶27, 29). This diagram, annotated by the plaintiff, shows the alleged configuration with four FOUP openers (green) serviced by a central wafer carrying robot (Compl. ¶27, p. 5).
  • The complaint alleges that the accused products achieve benefits central to the patented inventions, such as accommodating four FOUPs with a single fixed robot (eliminating a track system) and enabling a smaller overall equipment footprint (Compl. ¶116). The complaint references a publicly available YouTube video from 2016 that allegedly shows the infringing operation of the robot arm (Compl. ¶35).

IV. Analysis of Infringement Allegations

RE47,909 Patent Infringement Allegations

Claim Element (from Independent Claim 15) Alleged Infringing Functionality Complaint Citation Patent Citation
A wafer transfer apparatus for transferring a wafer, comprising: an interface space forming portion defining an interface space, the interface space forming portion having a front wall and a rear wall... The N2-BWS1600 product is alleged to be a wafer transfer apparatus that includes an interface space with a front wall and a rear wall. ¶24, ¶25 col. 12:7-14
a FOUP opener configured to open and close the substrate container located adjacent to the interface space... The N2-BWS1600 product is alleged to have four FOUP openers that open and close substrate containers (FOUPs). ¶26, ¶27 col. 13:41-44
a wafer carrying robot located in the interface space and configured to carry the wafer between the front opening and the rear opening. The N2-BWS1600 product allegedly includes a wafer carrying robot located in the interface space that moves wafers. ¶28, ¶29 col. 14:56-61
wherein the wafer carrying robot includes: a base which is fixed to the interface space forming portion and at which a predetermined pivot axis is set. The robot in the N2-BWS1600 product allegedly has a base fixed to the interface space with a pivot axis. ¶30, ¶31 col. 16:43-46
a robot arm having a proximal end and a distal end, the robot arm including a plurality of link members connected with one another... The N2-BWS1600 product’s robot allegedly has a multi-link arm that is angularly displaced about the pivot axis. ¶32, ¶33 col. 17:4-10
wherein... a minimum rotation radius R... is set to exceed 1/2 of a length B... and is further set to be equal to or less than a subtracted value (B-L0). The complaint alleges, through an annotated diagram, that the minimum rotation radius R of the accused robot satisfies the condition B/2<R≤B-L0. ¶36, ¶37 col. 18:35-42
the minimum rotation radius R is set to be equal to or less than an allowable length (B-L0-E) to be obtained by subtracting... a length E of a robot invasion restricted region... The complaint alleges, through an annotated diagram, that the minimum rotation radius R of the accused robot also satisfies the condition R≤B-L0-E. ¶38, ¶39 col. 30:46-56

RE46,465 Patent Infringement Allegations

Claim Element (from Independent Claim 15) Alleged Infringing Functionality Complaint Citation Patent Citation
A wafer carrying robot configured to be used for a wafer transfer apparatus, the wafer transfer apparatus having a front wall, a rear wall and a FOUP opener... The complaint alleges the robot in the N2-BWS1600 is used in an apparatus with a front wall, rear wall, and FOUP openers. This annotated diagram illustrates the alleged components (Compl. ¶41, p. 10). ¶40, ¶41 col. 14:56-61
a base on which a predetermined pivot axis is set. The robot allegedly includes a base with a set pivot axis. ¶42, ¶43 col. 16:43-46
a robot arm, the robot arm including a plurality of link members connected with one another in succession... configured to be angularly displaced about the pivot axis. The robot allegedly has a multi-link arm that rotates about the pivot axis to hold and transport a wafer. ¶44, ¶45 col. 17:4-10
a drive unit configured to drive the robot arm. The N2-BWS1600 allegedly includes a drive unit for moving the link members of the robot arm. ¶46, ¶47 col. 17:55-64
wherein... a minimum rotation radius R... is set to exceed 1/2 of a length B... The complaint alleges, with an annotated diagram, that the accused product's robot satisfies the condition B/2<R. ¶48, ¶49 col. 18:35-42
the minimum rotation radius R is set to be equal to or less than an allowable length (B-L0-E) to be obtained by subtracting... distance L0... and a length E of a robot invasion restricted region... The complaint alleges, with another annotated diagram, that the accused robot's minimum rotation radius R satisfies the condition R≤B-L0-E. ¶50, ¶51 col. 30:46-56

Identified Points of Contention

  • Scope Questions: The core of the patents relates to a "wafer transfer apparatus" that moves wafers to/from a "wafer processing apparatus." The accused product is identified as a "stocker" (Compl. ¶23). A potential point of contention may be whether a wafer stocker, which is primarily a storage unit, constitutes a "wafer processing apparatus" as contemplated by the patent specification.
  • Technical and Evidentiary Questions: The infringement allegations for all five patents rely heavily on specific geometric relationships (e.g., B/2<R≤B-L0-E). The complaint presents annotated diagrams to support these allegations (Compl. ¶¶37, 39, 49, 51). The key technical dispute will likely center on the proper measurement and definition of the terms R (minimum rotation radius), B (interface space depth), L0 (rear keep-out zone), and E (front robot invasion restricted region) as applied to the accused N2-BWS1600 product. This suggests that the case will turn on competing expert analyses of the accused product's design and operational schematics.
  • Claim Interpretation Questions: The complaint notes that Defendants previously argued for non-infringement on the basis that their "FOUP side door and opener side door do not move in the forward and backward directions" (Compl. ¶113). Plaintiff counters that the claims include no such limitation. This highlights a potential claim construction dispute over whether such motion is implicitly required by terms like "robot invasion restricted region," which is defined by the movement of the FOUP opener (RE45,772 Patent, col. 30:57-62).

V. Key Claim Terms for Construction

"minimum rotation radius R"

Context and Importance

This term is critical as it appears in the central geometric limitations of asserted claims across multiple patents (e.g., RE46,465 Patent, cl. 15). The infringement analysis for the core technology depends on the precise value of R for the accused device and how it compares to the dimensions of the interface space. Practitioners may focus on this term because its measurement could be subject to different interpretations depending on the robot arm's specific configuration and payload.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: The specification provides a definition: "the distance, from the pivot axis A0 to the arm portion or wafer portion, which is farthest in the radial direction relative to the pivot axis A0" (RE46,465 Patent, col. 18:25-30). This language could support a straightforward geometric calculation based on the physical dimensions of the arm and wafer in any potential configuration.
  • Evidence for a Narrower Interpretation: The definition is provided in the context of a "minimum transformed state" (RE46,465 Patent, col. 18:15-18). A defendant may argue that this state implies a specific, fully retracted configuration that is not used during the accused operation, or that the term "arm portion" should be limited to the specific link members shown in the patent's embodiments.

"robot invasion restricted region"

Context and Importance

This term defines a keep-out zone near the front of the apparatus and is a key variable (E) in the R≤B-L0-E limitation present in several asserted claims. Its size and definition directly impact the infringement analysis. Practitioners may focus on this term because the complaint alleges a prior dispute over how movement defines this region (Compl. ¶¶113-114).

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: The specification states the region "is defined by a distance which the FOUP opener moves in the forward and backward directions of the interface space, wherein the FOUP opener opens and closes an opener-side door and a FOUP-side door" (RE45,772 Patent, col. 30:57-62). Plaintiff may argue this language does not limit the direction of movement, only that the movement itself defines the region's boundary. The complaint includes pictures captured from a video allegedly showing the forward and backward movement of the FOUP opener on the accused device (Compl. ¶87, pp. 24-26).
  • Evidence for a Narrower Interpretation: A defendant may argue that the phrase "forward and backward directions of the interface space" modifies the verb "moves," thereby requiring the FOUP opener itself to translate along that axis to define the region. The specification's primary embodiment in FIG. 1 shows doors that appear to move into the space, which could be argued to support a narrower reading tied to that specific type of motion.

VI. Other Allegations

Indirect Infringement

The complaint alleges both induced and contributory infringement for all five patents (Compl. ¶¶121, 126, 131, 136, 141). The factual basis alleged for inducement includes Defendants providing service, instructions, training, and software upgrades to customers, thereby encouraging their use of the accused products in an infringing manner (Compl. ¶117). Contributory infringement is based on the allegation that the "Accused Robot" is a material part of the invention, not a staple article of commerce suitable for substantial non-infringing use (Compl. ¶118).

Willful Infringement

Willfulness is alleged for all five patents. The complaint asserts that Defendants had knowledge of the patents-in-suit and their infringing activities based on a long history of communications, beginning as early as June 2017 for the ’772 patent and February 2019 for the others (Compl. ¶¶112-114). The complaint further alleges that Plaintiff provided detailed claim charts in February 2022, but Defendants continued their alleged infringement, which Plaintiff characterizes as "egregious" conduct (Compl. ¶115).

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

  • A core issue will be one of claim construction and technical application: can the geometric constraints recited in the claims, particularly the relationships involving "minimum rotation radius R" and "robot invasion restricted region," be shown to read on the physical design and operation of the accused N2-BWS Series products? The outcome will likely depend on the court's interpretation of these key terms and the competing expert testimony regarding their measurement on the accused device.
  • A key legal question will be one of intent: does the extensive pre-suit correspondence alleged in the complaint, including the alleged provision of claim charts, establish that Defendants had the requisite knowledge of infringement to support the claims for willful and indirect infringement? The factual record of these communications will be central to determining whether the alleged conduct rises to the level of egregiousness required for enhanced damages.