Feinmetall GmbH v. FormFactor Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Feinmetall GmbH (Germany) and Technoprobe S.p.A. (Italy)
  • Defendant: FormFactor, Inc. (Delaware)
  • Plaintiff’s Counsel: Morris, Nichols, Arsht & Tunnell LLP
• Case Identification: 1:18-cv-01057, D. Del., 07/17/2018
• Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant FormFactor is a Delaware corporation and therefore resides in the district.
• Core Dispute: Plaintiffs allege that Defendant’s probe card products, used for semiconductor testing, infringe a patent related to the design of elongate electrical contact elements.
• Technical Context: The technology concerns high-performance contact probes, which are critical components in probe cards used to test the electrical functionality of integrated circuits on a silicon wafer before they are cut and packaged.
• Key Procedural History: The complaint alleges that Plaintiffs first notified Defendant of its potential infringement in July 2017 and provided a detailed claim chart, but that Defendant has continued its allegedly infringing activities. These allegations form the basis for a claim of willful infringement.

Case Timeline

Date	Event
2008-05-09	'460 Patent Priority Date
2010-12-14	'460 Patent Issue Date
2017-07-XX	Plaintiffs allegedly notify Defendant of infringement
2018-06-04	Defendant presents on Accused Products at workshop
2018-07-17	Complaint Filing Date

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

U.S. Patent No. 7,850,460 - "Electrical Contact Element for Contacting an Electrical Component Under Test and Contacting Apparatus," issued December 14, 2010

The Invention Explained

• Problem Addressed: The patent describes challenges in testing increasingly compact electrical components where contact points are very close together. Conventional contact probes with circular cross-sections could lead to unintentional touching (short circuits), and reducing their size to fit could decrease their current-carrying capacity, leading to overheating and burnout (’460 Patent, col. 1:36-54).
• The Patented Solution: The invention is an elongate contact element, or probe, with an intermediate region that is configured to be "lamellar"—composed of multiple thin, parallel layers ("lamellae") separated by longitudinal slots. This design, combined with a "substantially rectangular" overall cross-section, is intended to provide a large total cross-section for high current capacity while maintaining the flexibility needed for reliable "buckling" contact with the test component (’460 Patent, Abstract; col. 2:1-16). Figure 1 of the patent illustrates this elongate, slotted structure.
• Technical Importance: This design purports to enable the reliable testing of semiconductor wafers with extremely dense contact pads (e.g., "a mean contact separation of 40 µm and less"), a critical capability for advancing semiconductor manufacturing (’460 Patent, col. 2:18-20).

Key Claims at a Glance

• The complaint asserts independent claim 1.
• The essential elements of independent claim 1 include:
  • An elongate electrical contact element for physically contacting an electrical component under test,
  • comprising two electrical contacting end regions and an elongate intermediate region situated between the end regions,
  • having an at least substantially rectangular cross-section, and
  • configured lamellar along a longitudinal extent of the intermediate region,
  • wherein the lamellar intermediate region comprises at least two lamellae extending in the longitudinal extent of the intermediate region,
  • adjacent ones of the lamellae being separated from one another by at least one longitudinal slot,
  • the lamellae being configured to bend if a contacting zone of the contact element is pressed against the electrical component under test.
• The complaint states that FormFactor infringes "one or more claims" of the patent, reserving the right to assert others (Compl. ¶40).

III. The Accused Instrumentality

Product Identification

Defendant FormFactor's Pyrana and Katana-RF line of probe card products (Compl. ¶20).

Functionality and Market Context

The Accused Products are described in marketing materials as "High performance vertical MEMS probe card[s] for RF production test" (Compl. ¶21). They are alleged to incorporate "thin-film technology" and are offered in various "leaf" types, such as "7-leaf," "4-leaf," and "3-leaf" (Compl. ¶23, ¶24). The complaint alleges these products are used for semiconductor device testing and contain the infringing contact element structures (Compl. ¶32). A photograph from a FormFactor presentation depicts one of the accused probes as a multi-strand, woven-like element. (Compl. ¶28).

IV. Analysis of Infringement Allegations

'460 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
An elongate electrical contact element for physically contacting an electrical component under test...	The Accused Products are probes used in semiconductor device testing to physically contact components.	¶32	col. 8:22-25
comprising two electrical contacting end regions and an elongate intermediate region situated between the end regions,	The probes are alleged to have two end regions and an intermediate region, as depicted in an annotated illustration from Defendant's presentation.	¶33	col. 5:41-43
having an at least substantially rectangular cross-section, and	The complaint alleges the probes have this cross-section, pointing to an annotated image of the accused probe.	¶34	col. 8:27-28
configured lamellar along a longitudinal extent of the intermediate region,	The complaint alleges the probes' multi-"leaf" structure constitutes a lamellar configuration.	¶35	col. 8:28-30
wherein the lamellar intermediate region comprises at least two lamellae extending in the longitudinal extent of the intermediate region,	The Accused Products are marketed as "7-leaf," "4-leaf," and "3-leaf" types, which the complaint equates to having at least two lamellae.	¶36	col. 8:31-33
adjacent ones of the lamellae being separated from one another by at least one longitudinal slot,	The complaint alleges that separations between the "leaves" of the accused probes constitute the claimed longitudinal slots, citing an annotated image.	¶37	col. 8:33-35
the lamellae being configured to bend if a contacting zone of the contact element is pressed against the electrical component under test.	The Accused Products are described as using "Vertical MEMS" technology and having a "buckling action," which is alleged to meet this limitation.	¶38	col. 8:35-38

Identified Points of Contention

• Structural Questions: The complaint provides a photograph of an accused probe that appears to have a woven or braided multi-strand construction (Compl. ¶28). A primary technical question is whether this structure meets the claim requirement of "at least two lamellae... separated from one another by at least one longitudinal slot." The patent figures depict the lamellae as distinct, parallel strips (’460 Patent, Fig. 1), which raises the question of whether a woven structure can be considered "separated by... a... slot."
• Scope Questions: The infringement analysis may turn on whether the accused probe's overall shape can be considered to have an "at least substantially rectangular cross-section" as required by the claim. The provided photographs suggest a structure that could be interpreted as having a more rounded or complex profile than a simple rectangle.

V. Key Claim Terms for Construction

• The Term: "lamellae"

  • Context and Importance: This term is central to the invention's claimed structure. The case will likely hinge on whether the accused products' multi-"leaf," woven-like construction falls within the definition of "lamellae."
  • Evidence for a Broader Interpretation: The patent does not provide a formal definition of "lamellae," which could support an argument for a broader, more general meaning encompassing any thin, layered structures. The core function is to provide flexibility and a large cross-section.
  • Evidence for a Narrower Interpretation: Practitioners may focus on language stating "the lamellae 12 preferably run mutually parallel" (’460 Patent, col. 6:1-2). The patent's figures consistently depict the lamellae as distinct, parallel, non-interwoven strips, which could support a narrower construction that excludes braided or woven structures.

• The Term: "separated from one another by at least one longitudinal slot"

  • Context and Importance: This term works in tandem with "lamellae" to define the core inventive concept. Infringement depends on finding that the spaces within the accused probe's woven structure constitute "slots."
  • Evidence for a Broader Interpretation: The term "slot" is not explicitly defined, leaving room to argue that any longitudinal separation between the "leaves" or strands qualifies.
  • Evidence for a Narrower Interpretation: The patent specification and figures show a clear, continuous channel (slot 13) separating parallel lamellae (’460 Patent, Fig. 1; col. 6:8-10). An argument may be advanced that the intermittent and complex voids within a woven structure are not "slots" in the manner disclosed and claimed by the patent.

VI. Other Allegations

• Indirect Infringement: The complaint does not plead a separate count for indirect infringement and focuses its allegations on direct infringement under 35 U.S.C. § 271(a) (Compl. ¶40).
• Willful Infringement: The complaint alleges willful infringement based on Defendant's alleged knowledge of the ’460 Patent and its infringement since at least July 2017. The basis for this knowledge includes alleged direct communications from Plaintiffs to Defendant, which included a "detailed claim chart," and Defendant's subsequent refusal to cease its allegedly infringing activities (Compl. ¶15-19, ¶41).

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

• A core issue will be one of definitional scope: can the term "lamellae," which the patent specification and figures depict as parallel, non-interwoven strips, be construed to cover the multi-strand, woven-like "leaf" structure of the accused probes?
• A related structural question will be one of infringement: do the voids within the accused probe's woven construction constitute a "longitudinal slot" that "separates" adjacent "lamellae," as required by the claim language, or is there a fundamental mismatch in the physical structure?
• A key evidentiary question for willfulness will be the substance of the pre-suit communications: what information was actually provided in the alleged July 2017 notice and claim chart, and how did the defendant respond? This will be central to determining whether any infringement was "willful, intentional and deliberate" (Compl. ¶41).