In Depth Test LLC v. NXP USA Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: In-Depth Test LLC (Texas)
  • Defendant: NXP USA. Inc (Delaware)
  • Plaintiff’s Counsel: Friedman, Suder & Cooke; Farnan LLP
• Case Identification: 1:18-cv-01461, D. Del., 09/21/2018
• Venue Allegations: Venue is alleged to be proper based on Defendant's incorporation in Delaware and its transaction of business in the district.
• Core Dispute: Plaintiff alleges that Defendant’s semiconductor test systems, which are used in automotive applications and comply with certain quality management standards, infringe a patent related to identifying statistical outliers in semiconductor test data.
• Technical Context: The lawsuit concerns the field of automated semiconductor testing, where manufacturers test integrated circuits to identify defects and ensure quality, a critical step in high-reliability sectors like the automotive industry.
• Key Procedural History: The complaint notes that the patent-in-suit has been subject to multiple prior proceedings before the Patent Trial and Appeal Board (PTAB), including several Inter Partes Review (IPR) and Covered Business Method (CBM) petitions that were either terminated or for which institution was denied. The complaint also states the patent has been asserted in other ongoing and resolved litigations in the same district.

Case Timeline

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

U.S. Patent No. 6,792,373 - "Method and Apparatus For Semiconductor Testing"

• Patent Identification: U.S. Patent No. 6,792,373, "Method and Apparatus For Semiconductor Testing", issued September 14, 2004.

The Invention Explained

• Problem Addressed: The patent describes the challenge of analyzing the enormous volume of data generated by automated semiconductor testing. Conventional methods that only sample data risk missing important information, while analyzing all data is time-consuming and resource-intensive. A key problem is that some components may pass standard tests (i.e., fall within control limits) but still exhibit anomalous performance that could indicate future reliability issues. (’373 Patent, col. 1:29-62).
• The Patented Solution: The invention proposes a test system that performs supplemental data analysis at run-time to identify "outliers"—components whose test results are statistically unusual compared to other components, even if they are technically within acceptable limits. The system comprises a tester that generates test data and a connected computer that receives this data, identifies the outliers, and includes them in an output report, allowing for more granular classification of component performance. (’373 Patent, Abstract; col. 5:20-35).
• Technical Importance: This approach allows for the identification of potentially unreliable components that would otherwise pass standard quality control, which is significant for improving manufacturing processes and the reliability of final products. (Compl. ¶10).

Key Claims at a Glance

• The complaint asserts infringement of at least independent claim 1. (Compl. ¶14).
• Claim 1 requires:
  • A test system, comprising:
  • a tester configured to test a component and generate test data; and
  • a computer connected to the tester and configured to
    • receive the test data,
    • identify an outlier in the test data, and
    • generate an output report including the identified outlier.
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

• The "Accused Products" are identified as "semiconductor test systems" and infringing methods used by NXP to test and manufacture semiconductors, particularly for "Automotive Semiconductor applications." (Compl. ¶14). These systems are alleged to incorporate technologies facilitating compliance with quality standards such as ISO/TS 16949:2009, AEC Q100, and AEC Q004 Zero Defects Guideline / Q001 Guidelines For Part Average Testing. (Compl. ¶14).

Functionality and Market Context

• The complaint alleges the Accused Products are test systems that include a computer performing statistical analysis on results from test equipment. (Compl. ¶15). This analysis is alleged to identify and report components that are statistical "outliers" from other components, even if all fall within pre-set control limits. (Compl. ¶15). The complaint positions these systems as being used by NXP during the fabrication process to test for manufacturing defects and anomalous behavior. (Compl. ¶15).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

Claim Chart Summary

• The complaint provides a narrative infringement theory for Claim 1, which is summarized in the table below.

'373 Patent Infringement Allegations

Identified Points of Contention

• Technical Questions: A primary question may be how the accused NXP systems technically "identify" an "outlier." The complaint alleges this functionality but does not specify the underlying algorithm or method. The patent discloses specific methods for this identification, and a factual dispute may arise over whether NXP's systems perform the same or an equivalent function as claimed.
• Scope Questions: The term "outlier" is central. The patent defines it relative to components that stray from a statistical norm but remain within control limits (’373 Patent, col. 6:45-49). The case may turn on whether the accused systems' identification of non-conforming parts aligns with this specific definition, or if NXP’s methods (such as "Part Average Testing" referenced in the complaint) operate on a different technical principle. (Compl. ¶14).

V. Key Claim Terms for Construction

• The Term: "outlier"
• Context and Importance: This term is the technological core of the asserted claim. The entire purpose of the claimed invention is to "identify an outlier." How this term is defined will determine the scope of infringement, as it distinguishes the invention from conventional pass/fail testing. Practitioners may focus on this term because the complaint’s infringement theory rests on the allegation that NXP’s systems identify components that are "statistical 'outliers'" in the same sense as the patent. (Compl. ¶10, ¶15).
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claims themselves do not provide a detailed definition, simply requiring the computer to "identify an outlier in the test data." (Claim 1). This could support an argument for a plain and ordinary meaning not limited to the specific embodiments.
  • Evidence for a Narrower Interpretation: The specification provides a more specific definition, describing outliers as test results that "stray from the first set but do not exceed the control limits or otherwise fail to be detected." (’373 Patent, col. 6:45-49). This language, along with the detailed discussion of statistical analysis (e.g., col. 13-14), may be used to argue for a narrower construction tied to this specific technical context of being "in-spec" but anomalous.

VI. Other Allegations

• Indirect Infringement: The complaint does not contain specific factual allegations to support claims of induced or contributory infringement.
• Willful Infringement: The complaint does not plead facts to support a claim of willful infringement, such as allegations of pre-suit knowledge of the patent or its infringement. The prayer for relief includes a request for a finding that the case is exceptional under 35 U.S.C. § 285, but the basis for this request is not detailed in the body of the complaint. (Compl. p. 6, ¶C).

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

1. A central issue will be one of technical implementation: Does the statistical analysis performed by NXP's accused test systems, which allegedly complies with "Part Average Testing" guidelines, constitute the act of "identify[ing] an outlier" as that term is construed in the context of the ’373 patent? The case will require a detailed comparison of the specific function performed by the accused systems against the scope of the claim language.
2. A second key question will relate to claim scope and validity: While the complaint highlights the patent's survival of multiple PTAB challenges, those proceedings have a different standard of proof and claim construction than district court litigation. The court will need to conduct its own claim construction and validity analysis, and the outcome of the prior PTAB proceedings may be persuasive but not dispositive.
3. An evidentiary question will be one of proof: The complaint alleges infringement on "information and belief." Plaintiff will need to substantiate, through discovery, the precise operation of NXP's internal test systems to prove that they meet each limitation of the asserted claim, particularly the identification and reporting of "outliers."