DCT

1:19-cv-01575

GlobalFoundries US Inc v. TCL Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:19-cv-01575, D. Del., 08/26/2019
  • Venue Allegations: Venue is alleged to be proper as to the U.S. defendant, TTE Technology, Inc., because it is incorporated in Delaware. Venue is alleged to be proper as to the foreign defendants because suits against foreign entities may be brought in any judicial district where they are subject to personal jurisdiction.
  • Core Dispute: Plaintiff alleges that Defendants' televisions, which contain integrated circuits manufactured by a third party using a patented process, infringe a patent related to semiconductor fabrication methods.
  • Technical Context: The technology concerns advanced semiconductor manufacturing, specifically methods for modifying the electronic properties of transistor gate structures to control their switching voltage, a critical factor for performance and power efficiency in modern microchips.
  • Key Procedural History: Plaintiff Globalfoundries acquired the patent-in-suit as part of a portfolio of 16,000 patents from IBM's microelectronics division in 2015. The complaint frames the dispute within the context of global competition between U.S.-based semiconductor manufacturing (Globalfoundries) and foreign-based foundries (Taiwan Semiconductor Manufacturing Company, Ltd., or "TSMC"), which manufactures the accused components for Defendants.

Case Timeline

Date Event
2006-01-20 ’497 Patent Priority Date
2008-09-16 ’497 Patent Issue Date
2015-01-01 Globalfoundries acquires IBM patent portfolio, including the ’497 patent
2019-08-26 Complaint Filing Date

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

  • Patent Identification: U.S. Patent No. 7,425,497, "Introduction of metal impurity to change workfunction of conductive electrodes," issued September 16, 2008. (Compl. ¶19)
  • The Invention Explained:
    • Problem Addressed: The patent’s background section explains that as semiconductor technology advanced to use new "high-k" gate dielectric materials (such as those based on hafnium), a problem arose with controlling the transistor's threshold voltage. Specifically, n-type transistors (n-MOSFETs) exhibited a "non-ideal threshold voltage," which negatively impacts device performance. (’497 Patent, col. 1:30-49)
    • The Patented Solution: The invention addresses this problem by providing a method to modify the "workfunction" of the transistor's conductive gate stack. This is achieved by introducing specific "workfunction altering metal impurities" into a metal-containing layer that sits between the high-k dielectric and the main conductive electrode. (’497 Patent, Abstract; col. 2:6-14). The choice of metal impurity is tailored to achieve the desired workfunction for either n-type or p-type transistors, thereby correcting the threshold voltage issue. (’497 Patent, Abstract)
    • Technical Importance: This method provided a way to fine-tune transistor performance, which was critical for manufacturers to continue scaling down device sizes while maintaining power efficiency and overcoming the material challenges associated with high-k dielectrics. (’497 Patent, col. 1:50-55)
  • Key Claims at a Glance:
    • The complaint asserts independent claim 1 of the ’497 patent. (Compl. ¶23)
    • The essential elements of independent claim 1 are:
      • A method of changing the workfunction of a conductive stack, comprising the steps of:
      • Providing a material stack that includes: a hafnium (Hf)-based dielectric, a "metal-containing material" (containing Ti, Zr, Hf, V, Nb, or Ta) above the dielectric, and a conductive electrode above the metal-containing material.
      • Introducing at least one "workfunction altering metal impurity" into the metal-containing material.
      • Specifying that the introduction is performed via one of three methods: (i) codeposition, (ii) layering the impurity between two layers of the metal-containing material, or (iii) forming an impurity-containing layer above or below and using a thermal process to drive it in.
      • A proviso requiring that the impurity must be from a specific set of elements (Groups IIIB, IVB, or VB) for an n-type workfunction, and from another set (Groups VIB, VIIB, or VIII) for a p-type workfunction.
    • The complaint alleges infringement either literally or under the doctrine of equivalents. (Compl. ¶23)

III. The Accused Instrumentality

  • Product Identification: The accused instrumentalities are integrated circuits manufactured by TSMC using, for example, its "28 Nanometer process," and downstream products containing these circuits. (Compl. ¶23). The complaint specifically identifies TCL 55R617 televisions that incorporate MediaTek 1602 systems-on-a-chip (SoCs) as examples of products containing the accused circuits. (Compl. ¶23).
  • Functionality and Market Context:
    • The relevant functionality is the specific manufacturing process that TSMC allegedly uses to fabricate the accused SoCs. The complaint alleges, on information and belief, that this process practices all the steps of claim 1 of the ’497 Patent. (Compl. ¶¶25-28).
    • The complaint alleges that these infringing SoCs are imported into the U.S. within TCL televisions and sold to consumers through retailers like Amazon and Best Buy, forming the basis for an infringement claim under 35 U.S.C. § 271(g), which governs the importation of products made abroad by a U.S. patented process. (Compl. ¶¶24, 27-28).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

  • Claim Chart Summary: The complaint outlines its infringement theory in narrative form. The core allegations for claim 1 are summarized below.
Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
providing a material stack that comprises a Hf-based dielectric..., a metal-containing material including at least one metal selected from Ti, Zr, Hf, V, Nb and Ta..., and a conductive electrode located above said metal-containing material TSMC’s manufacture of n-type FETs allegedly includes creating a material stack with an Hf-based dielectric, a metal-containing material that includes titanium metal above it, and a conductive electrode above that to form the gate. ¶27 col. 10:29-36
and introducing at least one workfunction altering metal impurity into said metal-containing material... with the proviso that when an n-type workfunction is required, the... impurity comprises at least one element from Groups IIIB, IVB, or VB of the Periodic Table... TSMC’s process allegedly introduces tantalum (a Group VB metal) into the metal-containing material. This is alleged to occur during the manufacture of an n-type FET, thereby satisfying the proviso for an n-type workfunction. ¶28 col. 10:37-57
wherein said... introducing is selected from... (ii) forming a first layer of the metal-containing material, forming a layer containing the metal impurities on said first layer, and forming a second layer of the metal-containing material... The complaint alleges, on information and belief, that the tantalum impurity is introduced by forming a first layer of titanium, then forming a layer containing tantalum on top of it, and then forming a second layer of titanium. This directly maps to the process described in option (ii) of the claim's "introducing" step. ¶28 col. 10:46-51
  • Identified Points of Contention:
    • Evidentiary Questions: The complaint's allegations regarding the internal structure and manufacturing steps of TSMC's 28nm process are made "on information and belief" (Compl. ¶¶23, 28). A primary focus of the litigation will be whether Plaintiff can obtain evidence through discovery or reverse engineering to prove that TSMC’s proprietary process actually includes the specific layered structure (titanium/tantalum/titanium) alleged.
    • Scope Questions: The case may raise questions about the scope of the claim term "metal-containing material." The infringement allegation depends on whether the specific material used by TSMC in its gate stack—alleged to include "titanium metal" (Compl. ¶27)—falls within the patent's definition, which the specification suggests can include materials like TiN or TiON. (’497 Patent, col. 2:26-27).

V. Key Claim Terms for Construction

  • The Term: "metal-containing material"

  • Context and Importance: This term defines a key layer in the claimed gate stack. The infringement case hinges on proving that the layer in TSMC's process meets this definition. Practitioners may focus on this term because its construction will determine whether materials beyond pure metals or simple nitrides, potentially complex alloys or multi-element compounds used in modern manufacturing, are covered.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification provides examples such as a "metal nitride, metal carbide or a metal silicon nitride," suggesting the term is not limited to pure metals. (’497 Patent, col. 6:1-2).
    • Evidence for a Narrower Interpretation: The claim itself states the material must include at least one metal from a specific list (Ti, Zr, Hf, V, Nb, Ta). (’497 Patent, col. 10:31-33). A defendant could argue that this list is limiting or that the primary character of the material must be one of these metals, not a complex compound where the listed metal is a minor component.

  • The Term: "introducing at least one workfunction altering metal impurity"

  • Context and Importance: This step is the core of the invention. The complaint alleges infringement via a specific "layering" method (option ii of the claim). The definition of "introducing" and "impurity" will be critical. Practitioners may focus on this term because a dispute could arise over whether forming a distinct layer of one metal (tantalum) on another (titanium) constitutes introducing an "impurity," which can sometimes imply diffusion or doping rather than discrete layering.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The claim explicitly lists three distinct methods for "introducing," including "forming a first layer..., forming a layer containing the metal impurities..., and forming a second layer." (’497 Patent, col. 10:46-51). This language appears to expressly cover the layering structure alleged in the complaint.
    • Evidence for a Narrower Interpretation: The use of the word "impurity" in the patent's abstract and summary could be argued to suggest a diffusion or co-deposition process, where the altering metal is dispersed within the primary material rather than existing as a separate, distinct layer. (’497 Patent, Abstract; col. 2:11).

VI. Other Allegations

  • Indirect Infringement: The complaint does not plead separate counts for indirect infringement (inducement or contributory infringement). The action is focused on direct infringement by the TCL defendants for importing, selling, and using products made by a patented process. (Compl. ¶¶23-24)
  • Willful Infringement: The complaint does not contain an allegation of willful infringement. It includes a prayer for attorneys' fees based on the case being "exceptional" pursuant to 35 U.S.C. § 285, which is a related but distinct legal standard. (Compl. p. 13, ¶(f))

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

  • A central issue will be one of evidentiary proof: Can Globalfoundries prove, through discovery from a non-party (TSMC) or technical analysis, that TSMC's proprietary 28nm manufacturing process employs the specific materials and multi-layer gate structure (e.g., a titanium/tantalum/titanium stack) required to meet the limitations of Claim 1?
  • The case will likely involve a key question of statutory interpretation under 35 U.S.C. § 271(g): Does the assembly of an accused semiconductor chip into a final consumer product, such as a television, constitute a "material change" that would shield the importer from liability for using a product made by a patented process? The complaint asserts the products are not materially changed (Compl. ¶29), but this is a frequent point of dispute in such cases.
  • A third core issue will be one of definitional scope during claim construction: How broadly will the court construe the term "metal-containing material"? The outcome of this construction could determine whether the specific, advanced materials used in TSMC's modern fabrication process fall within the scope of a patent filed in 2006.