DCT
1:20-cv-00738
CMC Materials LLC v. DuPont De Nemours Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: CMC Materials, Inc. (Delaware)
- Defendant: DuPont de Nemours, Inc., Rohm and Haas Electronic Materials CMP LLC, and related entities (Delaware, Taiwan, Japan)
- Plaintiff’s Counsel: Shaw Keller LLP; Baker Botts L.L.P.
- Case Identification: 1:20-cv-00738, D. Del., 06/01/2022
- Venue Allegations: Venue is alleged to be proper as several key Defendant entities are incorporated in Delaware and therefore reside in the district. Foreign defendant entities may be sued in any judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s Optiplane family of chemical-mechanical polishing slurries infringes a patent related to low-pH colloidal silica compositions.
- Technical Context: The technology involves chemical-mechanical planarization (CMP) slurries, consumable materials critical for smoothing and leveling surfaces during the fabrication of advanced semiconductor devices.
- Key Procedural History: The complaint heavily relies on a prior, related investigation before the International Trade Commission (ITC). In that proceeding (Inv. No. 337-TA-1204), an Administrative Law Judge (ALJ) found that the Defendants infringed the patent-in-suit. The full Commission affirmed these findings, upheld the patent’s validity, and issued exclusion and cease and desist orders against the Defendants. The complaint notes that Defendants did not appeal the ITC's final determination.
Case Timeline
| Date | Event |
|---|---|
| 2014-06-25 | ’721 Patent Priority Date |
| 2016-11-22 | ’721 Patent Issue Date |
| 2020-04-13 | Plaintiff allegedly sent Defendants a claim chart detailing infringement |
| 2021-07-08 | ITC Administrative Law Judge issued Initial Determination of infringement |
| 2021-12-16 | ITC issued final determination and orders against Defendants |
| 2022-06-01 | First Amended Complaint filed in District Court |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,499,721 - “Colloidal Silica Chemical-Mechanical Polishing Composition,” issued Nov. 22, 2016
The Invention Explained
- Problem Addressed: The patent describes a need to move away from traditional CMP slurries used for dielectric applications, which required a high concentration of abrasive silica particles in a high pH environment. This traditional approach, while achieving high material removal rates, suffered from high cost and high defect levels on the semiconductor surface (Compl. ¶4; ’971 Patent, col. 2:7-11).
- The Patented Solution: The patent discloses a chemical-mechanical polishing composition designed to operate at a lower pH (acidic) and with a lower concentration of abrasives. The core of the invention is a colloidal silica abrasive particle that has a chemical species, such as a nitrogen-containing compound, incorporated into the particle's interior during its formation, rather than being applied only as a surface treatment (’971 Patent, col. 4:23-31, col. 6:55-64). This internal incorporation is described as creating a "permanent positive charge" on the particles, which enables effective polishing while reducing costs and defects (Compl. ¶5).
- Technical Importance: This approach is presented as an innovation that allows for the production of smaller, faster, and more complex semiconductor devices by providing higher quality surface planarization with lower defectivity and at a lower cost of ownership (Compl. ¶¶3, 5).
Key Claims at a Glance
- The complaint asserts infringement of at least independent composition claim 1 and independent method claim 39, among numerous other dependent claims (Compl. ¶7).
- The essential elements of independent claim 1 include:
- A chemical mechanical polishing composition comprising:
- a water based liquid carrier;
- colloidal silica abrasive particles dispersed in the liquid carrier;
- a chemical species incorporated in the colloidal silica abrasive particles internal to an outer surface thereof, where the species is a nitrogen or phosphorus-containing compound;
- a pH in a range from about 3.5 to about 6;
- wherein the particles have a permanent positive charge of at least 15 mV; and
- wherein the chemical species is not an aminosilane or a phosphonium silane.
- The complaint reserves the right to assert additional claims (Compl. ¶7).
III. The Accused Instrumentality
- Product Identification: The complaint identifies the "Optiplane 2300 and 2600 family of products" and other products with similar components and characteristics as the "Accused Products" (Compl. ¶7).
- Functionality and Market Context: The Accused Products are chemical mechanical polishing slurries used to planarize surfaces in semiconductor manufacturing (Compl. ¶38). The complaint alleges they are sold to major semiconductor companies and that Defendant DuPont is a "global leader in the CMP slurry market," supplying its domestically made slurries to the industry in the United States and globally (Compl. ¶49, Ex. F). The functionality of the Accused Products is alleged to meet every limitation of the asserted claims based on, among other things, expert testing and findings from the prior ITC investigation (Compl. ¶¶37-44).
IV. Analysis of Infringement Allegations
’971 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A chemical mechanical polishing composition comprising: a water based liquid carrier; | The complaint, citing the ITC ALJ's findings, alleges the Accused Products are chemical mechanical polishing compositions that include a water based liquid carrier, as shown by Defendants' own marketing materials, safety data sheets, and internal technical documents. | ¶¶38-39 | col. 4:15-17 |
| colloidal silica abrasive particles dispersed in the liquid carrier; | Defendants' own documents allegedly describe the Accused Products as including colloidal silica abrasive particles dispersed in a liquid carrier, a finding the complaint states was made by the ITC ALJ. | ¶40 | col. 4:17-18 |
| a chemical species incorporated in the colloidal silica abrasive particles internal to an outer surface thereof, wherein the chemical species is a nitrogen containing compound or a phosphorus containing compound; | The complaint alleges this limitation is met, citing the ITC ALJ's finding that the Accused Products contain such an incorporated species. The complaint notes that Defendants did not dispute this limitation at the ITC. | ¶41 | col. 4:23-28 |
| a pH in a range from about 3.5 to about 6; | Testing by Plaintiff's expert, which was allegedly consistent with Defendants' own technical documents, showed the Accused Products have a pH within this range. | ¶42 | col. 4:32-34 |
| wherein the colloidal silica abrasive particles have a permanent positive charge of at least 15 mV; and | The complaint states that infringement of this element is "clear from the extensive testing" conducted for the ITC investigation, where measured values fell "well within the claimed range." As part of its willfulness allegations, the complaint includes a side-by-side comparison of language from the ’971 patent and a later DuPont patent application, alleging the nearly identical definitions of "permanent positive charge" show copying (Compl. ¶12). | ¶¶12, 43 | col. 4:35-37 |
| wherein the chemical species is not an aminosilane or a phosphonium silane. | The complaint states that the ITC ALJ found that the particles in the Accused Products "do not contain aminosilane or phosphonium silane compounds." | ¶44 | col. 4:38-39 |
- Identified Points of Contention:
- Scope Questions: Given the prior ITC ruling, a central legal question will concern the preclusive effect of that body's findings on claim construction and infringement in the district court. From a technical perspective, the dispute may again focus on the precise meaning of "permanent positive charge" and whether the charge on the accused particles is "not readily reversible" in the manner described by the patent.
- Technical Questions: The complaint's infringement case rests heavily on testing performed for the ITC investigation. A potential area of dispute could involve the methodology used to measure the charge (zeta potential) and to confirm that the chemical species is "incorporated... internal to an outer surface" rather than being a surface treatment. The parties may present conflicting expert evidence on the interpretation of analytical results.
V. Key Claim Terms for Construction
The Term: "permanent positive charge"
- Context and Importance: This term is central to distinguishing the invention from prior art and from compositions with a "reversible positive charge" resulting from simple electrostatic attraction. The definition is critical for both infringement and validity. The complaint highlights its importance by alleging that DuPont's own subsequent patent application adopted nearly identical language to define the term, which Plaintiff presents as evidence of copying (Compl. ¶12).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent defines the term by what it is not: "in contrast to a reversible positive charge that may be the result, for example, of an electrostatic interaction" (’971 Patent, col. 11:10-13). This could support a construction that includes any non-reversible mechanism of creating a positive charge.
- Evidence for a Narrower Interpretation: The patent provides specific examples of how a permanent charge can be achieved, stating it "may be the result of incorporating the positive charged species in the particle" or "may further result from a covalent interaction" (’971 Patent, col. 11:7-10). A party could argue the term should be limited to these specific disclosed mechanisms.
The Term: "incorporated in the colloidal silica abrasive particles internal to an outer surface thereof"
- Context and Importance: This limitation distinguishes the claimed invention from simple surface-treated particles. Proving infringement requires demonstrating that the location of the charge-imparting chemical species is within the particle's structure, not just on its surface.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes methods where the species is present during the particle's growth, suggesting it could be distributed throughout the particle's volume (’971 Patent, col. 4:57-60, col. 6:23-31). This may support a broader reading that does not require a discrete "core" and "shell."
- Evidence for a Narrower Interpretation: The specification also explicitly describes a "core-shell structure" where an outer shell is grown over an inner core, with the species being incorporated into the shell (’971 Patent, col. 6:40-49). This language could be used to argue for a more constrained interpretation requiring a distinct layered structure.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement, citing findings from the ITC investigation.
- Inducement: It is alleged that Defendants knowingly induce infringement by supplying the Accused Products and their components with the specific intent that customers and other entities will use them in an infringing manner in the U.S., supported by marketing, distribution, and instructions (Compl. ¶¶53-56).
- Contributory Infringement: The complaint alleges that Defendants import and sell particle components that are especially made and adapted for infringing the ’971 Patent and are not staple articles of commerce with substantial non-infringing uses (Compl. ¶¶57-59).
- Willful Infringement: Willfulness is a central theme of the complaint. The allegations are based on both pre- and post-suit knowledge. Pre-suit knowledge is alleged based on the ITC ALJ's finding that Defendants were "well-aware of the '721 patent during their development of the Accused Products" and from a claim chart sent by Plaintiff in April 2020 (Compl. ¶¶11, 13, 61). The claim of willfulness is further supported by allegations that Defendants continued to infringe even after the ITC issued a final, unappealed determination against them (Compl. ¶61).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of legal preclusion: to what extent will the court give preclusive effect to the prior, unappealed findings of the International Trade Commission regarding claim construction, infringement, and validity, potentially narrowing the scope of litigation in this forum?
- A primary evidentiary question will relate to willfulness: did Defendants' conduct, particularly the alleged copying of claim language in a patent application and continued sales after the final ITC ruling, rise to the level of "egregious" infringement that would justify an award of enhanced damages under 35 U.S.C. § 284?
- A key technical question, should the court allow the issue to be re-litigated, will be one of definitional scope: can the term "permanent positive charge," which the patent defines as "not readily reversible," be distinguished from the charge on the accused particles, or will the prior ITC finding of infringement on this point be dispositive?