DCT
8:17-cv-00322
On Semiconductor v. Micro Processing Technology Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: ON Semiconductor Corporation and Semiconductor Components Industries, LLC (Delaware)
- Defendant: Micro Processing Technology, Inc. (California)
- Plaintiff’s Counsel: Quarles & Brady LLP
- Case Identification: 8:17-cv-00322, D. Ariz., 04/14/2016
- Venue Allegations: Venue is alleged to be proper in the District of Arizona because Defendant caused events to occur in Maricopa County, where Plaintiff is located and where the dispute arises, related to collaborative work on the inventions at issue.
- Core Dispute: Plaintiff alleges that Defendant misappropriated its confidential information and trade secrets, filing patents on three distinct semiconductor singulation technologies conceived by Plaintiff's inventor during a collaborative project, and seeks correction of inventorship, assignment of ownership, and damages for breach of contract.
- Technical Context: The dispute concerns methods for "singulation," the process of separating individual microchips (dies) from a large silicon wafer, a critical step in semiconductor manufacturing.
- Key Procedural History: The parties collaborated under Non-Disclosure Agreements (NDAs) starting in 2010 and a subsequent Proof of Concept (P.O.C.) agreement in 2013. Plaintiff alleges that during this collaboration, Defendant secretly filed for and obtained patents on Plaintiff's inventions. The dispute appears to have crystallized after Defendant sent a letter in November 2015 accusing Plaintiff of infringing "MPT's patented process."
Case Timeline
| Date | Event |
|---|---|
| 2010-08-16 | Parties enter into first three-year NDA |
| 2011-08-02 | MPT files patent application for what becomes the ’188 Patent |
| 2012-02-28 | Plaintiff's employee allegedly conceives Uniform Pressure-Based Singulation |
| 2012-05-03 | MPT employee allegedly views Plaintiff's test fixture for Uniform Pressure method |
| 2013-01-16 | MPT files patent application for what becomes the ’493 Patent |
| 2013-05-28 | U.S. Patent No. 8,450,188 issues |
| 2013-07-30 | Parties enter into Equipment Development and P.O.C. Agreement |
| 2013-08-13 | Parties enter into second three-year NDA |
| 2013-09-12 | MPT files provisional application for what becomes the ’745 Patent |
| 2014-12-09 | U.S. Patent No. 8,906,745 issues |
| 2015-10-06 | U.S. Patent No. 9,153,493 issues |
| 2015-11-09 | MPT sends letter to Plaintiff regarding "MPT's Intellectual Property" |
| 2016-04-14 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,906,745 - “Method Using Fluid Pressure to Remove Back Metal from Semiconductor Wafer Scribe Streets”
- Issued: December 9, 2014.
The Invention Explained
- Problem Addressed: After using a plasma etching process to cut through the silicon layer of a wafer to separate individual dies, a thin metal backing layer often remains intact in the "scribe streets" between the dies, preventing full separation (Compl. ¶21; ’745 Patent, col. 1:49-55). Traditional methods to remove this metal, like sawing, are slow and can damage the dies (Compl. ¶19; ’745 Patent, col. 1:17-31).
- The Patented Solution: The invention proposes a method where the wafer, with its etched-silicon side down, is placed in a high-pressure chamber. A sheet of deformable material (like plastic film) covers the wafer's metal-backing side. Pressurized fluid is then applied to this film, causing it to deform and press into the empty scribe streets, which creates a differential pressure that fractures or "cleaves" the metal backing along the streets, completing the singulation of all dies simultaneously (’745 Patent, col. 4:1-13, Fig. 3). A micrograph in the complaint shows the "streets" where this process occurs (Compl. ¶14, p. 6).
- Technical Importance: This "Uniform Pressure" method offers a way to singulate all dies on a wafer at once without mechanical cutting, potentially increasing throughput and reducing damage compared to die-by-die sawing or cutting techniques (Compl. ¶25).
Key Claims at a Glance
- The complaint focuses on the overall inventive concept without citing specific claims, but the core allegations map to independent claim 1.
- Independent Claim 1, in essence, requires:
- Placing a sheet of deformable material over the metal-layer side of a wafer with etched scribe streets.
- Positioning the wafer on a support surface.
- Pressurizing a fluid that contacts the deformable sheet.
- The pressurized fluid deforms the sheet, causing the metal layer to break at the scribe street locations.
- The complaint seeks correction of inventorship for "one or more claims" (Compl. ¶62).
U.S. Patent No. 9,153,493 - “System for Separating Devices from a Semiconductor Wafer”
- Issued: October 6, 2015.
The Invention Explained
- Problem Addressed: As with the '745 Patent, the invention addresses the need to separate the back metal in scribe streets after plasma etching (Compl. ¶21; ’493 Patent, col. 1:56-61). The patent notes that simply stretching the plastic film on which the wafer is mounted can cause uncontrolled breaks and low yield (’493 Patent, col. 2:27-41).
- The Patented Solution: This invention uses a mechanical "stylus" that is pressed against the back of the plastic film supporting the wafer. The film is first placed under a controlled tension. The stylus then moves across the wafer, pressing into the scribe streets from underneath to deform the film locally and cause the metal backing to separate in a controlled manner (’493 Patent, col. 4:1-12, Fig. 11).
- Technical Importance: This "Stylus-Based" approach provides an alternative mechanical method to die-by-die cutting wheels for breaking the metal backing, offering a potentially more controlled process than simple stretching (Compl. ¶23). The complaint includes a visual of singulated dies stuck to adhesive tape after separation, a state which this process aims to achieve (Compl. ¶18, p. 7).
Key Claims at a Glance
- The complaint's allegations regarding "Stylus-Based Singulation" map to independent claim 1.
- Independent Claim 1, in essence, requires:
- Supporting a planar plastic film (with a wafer on it) on a support structure.
- Applying a variable radial force to stretch and tension the film.
- Controlling the stretch and tension.
- Pressing a stylus against the wafer through the film.
- Moving the stylus across the wafer to cause the back metal to separate.
- The complaint seeks correction of inventorship for "one or more claims" (Compl. ¶70).
Multi-Patent Capsule
- U.S. Patent No. 8,450,188, “Method of Removing Back Metal From an Etched Semiconductor Scribe Street,” issued May 28, 2013.
- Technology Synopsis: The patent addresses the same problem of removing the back metal layer after plasma etching (’188 Patent, col. 1:45-53). The proposed solution involves using a mechanical "cutting tool," such as a non-rotatable blade or a rotating wheel, to physically cut through the metal layer along the scribe streets after the wafer has been inverted (’188 Patent, Abstract, col. 4:4-15).
- Asserted Claims: The complaint seeks correction of inventorship for "one or more claims" (Compl. ¶78).
- Accused Features: The complaint alleges this patent covers a "Mechanical Cutting-Based Singulation" process using a "cutting wheel much like a pizza cutter," which was a concept allegedly conceived by Plaintiff's employees and disclosed to Defendant (Compl. ¶23, ¶33, ¶36).
III. The Accused Instrumentality
Product Identification
The "accused instrumentalities" are not commercial products but are U.S. Patent Nos. 8,906,745, 9,153,493, and 8,450,188 themselves (collectively, the "MPT Patents") (Compl. ¶¶ 33-35). The lawsuit centers on the allegation that Defendant (MPT) improperly filed for and obtained these patents using inventions conceived by Plaintiff's (ON Semiconductor's) inventor, Mr. Gordon Grivna (Compl. ¶¶ 36, 38, 40).
Functionality and Market Context
- The complaint alleges that the technologies claimed in the MPT Patents were conceived by Mr. Grivna and shared with MPT under NDAs during a collaborative effort to solve the metal backing separation problem (Compl. ¶¶ 22-28).
- The complaint alleges that MPT's ownership claims are based on confidential information and trade secrets belonging to ON Semiconductor (Compl. ¶¶ 134-135). The dispute escalated when MPT sent a letter to ON Semiconductor asserting its "patented process" and alleging that ON Semiconductor's work with a third-party potentially infringed MPT's patents (Compl. ¶¶ 48-51).
IV. Analysis of Infringement Allegations
The complaint does not allege patent infringement by a product. Instead, it alleges that the claims of the MPT Patents improperly cover inventions conceived by ON Semiconductor's employee. The following table summarizes this central dispute by mapping the patent claims to the alleged source of conception.
’745 Patent Inventorship Allegations
| Claim Element (from Independent Claim 1) | Alleged Conception by Plaintiff (ON Semiconductor) | Complaint Citation | Patent Citation |
|---|---|---|---|
| a method of dividing a semiconductor wafer having ... a metal layer, and etched scribe streets | The parties were collaborating to find solutions for "removing or breaking the metal backing after Plasma Singulation." | ¶22 | col. 1:45-55 |
| placing a sheet of deformable material into engagement with the ... metal layer | This method builds on the standard practice of mounting wafers on adhesive plastic film. | ¶16 | col. 5:56-62 |
| pressurizing fluid contacting said sheet of deformable material to deform the sheet ... and cause the metal layer to break | Plaintiff's inventor, Gordon Grivna, is alleged to have conceived of this specific idea—"to utilize a uniform pressure differential-based stress on the wafer"—alone on Feb. 28, 2012. | ¶24 | col. 4:1-9 |
| a "test fixture" was created by Mr. Grivna to perform the method, and was allegedly visible to MPT's Mr. Lindsey. | Plaintiff alleges Mr. Grivna built and tested a fixture to perform the method and that it was openly visible to MPT's president during a visit. | ¶26, ¶27 | col. 3:51-52 |
’493 Patent Inventorship Allegations
| Claim Element (from Independent Claim 1) | Alleged Conception by Plaintiff (ON Semiconductor) | Complaint Citation | Patent Citation |
|---|---|---|---|
| supporting the plastic film on a support structure | The parties experimented with methods building on standard industry practices. | ¶16, ¶23 | col. 4:32-37 |
| applying a variable radial force to said planar plastic film ... to radially stretch and tension the planar plastic film | The complaint alleges the parties jointly experimented with "Stylus-Based Singulation" where stress was applied using a stylus. | ¶23 | col. 2:10-14 |
| pressing a stylus against the semiconductor wafer | The parties allegedly experimented with a method "whereby stress was applied using a stylus or roller travelling across the silicon wafer." | ¶23 | col. 4:1-5 |
| moving the stylus across the semiconductor wafer ... causing the back metal in the scribe streets... to break and separate | The complaint alleges that ON Semiconductor conceived of and shared information regarding "Stylus-Based Singulation" with MPT. | ¶28, ¶34, ¶38 | col. 4:6-12 |
- Identified Points of Contention:
- Factual Question (Conception): The central dispute is factual: Who conceived of the specific inventive concepts claimed in the MPT patents? The case will likely depend on evidence of inventorship, such as lab notebooks, emails, test results, and testimony from the individuals involved (Compl. ¶¶ 24, 28, 31).
- Scope Question (Contribution): A key question will be whether the alleged contributions by ON Semiconductor's inventor, Mr. Grivna, rise to the level of co-inventorship for each patent. This requires determining if he contributed to the conception of the subject matter of at least one claim in each patent.
V. Key Claim Terms for Construction
While this is not a traditional infringement case, the definition of terms distinguishing the three technologies will be critical for determining the scope of each alleged inventive act.
The Term: "pressurizing fluid" (’745 Patent, Claim 1)
- Context and Importance: This term is the core of the '745 patent's inventive concept. The dispute over this patent hinges on whether Plaintiff's inventor conceived of using a uniform fluid pressure, as opposed to a localized mechanical force, to cleave the metal backing. Practitioners may focus on this term to distinguish this invention from the stylus-based or cutting-wheel methods.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language is broad ("fluid"), potentially covering liquids or gases (’745 Patent, cl. 2).
- Evidence for a Narrower Interpretation: The specification describes applying pressure sufficient to "cleave the back metal" (e.g., 10,000 to 40,000 psi) in a pressure chamber, suggesting a specific high-pressure, simultaneous, whole-wafer process, not merely any application of fluid (’745 Patent, col. 5:31-36, Fig. 3).
The Term: "stylus" (’493 Patent, Claim 1)
- Context and Importance: This term defines the mechanical tool used in the '493 patent, distinguishing it from the '745 patent's fluid pressure and the '188 patent's cutting tool. The inventorship dispute for the '493 patent centers on joint experiments allegedly involving a "stylus or roller" (Compl. ¶23).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself is not narrowly defined, and the specification discusses using a tool with a "diamond point or edge" to create stress, which could encompass various pointed instruments (’493 Patent, col. 1:28-32).
- Evidence for a Narrower Interpretation: Figure 10 shows the stylus (32) as a specific tool with a rounded tip, which could be argued to limit the scope to tools designed for pressing and deforming rather than cutting or scoring (’493 Patent, Fig. 10).
VI. Other Allegations
- Breach of Contract: The complaint alleges that MPT breached both the 2010 and 2013 NDAs and the 2013 P.O.C. agreement.
- NDA Breach: MPT allegedly breached confidentiality by using ON Semiconductor's disclosed information to file the MPT Patents without consent (Compl. ¶¶ 87-89, 100-102, 112-114).
- P.O.C. Breach: MPT allegedly breached the P.O.C. agreement, which stipulated that "Foreground Intellectual Property... jointly developed... shall be owned by ON," by failing to assign the '745 Patent to ON Semiconductor (Compl. ¶¶ 124, 128).
- Misappropriation of Trade Secrets: The complaint alleges that the information ON Semiconductor provided to MPT regarding the stylus-based and uniform pressure methods constituted trade secrets (Compl. ¶135). MPT's act of filing patents on these methods is alleged to be a misappropriation of those secrets (Compl. ¶139).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case appears to depend on three central questions combining factual evidence and contract law.
- A core issue will be one of inventorship fact-finding: Can ON Semiconductor produce sufficient corroborating evidence to prove that its employee, Gordon Grivna, conceived, either solely or jointly, the specific technical solutions claimed in each of the three MPT patents?
- A second key question will be one of contractual obligation: Does the language of the P.O.C. agreement—specifically the clause assigning ownership of jointly developed "Foreground Intellectual Property" to ON Semiconductor—compel the transfer of the '745 Patent, regardless of how inventorship is ultimately determined?
- Finally, a critical question will be the interplay of patent and trade secret law: Did MPT's alleged use of confidential information disclosed under an NDA to file patent applications constitute a breach of contract and misappropriation of trade secrets, creating liability separate from the patent-specific inventorship claims?