DCT
1:18-cv-10236
Palomar Tech Inc v. MRSI Systems LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Palomar Technologies, Inc. (Delaware)
- Defendant: MRSI Systems, LLC (Massachusetts)
- Plaintiff’s Counsel: K&L GATES LLP
- Case Identification: 3:15-cv-01484, S.D. Cal., 07/06/2015
- Venue Allegations: Venue is alleged to be proper in the Southern District of California because Defendant has personal jurisdiction in the state and has allegedly committed acts of infringement or made meaningful preparations for such acts within the district.
- Core Dispute: Plaintiff alleges that Defendant’s automated micro-assembly systems infringe a patent related to a high-accuracy "double pick and place" method for positioning microelectronic components.
- Technical Context: The technology pertains to the automated assembly of microelectronics, where the precise placement of components like semiconductor dies onto substrates is critical for device performance and manufacturing yield.
- Key Procedural History: The complaint was filed on July 6, 2015. Subsequently, on October 13, 2015, Defendant MRSI Systems, LLC filed an Inter Partes Review (IPR) petition (IPR2016-00043) challenging the patent-in-suit. The IPR concluded with a certificate issued on August 9, 2017, confirming the patentability of claims 1-47 and canceling claim 48. This post-filing IPR outcome may strengthen the patent's presumption of validity for the surviving claims.
Case Timeline
| Date | Event |
|---|---|
| 2002-11-05 | '327 Patent Priority Date |
| 2004-08-17 | '327 Patent Issue Date |
| 2015-07-06 | Complaint Filing Date |
| 2015-10-13 | IPR Filed by Defendant MRSI Systems, LLC (IPR2016-00043) |
| 2017-08-09 | IPR Certificate Issued (Claims 1-47 found patentable; Claim 48 canceled) |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,776,327 - "High-Accuracy Placement Method Utilizing Double Pick and Place"
- Patent Identification: U.S. Patent No. 6,776,327, "High-Accuracy Placement Method Utilizing Double Pick and Place", issued August 17, 2004.
The Invention Explained
- Problem Addressed: The patent's background section notes that conventional automated pick-and-place machines often cannot achieve the high degree of placement accuracy (e.g., 1-5 microns) required for demanding applications, such as assembling optical communication components (’327 Patent, col. 1:39-49).
- The Patented Solution: The invention proposes a "double pick and place" method to enhance precision. Instead of moving a workpiece directly from an origin to a final target, the method first places the workpiece at a separate "intermediate location" (’327 Patent, col. 2:5-9). At this intermediate stage, the system can precisely measure the workpiece's actual position and orientation, calculate any error relative to a target, and then perform a corrected second pick-and-place operation to move the workpiece to the final "attach location" with much higher accuracy (’327 Patent, col. 2:15-28, Fig. 1).
- Technical Importance: This two-step process with an intervening measurement and correction step allows automated systems to compensate for positioning inaccuracies that accumulate over a single, long-distance movement, thereby enabling the high-precision assembly required for advanced microelectronics (’327 Patent, col. 1:45-49).
Key Claims at a Glance
- The complaint alleges infringement of "one or more claims" of the ’327 Patent without specifying which claims are asserted (Compl. ¶17). Independent claim 1 is representative of the core invention.
- Independent Claim 1 requires, among other elements:
- providing a first workpiece (e.g., a die) at an origination location.
- providing a second workpiece (e.g., a circuit body) with a target attach location.
- performing a "first place step" to move the first workpiece from the origination location to an "actual intermediate location," which differs from the target location by an "intermediate error deviation."
- performing a "second place step" to move the first workpiece from the "actual intermediate location" to an "actual attach location" on the second workpiece, which differs from the target attach location by an "attach error deviation."
III. The Accused Instrumentality
Product Identification
- The "MRSI-M3 Assembly Work Cell" (Compl. ¶12).
Functionality and Market Context
- The complaint alleges the MRSI-M3 is a "fully automated, ultra-high precision die-attach and epoxy dispensing tool" (Compl. ¶12). Its accused functionality involves a process where a pick tool moves a die from an origination location (e.g., a waffle pack) to an intermediate location on a vacuum surface. At this stage, the tool disengages, and the system "utilizes pattern recognition to obtain the coordinates of the die." The tool then reengages the die and moves it to a final attach location on a circuit body (Compl. ¶13). The system is described as being designed for high-speed movements while achieving placement accuracy of 3 microns or better (Compl. ¶¶13, 18).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
Claim Chart Summary
- The following table summarizes the infringement allegations for representative Claim 1 of the ’327 Patent based on the complaint's description of the MRSI-M3 Assembly Work Cell.
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a) providing a first workpiece positioned at an origination location different from a target intermediate location; | The MRSI-M3 uses a die (a "first workpiece") from a "waffle pack, Gel-Pak™, wafer, or tape and reel" (an "origination location"). | ¶13 | col. 2:6-15 |
| b) providing a second workpiece positioned at a work location and having a target attach location different from said target intermediate location and said origination location; | The die is moved to an "actual attach location located on a circuit body" (the "second workpiece"). | ¶13 | col. 2:6-15 |
| c) performing a first place step to displace said first workpiece from said origination location to an actual intermediate location... wherein said actual intermediate location... differs from said target intermediate location by an intermediate error deviation; | A pick tool "moves the die to an intermediate location and places the die onto a vacuum containing surface, at an actual intermediate location which is different than the origination location." | ¶13 | col. 2:15-21 |
| d) performing a second place step to displace said first workpiece from said actual intermediate location to an actual attach location on said second workpiece... | The pick tool "reengages the die and moves the die to an actual attach location located on a circuit body." The system uses pattern recognition to obtain coordinates at the intermediate location before this step. | ¶13 | col. 2:21-28 |
Identified Points of Contention
- Scope Questions: Claim 1 requires the existence of a "target intermediate location" and an "intermediate error deviation" measured against that target. The complaint alleges the accused device moves the die to an "intermediate location" and uses "pattern recognition to obtain the coordinates" (Compl. ¶13), but it does not explicitly allege that the device operates with reference to a pre-defined target intermediate location. The case may raise the question of whether simply placing a workpiece on an inspection stage for measurement meets the claim limitation of referencing a specific target location.
- Technical Questions: A key technical question will be how the accused device uses the coordinate data obtained at the intermediate stage. The patent teaches using this data to calculate a corrective "second place path" ('327 Patent, col. 8:26-29). The complaint does not specify whether the accused device uses the measured coordinates to correct a subsequent movement path, a central aspect of the patented invention.
V. Key Claim Terms for Construction
The Term: "target intermediate location"
- Context and Importance: This term appears central to defining the invention's two-step corrective process. Infringement may depend on whether the accused device is programmed with a specific, pre-determined coordinate for the intermediate placement (a "target"), or if it merely uses a non-specific inspection area. Practitioners may focus on this term because its construction could distinguish the patented method from a more generic two-step inspection process.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not extensively define the term, stating only that it is different from the origination and final attach locations (’327 Patent, col. 13:17-22), which could be argued to encompass any designated off-target point.
- Evidence for a Narrower Interpretation: The specification states that the "target intermediate location 30 is also predetermined by the practitioner" and "is specified by a set of reference coordinates" (’327 Patent, col. 6:29-34). This language suggests the "target" is a specific, pre-programmed point, not just a general area.
The Term: "intermediate error deviation"
- Context and Importance: This term quantifies the error that the invention is designed to correct. The dispute may turn on whether the accused system calculates an "error deviation" as defined in the patent—the difference between the actual intermediate position and the target intermediate position.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term is not explicitly defined in a glossary, potentially allowing an argument that it covers any measured variance from an ideal position.
- Evidence for a Narrower Interpretation: The specification explicitly describes the deviation as "the linear distance between the center of the target intermediate location 30 and the center of the actual intermediate location 34" as well as any angular difference (’327 Patent, col. 8:51-64). This ties the concept of "error" directly to a deviation from the "target intermediate location," suggesting a specific calculation is required.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. For inducement, it alleges that by selling the MRSI-M3, Defendant "actively and knowingly encouraged" infringement by third-party users with "specific intent" (Compl. ¶19). For contributory infringement, it alleges the accused product is not a staple article of commerce and is "not suitable for substantial noninfringing use" (Compl. ¶21).
- Willful Infringement: The complaint does not explicitly plead willfulness. However, it requests that the court find the case "exceptional" and award attorneys' fees pursuant to 35 U.S.C. § 285, which is often associated with findings of willful infringement or other litigation misconduct (Compl. p. 6, ¶F). The factual basis for this request is not detailed.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim scope: can the claim terms "target intermediate location" and "intermediate error deviation" be construed to read on the accused device's process of placing a workpiece on an inspection stage and measuring its coordinates, or do the claims require a specific, pre-programmed target location against which a precise error is calculated to correct a subsequent move?
- A key procedural question will be the impact of the IPR: how will the post-complaint IPR decision, which affirmed the patentability of the asserted claims against a challenge brought by the Defendant, influence the district court's view of the patent's validity and the tenability of any invalidity defenses raised in this litigation?
- An evidentiary question will be one of intent for indirect infringement: beyond the sale of a machine capable of performing the patented method, what evidence will Plaintiff present to prove that Defendant possessed the specific intent to encourage its customers to infringe, as required to sustain a claim for induced infringement?