ASM Assembly Systems Weymouth Ltd v. QTS Engineering Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: ASM Assembly Systems Weymouth Ltd. (England and Wales) and ASM Assembly Systems LLC (Delaware)
  • Defendant: QTS Engineering, Inc. (Massachusetts)
  • Plaintiff’s Counsel: Nutter McClennen & Fish LLP; Renner Otto
• Case Identification: 1:18-cv-11214, D. Mass., 06/11/2018
• Venue Allegations: Venue is based on Defendant QTS Engineering, Inc. being a resident of the district and having offered the accused product for sale in the district.
• Core Dispute: Plaintiff alleges that Defendant’s Apshen Stencil Foil Adapter System infringes patents related to frames for holding and tensioning printing screens used in electronics manufacturing.
• Technical Context: The technology concerns stencil frames used in the screen-printing of solder paste onto circuit boards, a fundamental process in surface-mount technology for electronics assembly.
• Key Procedural History: The complaint states this is the second patent infringement action between ASM-affiliated entities and QTS concerning the same patents, referencing a pending related case (C.A. No. 16-10919-LTS). The complaint also alleges that QTS has had notice of the '545' and '929' patents since at least December 2014, a fact that may be relevant to the claim of willful infringement.

Case Timeline

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

U.S. Patent No. 8,490,545

• Patent Identification: U.S. Patent No. 8,490,545, titled "PRINTING SCREENS, FRAMES THEREFOR AND PRINTING SCREEN UNITS," issued July 23, 2013.
• The Invention Explained:
  • Problem Addressed: The patent describes issues with prior art demountable printing screens (stencils), which are often thin, unsupported metal sheets. Their razor-sharp edges present a safety hazard, and their fragile nature makes them prone to damage during handling and storage ('545 Patent, col. 2:1-8).
  • The Patented Solution: The invention is a "printing screen unit" where a frame is attached to the edges of the printing screen. This frame is designed to be "substantially rigid" when handled (the "untensioned state") but uniquely "allows for relative movement" of its sides when mounted in a separate, external tensioning machine ('545 Patent, Abstract; col. 15:10-27). This dual-state functionality is achieved through interface members and corner pieces that protect the screen's edges while still permitting the screen to be properly tensioned for printing ('545 Patent, Fig. 10(d)).
  • Technical Importance: This approach improves the durability, safety, and reusability of printing stencils while also enabling the use of alternative materials like plastics, which were previously unsuitable due to the forces of direct tensioning ('545 Patent, col. 2:25-30; col. 6:7-10).
• Key Claims at a Glance:
  • The complaint asserts independent claim 1 (Compl. ¶26).
  • Claim 1 requires:
    • A printing screen unit with a printing screen (a sheet with attachment elements) and a frame.
    • The frame includes pairs of "interface members" and "corner pieces" coupling their ends.
    • The frame holds the screen "captive in an untensioned state" and is "substantially rigid" when untensioned.
    • Crucially, the frame itself has no mechanism to create tension; it is tensioned by "external tensioning mechanisms separate to the frame."
    • The frame structure "allows for relative movement" of the interface members when external tension is applied to tension the screen.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 8,904,929

• Patent Identification: U.S. Patent No. 8,904,929, titled "PRINTING SCREENS, FRAMES THEREFOR AND PRINTING SCREEN UNITS," issued December 9, 2014. This patent is a continuation of the application that led to the '545 Patent and shares a common specification.
• The Invention Explained:
  • Problem Addressed: The patent addresses the same problems of fragility and handling safety in demountable printing screens as the '545 Patent ('929 Patent, col. 2:5-16).
  • The Patented Solution: This patent claims a specific structural configuration for the interface members of the printing screen unit. The claimed interface member includes an "attachment section" for the screen and a separate "engagement section" for the external tensioning mechanism ('929 Patent, col. 3:44-48). The claim specifically requires the "engagement surface" to be "disposed outwardly" of the screen's edge and "inclined outwardly," creating a hook-like feature for the tensioning mechanism to grab ('929 Patent, col. 15:46-52).
  • Technical Importance: This specific geometry provides a defined and robust method for an external machine to engage the frame and apply uniform tension to the printing screen.
• Key Claims at a Glance:
  • The complaint asserts independent claim 1 (Compl. ¶38).
  • Claim 1 requires:
    • A printing screen unit with a screen and a rectangular frame.
    • The frame's interface members have an "attachment section" and an "engagement section."
    • The attachment section has a "first, lower body part and a second, upper body part" defining a slot for the screen's edge.
    • The engagement section has an "engagement surface" that is both "disposed outwardly of the respective edge of the sheet" and "inclined outwardly from a free edge."
    • The frame allows for "relative movement" of its members when tensioned by external mechanisms.
  • The complaint does not explicitly reserve the right to assert dependent claims.

Multi-Patent Capsule: U.S. Patent No. 9,632,650

• Patent Identification: The complaint identifies U.S. Patent No. 9,632,650, issued April 18, 2017, and alleges it is entitled "PRINTING SCREENS, FRAMES THEREFOR AND PRINTING SCREEN UNITS" (Compl. ¶21). Public records for U.S. Patent No. 9,632,650 indicate a different title ("Command Searching Enhancements") and assignee (Microsoft Technology Licensing, LLC). This discrepancy, likely a typographical error in the complaint, creates an ambiguity that prevents a detailed technical analysis of this patent based on the provided documents.
• Technology Synopsis: The complaint does not provide sufficient detail for an independent analysis of the technology. Based on the title alleged in the complaint and its assertion alongside the '545 and '929 patents, it is presumably directed to related technology for printing screen frames.
• Asserted Claims: The complaint asserts at least claim 1 (Compl. ¶49).
• Accused Features: The Apshen Frame is accused of infringing this patent (Compl. ¶49).

III. The Accused Instrumentality

• Product Identification: The accused instrumentality is the "Apshen Stencil Foil Adapter System," referred to as the "Apshen Frame" (Compl. ¶10).
• Functionality and Market Context: The complaint alleges the Apshen Frame is a stencil frame used in automated stencil printers for electronics manufacturing (Compl. ¶10). It is described on Defendant's website as being "designed for use with the 'DEK® VectorGuard® High Tension stencil frame'" (Compl. ¶10). The complaint further alleges that the Apshen Frame is "specially adapted for use with stencil foil printing screens" and that there is "no other substantial use" for the product (Compl. ¶12).
  No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint repeatedly references a "chart attached as Exhibit D" that purportedly shows "where each element of claim 1 is present in the Apshen Frame" for each of the asserted patents (Compl. ¶¶ 26, 38, 49). However, this exhibit was not filed with the complaint. As a result, the infringement allegations are presented here in narrative form based on the complaint's text.

The central infringement theory is that the Apshen Frame, either by itself or when combined with a stencil foil by an end-user, meets all the limitations of the asserted claims. The complaint alleges direct infringement by Defendant for making, using, and selling the Apshen Frame (Compl. ¶¶ 26, 38, 49).

In parallel, the complaint pleads theories of indirect infringement. It alleges that to the extent QTS sells the Apshen Frame without a stencil foil, it actively induces its customers to directly infringe by combining the frame with a foil, knowing this combination is infringing (Compl. ¶¶ 27, 39, 50). It also alleges contributory infringement, stating that the Apshen Frame is a material component of the patented invention, is not a staple commodity, and has no substantial non-infringing use (Compl. ¶¶ 29, 41, 52).

• Identified Points of Contention:
  • Scope Questions: A primary issue for the court will be whether the Apshen Frame satisfies the functional limitations of the claims. For the '545 Patent, does the Apshen Frame possess the dual characteristics of being "substantially rigid when in the untensioned state" while also allowing for "relative movement" of its sides when tension is applied externally?
  • Technical Questions: For the '929 Patent, a key factual question is whether the Apshen Frame is constructed with the specific "outwardly... inclined" engagement surface required by claim 1. The complaint provides no specific factual allegations or evidence to demonstrate how the accused product meets this or other technical limitations, relying instead on the missing Exhibit D.

V. Key Claim Terms for Construction

'545 Patent

• The Term: "substantially rigid when in the untensioned state, but allows for relative movement ... by a tension applied by external tensioning mechanisms" (from claim 1)
• Context and Importance: This phrase captures the core functional duality of the invention. The infringement analysis will likely depend on the degree of rigidity and movement the Apshen Frame exhibits. Practitioners may focus on this term because it is a functional limitation that is not defined by pure structure, making its scope subject to debate.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification describes the frame as presenting a "substantially rigid frame when handled, but allow[ing] for relative movement of respective pairs of the interface members" when tensioned, suggesting the terms are meant to be understood by their function rather than a specific structure ('545 Patent, col. 15:11-16).
  • Evidence for a Narrower Interpretation: The patent discloses specific embodiments, such as corner pieces with tongue-and-slot mechanisms (Fig. 10(f)), that explicitly enable this movement. A party might argue that the term's scope should be informed by or limited to these disclosed mechanisms that achieve the claimed function ('545 Patent, col. 14:35-58).

'929 Patent

• The Term: "engagement surface ... disposed outwardly of the respective edge of the sheet and inclined outwardly from a free edge" (from claim 1)
• Context and Importance: This term defines the specific geometry of the interface between the claimed frame and the external tensioning machine. Infringement will require a direct structural correspondence in the Apshen Frame.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification describes the outwardly inclined surface as defining a "hook arrangement" ('929 Patent, col. 8:60-63). The use of "hook arrangement" could be argued to encompass a range of structures that perform a hooking function, not just the precise angle shown in the figures.
  • Evidence for a Narrower Interpretation: Claim 1 is highly specific, requiring the surface to be both "disposed outwardly" and "inclined outwardly." Figure 1(c), element 28, illustrates a very distinct profile. A party could argue that this detailed language, combined with the drawing, limits the claim to a structure with this specific dual-outward geometry.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement by asserting QTS sells the Apshen Frame knowing that its intended use with a stencil foil directly infringes the patents (Compl. ¶¶ 27, 39, 50). Contributory infringement is alleged on the basis that the Apshen Frame is a specially adapted component for practicing the invention and has no substantial non-infringing use (Compl. ¶¶ 29, 41, 52).
• Willful Infringement: The complaint alleges willfulness based on QTS’s alleged pre-suit knowledge of the '545 and '929 patents, stating QTS has been aware of them "since at least December 2014" (Compl. ¶¶ 17, 20, 31, 43). Willfulness for the '650' patent is also alleged (Compl. ¶54).

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

• A core issue will be one of functional scope: Can the phrase "substantially rigid ... but allows for relative movement" in the '545 patent be construed to read on the specific properties of the accused Apshen Frame? The resolution will depend on evidence of how the accused product behaves both during handling and under tension.
• A key evidentiary question will be one of structural correspondence: Does the Apshen Frame contain the specific, outwardly disposed and outwardly inclined "engagement surface" required by claim 1 of the '929 patent? Without the claim chart exhibit referenced in the complaint, the factual basis for this allegation is presently unclear.
• A procedural question arises from the ambiguous identification of the '650 patent. The discrepancy between the patent number and the title cited in the complaint will need to be resolved, likely through an amended pleading, before a substantive analysis of infringement for that patent can proceed.