DCT

5:19-cv-00072

Nuvotronics Inc v. Componentzee LLC

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:19-cv-00072, E.D.N.C., 02/28/2019
  • Venue Allegations: Venue is alleged to be proper as Defendants reside in the district and a substantial part of the events giving rise to the claims occurred there.
  • Core Dispute: Plaintiff seeks a declaratory judgment that U.S. Patent No. 10,128,601 is invalid for failure to meet written description and enablement requirements, is unenforceable due to inequitable conduct during prosecution, and requires correction of inventorship.
  • Technical Context: The technology relates to microelectronic structures for chip-scale packages, specifically addressing the management of mechanical stress caused by mismatched coefficients of thermal expansion (CTE) between different materials.
  • Key Procedural History: The complaint details a complex history between the parties, who are a company and its former employee/consultant. Plaintiff Nuvotronics alleges that Defendant Beroz, while employed by Nuvotronics, improperly filed a patent application that copied claims from a Nuvotronics application, misstated the correct priority date to the U.S. Patent and Trademark Office to overcome a rejection, and omitted Nuvotronics employees as co-inventors, leading to the issuance of the patent-in-suit.

Case Timeline

Date Event
2016-04-26 Priority Date: Provisional '807 Application filed
2016-06-01 Defendant Beroz hired as consultant by Plaintiff Nuvotronics
2016-08-01 Defendant Beroz becomes at-will employee of Plaintiff Nuvotronics
2017-04-26 Nuvotronics files non-provisional '188 Application
2017-07-17 Nuvotronics files non-provisional '531 Application
2017-07-31 Defendant Beroz’s employment with Nuvotronics terminates
2017-12-06 Nuvotronics amends '531 App, disclaiming priority to '807 App
2018-02-13 Defendant ComponentZEE files '794 Application
2018-02-23 Nuvotronics assigns '807 App back to Defendant Beroz
2018-11-13 U.S. Patent No. 10,128,601 issues from '794 Application
2019-02-28 Complaint for Declaratory Judgment filed

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

U.S. Patent No. 10,128,601 - FLUID PRESSURE ACTIVATED ELECTRICAL CONTACT DEVICES AND METHODS

  • Patent Identification: U.S. Patent No. 10,128,601, issued November 13, 2018.

The Invention Explained

  • Problem Addressed: The complaint alleges the invention addresses issues related to the coefficient of thermal expansion (CTE) mismatch between different materials in an antenna array, such as copper elements and silicon integrated circuits (Compl. ¶12). The patent's background section separately describes the high cost and reliability challenges of testing semiconductor chips, which requires making simultaneous, reliable electrical contact with thousands of small electrodes on a wafer ('601 Patent, col. 2:5-35).
  • The Patented Solution: The patent’s claims at issue describe a microelectronic structure that compensates for thermal expansion. This is achieved using a plurality of separate "substrate tiles" arranged in a grid, which are connected by "spring structures" that span the gaps between them, allowing the tiles to move relative to one another to absorb thermal stress (Compl. ¶39; ’601 Patent, col. 25:58-col. 26:11). The patent’s detailed description, however, is primarily focused on a different mechanism: a contactor device that uses fluid pressure directed into micro-channels to actuate flexible membranes, thereby creating uniform and controllable contact force for testing semiconductor devices ('601 Patent, col. 2:45-66).
  • Technical Importance: Managing CTE mismatch is a fundamental challenge in semiconductor packaging, as failure to do so can lead to mechanical stress, device failure, and reduced reliability, particularly in complex systems integrating diverse materials (Compl. ¶10, ¶12).

Key Claims at a Glance

  • The complaint challenges the validity and enforceability of the patent’s claims generally, with a specific focus on the subject matter of independent claim 1 and method claim 18 (Compl. ¶39, ¶41).
  • Independent Claim 1 of the ’601 Patent includes the following essential elements:
    • A microelectronic structure for CTE compensation comprising a plurality of substrate tiles arranged in a common plane to form a grid.
    • A gap between each pair of adjacent tiles.
    • A spring structure spanning the gap and connecting the adjacent tiles, configured to permit relative movement to compensate for thermal expansion/contraction.
    • A respective opening extending through each substrate tile from the upper to the lower surface.
    • An electrically conductive post extending through each opening.
    • A device layer attached above the common plane of the tiles.

III. The Accused Instrumentality

This is a declaratory judgment action in which the Plaintiff, Nuvotronics, seeks a declaration of invalidity and unenforceability. The complaint does not accuse a specific Defendant product of infringement. Rather, it alleges that Defendants have created a reasonable apprehension of suit against Nuvotronics’s own "current or future Nuvotronics product or service" (Compl. ¶40, ¶45). The complaint does not provide sufficient detail for analysis of any specific Nuvotronics product or service.

IV. Analysis of Invalidity and Improper Prosecution Allegations

The complaint does not allege infringement. Its central premise is that the '601 Patent is invalid and unenforceable because its claims were improperly obtained. A key allegation, supported by visual evidence, is that Defendant ComponentZEE copied claims from Nuvotronics's own patent application. The complaint presents a table comparing amended claim 1 of Nuvotronics’s ‘531 Application with the version of claim 21 that was submitted in the application that became the ‘601 Patent (Compl. pp. 9-10). This comparison is summarized below.

  • '601 Patent Allegations of Claim Copying
Claim Element (from '601 Patent, Claim 1) Allegedly Copied Language (from Nuvotronics's '531 App) Complaint Citation Patent Citation
An microelectronic structure having CTE compensation for use in wafer-level and chip-scale packages, comprising a plurality of substrate tiles each having a generally planar upper surface... "An microelectronic structure having CTE compensation for use in wafer-level and chip-scale packages, comprising a plurality of substrate tiles each having a generally planar upper surface..." ¶29 col. 25:58-63
...a spring structure spanning the gap and connecting the adjacent tiles, the spring structure configured to permit movement of the adjacent tiles relative to one another... "...a spring structure spanning the gap and connecting the adjacent tiles, the spring structure configured to permit movement of the adjacent tiles relative to one another..." ¶29 col. 25:67-col. 26:2
...a respective opening extending through each substrate tile from the upper surface to an opposing lower surface; an electrically conductive post extending through each opening from the upper surface to the lower surface... "...a respective opening extending through each substrate tile from the upper surface to an opposing lower surface; an electrically conductive post extending through each opening from the upper surface to the lower surface..." ¶29 col. 26:3-8
...and a device layer attached above the upper surfaces of the common plane. "...and a device layer attached above the upper surfaces of the common plane..." (The '531 App included further limitations not present in claim 1 of the '601 Patent). ¶29 col. 26:9-11
  • Identified Points of Contention:
    • Priority and Double Patenting: A central dispute involves Defendants’ claim to the 2016 priority date of the '807 application for their '794 application (which issued as the '601 Patent). The complaint alleges this was improper because the '794 application is a continuation of Nuvotronics’s '531 application, in which Nuvotronics had expressly disclaimed priority to the '807 application (Compl. ¶19, ¶24). This raises the question of whether the priority chain was broken, an issue which the complaint alleges was material to overcoming a double-patenting rejection (Compl. ¶23-24).
    • Inventorship: The complaint raises a factual dispute over whether Defendant Beroz was the sole inventor. It alleges that the claims of the '601 Patent were copied from a Nuvotronics application that named several Nuvotronics employees as co-inventors, and that those employees contributed to the conception of the claimed subject matter (Compl. ¶32, ¶35).
    • Section 112 Validity: The complaint raises a validity challenge under 35 U.S.C. § 112, questioning whether the patent’s specification provides adequate written description and enablement for the claims. Specifically, it alleges that the specification fails to disclose an "opening extending through substrate tiles with an electrically conductive post extending through each opening" as required by the claims (Compl. ¶39).

V. Key Claim Terms for Construction

  • The Term: "an electrically conductive post extending through each opening from the upper surface to the lower surface"
  • Context and Importance: This term is critical to the Plaintiff’s invalidity challenge under 35 U.S.C. § 112. The complaint alleges that the '601 Patent specification completely fails to describe or enable this structure, which is a required element of the independent claims (Compl. ¶39). The viability of the patent could depend on whether the specification provides adequate support for this limitation.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent does not appear to explicitly define this term. A party arguing for a broad interpretation might contend that the term should be given its plain and ordinary meaning to one of skill in the art of semiconductor packaging, and that the specific method of its creation need not be detailed in the specification.
    • Evidence for a Narrower Interpretation: The complaint's allegation of a lack of written description suggests that the specification does not contain text or figures corresponding to this claim element (Compl. ¶39). A review of the patent shows that the specification's text and figures are predominantly directed to "fluid pressure activated" contactors (e.g., '601 Patent, Abstract, Figs. 2-15) rather than the tiled CTE structure with conductive posts recited in the claims. This apparent disconnect between the specification and the claims may support an argument that the patent fails to provide descriptive support for the term.

VI. Other Allegations

  • Correction of Inventorship (Count I): The complaint alleges that because the claims of the '601 Patent were copied from Nuvotronics's '531 Application, the inventors listed on that application (including Kenneth Vanhille, Aaron C. Caba, Jared W. Jordan, and others) contributed to the conception of the claimed invention and must be added as co-inventors to the '601 Patent under 35 U.S.C. § 256 (Compl. ¶32-35).
  • Invalidity (Count II): The complaint seeks a declaratory judgment that the claims of the '601 Patent are invalid under 35 U.S.C. § 112 for failing to meet the written description and enablement requirements. The basis is the alleged failure of the specification to disclose or teach one of skill in the art how to make and use the claimed structure, particularly the "opening" and "electrically conductive post" elements (Compl. ¶39).
  • Unenforceability / Inequitable Conduct (Count III): The complaint alleges the '601 Patent is unenforceable due to inequitable conduct. The allegations center on Defendants and their patent attorney knowingly making affirmative material misrepresentations to the USPTO with an intent to deceive. The specific alleged misrepresentation was that their application was entitled to an earlier priority date than Nuvotronics's co-pending application, which was allegedly done to overcome a double-patenting rejection (Compl. ¶43-44). The complaint also alleges the withholding of material information related to the true inventorship and ownership of the claimed subject matter (Compl. ¶43).

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

  • A core issue will be one of patent prosecution integrity: Can Plaintiff demonstrate by clear and convincing evidence that Defendants, with intent to deceive, made material misrepresentations to the USPTO regarding the '601 Patent's priority date? The resolution of this question regarding inequitable conduct could render the entire patent unenforceable.
  • A key factual question will be one of inventorship: Does the evidence show that Nuvotronics employees made a significant contribution to the conception of the invention defined in the '601 Patent's claims, which were allegedly copied from a Nuvotronics application that named them as inventors? This will determine whether inventorship must be corrected.
  • A dispositive validity question will be one of written description: Does the '601 Patent's specification, with its focus on fluid-pressure actuators, contain sufficient disclosure to support the appended claims directed to a CTE-compensation structure with tiles, springs, and conductive posts? A finding of a lack of written description would invalidate the challenged claims.