DCT

1:10-cv-00603

NVIDIA Corp v. Scanner Tech Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:10-cv-00603, S.D.N.Y., 01/26/2010
  • Venue Allegations: Plaintiff NVIDIA alleges venue is proper because Defendant Scanner has committed acts within the judicial district, has established minimum contacts with the forum, and pursuant to 28 U.S.C. §§ 1391(b)-(c) and 1400(b).
  • Core Dispute: Plaintiff seeks a declaratory judgment that it does not infringe and is not liable for infringing U.S. Patent No. 7,653,237, that the patent's claims are invalid, and that it possesses an implied license to the patent.
  • Technical Context: The technology relates to automated, three-dimensional inspection systems used in semiconductor manufacturing to verify the placement and dimensions of solder balls on ball grid array (BGA) devices.
  • Key Procedural History: This declaratory judgment action arises from a long-standing dispute between Scanner, NVIDIA, and NVIDIA’s inspection equipment supplier, ICOS. The complaint alleges that Scanner previously sued NVIDIA for infringement of related patents, and that a prior Federal Circuit ruling found claims of parent patents to the one-in-suit to be invalid and not infringed by ICOS equipment. Scanner allegedly provided limited covenants-not-to-sue on older patents but refused to extend them to the newly issued '237 Patent, which NVIDIA alleges created a reasonable apprehension of suit.

Case Timeline

Date Event
1992-12-22 U.S. Patent No. 5,173,796 Issued
1996-11-12 U.S. Patent No. 5,574,668 Issued
1998-01-16 Earliest Priority Date for U.S. Patent No. 7,653,237
2000-06-06 U.S. Patent No. 6,072,898 Issued
2005-03-01 U.S. Patent No. 6,862,365 Issued
2005-07-05 U.S. Patent Nos. 6,915,006 and 6,915,007 Issued
2006-07-18 U.S. Patent No. 7,079,678 Issued
2006-08-01 U.S. Patent No. 7,085,411 Issued
2006-09-15 Scanner files lawsuit against NVIDIA in E.D. Texas
2008-06-19 Federal Circuit affirms judgment of invalidity/non-infringement in Scanner v. ICOS
2009-03-10 Scanner provides limited covenants-not-to-sue to ICOS and NVIDIA
2009-03-24 U.S. Patent No. 7,508,974 Issued
2009-08-04 U.S. Patent No. 7,570,798 Issued
2010-01-26 U.S. Patent No. 7,653,237 Issued
2010-01-26 Complaint for Declaratory Judgment Filed

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

U.S. Patent No. 7,653,237 - "Method of Manufacturing Ball Array Devices Using an Inspection Apparatus Having Two or More Cameras and Ball Array Devices Produced According to the Method"

The Invention Explained

  • Problem Addressed: The patent describes prior art methods for three-dimensional inspection of ball grid arrays (BGAs) as suffering from various drawbacks. For example, laser range finding was slow and prone to specular reflections; moiré interferometry suffered from low-contrast contour lines; structured light systems also suffered from specular reflections; and prior two-camera systems had a limited depth of focus or could not inspect fine-pitch BGAs ('237 Patent, col. 1:41-col. 2:25).
  • The Patented Solution: The invention proposes an inspection apparatus and method that uses at least two cameras to simultaneously capture different views of a BGA. A first camera captures a "bottom view" to determine the X and Y dimensions of the solder balls, while a second camera, using mirrors or prisms, captures one or more "side perspective views" ('237 Patent, col. 6:20-24, col. 6:35-42). By combining the data from these distinct views, the system can use triangulation to determine the Z-dimension (height and coplanarity) of the solder balls ('237 Patent, col. 2:10-15). The system is first calibrated using a transparent "reticle" with a precision pattern of dots to establish accurate world coordinates ('237 Patent, col. 5:8-14).
  • Technical Importance: This approach sought to improve the accuracy, speed, and versatility of BGA inspection, enabling the measurement of fine-pitch arrays without the errors or limitations associated with prior art techniques ('237 Patent, col. 2:26-31).

Key Claims at a Glance

  • The complaint seeks a declaratory judgment on "any claim of the '237 Patent" (Compl. ¶42). The patent contains multiple independent claims, including method claim 1 and device claim 34.
  • Independent Claim 1 includes the following essential elements:
    • providing a fixed optical imaging system comprising at least two cameras;
    • calibrating the system with a planar precision pattern disposed in a fixed position;
    • obtaining a single bottom view image of the leads using the calibrated system;
    • obtaining a single side view image of the leads using the calibrated system;
    • calculating an inspection result by combining information from the single bottom view image and the single side view image; and
    • selecting the ball array device as a manufactured product using the calculated inspection result.
  • The complaint does not specify which claims it believes are not infringed but makes a blanket assertion covering all claims.

III. The Accused Instrumentality

Product Identification

The complaint states that NVIDIA has been accused of infringement through its use of inspection devices from "ICOS VISION SYSTEMS CORPORATION N.V. and/or ICOS VISIONS SYSTEMS INC." (collectively, "ICOS") (Compl. ¶16).

Functionality and Market Context

The complaint characterizes the ICOS devices as "inspection equipment" used by NVIDIA (Compl. ¶¶16, 23, 37). The filing is a declaratory judgment action and therefore does not provide a detailed technical description of the ICOS equipment's functionality. The core of the dispute is whether NVIDIA's use of this third-party equipment gives rise to infringement liability for the '237 Patent's claims (Compl. ¶¶19, 21).

IV. Analysis of Infringement Allegations

As a declaratory judgment action filed by the accused infringer, the complaint asserts non-infringement rather than alleging infringement. It states that "NVIDIA has not infringed and is not now infringing either literally or by application of the doctrine of equivalents any claim of the '237 Patent" (Compl. ¶42). The complaint does not provide a claim chart or a detailed, element-by-element analysis to support its non-infringement position. No probative visual evidence provided in complaint.

Identified Points of Contention

The central infringement dispute, though not detailed in the complaint, will revolve around whether the ICOS inspection equipment used by NVIDIA practices each limitation of at least one claim of the '237 Patent.

  • Technical Questions: A key question for the court will be one of operational correspondence: does the ICOS equipment, in its normal operation, perform the specific steps of the patented method? For example, does it perform a calibration with a "planar precision pattern" and then capture both a "single bottom view image" and a "single side view image" to calculate an "inspection result" as required by claim 1?
  • Scope Questions: The dispute may raise questions about the scope of the claims. For example, does the ICOS equipment's method of combining image data fall within the scope of "combining information" as claimed? The complaint's reference to prior litigation suggests that the validity and scope of the patent family's claims have been previously contested (Compl. ¶22).

V. Key Claim Terms for Construction

  • The Term: "obtaining a single bottom view image ... and obtaining a single side view image" (from Claim 1)
  • Context and Importance: This limitation appears central to the claimed method. The patent distinguishes itself from prior art that required multiple images or moving light bands ('237 Patent, col. 2:1-9). Practitioners may focus on this term because the definition of "single" for each view could be a key point of dispute. NVIDIA may argue the ICOS equipment does not capture views in the specific manner claimed, while Scanner may argue for a broader interpretation that covers the ICOS system's operation.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the process generally, stating the apparatus "obtains what is known as a bottom image 50" and "obtains an image of a pair of side perspective views" ('237 Patent, col. 6:20-21, 6:35-36). This could support an interpretation where "single" refers to the acquisition event, even if the resulting data is complex or comprises multiple perspectives within one frame.
    • Evidence for a Narrower Interpretation: The claim language recites obtaining "a single bottom view image" and "a single side view image," distinctly. This phrasing, combined with the patent's criticism of prior art requiring "successive images" ('237 Patent, col. 2:3), could support a narrower construction requiring two distinct, non-composite images captured in a specific sequence or manner.

VI. Other Allegations

  • Indirect Infringement: The complaint seeks a declaration of non-liability for all forms of infringement, stating NVIDIA "has not and is not now inducing or contributing to the infringement of any claim of the '237 Patent" (Compl. ¶43). It does not, however, plead specific facts related to this issue beyond its general denial of liability.
  • Willful Infringement: While not a direct allegation, the complaint's extensive discussion of the prior litigation history, communications with Scanner, and Scanner's alleged refusal to grant a covenant-not-to-sue on the '237 patent establishes a clear pre-suit knowledge of the patent family (Compl. ¶¶17-21, 29, 38). This history would be relevant to any future willfulness claims made by Scanner against NVIDIA. NVIDIA also requests a declaration that the case is exceptional under 35 U.S.C. § 285 (Compl., Prayer for Relief ¶4).

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

This declaratory judgment action appears poised to turn on legal and factual questions stemming from the parties' extensive litigation history.

  • A primary legal issue will be one of preclusion and license: does the prior Federal Circuit judgment regarding parent patents, or the subsequent covenant-not-to-sue on a portion of the patent family, create an implied license or otherwise estop Scanner from asserting the newly-issued '237 Patent against NVIDIA's use of the same ICOS equipment?
  • A core technical issue will be one of infringement and scope: assuming the '237 Patent is valid and enforceable against NVIDIA, does the ICOS inspection equipment actually practice the specific method of calibration and multi-view imaging recited in the claims, or is there a material difference in technical operation that places it outside the claim scope?
  • A threshold jurisdictional question, inherent in all DJ actions, will be whether Scanner's conduct created a sufficient "actual and justiciable controversy" to give NVIDIA standing to sue for declaratory relief on a patent that was issued on the very same day the complaint was filed.