DCT

1:10-cv-00604

ICOS Vision Systems Corp NV v. Scanner Tech Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:10-cv-00604, S.D.N.Y., 01/26/2010
  • Venue Allegations: Plaintiff alleges venue is proper based on Defendant having committed acts within the judicial district and established minimum contacts, and notes extensive prior litigation between the parties occurred in the same district.
  • Core Dispute: Plaintiff seeks a declaratory judgment that its products do not infringe U.S. Patent No. 7,653,237, that the patent is invalid, and that Plaintiff has an implied license to the patent.
  • Technical Context: The technology concerns automated optical inspection systems used for quality control in semiconductor manufacturing, specifically for measuring the three-dimensional characteristics of ball grid arrays (BGAs).
  • Key Procedural History: This declaratory judgment action arises from a long and contentious history between the parties. A prior lawsuit resulted in a 2008 Federal Circuit decision affirming a district court judgment that claims of patents related to the current patent-in-suit were invalid and not infringed by Plaintiff. Defendant subsequently provided Plaintiff a covenant-not-to-sue on a portfolio of older patents but allegedly refused to extend it to later-issued "continuation patents," including the one at issue here, and has allegedly threatened litigation against Plaintiff and its customers.

Case Timeline

Date Event
1998-01-16 '237 Patent Priority Date
2008-06-19 Federal Circuit affirms invalidity/non-infringement of related patents
2008-09-19 Federal Circuit mandate issues in prior litigation
2009-03-10 Defendant provides limited covenant-not-to-sue on parent patents
2010-01-26 U.S. Patent No. 7,653,237 Issues
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”

  • Patent Identification: U.S. Patent No. 7,653,237, issued January 26, 2010 (’237 Patent).

The Invention Explained

  • Problem Addressed: The patent describes prior art methods for three-dimensional inspection of electronic components like Ball Grid Arrays (BGAs)—such as laser scanning or moiré interferometry—as suffering from slow inspection times, errors caused by specular reflections from smooth solder balls, and limited depth of focus that restricts the types of BGAs that can be inspected accurately (’237 Patent, col. 1:31-col. 2:21).
  • The Patented Solution: The invention proposes a method and apparatus that uses at least two cameras to perform 3D inspection. A first camera captures a direct bottom-view image to determine the X-Y position of the solder balls, while a second camera, using mirrors or prisms, captures one or more side-perspective views of the same balls (’237 Patent, Abstract; col. 5:16-34). By processing and combining the information from these different perspectives, the system can triangulate the location and dimensions of the BGA balls in three dimensions (X, Y, and Z) to assess critical quality parameters like coplanarity (’237 Patent, Abstract; Fig. 1A).
  • Technical Importance: This multi-view, multi-camera approach was intended to provide a more accurate, faster, and more versatile system for inspecting a wider range of BGA sizes and pitches, a critical step for quality assurance in high-volume semiconductor packaging (’237 Patent, col. 2:27-31).

Key Claims at a Glance

  • The complaint seeks a declaratory judgment regarding all claims of the patent (Compl. ¶39). Independent claim 1 is representative of the asserted method.
  • Essential elements of independent claim 1:
    • providing a fixed optical imaging system comprising at least two cameras;
    • calibrating the fixed optical imaging 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 assertion of dependent claims but seeks judgment on the entire patent.

III. The Accused Instrumentality

Product Identification

As this is a declaratory judgment action, the "accused instrumentality" is the Plaintiff's own technology. The complaint refers generally to "inspection equipment manufactured by ICOS" (Compl. ¶20) and notes that in prior litigation over related patents, Defendant accused ICOS's "CyberSTEREO product" of infringement (Compl. ¶29).

Functionality and Market Context

The complaint does not provide specific technical details about the operation of ICOS's products. It alleges that Defendant has threatened to sue ICOS and its customers, including NVIDIA, based on the belief that "ICOS practices technologies that are covered by Scanner's continuation patents, including the '237 Patent" (Compl. ¶35(a)). The complaint frames the dispute around ICOS's right to manufacture, use, and sell its inspection equipment without threat of litigation from Defendant (Compl. ¶¶ 22, 23, 39).

IV. Analysis of Infringement Allegations

The declaratory judgment complaint does not make specific infringement allegations or map features of the ICOS products to the claim elements. It provides a general denial of infringement for all claims of the '237 Patent (Compl. ¶39). Therefore, a detailed claim chart analysis based on the complaint is not possible.

No probative visual evidence provided in complaint.

Identified Points of Contention

  • Divided Infringement: Claim 1 is a method of manufacturing that concludes with the step of "selecting the ball array device as a manufactured product." A central question may be whether ICOS, as a provider of inspection equipment, performs this final step, or if the step is performed by its customers who use the equipment to sort components. This raises the possibility that no single entity performs all steps of the claimed method, which may be a basis for a non-infringement argument.
  • Scope Questions: The complaint's focus on the invalidity of related patents (Compl. ¶20) suggests that the patentability and scope of the '237 Patent's claims over the prior art will be a major issue. The court may need to determine if the claims are meaningfully different from those previously litigated or if they cover subject matter already found to be obvious or not infringed.

V. Key Claim Terms for Construction

  • The Term: "selecting the ball array device as a manufactured product" (claim 1)
  • Context and Importance: This final method step is critical for determining who, if anyone, directly infringes. Practitioners may focus on this term because ICOS, as an equipment vendor, may argue that it only provides a tool and an inspection result, while its customer is the party that actually "selects" the device for use or rejection, thus creating a divided infringement scenario.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent does not appear to explicitly define the term. A patentee might argue the term should be given its plain and ordinary meaning, where generating an inspection result that directly dictates the sorting of a device into "pass" or "fail" categories constitutes "selecting."
    • Evidence for a Narrower Interpretation: The claim is for a "method of manufacturing." An accused infringer could argue that this context requires the "selecting" step to be part of the physical manufacturing and sorting line, an activity performed by the component manufacturer (ICOS's customer), not the inspection tool itself. The specification describes providing a "result signal to a part handler" (’237 Patent, col. 10:56-57), which could be argued as distinct from the act of selection itself.

VI. Other Allegations

Indirect Infringement

The complaint preemptively denies any liability for induced or contributory infringement (Compl. ¶40). Should Defendant counterclaim, it may allege that ICOS induces its customers to infringe by providing equipment with instructions and user manuals that teach the performance of the patented method.

Willful Infringement

Willfulness is not alleged by a patentee, as this is a declaratory judgment action. However, the complaint details a long history of litigation and communication between the parties, including alleged threats by Defendant regarding the '237 patent family (Compl. ¶¶ 16, 19, 35). This history establishes that both parties had pre-suit knowledge of the patent and the dispute, which would be a key element in any future willfulness counterclaim by Defendant.

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

  • A primary legal question will be one of implied license: Did the Defendant's 2009 covenant-not-to-sue on a family of parent patents create an implied license protecting the Plaintiff from infringement claims under the '237 patent, a later-issued continuation patent, as alleged in Count 3 of the complaint?
  • A key infringement question will be one of divided performance: Can the Plaintiff, a manufacturer of inspection equipment, be found to directly infringe a "method of manufacturing" claim that includes a final step of "selecting" a product, or is performance of the claimed method necessarily split between the Plaintiff and its customers?
  • A core validity question, prompted by the extensive litigation history cited in the complaint, will be one of patentable distinction: Are the claims of the '237 Patent valid and enforceable in light of the prior art and the prior judicial findings of invalidity and non-infringement against closely related patents in the same family?