Helix Microinnovations LLC v. Marubeni America Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Helix Microinnovations LLC (DE)
  • Defendant: Marubeni America Corporation (NY)
  • Plaintiff’s Counsel: Rabicoff Law LLC
• Case Identification: 1:24-cv-06394, S.D.N.Y., 08/23/2024
• Venue Allegations: Venue is asserted on the basis that Defendant maintains an established place of business in the Southern District of New York and has allegedly committed acts of infringement in the district.
• Core Dispute: Plaintiff alleges that Defendant infringes a patent related to methods and apparatus for fabricating Chip-on-Board (COB) semiconductor modules.
• Technical Context: The technology concerns manufacturing processes for electronic modules, specifically techniques for mounting unpackaged semiconductor die onto printed circuit boards to reduce cost and enable the use of partially defective components.
• Key Procedural History: The complaint does not mention any prior litigation, inter partes review (IPR) proceedings, or licensing history related to the patent-in-suit.

Case Timeline

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

U.S. Patent No. 7,238,550 - Methods and apparatus for fabricating Chip-on-Board modules, issued July 3, 2007

The Invention Explained

• Problem Addressed: The patent describes an "ongoing need" for low-cost semiconductor devices and methods to utilize "partially-defective" semiconductor chips that would otherwise be wasted (ʼ550 Patent, col. 2:13-17). A specific manufacturing challenge identified is the failure of chips during high-temperature testing due to the difference in thermal expansion coefficients between the semiconductor die and the circuit board to which it is mounted (ʼ550 Patent, col. 2:8-12).
• The Patented Solution: The invention proposes a method for fabricating Chip-on-Board modules where an unpackaged die is mounted to a printed circuit board (PCB) using "selectively settable liquids," such as UV-curable adhesives (ʼ550 Patent, col. 3:62-66). A ring of this material is first hardened around the die to hold it in place, which facilitates subsequent steps like attaching bonding wires (ʼ550 Patent, col. 4:12-20). A key aspect is that the material placed directly between the die and the PCB can remain in a liquid or less-cured state to act as a physical and thermal buffer, while a second layer of material is later applied to capture and protect the delicate bonding wires (ʼ550 Patent, col. 4:26-34; col. 11:1-4).
• Technical Importance: This multi-step curing process was designed to improve manufacturing yields by securing the die for automated wire bonding while mitigating thermal stress, thereby making the use of lower-cost unpackaged die more viable in mass production (ʼ550 Patent, col. 1:56-65).

Key Claims at a Glance

• The complaint asserts "one or more claims" of the '550 Patent without specifying which ones (Compl. ¶11). Independent claim 1 is a representative method claim.
• Independent Claim 1:
  • mounting unpackaged die using a first layer of selectively-settable material;
  • hardening a ring of said first layer of selectively-settable material around a periphery said unpackaged die;
  • covering said first layer of selectively-settable material with a second layer of selectively-settable material; and
  • capturing bonding wires connecting said unpackaged die to a printed circuit board in said second layer of selectively-settable material.
• The complaint does not explicitly reserve the right to assert dependent claims, but refers generally to the "Exemplary '550 Patent Claims" (Compl. ¶13).

III. The Accused Instrumentality

Product Identification

The complaint does not name any specific accused products, methods, or services. It refers generally to "Defendant products identified in the charts incorporated into this Count" and "Exemplary Defendant Products" (Compl. ¶11, ¶13).

Functionality and Market Context

The complaint does not provide sufficient detail for analysis of the accused instrumentality's functionality. It alleges only that the "Exemplary Defendant Products practice the technology claimed by the '550 Patent" (Compl. ¶13). No allegations are made regarding the products' commercial importance or market position.

IV. Analysis of Infringement Allegations

The complaint alleges direct infringement by incorporating by reference claim charts contained in an Exhibit 2, which is not attached to the publicly filed complaint (Compl. ¶13-14). The complaint itself contains no specific factual allegations mapping any feature of an accused product to the elements of any patent claim. The narrative infringement theory is limited to the conclusory statement that the "Exemplary Defendant Products incorporated in these charts satisfy all elements of the Exemplary '550 Patent Claims" (Compl. ¶13).

No probative visual evidence provided in complaint.

• Identified Points of Contention:
  • Pleading Sufficiency: A primary legal question may be whether the complaint, which relies entirely on an unattached exhibit for its infringement contentions, provides sufficient factual detail to state a plausible claim for relief under the Twombly/Iqbal pleading standard.
  • Technical Questions: Once the accused processes are identified, a central technical question will be whether they utilize a multi-layer, selectively hardened material as required by the claims. Specifically, the inquiry will focus on whether a first hardened ring is used to position the die, a second distinct layer is used to capture bonding wires, and if a material between the die and board remains less cured to act as a buffer.

V. Key Claim Terms for Construction

• The Term: "selectively-settable material" (from Claim 1)
• Context and Importance: This term is the technological core of the asserted claims. Its construction will define the scope of the invention, determining whether it covers a broad range of modern electronics adhesives or is limited to materials with the specific multi-stage hardening properties described in the patent. Practitioners may focus on this term because the infringement analysis will depend on whether Defendant's manufacturing adhesives meet the functional requirements implied by the term.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claims do not restrict the material to a specific chemical composition. The specification introduces the term with the non-limiting example "such as adhesives made by Dymax Corporation" (ʼ550 Patent, col. 3:64-66), which may support an interpretation covering various types of industrial adhesives.
  • Evidence for a Narrower Interpretation: The specification repeatedly describes the material's specific functions: it can be partially hardened (e.g., a ring) while other portions remain liquid to serve as a "thermal and physical buffer" (ʼ550 Patent, col. 11:1-4); it is suitable for being applied in distinct layers; and it can be hardened in stages using, for example, different wavelengths of UV light ('550 Patent, col. 4:2-10). A party could argue the term should be construed to require all of these functional capabilities, not just the ability to be "set" or hardened.

VI. Other Allegations

• Willful Infringement: The complaint does not allege willful infringement. It requests that the case be declared "exceptional" for the purpose of recovering attorney's fees under 35 U.S.C. § 285, but does not plead the factual predicate (e.g., pre-suit knowledge of the patent and egregious conduct) typically required for a willfulness claim (Compl. ¶E.i).

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

1. Pleading Plausibility: A threshold issue may be whether the complaint's reliance on an unattached exhibit, without providing any independent factual allegations tying an accused product to the patent claims, satisfies federal pleading standards for patent infringement.

2. Definitional Scope: The case will likely turn on the construction of the term "selectively-settable material." The key question for the court will be whether this term simply means an adhesive that can be hardened, or if it must be construed more narrowly to require a material capable of the multi-stage, differential curing process described in the patent's preferred embodiments.

3. Evidentiary Mismatch: Assuming the case proceeds, a core evidentiary dispute will concern the operational facts of Defendant's manufacturing process. The central question will be whether discovery reveals a process that maps onto the specific, sequential steps of the asserted claims—particularly the use of a first hardened ring to position a die followed by the application of a second layer to capture bonding wires.