DCT
1:18-cv-01662
Singapore Asahi Chemical & Solder Industries Pte Ltd v. Apple Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Singapore Asahi Chemical & Solder Industries Pte Ltd. (Singapore)
- Defendant: Apple Inc. (California)
- Plaintiff’s Counsel: FAY SHARPE LLP
- Case Identification: 1:18-cv-01662, N.D. Ohio, 07/18/2018
- Venue Allegations: Venue is based on allegations that Apple transacts business in the district, has committed acts of infringement in the district, and maintains numerous regular and established places of business, specifically identified as Apple retail stores, within the Northern District of Ohio.
- Core Dispute: Plaintiff alleges that the lead-free solder alloy used in Defendant’s consumer electronics, including various iPhone models, infringes a patent directed to specific solder compositions.
- Technical Context: The technology concerns specific formulations of lead-free solder, which became critical for manufacturing reliable electronic devices following global environmental and health initiatives to phase out the use of lead.
- Key Procedural History: The complaint asserts a single claim (Claim 10) of a single patent. Subsequent to the filing of this complaint, an inter partes review (IPR) proceeding (IPR2019-00377) was initiated against the patent-in-suit. That proceeding concluded with the cancellation of Claim 10, the sole basis for the infringement action as pleaded.
Case Timeline
| Date | Event |
|---|---|
| 1998-12-31 | '947 Patent Priority Date |
| 2001-01-23 | '947 Patent Issue Date |
| 2016-01-01 | Approximate start of alleged infringement ("at least as early as 2016") |
| 2017-07-14 | Date of alleged pre-suit notice to Apple |
| 2018-07-18 | Complaint Filing Date |
| 2018-11-30 | IPR filed against '947 Patent (IPR2019-00377) |
| 2021-11-09 | IPR Certificate issues, cancelling Claim 10 |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,176,947 - "Lead-Free Solders"
- Patent Identification: U.S. Patent No. 6,176,947, "Lead-Free Solders", issued January 23, 2001.
The Invention Explained
- Problem Addressed: The patent's background section describes the technical challenge of replacing traditional lead-tin (Pb-Sn) solder alloys, which faced a "limited future due to lead toxicity." (’947 Patent, col. 1:12-14). Simultaneously, advancements in integrated circuit technology demanded new solder alloys with higher strength and greater resistance to thermo-mechanical fatigue to ensure the reliability of ever-denser electronic systems. (’947 Patent, col. 1:17-21).
- The Patented Solution: The invention claims to solve this problem by providing specific lead-free solder compositions that offer high strength and high fatigue resistance while maintaining a moderate melting temperature (175–215° C) compatible with standard electronics manufacturing processes. (’947 Patent, Abstract). The formulation is intended to be a suitable alternative to Pb-Sn solders without requiring major changes to existing manufacturing infrastructure or processes. (’947 Patent, col. 3:5-10).
- Technical Importance: The invention proposed specific alloy compositions designed to solve the dual challenge of eliminating toxic lead while simultaneously meeting the increased mechanical and thermal performance demands of modern microelectronics. (’947 Patent, col. 2:60-64).
Key Claims at a Glance
- The complaint asserts independent claim 10. (Compl. ¶12).
- The essential elements of independent claim 10 are:
- A lead-free solder alloy
- consisting essentially of
- 76% to 96% Sn,
- 0.2% to 2.5% Cu,
- 2.5% to 3.5% Ag, and
- 0.5% to 5.0% Bi.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The complaint names a range of "Apple Products," including mobile phones, tablets, and computers, and specifically identifies the iPhone 7, iPhone 7 Plus, iPhone 8, iPhone 8 Plus, and iPhone X as "the Infringing Products." (Compl. ¶¶13, 15-16).
Functionality and Market Context
- The accused functionality is the incorporation and use of a solder alloy within these widely sold consumer electronic devices. (Compl. ¶14). The complaint alleges, on information and belief, that the solder alloy used in these products has a chemical composition that falls within the specific elemental ranges recited in claim 10 of the ’947 Patent. (Compl. ¶15).
IV. Analysis of Infringement Allegations
'947 Patent Infringement Allegations
| Claim Element (from Independent Claim 10) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A lead-free solder alloy | The complaint alleges on information and belief that the solder alloy used in the Infringing Products is lead-free. | ¶15 | col. 8:17 |
| consisting essentially of | The complaint alleges on information and belief that the solder alloy used in the Infringing Products consists essentially of the four recited elements. | ¶15 | col. 8:17 |
| 76% to 96% Sn, | The complaint alleges on information and belief that the solder alloy in the Infringing Products contains tin (Sn) within the claimed weight percentage range. | ¶15 | col. 8:18 |
| 0.2% to 2.5% Cu, | The complaint alleges on information and belief that the solder alloy in the Infringing Products contains copper (Cu) within the claimed weight percentage range. | ¶15 | col. 8:18 |
| 2.5% to 3.5% Ag, and | The complaint alleges on information and belief that the solder alloy in the Infringing Products contains silver (Ag) within the claimed weight percentage range. | ¶15 | col. 8:19 |
| 0.5% to 5.0% Bi. | The complaint alleges on information and belief that the solder alloy in the Infringing Products contains bismuth (Bi) within the claimed weight percentage range. | ¶15 | col. 8:19-20 |
No probative visual evidence provided in complaint.
- Identified Points of Contention:
- Scope Questions: A central question regarding claim scope involves the interpretation of the transitional phrase "consisting essentially of." This phrase permits the presence of unlisted ingredients so long as they do not materially affect the "basic and novel properties" of the claimed alloy. The infringement analysis would therefore hinge on whether any other elements present in Apple's solder alloy are deemed to materially alter its fundamental characteristics.
- Technical Questions: The primary technical question is evidentiary. The complaint alleges infringement based "upon information and belief" without providing specific evidence, such as from reverse engineering or materials analysis, of the precise chemical composition of the solder used in the accused products. (Compl. ¶15). A key question for the court would be what evidence Plaintiff can produce to show the accused alloy composition meets every limitation of the claim.
V. Key Claim Terms for Construction
- The Term: "consisting essentially of"
- Context and Importance: This transitional phrase is critical to defining the scope of the claim. It is narrower than "comprising" but broader than "consisting of." Infringement will depend on whether any additional, unlisted elements in Apple's solder alloy are found to "materially affect the basic and novel properties" of the invention. Practitioners may focus on this term as it provides a path to non-infringement if Apple's solder contains other performance-affecting elements not recited in the claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification frames the invention's purpose as providing a lead-free solder with "high-strength, and high fatigue resistance" and a "moderate melting temperature." (’947 Patent, col. 2:60-66). A patentee could argue that only unlisted elements that materially alter this specific combination of properties should be considered outside the claim's scope.
- Evidence for a Narrower Interpretation: The detailed description discusses the specific effects of other elements, such as Indium (In) and Antimony (Sb), which are not recited in claim 10. (’947 Patent, col. 4:27-40, 55-68). A defendant could argue that the explicit inclusion of these elements in other embodiments, but their exclusion from claim 10, implies that the "basic and novel properties" of the claim 10 invention are tied specifically to the synergistic effects of only Sn, Cu, Ag, and Bi. The presence of other strengthening agents like In or Sb could therefore be argued to be a material alteration.
VI. Other Allegations
- Indirect Infringement: The complaint pleads direct infringement under 35 U.S.C. § 271(a) and does not allege facts sufficient to support a claim for indirect or induced infringement. (Compl. ¶23).
- Willful Infringement: The complaint alleges willful infringement on the basis that Apple received "written notice of Asahi's patent by way of correspondence from the undersigned counsel at least as early as July 14, 2017," approximately one year before the suit was filed. (Compl. ¶18). The complaint further alleges that Apple continued to infringe despite this notice. (Compl. ¶18).
VII. Analyst’s Conclusion: Key Questions for the Case
- A threshold procedural question is dispositive: given that the sole asserted claim, Claim 10, was cancelled in a post-filing IPR proceeding, does any viable claim for past or present infringement remain in this action as currently pleaded?
- A key evidentiary question, had the claim remained valid, would be one of compositional proof: can the Plaintiff produce technical evidence, likely through materials analysis of the accused products, to demonstrate that the solder used by the Defendant has a chemical composition that falls precisely within all four elemental ranges recited in Claim 10?
- A central legal question would be the scope of "consisting essentially of": if the Defendant's solder contains elements other than Sn, Cu, Ag, and Bi, would a court determine that those additional elements materially affect the solder's basic and novel properties, thereby placing the accused product outside the scope of the claim?