DCT
2:18-cv-00069
Mariner Ic Inc v. ASUSTeK Computer Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Mariner IC Inc. (Texas)
- Defendant: AsusTek Computer Inc. (Taiwan)
- Plaintiff’s Counsel: Brown Rudnick LLP
- Case Identification: 2:18-cv-00069, E.D. Tex., 03/13/2018
- Venue Allegations: Venue is asserted on the basis that the defendant, a foreign corporation not resident in the United States, may be sued in any judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s media players and routers, which contain semiconductor chips supplied by third parties, infringe patents related to structural designs for preventing stress-induced cracks in semiconductor dies.
- Technical Context: The technology addresses the physical reliability of semiconductor chips, which can be compromised by mechanical stresses that arise during manufacturing and packaging, particularly as chip complexity increases and physical size shrinks.
- Key Procedural History: The complaint does not reference prior litigation or administrative proceedings involving the patents-in-suit. U.S. Patent No. 5,846,874 is a divisional of the application that resulted in U.S. Patent No. 5,650,666, indicating a shared specification and priority date.
Case Timeline
| Date | Event |
|---|---|
| 1995-11-22 | Priority Date for ’666 and ’874 Patents |
| 1997-07-22 | Issue Date for U.S. Patent No. 5,650,666 |
| 1998-12-08 | Issue Date for U.S. Patent No. 5,846,874 |
| 2018-03-13 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 5,650,666 - "Method and Apparatus for Preventing Cracks in Semiconductor Die," Issued July 22, 1997
The Invention Explained
- Problem Addressed: The patent’s background describes how trends toward greater function integration on a single chip and smaller packaging lead to increased mechanical stresses, particularly "package-induced surface shear stresses" at the corners and edges of a semiconductor die, which can cause cracks and device failure (ʼ666 Patent, col. 1:10-33).
- The Patented Solution: The invention is an apparatus designed to mitigate this stress. It consists of "anchor structures"—composed of layers including metal and oxide—that are strategically placed in "open fields" (areas without active circuitry) at the corners and edges of the die. In the corners, these structures are positioned at approximately a 45-degree angle to be perpendicular to the primary stress vector, which more uniformly distributes the force and prevents the formation of cracks (ʼ666 Patent, Abstract; col. 2:61-68).
- Technical Importance: This structural approach provided a design-based solution to improve the physical reliability and manufacturing yield of complex semiconductor devices, a growing concern as die sizes increased and packaging became more compact (ʼ666 Patent, col. 1:50-58).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶16).
- Independent Claim 1 requires:
- A semiconductor die with corner and edge areas containing "open fields" with no active buses or circuits.
- An "anchor structure" within the die comprising a substrate layer, a first metal layer over the substrate, and an oxide layer over the first metal layer.
- The anchor structure is placed in an open field in a corner area.
- The structure is positioned "approximately perpendicular to a force vector" that impinges on the die at "approximately a 45° angle" relative to a horizontal line through the die.
- The complaint's allegation of infringement of "one or more claims" suggests the right to assert other claims, including dependent claims, is preserved (Compl. ¶16).
U.S. Patent No. 5,846,874 - "Method and Apparatus for Preventing Cracks in Semiconductor Die," Issued December 8, 1998
The Invention Explained
- Problem Addressed: The ʼ874 Patent, a divisional of the ʼ666 Patent's application, addresses the same technical problem of stress-induced cracks in semiconductor dies resulting from packaging and thermal cycling (ʼ874 Patent, col. 1:23-37).
- The Patented Solution: Rather than claiming the structure itself, this patent claims the method of manufacturing the crack-resistant die. The claimed process involves the steps of first "reserving a portion of the corner area of the die as an open field" and then "placing an anchor structure" (comprising metal, oxide, and polysilicon) into that field. The placement is specified to be perpendicular to the resultant shear stress vector, which is at an approximate 45-degree angle (ʼ874 Patent, Abstract; col. 6:45-56).
- Technical Importance: This patent protects the manufacturing process for creating the stress-reducing features, complementing the apparatus claims of the parent ʼ666 Patent by covering the acts of making the device (ʼ874 Patent, col. 1:52-59).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶¶22-23).
- Independent Claim 1 requires a method comprising the steps of:
- "reserving a portion of the corner area of the die as an open field".
- "placing an anchor structure" comprising metal, oxide, and polysilicon in that open field.
- The placement must be "perpendicular to a resultant force vector of the shear stress," with the vector being at "approximately a 45° angle" relative to a horizontal line.
- The complaint's allegation of infringement of "one or more claims" suggests the right to assert other claims is preserved (Compl. ¶22).
III. The Accused Instrumentality
Product Identification
The complaint names "Asus media players and routers" generally, and the "CUBE media player" specifically, as infringing products (Compl. ¶¶12, 16). The infringement allegations are directed at the internal semiconductor components of these devices, which are allegedly sourced from third-party manufacturers including Marvell Technology Group Ltd. and Spansion Inc. (Compl. ¶¶11, 17).
Functionality and Market Context
The relevant functionality is not related to the end-use of the media players or routers, but to the physical micro-architecture of the semiconductor dies within them. The complaint alleges these dies contain the patented anchor structures to prevent cracking (Compl. ¶17). The complaint notes that semiconductors with these types of structures are found in a wide variety of "widely available products," suggesting the technology's broad applicability (Compl. ¶11). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’666 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| In a semi-conductor die having corner areas and edges each with open fields in which no active buses or circuits are located... | The accused semiconductors "include a semi-conductor die having corner areas and edges each with open fields in which no active busses or circuits are located." | ¶17 | col. 2:41-45 |
| ...an anchor structure comprising: a substrate layer; a first metal layer disposed over said substrate layer; and an oxide layer disposed over said first metal layer; | The accused semiconductors "include a substrate layer, a first metal layer disposed over the substrate layer, and an oxide layer disposed over the first metal layer." | ¶17 | col. 6:40-43 |
| ...wherein the anchor structure is placed in an open field of a corner area and is positioned to be approximately perpendicular to a force vector impinging on the semi-conductor die at approximately a 45° angle with respect to an imaginary line passing horizontally through the semiconductor die. | The anchor structures are "placed in an open field of a corner area and positioned to be approximately perpendicular to a force vector impinging on the semiconductor die at approximately a 45 degree angle with respect to an imaginary line passing horizontally through the semiconductor die." | ¶17 | col. 6:44-50 |
’874 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for preventing shear stress damage to a semiconductor die...comprising the steps of: a) reserving a portion of the corner area of the die as an open field; | The accused semiconductors are made by a method that includes "reserving a portion of the corner area of the die as an open field". | ¶23 | col. 6:47-49 |
| and b) placing an anchor structure comprising metal, oxide and polysilicon in the open field, wherein the anchor structure is perpendicular to a resultant force vector of the shear stress, said vector being at approximately a 45° angle with an imaginary horizontal line passing through the die. | The method includes "placing an anchor structure comprising metal, oxide, and polysilicon in the open field" where the structures are "perpendicular to a resultant force vector of the shear stress at approximately a 45 degree angle with an imaginary horizontal line passing through the die." | ¶23 | col. 6:50-56 |
Identified Points of Contention
- Evidentiary Questions: The complaint's allegations regarding the internal structure of third-party semiconductor chips are made "on information and belief" (Compl. ¶¶17, 23). A central dispute will be whether discovery and technical analysis of the accused chips confirm the presence, composition, and specific placement of the alleged anchor structures.
- Scope Questions: The analysis will raise the question of whether the accused areas on the die qualify as "open fields" as defined by the patent, i.e., containing "no active buses or circuits" (ʼ666 Patent, col. 6:38-39). The presence of any such features in those areas could support a non-infringement argument.
- Technical Questions: A key factual question will be whether the accused structures meet the geometric limitations of the claims. This includes whether they are oriented "approximately perpendicular" to the force vector and at "approximately a 45° angle," terms which will be subject to construction and factual verification.
V. Key Claim Terms for Construction
- The Term: "approximately" (e.g., "approximately a 45° angle")
- Context and Importance: This term is critical to determining the geometric scope of the claims. The degree of deviation from a precise 45-degree angle that is permitted under the term "approximately" will directly impact whether a given structure is found to infringe.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that, absent a specific definition, the term should be given its ordinary meaning of "close to" or "nearly," allowing for some reasonable variation as understood by a person of ordinary skill in the art.
- Evidence for a Narrower Interpretation: The specification provides an explicit definition, stating: "in the present invention, the word, 'approximately', when used to describe the 45° angle refers to a tolerance range of 45°+/-10%." (ʼ666 Patent, col. 5:9-12). This explicit lexicography provides strong evidence for a narrow, numerically-defined construction.
- The Term: "open field"
- Context and Importance: This term defines the specific location on the die where the infringing structure must be found. Practitioners may focus on this term because infringement depends on the anchor structure being placed in an area free of other specified components.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states that an "open field is simply an area in the semiconductor die where there are no buses and no active circuits" (ʼ666 Patent, col. 2:43-45). This language may support an interpretation that any area meeting this negative limitation qualifies, regardless of other non-active structures present.
- Evidence for a Narrower Interpretation: The background section mentions that chip manufacturers reserve areas "where there are no metal, poly-structures or active circuits therein" (ʼ666 Patent, col. 1:45-47). A party could argue this context suggests the "open field" of the invention is intended to be devoid of a wider class of structures than just "buses and active circuits."
VI. Other Allegations
- Indirect Infringement: The complaint includes a jurisdictional allegation that Defendant "has induced acts of patent infringement by others" (Compl. ¶4). However, the complaint does not plead a separate count for indirect infringement or provide specific factual allegations regarding knowledge or intent required to support such a claim.
- Willful Infringement: The complaint does not contain a specific count for willful infringement or allege facts suggesting pre-suit knowledge of the patents. The prayer for relief includes a request for a finding that the case is "exceptional" and for an award of attorney fees pursuant to 35 U.S.C. § 285 (Compl. p. 7, ¶c).
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary issue will be one of evidentiary proof: can the plaintiff, whose allegations are based on "information and belief," develop sufficient evidence through reverse engineering and discovery to demonstrate that the internal, microscopic architecture of third-party semiconductor chips meets every element of the asserted claims?
- The case will also depend on a question of definitional precision: given the patent’s explicit definition of "approximately a 45° angle" as "45°+/-10%," does the physical layout of the accused chips fall within this narrow geometric tolerance?
- A key challenge for the ʼ874 patent claim will be one of methodological proof: can the plaintiff prove that the accused chips were manufactured using the specific method steps claimed, including "reserving" an open field, as opposed to merely proving the existence of the final structure? This presents a potentially higher evidentiary burden than for the ʼ666 apparatus patent.