DCT
2:18-cv-00071
Mariner Ic Inc v. Sharp Corp
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Mariner IC Inc. (Texas)
- Defendant: Sharp Corporation (Japan)
- Plaintiff’s Counsel: Brown Rudnick LLP
- Case Identification: 2:18-cv-00071, E.D. Tex., 03/13/2018
- Venue Allegations: Plaintiff alleges venue is proper because Defendant is a foreign corporation not resident in the United States and may therefore be sued in any judicial district.
- Core Dispute: Plaintiff alleges that semiconductor components within Defendant’s televisions and cell phones infringe patents related to structural features on a semiconductor die designed to prevent stress-induced cracking.
- Technical Context: The technology addresses a key reliability challenge in semiconductor manufacturing, where mechanical stresses from packaging can cause physical damage to the integrated circuit die.
- Key Procedural History: The complaint is the initial pleading in this matter. No prior litigation, post-grant proceedings, or licensing history are mentioned.
Case Timeline
| Date | Event |
|---|---|
| 1995-11-22 | Priority Date for U.S. Patent Nos. 5,650,666 and 5,846,874 |
| 1997-07-22 | U.S. Patent No. 5,650,666 Issued |
| 1998-12-08 | U.S. Patent No. 5,846,874 Issued |
| 2018-03-13 | Complaint Filed |
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 describes how trends toward larger, more complex integrated circuits combined with smaller, surface-mount packaging lead to increased mechanical stress on the semiconductor die itself. This stress is most pronounced at the chip corners and can cause cracks, leading to device failure (’666 Patent, col. 1:10-33).
- The Patented Solution: The invention proposes placing dedicated, non-functional "anchor structures" in otherwise unused "open fields" at the corners and edges of the die. These multi-layer structures are specifically oriented to intercept and distribute the stress forces—for example, at an approximately 45-degree angle in the corners—thereby preventing the formation of cracks that could damage active circuitry (’666 Patent, col. 1:59-col. 2:6; Fig. 1).
- Technical Importance: The technology provides a structural design solution to a physical failure mode that can limit the reliability and yield of advanced semiconductor devices (’666 Patent, col. 1:49-57).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶16).
- Essential elements of claim 1:
- A semiconductor die with corner and edge areas containing "open fields" (no active buses or circuits).
- An anchor structure comprising a substrate layer, a first metal layer over the substrate, and an oxide layer over the metal layer.
- The anchor structure is placed in an open field in a corner area.
- The structure is positioned approximately perpendicular to an impinging force vector, which is at an "approximately a 45° angle with respect to an imaginary line passing horizontally through the... die."
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 ’874 Patent, a divisional of the ’666 Patent, addresses the same problem of package-induced shear stress causing cracks in semiconductor dies (’874 Patent, col. 1:26-38).
- The Patented Solution: This patent claims a method for manufacturing a crack-resistant die. The method involves the steps of first "reserving a portion of the corner area of the die as an open field" during the design layout phase, and then "placing an anchor structure" (comprising metal, oxide, and polysilicon) within that reserved open field. The placement is specified as being perpendicular to the resultant stress vector, which is at approximately a 45-degree angle (’874 Patent, Abstract; col. 6:45-56).
- Technical Importance: The invention provides a manufacturable process and a set of design rules for proactively incorporating stress-relief structures into a semiconductor layout, rather than only claiming the resulting physical apparatus (’874 Patent, col. 5:34-42).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶22, which contains a typographical error referring to the ’666 Patent, though the count is for infringement of the ’874 Patent).
- Essential elements of claim 1:
- A method for preventing shear stress damage to a semiconductor die.
- A step of "reserving a portion of the corner area of the die as an open field."
- A step of "placing an anchor structure comprising metal, oxide and polysilicon in the open field."
- The anchor structure is placed perpendicular to a resultant stress vector, which is at "approximately a 45° angle with an imaginary horizontal line."
III. The Accused Instrumentality
Product Identification
The complaint names the Sharp Aquos LC-60XL10 Smart TV and the 931SH and WS007SH cell phones as exemplary infringing products (Compl. ¶16, ¶22).
Functionality and Market Context
The complaint alleges that the accused infringement occurs within semiconductor components supplied by third parties, such as "Spansion Inc.," that are incorporated into Defendant’s final products (Compl. ¶11, ¶16). The relevant functionality is not at the end-product level, but at the micro-architectural level of the semiconductor die. The complaint alleges these chips contain corner areas with "open fields," a substrate layer, a metal layer, and an oxide layer, where anchor structures are placed at a 45-degree angle to prevent cracking (Compl. ¶17). Plaintiff asserts that Defendant is a "leading manufacturer and seller of televisions" and that such semiconductors are used in a wide variety of electronic devices (Compl. ¶2, ¶11).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
’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. 6:36-39 |
| a substrate layer; | The semiconductors "include a substrate layer..." | ¶17 | col. 6:40 |
| a first metal layer disposed over said substrate layer; and | The semiconductors include "a first metal layer disposed over the substrate layer..." | ¶17 | col. 6:41-42 |
| an oxide layer disposed over said first metal layer; | The semiconductors include "an oxide layer disposed over the first metal layer." | ¶17 | col. 6:42-43 |
| 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...at approximately a 45° angle...through the...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...comprising the steps of: | The accused semiconductors "are made according to a method for preventing shear stress damage to a semiconductor die..." | ¶23 | col. 6:45-46 |
| reserving a portion of the corner area of the die as an open field; and | The method includes "reserving a portion of the corner area of the die as an open field..." | ¶23 | col. 6:46-47 |
| placing an anchor structure comprising metal, oxide and polysilicon in the open field, | The method includes "placing an anchor structure comprising metal, oxide, and polysilicon in the open field." | ¶23 | col. 6:50-52 |
| wherein the anchor structure is perpendicular to a resultant force vector of the shear stress, said vector being at approximately a 45° angle...passing through the die. | The placed anchor 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. 6:52-56 |
- Identified Points of Contention:
- Evidentiary Questions: The complaint’s infringement allegations are made "on information and belief" and closely track the language of the asserted claims. A central issue will be what factual evidence Plaintiff can produce, likely through reverse engineering or discovery, to demonstrate that the third-party semiconductor chips within Defendant’s products actually contain structures meeting every limitation of the claims (Compl. ¶17, ¶23).
- Scope Questions: The case may raise the question of whether the structures in the accused chips are located in what qualifies as an "open field," which the patent defines as an area with "no buses and no active circuits" (’666 Patent, col. 2:45-47). The verification of this negative limitation inside a complex integrated circuit could be a point of dispute.
V. Key Claim Terms for Construction
- The Term: "open field"
- Context and Importance: This term is a predicate for infringement; the claimed anchor structures must be located in such a field. Its definition will determine what areas of the die are available for the patented invention, directly impacting the scope of the claims. Practitioners may focus on this term as it is a primary locational constraint on the invention.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides a functional definition: "An open field is simply an area in the semi-conductor die where there are no buses and no active circuits" (’666 Patent, col. 2:45-47). This could support an interpretation that covers any area meeting this functional criterion.
- Evidence for a Narrower Interpretation: The specification also states that "open field areas in the corner areas...and along the die edges are reserved" (’666 Patent, col. 2:41-43). A party could argue this ties the term to areas intentionally set aside during layout, not just any incidental empty space.
- The Term: "approximately a 45° angle"
- Context and Importance: The precise angular placement is presented as a key feature of the invention for counteracting corner stresses. The scope of "approximately" will define the tolerance for deviation from a perfect 45° angle.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader (but Defined) Interpretation: The specification appears to provide an explicit definition: "...the word, 'approximately', when used to describe the 45° angle refers to a tolerance range of 45°+/-10%" (’666 Patent, col. 5:8-11). Plaintiff will likely argue this language is controlling.
- Evidence for a Narrower Interpretation: A defendant could argue that, notwithstanding the patentee's definition, the term should be functionally limited to angles that actually achieve the stated purpose of being "perpendicular to a resultant vector force" (’666 Patent, col. 2:1-3), potentially excluding angles at the edge of the defined range if they are shown to be functionally ineffective.
VI. Other Allegations
- Indirect Infringement: While the jurisdiction section of the complaint makes a general reference to induced infringement (Compl. ¶4), the substantive counts for infringement of the ’666 and ’874 patents allege only direct infringement under 35 U.S.C. § 271 (Compl. ¶16, ¶22).
- Willful Infringement: The complaint does not contain an explicit allegation of willful infringement. However, in the prayer for relief, Plaintiff requests a judgment that the case is "exceptional" and an award of attorney fees under 35 U.S.C. § 285 (Compl. Prayer ¶c).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of evidentiary proof: Can the Plaintiff, whose allegations are based on "information and belief," develop sufficient factual evidence to demonstrate that the specific third-party semiconductor components inside Defendant's products contain the multi-layered "anchor structures" with the precise location and orientation required by the claims?
- A key legal question will be the attribution of infringement for the method claims: The complaint accuses Defendant of infringing the ’874 patent’s method claims by selling products "made by the method claimed." This raises the question of how liability for a manufacturing method practiced by a third-party component supplier (e.g., Spansion) will be established against the downstream seller of the final product (Sharp).
- The outcome may also depend on a question of claim scope: The construction of the term "open field" will be critical. The court will need to determine whether the term covers any functionally empty space on a die or is limited to areas specifically "reserved" for the anchor structures during the chip's design phase, as described in the patent's embodiments.