DCT
2:18-cv-00407
Mariner Ic Inc v. Huawei Devce USA Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Mariner IC Inc. (Texas)
- Defendant: Huawei Device USA Inc. (Texas); Huawei Device Co., Ltd. (China); Huawei Device (Dongguan) Co., Ltd. (China)
- Plaintiff’s Counsel: Brown Rudnick LLP; Truelove Law Firm, PLLC
- Case Identification: 2:18-cv-00407, E.D. Tex., 09/25/2018
- Venue Allegations: Venue is alleged against the domestic defendant, Huawei Device USA Inc., based on its purported regular and established place of business within the Eastern District of Texas. Venue is alleged against the foreign defendants under 28 U.S.C. § 1391(c)(3), which permits suing foreign defendants in any judicial district.
- Core Dispute: Plaintiff alleges that semiconductors contained within Defendant's smartphones infringe patents related to structural reinforcements designed to prevent cracking in semiconductor dies.
- Technical Context: The technology addresses mechanical stress-induced failures in semiconductor chips, a critical reliability and manufacturing yield issue in the electronics industry.
- Key Procedural History: The complaint alleges that Defendant has had knowledge of the patents-in-suit since "prior to November 22, 2015," which may form a basis for allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 1995-11-22 | Priority Date for ’666 and ’874 Patents |
| 1997-07-22 | U.S. Patent No. 5,650,666 Issues |
| 1998-12-08 | U.S. Patent No. 5,846,874 Issues |
| < 2015-11-22 | Alleged date of Defendant's knowledge of patents |
| 2018-09-25 | 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 describes how the industry trend toward integrating more functions onto larger single chips, combined with a move to smaller physical packages, leads to increased mechanical stress. This stress is most pronounced at the corners of a semiconductor die and can cause cracks, leading to device failure (ʼ666 Patent, col. 1:10-32).
- The Patented Solution: The invention proposes placing a dedicated, multi-layer "anchor structure" in otherwise unused "open fields" at the die's corners and edges. This structure is not part of the active circuitry. By orienting the anchor perpendicular to the primary stress vectors—specifically at a 45-degree angle in the corners—it is designed to distribute stress more uniformly and prevent cracks from forming (ʼ666 Patent, Abstract; col. 2:56-68).
- Technical Importance: The invention provides a structural design-for-manufacturability solution to a fundamental reliability problem in semiconductor fabrication, intended to improve device yield and longevity (ʼ666 Patent, col. 1:52-58).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶20).
- Claim 1 requires:
- A semiconductor die with corner and edge areas containing "open fields" (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 must be placed in an open field in a corner area.
- The structure must be positioned "approximately perpendicular" to an impinging force vector at "approximately a 45° angle" to a horizontal line through the die.
- The complaint does not explicitly reserve the right to assert dependent claims.
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 patent addresses the same problem of package-induced shear stress causing cracks in semiconductor dies, particularly at the corners (ʼ874 Patent, col. 1:26-35).
- The Patented Solution: As a divisional of the application leading to the ’666 Patent, this patent claims the method of creating the stress-reducing structures. The claimed process involves the steps of first reserving open fields on the die surface during the design phase and then placing or forming the multi-layer anchor structure (comprising metal, oxide, and polysilicon) within that open field, oriented perpendicular to the anticipated stress vector to prevent cracks (ʼ874 Patent, Abstract; col. 2:59-68).
- Technical Importance: The patent claims the manufacturing process for creating the physical structures that address the fundamental die cracking reliability problem (ʼ874 Patent, col. 1:54-61).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶29).
- Claim 1 requires the method steps of:
- Reserving a portion of a die's corner area 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 shear stress vector that is itself at "approximately a 45° angle" to a horizontal line through the die.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The complaint names "Huawei Ascend smartphones" as exemplary infringing products (Compl. ¶20).
Functionality and Market Context
- The infringement allegations are not directed at the functionality of the smartphones themselves, but rather at the underlying semiconductor components within them (Compl. ¶21). The complaint alleges these components, sourced from manufacturers including Marvell and Qualcomm, contain the patented "anchor structures" (Compl. ¶14, ¶20). The suit thus targets the micro-architectural design and fabrication of chips used in what are described as "widely available products" (Compl. ¶14).
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, an anchor structure comprising: | The accused semiconductors include a die with corner areas and edges having open fields with no active buses or circuits (Compl. ¶21). | ¶21 | col. 6:23-26 |
| a substrate layer; | The accused semiconductors include a substrate layer (Compl. ¶21). | ¶21 | col. 6:27 |
| a first metal layer disposed over said substrate layer; and | The accused semiconductors include a first metal layer disposed over the substrate layer (Compl. ¶21). | ¶21 | col. 6:28-29 |
| an oxide layer disposed over said first metal layer; | The accused semiconductors include an oxide layer disposed over the first metal layer (Compl. ¶21). | ¶21 | col. 6:30-31 |
| 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... | The anchor structures in the accused semiconductors are allegedly placed in an open corner field and positioned perpendicular to a force vector at a 45-degree angle (Compl. ¶21). | ¶21 | col. 6:36-43 |
’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; and | The accused semiconductors allegedly result from a process that includes reserving open fields in the corner areas of the die where no active circuits are located (Compl. ¶30). | ¶30 | col. 6:47-49 |
| 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... | The accused semiconductors allegedly result from a process that includes placing an anchor structure (with substrate, metal, and oxide layers) in the open field perpendicular to a force vector (Compl. ¶30). | ¶30 | col. 6:50-55 |
- Identified Points of Contention:
- Scope Questions: The complaint's infringement theory for the ’874 method patent is based on alleging the existence of the final physical structure. A central question will be what evidence Plaintiff can produce to demonstrate that the accused semiconductors were manufactured using the claimed method steps of "reserving" and "placing," as opposed to a different process that may result in a similar structure.
- Technical Questions: Both patents require the anchor structure to be positioned relative to a "force vector." A key technical dispute may arise over how this "force vector" is defined and measured in the accused chips and whether the structures are, in fact, positioned "approximately perpendicular" to it and at "approximately a 45° angle" as claimed.
V. Key Claim Terms for Construction
The Term: "anchor structure"
- Context and Importance: This term defines the physical feature at the heart of the invention. Its scope will determine which micro-structures within the accused chips are subject to the infringement analysis.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims define the structure by its constituent layers (substrate, metal, oxide) and its location, which could support an interpretation covering any structure meeting that general description, regardless of other physical properties.
- Evidence for a Narrower Interpretation: The specification provides detailed embodiments with specific layer materials (e.g., polysilicon), dimensions, and thicknesses (ʼ666 Patent, col. 3:53–col. 4:5). A defendant may argue that these details limit the term to structures closely matching the disclosed examples.
The Term: "approximately perpendicular to a force vector ... at approximately a 45° angle"
- Context and Importance: This geometric and functional limitation is a critical point of differentiation for the invention. Infringement hinges on proving that the accused structures meet this specific angular relationship with an unstated, theoretical force.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The repeated use of the word "approximately" suggests the patentee did not intend to be limited to a precise mathematical angle, allowing for some deviation.
- Evidence for a Narrower Interpretation: The specification explicitly defines the term "approximately" as it relates to the 45-degree angle, stating it "refers to a tolerance range of 45°+/-10%" (ʼ666 Patent, col. 5:9-12). This provides a specific, potentially restrictive definition that may be construed as a disclaimer of any broader scope.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants induce infringement by "providing these products such as the Huawei Ascend smartphones... to end users for use in an infringing manner" (Compl. ¶23, ¶32). The facts alleged do not specify how an end user's operation of a smartphone constitutes an act of infringement of patents directed to the internal structure and manufacture of a semiconductor die.
- Willful Infringement: The complaint alleges Defendants had knowledge of the patents "prior to November 22, 2015" (Compl. ¶15). This allegation of pre-suit knowledge, combined with the prayer for relief seeking attorneys' fees for an "exceptional" case, forms the basis for a potential willfulness claim (Compl. ¶c, p. 10).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of proof of method: For the ’874 patent, a central evidentiary question will be whether Plaintiff can demonstrate that the accused chips were made using the specific claimed method steps (e.g., "reserving" a field), or if its evidence is limited to the characteristics of the final product.
- A key technical question will be one of functional geometry: The case will likely require detailed technical evidence to determine if the accused structures meet the claim limitation of being "approximately perpendicular to a force vector" within the specific tolerances disclosed in the patent specification.
- A legal question may arise regarding inducement liability: The court may need to address whether providing a finished product to an end user can constitute inducement of infringement for patents whose claims are fully practiced during the chip's manufacture, long before the user acquires the product.