DCT
2:24-cv-00408
SiOnyx LLC v. Samsung Electronics Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: SiOnyx, LLC (Delaware)
- Defendant: Samsung Electronics, Co., Ltd. (Republic of Korea); Samsung Electronics America, Inc. (New York); Samsung Semiconductor, Inc. (California)
- Plaintiff’s Counsel: Ciccarelli Law Firm LLC; Troutman Pepper Hamilton Sanders LLP
- Case Identification: 2:24-cv-00408, E.D. Tex., 06/03/2024
- Venue Allegations: Plaintiff alleges venue is proper because Defendants are registered to do business in Texas, have regular and established places of business in the district, have transacted business in the district, and have committed acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s digital imaging sensors, and the mobile devices that contain them, infringe a patent related to photosensitive devices that use textured surfaces to enhance light absorption.
- Technical Context: The technology relates to improving the performance of complementary metal-oxide-semiconductor (CMOS) image sensors, particularly for detecting infrared light, by micro-texturing silicon surfaces to increase the optical path length of light within the sensor.
- Key Procedural History: The complaint alleges that a co-pending action (2:24-cv-291) filed on April 30, 2024, provided Samsung with actual notice of the patent-in-suit, which may form the basis for a willfulness claim.
Case Timeline
| Date | Event |
|---|---|
| 2013-06-29 | U.S. Patent No. 10,347,682 Priority Date |
| 2019-07-09 | U.S. Patent No. 10,347,682 Issue Date |
| 2024-04-30 | Alleged Notice Date (via co-pending litigation) |
| 2024-06-03 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,347,682, “Shallow Trench Textured Regions and Associated Methods,” issued July 9, 2019
The Invention Explained:
- Problem Addressed: The patent’s background section explains that silicon, the standard material for image sensors, is inefficient at absorbing electromagnetic radiation at longer wavelengths, such as in the near-infrared spectrum (greater than 1100 nm), due to its indirect bandgap (’682 Patent, col. 1:30-38). This limitation has historically hindered the performance of silicon-based technologies for infrared detection.
- The Patented Solution: The invention proposes an optoelectronic device, such as an image sensor, that incorporates an "array of shallow trench isolation surface features" between the light-sensitive semiconductor layer and its support substrate (’682 Patent, Abstract). Light that passes through the semiconductor layer without being absorbed strikes this textured surface and is redirected back into the semiconductor layer, effectively increasing the optical path length and giving the light a second chance to be absorbed (’682 Patent, col. 6:45-54). This enhanced absorption allows for thinner, more responsive, and higher-performance sensors.
- Technical Importance: This method of texturing allows for the fabrication of smaller and lower-cost silicon-based photonic devices that have higher performance in the infrared spectrum, which has applications in consumer, industrial, medical, and defense industries (Compl. ¶14).
Key Claims at a Glance:
- The complaint asserts infringement of claims including exemplary independent claims 1 (a device) and 24 (a method) (Compl. ¶20).
- Independent Claim 1 recites an optoelectronic device comprising:
- A semiconductor layer with a light incident side, an opposed side, and doped regions forming a junction.
- A "textured region" with a "plurality of shallow trench isolation surface features" located on the light incident side of the semiconductor layer.
- A support substrate coupled to the semiconductor layer.
- A "first bonding layer" between the semiconductor layer and the support substrate.
- The device is further specified as a "photosensitive imager device capable of detecting visible and infrared electromagnetic radiation."
- Independent Claim 24 recites a method of making an optoelectronic device by bonding a semiconductor layer to a support substrate and "creating a plurality of shallow trench isolation surface features on a light incident side of said semiconductor layer."
III. The Accused Instrumentality
Product Identification:
The complaint identifies the accused instrumentalities as "digital imaging sensors and mobile phones and tablet computers that contain those sensors" (Compl. ¶1). Specific examples include "Samsung’s ISOCELL sensor" and smartphones such as the "Galaxy S23 Ultra and Galaxy Z Flip5" that incorporate the sensor (Compl. ¶17).
Functionality and Market Context:
The complaint alleges that the accused products are end devices that embody the inventions of the ’682 Patent (Compl. ¶17). The complaint asserts that Samsung has published articles that discuss and describe how its sensors meet the limitations of the patent's claims, although these articles are cited in exhibits not attached to the pleading (Compl. ¶18). The complaint does not provide further technical detail regarding the specific operation or structure of the accused ISOCELL sensors.
IV. Analysis of Infringement Allegations
The complaint references, but does not include, claim chart exhibits detailing its infringement theory (Compl. ¶20). The narrative allegations suggest the accused ISOCELL sensors and the products containing them practice the elements of the asserted claims.
’682 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An optoelectronic device ... [which] is a photosensitive imager device capable of detecting visible and infrared electromagnetic radiation | The complaint alleges the Accused Products are, or contain, photosensitive digital imaging sensors, such as Samsung's ISOCELL sensor. | ¶1, ¶17 | col. 13:15-17 |
| a semiconductor layer having a light incident side and an opposed side, said semiconductor layer having multiple doped regions forming at least one junction | The complaint alleges the Accused Products contain a semiconductor layer as claimed. | ¶17, ¶20 | col. 5:21-22 |
| a textured region comprising a plurality of shallow trench isolation surface features located on the light incident side of the semiconductor layer and configured to interact with incident electromagnetic radiation | The complaint alleges the Accused Products contain a textured region with shallow trench features as claimed. | ¶14, ¶17, ¶20 | col. 5:23-29 |
| a support substrate coupled to said semiconductor layer | The complaint alleges the Accused Products contain a support substrate coupled to the semiconductor layer. | ¶17, ¶20 | col. 5:22-23 |
| a first bonding layer disposed between the semiconductor layer and the support substrate | The complaint alleges the Accused Products contain a bonding layer as claimed. | ¶17, ¶20 | col. 8:15-23 |
No probative visual evidence provided in complaint.
Identified Points of Contention:
- Scope Questions: A central dispute may arise over the claim language "located on the light incident side of the semiconductor layer." Modern image sensors like the accused ISOCELL are typically Back-Side Illuminated (BSI), where light enters the silicon substrate on the side opposite the metal circuitry. The patent's own depiction of a BSI device (FIG. 3) shows the textured layer (310) on the side of the semiconductor layer (302) opposite from where light (312) enters. This raises the question of whether the claim language, which appears to describe a Front-Side Illuminated (FSI) architecture, can literally read on the accused BSI products.
- Technical Questions: A key technical question for the court will be whether the structures within Samsung's ISOCELL sensors function as the claimed "shallow trench isolation surface features" configured to enhance optical absorption. Defendants may argue their structures (which could be a form of Deep Trench Isolation, or DTI) are technically distinct and exist purely for electrical isolation between pixels, not for the optical enhancement purpose required by the patent.
V. Key Claim Terms for Construction
- The Term: "shallow trench isolation surface features"
- Context and Importance: This term defines the core inventive concept. Its construction will determine whether the physical structures used for pixel isolation in Samsung’s sensors fall within the scope of the claims. Practitioners may focus on this term because the plaintiff will likely argue for a broad functional definition while the defendant may argue for a narrower definition tied to a specific manufacturing process.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes a wide variety of possible shapes, including "cones, pillars, pyramids, inverted features, trenches, gratings, protrusions, and the like" (’682 Patent, col. 10:32-36), which could support an interpretation covering any feature that performs the light-redirecting function.
- Evidence for a Narrower Interpretation: The patent states these features "can be formed by any number of shallow trench isolation (STI) techniques" (’682 Patent, col. 9:4-6) and "specifically disclaimed" other methods like laser ablation (’682 Patent, col. 10:17-19). A party could argue this language limits the claim to features made by processes known in the art as STI, potentially excluding other trenching technologies like DTI.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement to infringe, asserting that Samsung, with knowledge of the patent, disseminates and distributes the Accused Products and publishes articles describing how the sensors meet the claim limitations, thereby intending for its customers and partners to infringe (Compl. ¶18). It also alleges contributory infringement, stating the Accused Products are not staple articles of commerce suitable for substantial non-infringing use (Compl. ¶19).
- Willful Infringement: The complaint alleges willful infringement based on Samsung’s purported actual notice of the ’682 Patent since at least April 30, 2024, the filing date of a separate, co-pending lawsuit between the parties (Compl. ¶18, ¶21).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope versus architecture: can the language of Claim 1, which requires the "textured region" to be "located on the light incident side," be construed to cover modern Back-Side Illuminated (BSI) sensors, or is the claim limited to an FSI architecture that may not be practiced by the accused products?
- The case will also turn on a question of definitional scope: is the term "shallow trench isolation surface features" broad enough to encompass the pixel isolation technology used in Samsung's sensors, or is it narrowly restricted to features created by specific STI manufacturing processes for the primary purpose of optical enhancement?
- A key evidentiary question will be whether the plaintiff can prove that the structures in the accused sensors are "configured to interact with incident electromagnetic radiation" to increase optical path length, as the patent requires, or if their primary function is electrical, with any optical effect being merely incidental.