DCT
4:23-cv-00752
Sung v. Samsung Electronics Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Chien-Min Sung (Taiwan)
- Defendant: Samsung Electronics Co. Ltd. (Republic of Korea), Samsung Electronics America, Inc. (New York), Samsung Semiconductor, Inc. (California), and Samsung Austin Semiconductor LLC (Delaware)
- Plaintiff’s Counsel: Devlin Law Firm LLC
- Case Identification: 4:23-cv-00752, E.D. Tex., 08/21/2023
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Samsung maintains regular and established places of business in the district, including offices in Plano and Richardson, and has committed acts of infringement within the district.
- Core Dispute: Plaintiff alleges that semiconductor products manufactured and sold by Samsung infringe three patents related to the structure and use of Chemical Mechanical Polishing (CMP) pad dressers used in the semiconductor fabrication process.
- Technical Context: The technology at issue involves CMP pad dressers, which are tools with superabrasive tips used to condition polishing pads, a critical step for achieving the extreme surface flatness required in modern semiconductor manufacturing.
- Key Procedural History: The complaint alleges that Plaintiff placed Samsung on actual notice of the asserted patents and its alleged infringement on September 7, 2022, nearly a year before filing suit.
Case Timeline
| Date | Event |
|---|---|
| 2011-05-23 | Earliest Priority Date ('270, '862, '802 Patents) |
| 2015-03-10 | U.S. Patent No. 8,974,270 Issues |
| 2015-09-22 | U.S. Patent No. 9,138,862 Issues |
| 2017-08-08 | U.S. Patent No. 9,724,802 Issues |
| 2022-09-07 | Plaintiff allegedly provides notice to Samsung |
| 2023-08-21 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,138,862 - "CMP Pad Dresser Having Leveled Tips and Associated Methods"
- Patent Identification: U.S. Patent No. 9,138,862, "CMP Pad Dresser Having Leveled Tips and Associated Methods," issued September 22, 2015.
The Invention Explained
- Problem Addressed: In semiconductor manufacturing, CMP is used to planarize wafer surfaces, and the quality of the polishing pad is critical for uniformity and performance (Compl. ¶30). Pad dressers are used to condition these pads, but if the dresser’s abrasive tips are not precisely coordinated and leveled, they can damage the delicate wafer surface or lead to inconsistent polishing (Compl. ¶31-32).
- The Patented Solution: The patent describes a method of conditioning a CMP pad using a dresser with a highly uniform arrangement of superabrasive particles. The invention focuses on controlling the "protrusion distance" of the abrasive tips from a matrix layer, specifying very tight tolerances between the highest tips to ensure a level cutting surface. This controlled leveling is claimed to cut uniform asperities into the polishing pad, improving the overall CMP process ('862 Patent, Abstract; col. 7:7-24).
- Technical Importance: Achieving precise tip leveling on a pad dresser allows for more predictable and uniform pad conditioning, which is essential for manufacturing next-generation semiconductors with increasingly smaller and more delicate features (Compl. ¶32).
Key Claims at a Glance
- The complaint asserts independent method claim 1 (Compl. ¶35).
- The essential elements of claim 1 are:
- pressing a CMP pad dresser against a CMP pad, the dresser including a monolayer of a plurality of superabrasive particles protruding from a matrix layer;
- wherein the difference in protrusion distance between the highest protruding tip and the second highest protruding tip is less than or equal to about 10 microns;
- and the difference in protrusion distance between the highest 10 protruding tips are within about 20 microns or less;
- and rotating the dresser against the CMP pad such that asperities are cut into the CMP pad having a maximum cutting depth of about 60 microns.
- The complaint reserves the right to assert additional claims (Compl. ¶42).
U.S. Patent No. 9,724,802 - "CMP Pad Dressers Having Leveled Tips and Associated Methods"
- Patent Identification: U.S. Patent No. 9,724,802, "CMP Pad Dressers Having Leveled Tips and Associated Methods," issued August 8, 2017.
The Invention Explained
- Problem Addressed: The patent addresses the same technical challenge as the ’862 Patent: the need for precisely leveled abrasive tips on CMP pad dressers to ensure uniform and non-damaging wafer polishing in semiconductor fabrication (Compl. ¶29-32).
- The Patented Solution: This patent claims an apparatus—the CMP pad dresser itself—rather than a method of using it. The invention is a dresser with a rigid support substrate and a monolayer of superabrasive particles whose tips "align along a designated profile" with a specified "tip variation." The claims define this leveling with specific numerical limits on the protrusion distance between the highest tip, the second highest tip, and the highest 1% of all tips ('802 Patent, Abstract; col. 2:3-11).
- Technical Importance: By claiming the structure of the dresser, the patent seeks to protect the tool itself that enables the improved CMP process, complementing method patents in the same family (Compl. ¶32).
Key Claims at a Glance
- The complaint asserts independent apparatus claim 1 (Compl. ¶59).
- The essential elements of claim 1 are:
- a rigid support substrate;
- a monolayer of a plurality of superabrasive particles coupled to the support substrate;
- wherein each superabrasive particle extends away from the support substrate to a protrusion distance;
- wherein a highest protruding tip of each particle aligns along a designated profile with a tip variation of from about 5 microns to about 100 microns;
- wherein the difference in protrusion distance between the highest and second highest protruding tip is less than or equal to about 50 microns;
- and the difference in protrusion distance between the highest 1% of protruding tips are within about 80 microns or less.
- The complaint reserves the right to assert additional claims (Compl. ¶65).
Multi-Patent Capsule: U.S. Patent No. 8,974,270
- Patent Identification: U.S. Patent No. 8,974,270, "CMP Pad Dresser Having Leveled Tips and Associated Methods," issued March 10, 2015 (Compl. ¶27).
- Technology Synopsis: This patent addresses the problem of warping in CMP pad dressers during their manufacture, which can disrupt the precise leveling of abrasive tips. The solution described is a dresser with two monolayers of superabrasive particles disposed on opposite sides of a metal support layer, where the particle distributions are substantially the same to equalize forces and prevent warpage. The claims also recite specific tip leveling requirements for the primary working surface ('270 Patent, Abstract; Compl. ¶86).
- Asserted Claims: The complaint asserts independent apparatus claim 1 (Compl. ¶82).
- Accused Features: Plaintiff alleges Samsung uses pad dressers, such as 3M's Diamond pad conditioner, which allegedly embody the claimed dual-monolayer structure with specific protrusion distance limitations, in its semiconductor manufacturing processes (Compl. ¶85-86).
III. The Accused Instrumentality
- Product Identification: The ultimate "Accused Products" are Samsung's semiconductor devices and integrated circuits, including memory, processors, and sensors, which are incorporated into end-user devices like mobile phones and smart watches (Compl. ¶12). The direct infringement is alleged to arise from Samsung's use of third-party "Accused Instrumentalities"—the CMP pad conditioners—to manufacture these products. These instrumentalities include products from manufacturers such as 3M, Saesol, Shinhan, Abrasive Technology (AT), and EHWA (Compl. ¶11).
- Functionality and Market Context: The Accused Instrumentalities are used within Samsung’s semiconductor fabrication plants (fabs) to perform CMP (Compl. ¶8, ¶30). Their function is to physically condition the surface of a polishing pad, removing debris and creating a uniform texture that holds polishing slurry, which is essential for planarizing silicon wafers (Compl. ¶31). Samsung is alleged to be a major global producer of semiconductors, using these tools in high-volume manufacturing processes (Compl. ¶8-9, ¶12).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
9,138,862 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| pressing a CMP pad dresser against a CMP pad, the dresser including a monolayer of a plurality of superabrasive particles protruding from a matrix layer | Samsung uses certain third-party pad conditioners (e.g., from 3M, Saesol, Shinhan, AT, or EHWA) against a CMP pad during its manufacturing process. | ¶40 | col. 7:7-10 |
| wherein the difference in protrusion distance between the highest protruding tip and the second highest protruding tip... is less than or equal to about 10 microns | The complaint alleges that the pad conditioners used by Samsung possess this specific structural characteristic regarding tip leveling. | ¶40 | col. 7:14-24 |
| and the difference in protrusion distance between the highest 10 protruding tips of the monolayer... are within about 20 microns or less | The complaint alleges that the pad conditioners used by Samsung possess this additional structural characteristic regarding tip leveling. | ¶40 | col. 7:25-31 |
| and rotating the dresser against the CMP pad such that asperities are cut into the CMP pad having a maximum cutting depth of about 60 microns | The complaint alleges Samsung performs this step during its manufacturing, resulting in asperities of the claimed depth. | ¶40 | col. 1:49-56 |
- Identified Points of Contention:
- Factual Question: The central dispute for the ’862 patent will likely be evidentiary. The complaint alleges, "on information and belief," that the third-party conditioners used by Samsung meet the precise numerical limitations for tip protrusion distance. A key question is what factual basis supports these specific micron-level allegations and whether discovery will confirm that the tools Samsung actually uses meet these structural prerequisites for the claimed method.
- Scope Question: A potential issue is whether Samsung's use of a third-party tool to manufacture its products constitutes direct infringement under 35 U.S.C. § 271(a) ("makes, uses, offers to sell, or sells any patented invention") or § 271(g) (importing a product made by a patented process). The complaint pleads both theories (Compl. ¶35, ¶38), raising the question of which infringement theory is most applicable to the alleged conduct.
9,724,802 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a rigid support substrate | The accused pad conditioners allegedly include a rigid support substrate. | ¶63 | col. 2:3 |
| a monolayer of a plurality of superabrasive particles coupled to the support substrate... wherein each superabrasive particle... extends away... to a protrusion distance | The accused pad conditioners allegedly have a monolayer of superabrasive particles extending from the substrate. | ¶63 | col. 2:4-6 |
| wherein a highest protruding tip of each of the plurality of superabrasive particles aligns along a designated profile with a tip variation of from about 5 microns to about 100 microns | The complaint alleges the tips of the superabrasive particles on the accused conditioners align along a profile with this specified variation. | ¶63 | col. 2:7-9 |
| and wherein the difference in protrusion distance between the highest protruding tip and the second highest protruding tip... is less than or equal to about 50 microns | The accused conditioners are alleged to meet this specific structural limitation for tip leveling. | ¶63 | col. 2:9-12 |
| and the difference in protrusion distance between the highest 1% of the protruding tips... are within about 80 microns or less | The accused conditioners are alleged to meet this additional specific structural limitation for tip leveling. | ¶63 | col. 2:12-15 |
- Identified Points of Contention:
- Technical Question: As with the ’862 patent, the analysis will depend heavily on the actual physical characteristics of the accused pad conditioners. The complaint provides no measurement data or analysis to substantiate the claims that these third-party products meet the specific quantitative limitations (e.g., "less than or equal to about 50 microns," "within about 80 microns or less").
- Scope Question: The complaint alleges Samsung infringes by "using" the accused apparatus (Compl. ¶59). A question for the court will be whether Samsung's use of these third-party tools in its manufacturing process satisfies the requirements for direct infringement, and what evidence connects the specific accused conditioners to the manufacture of specific accused end products sold in the United States.
V. Key Claim Terms for Construction
The Term: "protrusion distance" (’862 Patent, Claim 1; ’802 Patent, Claim 1)
- Context and Importance: This term is the central metric for the invention's core concept of tip leveling. The definitions of infringement for all asserted claims depend on precise, micron-level measurements of this distance. Practitioners may focus on how this distance is to be measured—specifically, the reference plane from which the protrusion is measured (e.g., the substrate, the matrix layer)—as this could materially alter whether a product falls within the claim scope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification of the related ’270 patent discusses both direct and indirect measurement techniques, including pressing the dresser into a deformable substrate and extrapolating the tip height, which may support a more functional or flexible definition of the term (’270 Patent, col. 8:51-59).
- Evidence for a Narrower Interpretation: The specification also describes direct measurement via an optical scanner relative to a fixed point, which may support a more rigid and precise definition tied to a specific measurement methodology (’270 Patent, col. 8:37-50).
The Term: "aligns along a designated profile" (’802 Patent, Claim 1)
- Context and Importance: This term describes the intended overall topography of the abrasive tips. The dispute may turn on whether the arrangement of tips on the accused products constitutes an "alignment" along a "designated" profile, or is merely the result of manufacturing tolerances.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification of the parent ’270 patent states the profile can be a "plane, a slope, a curved shape, a dome shape, and the like," suggesting the term is meant to be flexible and cover various intentional geometries (’802 Patent, col. 2:13-18).
- Evidence for a Narrower Interpretation: The use of the word "designated" may suggest the profile must be an intentional, specified design feature of the dresser, not simply a description of the tips' de facto positions. A defendant could argue that random variations do not constitute alignment along a "designated" profile.
VI. Other Allegations
- Indirect Infringement: The complaint makes extensive allegations of induced infringement. It alleges Samsung encourages and aids third-party pad conditioner manufacturers to make and sell the infringing devices by providing technical specifications and purchase orders (Compl. ¶42-43, ¶65). It also alleges Samsung induces its customers and contract manufacturers to use the infringing products and methods by promoting their sale and providing technical support (Compl. ¶44, ¶66-67).
- Willful Infringement: Willfulness is alleged based on Samsung's purported actual knowledge of the patents and its infringement since at least September 7, 2022. The complaint claims that Samsung's continued allegedly infringing conduct after this date was knowing, deliberate, and willful (Compl. ¶55, ¶78, ¶101).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central evidentiary question will be one of metrological verification: what evidence will demonstrate that the third-party CMP pad conditioners used by Samsung meet the precise numerical limitations for "protrusion distance" recited in the asserted claims, particularly given the complaint's reliance on "information and belief" for these technical facts?
- A key legal issue will be one of definitional precision: how will the court construe the term "about" as applied to the micron-level measurements in the claims, and will this construction be broad enough to encompass the actual, measured specifications of the accused third-party products?
- A key question for induced infringement will be one of specific intent: can the plaintiff prove that Samsung, by providing specifications and purchase orders for what may be commercially available tools, specifically intended for its third-party suppliers to infringe the asserted patents, or were its actions simply part of standard procurement activities?