DCT

4:23-cv-00753

Sung v. Texas Instruments Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: Sung v. Texas Instruments Incorporated, 4:23-cv-00753, E.D. Tex., 08/21/2023
  • Venue Allegations: Venue is alleged to be proper based on Defendant having a regular and established place of business in the district, specifically an 80,000 square foot, 150 mm semiconductor fabrication facility in Sherman, Texas.
  • Core Dispute: Plaintiff alleges that Defendant’s semiconductor products are manufactured using a process that infringes patents related to precisely leveled Chemical Mechanical Polishing (CMP) pad dressers.
  • Technical Context: The technology domain is semiconductor manufacturing, specifically the use of CMP pad dressers to condition polishing pads for creating ultra-flat and smooth silicon wafers, a critical step in fabricating integrated circuits.
  • Key Procedural History: The complaint alleges Plaintiff provided Defendant with actual notice of the asserted patents on December 8, 2021, a fact central to the allegations of willful infringement.

Case Timeline

Date Event
2011-05-23 Earliest Priority Date for ’862, ’802, and ’270 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
2021-12-08 Plaintiff Alleges Providing Actual Notice to Defendant
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. This process relies on a polishing pad that must be periodically conditioned by a "pad dresser" to remove debris and regenerate its surface. The complaint notes that if the abrasive tips on the dresser are not precisely coordinated and level, they can damage the delicate wafer surface. (Compl. ¶¶26-28).
  • The Patented Solution: The ’862 patent claims a method of conditioning a CMP pad. The method uses a dresser with a monolayer of superabrasive particles whose tips are engineered to be exceptionally level. The invention is defined by specific, tight tolerances on the protrusion distance between the highest tips (e.g., the difference between the highest and second-highest tip is less than or equal to about 10 microns). (’862 Patent, Abstract; col. 1:30-46). This precision is intended to create uniform asperities (grooves) on the polishing pad, leading to more consistent and less damaging wafer polishing. (Compl. ¶36).
  • Technical Importance: As semiconductor features continue to shrink, the tolerance for surface imperfections decreases, making highly uniform and predictable wafer polishing critically important. (Compl. ¶28).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1. (Compl. ¶31).
  • Claim 1 (Method) Elements:
    • Pressing a CMP pad dresser against a CMP pad, where the dresser has a monolayer of superabrasive particles protruding from a matrix.
    • The difference in protrusion distance between the highest and second-highest protruding tips is ≤ about 10 microns.
    • The difference in protrusion distance between the highest 10 protruding tips is within about 20 microns or less.
    • Rotating the dresser against the pad to cut asperities having a maximum cutting depth of about 60 microns.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

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 precision in CMP pad dressers to achieve the surface flatness and smoothness required for modern semiconductor wafers. (’802 Patent, col. 1:16-29).
  • The Patented Solution: Unlike the method claims of the ’862 patent, the ’802 patent claims the apparatus itself—the CMP pad dresser. The invention is a dresser with a monolayer of superabrasive particles where the tips are configured to "align along a designated profile" with a specified "tip variation" (from about 5 to 100 microns). It further defines the invention by the protrusion distance differences between the highest tips (e.g., highest two tips within 50 microns). (’802 Patent, Abstract; col. 1:33-47). The core technological contribution remains the structural precision of the abrasive tips.
  • Technical Importance: By claiming the apparatus, the patent covers the physical tool itself, potentially simplifying infringement analysis compared to proving infringement of a method claim, which requires observing a process in action.

Key Claims at a Glance

  • The complaint asserts at least independent claim 1. (Compl. ¶55).
  • Claim 1 (Apparatus) Elements:
    • A CMP pad dresser comprising a rigid support substrate and a monolayer of superabrasive particles coupled to it.
    • Each particle extends from the substrate to a protrusion distance.
    • The tip of each particle aligns along a "designated profile" with a "tip variation" of from about 5 to 100 microns.
    • The difference in protrusion distance between the highest and second-highest protruding tips is ≤ about 50 microns.
    • The difference in protrusion distance between the highest 1% of protruding tips is within about 80 microns or less.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 8,974,270 - "CMP Pad Dresser Having Leveled Tips and Associated Methods"

  • Patent Identification: U.S. Patent No. 8,974,270, "CMP Pad Dresser Having Leveled Tips and Associated Methods," issued March 10, 2015. (Compl. ¶23).
  • Technology Synopsis: This patent addresses the problem of manufacturing-induced warping in CMP pad dressers. It discloses a dresser with a double-sided design, featuring a first monolayer of superabrasive particles on one side of a metal support and a second monolayer on the opposite side. This symmetrical construction is intended to equalize thermal and mechanical forces during fabrication (e.g., brazing), preventing the support layer from warping and thereby maintaining the precise leveling of the abrasive tips. (’270 Patent, Abstract; col. 2:2-10).
  • Asserted Claims: The complaint asserts at least independent claim 1. (Compl. ¶78).
  • Accused Features: The complaint accuses TI of using pad conditioners, such as 3M's Trizact pad conditioner, that allegedly embody this double-sided structure with specific tip protrusion tolerances. (Compl. ¶¶81-82).

III. The Accused Instrumentality

Product Identification

  • The direct objects of the infringement allegations are the "Accused Instrumentalities": CMP pad conditioners manufactured by third parties including 3M, Saesol Diamond Ind. Co., Shinhan Diamond Ind. Co., Abrasive Technology, LLC, and EHWA Diamond Industrial Co Ltd. (Compl. ¶¶6-7, 31, 55). The infringement theory is that Defendant uses these tools in its manufacturing processes to fabricate its vast portfolio of semiconductor devices, which are identified as the "Accused Products." (Compl. ¶¶8-9).

Functionality and Market Context

  • The complaint alleges that Defendant uses these third-party pad conditioners in its semiconductor fabrication plants to perform CMP. (Compl. ¶¶5, 7). The function of these conditioners is to physically dress and regenerate the surface of polishing pads, a critical step for achieving the planarity required to manufacture modern integrated circuits. (Compl. ¶¶26-27). The complaint alleges Defendant has "decade-long" relationships with some of these suppliers, suggesting the conditioners are integral to its manufacturing operations. (Compl. p. 3).

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits (Exhibits 4-14) that were not publicly filed with the complaint; therefore, the infringement allegations are summarized below based on the narrative descriptions provided in the complaint body. (Compl. ¶¶37, 60, 83).

'862 Patent Infringement Allegations

The complaint alleges that Defendant infringes method claim 1 of the ’862 Patent when it manufactures its semiconductor products. (Compl. ¶¶35-36). The infringement theory asserts that Defendant performs the claimed steps by using one of the Accused Instrumentalities (e.g., a 3M or Saesol pad conditioner) in its CMP process. Specifically, it alleges Defendant presses a dresser with the claimed tightly-toleranced monolayer of abrasive particles against a CMP pad and rotates it to cut asperities to the claimed maximum depth. (Compl. ¶36).

  • Identified Points of Contention:
    • Evidentiary Questions: A central question will be whether discovery produces evidence that Defendant’s actual, real-world manufacturing process meets every limitation of the method claim. This includes proving both the physical dimensions of the third-party conditioners (e.g., that the highest two tips are within "about 10 microns") and the results of Defendant's process (e.g., that it creates a "maximum cutting depth of about 60 microns").
    • Scope Questions: The interpretation of "about" will be a key issue. The analysis may focus on whether the term renders the numerical limitations indefinite or, if not, what range of deviation it permits for the accused process to fall within the claim scope.

'802 Patent Infringement Allegations

The complaint alleges that the Accused Instrumentalities—the third-party pad conditioners used by Defendant—infringe apparatus claim 1 of the ’802 Patent. (Compl. ¶¶58-59). The theory is that these conditioners possess the claimed physical structure: a rigid substrate with a monolayer of superabrasive particles whose tips align along a profile with the specific tip variation and protrusion distance differences recited in the claim. (Compl. ¶59).

  • Identified Points of Contention:
    • Technical Questions: The dispute will likely involve a factual investigation into the physical structure of the accused conditioners. This raises the evidentiary question of whether expert analysis and measurement of the conditioners will confirm that they meet the precise geometric constraints of the claim.
    • Scope Questions: The meaning of "aligns along a designated profile" may be a central point of claim construction. The question is whether this requires a specific, intentionally manufactured geometry or if it can be read more broadly to cover any non-random, discernible pattern of tip heights.

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

For the ’862 Patent (Method Claim):

  • The Term: "maximum cutting depth of about 60 microns"
  • Context and Importance: This term defines the outcome of the claimed method. Infringement depends on whether Defendant's process achieves this specific result. Practitioners may focus on whether this limitation requires a consistent, measurable outcome for every operation or refers to a designed or average capability of the process.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The use of "about" suggests the 60-micron value is not an absolute, immutable limit. The patent specification discusses the general process of dressing a pad without consistently tying it to a single, unvarying depth, which may support an interpretation that this is a characteristic or target value. (’862 Patent, col. 9:40-45).
    • Evidence for a Narrower Interpretation: The claim language "having a maximum cutting depth" is presented as a required characteristic of the asperities created by the method. The abstract and summary of the invention also recite this specific numerical value, which may support an argument that it is a critical and defining feature of the claimed method. (’862 Patent, Abstract).

For the ’802 Patent (Apparatus Claim):

  • The Term: "aligns along a designated profile"
  • Context and Importance: This phrase is central to defining the claimed structure of the dresser's working surface. Its construction will determine what geometric arrangements of abrasive tips are covered by the claim.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification discloses that the profile can take various forms, including "a plane, a slope, a curved shape, a dome shape, and the like." (’802 Patent, col. 2:10-12). This language suggests the term is meant to be inclusive of any intentional, non-random geometry.
    • Evidence for a Narrower Interpretation: The term "designated" implies a pre-determined or intentional design. This could support an argument that the claim requires a specific, engineered profile and does not cover a mere statistical or incidental arrangement of tips that happens to fall along a curve or plane.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement against Defendant. The theory is that Defendant knowingly and intentionally causes its suppliers and contract manufacturers to infringe by providing technical specifications for, and placing purchase orders for, infringing pad conditioners. (Compl. ¶¶38, 47, 61, 84). It is further alleged that Defendant induces infringement by its customers who import and use semiconductor devices that were manufactured using the infringing process. (Compl. ¶¶39, 45, 62, 85).
  • Willful Infringement: Willfulness is alleged based on Defendant’s purported actual knowledge of the asserted patents since at least December 8, 2021. (Compl. ¶¶51, 74, 97). The complaint further alleges post-filing willfulness, asserting that Defendant has continued to use the accused conditioners and submit purchase orders for them even after the complaint was filed. (Compl. ¶¶48, 71, 94).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A central issue will be one of proof and measurement: Can the Plaintiff, through discovery and expert analysis, produce evidence demonstrating that the third-party pad conditioners used by Defendant meet the precise, micron-level geometric limitations of the apparatus claims, and that Defendant's manufacturing process meets every step and numerical outcome required by the method claims?
  • A key legal question will be one of claim scope: How will the court construe terms such as "about," "designated profile," and "tip variation"? The resolution of these terms will define the boundaries of the patents and will be critical in determining whether the accused products and processes, which exist in a crowded technical field, actually infringe.
  • A core liability question will be the nexus between the Defendant and the infringement: Given that Defendant uses, but does not manufacture, the accused pad conditioners, the case will test the Plaintiff's ability to prove Defendant's direct liability for practicing the patented method and its specific intent to induce infringement by its suppliers and customers.