DCT
2:13-cv-00866
Murata Machinery v. Daifuku
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Murata Machinery USA, Inc. (Delaware) and Murata Machinery, Ltd. (Japan)
- Defendant: Daifuku Co., Ltd. (Japan) and Daifuku America Corp. (Ohio)
- Plaintiff’s Counsel: RAY QUINNEY & NEBEKER P.C.
- Case Identification: 2:13-cv-00866, D. Utah, 09/23/2013
- Venue Allegations: Venue is alleged to be proper based on Defendants conducting business within the District of Utah, including the operation of a facility in Salt Lake City.
- Core Dispute: Plaintiff alleges that Defendant’s automated material handling systems infringe three patents related to systems that combine vertical carousels and overhead hoists for use in semiconductor manufacturing facilities.
- Technical Context: The technology concerns automated systems for transporting semiconductor wafer containers (known as FOUPs) within a fabrication plant, a process critical for manufacturing efficiency and contamination control.
- Key Procedural History: The complaint does not allege any significant procedural history, such as prior litigation between the parties or licensing negotiations concerning the asserted patents.
Case Timeline
| Date | Event |
|---|---|
| 2002-06-19 | Priority Date for ’927, ’153, and ’172 Patents |
| 2007-01-23 | U.S. Patent No. 7,165,927 Issued |
| 2010-08-10 | U.S. Patent No. 7,771,153 Issued |
| 2012-06-12 | U.S. Patent No. 8,197,172 Issued |
| 2013-09-23 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,165,927 - "Automated Material Handling System for Semiconductor Manufacturing Based on a Combination of Vertical Carousels and Overhead Hoists", Issued Jan. 23, 2007
The Invention Explained
- Problem Addressed: The patent describes conventional automated material handling systems (AMHS) used in semiconductor fabrication as inefficient. These systems typically use storage units ("stockers") with complex, internal multi-axis robotic arms to move wafer containers to and from dedicated input/output ports, where they are then picked up by a separate overhead transport system. This multi-step process, involving complex machinery, is described as costly and a bottleneck for overall system throughput. (’927 Patent, col. 1:26-2:29)
- The Patented Solution: The invention proposes a more integrated and efficient system where an overhead hoist transport vehicle can directly access and retrieve wafer containers from storage bins inside a vertical carousel stocker. This is achieved by designing the system so the overhead vehicle can position its hoist to pick or place a container directly from a bin, for example, when the bin is rotated to the top of the carousel underneath the vehicle's track. This architecture aims to eliminate the need for an internal robot and intermediate transfer ports. (’927 Patent, Abstract; col. 2:32-56)
- Technical Importance: By enabling direct access, this approach seeks to simplify the design of the storage stocker, which could increase material handling speed and reliability while reducing the overall cost and complexity of the AMHS. (’927 Patent, col. 2:26-29)
Key Claims at a Glance
- The complaint asserts infringement of "one or more of the claims of the 927 patent" without specifying any particular claims (Compl. ¶18). The following is a summary of representative independent claim 1:
- An automated material handling system comprising:
- A housing unit with multiple storage bins for holding material units.
- An overhead hoist transport subsystem with a vehicle that travels on a suspended track external to the housing unit.
- The hoist includes a "translating stage" and a "gripper portion."
- The vehicle moves to a position on the track adjacent to a storage bin.
- While at that position, the translating stage moves the gripper "laterally" from the vehicle toward the bin.
- A portion of the housing unit is open, allowing the gripper to directly access the material unit from the bin for transport.
U.S. Patent No. 7,771,153 - "Automated Material Handling System for Semiconductor Manufacturing Based on a Combination of Vertical Carousels and Overhead Hoists", Issued Aug. 10, 2010
The Invention Explained
- Problem Addressed: Like its parent, the ’153 Patent addresses the drawbacks of conventional AMHS, such as the complexity and low reliability associated with using internal robotic arms and separate input/output ports for storing and retrieving wafer containers. (’153 Patent, col. 2:6-28)
- The Patented Solution: The invention refines the direct-access concept by disclosing a system where at least one storage bin comprises a "movable shelf." This shelf is operative to move vertically along the carousel's path and then move laterally out from that path to a second position proximate to the overhead vehicle's track. This presents the wafer container for direct pickup by the hoist, after which the shelf retracts. (’153 Patent, Abstract; col. 3:1-19)
- Technical Importance: This movable shelf mechanism provides a specific architecture for achieving direct access, potentially allowing the main carousel to continue rotating and positioning other bins while a single bin is extracted for interaction with the overhead hoist. (’153 Patent, col. 3:1-19; Fig. 3)
Key Claims at a Glance
- The complaint asserts infringement of "one or more of the claims of the 153 patent" without specifying any particular claims (Compl. ¶21). The following is a summary of representative independent claim 1:
- An automated material handling system comprising:
- A storage unit with a plurality of storage bins that move along a carousel path with at least one vertical portion.
- An overhead hoist transport subsystem with a vehicle traveling on a track adjacent to the storage unit.
- At least one storage bin comprises a "movable shelf."
- The movable shelf is operative to move vertically along the carousel path to a first position, and then move "laterally" from that first position to a second position proximate to the vehicle.
- The storage unit is partially open to allow the shelf to move to the second position, enabling the hoist's gripper to access the material unit directly.
U.S. Patent No. 8,197,172 - "Automated Material Handling System for Semiconductor Manufacturing Based on a Combination of Vertical Carousels and Overhead Hoists", Issued Jun. 12, 2012
- Technology Synopsis: This patent, also in the same family, describes an AMHS where an overhead hoist subsystem is configured to load a material unit onto different types of destinations. The claims distinguish between a "load port," which is located beneath the overhead rail, and a "storage location," which is located "lateral to the overhead rail." (’172 Patent, Abstract; col. 8:40-54)
- Asserted Claims: The complaint alleges infringement of "one or more of the claims of the 172 patent." (Compl. ¶24)
- Accused Features: The complaint accuses Daifuku’s "automated material handling system(s)" and "cleanroom systems" incorporating an "overhead hoist." (Compl. ¶¶14, 24)
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are identified generally as "automated material handling system(s)" and "cleanroom systems for use in semiconductor fabrication applications" that are made, used, or sold by Daifuku and incorporate an "overhead hoist." (Compl. ¶¶14, 18)
Functionality and Market Context
The complaint does not provide specific details about the architecture, features, or operation of the accused Daifuku systems. The allegations are limited to the general identification of the products and their sale and use in the United States, including within the District of Utah. (Compl. ¶¶4, 6, 14)
IV. Analysis of Infringement Allegations
The complaint pleads infringement in general terms without mapping specific features of the accused products to the elements of any asserted claim. The following tables summarize the infringement theory for representative claims based on the high-level allegations in the complaint.
No probative visual evidence provided in complaint.
’927 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| at least one housing unit configured to house a plurality of storage bins... | Defendant's "automated material handling system(s)" are alleged to embody the claims, which implies the presence of a housing unit for storage. (Compl. ¶18) | ¶18 | col. 4:36-39 |
| an overhead hoist transport subsystem including at least one overhead hoist transport vehicle... configured to travel along a suspended track... | Defendant's systems are alleged to incorporate an "overhead hoist." (Compl. ¶14) The complaint alleges these systems embody claims requiring an overhead vehicle on a track. | ¶¶14, 18 | col. 4:40-43 |
| the translating stage is configured to move the gripper portion laterally from a first position... to a second position proximate to said one of the plurality of storage bins... | The complaint's general allegation that Defendant's systems embody the claims implies that they perform the claimed lateral movement to position the hoist's gripper for direct access to a storage bin. | ¶18 | col. 8:60-64 |
| a portion of the storage bin housing unit is at least partially open to allow the gripper portion... to access at least one material unit directly from said one of the plurality of storage bins... | The complaint alleges direct infringement, which for this claim requires that Defendant's systems provide direct access from the overhead hoist to the material unit within the storage bin, necessarily through an opening in the housing. | ¶18 | col. 9:1-9 |
’153 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| at least one storage unit including a plurality of storage bins... disposed within the storage unit for movement and positioning along a carousel path... | Defendant's "automated material handling system(s)" are alleged to embody the claims, which implies the presence of a carousel-based storage unit. (Compl. ¶21) | ¶21 | col. 5:1-12 |
| at least one of the plurality of storage bins comprises a movable shelf... operative to move in a vertical direction... [and] to move in a lateral direction... to a second position proximate the overhead hoist transport vehicle... | The general allegation that Defendant's systems embody the claims implies that they contain a "movable shelf" or an equivalent structure that performs the claimed sequence of vertical and lateral movements to present a material unit for access by the overhead hoist. | ¶21 | col. 6:35-49 |
| the storage unit is at least partially open to allow the moveable shelf to move to and from the second position, thereby allowing the gripper portion of the overhead hoist to access at least one material unit directly from the movable shelf... | The complaint alleges direct infringement, which for this claim requires that Defendant's systems have an opening that permits the "movable shelf" to be extracted, allowing the overhead hoist to directly access the material unit held by that shelf. | ¶21 | col. 7:65-col. 8:2 |
Identified Points of Contention
- Evidentiary Question: The complaint does not provide any factual support (e.g., product diagrams, technical descriptions, marketing materials) for its infringement allegations. A central issue for the court will be whether the evidence developed during discovery shows that the accused Daifuku systems operate in the manner required by the patent claims.
- Technical Question: A key technical dispute will likely focus on whether the accused systems actually perform the direct access function that is central to the patents. The question is whether Daifuku's overhead hoists retrieve material directly from internal storage locations, or whether the systems use the conventional architecture (with internal robots and I/O ports) that the patents identify as the problem to be solved.
V. Key Claim Terms for Construction
Term: "move the gripper portion laterally" (’927 Patent, Claim 1)
- Context and Importance: This term is critical as it defines the required motion of the hoist's translating stage to access the storage bin. The scope of "laterally" will determine whether infringement requires a specific type of extraction movement or if any general side-to-side motion of the gripper suffices.
- Intrinsic Evidence for a Broader Interpretation: The plain meaning of "laterally" suggests movement to the side, perpendicular to the primary vertical (hoist) and forward (track) axes of motion. Parties may argue that the claim is not limited to any particular distance or purpose beyond positioning the gripper for access.
- Intrinsic Evidence for a Narrower Interpretation: The specification describes embodiments where a mechanism extracts a bin to a position underneath the track for access (’927 Patent, col. 6:35-49; Fig. 3). A party may argue that "laterally" should be construed in this context, requiring movement from the vehicle toward the stocker's housing to engage with a presented bin.
Term: "movable shelf" (’153 Patent, Claim 1)
- Context and Importance: This is a central element of the asserted claim of the ’153 Patent. Whether the accused systems infringe will likely depend on whether any component within them meets the definition of a "movable shelf."
- Intrinsic Evidence for a Broader Interpretation: The claim defines the term functionally, as a shelf that is "operative to move in a vertical direction" along the carousel path and then "move in a lateral direction" away from that path to an access position. A party could argue any structure performing this sequence of motions constitutes a "movable shelf."
- Intrinsic Evidence for a Narrower Interpretation: The specification describes this element as part of an "extraction mechanism" that moves a selected storage bin "directly underneath the track" for access (’153 Patent, col. 3:1-19). A party may argue that the term requires a distinct shelf that moves independently and performs this specific extraction function, rather than any component that simply slides out from a fixed position.
VI. Other Allegations
Indirect Infringement
The complaint makes conclusory allegations of induced and contributory infringement (Compl. ¶14). It does not, however, plead any specific facts to support the required elements of knowledge and intent, such as alleging that Defendant provided instruction manuals or marketing materials that encouraged infringing use. (Compl. ¶¶18, 21, 24)
Willful Infringement
The basis for willfulness is the allegation that "upon information and belief, Daifuku was aware of the Asserted Patents prior to the filing of this Complaint." (Compl. ¶15). The complaint does not provide any factual support for this allegation of pre-suit knowledge.
VII. Analyst’s Conclusion: Key Questions for the Case
Evidentiary Sufficiency
The primary issue raised by the complaint is one of evidence. Can the Plaintiff, through discovery, produce factual evidence demonstrating that the accused Daifuku systems actually operate in a manner that meets the limitations of the asserted claims? The bare-bones nature of the complaint leaves this as a completely open question.
Architectural Equivalence
A core technical question will be whether the accused systems embody the fundamental architectural shift claimed in the patents—namely, direct access by an overhead hoist into a storage stocker. The case may turn on whether the Daifuku systems use this direct-access design or the conventional design with internal robots and I/O ports that the patents sought to improve upon.
Definitional Scope
A key legal question will concern the construction of claim terms like "move... laterally" and "movable shelf." The outcome of the infringement analysis will depend on whether these terms are interpreted broadly based on their functional descriptions or are narrowed to the specific extraction-based embodiments detailed in the patent specifications.