DCT

1:12-cv-01211

Circuit Check Inc v. QXQ Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:12-cv-01211, E.D. Wis., 11/30/2012
  • Venue Allegations: Plaintiff alleges venue is proper based on Defendant having continuous and systematic contacts with the district through its efforts to solicit, market, and sell electronic circuit board testing products and services within the State of Wisconsin.
  • Core Dispute: Plaintiff alleges that Defendant’s products and processes for manufacturing and using circuit board tester interface plates infringe three patents related to methods for visually identifying specific probe holes on such plates.
  • Technical Context: The technology addresses the need for efficiency and accuracy in the high-volume manufacturing and testing of electronics by providing a simplified way to verify the correct placement of test probes in a complex test fixture.
  • Key Procedural History: The complaint does not mention prior litigation or licensing. The patents-in-suit originate from the same provisional application and claim similar subject matter, with two patents directed to an apparatus (’796) and a method (’566), and a third (’766) directed to a method. The '566 patent is subject to a terminal disclaimer over the '796 patent, which may limit its enforceable term to that of the '796 patent.

Case Timeline

Date Event
2004-05-18 Priority Date for '796, '766, and '566 Patents
2009-09-22 U.S. Patent No. 7,592,796 Issues
2010-04-13 U.S. Patent No. 7,695,766 Issues
2010-07-06 U.S. Patent No. 7,749,566 Issues
2012-11-30 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 7,592,796 - "Plate With An Indicator For Discerning Among Pre-Identified Probe Holes In The Plate"

  • Patent Identification: U.S. Patent No. 7,592,796, "Plate With An Indicator For Discerning Among Pre-Identified Probe Holes In The Plate," issued September 22, 2009. (Compl. ¶7).

The Invention Explained

  • Problem Addressed: The patent's background section describes the process of manually verifying the location of each test probe in a grid of hundreds of identical-looking holes on a tester alignment plate as "a very time-consuming procedure" that can "lead to errors in probe placement." ('796 Patent, col. 2:50-61). The prior art method of manually marking each hole by hand was described as "very labor-intensive, and therefore very expensive." ('796 Patent, col. 4:41-43).
  • The Patented Solution: The invention is a probe plate manufactured with two contrasting color layers. A base layer has a "first predetermined indicia" (e.g., the plate's natural color), and it is coated with a "second removable indicia" (e.g., a layer of paint). To indicate which holes are to be populated with test probes, the top coating is selectively removed from the area adjacent to those specific holes, exposing the contrasting color of the base plate underneath. This two-tone effect provides a clear visual guide for assembly and inspection. ('796 Patent, Abstract; col. 5:11-34; Fig. 2).
  • Technical Importance: This approach provided a method for creating inexpensive and easy-to-read visual guides on standardized test plates, which could improve the speed and accuracy of configuring test fixtures for mass-produced electronics. ('796 Patent, col. 6:1-5).

Key Claims at a Glance

  • The complaint asserts "one or more claims" without specification. (Compl. ¶11). The patent contains two independent claims, 1 and 10.
  • Independent Claim 1: An indicator interface plate comprising:
    • a surface including a plurality of holes with visually discernable markings to allow a user to determine which holes are to be populated;
    • wherein a region of the plate has a first predetermined indicia covering the surface surrounding the holes;
    • a second removable indicia overlying the first predetermined indicia;
    • the second indicia being different from the first;
    • wherein the second indicia is removed from areas adjacent to predetermined holes, making those holes visually identifiable by the appearance of the first indicia.
  • Independent Claim 10: An indicator interface device comprising a substantially planar plate with a "first predetermined color" and an overlying "coating of a second predetermined color," where the coating is removed from areas adjacent to predetermined holes to make them visually identifiable.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 7,695,766 - "Method Of Identifying Specific Holes In An Interface Guiding Plate"

  • Patent Identification: U.S. Patent No. 7,695,766, "Method Of Identifying Specific Holes In An Interface Guiding Plate," issued April 13, 2010. (Compl. ¶8).

The Invention Explained

  • Problem Addressed: The patent addresses the same technical challenge as the '796 Patent: the need for a simple, reliable, and inexpensive way to identify which holes in a generic guiding plate should receive test pins for a specific circuit board layout. ('766 Patent, col. 5:6-20).
  • The Patented Solution: This patent claims the method of creating and using the marked plate. The core steps include: (a) firmly adhering an indicator colorant to the plate's surface; (b) removing that colorant from the areas around selected holes to distinguish them; (c) populating the holes with pins based on the visual indicators; and (d) visually verifying the correct population by observing the presence or absence of the colorant. ('766 Patent, Abstract; col. 12:10-28 (Claim 1)).
  • Technical Importance: By claiming the manufacturing and verification process, this patent complements the apparatus claims of the '796 Patent, covering not just the final product but also the steps taken to create and use it. ('766 Patent, col. 6:1-5).

Key Claims at a Glance

  • The complaint asserts "one or more claims." (Compl. ¶11). The patent contains three independent claims: 1, 8, and 14.
  • Independent Claim 1: A method of identifying specific holes in a board interface guiding plate, comprising the steps of:
    • firmly adhering an indicator colorant to the plate's surface;
    • removing the colorant from around selected holes so they can be distinguished;
    • populating either the selected or unselected holes with pins; and
    • visually verifying that the holes are populated correctly as determined by the presence or absence of the colorant.
  • Claims 8 and 14 claim similar methods of preparing a guiding plate by overcoating a surface and then removing the overcoating around specific holes.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 7,749,566 - "Plate With An Indicator For Discerning Among Pre-Identified Probes In The Plate"

  • Patent Identification: U.S. Patent No. 7,749,566, "Plate With An Indicator For Discerning Among Pre-Identified Probes In The Plate," issued July 6, 2010. (Compl. ¶9).
  • Technology Synopsis: This patent claims a method for identifying specific holes in a test plate. The described problem is the difficulty and potential for error in manually checking probe installation. The solution is a method that involves applying a first colorant atop a second on a probe plate, then removing the first colorant from around selected holes to create a visual guide for populating and verifying pin placement. ('566 Patent, Abstract; col. 6:38-51 (Claim 1)).
  • Asserted Claims: The complaint asserts "one or more claims." (Compl. ¶11). The patent's independent claims are 1 and 8.
  • Accused Features: The complaint alleges infringement by Defendant's "processes for identifying holes in circuit board interface guiding plates." (Compl. ¶11).

III. The Accused Instrumentality

  • Product Identification: The complaint does not identify any specific accused products, methods, or services by name. It broadly accuses "circuit board tester products and processes for identifying holes in circuit board interface guiding plates" made, used, sold, or offered for sale by Defendant QXQ. (Compl. ¶11).
  • Functionality and Market Context: The complaint alleges that QXQ "actively markets and sell products" that infringe the patents-in-suit. (Compl. ¶6). However, it provides no specific allegations regarding the technical functionality of any QXQ product or process, nor does it describe their market position or commercial importance. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not provide sufficient detail for a claim chart analysis. It makes only conclusory allegations that Defendant's unspecified "products and processes" infringe one or more claims of the three patents-in-suit. (Compl. ¶11). The infringement theory appears to be that Defendant makes and sells plate-like products that embody the apparatus claimed in the '796 Patent, and that Defendant performs or directs others to perform the steps of the methods claimed in the '766 and '566 Patents. The complaint does not include any factual support, such as product documentation or analysis, to substantiate how any accused instrumentality meets the specific limitations of the asserted claims.

V. Key Claim Terms for Construction

  • The Term: "removed" / "removing" ('796 Patent, Claim 1; '766 Patent, Claim 1)

    • Context and Importance: This term is the central active step of the claimed inventions. The infringement analysis for both the apparatus and method claims will depend heavily on whether the accused process involves an act of taking away a previously applied coating. Practitioners may focus on this term because it distinguishes the invention from alternative marking methods, such as directly printing an indicator onto a plate without a removal step.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification suggests various ways the coating can be taken off, including being "drilled, scraped or otherwise removed." ('796 Patent, col. 5:23-24). This "otherwise removed" language could support an interpretation that covers any process resulting in the absence of the coating in a specific area.
      • Evidence for a Narrower Interpretation: The patent's detailed description focuses heavily on subtractive mechanical processes, such as using an "automated drill" to "ablate or scrape off the paint." ('796 Patent, col. 6:15-16, 35-42). This emphasis on physical ablation could support a narrower construction that excludes non-mechanical or non-subtractive processes, such as masked deposition.

  • The Term: "indicia" / "coating" ('796 Patent, Claims 1, 10)

    • Context and Importance: The claims require a "second removable indicia" that is a "coating" which "overly[s]" a "first predetermined indicia." The physical and chemical nature of these layers is critical. The case may turn on whether the accused product is made of two distinct, layered materials or a single material that is altered (e.g., chemically or thermally) to produce a color change.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The term "indicia" itself is broad and could be argued to cover any form of visual marking. A party might argue that one material chemically treated to change color on its surface still has a "second indicia" that "overlies" the base material.
      • Evidence for a Narrower Interpretation: The specification consistently describes the second layer using terms for physically distinct materials, such as "paint, a two-part epoxy, or an other opaque coating." ('796 Patent, col. 5:1-3). The abstract also refers to "coating the plate with a colorant." This language suggests that a distinct, separate layer of material must be applied, rather than merely modifying the surface of the existing plate.

VI. Other Allegations

  • Indirect Infringement: The complaint makes a conclusory allegation of "knowingly contributing to and inducing infringement." (Compl. ¶11). It does not plead any specific facts to support the requisite knowledge or intent, such as alleging that Defendant's product manuals instruct users to perform the patented methods.
  • Willful Infringement: The complaint alleges that Defendant's infringement has been "willful and deliberate." (Compl. ¶12). It provides no factual basis to support this allegation, such as any claim of pre-suit notice or knowledge of the patents-in-suit.

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

  • A primary issue will be evidentiary: given the complaint's lack of specificity, the case will depend entirely on whether discovery uncovers a QXQ product or process that practices the "coating-and-removal" technology at the heart of the patents. The complaint provides no factual predicate to suggest such evidence exists.
  • A key technical question will be one of process equivalence: assuming an accused product is identified, does its manufacturing process involve the specific claimed steps of applying a distinct, overlying layer and subsequently removing portions of it? Or does it achieve a visually similar result through a fundamentally different technique, such as direct printing, masked deposition, or chemical surface alteration, which may fall outside the scope of the claims?
  • A central question of claim construction will be the definition of "removed." The viability of the infringement case will likely hinge on whether this term is construed to require a physical, subtractive action (like drilling or scraping) or if it can be read more broadly to cover other methods of creating a differentiated surface.