• ALJ Charneski Issues Public Version of Initial Determination in Certain Flash Memory and Products Containing Same (337-TA-685)
  • April 6, 2011 | Authors: Tia D. Fenton; Eric W. Schweibenz
  • Law Firm: Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria Office
  • Further to our March 1, 2011 post, on March 24, 2011, ALJ Carl C. Charneski issued the public version of the Initial Determination (“ID”) (dated February 28, 2011) in Certain Flash Memory and Products Containing Same (Inv. No. 337-TA-685).

    By way of background, the Complainant in this investigation is Samsung Electronics, Co., Ltd. (“Samsung”) and the remaining Respondents are Spansion, Inc. and Spansion LLC, (collectively, “Spansion”) and D-Link Corp. and D-Link Systems, Inc. (collectively, “D-Link”).  The patent at issue, U.S. Patent No. 5,740,065 (the “’065 patent”), relates to a method for manufacturing semiconductor devices, such as silicon wafers, where certain process variables or parameters can be automatically set based on certain past process variables or parameters.

    As discussed in more detail below, ALJ Charneski determined there is a violation of Section 337.  Specifically, ALJ Charneski determined that (i) Respondents’ accused products infringe asserted claims 8 and 12 of the ‘065 patent; (ii) Respondents did not show by clear and convincing evidence that any claim of the ‘065 patent is invalid; and (iii) Complainants satisfied the domestic industry requirement with respect to the ‘065 patent.

    Claim Construction

    In construing claim 8 of the ‘065 patent, all parties agreed that the preamble of independent claim 8 is limiting inasmuch as it requires the manufacturing of semiconductors to be done in “units of lots.”  The issue in dispute was whether the preamble prohibits the use of per-lot sampling during manufacturing.  Samsung argued that the preamble precludes the use of a per-lot sampling process, and Spansion and the Commission Investigative Staff (“OUII”) argued that the preamble does not prohibit the use of per-lot sampling.  ALJ Charneski determined that the relevant portion of the preamble, “said manufacturing equipment being adapted to manufacture said semiconductor device in units of lots,” shows that the semiconductor device is manufactured in “units of lots,” and concluded that allowing for per-lot sampling would be contrary to the plain meaning of the preamble because the semiconductor devices would not be manufactured in “units of lots.”  Also, based on the disclosure of the ‘065 patent, ALJ Charneski concluded that it is apparent that the applicants intended to exclude per-lot sampling.  ALJ Charneski determined that the preamble of claim 8 precludes the use of per-lot sampling during semiconductor manufacturing.

    The second disputed term of claim 8 of the ‘065 patent was “extracting an optimal working condition.”  Spansion and OUII argued that the term “extracting an optimal working condition” is limited to Equation (1) of the preferred embodiment of the ‘065 patent.  Samsung, on the other hand, argued that it was not so limited.  ALJ Charneski agreed with Samsung, stating that Equation (1) is “merely an example provided in the context of a preferred embodiment,” and that the law does not require the patentee to describe every possible way of performing a step.  He also noted that an embodiment in the specification cannot be read in to limit a claim absent a clear disavowal, and that dependent claim 12 supports Samsung’s position because it is permissively written to allow an extraction step that is not limited to Equation (1).  ALJ Charneski determined that the phrase “extracting an optimal working condition” means “deriving or deducing a working condition from data of suitable lots previously processed” and is not limited to Equation (1) listed in the preferred embodiment of the ‘065 patent.

    The third disputed term of claim 8 of the ‘065 patent was “accumulatively averaging.”  The issue in dispute was whether “accumulatively averaging” working conditions includes obtaining a sample average, or moving average, over a selected set of the conditions accumulated from past lots, as Samsung contended, or whether it means calculating the global average of all working conditions of all past lots, as Spansion and OUII argued.  ALJ Charneski concluded that the ‘065 patent does not support Spansion and OUII’s positions that the term means calculating an average of all available lots because, for instance, the specification provides an example in which 32.5% of the good lots previously processed were outliers and dropped from the averaging operation of Equation (1).  ALJ Charneski also concluded that Spansion and OUII’s interpretations were incorrect because they render claims 8 and 12 inconsistent, as claim 12 expressly calls for dropping outlier lots from the averaging.  He determined that the phrase “accumulatively averaging working conditions of lots previously processed” means “performing a mathematical averaging operation on a set of working conditions over time to determine a value representative of the set.”

    The fourth disputed term of claim 8 of the ‘065 patent was “working conditions.”  The central dispute was whether “working conditions” are limited to the actual machine settings that must be set by a worker, or whether “working conditions” include other settable control parameters.  Samsung argued that “working condition” need not be a machine setting, Spansion argued that “working condition” requires a condition set by a worker, and OUII argued that the “working condition” must be initially set by a worker at the beginning of a run, but thereafter may either be set manually or by computer control.  Relying primarily on the specification of the ‘065 patent, ALJ Charneski determined that the claim term “working conditions” is construed to mean “one or more settable parameter values that control variables in a process used to manufacture semiconductors.”

    The fifth disputed term of claim 8 of the ‘065 patent was “performing said process for an entire lot according to said current working condition.”  The critical dispute was whether the limitation excludes per-lot sampling.  Samsung argued that the term excludes the use of a per-lot sampling process, and Spansion and OUII argued otherwise.  Relying on the intrinsic evidence of the ‘065 patent, ALJ Charneski interpreted the term to exclude per-lot sampling, determining that “performing said process for an entire lot according to said current working condition” means “performing the process for an entire lot according to the working condition derived by the claimed method and without using a per-lot sampling process, separate and in addition to subsequent lot processing, to evaluate and correct the working condition.”

    In construing claim 12 of the ‘065 patent, the term at issue was “within a standard deviation,” and the dispute was whether the claim term is limited to a specific numerical value of 67.5%.  Samsung asserted that “standard deviation” is a common term of art that should be accorded its plain meaning and should not be limited to a specific number value.  Spansion and OUII, on the other hand, limited the claim term to a specific numerical value of 67.5%.  ALJ Charneski noted that claims should not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope.  Here, he concluded that the specification and the language of claims 3 and 12 of the ‘065 patent suggest the term “standard deviation” should be a number value or values since the “standard deviation” is defining the limits of the resultant, numerical value.  ALJ Charneski determined that the patentee sufficiently demonstrated a clear intention to limit the claim term to a specific numerical value of 67.5 %, and therefore construed the term “standard deviation” to mean within 67.5 percent of those data points of a data set clustered around the mean or reference value of the set.”

    Infringement

    As to infringement, ALJ Charneski concluded that Samsung carried its preponderance burden of proving infringement and that Respondents’ accused products meet the preamble and the disputed elements of claims 8 and 12.  As such, ALJ Charneski determined that Respondents’ accused products infringe asserted claims 8 and 12 of the ‘065 patent.

    Validity

    Spansion argued that claim 8 of the ‘065 patent is invalid under 35 U.S.C. § 102(b) as anticipated by Japanese Unexamined Patent Application Publication H5-47893 (“Hirosato”).  ALJ Charneski determined that claim 8 of the ‘065 patent does “not cover any process that uses per-lot sampling,” but Hirosato “requires per-lot sampling,” as evidenced by the Hirosato specification, claim 1 of Hirosato, read in view of the specification, and the testimony of Spansion’s expert witness.  Accordingly, ALJ Charneski determined that Spansion had not shown by clear and convincing evidence that asserted claim 8 of the ‘065 is invalid under 35 U.S.C. § 102(b), as anticipated by the Hirosato reference.

    Spansion also argued that asserted dependent claim 12 of the ‘065 patent is invalid under 35 U.S.C. § 103, over Hirosato in view of a 1991 Advanced Semiconductor Manufacturing Conference reference entitled, “Statistically Based Feedback Control of Photoresist Application” (“Leang & Spanos”).  ALJ Charneski noted that Hirosato, alone, does not render dependent claim 12 obvious because it does not anticipate independent claim 8.  In combination, he concluded that Hirosato “does not disclose and filter of any kind” and Leang & Spanos “does not disclose a filter of the type claimed in claim 12.”  ALJ Charneski cautioned against using impermissible hindsight and stated that “Spansion misrepresents the state of obviousness law after KSR” because, although KSR held there is no rigid application of the teaching-suggestion-motivation test, “it is still important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the [prior art] elements in the manner claimed.”  ALJ Charneski determined that Spansion did not show by clear and convincing evidence that asserted claims 8 and 12 of the ‘065 patent are invalid under 35 U.S.C. § 103, as rendered obvious by Hirosato alone or in combination with the Leang & Spanos reference.

    In addition, Spansion asserted that claims 1, 8, and 12 of the ‘065 patent are invalid for failure to disclose the best mode, under 35 U.S.C. § 112.  ALJ Charneski noted that to invalidate a claim for failure to disclose the best mode, Spansion must prove that (1) the inventors, at the time of filing, considered a certain mode of practice to be superior, and (2) that they failed to adequately disclose that mode in the specification.  ALJ Charneski criticized Spansion’s argument on the basis that it “did not attempt a detailed analysis of the [best mode] elements and failed to point to evidence showing that, at the time the patent application was filed, the inventors believed there was one mode that was superior to all other modes.”  Thus, ALJ Charneski determined that Spansion failed to show by clear and convincing evidence that claims 1, 8, and 12 of the ‘065 patent are invalid for failure to disclose the best mode under 35 U.S.C. § 112, first paragraph.

    Spansion also argued that claims 1, 8, and 12 of the ‘065 patent are invalid as indefinite under 35 U.S.C. § 112, if not limited to implementing Equation (1) of the patent.  ALJ Charneski noted that a “claim is indefinite only if the claim is insolubly ambiguous and no narrowing construction can properly be adopted.”  Here, ALJ Charneski stated, “accumulative average cannot be indefinite because it clearly is amenable to construction.”  He also pointed out that Spansion’s argument of indefiniteness is undercut by the fact that the parties all proposed constructions for the term “accumulatively averaging.”  ALJ Charneski determined that Spansion did not show by clear and convincing evidence that claims 1, 8, and 12 of the ‘065 patent are invalid as indefinite under 35 U.S.C. § 112, paragraph 2.

    Spansion argued lack of written description and enablement under 35 U.S.C. § 112 with respect to the term “setting a current working condition” and with respect to semiconductor processes other than alignment and exposure.  Regarding written description, ALJ Charneski noted that a specification may satisfy the written description requirement without describing all of the embodiments of the claim.  Regarding lack of enablement, he stated that Spansion’s arguments fail to recognize or address the expert testimony explaining otherwise.  ALJ Charneski determined that there was no showing by clear and convincing evidence that claims 1, 8, and 12 of the ‘065 patent are invalid under 35 U.S.C. § 112.

    Spansion also argued that, based on the principles articulated by the Supreme Court in Bilski and Flook, claims 1, 8, and 12 of the ‘065 patent are invalid.  Specifically, Spansion argued that the claims “constitute nothing more than an attempt to patent the abstract idea of applying a recursive mathematical function with an error correction step to a non-specific method of semiconductor manufacture, using parameters measured in a non-specific manner, just like the claims found invalid under Section 101 in the Supreme Court’s Flook decision.”  Responding, Samsung argued that Spansion’s expert “provided no testimony in support of Spansion’s § 101 argument at the hearing and Spansion cites to no testimony from its expert,” and stated that it showed first that the claims of the ‘065 patent are novel, useful, and contain meaningful limitations.  ALJ Charneski concluded that “Spansion’s expert provided no testimony in support of Spansion’s § 101 argument at the hearing and Spansion cites no testimony from its expert.”  He also stated that Spansion failed to heed the Bilski Supreme Court instruction “to consider the invention as a whole,” and instead improperly isolated one limitation, “averaging,” and argued that the entire patent claims an abstract idea because semiconductor machines were known in the prior art.  ALJ Charneski further noted that the Supreme Court in Diamond v. Diehr stated that a “claim drawn to subject matter otherwise statutory does not become non-statutory simply because it uses a mathematical formula, computer program, or digital computer.”  Here, he stated, “as in Diehr, the end results of the computational steps of the ‘065 patent affect and control real-world industrial processes.”  ALJ Charneski determined that Spansion failed to carry its heavy burden of showing by clear and convincing evidence that asserted claims 8 and 12 of the ‘065 patent are invalid under 35 U.S.C. § 101 for failure to claim patentable subject matter.

    Domestic Industry

    ALJ Charneski determined that Samsung satisfied the economic prong of the domestic industry requirement through the activities of its wholly-owned subsidiary, Samsung Austin Semiconductor, LLC.  Specifically, ALJ Charneski determined that Samsung satisfied the economic prong through its substantial investment in plant and equipment and through its significant employment of labor and capital.  With respect to the technical prong, ALJ Charneski noted that the “technical prong issue hinge[d] only on the claim construction of the claim term “accumulatively averaging,” and determined that Samsung carried its burden of showing that it practices claim 1 of the ‘065 patent.

    Remedy & Bond

    ALJ Charneski recommended that the “Commission issue a limited exclusion order in the event that a violation of section 337 is found,” and that the limited exclusion order should be directed to certain flash memory or products containing same that are the subject of this investigation and which have been found to infringe the ‘065 patent.  In addition, because Spansion maintains commercially significant inventory in the United States, ALJ Charneski determined that “in the event that a violation of section 337 is found, it is recommended that the Commission issue a cease and desist order with respect to Spansion and D-Link.”

    Finally, based on unrebutted evidence presented by Samsung’s expert on the remedy issue, ALJ Charneski determined that “in the event that a violation of section 337 is found, it is recommended that [R]espondents be required to post a bond equal to 2.4 percent of the entered value of any accused product that they seek to import during the Presidential review period.”