• ALJ Bullock Issues Public Version of Initial Determination in Certain Probe Card Assemblies (337-TA-621) Finding No Violation of Section 337
  • July 31, 2009 | Author: Barry J. Herman
  • Law Firm: Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria Office
  • Further to our June 29, 2009 post, on July 20, ALJ Charles E. Bullock issued the public version of his initial determination (“ID”) in the matter of Certain Probe Card Assemblies, Components Thereof and Certain Probe Card Assemblies, Components Thereof and Certain Tested DRAM and NAND Flash Memory Devices and Products Containing Same (Inv. No. 337-TA-621).

    In the 205-page ID, ALJ Bullock held that there was no violation of Section 337 by respondents Phicom Corp. and Phiam Corp. (collectively, “Phicom”), and Micronics Japan Co., Ltd., and MJC Electronics Corp. (collectively, “Micronics”) for importation into the U.S., the sale for importation, or the sale within the U.S. after importation of certain probe card assemblies and components thereof, certain probe card assemblies and components thereof, and certain tested DRAM and NAND flash memory devices and products containing same, in connection with claims 1, 3, 4, 18, 19, 23, 24, 29, 32, 33, 36, 37, and 41 of U.S. Patent No. 6,615,485 (the ‘485 patent); claims 1-3, 12, 24, and 25 of U.S. Patent No. 6,509,751 (the ‘751 patent); claim 19 of U.S. Patent No. 7,225,538 (the ‘538 patent); and claims 21-23, 27-37, and 33-35 of U.S. Patent No. 5,994,152 (the ‘152 patent).  Further, the ALJ determined that FormFactor, Inc. had satisfied the domestic industry requirement with respect to the ‘751 patent, but that it had not satisfied the domestic industry requirement for the ‘485, ‘538, and ‘152 patents.

    According to the ID, a Markman hearing was conducted in September 2008, and a claim construction order was issued in January 2009, which was incorporated by reference into the ID.  An evidentiary hearing was conducted from February 24 to March 6, 2009.

    ‘485 Patent

    In the ID, ALJ Bullock determined that Phicom’s probe card assemblies and Micronics’ U-probes do not infringe claim 1 of the ‘485 patent because they do not meet the “compliant interconnection structure” limitation.  With respect to claim 18, the ALJ found that it was permissible for FormFactor to assert a theory of “joint” direct infringement, but found that FormFactor failed to prove direct infringement because it could not show that Phicom’s and Micronics’ customers are the “mastermind” or are in “control” over Phicom and Micronics when adjustments are made to the probe card assemblies.  With respect to claim 32, ALJ Bullock found that Phicom and Micronics did not infringe for the same reasons he found with respect to claims 1 and 18.

    With respect to validity, ALJ Bullock determined that Respondents had not shown that any of the asserted claims of the ‘485 patent were invalid as anticipated or obvious.  He rejected certain arguments raised by Respondents based on findings made by the PTO during reexamination of the ‘485 patent because, “while relevant, it is not dispositive, especially because it is not clear that the examiners are basing their decision on claim constructions that are consistent with those made” by the ALJ.  Further, ALJ Bullock found that Respondents had waived certain anticipation arguments because they did not specifically raise the arguments in their pre-hearing briefs, which violated the ground rules.  He also found that Respondents had not proven that the claims of the ‘485 patent were invalid based on lack of written description or enablement.

    ‘751 Patent

    ALJ Bullock found that Phicom did not contest that it’s Type B and Type C MEMS Cards infringe the asserted claims of the ‘751 patent.  He found, however, that Phicom’s new probe card design assembly do not infringe the claims of the ‘751 patent because they do not meet the “planarizing element” limitation of claim 1 and do not meet the “adjustable central control member” limitation of claims 12 and 24.  Similarly, ALJ Bullock found that Micronics’ U-Probes do not infringe the asserted claims of the ‘751 patent.

    With respect to validity, ALJ Bullock determined that Respondents had not shown that any of the asserted claims of the ‘751 patent were invalid as anticipated or obvious.

    ‘538 Patent

    ALJ Bullock found that MJC’s Micro Cantilevers do not infringe claim 19 of the ‘538 patent because FormFactor did not prove that the substrate used in the manufacture of MJC’s products was shown to be “destructible, such as by etching.”  He also found that FormFactor did not satisfy the technical prong of the domestic industry requirement because it’s T5 and T8 MicroSpring products do not contain “said patterned layer comprising openings corresponding to said contact structures.”

    With respect to validity, ALJ Bullock determined that MJC had not shown “in its briefs” that claim 19 of the ‘538 patent was invalid as anticipated or obvious.  He also rejected MJC’s enablement and unenforceability arguments.

    ‘152 Patent

    ALJ Bullock adopted Phicom’s argument that its products do not meet the “release material” limitation of claim 21 of the ‘152 patent.  He also found that FormFactor’s T-2 MicroSpring product does not practice claim 21 because it does not meet the “depositing spring material in the selected portion to form a cantilever element.”  Further, he found that FormFactor waived its argument that its T-8 products practice claim 21 since it did not raise that issue in its pre-hearing brief.

    ALJ Bullock found that the Kubena ‘194 patent anticipates claim 21.  Since he found non-infringement, failure to satisfy the technical prong of the domestic industry requirement, and anticipation by Kubena, he did not address the other invalidity arguments related to anticipation and obviousness of the dependent claims.  ALJ Bullock rejected Phicom’s lack of written description and enablement arguments.