Semicaps PTE Ltd v. Hamamatsu Corporation et al

Filing 76

AMENDED ORDER by Magistrate Judge Donna M. Ryu denying 49 Defendant's Motion to Dismiss. Signed by Magistrate Judge Donna M. Ryu on 11/6/2019. (dmrlc1, COURT STAFF) (Filed on 11/6/2019)

1
2
3
4

UNITED STATES DISTRICT COURT

5

NORTHERN DISTRICT OF CALIFORNIA

6
7

SEMICAPS PTE LTD,

8

Plaintiff,
AMENDED ORDER DENYING
DEFENDANT'S MOTION TO DISMISS

v.

9
10

HAMAMATSU CORPORATION, et al.,

11

United States District Court
Northern District of California

Case No. 17-cv-03440-DMR

Defendants.

Re: Dkt. No. 49

Plaintiff SEMICAPS Pte Ltd. (“SEMICAPS”) filed this patent case against Defendants

12
13

Hamamatsu Corporation, Hamamatsu Photonics K.K., and Photonics Management Corp.

14

(collectively, Defendants or “Hamamatsu”), alleging that Hamamatsu infringes the claims of U.S.

15

Patent No. 7,623,982 (the “‘982 patent”), which relates to testing of electronic circuits using a

16

laser. Hamamatsu moves to dismiss the complaint, arguing that the asserted claims are invalid

17

because they claim patent-ineligible subject matter. [Docket No. 49.] The court held a hearing on

18

July 11, 2019. For the following reasons, the motion is denied.1

19

I.

BACKGROUND
The ‘982 Patent

20

A.

21

SEMICAPS is the owner by assignment of the ‘982 patent titled, “Method of Testing an

22

Electronic Circuit and Apparatus Thereof.” Compl. ¶ 11, Ex. A (‘982 Patent). The ‘982 patent

23

was issued by the United States Patent and Trademark Office (“USPTO”) on November 24, 2009,

24
25
26
27
28

and “relates generally to semiconductor processing, and more particularly to a method of testing
an electronic circuit, as well as to a respective apparatus,” ‘982 Patent 1:6-8, in order to
“determine the location of defects on the semiconductor circuit.” Opp’n 3.
1

The court issues this amended order in accordance with its November 5, 2019 order denying
Hamamatsu’s motion for leave to file a motion for reconsideration. [Docket No. 75.] The
amended portions of the order appear in bold italic type.

1

SEMICAPS describes the relevant technology as follows: newly-fabricated integrated

2

semiconductor circuits are “typically tested by connecting them to electronic test equipment that

3

applies test signals to each integrated circuit and receives output signals from the circuit as a

4

result.” Id. While this method of testing can reveal defects, it does not identify the location of the

5

defect in the integrated circuit. In order to determine the location of the defect, fabricators use

6

“failure analysis systems . . . to perform fault localization testing,” which can be done using lasers

7

in scanning microscopes. Id. at 3-4.

8
9
10

United States District Court
Northern District of California

11
12
13
14
15
16
17

The ‘982 patent’s background information describes the problem the patent seeks to solve.
It explains that “conventional laser induced techniques generally involve using a scanned laser
beam, typically in the infrared frequency range, to stimulate integrated circuit failures which are
sensitive to thermal or carrier stimulations.” ‘982 Patent at 1:16-19. These techniques include
Optical Beam Induced Resistance Change (“OBIRCH”), Thermal Induced Voltage Alteration
(“TIVA”), and Differential Resistance Measurement (“DReM”). Id. at 1:22-27. However,
advances in integrated circuit technology, including “the use of more metallization layers and new
low k inter-layer dielectric materials with lower thermal conductivity,” have reduced the laser
coupling efficiency, which in turn reduces the detection sensitivity. Id. at 1:28-33. The inventors
explain that “conventional approaches” to improve the detection sensitivity of laser induced
techniques have not been entirely successful. For example, increasing the power of the laser beam

18
19
20
21
22
23
24
25

used “in order to compensate for the reduced laser coupling efficiency . . . may not be desirable,”
because “there may be potential laser induced damage on the integrated circuit under test when the
power of the laser beam used is too high.” Id. at 1:38-49. Another approach is to use “a pulsed
laser in conjunction with a lock-in amplifier,” which increases detection sensitivity. Id. at 1:5052. However, lock-in amplifiers are “not used in a real-time integrated circuit testing
environment” because “accurate calibration and fine control of the lock-in amplifier parameters is
typically difficult to achieve in practice.” Id. at 1:62-67.
The ‘982 patent attempts to increase detection sensitivity in a laser-based fault detection

26

system without increasing the power of the laser beam or using lock-in amplifiers. ‘982 Patent at

27

10:19-46. According to the patent, “[t]he method comprises radiating a laser beam onto the

28
2

1

electronic circuit, and determining a plurality of samples of a response signal output by the

2

electronic circuit during the period when the laser beam is radiated.” ‘982 Patent, Abstract. A

3

signal processor “process[es] the sample measurements of the response signal of the electronic

4

circuit under test” by “accumulat[ing] the plurality of samples to generate a value, and then

5

generat[ing] a test result based on the value generated.” ‘982 Patent at 3:65-4:2. Based on the

6

generated value, a fault on the electronic circuit may appear as a bright spot, bright line, or bright

7

area at a pixel location corresponding to the location of the fault on the electronic circuit. Id. at

8

4:16-24, 4:34-38, 5:12-16.

9
10

United States District Court
Northern District of California

11
12
13
14

The ‘982 patent includes 25 claims. SEMICAPS alleges that Hamamatsu infringes at least
claims 4-7 and 21-25. Compl. ¶ 13. At the hearing SEMICAPS represented that it also asserts
claims 8 and 17. See Mot. 12 n.3; Opp’n 1. Claims 4-8 and claim 17 pertain to a method of
testing an electronic circuit, while claims 21-25 describe a related apparatus.
1.

Claims 4-8 and Claim 17

Claims 4-8 depend from independent Claim 1, which states:

15

1. A method of testing an electronic circuit, comprising:

16

radiating a laser beam onto the electronic circuit,

17
18

determining a plurality of samples of a response signal output
by the electronic circuit during the period when the laser beam
is radiated,

19

accumulating the plurality of samples to generate a value, and

20

generating a test result based on the value.

21
22
23
24
25
26
27
28

‘982 Patent at 10:59-67.
Claims 4-8 and claim 17 add the following limitations to Claim 1:
4. The method of claim 1, wherein the laser beam is a pulsed laser
beam.
5. The method of claim 4, wherein the frequency of sampling of the
response signal is higher than the frequency of the pulsed laser beam.
6. The method of claim 4, wherein the frequency of the pulsed laser
beam is in the range from about 50 Hz to about 50 kHz.
7. The method of claim 4, wherein the frequency of sampling of the
response signal is in the range from about 100 kHz to about 80 MHz.
3

8. The method of claim 1, wherein accumulating the plurality of
samples is performed after a predetermined time delay from the start
of the period when the laser beam is radiated.

1
2

17. The method of claim 1, wherein another plurality of samples of
another response signal output by the electronic circuit during a
period when the laser beam is not radiated is determined, the other
plurality of samples is accumulated to generate another value and the
test result is generated based on the value and the other value.

3
4
5

‘982 Patent at 11:8-22, 12:4-9.

6
2.

7

Claims 21-25

Claim 21 is an independent claim and describes an apparatus:
8
21. An apparatus, comprising:

9

a laser beam source, wherein the laser beam source radiates a laser
beam onto the electronic circuit,

10

United States District Court
Northern District of California

11

a control system operable to direct the laser beam source to dwell on
a location on the electronic circuit,

12

a measuring circuit, wherein the measuring circuit determines a
plurality of samples of a response signal output by the electronic
circuit during the period when the laser beam is radiated, and

13
14

a signal processor, wherein the signal processor accumulates the
plurality of samples to generate a value, and generates a test result
based on the value.

15
16

‘982 Patent at 12:19-31. Claims 22-25 depend from claim 21. They recite:

17
22. The apparatus of claim 21, wherein the control system is operable
to move the laser beam source according to a pattern over a plurality
of locations on the electronic circuit.

18
19

23. The apparatus of claim 21, wherein the laser beam is a pulsed
laser beam.

20
21

24. The apparatus of claim 23, wherein the frequency of sampling is
higher than the frequency of the pulsed laser beam.

22
25. The apparatus of claim 23, wherein the frequency of the pulsed
laser beam is in the range from about 50 Hx to about 50 kHz and the
frequency of sampling is in the range from about 100 kHz to about 80
MHz.

23
24
25

Id. at 12:32-43.

26

B.

27

SEMICAPS alleges that Hamamatsu infringes the asserted claims either literally or under

28

Alleged Infringement

the doctrine of equivalents. Compl. ¶ 13. It contends that Hamamatsu infringes the claims “by
4

1

making, using, selling, offering to sell, and/or importing into the United States Hamamatsu’s

2

M10383 Digital Lock-in Kit (‘M10383’) . . . , testing equipment incorporating or retrofitted to

3

include the M10383, and other technology that incorporates the infringing aspects of the M10383 .

4

. . (the ‘Accused Products’).” Id.; Compl. Ex. B. According to SEMICAPS, Hamamatsu’s

5

PHEMOS and iPHEMOS series of emission microscopes use OBIRCH for semiconductor failure

6

analysis and incorporate the M10383, and “compete with SEMICAPS’ Scanning Optical

7

Microscopes.” Id. at ¶¶ 14, 15; Compl. Ex. C. In its complaint, SEMICAPS alleges that the

8

Accused Products infringe claims 4-7 and 21-25 of the ‘982 patent by performing the method

9

specified in the patent and using the apparatus of the asserted claims when conducting OBIRCH

10

analysis. Id. at ¶¶ 20-54.

United States District Court
Northern District of California

11

C.

12

SEMICAPS filed this lawsuit on June 14, 2017. On September 19, 2017, the court granted

13

Hamamatsu’s unopposed motion to stay the case pending inter partes review (“IPR”) proceedings

14

initiated by Hamamatsu challenging the validity of the ‘982 patent. [Docket No. 28.] This case

15

resumed following the issuance of two Final Written Decisions by the Patent Trial and Appeal

16

Board (“PTAB”) in the IPR proceedings. Hamamatsu now moves to dismiss.2

17

II.

Procedural History

LEGAL STANDARDS
A motion to dismiss under Rule 12(b)(6) tests the legal sufficiency of the claims alleged in

18
19
20
21
22
23
24
25
26
27
28

Hamamatsu asks the court to take judicial notice of the prosecution history of the ‘982 patent.
[Docket No. 50 (Chu Decl., May 23, 2019) ¶ 4, Ex. 1 (Prosecution History).] SEMICAPS did not
object. The court takes judicial notice of the prosecution history pursuant to Federal Rule of
Evidence 201(b)(2), as it is a public record that “consists of the complete record of the
proceedings before the PTO and includes the prior art cited during the examination of the patent.”
Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005). See, e.g., Coinstar, Inc. v.
Coinbank Automated Sys., Inc., 998 F. Supp. 1109, 1114 (N.D. Cal. 1998) (granting request for
judicial notice of patent file histories).
2

SEMICAPS submitted additional material outside the pleadings. [Docket No. 53-1
(Marton Decl., June 6, 2019).] These appear to be Hamamatsu’s IPR petitions challenging the
validity of the claims, a declaration submitted in support of the petitions by Hamamatsu’s expert,
and the PTAB’s final written decisions on the petitions. It appears that SEMICAPS contends that
these materials are part of the prosecution history and are thus subject to judicial notice, although
it does not expressly request that the court take judicial notice of them. As Hamamatsu did not
object to the inclusion of these materials as part of the prosecution history, the court takes judicial
notice of them.
5

the complaint. See Parks Sch. of Bus., Inc. v. Symington, 51 F.3d 1480, 1484 (9th Cir. 1995).

2

When reviewing a motion to dismiss for failure to state a claim, the court must “accept as true all

3

of the factual allegations contained in the complaint,” Erickson v. Pardus, 551 U.S. 89, 94 (2007)

4

(per curiam) (citation omitted), and may dismiss a claim “only where there is no cognizable legal

5

theory” or there is an absence of “sufficient factual matter to state a facially plausible claim to

6

relief.” Shroyer v. New Cingular Wireless Servs., Inc., 622 F.3d 1035, 1041 (9th Cir. 2010) (citing

7

Ashcroft v. Iqbal, 556 U.S. 662, 677-78 (2009); Navarro v. Block, 250 F.3d 729, 732 (9th Cir.

8

2001)) (quotation marks omitted). A claim has facial plausibility when a plaintiff “pleads factual

9

content that allows the court to draw the reasonable inference that the defendant is liable for the

10

misconduct alleged.” Iqbal, 556 U.S. at 678 (citation omitted). In other words, the facts alleged

11

United States District Court
Northern District of California

1

must demonstrate “more than labels and conclusions, and a formulaic recitation of the elements of

12

a cause of action will not do.” Bell Atl. Corp. v. Twombly, 550 U.S. 554, 555 (2007) (citing

13

Papasan v. Allain, 478 U.S. 265, 286 (1986)); see Lee v. City of L.A., 250 F.3d 668, 679 (9th Cir.

14

2001), overruled on other grounds by Galbraith v. Cty. of Santa Clara, 307 F.3d 1119 (9th Cir.

15

2002).
As a general rule, a court may not consider “any material beyond the pleadings” when

16
17

ruling on a Rule 12(b)(6) motion. Lee, 250 F.3d at 688 (citation and quotation marks omitted).

18

However, “a court may take judicial notice of ‘matters of public record,’” id. at 689 (citing Mack

19

v. S. Bay Beer Distrib., 798 F.2d 1279, 1282 (9th Cir. 1986)), and may also consider “documents

20

whose contents are alleged in a complaint and whose authenticity no party questions, but which

21

are not physically attached to the pleading,” without converting a motion to dismiss under Rule

22

12(b)(6) into a motion for summary judgment. Branch v. Tunnell, 14 F.3d 449, 454 (9th Cir.

23

1994), overruled on other grounds by Galbraith, 307 F.3d at 1125-26. The court need not accept

24

as true allegations that contradict facts which may be judicially noticed. See Mullis v. U.S. Bankr.

25

Court, 828 F.2d 1385, 1388 (9th Cir. 1987).

26

III.

27
28

DISCUSSION
Hamamatsu argues that the complaint should be dismissed because the asserted claims of

the ‘982 patent are invalid under 35 U.S.C. § 101 for failing to claim patent-eligible subject
6

1

matter. Section 101 patent eligibility is a question of law that may be resolved on a motion to

2

dismiss. In re Roslin Inst. (Edinburgh), 750 F.3d 1333, 1335 (Fed. Cir. 2014); Genetic Techs. Ltd.

3

v. Merial LLC, 818 F.3d 1369, 1373-74 (Fed. Cir. 2016). SEMICAPS does not object to

4

adjudication of the Section 101 challenge at this early stage of the proceedings, and the parties

5

agree that no disputes of fact exist that would otherwise prevent a ruling.3
A. Subject Matter Eligibility

7

Section 101 of the Patent Act defines the subject matter that is eligible for patent

8

protection. Bilski v. Kappos, 561 U.S. 593, 601 (2010). It provides that “[w]hoever invents or

9

discovers any new and useful process, machine, manufacture, or composition of matter, or any

10

new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and

11

United States District Court
Northern District of California

6

requirements of this title.” 35 U.S.C. § 101.4 Under well-settled law, “this provision contains an

12

important implicit exception: [l]aws of nature, natural phenomena, and abstract ideas are not

13

patentable.” Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). These categories are

14

not patentable because “they are the basic tools of scientific and technological work.” Mayo

15

Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012) (quotation omitted).

16

“[M]onopolization of those tools through the grant of a patent might tend to impede innovation

17

more than it would tend to promote it.” Id. However, the Supreme Court has also cautioned that

18

“too broad an interpretation of this exclusionary principle could eviscerate patent law,” id.,

19

because “[a]t some level, ‘all inventions . . . embody, use, reflect, rest upon, or apply laws of

20
21
22
23
24
25
26
27
28

Notwithstanding its agreement that Hamamatsu’s Section 101 challenge is ripe for adjudication
on the pleadings, SEMICAPS argues that if there is a dispute about the scope of the terms
“determining” and “accumulating” as used in claim 1, the court should construe those claims prior
to ruling on the motion. See Opp’n 9 n.1. As the court finds that the asserted claims are not
directed to a patent-ineligible concept, it need not construe the “determining” and “accumulating”
terms at this time. See Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n,
776 F.3d 1343, 1349 (Fed. Cir. 2014) (“Although the determination of patent eligibility requires a
full understanding of the basic character of the claimed subject matter, claim construction is not an
inviolable prerequisite to a validity determination under § 101.”).
3

“The § 101 patent-eligibility inquiry is only a threshold test. Even if an invention qualifies as a
process, machine, manufacture, or composition of matter, in order to receive the Patent Act’s
protection the claimed invention must also satisfy ‘the conditions and requirements of this title.’
[35 U.S.C.] § 101.” Bilski, 561 U.S. at 602. “Those requirements include that the invention be
novel, see [35 U.S.C. §] 102, nonobvious, see [35 U.S.C. §] 103, and fully and particularly
described, see [35 U.S.C. §] 112.” Id.
7
4

1

nature, natural phenomena, or abstract ideas.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at

2

71). “Thus, an invention is not rendered ineligible for patent simply because it involves an

3

abstract concept,” and courts must “tread carefully in construing this exclusionary principle lest it

4

swallow all of patent law.” Id.

5

The Supreme Court has articulated a two-part test for determining whether a claim’s

6

subject matter falls outside Section 101. See Alice, 573 U.S. at 217; Mayo, 566 U.S. 77-78. This

7

“framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract

8

ideas from those that claim patent-eligible applications of those concepts” proceeds in two steps as

9

follows:

10

United States District Court
Northern District of California

11
12
13
14
15

First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat else is
there in the claims before us?” To answer that question, we consider
the elements of each claim both individually and “as an ordered
combination” to determine whether the additional elements
“transform the nature of the claim” into a patent-eligible application.
We have described step two of this analysis as a search for an
“‘inventive concept’”—i.e., an element or combination of elements
that is “sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.”
Alice, 573 U.S. at 217-18 (internal citations omitted, alterations in original).

16
17
18
19
20

“Although the two steps in the Alice framework involve overlapping scrutiny of the
content of the claims, the Supreme Court’s formulation makes clear that the first-stage filter is a
meaningful one, sometimes ending the § 101 inquiry.” Visual Memory LLC v. NVIDIA Corp., 867
F.3d 1253, 1258 (Fed. Cir. 2017) (internal quotation marks and citation omitted). “The ‘directed
to’ inquiry, therefore, cannot simply ask whether the claims involve a patent-ineligible concept,

21
because essentially every routinely patent-eligible claim involving physical products and actions
22
involves a law of nature and/or natural phenomenon—after all, they take place in the physical
23
24

world.” Id. (emphasis in original). Instead, courts must consider the claims “in their entirety to
ascertain whether their character as a whole is directed to excluded subject matter.” FairWarning

25
IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1094 (Fed. Cir. 2016) (quoting McRO, Inc. v.
26
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016)).
27

The Federal Circuit has “described the first-stage inquiry as looking at the focus of the

28
8

1

claims, their character as a whole, and the second-stage inquiry (where reached) as looking more

2

precisely at what the claim elements add—specifically, whether, in the Supreme Court’s terms,

3

they identify an ‘inventive concept’ in the application of the ineligible matter to which (by

4

assumption at stage two) the claim is directed.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d

5

1350, 1353 (Fed. Cir. 2016) (internal quotation marks and citations omitted).

6

B.

7

As noted, SEMICAPS asserts claims 4-8 and claim 17, all of which depend from claim 1.

8

SEMICAPS also asserts claims 21-25. Although neither party identified representative claims in

9

their briefing, the parties agreed at the hearing that claims 1 and 21 are representative for purposes

Representative Claims

of the Section 101 analysis. Accordingly, the court will treat claims 1 and 21 as representative.

11

United States District Court
Northern District of California

10

See Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343,

12

1348 (Fed. Cir. 2014) (affirming district court’s treatment of two claims as representative,

13

“because all the claims are ‘substantially similar and linked to the same abstract idea.’”). Those

14

claims state the following:

15

Claim 1:

16

A method of testing an electronic circuit, comprising:

17

radiating a laser beam onto the electronic circuit,

18

determining a plurality of samples of a response signal output by the
electronic circuit during the period when the laser beam is radiated,

19
20
21
22

accumulating the plurality of samples to generate a value, and
generating a test result based on the value.
Claim 21:

23

An apparatus, comprising:

24

a laser beam source, wherein the laser beam source radiates a laser
beam onto the electronic circuit,

25
26
27
28

a control system operable to direct the laser beam source to dwell on
a location on the electronic circuit,
a measuring circuit, wherein the measuring circuit determines a
plurality of samples of a response signal output by the electronic
circuit during the period when the laser beam is radiated, and
9

1

a signal processor, wherein the signal processor accumulates the
plurality of samples to generate a value, and generates a test result
based on the value.

2
3

C.

4

At the first step, the court must determine whether the claims at issue are “directed to” a

5

“patent-ineligible concept[].” Alice, 573 U.S. at 217. As the Federal Circuit has explained, “the

6

‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the specification,

7

based on whether ‘their character as a whole is directed to excluded subject matter.’” Enfish, LLC

8

v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (citation omitted).

9

Alice Step One

Hamamatsu argues that claims 1 and 21 are directed to the abstract idea of “collecting data
and processing it to generate a test result.” Mot. 9. SEMICAPS disputes Hamamatsu’s framing,

11

United States District Court
Northern District of California

10

and contends that claims 1 and 21 are directed to a specific technological problem, namely,

12

“improving fault detection sensitivity in laser-based testing of integrated circuits.” SEMICAPS

13

asserts that its patent “describes and claims a specific solution” to that problem. Opp’n 11-12.

14

“The Supreme Court has not established a definitive rule to determine what constitutes an

15

‘abstract idea’ sufficient to satisfy the first step of the Mayo/Alice inquiry.” Enfish, 822 F.3d at

16

1334. Courts generally begin by “compar[ing] claims at issue to those claims already found to be

17

directed to an abstract idea in previous cases.” Id. (citing Alice, 573 U.S. at 221 (“we need not

18

labor to delimit the precise contours of the ‘abstract ideas’ category in this case. It is enough to

19

recognize that there is no meaningful distinction between the concept of risk hedging in Bilski and

20

the concept of intermediated settlement at issue here.”)); see also Amdocs (Israel) Ltd. v. Openet

21

Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (“the decisional mechanism courts now apply

22

is to examine earlier cases in which a similar or parallel descriptive nature can be seen—what

23

prior cases were about, and which way they were decided.”).

24

Neither party cites cases that analyze claims pertaining to a method or apparatus for

25

conducting laser-induced testing of integrated circuits, and indeed, the court could not find any.

26

Instead, Hamamatsu argues that this case is similar to those that found that the claims are abstract

27

where they are directed to some combination of collecting and/or analyzing information and

28

presenting the results of those processes; Hamamatsu relies primarily on Electric Power Group.
10

1

In Electric Power Group, the Federal Circuit analyzed a claim for a “method of detecting events

2

on an interconnected electric power grid in real time over a wide area and automatically analyzing

3

the events on the interconnected electric power grid.” 830 F.3d at 1351. The method included the

4

following steps: 1) receiving a plurality of data streams collected in real time at geographically

5

distinct points over the interconnected electric power grid; 2) receiving data from other sources on

6

the electric power grid; 3) receiving data from non-power grid sources; 4) detecting and analyzing

7

events in real time from the disparate sources based on an analysis of the measurements in the

8

data; 5) displaying the results of the analysis and other information from the data; 6) displaying

9

“concurrent visualization of measurements” from the data; 7) accumulating and updating in real
time the measurements from the data sources; and 8) combining the data into “a composite

11

United States District Court
Northern District of California

10

indicator of power grid vulnerability.” Id. at 1351-52.5

12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

5

The representative claim discussed in Electric Power Group was as follows:
12. A method of detecting events on an interconnected electric power
grid in real time over a wide area and automatically analyzing the
events on the interconnected electric power grid, the method
comprising:
receiving a plurality of data streams, each of the data streams
comprising sub-second, time stamped synchronized phasor
measurements wherein the measurements in each stream are collected
in real time at geographically distinct points over the wide area of the
interconnected electric power grid, the wide area comprising at least
two elements from among control areas, transmission companies,
utilities, regional reliability coordinators, and reliability jurisdictions;
receiving data from other power system data sources, the other power
system data sources comprising at least one of transmission maps,
power plant locations, EMS/SCADA systems;
receiving data from a plurality of non-grid data sources;
detecting and analyzing events in real-time from the plurality of data
streams from the wide area based on at least one of limits, sensitivities
and rates of change for one or more measurements from the data
streams and dynamic stability metrics derived from analysis of the
measurements from the data streams including at least one of
frequency instability, voltages, power flows, phase angles, damping,
and oscillation modes, derived from the phasor measurements and the
other power system data sources in which the metrics are indicative
of events, grid stress, and/or grid instability, over the wide area;
displaying the event analysis results and diagnoses of events and
11

1

The Federal Circuit found that the patent was not directed to patentable subject matter

2

because the focus of the asserted claims was “on collecting information, analyzing it, and

3

displaying certain results of the collection and analysis.” Id. at 1353. Noting that “[i]nformation

4

as such is an intangible,” the court explained that it has “treated collecting information, including

5

when limited to particular content (which does not change its character as information), as within

6

the realm of abstract ideas.” Id. (citations omitted). The court has also “treated analyzing

7

information by steps people go through in their minds, or by mathematical algorithms, without

8

more, as essentially mental processes within the abstract-idea category.” Id. at 1354 (citations

9

omitted). Finally, it has “recognized that merely presenting the results of abstract processes of
collecting and analyzing information, without more (such as identifying a particular tool for

11

United States District Court
Northern District of California

10

presentation), is abstract as an ancillary part of such collection and analysis.” Id. (citations

12

omitted). The Electric Power Group court concluded that the claims were focused on a

13

combination of “abstract-idea processes”: “[t]he advance they purport to make is a process of

14

gathering and analyzing information of a specified content, then displaying the results, and not any

15

particular assertedly inventive technology for performing those functions.” Id. See also

16

FairWarning, 839 F.3d at 1092-94 (holding that invention “relat[ing] to a system and method of

17

detecting fraud and/or misuse in a computer environment based on analyzing data such as in log

18
19
20
21
22
23
24
25
26
27
28

associated ones of the metrics from different categories of data and
the derived metrics in visuals, tables, charts, or combinations thereof,
the data comprising at least one of monitoring data, tracking data,
historical data, prediction data, and summary data;
displaying concurrent visualization of measurements from the data
streams and the dynamic stability metrics directed to the wide area of
the interconnected electric power grid;
accumulating and updating the measurements from the data streams
and the dynamic stability metrics, grid data, and non-grid data in real
time as to wide area and local area portions of the interconnected
electric power grid; and deriving a composite indicator of reliability
that is an indicator of power grid vulnerability and is derived from a
combination of one or more real time measurements or computations
of measurements from the data streams and the dynamic stability
metrics covering the wide area as well as non-power grid data
received from the non-grid data source.
830 F.3d at 1351-52.
12

1

files, or other similar records, including user identifier data,” was directed to combination of

2

abstract ideas, namely, “collecting and analyzing information to detect misuse and notifying a user

3

when misuse is detected.”).

4

Hamamatsu asserts that claims 1 and 21 are directed to collecting data (a plurality of

5

samples) in a specified form, then accumulating the samples to derive a value or metric, and using

6

the value to generate a test result. According to Hamamatsu, as with the claims at issue in Electric

7

Power Group, the asserted claims of the ‘982 patent are directed to abstract ideas. See Electric

8

Power, 830 F.3d at 1354.
Hamamatsu also argues that the inclusion of hardware and computer components in the

9

asserted claims does not change the abstract focus of the claims, citing In re TLI Communications

11

United States District Court
Northern District of California

10

LLC Patent Litigation, 823 F.3d 607, 612 (Fed. Cir. 2016). In TLI, the Federal Circuit considered

12

whether a patent relating to “an apparatus for recording of a digital image, communicating the

13

digital image from the recording device to a storage device, and to administering the digital image

14

in the storage device” claimed patent-eligible subject matter under section 101. Id. at 609.6 The

15
16
17

6

The representative claim addressed in TLI read:

18

17. A method for recording and administering digital images,
comprising the steps of:

19

recording images using a digital pick up unit in a telephone unit,

20

storing the images recorded by the digital pick up unit in a digital form
as digital images,

21

23

transmitting data including at least the digital images and
classification information to a server, wherein said classification
information is prescribable by a user of the telephone unit for
allocation to the digital images,

24

receiving the data by the server,

25

extracting classification information which characterizes the digital
images from the received data, and

22

26
27
28

storing the digital images in the server, said step of storing taking into
consideration the classification information.
823 F.3d at 610.
13

1

court found “that the patent-in-suit claims no more than the abstract idea of classifying and storing

2

digital images in an organized manner.” Id. While the claims recited the use of a telephone unit

3

and a server, the court explained that “the specification makes clear that the recited physical

4

components merely provide a generic environment in which to carry out the abstract idea of

5

classifying and storing digital images in an organized manner.” Id. at 611. The court rejected the

6

plaintiff’s argument that the claims were “directed to a specific improvement to computer

7

functionality,” concluding that they were instead “directed to the use of conventional or generic

8

technology in a nascent but well-known environment, without any claim that the invention reflects

9

an inventive solution to any problem presented by combining the two.” Id. at 612. The TLI court
noted that the specification failed to provide technical details for the physical components, and

11

United States District Court
Northern District of California

10

instead described them “in purely functional terms.” Id. “In other words, the focus of the patentee

12

and of the claims was not on an improved telephone unit or an improved server.” Id. at 613.

13

Accordingly, the court found that the claims were directed to an abstract idea under step one. Id.

14

Hamamatsu notes that claim 21 describes an apparatus that includes four basic

15

components: a laser beam source, control system, measuring circuit, and signal processor. It

16

contends that the ‘982 patent describes how these components are features of conventional laser-

17

induced testing systems and are well known in the prior art, including in U.S. Patent No.

18

6,897,664 (the “‘664 patent”), which was issued in 2005 and is discussed in the ‘982 Patent. See

19

‘982 Patent at 1:12-15, 1:38-67, 3:36-48 (discussing ‘664 Patent). Hamamatsu argues that the

20

claims at issue are not directed to any improvement in the functioning of the conventional

21

components themselves, such as an improved laser beam source or measuring circuit. Rather,

22

according to Hamamatsu, like the telephone unit and server at issue in TLI, the components in the

23

‘982 patent are used “merely [as] a conduit for the abstract idea.” As such, Hamamatsu argues

24

that the inclusion of these components does not change the focus or overall character of the

25

claims. Mot. 11 (citing TLI, 823 F.3d at 612 (“the telephone unit itself is merely a conduit for the

26

abstract idea of classifying an image and storing the image based on its classification.”)).

27
28

SEMICAPS disputes Hamamatsu’s characterization of the asserted claims. It argues that
Hamamatsu oversimplifies them by describing them as being directed to accumulating data and
14

1

analyzing the data to generate a test result. SEMICAPS contends that claims 1 and 21 are directed

2

to a new system for laser-based fault detection in integrated circuits that has increased sensitivity

3

and is therefore an improvement over prior art systems. SEMICAPS distinguishes Electric Power

4

Group and TLI by arguing that the representative claims of the ‘982 patent are directed to an

5

“inventive technology” for performing certain functions, i.e., a specific machine for testing

6

integrated circuits, and not to the abstract idea of collecting and processing data and generating a

7

result therefrom. See Opp’n 11. SEMICAPS argues that the asserted claims therefore are similar

8

to those found by the Federal Circuit to be directed to patent-eligible subject matter where the

9

focus of the claims was “on the specific asserted improvement” of the relevant technology. See,

10

e.g., Enfish, 822 F.3d at 1335-36; McRO, 837 F.3d at 1314.7
For example, in Enfish, the court analyzed claims directed to an “innovative logical model

United States District Court
Northern District of California

11
12

for a computer database,” namely, a “self-referential” table that functioned differently from

13

conventional database structures. 822 F.3d at 1330, 1337. The court held that the claims were not

14

directed to an abstract idea because they focused “on the specific asserted improvement in

15

computer capabilities (i.e., the self-referential table for a computer database),” instead of “a

16

process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” Id.

17

at 1335-36. In McRO, the claims at issue provided a method for automating the lip

18

synchronization and facial expressions of 3-D animated characters. 837 F.3d at 1303-07. The

19

court held that the claims were not abstract because they “focused on a specific asserted

20

improvement in computer animation, i.e., the automatic use of rules of a particular type.” Id. at

21

1314. Noting that “[a] patent may issue ‘for the means or method of producing a certain result, or

22

effect, and not for the result or effect produced,” the court defined the inquiry as examining

23
24
25
26
27
28

7

SEMICAPS devotes several pages of its brief to the argument that the asserted claims are
“novel” and survived IPR proceedings. Id. at 1-2, 6-7, 14-15. However, section 101 “is a general
statement of the type of subject matter that is eligible for patent protection ‘subject to the
conditions and requirements of this title.’ Specific conditions for patentability follow,” including
section 102, which “covers in detail the conditions relating to novelty.” Diamond v. Diehr, 450
U.S. 175, 189 (1981). “The question therefore of whether a particular invention is novel is wholly
apart from whether the invention falls into a category of statutory subject matter.” Id. (quotation
and citation omitted). Accordingly, SEMICAPS’s arguments regarding the novelty of the ‘982
patent are not relevant to the section 101 analysis.
15

1

“whether the claims in these patents focus on a specific means or method that improves the

2

relevant technology or are instead directed to a result or effect that itself is the abstract idea and

3

merely invoke generic processes and machinery.” Id.

4

SEMICAPS also cites Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir.

5

2017) and DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) to support its

6

argument that the ‘982 patent, which is directed to a specific solution to a technological solution,

7

is “the antithesis of abstract.” See Opp’n 9-11. In Thales, the claims disclosed “an inertial

8

tracking system for tracking the motion of an object relative to a moving reference frame” that

9

used mathematical equations to determine the object’s orientation. 850 F.3d at 1344-45. The
court held that the use of mathematical equations, which are themselves not patent-eligible subject

11

United States District Court
Northern District of California

10

matter, “d[id] not doom the claims to abstraction” because the claims were “not merely directed to

12

the abstract idea” of using such equations. Id. at 1347-49. “Rather, the claims are directed to

13

systems and methods that use inertial sensors in a non-conventional manner to reduce errors in

14

measuring the relative position and orientation of a moving object on a moving reference frame.”

15

Id. at 1348-49. The court concluded that “the claims seek to protect only the application of

16

physics to the unconventional configuration of sensors as disclosed,” rather than claiming the

17

equations themselves, and were thus not directed to an abstract idea. Id. at 1349.

18

In DDR Holdings, the Federal Circuit examined patents that claimed a solution to the

19

problem of third-party merchants luring a host website’s visitor traffic away when visitors clicked

20

on a merchant’s advertisement on the host site. 773 F.3d at 1248. The patents disclosed a system

21

of generating and directing the visitor to “a composite web page that displays product information

22

from the third-party merchant, but retains the host’s website’s ‘look and feel.’” Id. at 1248-49.

23

The court explained that “the claims at issue . . . specify how interactions with the Internet are

24

manipulated to yield a desired result” which “overrides the routine and conventional sequence of

25

events ordinarily triggered by the click of a hyperlink.” Id. at 1259. It held that “the claimed

26

solution amounts to an inventive concept for resolving [a] particular Internet-centric problem,

27

rendering the claims patent-eligible.” Id.

28

Here, SEMICAPS argues that like the claims in Enfish, McRO, Thales, and DDR, the ‘982
16

1

patent is “a new and novel system that operates in a unique way to solve a technical problem” and

2

is thus “exactly the type of invention that is patent eligible.” Opp’n 2, 7. Specifically, it asserts

3

that the ’982 patent “is directed to a technological problem: improving fault detection sensitivity

4

in laser-based testing of integrated circuits,” and that it “describes and claims a specific solution”

5

to that problem. Opp’n 11-12.

6

The court concludes that the asserted claims of the ‘982 patent are not directed to an
abstract idea. Hamamatsu’s characterization of the ‘982 patent as directed to the processes of

8

collecting and analyzing information and presenting the results of those processes is overly

9

reductive. It ignores the technical context of the patent and the claimed improvements over the

10

prior art. The ‘982 patent explains how advancements in integrated circuits, including the use of

11

United States District Court
Northern District of California

7

more metallization layers and materials with lower thermal conductivity, have resulted in the need

12

for increased fault detection sensitivity. It describes the problems inherent with existing

13

approaches and sets forth a new system for testing integrated circuits that improves detection

14

sensitivity of response signals. Claim 1 describes the claimed method, which involves radiating a

15

laser beam onto the electronic circuit, determining a plurality of samples of a response signal

16

output during the period the laser is radiated, accumulating the plurality of samples to generate a

17

value, and generating a test result based on the value. Claim 21 sets forth the claimed apparatus,

18

comprised of a laser beam source to radiate a laser beam onto the electronic circuit, a control

19

system to direct the laser beam source to dwell on a certain location on the electronic circuit, a

20

measuring circuit to determine a plurality of samples, and a signal processor to accumulate the

21

plurality of samples to generate a value and a corresponding test result.

22

These claims describe a method and apparatus that enable the detection of response

23

signals due to improved detection sensitivity, and the corresponding analysis of such response

24

signals in order to determine the location of a fault on an electronic circuit. In this way, the

25

asserted claims of the ‘982 patent are distinguishable from the claims at issue in Electric Power

26

Group and TLI. Specifically, the asserted claims in Electric Power Group involved “receiving”

27

data from specified sources, using the data to “detect[ ] and analyz[e] events in real time,”

28

“displaying the event analysis results” from the data, “accumulating and updating the
17

1

measurements from the data streams,” and “deriving a composite indicator of reliability[.]” 830

2

F.3d at 1351-52. In other words, the claimed “method of detecting events on an interconnected

3

electric power grid” was based upon accumulating existing data from disparate sources, analyzing

4

it, and displaying the results. See id. In contrast, the method disclosed in the ‘982 patent is not

5

merely a process of collecting readily observable data in the form of response signals and

6

analyzing it to localize faults on the circuit. Instead, the asserted claims of the ‘982 patent

7

describe a method of achieving improved detection sensitivity of response signals. They are

8

therefore directed to a “new and useful technique” for performing the specified task of using a

9

laser to perform fault localization testing of an electronic circuit. See Thales, 850 F.3d at 1349
(holding that “claims directed to a new and useful technique for using sensors to more efficiently

11

United States District Court
Northern District of California

10

track an object on a moving platform” were not directed to an abstract idea).

12

TLI is also inapposite. In TLI, the court explained that the patent was not “directed to a

13

specific improvement to computer functionality,” but was instead “directed to the use of

14

conventional or generic technology,” such as a telephone and a server, “in a nascent but well-

15

known environment, without any claim that the invention reflects an inventive solution to any

16

problem presented by combining the two.” 823 F.3d at 612. Here, the claims of the ‘982 patent

17

do not simply use conventional components to implement the abstract ideas of gathering and

18

analyzing existing data. Rather, they claim a step-by-step method to improve an existing

19

technological process by which response signals may be detected and analyzed to pinpoint the

20

location of a fault on an electronic circuit. “[A] new combination of steps in a process may be

21

patentable even though all the constituents of the combination were well known and in common

22

use before the combination was made.” Diehr, 450 U.S. at 187-89 (claimed method for curing

23

synthetic rubber that improved upon prior art molding methods by constantly measuring actual

24

temperature inside mold, recalculating ideal cure time, and automatically opening press when ideal

25

cure time had elapsed was patent-eligible process); see also Thales, 850 F.3d at 1347-48 (“In

26

terms of the modern day Alice test, the Diehr claims were directed to an improvement in the

27

rubber curing process, not a mathematical formula.”).

28

In response, Hamamatsu contends that SEMICAPS’s argument relies on features and
18

purported benefits of the ‘982 patent that are not recited in the claims and are therefore irrelevant

2

to the Section 101 analysis. It cites Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1149

3

(Fed. Cir. 2016), and Versata Development Group, Inc. v. SAP America, Inc., 793 F.3d 1306, 1335

4

(Fed. Cir. 2015), for the proposition that the court must “focus on the language of the Asserted

5

Claims themselves” in conducting the Section 101 analysis. SEMICAPS disputes the premise of

6

Hamamatsu’s argument. It argues that at step one of the Alice framework, the court may consider

7

the patent’s specifications along with the language of the claims to determine whether the asserted

8

claims are directed to patent-ineligible subject matter. According to SEMICAPS, the

9

specifications of the ‘982 patent describe the problem with conventional laser-based testing of

10

electronic circuits and explain how the claimed invention seeks to increase detection sensitivity

11

United States District Court
Northern District of California

1

without increasing the power of the laser beam used or using lock-in amplifiers. It further

12

contends that claims 1 and 21 themselves specify the method and means by which the patent

13

accomplishes this goal.
At the hearing, Hamamatsu maintained its position that the court must focus on the

14
15

language of the claims themselves, but conceded that the court may consider the patent’s

16

specifications at step one of the Alice framework.8 This is consistent with the Federal Circuit’s

17

guidance in Enfish, in which it explained that “the ‘directed to’ inquiry applies a stage-one filter to

18

claims, considered in light of the specification, based on whether ‘their character as a whole is

19

directed to excluded subject matter.’” 822 F.3d at 1335 (emphasis added; citation omitted). See

20

also Berkheimer v. HP, Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018) (holding that asserted claim for

21

method of archiving an item in a computer processing system was directed to abstract ideas of

22

parsing and comparing data, describing how the “specification explains that the parser ‘determines

23

and extracts components of the standardized document or item representation’ and reassembles the

24
25
26
27
28

The parties agreed that at step two of the Alice framework, where the court “consider[s] the
elements of each claim both individually and ‘as an ordered combination’ to determine whether
the additional elements ‘transform the nature of the claim’ into a patent eligible application,”
Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018) (quoting Alice, 573 U.S. at 217), the
court may look only to the language of the claims themselves.
8

19

1

components ‘into composite output files.’”).9
In sum, considering the challenged claims in their entirety, the court concludes that claims

2
3

1 and 21 are not directed to an abstract idea. Rather, the claims “focus on a specific means or

4

method that improves the relevant technology” and are therefore directed to patent-eligible subject

5

matter under Section 101. See McRO, 837 F.3d at 1314. Given this finding, the court need not

6

proceed to step two of the Alice analysis. See Enfish, 822 F.3d at 1339 (if the court concludes that

7

the asserted claims “are not directed to an abstract idea under step one of the Alice analysis,” it

8

need “not proceed to step two of that analysis.” (citing Alice, 573 U.S. at 217)).

9

IV.

CONCLUSION
For the foregoing reasons, the court finds that the asserted claims of the ‘982 patent are

10

directed to patent-eligible subject matter under 35 U.S.C. § 101. Hamamatsu’s motion to dismiss

12

is denied.
IT IS SO ORDERED.

S
UNIT
ED

Dated: November 6, 2019

DERED

RT

ER

M. Ryu

H

18

onna
Judge D

19
20

FO

17

LI

16

R NIA

O OR
______________________________________
IT IS S
Donna M. Ryu
United States Magistrate Judge

15

A

14

S DISTRICT
TE
C
TA

RT
U
O

13

NO

United States District Court
Northern District of California

11

N

D IS T IC T
R

OF

C

21
22
23
24
25
26
27
28

9

As noted, Hamamatsu cited two cases, Synopsys and Versata, as support for the proposition that
a court may not consider a patent’s specification at step one of the Alice inquiry. Neither case
stands for that proposition. Instead, Synopsys and Versata held that patentholders may not recast
the focus of an asserted claim in a way that is unsupported by the claim itself, for purposes of
determining whether it is directed to patent-ineligible subject matter. In this case, the
specifications of the ‘982 patent describe the existing problem with the use of lasers to test
electronic circuits and the shortcomings of the prior art given technological advancements, and
explain how the claimed method and apparatus seek to solve the problem. Claims 1 and 21 then
specify the method and means by which the patent accomplishes this goal.
20