In-Depth Test LLC v. Maxim Integrated Products Inc.
Filing
91
MEMORANDUM OPINION. Signed by Judge Colm F. Connolly on 12/18/2018. Associated Cases: 1:14-cv-00887-CFC, 1:14-cv-00888-CFC(fms)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
IN-DEPTH TEST, LLC,
Plaintiff,
Civil Action No. 14-887-CFC
v.
MAXIM INTEGRATED,
PRODUCTS, INC.,
Defendant. :
IN-DEPTH TEST, LLC,
Plaintiff,
v.
Civil Action No. 14-888-CFC
VISHAY
INTERTECHNOLOGY INC.
and SILICONIX INC.,
Defendants. :
Brain E. Farnan, FARNAN LLP, Wilmington, Delaware; Jonathan T. Suder
(argued), Corby R. Vowell, FRIEDMAN, SUDER & COOKE, Fort Worth, Texas
Counsel for Plaintiff
Robert M. Oakes (argued), FISH & RICHARDSON P.C., Wilmington, Delaware;
David M. Barkan, FISH & RICHARDSON P.C., Redwood City, California
Counsel for Defendant Maxim Integrated Products, Inc.
James H. S. Levine, PEPPER HAMILTON LLP, Wilmington Delaware; Thomas
F. Fitzpatrick (argued), PEPPER HAMILTON LLP, Silicon Valley, California;
Michael K. Jones, Joseph J. Holovachuk, Philadelphia, Pennsylvania
Counsel for Defendants Vishay Intertechnology Inc. and Siliconix Inc.
MEMORANDUM OPINION
December 18, 2018
Wilmington, Delaware
11
CONNOLLY, UNITED sTESDISTRICT JUDGE
I have before me two identical motions for judgment on the pleadings filed
pursuant to Federal Rule of Civil Procedure 12(c) in these coordinated patent
infringement actions. 14-cv-887, D.I. 30; 14-cv-888, D.I. 32. 1 Defendant Maxim
Integrated Products, Inc. (in civil action no. 14-cv-887-CFC) and Defendants
Vishay Intertechnology Inc. and Siliconix Inc. (in civil action no. 14-cv-888-CFC)
ask by their motions that I adjudge the sole patent-in-suit, U.S. Patent No.
6,792,373 ("the #373 patent"), invalid under 35 U.S.C. § 101 for failing to claim
patentable subject matter and dismiss Plaintiff In-Depth Test, LLC's complaints
with prejudice. D.I. 31 at 20. 2 I have studied the parties' extensive briefing on the
motions (D.1. 31, D.I. 36, D.I. 37, D.I. 47, D.I. 74, D.I. 75, D.I. 84, D.I. 85) and
heard argument on the motions during a claim construction hearing held on
October 9, 2018. For the reasons that follow, I will grant Defendants' motions.
1
Unless otherwise noted, all D .I. numbers in this Memorandum Order are D .I.
numbers in Civil Action 14-cv-887-CFC.
2
Defendants filed counterclaims for a declaratory judgment of invalidity. 14-cv887, D.I. 7, counterclaim ,r,r 10-12; 14-cv-888, D.I. 9, counterclaim ,r,r 14-17. I
assume that Defendants also seek by their motions the entry of judgments in their
favor on these counterclaims.
I.
BACKGROUND
The #3 73 patent is directed to the testing of semiconductor chips. The
following description offered by Plaintiff fairly describes the invention claimed by
the #3 73 patent:
During the fabrication process for [semiconductor]
chips, silicon wafers are processed to create the specific
types of integrated circuits for which they are designed.
. . . Subsequent to processing the wafers, the individual
components of the wafers need to be tested to determine
if they are functioning normally or if there were
manufacturing errors. For years, test machines were used
to perform basic testing that measured a variety of
parameters to see if the components met certain
thresholds or fell within acceptable ranges, called control
limits. If not, particular components or groups of
components were considered not to meet minimum
specifications [and] were identified as failed parts. . ..
The inventions of the [#]373 patent enhance the test
process by performing additional testing that more
accurately determines whether the components being
tested are likely to fail or malfunction. The patent
specification describes using an additional computer to
perform a statistical analysis on the test results generated
by conventional test equipment. The analysis performed
identifies and then reports components that fell within the
control limits but that are statistical "outliers" from other
components that also fell within the control limits. The
specific identification of outliers in the results of the
output report is significant because it provides a more
granular level of test results that can be used to classify
or grade the performance of the component in the
remainder of the manufacturing process or to improve the
manufacturing process itself.
****
2
[T]he purpose of the enhanced analysis is to determine if
any of the components that fell within the control limits
have test results that deviate from the other components
that were within the control limits.
****
The [#]3 73 patent describes the use of the statistical
analysis to determine whether the test results for a
particular component indicate that it is an outlier or not.
. . . [T]he term outlier is explicitly defined by the patent
specification as a test result whose value strays from a set
of test results having statistically similar values, but does
not exceed control limits or otherwise fail to be detected .
. . . The test results for the outliers are also included in
an output report for the overall test results and can be
used for further analysis. The additional testing and
statistical analysis described in the [#]3 73 patent provides
for the identification of components that are "outliers"
and would not be identified in traditional test
methodologies even though the components are
statistically more likely to fail or malfunction.
D.I. 36 at 3-4, 5, 7 (citations omitted).
Three of the #373 patent's 20 claims are independent: I, 8, and 15. They
read as follows:
1. A test system, comprising:
a tester configured to test a component and generate test
data; and
a computer connected to the tester and configured to
receive the test data, identify an outlier in the test data,
and generate an output report including the identified
outlier.
8. A data analysis system for semiconductor test data,
comprising a computer system, wherein the computer
system is configured to operate:
3
a supplementary data analysis element configured to
identify outliers in the semiconductor test data; and
an output element configured to generate an output report
including the identified outliers.
15. A method for testing semiconductors, comprising:
generating test data for multiple components; and
automatically identifying an outlier in the test data at run
time using a computer system.
#373 patent at claims 1, 8, and 15. The written description of the patent defines
"outlier" as a test result that "strays" from a set of test results that did not exceed
the control limits specified for the tested component or otherwise fail and that have
statistically similar values. See id. at 6:32-37, 6:44-46.
According to Plaintiff, "[t]he three independent claims ... each encompass
the[ ] concepts and recite the devices and improvements in the semiconductor
process" claimed by the patent. D.I. 36 at 7-8. In light of this statement by
Plaintiff and the fact that Plaintiff quotes only from claim 1 in its brief filed in
opposition to Defendants' motions, I will treat claim 1 as representative of all
claims. 3
3
Where claims are "substantially similar and linked to the same abstract idea,"
courts may look to representative claims in a § 101 analysis. Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat'/ Ass 'n, 776 F.3d 1343, 1348 (Fed.
Cir. 2014). In this case, all of the #373 patent's claims (both independent and
dependent) are substantially similar and linked to the same abstract ideas.
4
II.
LEGAL STANDARD
Pursuant to Federal Rule of Civil Procedure 12(c), a party may move for
judgment on the pleadings "[a]fter pleadings are closed-but early enough not to
delay trial." Regional circuit law governs the Court's review of motions for
judgment on the pleadings in patent cases. Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1293 (Fed. Cir. 2016). Under Third Circuit law, in
ruling on a Rule 12(c) motion, the Court must accept as true all well-pleaded
allegations in the non-movant's pleadings and draw all reasonable inferences in the
non-movant's favor. See Zimmerman v. Corbett, 873 F.3d 414, 417-18 (3d Cir.
2017). The Court may grant a Rule 12(c) motion only where "the movant clearly
establishes that no material issue of fact remains to be resolved and [the movant] is
entitled to judgment as a matter of law." Rosenau v. Unifund Corp., 539 F.3d 218,
221 (3d Cir. 2008). Patent eligibility under§ 101 is a question of law suitable for
resolution on a motion for judgment on the pleadings. See, e.g., buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) (affirming grant of Rule 12(c) motion
for judgment on pleadings for lack of patentable subject matter).
Section 101 of the Patent Act defines patent-eligible subject matter. It
provides: "Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
5
thereof, may obtain a patent therefor, subject to the conditions and requirements of
this title." 35 U.S.C. § 101.
There are three judicially-created limitations on the literal words of§ 101.
The Supreme Court has long held that laws of nature, natural phenomena, and
abstract ideas are not patentable subject matter. Alice Corp. Pty. v. CLS Bank Int'/,
573 U.S. 208,216 (2014). These exceptions to patentable subject matter arise
from the concern that the monopolization of "these basic tools of scientific and
technological work" "might tend to impede innovation more than it would tend to
promote it." Id. (internal quotation marks and citations omitted).
"[A ]n invention is not rendered ineligible for patent [protection] simply
because it involves an abstract concept[.]" Id. at 217. "[A]pplication[s] of such
concepts to a new and useful end ... remain eligible for patent protection." Id.
(internal quotation marks and citations omitted). But in order "to transform an
unpatentable law of nature [or abstract idea] into a patent-eligible application of
such law [or abstract idea], one must do more than simply state the law of nature
[or abstract idea] while adding the words 'apply it."' Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 71 (2012) (emphasis omitted).
In Alice, the Supreme Court made clear that the framework laid out in Mayo
for determining if a patent claims eligible subject matter involves two steps. The
court must first determine whether the patent's claims are drawn to a patent-
6
ineligible concept- i.e., are the claims directed to a law of nature, natural
phenomenon, or abstract idea? 573 U.S. at 217. If the answer to this question is
no, then the patent is not invalid for teaching ineligible subject matter. If the
answer to this question is yes, then the court must proceed to step two, where it
considers "the elements of each claim both individually and as an ordered
combination" to determine if there is 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."
Id. at 217-18 (alteration in original) (internal quotations and citations omitted). 4
III.
DISCUSSION
Applying the two-step framework outlined in Alice, I find that the claims of
the #373 patent recite patent-ineligible subject matter and are invalid under§ 101.
4
The Court in Alice literally said that this two-step framework is "for
distinguishing patents that claim laws of nature, natural phenomena, and abstract
ideas from those that claim patent-eligible applications of those concepts." 573
U.S. at 217. But as a matter of logic, I do not see how the first step of the
Alice/Mayo framework can distinguish (or even help to distinguish) patents in
terms of these two categories (i.e., the categories of ( 1) "patents that claim laws of
nature, natural phenomena, and abstract ideas" and (2) patents "that claim patenteligible applications of [laws of nature, natural phenomena, and abstract ideas]").
Both categories by definition claim laws of nature, natural phenomena, and abstract
ideas; and only one of Alice's steps (i.e., the second, "inventive concept" step)
could distinguish the two categories. I therefore understand Alice's two-step
framework to be the framework by which courts are to distinguish patents that
claim eligible subject matter under § 101 from patents that do not claim eligible
subject matter under § 101.
7
A.
Abstract Idea
I begin by determining whether the claims at issue are directed to a patentineligible concept. Alice, 573 U.S. at 217. "[C]laims are considered in their
entirety [at step one] to ascertain whether their character as a whole is directed to
excluded subject matter." Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015). "The Supreme Court has not established a definitive
rule to determine what constitutes an 'abstract idea' sufficient to satisfy the first
step of the Mayo/Alice inquiry." Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1334 (Fed. Cir. 2016) (citation omitted). The Court has recognized, however, that
fundamental economic practices, methods of organizing human activity, and
mathematical formulae are abstract ideas. See Bilski v. Kappas, 561 U.S. 593,611
(2010) ("fundamental economic practice" of hedging is unpatentable abstract idea);
Alice, 573 U.S. at 220-21 ("organizing human activity" of intermediated
settlement falls "squarely within realm of 'abstract ideas"'); Gottschalk v. Benson,
409 U.S. 63, 68, 71-72 (1972) (mathematical algorithm to convert binary-coded
decimal numerals into pure binary code is unpatentable abstract idea); Parker v.
Flook, 437 U.S. 584, 594-95 (1978) (mathematical formula for computing "alarm
limits" in a catalytic conversion process is unpatentable abstract idea).
To determine whether claims are directed to an abstract idea courts generally
"compare the claims at issue to those claims already found to be directed to an
8
abstract idea in previous cases." Enfish, 822 F.3d at 1334. The Federal Circuit has
also instructed district courts to consider as part of Alice's step one whether the
claims "focus on a specific means or method that improves the relevant technology
or are instead directed to a result or effect that itself is the abstract idea and merely
invoke generic processes and machinery." McRO, Inc. v. Bandai Namco Games
America Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (citing Enfish, 822 F.3d at
1336).
Applying these standards, I find that the #3 73 patent is directed to the
abstract ideas of generating, receiving, analyzing by means of statistics, and
reporting data. Claim 1 of the patent essentially recites: (1) generating or receiving
"test data"; (2) identifying "outliers" in the test data; and (3) generating an output
report that identifies the outliers. These are the same type of functions the Federal
Circuit held to be abstract ideas in Content Extraction:
Applying MayolAlice step one, we agree with the district
court that the claims of the asserted patents are drawn to
the abstract idea of 1) collecting data, 2) recognizing
certain data within the collected data set, and 3) storing
that recognized data in memory. The concept of data
collection, recognition, and storage is undisputedly wellknown. Indeed, humans, have always performed these
functions.
776 F.3d at 1347. "Generating" and "receiving" data, as claimed by the #373
patent, is essentially "collecting" data. The #3 73 patent does not claim any unique
method of generating or receiving data. I also see no material distinction between
9
the "reporting" of data claimed by the #3 73 patent and the "storing" of data. The
#3 73 patent does not claim any unique method of generating reports that identify
or display outliers from a data set. On the contrary, according to the patent's
written description, "[a]ny form, such as graphical, numerical, textual, printed, or
electronic form, may be used to present the output report used for subsequent
analysis." #373 patent at 18:2--4.
Identifying "outliers" in a data set of test results is, similarly, no different
than "recognizing certain data within the collected data set." Indeed, identifying
outliers from among the test results of the semiconductor components that fall
within control limits as taught by the #3 73 patent is nothing more than employing
statistical analysis to determine if a datum point within a data set varies (or
"strays") sufficiently from the other datum points in the set. As Plaintiff notes in
its opposition brief:
The [#]373 patent describes the use of the statistical
analysis to determine whether the test results for a
particular component indicate that it is an outlier or not.
. . . [T]he term outlier is explicitly defined by the patent
specification as a test result whose value strays from a set
of test results having statistically similar values, but does
not exceed control limits or otherwise fail to be detected.
D.I. 36 at 7. Thus -to use Plaintiffs own words -
"the purpose of the enhanced
analysis" claimed by the #3 73 patent "is to determine if any of the components that
10
fell within the control limits have test results that deviate from the other
components that were within the control limits." Id. at 5.
Making that determination is essentially "doing math." It is akin to
calculating standard deviations, and it is the type of mathematical computation that
the Supreme Court has deemed an abstract idea. See Flook, 437 U.S. at 594-95
(mathematical formula for computing "alarm limits" in a catalytic conversion
process was patent-ineligible abstract idea); Benson, 409 U.S. at 71-72 (algorithm
for converting binary-coded decimal numerals into pure binary form was patent
ineligible). As the Court noted in Flook, "[i]f a claim is directed essentially to a
method of calculating, using a mathematical formula, even if the solution is for a
specific purpose, the claimed method is nonstatutory [subject matter under§ 101]."
437 U.S. at 595 (quoting In re Richman, 563 F.2d 1026, 1030 (C.C.P.A. 1977));
see also DDR Holdings v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)
(noting that mathematical algorithms are abstract ideas); Digitech Image Techs.,
LLCv. Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014)
("Without additional limitations, a process that employs mathematical algorithms
to manipulate existing information to generate additional information is not patent
eligible.").
The fact that -
again, to adopt Plaintiffs words -
the purported invention
uses "an additional computer to perform [the] statistical analysis on the test results
11
generated by conventional test equipment" (D.I. 36 at 4) does not remove the
purported invention from the realm of abstract ideas. While a computer
indisputably makes it easier to identify outliers, the identification of outliers within
a data set has long been performed by humans without the aid of computers. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011)
(affirming district court's invalidity finding because the claim steps could be
"performed in the human mind, or by a human using a pen and paper").
Citing Enfish, Plaintiff argues that the #3 73 patent claims "improvement in
the functioning of a computer" and "specific improvements to semiconductor test
equipment" and therefore is not directed to an abstract idea. D.I. 36 at 8, 9.
Plaintiff is correct that in Enfish the Federal Circuit found "no reason to conclude
that all claims directed to improvements in computer-related technology ... are
abstract and necessarily analyzed at the second step of Alice[.]" 822 F.3d at 1335.
But, contrary to Plaintiff's suggestions (D.I. 36 at 9-10), the court did not hold in
Enfish that the fact that a claim is directed to computer improvements necessarily
means that the patent is not directed to an abstract idea.
In any event, the #3 73 patent is not directed to improvements in computer
functionality or semiconductor test equipment. Plaintiff cites, and I see, no
language in the claims (or written description) of the #373 patent that describes an
improvement to either the tester or computers used to test semiconductors.
12
Nowhere do the claims require a special-purpose tester or special-purpose
computer hardware; nor does the patent anywhere recite specialized software for a
computer or tester. On the contrary, the patent simply claims a conventional
computer that (1) is connected to a conventional tester and (2) is "configured" to
"receive the test data [from the tester], identify an outlier in the test data, and
generate an output report including the identified outlier." #373 patent at claim 1
(19:26-29). As Plaintiff states in its opposition brief: "The patent specification
describes using an additional computer to perform a statistical analysis on the test
results generated by conventional test equipment." D.I. 36 at 4. The patent does
not describe a method or apparatus to improve a computer's functionality to
perform that statistical analysis.
B.
Inventive Concept
Having found that the claims are directed to an abstract idea, I must next
determine whether the claims contain an '"inventive concept' sufficient to
'transform' the claimed abstract idea into a patent-eligible application." Alice, 573
U.S. at 221. A claim directed towards an abstract idea must include '"additional
features' to ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (alterations in original) (quoting Mayo, 566
U.S. at 77). No such additional features exist here, and I find that, whether
considered individually or as an ordered combination, the claim elements of the
13
#3 73 patent do not "transform" the claimed abstract ideas into patent-eligible
subject matter.
The claims simply recite generic statistical analysis and generic computer
functionality to address the problem of identifying potentially defective
semiconductor chips. See #373 patent at 3:59-4:4, 12:34-38. "Applying
traditional statistical tools to data," however, "cannot possibly provide the
inventive step necessary to become patent-eligible." eResearchTechnology, Inc. v.
CRF, Inc., 186 F. Supp. 3d 463,475 (W.D. Pa. 2016) (citation omitted), aff'd, 681
F. App'x 964 (Fed. Cir. 2017).
Nor can "the introduction of a computer" provide the required inventive
concept when, as here, the process or analysis claimed by the patent "could be
'carried out in existing computers long in use."' Alice, 573 U.S. at 22 (quoting
Benson, 409 U.S. at 67). Both the tester and computer claimed by the #373 patent
perform nothing more than routine functions that conventional testers and
conventional computers have long been used to execute. Claim 1, for example,
recites the use of a "tester" that is "configured to test a component and generate
test data[.]" #373 patent at claim 1 (19:24-25). According to the written
description, the tester "may comprise a conventional automatic tester, such as a
Teradyne tester." Id. at 3:36-37 (emphasis added). Claim 1 also recites the use of
a "computer connected to the tester and configured to receive the test data[.]" Id.
14
at claim 1 (19:26-27). According to the patent's written description, this computer
system includes "any suitable processor, such as a conventional Intel, Motorola, or
Advanced Micro Devices processor, operating in conjunction with any suitable
operating system" and a memory "compris[ing] any appropriate memory
accessible to the processor ... for storing data." Id. at 3:59-67 (emphasis added).
These functions and features are routine, conventional, and well-known in the
semiconductor industry and do not provide the inventive concept necessary to
transform the generation, receipt, analysis, and reporting of semiconductor test data
into patent-eligible subject matter under Alice. See OIP Techs. Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (holding that the abstract
idea of offer-based price optimization claimed by patent was not transformed into
patent-eligible subject matter where the "claims merely recite 'well-understood,
routine conventional activit[ies], ' either by requiring conventional computer
activities or routine data-gathering steps" (quoting Alice, 573 U.S. at 225)); see
also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 717 (Fed. Cir. 2014)
("[A]dding a computer to otherwise conventional steps does not make an invention
patent-eligible." (citing Alice, 573 U.S. at 222)); Intellectual Ventures I LLC v.
Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015) (Neither "[a]
simple instruction to apply an abstract idea on a computer" nor "claiming the
15
improved speed or efficiency inherent with applying the abstract idea on a
computer" satisfies the requirement of an "inventive concept.").
IV.
CONCLUSION
For the reasons set forth above, I will grant Defendants' motions for
judgment on the pleadings for lack of patentable subject matter.
The Court will issue an order consistent with this Memorandum Opinion.
16
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?