United States District Court, D. Massachusetts
MEMORANDUM AND ORDER ON PLAINTIFF'S MOTION FOR
PARTIAL SUMMARY JUDGMENT ON DEFENDANT'S INVALIDITY
Dennis Saylor IV United States District Judge.
a patent infringement dispute between two companies involved
in the production and distribution of “die
attach” systems. Plaintiff Palomar Technologies, Inc.,
has brought suit against defendant MRSI Systems, LLC. The
complaint asserts a claim for patent infringement pursuant to
35 U.S.C. § 271.
has moved for partial summary judgment as to defendant's
invalidity claims on the basis of statutory estoppel under 35
U.S.C. § 315(e)(2). MRSI had previously requested
inter partes review of the patent on the grounds
that it was anticipated and obvious in light of certain prior
art. The Patent Trial and Appeal Board granted that request,
and then upheld the validity of all the claims but one.
Palomar now seeks to estop MRSI from raising invalidity
defenses based on the estoppel bar of § 315(e)(2). For
the reasons set forth below, the motion will be granted in
part and denied in part.
Technologies, Inc., is the owner and assignee of U.S. Patent
No. 6, 776, 327 (“the '327 patent”), entitled
“High-Accuracy Placement Method Using Double Pick and
Place.” The '327 patent was issued on August 17,
provides, among other things, “die-attach
solutions” and “precision assembly
services.” (Compl. ¶ 2). Palomar's systems are
used to manufacture “LED, optoelectronic, solar, RF and
microelectronic packages in the photonic, wireless,
microwave, automotive, aerospace, defense, medical and life
science industries.” (Id.).
The '327 Patent
'327 patent generally relates to a “method for high
accuracy placement of a first workpiece onto a second
workpiece for attachment of the two workpieces.”
(Id. col. 1 ll. 7-9). More particularly, the patent
relates to a “high accuracy [automated] placement
method which utilizes double pick and place of the first
workpiece to enhance the final placement accuracy of the
first workpiece onto the second workpiece.”
(Id. col. 1 ll. 9-13).
to the patent, in the production of many electronic
applications, dies, or tiny semiconductor devices, are
attached to circuit bodies. ('327 patent col. 1 ll.
16-24). The process of attaching a die to a circuit body
typically involves two steps: first, in the “pick and
place” operation, “the die is picked from a
remote location by a tool and placed on the circuit body at
the location where attachment is desired.” ('327
patent col. 1 ll. 25-28). Next, “the die and circuit
body are heated to the melting point of an interposed solder,
more specifically termed the die attach material, to form an
electrically and thermally conductive die attach connection
between the die and the circuit body.” ('327 patent
col. 1 ll. 28-32).
to the patent, automated die-attach techniques were already
known and used, although the conventional techniques were not
able to perform pick and place operations in a manner
sufficiently accurate for emerging industries, such as the
optical communications industry. (Id. col. 1 ll.
33-35, 42-45). The '327 patent distinguishes itself from
these earlier techniques by claiming to provide an automated
placement method that is “both time efficient and
highly accurate.” (Id. col. 1 ll. 49-51).
patent's automated placement method involves two steps.
Initially, the “first workpiece, which is preferably a
die, ” is “positioned at the origination
location.” (Id. col. 1 ll. 63-64; Id.
col. 2 ll. 8). During the “first place step, ”
the first workpiece is “displace[d] . . . from the
origination location to an intermediate location different
from the origination and attach locations.”
(Id. col. 1 ll. 66-67; Id. col. 2 ll. 1-2).
Then, during the “second place step, ” the first
workpiece is “displace[d] . . . from the intermediate
location to the attach location and the first workpiece is
attached to the second workpiece at the attach
location.” (Id. col. 2 ll. 2-5).
MRSI Systems, LLC
Systems, LLC designs, manufactures, and supplies “fully
automated, ultra-high precision die-attach and epoxy
dispensing tools, ” including the “MRSI-M3
Assembly Work Cell.” (Id. ¶ 2, 12).
MRSI-M3 Assembly Work Cell is “an automated die
bonder” that “utilizes” a technique called
the “double-pick and place.” (Id. ¶
13). Under this technique, a “pick tool” picks a
die from a “waffle pack, Gel-Pak, wafer, or tape and
reel, ” moves the die to “an intermediate
location, ” and places the die “onto a vacuum
containing surface.” (Id.). After the pick
tool disengages the die, and the system “utilizes
pattern recognition to obtain the coordinates of the die,
” the pick tool reengages the die and moves the die to
a location on a circuit body. (Id.). This method,
Palomar contends, infringes on its '327 patent.
(Id. ¶ 15).
The Inter Partes Review
6, 2015, Palomar filed this action against MRSI in the
Southern District of California. (ECF 1). On October 13,
2015, MRSI petitioned the Patent Trial and Appeal Board
(“PTAB”) for inter partes review
(“IPR”) of the patent. (ECF 113-1) (PTAB
IPR2016-00043). That petition requested that an IPR be
instituted as to all 48 claims of the patent on one or more
of six grounds. (ECF 113-1 at 1-9). Specifically, the
petition requested review of:
• Claims 1, 3-10, 13, and 24 for anticipation by
• Claims 25, 27-34, and 37 for obviousness over Isaacs.
• Claims 2, 16-18, 26, 40-42, and 48 for obviousness
over Isaacs and Mori.
• Claims 11-13, 35-37 for obviousness over Isaacs and
• Claims 14, 15, 38, and 39 for obviousness over Isaacs,
Mori, and Ginsberg.
• Claims 19-23, 43-47 for obviousness over Isaacs and
(ECF 113-2 at 5). In addition to those five prior art
references (Isaacs, Mori, Bauks, Ginsberg, and Taguchi),
which formed the basis for one or more of the specific
grounds, MRSI's petition advanced five others (Derby,
Janisiewicz, Gamel, Fukui, and Lee). (ECF 113-2 at
April 7, 2016, the PTAB instituted review on each of the six
grounds raised in the petition. (ECF 113-2). On March 29,
2017, the PTAB issued its final written decision. (ECF
113-3). That decision upheld the validity of claims 1-47 and
invalidated claim 48. (ECF 113-3). MRSI did not appeal.
MRSI's Invalidity and Non-Infringement
action against MRSI had been stayed by the Southern District
of California during the IPR proceedings. On February 5,
2018, that action was transferred to this Court. (ECF 53). On
March 30, 2018, the Court issued a scheduling order that
instructed the parties to file preliminary invalidity and
non-infringement contentions by August 3, 2018. As part of
that process, the parties were directed to “identify
prior art that anticipates or renders obvious the identified
patent claims in question.” (ECF 69).
filed its preliminary invalidity and non-infringement
contentions on August 3, 2018. (ECF 104). MRSI contends that
all of the claims asserted by Palomar against it are invalid.
(ECF 104 at 1). To support its contention, MRSI provides
various references to prior art that allegedly render the
patent invalid based on anticipation and obviousness.
(Id. at 5-10).
MRSI identifies prior art references that it contends
anticipate the claims of the '327 patent. The references
are divided into three categories and presented in tables.
MRSI also provides a fourth table that lists
“documents” that describe the prior art listed in
the third table.
Table 1A lists “Prior Art
Patents” that anticipate the patent's
U.S. Patent No. 5, 035, 047 to Harigane et
Table 1B lists “Prior Art
Publications” that anticipate the patent's
WO 01/72097A2 to Yasuharu Ueno