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Palomar Technologies, Inc. v. Mrsi Systems, LLC

United States District Court, D. Massachusetts

March 27, 2019



          F. Dennis Saylor IV United States District Judge.

         This is 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.[1]

         Plaintiff 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.

         I. Background

         A. Palomar Technologies

         Palomar 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, 2004. (Id.).

         Palomar 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.).

         B. The '327 Patent

         The '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).

         According 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).

         According 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).

         The 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).

         C. MRSI Systems, LLC

         MRSI 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).

         The 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).

         D. The Inter Partes Review

         On July 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 Isaacs.[2]
• 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.[3]
• Claims 11-13, 35-37 for obviousness over Isaacs and Bauks.[4]
• Claims 14, 15, 38, and 39 for obviousness over Isaacs, Mori, and Ginsberg.[5]
• Claims 19-23, 43-47 for obviousness over Isaacs and Taguchi.[6]

(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 4).[7]

         On 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.

         E. MRSI's Invalidity and Non-Infringement Contentions

         Palomar's 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).

         MRSI 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).

         First, 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 claims:

Table 1A

U.S. Patent No. 5, 035, 047 to Harigane et al.

         • Table 1B lists “Prior Art Publications” that anticipate the patent's claim:

Table IB


WO 01/72097A2 to Yasuharu Ueno (PCT/JP01/02308)

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