Tuesday, December 21, 2010

Tessera wins at CAFC

The punchline:

All other Respondents (collectively “Appellants”) now
appeal the Commission’s final determination, ruling that
Appellants directly infringe the asserted claims of the
’326 patent and contributorily infringe the asserted claims
of the ’419 patent. In re Certain Semiconductor Chips
With Minimized Chip Package Size and Products Contain-
ing Same, No. 337-TA-605, slip op. at 79 (Int’l Trade
Comm’n May 20, 2009) (Public Version) (“Final Determi-
nation”). Because the Commission’s decision is supported
by substantial evidence and is not contrary to law, this
court affirms.

CARTER G. PHILLIPS, Sidley Austin LLP of Washing-
ton, DC, argued for all appellants, and was on the losing

The issues before the CAFC:

On appeal, Appellants challenge two aspects of the
Commission’s determination of the meaning of the claims.
First, Appellants assert that all the asserted claims are
indefinite because the moveable limitation is insolubly
ambiguous. Second, Appellants object to the Commis-
sion’s construction of the claim limitation “downwardly
alongside.” Appellants also appeal the Commission’s
finding of both direct and contributory infringement,
asserting that Tessera failed to meet its burden to show
that the accused products practice the claimed movement.
Finally, Appellants contend that the asserted claims of
both the ’326 and ’419 patents are invalid and appeal the
Commission’s finding that they are not anticipated.

One of the technical issues was thermal expansion:

Moreover, the claims were intended to cover the use of
the invention with semiconductor packages made of a
number of materials, each having different coefficients of
thermal expansion and differing thermal expansion rates.
Interpreting the claimed term “movable” in terms of
appreciable relief of mechanical stress is as precise as
need be and “reasonably apprise[s] those skilled in the art
both of the utilization and scope of the invention.” Shat-
terproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d
613, 624 (Fed. Cir. 1985) (internal quotations omitted).


Although determining whether claimed movement
was present in the accused packages required an expert
using detailed computer simulations, this alone does not
indicate that the claims are indefinite. The difficulty or
complexity of the infringement analysis does not necessar-
ily speak to whether a claim is definite or not. See
Datamize, 417 F.3d at 1354 (stating that “indefiniteness
does not depend on the difficulty experienced by a particu-
lar person in comparing the claims with the prior art or
the claims with allegedly infringing products or acts”);
SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d
1331, 1340-41 (Fed. Cir. 2005) (“The test for indefinite-
ness does not depend on a potential infringer’s ability to
ascertain the nature of its own accused product to deter-
mine infringement, but instead on whether the claim
delineates to a skilled artisan the bounds of the inven-
tion.”). Appellants did not carry their burden of persuad-
ing the Commission, nor have they persuaded this court,
that the asserted claims of the ’326 and ’419 patents are
invalid for indefiniteness.

Of disclaimers:

any disclaimers specifically relating to the type of connec-
tion do not apply to the ’326 patent. See Saunders Group,
Inc. v. Comfortrac, Inc., 492 F.3d 1326, 1333 (Fed. Cir.
2007) (“When the purported disclaimers are directed to
specific claim terms that have been omitted or materially
altered in subsequent applications (rather than to the
invention itself), those disclaimers do not apply.”); see also
Ventana Med. Sys. v. Biogenex Labs., 473 F.3d 1173, 1182
(Fed. Cir. 2006) (“[T]he doctrine of prosecution disclaimer
generally does not apply when the claim term in the
descendant patent uses different language.”); Invitrogen
Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1078 (Fed.
Cir. 2005) (“[T]he prosecution of one claim term in a
parent application will generally not limit different cllanguage in a continuation application.”).


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