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Federal Circuit Affirms PTAB’s Decision Finding Semiconductor Patent Unpatentable After Addressing Threshold Question Relating To Original Assignee’s Interest In Patent
11/21/2023On November 17, 2023, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the Patent Trial and Appeal Board (“Board”) finding unpatentable the challenged claims of a patent directed to methods for making semiconductor devices. Bell Semiconductor LLC v. Advanced Semiconductor Eng’g, Inc., __ F.4th __ (Fed. Cir. Nov. 17, 2023).
Advanced Semiconductor Engineering, Inc. (“Advanced Semi”) petitioned for inter partes review of U.S. Patent No. 6,624,007 (the “’007 Patent”), owned by Bell Semiconductor LLC (“Bell”), which acquired the ’007 Patent in 2020 by assignment from Rohm Co., Ltd. (“Rohm”)—the assignee listed on the face of the patent. Only Advanced Semi and Bell participated in the IPR. The Board ultimately issued a final written decision (“FWD”) determining the claims unpatentable. Bell appealed to the CAFC.
After the appellate briefs, but prior to oral argument, the CAFC panel sua sponte entered an order explaining that, in the district court cases that Bell filed, questions arose regarding the scope of Rohm’s assignment to Bell, and whether Rohm retained rights in the patent that might prevent Bell from initiating infringement lawsuits alone. The order culminated in a directive to the parties to be prepared to discuss whether Rohm’s relationship to the patent has a bearing on the present case, including when (if ever) Rohm became aware of the IPR and when (if ever) Rohm became aware of the present appeal.
In its decision on appeal, the CAFC addressed the threshold question of whether there was a jurisdictional or standing issue in light of Rohm’s lack of participation in the IPR and present appeal. The CAFC explained that the “patent owner” is a party with the right, granted by statute, to participate in an IPR, and that, here, Bell participated—without objection from the Board—as the sole patent owner in the appealed-from IPR. The CAFC found that, although Bell was not the original applicant for the ’007 Patent, the Board properly found Bell to be the patent owner of record at the relevant time based on, inter alia, a recorded patent assignment between Rohm and Bell.
The CAFC further explained that, while a recorded patent assignment is not conclusively valid, the recordation creates a presumption of validity as to the assignment and places the burden to rebut such a showing on one challenging the assignment. In the appealed-from IPR, no one challenged the recorded assignment or the statement of record that Bell was “the assignee of the entire right, title, and interest” in the ’007 Patent.
The CAFC found no error in the Board’s treatment of Bell as the patent owner, and further found that nothing from the district court cases—including joinder of Rohm in one of the cases as a party that “claims an interest relating to the subject of the action”—contradicted that treatment. With respect to Rohm’s joinder in the one district court case, the CAFC explained that this district court ruling, premised on Federal Rule of Civil Procedure 19(a)(1)(B)(i), did not bear on whether Rohm had an interest that makes it a “patent owner” for IPR purposes. The CAFC further noted that Rohm made no attempt to assert an ownership interest in the ’007 Patent in the appealed-from IPR or in the present appeal. In light of the above, the CAFC found no jurisdictional or standing issue and moved on to the arguments on the merits.
With respect to Bell’s merits challenge—to the Board’s claim constructions of “an intermediate product,” “packaging layer,” and “cutting the intermediate product”—the CAFC found that Bell’s arguments all flowed from the premise that “an intermediate product” must be construed to have the structure shown in one of the patent figures, a figure that shows that each intermediate product itself includes a plurality of chips, all enclosed in a continuous resin “packaging layer” that runs on and between the chips.
The CAFC rejected Bell’s claim construction arguments for three reasons. First, the CAFC found that Bell’s proposed constructions are inconsistent with the claim language. Specifically, the claimed intermediate product includes “the chip” enclosed in “a packaging layer”—where “the chip” refers back to “a semiconductor chip” for its antecedent basis. The CAFC explained that the articles “a” and “an” must be construed to be “one or more” unless the claim language, specification, or prosecution history demand otherwise (which here they did not). Second, the CAFC found that Bell’s reliance on the single patent figure was an attempt to restrict the claims to a single embodiment, which is inappropriate unless the patentee has demonstrated a clear intention to so limit the claims. Third, the CAFC found that, with respect to the phrase “cutting the intermediate product,” Bell again improperly argued, based on the single patent figure, that a packaging layer must be continuous between multiple adjacent chips—but this was contradicted by the claim language and the rest of the specification. Accordingly, the CAFC affirmed the Board’s finding of unpatentability.
