Primarion Found to Infringe Volterra Semiconductor's "flip circuit" Patent

A drawing from the '264 patent.

A drawing from the '522 patent.

Volterra Semicinductor Corporation sued Primarion, Inc. and others for infringement and contributory infringement of five patents: 1) U.S. Patent No. 6,278,264 (the "'264 patent"); 2) U.S. Patent No. 6,462,522 (the "'522 patent"); 3) U.S. Patent No. 6,713,823 (the "'823 patent"); 4) U.S. Patent No. 6,020,729 (the "'729 patent"); and 5) U.S. Patent No. 6,225,795 (the "'795 patent").  The first two patents (the '264 patent and the '522 patent) have culminated in twelve summary judgment motions which are now before Magistrate Joseph C. Spero.  The opinion is 147 pages long and heavily redacted, so here are the highlights.

There are three kinds of loss in any electrical system: resistance (wires are too big or too long); inductance (the current changes too much over time); and capacitance (something with an electrical charge is too close to something else with an electrical charge).  Both of the patents involved in this motion provide a way of reducing inductance and capacitance in circuits that change direct current of a certain voltage to direct current of another voltage called a "flip circuit."

Judge Spero, was not impressed by Primarion:

While the Court agrees with Volterra that Defendants’non-infringement position is extremely weak, it cannot say that the argument is so baseless as to warrant the imposition of sanctions. Nor does the Court find that Defendants have engaged in misconduct of the sort that would justify the imposition of sanctions, either monetary or in the formof preclusion.

Motion 1: Whether the accused products infringe claims 26 and 34 of the '264 patent and claims 22 and 24 of the '522 patent.

Therefore, Defendants have not established that there is a genuine issue of material fact as to infringement of claims 26 and 34 of the ‘264 Patent and claims 22 and 24 of the ‘522 Patent. Accordingly, Volterra is entitled to summary judgment that those claims are infringed by the accused products.

Motion 2: Whether  claims 26 and 34 of the '264 patent and claims 22 and 24 of the '522 patent are anticipated by U.S. Patent No. 5,945,730 or otherwise rendered obvious by it.

Defendants do not challenge Dr. Szepesi’s opinion that a person skilled in the art would have understood that use of a UBM [under bump metalization] layer would have been inconsistent with an important benefit of Sicard’s invention, namely, a semiconductor chip that was easier and less expensive to manufacture than chips in the prior art that required a thick metal deposition process. Rather, Defendants dismiss these arguments as a "red herring" because "the UBM is already present in Sicard." Opposition to Volterra Anticipation Motion at 11. Defendants' are incorrect because, as stated above, no reasonable jury could conclude, based on the evidence in the record, that bump 8 is a "layer."

Judge Spero granted summary judgment to Volterra on this issue.

Motion 3: Whether claims 9, 11 and 16-19 of the ‘522 patent are anticipated by a 1994 article by Anthony Stratakos entitled "A Low-Voltage CMOS DC-DC Converter for a Portable Battery-Operated System" or otherwise rendered obvious by it.

In sum, because no reasonable jury could find by clear and convincing evidence, on the basis of the evidence produced by Defendants, that the Stratakos 1994 Article necessarily includes the flip chip feature, Volterra is entitled to summary judgment that the Stratakos 1994 Article does not anticipate the Flip-Chip Claims

Judger Spero granted summary judgment for Volterra on this issue.  However, obviousness was a closer call.

While the Court has found, for the purposes of anticipation, that the Stratakos 1994 Article does not necessarily include flip chip, this prior art does address problems relating to energy loss that might support a finding of a motivation to combine.

Judge Spero denied summary judgment as to the obviousness argument.

Motion 4: Whether claims 26 and 34 of the ‘264 patent and claims 9, 11, 16-19 and 22 and 24 of the ‘522 patent are invalid for lack of a written description or lack of enablement.

The Defendants' enablement argument was that Volterra mentioned a static but not a dynamic voltage regulator in the specification, but want to include a dynamic voltage regulator in claim construction.  Judge Spero didn't buy it.

[T]here is no evidence in the record from which a jury could reasonably conclude that aperson skilled in the art would read the Burstein Patent specifications to apply only
to what Defendants call a "static voltage regulator" and not to a so-called "dynamic voltage regulator." Rather, the evidence in the record indicates that a person skilled in the art would understand that the Burstein Patent specification describes both types of voltage regulators because any voltage regulator must be capable of maintaining a stable output voltage, or "substantially DC voltage," at least between adjustments.

Judge Spero granted summary judgment on this issue for Volterra.

Motion 5: Whether Plaintiff engaged in inequitable conduct in connection with prosecution of the '264 or '522 patents or during the reexamination proceedings.

Generally, only the inventors (and their attorneys) owe the Patent Office a duty to disclose references that relate to the invention under 37 C.F.R. § 1.56.  The Defense argument here is that under Avid Identification Systems v. The Crystal Import Corp. (Fed. Cir. 2010) Dr. Stratakos, the founder of Volterra, owed a duty to the PTO under to disclose some references about the '264 or '522 patents even though he was not an inventor listed on the patent because he was involved with the prosecution of the patent.  Volterra responded that he was not involved and merely certified small entity status (which resulted in reduced fees).  The facts cut in the direction of Volterra.

In contrast to Avid, where evidence was introduced to show that Dr. Stoddard [the Avid CEO] was aware of the content of the patent application, in this case, Defendants have cited to no evidence that Dr. Stratakos was aware of the substantive content of the Burstein Patent applications or involved in the prosecution in any substantive way.

Judge Spero granted summary judgment for Volterra.

Motion 6: Whether any of the asserted claims of the ‘264 or ‘522 patents are invalid due to public use of the claimed invention more than a year before filing.

As the Court explains:

The key issue raised in Volterra’s On-Sale Bar SJ Motion is whether Volterra’s demonstration of its prototype to Intel in December 1998 constituted a "public use" under § 102(b).

The Defendants argued that the confidentiality agreements were too ambiguous to make the use a 'public' one instead of a private one. Judge Spero didn't think so.

[With regard to the on-sale bar] defense based on an alleged delivery of the prototype to Intel, the evidence offered by Defendants in support of their contention that a delivery even occurred is extremely scant. In particular, the only admissible evidence offered by Defendants is an email dated January 20, 1999 by Volterra CEO Alan King stating that "demonstration and delivery" began in December 1998. Given its ambiguous phrasing, no reasonable jury could find by clear and convincing evidence on the basis of this email alone that a delivery occurred in December 1998.

(emphasis in original). Judge Spero granted summary judgment for Volterra on this issue.