Preventing infringement of semiconductor patents via the ITC!

In a recent decision the federal circuit affirmed the International Trade Commissions (“ITC”) finding that the ‘326 and ‘419 patents were infringed by multiple different importers of products containing or selling semiconductor chips.  The Federal Circuit found that Spanison, Freescale, ATI, STMicro, and Qualcomm (Collectively “Spansion”) directly infringed  class of the ‘326 patent and contributorily infringed the ‘419 patent. 

Specifically, the patents relate to semiconductor packaging that permit the inserting of a flexible compliant material between the chip and the backing element of the semiconductor.  Both the ‘326 patent and the ‘419 patent solved the thermal expansion problem in packaging semiconductor chips by allowing for different materials to be inserted or being movable with respect to the chip. 

The ITC considered the representative claims of the ‘326 and ‘419 patents and determined that they read (literally or under the doctrine of equivalents) on the Spansion products, because the moveable elements were present in the products.  In this particular case, although there were conflicting findings by the Administrative Law Judge and the ITC, the Federal Circuit properly reviewing the ITC’s findings under a deferential substantial evidence standard. 

Although the ALJ and the ITC disagreed there was substantial evidence supporting the ITC’s decision.  Therefore, the Federal Circuit was not allowed to determine that the ALJ’s decision was reasonable and substitute it for the ITC’s decision.  The implications were that Spanison defendants could not import or sell products containing semiconductor chips packaged as described in the ‘326 and the ‘419 patents. 

This has a significant impact on licensing, distribution and importation of a variety of products.    Understanding the nuisances of the ITC process, the reexamination process for patents, the use of motions to stay, and supporting the infringement analysis can be vital to a business strategy to develop royalties or keeping competitors from acquiring cheaper products overseas and bringing them to the United States. If you have any concerns or questions regarding this, then do not hesitate to contact us.  

For more information, see: Spansion v. ITC

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