Palomar Techs., Inc. v. MRSI Sys., LLC

462 F.Supp.3d 13

PALOMAR TECHNOLOGIES, INC., Plaintiff,

v.MRSI SYSTEMS, LLC, Defendant.

Civil Action No. 18-10236-FDS

United States District Court, D. Massachusetts.

Signed May 28, 2020

J. Randall Pritzker, Michael A. Greene, Nathan R. Speed, Wolf, Greenfield & Sacks, PC, Boston, MA, Jan P. Weir, Stephen Underwood, Pro Hac Vice, Kathrine J. Brandt, Pro Hac Vice, Glaser Weil Fink Howard Avchen & Shapiro LLP, Newport Beach, CA, for Plaintiff.

Ali H.K. Tehrani, Pro Hac Vice, Zachary Ian Ruby, Pro Hac Vice, Crowell & Moring LLP, Washington, DC, Brian Paul Gearing, Pro Hac Vice, Michelle Chipetine, Pro Hac Vice, Crowell & Moring LLP, New York, NY, Brian David Thomas, Pro Hac Vice, Peter A. Nieves, Pro Hac Vice, Peter Anthony Nieves, Pro Hac Vice, Robert Ronald Lucic, Pro Hac Vice, James P. Harris, Sheehan Phinney Bass + Green, P.A., Manchester, NH, D. Deniz Aktas, Michael J. Lambert, Sheehan Phinney Bass & Green, P.A., Boston, MA, for Defendant.

MEMORANDUM AND ORDER ON CROSS-MOTIONS FOR SUMMARY JUDGMENT

SAYLOR, C.J.

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, asserting a claim for patent infringement pursuant to 35 U.S.C. § 271.¹

Palomar 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." Palomar contends that several products manufactured by MSRI infringe the '327 Patent.

MRSI has moved for summary judgment in its favor on the issue of patentability under 35 U.S.C. § 101. In substance, MRSI contends that the patent claims a fundamental and abstract idea that is not patentable. See, e.g. , Alice Corp. Pty. Ltd. v. CLS Bank Intern. , 573 U.S. 208, 217, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014) ; Mayo Collaborative Servs. v. Prometheus Labs., 566 U.S. 66, 70, 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012). Palomar has cross-moved for summary judgment on a variety of affirmative defenses asserted by MRSI, including the issue of patentability.

The claimed invention provides a method for "placement of a first workpiece onto a second workpiece." ( ’327 Patent at [57] ). "The first workpiece is initially positioned at an origination location," and the second workpiece is at an "attach location." (Id. ). Rather than move the first workpiece from the origination location directly to the attach location, the method provides that it first be placed at an "intermediate location." (Id. ). From there, a computer recalculates the pathway to the attach location, and the workpiece is moved again. (See generally '327 Patent col. 2 ll. 35–64). According to the patent, that method provides for a high degree of accuracy of placement of the piece at the attach location. (Id. col. 1 ll. 49–51).

At first blush, the patent appears to cover a sophisticated method for using robotics and computer analytics to assemble electronic parts, such as computer chips, with high precision. The specification of the claimed invention describes a process that permits the precise placement of parts within microns of the desired location.

Upon closer inspection, however, there is dramatically less to the claimed invention than meets the eye. The claims do not mention robotics, computers, or software.² Instead, the claims simply refer to the movement of "workpieces" from one location to another. The precise placement of those workpieces is actually achieved by machinery and software that is not covered by the patent. And the claims use relatively complex phrasing to describe what is in reality a simple idea: if you move a part closer to the point of assembly (that is, to an "intermediate" location) before installing it, it is easier to make its final placement more accurate.³ That concept is so basic that it has been known to human beings for millennia.

A simple analogy will illustrate the point. The object of the game of golf is to put a small ball in a small hole. It is extremely difficult to do so in one stroke, from the tee—so much so that it is cause for celebration when a golfer does so. But if the ball is first hit onto the fairway—or, better yet, the green—it becomes dramatically easier to put the ball in the hole. The closer the ball is to the hole, the easier it is to sink the putt.

To use the terminology of the patent, the golf ball (the "workpiece") on the tee (the "origination location") is hit ("placed") onto the fairway or green (the "intermediate location"). At that point, the brain of the golfer (effectively, a computer) recalculates the approach (the "target path") to the hole (the "target location"). That recalculation permits him to greatly improve the accuracy of his next shot. Of course, he may not sink the ball in two strokes, but his second shot is substantially more likely to be on target than the first.

Other analogies in daily life abound.⁴ For example, an unlucky motorist who gets a flat tire typically takes the spare out of the trunk (the "origination location") and places it on the ground (an "intermediate location") before lining up the holes in the wheel of the spare with the studs (the "target location") to mount it on the car. And the same principle applies to the assembly of almost any kind of object, such as a carpenter building a house⁵ or a child making a sandwich.⁶ Even as simple an operation as putting a nut on a bolt is exceedingly difficult to do in a single continuous unbroken motion—which is why people pause briefly (at an "intermediate location") to line up the nut before threading it on.

In short, the closer an object is to a target, the easier it is to place the object accurately. Such a basic and abstract idea is not patentable. And that is true whether or not the idea is garbed in complex terminology, or used in the extremely sophisticated world of chip manufacture. Indeed, if the patent is valid, Palomar owns the rights to a fairly wide swath of human activity; the two independent claims are so broad that the hypothetical motorist, carpenter, and sandwich-making child would literally infringe both independent claims.

Accordingly, the '327 Patent claims ideas that are not patentable under 35 U.S.C. § 101. It is therefore invalid, and summary judgment will be granted to the defendant.

I. Background

A. Factual Background

The following facts are undisputed except as otherwise noted.

1. Palomar Technologies

Palomar Technologies, Inc., provides, among other things, "die-attach solutions" and "precision assembly services." (Compl. ¶ 2, ECF 1). 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. ).

2. 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." ( ’327 Patent 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. (Id. col 1 ll. 16–24). The process of attaching a die to a circuit body typically involves an initial step, called a "pick and place" operation, in which "the die is picked from a remote location by a tool and placed on the circuit body at the location where attachment is desired." (Id. col. 1 ll. 25–28).

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 purports to distinguish itself from these earlier techniques by stating that it provides an automated placement method that is "both time efficient and highly accurate." (Id. col. 1 ll. 49–51).

The patent's 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).

3. 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." (Compl. ¶ 12, ECF 1; Ans. ¶ 4, ECF 23). According to Palomar, certain MRSI products utilize a method that infringes on the '327 Patent. (Compl. ¶¶ 10-15, ECF 1).

B. Procedural Background

On July 6, 2015, Palomar filed this action against MRSI in the Southern District of California. (See Compl. at 1, ECF 1). On October 13, 2015, MRSI petitioned the Patent Trial and Appeal Board ("PTAB") for inter partes review ("IPR") of the patent. (See 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).

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...