Legal firm highlights IP win
The Hecker Law Group, PLC has secured a victory for Israel based Tower Semiconductor, Ltd. ("Tower") and Newport Beach, California based Jazz Semiconductor, Inc. ("Jazz") in a patent infringement case that was brought before the U.S. International Trade Commission ("ITC") against 23 manufacturers and importers of integrated circuit devices. On September 21, 2009, the ITC issued its Initial Determination finding that the patent owned by merged business partners LSI Corporation and Agere Systems Inc. ("LSI") is invalid.
The ITC action, called an Investigation, began on May 21, 2008 after LSI filed an ITC complaint alleging patent infringement of United States Patent No. 5,227,335 ("the '335 patent") entitled "Tungsten Metallization." Tower and Jazz were added to the action on September 18, 2008. In its Complaint, LSI alleged that Tower and Jazz made semiconductor wafers that infringed a process covered by claim 1 of the '335 patent in violation of Section 337 of the Tariff Act of 1930. LSI sought an exclusion order from the ITC to block the importation of those semiconductor wafers and the products that used them. After more than a year of litigation, a week-long trial was held in Washington, D.C. before Administrative Law Judge (ALJ) Carl C. Charneski. Seven defendants that remained in the case participated in the trial.
On Monday, the ITC ruled against LSI. Judge Charneski found that the '335 patent is invalid because it was anticipated by earlier technology, namely, an identical process previously developed by IBM. Judge Charneski stated that the defendants had "established by clear and convincing evidence that claims 1, 3 and 4 of the '335 patent are invalid... " and that "No violation of Section 337 has occurred... " The ALJ's Initial Determination will become final following review by the full ITC Commission.
The '335 patent relates to integrated circuit manufacturing processes. Integrated circuits are built in alternating layers of circuitry and insulation material. Millions of tiny holes are made in the insulation material. The holes are filled with tiny wires made of tungsten, called "plugs," that connect the circuitry above and below the insulation material. The patent claimed a method for gluing the tungsten plugs to the walls of the holes in the insulation using titanium nitride as a "glue," so the plugs stay in place and form a good electrical connection.
"The LSI patent should never have been granted in the first place," said Gary A. Hecker of The Hecker Law Group, who represented Tower and Jazz in the ITC trial. "Basically, the patent is about gluing tungsten plugs to the walls of a hole using titanium nitride as glue. The technique was not new. It had been done before. The litigation team for the seven remaining defendants proved to the ITC that the patent claims are invalid."
Because of the 2006 Supreme Court ruling in eBay, Inc. v. MercExchange, LLC, 547 U.S. 388 (2006), which made it more difficult for patent owners to get injunctions in Federal Court, the ITC has become a more popular forum for patent owners to sue importers. Increasingly, patent owners are filing ITC lawsuits because the ITC can issue an exclusion order to prevent products from entering the U.S. if they are found to infringe the intellectual property rights of a domestic industry. An ITC exclusion order is enforced by the U.S. Customs Service.
The fast pace of an ITC proceeding, combined with the possibility that a sweeping ITC exclusion order may issue against a defendant's products, raises the stakes for importers that face the risk their products will be stopped in their tracks at the U.S. border. The ITC process, however, can also be misused. Patent holders sometimes use an ITC proceeding to try to extract money or concessions from importers based on invalid patents.
"We are pleased that the ALJ ruled that the LSI patent claims were invalid and found that there is no violation of Section 337 by Tower or Jazz," said Hecker.
