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SEMICAPS Pte Ltd. v. Hamamatsu Corp.

United States District Court, N.D. California

November 5, 2019

SEMICAPS PTE LTD, Plaintiff,
v.
HAMAMATSU CORPORATION, et al., Defendants.

          ORDER DENYING DEFENDANT'S MOTION FOR LEAVE TO FILE A MOTION FOR RECONSIDERATION RE: DKT. NO. 66

          DONNA M. RYU, UNITED STATES MAGISTRATE JUDGE

         Plaintiff SEMICAPS Pte Ltd. (“SEMICAPS”) filed this patent case against Defendants Hamamatsu Corporation, Hamamatsu Photonics K.K., and Photonics Management Corp. (collectively, “Hamamatsu”), alleging that Hamamatsu infringes the claims of U.S. Patent No. 7, 623, 982 (the “‘982 patent”). Hamamatsu moved to dismiss the complaint, arguing that the asserted claims are directed to patent-ineligible subject matter. On August 16, 2019, the court denied Hamamatsu's motion to dismiss the complaint. Hamamatsu now moves for leave to file a motion for reconsideration of the court's August 16, 2019 order. For the following reasons, the motion is denied.

         I. FACTUAL AND PROCEDURAL BACKGROUND

         The ‘982 patent is titled “Method of Testing an Electronic Circuit and Apparatus Thereof.” The court recited the relevant details of the technology and asserted claims at length in its order denying the motion to dismiss. SEMICAPS Pte Ltd. v. Hamamatsu Corp., 393 F.Supp.3d 802, 804-06 (N.D. Cal. 2019). In brief, the ‘982 patent relates to a method of and apparatus for testing electronic circuits using a laser in order to determine the location of defects on a semiconductor circuit. The ‘982 patent's background information describes the problem the patent seeks to solve, explaining that advances in integrated circuit technology have reduced the detection sensitivity of laser induced techniques to perform fault localization testing. Conventional approaches to improve detection sensitivity, such as increasing the power of the laser beam and using lock-in amplifiers, have not been entirely successful. The ‘982 patent attempts to increase detection sensitivity in laser-based fault detection systems without increasing the power of the laser beam or using lock-in amplifiers. Id. The claimed method “comprises radiating a laser beam onto the electronic circuit, and determining a plurality of samples of a response signal output by the electronic circuit during the period when the laser beam is radiated.” Id. at 805 (quotation omitted). “A signal processor process[es] the sample measurements of the response signal of the electronic circuit under test by accumulat[ing] the plurality of samples to generate a value, and then generat[ing] a test result based on the value generated.” Id. (quotation omitted). “Based on the generated value, a fault on the electronic circuit may appear as a bright spot, bright line, or bright area at a pixel location corresponding to the location of the fault on the electronic circuit.” Id. (quotation omitted).

         Hamamatsu moved pursuant to Federal Rule of Civil Procedure 12(b)(6) to dismiss the complaint, arguing that the asserted claims of the ‘982 patent are invalid under 35 U.S.C. § 101 for failing to claim patent-eligible subject matter.

         In its order denying the motion to dismiss, the court set forth the Supreme Court's two-part test for determining whether a claim's subject matter falls outside Section 101:

First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, we then ask, “[w]hat else is there in the claims before us?” To answer that question, we consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application. We have described step two of this analysis as a search for an “‘inventive concept'”-i.e., an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.”

Id. at 808-09 (quoting Alice Corp. Pty. V. CLS Bank Int'l, 573 U.S. 208, 217-18 (2014) (internal citations omitted, alterations in original).

         At the first step of the Alice inquiry, Hamamatsu argued that the representative claims are directed to the abstract idea of collecting data and processing it to generate a test result. It asserted “that this case is similar to those that found that the claims are abstract where they are directed to some combination of collecting and/or analyzing information and presenting the results of those processes, ” including Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Id. at 810 (quotation omitted). Hamamatsu also argued that “the inclusion of hardware and software components in the asserted claims does not change the abstract focus of the claims.” Id. at 812. In response, SEMICAPS disputed Hamamatsu's framing and argued that the claims are “directed to a specific technological problem, namely, improving fault detection sensitivity in laser-based testing of integrated circuits, ” and that the patent “describes and claims a specific solution to that problem.” Id. at 812 (quotations omitted).

         The court found that “Hamamatsu's characterization of the ‘982 patent as directed to the processes of collecting and analyzing information and presenting the results of those processes [was] overly reductive” and “ignore[d] the technical context of the patent and the claimed improvements over the prior art.” Id. at 814. The court described the asserted claims as follows:

The ‘982 patent explains how advancements in integrated circuits, including the use of more metallization layers and materials with lower thermal conductivity, have resulted in the need for increased fault detection sensitivity. It describes the problems inherent with existing approaches and sets forth a new system for testing integrated circuits that enables the detection of otherwise undetectable response signals. Claim 1 describes the claimed method, which involves radiating a laser beam onto the electronic circuit, determining a plurality of samples of a response signal output during the period the laser is radiated, accumulating the plurality of samples to generate a value, and generating a test result based on the value. Claim 21 sets forth the claimed apparatus, comprised of a laser beam source to radiate a laser beam onto the electronic circuit, a control system to direct the laser beam source to dwell on a certain location on the electronic circuit, a measuring circuit to determine a plurality of samples, and a signal processor to accumulate the plurality of samples to generate a value and a corresponding test result.
These claims describe a method and apparatus that enable the detection of response signals that were otherwise undetectable using prior art methods due to insufficient sensitivity, and the corresponding analysis of such response signals in order to determine the location of a fault on an electronic circuit.

Id. at 814-15. The court distinguished the claims of the ‘982 patent from the claims at issue in Electric Power Group, which involved “accumulating existing data from disparate sources, analyzing it, and displaying the results.” Id. at 815. In contrast with the Electric Power Group claims,

the method disclosed in the ‘982 patent is not merely a process of collecting readily observable data in the form of response signals and analyzing it to localize faults on the circuit. Instead, the asserted claims of the ‘982 patent describe a method of detecting response signals that are otherwise undetectable using prior art methods. They are therefore directed to a “new and useful technique” for ...

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