Clear and Convincing Evidence of “Made in This Country” Must Be Presented to Invalidate a Patent Under § 102(g)(2)
August 22, 2012
Last Month at the Federal Circuit - September 2012
Judges: Newman, Plager, Linn (author)
[Appealed from: ITC]
In Amkor Technology, Inc. v. International Trade Commission, No. 10-1550 (Fed. Cir. Aug. 22, 2012), the Federal Circuit reversed the ITC’s determination that U.S. Patent No. 6,433,277 (“the ’277 patent”) is invalid based on prior invention under 35 U.S.C. § 102(g)(2).
Amkor Technology, Inc. (“Amkor”) is the assignee of the ’277 patent relating to smaller and “more reliable” integrated circuit packages. Amkor asserted that Carsem (M) Sdn Bhd, Carsem Semiconductor Sdn Bhd, and Carsem, Inc. (collectively “Carsem”) violated section 337 of the Tariff Act of 1930, based on certain devices that allegedly infringed claims 1-4, 7, 17, 18, and 20-23 of the ’277 patent.
The ALJ issued a subpoena to third parties ASAT, Inc., ASAT Holdings, and ASAT Limited (collectively “ASAT”) seeking documents related to ASAT’s chip carrier package invention (“ASAT invention”) described in U.S. Patent No. 6,229,200 (“ASAT ’200 patent”). Initially, ASAT failed to comply with the subpoena. Therefore, the ALJ issued a first Initial Determination before receiving the ASAT documents, finding (1) that some or all of Carsem’s accused micro leadframe package products infringed claims 1, 7, 17, and 20 of the ’277 patent; (2) that claims 1, 7, 17, and 20 of the ’277 patent were invalid as anticipated; and (3) that claims 2-4 and 21-23 of the ’277 patent, which require a lip that runs “fully around a circumference of the die pad” (claims 2-4) and “fully around the die pad” (claims 21-23), were indefinite because it was unclear whether the lip ran under the connectors that connect the die pad to the leadframe, or was actually interrupted by the connectors. On review, the ITC modified the ALJ’s claim construction, construing “fully around a circumference of the die pad” and “fully around the die pad” to mean that “the lip must run fully around the sides of the die pad, but not underneath or through the tie bars,” and remanded. Slip op. at 6 (citation omitted). Based on the ITC’s claim construction, the ALJ issued a second Initial Determination finding (1) that some or all of Carsem’s micro leadframe package products infringed claims 2-4 and 21-23 of the ’277 patent; (2) that claims 2-4 and 21-23 of the ’277 patent were not invalid as anticipated or obvious; and (3) that Carsem violated section 337.
After finally receiving the subpoenaed documents from ASAT, the ITC again remanded to the ALJ to determine whether the ASAT invention qualified as prior art to the ’277 patent under 35 U.S.C. § 102(g)(2). The ALJ issued a first Supplemental Initial Determination finding that the ASAT invention was conceived in a foreign country sometime during April or May and that Amkor conceived the ’277 patent technology sometime during May through August, or on December 10, of that same year. Accordingly, the ALJ found that the ASAT invention was not prior art under § 102(g)(2) because the respondent failed to prove by clear and convincing evidence that the April/May date of invention for the ASAT invention was prior to the May through August date of invention for the ’277 patent.
On review, the ITC reversed and remanded, holding that the ASAT invention was § 102(g)(2) prior art because, under Oka v. Youssefyeh, 849 F.2d 581, 584 (Fed. Cir. 1998), the earliest possible priority date of the ’277 patent must be the last date in the range of dates, or December 10, which falls after the April/May date of invention for the ASAT invention. On remand, the ALJ held all disputed claims of the ’277 patent were invalid under § 102(g)(2) in view of the ASAT invention.
On appeal, the Federal Circuit reversed the ITC’s finding that the ’277 patent was invalid under § 102(g)(2) in view of the ASAT invention. The Federal Circuit, applying the pre-American Inventors Protection Act of 1999 (“AIPA”) version of § 102(g), stated in Scott v. Koyama, 281 F.3d 1243 (Fed. Cir. 2001), that “the inventor of an invention of foreign origin may rely on the date that the invention was disclosed in the United States as a conception date for priority purposes.” Slip op. at 9-10 (alteration in original) (quoting Scott, 281 F.3d at 1247). The Court held that the district court’s interpretation of the “made in this country” language as interpreted pre-AIPA is retained in the post-AIPA language in § 102(g)(2), because nothing in the legislative history indicates that Congress attempted to abandon the Court’s interpretation.
The Federal Circuit first rejected Amkor’s argument that the disclosure must be in writing, holding that while writings can satisfy the full domestic disclosure requirement, the cases do not establish any per se requirement that such disclosure must be in writing. The Court explained that the content of the domestic disclosure must be specific enough to encompass the complete and operative invention, and an inventor’s oral testimony to this extent is a question of proof. The Court noted that even if the ASAT inventor’s domestic disclosure was sufficient, and the Court was not persuaded that it was, the ITC erred in its priority date determination with respect to Amkor.
The Court held that the ITC’s application of Oka was legal error. In Oka, the junior party in an interference submitted a range of dates of possible conception in an attempt to prove prior invention under § 102(g). The presumption of validity and the clear and convincing burden associated with it did not apply in the interference in Oka. To invalidate the ’277 patent under § 102(g)(2), Carsem bore the burden of persuasion and was required to submit not just preponderant evidence but clear and convincing evidence that the ASAT invention was conceived in the United States before the invention of the ’277 patent. Carsem could only demonstrate a range of dates of possible U.S. disclosure, the first thirty days of which predated Amkor’s possible conception date, and the last thirty-one days of which overlapped with Amkor’s possible conception date. Evidence establishing that there might have been a prior conception is not sufficient to meet the clear and convincing burden needed to invalidate a patent. Because Carsem failed to prove prior invention in the United States by clear and convincing evidence, the Court reversed the ITC’s determination that the ’277 patent is invalid under § 102(g)(2).
Thus, the Court reversed the ITC’s determination that the ’277 patent is invalid under 35 U.S.C.
§ 102(g)(2) and declined to affirm the ITC’s invalidity determination on alternative grounds raised by Carsem. Finally, the Court remanded for further proceedings consistent with the Court’s findings.
Summary authored by David R. Lefebvre, student associate at Finnegan.