IP Law Daily, PATENT—Fed. Cir.: Claim construction affirmed in semiconductor chip patent dispute, (Nov 17, 2023)

By Kevin M. Finson, J.D.

The PTAB’s construction of three limitations as including within their scope an intermediate product with only a single chip encased in a resin packaging layer was supported by the claim language and the specification.

A manufacturer of semiconductor chips was not able to show error in the claim construction underlying a Patent Trial and Appeal Board inter partes review final decision, which invalidated several claims in its patent for manufacturing semiconductor devices, the U.S. Court of Appeals for the Federal Circuit has held. The PTAB did not err in holding that claims encompassed the manufacture of a single chip as well as a plurality in one packaging layer because the claim language, if not the diagrams included, was written to encompass the singular as well as the plural (Bell Semiconductor LLC v. Advanced Semiconductor Engineering, Inc., November 17, 2023, Taranto, R.).

Bell Semiconductor, LLC (Bell) was the owner, by assignment, of U.S. Patent No. 6,624,007 (the ’007 patent), which claimed methods for making semiconductor devices. Advanced Semiconductor Engineering, Inc. (Advanced) petitioned for inter partes review of all eight claims of the ’007 patent. Bell disclaimed Claim 8, and the Patent Trial and Appeal Board (PTAB) instituted review of the remaining claims, ultimately holding all seven of the disputed claims unpatentable. Bell appealed.

Standing. Although neither party disputed or discussed standing, the Federal Circuit questioned whether Bell had a statutory right to appeal as “a party who exercised that party’s right to participate” in the inter partes review. The court questioned this because it was aware that there had been some issues raised in district court proceedings where Bell had asserted the ’007 patent about what rights, if any, where retained by Rohm Co., Ltd, the original owner of the patent who had assigned it to Bell. Resolution of these issues could impact whether Bell was actually a “patent owner” and therefore whether it had a right to participate in the underlying inter partes review proceeding. Ultimately, the court held that the PTAB had treated Bell as the owner following its general practice of accepting a party’s uncontested claim to be patent owner, and the court saw no error in the Board’s decision. Bell thus had statutory standing to file the appeal.

Claim construction. Turning to the merits, the Federal Circuit explained that Bell’s assertions of error related to the construction of three claim terms, all of which hinged on Bell’s contention that the claimed manufacturing method, which consisted of chips embedded in a packaging layer that would be cut out as a part of the manufacturing process, required a plurality of chips all enclosed in a continuous packaging layer as opposed to simply having one chip surrounded by its own packaging layer. The court found that while one figure showed the arrangement of a plurality of chips, the claim language itself did not require a plurality and frequently used singular terms to describe the chip in question. Accordingly, the court found no error in the Board’s claim construction.

Finding no error, the court affirmed the Board’s decision.

The case is No. 22-2048.

Attorneys: Timothy Devlin (Devlin Law Firm) for Bell Semiconductor LLC. Steven J. Rizzi (McKool Smith, PC) for Advanced Semiconductor Engineering, Inc.

Companies: Bell Semiconductor LLC; Advanced Semiconductor Engineering, Inc.

Cases: Patent TechnologyInternet FedCirNews