On August 22, 2012 the Federal Circuit issued its opinion in Amkor Tech., Inc. v. Int’l Trade Comm’n (2010-1550). This was an appeal by Amkor Technology, Inc. (“Amkor”) from the International Trade Commission’s (the “Commission”) final determination in Certain Encapsulated Integrated Circuit Devices and Products Containing the Same (Inv. No. 337-TA-501), wherein the Commission determined that U.S. Patent No. 6,433,277 (the ‘277 patent) is invalid under 35 U.S.C. § 102(g)(2).
The ‘277 patent relates to a smaller and more reliable integrated circuit package only marginally larger than a semiconductor chip by virtue of encapsulating only a top portion of the package in plastic. The respondents in the investigation, Carsem (M) Sdn Bhd, Carsem Semiconductor Sdn Bhd, and Carsem, Inc. (collectively, “Carsem”), asserted that the ‘277 patent was anticipated by a leadless plastic chip carrier package invented by third parties ASAT, Inc., ASAT Holdings, and ASAT Limited (collectively, “ASAT”). On November 18, 2004, before ASAT produced subpoenaed documents related to its invention, the ALJ issued a first Initial Determination finding no violation of Section 337 on the grounds that the asserted ‘277 patent claims were invalid as either anticipated or indefinite. On review, the Commission modified the ALJ’s claim construction and remanded. On November 9, 2005, the ALJ issued a second Initial Determination finding that, based on the Commission’s claim construction, some of the asserted claims were not invalid as anticipated or obvious, and that Carsem therefore violated Section 337. On July 1, 2009, after finally obtaining the ASAT documents (following two enforcement petitions in district court), the Commission remanded the investigation to the ALJ again to determine whether the ASAT invention qualified as prior art under § 102(g)(2). See our July 2, 2009 post for more details. On October 30, 2009, the ALJ issued a first Supplemental Initial Determination finding that the co-inventor of the ASAT invention conceived of the ASAT invention in a foreign country sometime during April or May, and that Amkor’s ’277 patent technology was conceived sometime during May through August, or on December 10, of that same year. Accordingly, the ALJ concluded that the ASAT invention is not prior art under § 102(g)(2) because Carsem failed to prove by clear and convincing evidence that ASAT’s April/May invention date is prior to the May-through-August date of invention accorded the asserted claims of the ‘277 patent. See our November 27, 2009 post for more details. On review, the Commission again reversed and remanded, holding that the ASAT invention is § 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 ’227 patent must be the last date in the range of dates (i.e., December 10), which falls after the April/May invention date for the ASAT invention. See our February 22, 2010 post for more details. On remand, the ALJ issued a second Supplemental Initial Determination finding all disputed claims of the ’277 patent invalid under § 102(g)(2) in view of the ASAT invention. See our April 9, 2010 post for more details. Amkor appealed the Commission’s holding that the ASAT invention qualifies as § 102(g)(2) prior art.
In its opinion, the Federal Circuit reversed the Commission’s priority date determination in connection with the ASAT invention and Amkor’s ‘277 patent. In particular, the Federal Circuit held that the Oka rule – i.e., according the last possible conception date to a party who can only provide a range of dates – does not apply to patent owners like Amkor in validity disputes because the standards that apply to interferences such as in Oka do not necessarily apply to disputes over the validity of issued patents that are entitled to a presumption of validity under 35 U.S.C. § 282. As the court explained, Carsem was required to submit not just a preponderance of evidence but clear and convincing evidence that the ASAT invention was conceived in the United States before Amkor’s invention date to invalidate the ‘277 patent under § 102(g)(2). Because Carsem could only show a range of dates of possible domestic disclosure (the first 30 days of which predated Amkor’s possible conception date, and the last 31 days of which overlapped with Amkor’s possible conception dates), it could only establish that the ASAT inventor might have conceived of the invention first. The Federal Circuit found such a showing insufficient to meet the clear and convincing standard, and thus held that the Commission committed legal error in reversing the ALJ’s first Supplemental Initial Determination based on an erroneous application of the Oka rule to the patent holder.
The Federal Circuit also declined to affirm the Commission’s invalidity determination on alternative grounds raised by Carsem. Specifically, the court rejected Carsem’s argument that the Commission erred in its claim construction, finding that Carsem “switche[d] positions on appeal, now arguing in support of the position it opposed below” with respect to the claim term “fully around” and therefore waived its new argument. The court went on to state that even if Carsem had preserved the argument, the Commission properly construed the claims. The Federal Circuit also was not persuaded by Carsem’s contention that certain asserted claims are obvious in view of the JP-456 reference alone or in combination with the JP-964 and/or JP-284 references, finding no evidence of a motivation or a reason to remove the fused lead that interrupts the lip on all four sides of the die pad in JP-456.
Accordingly, the Federal Circuit reversed the Commission’s determination that the ’277 Patent is invalid under 35 U.S.C. § 102(g)(2), declined to affirm the Commission’s invalidity determination on the alternative grounds raised by Carsem, and remanded for further proceedings consistent with this opinion.