Trovan Ltd. v. Sokymat Sa, Irori

• Decision Date: 01 August 2002
• Docket Number: No. 01-1360.,01-1360.
• Citation: 299 F.3d 1292
• Parties: TROVAN, LTD., Algernon Promotions, Inc., and Electronic Identification Devices, Ltd., Plaintiffs-Appellees, v. SOKYMAT SA, IRORI, and Ake Gustafson, Defendants-Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

299 F.3d 1292

TROVAN, LTD., Algernon Promotions, Inc., and Electronic Identification Devices, Ltd., Plaintiffs-Appellees, v. SOKYMAT SA, IRORI, and Ake Gustafson, Defendants-Appellants.

No. 01-1360.

United States Court of Appeals, Federal Circuit.

DECIDED: August 1, 2002.

COPYRIGHT MATERIAL OMITTED

Charles H. De La Garza, Fulbright & Jaworski, L.L.P., of Austin, Texas, argued for plaintiffs-appellees. With him on the brief was Mark T. Garrett.

Edward P. Walker, Oliff & Berridge, PLC, of Alexandria, Virginia, argued for defendants-appellants. With him on the brief were James A. Oliff, John W. O'Meara and William J. Utermohlen.

Before MICHEL, BRYSON and LINN, Circuit Judges.

LINN, Circuit Judge.

Sokymat SA, Irori, and Ake Gustafson appeal the judgment of the United States District Court for the Central District of California that Gustafson is not a co-inventor and co-owner of U.S. Patent No. 5,281,855 ("the '855 patent"), and that Sokymat SA and Irori therefore infringe the '855 patent. Trovan, Ltd. v. Sokymat SA, No. CV-97-4585-MRP (C.D.Cal. Apr. 24, 2001) ("Opinion"). Because the district court did not properly construe the claims at issue, requiring the resolution of factual questions on the issue of inventorship of the claims as properly construed, we vacate and remand.

BACKGROUND

This case involves patents relating to miniature electronic devices known as passive transponders. Passive transponders are used in many applications including animal tracking and identification, anti-theft devices, and access control systems. Passive transponders consist of a small coil winding attached to a tiny integrated circuit. Figure 1 illustrates an encapsulated transponder corresponding to an embodiment of the invention in the '855 patent.

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The coil winding acts as an antenna and is composed of very thin wire 12 wound around an elongated cylindrical magnetic core 10. The wire ends 14 and 16 are attached to an integrated circuit die 20. In some embodiments of the invention, a support means 18 is affixed to the end of core 10, and the integrated circuit die 20 is then attached to support 18. In other embodiments, wire ends 14 and 16 provide the sole support for the integrated circuit without the need for support 18. '855 patent, col. 2, ll. 44-47. After assembly and testing, the transponder is encapsulated in a suitable glass or plastic capsule 26. Id., col. 2, ll. 55-57.

The integrated circuit device is very tiny. The specification describes contact pads 22 and 24 in one embodiment as approximately 16 mils long by 6 mils wide (0.41 millimeter by 0.15 millimeter). Id., col. 3, ll. 18-21. The commercial embodiments of the invention sold by both parties use an integrated circuit chip measuring approximately 40 mils by 40 mils (1 millimeter square). The antenna wire 12 is typically 18 microns (0.71 mils) in diameter, which is less than one-fourth the thickness of a human hair. The overall size of a passive transponder in this case can be seen as compared to a standard trial exhibit sticker below.

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Passive transponders are generally affixed to objects that require identification. To read the identifying information contained in a transponder, an external reader transmits an electromagnetic signal that is received by the transponder antenna. The signal generates electrical energy in the antenna coil which activates the integrated circuit. The activated circuit incites a coded identifying output impulse that passes back through the antenna, inducing a return electromagnetic signal. The coded signal is received by the reader and identified as having been generated by the particular transponder. The relevant claims at issue include independent claims 1 and 7, and dependent claims 4, 5, 8, and 9. Those claims provide:

1. An integrated circuit device comprising:

a silicon substrate forming a die having an integrated signal processing circuit formed in a surface thereof and including a first set of contact pads;

an insulative layer covering the circuit carrying surface of said die and having apertures therein exposing said first set of contact pads, said insulative layer having a thickness in excess of 10,000 angstroms;

a plurality of second contact pads disposed over discrete surface areas of said insulative layer, each such area surrounding one of said apertures, and each such second contact pad contacting one of said first set of pads through a corresponding aperture, said second pads being of a relatively soft metal and having a thickness in excess of 20 microns, said second pads being substantially larger than the corresponding first contact pads; and

means forming an electromagnetic antenna having wire leads bonded to said second pads, the size and thickness of said second pads combining with the thickness of said insulative layer to protect said integrated circuit during the bonding of each said wire lead to one of said second pads.

4. An integrated circuit device as recited in claim 1 wherein each of said wire leads is thermal compression bonded to its corresponding second pad.

5. An integrated circuit device as recited in claims 1, 2, 3, or 4, wherein said silicon substrate is supported by said wire leads.

7. A miniature integrated circuit transponder device comprising:

a semiconductor substrate having an integrated signal processing circuit formed thereon, said integrated circuit including a plurality of discrete contact pads for facilitating electrical interconnection thereto;

an electrically insulative layer covering said integrated circuit and having apertures formed therein exposing said contact pads, said insulative layer having a thickness in excess of 10,000 angstroms;

a plurality of bonding pads disposed over said insulative layer, with each said bonding pad extending through one of said apertures to make electrical contact with one of said contact pads, each said bonding pad being of a relatively soft metal having a thickness of at least 20 microns and having a surface area overlying a portion of said insulative layer substantially larger than the area of its corresponding aperture; and

electromagnetic antenna means having lead wires bonded to corresponding ones of said bonding pads, the size and thickness of said bonding pads and said insulative layer being sufficient to protect said substrate and said integrated circuit during the bonding of said lead wires to said bonding pads.

8. A miniature integrated circuit transponder device as recited in claim 7 wherein said lead wires are thermal compression bonded to their corresponding bonding pads.

9. A miniature integrated circuit transponder device as recited in claims 7 or 8 wherein said substrate is supported by said lead wires.

Id., col. 4, ll. 24-48, 60-62; col. 4, l. 2-col. 6, l. 2; col. 6, ll. 7-9.

When manufacturing these miniature transponders, several technical challenges arise including both (1) attaching the thin wire leads of the antenna to the small integrated circuit chip and (2) providing support for the integrated circuit chip after it is connected to the antenna and before it is encapsulated. One of the issues in this case specifically focuses on dependent claims 5 and 9 and the direct attachment of the coil wire antenna to the integrated circuit chip where the wire leads provide support for the chip. Another inventorship issue focuses on dependent claims 4 and 8, which require the claimed wire leads to be thermal compression bonded to their corresponding pads.

As set forth in more detail in Trovan, Ltd. v. Sokymat SA, Nos. 99-1474, 99-1488, 2000 U.S.App. LEXIS 22901, 2000 WL 1285243 (Fed.Cir. Sept. 8, 2000) (non-precedential opinion) ("Trovan I"), Trovan began designing a manufacturing process for mass production of miniature transponders in the late 1980s to be marketed in the radio frequency identification industry. Joseph Masin, a businessman, was chosen to direct the passive transponder project. Masin obtained the services of Dr. Philip Troyk of the Illinois Institute of Technology to act as the leader for the development team. In the fall of 1989, Masin hired Leonard Hadden and Glen Zirbes of Cross Technologies ("Cross"), an engineering firm involved in the design and manufacture of integrated circuits, to aid Trovan in the development of new, smaller transponders. Hadden was particularly experienced in the packaging of integrated circuits including placing metal bumps on the integrated circuit chips to facilitate electrical connection thereto. After recruiting Hadden and Zirbes, Masin sought expertise on ways to automate the winding of wire to make the antenna coils. Following discussions with a number of coil winding companies, Masin eventually picked defendant Sokymat, a Swiss watch manufacturer headed by co-defendant, Ake Gustafson.

Trovan and Sokymat agreed to work together in optimizing production of Trovan's transponders. They entered into a Nondisclosure Agreement, which covered Trovan's existing intellectual property but did not cover Sokymat's existing intellectual property. The agreement had no provision for assignment of any invention developed during the collaboration

In the summer of 1989, Trovan and Sokymat began working on the project. The team including Gustafson, Hadden, and Zirbes initially considered two automated methods for connecting the chip to the antenna. One method connected the wire leads of the antenna coil to the integrated circuit chip through a printed circuit board ("print") or leadframe bound onto the surface of the integrated circuit chip by gold bump contacts. The term "print" in this case refers to an insulated board onto which a circuit has been etched. See Rudolf F. Graf, Modern Dictionary of Electronics, 778 (6th ed. 1992). A leadframe is the metal part of a solid-state device package which achieves electrical connection between the die and...