Anza Tech., Inc. v. Mushkin, Inc.

• Decision Date: 16 August 2019
• Docket Number: 2019-1045
• Parties: ANZA TECHNOLOGY, INC., Plaintiff-Appellant v. MUSHKIN, INC., dba Enhanced Network Systems, Inc., Defendant-Appellee
• Court: U.S. Court of Appeals — Federal Circuit

934 F.3d 1359

ANZA TECHNOLOGY, INC., Plaintiff-Appellant

v.MUSHKIN, INC., dba Enhanced Network Systems, Inc., Defendant-Appellee

2019-1045

United States Court of Appeals, Federal Circuit.

Decided: August 16, 2019

Colby Brian Springer, Polsinelli LLP, San Francisco, CA, argued for plaintiff-appellant. Also represented by Miya Yusa; Michael Dulin, Denver, CO; Hannah Theresa Yang, Kilpatrick Townsend & Stockton LLP, San Francisco, CA.

D. Scott Hemingway, Hemingway & Hansen, LLP, Dallas, TX, argued for defendant-appellee. Also represented by Thomas S. Rice, Senter Goldfarb & Rice LLC, Denver, CO.

Before Prost, Chief Judge, Newman and Bryson, Circuit Judges.

Bryson, Circuit Judge.

Plaintiff Anza Technology, Inc., ("Anza") appeals from a decision of the United States District Court for the District of Colorado granting a motion by defendant Mushkin, Inc., dba Enhanced Network Systems, Inc., ("Mushkin") to dismiss Anza’s second amended complaint. The dismissal followed from the court’s finding that Anza’s claim of damages for patent infringement was barred by the six-year statute of limitations in the Patent Act, 35 U.S.C. § 286. That ruling was based in turn on the court’s determination that the claims in Anza’s second amended complaint did not relate back to the date of Anza’s original complaint and were therefore time-barred. Because the district court’s application of the relation back doctrine was overly restrictive, we reverse in part, vacate in part, and remand for further proceedings.

I

A

Anza filed this action on March 28, 2017, in the United States District Court for the Eastern District of California, alleging that Mushkin had infringed claims 1, 14, and 16 of Anza’s U.S. Patent No. 7,124,927 ("the ’927 patent"), in violation of 35 U.S.C. § 271(a) and (g). The ’927 patent, entitled "Flip Chip Bonding Tool and Ball Placement Capillary," relates to "dissipative and insulative ceramic flip chip bonding tools and capillaries for ball placement for bonding electrical connections." ’927 patent, col. 1, ll. 39–41.

The specification of the ’927 patent discusses two techniques for bonding electronic components, such as semiconductor integrated circuit ("IC") chips, to substrates, circuit boards, or carriers. The two techniques are referred to as "wire bonding" and "flip chip bonding." ’927 patent, col. 1, ll. 60–65. In wire bonding, the chip is oriented face-up, so that there is no direct electrical connection between the leads of the chip and the bond pads on the substrate. A wire is then used to connect the chip to the substrate. Id. at col. 1, ll. 43–61. In flip chip bonding, the chip is oriented face-down, which allows for a direct electrical connection between the chip and the substrate. The direct electrical connection is facilitated by conductive solder balls that are deposited on the chip; the solder balls provide the conductive path from chip to substrate. Id. at col. 1, ll. 61–65; col. 2, ll. 9–10; Fig. 3.

Under either technique, the bonding process requires the use of bonding tools.

The ’927 patent explains that the problem with prior art bonding tools was that "an electrostatic discharge (ESD) from the bonding tool or transient currents from the machine [that uses the tool] can damage the very circuit the tool is bonding." Id. at col. 2, ll. 47–49. According to the specification, "[c]ertain prior art devices have a one-or-more volt emission when the tip makes bonding contact. This could present a problem, as a one-volt static discharge can ... cause the integrated circuit to fail." Id. at col. 2, ll. 53–59.

To avoid damage to the electronic devices from such an electrostatic discharge, the ’927 patent recites a bonding tool tip for flip chip bonding that "conducts electricity at a rate sufficient to prevent charge buildup but not at so high a rate as to overload the device being bonded." Id. at col. 2, line 67, through col. 3, line 2.

Claims 1, 14, and 16 of the ’927 patent, all independent claims, recite a system, a component, and a method, respectively. Claim 1 provides as follows:

1. A flip chip bonding tool and ball placement capillary system for connecting leads on integrated circuit bonding pads, comprising a dissipative material having a resistance low enough to prevent a discharge of a charge to a device being bonded and high enough to stop current flow large enough to damage the device being bonded.

Claim 14 recites:

14. An ESD-preventive device comprising:

a flip chip bonding tool and ball placement capillary, comprising a dissipative material and configured to come in contact with a device being bonded, wherein a current produced by static charge generated during bonding is allowed to flow; wherein the dissipative material has a resistance low enough to prevent a discharge of charge to the device being bonded and high enough to stop all current flow to the device being bonded.

Claim 16 recites "[a] method of utilizing a flip chip bonding tool ... in a microelectronic assembly." The claimed method recites the use of a bonding machine capable of being equipped with a flip chip bonding tool, which has a tip comprising a dissipative material having the same properties as recited in claims 1 and 14.

B

On September 6, 2017, Anza filed its first amended complaint, which joined Avant Technology, Inc., as a co-defendant.¹ Thereafter, Mushkin filed a motion to dismiss or to sever the claims against Mushkin from those against Avant, and either to stay the case against Mushkin or to transfer the case to the District of Colorado. The California district court severed Anza’s claims against Mushkin and transferred the case against Mushkin to the District of Colorado.

Following the transfer, Anza served infringement contentions against Mushkin pursuant to the District of Colorado’s Local Patent Rules 4 and 5. The infringement contentions accused Mushkin of directly infringing claims 1 and 14, but did not refer to claim 16. Noting in its infringement contentions that discovery had not commenced and a formal scheduling order had not been entered, Anza stated that it reserved "the right to supplement these contentions as appropriate based upon further discovery and the schedule of this case, including but not limited to assertions related to new claims and/or patents as may be allowed through amendment of the operative pleading."

The parties then engaged in mediation. In the course of the mediation, Mushkin provided Anza with a declaration of George Stathakis, Mushkin’s president, regarding the technology used by Mushkin. The Stathakis declaration stated, inter alia , that Mushkin "did not bond IC chips to boards or modules." Instead, according to the declaration, "[t]he memory products purchased by Mushkin, Inc. from suppliers were IC memory chips that were already ... bonded on printed circuit boards or memory module boards." Additionally, the declaration stated that Mushkin’s supplier "does not place or position solder ball connectors on the IC chip for use in bonding the IC chip to a printed circuit board or memory module board."

The district court held a hearing to address Mushkin’s motion to dismiss. In light of information in the Stathakis declaration, Anza "agreed that its present claims [were] no longer viable." Based on that concession, the district court granted Mushkin’s motion. However, the court ruled that Anza would be permitted to file an amended complaint and that Mushkin would be allowed to file a motion to dismiss that complaint.

C

Anza filed its second amended complaint on June 8, 2018. In the second amended complaint, Anza removed the infringement allegations regarding the ’927 patent and alleged infringement of two new patents: U.S. Patent Nos. 6,354,479 ("the ’479 patent") and 6,651,864 ("the ’864 patent"). The new complaint alleged that Mushkin had infringed those patents under 35 U.S.C. § 271(g). Anza also omitted ten of the sixteen products that had been accused in the original complaint and added two new products that had not previously been accused.

The ’479 and ’864 patents, entitled "Dissipative Ceramic Bonding Tip" and "Dissipative Ceramic Bonding Tool Tip," respectively, claim priority to the same U.S. provisional application as the ’927 patent. Like the ’927 patent, the ’479 and ’864 patents recite the use of "dissipative ceramic bonding tips for bonding electrical connections." ’479 patent, col. 1, ll. 12–13; ’864 patent, col. 1, ll. 20–21. The patents offer the same solution to the problem of electrostatic discharge damage during the bonding process—providing a bonding tool tip that conducts electricity "at a rate sufficient to prevent charge buildup, but not at so high a rate as to overload the device being bonded." ’479 patent, col. 2, ll. 4–6; ’864 patent, col. 2, ll. 11–13. The ’479 and ’864 patents differ from the ’927 patent in that they are directed to bonding tool tips for wire bonding, rather than for flip chip bonding. In addition, in contrast to the system and component claims of the ’927 patent, the asserted claims of the ’479 and ’864 patents (claims 39 and 28, respectively), are method claims. Claim 37 of the ’479 patent, from which asserted claim 39 depends, recites as follows:

37. A method of using a bonding tip, comprising:

bonding a device using a bonding tip made with a dissipative material that has a resistance low enough to prevent a discharge of charge to said device and high enough to avoid current flow large enough to damage said device.

Similarly, independent claim 28 of the ’864 patent recites:

28. A method of using an electrically dissipative bonding tool tip, having a resistance in the range of 10⁵ to 10¹² ohms, comprising:

providing the electrically dissipative bonding tool tip;

bonding a material to a device;

allowing an essentially smooth current to dissipate to the device, the current being low enough so as not to damage said device being bonded and high enough to avoid a build up of charge that could discharge to the device being bonded and damage the device being

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