Texas Instruments Inc. v. Cypress Semiconductor Corp.
| Decision Date | 19 July 1996 |
| Docket Number | No. 96-1003,96-1003 |
| Citation | 39 USPQ2d 1492,90 F.3d 1558 |
| Parties | TEXAS INSTRUMENTS INCORPORATED, Plaintiff-Appellant, v. CYPRESS SEMICONDUCTOR CORPORATION, LSI Logic Corporation, and VLSI Technology, Inc., Defendants-Appellees. |
| Court | U.S. Court of Appeals — Federal Circuit |
Kenneth R. Adamo, Jones, Day, Reavis & Pogue, Dallas, Texas, argued, for plaintiff-appellant. With him on the brief, was Thomas R. Jackson. Of counsel, was Timothy B. Dyk, Washington, D.C., and Jay C. Johnson, Texas Instruments, Inc., of Dallas, Texas.
C. Randall Bain, Brown & Bain, P.A., Phoenix, Arizona, argued, for defendants/cross-appellants. With him on the brief, was Alan H. Blankenheimer. Of counsel, were Paul H. Heller, Kenyon & Kenyon, New York City, and Daniel P. Quigley, Patricia A. Hubbard, and Shirley A. Kaufman, Brown & Bain, P.A.
Before RICH, MAYER, and LOURIE, Circuit Judges.
BACKGROUND
TI is the assignee of U.S. Patents 3,716,764 and 4,043,027. These patents claim different aspects of a process for encapsulating electronic components in plastic. The '027 patent claims a transfer molding process for encapsulating a semiconductor device , also referred to as a semiconductor "die," in plastic without damaging the device or the fine wires [52 and 54], referred to as "whisker" wires, that provide the electrical connections between the device and metal leads [10, 12, and 14]. The metal leads [10, 12, and 14] permit connection from the device to an external circuit. In the claimed process, the device and the whisker wires [52 and 54] are protected because the plastic is injected from a gate located on the opposite side of the mold cavity [64 and 66] from the device and the whisker wires [52 and 54]. Figure 5, as shown below, illustrates the claimed process.
NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
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Claims 12 and 14, with reference numbers to figure 5 and emphasis added, are at issue on appeal.
12. The process for encapsulating a semiconductor device comprising:
electrically connecting each of the electrical terminals of the device to a conductor [10 and 14] and mechanically attaching a portion of said device to at least one of the conductors for support;
disposing the conductors [10, 12, and 14] generally in a common plane;
disposing the device and a major portion of the means for making electrical connection [52 and 54] between the terminals and the conductors generally on one side of the plane holding the ends of the conductors [10, 12, and 14] extending from the mold cavity [64 and 66] while injecting a fluid insulating material into the mold cavity on the other side of the plane to subsequently solidify and embed said device , the fluid insulating material being injected into a portion of the cavity remote from the device and the means electrically connecting the terminals of the device to the conductors [52 and 54], whereby the fluid will not directly engage the device and electrical connection means [52 and 54] at high velocity, and the conductors will be secured against appreciable displacement by the fluid.
14. A process for encapsulating a semiconductor device comprising:
the fluid insulating material being injected into a portion of the cavity on the opposite side of said plane to preclude direct high velocity engagement between the fluid and the device and the electrical connections [52 and 54] thereto.
The '764 patent contains a specification identical to that of the '027 patent and claims the use of a lead frame having conductor strips [136, 138, and 140] to support the device during the transfer molding process. 1 After the semiconductor device is encapsulated in plastic, the frame is severed, leaving the conductor strips [136, 138, and 140] extending from the completed package in order to allow connection of the device to an external circuit. Figure 9, as shown below, illustrates a metal lead frame as used in the claimed process.
NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
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Claims 16, 17, and 19 of the '764 patent are at issue on appeal. Claim 16, with reference numbers to figure 9 and emphasis added, is 16. A method for providing electrical connections to and encapsulating a semiconductor device comprising the steps of:
representative of the '764 patent claims on appeal. 2
(a) providing a substantially flat metal sheet having recesses [124, 126, 128, and 130] therein which divide the sheet into a plurality of conductor strips [136, 138, and 140 (corresponding to 10, 12, and 14 in figure 5) ] which are spaced apart from one another for at least a major part of their lengths and which are joined together at at least one of their ends by at least one side piece which is spaced from a central region of the assembly, a plurality of the conductor strips [136, 138, and 140] extending from the side piece parallel to one another for at least part of their lengths;
(b) conductively connecting one face of a semiconductor wafer to one of said conductor strips [138 (corresponding to 12 in figure 5) ] in the central region;
(c) conductively connecting electrodes on the opposite face of the wafer to conductor strips [136 and 140] at the central region by separate lead wires [144 and 146 (corresponding to 52 and 54 in figure 5) ];
(d) enclosing the central region of the assembly in plastic insulating material to surround the wafer and lead wires and parts of the conductor strips; and
(e) severing the conductor strips at positions spaced from the central region to eliminate the remainder of the sheet including the side piece.
Cypress Semiconductor Corporation, LSI Logic Corporation, and VLSI Technology, Inc. import and sell semiconductor devices. These devices are significantly more complicated than the devices shown in TI's patents due to advances in semiconductor technology. However, despite the advances in semiconductor technology, the defendants still encapsulate the devices using a transfer molding process.
In the accused transfer molding processes, the defendants employed a metal lead frame that differed from the one shown in TI's patents in that the semiconductor device was attached to the lead frame at a "die pad," not a conductor strip. The die pad supported the semiconductor device, but did not extend outside the completed encapsulated semiconductor device for connection to an external circuit. In addition, the die pad was situated 10-15 mils below the lead frame's conductor strips. The device was connected to the conductor strips via whisker wires. In the defendants' processes, the lead frame and the device were placed in a mold cavity and a fluid insulating material was injected into the mold cavity. The fluid was injected at a gate located on the opposite side of the lead frame from the semiconductor device and the whisker wires. After encapsulation, the lead frame was severed, leaving the conductor strips extending from the completed package for connection of the device to an external circuit. 3
On July 9, 1990, TI initiated an action under 19 U.S.C. § 1337 at the International Trade Commission ("ITC") against several semiconductor manufacturers, including all of the present defendants. TI alleged that these companies engaged in unfair methods of competition and unfair acts based on the importation and sale of encapsulated circuits produced by processes purportedly covered by claims 1, 12, 14, and 17 of the '027 patent. An administrative law judge ("ALJ") determined that claim 14 was literally infringed and that claim 12 was infringed under the doctrine of equivalents. Upon review of the ALJ's decision, the Commission agreed with the ALJ that claims 12 and 14 of the '027 patent were infringed, and it issued a limited exclusion order prohibiting the companies from importing integrated circuits manufactured abroad using any process covered by claims 12 and 14. In re Certain Plastic Contemporaneously with the ITC proceeding, TI sued the same companies in the Northern District of Texas, alleging infringement of both the '027 and '764 patents. After a 17-day trial that commenced on April 17, 1995, the jury returned a verdict finding that the defendants wilfully infringed claims 12 and 14 of the '027 patent and claims 16, 17, and 19 of the '764 patent. The jury did not specify whether it found literal infringement or infringement under the doctrine of equivalents. In addition, the jury awarded reasonable royalty damages to TI of more than $51 million. Despite the jury's verdict, the court granted, in part, the defendants' motion for judgment as a matter of law and set aside the verdict. Texas Instruments Inc. v. Cypress Semiconductor Corp., Civ. No. 3-90-CV1590-H, 1995 WL 811944 (N.D.Tex. Sept. 6, 1995). In particular, the court determined that no reasonable jury could have found literal infringement of claim 12 of the '027 patent and claim 16 of the '764 patent because none of the defendants secured the...
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