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In-Depth Test LLC v. Maxim Integrated Products Inc.

United States District Court, D. Delaware

December 18, 2018

IN-DEPTH TEST, LLC, Plaintiff,
v.
MAXIM INTEGRATED, PRODUCTS, INC., Defendant IN-DEPTH TEST, LLC, Plaintiff,
v.
VISHAY INTERTECHNOLOGY INC. and SILICONIX INC., Defendants.

          Brain E. Farnan, FARNAN LLP, Wilmington, Delaware; Jonathan T. Suder (argued), Corby R. Vowell, FRIEDMAN, SUDER & COOKE, Counsel for Plaintiff

          Robert M. Oakes (argued), FISH & RICHARDSON P.C., Wilmington, Delaware; David M. Barkan, FISH & RICHARDSON P.C., Counsel for Defendant Maxim Integrated Products, Inc.

          James H. S. Levine, PEPPER HAMILTON LLP, Wilmington Delaware; Thomas F. Fitzpatrick (argued), PEPPER HAMILTON LLP, Silicon Valley, California; Michael K. Jones, Joseph J. Holovachuk, Philadelphia, Pennsylvania Counsel for Defendants Vishay Intertechnology Inc. and Siliconix Inc.

          MEMORANDUM OPINION

          CONNOLLY, UNITED STATES DISTRICT JUDGE

         I have before me two identical motions for judgment on the pleadings filed pursuant to Federal Rule of Civil Procedure 12(c) in these coordinated patent infringement actions. 14-cv-887, D.I. 30; 14-cv-888, D.I. 32.[1] Defendant Maxim Integrated Products, Inc. (in civil action no. 14-cv-887-CFC) and Defendants Vishay Intertechnology Inc. and Siliconix Inc. (in civil action no. 14-cv-888-CFC) ask by their motions that I adjudge the sole patent-in-suit, U.S. Patent No. 6, 792, 373 ("the #373 patent"), invalid under 35 U.S.C. § 101 for failing to claim patentable subject matter and dismiss Plaintiff In-Depth Test, LLC's complaints with prejudice. D.I. 31 at 20.[2] I have studied the parties' extensive briefing on the motions (D.I. 31, D.I. 36, D.I. 37, D.I. 47, D.I. 74, D.I. 75, D.I. 84, D.I. 85) and heard argument on the motions during a claim construction hearing held on October 9, 2018. For the reasons that follow, I will grant Defendants' motions.

         I. BACKGROUND

         The #373 patent is directed to the testing of semiconductor chips. The following description offered by Plaintiff fairly describes the invention claimed by the #373 patent:

During the fabrication process for [semiconductor] chips, silicon wafers are processed to create the specific types of integrated circuits for which they are designed. ... Subsequent to processing the wafers, the individual components of the wafers need to be tested to determine if they are functioning normally or if there were manufacturing errors. For years, test machines were used to perform basic testing that measured a variety of parameters to see if the components met certain thresholds or fell within acceptable ranges, called control limits. If not, particular components or groups of components were considered not to meet minimum specifications [and] were identified as failed parts. ...
The inventions of the [#]373 patent enhance the test process by performing additional testing that more accurately determines whether the components being tested are likely to fail or malfunction. The patent specification describes using an additional computer to perform a statistical analysis on the test results generated by conventional test equipment. The analysis performed identifies and then reports components that fell within the control limits but that are statistical "outliers" from other components that also fell within the control limits. The specific identification of outliers in the results of the output report is significant because it provides a more granular level of test results that can be used to classify or grade the performance of the component in the remainder of the manufacturing process or to improve the manufacturing process itself.
[T]he purpose of the enhanced analysis is to determine if any of the components that fell within the control limits have test results that deviate from the other components that were within the control limits.
The [#]373 patent describes the use of the statistical analysis to determine whether the test results for a particular component indicate that it is an outlier or not. ... [T]he term outlier is explicitly defined by the patent specification as a test result whose value strays from a set of test results having statistically similar values, but does not exceed control limits or otherwise fail to be detected. ... The test results for the outliers are also included in an output report for the overall test results and can be used for further analysis. The additional testing and statistical analysis described in the [#]373 patent provides for the identification of components that are "outliers" and would not be identified in traditional test methodologies even though the components are statistically more likely to fail or malfunction.

D.I. 36 at 3-4, 5, 7 (citations omitted).

         Three of the #373 patent's 20 claims are independent: 1, 8, and 15. They read as follows:

1. A test system, comprising:
a tester configured to test a component and generate test data; and a computer connected to the tester and configured to receive the test data, identify an outlier in the test data, and generate an output report including the identified outlier.
8. A data analysis system for semiconductor test data, comprising a computer system, wherein the computer system is ...

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