United States District Court, D. Delaware
E. Farnan, FARNAN LLP, Wilmington, Delaware; Jonathan T.
Suder (argued), Corby R. Vowell, FRIEDMAN, SUDER & COOKE,
Counsel for Plaintiff
M. Oakes (argued), FISH & RICHARDSON P.C., Wilmington,
Delaware; David M. Barkan, FISH & RICHARDSON P.C.,
Counsel for Defendant Maxim Integrated Products, Inc.
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.
CONNOLLY, UNITED STATES DISTRICT JUDGE
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. 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. 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.
#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).
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
8. A data analysis system for semiconductor test data,
comprising a computer system, wherein the computer system is