Fairchild Semiconductor Corporationv.In-Depth Test LLC

Patent Trials and Appeals Board

Aug 3, 2015

10154627 - (D) (P.T.A.B. Aug. 3, 2015)

Trials@uspto.gov Paper 11
Tel: 571-272-7822 Entered: August 3, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

FAIRCHILD SEMICONDUCTOR CORPORATION,
Petitioner,
v.
IN-DEPTH TEST LLC,
Patent Owner.
_______________

Case CBM2015-00060
Patent 6,792,373 B2
_______________

Before LINDA M. GAUDETTE, BARRY L. GROSSMAN, and
PETER P. CHEN, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION
Denying Institution of Covered Business Method Review
37 C.F.R. § 42.208

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I. INTRODUCTION
Fairchild Semiconductor Corporation (“Petitioner”) filed a Petition
(Paper 1, “Pet.”) to institute a covered business method review of claims 1–
20 (“the challenged claims”) of U.S. Patent No. 6,792,373 B2 (Ex. 1001,
“the ’373 patent”). In-Depth Test LLC (“Patent Owner”) filed a Preliminary
Response (Paper 8, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C.
§ 324, and pursuant to 35 U.S.C § 324(a), the Director may not authorize a
covered business method patent review unless the information in the
petition, if unrebutted, “would demonstrate that it is more likely than not that
at least 1 of the claims challenged in the petition is unpatentable.” After
considering the Petition and Preliminary Response, we determine that the
’373 patent is not a covered business method patent. Accordingly, we deny
institution of a covered business method patent review of claims 1–20 of the
’373 patent.
II. BACKGROUND
A. Related Matters
Patent Owner filed suit against Petitioner alleging infringement of the
’373 patent in In-Depth Test LLC v. Fairchild Semiconductor Corp., Case
No. 1-14-cv-01090 (D. Del. Aug. 22, 2014). Paper 5, 1. The ’373 patent is
also the subject of another petition for inter partes review, Linear
Technology Corp. v. In-Depth Test LLC, Case IPR2015-00421 (PTAB
December 11, 2014), in which we denied institution (Paper 15). Paper 5, 2.
B. The ’373 patent (Ex. 1001)
The ’373 patent is titled, “Methods and Apparatus for Semiconductor
Testing,” and relates to a test system that executes an enhanced test process
for testing components, such as semiconductor devices on a wafer, circuit
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boards, packaged devices, or other electrical or optical systems, and
collecting and analyzing test data. Ex. 1001, Abstract, 3:27–30, 5:18–21.
Test system 100 includes tester 102 “compris[ing] any test equipment that
tests components 106 and generates output data relating to
the testing.” Id. at 3:34–36. Tester 102 operates in conjunction with
computer system 108 including processor 110 and memory 112. Id. at 3:42–
43, 59–60.
“[T]est system 100 [] uses a predetermined set of initial parameters
and, if desired, information from the operator to configure the test system
100.” Id. at 5:39–41. When the initial configuration process is complete,
tester 102 “executes [a] test program to apply signals to connections on the
components 106 and read output test data from the components 106.” Id. at
6:22–25. “Each test generates at least one result for at least one of []
components [106].” Id. at 6:32–33.
[T]ester 102 may[, however,] perform multiple tests on each
component 106 on a wafer, and each test may be repeated
several times on the same component 106. Test data from the
tester 102 is stored for quick access and supplemental analysis
as the test data is acquired. The data may also be stored in a
long-term memory for subsequent analysis and use.
Id. at 6:25–31. Exemplary test results may include both results with
statistically similar values as well as results that stray from these similar
values. Id. at 6:33–37. If any of these latter results exceeds an upper or
lower control limit, the tested component may be classified as a “bad part.”
Id. at 6:38–40. The ’373 patent describes results that stray from the
statistically similar values but do not exceed control limits as “outliers.” Id.
at 6:43–45.
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Computer 108 receives the data file from tester 102 and uses a
supplementary data analysis element 206 to analyze the data and provide
enhanced output results Id. at 6:64–66, 9:19–21. Data analysis element 206
includes outlier classification element 212, which is “configured to identify
and/or classify the various outliers in the data according to selected
algorithms.” Id. at 14:7–14. “The outliers in the test results may be
identified and analyzed for any appropriate purpose, such as to identify
potentially unreliable components” (id. at 6:45–48), “[f]or example, . . . to
classify the components 106 into critical/marginal/good part categories” (id.
at 14:59–61). “The outliers may also be used to identify various potential
problems and/or improvements in the test and manufacturing processes.” Id.
at 6:48–50.
C. Representative Claims
Petitioner challenges the patentability of all claims in the ’373 patent,
claims 1, 8, and 15 of which are independent. See Pet. 1. The independent
claims are reproduced below:
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.
Ex. 1001, 19:23–29.
8. A data analysis system for semiconductor test data,
comprising a computer system, wherein the computer system is
configured to operate:
a supplementary data analysis element configured to
identify outliers in the semiconductor test data; and
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an output element configured to generate an output report
including the identified outliers.
Id. at 19:48–20:4.
15. A method for testing semiconductors, comprising:
generating test data for multiple components; and
automatically identifying an outlier in the test data at run
time using a computer system.
Id. at 20:29–32.
D. Asserted Ground of Unpatentability
Petitioner challenges the patentability of the ’373 patent claims based
on patent-ineligible subject matter under 35 U.S.C. § 101. Pet. 27.
III. ANALYSIS
Section 18 of the Leahy-Smith America Invents Act, Pub. L. No. 112-
29, 125 Stat. 284 (2011) (“AIA”), provides for the creation of a transitional
program for reviewing covered business method patents, and limits reviews
to persons or their privies that have been sued or charged with infringement
of a “covered business method patent.” AIA §§ 18(a)(1)(B); see 37 C.F.R.
§ 42.302. Petitioner bears the burden of demonstrating that the ’373 patent
is a covered business method patent. See 37 C.F.R. § 42.304(a). When
determining whether a patent is eligible for covered business method patent
review, the focus is on “what the patent claims.” See Transitional Program
for Covered Business Method Patents—Definitions of Covered Business
Method Patent and Technological Invention; Final Rule, 77 Fed. Reg.
48,734, 48,735–36 (Aug. 14, 2012) (“CBM Rules”). A patent need have
only one claim directed to a covered business method to be eligible for
review. Id.
A “covered business method patent” is “a patent that claims a method
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or corresponding apparatus for performing data processing or other
operations used in the practice, administration, or management of a financial
product or service, except that the term does not include patents for
technological inventions.” AIA § 18(d)(1) (emphasis added); see 37 C.F.R.
§ 42.301(a).
Petitioner asserts the legislative history reflects that the definition of
covered business method patent was drafted to encompass patents claiming
activities that are financial in nature, incidental to a financial activity, or
complementary to a financial activity. Pet. 15. See CBM Rules, at 48,734–
35 (citing 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen.
Schumer)). As the Federal Circuit Court of Appeals recently stated:
We agree with the USPTO that, as a matter of statutory
construction, the definition of “covered business method
patent” is not limited to products and services of only the
financial industry, or to patents owned by or directly
affecting the activities of financial institutions such as banks
and brokerage houses. The plain text of the statutory
definition contained in § 18(d)(1)— “performing . . .
operations used in the practice, administration, or
management of a financial product or service”—on its face
covers a wide range of finance-related activities.

Versata Development Group v. SAP America, Inc., No. 2014-1194,
2015 WL 4113722, at *16 (Fed. Cir. July 9, 2015). Petitioner
contends “[t]he activities claimed in the ’373 patent are incidental to a
financial activity or complementary to a financial activity for at least”
three reasons. Pet. 16.
First, Petitioner argues the systems and methods claimed in
the’373 patent “are used in statistical process control (‘SPC’)
activities, which are inherently part of a manufacturing company’s
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cost-saving (i.e., financial) activities.” Pet. 16–18. According to
Petitioner, the claimed method of identifying outliers reduces
variability and leads to increased product quality and lower repair
costs. Id.
Patent Owner argues that Petitioner’s “reasoning is applicable to any
patent. . . . this same logic can be used to justify any patent as a CBM. . . . all
petitioner really argues is that a semiconductor patent is a CBM because it
can be used to increase the quality of a semiconductor manufacturer’s parts,
but the same can be said of any patent regarding its subject matter.” Prelim.
Resp. 19, 21–22. Patent Owner adds that Petitioner “does not analyze the
claim language to explain how the identification of outliers in semiconductor
testing involves the movement of money or exchange of credit in exchange
for a product, such as the sale of a semiconductor.” Id. at 23 (citing Roxane
Labs., Inc. v. Jazz Pharm., Inc., CBM2014-00161 (PTAB Feb. 9, 2015)
(Paper 16)).
We agree with Patent Owner. Petitioner’s argument that the systems
and methods claimed in the ’373 patent are incidental or complementary to a
financial activity, because they improve product quality and save costs,
unduly expands the intended scope of covered business method review
reflected in the AIA legislative history and the CBM Rules. The ’373 patent
claims recite systems for testing components (claims 1–7) and for analyzing
semiconductor test data (claims 8–14), and methods for testing
semiconductors (claims 15–20). Petitioner does not cite to—and we do not
find—any language in claims 1–20 constituting or otherwise describing
lower repair costs, reduced variability, product quality, or cost saving
activities, let alone any specific financial product or service or finance-
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related activity. Nor does Petitioner cite to—and, again, we do not find—
any language in the specification of the ’373 patent relating to a financial
product or service.
Second, Petitioner argues that “tests on semiconductors are at least
incidental or complementary to financial transactions because
semiconductors are ubiquitous components in the modern financial system,”
(Pet. 18), citing to the Declaration of Brooks Felton (Ex. 1005), an
engineering manager employed by Petitioner. Patent Owner asserts
Petitioner’s argument “looks to potential uses of any product related to a
patent, untethered to the claim language of the patent itself,” and
“contravene[s] the actual wording of the AIA.” Prelim. Resp. 25 (footnote
omitted). We agree with Patent Owner. Petitioner’s position, in essence,
would confer covered business method patent review eligibility on any
patent claiming something used “in the modern financial system.” We are
not persuaded that Petitioner’s position is consistent with the statutory
language, which requires us to focus on the challenged claims rather than
speculate on possible uses of products recited in the claims.
Third, Petitioner theorizes that for claims 1–7, which do not expressly
recite semiconductors, but instead include “such generic claim limitations as
‘component’ and ‘tester,’ those claims might be construed so broadly as to
encompass such activities as liquidity stress testing on banks (as a
component of the financial system) to identify outliers.” Pet. 18–19. We
first note that contrary to Petitioner’s assertion, claim 3 recites “components
on a [semiconductor] wafer.” Second, Patent Owner correctly asserts that
Petitioner’s proposed construction of “component” is belied by the ’373
patent specification, which lacks any mention of the banking industry or
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financial system, but is replete with descriptions of semiconductors and
components used in the semiconductor industry. See, e.g., Ex. 1001, Title,
Abstract, Figs. 5, 10–12, 1:25 (Field of the Invention), 1:28–43 (Background
of the Invention), 2:18–27 (Summary of the Invention); see generally 3:1–
18:65 (Detailed Description of Exemplary Embodiment. In addition, as
Patent Owner notes, Petitioner’s argument would lead to impermissibly
different constructions for the term “component” (Prelim. Resp. 28–32), and
Petitioner acknowledges that claims 8–20 explicitly concern semiconductor
testing. Pet. 5. We agree with Patent Owner that Petitioner has failed to
“rebut the presumption that the same term in different claims has the same
meaning, and, because the claim is directed towards testing a semiconductor
device, it is in no way related to a financial product or service.” Prelim.
Resp. 32; see, e.g., claims 3, 10, 17 (reciting “components on a wafer”); Ex.
1001, 19:34–35, 20:9–11, 20:39–40. Finally, Patent Owner readily
distinguishes the facts of the present case from those of the four PTAB
authorities cited by Petitioner as purported support for the arguments made
in the Petition. Prelim. Resp. 33–38.
In summary, although we agree with Petitioner that the definition of
“covered business method patent” and in particular, “financial product or
service” should be interpreted broadly, the statute requires our focus on what
the challenged patent claims, and the legislative history reflects that focus.
See AIA § 18(d)(1); CBM Rules, 77 Fed. Reg. at 48,735–36; 157 Cong.
Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen. Schumer); 157 Cong.
Rec. S5441 (daily ed. Sept. 8, 2011) (statement of Sen. Leahy) (stating that
the definition is not intended to cover “technologies common in business
environments across sectors and that have no particular relation to the
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financial services sector, such as computers, communications networks, and
business software”).
The focus of our inquiry is on the claims and whether the ’373 patent
claims a method of performing data processing or other operations used in
the practice, administration, or management of a financial product or
service—as the Versata court stated, “finance-related activities.” Versata,
2015 WL 4113722, at *16; see AIA § 18(d)(1); CBM Rules, 77 Fed. Reg. at
48,736. As discussed herein, the challenged claims in the ’373 patent recite
systems and methods of testing components such as semiconductors, without
any reference or connection to financial products or services or finance-
related activities. Thus, similar to findings in other Board decisions, the
’373 patent claims are not financial in nature. See, e.g., Sony Corp. of Am. v.
Network-1 Techs., Inc., Case CBM2015-00078, slip op. at 8–13 (PTAB July
1, 2015) (Paper 7) (“Claim 23 describes a method of remotely powering
access equipment, without any particular connection to financial products or
services.”); Sega of Am., Inc. v. Uniloc USA, Inc., Case CBM2014-00183,
slip op. at 11–13 (PTAB Mar. 10, 2015) (Paper 11) (claims were “directed to
technology that restricts the use of software” where the software had “no
particular relationship to a financial product or service”); Salesforce.com,
Inc. v. Applications in Internet Time LLC, Case CBM2014-00162, slip op. at
9–10 (PTAB Feb. 2, 2015) (Paper 11) (“[T]he claims on their face are
directed to technology common in business environments across sectors with
no particular relationship to the financial services sector.”) (citation and
quotation marks omitted); J.P. Morgan Chase & Co. v. Intellectual Ventures
II LLC, Case CBM2014-00160, slip op. at 6–12 (PTAB Jan. 29, 2015)
(Paper 11) (claims pertaining to secure electronic communications had
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“general utility not limited or specific to any application”); PNC Fin. Servs.
Group, Inc. v. Intellectual Ventures I LLC, Case CBM2014-00032, slip op.
at 6–15 (PTAB May 22, 2014) (Paper 13) (claims described “software
systems that have general utility not specific to any application”).
For the foregoing reasons, based on the present record and particular
facts of this proceeding, we determine that the information presented in the
Petition does not establish that the ’373 patent qualifies as a “covered
business method patent” under § 18(d)(1) of the AIA. Therefore, we do not
institute a covered business method patent review on the asserted ground as
to any of the challenged claims.

IV. CONCLUSION
Upon consideration of the Petition and Patent Owner’s Preliminary
Response, we determine Petitioner has not satisfied the grounds for standing
under 37 C.F.R. § 42.304(a) and, therefore, deny institution of a covered
business method patent review.
V. ORDER

For the reasons given, it is
ORDERED that the Petition is denied, and no trial is instituted.

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PETITIONER:

Daniel Lev
dlev@pierceatwood.com

Robert Stier
rstier@pierceatwood.com

PATENT OWNER:

Joshua Wyde
jwyde@wydelegal.com

Daniel Noblitt
dnoblitt@ngtechlaw.com