U.S. International Trade Commission

Publication 4149 June 2010

Washington, DC 20436

In the Matter of

Investigation No. 337-TA-621

Certain Probe Card Assemblies, 

Components Thereof and Certain Tested 

DRAM and NAND Flash Memory Devices 

and Products Containing Same
U.S. International Trade Commission

COMMISSIONERS 

Shara L. Aranoff, Chairman 

Daniel R. Pearson, Vice Chairman 

Deanna Tanner Okun 

Charlotte R. Lane 

Irving A. Williamson 

Dean A. Pinkert 

Address all communications to 

Secretary to the Commission 

United States International Trade Commission 

Washington, DC 20436
U.S. International Trade Commission

Washington, DC 20436 

www.usitc.gov

Publication 4149 June 2010

In the Matter of

Investigation No. 337-TA-621

Certain Probe Card Assemblies, 

Components Thereof and Certain Tested 

DRAM and NAND Flash Memory Devices 

and Products Containing Same

UNITED STATES INTERNATIONAL TRADE COMMISSION 

Washington, D.C. 20436 

In the Matter of 

CERTAIN PROBE CARD ASSEMBLIES, 

COMPONENTS THEREOF AND CERTAIN 

TESTED DRAM AND NAND FLASH 

MEMORY DEVICES AND PRODUCTS 

CONTAINING SAME 

Investigation No. 337-TA-621 

NOTICE OF COMMISSION FINAL DETERMINATION OF NO VIOLATION OF 

SECTION 337; TERMINATION OF INVESTIGATION 

AGENCY: U.S. International Trade Commission. 

ACTION: Notice. 

S Y: Notice is hereby given that the U.S. International Trade Commission has 

determined that there is no violation of section 337 of the Tariff Act of 1930, as amended (19 

U.S.C. § 1337), in the above-captioned investigation. The Commission has terminated the 

investigation. 

FOR FURTHER INFORMATION CONTACT: Michael Liberman, Esq., Office of the 

General Counsel, U.S. International Trade Commission, 500 E Street, SW, Washington, D.C. 

20436, telephone (202) 205-3116. Copies of non-confidential documents filed in connection 

with this investigation are or will be available for inspection during official business hours (8:45 

a.m. to 5:15 p.m.) in the Office of the Secretary, U.S. International Trade Commission, 500 E 

Street, SW, Washington, D.C. 20436, telephone (202) 205-2000. General information 

concerning the Commission may also be obtained by accessing its Internet server at 

http://www.usitc.gov. The public record for this investigation may be viewed on the 

Commission's electronic docket (EDIS) at http://edis.usitc.gov. Hearing-impaired persons are 

advised that information on this matter can be obtained by contacting the Commission's TDD 

terminal on (202) 205-1810. 

SUPPLEMENTARY INFORMATION: This investigation was instituted on December 19, 

2007, based on a complaint filed by FormFactor, Inc. ("ForrnFactor") of Livermore, California. 

The complaint alleged violations of section 337 of the Tariff Act of 1930 (19 U.S.C. § 1337) in 

the importation into the United States, the sale for importation, and the sale within the United 

States after importation of certain probe card assemblies, components thereof, and certain tested 

DRAM and NAND flash memory devices and products containing same by reason of 

infringement of certain claims of U.S. Patent Nos. 5,994,152 ("the' 152 patent"); 6,509,751 ("the 

'751 patent"); 6,615,485; 6,624,648 ("the '648"patent); 7,168,162 ("the '162 patent"); and 
7,225,538. The complaint named Micronics Japan Co., Ltd.; MJC Electronics Corp.; Phicom 

Corporation; and Phiam Corporation as respondents (collectively, "Respondents"). 

Subsequently, the' 162 patent was terminated from the investigation. 

On December 5,2008, respondents Phicom Corp. and Phiam Corp., (collectively, 

"Phicom") jointly filed a motion for partial summary determination that claims 20 and 34 of the 

'648 patent are invalid as indefinite under 35 U.S.C. § 112. On February 11,2009, the ALJ 

granted the motion in an ID (Order No. 46). The ID determined that claims 20 and 34, and any 

asserted claims depending therefrom, are invalid. Complainant FormFactor filed a petition for 

review of Order No. 46, which Respondents and the Commission investigative attorney "("IA") 

opposed. On March 11, 2009, the Commission determined to review Order N 0.46. 

The evidentiary hearing in this investigation was held from February 24,2009, through 

March 6, 2009. On June 29, 2009, the ALJ issued an Initial Determination on Violation of 

Section 337 and Recommended Determination on Remedy and Bond, finding no violation of 

section 337. All parties to this investigation, including the lA, filed timely petitions for review of 

various portions of the final ID, as well as timely responses to the petitions. 

On September 17, 2009, the Commission determined to review the final ID in part, and 

issued a Notice to that effect. 74 Fed Reg. 47822 (September 17,2009). In the Notice, the 

Commission set a schedule for the filing of written submissions on the issues under review, 

including certain questions posed by the Commission, and on remedy, the public interest, and 

bonding. The parties have briefed, with initial and reply submissions, the issues under review 

and the issues of remedy, the public interest, and bonding. 

On review, the Commission has determined as follows. 

(1) With respect to the '751 patent: 

(a) to reverse the ALl's determination that Japanese Patent Application 

Publication H10-31034 to Arnamiya et al. (RX-166) does not anticipate the 

asserted claims of the '751 patent under 35 U.S.C. § 102; 

(b) to reverse in part the ID's conclusion that, inter alia, Phicom's 

accused products do not infringe claims 1-3, 12,24, and 25 of U.S. Patent No. 

6,509,751, see ID at 197, and, accordingly, to modify the ID's conclusion oflaw 

at issue by substituting the following: "Respondent Micronics' accused products 

do not infringe claims 1-3, 12,24, and 25 of U.S. Patent No. 6,509,751 in 

violation of35 U.S.C. § 271(a). Respondent Phicom's (old) Type B and Type C 

accused products infringe claims 1-3, 12,24, and 25 of U.S. Patent No. 6,509,751 

in violation of35 U.S.C. § 271(a); Phicom's new Type B and Type C accused 

products do not infringe." 

2 
(2) With respect to the' 152 patent: 

(a) to strike the ID's statement "Since three bases for no violation of claim 

21 have been determined, no analysis of the invalidity arguments related to 

anticipation and obviousness of the dependent claims will be made," see ID at 

191, and to take no position with respect to the validity ofthe dependent claims of 

the '152 patent. 

(3) to affirm and adopt the ALJ's other findings contained in the final ID under 

review except insofar as they are inconsistent with the Commission Opinion to be 

issued later. 

The Commission also determined to affirm ALJ Order No. 46 with certain modifications 

as will be detailed in the Commission's Opinion. 

The Commission has determined that there is no violation of section 337 in this 

investigation, and has terminated the investigation. 

The authority for the Commission's determination is contained in section 337 of the 

Tariff Act of 1930, as amended (19 U.S.C. § 1337), and sections 210.41-.42, 210.50 of the 

Commission's Rules of Practice and Procedure (19 CFR § 210.41-.42, 210.50). 

By order of the Commission. 

Marilyn R. Abbott 

Secretary to the Commission 

Issued: November 12,2009 

3 
CERTAIN PROBE CARD ASSEMBLIES, COMPONENTS 

THEREOF AND CERTAIN TESTED DRAM AND NAND 

FLASH MEMORY DEVICES AND PRODUCTS 

CONTAINING SAME 

337-TA-621 

CERTIFICATE OF SERVICE 

I, Marilyn R. Abbott, hereby certify that the attached NOTICE OF COMMISSION 

DETERMINATION OF NO VIOLATION OF SECTION 337; TERMINATION 

OF INVESTIGATION has been served by hand upon the Commission Investigative 

Attorney Benjamin Levi, Esq. and the following parties as indicated, on 

November 12, 2009 

f&:j~bbOtt, tgreWy ~Ct U.S. International Trade Commission 

500 E Street, SW 

Washington, DC 20436 

On Behalf of Complainant FormFactor, Incorporated: 

John R. Fuisz, Esq. 

MCDERMOTT WILL & EMERY LLP 

600 13 th Street, NW 

Washington, DC 20005-3096 

On Behalf of Respondents Phicom Corporation and 

Phiam Corporation: 

Thomas L. Jarvis, Esq. 

FINNENGAN HENDERSON FARABOW 

GARRETT & DUNNER LLP 

901 New York Avenue, NW 

Washington, DC 20001-4413 

On Behalf of Respondents Micronics Japan Co., Ltd and 

MJC Electronics Corporation: 

Jeffrey R. Whieldon, Esq. 

FISH & RICHARDSON P.C. 

1425 K Street, NW, 11th Floor 

Washington, DC 20005 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

(YJ Via First Class Mail 

( ) Other: ___ _ 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

()9 Via First Class Mail 

( ) Other: __ _ 

( ) Via Hand Delivery 

( ) Via Overnight Mail N Via First Class Mail 

( ) Other: ___ _ 
PUBLIC VERSION 

UNITED STATES INTERNATIONAL TRADE COMMISSION 

WASHINGTON, D.C. 

In the Matter of 

CERTAIN PROBE CARD ASSEMBLIES, 

COMPONENTS THEREOF AND CERTAIN 

TESTED DRAM AND NAND FLASH 

MEMORY DEVICES AND PRODUCTS 

CONTAINING SAME 

Investigation No. 337-TA-621 

COMMISSION OPINION 

On November 12,2009, the Commission issued notice ofits final determination of no 

violation of section 337 of the Tariff Act of 1930 (19 U.S.c. § 1337) ("section 337") and 

termination of this investigation. This opinion sets forth the reasons for the Commission's 

determination on the issues it previously determined to review. 

I. BACKGROUND AND PROCEDURAL HISTORY 

On December 19,2007, the Commission instituted an investigation under section 337, 

based on a complaint filed by FormFactor, Inc. ("FormFactor") of Livermore, California, alleging 

a violation of section 337 in the importation, sale for importation, and sale within the United 

States after importation of certain probe card assemblies, components thereof and certain tested 

infringement of, inter alia, one or more of claims 1,3,4, 18, 19,23,24,29,32,33,36,37, and 

41 of U.S. Patent No. 6,615,485 ("the '485 patent"); claims 1-3,12,24, and 25 of U.S. Patent 

No. 6,509,751 ("the '751 patent"); claim 19 of U.S. Patent No. 7,225,538 ("the '538 patent"); 
PUBLIC VERSION 

claims 21-23, 27-30, and 33-35 of U.S. Patent No. 5,994,152 patent ("the '152 patent"); claims 

1-15, 18-22,34, and 36 of U.S. Patent No. 6,624,648 ("the '648 patent"), and claims 1-4, 13, and 

14 of U.S. Patent No. 7,168,162 ("the '162 patent"). 72 Fed. Reg. 71,954 (December 19, 

2007). Complainant named Micronics Japan Co., Ltd. of Japan and MJC Electronics Corp. of 

Austin, Texas (together, "Micronics" or "MJC"Y, and Phicom Corp. of Seoul, Korea, and Phiam 

Corp. of San Jose, California, a subsidiary of Phicom Corp. (together, "Phicom") (collectively, 

"respondents") as respondents in this investigation. Id. The complainant also alleged a domestic 

industry in regard to each asserted patent. Id. 

The technology at issue in this investigation relates to probe cards. In general, a "probe 

card" is an assembly of components used together to test integrated circuits. The probe cards at 

issue in this investigation are used to test semiconductor chips while such chips are still part of 

the silicon wafer on which they were fabricated. Such probe cards provide an interface "between 

the expensive durable testing equipment of the semiconductor industry and the ever evolving 

variety of integrated circuit designed on silicon wafers." ID at 1 0. 

The patents involved in the subject investigation cover various aspects of designing, 

manufacturing, and using probe cards. More specifically, the '648 patent discloses a probe card 

assembly for testing semiconductor devices. The claimed probe card assembly includes certain 

mechanisms that alter the orientation of the probe substrate with respect to the probe card and 

allows it to the components of the probe card assembly in electrical contact, including 

during and after the probe card mechanism makes adjustments to the orientation of the probe 

1 MJC Electronics Corp. is a wholly-owned U.S. subsidiary of Micronics Japan Co., 

Ltd. 

2 
PUBLIC VERSION 

substrate relative to the probe card. (CX-0004). 

The '485 patent claims a method for producing tested semiconductor devices that requires 

the use of a probe card assembly with certain features. Specifically, this invention teaches a 

method of producing a tested semiconductor device by adjusting the planarity of the probe 

substrate without altering the orientation of the probe card and ensuring that the electrical 

connections are maintained between the probe card and the probe substrate. (CX-0003). 

The '751 patent claims a probe card assembly that incorporates a substrate with a surface 

having a number of contact elements and a planarizing element. The planarizing element 

transmits a force to the central region relative to the peripheral regions and modifies the shape of 

the surface of the substrate in order to planarize the surface. (CX-0002). 

The' 538 patent claims a method for fabricating contact structures which are used to 

make pressure connections to an electrical device. The patent discloses a method for forming a 

contact assembly by making resilient contact structures on a sacrificial substrate, destroying that 

sacrificial substrate, and gang-transferring the resilient contact structures for attachment to a 

probe card. (CX-0006). 

The asserted claims of the' 152 patent are directed to a method of fabricating cantilever 

elements. This method uses a release material, so that the cantilever elements can be removed 

from the support substrate. (CX-0001). 

On December 5, 2008, respondent Phi com filed a motion for summary determination that 

the '648 patent is invalid. Phicom argued that claims 20 and 34 of the '648 patent are invalid as 

indefinite under 35 U.S.C. § 112. The ALl issued an ID (Order No. 46) on February 11,2009, 

granting summary determination that, inter alia, claims 20 and 34 are invalid as indefinite, and 

3 
PUBLIC VERSION 

"that there shall be no further submission of evidence, argument, briefing, or any materials made 

to the [ALJ] at the [then-] upcoming evidentiary hearing.,,2 Complainant FormFactor petitioned 

for review of Order No. 46, and respondents and the Commission investigative attorney ("IA") 

opposed. The Commission issued a notice of decision to review Order No. 46 on March 11, 

2009. In its notice issued on November 12,2009, the Commission determined to affirm Order 

No. 46 with modifications that are detailed infra in this Opinion. 

On June 29, 2009, the ALJ issued his final ID finding no violation of section 337 and his 

recommendation determination (RD) on remedy and bonding during the period of Presidential 

review should the Commission determine that there has been a violation. On September 17, 

2009, the Commission determined to review the final ID in part, and issued a notice ("the 

Commission Notice"), in which the Commission specified the issues under review and the 

questions pertaining to such issues. 74 Fed. Reg. 47822 (September 17,2009). In particular, the 

Commission determined to review: 

(1) the ID's finding that Japanese Patent Application Publication HI 0-31 034 to Amamiya 

et al. ("Amamiya" or RX -166) does not anticipate the asserted claims of the '751 patent under 

35 U.S.C. § 102; 

(2) the ID's conclusion oflaw regarding non-infringement of the '751 patent by Phicom's 

accused products; 

2 Order No. 46 states that "Phicom's motion [] for summary determination that the '648 

patent is invalid is [] granted." The Commission understands Order No. 46 to have determined 

that asserted claims 20 and 34, and any asserted claims depending therefrom, are invalid as 

indefinite. 

4 
PUBLIC VERSION 

from claim 21 of the '152 patent is needed. 

The Commission determined not to review the remainder of the final ID. Id. at 47822. 

On review, the Commission requested briefing on the above-listed issues with reference 

to the applicable law and the evidentiary record, and responses by the parties to certain questions 

pertaining to the issues under review. The Commission also requested briefing on the issues of 

remedy, the public interest, and bonding, should they become relevant, from the parties as well as 

from interested non-parties. 

In accordance with the Commission Notice, all parties to this investigation filed timely 

written submissions regarding the issues under review and timely reply submissions. No 

submissions were received from interested non-parties. 

II. STANDARD OF REVIEW 

Commission review of an ID is limited to the issues set forth in the notice of review and 

all subsidiary issues therein. Certain Bar Clamps, Bar Clamp Pads, and Related Packaging 

Display and Other Materials, Inv. No. 337-TA-429, Commission Opinion at 3 (February 13, 

2001). Once the Commission determines to review an initial determination, its review is 

conducted under a de novo standard. Certain Polyethylene Terephthalate Yarn and Products 

Containing Same, Inv. No. 337-TA-457, Commission Opinion at 9 (June 18,2002). Upon 

review the "Commission has' all the powers which it would have in making the initial 

..... ,« ••• w.ww .•. delermi!lS!timl •. :.,~~f,~1?t.XYh~r~Jh~t§2ll~,§.~E~Jil!1i!ed ()n .notice or by rule." Certain Flash Memory "_ •. ",,""" """·""·r·.·.·.·r·C·r·Crrrr'r'rrrr·C·r.r.r._,,'r:r:r:r:r.r.r.r.r.;.r.r.r.r.~,.i.,_.,"_.,.i.<.'_.,.,_._.,_.c.,_","·C'_'''_·'·_·'·r'_'r·''r·'~"r''r'''';rr'''r'rrrr.r''.',_,r,r,r,r'>.r,r,r.;.r.>.'.r.;.",.,.,.,.,.o.,.,."."".-;.>o"".".'._""". rr 

Circuits and Products Containing Same, Inv. No. 337-TA-382, Commission Opinion on the 

Issues Under Review and on Remedy, the Public Interest, and Bonding at 9-10 (June 2, 1997), 

USITC Pub. 3046 (July 1997) (quoting Certain Acid-Washed Denim Garments and Accessories, 

5 
PUBLIC VERSION 

Inv. No. 337-TA-324, Commission Opinion at 5 (Nov. 1992)). 

On review, "the Commission may affirm, reverse, modify, set aside or remand for further 

proceedings, in whole or in part, the initial determination of the administrative law judge. The 

Commission may also make any findings or conclusions that in its judgment are proper based on 

the record in the proceeding." 19 C.F.R. § 210.45(c). 

III. DISCUSSION 

A. Issues Under Review 

1. The '751 Patent 

(a) The ID's finding that Amamiya does not anticipate the asserted claims of the '751 

patent under 35 U.S.C. § 102. 

We reverse the ALl's determination that Amamiya does not anticipate the asserted claims 

of the '751 patent under 35 U.S.C. § 102 and find that the lA, Phicom, and Micronics have 

shown by clear and convincing evidence that Amamiya anticipates the asserted claims of the 

'751 patent. In particular, we agree with the position taken by the IA and respondents (discussed 

in detail in the respective submissions filed by the parties)3 that Amamiya discloses each and 

every limitation ofthe asserted claims of the '751 patent, including the one that FormFactor 

identified in its submission as disputed ("planarizing element"), see FF Submission at 6. 

We disagree with FormFactor's argument that: (1) board 2 in Amamiya's device "cannot 

',···,················,···,·,·,,·,,··,· .. ·,..":J. .. ·S'ee;'·e:'g~';·TK'SSubrnis'st{)n··at't(};Aid:···citing·FormFactor('5'·:fttlY'·2·1,'·2e09;Re~ponse'tQ·'.· 

OUll's Petition for Review; id. citing RX-690C at Q.122 et seq; lA's Submission at 12 citing 

RX-166; id. citing RX-690C at Q.125, Q.133, and Q.138; id. citing Adler, Tr. 2209-10, 2216-17; 

id. citing RX-166 at, 0011, , 0013; Figures 1 and 2, lA's Submission at 13 citing (RX-166, 

Figure 1), id. citing Adler, Tr. 2209-10,2216-17; id. citing RX-690C at Q.125 - Q.127, Q.132, 

Q.133, and Q.136 - Q.138. See also Micronics' Submission at 18-19; Phicom's Submission at 7-

10. 

6 
PUBLIC VERSION 

achieve deformation;" and (2) Amamiya's center screw 4 "cannot be deemed ... capable of 

transmitting a force to the central region." FF Submission at 5, 9. With respect to the first 

argument, we agree with the lA and respondents that the record evidence supports the conclusion 

that both boards will deflect, to varying degrees. See, e.g., Phicom's Reply at 12 citing RX-382 

at Q/A 529; RDX-239 at 1; Adler Tr., 2209:8-20, 2215:8-2217:22; RX-690C at Q/A 123, 

125-128, 133; RDX-67 at 1. Even if board 2 deflects less for a given force, the adjustment of a 

screw must deform the board 2 to some extent, so that the probe tips on the board can be 

planarized. See Phicom's Reply at 12. We agree with the lA that the premise of FormFactor's 

argument, i. e., that the forces caused by turning screws 3 and/or 4 would not necessarily result in 

deformation, is contrary to the laws of physics and to the disclosure of Amamiya. See lA's Reply 

at 4; Micronics Reply at 10; RX-166,-r,-r 0012-0013. 

Moreover, FormFactor's main argument that Amamiya's interconnect board 2 "cannot 

achieve deformation" improperly reduces Amamiya to only one exemplary embodiment, whereas 

Amamiya discloses that its invention can be applied to a variety of probe card assemblies, made 

of different materials, sizes, and thicknesses, and nothing in Amamiya requires board 2 to be 

thicker than board 5. Such argument is incorrect as a matter of law because a prior art reference 

is not limited to its disclosed embodiments. See Ultradent Products, Inc. v. Life-Like Cosmetics, 

Inc., 127 F.3d 1065, 1068 (Fed. Cir. 1997); In re Schreiber, 128 F.3d 1473, 1479 (Fed. Cir. 

Furthermore, FormFactor's assertion that Amamiya's center screw 4 "can not be deemed . 

. . capable of transmitting a force to the central region" is also unavailing because, as the lA and 

respondents correctly point out, the center screw 4 cannot achieve parallelness adjustment unless 

7 
PUBLIC VERSION 

it exerts a force, and a user cannot adjust this screw, while planarizing the virtual surface defined 

by the test pin tip portions, without both applying a force and deforming the substrate to achieve 

movement of at least a few microns. See, e.g., RX-166, ~ 13. Express provisions in Amamyia 

support such a conclusion. Paragraph 12 provides, inter alia, that "the adjusting screws 3 in the 

four comers were extended such that the virtual plane formed by the plurality of test pin tip 

portions was visually approximately parallel to the reference [plane]." RX-166, ~ 12 at 6. 

Amamyia next teaches that "[fJurther precise adjustment of parallel ness was performed .... " 

RX-166, ~ 13 at 6. According to Amamyia, such further precise adjustment is performed in two 

steps. The first step includes "turning each adjustment screw 3 with a hexagonal Allen wrench 

such that the tip portions of each test tip are in focus at the same height." RX-166, ~ 13 at 6. The 

second step involves "further tightening of the central affixing screw 4 .... " After these two 

steps, "the parallelness [is] measured using the optical microscope .... " Therefore, Amamyia 

expressly teaches that "further tightening" is necessary for an adjustment of parallelness. This 

teaching necessarily precludes FormFactor's contention that Amamiya's center screw 4 "can not 

be deemed ... capable of transmitting a force to the central region" because without transmitting 

a force to the central region "further tightening of the central affixing screw 4" expressly 

disclosed by Amamyia would be impossible. Therefore, we reject FormFactor's argument as 

contradicting the express disclosure in Amamyia. Our conclusion is consistent with the positions 

4 Micronics, e.g., argues that Amamiya discloses every limitation of the asserted claims 

of the '751 patent. It specifically submits that the disputed third limitation of claim 1, namely, 

"at least one planarizing element capable of transmitting a force to the central region of said 

substrate to modify a shape of the first surface at said central region relative to a shape of said 

8 
PUBLIC VERSION 

the center screw 4 is necessarily capable of applying a force, as also required by the asserted 

claims of the '751 patent. See RX-382 at Q/A 529; RDX-239 at 1; Adler Tr., 2209:8-20, 

2215:8-2217:22; RX-690C at Q/A 123, 125-128, 133; RDX-67 at 1. 

Furthermore, we agree with the IA and respondents that Amamiya inherently anticipates 

the asserted claims of the' 751 patent. 5 A patent is invalid as anticipated if a prior art reference 

first surface at each peripheral region, whereby, the first surface can be made planar," is 

disclosed by Amamiya' s central screw 4 and its operation described in paragraph 13. See 

Micronics' Reply at 5 citing RX-690C at Q/A 120-126; RX-543; RDX-47; Amamiya at Fig.1 

and 2, 8, 10, 13. Micronics explains that, in Amamiya, central screw 4 is held with a "spring 

washer" to the backside of board 5, and the elements of the disclosed apparatus work together 

as follows: 

(a) tightening central screw 4 causes central screw 4 to thread into substrate 2, and 

compresses the "spring washer" an increased amount, which causes the substrate 2 to move 

towards the board 5, decreasing the distance between substrate 2 and board 5 and bending the 

substrate at the middle as compared to the periphery; 

(b) loosening central screw 4 causes the central screw 4 to unthread from substrate 2, 

and decompresses the spring washer, resulting in a smaller spring force, and causing the center 

of substrate 2 to move away from the board 5, increasing the distance between substrate 2 and 

board 5 and lessening the bend at the middle of the substrate 2 as compared to the periphery; 

(c) because the forces of the central screw 4 and "regulating" screws 3 are opposite, 

and the goal is "parallelism" (planarization), the substrate 2 must bend when the central screw 

4 is adjusted. See Micronics' Submission at 6. Micronics compares the structures and 

operation of the apparatuses disclosed in the '751 patent and Amamiya, and concludes that they 

are identical and that, therefore, Amamiya anticipates the asserted claims of the '751 patent. 

See Micronics' Reply at 6-9. 

Micronics further argues that the parallelism that is measured is the planarity of the 

probe tips located on the measuring terminals, Amamiya at '5, and because the probe tips are 

measured for planarity during the adjustment of the screws, it is essential that substrate 2 is 

deformed by adjustment of the screws - otherwise, parallelism (planarity) of the probe tips 

would not be affected. See Amamiya at' 15 ("the parallelism between the plane of the subject 

""""'",'',''' ····'torre'measnredandthevirtual·,plane'{ofmedby,the··'tips ··of·measur'ingtefminals,can,4~0""''''''·.· 

regulated easily within a short time and with a high accuracy. "); id. See also Phicom's Reply 

at 14. 

5 See, e.g., lA's Submission at 14 citing RX-166 at ~ 0011, ~ 0013 and at Figures 1 and 2; 

id. citingRX-690C at Q.123, Q.125 - 127, Q.132, Q.133, Q.136 - 139; id. Adler, Tr. 2209-10, 

2216-17. See also Micronics' Submission at 18-19; Phicom's Submission at 7-10. 

9 
PUBLIC VERSION 

discloses, either explicitly or inherently, every limitation ofthe claimed invention. 

Liebel-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1381 (Fed. Cir. 2007) (citing Telemac 

Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1327 (Fed. Cir. 2001». We agree with 

Micronics that it does not matter whether Amamiya explicitly describes bending the probe 

substrate because Amamiya discloses structures that are capable of bending the probe substrate 

and discloses use of those structures in a manner that actually bends the probe substrate when 

central screw 4 is turned. See Micronics' Reply at 14 citing Schering Corp. v. Geneva 

Pharmaceuticals, 339 F.3d 1373, 1377 (Fed. Cir. 2003) (citations omitted). 

As for FormFactor's argument that Amamiya does not disclose the "free standing spring 

elements" recited in claim 3 of the' 751 patent and the "space transformer" recited in claim 25 of 

the '751 patent, we agree with the IA and respondents that, by not raising these arguments until 

this stage of the investigation, FormFactor waived this argument as a matter oflaw. See, e.g., 

Hazani v. us. International Trade Comm 'n, 126 F.3d 1473,1479 (Fed. Cir. 1997) (finding 

argument not raised before the ALJ waived). As the IA points out, FormFactor argued that only 

the "control member" and "planarizing element" limitations were missing from Amamiya in its 

post hearing briefs, and in its response to lA's petition for review. See lA's Reply at 3 citing 

FormFactor's June 1,2009, Revised Opening Post-hearing Brief at 50-57; FormFactor's June 1, 

2009, Revised Post-hearing Reply Brief at 27-30; and FormFactor's July 21, 2009, Response to 

Pre-Trial Brief at 306-309; FormFactor's Post Hearing Brief at 52-57; FormFactor's Post 

10 
PUBLIC VERSION 

Hearing Reply Brief at 23-25; ALJ Order No. 18 at 12. 6 

Based on the foregoing, we determine that the IA and respondents have demonstrated 

clearly and convincingly that Amamiya anticipates the asserted claims of the '751 patent. 

FormFactor failed to adequately address and rebut the arguments of the lA, Phicom, and 

Micronics on this issue. Accordingly, we reverse the ALJ's determination that Amamiya does 

not anticipate the asserted claims ofthe '751 patent under 35 U.S.C. § 102. 

(b) The ID's conclusion oflaw regarding non-infringement of the '751 patent by 

Phicom's accused products. 

We modify the ID's conclusion oflaw that Phicom's and Micronics' products do not 

infringe the '751 patent for the following reasons. 

The ID found that Phicom's (old) Type B and Type C MEMS Cards infringe the asserted 

claims of the '751 patent. ID at 101. In particular, the ID stated: 

Phicom does not contest that its Type Band C MEMS Cards fall 

within the undersigned's claim construction for the asserted claims 

of the '751 patent.7 Thus, it is undisputed that Phicom's Type B 

and C MEMS Cards infringe the asserted claims of the '751 patent. 

6 Moreover, we find that Micronics and Phicom have demonstrated that, with respect to 

this issue, FormFactor's position on the merits is not supported by the record evidence either. 

See Micronics' Reply at 13 citing RX-690C at QIA 38,74,87; Khandros Tr. at 

242:19-244-14; Amamiya at ~ 14; RFF V.D.2.27-32; RX-690C at QIA 129; RX-543; 

Amamiya at Fig. 1, ~ 7, 

~ 10; Micronics Reply at 13 citing RFF V.D.2.34-35; RX-690C at QIA 130; RDX-48; 

RX-543; Amamiya at Figs. 1 and 2. See also Phicom's Reply at 15; RX-166, , 11, RX-166, 

"""''''''''''''',wA''''Abstract;'''''''14;'''R*~9ee«at'''Q/ .. A'·l(}: .. "" .. " ... " .. ,,, .... --........ "'.dw .. < .. w ""'""",,",,",,,,'"'''P .. MM' .. ''''''''' ""'''''''''''''''''''''''''' .. ,<w .."",, """""."",,'''''''''''''''''''''''''''''''''''''''''''''''''''''''''', " ...... "w ....... '. 

7 ID at 101 citing RRB 23; CIB 38-39. The ID also found that Phicom's (old) Type B 

probe card assemblies are obsolete and no longer manufactured, ID at 101 n. 378 citing Taber 

Tr. 1458:22-1459:5, and that Phicom's (old) Type C probe card assemblies illustrated in 

RX-102C, without a fixed center bolt, are obsolete and no longer manufactured, ID at 101 n. 

378 citing Taber Tr. 1458:22-1459:5. 

11 
PUBLIC VERSION 

ID at 101. Thus, the ID's conclusion oflaw that "Respondents Micronics' and Phicom's accused 

products do not infringe claims 1-3, 12,24, and 25 of U.S. Patent No. 6,509,751 in violation of 

35 U.S.C. § 271(a)," ID at 197, is unsupported by its own findings with respect to Phicom's (old) 

Type B and Type C Probe Cards. 

As for Phicom's new design Type B and Type C MEMS Cards, the ALJ determined that 

FormFactor failed to prove, by a preponderance of the evidence, that Phicom's [new design] 

MEMS Cards meet each and every limitation of claim 1 of the '751 patent. 8 The ALJ 

specifically based this determination on his finding that FormFactor has failed to show that the 

fixed center bolt in Phicom's [new design] MEMS Cards meets the "planarizing element" 

limitation of claim 1 because there is no evidence that the bolt is capable of applying any force 

that achieves (or is capable of achieving) a desired deformation of the MPH substrate. ID at 106 

(citations omitted). The ALJ also considered the testimony of Phi com's expert witness Mr. 

Taber to the effect that the fixed center bolt in Phicom' s new probe card design assemblies is not 

used for planarization and is not capable of applying a force to, or changing the shape of, the 

8 The ALJ considered Phicom's representation that its redesigned MEMS Cards have a 

"fixed center bolt that keeps the Phi com PCB and MPH at a fixed relative position, so that the 

distance between the PCB and the MPH cannot be modified at the location ofthe bolt." (All of 

Phicom's MEMS Cards contain, inter alia, a printed circuit board, or "PCB," and a probe 

substrate called a Micro Probe Head, or "MPH," see ID at 12.) The ALJ also took into 

consideration that, according to Phicom, all its Type C MEMS Cards manufactured since 

,................... ····l:)ecembet·W08··tlsea·fixed·center·bolt;1tud;·fitherthanthen*ee·<Ctlnt.er«oolt,Phicom?s.reciesigned ., ···.AW •••.. .. 

MEMS Cards sold since December 2008 are the same as Phicom's previous Type C probe card 

assemblies. The ALJ further relied on Phicom's submission that the "fixed center bolt" is locked 

in place between the MPH substrate and the PCB and that it has a "single designed length," 

which cannot be moved or adjusted to change length or to "transmit a force to modify a surface 

shape" of the MPH substrate, thus preventing deformation at the center of the MPH. ID at 104-

1 05 (citations omitted). 

12 
PUBLIC VERSION 

MPH substrate. ID at 106-107 (citations omitted). 

We find that, with respect to Phicom's redesigned Type B and Type C cards, the ID's 

conclusion of no infringement is supported by its findings and should not be disturbed. The 

arguments on this issue advanced by FormFactor and Phicom are not supported by the record 

evidence.9 

Accordingly, we determine to modify the ID's conclusion oflaw at issue to reflect the 

fact that Phicom's (old) Type Band C MEMS Cards infringe the '751 patent. This decision, 

however, will not change the ID's conclusion that there is no violation of section 337 in this 

investigation in light of our determination, explained earlier, that the Amamiya reference 

anticipates the' 751 patent. 

Therefore, we reverse the ID's conclusion of law that Phicom's accused products do not 

infringe claims 1-3, 12,24, and 25 of U.S. Patent No. 6,509,751, and we determine to modify the 

ID's conclusion oflaw No.4 on page 197 of the ID by substituting the following: 

Respondent Micronics' accused products do not infringe claims 1-

3, 12,24, and 25 of U.S. Patent No. 6,509,751 in violation of35 

U.S.C. § 271(a). Respondent Phicom's (old) Type B and Type C 

accused products infringe claims 1-3, 12,24, and 25 of U.S. Patent 

No. 6,509,751 in violation of35 U.S.C. § 271(a); Phicom's new 

design Type B and Type C accused products do not infringe claims 

1-3, 12,24, and 25 of U.S. Patent No. 6,509,751 in violation of35 

U.S.C. § 271(a). 

'"w""," ......................••.. 9,FormFaetortakesthepositiofHhat.·tne.II)'.s'conclusi{}n.oj;:.{}(}infringementis,noL,«w ... " ..... 

supported by its own findings with respect to both (old) Type B and Type C Probe Cards, and 

Phicom's redesigned Type B and Type C cards. FF Submission at 2. Phi com argues that the 

ID's conclusions regarding no infringement are supported by its findings and that some ID 

findings to the contrary are "not supported by any citation to the record." Moreover, Phicom 

argues that the ID has not "set forth specific findings showing that FormFactor has met its 

burden, with evidentiary proof of record." Phi com ' s Submission at 11. 

13 
PUBLIC VERSION 

2. The '152 Patent 

(a) The ID's conclusion that no analysis of the validity ofthe asserted claims that depend 

from claim 21 of the '152 patent is needed. 

We determine to modifY the ID's statement that no analysis is needed regarding invalidity 

arguments related to anticipation and obviousness of the asserted claims that depend from claim 

21 of the' 152 patent. The ID apparently based this conclusion in part on its determination that 

the Kubena reference anticipates independent claim 21. ID at 191. Such reliance is incorrect as 

a matter of law. Federal Circuit law "requires that 'each claim of a patent (whether in 

independent, dependent, or multiple dependent form) shall be presumed valid independently of 

the validity of other claims; [and] dependent or multiple dependent claims shall be presumed 

valid even though dependent upon an invalid claim. '" Dayco Products, Inc. v. Total 

Containment, Inc., 329 F.3d 1358, 1370 (Fed.Cir. 2003) citing 35 U.S.C. § 282 (2000). See 

Sandt Tech., Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344, 1356 (Fed. Cir. 2001) 

("Because dependent claims contain additional limitations, they cannot be presumed to be 

invalid as obvious just because the independent claims from which they depend have been 

properly so found."); Wahpeton Canvas Co., Inc. v. Frontier, Inc., 870 F.2d 1546, 1553 n. 10 

(Fed. Cir. 1989) ("If validity were in issue, dependent claims might serve a useful role, for a 

necessarily narrower dependent claim may be valid when the claim from which it depends is 

not.") 

at 191. We further determine to take no position with respect to the validity of claims 22, 23, 

28-30, and 33-35 that depend from claim 21 of the '152 patent. See Beloit Corp. v. Valmet Oy, 

14 
PUBLIC VERSION 

742 F.2d 1421, 1423 (Fed. Cir. 1984) (the Commission need not rule on every nondispositive 

issue). 

3. The '648 Patent 

(a) ALJ Order No. 46 

The ALJ issued Order No. 46 granting respondent Phicom's motion for summary 

determination that claims 20 and 34 of the '648 patent are invalid as indefinite under 35 U.S.C. § 

112. Specifically, Phicom argued that summary determination was appropriate in light of the 

ALJ's claim construction order (Order No. 37), which concluded that the limitations "probe card 

means for providing electrical contacts to a tester" in claim 20 and "probe card means for 

providing an interface to a semiconductor tester" in claim 34 were indefinite. 

Order No. 46 relates to claims drafted in "means plus function" format under 35 U.S.C. § 

112, ~ 6.10 When a claim uses the term "means" to describe a limitation, a presumption arises 

that the inventor used the term to invoke the means-plus function format authorized by 35 

U.S.c. § 112, ~ 6. Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed. Cir. 2003). "This 

presumption can be rebutted when the claim, in addition to the functional language, recites 

structure sufficient to perform the claimed function in its entirety." Id. Once a court concludes 

10 The relevant portion of section 112 provides: 

An element in a claim for a combination may be expressed as a 

means or step for performing a specified function without the ·••••••••·•••••• •••••••••••••• · ••• ««<aaa<<<.<<,.... •••••• reClta:loTstructure:"maieriar;'oi'aetslnsuppornnereof;and'snen .......... ....... <. 

claim shall be construed to cover the corresponding structure, 

material, or acts described in the specification and equivalents 

thereof. 

35 U.S.C. § 112, '6. 

15 
PUBLIC VERSION 

that a claim limitation is a means-plus-function limitation, two steps of claim construction 

remain: (1) the court must first identify the function of the limitation; and (2) the court must then 

look to the specification and identify the corresponding structure for that function. Biomedino 

LLC v. Waters Technologies Corp., 490 F.3d 946,950 (Fed. Cir. 2007). If there is no structure in 

the specification corresponding to the means-plus-function limitation, the claim will be found 

invalid as indefinite. Interpretation of what is disclosed in the specification must be made in 

light ofthe knowledge of one skilled in the art. Atmel Corp. v. Info. Storage Devices, Inc., 198 

F.3d 1374, 1380 (Fed. Cir. 1999). 

Having reviewed the transcripts of the ALJ's evidentiary hearing on claim construction, 

as well as the parties' submissions on claim construction, we have concluded that FormFactor's 

argument that the patent specification provides a definition of "tester" lacks merit. As noted by 

respondents, the portion cited by FormFactor appears in the "Background of the Invention" and is 

therefore not discussed as part of the invention; was not raised at the hearing on claim 

construction; and - most importantly - provides no clear definition of "tester." 

FormFactor argued that the unnumbered pad in Figure 7, which connects to cable 704, 

provides the contacts from the probe card to the tester. Respondents disagreed with FormFactor 

and, in their turn, argued that Figure 7 related to alignment, and not to semiconductor testing. 

Claim Constr. Hear. Tr. at 19-20; '648 Patent, 30:42-45. Respondents argued that while the 

asserted claims are directed to semiconductor testing, aligning of the device is quite different 

from such testing. Claim Constr. Hear. Tr. at 20-21. We agree with respondents' argument that 

Figure 7 does not concern semiconductor testing, and therefore does not provide corresponding 

structure to the limitations at issue. 

16 
PUBLIC VERSION 

Accordingly, we find that FormFactor did not present any valid support for reversing the 

ALl's conclusion that there is no structure disclosed to provide an interface to a semiconductor 

tester, and that the claims are therefore invalid for failing to meet the requirements of35 U.S.C. § 

112 ~ 6. We affirm the ALl's grant of partial summary determination in Order No. 46 with the 

following modification. 

The Commission notes, and hereby corrects, the misstatement of the relevant limitation in 

claim 20 made in Order No. 46. The relevant limitation in claim 20 is "probe card means for 

providing electrical contacts to a tester," rather than "probe card means for providing an interface 

to a semiconductor tester," as stated in Order No. 46. The Commission further notes, however, 

that the parties agreed that the scope of the two limitations is identical, and both should be 

construed as "providing an interface to a semiconductor tester." Finally, the Commission adds to 

Order No. 46 that the parties' agreement on the construction of the claim limitations at issue (i.e., 

the limitations "probe card means for providing electrical contacts to a tester" in claim 20 and 

"probe card means for providing an interface to a semiconductor tester" in claim 34) forecloses 

the possibility that Figure 7, which does not concern semiconductor testing, discloses the 

structure corresponding to either means-plus-function limitation at issue. 

17 
PUBLIC VERSION 

B. Conclusion on Violation 

We affirmed the ID's ultimate conclusion of no violation in this investigation. Accordingly, 

we determine that no remedy, i. e., no exclusion order or cease and desist order will issue in this 

investigation. 

By order of the Commission. 

Marilyn R. Abbott 

Secretary to the Commission 

Issued: December 10, 2009 

18 
CERTAIN PROBE CARD ASSEMBLIES, COMPONENTS 

THEREOF AND CERTAIN TESTED DRAM AND NAND 

FLASH MEMORY DEVICES AND PRODUCTS 

CONTAINING SAME 

337-TA-621 

CERTIFICATE OF SERVICE 

I, Marilyn R. Abbott, hereby certify that the attached COMMISSION OPINION has 

been served by hand upon the Commission Investigative Attorney Benjamin Levi, Esq. and 

the following parties as indicated, on December 10,2009. 

Marilyn R. bbo, Secretary 

U.S. International Trade Commission 

500 E Street, SW 

Washington, DC 20436 

On Behalf of Complainant FormFactor, Incorporated: 

John R. Fuisz, Esq. 

MCDERMOTT WILL & EMERY LLP 

600 13th Street, NW 

Washington, DC 20005-3096 

On Behalf of Respondents Phicom Corporation and 

Phiam Corporation: 

Thomas L. Jarvis, Esq. 

FINNENGAN HENDERSON FARABOW 

GARRETT & DUNNER LLP 

901 New York A venue, NW 

Washington, DC 20001-4413 

On Behalf of Respondents Micronics Japan Co., Ltd and 

MJC Electronics Corporation: 

( ) Via Hand Delivery (1 Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: ___ _ 

( ) Via Hand Delivery 

(:0 Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: __ _ 

""""'""""""",,,,,",","""""",wJeffre,y R~,:whieldQn,,",E.sl1,"", "".,"",', 0"<<< ( ) Via Hand Delivery FISH & RICHARDSON P.C. . 'Mc~M~"'<"<w""""»"'''"''r~Vla5vem{g'1;:rMalr"''"'""'""'" 

1425 K Street, NW, 11 th Floor ( ) Via First Class Mail 

Washington, DC 20005 ( ) Other: ___ _ 
Page 2 - Certificate of Service 

Heather Hall 

LEXIS-NEXIS 

9443 Springboro Pike 

Dayton, OH 45342 

Kenneth Clair 

THOMAS WEST 

1100 Thirteen Street NW -Suite 200 

Washington, DC 20005 

( ) Via Hand Delivery 

00 Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: ___ _ 

( ) Via Hand Delivery 

()t) Via Overnight Mail 

( J Via First Class Mail 

( ) Other: ___ _ 
PUBLIC VERSION 

UNITED STATES INTERNATIONAL TRADE COMMISSION 

Washington, D.C. 

In the Matter of 

CERTAIN PROBE CARD ASSEMBLIES, 

COMPONENTS THEREOF AND CERTAIN PROBE 

CARD ASSEMBLIES, COMPONENTS THEREOF 

AND CERTAIN TESTED DRAM AND NAND 

FLASH MEMORY DEVICES AND PRODUCTS 

CONTAINING SAME 

Inv. No. 337-TA-621 

INITIAL DETERMINATION ON VIOLATION OF SECTION 337 AND 

RECOMMENDED DETERMINATION ON REMEDY AND BOND 

Administrative Law Judge Charles E. Bullock 

(June 29, 2009) 

Appearances: 

For the Comvlainant FormFactor, Inc.: 

• 

Joel Freed, Esq.; John R. Fuisz, Esq.; Stephen K. Shahida, Esq.; Michael Connelly, Esq.; Jennifer 

R. Belcher, Esq.; of McDermott Will & Emery of Washington, D.C. 

For the Respondents Micronics Japan Co., Ltd. and MJC Electronics Corp.: 

John Guist, Esq. of Mintz, Levin, Cohn, Ferris, Giovsky & Popeo, P.C. of San Diego, California 

Michael Bunis, Esq. ofFish & Richardson of Boston, Massachusetts 

Jeffrey R. Whieldon, Esq. ofFish & Richardson of Washington, D.C. 

Juanita R. Brooks, Esq. and Alex Eaton-Salners, Esq. ofFish & Richardson of San Diego, California 

Tamara Frazier, Esq. and Thomas Manuel, Esq. ofFish & Richardson of Redwood City, California 

Douglas E. McCann, Esq. of Fish & Richardson of Wilmington, Delaware 
For the Respondents Phicom Corporation and Phiam Corporation: 

Richard Stroup, Esq.; Paul C. Goulet, Esq.; and Kia Freeman, Esq.; of Finnegan, Henderson, 

Farabow, Garrett & Dunner, LLP of Washington, D.C. 

Charles Suh, Esq. of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP of Reston, Virginia 

For the Commission Investigative Staff: 

Lynn I. Levine, Esq., Director; T. Spence Chubb, Esq., Supervising Attorney; Benjamin Levi, Esq., 

Investigative Attorney; of the Office of Unfair Import Investigations, U.S. International Trade 

Commission, of Washington, D.C. 
TABLE OF CONTENTS 

LIST OF ABBREVIATIONS .................................................. Vl11 

DISCUSSION ................................................................ 3 

I. Introduction ............................................................ 3 

A. Procedural History ................................................. 3 

B. The Parties ....................................................... 9 

1. Complainant ................................................ 9 

2. Respondents ................................................ 9 

a. Micronics ............................................ 9 

b. Phicom .............................................. 9 

C. Overview ofthe Technology ......................................... 9 

D. The Patents at Issue ............................................... 10 

1. The '485 Patent ............................................ 10 

2. The '751 Patent ............................................ 10 

3. The '538 Patent ............................................ 11 

4. The '152 Patent ............................................ 11 

E. The Products at Issue .. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11 

II. Jurisdiction and Importation .............................................. 12 

A. Subject Matter JurisdictionlIn Rem Jurisdiction ......................... 13 

B. Personal Jurisdiction .............................................. 15 

III. Relevant Law .......................................................... 15 

A. Infringement . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15 

1. Literal Infringement ......................................... 15 

2. Doctrine of Equivalents ...................................... 16 

3. Indirect Infringement . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17 

a. Induced Infringement . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17 

b. Contributory Infringement .............................. 17 

B. Domestic Industry ................................................ 18 

C. Validity ......................................................... 20 

1. Anticipation, 35 U.S.C. § 102 ................................. 21 

2. Obviousness, 35 U.S.C. § 103 ................................ 23 

3. Written Description & Enablement, 35 U.S.C. § 112, ~ 1 ............ 25 

D. Enforceability - Inequitable Conduct .................................. 27 

E. Patent Misuse .................................................... 29 

F. Unclean Hands ................................................... 30 

III 
IV. The '485 Patent ........................................................ 30 

A. Overview ....................................................... 30 

B. Infringement ..................................................... 33 

1. Phi com - In General ......................................... 33 

a. Direct Infringement ................................... 34 

(1) Claim 1 ....................................... 34 

(2) Claim 3 ....................................... 40 

(3) Claim 4 ....................................... 41 

(4) Claim 18 ...................................... 41 

(5) Claim 19 ...................................... 44 

(6) Claim 23 ...................................... 45 

(7) Claim 24 ...................................... 45 

(8) Claim 29 ...................................... 46 

(9) Claim 32 ...................................... 46 

(10) Claim 33 ...................................... 47 

(11) Claim 36 ...................................... 48 

(12) Claim 37 ...................................... 48 

(13) Claim 41 ...................................... 49 

b. Indirect Infringement .................................. 49 

(1) Contributory Infringement ........................ 49 

(2) Induced Infringement ............................ 50 

c. Phicom's New Design ................................. 51 

2. Micronics - In General ....................................... 52 

a. Direct Infringement ................................... 55 

(1) Claim 1 ....................................... 55 

(2) Claim 3 ....................................... 59 

(3) Claim 4 ....................................... 60 

(4) Claim 18 ...................................... 60 

(5) Claim 19 ...................................... 65 

(6) Claim 29 ...................................... 66 

(7) Claim 32 ...................................... 66 

(8) Claim 33 ...................................... 67 

(9) Claim 41 ...................................... 68 

b. Indirect Infringement ................................. 68 

(1 ) Contributory Infringement ........................ 68 

(2) Induced Infringement ............................ 70 

C. Domestic Industry - Technical Prong .................................. 70 

D. Validity ........................................................ 75 

1. Ordinary Skill in the Art ..................................... 75 

2. Prior Sale and Use .......................................... 75 

IV 
3. Anticipation ............................................... 77 

a. The Abe' 522 Patent .................................. 77 

(1) Claim 1 ....................................... 77 

(2) Claim 3 ....................................... 80 

(3) Claim 4 ....................................... 80 

(4) Claims 18, 19 and 29 ............................ 81 

b. The Beaman '846 Patent ............................... 83 

(1) Claim 1 ....................................... 83 

(2) Claims 18 and 32 ............................... 85 

(3) Claims 19,23,24,33,36, and 37 .................. 86 

c. The Higgins '226 Patent ............................... 87 

d. The Evans '079 Patent ................................. 88 

4. Obviousness: The Abe '522 Patent in Combination with One of 

Ordinary Skill in the Art; the Nakajima '056 Patent; the Philips '360 

Patent; the Lander '079 Patent; and/or the Hart '383 Patent ......... 90 

5. Written Description & Enablement ............................. 96 

6. Related Proceedings ......................................... 98 

V. The '751 Patent ........................................................ 98 

A. Overview ....................................................... 98 

B. Infringement .................................................... 101 

1. Phi com .................................................. 101 

a. Claim 1: Literal Infringement .......................... 102 

b. Claim 1: Literal Infringement Under the Doctrine of 

Equivalents ......................................... 107 

c. Claim 2 ............................................ 109 

d. Claim 3 ............................................ 109 

e. Claim 12: Literal Infringement ......................... 110 

f. Claim 12: Literal Infringement Under the Doctrine of 

Equivalents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 112 

g. Claim 24 ........................................... 114 

h. Claim 25 ........................................... 115 

2. Micronics ................................................ 115 

a. Claim 1: Literal Infringement .......................... 115 

b. Claim 1: Literal Infringement Under the Doctrine of 

Equivalents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 123 

c. Claim 2 ............................................ 124 

d. Claim 3 ............................................ 125 

e. Claim 12: Literal Infringement ......................... 125 

f. Claim 12: Literal Infringement Under the Doctrine of 

Equivalents ......................................... 130 

g. Claim 24 ........................................... 131 

h. Claim 25 ........................................... 133 

v 
C. Domestic Industry - Technical Prong ................................. 133 

D. Validity ....................................................... 135 

1. Ordinary Skill in the Art .................................... 136 

2. Anticipation .............................................. 136 

a. The IP '034 to Amamiya .............................. 136 

b. The Hagihara '192 Patent ............................. 142 

3. Obviousness - W096115458 alone or in Combination with IP '034 

andlorthe Hagihara '192 Patent ............................... 149 

VI. The '538 Patent ....................................................... 152 

A. Overview ...................................................... 152 

B. Infringement of Claim 19 by Micronics . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 154 

1. Direct Infringement ........................................ 154 

a. Position of the Parties ................................ 154 

b. Discussion and Conclusion ............................ 160 

2. Doctrine of Equivalents ..................................... 161 

3. Conclusion on Infringement .................................. 162 

C. Domestic Industry - Technical Prong ................................. 162 

1. "a patterned layer of material" ................................ 162 

2. "said patterned layers comprising openings corresponding to said 

contact structures" ......................................... 164 

D. Validity ........................................................ 166 

1. Ordinary Skill in the Art .................................... 166 

2. Anticipation .............................................. 167 

a. The Beaman '846 Patent .............................. 167 

b. The Beaman '654 Patent .............................. 167 

c. The Laakso' 545 Patent ............................... 168 

3. Obviousness .............................................. 169 

a. The Beaman '846 Patent in Combination with the 

References Disclosed in the Direct Witness Statement of 

Ronald Leckie ...................................... 169 

b. The Beaman '654 Patent in Combination with the 

References Disclosed in the Direct Witness Statement of 

Ronald Leckie ...................................... 169 

c. The Kwon '297 Patent in Combination with the IPA H06-84455 

Patent ............................................. 170 

d. The Carver '002 Patent in Combination with the Albrecht '415 

Patent ............................................. 170 

e. The Tada '052 Patent in Combination with the Luttmer '037 

Patent ............................................. 171 

4. Written Description & Enablement ............................ 172 

E. Enforceability . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 173 

VI 
VII. The' 152 Patent ....................................................... 174 

A. Overview ...................................................... 174 

B. Infringement of Claim 21 by Phi com: "release material" ................. 177 

C. Domestic Industry - Technical Prong ................................. 181 

1. FormFactor's T-2 Products .................................. 181 

2. FormFactor's T-8 Products .................................. 185 

3. Conclusion ............................................... 186 

D. Validity ....................................................... 186 

1. Ordinary Skill in the Art .................................... 186 

2. Anticipation - The Kubena' 194 Patent ........................ 186 

3. Written Description and Enablement ........................... 191 

VIII. Patent Misuse and Unclean Hands ......................................... 193 

IX. Domestic Industry - Economic Prong ...................................... 193 

A. Significant Investment in Plant and Equipment ......................... 195 

B. Significant Employment of Labor or Capital ........................... 195 

C. Substantial Investment in Exploitation, Including Engineering, 

Research and Development, or Licensing ............................. 196 

CONCLUSIONS OF LAW .................................................... 197 

INITIAL DETERMINATION .................................................. 199 

RECOMMENDED DETERMINATION ON REMEDY AND BOND .................. 201 

X. Remedy and Bonding ................................................... 201 

A. Limited Exclusion Order .......................................... 201 

B. Cease and Desist Order ........................................... 202 

C. Bond During Presidential Review Period ............................. 203 

APPENDIX OF EXHIBIT LISTS ............................................... Al 

Vll 
LIST OF ABBREVIATIONS 

CDX Complainant's demonstrative exhibit 

CFF Complainant's proposed findings of fact 

CIB Complainant's initial post-hearing brief 

CORFF Complainant's objections to Respondents' proposed findings of fact 

COSFF Complainant's objections to Staffs proposed findings of fact 

CPX Complainant's physical exhibit 

CRB Complainant's reply post-hearing brief 

CX Complainant's exhibit 

Dep Deposition 

JX Joint Exhibit 

RDX Respondents' demonstrative exhibit 

RFF Respondents' proposed findings of fact 

RIB Respondents' initial post-hearing brief 

ROCFF Respondents' objections to Complainant's proposed findings of fact 

ROSFF Respondents' objections to Staffs proposed findings of fact 

RPX Respondents' physical exhibit 

RRB Respondents' reply post-hearing brief 

RX Respondents' exhibit 

SFF Staff s proposed findings of fact 

SIB Staffs initial post-hearing brief 

SOCFF Staffs objections to Complainant's proposed findings of fact 

SORFF Staffs objections to Respondents' proposed findings of fact 

SRB Staffs reply post-hearing brief 

Tr. Transcript 

viii 
CONTAINS CONFIDENTIAL BUSINESS INFORMATION 

UNITED STATES INTERNATIONAL TRADE COMMISSION 

Washington, D.C. 

In the Matter of 

CERTAIN PROBE CARD ASSEMBLIES, 

COMPONENTS THEREOF AND CERTAIN PROBE 

CARD ASSEMBLIES, COMPONENTS THEREOF 

AND CERTAIN TESTED DRAM AND NAND 

FLASH MEMORY DEVICES AND PRODUCTS 

CONTAINING SAME 

Inv. No. 337-TA-621 

INITIAL DETERMINATION ON VIOLATION OF SECTION 337 AND 

RECOMMENDED DETERMINATION ON REMEDY AND BOND 

Administrative Law Judge Charles E. Bullock 

(June 29, 2009) 

Pursuant to the Notice of Investigation and Rule 21O.42(a) of the Rules of Practice and 

Procedure of the United States International Trade Commission, this is the Administrative Law 

Judge's Initial Determination in the matter of certain probe card assemblies, components thereof and 

certain probe card assemblies, components thereof and certain tested DRAM and NAND flash 

memory devices and products containing same, Investigation No. 337-TA-621. 

The Administrative Law Judge hereby determines that a violation of Section 337 ofthe Tariff 

Act of 1930, as amended, has not been found in the importation into the United States, the sale for 

importation, or the sale within the United States after importation of certain probe card assemblies, 

components thereof and certain probe card assemblies, components thereof and certain tested DRAM 

and NAND flash memory devices and products containing same, in connection with claims 1,3,4, 
18, 19,23,24,29,32,33,36,37, and 41 of U.S. Patent No. 6,615,485; claims 1-3, 12,24, and 25 

of U.S. Patent No. 6,509,751; claim 19 of U.S. Patent No. 7,225,538; and claims 21-23, 27-30, and 

33-35 of U.S. Patent No. 5,994,152 patent. Furthermore, the Administrative Law Judge hereby 

determines that a domestic industry in the United States exists that practices U.S. Patent No. 

6,509,751 and does not exist that practices U.S. Patent Nos. 6,615,485; 7,225,538; and 5,994,152. 

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DISCUSSION 

I. Introduction 

A. Procedural History 

This investigation was instituted by the Commission on December 13,2007 and the notice 

of investigation was published in the Federal Register on December 19, 2007. I Administrative Law 

Judge Essex set a fifteen-month target date of March 19,2009 for completion of this investigation 

by the Commission in Order No. 4.2 

On January 22,2008, Judge Essex issued the procedural schedule in this investigation, which 

was modified on February 5, 2008 and February 7, 2008.3 

On July 11, 2008, the Commission issued a notice of decision to reassign this investigation 

to the undersigned. On July 17,2008, the undersigned issued Order No. 18, changing the ground 

rules in this investigation. 

On July 10,2008, FormFactor filed a motion for partial termination of the investigation as 

to certain claims of the asserted patents, which was granted by initial determination in Order No. 19, 

issued on July 29,2008. Specifically, FormFactor moved to terminate claims 4,51-54, and 59 of 

u.S. Patent No. 5,994,152 against Respondent Phicom; claims 5-7 and 13 of U.S. Patent No. 

6,509,751 against Respondents Micronics and Phicom; claims 10, 11,23,24,36, and 37 of U.S. 

Patent No. 6,615,485 against Respondent Micronics; claims 1-15, 18, 19, 36 of U.S. Patent No. 

6,624,648 against respondents Micronics and Phicom; claims 2 and 3 of U.S. Patent No.7, 168, 162 

I See 72 Fed. Reg. 71,954 (December 19,2007). 

2 See Order No.4 (January 22, 2008). 

3 See Order No.4 (January 22, 2008), Order No.6 (February 5, 2008), and Order No.7 

(February 7, 2008). 

3 
against Respondent Micronics; and claims 8, 9,13,20-22,27-33,37-41,44,45,47-49 of U.S. Patent 

No.7 ,225,538 against Respondent Micronics. The Commission issued a notice of determination not 

to review this initial determination on August 27, 2008. 

On July 22, 2008, Respondent Micronics filed a motion for Markman4 hearing and for 

modification ofthe target date, which was granted by initial determination in Order No. 20, issued 

on August 5, 2008. Specifically, the undersigned extended the target date by five months to twenty 

months, or until August 19, 2009, and set a Markman hearing for September 15-16, 2008. The 

Commission issued a notice of determination not to review this initial determination on August 25, 

2008. 

On August 27, 2008, the undersigned issued a modified procedural schedule for this 

investigation.5 

On September 15-16, 2008, a Markman hearing was conducted. On September 23, 2008, 

Respondent Micronics filed a motion for correction to the Markman hearing transcript dated 

September 15,2008, which was granted by Order No. 26, issued on October 7, 2008. On January 

23,2009, the undersigned issued Order No. 37, an order construing the terms of the asserted claims 

of the patents at issue. As stated in that order, all briefing in this investigation is governed by the 

claim construction order and "[all! other claim terms shall be deemed as undisputed and shall be 

interpreted by the undersigned in accordance with 'their ordinary meaning as viewed by one of 

ordinary skill in the art.",6 Order No. 37 is hereby incorporated by reference into this Initial 

4 Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en bane), aff'd, 517 

U.S. 370 (1996) ("Markman"). 

5 See Order No. 21 (August 27,2008). 

6 See Order No. 37, p. 9 (January 23, 2009) (emphasis in original). 

4 
Determination. 

On November 6, 2008, Respondents Micronics and Phicom filed a motion for partial 

summary determination that the relief FormFactor seeks with respect to certain DRAM and NAND 

flash memory devices and products containing same of non-respondents based on infringement of 

U.S. Patent No. 6,615,485 is unavailable under recent Federal Circuit precedent, which was granted 

by initial determination in Order No. 34, issued on November 25,2008. On December 22,2008, the 

Commission issued a notice of decision to review Order No. 34 and concluded that Order No. 34 is 

not an initial determination, since it relates exclusively to the issue of remedy and that such issues 

should be addressed in a recommended determination at the conclusion of the proceedings before 

the undersigned. 

On December 11,2008, the undersigned issued an initial determination extending the target 

date by two months, or twenty-two months, or October 19, 2009, and modifying the procedural 

schedule.7 The Commission issued a notice of determination not to review this initial determination 

on January 8, 2009. 

On January 29,2009, FormFactor filed a motion for partial termination of the investigation 

as to certain claims of the asserted patents, which was granted by initial determination in Order No. 

29, issued on January 29,2009. Specifically, FormFactor moved to terminate claims 1,4, 13, and 

14 ofU. S. Patent No.7, 168, 162 against Respondent Micronics; claims 1-7, and 14-18 ofU. S. Patent 

No. 7,225,538 against Respondent Micronics; and claims 1-2, 7-12, and 15 of U.S. Patent No. 

5,994,152 against Respondent Phicom. The Commission issued a notice of determination not to 

7 See Order No. 36 (December 11, 2008). Note that the procedural schedule was revised in 

Order No. 38, issued on January 29,2009. 

5 
review this initial determination on February 17,2009. 

On December 5, 2008, Respondent Phicom filed a motion for summary determination that 

U.S. Patent No. 6,624,648 is invalid under 35 U.S.C. § 112, ~ 6, which was granted by initial 

determination in Order No. 46, issued on February 11,2009. The Commission issued a notice of 

decision to review this initial determination on March 11, 2009. 

On July 1,2008, FormFactor filed a motion (621-031) for sanctions against Micronics and 

Phicom. In that motion, FormFactor asserts that Micronics and Phi com did not comply with Order 

No. 14 and that sanctions, in the form of adverse inferences that Micronics and Phicom infringe the 

asserted patents, that Micronics' and Phicom's customers directly infringe the asserted patents, and 

that Micronics and Phicom induce their customers to infringe the asserted patents, should be 

imposed. On July 16,2008, Micronics and Phicom both filed oppositions to the motion. On July 

17,2008, Staff filed an unopposed motion for a one day extension of time to file its response to the 

motion for sanctions, which is hereby granted, along with Staffs response, which opposed the 

motion. The opposing parties assert that F ormF actor has not met its burden of proof and that adverse 

inferences are not warranted. On July 22,2008, FormFactor filed a motion (621-044) for leave to 

file a reply, which is hereby denied. On July 31, 2008, Phicom filed an opposition to FormFactor's 

motion for leave to file a reply. Based on a review of the motion and the oppositions thereto, the 

undersigned agrees with Respondents and Staff that adverse inferences are not warranted. 

Accordingly, the motion for sanctions is hereby denied. 

The parties have stipulated as to certain material facts. Particular stipulated facts that are 

relevant to this Initial Determination are cited accordingly. 

An evidentiary hearing on liability was conducted before the undersigned from February 24, 

6 
2009 through March 6, 2009. In support of its case-in-chief and rebuttal case, FormFactor called the 

following witnesses: 

• Dr. Igor Khandros (FormFactor's founder and Executive Chairman of the Board of 

Directors )8; 

• Mr. Richard Freeman (FormFactor's Senior Vice President ofOperations)9; 

• Mr. Benjamin Eldridge (FormFactor's Senior Vice President and Chief Technology 

Officer); 10 

• Dr. Roger Howe (FormFactor's expert witness on the '485 and '751 patents)l1; and 

• Dr. Bruno Frazier (FormFactor's expert witness on the '152, '538, and '162 

patents). 12 

In support of its case-in-chief and rebuttal case, Respondents called the following witnesses: 

• long Ae Hong (Phicom's Deputy Manager for Overseas Sales);J3 

• lun Tae Hwang (Phicom employee in MEMS business division); 14 and 

• Mr. Frederick Taber (Phicom's expert witness on the '485 and '751 patents)15; 

• Dr. Joseph McAlexander (Phicom's expert witness on the '152 patenti6

; 

• Mr. Takahiro Igarishi (Micronics' Associate Director and General Manager, Sales 

Department, Semiconductor Test Equipment Division)17; 

8 CX-730C (Khandros Direct). 

9 CX-729C (Freeman Direct). 

10 CX-728C (Eldridge Direct). 

11 CX-732C (Howe Direct); CX-750C (Howe Rebuttal); CX-760C (Howe Supplemental). 

12 CX-731 C (Frazier Direct); CX-749C (Frazier Rebuttal). 

13 RX-380C (Hong Direct). 

14 RX-381C (Hwang Direct). 

15 RX-382 (Taber Direct); RX-415C (Taber Rebuttal); RX-418C (Taber Supplemental 

Rebuttal). 

16 RX-383C (McAlexander Direct); RX-414C (McAlexander Rebuttal). 

17 RX-692C (lgarishi Direct); RX-858C (lgarishi Rebuttal). 

7 
• Mr. Albert Hutton (MJC's President)18; 

• Mr. Tatsuo Inoue (Micronics' Director of the Aomori factor)19; 

• Dr. David Adler (Micronics' expert witness on the '485 and '751 patents)20; and 

• Mr. Ronald Leckie (Micronics' expert witness on the '538 patent).21 

On March 10, 2009, FormFactor and Respondents filed a joint motion to enter certain 

exhibits into evidence after the close of the evidentiary hearing, which was granted by Order No. 52, 

issued on March 11, 2009. 

On March 13, 2009, Respondent Micronics filed an unopposed motion to enter one additional 

exhibit, RX-831 C, into evidence, which was granted by Order No. 53, issued on March 16,2009. 

On March 30,2009, Respondent Phicom filed a motion to enter an additional exhibit, RX419, into the evidentiary record. On April 9, 2009, FormFactor filed an opposition to the motion. 

According to Phicom, RX -419 is the PTO' s rej ection ofF ormF actor's patentability arguments in the 

reexamination of the '485 patent, dated March 18, 2009. Phicom asserts that this document is 

directly related to RX-242 (request for reexamination) and RX-248 (first office action in 

reexamination). FormFactor opposes the request because there is no sponsoring witness. The 

undersigned finds good cause to admit this additional exhibit, as it is relevant to the investigation, 

and is dated after the close of the hearing and therefore could not have been admitted during the 

hearing. It needs no sponsoring witness because it is a decision of the PTO. Accordingly, RX-419 

is hereby received into evidence. 

18 RX-689C (Hutton Direct); RX-859C (Hutton Rebuttal). 

19 RX-857C (Inoue Rebuttal). 

20 RX-690C (Adler Direct); RX-861C (Adler Rebuttal). 

21 RX-691C (Leckie Direct); RX-860C (Leckie Rebuttal). 

8 
After the hearing, post-hearing briefs and reply briefs, together with proposed findings of 

fact, conclusions oflaw and rebuttals to the same, were filed on March 30, 2009, and April! 0,2009, 

respectively. 

B. The Parties 

1. Complainant 

Complainant FormFactor, Inc. ("FormFactor") is a Delaware corporation with its principal 

place of business in Livermore, California. 

2. Respondents22 

a. Micronics 

Respondent Micronics Japan Co., Ltd. is a company organized under the laws of Japan and 

is headquartered in Japan. Respondent MJC Electronics Corp. is a wholly-owned U.S. subsidiary 

of Micronics Japan Co., Ltd., with its principal place of business in Austin, Texas. The terms 

"Micronics" and "MJC" will be used interchangeably throughout this initial determination. 

h. Phicom 

Respondent Phicom Corp. is a company organized under the laws of South Korea and is 

headquartered in Seoul, Korea. Respondent Phiam Corp. is a U.S. subsidiary of Phi com Corp. and 

is located in San Jose, California. 

C. Overview of the Technology 

"Probe card" is a generic term for an assembly of components used together to test integrated 

circuits on silicon wafers. The asserted patents deal with probe cards that are used to test 

22 In general, the undersigned will refer to each respondent by name, i.e. Phi com and 

MicronicslMJC when that respondent is making a specific argument with respect to itself, and 

"Respondents" when both sets of respondents are asserting similar arguments. 

9 
semiconductor chips while such chips are still part of the silicon wafer on which they were 

fabricated. Probe cards provide an interface between the expensive durable testing equipment ofthe 

semiconductor industry and the ever evolving variety of integrated circuit designed on silicon wafers. 

D. The Patents at Issue 

1. The '485 Patent 

The '485 patent is entitled "Probe Card Assembly and Kit, and Methods of Making Same" 

which was issued on September 9, 2003, based on Application Serial No. 101034,543, filed on 

December 27, 2001. The named inventors are Benjamin N. Eldridge, Gary W. Grube, Igor Y. 

Khandros, and Gaetan L. Mathieu and the patent was assigned to FormFactor, the current owner of 

the '485 patent. The '485 patent has a total of 43 claims. Two independent claims, claims 1 and 32 

are at issue here. Dependent claims 3, 4, 18, 19,23,24,29,33,36,37, and 41 are also at issue 

here. 23 

2. The '751 Patent 

The '751 patent is entitled "Planarizer for a Semiconductor Contactor" which was issued on 

January 21, 2003, based on Application Serial No. 09/528,064, filed on March 17, 2000. The 

named inventors are Gaetan L. Mathieu, Benjamin N. Eldridge, and Gary W. Grube, and the patent 

was assigned to FormFactor, the current owner of the '751 patent. The '751 patent has a total of25 

claims. Three independent claims, claims 1, 12, and 24, are at issue here. Dependent claims 2, 3, 

and 25 are also at issue here.24 

23 See JX-3 ("the '485 patent") and JX-8 ("the '485 prosecution history"). 

24 See JX-2 ("the '751 patent") and JX-7 ("the '751 prosecution history"). 

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3. The '538 Patent 

The '538 patent is entitled "Resilient Contact Structures Formed and Then Attached to a 

Substrate" which was issued on June 5, 2007, based on Application Serial No. 10/038,633, filed on 

December 28,2001. The named inventors are Benjamin N. Eldridge, Gary W. Grube, Igor Y. 

Khandros, and Gaetan L. Mathieu, and the patent was assigned to FormFactor, the current owner of 

the '538 patent. The '538 patent has a total of 49 claims. One independent claim, claim 19, is at 

issue here.25 

4. The '152 Patent 

The' 152 patent is entitled "Fabricating Interconnects and Tips Using Sacrificial Substrates" 

which was issued on November 30, 1999, based on Application Serial No. 081788,740, filed on 

January 24, 1997. The named inventors are Igor Y. Khandros, Benjamin N. Eldridge, and Gaetan 

L. Mathieu, and the patent was assigned to FormFactor, the current owner ofthe '152 patent. The 

, 152 patent has a total of 60 claims. One independent claim, claim 21, is at issue here. Dependent 

claims 22, 23, 27-30, and 33-35, which depend from claim 21, are also at issue here. 26 

E. The Products at Issue 

At issue in this investigation are certain probe card assemblies, components thereof and 

certain probe card assemblies, components thereof and certain tested DRAM and NAND flash 

memory devices and products containing same. 

The accused Phi com products are probe card assemblies manufactured, used, offered for sale, 

and sold by Phicom under the name "MEMS Card." There are four different types of Phi com MEMS 

25 See JX-5 ("the '538 patent") and JX-lO ("the '538 prosecution history"). 

26 See JX -1 ("the' 152 patent") and JX -6 ("the' 152 prosecution history"). 

11 
Cards, depending on the date of manufacture and the size of the probe substrates, categorized into 

A, B, C, or D Type MEMS Cards. All of Phi com's MEMS Cards have the following components: 

a printed circuit board, or "PCB," to provide an interface with the tester; a probe substrate called 

Micro Probe Head, or "MPH"; an array of spring probe elements called Micro Probes mounted on 

the wafer side surface of the MPH; an interconnecting structure providing electrical connections 

between the Micro Probes to the PCB, consisted in a form of New Interface Pins and guide films; 

and a mUltiple planarizing bolts and screws designed to minimize the height variations between the 

probe elements. 

The accused Micronics products are probe card assemblies manufactured, used, offered for 

sale, and sold by Micronics under the name "U-Probe." All of Micronics' U-Probes have the 

following components: [ 

] 

II. Jurisdiction and Importation 

Section 337 confers subject matter jurisdiction on the International Trade Commission to 

investigate, and if appropriate, to provide a remedy for, unfair acts and unfair methods of 

competition in the importation of articles into the United States. In order to have the power to decide 

12 
a case, a court or agency must have both subject matter jurisdiction, and jurisdiction over either the 

parties or the property involved.27 

A. Subject Matter JurisdictionlIn Rem Jurisdiction 

The complaint alleges that Respondents have violated Subsection 337(a)(1)(A) and (B) in 

the importation and sale of products that infringe certain of the asserted patents. Respondents do not 

dispute that the importation requirement has been satisfied.28 Accordingly, the Commission has 

subject matter jurisdiction over Respondents in this investigation.29 

As to the issue of whether the Commission possesses jurisdiction over Phicom' s new probe 

card design in this investigation, FormFactor does not renew the arguments made in its Motion for 

Determination that this Court does not have jurisdiction over Phicom's New Probe Card Assembly 

Design, filed on March 2, 2009, other than making a cursory statement in their reply brief stating that 

"FormFactor maintains its position that the New Design MEMS Card is not part of this 

Investigation.,,30 Staff addresses FormFactor's motion for determination in its post-hearing brief.3l 

As noted by Staff, during the hearing, the undersigned issued an oral ruling during the hearing that 

the motion for determination would be denied, but that the parties would be allowed to raise the issue 

in their post hearing briefs.32 While Staff raises the issue of the motion for determination in its posthearing brief, FormFactor does not raise the issue on its own in its own post-hearing brief. 

27 19 U.S.C. § 1337; also see Certain Steel Rod Treating Apparatus and Components 

Thereof, Inv. No. 337-TA-97, Commission Memorandum Opinion, 215 U.S.P.Q. 229, 231 (1981) 

("Certain Steel Rod"). 

28 RIB 18-19. 

29 See Amgen, Inc. v. Us. Int'l Trade Comm'n, 902 F.2d 1532, 1536 (Fed. Cir. 1990) 

("Amgen"). 

30 CRB 4. 

3l SIB 8-14. 

32 Bullock, Tr. 1364 (3/3/09). 

13 
According to Phicom, Phicom has fully complied with its discovery obligations as to the new 

probe card design and that there should be no sanction to the effect of being precluded from 

receiving a ruling as to infringement. Furthermore, Phicom asserts that FormFactor has not even 

renewed its motion for determination in its post-hearing brief and has therefore waived the issue.33 

According to Staff, while there has been no evidence of importation of the new probe card 

design, an exercise of jurisdiction is proper because Phicom stands ready and willing to sell its new 

probe cards to customers in the United States upon receipt of an order.34 Staff also asserts, however, 

that Phi com should be precluded from obtaining adjudication on its new probe card assemblies as 

a sanction for its discovery misconduct. 35 Furthermore, Staff asserts that because Phicom did not 

address the issue of the motion in its post-hearing brief, that Phicom has waived all arguments in 

opposition to FormFactor's motion.36 

As to whether the Commission possesses jurisdiction to adjudicate Phicom' s new probe card 

design assembly, the undersigned agrees with Phicom and Staff that the Commission has jurisdiction 

over Phicom' s new probe card design. The undersigned disagrees with Staff, however, that Phicom 

should be precluded from obtaining a determination on its new probe card assembly as a discovery 

sanction, as FormFactor, the original moving party, failed to raise this issue in its post-hearing brief. 

Accordingly, while there is some evidence that Phi com improperly blocked discovery on the new 

33 RRB 9. 

34 SIB 15-16 citing Amgen, Inc. v. Int'l Trade Comm 'n, 519 F.3d 1343 (Fed. Cir. 2008) 

("Amgen 11'). See also Staff s letter dated May 1, 2009, which states that, while the Federal Circuit 

has vacated its decision in Amgen, Inc. v. Int'l Trade Comm 'n, No. 2007-1014, Slip Op. at 2 (Apr. 

30,2009), that the Staff s underlying position is still sound based on Certain Flash Memory Circuits 

and Products Containing Same, Inv. No. 337-T A-3 82, Commission's Notice ofIssuance of Limited 

Exclusion Order (June 2, 2007). 

35 SIB 16. 

36 SRB 6-7. 

14 
probe card assembly design during the deposition of its 30(b)(6) witness, a sanction in the form of 

non-adjudication ofthe issue on the new design is not warranted. 

Accordingly, the undersigned finds that the Commission has jurisdiction over Phicom' s new 

probe card design and will make a ruling as to whether Phicom's new probe card design infringes 

the relevant asserted patents. 

B. Personal Jurisdiction 

Respondents have responded to the complaint and notice of investigation, participated in the 

investigation, including participating in discovery, made an appearance at the hearing, and submitted 

post-hearing briefs, thereby submitting to the personal jurisdiction of the Commission.37 

III. Relevant Law 

A. Infringement 

1. Literal Infringement 

Literal infringement is a question of fact. 38 Literal infringement requires the patentee to 

prove that the accused device contains each limitation of the asserted claim(s). Each element ofa 

claim is considered material and essential, and in order to show literal infringement, every element 

must be found to be present in the accused device.39 If any claim limitation is absent from the 

accused device, there is no literal infringement of that claim as a matter of law. 40 

37 See Certain Miniature Hacksaws, Inv. No. 337-TA-237, U.S.I.T.C. Pub. No. 1948, Initial 

Determination (unreviewed by Commission in relevant part) at 4, 1986 WL 379287 (U.S.I.T.C., 

October 15, 1986) ("Certain Miniature Hacksaws"). 

38 Tegal Corp. v. Tokyo Electron Am.,Inc. , 257 F.3d 1331, 1350 (Fed. Cir. 2001)("Tegal"), 

cert. denied, 535 U.S. 927 (2002). 

39 London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1538 (Fed. Cir. 1991) ("London"). 

40 Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000) 

("Bayer"). 

15 
Direct infringement of a method claim requires "each step of the claimed method [to be] 

performed.,,41 Although direct infringement requires a single party to perform every step of the 

claimed method, it is well established that a defendant cannot avoid liability for direct infringement 

by having someone else carry out one or more of the claimed steps on its behalf.42 Thus, 

where the actions of multiple parties combine to perform every step of a claimed 

method, the claim is directly infringed only if one party exercises "control or 

direction" over the entire process such that every step is attributable to the controlling 

party, i.e., the "mastermind." At the other end of this multi-party spectrum, mere 

"arms-length cooperation" will not give rise to direct infringement by any party.43 

2. Doctrine of Equivalents 

Where literal infringement is not found, infringement nevertheless can be found under the 

doctrine of equivalents based on "the substantiality of the differences between the claimed and 

accused products or processes, assessed according to an objective standard" judged from "the 

vantage point of one of ordinary skill in the relevant art.,,44 Determining infringement under the 

doctrine of equivalents "requires an intensely factual inquiry.'>45 

In Warner-Jenkinson, the Supreme Court noted that the doctrine of equivalents is subject to 

several limitations, including applying the doctrine to individual elements of a claim and not to the 

invention as a whole.46 The court acknowledged that the commonly used "function-way-result" test 

41 Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1328 (Fed. Cir. 2008) 

("Muniauction"). 

42Id. at 1329. 

43 Id. at 1329 (citations omitted). 

44 HiltonDavisChem. Co. v. Warner-Jenkinson Co. , Inc., 62F.3d 1512,1518-1519 (Fed. Cir. 

1995) ("Hilton Davis"), rev'd, 520 U.S. 17 (1997) ("Warner-Jenkinson"). 

45 Vehicular Tech. Corp. v. Titan Wheel Int'l, Inc., 212 F.3d 1377, 1381 (Fed. Cir. 2000) 

(" Vehicular Technologies"). 

46 Warner-Jenkinson, 520 U.S. at 29. 

16 
is suitable in some instances, including analyzing mechanical devices.47 

3. Indirect Infringement 

Indirect infringement may be either induced or contributory. Direct infringement must first 

be established in order for a claim of indirect infringement to prevail.48 

a. Induced Infringement 

Section 271(b) of the Patent Act prohibits inducement: "[w]hoever actively induces 

infringement of a patent shall be liable as an infringer.,,49 As the Federal Circuit stated: 

To establish liability under section 271 (b), a patent holder must prove that once the 

defendants knew of the patent, they "actively and knowingly aid [ed] and abett[ed] 

another's direct infringement." However, "knowledge ofthe acts alleged to constitute 

infringement" is not enough. The "mere knowledge of possible infringement by 

others does not amount to inducement; specific intent and action to induce 

infringement must be proven. ,,50 

In addition, the burden of proof is on the complainant.51 

b. Contributory Infringement 

Under 35 U.S.C. § 271(c), a sellerofa component ofan infringing product can beheld liable 

for contributory infringement if: "(1) there has been an act of direct infringement by a third party; 

(2) the accused contributory infringer knows that the combination for which its component was made 

was both patented and infringing; and (3) there are no substantial non-infringing uses for the 

47 See Hilton Davis, 62 F .3d at 1518 ( "In applying the doctrine of equivalents, it is often 

enough to assess whether the claimed and accused products or processes include substantially the 

same function, way, and result"). 

48 Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683, 697, (Fed. Cir. 2008) ("Broadcom"); 

ACCD Brands, Inc. v. ABA Locks Mfr. Co., 501 F.3d 1307, 1312 (Fed. Cir. 2007) ("ACCD"). 49 35 U.S.C. § 271(b) (2008). 

50 DSU Med Corp. v. JMS Co., 471 F.3d 1293, 1305 (Fed. Cir. 2006) (en banc) (citations 

omitted) ("DSU'). 

51 Broadcom, 543 F.3d at 698. 

17 
component part, i.e., the component is not a 'staple article' of commerce.,,52 

B. Domestic Industry 

In a patent-based complaint, a violation of Section 337 can be found "only if an industry in 

the United States, relating to the articles protected by the patent ... concerned, exists or is in the 

process of being established. ,,53 This "domestic industry requirement" has an "economic" prong and 

a "technical" prong.54 

The term "domestic industry" in Section 337 is not defined by the statute, but the 

Commission has interpreted the intent of Section 337 to be "the protection of domestic manufacture 

of goods.,,55 The Commission has further stated that "[t]he scope of the domestic industry in patentbased investigations has been determined on a case by case basis in light of the realities of the 

marketplace and encompasses not only the manufacturing operations but may include, in addition, 

distribution, research and development and sales.,,56 

In making this determination, Section 337(a)(2) provides that for investigations based on 

patent infringement, a violation can be found "only if an industry in the United States, relating to the 

articles protected by the patent ... concerned, exists or is in the process of being established." 19 

U.S.C. § 1337(a)(2). Section 337(a)(3) sets forth the following economic criteria for determining 

the existence of a domestic industry in such investigations: 

52 Certain Flash Memory, Commission Opinion at 9-10. 

53 19 U.S.C. § 1337(a)(2). 

54 Certain Stringed Musical Instruments and Components Thereof, Inv. No. 337-TA-586, 

Commission Opinion at 12-14 (April 24, 2008) ("Certain Stringed Instruments"). 

55 Certain Dynamic Random Access Memories, Components Thereof and Products 

Containing Same, Inv. No. 337-TA-242, U.S.LT.C. Pub. No. 2034 (November 1987), Commission 

Opinion at 61,1987 WL 450856 (U.S.LT.C., September 21, 1987) ("Certain DRAMs"). 

56 !d. at 62 (footnotes omitted). 

18 
an industry in the United States shall be considered to exist if there is in the United 

States, with respect to the articles protected by the ... patent ... concerned -

(A) significant investment in plant and equipment; 

(B) significant employment of labor or capital; or 

(C) substantial investment in its exploitation, including engineering, research 

and development, or licensing. 57 

As the statute uses the disjunctive term "or," a complainant can demonstrate this so-called 

"economic prong" of the domestic industry requirement by satisfying anyone of the three tests set 

forth in Section 337(a)(3).58 The complainant bears the burden of establishing that the domestic 

industry requirement is satisfied. 59 

In addition to meeting the economic criteria of the domestic industry requirement, a 

complainant in a patent-based Section 337 investigation must also demonstrate that it is practicing 

or exploiting the patents at issue.6o In order to find the existence of a domestic industry exploiting 

a patent at issue, it is sufficient to show that the domestic industry practices any claim of that patent, 

not necessarily an asserted claim of that patent.61 Fulfillment of this so-called "technical prong" of 

57 19 U.S.C. § 1337(a)(3). 

58 See Certain Plastic Encapsulated Integrated Circuits, Inv. No. 337-TA-315, U.S.I.T.C. 

Pub. No. 2574 (November 1992), Initial Determination at 83, 1992 WL 813952 (U.S.I.T.C., October 

15, 1991) (unreviewed by Commission in relevant part) ("Certain Encapsulated Circuits"). 

59 See Certain Set-Top Boxes and Components Thereof, Inv. No. 337-TA-454, U.S.I.T.C. 

Pub. No. 3564 (November 2002), Initial Determination at 294, 2002 WL 31556392 (U.S.I.T.C., June 

21,2002), unreviewed by Commission in relevant part, Commission Opinion at 2 (August 29,2002) 

("Certain Set-Top Boxes"). 

60 See 19 U.S.C. § 1337(a)(2) and (3); also see Certain Microsphere Adhesives, Processfor 

Making Same, and Products Containing Same, Including Self-Stick Repositionable Notes, Inv. No. 

337-TA-366, Commission Opinion at 8, 1996 WL 1056095 (U.S.I.T.C., January 16, 1996)("Certain 

Microsphere Adhesives"), affd sub nom. Minnesota Mining & Mfg. Co. v. Us. Int'l Trade Comm 'n, 

91 F.3d 171 (Fed. Cir. 1996) (Table); Certain Encapsulated Circuits, Commission Opinion at 16. 

61 Certain Microsphere Adhesives, Commission Opinion at 7-16. 

19 
the domestic industry requirement is not determined by a rigid formula, but rather by the articles of 

commerce and the realities of the marketplace.62 

The test for claim coverage for the purposes of the technical prong of the domestic industry 

requirement is the same as that for infringement.63 "First, the claims of the patent are construed. 

Second, the complainant's article or process is examined to determine whether it falls within the 

scope of the claims. ,,64 As with infringement, the first step of claim construction is a question of 

law, whereas the second step of comparing the article to the claims is a factual determination.65 To 

prevail, the patentee must establish by a preponderance of the evidence that the domestic product 

practices one or more claims of the patent either literally or under the doctrine of equivalents.66 

C. Validity 

A patent is presumed valid.67 The party challenging a patent's validity has the burden of 

overcoming this presumption by clear and convincing evidence.68 Since the claims of a patent 

measure the invention at issue, the claims must be interpreted and given the same meaning for 

purposes of both validity and infringement analyses. As with an infringement analysis, an analysis 

62 Certain Diltiazem Hydrochloride and Diltiazem Preparations, Inv. No. 337-TA-349, 

U.S.LT.C. Pub. No. 2902, Initial Determination at 138, 1995 WL 945191 (U.S.LT.C., February 1, 

1995) (unreviewed in relevant part) ("Certain Diltiazem"); Certain Double-Sided Floppy Disk 

Drives and Components Thereof, Inv. No. 337-TA-215, 227 U.S.P.Q. 982, 989 (Commission 

Opinion 1985) ("Certain Floppy Disk Drives"). 

63 Certain Doxorubicin and Preparations Containing Same, Inv. No. 337-TA-300, Initial 

Determination at 109, 1990 WL 710463 (U. S.L T. C., May 21, 1990) ("Certain Doxorubicin"), aff'd, 

Views of the Commission at 22 (October 31, 1990). 

641d 

65 Markman, 52 F.3d at 976. 

66 See Bayer, 212 F.3d at 1247. 

67 35 U.S.C. § 282; Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476, 1480 (Fed. Cir. 

1997) ("Richardson-Vicks"). 

68 Richardson-Vicks Inc., supra; Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044 (Fed. 

Cir.) (" Uniroyal"), cert. denied, 488 U.S. 825 (1988). 

20 
of invalidity involves two steps: the claim scope is first determined, and then the properly construed 

claim is compared with the prior art to determine whether the claimed invention is anticipated and/or 

rendered obvious.69 

1. Anticipation, 35 U.S.c. § 102 

A patent may be found invalid as anticipated under 35 U.S.C. § 102(a) if "the invention was 

known or used by others in this country, or patented or described in a printed publication in this 

country, or patented or described in a printed publication in a foreign country, before the invention 

thereofby the applicant for patent." 3 5 U. S. C. § 1 02( a). A patent may be found invalid as anticipated 

under 35 U.S.C. § 1 02(b) if"the invention was patented or described in a printed publication in this 

or a foreign country or in public use or on sale in this country, more than one year prior to the date 

of the application for patent in the United States.,,70 Under 35 U.S.C. § 102(e), a patent is invalid 

as anticipated if "the invention was described in a patent granted on an application for patent by 

another filed in the United States before the invention thereof by the applicant for patent.,,71 

Anticipation is a question offact.72 

Under the foregoing statutory provision, a claim is anticipated and therefore invalid when 

"the four comers of a single, prior art document describe [ s] every element of the claimed invention, 

either expressly or inherently, such that a person of ordinary skill in the art could practice the 

69 Amazon. com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) 

("Amazon. com"). 70 35 U.S.C. § 102(b). 71 35 U.S.C. § 102(e). 

72 Texas Instruments, Inc. v. Us. Int'l Trade Comm 'n, 988 F.2d 1165, 1177 (Fed. Cir. 1993) 

("Texas Instruments IF'). 

21 
invention without undue experimentation. ,m To be considered anticipatory, the prior art reference 

must be enabling and describe the applicant's claimed invention sufficiently to have placed it in 

possession of a person of ordinary skill in the field of the invention.74 But, the degree of enabling 

detail contained in the reference does not have to exceed that contained in the patent at issue.75 

Further, the disclosure in the prior art reference does not have to be express, but may 

anticipate by inherency where the inherency would be appreciated by one of ordinary skill in the 

art.76 To be inherent, the feature must necessarily be present in the prior art. 77 Inherency may not 

be established by probabilities or possibilities. The mere fact that a certain thing may result from 

a given set of circumstances is not sufficient. If, however, the disclosure is sufficient to show that 

the natural result flowing from the operation as taught would result in the performance of the 

questioned function, it seems to be well settled that the disclosure should be regarded as sufficient. 

This modest flexibility in the rule that "anticipation" requires that every element ofthe claims appear 

in a single reference accommodates situations where the common knowledge of technologists is not 

recorded in the reference; that is, where technological facts are known to those in the field of the 

invention, albeit not known to jUdges.78 

73 Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000), 

cert. denied, 532 U.S. 904 (2001) ("Advanced Display Systems"). 

74 Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1346 (Fed. Cir. 2000) ("Helifix"); In re 

Paulsen, 30 F.3d 1475, 1478 (Fed. Cir. 1994) ("Paulsen"). 

75 Paulsen, 30 F.3d at 1481 n.9. 

76 Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047 (Fed. Cir.), cert. denied, 516 U.S. 988 

(1995) ("Glaxo"). 

77 See Finnigan Corp. v. Us. Int'l Trade Comm 'n, 180 F.3d 1354, 1365-66 (Fed. Cir. 1999) 

("Finnigan"). 

78 See Cont'! Can Co. v. Monsanto Co., 948 F.2d 1264, 1268-69 (Fed. Cir. 1991) 

("Continental Can"); Finnigan, 180 F.2d at 1365. 

22 
2. Obviousness, 35 U.S.c. § 103 

Under 35 U.S.C. § 103(a), a patent is valid unless "the differences between the subject matter 

sought to be patented and the prior art are such that the subject matter as a whole would have been 

obvious at the time the invention was made to a person having ordinary skill in the art to which said 

subject matter pertains.,,79 The ultimate question of obviousness is a question oflaw, but "it is well 

understood that there are factual issues underlying the ultimate obviousness decision. ,,80 

Once claims have been properly construed, "[t]he second step in an obviousness inquiry is 

to determine whether the claimed invention would have been obvious as a legal matter, based on 

underlying factual inquiries including : (1) the scope and content of the prior art, (2) the level of 

ordinary skill in the art, (3) the differences between the claimed invention and the prior art ; and (4) 

secondary considerations of non-obviousness" (also known as "objective evidence"). 81 

Although the Federal Circuit case law also required that, in order to prove obviousness, the 

patent challenger must demonstrate, by clear and convincing evidence, that there is a "teaching, 

suggestion, or motivation to combine, the Supreme Court has rejected this "rigid approach" 

employed by the Federal Circuit in KSR Int'l Co. v. Telejlex Inc. :82 

When a work is available in one field of endeavor, design incentives and other 

market forces can prompt variations of it, either in the same field or a different one. 

If a person of ordinary skill can implement a predictable variation, § 103 likely bars 

its patentability. For the same reason, if a technique has been used to improve one 

device, and a person of ordinary skill in the art would recognize that it would 

improve similar devices in the same way, using the technique is obvious unless its 

79 35 U.S.C. § 103 (a). 

80 Richardson-Vicks Inc., 122 F.3dat 1479; Wang Lab., Inc. v. Toshiba Corp., 993 F.2d 858, 

863 (Fed. Cir. 1993) ("Wang Laboratories"). 

81 Smiths Indus. Med. Sys., Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1354 (Fed. Cir. 1999) 

("Smiths Industries"), citing Graham v. John Deere Co., 383 U.S. 1, 17 (1966) ("Graham"). 

82 KSR Int'l Co. v. Telejlex Inc., 500 U.S. 398 (2007) ("KSR"). 

23 
actual application is beyond his or her skill. Sakraida and Anderson' s-Black Rock are 

illustrative-a court must ask whether the improvement is more than the predictable 

use of prior art elements according to their established function. 

Following these principles may be more difficult in other cases than it is here 

because the claimed subject matter may involve more than the simple substitution of 

one known element for another or the mere application of a known technique to a 

piece of prior art ready for the improvement. Often, it will be necessary for a court 

to look to interrelated teachings of mUltiple patents; the effects of demands known 

to the design community or present in the marketplace; and the background 

knowledge possessed by a person having ordinary skill in the art, all in order to 

determine whether there was an apparent reason to combine the known elements in 

the fashion claimed by the patent at issue. To facilitate review, this analysis should 

be made explicitly. See In re Kahn, 441 F.3d 977,988 (CAFed. 2006)("[R]ejections 

on obviousness grounds cannot be sustained by mere conclusory statements; instead, 

there must be some articulated reasoning with some rational underpinning to support 

the legal conclusions of obviousness"). As our precedents make clear, however, the 

analysis need not seek out precise teachings directed to the specific subject matter of 

the challenged claim, for a court can take account of the inferences and creative steps 

that a person of ordinary skill in the art would employ. 

[ ... ] 

The obviousness analysis cannot be confined by a formalistic conception of the 

words teaching, suggestion, and motivation, or by overemphasis on the importance 

of published articles and the explicit content of issued patents. The diversity of 

inventive pursuits and of modem technology counsels against limiting the analysis 

in this way. In many fields it may be that there is little discussion of obvious 

techniques or combinations, and it often may be the case that market demand, rather 

than scientific literature, will drive design trends. Granting patent protection to 

advance that would occur in the ordinary course without real innovation retards 

progress and may, in the case of patents combining previously known elements, 

deprive prior inventions of their value or utility. 83 

"Secondary considerations," also referred to as "objective evidence of non-obviousness," 

such as "commercial success, long felt but unsolved needs, failure of others, etc." may be used to 

understand the origin of the subject matter at issue, and may be relevant as indicia of obviousness 

83 KSR, 500 U.S. at 401,419. 

24 
or non-obviousness.84 Secondary considerations may also include copying by others, prior art 

teaching away, and professional acclaim.85 

Evidence of "objective indicia of non-obviousness," also known as "secondary 

considerations," must be considered in evaluating the obviousness of a claimed invention, but the 

existence of such evidence does not control the obviousness determination. A court must consider 

all of the evidence under the Graham factors before reaching a decision on obviousness.86 In order 

to accord objective evidence substantial weight, its proponent must establish a nexus between the 

evidence and the merits of the claimed invention, and a prima facie case is generally made out "when 

the patentee shows both that there is commercial success, and that the thing (product or method) that 

is commercially successful is the invention disclosed and claimed in the patent.,,87 Once the patentee 

has made a prima facie case of nexus, the burden shifts to the challenger to show that the commercial 

success was caused by "extraneous factors other than the patented invention, such as advertising, 

superior workmanship, etc. ,,88 

3. Written Description & Enablement, 35 U.S.C. § 112, ~ 1 

Section 112, ~ 1 of Title 35 requires that the specification describe the manner and process 

84 Graham, 383 U.S. at 17-18. 

85 See Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 894 (Fed. Cir. 1984) 

("Perkin-Elmer"), cert. denied, 469 U.S. 857 (1984); Avia Group Int'l, Inc. v. L.A. Gear California, 

853 F.2d 1557,1564 (Fed. Cir. 1988) ("Avia") (copying by others); In re Hedges, 783 F.2d 1038, 

1041 (Fed. Cir. 1986) ("Hedges") (prior art teaching away; invention contrary to accepted wisdom); 

Kloster Speedsteel AB v. Crucible Inc., 793 F.2d 1565 (Fed. ir. 1986) ("Kloster"), cert. denied,479 . 

U.S. 1034 (1987) (wide acceptance and recognition of the invention). 

86 Richardson-Vicks Inc., 122 F.3d at 1483-84. 

87 Inre GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995) ("GPAC'); Demaco Corp. v. F. Von 

LangsdorffLicensing Ltd., 851 F.2d 1387,1392 (Fed. Cir. 1988), cert. denied, 488 U.S. 956 (1988) 

("Demaco"); Certain Crystalline Cefadroxil Monohydrate, Inv. No. 337-TA-293, Commission 

Opinion (March 15, 1990),15 U.S.P.Q.2d 1263, 1270 ("Certain Crystalline"). 

88Id. at 1393. 

25 
of making and using the invention "in such full, clear, concise, and exact terms as to enable any 

person skilled in the art to which it pertains, or with which it is most nearly connected, to make and 

use the same." 

The issue of whether a disclosure is enabling is a matter of law.89 "To be enabling, the 

specification of a patent must teach those skilled in the art how to make and use the full scope of the 

claimed invention without 'undue experimentation. ",90 "Patent protection is granted in return for 

an enabling disclosure of an invention, not for vague, intimations of general ideas that mayor may 

not be workable.,,91 Although a specification need not disclose minor details that are well known in 

the art, "[i]t is the specification, not the knowledge of one skilled in the art, that must supply the 

novel aspects of an invention in order to constitute adequate enablement," and in so doing the 

specification cannot merely provide "only a starting point, a direction for further research. ,,92 On the 

other hand, "[i]t is not fatal if some experimentation is needed, for the patent document is not 

intended to be a production specification.,,93 "Undue experimentation" is "a matter of degree" and 

"not merely quantitative, since a considerable amount of experimentation is permissible, if it is 

merely routine, or if the specification in question provides a reasonable amount of guidance with 

respect to the direction in which the experimentation should proceed .... "94 

It is well-settled that in order to be enabling under Section 112, "the patent must contain a 

89 Applied Materials, Inc. v. Advanced Semiconductor Materials America, Inc., 98 F .3d 1563, 

1575 (Fed. Cir. 1996) ("Applied Materials"). 

90 Genentech, Inc. v. Novo Nordisk, AlS, 108 F.3d 1361, 1365 (Fed. Cir. 1997) ("Genentech"). 

91 Id. at 1366. 

92Id. 

93 Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931,941 (Fed. Cir. 1990) ("Northern 

Telecom"). 

94 PPG Industries, Inc. v. Guardian Industries Corp., 75 F.3d 1558, 1564 (Fed. Cir. 1996) 

("PPG Industries"). 

26 
description sufficient to enable one skilled in the art to make and use the full scope of the claimed 

invention. ,,95 Section 112 requires that the scope of the claims must bear a reasonable correlation to 

the scope of enablement provided by the specification to such persons.96 

D. Enforceability - Inequitable Conduct 

A patent is unenforceable on grounds of "inequitable conduct" if the patentee withheld 

material information from the PTO with intent to mislead or deceive the PTO into allowing the 

claims.97 Both materiality and intent must be proven by clear and convincing evidence.98 When 

inequitable conduct occurs in relation to one or more claims of a patent, the entire patent is 

unenforceable.99 

According to the rules of the PTO, the duty to disclose information "exists with respect to 

each pending claim until the claim is canceled or withdrawn from consideration, or the application 

becomes abandoned. Information material to the patentability of a claim that is canceled or 

withdrawn from consideration need not be submitted if the information is not material to the 

patentability of any claim remaining under consideration in the application. There is no duty to 

submit information which is not material to the patentability of any existing claim."lOo 

Generally, when withheld information is highly material, a lower showing of deceptive intent 

95 United States v. Teletronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988) ("Teletronics"); see 

also Amgen, Inc. v. Chugai Pharmaceutical Co., Ltd, 927 F.2d 1200, 1213 (Fed. Cir. 1991) 

("Chugai") (inventor's disclosure must be "sufficient to enable on skilled in the art to carry out the 

invention commensurate with the scope of his claims"). 

96 Application of Fischer, 427 F.2d 833,839 (C.C.P.A. 1970) ("Fischer"). 

97 LaBounty Mfr., Inc. v. Us. Int'l Trade Comm'n, 958 F.2d 1066,1070-1074 (Fed. Cir. 

1992) ("LaBounty"). 

98 Id.; Kingsdown Med Consultants, Ltd v. Hollister, Inc., 863 F.2d 867, 872 (Fed. Cir. 

1988), cert. denied, 490 U.S. 1067 (1989) ("Kingsdown"). 

99 Kingsdown, 863 F.2d at 874. 

100 37 C.F.R. § 1. 56(a). 

27 
will be sufficient to establish inequitable conduct. 101 Moreover, "[ d]irect proof of wrongful intent 

is rarely available but may be inferred from clear and convincing evidence of the surrounding 

circumstances.,,102 The conduct at issue must be viewed in light of all the evidence, including 

evidence of good faith. 103 In other words "where withheld information is material and the patentee 

knew or should have known of that materiality, he or she can expect to have great difficulty in 

establishing subjective good faith sufficient to overcome an inference of intent to mislead.,,104 

"Information is material where there is a substantial likelihood that a reasonable examiner 

would consider it important in deciding whether to allow the application to issue as a patent.,,105 A 

patent applicant, however, has no obligation to disclose a reference that is cumulative or less 

pertinent than those already before the examiner. 106 Under the rules of the PTO, information is 

material when it is not cumulative to information of record and it either (i) "establishes, by itself or 

in combination with other information, a prima facie case of unpatentability of a claim"; or (ii) "it 

refutes, or is inconsistent with, a position the applicant takes" in either opposing the PTO's argument 

of unpatentability or asserting the applicant's own argument of patentability.107 Close cases, 

101 Am. Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1363 (Fed. Cir.), cert. 

denied, 469 U.S. 821 (1984) ("American Hoist"). 

102 LaBounty, 958 F.2dat 1076; Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer, Inc., 326 

F.3d 1226, 1239 (Fed. Cir. 2003) ("Bristol-Myers"); GFL Inc. v. Franklin Corp., 265 F.3d 1268, 

1274 (Fed. Cir. 2001) ("GFF');Merck& Co. v. Danbury Pharmacal, Inc., 873 F.2d 1418, 1422 (Fed. 

Cir. 1989) ("Danbury"). 

103 Kingsdown, 863 F.2d at 876. 

104 Bristol-Myers, 326 F.3d at 1239 (citing Akron Polymer Container Corp. v. Exxel 

Container, Inc., 148 F.3d 1380, 1384 (Fed. Cir. 1998) ("Akron"»; see also GFI, 265 F.3d at 1275. 

105 LaBounty, 958 F.2d at 1074; OFI, 265 F.3d at 1274; Molins PLCv. Textron, Inc., 48 F.3d 

1172, 1179 (Fed. Cir. 1995) ("Molins"). 

106 Halliburton Co. v. Schlumberger Tech. Corp., 925 F.2d 1435, 1439-40 (Fed. Cir. 1991) 

("Halliburton"). 107 37 C.F.R. § 1.56(b). 

28 
however, "should be resolved by disclosure, not unilaterally by applicant."108 

E. Patent Misuse 

Patent misuse is an equitable defense to a claim of patent infringement. l09 As the Federal 

Circuit has explained: 

The policy of the patent misuse doctrine is "to prevent a patentee from using the 

patent to obtain market benefit beyond that which inures in the statutory patent right." 

Therefore, in evaluating a patent-misuse defense, "[t]he key inquiry is whether, by 

imposing conditions that derive their force from the patent, the patentee has 

impermissibly broadened the scope of the patent grant with anti competitive effect. ,,110 

Patent misuse has been found, for example, when a patentee conditions a patent license on the 

purchase of unpatented goods, III or when a patent license requires royalty payments after the 

expiration of the licensed patents. 

To determine if patent misuse exists, courts must conduct a three-part analysis.l12 First, the 

court determines whether the alleged misuse practice is immunized under Section 271 (d) of Title 35 

of the United States Code. Second, the court determines if the challenged practice fits into the very 

narrow category of per se misuse, such as "tying" arrangements. If a case is not resolved by the third 

step, the court must determine if the challenged practice is 

"reasonably within the patent grant, i.e., that it relates to subject matter within the 

scope of the patent claims." If so, the practice does not have the effect of broadening 

the scope of the patent claims and thus cannot constitute patent misuse. If, on the 

108 Abbott Laboratories v. TorPharm, Inc., 300 F.3d 1367, 1379 (Fed. Cir. 2002) ("Abbott") 

quoting LaBounty, 958 F.2d at 1076. 

109 Us. Philips Corp. v. United States Int'l Trade Comm 'n, 424 F.3d 1179, 1184 (Fed. Cir. 

2005) ("Philips"). 

I \0 Monsanto Co. v. McFarling, 363 F.3d 1336,1341 (Fed. Cir. 2004) ("Monsanto") (citations 

omitted). 

111 See Carbice Corp. of Am. v. Am. Patents Dev. Corp., 283 U.S. 27 (1931) ("Carbice"). 

112 Virginia Panel Corp. v. MAC Panel Co., 133 F.3d 860,868 (Fed. Cir. 1997) ("Virginia 

Pane!"). 

29 
other hand, the practice has the effect of extending the patentee's statutory rights and 

does so with an anti-competitive effect, that practice must then be analyzed in 

accordance with the "rule of reason." Under the rule of reason, "the finder of fact 

must decide whether the questioned practice imposes an unreasonable restraint on 

competition, taking into account a variety of factors, including specific information 

about the relevant business, its condition before and after the restraint was imposed, 

and the restraint's history, nature, and effect."ll3 

Although there are similarities between patent misuse and a violation of the antitrust laws, patent 

misuse is a broader violation, and thus may be found even where there is no antitrust violation. 114 

F. Unclean Hands 

The unclean hands doctrine provides that a court's equitable power "can never be exerted on 

behalf of one who has acted fraudulently, or who by deceit or any unfair means has gained an 

advantage." 11 5 Courts will only apply the doctrine when it has been shown that the inequitable 

conduct bears "an immediate and necessary relation to the equity" that the patent holder seeks in 

litigation. 116 Unclean hands must be proven by clear and convincing evidence. 117 

IV. The '485 Patent 

A. Overview 

Thirteen claims of the '424 patent are asserted against Respondents, namely independent 

claims 1 and 32, along with dependent claims 3, 4, 18, 19,23,24,29,33,36,37, and 41. These 

claims read as follows: 

113 Virginia Panel, 133 F.3d at 868. 

114 Monsanto Co. v. Scruggs, 459 F.3d 1328, 1339 (Fed. Cir. 2006) ("Scruggs"). 

115 Keystone Driller Co. v. General Excavator Co., 290 U.S. 240,245 (1933) ("Keystone"). 

116 Certain Home Vacuum Packaging Products, 337-TA-496, 2004 WL 1082507, Notice at 

88-89 (March 2004) ("Certain Home Vacuum Packaging"); see also Precision Instrument Mfg., Co. 

v. Automotive Maint. Mach. Co., 324 U.S. 806,815 (1945) ("Precision Instrument"). 

117 In re Omeprazole Patent Litigation, 483 F.3d 1364, 1374 (Fed. Cir. 2007) 

("Omeprazole"). 

30 
1. A method of producing a tested semiconductor device comprising: providing a probe card 

assembly, said probe card assembly including a probe card having a plurality of electrical 

contacts, a probe substrate having a plurality of elongate, resilient probe elements, and a 

compliant interconnection structure electrically connecting ones of said electrical contacts 

with ones of said probe elements; providing a plurality of semiconductor devices, each of 

said semiconductor devices including electrical contact pads; bringing said probe elements 

into contact with said electrical contact pads of said semiconductor device; and testing said 

semiconductor devices. 

3. The method of claim 1, wherein said plurality of semiconductor devices are in wafer form. 

4. The method of claim 1, wherein said method of producing a tested semiconductor device 

further comprises the step of dicing said wafer to singulate said semiconductor devices. 

18. The method of claim 1 further comprising aligning tips of said probe elements by altering 

an orientation of said probe substrate with respect to said probe card. 

19. The method of claim 18 wherein said altering comprises moving a moveable element 

disposed so as to affect an orientation of said probe substrate with respect to said probe card. 

23. The method of claim 19, wherein moving said moveable element in a first direction causes 

at least a portion of said probe substrate to move toward said probe card. 

24. The method of claim 23, wherein moving said moveable element in a second direction 

allows at least a portion of said probe substrate to move away from said probe card. 

29. The method of claim 1, wherein said probe substrate comprises a space transformer. 

32. A method of producing a tested semiconductor device comprising: providing a probe card 

comprising a plurality of electrical contacts; providing a probe substrate moveably affixed 

to said probe card and comprising a plurality of elongate, resilient probe elements, ones of 

said elongate resilient probe elements being in electrical communication with ones of said 

electrical contacts; aligning tips of said probe elements by altering an orientation of said 

probe substrate with respect to said probe card; providing a semiconductor device; bringing 

said tips into contact with said semiconductor device; and testing said semiconductor device. 

33. The method of claim 32, wherein said altering comprises moving a moveable element 

disposed so as to affect an orientation of said probe substrate with respect to said probe card. 

36. The method of claim 33, wherein moving said moveable element in a first direction causes 

at least a portion of said probe substrate to move toward said probe card. 

37. The method of claim 36, wherein moving said moveable element in a second direction 

allows at least a portion of said probe substrate to move away from said probe card. 

31 
41. The method of claim 32, wherein said probe substrate comprises a space transformer. 

As noted above, the undersigned has already construed the above claims in a Markman 

order. 118 A summary of the claims construed in that order is detailed below: 

Claim Term Construction 

Claim 1 providing a probe card assembly placing or installing a probe card assembly 

Claim 1 probe card electronic component having a plurality of contact 

areas disposed on a surface thereof 

Claim 1 probe substrate electronic carrier 

Claim 1 elongate, resilient probe interconnection elements 524 having greater length 

elements than width that exhibit primarily elastic behavior in 

response to an applied load or contact force 

Claim 1 compliant interconnection a compliant structure to electrically connect ones of 

structure electrically connecting said electrical contacts with ones of said probe 

ones of said electrical contacts elements 

with ones of said probe elements 

Claim 1 compliant exhibiting both elastic and plastic behavior in 

response to an applied load or contact force 

Claim 1 ones more than one 

Claim 18 aligning tips of said probe plain meaning 

elements by altering an 

orientation of said probe 

substrate with respect to said 

probe card 

Claim 19 [moving a] moveable element a moveable mechanism capable of altering the 

disposed so as to affect an orientation of the probe substrate with respect to the 

orientation of said probe probe card 

substrate with respect to said 

probe card 

and 

moveable element 

Claim 29 space transformer an interconnect assembly that makes interconnections 

from one pitch to another pitch 

Claim 32 providing a probe card placing or installing a probe card 

118 See Order No. 37 (January 23,2009). 

32 
Claim 32 moveably affixed to said probe secured in a manner to permit movement of the probe 

card substrate from one fixed position to another fixed 

position relative to the probe card 

B. Infringement 

1. Phicom - In General 

FormFactor asserts that Phicom's accused MEMS cards are custom-made probe card 

assemblies with no other use than for producing a tested semiconductor device, as described in the 

'485 patent. According to FormFactor, Phi com makes, offers for sale, sells to, and supports its 

accused products for semiconductor manufacturers, that, in turn, use these products in their intended 

manner which necessarily infringes the '485 patent. Specifically, FormFactor asserts that 

semiconductor device makers using Phicom Type A, B, C, and D MEMS cards to produce tested 

semiconductor devices infringe the asserted claims of the '485 patent literally or under the doctrine 

of equivalents. 119 

FormFactor asserts that Phicom MEMS cards [ ] includes all of the claimed 

elements of the probe card assembly disclosed in the '485 patent, including: 

• a printed circuit board or "PCB," which satisfies the "probe card" limitation; 120 

• a space transformer called a Micro Probe Head or "MPH," which satisfies the "probe 

substrate" limitation. , 121 

119 CIB 3-4 citing JX-48C (Provost Dep) at 50; CX-732C (Howe Direct) at 34. 

120 CIB 5 citing CX-580C (Diagram); CX-732C (Howe Direct) at 36; CX-580C (Diagram); 

JX-39C (Hwang Dep) at 26; CX-760C (Howe Supplemental) at 8; Taber, Tr. 1565-66, 1568-69; 

Hwang, Tr. 1369-71. 

121 CIB 5 citing CX-580C (Diagram); CFF 392-397,501-504. 

33 
• a Micro Probe spring, which satisfies the "elongate, resilient probe elements" limitation; 122 

• a New Interface Pin or "NIP," which satisfies the "compliant interconnection structure" 

limitation; 123 and 

• planarization mechanisms, which satisfies the "moveable element" limitation. 124 

Phicom asserts that FormFactor has not met its burden of proving any direct infringement 

of the asserted claims because there is no evidence that any of Phicom' s customers performs all of 

the asserted claim steps. Phicom assets that FormFactor's only allegations of direct infringement 

by a Phicom customer relate to the previous use by [ 

a. Direct Infringement 

(1) Claim 1 

FormFactor asserts that any use of a Phi com type A, B, C, and D MEMS card to produce a 

tested semiconductor device infringes claim 1 of the '485 patent. According to FormFactor, the 

evidence shows that [ ] produced DRAM devices using Phicom MEMS cards, thereby 

practicing all the steps in claim 1 of the '485 patent, as detailed above. 126 Furthermore, FormFactor 

asserts that [ ] installed MEMS cards into its testers, provided wafers containing the 

semiconductor devices to be tested, and that by bringing Phicom's Micro Probes into contact with 

122 CIB 5 citing JX-41 C (Jeong Dep) at 40-41; CX-26C (Phicom IR Presentation); CX-653C 

(Pictures from Howe Report); CX-146C (PowerPoint Presentation); JX-39C (Hwang Dep) at 32; 

CX-147C (MEMS card document); CFF 403, 405-412. 

123 CIB 6 citing JX-3 ('485 patent) at 12; CFF 397, 414-417, 419, 425, 427-429, 434-436, 

440,443-444,458-459,464. Alternatively, FormFactor asserts that if NIPs do not literally infringe, 

they infringe under the doctrine of equivalents. CIB 6-7. 

124 CIB 7 citing CFF 502-505, 1128. 

125 RIB 19 citing RFF LB.2.14. 

126 CIB 7-8 citing CFF 363-366, 381. 

34 
the electrical contact pads of the semiconductor devices, [ ] tested the semiconductor devices. 127 

Phicom asserts that its customers do not infringe independent claim 1, along with dependent 

claims 3, 4, 18, 19,23,24, and 29 because the probe card assemblies do not include a "compliant 

interconnection structure" or "probe card.,,128 Specifically, Phicom asserts that, under the 

undersigned's claim construction of the term "compliant," its probe cards do not infringe because 

the Phicom PCB and MPH are connected by a plurality of interface pins (NIPs), which are not 

"compliant." According to Phi com, the NIPs are designed to maintain their resilience and do not 

show any plastic properties. Phicom asserts that it does not want the NIPs to exhibit any plasticity 

and that tests confirm that, under normal operating conditions, the NIPs do not plastically deform. 129 

Phicom also asserts that the claim requires the "complaint interconnection structure" to 

"electrically connect[] ones of said electrical contacts with ones of said probe elements," which the 

undersigned construed as "a compliant structure to electrically connect more than one of said 

electrical contacts with more than one of said probe elements." According to Phicom, its assembly 

has no such single structure that electrically connects contacts of the PCB to the probe elements of 

the MPH. Rather, Phicom asserts that there are a plurality of NIPs with each NIP individually 

providing communication between one socket in the Phicom PCB and on the MPH. 130 

Furthermore, Phicom asserts that independent claims 1 and 32 both require the assembly to 

include a "probe card having a plurality of electrical contacts," which the undersigned construed as 

"an electronic component having a plurality of contact areas disposed on a surface thereof." Phicom 

127 CIB 8 citing CFF 364-366, 494-495. 

128 RIB 21 citing RFF IV.B.4-01-58. 

129 RIB 21-21 citing RFF IV.B.4.25-52. 

130 RIB 22-23 citing RFF IV.B.4. 25,48-52. 

35 
argues that its PCB does not include contact areas disposed on its surface that electrically contact the 

NIPs. Rather, Phicom asserts that each NIP is inserted into a socket that is inside the PCB, not on 

its surface.131 

Staff agrees with FormFactor that the evidence shows that Phicom's Type A and D probe 

card assemblies, and its old Type B and C probe card assemblies [ ] directly 

infringe claims 1, 3,4, and 29 ofthe '485 patent. Staff also agrees with FormFactor that the these 

probe card assemblies also indirectly infringe claims 1,3,4, and 29 of the '485 patent.132 According 

to Staff, Phicom's non-infringement argument centers around the "compliant interconnection 

structure electrically connecting ones of said electrical contacts with ones of said probe elements" 

and "probe card" limitations. 

With regard to the "compliant" limitation, Staff asserts that the testimony of Mr. Hwang 

establishes that the NIPs satisfy the "compliant" limitation because his testimony that NIPs are 

purely elastic is not credible. 133 As Phicom's expert, Mr. Taber, relies heavily on Mr. Hwang's 

testimony, Staff asserts that Mr. Taber's testimony as to the elasticity of NIPs also lacks 

credibility.134 Staff relies on Dr. Howe's testimony in support. 135 

As to Phi com 's argument that Phicom' s probe card assemblies do not satisfy the "compliant" 

limitation because there is no single structure that connects all of the contacts to all of the probe 

131 RIB 23 citing RFF IV.B.4.04-07, 09-24. 

132 SIB 22-23. 

133 SIB 23-26 citing Hwang, Tr. 1354-54, 1373-78 and JX-39C (Hwang Dep) at 35 compare 

with RX-413 (Hwang Rebuttal) at QIA 13; RX-381C (Hwang Direct) at Q/A 77-83; and Hwang, 

Tr. 1418-19. 

134 SIB 27 citing RX-418C (Taber Supplemental Rebuttal) at Q/A 13-18; RX-415C (Taber 

Rebuttal) at QIA 103-05. 

135 SIB 27 citing CX-760C (Howe Supplemental) at Q/A 15-18. 

36 
elements, Staff asserts that while NIPs are individual pins, it does not necessarily follow that they 

cannot, collectively, be an "interconnection structure" because there is nothing in the undersigned's 

claim construction that requires the "interconnection structure" to be a "singular" structure. 

Furthermore, Staff asserts that construing the "interconnection structure" to be a "singular" structure 

would exclude the preferred embodiment.136 Staff also cites to Dr. Howe's testimony in support. 137 

With regard to the "probe card" limitation, Staff asserts that Phicom's interpretation, which 

is that the "probe card" limitation requires the electrical contact areas to be on the "top" surface, as 

opposed to on "a" surface of the printed circuit board contained within a socket, is unsupported 

because the undersigned's claim construction makes no indication that "surface" must be on "top." 

Accordingly, Staff asserts that Phicom's probe card assemblies meet the "probe card" limitation. 

Staff cites to Mr. Hwang's testimony in support.138 

Finally, Staff submits that there is circumstantial evidence that Hynix Eugene used Phi com 's 

Type A and D MEMS Cards and its old Type B and C MEMS Cards to practice, and therefore, 

directly infringe claims 1,3,4, and 29.139 

F ormF actor counters Phi com 's non-infringement arguments. First, as to Phi com 's argument 

that the NIPs do not meet the "compliant interconnection structure" limitation, FormFactor asserts 

that Phicom' s witness admitted that "depending upon the conditions under which [the NIP] is used, 

sometimes plastic deformation may occur," indicating that NIPs fall within the undersigned's claim 

136 SIB 28 citing JX-3 (the '485 patent) at Fig. 3A, col. 20:66-21 :8. 

137 SIB 28-29 citing CX-732C (Howe Direct) at Q/A 97, 237. 

138 SIB 29-30 citing Hwang, Tr. 1372; CX-732 (Howe Direct) at Q/A 96-105, 112-114. 

139 SIB 30 citing CX-732C (Howe Direct) at QI A 96. 

37 
construction of the term "compliant.,,140 Furthermore, FormFactor cites to Dr. Howe's testimony 

that, depending on how the NIPs are inserted into the PCB sockets, the tilt of the NIP can cause the 

tip of the NIP to offset from the intended position and result in a deformation of the NIP. 141 Finally, 

FormFactor asserts that Phicom's single structure argument, which was presented during the 

Markman hearing and rejected, should be rejected. 142 

Second, as to Phicom's argument that the PCB does not meet the "probe card" limitation, 

F ormFactor asserts that, since the undersigned's claim construction does not require the contact areas 

be disposed on the top surface of the PCB, it therefore does not exclude a surface within a socket.143 

FormFactor also asserts that the PCB's surface area around the socket holes contains gold plated 

conductive material that extends all the way down to the sockets. 144 

Phicom, in reply, asserts that, while FormFactor has had an actual sample of Phi com's probe 

card assembly and the opportunity to perform tests to establish whether the NIPs in actual use are 

"compliant," FormFactor has produced no such testing results or evidence that the NIPs are 

"compliant." Rather, FormFactor merely relies on a theory that the NIPs are capable of being 

compliant. 145 Furthermore, Phicom asserts that FormFactor's theory is based on a NIP that is bent, 

but that FormFactor has not presented any evidence that a NIP was bent during use in the U.S. 146 

Phicom counters Staffs arguments that Mr. Hwang's testimony is not credible. First, 

Phicom asserts that Mr. Hwang's testimony on the hypothetical use of a NIP does not change or 

140 CRB 1 citing Hwang, Tr. 1353-54. 

141 CRB 2 citing CX-751 C (NIP Characteristics); CX-760C (Howe Supplemental) at QI A 15. 

142 CRB 2. 

143 CRB 2. 

144 CRB 2-3 citing CX-580C (Diagram); CFF 382-391. 

145 RRB 3. 

146 RRB 4 citing RRCFF 425, 443, 444. 

38 
discredit his testimony. Phicom asserts that Mr. Hwang was just making a truthful acknowledgment 

of the undisputed fact that NIPs can theoretically be deformed plastically. Second, Phicom asserts 

that if Mr. Hwang's testimony is deemed as not being credible, then FormFactor cannot possibly 

carry its burden based on such testimony. Finally, Phicom asserts that Mr. Hwang's testimony 

neither strengthens or weakens the credibility of either party's experts.147 

Phi com also counters Staff s argument regarding a singular interconnect structure. 

According to Phicom, while Staff asserts that requiring a single interconnect structure would exclude 

the preferred embodiment, such as in Figure 3A, Phicom counters that the interposer in Figure 3A, 

along with every other embodiment, is described and illustrated as a single structure made of a 

substrate to which a plurality of interconnectors are mounted. Phicom asserts that, because its 

assemblies have no such single structure, it does not infringe the '485 patent. 148 

Phicom also counters Staff s arguments that Phi com ' s contacts are on the surface. According 

to Phicom, Staff maintains that if the contacts are in the socket, they are still considered to be on the 

"surface." While Phicom disagrees with such a construction, Phicom asserts that there is still no 

infringement because there is still no "plurality of contact areas disposed on [that] surface.,,149 

Phicom also counters FormFactor's argument that the small lips of the sockets meet this claim 

limitation with Mr. Taber's testimony. 150 

The undersigned finds the arguments of Phi com to be persuasive and that FormFactor has 

failed to prove, by a preponderance of the evidence, that Phicom's probe card assemblies meet each 

147 RRB 5-6. 

148 RRB 6. 

149 RRB 6-7. 

150 RRB 7 citing RFF IV.B.4.01-4.24. 

39 
and every limitation of claim 1 of the '485 patent. Specifically, FormFactor has failed to show that 

the NIPs in Phicom's probe card assemblies meet the "compliant" limitation because there is no 

evidence that the NIPs exhibit plastic behavior during normal operating use. The only evidence that 

FormFactor provides in support of infringement is a theory by Dr. Howe that the NIPs are capable 

of being plastically deformed. There is no evidence that any such deformation has taken place, as 

no tests were performed on the NIPs. As to Mr. Hwang's testimony, the undersigned finds that his 

testimony is not inconsistent, as the questions relied upon by FormFactor to discredit his testimony 

were hypothetical in nature and neither strengthen nor weaken the credibility of either party's 

experts. 

As to Phicom's remaining non-infringement arguments, the undersigned agrees with 

FormFactor and Staff that, there is nothing in the undersigned's claim construction that requires the 

"interconnection structure" to be a "singular" structure, or that "surface" must be on "top." 

Accordingly, Phicom's remaining non-infringement arguments are hereby rejected. 

In conclusion, Phicom's products do not infringe claim 1 of the '485 patent. 

(2) Claim 3 

FormFactor asserts that the additional limitation in claim 3 is a wafer requirement. 151 

F ormF actor argues that [ ] produced DRAM devices using Phi com MEMS cards and 

tested the devices on wafers. 152 

As the undersigned has already ruled above that FormFactor has failed to show, by a 

preponderance of the evidence, that Phi com 's probe card assemblies meet each and every limitation 

151 CIB 8 citing JX-3 (the '485 patent) at col. 36. 

152 CIB 8 citing JX-48C (Provost Dep) at 50-51; CFF 496-498. 

40 
of claim 1 of the '485 patent, the undersigned also finds that FormFactor has failed to show, by a 

preponderance of the evidence, that Phicom's probe card assemblies infringe claim 3. 

(3) Claim 4 

FormFactor asserts that the additional limitation in claim 4 is dicing the wafer to singulate 

the semiconductor devices. 153 FormFactor argues that after a semiconductor manufacturer tests a 

wafer using a Phi com type A, B, C, and D MEMS card, the wafers are diced or cut to singulate the 

individual tested semiconductor devices. Furthermore, FormFactor asserts that the only use of a 

tested semiconductor wafer tested using the Phicom type A, B, C, or D MEMS probe card occurs 

after its subsequent singulation. 154 

As the undersigned has already ruled above that FormFactor has failed to show, by a 

preponderance ofthe evidence, that Phicom' s probe card assemblies meet each and every limitation 

of claim 1 of the '485 patent, the undersigned also finds that FormFactor has failed to show, by a 

preponderance of the evidence, that Phicom's probe card assemblies infringe claim 4. 

(4) Claim 18 

F ormFactor asserts that the additional limitation in claim 18, namely "aligning tips of said 

probe elements by altering an orientation of said probe substrate with respect to said probe card" is 

present in Phicom's Type A, B, C and D MEMS Cards because all of these cards have planarization 

mechanisms that include adjusting bolts employed to align the probe element tips by altering the 

orientation of the MPH with respect to that of the PCB. 155 Furthermore, F ormF actor asserts that once 

implemented, the planarizing mechanisms in the MEMS Cards continue to alter the orientation of 

153 CIB 8 citing JX-3 (the '485 patent) at col. 36. 

154 CIB 8 citing CFF 494-500. 

155 CIB 8-9 citing CFF 502-504. 

41 
the MPH with respect to that of the PCB throughout their useful lives, or until another adjustment. 

Therefore, FormFactor asserts that when [ ] installs Phicom's MEMS Cards, they continue to 

employ this limitation. 156 

As to when a Phicom MEMS Card requires readjustment for various reasons, such as wear, 

insertion into a new test assembly, or repair, F ormFactor asserts that the altering of orientation is also 

performed at the facilities of the semiconductor manufacturers. 157 According to FormFactor, 

Phi com 's assertion that Phicom is the only entity who uses the adjusting screw or planarization 

mechanism is contrary to fact. Furthermore, F ormF actor asserts that whether it is the customer itself 

or Phicom that adjusts the MEMS Card, the step of altering the orientation of the probe substrate is 

clearly performed. 158 

As to Phicom's assertion of "divided infringement," FormFactor asserts that such a defense 

should be rejected because when the actions of more than one party combine to perform every step 

of a claimed method, the claim is infringed if "one party exercises 'control or direction' over the 

entire process. 159 According to FormFactor, Phicom is performing the tip alignment on behalf of its 

customer, at the customer's direction. 160 

Phi com asserts that alignment of Phi com's probe card assembly is not a customer activity 

because Phicom performs alignment of its probe card assemblies at its factory in Korea before the 

156 CIB 9 citing CFF 517. 

157 CIB 9 citing CFF 506-07. 

158 CIB 9 citing CFF 507-509, 511, 514, 515. 

159 CIB 10 citing Muniauction, 532 F.3d at 1329; Certain GPS Devices and Prods. 

Containing Same, Inv. No. 337-TA-602 (Comm. Op. January 27,2009) ("Certain GPS"). 

160 CIB 10. 

42 
PCB is shipped to the customer. 161 Phicom also asserts that it has taken steps to prevent customers 

from having access to alignment features, such as plates that are held in place by special screws that 

require a special tool and covered with a Loctite seal. Phicom asserts that these have been used for 

all probe assemblies since 2006. According to Phicom, FormFactor has not shown that any Phicom 

customer performs any adjustment of Phicom probe card assemblies with the secured and sealed 

cover plates.162 Therefore, Phicom asserts that it does not infringe claims 18, 19, 23, and 24.163 

Staff asserts that the evidence does not show direct infringement of claims 18, 19, 23, 24, 32, 

33, 36, 37, and 41.164 Specifically, Staff asserts that, while there is conflicting evidence, the 

preponderance of the evidence does not show that either Phi com [ ] to be the 

"mastermind" over the actions of the other. 165 

FormFactor counters Phicom's non-infringement argument that the "aligning" step is not 

performed by the semiconductor manufacturers because there is no dispute that the MEMS cards go 

through the aligning step prior to their shipment from Phicom' s Korean factory, which is done at the 

request and specification of the customers. 166 Furthermore, FormFactor asserts that there is evidence 

that customers have adjusted Phicom's MEMS cards on site, and that Phicom encourages such 

activities. 167 Alternatively, FormFactor asserts that when Phicom customers send their MEMS cards 

for readjustment, it is clear that the adjustment is performed on behalf of the customers. 168 

161 RIB 23 citing RFF IV.B.5.14-16, 34-35. 

162 RIB 24 citing RFF IV.B.5.19-23. 

163 RIB 23-24. 

164 SIB 32-33. 

165 SIB 32. 

166 CRB 3. 

167 CRB 4 citing CFF 506-509, 511, 514, 515. 

168 CRB 4 citing CFF 516, 512, CX-226C, CX-289C. 

43 
Phicom, in reply, asserts that regardless of whether any of Phicom's customers have 

performed the "altering" step, FormFactor has not proven that Phicom is guilty of any indirect 

infringement and that Phicom has undertaken numerous steps to prevent its customers from adjusting 

its probe card assemblies. 169 Phicom also counters FormFactor's "mastermind" theory and asserts 

that the evidence shows that Phicom shares an arms-length relationship with its customers. 170 

FormFactor is asserting a theory of ''joint'' direct infringement. The case law makes clear 

that suchjoint infringement is permissible. However, mere "arms-length cooperation" will not give 

rise to direct infringement. 171 The undersigned agrees with Phicom and Staff that FormFactor has 

failed to show, by a preponderance of the evidence, that there is direct infringement of claim 18 

because the evidence does not show that Phicom's customers are the "mastermind" or are in 

"control" over Phicom when adjustments are made to the probe card assemblies. Rather, the 

evidence shows that there is merely an arms-length relationship between Phicom and its customers. 

Accordingly, the undersigned finds that FormFactor has failed to show, by a preponderance of the 

evidence, that Phicom's probe card assemblies meet each and every limitation of claim 18 of the 

'485 patent, in addition to not meeting each and every limitation of claim 1 of the '485 patent. 

(5) Claim 19 

FormFactor asserts that the additional limitation of "said altering comprises moving a 

moveable element disposed so as to affect an orientation of said probe substrate with respect to the 

probe card" in claim 19 is practiced by Phicom's MEMS Cards. Specifically, FormFactor asserts 

that the adjusting bolts of the Phicom MEMS Card's planarization mechanisms are moveable 

169 RRB 7-8. 

170 RRB 7-8 citing RRCFF 505,512,516. 

171 Muniauction, 532 F.3d at 1329. 

44 
elements. 172 

As the undersigned has already ruled above that FormFactor has failed to show, by a 

preponderance of the evidence, that Phicom's probe card assemblies meet each and every limitation 

of claims 1 and 18 of the' 485 patent, the undersigned also finds that F ormF actor has failed to show, 

by a preponderance of the evidence, that Phicom's probe card assemblies infringe claim 19. 

(6) Claim 23 

FormFactor asserts that the additional limitation of "moving the moveable element in one 

or the other direction causes a portion of probe substrate to move toward the probe card" in claim 

23 is practiced by Phicom's MEMS Cards. Specifically, FormFactor asserts that turning the 

adjusting bolts in a clockwise direction causes the relevant portion of the probe substrate to move 

toward the probe card.173 

As the undersigned has already ruled above that FormFactor has failed to show, by a 

preponderance of the evidence, that Phicom's probe card assemblies meet each and every limitation 

of claims 1, 18, and 19 of the '485 patent, the undersigned also finds that FormFactor has failed to 

show, by a preponderance of the evidence, that Phicom's probe card assemblies infringe claim 23. 

(7) Claim 24 

FormFactor asserts that the additional limitation of "moving the moveable element in one 

or the other direction causes a portion of probe substrate to move away from the probe card" in 

claim 24 is practiced by Phicom's MEMS Cards. Specifically, FormFactor asserts that turning the 

adjusting bolts in a counterclockwise direction causes the relevant portion ofthe probe substrate to 

172 CIB 11 citing CFF 518-520. 

173 CIB 11 citing CFF 521. 

45 
move away from the probe card. 174 

As the undersigned has already ruled above that FormFactor has failed to show, by a 

preponderance of the evidence, that Phicom's probe card assemblies meet each and every limitation 

of claims 1, 18, 19, and 23 of the '485 patent, the undersigned also finds that FormFactor has failed 

to show, by a preponderance ofthe evidence, that Phicom's probe card assemblies infringe claim 24. 

(8) Claim 29 

FormFactor asserts that the additional limitation of a "space transformer" in claim 29 is 

practiced by Phicom's MPH. Specifically, FormFactor asserts that Phicom's probe substrate is a 

ceramic substrate with terminals disposed at a first pitch on one surface and corresponding terminals 

disposed at a second pitch on the opposite surface. 175 

As the undersigned has already ruled above that FormFactor has failed to show, by a 

preponderance of the evidence, that Phicom's probe card assemblies meet each and every limitation 

of claim 1 of the '485 patent, the undersigned also finds that FormFactor has failed to show, by a 

preponderance of the evidence, that Phicom's probe card assemblies infringe claim 29. 

(9) Claim 32 

FormFactor asserts that claim 32 has many limitations that overlap with claims 1 and 18, 

including a "probe card" containing electrical contacts; a "probe substrate" "moveably affixed" to 

the probe card; "elongate, resilient probe elements" on the probe substrate being in electrical 

communication with t~e electrical contacts; and alignment of tips of the probe elements by altering 

an orientation of the probe substrate with respect to the probe card. According to FormFactor, 

174 cm 11 citing CFF 52l. 

175 cm 11-12 citing CX-653C (Pictures from Howe Report); CFF 522-525. 

46 
Phicom's Type A, B, C, and D MEMS Cards include all these elements. 176 Furthermore, FormFactor 

asserts that [ ] produced DRAM devices using Phicom's MEMS Cards, thereby 

practicing each and every element of claim 32.177 

Phicom asserts that claims 32,33,36,37, and 41 include similar claim limitations as those 

in dependent claims 18, 19, 23, and 29, therefore these claims do not infringe for the same reasons. 

Specifically, as to claim 32, Phicom asserts that Phicom's PCB does not have a plurality of contacts 

on its surface, nor is there any proof that the "altering an orientation" limitation in claims 32, 33, 36, 

37, and 38 are practiced by any of Phicom's customers who have received Phicom's probe 

assemblies with cover plates made and sold since 2006.178 

As the parties have not presented any new arguments as to claim 32 with regard to the claim 

limitations "probe card," "probe substrate," "moveably affixed," and "elongate, resilient probe 

elements," and the undersigned has already found that FormFactor has failed to show, by a 

preponderance ofthe evidence, that Phicom's probe card assemblies meet each and every limitation 

of claims 1 and 18 ofthe '485 patent, the undersigned also finds that FormFactor has failed to show, 

by a preponderance of the evidence, that Phicom's probe card assemblies infringe claim 32 for the 

same reasons. 

(10) Claim 33 

F ormF actor asserts that the additional limitation of "altering of orientation comprises moving 

a moveable element" in claim 33 is practiced by Phicom's MEMS Cards. Specifically, FormFactor 

asserts that Phicom's MEMS Card includes adjusting bolts that are rotated in order to alter 

176 CIB 12 citing CFF 528-31; CX-580C (Diagram); CX-185C (Job Procedure Form). 

177 CIB 13 citing CFF 532. 

178 RIB 24. 

47 
orientation of the probe substrate with respect to the probe card.179 

As the undersigned has already ruled above that FormFactor has failed to show, by a 

preponderance ofthe evidence, that Phicom's probe card assemblies meet each and every limitation 

of claim 32 of the '485 patent, the undersigned also finds that FormFactor has failed to show, by a 

preponderance of the evidence, that Phicom's probe card assemblies infringe claim 33. 

(11) Claim 36 

FormFactor asserts that the additional limitation of "moving the moveable element in one 

or the other direction causes a portion of probe substrate to move toward the probe card" in claim 

36 is practiced by Phicom's MEMS Cards. Specifically, FormFactor asserts that Phicom's MEMS 

Cards have planarizing mechanisms that cause the relevant portion of the probe substrate to move 

toward the probe card by turning the adjusting bolts in a clockwise direction. 180 

As the undersigned has already ruled above that FormFactor has failed to show, by a 

preponderance of the evidence, that Phicom's probe card assemblies meet each and every limitation 

of claims 32 and 33 of the '485 patent, the undersigned also finds that FormFactor has failed to 

show, by a preponderance of the evidence, that Phicom's probe card assemblies infringe claim 36. 

(12) Claim 37 

FormFactor asserts that the additional limitation of "moving the moveable element in one 

or the other direction causes a portion of probe substrate to move away from the probe card" in 

claim 37 is practiced by Phicom's MEMS Cards. Specifically, FormFactor asserts that Phicom's 

MEMS Cards have planarizing mechanisms that cause the relevant portion of the probe substrate to 

179 CIB 13 citing CFF 534. 

180 CIB 13 citing CFF 535-537. 

48 
move away from the probe card by turning the adjusting bolts in a counterclockwise direction. 181 

As the undersigned has already ruled above that FormFactor has failed to show, by a 

preponderance of the evidence, that Phicom's probe card assemblies meet each and every limitation 

of claims 32, 33, and 36 of the '485 patent, the undersigned also finds that FormFactor has failed to 

show, by a preponderance of the evidence, that Phicom's probe card assemblies infringe claim 37. 

(13) Claim 41 

FormFactor asserts that the additional limitation of "space transformer" in claim 41 is 

practiced by Phicom's MEMS Cards. Specifically, FormFactor asserts that Phicom's MEMS Cards 

include a space transforming probe substrate in the form of an MPH, which is a ceramic substrate 

with terminals disposed at a first pitch on one surface and corresponding terminals disposed at a 

second pitch on the opposite surface. 182 

As the undersigned has already ruled above that FormFactor has failed to show, by a 

preponderance of the evidence, that Phicom's probe card assemblies meet each and every limitation 

of claim 32 of the '485 patent, the undersigned also finds that FormFactor has failed to show, by a 

preponderance ofthe evidence, that Phicom's probe card assemblies infringe claim 41. 

b. Indirect Infringement 

(1) Contributory Infringement 

In support of its assertion of indirect infringement, FormFactor asserts that Phi com has had 

knowledge of the '485 patent since at least December 2007, which is when this investigation was 

instituted, and that Phi com has continued infringing the '485 patent by importing the accused 

181 cm 13 citing CFF 535-537. 

182 CIB 13 citing CFF 538. 

49 
products into the U.S. 183 Furthermore, FormFactor asserts that Phicom has affirmatively and actively 

engaged with its customers in designing, building, using, and repairing the custom-made accused 

products that have no non-infringing uses. 184 

[ 

Phi com asserts that because FormFactor has not proved direct infringement, it cannot prove 

contributory infringement. Phicom also asserts that FormFactor has failed to prove that Phicom 

knew that its probe card assembly was especially made or adapted for use in a manner that would 

infringe the' 485 patent. Furthermore, Phicom asserts that it does not have the requisite knowledge, 

as it asserts that its probe cards do not infringe. According to Phicom, its MEMS probe card 

assemblies include a plurality of elastic NIPs to interconnect the MPH and PCB, do not use an 

interposer, and use cover plates, special screws, and Loctite to prevent access to planarization 

screws. 186 

The undersigned agrees with Phicom that, because FormFactor has not proven direct 

infringement, it cannot prove contributory infringement. Accordingly, FormFactor has failed to 

show that Phicom contributorily infringes the asserted claims of the '485 patent. 

(2) Induced Infringement 

Phicom asserts that because FormFactor has not proved direct infringement, it cannot prove 

183 CIB 4 citing CFF 363-367. 

184 CIB 4 citing CX-144C (User Guide), CX-289C (MEMS Order Form), CX-313C (DC 

512M DDR2 63 DUT), JX-48C (Provost Dep). 

185 CIB 4 citing CX-570C (E-mail).CX-235C (Indemnification Agreement), and CFF 369-

378. 

186 RIB 25. 

50 
induced infringement. Phicom also asserts that FormFactor has failed to prove that Phicom actively 

took steps to cause a customer to practice the claimed methods, or that it do so with the requisite 

intent to cause infringement. According to Phicom, it has taken active steps to avoid infringement 

of the asserted patents. Phicom argues that FormFactor has failed to identify any specific steps that 

Phicom has taken that induce its customers to infringe the' 485 patent. 187 

The undersigned agrees with Phicom that, because FormFactor has not proven direct 

infringement, it cannot prove induced infringement. Accordingly, FormFactor has failed to show 

that Phicom induces infringement of the asserted claims of the '485 patent. 

c. Phicom's New Design 

FormFactor asserts that Phicom's MEMS Card with the new design of a "fixed center bolt" 

infringes all of the asserted claims of the '485 patent because the center bolt is the only difference 

between the new design and the old design. According to FormFactor, the fixed center bolt does 

nothing to change infringement. 188 

Phicom asserts that its new design has all the components and structures of the earlier Type 

C probe card, except that it has a fixed center bolt in place of an adjustable center bolt. According 

to Phicom, this change does not have any effect upon the infringement analysis with respect to the 

'485 patent. 189 

Staff asserts that, because Phicom's new Type B and C probe card assemblies have not yet 

been imported into the United States, FormFactor cannot establish that such probe card assemblies 

187 RIB 25-26. 

188 CIB 14 citing CFF 963-985, 539; CRB 4-5. 

189 RRB 8. 

51 
have been used in the United States to directly infringe any asserted claim of the '485 patent. 190 

Furthermore, Staff asserts that there is no evidence, other than circumstantial evidence, that any of 

the new Type B and C probe card assemblies has actually been used to test semiconductors, which 

is required to directly infringe either claims 1 or 32 the' 485 patent. 191 

As the parties have not presented any new arguments as to Phicom's MEMS Card with the 

new design of a "fixed center bolt," and the undersigned has already found that FormFactor has 

failed to show, by a preponderance of the evidence, that Phicom's probe card assemblies meet each 

and every limitation of the asserted claims of the '485 patent, the undersigned also finds that 

FormFactor has failed to show, by a preponderance of the evidence, that Phicom's new probe card 

assemblies with a "fixed center bolt" meet each and every limitation of the asserted claims for the 

same reasons. 

2. Micronics - In General 

FormFactor asserts that Micronics' U-Probes, [ ] 

practice the claimed invention. Furthermore, FormFactor asserts that because Micronics makes, 

offers for sale, sells to, and supports its accused products for semiconductor manufacturers, that, in 

turn, use these products in the intended manner, the '485 patent is necessarily infringed. 192 

According to F ormF actor, [ ] semiconductor manufacturers in the U.S. have used 

Micronics' U-Probe cards to produce tested semiconductor devices [ 

] 

190 SIB 33 citing Certain Acesulfame Potassium and Blends and Products Containing Same, 

Inv. No. 337-TA-403, Final Initial Determination (March 1999) ("Certain Acesulfame"). 

191 SIB 33-34 citing Hwang, Tr. 1327-31 and Lucent Techs. Inc. v. Gateway, Inc., 543 F.3d 

710, 723-24 (Fed. Cir. 2008) ("Lucent"). 

192 CIB 14 citing CFF 542-544. 

52 
[ 

F ormF actor asserts that [ ] are Micronics' customers that 

directly infringe the '485 patent. Specifically, FormFactor asserts that these customers install UProbes into the testers, provide wafers containing a plurality of semiconductor devices, and by 

bringing Micronics' U-Probes' probe elements into contact with the devices under test, the 

customers test the semiconductor devices. 194 According to FormFactor, the U-Probes include: 

[ 

Furthermore, FormFactor asserts that the [ ] have a plurality of electrical contacts. 196 

F ormF actor asserts that [ 

] 

193 CIB 14-15 citing CFF 545-558, JX-57C (Kim Dep), JX-52C (Gatzemeier Dep), JX-45C 

(McBride Dep), and JX-60C (Kovit Dep). 

194 CIB 15 citing CFF 552-58. 

195 CIB 15 citing CFF 560-62. 

196 CIB 15 citing CFF 563. 

197 CIB 15-16 citing CFF 565. 

53 
[ 

FormFactor asserts that the elongate, resilient probe elements in Micronics' V-Probes are [ 

]199 According to FormFactor, the [ ] cannot function 

properly if they were to exhibit significant inelastic behavior.20o 

FormFactor asserts that the compliant interconnection structure in Micronics' V-Probes is 

[ 

201 

202 

In the alternative, FormFactor asserts that the [ ] infringe the asserted claims of the 

'485 patent under the doctrine of equivalents. According to F ormFactor, the [ 

same function [ 

] in substantially the same way [ 

198 CIB 16 citing CFF 660 

199 CIB 16 citing CFF 567-571. 

200 CIB 16 citing CFF 575. 

201 CIB 16 citing CFF 578-82. 

202 CIB 16 citing CFF 585-87. 

203 CIB 16-17. 

] to achieve the same result [ 

54 

] perform the 

] 
[ ] In support, FormFactor asserts 

that one of ordinary skill in the art would have known that the interposer could be interchanged with 

other resilient structures.204 

As to the "moveable element" limitation, FormFactor asserts that Micronics' V-Probes have 

[ 

] According to F ormF actor, the altering of the orientation requirement 

is satisfied with just a first-order planarization involving tilting of the probe substrate.205 

a. Direct Infringement 

(1) Claim 1 

FormFactor asserts that the evidence shows that [ ] V.S. semiconductor 

manufacturers using Micronics' V-Probes practice each and every step of claim 1 ofthe '485 patent. 

According to FormFactor these Micronics' customers use the probe card assemblies to test multiple 

semiconductor devices in wafer form, as detailed above. 206 

Micronics asserts that it does not sell a probe card with a "compliant interconnection 

structure. ,,207 According to Micronics, [ ] of the V-Probe lack any plastic behavior in 

response to an applied load or force.208 Micronics counters FormFactor's infringement theory that 

Micronics' [ ] in a V-Probe might become compliant if used for a long time with high 

forces. According to Micronics, FormFactor has never identified a single instance where [ ] 

has become compliant in this manner. Micronics asserts that if[ 

204 CIB 17-18. 

205 CIB 18 citing CFF 593-95, 607-12. 

206 CIB 18 citing CFF 552-58. 

207 RIB 31 citing RFF IV.C.3.01. 

208 RIB 32 citing RFF IV.C.3.53. 

55 

] were to become compliant, 
the [ ] would no longer function as a "compliant interconnection structure" because they 

would cease to electrically connect. Therefore, Micronics asserts that it does not infringe claim 1 

of the '485 patent.209 Furthermore, Micronics asserts that it does not infringe under the doctrine of 

equivalents because FormFactor has failed to offer any contentions regarding "compliant" under the 

doctrine of equivalents.2lo 

Staff agrees with Micronics that FormFactor's affirmative evidence of the alleged plasticity 

in Micronics' [ ] is theoretical and speculative, and therefore not credible. Therefore, Staff 

asserts that FormFactor has not shown that Micronics' [ ] satisfy the "compliant 

interconnection structure" limitation because they are not "compliant.,,211 Staff asserts that the 

preponderance of the evidence does not show that Micronics'[ ] satisfy the "compliant" 

limitation, either literally or under the doctrine of equivalents. Accordingly, Staff asserts that 

Micronics does not infringe claims 1,3,4, 18, 19, and 29 of the '485 patent. 

F ormF actor counters Micronics arguments thatthe U -Probe [ ] are not "compliant." 

According to FormFactor, the[ ] are not completely elastic and exhibit plastic behavior as 

well. FormFactor asserts that Micronics is misconstruing the undersigned's claim construction and 

that compliant does not mean only plastic. As to Micronics' assertion that if its [ ] were 

compliant they would plastically deform and no longer function, FormFactor asserts otherwise 

because compliancy does not necessarily lead to a broken electrical connection. Specifically, 

F ormF actor asserts that Dr. Adler testified that [ ] 

209 RIB 26-27 citing RFF IV.C.3.29, 3.30, 3.05, 3.54. See also RIB 31-34 citing RX-925C 

(Pogo Pin Spec). 

210 RIB 34. 

211 SIB 35. 

56 
[ 

] Therefore, F ormF actor asserts that 

when the [ ] experience some plastic deformation, the electrical connection will remain 

intact unless the deformation [ ]212 In fact, 

FormFactor asserts that the fact that there are some broken electrical connections provides evidence 

that the [ ] exhibit plastic deformation.213 

As to the tests performed by Dr. Adler, FormFactor argues that the testing method was faulty 

because the testing environment did not simulate the operational environment of actual probe card 

usage. Furthermore, FormFactor asserts that, because Dr. Adler lost all but one [ ] used in 

his first test, his test results cannot be verified.214 Regardless, F ormF actor asserts that it is not relying 

on the failure of the [ ] as infringement. Rather, FormFactor points to the failure of the 

[ ] as reliable confirming evidence that the [ ] exhibit plastic behavior when 

operational. Therefore, FormFactor assert that the [ ] meet the definition of compliant. 215 

Staff counters F ormFactor' s arguments that there is any evidence to suggests that Micronics' 

[ ] exhibit plastic behavior when operational. And according to Staff, the evidence shows 

otherwise and that [ ] stay within the elastic regime during normal operation.216 Furthermore, 

Staff asserts that FormFactor overlooks the fact that the Micronics' probe card assemblies are new 

212 CRB 6 citing Adler, Tr. 2132. 

213 CRB 6. 

214 CRB 6 citing Adler, Tr. 2160-70. 

215 CRB 8. 

216 SRB 2 citing RX-861C (Adler Rebuttal) at Q/A 41; RX-857C (Inoue Rebuttal) at Q/A 

80,83. 

57 
and therefore have not been operating for a long time under abnormally high 10ads.217 

Micronics asserts that FormFactor is asserting new infringement theories, which should be 

rejected under Ground Rule. 8.2. Micronics asserts that FormFactor's argument that the initial 

installation and removal of bent or defective [ ] is evidence of plasticity is new and should 

be rejected on those grounds.2J8 As to the substance ofFormFactor's new theory, Micronics asserts 

that Dr. Adler has testified that plastic deformation is a permanent, non-reversible change in length 

and that[ 

Furthermore, Micronics asserts that CX -115, a document that F ormF actor relies upon, reinforces the 

opinions of Dr. Adler.220 

Micronics counters FormFactor's argument that the [ ] in the V-Probe are 

"compliant." According to Micronics, FormFactor's reliance on Dr. Howe's testimony is not 

supported by any evidence. Specifically, while Dr. Howe refers to certain unspecified measurements 

of the load-deflection curve of standard [ ] and the hypothetical effects of long term 

compression ofthe[ ] Micronics notes that these measurements are not in evidence because 

they were specifically excluded by the undersigned during the pre-hearing conference.221 Micronics 

asserts that the evidence which is in the record shows that the actual [ ] used in Micronics' 

V-Probes lack any plastic response, and therefore are not compliant.222 As to F ormFactor' s argument 

217 SRB 3. 

218 RRB 10. 

219 RRB 11-12 citing RFF IV.C.3.54, RX-859C (Hutton Rebuttal) at Q/A 36. 

220 RRB 12-13. 

221 RRB 10-11 citing Bullock, Tr. 53-62. 

222 RRB 11 citing RFF IV.C.3.53. 

58 
on the doctrine of equivalents, Micronics asserts that a [ ] that has no plastic response cannot 

be equivalent to the claimed compliant interconnect which requires a plastic response.223 

The undersigned agrees with Micronics and Staff that FormFactor has failed to show, by a 

preponderance of the evidence, that Micronics' V-probes satisfy the "compliant interconnection 

structure" limitation in claim 1. While F ormF actor argues that the [ ] in Micronics' V-Probes 

may become compliant over time, such argument is pure speculation that is not based on any 

evidence or tests. 224 The evidence shows that Micronics' [ ] are elastic, not plastic, and 

therefore, do not meet the "compliant interconnection structure" limitation as construed.225 

Accordingly, Micronics' V-Probes do not literally infringe claim 1 of the '485 patent. 

The undersigned also finds that FormFactor has failed to show, by a preponderance of the 

evidence, that Micronics' V-probes satisfy the "compliant interconnection structure" limitation in 

claim 1 under the doctrine of equivalents because FormFactor has not shown how a [ ] that 

does not have a plastic response is equivalent to the claimed compliant interconnect, which requires 

a plastic response. Accordingly, Micronics' probe card assemblies do not infringe claim 1 of the 

'485 patent under the doctrine of equivalents. 

(2) Claim 3 

FormFactor asserts that the additional limitation in claim 3 is a wafer requirement and that 

Micronics' cust~mers practice this additional limitation because [ 

223 RRB 13 citing RFF IV.C.3.59. 

224 RFF IV.C.3.57. 

] 

225 RX-925C (Pogo Pin Spec); RX-861C (Adler Rebuttal) at Q/A 41; Adler, Tr. 2240; RX857C (Inoue Rebuttal) at QI A 80, 83, 165-66, 178; Inoue, Tr. 2043; RX-915C (V Probe test). 

59 
Micronics asserts that it does not infringe claim 3 because there is no probe card with a 

"compliant interconnection structure" or equivalent thereof.227 

As the undersigned has already ruled above that FormFactor has failed to show, by a 

preponderance ofthe evidence, that Micronics' probe card assemblies meet each and every limitation 

of claim 1 of the '485 patent, the undersigned also finds that FormFactor has failed to show, by a 

preponderance of the evidence, that Micronics' probe card assemblies infringe claim 3. 

(3) Claim 4 

FormFactor asserts that the additional limitation in claim 4, the dicing requirement, is 

practiced by Micronics' customers because [ 

Micronics asserts that it does not infringe claim 4 because there is no probe card with a 

"compliant interconnection structure" or equivalent thereof.229 

As the undersigned has already ruled above that FormFactor has failed to show, by a 

preponderance of the evidence, that Micronics' probe card assemblies meet each and every limitation 

of claim 1 ofthe '485 patent, the undersigned also finds that FormFactor has failed to show, by a 

preponderance of the evidence, that Micronics' probe card assemblies infringe claim 4. 

(4) Claim 18 

FormFactor asserts that the additional limitation in claim 18, namely "aligning tips of said 

226 CIB 19 citing CFF 601-603. 

227 RIB 31. 

228 CIB 19 citing CFF 604, 606. 

229 RIB 31. 

60 
probe elements by altering an orientation of said probe substrate with respect to said probe card" is 

present in Micronics' U-Probes because all these probes have [ ] for 

altering the orientation of the probe substrate with respect to that of the probe card. According to 

FormFactor, there are [ 

] F ormF actor asserts that, for the purposes of infringement, there is no difference between 

these two types of [ ]230 

FormFactor argues that the purpose of the [ ] in Micronics' U-Probes is to alter the 

orientation of the probe substrate with respect to the probe card in order to align [ 

] FormFactor asserts that 

Micronics' has admitted that [ ] 

According to F ormF actor, the alignment is performed pnor to shipping each U-Probe to 

customers.23i Furthermore, [ ] asserts that when customers install the U-Probes, they 

continue to employ the "aligning" step, because continuous alteration of orientation is necessary.232 

FormFactor asserts that Micronics cannot get around infringement when it performs 

alignment on behalf of its customers. According to F ormF actor, customers, such as [ 

] expressly provide specifications to Micronics for alignment. Furthermore, FormFactor 

asserts that even when Micronics' customers do not perform the "altering" step on their own, 

Micronics performs such alterations according to the customers' specification, or direction.233 

Alternatively, FormFactor asserts that ifliteral infringement is not present, then Micronics 

230 CIB 19 citing CFF 607-11, 618, 648-50. 

231 CIB 20 citing CFF 611-16, 619-22, 625, 630-31; CX-353C (Interrogatory Responses). 

232 CIB 21-22 citing CFF 633. 

233 CIB 22 citing Muniauction, 532 F.3d at 1329. 

61 
infringes under the doctrine of equivalents. FormFactor asserts that [ 

] perform the same function [ 

] and achieve the same results [ ] as 

moveable elements) as moveable elements, such as [ 

Micronics asserts that it does not infringe claims 18, 19, 32, 33, or 41 of the '485 patent 

because no single entity practices all of the steps of the claimed methods. Specifically, Micronics 

asserts that it does not test semiconductors and does not perform the steps of "providing a plurality 

of semiconductor devices," "bringing said probe elements into contact," and "testing," as required 

by claims 1 and 32. Furthermore, Micronics asserts that its customers do not perform the step of 

"aligning tips of said probe elements by altering an orientation" as required by claims 18, 19,32,33, 

and 41.235 

According to Micronics, its customers do not make any adjustments to their V -Probes ifthere 

is a problem with alignment because the V-Probes were not designed to be adjusted. While 

FormFactor asserts that Micronics [ 

] during repair of the V-Probe in Japan on behalf of and under the control of its customers, 

Micronics asserts that there is no evidence to support such a contention. Rather, the documentation 

merely shows that customers may return V-Probes to Micronics for repair, with no indication that 

the customers act as a "mastermind" or otherwise direct the details of any repair.236 Micronics 

asserts that it and its customers operate at an arms length and that no single or joint party performs 

234 CIB 20-21 citing CFF 646, 673; CX-81C (V-Probe Presentation). 

235 RIB 27-28 citing RFF IV.C.1.28,2.16, 1.32,1.21. 

236 RIB 28 citing RFF IV.C. 1.35-1.37, 1.47-1.53. See BMC Resources, Inc. v.Paymentech, 

L.P., 498 F.3d 1373, 1379 (Fed.Cir. 2007) ("BMC'). 

62 
or directs performance of all steps of claims 18, 19,32,33, and 41. Therefore, Micronics asserts that 

there is no direct infringement of claims 18, 19,32,33, and 41. 

Staff asserts that it is undisputed that Micronics' customers do not perform the "aligning" 

step and that Micronics performs that step for its customers, but that the parties dispute whether 

Micronics' customers exercise "control or direction" over the step. In the Staffs view, the evidence 

does not show that Micronics' customers control the actions of Micronics such that the customers 

can be considered to have control over every step.237 Therefore, Staff asserts that claims 18, 19,32, 

33, and 41 of the '485 patent are not infringed. 

FormFactor counters Micronics' arguments that its customers do not practice the "aligning" 

step for the same reasons expres'sed above with respect to Phicom. According to FormFactor, 

Micronics performs tip aligning on behalf of its customers, who provide the specifications.238 

Micronics counters FormFactor's argument that its customers are the "mastermind" ofthe 

planarity adjustment fails because FormFactor has not met its burden to prove that Micronics' 

customers exercise "control or direction" over the entire process, such that every step is attributable 

to the customers.239 Rather, Micronics cites to the evidence which merely shows [ 

Micronics asserts that FormFactor is asserting new infringement theories, which should be 

rejected under Ground Rule. 8.2. Micronics asserts that FormFactor's argument that Micronics' 

237 SIB 37 citing RX-858C (lgarishi Rebuttal). 

238 CRB 9-10 citing CFF 621, 626, 637, 640-42, 651. 

239 RRB 14-15. 

240 RRB 15 citing RFF IV.C.1.34-36, 2.20, 2.35-36. 

63 
customers perform the "align tips by altering an orientation" step by merely installing a Micronics' 

probe card is new and should be rejected.241 As to the substance of FormFactor's argument, 

Micronics asserts that FormFactor has not offered any evidence to support its theory. According to 

Micronics, FormFactor cites to the testimony of Dr. Adler who merely states that [ 

] Micronics asserts that what is missing from FormFactor's argument, 

however, is that [ 

The parties dispute whether Micronics' customers exercise "control or direction" over the 

"aligning" step. The undersigned agrees with Micronics and Staff that performing a step "on behalf 

of' a customer is not indicative of exercising "control or direction" of the entire process so that the 

step is attributable to the customer. Rather, it appears that Micronics and its customers are in an 

arms-length commercial relationship that is typical between a seller and a buyer.243 

Accordingly, the undersigned agrees with Micronics and Staff that FormFactor has failed to 

show, by a preponderance of the evidence, that there is direct infringement of claim 18 because the 

evidence does not show that Micronics' customers are the "mastermind" or are in "control" over 

Micronics when adjustments are made to the probe card assemblies. Rather, the evidence shows 

that there is merely an arms-length relationship between Micronics and its customers. Accordingly, 

the undersigned finds that FormFactor has failed to show, by a preponderance of the evidence, that 

Micronics' probe card assemblies meet each and every limitation of claim 18 of the '485 patent, in 

addition to not meeting each and every limitation of claim 1 of the' 485 patent. 

241 RRB 10, 15-16. 

242 RRB 15-16. 

243 RX-858C (Igarishi Rebuttal). 

64 
(5) Claim 19 

FormFactor asserts that the additional limitation of "said altering comprises moving a 

moveable element disposed so as to affect an orientation of said probe substrate with respect to the 

probe card" in claim 19 is practiced by Micronics' V-Probe. Specifically, FormFactor asserts that 

the [ ] are moved in order to affect an orientation of the probe 

substrate with respect to the probe card.244 

Micronics asserts that it does not infringe claim 19 because Micronics does not sell a probe 

card equipped with a probe substrate "moveably affixed" to a probe card. According to Micronics, 

the V-Probe is a fixed structure without any moving parts and is manufactured so that planarity is 

held within a tight tolerance. Micronics notes that, after assembly, the V-Probe is sealed shut so that 

the inner parts are fixed and immobile.245 Micronics counters Dr. Howe's testimony that the V-Probe 

meets the "moveably affixed" limitation because Micronics asserts that Dr. Howe is using his own 

claim construction, rather than how the claim was construed by the undersigned. 246 Micronics also 

asserts that it does not infringe claim 19 because its V-Probe does not include the "moveable 

element" limitation. According to Micronics, [ ] cannot move and are not a moveable 

mechanism.247 

As the undersigned has already ruled above that FormFactor has failed to show, by a 

preponderance ofthe evidence, that Micronics' probe card assemblies meet each and every limitation 

of claims 1 and 18 of the '485 patent, the undersigned also finds that FormFactorhas failed to show, 

244 CIB 23 citing CFF 653-54. 

245 RIB 34-35 citing RF IV.C.3.74, 3.88, 3.71. 

246 RIB 35-36 citing RFF IV.C.3.126-3.127. 

247 RIB 36 citing RFF IV.C.3.64-65. 

65 
by a preponderance of the evidence, that Micronics' probe card assemblies infringe claim 19. 

(6) Claim 29 

FormFactor asserts that the additional limitation of a "space transformer" in claim 29 is 

practiced by Micronics' [ 

Micronics asserts that it does not infringe claim 29 because there is no probe card with a 

"compliant interconnection structure" or equivalent thereof.249 

As the undersigned has already ruled above that FormFactor has failed to show, by a 

preponderance of the evidence, that Micronics' pro be card assemblies meet each and every limitation 

of claim 1 of the '485 patent, the undersigned also finds that FormFactor has failed to show, by a 

preponderance of the evidence, that Micronics' probe card assemblies infringe claim 29. 

(7) Claim 32 

FormFactor asserts that claim 32 has many limitations that overlap with claim 1 and 18 and 

that Micronics' V-Probe include all these elements.25o Furthermore, FormFactor asserts that when 

the [ ], the orientation of the probe substrate is altered 

with respect to the probe card and that once [ ] the probe 

substrate will remain in a new fixed position until the spacers are exchanged again. 251 

Micronics asserts that it does not infringe claim 32 because there is no probe card that is 

248 CIB 23 citing CFF 656-57. 

249 RIB 31. 

250 CIB 23-24 citing CFF 659-660, 610. 

251 CIB 24 citing CFF 661-62, 610. 

66 
\ 

"moveably affixed" or equivalents thereof. 252 Micronics also asserts that it does not infringe claim 

32 because there is nothing in the U-Probe for altering orientation. Therefore, Micronics asserts that 

the "aligning tips" and "moving a moveable element" limitations are not met.253 

FormFactor counters Micronics' arguments regarding the "moveably affixed" limitation. 

According to FormFactor, the U-Probe has exchangeable spacer that are designed to be exchanged 

in and out for the express purpose of changing the height between the stiffener and the MLS. 

Therefore, FoimFactor asserts that the U-Probes satisfy the moveably affixed limitation.254 

As the parties have not presented any new arguments as to claim 32 with regard to the claim 

limitations "probe card," "probe substrate," "moveably affixed," and "elongate, resilient probe 

elements," and the undersigned has already found that FormFactor has failed to show, by a 

preponderance of the evidence, that Micronics' probe card assemblies meet each and every limitation 

of claims 1 and 18 of the '485 patent, the undersigned also finds that FormFactor has failed to show, 

by a preponderance of the evidence, that Micronics' probe card assemblies meet each and every 

limitation of claim 32 for the same reasons. 

(8) Claim 33 

F ormF actor asserts that the additional limitation of "altering of orientation comprises moving 

a moveable element" in claim 33 is practiced by Micronics' U-Probes. Specifically, FormFactor 

asserts that the [ 

orientation of the probe substrate with respect to the probe card in Micronics' U-Probes. 255 

252 RIB 31. 

253 RIB 31. 

254 CRB 10-11. 

255 CIB 24 citing CFF 655-667. 

67 

] alter 
Micronics asserts that it does not infringe claim 33 because there is no probe card that is 

"moveably affixed" or equivalents thereof. 256 

As the undersigned has already ruled above that FormFactor has failed to show, by a 

preponderance ofthe evidence, that Micronics' probe card assemblies meet each and every limitation 

of claim 32 of the '485 patent, the undersigned also finds that FormFactor has failed to show, by a 

preponderance of the evidence, that Micronics' probe card assemblies infringe claim 33. 

(9) Claim 41 

FormFactor asserts that the additional limitation of "space transformer" in claim 41 IS 

practiced by Micronics' V-Probes. Specifically, FormFactor asserts that [ ] contained in 

Micronics' V-Probes is a space transforming probe substrate with terminals disposed at a first pitch 

on one surface and corresponding terminals disposed at a second pitch on the opposite surface. 257 

Micronics asserts that it does not infringe claim 41 because there is no probe card that is 

"moveably affixed" or equivalents thereof.258 

As the undersigned has already ruled above that FormFactor has failed to show, by a 

preponderance of the evidence, that Micronics' probe card assemblies meet each and every limitation 

of claim 32 of the '485 patent, the undersigned also finds that FormFactor has failed to show, by a 

preponderance ofthe evidence, that Micronics' probe card assemblies infringe claim 41. 

h. Indirect Infringement 

(1) Contributory Infringement 

In support of its assertion of indirect infringement, FormFactor asserts that Micronics has 

256 RIB 31. 

257 CIB 24 citing CFF 668-669. 

258 RIB 31. 

68 
had knowledge of the '485 patent since at least December 2007, when this investigation was 

instituted, and has continued infringement of the '485 patent by making and importing infringing 

products and providing services to the infringing products and sending them to the United States. 

FormFactor asserts that the evidence shows that Micronics is affirmatively and actively engaged with 

its customers in designing, building, and repairing a custom-made product that has no non-infringing 

use. In other words, FormFactor asserts that Micronics is aiding and abetting the practicing of the 

asserted claims.259 According to FormFactor, Micronics' customers provide Micronics with the 

[ 

Micronics assert that it does not indirectly infringe the '485 patent because Micronics does 

not have the necessary intent. Specifically, Micronics asserts that it only intends to sell probe cards 

with elastic, functional pogo pins, rather than "compliant" pogo pins.261 

Micronics asserts that there is no evidence of contributory infringement of claim 1 of the '485 

patent. According to Micronics, the U-Probe, as shipped, has no plastic response from its[ 

] Therefore, even under Dr. Howe's theory that[ ] become plastic over time, the UProbe has many years of non-infringing use. Furthermore, Micronics asserts that it does not 

contributorily infringe claim 32 because the probe substrate is not "moveably affixed" and there is 

no step of "aligning tips.,,262 

As the undersigned has already determined above, indirect infringement requires a showing 

259 CIB 15 citing CFF 542-43, 545-558. 

260 CIB 15 citing CX-96C (U-Probe Order Form). 

261 RIB 29-30 citing RFF IV.C.3.05, 3.54. 

262 RIB 30 citing RFF IV.C. 2.15, 2.17. 

69 
of direct infringement. Because FormFactor has not proven direct infringement by Micronics, it 

cannot prove contributory infringement. Accordingly, F ormF actor has failed to show that Micronics 

contributorily infringes the asserted claims of the '485 patent. 

(2) Induced Infringement 

Micronics asserts that there is no evidence of induced infringement because Micronics does 

not exert control over its customers to cause them to build chips or provide semiconductors, bring 

tips into contact with the semiconductor, or test the semiconductors. According to Micronics,[ 

Furthermore, Micronics asserts that [ 

] and therefore does not have an "affirmative intent.,,264 

As the undersigned has already determined above, indirect infringement requires a showing 

of direct infringement. Because FormFactor has not proven direct infringement by Micronics, it 

cannot prove induced infringement. Accordingly, FormFactor has failed to show that Micronics 

induces infringement of the asserted claims of the '485 patent. 

C. Domestic Industry - Technical Prong 

FormFactor asserts that it currently makes and sells probe card assemblies in the United 

States designed specifically for use in practicing the method for producing tested semiconductor 

devices claimed in the '485 patent. In addition, FormFactor asserts that its customers use the probe 

card assemblies to test semiconductor devices, such as DRAM and Flash according to the methods 

claimed in the '485 patent. Specifically, FormFactorpoints to its PH 50, PH75, PHI00, PH150, and 

263 RIB 30 citing RFF IV.C.2.19,2.30-2.31, 2.21,2.34. 

264 RIB 30-31 citing DSU, 471 F.3d at 1306; Kyocera Wireless Corp. v.Int'l Trade Comm 'n, 

545 F.3d 1340, 1354 (Fed. Cir. 2008) ("Kyocera"). 

70 
NFlOO Probe Cards.265 

As to FormFactor's PH50, PH75, PHlOO, and PH150 probe card assemblies, FormFactor 

asserts that these assemblies include all the limitations in claim 1, including: 

[ 

[ 

• a printed circuit board, which is an electrical component, having a plurality of electrical 

contacts, thereby meeting the "probe card" limitation;266 

• a substantially rigid ceramic substrate called a probe head, which is an electronic carrier, 

having a plurality of micro springs mounted to terminals on one surface of the probe 

substrate, thereby meeting the "probe substrate" limitation;267 

• a plurality of micro springs that are primarily elastic, made of at least two materials for the 

purpose of improving mechanical characteristics, and have greater length than width, thereby 

meeting the "elongate, resilient probe elements" limitation;268 and 

• a microspring interposer with resilient springs that electrically connect the contacts on the 

probe card to the micro springs that exhibit both plastic and elastic behavior in response to 

an applied load or contact force, thereby meeting the "complaint interconnection structure" 

limitation.269 

FormFactor asserts that an exemplary entity that practices claim 1 of the '485 patent is 

] which uses [ ] FormFactor probe cards in its 

] facility.270 FormFactor also asserts that [ ] practices claims 18, 19, 23, 

and 24 of the '495 patent as well.271 Specifically, FormFactor asserts that its probe card assemblies 

have "moveable elements" called planarization mechanisms that include screws and/or bolts that can 

be rotated clockwise or counterclockwise to move the probe substrate up and down at their 

265 CIB 25 citing CFF 2; CX-650C (Kovit Dep); CX-342C (FormFactor Technology 

Overview); CX-376C (FormFactor Technology Overview); CX-357C (Spring Contacts). 

266 CIB 25 citing CFF 702; CX-376C (FormFactor Technology Overview). 

267 CIB 25 citing CFF 703-05; CX-376C (FormFactor Technology Overview). 

268 CIB 25 citing CFF 708-09. 

269 CIB 25 citing CFF 697, 706; CX-342C (FormFactor Technology Overview); CX-343C 

(PH150 Assembly Work Instruction); CX-376C (FormFactor Technology Overview). 

270 CIB 26 citing CFF 685-87. 

271 CIB 26 citing CFF 729. 

71 
respective 10cation.272 In addition, FormFactor probe cards require re-adjustment of planarity at 

some point for various reasons including wear, insertion into a new test assembly, or repair. 

FormFactor asserts that this altering of orientation is performed at the facilities ofthe semiconductor 

manufacturers and that FormFactor provides its customers with training on how to properly adjust 

the planarity. 273 For example, F ormF actor asserts that [ ] has made adjustments to the probe 

head ofF ormF actor's probe cards using the planarization screws, thereby practicing claims 18 of the 

'485 patent. 274 

As to claim 19, FormFactor asserts that each of its probe card assemblies includes "moveable 

elements," or planarization mechanisms that can be rotated in order to affect an orientation of the 

probe substrate with respect to the probe card.275 As to claims 23 and 24, FormFactor asserts that 

turning the planarization mechanism in a counter-clockwise direction causes the relevant portion of 

the probe substrate to move toward the probe card, while turning an adjusting bolt in a clockwise 

direction causes the relevant portion of the probe substrate to move away from the probe card.276 

Respondents asserts that F ormF actor has not met the technical prong of the domestic industry 

requirement because FormFactor has not shown that it satisfies the "compliant interconnection 

structure" limitation. Specifically, Respondents assert that neither FormFactor nor its expert, Dr. 

Howe, have identified any evidence indicating that FormFactor's products exhibit both a plastic and 

elastic response to an applied force. In fact, Respondents assert that Dr. Howe has testified that the 

interposers in FormFactor's products "exhibit a primarily elastic behavior in response to an applied 

272 CIB 26 citing CFF 717. 

273 CIB 27 citing CFF 725-26. 

274 CIB 27 citing CFF 730. 

275 CIB 27 citing CFF 724; CX-343 (PH150 Assembly Work Instruction). 

276 CIB 27 citing CFF 728; CX-698C (PH150 Troubleshooting). 

72 
load."277 As to Dr. Howe's reliance on CX-342C and CX-343C, Respondents asserts that these two 

documents do not support Dr. Howe's opinion because they are generic marketing materials that 

describe how to assemble and adjust the planarity of FormFactor's probe card assemblies.278 

Staff asserts that FormFactor has not satisfied its burden of proof on the technical prong of 

the domestic industry requirement. Specifically, Staff asserts that F ormF actor has failed to show that 

its probe cards satisfy the "compliant" limitation. While Staff notes that Dr. Howe testified that 

FormFactor's MicroSprings are "compliant interconnection structures," Staff also notes that Dr. 

Howe testified that this opinion was theoretical because he did not conduct any physical tests on 

F ormF actor's interposer.279 As to Mr. Eldridge's testimony on F ormF actor's interposer, Staff asserts 

that his testimony is suspect because the basis of the evidence relied upon by Mr. Eldridge is 

insufficient. 280 

FormFactor counters Respondents' arguments that its MicroSprings are not "compliant." 

According to FormFactor, although Dr. How opined that the interposers in FormFactor's probe card 

assemblies "exhibit primarily elastic behavior in response to an applied load," Dr. Howe's definition 

is consistent with the claim construction of "compliant" as long as there is plastic behavior in the 

interposer.281 FormFactor asserts that Mr. Eldridge provided ample testimony regarding the 

interposer having a degree of plasticity. 282 In further support, F ormF actor cites to various exhibits.283 

Respondents assert that FormFactor has waived any arguments for domestic industry based 

277 RIB 37 citing RFF IV.D.07, 15, 17. 

278 RIB 37 citing RFF IV.D.03. 

279 SIB 37-38 citing CX-732C (Howe Direct) at 18; Howe, Tr. 722-24, 778-79. 

280 SIB 38-39 citing CX-728C (Eldridge Direct) at Q/A 135, Eldridge, Tr. 481-84, 493-95. 

281 CRB 11. 

282 CRB 12-13 citing Eldridge, Tr. 479-84. 

283 CRB 13-15 citing RX-664, RX-665, RX-812C, CX-342C. 

73 
on any claims other than claim 1.284 As to claim 1, Respondents assert that the main issue is whether 

FormFactor has shown that its probe card assemblies include a "compliant interconnection 

structure." According to Respondents, FormFactor has not met its burden because the documentary 

evidence shows that the interposer is resilient, not compliant. 285 Furthermore, Respondents argue 

that FormFactor has presented no tests or other proof that establishes that the interposer has both an 

elastic and plastic response to a force. According to Respondents, the conclusory testimony of Mr. 

Eldridge that he has seen plastic behavior in FormFactor's interposer is insufficient without any 

supporting tests.286 Respondents likewise criticize Dr. Howe's testimony, which is similarly 

unsupported by anything testing or analysis.287 

The undersigned agrees with Respondents and Staffthat FormFactor has failed to show, by 

a preponderance of the evidence, that its probe card assemblies meet the "compliant" limitation in 

claim 1, as construed by the undersigned. FormFactor has failed to show any evidence that the 

interposer meets the "compliant" limitation. Similar to FormFactor's arguments in the infringement 

section, the only evidence that FormFactor provides in support of technical prong is a theory by Dr. 

Howe that the interposer's are compliant. There is no evidence that they are compliant because no 

tests were performed on the interposer.288 Accordingly, FormFactor has failed to show that it meets 

the technical prong of the domestic industry requirement. 

As to Respondents' assertion that FormFactor has waived any argument that it meets the 

technical prong of the domestic industry argument with respect to claims 18, 19, 23, and 24 because 

284 RRB 16, n. 8. 

285 RRB 17 citing CX-342C (FormFactor Technology Overview). 

286 RRB 17 citing Eldridge, Tr. 483-84. 

287 RRB 17 citing RFF IV.D.08-13. 

288 CX-732C (Howe Direct) at 18; Howe, Tr. 722-24, 778-79. 

74 
such issues were not preserved in F ormFactor' s pre-trial brief, the undersigned rejects Respondents' 

argument, as FormFactor specifically alleged that its customers practice claims 18, 19,23, and 24.289 

However, since none of FormFactor's products have been shown to read on claim 1, they therefore 

do not read on these claims which depend from claim 1. 

D. Validity 

1. Ordinary Skill in the Art 

As previously stated in Order No.3 7, a person of ordinary skill in the art is an individual with 

a bachelor's degree in mechanical or electrical engineering, or the equivalent, and at least one year 

of experience in either probe card assemblies, semiconductor device testing, or MEMS technology 

at the time of effective filing date for the asserted patent.290 

2. Prior Sale and Use 

Respondents assert that, if the undersigned finds that FormFactor's probe card assemblies 

meet the technical prong of the domestic industry requirement by meeting the "compliant" limitation, 

then FormFactor's prior sales of its probe cards and uses of those probe cards by customers, more 

than a year before December 27,2001, invalidates the '485 patent.291 According to Respondents, 

FormFactor has admitted that the probe cards sold to its U.S. customers, including Intel, included 

all the features of the claims and were used by its customers to test semiconductor devices.292 

Respondents assert that the asserted claims of the '485 patent are entitled to a filing date of 

289 See FormFactor's pre-trial brief at 219-221. 

290 See Order No. 37, p. 11 (January 23, 2009). 

291 RIB 38; RRB 21. 

292 RIB 39 citing RFF IV.E.l.02-.08. 

75 
December 27,2001 at best.293 Because FormFactor sold its probe cards to its U.S. customers more 

than a year before that date, Respondents assert that the prior sales and use invalidate the claims of 

the '485 patent. 294 

FormFactor counters Respondents' arguments and asserts that the '485 patent is entitled to 

a November 9, 1995 priority date. According to FormFactor, the only support Respondents have to 

suggest that the '485 patent is not entitled to a November 9, 1995 priority date is a non-final office 

action in the reexamination. Therefore, FormFactor argues that this argument should be rejected.295 

Specifically, FormFactor asserts that Respondents' reliance upon the office actions in the 

reexamination is not dispositive because the reexamination is not final and is on_going.296 

As the undersigned has ruled above that F ormFactor' s probe card assemblies do not meet the 

technical prong of the domestic industry requirement by failing to meet the "compliant" limitation, 

and Respondents' arguments rely on the contrary, the undersigned finds there is no need to address 

Respondents' argument as to prior sales and use. As to Respondents' assertion that the '485 patent 

is not entitled to a November 9, 1995 priority date, which is based on a non-final office action in the 

reexamination, the undersigned agrees with F ormFactor that the office action in the reexamination, 

is not in itself dispositive. Accordingly, the undersigned finds that the Respondents have not shown, 

by clear and convincing evidence, that FormFactor is not entitled to a November 9, 1995 priority 

date. 

293 RIB 38 citing RFF IV.E.6.03, 6.07-08. 

294 RIB 39. 

295 CRB 15. 

296 CRB 20-21. 

76 
3. Anticipation 

a. The Abe '522 Patent 

(1) Claim 1 

Respondents assert that U.S. Patent No. 5,521,522 ("the Abe' 522 patent,,)297 anticipates the 

asserted claims of the '485 patent. According to Respondents, the Abe '522 patent shows all the 

elements including: 

• a performance board (92) which meets the"probe card" limitation that includes a number 

of electrical contacts (93); 

• probe card (5), which meets the "probe substrate" limitation that includes elongate 

conducting elements (5), which meet the "elongate, resilient electrical contacts" limitation; 

and 

• contact ring (50), together with contact elements (57a) and (57b), which meet the 

"compliant interconnection structure" limitation. 

According to Respondents, Dr. Howe asserts that the Abe '522 patent lacks "elongate resilient 

electrical contacts" because electrical contacts 72 do not have a primarily elastic response.298 

Respondents counter, however, that Dr. Adler and Mr. Taber testified that the needle-like contacts 

72 must be primarily elastic because if the needles were primarily plastic, they would not function 

as reliable electrical contacts and the probe card would not work.299 In addition, Respondents assert 

that Dr. Howe does not address structures 57a and 57b. 

FormFactor asserts that the Abe '522 patent does not anticipate the '485 patent because it 

does not disclose an elongate, resilient probe element. While Respondents assert that contactor 52 

is an elongate conducting element, FormFactor counters that the only description of contactor 52 

297 RX-499 (the Abe '522 patent); RX-151 (the Abe '522 patent). 

298 CX-750C (Howe Rebuttal) & Q/A 49. 

299 RIB 39-40 citing RFF IV.E.2.18. 

77 
comes from a line in the specification that states "[ e ]ach contactor 52 is made of a gold-plated nickel 

material" and that one can only speculate about the physical attributes of contactor 52 from Figures 

1 and 2 to show whether contactor 52 is "elongate." FormFactor asserts that just because contactor 

52 is made of nickel does not necessarily mean that it has a "primarily elastic" attribute, especially 

because the specification states that each contactor 52 is backed up by an elastic member 52, 

suggesting that the contactor 52 itself is not elastic.30o 

As to Respondents' argument that probe 72 is a resilient probe element, F ormF actor counters 

that the specification is totally devoid of any evidence to suggest that probe 72 has a primarily elastic 

response. FormFactor notes that the specification states the probe 72 is supported by supporting 

member 73, which implies that resiliency is gained from the supporting member 73, rather than from 

probe 72 itself.30 ) 

Staff asserts that Respondents have failed to show, by clear and convincing evidence, that 

any of the asserted claims of the '485 patent are invalid as anticipated or obvious by the Abe '522 

patent, at least because the prior art did not disclose or render obvious the claimed "compliant 

interconnection structure," or the step of "aligning tips of said probe elements by altering an 

orientation.,,302 Staff agrees with FormFactor that the evidence does not clearly and convincingly 

show that the Abe' 522 patent anticipates the' 485 patent because there is insufficient disclosure that 

the needles 72 are "resilient.,,303 

8. 

Respondents counter F ormF actor's arguments that the Abe' 522 patent does not disclose the 

300 CIB 28 citing CFF 751-768; 15-16. 

30) cm 28 citing CFF 769-785; CRB 17 citing RX-499 (the Abe '522 patent) at col. 7:32-35. 

302 SIB 43 citing RX-690C (Adler Direct) at QIA 37-72,86,97; Adler, Tr. 2194-2205; SRB 

303 SRB 8. 

78 
"elongate, resilient probe element" limitation. According to Respondents, FormFactor's argument 

that probe needle 72 does not have a primarily elastic response is simply wrong. Respondents assert 

that the Abe '522 patent discloses an elongated probe element, that the probe element must be 

resilient in order to function as a probe, and that the fact that there is backing material 73 is 

irrelevant. Respondents cite to the testimony of Dr. Adler, who testified that needle 72 itself must 

be resilient or else the needle would get permanently bent when contacting the wafer, which would 

cause alignment problems.304 Respondents assert that Dr. Howe agrees that, in general, probe 

contacts must be primarily resilient or else they would not function. 305 

FormFactor asserts that Respondents did not assert that contact elements 57b are "elongate, 

resilient probe elements" in their pre-trial brief and therefore have waived this anticipation 

argument.306 As to the substance of Respondents' argument, FormFactor asserts that the Abe '522 

patent never uses the word "elongate" and that there is no basis for interpreting contactor 52 as 

having an elongate attribute. Furthermore, F ormF actor asserts that the fact that the contactor is made 

of nickel does not necessarily mean that it is "primarily elastic" and reiterates that backing S3 is 

actually the element supplying elasticity.307 

The undersigned agrees with FormFactor and Staff that Respondents have not shown, by 

clear and convincing evidence, that claim 1 of the '485 patent is invalid as anticipated by the Abe 

'522 patent at least because Respondents have failed to show that the reference discloses "elongate, 

resilient electrical contacts" because it has not been shown that either electrical contacts 72 or 

304 RRB 17-18 citing RFF IV.E.2.17-18. 

305 RRB 18 citing RFF IV.E.2.18. 

306 CRB 16. 

307 CRB 16-17 citing CFF 756-768. 

79 
contactor 52 exhibit are "elongate" or "resilient.,,308 While Respondents point to the testimony of 

Dr. Adler and Mr. Taber that contacts 72 must be primarily elastic or else they would not function 

as reliable electrical contact, this is based on speculation and not specifically disclosed in the 

reference.309 Accordingly, claim 1 of the '485 patent is not anticipated by the Abe '522 patent. 

As to FormFactor's waiver argument, the undersigned agrees that Respondents did not 

specifically allege that contact elements 57 meet the "elongate, resilient probe elements" limitation 

in their pre-trial brief and have therefore have waived this anticipation argument.310 

(2) Claim 3 

Respondents assert that the additional limitation in claim 3 of requiring a plurality of 

semiconductor devices in wafer form is also anticipated by the Abe' 522 patent because the probe 

card of the Abe '522 patent is designed for testing multiple devices on a wafer.311 

As the undersigned has already ruled above that Respondents have failed to show, by clear 

and convincing evidence, that each and every limitation of claim 1 of the '485 patent is anticipated 

by the Abe '522 patent, the undersigned also finds that Respondents have failed to show, by clear 

and convincing evidence, that the additional limitation in claim 3 is anticipated by the Abe '522 

patent. 

(3) Claim 4 

Respondents assert that the additional limitation in claim 4 of adding the step of dicing the 

308 CX-750C (Howe Rebuttal) & Q/A 49. 

309 Adler, Tr. 2219. 

310 See Respondents' Pre-Trial Brief at 165-66. While the undersigned notes that 

Respondents, in their pre-trial brief, stated that they are only presented "examples" of their invalidity 

arguments with respect to certain prior art references, this violates the undersigned's ground rules 

that all arguments must be preserved in the pre-trial brief in order to be considered. 

311 RIB 40 citing RFF IV.E.2.23; RX-499 (the Abe '522 patent), Fig. 10. 

80 
wafer is also anticipated by the Abe '522 patent because the probe card of the Abe' 522 patent is 

designed for testing multiple devices on a wafer prior to separating them. According to 

Respondents, a person of ordinary skill in the art would understand that the Abe '522 patent 

inherently discloses that individual devices on the wafer must be diced or singulated.312 

As the undersigned has already ruled above that Respondents have failed to show, by clear 

and convincing evidence, that each and every limitation of claim 1 ofthe '485 patent is anticipated 

by the Abe' 522 patent, the undersigned also finds that Respondents have failed to show, by clear 

and convincing evidence, that the additional limitation in claim 4 is anticipated by the Abe '522 

patent. 

(4) Claims 18, 19 and 29 

Respondents assert that the additional limitation in claim 18 of adding the step of altering 

orientation of the probe substrate with respect to the probe card is also anticipated by the Abe '522 

patent because contact elements (57a and 57b), and bellow portions (58) permit movement of the 

probe substrate with respect to the probe card.313 Furthermore, Respondents assert that if the same 

standard is applied for Dr. Howe's theory of infringement (i. e. that Micronics' U -Probes infringe the 

"aligning tips," "altering an orientation," and "moveable element," limitations of these claims 

because the U-Probe can be disassembled and rebuilt, changing the planarity) as applied toward 

validity, then the '485 patent is invalid.314 

Respondents assert that the additional limitation in claim 19 of adding a moveable element 

to affect orientation is also anticipated by the Abe '522 patent for the same reasons as expressed' 

312 RIB 40-41 citing RFF IV.E.2.24; RX-499 (the Abe '522 patent), Fig. 5. 

313 RIB 41 citing RFF IV.E.2.29-33. 

314 RIB 42. 

81 
above for claim 18.315 

Respondents assert that the additional limitation in claim 29 of requiring the probe substrate 

be a space transformer is also anticipated by the Abe '522 patent because probe substrate (54) is a 

space transformer (351).316 

FormFactor asserts that Respondents have waived their right to argue that claims 18, 19,23, 

24, 43, 33, 36-38, and 41 are anticipated by the Abe '522 patent because Respondents did not 

provide any anticipation arguments as to these claims in their pre-trial brief.317 As to the substance 

of Respondents ' argument, F ormFactor asserts that there is no disclosure int he Abe' 522 patent that 

suggests movement of the probe substrate.318 

As noted above, Staff asserts that Respondents have failed to show, by clear and convincing 

evidence, that any of the asserted claims of the '485 patent are invalid as anticipated or obvious by 

the Abe '522 patent, at least because the prior art did not disclose the claimed step of "aligning tips 

of said probe elements by altering an orientation.,,319 

As to FormFactor's waiver argument, the undersigned agrees that Respondents did not 

specifically allege in their pre-trial brief that any other claims, other than claim 1, 3, 4, and 29 of the 

'485 patent are anticipated by the Abe' 522 patent and have therefore have waived any anticipation 

arguments as to claims 18, 19, 23, 24, 43, 33, 36-38, and 41.320 As noted above, while the 

undersigned notes that Respondents, in their pre-trial brief, stated that they are only presented 

8. 

315 RIB 41. 

316 RIB 41 citing RFF IV.E.2.25; RX-499 (the Abe '522 patent), Fig. 10. 

317 CRB 16 citing Respondents' Pre-Trial Brief at 156,165-66. 

318 CRB 17-18. 

319 SIB 43 citing RX-690C (Adler Direct) at Q/A 37-72,86,97; Adler, Tr. 2194-2205; SRB 

320 See Respondents' Pre-Trial Brief at 165-166. 

82 
"examples" of their invalidity arguments with respect to certain prior art references, this violates the 

undersigned's ground rules that all arguments must be preserved in the pre-trial brief in order to be 

considered. Therefore, Respondents' arguments regarding invalidity of claims 18, 19,23, 24, 43, 

33,36-38, and 41 based on the Abe '522 patent are deemed waived and will not be considered.32I 

h. The Beaman '846 Patent 

(1) Claim 1 

Respondents assert that U.S. Patent No. 5,635,846 ("the Beaman' 846 patent,,)322 anticipates 

the asserted claims of the '485 patent. According to Respondents, the Beaman '846 patent shows 

all the elements including: 

• a printed circuit board (68), which has a plurality of contact locations on its surface, 

meeting the "probe card" limitation; 

• a space transformer (54) and probe head (4), which meet the "probe substrate" and "space 

transformer" limitations; 

• plurality of elongate conducting members (42), which meets the "elongate, resilient probe 

elements" limitation; and 

• elastomeric connector (76) which electrically connects contact locations (75) with 

conducting members (42), meeting the "compliant interconnection structure" limitation.323 

According to Respondents, a person of ordinary skill in the art would recognize all these parts of the 

321 Regardless of the above procedural ruling, with regard to the substance of Respondents' 

arguments, the undersigned agrees with FormFactor and Staff that Respondents have not shown, by 

clear and convincing evidence, that claim 18 of the' 485 patent is invalid as anticipated by the Abe 

'522 patent at least because Respondents have failed to show that the reference discloses the 

additional limitations in claim 18, 19 or 29 in addition to not disclosing each and every limitation 

of claim 1. 

322 RX-150 (the Beaman '846 patent). 

323 RIB 42-43 citing RFF IV.E.2.41-42, 2.37-61. 

83 
probe card assembly recited in the asserted claims of the '485 patent.324 

FormFactor asserts that the Beaman '846 patent does not anticipate the '485 patent because 

it does not disclose the "elongate, resilient probe elements," "altering of the probe substrate," 

"moveable element," and "moveably affixed probe substrate" limitations. According to FormFactor, 

conductors 42 embedded in elastomeric material 44 do not exhibit the resilient behavior of the probe 

elements taught in the '485 patent.325 As for the "altering an orientation" limitation, FormFactor 

asserts that there is no evidence or suggestion from the specification that the clamping arrangement 

80 was designed to alter the orientation of space transformer 54. Furthermore, FormFactor asserts 

that the Beaman '846 patent discloses that member 82 is aluminum, which makes Phicom's claim 

that the screws will be used to alter the orientation implausible because the screw would have to 

bend the aluminum wall 82. Therefore, FormFactor asserts that the screw is not the "moveable 

element" nor is the space transformer "moveably affixed. ,,326 

Respondents counter FormFactor's arguments that the Beaman '846 patent does not include 

the "elongate resilient probe elements," "altering and orientation," and "moveable elements" 

limitations. According to Respondents, multiple individuals in the probe card industry agree with 

Mr. Taber that the Beaman '846 patent discloses "elongate resilient probe elements," as well as a 

mechanism for "altering an orientation" of the space transformer with respect to the PCB.327 

Furthermore, Respondents assert that the patent examiners in the reexamination have found that the 

324 RIB 42. 

325CIB 33-34 citing CFF 898-920 (specifically 898, 900-907); CRB 18. 

326 CIB 34 citing CFF 908-920. 

327 RRB 19 citing RFF IV.E.2.50-56, 59. 

84 
Beaman '846 patent discloses all of the limitations of the asserted claims.328 

The undersigned does not find Respondents' arguments to be persuasive. It is Respondents' 

burden to prove, by clear and convincing evidence, that all claim limitations are present in the prior 

art reference. Based on the evidence presented, Respondents have not met their burden. 

Specifically, Respondents have failed to show that the Beaman '846 patent discloses the "elongate, 

resilient probe elements," "altering of the probe substrate," "moveable element," and "moveably 

affixed probe substrate" limitations. As to Respondents' reliance on the office action in the 

reexamination, as the undersigned has already determined above, while relevant, it is not dispositive, 

especially because it is not clear that the examiners are basing their decision on claim constructions 

that are consistent with those made in Order No. 37. Accordingly, the undersigned finds that 

Respondents have not shown, by clear and convincing evidence, that claim 1 is anticipated by the 

Beaman '846 patent. 

(2) Claims 18 and 32 

Respondents assert that the additional limitation in claims 18 and 32 of "altering an 

orientation" is also anticipated by the Beaman '846 patent because elastomeric connector 76, which 

includes elastomeric material 78 and elongated electrical conductors 85 extending through 

elastomeric material 78, enables this limitation.329 Furthermore, Respondents assert that the Beaman 

'846 patent also describes a clamping arrangement 80, which includes screws that extend through 

members 84 and 82 into surface 70 of the printed circuit board 68. According to Respondents, there 

is testimony that the rotation of a screw in clamping arrangement 80 will move the probe substrate 

328 RRB 19 citingRX-175 (Office Action in Reexamination dated 6/12/08); RX-248 (Office 

Action in Reexamination dated 6/12 108) at 18-24. 

329 RIB 43 citing RFF IV.E.2.48-53. 

85 
either toward or away from the probe card, thereby altering the orientation of space transformer 54 

with respect to printed circuit board 68. 330 

As the undersigned has already ruled above that Respondents have failed to show, by clear 

and convincing evidence, that each and every limitation of claim 1 of the '485 patent is anticipated 

by the Beaman' 846 patent, the undersigned also finds that Respondents have failed to show, by clear 

and convincing evidence, that the additional limitation in claims 18 are anticipated by the Beaman 

'846 patent. 

And as the parties have presented no additional arguments as to claim 32, the undersigned 

also finds that Respondents have failed to show, by clear and convincing evidence, that each and 

every limitation of claim 32 of the '485 patent is anticipated by the Beaman '846 patent. 

(3) Claims 19, 23, 24, 33, 36, and 37 

Respondents assert that the additional limitation in claims 19,23,24, 33, 36, and 37 of a 

"moveable element" is also anticipated by the Beaman '846 patent because elastomeric connector 

76, which includes elastomeric material 78 and elongated electrical conductors 85 extending through 

elastomeric material 78, enables this limitation.331 

As the undersigned has already ruled above that Respondents have failed to show, by clear 

and convincing evidence, that each and every limitation of claims 1, 18, and 32 of the '485 patent 

are anticipated by the Beaman '846 patent, the undersigned also finds that Respondents have failed 

to show, by clear and convincing evidence, that the additional limitations in claims 19,23,24,33, 

36, and 37 are anticipated by the Beaman '846 patent. 

330 RIB 43 citing RFF IV.E.2.55-56, 2.58-59. 

331 RIB 43 citing RFF IV.E.2.48-53. 

86 
c. The Higgins '226 Patent 

Respondents assert that U.S. Patent No. 5,828,226 ("the Higgins '226 patent,,)332 anticipates 

the asserted claims of the '485 patent. First, Respondents assert that, because the '485 patent is not 

entitled to an earlier priority date, the Higgins '226 patent is prior art. Second, Respondents assert 

that the Higgins '226 patent shows all the elements including: 

• printed circuit board (19), which has a plurality of leads on its surface, which meets the 

"probe card" limitation; 

• interposer (82 and 13) with probe array (11), which meets the "probe substrate" limitation 

in claim 1 and the "space transformer" limitations in claims 29 and 41, which meets the 

"elongate, resilient probe elements" limitation; and 

• slanted pins (49) of compliant interconnect (17), which meet the "compliant 

interconnection structure" limitation, which enables the "altering an orientation" in claims 

18 and 32, and the "moveable element" in claims 19,23,24,33,36, and 37.333 

FormFactor asserts that the Higgins '226 patent does not anticipate the '485 patent because 

the Higgins '226 patent is not prior art. According to FormFactor, the '485 patent is entitled to a 

priority date of November 9, 1995 and the Higgins '226 patent was not filed until almost a year after 

that date.334 

Respondents counter FormFactor's argument that the Higgins '226 patent is not prior art. 

According to Respondents, Mr. Taber has provided testimony as to why the original patent 

application in 1995 does not meet the written description and enabling disclosure requirements.335 

Furthermore, Respondents note that the patent examiners in the reexamination have made a similar 

332 RX-161 (the Higgins '226 patent). 

333 RIB 44 citing RFF IV.E.2.81-82, 2.85-89. 

334 CIB 35 citing CFF 921-926; CRB 18. 

335 RRB 20 citing RFF IV.EA.02-11. 

87 
finding.336 

As ruled upon above, the undersigned finds that Respondents have not shown, by clear and 

convincing evidence, that the '485 patent is not entitled to a November 9, 1995 priority date. 

Therefore, the Higgins '226 patent is not prior art. 

d. The Evans '079 Patent 

Respondents assert that U.S. Patent No. 5,355,079 ("the Evans '079 patent,,)337 anticipates 

asserted claims 32,33,36,37, and 41 of the '485 patent because the Higgins '226 patent shows all 

the elements including: 

• printed circuit board (1), which has a plurality ofleads L on its surface, which meets the 

"probe card" limitation; 

• film membrane (13), which meets the "probe substrate" limitation in claim 32, and the 

"space transformer" limitation in claim 41 ; 

• film membrane (13) includes the "elongate, resilient probe elements" in the form of 

cantilevered spring fingers F; and 

• film membrane (1) is moveably affixed to printed circuit board (10) by screws S 1 through 

S4 and mounting ring 11.338 

Furthermore, Respondents assert that the "altering an orientation" and "moveable element" 

limitations in claims 32, 33, 36, and 37 are shown by the disclosure in the Evans '079 patent of 

adjusting threaded screws S 1 to S4 to alter the orientation of film membrane (13) with respect to 

printed circuit board (10) and align tips of spring fingers F. Specifically, moving a screw in one 

direction causes at least a portion of film membrane 13 to move toward printed circuit board 10 and 

336 RRB 20 citingPoweroasis, Inc. v. T-Mobile USA, Inc. 522 F.3d 1299, 1305-06 (Fed. Cir. 

2008) ("Poweroasis"). 

337 RX-154 (the Evans '079 patent). 

338 RIB 45 citing RFF IV.E.2-63-64. 

88 
moving a screw in the opposite direction causes at least a portion of film membrane 13 to move away 

from printed circuit board.l0.339 

FormFactor asserts that the Evans '079 patent does not anticipate claims 32, 33, 36, 37, and 

41 of the' 485 patent because it does not disclose the aligning tips of the probe elements by altering 

an orientation of said probe substrate with respect to said probe card. According to FormFactor, the 

Evans' 079 patent discloses a membrane probe card in which spring contact fingers are formed from 

extensions of the metallic interconnects in a laminated, flexible film membrane and that the 

alignment mechanism does not serve to align the tips of the fingers. 340 

Respondents counter FormFactor's arguments that the Evans '079 patent does not disclose 

the "aligning" limitation. According to Respondents, Dr. Howe's testimony contradicts 

FormFactor's position because Dr. Howe testified that the Evans '079 patent describes a probe card 

assembly where the plane of the probe elements are made as close to parallel as possible with the 

plane of the wafer under test, using threaded screws S I-S4, and referred to the technology as "first 

order planarization.,,341 In further support, Respondents cite to the Office Action in the 

Reexamination.342 

The undersigned does not find Respondents' arguments to be persuasive. It is Respondents' 

burden to prove, by clear and convincing evidence, that all claim limitations are present in the prior 

art reference. Based on the evidence presented, Respondents have not met their burden. 

Specifically, Respondents have failed to show that the Evans '079 patent discloses the "altering an 

339 RIB 45-46 citing RFF IV.E.2.71. 

340 CIB 32 citing CFF 856-869; CRB 18. 

341 RRB 18-19 citing RFF IV.E.2.70-73. 

342 RRB 19 citing RX-175 (Office Action in Reexamination dated 6/12/08); RX-248 (Office 

Action in Reexamination dated 6/12/08) at 30-31. 

89 
orientation" and "moveable element" limitations. As to Respondents' reliance on the office action 

in the reexamination, as the undersigned has already determined above, while relevant, it is not 

dispositive, especially because it is not clear that the examiners are basing their decision on claim 

constructions that are consistent with those made in Order No. 37. Accordingly, the undersigned 

finds that Respondents have not shown, by clear and convincing evidence, that claim 1 is anticipated 

by the Evans '846 patent. 

4. Obviousness: The Abe '522 Patent in Combination with One of 

Ordinary Skill in the Art; the Nakajima '056 Patent; the Philips '360 

Patent; the Lander '079 Patent; and/or the Hart '383 Patent 

Respondents assert that if the undersigned does not find that claims 1, 3, 4, and 29 are 

anticipated by the Abe' 522 patent, then the Abe' 522 patent in combination with the knowledge of 

one of ordinary skill in the art renders those claims obvious.343 Respondents also assert that if the 

undersigned does not find that claims 18, 19,32, and 33 are anticipated by the Abe' 522 patent, then 

the Abe '522 patent in combination with U.S. Patent Nos. 5,642,056 ("the Nakajima '056patent,,)344, 

4,655,360 ("the Phillips '360patent,,)345, and/or 5,335,079 ("the Lander '079 patent,,)346 render those 

claims obvious.347 According to Respondents, it would have been obvious to one of ordinary skill 

in the art to modify the probe card disclosed in the Abe' 522 patent to include mechanical adjustment 

mechanisms disclosed in the Nakajima '056 patent, the Phillips '360 patent, and/or the Lander '079 

patent, as each of those patents discloses aligning tips of probe elements by altering the orientation 

343 RIB 46. 

344 RX-505 (the Nakajima '056 patent). 

345 RX-473 (the Phillips '360 patent). 

346 RX-493 (the Lander '079 patent). 

347 RIB 46 citing RFF IV.E.3.38. 

90 
of a probe substrate with respect to a probe card.348 

Specifically, Respondents assert that the Nakajima '056 patent discloses both the "altering 

an orientation" and "moveable element" limitations in claim 18, 19, and 32 in Figure 4 and teaches 

altering the orientation ofthe probe substrate with respect to the probe card using differential screws 

53 at the periphery of the probe card assembly?49 

FormFactor asserts that the Abe' 522 patent, in combination with the Nakajima '056 patent, 

does not render claims 18, 19,32,33, and 41 of the '485 patent obvious because the Nakajima '056 

patent fails to disclose the "altering an orientation" limitation. According to FormFactor, the 

Nakajima '056 patent does not even disclose a probe card assembly that includes a probe card and 

a probe substrate as two of its components, therefore there is no ability to alter the orientation of a 

probe substrate with respect to a probe card.350 

As to the Phillips '360 patent, Respondents assert that the reference teaches altering the 

orientation of a probe substrate with respect to a probe card, as shown in Figure 2. Specifically, 

Figure 2 shows a probe card assembly, including interface probe card (26), corresponding to the 

probe substrate, and an interface board (70), which is the probe card. Furthermore, the Phillips '360 

patent teaches spring-loaded screws (42) disposed in slots (44) and that the screws within the slots 

allow rotation ofthe substrate with respect to the probe card, thus allowing for positioning the probes 

with respect to the wafer.351 

FormFactor asserts that the Abe '522 patent, in combination with the Phillips '360 patent, 

348 RIB 46 citing RFF IV.E.3.07. 

349 RIB 46-47 citing RFF IV.E.3.12, 14-15. 

350 CIB 29 citing CFF 788-798; CRB 19. 

351 RIB 47 citing RFF IV.E.3.17-18. 

91 
does not render claims 18, 19,32,33, and 41 of the '485 patent obvious because the Phillips '360 

patent fails to disclose the "elongate, resilient probe elements," "compliant interconnection 

structures," and "altering an orientation" limitations. According to FormFactor, the rotation 

orientation in the Phillips '360 patent is totally different from the one disclosed in the '485 patent. 

Specifically, FormFactor asserts that the '485 patent discloses rotation that involves tilting, while 

the Phillips '360 patent does not. Furthermore, FormFactor asserts that Respondents have not 

provided any evidence as to why the Abe '522 patent and the Phillips '360 patent should be 

combined.352 

As to the Lander '079 patent, Respondents assert that the reference teaches a means for 

altering the orientation of a probe substrate with respect to a probe card, as shown in Figures 1 and 

2. Specifically, Figures 1 and 2 illustrate a probe card assembly with four actuating screws, S I-S4, 

disposed along the periphery of the probe card and that actuating the screws alters the orientation of 

the probe substrate (13) with respect to the probe card (10).353 

Micronics asserts that, if Dr. Howe's theory that Micronics' pogo pins are "compliant" is 

accepted, then the Abe '522 patent, either alone, or in combination with U.S. Patent No. 4,724,383 

("the Hart '383 patent") teaches a compliant interconnection structure. Specifically, Figures 1 and 

2 from the Hart '383 patent discloses the use of pogo pins for making electrical connection in a probe 

card.354 

FormFactor asserts that the Abe '522 patent, in combination with the Hart '383 patent, does 

not render claims 1,3,4, 18, 19, and 29 of the '485 patent obvious because the Hart '383 patent fails 

352 CIB 29-30 citing CFF 802-818; CRB 19. 

353 RIB 47 citing RFF IV.E.3.20. 

354 RIB 47-48 citing RFF IV.E.3.32, 3.36. 

92 
to disclose the "compliant interconnection structure" limitation. According to FormFactor, the Hart 

'383 patent pertains to printed-circuit board testing, not semiconductor wafer probing and that the 

interconnection structure in the Hart '383 patent does not provide any room for movement, which 

teaches away from the compliant interconnection structure in '485 patent that allows for the altering 

of orientation. In addition, FormFactor asserts that the interconnection structure in the Hart '383 

patent does not electrically connect electrical contacts to the elongate, resilient probe elements. 

Furthermore, FormFactor asserts that Respondents have not provided any evidence as to why the 

Abe '522 patent and the Hart '383 patent should be combined.355 

Respondents counter FormFactor's arguments. According to Respondents, the Abe '522 

patent does in fact disclose "elongate resilient probe elements." Alternatively, Respondents assert 

that if the undersigned finds that the Abe' 522 patent does not expressly or inherently disclose the 

resilient nature of probe 72, then it would have been obvious to form probes from the most common 

probe material, which is resilient tungsten needle probes, which are known to a person of ordinary 

skill in the art.356 Specifically, Respondents assert that both Dr. Howe and Dr. Adler agree that a 

functional probe must be primarily resilient, and that Dr. Howe testified that a probe needle should 

have a bend in it, and that item 72, shown in Figure 8 of the Abe' 522 patent is a needle with a slight 

bend it is that is exactly the right shape to form a resilient, springy probe.357 

Respondents assert that FormFactor does not contest that the Abe '522 patent discloses the 

"altering" and "moveable element" limitations in claims 18, 19,23,24,32,33,36,37, and 41, but 

74. 

355 cm 30-31 citing CFF 821-828. 

356 RRB 21 citing RFF IV .E.2.17. 

357RRB 21 citingRX-499 (the Abe '522 patent) at Fig. 8; RFFIV.E.2.18-19; Howe, Tr. 573-

93 
that even if the Abe '522 patent does not disclose these limitation, that the Abe '522 patent in 

combination with the Nakajima '056 patent, the Phillips '360 patent, and/or the Lander '079 patent, 

discloses these limitations. 

As to FormFactor's argumentthat the Philips '360 patent is totally different from the claimed 

altering an orientation limitation, Respondents assert that the limitation must be construed by its 

plain meaning and the plain meaning of "align" does not preclude rotational alignment.358 

As to ForrnFactor's argument that the Abe '522 patent in combination with the Nakajima 

'056 patene59 does not render the '485 patent obvious, Respondents assert that the Nakajima '056 

patent clearly discloses the altering step by using differential screws 53 at the periphery of the probe 

card assembly.360 

As to motivation to combine, Respondents assert that Federal Circuit case law only requires 

a person of ordinary skill in the art to be able to implement a "predictable variation" to a prior art 

method for it to be obvious. According to Respondents, there is a predictable variation in prior art 

probe card ofthe Abe '522 patent, along with a mechanism for altering orientation of a probe card 

using screws, as shown in the Nakajima '056 patent, the Phillips '360 patent, and/or the Lander '079 

patent, which any person of ordinary skill in the art would have been motivated to combine.361 

FormFactor asserts that the Abe '522 patent lacks the "elongate, resilient probe element" 

limitation and that combining the Abe '522 patent with Nakajima, Phillips, and Evans for the 

purpose of the "aligning" step does not cure this missing element and therefore does not render the 

358 RRB 22 citing RFF N.E.3.l8; RX-473 (the Phillips '360 patent) at Fig. 2. 

359 In a footnote, Respondents assert that the Evans '079 patent similarly discloses the use of 

adjusting screws to planarize a probe card assembly. RRB 22, n. 13 citing RFF IV.E.3.19-20. 

360 RRB 22 citing RFF IV.E.3.l4; RX-505 (the Nakajima '056 patent). 

361 RRB 22-23 citing RFF IV.3.09. 

94 
'485 patent obvious.362 Specifically, as to the Evans patent, FormFactor asserts that Evans does not 

disclose the "aligning" step. . 

According to Staff, the issue of whether the Abe' 522 patent renders the' 485 patent obvious 

is whether one of ordinary skill in the art would have found it obvious to have combined an elongate 

resilient probe element with the Abe' 522 patent to achieve the claimed invention in the' 485 patent 

and whether secondary considerations of non-obviousness support a conclusion of obviousness. Staff 

ultimately agrees with FormFactor that the evidence does not clearly and convincingly show that the 

Abe '522 patent renders the '485 patent obvious.363 

Staff asserts that Respondents have failed to show, by clear and convincing evidence, that 

any of the asserted claims ofthe '485 patent are invalid as anticipated or obvious by the Abe '522 

patent, at least because the prior art did not disclose or render obvious the claimed "compliant 

interconnection structure," or the step of "aligning tips of said probe elements by altering an 

orientation. ,,364 

The undersigned does not find Respondents' arguments to be persuasive. It is Respondents' 

burden to prove, by clear and convincing evidence, that all claim limitations are present in a 

combination of the prior art references and that there be some showing of a motivation to combine 

or a predictable variation. 365 Here, Respondents have failed to make any specific showing that a 

person of ordinary skill would implement a predictable variation for any of the proposed prior art 

8. 

362 CRB 18-19. 

363 SRB 8-9. 

364 SIB 43 citing RX-690C (Adler Direct) at QI A 37-72, 86,97; Adler, Tr. 2194-2205; SRB 

365 KSR, 550 u.S. at 417-18 ("If a person of ordinary skill can implement a predictable 

variation, § 103 likely bars its patentability.") 

95 
combinations other than asserted generalized arguments that such variations were predictable. 

Accordingly, the undersigned finds that, Respondents have not shown, by clear and convincing 

evidence, any of the asserted claims are obvious in light of any of the asserted prior art combinations. 

5. Written Description & Enablement 

Respondents assert that none of the asserted claims of the '485 patent are supported by a 

written and enabling disclosure because the '485 patent does not describe the claimed methods for 

"producing a semiconductor device. ,,366 According to Respondents, neither the' 485 patent nor any 

of its earlier-filed priority applications describe the claimed invention in sufficient detail to meet the 

written description and enablement requirements. While Respondents concede that the' 485 patent 

discloses a structure that can be used as a component in testing, it does not describe nor enable any 

of the other necessary steps to produce a tested semiconductor device. Specifically, the '485 patent 

does not describe a tester, a prober, a test head, anything with respect to how to conduct a test, how 

to singulate semiconductor devices from a semiconductor wafer, or how to assemble and package 

semiconductor devices.367 

Respondents note that the Patent Office, which is reexamining the '485 patent agrees.368 

Specifically, Respondents assert that Phi com filed a request for an inter partes reexamination of the 

'485 patent on March 14,2008, which was granted on June 12,2008. Respondents assert that three 

Examiners have agreed that the asserted claims are not patentable over the identified prior art, which 

includes the Abe, Beaman, Higgins, and Evans patents. Respondents contend that, even though 

366 RIB 48 citing RFF IV.E.4.02-11. 

367 RIB 49 citing RFF IV.E.4.02-09. 

368 RIB 49-50 citing RFF IV.E.6.08. 

96 
Patent Office decisions are not dispositive, such findings are relevant. 369 

F ormF actor asserts that the' 485 patent satisfies the written description requirement because 

it expressly discloses using the described advanced probe card assembly for producing known good 

die from an untested semiconductor wafer made using methods well known in the art,370 and how 

to use the advanced probe card assembly to solve the problem of producing tested semiconductor 

devices.371 FormFactor also asserts that there is a detailed description in the specification of Figure 

5 and that one of ordinary skill in the art would understand that the inventors conceived their 

invention to include a method of producing tested semiconductor devices using probe cards with the 

features set forth in the claims.372 Finally, FormFactor asserts that Mr. Taber, Phicom's expert, 

applied the wrong standard for a person of ordinary skill in the art.373 

Staff asserts that Respondents have not shown, by clear and convincing evidence, that the 

asserted claims are invalid under § 112. Specifically, Staff asserts that the evidence does not clearly 

and convincingly show that the inventors were not in possession of the invention at the time of the 

original filing or that one of ordinary skill in the art could not understand the bounds of the claims. 

As to enablement, Staff notes that while Dr. Khandros admitted that, in order to practice the claimed 

invention, experimentation would be required, Dr. Khandros' testimony does not clearly and 

convincingly demonstrate that the specification of the '485 patent would not have taught one of 

ordinary skill in the art how to make and use the full scope of the claimed invention without "undue" 

369 RIB 50-51 citing RFF IV.E.5.11. 

370 CIB 35 citing JX-3 (the '485 patent) at col. 1 :35-50. 

371 CIB 35 citing JX-3 (the '485 patent), col. 1 :60-2:5; CRB 20. 

312 CIB 35-36 citing JX-3 (the '485 patent) at col. 30:51-67. 

373 CIB 36 citing Taber, Tr. 1461-63. 

97 
experimentations.374 

The undersigned agrees with FormFactor and Staff that, Respondents have not shown, by 

clear and convincing evidence that the asserted claims are invalid under § 112 because the evidence 

does not show that the inventors were not in possession of the invention at the time of the original 

filing or that one of ordinary skill in the art could not understand the claims. As noted above, while 

the proceedings in the reexamination may be relevant, they are not dispositive. Accordingly, the 

'485 patent is not invalid based on lack of written description or enablement. 

6. Related Proceedings 

While Respondents devote a section of their post-hearing briefs to the invalidity findings 

made by the Korean courts, the undersigned does not rely on any of Respondents arguments as to 

the findings made by the Korean courts. 

v. The '751 Patent 

A. Overview 

Six claims of the '751 patent are asserted against Respondents, namely 1, 12, and 24, which 

are independent claims, and claims 2,3 and 25, which are dependent claims. These claims read as 

follows: 

1. A probe card assembly comprising: a substrate having a first surface, wherein the first 

surface has an area that includes a central region and at least one peripheral region, wherein 

each peripheral region is located further from a center of said substrate than said central 

region; a plurality of contact elements coupled to said first surface" of said substrate; and at 

least one planarizing element capable of transmitting a force to the central region of said 

substrate to modify a shape of the first surface at said central region relative to a shape of 

said first surface at each peripheral region, whereby, the first surface can be made planar. 

2. A probe card assembly as in claim 1 wherein each of said contact elements has a contact 

374 SIB 47. 

98 
region, and wherein said at least one planarizing element applies a force to the central region 

relative to each peripheral region such that said contact regions are planarized relative to one 

another. 

3. A probe card assembly as in claim 1 wherein said plurality of contact elements comprises 

free-standing spring elements. 

12. A probe card assembly comprising: a space transformer having a first surface, wherein the 

first surface has an area that includes a central region and at least one peripheral region, 

wherein each peripheral region is located further from a center of said space transformer than 

said central region; a plurality of contact elements, coupled to said first surface of said space 

transformer; an adjustable central control member capable of transmitting a force to the 

central region of said space transformer to modify a shape of the first surface at said central 

region relative to a shape of said first surface at each peripheral region; and at least one 

adjustable peripheral control member, wherein each adjustable peripheral control member 

is capable of transmitting a respective force to a respective peripheral region of said space 

transformer to modify a shape of the first surface at the respective peripheral region relative 

to a shape of said first surface at the central region. 

24. A probe card assembly comprising: a substrate having a central region and at least one 

peripheral region, wherein each peripheral region is located further from a center of said 

substrate than said central region; a plurality of contact elements, coupled to said substrate; 

an adjustable central control member capable of transmitting a force to the central region of 

said substrate to modify a shape at said central region relative to a shape at each peripheral 

region; and at least one adjustable peripheral control member, wherein each adjustable 

peripheral control member is capable of transmitting a respective force to a respective 

peripheral region of said substrate to modify a shape at the respective peripheral region 

relative to a shape at the central region. 

25. A probe card assembly of claim 24, wherein said substrate comprises a space transformer. 

As noted above, the undersigned has already construed the above claims in a Markman order.375 A 

summary of the claims construed in that order is detailed below: 

Claim Term Construction 

Claim 1 substrate a carrier (including a flexible material as well as rigid 

boards) on which something can be formed or 

attached 

375 See Order No. 37. 

99 
Claim 1 a central region and at least one plain meaning 

peripheral region, wherein each 

peripheral region is located 

further from a center of said 

substrate than said central 

region 

and 

to modify a shape of the first 

surface at said central region 

relative to a shape of said first 

surface at each peripheral region 

Claim 1 a plurality of contact elements plain meaning 

coupled to said first surface of 

said substrate 

Claim 1 planarizing element an apparatus that when applied to a substrate is 

capable of applying a pushing or pulling force on the 

substrate to achieve a desired deformation of the 

substrate 

Claim 3 free-standing spring elements interconnection elements which have one end 

attached to a structure, and which are intended to 

make pressure contact with terminals of an electronic 

component at one free376 end thereof 

Claim 12 space transformer an interconnect assembly which makes 

interconnections from a one pitch to another pitch 

Claim 12 a plurality of contact elements, plain meaning 

coupled to said first surface of 

said space transformer 

Claim 12 adjustable central control an adjustable planarizing apparatus that when applied 

member to a substrate is capable of applying a pushing or 

pulling force on the substrate to achieve a desired 

deformation of the substrate in the center 

376 As noted during the hearing, there is an errata to the undersigned's claim construction 

where the word "free" was inadvertently omitted from the claim construction. Bullock, Tr. 2050 

(March 5, 2009). 

100 
Claim 12 adjustable peripheral control an adjustable planarizing apparatus that when applied 

member to a substrate is capable of applying a pushing or 

pulling force on the substrate to achieve a desired 

deformation of the substrate in the peripheral region 

Claim 24 a plurality of contact elements, plain meaning 

coupled to said substrate 

B. Infringement 

1. Phicom 

FormFactor never contended that Phicom' s Type A or Type D MEMS probe card assemblies 

infringe the '751 Patent and thus those assemblies are not at issue in this investigation.377 

Phicom does not contest that its Type B and C MEMS Cards fall within the undersigned's 

claim construction for the asserted claims of the' 751 patent. 378 Thus, it is undisputed that Phicom' s 

Type B and C MEMS Cards infringe the asserted claims of the '751 patent. 

With respect to Phicom's new, redesigned MEMS Cards, Phicom asserts that said cards do 

not infringe any claim of the '751 patent,379 while FormFactor and Staff first allege that said cards 

are not subject to the jurisdiction of the Commission.380 FormFactor argues that there is no 

jurisdiction because there is no "imminent importation" and no other evidence that "infringing acts 

are reasonably likely to occur.,,381 However, the undersigned previously addressed this argument of 

377 CX-732C at Q/A 134-135; CX-760C at Q/A 3,5, 7. 

378 RRB 23; CIB 38-39. Phicom's Type B probe card assemblies are obsolete and no longer 

manufactured. Taber Tr. 1458:22-1459:5. Phicom's Type C probe card assemblies illustrated in 

RX-1D2C, without a fixed center bolt, are obsolete and no longer manufactured. Taber Tr. 

1458:22-1459:5. 

379 RIB 51-54. 

380 CIB 39; SIB 50. 

381 CIB 39 and CRB 19, both citing Arngen, 519 F.3d at 1352 . 

101 
FormFactor,382 finding that the Commission does have jurisdiction over Phicom's new probe card 

design assembly. Thus, the issue of whether Phicom's new probe card design assembly infringes 

the '751 patent shall be addressed below. 

a. Claim 1: Literal Infringement 

FormFactor argues that Phicom's new MEMS Cards contain 1) a substrate ("MPH"), 2) 

having a surface facing a semiconductor wafer, 3) said surface having central and peripheral regions, 

and 4) contact elements ("Micro Probes") coupled to said surface.383 F ormFactor argues that the only 

purported difference between Phicom' s infringing Type C probe card assemblies and the new MEMS 

Cards is the replacement of the central planarizing andlor adjusting bolt/screw mechanism of the 

Type C probe card assemblies with a "Height Setting Block" and center bong combination, which 

FormFactor also refers to variously as a "Holding Block" and a "Center Fixing Module.,,384 

According to FormFactor, Mr. Jun Tae Hwang, a Phicom engineer in charge of the design of the new 

center device,385 testified that the only change in the new probe card is the replacement ofthe center 

382 See Section II.A., supra. 

383 CIB 40; CFF 944-959, 963-967, 994. Specifically, FormFactor asserts: 

The newly designed MEMS Cards contains [sic] 1) probe cards in the form of PCBs 

having a plurality of contact areas disposed on a surface; 2) space transformers called 

Microprobe Heads ("MPH") that make interconnections from one pitch to another 

pitch; 3) elongate, resilient probe elements called Microprobes that exhibit primarily 

elastic behavior in response to an applied load or contact force; 4) a compliant 

interconnection structure in the form of NIPs and guide films that electrically connect 

ones of the electrical contacts with the Microprobes, and 5) planarizing elements in 

the form of bolts and screws that can planarize respective local areas of the MPH for 

a first and second order planarization. 

CFF 959. 

384 CIB 40 citing CX-758C, CX-647C, and RX-221C. 

385 It is undisputed that Phicom's witness Mr. Hwang was responsible for the design of 

(continued ... ) 

102 
control bolt by the "Height Setting Block/Center Fixing Module.,,386 FormFactor argues that Mr. 

Hwang established that the new center device allows for adjustment of the separation of the MPH 

substrate and the printed circuit board ("PCB,,).387 

FormFactor argues that the new "Height Setting Block/Center Fixing Module" aspect of 

Phicom's new card design is an adjustable planarizing apparatus capable of applying and holding 

a controlled force at the center of the MPH substrate to achieve a desired deformation of the MPH 

substrate.388 FormFactor asserts that the position, i.e., height or length, of the Height Setting 

Block/Center Fixing Module can be controlled or adjusted via the threaded center screw (or "bong") 

by rotating the Height Setting Block/Center Fixing Module around the screw/bong.389 In particular, 

FormFactor relies on CX-758C, a document which FormFactor alleges illustrates that height 

adjustment is performed by operation of a screw, "just like the screws used on the older central and 

current peripheral planarization mechanism which Phicom does not contest as adjusting planarity.,,390 

FormFactor asserts that rotation of the screw leads to an adjustment of the distance between the 

MPH substrate and the PCB.391 FormFactor also asserts that "even when screwed in all the way, the 

arrangement produces the applied force to achieve the desired formation. ,,392 

FormFactor further argues that, in addition to manually adjusting the separation between the 

385( ... continued) 

Phicom's new probe card assembly design. CFF 973 citing CX-752C at 92:18-21; CFF 974 citing 

CX-752C at 93:8-19 and Hwang Tr. 1332:6-12; ROCFF 973; ROCFF 974. 

386 CFF 964 citing CX-752C at 33:15-20,34:11-13, and 34:15-16. 

387 CIB 41. 

388 CIB 40; CFF 990-1022. 

389 CIB 41. 

390 CRB 19-20. 

391 CIB 41 citing CX-755C at PHI54755; CRB 20. 

392 CIB 41. 

103 
MPH substrate and the PCB by rotating the Height Setting Block/Center Fixing Module around the 

screw/bong, the height or length of the Height Setting Block/Center Fixing Module itself can be 

changed independently of the use of the "screwing adjustment process.,,393 FormFactor argues that 

"Mr. Hwang confirmed that the different heights of center bolts can be selected when a new MEMS 

Card is assembled.,,394 FormFactor argues that changing the length of the Height Setting 

Block/Center Fixing Module "establishes that the 'new' design MEMS Cards include an adjustable 

central planarizing element. ,,395 

FormFactor argues that, even if the final position of the components is fixed, "the fixed 

position is adjusted by operation of the screw or by swapping different height setting blocks" and 

this satisfies claim 1 's requirement of a planarizing element because, according to the undersigned's 

claim construction, the apparatus need only be capable of applying a pushing or pulling force on the 

substrate to achieve a desired deformation of the substrate.396 

Phi com asserts that its redesigned MEMS Cards have a "fixed center bolt that keeps the 

Phicom PCB and MPH at a fixed relative position, so that the distance between the PCB and the 

MPH cannot be modified at the location of the bolt.,,397 Phicom also asserts that all Phi com Type 

C MEMS Cards manufactured since December 2008 use a fixed center bolt/98 and does not dispute 

that, other than the fixed center bolt, Phicom's redesigned MEMS Cards sold since December 2008 

393 CrB 41. 

394 CrB 41 citing Hwang Tr. 1398:1-5. 

395 CrB 41-42. 

396 CRB 20. 

397 RIB 51; RRB 24; RRCFF 992E (stating, "The purpose ofthe fixed center bolt in Phi com's 

[new] Type C probe card assemblies is to fix the distance between the micro probe head (MPH) and 

the printed circuit board in the center, and to prevent any adjustment of that distance.") citing Hwang 

Tr. 1387:1-1388:9; RX-418C at Q/A 9,35-38,48,54,57,85. 

398 RX-0381C at Q/A 161-162. 

104 
are the same as Phicom's previous Type C probe card assemblies.399 

Phicom argues that the "fixed center bolt" at issue is locked in place between the MPH 

substrate and the PCB and that it has a "single designed length," which cannot be moved or adjusted 

to change length or to "transmit a force to modify a surface shape" of the MPH substrate.4oo Phi com 

further argues that the fixed center bolt "prevents deformation at the center of the MPH.,,401 

Phicom adds that customers cannot access the fixed center bolt because the new MEMS 

Card, as shipped, includes a cover that is secured over the fixed center bolt by specialty bolts and 

Loctite.402 Phicom argues that "with its cover plates in place, all of the assembled components of 

the fixed center bolt are inaccessible and fixed in place.,,403 Phicom further argues that its fixed 

center bolt falls within the scope of the prior art.404 

Staff argues that, with respect to the function and operation of the new fixed center bolt, the 

testimony of FormFactor's expert, Dr. Howe, is at odds with the testimony of Phi com's engineer, 

Mr. Hwang, and that Dr. Howe's testimony is not sufficienUo carry F ormF actor's burden of proving 

infringement because it "is not based on the actual use and operation of the new center bolt.,,405 

The undersigned finds the arguments of Phi com to be persuasive and that FormFactor has 

failed to prove, by a preponderance of the evidence, that Phicom's MEMS Cards meet each and every 

399 RFF V.B.l.04 and RRCFF 992C, both citing RX-418C at Q/A 49-51; RX-0381C at Q/A 

162; Hwang Tr. 1328:6-14; RRB 24 (stating, "On the merits, the only difference between the 

obsolete and the current Type C designs is that the adjustable center assembly in the obsolete design 

has been replaced with a new fixed center assembly."). 

400 RIB 52, 53; RRB 24. 

401 RIB 52. 

402 RIB 52 citing RFF V.B.l.20. 

403 RIB 53. 

404 RIB 53-54. 

405 SIB 50-52 comparing CX-760C atQ/A 8 and Q/A 9 with Hwang Tr. 1388-90 (stating that 

it would not be possible to change the height of the bolt in the actual assembly) and 1390-93. 

105 
limitation of claim 1 of the '751 patent. Specifically, FormFactor has failed to show that the fixed 

center bolt in Phicom's MEMS Cards meets the "planarizing element" limitation of claim 1 because 

there is no evidence that the bolt is capable of applying any force that achieves (or is capable of 

achieving) a desired deformation of the MPH substrate. 406 

The undersigned construed the claim limitation, "planarizing element," as "an apparatus that 

when applied to a substrate is capable of applying a pushing or pulling force on the substrate to 

achieve a desired deformation of the substrate." With respect to deformation of the MPH substrate, 

the undersigned finds that FormFactor makes only unsupported conclusory assertions such as, "the 

arrangement produces the applied force to achieve the desired formation. ,,407 The undersigned finds 

that FormFactor has failed to present any evidence that Phicom's new MEMS Cards include an 

element that achieves, or is capable of achieving, a desired deformation of the MPH substrate. 

The evidence that FormFactor provides is focused on the new fixed center bolt's effect on 

the separation distance between the MPH substrate and the PCB, which FormFactor alleges may be 

adjusted by rotating a screw or by swapping different height setting blocks. Even if such is evidence 

that the fixed center bolt is capable of applying a pushing or pullingforce, the undersigned finds that 

FormFactor still has not presented any evidence that the alleged force on the MPH substrate 

, achieves, or is capable of achieving, a desired deformation ofthe substrate. Conversely, Mr. Taber 

testified that the fixed center bolt in Phicom's new probe card design assemblies is not used for 

406 One argument among the parties centers around whether the new fixed center bolt design 

should be referred to as a "height setting block" based on CX-758C or a "holding block" based on 

CX-647C. See, e.g., CRB 20, fn. 4; Hwang Tr. 1399:16-1400:25. However, the undersigned finds 

that the name given to the design has no real significance here in determining whether or not the 

design infringes the '751 patent. 

407 CIB 41. 

106 
planarization and is not capable of applying a force to, or changing the shape of, the MPH 

substrate.408 

Therefore, the undersigned finds that FormFactor has not met its burden of proving, by a 

preponderance of the evidence, that Phicom's new MEMS Cards literally infringe each and every 

limitation of independent claim 1 ofthe '751 patent. 

b. Claim 1: Literal Infringement Under the Doctrine of Equivalents 

FormFactor argues that even if the position, i.e., height or length, of the Height Setting 

Block/Center Fixing Module, which sets the distance between the MPH substrate and the PCB, is 

fixed, the new MEMS Cards infringe independent claim 1 of the '751 patent under the doctrine of 

equivalents because the height is "selected to ensure that the force applied results in the desired 

deformation" of the MPH substrate.409 More specifically, FormFactor states that "the desired relative 

deformation of the MPH is achieved as the fixed central planarizing element will be applying a force 

depending on the relative forces of the peripheral planarizing elements.,,410 Thus, according to 

F ormFactor: 

[T]he alleged 'new' design MEMS Cards include a center device that performs the 

same function (i. e., desired deformation of the central region of the substrate) in 

substantially the same way (via an adjustable mechanism for exerting a controlled 

force to the central region of the substrate) in order to achieve the same result (i. e., 

planarizing the tips of the probe elements mounted to the substrate) as the central 

planarizing element and the adjustable central control member. 411 

F ormF actor argues that "there is no difference between the functional capabilities between the center 

planarization mechanism contained in the older Type B and C MEMS Cards and the 'new' center 

408 RX-418C at Q/A 9,57,81,85-91; RX-415C at Q/A 172-74. 

409 CIB 42. 

410 CIB 42. 

411 CIB 42 citing CFF 1011-12, 1018-21, 1029, 1039-41. 

107 
bolt design.,,412 

Phicom argues that the doctrine of equivalents is not available to FormFactor because of 

prosecution history estoppel. 413 As evidence, Phicom points to F ormF actor's narrowing amendments 

during prosecution of the application leading to the '751 patent for the "planarization element" of 

claim 1.414 Phicom also argues that FormFactor waived its right to argue that Phicom infringes the 

'751 Patent under the doctrine of equivalents by presenting no such argument in its PreHearing 

Brief. 415 

Staff argues that Dr. Howe's opinion that the peripheral screws of the new fixed center bolt 

assembly adjust the force applied on the central area of the assembly ignores that there are claim 

limitations directed to both the peripheral region and the central region of the assembly. 416 Staff 

argues that Dr. Howe's analysis omits a limitation of the asserted claims and thus does not establish 

that Phicom's new MEMS Cards infringe the asserted claims of '751 patent under the doctrine of 

equivalents.417 

Again, the undersigned finds that FormFactor has failed to prove, by a preponderance of the 

evidence, that Phicom's new MEMS Cards meet each and every limitation of claim 1 of the '751 

patent. Specifically, FormFactor has failed to show that the fixed center bolt in Phicom's new 

MEMS Cards meets the "planarizing element" limitation because there is no evidence that the bolt 

412 CRB 20-21. 

413 RIB 54 and RRB 25, both citing Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 

535 U.S. 722, 727 (2002) ("Festo"). 

414 RIB 54; RRB 25. 

415 ROCFF 1040. 

416 SIB 52. 

417 SIB 52 citing Carnegie Mellon Univ. v. Hoffmann-LaRoche, Inc., 541 F.3d 1115, 1129 

(Fed. Cir. 2008) ("Carnegie Mellon"). 

108 
is capable of applying any force that achieves (or is capable of achieving) a desired deformation of 

the MPH substrate -literally or by equivalents. FormFactor provides no support for its conclusory 

assertions in its brief that 1) the height of the fixed center bolt is selected to ensure that the force 

applied results in the desired deformation of the MPH substrate and 2) the desired relative 

deformation of the MPH is achieved as the fixed central planarizing element will be applying a force 

depending on the relative forces of the peripheral planarizing elements. 

Therefore, the undersigned finds that FormFactor has not met its burden of proving, by a 

preponderance of the evidence, that Phi com 's new MEMS Cards infringe each and every limitation 

of independent claim 1 of the '751 patent under the doctrine of equivalents. Since the undersigned 

finds that Phicom's new MEMS Cards do not read on the claim term planarizing element in 

independent claim 1, either literally or under the doctrine of equivalents, there is no need to address 

other claim terms in claim 1 or in the claims that depend from claim 1, i. e., claims 2 and 3. 

c. Claim 2 

F ormF actor asserts that Phicom' s new MEMS Cards infringe dependent claim 2 of the' 751 

patent because they include Micro Probes that allegedly have contact regions "that are designed to 

make pressure contacts with the electrical pads on the wafer.,,418 

As the undersigned has already ruled above that independent claim 1 is not infringed, none 

of the claims that depend from it infringe as well. 

d. Claim 3 

F ormF actor asserts that Phi com 's new MEMS Cards infringe dependent claim 3 of the' 751 

patent because the Micro Probes, which FormFactor argues are "contact elements," allegedly have 

418 CIB 42 citing CFF 403, 405-08, 946 and CX-0653C at FFITC0116912. 

109 
one end attached to a structure, the terminal of the MPH substrate, and an opposing end that is not 

attached to the MPH substrate.419 FormFactor also asserts that the Micro Probes of Phi com's new 

MEMS Cards "are elastic structures that make pressure connections or contacts with a 

semiconductor device under test. ,,420 

As the undersigned has already ruled above that independent claim 1 is not infringed, none 

of the claims that depend from it infringe as well. 

e. Claim 12: Literal Infringement 

FormFactor argues that independent claim 12 adds that the substrate is a space transformer 

and that there are adjustable control members in the central and peripheral regions of the MPH 

substrate.421 FormFactor further asserts that the MPH substrate is a space transformer and that Dr. 

Howe's uncontested testimony regarding Phicom's previous Type C probe card assemblies 

establishes that, in the new MEMS Cards, there are "peripheral planarizing mechanisms including 

adjusting screwslbolts.,,422 Finally, FormFactor asserts that the "'new' design also includes an 

adjustable center device as called for by Claim 12 and as discussed above.,,423 

Phicom argues that the fixed center bolt of its new MEMS Cards does not meet the 

requirement of a "planarizing element capable of transmitting a force to the central region of said 

substrate to modify a shape of the first surface at said central region" as it is recited in independent 

claim 1 and that, because independent claim 12 has the same limitation, it is also not infringed.424 

419 CIB 42-43 citing CFF 948-49. 

420 CIB 43 citing CFF 948-49. 

421 CIB 43. 

422 CIB 43-44 citing CFF 954, 968, 1039. 

423 CIB 44. 

424 RIB 52-53. 

110 
The undersigned finds that claim 12 is similar to claim 1, the differences being that claim 12 

claims a "space transformer," an "adjustable central control member," and "at least one adjustable 

peripheral control member," rather than a "substrate" and a "planarizing element." The "having" 

clause which follows "space transformer" in claim 12 and "substrate" in claim 1 is identical and it 

is undisputed that, other than the fixed center bolt, Phicom's new MEMS Cards are the same as 

Phicom's previous Type C probe card assemblies.425 It is also undisputed that Phicom's previous 

Type C probe card assemblies infringe the '751 patent and that Phicom's new MEMS Cards have 

planarization mechanisms in the peripheral regions of the MPH substrate.426 Thus, the undersigned 

further finds that the only element at issue with respect to claim 12 is the "adjustable central control 

member." 

The undersigned finds that FormFactor has failed to prove, by a preponderance of the 

evidence, that Phi com's MEMS Cards meet each and every limitation of claim 12 of the '751 patent. 

Specifically, FormFactor has failed to shoW that the fixed center bolt in Phicom's new MEMS Cards 

meets the "adjustable central control member" limitation because there is no evidence that the bolt 

is capable of applying any force that achieves (or is capable of achieving) a desired deformation of 

the MPH substrate in the center. The undersigned construed the claim limitation, "adjustable central 

control member," as "an adjustable planarizing apparatus that when applied to a substrate is capable 

of applying a pushing or pulling force on the substrate to achieve a desired deformation of the 

substrate in the center." The undersigned finds that FormFactor has failed to present any evidence 

that Phicom's new MEMS Cards include an element that achieves, or is capable of achieving, a 

425 CX-758C, CX-647C, and RX-221C; RX-418C at Q/A 49-51; RX-0381C at Q/A 162; 

Hwang Tr. 1328:6-14. 

426 CX-752C at 83:18-20; CFF 1039; ROCFF 968; ROCFF 1039. 

111 
desired deformation of the MPH substrate in the center. Conversely, Mr. Taber testified that the 

fixed center bolt in Phicom's new probe card design assemblies is not used for planarization and is 

not capable of applying a force to, or changing the shape of, the MPH substrate.427 

Therefore, the undersigned finds that FormFactor has not met its burden of proving, by a 

preponderance of the evidence, that Phicom's new MEMS Cards literally infringe each and every 

limitation of independent claim 12 of the '751 patent. 

f. Claim 12: Literal Infringement Under the Doctrine of 

Equivalents 

Similar to its doctrine of equivalents argument for claim 1, FormFactor argues that "[e]ven 

if the 'new device' is considered to have a fixed height, it is selected to ensure that the force applied 

results in the desired formation.,,428 Thus, according to FormFactor: 

[T]he alleged 'new' design MEMS Cards include a center device that performs the 

same function (i. e., desired deformation of the central region of the substrate) in 

substantially the same way (via an adjustable mechanism for exerting a controlled 

force to the central region of the substrate) in order to achieve the same result (i.e., 

planarizing the tips of the probe elements mounted to the substrate) as the central 

planarizing element and the adjustable central control member.429 

Phicom argues that the doctrine of equivalents is not available to FormFactor because of 

prosecution history estoppel. 430 As evidence, Phi com points to F ormF actor's narrowing amendments 

during prosecution of the application leading to the '751 patent for the "adjustable central control 

member" element of claim 12.431 Phicom also argues that FormFactor waived its right to argue that 

Phicom infringes the '751 Patent under the doctrine of equivalents by presenting no such argument 

427 RX-418C at QIA 9,57,81,85-91; RX-415C at QIA 172-74. 

428 CIB 44 citing CFF 1041. 

429 CIB 42 citing CFF 1011-12, 1018-21, 1024, 1039-41. 

430 RIB 54 and RRB 25, both citing Festo, 535 U.S. at 727. 

431 RIB 54; RRB 25. 

112 
in it PreHearing Brief.432 

Staff argues that Dr. Howe's opinion that the peripheral screws ofthe new fixed center bolt 

assembly adjust the force applied on the central area of the assembly ignores that there are claim 

limitations directed to both the peripheral region and the central region of the assembly.433 Staff 

argues that Dr. Howe's analysis omits, a limitation of the asserted claims and thus does not establish 

that Phicom' s new MEMS Cards infringe the asserted claims of '751 patent under the doctrine of 

equivalents.434 

Again, the undersigned finds that FormFactor has failed to prove, by a preponderance of the 

evidence, that Phicom' s MEMS Cards meet each and every limitation of claim 12 of the' 751 patent. 

Specifically, FormFactor has failed to showthatthe fixed center bolt in Phicom's new MEMS Cards 

meets the "adjustable central control member" limitation because there is no evidence that the bolt 

is capable of applying any force that achieves (or is capable of achieving) a desired deformation of 

the MPH substrate in the center - literally or by equivalents. 

Therefore, the undersigned finds that FormFactor has not met its burden of proving, by a 

preponderance of the evidence, that Phicom's new MEMS Cards infringe each and every limitation 

of independent claim 12 ofthe '751 patent under the doctrine of equivalents. Since the undersigned 

finds that Phicom's new MEMS Cards do not read on the claim term adjustable central control 

member in independent claim 12, either literally or under the doctrine of equivalents, there is no need 

. to address other claim terms in claim 12. 

432 ROCFF 1040. 

433 CIB 52. 

434 SIB 52 citing Carnegie Mellon, 541 F.3d at 1129. 

113 
g. Claim 24 

F ormFactor argues that independent claim 24 is similar to claim 12 with respectto adjustable 

control members in the central and peripheral regions and that "[f]or the same reasons, it is satisfied 

literally and under the doctrine of equivalents" by Phicom's new MEMS Cards.435 

Phi com argues that the fixed center bolt of its new MEMS Cards does not meet the 

requirement of a "planarizing element capable of transmitting a force to the central region of said 

substrate to modify a shape of the first surface at said central region" as it is recited in independent 

claim 1 and that, because independent claim 24 has the same limitation, it is also not infringed.436 

The undersigned finds that claim 24 is similar to claim 12, the differences being that claim 

24 claims a "substrate" rather than a "space transformer;" claims 12 and 24 both claim an "adjustable 

central control member" and "at least one adjustable peripheral control member." Again, it is 

undisputed that, other than the fixed center bolt, Phicom's new MEMS Cards are the same as 

Phicom's previous Type C probe card assemblies.437 It is also undisputed that Phicom's previous 

Type C probe card assemblies infringe the '751 patent and that Phicom's new MEMS Cards have 

planarization mechanisms in the peripheral regions of the MPH substrate.438 Thus, the undersigned 

further finds that, as with claim 12, the only element at issue with respect to claim 24 is the 

"adjustable central control member." 

For the reasons articulated by the undersigned above regarding claim 12, the undersigned 

finds that FormFactor has not met its burden of proving, by a preponderance of the evidence, either 

435 CIB 45. 

436 RIB 52-53. 

437 CX-758C, CX-647C, and RX-221C; RX-418C at Q/A 49-51; RX-0381C at Q/A 162; 

Hwang Tr. 1328:6-14. 

438 CX-760C at 13; CX-759C; CX-752C at 83:18-20. 

114 
literally or under the doctrine of equivalents, that Phicom's new MEMS Cards infringe each and 

every limitation of independent claim 24 of the '751 patent. Since the undersigned finds that 

Phicom's new MEMS Cards do not read on the claim term adjustable central control member in 

independent claim 24, either literally or under the doctrine of equivalents, there is no need to address 

other claim terms in claim 24 or in the claims that depend from claim 24, i.e., claim 25. 

h. Claim 25 

F ormFactor asserts that Phi com 's new MEMS Cards infringe dependent claim 25 of the' 751 

patent because claim 25 adds that the substrate be a space transformer and "[a]s discussed above, the 

MPH is a space transformer.,,439 

As the undersigned has already ruled above that independent claim 24 is not infringed, none 

of the claims that depend from it infringe as well. 

2. Micronics 

It is undisputed that Micronics' accused Center Lock V-Probes include [ 

t 40 Thus, the dispute regarding 

infringement by Micronics centers mainly around whether the accused Micronics [ ] VProbes contain the "planarizing element" and "adjustable control member" limitations of the asserted 

claims. 

a. Claim 1: Literal Infringement 

FormFactor asserts that Micronics' accused Center Lock V-Probes meet the "planarizing 

439 CIB 45. 

440 CFF 1049 (undisputed) citing CX-732C at 124. 

115 
element" limitation of claim 1 because "[ a] desired deformation ofthe[ ] [substrate] is achieved 

[ 

t41 FormFactor argues that 

each accused V-Probe [ ] that is capable 

of transmitting a force to the central region of the [ ] substrate to achieve a desired deformation 

of the first surface of the substrate.442 

FormFactor argues that the [ 

t 43 FormFactor further argues that Micronics' witnesses testified that, [ 

]444 FormFactor asserts that 

Micronics' witness Mr. Inoue testified that[ 

]445 Thus, according to 

FormFactor, [ 

FormFactor also argues that MJC has [ ] which FormFactor also 

calls [ ] in the middle of certain V-Probe cards to improve or repair their 

planarity.447 

To start, Micronics argues that FormFactor's arguments wrongly focus on process steps 

441 cm 47; CRB 22. 

442 CFF 1052 and CFF 1055, both citing CX-732C at 125, CX-120C at MJC01308115, 

JX-062C at 111 :5-16, 111 :23, and CX-340C at MJC01975372. 

443 CFF 1056 citing Inoue Tr. 1984:1-19, Adler Tr. 2073:8-10, 2073:16-2074:14; CFF 1057 

citing Inoue Tr. 1986:1-8. 

444 cm 47 citing CFF 1056 and 1061. 

445 CFF 1071 citing Inoue Tr. 2019:8-2020:10. 

446 cm 47. 

447 CFF 1063 citing CX-732C 127; CX-656C at MTI021764, MTI021779. 

116 
rather than on "the actual product imported and sold in the U.S.,,448 Specifically, Micronics argues 

that: 

U-Probes are shipped [ 

] preventing any adjustment or 

exchange of these components in the United States.449 

Micronics then argues that the accused U -Probes do not infringe claims 1-3 of the '751 patent 

because they do not have a "planarizing element.,,450 According to Micronics, "U-Probes are not 

capable of planarity adjustments.,,451 Micronics argues that [ 

Micronics further argues that [ 

Thus, Micronics asserts that [ ] does not meet the "whereby" limitation of claim 

1, which states, "whereby the first surface [ofthe substrate] can be made planar.,,454 

Micronics also argues that [ ] and that 

448 RIB 55 citing RFF IV.E.3.04-06; RRB 25. 

449 RIB 55 (emphasis added) citing RFF V.C.23-25; RRCFF 1052DcitingRFFV.C.23; Howe 

Tr. 661:10-13, 662:3-7; RX-807C; RX-857C at Q/A 210, 253-254, 281; RX-861C at Q/A 22; 

RRCFF 1052E citing RFF V.C.24-V.C.25; Howe Tr. 662:8-17, 684:7-17; RDX-153C; RX-857C at 

Q/A 258; JX-63C, Miur Depo Tr. 172:20-173:10. 

In response, F ormF actor argues that it is not important that the accused U -Probes are shipped 

to prevent adjustment. CRB 22. FormFactor asserts that the accused U-Probes apply the required 

forces "even after the mechanism is closed and sealed" and thus shipping the product after it has 

been configured does not avoid infringement. CRB 22-23. 

450 RIB 55-57. 

451 RRB 25. 

452 RIB 55 citing RFF V.C.1.01; RRB 25; RRCFF 1053A citing RFF V.C.30, V.C.1.01, 

V.C.1.08; Inoue Tr. 1015:21-25; RX-830C at2; RX-831C at3; RX-861C atQ/A 19; JX-63C, Miura 

Depo Tr. at 170:14-172:11. 

453 RIB 56 citing RFF V.C.14-22, 1.01-1.09; RRCFF 1055B and 1055C, both citing RFF 

V.C.1.01-V.C.1.08; Inoue Tr. 1015:21-25; RX-830C at 2; RX-831C at 3; RX-857C at Q/A 99, 232, 

281; RX-861C at Q/A 19-22; JX-63C, Miura Depo Tr. at 170:14-172:1. 

454 RIB 56, 57; RRB 29. 

117 
[ 

Micronics argues that [ 

t 56 In addition, Micronics asserts that[ 

t 57 Micronics further asserts 

that [ 

Micronics argues that the accused U-Probes do not infringe the asserted claims of the '751 

patent because "they lack any mechanism for providing a desired amount of deformation to the 

substrate, or for adjusting the planarity of the substrate," which is required by the undersigned's 

constructions of the "planarizing element" and "adjustable control member" limitations.459 

Micronics further argues that [ 

455 RIB 57. 

456 RIB 56 citing RFF.C.04-06, 14-18. 

457 RIB 55; RRCFF 1052A citing RX-861C at Q20, 22; RX-857C at Q/A 99, 281; RRCFF 

1052B citing RX-861C at Q20, 22; RX-857C at Q/A 99, 281; RRCFF 1052C citing RX-861C at 

Q20, 22; RX-857C at Q/A 99, 281. 

458 RRCFF 1052G citing Inoue Tr. 2045:7-8, 2045:16-2046:4; RRCFF 1052F citing 

RX-857C at QIA 99,250-252,273,281, RX-861C at Q/A 57. 

459 RIB 54 citing RFF V.C.01-03. 

460 RIB 55; RRB 26 (stating, [ 

118 

] 

(continued ... ) 
Micronics also argues that [ 

Staff argues that the dispute regarding whether Micronics' accused [ ] U-Probes 

infringe claims 1-3 of the '751 patent centers on whether the [ ] U-Probes contain the 

"planarizing element" limitation of claim 1.462 Staff further argues that Micronics' witnesses, 

including its expert, testified that [ 

] thus, Micronics' [ ] U-Probes infringe all of the 

asserted claims of the '751 patent.463 Specifically, Staff argues that: 

[ 

Staff argues that, because the undersigned's claim construction does not require more than one 

amount of deformation, [ ] is sufficient to satisfy the 

claim limitation.465 

The undersigned finds the arguments of Micro nics to be persuasive and that FormFactor has 

failed to prove, by a preponderance ofthe evidence, that Micronics' accused [ 

460( ... continued) 

(emphasis added)). 

461 RRCFF 1063A and 1063B citing RFF IV.C.1.16; RX-857C at Q/A 242. 

462 SIB 53. 

463 SIB 54-55. 

464 SIB 54. 

465 SIB 54; SRB 9. 

119 

] U-Probes 
meet each and every limitation of claim 1 of the '751 patent. Specifically, FormFactor has failed to 

show that [ ] mechanism in Micronics' accused V-Probe card assemblies meets the 

"planarizing element" limitation because there is no evidence that the mechanism is capable of 

applying any force that achieves (or is capable of achieving) a desired deformation of the [ ] 

substrate. 

The undersigned construed the claim limitation, "planarizing element," as "an apparatus that 

when applied to a substrate is capable of applying a pushing or pulling force on the substrate to 

achieve a desired deformation of the substrate." 

With respect to deformation ofthe MLS substrate, FormFactor argues that the [ 

t 66 Thus, FormFactor concludes that [ 

t 67 Even if the evidence relied on by 

FormFactor, e.g., the cited testimony ofInoue and Adler, is evidence that [ ] is 

capable of applying a pushing or pulling force , the undersigned finds that FormFactor still has not 

presented any evidence that the alleged force on the [ ] substrate achieves, or is capable of 

achieving, a desired deformation of the substrate. Conversely, Mr. Inoue testified that [ 

] Mr. Inoue stated: 

[ 

466 CFF 1056 citing Inoue Tr. 1984:1-19, Adler Tr. 2073:8-10, 2073:16-2074:14. 

467 CIB 47. 

120 

] 
[ 

Thus, the undersigned finds that FormFactor has not provided sufficient evidence to support its 

conclusion that a desired deformation of the [ ] is achieved, which is required to meet the 

"planarizing element" limitation of claim 1 of the '751 patent. 

With respect to Staffs argument that by testifying that MJC's [ 

]469 Dr. 

Adler recognized that deformation occurs, which Staff alleges is sufficient to satisfy the claim 

limitation,470 the undersigned finds that Dr. Adler's testimony is confusing. Dr. Adler also testified 

that [ 

At the very least, even if Dr. Adler's testimony were enough to establish that Micronics' 

accused V-Probes meet the "planarizing element" limitation of claim 1, Staff (and F ormFactor) have 

failed to present any evidence demonstrating that Micronics' accused [ ] V-Probe card 

assembly meets the "whereby" limitation of claim 1, which states, "whereby the first surface [of the 

substrate] can be made planar," and requires that a planarizing element within the card assembly 

planarize the first surface ofthe substrate. Mr. Inoue's testimony and the undisputed facts provide 

evidence to the contrary. For example, Mr. Inoue testified: 

[ 

468 Inoue Tr. 1997:12-21 (emphasis added). 

469 SIB 54 citing RX-861C at Q/A 78. 

470 SIB 54, SRB 9. 

471 [ 

] 

121 

] 
[ 

Further, it is undisputed that the Micro-cantilevers are coupled to a first surface of the [ ] 

substrate.473 Thus, the undersigned finds that [ 

] As a result, 

the card assembly does not meet the whereby clause limitation of claim 1. In addition, the 

undersigned finds that RX-830C shows that [ 

Therefore, the undersigned finds that FormFactor has not met its burden of proving, by a 

preponderance of the evidence, that Micronics' accused U-Probes literally infringe each and every 

472 Inoue Tr. 2014:11-2015:25 (emphasis added). 

473 CFF 1049 (undisputed) citing CX-732C at 124. 

474 RX-830C at MJC 02133475. 

122 
limitation of independent claim 1 of the '751 patent. 

b. Claim 1: Literal Infringement Under the Doctrine of Equivalents 

FormFactor argues that Micronics uses a [ 

] to apply a force that results in a "desired deformation" of the MLS substrate.475 

Thus, according to FormFactor: 

The accused MJC V-Probes thus all include a [ ] mechanism that performs 

the same function (i. e. , desired deformation of the central region of the substrate) in 

substantially the same way (via an adjustable mechanism for exerting a controlled 

force to the central region of the substrate) in order to achieve the same result (i. e. , 

planarizing the tips of the probe elements mounted to the substrate) as the central 

planarizing element and the adjustable central control member.476 

Micronics argues that claims 1-3 are not infringed under the doctrine of equivalents because 

[ ] do not perform the same function in the same way to achieve the same 

result as the planarizing element.477 

Again, the undersigned finds that FormFactor has failed to prove, by a preponderance of the 

evidence, that Micronics' accused [ ] V-Probes meet each and every limitation of claim 

1 of the '751 patent. Specifically, FormFactor has failed to show that [ ] in 

Micronics' accused V-Probe card assemblies meets the "planarizing element" limitation because 

there is no evidence that it is capable of applying a force that achieves (or is capable of achieving) 

a desired deformation of the [ ] substrate - literally or by equivalents. In addition, Mr. Inoue 

testified that Micronics [ 

475 CIB 47. 

476 eIB 47 citing CFF 1105-08. 

477 RIB 57. 

] 

123 
[ 

The undersigned also finds that FormFactor failed to present any evidence demonstrating that 

Micronics' accused Center Lock V-Probe card assembly meets the "whereby" clause limitation of 

claim 1. 

Therefore, the undersigned finds that FormFactor has not met its burden of proving, by a 

preponderance of the evidence, that Micronics' accused V-Probes infringe each and every limitation 

of independent claim 1 of the '751 patent under the doctrine of equivalents. Since the undersigned 

finds that Micronics' accused V-Probes do not read on the claim term planarizing element in 

independent claim 1, either literally or under the doctrine of equivalents, there is no need to address 

other claim terms in claim 1 or in the claims that depend from claim 1, i. e., claims 2 and 3. 

c. Claim 2 

F ormF actor asserts that Micronics' accused [ ] V -Probes infringe dependent claim 

2 of the '751 patent because claim 2 depends from claim 1 and it adds the "contact region" 

recitation.479 It is undisputed that all of Micronics' [ ] V-Probes include 

Micro-cantilevers with contact regions, or tips.480 It is also undisputed that CX-718C shows the tips 

of Micro-cantilevers touching the wafer.481 FormFactor argues that such tips are "designed to make 

pressure contacts with the electrical pads on the wafer.,,482 

As the undersigned has already ruled above that independent claim 1 is not infringed, none 

478 RX-857C at QIA 242. 

479 CIB 47 citing CFF 1073-75. 

480 CFF 1073 (undisputed) citing CX-732C at 130; CX-717C at MJC02072808; CX-719C 

at MJC02067768. 

481 CFF 1075 (undisputed) citing CX-718C at MJC02067787. 

482 cm 47 citing CFF 575 and 1073-75, CX-0719C. 

124 
of the claims that depend from it infringe as well. 

d. <:laiEn3 

FormFactorassertsthatMicronics' accused [ ] U-Probes infringe dependent claim 

3 of the '751 patent because [ 

]483 FormFactor also asserts that [ 

t 84 It is undisputed that [ 

As the undersigned has already ruled above that independent claim 1 is not infringed, none 

of the claims that depend from it infringe as well. 

e. ClaiEn 12: Literal InfringeEnent 

FormFactor argues that the [ ] substrate is a space transformer and that the [ 

] of Micronics' accused [ ] U-Probes is an adjustable planarizing element 

capable of transmitting a force to the central region of the [ ] substrate to achieve a desired 

deformation of said substrate at the central region because the mechanism has the ability to turn on 

483 CIB 48-49. 

484 CIB 49 citing JX-64C at 113:20-115:2. 

485 CFF 1086 (undisputed) citing CX-732C at 132; CX-329C; CX-1I4C; CX-1I5C; 

CX-120C; CX-340C; JX-062C; JX-063C; CX-653C; CX-717C; CX-718C; CX-656C; CX-639C. 

125 
and off.486 

FormFactor also argues that Micronics' [ ] V-Probes include [ 

] which FormFactor calls adjustable peripheral planarization mechanisms, that are capable 

of transmitting a force to the peripheral region of the [ ] substrate to achieve a desired 

deformation of said substrate at the respective peripheral region.487 

Micronics argues that the accused [ ] V-Probes do not infringe claims 12 and 24-

25 of the '751 patent because they do not have an "adjustable central control member.,,488 Micronics 

argues that the [ ] is not adjustable and that its purpose is to "[ 

]489 Micronics that the [ 

Micronics also argues that the accused V-Probes do not infringe claims 12 and 24-25 of the 

'751 patent because they do not have "adjustable peripheral control members.,,491 According to 

Micronics, [ ] are not adjustable peripheral planarization mechanisms.492 Micronics argues 

that the accused [ ] are not adjustable and that their purpose is to "[ 

t 93 Micronics argues that the [ ] like the [ 

486 CIB 49 citing CFF 1088, 1090-1101, 1104. 

487 CIB 50 citing CFF 1090-91, 1096-99, CX-116, and CX-120 at MJC 01308114. 

488 RIB 57-58. 

489 RIB 58; RRB 29. 

490 RIB 57-58 citing RFF V.C.l4-19, 36-37; RRCFF 1063D citing RFF IV.C.1.17, 

V.C.14-V.C.22; RX-857C at QIA 243; RX-691C at QIA 20; Inoue Tr. at 1987:17-22,2012:15-17, 

2045:l3-15, 2047:1-6, 2048:6-11. 

491 RIB 58-59. 

492 RRCFF 1090A citing RFF V.C.38; Howe Tr. 660:12-17,694:1-25. 

493 RIB 58; RRB 29. 

494 RIB 58 citing RFF V.C.3.02; RRCFF 1090B citing RFF V.C.3.02; Howe Tr. 660:12-17; 

RX-857C at QIA 227. 

126 
Micronics further argues that the [ ] in an assembled V-Probe are incapable oftransmitling 

a force to modify the shape of the [ 

Staff argues that the dispute regarding whether Micronics' accused [ ] V-Probes 

infringe claim 12 of the '751 patent centers on whether the [ ] V-Probes contain the 

"adjustable central [and peripheral] control member" limitation of claim 12.496 Specifically, Staff 

argues that: 

Dr. Adler testified that [ 

] RX-861C at 

Q.78.497 

Staff argues that, because the undersigned's claim construction does not require more than one 

amount of deformation, Dr. Adler's recognition that [ ] is sufficient to satisfy the 

claim limitations.498 

The undersigned finds that claim 12 is similar to claim 1, the differences being that claim 12 

claims a "space transformer," an "adjustable central control member," and "at least one adjustable 

peripheral control member," rather than a "substrate" and a "planarizing element." The "having" 

clause which follows "space transformer" in claim 12 and "substrate" in claim 1 is identical. 

The undersigned finds the arguments of Micro nics to be persuasive and that FormFactor has 

failed to prove, by a preponderance ofthe evidence, that Micronics' accused [ ] V-Probes 

meet each and every limitation of claim 12 ofthe '751 patent. Specifically, FormFactor has failed 

to show that the [ ] mechanism in Micronics' accused V-Probe card assemblies meets the 

495 RRCFF 1057A citing RX-857C at Q/A 227-227, 233, 273, 279; RX-861C at Q/A 19, 

21-22. 

496 SIB 53. 

497 SIB 54. 

498 SIB 54; SRB 9. 

127 
"adjustable central control member" and "adjustable peripheral control member" limitations because 

there is no evidence of a mechanism that is capable of applying any force that achieves (or is capable 

of achieving) a desired deformation of the [ ] substrate in the center and in a peripheral region. 

The undersigned construed the claim limitation, "adjustable central control member," as "an 

adjustable planarizing apparatus that when applied to a substrate is capable of applying a pushing 

or pulling force on the substrate to achieve a desired deformation of the substrate in the center," and 

the claim limitation, "adjustable peripheral control member," as "an adjustable planarizing apparatus 

that when applied to a substrate is capable of applying a pushing or pulling force on the substrate to 

achieve a desired deformation of the substrate in the peripheral region." With respect to 

deformation of the [ ] substrate, F ormF actor argues thatthe [ ] mechanism applies a 

force to pull up the [ ] substrate.499 

Even if the evidence relied on by FormFactor, e.g., the cited testimony ofInoue and Adler, 

is evidence that [ ] the 

undersigned finds that FormFactor still has not presented any evidence that the alleged force on the 

[ ] substrate achieves, or is capable of achieving, a desired deformation of the substrate in the 

center or in a peripheral region. Conversely, Mr. Inoue testified that no deformation ofthe [ ] 

substrate occurs. Mr. Inoue stated: 

[ 

499 CFF 1056 citing Inoue Tr. 1984:1-19, Adler Tr. 2073:8-10, 2073:16-2074:14. 

500 Inoue Tr. 1997:12-21 (emphasis added). 

128 
In addition, with respect to the peripheral region, FormFactor argues that [ ] are capable of 

transmitting a force to the peripheral region of the [ ] substrate to achieve a desired deformation 

of said substrate at the respective peripheral region.501 However, the undersigned finds that 

FormFactor has not presented evidence to indicate that such is the case. To the contrary, there is 

testimony to indicate that the function and purpose of [ ] in Micronics' accused V-Probe card 

assemblies are similar to that of the [ ] mechanism.502 Thus, the undersigned finds that 

F ormFactor has not presented sufficient evidence to support a conclusion that a desired deformation 

of the [ ] substrate is achieved, which is required to meet both "adjustable control member" 

limitations of claim 12 of the '751 patent. 

With respect to Staffs argument that by testifying that Micronics' [ ] "[ 

] and that because [ 

]503 Dr. Adler recognized that deformation occurs, which Staff alleges is sufficient to 

satisfy the claim limitations,504 the undersigned finds that Staff fails to address where such alleged 

deformation may occur. Claim 12 requires a desired deformation of the [ ] substrate both at the 

center and in a peripheral region and, at the least, Staff has not presented evidence to demonstrate 

the presence of both. 

Therefore, the undersigned finds that FormFactor has not met its burden of proving, by a 

preponderance of the evidence, that Micronics' accused V-Probes literally infringe each and every 

501 CIB 50. 

502 RX -860 at QI A 21 (stating, [ 

503 SIB 54 citing RX-861C at QIA 78. 

504 SIB 54; SRB 9. 

] 

129 
limitation of independent claim 12 of the '751 patent. 

f. Claim 12: Literal Infringement Under the Doctrine of 

Equivalents 

Similar to its doctrine of equivalents argument for claim 1, FormFactor argues that 

Micronics' accused [ ] V-Probes "infringe the planarizing element and 'adjustable central 

control member element' of claim 12."505 FormFactor argues that the [ ] mechanism can 

be turned on or off to produce the "desired deformation at the center" and that the "peripheral 

spacers" are selected to "modify shape (i.e., deform) at each peripheral region relative to the central 

region."506 Thus, according to FormFactor: 

[T]he arrangement achieves the same function (desired deformation of regions of the 

substrate), in substantially the same way [ 

] and the same result [ 

Micronics argues that claims 12 and 24-25 are not infringed under the doctrine of equivalents 

because the [ ] do not perform the same function in the same way to achieve 

the same result as the adjustable central/peripheral control members.508 

Again, the undersigned finds that FormFactor has failed to prove, by a preponderance of the 

evidence, that Micronics' accused [ ] V-Probes meet each and every limitation of claim 

120fthe '751 patent. Specifically, FormFactor has failed to show that the [ 

] in Micronics' accused [ ] V-Probes meet the "adjustable control member" 

limitations because there is no evidence that they are capable of applying a force that achieves a 

505 CIB 50. 

506 CIB 50-51 citing CFF 1052-53, 1055-57, 1061, 1083-84, and 1095. 

507 CIB 51 citing CFF 1105-08. 

508 RIB 58-59. 

130 
desired deformation of the [ ] substrate in the center and in a peripheral region - literally or by 

equivalents. The undersigned fails to see any distinction between FormFactor's arguments with 

respect to literal infringement and infringement under the doctrine of equivalents for claim 12. 

Therefore, the undersigned finds that FormFactor has not met its burden of proving, by a 

preponderance of the evidence, that Micronics' accused V-Probes infringe each and every limitation 

of independent claim 12 of the '751 patent under the doctrine of equivalents. Since the undersigned 

finds that Phicom's new MEMS'Cards do not read on the claim terms adjustable central control 

member and adjustable peripheral control member in independent claim 12, either literally or under 

the doctrine of equivalents, there is no need to address other claim terms in claim 12. 

g. Claim 24 

FormFactor argues that the [ ] mechanism of Micronics' accused [ ] 

V-Probes is an adjustable planarizing element capable oftransmitting a force to the central region 

of the [ ] substrate to achieve a desired deformation of said substrate at the central region 

because the mechanism has the ability to turn on and off.509 F ormFactor also argues that Micronics' 

[ ] V-Probes include [ ] which FormFactor calls adjustable 

peripheral planarization mechanisms, that are capable of transmitting a force to the peripheral region 

of the [ ] substrate to achieve a desired deformation of said substrate at the respective peripheral 

region.510 It is undisputed that each accused Micronics [ ] V-Probe includes [ 

] 

509 CIB 49 citing CFF 1088, 1090-1101, 1104. 

510 CIB 50 citing CFF 1090-91, 1096-99, CX-116, and CX-120 at MJC 01308114. 

131 
Staff argues that the dispute regarding whether Micronics' accused [ ] U-Probes 

infringe claims 24 and 25 of the' 751 patent centers on whether the [ ] U-Probes contain 

the "adjustable central [and peripheral] control member" limitations of claim 24.512 Specifically, 

Staff argues that: 

[ 

Staff argues that, because the undersigned's claim construction does not require more than one 

amount of deformation, Dr. Adler's recognition that [ ] is sufficient to satisfy the 

claim limitations.514 

The undersigned finds that claim 24 is similar to claim 12, the differences being that claim 

24 claims a "substrate" rather than a "space transformer;" claims 12 and 24 both claim an "adjustable 

central control member" and "at least one adjustable peripheral control member." 

For the reasons articulated by the undersigned above regarding claim 12, the undersigned 

finds that F ormF actor has not met its burden of proving, by a preponderance of the evidence, either 

literally or under the doctrine of equivalents, that Micronics' accused U-Probes infringe each and 

every limitation of independent claim 24 of the '751 patent. Since the undersigned finds that 

Micronics' accused U-Probes do not read on the claim terms adjustable central control member and 

adjustable peripheral control member in independent claim 24, either literally or under the doctrine 

511 CFF 1102 (undisputed) citing CX-732C at 137-38. 

512 SIB 53. 

513 SIB 54. 

514 SIB 54; SRB 9. 

132 
of equivalents, there is no need to address other claim terms in claim 24 or in the claims that depend 

from claim 24, i.e., claim 25. 

h. Claim 25 

F ormF actor argues that the [ ] substrate is a space transformer. 515 

As the undersigned has already ruled above that independent claim 24 is not infringed, none 

of the claims that depend from it infringe as well. 

c. Domestic Industry - Technical Prong 

FormFactor asserts that it currently makes and sells probe card assemblies that practice 

claims 1 and 3 of the '751 patent.516 

The following findings of fact are undisputed: 

Each FormFactor PH75 and larger probe card assembly includes a ceramic substrate 

with contact elements or MicroSprings that are mounted to a first surface with central 

and peripheral regions. CX-732C at 21; CX-342C; CX-343C; RX-930C. 

FormFactor probe card assemblies using a PH75 or larger probe head all have 

components that allow for adjustment of the probe heads at both the central regions 

and peripheral regions so that the probe heads are planar and the tips of the probe 

elements are in a flat plane parallel to the wafer, causing all the tips to touch at the 

wafer surface uniformly. CX-728C at 50; CX-732C at 22; CX-698C; CX-342C; 

CX-343C; CDX-12C; RX-930C. 

FormFactor's probe card assemblies containing larger probe substrates, or probe 

heads, all have at least one planarizing element near the edge of the surface of the 

probe substrate, capable of transmitting a force to the central region in order to 

achieve a desired deformation of the probe substrate. CX-728C at 49; CX-732C at 

22; CX698C. 

CX-343C shows the step-by-step process for assembling a PH150 probe card 

assembly. The PH150 is representative of FormFactor probe card assemblies that 

practice the '751 Patent. CX-728C at 49; CX-343C. 

515 CIB 49 citing CFF 1088, 1104. 

516 CIB 51 citing CFF 1109-19. 

133 
Users of FormFactor probe card assemblies with PH75 or PHlOO probe heads can 

adjust the planarity using a planarization mechanism comprised of [ 

] to apply a pulling or pushing force 

to the central or peripheral region of the probe head to adjust the planarity of the 

probe head. CX-728C at 50; CX-699 at FFITC0047255, FFITC0047241-

FFITC047242. 

Adjusting the [ ] causes the 

probe head to move up and down as desired by the user. CX -728C at 51. 

The PH150 probe head has the additional [ 

] of the probe card assemblies. CX-728C 

at 51; CX-698 at FFITC0047187. 

All FormFactor probe card assemblies have probe substrates (or probe heads) and a 

plurality of probe elements called MicroSprings that are mounted or coupled to the 

probe heads. The planarization mechanisms are capable of applying a pushing or 

pulling force to the central region of the probe head to achieve a desired deformation 

of the substrate, so that the wafer side surface of the probe head is made planar. 

CX-728C at 51; CX-342C; CX-343C; CX-347C; CX-348C; CX-349C; CX-357C; 

CX-376C; JX-060C; CX-698C; CX-699C; RX-930C. 

Each of FormFactor's MicroSprings has a contact region or "tip" that are designed 

to make contact with the contact pads on the semiconductor devices under test. The 

planarizing elements of Form Factor's probe card assemblies are capable ofmodifying 

the shape of the probe substrate so that the respective regions are planar relative to 

other regions of the substrate, as well as to make planar the virtual plane formed by 

the tips of the MicroSprings structures. CX -728C at 51 ; CX -699C at FFITC004 7225, 

FFITC0047247; CX-357 at FFITC0040994, FFITC0040995. 

The MicroSprings produced by FormFactor are "small tipped springs that contact 

pads on the device under test." CX-728C at 52; CX-698C at FFITC0047194. 

The MicroSprings are elastic structures with one end bonded to the terminals of the 

probe head and an opposing end spaced from and not bonded to the terminal of the 

probe substrate the free end having a tip designed to make pressure contact with 

terminals of electronic components such as semiconductor devices. CX-728C at 52; 

CX-732C at 23 - 24; CX342C; CX-343C; CX-347C; CX-348C; CX-349C: 

CX-375C; CX-376C; JX-060C; CX-698C; CX-699C. 

The probe heads on FormFactor's PH75 or larger probe card assemblies are space 

transformers. CX-728C at 53-54; CX-699C at FFITC0047241-FFITC0047242. 

134 
All FormFactor probe card assemblies containing PH75 or larger probe heads have 

planarizing elements that are adjustable, whether located in the central or peripheral 

regions, using [ ] CX-728C 

at 53-54; CX-699C at FFITC0047241-FFITC0047242.517 

Respondents do not address the issue of the technical prong of the domestic industry 

requirement as to the '751 patent in their initial or reply briefs. 

Staff argues that neither Phicom nor Micronics dispute that F ormF actor satisfies the technical 

prong of the domestic industry requirement as to the '751 patent, and further asserts that the 

preponderance of the evidence demonstrates that F ormF actor practices, at the least, claim 1, which 

is sufficient to satisfy the technical prong requirement. 5I8 

The undersigned finds that, based on the evidence presented by FormFactor, and there being 

no opposition, F ormF actor has shown, by a preponderance of the evidence, that it meets the technical 

prong of the domestic industry requirement by practicing at least claim 1 of the '751 patent. 

D. Validity 

Respondents allege that the only possible novel feature of the '751 patent is "a planarizing 

element capable of transmitting a force to the central region of a substrate to modify its shape in the 

central region," as a result of amendments made during the prosecution of the application that led 

to the '751 patent.519 Respondents argue that the Examiner originally rejected the claims of the '751 

patent as anticipated or obvious in light of U.S. Patent No. 5,974,662 ("the '662 patent" or RX-165), 

which is the great-grandparent to the '485 patent. RIB 59-60. Respondents assert that the Examiner 

did so because the '662 patent allegedly discloses: 

517 CFF 1109-21 (all undisputed). 

518 SIB 55 citing CX-732C at Q/A 67-74. 

519 RIB 60. 

135 
(1) a substrate; 

(2) a space transformer; 

(3) a plurality of contact elements coupled to ... the substrate; and 

(4) a plurality of contact elements coupled to ... the space transformer.52o 

Respondents argue that FormFactor distinguished the invention of the '751 patent on (1) a 

planarizing element capable of transmitting a force to the central region to modify a shape of the 

central region and (2) a hole in the center of the interposer.521 

1. Ordinary Skill in the Art 

As previously stated in Order No.3 7, a person of ordinary skill in the art is an individual with 

a bachelor's degree in mechanical or electrical engineering, or the equivalent, and at least one year 

of experience in either probe card assemblies, semiconductor device testing, or MEMS technology 

at the time of effective filing date for the asserted patent. 522 

2. Anticipation 

a. The JP '034 to Amamiya 

Respondents assert that Japanese Patent Application Publication HI 0-31 034 to Amamiya et 

al. ("Amamiya" or RX-166) anticipates the '751 patent under 35 U.S.C. § 102.523 Respondents argue 

that Figures 1 and 2 of Amamiya show: 

(1) a probe substrate; 

(2) a plurality of contact elements; and 

520 RIB 59 citing JX-2 at 1 :30-54. 

521 RIB 60 citing RX-690C at Q/A 117; JX-7 at FFITC0016259-61. 

522 See Order No. 37, p. 11 (January 23,2009). 

523 RIB 59, 60-63; RRB 30-32. 

136 
(3) four screws on the periphery and one screw in the center of the probe substrate 

to planarize the probe card. 524 

Respondents argue that the screws each transmit a force to the probe substrate that modifies the 

shape of the substrate at each of the screw locations.525 

Respondents argue that, contrary to what FormFactor asserts, Amamiya does disclose 

modification of the shape of the substrate, which is accomplished by the five screws in the probe 

substrate.526 Respondents state that three points define a plane,527 and thus only three screws would 

be used in Amamiya if "tilt was the only objective.,,528 Respondents assert that, by using five screws, 

Amamiya teaches altering the shape of the substrate or virtual surface defined by the test pin tip 

portions, i.e., "the shape of the substrate can be altered out ofplane.,,529 Respondents further argue 

that the center screw is on a different side of the substrate from the peripheral screws and thus 

"applies an opposite force to the center of the substrate, thereby bending it.,,530 According to 

Respondents, the only way that Amamiya can achieve the level of planarity it discloses is through 

deformation of the probe substrate.531 

With respect to claim 2, Respondents argue that Amamiya teaches that the five screws apply 

a force to the substrate, with the center screw changing the shape of the central region of the 

524 RIB 61 citing RX-166 at 9, 10, 13, Figs. 1 and 2. 

525 RIB 61 citing RX-166 at ~~ 9, 10, 13, Figs. 1 and 2; RX-690C at Q/A 125-27; Howe Tr. 

588:5-12,626:20-23,629:19-630:2; Adler Tr. 2209:8-20, 2215:8-2217:22. 

526 RIB 61-62. 

31. 

527 RX-690C at Q/A 127, Howe Tr. 588:5-12,626:20-23. 

528 RIB 62. 

529 RIB 62 citing RX-690C at Q/A 127; RX-166 at ~~ 9, 13; RRB 30-3l. 

530 RIB 62 citingRX-690C atQIA 125-27; RX-166 at~~9, 13; Howe Tr. 629:19-630:2; RRB 

531 RRB 31 citing Adler Tr. 2217:20-22. 

137 
substrate relative to the periphery.532 With respect to claim 3, Respondents argue that the contacts 

disclosed in Amamiya are free-standing spring elements.533 With respect to claims 12 and 25, 

Respondents argue that the substrate in Amamiya is a space transformer.534 With respect to claim 

24, Respondents argue that Amamiya discloses a peripheral control member.535 

Staff agrees with Respondents that Amamiya discloses a planarizing element, rather than 

merely a tilting probe substrate as argued by FormFactor, and thus argues that claims 1-2, 12,24, and 

25 of the' 751 patent are invalid as anticipated by Amamiya.536 Staff asserts that Amamiya discloses: 

[A] probe card with test pins 1, substrate/space transformer 2, threaded peripheral 

adjustment screws 3, threaded central screw 4, and probe card board 5. The four 

peripheral threaded screws 3 are screwed into the top of the probe card, while the 

threaded central screw 4 is screwed in from the underside of the board 5.537 

Staff argues that Amamiya also discloses that the peripheral screws can be independently operated 

and thus: 

[A]ccording to the laws of elementary physics, rotation of a single screw 3, or the 

varying rotation of more than one of the screws 3, would enable the planarization of 

the probe card and allow it to do more than merely tilt.538 • 

Staff further argues that FormFactor's contention that Amamiya discloses only tilting is not 

supported by the evidence because Amamiya teaches that the peripheral and central screws can push 

or pull in opposite directions.539 

FormFactor argues that Respondents have not shown by clear and convincing evidence that 

532 RIB 62 citing RX-690C at Q/A 125-27; RX-166 at ~~ 9, 13; Howe Tr. 629:19-630:2. 

533 RIB 62 citing RX-690C at Q/A 129; RX-166 at ~~ 7, 10, and Fig. 1. 

534 RIB 62 citing RX-690C at Q/A 130; RX-166 at Figs. 1 and 2. 

535 RIB 62 citing RX-690C at Q/A 125-27; RX-166 at ~~ 9, 13; Howe Tr. 629:19-630:2. 

536 SIB 56-57. 

537 SIB 56 citing RX-166 at ~ 11. 

538 SIB 56 citing RX-166 at ~ 13; Adler Tr. 2209-10, 2216-17. 

539 SIB 56-57 citing RX-690C at Q/A 26. 

138 
Amamiya anticipates any claim of the '751 patent because the reference "does not teach the 

combination, let alone the required planarizing element which calls for the desired deformation of 

the probe substrate.,,540 FormFactor asserts that Amamiya describes a "parallelism regulator" that 

addresses the problem of "tilt" of the virtual plane created by the test pins, not modification of the 

shape of the substrate.541 FormFactor further argues that "more than just a tilting of the substrate" 

is required to anticipate the '751 patent because it is clear that the invention of the '751 patent 

"entails a bending or deforming of the probe substrate.,,542 

According to FormFactor, Amamiya does not ever mention or suggest that there is any 

modification of the shape of the substrate.543 FormFactor argues that, even if there is deformation 

in Amamiya, such deformation would be of the probe card board 5, not the probe substrate 2.544 

FormFactor argues that the probe substrate 2 has, among other things, a thickness of 5 mm, while 

the probe card 5 has a thickness of 3 mm, and thus: 

Given that the probe substrate and the circuit [probe card] board are both made of the 

same material, the probe substrate (2), being much thicker and with much smaller 

lateral dimensions, will not significantly alter its shape in the presence of a deflecting 

force. Rather, if fixing screw (4), as Respondents assert, were to apply a force to the 

central region, the larger and thinner probe card board [5], not the probe card 

[substrate 2], would sustain the deflection (and would also defeat the parallelism 

regulation).545 

In addition, FormFactor argues that Amamiya teaches that the planarity of the virtual plane 

formed by the test pins 1 is achieved by grinding, while the parallelness of the virtual plane of those 

540 eIB 52-57; eRB 23-25. 

541 eIB 52 citing eX-750e at 30; RX-166 at Abstract. 

542 eIB 52 citing Eldridge Tr. 492:11-20, 522:6-15. 

543 eIB 53 citing eX-750e at 30-31; RX-166 at ~~ 11-13; Howe Tr. 763:24-764:10. 

544 eIB 53 and 56, both citing eX-750e at 31; RX-166 at ~~ 10-11. 

545 eIB 53 citing eX-750e at 31; RX-166 at ~~ 10-11; Howe Tr. 770:25-771 :10, 771 :14-17, 

771:18-22. 

139 
pins relative to the object to be tested is achieved by adjustment of the adjustment screws 3 that are 

located at the four comers of the probe substrate 2.546 FormFactor further argues that the adjustment 

screws 3 do not bore into the probe card board 5 and thus cannot apply a pulling force at the 

periphery of the probe substrate 2.547 FormFactor asserts that: 

The sole purpose ofthe regulating screws (3) is to provide tilt ... so the virtual plane, 

already planarized by the grinding process, can be made parallel to the surface of the 

wafer under test. 548 

The undersigned finds that Respondents have failed to prove, clearly and convincingly, that 

Amamiya anticipates each and every limitation of independent claims 1, 12, and 24 of the '751 

patent. Specifically, Respondents have failed to show that a pushing or pulling force applied by 

affixing screw 4 of Amamiya, or any other apparatus in the probe card device of Amamiya, achieves 

(or is capable of achieving) a "desired deformation" of probe substrate (or "test pin attachment 

board") 2, which is required by the undersigned's construction of the claim limitations "planarizing 

element," "adjustable central control member," and "adjustable central [and peripheral] control 

member." 

In support of the assertion that Amamiya discloses that the adjustment screws 3 and affixing 

screw 4 each transmit a force to the probe substrate 2 that modifies the shape of the substrate at each 

ofthe screw locations, Respondents cite to various references.549 However, the undersigned finds 

evidence in Amamiya that the "parallelness adjustment device," which is "achieved by using a 

546 CIB 53-54 and CRB 24, both citing CX-750C at 30-31; RX-166 at 10-13; Adler Tr. 

2208:4-13. 

547 CIB 55. 

548 CIB 55 and CRB 24-25, both citing Howe Tr. 763:6-15. 

549 RX-166 at ~~ 9, 10, 13, Figs. 1 and 2, Howe Tr. 588:5-12,626:20-23,629:19-630:2, and 

Adler Tr. 2209:8-20, 2215:8-2217:22. 

140 
plurality of screws," is not a planarizing element, but rather is simply a device for adjusting position 

and slope of the probe substrate.55o The undersigned finds nothing in Amamiya that discusses any 

modification or desired deformation of the shape of the probe substrate.551 Further, the undersigned 

does not find persuasive Dr. Adler's testimony that he "does not believe" that the probe substrate 

could be parallel to one micron without changing the bend of the substrate,552 because he offers no 

support for such a belief. 

The undersigned finds that Respondents' assertion that, because three points define a plane, 

only three screws would be used in Amamiya if "tilt was the only objective," is not supported by the 

cited testimony of Dr. Howe.553 Dr. Howe testified that three screws on a substrate would provide 

first order planarization, but also that, if you have, e.g., four screws on a substrate, you do not 

necessarily have a higher order planarization.554 The undersigned also finds no support in Amamiya 

for Respondents' assertion that, by using five screws, Amamiya teaches that the shape of the 

substrate can be altered out of plane. While Staff cites to Dr. Adler555 in support of its argument that 

rotation of a single adjustment screw 3, or the varying rotation of more than one of the adjustment 

screws 3, would enable the planarization of the probe substrate 2 and allow it to do more than merely 

tilt, the undersigned finds no support for the proposition that raising or lowering an adjustment screw 

3 to lift or depress a comer of probe substrate 2 meets the limitation of the '751 patent that the 

planarizing element be "capable of transmitting a force to the central region of said substrate" to 

550 RX-166 at ~~ 8-9. 

551 RX-166 at ~~ 11-13. 

552 Adler Tr. 2217:12-22. 

553 Howe Tr. 588:5-12,626:20-23. 

554 Howe Tr. 626:20-627:4, 631:6-632:1, 639:7-14, 639:21-640:2l. 

555 Adler Tr. 2209-10, 2216-17. 

141 
modify a shape at the central region that, e.g., leads to planarity of the substrate. 

In addition, while not limiting Amamiya to its single embodiment, the undersigned finds that 

the embodiment discussed in Amamiya consists of a probe substrate (or "test pin attachment board") 

2 with a thickness of 5 mm into which adjustment screws 3 that are 3 mm long are disposed at the 

four comers, as well as a probe card board 5 with a thickness of3 mm into which an affixing screw 

4 that is 8 mm long is disposed in the center.556 As a result, the undersigned finds persuasive Dr. 

Howe's testimony that, if deformation were to occur as a result of any force applied by the 

adjustment and/or affixing screws, such deformation would occur in probe card board 5.557 Further, 

it is unclear to the undersigned how, in said embodiment, the adjustment screws 3 apply a pulling 

force at the periphery of the probe substrate 2 because said screws do not bore into the probe card 

board 5.558 

Therefore, the undersigned finds that Respondents have not met their burden of proving, by 

clear and convincing evidence, that Amamiya anticipates each and every limitation of independent 

claims 1, 12, and 24 ofthe '751 patent. As the undersigned has ruled that said independent claims 

are not anticipated, none of the claims that depend from them are anticipated as well. 

b. The Hagihara '192 Patent 

Respondents assert that U.S. Patent No. 5,825,192 to Hagihara ("Hagihara" or RX-167) 

anticipates the '751 patent under 35 U.S.C. § 102.559 Respondents argue that the "Hagihara pushers 

achieve the desired deformation by a pushing force, and thus anticipate" the "planarizing element" 

556 RX-166 at ~~ 10-11 and Fig. 1. 

557 Howe Tr. 636:22-637:14, 763:24-764:10, 770:10-771:22. 

558 RX-166 at~' 10-11 and Fig. 1. 

559 RIB 59, 63-64. 

142 
claim limitation of the '751 patent.560 

Specifically, Respondents assert that Hagihara discloses pushing members 39a, which are 

divided into sixteen alleged planarizing elements, including four in the center and twelve in the 

periphery, that are independently capable oftransmitting a force to the probe card 32.561 With respect 

to claim 2, Respondents argue that Hagihara teaches relative planarization of contact regions.562 

With respect to claim 3, Respondents argue that Hagihara teaches using traditional needles and 

bumps as contact elements.563 With respect to claims 12 and 25, Respondents argue that the probe 

substrate 32 of Hagihara performs space transformation.564 With respect to claim 24, Respondents 

argue that Hagihara discloses a peripheral control member.565 

Respondents argue that FormFactor's expert, Dr. Howe, has only one argument in support 

of patentability, which is that Hagihara lacks a planarizing element because the planarizing elements 

of the '751 patent alter a shape of the probe substrate prior to and independent of contact with the 

semiconductor wafer.566 Respondents further argue that, based on the undersigned's claim 

construction, there is no "prior to and independent of' limitation in the claims.567 Respondents argue 

that FormFactor's alleged attempt to add such language to the claims conflicts with the 

undersigned's construction of "substrate," "which allows flexibility and deformation after 

560 RIB 64. 

561 RIB 63 citing RX-167 at 11 :52-57 and Figs. 2, 3, 4, and 6; RX-690C at Q/A 145, 152-57. 

562 RIB 63 citing RX-167 at 11:52-57, and Figs. 2, 3, 4, and 6. 

563 RIB 63 citing RX-167 at 7:4-8, 7:29-30, and Fig. 2. 

564 RIB 63 citing RX-167 at 2:48-60, 12:21-23. 

565 RIB 63 citing RX-167 at Figs. 2 and 3. 

566 RIB 64 citing Howe Tr. 714:3-17; CX-750 at Q/A 121. 

567 RIB 64; RRB 32. 

143 
contact.,,568 According to Respondents, "[t]he ALJ's construction does not require that planarizing 

occurs prior to contact with the semiconductor wafer, or that such contact cannot playa role in the 

planarizing process."569 

FormFactor argues that Hagihara does not teach the "planarizing element" required by all 

claims of the '751 patent.570 FormFactor asserts that: 

The aim of the membrane-type probe card assembly disclosed in Hagihara '192 is to 

ensure that the flexible probe substrate 32 conforms to the non-planar surface of the 

semiconductor wafer, so that there is a uniform pressure on the contact bumps 37 

formed on the bottom surface of the probe substrate. 

The mechanism to accommodate variations in the height of the semiconductor wafer 

(12) is to segment the conventional 'contact block' used in membrane-type probe 

cards into a plurality of independently spring-loaded contact blocks arranged in a 

lattice (39a).57I 

FormFactor points out that Hagihara states that "[i]n the present invention ... the pushing member 

39 serving to push the pushing region 33a is divided into a plurality of blocks 39a, as shown in FIG. 

2.,,572 FormFactor then asserts that the force on each block 39a includes a compressive force from 

the semiconductor wafer 12, which is applied when the table 13 on which the semiconductor wafer 

sits is moved upward against the probe card.573 FormFactor argues that the flexible probe substrate 

32 is "forced by the lattice of contact blocks to conform more closely to the non-planar surface of 

the semiconductor wafer than in prior-art, single-contact block probe cards."574 

Thus, according to F ormF actor, the invention of the' 751 patent is "fundamentally different" 

568 RRB 32 citing Order No. 37 at 71. 

569 RRB 32-33. 

570 cm 57-60. 

571 CX-750C at 32. 

572 cm citing RX-167 at 8:1-8. 

573 cm 59 citing CX-750C at 33. 

574 cm 59 citing CX-750C at 33. 

144 
because, in the asserted claims of the '751 patent, the "planarizing element" produces the desired 

deformation of the substrate, while the invention of Hagihara requires the probe card assembly to 

make contact with the semiconductor wafer to achieve the desired deformation. 575 FormFactor 

argues that the invention of the '751 patent is a "stand-alone probe card assembly itself, not a method 

of using the probe card assembly," and thus the claim limitation "planarizing element" may only be 

met by elements within the assembly itself.576 Therefore, according to FormFactor, an external 

pushing force from the semiconductor wafer does not meet the claim limitation.577 FormFactor 

concludes that: 

By claiming the planarizing element of the '751 Patent as internal to the stand-alone 

probe card assembly, the patentee has established that the planarizing element is 

what provides pushing or pullingforce on its own, i.e., prior to and independent of 

contact with the semiconductor wafer, in order to achieve a desired deformation of 

the substrate. 578 

FormFactor further argues that Respondents' assertion that the '751 patent does not require a 

planarizing element that alters a shape of the probe substrate "prior to and independent of' contact 

with the semiconductor wafer is an "implicit recognition that Hagihara's planarizing element does 

not function before a contact is made with the semiconductor wafer."579 

In response, Respondents argue that there is no limitation in the claims to narrow the 

adjustment to one that is independent of external forces.58o Respondents assert that "the ALl's 

construction and the '751 Patent are broad enough to permit both internal and external forces" to 

575 CIB 59 citing CX-750C at 33. 

576 CRB 26. 

577 CIB 60; CRB 26. 

578 CRB 26 (emphasis added). 

579 CRB 25-26. 

580 RRB 33. 

145 
"alter orientation," or planarize the substrate.58l Respondents argue that limiting the claims of the 

'751 patent to exclude an application of external force excludes the preferred embodiments of the 

patent, which demonstrate arrangements in which internal force and external force are used to alter 

orientation.582 

Staff agrees with FormFactor and argues that Hagihara does not disclose the "planarizing 

element" of claim 1 or the "adjustable central [and peripheral] control member" limitations of claims 

12 and 24 and thus asserts that the '751 patent is not invalid as anticipated by Hagihara.583 Staff 

argues that the movement of the center bolt 53 in Hagihara does not result in the probe card 32 

achieving the "desired deformation of the substrate," which is required by the undersigned's claim 

construction of the terms "planarizing element" and "adjustable central [and peripheral] control 

member.,,584 

Rather, Staff argues that it is the movement of, and force exerted by, a semiconductor wafer 

12 on the probe card 32 that results in the probe card 32 achieving the desired deformation, and that 

the center bolt 53 is adjusted to alter the tension of the membrane-type probe card 32 to allow the 

probe card 32 to be sufficiently flat. 585 Specifically, Staff asserts that semiconductor 12 is raised so 

that it contacts the bump electrodes 37 on the surface of probe card 32.586 Staff further asserts that 

the bump electrodes 37 on probe card 32 conform to the surface of the semiconductor wafer 12 via 

58l RRB 33 citing RX-167 at 7:10-20, 7:60-8:17 and Figs. 5A, 5B, 5C and 7B. 

582 RRB 33 citing RX-167 at 7:10-20, 7:60-8:17 and Figs. 5A, 5B, 5C and 7B. 

583 SIB 57-58. 

584 SIB 57. 

585 SIB 57 citing RX-167 at 7:48-50. 

586 SIB 57 citing RX-167 at 7:50-59 and Fig. 2. 

146 
independently operable spring-loaded blocks 39a.587 

The undersigned finds that Respondents have failed to prove, clearly and convincingly, that 

Hagihara anticipates each and every limitation of independent claims 1, 12, and 24 of the '751 

patent. Specifically, Respondents have failed to show that a pushing or pulling force applied by 

center bolt 53 or pushing mechanism 38 ofHagihara, or any other apparatus in the probe card device 

ofHagihara, achieves (or is capable of achieving) a "desired deformation" of probe card 32, which 

is required by the undersigned's construction of the claim limitations "planarizing element," 

"adjustable central control member," and "adjustable central [and peripheral] control member." 

While the undersigned agrees with Respondents that there is no "prior to and independent 

of' limitation in the claims, the undersigned finds that claim 1 of the '751 patent explicitly claims 

a probe card assembly comprising 1) a substrate, 2) a plurality of contact elements, and 3) a 

planarizing element.588 The word "comprising" is a "term of art used in claim language which means 

that the named elements are essential . . .. "589 The plain language of the asserted claims, in 

conjunction with the undersigned's claim construction order, thus makes it clear that, to anticipate 

the asserted claims of the '751 patent, the probe card device of Hagihara must comprise, among 

other elements, an apparatus capable of applying a force on the "substrate" to achieve a desired 

deformation of the substrate, i. e., it is essential that the probe card device itself contain a planarizing 

element. 

In support of the assertion that Hagihara discloses pushing members 39a, which are divided 

587 SIB 57 citing RX-167 at 8:8-22. 

588 Claims 12 and 24 are similar in that they explicitly claim a probe card assembly 

comprising 1) a space transformer or substrate, respectively, 2) a plurality of contact elements, 3) 

an adjustable central control member, and 4) at least one adjustable peripheral control member. 

589 Genentech, Inc. v. Chiron Corp., 112 F.3d 495,501 (Fed. Cir. 1997). 

147 
into planarizing elements that are capable of transmitting a force to probe card 32, Respondents cite 

RX_167. 590 However, the undersigned finds evidence in Hagihara that the pushing mechanism 38 

described in the patent, which comprises a tension imparting block 51 and a pushing member 39 

divided into a plurality of blocks 39a, is adjusted to alter the tension of the membrane-type probe 

card 32 to allow the probe card 32 to be sufficiently flat. 591 The undersigned finds that such evidence 

is not sufficient to support a conclusion that the pushing members 39a are capable of applying a force 

to achieve a desired deformation of probe card 32. Respondents did not present evidence that 

altering the tension of probe card 32 meets the claim limitation of desired deformation, e.g., a planar 

relationship between the contact elements on the probe card and the semiconductor device under 

test.592 To the contrary, the undersigned finds that evidence within Hagihara suggests that it is the 

movement of, and force exerted by, semiconductor wafer 12 on the probe card 32 that results in 

probe card 32 achieving the desired deformation. For example: 

A table 13 on which a semiconductor wafer 12 is disposed is mounted on the main 

stage 11. The table 13 can be moved in x-, y-, z- directions and can be rotated by a 

moving mechanism 14 arranged below the table 13.593 

Further: 

[T]he table 13 is moved upward so as to bring the electrode pad 12a of the 

semiconductor chip into contact with the bump electrode 37 acting as a contact 

element of the probe card 32, thereby aligning the probe card 32 and the 

semiconductor wafer 12 in a horizontal direction.594 

590 RX-167 at 11:52-57 and Figs. 2, 3, 4, and 6. 

591 RX-167 at 5:66-6:11,6:28-59, 7:11-13, 7:48-50, 8:41-44, 11:51-56. 

592 JX-2 at 1 :7-10. 

593 RX-167 at 4:48-51. 

594 RX-167 at 7:54-59, 10:53-58, 1 :22-34 (stating, "the position of the table is adjusted so as 

to bring the probing needles of the probe card into contact with the electrode pads of the 

semiconductor wafer"). 

148 
In addition, there is evidence that semiconductor wafer 12, table 13, and moving mechanism 14 are 

not elements of the probe card device of Hagihara.595 

Therefore, the undersigned finds that Respondents have not met their burden of proving, by 

clear and convincing evidence, that Hagihara anticipates each and every limitation of independent 

claims 1, 12, and 24 of the '751 patent. As the undersigned has ruled that said independent claims 

are not anticipated, none of the claims that depend from them are anticipated as well. 

3. Obviousness - W096/15458 alone or in Combination with JP '034 and/or 

the Hagihara '192 Patent 

Respondents assert that FormFactor's PCT Patent Application Publication W096115458 

("the PCT application" or RX-169) renders the '751 patent obvious in light of either Amamiya or 

Hagihara under 35 U.S.C. § 103.596 Respondents argue that the PCT application "expressly teaches 

all elements of the asserted claims of the '751 Patent except for a control element capable of 

transmitting a force to the central region of the substrate to modify the shape of the central region. ,,597 

It is undisputed that the PCT application discloses: 

(1) a probe card assembly; 

(2) a probe substrate; 

(3) a plurality of contact elements; and 

(4) a plurality of control elements 536 and 538 at the periphery of the probe card for 

595 RX-167 at 1 :6-8 and 1 :22-34 (indicating that the probe card device and the table on which 

the semiconductor is placed are part of a "probe card apparatus;" the claimed "probe card device" 

is used in a "probing apparatus"), 4:52-57 (stating that the probe card device is mounted to face the 

semiconductor wafer and that the probe card device is used to probe the semiconductor wafer), 5 :42-

48, and Fig. 2. 

596 RIB 59, 64-66; RX-690C at Q/A 159-60. 

597 RIB 64-65. 

149 
adjusting the orientation of the probe substrate.598 

Respondents argue that, because the PCT application teaches control elements at the 

periphery of the probe card, "it would have been a matter of routine engineering, with predictable 

results" to add a control element at the central region ofthe card to exert a force on the central region 

by which the substrate can be made planar.599 In support, Respondents allege that "standard 

planarization equipment indicated that as the size of the probe cards increased, there was more 

deflection at the center" and that "[ a] person of ordinary skill in the art would have been motivated 

to add such a central control element to achieve planarity [in the central region] as for other 

[peripheral] regions.,,600 Respondents further argue that Amamiya and Hagihara disclose central 

control elements, as well as a motivation to combine such elements with the teachings of the PCT 

application, and that the addition of a control element at the center to achieve planarity would have 

had predictable results.601 

FormFactor argues that neither Amamiya nor Hagihara disclose a planarizing element and 

that the PCT application also does not disclose a planarizing element. 602 Therefore, according to 

FormFactor, none of the references, individually or in combination, disclose or teach the "planarizing 

elements" of the '751 patent claims, and thus Respondents have failed to carry their burden to show 

598 RX-169 at Abstract, 8:1-3, 8: 17,8:24-25,49:2-4,50:29-51 :4,53:12-14,55:18-56:7, and 

Fig. 5. 

599 RIB 65 citing RX-690C at Q/A 160-62; RX-0382 at Q/A 75,529,532 and 533. 

600 RIB 65 citingRX-690C atQ/A 117; JX-7; Eldridge Tr. 499:1-5, 507:14-21, 512:17-513:2, 

513:10-514:2 and 514:12-21. 

601 RIB 65-66 citing RX-690C at Q/A 117; JX-7; Eldridge Tr. 499:1-5, 507:14-21, 512:17-

513:2,513:10-514:2 and 514:12-21. 

602 CIB 60-61 citing CX-750C at 35. 

150 
invalidity by clear and convincing evidence.603 

Staff asserts that the evidence does not clearly and convincingly demonstrate that one of 

ordinary skill in the art would have found it obvious to modify the PCT application to add a central 

control element to achieve planarity.604 Staff argues that Dr. Adler's testimony that the peT 

application discloses all of the limitations of the claims except for the "central adjustment 

mechanism" and that one of ordinary skill in the art would have found it obvious to combine the 

central adjustment mechanism of Amamiya or Hagihara with the PCT application,605 is not clear and 

convincing evidence that the '751 patent is invalid based on obviousness.606 

The undersigned finds that Respondents have failed to prove, clearly and convincingly, that 

the PCT application in combination with either the Amamiya reference or the Hagihara reference 

renders obvious each and every limitation of independent claims 1, 12, and 24 of the '751 patent. 

Specifically, Respondents have failed to show that the "planarizing element" limitation of 

independent claims 1 and the "adjustable central control member" limitation of independent claims 

12 and 24 are taught by the PCT application in combination with either Amamiya or Hagihara. The 

undersigned finds that Respondents' arguments, which rely on conclusory statements by Dr. Adler, 607 

and testimony of Mr. Eldridge that does not demonstrate invalidity of the '751 patent,608 are not 

persuasive. 

Therefore, the undersigned finds that Respondents have not met their burden of proving, by 

603 CIB 61; CRB 26. 

604 SIB 58. 

605 RX-690C at Q/A 159-62. 

606 SIB 58. 

607 RX-690C at Q/A 159-62. 

608 Eldridge Tr. 499: 1-520:24. 

151 
clear and convincing evidence, that the peT application, in combination with either Amamiya or 

Hagihara, renders obvious each and every limitation of independent claims 1, 12, and 24 of the '751 

patent. As the undersigned has ruled that said independent claims are not obvious, none of the 

claims that depend from them are obvious as well. 

VI. The '538 Patent 

A. Overview 

Originally, thirteen claims of the '538 patent were asserted against Respondents, namely 

independent claims 1 and 19, along with dependent claims 2-7 and 14-18. These claims read as 

follows: 

1. A method of forming a contact assembly comprising: fabricating a plurality of contact 

structures; providing a substrate comprising an array of electrical connections on a surface 

of said substrate; and after said fabricating step and said providing step, attaching ones of 

said plurality of contact structures to ones of said array of electrical connections, wherein 

said fabricating comprises: forming said contact structures on a sacrificial substrate, and 

removing said contact structures from said sacrificial substrate. 

2. The method of claim 1, wherein said electrical connections comprise metallic pads. 

3. The method of claim 1, wherein said contact structures are resilient. 

4. The method of claim 1, wherein said forming comprises sequentially applying a plurality of 

materials to said sacrificial substrate. 

5. The method of claim 4, wherein at least one of said materials comprises a patterned layer of 

material. 

6. The method of claim 5, wherein said at least one of said materials comprises photo resist. 

7. The method of claim 4, wherein at least one of said materials composes said contact 

structures. 

14. The method of claim 1, wherein said attaching comprises: bringing ends of said contact 

structures into contact said array of electrical connections on said substrate; and securing said 

ends of said contacts structures to said array. 

152 
15. The method of claim 1, wherein said attaching comprises permanently attaching ones of said 

plurality of contact structures to ones of said array of electrical connections. 

16. The method of claim 1, wherein said attaching comprises metallurgically bonding ones of 

said plurality of contact structures to ones of said array of electrical connections. 

17. The method of claim 1, wherein said fabricating step comprises fabricating said plurality of 

contact structures separate and apart from said substrate and said electrical connections. 

18. The method of claim 17, wherein following said fabricating step and prior to said attaching 

step said plurality of contact structures are not attached to said electrical connections. 

19. A method of forming a contact assembly comprising: fabricating a plurality of contact 

structures; providing a substrate comprising an array of electrical connections on a surface 

of said substrate; and after said fabricating step and said providing step, attaching ones of 

said plurality of contact structures to ones of said array of electrical connections, wherein 

said fabricating comprises applying a patterned layer of material to a sacrificial substrate, 

said patterned layer comprising openings corresponding to said contact structures. 

As noted above, the undersigned has already construed the above claims in a Markman 

order.609 A summary of the claims construed in that order is detailed below: 

Claim Term Construction 

Claim 1 attaching affixing to make a relatively permanent 

connection without external means 

Claim 1 ones more than one 

Claim 1 forming bringing into being 

Claim 1 sacrificial substrate a supporting material, excluding any applied 

layers, which is destructible, such as by etching 

While at this time only claim 19 is asserted, the constructions of the above terms govern those terms 

as they appear in claim 19. 

609 See Order No. 37 (January 23,2009). 

153 
B. Infringement of Claim 19 by Micronics 

1. Direct Infringement 

a. Position of the Parties 

FormFactor alleges that MJC's products infringe this claim element. FormFactor notes that 

Order No.3 7 defines a "sacrificial substrate" as "a supporting material, excluding any applied layers, 

which is destructible, such as by etching.,,6Io FormFactor states that the definition of the term 

"destructible" has now became an issue among the parties. FormFactor states that neither actual 

destruction nor intent to destroy is required by the claim construction. F ormFactor states that MJ C' s 

employee Mr. Inoue testified that[ 

] 

In any event, it is argued that MJC destroys its silicon substrate at least in part through its 

cleaning process. FormFactor asserts that MJC [ 

Leckie did not even consider whether [ 

one way or the other whether [ 

] 7 FormFactor argues that Mr. 

] would etch the silicon wafer, and could not say 

] would etch the silicon wafer. FormFactor also states 

that Mr. Leckie's position that "destructible" means "destroyed or intended to be destroyed" should 

also be rejected. The argument that it is necessary to distinguish a "substrate comprising an array of 

electrical connections" from a "sacrificial substrate" is said to be wrong. F ormF actor argues that "the 

substrate comprising an array of electrical connections" of claim 19 becomes part ofthe final product 

61°Id 

154 
whereas the destructible sacrificial substrate does not. FormFactor argues that a "sacrificial 

substrate" as used in the '538 patent is thus one capable of being destroyed without destroying the 

thing that is fabricated on its substrate. 

FormFactor, citing Intel Corp. v. US.lTC,611 asserts that MJC's and Mr. Leckie's position 

that "destructible" carries with it some notion of "intended to be destroyed" is also not persuasive. 

The above-cited case is said to stand for the proposition that there is no "intent" element to direct 

infringement. 

FormFactor states that MJC's argument that a "sacrificial substrate" must enable the 

positional placement ofthe contact structure is without merit because it ignores and fails to take into 

account the Figure 11 examples and corresponding disclosure in the '538 specification. It is stated 

that in those examples, the "sacrificial substrate" would not, and indeed could not, be used in 

positioning the contact structures during the "attaching" step. 

Finally, F ormF actor argues that Order No.3 7 already rej ected MJ C' s argumentthat the term 

"destructible" means destroyed when it stated in Order No. 37 that "[f]urthermore, 'destructible' 

rather than 'destroyed' reflects the more reasonable construction of the overall claim.,,612 

Furthermore, FormFactor alleges that Staff and MJC misrepresent FormFactor's position in the 

Markman proceeding. 

MJC states that its products do not infringe claim 19 because [ 

] and is therefore not a sacrificial substrate. It asserts that the 

'538 patent defines a "sacrificial substrate" as being a supporting substrate that is destructible in the 

611 Intel Corp. v. US.ITC, 914 F.2d 821, 832 (Fed. Cir. 1991) ("Inter). 

612 Citing Order No. 37 at 93. 

155 
sense that it is intended to be destroyed. MJC argues that the '538 patent teaches that sacrificial 

substrates are substrates that are "intended to be destroyed" for two reasons. First, it is argued, the 

actual destruction of a sacrificial substrate enables the positional placement of probes on the 

sacrificial substrates to be maintained even after the probes have been attached to a space 

transformer. Second, the destruction of the sacrificial substrate allows for customization of the shape 

of probe tips, by etching away a portion of the sacrificial substrate, building the probe tip within the 

etched away portion, and then destroying the sacrificial substrate to release the probe tip. MJC states 

that if the sacrificial substrate were not actually destroyed, these two critical steps, positional 

placement of the probes and formation of the probe tips, could not be accomplished. MJC states that 

these two characteristics of a sacrificial substrate are depicted in evidence as RDX-294. 

MJC argues that if "destructible" means "capable of destruction," then there is no distinction 

between a "sacrificial substrate" and a "substrate." MJC states that the '538 specification 

distinguishes between a "sacrificial substrate" and a "substrate." Furthermore, it is alleged, claim 

19 itself explicitly distinguishes between a "substrate" and a "sacrificial substrate" by including the 

limitations of both claim terms. More specifically, claim 19 is said to explicitly distinguish between 

a "substrate" and a "sacrificial substrate" by including the limitations of both a "substrate" and a 

"sacrificial substrate." MJC asserts that in claim 19, the "substrate" forms an integral component of 

the finished co~tact assembly, whereas the "sacrificial substrate" is used solely for the fabrication 

of contact structures that are subsequently connected to the substrate. This distinction is said to be 

made because a "sacrificial substrate" is a substrate that is "intended to be destroyed" and a 

"substrate" is intended to be preserved and indeed become part of the finished contact assembly. 

MJC asserts that an interpretation of "destructible" as meaning "capable of destruction" 

156 
renders meaningless the '538 patent's distinction between a "substrate" and a "sacrificial substrate." 

MJC alleges that all substrates, not just "sacrificial substrates," are "capable of destruction." 

Therefore, MJC states that to properly distinguish a "substrate" from "a sacrificial substrate," the 

term "destructible" must mean "intended to be destroyed.,,613 

MJC alleges that it does not literally infringe claim 19 because [ 

] MJC states that the Micronics' 

[ 

] Instead, it is argued, [ 

] 

MJC states that, [ 

] For these reasons, it is argued, MJ C' s [ ] is not a sacrificial substrate. MJC argues 

that one of the inventors of the' 538 patent, even recognized that a sacrificial substrate is a substrate 

that is not reused in the manufacturing process. MJC also cites the testimony of Dr. Khandros to the 

effect that the sacrificial substrate "is partially destroyed" during the manufacturing process. 

MJC asserts that there are two key reasons why MJC's [ ] is neither destroyed 

nor intended to be destroyed. First, it is stated, [ 

] 

613 MJC also makes several arguments concerning the alleged similarity between its position 

in the Markman proceeding and that of FormFactor in that proceeding. 

157 
[ ] 

Second, MJC argues, [ 

] 

MJC also argues that in some instances [ 

] Therefore, MJC argues that its silicon wafer is not "destructible" and is 

not a "sacrificial substrate." 

MJC argues that FormFactor's allegedly new "final contact assembly" argument 

impermissibly broadens the scope of the undersigned's construction of a "sacrificial substrate." It 

is asserted that while Order No. 37 included the term "destructible" in its construction, the 

undersigned is said not to have found that a "sacrificial substrate" is a substrate that is "not part of 

the final contact assembly." 

MJC rejects FormFactor's argument that MJC's silicon wafer is actually destroyed [ 

] 

158 
[ ] MJC states that none of FormFactor's witnesses, experts, or analyses 

were directed to this assertion, and the argument is said to be completely absent from FormFactor's 

prehearing brief. MJC states that FormFactor's witness, Dr. Frazier, and FormFactor's prehearing 

brief argue that [ ] It is argued that 

F ormF actor's argument is late and violates the undersigned's Ground Rule 8.2, and therefore should 

not be considered. 

MJC states that not surprisingly, then, FormFactor cites no evidence for the proposition that 

[ ] Instead, it is argued, 

FormFactor points to a reference cited by MJC, u.s. Patent No. 4,916,002 (the Carver '002 patent) 

in MJC's invalidity arguments. MJC states that in the Carver '002 patent, one single paragraph of 

the specification states that potassium or KOH can be used to etch silicon and silicon dioxide. The 

Carver '002 patent is said to provide no information about the central characteristics of the KOH, 

including the pH value. MJC asserts that [ 

] MJ C argues, among other things, that there is no evidentiary support for 

FormFactor's argument. In fact, MJC notes that Mr. Leckie testified at the hearing that the pH of a 

solution is not dispositive of that solution's ability to etch silicon. 

MJC also argues that there is no evidence in this investigation that MJC's [ 

is destroyed by any means. In fact, MJC asserts, all of the evidence shows that the [ 

is not destroyed. 

159 

] 

] 
MJC also opposes FormFactor's argument that, because [ 

] each of these wafers is "destructible" and therefore is a "sacrificial 

substrate." It is argued that the evidence shows that [ 

] 

Finally, MJC asserts that FormFactor's interpretation of Intel is erroneous. It argues that the 

case stands for the proposition that a direct infringer need not intend to infringe the claims of a 

patent. In the instant proceeding, MJ C' s assertion that "destructible" means "intent to destroy" is not 

the same as "intent to infringe." MJC concludes by stating that one can intend to destroy a substrate 

without ever intending to infringe a patent. 

Staff argues that "destructible" must mean "intended to be destroyed." Staff believes that 

using this interpretation, the preponderance of the evidence shows that the substrate that MJC uses 

to fabricate its [ ] is not a "sacrificial substrate" that is "intended to be destroyed." 

For this reason, Staff submits that the preponderance of the evidence does not show that MJC 

infringes claim 19 of the '538 patent. Staff also agrees with MJC's interpretation ofthe Intel case. 

h. Discussion and Conclusion 

FormFactor's arguments are not persuasive. In the first instance, as noted above, there is 

extensive discussion among the parties as to the meaning of "destructible" in the undersigned's 

construction of the claim term "sacrificial substrate" as "a supporting material, excluding any applied 

layers, which is destructible, such as by etching.,,614 The question is, not whether the substrate in 

MJC's accused products is destructible by any means, because all [ ] are destructible in 

614 Order No. 37, supra. 

160 
the sense that they can be destroyed by some means or other.615 The issue is, whether in the 

fabrication of MJC's products, the substrate used is a "sacrificial substrate" by virtue of its being 

"destructible, such as by etching. ,,616 Therefore, the issue to be resolved is whether FormFactor has 

shown that the substrate used in the manufacture ofMJC's Micro Cantilevers is "destructible, such 

as by etching." 

FormFactor's argument, which is that [ 

] meets this claim term, is not persuasive. FormFactor cites to no 

persuasive evidence to support this proposition. The fact that the Carver '002 patent allegedly 

supports the proposition that a different compound,potassium hydroxide (KOH), with a pH of 127

, 

can be used to etch silicon and silicon dioxide, does not show that ammonia water at a pH of 

11.7±0.2 would make MJC' s substrate [ ] "destructible, such as by etching." Nor does 

FormFactor cite any other persuasive evidence to support its argument. Therefore, based upon the 

preponderance of evidence standard, FormFactor has not shown that there is a sacrificial substrate 

in the fabrication ofMJC's [ ] because the substrate used in the fabrication process 

has not been shown to be "destructible, such as by etching." Accordingly, MJC's [ 

] do not infringe claim 19 of the '538 patent by virtue of using a "sacrificial substrate" 

in the fabrication process. 

2. Doctrine of Equivalents 

FormFactor has not made a case for infringement under the doctrine of equivalents 

concerning this claim term. Accordingly, no finding of infringement under the doctrine of 

615 Frazier, Tr. 1134. 

616 Order No. 37 (emphasis added). 

161 
equivalents is made. 

3. Conclusion on Infringement 

In light of the above, there is no infringement of claim 19 of the' 5 3 8 patent by MJ C' s Micro 

Cantilevers. In light of the finding above with regard to "sacrificial substrate," there is no need to 

determine whether MJC's products read on other claim elements of claim 19. 

C. Domestic Industry - Technical Prong 

1. "a patterned layer of material" 

MJC argues that claim 19 requires a single layer of patterned material to be used in 

fabricating the complete contact structures. As support for its argument, MJ C cites the testimony of 

Mr. Leckie.6I7 It asserts that FormFactor's T5 and T8 MicroSprings are not built using a single 

patterned layer of material that corresponds to a complete MicroSpring. Instead, MJC asserts, 

multiple patterned layers are used in fabricating the MicroSprings, where each layer of materials only 

corresponds to a complete MicroSpring. MJC states that Dr. Frazier testified that [ 

patterned layers are used in building both the T5 and T8 MicroSprings. 

] 

FormFactor states that with respect to the T5 MicroSprings, it applies a patterned layer of 

material that is [ 

patterned layer that is [ 

] In the case ofthe T8 MicroSprings, FormFactor applies a 

] FormFactor argues that 

claim 19 does not require that a single patterned layer of material be used in fabricating the complete 

contact structures. It argues that nothing in the claim language, the '538 patent specification, or the 

undersigned's claim construction supports MJC's position. Staff supports FormFactor's position. 

For the reasons set forth below, FormFactor's position is found to be persuasive. Claim 19 

617 RX-860, Q/A 219. 

162 
uses the language "a patterned layer" and its use of the article "a" indicates that the scope of claim 

19 can include one or more patterned layers. With respect to the T5 MicroSprings, FormFactor 

applies a patterned layer of material that is [ ]618 In the case of the T8 

MicroSprings, F ormFactor applies a patterned layer that is [ ] on the 

[ ] wafer.619 All parties agree, or do not oppose, the fact that the respective patterned layers in 

the T5 and T8 products, in tum, are composed of multiple layers.62o 

Claim 19 uses the language "a patterned layer." The claim's use of the article "a" in the 

context of the entire claim 19 indicates that claim 19 can include one or more patterned layers. In 

the Abtox621 case, the Federal Circuit noted that "patent claim parlance also recognizes that an article 

[i.e. 'a'] can carry the meaning of' one or more,' for example in a claim using the transitional phrase 

'comprising.'" Claim 19 uses the open-ended term "comprises" in the claim term "wherein said 

fabricating comprises applying a patterned layer of material." That open-ended claim term supports 

the conclusion ofa multilayered patterned layer. MJC relies on its witness Mr. Leckie's testimony 

that "[ilt is my understanding that this limitation requires the application of a single patterned layer 

of material. The claim does not include a limitation of multiple pattered layers.,,622 That testimony, 

standing alone, is not persuasive. Accordingly, it is determined that FormFactor's T5 and T8 

MicroSprings products read on the claim term "a patterned layer." 

618 Dr. Frazier, CX-731C, Q/A 261. 

619 Id., Q/A 279. 

620 See the parties' sections on the technical prong issue in their respective briefs. 

621 AbTox, Inc. v. Exitron Corp., 122 F.3d 1019, 1023 (Fed. Cir. 1997) ("AbTox"). 

622 RX -860, QI A 219 (italics added). 

163 
2. "said patterned layers comprising openings corresponding to said 

contact structures" 

MJC asserts that the openings in anyone of the T5 and T8 MicroSprings' patterned layers 

only correspond to a portion of a MicroSpring, not a complete MicroSpring. For example, MJC 

argues that the T5 MicroSprings are built from [ 

] MJC asserts that, as illustrated in RX-789C, an opening in a patterned layer of [ ] 

builds the tip and the beam ofthe T5 MicroSprings. Therefore, it is argued, this opening corresponds 

to the [ ] but not the [ ] 

FormFactor states that MJC's position is erroneous. With respect to the T5 MicroSprings, 

FormFactor asserts that it patterns the [ ] to create multiple openings that correspond to 

multiple T5 MicroSprings. It is asserted that a layer of [ ] 

are deposited in the openings by an [ ] 

F ormFactor argues that a layer of [ ] is applied and the [ ] is 

patterned to create openings that expose sections of the layer of [ ] FormFactor states that it [ 

] in the opening and [ 

] F ormF actor states that the [ ] is then removed. Subsequently, 

FormFactor asserts that it [ 

] The [ ] is also said to destroy the wafer. 

In the case of T8 MicroSprings, FormFactor argues that it applies separate layers of 

] on the silicon wafer and in the [ ] Next, it is asserted, 

a patterned layer of material that is [ ] is applied on the silicon wafer. 

Then, it is argued, FormFactor patterns the [ ] to create openings that 

correspond to a portion ofthe T8 MicroSprings. FormFactor states that [ ] 

164 
[ ] in the openings by an [ ] F ormF actor states that 

the openings correspond to the complete T8 MicroSprings [ ] 

Therefore, FormFactor argues that, contrary to the positions taken by Mr. Leckie and MJC, 

FormFactor does create a complete contact structure (T8 MicroSpring) in a single opening, even 

thought it is not a requirement of claim 19. 

Next, FormFactor states that it applies a layer of[ ] on the silicon wafer and 

[ ] to create an opening at the end ofthe T8 MicroSpring that corresponds to 

the location of a [ ] After that, it is argued, [ ] in the 

opening to create [ ] After that, it is asserted, [ 

] After that, it is argued, FormFactor [ ] the wafer to 

[ ] step. 

F ormF actor's position is not persuasive. Claim 19 states that "said patterned layer comprising 

openings corresponding to said contact structures.,,623 FormFactor has the burden to show by a 

preponderance of the evidence that its position is correct. This FormFactor has not done. With 

respect to the T5 MicroSprings, FormFactor patterns the [ ] to create openings which are 

the [ ] of the MicroSprings.624 However, the [ ] of the T5 Micro Springs 

are not a complete T5 MicroSpring and thus not a complete contact structure. There is also the 

[ ] which is not included in this opening.625 The language of claim 19 clearly 

requires that each opening correspond to a complete contact structure. Therefore, the T5 MicroSpring 

does not practice the portion of claim 19 cited above. 

623 JX-5 (the '538 patent) at col. 135 (italics added). 

624 CX-731C at 261. 

625 RX-799C. 

165 
Similarly, the T8 Micro Spring does not practice claim 19 of the '538 patent. In the third 

cross section in CX-348C at FFITC0041087, [ 

] in the openings that correspond to the [ ] portion of the T8 

MicroSpring.626 Thereafter, FormFactor applies a [ ] on the silicon wafer 

and patterns the [ ] to create an opening at the [ ] of the T8 MicroSpring that 

corresponds to the location of [ ] which is another portion of the T8 MicroSpring.627 The 

language of claim 19 clearly requires that each opening correspond to a contact structure. Therefore, 

the T8 MicroSpring does not practice the portion of claim 19 cited above. 

Since neither the T5 nor the T8 MicroSpring practice the portion of claim 19 that requires 

"said patterned layer comprising openings corresponding to said contact structures," FormFactor 

does not satisfy the technical prong of the domestic industry requirement. Since FormFactor does 

not practice this claim term of claim 19, there is no need to discuss the other claim terms that 

comprise claim 19. 

D. Validity 

1. Ordinary Skill in the Art 

As previously stated in Order No.3 7, a person of ordinary skill in the art is an individual with 

a bachelor's degree in mechanical or electrical engineering, or the equivalent, and at least one year 

of experience in either probe card assemblies, semiconductor device testing, or MEMS technology 

at the time of effective filing date for the asserted patent.628 

626 RX-254, 255. 

627Id 

628 See Order No. 37, p. 11 (January 23,2009). 

166 
2. Anticipation 

a. The Beaman '846 Patent 

MJC argues that the Beaman '846 patent anticipates claim 19 of the '538 patent in that it 

inherently teaches the limitation of "wherein said fabricating comprises applying a patterned layer 

of material to a sacrificial substrate, said patterned layer of material comprising openings 

corresponding to said contact structures," because a single layer of photoresist is applied to a 

sacrificial substrate. This single layer of photoresist is said to comprise a "patterned layer comprising 

openings corresponding to said contact structures," because the areas where the photoresist has been 

removed through the development are "openings" in the layer of photoresist and thus produce a 

pattern. These openings are said to correspond to the Beaman '846 patent's probes (i.e. contact 

structures) because a complete probe is fabricated by positioning wire within the opening in this 

single layer of photoresist and then wire bonding the wire to the sacrificial substrate. None of the 

other claim terms of claim 19 are discussed in MJ C' s brief. 

Both FormFactor and Staff oppose MJC's position. 

MJC's position is not persuasive. MJC has not shown in its briefs that each and every 

element of claim 19 is anticipated by the Beaman '846 patent. Accordingly, it is determined that the 

Beaman '846 patent does not anticipate claim 19 of the '538 patent. 

h. The Beaman '654 Patent 

MJC argues that the Beaman '654 patent anticipates claim 19 of the '538 patent in that it 

inherently teaches the limitation of "wherein said fabricating comprises applying a patterned layer 

of material to a sacrificial substrate, said patterned layer of material comprising openings 

corresponding to said contact structures," because a single layer of photoresist is applied to a 

167 
sacrificial substrate. This single layer of photoresist is said to comprise a "patterned layer comprising 

openings corresponding to said contact structures," because the areas where the photoresist has been 

removed through the development are "openings" in the layer of photoresist and thus produce a 

pattern. These openings are said to correspond to the Beaman '654 patent's probes (i.e. contact 

structures) because a complete probe is fabricated by positioning wire within the opening in this 

single layer of photoresist and then wire bonding the wire to the sacrificial substrate. None of the 

other claim terms of claim 19 are discussed in MJC's brief. 

Both FormFactor and Staff oppose MJC's position. 

MJC's position is not persuasive. MJC has not shown in its briefs that each and every 

element of claim 19 is anticipated by the Beaman '654 patent. Accordingly, it is determined that the 

Beaman '654 patent does not anticipate claim 19 of the '538 patent. 

c. The Laakso '545 Patent 

MJC argues that the Laakso patent is prior art to the '538 patent and that it teaches (1) the 

limitation of "affixing to make a relatively permanent connection without external means" and (2) 

the limitation of "applying a patterned layer of material to a sacrificial substrate, said patterned layer 

comprising openings corresponding to said contact structures." None of the other claim terms of 

claim 19 are discussed in MJC's briefs. 

FormFactor and Staff oppose MJC's arguments. 

MJC's position is not persuasive. MJC has not shown in its briefs that each and every 

element of claim 19 is anticipated by the Laaskso '545 patent. Accordingly, it is determined that the 

Laakso '545 patent does not anticipate claim 19 of the '538 patent. 

168 
3. Obviousness 

a. The Beaman '846 Patent in Combination with the References 

Disclosed in the Direct Witness Statement of Ronald Leckie 

MJC argues that the Beaman' 846 patent in combination with any of the references disclosed 

in the Direct Witness Statement of Ronald Leckie render claim 19 obvious. Specifically, MJC states 

that, due to the need in the semiconductor wafer probing industry to custom shape probe tips, it 

would have been obvious to use a sacrificial substrate and apply a patterned layer, such as 

photoresist, to the sacrificial substrate to do so. None of the other claim terms of claim 19 are 

discussed in MJC's briefs. 

FormFactor and Staff oppose MJC's arguments. 

MJC's position is not persuasive. MJC has not shown in its briefs that each and every 

element of claim 19 is taught by the Beaman' 846 patent in combination with the references in Mr. 

Leckie's referenced testimony so as to render claim 19 obvious. Accordingly, it is determined that 

the above-mentioned references do not render claim 19 of the '538 patent obvious. 

b. The Beaman '654 Patent in Combination with the References 

Disclosed in the Direct Witness Statement of Ronald Leckie 

MJC argues that the Beaman '654 patent in combination with any of the references disclosed 

in the Direct Witness Statement of Ronald Leckie render claim 19 obvious. Specifically, MJC states 

that, due to the need in the semiconductor wafer probing industry to custom shape probe tips, it 

would have been obvious to use a sacrificial substrate and apply a patterned layer, such as 

photoresist, to the sacrificial substrate to do so. None of the other claim terms of claim 19 are 

discussed in MJC's briefs. 

FormFactor and Staff oppose MJC's arguments. 

169 
MJC's position is not persuasive. MJC has not shown in its briefs that each and every 

element of claim 19 is taught by the Beaman '654 patent in combination with the references in Mr. 

Leckie's referenced testimony so as to render claim 19 obvious. Accordingly, it is determined that 

the above-mentioned references do not render claim 19 of the '538 patent obvious. 

c. The Kwon '297 Patent in Combination with the JP A H06-84455 

Patent 

MJC argues that the Kwon '297 patent and the JPA H06-84455 (JPA '455) patent render 

claim 19 of the '538 patent obvious. MJC states that both ofthese references are prior art to the '538 

patent under 35 U.S.C. § 1 03(a), and that they both disclose the use of a sacrificial layer instead of 

a sacrificial substrate. However, it is argued, based on the disclosure in these patents, one of ordinary 

skill in the art would have been motivated to use a sacrificial substrate instead of a sacrificial layer, 

given the industry need to customize the shape of probe tips. None of the other claim terms of claim 

19 are discussed in MJC's briefs. 

FormFactor and Staff oppose MJC's arguments. 

MJC's position is not persuasive. MJC has not shown in its briefs that each and every 

element of claim 19 is taught by the Kwon '297 patent in combination with the JPA '455 patent so 

as to render claim 19 obvious. Accordingly, it is determined that the above-mentioned references do 

not render claim 19 of the '538 patent obvious. 

d. The Carver '002 Patent in Combination with the Albrecht '415 

Patent 

MJC asserts that the Carver '002 patent and the Albrecht '415 patent are prior art under 35 

u.S.C. § 103, and also that they render claim 19 obvious. MJC states that both patents pertain to 

atomic force microscopy (AFM). MJC argues that, due to AFM's custom shaping of contact 

170 
structure tips, as disclosed in these patents, it would have been obvious to a person of ordinary skill 

in the art to use any of the references addressed in the Direct Witness Statement of Ronald Leckie, 

such as the Beaman '846 patent, and applied patterned layers of material to a sacrificial substrate in 

building the contact structures. Moreover, it is argued, the sacrificial substrate would have to be 

destroyed, such as by etching, in order to free the contact structures. 

FormFactor and Staff oppose MJC's arguments. 

MJC's position is not persuasive. MJC has not shown in its briefs that each and every 

element of claim 19 is taught by the Carver '002 patent in combination with Albrecht '415 patent 

and any of the references addressed in the Direct Witness Statement of Ronald Leckie so as to render 

claim 19 obvious. Accordingly, it is determined that the above-mentioned references do not render 

claim 19 of the '538 patent obvious. 

e. The Tada '052 Patent in Combination with the Luttmer '037 

Patent 

MJC asserts that the Tada '052 patent and the Luttmer '037 patent are prior art under 35 

U.S.C. § 103, and also that they render claim 19 obvious. MJC states that, based on the disclosure 

in these patents, it would have been obvious to a person of ordinary skill in the art to combine these 

two patents with the references addressed in the Direct Witness Statement of Ronald Leckie, such 

as the Beaman '846 patent or the Beaman '654 patent, for the purposes of customizing the shape of 

the probe tips or achieving a fine pitch. 

FormFactor and Staff oppose MJC's arguments. 

MJC's position is not persuasive. MJC has not shown in its briefs that each and every 

element of claim 19 is taught by the Tada '052 patent in combination with the Albrecht' 415 patent 

and any of the references addressed in the Direct Witness Statement of Ronald Leckie so as to render 

171 
claim 19 obvious. Accordingly, it is determined that the above-mentioned references do not render 

claim 19 of the '538 patent obvious. 

4. Written Description & Enablement 

MJ C argues thatthe '538 patent fails to enable the fine pitch attachment of individual contact 

structures. MJC states that the '538 patent describes the attachment of individual contact structures 

only in the context of "package" attachment, where a fine pitch is not necessary, and fails to do so 

in the context of "probe" attachment, where a fine pitch is necessary. MJC asserts that because the 

fine pitch attachment contact structures was not enabled by the' 53 8 patent, the' 538 patent describes 

gang-transfer as the ideal method of probe attachment. 

MJC argues that the same FormFactor applicants that are on FormFactor's '538 patent are 

also on F ormF actor's '254 patent. MJ C asserts that a fine pitch can not be achieved using mechanical 

techniques. Instead, it is argued, "lithographic" techniques would be needed to be employed to 

achieve a fine pitch. 

FormFactor argues that claim 19 does not require inclusion of a "fine pitch," "coarse pitch," 

or "pitch." FormFactor states that the plain language of claim 19 does not even use the words "fine 

pitch," "coarse pitch," or "pitch," and that nothing in the '538 patent or its prosecution history 

provides any basis for importing such an extraneous limitation into claim 19. 

FormFactor argues that the' 538 patent discloses attaching contact structures one-by-one on 

an individual basis and attaching in multiplies using a gang-transfer method. In addition, it is 

asserted, the' 538 patent discloses that individual contact structures can be attached using automated 

172 
parts equipment such as MJC's laser soldering system, citing to '538 patent.629 FormFactor states 

that this attachment could be at any pitch for which the automated equipment is programmed, but 

attaching at a "pitch," "fine pitch," or "coarse pitch," is not a limitation of claim 19. FormFactor 

concludes by arguing that neither FormFactor nor the inventors of the '254 patent stated in the '254 

patent (a patent said not to be related to the '538 patent) that it was not possible to achieve a fine 

pitch by attaching contact structures using mechanical means such as automated parts equipment. 

Staff supports FormFactor's position on this issue. 

MJC's arguments are not persuasive. While the language of the specification cited by MJC 

does mention the terms "coarse pitch" and "fine pitch,"630 it does not support MJC's allegation as 

set forth above. In addition, there is nothing in the language of claim 19 to support MJ C' s argument. 

The argument regarding the '254 patent is similarly not supported. Accordingly, MJC's argument 

regarding lack of enablement is rejected. 

E. Enforceability 

MJC's argument concerning this issue in its brief consists ofthe following: 

(1) FormFactor committed inequitable conduct by withholding the '654 Patent, the' 846 Patent 

and the '052 Patent during the prosecution of Form Factor's '538 Patent. (RCOL 106 -108.) 

(2) FormFactor knew of and intentionally failed to disclose these Patents during the prosecution 

ofthe application that led to FormFactor's '538 Patent. (RFF VI.E.1.01 - .03.) 

FormFactor and Staff oppose MJC's position. 

To make a showing of inequitable conduct, MJC must show that references not disclosed 

629 JX-005 (the '538 patent) at col. 133:23 - 27. 

630 JX-005 (the '538 patent) at col. 70:35 - 71 :15. 

173 
by the patentee to the PTO were material and that the patentee intended to deceive the PTO.631 As 

is clear from the above-cited language from MJC's briefs, MJC has not shown in its briefs evidence 

sufficient to meet its burden of presenting clear and convincing evidence of inequitable conduct. 

Accordingly, MJC's allegation of inequitable conduct is rejected. 

VII. The '152 Patent 

A. Overview 

Originally, nineteen claims of the '152 patent are asserted against Respondents, namely 

independent claims 1 and 21 and dependent claims 2, 7-12, 15,22-23,27-30, and 33-35. These 

claims read as follows: 

1. A method of an fabricating interconnection element, comprising: 

fabricating an interconnection component, including a connection region, 

fabricating a cantilever structure on a sacrificial substrate; 

2. 

mounting the cantilever structure to the connection region of the interconnection component; 

and 

releasing the cantilever structure from the sacrificial substrate by removing at least a portion 

of the sacrificial substrate. 

The method, according to claim 1, characterized in that: 

the interconnection component is elongate. 

7. The method, according to claim 1, characterized in that: 

the cantilever structure is brazed or soldered to the interconnection component. 

8. The method, according to claim 1, characterized in that: 

a plurality of cantilever structures are lithographically defined on the sacrificial substrate. 

9. The method, according to claim 1, characterized in that: 

the interconnection component is an element on a second substrate. 

10. The method, according to claim 1, characterized in that: 

the cantilever structure is formed by providing a masking layer on the sacrificial substrate, 

631 Star Scientific, Inc. v. R.J Reynolds Tobacco Co., 537 F.3d 1357, 1365. (Fed. Cir. 2008) 

("Star Scientific"). 

174 
forming an opening in the masking layer, and depositing spring material in the opening. 

11. The method, according to claim 1, characterized in that: 

the cantilever structure is tapered from a one end to an opposite end thereof. 

12. The method, according to claim 1, characterized in that: 

the interconnection component is resident on an electronic component. 

15. The method, according to claim 1, wherein: 

the sacrificial substrate comprises a silicon wafer. 

21. A method of forming a cantilever element, comprising: 

providing a support substrate, 

applying a release material on a first side of the support substrate, the release material 

suitable for destructive removal, 

applying a masking material on the first side of the support substrate and masking at least a 

portion of the release material, 

patterning the masking material to expose a selected portion through the masking layer, and 

depositing spring material in the selected portion to form a cantilever element. 

22. The method of claim 21 further comprising releasing the cantilever element by removing at 

least a portion of the release material. 

23. The method of claim 21 wherein the support substrate is silicon. 

27. The method of claim 21 wherein the release material is copper. 

28. The method of claim 21 wherein the release material is removed by etching. 

29. The method of claim 21 wherein the release material covers the first surface of the support 

substrate. 

30. The method of claim 21 wherein the masking material is photoresist. 

33. The method of claim 21 wherein the spring material comprises one or more materials with 

final material properties and dimensions sufficient to form a resilient member after being 

released from the support substrate. 

34. The method of claim 21 wherein the spring material is deposited by electroplating. 

35. The method of claim 21 wherein the spring material is deposited by a method selected from 

the group consisting of plating, electro less plating, chemical vapor deposition, physical vapor 

deposition, and sputtering. 

175 
Subsequently, claims 1,2,7 -12, and 15 were withdrawn by FormFactor.632 However, some 

of the claim construction in the withdrawn claims applies to the remaining claims. As noted above, 

the undersigned has already construed the above claims in a Markman order.633 A summary of the 

claims construed in that order is detailed below: 

Claim Term Construction 

Claim 1 interconnection element indefinite 

and 

interconnection component 

Claim 1 cantilever an elongate structure that is mounted (fixed) at one 

end, and the other end is free to move, typically in 

response to a force acting generally transverse to the 

longitudinal axis of the elongate element 

Claim 1 cantilever structure an elongate element (or structure) that is mounted 

and (fixed) at one end, and either is or can become free to 

cantilever element move at the other end, typically in response to a force 

acting generally transverse to the longitudinal axis of 

the elongate element (or structure), provided that 

whether movement is allowed depends on which step 

of the fabrication process one is in." 

Claim 1 sacrificial substrate a carrier (including a flexible material as well as 

and rigid boards) on which something can be formed or 

substrate attached (excluding applied layers), and that is 

destructible or removable 

Claim 1 mounting the cantilever structure no construction 

to the connection region 

Claim 2 elongate having a greater length than width 

Claim 7 brazed or soldered no construction 

Claim 10 spring material resilient material 

Claim 11 tapered from one end to an no construction 

opposite end thereof 

Claim 21 support substrate a substrate that supports 

632 Order No. 39 (January 29, 2009). 

633 See Order No. 37 (January 23,2009). 

176 
Claim 21 a release material a release material: a material that enables the 

and complete release of structures 

release material suitable for 

destructive removal release material suitable for destructive removal: a 

release material that is appropriate for removal634 by 

destruction of that release material 

Claim 21 patterning the masking material masking layer is the same as masking material 

to expose a selected portion 

through the masking layer 

B. Infringement of Claim 21 by Phicom: "release material" 

FormFactor alleges that during the fabrication of Phicom's Micro Probes, Phi com uses 

lithographic and wet etching processes to etch the silicon wafer to form depressions that complement 

the tip of Phi com's Micro Probes. Thereafter, it is alleged, Phicom sputters a layer of copper that is 

a release material suitable for destructive removal on a first side of the silicon wafer (front side), 

including in the etched areas. It is argued that a previously sputtered layer of titanium serves to 

adhere the layer of copper. FormFactor states that the copper acts as a seed layer for fabricating 

Phicom's Micro Probes. It is asserted that the Micro Probes are therefore attached to the copper 

layer and to each other via the copper layer. Thus, FormFactor argues that the copper seed layer is 

also a release material because it is suitable for destructive removal such as through a chemical 

etching process, and its removal enables the complete release of structures (Phicom' s Micro Probes) 

from the silicon wafer. FormFactor states that its infringement argument is based upon the 

undersigned's claim construction that: (1) release material is a material that enables the complete 

release of structures, and (2) release material suitable for destructive removal is a release material 

634 During the hearing, a change was made to the undersigned's claim construction to include 

the words "for removal," which were inadvertently omitted from the claim construction in Order 

No. 37. Bullock, Tr. 1880 - 1881 (March 4,2009). 

177 
that is appropriate for removal by destruction of that release material. 

Phicom asserts that its products do not meet the "release material" limitation of claim 21 and 

therefore do not infringe any of the asserted claims. More specifically, Phicom states that it destroys 

a sacrificial substrate in a wet etching bath of KOH to release the fabricated beam. Phicom states 

that it uses the copper layer to permit the beam to be electroplated and then remain fixed in place 

until the sacrificial substrate is completely etched away. Phicom argues that the KOH bath that 

etches the Phi com sacrificial substrate to free the beam from the substrate does not remove the 

copper layer. Instead, it is asserted, after the beam is completely released, Phi corn applies a separate 

etching solution and step to remove the copper layer that remains on the fabricated beam. Therefore, 

Phicom concludes that the copper layer is in fact a copper seed layer and is not the "release material" 

of the' 152 patent. 

. Phi corn states that its process does not practice the invention of the '152 patent. Phicom 

asserts that its process sputters a layer of titanium over a silicon substrate, followed by a layer of 

copper over the titanium layer. It asserts that the copper layer serves as a seed layer that allows the 

beam to be electroplated. Phi corn states that the beam is formed by electroplating metal material 

directly onto the copper layer. The copper layer is said to keep the fabricated beam attached and 

fixed to the substrate until the substrate is destroyed. It is further argued that after the end of the 

beam is mounted to the MicroProbe Head, the beam is freed from the silicon layer by etching the 

silicon away in a wet KOH bath, until the silicon sacrificial substrate is fully destroyed. Phicom 

states that it then removes the copper layer that remains adhered to the beam, through a separate 

etching step directed to the copper. Phlcom asserts that this position is supported by Mr. 

McAlexander's testimony. 

178 
Phi com argues that its position is also supported by the' 152 patent itself. It notes that in the 

single instance in the' 152 patent where FormFactor refers to a "release layer," the patent discloses 

an aluminum layer as the release layer to release a tip that is fabricated on a copper seed layer. The 

tip is said to be released by etching away the aluminum layer. Phicom states that after the tip is 

released, the copper layer remains and is subsequently etched. Phicom argues that FormFactor, in 

its own T -2 process, uses a layer of aluminum as a release layer, while using an adhesion layer and 

a copper seed layer for plating. Again, it is argued, FormFactor releases the fabricated tip by etching 

away the aluminum release layer, followed by a separate step of etching off the residual copper seed 

layer. Thus, Phi com argues that FormFactor itself recognizes that a copper seed layer is not a release 

layer. 

Phicom asserts that there is no infringement under the doctrine of equivalents. It is argued 

that the expansion of the claim scope to cover a copper seed layer would read the "release material" 

limitation out of the claim, in violation of the all elements rule and the law of prosecution history 

estoppel. 

Staff agrees with FormFactor that Phicom infringes claim 21 of the '152 patent. It argues that 

its position is based in part on the correct definition of the claim term "release material," which 

requires the release material to "enable the complete release of structures," rather than Phicom's 

position which is based on a definition that release material requires the "complete release of the 

[release] material." 

For the reasons set forth below, Phicom's position shall be adopted. Phicom's process begins 

with a layer of titanium being sputtered over a silicon substrate, followed by a layer of copper over 

179 
the titanium over the titanium layer.635 The copper layer serves as a seed layer that allows the beam 

to be electroplated.636 The copper layer keeps the fabricated beam attached and fixed to the substrate 

until the substrate is completely destroyed.637 After the end of the beam is mounted to the 

Microprobe head, the beam is freed from the silicon wafer by etching the silicon away in a wet KOH 

bath until the sacrificial substrate is fully destroyed. 

In Mr. McAlexander's testimony at trial, he stated that the way you get to the silicon is to first 

remove the copper that is outside of the beam when the beam is still attached to the copper. He stated 

further that the reason that you remove the copper outside of the beam is to give you access to the 

titanium. Then he asserts that you have to etch offthe titanium to get access to the 810-2 oxide. In 

turn, the 810-2 oxide must be etched off to get to the silicon.638 At this point in time, the beam is 

still 1 00% fully attached to the substrate, so he concludes that the removal of a portion of the copper 

layer has nothing to do with the release.639 Dr. Frazier disagrees with Mr. McAlexander's 

conclusion.640 

In Order No. 37, the term "release material" was construed to mean a material that enables 

the complete release of structures. 641 While removal of a portion of the copper seed layer is a 

necessary step to proceed to the destruction of the silicon substrate that completely releases one end 

of the MicroProbe Heads, it cannot be said to rise to the level of a release material that enables the 

complete release of the MicroProbe Heads made by Phicom. The connection is too tenuous. 

635 RX-381 at Q/A 39 - 41; Tr. 1845 - 1846. 

636Id 

637 Tr. 1877 - 1878. 

638 Tr. 1845 - 1846. 

639 Tr. 1846. 

640 CX-731 C at p. 30. 

641 Order No. 37 at 109. 

180 
Accordingly, Phicom's products do not read on the claim term release material of claim 21. 

Therefore, Phicom's products do not directly infringe claim 21 of the '152 patent. For the same 

reasons, Phicom' s products do not infringe claim 21 of the '152 patent under the doctrine of 

equivalents. 

Since Phicom's products do not read on the claim term release material in claim 21, there 

is no need to address other claim terms in claim 21 or in the claims that depend from claim 21; i. e. 

claim 22, claim 23, claim 27, claim 28, claim 29, claim 30, claim 33, claim 34, and claim 35. 

C. Domestic Industry - Technical Prong 

1. FormFactor's T -2 Products 

The main dispute between the parties with regard to FormFactor's T-2 products is whether 

FormFactor practices the step of claim 21 of "depositing spring material in the selected portion to 

form a cantilever element." F ormF actor argues that it deposits [ ] in the selected portion 

to produce the [ ] ofthe cantilever element, which is part and parcel of what FormFactor 

does "to form a cantilever element." F ormF actor states that the fact that more is done does not matter 

in determining that claim 21, a "comprising" claim, is satisfied. In that regard, FormFactor applies 

a [ ] on top of the [ 

] and patterns that [ ] to expose a selected portion that will correspond 

to the [ ] 

Thereafter, it is asserted, the [ ] of the cantilever element is formed by [ 

] material into the opening. The material deposited is said to 

complete the cantilever element. 

FormFactor argues that Phicom takes the position that the [ ] 

181 
[ ] defines an opening for only [ ] of the cantilever 

element, which is not an elongated structure that Order No. 37 requires for it to be considered a 

"cantilever element." In fact, FormFactor asserts, Phicom argues that the [ 

FormFactor's cantilever is formed using the [ 

] F ormF actor states that Phi com asserts that the [ 

on the substrate, and that [ ] 

] portion of 

]isnot 

In response to that argument, FormFactor states that nothing in claim 21 requires that a 

complete cantilever element be deposited in the opening in the [ ] layer. Indeed, it is 

asserted, the' 152 specification itself discloses in the Figure 6 examples a process of forming [ J 

structure and releasing that [ ] through an aluminum release layer. F ormF actor asserts that 

the Figure 6 examples of the '152 patent show that the [ J is subsequently attached to the 

[ ] portion to form a cantilever element. 

In response to Staff s argument that the [ ] applied by FormFactor does not 

[ ] at least a portion of the release material, FormFactor states that it [ 

] across the first side of the support substrate (silicon wafer) and into 

the [ ] in fabricating its T -2 MicroSprings. Therefore, F ormFactor argues that any [ ] 

material that is applied on the first surface of the silicon wafer will necessarily [ ] at least a portion 

of the [ ] layer that is a release material. FormFactor states that while the [ 

] layers are [ 

that the [ 

] layer, it is plain that claim 21 does not require 

] be applied directly on the release and there is nothing in the '152 

specification or prosecution history requiring claim 21 to be so limited. This is said to be supported 

by the Figure 6 examples and disclosure of the '152 patent. FormFactor concludes by asserting that 

182 
even "if it were literally so limited, the difference is insubstantial. ,,642 

Phicom does not appear to disagree with FormFactor about the details of the process used. 

However, Phicom states that the only "release material" that FormFactor alleges is the [ ] 

release material. It argues that the [ ] which (1) is on the support substrate and (2) [ ] this 

[ ] release layer, defines an opening for only [ ] which is not an "elongate element" 

as required by Order No. 37's construction of the claim term "cantilever element." Instead, Phi com 

asserts the [ 

that is [ 

] portion of Form Factor's cantilever is formed using the [ ] 

] formed on the [ ] Phicom states that the [ 

] is not on the substrate and does not [ ] release layer. Instead, it is argued, 

the [ ][ ] layer. Therefore, Phi com concludes that FormFactor is not 

practicing the combined steps of "applying a masking material on the first side of the support 

substrate and masking at least a portion of the release material, patterning the masking material to 

expose a selected portion through the masking material, and depositing spring material in the 

selected portion to form a cantilever beam," as required by claim 21. Phicom states that its expert, 

Mr. McAlexander, explained all of this through testimony. 

Staffalso asserts that FormFactor's T-2 MicroSpring does not practice claim 21 ofthe '152 

patent. Staff notes that F ormF actor applies masking material in which a "selected portion" is exposed 

to receive the deposit of the spring material, which forms a cantilever element. But, it is asserted, that 

masking material does not mask at least a portion of the release material. Alternatively, it is argued, 

exposure of masking material that masks at least a portion of the release material that masks at least 

a portion of the release material in which a selected portion is exposed to receive a deposit of spring 

642 CRB 30. 

183 
material does not satisfy the claim because the deposit forms [ ] which is not "elongate," as 

called for by the definition of "cantilever element" in Order No. 37. 

In response to an argument made by FormFactor in its initial brief, Staff states that 

F ormFactor misapprehends Staff s argument. More specifically, Staff states that F ormF actor asserts 

that Stafr s argument is "based on the incorrect contention that Claim 21 requires deposit of a 

complete cantilever element into an opening and directly onto the [ ]643 In response, Staff 

states that claim 21 of the' 152 patent requires "depositing spring material in the selected portion to 

form a cantilever element." This term was construed by Order No. 37 to be an elongate element. 

Thus Staff states that this claim language requires that the deposit of spring material in the selected 

portion be elongate, not complete. Because the material that FormFactor deposits in the selected 

portion forms [ ] and because the evidence does not show that [ ] is elongate, Staff asserts 

that FormFactor has not shown that its T-2 MicroSpring practices claim 21 of the '152 patent. 

Staff also argues that FormFactor, in its initial brief, argues for the first time that it practices 

the' 152 patent under the doctrine of equivalents. Staff submits that FormFactor has already waived 

this argument by not having raised it in its pre-trial brief. Even if the undersigned finds that the 

argument was not waived, Staff asserts that the argument must fail because it is not supported by any 

evidence and is merely conclusory attorney argument. 

For the reasons set forth below, FormFactor's T-2 MicroSpring has not been shown to 

practice claim 21 of the' 152 patent. Claim 21 of the ' 152 patent requires "depositing spring material 

in the selected portion to form a cantilever element." The term "cantilever element" was construed 

643 Staff cites to CIB 68 and states that it added the italics to the quoted language. SRB 3. 

184 
by Order No. 37 to be an elongate element.644 This claim language requires that the deposit of spring 

material in the selected portion must result in the object formed to be elongate. Because the material 

that FormFactor deposits in the selected portion forms [ ] and because the evidence does not 

show that [ ] is elongate, FormFactor's T-2 MicroSpring does not practice claim 21 of the '152 

patent." 645 

FormFactor's argument, which is that the Figure 6 series in the' 152 specification disclose 

that the [ J is eventually attached to [ J portion to form a cantilever, is not persuasive. 

The [ ] portion ofFormFactor's cantilever is formed using an [ J that is 

deposited on the metal layers formed on the first mask. The [ ] and 

does not [ ] layer. Instead, [ ] 

Therefore, FormFactor is not practicing the combined steps of "applying a masking material on the 

first side of the support substrate and masking at least a portion of the release material, patterning 

the masking material to expose a selected portion through the masking material, and depositing 

spring material in the selected portion to form a cantilever beam," as required by claim 21.646 

With regard to FormFactor's doctrine of equivalents argument, FormFactor has presented 

no persuasive evidence to support this contention. 

For the reasons set forth above, FormFactor's T-2 products do not practice claim 21 of the 

, 152 patent. 

2. FormFactor's T-8 Products 

Staff and Phi com argue that FormFactor has waived the argument that its T-8 products 

644 Order No. 37 at 105. 

645 CX-0414C, Q/A 69 - 70. 

646Id 

185 
practice claim 21 of the '152 patent because that argument was not raised in FormFactor's pre-trial 

brief. FormFactor disagrees, citing pages 342 - 347 of its pre-trial brief. 

A review of pages 342 through 347 of FormFactor's pre-trial brief cited by FormFactor, 

indicates quite clearly that F ormFactor was discussing its T -8 products in the context of claim 19 of 

the '538 patent, not claim 21 of the '152 patent. Therefore, since FormFactor did not raise the issue 

of its T -8 products practicing claim 21 of the' 152 patent in its pre-trial brief, that issue is deemed 

waived in accordance with the undersigned's Ground Rule 8.2. 

3. Conclusion 

For the reasons set forth above, FormFactor has not met the technical prong of the domestic 

industry requirement. 

D. Validity 

1. Ordinary Skill in the Art 

As previously stated in Order No.3 7, a person of ordinary skill in the art is an individual with 

a bachelor's degree in mechanical or electrical engineering, or the equivalent, and at least one year 

of experience in either probe card assemblies, semiconductor device testing, or MEMS technology 

at the time of effective filing date for the asserted patent.647 

2. Anticipation - The Kubena '194 Patent 

Phi com argues that the Kubena patent, U.S. Patent No. 5,596,194 (RX-202), [Kubena], 

anticipates claim 21 of the' 152 patent. Phicom asserts that Kubena discloses a method of forming 

a cantilever element. It is stated that Figures 7 A - 7D of Kubena show the fabrication of a cantilever 

element, as recited by claim 21 of the' 152 patent. The fabrication process of the Figure 7 series is 

647 See Order No. 37, p. 11 (January 23,2009). 

186 
said to start with an initial substrate 114 shown in Fig. 7 A, and then a sacrificial layer 122 is formed. 

(Fig. 7C.) A metal layer 124 is said to be formed over the sacrificial layer. As shown in Fig. 7D, the 

metal layer is then masked, and a beam 128 is formed. Phicom then argues that sacrificial layer 122 

in 7D is removed to provide a complete release of the cantilever beam. Phi com asserts that Kubena 

discloses every limitation of the asserted claim. Phicom states that its conclusions are supported by 

Mr. McAlexander's evidence as well as the content and teachings of the prior art references 

themselves. Phicom rejects FormFactor's argument that Kubena does not disclose depositing a 

spring material to form a cantilever element because the cantilever is made of gold. Phi com argues 

that the' 152 patent expressly teaches that gold can be used as a resilient or spring material. 

Finally, Phicom opposes FormFactor's argument that, because one end of the cantilever, 

when freed, remains attached to the substrate on which it was formed, there is no release layer that 

enables a complete release. Phi com argues that claim 21 requires depositing spring material onto a 

selected portion of the release material, construed to be "a material that enables the complete release 

of structures." The claim is said to require depositing spring material onto a selected portion of the 

release material to form a "cantilever element." The claimed combination is said to cover fabricating 

a beam over a release layer on a substrate and complete, as Kubena is said to disclose. 

Phicom argues that a similar process is shown in the figure 1 series of Kubena. It states that 

Fig. If of Kubena shows that a sacrificial layer 30 is provided over a first side of support substrate 

14, which corresponds to "the applying release layer ... " step of claim 21. It is stated that sacrificial 

release layer 30 is destructively removed later to completely release cantilever 36. Fig. Ih is said to 

show that resist 34, which is a masking material, is applied on support substrate 14 and masks both 

metal seed layer 32 and release layer 30, thus corresponding to the "applying a masking materiaL." 

187 
step. Mask material 34 is said to be patterned to expose a selected opening through mask material 

34, thus corresponding to the "patterning the masking materiaL." step. 

Phicom argues that Fig. 1 i of Kubena shows that the selected opening is deposited with gold, 

a spring material, which corresponds to the "depositing spring materiaL." step. Phicom asserts that 

the' 152 patent itself states that gold is a spring material that has resilient characteristics. 

Therefore, Phicom argues that that Kubena anticipates each and every element of claim 21. 

Staff asserts that Kubena does not anticipate claim 21 because Kubena does not disclose the 

claimed "release material" that enables the complete release of the structures from the substrate. 

FormFactor asserts that Kubena does not anticipate claim 21 of the '152 patent because 

Kubena does not disclose a "release material." FormFactor states that "the substrate 14 is a part of 

the final structure (tunneling sensor) and cantilever arm 38 remains attached to it.,,648 In addition, 

FormFactor states that Kubena does not disclose "depositing a spring material in the selected portion 

to form a cantilever element." It is argued that the cantilever arm is made from gold and one of 

ordinary skill in the art would not conclude that gold is a spring material. 

FormFactor asserts that Phicom is improperly trying to rely on certain RDX (demonstrative) 

exhibits, which are claim charts, which have no intrinsic evidentiary value since they are 

demonstrative exhibits. FormFactor argues that its witness, Mr. McAlexander's, opinions are based 

on a definition of one of ordinary skill in the art that is different than the one established in Order 

No. 37, and that his opinions are not based upon the claim construction set forth in Order No. 37. 

FormFactor states that Mr. McAlexander did not provide an element-by-element analysis of Kubena 

or any other prior art with regard to claim 21. F ormFactor argues that the evidence he did present is 

648 eIB 75. 

188 
insufficient to demonstrate that Kubena anticipates claim 21. 

For the reasons set forth below, Phicom's position shall be adopted. Figure la of Kubena 

shows substrate 14 that supports other structures. Support substrate 14 corresponds to the "support 

substrate" recited by claim 21 of the '152 patent.649 

FIG. 1 a. 

Kubena shows in figure 1 f that a sacrificial layer 30 is provided over a first side of support substrate 

14, which corresponds to the "applying a release layer" step of claim 21. Sacrificial release layer 30 

is destructively removed later to completely release the cantilever 36.650 

30 

FIG. 1 f. 

Figure Ih shows that the resist layer 34, which is a masking material, is applied on support substrate 

14 and masks both metal seed layer 32 and release layer 30, thus corresponding to the "applying a 

masking material" step of claim 21. Mask material 34 is patterned to expose a selected opening 

through mask material 34, thus corresponding to the "patterning the masking material" step of claim 

649 RX-0202 (Kubena) at Fig. la and col. 3:65 - 4:2. 

650Id. at Fig. If and 4: 17 - 19 and 4:37 - 45. 

189 
32 

FIG. 1 h. 

Fig. Ii of Kubena shows that the selected opening is deposited with gold, a spring material, 

which corresponds to the "depositing spring material" step recited by claim 21 of the '152 patent.652 

The' 152 patent indicates that gold is a spring material that shows resilient characteristics.653 

36 

FIG. 1 i. 

For all of the above-stated reasons, it is determined that the Kubena' 194 patent anticipates 

claim 21 of the' 152 patent in all respects. Accordingly, claim 21 of the' 152 is determined to be 

invalid due to anticipation by the Kubena '194 patent. 

As noted above, it has been determined that Phicom's products do not infringe independent 

claim 21, that F ormF actor does not meet the technical prong with respect to independent claim 21, 

651 Id. at Fig. 1h and 4:28 - 31. 

652Id. at Fig. Ii and 4:33 - 38 and 4:36 -45. 

653 JX-001 at 10:26 - 30; 11:45 - 50; 12:20 -25; and 15:48 -52. 

190 
and that Kubena anticipates independent claim 21. In light of these findings, the undersigned will 

not address the other prior art invalidity arguments regarding anticipation and obviousness with 

respect to independent claim 21. Since three bases for no violation of claim 21 have been 

determined, no analysis of the invalidity arguments related to anticipation and obviousness of the 

dependent claims will be made. 

3. Written Description and Enablement 

Phicom argues that Figures 7 A - F and 70 - H are the only drawings in the' 152 patent that 

illustrate steps of fabricating elongated cantilevered elements. Phi com asserts that, as shown, an 

elongated cantilever beam is formed on what is disclosed to be "sacrificial substrate" 702, a claimed 

element of "terminated" independent claim 1 but not a claimed element of remaining asserted 

independent claim 21, which claims a "support substrate" and a "release material suitable for 

destructive removal." 

Phicom argues that in the first embodiment encompassed by Figures 7 A through F and 70 -

H, trenches 704 are etched into a surface of "sacrificial substrate" 702. It states that, as shown in 

Figure 7B, a hard field layer 706 is deposited on the surface of the substrate, followed by an optional 

layer 708 of plateable material. Phicom argues that the patent does not describe either of those layers 

- layer 706 or 708 - as a "release" layer that in some manner allows the fabricated cantilever element 

to be released from the underlying substrate. Instead, it is asserted, layer 706 is described to be a 

"hard field layer," and the only materials expressly identified for this layer are tungsten-silicide, 

tungsten, or diamond materials that are described as "not amenable to plating." Phicom argues that 

the second layer 708 is described to be a plateable material. 

Phi com states that a masking material, such as a photoresist, is applied over layer 708. 

191 
Phi com asserts that then the cantilever element is formed by depositing a spring layer 712 by any 

suitable means such as plating. It is stated that the masking material and the portions of layers 706 

and 708 below the masking layer are stripped, leaving a plurality of cantilever elements remaining 

fixed on the sacrificial substrate. Figures 7C through 7E are said to illustrate the fabricated cantilever 

beams on the "sacrificial substrate" 702, while in Fig. 7F the cantilever beam is shown with the 

sacrificial substrate removed. Phi com states that while the patent does not explain how the beam is 

removed, even after it is removed, the field layer and the plating layer remain, as shown in Fig. 7F. 

Phicom asserts that Figures 7G and H similarly show that the fabricated cantilever is formed 

and then removed from the sacrificial substrate. Phi com argues that the Figure 7 embodiments do 

not disclose the use of a release layer to enable a complete release, or any release. It is asserted that 

instead they disclose plating a cantilever element over field and plating layers that are applied and 

used to adhere materials to the substrate, not to release any material whatsoever. 

Phicom rejects what it says are FormFactor's attempts to use the Figure 6 and 7 series 

together to support its contention that claim 21 is not invalid because of a lack of a written 

description and lack of enablement. 

FormFactor argues that there is no legal requirement that there must be a single embodiment 

in the patent specification that discloses every thing required by the claim. FormFactor states that 

one of ordinary skill in the art would realize that the combination of the Figure 6 and Figure 7 

examples of the '152 patent disclose use of a "release material" to form a cantilever element as 

required by claim 21. 

For the reasons set forth below, FormFactor's arguments have been found to be persuasive. 

Phicom has the burden of showing lack of enablement or inadequate written description. A review 

192 
of the language of claim 21, the specification with the Figure 7 series of drawings and the language 

associated with those figures, shows that one of ordinary skill in the art could discern how to 

replicate the alleged invention without undue experimentation. Accordingly, Phicom's lack of 

written description and enablement arguments are rejected. 

VIII. Patent Misuse and Unclean Hands 

Respondents argues that F ormF actor has engaged in misconduct that warrants a 

determination that FormFactor has violated the equitable doctrines of patent misuse, unclean hands, 

and abuse of process, rendering each of the asserted patents unenforceable. 

Respondents assert that when the undersigned construed the claims and issued Order No.3 7, 

FormFactor should have accepted the dispositive consequences of the claim constructions in that 

order and not pursued the trial further. Instead, it is alleged, FormFactor made erroneous and 

misleading arguments on several issues. FormFactor is also said to have failed to absorb the lessons 

of certain Korean patent rulings that it had no viable claims, improperly pressured Phi com to take 

a license, improperly communicated with Respondents' customers, and acted improperly in the 

instant proceeding. 

FormFactor and Staff oppose these allegations. 

Respondents' position is not persuasive. Respondents have not shown in their briefs clear 

and convincing evidence that FormFactor has engaged in patent misuse, unclean hands or abuse of 

process with respect to any or all ofthe asserted patents in this proceeding. Accordingly, the asserted 

patents are not unenforceable due to patent misuse, unclean hands, or abuse of process. 

IX. Domestic Industry - Economic Prong 

FormFactor asserts that it meets the economic prong of the domestic industry requirement 

193 
under prongs (A), (B), and (C).654 Staff agrees with FormFactor that it has satisfied the economic 

prong of the domestic industry requirement for each of the asserted patents.655 

Respondents assert that FormFactor does not meet the economic prong with respect to the 

'485 patent because FormFactor has not shown that any of its U.S. facilities are used to produce or 

test semiconductor devices. As to the remaining patents, Respondents assert that FormFactor has 

not tied its U.S. investments in research and development activities to a specific product that is 

covered by each of the asserted patents.656 

F ormF actor counters Respondents' arguments. As to the '485 patent, F ormF actor asserts that 

there only needs to be a nexus between the asserted patent and domestic activities, which is satisfied 

by showing some connection.657 And as to Respondents' argument that FormFactor has not 

demonstrated with sufficient particularity the allocation of investment attributable to the asserted 

patents, FormFactor asserts that there is no requirement that a complainant allocate the breakdown 

of its investment in the articles protected by the intellectual property at issue in excruciating detail 

where a complainant's entire business is devoted to the design and manufacture of the intellectual 

property at issue.658 Furthermore, F ormFactor asserts that the threshold by which a complainant may 

satisfy the economic prong is relatively low. 659 The undersigned agrees with F ormF actor that, based 

654 CIB 95-98; CRB 40-42. 

655 SIB 71-72 citing Freeman, Tr. 348-49, CX-729C (Freeman Direct) at Q/A 4,25-27,36-

40,59, 101, CX-730C (Khandros Direct) at Q/A 56-63, CX-59C. 

656 RIB 97; RRB 48. 

657 CRB 40 (emphasis in original) citing Certain Microlithgraphic Machines and Components 

Thereof, Inv. No. 337-T A-468, Initial Determination (January 29,2003) ("Certain Microlithgraphic 

Machines"). 

658 CRB 41. 

659 CRB 41 citing Certain SDRAMs, DRAMs, ASICs, RAM-on-Logic Chips, Microprocessors, 

Microcontrollers, Processes for Manufacturing Same and Products Containing Same, Inv. No.3 37-

(continued ... ) 

194 
on Commission precedent, the threshold by which a complainant may satisfy the economic prong 

is relatively low. 

A. Significant Investment in Plant and Equipment 

FormFactor asserts that its headquarters in Livermore, California consists of a campus of six 

buildings totaling approximately 220,000 square feet, including the largest manufacturing MEMS 

Class 100 clean room in California.660 FormFactor asserts that it has invested heavily in its U.S. 

operations for the past three years. Specifically, FormFactor asserts that it has invested [ 

] in 2005,661 [ ] in 2006,662 and [ ] for the first half of 2007,663 all 

of which is related to the asserted patents. Based on a review of the evidence, the undersigned agrees 

with FormFactor that it has shown that it satisfies the economic prong of the domestic industry 

requirement for each of the asserted patents based on its significant investment in plant and 

equipment. 

B. Significant Employment of Labor or Capital 

FormFactor asserts that it employs approximately 986 employees in North America.664 As 

of June 2008, FormFactor employed nearly [ ] department, the 

majority of whom are located in the U.S.665 Based on a review of the evidence, the undersigned 

agrees with FormFactor that it has shown that it satisfies the economic prong of the domestic 

659( ... continued) 

TA-404, Order No. 14 (March 31, 1998) ("Certain SDRAMs"). 

660 CIB 97 citing CFF 2061-2065. 

661 CIB 97 citing CFF 2112-2113, 2119-2122. 

662 CIB 97 citing CFF 2115, 2123- 2127. 

663 cm 97 citing CFF 2096, 2116, 2128-2132. 

664 CIB 97 citing CFF 2083. 

665 CIB 97 citing CFF 2084, 2090-2091. 

195 
industry requirement for each of the asserted patents based on its significant investment employment 

of labor and capital. 

c. Substantial Investment in Exploitation, Including Engineering, Research and 

Development, or Licensing 

FormFactor asserts that it has invested ] of its revenues on research and 

development, which breaks down to [ ] for fiscal year 2007, [ ] for fiscal year 

2006, and [ ] for fiscal year 2005.666 FormFactor asserts that, while it has operations 

in other countries, all of FormFactor's manufacturing operations and the great majority of 

FormFactor's research and development into its probe card assemblies are conducted in California.667 

The undersigned agrees with Respondents that F ormFactor has not made a sufficient showing 

of nexus between its research and development activities to any of the asserted patents. Accordingly, 

the undersigned finds that FormFactor has not shown that it satisfies the economic prong of the 

domestic industry requirement for each of the asserted patents based on a substantial investment in 

exploitation, including engineering, or research and development. 

666 CIB 96 citing CFF 2117-2118. 

667 CIB 96 citing CFF 2061, 2065, 2070, 2086. 

196 
CONCLUSIONS OF LAW 

1. The Commission has subject matter jurisdiction in this investigation. 

2. The Commission has personal jurisdiction over Respondents Micronics Japan Co., Ltd., MJC 

Electronics Corp.; Phicom Corp.; and Phiam Corp. 

3. Respondents Micronics' and Phicom's accused products do not infringe claims 1,3,4, 18, 

19,23,24,29,32,33,36,37, and 41 of U.S. Patent No. 6,615,485 in violation of35 U.S.C. 

§ 271(a). 

4. Respondents Micronics' and Phicom's accused products do not infringe claims 1-3, 12,24, 

and 25 of U.S. Patent No. 6,509,751 in violation of35 U.S.C. § 271(a). 

5. Respondents Micronics' accused products do not infringe claim 19 of U.S. Patent No. 

7,225,538 in violation of35 U.S.c. § 271(a). 

6. Respondents Phicom's accused products do not infringe claims 21-23, 27-30, and 33-35 of 

U.S. Patent No. 5,994,152 patent in violation of35 U.S.C. § 271(a). 

7. An industry in the United States does not exist with respect to FormFactor's products that 

is protected by U.S. Patent Nos. 6,615,485; 7,225,538; and 5,994,152 as required by 19 

U.S.C. § 1337(a)(2) and (3). 

8. An industry in the United States exists with respect to FormFactor's products that is 

protected by U.S. Patent Nos.6,509,751 as required by 19 U.S.C. § 1337(a)(2) and (3). 

9. Claims 1,3,4, 18, 19,23,24,29,32,33,36,37, and 41 of U.S. Patent No. 6,615,485 are not 

invalid under 35 U.S.C. § 102 for anticipation based on the asserted prior art references. 

10. Claims 1,3,4, 18, 19,23,24,29,32,33,36,37, and 41 of U.S. Patent No. 6,615,485 are not 

invalid under 35 U.S.C. § 103 for obviousness based on the asserted combination of prior 

197 
art references. 

11. Claims 1,3,4, 18, 19,23,24,29,32,33,36,37, and 41 of U.S. Patent No. 6,615,485 are 

not invalid under 35 U.S.C. § 112 for lack of written description and/or enablement. 

12. Claims 1-3, 12,24, and 25 of U.S. Patent No. 6,509,751 are not invalid under 35 U.S.C. § 

102 for anticipation based on the lP -034 to Amamiya or Hagihara '192 patent prior art 

references. 

13. Claims 1-3, 12,24, and 25 of U.S. Patent No. 6,509,751 are not invalid under 35 U.S.C. § 

103 for obviousness based on W096/15458 alone or in combination with the lP -034 to 

Amamiya or Hagihara '192 patent. 

14. Claim 19 of U.S. Patent No. 7,225,538 is not invalid under 35 U.S.c. § 102 for anticipation 

based on the Beaman '846 patent; the Beaman '654 patent; or the Laakso '545 patent prior 

art references. 

15. Claim 19 of U.S. Patent No. 7,225,538 is not invalid under 35 U.S.C. § 103 for obviousness 

based on any of Respondent Micronics prior art combinations. 

16. Claim 19 of U.S. Patent No. 7,225,538 is not invalid under 35 U.S.C. § 112 for lack of 

written description and/or enablement. 

17. Claim 19 of U.S. Patent No. 7,225,538 is not invalid based on unenforceability. 

18. Claim 21 of U.S. Patent No. 5,994,152 patent is invalid under 35 U.S.C. § 102 for 

anticipation based on the Kubena '194 patent prior art reference. 

19. Claims 21-23, 27-30, and 33-35 of U.S. Patent No. 5,994,152 patent are not invalid under 

35 U.S.C. § 112 for lack of written description and/or enablement. 

20. The asserted patents are not invalid based on patent misuse and/or unclean hands. 

198 
INITIAL DETERMINATION 

Based on the foregoing opinion, findings of fact, conclusions oflaw, the evidence, and the 

record as a whole, and having considered all pleadings and arguments, including the proposed 

findings of fact and conclusions oflaw, it is the Administrative Law Judge's Initial Determination 

that a violation of Section 337 of the Tariff Act of 1930, as amended, has not been found in the 

importation into the United States, the sale for importation, or the sale within the United States after 

importation of certain probe card assemblies, components thereof and certain probe card assemblies, 

components thereof and certain tested DRAM and NAND flash memory devices and products 

containing same, in connection with claims 1,3,4, 18, 19,23,24,29,32,33,36,37, and 41 of U.S. 

Patent No. 6,615,485; claims 1-3, 12,24, and 25 of U.S. Patent No. 6,509,751; claim 19 of U.S. 

Patent No. 7,225,538; and claims 21-23, 27-30, and 33-35 of U.S. Patent No. 5,994,152 patent. 

Furthermore, the Administrative Law Judge hereby determines that a domestic industry in the United 

States exists that practices U.S. Patent No. 6,509,751 and does not exist that practices U.S. Patent 

Nos. 6,615,485; 7,225,538; and 5,994,152. 

The Administrative Law Judge hereby CERTIFIES to the Commission this Initial 

Determination, together with the record of the hearing in this investigation consisting of the 

following: the transcript of the evidentiary hearing, with appropriate corrections as may hereafter be 

ordered by the Administrative Law Judge; and further the exhibits accepted into evidence in this 

investigation as listed in the attached exhibit lists. 

Pursuant to 19 C.F.R. § 210.4 2(h), this Initial Determination shall become the determination 

of the Commission unless a party files a petition for review pursuant to 19 C.F.R. § 21 0.43 (a) or the 

Commission, pursuant to 19 C.F.R. § 210.44, orders on its own motion a review of the Initial 

199 
Determination or certain issues therein. 

200 
RECOMMENDED DETERMINATION ON REMEDY AND BOND 

Pursuantto Commission Rules 21 O.36(a) and21 0.42(a)(1 )(ii), the Administrative Law Judge 

is to consider evidence and argument on the issues of remedy and bonding and issue a recommended 

determination thereon. 

x. Remedy and Bonding 

A. Limited Exclusion Order 

Under Section 337(d), the Commission may issue either a limited or a general exclusion 

order. A limited exclusion order ("LEO") instructs the U.S. Customs Service to exclude from entry 

all articles that are covered by the patent at issue and that originate from a named respondent in the 

investigation. The Federal Circuit has held that the Commission has "no statutory authority to issue 

an LEO against downstream products of non-respondents.,,668 

FormFactor requests that a permanent limited exclusion order be issued excluding 

Respondents' infringing probe card assemblies.669 Respondents assert that, if a violation is found 

the remedy should consist of a limited exclusion order against the specific imported probe 

assemblies of any Respondent where a violation is established.670 Staff agrees with F ormF actor and 

Respondents that, if a violation is found, there be a limited exclusion order against the parties found 

to infringe. 671 

While the undersigned agrees with Respondents and Staff that there is no violation, the 

undersigned finds that if the Commission otherwise finds that there is a violation, a limited exclusion 

668 Kyocera, 545 F.3d at 1345. 

669 CIB 98. 

670 RIB 98; RRB 48. 

671 SIB 73. 

201 
order against infringing products is warranted. 

B. Cease and Desist Order 

Under Section 337(f)(1), the Commission may issue a cease and desist order in addition to, 

or instead of, an exclusion order. Cease and desist orders are warranted primarily when the 

respondent maintains a commercially significant inventory of the accused products in the United 

States.672 

FormFactor requests a cease and desist order against Respondents because "the Commission 

has personal jurisdiction over Respondents" and because "Respondents have imported significant 

quantities of infringing product, components thereof, and products containing the same for sale and 

distribution.,,673 Furthermore, FormFactor asserts that Respondents engage in "repair activities.,,674 

Respondents assert that FormFactor has not met its burden in proving that any Respondent 

has commercially significant inventories in the United States. According to Respondents, 

FormFactor has failed to introduce any evidence in this investigation to the effect that any of the I 

Respondents maintain in the United States any "commercially significant inventory" of probe card 

assemblies.675 

Staff agrees with Respondents that F ormF actor has failed to introduce any evidence that any 

Respondents maintain commercially significant inventories of infringing product in the United States 

and that no cease and desist order should be issued.676 

672 Certain Crystalline, 15 U.S.P.Q.2d at 1277-79. 

673 CIB 99. ' 

674 CRB 42. 

675 RIB 98-99; RRB 48. 

676 SIB 73 citingRX-380C (Hong Direct) atQIA 64-66; Hwang, Tr. 1331; RX-689C (Hutton 

Direct) at Q/A 45. 

202 
The undersigned agrees with Respondents and Staff that FormFactor has not met its burden 

in proving that any Respondent maintains a commercially significant inventory of accused products 

in the United States. Accordingly, no cease and desist order is warranted against any Respondent. 

C. Bond During Presidential Review Period 

If the Commission enters an exclusion order or cease and desist order, parties may continue 

to import and sell their products during the pendency of the Presidential review under a bond in an 

amount determined by the Commission to be "sufficient to protect the Complainants from any 

injury.,,677 

FormFactor requests bond be set at 100% of the entered value.678 

Respondents assert that FormFactor has failed to put forth sufficient evidence from which 

an entry bond during the Presidential review period can be calculated and that no bond should be 

imposed. Alternatively, Respondents assert that if a bond is found to be appropriate, it should be 

limited to a reasonable royalty rate of 0.5% or less, but no more than 15%.679 

Staff asserts that there is no evidence in the record regarding FormFactor's prices for probe 

cards, but that there is evidence in the record that a reasonable royalty rate would be [ ] As to 

Respondents' assertion that a reasonable royalty rate would be more like 0.4%-0.5%, Staff finds that 

[ 

Accordingly, Staff asserts that the bond should be set at 15%.681 

The Commission frequently sets the bond by attempting to eliminate the difference in sales 

677 19 U.S.c. § 1337(e); 19 C.F.R. § 210.50(a)(3). 

678 CIB 99-100. 

679 RIB 98-100 citing RFF IXC.02; RRB 49-50. 

680 SIB 73-75. 

681 SIB 75. 

203 
prices between the patented domestic product and the infringing product. 682 In the absence of 

reliable price information, the Commission has used other methods to determine an appropriate 

bond. For example, where a price comparison is unworkable, the Commission has determined that 

a bond of 1 00% is appropriate.683 In other instances where a direct comparison between a patentee's 

product and the accused product was not possible, the Commission has set the bond at a reasonable 

royalty rate.684 

In this case, there is evidence that a reasonable royalty rate is 15%.685 Accordingly, the 

undersigned recommends a bond in the amount of 15%. 

Within seven days of the date of this document, each party shall submit to the office of the 

Administrative Law Judge a statement as to whether or not it seeks to have any portion of this 

document deleted from the public version. The parties' submissions must be made by hard copy by 

the aforementioned date. 

Any party seeking to have any portion of this document deleted from the public version 

thereof must submit to this office a copy of this document with red brackets indicating any portion 

asserted to contain confidential business information.686 The parties' submission concerning the 

682 See Certain Microsphere Adhesives, Commission Opinion at 24. 

683 See, e.g., Certain Variable Speed Wind Turbines and Components Thereof, Inv. No. 337-

TA-376, U.S.I.T.C. Pub. No. 3003, Comm'n Op. at 27-28 and 40 (U.S.I.T.C., September 23,1996) 

("Certain Wind Turbines"). 

684 See, e.g., Certain Digital Satellite System (DSS) Receivers and Components Thereof, Inv. 

No. 337-TA-392, U.S.I.T.C. Pub. No. 3418, Initial and Recommended Determinations at 245, 

vacated on other grounds, Comm'n Determination (May 13, 1999),2001 WL 535427 (U.S.I.T.C., 

October 20, 1997) ("Certain DSS Receivers"). 

685 RX-286C (FormFactor-Intel Agreement) at ~ 4.4.2; RX-285C (FormFactor-Gotoh 

Agreement) at ~~ 6.01-6.02. 

686 Confidential business information is specifically defined in 19 C.F.R. § 201.6(a)(I) and 

Order No. 1 as 

(continued ... ) 

204 
public version of this document need not be filed with the Commission Secretary. 

SO ORDERED. 

686( .•• continued) 

Charles E. Bullock 

Administrative Law Judge 

information which concerns or relates to the trade secrets, processes, operations, style 

of works, or apparatus, or to the production, sales, shipments, purchases, transfers, 

identification of customers, inventories, or amount or source of any income, profits 

losses, or expenditures of any person, firm, partnership, corporation, or other 

organization, or other information of commercial value, the disclosure of which is 

likely to have the effect of either impairing the Commission's ability to obtain such 

information as is necessary to perform its statutory functions, or causing substantial 

harm to the competitive position of the person, firm, partnership, corporatIon, or 

other organization from which the information was obtained, unless the Commission 

is required by law to disclose such information. The term "confidential business 

information" includes "proprietary information" within the meaning of section 777(b) 

of the Tariff Act of 1930 (19 U.S.C. 1677f(b)). Nonnumerical characterizations of 

numerical confidential business information (e.g., discussion of trends) will be 

treated as confidential business information only at the request of the submitter for 

good cause shown. 

Parties should limit their redactions to the fullest extent possible, as excessive redactions that do not 

fit within the category of "CBI" will only cause delay in releasing a public version of this initial 

determination. 

205 
IN THE MATTER OF CERTAIN PROBE CARD ASSEMBLIES, Inv. No. 337-TA-621 

COMPONENTS THEREOF AND CERTAIN 

TESTED DRAM AND NAND FLASH MEMORY 

DEVICES AND PRODUCTS CONTAINING SAME 

CERTIFICATE OF SERVICE 

I, Marilyn R. Abbott, hereby certify that the attached INITIAL DETERMINATION has been 

served upon Benjamin Levi, Esq., Commission Investigative Attorney, and the following parties 

via first class mail and air mail where necessary on July 20 2009. 

COMPLAINANT FORMFACTOR, INC.: 

Stephen K. Shahida, Esq. 

MCDERMOTT WILL & EMERY, LLP 

600 13TH Street, NW, 12th Floor 

Washington, DC 20005-3096 

Marilyn . Abbott, Secretary 

U.S. International Trade Commission 

500 E Street, SW, Room 112A 

Washington, D.C. 20436 

( )Via Hand Delivery 

(~Via Overnight Mail 

( )Via First Class Mail 

( )Other: ___ _ 

RESPONDENTS PHICOM CORPORATION and PHIAM CORPORATION: 

Thomas L. Jarvis, Esq. 

FINNEGAN, HENDERSON, FARABOW 

GARRETT & DUNNER, LLP 

901 New York Avenue, NW 

. Washington, DC 20001-4413 

( )Via Hand Delivery 

(XJVia Overnight Mail 

( )Via First Class Mail 

( )Other: ___ _ 

RESPONDENTS MICRONICS JAPAN CO., LTD. and MJC ELECTRONICS CORP.: 

Jeffrey R, Whieldon, Esq. 

FISH & RICHARDSON, PC 

1425 K Street, NW, 1 ph Floor 

Washington, DC 20005 

( )Via Hand Delivery 

0\)Via Overnight Mail 

( )Via First Class Mail 

( )Other: ___ _ 
IN THE MATTER OF CERTAIN PROBE CARD ASSEMBLIES, Inv. No. 337-TA-621 

COMPONENTS THEREOF AND CERTAIN 

TESTED DRAM AND NAND FLASH MEMORY 

DEVICES AND PRODUCTS CONTAINING SAME 

Heather Hall 

LEXIS - NEXIS 

9443 Springboro Pike 

Miamisburg, OH 45342 

Kenneth Clair 

THOMSON WEST 

1100 Thirteen Street, NW 

Suite 200 

Washington, D.C. 20005 

PUBLIC MAILING LIST 

( )Via Hand Delivery 

~1()Via Overnight Mail 

( )Via First Class Mail 

( )Other: ___ _ 

( )Via Hand Delivery 

('XlVia Overnight Mail 

( )Via First Class Mail 

( )Other: ___ _