Amkor v. ITC

By Jason Rantanen

Amkor Technology, Inc. v. International Trade Commission (Fed. Cir. 2012) Download 10-1550
Panel: Newman, Plager, and Linn (author)

Although soon to be eliminated as prior art for new patents, 35 U.S.C. § 102(g) will continue to be a potentially important category of prior art for the near future as pre-AIA patents will remain the prevailing type of patent in infringement suits for at least the next decade.  In Amkor, the Federal Circuit answered an important question about 102(g): whether an oral disclosure of an invention to the United States is sufficient to constitute prior art.  It answered in the affirmative, with a key caveat.

The version of 102(g) involved in this appeal states that:

A person shall be entitled to a patent unless:

(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes . . . that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. . . .

35 U.S.C. § 102(g) (2006) (emphasis added). The appeal turned on the interpretation of "made in this country": specifically, whether it encompassed an oral disclosure to a person in the United States of an invention conceived of abroad.

In concluding that an oral communication was sufficient, the CAFC issued several notable holdings.  First, it extended the holding in Scott v. Koyama, 281 F.3d 1243 (Fed. Cir. 2001), that interpreted a previous version of 102(g) to allow the inventor of an invention of foreign origin to "rely on the date that the invention was disclosed in the United States as a conception date for priority purposes" to apply to the current version of 102(g)(2).

Second, the CAFC held that an oral communication could be a sufficient disclosure for 102(g) purposes.  "While this court’s limited precedent on this issue establishes that writings can satisfy the full domestic disclosure requirement, the cases do not establish any per se requirement that such disclosure must be in writing."  Slip Op. at 12.  However, the "content of the domestic disclosure must be specific enough to encompass the "complete and operative invention…and an inventor's oral testimony to this extent is a question of proof."  Slip Op. at 13 (emphasis in original). Thus, corroboration of the testimony is necessary. 

The CAFC did not reach the issue of corroboration of the specificity of the disclosure, instead rejecting the accused infringer's argument based on the burden of persuasion and evidence necessary to invalidate an issued patent.  The accused infringer could only show a range of dates of possible U.S. disclosure that overlapped with the patent holder's possible conception dates.  "Such a showing, at best, establishes that the ASAT inventor might have conceived of the invention first. Evidence establishing that there might have been a prior conception is not sufficient to meet the clear and convincing burden needed to invalidate a patent."  Slip Op. at 16 (emphasis in original).

Obviousness: The court also affirmed the Commission's claim constructions and rejected anticipation and obviousness arguments based on another prior art reference.  In reaching this conclusion, the court pointed to a lack of any evidence of a motivation to combine or reason to modify the prior art:

Because the fused lead attached to the die pad in JP-456 prevents the lip from extending “fully around the circumference of a die pad” or “fully around the die pad” as required by the claims, Carsem was required to present evidence that one of ordinary skill in the art at the time of the invention would have been motivated or found reason to remove the fused lead from the JP-456 reference, or that common sense would have led one of skill in the art to remove the fused lead based on a known problem, design need, or market pressure. KSR Int’l v. Teleflex, 550 U.S. 398, 418-20 (2007).

Slip Op. at 21.  While this language could be interpreted as limiting "common sense" to the three specific scenarios identified in KSR v. Teleflex, a better interpretation in my view is that Carsem simply failed to provide any explanation as to why a person of ordinary skill in the art would have modified the prior art, including the three specified examples.  Anything more rigid would be inconsistent with the flexible approach to obviousness mandated by KSR.

10 thoughts on “Amkor v. ITC

  1. 6, If the claim is "broader" than the specification and literally cannot be built without adding something from the specification….  Well I do see your point.

  2. “why is it indefinite?”

    Ex parte miyazaki in the PTO and outside the PTO it is arguable that it would make the claim unintelligible to one of skill in the art since it is literally nonsensical from the get go. The two experts import some limitations from the spec to make it jolly ok, but that is impermissible, even if one of ordinary skill would like to do that in his imaginary interpretation.

    What I would have concerned myself with more than indefinite would have been 112 1st, lack of enablement, you can’t make the item claimed as literally stated. Non-infringement necessarily follows. But, the amateurs running this litigation seem oblivious to what the real name of the issue is where you literally cannot make the item, choosing instead to call this indefiniteness instead of enablement.

    If you think this is a case of construing the term consistently with the spec you need to read the spec. Then read the claim, then note the words they left out of the claim IN AN EFFORT TO MAKE THE CLAIM BROADER. Which is routine and gets claims routinely rejected for this reason.

  3. 6, we mor ons make mistakes in drafting claims. If a claim term is intelligible to one of ordinary skill in the art, and is construable, why is it indefinite?

    I think this is an example of construing the term to be consistent with the specification.

  4. “Even if Carsem had preserved the argument, the Commission properly construed the claims, as both par-ties’ experts agreed that one of skill in the art would read the claim terms to mean that the lip “goes fully around the die pad except at those regions where the tie bars contact.””

    That is the kind of nonsense that goes on when the PTO fails to address 112 issues when the claims are before it.

  5. “On appeal, Carsem argues for the first time that “fully around” means “that the lip is present on every exposed side edge of the die pad where a connector of some type is not present.” Intervenor’s Br. 53. Before the ALJ, Carsem argued that the ’277 Patent claim limitations requiring a lip to run “fully around a circumference of the die pad” (claims 2-4) and “fully around the die pad” (claims 21-23) were indefinite under 35 U.S.C. § 112. First ID at 49. [JA22101] Carsem argued below that “if these words are read literally, ‘fully around a circumfer-ence’ . . . incorporates those portions of the die pad where it is connected to the lead frame by a tie bar, fused lead, or other structure, which is not physically possible and therefore renders the claim indefinite.””

    Actually, that doesn’t (just?) render the claim indefinite, it renders it impossible to make. Which is what jumped out at me the very first time I read claim 2. And to be clear, this isn’t some sort of pie-in-the-sky argument against the claim I would make, all it is doing is pointing out that the mo ron that drafted the claim is, indeed, a mo ron. Keeping in mind, as courts like to do, that drafters are at times mo rons and deserve some help, I cannot say whether the claim would be valid or invalid as a result of this problem.

    Meh, this is what happens when amateurs dip their toes in the useful arts.

  6. Start with and enabling disclosure of the invention: a product in public use or a patent application filed in the PTO. We learn that the effective date of such a disclosure is not its public use date, or its filing date, but the date of conception, and without any due diligence requirement at all, provided that the conception documents describe a complete and operative invention, e.g., such that one of ordinary skill can then and there make and use the invention. (Sounds in Pfaff v. Wells).

    I don’t see anything fundamentally wrong here.

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