The opinion of the court was delivered by: Honorable Paul A. Crotty, United States District Judge:
ELECTRONICALLY FILED DOC #:
The parties in this action have been involved in patent litigation for over ten years. This action concerns U.S. Patent No. 7,653,237 (the "'237 Patent"). Plaintiffs/Counterclaim defendants ICOS Vision Systems Corp. N.V. and ICOS Visions Systems Inc. (collectively, "ICOS") filed this action on January 26, 2010 seeking a declaratory judgment of non-infringement and invalidity of the '237 Patent. On July 14, 2010, Defendant/Counterclaimant Scanner Technologies Corporation filed an answer and counterclaim against ICOS for infringement of the '237 Patent. The Court issued a bifurcation order, amended on March 4, 2011, which bifurcated the issues of liability and damages and allowed ICOS to file a single summary judgment motion with respect to two issues: (1) whether ICOS is entitled to enjoy an implied license via legal estoppel to the '237 Patent, and (2) whether the '237 Patent is unenforceable due to "prosecution laches." (Docket No. 30.) ICOS now moves for summary judgment on their affirmative defenses of implied license by legal estoppel and prosecution laches. For the reasons discussed below, ICOS's motion for summary judgment with respect to an implied license to the '237 Patent by way of legal estoppel is granted; and ICOS's motion concerning prosecution laches in connection with the '237 Patent is denied.
The patents at issue in this case concern the technology used to inspect electronics packaging. In order to protect their delicate electronics, microchips require specialized packaging. (Declaration of Larry Thompson in Support of ICOS's Motion for Summary Judgment, ("Thompson Decl."), ¶ 25.) This packaging serves four functions: (1) connect the microchip to a power source; (2) provide a means for distributing electronic signals on and off the microchip; (3) remove heat generated by the circuit; and (4) support and protect the chip from the environment. (Id. ¶¶ 25-26.)
"Ball grid arrays" provide a method of securing the electrical connections between the microchip and circuit board. The ball grid array consists of a series of solder balls arranged in a grid. These grid arrays must be precisely aligned; small deviations in the height or positioning of a single ball can render the entire ball grid array defective. (Id. ¶ 25.) Each ball grid array is inspected during the manufacturing process to ensure that these specifications are met. (Id.)
Scanner is the record owner of the '237 Patent, entitled "Method of Manufacturing Ball Array Devices Using an Inspection Apparatus Having One or More Cameras And Ball Array Devices Produced According to the Method," issued January 26, 2010. (Pl's 56.1 ¶ 1.) The patent relates to a method of calibrating and inspecting ball grid arrays.
The machine covered by the '237 Patent inspects ball grid arrays by using two cameras, optics, and a computer processor. The machine is first calibrated by taking bottom and side view images of a "calibration reticle," which contains a known pattern (referred to in the '237 Patent as a "planar precision pattern"). (Id. ¶ 34.) The machine then captures multiple images of each ball grid array, and a computer calculates the coordinates of each ball on the grid. (Id. ¶¶ 35-37.) Ball grid arrays that pass certain manufacturing specifications are cleared; those that fail are either discarded or repaired. (Id. ¶ 38.)
The '237 Patent is the last in a family of thirteen patents issued to Scanner concerning ball grid array inspection devices. Scanner filed the first patent application in this family two decades ago, Application No. 07/703,285, on May 20, 1991.*fn2 (Pl's 56.1 ¶ 21.) ICOS argues that after Scanner filed the third of these patent applications, Application No. 09/908,243, in January of 1998, Scanner began to engage in "gamesmanship" with the Patent and Trademark Office (the "PTO") which unreasonably delayed prosecution of the '237 Patent. (Pl's Mem. at 10.)
1. Prosecution of the '237 Patent Family
ICOS argues that beginning in May 1999 and extending to April 2007, Scanner filed with the PTO a series of divisional, continuation, and continuation-in-part applications from the 09/908,243 application.*fn3 (The final application in this chain, Application No. 11/735,982, issued as the '237 Patent in January, 2010.) ICOS contends that Scanner used these subsequent applications, and unreasonably delayed prosecution of the '237 Patent in order to add new patent claims to the family. According to ICOS, these claims covered technology that ICOS and its customers were developing and using during the twelve years that Scanner's '237 Patent application was in prosecution before the PTO. (Pl's Mem. at 27.) For example, David P. Mork, one of the two named inventors on the '237 Patent, testified at his deposition that the three patent applications Scanner filed between May and July 1999 were drafted to cover inspection technology that was either in use or in development by ICOS.
Q. Okay. Was there anyone else in the industry that . . . you were monitoring to try and draft claims to cover during this 1999-2000 time frame?
A. To our -- to my knowledge, the only products on the market that were similar were the UltraVim Plus and [ICOS's] CyberSTEREO. And we were not drafting claims ...