Merchant & Gould Secures Limited Damages in Appeal for Semiconductor Patent Case

November 12, 2013

Federal Circuit overturns District Court decision in favor of Rudolph Technologies Inc.

Merchant & Gould, a leading intellectual property law firm, announced today that two products of its client, Rudolph Technologies Inc., were found to not infringe Integrated Technology Corp.’s (ITC) patent for a semiconductor tester. The ruling of the Federal Circuit overturns the District Court decision, and eliminates over $20 million in damages.  Rudolph did not appeal a finding of literal infringement as to a third product, and an award of damages related to that product was affirmed.

ITC initially filed suit in 2006 against Applied Precision LLC.  Rudolph was added to the suit after acquiring Applied Precision’s semiconductor business in 2007. The suit centered on a patent related to probe card testing system technology.

The Federal Court ruling overturns the August 2012 decision by an Arizona federal court to award ITC $39 million. The Court found that Rudolph’s no-touch testing product did not violate the ITC’s patent, which only covers probes that touch the chips. The panel wrote in their decision, “Prosecution history estoppel presumptively applies because the amendment narrowed the scope of the original claim in response to patentability rejections.”

Daniel McDonald, partner, Merchant & Gould who tried the case and argued the appeal for Rudolph, said, “We’re pleased with the decision holding that prosecution history estoppel applies, and hope it further clarifies the law that the exceptions to prosecution history estoppel are very narrow.” 

The Federal Circuit delivered their ruling on November 4.

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