AMKOR TECHNOLOGY, INC. V. INTERNATIONAL TRADE COMMISSION
Before NEWMAN, PLAGER, AND LINN, with LINN giving the opinion for the court. This case is an appeal from the ITC.
Summary: Reversing the ITC’s determination of invalidity under 35 U.S.C. § 102(g)(2) and remanding for further proceedings consistent with the opinion.
Complainant-Appellant, Amkor Technology, Inc. (“Amkor”) initiated an investigation at the International Trade Commission (“ITC”) alleging that Carsem (M) Sdn Bhd, Carsem Semiconductor Sdn Bhd, and Carsem, Inc. (collectively, “Carsem”), violated section 337 of the Tariff Act of 1930 based on the importation, sale for importation, and sale within the United States after importation of encapsulated integrated circuits that allegedly infringe claims of Amkor’s U.S. Patent No. 6,433,277 (the “‘277 Patent”). Carsem asserted that the ‘277 Patent was anticipated by U.S. Patent 6,229,200 (the “‘200 Patent”) to third party ASAT Limited (“ASAT”). The date of conception for the ‘277 Patent and for the ‘200 Patent could not be clearly established. The Administrative Law Judge (“ALJ”) based on available evidence determined that the ASAT invention was conceived in a foreign country sometime in either April or May. Further, the ALJ determined that the technology of the ‘277 Patent was conceived either sometime between May and August or December 10 of the same year. Due to this overlapping range, the ALJ concluded that the ASAT invention was not prior art because Carsem had not shown by clear and convincing evidence that the ASAT invention was conceived prior to the date of invention of the ‘277 Patent. However, on review the Commission reversed holding that, under Oka v. Youssefyeh, 849 F.2d 581 (Fed. Cir. 1998), the conception date of the ‘227 Patent must be the last date in the range of potential conception dates, which fell after the ASAT invention conception date. This decision resulted in ‘200 Patent being prior art to the ‘227 Patent.
The Federal Circuit held that the ITC’s application of Oka was legal error. Oka related to an interference and the Federal Circuit stated that the rule from Oka does not apply to patent owners in validity disputes. In an interference, the entitlement of priority is determined based on a preponderance of the evidence standard. In contrast, the burden to overcome the presumption of validity of a patent in an infringement action requires a showing of clear and convincing evidence. To invalidate Amkor’s ‘277 Patent, Carsem bore the burden of persuasion to establish by clear and convincing evidence that the ASAT invention was conceived in the US before the invention of the ‘277 Patent. As Carsem could only show a range of dates of possible United States disclosure, which overlapped Amkor’s possible conception date, Carsem could only show that the ASAT inventor might have conceived first. Moreover, even in the preponderance of the evidence standard used in Oka, a junior party cannot prove prior invention via a range of dates that overlap with a senior party’s conception date.
In addition to its discussion concerning the Oka rule, the Federal Circuit addressed when an invention conceived in a foreign country can receive a United States conception date for prior art purposes. The court held that under pre-AIPA version of 102(g) and the court’s decision in Scott v. Koyama, 281 F.3d 1243 (Fed. Cir. 2001), an invention of foreign origin can rely on the date that the invention was disclosed in the United States as a date of conception for priority purposes. This disclosure can include the date that the invention is fully disclosed to an agent in the United States for the purposes of obtaining a patent. Further, the Federal Circuit stated that, although precedent establishes that writings can satisfy the full domestic disclosure requirement, writings are not a per se requirement, and the court pointed out that it is commonly understood that communication may occur orally or in writing. The Federal Circuit also stated that the requirement for disclosure is that the “content of the domestic disclosure must be specific enough to encompass the ‘complete and operative’ invention” and that an inventor’s oral testimony in this respect is a question of proof. Amkor Tech. Inc. v. ITC., No. 2010-1550, at 13 (Fed. Cir. Aug. 22, 2012).
As Carsem failed to prove prior invention in the United States by clear and convincing evidence, the Federal Circuit reversed the ITC’s finding that the ‘277 Patent is invalid under 102(g)(2). The Federal Circuit then remanded for further proceedings consistent with this opinion.
Case summary prepared by Irfan Lateef and Damien Howard
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