Semicaps PTE Ltd v. Hamamatsu Corporation

Background

Semicaps Pte Ltd. brought a patent case against Hamamatsu Corporation, Hamamatsu Photonics K.K., and Photonics Management Corp. Semicaps alleged that the defendants infringed claims of U.S. Patent No. 7,623,982, which concerns testing electronic circuits with a laser to locate defects.

Hamamatsu previously moved under Federal Rule of Civil Procedure 12(b)(6), which allows dismissal for failure to state a legally sufficient claim. It argued that the patent claims covered subject matter that federal patent law does not protect. On August 16, 2019, the court denied that motion. Applying the Supreme Court’s two-step test for patent eligibility, the court concluded at the first step that the claims were directed to a specific technological improvement in detecting faults in electronic circuits, rather than an abstract idea.

Motion for reconsideration

Hamamatsu sought permission under the Northern District of California’s Local Rule 7-9 to file a motion asking the court to reconsider the August 16 order. Hamamatsu argued that the earlier order misunderstood how the claimed invention worked. It contended that the invention measured the same kinds of voltage or current signals measured by conventional systems, and merely collected multiple samples and processed them to produce a test result. Hamamatsu argued that the patent therefore did not detect signals that had previously been undetectable.

The court characterized Hamamatsu’s argument as involving word choice rather than a material factual error. The court acknowledged that it was not entirely accurate to describe the method as detecting “previously undetectable response signals.” The more precise description, the court said, was that the patent claims a method that improves the detection sensitivity of laser-based fault-detection systems.

The court held that this more accurate wording did not change its substantive analysis under the patent-eligibility test. It stated that the patent describes a new system for testing integrated circuits that improves the sensitivity of response-signal detection. To eliminate confusion, the court said it would issue an amended order clarifying the earlier order’s description.

Disposition

The court denied Hamamatsu’s motion for leave to file a motion for reconsideration. The opinion does not dismiss the patent case or decide infringement; it addresses only Hamamatsu’s request to seek reconsideration of the earlier refusal to dismiss.