from the United States District Court for the District of
Colorado in No. 1:17-cv-03135-MEH, Magistrate Judge Michael
Brian Springer, Polsinelli LLP, San Francisco, CA, argued for
plaintiff-appellant. Also represented by Miya Yusa; Michael
Dulin, Denver, CO; Hannah Theresa Yang, Kilpatrick Townsend
& Stockton LLP, San Francisco, CA.
Scott Hemingway, Hemingway & Hansen, LLP, Dallas, TX,
argued for defendant-appellee. Also represented by Thomas S.
Rice, Senter Goldfarb & Rice LLC, Denver, CO.
Prost, Chief Judge, Newman and Bryson, Circuit Judges.
BRYSON, CIRCUIT JUDGE.
Anza Technology, Inc., ("Anza") appeals from a
decision of the United States District Court for the District
of Colorado granting a motion by defendant Mush-kin, Inc.,
dba Enhanced Network Systems, Inc., ("Mush-kin") to
dismiss Anza's second amended complaint. The dismissal
followed from the court's finding that Anza's claim
of damages for patent infringement was barred by the six-year
statute of limitations in the Patent Act, 35 U.S.C. §
286. That ruling was based in turn on the court's
determination that the claims in Anza's second amended
complaint did not relate back to the date of Anza's
original complaint and were therefore time-barred. Because
the district court's application of the relation back
doctrine was overly restrictive, we reverse in part, vacate
in part, and remand for further proceedings.
filed this action on March 28, 2017, in the United States
District Court for the Eastern District of California,
alleging that Mushkin had infringed claims 1, 14, and 16 of
Anza's U.S. Patent No. 7, 124, 927 ("the '927
patent"), in violation of 35 U.S.C. § 271(a) and
(g). The '927 patent, entitled "Flip Chip Bonding
Tool and Ball Placement Capillary," relates to
"dissipative and insulative ceramic flip chip bonding
tools and capillaries for ball placement for bonding
electrical connections." '927 patent, col. 1, ll.
specification of the '927 patent discusses two techniques
for bonding electronic components, such as semiconductor
integrated circuit ("IC") chips, to substrates,
circuit boards, or carriers. The two techniques are referred
to as "wire bonding" and "flip chip
bonding." '927 patent, col. 1, ll. 60-65. In wire
bonding, the chip is oriented face-up, so that there is no
direct electrical connection between the leads of the chip
and the bond pads on the substrate. A wire is then used to
connect the chip to the substrate. Id. at col. 1,
ll. 43-61. In flip chip bonding, the chip is oriented
face-down, which allows for a direct electrical connection
between the chip and the substrate. The direct electrical
connection is facilitated by conductive solder balls that are
deposited on the chip; the solder balls provide the
conductive path from chip to substrate. Id. at col.
1, ll. 61-65; col. 2, ll. 9-10; Fig. 3.
either technique, the bonding process requires the use of
bonding tools. The '927 patent explains that the problem
with prior art bonding tools was that "an electrostatic
discharge (ESD) from the bonding tool or transient currents
from the machine [that uses the tool] can damage the very
circuit the tool is bonding." Id. at col. 2,
ll. 47-49. According to the specification, "[c]ertain
prior art devices have a one-or-more volt emission when the
tip makes bonding contact. This could present a problem, as a
one-volt static discharge can . . . cause the integrated
circuit to fail." Id. at col. 2, ll. 53-59.
avoid damage to the electronic devices from such an
electrostatic discharge, the '927 patent recites a
bonding tool tip for flip chip bonding that "conducts
electricity at a rate sufficient to prevent charge buildup
but not at so high a rate as to overload the device being
bonded." Id. at col. 2, line 67, through col.
3, line 2.
1, 14, and 16 of the '927 patent, all independent claims,
recite a system, a component, and a method, respectively.
Claim 1 provides as follows:
1. A flip chip bonding tool and ball placement capillary
system for connecting leads on integrated circuit bonding
pads, comprising a dissipative material having a resistance
low enough to prevent a discharge of a charge to a device
being bonded and high enough to stop current flow large
enough to damage the device being bonded.
ESD-preventive device comprising:
a flip chip bonding tool and ball placement capillary,
comprising a dissipative material and configured to come in
contact with a device being bonded, wherein a current
produced by static charge generated during bonding is allowed
to flow; wherein the dissipative material has a resistance
low enough to prevent a discharge of charge to the device
being bonded and high enough to stop all current flow to the
device being bonded.
16 recites "[a] method of utilizing a flip chip bonding
tool . . . in a microelectronic assembly." The claimed
method recites the use of a bonding machine capable of being
equipped with a flip chip bonding tool, which has a tip
comprising a dissipative material having the same properties
as recited in claims 1 and 14.
September 6, 2017, Anza filed its first amended complaint,
which joined Avant Technology, Inc., as a
co-de-fendant. Thereafter, Mushkin filed a motion to
dismiss or to sever the claims against Mushkin from those
against Avant, and either to stay the case against Mushkin or
to transfer the case to the District of Colorado. The
California district court severed Anza's claims against
Mushkin and transferred the case against Mushkin to the
District of Colorado.
the transfer, Anza served infringement contentions against
Mushkin pursuant to the District of Colorado's Local
Patent Rules 4 and 5. The infringement contentions accused
Mushkin of directly infringing claims 1 and 14, but did not
refer to claim 16. Noting in its infringement contentions
that discovery had not commenced and a formal scheduling
order had not been entered, Anza stated that it reserved
"the right to supplement these contentions as
appropriate based upon further discovery and the schedule of
this case, including but not limited to assertions related to
new claims and/or patents as may be allowed through amendment
of the operative pleading."
parties then engaged in mediation. In the course of the
mediation, Mushkin provided Anza with a declaration of George
Stathakis, Mushkin's president, regarding the technology
used by Mushkin. The Stathakis declaration stated, inter
alia, that Mushkin "did not bond IC chips to boards
or modules." Instead, according to the declaration,
"[t]he memory products purchased by Mushkin, Inc. from
suppliers were IC memory chips that were already . . . bonded
on printed circuit boards or memory module boards."
Additionally, the declaration stated that Mushkin's
supplier "does not place or position solder ball
connectors on the IC chip for use in bonding the IC chip to a
printed circuit board or memory module board."
district court held a hearing to address Mushkin's motion
to dismiss. In light of information in the Stathakis
declaration, Anza "agreed that its present claims [were]
no longer viable." Based on that concession, the
district court granted Mushkin's motion. However, the
court ruled that Anza would be permitted to file an amended
complaint and that Mushkin would be allowed to file a motion
to dismiss that complaint.
filed its second amended complaint on June 8, 2018. In the
second amended complaint, Anza removed the infringement
allegations regarding the '927 patent and alleged
infringement of two new patents: U.S. Patent Nos. 6, 354, 479
("the '479 patent") and 6, 651, 864 ("the
'864 patent"). The new complaint alleged that
Mushkin had infringed those patents under 35 U.S.C. §
271(g). Anza also omitted ten of the sixteen products that
had been accused in the original complaint and added two new
products that had not previously been accused.
'479 and '864 patents, entitled "Dissipative
Ceramic Bonding Tip" and "Dissipative Ceramic
Bonding Tool Tip," respectively, claim priority to the
same U.S. provisional application as the '927 patent.
Like the '927 patent, the '479 and '864 patents
recite the use of "dissipative ceramic bonding tips for
bonding electrical connections." '479 patent, col.
1, ll. 12-13; '864 patent, col. 1, ll. 20-21. The patents
offer the same solution to the problem of electrostatic
discharge damage during the bonding process- providing a
bonding tool tip that conducts electricity "at a rate
sufficient to prevent charge buildup, but not at so high a
rate as to overload the device being bonded." '479
patent, col. 2, ll. 4-6; '864 patent, col. 2, ll. 11-13.
The '479 and '864 patents differ from the '927
patent in that they are directed to bonding tool tips for
wire bonding, rather than for flip chip bonding. In addition,
in contrast to the system and component ...