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George C. Chen (SBN 019704)
george.chen@bryancave.com
Jacob A. Maskovich (SBN 021920)
jamaskovich@bryancave.com
BRYAN CAVE LLP
Two N. Central Avenue, Suite 2200
Phoenix, AZ 85004-4406
Telephone: 602-364-7000
Facsimile: 602-364-7070
Brenton R. Babcock (Pro Hac Vice pending)
brent.babcock@knobbe.com
Marko R. Zoretic (Pro Hac Vice pending)
marko.zoretic@knobbe.com
Laura E. Hall (Pro Hac Vice pending)
laura.hall@knobbe.com
KNOBBE, MARTENS, OLSON & BEAR, LLP
2040 Main Street, 14th Floor
Irvine, CA 92614
Telephone: 949-760-0404
Facsimile: 949-760-9502
Attorneys for Plaintiffs,
LINTEC CORPORATION and
LINTEC OF AMERICA, INC.
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF ARIZONA
LINTEC CORPORATION, a Japanese
corporation; and LINTEC OF
AMERICA, INC., an Arizona
corporation,
Plaintiffs,
v.
DISCO CORPORATION, a Japanese
corporation; DISCO HI-TEC
EUROPE GMBH, a German limited
liability company; DISCO HI-TEC
AMERICA, INC., a California
Corporation; and KARL HEINZ
PRIEWASSER, an individual,
Defendants.
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Case No.:
LINTEC CORPORATIONS AND
LINTEC OF AMERICA, INC.S
COMPLAINT AGAINST DISCO
CORPORATION; DISCO HI-TEC
EUROPE GMBH; DISCO HI-TEC
AMERICA, INC.; AND KARL
HEINZ PRIEWASSER
DEMAND FOR JURY TRIAL
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Plaintiffs Lintec Corporation and Lintec of America, Inc. file this Complaint
against Defendants Disco Corporation, Disco Hi-Tec Europe GmbH, Disco Hi-Tec
America, Inc. (collectively, the Disco entities), and Karl Heinz Priewasser.
Plaintiffs allege as follows:
PARTIES
1. Lintec Corporation (Lintec) is a corporation organized and existing
under the laws of Japan, with its principal place of business at 23-23 Honcho, Itabashi-
ku, Tokyo 173-0001 Japan.
2. Lintec of America, Inc. (LOA) is a corporation organized and existing
under the laws of the State of Arizona, with its domicile in Arizona, and its principal
place of business at 4629 East Chandler Boulevard #110, Phoenix, AZ 85048.
3. Disco Corporation (Disco) is a corporation organized and existing
under the laws of Japan, with its principal place of business at 13-11 Omori-Kita 2-
chome, Ota-ku, Tokyo 143-8580 Japan.
4. Disco Hi-Tec Europe GmbH (Disco Hi-Tec) is a limited liability
company organized and existing under the laws of Germany, with its principal place
of business at Liebigstrae 8, 85551 Kirchheim bei Mnchen, Germany.
5. Disco Hi-Tec America, Inc. (Disco Hi-Tec America) is a corporation
organized and existing under the laws of the State of California, with its domicile in
California, and its principal place of business at 3270 Scott Boulevard, Santa Clara,
CA 95054.
6. Karl Heinz Priewasser (Priewasser) is an individual, and upon
information and belief, is a citizen of Austria, and is a resident of Munich, Germany.
Upon information and belief, Priewasser is an Executive Vice President of Disco Hi-
Tec.
JURISDICTION AND VENUE
7. This is an action for (1) slandering Lintec Corporations title to its U.S.
Patent No. 7,428,631 (the 631 Patent); (2) conspiring to slander title to the 631
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Patent; (3) correction of inventorship under 35 U.S.C. 256 of U.S. Patent No.
7,115,485 (the 485 Patent) (which lists Priewasser as the sole inventor and which
was purportedly assigned by the Disco entities to Priewasser); (4) conversion of
Plaintiffs interest in the 485 Patent; and (5) conspiring to convert Plaintiffs interest
in the 485 Patent.
8. This court has subject matter jurisdiction pursuant to 28 U.S.C. 1331,
1338, and 1367.
9. In addition, this Court has subject matter jurisdiction under diversity
jurisdiction pursuant to 28 U.S.C. 1332. Plaintiff LOA is a corporation incorporated
under the laws of Arizona with its principal place of business in Arizona. Defendant
Disco Hi-Tec America is a corporation incorporated under the laws of California with
its principal place of business in California. The remaining parties are foreign. The
amount in controversy exceeds $75,000, exclusive of interest and costs.
10. This Court has personal jurisdiction over Disco on the basis of, inter
alia, its contacts with this District relating to the subject matter of the action
Priewasser v. Lintec Corp. & Lintec of America, Inc., Case No. 2:13-cv-01109-SRB
(D. Ariz., filed May 31, 2013) (the Parallel Proceeding), including having filed the
Complaint in the Parallel Proceeding in this District in the name of its agent and/or
representative, Karl Priewasser (an Executive Vice President of Disco Hi-Tec). See
Ex. 1 (Complaint). Personal jurisdiction over Disco comports with the United States
Constitution and is proper because of Discos purposeful availment, through its agent
and/or representative Priewasser, of the benefits and protections of this forum by filing
the Complaint in the Parallel Proceeding. For example, Priewasser originally assigned
the 485 Patent, entitled METHOD FOR PROCESSING WAFER to Disco on
September 18, 2003. See Ex. 2 at 5. Upon information and belief, in preparation for
filing the Parallel Proceeding, Disco re-assigned that patent to Priewasser on May 28,
2013, and Disco and/or Priewasser recorded that assignment with the United States
Patent and Trademark Office (USPTO) on May 30, 2013, one day before Disco
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filed the Parallel Proceeding in the name of its agent and/or representative Priewasser
on May 31, 2013. See id. Upon information and belief, in response to Plaintiffs
motion to join Disco and Disco Hi-Tec in the Parallel Proceeding, Disco President and
COO Kazuma Sekiya sent Priewasser a letter on January 31, 2014, purportedly
disavowing Discos future interest in the purported NRT invention but not to Discos
purported trade secrets or related causes of action, such as purported trade secret
misappropriation, purported fraud, and purported unjust enrichment. See id. at 7.
Priewasser submitted Kazuma Sekiyas Letter to the Court in the Parallel Proceeding.
Disco assigned the remainder of the purported NRT Invention and purported NRT
patents at issue in the Parallel Proceeding to Priewasser via an Amended Assignment
dated March 25, 2014. See id. at 1011 (The Amended Assignment did not assign
Discos purported trade secrets or related causes of action, such as purported trade
secret misappropriation, purported fraud, and purported unjust enrichment). The
Amended Assignment was signed by Kazuma Sekiya, President and COO of Disco.
See id. Through a Second Amended Assignment dated April 22, 2014, Disco assigned
any and all such rights and interests to the Priewasser claims, including but not
limited to any rights to all income, royalties, damages and payments for the Priewasser
claims, due now, hereafter, and in the past, and the right to sue for the same. See Ex.
3 at 3. Upon information and belief, Discos Second Amended Assignment was made
in response to service of the First Amended Complaint in this action. The Second
Amended Assignment was signed by Kazuma Sekiya, President and COO of Disco.
See id. at 4. Upon information and belief, this conduct demonstrates Discos
purposeful complicity and collusion with Priewasser and direct involvement in the
Parallel Proceeding.
11. In addition, this Court has personal jurisdiction over Disco because
Disco is regularly doing business in this judicial district. For example, Discos 2012
Corporate Report states that Disco has a Branch/Affiliate Office in Phoenix,
Arizona and an Agent in Scottsdale, Arizona. Ex. 4 at 12. Attached hereto as
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Exhibit 4 is a true and correct copy of excerpts of that Report. Further, Disco
Corporations website (http://www.disco.co.jp/eg/contact/index1.html) states that
Disco has a DISCO Office[] in Tempe, Arizona for the [s]ales and maintenance of
DISCOs dicing/cutting saws, grinders, blades/wheels, and related machines, and that
Disco has an Agent Office[] in Scottsdale, Arizona for the [s]ales and maintenance
of DISCOs dicing/cutting saws, grinders, blades/wheels, and related machines. Ex.
5 at 12. Attached hereto as Exhibit 5 is a true and correct copy of that website page.
Upon information and belief, Disco employees have visited Intel Corporations
Chandler, Arizona location. Upon information and belief, Disco ships products
directly to Intel Corporations Chandler, Arizona facility. For example, a Disco
Corporation April 20, 2011 Press Release states that Disco had received Intel
Corporations Supplier Continuous Quality Improvement (SCQI) award and that [a]
celebration to honor SCQI award winners will be held in conjunction with Intels
Supplier Day in Scottsdale, Arizona. Ex. 6 at 1. Attached hereto as Exhibit 6 is a
true and correct copy of that Press Release.
12. This Court has personal jurisdiction over Disco Hi-Tec on the basis of,
inter alia, its contacts with this District relating to the subject matter of the Parallel
Proceeding, including having filed the Complaint in the Parallel Proceeding in this
District in the name of its Executive Vice President, Karl Priewasser. Personal
jurisdiction over Disco Hi-Tec comports with the United States Constitution and is
proper because of Disco Hi-Tecs purposeful availment, through its executive officer
Priewasser, of the benefits and protections of this forum by filing the Complaint in the
Parallel Proceeding. Upon information and belief, in response to Plaintiffs motion to
join Disco and Disco Hi-Tec in the Parallel Proceeding, Disco Hi-Tec President
Noboru Yoshinaga sent Priewasser a letter on January 31, 2014, disavowing Disco
Hi-Tecs future interest in the purported NRT invention, but not to Disco Hi-Tecs
trade secrets or related causes of action, such as trade secret misappropriation, fraud
and unjust enrichment. See Ex. 2 at 7. Priewasser submitted Noboru Yoshinagas
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Letter to the Court in the Parallel Proceeding. Disco Hi-Tec assigned the remainder of
the purported NRT Invention and purported NRT patents at issue in the Parallel
Proceeding to Priewasser via an Amended Assignment dated March 25, 2014. See id.
at 1011 (The Amended Assignment did not assign Disco Hi-Tecs purported trade
secrets or related causes of action, such as purported trade secret misappropriation,
purported fraud, and purported unjust enrichment). The Amended Assignment was
signed by Noboru Yoshinaga, President of Disco Hi-Tec. See id. Through a Second
Amended Assignment dated April 22, 2014, Disco Hi-Tec assigned any and all such
rights and interests to the Priewasser claims, including but not limited to any rights to
all income, royalties, damages and payments for the Priewasser claims, due now,
hereafter, and in the past, and the right to sue for the same. See Ex. 3 at 3. Upon
information and belief, Disco Hi-Tecs Second Amended Assignment was made in
response to service of the First Amended Complaint in this action. The Second
Amended Assignment was signed by Noboru Yoshinaga, President of Disco Hi-Tec.
See id. at 4. Upon information and belief, this conduct demonstrates Disco Hi-Tecs
purposeful complicity with Priewasser and direct involvement in the Parallel
Proceeding.
13. In addition, this Court has personal jurisdiction over Disco Hi-Tec
because, upon information and belief, Disco Hi-Tec is regularly doing business in this
judicial district, at least through its executive officer, Karl Priewasser.
14. This Court has personal jurisdiction over Disco Hi-Tec America on the
basis of, inter alia, its contacts with this District relating to the subject matter of the
Parallel Proceeding, including having filed the Complaint in the Parallel Proceeding in
this District in the name of its agent and/or representative, Karl Priewasser. Personal
jurisdiction over Disco Hi-Tec America comports with the United States Constitution
and is proper because of Disco Hi-Tec Americas purposeful availment, through its
agent and/or representative Priewasser, of the benefits and protections of this forum by
filing the Parallel Proceeding. Through a Second Amended Assignment dated April
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22, 2014, Disco Hi-Tec America assigned any and all such rights and interests to the
Priewasser claims, including but not limited to any rights to all income, royalties,
damages and payments for the Priewasser claims, due now, hereafter, and in the past,
and the right to sue for the same. See Ex. 3 at 3. Upon information and belief, Disco
Hi-Tec Americas Second Amended Assignment was made in response to service of
the First Amended Complaint in this action. The Second Amended Assignment was
signed by Shinji Ueno, Executive Vice President of Disco Hi-Tec America:
See id. at 4. Upon information and belief, this conduct demonstrates Disco Hi-Tec
Americas purposeful complicity with Priewasser and direct involvement in the
Parallel Proceeding.
15. This Court has personal jurisdiction over Disco Hi-Tec America because
Disco Hi-Tec America is regularly doing business in this judicial district. For
example, Disco Hi-Tec Americas website (http://www.discousa.com/eg/support/
network/index.html#tab2) states that Disco Hi-Tec America has its Southwestern
Regional Sales & Service Office in Tempe, Arizona for the [s]ales and maintenance
of DISCOs dicing/cutting saws, grinders, blades/wheels, and related machines. See
Ex. 7 at 12. Attached hereto as Exhibit 7 is a true and correct copy of that website
page. Upon information and belief, Disco Hi-Tec America employees have visited
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Intel Corporations Chandler, Arizona location. Upon information and belief, Disco
Hi-Tec America sells product directly to Intel Corporation in this District.
16. This Court has personal jurisdiction over Priewasser on the basis of,
inter alia, his contacts with this District relating to the subject matter of the Parallel
Proceeding, including having filed the Complaint in the Parallel Proceeding in this
District. See Ex. 1. Personal jurisdiction over Priewasser comports with the United
States Constitution and is proper because of Priewassers purposeful availment of the
benefits and protections of this forum by filing the Complaint in the Parallel
Proceeding.
17. Venue is proper in this district pursuant to 28 U.S.C. 1391(b) and by
virtue of Priewassers choice of forum.
GENERAL ALLEGATIONS
18. The Disco entities and Lintec have worked together since at least the
1990s, with Lintec supplying semiconductor wafer back grinding tape and lamination
equipment, and the Disco entities providing complimentary wafer back grinding
equipment. In a letter dated December 24, 2013, Disco Hi-Tecs President, Noboru
Yoshinaga, stated: [Disco Hi-Tec] has [] developed, deeply expanded and maintained
markets as a partner of Lintec for nearly 20 years . . . . Ex. 8 at 1. A redacted copy
of the letter is attached hereto as Exhibit 8. Today, both companies continue to
collaborate, referencing each others products on their respective websites. See Exs.
912. True and correct copies of certain of the companies website pages are attached
hereto as Exhibits 912.
19. Karl Heinz Priewasser is an Executive Vice President of Disco Hi-Tec,
which is a wholly-owned subsidiary of Disco and a sister company of Disco Hi-Tec
America. Upon information and belief, Priewasser has been the Disco entities point
person in certain communications with Plaintiffs for over a decade.
20. In the Parallel Proceeding presently pending before this Court, Plaintiffs
Lintec and LOA are defending against claims brought by Priewasser. In that Parallel
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Proceeding, Priewasser alleges, inter alia, that he is the inventor of the 631 Patent,
that Lintec and LOA have misappropriated purported trade secrets, that Lintec and
LOA have committed fraud, and that Lintec and LOA have been unjustly enriched by
virtue of Lintecs and LOAs non-reside tape product (NRT Product) and by virtue
of their business relationship with their customer for the NRT Product. In the Parallel
Proceeding, Priewasser contends that he invented NRT and conveyed that invention,
which he contends are his related trade secrets, to Lintec in 2003. At that time, Lintec
had a business relationship with Disco, and Priewasser often communicated
professionally with Lintec and its affiliates.
21. After owning the rights to the purported NRT Invention for nearly a
decade, Disco assigned its future rights to the purported NRT Invention to
Priewasser on May 28, 2013. See Ex. 2 at 5. Upon information and belief, no
compelling business purpose supports that litigation-driven Assignment. Upon
information and belief, the Assignment occurred 3 days before the Complaint in the
Parallel Proceeding was filed, and Priewasser had no financial interest in the purported
invention before the Assignment. Upon information and belief, no actual
consideration exchanged hands, and Priewasser did not reimburse Disco for the costs
incurred by Disco in obtaining the 5 patents allegedly related to his purported NRT
Invention.
22. Upon information and belief, Disco assigned these rights solely for the
purpose of enabling and encouraging Priewasser to file the Complaint in the Parallel
Proceeding and with knowledge that Priewassers filing would result in publication of
the Complaint. Three days after the Assignment, Priewasser filed the Complaint in
the Parallel Proceeding.
23. Upon information and belief, Priewasser is not acting in his personal
capacity in the Parallel Proceeding. He is Discos representative and agent and he is
Disco Hi-Tecs Executive Vice President. Upon information and belief, it is routine
for executives to solicit business deals with other companies in the same field. Upon
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information and belief, executives, by virtue of the office they hold, have the power to
perform such actions on behalf of a corporation since a corporation can act only
through its officers and agents. Upon information and belief, the facts alleged in
Priewassers Complaint are based entirely on Priewassers activities within the scope
of his employment by, and as a representative and agent of, the Disco entities. Upon
information and belief, Priewasser was an employee of Disco Hi-Tec (or Disco) when
he allegedly invented the purported NRT Invention in 2003. Upon information and
belief, Priewassers involvement in the purported NRT Invention was always as an
agent and representative of the Disco entities with respect to the back grinding of
silicon wafers, one of the semiconductor fabrication processes for which Disco
provides equipment and services. Upon information and belief, Priewasser was
hoping to assist one of Discos customerssemiconductor manufacturer AMDwith
a semiconductor wafer back grinding problem when he allegedly conceived of his
purported NRT Invention. Upon information and belief, Priewasser assigned a patent
application purportedly relating to NRT to Disco on September 18, 2003. See Ex. 2 at
5.
24. The 631 Patent is assigned to Lintec. Lintec is the owner of the 631
Patent. The Defendants had knowledge that Lintec is the record title holder of the
631 Patent. LOA has an interest in the 631 Patent because it is a subsidiary of Lintec
and because LOA markets, advertises, and sells Adwill semiconductor processing
tape, including the tape at issue in the Parallel Proceeding, manufactured by Lintec.
25. Upon information and belief, the Disco entities have published and/or
caused to be published slanderous words about Lintecs title to the 631 Patent. For
example, upon information and belief, the Disco entities have communicated to
individuals and companies in the semiconductor industry that Priewasser solely
conceived the NRT Invention which is allegedly covered by Lintecs 631 Patent. For
example, in Priewassers Initial Disclosures in the Parallel Proceeding, Priewasser
identifies Frank Selinger and Marcel Wieland of GLOBALFOUNDRIES, Inc., and
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Lothar Mergili of Robert Bosch GmbH as individuals with knowledge regarding
Priewassers alleged sole conception of the NRT Invention and related concepts.
Ex. 13 at 23. Upon information and belief, the Disco entities communicated to Mr.
Selinger, Mr. Wieland, and Mr. Mergili, at least through their agent and/or
representative Priewasser, the false assertion that Priewasser was the rightful owner of
Lintecs 631 Patent in order to obtain their cooperation in the Parallel Proceeding.
26. As another example, upon information and belief, in or about February
2014, a Disco employee discussed the Parallel Proceeding with an employee of a
large Lintec customer in the United States, including the nature of Priewassers
allegations in the litigation that he was the rightful owner of the 631 patent. Upon
further information and belief, this discussion prompted the employee of the Lintec
customer to conduct an Internet search to obtain further information about the nature
of Priewassers allegations in the Parallel Proceeding. Upon further information and
belief, the discussion also prompted the employee of the Lintec customer to inquire
about the nature of Priewassers allegations in the Parallel Proceeding with an
employee of Lintec in the United States.
27. As another example, upon information and belief, in or about the second
quarter of 2013, a Disco employee discussed the Parallel Proceeding with an
employee of an Israeli subsidiary of a large international/global company with
employees in the United States, including the nature of Priewassers allegations in the
litigation that he was the rightful owner of the 631 patent. Further, upon information
and belief, no later than November 2013, a Disco employee discussed the Parallel
Proceeding with an employee of another large international/global German-based
company with employees and offices in the United States. Upon information and
belief, the employee of the large international/global company understood, through his
discussion with the Disco employee, that Disco claimed to be the rightful owner of the
631 Patent.
/ / /
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28. As another example, the Disco entities published and/or caused to be
published slanderous words through the Complaint filed in the Parallel Proceeding by
the Disco entities agent and/or representative, Priewasser. See Ex. 1. Through the
inventorship claim in the Parallel Proceeding, Priewasser falsely asserts a right to the
title of Lintecs 631 Patent.
29. Upon information and belief, the Disco entities enabled and encouraged
Priewasser to file the Complaint in the Parallel Proceeding with knowledge that this
enablement and encouragement would cause the Complaint to be published. Upon
information and belief, the Disco entities and Priewasser colluded up to and including
3 days before filing the Complaint to assign patent rights to Priewasser alone, with the
understanding that as soon as Priewasser was assigned the patent rights, he would file
the Complaint against Lintec and LOA in his name alone. Upon information and
belief, Priewasser and the Disco entities used the same attorneys (Nixon Peabody) to
prepare the Assignment, then file the Assignment in the USPTO, and then file the
action in D. Az. By this collusive effort the Disco entities caused the Complaint to be
published. Upon information and belief, the allegations in the Complaint have
become widely known in the semiconductor industry.
30. As another example, the Disco entities published slanderous words in a
letter from Discos President and COO Kazuma Sekiya and Disco Hi-Tecs President
Noburu Yoshinaga, submitted to the Court in the Parallel Proceeding as Exhibit A to
Priewassers Declaration. See Ex. 2 at 7 (Disco 2014 Letter). In this letter, Mr.
Sekiya and Mr. Yoshinaga state: We understand that you are currently engaged in a
litigation against [Plaintiffs] regarding your non-residue tape invention and your
right, title, and interest in [Lintecs 631 Patent]. Id. (emphasis added). Through
this letter, the Disco entities falsely assert that Priewasser has a right to the title of
Lintecs 631 Patent.
31. Upon information and belief, the Disco entities agreed to slander the title
of Lintecs 631 Patent. For example, upon information and belief, Mr. Sekiya and
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Mr. Yoshinaga together sent Priewasser the Disco 2014 Letter stating that Priewasser
has a right to Lintecs 631 Patent, with knowledge that the letter would be submitted
to the Court in the Parallel Proceeding and thereby published. See id.
32. The Disco entities assertions that Priewasser has a right to the title of
631 Patent are falsePriewasser is not an inventor of Lintecs 631 Patent and he
does not have any rights to Lintecs 631 Patent.
33. Upon information and belief, the Disco entities published and/or caused
to be published slanderous words about Lintecs title to the 631 Patent with malice.
For example, upon information and belief, the Disco entities published and/or caused
to be published the slanderous words about Lintecs title to the 631 Patent without a
reasonable belief in the merits of Priewassers inventorship claim, which slanders
Lintecs title to the 631 Patent. As another example, upon information and belief, the
Disco entities published and/or caused the Complaint and the Disco 2014 Letter to be
published with the improper motive of pursuing a long-standing corporate dispute
through the pleading guise of an individual plaintiff (viz., Priewasser), thereby hoping
to limit the Disco entities potential exposure and liability in the Parallel Proceeding,
avoid significant involvement in the Parallel Proceeding, and improperly leverage a
monetary settlement for a frivolous inventorship claim based on the high cost of
litigation.
34. Upon information and belief, the Disco entities malice is further
evidenced by the Disco entities contrary representations concerning their interest in
and rights to Priewassers alleged NRT Invention. For example, in a letter dated
January 31, 2014, Kazuma Sekiya, Discos President and COO, and Noboru
Yoshinaga, Disco Hi-Tecs President, state that Priewassers alleged NRT Invention
was and is outside the scope of business of the Disco entities. Ex. 2 at 7. This is
contradicted, at least, by Priewassers original assignment of the 485 Patent to Disco
on September 18, 2003, which was assigned to Disco for nearly 10 years, which
Priewasser alleges covers, at least in part, his purported NRT Invention, and which
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the Disco entities and Priewasser included in the definition of Disco NRT patents.
See Ex. 2 at 5.
35. The Disco entities representation that Priewassers alleged NRT
Invention was and is outside the scope of business of the Disco entities is further
contradicted by Priewassers allegation in the Parallel Proceeding that in light of the
earlier-in-time DISCO application [for the purported NRT Invention] [compared to
Lintecs later applications] the two companies entered into discussions regarding a
patent-sharing arrangement. Ex. 1 at 21. Upon information and belief, the Disco
entities would not have entered into purported patent-sharing discussions regarding
Lintec patents that allegedly cover the purported NRT Invention if the NRT
Invention was and is outside the scope of business of the Disco entities.
36. Further, upon information and belief, and further contrary to the Disco
entities representation that Priewassers alleged NRT Invention was and is outside
the scope of business of the Disco entities, Priewasser and the Disco entities continue
to actively conduct research and development in the area of back-grinding tape,
including purported developments related to NRT. For example, U.S. Patent
Application No. 13/870,490 (filed on April 25, 2013 and assigned to Disco), lists
Priewasser as the sole inventor and discloses a purported invention related to NRT.
See Ex. 14. Attached hereto as Exhibit 14 is a true and correct copy of the publication
of U.S. Patent Application No. 13/870,490. Claim 1 states, in part:
a tape attaching step of attaching a ring adhesive tape having an annular
adhesive layer in a peripheral area thereof to the front side of said wafer
in the condition where the front side of said wafer is fully covered with
said ring adhesive tape and said annular adhesive layer is positioned so
as to correspond to said peripheral marginal area of said wafer. See id.
Figure 1 of the application is reproduced below, which discloses the ring adhesive
tape 611 is attached to the front side W1 of the Wafer W in such a manner that the
annular adhesive layer 612 adheres to only the peripheral marginal area 603:
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37. Further, U.S. Patent Application No. 13/887,518 (filed on May 6, 2013,
assigned to Disco, and listing Mirei Toida as the inventor), discloses a purported
invention related to NRT. See Ex. 15. Attached hereto as Exhibit 15 is a true and
correct copy of the publication of U.S. Patent Application No. 13/887,518. For
example, Claim 1 states, in part:
An adhesive tape attaching method for attaching an adhesive tape to a
front side of a wafer having a device area where a plurality of devices
are formed and a peripheral marginal area surrounding the device area,
the adhesive tape having an annular adhesive layer corresponding to the
peripheral marginal area, the adhesive tape attaching method
comprising. . . Id.
Also, for example, figure 2 of this application, reproduced below, discloses an
adhesive tape 20 having an annular adhesive layer 22 corresponding to the peripheral
marginal area.
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38. Further, U.S. Patent Application No. 14/029,162 (assigned to Disco and
filed on September 17, 2013, after the Complaint in the Parallel Proceeding was filed),
lists Priewasser as the sole inventor and discloses a purported invention related to
NRT. See Ex. 16. Attached hereto as Exhibit 16 is a true and correct copy of the
publication of U.S. Patent Application No. 14/029,162. Claim 2 states, in part:
a fixing step of providing said wafer on said protective member so that
said device area of said wafer faces said unevenness absorbing member
of said protective member and providing an adhesive outside said device
area to thereby fix said protective member and said wafer. Id.
Also, for example, Figure 2A of this application, reproduced below, discloses a
perspective view of a protective member 10 according to the preferred embodiment.
39. Further, U.S. Patent No. 7,498,239 (issued on March 3, 2009 and
assigned to Disco) also discloses a purported invention related to NRT. See Ex. 17.
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Attached hereto as Exhibit 17 is a true and correct copy of the U.S. Patent No.
7,498,239. Claim 1 states, in part:
bonding an annular protective member to the front surface of the Wafer
in the outer region of the front surface, wherein the annular protective
member includes a vacant center portion. Id.
Also, for example, Figure 2 of this application, reproduced below, discloses the
annual protective member 12:
40. Further, U.S. Patent Application No. 13/410,794 (filed on March 2, 2012
and assigned to Disco) also discloses a purported invention related to NRT. See Ex.
18. Attached hereto as Exhibit 18 is a true and correct copy of the publication of U.S.
Patent Application No. 13/410,794. Claim 1 states, in part:
[A]n adhesive providing step of providing an adhesive in said annular
groove of said carrier wafer so that said adhesive projects from the upper
surface of said annular projection after performing said carrier Wafer
preparing step. Id.
Also, for example, Figure 2, reproduced below, shows annular groove 63 wherein the
adhesive is provided:
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41. Further, a November 7, 2013 presentation by Disco Hi-Tec entitled
Solutions for thinning, dicing and packaging of power devices made of Si, Sapphire,
SiC and GaN discloses a purported invention related to NRT. See Ex. 19. Attached
hereto as Exhibit 19 is a true and correct copy of this presentation. The presentation
includes a reference to a patent pending method that includes the step: mount stiff
tape on ring frame 2 and cut out to ring shape (page 22):
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42. Plaintiffs have suffered special damages as a result of the Disco entities
slandering Lintecs title to the 631 Patent in an amount to be proven at trial, including
at least the expense of Plaintiffs defense against the false claim of inventorship in the
Parallel Proceeding, which is necessary to remove a cloud on Lintecs title to the 631
Patent.
43. Upon information and belief, via the Assignment dated May 28, 2013,
the Disco entities assigned Priewasser rights to the 485 Patent. The 485 Patent lists
Priewasser as the sole inventor and claims [a] method for processing a wafer . . .
wherein . . . the adhesive agent is formed of a polyimide resin.
44. Claim 1 of the 485 Patent recites:
1. A method for processing a wafer whose front surface includes
a device region formed with a plurality of devices, and an outer-
peripheral surplus region surrounding the device region, comprising at
least:
sticking a protective member to the outer-peripheral surplus
region through an adhesive agent; and
grinding a back surface of the wafer with the protective member
held on a chuck table of a grinding apparatus and, subsequently, forming
a film on the back surface of the wafer bearing the protective member
stuck to the front surface;
cutting the protective member by applying a cutting blade to the
protective member and while the protective member and the cutting
blade are being relatively rotated, so that the protective member stuck to
the outer-peripheral surplus region may remain in a ring shape; and
removing the part of the protective member covering the device
region cut in said cutting of the protective-member to expose the device
region, and electrically testing the devices.
45. Claim 4 of the 485 Patent recites:
4. A method for processing a wafer according to claim 1, wherein
the protective member is formed of one member selected from the group
consisting of glass, silicon and ceramics, while the adhesive agent is
formed of a polyimide resin.
/ / /
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46. Upon information and belief, at the time the inventions claimed by the
485 Patent were purportedly conceived, Priewasser did not have expertise in
chemistry, did not have sufficient knowledge regarding the types of chemical
compositions best suited for adhesive purposes, and did not have sufficient
independent knowledge of polyimide resins.
47. At the time the inventions claimed by the 485 Patent were purportedly
conceived, Lintec employee Osamu Yamazaki had expertise in chemistry, expertise in
the types of chemical compositions best suited for adhesive purposes, and expert
knowledge concerning polyimide resins. See, e.g., Ex. 20 (U.S. Patent No. 6,753,614;
Ex. 21 (JPA1997067558 (Japanese and English machine translation))). Further, at the
time the inventions claimed by the 485 Patent were purportedly conceived, Lintec
was developing a New Die Bonding Tape under its Adwill LP Series brand name.
See Ex. 22. This tape included a polyimide adhesive layer, as shown below.
See Ex. 22 at 2.
48. Priewasser admits in the Complaint in the Parallel Proceeding that
Lintec produced and provided sample NRT tape to Priewasser in 2003 and that
subsequently Disco applied for a patent covering the NRT Invention and naming
Priewasser as the solve inventor, resulting in the 485 Patent. See Ex. 1 at 19.
Priewasser also alleges that the 485 Patent only partially covered the purported
NRT Invention. Id.
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49. Upon information and belief, Priewasser approached Lintec for
assistance to solve AMDs semiconductor wafer back grinding problem, including to
produce NRT tape, based on both Lintecs expertise in the production of adhesive
tapes and because Priewasser lacked sufficient knowledge regarding the design,
development, and fabrication of semiconductor wafer processing tapes, including
semiconductor wafer back grinding tapes specifically, and lacked sufficient
knowledge regarding the chemical composition of such tapes including, at least, films
and adhesive agents generally. See Ex. 1 at 9, 10, 15.
50. Upon information and belief, Priewasser communicated with Plaintiffs
employees frequently during the time period he worked on the inventions claimed by
the 485 Patent. Upon information and belief, Plaintiffs employees were stationed in
the Disco Hi-Tec office during this time period. Upon information and belief,
Plaintiffs updated Disco Hi-Tec with Plaintiffs latest product at sales meetings during
this time period, including the aforementioned New Die Bonding Tape under the
Adwill LP Series brand name. Upon information and belief, Mr. Yamazaki conceived
of the idea for using an adhesive agent formed of a polyimide resin, as recited in
Claim 4 of the 485 Patent, not Priewasser. Upon information and belief, one or more
Lintec employees communicated to Priewasser Mr. Yamazakis idea for using an
adhesive agent formed of a polyimide resin or Priewasser learned of Mr. Yamazakis
idea through other means in or about June 2003, or earlier.
51. Upon information and belief, based on a review of the prosecution
history of the 485 Patent, as well as the prosecution history of the 631 Patent, no
reference in those records that is properly prior art to the 485 patent disclosed the use
of an adhesive agent formed of a polyimide resin for use with semiconductor wafer
back grinding. Notably, during prosecution of the 485 Patent, the Examiner relied on
Ishikawa et al. (2004/0023043) to reject application Claim 6 (issued Claim 4) on the
grounds that Ishikawa et al. disclosed an adhesive agent formed of polyimide resin.
But Ishikawa et al. is not properly prior art because it was filed in the U.S. on July 28,
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2003, which is, upon information and belief, after the invention of Claim 4 was
conceived. Thus, Ishikawa et al. is not properly prior art to the 485 patent because it
could have been antedated or sworn behind.
FIRST CLAIM FOR RELIEF
SLANDER OF TITLE
(Against Disco, Disco Hi-Tec, and Disco Hi-Tec America)
52. Plaintiffs reallege and incorporate herein by reference the allegations
contained in Paragraphs 1 through 51 above.
53. The acts of the Disco entities complained of herein constitute slander of
title of the 631 Patent. The Disco entities published and/or caused to be published
slanderous words concerning title to the 631 Patent, the slanderous words are false,
and the Disco entities published and/or caused to be published the slanderous words
with malice. The Disco entities are not parties in the Parallel Proceeding, and thus
they are not immune from liability for publishing and/or causing to be published
slanderous statements in the Parallel Proceeding.
54. Plaintiffs have suffered special damages as a result of the Disco entities
slandering Lintecs title to the 631 Patent in an amount to be proven at trial, including
at least the expense of Plaintiffs defense against the false claim of inventorship in the
Parallel Proceeding, which is necessary to remove a cloud on Lintecs title to the 631
Patent.
SECOND CLAIM FOR RELIEF
CONSPIRACY TO SLANDER TITLE
(Against Disco, Disco Hi-Tec, and Disco Hi-Tec America)
55. Plaintiffs reallege and incorporate herein by reference the allegations
contained in Paragraphs 1 through 54 above.
56. The acts of the Disco entities complained of herein constitute slander of
title of the 631 Patent.
/ / /
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57. Upon information and belief, the Disco entities conspired to slander title
to the 631 Patent by agreeing and working in concert with one another to slander title
to the 631 Patent, resulting in damage to Plaintiffs.
THIRD CLAIM FOR RELIEF
CORRECTION OF INVENTORSHIP
(35 U.S.C. 256; against Priewasser)
58. Plaintiffs reallege and incorporate herein by reference the allegations
contained in Paragraphs 1 through 57 above.
59. Upon information and belief, the 485 Patent is assigned to Priewasser,
and lists him as the sole inventor.
60. Upon information and belief, the idea for using a polyimide resin as an
adhesive agent, as claimed in Claim 4 of the 485 Patent, was conceived by Lintec
employee Osamu Yamazaki. Upon information and belief, one or more Lintec
employees communicated Mr. Yamazakis idea to Priewasser, or Priewasser learned
of Mr. Yamazakis idea by other means in or about June 2003, or earlier.
61. Upon information and belief, based on a review of the prosecution
history of the 485 Patent, as well as the prosecution history of the 631 Patent, no
reference in those records that is properly prior art to the 485 patent disclosed the use
of an adhesive agent formed of a polyimide resin for use with semiconductor wafer
back grinding. Thus, in the context of the foregoing and upon information and belief,
Mr. Yamazakis contribution of using a polyimide resin as an adhesive agent, as
claimed in Claim 4 of the 485 Patent, contributed to the patentability of Claim 4.
Thus, in the context of the foregoing and upon information and belief, Mr. Yamazaki
contributed in a significant manner to the conception and reduction to practice of the
invention claimed by Claim 4 of the 485 Patent, and that contribution was substantial
in quality when measured against the dimension of the full invention of Claim 4.
Upon information and belief, prior to the disclosure of Mr. Yamazakis idea for using
a polyimide resin as an adhesive agent to Priewasser, Priewasser had not considered or
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evaluated a polyimide resin as an adhesive agent.
62. Upon information and belief, Priewasser intentionally chose not to name
Mr. Yamazaki as a co-inventor, and Priewasser never intended to do so.
63. Plaintiffs seek to correct Priewassers omission of Mr. Yamazaki as a
named inventor of the 485 Patent by willful error, and respectfully requests that the
Court issue an order to this effect. In the alternative, Plaintiffs seek an order assigning
rights in the 485 Patent to Plaintiffs.
FOURTH CLAIM FOR RELIEF
CONVERSION
(Against Disco, Disco Hi-Tec, and Disco Hi-Tec America)
64. Plaintiffs reallege and incorporate herein by reference the allegations
contained in Paragraphs 1 through 63 above.
65. Upon information and belief, Plaintiffs are a rightful owner of an interest
in the 485 Patent deriving from an omitted inventor.
66. By way of each of the Assignment dated May 28, 2013, the Disco 2014
Letter, the Amended Assignment dated March 25, 2014, and the Second Amended
Assignment dated April 22, 2014, the Disco entities converted Plaintiffs rights to the
485 Patent by exercising wrongful dominion or control over Plaintiffs interest in the
485 Patent by purportedly assigning the entire right, title, and interest in the 485
Patent to Priewasser, thereby denying Plaintiffs and/or acting inconsistent with
Plaintiffs rights and interest in the 485 Patent.
67. As a result of the Disco entities conversion of Plaintiffs rights and
interest in the 485 Patent, Plaintiffs have been damaged in an amount to be proven at
trial.
FIFTH CLAIM FOR RELIEF
CONSPIRACY TO CONVERT
(Against Disco, Disco Hi-Tec, and Disco Hi-Tec America)
68. Plaintiffs reallege and incorporate herein by reference the allegations
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contained in Paragraphs 1 through 67 above.
69. The acts of the Disco entities complained of herein constitute conversion
of Plaintiffs rights and interest in the 485 Patent.
70. Upon information and belief, the Disco entities conspired to convert
Plaintiffs rights to the 485 Patent by agreeing and working in concert with one
another to convert Plaintiffs rights and interest in the 485 Patent, resulting in damage
to Plaintiffs.
DEMAND FOR JUDGMENT
WHEREFORE, Plaintiffs pray for the following judgment and relief:
A. Judgment that Disco, Disco Hi-Tec, and Disco Hi-Tec America have
slandered Lintecs title to the 631 Patent;
B. Judgment that Disco, Disco Hi-Tec, and Disco Hi-Tec America have
conspired to slander Lintecs title to the 631 Patent;
C. An award of damages arising out of Disco, Disco Hi-Tec, and Disco Hi-
Tec Americas acts of slander of title of the 631 Patent, including at least the expense
of Plaintiffs defense against the false claim of inventorship in the Parallel Proceeding,
which is necessary to remove a cloud on Lintecs title to the 631 Patent;
D. An award of exemplary and/or punitive damages arising out of Disco,
Disco Hi-Tec, and Disco Hi-Tec Americas acts of slander of title of the 631 Patent,
including but not limited to an award of Lintecs attorneys fees and costs in this
action, based on the Disco entities conduct involving, inter alia, malice, recklessness,
willfulness, and/or conscious disregard of the Plaintiffs rights;
E. An award of damages arising out of Disco, Disco Hi-Tec, and Disco Hi-
Tec America acts of conspiracy to slander title of the 631 Patent;
F. An award of exemplary and/or punitive damages arising out of Disco,
Disco Hi-Tec, and Disco Hi-Tec Americas acts of conspiracy to slander title of the
631 Patent, including but not limited to an award of Plaintiffs attorneys fees and
costs in this action, based on the Disco entities conduct involving, inter alia, malice,
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recklessness, willfulness, and/or conscious disregard of the Plaintiffs rights;
G. A permanent injunction enjoining Disco, Disco Hi-Tec, and Disco Hi-
Tec America, their officers, agents, servants, employees and those persons acting in
active concert or participation with Disco, Disco Hi-Tec, and Disco Hi-Tec America,
from engaging in further acts of slander of title in relation to the 631 Patent;
H. An order pursuant to 35 U.S.C. 256 naming Osamu Yamazaki as an
inventor of the 485 Patent or the assignment of rights in the 485 Patent (and any
related patents) to Plaintiffs;
I. Judgment that Disco, Disco Hi-Tec, and Disco Hi-Tec America have
converted Plaintiffs rights and interest in the 485 Patent;
J. Judgment that Disco, Disco Hi-Tec, and Disco Hi-Tec America have
conspired to convert Plaintiffs rights and interest in the 485 Patent;
K. An award of damages arising out of Disco, Disco Hi-Tec, and Disco Hi-
Tec Americas acts of conversion of the 485 Patent;
L. An award of exemplary and/or punitive damages arising out of Disco,
Disco Hi-Tec, and Disco Hi-Tec Americas acts of conversion of the 485 Patent,
including but not limited to an award of Plaintiffs attorneys fees and costs in this
action, based on the Disco entities conduct involving, inter alia, malice, recklessness,
willfulness, and/or conscious disregard of the Plaintiffs rights;
M. An award of damages arising out of Disco, Disco Hi-Tec, and Disco Hi-
Tec Americas acts of conspiracy to convert Plaintiffs rights and interest in the 485
Patent;
N. An award of exemplary and/or punitive damages arising out of Disco,
Disco Hi-Tec, and Disco Hi-Tec Americas acts of conspiracy to convert Plaintiffs
rights and interest in the 485 Patent, including but not limited to an award of
Plaintiffs attorneys fees and costs in this action, based on the Disco entities conduct
involving, inter alia, malice, recklessness, willfulness, and/or conscious disregard of
the Lintecs rights;
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O. For an order adjudging this to be an exceptional case within the meaning
of 35 U.S.C. 285;
P. That a judgment be entered against Defendants for Plaintiffs costs of
suit, including Plaintiffs reasonable attorneys fees, pursuant to 35 U.S.C. 285, or as
otherwise permitted by law, as well as the costs and expenses incurred by it in this
action; and
Q. For such other and further relief as the Court may deem just and proper.
JURY DEMAND
Pursuant to Federal Rule of Civil Procedure 38(b), Plaintiffs respectfully
demand a trial by jury of all issues in their Complaint that are so triable.
Respectfully submitted,
Dated: May 30, 2014 By: /s/ George C. Chen
George C. Chen
Jacob A. Maskovich
BRYAN CAVE LLP
Two N. Central Avenue, Suite 2200
Phoenix, AZ 85004-4406
Brenton R. Babcock (Pro Hac Vice pending)
Marko R. Zoretic (Pro Hac Vice pending)
Laura E. Hall (Pro Hac Vice pending)
KNOBBE, MARTENS, OLSON & BEAR, LLP
2040 Main Street, 14th Floor
Irvine, CA 92614
Attorneys for Plaintiffs,
LINTEC CORPORATION and
LINTEC OF AMERICA, INC.
18104248