Zond v. Fujitsu Semiconductor et. al

8/12/2019 Zond v. Fujitsu Semiconductor et. al.

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UNITED STATES DISTRICT COURT

DISTRICT OF MASSACHUSETTS

ZOND, LLC,

Plaintiff,

v.

FUJITSU SEMICONDUCTOR LIMITED,

FUJITSU SEMICONDUCTOR AMERICA,INC., TAIWAN SEMICONDUCTOR

MANUFACTURING COMPANY,

LIMITED, TSMC NORTH AMERICACORP.,

Defendants.

CIVIL ACTION NO. _____________

JURY TRIAL DEMANDED

COMPLAINT FOR PATENT INFRINGEMENT

Plaintiff Zond, LLC (Zond) files this Complaint for Patent Infringement

(Complaint) against Defendants Fujitsu Semiconductor Limited and Fujitsu Semiconductor

America, Inc. (collectively, Fujitsu), and Taiwan Semiconductor Manufacturing Company,

Limited and TSMC North America Corp. (collectively, TSMC), wherein, pursuant to 35

U.S.C. 271 and 281, Zond seeks a judgment of infringement by Fujitsu and TSMC of U.S.

Patent Nos. 6,806,651 (the 651 patent), 6,896,773 (the 773 patent), 6,896,775 (the 775

patent), 6,903,511 (the 511 patent), 7,095,179 (the 179 patent), and 7,446,479 (the

479 patent) (collectively, Patents-in-Suit), and damages resulting therefrom pursuant to

35 U.S.C. 284, as well as injunction of the infringing activity pursuant to 35 U.S.C. 283,

and such other relief as the Court deems just and proper, and in support thereof alleges as

follows:


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The Parties

1. Zond is a Delaware limited liability company with a principal place of businessat 137A High Street Mansfield, MA 02048. Zond wholly owns Zpulser, LLC (Zpulser),

also based in Mansfield, MA. Zpulser commercializes Zonds patented technology by

manufacturing and selling unique high-power plasma generators.

2. On information and belief, Defendant Fujitsu Semiconductor Limited (FSL)is a Japanese corporation with its principal place of business at Nomura Shin-Yokohama

Bldg., 2-10-23 Shin-Yokohama, Kohoku-Ku Yokohama, Kanagawa, Japan. On information

and belief, FSL conducts business in the United States through its subsidiaries, including

through Defendant Fujitsu Semiconductor America, Inc.

3. On information and belief, Defendant Fujitsu Semiconductor America, Inc.(FSA), is a California corporation with its principal place of business at 1250 E. Arques

Ave, M/S 333, Sunnyvale, CA 94085-5401. On information and belief, FSA is a wholly

owned subsidiary of FSL and is controlled by and/or acts as an agent of FSL.

4. On information and belief, Defendant Taiwan Semiconductor ManufacturingCompany, Ltd. (TSMC Ltd.) is a company organized under the laws of Taiwan that

maintains its principal place of business at No. 8, Li-Hsin Road 6, Hsinchu Science Park,

Hsinchu, Taiwan 30077. On information and belief, TSMC Ltd. conducts business in the

United States through its subsidiaries, including through Defendant TSMC North America,

Corp.

5. On information and belief, Defendant TSMC North America, Corp. (TSMC-NA) is a California corporation with its principal place of business at 2585 Junction Avenue,

San Jose, CA 95134. On information and belief, TSMC-NA is wholly owned by TSMC Ltd.,


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and serves as TSMC Ltd.s exclusive sales agent in North and South America.

Jurisdiction and Venue

6. This Court has subject matter jurisdiction over this action pursuant to 28U.S.C. 1331 and 1338(a) because the action concerns infringement of a United States

patent.

7. This Court has personal jurisdiction over each of Defendants at least by virtueof each of Defendants having conducted business in this District and having committed one or

more acts of infringement in this District.

8.

Venue is proper under 28 U.S.C. 1391 and 1400.

9. This action is related to Civil Action No. 1:13-cv-11634-WGY (the 11634Action), filed in this District in July 2013. In that related action, Fujitsu admitted that this

Court has subject matter jurisdiction over that action. In the 11634 Action, Fujitsu did not

contest personal jurisdiction or venue. In the 11634 Action, TSMC did not contest personal

jurisdiction or venue. Given that this action is related to the 11634 Action, each of

Defendants must be bound in this action to its position regarding jurisdiction and venue in the

11634 Action.

The Six (6) Patents-in-Suit

10. Zond is the owner of the 651 Patent entitled High-Density Plasma Source,which the United States Patent & Trademark Office lawfully and duly issued on October 19,

2004.

11. Zond is the owner of the 773 Patent entitled High Deposition RateSputtering, which the United States Patent & Trademark Office lawfully and duly issued on

May 24, 2005.


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12. Zond is the owner of the 775 Patent entitled High-Power PulsedMagnetically Enhanced Plasma Processing, which the United States Patent & Trademark

Office lawfully and duly issued on May 24, 2005.

13. Zond is the owner of the 511 Patent entitled Generation of Uniformly-Distributed Plasma, which the United States Patent & Trademark Office lawfully and duly

issued on June 7, 2005.

14. Zond is the owner of the 179 Patent entitled Methods and Apparatus forGenerating Strongly-Ionized Plasmas with Ionizational Instabilities, which the United States

Patent & Trademark Office lawfully and duly issued on August 22, 2006.

15. Zond is the owner of the 479 Patent entitled High-Density Plasma Source,which the United States Patent & Trademark Office lawfully and duly issued on November 4,

2008.

FACTUAL BACKGROUND

1. Zonds Patented Technology

16. Founded in 2002, Zond is a technology development company based outside ofBoston in Mansfield, Massachusetts. With its President and Co-Founder Dr. Roman

Chistyakov at the helm, Zond has been developing a unique plasma discharge technology,

which is protected by over 30 patents and patent applications pending throughout the world,

including 18 patents that have issued in the United States. Dr. Chistyakov is the named

inventor on all six (6) of Zonds Patents-in-Suit. These patents are generally directed to the

generation, use and/or applications of a unique plasma discharge technology that has wide-

ranging applicability in various industries, including semiconductor chip manufacturing, as

described further below.


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17. In 2005, Zpulser was created as the marketing and sales arm of Zond tocommercialize Zonds patented technology. Zpulser offers a revolutionary product line of

plasma generators that are commercially practicable and allow for use of the technology in an

industrial manufacturing environment.

18. Zonds plasma technology has application in various industries ranging fromconsumer products such as razor blades to electronics such as semiconductor chips and flat

panel displays, which provides numerous competitive advantages over alternative and older

technology. For example, in the semiconductor chip industry, Zonds patented technology

allows certain important types of plasmas to be generated in an industrial manufacturing

environment. Such plasmas can be used for certain critical manufacturing steps for

semiconductor chips made using the latest generation of 32 nm and smaller semiconductor

process technology. These applications range from forming the critical copper-based

interconnects to the unique transistor structures necessary in these new generations of chips.

2. Fujitsus Infringing Products

19. Fujitsu is a designer and developer of semiconductor products and solutions forconsumer, communications, automotive and industrial products including integrated circuits

made from Complimentary Metal-Oxide Semiconductor devices (CMOS devices), analog

to digital converters (ADC), application specific integrated circuit (ASIC) solutions

graphics display controllers, embedded MCUs and controllers, video and image processors,

analog devices, wireless ICs, memory solutions as well as numerous other electronic devices.

20. Fujitsus devices are constructed using semiconductor circuit technology. Thistechnology, along with related advances in semiconductor processing, allows Fujitsu to

manufacture devices and transistors at smaller and smaller distances between relevant


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components resulting in higher density and more complex circuits.

21. Fujitsus integrated circuit manufacturing continues to use techniques that usesmaller and smaller features for various product cycles. The size of the smallest parts of a

transistor is generally referred to by Fujitsu as a node. Upon information and belief,

Fujitsus smallest manufacturing nodes being currently marketed are 28 nanometers (nm).

A move to devices using smaller manufacturing nodes is expected in the near future.

22. In order to manufacture circuit devices at the 28 nm and smaller nodes(Accused Nodes), unique manufacturing processes had to be developed by or for Fujitsu

that, on information and belief, employ Zonds patented technology for generating and using

strongly or super-ionized plasmas in a manufacturing environment. On information and

belief, Fujitsus infringing devices include those made using process steps that employ

strongly or super-ionized plasmas including, but not limited to, processes for depositing

interconnects and contacts, and metal for metal gate transistors, as well as other methods of

generating and using strongly or super-ionized plasmas to form 28 nm class and smaller

devices. Fujitsus infringing devices include Fujitsus 28 nm and smaller node devices

including, but not limited to, integrated circuits made from CMOS devices, ASIC devices as

well as other semiconductor devices at the Accused Nodes (collectively, the Fujitsu

Infringing Products). The Fujitsu Infringing Products include, but are not limited to, the

following types of offerings: its 8-bit, 28nm CMOS ADCs (based on Fujitsus CHAIS

architecture)and 28 nm ASIC devices. Discovery is expected to uncover the full extent of

Fujitsus unlawful use of Zonds patented plasma technology beyond these accused devices

already identified through public information.

23. Upon information and belief, Fujitsu has had knowledge of Zonds patented


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technology, including the Patents-in-Suit, prior to the initiation of this action. Specifically,

Fujitsu has had knowledge of the Patents-in-Suit since at least July 2013 in connection with

the prior litigation between the parties in the related 11634 Action and, at the very least, since

May 21, 2014, when a list of Zonds issued U.S. patents was provided to Fujitsus counsel in

connection with the related 11634 Action. Likewise, upon information and belief, Fujitsu has

known or should have known that TSMC employs Zonds patented technology in the

manufacture of all TSMC wafers that, when separated into individual infringing chips, are

incorporated into any and all Fujitsu Infringing Products.

3. TSMCs Infringing Products and Processes

24. TSMC is a dedicated contract manufacturer of semiconductor products andsolutions for computer, communications, and consumer electronic products and offers wafer

fabrication processes including, but not limited to: embedded non-volatile memory process;

embedded dynamic random access memory process; mixed signal / radio frequency process;

high voltage process; complementary metal-oxide semiconductor image sensor process; color

filter process, micro electro-mechanical system process and silicon germanium process.

25. TSMCs wafer fabrication continues to use techniques that use smaller andsmaller features for various product cycles. The size of the smallest parts of a transistor is

generally referred to by TSMC as a node. Upon information and belief, TSMCs smallest

manufacturing nodes currently marketed are 28 and newly developed 20 nm.

26. In order to manufacture circuit devices at the 28 and 20 nm and smaller nodes,unique manufacturing processes had to be developed by or for TSMC that, on information and

belief, employ Zonds patented technology for generating and using strongly or super-ionized

plasmas in a manufacturing environment. On information and belief, TSMCs infringing


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products include those made using process steps that employ strongly or super-ionized

plasmas including, but not limited to, processes for depositing interconnects and contacts, and

metal for metal gate transistors, as well as other methods of generating and using strongly or

super-ionized plasmas to form 28 and 20 nm class and smaller devices (TSMC Infringing

Products). The TSMC Infringing Products include, without limitation, all TSMC wafers

produced by an infringing process that, when separated into individual infringing chips, are

incorporated into any and all Fujitsu Infringing Products. Discovery is expected to uncover

the full extent of TSMCs unlawful use of Zonds patented plasma technology beyond these

accused devices already identified through public information.

27. Upon information and belief, TSMC has had knowledge of Zonds patentedtechnology, including the Patents-in-Suit, prior to the initiation of this action. Specifically,

TSMC has had knowledge of the Patents-in-Suit since at least September 2013 in connection

with the prior litigation between the parties in the related 11634 Action and, at the very least,

since May 21, 2014, when a list of Zonds issued U.S. patents was provided to Fujitsus

counsel in connection with the related 11634 Action. Additionally, Zond put TSMC on notice

of infringement of the Patents-in-Suit on June 5, 2014. Even though TSMC was put on notice

that Zond intended to file this action in this District as related to the 11634 Action, in an effort

to forum-shop and avoid adjudication of Zonds claims in this District, TSMC rushed to file

an improper declaratory judgment action in the District of Delaware on Sunday, June 8, 2014.

FIRST CLAIM FOR RELIEF

(Fujitsus Infringement of the 651 Patent)

28. Zond incorporates by reference paragraphs 1 through 27 of the Complaint as ifset forth here in full.

29. Upon information and belief, Fujitsu has been and is currently directly


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infringing one or more claims of the 651 Patent by using, offering to sell and selling within

the United States, and importing into the United States, without authority, the Infringing

Products, including without limitation under 35 U.S.C. 271(g).

30. Upon information and belief, upon knowledge of the 651 Patent, Fujitsu hasbeen inducing infringement of the 651 Patent by, among other things, knowingly and with

intent, actively encouraging its customers, suppliers, original equipment manufacturers

(OEMs) and original design manufacturers (ODMs), to use, sell, offer for sale, and import

Fujitsus Infringing Products in a manner that constitutes infringement of one or more claims

of the 651 Patent. For example, upon information and belief, Fujitsu is selling its Infringing

Products that are made by Zonds patented processes, including without limitation by the

process in accordance with Claim 20 of the 651 Patent, to its OEMs and ODMS, and Fujitsu

knows or should know that these processes are being used in the manufacture of these

products. Further, upon information and belief, Fujitsu actively entices its OEMs and ODMs

through advertising, marketing and sales activity to use Fujitsus Infringing Products as part

of their own infringing products and to sell, offer for sale, and import those infringing

products containing Fujitsus Infringing Products in the United States. Upon information and

belief, Fujitsus OEMs and ODMs directly infringe the 651 Patent by using, selling, offering

for sale, and importing in the United States products containing Fujitsus Infringing Products.

Upon information and belief, Fujitsu knows that by using, selling, offering for sale, and

importing such products its OEMs and ODMs directly infringe the 651 Patent. Upon

information and belief, this inducing activity is ongoing and has not stopped since the

initiation of this action. As stated in Paragraph 23 above, upon information and belief, Fujitsu

has had knowledge of the 651 Patent since July 2013, and was provided additional notice of


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the 651 Patent on May 21, 2014.

31. As a result of Fujitsus infringement of the 651 Patent, Zond has suffered andwill continue to suffer damage. Zond is entitled to recover from Fujitsu the damages adequate

to compensate for such infringement, which have yet to be determined.

32. Fujitsu will continue to infringe the 651 Patent unless and until it is enjoinedby this Court.

33. Fujitsus acts of infringement have caused and will continue to causeirreparable harm to Zond unless and until Fujitsu is enjoined by this Court.

SECOND CLAIM FOR RELIEF(Fujitsus Infringement of the 773 Patent)


35. Upon information and belief, Fujitsu has been and is currently directlyinfringing one or more claims of the 773 Patent by using, offering to sell and selling within











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THIRD CLAIM FOR RELIEF




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FOURTH CLAIM FOR RELIEF













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FIFTH CLAIM FOR RELIEF


52. Zond incorporates by reference paragraphs 1 through 51 of the Complaint as if


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set forth here in full.






















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57.

Fujitsus acts of infringement have caused and will continue to cause

irreparable harm to Zond unless and until Fujitsu is enjoined by this Court.

SIXTH CLAIM FOR RELIEF












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SEVENTH CLAIM FOR RELIEF

(TSMCs Infringement of the 651 Patent)


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65.

Upon information and belief, TSMC has been and is currently directly




66. Upon information and belief, upon knowledge of the 651 Patent, TSMC hasbeen inducing infringement of the 651 Patent by, among other things, knowingly and with



TSMCs Infringing Products in a manner that constitutes infringement of one or more claims

of the 651 Patent. For example, upon information and belief, TSMC is manufacturing its

Infringing Products made by Zonds patented processes, including without limitation by the

process in accordance with Claim 20 of the 651 Patent. Further, upon information and belief,

TSMC actively entices its OEMs and ODMs through advertising, marketing and sales activity

to use TSMCs Infringing Products as part of their own infringing products and to sell, offer

for sale, and import those infringing products containing TSMCs Infringing Products in the

United States. Upon information and belief, TSMCs OEMs and ODMs directly infringe the

651 Patent by using, selling, offering for sale, and importing in the United States products

containing TSMCs Infringing Products. Upon information and belief, TSMC knows that by

using, selling, offering for sale, and importing such products its OEMs and ODMs directly

infringe the 651 Patent. Upon information and belief, this inducing activity is ongoing and

has not stopped since the initiation of this action. As stated in Paragraph 27 above, upon


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information and belief, TSMC has had knowledge of the 651 Patent since July 2013, and was

provided additional notice of the 651 Patent on May 21, 2014 and June 5, 2014.

67. As a result of TSMCs infringement of the 651 Patent, Zond has suffered andwill continue to suffer damage. Zond is entitled to recover from TSMC the damages adequate


68. TSMC will continue to infringe the 651 Patent unless and until it is enjoinedby this Court.

69. TSMCs acts of infringement have caused and will continue to causeirreparable harm to Zond unless and until TSMC is enjoined by this Court.

EIGHTH CLAIM FOR RELIEF



71. Upon information and belief, TSMC has been and is currently directlyinfringing one or more claims of the 773 Patent by using, offering to sell and selling within










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NINTH CLAIM FOR RELIEF



77. Upon information and belief, TSMC has been and is currently directly


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79. As a result of TSMCs infringement of the 775 Patent, Zond has suffered and


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will continue to suffer damage. Zond is entitled to recover from TSMC the damages adequate




TENTH CLAIM FOR RELIEF
















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ELEVENTH CLAIM FOR RELIEF







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92. TSMC will continue to infringe the 179 Patent unless and until it is enjoined


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by this Court.


TWELFTH CLAIM FOR RELIEF



















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PRAYER FOR RELIEF

WHEREFORE, Zond prays for a Judgment in favor of Zond and against Fujitsu and TSMC as

follows:

1. That Fujitsu has directly infringed the 651, 773, 775, 511, 179 and 479Patents;

2. That Fujitsu has indirectly infringed the 651, 773, 775, 511, 179 and 479Patents;

3. That TSMC has directly infringed the 651, 773, 775, 511, 179 and 479Patents;

4. That TSMC has indirectly infringed the 651, 773, 775, 511, 179 and 479


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Patents;

5. That this case is exceptional within the meaning of 35 U.S.C. 285 againsteach of Fujitsu and TSMC;

6. An order enjoining Fujitsu, TSMC and each of their affiliates, subsidiaries,officers, directors, employees, agents, representatives, licensees, successors, assigns, and all

those acting for them and on their behalf, or acting in concert with them directly or indirectly,

from further acts of infringement of the 651, 773, 775, 511, 179 and 479 Patents;

7. A full accounting for and an award of damages to Zond for Fujitsus andTSMCs infringement of the 651, 773, 775, 511, 179 and 479 Patents, including

enhanced damages pursuant to 35 U.S.C. 284, together with pre- and post-judgment interest;

8. An award of Zonds reasonable attorneys fees, expenses, and costs; and9. A grant of such other and further equitable or legal relief as this Court deems

proper.

DEMAND FOR JURY TRIAL

Zond hereby demands trial by jury on all issues so triable.

Dated: June 9, 2014 Respectfully submitted,

ZOND, LLC

By its counsel,

/s/David S. Godkin

David S. Godkin (BBO#196530)Andrew A. Caffrey III (BBO#660481)

Birnbaum & Godkin, LLP

280 Summer StreetBoston, MA 02210

617-307-6100

[email protected]@birnbaumgodkin.com


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Of Counsel:

David C. Radulescu, Ph.D.

Tigran VardanianRADULESCU LLP

136 Madison Ave, 6th

FloorNew York, NY 10016

646-502-5950

[email protected]@radulescullp.com

Documents

Zond v. Fujitsu Semiconductor et. al