The parties, ICOS Vision Systems and Scanner Technologies, have been involved in patent litigation against one another for over ten years. The patents at issue concern technology used to inspect electronic packaging and one of the patents involved the use of ball grid arrays that provide a method of securing the electrical connections between the microchip and circuit board. Scanner owns a patent pertaining to a method of calibrating and inspecting ball grid arrays. With respect to this patent, the district court bifurcated liability and damages and permitted ICOS to file a single summary judgment motion as to whether ICOS had an implied license through legal estoppel and whether the patent was unenforceable due to laches.
With respect to the implied license issue, the district court discussed the prior litigation between the parties in which Scanner had sued ICOS for patent infringement based on eight patents. After extensive litigation, including a trip to the Federal Circuit, the parties engaged in settlement negotiations that ultimately led to Scanner providing a covenant not to sue on these eight patents. The covenant not to sue provided that Scanner would not sue ICOS for infringement based on the methods or products previously or currently made, used or offered for sale in the United States or imported into the United States. Scanner subsequently attempt to revoke the covenant not to sue when ICOS proceeded with its declaratory judgment claim and the district court found that the covenant not to sue did not deprive it of subject matter jurisdiction to hear the declaratory judgment claim.
Continue reading