MRSI Systems Wins Years-Long Litigation Against Palomar Technologies By Invalidating Palomar’s “Double Pick” Patent

BOSTON (June 2, 2020) – For five years, Palomar Technologies, Inc. has asserted patent claims against leading precision manufacturer MRSI Systems, LLC over certain manufacturing methods for its high-end industrial products.  Now, the Chief Judge of the federal court in Boston has ruled that Palomar’s claimed method, which the company refers to as “double pick,” is not patentable and that its claims of infringement against MRSI fail as a matter of law.

The summary judgment ruling was issued May 28 by Chief Judge F. Dennis Saylor IV of the United States District Court for the District of Massachusetts.

Carlsbad, CA-based Palomar had alleged since filing its lawsuit in July 2015 that MRSI infringed its patent for a so-called “double pick” method that places “an item at a final location more accurately by first moving it to an intermediate location.” Palomar tried throughout the litigation to dress up its claimed method as a proprietary manufacturing process – however, MRSI consistently argued that the claimed method was directed to a patent-ineligible abstract idea and was therefore invalid under 35 U.S.C. § 101.

Addressing the parties’ cross-motions for summary judgment on invalidity, Chief Judge Saylor confirmed that “whether or not the idea is garbed in complex terminology, or used in the extremely sophisticated world of chip manufacture” an abstract idea is still an abstract idea. The decision describes Palomar’s “double pick” process as “so basic that it has been known to human beings for millennia” and is therefore invalid.

Palomar’s argument that its patent was directed to a sophisticated, highly technical improvement in the field of precision assembly and robotics, did not convince the Court. Chief Judge Saylor found that, upon closer inspection, “There is dramatically less to the claimed invention than meets the eye.” Moreover, he concluded that it is described at such a high level of generality that “if the patent is valid, Palomar owns the rights to a fairly wide swath of human activity,” including, for example, a golfer trying to sink a golf ball in the hole, a motorist changing a flat tire, basketball players shooting baskets, a carpenter installing doors and windows, and even a child making a peanut butter and jelly sandwich. Judge Saylor’s decision illustrates that simply couching abstract claims in technological language does not pass muster under 35 U.S.C. § 101. 

“We’re satisfied with the court’s ruling, which confirms what we’ve asserted since the outset of this case five years ago that Palomar’s claimed, so-called double-pick method has been universally used for centuries and has no right to patent protection,” said MRSI President, Michael Chalsen. “From the start this lawsuit had no justification for being brought and Judge Saylor’s summary judgment ruling makes that clear.”

MRSI’s lead counsel is Brian Paul Gearing, Ph.D., a New York based intellectual property partner with the international law firm Crowell & Moring LLP.  Dr. Gearing stated: “We are very pleased with the court’s ruling. We believe Chief Judge Saylor arrived at a thorough and well-reasoned opinion after carefully considering all arguments and evidence in view of the applicable legal framework for invalidity under 35 U.S.C. Section 101.”

Judge Saylor’s ruling of invalidity follows after another significant win for MRSI. After hearing the first-ever bench trial in the country on IPR estoppel in October 2019, the Court held on May 4 that inter partes review or IPR estoppel does not preclude MRSI from asserting two prior art references not previously asserted in an IPR against Palomar’s patent. As part of that ruling, Judge Saylor took Palomar and its expert to task for using improper hindsight in their analysis. Rejecting Palomar’s approach, the judge held that “courts should be particularly cautious about accepting a hindsight analysis” in the IPR estoppel context. For more on the May 4 ruling see HERE.

In light of Chief Judge Saylor’s ruling that Palomar’s patent tries to claim a concept so basic that it has been known to human beings for thousands of years and is therefore invalid, as well as the pervasive discovery misconduct perpetrated by Palomar in connection with the litigation, which has been documented in public filings with the Court, MRSI said it intends to seek its full attorneys’ fees from Palomar.

In addition to Dr. Gearing MRSI’s legal team includes Crowell & Moring LLP counsels Ali Tehrani and Zach Ruby, and associate Michelle Chipetine, and attorneys from Sheehan Phinney Bass & Green PA, including partners Robert R. Lucic, Peter A. Nieves, and James P. Harris, and associate Bryanna K. Devonshire.

The case is Palomar Technologies Inc. v. MRSI Systems LLC, case number 1:18-cv-10236-FDS, in the U.S. District Court for the District of Massachusetts.

For additional information, please contact:

Ian Smith
VP, Corporate Excellence and Marcom
Tel: +1 (978) 667-9449, e-mail: ian.smith@mycronic.com

Brian Paul Gearing, Ph.D.
IP Litigation Partner, Crowell & Moring LLP
Tel: +1 (212) 895-4325, e-mail: bgearing@crowell.com
Time Zone: ET – Eastern Time

About MRSI Systems

MRSI Systems, part of Mycronic Group, is the leading manufacturer of fully automated, high-speed, high-precision and flexible eutectic and epoxy die bonding systems. We offer “one-stop-shop” solutions for research and development, low-to-medium volume production, and high- volume manufacturing of photonic devices such as lasers, detectors, modulators, AOCs, WDM/EML TO-Cans, Optical transceivers, LiDAR, VR/AR, sensors, and optical imaging products. With 30+ years of industry experience and our worldwide local technical support team, we provide the most effective systems and assembly solutions for all packaging levels including chip-on-wafer (CoW), chip-on-carrier (CoC), PCB, and gold-box packaging. For more information visit  www.mrsisystems.com

About Mycronic

Mycronic AB is a Swedish high-tech company engaged in the development, manufacture and marketing of production equipment with high precision and flexibility requirements for the electronics industry. Mycronic headquarters are located in Täby, north of Stockholm and the Group has subsidiaries in China, France, Germany, Japan, Singapore, South Korea, the Netherlands, United Kingdom and the United States. Mycronic AB (publ) is listed on NASDAQ Stockholm. www.mycronic.com