- Количество слайдов: 53
MANAGEMENT OF THE PATENT RIGHT 回智總
智慧財產權 無形財產 專利 n 商標 n 著作權 n 營業秘密 n 積體電路佈局 n PATENTS TRADEMARKS COPYRIGHT TRADE SECRETS MASK WORK 如何使得“無形”變作“有形”?
FWorld Trade Organization (WTO) 世界貿易組織 FTrade Related Aspects of Intellectual Property(TRIPs) 相關貿易之智慧財產權問題 FInternational Trade Commission 美國國際貿易委員會
WTO DISPUTE RESOLUTION MECHANISM
ITC KODAK VS FUJI FILM KODAK WINS WTO FUJI FILM VS KODAK FUJI WINS
U. S. PATENTS TOP TEN 2001 1. IBM (USA) 國際商業機器 2. NEC (Japan) 恩儀西 3. Canon (Japan) 佳能 4. Micron (USA) 美光 5. Samsung (Korea) 三星 6. Matsushita (Japan) 松下 7. Sony (Japan) 新力 8. Hitachi (Japan) 日立 9. Mitsubishi (Japan) 三菱 10. Fujitsu (Japan) 富士通 3411 1953 1877 1643 1450 1440 1363 1271 1184 1166 * IBM number one for ninth year in a row USPTO
US PATENTS BY COUNTRY 2000 # Patents %Share Country * 1999 # Patents %Change 1 32, 924 18. 7% Japan 1 32, 514 + 1. 3% 2 10, 822 6. 1% Germany 2 9, 895 + 9. 4% 3 5, 806 3. 3% Taiwan 3 4, 526 +28. 3% 4 4, 173 2. 4% France 4, 097 + 1. 9% 5 4, 090 2. 3% United Kingdom 5 3, 900 + 4. 9% 6 3, 925 2. 2% Canada 7 3, 678 + 6. 7% 7 3, 472 2. 0% South Korea 6 3, 679 - 5. 6% 8 1, 967 1. 1% Italy 8 1, 686 +16. 7% 9 1, 738 1. 0% Sweden 9 1, 542 +12. 7% 10 1, 458 0. 8% Switzerland 11 1, 390 + 4. 9% 11 1, 410 0. 8% Netherlands 10 1, 396 + 1. 0% 97, 016 55. 1% United States 94, 091 + 3. 1% * Country of origin is determined by the residence of the first-named inventor
PRC PATENT APPLICATIONS 203, 586 Applications (63, 216, 79, 723, 60, 647) n 19% increase over 2000 n 37, 889 Foreign Applications (25% increase) n
TOP TEN PRC APPLICATIONS 2001 n n n n n TAIWAN* JAPAN UNITED STATES GERMANY KOREA FRANCE NETHERLANDS HONG KONG* SWITZERLAND SWEDEN 15078 13736 8994 3454 2498 1521 1397 1312 1020 967 40% increase 39% 7% 24% 34% 9% 41% -4% 18% 26%
BUSINESSWEEK 2001 TOP 100 HIGH-TECH COMPANIES ASUSTEK n TSMC n HON HAI n UMC n MACRONIX n COMPAL n VIA n 華碩 台積電 鴻海 聯華電子 旺宏 仁寶 威盛 28 30 39 53 71 72 83
SOME HIGH-TECH COMPANIES WITH IP INPROCOM 集程科技 無線通訊 n EPITSTAR 晶元光電 LED n TEKCORE 泰谷光電 LED n CHIMEIOPTO 奇美電子 LCD n TREND 趨勢科技 防毒軟體 n FAREASTONE 遠傳電信 通訊 n VERBALTEK* 語博科技 語音辨識 理 博士團, 市場, 資金來源, 專業經營 People, Product, Profitability, Patents n
台灣電子業 傳統經營模式 和
因無技術創新功能 國內廠商諸多為受權人 n 老二主義 – 國外大廠定 業標準 – 國內廠商為技術跟隨逐步改良者 n 純代 – 照客戶設計製造 – 不得被視為與客戶競爭
國內廠商應注意 n 製造、組合重鎮 – 專利法：製造、使用、銷售、進口 – 契約法：Royalty Base High (系統vs零組件) n 權利一次耗盡論 (Exhaustion of Rights) – 供應商負責？ – OEM 負責？ – 製造商 squeezed – Foundry Right
權利一次耗盡論 Exhaustion of Rights First Sale Doctrine n n n “An authorized sale of a patented product exhausts the patent monopoly as to that product. Thus, a purchaser of such a product from the patent owner or one licensed by the patent owner may use or resell the product free of control or conditions imposed by the patent owner. ” Chisum 16. 03[a] Intel Foundry Right cases 半導體製造代 – – – n Via PC 133 Chipset National 製造 Via P 4 x 266 Chipset TSMC 製造 Is it a SALE or is it a SERVICE? Supplier licensed? – Where is the patent?
FIRST SALE DOCTRINE PATENT: CHIPSET IC CIRCUIT PATENTEE: INTEL 授權華碩 製造、銷售、使用、進口 系統廠 出口商 使用者 YOU 經銷商 聯強 COMPUTERLAND YOU FRY’S ASUS COMPAQ INT’L VIA COMPAQ 晶片代 製造廠 TSMC VIA INTEL X-LIC NATIONAL IC設計商 OEM 出口商 使用者 晶片 銷售 MITAC 系統廠 經銷商 主機板廠 IC設計商 主機板廠 GIGA 晶片 銷售 晶片代 製造廠 UMC Si. S LICENSED Si. S BACK
飛利浦、朗訊、三星、Sharp 等共 20多家公 司 正在向國內電子廠商索取專利權利金 請問 要花錢做創新研發、申請有價值的專利來 抵擋 或 把錢交給 他們 ?
製造、使用、銷售、進口者 權利人應選誰下手？ n Lemelson Bar Code Scanner – how many manufacturers? – how many users? – who are they, how much money do they have? – 找使用者！ n Philips CD-ROM 看 royalty base – controller vs. player – 誰的權利金計算基礎(royalty base)高？
EXCLUSIVE RIGHT TO TECHNOLOGY POLAROID INSTANT PICTURES 保持技術專屬權－ 卻要打官司 拍拉得迅間照相 LICENSING & ROYALTIES IBM 40, 000 PATENTS 授權收權利金 國際商業機器擁有近四萬件專利 CROSS LICENSING 交互授權 跨國性企業幾乎均設有交互授權關係
專利授權 R&D MANY VALUABLE PATENTS COLLECT LICENSE FEES AND ROYALTIES ROYALTY-FREE CROSS-LICENSE 研究發展 多項有價值的專利 索取權利金或免權利金之交互授權 D A FEW FAIR PATENTS BALANCING PAYMENT CROSS-LICENSE 僅產品發展 若干專利 差額權利金之交互授權 NO R&D NO PATENTS ROYALTY-BEARING LICENSE 無研究發展 無專利 支付權利金之受權
由台灣的科技產業來訂 業標準 TAIWAN TECH COMPANIES SHOULD SET THE INDUSTRY STANDARD SCANNERS n MOTHERBOARDS n NOTEBOOKS n LCDs n IC CONTROLLERS n SEMICONDUCTOR FAB n 90+% 70+% 50+% 40+%(? ) 70+%
TFT-LCD THIN FILM TRANSISTOR LIQUID CRYSTAL DISPLAY n n n 薄膜電晶體液晶顯示器 UPSTREAM 上游 Colour filters (彩色濾光片) 27% Backlights (背光模組) 19% Driver ICs (驅動積體電路) 16% Glass (玻璃基板) Polarizers (偏光板) MIDSTREAM 中游 Panels, Modules DOWNSTREAM 下游 Notebook, Desktop Computer Monitors TAIWAN BRAND? 筆記型電腦, 桌上電腦顯示器 台灣自有品牌? PDA, Mobile Phone, Car Dashboard Panel 個人數位助理, 手機, 汽車儀器板 Television, Digital TV, HDTV 電視, 數位電視, 高解析度電視
由國內廠商訂定 業標準 依據安全需要 n 依據品質保證 n 建立行業聯盟 n 維持紀律, 免被個別擊破 n 利用智慧財產權來保護自家技術 n 於標準合約中訂定有利條件 n
PATENT MARKETING 專利之推銷 n 專利典藏 (Patent Portfolio) n 帶有專利技術產品之廣告 (Technology Brochure) n 侵害圖表 (Preliminary Claim Chart) n 侵害對照表 (Claim Charts) n 侵害鑑定報告 (Patent Infringement Analysis) n 起訴狀 (Complaint Filing) n 授權談判 (License Negotiation)
反告 PRELIMINARY CLAIM CHART樣本 BACK
PATENT ENFORCEMENT ALLIANCES FOR CONVENIENCE (WHOSE? ) n “RAND” = REASONABLE (ROYALTY) AND NON-DISCRIMINATORY (TAKE MONEY FROM ANYBODY) n MPEG-4 n IEEE 1394 n CD-ROM n BLUETOOTH n
PATENT INFRINGEMENT ANALYSIS 1. GET THE PROSECUTION HISTORY FILE WRAPPER n 2. REVIEW THE CITED PRIOR ART n 3. USE FILE WRAPPER ESTOPPEL TO NARROW CLAIMS IF ACCUSED PRODUCT IS IN THE CITED PRIOR ART IT CANNOT INFRINGE THE PATENT BECAUSE IT IS ADMITTED PRIOR ART (MAY INFRINGE THE CITED PATENT, HOWEVER) USE PATENT NEWS SERVICE OR BOUNTY QUEST n n n PROFESSIONAL PRIOR ART SEARCH IF FIND PATENT COVERING ACCUSED PRODUCT, PURCHASE PATENT THROUGH A THIRD PARTY PROMISE NOT TO SUE FORMER PATENTEE ON PURCHASED PATENT 4. PATENT INFRINGEMENT ANALYSIS U. S. PATENT ATTORNEY SIGNED OPINION (AVOID WILLFUL) 1. REQUEST REEXAMINATION OF PATENT n n n INVALIDATE PATENT/CLAIMS NARROW CLAIMS DURING REEXAMINATION, ANY RELEVANT LITIGATION IS SUSPENDED (TAKES 1. 5 – 2 YEARS)
US PATENT (NON) INFRINGEMENT OPINION MUST BE DONE AND SIGNED BY REGISTERED US PATENT ATTORNEY n IF REASONABLE GROUNDS FOR NONINFRINGEMENT, IT IS A COMPLETE DEFENSE TO WILLFUL INFRINGEMENT n DISTRIBUTION DEPENDS ON STRATEGY; GIVE TO OTHER SIDE? GIVE TO CUSTOMERS? n
EUROPE ASIA MIDDLE EAST PACIFIC __________________________ AMSTERDAM MILAN BANGKOK BARCELONA MOSCOW BEIJING BERLIN PARIS GUANGZHOU BRUSSELS PRAGUE HONG KONG BUDAPEST RIYADH MANILA CAIRO ROME MELBOURNE FRANKFURT ST. PETERSBURG SHANGHAI GENEVA STOCKHOLM SINGAPORE KIEV WARSAW SYDNEY LONDON ZURICH TAIPEI MADRID TOKYO BAKER & MKENZIE ATTORNEYS AT LAW 國際通商法律事務所 15 TH FLOOR, HUNG TAI CENTER 168 TUN HWA NORTH ROAD TAIPEI 105, TAIWAN REPUBLIC OF CHINA 台北市敦化北路 168號 15樓 TELEPHONE: 886 -2 -27126151 FACSIMILE: 886 -2 -27169250 NORTH AND SOUTH AMERICA ____________________________ BOGOTA MEXICO CITY SAN FRANCISCO BRASILIA MIAMI SAO PAULO BUENOS AIRES MONTERREY TIJUANA CARACAS NEW YORK TORONTO CHICAGO PALO ALTO VALENCIA DALLAS RIO DE JANEIRO WASHINGTON. D. C. JUAREZ SAN DIEGO ATTORNEY-CLIENT PRIVILEGED AND CONFIDENTIAL By Hand Delivery June 12, 2002 Dr. BBB, President EXXX Corporation XXXX Science-Based Industrial Park, Hsinchu 300 TAIWAN, REPUBLIC OF CHINA Re: Noninfringement Study of United States Patent No. 5, xxx Dear Dr. BBB, This correspondence represents our response to your request on or about June 4, 2002 that Baker and Mc. Kenzie render its opinion on whether specific Alxxxx light emitting diode (LED) products of Exxx Corporation (collectively referred to as “Exxx LED” herein) infringes U. S. Patent No. 5, XXX (the 'XXX patent) apparently assigned to LLL. In order to preserve the attorney-client privilege that attaches to this noninfringement study, we advise you that the contents of this opinion should only be disclosed to personnel of Exxx, your outside counsel and advisors, and business partners having a “need to know” of our conclusions in order to make legal and business management decisions. I. SUMMARY OF CONCLUSIONS Based on our consideration of the ‘XXX patent including its specification, drawings, claims and file history, no claims of the ‘XXX patent will be infringed by the manufacture, use, sale, offer for sale or importation of the Exxx LED in the United States.
II. BACKGROUND In order to facilitate our understanding of the Exxx LED, we studied the specification and claims of the 'XXX patent (attached herewith as Exhibit A), its prosecution history in the United States Patent and Trademark Office (attached herewith as Exhibit B), and the ‘ 768 patent (attached herewith as Exhibit C) whose embodiments set forth therein, according to Exxx, identically describe the Exxx LED. We did not perform any separate patent searches. Moreover, our opinion is limited to your specific request, i. e. , whether the Exxx LED infringes the claims of the ‘XXX patent. III. EXXX LED Pursuant to your instructions, the embodiments illustrated identically describe the Exxx LED. The Exxx LED includes a p-type window layer 56 of transparent material, such as Ga. P, Ga. As. P, Ga. In. P or Al. Ga. As. See column 4, lines 34 -41, and Figure 5 A of the ‘ 768 patent. Further according to the ‘ 768 patent, the Exxx LED also includes a p-type contact layer 58 of Ga. As. P, Ga. In. P, or Ga. As, formed on the window layer 56, that serves to form an ohmic contact between the window layer 56 and a conductive transparent oxide layer 60 formed preferably of indium tin oxide (ITO). See Figure 5 A, column 4, lines 45 -52 and 59 -61 of the ‘ 768 patent. The electrical resistivity of the conductive transparent oxide layer 60 is smaller than that of the contact layer 58. A central area in the contact layer 58 is etched to expose a portion of the surface of the window layer 56. See column 4, lines 52 -58 of the ‘ 768 patent. A semiconductor substrate 52 is formed on the n-type IV. LEGAL STANDARDS FOR DETERMINING PATENT INFRINGEMENT A two-step inquiry is made in determining infringement of a U. S. patent. First, the meaning and scope of the claims at issue must be assessed. Second, the claims must be compared to the suspect device or product. Markman v. Westview Instruments, Inc. , 52 F. 3 d 967, 976 (Fed. Cir. 1995) (en banc), aff’d, 116 U. S. 1384 (1996); Vitronics Corp. v. Conceptronic, Inc. , 90 F. 3 d 1576, 1581 -1582 (Fed. Cir. 1996). The first step, interpretation of a claim, is a matter of law for the Court to determine and should not be delegated to a jury. Markman, 52 F. 3 d at 977 -79. In current litigation practice, courts have held “Markman hearings”, named after the leading case, to perform claim construction prior to a trial on patent infringement. In properly interpreting patent claims, the analysis requires examining: (1) the claim language; (2) the patent specification; (3) the prosecution history; and, if necessary, (4) extrinsic evidence, such as common or special usage of terms. See, e. g. , Markman, 52 F. 3 d at 979; Lemelson v. General Mills, Inc. , 968 F. 2 d 1202, 1206 (Fed. Cir. 1992); Vitronics Corp. , 90 F. 3 d at 1582. The prosecution history will often be important in deciphering the meaning and scope of claims because it can clarify what the original application sought and what the applicant found necessary to add or delete in order to procure allowance in the face of rejections or objections by the Examiner. Lemelson, 968 F. 2 d at 1207 -08. “Prosecution history is especially important when the invention involves a crowded art field, or when there is particular prior art the applicant is trying to distinguish. ” Id.
The second part of an infringement analysis is a comparison of the claims as interpreted against the suspect device to determine whether the suspect device falls within the scope of the claim. E. g. , Symbol Technologies, Inc. v. Opticon, Inc. , 935 F. 2 d 1569, 1574 (Fed. Cir. 1991). It is well established under the “All Elements Rule” that to establish infringement each and every element set forth in a patent claim must be found in the suspect product, “exactly or by a substantial equivalent…[and] failure to meet a single limitation is sufficient to negate infringement of the claim. ” Laitram Corp. v. Rexnord, Inc. , 939 F. 2 d 1533, 1535 (Fed. Cir. 1991); Loral Fairchild Corp. v. Sony Corp. , et al. , 50 U. S. P. Q. 2 d (BNA) 1865, 1874 -75 (Fed. Cir. 1999); Strattec Security Corp. v. General Automotive Specialty Co. , 126 F. 3 d 1411, 1418 (Fed. Cir. 1997). In comparing a device with the properly interpreted language of a claim, the first analysis is whethere is literal infringement. Literal infringement occurs when the accused device includes each element and limitation of the patent claims as properly interpreted. Additionally, where the claims include “means-plus-function” elements, in order for there to be literal infringement, “the accused device must perform the identical function required by the limitation and must incorporate the structure disclosed in the specification, or its substantial structural equivalent, as the means for performing that function. ” Intellicall v. Phonometrics, Inc. , 952 F. 2 d 1384, 1388 -89 (Fed. Cir. 1992). Infringement also might occur under the doctrine of equivalents. Warner-Jenkinson Co. v. Hilton Davis Chem. Co. , 117 U. S. 1040, 1045 (1997); Graver Tank & Mfg. Co. , Inc. v. Linde Air Prods. , 339 U. S. 605, 608 (1950). Briefly, under that doctrine, a product may infringe if there are only insubstantial differences between the claimed invention and the product. See Warner-Jenkinson, 117 U. S. at 1045; Pennwalt Corp. v. Durand-Wayland, Inc. , 833 F. 2 d 931, 934 (Fed. Cir. 1987) (en banc), cert. denied, 485 U. S. 961 (1988). The policy underlying the doctrine of equivalents is that limiting infringement to a literal duplication of a claim “would place the inventor at the mercy of verbalism and would be subordinating substance to form. ” Graver Tank & Mfg. Co. , 339 U. S. at 607, 70 U. S. at 856. “The doctrine of equivalents requires that the accused device have an identical or equivalent element for each limitation contained in the claim”. Loral Fairchild Corp. , 50 U. S. P. Q. 2 d at 1874. Analysis under the doctrine of equivalents, like analysis of literal infringement, must be applied on an element-by-element basis: “Each element contained in a patent claim is deemed material to defining the scope of the patented invention … and thus the doctrine of equivalents must be applied to individual elements of the claim, not to the invention as a whole. ” Hilton-Davis Chem. Co. v. Warner-Jenkinson Co. , 114 F. 3 d 1161, 1163 -64 (Fed. Cir. 1997). The Supreme Court stated that the equivalents analysis should answer the question: “Does the accused product or process contain elements identical or equivalent to each claimed element of the patented invention? ” Warner-Jenkinson Co. , 117 U. S. 1040, 1054. An analysis of the role played by each element in the context of each specific patent claim assists in determining “whether a substitute element matches the function, way, and result of the claimed element, or whether the substitute element plays a role substantially different from the claimed element. ” Id. Further, the Supreme Court held that there is a presumption of estoppel against the patent-holder in certain circumstances where the applicant changed the claims during prosecution. Specifically, an amendment is presumptively a surrender of subject matter that cannot be recaptured by applying the doctrine of equivalents. Id. at 1051. That presumption is rebuttable only if the patentee can prove that the purpose of a particular amendment was unrelated to patentability of the claim, i. e. not made for the purpose of overcoming a rejection. Id. The application of the doctrine of equivalents with respect to means-plus-function claim language under 35 U. S. C. § 112, ¶ 6, has recently been reviewed by the Court of Appeals for the Federal Circuit. In Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus. , Inc. , 145 F. 3 d 1303 (Fed. Cir. 1998), the court stated that “where the equivalence issue does not involve later-developed technologies, but rather involves technology that predates the invention itself … a finding of non-equivalence for 35 U. S. C. § 112, ¶ 6, purposes should preclude a contrary finding under the doctrine of equivalents. ” Id. at 1311. The court also stated that “[t]here is no policy-based reason why a patentee should get two bites at the apple. If he or she could have included in the patent what is now alleged to be equivalent, and did not, leading to a conclusion that an accused device lacks an equivalent to the disclosed structure, why should the issue of equivalence have to be litigated a second time? ” Id.
V. THE 'XXX PATENT The 'XXX patent entitled “Light-Emitting Diode with an Electrically Conductive Window” was issued on April 16, 1991 based on U. S. Patent Application Serial No. 452, 800 filed in the United States on December 18, 1989. A. Disclosure of the ‘XXX Patent In the specification of the ‘XXX patent, the stated objective of the transparent window layer is to minimize current crowding from metal electrical contacts over the B. Claims of the ‘XXX Patent The ‘XXX patent includes a total of 14 claims. The sole independent claims of the ‘XXX patent are claims 1 and 8, with dependent claims 2 -7 and 9 -14 respectively depending therefrom. Independent claim 1 of the ‘XXX patent is accordingly stated as follows: 1. A light emitting diode comprising: a semiconductor substrate; an electrical contact to the substrate; active p-n junction layers for Al. Ga. In. P over the substrate for emitting light; a transparent window layer of semiconductor different from Al. Ga. In. P over the active layers and having a bandgap greater than the bandgap of the active layers and a resistivity lower than the active layers; and a metal electrical contact over a portion of the transparent layer. The only other independent claim 8 of the 'XXX patent is accordingly recited as follows: 8. A light emitting diode comprising: an opaque semiconductor substrate; an electrical contact to the substrate; a first confining layer of a first conductivity type Al. Ga. In. P on the substrate; an active layer of a first conductivity type Al. Ga. In. P on the first confining layer; a second confining layer of a seconductivity type Al. Ga. In. P on the active layer; a transparent window layer of semiconductor different from Al. Ga. In. P over the second confining layer and having a lower resistivity than the second confining layer and a bandgap greater than the bandgap of the active layer; and a metal electrical contact over a portion of the transparent window layer. Dependent claims 2 -7 and 9 -14, respectively depending from independent claims 1 and 8, are recited in Exhibit A and not repeated herein. See column 5, lines 45 through column 6, line 45 of the ‘XXX patent.
C. The Prosecution History Of The 'XXX Patent The U. S. Patent Application Serial No. 452, 800 for the ‘XXX patent (hereinafter referred to as the ‘ 800 application) was filed in the United States Patent and Trademark Office (USPTO) on December 18, 1989. The ‘ 800 application as filed comprised 21 claims, including 3 independent claims. On August 15, 1990, the USPTO issued a first Office Action in the ‘ 800 application (hereinafter referred to as the “Office Action”). According to the Office Action, all 21 claims of the ‘ 800 application as filed were rejected. See page 1 of the Office Action. In particular, claims 3 -4 and 8 -21 were rejected under 35 U. S. C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter of the invention in the ‘ 800 application. See page 2 of the Office Action. Claims 1 -21 were rejected under 35 U. S. C. 102(b) as unpatentable over and anticipated by or, in the alternative, under 35 U. S. C. § 103 as being unpatentable and obvious over U. S. Patent No. 4, 680, 602 of Watanabe et al (“Watanabe”). See page 3 of the Office Action. With respect to the independent claim 1 which is the broadest claim in the ‘ 800 application, the USPTO Examiner rejected claim 1 under 35 U. S. C. § 102(b) as unpatentable over and anticipated by or, in the alternative, under 35 U. S. C. § 103 as being unpatentable and obvious over Watanabe discloses a light emitting diode comprising an opaque n-Ga. As semiconductor substrate 1, an electrical contact to the n-Ga. As substrate 1, a first confining layer 3 of n-Ga. As. P on the n-Ga. As substrate 1, an active layer 4 of Ga. As. P, a second confining layer 5 of n-Ga. P, a transparent window layer 6 of In. Ga. P or In. Ga. As. P over the second confining layer and having a bandgap larger than the active layer, and a metal electrical contact 7 over a portion of the transparent window layer 6. See column 4, lines 9 -33, and Figure 1 of Watanabe. The semiconductors used in Watanabe are Group III-V semiconductors different from those disclosed in the 'XXX patent. According to the Office Action, the claimed LED structure of claims 1 -21 in the ‘ 800 application read on the Watanabe LED comprising an n-Ga. As semiconductor substrate with an electrical contact, an n-Ga. As. P confining layer on the n-Ga. As substrate, an n-Ga. As. P active layer, a p-In. Ga. P confining layer, a transparent window layer of In. Ga. P or In. Ga. As. P over the p-In. Ga. P confining layer and having a bandgap larger than the n-
VI. THE ‘XXX PATENT: NONINFRINGEMENT ANALYSIS It is our opinion that the Exxx LED does not infringe claims 1 -14 of the ‘XXX patent, either literally or under the doctrine of equivalents. A. Background The ‘XXX patent includes a total of 14 claims. The sole independent claims of the ‘XXX patent are claims 1 and 8. Each of claims 1 and 8 specifically recites the limitation of “a transparent window layer of semiconductor different from Al. Ga. In. P” having a greater bandgap and lower resistivity than the active layers. See claims 1 and 8 of the ‘XXX patent. B. Construction and Analysis of Claim 1 has been analyzed in detail, as set forth below in claim chart format:
Claim 1 of the 'XXX patent The Meaning of the Claimed Elements Preamble: " A light emitting diode" Plain Meaning* Transitional Phrase: "comprising" is an open ended transitional phrase, which does NOT exclude additional unrecited elements. Claimed Element #1: a semiconductor substrate; Plain Meaning* Claimed Element #2: an electrical contact to the substrate; Plain Meaning Claimed Element #3: active p-n junction layers for Al. Ga. In. P over the substrate for emitting light; This is in the prior art as a conventional structure
Claimed Element #4: a transparent window layer of semiconductor different from Al. Ga. In. P over the active layers and having a bandgap greater than the bandgap of the active layers and a resistivity lower than the active layers; and The transparent layer is disclosed in the Watanabe prior art which recites materials different from Al. Ga. In. P, having a bandgap greater than the bandgap of the active layers. The concept of a "transparent window layer" cannot be claimed in the 'XXX patent as it is admitted prior art. The transparent window layer must be of semiconductor material. Claimed Element #5: a metal electrical contact over a portion of the transparent layer. Plain Meaning "Plain Meaning" refers to the meaning given to the term by those of ordinary skill in the art (meaning not specifically defined by the patentee in the specification).
C. Comparison Between Claim 1 and the Exxx LED An element-by-element comparison between claim 1 of the 'XXX patent and the Exxx LED is described in claim chart format as follows (please note that the major focus of the comparison is on whether the Exxx LED includes all of the elements defined in the claim):
Claim 1 of the 'XXX patent Exxx LED Preamble: " A light emitting diode" Yes Transitional Phrase: "comprising" The Exxx LEDs have more elements in the transparent layer than recited in claim 1 of the 'XXX patent. However, since claim 1 uses the transitional phrase of “comprising”, the additional features of the LEDs cannot be used as a basis to negate infringement. Claimed Element #1: a semiconductor substrate; Yes Claimed Element #2: an electrical contact to the substrate; Yes Claimed Element #3: active p-n junction layers for Al. Ga. In. P over the substrate for emitting light; Yes
Claimed Element #4: a transparent window layer of semiconductor different from Al. Ga. In. P over the active layers and having a bandgap greater than the bandgap of the active layers and a resistivity lower than the active layers; and No. The Exxx LED does not have a "transparent window layer" since its structure between the substrate and the top electrode forms a Shottky barrier to prevent current flow, contrary to the "current spreading" transparency of the "XXX patent's "transparent window layer". Further, the Exxx LED transparent oxide layer that is part of its window layer, is not a semiconductor. Claimed Element #5: a metal electrical contact over a portion of the transparent layer. Yes
IV. SUMMARY OF FINDINGS A. No Literal Infringement For at least the reasons set forth herein, there is no literal infringement of independent claims 1 and 8 because the Exxx LED does not include a transparent window layer of semiconductor as claimed in the 'XXX patent. Since claims 1 and 8 are not infringed, neither are claims 2 -7 and 9 -14 respectively depending from claims 1 and 8. The reasons for no literal infringement are discussed above and summarized as follows: (i) No Literal Infringement of “Transparent Window Layer” The Exxx LED does not have a "transparent window layer" since its structure between the substrate and the top electrode forms a Shottky barrier to prevent current flow, contrary to the "current spreading" transparency of the "XXX patent's "transparent window layer. " (ii) No Literal Infringement of “Transparent Window Layer of Semiconductor …” The transparent window layer as claimed must be a layer of semiconductor material. See claim 8 of the ‘XXX patent. As an insulator, the conductive transparent oxide layer in the Exxx LED, as part of its window layer, is not a semiconductor. B. Noninfringement Under the Doctrine of Equivalents In the alternative, the Exxx LED does not infringe the ‘XXX patent under the doctrine of equivalents. For at least the reasons set forth herein, in our professional opinion the Exxx LED does not literally infringe the claimed LED in the ‘XXX patent. For argument’s sake, there is a possibility that the conductive transparent oxide layer will be considered as a part of the window layer in the Exxx LED. The Exxx LED will infringe the ’XXX under the “Doctrine of Equivalents” only if, according to the so-called tripartite test for equivalency, the Exxx LED performs substantially the same function, in substantially the same way, to obtain substantially the same result, as the claimed LED of the 'XXX patent. For the sole purpose of an analysis under the doctrine of equivalents, there is provided herein and below a comparison of the Exxx LED and the claimed LED in the ‘XXX patent of their functions, the way they respectively perform their functions, and the results of their performed functions.
The Exxx LED utilizes three layers -- a window layer, a contact layer, and a conductive transparent oxide layer – between the conventional active layers and the top electrical contact. Since one of the layers is made of oxide, it is not a semiconductor layer. Further, these three layers taken together are not transparent since the interface between two of them, the window layer and the conductive transparent oxide layer, form a Shottky barrier that inhibits current flow and thus is not transparent in the sense of the 'XXX patent. That is, the window layer and the oxide layer in conjunction are not transparent. Therefore, the Exxx LED does not perform substantially the same function ('XXX current spreading), in substantially the same way (Exxx LED provides selective current blocking). The result is enhanced light emission, so that may be the same, although the Exxx LED apparently provides greater luminance than devices based on the 'XXX patent. Note that the 'XXX patent disclosure is not the invention of a light emitting diode, so its function is not light emission, but rather enhanced light emission by avoiding current crowding. The idea of a transparent layer is disclosed in the Watanabe prior art reference which recites materials different from Al. Ga. In. P, having a bandgap greater than the bandgap of the active layers. Therefore, the concept of a "transparent window layer" cannot be within the scope of the 'XXX patent as it is admitted prior art. For at least the reasons set forth herein, there is no infringement of independent claims 1 and 8 under the doctrine of equivalents. Since claims 1 and 8 are not infringed under the doctrine of equivalents, neither are claims 2 -7 and 9 -14 respectively depending from claims 1 and 8. The reasons for noninfringement under the doctrine of equivalents are discussed above and further summarized as follows: (i) “Substantially the Same Function” For at least the reasons set forth herein and above, the Exxx LED does not perform substantially the same function as the claimed LED in the ‘XXX patent. The current distribution function of the Exxx LED with a Shottky barrier, if any, is limited to the area under the ohmic contact layer 58. In contrast, the current spreading function of the claimed LED in the ‘XXX patent is to distribute current throughout the transparent window layer over the active region therein. (ii) “Substantially the Same Way” For at least the reasons noted herein and above, the Exxx LED does not perform its function in substantially the same way as the claimed LED in the ‘XXX patent. The way that the claimed LED in the ‘XXX patent performs its current spreading function is through the sole use of the transparent window layer. In contrast, the way the Exxx LED performs its current distribution function is by cooperation between a plurality of elements including the ohmic contact layer and the Shottky barrier with the conductive oxide layer. (iii) “Substantially the Same Result” For at least the reasons noted herein and above, the Exxx LED does not achieve substantially the same result as the claimed LED in the ‘XXX patent. It may be argued that the Exxx LED and the claimed LED in the ‘XXX patent both emit light as they are both LEDs. However, the result of the Exxx LED is optimal light emission through its Shottky structure, whereas the claimed LED in the ‘XXX patent achieves the result of current distribution in the window layer over the active region.
V. CONCLUSIONS Based on at least the reasons herein and above, it is our opinion that the Exxx LED, as presently understood, will not infringe properly interpreted claims of the 'XXX patent, either literally or under the doctrine of equivalents. The foregoing is solely a legal analysis of the infringement issues relating to the 'XXX patent, and should not be taken as a risk analysis. It is not possible to predict with certainty how a judge or jury would decide the issue of infringement if presented to them, especially in view of the complexity of the subject matter, and a favorable result cannot be guaranteed. Should the patent be litigated, the issue of infringement will ultimately rest on questions of law and fact as developed in the litigation. In addition, despite the clear differences between the Exxx’s LEDs and the claims of the 'XXX patent, there is no guarantee that an overly aggressive third party will not assert the patent for business purposes. Moreover, because of issues related to confidentiality, it is our firm’s policy that this letter cannot be disclosed or made public, without our prior written consent. Please feel free to contact us should there be any questions regarding this opinion. Very truly yours, BAKER & Mc. KENZIE By: __________________ Robert H. Chen, Esq. (Reg. No. 33, 847) __________________ Ya-Chiao Chang, Esq. (Reg. No. 43, 407) Enclosures
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