专利权的经营策略.ppt

management of the patent right 回智總回智總 智慧財產權 無形財產 n專利patents n商標trademarks n著作權copyright n營業秘密trade secrets n積體電路佈局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 3411 2. nec (japan) 恩儀西 1953 3. canon (japan) 佳能 1877 4. micron (usa) 美光 1643 5. samsung (korea) 三星 1450 6. matsushita (japan) 松下 1440 7. sony (japan) 新力1363 8. hitachi (japan) 日立1271 9. mitsubishi (japan) 三菱1184 10. fujitsu (japan) 富士通 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 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 n203,586 applications (63,216, 79,723, 60,647) n19% increase over 2000 n37,889 foreign applications (25% increase) top ten prc applications 2001 ntaiwan*1507840% increase njapan1373639% nunited states 8994 7% ngermany 345424% nkorea 249834% nfrance 1521 9% nnetherlands 1397 41% nhong kong* 1312 -4% nswitzerland 102018% nsweden 96726% businessweek 2001 top 100 high-tech companies nasustek 華碩28 ntsmc 台積電30 nhon hai 鴻海39 numc 聯華電子53 nmacronix 旺宏 71 ncompal仁寶72 nvia威盛83 some high-tech companies with ip ninprocom 集程科技無線通訊 nepitstar 晶元光電led ntekcore 泰谷光電led nchimeiopto 奇美電子lcd ntrend 趨勢科技防毒軟體 nfareastone 遠傳電信通訊 nverbaltek* 語博科技語音辨識 理工博士團,市場,資金來源,專業經營 people, product, profitability, patents 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 國外大廠定工業標準 國內廠商為技術跟隨逐步改良者 n純代工 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“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 16.032a nintel foundry right cases n半導體製造代工 via pc133 chipset national 製造 via p4x266 chipset tsmc 製造 is it a sale or is it a service? nsupplier licensed? where is the patent? first sale doctrine patent: chipset ic circuit patentee: intel ic設計商 晶片代工 製造廠 晶片 銷售 主機板廠 系統廠 出口商 使用者 經銷商 via 聯強 mitac via tsmc asus computerland you 製造、銷售、使用、進口 ic設計商 晶片代工 製造廠 晶片 銷售 主機板廠 系統廠 出口商 使用者 經銷商 sis compaq intl compaq sis umc giga frys you national oem licensed intel 授權華碩 intel x-lic 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？ nlemelson bar code scanner how many manufacturers? how many users? who are they, how much money do they have? 找使用者！ nphilips cd-rom 看 royalty base controller vs. player 誰的權利金計算基礎(royalty base)高？ exclusive right to technology exclusive right to technology polaroid instant picturespolaroid instant pictures 保持技術專屬權保持技術專屬權卻要打官司卻要打官司 拍拉得迅間照相拍拉得迅間照相 licensing give to other side? give to customers? europeasia middle eastpacific _ amsterdammilanbangkok barcelonamoscowbeijing berlinparisguangzhou brusselspraguehong kong budapestriyadhmanila cairoromemelbourne frankfurtst. petersburgshanghai genevastockholmsingapore kievwarsawsydney londonzurichtaipei madridtokyo baker vitronics corp. v. conceptronic, inc., 90 f.3d 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.3d 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.3d at 979; lemelson v. general mills, inc., 968 f.2d 1202, 1206 (fed. cir. 1992); vitronics corp., 90 f.3d 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.2d 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.2d 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 equivalentand failure to meet a single limitation is sufficient to negate infringement of the claim.” laitram corp. v. rexnord, inc., 939 f.2d 1533, 1535 (fed. cir. 1991); loral fairchild corp. v. sony corp., et al., 50 u.s.p.q.2d (bna) 1865, 1874-75 (fed. cir. 1999); strattec security corp. v. general automotive specialty co., 126 f.3d 1411, 1418 (fed. cir. 1997). in comparing a device with the properly interpreted language of a claim, the first analysis is whether there 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.2d 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 pennwalt corp. v. durand-wayland, inc., 833 f.2d 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 an electrical contact to the substrate; active p-n junction layers for algainp over the substrate for emitting light; a transparent window layer of semiconductor different from algainp 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 algainp on the substrate; an active layer of a first conductivity type algainp on the first confining layer; a second confining layer of a second conductivity type algainp on the active layer; a transparent window layer of semiconductor different from algainp 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. watanabe discloses a light emitting diode comprising an opaque n-gaas semiconductor substrate 1, an electrical contact to the n-gaas substrate 1, a first confining layer 3 of n-gaasp on the n-gaas substrate 1, an active layer 4 of gaasp, a second confining layer 5 of n-gap, a transparent window layer 6 of ingap or ingaasp 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-gaas semiconductor substrate with an electrical contact, an n-gaasp confining layer on the n-gaas substrate, an n-gaasp active layer, a p-ingap confining layer, a transparent window layer of ingap or ingaasp over the p-ingap 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 algainp” 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 claim 1 has been analyzed in detail, as set forth below in claim chart format: claim 1 of the xxx patentthe meaning of the claimed elements preamble: “ a light emitting diode“ plain meaning* transitional phrase: “comprising“ “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 algainp 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 algainp 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 algainp, 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 patentexxx 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 algainp over the substrate for emitting light; yes claimed element #4: a transparent window layer of semiconductor different from algainp 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 patents “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 patents “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 arguments 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