Stephen Smith--November 8th Patent Law White Paper
Source/Type: White Papers/Technical Papers

Author: Stephen Smith

November 8, 2005... By way of introduction, especially for those of you who don’t know me, I became a patent attorney after a successful career as a semiconductor engineer. I don’t know when I became interested in intellectual property, but I found that negotiating with lawyers was a difficult task at best as they were very good with words. So I figured the only way to beat the lawyers was to join them. I can’t say that I have not missed the research, the conferences, and most importantly, the many friends that I made through the years. I learned a lot from my interactions with you. Since no good deed goes undone, I thought I would share some of what I have learned over the last few years with you, my friends. With that said, let’s get started.

Many of you have contributed mightily to what we know about semiconductors and your contributions have not only been in electronics but to optoelectronics as well. Hopefully, many have you have provided the ground floor for solving a looming energy crisis with your contributions to solid state lighting while others of you have and continue to contribute to high speed communications in wireless and optical communications. Still others are working very hard towards photonic switching and advancing solar cell technology. Most recently, the merging of the laser and the transistor into a singular device has come to fruition and the implications of that merger may be as exciting as the initial introduction of the transistor. More importantly, this advance may teach us more about interactions occurring in electronic devices than we ever knew or realized. The possibilities remain unforeseen and endless.

Advancements made by each one of us is a contribution to all of us. As we read about other’s work, we realize and find clues to some of the things we have all thought about, and some of these published ideas are the keys to advance what we already know. The interaction between us at conferences often provides the spark for new research. We build upon the work of others, continuing to create and adding to the vast knowledge of the community. Along the way, we take a stake in our efforts by claiming our contribution. We do this by copyrighting our works, especially that work published in journals where we readily identify ourselves as authors. Other advances we keep secret, choosing to keep the knowledge in-house as a trade secret hoping that the advancement reduces the cost of our product so a competitor may be squeezed out of the marketplace. Others choose to share their knowledge, not by publishing it, but by taking a federally granted monopoly for a period of time. In return, the inventor discloses the invention to the public. This protection is a patent right. In the US, an inventor is granted a twenty year term of protection from the time the patent application is submitted. The inventor is allowed to exclude others from making, offering for sale, selling, or importing the patented material within the United States. What does this mean?

Lately, due to the advance of solid state lighting, it means threats, innuendos and most importantly fear. There is a lot of money at stake, millions, if not multi-millions of dollars. And it won’t be long before solid state lighting is a multi-billion dollar industry. The threat of litigation causes business leaders to take a license to a patent without determining whether the license may be absolutely necessary. The threat of litigation is a costly venture and if the license will keep you out of court, why not. It makes good business sense. But how do you know you are infringing? Did you get a letter stating that you were infringing? And when you did get the letter, did you get a patent attorney’s opinion? Were you really put on notice? I hope your answer to the above questions is yes, if you are paying license fees. And if you are receiving license fees, I hope that you did not bully the parties into taking the license.

However, informing others that you intend to enforce your intellectual property rights is well within a property owner’s right. To make a blanket statement that people are out there infringing your product and that you are going to make an example of them can be a reckless act with serious implications for everyone involved, however you . are within your rights to do so. But there may be better ways to accomplish the goal of protecting your intellectual property than to scare everyone.

First of all, you put people on notice. That’s one of the reasons why patents are published. Even patent applications are published within eighteen months of filing the application putting the public on notice that this application may one day issue. In the US, a product that is protected by a patent must be marked with the number of each patent that protects the associated intellectual property in the product. If it is not marked, damages may not be forthcoming for another’s infringing act until notice is established. In most cases, a marked product constitutes notice to the public. There are more than a million patents that are currently unexpired and even though many are categorized, a patent or patent application may not be found during a clearance search because the key words that were used in the search are not the same words appearing in the patent. A letter may be required to put the alleged infringer on notice. Even when a letter is sent and received, if the letter is not worded correctly, it may not constitute notice, it may be considered as a general announcement and advertisement that licenses are available. Thus, it makes sense that the threat of enforcing one’s intellectual property in the press certainly is not a suitable avenue for giving notice to an alleged infringer. And a press announcement is not going to stop the entity that is knowingly infringing your product anyway. Therefore, the patent and the published patent application is the best tool for telling the world about your invention entails what the boundaries of the patent, your property, entails. From there, you can inform each infringer as to the means they have taken to infringe your protected property, but you have to tell them how the patent is infringed.

A patent has three main parts, the specification where the invention is described; the figures, which in combination with the specification, assist in describing and disclosing the invention; and the claims, which claim exactly what the invention is. For a patent to be infringed, each and every limitation of a claim must be present in the allegedly infringing product. For the lay person, it is difficult to recognize a limitation in a claim. More often than not, patent attorneys write the claims. Many times the lay person looks to the specification to determine what the invention is, and true it is in there, but the claim is where the legally significant language arises, and most importantly, it is the claims that are infringed, never the description of the invention in the specification. For a patent to be infringed, not every claim needs to be infringed. The infringement of one claim is enough.

The claims are written in a language that distinctly claims the invention. Admittedly, the language is stilted and uses a fair amount of legalese. The claim sets the boundaries for the intellectual property regardless of what is described in the specification. Often the claims are written in broad terms to gain the broadest subject matter for the inventor. For instance, a claim may include a heterojunction bipolar transistor (HBT) made from compound semiconductor materials. The specification expounds upon and describes HBT’s made with AlGaAs/GaAs. But in the claim above, all HBTs are covered, including those made with AlGaN/GaN. A good patent attorney, worth his or her salt, will list in the specification other materials such as the AlGaN/GaN transistors so that coverage is assured. Therefore, a very broad boundary can be set giving the inventor a lot of property, which is exactly what the inventor wants.

If you move your company towards a new product or technology, you should have a clearance search performed to avoid such boundaries. The last thing you want to do is develop a customer base and then leave them short-changed because you are prevented from producing and selling the product. The clearance search includes key terms of the technology that you intend to incorporate. If a patent turns up and the claims are extremely close to the product you intend to sell, manufacture or even import, then some changes may be made to your product so that the product avoids infringement. I unfortunately have to say this, but you should consult a patent attorney when a clearance search is required, and you should have the attorney evaluate the search and analyze the relevant patents. After all, the patent attorney works with patents everyday, creating, analyzing and giving opinions about patents. So the patent attorney should better understand the patents that show up in the search. And when the patent attorney gives you an opinion, get that opinion in writing. Should someone come to a different conclusion later on, the opinion may help you avoid a willfull infringement charge which may result in triple damages. When damages are millions of dollars, the lawyer’s opinion can be a worthwhile insurance policy. But most importantly, the opinion shows that you are respecting the property rights of others.

The respect should be returned by others as well. If you, a patent owner, suspects that someone may be infringing your patented process or product, you should contact an attorney for help. The attorney can guide you through the steps necessary to make sure the alleged infringer is given proper notice. This may be a simple letter that spells out what patent is infringed and how that patent is infringed. As stated earlier, if you are actively making a product you should make sure that it is properly marked with the patents that are contained within it, even if you have contracted someone else to make the part or product for you. It is your responsibility to make sure this is done. If it is not, damages that you seek can be substantially reduced.

If notice to an alleged infringer is by letter, have an attorney draft the letter. If it is not properly worded, the letter may not constitute notice, and damages may not be forthcoming if the alleged infringer is not on notice. And by all means, if you know someone is infringing, do not lay in wait until the infringer has operated for a long period of time. For example, do not send the alleged infringer a letter and then do nothing for eight years. You will be hard-pressed to collect the full extent of damages. Since the alleged infringer never heard from you again, he continued with his operation thinking that you agreed that he was not an infringer.

If you have intellectual property, by all means, protect, assert and enforce your rights, but do it with respect. You put a lot of time into creating the property and you do have a right to it. Likewise, you have the right to tell the world that you will assert your rights in a press release, but is that the right place? What happens if you take action against one and not another because you honestly did not know about that other? Will publicizing the fact that you are pursuing infringers make licensing negotiations tougher? Will your competitors and licensees help you in this endeavor? Your assertions may make them dig in and find ways around your patent, and was that really what you wanted, a “design-around?”

On the other hand, you do not want to use another’s intellectual property without the owner’s permission, especially when you know you are infringing. You have the right to design around it, but if you are using it and/or you need that important piece to enable your product, take a license if it is offered, even approach the owner and negotiate the license in good faith and once you get the license, uphold the terms of that agreement. Remember, you may have a patent or two that the other party can use, and you may be able to work out a trade or a more reasonable rate for the one you need.

Remember, we are where we are today because everyone contributed to the vast pool of knowledge. True, some of us own individual pieces, valuable pieces, but we did not get those pieces by ourselves. We were led to that property by others. All of us contributed, at least in some small way, and we will continue to contribute, and as a result, we can all gain.

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