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GIS is extremely pleased to announce that David Fraser, Director of Patent Services, has passed the patent agent exams. David prepared for the patent exams through GIS’ intensive onsite workshops and assignments. GIS is unique among patent analysis and reverse engineering companies in having registered patent agents. It is part of the GIS philosophy that a high level of both patent and technical expertise is required to provide quality patent services. |
You have a patent portfolio. You know the patents and technology in it. However, do you know how it stacks up against the patent holdings of others in the industry? Is your position dominant or are you a bit player? Is the field wide-open or crowded with other patents? The Patent Landscape service from GIS is designed to answer these questions and more. GIS will do a broad analysis of the patents in a particular technology field identifying the players, and the technology involved.
The analysis will answer the following questions:
- Who are the leading patentees in a particular field?
- Within a particular technology, what specific problems are being addressed and what solutions are being patented?
- What are my competitors patenting? What product features may I see over the next year or two?
- How does my patent portfolio compare against the competition?
- Who has patents that I may want to purchase?
- I am planning on introducing a product into a country for the first time. Who are the patent holders in this jurisdiction, and should I try to get a license from them?
These are key considerations relevant to the design and implementation of your patent portfolio management strategy. Leverage from GIS’ patent analysis experience and get the information that enables the right decision. |
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Consumers continue to demand smaller and more powerful electronic products. This, despite the continued miniaturization of semiconductor devices, is driving manufacturers to use 3D multi-chip packaging technology. This is especially prevalent for memory devices incorporating stacked ICs (Integrated Circuits) of the same or different memory types.
3D MCM packaging includes two main solutions: 1) Wire Bond technology; and 2) TSV (Through Silicon Via) technology. TSV is a new promising technology for multi-chip stacking, but still requires additional development and research, especially to reach the required level of cost efficiency. Wire Bonding is a mature technology and is the most popular stacking technique used today. Wire Bonding technology in 3D MCM packaging typically involves several ICs in a stack with wire bonds connecting each die to a common package substrate and sometimes between the ICs as well.
Recently, GIS investigated a BGA (Ball Grid Array) multi-chip package containing a 4 memory IC stack (see FIG. 1). The package incorporates different memory types including two 128M NOR flash memories, a 64M PSRAM, and a 1G NAND flash memory.
FIG 1. Wire Bond MCM stack (side view)
Before performing any signal testing for this device, it was necessary to recognize and produce an I/O signal map from the BGA balls to the die bonds so that the signals being probed could be identified. Typically, this is done by carefully grinding down the package layer by layer to expose traces in each layer of the package substrate and bond wire connections. However, GIS has found that combining the grinding process with X-Ray scanning (see FIG. 2) reduces the time required to perform the trace readback process and produces clearer, more easily understandable results.
In particular, FIG. 2a shows an X-Ray image of the entire package. FIG. 2b shows an X-ray image of the package after the balls of the BGA package and the metal layer contacting the balls have been removed. The X-ray in FIG. 2b was used to perform the package trace readback. In this way, there was no need to continue to polish down to the metal layer shown in FIG. 2b.
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| FIG 2. (a) X-Ray image of BGA package including bottom metal layer with balls attached. (b) X-ray image of BGA package after the bottom metal layer and ball have been removed. |
As part of GIS’ ongoing R&D program, we continue to improve and refine our existing reverse engineering processes and develop new ones.
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This year’s LES Annual Meeting is being held in San Francisco, October 18-21.
GIS is proud to be moderating at two sessions.
Monday, October 19, 2009 4:15 P.M. – 5:30 P.M.
2-D: HTS - How to Buy a Patent, The Controversy: Which Way is Best for Me?
Speakers:
- Derek Nuhn: VP Wireline Technology, Wi-LAN
- Cash Elston: Director of Acquisitions, Intellectual Ventures
- Michael Lasinski: Managing Director, Ocean Tomo
- Carolyn Hayden: Senior Consultant, Global Intellectual Strategies
Tuesday, October 20, 2009 2:00 P.M. – 3:15 P.M.
3-C: HTS - A Worldwide Patent Portfolio: Building a Portfolio to Maximize ROI
Speakers:
- Chuck Neuenschwander; Principle, IPLC
- Emmett Murtha; President & CEO, Fairfield Resources International
- Dr. Richard L. Thurston, Vice President and General Counsel, Taiwan Semiconductor Manufacturing Company, Ltd.
- Pierrette Breton: President, Global Intellectual Strategies
We hope that you will be able to attend. Come see us at the meeting! |
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Quanta Computer Inc. et al. vs LG Electronics Inc.
The Supreme Court’s decision in Quanta Computer, Inc. v. LG Electronics (LGE), Inc. has provided insight into the doctrine of patent exhaustion. In this case, the patents at issue contained method claims relating to computer technology and were purchased by LGE. LGE licensed the patents to Intel in an agreement that authorized Intel to manufacture and sell microprocessors and chipsets using the LGE Patents. However, in a separate Agreement, Intel was required to give notice to its customers that the License Agreement did not extend to products made by combining the Intel components with non-Intel components. Quanta purchased Intel microprocessors and chipsets and then manufactured computers using the Intel parts combined with non-Intel parts. This resulted in a law suit by LGE, which asserted that the combination infringed the patents. In its decision the Supreme Court held that the doctrine of exhaustion applies to method patents. Furthermore, since the License Agreement authorized the sale of components that substantially embodied the patents the doctrine of exhaustion was triggered by the sale of the components. Having the doctrine of exhaustion apply to method claims imposes limitations on the patentee’s ability to enter into licensing agreements with downstream purchasers. However, the ruling has left the potential for crafting License Agreements that clearly define the limitations of an authorized sale to avoid the pitfalls of triggering the doctrine of exhaustion. As such, numerous articles on how to draft License Agreements have been published since this Landmark case. Here, we focus on the importance for Licensors to understand the product landscape of the products covered by the patents so that a licensing program and License Agreements can be tailored to properly protect the patentees IP rights and optimize revenues. In particular, before any Licensing Agreement considerations one should be well informed of the product landscape and potential issues that can trigger exhaustion.
In order to assess when the doctrine of exhaustion is triggered and how to determine whether the sale of a product triggers exhaustion, we review the Supreme Court’s main points outside of any License Agreement. In its decision, the Court affirmed the UNIVIS decision. In that case the respondent (UNIVIS) held patents for finished eyeglasses lenses, and the sale of lens blanks by the licensed manufacturer to wholesalers and finishing retailers who ground the lenses into finished lenses triggered the doctrine of exhaustion. United States v. Univis Lens Co., 316 U.S. 241, (1942). Exhaustion was triggered by the sale of the lens blanks because their only reasonable and intended use was to practice the patent and because “they embodie[d] essential features of [the] patented invention”. 316 U.S., at 249-251. As such, outside of any License Agreement issue, there are two points to consider when considering exhaustion:
- Is the only reasonable and intended use to practice the patented invention; and,
- Does the product to be sold embody the essential features of the patented invention?
In considering reasonable and intended use, in its decision the Court concluded:
- “LGE [had] suggested no reasonable use of the Intel products other than incorporating them into computer systems that practice the LGE patents” 553 U.S. 12 - 13 (2008);
- “[a] microprocessor or chipset cannot function until it is connected to buses and memory” 553 U.S. 13 (2008); and,
- “the only apparent object of Intel’s sales to Quanta was to permit Quanta to incorporate the Intel Products into computers that would practice the patents” 553 U.S. 13 (2008).
Here the Court’s conclusion is based on LGE’s failure to show other uses, the lack of function without the additional parts, and the apparent object of the sales (to provide products that would infringe the patents).
In considering whether the Intel products sold embodied the essential features of the patented inventions the Court concluded:
- “the only step necessary to practice the patent is the application of common processes or the addition of standard parts” 553 U.S. 14 (2008);
- “Quanta was not required to make any creative or inventive decision when it added [memory and buses]” 553 U.S. 14 (2008); and,
- “the final step to practice the patent is common and noninventive” 553 U.S. 15 (2008). The Court also found that the LGE patents did not disclose a new combination of existing parts.
To summarize, the Court considers the final step and bases its conclusion on the application of common processes or parts, a lack of a need for creative and inventive decisions, and a lack of a new combination of existing parts.
As discussed above, this case highlights the importance of carefully considering the product landscape and the scope of protection provided by the patents within a portfolio in a licensing program.
The above considerations of the Court provide valuable insight in determining whether the sale of a product is only for practicing the patented invention and whether the product embodies the essential features of the patented invention. However, in order to properly design a licensing program there remains a need to understand the technology that to be licensed and the markets related to the technology. Technical experts having in-depth knowledge of the technology and related markets can provide a valuable resource for determining the appropriate markets to license. |
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GIS’ Carolyn Hayden is the Founding Chair of the LES Women in Licensing (WiL) Ottawa Chapter. GIS will be sponsoring and hosting the kickoff event on November 3, 2009 and is pleased to announce Angela De Wilton as the guest speaker. Angela de Wilton is a patent agent with more than 20 years experience in the high technology industry.
WiL is dedicated to accelerating the advancement of women in the technology and licensing professions. For more information, please contact chayden@gistrategies.com |
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GIS is proud to announce a completely redesigned and enhanced web site. With a totally fresh appearance and format, the new web site has also undergone significant improvement in the areas of content, navigation, and design. GIS invites you to visit their website at www.gistrategies.com and learn more about who we are, what we do and how we can help you. |
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Patent Portfolio Mining
Patent Reviews
Patent Product Mapping
Product Procurement
Patent Infringement Analysis
Prior Art Searches
Technical Rebuttal
Trial Witness
Patent Valuation
Patent Portfolio Appraisal
Patent Landscape
Patent Divestiture
Patent Acquisition |
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