Chip Firm Hit By 45-Year-Old Patent

JPMH writes "The Register is reporting that a Taiwanese chip foundry is being sued over two chemistry patents, one over 45 years old. The patents at issue were filed in 1957 and 1964, but are still in force because they were not granted until 1987 and 1992 respectively. The first patent, 4,702,808, details an apparatus and method for initiating chemical reactions by focusing "radiant energy, such as a laser" onto streams of particles. The second patent, 5,131,941 also details an apparatus and method for initiating chemical reactions, but this time radiation is used to provide the energy kick needed to get the compounds to interact."

Comments

The patent system is broken beyond repair

[mikeophile]

Here's how Syndia (and others) are able to keep their patents "on-hold" for an indefinite period until they see an opportunity to bash a company over the head with it.

This quote is from Yale Office of Cooperative Research

One somewhat sneaky but perfectly acceptable way of using continuation applications is to make sure that the disclosure of an original patent application is always pending. Because an unlimited number of continuation applications may be filed, the only requirement being that at least one application in the chain of continuation applications is still pending, it is possible to keep a chain of patent applications alive for a long period of time. This is useful when a technology field is crowded and there are several competitors, and when it's not really certain exactly what the competitor will try to bring to market.

Re:The patent system is broken beyond repair

[SquarePants]

You can't do this anymore. Patents filed after 1995 run for 20 years from the date of FILING. There fore, the longer a patent is pending, the shorter its effective term. This practice, called "submarine patenting" was, in part, the reason. By the way, the inventor of thios patent, Jerry Lemelson, was famous for doing this (he is now dead)

Rest of quote

[mikeophile]

Competitors will often review the claims of an issued patent to determine how to make a competing product that does not infringe the patent, referred to as "designing around" a patent. In this case, the initial claims of the original patent may not be effective in maintaining the monopoly power of the patentee regarding the invention. By filing additional continuation applications whenever an existing patent application is to issue as a patent or whenever the prosecution of an existing patent application is to be terminated, an applicant can make sure that a continuation patent application claiming priority from the original application is always pending. Then, if a competing product is ever produced, the claims of the pending continuation application can be amended, or another continuation application can be filed, so that the claims clearly cover the competing product, ensuring that the product will infringe the new claims.

Rubbish, patents protect years of research!

[wukie]

You avoid any patents on anything you have dreamed up by PUBLISHING IT, even on the internet!

No matter how stupid it sounds, put it in writing, crude drawings or both.

Once you publish, it's PRIOR ART and unpatentable!

Re:Backdated?

[SquarePants]

Backdated is not really a good word for it. Patents filed from 1995 forward have a life of 20 years from the date of filing (not issue). This patent was filed before 1995 and therefore it has a life of 17 years from the date of issue.

Thats a lot of Pending

[m0rphm0nkey]

I've been researching my own patent recently so this is interesting.

Wow, so they managed to keep it pending for 40 or so years. Most impressive. I understand it's actually better to do it that way because once you patent the technology becomes available for reverse-engineering. I thought you could only keep it patent pending for about six years though.

It appears that you can but that the legal ground is a little shaky. Current jurisprudence appears to indicate that this'll get thrown unless unless the chip company caves and settles.

Re:Hrmm, how is this so?

[SquarePants]

I haven't read the article (my bad!) but a U.S. patent gives you the right to sue importers of infringing goods. I assume the two Taiwanese companies were importing their "infringing" chips into the U.S.

Re:and in related news

[SquarePants]

Oops!. Here is the link for the patent for toast

Lemelson Notorious Patent Abuser

[Anonymous Coward]

Lemelson "the Patent King" was notorious for abusing the patent system. Articles discussing his abuses can be found in many publications. Perhaps the most comprehensive article on him is in Fortune: http://www.fortune.com/fortune/investing/articles/ 0,15114,373291-3,00.html Defenders against these frivolous patents have a website at: http://www.lemelsonpatents.com/

Re:You sound like the idiot

[dsgrntlxmply]

You cannot make any such conclusions from the face of the issued patent. You would have to examine the "wrapper" (file history of the application) to learn the real story.

Lemelson is infamous for these sorts of "submarine" patents, kept on the slowest of snail's paces in the examination process by amendment after amendment.

After enough iterations over the years, the application is finally allowed to gel on some concept just a little ahead of the documented state of the art, and the hook is set.

Then the patent gets issued and the shakedown begins.

Now that changes in patent law have applications being published some reasonable interval after being submitted, submarining should be much more difficult to perpetrate.

Jerome Lemelson "The Patent King" expose

[Anonymous Coward]

These patents were created by Jerome Lemelson "The Patent King" Fortune Magazine ran a very long article on his exploits two years ago:

It would be appealing to view Lemelson as part of the great American tradition of the small inventor battling the rapacious corporation. Certainly there have been plenty of people who have seen him in this light. The distinguished writer Tom Wolfe once hailed him as a "genius" in a laudatory article. Two of the most prestigious institutions in the country, MIT and the Smithsonian, have allied themselves with his name. To many small inventors, Lemelson is a figure of heroic proportions.

Lemelson may well have been a genius: He earned 558 patents (some came after his death), which leaves him four places behind the inventore-di-tutti-inventori, Thomas Edison. But his was a different kind of brilliance altogether. In truth, his most lucrative patents were the product of a masterful exploitation of the patent system, and they created a huge legal web that to this day ensnares corporations. Critics--especially the many businesses he has sued--portray Lemelson as the anti-Edison. They contend that he never invented the key technologies for which he had the patents. Even one of Lemelson's former attorneys, Arthur Lieberman, questions whether Lemelson was an inventor in the layman's sense of the word. Rather, he says, Lemelson would figure out where an industry was headed--and then place a patent claim directly in its path. "In many cases, Lemelson didn't patent inventions," says Lieberman. "He invented patents."

The Lemelson litigation and licensing program--which has been masterminded over the past dozen years by a wily lawyer named Gerald Hosier--is unprecedented in its size and scope, and has become the leading edge in a wave of patent litigation. Even as personal-injury and product-liability suits--the bane of most large corporations--have been declining, federal patent lawsuit filings have increased 60% since 1993.

***

Lemelson would grind down the examiners by submitting "jumbo" applications that stretched to more than 100 pages. "There's no way that you could read an entire application in the case of the jumbo applications," says Miller. Not only were they huge, they could be incredibly vague; some patent examiners began referring to Lemelson as "Black Box Jerry" because of his tendency to offer sweeping notions with very little technical detail.

And then there were the delays. Until that 1995 law changed the rules, a newly issued patent had a 17-year life span--during which time nobody was supposed to be able to use the idea without paying for it. But a patent application could be delayed through something called a "continuation." During that process, applicants were permitted to amend, modify, or add claims to their inventions. As long as the inventor could persuade an examiner that the new claims were consistent with the original specifications, he could even go so far as to incorporate somebody else's technology into his own patent application.

Nobody ever sought continuations the way Lemelson did. Some of his applications had a half-dozen continuations, each of which could add years to the process. Sometimes Lemelson would be informed that one of his patents was about to be issued--and respond by filing a continuation, inexplicably creating another delay.

But as any savvy patent practitioner knows, his action wasn't inexplicable at all. Consider: Lemelson first submitted some of his key technological patent applications in the mid-1950s. But thanks to all the delays--delays often triggered by Lemelson's continuations--many of them weren't issued until the '80s and '90s. By then, though, Lemelson had amended them to include real products that had come on the market--which he could claim to have invented because he had applied for the patent back in the '50s! And because the patent only took effect when it was i

Patent workaround

[DarkMan]

Ok, firstly, please read the patent. It is not as trivial as it may appear from the few lines description.

It doesn't strike me as earth shatteringly novel, but then, most patents never have. It's written in usual obfuscated patent speak, which doesn't help.

The workaround: It is quite specific about collimated beams of radiation. So stick a lens in the way, de-collimate your beam, and the patent no longer applies.

If you are putting the laser through a window, then a couple of lenses, to de-focus the beam, and then focus it in the reaction zone will do the trick.

I'm not sure how this related to chip fabriacation, but I'm going to hazard a guess that it's in a CVD style deposition stage. The only time that precise focus would be needed is if your etching by laser onto a surface. In which case, you don't have a flow of matter.

This will not work if you are reflecting a collimated beam around so that it crosses the reaction zone multiple times.

Any fabiration engineers want to elucidate on where this patent might apply? Specifically, would a lens (I'm thinking of a power of around -1 uD) stop the system from working?

However, working around the patent may be considered a tacit admission of it's validity, and thus is a tatic in opposition to the legal challenge.

How Did I Know Before I Even Looked?

[Compulawyer]

Somehow I knew who the inventor was on these patents before I even looked -- Jerome Lemelson. Lemelson is infamous in the patent world as the "king of the submarine patent." Back when Lemelson was active, he would file applications and delay prosecution until he had defendants to sue. He would then prosecute the patent and sue when it issued. Because patent applications are held confidential while pending, others using the technology claimed in Lemelson's patents would have no idea that the patents existed until issuance, thus the submarine analogy.

These actions are almost universally seen by practitioners as abuses of the patent system, NOT as appropriate uses. Thankfully, in most instances current PTO procedure prevents these abuses. However, this type of prosecution tactic, even though it resulted in a patent issuing, still may not ultimately be successful because of a doctrine called "prosecution laches."

Generally, the doctrine of laches applies to protect a defendant when a plaintiff has sat on its rights for too long. The doctrine of prosecution history laches, very simply put, states that a patentee who has delayed prosection for too long may not enforce its patent once it issues. I am not saying that this is the case here; that is for a court to decide. But I do feel the need to note that this doctrine was recently "revived" by courts after a long period during which the doctrine was never even discussed, much less applied.

You may wonder who the patent holder was in the case that recently "revived" the doctrine of prosecution history laches. His name, I believe, is Jerome Lemelson.

Re:How Did I Know Before I Even Looked?

[Anonymous Coward]

Parent is same as post #6281763. Parent gets 5 rating while 6281763 gets zero.

Must be that /. rating system that was designed by experts in game theory, etc.

In any event the case is here

Here is the relevant text:
Lemelson argues that the passage of the 1952 Patent Act, specifically 35 U.S.C. ÂÂ 120 and 121, entitling continuation and divisional applications respectively to the filing dates of their parents, foreclosed the application of laches. Section 120 provides that if âoe[a]n application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States . . . by the same inventor shall have the same effect, as to such invention, as though filed on the date of the prior application . . .â 35 U.S.C. Â 120 (1994). Section 121 provides that âoea divisional application which complies with the requirements of section 120 of this title [ ] shall be entitled to the benefit of the filing date of the original application.â Id. Â 121. These sections provide the backbone for the modern continuation and division practice.

Lemelson asserts that by passing these two sections, especially allowing the continuation practice, Congress abrogated the defense of prosecution laches. But the legislative history and commentary from the authors of the 1952 Act suggest no such intent. Prior to 1952, continuation practice was governed by common law rather than statute. âoeSection 120 appeared in the statutes for the first time in the Patent Act of 1952. Prior to 1952, continuing application practice was a creature of patent office practice and case law, and  120 merely codified the procedural rights of an applicant with respect to this practice. . . . The legislative history of Section 120 does not indicate any Congressional intent to alter the Supreme Courtâ(TM)s interpretation of continuing application practice.â Transco Prods. Inc. v. Performance Contracting, Inc., 38 F.3d 551, 556-57, 32 USPQ2d 1077, 1081 (Fed. Cir. 1994). This practice was in existence when the Supreme Court decided Webster and Crown Cork; thus the defense of prosecution laches and the continuation practice coexisted. See Thomas G. Eshweiler, Ford v. Lemelson and Continuing Application Laches Revisited, 79 J. Pat. & Trademark Off. Socâ(TM)y 457 (1997).

There is nothing in the legislative history to suggest that Congress did not intend to carry forward the defense of prosecution laches as well. To the contrary, a careful reading of the history and commentary on the 1952 Act shows an intent to maintain the defense. Shortly after the passage of the Act, P.J. Federico, one of its original drafters, gave a series of lectures across the country to educate patent groups about the new Act. The lectures were transcribed, edited, and published. P.J. Federico, Commentary on the New Patent Act, 75 J. Pat. & Trademark Off. Soc'y 161 (1993) (reprinted from 35 U.S.C.A. 1954 ed.). Prior to publication, Federico âoesubmitted drafts of the commentary to [Henry] Ashton and the Drafting Committee for suggestions . . .â Paulik v. Rizkalla, 760 F.2d 1270, 1277 (Fed. Cir. 1985) (en banc) (Rich, J., concurring). The Drafting Committee consisted of Judge Giles S. Rich, late of this court, and Paul Rose. See Giles S. Rich, Congressional Intent â" Or, Who Wrote the Patent Act of 1952, in Patent Procurement and Exploitation (BNA 1963), reprinted in Nonobviousness â" The Ultimate Condition of Patentability (John F. Witherspoon ed., 1980). Federicoâ(TM)s commentary is an invaluable insight into the intentions of the drafters of the Act.

The defenses available to an accusation of infringement were incorporated into section 282 of the then new Act.

Re:Ok, now I understand!

[Anonymous Coward]

The reason this patent took so long is that the inventor [Lemelson] kept adding clauses. He is rather notorious for doing this. Many big corporations are angry about this, and claim that he deliberately abused the system to game the system, delay approval of his patents, and modify them to encompass work that was really developed by others.

But of course corporations are all evil, so we can't possibly be on their side, nosiree.

Re:With Friggin Laster Beams...

[Call Me Black Cloud]

It appears they didn't wait...it seems they've been fine tuning them for years (what, you didn't review the patents yourself?!?). From one of the patents:

This is a continuation-in-part of Ser. No. 592,968 filed 3/23/84 now U.S. Pat. No. 4,666,678 and a continuation of Ser. No. 737,446 filed 10/29/76 which is a continuation of Ser. No. 05/165,445 filed 7/26/71, now abandoned and a continuation-in-part of Ser. No. 05/012,082 filed 2/17/70, now abandoned which is a continuation-in-part of Ser. No. 04/710,518 filed 3/5/68 now U.S. Pat. No. 3,566,645 which is a continuation-in-part of Ser. No. 04/501,395 filed 10/22/65 (now U.S. Pat. No. 3,371,404) which is a continuation-in-part of Ser. No. 03/668,561 filed 6/27/57 abandoned.

Re:With Friggin Laster Beams...

[drdale]

Actually the way the Feynman story ends is pretty funny. The government advisor who had approached him got him to sign a contract selling his three patents to the government for $1 each; all of the other scientists signed the same contract. The government actually had no intention of actually paying the scientists any money; the $1 fee was just a legal formality. But Feynman insisted on getting his $3, and eventually the advisor paid him out of his own pocket. Feynman bought treats for all of the scientists with the money, and told them how he paid for it all. So then they all went to the advisor demanding their money!

Re:With Friggin Laster Beams...

[afidel]

More like common practive before 1997(?) when patent extensions were fixed, basically by revising a small part of your patent you could extend the filing deadline by 5(?) years each time, so by continuously modifying the patent you could put of granting of the application until the underlying technology was widespread and then go after people who in good faith believed they were using unencumbered technology. This is no longer possible because of reforms put in place specifically to stop this tactic, now a patent if valid from 1 year from the filing date with a one time extension of several years for patents in certain situations.

lemelson is a patent whore

[borg]

lemelson, the patent originator, should be well known to the slashdot crowd, but on the internet, institutional memory is an oxymoron

the delay in patent filing is not due to USPTO ineptitude. rather, this is classic lemelson tactics:

1. stake an overly broad patent claim
2. when patent office declines patent on grounds of it being too general, rewrite it, trying to adjust claims such that it takes into account techinical innovations that have occurred since #1
3. repeat steps 1 and 2 until the patent office grants you a patent: congratulations, you've just gotten a patent on someone else's work!

for an example, google for "lemelson" and "machine vision." (here's a link for the google impaired.) briefly, lemelson patented the idea that some sort of machine could do quality inspection of items coming off of an assembly line. he had no invention, he had a wish. he ammended and ammended and ammended that patent for 30 years before it was accepted. in the meantime, laser bar code readers had been invented (by someone else), and he had changed the wording on his patent application to include that technological development. Viola! he invented laser bar code readers, ex post facto, and his estate went on a suing spree.

FWIW, the USPTO changed the policies that allowed this in the mid 90s. still sucks.

For those who care

[Theatetus]

In case anyone is actually curious, US Patent #1 was issued to Samuel Hopkins in 1790 for a new apparatus and process to make potash.

#2 was something about candles, and #3 was a flour mill

The patent was signed by George Washington himself (government was much smaller back then; that same year, Washington and Hamilton personally reviewed the bids for the first ever Federal construction project, a lighthouse near Norfolk, VA).

Re:wrong patent number

[J. Random Software]

A better story:

Eureka! You've just invented time travel. But the awful truth is that you're not alone. In fact, scientists have been inventing time travel since 1814.

But if you have a time machine, it really doesn't matter who invented it first. All that matters is who gets to the Patent Office first. And by "first" we mean on opening day. Because nothing suits a time machine like US Patent Number 1.

Re:With Friggin Laster Beams...

[pedro]

Wonder how much it actually cost in paperwork to pay the scientists.
As recently as 5 yrs ago, the cost for the state of Illinois, where I live, to cut a check, ANY check, was $52.
That's right, folks. Your $1.72 state income tax refund check cost an additional FIFTY TWO F**KING DOLLARS to issue!
This was from the very mouth of a state treasury official who was attempting to reform the gawd awful mess.