Microchip patent dispute between state university and manufacturer. STC.UNM v. SAMSUNG

Microchip patent dispute between state university and manufacturer. STC.UNM v. SAMSUNG

A patent is a set of exclusive rights granted to the inventor of an invention.  An inventor gains a patent in the United States by filing a patent application with the United States Patent and Trademark Office.  A patent application must demonstrate that the invention is new, useful and not obvious.  The United States Patent and Trademark Office will assign a patent examiner to review the patent application. If the patent application meets all the criteria set forth by United States patent law, the inventor will be granted a patent on the invention.

A United States patent grants its owner the exclusive right to make, use, sell and import the invention described in the patent, in the United States.  If someone other than the patent owner attempts to exercise one of these exclusive rights that can be considered patent infringement.  A patent owner can enforce their rights by filing a lawsuit in Federal District court.  A patent infringement lawsuit can include a request for an injunction to stop patent infringement as well as a request for monetary damages for patent infringement which has occurred.

A patent is like any other piece of property that can be bought and sold.  An inventor must be named on a patent application, but once a patent application is granted the inventor can transfer the patent to another party.  Many inventors choose to sell or assign their rights to a patents to a company that is better equipped to exploit the patent.  Also employment contracts frequently require employees to assign patent rights to their employer.  This practice is also common in the academic world.  Universities require academic staff to assign their patent rights to the university or an intellectual property holding company operated by the university. The university then licenses the patents to manufacturers.  These licensing agreements are an important source of income for the university.  For that reason patents held by universities are closely guarded to ensure a steady revenue stream.

A case which illustrates a university protecting its patent interests is STC.UNM, v. SAMSUNG ELECTRONICS CO., LTD, 6:19-CV-000329 (W.D.TX 2019).  The plaintiff in this case is a research nonprofit organization connected to the University of New Mexico in Albuquerque, New Mexico. For 20 years the organization has supported researchers at the University.  Those researchers have disclosed over 1,700 inventions which turned into 500 patents.  The plaintiff  licenses the inventions assigned to it and reinvests the proceeds into its research and development activities.

One of the patents assigned to the plaintiff relates to a method of manufacturing microchips.  United States Patent Number 9,142,400 entitled, “A Method of Making a Heteroepitaxial Layer on a Seed Area.” was granted in 2015 and assigned to the plaintiff.  The patent relates to a method of creating semiconductor microchips, specifically a method of building circuits that extend up, off the surface of a microchip.  This method allows more densely packed and power efficient microchips to be created.

The defendant in this case is a major manufacture of microchips which are used my many major manufacturers of consumer electronics.  The defendants use a method of manufacture that allows them to build circuits up off the surface of a microchip.  The plaintiff’s contend that the defendant’s method of manufacture infringe on the ‘400 patent. In September 2018 the plaintiff contacted the defendant to attempt to license the technology to the defendant, but the defendant declined to do so. The plaintiff then filed the present lawsuit.

Given the fact the defendant’s declined an invitation to license the plaintiff’s technology and avoid litigation, it must be assumed that the defendant believes they have a defense.  Whether that defense is non-infringement or that the patent is invalid, we will have to wait and see how the defendant responds to the complaint.

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