WIPO (World Intellectual Property Organisation) defines Intellectual Property to be creations of the mind that have been manifested[1]. Inventions form a vital part of intellectual property and the rights with respect to such inventions are safeguarded by means of a patent. A patent is an exclusive right that has been with regard to an invention[2]. These rights are enforced when a patent is infringed. Generally, infringement constitutes commercial usage, making, distribution, or sale of an invention.

35 USC 271 provides for infringement of patents. It states that “whoever without authority makes, uses, offers to sell, or sells any patented invention within the United States, or imports into the United States any patented invention during the term of the patent therefor, or indulges in any aforementioned act, infringes the patent.[3]”Since the patent was granted under US jurisdiction, i.e. Patent Number 6,885,055[4] which was the subject matter of the dispute, the aspect of infringement has to be considered under the perspective of US laws only.

The present invention (Patent Number: 6885055) relates to double-gate FinFET devices and fabricating methods. It further relates to an electrically stable double-gate FinFET device and the method of fabrication in which the Fin active region on a bulk silicon substrate where the device channel and the body are to be formed as a nano–size width and is connected to the substrate and is formed with the shape of a wall along the channel length direction. The innovation is in reducing the length of the transistor gate in order to reduce the size of the semiconductor device and also to make it more efficient in terms of power consumption. In order to understand and appreciate the invention, it is necessary to revisit the basics.

The field-effect transistor is a semiconductor device, which depends for its operation on the control of current by an electric field[5]. It can be regarded as a unipolar device since its operation depends upon the flow of majority carriers only. The advantages of FET over the traditional bipolar transistors are numerous. Not only they develop less noise, FET’s exhibit no offset voltage at zero drain current. Further, as compared to bipolar transistors, they have better thermal stability as well as immunity to radiation. Field-Effect Transistors (FETs) can act as a substitute to traditional bipolar transistors in almost all applications and in particular, have found usage in analog switches, amplifiers, phase shift oscillators, chopper, current limiter, etc. Apart from these, they are now being extensively used as a critical part of integrated circuits owing to their reduced size as compared to bipolar transistors[6].

Intel had been one of the licensors in 2012 when the company unveiled its Tri-Gate transistors. At that time, the Korea Advanced Institute of Science and Technology had contacted the manufacturer regarding the use of its patent in the creation of the technology. Both Intel Corp and KAIST negotiated and signed a patent license agreement in respect of which Intel has already paid an amount of over 9 million dollars to KAIST from the time the finFET technology had been introduced. A series of negotiations were also made with Samsung, but the license agreement could not be reached upon[7].

KAIST alleged that Samsung has infringed its finFET technology patent by producing the devices with finFET technology since 2015[8]. The court found Samsung guilty and imposed a fine of four hundred million dollars that has to be paid to KAIST.

The joint defense, i.e., Samsung, Global Foundries, and Qualcomm first attempted to dispute whether the nature of the preamble is limiting. Simultaneously, Samsung also attempted to invalidate the patent in the US, which, however, failed. They also argued that the patent in question should originally belong to Kyungpook National University instead of KAIST, which was also rejected by the Court. Further, Samsung also argued that the technology currently being used by the company was developed by employees and executives through studies and was significantly different from the finFET technology developed by KAIST. Courts opinion to the defense put forward

However, the Court could not find any difference between the two technologies and observed that the defendant had only limited the patent by exclusively using two gates in their technology, while the patent places no restriction on the number of gates.

The Court held Global Foundries and Qualcomm guilty of infringement. However, the jury only told Samsung to hand over $400 million for damages[9]. Also, if the jury of the US found that Samsung had willfully infringed the patent and on the basis of that reason the Court can triple the number of damages to be paid may go as high as three times, up to 1.2 billion dollars[10].

Samsung’s legal team has openly communicated its willingness to consider all options in order to reach an outcome that is acceptable which may even include an appeal[11]. However, the legal community is of the opinion that an attempt will be made to tie up the matter in a lengthy legal battle in order to negotiate an out of court settlement in the form of a license agreement.

In case of potential infringement, it is often advisable to seek a license agreement with the licensor. The license fee is due only till the term of the patent and the patent becomes free for use after that. Moreover, it also provides technological support from the licensor. Also, it saves the licensee from heavy investments either in Research and development in case the technology is rendered obsolete in a very short period of time. Further, it saves the licensee from any lawsuits, the costs, and consequences of which most often surpass the license fee. But, sound legal and technological advice is necessary in order to properly evaluate and negotiate the terms of the license. And this is where specialized law firms like Khurana&Khurana play a critical role. Hence, “a stitch in time, saves nine” applies perfectly in this case.

Author: Aparajita Kaul, Intern at Global Patent Filing. In case of any queries please contact/write back to us at support@globalpatentfiling.com.