ESS states to be a wholly owned subsidiary of Imperium Partners Group on its web site. Conexant was recently acquired by Golden Gate Capital and its relation with Imperium Holdings is unknown. The five patents are:
- Patent 6,271,884: Image Flicker Reduction with Fluorescent Lighting.
- Patent 6,838,651: High Sensitivity Snap Shot CMOS Image Sensor.
- Patent 6,838,715: CMOS Image Sensor Arrangement with Reduced Pixel Light Shadowing.
- Patent 7,064,768: Bad Pixel Correction While Preserving Features.
- Patent 7,109,535: Semiconductor Device for Isolating a Photodiode to Reduce Junction Leakage.
The case was filed in the US Texas Eastern District Court by Kaye Scholer LLP of Washington, D.C. March 18, 2011 under case number 6:2011cv00128.
I doute a lot that they can effectively defend their claims. A lot of them are discutable. The patent is delivered simplfy using confusing words.
ReplyDeleteThey have to try to do something with those worthless patents.
ReplyDeleteThis is another fascinating clash.
ReplyDeleteI think that going after a handset maker rather than an image sensor supplier offers the potential advantage of the defendant's in-house staff being comparatively ignorant of the inner workings of allegedly infringing parts. That knowledge gap combined with prospects of high litigation costs could lead to relatively quick settlements without much technical scrutiny.
However, going after all these handset makers at once invites them to go to their suppliers for expert knowledge, and the latter have every reason to help out if so many large customers come knocking on the door at the same time. Instead of a sequence of isolated targets, there's a group with the mutual interest and resources to put up a stiff fight.
It should be fun to watch the fireworks on this one.
While I pretty much agree with your analysis, CDM, most likely we won't see any fireworks. Just some filing a year or two from now dismissing the case for some kind of settlement.
ReplyDeleteWe won't know if it is $1 or $10M each. And several (8 or 9) of our people (image sensor community)will probably be picking up a little extra consulting money.
Trolling by non-inventors and non-maufacturing for-profits should really be curtailed by law.
I quickly skimmed the patents and my personal opinions are:
ReplyDelete'884 Fluorescent flicker. Priority date: 9/99.
I am pretty sure most people had solved the flicker problem the same way in camera products by this date. The details will be in the claims.
'651 High sensitivity. Priority Date 3/28/02. I expect there are many other interfering patents on this topic. Claim 1 fails to mention a plurality of pixels which affects claims 1-17. Claim 18, a method claim, was well known in the community so I am not sure this would stand given the many products already on the market at that priority date time.
'715. Shadowing. Priority date 4/30/2002. Probably interference with Micron's 7,351,945 with priority date of 4/27/2001, nearly a year earlier.
'768 Bad pixel correction. Priority date 3/20/2002. I think this patent will be hard to defend due to products on the market by this time with various bad pixel correction logic. Bad pixel correction was of course well investigated before the priority date. I think it will also be hard to prove infringement to a jury in view of prior art.
'535 Isolation. Priority date 8/22/2001. I can't comment on this too much. It seems isolation for trenches was well established for DRAM and image sensors by this date but proving it might be tedious. I think this is around the time trench isolation was replacing LOCOS for image sensors but not sure.
My personal conclusion: Imperium could make a little money is this effort just because of the nuisance factor. I think a jury trial would go against Imperium but the risks of one claim sneaking thru is enough to warrant a small reasonable settlement.
I don't like no-value-added patent-holding companies doing patent trolling, and Imperium fits that mold, so I am a bit biased. Of course they have full rights to do this but it seems against the original intentions of the patent system. And I would be conflicted consulting for any of the entities listed since I believe Caltech is suing some of these entities with (much earlier) JPL-based patents. I do think it is ok for non-profit universities to collect royalties, esp. as that money goes back into higher education. But, this is just my personal philosophy.
Eric,
ReplyDeleteThank you for summarizing the patents.
As for the patent holdings, I believe the whole patent ecosystem needs to be changed to accommodate today's world. As it stands now, selling patent to such holding appear to be the only way for small companies to sue juggernauts without the risk to be instantly killed by a counter-suit.
Talking about the future, I think the open-source approach is more productive than the patent protection, in electronics, anyway. If we look at the image sensor industry as a whole, the open source approach would force companies to be more innovative, move faster and, may be, spend more money on engineering and less on litigations.
The open-source solution is not a solution to sensor, in general analog circuits. In this kind of devices, a small improvement needs a lot of effort and investment. An open source approach will kill the innovation because you can never innovate faster than the copy-cat. In software, this can work, simply because it's too hard to understand fully the IP in a sea of codes. This can also work for digital IP (written in VHDL) which is merely different than software code.
ReplyDeleteThe main problem in this story is that the litige will be simply juged by people who are qualified enough for this. Especially in USA, the examinators of patent office have a poor technical niveau. In Europe, it's a little bit better. Then the juge at court can not understand neither the technical claims in detail (this is quit normal).
So some guys profite from this system. You can simply see how it's difficult to break an issued patent! But someone can always get a patent by reducing the claim to almost nothing.
@ "a small improvement needs a lot of effort and investment."
ReplyDeleteDeveloping Android or Symbian or Erlang is a comparable, if not bigger effort. Still, it can be done in open source model.
@ "you can never innovate faster than the copy-cat."
It's not easy to copy-cat modern sensor. The pixel and process tuning takes a lot of time and, probably, requires no less knowledge that developing it from scratch. Also, sometimes analog circuits can be tricky to understand and copy.
you under-estimate copy-cat's intelligence!
ReplyDeletethey are alos expert as you, so your "small" innovation can be copied easily. And also sometimes, it's just a question of time and money to try a lot of different configurations to find the good one. The copy-cat can pick your "innovation" up much much faster and cheaper than you do.
Do you think it's the patent system that stops the companies from copying now? Many big companies have broad cross-licensing agreements, where one company can use other's ideas. I have not heard a single story when engineers in a big company were restricted in their work by the patent legal departments.
ReplyDeleteFurthermore, many cases of patent infringement are just double invention, when "great minds think alike" - two engineers independently come to the same idea. Just one of them happens to do it earlier than the other one. In that case, why the second one should pay a license fee to the first? - the second engineer spent the same effort and money, just happened to be late with his idea.
Looking at the open industry as a whole, each company could chose its business model. For example, one company might emphasize cheap manufacturing - it legitimately copies other's ideas and makes it cheaper than others. Another company can invest in service and support and charge premium for that. Yet another company could generate best ideas, jumping from one new idea to another, ahead of copiers. Yet another company could provide broad customization to win customers. Extended temperature range, smaller pixels, integration with optics and various interfaces - everything can be a differentiator.
After all, we have many flavors of Linux, Android, Symbian, miriads of web browsers based on the same Gecko engine - you can say the people are copying, but they are quite successful and legal open-source businesses.
I strongly support the US patent system. Of course it could be improved but it still helps to protect small businesses from being crushed, allows them to introduce technology in a transparent way, and with the right license, promotes technology adoption and insertion. Cross-licensing is a good example of how the system works well among large businesses.
ReplyDeleteAny company can do "open source" IP. Just write a paper and not write a patent. If it was a good thing to do, everyone would do it.
"I have not heard a single story when engineers in a big company were restricted in their work by the patent legal departments."
OK, consider this your first story. I consult for an incredibly large company known best as being a "fast follower" and I can tell you that they take great care to avoid infringing on existing IP. It is one of the key decision issues when considering to commercialize something new. I am sure this policy comes about from some painful lessons in patent law but it works and that is a good thing, even if a big nuisance.
I support Eric's opinion. An old chinese book on business said that there are tow possible business protection barriers: 1) knowhow and 2) business scale. For the example that Vladimir cited, these giants can protect themself by business scale. They can put their systems as open source and make money on otherside of the things. But small companies have to sruvive by their knowhow and these knowhows come from innovations and good ideas. If there is no effective protection for these small companies, creative individuals, there will not be innovation at all.
ReplyDeleteAs Eric's said, these BIG companies respects carefully the patents and IP because there could be a serious consequence if they don't respect them. You can just imagine one second that there were no such patent protection system, they will not hestitate one second to pickup your idea.
There are always some profiters of a system, but you cannot find a better system than the actual patent system which has of course a lot of things to improve.
-yang ni
I agree with EF. I think it is because of intellectual property rights that small companies got bought by big companies. Otherwise the big companies can easily copycat intellectual properties.
ReplyDelete@ "Any company can do "open source" IP. Just write a paper and not write a patent."
ReplyDeletePapers are not really open source. Open source means that any subsequent work, including any further improvements on the paper's ideas, or other designs which incorporate the paper's idea as a part, etc - all these must be declared as open source as well. And this nested openness must be guaranteed by law.
Sorry, I've extremely busy day today. I'll add more on the evening.
One side effect of the complicated and the 'made for slow societys of hundreds of years ago' patent system is the need for lawyers. For a large corporation this is not a big deal, but when a small company needs to have more lawyers than engineers on it's payroll it does not improve the pace of developement. The system is in need of dramatic changes, though it is unlikely they will arrive as the ones with the most to lose are the ones with the largest bankrolls and the most politicians in their pockets.
ReplyDeleteby open source you are referring more to the model of free software. You can have open source with a vast variety of licensing models. What you are describing is a reference to the GPL. There are plenty of open source licenses that don't require the conditions that you favor.
ReplyDeleteIt's probably true that this case will end up being about going-away money. Still, it would be nice to see a knock-down, drag-out fight for once.
ReplyDeleteA patent is supposed to be a clear description of an idea that is new, useful, and not obvious. However, the vast majority of patents I've read or skimmed (let's say in the low thousands) are vague to the point of incomprehensibility. It takes a huge effort to understand what the idea actually is, another huge effort to determine if was new, useful, and not obvious, and another huge effort to identify and verify infringement.
Even for companies that are not trolls, that are actively trying to develop new ideas and new products, patents have devolved to a kind of elaborate gamesmanship. Technical and legal staff want something deliverable, and it's a lot easier to churn out many weak patents than a few strong ones. And even if you only have weak patents, as a group they're a potent defense against another company suing because the prospect of actually slugging it out is so painful that both sides will settle.
I think it would be difficult to make and enforce a law to stop trolling. The real trolls would set up phantom business structures that meet the letter of the law, then keep doing what they do. Everyone else would be under pressure to set up similar structures to preserve the property-like rights of patents for purposes of securing loans, raising capital, bankruptcy planning, probate, etc.
If you are going to limit transfer of patent rights, however, why not go all the way and permanently attach them to inventors and individual heirs? Companies wouldn't own patent rights, they would only license them from named inventors.
I suspect that in this scenario there would be a dramatic surge of interest in science and engineering careers, possibly motivated by higher pay tied very closely to performance. There would still be non-inventor technical positions, but every person in one of those jobs would constantly be on the lookout for interesting, patent-worthy ideas.
Companies would try to circumvent this new business model in various ways, which would probably drive inventors to work on their own or with small groups of trusted colleagues. In the end I'm pretty sure that capable individuals given this kind of opportunity would figure out how to outmaneuver organizations in a way that has a large net global benefit.
Personally, I don't have a very favorable view of either trolls or non-trolls. I have had two interesting ideas over ten years as an independent inventor and have patented both. I have found it all but impossible to get companies to even talk with me about them.
Empirically, if I approach a larger entity - large company, start-up, government lab, university lab, whatever - I have about a 59% chance of getting no reply, about a 39% chance of getting a boilerplate rejection, and about a 2% chance of a reasonable reply from someone who clearly took the time to consider my idea.
I guess that's at little bit of self-indulgent venting of frustration, but hey, I'm human.
Um, yeah.
If any of you guys on the inside want to open a door and take a look at some ideas, I'm out here knocking.
Knock, knock. Knock....
@ "What you are describing is a reference to the GPL."
ReplyDeleteNot necessarily GPL. Many other open source licenses state that any improvements or descendants of an open source product must be declared as open source as well.
Just imaging how different would be today's imaging world if, for example, the pinned photodiode idea has been declared under a sort of GPL.
@ "If there is no effective protection for these small companies, creative individuals, there will not be innovation at all."
Talking about small companies with no broad crosslicensing agreements with big guys, it just looks like patent system gives your a protection. Upon a closer look, it makes you more vulnerable. Here's how:
There are, may be, ten thousand of active patents related to the core image sensor technology. Are you sure that your small company does not unintentionally infringe on any of them? Suppose you'd like to find a definitive answer on this. Then you have to go through all of them - a huge effort for a small company. Some of the patents are quite entangled, one needs a help of good lawyer - might be expensive for a small company.
As long as you are a small fish, nobody sues you, probably. But if your business becomes more successful, it would become a more attractive target for such a suit.
So far we only talked about the core imaging patents, but there are much many on the periphery, such as ADC, PLL, I/O, image processing and defect correction, packaging, etc. Big guys are protected by cross-licensing, but what about the small companies? Are you physically able to analyse all these periphery patents to make sure you are not infringing on anything?
My opinion is that small imaging companies are in fact more exposed to the patent litigation risks and, with their limited resources, they are just unable to assess the real situation.
@ "The copy-cat can pick your "innovation" up much much faster and cheaper than you do."
While trying to fend-off copiers, you are also punishing the guys who re-invent what is already patented. The prior art may be even unpublished provisional patent, or hidden at PCT stage, so that the re-inventor might even have no chance to see it. Such a re-inventor spends same effort and resources as the original inventor, what is the logic in punishing him?
@ "I consult for an incredibly large company known best as being a "fast follower" and I can tell you that they take great care to avoid infringing on existing IP.
So, do engineers in this example company routinely scan through hundreds of thousands of pages of patents to make sure that their ideas do not infringe them? Do they go to the legal department each time they bumped into some hard to understand language in these hundreds of thousands patent claims? Your example company probably has international presence, so one needs to check patents in different countries, probably deal with ambiguous Google or Bing translations. Does your example company require its employees to spend time on this?
I'd guess the company in the example is just trying to avoid copying the patents that are already known to its engineers, rather than encourage them do serious search. Am I right?
Looks like I've exceeded the comment length limit. Here is the continuation:
ReplyDelete@ "If any of you guys on the inside want to open a door and take a look at some ideas, I'm out here knocking."
CDM, I'm very sympathetic to individual inventors trying to promote their ideas. I think there are few problems in doing it:
1. Companies afraid of contamination. If a company is working on something similar, and they sign NDA with you and your idea happens to be same as they are working on, you might claim that they stole it. Many companies persieve it as a problem.
2. NIH syndrome. Many engineers do not believe that anybody can make it better than them. So, no need to listen.
These reasons are not new. Carlson, the Xerox copier inventor, knocked for more than 10 years until somebody responded. Even working prototypes made on a pan in his kitchen did not help him much. Eventually, his many times rejected idea turned out to be a huge business:
http://en.wikipedia.org/wiki/Chester_Carlson
"So, do engineers in this example company routinely scan through hundreds of thousands of pages of patents to make sure that their ideas do not infringe them? Do they go to the legal department each time they bumped into some hard to understand language in these hundreds of thousands patent claims? Your example company probably has international presence, so one needs to check patents in different countries, probably deal with ambiguous Google or Bing translations. Does your example company require its employees to spend time on this?
ReplyDeleteI'd guess the company in the example is just trying to avoid copying the patents that are already known to its engineers, rather than encourage them do serious search. Am I right?" "
As you point out, it is impossible to know what applications are already in the system. And, there does not exist a good search system yet for identifying all prior art. Often, even the examiners don't find the prior art.
At that company I referred to, the basic rule is not to just copy someone else's device or method. If one submits a disclosure, there is a patent department that tries to identify problematic prior art. So yes, there is an army of engineers that does this job as best they can. Sometimes that company licenses existing IP & technology, as has been announced here more than once.
I think the problem is not patents per se. The problem is that all patents should be available to license, say, after two years, at some reasonable prescribed rate. This puts an upper bound on the value of a patent and increases its accessibility to all. It would make me happy if the pharmaceutical and agricultural companies did this for example. It would also reduce the motivation for so many patent trolling operations and massive lawsuits. The big money should be in making and selling the product, not in the IP.
@ "The problem is that all patents should be available to license, say, after two years, at some reasonable prescribed rate. This puts an upper bound on the value of a patent and increases its accessibility to all. It would make me happy if the pharmaceutical and agricultural companies did this for example. It would also reduce the motivation for so many patent trolling operations and massive lawsuits. The big money should be in making and selling the product, not in the IP."
ReplyDeleteThis is an interesting idea. Let me think about it. Two years of exclusivity might be more than enough to recover the development expenses for one idea, and far too short for another one.
A unified license cap for all patents might work for cheap to develop ideas and less so for more expensive ones.
Just my first thoughts. I keep thinking...
Maybe the cap could be set according to GAAP R&D expenses used on tax returns, for example, and divided by N active patents held by the company.
ReplyDeleteWe are really off in fantasy land now.
Then individual inventors with zero GAAP spendings would get minimal cap. Also, companies like Qualcomm get, may be, thousands of licensees per some patents, while companies making, say telescope optics, might be happy to get one licensee per patent. Setting the same cap for both might be unfair.
ReplyDelete@ "And, there does not exist a good search system yet for identifying all prior art. Often, even the examiners don't find the prior art."
ReplyDeleteWhat about "counter-patenting" supported by a "Counter-PTO"?
To wit:
When an application issues as a patent, the assignee pays a fee for each issued claim. The total for the patent is set aside in escrow at the C-PTO.
Next, anyone is permitted to look for and propose prior art that invalidates claims. These proposals are filed as counter-patent applications at the C-PTO. There's no examination, so the proposals are accepted as-is, and to discourage noise filings the C-PTO collects a small application fee.
Anyone looking for prior art to invalidate a patent claim in court can search the counter-filings at the C-PTO. If there's material there that they use in the usual places to invalidate a claim, the counter-patent owner gets the escrow fee for that claim. At the end of the patent's life, any remaining escrow fees go back to the owner at that time.
This makes finding prior art a business somewhat like patenting - the first to find and file may get a payout.
If there's a problem with people using C-PTO material in private proceedings and not disclosing that a patent owner agreed that a particular claim was invalid based on a particular counter-patent, there could be additional per-remaining-claim C-PTO escrow collections along with PTO maintenance fees. Then owners would have the incentive of coming clean when a claim is invalidated in order to avoid larger, future losses.
It looks like we can achieve a similar effect by simpler measures: make plaintiff to pay defendant the claimed damages, if plaintiff losses the suit. That is, if company A sues company B for $100M of patent infringement damages, and A losses the suit, than B gets this $100M.
ReplyDeleteThen A would check the prior art much more thoroughly as the price for mistake is high.
Still, it does not solve the main problem - there are way too many patents and no sensor designer can be sure that he does not infringe on something.
Your simpler method involves lawyers and large sums of money. Need I say more?
ReplyDeleteimage sensors world said...
ReplyDelete"Developing Android or Symbian or Erlang is a comparable, if not bigger effort. Still, it can be done in open source model."
Only big companies can do such projects as open source.