color template for FaraTech overheads

Intellectual Property Prospecting to
Identify Opportunities and Collaborators
“…to be known as the company that changed the focus of
electrochemical engineering from the art of complex chemistries to the
science of pulse/pulse reverse electric fields…”
~50+ Patent Portfolio
E.J. Taylor
Faraday Technology Inc
JenningsTaylor@FaradayTechnology.com
D. Scott Koorndyk
Dayton Development Coalition
skoorndyk@DaytonRegion.com
Water Technology Innovation Cluster Innovation Conference
Dayton, OH
May 22, 2012
Outline
o Introduction to Faraday Technology Inc
o Patent Property Analogy
o Patent Citation Analysis
o Case Studies and Examples
o Summary
Introduction to Faraday
Faraday’s Technology Platform
Electrochemical Engineering with Pulse/Pulse Reverse
in Contrast to DC
 Robust  Environmentally Friendly
Electrochemical Machining, Polishing,
Deburring, Through-Mask Etching
Electrodeposition/Plating
Water Related Embodiments
Recycling of Rinse Water
A
B
Chromium
Coatings from
a TriValent
Bath
Copper Interconnects
C
Commercial Validation
Technology development begins conceptually and is demonstrated at the
bench-scale and developed through /-scale validation.
Technology/IP Alignment
Pilot-Scale Validation
Cell
IP: Issued
7,553,401
(6-30-09)
Design
Bench-Top Feasibility
Further IP
Enhancement
IP: CIP
Pending
11/836,903
(8-10-07)
Novel
Flow
Production-Scale Validation
IP: Pending
12/431,030
(4-28-09)
APPARATUS – PROCESS
(-)
5
1
5
(+)
2
4
4
3
Figure 1: Diagram of pilot-scale cell for 200
mm wafer metallization/planarization.
Secondary
and Tertiary Current
Distribution:
Chemistry/Waveform
Parameters, Temperature
(-)
(+)
 Throwing Power, Feature
Size/Shape
(-)
Primary Current Distribution:
Agitation, Anode-Cathode Design and Spacing
Cell
Geometry
Panel Uniformity
Must be Optimized Before Implementing
Process
(+)
Process
Parameters
OPEN INNOVATION
o Licensed numerous patents
o Sold eight patents
 Competitive Advantage
Investment Discovery
Research
Dollars
Knowledge
Innovation
Market
Dollars
Patent Property Analogy
Intellectual Property?
35 USC §261
“…patents shall have the attributes
of personal property…”
Patents are often referred to as
intellectual property?
Property Analogy
Tangible Property
Intellectual Property
 Deed
 Claims “metes and bounds”
 Title Search
 Examination
 Survey
 Prior Art Search citations
 Ownership
 Assignment
 Pay Taxes
 Pay Maintenance Fees
 Charge Rent
 Charge License Fees
 Sell/Purchase
 Sell/Acquire
 Repossessed
 Abandoned
 Trespass
 Infringe
 Mortgage
 Debtor-in-Possession Loan
Patent Citation Analysis
Citations During Patent Examination
I.
Background
o Not explicitly used to reject patent application
o Identify neighboring patent(s)
 (property/buildings)
II.
Novelty/Obviousness – §102/§103 (AIA §102)
o Explicitly used patentability arguments
o Previously patented in whole or part
 (clear title?)
Background Prior Art Citations
Public Domain
Prior Art Patent
Neighbor
Patent Issued
Owned Property Rights
Patent Application
Desired Property Rights
Prior Art Patent
Neighbor
Prior Art Patent
Neighbor
Background Prior Art Citations
Patent Issues
“As Claimed”
Public Domain
Prior Art Patent
Neighbor
Patent Issued
Owned Property Rights
Prior Art Patent
Neighbor
Prior Art Patent
Neighbor
Motivation to Combine/Collaborate?
Original IPR
Augmented
Public Domain
Prior Art Patent
Neighbor
Patent Issued
Owned Property Rights
Prior Art Patent
Neighbor
Prior Art Patent
Neighbor
§102/§103 Prior Art Citations
Public Domain
Prior Art Patent
Patent Issued
Owned Property Rights
Patent Application
Desired Property Rights
Patent Issues
Claims Limited
by Amendment
& Cancel
§102/§103 Prior Art Citations
Public Domain
Prior Art Patent
Acquired Patent Rights
Patent Issued
Owned Property Rights
Original IPR
Acquired
Motivation to Combine/Collaborate?
Public Domain
Enhanced Patent Rights
Patent Issued
Owned Property Rights
Original IPR
Acquired &
Augmented
Forward/Backward Citation
Backward Citation {Patents cited (i.e. “cited by”) by the subject patent} :
o
Prior art cited by the patentee during prosecution of the subject patent
application,
•
Patentee (Inventor) identified and submitted to USPTO (IDS)
•
Examiner (USPTO) identified (search)
Forward Citation {Patents citing (i.e. “that cite”) the subject patent}:
o
Citing of the subject patent as prior art during examination of subsequently
filed patent applications,
•
Patentee (Inventor) identified and submitted to USPTO (IDS)
•
Examiner (USPTO) identified (search)
Citation Tracking
Forward/Backward Citation Tracking from:
1.
Google (More/Even More/Patent Search):
http://www.google.com/patents?hl=en
2.
United States Patent & Trademark Office (Advanced Search: ref/(#,###,###):
http://patft.uspto.gov/netahtml/PTO/search-adv.htm
3.
IPVision (Registered User and Agreement Consent):
http://www.ipvisioninc.com/kiosk
While all sites provide the same information for free, IPVision provides nice
assignee/inventor tracking!
Case Studies and Examples
6,558,231 Electrochemical Machining
Backward Citation
o Patentee IDS
o Examiner search
6,558,231 Electrochemical Machining
Forward Citation
o Patentee IDS
o Examiner search
6,558,231 Electrochemical Machining
Faraday 6.558,231
 Field of Use License
o Semiconductor
o SS300 Series
o Valves/fittings
 Field of use License
o Aerospace
o Ni and Ti alloys
o Jet engine components
Boston Scientific 7,153,411
Narrowed
35 USC §102
in View of Faraday ‘231
 New Application
• 40 to 50% Reject Rate
• NIH proposal/award
• Working with six Stent OEMs
6,750,144 Electrochemical Deposition
PATENTED
2004
Faraday #6.750,144
(Sequential Deposition for Multiple
Features)
DISALLOWED
2005
Large Chip Maker #2004/0188260
(Method of Plating a Semiconductor
Substrate)
‘260 application was rejected in light of Faraday patents
6,750,144 Electrochemical Deposition
Non Final Rejection
Forty-Six Claims Rejected
o
Two Counts of Novelty
o
Four Counts of Obviousness
Based on Three Faraday Patents
Final Rejection
RCE  Final Rejection
 Purchased Faraday Semiconductor
Patents
6,080,504/5,084,144 NanoCrystalline
6,080,504/5,084,144
Callaway Golf 7,473,190
o Electrochemical Deposition of Fuel Cell Catalysts
o 89 Forward Citations!
My Favorite
Patent Classification
Patent Examiner Catalogs by Class/Subclass
Class 210 Liquid Purification or Separation
…patents directed to treating water or waste liquid,
(1) process and apparatus for
(a) separating a component from
(b) purifying or
(c) effecting a change in water or waste liquid, …;
(2) process of treating liquids in general and treating liquid compositions of either
general or diverse utilities;
(3) apparatus not provided for in other classes, …;
(4) filter materials or compositions peculiar to the above-mentioned processes; and
(5) processes for purification of liquids containing hazardous or toxic waste to
produce a nonhazardous or nontoxic product.
Subclass 703 Effecting Flotation
…dissolved or dispersed …causing it to float.
Patent Prospecting Summary
Patent Citation Analysis
o Important source of
• Opportunity identification
• Collaborator identification
o Complimentary to technical literature review
• Literature: technical understanding and technical feasibility
• Patent: technical feasibility and commercial interest
o Distinct from technical literature
• Examiner review for novelty/non-obviousness
• Represents significant investment by patentee (~$35,000)
• Claims and differentiation from prior art