Patriot Scientific/TPL Group vs. Matsushita Electric et. al.*

1. David vs. Goliath Patriot Scientific/TPL Group vs.Matsushita Electric et. al.* +Fujitsu, Panasonic, JVC, Toshiba, NEC… Long delayed, combination of ring oscillator and CPU, contested as obvious UC Berkeley, Center for Entrepreneurship and Technology IEOR 190G Patent Engineering, Feb 2, 2009 George Shaw, MS EECS

2. Many Aspects to Case • Fall 1988 Group forms to develop 32-bit CPU • - Russell Fish, Chuck Moore CPU (patents 1989) • - George Shaw Systems, Software • - Others Software, Applications • OKI Semiconductor prototype FPGA • Nanotronics, Inc. 1991-1994 • Patriot Scientific 1994 – • TPL Group later…

3. Moore & Fish pushes the limits Due to the risk of failure, OKI won’t let Moore & Fish build aspects of the patented design, at issue, mostly, the variable speed clock. Prototypes work! CPU not licensed after 18 months… Moore and Fish go separate ways.

4. Patents are Expensive • Fish’s rights get acquired by Nanotronics who gets acquired by Patriot Scientific, who pay for patent work • Delaying office actions to keep patent expenditures low for the moment • Delays expire, finally claims are filed and over several years in late 1990s, seven patents granted, 7-10 years after filing. • Who owns the patents? Moore or Patriot (Fish)? • Who gets to license? Who makes money? Who invented what? • Patriot sues TPL (Moore) • After 18 months, they kiss and make up. TPL licenses and they split the money (after expenses).

5. Licensing and Litigation • TPL finds many, many companies are infringing on patents. Intel and AMD are first to license. • Delay in processing and enforcing the patents allowed technology to come into wide use. • Variable speed clock makes fast, cheap devices (most interesting patent) • The technology they developed is in your home, on your desk, in your car… it's in your pocket. Its in computers, cameras, printers, and cell phones.

6. Licensing and Litigation • Big Japanese players refuse to license • TPL brings suit

7. Technology Background • Silicon transistor speed varies with manufacturing process, voltage, temperature • In 1989 speed ratios: • Process variations 2:1 • Voltage 1.3:1 • Temperature 1.1:1 • Overall ~3:1 • Must design for worst-case conditions • Speed grading is costly • Give up performance to ensure reliable operation (over-clocking today)

8. Ring Oscillator . • Around since vacuum tune era • Oscillators are precise and are expensive • Often CPU only needs to be fast enough • Inverter: • Ring oscillator used to test process speed

9. Technology at Issue • Ring oscillator connected to a CPU and designed to operate no faster than the CPU • Can run as fast as possible but won’t run too fast—or can run slower if desired • Saves $$ in oscillator cost, circuit board space, and power • Automatically varies in speed by process, voltage and temperature (no special circuitry)

10. Defendant Litigations Claims • Obviousness—but it hadn’t been done. Risk? • Moore limited success, Patriot did not use it. • Specification somewhat vague. • Specification complete enough to teach usage. • Not usable because not used. • Claim construction—specific wordings, trying to narrow application. • Patents not enforced for 7 years after grant.

11. Results • In Dec 2007…

12. Lessons • Keep ownership of invention clearly designated in one entity. • Make the specification broad but clear • Make the claims broad but vague