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MANAGEMENT OFMANAGEMENT OF

THE PATENT RIGHTTHE PATENT RIGHT

http://stlc2000/STLC/??\???\??.ppthttp://stlc2000/STLC/??\???\??.ppthttp://stlc2000/STLC/??\???\??.ppt

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s PATENTSPATENTS

s TRADEMARKSTRADEMARKSs

COPYRIGHTCOPYRIGHTs TRADE SECRETSTRADE SECRETSs MASK WORKMASK WORK

??

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World Trade Organization (WTO)World Trade Organization (WTO)

Trade Related Aspects ofTrade Related Aspects of

Intellectual Property(TRIPs)Intellectual Property(TRIPs)

International Trade CommissionInternational Trade Commission

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WTO DISPUTE RESOLUTIONWTO DISPUTE RESOLUTION

MECHANISMMECHANISM

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ITCITCKODAK VS FUJI FILMKODAK VS FUJI FILM

KODAK WINSKODAK WINS

WTOWTO

FUJI FILM VS KODAKFUJI FILM VS KODAK

FUJI WINSFUJI WINS

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U.S. PATENTS TOP TEN 2001U.S. PATENTS TOP TEN 2001

1. IBM1. IBM (USA)(USA) 341134112. NEC2. NEC (Japan)(Japan)

19531953

3. Canon3. Canon (Japan)(Japan) 187718774. Micron4. Micron (USA)(USA) 164316435. Samsung5. Samsung (Korea)(Korea) 14501450

6. Matsushita (Japan)6. Matsushita (Japan) 14401440 7. Sony7. Sony (Japan)(Japan) 136313638. Hitachi8. Hitachi (Japan)(Japan) 127112719. Mitsubishi (Japan)9. Mitsubishi (Japan) 1184118410. Fujitsu10. Fujitsu (Japan)(Japan) 11661166

* IBM number one for ninth year in a row* IBM number one for ninth year in a row

USPTOUSPTO

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US PATENTS BY COUNTRY 2000US PATENTS BY COUNTRY 2000

# Patents %Share Country * 1999 # Patents %Change

1 32,924 18.7% Japan 1 32,514 + 1.3%

2 10,822 6.1% Germany 2 9,895 + 9.4%3 5,806 3.3% Taiwan 3 4,526 +28.3%

4 4,173 2.4% France 4 4,097 + 1.9%

5 4,090 2.3% United Kingdom 5 3,900 + 4.9%

6 3,925 2.2% Canada 7 3,678 + 6.7%7 3,472 2.0% South Korea 6 3,679 - 5.6%

8 1,967 1.1% Italy 8 1,686 +16.7%

9 1,738 1.0% Sweden 9 1,542 +12.7%

10 1,458 0.8% Switzerland 11 1,390 + 4.9%11 1,410 0.8% Netherlands 10 1,396 + 1.0%

97,016 55.1% United States 94,091 + 3.1%

* Country of origin is determined by the residence of the first-named inventor

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TOP TEN PRC APPLICATIONS 2001TOP TEN PRC APPLICATIONS 2001

s

TAIWAN*TAIWAN*

1507815078

40% increase40% increase

s JAPANJAPAN 1373613736 39%39%

s UNITED STATESUNITED STATES 89948994 7%7%

s GERMANYGERMANY 34543454 24%24%

s KOREAKOREA 24982498 34%34%

s FRANCEFRANCE 15211521 9%9%

s NETHERLANDSNETHERLANDS 13971397 41%41%

s

HONG KONG*HONG KONG* 13121312 -4%-4%s SWITZERLANDSWITZERLAND 10201020 18%18%

s SWEDENSWEDEN 967967 26%26%

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BUSINESSWEEK 2001BUSINESSWEEK 2001

TOP 100 HIGH-TECH COMPANIESTOP 100 HIGH-TECH COMPANIES

s ASUSTEKASUSTEK 2828s TSMCTSMC 3030s

HON HAIHON HAI 3939s UMCUMC 5353s MACRONIXMACRONIX 7171s

COMPALCOMPAL 7272s VIAVIA 8383

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SOME HIGH-TECH COMPANIES WITH IPSOME HIGH-TECH COMPANIES WITH IP

s INPROCOMINPROCOM s EPITSTAREPITSTAR LEDLEDs TEKCORETEKCORE LEDLEDs CHIMEIOPTOCHIMEIOPTO LCDLCDs TRENDTREND s FAREASTONEFAREASTONE s VERBALTEK*VERBALTEK*

,, ,, ,,PPeople,eople, PProduct,roduct, PProfitability,rofitability, PPatentsatents

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s

s

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s Royalty Base High (Royalty Base High ( vsvs ))

s (Exhaustion of Rights)(Exhaustion of Rights)OEMOEM

squeezedsqueezed

Foundry RightFoundry Right

i f i

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Exhaustion of RightsExhaustion of RightsFirst Sale DoctrineFirst Sale Doctrine

s An authorized sale of a patented product exhausts the patentAn authorized sale of a patented product exhausts the patent

monopoly as to that product. Thus, a purchaser of such amonopoly as to that product. Thus, a purchaser of such a

product from the patent ownerproduct from the patent owneror one licensed by the patentor one licensed by the patent

ownerownermay use or resell the product free of control ormay use or resell the product free of control or

conditions imposed by the patent owner.conditions imposed by the patent owner. Chisum 16.03[2][a]Chisum 16.03[2][a]

s Intel Foundry Right casesIntel Foundry Right cases

s Via PC133 Chipset NationalVia PC133 Chipset National

Via P4x266 Chipset TSMCVia P4x266 Chipset TSMC Is it a SALE or is it a SERVICE?Is it a SALE or is it a SERVICE?

s Supplier licensed?Supplier licensed?

Where is the patent?Where is the patent?

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FIRST SALE DOCTRINEFIRST SALE DOCTRINE

PATENT: CHIPSET IC CIRCUITPATENT: CHIPSET IC CIRCUIT

PATENTEE: INTELPATENTEE: INTEL IC

VIA

MITAC

VIATSMC

ASUS

COMPUTERLAND

YOU

IC

SiS

COMPAQ

INTL COMPAQ

SiSUMC

GIGA

FRYSYOU

NATIONAL

OEM

LICENSED

INTEL

INTEL

X-LIC

BACK

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Sharp 20

?

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EXCLUSIVE RIGHT TO TECHNOLOGYEXCLUSIVE RIGHT TO TECHNOLOGY

POLAROID INSTANT PICTURESPOLAROID INSTANT PICTURES

LICENSING & ROYALTIESLICENSING & ROYALTIES

IBM 40,000 PATENTSIBM 40,000 PATENTS

CROSS LICENSINGCROSS LICENSING

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R&DR&D MANY VALUABLE PATENTSMANY VALUABLE PATENTS

COLLECT LICENSE FEES AND ROYALTIESCOLLECT LICENSE FEES AND ROYALTIES

ROYALTY-FREE CROSS-LICENSEROYALTY-FREE CROSS-LICENSE

DA FEW FAIR PATENTSBALANCING PAYMENT CROSS-LICENSE

NO R&D NO PATENTSROYALTY-BEARING LICENSE

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TAIWAN TECH COMPANIES SHOULDTAIWAN TECH COMPANIES SHOULD

SET THE INDUSTRY STANDARDSET THE INDUSTRY STANDARDs SCANNERSSCANNERS 90+%90+%

s MOTHERBOARDSMOTHERBOARDS 70+%70+%

s NOTEBOOKSNOTEBOOKS 50+%50+%s LCDsLCDs 40+%(?)40+%(?)

s IC CONTROLLERSIC CONTROLLERS

s SEMICONDUCTOR FABSEMICONDUCTOR FAB 70+%70+%

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s s s

s ,,s s

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PATENT MARKETINGPATENT MARKETING

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s (Patent Portfolio)(Patent Portfolio)s (Technology(Technology

Brochure)Brochure)

s (Preliminary Claim Chart)(Preliminary Claim Chart)s (Claim Charts)(Claim Charts)s (Patent Infringement Analysis)(Patent Infringement Analysis)

s (Complaint Filing)(Complaint Filing)s (License Negotiation(License Negotiation))

PATENT MARKETINGPATENT MARKETING

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PRELIMINARY CLAIM CHARTPRELIMINARY CLAIM CHART

BACK

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PATENT ENFORCEMENT ALLIANCESPATENT ENFORCEMENT ALLIANCES

s

FOR CONVENIENCEFOR CONVENIENCE (WHOSE?)(WHOSE?)s RAND = REASONABLERAND = REASONABLE (ROYALTY)(ROYALTY)

AND NON-DISCRIMINATORYAND NON-DISCRIMINATORY (TAKE(TAKE

MONEY FROM ANYBODY)MONEY FROM ANYBODY)

s MPEG-4MPEG-4

s IEEE1394IEEE1394

s CD-ROMCD-ROM

s BLUETOOTHBLUETOOTH

PATENT INFRINGEMENT ANALYSISPATENT INFRINGEMENT ANALYSIS

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PATENT INFRINGEMENT ANALYSISPATENT INFRINGEMENT ANALYSIS1.1. GET THE PROSECUTION HISTORY FILE WRAPPERGET THE PROSECUTION HISTORY FILE WRAPPER

s USE FILE WRAPPER ESTOPPEL TO NARROW CLAIMSUSE FILE WRAPPER ESTOPPEL TO NARROW CLAIMS

2.2.

REVIEW THE CITED PRIOR ARTREVIEW THE CITED PRIOR ARTs IF ACCUSED PRODUCT IS IN THE CITED PRIOR ART IT CANNOTIF ACCUSED PRODUCT IS IN THE CITED PRIOR ART IT CANNOTINFRINGE THE PATENT BECAUSE IT IS ADMITTED PRIOR ART (MAYINFRINGE THE PATENT BECAUSE IT IS ADMITTED PRIOR ART (MAYINFRINGE THE CITED PATENT, HOWEVER)INFRINGE THE CITED PATENT, HOWEVER)

3.3. USE PATENT NEWS SERVICE OR BOUNTY QUESTUSE PATENT NEWS SERVICE OR BOUNTY QUEST

s PROFESSIONAL PRIOR ART SEARCHPROFESSIONAL PRIOR ART SEARCH

s IF FIND PATENT COVERING ACCUSED PRODUCT, PURCHASEIF FIND PATENT COVERING ACCUSED PRODUCT, PURCHASEPATENT THROUGH A THIRD PARTYPATENT THROUGH A THIRD PARTY

s PROMISE NOT TO SUE FORMER PATENTEE ON PURCHASED PATENTPROMISE NOT TO SUE FORMER PATENTEE ON PURCHASED PATENT

4.4. PATENT INFRINGEMENT ANALYSISPATENT INFRINGEMENT ANALYSIS

U.S. PATENT ATTORNEY SIGNED OPINION (AVOID WILLFUL)U.S. PATENT ATTORNEY SIGNED OPINION (AVOID WILLFUL)

6.6. REQUEST REEXAMINATION OF PATENTREQUEST REEXAMINATION OF PATENT

s INVALIDATE PATENT/CLAIMSINVALIDATE PATENT/CLAIMS

s NARROW CLAIMSNARROW CLAIMS

s DURING REEXAMINATION, ANY RELEVANT LITIGATION ISDURING REEXAMINATION, ANY RELEVANT LITIGATION ISSUSPE DED TAKES 1.5 2 YEARSSUSPENDED TAKES 1.5 2 YEARS

US PATENTUS PATENT

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US PATENTUS PATENT

(NON) INFRINGEMENT(NON) INFRINGEMENT

OPINIONOPINIONs MUST BE DONE AND SIGNED BY REGISTEREDMUST BE DONE AND SIGNED BY REGISTERED

US PATENT ATTORNEYUS PATENT ATTORNEY

s IF REASONABLE GROUNDS FOR NON-IF REASONABLE GROUNDS FOR NON-

INFRINGEMENT, IT IS A COMPLETE DEFENSEINFRINGEMENT, IT IS A COMPLETE DEFENSE

TO WILLFUL INFRINGEMENTTO WILLFUL INFRINGEMENT

s DISTRIBUTION DEPENDS ON STRATEGY;DISTRIBUTION DEPENDS ON STRATEGY;GIVE TO OTHER SIDE? GIVE TO CUSTOMERS?GIVE TO OTHER SIDE? GIVE TO CUSTOMERS?

BAKER & MKENZIEATTORNEYS AT LAW

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EUROPE ASIAMIDDLE EAST PACIFIC___________________________________________________AMSTERDAM MILAN BANGKOK BARCELONA MOSCOW BEIJINGBERLIN PARIS GUANGZHOUBRUSSELS PRAGUE HONG KONGBUDAPEST RIYADH MANILACAIRO ROME MELBOURNEF RANKFURT S T. P ET ER SB UR G S HANGHAIGENEVA STOCKHOLM SINGAPOREKIEV WARSAW SYDNEYLONDON ZURICH TAIPEIMADRID TOKYO

ATTORNEYS AT LAW

15TH FLOOR, HUNG TAI CENTER

168 TUN HWA NORTH ROAD

TAIPEI 105, TAIWAN

REPUBLIC OF CHINA

168 15

TELEPHONE: 886-2-27126151

FACSIMILE: 886-2-27169250

NORTH ANDSOUTH AMERICA________________________________________________________

BOGOTA MEXICO CITY SAN FRANCISCOBRASILIA MIAMI SAO PAULOB UEN OS A IRE S MO NT ERRE Y TI JU AN ACARACAS NEW YORK TORONTOCHICAGO PALO ALTO VALENCIADALLAS RIO DE JANEIRO WASHINGTON. D.C.JUAREZ SAN DIEGO

ATTORNEY-CLIENT PRIVILEGED AND CONFIDENTIAL

By Hand Delivery

June 12, 2002

Dr. BBB, President

EXXX Corporation

XXXX

Science-Based Industrial Park, Hsinchu 300

TAIWAN, REPUBLIC OF CHINA

Re: Noninfringement Study of United States Patent No. 5,xxx,xxx

Dear Dr. BBB,

This correspondence represents our response to your request on or about June 4, 2002 that Baker and McKenzie render its opinion on whether specifi

Alxxxx light emitting diode (LED) products of Exxx Corporation (collectively referred to as Exxx LED herein) infringes U.S. Patent No. 5,XXX,XXX (th

'XXX patent) apparently assigned to LLL.

In order to preserve the attorney-client privilege that attaches to this noninfringement study, we advise you that the contents of this opinion

should only be disclosed to personnel of Exxx, your outside counsel and advisors, and business partners having a need to know of our conclusion

in order to make legal and business management decisions.

I. SUMMARY OF CONCLUSIONSBased on our consideration of the XXX patent including its specification, drawings, claims and file history, no claims of the XXX patent will be infringed by

the manufacture, use, sale, offer for sale or importation of the Exxx LED in the United States.

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II. BACKGROUND

In order to facilitate our understanding of the Exxx LED, we studied the specification and claims of the 'XXX patent (attached herewith a

Exhibit A), its prosecution history in the United States Patent and Trademark Office (attached herewith as Exhibit B), and the 768 patent (attached herewit

as Exhibit C) whose embodiments set forth therein, according to Exxx, identically describe the Exxx LED.

We did not perform any separate patent searches. Moreover, our opinion is limited to your specific request, i.e., whether the Exxx LE

infringes the claims of the XXX patent.

III. EXXX LED

Pursuant to your instructions, the embodiments illustrated identically describe the Exxx LED. The Exxx LED includes a p-type window laye

56 of transparent material, such as GaP, GaAsP, GaInP or AlGaAs. See column 4, lines 34-41, and Figure 5A of the 768 patent. Further according to the 76

patent, the Exxx LED also includes a p-type contact layer 58 of GaAsP, GaP, GaInP, or GaAs, formed on the window layer 56, that serves to form an ohmic

contact between the window layer 56 and a conductive transparent oxide layer 60 formed preferably of indium tin oxide (ITO). See Figure 5A, column 4, line

45-52 and 59-61 of the 768 patent. The electrical resistivity of the conductive transparent oxide layer 60 is smaller than that of the contact layer 58. A centr

area in the contact layer 58 is etched to expose a portion of the surface of the window layer 56. See column 4, lines 52-58 of the 768 patent. A semiconducto

substrate 52 is formed on the n-type

IV. LEGAL STANDARDS FOR DETERMINING PATENT INFRINGEMENT

A two-step inquiry is made in determining infringement of a U.S. patent. First, the meaning and scope of the claims at issue must be assessed. Second

the claims must be compared to the suspect device or product. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), affd, 11

U.S. 1384 (1996); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1581-1582 (Fed. Cir. 1996). The first step, interpretation of a claim, is a matter of la

for the Court to determine and should not be delegated to a jury. Markman, 52 F.3d at 977-79. In current litigation practice, courts have held Markma

hearings, named after the leading case, to perform claim construction prior to a trial on patent infringement.

In properly interpreting patent claims, the analysis requires examining: (1) the claim language; (2) the patent specification; (3) the prosecution history;

and, if necessary, (4) extrinsic evidence, such as common or special usage of terms. See, e.g., Markman, 52 F.3d at 979; Lemelson v. General Mills, Inc., 968

F.2d 1202, 1206 (Fed. Cir. 1992); Vitronics Corp., 90 F.3d at 1582. The prosecution history will often be important in deciphering the meaning and scope of

claims because it can clarify what the original application sought and what the applicant found necessary to add or delete in order to procure allowance in the

face of rejections or objections by the Examiner. Lemelson, 968 F.2d at 1207-08. Prosecution history is especially important when the invention involves a

crowded art field, or when there is particular prior art the applicant is trying to distinguish. Id.

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V. THE 'XXX PATENT

The 'XXX patent entitled Light-Emitting Diode with an Electrically Conductive Window was issued on April 16, 1991 based on U.S. Patent

Application Serial No. 452,800 filed in the United States on December 18, 1989.

A. Disclosure of the XXX Patent

In the specification of the XXX patent, the stated objective of the transparent window layer is to minimize current crowding from metal electrica

contacts over the

B. Claims of the XXX Patent

The XXX patent includes a total of 14 claims. The sole independent claims of the XXX patent are claims 1 and 8, with dependent claims 2-7 and 9-14

respectively depending therefrom. Independent claim 1 of the XXX patent is accordingly stated as follows:

1. A light emitting diode comprising:

a semiconductor substrate;

an electrical contact to the substrate;

active p-n junction layers for AlGaInP over the substrate for emitting light;

a transparent window layer of semiconductor different from AlGaInP over the active layers and having a bandgap greater than the bandgap of the activ

layers and a resistivity lower than the active layers; and

a metal electrical contact over a portion of the transparent layer.The only other independent claim 8 of the 'XXX patent is accordingly recited as follows:

8. A light emitting diode comprising:

an opaque semiconductor substrate;

an electrical contact to the substrate;

a first confining layer of a first conductivity type AlGaInP on the substrate;

an active layer of a first conductivity type AlGaInP on the first confining layer;

a second confining layer of a second conductivity type AlGaInP on the active layer;

a transparent window layer of semiconductor different from AlGaInP over the second confining layer and having a lower resistivity than the secon

confining layer and a bandgap greater than the bandgap of the active layer; and

a metal electrical contact over a portion of the transparent window layer.

Dependent claims 2-7 and 9-14, respectively depending from independent claims 1 and 8, are recited in Exhibit A and not repeated herein. See column 5

lines 45 through column 6, line 45 of the XXX patent.

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C. The Prosecution History Of The 'XXX Patent

The U.S. Patent Application Serial No. 452,800 for the XXX patent (hereinafter referred to as the 80

application) was filed in the United States Patent and Trademark Office (USPTO) on December 18, 1989. The 80

application as filed comprised 21 claims, including 3 independent claims. On August 15, 1990, the USPTO issued

first Office Action in the 800 application (hereinafter referred to as the Office Action). According to the Offic

Action, all 21 claims of the 800 application as filed were rejected. See page 1 of the Office Action.In particular, claims 3-4 and 8-21 were rejected under 35 U.S.C. 112, second paragraph, as being indefinite for

failing to particularly point out and distinctly claim the subject matter of the invention in the 800 application. See

page 2 of the Office Action. Claims 1-21 were rejected under 35 U.S.C. 102(b) as unpatentable over and anticipated

by or, in the alternative, under 35 U.S.C. 103 as being unpatentable and obvious over U.S. Patent No. 4,680,602 of

Watanabe et al (Watanabe). See page 3 of the Office Action. With respect to the independent claim 1 which is the

broadest claim in the 800 application, the USPTO Examiner rejected claim 1 under 35 U.S.C. 102(b) as unpatentable

over and anticipated by or, in the alternative, under 35 U.S.C. 103 as being unpatentable and obvious over Watanabe.Watanabe discloses a light emitting diode comprising an opaque n-GaAs semiconductor substrate 1, an electrica

contact to the n-GaAs substrate 1, a first confining layer 3 of n-GaAsP on the n-GaAs substrate 1, an active layer 4 o

GaAsP, a second confining layer 5 of n-GaP, a transparent window layer 6 of InGaP or InGaAsP over the second

confining layer and having a bandgap larger than the active layer, and a metal electrical contact 7 over a portion of th

transparent window layer 6. See column 4, lines 9-33, and Figure 1 of Watanabe. The semiconductors used i

Watanabe are Group III-V semiconductors different from those disclosed in the 'XXX patent.

According to the Office Action, the claimed LED structure of claims 1-21 in the 800 application read on theWatanabe LED comprising an n-GaAs semiconductor substrate with an electrical contact, an n-GaAsP confining laye

on the n-GaAs substrate, an n-GaAsP active layer, a p-InGaP confining layer, a transparent window layer of InGaP o

InGaAsP over the p-InGaP confining layer and having a bandgap larger than the n-

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VI. THE XXX PATENT: NONINFRINGEMENT ANALYSIS

It is our opinion that the Exxx LED does not infringe claims 1-14 of the XXX patent, either literally or under the

doctrine of equivalents.

A. Background

The XXX patent includes a total of 14 claims. The sole independent claims of the XXX patent are claim

1 and 8. Each of claims 1 and 8 specifically recites the limitation of a transparent window layer of semiconducto

different from AlGaInP having a greater bandgap and lower resistivity than the active layers. See claims 1 and 8 othe XXX patent.

B. Construction and Analysis of Claim 1

Claim 1 has been analyzed in detail, as set forth below in claim chart format:

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Claim 1 of the 'XXX patent The Meaning of the Claimed Elements

Preamble:

" A light emitting diode"

Plain Meaning*

Transitional Phrase:

"comprising"

"comprising" is an open ended transitional

phrase, which does NOT exclude additional

unrecited elements.

Claimed Element #1:

a semiconductor substrate;

Plain Meaning*

Claimed Element #2:

an electrical contact to the substrate;

Plain Meaning

Claimed Element #3:

active p-n junction layers for AlGaInP overthe substrate for emitting light;

This is in the prior art as a conventional

structure

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Claimed Element #4:a transparent window layer of

semiconductor different from AlGaInP over

the active layers and having a bandgap

greater than the bandgap of the active layers

and a resistivity lower than the active

layers; and

The transparent layer is disclosed in theWatanabe prior art which recites materials

different from AlGaInP, having a bandgap

greater than the bandgap of the active

layers. The concept of a "transparent

window layer" cannot be claimed in the

'XXX patent as it is admitted prior art. The

transparent window layer must be of

semiconductor material.

Claimed Element #5:

a metal electrical contact over a portion of

the transparent layer.

Plain Meaning

"Plain Meaning" refers to the meaning given to the term by those of ordinary skill in the art (meaning not specifically defined by the patentee in the

specification).

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C. Comparison Between Claim 1 and the Exxx LED

An element-by-element comparison between claim 1 of the 'XXX patent and the Exxx LED is described in claim chartformat as follows (please note that the major focus of the comparison is on whether the Exxx LED includes all of the

elements defined in the claim):

Claim 1 of the 'XXX patent Exxx LED

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Claim 1 of the 'XXX patent Exxx LED

Preamble:

" A light emitting diode"

Yes

Transitional Phrase:

"comprising"

The Exxx LEDs have more elements in the

transparent layer than recited in claim 1 of

the 'XXX patent. However, since claim 1

uses the transitional phrase of

comprising, the additional features of the

LEDs cannot be used as a basis to negate

infringement.

Claimed Element #1:

a semiconductor substrate;

Yes

Claimed Element #2:

an electrical contact to the substrate;

Yes

Claimed Element #3:active p-n junction layers for AlGaInP over

the substrate for emitting light;

Yes

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Claimed Element #4:a transparent window layer of

semiconductor different from AlGaInP over

the active layers and having a bandgap

greater than the bandgap of the active layers

and a resistivity lower than the active

layers; and

No. The Exxx LED does not have a"transparent window layer" since its

structure between the substrate and the top

electrode forms a Shottky barrier to prevent

current flow, contrary to the "current

spreading" transparency of the "XXX

patent's "transparent window layer".

Further, the Exxx LED transparent oxide

layer that is part of its window layer, is not

a semiconductor.

Claimed Element #5:

a metal electrical contact over a portion of

the transparent layer.

Yes

IV

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IV.

SUMMARY OF FINDINGS

A. No Literal Infringement

For at least the reasons set forth herein, there is no literal infringement of independent claims 1 and 8 because the Exxx LED does no

include a transparent window layer of semiconductor as claimed in the 'XXX patent. Since claims 1 and 8 are not infringed, neither ar

claims 2-7 and 9-14 respectively depending from claims 1 and 8. The reasons for no literal infringement are discussed above an

summarized as follows:

(i)

No Literal Infringement of Transparent Window Layer

The

Exxx LED does not have a "transparent window layer" since its structure between the substrate and the top electrode forms a Shottky

barrier to prevent current flow, contrary to the "current spreading" transparency of the "XXX patent's "transparent window layer."

(ii)No Literal Infringement of Transparent Window Layer of Semiconductor

The

transparent window layer as claimed must be a layer of semiconductor material. See claim 8 of the XXX patent. As an insulator, th

conductive transparent oxide layer in the Exxx LED, as part of its window layer, is nota semiconductor.

B. Noninfringement Under the Doctrine of Equivalents

In the alternative, the Exxx LED does not infringe the XXX patent under the doctrine of equivalents.

For at least the reasons set forth herein, in our professional opinion the Exxx LED does not literally infringe the claimed LED in the

XXX patent. For arguments sake, there is a possibility that the conductive transparent oxide layer will be considered as a part of the

window layer in the Exxx LED. The Exxx LED will infringe the XXX under the Doctrine of Equivalents only if, according to the

so-called tripartite test for equivalency, the Exxx LED performs substantially the same function, in substantially the same way, to

obtain substantially the same result, as the claimed LED of the 'XXX patent. For the sole purpose of an analysis under the doctrine of

The

Exxx LED utilizes three layers -- a window layer, a contact layer, and a conductive transparent oxide layer between the conventiona

active layers and the top electrical contact Since one of the layers is made of oxide it is not a semiconductor layer Further thes

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active layers and the top electrical contact. Since one of the layers is made of oxide, it is not a semiconductor layer. Further, thes

three layers taken together are not transparent since the interface between two of them, the window layer and the conductive

transparent oxide layer, form a Shottky barrier that inhibits current flow and thus is not transparent in the sense of the 'XXX patent.

That is, the window layer and the oxide layer in conjunction are not transparent. Therefore, the Exxx LED does not perform

substantially the same function ('XXX current spreading), in substantially the same way (Exxx LED provides selective curren

blocking). The result is enhanced light emission, so that may be the same, although the Exxx LED apparently provides great

luminance than devices based on the 'XXX patent. Note that the 'XXX patent disclosure is not the invention of a light emitting diode

so its function is not light emission, but rather enhanced light emission by avoiding current crowding.

The

idea of a transparent layer is disclosed in the Watanabe prior art reference which recites materials different from AlGaInP, having

bandgap greater than the bandgap of the active layers. Therefore, the concept of a "transparent window layer" cannot be within th

scope of the 'XXX patent as it is admitted prior art.

For a

least the reasons set forth herein, there is no infringement of independent claims 1 and 8 under the doctrine of equivalents. Sinc

claims 1 and 8 are not infringed under the doctrine of equivalents, neither are claims 2-7 and 9-14 respectively depending from claim

1 and 8. The reasons for noninfringement under the doctrine of equivalents are discussed above and further summarized as follows:

(i)

Substantially the Same Function

For a

least the reasons set forth herein and above, the Exxx LED does not perform substantially the same function as the claimed LED in th

XXX patent. The current distribution function of the Exxx LED with a Shottky barrier, if any, is limited to the area under the ohmi

contact layer 58. In contrast, the current spreading function of the claimed LED in the XXX patent is to distribute current throughou

the transparent window layer over the active region therein.(ii)

Substantially the Same Way

For a

least the reasons noted herein and above, the Exxx LED does not perform its function in substantially the same way as the claimed

LED in the XXX patent. The way that the claimed LED in the XXX patent performs its current spreading function is through the sol

use of the transparent window layer. In contrast, the way the Exxx LED performs its current distribution function is by cooperatio

V. CONCLUSIONS

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Based on at least the reasons herein and above, it is our opinion that the Exxx LED, as presently understood

will not infringe properly interpreted claims of the 'XXX patent, either literally or under the doctrine of equivalents.

The foregoing is solely a legal analysis of the infringement issues relating to the 'XXX patent, and should

not be taken as a risk analysis. It is not possible to predict with certainty how a judge or jury would decide the issue o

infringement if presented to them, especially in view of the complexity of the subject matter, and a favorable resulcannot be guaranteed. Should the patent be litigated, the issue of infringement will ultimately rest on questions of law

and fact as developed in the litigation. In addition, despite the clear differences between the Exxxs LEDs and th

claims of the 'XXX patent, there is no guarantee that an overly aggressive third party will not assert the patent fo

business purposes. Moreover, because of issues related to confidentiality, it is our firms policy that this letter canno

be disclosed or made public, without our prior written consent.

Please feel free to contact us should there be any questions regarding this opinion.

Very truly yours,BAKER & McKENZIE

By: ___________________________________

Robert H. Chen, Esq. (Reg. No. 33,847)

____________________________________

Ya-Chiao Chang, Esq. (Reg. No. 43,407)

Enclosures

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,

s

:

:

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s

s

s

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s

AA BB AA s AA BB

AA

BB

s (patent pool,(patent pool, // ))

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THE ENDTHE END

Stan Shihs Smiling Curve

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Stan Shih s Smiling Curve

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