Microchip v. Luminary Micro Frequently Asked Questions (As of August 17, 2006)
Latest Update
On August 14, 2006, Luminary Micro and Microchip jointly filed formal motion with the US District Court of Arizona (see Motions 8.1 – Motion to Stay) requesting that proceedings in this case be stayed pending outcome of the USPTO reexamination of the of the patents involved in this case. On August 17, the Court granted this motion (see Court Orders 3.2 – Order Staying Proceedings) delaying further legal action between Luminary Micro and Microchip until the validity of the three Microchip patents discussed below has been thoroughly examined by the USPTO.
What's this all about?
On April 10, 2006, Microchip (MCHP) filed a lawsuit against Luminary Micro see Complaints 1.1 – Microchip complaint against Luminary Micro claiming that Luminary Micro's 28-pin Stellaris™ series of ARM® Cortex™–M3 32-bit microcontrollers infringe three of Microchip's patents.
What are the issues?
Fundamentally there are three issues addressed in this document:
- Do Luminary Micro's 28-pin products infringe Microchip's patents?
- Are Microchip's patents valid?
- Is Microchip motivated to defend its patents or is Microchip attempting to stifle competition?
How long will it take to resolve the issues?
Patent Litigation in the United States is an unpredictable and lengthy process. The issues could settle as quickly as this year, or several years from now. As discussed in this FAQ, Luminary Micro continues undaunted with a strongly held position that Luminary Micro does not infringe, Microchip's patents are invalid, and Microchip's motives are tainted.
Do Luminary Micro products infringe on Microchip patents?
First, it must be understood that Microchip's claims relate only to the LM3S1xx members of the Stellaris family of products (see here and here), which are 32-bit MCUs in 28-pin packages.
These claims have no bearing on Luminary Micro's recently announced 48-pin LM3S3xx products (see here, here, here, and here).
In its complaint, Microchip claims that the 28-pin Stellaris devices infringe on three U.S. patents:
- 5,847,450 (the ‘450) 'Microcontroller having an n-bit data bus width with less than n I/O pins',
- 6,483,183 (the ‘183) ('Integrated circuit (IC) package with a microcontroller having an n-bit bus and up to n-pins coupled to the microcontroller') , and
- 6,696,316 (the ‘316) 'Integrated circuit (IC) package with a microcontroller having an n-bit bus and up to n-pins coupled to the microcontroller').
The original patent is the ‘450 granted in December 1998. The ‘183 is a continuation of the ‘450, while the ‘316 is a continuation of the ‘183.
Microchip apparently claims ownership of the idea of a microcontroller having fewer external pins than the width of its internal ALUs. Microchip's patents provide no specific details of how this invention is manifested.
Luminary Micro does not believe that its products infringe on Microchips patents regardless of the validity of these patents and denies Microchip's assertions in its court filing see Responses to Complaints 2.1 – Luminary Micro response to suit responding to Microchip's suit.
Are the patents that Microchip is asserting valid?
Microchip was granted the three patents in question based on information provided by Microchip to the US Patent and Trademark Office (USPTO) indicating that there was some novelty in their claimed invention.
Microchip filed a virtually identical lawsuit against Zilog see Complaints 1.2 – Microchip complaint against Zilog in September 2005. On January 10, 2006, Zilog filed challenges to the validity of all three of the Microchip patents at the USPTO (see see ‘450 Actions 4.1 – ‘450 01 10 Request for reexam, see ‘316 actions 5.1 – ‘316 01 10 Request for reexam and see ‘183 Actions 6.1 – ‘183 01 10 Request for reexam). In its request for reexamination, Zilog requested Ex Parte status for the ‘450 and ‘183 patents and Inter Parte status for the ‘316. Inter Parte status allows the requestor, Zilog, more active participation in the reexamination process.
In each of the three patents, the USPTO granted Zilog's request and ordered reexamination of the patents (see see ‘450 Actions 4.2 – ‘450 03 01 Grant for reexam, see ‘316 Actions 5.2 – ‘316 02 28 Grant for reexam and see 183 Actions 6.2 – ‘183 02 15 Grant for reexam). As a result of this reexamination, the patent infringement lawsuit against Zilog has been stayed by order of the U.S. District Court until the reexamination has completed see Court Orders 3.1 – USDC Order granting stay for Zilog.
As is standard practice, even though the patents are inexorably linked, the challenge to and reexamination of each is handled as an independent process. As might be expected, the Inter Parte reexamination of the ‘316 is proceeding at a more rapid pace than those of the ‘450 or ‘183.
On March 20, 2006 the USPTO issued a Non-Final Action see ‘316 Actions 5.3 – ‘316 03 20 Non-final action rejecting all fourteen claims of the ‘316 based on a multiplicity of directly relevant prior art indicating that the Microchip ‘316 patent contained no new invention.
The process of patent reexamination is a lengthy one and does not end with the Non-Final Action. Microchip has attempted to amend the ‘316 patent and to establish new claims in the face of the USPTO's complete dismissal see ‘316 Actions 5.4 – ‘316 04 20 Microchip response and amendment. Discussion of the specific claims is beyond the scope of this document but these new and amended claims have been disputed by Zilog see ‘316 Actions 5.5 – ‘‘316 05 19 Zilog comments after non-final action. The USPTO will review inputs from both parties as well as the results of its own research before issuing a final ruling. This process typically takes 3 to 12 months.
The case of the ‘183 reexamination has proceeded similarly but without a determination by the USPTO as of this date. Seeing the results of the ‘316 cause, Microchip has filed new and amended claims for this patent as well see ‘183 Actions 6.3 – ‘183 04 14 Microchip response and amendment and Zilog has filed a reply showing fundamental flaws with these see ‘183 Actions 6.4 – ‘183 06 14 Zilog reply to Microchip amendment.
Interestingly, if amended as proposed, the ‘183 patent would clearly not be applicable in any way to Luminary Micro's products. Microchip's proposed amendments for the ‘183 patent limit the scope of the patent to microcontrollers with the following characteristics:
- 8-bit data bus with 8 pins or fewer,
- dual in-line package,
- power pin on opposite side of package from ground pin, and
- power and ground pins on diametrically opposite corners.
Are the ‘450, ‘183, and ‘316 patents valid?
A final determination from the USPTO will take considerable time to issue. It is clear that the Microchip patents were deeply troubled from the start and issued on shaky ground. The existence of multiple sources of prior art and a significant absence of details necessary to substantiate the claim of invention is usually fatal for a challenged patent.
Is Microchip's claim against Luminary Micro a search for justice or a misuse of the U.S. justice system?
As of January 10, 2006, Microchip was put on notice by the USPTO that challenges to these three patents had been initiated. Detailed prior art supporting this challenge was provided at this time.
Stating that "substantial new questions of patentability" has been raised, the USTPO notified Microchip that reexaminations had been ordered for the patents as follows:
- February 14 — Order granted mandating ‘183 reexamination
- February 28 — Order granted mandating ‘316 reexamination
- March 1 — Order granted mandating ‘450 reexamination
On March 20, 2006, the USPTO issued its Non-Final Action on the ‘316 patent rejecting all fourteen of the claims contained in this patent.
On April 10, 2006, Microchip filed a patent infringement suit against Luminary Micro in U.S. Federal Court. Microchip did not attempt to contact Luminary Micro to discuss any alleged patent violations, and Luminary Micro's first notification of the law suit came from Microchip's press release announcing the filing of the lawsuit. The lawsuit was filed just two weeks after Luminary Micro's initial public product introductions, and coincidentally two weeks before the scheduled closing of its second round of fund raising.
As of this date, Microchip has not filed a patent infringement law suit against Freescale, ST, TI, Atmel, or any other manufacturer of low pin-count MCUs — just Zilog and now Luminary Micro. In the case filed against Zilog, even with the fundamental flaws inherent in the three patents, it is possible that Microchip could believe itself to be on sound legal standing. In the case filed against Luminary Micro in April, having already received the USPTO's rejection of all claims in the ‘316 patent, it is difficult to surmise this to be true.
Microchip would have suffered no harm and lost no standing by allowing the USPTO to complete the reexamination process before launching a legal attack on Luminary Micro. Why file at this time?
Stifling competition? Interfering with a new competitor's engagement with customers? Breaking the capitalization cycle? These are all potentially powerful motives.
