IMECAS v. Intel Series Cases of Patent Infringement Disputes

Institute of Microelectronics of the Chinese Academy of Sciences v. Intel Corporation, et al. in the Series of Patent Infringement Disputes

Initiate protection of patent rights against Intel Corporation

On April 10, 2017, due to Intel Corporation being suspected of infringing the relevant patent rights registered under the name of the Institute of Microelectronics because Intel Corporation imported, offered for sale of and authorized sale of “Core” series processors for desktops and laptops, and desktops and laptops containing the above “Core” series processors, the Institute of Microelectronics of the Chinese Academy of Sciences (the “Institute of Microelectronics”) invited several law firms to hold a meeting to discuss and study the matter related to filing of a lawsuit against Intel Corporation to protect the rights of the Institute of Microelectronics, and Xu Xinming, the chief lawyer of the China Intellectual Property Lawyers Network, attended the meeting as an invited lawyer. Lawyer Xu Xinming and other participating lawyers jointly brewed and formulated a work plan. Generally, they would force Intel Corporation to negotiate with the Institute of Microelectronics through litigation and finally reach a settlement with the Institute of Microelectronics. This marked the official launch of the patent rights protection lawsuit by the Institute of Microelectronics against Intel Corporation, etc.

Related patents involved in the rights protection launched by the Institute of Microelectronics

The rights protection launched by the Institute of Microelectronics involves two invention patents, both of which are related to semiconductors.

(I) The first invention patent

The first patent on which the rights protection launched by the Institute of Microelectronics is based is an invention patent with the name of “Semiconductor Device Structure, Method for Manufacturing the Same, and Method for Manufacturing semiconductor Fin” and the patent number of 201110240931.5. This patent relates to a semiconductor device structure with fins and the method for manufacturing the same, as well as a method for manufacturing semiconductor fin, including 14 claims in total, of which claim 1 and claim 8 are independent claims, and their contents are as follows:

1. A method for manufacturing the semiconductor device structure comprises: 

forming a fin in a first direction on a semiconductor substrate:

forming a gate line in a second direction, the second direction crossing the first direction on the semiconductor substrate, and the gate line intersecting the fin with a gate dielectric layer sandwiched between the gate line and the fin; forming a dielectric spacer surrounding the gate line; and performing inter-device electrical isolation at a predetermined position, wherein isolated portions of the gate line form independent gate electrodes of respective devices.

8. A semiconductor device structure, comprising:

a semiconductor substrate; and a plurality of devices formed on the semiconductor substrate. Here, each of the devices may comprise:

a fin extending in a first direction; a gate electrode extending in a second direction, the second direction crossing the first direction, and the gate electrode intersecting the fin with a gate dielectric layer sandwiched between the gate line and the fin; and dielectric spacers on opposite lateral outer sides of the gate electrode. Here, the gate electrodes of respective devices adjacent to each other in the second direction may be formed from one gate line extending in the second direction, and the dielectric spacers of the respective devices adjacent to each other in the second direction may be formed from one dielectric spacer layer extending in the second direction. The gate line may comprise a first electrical isolation at a predetermined position between the adjacent devices. The dielectric spacer layer extends only on the outer sides of the continuous gate line.

(II) The second invention patent

The second patent on which the rights protection launched by the Institute of Microelectronics is based is an invention patent with the name of “Semiconductor Structure and Method for Manufacturing the Same” and the patent number of 201010269260.0, which includes 19 claims, of which claim 1 and claim 9 are independent claims, and their contents are as follows:

1. A semiconductor structure includes:

a semiconductor substrate;

a channel region formed in the semiconductor substrate; 

a gate including a dielectric layer and a conductive layer and formed above the channel region;

source and drain regions formed at opposing sides of the gate;

first shallow trench isolations embedded into the semiconductor substrate and having a length direction parallel to the length direction of the gate;

and second shallow trench isolations, each of which abuts the outer sidewall of the source or the drain region and abuts the first shallow trench isolations,

in which the source and drain regions include first seed crystal layers abutting the second shallow trench isolations, and the top surfaces of the second shallow trench isolations are higher than or as high as the top surfaces of the source and drain regions.

9. A method for fabricating a semiconductor structure, comprising:

providing semiconductor substrate; forming first shallow trench isolations and second shallow trench isolations;

forming a gate including a dielectric layer and a conductive layer and having a gate length direction parallel to the length direction of the first shallow trench isolations;

and forming source and drain regions at opposing sides of the gate, the source and drain regions comprising first seed crystal layers disposed at lateral sides of the gate and abutting the second shallow trench isolations,

wherein the second shallow trench isolations are formed at sidewalls of the source and drain regions and abutting the first shallow trench isolations. and the top surfaces of the second shallow trench isolations are higher than or as high as the top surfaces of the source and drain regions.

The lawsuits of rights protection lasted for several years, and finally the Institute of Microelectronics and Intel Corporation reached a settlement

In February 2018, the Institute of Microelectronics filed a lawsuit with Beijing High People’s Court against Intel (China) Co., Ltd. (“Intel China”), Dell (China) Co., Ltd. and Beijing Jingdong Century Information Technology Co., Ltd. due to infringement of the patent No.20110240931.5, requiring the defendants to stop infringement and compensate the Institute of Microelectronics for the loss of RMB 200 million. In October 2019, the Institute of Microelectronics filed two lawsuits with Beijing Intellectual Property Court against Lenovo (Beijing) Co., Ltd. (“Lenovo”), Intel Corporation, Intel China and other companies due to infringement of the Institute of Microelectronics’ patent No.201010269260.0, requiring the defendants to stop infringement, and requiring the defendants to compensate the Institute of Microelectronics for the loss of RMB 10 million in the third lawsuit.

Intel Corporation filed three requests with the China National Intellectual Property Administration for declaration of invalidation of the patent No.201110240931.5 successively, leading to the subsequent administrative litigation. In the second invalidation procedure, the China National Intellectual Property Administration decided to declare claims 8, 10 and 14 invalid, that is, to declare part of the patent rights invalid.

The China National Intellectual Property Administration declared some of the rights to the above patent No.201010269260.0 invalid, and maintained the validity of the patent rights on the basis of the revised claims 1-19 submitted by the patentee on September 4, 2020.

In July 2022, the Institute of Microelectronics reached a settlement with Intel Corporation.

Enlightenment from this case

According to the relevant provisions of the Patent Law, the amount of compensation for a patent infringement shall be determined on the basis of the actual losses incurred to the patentee as a result of the infringement. If it is difficult to determine the actual losses, the amount of compensation may be determined on the basis of the gains which the infringer has obtained from the infringement. If it is difficult to determine the losses incurred to the patentee or the gains obtained by the infringer, the amount shall be reasonably determined by reference to the multiple of the royalties for this patent.

The special feature of this case is that the patentee, the Institute of Microelectronics, is a pure scientific research institution, and it does not use the patents asserted in this case, nor does it authorize others to use the patents asserted in this case, so the amount of compensation can only be determined according to the benefits obtained by the infringer due to infringement. However, because it is difficult to obtain the specific number of infringing products imported and sold by the infringer, it is also objectively difficult to determine the amount of compensation according to the benefits obtained by the infringer due to infringement. Therefore, the only bargaining chip of the Institute of Microelectronics is to require the other party to stop infringement, i.e. prohibition, which is exactly what the other party fears. The Institute of Microelectronics used the prohibition as a bargaining chip to finally succeed in forcing the other party to reach a settlement with the Institute of Microelectronics.