PATNEWS: PTO rules TI invented microcontroller, not Gil Hyatt

[Gregory Aharonian]

More important for historical reasons than any impact on the markets,
but the PTO has ruled that a TI engineer is the inventor of the single chip
microcontroller, not Gil Hyatt, who in 1990 was awarded a patent assuming so.
The following release is from TI. TI had requested that their patent by
released as a SIR - Statutory Invention Registration (for those following
the discussion on when SIRs are used), while Hyatt's claims are cancelled.

Greg Aharonian
Internet Patent News Service
(for info on free subscription, send 'help' to pat...@world.std.com )

U.S. Patent Office Rules TI Engineer
Invented Computer-On-A-Chip

DALLAS (June 19, 1996) -- The U.S. Patent and Trademark Office has
affirmed that Texas Instruments engineer Gary W. Boone is the inventor of the
single-chip microcontroller, a device that revolutionized electronics by
putting all the functions of a computer on one piece of silicon.

The Patent Office ruling, which was just released, is the outcome of a
five-year proceeding to determine whether a highly publicized patent awarded in
the summer of 1990 to Gilbert P. Hyatt, covered an invention made first by Mr.
Boone at TI. The patent office proceeding, known as an interference, focused on
who was first to invent the single-chip microcontroller.

"This ruling rightfully establishes Gary Boone and TI as the inventor of
the single-chip microcontroller, settling the broad speculation that followed
after Mr. Hyatt received a patent. Gilbert Hyatt has absolutely no claim on the
invention," said Richard Donaldson, senior vice president and general patent
counsel for TI.

The Patent Office also granted TI's request for a statutory invention
registration (SIR), which will officially recognize Gary Boone and TI as the
inventor of the single-chip microcontroller. TI holds several patents covering
the commercial implementation of the computer-on-a-chip, based on work done by
Mr. Boone and other TI inventors, resulting from TI's effort in the late 1960s
and 1970s on TI's TMS100 and TMS1000 microcontroller families.

"TI has nothing to gain financially now from receiving another patent on
Boone's basic invention of the computer-on-a-chip," explained Mr. Donaldson.
"What is important is the Patent Office's confirmation that Gary Boone and TI
were first to invent the computer-on-a-chip."

A notice will be attached to Mr. Hyatt's U.S. Patent No. 4,942,516
explaining that his claims for invention of the single-chip microcontroller
have been canceled.

This ruling will have no effect on TI royalties or its intellectual
property licensing program.

Background
The computer-on-a-chip, also known as the single-chip microcontroller, is
a tiny sliver of silicon containing all the essential parts of a computer.
Single-chip microcontrollers are widely used in computer keyboards, automatic
ignition systems, television and videocassette recorder controls, and other
household and industrial applications. Unlike microprocessor chips, single-
chip microcontrollers contain on-chip permanent computer programs that direct
the chip to perform predetermined functions. Microprocessor chips rely on
external program storage devices, such as memory chips or disk drives.

Boone invented the computer-on-a-chip while working on the TMS100
microcontroller chip, which TI introduced commercially in late 1971. Unlike
the microprocessor chip, which TI and Intel Corporation had each successfully
built earlier in 1971, and which is used as the central computing chip in
present-day personal computers, the computer-on-a-chip is especially suited to
appliance and industrial control applications because it contains a permanent
on-chip program that directs the chip to perform a dedicated function, such as
controlling a microwave oven or tuning a television.

After months of work, Boone and his coworkers completed building the
first working computer-on-a-chip in the early morning hours of July 4, 1971.
Two weeks later, TI filed a patent application, which resulted in the series of
patents issued, beginning in 1978, naming Boone as the inventor.

Hyatt never actually built a computer-on-a-chip, but based his claim to
the invention on a series of patent applications he filed with the Patent
Office in the 1970s and 1980s. In the Patent Office interference proceeding,
he claimed he filed the first patent application describing a computer-on-a-
chip in December 1970. After a review of tens of thousands of pages of Hyatt's
patent filings, however, the Patent Office determined that Hyatt first
mentioned the invention in an application that was not filed until December
1977--six years after TI introduced the product.

In 1994, TI requested that the Patent Office publish Boone's patent
application as an SIR rather than as an additional patent. An SIR gives
official recognition to an invention, but does not entitle the inventor to
collect royalties.