Philip Brooks' Patent Infringement Updates

ITC Probes Infringement Claims Against AMD

The following is excerpted from a January 4, 2010 article by Dylan McGrath available at EE Times:

The U.S. International Trade Commission (ITC) has opened an investigation into patent infringement claims filed by Taiwanese analog chip vendor Richtek Technology Corp. against Advanced Micro Devices Inc. (AMD) and others, the regulatory agency said.

In addition to AMD, Richtek (Hsinchu, Taiwan) also alleges patent infringement against uPI Semiconductor Corp. of Taiwan, Sapphire Technology Ltd. of Hong Kong, Diamond Multimedia Inc. (Chatsworth, Calif.) and XFX Technology Inc. (Ontario, Calif.).

According to the ITC, the Richtek complaint alleges violations of section 337 of the U.S. Tariff Act of 1930 in the importation and sale of certain DC-DC controllers and products containing them. Richtek has requested that the ITC issue an exclusion order and a cease and desist order.

Read the full article here.

Cyclone Power Technologies Licenses Burn Everything Engine Systems for China Market

The following is excerpted from a December 17, 2009 item from The Auto Channel:

Cyclone Power Technologies Inc. has completed its License Agreement with Great Wall Alternative Power Systems Ltd. to advance the development and production of Cyclone’s Schoell Cycle heat-regenerative external combustion engines for the China market.

Under the terms of the License, Great Wall Alternative Power Systems (GWAPS) will develop in China a production prototype of Cyclone’s biomass-to-power generator system – a portable power plant capable of producing 10kW or more of electricity from the combustion of dry vegetative biomass. Pending completion of production prototyping for Cyclone’s Mark V engine in the United States, as well as successful implementation of the intellectual property protection systems in China designed by both GWAPS and Cyclone, GWAPS will also develop the larger 95hp Mark V engine for electric power production by late 2010.

GWAPS has agreed to pay Cyclone $125,000 in development fees, an additional $400,000 in licensing fees, and then on-going royalties from the sale of Cyclone engines for use in electric power production in China. Engine systems other than biomass-to-power and the Mark V for non-motive power applications would require added development and license fees. Additionally, GWAPS will invest capital to provide for legal and financial structuring, government outreach, and intellectual property protection, including retaining professional organizations to monitor and, if necessary, prosecute patent infringement cases in China. Cyclone has also retained legal counsel in China to audit the IP protocols that GWAPS establishes.

Read more here.

New ITC Cases Target Televisions, BlackBerries, Semiconductors

The following is excerpted from a December 4, 2009 post by Jenna Greene, Senior Reporter, at the BLT (Blog of LegalTimes):

It's been a busy week at the International Trade Commission, with four new, high-stakes intellectual property complaints filed in the last four days. Considering just 25 other cases have been filed all year, it's a quite a glut.

On Dec. 1, Samsung Electronics sued Sharp Electronics Corp. for infringing its patents related to liquid crystal display devices used in televisions. Fish & Richardson partner Ruffin Cordell filed the suit.

Also on Dec. 1, semiconductor maker Analog Devices Inc. filed suit at the ITC against Knowles Electronics of Itasca, Ill. and Mouser Electronics of Mansfield, Texas over surface mount MEMS microphones and products.

Next on the ITC docket is a case filed on Dec. 2 by Nebraska-based Prism Technologies against BlackBerry maker Research in Motion over authentication systems related to its handheld electronic devices and associated software.

Also on Dec. 2, Taiwan-based semiconductor maker Richtek Technology Corp. sued uPI Semiconductor Corp. of Taiwan; Advanced Micro Devices, Inc. of Sunnyvale, Calif.; Sapphire Technology Limited of Hong Kong; Diamond Multimedia, Inc. of Chatsworth, Calif.; and XFX Technology, Inc. of Ontario, Calif.. At issue: patent rights for DC DC controllers.

Read the full post here.

Convergence Technologies Files Lawsuit Against Hewlett-Packard, Sapphire and Microloops

The following is excerpted from a November 16, 2009 Convergence press release published at PRNewswire-Asia:

Convergence Technologies (USA) LLC, of Reston Virginia, today announces that it has filed a lawsuit (Docket No. 1:09cv1256) in the Eastern District of Virginia against Hewlett-Packard, Sapphire Technology Limited (a Hong Kong company) and Taiwan Microloops Corporation (a Taiwanese registered company, herein referred to as Microloops) for the infringement, contributory infringement, and/or inducement to infringe upon its U.S. patent #7,422,053. Joseph J. Zito of ZITO tlp has been appointed as its lead litigator.

"With the recent Taiwan court's ruling and Microloops' predatory pricing practice, we have no choice but to now turn to the U.S. court for protection," said Dr. Steven H. Lee, Founding President & CEO of Convergence Technologies Limited. Dr. Lee further adds that "It is unfortunate that venture capital was scarce in Hong Kong, which gave other companies the opportunity to exploit our weakness, but we have the best vapor chamber technology in the world, and Joe Zito will help us ensure this technology reaches the market place.

"ZITO tlp has been given the mandate to engage in discussions with U.S.- based alleged infringers, many of whom may not even know they were using Microloops' parts because they are typically sold through another OEM, ODM or distributor. And, although lawsuits are currently only being brought against these three companies, Convergence maintains the right to take legal actions against other endusers at a later time. It is therefore important for the market to note that authorized sellers will be published on our website and authorized products will be labelled with our logo and the aforementioned patent number."

In 2008, Convergence had attempted to avoid the involvement of end users in this patent dispute by filing a patent infringement lawsuit against Microloops in Taiwan, despite Taiwan's limited protection for intellectual property. However, on September 7th of 2009, the Taiwan court sided with Microloops and dismissed Convergence's complaint based on its view that its Taiwan patent lacked novelty and inventiveness. This is despite the fact that Convergence's technology, in addition to being granted patents from around the world, including from the U.S., has also to-date been granted three patents in Taiwan. Vapor chamber is a relatively new cooling technology critical to the electronic industry, particularly the server and blade server markets. Convergence had discovered a unique condensate flow requirement in vapor chambers, and patented a Multiwick structure uniquely characterized by its spatially varying wicking power. It is this Multiwick structure that gives Convergence's vapour chambers its superior cooling capabilities.

Read the full press release here.

TSMC vs. SMIC Ends with $200M Settlement

The following is excerpted from a November 9, 2009 Semiconductor International article by David Lammers:

Taiwan Semiconductor Manufacturing Co. Ltd. (TSMC, Hsinchu, Taiwan) settled its trade secrets lawsuit with Semiconductor Manufacturing International Corp. (SMIC, Shanghai, China) today, with SMIC agreeing to pay $200M in cash and an undisclosed amount of stock and warrants to TSMC. Judge Steven Brick discharged the jury in the two-month-long civil trial in the California Superior Court in Oakland, Calif., saying that "unexpected news is not always bad."

Keker & Van Nest (San Francisco), the law firm which represented TSMC, said the court-approved settlement awards TSMC "$200M and an undisclosed amount of stock and warrants. The Court will maintain jurisdiction to enforce the judgment until it is finally satisfied. All the other terms of the Settlement are confidential."

While the detailed settlement terms are confidential, SMIC may disclose them in filings with securities regulators. In the case of the December 2005 settlement, SMIC divulged the terms several months later, both with the U.S. Securities and Exchange Commission (SEC), and with the Hong Kong stock exchange.

Read the full article here.

TSMC Court Win a Major Blow to China's Biggest Chip Maker

The following is excerpted from a November 5, 2009 article by Dan Nystedt at Computerworld:

Taiwan Semiconductor Manufacturing (TSMC) has won a major victory over China's biggest chip maker in a court case that could have wide ranging implications for the loser.

A jury at the Superior Court of California in Alameda County voted in favor of TSMC in the case against Semiconductor Manufacturing International (SMIC). TSMC had sued SMIC in a case involving theft of trade secrets, patent infringement and breach of contract over a prior settlement between the two companies.

The next phase of the trial, to assess damages against SMIC, begins Thursday. The damages alone could be enough to force SMIC to seek a buy-out, according to Randy Abrams, research analyst at investment bank Credit Suisse.

TSMC could be awarded up to US$1 billion in damages, and could also win an injunction preventing infringing chips from entering the U.S., Abrams wrote in a research note. Since SMIC ended the third quarter of this year with US$500 million in cash and $1.1 billion in debt, a big financial penalty and an injunction would seriously crimp SMIC's ability to do business, he said.

Read the full article here.

Outsourcing IP? Preventing IP Infringement in China

The following is excerpted from a Bleum press release at PR Newswire and whitepaper:

Bleum, one of China's leading IT outsourcing providers to American and European companies today [October 19, 2009], published its latest whitepaper entitled "Outsource IP? Preventing IP Infringement in China" focused on the current status of IP issues in China.

This whitepaper highlights a number of changes that have been made in China to further improve international IP protection and the importance of patenting in China. It also provides guidance to help companies protect their IP when outsourcing development work to China, such as registering patents and establishing a proactive piracy prevention strategy from a cultural, legal and operational standpoint.

Since the publication of our last Intellectual Property Rights (IPR) paper in 2006, a number of changes have been made in China to further improve international IP protection, and the Patent Law has now undergone a third revision and the amended Patent Law will come into effect on October 1st , 2009. Although enforcement of IP laws continues to be a challenge, this is gradually improving along with the laws themselves. The concept of IP ownership is steadily becoming a part of Chinese culture."Companies looking for a strategic, long term outsourcing partnership will consider China as a viable destination", says Chenxi Wang, Principle Analyst at Forrester Research.

Obtain the whitepaper here.

5th International Conference on Corporate Intellectual Property Strategy

The 5th International Conference on Corporate Intellectual Property Strategy will take place on October 28-30, 2009 in Zhengzhou City, China.

The agenda as reported by the Information Retrieval Facility will include the following:

Panel One: Innovation and IP Service System Construction

■ The support of IP services to industry upgrading and economic development
■ Introduction to the construction of IP service system in China
■ Introduction to the construction of innovation service system in China Science Park
■ Introduction to the status of European IP service system
■ Introduction to the patent information service system in Europe
■ Introduction to the technology transfer platform in the U.S
■ One-stop IP service platform for small & medium enterprises
■Dialog: Constructing the innovation and IP service system with Chinese characteristics

Panel Two: IP Service in Innovation Cycle

Part 1) IP Services in Major National Science and Technology Projects (MNSTP) and economic activities

Part 2) IP services in enterprises' innovation cycle

IP management in enterprises’ innovation cycle and its support services

Innovation
■ Market and IP oriented innovation project setting and its support services
■ Solutions and information services to enterprises’ innovation projects
■ Effective utilization of patent information

IP Management
■ Setting effective patent application strategy, maximizing the IP value
■ Enterprises’ IP strategy and IP management system construction
■ Intelligent innovation management system construction

IP Protection
■ Techniques of IP protection and infringement prevention
■ How to deal with patent infringement litigation

IP Commercialization
■ Introduction to the IP commercialization service system in China I
■ IP evaluation, insurance, financing and commercializing services in the US
■ Patent portfolio management and licensing services
■ Dialog: Discussion on the key questions relevant to enterprises’ innovation cycle and the effective IP service modes.

Chinese Companies Getting Savvy to the Power of US Patents

From General Patent Corporation's Wealth of Ideas August 2009 newsletter:

...Chinese manufacturers are beginning to turn from imitation to innovation. They’re applying for United States patents in droves – and, in an interesting twist, they’re starting to sue each other and the US retailers that sell the infringer’s products in US courts.

Case in point: Changzhou Asian Endergonic Electronic Technology Co., based in Changzhou, China, is suing US retail giants Best Buy, Wal-Mart, Target, Office Depot, Radio Shack, Staples and TomTom for selling products that the company alleges infringe its patent on dashboard mounts for navigation devices.

Changzhou Asian is also suing the Chinese manufacturer of the allegedly infringing product, known as Nav-Mat mounts, in China. Another interesting twist is that the lawsuit against Best Buy, Wal-Mart et al. was filed in the Eastern District of Texas, the most popular jurisdiction for patent infringement lawsuits. The venue that was once feared by foreigners is now their venue of choice…when they are plaintiffs, that is.

Chad Nydegger, Changzhou Asian’s attorney, commented on their patent infringement case. "My client's view is [that] China is starting to emerge as a first-world country,” Nydegger said. “There's been a significant influx of technology, and they are starting to make improvements. They are becoming innovators, not just copiers."

If that proves true and Chinese companies become a leader not just in technology, but also in US patent filings and patent infringement lawsuits, the implications could be staggering for the US Patent Office – which is already overworked, undermanned and underfunded. (Just ask David Kappos, confirmed on August 7 by the Senate as Director of the Patent Office amid high hopes that he can run the USPTO as efficiently as he ran the IP department of IBM.)

Read the full article here.

Largest Patent Litigation Settlement in China

Evalueserve’s latest article analyzes the patent infringement lawsuit filed by The Chint Group against Schneider Electric in China.

It was recently announced that French company Schneider Electric settled a three-year old patent litigation with Chint, one of the largest manufacturers of low-voltage devices in China. The settlement amount of CNY 157.5 million (about USD 23 million) paid by Schneider is believed to be the largest sum ever paid at a patent litigation settlement in China.

Is this settlement a one-off occurrence or is this the start of a new trend? If recent patent statistics are an indication, then this may be indeed a new - and potentially lasting - trend in China.

In 2008, a total of 828,328 patent applications were filed at the SIPO. Domestic Chinese companies filed 86.6% of all patent applications. Since 2001, an annual increase in patent application filing has been steady at approximately 20%, which shows that Chinese companies are realizing the power of protecting their intellectual property. Furthermore, litigation statistics suggest that Chinese companies are increasingly becoming aggressive with patent enforcement, and during the last three years, the total number of patent infringement related cases filed in China exceeded that in the United States! Hence, any company operating in China would need to have a solid IP strategy to be successful in that country.

Download Evalueserve Article - Patently Speaking - Failure to Heed IP in China Can be Costly - July 2009