Philip Brooks' Patent Infringement Updates

Chip Bans Hit OEM Plans

The following is excerpted from a July 1, 2009 article by Rick Merritt at EE Times:

Systems makers may be beginning to feel the bite of a limited exclusion order prohibiting the import of chips from six companies found to infringe two packaging patents of Tessera Technologies Inc.

"We were told we can't get the Freescale MCF5282 after July 17 for at least a year due to patent infringement," said an engineer from Nordson Corp. (Duluth, Georgia) in an email to EE Times. "This is causing quite a ruckus in engineering," he said.

Nordson uses the Freescale chip, a Coldfire microcontroller, in an industrial controller used primarily on packaging lines to control adhesive deposition. The company was informed by its contract manufacturer in Ohio about the issue sourcing the part.

A Freescale spokesman said the shipments in question do relate to the U.S. International Trade Commission's order banning imports of certain products found to infringe two patents of Tessera.

Affected companies include ATI Technologies (now part of Advanced Micro Devices Inc.), Freescale Semiconductor, Motorola Inc., Spansion LLC and ST Microelectronics NV and Qualcomm Inc. Freescale and Qualcomm have posted the bond to allow imports, said a Tessera spokesperson.

Read the full article here.

Fish & Richardson Wins ITC Ruling in Phison Patent Case

The following is excerpted from an April 22, 2009 Fish & Richardson press release at Marketwire:

Fish & Richardson has won an International Trade Commission (ITC) ruling for Phison Electronics Corp., a large Taiwanese electronics company that manufactures flash memory products, in a patent infringement case brought by SanDisk Corp. On April 10, 2009, an Administrative Law Judge in the ITC issued an initial determination finding no infringement by Phison products.

The ITC case began in 2007 when SanDisk asserted five patents against dozens of companies that make, sell, and import USB flash cards, MP3 players, and other flash storage products. Four of the five patents were asserted against Phison products. By the time of the ITC trial, only one patent remained in the case against Phison. The ALJ's ruling determined that Phison's products do not infringe that remaining patent.

Read the full press release here.

Enforcing Intellectual Property at the U.S. International Trade Commission

The American Bar Association is hosting the above-titled teleconference and live audio webcast program on May 5, 2009.

The U.S. International Trade Commission is increasingly the forum of choice for litigation directed against importers and distributors of products that infringe U.S. patents, trademarks, copyrights, or that are otherwise somehow tainted by unfair methods of competition. These cases (so-called “Section 337 cases”) are so popular because:

• they are much faster and less expensive than comparable court cases (even in “rocket dockets”);
• they are tried to experienced Administrative Law Judges who handle these cases exclusively;
• an ITC Staff attorney is involved in every case to assure that private parties have access to assistance if they need it;
• injunctive relief is automatically granted if the complaining party wins;
• U.S. Customs and Border Protection automatically excludes any further importations of goods found to infringe — at no cost to and without further involvement by the complaining party;
• any company conducting legitimate activities in the U.S. that is the victim of unfair trade practices from abroad can bring a Section 337 case, regardless of it country of origin (Section 337 cases have been brought by companies based in virtually every industrialized country in the world);
• accused infringers cannot avoid the ITC’s in rem jurisdiction once their products have entered into the U.S.;
• and relief is automatically awarded against defaulters.

Faculty

Thomas Fusco, U.S. International Trade Commission
Marylee Jenkins (Moderator), Arent Fox, LLP
Ralph Mittleberger, Arent Fox, LLP

More details and registration are available here. 

Intellectual Property Symposium

Second Annual Intellectual Property Symposium takes place March 31 and April 1, 2009 in Silicon Valley.  Sessions will include:

• United States Patent Policy – Likely Changes and Their Impact presented by Kevin Rivette, Chairman, USPTO Advisory Committee
• The Recent Amendments to the Chinese Patent Law and their Implications for Your Organization presented by John Huang, Managing Partner, East IP Law
• The Procedure for Obtaining a Patent in Europe presented by Jozef Albert of the European Patent Office
• Key Court Rulings Impacting the Electronics Industry: Federal District Judge Jeremy Fogel of the Northern District Of California (San Jose Division), Edward Reines, Partner, Weil Gotshal
• Litigating with the ITC — Steven S. Baik, Partner, Orrick
• The Changing Patent Landscape in India and China – George Sawyer, eValueServe

More information and registration details are available here.

Spansion's Chapter 11 Signals the Erosion of the Flash Memory Market

The following is excerpted from an article by Scott M. Fulton, III appearing today, March 2, 2009, at betanews:

The company that was at one time the world's principal provider of NOR flash memory -- the more non-volatile variety -- had its own plans to go "asset light," to use a now familiar phrase, and to concentrate on licensing its intellectual property to companies with the muscle to do the heavy lifting. It sounds like a plan AMD just executed last month. As it turns out, Spansion had also been planning to license others to produce its designs.

Whether that remains the plan after a few months' time is now completely unknown. This morning, the company's Sunnyvale-based American arm announced it was filing for Chapter 11 bankruptcy protection, a month after its Japanese division applied for similar protection there.

For "asset-light" companies that create more than they produce to become profitable, they have to win something, typically in court. Last November, Spansion mounted an aggressive defense of its IP, which included suing global flash leader Samsung for patent infringement. Spansion is asking the US International Trade Commission to bar the import of Samsung memory that uses multiple-bit-per-cell technology, in a demonstration that it could do the same for others down the road (Toshiba immediately springs to mind).

But it takes years to achieve victory in the courtroom, and in the meantime, the world's glut of NAND flash memory is putting competitive pressures even on NOR suppliers like Spansion. The company's other IP crown jewel is something called ORNAND, a NAND/NOR hybrid that offers many of NOR's benefits in a form factor that would normally be attractive to small component manufacturers, such as handset and automotve electronics. But it's not a normal market, and as Objective Analysis' Jim Handy writes, in this market, ORNAND isn't very handy for Spansion to have around.

So rather than sell the manufacturing facilities it still has to keep the company afloat, Handy suggests that Spansion consider "un-lightening" itself -- selling off some of its intellectual property that it can't really use in the current market anyway, clearly indicating ORNAND as one candidate. Handy's suggestion came as the company's restructuring had just begun, with the resignation of then-president and CEO Bertrand Cambou.

Read the full article here.

LG Electronics Seeks ITC Remedy Against Kodak

The following appeared at Yahoo! Tech News on February 23, 2009:

LG Electronics has asked a trade panel to investigate possible digital camera patent infringement by Eastman Kodak, the International Trade Commission announced.

LG Electronics made the request on Friday.

The ITC is a popular venue for patent disputes since it can bar infringing devices from importation into the United States.

Samsung Electronics filed a similar suit against Kodak on February 17.

The ITC announced in December that it would probe Eastman Kodak's allegations that LG and Samsung had infringed its patents of cell phone cameras.

Kodak still holds the record for patent infringement damages judgments related to the suit by Polaroid related to its instant camera and film patents.

U.S. Court of Appeals Affirms ITC Bar on Imports of Infringing Ink Cartridges

From today's, January 20, 2009, WebWire:

On January 13, the U.S. Court of Appeals for the Federal Circuit in Washington D.C. affirmed the Final Determination and General Exclusion Order of the U.S. International Trade Commission ("ITC"). A General Exclusion Order that bars imports of infringing new and refilled cartridges was entered by the ITC in October 2007, after an ITC trial established widespread infringement of Epson’s cartridge patents by many foreign manufacturers, importers and U.S. distributors. The unsuccessful Appeal was filed by Ninestar Technologies Co, Ltd.of China, Ninestar’s U.S. subsidiaries and Dataproducts USA LLC (a division of Clover Technologies Group).

Epson will vigorously proceed with enforcement of its patents now that the validity and enforceability of its patents have again been ratified. A second ITC trial was conducted on Jan.14-16, 2009 in Washington D.C. to determine any financial penalties that may be assessed against Ninestar, Mipo America,Ltd. and Cana-Pacific Ribbons Inc. and their affiliates for alleged violations of the General Exclusion Order. The ITC has not yet determined any violations, but has the authority to assess substantial penalties up to $100,000 per day of violations or twice the commercial value of infringing imports.

Read the complete item here.

ITC Extends Initial Determination in Tessera DRAM ITC Action

The following is excerpted from a January 6, 2009 Tessera Technologies press release available at Business Wire:

Tessera Technologies, Inc. (NASDAQ: TSRA) announced that the Administrative Law Judge (ALJ) in the U.S. International Trade Commission (ITC) action brought by Tessera against certain DRAM manufacturers, Investigation No. 337-TA-630 (DRAM ITC action), has extended the deadline for issuing the Initial Determination in the action from January 14, 2009 to March 6, 2009. Judge Essex cited the Court’s current caseload and responsibilities in other investigations as the reasons for the rescheduled deadline. The date for issuance of the Final Determination (the target completion date) in this investigation has been extended from April 14, 2009 to July 6, 2009.

The respondents in the DRAM ITC action include A-Data Technology Co., Ltd., Acer, Inc., Centon Electronics, Inc., Elpida Memory, Inc., Kingston Technology Co., Inc., Nanya Technology Corporation, Powerchip Semiconductor Corp., Promos Technologies Inc., Ramaxel Technology Ltd., Smart Modular Technologies, Inc., and TwinMOS Technologies, Inc. Tessera is asserting infringement of three Tessera patents, U.S. Patent No. 5,663,106 (‘106), U.S. Patent No. 6,133,627 ('627), and U.S. Patent No. 5,679,977 (‘977) and is seeking an exclusion order barring import of infringing products that incorporate the patented technology.

Live at the ITC - First Annual Forum on Section 337

The ABA Section of International Law's International Trade Committee, International Intellectual Property Committee and the ABA Section of Intellectual Property's ITC Committee in cooperation with The ITC Trial Lawyers Association present:

LIVE AT THE ITC:

FIRST ANNUAL FORUM ON SECTION 337

OF THE TARIFF ACT OF 1930

The U.S. International Trade Commission has quickly become the premier forum for intellectual property litigation in the United States.  Under Section 337 of the Tariff Act of 1930 (19 U.S.C. § 1337), the ITC has the power to bar the importation of articles that infringe on U.S. patents and other intellectual property rights.  In recent years, the ITC has adjudicated cases involving a wide range of goods, including semiconductors, computer software, pharmaceuticals, and auto parts.  Although many companies increasingly rely on Section 337 to enforce their IPRs, few practitioners and in-house counsel are familiar with the history behind Section 337 and its implications for the ongoing evolution of Section 337.

Date:        Tuesday, December 2, 2008 

Time:        3:00 - 6:00 PM ES

Location:  740 15th Street, NW, 9th Floor Conference Room, Washington, DC 20005

*Wine & Cheese Reception to follow

Registration form is available here.

Kodak Takes Action Against Samsung and LG For Patent Infringement

The following is excerpted from a November 17, 2008 Kodak Business Wire press release that appeared at Yahoo! Canada Finance:

Eastman Kodak Company (NYSE: EK) announced today that it has filed complaints against Samsung Electronics, LG Electronics and other related entities for infringement of Kodak patents.

The Kodak actions specifically allege that Samsung and LG camera phones infringe Kodak digital camera patents. The patents in question cover technology related to image capture, compression and data storage and a method for previewing motion images.

Kodak filed against Samsung and LG in the United States District Court for the Western District of New York, as well as in the U.S. International Trade Commission. Kodak’s District Court complaints request compensation for damages resulting from the companies’ infringement, and both the District Court and ITC actions seek injunctions prohibiting Samsung and LG from further importation and sale of products cited in the complaints. Kodak did not disclose the amount of damages it is pursuing.

Read the full press release here.