Chip Law : Semiconductor Lawyer & Attorney : Perkins Coie Law Firm : Intellectual Property, Patent Litigation

When conducting an infringement threat assessment in your industry, don't write off the foreign companies. Foreign companies can and do file in US courts, whether against domestic or foreign competitors. As the US market becomes more competitive and foreign companies become more sophisticated, a greater diversity of plaintiffs' country of incorporation can be expected.

Japan-based Nichia Corp. filed a patent infringement lawsuit against Chinese solar products company Jiawei North America Inc. The complaint was filed in, of all places, the U.S. District Court for the Eastern District of Texas. Nichia alleges that Jiawei has infringed four LED-related patents.

This is not the first time Nichia has been to the Eastern District of Texas. Previously, Nichia settled two lawsuits filed by Seoul Semiconductor Co., also involving LED patents. It would appear Nichia now has a taste for Texas.

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On Aug. 31, Advanced Ion Beam Technology ("AIBT") had its antitrust counterclaims dismissed without prejudice from a patent infringement suit for failing to properly allege specific antitrust injury. On the same day, AIBT filed a new Sherman Act suit refining its antitrust allegations against Varian Semiconductor Equipment Associates Inc. ("Varian"), attempting to rectify the problems with its previous counterclaims.

Antitrust counterclaims are frequently raised by the defendant in patent infringement cases. A patent, by definition, is a monopoly providing the patentee with power to exclude others from making, using, selling, or offering to sell the patented invention. Such claims can be Walker Process fraud claims, alleging the asserted patent was procured by fraud in an effort to create or gain monopoly power in a market. Antitrust claims can also be "sham litigation" claims, alleging the patentee sought to create or maintain a monopoly by enforcing a patent knowing it to be invalid and by filing and maintaining an objectively baseless lawsuit.

Fortunately for the patentee, successfully asserting an antitrust counterclaim requires a high level of proof. Before initiating a patent infringement suit, it would be wise to review the asserted patents with an eye towards possible antitrust issues.

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The Federal Circuit's recent decision in Cardiac Pacemakers represents a shift in method patent protection scope. Generally, activities outside the U.S. do not trigger U.S. patent liability. But 35 U.S.C. Section 271(f) creates patent liability for certain import and export activities, such as exporting components of a patented invention and actively inducing the combination of the components outside of the US, if such combination would infringe within the US.

Under previous case law, the Federal Circuit found that 271(f) applied to method claims, and a defendant's export of a catalyst needed to perform a patented method could result in liability. Union Carbide Chemicals & Plastics Technology Corp. v. Shell Oil Co. (Fed. Cir. 2005).

In Cardiac Pacemakers, the Federal Circuit reversed its previous position and ruled that the section does not apply to method patents. Cardiac Pacemakers had sued over a patent claiming a method of using an implantable stimulator that detects heart arrhythmias. The Federal Circuit held that the defendant's implantable cardioverter defibrillators practicing the method of Cardiac’s patent outside the U.S. cannot constitute infringement under that statute. Because method or process patents do not include the required "physical components" of a patented invention and because one cannot "supply the step of a method," the statute cannot apply to method or process patents.

It is now more important than ever to ensure your patent portfolio protects not only the methods of producing semiconductor products, but also the products themselves if at all possible.
 

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The past week has been rife with news articles about stupendous patent infringement judgments and settlements.  In the wake of the recent $891 million Qualcomm-Broadcom settlement comes the news of another electronics company being handed a hefty patent infringement judgment.  Earlier this week, a Texas court ordered Apple to pay $19 million to Opti Inc for infringement of a patent related to cache memory access. 

The patent, entitled "Predictive snooping of cache memory for master-initiated accesses," is directed to a method to efficiently transfer data among the CPU, memory, and "other devices."  The patent was issued to Opti in June of 2002, and the company filed a patent infringement lawsuit against Apple in January of 2007.  Apple tried arguing that the patent was invalid due to "prior art and obviousness."  However, the jury sided with Opti and ordered Apple to pay $19,009,728 as a "reasonable royalty for infringement."

Opti has filed lawsuits against other semiconductor companies such as AMD, Broadcom, Silicon Storage, etc. for infringement of the same patent.  This is probably yet another example of how a single broadly written patent can be effective even against the goliaths of the industry!

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To be safe, you probably want to avoid doing anything involving a registration number while under a protective order against prosecuting patents. On the other hand, you probably want to regularly check the prosecution history of relevant cases when a similar protective order is in place against an opponent.

SiRF Technology Inc. moved for sanctions against Broadcom Corp., claiming a McAndrews Held & Malloy Ltd. attorney representing the semiconductor manufacturer violated a protective order. Wayne Bradley, the attorney, signed a terminal disclaimer in one of Broadcom's patent applications after the protective order was in place.

The parties dispute whether Bradley's action violated a protective order barring Broadcom's attorneys from prosecuting patents related to the litigation. Broadcom argued that Bradley's action was not barred by the protective order, nor did it harm SiRF. Signing the terminal disclaimer was “... an administrative task ... in no way related to substantive 'prosecution' of a patent or the scope of the claims.”

Bradley signed the protective order, which a magistrate judge approved in October, on Dec. 2, 2008. The next day, Bradley submitted a response to a USPTO office action concerning the application, adding over 100 new claims, SiRF alleges. On Dec. 9, Bradley inspected SiRF's source code, according to the brief.

In March, Bradley received a call from the patent examiner asking him to sign the terminal disclaimer. Broadcom argued that the Dec. office action response finished his involvement with the application, and Bradley did not access SiRF's protected information until a week later.

The case is Broadcom Corp. v. SiRF Technology Inc., case number 8:08-cv-00546, in the U.S. District Court for the Central District of California.

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It is not with great frequency that I find patent related articles in mainstream Indian newspapers. Especially these days, with the general parliamentary elections coming up in a month, it is hard to find any article that is not election related! So, I was quite surprised to find an article about Samsung appealing to the Indian Intellectual Property Appeal Board (IPAB) to invalidate a mobile technology patent.

The Indian arm of Samsung Electronics, along with several other local mobile device manufacturers, appealed to the IPAB to invalidate Indian patent no. 214388 for lack of novelty. The patent is directed to a circuit configuration for activating dual-SIM technology in mobile devices. Mobile devices equipped with this technology can hold more than one SIM card, and can thus have two numbers working on it. The patent was filed in 2002 and was issued in 2008 by the Chennai branch of the Indian Patent Office.

Wanting to read the entire patent and the prosecution history to hopefully start a discussion on the novelty issue of the patent, I tried searching the Indian patent office (IPO) website for the '388 patent. Little did I know that the website only provides the title and abstract of the '388 patent. I couldn’t find any other online databases that purported to provide the prosecution history or at least the actual patent publications. So, all we know for now about the novelty of the patent is what the inventor had to say to a local newspaper in an article titled 'Samsung files appeal with board against dual-SIM patent': "All imported mobile phones related to dual SIM sockets for accepting dual SIM cards are infringing my patented technology with circuit diagram as claimed in my Indian patent number 214388." Hopefully, the IPAB sheds more light on this (I will write again on this topic if I am able to locate the patent and the prosecution history).

The other aspect of the case that I found interesting is the fact that the Indian customs authorities, acting on a complaint from the inventor (and after obtaining necessary court orders), have been seizing all of Samsung's import consignments of dual-SIM phones. First, it is encouraging and refreshing to read that the Indian customs authorities enforce IP rights with such vigor. Second, it is intriguing that Samsung has filed a petition in the Delhi high court questioning the linking of patent and customs laws. Samsung contends that "since the Trade Related Intellectual Property Rights (TRIPS) rule doesn’t cover patents, the customs department cannot decide such actions on its own." If you do not have customs laws that can keep illegal (or infringing) products from entering the country, I am at a loss to fathom how one protects his/her intellectual property rights!
 

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