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ITC import ban impact still unclear

Posted: 13 Aug 2009     Print Version  Bookmark and Share

Keywords:ITC import ban  Tessera BGA patent  processor  intellectual property 

More rejections
In its order, the ITC defines the ban in a generic way, saying it covers any chips using technology described in claims 1, 2, 6, 12, 16-19, 21, 24-26 and 29 of U.S. patent 5,852,326 and claims 1-11, 14, 15, 19 and 22-24 of patent 6,433,419.

A lawyer at Dechert LLP who has handled several ITC cases said the ITC typically uses such a generic description to ensure infringers do not slightly alter products to avoid the ban while still infringing. ITC trials typically name specific products, however the details are often redacted in public documents.

A survey of public documents on the Tessera case (ITC case number 605) does not include any list of specific products. However, Tessera said the companies identified more than 1,000 products in total that may infringe in response to court inquiries.

In court documents, Tessera said those chips include:

• Cell Phone graphics chips from the ATI division of AMD;
• Base band and application processors and other wireless chips from Freescale used in cell phones, Wi-Fi devices, routers, switches and STBs;
• Bluetooth controllers, base band processors, video receivers, graphics chips, wireless chips, RF and power management chips from Qualcomm for cell phones, headsets and gateways;
• Memory chips from Spansion used in cell phones, digital cameras, video games, PCs and STBs;
• And flash chips, level translators, RF ASICs, power management chips, data conversion chips and imaging signal processors from ST used in cell phones, scanners, hard disks, satellite receivers, set-tops, routers and switches.

It's not clear exactly how a list of infringing products is developed, if one even exists.

The U.S. Customs and Border Protection Bureau writes field guidance documents for its officials based on ITC exclusion orders. Companies on both sides of the ITC case work with the Bureau to develop those documents which are not publically available, according to a Bureau spokeswoman.

"There is a point person identified by the customs agency who meets with the parties," said Cassidy of Tessera.

Representatives of Tessera and the affected vendors work with that person and have all likely seen the field guidance documents.

The appeals process mirrors the complexity of the enforcement effort.

The patent office has rejected the two Tessera patents upon re-examination at the request of vendors in the case. However, Tessera has appealed those rulings.

The rejection/appeal cycle has occurred three times in the case of one of the patents and six times in the case of the other patent. It is not clear when, if ever, that process might come to a final conclusion.

"I have never heard of a patent getting re-examined six times, but I am dealing with one that has been rejected three times," said an intellectual property consultant who asked not to be named.

Patent holders have the right to redraft any claims the patent office rejects in a re-exam, opening the door to multiple re-exams and appeals. However, the process can cost the patent holder as much as Rs.48.85 lakh ($100,000) per cycle.

"Re-examination is a very expensive process," said the consultant. "Big companies like to do it, and small companies sometimes can't afford it," he said.

"Patents typically don't get finally invalidated through the process unless an applicant gives up" often due to the costs, he added.

Separately, Spansion has filed an appeal of the ITC decision to the U.S. Court of Appeals for the Federal Circuit. At press time, the company was waiting on rulings from the court on motions for stays of the ITC ruling until the appeal is heard.

"The key is to persuade the court the determination from the ITC is not fair or in the best interests of the U.S. manufacturing industry," said Nation of Spansion.

It's also interesting to note that the two Tessera patents are part of a long stream of so-called continuations on patents originally filed in the early 1990's.

It's not unusually for applicants to submit multiple continuations on patents, adding claims to a patent still in the approval process. The patent office has asked for power to limit the number of continuations an applicant can file to help reduce its building backlog of applications which now extends to about 740,000 applications waiting to be reviewed.

The Tessera case is just one of dozens before the ITC covering a wide range of technologies. The ITC caseload represents just one repository of intellectual property disputes worldwide that could impact electronics companies.

"Our Office of International Trade enforces more than 400 laws on behalf of 40 other government agencies," said the spokeswoman for the U.S. customs office.

- Rick Merritt
EE Times

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