3rd UPDATE: ITC Rules For Tessera In Patent Case
May 20 2009 - 7:26PM
Dow Jones News
The U.S. International Trade Commission, overturning a prior
judgment, ruled in favor of Tessera Technologies Inc. (TSRA) in a
closely watched case involving patents associated with packaging
computer chips.
Tessera shares jumped 21% to $20.10 after hours following the
news.
The ITC ruled that defendants Qualcomm Inc. (QCOM), Motorola
Inc. (MOT), Spansion Inc. (SPSN), STMicroelectronics NV (STM),
Freescale Semiconductor Inc. (FSLB) and ATI Technologies, now owned
by Advanced Micro Devices Inc. (AMD), violated Tessera's patents
related to how certain chips were packaged.
"This is everything that we have set out to gain," said Tessera
Chief Executive Henry Nothhaft in an interview with Dow Jones
Newswires. "This is a material victory for us and the rights of
innovators in general."
The commission issued a ban on the import of chips manufactured
by or on behalf of any of the companies. Additionally, the
commission issued a cease and desist order to Motorola, Qualcomm,
Freescale and Spansion halting the sale of infringing articles out
of their U.S. inventories.
The import ban, known as a "limited exclusion order," does not
affect downstream manufacturers, such as mobile phone makers, which
import products that already include the chips.
The ruling is subject to review by the Obama administration for
60 days. During that period, the companies can continue to import
the chips if they post a bond in the amount of 3.5% of the imported
articles.
Alex Rogers, legal counsel for Qualcomm, said while the company
is disappointed with the decision, the ruling will not affect its
chips shipments to the U.S.
In advance of the decision, Qualcomm shifted supply of the chips
in question to Amkor Technology Inc. (AMKR), a Tessera
licensee.
Nothhaft said since Amkor is now a licensee in good-standing of
Tessera technology, Qualcomm's actions would be "very positive to
us and result in higher royalties from Amkor."
Meanwhile, Qualcomm will evaluate whether to appeal after
sifting through the arguments.
"I would expect that we would appeal, but we'll have to look at
it," Rogers said.
Tessera's chip technology is currently used in mobile phones,
set-top boxes and other electronics equipment.
Nothhaft declined to provide any estimates or revenue guidance,
but said the ruling will materially impact the company financially.
In addition, he said the ruling was a positive signal that Tessera
will come out ahead in a separate ruling related to memory chip
technology expected in July.
Wednesday's ruling overturns a previous ruling from December
that found two Tessera patents were valid, but weren't infringed by
the defendants.
Motorola, while disappointed with the decision, said that it
expects its suppliers to bring the matter to a close.
"This is a dispute between Tessera and certain semiconductor
chips suppliers. As a major customer of these suppliers, we have
made it clear that we expect them to act in the best interests of
their customers and the industry and resolve this matter as quickly
as possible," Motorola said in a written response.
Motorola previously entered into a license option agreement with
Tesera that covers the technology in question. Motorola said it
will consider whether to exercise the option "in the coming
days."
A spokesman for STMicro said "they are obviously disappointed
with the ruling," but wouldn't comment further regarding ongoing
legal matters.
Representatives of Spansion, Freescale and Advanced Micro
Devices weren't immediately available for comment.
-By Jerry A. DiColo, Dow Jones Newswires; 201-938-5670;
jerry.dicolo@dowjones.com