TSMC’s Eleventh Hour Court Proceeding Confirms Importance of Tessera’s Patented Technology; Attempts to Circumvent ITC Determination
Business Wire Business WireOctober 16, 2017
SAN JOSE, Calif.--(BUSINESS WIRE)--
Tessera Technologies, Inc. (“Tessera”), a wholly owned subsidiary of Xperi Corporation (“Xperi” or “the Company”), issued a statement today in response to litigation filed by Taiwan Semiconductor Manufacturing Company Limited (“TSMC”), a Taiwanese company, against Tessera and certain of its subsidiaries late in the day on October 13, 2017. TSMC filed an action in the United States District Court for the Northern District of California, expressing its concern that the U.S. International Trade Commission (“ITC”) will adopt the initial determination of Administrative Law Judge (“ALJ”) Sandra Dee Lord and enter an order excluding the import of infringing Broadcom chips manufactured by TSMC, and products of the other respondents containing these chips. TSMC seeks an injunction to prevent Tessera from enforcing its rights in the ITC. TSMC’s request is based on the same patent exhaustion argument that was already fully litigated and rejected by ALJ Lord in the ITC investigation.
“This appears to be an eleventh-hour attempt by TSMC to circumvent the jurisdiction and lawful authority of the ITC, which protects U.S. industries against the importation of foreign infringing products,” said Paul Davis, Xperi’s senior vice president and general counsel. “But ALJ Lord already considered the argument TSMC raises, and concluded that TSMC does not have the right to sell products that infringe our ‘946 patent. We are confident that the District Court will reject TSMC’s belated attempt to end-run the ITC and re-litigate this issue.”
On June 30, 2017, ALJ Lord issued an initial determination finding that Broadcom and the other respondents broadly infringe U.S. Patent No. 6,849,946 (the “‘946 patent”). The ‘946 patent has twice been found to be valid – once by ALJ Lord and again by the U.S. Patent Office Patent Trial and Appeal Board when it denied a petition for inter partes review against the patent. ALJ Lord’s decision is now under review by the ITC Commissioners, whose final determination is expected by December 1, 2017.
“TSMC’s filing confirms the importance and breadth of our patented technology,” Davis added. “TSMC states in its complaint that an exclusion order would impact more than a half-billion U.S. dollars annually in chips/components, to over 300 Broadcom customers, as well as billions of dollars in downstream products built on the infringing Broadcom chips. We continue to be open to negotiating a license agreement with Broadcom that fairly compensates us for its use of this valuable intellectual property.”
