Tessera, Broadcom Enter Deal To Resolve Patent Litigation
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Law360, New York (December 19, 2017, 2:46 PM EST) -- Tessera Technologies and Broadcom have reached a deal to resolve Tessera’s pending case at the U.S. International Trade Commission accusing Broadcom of infringing its semiconductor patents, as well as other U.S. and international litigation, Tessera announced Monday.
Tessera Technologies Inc. and some of its affiliates have entered into a multi-year patent license deal with Broadcom Ltd. and some of Broadcom’s related companies under the settlement, Tessera said in a news release.
The deal resolves multiple complaints filed by Tessera that have been pending at the ITC and in Delaware federal court, a complaint filed by Broadcom against Tessera in California federal court accusing Tessera of infringing its patent covering audio processing for wireless systems, two suits filed by Tessera in Germany and one in the Netherlands in May 2016, another suit filed in Germany by Broadcom, and a number of inter partes review proceedings at the U.S. Patent and Trademark Office.
No additional details of the deal were provided.
“We are very pleased to have reached this settlement and license agreement with Broadcom," Jon Kirchner, CEO of Xperi Corp., Tessera’s parent company, said in a statement. “This agreement validates the strength and breadth of our semiconductor portfolio, and provides us with a clear path to unlock the value of our innovations with other companies in the semiconductor industry.”
Tessera’s president, Murali Dharan, said separately that the deal is “a major milestone” for the company’s intellectual property licensing business.
“We look forward to a constructive relationship with Broadcom and thank the Broadcom team for their professional approach to reaching this resolution,” Dharan said.
Tessera, which licenses its technologies to several hundred companies, including Intel Corp. and Micron Technology Inc., filed its complaint at the the ITC in May 2016, alleging that Broadcom had unlawfully imported and sold semiconductor products infringing three of its patents.
The same month, it also accused Broadcom of infringing some of its semiconductor patents in Delaware federal court, prompting Broadcom to ask the Patent Trial and Appeals Board for inter partes review of the patent.
In July, an ITC administrative law judge found that a wide range of Broadcom products imported to the U.S. infringe a Tessera semiconductor patent, recommending standard remedies preventing the company from continuing to do so.
One month later, Broadcom and its subsidiary Avago Technologies General IP Pte. Ltd. asked the ITC to investigate the alleged improper importation of wireless audio systems, ranging from speakers to amplifiers, that it simultaneously accused in California federal court of infringing a patent covering audio processing for wireless systems.
In the California complaint, the companies accused Tessera subsidiary DTS Inc. of infringing Avago’s patent through its “Play-Fi” technology, which streams audio through a wireless network from a device to different audio products, soon including Amazon’s Alexa.
Attorneys for the parties did not respond to a request for comment Tuesday.
Tessera is represented by Robert Haslam, Sturgis Sobin, Michael Plimack, Nitin Subhedar, Christopher Eppich, Laura Muschamp, Dale Rice, Thomas Garten, Daniel Valencia and Matthew Phelps of Covington & Burling LLP.
Broadcom is represented by David E. Sipiora, Josh Pond, Kris Reed, Matthew Meyer, Norris Booth, and Matthew Holohan of Kilpatrick Townsend & Stockton LLP.
The ITC case is In the Matter of Certain Semiconductor Devices, Semiconductor Device Packages and Products Containing Same, investigation number 337-TA-1010, before the U.S. International Trade Commission.
--Additional reporting by Nicole Narea. Editing by Marygrace Murphy.
Update: This story has been updated to include additional counsel for Broadcom.
