Tuesday, October 29, 2013 10:44:48 AM
Share us on:TwitterFacebookLinkedInBy Beth Winegarner 0 Comments
Law360, San Francisco (October 28, 2013, 6:46 PM ET) -- Tessera Inc. and Sony Corp. reached an eleventh-hour settlement Monday over claims that the Japanese giant violated a patent license with Tessera covering semiconductor technology between the two and failed to pay $92.6 million in royalties, the companies announced on the eve of trial.
The terms of the deal remained confidential Monday, although Tessera officials said in a statement that they would provide more details once the companies sign off on the settlement.
Attorneys for Tessera declined to comment further on the settlement Monday. Attorneys for Sony did not respond to requests for comment.
The case was launched in Santa Clara County Superior Court in May 2011, when Tessera's parent company, Tessera Technologies Inc., went after Sony for allegedly breaching an October 1997 contract in which Sony licensed Tessera's portfolio of hundreds of patents, as well as other technology. Sony removed the case to California federal court that September, court records show.
Sony is one of several companies — including Intel, Texas Instruments and SK Hynix — to license Tessera's technology, which includes semiconductors and microelectronics for “next-generation” electronic devices. Under those license agreements, Tessera has the right to conduct audits related to the amounts of money its licensees might owe. A 2010 audit conducted by third-party auditor Connor Group was greeted with resistance on Sony's part, according to a pretrial statement.
“Sony refused to cooperate with the auditors’ requests for information. ... Despite Sony’s breach of its obligation to cooperate, the auditors ultimately determined that Sony owed Tessera millions of dollars in unpaid royalties for royalty-bearing products made by or for Sony under the agreement,” Tessera said. Once those sums were determined, Sony refused to pay, court documents said.
But after reverse-engineering a number of Sony products, Tessera discovered that Sony was selling hundreds of items that it had never reported to Tessera, but for which Sony was required to pay Tessera royalties under their contract, court documents said.
Sony, however, said in pretrial statements that Tessera had changed direction in recent years, converting itself from a semiconductor technology company to one that would “eviscerate Tessera’s R&D and rely instead on hyper-aggressive patent troll-style litigation to build revenues,” allegedly quoting one of Tessera's leaders.
Following that strategy, Tessera sued Sony over products that weren't subject to the royalties part of the companies' agreement, Sony argued. Tessera only required Sony to pay royalties on chips made for or by Sony, but the technology dug up by the Connor Group didn't fit into those categories, Sony said in court documents.
In the trial, Tessera would have sought monetary damages equaling the royalties Sony allegedly owed but hadn't paid; monetary damages resulting from Sony's other alleged breaches, including not cooperating with the audit provision; and damages associated with Sony's breach of the covenant of good faith and fair dealing, according to pretrial statements.
Tessera Inc. is represented by Morgan Chu, Melissa R. McCormick, Benjamin W. Hattenbach and Lisa S. Glasser at Irell & Manella.
Sony Corp. is represented by Eileen R. Ridley, Matthew B. Lowrie, Aaron W. Moore, Lucas I. Silva and Ruben J. Rodrigues at Foley & Lardner LLP.
The case is Tessera, Inc. v. Sony Corp., case number 5:11-cv-04399, in the U.S. District Court for the Northern District of California.
--Additional reporting by Jacqueline Bell. Editing by Jeremy Barker
Recent XPER News
- TiVo Expands European Presence with Advanced Content Discovery Platform and TiVo Broadband • Business Wire • 09/10/2024 08:00:00 AM
- TiVo Announces Expanded Availability of Smart TVs Powered by TiVo Across Its OEM Partners • Business Wire • 09/04/2024 08:00:00 AM
- DTS Launches Clear Dialogue to Improve Dialogue Intelligibility on TVs • Business Wire • 09/04/2024 08:00:00 AM
- Form 4 - Statement of changes in beneficial ownership of securities • Edgar (US Regulatory) • 08/27/2024 08:38:01 PM
- TiVo Broadband Adds Five New Operators • Business Wire • 08/19/2024 12:30:00 PM
- Form 8-K - Current report • Edgar (US Regulatory) • 08/16/2024 08:05:10 PM
- Form 10-Q - Quarterly report [Sections 13 or 15(d)] • Edgar (US Regulatory) • 08/08/2024 08:15:40 PM
- Form 8-K - Current report • Edgar (US Regulatory) • 08/05/2024 08:15:10 PM
- Xperi Inc. Announces Second Quarter 2024 Results • Business Wire • 08/05/2024 08:05:00 PM
- Most Listened-To Songs In-Vehicle for Q2 2024, Revealed by Xperi • Business Wire • 07/23/2024 01:30:00 PM
- Xperi to Release Second Quarter 2024 Results on August 5, 2024 • Business Wire • 07/10/2024 08:05:00 PM
- DTS Reports Radio Remains Crucial While Video and Gaming Surge In-Vehicle • Business Wire • 06/12/2024 12:30:00 PM
- Form 4 - Statement of changes in beneficial ownership of securities • Edgar (US Regulatory) • 06/11/2024 08:04:21 PM
- Form 3 - Initial statement of beneficial ownership of securities • Edgar (US Regulatory) • 06/11/2024 08:02:02 PM
- Form 8-K - Current report • Edgar (US Regulatory) • 06/10/2024 08:10:10 PM
- Xperi Announces Appointment of Two New Independent Directors • Business Wire • 06/10/2024 08:05:00 PM
- KKR, CrowdStrike Holdings and GoDaddy Set to Join S&P 500; Others to Join S&P MidCap 400 and S&P SmallCap 600 • PR Newswire (US) • 06/07/2024 10:09:00 PM
- Form 8-K - Current report • Edgar (US Regulatory) • 05/31/2024 10:15:33 AM
- Rubric Capital Management Issues Open Letter to Xperi Inc. Stockholders Regarding 2024 Annual Meeting Results • Business Wire • 05/28/2024 09:00:00 PM
- Stockholders Re-Elect All Five Xperi Incumbent Directors at 2024 Annual Meeting • Business Wire • 05/24/2024 12:52:00 PM
- Xperi’s Independent Media Platform Expands With TiVo One, a Cross-Screen Ad Platform for Maximizing Engagement and Monetization • Business Wire • 05/21/2024 12:00:00 PM
- Form DEFA14A - Additional definitive proxy soliciting materials and Rule 14(a)(12) material • Edgar (US Regulatory) • 05/21/2024 11:44:56 AM
- All Three Leading Independent Proxy Advisory Firms Support All Xperi Board Candidates • Business Wire • 05/21/2024 11:15:00 AM
- Form DEFA14A - Additional definitive proxy soliciting materials and Rule 14(a)(12) material • Edgar (US Regulatory) • 05/17/2024 12:00:26 PM
- Xperi Issues Letter to Shareholders Highlighting Actions Taken to Position the Company to Create Long-Term Value • Business Wire • 05/17/2024 11:15:00 AM
VHAI - Vocodia Partners with Leading Political Super PACs to Revolutionize Fundraising Efforts • VHAI • Sep 19, 2024 11:48 AM
Dear Cashmere Group Holding Co. AKA Swifty Global Signs Binding Letter of Intent to be Acquired by Signing Day Sports • DRCR • Sep 19, 2024 10:26 AM
HealthLynked Launches Virtual Urgent Care Through Partnership with Lyric Health. • HLYK • Sep 19, 2024 8:00 AM
Element79 Gold Corp. Appoints Kevin Arias as Advisor to the Board of Directors, Strengthening Strategic Leadership • ELMGF • Sep 18, 2024 10:29 AM
Mawson Finland Limited Further Expands the Known Mineralized Zones at Rajapalot: Palokas step-out drills 7 metres @ 9.1 g/t gold & 706 ppm cobalt • MFL • Sep 17, 2024 9:02 AM
PickleJar Announces Integration With OptCulture to Deliver Holistic Fan Experiences at Venue Point of Sale • PKLE • Sep 17, 2024 8:00 AM