Tessera, Sony Settle Semiconductor Patent License Suit
By Dan Prochilo
Law360, New York (January 07, 2014, 6:18 PM ET) -- Sony Electronics Inc. and Tessera Inc. have settled a suit alleging Sony failed to renew a license for semiconductor packaging patents and continued exploiting the inventions they described in Sony's products, according to an order dismissing the case in Delaware federal court Monday.
U.S. District Judge Renee Marie Bumb tossed the litigation after the two companies cut a deal that also called for Sony to drop the claims it had filed against the patent owner, and for both parties to pay their own attorneys' fees and litigation costs.
The terms of the accord were not disclosed in the order, and attorneys and company representatives for Sony and Tessera did not respond to messages seeking comment Tuesday.
The October 2010 suit accused the Japan-based electronics maker of infringing U.S. Patent No. 6,885,106, which Sony had at one point taken a license for from Tessera.
Sony and San Jose, Calif.-based Tessera struck their licensing deal in October 1997, while a predecessor of Japan-based Renesas Electronics Corp. — another defendant in the case — entered into a license agreement with Tessera in June 2004. Both defendants elected to let those agreements expire the same month the suit was filed, after Tessera had tried for months to negotiate an amicable solution with the alleged infringers in vain, the suit said.
The two companies elected to continue using the patented technology illegally, making and selling many of the same products for which they had formerly paid royalties to Tessera, but without permission and without paying up, according to the complaint.
The patent owner sought compensatory damages of no less than a reasonable royalty, treble damages for willful infringement, and other relief.
In October 2012, Sony sought to stay the case while the U.S. Patent and Trademark Office's Patent Trial and Appeal Board re-examined the validity of both the original patent-in-suit, titled “Stacked Microelectronic Assemblies and Methods of Making Same,” and U.S. Patent No. 6,054,337, a method patent for a process of making a package of semiconductor chips. Both reviews were based on challenges brought under the America Invents Act.
It was unclear whether those reviews had been completed or were still ongoing when Sony and Tessera reached their agreement.
Tessera also launched a May 2011 suit against Sony in Santa Clara County Superior Court in California based on the alleged breach of an October 1997 licensing contract, through which Sony licensed Tessera's portfolio of hundreds of patents covering semiconductors and microelectronics for next-generation electronic devices.
That case, accusing Sony of violating a patent license and failing to pay $92.6 million in royalties, was resolved in late October, through a settlement announced on the eve of a trial. The terms of that deal were not immediately disclosed.
The patent-in-suit is U.S. Patent Number 6,885,106, and the inter partes review is for U.S. Patent Number 6,054,337.
Sony is represented by Rodger Smith II of Morris Nichols Arsht & Tunnell LLP and Matthew Lowrie and Aaron Moore of Foley & Lardner LLP.
Tessera is represented by Philip Rovner of Potter Anderson & Corroon LLP and Morgan Chu, Ben Hattenbach, Melissa McCormick and Lisa Sharrock Glasser of Irell & Manella LLP.
The case is Tessera Inc. v. Sony Electronics Inc. et al., case number 1:10-cv-00838, in the U.S. District Court for the District of Delaware.
--Additional reporting by Beth Winegarner. Editing by Edrienne Su.
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