Tessera efforts to prevent IP infringement move forward

SAN JOSE, USA: Tessera Technologies Inc. today provided an update on certain activities in its U.S. International Trade Commission (ITC) actions.

Investigation No. 337-TA-605 (Wireless ITC Action)
President Barack H. Obama and the Office of the U.S. Trade Representative allowed the 60-day Presidential Review Period to expire without modifying the Limited Exclusion Order (LEO) and Cease and Desist Orders (CDOs).

The ITC’s LEO prohibits, among other things, the importation of certain infringing electronic devices that use Tessera’s patented technology, which are imported by or on behalf of the named respondents, and the CDOs prevent, among other things, the sale, offer for sale or distribution of those same infringing devices.

As a result of the expiration of the Presidential Review Period, the respondents, including Qualcomm, Freescale and Spansion, are no longer permitted to import or sell infringing products, even under bond.

“Tessera has spent hundreds of millions in research and development efforts to bring its innovative technologies to market, and currently employs nearly 300 employees to continue these efforts,” stated Henry R. Nothhaft, president and CEO of Tessera.

“Many companies, including most of the world’s largest semiconductor companies, have licensed and incorporated Tessera’s technologies to the benefit of their customers and shareholders.

"The ITC's orders in this case affect only unlicensed companies that are trying to maintain an unfair competitive advantage against their law-abiding competitors, who stand to lose even further market share to the respondents and their customers if the ITC’s orders are stayed or overturned.”

Respondents have filed appeals with the Federal Circuit, along with “emergency” motions to delay enforcement of the ITC orders. The motions request that the Federal Circuit grant a temporary stay to allow it time to consider briefing regarding whether to issue a longer stay during the pendency of the Federal Circuit appeal.

Tessera has already filed papers with the Federal Circuit opposing a temporary stay and will respond to respondents’ briefings in due course.

On Friday, July 17, 2009, the ITC refused to delay enforcement of its LEO and CDOs and denied the respondents’ motion to stay those orders.

The respondents in the Wireless ITC action are ATI Technologies, Freescale Semiconductor, Inc., Qualcomm, Inc., Spansion, Inc., Spansion, LLC and ST Microelectronics N.V. Tessera asserted infringement of two Tessera patents, U.S. Patent No. 6,433,419 (‘419) and U.S. Patent No. 5,852,326 (‘326). Motorola Inc. signed a license agreement with Tessera after the issuance of the Limited Exclusion Order and is thus permitted to import and sell otherwise infringing products.

Investigation No. 337-TA-649 (Subcon ITC Action)
On July 17, 2009, the Administrative Law Judge in the Subcon ITC Action, Judge Theodore Essex, approved Tessera's request to dismiss the investigation. In addition to granting Tessera's request for dismissal, Judge Essex found multiple violations of court orders by respondent Siliconware Precision Industries Co. Ltd.

The respondents in the Subcon ITC Action were Siliconware Precision Industries Co. Ltd., STATS ChipPAC Ltd., ASE Inc. and ChipMOS Technologies Inc., as well as several of these companies’ affiliates.