ITC: Tessera Patents Infringed

The International Trade Commission (ITC) has ruled in favor of electronic packaging solutions provider Tessera Technologies Inc., finding that its patents are valid and have been infringed by certain chip makers, the San Jose, Calif.-based company announced Wednesday. The finding overrules a December 2008 determination by an ITC judge in favor of the semiconductor companies. On Wednesday, the ITC issued an order banning the importation of infringing electronic devices that use Tessera’s patented technology and issued a cease and desist order against Motorola, Qualcomm, Freescale and Spansion to stop them from selling infringing items out of their US inventories. “This is a powerful victory for Tessera and the rights of patent holders everywhere,” said Henry R. Nothhaft, president and CEO of Tessera, adding that the decision “sends a positive message to other innovators that depend on their patent rights to protect their inventions against would-be infringers.” The respondents in the Wireless ITC action were ATI Technologies, Freescale Semiconductor, Motorola, Qualcomm, Spansion Inc., Spansion LLC and ST Microelectronics. Tessera asserted infringement of two US patents, No. 6,433,419 and No. 5,852,326, concerning face-up semiconductor chip assemblies. In its own statement, San Diego-based Qualcomm said it was disappointed with the ruling but had prepared for an adverse result by shifting its supply of chips for the US market to Amkor. Amkor has been a Tessera licensee for some time and has long been one of Qualcomm’s major packaging suppliers. Qualcomm pointed out in its release that the patents in question will expire in September 2010 and that the claims asserted by Tessera are currently being reexamined by the US Patent & Trademark Office. The patent office has issued final rejections of all of the asserted claims in both patents as invalid based on prior art; Tessera is contesting the final rejections, and the process remains ongoing.