ElectroIQ: Ziptronix filed a complaint of patent infringement against Omnivision and TSMC over infringement on several patents dealing with low-temperature oxide bonding.
Omnivision writes in its recent 10-Q form:
"On December 6, 2010, Ziptronix, Inc., or Ziptronix, filed a complaint against the Company alleging patent infringement in the District Court for the Northern District of California. The case is entitled Ziptronix, Inc. v. OmniVision Technologies, Inc., Taiwan Semiconductor Manufacturing Company Ltd., and TSMC North America Corp., Case No. CV10-05525. In its complaint, Ziptronix asserts that the Company has made, used, offered to sell, sold and/or imported into the United States products that infringe U.S. Patent Nos. 7,387,944 (“Method for Low Temperature Bonding and Bonded Structure”), 7,335,572 (“Method for Low Temperature Bonding and Bonded Structure”), 7,553,744 (“Method for Low Temperature Bonding and Bonded Structure”), 7,037,755 (“Three Dimensional Device Integration Method and Integrated Device”), 6,864,585 (“Three Dimensional Device Integration Method and Integrated Device”), and 7,807,549 (“Method for Low Temperature Bonding and Bonded Structure”). The complaint seeks unspecified monetary damages, fees and expenses and injunctive relief against the Company. The Company expects to vigorously defend itself against Ziptronix’s allegations. At this time, the Company cannot estimate any possible loss or predict whether this matter will result in any material expense to it."
Thanks to anonymous commenter to Omnivision post from Jan. 6!
Update: As said in the comments, there is a more detailed discussion of bonding techniques and potential Ziptronix advantage in Phil Garrou blog.
you are welcome vladimir. and thank you for hosting this blog. it is the best and i should know since it is my business to find the best sources of information on image sensors.
ReplyDeleteTry here for the original article: [http://www.electroiq.com/index/display/packaging-article-display/8318168048/articles/advanced-packaging/packaging0/industry-news/2011/1/ziptronix-accuses.html]
ReplyDeleteand here for the blog follow-up: [http://www.electroiq.com/index/packaging/packaging-blogs/ap-blog-display/blogs/ap-blog.html]
i had wondered why tsmc did not patent the wafer bonding element of their process. hopefully, omnivision's new bsi process they are working on now will not contain any infringing technology. i sure hope this does not provide a setback to omnivision.
ReplyDeleteOmnivision should buy Ziptronix and move on.
ReplyDeleteIt should be common knowledge over here that Chipworks has done several teardowns of the Omnivision BSI products. Has anyone looked to see if oxide bonding is used ?
ReplyDeleteAlso - what are the assumptions as to whether Sony and the rest of the BSI CIS fabricators are using the same or differient bonding technology from Omnivision ??
if sony et al used same process, complaint would have named them as co-defendants. beside using bonding, could use tsv's to hold two wafers together, right? sony uses tsv's i think but i'm no engineer.
ReplyDeleteI don't see this as a big deal. I am wondering where the sale that is under US jurisdiction takes place. Probably devices are shipped to a module maker directly from Taiwan or China. So, it seems to me this should either be an ITC case or the defendant should be whoever is selling the modules or phone. Of course indemnification probably leads back to Omnivision but not sure how they can be named in the suit directly.
ReplyDeleteAnyway, Omnivision keeps talking about how much money they are making so time to share the wealth with the people/companies owning the underlying IP. No one wants to kill the goose laying the golden eggs here, in my opinion.
Fossum makes a good point. I wonder how this affects the iPhone which has used the fusion wafer bonding on all their iPhone 4 units. This may be one reason for the rumor that the next iPhone is going to use Sony BSI. Since Sony uses an SOI wafer, they don't touch the ziptronix claims.
ReplyDeleteIt is always the lawyers that make out in the end.
ReplyDelete@ "where the sale that is under US jurisdiction takes place"
ReplyDeleteIn short, the legal question is probably something like this:
Does design work commissioned or performed by a US company anywhere (in the US or abroad) that is incorporated into a product manufactured anywhere but eventually sold in the US amount to infringement if the US company knows of or has reasonable expectation of the sale but does not take reasonable steps to prevent it?
If the answer hasn't been established - and I don't know one way or the other since I am not a legal expert - then this case might be a candidate for a US Supreme Court look-see.
That would be very exciting, though of course the parties will probably settle long before the case trickles that far up.
@ "It is always the lawyers that make out in the end."
ReplyDeleteExcept to the line workers and other mere mortals, it is all of you engineers/managers/executives, and the lawyers, that make out in the end. :D
the court has jurisdiction over tsmc by virtue of the infringed process being used by tsmc's equiptment, and over omnivision by virtue of its device using the process in its manufacture. the court can seize any product from apple rimm etc... that contains such a product to prevent its importation or sale in the United States, and the FTC can do this as well, and the ITC can do it worldwide.
ReplyDeleteobviously the behavior complained of is not covered by an omnivision or tsmc patent or they would have raised it as a defense by now or by January 25th as indicated by the current schedule. if such a defense is not made, it's quite possible that the behavior in question (the use of the process by tsmc's equiptment or the use of the process in manufacturing of the omnivison part) may violate ziptronix patent on wafer bonding.
I am not a lawyer but I don't see how a US District Court has jurisdiction over TSMC in Taiwan making sensors in Taiwan for OVT, and OVT then selling those sensors to some module maker in China. I think US patents only cover commerce in the US.
ReplyDeleteMaybe the sensors are made in Oregon or some other TSMC US fab?
Also, I don't think the court can seize anything until it determines infringement. In a manufacturing method patent it is harder to prove that the method was used. It would also be a good test of the patents' validity.
I am guessing this is an uphill battle for Ziptronix.
I wonder what the response will be on January 25th.
eric, u r wrong. the us dist court has jurisdiction over tsmc by virtue of it doing business in the us and having a presence there. obviously, the court has jurisdiction over ovt. tsmc is being sued for making the part. ovt is being sued for selling it. the court can order a temporary injunctive relief on the assumption that the claims set forth in the complaint are true and this can involve seizing any allegedly infringing parts that are on US soil until the dispute is resolved. of course, if it's resolved in ovt's or tsmc's favor, they can sue ziptronix for any damages caused by the seizure to the extent they can prove that ziptronix action was frivolous. and then there's the ftc and the itc actions as well. i would also add that i would amend the complaint to add apple and rimm etc.. as defendants because they are selling products that contain the allegedly infringing devices.
ReplyDeletei am saying that ziptronix has a good case based on all my research.
I agree that Apple and RIM could be (should be) the target of the suit if they are using those allegedly-infringing products. I still don't get the jursidiction argument but several of my former students are patent attorneys so I am going to ask them. Are you an attorney?
ReplyDeleteThe suit hardly seems frivolous to me but having been involved in many more-straight-forward cases for various clients I think it will be a long time before any action is taken unless OVT knows it will lose and decides to settle early. Could happen I guess.
you don't think a request for an injunction preventing sale or import of allegedly affected devices will expedite things especially if apple et al are added as defendants?
ReplyDeletei'm not a patent attorney but i've seen enough of these things with injunctions involving for example sandisk and the mp3 player fiasco ITC seizure in Germany and other similar cases in district court, and before FTC and ITC, where i could not believe the results. and i believe apple has had close calls with this type of thing before as well.
but again, the relief is temporary (and has to be made based on the plaintiff's arguing irreparable injury) and you only have a certain amount of time when it is in effect until you have to allow the defendants their day in court to argue the merits of the case before any permanent injunctive relief can be afforded.
nice to hear you don't think it's frivolous. i have a feeling tsmc/ovt are going to have to make some confidential disclosures to the court if reverse engineering and expert testimony cannot decipher the bonding process as it relates to the patents to an understandable level for a jury trial in California.
for some odd reason, most of these i see are out of the eastern district of Texas probably because they're so plaintiff friendly especially with US plaintiffs versus foreign corporations doing business in the US as defendants.
i'd appreciate hearing what your attorney friends say especially if they have engineering background such as yours which by the way i find extremely impressive.
and as far as ovt thinking it will lose, check out the insider selling since around the time of the complaint, December 6, understanding that you usually get a courtesy call or know well in advance of the filing. i know it's circumstantial but there's just so much of it and you'd think with all the continued apple hype surrounding it the price of the stock could only go up (so executives would wait to sell).
here's a link for recent insider selling
http://www.sec.gov/cgi-bin/browse-edgar?company=omnivision&CIK=&State=&SIC=&action=getcompany
here's a link to the case schedule
http://www.rfcexpress.com/lawsuit.asp?ID=68260
and here's a link to insider selling shown graphically over a year so you can really see the size of the insider selling around the complaint time as opposed to the last year. i should mention most of this selling was not planned selling under i believe sec rule 10b5-1.
http://206.222.29.162/history/company.jsp?company=ovti
I just got around to a quick reading of a couple of the patents. The ones I read have what in my opinion are critical flaws, so I don't think the defendants will have much difficulty winning this case.
ReplyDeletequick read huh? well after doing a more thorough read, could you please give us some color on what are these critical flaws and why you think that? please state it so a jury of lay people can understand it since it's district court in california. and also let us know if you have anything to do with omnivision that might arguably taint your opinion. thanks in advance.
ReplyDeleteI heard through the grapevine that these fellows toured the Ziptronix's plant and signed non-disclosure forms before they walked in. Maybe there is a case for stealing the patents. Just throwing that out there.
ReplyDelete