Finnegan: Ziptronix has lost its 2010 lawsuit against Omnivision and TSMC on infringement on its 9 patents on direct wafer bonding.
"In Ziptronix, Inc. v. OmniVision Technologies, Inc. a Taiwanese contract manufacturer and its U.S. subsidiary moved for summary judgment of no infringement because the allegedly infringing activity occurred only in Taiwan, with the exception of negotiations and contracting in the United States. The district court granted summary judgment, finding that even if negotiation and contracting occurred in the United States, there could be no direct infringement under U.S. patent law because the contracts contemplated delivery and performance to take place solely abroad. Additionally, the patent holder failed to present evidence that the Taiwanese manufacturer's customer, OmniVision, committed an underlying act of direct infringement. Thus, the court concluded, the Taiwanese manufacturer and its U.S. subsidiary did not commit or induce infringing acts "within the United States."
For those who skilled in legal language and logic, the full text of California Court summary judgement from Oct. 21, 2014 can be downloaded here. More discussions on patent law gray areas, apparently involved in this case, can be found in another Finnegan article.
I think that the story is not yet finished. Since the accused sensors HAVE been sold in US. So Ziptronix can still sue the distributors/importators of such accused sensors. Of course that is more difficult since they are numerous. Unfortunately Apple doesn't use OV sensors now, otherwise it's easier to directly sue this big and fat guy!
ReplyDeleteThis "big and fat guy" can fight back like he thought he's got some real muscle under his flab...
DeleteToo bad for Ziptronix. Hopefully they will gain more from the licensing deal with the market winner (Sony) than what they lost from this alleged (and not even denied?) infringement. I wonder how much of a victory this really is for the defendents.
Is the lesson learned here that US patents are not sufficient in the world where only the business and financial side of the operation is conducted in the US, and manufacturing, including "add(ing) additional components" happens offshore? Are foreign patents now a necessity? Are US patents even worth anything in such cases?
ReplyDeleteTheoretically you could stop the sale of such items in the US so it would still be more than worthwhile given the size of the market.
DeleteIt is still questionable whether Omnivision(i.e. TSMC) infringed on Ziptronix patent. SONY signed a license on September 1, 2011. SONY claims it made the first BSI image sensor earlier than Omnivision. The iPhone 4 with Omnivision BSI sensor is introduced in 2010. So why Ziptronix did not sue SONY too? May be there is alternative method? If so, then Ziptronix patent is not a must. Further, iPhone 4S uses SONY BSI image sensor was introduced in 2011. Does it use Ziptronix patent? There are a lot questions.
ReplyDelete