Kingston Technology Inc. Tuesday said the firm no longer is paying 5% royalties to Sun Microsystems as part of its recent settlement of a patent infringement lawsuit.
Kingston had been paying the royalties under a 7-year old license for DRAM modules made for Sun's SparcStation work stations and servers.
As part of its recent settlement of a patent infringement lawsuit, Kingston officials said they eliminated the existing royalties, at the same time they were absolved of makingadditional licensing payments on other Sun patents.
Sun had sued Kingston alone among the host of memory module makers, charging the Fountain Valley, Calif., firm had violated its other patents on connecting DIMMs to a 64-bit memory bus
The settlement was recently reported by EBN but Kingston was prevented from discussing any details under the agreement's gag order under this week. A Sun spokesman asked to comment has not yet replied by presstime.
Attention on the recent Sun infringement suit centered around its patents for module interface to the 64-bit memory bus. Dean Dunlavey, Kingston attorney, disclosed the firm's added
benefit in the settlement by being freed of the 5% royalties it had been paying Sun since 1994 under the other patents.
A host of memory firms hold licenses from Sun for the SparcStation modules technology. The lifting of Kingston's royalty rates under these patents could shake up the market dynamics if any competitors tried to seek the same
elimination from Sun.
The Kingston-Sun patent case also involved allegations that the workstation and server firm failed to disclose its patent applications while participating in an industry JEDEC committee drafting an open industry standard on the 64-bit bus DIMM interface.
This mirrored a similar dispute in the Rambus-Infineon SDRAM infringement suit in which a Richmond, Va., federal
court jury found Rambus had committed fraud by hiding its patent applications.
Dunlavey said Kingston filed a complaint with the Federal Trade Commission that Sun's silence in its JEDEC participating was an antitrust restraint of trade.
He said the FTC launched an investigation and subpoenaed documents. However, while the FTC probe was continuing, Sun agreed to settle the patent infringement suit it had filed, the Kingston attorney said.
Kingston also argued that Sun's patents were invalid because of prior inventions before the firm filed its applications. The firm alleged that Sun had knowledge of the prior art, which it failed to disclose in its applications to the Patent and Trademark Office. These charges were never adjudicated, because the case was closed as a result of the settlement.