MUNICH, Germany ( ChipWire) -- Altera Corp. will appeal a federal jury decision handed down on Friday that it has infringed two patents owned by Xilinx Inc. (see Nov. 20 story).
The Friday judgment was a key step, but probably not the final one, in a court case that was originally filed in 1993 and finally went to trial Oct. 5 in the federal district court in San Jose. And that court case is just one battle in a legal war that is being fought behind the scenes by the two giants of user-programmable logic.
On receiving the most recent judgment, Xilinx of San Jose said it would be seeking an injunction to prevent Altera, also of San Jose, from shipping products from its Flex range and derivative programmable logic devices that infringe the patents immediately.
Paul Hollingworth, European marketing director for Altera, said the company disagrees with the jury's decision and would appeal but at the same time sees little commercial significance in the ruling. Hollingworth said that even in the unlikely case that an injunction was granted against Altera it would only apply in the United States, and, as only the Flex-8000 series was relevant to the claims in the case, it would only affect about 2% of Altera's business.
Hollingsworth said he would be surprised if Xilinx follows through with an attempted injunction as it could harm companies that are customers of Xilinx as well as of Altera.
"An awful lot of the main customers are both Altera and Xilinx customers," he said before adding: "This affects the Flex 8000 only. The Flex-10K-EV is not affected. The Flex-6000 is not affected."
According to Altera, the jury verdict follows from the court's ruling that all claims made by Xilinx against Altera's Max family of products would be dismissed with prejudice. Altera pointed out that in other rulings, the court found a number of claims in the Freeman patent to be invalid and that the main claim of the Carter patent is also invalid.
But Tom Lavelle, general counsel for Xilinx, put a far more commercially significant interpretation on the findings.
Lavelle said that at least one of the patents, the so-called Freeman patent, was very broad and that therefore it was Xilinx's position that the whole of the Flex range infringed it and that Altera's Apex range also infringed it. "We believe the Apex family is fairly likely to infringe. The more recent Acex family we haven't yet investigated," he said.
The Freeman patent is named after Ross Freeman, a founder of Xilinx and the company's first chief technology officer. The U.S. patent number 4,870,302 filed in 1989 and reissued in 1993 under reissue number 340,363 covers the use of programmable I/O and programmable configurable logic blocks which can be programmably connected, said Lavelle.
He added that the second patent, the so-called Carter patent numbered 4,642,487 and filed in 1987, covers the special interconnection of non-nearest-neighbor logic blocks.
Lavelle added that the global nature of electronics meant that an injunction against shipping a part in the U.S., if granted, was effectively a bar on design wins for that part. Lavelle said that infringing products would be covered as well. So equipment that contained infringing parts built elsewhere but entering the U.S. could be seized, he said.
Lavelle said Xilinx's next step was to approach the judge and seek an injunction. "If they the courts did issue an injunction they might put a stay on it while Altera appeals. But customers may not want to design in parts with a stayed injunction hanging over them," Lavelle said.
As to the charge that an injunction on Altera parts could harm Xilinx customers as well, Lavelle said, "If intellectual property laws are in place they are there to be enforced. Otherwise what's the point of having them. Xilinx will always work in the long-term best interest of our customers."
Altera believes that both the Freeman and the Carter patent should have been invalidated.
"Xilinx confused the jury by focusing on unpatented features common to both companies' products," said Del Bergere, vice president and general counsel of Altera.
Meanwhile the war continues and Altera has three patent-infringement lawsuits pending against Xilinx. Its most recent lawsuit was filed in June 2000. In that suit, Altera alleges that Xilinx's Virtex product lines infringe three newer Altera patents covering the Embedded Array Block (EAB) technology pioneered by Altera and first introduced in the Flex 10K family in 1995. Claim construction hearings in this lawsuit are scheduled for December.
It's unlikely that an injunction will be passed before Altera gets a chance to make its appeals, said Murray Disman, who writes a newsletter on programmble logic. "It's hard to imagine a judge giving Xilinx an injunction and messing up all those customers," he said.
In part, Altera's arguments will probably hinge on the makeup of the jury that heard Xilinx's patent case. "Altera made a big deal out of it being a very unsophisticated jury. They said only one person had an education beyond high school," Disman said.
In their statement, Altera officials said they believe the jury verdict should be reversed. Separately, Altera has countersuits still pending against Xilinx.
Disman's hunch is that the Xilinx-Altera suit will end peacefully, as is common in high-profile electronics disputes.
"If they're smart they'll just do a cross-license and let it go," Disman said. "If they're rambunctious, it could go on forever."
If customers get nervous about the lawsuit, one possible winner could be Clear Logic Inc., Disman said. Clear Logic of San Jose uses a fuse-based architecture to duplicate a Flex 8000 design gate-for-gate.
Additional reporting by Craig Matsumoto.