Let’s start with the cases in which Macronix is going after Spansion.
1. First, Macronix currently has a seven-patent infringement litigation pending against Spansion in the United States District Court of Virginia. The court accepted the case. Spansion is asking the judge to transfer the case from Virginia to another court in California. The judge is expected to rule on the change of venue during this quarter, according to Spansion.
2. Second, Macronix has actions at the US Patent Office to invalidate Spansion’s patents asserted in another ITC case. Macronix is challenging the validity of each of the patents Spansion has asserted against it in the United States. Inter-parties review is reportedly a new type of proceeding that became available on September 16, 2012, for challenging the validity of patents issued by the USPTO.
Spansion, however, takes a view that “Macronix has used legal loopholes to file with the ITC, claiming a partnership with a US company.” As Spansion’s Pourkeramati noted during an interview with EE Times, “Macronix has no domestic industry in the United States,” which is generally required by the ITC. Spansion claims that Macronix has no U.S.-based design or manufacturing.
3. Independent of Macronix’ aforementioned challenge at ITC, Spansion had asked the US International Trade Commission (ITC) to bar importation to the US market of infringing Macronix flash memory devices and all downstream products that include infringing Macronix flash memory devices. Last September, the ITC voted to institute an investigation of unfair importation by Macronix Inc.
Spansion expects the trial at ITC to start in May this year. The judge’s decision is expected in late summer, according to Pourkeramati. Spansion hopes that the ITC’s “exclusion order” for Macronix products will be put in place by January, 2015.
4. Spansion also has a pending patent infringement case against Macronix at a district court of California. This is a complaint that Spansion filed against Macronix last August.
The California district judge ordered a stay until the ITC’s decision comes down. However, Spansion claims that [the outcome of] one trial does not affect the other.
At the heart of Spansion’s complaint against Macronix are patents related to the structure, manufacturing and security of flash memory cells, according to Spansion. The IP is used in a wide variety of applications including networking equipment, automotive, industrial and consumer electronics.
Pourkeramati likes to point out one of the key “security” features in the company’s flash IP. When flash memory code needs to be secured form copying or alteration by hackers, Spansion's flash, for example, offers advanced sector protection, he said. “This has been already used in a number of set-top boxes,” he added.
— Junko Yoshida, Chief International Correspondent, EE Times