One-word opinion seals win for Sidense

A US appeals court has given a one-word opinion affirming that Sidense, which designs non-volatile memory devices, did not infringe patents owned by rival Kilopass.

The US Court of Appeals for the Federal Circuit agreed with the US District Court for the Northern District of California, which last year cleared Canadian company Sidense of breaching three patents.

“We never doubted that this lawsuit was a meritless attempt to derail Sidense and its superior technology in the marketplace," said Sidense president Xerxes Wania.

Non-volatile memory devices, marketed by US company Kilopass and which contain semiconductors, can store data within integrated circuits (chips) without requiring power. Sidense designs similar technology and licenses it to chip-makers, with the chips being placed in consumer electronics.

Kilopass sued Sidense in May 2011, claiming one such chip contained its technology and infringed three patents. Sidense responded by requesting a summary judgment, arguing that four limitations of Kilopass’s claims are not found in its technology:

The Californian district court rejected Kilopass’s arguments in August 2012 and granted summary judgment. In particular, Kilopass had taken a contradictory position on the validity of one of its asserted patents, which Sidense subsequently asked the USPTO to re-examine after it was sued.

Kilopass said the patent was not anticipated by an earlier one, a statement that was “clearly irreconcilable” with its position in the Sidense case, and one that “clearly and unmistakably disavowed claim scope”, according to the court.

“That there is no written opinion – it just says affirmed – says to me that the Federal Circuit didn’t think it was a close case,” said Steve Auvil, partner at law firm Squire Sanders, in response to the latest ruling.

“But it’s not uncommon for a one-word opinion,” he said.

Auvil said the summary judgment was very well-reasoned, noting in particular that Kilopass "took a position (at the USPTO) that actually hurt them, and the district court noted these inconsistencies”.

Dave Francescani, principal at law firm Fish & Richardson, said he was very impressed with the judge’s “very compelling analyses” on the disavowal point, adding that there was “no doubt that they [Kilopass] were well aware that they were taking a contradictory position”.

The lawyers said the patents in the suit were relatively narrow, a reflection of a substantial amount of prior art in the semiconductor industry. As a result, it can be hard to litigate patents that are not broad in scope.

Francescani said: “The semi conductor industry has been around for quite a while and there is a world of prior art to look at. You have a situation where advances in technology are limited by the prior art.”

WIPR contacted Kilopass, which said it would respond with a statement. At the time of writing, we had not received the statement.