Fujitsu wins court ruling in TI's Kilby patent case

Fujitsu wins court ruling in TI's Kilby patent case
By J. Robert Lineback, Semiconductor Business News
April 11, 2000 (6:56 p.m. EST)
URL: http://www.eetimes.com/story/OEG20000411S0008

DALLAS -- Texas Instruments Inc. today said its cross-licensing agreements and royalty revenue in Japan remained intact despite the dismissal of its IC-patent infringement claims against Fujitsu Ltd. Earlier today, Japan's Supreme Court ruled that Fujitsu had not infringed on TI's Kilby (320,275) patent, which covers basic technology for ICs.

The high-court ruling ends a decade-long battle between TI and Fujitsu, which refused to pay royalties on DRAMs and EPROMs based on the Kilby patent. In 1991, Fujitsu filed suit against TI, asking a Tokyo District Court to declare that the Kilby patent did not apply to its products.

In 1994, the district court ruled in favor of Fujitsu, saying that TI's Kilby patent did not apply to the company's 1-megabit and 4-Mbit DRAMs and 32-kilobit EPROMs. TI decided to appeal the case to Japan's Supreme Court.

The Kilby '275 patent (named after Jack Kilby, who created the first IC while working at TI in 1958) has been used by the Dallas company to collect hundreds of millions of dollars in royalties from Japanese and Korean chip makers since 1987. TI waited 29 years for the Japan Patent Office to issue a patent in 1989 for Kilby's IC technology.

In response today's ruling, TI said the high court's decision does not affect the terms and conditions of existing cross-licensing agreements or royalty revenue in Japan. The Dallas company said it expects to continue to receive an ongoing stream of royalties from licensing pacts--most of them covering a 10-year period and signed before the original district court ruling in 1994.

In 1996, TI and Fujitsu reached a cross-licensing agreement after years of negotiations. The agreement excluded technology covered by the Kilby patent, which expires in Japan on Nov. 27, 2001.