Despite receiving a favorable ruling in a US International Trade Commission (ITC) over a patent infringement lawsuit brought by Tessera, memory packaging and testing service provider Powertech Technology (PTI) has filed a declaratory judgment action against the ITC ruling, according to a company filing with the Taiwan Stock Exchange (TSE).
The claim, docket number "CV10-00945-EMC," was filed with the US District Court for the Northern District of California. PTI is requesting that the ITC clarify its rights concerning its upcoming royalty contract renewal with Tessera.
PTI indicated that the reason given by the court as to why its micro-BGA products do not infringe US Patent No. 5663106 (106 patent ) was "patent exhaustion" and that doctrine was applied because PTI pays a royalty to Tessera. However, PTI believes the court's decision was too narrow. The company believes its micro-BGA products do not "read on the claims" (do not literally infringe the patent) of the 106 patent and it wants the court to dig deeper.
The reason is that the issue relates to the scope of the royalties PTI will need to pay Tessera in the future. Therefore PTI is looking to have the relevant issues litigated and tried in a competent court. PTI said it is paying royalties to Tessera regarding micro-BGA packaging for DRAM chips under the current contract which will expire in 2012.
Tessera earlier asserted three patents (US Patent No. 5663106, 6133627 and 5679977) regarding window-BGA and micro-BGA packaging technologies in its complaint to the ITC against several DRAM chipmakers and their backend partners. Tessera received a notice of ITC's final determination in December 2009 that indicated no violations were found in the DRAM ITC action (Investigation No. 337-TA-630).
PTI noted that the declaratory judgment action is unlikely to have a material impact on its operations.