Lexra to move for dismissal of MIPS patent suit

Lexra to move for dismissal of MIPS patent suit
By Will Wade , EE Times
September 20, 2001 (9:57 a.m. EST)
URL: http://www.eetimes.com/story/OEG20010920S0014

SAN MATEO, Calif. — Lexra Inc. said it plans to file a motion for summary judgment following a ruling earlier this month from a U.S. District Court in Lexra's ongoing patent infringement case against MIPS Technologies Inc. However, MIPS is disputing Lexra's interpretation of the ruling and is digging in for a long legal battle.

"This is the start of a lengthy trial phase," said John Bourgoin, chairman and chief executive officer of MIPS (Mountain View, Calif.).

A judge in the U.S. district court in Oakland, Calif. issued a ruling earlier this month in a special hearing, known as a Markman hearing, in which the court decides how to interpret certain sections of a patent, and what criteria it will use to evaluate patent infringement claims during a civil trial. Charlie Cheng, president and chief executive officer of Lexra (San Jose, Calif.), said this ruling gives him the basis for a motion of a summary judgment to dismiss the MIPS suit agai nst his company.

Lexra produces MIPS-compatible microprocessor cores but does not hold a license from MIPS. Lexra's main contention in its defense is that it uses software to emulate MIPS core functions without actually using the full MIPS instruction set. MIPS filed suit against Lexra in October 1999, claiming Lexra's design infringed upon its intellectual property.

"We have to protect our intellectual property," said Jim Kurkowski, director of intellectual property for MIPS. "It is one of the most important, if not the most important, assets in the entire company."

The Markman ruling addressed two different patents in question, known as the 976 patent and the 703 patent. Cheng explained that the 703 patent addresses how a device handles overflow data, and said that the ruling favored his company. He also said that the 976 patent was not valid, due to an earlier ruling by the U.S. Patent and Trade Office, which came out in June. The PTO at that time held that some of the MIPS claims within that patent were not valid, because they had been predated by a 1975 patent issued to IBM Corp.

"So, because the 976 patent is not valid, and the ruling shows that we do not infringe upon the 703 patent, we are going to file a motion for summary judgment," said Cheng.

However, the MIPS team disputes both those points. Kurkowski noted that the PTO ruling has been appealed by MIPS, and since no final ruling has been issued, the 976 patent is still valid. The PTO office is expected to issue a final ruling shortly, perhaps next month. Furthermore, because the PTO and the district court are completely different governmental agencies, Kurkowski said that the court is still acting under the assumption that the 976 patent is valid, and would continue to do so even if the PTO ruled otherwise — at least until the civil court had the opportunity to evaluate the question in a hearing.

Kurkowski said that the Markman ruling on the 976 was favorable to MIPS, because it declared that it made no difference whe ther certain system functions happened in software or in hardware. The Lexra argument focused on exactly that point, because it uses software to deliver some MIPS-like functions, but the judge ruled other wise.

"For us, the 976 patent is a non-issue because it has been invalidated," said Cheng. Other observers question the foundation of Cheng's argument.

"I haven't seen anything to suggest that any door has been shut completely regarding that patent," said Erach Desai, vice president of equity research for Credit Suisse First Boston. "I expect we'll see all that come up in court."

Linley Gwennap, founder and principal analyst for research firm The Linley Group (Mountain View, Calif.), said this ruling is more procedural than anything else, and does not change anything yet. "Lexra made some headway earlier when some parts of the 976 patents were taken off the table, but all MIPS has to do to win their case is to find one claim that will stick," he said. "The courts have certainly not made any fina l determination that the patent is invalid."