Chipmakers Settle Patent Spats

After years of disputing their patents, two chipmaking rivals are burying the hatchet.

In a joint statement issued Monday, Broadcom said it has dropped all outstanding patent and antitrust litigation against Microtune .

Instead, the two companies have entered into a separate patent
cross-license agreement worth $22.5 million, “whereby patents claiming
priority prior to the effective date of the license agreement are licensed
for the lives of the patents, and patents filed within the next four years
are licensed for ten years,” the statement said.

Under the agreement, all products of Irvine, Calif.-based Broadcom are
licensed under all of Plano, Texas-based Microtune’s patents, and all
current products and future analog signal processing products of Microtune
are licensed under all of Broadcom’s analog signal processing patents.
Additionally, Broadcom and Microtune agreed to various covenants on other
issues.

The two sides have been in legal combat for more than two years. On March
21, 2002, a jury ruled in favor of Microtune in a patent infringement case
against Broadcom, finding that Microtune’s U.S. Patent No. 5,737,035, was
valid and that Broadcom was infringing. The ‘035 patent covers technology
found in Microtune’s single-chip tuner, which allows for high-speed delivery
of video, voice and data across broadband communications electronics,
including cable modems, set-top boxes, digital TVs, cable telephony systems
and PC/TVs.

At the time, the court barred Broadcom from selling its BCM3415 silicon
tuner and certain reference boards containing the technology.

Broadcom had also filed a case in the U.S. District Court for the
Northern District of California, seeking monetary damages and a permanent
injunction against the manufacture and sale of devices that Broadcom feels
infringe on electrostatic discharge protection circuits and other wireless
technologies, which the firm said are covered by its patents No.
6,445,039B1, “System and Method for ESD Protection,” and No. 5,682,379 and
6,359,872, both titled “Wireless Personal Local Area Network.”

About the same time, Microtune filed antitrust
claims
against Broadcom, and Broadcom retaliated with an unfair
trade practices complaint
against Microtune with the U.S. International
Trade Commission (ITC).

There have been some negotiations between the two rivals. Back in June
2003, Microtune asked the courts to dismiss Broadcom’s suit alleging that
solid state RF tuner products made by Microtune infringed Broadcom’s U.S.
Patent No. 6,377,315, “System and Method for Providing a Low Power Receiver
Design.”

Much of the progress began soon after Microtune experienced a major
shakeup of its executive lineup when the Board of Directors asked James
Fontaine to return to the company, as president and CEO. Previous company
CTO Al Taddiken was appointed as COO to flank Fontaine.

Microtune currently holds 25 U.S. patents for its technology, with more
than 50 applications pending approval that span its RF and wireless
products, containing more than 2,000 supporting claims.

Broadcom currently has 250 U.S. patents under its belt, out of which 100
relate to tuner, mixed signal and wireless technologies.

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