Case Filed: Mar 08, 2013
Case Closed: Jun 06, 2014
Origin Case: 1:10-cv-01077
Case Summary:
Albuquerque, New Mexico-based STC
UNM (formerly known as the Science & Technology Corporation @ UNM), a
nonprofit corporation formed and owned entirely by the University of New Mexico
Board of Regents (UNM) filed the patent infringement suit against Intel in Nov
2010, concerning an U.S patent covering a method for extending the available
spatial frequency content of an image, which was filed in New Mexico District
Court. STC also collaborates with researchers at New Mexico's two national labs,
Sandia National Laboratories and Los Alamos National Laboratory.
Patent-in-suit:
The patent at issue was: US6042998
entitled ‘Method and Apparatus for Extending Spatial Frequencies in
Photolithography Images,’ issued on Mar 28, 2000 and expiring[i]
by Sep 17, 2017. STC UNM is the current assignee[ii]
of the patent (source: MaxVal’s Assignment
Database.)
As in Complaint:
Intel has infringed the claims of
the ‘998 patent by making, using, selling and offering for sale semiconductor
devices with critical dimensions of 45nm or less. STC UNM alleged the
infringement was willful and requested damages no less than a reasonable
royalty.
District Court:
According to court documents, STC
UNM stated that Sandia co-owned the ’998 patent. However, non-party Sandia
indicated that it believed it had no ownership interest in the ’998 patent and
refused to join the case, “preferring to take a neutral position with respect
to this matter.”
In Jan 2012, Intel moved for
summary judgment, asserting that the ’998 patent was unenforceable. The
district court was of an opinion that STC UNM could not maintain its suit
because non-party Sandia, a co-owner of the patent, had not voluntarily joined
as a co-plaintiff and could not be in-voluntarily joined.
Accordingly, in Feb 2013, the
court granted Intel’s motion to dismiss the case for lack of standing and
ordered that claims be dismissed with and without prejudice as to liability for
patent infringement before Dec 2011 and after Dec 2011 (respectively) and counterclaims
be dismissed without prejudice.
Appeal Court:
The case was appealed to Federal
Circuit where the district court’s decision was affirmed stating “as a matter
of substantive patent law, all co-owners must ordinarily consent to join as
plaintiffs in an infringement suit.”
See 2013-1241
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[i]
Expected expiration date. Patent Term Estimator
is a free web-based tool that automatically calculates patent terms and
expiration dates for U.S. utility patents.
[ii]
MaxVal offers Patent Assignment Alert service
where subscribers receive email alerts when assignments relating to target
applications, patents or entities of interest are recorded.
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