Court Dismisses UNM Patent Suit against Intel

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 for more details. To get alerts on cases filed/closed, subscribe to our Litigation Alerts.

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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.