The United States International Trade Commission issued orders on the grounds of a Zoran's patent being infringed and made used of in optical disk controller chips and chipsets sold by MediaTek and by a number of MediaTek customers. Wednesday's ITC order excludes MediaTek optical storage chips from being imported and sold in the US.
The story began back in March 2004, when Zoran and its wholly-owned subsidiary, Oak
Technology, filed a patent infringment complaint with the U.S. ITC against MediaTek alleging
that MediaTek DVD player and optical disk controller chips and chip sets had infringed three
patents co-owned by Zoran and Oak. Two of the three, U.S. Patent Nos. 6,584,527 and
6,546,440, related to optical drive controller design. The third, U.S. Patent No. 6,466,736,
related to integrated DVD/CD controller design. Today's ITC order finds that only No.
6,584,527 patent is valid.
The complaint demands an immediate ITC investigation of Mediatek products be carried out and
exclusion along with cease and desist orders be issued to prohibit importation of
the MediaTek devices and products that contain infringed material into the United States.The exclusion order issued by the ITC also includes Mediatec's customers who have been using the aforesaid products.
Although MediaTek had requested that the ITC to categorically exclude their alleged
design-around chip from the scope of the exclusion order, the ITC refused to do so. Based
upon currently available information, Zoran says that MediaTek's newest generation of chips,
including its purported design-around chip, will be excluded entry into the United States, as
will the products of any specified MediaTek customer that uses those chips.
The ITC's exclusion order is effective immediately, and include prohibition of unlicensed
entry of any chip or chipset covered by the patent that is manufactured abroad or imported by
or on behalf of MediaTek, its contractors or any related or affiliated company, as well as
any optical storage device containing such covered chips or chipsets that are manufactured
abroad or imported by or on behalf of the following companies that use MediaTek chips:
Artronix Technology, Inc.; ASUSTek Computer, Inc.; ASUS Computer International; EPO Science &
Technology Co., Inc.; LITE-ON Information Technology Corp.; Micro-Star International Co.,
Ltd; MSI Computer Corporation; TEAC America, Inc.; TEAC Corp.; Ultima Electronics Corp.; and any of these companies' contractors or related or affiliated companies.
UPDATE: MediaTek's Response
Taiwanese Mediatek has immediatelly responed in the court rulling saying that the "impact will be minimal".
"MediaTek believes the impact of today's ruling will be minimal, if any, as it has already developed a design - around solution that is specifically crafted to avoid infringement of the specific patent. The design-around solution was carefully developed with thorough input from several teams of U.S. patent counsels whom have concluded that the new design does not infringe upon Zoran's patent."
"In addition, the record clearly indicated
that these design-around chipsets are not found to be infringing in this investigation. As such, MediaTek is confident that the limited exclusion order issued by the Commission today only concerns certain MediaTek's old model optical storage chipsets specifically found to have infringed Claim No. 3 of the 527 patent and that the new generation design-around chipsets will not be affected by today's ruling. MediaTek has already provided its customers with the new generation chipsets and all customers have already migrated to the new solution in their products since the middle of this year."