InvenSense, a leading provider of MEMS motion sensors claimed this week that it won its motion to stay the patent litigation action brought by STMicroelectronics in the US District Court (Northern District of California) due to progress in separate proceedings with the United States Patent Office (USPTO) challenging the validity of all of ST's asserted patents. InvenSense stated that all of ST's claims asserted in this litigation, initiated by ST, are now subject to USPTO reexamination proceedings. Reportedly, USPTO has already determined that "substantial questions of patentability" exist for seven of the nine patents asserted by ST, and USPTO office actions have already been issued for four of the patent reexamination requests. This patent dispute is yet another indication that the market for consumer grade MEMS based motion sensors has become ultra-competitive.
Further, InvenSense stated that USPTO has rejected all of ST's asserted claims in those office actions. In view of these pending reexaminations, the US District Court for the Northern California agreed with InvenSense that it is unnecessary to currently proceed with the litigation initiated by ST and has granted InvenSense's motion to stay the litigation.
"We are very pleased with this decision," said Alan Krock, Vice President and Chief Financial Officer of InvenSense. "The decision provides necessary time for the United States Patent Office to fully reevaluate ST's patents. Based upon our work and actual USPTO rulings in this case to date, we expect ST's patents to be found invalid under the USPTO reexamination proceedings."
Historically, InvenSense developed the first integrated dual-axis MEMS gyroscope for consumer electronics applications, and by 2006, its applications in consumer electronics products created significant customer demand for similar products. ST did not formally enter the consumer MEMS gyroscope market until 2008, when it tried to catch up to InvenSense and target the growing consumer electronics market. InvenSense claims that ST did not develop a two-axis gyroscope for this market until 2009 and its three-axis gyroscope, at issue in this litigation, until 2010. InvenSense said that it continues to innovate sensor technology with the first integrated six-axis gyroscope and accelerometer products introduced in 2011.
On May 16, 2012, despite formally entering the market for consumer MEMS gyroscopes years after InvenSense, ST initiated a lawsuit against InvenSense alleging that InvenSense's leading MEMS solutions infringes nine of ST's patents. Shortly thereafter, InvenSense filed requests for reexamination of each of the nine patents-in-suit with the USPTO based on substantial new questions of patentability related to the claims of the patents-in-suit.
According to the court's order, the case is stayed until USPTO completes its reexamination process and ST has completed any appeals of USPTO's findings, at which time the parties are to provide the court with a status report on the re-examination. InvenSense believes the reexamination process in the USPTO is an important and useful step particularly when companies initiate litigation based upon patent claims that are "invalid" because of prior art that has not been disclosed or considered by the USPTO.
InvenSense's MEMS based motion sensing technology technology can be found in consumer electronic products and applications such as smartphones, tablets, gaming devices, optical image stabilization and remote controls for smart TVs. The companys's sensors are also being integrated into a number of industrial applications. InvenSense is headquartered in Sunnyvale, California and has offices in China, Taiwan, Korea, Japan, and Dubai.
InvenSense pioneered the use of MEMS based gyroscopes for consumer electronics with its first major application being the Nintendo Wii gaming platform. Currently, however, ST is firmly established in the marketplace as the main supplier of MEMS motion sensors for all Apple product platforms such as the iPhone and iPad. Both InvenSense and ST are suppliers to Android based smartphone and tablet makers such as Samsung.
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