Quickturn Scores Major Legal Victories Against Mentor Graphics Corporation And Its French Subsidiary Meta SystemsBY JAMES C. BROOKS
Quickturn Design Systems, Inc., a Silicon Valley manufacturer of high-end Electronic Design Automation tools, has recently achieved a series of legal victories in enforcing its patents rights against EDA industry giant Mentor Graphics Corporation.
Quickturn is the owner of several fundamental patents covering hardware logic emulation technology. Hardware logic emulation is a process whereby circuit engineers can virtually replicate a circuit design such as a design for Application Specific Integrated Circuits, using collections of field programmable gate arrays. The virtually realized circuit designs can then be tested and the bugs worked out before the designs are placed on silicon chips. Quickturn's patents are directed to fundamental emulation concepts and the hardware and software architectures for implementing an emulation system.
Quickturn's legal battle with Mentor began when Mentor purchased Meta Systems, Inc., a small French corporation also engaged in the manufacture and sale of hardware emulation systems. Mentor and Meta secretly filed a declaratory judgment action against Quickturn in the District Court in San Jose, California, alleging that Quickturn's emulation patents were invalid and that Mentor and Meta did not infringe those patents. Quickturn management and its lawyers from Lyon & Lyon of Los Angeles, California, devised a legal strategy for dealing with Mentor and Meta.
First, Quickturn initiated an investigation in the International Trade Commission, charging Mentor and Meta with unfair trade practices because of Mentor's importation of infringing Meta emulation systems. Quickturn's strategy paid off in the summer of 1996. Following a three week trial, the International Trade Commission granted Quickturn's request for a Temporary Exclusion Order and Temporary Cease and Desist Order barring further entry of infringing Meta emulation systems into the United States, absent Mentor's posting of a substantial bond. Quickturn's TEO was one of only a handful of TEOs that have ever been granted by the ITC. Mentor appealed the ITCs Temporary Orders, but the Court of Appeals for the Federal Circuit upheld the grant of temporary relief, adopting Quickturn's position on patent claim interpretation. Following a second three week trial in the spring of 1997, the International Trade Commission entered a Permanent Exclusion Order and Permanent Cease and Desist Order which permanently bars any further importation of any infringing Meta emulation systems and emulation system components, including operating software for the systems. The Commission's final decision was particularly noteworthy, in that the Commission's orders specifically prohibited the importation of software through any medium whatsoever, including electronic medium such as the Internet or Mentor's corporate intra-net. This was the first time in the Commission's history that importation of infringing components via electronic means had been prohibited.
While the International Trade Commission Investigation was proceeding, the District Court action filed by Mentor in California was transferred to the Oregon District Court in Portland. There, following its strategy of aggressively protecting its intellectual property rights, Quickturn filed a motion for a preliminary injunction against Mentor and Meta, seeking to prohibit any domestic manufacture of the infringing Meta emulation systems. Quickturn succeeded in the District Court when, in the summer of 1997, U.S. District Court Judge James A. Redden issued a preliminary injunction barring Mentor and Meta from manufacturing, selling or using infringing Meta emulation systems in this country. The District Court case is scheduled for trial later this year.
Quickturn's trial counsel in both the International Trade Commission and the District Court lawsuits, Lyon & Lyon, is a Los Angeles-based intellectual property firm. Founded in 1901, Lyon & Lyon has over a hundred attorneys in five offices in California and New York.
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