IPtronics, Avago escalate patent war

Parallel optics semiconductor vendor IPtronics A/S has launched a new volley in its patent battle with Avago Technologies (NASDAQ:AVGO). The company alleged in claims filed in the U.S. District Court for the Northern District of California in San Jose last week that Avago violated its legal obligations to fellow members of the Small Form Factor (SFF) standards group and failed to protect IPtronics’ confidential information. A source within Avago’s patent team dismissed the claims and promised the company would file a response in rebuttal.

The clash between the two companies began in June 2010 when, fresh off of winning a decision before the U.S. International Trade Commission (ITC) against EMCORE regarding its parallel optics patents, Avago launched a similar case in U.S. Court against the privately held IPtronics. Avago alleged that IPtronics’ VCSEL drivers violated two Avago patents, U.S. 6,947,456 (“Open-loop laser driver having an integrated digital controller,” otherwise known as “the 456 patent”) and U.S. 5,359,447 (“Optical communication with vertical-cavity surface-emitting laser operating in multiple transverse modes,” or “the 447 patent”).

The 447 patent is the primary target of IPtronics’ latest claims. As described to Lightwave by IPtronics Chairman Martin Rofheart, the patent covers an optical communication system with a power source, a surface-emitting laser (specifically, a VCSEL), what is in essence a multimode fiber and coupling assembly, and a receiver. An important point to note, asserted Rofheart, is that the surface-emitting laser in the patent is described as having an aperture of 8 microns or greater.

IPtronics alleges in its filing that Avago failed to inform its fellow members on the SFF-8436 committee that it owned “essential IP” germane to the specifications, then failed to provide free or reasonable and non-discriminatory access to the IP as it was bound to do by SFF patent policy.

In addition, as Floyd Anderson, vice president and chief patent counsel at Avago told Lightwave, Avago has asserted under a “doctrine of equivalence” in its case against IPtronics that the 447 patent also covers surface emitting lasers with apertures smaller than 8 microns. Thus, Rofheart implied to Lightwave, if Avago is successful in its suit, it will be able to assert that any VCSEL-based module designed to SFF-8436 – and, potentially, other short-reach VCSEL-based specifications – is in violation of the 447 patent.

The implications of such a decision are significant, Rofheart said, given that the QSFP optical transceivers commonly used in 40 Gigabit Ethernet multimode fiber applications are based on VCSELs and SFF-8436. Similar legal doubt could be cast on VCSEL-based modules designed to 100GBase-SR10 as well as modules that may be designed to the 4x25-Gbps multimode specifications now under development by the IEEE, he added.

Anderson pointed out that EMCORE made similar assertions in the earlier case before the ITC, which the ITC rejected. He says that Avago will file a response to IPtronics’ claims in the California court. Without saying what that response will entail to avoid disclosing Avago’s legal strategy, Anderson stated, “We are confident we will be able to respond to their allegations.”

In the meantime, Rofheart said that IPtronics is rallying support for its cause from its customers and fellow members of SFF. He said that some of these vendors have privately expressed support, but none has agreed to join the suit or file a similar claim.

Rofheart added that it could take 18 to 30 months for the court to reach a final decision, barring a settlement or some other major event.

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