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US court validates Anil Gupta's patent
By siliconindia staff writer
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Friday, 16 January 2004, 20:30 IST
CALIFORNIA: Indian American engineer Anil Gupta had his patent validated in a $36.5 million court judgment - one of the largest patent infringement awards ever in the US District Court for the Northern District of California.
In November, the US Court of Appeals for the Federal Circuit ruled in favour of Atmel Corp. in San Jose, California, which in 1996 sued Silicon Storage Technology of Sunnyvale, California, for patent infringement over the "811" patent, which Gupta developed when he worked at Seeq Technologies about 20 years ago.
Atmel, a worldwide leader in the development, fabrication and sale of advanced semiconductors, in 1994 acquired the non-volatile memory business unit of Seeq, including the rights to the 811 patent, according to Nitin Subhedar, a shareholder and patent litigation attorney in the law firm of Heller Ehrman White & McAuliffe in their Menlo Park, California office.
The Indian American attorney called it an "interesting twist of fate" that Gupta worked at a series of companies after he left Seeq, including Excel, Signetics, Altera and Catalyst, before being hired at Atmel a year after the company acquired the 811 patent.
THE COMPLETE STORY
Anil Gupta was born and raised in India, and he immigrated to the United States in 1975 while in his mid-20s. As a young electrical engineer working for Seeq Technology in the early 1980s, Gupta invented a novel circuit for selectively increasing the voltage on a conductive line in a semiconductor circuit.
He was awarded a United States patent for this circuit in 1985 (known as the "'811 patent"), and he subsequently went on to have a successful career in the semiconductor industry with companies including Exel, Signetics, Altera, and Catalyst. In 1995, Gupta took a position with Atmel Corporation in San Jose, California.
In an interesting twist of fate, Atmel had just one year earlier acquired the nonvolatile memory business unit of Seeq an acquisition that had given Atmel ownership rights to, among other things, the '811 patent that had been awarded to Gupta nearly a decade earlier.
Nitin Subhedar was born in the suburbs of Detroit, Michigan in 1968, to Indian-born parents who had immigrated to the United States in the mid-1960s. After obtaining both an electrical engineering degree and a law degree from the University of Michigan, Subhedar relocated to the San Francisco Bay Area and ultimately took a position as a patent litigation attorney with the law firm of Heller Ehrman.
In 1996, Subhedar began working on behalf of long-time Heller Ehrman client Atmel, in connection with a number of lawsuits that Atmel had filed against parties believed to be infringing Atmel's patents. One of the patents at issue was Mr. Gupta's '811 patent, and one of the parties accused of infringing it was Silicon Storage Technology, Inc. ("SST").
Over the next five-and-a-half years, Subhedar and his colleagues worked closely with Gupta and other personnel at Atmel to pursue the case again SST, overcoming several obstacles and various setbacks along the way. Their efforts culminated in a three-week trial before a jury in the United States District Court for the Northern District of California, in which the invention first conceived by Gupta over twenty years earlier was the center attraction.
After deliberating for less than three hours, the jury returned its verdict in late April of 2002: the '811 patent was found to be valid and infringed by the defendant SST. Based on this verdict, the trial court entered judgment requiring SST to pay Atmel the sum of approximately $36.5 million one of the largest patent infringement awards ever obtained by a party in this court. Not surprisingly, SST immediately appealed.
In late November 2003, however, the United States Court of Appeals for the Federal Circuit issued its final ruling, rejecting SST's appeal in its entirety and affirming the trial court's judgment in all respects. Accordingly, after over seven long years of intense effort, it appears that Atmel's victory against SST on this patent is now final and complete.
As demonstrated above, this story involves two individuals of different generations, one an Indian immigrant and the other born in the United States to Indian immigrants, working together toward a common goal.
Although both men were trained as electrical engineers, one practiced in the field and patented a novel circuit, while the other's pursuit of a career in law ultimately played an important role in helping to realize the full value of that patent. Through teamwork, diligence and perseverance, the two men and their colleagues were able to obtain the ultimate in vindication and justice.
This story highlights the rich diversity that exists within the Indian and Indian-American communities, while also providing a wonderful example of how collaboration and hard work can lead to enormous success.