News

15 April 2009

 

Bookham settles with JDSU over tunable laser patents

Last week, optical component and module maker Bookham Inc of San Jose, CA, USA entered into an out-of-court settlement and license agreement with rival JDS Uniphase Corp of Milpitas, CA, USA regarding tunable laser patents.

The agreement settles all disputes between the firms relating to the following US patents (filed in July 2000 and Issued in December 2003-February 2004 to tunable laser maker Agility Communications Inc of Goleta, CA, which was acquired by JDSU in 2005):

• 6,654,400 (‘Method of Making a Tunable Laser Source with Integrated Optical Amplifier’);
• 6,658,035 (‘Tunable Laser Source with Integrated Optical Amplifier’); and
• 6,687,278 (‘Method of Generating an Optical Signal with a Tunable Laser Source with Integrated Optical Amplifier’).

In March 2008, JDSU warned Bookham that its products allegedly infringed the patents. In response, Bookham filed a complaint against JDSU in the US District Court for the Northern District of California (San Jose Division) seeking declaratory judgments that its tunable laser products did not infringe any valid, enforceable claim of the patents, and that all claims of the patents were invalid and unenforceable. Bookham also claimed relief for statutory unfair competition and intentional interference with economic advantage. Last July, JDSU countersued Bookham for patent infringement (focusing on its tunable laser product line), seeking compensatory damages as well as an order barring Bookham from future infringement.

Then, last November, JDSU filed a complaint with the US International Trade Commission (ITC) alleging infringement of patents 6,658,035 and 6,687,278 by not only Bookham but also tunable laser maker Syntune AB of Kista, Sweden as well as CyOptics Inc of Breinigsville, PA, USA (which integrates chips from Syntune into products). JDSU’s complaint also named network equipment making customers Tellabs Inc of Naperville, IL, USA, Ciena Corp of Linthicum, MD, USA and Nortel Networks Ltd of Toronto, Canada, plus metro equipment maker ADVA Optical Networking of Munich, Germany, regarding their alleged use and importation of the accused Bookham tunable chips.

According to a filing with the US Securities and Exchange Commission (SEC), the agreement between Bookham and JDSU announced last week provides that:

1. Bookham will pay JDSU $3m in two equal installments (the first on or about 15 April and the second on or about 15 April 2010) for settlement of all claims in the lawsuits;
2. each party will refrain from instituting any patent litigation against the other party for a period of four years;
3. each party releases the other from any claim or counterclaim asserted in or arising from the lawsuits;
4. JDSU provides both Bookham and customers for certain of its products with a license for the patents, plus related patents; and
5. from 10 April 2010, Bookham will pay JDSU a royalty of up to $1m per year for up to five years (adding up to $5m to the above $3m payment, making up to $8m in total).

Bookham and JDSU have also agreed that they will enter into an order of dismissal, and that JDSU will file a motion to terminate the lawsuits.

*The settlement does not involve CyOptics or Syntune. In July, JDSU also sued Syntune separately in the California courts. However, early this month, Syntune signed a non-binding letter of intent to be acquired by Ignis ASA of Oslo, Norway, which makes optical components for fiber-to-the-home (FTTH) infrastructure.

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