Rambus, a well-known patent holder, and SK Hynix, one of the world’s largest supplier of dynamic random access memory and NAND flash, on Wednesday announced they have signed a five-year patent license agreement for the use of Rambus memory-related patented innovations in SK Hynix semiconductor products and have also settled all outstanding claims.
“This is a milestone agreement for both companies that puts years of legal disputes behind us and gives us the opportunity for collaboration. With this agreement, we can focus more on engaging with the industry as we work on future challenges where we can bring invention and value to the market with superior solutions and products,” said Ron Black, president and chief executive officer at Rambus.
The agreement includes a license to certain DRAM products for payments of $12 million per quarter for the next five years starting from September. In total, SK Hynix will pay Rambus $240 million over the next five years. Other terms of the agreement are confidential. For example, it is currently unknown how much money will SK Hynix pay for usage of Rambus’ patents since the year 2000, when the two companies started their legal fight.
This case was originally filed by SK Hynix against Rambus in August 2000. The case was split into three separate phases with Rambus prevailing in all three phases. The first phase considered SK Hynix’s allegations that certain Rambus patents should be unenforceable under the doctrine of unclean hands and spoliation.
The second phase addressed Rambus’ allegations that SK Hynix memory products infringed its patents. The jury in this phase upheld the validity of Rambus’ patents and found that SK Hynix memory products infringe all Rambus patent claims in this case. The jury awarded Rambus damages in the amount of $397 million.
In the third phase of the case, SK Hynix (together with Micron and Nanya) alleged Rambus engaged in antitrust and fraud during its participation in JEDEC standard-setting organization in the early 1990s. A jury in this case, again, found in favor of Rambus, finding it had acted properly during its participation in JEDEC.
Even though a fedral court has found that SK Hynix did infringe patents owned by Rambus, it also said that Rambus had to pay $250 million to the chipmaker for improperly destroying documents relevant to the case.