Intel files suit against Digital

Intel's suit alleges the infringement of Intel patents covering critical computer technologies such as microprocessor architecture and design, semiconductor manufacturing, video encoding/decoding, thermal management for portable systems, system architecture and design, and system service and management.

These technologies "are used widely throughout the DEC [Digital] product line, including its service business, microprocessors, semiconductors, PCs, portable PCs, workstations, and servers," Intel stated in its claim.

Digital refuted Intel's claims, saying in a prepared statement that "this 'intended counterclaim' should not obscure the basic issue between the companies--Intel has unlawfully used Digital's patented technology."

The two computer giants have recently been at loggerheads over patented technologies. On May 13, Digital announced that it filed a lawsuit in the U.S. District Court in Worcester, Massachusetts, charging Intel with "willful infringement" of ten patents related to Digital's Alpha microprocessors.

On May 28, Intel announced that it had begun "contract litigation" over the use of Intel intellectual property and asked Digital to return certain documents as required by contract. The legal papers were filed in U.S. District Court in San Jose, California. At the time, Intel said it had requested that Digital return confidential product information that it had provided over the past several years.

Subsequently, Digital filed a claim alleging that Intel's conduct constitutes anticompetitive behavior.

Digital's claim came soon after Intel had indicated that Digital could be jeopardizing its status as a customer for its chips. Analysts have said this could have grave implications for Digital's Intel-compatible PC business. Digital sells notebook, desktop, and server computers based on Intel processors and technology, as well as workstations and servers based on its own Alpha processors.

This latest Intel legal action is the highly anticipated countersuit to Digital's May 13 filing. "The previous [May28] action was not a counterclaim. This is a counterclaim," said Chuck Mulloy, an Intel spokesperson. He said the previous legal filing was litigation simply to get Digital to return Intel intellectual property.

In the counterclaim today filed in the U.S. District Court in Worcester, Intel asked to "amend our original answer to [Digital] to include this set of counterclaims," Mulloy said.

The counterclaims include "fundamental" microprocessor technologies, semiconductor production, and computer "system level" technologies.

Intel says that Digital's infringing microprocessor technologies occur in Digital's Alpha microprocessors. Intel claims six technologies specifically related to microprocessors. Some of the rather recondite patent descriptions include "extended address, single and multiple bit microprocessor," according to the Intel claim.

In the semiconductor production process area, Intel claims patents such as "semiconductor field oxidation process." Claims against Digital at the system level include technologies related to Digital's Alpha motherboards (a motherboard is the main circuit board in a computer) and servers. Notebook-related technologies include "heat dissipation" techniques, Intel said.

Intel reiterated today that it has a "significant patent portfolio" which it will use in a vigorous counterattack against Digital.

Digital tersely refuted Intel's claims. In a prepared statement, the company said: "Intel's action is a typical step for a company that has been sued for patent infringement...This tactic may be an attempt to complicate matters and cloud the issue; we are committed to obtain a prompt resolution of our claims in court."

So far, the Intel-Digital suit seems to fit into the mold for semiconductor patent suits, meaning it's complex and bitter.

"A lot of this litigation is acrimonious," said Michael Barclay, a patent partner at Wilson, Sonsini, Goodrich & Rosati, one of Silicon Valley's leading law firms.

The subject of the litigation, moreover, is highly complicated, he added. Patents can run several hundred pages. A large percentage of patent attorneys formerly worked as engineers.

"It's a very complex body of law," noted Terry McMahon, a partner at Orrick, Herrington, & Sutcliffe who represented Advanced Micro Devices in its major patent suits against Intel. The two companies fought for years over Intel's Pentium patents, before the suit ended in January 1996 with a complex agreement that allows AMD to license a number of technologies. The licensing agreement terminates at the turn of the century.

Intel said it filed a document that responds to Digital's antitrust claims and states that Intel still wants a hearing on September 8 that would force Digital to return documents Intel claims have not been returned.

Mulloy said Digital has yet to return the intellectual property that Intel requested back on May 28, adding he was surprised that Digital hadn't yet done so. "They're obliged to return them."

Intel is an investor in CNET: The Computer Network.