August 21, 2012 – FEI Co. and Hitachi High-Technologies Corp. (HHT) have agreed to settle an ongoing dispute over focused ion beam (FIB) technology patents. Under terms of the deal, FEI will make a one-time $15M payment, while HHT will dismiss all pending claims and grant FEI future license rights to the FIB patents at issue. Both parties also will cross-license "various elements of intellectual property" under confidential terms.
"We are pleased to have come to agreement with Hitachi on these patent issues and bring to a close these various long-standing disputes," stated Brad Thies, SVP and general counsel of FEI. The licensing of the patents from Hitachi allows FEI to continue to enrich and improve the capability of our products for our customers."
FEI already had recorded $5.4M in charges related to the patent dispute; the remaining $9.6M will be recorded as prepaid royalties and amortized over approximately seven years.
The dispute stems back to 2009 with a legal action filed by Hitachi in Japan regarding its "microsampling" technology for analyzing semiconductor devices. The dispute continued through 2010 and 2011 with HHT filing multiple damage requests and injunctions. An injunction on three specific FEI system configurations imported into Japan was upheld in Feb. 2011 (other HHT injunction requests were denied), after which FEI filed its own request to halt HHT’s "misrepresent[ation of] the facts in the case" regarding the multiple filings, and pointed out that no FEI products had been found to infringe the patents at issue.