UW-Madison’s patenting arm agrees to settle lawsuit against Intel over processor technology

By Ryan J. Foley, AP
Monday, October 5, 2009

UW-Madison’s patenting arm settles suit with Intel

MADISON, Wis. — The University of Wisconsin-Madison’s patenting arm has settled its infringement lawsuit against computer chip maker Intel Corp. involving technology used in a popular computer processor.

The case was expected to go to trial Monday in U.S. District Court in Madison, but both sides notified the court Saturday they had reached a settlement. Details were not released and Intel spokesman Chuck Mulloy said he could not comment because the terms were confidential.

The Wisconsin Alumni Research Foundation sued Santa Clara, Calif.-based Intel in February 2008, alleging that technology used in Intel’s Core 2 Duo Processor and others was created by university researchers but used by Intel without a licensing agreement.

The lawsuit claimed the microarchitecture of the Intel Core family of processors infringed on a 1998 patent based on work by four researchers including Gurindar Sohi, a computer science professor. Intel had supported Sohi’s research with about $90,000 in gifts in the 1990s and argued it was entitled to the intellectual property that resulted from the funding.

U.S. District Judge Barbara Crabb rejected Intel’s argument in a ruling last month and ordered the case to trial. She said the funding agreements did not specifically give Intel the right to use patents resulting from the work but any infringement by Intel was not willful because the funding agreements were ambiguous.

A jury was expected to decide whether infringement occurred and, if so, how much damages to award the foundation, which manages the university’s patents and funds research at the school. The lawsuit claimed the Intel Merom processor, which was developed by the company beginning in 2001, was the first to infringe.

Sohi and WARF spokeswoman Janet Kelly declined to comment on the settlement.

The technology in question increased the speed and efficiency of processors, including the Core 2, which was launched in 2007 and delivers as much as 40 percent better performance while consuming less energy than previous models. The patent covers the design of processors that can more efficiently execute program instructions out of order.

The lawsuit put a spotlight on Intel’s once cozy relationship with Sohi, who was chairman of the computer science department from 2004 to 2008.

Sohi worked with Intel to structure its gifts so they would not pay for university administrative costs. One Intel employee told him in a 1994 e-mail: “Don’t go through your bureaucrats with the proposal. When approved, you will get a ‘gift’ from Intel, officially unrestricted, unofficially for the work in the proposal.”

Sohi routinely presented his data to Intel, recommended his students for jobs there and sought recommendations from Intel for awards and government grants. He wrote in a 2000 e-mail uncovered during the litigation that he had a “gentleman’s agreement” with Intel in which he would not aggressively seek patents but would keep the company informed if he did.

The university, however, had decided not to inform Intel before it sought the 1998 patent after an internal review found that the company did not have a valid claim to the discovery.

The foundation asked Intel in 2001, 2006 and 2007 to pay annual fees in exchange for using the technology but filed the lawsuit after those talks stalled.

will not be displayed