SanDisk 2005 Annual Report Download - page 103

and we removed the case to the U.S. District Court for the Northern District of California, where it was assigned
case number C05-04691. On November 23, 2005, Harari and we filed counterclaims, asserting our (i.e. SanDisk’s)
ownership of the patents and applications raised in the complaint. On December 13, 2005, STMicroelectronics, Inc.
filed a motion to remand the case back to the Superior Court of Alameda County. That motion remains pending.
On December 6, 2005, we filed a complaint for patent infringement in the United States District Court for the
Northern District of California against STMicroelectronics, Inc. and STMicroelectronics, NV (“STMicro”) (Case
No. C0505021 JF). In the suit, we seek damages and injunctions against STMicro from making, selling, importing
or using flash memory chips or products that infringe our U.S. Patent No. 5,991,517. The case is presently stayed,
pending the termination of the ITC investigation instituted February 8, 2006, discussed below.
On January 11, 2006, we filed a complaint for patent infringement in the United States District Court for the
Northern District of California against STMicro (Case No.C06-00194 JF). In the suit, we seek damages and
injunctions against STMicro from making, selling, importing or using flash memory chips or products that infringe
our U.S. Patent No. 6,542,956. The case is presently stayed, pending the termination of the ITC investigation
instituted February 8, 2006, discussed below.
On January 10, 2006, we filed a complaint under Section 337 of the Tariff Act of 1930 (as amended) titled, “In
the matter of certain NAND flash memory circuits and products containing same” in the ITC, naming STMicro as
respondents. In the complaint, we allege that: (i) STMicro’s NOR flash memory infringes the ‘338 patent;
(ii) STMicro’s NAND flash memory infringes U.S. Patent No. 6,542,956; and (iii) STMicro’s NOR flash memory
and NAND flash memory infringe U.S. Patent No. 5,991,517. The complaint seeks an order excluding STMicro’s
NOR and NAND flash memory products from importation into the United States. The ITC instituted an
investigation, based on our complaint, on February 8, 2006.
On or about July 15, 2005, Societa’ Italiana Per Lo Sviluppo Dell’electtronica, S.I.Sv.El., S.p.A., (“Sisvel”)
filed suit against us and others in the district court of the Netherlands in The Hague in a case captioned Societa’
Italiana Per Lo Sviluppo Dell’electtronica, S.I.Sv.El., S.p.A. adverse to SanDisk International Sales, Moduslink
B.V. and UPS SCS (Nederland) B.V., Case No. 999.131.1804. Sisvel alleges that certain of our MP3 products
infringe three European patents of which Sisvel claims to be a licensee with the right to bring suit. Sisvel seeks an
injunction and unspecified damages. Sisvel has previously publicly indicated that it will license these and other
patents under reasonable and nondiscriminatory terms, and it has specifically offered us a license under the patents.
We have submitted pleadings asking the court to strike Sisvel’s pleadings as legally insufficient and seeking other
procedural relief. The court is still addressing these procedural matters and we will not be required to answer on the
substance of Sisvel’s claim until April 2006 at the earliest.
In a related action, on February 21, 2006, we filed an action in the English High Court, Chancery Division,
Patents Court, in London, against the owners of the patents Sisvel has asserted against us. The case is SanDisk
Corporation v. Koninklijke Philips Electronics N.V. (a Dutch corporation), France Télécom (a French corporation),
Télédiffusion de France S.A. (a French corporation), and Institut fu
¨r Rundfunktechnik GmbH (a German corpo-
ration), Case No. HC06 C 00615. In this action, we seek a declaration that the patents asserted by Sisvel (as well as
other patents owned by Philips and the other defendants) are invalid because they fail to properly claim anything
new within the meaning of the European Patent Convention and because certain of them fail to comply with other
requirements of the Convention. The defendants in that case are required to appear and announce their intention to
defend on or about March 7, 2006. The defendants’ formal defense will be due in early April 2006.
In another related action, on March 9, 2006, we filed an action in the English High Court, Chancery Division,
Patents Court, in London, against Sisvel and the owners of the patents Sisvel has asserted against us in the
Netherlands. The case is SanDisk Corporation v. Koninklijke Philips Electronics N.V. (a Dutch corporation), France
Télécom (a French corporation), Télédiffusion de France S.A. (a French corporation), Institut fu
¨r Rundfunktechnik
GmbH (a German corporation) and Societa’ Italiana Per Lo Sviluppo Dell’electtronica, S.I.Sv.El., S.p.A., Case
No. HC06C00835. In this action, we seek a declaration of non-infringement of the patents asserted by Sisvel in
connection with SanDisk’s MP3 products. We also seek a declaration that the patents are not “essential” to the
technology of MP3 players, as Sisvel presently contends in the case filed in the Netherlands. The defendants are
required to appear and announce their intention to defend at the end of March, 2006. The defendants’ formal defense
will be due in early May 2006.
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