Overview

Taiwan Semiconductor Mfg. Co. Ltd. v. GlobalFoundries U.S. Inc. – (D. Del.) Represented TSMC in filing four separate lawsuits asserting a total of 16 patents against GlobalFoundries in response to ITC complaint brought against TSMC and its customers. Case settled favorably for TSMC shortly after the filing of these district court complaints.

Bell Northern Research LLC v. LG Electronics Inc. et al. – (S.D. Cal.) Represented defendant LGE and its subsidiaries against patents related to Wi-Fi, cellular, and sensor technologies. Case settled favorably for LGE after securing a claim construction ruling that eliminated the broadest asserted patents, convincing the PTAB to institute IPR proceedings against all remaining patents despite the approaching trial date, and weakening other patents based on a license defense.

Technology Properties Ltd. LLC v LG Electronics Inc. et al. – (N.D. Cal.) Represented defendant LGE and its subsidiaries against patent allegedly covering phase-lock loop technologies. After the district court granted summary judgment based on a narrow construction and the plaintiff stipulated to noninfringement, the Federal Circuit modified the construction and remanded for application of the construction. Tech. Props. Ltd. LLC v. Huawei Techs. Co., Ltd., et al., 849 F.3d 1349 (Fed. Cir. 2017). On remand, the district court against granted summary judgment under the modified construction, and the Federal Circuit affirmed the ruling in favor of LGE and its co-defendants. Tech. Props. Ltd. LLC v. Huawei Techs. Co., Ltd., et al., 750 F. App’x 1003 (Fed. Cir. 2019).

Vizio, Inc. v. LG Electronics Inc. et al. – (D. Md.) – Represented defendant LGE and its subsidiaries against patents related to forward error correction. Case settled favorably for LGE after district court granted summary judgment in its favor on its licensing defense, and court was considering LGE’s pending motion to dismiss challenging ownership of the patents-in-suit.

SoftVault Sys., Inc. v. Microsoft Corp. – (E.D. Tex.) – Represented defendant Microsoft against patents generally related to software security. Case settled favorably for Microsoft shortly after it filed a motion challenging SoftVault’s ownership and standing to assert the patents-in-suit.

International Business Machine Corp. v. Amazon.com, Inc. (E.D. Tex.) – Represented Amazon.com against IBM’s infringement allegations regarding Amazon.com’s popular Internet shopping website. Case settled favorably for Amazon.com soon after it served its invalidity contentions against IBM’s patents.

Seagate Technology v. Cornice – (D. Del.) – Represented plaintiff Seagate Technology in enforcing hard disc drive-related patents, including patents covering magnetic recording media, servo control systems, and internal mechanical components. Case settled favorably for Seagate shortly after oral arguments on claim construction and summary judgment.

Unither Pharmaceuticals v. Herbalife et al. – (N.D. Cal.) – Represented plaintiff Unither in enforcement of patents related to use of L-arginine for treatment of vascular disorders. Case favorably settled for Unither.

AllVoice Computing PLC v. Nuance Communications, Inc. – (S.D. Tex.) – Represented defendant Nuance Communications against patent related to speech-recognition interface software. District court granted summary judgment of invalidity.

Adaptec v. Globalnet et al. – (N.D. Cal.) – Represented plaintiff Adaptec in enforcing and protecting its copyrights and trademarks from infringement and counterfeiting. District court entered judgment in favor of Adaptec against all defendants who refused to settle out-of-court, found certain defendants in contempt for violating preliminary injunctive relief, awarded Adaptec multi-million dollars in compensatory awards and attorney fees awards, and entered a permanent injunction.

U.S. International Trade Commission, Section 337 investigations

Certain Digital Video-Capable Devices and Components Thereof, Inv. No. 337-TA-1224 — Represented LGE and its subsidiaries in ITC investigation as respondents against complainant Koninklijke Philips N.V. in ITC investigation directed at HDCP digital rights management technology. Case settled favorably for LGE shortly before the evidentiary hearing was scheduled to start.

Certain Non-Volatile Memory Devices and Products Containing the Same, Inv. No. 337-TA-1046 – Represented complainant Macronix in an ITC investigation against Toshiba Corp. and its subsidiaries with respect to Toshiba’s infringing flash memory chips. Despite an initial determination in which the Administrative Law Judge adopted an unconventional statutory interpretation with respect to economic domestic industry, the Commission issued a final determination reversing the ALJ’s decision, finding that Toshiba violated the trade statute, and issuing an exclusion order and cease & desist orders against Toshiba and its named subsidiaries.

Certain Nanopores and Products Containing Same, Inv. No. 337-TA-991 – Represented complainants Illumina, the University of Washington, and the University of Alabama in the ITC against British respondents related to nanopore biotechnology. The respondents agreed to enter into a strict ITC consent order barring them and related individuals from importing any product containing the patented nanopore technology and from challenging the validity of the patent in any enforcement proceedings.

Certain Wireless Consumer Electronics Devices and Components Thereof, Inv. No. 337-TA-853 — represented LGE and its subsidiaries in ITC investigation as respondents against complainants TPL, Patriot Scientific, and Phoenix Digital System and their infringement assertion of a patent related to variable speed system clocks in microprocessors. After a seven-day trial in the ITC, the Administrative Law Judge issued an initial determination in September 2013 in which he found that LG did not infringe the asserted patent claims. Although the complainants challenged the ALJ’s initial determination, the full Commission issued a determination in February 2013 that affirmed the ALJ’s ruling of noninfringement in LG’s favor.

Certain Wireless Devices with 3G Capabilities and Components Thereof, Inv. No. 337-TA-800 – Represented LGE in ITC investigation as respondents against InterDigital in ITC investigation related to patents directed at wireless technology. The Administrative Law Judge and the Commission granted LGE’s motion terminate the investigation as to LGE based on arbitration clause in a prior LGE-InterDigital license agreement. Although the Federal Circuit disagreed with the Commission’s termination, the Supreme Court vacated the Federal Circuit decision and remanded with instructions to dismiss the case. LG Electronics Inc. et al. v. InterDigital Comm., LLC et al., 572 U.S. 1056 (2014) (vacating InterDigital Commc’ns, LLC et al. v. Int’l Trade Comm’n, 718 F.3d 1336 (Fed. Cir. 2013)).

Certain Flat Panel Digital Televisions and Components Thereof (ITC Inv. No. 337-TA-733) — Represented respondents LG Electronics and its subsidiaries against patent infringement claims accusing cellular telephones based on cable transmission technology. Litigation favorably settled after Markman hearing.

Certain Mobile Telephones and Modems (ITC Inv. No. 337-TA-758) – Represented respondents LG Electronics and its subsidiaries in proceeding in which complainant Sony Corp. asserted patents related to wireless technology (UMTS/WCDMA, LTE, and CDMA2000), camera technology, voice recording, and caller identification features. Litigation settled favorably as discovery was closing.

Certain Mobile Telephones and Wireless Communication Devices Featuring Cameras, and Components Thereof (ITC Inv. 337-TA-663) – Represented respondents LG Electronics and its subsidiaries against patent infringement claims brought by Eastman Kodak accusing LGE’s popular cellular telephone products. Litigation favorably settled after the evidentiary hearing.

Certain Liquid Crystal Display Devices and Products Containing The Same (ITC Inv. 337-TA-631) – Represented complainant Samsung Electronics in enforcing patents related to liquid crystal display. The Chief ALJ found in Samsung’s favor after a full evidentiary hearing on the merits, and the full Commission issued an exclusion order barring the importation of Sharp’s infringing LCD products.

Certain Unified Communications Systems and Components Thereof (ITC Inv. 337-TA-598) – Represented complainant Microsoft in enforcing patents related to unified communications systems. After a full hearing on the merits, the ALJ ruled in favor of Microsoft. Litigation favorably settled while on appeal.

Certain Flash Memory Devices and Components Thereof, and Products Containing Such Devices and Components – (ITC Inv. 337-TA-552) – Represented respondents Hynix Semiconductor and its subsidiary against three Toshiba Corp. patents related to flash memory technology. The Hynix respondents prevailed on all patents after a full hearing on the merits, and the full Commission sustained the ALJ’s ruling.

Certain Disc Drives, Components Thereof, and Products Containing Same – (ITC Inv. 337-TA-516) – Represented complainant Seagate Technology in enforcing hard disc drive-related patents, including patents related to magnetic recording media, servo control systems, and internal mechanical components. Case settled favorably just days before start of hearing.

U.S. Court of Appeals for the Federal Circuit cases

B. Braun Melsugen AG et al. v. Terumo Med. Corp. et al. – (Fed. Cir. ) – represented appellant Terumo in appeal related to safety IV catheter. Appeal settled favorably.

Samsung Elects. Co., Ltd. v. Int’l Trade Comm’n & Sharp Corp. et al. – (Fed. Cir.) – Represented appellant Samsung Electronics in appeal related liquid crystal display technology. Appeal settled favorably.

Sharp Corp. et al. v. Int’l Trade Comm’n & Samsung Elects. Co., Ltd. – (Fed. Cir.) – Represented intervenor Samsung Electronics in support of ITC’s determination that Sharp and its subsidiaries infringed Samsung’s patent related to liquid crystal display technology. Appeal settled favorably.

Voda v. Cordis Corp. – (Fed. Cir.) – Represented third-party amicus Boston Scientific Scimed, Inc. in support of plaintiff’s request related to the district court’s remedy order. The Federal Circuit clarified the application of the Supreme Court’s opinion in eBay Inc. v. MercExchange, L.L.C.

In re Bilski & Warsaw. – (Fed. Cir.) – Represented third-party amicus SAP America, Inc. in en banc case related to the patentability of business method patents.

MStar Semiconductor v. Int’l Trade Comm’n & Genesis Microchip – (Fed. Cir.) – Represented intervenor Genesis Microchip in support of ITC’s enforcement of Genesis’s patent related to upscaling semiconductor chips. The Federal Circuit affirmed the ITC’s favorable findings in Genesis’s favor.

Symbol Technology v. Lemelson Med., Educ., and Research Fdn. – (Fed. Cir.) – Represented third- party amici in support of adoption of strong prosecution laches doctrine and judgment of unenforceability against the Lemelson machine vision patents. The Federal Circuit affirmed the district court’s application of prosecution laches and declared all claims of the Lemelson machine vision patents to be unenforceable.