Lead counsel for Industrial Technology Research Institute (“ITRI”) in multiple proceedings opposite UNM Rainforest Innovations in the 2nd Judicial District Court, Bernalillo County (New Mexico), and the Western District of Texas. ITRI is an internationally recognized research organization funded by the Taiwan government (e.g., Taiwan’s NASA). It is currently in multiple disputes with UNMRI, an arm of the State of New Mexcio. After learning of UNMRI’s filing against ITRI in New Mexico, Judge Albright of the Western District of Texas stayed multiple UNMRI proceedings that are pending before him. ITRI has moved to dismiss UNMRI’s New Mexico litigation. The cases raise novel questions concerning patent assignments and the BFP doctrine. The matters are pending.
Lead counsel for NEC Corporation of America in Oracle v. NEC Corporation of America, Civil Action No. 5:21-cv-05270-CRB (N.D. Cal. Jul. 8, 2021). NECAM was an authorized sub-licensor of Oracle’s database software. This is a dispute arising out of Oracle’s IT audit of NECAM’s records, where Oracle contends NECAM is not compliant with terms in the Oracle license; and where NECAM contends that it justifiably relied on Oracle’s representations and that Oracle’s license restrictions constitute copyright misuse. Insofar as we’re aware, this is the first time a litigant has applied the copyright misuse doctrine against Oracle. The case is pending.
Lead counsel for STMicroelectronics in TRIDINETWORKS Ltd. v. STMicroelectronics, Inc., Civil Action No. 1:19-cv-01064-CFC (D. Del.). The Firm serves as lead counsel to the STMicroelectronics Defendants named in the lawsuit. Plaintiff filed suit against several global electronics and semiconductor companies, and the other defendants engaged AmLaw 100 and AmLaw 200 firms as their counsel. The Firm took the lead in formulating defensive strategies and arguments on behalf of the defendants, and recently resolved the matter on confidential terms.
Lead counsel for 7Road in Proficient City Ltd. v. Shenzhen 7th Road Technology Co., Ltd., Cause No. DC-20-15569 (193rd Judicial District, Dallas County). The Firm was engaged after Plaintiff PCL secured an ex parte TRO against Defendant 7Road based on PCL’s claims that included trade secret misappropriation. After considering arguments advanced by the Firm, the court dissolved the TRO and dismissed PCL’s claims against 7Road.
Lead counsel for ASUSTEK Computer Inc in Mariner IC Inc. v. ASUSTEK Computer Inc., Civil Action No. 2:18-cv-00069-JRG (E.D. Tex.). The asserted patents (one method and one apparatus) originated from engineers at Cypress Semiconductor, but both expired before the suit was brought; and Plaintiff omitted ASUSTEK’s U.S. subsidiary (ACI) from the lawsuit, presumably to avoid the effects of TC Heartland. After a preliminary investigation and reviewing the de minimis amounts at risk, the Firm (with the client’s consent) adopted the highly unusual strategy of bypassing invalidity arguments and not contesting Plaintiff’s claim construction positions. Instead, ASUSTEK premised its non-liability arguments on a number of incontestable facts. Although Plaintiff (represented by an AmLaw 100 firm) repeatedly rejected those non-liability arguments (and claimed it had overcome those arguments against multiple other Asia-based defendants), after reviewing ASUSTEK’s Motion for Summary Judgment Plaintiff dismissed its claims with prejudice without receiving any compensation.
Co-Lead counsel for Tellabs in Fujitsu Ltd. v. Tellabs Operations, Inc., Civil Action No. 1:09-cv-04530 (N.D. Ill.). Li’s team persuaded the jury that Fujitsu willfully breached its RAND obligations under a clear and convincing standard. Based on this finding the court issued a show-cause order to determine why Fujitsu’s patent should not be declared unenforceable. This is the first instance in which a court expressed an inclination to declare a patent unenforceable for breach of RAND. The result is also unusual because the presiding judge had held in a parallel case that RAND obligations only attach to patents that are actually standard essential—and both parties agreed the Fujitsu patent was not standard essential. The case settled on confidential terms prior to the show cause hearing.
Lead counsel for Everlight Electronics in Everlight Electronics Co., Ltd. v. Bridgelux, Inc., Case No. 4:17-cv-03363-JSW (N.D. Cal.). Everlight is one of the top 10 LED manufacturers in the world. It has been active in global patent litigation for the past 12 years. And Quinn Emanuel has historically been Everlight’s preferred counsel. At the recommendation of other in-house contacts, Everlight engaged the Firm to enforce its patents against Bridgelux, a substantially smaller competitor. Although Everlight had potentially significantly greater revenues at risk, by anticipating and defusing Bridgelux’s arguments, the Firm positioned the case where Everlight’s claims were approximately 2,500X (or 250,000%) greater than those advanced by Bridgelux; where the court rejected Bridgelux’s principle non-liability argument; where Bridgelux was under court-order to provide a declaration with over 1,400 statements; and where Bridgelux was at risk of being invalidated through IPR proceedings. The case settled on confidential terms shortly after Bridgelux was ordered to provide the declaration.
Lead counsel for Respondents ASUSTeK and Realtek Semiconductor in International Trade Commission Inv. No. 337-TA-949. Li’s strategy and arguments in the case led the ITC to place Inv. 949 into its pilot program—the first investigation to receive that formal distinction. This forced the complainant to withdraw 2 asserted patents prior to the Markman hearing, and a third patent after the Markman hearing. Complainant then promptly settled its disputes with ASUSTeK and Realtek on confidential terms.
Lead counsel for Everlight Electronics in Document Security Systems, Inc. v. Everlight Electronics Co., Ltd., Case No. 2:17-cv-04273-JVS-JCG (C.D. Cal.). Everlight engaged our team to replace a mid-sized firm (approx. 300 lawyers) that had secured the matter based on lower budget and hourly-rates. After comparing the performance of counsel across multiple litigations, Everlight asked our team to take-over the case. After entering the case and spending less than 20% of the time invested by prior counsel, we persuaded opposing counsel to stipulate to a stay of proceedings in lieu of preparing invalidity contentions—a result that other firms thought was unachievable. The case was recently resolved on confidential terms.
Lead counsel defending major electronics and manufacturing companies in cases before federal district courts in New York, Massachusetts, Virginia, Colorado, California, and Texas. Five of eight cases were resolved without payment, a sixth was resolved for less than $25K, a seventh case has been stayed, and the eighth case is pending.
Lead counsel for Realtek Semiconductor Corp. in Commonwealth Scientific and Industrial Research Organisation v. MediaTek Inc., Civil Action No. 6:12-cv-578 (LED/RWS) (E.D. Tex.). By the time CSIRO targeted Realtek as a part of its campaign to monetize the ‘069 patent, CSIRO had successfully asserted the patent against numerous industry giants over 10 years of litigation. By way of example, Intel and Cisco had both stipulated to infringement in related cases, and CSIRO had amassed close to $500M in royalties at the time it pursued Realtek. After taking a hard look at the record, Li and his team argued, over CSIRO’s strenuous objections, that the Court should revisit and revise the construction of a claim term that had been stipulated by the industry for 10 years (and addressed in 4 prior claim construction orders). The case settled on confidential terms after Li’s proposed construction was adopted by the court.
Lead counsel for Respondent Realtek Semiconductor in International Trade Commission Inv. No. 337-TA-749(c). Li’s trial examination of the opposing expert persuaded the ITC that Realtek did not infringe the asserted patent and that the contrary position urged by the opposing party led to “absurd” results.
During a patent war involving flash memory technology, securing admissions that resulted in the court striking the opposing expert’s report and, sua sponte, ordering a hearing to determine the propriety of further sanctions against the expert, the opposing party and opposing counsel. The case settled on confidential terms in advance of the hearing.
