We practice in the areas of Intellectual Property Litigation, Complex Commercial Litigation, and Commercial Transactions. Our lawyers have led teams to trial victories in federal and state courts and before administrative agencies such as the International Trade Commission. These trials invariably involved bet-the-company cases, in the context of both bench and jury trials, and the trial strategies and examinations of our lawyers, which in some instances defied convention, made the difference between victory and defeat. We are among a handful of teams in the U.S. that have won a FRAND case before a jury. Listed below are a few representative examples of our work.
- Lead litigation counsel for Everlight Electronics, ASUSTeK, and Realtek Semiconductor in cases before federal courts in California, New York, Colorado, Massachusetts, Virginia, and Texas. Among these disputes is a 6-patent case currently pending before the Northern District of California, between Everlight Electronics (Firm client) and Bridgelux. The case is entering the claim construction phase, with the Court having recently rejected a number of key non-liability defenses advanced by Bridgelux. Everlight has accused over 1,400 Bridgelux products as infringing, and it is seeking 8-figures in damages. By contrast, Bridgelux’s claim is currently limited to the low 5 figures.
- Co-Lead trial counsel in Tellabs’ 2014 trial victory over Fujitsu. Our lawyers conceived, developed, and pursued Tellabs’ RAND-breach claim against Fujitsu—the sole issue of the 2014 trial. After a Northern District of Illinois jury found Fujitsu owed a RAND obligation and willfully breached its promise (ﬁnding willfulness under a clear and convincing standard), the judge ordered a show cause hearing to determine why Fujitsu’s patent should not be held unenforceable. The case settled on conﬁdential terms before the court entered a ﬁnal ruling on this issue of ﬁrst impression.
- Lead counsel for Respondents ASUSTeK and Realtek Semiconductor in Inv. No. 949, the first investigation to be placed into the ITC’s pilot program. After the complainant withdrew 3 of its 5 asserted patents, the parties entered into confidential settlements.
- Lead trial counsel for Respondent Realtek Semiconductor in Inv. No. 749(c). Unlike other respondents in the investigation, all of whom elected to argue the asserted patent was invalid, we focused Realtek’s defense on non-infringement issues. In its ﬁnal determination, the International Trade Commission found the asserted patent valid, but not infringed. The cornerstone of this ﬁnding was our lawyer’s trial examination of the opposing expert, which persuaded the ITC that the contrary position urged by Complainant led to “absurd” results.
- Our lawyers conceived, pursued, and developed Tellabs’ trade secret misappropriation, tortious interference, unfair competition, and business disparagement claims against Fujitsu. This bet-the-company case has garnered signiﬁcant attention in the industry. The case was recently settled on conﬁdential terms.
- Lead trial counsel for The British Museum after it was sued in a trademark action in Texas by an offshore “cybersquatter.” Bringing counterclaims on behalf of the British Museum, our lawyers obtained a realignment of the parties for trial, persuading the Court that the museum was the truly wronged party. The case included multiple days of testimony-including entry into evidence of video tapes, news articles, and even the Frank Sinatra song Foggy Day-and it ultimately settled after our cross examination of the opponent’s corporate representative. As a result of our lawyers’ efforts, the domain name britishmuseum.com was properly restored to the British Museum.
- Lead trial counsel for minority shareholders in bringing a breach of ﬁduciary duty, shareholder oppression, and breach of contract suit against the majority shareholder of a closely-held corporation. After observing our lawyers present their case on the ﬁrst day of trial, defendants agreed to pay a 150% premium to an offer they rejected just 2 weeks earlier. The agreed payment exceeded the compensatory damages sought in the case.
- Architect and litigation counsel for a semiconductor manufacturer (the plaintiff) in a breach of fiduciary duty and breach of contract claim that was valued at approximately 10-figures. After 4 years of litigation and approximately 4 months before trial, the defendants (a major semiconductor company and its executive) switched litigation counsel. The case later settled on confidential terms a month before trial.
- Lead trial counsel in a case where the objective was to remove the name of an individual from a recorded deed—where the deed was recorded over 20 years ago. Invoking a theory of constructive trust, our lawyers persuaded the trial judge that the claim was not time-barred, secured a judgment that struck the name of the opposing party from the deed, and obtained for our client an award of attorney fees.
- Lead counsel for multiple Fortune 500 and Global Fortune 500 companies as well as certain governmental agencies, negotiating transactions involving complex IT systems. These transactions include negotiations on behalf of the North Texas Tollway Authority concerning the design and implementation of an IT system that, when implemented, will drive all of NTTA’s annual operating revenues (currently in the 10-figure range). The CHEN MALIN team were selected to lead a team of AmLaw 100 and 200 firms, where the counter-party was represented by a well-known AmLaw 200 firm. At the conclusion of the negotiations, the vendor agreed to warrant the project would be on-schedule and within budget, suitable for its intended purpose, secure, interoperable, scalable, and best-in-class. The vendor further agreed to a 10-year warranty period, and to provide coverage for NTTA’s loss of revenues.
- Lead counsel for a metals industry client in a global enterprise resource planning (ERP) implementation transaction. The concessions that our lawyer secured from the ERP implementer—one of the top 50 technology companies in the world—prompted the implementer to subsequently seek his advice on licensing negotiation strategies.