Private Equity/Venture Capital

Accessing the value of intellectual property assets held within an investment portfolio requires a partner with a unique combination of legal, business, and technological know-how. At Robins Kaplan LLP, our experience litigating large IP cases on both sides of the courtroom—often with investments of our own capital and resources—enhances our ability to assess the value and viability of a wide range of IP assets. Relying on courtroom-developed insights and the scientific and business expertise of our in-house science advisors and financial and economic consultants, we help our clients identify and evaluate hidden value in their technology innovation assets, including finding IP value in underperforming operating companies. Then, we help them monetize that value by turning their ideas into cash or strategic leverage and thereby maximize overall return on investment. Our successes include litigation-only recoveries as well as combined litigation and licensing campaigns.

Selected Case Results

Litigation

  • Advanced Micro Devices v. Samsung: Brought to resolution patent litigation for Advanced Micro Devices (AMD) against Samsung in the Northern District of California.  The case involved allegations that Samsung's DRAM, SRAM and NAND memory products, its system logic products, and its consumer products infringed seven AMD patents covering technologies in memory architecture, processor micro-architecture, MOS-transistor fabrication and design, and user interface design for consumer products. Samsung asserted six patents against AMD's x86 processors and graphics processing units (GPUs) covering technologies in processor micro-architecture design, and semiconductor fabrication and process control. After three years of litigation and two mediations the parties resolved the matter at the close of expert discovery and dispositive motion briefing, shortly before trial.  Reputed to be the 4th largest patent case settlement and/or verdict from Jan. 2010-June 2011.

  • Eolas Technologies, Inc. and The Regents of the University of California v. Microsoft Corporation: Represented Eolas Technologies, Inc. and the Regents of the University of California, in action for patent infringement of web browser technology for the delivery of interactive applications embedded in web pages. The case was tried in United States District Court, Northern District of Illinois, Eastern Division, Chicago, Illinois, Zagel, Judge. Jury verdict in favor of Eolas and the University of California, on issues of infringement, validity, and damages in the amount of $520.6 million. On January 14, 2004, the court entered judgment for $565,894,868 which includes the amount of the original verdict plus prejudgment interest. On appeal, the Federal Circuit affirmed the finding of infringement and the damages award, and ordered that Microsoft’s invalidity and inequitable conduct defenses be retried. The case settled on a confidential basis four days before the start of the invalidity trial.

  • Fonar v. General Electric: Represented Fonar Corporation and Dr. Raymond V. Damadian in a patent infringement action against General Electric involving patents on magnetic resonance imaging (MRI) machines. After trial, the Court of Appeals for the Federal Circuit ordered General Electric to pay $103.4 million, at the time reportedly the largest patent infringement jury verdict ever upheld on appeal (IP Worldwide). The final payment totalled $128 million (judgment plus interest). 

  • Honeywell v. Minolta: Represented Honeywell in a patent infringement case against Minolta involving patents on autofocus cameras. Jury award for Honeywell of $96.3 million, with subsequent settlement for $127.5 million and total settlements of approximately $500 million against industry.

 

Licensing Campaigns

  • TVI v. Microsoft (N.D. Calif): TVI is the owner of several patents covering the autoplay feature of Windows. TVI sued Microsoft in the Northern District of California alleging that all versions of Microsoft Windows since Windows 95 infringed these patents. The case settled in October 2005 a little more than one week before trial. Microsoft took a license under the patents. All other terms of the settlement are confidential.

  • St. Clair Intellectual Property Consultants, Inc. Digital Camera Patent Litigation (D. Del.):  Represented St. Clair in a series of patent infringement suits involving digital camera technology that started in 2002.  Three of those cases proceeded to trial and resulted in verdicts of $34.7 million, $25 million, and $3 million.  Settlements were reached prior to trials with the following defendants:  Olympus, Nikon, Minolta, Seiko-Epson, Kodak, JVC, Panasonic, Kyocera, Samsung, Sanyo, Casio, Pentax, LG, BenQ, Concord, General Imaging Co., and Pantech.  Settlements were reached after trials with Sony and Canon.  Total settlements in this litigation exceeded $240 million.

  • Intergraph v. Dell, Hewlett-Packard Co. and Gateway Inc.: Represented Intergraph Corp. in patent litigation involving microprocessor system design.  Recovered, to date, a total of $500 million in settlements as follows: 

    • Hewlett-Packard $141 million, with cross licenses;
    • Dell/Intel $225 million;
    • Gateway/emachines $12 million plus ongoing royalties;
    • AMD $20 million plus potential future royalty profits;
    • IBM $10 million plus a license to IBM's portfolio;
    • Toshiba and NEC, confidential settlements 

    Licensing campaign following litigation:   

    • Fujitsu $9.75 million;
    • Sony $15 million;
    • Acer $7.5 million; and
    • Other confidential licenses

 

* Past results are reported to provide the reader with an indication of the type of litigation we practice. They do not and should not be construed to create an expectation of result in any other case, as all cases are dependent upon their own unique fact situation and applicable law.

 

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PUBLICATIONS

November 5, 2013
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