Semiconductor

We earned long-standing relationships with numerous semiconductor companies, by winning some of the industry’s most complex and groundbreaking cases.

Representative Clients:

Taiwan Semiconductor Manufacturing Company  •  SanDisk Corporation  • Intel Corporation  •  Cadence Design Systems, Inc. •  Xilinx, Inc.  •   Qualcomm Inc.

Our cases for the semiconductor industry include historical patent and trade secret cases, as well as government investigations and class actions.

Cases of Note

NVIDIA Corporation v. Qualcomm Inc.: We represented Qualcomm in an ITC investigation in which Nvidia asserted infringement of seven patents that purportedly cover graphics processing units (GPUs). Nvidia sought to block the importation of Samsung Galaxy phones and tablets that contain Qualcomm’s Adreno technology, as well as those containing chips from ARM Holdings and Imagination Technologies. Nvidia abandoned its claims of infringement as to three of the patents prior to the hearing before the ALJ, and dropped its claims as to a fourth patent during the course of the hearing. Following the hearing, the ALJ determined that no violation of section 337 had been established, because of the patents remaining in the investigation, two had not been infringed, and the third had been infringed but was invalid. In December of 2015, the full International Trade Commission declined to review the ALJ’s initial determination of no violation of section 337, resulting in a complete victory for our client Qualcomm in the ITC. Nvidia filed and then dismissed an appeal to the Federal Circuit, cementing the win for Qualcomm.

Round Rock Research LLC v. SanDisk Corporation: We defended SanDisk from numerous patent assertions by Round Rock, including a total of 15 patents asserted in two separate litigations in the District of Delaware, and 12 patents asserted in another case in the Northern District of California. We prevailed in all adjudicated phases of the Delaware and California actions before the parties reached a broad settlement. In the California action, we secured final judgment in favor of SanDisk after obtaining a summary-judgment victory based on patent exhaustion. In the first Delaware phase, which culminated with a jury trial on two asserted patents, we obtained a defense verdict invalidating most asserted claims of both patents, and finding no infringement as to the other claims. In the next Delaware phase, a second jury trial was vacated after we obtained summary judgment invalidating claims from a third patent asserted by Round Rock. The other patents in the Delaware actions remained pending adjudication when the parties settled.

Ziptronix v. Taiwan Semiconductor Manufacturing Company: We won summary judgment of non-infringement for Taiwan Semiconductor Manufacturing Company, Ltd. and its subsidiary TSMC, North America in a long-running patent lawsuit brought by North Carolina semiconductor company, Ziptronix, Inc. Ziptronix had asserted nine patents and more than 500 patent claims directed to TSMC’s manufacturing of semiconductors for use in backside-illumination image sensors used predominantly in smartphone cameras. On behalf of TSMC, we defeated Ziptronix’s claims by arguing that the territorial limits of U.S. patent law prohibited reaching TSMC’s business transactions and manufacturing operations in Taiwan.

Commonwealth Scientific and Industrial Research Organisation v. Semiconductor Company: We represented a leading semiconductor company in a patent trial brought in the Eastern District of Texas. The Commonwealth Scientific and Industrial Research Organisation (CSIRO) asserted patent infringement claims against more than a dozen of the world's leading technology companies, including our client. CSIRO contended the defendants' Wi-Fi products infringed on CSIRO's patent, and sought nine to ten figure royalty payments. A week into the jury trial, we reached a favorable settlement with CSIRO, and the remaining parties also settled favorably.

SanDisk Corp. v. SK Hynix Inc.: We represented SanDisk in a massive trade secret misappropriation and corporate espionage case. SanDisk, a global leader in flash memory storage solutions, sued competitor SK Hynix for misappropriating approximately ten gigabytes of highly confidential trade secret information and using that information over the course of six years to revamp Hynix’s technology and unfairly compete with SanDisk. We obtained a sweeping preliminary injunction that barred Hynix from any further use or disclosure of stolen SanDisk information, and fought back efforts to dismiss the case, to send it to arbitration, to transfer it overseas, and to remove it from the court that granted the preliminary injunction. Following a series of courtroom victories for our client, the parties reached a confidential settlement and entered into a product supply agreement.

Broadcom Corporation, et al. v. Commonwealth Scientific and Industrial Research Organisation: On behalf of Broadcom, we led a joint-defense group of wireless chip manufacturers, PC manufacturers, and cellular network carriers. The plaintiff, CSIRO, asserted patent claims that allegedly covered a wide variety of products that offer wireless functionality under the IEEE 802.11 standard for local area networks. We settled the case favorably on the eve of trial.

Broadcom Corporation v. SiRF Technology and CSR: We served as trial counsel for Broadcom, one of the world’s leading semiconductor companies, against SiRF, a GPS chip manufacturer, and its parent CSR. Broadcom asserted multiple patents covering graphics, video processing, and digital signal processing techniques, as well as claims arising under the Lanham Act and unfair competition laws. This case, along with other actions between the parties, was settled shortly before trial on terms that were very favorable to Broadcom.

United States Department of Justice v. Semiconductor Company: The U.S. government investigated the stock option practices of our client, a leading semiconductor company. Our client was not charged with any crime.

STC.UNM v. Taiwan Semiconductor Manufacturing Company: We served as lead counsel for TSMC in this investigation before the International Trade Commission. We secured a very favorable settlement and then dismissal, safeguarding TSMC’s freedom to operate certain advanced semiconductor patterning techniques patented by the University of New Mexico.

Key Contacts

Jeffrey R. Chanin

Jeffrey R. Chanin

(415) 391-5400
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Leo L. Lam

Leo L. Lam

(415) 391-5400
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Ashok Ramani

Ashok Ramani

(415) 676-2210
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Eugene M. Paige

Eugene M. Paige

(415) 676-2289
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