David C. Bohrer
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Confluence Law Partners
60 South Market Street, Suite 1400
San Jose, CA 95113-2396
Phone: 408.938.3883
Recent First Chair Jury Trials and Related Litigation Experience
This summary contains: (1) First Chair Jury Trials, as well as notable first chair (2) IP Arbitrations, (3) IP Summary Judgments, (4) Bench Trials and (5) Appeals.
1. First Chair Jury Trials
FUNAI ELECTRIC COMPANY, LTD v. DAEWOO ELECTRONICS CORPORATION, et al.
U.S. District Court, Northern District of California, C 04-1830 CRB/JCS
Judges: Breyer, Spero
Who I Represented: Funai Electric Co., Ltd.
Type of Case: patent infringement
Opposing Counsel: Kirkland & Ellis and Chung & Press PC
Trial: January 14 through February 4, 2008
Funai brought a patent infringement action against defendants Daewoo Electronics Corporation and related Daewoo companies. Funai asserted infringement of six patents covering improved electronic circuitry and computer software and hardware used in DVD and VCR devices. Funai is a leading Japanese manufacturer of consumer electronics and has annual US sales greater than $1B of products using the patented technology. Daewoo is a Korean manufacturer of competing consumer electronics. Following claim construction and summary judgment motions, the case proceeded to trial on three of the patents. The jury returned a verdict finding that the patents were not invalid, that the patents were infringed, and that the infringement of each patent was willful. The jury also awarded lost profits and reasonable royalty damages of $7.2M. Post-trial motions to enhance the damages and for reimbursement of Funai's attorneys' fees and costs are pending.
The jury found willful infringement notwithstanding the rigorous standards set out in the Federal Circuit's Seagate decision, including the requirement that the patent holder must prove to the jury find that accused infringer's conduct was objectively reckless.
Prior to trial, the Daewoo business units selling the infringing products were transferred from two Daewoo defendants to two other Daewoo defendants. The transferor defendants then defaulted. Damages from a defaulting party must be proven to a reasonable probability. In October 7, 2005, Funai obtained a judgment of $8.1M against the defaulting defendants that encompassed lost profits and reasonable royalty damages, attorneys' fees, prejudgment interest and costs.
ADE CORPORATION v. KLA-TENCOR CORPORATION
U.S. District Court, District of Delaware, 00-892 RJM/KLJ
Judges: McKelvie, Jordan
Who I Represented: KLA-Tencor
Type of Case: patent infringement
Opposing Counsel: Fish & Richardson
Trial: January 27 through February 5, 2004
KLA-Tencor defended a lawsuit alleging infringement of two ADE patents related to identifying and correcting defects on the silicon wafers on which semiconductor chips are fabricated. The patented technology involved analyzing light scattered from the surface of the wafer using principles drawn from physics, electrical engineering, optics and computer software design. ADE and KLA-Tencor design and sell million dollar tools that use this technology. ADE sought actual damages in excess of $50 million and an injunction that would have effectively barred KLA-Tencor from competing in the lucrative market for tools that inspect "bare" or unpatterned wafers - wafers on which chips have not yet been fabricated. KLA-Tencor counterclaimed for infringement of related wafer inspection technology.
Following Markman hearings on each ADE patent at issue, and claim construction favorable to KLA-Tencor, the court awarded summary judgment to KLA-Tencor on all of ADE's patent claims. The case proceeded to trial on the remaining KLA-Tencor patent infringement counterclaim, and the jury returned a verdict finding that the patent was invalid.
ADE appealed the dismissal of its patent infringement claims, but prior to a decision on the merits, the parties resolved the dispute via confidential settlement. Press releases announced KLA-Tencor's acquisition of ADE shortly thereafter.
BENGHIAT v. ITRON CORPORATION
U.S. District Court, District of Minnesota, Civ. 99-501 JRT/FLN
Judge: Tunheim
Who I Represented: Benghiat
Type of Case: patent infringement
Opposing Counsel: Perkins Coie; Thuente Skarr & Christensen
Trial: December 9 through 20, 2002
Itron, a contractor used by thousands of utility companies in over 50 countries to collect water, gas and electrical-use data, brought a lawsuit seeking a declaration that it did not infringe Mr. Benghiat's patented software algorithm allowing greater flexibility in accessing and analyzing utility data. The filing of the lawsuit prompted a countersuit by Mr. Benghiat for patent infringement. The case presented novel legal issues involving the court's construction of the disclosed algorithm in a computer implemented means-plus-function claim, and the application of the after-arising technology doctrine to establish infringement.
At trial, the jury returned a verdict finding that the patent was valid, that Itron had willfully infringed the patent, and awarding Mr. Benghiat $7.4 million in actual damages. On post-trial motions, the court increased damages by $2.2 million and entered a permanent injunction. While Itron's appeal to the Federal Circuit was pending, the case settled favorably to Mr. Benghiat.
In January 2003, I was featured in the National Law Journal's "Verdict of the Week" for obtaining the Benghiat verdict. The case is also the subject of an article that I co-authored, see David C. Bohrer and Michael I. Frankel, The Question Left Unanswered in WMS Gaming: What Is the Algorithm?, Intellectual Prop. & Tech. L.J., vol. 16, no. 4 (April 2004).
AVERY DENNISON v. ACCO BRANDS, INC.
United States District Court for the Central District of California, CV99-1877 DT
Judge: Tevrizian
Who I Represented: Avery Dennison
Type of Case: trademark infringement, false advertising, antitrust
Opposing Counsel: Kirkland & Ellis
Trial: February 28, 2000, settled on first day of trial
Avery filed suit against ACCO to block an advertising campaign that ACCO was using to launch a competing label product. In its sales literature, print and Internet media, and even on its packaging, ACCO represented that the comparative quality and performance of its labels was "equal to or better than" those of Avery. Avery's lawsuit was predicated upon the legal theories that these representations constituted false advertising and infringed trademark rights. ACCO counterclaimed for false advertising, cancellation of Avery's trademarks, and anticompetitive conduct.
In 1999, Avery obtained a preliminary injunction that enjoined ACCO from making the comparative and superiority statements at issue pending trial. In his memorandum decision granting this relief, Judge Tevrizian said that Avery's evidence "affirmatively shows that [Avery] labels are superior" and therefore he found that "Avery has shown a probability that it will prove the necessary facts to establish false statement by ACCO."
Following the disposition of the parties' motions for summary judgment, the case proceeded to trial in 2000 on Avery's false advertising claims and ACCO's false advertising and anticompetitive conduct counterclaims. On the first day of trial, the case was resolved by confidential settlement.
AMERICAN AIRLINES v. CITY OF CHICAGO, et al.
Circuit Court of Cook County, Illinois, 92-L-11800
Judge: Kelly
Who I Represented: American Airlines
Type of Case: Lost profits/property damage
Opposing Counsel: Bullaro, Carton & Stone; Blatt Hammesfahr & Eaton; French Kezilis & Kominiarek
Trial: September 1997, two weeks
American brought suit to recover damages for the cost of repair and loss of use of an aircraft that was struck by construction vehicles while taxiing at O'Hare airport. The parties from whom recovery was sought were the owner of the airport, the general contractor for the airport construction, and the subcontractor hired to lead construction vehicles across the airfield. The owner of the airport settled before trial, essentially agreeing to reimburse American for the costs incurred in repairing its aircraft. The case proceeded to trial against the general contractor and the subcontractor on the question of liability and whether American was entitled to recover lost profits for the period that the aircraft was out of service. Judgment was entered on a jury verdict in favor of American. The remaining defendants settled favorably to American before any appeals were filed.
GIAMMANCO v. CENTRAL CAN COMPANY
Circuit Court of DuPage County, Illinois, 92-L-1052
Judge: Nolan
Who I Represented: Giammanco
Type of Case: fraud, breach of fiduciary duty
Opposing Counsel: Chuhak & Tecson
Trial: April 1996, two weeks
I represented Joseph Giammanco, one of two co-equal shareholders in a closely held corporation. The lawsuit arose out of the shareholders' decision to sell their company for $45 million to a buyer my client believed was independent of either the other shareholder or the company. However, after the sale closed, it was discovered that the other shareholder, contemporaneously with the closing, acquired a 96% ownership interest in the buyer. On behalf of Mr. Giammanco, I brought suit against the other shareholder, the company and the buyer for fraud and breach of fiduciary duty. The buyer counterclaimed for certain post-closing costs and the company counterclaimed for $20 million under an indemnity agreement.
Prior to trial, the defendants hotly contested Mr. Giammanco's core theory that he was entitled to recover damages equal to the greater consideration that he would have required had he known the true identity of the buyer. Mr. Giammanco ultimately prevailed on this issue before the Illinois Appellate Court, and the Illinois Supreme Court denied the defendants' appeal. See Giammanco v. Central Can Company, 253 Ill. App. 3d 750, 625 N.E.2d 990 (2d Dist. 1994), appeal denied, 156 Ill. 2d 557, 638 N.E.2d 1115 (Illinois 1994).
The case proceeded to trial, where a directed verdict was entered in Mr. Giammanco's favor on the $20 million indemnity counterclaim and judgment was entered on a jury verdict for the defendants. The parties entered into a confidential settlement before any appeals were taken.
PIPER v. ILLINOIS CENTRAL RAILROAD
Circuit Court of Madison County, Illinois, 87-L-419
Judge: Meehan
Who I Represented: Illinois Central Railroad
Type of Case: FELA (personal injury)
Opposing Counsel: not available
Trial: 1995, eight days
An injured railroad employee brought this lawsuit against my client, the Illinois Central Railroad, under the Federal Employers Liability Act (FELA). Liability under the FELA requires proof of fault on the part of the employing railroad and is usually tried to a jury. Given the sympathetic nature of the claimants, and that these cases are usually venued in high verdict, pro-claimant courts, defense verdicts are extremely rare. Nonetheless, at trial, the jury returned a verdict in my client's favor and the verdict was upheld on appeal.
ASCHENBRENNER v. ILLINOIS CENTRAL RAILROAD
Circuit Court of Madison County, Illinois, 87-L-147
Judge: Byron
Who I Represented: Illinois Central Railroad
Type of Case: FELA (personal injury)
Opposing Counsel: Hustava
Trial: 1994, eight days
I represented the Illinois Central Railroad at the trial of this FELA claim. The jury returned a verdict for the injured employee in the amount of approximately $400,000. Following trial, the case was settled for a lesser, compromise sum.
2. Notable IP Arbitrations
AlPHA & OMEGA SEMICONDUCTOR, INC. v. SILICONIX, INC.
Judicial and Arbitration Mediation Service, San Francisco, CA, No. 1110009946
Arbitrator: Lynch (Ret. US ND Cal)
Who I Represented: Alpha & Omega Semiconductor, Inc.
Type of Case: patent infringement, IP license dispute
Opposing Counsel: Quinn, Emanuel, Urquhart, Oliver & Hedges
Trial: February 19 through 22, 2008
Alpha & Omega Semiconductor, Inc. (AOS) designs and manufactures power MOSFET semiconductors. A competitor, Siliconix, brought an action for patent infringement against AOS in the Northern District of California. This action was resolved via a settlement that included a license agreement obligating AOS to pay royalties on products using the asserted patents. The license also included a "Most Favored Licensee" clause that entitled AOS to a reduction in royalty commensurate to any lower royalty paid by subsequent licensees of the patents. Following the settlement, AOS designed a noninfringing substitute which was outside the scope of the licensed patent. The above proceeding arose out of Siliconix's claim that AOS's design around product infringed Siliconix's patents, which, Siliconix argued, entitled Siliconix to additional royalties under the license. The dispute was subject to arbitration under the license agreement.
AOS filed for arbitration seeking reduced royalties on the AOS products that fell within the scope of the license, pursuant to the Most Favored Licensee clause. Siliconix counterclaimed for over $2.5M in alleged royalties due on AOS's design around product, based on alleged patent infringement. Following trial and extensive briefing and oral argument, the Arbitrator found both that there was no right to recovery on AOS's reduced royalty claim, and that AOS's design around product did not infringe Siliconix's patents, thus allowing AOS to avoid millions of dollars in royalty liability.
3. Notable IP Summary Judgments
NIDEC CORPORATION v. VICTOR COMPANY OF JAPAN, LTD, et al.
U.S. District Court, Northern District of California, C 05-686 SBA
Judge: Armstrong
Who I Represented: Nidec Corporation
Type of Case: patent infringement
Opposing Counsel: Howard Rice Memerovski Canady Falk & Rabkin, and Amster, Rothstein & Ebenstein, LLP
Date of MSJ: September 28, 2007
Nidec obtained summary judgment victory in a patent infringement action brought by my client Nidec against Victor Company of Japan, Ltd (JVC). Nidec is the world's largest manufacturer of spindle motors used in hard disk drives. Nidec sought $80M in actual damages based upon JVC's infringement of four Nidec patents relating to fluid dynamic bearings used in spindle motors. JVC counterclaimed for $60M in actual damages based upon Nidec's alleged infringement of a JVC patent relating to hard disk drives.
Following a favorable claim construction hearing, Nidec obtained a complete summary judgment victory in favor of Nidec on JVC's counterclaim. At the same time, Nidec obtained rulings from the Court denying JVC's motion for summary judgment of non-infringement of Nidec's patents in all respects, and denying JVC's motion for summary judgment of invalidity of Nidec's patents for three out of the four asserted Nidec patents. Within weeks of these rulings, the parties entered into settlement discussions that resolved favorably to Nidec, including Nidec's receipt of cash payments in the tens of millions of dollars and license rights to JVC technology, and JVC's dismissal of antitrust claims made against Nidec in a separate litigation. JVC also has announced that it no longer intends to compete in the spindle motor market and will spin-off the relevant business units.
CLINICAL INNOVATIONS, LLC, et al. v. TYCO HEALTHCARE< GROUP LP, et al.
U.S. District Court for the District of Utah, 2:05-CV-633 BSJ
Judge: Jenkins
Who I Represented: Tyco Healthcare Group LLP (nka Covidien, Ltd.)
Type of Case: patent infringement
Opposing Counsel: Parsons, Behle & Latimer PC
Date of MSJ: July 6, 2007
Tyco Healthcare Group LLP (now known as Covidien, Ltd.), a $12B healthcare company obtained a complete summary judgment victory in a medical device patent infringment case brought by Clinical Innovations, a competing medical device company. The technology at issue was intrauterine pressure catheters used for fetal monitoring. The Court found there was no infringement by Covidien either literally or under the doctrine of equivalents based upon the Court's earlier claim construction. The favorable ruling allowed Covidien to continue to sell a flagship product.
HARGABUS v. KONAMI DIGITAL ENTERTAINMENT, INC. et al.
U.S. District Court, Northern District of Ohio, 1:04 CV 1751
Judge: Oliver
Who I Represented: Konami Digital Entertainment, Inc.
Type of Case: patent infringement
Opposing Counsel: Lindon & Lindon
Date of MSJ: September 14, 2005
Konami Digital Entertainment, Inc. obtained a complete summary judgment victory in an action for patent infringement brought by the plaintiff, the purported inventor. The subject matter of the asserted patent was optics and reflective imaging technology. Konami is a leading Japanese manufacturer of gaming equipment and other consumer electronics that use this technology. Following a successful claim construction hearing, the Court found that Konami did not infringe either literally or under the doctrine of equivalents.
4. Notable First Chair Bench Trials
ZIMMERMAN v. ILLINOIS CENTRAL RAILROAD
Illinois Human Rights Department, HRC No. 1986 CN 3091, ALS No. 3446
Judge: Wood
Who I Represented: Illinois Central Railroad
Type of Case: wrongful termination
Opposing Counsel: not available
Trial: 1990, two weeks
This case was tried under the Illinois Human Rights Act to an administrative law judge, who entered judgment for my client, the Illinois Central Railroad, on an employee's claim that adverse job action was taken based upon his age and physical handicap. The decision was affirmed on appeal.
5. Notable First Chair Appeals
I have been principally responsible for the briefs and oral argument on appeals in the Seventh Circuit, Ninth Circuit, Minnesota and Illinois Supreme Courts, and at least ten times (on at least 10 separate cases) in the Illinois appellate courts. I was also retained by the American Insurance Association as its lead counsel to prepare and file amicus briefs in the highest level New York appeals court, see Adema v. R.L.S. Equipment Company, Inc, No. 91-5004 (N.Y. Supreme Court, Appellate Division). Two of the cases that I handled through the Illinois Supreme Court, Johnson (for American Airlines - federal preemption) and Schlunk (for Volkswagenwerk Aktiengesellschaft - constitutional due process) were ultimately resolved and reported as United States Supreme Court decisions.
