Silicon Investor - OPTI

[Paul Lee] Fed. Circ. Won't Revisit OPTi's $3M Patent WinBy Kevin Penton Law360, New York ...

Paul Lee — 3/29/2016 8:16:36 AM

Fed. Circ. Won't Revisit OPTi's $3M Patent WinBy Kevin Penton

Law360, New York (March 28, 2016, 9:02 PM ET) -- The Federal Circuit declined Monday to reconsider its February order that left intact a $3 million award OPTi Inc. won after a Texas federal jury held that computer parts maker VIA Technologies Inc. infringed the patent-holding company's “predictive snooping” technology patent.

The appellate court did not expand on its reasoning for declining VIA’s bids for either a panel or an en banc hearing of the court's Feb. 8 order, which affirmed a September 2013 judgment by U.S. District Judge Rodney Gilstrap that upheld OPTi's jury award of $2.1 million in compensatory damages and ordered $974,000 in prejudgment interest.

Counsel for the parties could not be reached Monday for comment.

OPTi had hit Silicon Integrated Systems Corp. and VIA with a patent infringement suit in July 2010, alleging that the companies induced third-party manufacturers to make and sell products that infringed two “presnoop patents,” according to court documents. The patents describe ways of transferring data between a processor, memory and other computer components, according to their descriptions.

By the time of trial in May 2013, OPTi had dropped claims against SIS after the two companies reached an undisclosed settlement and dropped claims against VIA related to one of the patents, according to court documents.

Jurors ultimately found that VIA directly infringed the remaining patent and induced others to do so, and awarded OPTi $2.11 million in damages. VIA was also ordered to pay OPTi an ongoing royalty as it continues to sell infringing products.

On appeal, VIA argued that OPTi failed to show how devices VIA sold copied the patent, arguing that the patent-holding company used a flawed analysis of the accused devices, according to court documents.

Meanwhile, OPTi filed a cross-appeal in the case, challenging the jury’s finding that VIA's infringement was not willful. The appellate panel affirmed that aspect of the jury's finding in February.

The patent-in-suit is U.S. Patent Number 5,710,906.

OPTi is represented by Michael L. Brody, Geoffrey P. Eaton and James E. McComb of Winston & Strawn LLP.

VIA is represented by Brian A. Carpenter and Eric W. Buether of Buether Joe & Carpenter LLC and Timothy J.H. Craddock of Klemchuk LLP.

The cases are OPTi Inc. v. VIA Technologies Inc. et al., case numbers 13-1670 and 14-1839, in the U.S. Court of Appeals for the Federal Circuit.

--Additional reporting by Matthew Bultman. Editing by Edrienne Su.
All Content © 2003-2016, Portfolio Media, Inc.

[Paul Lee] Fed. Circ. Affirms OPTi's $3M Patent Win Over Snooping TechBy Matthew Bultman L...

Paul Lee — 2/9/2016 7:59:45 AM

Fed. Circ. Affirms OPTi's $3M Patent Win Over Snooping TechBy Matthew Bultman

Law360, New York (February 8, 2016, 4:45 PM ET) -- The Federal Circuit on Monday left in place a $3 million award that VIA Technologies Inc., a maker of computer parts, was ordered to pay after a Texas federal jury found it infringed an OPTi Inc. patent related to predictive snooping technology.

In a one-line order, a three-judge panel affirmed a judgment that U.S. District Judge Rodney Gilstrap entered in September 2013 awarding OPTi $2.1 million in compensatory damages and nearly $974,000 in prejudgment interest.

Jurors months before had found Taiwan-based VIA and its American counterpart infringed OPTi’s “presnoop patent” through sales of chipsets and other computer technology.

Brian A. Carpenter of Buether Joe & Carpenter LLC, an attorney for VIA, told Law360 the company was reviewing the decision and considering its options. An attorney for OPTi declined to comment.

Barring a request for a rehearing or an appeal to the U.S. Supreme Court, the decision likely caps a case that began in July 2010, when OPTi hit Silicon Integrated Systems Corp. and VIA with a lawsuit for patent infringement.

OPTi claimed that SIS and VIA induced third-party manufacturers to make and sell products that infringed two of its presnoop patents. It dropped claims against SIS in 2012 after the two companies reached an undisclosed settlement.

By the time of trial in May 2013, OPTi had also dropped claims against VIA with respect to one of the patents.

Jurors ultimately found VIA directly infringed the remaining patent and induced others to do so, and awarded OPTi $2.11 million in damages. VIA was also ordered to pay OPTi an ongoing royalty as it continues to sell infringing products.

Later, the court held a nonjury trial to hear further evidence presented solely with respect to VIA's defenses of laches and equitable estoppel. The court concluded that VIA did not demonstrate that OPTi’s recovery of damages should be limited.

On appeal, VIA argued that OPTi had failed to show how devices VIA sold copied the patent. It said OPTi used a flawed analysis of the accused devices under the doctrine of equivalents.

In particular, it contended Alan Smith’s expert report grossly “oversimplified” the infringement analysis required by the equivalents doctrine, failing to include any identification or structural differences between the accused devices.

“Dr. Smith simply failed to identify any differences much less make any comparisons between corresponding and accused structures,” Carpenter told the appeals court during oral arguments last week.

That kind of approach to the equivalents analysis has “no precedent,” he added.

Michael L. Brody of Winston & Strawn LLP, attorney for OPTi, fought those characterizations and said Smith analyzed all the structures of the accused devices, comparing them with the patent.

OPTi had also filed a cross-appeal in the case, challenging the jury’s finding that VIA's infringement was not willful. The appeals court affirmed that aspect of the jury's finding on Monday as well.

The patent-in-suit is U.S. Patent Number 5,710,906.

Judges Alan D. Lourie, Timothy B. Dyk and Todd M. Hughes sat on the panel for the Federal Circuit.

OPTi is represented by Michael L. Brody, Geoffrey P. Eaton and James E. McComb of Winston & Strawn LLP.

VIA is represented by Brian A. Carpenter and Eric W. Buether of Buether Joe & Carpenter LLC and Timothy J.H. Craddock of Klemchuk LLP.

The case is OPTi Inc. v. VIA Technologies, Inc., case number 13-1670, in the U.S. Court of Appeals for the Federal Circuit.

--Additional reporting by Jimmy Hoover. Editing by Brian Baresch.
All Content © 2003-2016, Portfolio Media, Inc.

[Paul Lee] VIA Asks Fed. Circ. To Gut $3M IP Award Over Chipset Share us on: By Jimmy Hoo...

Paul Lee — 2/2/2016 6:52:37 AM

VIA Asks Fed. Circ. To Gut $3M IP Award Over Chipset
Share us on: By Jimmy Hoover

Law360, Washington (February 1, 2016, 4:55 PM ET) -- Manufacturer VIA Technologies pressed a Federal Circuit panel Monday to nix a $3 million judgment against it for infringing OPTi’s computer chipset patent, arguing OPTi failed to show how devices VIA sold copied the patent.

The expert testimony OPTi relied on to convince a jury that VIA infringed its “presnoop patents” through sales of logic chipsets, motherboards and other technology, used a flawed analysis of the accused devices under the infringement theory known as the doctrine of equivalents, VIA told the panel.

According to VIA, Dr. Alan Smith’s expert report grossly “oversimplified” the infringement analysis required by the equivalents doctrine, failing to include any identification or structural differences between the accused devices.

“Dr. Smith simply failed to identify any differences much less make any comparisons between corresponding and accused structures,” Brian A. Carpenter of Buether Joe & Carpenter LLC, an attorney for VIA, said

That kind of approach to the equivalents analysis has “no precedent,” he added.

Michael L. Brody, of Winston & Strawn LLP, fought those characterizations Monday, saying Dr. Smith conducted a lengthy analysis of all the structures of the accused devices, comparing them to the patent.

“It was a classic means plus function analysis,” Brody said. “We respectfully submit that the jury’s determination on that was fine.”

Following a trial in May 2013, a Texas federal jury handed a $2.1 million verdict to OPTi in the suit brought against VIA for infringing patents related to predictive snooping technology, ruling that VIA infringed one of the patents. The jury found that Taiwan-based VIA and its American counterpart directly infringed and induced others to infringe OPTi’s U.S. Patent Number 5,710,906 and, despite VIA's efforts, that the disputed claim in the patent was not invalid. A federal judge handed down a final judgment, including total damages more than $3 million, in September.

On July 30, 2010, OPTi hit Silicon Integrated Systems Corp. and VIA with a lawsuit for patent infringement. OPTi claimed that SIS and VIA induced third-party manufacturers to make and sell products whose operations infringe the presnoop patents and said the alleged infringements were willful and deliberate.

OPTi listed SIS’s SiS964 Southbridge and VIA’s VT8237A Southbridge among the products that allegedly infringed U.S. Patent Numbers 5,710,906 and 6,405,291. The company sought triple damages for willful patent infringement, as well as a permanent injunction and attorneys’ fees, according to the original complaint.

In October of last year, U.S. District Judge Rodney Gilstrap granted OPTi’s and SIS’s joint motion to dismiss the claims against SIS with prejudice after the companies announced a settlement for an undisclosed amount.

In January, OPTi and VIA agreed to dismiss all claims and counterclaims regarding U.S. Patent Number 6,405,291. By the time of trial in May, OPTi was alleging that VIA alone infringed and induced infringement of claim 26 of the ‘906 patent.

The jury sided with OPTi, finding that VIA directly infringed the '906 patent and induced others to do so. The jury awarded OPTi $2,111,405 in damages to compensate for VIA's infringement. VIA also will be required to pay OPTi an ongoing royalty as it continues to sell infringing products, according to court documents.

At the conclusion of the jury trial, the court held a nonjury trial to hear further evidence presented solely with respect to VIA's defenses of laches and equitable estoppel. The court concluded that VIA did not demonstrate that OPTi’s recovery of damages should be limited, and U.S. District Judge Rodney Gilstrap affirmed that finding Monday, awarding OPTi $2.1 million in compensatory damages and nearly $974,000 in pre-judgment interest.

OPTI is represented by Michael L. Brody, Geoffrey P. Eaton and James E. McComb of Winston & Strawn LLP.

VIA is represented by Brian A. Carpenter and Eric W. Buether of Buether Joe & Carpenter LLC and Timothy J.H. Craddock of Klemchuk LLP.

The case is OPTi Inc. v. VIA Technologies, Inc., case number 13-1670, in the U.S. Court of Appeals for the Federal Circuit.

— Additional reporting by David McAfee. Editing by Ben Gu