Patent Law

The following press release appeared today, April 16, 2008, on PR Newswire:

On April 14, 2008, Chief Judge Vaughn Walker of the United States District Court for the Northern District of California issued findings of fact and conclusions of law stemming from a bench trial in January 2008 over Taiwan Semiconductor Manufacturing Corporation's (TSMC) counterclaim alleging that UniRAM Technology, Inc. had engaged in inequitable conduct in the prosecution of U.S. Patent 6,108,229. In the bench trial, TSMC had sought to have the '229 patent declared invalid and have the Court award it its attorney's fees related to its earlier defense of UniRAM's patent infringement case. The Court, however, rejected TSMC's inequitable conduct allegations, describing TSMC's evidence as "barren." In so holding, the Court noted that the evidence indicated that TSMC's pursuit of this counterclaim was "highly questionable" and was "pretextual and not in good faith." The Court further stated that "circumstantial evidence suggests that TSMC brought this counterclaim not because it believed that [UniRAM] lied to the patent office but because it wanted to intimidate UniRAM."

TSMC's now-dismissed inequitable conduct allegations were asserted as a counterclaim to UniRAM's trade secret misappropriation case against TSMC. On September 25, 2007, a jury returned a verdict in which it concluded that TSMC had misappropriated trade secrets relating to "embedded DRAM" technology from UniRAM, TSMC's former customer. The jury awarded UniRAM $30.5 million. The Court has not yet entered judgment on that verdict, nor has TSMC filed post-trial motions or appeals.

Read the full release here.