Litigators of the Week: Douglas Greenswag
and Patrick McElhinny of K&L Gates
and E. Joshua Rosenkranz of Orrick
By Scott Flaherty
Anyone who follows high-stakes litigation knows that a settlement can sometimes signal a draw. But some deals, like the $750
million settlement that Marvell Technology Group Ltd. agreed to
pay Carnegie Mellon University this week, clearly mark a major
victory.
Delivering that victory for CMU were K&L Gates’ Douglas
Greenswag and Patrick McElhinny, who spearheaded the case, and
Orrick’s E. Joshua Rosenkranz, who briefed and argued a key appeal.
The settlement, announced Wednesday, resolves a patent infringement lawsuit that the Pittsburgh-based university first lodged in 2009,
alleging that Marvell’s noise-reducing technology for computer hard
drives copied the work of CMU researchers.
CMU’s president, Subra Suresh, said Wednesday that the money
would be divvied up between the school and a pair of inventors—CMU professor Jose Moura and his former doctoral student,
Aleksandar Kavcic, who’s now a professor at the University of
Hawaii. At least a portion of the funds, Suresh added, will go to benefit current and future CMU students in the form of financial aid or
scholarships.
The settlement follows a $1.2 billion jury verdict secured in 2012
by Seattle-based Greenswag and Pittsburgh-based McElhinny, patent
litigators who shared lead counsel duties for CMU in Pittsburgh federal district court. In voluminous briefing and at trial, Greenswag and
McElhinny maintained that Marvell had sold chips that incorporated
a Carnegie Mellon-patented method for more accurately detecting
data from disc drives.
The jury found CMU’s patents valid and infringed, concluding
that the university deserved a 50-cent royalty on Marvell’s sales
of more than two billion infringing chips. A judge later tacked on
additional damages based on a jury finding that Marvell’s infringement was willful, bringing the judgment to roughly $1.5 billion.
Shortly after the verdict came down, K&L Gates managing partner
Peter Kalis issued a statement touting the Pittsburgh-based global
law firm’s ties to the university.
“We take special pride in this trial victory because of the decadeslong relationship between our firm and Carnegie Mellon University
and our deep appreciation for CMU’s path-breaking and leadership
role in the information age,” Kalis said in late 2012.
(L-R) Joshua Rosenkranz, Douglas Greenswag, and Patrick McElhinny.
The judgment, however, wasn’t universally welcomed by big players in the technology industry, and Marvell challenged it at the U.S.
Court of Appeals for the Federal Circuit.
CMU tapped Orrick appellate and U.S. Supreme Court specialist Rosenkranz to argue the case at the Federal Circuit, where he
squared off against Quinn Emanuel Urquhart & Sullivan name partner Kathleen Sullivan. The appeal, which drew amicus briefs for both
sides from the tech sector and top research universities, raised questions
about the geographic reach of damages available under U.S. patent law.
Marvell, with backing from tech heavyweights Google Inc. and
Microsoft Corp., argued that products made, designed or sold overseas
shouldn’t affect a hypothetical royalty negotiation used to calculate
damages in an infringement case.
At oral argument, Rosenkranz maintained that the sales to
Marvell’s customers occurred within the U.S. and that, in turn, the
university deserved damages on them. In an August 2015 ruling, the
Federal Circuit sided with Marvell’s lawyers to an extent, agreeing to
place limits on the extraterritorial reach of infringement damages and
cutting CMU’s judgment down to roughly $330 million.
The panel held that if products are made, used and sold outside the
U.S., they shouldn’t figure into damages calculations in U.S. patent
cases. But as sibling publication The Recorder reported at the time,
the court kept the door open for damages when one or more of those
activities—sale, manufacture or use—took place within the U.S.
The upshot was that CMU earned another chance to push its
damages award back up into the $1 billion range, provided it could
prove that Marvell’s chip sales to manufacturers took place in the
U.S. With the settlement announced Wednesday, however, the
university’s lawyers won’t have to finish that fight in court.
Reprinted with permission from the AmLaw LITIGATION Daily featured on February 18, 2016 © 2016 ALM Media Properties, LLC. All rights reserved.
Further duplication without permission is prohibited. For information, contact 877-257-3382 or reprints@alm.com. # 002-02-16-10
Courtesy photos
February 18, 2016