Office News

Beijing – Orrick, Herrington & Sutcliffe LLP (Orrick) has successfully advised On Track Innovations (OTI), a global leader in contact-less microprocessor-based smart card solutions, in reaching a landmark settlement agreement with Smartrac N.V., a leading manufacturer and supplier of RFID transponders.

The settlement, agreed on November 9, 2009, was reached after more than 2 years of litigation in multiple jurisdictions, including successful patent invalidation, patent re-examination, customs action and patent infringement suit. It fully secures OTI's delivery of products and projects as well as confirming Smartrac as OTI's exclusive supplier for wire-embedded and Dual Interface Inlays.

Orrick's China Intellectual Property team was led by Beijing-based partner Xiang Wang and included New York partner Robert Isackson, Hong Kong litigation partner Robert Pé and Of Counsel Andrew Dale. The team advised OTI on its China, U.S. and Hong Kong related disputes.

OTI's case began in August 2007  when Orrick filed a patent invalidation on behalf of OTI before the China Patent Re-examination Board (PRB) against Smartrac's Chinese invention patent. In June 2008, Smartrac filed customs actions in Shenzhen and a patent infringement suit in the Shenzhen Intermediate Court against Millennium Card Technology Ltd (MCT), a subsidiary of OTI. As MCT is the primary Chinese manufacturing base for OTI smart cards, the successful outcome of this case was critical for OTI's global business.

Xiang Wang commented: “This was a challenging patent case involving multiple jurisdictions. We advised OTI on all the Chinese legal proceedings to which our client was a party, as well as OTI's patent re-examination in the United States and interests in Hong Kong. We believe that the victories in the various Chinese legal actions provided OTI with a significant leverage in its multi-jurisdiction disputes with Smartrac in China, the United States, Germany, Holland and other jurisdictions, which ultimately led the settlement."

He added:"The settlement represents an important achievement for our client’s global business operations and strategy. With access to Smartrac's  patented technology and high secure production network, OTI can further strengthen its ability to support its existing and future secured ID projects and enjoy Smartrac's high volume production capacity in Europe. Orrick's China IP team is one of the most experienced in the region. We have over a decade of experience in representing both global and Chinese companies in their complex, high-value IP cases both in China and globally and this capability allowed us to successfully help OTI."

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About Orrick
Orrick, Herrington & Sutcliffe LLP is a global law firm with more than 1,100 lawyers in North America, Europe and Asia. The firm focuses on litigation, complex and novel finance and innovative corporate transactions. Orrick clients include Fortune 100 companies, major industrial and financial corporations, commercial and investment banks, high-growth companies, governmental entities, start-ups and individuals. The firm's 22 offices are located in Beijing, Berlin, Düsseldorf, Frankfurt, Hong Kong, London, Los Angeles, Milan, Moscow, New York, Orange County, Paris, Portland, Rome, Sacramento, San Francisco, Seattle, Shanghai, Silicon Valley, Taipei, Tokyo and Washington, D.C.

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