Orrick’s leading IP team counsels Taiwanese clients on all aspects of IP rights, licensing, and litigation throughout Asia, Europe and the United States. Orrick’s global team represents clients in IP and commercial litigation in all U.S. district and state courts, before the Patent Trial and Appeal Board, the International Trade Commission (ITC), the U.S. Court of Appeals for the Federal Circuit, and the U.S. Supreme Court.
Orrick’s global team also represents and counsels Taiwan-based clients as to all of their other legal needs, including a wide range of corporate, transactional, antitrust, litigation, and regulatory matters. For example, our M&A and Private Equity team advises Taiwanese clients on complex acquisitions, strategic combinations, and private investments. Our Antitrust and Competition team represents clients in investigations brought by government regulators and in obtaining merger clearance at the FTC, the European Commission, and other global regulatory bodies, while also representing clients in litigation and counseling clients as to the most complex antitrust issues. Our International Trade & Compliance group helps our Taiwanese clients navigate the global market and legal restraints on international trade and investment, and our leading Supreme Court & Appellate practice represents the interests of our foreign clients before the highest judicial bodies in the U.S.
- We represented Foxconn in a section 337 investigation before the International Trade Commission instituted in March 2017, and won a complete victory in late 2017 when the ALJ determined that all of the asserted claims were invalid as indefinite.
- We represented Compal Electronics in litigation brought by Via Licensing Corp. asserting breach of a patent pool license agreement and achieved a favorable result through mediation.
- We have prepared, filed, and litigated petitions for inter partes review of patents asserted against many of our Taiwan-based clients, while drafting numerous other IPR petitions that were successfully utilized in licensing and settlement discussions.
M&A and Private Equity
- We represented Acer in its acquisition for USD 710 million of NYSE-listed Gateway, Inc., then one of the world’s top ten personal computer companies; its acquisition of Packard Bell BV, a leading European PC vendor; and its USD 320 million acquisition of Silicon-Valley based Igware, Inc.
- We represented Advanced Semiconductor Engineering, Inc. in its successful Rule 13e-3 going-private acquisition of the outstanding public minority interest in its Nasdaq-listed Singapore subsidiary ASE Test.
- We represented SemiLEDs in its initial public offering and listing on NASDAQ and represented it with respect to its compliance with U.S. securities laws reporting requirements.
Antitrust and Competition
- We represented Nanya in the multi-year, multi-district DRAM antitrust litigation. This included the direct class case, the indirect class case, opt-out litigation, the grand jury investigation, and investigations/suits in Europe, Canada, and Brazil. We secured a summary judgment in the direct case – the only defendant to do so.
- We advised Acer in obtaining antitrust clearance in the EU and US of its acquisition of Gateway and Packard Bell.
- We advised a leading PC manufacturer on the antitrust issues surrounding a potential business partnership to jointly purchase computer components, represented a DRAM provider in a competitor dispute over the sale of a joint venture, and represented Mosel in DRAM antitrust litigation.
International Trade and Regulatory Compliance
- We investigated, analyzed, and summarized in a disclosure to the U.S. government—and resolved with the U.S. government—an instance in which a Taiwanese electronics company supplied U.S.-origin technology to China in noncompliance with U.S. export controls. We convinced U.S. export control authorities to resolve the matter on a no-penalty basis.
- We advised KLA-Tencor and other clients on application of U.S. and Taiwanese export controls to their sales and shipments of products from Taiwan.
- For a major U.S. supplier of electronics consumer products, we completed in-depth due diligence in Taiwan regarding compliance with the U.S. Foreign Corrupt Practices Act and other anticorruption requirements to facilitate completion of a large M&A transaction.