Orrick provides comprehensive counseling, litigation, and transactional advice to Taiwan-based tech and electronics companies.

We are the only firm recognized by Chambers Global 2022 for Intellectual Property (Expertise Based Abroad) in Taiwan (an area in which we have been recognized for 12 years); and Robert Benson, who leads our team, is the only lawyer ranked in the U.S. for Intellectual Property on behalf of Taiwan-based companies.

Our team counsels Taiwan-based clients on all aspects of IP rights, licensing, and litigation throughout Asia, Europe and the United States. This includes 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 Taiwan-based clients on complex acquisitions, strategic combinations, and private investments around the world, and similarly advises global clients on acquisitions, joint ventures, and investments in Taiwan. 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. Our International Trade & Compliance group helps our Taiwan-based clients navigate the global market and legal restraints on international trade and investment.

Representative Engagements

Intellectual Property

  • We currently represent Foxconn in a section 337 investigation before the International Trade Commission instituted in March 2017.
  • 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.
  • Additional Representative Engagements

    Intellectual Property

    • We obtained a finding of “no violation” on behalf of Taiwanese chipmakers Acer, Nanya and Powerchip in a section 337 investigation brought by Tessera before the ITC.  We prevailed on a combination of defenses based on patent exhaustion and non-infringement, and the ITC’s ruling was affirmed by the Federal Circuit.  Our win was recognized by Financial Times for its innovation, with the paper praising our team for "digging deeper into the technical details than previous defendants to successfully challenge the claimant’s expert."
    • We represented TPK Touch Solutions in defense of one of the company’s key Chinese patents before the Patent Re-examination Board, earning us recognition in Managing Intellectual Property as China IP Team of the Year.
    • We represented nine clients, including several based in Taiwan and China, in patent infringement litigation brought by Trustees of Boston University, and after successfully staying the litigation for years, achieved successful resolutions when most or all of the accused LED components were licensed by upstream suppliers and manufacturers.
    • We represented a DRAM provider in a dispute with a leading consumer products company over an alleged breach of FRAND commitments.
    • We have prepared non-infringement and invalidity opinions of counsel on behalf of many of our Taiwanese clients.

    M&A and Private Equity

    • We represented a major Taiwan semiconductor manufacturer in connection with its proposed acquisition by a leading multinational electronics and consumer goods company.
    • We represented the controlling shareholders of a major Taiwan consumer goods manufacturer in connection with their buyout of an international private equity firm’s minority interest.
    • We represented a major Taiwan semiconductor company in connection with a proposed chip joint venture.
    • We represented a major Taiwan personal electronics manufacturer in connection with its bid for a line of business auctioned off by IBM.