Insights
Firm News

Farella Guides Volterra to Unanimous Jury Win in Critical Patent Infringement Litigation

May 24, 2011 Announcement

 ***VERDICT ANNOUNCEMENT***

On May 24, 2011, after a three-week trial, a nine-person federal court jury announced a unanimous verdict in favor of patent holder Volterra Semiconductor Corporation (Volterra) upholding the validity of all remaining asserted claims of Volterra's key patents for flip chip integrated power switches for use in voltage regulators, U.S. Patent No. 6,278,264 (the ‘264 patent) and U.S. Patent No. 6,462,522 (the ‘522 patent) against the challenges by defendants Infineon Technologies AG and its subsidiaries Infineon Technologies N.A. and Primarion, Inc. (Infineon).

On May 23, the U.S. District Court issued two pre-verdict motions for judgment as a matter of law in favor of Volterra and dismissed all remaining claims of invalidity as to Volterra's ‘264 patent and several of the asserted claims of Volterra's ‘522 patent.  The defendants' remaining claims of invalidity as to Volterra's ‘522 patent were then submitted to the jury, and on May 24, after just 1.5 hours of deliberation, which Farella's counsel James Morando said might be a local record in a patent case, the jury returned a unanimous verdict - finding that all remaining asserted claims of Volterra's ‘522 patent were valid and not obvious.

"Volterra is extremely pleased first with obtaining the determinations of infringement of its patents and now with the complete rejection of each of the defendants' attacks on the validity of these important patents, culminating in the unanimous jury verdict in our favor.  We appreciated Farella Braun + Martel's skills and tenacity in the courtroom and particularly their ability to effectively present the complex technology at issue in the case to the jury," said David Oh, Volterra's general counsel.

Volterra's trial team was comprised of IP trial lawyers James Morando, Jeff Fisher and Karen Kimmey of Farella Braun + Martel LLP. 

As a result of earlier rulings by the court and stipulations by the defendants in the litigation, it has been determined that Infineon's flip chip integrated power switch products, the PX4640, PX4642, PX4650 and PX4652, infringed all of the asserted claims of Volterra's ‘264 and ‘522 patents.  With the determinations in favor of Volterra on both infringement and validity, Volterra now intends to pursue its claims for damages against the defendants.

Farella led Volterra to this complete victory, which demonstrates for the third time that Volterra's patents have been scrutinized and subsequently determined to be valid:  first, upon initial issuance by the U.S. Patent and Trademark Office (USPTO); second, in recent USPTO re-examination proceedings initiated by Infineon and resulting in a finding of validity; and now, by a U.S. District Court and federal jury. 

"This was an important victory for Volterra.  The company's story of success, which originates with meetings in the basement of the house of one of the founders when they were in graduate school at UC Berkeley, is quite amazing and these flip chip integrated power switch patents have been key technology for them," said James Morando.  Jeff Fisher added:  "We couldn't be happier that the court and the jury have sided with us in protecting Volterra's valuable intellectual property."

Terrence McMahon, Vera Elson and Sarah Columbia of McDermott Will & Emery LLP represented the defendants.  Infineon has already stated that it intends to appeal these adverse rulings to the Court of Appeals for the Federal Circuit.

Volterra Semiconductor Corporation is a leading provider of high-performance analog and mixed-signal power management semiconductors with headquarters in Fremont, California.

Farella Braun + Martel represents clients throughout the United States and abroad in sophisticated business transactions and high-stakes commercial, civil and criminal litigation. Founded in 1962, the firm is headquartered in San Francisco and maintains an office in the Napa Valley focused on the wine industry. Farella Braun + Martel lawyers are known for their imaginative legal solutions, dynamism and intellectual creativity. With an unwavering service ethic and interdisciplinary team approach, the firm is committed to advancing clients' objectives in the most effective, coordinated and efficient manner. Farella Braun + Martel is a green business.

Contacts

Melinda Hepp / Traci Stuart
Blattel Communications
415.397.4811
[email protected]
[email protected]

Jeff Fisher/James Morando
Farella Braun + Martel LLP
415.954.4912 /415.954.4457
[email protected]
[email protected]

Cheryl Loof
Farella Braun + Martel LLP
415.954.4433
[email protected]

Firm Highlights

Publication

Insights Into the First Patent Trial in Waco, Texas - MV3 Partners v. Roku

A 7-person jury in Waco, Texas, recently returned its verdict in the first patent trial held before Judge Albright: defense verdict, no finding of infringement. In the MV3 Partners v. Roku dispute, MV3 Partners...

Read More
Publication

IP Law up for Best Supporting Role in the COVID-19 Relief Spending Bill and Other New Legislation

The new, more than 5,000-page spending bill (formally known as The Consolidated Appropriations Act), which includes the latest COVID-19 relief, had a few surprises under its cover. Two of those surprises focus directly on...

Read More
News

How I Made Partner: 'I Started Bringing in Cases That Generated Work for Me and for Others at the Firm,' Says Winston Liaw of Farella Braun + Martel

Read More
News

Chambers USA 2021 Recognizes Farella Braun + Martel Attorneys, Practices

Farella Braun + Martel announces that Chambers USA has recognized 13 lawyers and 6 practice areas in the legal directory’s 2021 edition. Individual Rankings: Tyler Gerking – Insurance: Policyholders Jeffrey Hamilton – Cannabis Law...

Read More
News

Jeffrey Fisher Inducted to American College of Trial Lawyers

Read More
News

Farella Names Rebecca Stephens and Nadia Arid As LCLD 2021 Pathfinders

Farella Braun + Martel is proud to announce that senior associate Rebecca Stephens and associate Nadia Arid were selected to be members of the 2021 class of Leadership Council on Legal Diversity (LCLD) Pathfinders...

Read More
News

Douglas Young Receives 2021 Judge Learned Hand Award From AJC San Francisco

Read More
Publication

Cannabis IP: Using Intellectual Property to Protect Your Assets and Grow Your Business

Nate Garhart and Ashley Roybal-Reid discuss "Cannabis IP: Using Intellectual Property to Protect Your Assets and Grow Your Business." Intellectual property (IP) is a critical issue in the cannabis industry. Creating and protecting cannabis products...

Read More
Publication

Data Center Business Deals Gone Bad, and the Risks of the “Known in the Industry” Defense

Exploring business partnerships often involves or even requires sharing highly confidential trade secret information. The data center industry is no exception, and its participants have in recent years faced litigation focused around the intellectual...

Read More
Publication

Tips For Banks As USAA Check Deposit Patent Dispute Grows

In January 2020, we wrote a  Law360 guest article  that highlighted some of the risks that followed Wells Fargo Bank NA's strategy in its patent dispute with the United Services Automobile Association over remote deposit check imaging technology. Nearly...

Read More