Haynes and Boone Wins IP Verdict for Korean Client in EDTX

07/16/2019

A Haynes and Boone, LLP team led by Partner Russ Emerson and Associate Stephanie Sivinski won a rare defense victory in an intellectual-property trial in the Eastern District of Texas.

After a week-long trial before Judge Rodney Gilstrap, a Marshall jury returned a verdict July 12 in favor of Haynes and Boone client HiCon Co., Ltd, a Korean company sued by Dallas-based Plastronics Socket Partners, Ltd.

Plastronics and HiCon both provide burn-in and test sockets and related components for the semiconductor industry. In 2018, Plastronics sued HiCon and its founder, Dong Weon Hwang, alleging patent infringement, breach of contract, tortious interference, and conspiracy, among other claims.

Mr. Hwang invented the patented product while in Korea before joining Plastronics as its CTO. Later, Mr. Hwang agreed to share his worldwide patent rights—excluding Korea--with Plastronics in exchange for patent-prosecution fees and a royalty on Plastronics’ sales of the patented product. Plastronics claimed it spent millions commercializing the invention before Mr. Hwang resigned, returned to Korea, and began competing with Plastronics.

Plastronics asked the jury for about $26 million in actual damages, and three times that number in punitive damages, for a total of about $104 million in damages.

After deliberating less than two hours, the jury returned a verdict finding that HiCon and Mr. Hwang did not infringe the patent-in-suit, did not tortiously interfere with Plastronics’ business, and did not conspire to harm Plastronics. The jury also found that Plastronics failed to pay Mr. Hwang royalties and awarded him $1.36 million in damages.

Plastronics recovered only $622,000 — on a single claim, for alleged breach of a royalty agreement.

“We are gratified that the jury properly recognized that Mr. Hwang was always open and honest with Plastronics about his desire to return eventually to Korea to practice his own invention — and that the parties’ agreements afforded Mr. Hwang the right to do so,” Emerson said.

Emerson and Sivinski took the lead at trial. They were assisted by Haynes and Boone lawyers Debbie McComas, Tiffany Cooke, Jamie Raju and Charlie Jones, as well as Elizabeth DeRieux of Capshaw & DeRieux and Sam Lee and Jay Byun of the Korean firm Yulchon. This is the second recent successful trial outcome in east Texas for Emerson, Sivinski, McComas, and Jones, who won a defense verdict for Riverbed Technology in Tyler in 2017.

Haynes and Boone is an international corporate law firm with offices in Texas, New York, California, Charlotte, Chicago, Denver, Washington, D.C., London, Mexico City and Shanghai, providing a full spectrum of legal services in energy, technology, financial services and private equity. With more than 550 lawyers, Haynes and Boone is ranked among the largest U.S.-based firms by The National Law Journal, The American Lawyer and The Lawyer.

Haynes and Boone’s IP litigation team has a long and proven track record both in the United States and abroad of delivering favorable outcomes for clients, whether they’re large multinational corporations, emerging businesses or established mid-sized companies.

The following publications reported on the deal:

IPPro

Law360 (Subscription required)

The Texas Lawbook (Subscription required)

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