Ryan K. Yagura

Yagura, chair of O’Melveny’s intellectual property and technology practice, served as the overall manager and lead coordinating partner in charge of client Samsung Electronics Co. Ltd.’s defense against an onslaught of patent cases.

The claims, filed by Samsung licensee Tessera Technologies Inc., included a complaint at the U.S. International Trade Commission and six related district court cases accusing Samsung of infringing patents relating to semiconductor wafer-level packaging.

“Samsung kept me busy from the fall of 2017 to December 2018,” he said. “We had teams working on these cases out of our offices in San Francisco, New York, D.C. and L.A., and a parallel international arbitration staffed out of London.” In re: Wafer-Level Packaging Semiconductor Devices and Products Containing Same (including Cellular Phones, Tablets, Laptops, and Notebooks) and Components Thereof, 337-TA-1080 (USITC, filed Sept. 28, 2017).

“I was getting input via a lot of conference calls,” Yagura said. “It was like I was in the control tower.”

Complainant Tessera Technologies, a subsidiary of Xperi Corp., sought an ITC exclusion order that could have banned Samsung from importing any of its smartphones, tablets, laptops, smart watches, computers and accessories into the U.S.

Yagura developed strategies to coordinate Samsung’s defense across all the cases, which included matters in the Eastern District of Texas, the District of Delaware and the District of New Jersey. He traveled to South Korea to defend depositions at Samsung headquarters and to conduct the defense at a Markman hearing in Marshall, Texas.

The case was heading fast toward trial when Yagura and his teams brought it to a halt, relying on the terms of a 10-year-old license agreement with a third party, Matsushita Electronics Industry Co. Ltd. Yagura argued successfully to an ITC administrative law judge that the asserted technology fell within the scope of the license and that under its terms the dispute must be resolved by arbitration.

That speed bump disfavored the complainant.

“We knew that Xperi makes its money off licensing revenues, and that meant there was a lot of pressure on them to get the case resolved quickly,” Yagura said.

Adding to the ITC win, his team managed to transfer many of the district court cases to the District of Delaware, arguing that the disputes implicated an agreement with a forum selection clause. In December, the parties reached a confidential settlement that Yagura described as favorable to his client.

“The people running the teams do the real heavy lifting,” Yagura said. “It was a lot of fun to go against Latham [& Watkins LLP as opposing counsel], a truly worthy adversary.”

— John Roemer