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Keker & Van Nest Wins Jury Verdict for SanDisk In Patent Dispute With Round Rock


A Delaware federal jury on Wednesday found that two patents held by patent holding company Round Rock Research LLC covering flash drives and memory cards were invalid, following an eight-day trial in a patent infringement case against SanDisk Corp.

After deliberating three hours, the jury found that SanDisk infringed on four of 10 claims for the two patents — covering the memory card maker’s SD, SDHC, SDXC, microSD, microSDHC, microSDXC, and iNAND products — but that the company proved that the patents were invalid because they described inventions that would’ve been obvious or anticipated in light of prior art.

SanDisk won the verdict but the case is far from over as several other patent infringement claims remain pending.

In May 2012, Round Rock alleged SanDisk infringed on 11 patents describing methods or processes related to storing and processing electronic data. The companies agreed to dismiss claims for one of the patents and litigate the other five separately.

Of the five patents at issue in this case, two were examined in this trial — 6,728,798 and 6,948,041 — as U.S. District Judge Sue L. Robinson set staggered schedules for discovery, summary judgment and trial. Two will be examined in a future trial while the fifth is stayed pending a Federal Circuit appeal.

Round Rock, founded by former Kirkland & Ellis LLP partner John Desmarais, has filed a slew of patent infringement actions in recent years against a variety of big-name companies, including Acer Inc., Amazon Inc., Dell Inc., HTC Corp., Lenovo Group Ltd., Macy's Inc., PepsiCo Inc. and Wal-Mart Stores Inc., and many others.

Round Rock vice president and general counsel K. McNeill Taylor Jr. told Law360 on Thursday they were not pleased with the jury's decision.

"We are disappointed with the verdict, which was not in line with the evidence presented at trial, and are pursuing our post-trial motions," Taylor said.

A representative for SanDisk did not immediately respond to requests for comment Thursday.

The patents-in-suit are U.S. Patent Numbers 5,615,159; 6,728,798; 6,948,041; 7,336,531; and 8,060,719.

Round Rock is represented by Joseph Farnan, Brian Farnan and Michael Farnan of Farnan LLP; John T. Hohenthaner, John C. Spaccarotella, Ameet A. Modi, Richard Cowell, Tamir Packin, Edward Terchunian, Andrew G. Heinz, Eric J. Stieglitz, Elizabeth Kimmel, Giorgos Stamatopoulos, Paul A. Bondor, Robert Harrits, Jeffrey Seddon and Lauren M. Nowierski of Desmarais LLP; and Bradford J. Black and Andrew G. Hamill of Black & Hamill LLP.

SanDisk is represented by Robert A. Van Nest, Leo L. Lam, Ajay S. Krishnan, Corey A. Johanningmeier, Ryan Wong and Erin E. Meyer of Keker & Van Nest LLP; Jack B. Blumenfeld, Rodger D. Smith II and Jeremy A. Tigan of Morris Nichols Arsht & Tunnell LLP; and Christopher V. Ryan, Efrén Garcia, Seth Linder and Ajeet Pai of Vinson & Elkins LLP.

The case is Round Rock Research LLC v. SanDisk Corp., case number 1:12-cv-00569, in the U.S. District Court for the District of Delaware.