Kilopass v. Sidense Update!

It looks like Sidense finally has closure on their request for attorney fees. Generally, in the U.S., parties in a lawsuit pay for their respective attorney fees which can be staggering. However, U.S. law allows the courts to shift the payment of the winner’s attorney fees to the losing party for “exceptional” reasons. Based on recent legislation “exceptional” now has a much less stringent definition as reflected in recent case law and our own Kilopass v. Sidense is one of those cases.

Also Read: Sidense Beats Kilopass in Court Again!

“Judge Illston’s discretionary order seems unlikely to be overturned,” said Roger Cook of Kilpatrick Townsend & Stockton, who represents Sidense. “Essentially, all her facts are taken verbatim from facts stated in the Federal Circuit opinion and from her order granting summary judgment of noninfringement, which was summarily affirmed.”

Two years ago a judge denied the Sidense request for attorney fees which has just been reversed. You can read the 25 page decision HERE. It is an entertaining read and illustrates what NOT to do when filing a patent infringement claim. Here is one of the more interesting parts:

Despite that advice from its Perkins patent counsel that Sidense did ‘NOT infringe [the] claims literally,’ and that Kilopass’s case was ‘much tougher,’ Kilopass retained the law firm of Morrison Foerster (“MoFo”) to conduct another analysis.

MoFo then immediately began its more detailed investigation in order to meet Kilopass’s deadline. However, eight days later, on March 27, 2008, Kilopass instructed MoFo to stop all work on the project. MoFo subsequently sent Kilopass an invoice for 44 hours of work at a cost of $20,125 “relating to Kilopass’s investigation of potential infringement claims against Sidense.” The invoice was accompanied by a preliminary infringement chart for the ’751 patent reflecting [MoFo’s] analysis.

Also Read:ATopTech’s Legal Woes Continue!

Although MoFo’s preliminary infringement chart opined favorably to Kilopass regarding the doctrine of equivalents, there is no evidence in the record that MoFo’s analys is was complete at that time, nor is there any evidence that Kilopass considered MoFo’s preliminary infringement chart in deciding to bring suit against Sidense.

Moreover, there is no evidence inthe record showing that Kilopass informed MoFo about the Perkins counsel’s prior analysis or Mr. Peng’s prior statements about the size differences between Sidense’s memory cells and Kilopass’s memory cells. Kilopass retained MoFo to conduct an infringement analysis but terminated that relationship only eight days later. It does not appear that Kilopass was aware of how much work MoFo had done up to that point or that MoFo was even in the process of completing an infringement chart. In other words, it appears that Kilopass officials had already set their mind prior to learning of MoFo’s infringement analysis.

Sidense is looking to recover more than $5M in legal fees. Yes, that is how much it costs to defend against a patent infringement claim, frivolous or not. And remember, during discovery all of your private emails, meeting notes, and social media activities are fair game so always be very careful about what you put in writing, absolutely.

About Sidense Corp.
Sidense Corp. provides very dense, highly reliable and secure non-volatile one-time programmable (OTP) Logic Non-Volatile Memory (LNVM) IP for use in standard-logic CMOS processes. The Company, with over 120 patents granted or pending, licenses OTP memory IP based on its innovative one-transistor 1T-Fuse™ bit cell, which does not require extra masks or process steps to manufacture. Sidense 1T-OTP macros provide a better field-programmable, reliable and cost-effective solution than flash, mask ROM, eFuse and other embedded and off-chip NVM technologies for many code storage, encryption key, analog trimming and device configuration uses.For more information, please visit www.sidense.com.