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Goodwin Procter Litigation Team Secures Win for Client Quanta Computer in Patent Dispute

09.11.12

Goodwin intellectual property litigators recently won a victory for client Quanta Computer following a six-year dispute with LaserDynamics over a patent relating to optical disc drives used in notebook computers.

Based in Taiwan, Quanta is the world’s largest notebook computer manufacturer. The Japan-based LaserDynamics argued Quanta Computer had infringed on its patent related to a feature of optical disc drives. But the U.S. Court of Appeals for the Federal Circuit reversed the district court and held that Quanta Computer had an implied license for optical disc drives that were manufactured by a related company, Quanta Storage.  Quanta Storage manufactured the optical drives for two of the major suppliers in the optical disc industry.  Both of the major suppliers had licenses to LaserDynamics’ patent and each license included the right to have optical drives manufactured by third parties like Quanta Storage.

Quanta Computer had argued early in the case that it had an implied license for the vast majority of the optical drives it uses in its notebook computers.  After its implied license theory was rejected by the district court, Quanta appealed to the Federal Circuit.  As a result of the Federal Circuit’s decision, only a few thousand sales – out of the hundreds of millions of notebook computers Quanta sold with optical disc drives – could be considered infringing.

The Federal Circuit also rejected LaserDynamics’ damages theory on those few remaining sales. The court faulted LaserDynamics’ reliance on licenses for unrelated technology and excluded other evidence on which the jury’s damages opinion was based. In addition, the Federal Circuit severely limited LaserDynamics’ damage claim on remand after affirming that a patentee’s prior licenses were the strongest evidence of the appropriate royalty.

The Goodwin team that represented Quanta includedTerry Garnett, who argued the case before the Federal Circuit, Vincent YipPeter Wied and Jay Chiu.