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August 2019: Successful Settlement Achieved for ASM International

August 2019

The firm represented ASM International and affiliates against Kokusai Electric (previously Hitachi Kokusai Electric) and affiliates in patent infringement actions in the U.S. and Japan, as well as multiple IPR proceedings, recently obtaining a valuable settlement in an international series of disputes.  These cases were brought after a ten year licensing history where Kokusai Electric received licenses from ASM to ASM’s significant batch atomic layer deposition (“ALD”) technology.  After Kokusai Electric refused to take another follow-on license to ASM’s ALD technology, the parties initiated three separate patent infringement actions against each other in the United States:  ASM IP Holding v. Hitachi Kokusai Electric, et al., No. 3:17- cv-06879 (N.D. Cal.), filed December 1, 2017; Hitachi Kokusai Electric v. ASM International, et al., No. 3:17- cv-06880 (N.D. Cal.), filed December 1, 2017; Hitachi Kokusai Electric, et al. v. ASM International, et al., No. 3:18-cv-00323 (D. Or.), filed February 20, 2018.  Across the three cases, ASM and Kokusai Electric each asserted eleven patents.  In conjunction with the District Court litigations, ASM sought inter partes review of all eleven asserted Kokusai Electric patents, and Kokusai Electric sought inter partes review of three ASM asserted patents.  In addition to the U.S. ligations, in 2018, ASM filed lawsuits in Japan against Kokusai Electric seeking injunctions for patent infringement of two separate patents, and, in 2019, Kokusai Electric filed its own lawsuits in Japan against ASM seeking injunctions for patent infringement of seven separate patents. 

Under the terms of the settlement and license, our client, ASM, will receive $115 million in exchange for a portfolio-wide cross licenses through July 1, 2021, and an ongoing license for any litigated patents.  This settlement is unrelated to a previous arbitration proceeding that ASM initiated in August 2017 with the American Arbitration Association against Kokusai Electric for breach of a license agreement that expired in November 2017.  A final award in the arbitration is due by September 25, 2019, following a five-day hearing that was concluded in March 2019.