Round Rock Research, the patent licensing company founded by former Kirkland & Ellis partner John Desmarais, netted a confidential settlement last week with longtime target ASUSTeK Computer Inc. The settlement follows three years of litigation and what seems to have been a particularly contentious discovery process.
Round Rock and Asus disclosed the settlement to U.S. District Judge Jon Tigar in San Francisco on April 28. It resolves a 2011 declaratory judgment action in which Asus sought to invalidate 10 Round Rock patents, as well as a follow-up 2012 suit in which Asus sought to knock out another six Round Rock patents. Round Rock also brought infringement counterclaims in both suits, which concerned patents relating to computer hardware components.
Desmarais made a name for himself at Kirkland winning high-profile defense verdicts. In 2010, he left the firm to create Round Rock, which derives revenue by licensing a portfolio of about 4,000 former Micron Technology Inc. patents. Desmarais served as Round Rock’s CEO until late 2012, when Gerard DeBlasi took over that post. Desmarais is still Round Rock’s sole owner, and since 2010 he has also helmed a Manhattan-based law firm, Desmarais LLP, which typically represents Round Rock in its infringement cases.
Asus, a Taiwanese computer hardware company, put plenty of effort into the Round Rock cases. In 2013, its lawyers at Perkins Coie filed a motion to compel against Micron, alleging it may have been withholding third-party discovery relating to its former patents, like licensing agreements and inventor notebooks. A magistrate judge denied Asus’s motion on April 21 and sanctioned the company, writing that its requests from Micron were “unreasonably burdensome.”
Asus was also eager to depose Desmarais, writing in court filings that he was “obviously one of the most important witnesses” in the patent fight because he “makes Round Rock’s strategic decisions.” Desmarais sat a deposition back in December, but Round Rock and Asus were unable to agree on a date in April for a second deposition, so Asus filed a subpoena.
“Considering that the place of the noticed deposition is the office of his law firm, Desmarais LLP, it seems ludicrous that he cannot find one day in a three-week period to attend to this case,” Perkins Coie attorneys wrote in a court filing. “Apparently every single ‘unrelated’ litigation he is involved with takes precedence over this litigation, yet that is completely at odds with the millions of dollars that Mr. Desmarais’s Round Rock is demanding from Asus for a license to these patents.”
The parties reached a deal to end the litigation before resolving the deposition spat, which Desmarais told us was “a non-issue” that had no bearing on the settlement.
Asus was represented in the case by a Perkins Coie team that included partners James Pistorino and John Schnurer. Pistorino didn’t return a call seeking comment.