Thank you for sharing!

Your article was successfully shared with the contacts you provided.
Four years ago William Anthony Jr. got a phone call that proved to be auspicious. A local lawyer had to pass on a case for a Taiwanese client and instead suggested that the client call Anthony, the head of Orrick, Herrington & Sutcliffe’s intellectual property group. At the time, Anthony did not know much about Taiwanese companies, but he was interested in expanding Orrick’s IP presence in Asia. After meeting with the general counsel of Taipei-based Compal Electronics Inc., the world’s largest manufacturer of laptops, Anthony agreed to defend the company against a patent infringement suit brought by Samsung Corp. The case helped pave the way for Orrick’s entry into what has become one of the world’s hottest markets for intellectual property work. Taipei and Hsinchu, a high-tech corridor near the Taiwan capital, are home to dozens of technology companies, chiefly in the semiconductor field. As the industry has expanded, Taiwanese companies have become the target of a growing number of patent suits by Japanese, Korean and U.S. companies, the bulk of which are filed in American courts. Taiwan is “the new Japan,” says Kai Tseng, an intellectual property partner in Orrick’s Silicon Valley office. “It’s how Japan was 15 to 20 years ago with the high-tech boom there.” Since the Compal case came along, Orrick has moved aggressively to build a client base in Taiwan. The firm now has at least a dozen Taiwanese companies on its client roster and plans to open an office in Taipei to deal exclusively with intellectual property work. “We’re in the final stages of putting the plan to the executive committee and the partnership for approval,” Anthony said. If and when the office opens, Tseng plans to split his time between Taiwan and California. Anthony and another Orrick partner, Eric Wesenberg, who is in charge of the firm’s expansion in Asia, would also spend time in Taiwan, along with associates Rowena Young and Duo Chen, both of whom are fluent in Mandarin. Orrick would join a handful of U.S. firms that have developed a niche IP practice in the region. Washington, D.C.’s Finnegan, Henderson, Farabow, Garrett & Dunner opened a Taipei office last year, while Shaw Pittman, another Washington-based firm, established an outpost there earlier this year. Other U.S. firms with Taipei offices handle broader legal matters in addition to patent litigation. Baker & McKenzie, for example, opened a full-service branch in 1977 as did Jones Day in 1990. Seattle’s Preston Gates & Ellis launched a three-lawyer office in Taipei last year. But the firm sends patent litigation work to lawyers in its U.S. offices. Squire, Sanders & Dempsey, a Cleveland-based firm whose Taipei office recently closed and turned instead into an affiliate of a Taiwanese firm, is also a contender for IP work in the region, as is Fish & Richardson, which has seven Taiwanese lawyers, all of them based in the United States. While other San Francisco Bay Area firms, including Heller Ehrman White & McAuliffe and Morrison & Foerster, have established outposts in mainland China, Orrick is standing apart by planting its roots in Taiwan. Anthony says the current technology-related centers of gravity are in Silicon Valley, Taiwan and the Shanghai area of mainland China, which he also refers to as the “golden triangle.” “To be an IP tech group,” he says, “you have to pay attention to that triangle.” Tseng grew up in Hsinchu and has maintained ties to the region. As an Orrick associate, Tseng took charge of the initial Compal case and, through the company’s general counsel, began meeting other potential clients. Acer Inc., a leading manufacturer of notebook and desktop computers, also became a client and helped Tseng make further contacts in Taiwan. Other firms have enjoyed their own longstanding relationships with Taiwanese companies. Fish & Richardson has had a number of Taiwanese clients for the past 13 years. Three years ago, the firm launched its U.S.-based Taiwan practice group, which currently is handling eight patent suits. Finnegan, which has represented Taiwanese clients for nearly 20 years, represents about 20 to 30 companies in Taipei, including semiconductor chip manufacturer Winbond Electronics Corp. and D-Link Systems Inc. E. Robert Yoches, a Finnegan partner, says that while Japan and Korea have six or seven dominant corporations to which a firm can market, Taiwan has many small businesses that are growing quickly. “There’s a lot more opportunity with a lot more companies,” says Yoches. Shaw Pittman, which has worked with Taiwanese clients for the past decade, decided to boost its presence in the region by opening two offices simultaneously: one in Taipei and another in California’s Silicon Valley. “To be effective in Taiwan and China, we needed reinforcement through a West Coast operation,” says Shaw Pittman partner Lawrence Gotts. In part, that’s due to the fact that so many infringement suits against Taiwanese companies are filed in U.S. courts. Lawyers say plaintiffs and defendants alike prefer American courts since patent law is well developed here and the rules governing disputes are straightforward. Orrick, for example, is currently representing Taiwan’s Nanya Technology Corp., which manufactures computer chips, in a suit brought by Japan’s Renesas Technology Corp. before U.S. District Judge Jeremy Fogel in San Jose. The firm is also defending Compal against a suit by South Korea’s LG Electronics Inc. before U.S. District Judge Claudia Wilken in Oakland. In that same case, which was scheduled to go to trial in September, Squire, Sanders is representing two Taiwanese co-defendants — Asustek Computer Inc. and First International Computer Inc. John Alison, a Finnegan partner who moved from the firm’s Washington, D.C., office to head up the Taipei branch, says the number of suits filed against Taiwanese companies has accelerated in recent years. “Every year you see a further intensification,” says Alison. Orrick’s Anthony calls it the “domino effect” of IP litigation. U.S. companies initially sued Japanese entities, he says, which provided the foreign companies with exposure to the United States’ IP-related legal system. “Japanese companies took a lesson from the Texas Instruments and Intels of the world and went after the Koreans,” who are now going after the Taiwanese, says Anthony. Other IP lawyers attribute the boom in litigation to the success of Taiwanese companies in the electronics field. While they are more often defending lawsuits rather than bringing them, Taiwanese businesses have become savvy about developing and protecting their patent portfolios, lawyers say. They are learning how patents operate “and the measures one takes to avoid” being sued, says Michael Bettinger, a partner in Preston Gates’ San Francisco office. “The curve is on the way up, but it’s about to peak.” Taiwanese companies are also moving to protect their patents. Chi Mei Optoelectronics Corp., a Fish & Richardson client, has sued Paris-based Commissariat L’ Atomique in federal court in Oakland. And Wistron NeWeb Corp., an Orrick client, has a complaint pending in Los Angeles against ProBrand International Inc., an American company, and Taiwan’s Jonsa Technologies Co. Ltd. Two Orrick partners, meanwhile, are spending some of their time meeting prospective clients in Korea. But Taiwan, at least for the moment, remains a key part of the firm’s Asian-related IP practice strategy. “It’s particularly important for us,” says Anthony, “because it’s a launching pad into China.” Brenda Sandburg is a senior writer at The Recorder, where she covers developments in patent law and other intellectual property matters.

This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.

To view this content, please continue to their sites.

Not a Lexis Advance® Subscriber?
Subscribe Now

Not a Bloomberg Law Subscriber?
Subscribe Now

Why am I seeing this?

LexisNexis® and Bloomberg Law are third party online distributors of the broad collection of current and archived versions of ALM's legal news publications. LexisNexis® and Bloomberg Law customers are able to access and use ALM's content, including content from the National Law Journal, The American Lawyer, Legaltech News, The New York Law Journal, and Corporate Counsel, as well as other sources of legal information.

For questions call 1-877-256-2472 or contact us at [email protected]

Reprints & Licensing
Mentioned in a Law.com story?

License our industry-leading legal content to extend your thought leadership and build your brand.


ALM Legal Publication Newsletters

Sign Up Today and Never Miss Another Story.

As part of your digital membership, you can sign up for an unlimited number of a wide range of complimentary newsletters. Visit your My Account page to make your selections. Get the timely legal news and critical analysis you cannot afford to miss. Tailored just for you. In your inbox. Every day.

Copyright © 2021 ALM Media Properties, LLC. All Rights Reserved.