McDermott Wins Big in Trade Secret Jury Trial for Diablo Technologies


SILICON VALLEY (March 25, 2015) — International law firm McDermott Will & Emery LLP today won a complete jury trial victory in the U.S. District Court for the Northern District of California for its client Diablo Technologies in its high-stakes battle with former development partner, Netlist, Inc.

Netlist, a manufacturer of memory modules, accused Diablo, a manufacturer of semiconductor chips, of eight counts of trade secret misappropriation, breach of contract, incorrect inventorship of Diablo’s patent, and counts of trademark infringement and false advertising under the Lanham Act.

The case, Netlist Inc. v. Diablo Technologies Inc., proceeded to trial on March 9, 2015. Following a two-week trial, the jury found that Diablo did not breach any contract and did not misappropriate any trade secrets. The jury also found that Netlist’s Chief Technology Officer was not an inventor on Diablo’s patent. And, rather than awarding Netlist the $6.5 million in damages that it had sought, the jury awarded nominal damages of $2 on the Lanham Act claims.

The McDermott team was led by partners Russell Hayman and Fabio Marino.

“We applaud the jury for its careful consideration of the legal and technical questions involved in this important lawsuit,” said Mr. Hayman. “The jury ruled on the evidence and came to the only conclusion it could have – there simply was no evidence that our client misappropriated any trade secrets or that Netlist’s CTO contributed to the inventions in the patent.”

“This case represents a classic come from behind victory,” added Mr. Marino. “The McDermott trial team secured this victory in the face of accelerated discovery, a looming injunction, and without the benefit of depositions for all expert witnesses. The jury saw that the plaintiff was trying to take credit for our client’s hard work. We are very pleased that Diablo can now put this litigation behind it and get back to business.”

The cross-practice McDermott trial team also included White Collar partner Jon Dean, IP Litigation partner Kieran Kieckhefer, IP Litigation associates Natalie Bennett, Nitin Gambhir, Barrington Dyer, Teri H.P. Nguyen as well as Trial partner Marisa Chun, and White Collar associate Tala Toufanian.

An interlocutory appeal was simultaneously proceeding on the issuance of the preliminary injunction. The appellate efforts were led by Trial partners Michael Nadel and Miller Baker as well as Mr. Marino and Ms. Bennett.

Today’s jury decision comes just days after McDermott prevailed at the Federal Circuit for its client Funai Electric Co. Ltd. In that case, the Court found affirmed an ITC determination that importation of Funai’s Internet-connected home entertainment products did not violate Section 337 of the Tariff Act.

McDermott’s highly regarded Intellectual Property practice, one of the busiest in the industry, has delivered excellence to our clients for over 45 years. With more than 165 lawyers and patent agents around the world, the Firm’s Intellectual Property practice has broad trial, appellate, prosecution and transaction experience and is consistently ranked among the top firms by Chambers USA, Intellectual Asset Management, U.S. News/Best Lawyers. More than 125 members of McDermott’s Intellectual Property team hold technical and/or scientific degrees and more than 105 are registered to practice before the U.S. Patent and Trademark Office (USPTO). McDermott’s Intellectual Property practice includes numerous lawyers with valuable industry experience as well as former USPTO examiners and petition specialists.

About McDermott Will & Emery
McDermott Will & Emery is a premier international law firm with a diversified business practice. Numbering more than 1,000 lawyers, we have offices in Boston, Brussels, Chicago, Dallas, Düsseldorf, Frankfurt, Houston, London, Los Angeles, Miami, Milan, Munich, New York, Orange County, Paris, Rome, Seoul, Silicon Valley and Washington, D.C. Further extending our reach to Asia, we have a strategic alliance with MWE China Law Offices in Shanghai.

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