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Susman Godfrey and Heim Payne & Chorush Win Bench Trial and Soundly Defeat TSMC in Inequitable Conduct Counterclaim

SAN FRANCISCO, Apr. 16 /PRNewswire/ --

SAN FRANCISCO, April 16 /PRNewswire/ -- On April 14, 2008, Chief Judge Vaughn Walker of the United States District Court for the Northern District of California issued findings of fact and conclusions of law stemming from a bench trial in January 2008 over Taiwan Semiconductor Manufacturing Corporation's (TSMC) counterclaim alleging that UniRAM Technology, Inc. had engaged in inequitable conduct in the prosecution of U.S. Patent 6,108,229. In the bench trial, TSMC had sought to have the '229 patent declared invalid and have the Court award it its attorney's fees related to its earlier defense of UniRAM's patent infringement case. The Court, however, rejected TSMC's inequitable conduct allegations, describing TSMC's evidence as "barren." In so holding, the Court noted that the evidence indicated that TSMC's pursuit of this counterclaim was "highly questionable" and was "pretextual and not in good faith." The Court further stated that "circumstantial evidence suggests that TSMC brought this counterclaim not because it believed that [UniRAM] lied to the patent office but because it wanted to intimidate UniRAM."

TSMC's now-dismissed inequitable conduct allegations were asserted as a counterclaim to UniRAM's trade secret misappropriation case against TSMC. On September 25, 2007, a jury returned a verdict in which it concluded that TSMC had misappropriated trade secrets relating to "embedded DRAM" technology from UniRAM, TSMC's former customer. The jury awarded UniRAM $30.5 million. The Court has not yet entered judgment on that verdict, nor has TSMC filed post-trial motions or appeals.

Representing UniRAM in the inequitable conduct bench trial were Max Tribble, Joseph Grinstein, and Jay Neukom with Susman Godfrey L.L.P., and Mike Heim and Russ Chorush with Heim, Payne & Chorush, LLP.

CONTACT: Susman Godfrey L.L.P. Max L. Tribble, Jr. (713) 653-7820 mtribble@susmangodfrey.com http://www.susmangodfrey.com

About Susman Godfrey L.L.P.

Susman Godfrey L.L.P., a law firm with more than 80 lawyers, was recently named one of the top litigation boutiques in the country by The American Lawyer. The firm represents plaintiffs and defendants in a broad range of commercial litigation matters, including antitrust, patent and intellectual property, securities and corporate governance litigation, energy, commercial and products liability, bankruptcy and financial restructuring, accounting malpractice, arbitration, climate change, and international litigation. The firm has offices in Houston, Dallas, Los Angeles, Seattle, and New York. For additional information, visit http://www.susmangodfrey.com.