When Litigation Goes Global: Merchant & Gould Wins Patent Infringement Victory over International Defendant

Rudolph Technologies, Inc. is a leader in the design, development, manufacture and support of high-performance process control metrology and macro defect inspection equipment used by semiconductor device manufacturers around the world. The company's product portfolio for wafer processing customers includes automated defect inspection systems that can identify and analyze defects on all microchips fabricated on silicon wafers.

Case Summary

In July 2005, August Technology Corporation (later acquired by and now known as Rudolph Technologies or Rudolph) filed a patent infringement lawsuit against Israeli based Camtek Ltd. Rudolph alleged infringement of its patent on a system and process for wafer defect inspection.

Strategy

Rudolph and Merchant & Gould both carefully considered whether to pursue litigation over other means of resolution. There were efforts to discuss and resolve the dispute with Camtek. However, the ongoing infringement of the client’s core patent justified and necessitated the need to sue.

With the defendant located in the Middle East, Merchant & Gould had to reconcile the differences between legal cultures and expectations. Court documents were translated between Hebrew and English, and translators were used in many of the depositions. Potential witnesses were located around the world, including in Hong Kong, Brussels and Tel Aviv, and stateside in Minnesota, Arizona and California. These challenges were compounded due to the highly technical nature of the case (a fusion of high speed optics and robotics).

Solution

Merchant & Gould was able to do what most firms cannot: assemble a team of attorneys experienced in trials, patents, and the highly specialized technology involved in the case to develop powerful infringement arguments and fend off Camtek’s validity attacks. For example, Merchant & Gould did not leave the technical analysis to an outside expert, with its own attorneys also inspecting the infringing systems.

The firm also met extensively with the named inventors to both understand the technology and tell the story of the company. The jury heard, for example, that only a few years before going public in a multi-million dollar IPO, August was founded in the kitchen of co-inventor Jeff O’Dell. Merchant & Gould also retained the use of a highly respected damages expert who specializes in IP litigation to determine the extent of the infringement and potential reparations. And it deliberately maintained a brisk pace for introducing testimony and cross-examining witnesses, helping to maintain the jury’s interest in and understanding of the complex technology at issue.

In March 2009, a jury in the U.S. District Court for the District of Minnesota found that Camtek’s Falcon inspection systems infringed upon Rudolph’s patent. Rudolph was awarded nearly $6.8 million in damages. The jury also rejected Camtek's arguments that Rudolph’s patent is invalid. Rudolph’s requests for an injunction and other post-trial relief are pending.

Merchant & Gould Team

Daniel W. McDonald

Joseph E. Lee

Rachel C. Hughey

Heather J. Kleibenstien

Kristin M. Drieman