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  • Case Opinion

Acorn Semi, LLC v. Samsung Elecs. Co.

Acorn Semi, LLC v. Samsung Elecs. Co.

United States District Court for the Eastern District of Texas, Marshall Division

February 17, 2022, Decided; February 17, 2022, Filed

CIVIL ACTION NO. 2:19-CV-00347-JRG

Opinion

MEMORANDUM OPINION AND ORDER

Before the Court is Plaintiff Acorn Semi LLC's ("Acorn") Motion for Exceptional Case Finding and Award of Attorney Fees (the "Motion") (Dkt. No. 383). Having considered the Motion and the subsequent briefing, and for the reasons set forth herein, the Motion is DENIED.

I. BACKGROUND

On October 23, 2019, Acorn filed the above-captioned case against Defendants Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung Semiconductor, [*2]  Inc., and Samsung Austin Semiconductor, LLC's (collectively, "Samsung"). (Dkt. No. 1). Acorn alleged Samsung infringed six United States patents: U.S. Patent No. 7,084,423 (the "ʼ423 Patent"), U.S. Patent No. 8,766,336 (the "ʼ336 Patent"), U.S. Patent No. 9,209,261 (the "ʼ261 Patent"), U.S. Patent No. 9,461,167 (the "ʼ167 Patent"), U.S. Patent No. 9,905,691 (the "ʼ691 Patent"), and U.S. Patent No. 10,090,395 (the "ʼ395 Patent"). (Id. ¶¶ 9-14, 58-117). As is typical in hard-fought high-stakes civil litigation, the Court resolved numerous discovery and pre-trial disputes between the parties. (E.g., Dkt. Nos. 134, 228, 230, 320). The Court found it necessary to issue targeted sanctions and stern directives on certain occasions in an effort to encourage the parties to shift their discovery tactics and work more cooperatively. (E.g., Dkt. Nos. 53, 278, 338). If this were a simple case of limited reach, such might be out of the ordinary. It is not out of the ordinary in a complex case of substantial impact, such as the present matter. On May 13, 2021, the Court commenced a jury trial in this case, and on May 19, 2021 the jury returned a verdict finding Samsung infringed all asserted claims of the narrowed but remaining asserted patents (Claim 13 of the ʼ336 Patent, Claims 1 and 6 of the ʼ167 Patent, Claims 6, 8, and 19 of the ʼ691 Patent, and Claims 17 and 20 of the ʼ395 Patent). (Dkt. No. 367 at 4). The jury awarded Acorn $25 million in the form of a lump sum royalty for Samsung's [*3]  infringement. (Id. at 6-7).

II. LEGAL STANDARD

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2022 U.S. Dist. LEXIS 28903 *

ACORN SEMI, LLC, Plaintiff, v. SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG SEMICONDUCTOR, INC., SAMSUNG AUSTIN SEMICONDUCTOR, LLC, Defendants.

Prior History: Acorn Semi, LLC v. Samsung Elecs. Co., Ltd., 2020 U.S. Dist. LEXIS 256935 (E.D. Tex., Sept. 14, 2020)

CORE TERMS

argues, discovery, e-mail, documents, settlement agreement, license, motion to compel, parties, designated, deadline, infringement, depositions, Patent, Non-E-Mail, briefing, responds