By Jennifer LeClaire / Data Storage Today. Updated October 26, 2007.
SanDisk Corporation, one of the largest suppliers of flash data storage card products, filed three patent-infringement actions against 25 companies on Wednesday.
All 25 companies manufacture, sell, and import USB flash drives, cards, media players, or other removable flash-storage products. Most of the defendants are little-known Asian companies, but some are recognizable brands, including LG, Kingston, and Silicon Motion.
SanDisk filed the suits in the in U.S. District Court in the Western District of Wisconsin and at the U.S. International Trade Commission (ITC), alleging that the defendants have infringed various SanDisk system-level patents.
SanDisk is seeking damages and a permanent injunction in the federal court actions, as well as a permanent exclusion order from the ITC banning importation of the products into the United States.
One Fell Swoop
According to E. Earle Thompson, chief intellectual property counsel at SanDisk, this week's legal maneuvers demonstrate the company's long-term commitment to enforcing its patents, both to protect its investment in research and development and out of fairness to third parties that participate in its patent-licensing program.
"Our goal is to resolve these matters by offering the defendants the opportunity to participate in our patent-licensing program for card and system technology," Thompson explained. "Otherwise, we will aggressively pursue these actions, seeking a prompt judicial resolution awarding damages, obtaining injunctive relief, and banning importation of infringing product."
Although suits targeting multiple defendants for patent infringement are not rare, these types of cases typically require a massive force of management and company resources to execute, according to Ilan Barzilay, a member of Wolf, Greenfield & Sacks' Litigation Practice Group. It's a strategy that could see 25 defendants rise up and fight back.
"SanDisk is sending a message to the industry with these suits," Barzilay explained. "SanDisk is telling the individual defendants that they are going to take them all to the mat at once and not going to let anyone out."
Patent War Games
SanDisk's strategy is sound, legal experts said. The company chose to file suit in two strategic locations: the Western District of Wisconsin and at the ITC. The Western District of Wisconsin is developing a reputation as being one of the "rocket dockets" where cases move through the process speedily. That's an asset for plaintiffs that want to get a case resolved quickly. The Eastern District of Texas had that reputation some time, but according to Barzilay the system has become overloaded and the process is moving more slowly.
The ITC, meanwhile, has rules that require you to get to trial in a year. The ITC does not award monetary damages, but does issue an injunction that prevents infringers from entering the country. Customs stops the shipments at the border. That, Barzilay said, is a boon for plaintiffs seeking to keep foreign competitors out of the local market before they ever get in.
"Some of the individual defendants, more likely than not, will decide they don't necessarily want to fight this all the way. They may start settling for monetary damages or license SanDisk's technology," Barzilay concluded. "The larger competitors, however, could decide this is too big a part of their business and fight."