NOTE: This disposition is nonprecedential. 

United States Court of Appeals for the Federal Circuit 

2006-1411 

O2 MICRO INTERNATIONAL LIMITED, 

 

Plaintiff-Appellee, 

v. 

TAIWAN SUMIDA ELECTRONICS, INC., 

Defendant-Appellant. 

Henry C. Bunsow, Howrey LLP, of San Francisco, California, argued for plaintiffappellee. On the brief were Duane H. Mathiowetz, Rick C. Chang; and Patricia L. Peden, 

Law Office of Patricia L. Peden, of Oakland, California; and Richard L. Stanley, Howrey 

LLP, of Houston, Texas. Of counsel was Korula T. Cherian, Howrey LLP, of San 

Francisco, California; and Helen E. Dutton, Farella Braun & Martel LLP, of San Francisco, 

California. 

Nathan Lane, III, Squire, Sanders & Dempsey, LLP, of San Francisco, California, 

argued for defendant-appellant. With him on the brief were Joseph A. Meckes and Daniel 

B. Pollack. Of counsel on the brief was Phillip J. McCabe, Kenyon & Kenyon, of San Jose, 

California. Of counsel was Eric M. Albritton, Albritton Law Firm, of Longview, Texas. 

Appealed from: United States District Court for the Eastern District of Texas 

Judge T. John Ward 
NOTE: This disposition is nonprecedential. 

United States Court of Appeals for the Federal Circuit

 

2006-1411 

O2 MICRO INTERNATIONAL LIMITED, 

Plaintiff-Appellee, 

v. 

TAIWAN SUMIDA ELECTRONICS, INC., 

Defendant-Appellant 

Appeal from the United States District Court for the Eastern District of Texas in Case 

No. 2:03-CV-00007, Judge T. John Ward. 

___________________________ 

DECIDED: March 5, 2009 

___________________________ 

Before RADER, PLAGER, and GAJARSA, Circuit Judges.

RADER, Circuit Judge. 

 In the instant case, a jury in the United States District Court for the Eastern 

District of Texas returned a verdict finding that Taiwan Sumida Electronics, Inc. 

(“Taiwan Sumida”) contributed to or induced the infringement of claims 1, 2, 9, 12 and 

18 of O2 Micro International, Ltd.’s (“O2 Micro’s”) U.S. Patent No. 6,396,722 (“’722 

patent”), that the infringement was willful, and that those claims had not been proven 

invalid. The instant case is a companion case to Monolithic Power Systems, Inc. v. O2 

Micro International, Ltd., No. 2008-1128, -1136 (the “MPS case”), decided by this court 

today. In the MPS case, this court holds that the same claims of O2 Micro’s ’722 patent 

are invalid as obvious under 35 U.S.C. § 103. 
2006-1411 2

This court held in Mendenhall v. Barber-Greene Co., 26 F.3d 1573, 1577 (Fed. 

Cir. 1994) that “once the claims of a patent are held invalid in a suit involving one 

alleged infringer, an unrelated party who is sued for infringement of those claims may 

reap the benefit of the invalidity decision under principles of collateral estoppel.” (citing 

Blonder-Tongue Labs., Inc. v. University of Ill. Found., 402 U.S. 313, 350 (1971)). O2 

Micro, in a letter to this court, has conceded that the judgment in the instant case cannot 

be upheld, as per Mendenhall, if this court affirms the invalidity judgment in the MPS 

case. Because today’s judgment of invalidity of the asserted claims of the ’722 patent in 

the MPS case collaterally estops O2 Micro from pursuing infringement claims against 

Taiwan Sumida based on the same claims of the ’722 patent, this court vacates the 

judgment of the District Court for the Eastern District of Texas. 

VACATED

NO COSTS