U.S. News' Best Law Firms recognizes Chen Malin LLP as a Tier 1 Firm (Dallas/Fort Worth) in 3 separate practice areas, and Managing Intellectual Property recognizes the Firm as being in the same league as Alston & Bird; Morgan Lewis & Bockius; Thompson & Knight; and Winston & Strawn, and states that the Firm "has already made a name for itself, representing numerous multinational companies from the electronics, semiconductors, and telecommunications sectors."
We are a boutique law firm founded on the belief that effective advocacy is never formulaic; that complex issues may be explained simply; and that clients deserve clear answers whenever they seek counsel. We are not defensive when representing defendants; and we advance credible, rather than remarkable, claims when advising injured clients. Our litigators equal transactional lawyers in understanding a client’s business needs; and we know how deal terms impact downstream disputes when negotiating transactions.
Li Chen is Co-Founder and Managing Partner of Chen Malin LLP. Chambers USA has recognized Li as a leading intellectual property lawyer in Texas since 2009, and its 2013 edition notes “Li Chen is a widely respected lead litigator and trial lawyer with strategic vision.” Best Lawyers included Li in its 2012-2016 editions, and quotes clients as saying “Mr. Chen is one of the most effective and efficient counsel I have ever worked with” and that he has a “great understanding of business operation(s).” Others have observed that Li "coalesces ... technical knowledge ... legal acumen ... and negotiation skills to provide ... exceptional legal advice in a 'user-friendly' manner," and that he has a "great understanding of business operation[s]."
Other than Chambers and Best Lawyers, Li is also listed as a local litigation star (Texas) by Benchmark Litigation (2015-2016), as an “IP Star by Managing IP (2014-2016), and in The Legal 500 (2014). He is recognized by D Magazine in its edition of Best Lawyers in Dallas—Intellectual Property Law (2014), by Super Lawyers (Texas) from 2013 to present, as well as by Martindale-Hubbell (for complex commercial litigation, IP litigation, and technology transactions).
Li was the architect and co-lead trial counsel for Tellabs' successful breach of RAND claim against Fujitsu in the Northern District of Illinois. Although Fujitsu's patent was not required to implement the standard, Li and his team persuaded the jury that Fujitsu owed a RAND obligation, and that it willfully breached its RAND obligation (with the latter inquiry decided under a clear and convincing standard). Post-verdict the court ordered a show cause hearing to determine why Fujitsu's patent should not be declared unenforceable. The parties settled on confidential terms in advance of the hearing.
Our transactional lawyers understand the value that each transaction brings, and structure the transactions to protect that value while minimizing risks in a commercially sensible manner. These basic principles and our understanding of the driving forces behind each transaction (on both sides of the table) allow us to achieve results that often pleasantly surprise our clients. By way of example,
Our lawyers are currently assisting a company with multiple negotiations to update its IT system / settlement engine that is responsible for processing approximately $88 billion in annual transactions.
Our lawyers represented a metals industry client in negotiating a global enterprise resource planning (ERP) implementation project. When issues later arose with respect to the implementation project, the concessions that we secured in the contract prompted the ERP implementer to extend several 8-figure concessions without the need for litigation.
Our lawyers helped a major electronics company persuade a reluctant supplier to provide indemnify coverage in a pending litigation. This particular task was sensitive because the supplier was not under a contractual obligation to indemnify, and it was willing to risk its business relationship with our client to avoid the cost of indemnity. We achieved this result by helping the supplier recalibrate its perceived exposure / risk, so that the supplier’s interests were realigned with those of our client's.
Our lawyers helped a semiconductor company address patent licensing demands from Innovatio, which held a portfolio of patents that a U.S. federal district court judge have declared as essential and valuable to the implementation of key technology standards. Although Innovatio purported to rely on a decision rendered by (former) Chief Judge Holderman, our lawyers crafted several RAND-based arguments that explained why Innovatio's demands were inconsistent with its RAND obligations (and Judge Holderman's decision). This prompted the Innovatio licensing team to move-on without having received any payment from our client.
We were engaged this year to help an electronics company negotiate an early exit to a pending ITC investigation, without paying for a settlement. We formulated a strategy that required no payment from our client and would not disadvantage the company vis-à-vis its competitors, while at the same time generating interest from the complainant. The negotiations for this matter is ongoing.
RAND/FRAND Litigation / Patent Litigation (District Court): We are one of a handful of teams in the country that have successfully litigated a F/RAND case to verdict. In a 2014 trial on behalf of our client Tellabs (at a former firm), our lawyers persuaded a Northern District of Illinois jury that our opponent willfully breached its RAND obligation under a clear and convincing standard. Importantly, the court found that the patent holder owed a RAND obligation even though its patent was not required to implement the standard. Also, after the verdict the court ordered a show cause hearing to determine why the subject patent should not be declared unenforceable. The case settled in advance of the show-cause hearing.
Patent Litigation (District Court): By the time CSIRO sued our client Realtek Semiconductor, it had collected close to $500 million in royalties over 10 years of litigation, and the court had issued 4 claim construction orders. We focused our non-liability theory on the construction of a single claim term, and prevailed on our proposed construction over the plaintiff’s strenuous objection. Importantly, the claim term that we successfully disputed was addressed in the court's 4 previous claim construction orders--by stipulation between the plaintiff and the defendants from the electronics industry in the previous 10 years.
Patent Litigation (District Court): Based on a single sentence errata that other leading co-counsel firms decided against pursuing, our lawyers forced the opposing expert to admit that his expert report contained multiple untrue and false statements, that the lawyers working with him knew or should have known of these false statements, and that the false statements were submitted under oath. In view of these admissions the court struck the expert's report on one patent, and ordered a sanctions hearing to determine why the expert's reports covering other patents should not also be stricken, and why the responsible lawyer and law firm should not be forwarded to the disciplinary board. The case settled on confidential terms in advance of the sanctions hearing. Prior to this development the patent holder had extracted over a billion dollars in licensing royalties from others in the industry.
Patent Litigation (ITC): In Inv 949, we represented Realtek Semiconductor and ASUSTek Computer Inc. in responding to the allegations advanced by the complainant. Based on our investigations we concluded that the complainant, in its attempt to secure financing, may have jeopardized its standing to bring suit. This argument prompted the Commission to place Inv 949 into its pilot program—the first investigation to ever receive that distinction. Although the ALJ and Commission ultimately concluded that the complainant did have standing to sue, the patent holder was forced to withdraw 2 of the 5 asserted patents during that process, and a third patent during claim construction. Both Realtek and ASUS later settled the dispute on favorable terms.
Patent Litigation (ITC): In Inv 749 our lawyers applied the 'rule of reason' to cross examine the opposing expert at trial. The admissions that we secured led the ALJ to find our client did not infringe the asserted patent and did not violate Section 337. In particular, citing the opposing expert's admissions, the ALJ concluded the contrary position urged by our opponent would have led to "absurd results."
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