Lawyers at Haynes and Boone overcame major hurdles in an East Texas courtroom last week when they defended a Korean-speaking client accused by a prominent North Texas business of patent infringement and tortious interference.
South Korean inventor Dong Weon Hwang and his company, HiCon Co., spent the second week in July in front of a jury in Marshall fighting allegations by an Irving-based semiconductor components company of breaching contracts, stealing clients and violating intellectual property rights.
Plastronics Socket Partners sued Hwang, who was employed by Plastronics for several years, and sought $26 million in actual damages and $75 million in punitive damages. Lawyers for Plastronics and HiCon, which both provide burn-in and test sockets and related components for the semiconductor industry, called a combined seven witnesses, including Hwang who testified through an interpreter.
Defense attorneys countered that Hwang made the groundbreaking invention prior to joining Plastronics and that he went to great lengths to abide by the agreements he made with his former employer.
After four days of trial, an East Texas jury deliberated less than two hours last Friday before giving Hwang a huge victory.
The panel ruled that Hwang and his company did not infringe the patent-in-suit, did not tortiously interfere with Plastronics’ business and did not conspire to harm Plastronics. The jury did order Hwang to pay Plastronics $622,000 for a breach of a royalty agreement.
The jury also awarded Hwang $1.36 million in damages, pointing out that Plastronics failed to pay the defendant royalties it owed him.
Efforts to obtain a comment from Plastronics and its lawyers have been unsuccessful.
“This was truly a bet-the-company case,” Russ Emerson and Stephanie Sivinski, lawyers at Haynes and Boone, said in a written statement to The Texas Lawbook. “This was a challenging case for several reasons.”
Emerson and Sivinski pointed to the language barrier for their client as a major obstacle. In addition, Plastronics presented a sympathetic argument that the company “spent millions commercializing” Hwang’s invention, only to have him quit to return to South Korea to compete against Plastronics.
“We had to explain to the jury that Mr. Hwang had always been open and honest with Plastronics about his desire to return eventually to Korea to start his own company to practice his own invention, which he invented on his own before he joined Plastronics,” the lawyers stated. “And he reserved his rights to do so in the parties’ agreements.”
A critical fact issue for the jury, according to the lawyers, was which corporate entity – Hwang’s HiCon Co., Ltd. in Korea or his sole proprietorship established a decade ago also called HiCon – actually sold the products to U.S. companies.
“Because those entities had essentially the same name, we were always concerned about jury confusion,” Emerson and Sivinski stated. “Fortunately the documents told the tale – a distribution agreement and the sales and tax documents clearly identified the sole proprietorship, HiCon, as the seller.”
The lawyers said that Hwang was the key witness.
“His testimony was interpreted, but even in Korean his integrity and his passion and excitement for his invention shone through,” they stated.
Other Haynes and Boone lawyers who worked on the case for HiCon and Hwang were Debbie McComas, Tiffany Cooke, Jamie Raju and Charlie Jones. Elizabeth DeRieux of Capshaw & DeRieux in Gladewater, Texas, also represented Hwang.
The lawyers who represented Plastronics were Kasia Brozynski, Antonio Devora, Brian Bear, and Bart Dalton of Spencer Fane. Christopher Bunt of Parker, Bunt & Ainsworth in Tyler was their local counsel.