Case Law Reviews, Semiconductors
Tangibly Case Law Review # 14

TEXAS ADVANCED OPTOELECTRONIC SOLUTIONS, INC. v. RENESAS ELECTRONICS AMERICA, INC

2018 , Eastern District of Texas

Judge Richard A. Schell

Summary

This case involved a dispute between Texas Advanced Optoelectronic Solutions, Inc. (TAOS) and Intersil Corporation (now Renesas Electronics America, Inc.) over the alleged misappropriation of trade secrets related to ambient light sensor technology. During 2004 negotiations for a possible merger, TAOS and Intersil shared confidential information. TAOS claimed Intersil later released new sensors incorporating TAOS's disclosed technology. The jury found for TAOS, awarding damages for patent infringement and trade secret misappropriation, among other claims. The Federal Circuit affirmed liability for trade secret misappropriation and patent infringement but vacated monetary awards and remanded for further proceedings.

Decision

The Federal Circuit affirmed in part, reversed in part, vacated the monetary awards, and remanded for further proceedings.

Legal Significance

The case highlights issues regarding the sharing of confidential information in merger negotiations and the protection of trade secrets within the scope of collaborative business discussions.

Financial Judgement

The initial jury award included $48,783,007 in disgorgement of profits and $10 million in exemplary damages for trade secret misappropriation; these awards were vacated upon appeal.

Key Takeaways

The case underscores the critical importance of trade secret protection during mergers and acquisitions, the liability associated with trade secret misappropriation, and the complexities involved in quantifying damages related to trade secret theft.

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