Semiconductors

Formation, Development & Counseling

Does your high tech company have a business strategy and compliance plan in place for data, IP, and other asset protection? We work with clients at the earliest stage of the business life cycle, helping them set the stage for and drive innovation forward through strategic counseling and formation of new ventures. At this stage, we advise semiconductor companies on corporate governance and compliance; perform freedom to operate reviews and other forms of patent analysis; offer tax counseling; advise on executive compensation and benefits matters; assist with the development and execution of successful venture investment strategies both domestically and internationally; prosecute trademark applications in every jurisdiction where a company does business and assist with the protection of domestic and foreign registrations; and advise on international regulatory compliance, including issues such as privacy, conflict minerals, and human trafficking.

Our experience includes advising or representing:

• Qorvo in several patent strategy, strategic tax, intellectual property, and technology matters in connection with its acquisitions of Decawave and Custom MMIC.
• MACOM Technology Solutions Holdings, Inc. on tax matters in its agreement to establish a joint venture with Goertek Inc., a multi-billion dollar electronic components company based in Shandong, China, and on employee benefits and executive compensation matters in its acquisition of 100 percent of Aeroflex’s diode business from Cobham for $38 million.
• A leading semiconductor company in connection with various cross-border licensing negotiations and patent asset sales related to advanced semiconductor wafer products.

Strategic Relationships & Monetization

Is your company seeking to expand its footprint in the semiconductor industry by strengthening relationships or completing strategic business transactions? Semiconductor companies and their investors turn to Ropes & Gray to structure and execute strategic transactions that bring them into the vanguard of the industry. Our attorneys handle complex IP licensing, royalty, and joint development agreements; capital markets financings; mergers & acquisitions; IP-driven corporate structuring and restructuring across borders, including remote IP holding company spin-outs; the structure of IP assets and licenses to support mergers, acquisitions, and reorganizations; and tax matters for high-technology ventures. We operate as a business partner to our clients, analyzing core business relationships for commercial agreements, including co-promotion, marketing and distribution, outsourcing, manufacturing and supply, and hosting and colocation, and advising on the formation and operation of strategic alliances and joint ventures that support third-party business partnerships dealing with innovation assets.

Our transactional experience includes advising or representing: 

• Longtime client Bain Capital on the sale by Toshiba Corp. of its semiconductor business to a group led by Bain Capital and including Apple Inc., Seagate, Kingston, Hoya, Dell Technologies Inc. and SK Hynix. The transaction is valued at two trillion yen (approximately $18 billion) and is understood to be the largest Japanese deal since 2011, as well as both the largest private equity and leveraged finance deal ever seen in Asia. Ropes & Gray was awarded Law360’s 2019 Private Equity Practice Group of the Year award in part due to this representation.
• Mentor Graphics Corporation in its $4.5 billion acquisition by Siemens AG.
• TPG Capital in its stock acquisition of Wind River Systems, a leading provider of real-time operating systems in the Internet of Things market, from Intel Corporation, a semiconductor manufacturing company.
• An investment bank in its role as financial advisor in connection with ON Semiconductor Corporation’s $2.4 billion acquisition of Fairchild Semiconductor International Inc.
• GT Advanced Technologies in its $80 million acquisition of Confluence Solar, Inc., a developer and manufacturer of single crystal silicon substrates for the solar photovoltaic industry. We also represented GT Advanced Technologies Inc. in its purchase of Thermal Technology LLC and its purchase of Twin Creeks Technologies, Inc.
• Lead underwriters in multi-million dollar IPOs for semiconductor companies.

Litigation, Enforcement & Compliance

Is your semiconductor business involved in, or at risk of, litigation regarding IP or antitrust issues? Do you operate on a multinational scale and need regulatory advice? We assist semiconductor companies leverage their business, innovations, and patents on a global scale and, when necessary, represent and defend our clients in high-stakes, complex litigation. Our attorneys were the first to attack, as well as defend, some of the more well-known semiconductor portfolios in the U.S. Our litigators have successfully represented semiconductor companies in intellectual property litigation, including PTAB proceedings, EPO oppositions, inter partes review (IPR) proceedings, and trade secret litigation; business and commercial litigation; appellate court victories; antitrust cases; and regularly advise on regulatory matters. With offices located in key semiconductor markets such as Silicon Valley, Boston, London, Tokyo, Shanghai, New York, and Hong Kong, our litigators offer an international perspective and understanding of local laws and regulations to bring about successful outcomes for our clients.

Our experience includes advising or representing:

• Veeco Instruments Inc. v. SGL Carbon, LLC et al. (E.D.N.Y.) – We successfully secured a preliminary injunction and settled a matter for Veeco in a four-patent infringement case related to removable wafer carriers used in the production of LEDs in Metal-Organic Chemical Vapor Deposition (MOCVD) systems.
• Solar Junction Corporation v. IQE plc (S.D.N.Y., LCIA) –We represented a semiconductor wafer manufacturer, IQE, and its employees in a series of lawsuits, an international arbitration, and a PTAB derivation proceeding concerning whether the client’s patents incorporate the plaintiff company’s trade secrets. Following nearly two years of arbitration and a two-week hearing, the LCIA Tribunal found for IQE across the board, holding that IQE did not misappropriate any trade secrets or breach the supply agreement.
• A leading Japanese electronics company in successful CFIUS review of its acquisition of certain U.S. semiconductor manufacturing facilities of a large U.S. manufacturing company.
• Acts as export compliance and CFIUS counsel for a U.S.-based semiconductor company.
• NFC Technology, LLC v. NXP USA, Inc. (P.T.A.B., Fed. Cir.) – We received final written decisions in four inter partes review (IPR) proceedings that found all 29 challenged claims unpatentable based on two different sets of obviousness grounds. The challenged patent was previously asserted against customers of NXP-branded near field communication (NFC) chip products by NFC Technology LLC, a subsidiary of French governmental patent licensing entity France Brevets, SAS.
• Spansion v. Macronix et al. (USITC, N.D. Cal., E.D. Va., P.T.A.B.) – We successfully represented Spansion, a global leader in flash memory-based embedded systems solutions, in a massive series of high-profile litigations against Macronix International of Taiwan, Spansion’s rival in flash memory manufacturing.
• MACOM Technology Solutions Holdings in disclosure-based class action litigation arising from a $770 million acquisition of another technology firm. Following briefing and hearing, the court agreed to dismiss the case with prejudice. We achieved an entirely favorable resolution and the merger closed unimpeded.