In the IP community it sometimes happens that yesterday's allies are today's adversaries. The legal profession obviously has to respect certain professional rules, but the rule is not that someone who advised or represented a particular client in one case, or even a large number of cases, is forever barred from suing--or defending against--that former client.
There was quite some surprise--if not astonishment--in Korean media when the long-time head of Samsung's IP Center, Dr. Seungho Ahn, appeared to have a hand in a patent infringement action brought by a non-practicing entity named Staton Techiya against Samsung in the Eastern District of Texas. Korean corporations expect an unusual degree of loyalty from their employees, especially from their executives. However, when a company and an individual part ways, they may find themselves at loggerheads further down the road.
It's unclear whether Dr. Ahn's departure from Samsung had anything to do with the Apple-Samsung settlement, which was quite costly for Samsung. I watched that dispute from the first round of complaints in 2011 to the 2018 settlement. Apple had been awarded a sizable damages amount in a couple of U.S. cases, and that's why Samsung ended up having to pay a ton of money--but Dr. Ahn and his team nevertheless accomplished something remarkable because Apple never had serious leverage over Samsung from the enforcement of any patent injunction. Temporarily, the Galaxy Tab wasn't available in Germany, but that decision was corrected later, and the harm to Samsung was limited. Also, the second Apple v. Samsung trial in the Northern District of California could have become very costly, but under Dr. Ahn's leadership Samsung got a decent outcome ("only" a damages award on the order of $100M). Apple had a home-court advantage over Samsung, and there was nothing Dr. Ahn--himself admitted to the California Bar--could have done about it.
Last week, Samsung brought counterclaims against Dr. Ahn and another former in-house lawyer (Sungil Cho), alleging a misappropriation of trade secrets and seeking a full disgorgement of any profits they would make from those patent assertions against Samsung. Various media reported on it. Let me point you to the Korea Economic Daily article on last week's filing.
On February 14, Staton Techiya filed another patent infringement complaint against Samsung in the Eastern District of Texas, asserting four additional patents. Samsung will have to respond to that complaint, and will presumably bring the same counterclaims unless those patents are--as they might be--too young to have been known to Dr. Ahn and his co-defendant while they were working for Samsung.
These are the prayers for relief relating to Samsung's counterclaims:
That Techiya and Synergy aided and abetted Ahn’s and Cho’s breach of fiduciary duty to Samsung;
E. That Techiya, Synergy, Ahn, and Cho misappropriated trade secrets of Samsung under 18 U.S.C. §1836 et seq.;
F. That Ahn and Cho breached their fiduciary duty to Samsung;
H. That Techiya, Synergy, Ahn, and Cho engaged in a civil conspiracy regarding Ahn’s and Cho’s breach of fiduciary duty to Samsung;
I. Awarding to Samsung of compensatory damages from Techiya, Synergy, Ahn, and Cho, in an amount to be determined at trial;
J. Awarding to Samsung of disgorgement of the unjust enrichment of Techiya, Synergy, Ahn, and Cho, in an amount to be determined at trial;
K. Awarding to Samsung punitive damages, in an amount to be determined at trial, including pursuant to 18 U.S.C. §1836 et seq.;
L. Enjoining Techiya, Synergy, Ahn, and Cho from further misappropriation of Samsung’s trade secrets and conduct regarding breach of Ahn’s and Cho’s fiduciary duty; and
M. For any such other and further equitable and/or legal relief as the Court deems just and equitable.
Thosse former Samsung lawyers are innocent until proven guilty (or, more accurately, liable). I guess they will vigorously defend themselves against those counterclaims, though it's also possible that the dispute will be settled soon. Samsung may have raised its counterclaims in accordance with the principle that a good offense--though I'n not taking a position for now on whether it actually is good--is sometimes the best defense.
Dr. Ahn was previously mentioned on this blog when Apple and Nokia were complaining about Quinn Emanuel's alleged disclosure of confidential ("attorneys' eyes only") licensing terms. In the end, QE got a slap on the wrist, and Samsung wasn't sanctioned at all. That's not to say the outcome will be similarly unspectacular this time around, but it could be. QE is not representing Samsung against its former employees.
Finally, here's the court filing with which Samsung brought its counterclaims:
22-02-13 Samsung Answer to ... by Florian Mueller
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