Phenix, LLC (again using past assumed name Phenix Longhorn, LLC) has filed suit against Texas Instruments (TI) (2:18-cv-00020) over a single patent generally related to an integrated circuit for LCD color correction. The complaint accuses TI of infringement through the provision of integrated circuits that allegedly implement the plaintiff’s “programmable gamma (PGamma) correction” technology, with those chips purportedly used in certain Apple iMacs and in certain televisions manufactured by either LG Electronics, Philips, Samsung, or Toshiba. Phenix ’s new suit follows a recent dismissal in a case filed against VIZIO, after roughly a year of litigation that ended with an Eastern District of Texas order transferring the case to the Northern District of California for improper venue under TC Heartland.
That dismissal, granted on January 4 without prejudice, had left a single active case in the campaign, filed against Wistron over the same patent (7,233,305) at issue throughout the campaign. Wistron filed, and then withdrew, a similar motion to dismiss for improper venue and has yet to answer the complaint against it. The campaign began earlier, with an April 2015 case filed by the plaintiff using its original name (Phenix, LLC) against Exar and subsidiary Integrated Memory Logic (IML). The NPE pleads in that case that IML’s alleged infringement stemmed from a failed partnership between the defendant and Phenix’s predecessor, Alta Analog. Phenix recounts that Alta reached out to IML in February 2008, hoping to form a partnership to bring Alta’s “programmable gamma” (or “PGamma”) display technology to market. After IML declined to pursue such a relationship, the complaint alleges that Alta was then approached by Apple in December 2010, which purportedly sought Alta’s help in solving “color fidelity issues” with its iPad line. Alta then developed an integrated circuit for the iPad and again met with IML, with Alta disclosing its technology and proposing that the companies jointly produce the part for Apple. However, in May 2012, Apple allegedly told Alta that it would not be using the company’s technology, and the latter’s proposed partnership with IML was again rejected.
Phenix’s new complaint against TI appears to add additional details to its history, alleging that around that time, in June and July 2012, Richard (Rick) Orlando, the CEO/manager of Phenix, exchanged emails and participated in multiple conference calls with TI’s CTO, in hopes of an acquisition that did not ripen. Alta then filed for Chapter 7 bankruptcy in February 2014, according to Phenix’s complaint against IML, while IML went on to produce integrated circuits for Apple that allegedly infringed Alta’s ‘305 patent. Phenix’s lawsuit against Exar and IML was dismissed with prejudice in late March 2016, while claim construction briefing was in progress, with filed documents indicating that the parties had settled. In a press release issued shortly before dismissal was granted, Phenix stated that Exar had taken a license to the ‘305 patent.
That patent issued to Alta in June 2007, with an estimated priority date in June 2003. It has a convoluted assignment history. According to USPTO records, Alta entered into a security agreement with Comerica Bank in June 2010 that included the ‘305 patent; its sole, unasserted family member (7,557,788); and four other Alta patents (6,693,828; 6,985,372; 7,061,380; 7,554,843). A second security agreement was executed between Alta and AVM Capital LP in June 2014, shortly after the end of Alta’s bankruptcy proceeding, and included the same six patents along with two more (8,194,015; 8,188,952). The Comerica security agreement was apparently released in November 2014. Orlando and Maury Domengeaux then assigned all eight patents back to Phenix in January 2015. Phenix, in turn, filed an assignment of the patents to “Phenix Longhorn, LLC, a Texas limited liability company” on December 22, 2016 in a transaction recorded on January 4, the day before the latter filed suit against VIZIO.
Phenix was formed in California in August 2014. Documents filed in that state indicate an active status for the entity, identifying Orlando and Domengaux as its managers. “Phenix Longhorn, LLC” did register to conduct business in Texas, in April 2015, but Phenix itself (the California entity) was the filer, indicating to the state of Texas that alleged deficiencies in its home state name required the use of a different name to conduct business in the new state “Phenix Longhorn LLC”. (Phenix represented that its California name did “not contain the word ‘limited liability company’ or ‘limited company’ (or an abbreviation thereof)”. Phenix’s original Texas filing also missed its California formation date by a month, providing September 2014 rather than August 2014.) In November 2016, Phenix filed to change its assumed name in Texas from “Phenix Longhorn, LLC” to “Phenix Licensing, LLC” because, so it alleged, the former was “not available for use in Texas or fail[ed] to include an appropriate organizational designation”. Nevertheless, Phenix has now filed three cases in Texas federal court using its past assumed name “Phenix Longhorn”.
Domengeaux appears to hold the current position of CFO for 3Q Digital, a marketing and analytics firm based in the Bay Area. Domengeaux holds himself out as the company’s COO and as living in Austin, Texas. Orlando appears to have consistently resided in Los Gatos, California. Phenix, LLC’s complaint against Exar lists Orlando as the president of Alta Analog, which itself was formed in California in 2002 and was subsequently acquired by Phenix. The ‘305 patent’s other named inventor, Trevor Blyth, served as Alta’s vice president of engineering, characterizing himself as a “retired semiconductor professional and consultant” in the Salt Lake City area.
VIZIO highlighted Phenix’s allegedly thin connections to Texas to move for transfer of the case filed against it out of that forum to California. VIZIO first moved, early last year, for a convenience transfer, adding a motion to dismiss or transfer for improper venue after the US Supreme Court handed down its TC Heartland decision on proper venue in patent cases filed against corporate defendants. 1/22, Eastern District of Texas.
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