As of December 31, 2017, there were over 140 active defendants in ongoing NPE litigation campaigns in the Semiconductors market sector. The month of December saw 15 new NPE cases filed in the semiconductors space, with one new NPE bringing ten defendants into litigation via its first campaign. Read on for new litigation highlights, information about activity before the Patent Trial and Appeal Board, and more—all within the Semiconductors market sector and the month of December 2017.
New Litigation Highlights
Lucio Development Starts Campaign over Software Development Kits
In early October, RPX noted the assignment of a single patent, generally related to a method for producing embedded software for use in a communications system, from a Delaware entity, Embedded Software LLC, to a Texas entity Lucio Development LLC. In December, that Texas entity launched its first campaign, asserting the patent received in separate lawsuits filed across the state: one in the Eastern District, against Xilinx (6:17-cv-00688); one in the Southern District, against Marvell (4:17-cv-04747); one in the Northern District, against STMicro (3:17-cv-03356); and the rest in the Western District, against AMD (1:17-cv-01148), Cirrus Logic (1:17-cv-01149), Cypress Semiconductor (1:17-cv-01150), Infineon Technologies (1:17-cv-01152), MediaTek (1:17-cv-01153), NVIDIA (1:17-cv-01154), and NXP Semiconductors (1:17-cv-01155). The accused products are the defendants’ software development kits (e.g., AMD’s Accelerated Parallel Processing, Infineon’s DAVE, MediaTek’s LinkIt, etc.).
After Filing Against Lenovo at Thanksgiving, Goodman Hits Acer on Christmas
Roughly one month after James B. Goodman added a Northern District of California case against Lenovo to the campaign begun over a dozen years ago, the individual inventor filed another suit in the same forum. This time Goodman sued Acer (3:17-cv-07297), alleging infringement of a familiar, single patent through provision of computing and/or consumer electronics devices that utilize DDR3 and DDR4 memory allegedly compliant with the JEDEC standard. Other open cases in the campaign include one against HP in the Southern District of Texas, another against Samsung in the Southern District of New York, and a third Northern District of California suit, against ASUS.
USB Technologies Files Shifting Disclosures, Including in Connection with Latest Suit Against Kingston Technology
USB Technologies, LLC (USB Tech) filed suit against Kingston Technology (8:17-cv-02235) in late December, asserting the same patent, generally related to an SD memory card with built-in USB connectivity, that has been at issue since this campaign began in March 2015. USB Tech’s most recent certificates of interested parties identifies only the plaintiff and defendant, while past disclosures have identified (in July 2017) Red Dragon Innovations, LLC, an entity managed in part by California attorney Daniel C. Cotman, and (through July 2016) Q Patents, Inc., an entity formed by fellow California attorney Brian Yates. Kingston has been accused of infringement through the provision of flash drives that each contain both a USB connector and an Apple Lightning connector.
PTAB Activity
In December 2017, the Patent Trial and Appeal Board (PTAB) saw a new petition for IPR, institution decisions, and final decisions, in multiple NPE campaigns in the Semiconductors market sector.
Petitions Filed
Korea Advanced Institute of Science and Technology (KIPB LLC, f/k/a KAIST IP LLC)
On December 5, GlobalFoundries, Samsung, and Qualcomm cofiled a pair of IPR petitions (IPR2018-00266, IPR2018-00267) against KIPB LLC (f/k/a KAIST IP US LLC), a Texas-based subsidiary of the Korea Advanced Institute of Science and Technology. Those two petitions challenge the validity of a single patent (6,885,055) generally related to the fabrication of certain double-gate FinFET devices, against which the same three companies filed another two petitions for IPR (IPR2017-01046, IPR2017-01047) in March. In November 2016, KIPB (using its original name) asserted the ‘055 patent in a single complaint against the three petitioners (2:16-cv-01314), alleging infringement through those of the defendants’ chips that are made using Samsung’s 14 nm FinFET process, as well as products (e.g. Samsung’s Galaxy mobile devices) that incorporate them. On December 18, 2017, Magistrate Judge Roy S. Payne recommended the denial of two motions to dismiss or transfer for improper venue filed by GlobalFoundries and Qualcomm, holding that they had “forfeited any right to challenge venue based on the untimeliness of their challenges” in light of the Federal Circuit’s ruling from In re Micron. Claim construction is currently being briefed.
Institution Decisions
Lone Star Silicon Innovations LLC
In mid-December, the PTAB instituted trial for four IPR petitions (IPR2017-01560, IPR2017-01561, IPR2017-01562, IPR2017-01563) brought by Micron against Lone Star Silicon Innovations LLC, which challenge the validity of three semiconductor fabrication patents held by the NPE (5,912,188; 6,097,061; 6,103,611). Those decisions follow a wave of IPR petitions filed against Lone Star in the fall by defendants in its sole litigation campaign, including five filed in October by Nanya Technology (IPR2018-00061, IPR2018-00062, IPR2018-00063, IPR2018-00064, IPR2018-00065) and four by Toshiba (IPR2018-00056, IPR2018-00081, IPR2018-00083, IPR2018-00087), along with another seven brought in September by Renesas Electronics. A total of ten patents are collectively at issue in those IPRs, including the ‘188, ‘061, and ‘611 patents and seven others (5,872,038; 6,023,085; 6,046,089; 6,153,933; 6,326,231; 6,380,588; 6,388,330).
Lone Star has asserted various combinations of the challenged patents along with two others (5,973,372; RE39,518) in lawsuits filed between October and December 2016 against Micron (2:16-cv-01116); Nanya (2:16-cv-01117); Renesas (2:16-cv-01438); SMIC (2:16-cv-01276); Toshiba, Western Digital, and SanDisk (2:16-cv-01170), and UMC (2:16-cv-01216), alleging infringement through various semiconductor products including DRAM memory, image sensors, NAND flash storage, and mobile processors. The cases were consolidated under the lead action against SMIC in December 2016. After the Supreme Court issued its decision in TC Heartland on May 22, 2017, the court ordered supplemental briefing on venue in the consolidated suit. In early July, Lone Star dismissed its claims against Western Digital and SanDisk with prejudice. Later that month, all of the cases apart from the one against Micron were deconsolidated and transferred to the Northern District of California after Lone Star conceded that it could not establish proper venue in the Eastern District of Texas.
Meanwhile, although Micron had previously moved to transfer to the District of Idaho on convenience grounds, it had also requested transfer to the Northern District of California on the same grounds if the other cases were transferred there. In late September, the case was transferred to the latter district. Several defendants then filed motions to dismiss for lack of standing in mid-November, asserting that AMD, the patents’ previous assignee, had not actually assigned them to Lone Star. Since the NPE holds at best a license, allege the defendants, it lacks standing to sue in its own name, a right that purportedly remains with AMD. A hearing was held for that motion on December 21.
Quarterhill Inc. (Polaris Innovations Limited)
On December 11, the PTAB instituted trial for an IPR petition (IPR2017-01500) filed by NVIDIA against a semiconductor patent (6,532,505) held by Quarterhill Inc. subsidiary Polaris Innovations Limited. That decision comes after the Board instituted trial in November, August, and June 2017, respectively, for another three NVIDIA IPRs (IPR2017-01346, IPR2017-00901, IPR2017-00381) against three other Polaris patents (7,886,122; 7,405,993; 8,161,344). Polaris asserted the four instituted patents along with two others (7,124,325; 8,207,976) in a single May 2016 lawsuit against NVIDIA and Dell (5:16-cv-00451), alleging infringement through graphics cards and desktops incorporating NVIDIA GPUs. That case (the campaign’s only litigation) was transferred from the Western District of Texas to the Northern District of California in December (4:16-cv-07005). The transferred district court case was stayed in June 2017 pending the outcome of the NVIDIA IPRs. In late July, NVIDIA filed another three petitions for IPR (IPR2017-01781, IPR2017-01819, IPR2017-01832) against the ‘325, ‘344, and ‘976 patents that remain pending.
Final Decisions
IP Bridge, Inc. (Godo Kaisha IP Bridge 1)
On December 20, the PTAB issued final decisions in two consolidated IPRs (IPR2016-01249, IPR2016-01264) filed by GlobalFoundries and TSMC against Godo Kaisha IP Bridge 1 (IP Bridge 1), a subsidiary of Japanese patent monetization firm IP Bridge, Inc. In those decisions, the Board cancelled all of the challenged claims (claims 1-3, 5-7, and 9) from a single semiconductor fabrication patent (6,538,324) and rejected two substitute claims proposed by the NPE. The PTAB’s decisions follow the October dismissal of another IPR against IP Bridge 1 filed by Xilinx (IPR2017-00844) after IP Bridge 1 filed a request for adverse judgment against the sole instituted claim (claim 5) from the challenged patent (6,653,731). The PTAB had instituted trial in that IPR, and for another filed by Xilinx (IPR2017-00842) against a second IP Bridge 1 patent (7,728,439), in late August. The -842 IPR still remains active.
Those IPRs stem from a lawsuit filed by IP Bridge 1 against Xilinx in January 2017 (2:17-cv-00100), asserting two other patents (7,265,450; 7,893,501), on the expiration date of a standstill agreement that the parties had entered to facilitate licensing discussions. The following day, Xilinx filed a declaratory judgment (DJ) action against IP Bridge 1 (3:17-cv-00509), seeking a judgment that it does not infringe the ‘731 and ‘439 patents along with twelve others (6,483,151; 6,492,665; 6,653,731; 6,873,052; 6,969,915; 7,053,461; 7,417,289; 7,525,189; 7,564,102; 7,728,439; 8,203,186; 8,278,763) all held by IP Bridge 1. All fourteen patents at issue in the two cases originated with Panasonic and generally relate to various aspects of semiconductor fabrication. In mid-June, Xilinx dismissed its DJ action after IP Bridge 1 granted the company a covenant not to sue on the patents-in-suit, while the company moved to stay the affirmative lawsuit against it pending the outcome of its IPRs. In November the latter case was transferred on convenience grounds from the Eastern District of Texas to the Northern District of California (3:17-cv-06376); the motion to stay remains pending following the transfer.
Trend of Note
As compared to 2015-2016, 2017 saw an increased number of cases asserting patents originating with the Industrial Technology Research Institute (ITRI), a non-profit, public-private Taiwanese research and development foundation. ITRI was founded in 1973 and is funded by a combination of government and industry sources. USPTO records indicate that ITRI holds thousands of US patent assets, including patents originating with AU Optronics, Eastman Kodak, Epistar, Etron, Hitachi, Hon Hai, IBM, Nanya, OKI Electric Industry, Raytheon, University of California, Ricoh, Taiwan Semiconductor Manufacturing Company, and Tantung. ITRI’s portfolio, as indicated by currently available USPTO records, can be viewed on RPX Insight.
For more information about the topics discussed here, including patent information, docket entries, and analysis, visit RPX Insight.
