This week saw 60 district court patent filings, 76 terminations, 26 Patent Trial and Appeal Board (PTAB) petitions (some post grant reviews [PGRs] in there), and two new Fintiv denials—one PGR and one inter partes review (IPR). Gesture Technology had a handful of IPRs instituted against its asserted portfolio; lots of dismissals from relatively high-profile semiconductor cases suggest either a group or cheap RPX settlement; and a number of older assertion campaigns seemed to wrap up with terminations.
Funded Vector Capital Semi Campaign Screeches to Halt: While it’s unclear exactly what the terms of the dismissal were—whether a payment or a walkway or some third-party license—a few days after the parties in the long-running, litigation-funded Monterey Research campaign announced to the judge that IPRs had been instituted on the pending patents, Monterey filed a joint motion to terminate the district court proceedings. From the outside looking in, that looks like a devastating loss for the funder, who had sued 11, including Qualcomm, Marvell, STMicro, Nanya, AMD, and effectively the rest of the semiconductor industry. The settlements or dimissals haven’t hit all the cases, so it’s possible Monterey Research was settling with the parties bringing the IPRs in an attempt to preserve the case against the remaining parties.
Fintiv Denials over ITC, WD of TX Schedules: In the Luxshare Precision Ind. Co. v. Amphenol Co. IPR, a petition was denied this week over a June 2022 ITC hearing date under the Fintiv rule; in a separate competitor-competitor case, NXP USA v. Impinj, Inc., a Western District of Texas claim construction intervened, and the Board found a Feb. 21, 2023 projected trial date (one of three) was too close in time, thus meriting another Fintiv denial (though under the PGR statute, it’s technically under section 324, not 314). The panel there accepted at face value that the trial would move forward as scheduled a few months before the FWD date, despite three concurrently scheduled trials and much evidence to the contrary regarding scheduled trial dates in that district, relying on Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15, 13 (PTAB May 13, 2020) (informative) (“Fintiv II”) (““We generally take courts’ trial schedules at face value absent some strong evidence to the contrary.”). It’s worth noting that, for instance, the third VLSI trial, which has yet to occur, was originally scheduled (and the basis of Fintiv rejections) more than two years ago, and the actual Fintiv trial itself, also now before the Western, has yet to occur more than three years later (Markman finally occurred a month or so ago, resulting in the parties having to pay the court’s former clerk and “technical advisor” Josh Yi upwards of $30,000). The IPR is IPR2022-00132 and the PGR is 2022-00005.
PTAB (26)
|
Case Number |
Action |
Owner |
Petitioner |
Patent |
IPR2022-00998 |
Filed |
Tg Biotech Co Ltd |
BTC Corporation |
8357786 |
IPR2022-00949 |
Filed |
Parus Holdings, Inc |
Apple, Inc |
8185402 |
IPR2022-00890 |
Filed |
Ebates Performance Marketing, Inc. d/b/a Rakuten Rewards |
International Business Machines Corp. |
8072968 |
IPR2022-00966 |
Filed |
Sydnexis, Inc. |
Eyenovia, Inc. |
10201534 |
IPR2022-00954 |
Filed |
iFIT, Inc. |
Tonal Systems, Inc. |
10953268 |
IPR2022-00983 |
Filed |
Ecofactor, Inc. |
Ecobee Technologies ULC |
8596550 |
IPR2022-00911 |
Filed |
NXP USA, Inc. |
Mediatek Inc.
MediaTek USA, Inc. |
10764874 |
IPR2022-00876 |
Filed |
Aire Technology Ltd |
Samsung Electronics Co., Ltd. |
8581706 |
IPR2022-00964 |
Filed |
Sydnexis, Inc. |
Eyenovia, Inc. |
9770447 |
IPR2022-00857 |
Filed |
Intellectual Ventures I LLC |
Toyota Motor Corporation |
7484008 |
IPR2022-00955 |
Filed |
iFIT, Inc. |
Tonal Systems, Inc. |
10967214 |
IPR2022-00969 |
Filed |
Ecofactor, Inc. |
Ecobee Technologies ULC |
8596550 |
IPR2022-00958 |
Filed |
XR Communications LLC d/b/a Vivato Tech |
Cisco Systems, Inc. |
8289939 |
PGR2022-00037 |
Filed |
Boehringer Ingelheim International GmbH |
Sandoz, Inc. |
11078265 |
IPR2022-00967 |
Filed |
Mediatek Inc. |
NXP USA, Inc. |
6823451 |
IPR2022-00877 |
Filed |
Aire Technology Ltd |
Samsung Electronics Co., Ltd. |
8816827 |
IPR2022-00809 |
Filed |
TQ Delta, LLC |
CommScope, Inc. |
9094348 |
IPR2022-01000 |
Filed |
Research Foundation of State University of New York |
Acera Surgical, Inc. |
8222166 |
IPR2022-00942 |
Filed |
Daniel Dumitru Dorneanu |
Graco Inc |
10425703 |
IPR2022-00950 |
Filed |
Parus Holdings, Inc |
Apple, Inc |
6721705 |
IPR2022-00997 |
Filed |
Cloudofchange, LLC |
Lightspeed Commerce Inc. |
10083012 |
IPR2022-00963 |
Filed |
Sydnexis, Inc. |
Eyenovia, Inc. |
9421199 |
IPR2022-00912 |
Filed |
NXP USA, Inc. |
Mediatek Inc.
MediaTek USA, Inc. |
9480018 |
IPR2022-00965 |
Filed |
Sydnexis, Inc. |
Eyenovia, Inc. |
10076515 |
IPR2022-00948 |
Filed |
Parus Holdings, Inc |
Apple, Inc |
9769314 |
IPR2022-00935 |
Filed |
University of Washington Through Its Center For Commercialization |
Guardant Health, Inc. |
10287631 |
IPR2022-00116 |
Not Instituted – Merits |
Intellectual Ventures II LLC
Intellectual Ventures I LLC |
Hewlett Packard Enterprises Co.
Hewlett Packard Enterprise Company |
7882320 |
IPR2022-00132 |
Not Instituted – Procedural |
Amphenol Corporation |
Luxshare Precision Industry Co., Ltd. |
10381767 |
PGR2022-00005 |
Not Instituted – Procedural |
Impinj, Inc. |
NXP USA, Inc. |
10929734 |
IPR2022-00359 |
Instituted |
Gesture Technology Partners, LLC |
Google LLC |
7933431 |
IPR2021-01585 |
Instituted |
American Science and Engineering, Inc. |
Viken Detection Corporation |
7400701 |
IPR2022-00063 |
Instituted |
Netlist, Inc. |
Samsung Electronics America, Inc.
Samsung Electronics Co., Ltd. |
10217523 |
IPR2022-00120 |
Instituted |
Scramoge Technology Ltd. |
Apple, Inc |
9997962 |
IPR2021-00920 |
Instituted |
Gesture Technology Partners, LLC |
Apple, Inc
LG Electronics, Inc.
LG Electronics USA, Inc |
7933431 |
IPR2021-00922 |
Instituted |
Gesture Technology Partners, LLC |
Apple, Inc
LG Electronics, Inc.
LG Electronics USA, Inc |
8553079 |
IPR2022-00360 |
Instituted |
Gesture Technology Partners, LLC |
Google LLC |
8553079 |
IPR2020-01713 |
Final Written Decision |
Masimo Corporation |
Apple, Inc |
10624564 |
IPR2020-01722 |
Final Written Decision |
Masimo Corporation |
Apple, Inc |
10470695 |
IPR2020-01739 |
Final Written Decision |
Voice Tech Corporation |
Mycroft AI Inc. |
9794348 |
IPR2021-00062 |
Final Written Decision |
Virtek Vision International ULC |
Assembly Guidance Systems, Inc. |
10052734 |
IPR2021-00008 |
Final Written Decision |
Cirba IP Inc.
CAO Group, Inc. |
VMware, Inc |
10523492 |
IPR2021-00219 |
Final Written Decision |
Sito Mobile R&D IP, LLC
Sito Mobile, Ltd |
Hulu, LLC |
9135635 |
IPR2020-01624 |
Final Written Decision |
Xilinx, Inc
Xilinx Asia Pacific Pte. Ltd. |
Analog Devices, Inc. |
6975132 |
IPR2021-00206 |
Final Written Decision |
Sito Mobile R&D IP, LLC
Sito Mobile, Ltd |
Hulu, LLC |
9135636 |
IPR2021-00265 |
Final Written Decision |
Sito Mobile R&D IP, LLC
Sito Mobile, Ltd |
Hulu, LLC |
9591360 |
IPR2021-00001 |
Final Written Decision |
Nxp B.V. |
Impinj, Inc. |
6819092 |
IPR2020-01737 |
Final Written Decision |
Masimo Corporation |
Apple, Inc |
10709366 |
IPR2020-01646 |
Final Written Decision |
Sentius International, LLC |
Apple, Inc |
7672985 |
IPR2019-00158 |
Procedural Termination |
Baker Hughes, Inc.
Baker Hughes Oilfield Operations, LLC |
Innovex Downhole Solutions, Inc |
9080439 |
IPR2021-00655 |
Settlement |
Rab Lightning Inc. |
Ideal Industries Lighting LLC
d/b/a Cree Lighting |
9010970 |
IPR2021-00646 |
Settlement |
Rab Lightning Inc. |
Ideal Industries Lighting LLC
d/b/a Cree Lighting |
8985816 |
IPR2022-00216 |
Settlement |
Northwestern University |
ABB Inc.
Kuka AG
Reis Robotics USA Inc. |
6907317 |
IPR2022-00232 |
Settlement |
Digital Retail Apps, Inc. |
Sam’s Club West, Inc. d/b/a Sam’s Club |
9262781 |
IPR2022-00233 |
Settlement |
Digital Retail Apps, Inc. |
Sam’s Club West, Inc. d/b/a Sam’s Club |
9934506 |
IPR2022-00296 |
Settlement |
Northwestern University |
ABB Inc.
Kuka AG
Reis Robotics USA Inc. |
7120508 |
|
District Court (60)
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Jonathan Stroud
Jonathan Stroud is General Counsel at Unified Patents, LLC, where he manages a growing team of talented, diverse attorneys and oversees a docket of administrative challenges, appeals, licensing, pooling, and
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