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Patent Filings Round-up: IPR on $2.18 Billion VLSI Patent Instituted; IP Edge Filing Patterns Emerge

The post-Christmas filing rush is upon us—a slight dip during the Christmas holiday is normally followed by a end-of-year complaint filing spike, and this year is no different; 72 new filings, most coming just before or after the holiday (with another 50 terminations, as cases settle going into the end of Q4).  There was also a subpar 24 petitions filed (22 IPRs and 2 PGRs).  We are starting to see a trickle of more PGRs, as post-AIA continuation patents issue, currently in litigation, that nonetheless are in the window for the expanded proceedings, but don’t expect ever to rise to much more than a handful every month.  Those IPRs are propped up by further challenges to the now-ubiquitous Fortress IP and Magentar Capital-funded campaigns (here, Scramoge and Netlist) as well as the somewhat-newer funded Staton Techiya LLC campaign [Synergy IP Corp., Staton Capital].  There’s a newish chip campaign against Qualcomm, Apple, Google, and major chip companies by Vector Capital [Future Link Systems]; all in all, a busy holiday period.

One of Two $2.18 Billion VLSI Patents Instituted, Years After Fintiv Denial:  How’s this for Fintiv efficiency?  While it may have gotten lost in the holiday hubbub, one IPR was instituted on one of the two VLSI patents that were the basis of the $2.18 billion judgment against Intel (a second, on the other patent, was denied). Recall that two entities of unknown origin—OpenSky, and then later, a Patent Quality Assurance (or PQA)—both respectively filed copycat IPRs over the two petitions, then denied under Fintiv, that Intel had earlier timely filed against patents asserted against them in the Western District of Texas.

The first copycat filer, OpenSky, did a “straight copycat” and did not secure their own expert or contract with the expert.  This opened the door for PQA to sign an agreement with one of the experts and argue that the expert would not appear for a (cross-examination) deposition for OpenSky, but would for PQA.

The Board wrote in one case that the exclusion was fatal to OpenSky’s petition, but not in the other.  In measured analysis of the facts of both, the Board found the evidence would likely require expert testimony in one case, and that OpenSky had the ability to secure their own expert prior to filing, but didn’t.  Thus, they denied that petition; in the other, PQA erroneously suggested they had secured a fact witness librarian, Dr. Hall-Ellis, for exclusive testimony (they hadn’t); and the other witness there, Dr. Jacobs, had no exclusive agreement with PQA, so they instituted the second.  The mixed decision opens the door for PQA’s petitions to be instituted (if the merits are good).

Of note, all of these cases would have been decided on their merits years earlier but for the Fintiv decision and subsequent ruling, leading one to question whether denial was in the interests of efficiency—in short, whether kicking the can down the road on the merits for one party, versus the rest of the world, made sense.  One of Fintiv’s primary logical flaws was assuming that controversies would always be cabined to the two parties before the Board, and not the rest of the economy open to allegations of infringement.

IP Edge Filings Follow Lock-Step Efficiency: I ran into Robert Heath of RPX at a conference recently, and he shared (and is allowing me to share, with permission) some data supporting what I’ve been observing in the pages of this blog for some time.  He is a data guy like me, and graphed out some insights I thought worth sharing.  IP Edge, the most frequent filer by far once you aggregate their subsidiaries, represents about 20% of all patent filings in the United States, and they virtually never go to Markman, much less trial.  In fact, some 95+% of their cases settle or are dismissed within a year of filing.  Robert noticed like I did that their activity seems to spike (as of 2018) at the end of every month, quarter, and year.  The below graph demonstrates this well.  In fact, it looks like more than 80% of their filings are in the last week of the month, at least for the last few years.

Per Robert, the blue line is total complaints in 2021 to date, which shows the last week of the month filing pattern shows that IP Edge consistently files roughly 50 cases, plus or minus five cases, every month this year.  Filings tend to slow dramatically at the beginning of a month and ramp up near the end, suggesting some kind of quota system.

IP Edge filings 2021Anyhow, data is marvelous.   And if this bears out, in the period between Dec. 27 (when I stopped reporting for this update) and the end of the year, we should see another spike rolling into the end of 2021.  Happy holidays!

PTAB (39)

Case Number Action Owner Petitioner Patent
IPR2022-00281 Filed Staton Techiya LLC [Synergy IP Corp., Staton Capital] Samsung Electronics Co., Ltd. 9270244
IPR2022-00350 Filed Scramoge Technology Ltd. [Magnetar Capital, Atlantic IP] Apple, Inc. 9806565
IPR2022-00310 Filed Billjco LLC Apple, Inc. 9088868
IPR2022-00354 Filed Smith Sport Optics, Inc The Burton Company 10736373
Koroyd Sarl
IPR2022-00320 Filed Opticurrent LLC Power Integrations, Inc. 6958623
IPR2022-00278 Filed Muhr Und Bender Kg Rassini Suspensiones, S.A. de C.V. 9868330
IPR2022-00236 Filed Netlist Inc. [Fortress IP, Softbank] Micron Technology, Inc. 9824035
IPR2022-00353 Filed Bright Data Ltd. Code200, UAB 11044344
Teso LT UAB
Metacluster LT, UAB
Oxysales, UAB
IPR2022-00328 Filed Vertiv Corporation Opticool Technologies, LLC 9243822
IPR2022-00302 Filed Staton Techiya, LLC [Synergy IP Corp., Staton Capital] Samsung Electronics Co., Ltd 9609424
Samsung Electronics America, Inc.
IPR2022-00329 Filed Vertiv Corporation Opticool Technologies, LLC 9243823
IPR2022-00365 Filed S.P.M Flow Control, Inc. Kerr Machine Company 10663071
PGR2022-00018 Filed Compass Pathways Limited Freedom to Operate, Inc. 10954259
IPR2022-00324 Filed Staton Techiya, LLC [Synergy IP Corp., Staton Capital] Samsung Electronics Co., Ltd 8254591
Samsung Electronics America, Inc.
IPR2022-00299 Filed Vpr Brands LP Jupiter Research, LLC 8205622
IPR2022-00351 Filed Scramoge Technology Ltd. [Magnetar Capital, Atlantic IP] Apple, Inc 10622842
PGR2022-00021 Filed Kansas State University Research Foundation Boehringer Ingelheim Animal Health USA Inc. 10954274
IPR2022-00321 Filed Schaeffler Group USA Inc. Borgwarner Ithaca LLC 7389756
IPR2022-00334 Filed Power2B Inc. Samsung Electronics Co., Ltd 8816994
Samsung Electronics America, Inc.
IPR2022-00237 Filed Netlist Inc. [Fortress IP, Softbank] Micron Technology, Inc. 10268608
IPR2022-00356 Filed C.R. Laurence Co., Inc. Framless Hardware Company, LLC 9074413
IPR2022-00330 Filed Vertiv Corporation Opticool Technologies, LLC 9772126
IPR2022-00357 Filed WSOU Investments, LLC d/b/a Brazos Licensing and Development [WSOU Holdings, Coast Asset Management, Juniper Capital Partners, Craig Etchygoyen] Salesforce.com, Inc. 8209411
IPR2022-00335 Filed Orthocision, Inc. Painteq, LLC 10426539
IPR2021-01056 Not Instituted – Merits VLSI Technology LLC [Fortress IP, Softbank] OpenSky Industries, LLC 7523373
IPR2021-01055 Instituted Versata Development Group, Inc. Configit A/S 6836766
IPR2021-01064 Instituted VLSI Technology LLC [Fortress IP, Softbank] OpenSky Industries, LLC 7725759
IPR2021-01124 Instituted Zipit Wireless, Inc. Microsoft Corporation 7292870
Apple, Inc
IPR2021-01129 Instituted Zipit Wireless, Inc. Microsoft Corporation 7894837
Apple, Inc
IPR2021-01131 Instituted Zipit Wireless, Inc. Microsoft Corporation 7894837
Apple, Inc
IPR2021-00932 Instituted Optic153 LLC [Equitable IP] Unified Patents, LLC 6115174
IPR2021-01126 Instituted Zipit Wireless, Inc. Microsoft Corporation 7292870
Apple, Inc
IPR2021-01125 Instituted Zipit Wireless, Inc. Microsoft Corporation 7292870
Apple, Inc
IPR2021-01130 Instituted Zipit Wireless, Inc. Microsoft Corporation 7894837
Apple, Inc
IPR2021-01091 Instituted Demaray LLC Samsung Electronics Co., Ltd 7381657
IPR2021-00104 Instituted Demaray LLC Applied Materials, Inc. 7381657
Intel Corporation
Samsung Electronics Co., Ltd
IPR2018-01200 Final Written Decision Caterpillar Paving Products Inc. Writgen America, Inc 9045871
Joseph Vogele AG
Wirtgen America, Inc.
IPR2021-00523 Settlement Diversitech Corp RectorSeal, LLC 9550223
The RectorSeal Corporation
CSW Industrials, Inc
IPR2021-00678 Settlement Sisvel S.P.A. TCT Mobile US Inc. 8971279
TCT Mobile US Holdings Inc.
TCL Communication Technology Holdings, Ltd.
TCT Mobile International Limited
TCT Mobile Inc

 

District Court (72)

Case Number Action Plaintiff Defendant Patent
3:21-cv-09839 Filed Memoryweb LLC Apple 10423658
10621228
9552376
11017020
6:21-cv-01326 Filed Cedar Lane Technologies Inc Honeywell International Inc 8537242
6972790
6473527
8645500
5:21-cv-06171 Filed Provisur Technologies
3:21-cv-09872 Filed It Casino Solutions LLC Transient Path LLC 10109148
Thomas M Calvin 8635126
1:21-cv-01781 Filed Ddc Technology LLC Mattel Inc 9811184
9420075
6:21-cv-01328 Filed Cedar Lane Technologies Inc Kappa Optronics Gmbh 8537242
6972790
6:21-cv-01331 Filed American Patents LLC [Jon Rowan entities] Advantech Co Ltd 7088782
Advantech Service-iot Co Ltd 6847803
Advantech Technology China Co Ltd 7706458
7310304
6:21-cv-06753 Filed Cedar Lane Technologies Inc Quality Vision International Inc 8537242
6972790
1:21-cv-01785 Filed Gilead Sciences Hikma Pharmaceuticals Usa Inc 8524883
Astellas Pharma 8106183
Astellas Us LLC 9085601
1:21-cv-01786 Filed Adaptive Avenue Associates Inc Micro Electronics Inc 7171629
1:21-cv-01797 Filed Novartis Crystal Pharmaceutical Suzhou Co Ltd 11135192
6:21-cv-01346 Filed Future Link Systems LLC [Vector Capital Corp] Apple Inc 8099614
7685439
6:21-cv-01348 Filed Future Link Systems LLC [Vector Capital Corp] Dell Technologies Inc 8099614
7685439
6:21-cv-01350 Filed Future Link Systems LLC [Vector Capital Corp] Hewlett-packard 8099614
7685439
6:21-cv-01352 Filed Future Link Systems LLC [Vector Capital Corp] Qualcomm Incorporated 8099614
7685439
2:21-cv-09904 Filed The Lovesac Company Stitch Industries Inc 10123623
10154733
7213885
7419220
10806261
8783778
2:21-cv-00465 Filed Ar Design Innovations LLC Ikea Dallas Lp 7277572
Ikea North America Services LLC
3:21-cv-01707 Filed David Kresge Nathan Greenberg
Snaplok Systems LLC
3:21-cv-01713 Filed Crossford International LLC Keith David Handy 10604354
Goodway Technologies Corporation Keith Handy Design Ltd 7784476
10150623
9248975
7748476
2:21-cv-00461 Filed Jabaa LLC Five Below Inc 7480637
5:21-cv-06170 Filed Provisur Technologies
8:21-cv-02102 Filed Epson America Inc American Patents LLC [John Rowan entities] 7088782
6847803
7706458
7310304
1:21-cv-06802 Filed Hollywood Bed Spring Mfg Co Inc Werner Media Partners LLC 11006761
1:21-cv-01298 Filed Cedar Lane Technologies Inc Quality Vision International Inc 8537242
6972790
2:21-cv-05575 Filed Opex Corporation Invata LLC
Hc Robotics
6:21-cv-01333 Filed American Patents LLC [Jon Rowan entities] Legrand Inc 7088782
Shanghai Legrand Electrical Co Ltd 6847803
Legrand Sa Doing Business As Legrand 7706458
7310304
6:21-cv-01336 Filed American Patents LLC [Jon Rowan entities] Telit Communications PLC 7088782
Telit Wireless Solutions Hong Kong Limited 7706458
7310304
6:21-cv-01338 Filed Mdsave Inc Tripment Inc 9123072
Sesame Inc 11170423
Green Imaging LLC
3:21-cv-04710 Filed Team International Group of America Inc Emeril Lagasse 11175048
Tristar Products Inc
1:21-cv-01796 Filed Johnson Controls Inc Willow Technology Corporation Pty Limited 10921972
Willow Technologies LLC 11024292
Willow Technology Usa Inc 11073976
10055114
11038709
10534326
7031880
10515098
11108587
6:21-cv-01340 Filed Cedar Lane Technologies Inc Tp-link Technology Co Ltd 8165867
6:21-cv-01341 Filed Digimedia Tech LLC [IP Investments Group] Comcast 6744818
6807568
8160980
6:21-cv-01343 Filed Lpp Combustion LLC Ge Gas Power International 7435080
Ge Digital LLC 7934924
General Electric Company 7770396
7895821
6:21-cv-01344 Filed Future Link Systems LLC [Vector Capital] Acer Inc 8099614
Acer America Corp 7685439
6:21-cv-01353 Filed Future Link Systems LLC [Vector Capital] Realtek Semiconductor Corp 8099614
7685439
1:21-cv-01085 Filed Magna Mirrors of America Smr Automotive Systems Usa Inc 9694750
8591047
8783882
8899762
4:21-cv-04171 Filed Optimum Energy LLC Hvac Mechanical Services Of Texas Ltd 10505748
Convergentz Building Systems LLC 10408481
Hvac Management Corp 10461954
Wayne Green 8897921
Hti Ltd Dba The Hunton Group
et al.
2:21-cv-00463 Filed Netlist Inc. [Fortress IP, Softbank] Samsung Electronics Co Ltd 10949339
Samsung Group 10860506
11016918
1:21-cv-00146 Filed Novartis Mylan
Mylan Pharmaceuticals Inc
Viatris Inc
6:21-cv-01329 Filed Cedar Lane Technologies Inc Vieworks Co Ltd 8537242
6972790
6:21-cv-01334 Filed American Patents LLC [Jon Rowan entities] Mofi Network Inc 7088782
7706458
7310304
1:21-cv-01782 Filed Novo Nordisk Teva Pharmaceutical 10220155
11097063
8114833
10376652
9132239
9108002
9775953
9861757
8920383
9457154
9687611
9616180
8684969
7762994
9968659
RE46363
10357616
1:21-cv-01783 Filed Novo Nordisk Hikma Pharmaceuticals Usa Inc 9265893
8579869
8114833
7762994
1:21-cv-01784 Filed Janssen Pharmaceuticals Inc Tolmar Inc 9439906
Janssen Pharmaceutica Nv Tolmar Therapeutics Inc
Tolmar Pharmaceuticals Inc
Tolmar Holding Inc
1:21-cv-01795 Filed Celgene Accord Healthcare 8846628
Celgene International Sarl
1:21-cv-11018 Filed Blackbird Tech LLC Argento Sc By Sicrua Inc D720933
6:21-cv-01349 Filed Future Link Systems LLC [Vector Capital] Google LLC 8099614
7685439
6:21-cv-01355 Filed Bassfield Ip LLC [IP Edge[ 7-eleven Inc 6641053
1:21-cv-06757 Filed Think Products Inc. Microsoft Corporation 10704299
6:21-cv-01325 Filed Cedar Lane Technologies Inc Assa Abloy 8537242
6972790
8165867
8645500
6:21-cv-01332 Filed American Patents LLC [Jon Rowan entities] Grande Communications Networks LLC 7088782
6847803
7706458
7310304
6:21-cv-01335 Filed American Patents LLC [Jon Rowan entities] Moxa Inc 7088782
7706458
7310304
2:21-cv-00464 Filed Ring Container Technologies LLC Altium Packaging Lp 8365939
7726503
1:21-cv-06822 Filed Hengst Se Luber-finer Inc 9044698
Champion Laboratories Inc
1:21-cv-01787 Filed Moxchange LLC [IP Edge] Cae Healthcare Inc 7233664
1:21-cv-01790 Filed Future Link Systems LLC [Vector Capital] Amlogic Holdings Ltd 8099614
Amlogic Ca Co Inc 7685439
1:21-cv-12110 Filed Singular Computing LLC Google LLC
6:21-cv-01347 Filed Future Link Systems LLC [Vector Capital] Broadcom Inc 8099614
Broadcom Corporation 7685439
6:21-cv-01354 Filed Brita Lp Kaz Usa Inc 8167141
Helen Of Troy
4:21-cv-01499 Filed Parking World Wide LLC Passport Labs Inc 10438421
Oracle
City Of San Francisco
Parkingcarma
Serco Group PLC
et al.
1:21-cv-03412 Filed Intergraph Corp Intelliwave Technologies Inc 11002842
Hexagon Technology Center Gmbh
6:21-cv-01327 Filed Esignature Software LLC Adobe Inc 8065527
6:21-cv-01337 Filed American Patents LLC [Jon Rowan entities] Viasat Inc 7088782
6847803
7706458
7310304
2:21-cv-09813 Filed Lg Corp Wl
Top Pure
1:21-cv-01794 Filed Novartis Torrent Pharmaceuticals 11058667
Torrent Pharmaceticals Ltd
3:21-cv-01699 Filed Lego Juris As Briktek Toys Inc D688328S
Lego Systems Inc D701924S
D696360S
D615135S
4903968
5:21-cv-02392 Filed Valeda Company LLC Doing Business As Qstraint Amf Bruns America Lp 4441396
7637705
4441376
6872037
6:21-cv-01342 Filed Cedar Lane Technologies Inc Asustek Computer Inc 8537242
6972790
7292261
10346105
6473527
6516147
6:21-cv-01345 Filed Future Link Systems LLC [Vector Capital] Advanced Micro Devices Inc 8099614
7685439
6:21-cv-01351 Filed Future Link Systems LLC [Vector Capital] Lenovo Inc 8099614
Motorola Mobility 7685439
2:21-cv-00466 Filed Rampart Asset Management LLC Renesas Electronic Corporation 9721642
7225311
8214616
8812919
10192609
8472511
9367248
6:21-cv-01356 Filed Bassfield Ip LLC [IP Edge] Intercontinental Hotels Group Resources LLC 6641053

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Author: Zerbor

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8 comments so far. Add my comment.

  • [Avatar for Anon]
    Anon
    December 29, 2021 05:25 pm

    Quota system?

    Perhaps. Or perhaps there is a set process that has a cycle that has a start, a middle, and an end, and that cycle simply is timed at roughly a month.

    This “alternative’ can be easily envisioned, and need no malice or nefarious implications to be present.

  • [Avatar for Josh Malone]
    Josh Malone
    December 29, 2021 07:40 pm

    for the Fintiv decision and subsequent ruling, leading one to question whether denial was in the interests of efficiency…

    The jury ruled against Intel’s invalidity contentions, which would preclude the PTAB from finding a reasonable likelihood of invalidity at the institution stage.

    It is indeed inefficient when the USPTO 1) flip-flops after 20 years and 2) entertains these copycat petitions after the dispute has already been resolved.

  • [Avatar for Anon]
    Anon
    December 30, 2021 07:11 am

    Mr. Malone appears to have the far better point here.

    Stroud should know better (after all, he DOES point out that there is no difference in the basis of the assertions (the first being pure copy, without expert, and the second being copy with same expert), but STILL, he asserts:

    —in short, whether kicking the can down the road on the merits for one party, versus the rest of the world, made sense. One of Fintiv’s primary logical flaws was assuming that controversies would always be cabined to the two parties before the Board, and not the rest of the economy open to allegations of infringement.

    Here’s a hint Stroud: your ‘cabined controversies’ and ‘rest of the economy’ are NOT expansive if the attack is made on the same basis.

    Certainly, other controversies are NOT cabined, and anyone out there in ‘the rest of the economy’ that may have a DIFFERENT basis are very much still open to press their concerns.

    It is writing like this that diminishes your credibility, Stroud.

  • [Avatar for Greg DeLassus]
    Greg DeLassus
    December 30, 2021 12:14 pm

    [A]ll of these cases would have been decided on their merits years earlier but for the Fintiv decision and subsequent ruling, leading one to question whether denial was in the interests of efficiency—in short, whether kicking the can down the road on the merits for one party, versus the rest of the world, made sense.

    Two responses:

    (1) It is churlish to castigate the PTAB for lack of omniscience. They cannot know at the time of denial how subsequent events will play in the case before them, to say nothing of the dozens of other potential cases that might arise under the same patent.

    (2) To a first approximation, the PTAB is running at full capacity. If they institute any given case, that precludes their instituting some other case. Who is to say that the other case that they handled instead of this one made less of a contribution to the overall well functioning of the system?

  • [Avatar for Droid]
    Droid
    December 30, 2021 12:38 pm

    If I recall, Unified recently announced that they are going to start licensing patents (I don’t recall the exact language). Mr. Stroud, will you go on the record and agree that Finitv will never be raised by the patent owner of those patents? It would be great of Unified would lead by example.

  • [Avatar for Greg DeLassus]
    Greg DeLassus
    December 30, 2021 12:41 pm

    One of Fintiv’s primary logical flaws was assuming that controversies would always be cabined to the two parties before the Board, and not the rest of the economy open to allegations of infringement.

    The PTAB’s training and experience leave them well positioned to discriminate between valid patents and invalid patents. Nothing about their training or experience prepares them to discriminate well between socially significant and insignificant patents.

    Their charter from Congress is to efface invalid claims, not inconvenient claims. We would not do well to ask them to make the significant / insignificant determination. There is no reason to suppose that they would be any good at it.

  • [Avatar for C. Whewell]
    C. Whewell
    January 3, 2022 05:24 pm

    Great article as usual. I always thought we’d see more PGR’s, like the number would spike upwards all of a sudden and maintain on a higher plateau, but it hasn’t. There is still time I suppose…..

  • [Avatar for Jonathan Stroud]
    Jonathan Stroud
    January 6, 2022 01:07 pm

    Validity was never resolved—Intel did bring validity challenges timely, upfront, and they weren’t considered by the Board. They chose their forum for invalidity—the one created by Congress the same way Congress created patents and patent term length—paid what I assume is millions in a complete set of invalidity challenges, brought it timely, and were denied on some sort of policy consideration underlying Fintiv reasoning, without any consideration of the merits. It certainly wasn’t resolved against the rest of the semiconductor industry or any other potential defendant, of which, it’s no secret that Fortress and VLSI have been approaching and attempting to license the rest of the industry as well. It’s interesting to me that Josh is so ardently carrying water for Fortress, though. That’s a $900 million dollar IP fund of a multi-billion-dollar Wall Street fund, one represented by Irell & Manella LLP. This is not a David and Goliath fight here.

    I agree with the other commenters that that was inefficient; the merits were ignored until now.

    And Anonymous, it’s always curious to me when someone with no way to assess credibility—an anonymous poster on the Internet—tries to somehow pass judgment or throw into question someone else’s credibility. That seems self-evidently backward to me.

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