Patent Filings Roundup: Rare Time Bar Ruling on Merged Entities; VLSI Discloses Structure as Parties Withdraw Joinder Petitions

The back-to-school lull is in full effect this week, with 54 district court patent filings, 88 terminations, and 21 new Patent Trial and Appeal Board (PTAB) filings, all inter partes reviews (IPRs), with all filings slightly below average numbers. This week saw more Express Mobile, Inc. institutions at the Board, suggesting that, of the five rather widely asserted assets (hundreds of suits against hundreds of defendants), all five are likely invalid for various reasons. Qualcomm in an IPR cancelled some of the semiconductor patents being asserted via the University of New Mexico; public records indicate that UNM has been acting as a vehicle for assertions in the space, and is one of the more aggressive universities to spin out NPEs for suit.  Google lost a patent to a Phillips challenge against FitBit; and a lot of activity from frequent entities managed by Jeffrey Gross, including a one-patent (expired) case against wearable companies that has been bought and sold a number of times over the past few years; RPX appears to have a license.

Rare time-bar question hinges on eight-year-old suit and nonexistent corporate entity: In one of the many challenges against prolific NPE TQ Delta, LLC, CommScope challenged some of the asserted patents.  Last week, the Board found that one of CommScope’s named RPIs, ARRIS Solutions, had years prior merged with and dissolved an entity, 2Wire, Inc., that had been previously sued over eight years ago, and thus, found that Arris was time-barred under 315(b), a decision likely unreviewable on appeal.  Of note, there are already instituted cases here filed by Nokia and others; TQ Delta has ostensibly provoked multiple challenges with their wide filings.

Two VLSI/Fortress challenges, different petitioners—An interesting procedural note. In the two renewed challenges to the two VLSI/Fortress patents that formed the basis of the Albright $2.2 billion judgment, two challengers—OpenSky and Patent Quality Assurance—filed challenges, OpenSky first, then shortly thereafter PQA, with a more procedurally complete filing. On one of the two patents (the ‘373 and the ‘759) OpenSky was instituted; on the other, OpenSky was denied, but PQA was instituted. Shortly thereafter, Intel sought to and was granted joinder in both. OpenSky and PQA both initially sought to join each other’s challenges, but have now withdrawn those bids. That means that one of the patent reviews has Intel and OpenSky as petitioners, and the other has Intel and PQA.

Meanwhile, in district court, Chief Judge Connolly in Delaware has again indicated that he’s dissatisfied with VLSI/Fortress’ corporate and financial disclosures there. The filings do reveal VLSI’s management structure (a board comprised of experienced licensor Michael Stolarski, as well as Ami Shah and Eran Zur, both of Fortress). They note that VLSI is a subsidiary of a CF VLSI Holdings LLC, itself with ten relatively anonymous entities, one majority owner and nine minority owners. It notes that it is wholly owned by a “closed investment fund family comprised of six individual funds, with combined total assets of approximately $1.8 billion as of June 30, 2022, but would not reveal the identifies of investors, citing confidentiality provisions with one odd exception—a retirement fund associated with Texas A&M University. VLSI pled that it could not comply because it made a request to Fortress and Fortress declined, citing “strict contractual confidentiality obligations” such that it cannot “voluntarily” disclose that information.

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