Longhorn IP LLC

Longhorn IP LLC has added a portfolio to the patent holdings identified on its public website. Each portfolio is held by an entity typically named after something or someone from the ancient world, particularly from Carthaginian culture. The new portfolio is—or will be—held by Mago Barca IP LLC, an entity formed in Texas last month. Longhorn IP describes the portfolio as relating to “Semiconductor Manufacturing, Packaging”.

Hermes IP Management LLC has become the latest entity tied to Texas monetization firm Longhorn IP LLC to file US litigation. In a new Eastern District of Texas complaint, Hermes IP has accused Samsung (2:24-cv-00540) of infringing three former SK Telecom patents through the provision of mobile devices featuring audio noise cancellation, multiple home screens, and/or image geotagging and navigation features. Longhorn IP has made headlines recently for its appeal to the Federal Circuit of the requirement that it post a bond under Idaho’s “Bad-Faith Patent Assertion” law, in litigation against Micron.

The fight over a set of state laws punishing bad-faith patent assertion is heating up before the Federal Circuit. In June 2023, monetization firm Longhorn IP LLC and affiliate Katana Silicon Technologies LLC filed an appeal over one such law in Idaho, both seeking to overturn an $8M bond imposed against them under that statute in litigation with Micron—apparently the first time such a bond has been ordered—and to invalidate the statute as preempted by federal patent law. Now, as Micron and Idaho lay out their positions in response briefs, they have received additional support: 27 other states and the District of Columbia have sought leave to file an amicus brief in support of upholding Idaho’s law, as have two industry associations.

On January 31, 2024, FG Innovation Company Ltd. (f/k/a FG IP Innovation Company Ltd.) (FGI) divested a portfolio of 35 assets, including 30 issued US patents, to a Texas entity, which moved the portfolio to a second Texas LLC the next day. This FGI divestiture is the sixth to an apparent US NPE since May 2021, to date four of the prior five recipients having launched litigation over the patents received.

Eastern District of Texas Judge Rodney Gilstrap has granted a request by L2 Mobile Technologies LLC, a Longhorn IP LLC plaintiff, to file a new complaint against OnePlus (2:23-cv-00087) under seal, a redacted version of that pleading appearing on the docket several days later. The public version reveals some parallels with a sealed complaint that L2 Mobile filed in Delaware against TCL (TCT Mobile) last fall: the assertion of three allegedly standard essential patents (although not the same three patents) together with requests for declaratory judgments that L2 Mobile complied with its commitment to offer a license under fair, reasonable, and nondiscriminatory (FRAND) terms and that the defendant “has acted in bad faith, is an unwilling licensee, has breached its obligation to negotiate in a FRAND manner, and has forfeited and exhausted any and all rights as a third-party beneficiary under a FRAND contract and to a FRAND license”.

Delaware District Judge Richard G. Andrews has granted a motion by plaintiff L2 Mobile Technologies LLC to file its latest complaint (and associated exhibits) under seal. The defendant is TCL (TCT Mobile) (1:22-cv-01306), with L2 Mobile contending that the complaint contains information falling under a May 2019 confidentiality agreement between the parties, as it allegedly discloses information related to negotiations over a potential patent license and specific terms from that potential license. Three wireless communications patents are at issue in the case, including patents that L2 Mobile has alleged to be essential to the practice of the 3G standard.

This summer saw the escalation of a long-running fight between Longhorn IP LLC and Micron, with the latter’s July suit accusing the monetization firm of violating a largely untested Idaho law barring bad-faith patent assertion—seeking both damages from Longhorn IP and asking the court to impose a $15M bond against it. Now, as the defendant pushes forward on a motion to dismiss arguing that the law is unconstitutional, the state of Idaho has intervened in the statute’s defense, arguing that the law is narrowly tailored enough to avoid preemption by federal patent law.

The long-running battle between Micron and Longhorn IP LLC has taken a new turn with the semiconductor company’s suit invoking a largely untested Idaho state law barring “bad faith assertion[s] of patent infringement”. That 2014 statute, in part, allows a court to require the patent owner making such an “assertion” to pay a bond that equals the accused infringer’s likely cost of litigation plus related damages for the patent owner’s violation of the statute. Micron has requested $15M for that bond, triggering a fight in the federal District of Idaho—where the case was moved from state court last month—over the underlying facts, timeliness, and the propriety of the law itself. The first ruling on the bond issue did not go in Longhorn IP’s favor: On August 8, the court declined its request to stay the bond proceedings pending the outcome of its related motion to dismiss.

SK hynix (3:22-cv-03915) has filed a single Northern District of California action against monetization firm Longhorn IP LLC and two of its “portfolio” entities, Hamilcar Barca IP LLC and Trenchant Blade Technologies LLC, seeking declaratory judgments of noninfringement of seven patents. The plaintiff alleges receipt of multiple letters from the plaintiffs, beginning in May 2020, giving rise to jurisdiction over the dispute, by which SK hynix seeks to clear a wide array of products, including image sensors, integrated circuit devices, and memory products, from the Longhorn IP accusations of infringement. This litigation was foreshadowed, at least in part, by a letter attached to an earlier DJ complaint against Longhorn IP, revealing its “intent to license the patent portfolio [of Trenchant] to other companies, including Samsung, Micron, SK hynix, Global Foundries, UMC and SMIC”.

PanOptis Patent Management, LLC; Optis Cellular Technology, LLC; Unwired Planet, LLC; and Unwired Planet International Limited (collectively, PanOptis) have sued Ford (2:22-cv-00133) in the Eastern District of Texas, asserting a group of former Ericsson or Panasonic patents and targeting connected vehicles alleged to communicate according to the 4G/LTE cellular network standard. PanOptis appears to be the latest to join a line of Avanci, LLC licensors taking aim at Ford.

L2 Mobile Technologies LLC, an entity under the control of NPE Longhorn IP LLC, has filed a second lawsuit in its sole litigation campaign, accusing Ford (1:21-cv-01409) of infringement through the provision of automobiles and devices that are complaint with the 3G and/or 4G wireless communication standards. The five patents-in-suit, two of which are new to litigation, are broadly directed to wireless communications; in its complaint, L2 Mobile alleges that ASUSTek and/or Innovative Sonic Limited “declared before [the European Telecommunications Standards Institute] ETSI the Patents in Suit as essential to the 3G wireless communications standard”.

Last month, 5G IP Holdings LLC—an NPE associated with monetization firm IPValuation Partners LLC (d/b/a IPVal)—filed its first suit to date, hitting Samsung over wireless communications patents, received from FG Innovation Company Ltd. (f/k/a FG IP Innovation Company Ltd.) (FGI) and allegedly declared essential to the 5G standard. Now, USPTO records suggest that at least one more NPE may be in line to litigate former FGI patents—this time with Longhorn IP LLC at the helm.

Last week, as ordered to do so, Trenchant Blade Technologies, LLC filed its answer to a declaratory judgment complaint that Samsung filed against both it and Longhorn IP LLC in the Northern District of California. Trenchant had contested personal jurisdiction, which motion District Judge Vince Chhabria denied in late June. The parties’ dispute involves several former TSMC patents and a prior covenant not to sue, which the recently filed answer contends is “unenforceable as written”. It appears this set of disputes will now be adjudicated in Northern California, not West Texas, where the same parties have moved to lift a stay for the limited purpose of moving to transfer that case to California.

Public records reflect a rash of NPE creation in recent months, including by some of the most active patent monetizers in the IP space today. If past practices are precedent, patent assignments to these recently formed NPEs are likely in the pipeline—followed by the launch of new litigation campaigns later this year.

As it did after Samsung filed a case against it in the same forum last November, Trenchant Blade Technologies LLC has responded to Intel’s Northern District of California declaratory judgment complaint by filing an affirmative infringement action in the Western District of Texas against Intel (6:21-cv-00490). The Longhorn IP LLC NPE accuses Intel of infringement of four former TSMC patents through the provision of processors and memory products manufactured using certain semiconductor fabrication processes.

Intel (4:21-cv-03398) has filed a Northern District of California complaint seeking declaratory judgments of noninfringement of five former TSMC patents now held by Trenchant Blade Technologies, LLC, an NPE affiliated with Longhorn IP LLC. Per Intel’s complaint, an assertion letter from Longhorn IP conveys an “intent to license the patent portfolio to other companies, including Samsung, Micron, SK hynix, Global Foundries, UMC and SMIC”. The letter, attached to Intel’s complaint, is dated in April 2020, seven months before Samsung filed its own declaratory judgment action in the Northern District of California and nine months before Trenchant Blade fired back, suing Samsung affirmatively in the Western District of Texas.

Longhorn IP LLC plaintiff Nordic Interactive Technologies LLC has filed a second lawsuit in the litigation campaign begun in January 2020 with a Western District of Texas case against Samsung. The parties ended that dispute—both in district court and before the PTAB—in mid-April 2021, after claim construction and amid a contentious change of plaintiff counsel. Roughly two weeks later, Nordic Interactive hit LG Electronics (LGE) (6:21-cv-00438), also in West Texas, with the same two patents. The plaintiff again targets with one patent certain Android and Chrome devices that incorporate “the Bluetooth 2.1 or later version standard using Extended Inquiry Response” or Android devices that support Wi-Fi Direct; and with the other, devices “running Android Mobile Operating System supporting telephony functionalities”.

L2 Mobile Technologies LLC, an entity under the control of NPE Longhorn IP LLC, has filed suit against Alphabet (Google) (6:21-cv-00358) in the Western District of Texas, accusing Google of infringing three patents through the provision of smartphones “that comply with the 3G and/or with both the 3G and 4G wireless communications standard”. L2 Mobile picked the patents up in January 2017, pleading in its new complaint that ASUSTek “declared before [the European Telecommunications Standards Institute] ETSI the Patents in Suit as essential to the 3G wireless communications standard”.

Late last year, Samsung asked the Northern District of California to enforce a covenant not to sue granted to it by Longhorn IP LLC, which Samsung contends covers three patents that TSMC subsequently assigned to Trenchant Blade Technologies, LLC. The parties stipulated to an extension of the deadline, to January 27, for the defendants to answer or otherwise respond to Samsung’s complaint. Trenchant Blade has now responded, of a sort, by filing a new Western District of Texas complaint (6:21-cv-00067) charging Samsung with infringement of the same three former TSMC patents.

Samsung (5:20-cv-08205) has asked the Northern District of California for declaratory judgments of noninfringement of three patents held by NPEs Longhorn IP LLC and Trenchant Blade Technologies, LLC, seeking enforcement of a prior covenant not to sue in the same complaint. The semiconductor fabrication patents originated with TSMC, which assigned the assets to Trenchant Blade this past March, on the same day that litigation between Katana Silicon Technologies LLC and TSMC was dismissed. In April, Trenchant Blade allegedly sent a letter indicating an intent to license the acquired assets to multiple companies, including GlobalFoundries, Intel, Micron, SK hynix, SMIC, and UMC, as well as Samsung. The relationship between Katana Silicon, Longhorn IP, and Trenchant Blade is at the center of Samsung’s new complaint.

On January 28, Intellectual Ventures LLC (IV) and Ozmo Licensing LLC—a Texas entity associated with Chris Dubuc’s new monetization firm Harfang IP Investment Corp (d/b/a Harfang IP)—announced an agreement under which Ozmo will license IV patents to “select companies in the Wi-Fi Direct space”. The announcement follows Dubuc’s departure from Longhorn IP LLC and a late 2019 assignment from IV to Ozmo, which was recently reported by RPX.

Nordic Interactive Technologies LLC, an entity associated with monetization firm Longhorn IP LLC, has filed its first litigation, accusing Samsung (6:20-cv-00064) of infringing two patents that the plaintiff acquired from Intellectual Ventures LLC (IV) last May. Nordic targets the provision of Samsung devices supporting certain features of Bluetooth 2.1 (or later) with one of the patents, generally related to nearby device detection and the inclusion of various standard telephony features in certain Samsung smartphones with the other, broadly concerning telephone number processing.

As RPX reported last year, the Federal Circuit revived two lawsuits brought by Lone Star Silicon Innovations LLC (Lone Star), one each against Nanya Technology and UMC, remanding back to the Northern District of California for District Judge William Alsup to consider the feasibility of adding AMD, the owner of the asserted patents, to those cases. After remand, Lone Star and UMC settled, but Nanya has not. Rather, Nanya filed a motion to dismiss Lone Star’s amended complaint—which named AMD as a defendant after AMD refused to join the lawsuit as a coplaintiff—this motion to dismiss challenging Lone Star’s status to stand in a plaintiff’s shoes with respect to these patents at all.

Longhorn IP LLC’s Katana Silicon Technologies LLC has filed a second patent infringement lawsuit, accusing TSMC (6:19-cv-00695) of infringing five patents originating with Sharp, including the same two patents that it asserted in a May 2019 case against Samsung, together with two other patents sourced elsewhere. The patents all generally relate to semiconductor/transistor fabrication, with Katana identifying TSMC’s accused products as semiconductor devices made at a “variety of different process nodes”, including the Altera Stratix IV GX FPGA, Apple A9 chip, Qualcomm MDM9235M 4G LTE modem and advanced modem; semiconductor packages using the Integrated Fan-Out (InFO) wafer level packaging technology, including the Apple A10, Apple A11, and G7232 Rear-Cam ISPA; and Through-Silicon-Via (TSV) CMOS Image Sensors.

Just over three years after cofounding Longhorn IP LLC with Khaled Fekih-Romdhane, Christian (“Chris”) Dubuc is apparently leaving the firm. The website for Dubuc’s new venture characterizes Longhorn IP, together with its six “portfolios” (several in active litigation), as “previous investments” and indicates that Fekih-Romdhane will continue with Longhorn IP as its president and CEO. Dubuc’s identification of Ozmo Licensing LLC (f/k/a Sonic Wave LLC) as a “current investment”, however, suggests that the new venture will continue monetizing patents.

On April 24, 2019, four networking patents originating with Ozmo, a company acquired by Atmel (itself bought by Microchip in 2016) in 2012, were assigned to Sonic Wave LLC, an entity under the management of one of the founders of Longhorn IP LLC. The last several months have seen the Texas monetization firm’s first litigation campaign, waged by affiliate Lone Star Silicon Innovations LLC, revived in the Northern District of California by the Federal Circuit (see here) and a second litigation campaign, begun by affiliate Katana Silicon Technologies LLC, hit Samsung in the Western District of Texas (see here). The assignment of patents to Sonic Wave, together with other recent Longhorn IP activity, suggests that more litigation may be planned.

The Federal Circuit has resurrected two semiconductor suits brought by Lone Star Silicon Innovations LLC (Lone Star) against Nanya Technology and UMC but dismissed for lack of standing last January. While the Federal Circuit agreed with District Judge William Alsup that Lone Star could not file suit on its own—based on the fact that when it acquired the patents from AMD, that company had retained significant rights—the appeals court held that Judge Alsup erred by declining to consider the NPE’s request to join AMD as a necessary party. The Federal Circuit has remanded the cases for consideration of that issue.

Katana Silicon Technologies LLC, an affiliate of Longhorn IP LLC, has filed its first litigation, accusing Samsung (6:19-cv-00344) of infringing two of the nine patents that the NPE acquired from Sharp last summer. The patents generally relate to transistor fabrication, with infringement allegations focused on Samsung’s 2D planar technologies, “such as its 20nm planar technology”; its bulk FinFET technologies, “such as its 14nm, 11nm, 10nm, 8nm, and 7nm bulk FinFET technologies, which include but are not limited to the 14LPU, 11LPP 10LPE, 10LPP, 10LPU, 8LPP, and 7LPP nodes”; and certain processors and consumer products that contain either of them.

According to USPTO records, in early August, Sharp transferred five US patents and four foreign counterparts to an affiliate of Longhorn IP LLC. This latest transfer follows an assignment between the same parties in May—a month that also saw Longhorn acquire patents from Intellectual Ventures LLC (IV).

Quarterhill Inc. announced on June 25 that it has acquired a portfolio of more than 85 patent assets from MagnaChip Semiconductor. USPTO records show that earlier in the week, MagnaChip also assigned a patent portfolio to a newly formed affiliate of Longhorn IP LLC. In addition to a number of US patents, including assets originating with SK Hynix, that transfer involved foreign counterparts in China, Japan, and South Korea.

A May assignment from Sharp to a newly formed affiliate of Longhorn IP LLC was recorded with the USPTO this month, closely following the NPE’s acquisition in early May of a portfolio from Intellectual Ventures LLC (IV). Longhorn IP has launched one campaign in the US to date, suing Micron, Nanya, Renesas, SanDisk, SMIC, Toshiba, UMC, and Western Digital over patents originating with AMD. It also has active litigation in Asia.

Through the last three months of 2016, Lone Star Silicon Innovations LLC (LSSI) filed six lawsuits in the Eastern District of Texas, asserting overlapping sets of a dozen former AMD patents against Micron Technology, Nanya Technology, Renesas Electronics, SMIC, Toshiba (together with Western Digital (SanDisk)), and UMC. The patents generally relate to different aspects of semiconductor fabrication, with LSSI targeting various integrated circuit devices. Each defendant responded, in part, with a motion to change venue (some for convenience, others for impropriety), and months later, after fully briefing these motions, LSSI has agreed to transfers of all but the case against Micron to the Northern District of California, citing the US Supreme Court’s recent TC Heartland decision on patent venue in some of its papers. A motion to transfer the Micron case to the District of Idaho remains pending.

RPX took notice, among the USPTO assignment records made available during the first half of June, of patent transfers to a number of frequent plaintiffs in patent litigation, including Blackbird Tech LLC; IP Valuation Partners LLC; and Monument Patent Holdings, LLC. Assignees also included Intellectual Ventures LLC, Longhorn IP LLC, and several NPEs associated with California attorney Daniel Cotman. Dongbu HiTek and Sharp were among the assignors.

RPX took note, among the USPTO assignment records made available during the first half of May, of the transfer of patents to frequent plaintiffs Leigh M. Rothschild and IP Valuation Partners (both of which received patents from Intellectual Ventures LLC) and BlackBird Tech LLC. RPX also took note of transfers of patents from multiple assignors to an NPE controlled by patent attorney Brian Yates—a California attorney revealed, by a January sanctions ruling in Texas, as controlling more entities than previously thought. Also among the noted transactions are outbound assignments by Panasonic, Pantech, and ZTE, and a transfer from Allied Security Trust’s Industry Patent Purchase Program involving former IBM and Nokia patents.

Lone Star Silicon Innovations LLC seems to be developing a pattern of filing a new lawsuit every two weeks, the latest defendant being SMIC (2:16-cv-01276). The patents at issue (5,973,372; 6,103,611; 6,388,330) are the same three asserted against UMC roughly two weeks ago. A total of nine patents, all generally related to various aspects of semiconductor fabrication, have been asserted in the campaign to date. Lone Star Silicon targets integrated circuit devices (ICs) made with SMIC’s 40nm process (the NPE providing as a “representative example” ICs manufactured for resale as Rockchip’s RK3028A SoC), made using its 28nm PS process (the “representative example” given being ICs manufactured for resale as Qualcomm’s MSM8916 Snapdragon 410 processor), or made with its 28nm HKMG process (no example being given).

Lone Star Silicon Innovations LLC closed out October with yet another case filed in its semiconductor fabrication campaign, accusing UMC (2:16-cv-01216) of infringing two patents (6,103,611; 6,388,330) already asserted in the campaign as well as one new one (5,973,372). Lone Star targets integrated circuit devices (ICs) made with UMC’s 40nm process node (the NPE providing as “a representative example” ICs manufactured for resale as Xilinx’s XC6VLX130 Virtex-6 FPGA products) or made using its 28nm HLP, 28nm HPCU, 28nm HPCU+ and 28nm uLP process nodes (the “representative example” given being ICs manufactured for resale as Qualcomm’s MDM9625M LTE Modem). With the addition of the ‘372 patent, nine are now at issue, with Lone Star following a bit of a mix-and-match approach to their assertion.

Lone Star Silicon Innovations LLC, recently formed in Texas by a seasoned patent monetization professional, has kicked off a litigation campaign by filing a series of lawsuits against Micron (2:16-cv-01116) and Nanya (2:16-cv-01117) along with Toshiba, Western Digital, and its subsidiary SanDisk (2:16-cv-01170). The new complaints assert five former AMD patents (5,872,038; 6,097,061; 6,103,611; 6,326,231; 6,388,330) against Micron and Nanya, with the complaint against Micron asserting two more (5,912,188; 6,023,085). Toshiba, Western Digital, and SanDisk are accused of infringing the ‘188, ‘085, and ‘330 patents along with one other (RE39,518) that also originated with AMD.  The patents generally relate to various aspects of semiconductor fabrication, and the products at issue are certain DRAM memory products made and sold by the defendants. Toshiba, Western Digital, and SanDisk are accused of divided infringement through the joint production of such memory chips.