RPX Weekly Newsletter

An Update on Patent Litigation, the Patent Marketplace, and New Cases

Monday, April 8, 2024

Patent Litigation Feature

Formal Rulemaking Not Required for NHK-Fintiv, Holds California Court

An ongoing lawsuit targeting discretionary denial practices at the Patent Trial and Appeal Board (PTAB) has hit a potentially decisive setback. In August 2020, a group of tech companies filed suit against then-USPTO Director Andrew Iancu over the agency’s precedential NHK-Fintiv rule, which allows the PTAB to deny institution in an America Invents Act (AIA) review based on the status of a parallel district court case asserting the same patent. Earlier this year, the case was narrowed to a single issue—whether NHK-Fintiv is invalid because the agency had failed to adopt it through notice-and-comment rulemaking under the Administrative Procedure Act (APA)—after the Supreme Court decided not to revisit an earlier Federal Circuit ruling. Now, Northern District of California District Judge Edward J. Davila has granted summary judgment for current Director Kathi Vidal, holding that NHK-Fintiv is not a substantive rule but a general statement of agency policy that falls outside the APA’s rulemaking requirement.


Patent Watch

Avaya Divests VoIP Portfolio to Dominion Harbor

Though the deal has yet to be fully reflected in public USPTO assignment records, Dominion Harbor Enterprises, LLC announced on April 3, 2024 that its subsidiary Arlington Technologies, LLC has acquired a “significant portfolio of patents” related to “pioneering voice over internet protocol (VOIP) technology and include more than 675 families, totaling over 1,500 individual patent assets”. The source is Avaya, described in Dominion’s press release as “a global leader in customer experience and communications solutions”. Per David Pridham, Dominion’s chairman and CEO, in that release, “While these patents are no longer core to Avaya’s cloud-based strategy, they will serve as valuable technology resources for companies worldwide that want to provide the best possible VOIP service and care to their customers”. 


March Closes with the Recordation of Plenty Notable Patent Assignments

In addition to the announced divestiture of a large tranche of VoIP patents from Avaya to Dominion Harbor Enterprises, LLC, March 2024 saw several other operating companies—including DXC Technology, Huawei, and SOLiD—unload patent assets. Several NPE enterprises also moved patents around, internally or to other NPEs, seemingly in preparation for new assertion campaigns.


New Patent Litigation

Atlantic IP Pegs Four Defendants Again

Eireog Innovations Limited, an Atlantic Services IP Limited plaintiff, has filed its first cases over the portfolio of about a dozen patents that it received from NXP last November. The defendants are Cisco (2:24-cv-00224), Fortinet (2:24-cv-00225), IBM (2:24-cv-00226), and Palo Alto Networks (2:24-cv-00227), each accused of infringing the same four patents over the provision of products, ranging from blade servers to firewalls, that incorporate certain AMD- and/or Intel-based CPUs. This set of defendants is familiar to Atlantic IP.


Headwater Litigation Heats Up

Headwater Research LLC filed its first of several cases against Samsung back in October 2022. Since Samsung filed an amended answer to plead three additional affirmative defenses (inequitable conduct and “infectious unenforceability”, lack of standing, and prosecution laches), disputes have been multiplying, including over more typical issues (e.g., amendment of infringement contentions, stay in light of inter partes review (IPR), propriety of certain expert opinions, etc.) but also over the release of US discovery for use in parallel proceedings in Germany, the production of clawed-back documents and any related waiver of privilege, the consideration of battery testing evidence, and—at the end of last week—a sealed request to sanction the plaintiff. Meanwhile, the Eastern District of Texas has handed down a claim construction order, and Headwater Research has filed yet another complaint against Samsung (2:24-cv-00228), bringing three more patents from the same large family into this fray.


Patent Armory, Fighting Earlier Motions to Dismiss, Continues Filing into April

Patent Armory Inc. has sued Adidas (6:24-cv-00173) and American Express (6:24-cv-00174) over the use of certain routing/triage tools within their respective customer service systems. Appearing in the pair of Western District of Texas complaints are the same five patents that Patent Armory has asserted against a long list of defendants, including, at least originally, Hertz. There, Hertz has filed three successive motions for judgment on the pleadings, among other things challenging the patents asserted against it as patent-ineligibly drawn, under Alice, to the abstract idea of “evaluating communications data to make a routing decision”.


Charter Sued in Atlantic IP’s Optical Networking Campaign

Atlantic IP Services Limited plaintiff Iarnach Technologies Limited has sued a third defendant in its optical networking campaign, hitting Charter Communications (Spectrum Gulf Coast, Spectrum Management) (2:24-cv-00230) over the provision of products necessary for providing DPoE v2.0-compliant networks—including “all hardware and software, optical line terminals (ONTs), and optical network units (ONUs)/optical network terminals (ONTs), transport networks, and DOCSIS back office equipment”. Iarnach previously sued AT&T (AT&T Mobility and several other subsidiaries) in a May 2023 case in which Nokia has successfully intervened and Verizon (Verizon Wireless and several other subsidiaries) in a December 2023 case, all three suits filed in the Eastern District of Texas.


Pro Se Plaintiff Asserts Caller ID Patent against Google

Proceeding pro se, individual inventor Jeffrey D. Isaacs has sued Alphabet (Google) (9:24-cv-80395) in the Southern District of Florida. The sole asserted patent, described by the plaintiff as “groundbreaking reverse phone search technology”, is broadly directed to a system for caller identification. Google is accused of infringement through the provision of mobile apps on the Google Play Store that support features for searching a CNAM (Calling Name Presentation) database to obtain a “Caller Name” associated with a phone number.


Mullen Industries Targets AR and VR Technologies in Second Campaign

Inventor-controlled plaintiff Mullen Industries LLC has launched a second litigation campaign, suing Meta Platforms (f/k/a Facebook) (1:24-cv-00354) in the Western District of Texas. The 11 patents-in-suit are described by the plaintiff as “directed to technological advancements and safety improvements in regards to augmented reality (‘AR’) and virtual reality (‘VR’) systems”, with Meta Platforms accused of infringement through the provision of certain Oculus- and Quest-series headsets, as well as related software products (i.e., First Encounters, First Steps, First Hand, First Contact, and Horizon Worlds).


Microsoft Brings Two Disputes with Individual Inventor to Federal Court

Microsoft (2:24-cv-00448) has filed a Western District of Washington case against individual inventor ATM Shafiqul Khalid and his Xencare Software, Inc., seeking declaratory judgments of noninfringement of three patents, two generally related to a “mini-cloud system for enabling user subscription in a residential environment” and another to running “computer software applications” based on a “rule table”. Microsoft alleges that there is an actual and immediate dispute existing between the parties due to “substantial and substantive allegations of patent infringement by Microsoft’s Windows operating system and Xbox consoles and gaming services made in expert reports served by Defendants in Khalid v. Microsoft Corp.”—a state court action filed before the King County Superior Court.


In Case You Missed It

California Court Dismisses “Hotly Pursued” License Claim, Intel Turns Back to Texas

Intel has been trying to litigate whether an earlier license agreement with Finjan, Inc. provides a defense in the multidistrict campaign of VLSI Technology LLC against it. Last week, Northern District of California Judge Beth Labson Freeman ruled that a forum selection clause in that license agreement requires any claim be brought in Delaware, the court dismissing the lone remaining license claim for forum non conveniens rather than transferring it to the District of Delaware. Also last week, Intel filed a motion to amend its answer, defenses, and counterclaims in the Western District of Texas to add the license defense there.


Per HP, AX Wireless Did Not Exist Then—and Does Not Exist Now

In July 2022, AX Wireless, LLC—a plaintiff formed in Texas but operating among the monetization programs of South Korea’s Ideahub, Inc. (d/b/a IDEAHUB)—sued Dell, HP, and Lenovo in separate Eastern District of Texas complaints, adding a case in the same district against Acer in February of last year. Asserted now are eight patents described by the plaintiff as “directed to wireless OFDM (orthogonal frequency division multiplexing) networks and systems”, with infringement allegations targeting compliance with the Wi-Fi 6 networking standard. Ax Wireless pleaded ownership of the asserted patents, but briefing has just completed on HP’s motion to dismiss the case against it for lack of subject matter jurisdiction in which it argues that the plaintiff could not have received the patents from Applied Transform LLC in August 2021 because the plaintiff did not exist on that date.