Lone Star Silicon Innovations LLC v. Micron Technology, Inc. et al CAFC
- Filed: 09/20/2017
- Closed: 01/22/2018
- Latest Docket Entry: 03/11/2019
January 3, 2020
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.
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Federal Circuit Rules That Judge Alsup Wrongly Dismissed NPE Suits, Must Reconsider Joining AMD as CoplaintiffMay 31, 2019
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.
May 4, 2018
The Patent Trial and Appeal Board (PTAB) had an eventful April, capped by two US Supreme Court decisions addressing inter partes review (IPR). While the Court found IPR constitutional in Oil States Energy Services, in its companion decision in SAS Institute, the Court also barred the PTAB’s practice of instituting trial as to a subset of the challenged claims (partial institution decisions). As a result, since those April 24 opinions, the PTAB has begun to institute trial for all challenged claims for IPR petitions where the petitioner is likely to prevail as to at least one claim (and for all petitioned grounds, a practice not required by SAS Institute). Among the affected IPRs instituted in late April were two against Lone Star Silicon Innovations LLC, while the PTAB saw IPR petitions filed in April against Oyster Optics, LLC and Uniloc Corporation Pty. Limited. The Board also issued final decisions throughout April in IPRs against ChriMar Systems, Inc.; Global Equity Management (SA) Pty. Ltd.; Papst Licensing GmbH & Company Kg; Skky, Inc.; and Uniloc.
January 7, 2018
The Patent Trial and Appeal Board (PTAB) remained at the center of a heated public debate over the issue of tribal sovereign immunity in December 2017. Motions to dismiss filed by the Saint Regis Mohawk Tribe in IPRs against several Allergan patents—acquired by the tribe and licensed back to their original owner to shield them through sovereign immunity—remain pending as the PTAB considers a wave of amicus briefs filed on both sides of the issue. The Board has since denied the tribe’s motion for an oral hearing on discovery related to alleged bias held by the USPTO and its leadership, and that bias’s effect on the selection of judges for the tribe’s case. Meanwhile, among the petitions for inter partes review (IPR) filed in December was one brought by Apple against MEC Resources, LLC, an entity owned by another Native American tribe, which took over an existing lawsuit asserting the challenged patent against Apple in the fall. Also in December, the Board issued institution decisions in petitions against Iridescent Networks, Inc.; Lone Star Silicon Innovations LLC; and publicly traded Quarterhill Inc.; while an IPR against Packet Intelligence LLC ended in an adverse judgment after petitioner Sandvine prevailed in a November trial.
October PTAB Activity Includes Petitions Against Repeat Players and Cancellation of Claims from Realtime Data PatentNovember 2, 2017
In October 2017, the Patent Trial and Appeal Board (PTAB) saw the filing of petitions for inter partes review (IPR) against a variety of frequent litigants, including publicly traded NPEs Acacia Research Corporation and Xperi Corporation, as well as privately held Monument Patent Holdings, LLC and Uniloc Corporation Pty. Limited. The Board also instituted trial in October for IPRs against multiple Acacia subsidiaries, Uniloc, and Papst Licensing GmbH & Company Kg. In addition, the PTAB issued an IPR final decision cancelling multiple claims from a data compression patent held by prolific plaintiff Realtime Data LLC, including the single claim that Riverbed Technology (one of the petitioners for the IPR) was found to infringe in a $4.3M verdict in May, with other final decisions issued in campaigns waged by TQ Delta LLC and publicly traded Quarterhill Inc. IPRs against IP Bridge, Inc. and Mobile Telecommunications Technologies, LLC also ended in termination in October after the patent owners requested adverse judgments.
October 7, 2017
In September 2017, the Patent Trial and Appeal Board (PTAB) saw more than ten petitions filed in NPE campaigns involving networking and related technologies such as cybersecurity, including those waged by publicly traded Finjan Holdings, Inc.; prolific private litigant Realtime Data LLC; and Oyster Optics, LLC. Trial was instituted in September for an inter partes review (IPR) against Finjan and in IPRs against other frequent plaintiffs, including MyMail, Ltd. and Sound View Innovations, LLC. The Board issued final decisions in two covered business method (CBM) reviews against Uniloc Corporation Pty. Limited, the first AIA reviews against the NPE to reach final decisions since March 2016, and only the fourth to date. The PTAB also issued final decisions in IPRs against publicly traded Document Security Systems, Inc. as well as Acceleration Bay, LLC; Mobile Telecommunications Technologies, LLC; and Personalized Media Communications, LLC; among other NPEs.
July PTAB Activity Includes Petitions Against Repeat Players and Decisions in Networking and Semiconductor CampaignsAugust 4, 2017
The Patent Trial and Appeal Board (PTAB) continued to see petitions for AIA review filed against prolific litigants in July, including a wave of petitions against Uniloc Corporation Pty. Limited across four separate campaigns, with petitions also brought against General Patent Corporation, Intellectual Ventures LLC (IV), Papst Licensing GmbH & Company Kg, and Quarterhill Inc. Meanwhile, throughout July, the Board instituted trial for inter partes reviews (IPRs) filed in semiconductor campaigns waged by Harvard University and the California Institute of Technology, with trial also instituted in campaigns related to network data compression (Realtime Data LLC), servers and data management (IV), and anti-malware technology (Finjan Holdings, Inc.). Final decisions issued by the Board in July included one that cancelled claims from a patent that has been asserted by Rothschild Connected Devices Innovations, LLC, an NPE controlled by inventor Leigh M. Rothschild, against more than 60 defendants.
Lone Star Silicon Appears to Have Thrown in the Transfer Towel in Campaign Asserting Former AMD PatentsJuly 20, 2017
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.
July 8, 2017
The Patent Trial and Appeal Board (PTAB) saw petitions for AIA review filed against a variety of prolific litigants in June 2017, including General Patent Corporation, Intellectual Ventures LLC (IV), Quarterhill Inc. (f/k/a Wi-LAN Inc.), Realtime Data LLC, Uniloc Corporation Pty. Limited, and Xperi Corporation (f/k/a Tessera Holding Corporation). Also in June, the PTAB instituted trial for petitions brought against patents asserted in a variety of sprawling campaigns, including some waged by Acacia Research Corporation, IV, Papst Licensing, Quarterhill, and VirnetX Inc. The Board further issued final decisions throughout June in AIA reviews against patents involved in several notable campaigns, including some waged by Document Security Systems, Inc., Elm 3DS Innovations LLC, Empire IP LLC, and Quarterhill.
November 16, 2016
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).
November 4, 2016
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.
October 10, 2016
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.