Koninklijke Kpn N.V. v. SAMSUNG ELECTRONICS AMERICA, INC. et al

Dutch telecom provider Koninklijke KPN N.V. has expanded the wireless communications campaign that it began over six years ago, filing new suits against Acer (1:21-cv-00045), BLU Products (1:21-cv-00042), Bullitt Group (1:21-cv-00044), u-blox (1:21-cv-00046), Xiaomi (1:21-cv-00041), and Yulong Computer Telecommunications Scientific Company (Coolpad Technologies) (1:21-cv-00043) in the District of Delaware. The cases follow in the long wake of prior Delaware suits before District Judge Leonard P. Stark, with the parties there, including defendants HTC, LG Electronics (LGE), and Sierra Wireless, requesting this past week that deadlines for dispositive motions be pushed out, a few weeks closer to a first trial—one that, at least for now, would remain scheduled to begin on April 12, 2021. The six complaints focus on battle-tested claims of a patent that met an early Alice demise in the litigation, only to be resurrected by the Federal Circuit in November 2019.

The US Supreme Court caused a dramatic realignment in patent venue through its May 2017 decision in TC Heartland, ruling that the patent-specific venue statute governs in patent suits and confirming that corporations “reside” in their state of incorporation. However, in that opinion, the Court explicitly declined to address any impact on foreign defendants or to revisit an earlier holding that preserved a far more expansive rule for such parties. That 1972 decision, Brunette Machine Works v. Kockum Industries, reaffirmed that foreign defendants may be sued in any district, a longstanding principle known as the “alien venue rule”. Now, the Court has strengthened Brunette by denying a petition for certiorari in which HTC had argued that Brunette was inconsistent with TC Heartland and the general venue statute, as amended in 2011.

The Federal Circuit has declined to revisit the US Supreme Court’s precedent allowing suits to be brought against foreign defendants in any district. In its 1972 decision in Brunette Machine Works v. Kockum Industries, the Supreme Court held that a prior version of the statute providing that rule (presently 35 USC § 1391(c)(3)) governed suits against foreign patent defendants rather than the patent-specific venue statute, under the long-standing principle that foreign defendants fall outside all federal venue laws. That rule had been challenged by HTC in a February 21 petition for writ of mandamus, after a district court found in a suit brought by 3G Licensing S.A. and Koninklijke KPN that venue was proper as to HTC’s primary Taiwanese entity but not as to an American subsidiary. In a May 9 ruling denying that petition in In re: HTC, the Federal Circuit reaffirmed Brunette and rejected the argument that TC Heartland and 2011 amendments to the general venue statute precluded that case’s interpretation of the foreign venue statute (2018-0130).

Delaware District Judge Leonard Stark has ruled that a wireless data patent asserted against a host of mobile device makers—including BlackBerry, HTC, Lenovo, LG Electronics (LGE), and TCL—is invalid under Alice. Judge Stark’s March 22 opinion acknowledged the Federal Circuit’s recent decision in Aatrix Software v. Green Shades Software, which bars a Rule 12 Alice decision on subject matter eligibility when factual disputes remain over a patent’s inventiveness, but the court’s Section 101 analysis otherwise focused on issues of law as in pre-Aatrix cases. The invalidated patent is one of several at issue in a campaign jointly waged by patent monetization and licensing firm Sisvel International S.A. and Koninklijke KPN N.V., a telecom provider based in the Netherlands.

Recent European litigation activity has included several developments in German cases brought by subsidiaries of American NPEs, with a stay entered in two lawsuits brought by ParkerVision, Inc. and the affirmance of an injunction for Xperi Corporation. Meanwhile, plaintiffs originating in Europe have varied widely in size, financial resources, and level of activity, with one of Europe’s most persistent litigants (IPCom GmbH & Co KG) backed by financing from the US-based Fortress Investment Group LLC.

RPX took notice, among the USPTO assignment records made available during the latter part of February, of the transfer of patents from operating companies Dongbu, Eastman Kodak, Honeywell, IBM, and Koninklijke Philips to various NPEs. One of those NPEs (Uniloc Corporation Pty. Limited) has already launched a campaign asserting the patents that it received (from IBM). RPX also saw during this time the recordation of the assignment of one two-way radio patent from one litigating NPE to another (the second, an affiliate of IP Edge LLC) and the assignment of two database management patents from a Daniel F. Perez entity that asserted them in litigation back to the Georgia patent monetization firm from which that NPE acquired them.