Solas OLED Ltd. v. BOE Technology Group Co., Ltd. et al
- Filed: 04/01/2021
- Case Updated Daily
- Latest Docket Entry: 04/08/2021
April 18, 2021
This year is off to an active start for a web of Irish NPEs litigating former operating company patents picked up from various sources. In February, Sonraí Memory Limited began two litigation campaigns, a first hitting Oracle over a former HP patent (development work having occurred before the split into HP Enterprise (HPE) and HP Inc.) and a second accusing Alphabet (Google), LG Electronics (LGE), and Samsung of infringing one former Atmel patent and another patent originally developed at HP. Last week, the same Irish NPE added a suit against Dell (6:21-cv-00361) to the latter campaign, accusing it of infringing that Atmel patent, as well as two additional patents, also acquired through Microchip Technology. Meanwhile, Arigna Technology Limited amended its Texas complaint against a fleet of automakers to assert a second former Mitsubishi Electric patent, as well as to add GM as a defendant, and Solas OLED Limited has followed up its recent East Texas trial win against Samsung with a new suit asserting two former Casio patents against BOE Technology (2:21-cv-00121).
Sonraí Memory Limited
The patent now at issue across all four complaints in Sonraí’s second campaign (6,724,241) generally relates to a memory system that includes a “charge pump circuit for generating a charge pump voltage having minimal voltage ripples”. It issued to Atmel in April 2004, passing through Microchip (which acquired Atmel in 2016) to Sonraí as part of a 50-asset transfer in February 2020. The plaintiff accuses the defendants of infringement through the provision of laptops, desktops, and servers that contain a “SanDisk/Toshiba 64L 3D NAND flash chips”, calling out the Dell/EMC XPS 15 2-in-1 9575 in the new complaint.
Those same Dell products are also targeted with a second patent (7,436,232) that followed that same path into the plaintiff’s hands. Issuing to Atmel in October 2008, the ‘232 patent generally relates to a “clock repeater for regenerating a clock signal on a clock distribution line”. It has not been asserted against Google, LGE, or Samsung.
Sonraí’s new complaint debuts a second patent in the campaign (6,920,527), accusing Dell of infringement through the provision of laptops, desktops, and servers with SSDs including Silicon Motion SSD Controllers, naming in the complaint the Dell/EMC Vostro 15 5568 P62F. The ‘527 patent is broadly directed to a portable memory device, having issued to Standard Microsystems in January 2003. (Microchip acquired Standard Microsystems in August 2012.) It was one of the 50 assets moved to Sonraí in February of last year.
Those Microchip assets were joined in April of last year by 17 US patents transferred from HP Enterprise to Sonraí; the transacted assets are generally related to a range of technologies, including system firmware, memory systems, and microprocessors. Sonrai has since moved patents back and forth with sister entity Arigna (through nunc pro tunc assignments), which itself also received assets from outside the Irish assertion enterprise, through a February 2020 assignment of just over 30 patents from Mitsubishi Electric.
Sonrai’s earlier suits—against Oracle in the first campaign and against Google, LGE, or Samsung in the second—are all in the Western District of Texas, where District Judge Alan D. Albright has granted extensions of the various deadlines to respond to the operative complaint well into May or June.
Arigna Technology Limited
Arigna began litigating one of its former Mitsubishi assets (the 7,397,318 patent, generally related to a “voltage-controlled oscillator”) this past February in a single Eastern District of Texas complaint filed against automakers BMW, Daimler (Mercedes-Benz), Nissan, Tesla, Toyota, and Volkswagen. The plaintiff amended its complaint in March 2021 to assert a second of those former Mitsubishi assets (the 8,247,867 patent, broadly directed to a particular semiconductor device) and to add GM as a defendant.
All of the defendants are accused of infringing the ‘318 patent, while only BMW, GM, and Volkswagen are accused of infringing the ‘867 patent, with Arigna pleading that joinder in a single complaint is warranted because “each Defendant designs, manufactures, assembles, imports, offers for sale, and/or sells automotive vehicles and components thereof that incorporate the NXP Semiconductors MR2001 chip package”.
Early housekeeping issues (notices of attorney appearances and extensions of the deadline to respond to the amended complaint) have dominated the docket since.
Solas OLED Limited
Meanwhile, Solas OLED continues to file new lawsuits in the display panel campaign begun in 2019 over patents received from either Microchip or Casio. The most recent defendant is BOE Technology (2:21-cv-00121), sued in the Eastern District of Texas, where in early March a jury returned a $62.7M verdict against Samsung in a case filed by Solas OLED. 2021 has seen multiple dismissals in cases in this campaign, brought earlier against Apple, Dell, Lenovo (Motorola Mobility), and LGE, with a case against HP dismissed without prejudice last August.
As covered in more detail here, in January 2021 BOE Technology ended separate litigation, begun last summer, over display panels provided for Motorola Mobility devices. The plaintiff there was “Japan-based research and development company” Semiconductor Energy Laboratory Co., Ltd. (SEL), which has kept its campaign alive after BOE Technology’s exit with a second suit, recently filed against TCL.
More on this Web of Irish NPEs
These NPEs are backed by the hedge fund Magnetar Capital, with connections to still more Irish entities, including Data Scape Limited (litigating patents originating with Sony), Neodrón Limited (asserting patents received from Microchip) and Scramoge Technology Limited, which received over 120 US patent assets from LG Innotek in February of this year. A closer look at these NPEs’ corporate ties can be found at “More Hedge Fund-Backed Irish NPEs Launch US Litigation” (February 2021).
March 11, 2021
Since last July, RPX has highlighted a growing web of Irish NPEs linked to Magnetar Capital—a hedge fund with $12.3B in assets under management—that have acquired and increasingly asserted former operating company patents. One of those NPEs has just taken a case to trial: on March 8, an Eastern District of Texas jury returned a partial infringement verdict for plaintiff Solas OLED Limited, finding that Samsung infringed two display patents through the provision of certain smartphones. Solas OLED was awarded a combined $62.7M in damages. However, the jury also concluded that the asserted claims from a third patent are invalid. The patent trial appears to be the first before District Judge Rodney Gilstrap since the expiration of his November order halting all such trials due to COVID-19.
March 5, 2021
Signs abound that wealthy investors are doubling down on patent litigation. Take for example the new suits recently filed by two NPEs holding large portfolios of former operating company patents, each backed by a private equity firm or hedge fund. As a recent RPX analysis shows, the economic risk posed by these types of NPEs is significant—and may be increasing.
Fundamental Innovation Systems International
Backed by the private equity firm Centerbridge Partners and asserting former BlackBerry patents
Formed in Delaware in 2015, Fundamental Innovation Systems International LLC (FISI) has filed roughly 20 suits since late 2016, hitting Apple, Aukey, BBK Electronics (One Plus), BLU Products, Hon Hai Precision Industry (Belkin), Huawei, Jasco Products, Lenovo, LG Electronics, Samsung, TCL (TCT Mobile), Yulu Computer (Coolpad) and ZTE—and now, Anker Innovations (Fantasia Trading) and Cyber Power Systems.
As in its previous suits, FISI’s March 5 complaints against Fantasia Trading (1:21-cv-00339) and Cyber Power (1:21-cv-00340) assert former BlackBerry patents, this time with infringement allegations focused on the defendants’ provision of USB charging adapters (including wall chargers, car chargers, desktop chargers, and power banks). (Earlier suits have targeted a range of USB charging devices and/or Chromebooks, laptops, smartphones, and tablets, etc., that include such devices.)
FISI acquired its 18 patents-in-campaign from BlackBerry in a November 2015 transaction that included over 55 US assets as well as foreign counterparts in Australia, Europe, and Asia. The terms of that acquisition were not made public at the time, but filings in subsequent lawsuits between IP consulting firm Ocean Tomo, LLC and former Ocean Tomo executive Michael Friedman revealed that the assignment resulted from a multi-million dollar deal between BlackBerry and Centerbridge Partners, a private equity firm with an estimated $1.15B in assets under management. Details concerning that deal are available here.
FISI initially engaged TnT IP LLC—a patent monetization firm managed by Craig Thompson and Ozer Teitelbaum, both former senior IP executives at Alcatel-Lucent—to license its portfolio. However, in 2018 (amid Samsung’s settlement with FISI), IAM Magazine reported that the firm had been replaced by three former senior executives at IPVALUE Management, Kapu Kumar, Paul Seaman, and Paul Riley. (Indeed, Texas public records now identify each of Kumar, Seaman, and Riley as a “governing person” of FISI, along with Eugene Davis, of Livingston, New Jersey.) In April of 2019, Kumar, Seaman, and Riley co-founded New Jersey-based JASPAR – IP Consultants, an apparent patent monetization consultancy. According to IAM, John Desmarais, who partnered with IPVALUE on monetizing the Round Rock Research portfolio, introduced Centerbridge Partners to the JASPAR team.
Also according to IAM, this same team (and again with backing from Centerbridge) last year acquired over “1,400 worldwide patent assets from lighting business Osram” and has since moved the portfolio from one Irish entity (Key Patent Innovations Limited) to another (Pictiva Display International Limited).
Furthermore, USPTO records reflect the recent movement of a large portfolio of patents from HP Enterprise (HPE) to Ocean Tomo (OT Patent Escrow LLC) to Valtrus Innovations Limited, another NPE that Irish corporate records tie to the same group of individuals. More well-funded litigation from this team, again over former operating company patents, looks likely in store for 2021.
Solas OLED Limited
Backed by the hedge fund Magnetar Capital, and litigating patents received from Casio, Microchip Technology (Atmel), or the University of Stuttgart
Formed in Ireland in March 2016, Solas OLED Limited has been waging a multi-front litigation campaign since April 2019, suing its nine total targets Alphabet (Google), Apple, BOE Technology Group, Dell, HP, Lenovo (Motorola Mobility), LG Electronics, Samsung, and Sony in district court with some also targeted in actions brought before the International Trade Commission.
Its first trial underway as of the publication date of this article*, against Samsung in the Eastern District of Texas (2:19-cv-00152), Solas OLED has filed a third suit against Samsung (Samsung Display), asserting in a February 26 complaint a former Casio patent and targeting OLED display modules incorporated in certain Apple products (e.g., iPhones and Mac Books) (6:21-cv-00185).
*Since this article’s publication, a verdict has been handed down in Solas OLED’s trial against Samsung. For RPX coverage, see “Texas Jury Returns $62.7M Infringement Verdict in Solas OLED Trial Against Samsung” (March 2021).
Solas OLED is backed by Magnetar Capital, a hedge fund with approximately $12.3B in assets under management, and the NPE’s managers have ties to a growing web of Irish NPEs litigating former operating company patents, including Arigna Technology Limited (asserting a former Mitsubishi patent), Data Scape Limited (litigating patents originating with Sony), Neodrón Limited (asserting patents received from Microchip or subsidiary Atmel) and Sonraí Memory Limited (litigating patents originating with HPE). For a closer look at these NPEs’ corporate ties, campaigns, and patents-in-suit, start with “More Hedge Fund-Backed Irish NPEs Launch US Litigation” (February 2021).
Meanwhile, yet more litigation from this group of Irish NPEs appears on the horizon; as recently reported by RPX, sister NPE Scramoge Technology Limited received over 120 US patent assets from LG Innotek last month.
The increasingly popular trifecta of operating company patents, nonrecourse funding, and more due diligence
The sale of patents by operating companies fueled yet more NPE litigation in 2020—a trend that may accelerate as more businesses turn to their patent portfolios for revenue due to economic pressure caused by the pandemic. Current economic conditions have also played a part in litigation finance’s explosive growth.
Litigation funding is typically provided on a nonrecourse basis, with the funder collecting a return on its investment only in the event of a successful outcome. If a funded plaintiff fails to recover in litigation, that plaintiff is generally not obligated to repay the funds advanced for the litigation.
Given that a nonrecourse funding arrangement comes with the risk of a total loss for the investor, litigation funders are spending substantial time and effort evaluating patents for assertion. As litigation finance continues to permeate the patent space, the character of the assets asserted by third-party funded NPEs may reflect additional due diligence and portfolio selection.
The IP market flush with former operating company patents, and with third-party funding increasingly widespread, the economic risk of NPE litigation may be the same as it was when filings were at peak levels—or even higher. See “What 15 Years of US Patent Litigation Data Reveal About the IP Market” (January 2021), and this RPX Community webinar, for more details.