Neodrón Keeps Filing as the ITC Suspends Hearings but Not Institutions

March 28, 2020

Irish NPE Neodrón Limited has filed a second Western District of Texas case against Apple (6:20-cv-00212), already a defendant in a case filed there in February. Apple is also a respondent in a related investigation before the International Trade Commission (ITC)—the second ITC action filed by Neodrón in this campaign (337-TA-1193). Fellow respondent Samsung sought to delay institution of the investigation altogether in the -1193 action in light of the global coronavirus pandemic, but to no avail. Institution occurred on March 16. However, the hearing in the first ITC action (337-TA-1162) has been postponed. Pursuant to ITC COVID-19 guidance to suspend all hearings scheduled to fall within 60 days of March 13, 2020, Administrative Law Judge (ALJ) Cameron Elliot has just reset the hearing in the -1162 action, from March 23 to June 8. The plain language description from the second ITC action fairly describes the products that Neodrón accuses of infringement campaign wide: “touch-controlled smartphones, touch-controlled tablet devices, touch-controlled notebook computers, touch-controlled laptop computers, and components thereof”.

The patents asserted in the new complaint against Apple (7,821,502; 9,823,784; 10,146,351) generally relate to touch sensors and controls, as do the more than 20 patents asserted across the campaign. Neodrón calls out the iPad Pro 3rd Gen 12.9 inch tablet as an example of the touchscreen devices accused of infringing the ‘502 patent (also at issue against Amazon, Dell, HP, Lenovo, Microsoft, and Samsung); the iPhone 11 Pro Max smartphone and iPad Pro 3rd Gen 12.9 inch tablet, of infringing the ‘784 patent (also at issue against Amazon); and the iPhone XS smartphone and Macbook Pro 13 in laptop, of infringing the ‘351 patent (appearing for the first time in litigation).

The ‘351 patent issued in December 2018 as the middle patent in a three-member family, the original development work for which occurred at Atmel, which Microchip acquired in 2016. (The third patent in that family (10,365,747) is already in suit in Neodrón’s campaign.) The plaintiff receiving the bulk of its patent holdings from Microchip in December 2018 (with a transfer of a three-patent family from an associated entity, Solas OLED Limited, dated in September 2019). In its first ITC complaint, filed in May 2019, Neodrón pleads that its action would protect a domestic industry through the alleged activity of its licensee Microchip. The ITC respondents challenged that claim to a domestic industry in an omnibus motion for summary determination, which also attacked the sufficiency of Neodrón’s infringement evidence. On February 7, 2020, ALJ Elliot issued an order denying the motion. Neodrón relies on the domestic activities of Atmel and Microchip in its second ITC complaint as well.

On March 6, the respondents in the -1162 action (Amazon, Dell, HP, Lenovo (Motorola Mobility), Microsoft, and Samsung) filed a “Motion to Suspend and Modify the Procedural Schedule, Including the Hearing Date, in Light of COVID-19”, the public version of which is available here. Among other things, the brief argued that “Samsung’s and Microsoft’s fact witnesses and corporate representatives based in Korea, King County, and Japan will be simply unable to travel to and attend the currently-scheduled hearing because of the outbreak”, particularly in those locations.

Neodrón opposed the motion, characterizing the request to suspend as “unprecedented”, in part because any travel restrictions impeding witness attendance are “self-imposed”: “There has never been an order on a motion suspending the schedule in a 337 Investigation for patent infringement where, as here, the witnesses have been deposed or where there are no government-imposed travel restrictions on the already deposed witnesses, but only private-company restrictions to travel ‘essential’ for profit-making activities”. Neodrón pleads that it “explored video-testimony options by contacting two companies who are both familiar to Respondents and very experienced with facilitating remote video testimony” to facilitate an on-schedule hearing: “Good news is: this is perfectly feasible”.

ALJ Elliot suspended the hearing date to await guidance from the Commission, on the eve of which he postponed the hearing to June 8, 2020. In the more recent (-1193) action, Samsung made similar arguments, concerning hardship in light of the global COVID-19 pandemic, in a letter seeking delay in the institution of an investigation in response to Neodrón’s complaint: “Parties from the affected regions and those who work with them are currently hampered in their abilities to fully cooperate and participate in these investigations. The U.S. government has issued ‘Do Not Travel’ advisories and has outright banned arrivals from certain countries, with additional travel bans expected shortly”. Ten days later, an investigation was instituted. The respondents in the -1193 action are Amazon, Apple, ASUSTek, LG Electronics, Microsoft, Motorola Mobility, Samsung, and Sony.

Many district court complaints, filed mostly but not entirely in the Western District of Texas, have been filed against these defendants—a patent assertion grid across the campaign can be reviewed on RPX Insight here.

Neodrón was formed in early December 2018 in Ireland, as part of a group of associated Irish entities, including Solas OLED, as well as Data Scape Limited and Sonraí Memory Limited. Data Scape and Solas OLED have each launched campaigns of their own, while Sonraí Memory has received (in early February 2020), but not yet asserted in litigation, a portfolio of patent assets from Microchip and its subsidiaries Atmel and Microsemi. An exploration of the connections between the entities, as well as its backing by hedge fund Magnetar Capital, is provided at “Trio of Irish Entities Litigating US Patents Appears on the Verge of Becoming a Quartet” (February 2020). 3/23, Western District of Texas.