Acacia Launches New Litigation Targeting Solid-State Drives

June 5, 2020

As predicted, the portfolio that Acacia Research Corporation acquired in February from Marconi, which Acacia quickly moved to a subsidiary, has spawned litigation. Unification Technologies LLC has sued Dell (6:20-cv-00499), HP (6:20-cv-00501), and Micron Technology (6:20-cv-00500) in separate Western District of Texas cases over three of the patents received from Marconi. The defendants are accused of infringing those patents, generally related to managing data stored on non-volatile storage media, over the provision of solid-state drive (SSD) devices.

Acacia (as Acacia Research Group LLCacquired the portfolio giving rise to this litigation—including the asserted patents (8,533,406; 8,762,658; 9,632,727)—on February 17, 2020 from FIO Semiconductor Technologies, LLC, an entity formed in Texas in September 2018. The patents-in-suit issued in September 2013, June 2014, and April 2017, respectively, as part of an 80-member family, ownership of which appears to be split, based on currently available USPTO assignment records, between Unification Technologies (just over two dozen) and SanDisk, (acquired by Western Digital in 2016) (the rest).

Texas public records link FIO Semiconductor to Inception IP, LLC, another Texas entity under the Marconi umbrella (which also includes the patent licensing platform Avanci and the NPE Velos Media, LLC). Kenneth McClure, a vice president at Marconi, signed on behalf of FIO Semiconductor in its assignment agreement with Acacia Research Group.

The transacted portfolio comprises 56 US assets, including patents developed by Fusion-IO, a flash memory card maker that SanDisk acquired in 2014 for $1.1B. The portfolio, which also includes foreign counterparts in China, Germany, and elsewhere, also contains patents originating with Samsung. In its new complaints, Unification Technologies pleads that “several major SSD market competitors” have already taken a license to the patents-in-suit, including Alphabet (Google), e.Digital, Intel, Samsung, SK Hynix, Toshiba, and Western Digital.

The deal with Marconi appears to be one of two transactions to which Acacia’s CEO Clifford Press alluded in a March 12 earnings call covering the company’s Q4 financials. During the call, Press stated that subsequent to the fourth quarter, Acacia had acquired multiple portfolios, including two groups of “flash disk drive patents”. While Press did not identify the assignee of those portfolios, he disclosed that they included former Fusion-IO and Samsung assets.

Press also indicated that Acacia had recently acquired a third portfolio—this one “related to speech recognition and voice control”—but did not provide any additional detail about its origin or assignee. According to Press, the company paid an aggregate $6M to acquire the three new patent portfolios, which he said contain patents with seven- to ten-year lifespans.

Acacia has been on a bit of a tear lately, acquiring, as noted, multiple new portfolios and filing cases in both old and new litigation campaigns. For further details on this reinvigoration, see “Source of Acacia’s Recent Patent Acquisition Revealed” (March 2020), with an update and more recent consideration of Acacia’s financials available at “A Tale of Three Public NPEs: Acacia, ParkerVision, and Quarterhill Release Q1 Results” (May 2020). Unification Technologies targets features within the accused SSDs—for Dell, over the 960 GB SAS Read Intensive 12 Gbps 512e 2.5in. PM5-R Series SSD; for HP, over the HP EX920 M.2 PCIe SSD; and for Micron, over the 5200 Series SATA NAND Flash SSD—for managing SSD storage data through commands (i.e., TRIM and UNMAP). 6/5, Western District of Texas.