NXP Asserts Three US Patents Acquired from Marvell Against MediaTek and Retailers

  • August 28, 2021
  • Category: New Patent Litigation
    Market Sectors: Mobile Communications and Devices, Networking, Semiconductors

NXP Semiconductors (NXP USA) has sued Amazon, Best Buy, and MediaTek in a single Eastern District of Texas complaint (2:21-cv-00318), targeting MediaTek over the provision of Wi-Fi 5 and Wi-Fi 6 chips and Amazon and Best Buy over the provision of devices incorporating those chips (including certain Linksys routers, which are listed as exemplary devices for both retailers). Three wireless communications patents are asserted in the new case, all picked up through NXP’s acquisition of Marvell’s wireless connectivity business unit.

NXP became the owner of the three asserted patents (10,038,518; 10,560,158; 10,742,780) at the December 2019 close of its deal to acquire the Wi-Fi and Bluetooth assets of Marvell, along with more than 650 other patent assets. With an estimated priority date in June 2015 (also via a string of provisional applications), the ’518 patent issued to Marvell as part of a three-member family in July 2018; and the ’158 patent, as part of a two-member family in February 2020. The ’158 patent has estimated priority dating back to December 2015, through another set of provisionals. The ’780 patent, the most recent in a four-member family, issued in August 2020 with estimated priority in October 2010 based on the filing of multiple provisional applications. Prosecution of a related application, filed in August 2020, continues before the USPTO.

In the new complaint, NXP recounts its own history, as arising from the Philips semiconductor division before that spinoff merged in 2015 with Freescale (“previously the Semiconductor Products Sector of Motorola, Inc.”). The plaintiff touts its past contributions to the development of modern wireless communications, pleading that it “continues to create products that use previous generations of Wi-Fi networking technology”.

NXP is no stranger to patent litigation, either as defendant or plaintiff. With this complaint, NXP now has two active litigation matters. In late 2019, it sued Impinj, in a case filed in the District of Delaware but transferred to the Western District of Washington, targeting products using radio frequency identification (“RFID”) technology with eight patents, directed at wafer fabrication or circuit configuration, developed at Freescale, NXP, or Philips. Impinj filed an early motion for summary judgment, asking the court to dismiss infringement claims related to the fabrication patents based on a license from NXP to TSMC (from which Impinj allegedly buys accused silicon wafers). In early August, a magistrate judge issued a report and recommendation to defer ruling on that motion pending additional discovery. Meanwhile, the parties have been preparing for a claim construction hearing set for October 12, 2021.

Patents once held by NXP have also been litigated by others—perhaps most notably resulting in jury verdicts, one finding infringement (and awarding damages in the billions) and another finding noninfringement (avoiding a second billion-dollar damages ask), in litigation between plaintiff and patentholder VLSI Technology LLC, a Fortress Investment Group LLC subsidiary, and defendant Intel. Posttrial disputes continue in those campaigns; for example, this past month, District Judge Alan D. Albright denied Intel’s motions for a new trial and to bar recovery based on the equitable doctrine of unclean hands.

The case against Amazon, Best Buy, and MediaTek has been assigned to District Judge Rodney Gilstrap. Irell & Manella LLP represents NXP in the case (with NXP represented by Jones Day in the Impinj matter). 8/24, Eastern District of Texas.

Editor’s Note: This article was revised after publication to reflect that while one of the asserted patents issued to NXP, original development work was conducted at Marvell.

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