HTC Granted Transfer from Texas in Rothschild Media Transfer Campaign

  • June 20, 2017

Inventor Leigh M. Rothschild’s media transfer campaign is about to see its first transfer out of the Eastern District of Texas in the wake of the US Supreme Court’s decision in TC Heartland v. Kraft Foods Group Brands (2016-0341). On June 20, Magistrate Judge Roy S. Payne granted an unopposed motion to transfer to the Western District of Washington filed by HTC subsidiary HTC America in a case brought against it in January by the Rothschild-controlled NPE Display Technologies, LLC (2:17-cv-00070). That transfer motion explicitly cites TC Heartland and alleges that the original venue is improper because HTC America “does not have a regular and established place of business” in the Eastern District. The suit alleges infringement of a single media transfer patent (9,300,723) through the provision of Android-based smartphones offering Android Beam, a file-sharing feature that uses near-field communications (NFC) to initiate Bluetooth file transfers to another device.

Display Technologies began its campaign in June 2015 with a group of lawsuits against NVIDIA (2:15-cv-00998), Samsung (2:15-cv-01000), Sony (2:15-cv-00997), and Valve (2:15-cv-00999), followed by a second round of cases in October of that year against C&A IP Holdings (2:15-cv-01633), GoPro (2:15-cv-01634), JK Imaging (2:15-cv-01632), and Ricoh (2:15-cv-01631). Each of those defendants was ultimately dismissed with prejudice after months of uneventful litigation, with only the case against NVIDIA—the most recently dismissed, in July 2016—lasting over a year. Filed documents indicate that the suits against JK Imaging, NVIDIA, Samsung, Sony, and Valve ended in settlement. Those cases asserted an earlier-issued family member of the ‘723 patent (8,671,195), with the accused products including Wi-Fi-enabled digital cameras and related image transfer apps (C&A IP Holdings, JK Imaging, Ricoh, GoPro) and software allowing media transfer and streaming (NVIDIA, Sony, Samsung, Valve).

In January 2017, Display Technologies revived its campaign with lawsuits against HTC and BLU Products (2:17-cv-00067), LG Electronics (2:17-cv-00069), and ZTE (2:17-cv-00068) that each asserted the ‘723 patent, shifting the campaign’s focus to NFC-enabled devices. (Those cases were later consolidated under the lead action against HTC, with claims against the other defendants unaffected by the grant transfer for HTC.) The NPE then filed an additional group of cases against Canon (2:17-cv-00192), Nikon (2:17-cv-00193), Olympus (2:17-cv-00194), Panasonic (2:17-cv-00195), and Ricoh (2:17-cv-00196) in mid-March. Display Technologies voluntarily dismissed the cases against Nikon, Olympus, and Ricoh with prejudice earlier in June. Meanwhile, the cases against Canon and Panasonic remain in initial pleadings, with both defendants having been granted additional time to answer.

Display Technologies was formed in Texas on May 11, 2015, with state records listing Rothschild as its sole manager. The ‘195 and ‘723 patents form a family of two and issued in March 2014 and March 2016 with an estimated priority date in December 2007, naming Rothschild as sole inventor. Display Technologies is the ‘723 patent’s original assignee, while the ‘195 patent issued directly to Rothschild and passed between two other entities controlled by the inventor (LMR Inventions, L.L.C. to SRR Patent Holdings, LLC) before its May 2015 assignment to Display Technologies. USPTO records for that conveyance erroneously listed the plaintiff’s name as Digital Technologies LLC, with the entity’s proper name added via corrective assignment in July 2015. (While a since-dissolved Texas entity named Digital Technologies LLC did exist at one point, that entity was apparently not connected to Leigh Rothschild, with filings listing a certain Andrew Thomas as owner and director.) Similarly, the NPE’s June 2015 complaints listed the plaintiff as “Digital Technologies LLC”, an error corrected in amended complaints filed two days after the originals.

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