Last month’s review of notable patent assignments considered the movement of assets from Avaya to Dominion Harbor Enterprises, LLC; from Level 3 Communications to Sandpiper CDN, LLC; from Seiko Epson to IPValue’s 138 East LCD Advancements Ltd. and Lumitek Display Technology Ltd.; from Transaction Security to a “BioCrypt Access”; from Fortress Investment Group LLC’s KIP Prod P1 LP to Prodea Automation LLC; from EMM Patents Ltd. to Empire IP LLC; from Siemens and Abdelsalam Helal to Rokiot USA LLC; and from Proxicom Wireless, LLC to Secure Communication Technologies, LLC. While a couple of these entities again feature prominently, this month’s review extends well beyond them to cover the movement of patents away from other operating companies, as well as within several repeat monetization players.

In early May 2024 after a bench trial, Eastern District of Texas Chief Judge Rodney Gilstrap ruled that the affirmative patent claims of Staton Techiya, LLC against Samsung should be dismissed with prejudice because those patents are unenforceable due to unclean hands. Per the court, “The clear and convincing weight of the evidence shows that the patent claims underlying this litigation are infected by the theft of Samsung’s sensitive confidential and attorney-client privileged information”, a “theft” enabled by the plaintiff’s engagement with its “litigation-agent” (and sometime coplaintiff) Synergy IP Corporation. In light of this ruling, Samsung has filed a motion for entry of judgment, facilitating appeal, and a motion to set a schedule for the court to consider a motion for fees and costs, which Samsung estimates to be around $26M.

This past July, Staton Techiya, LLC filed a pair of Delaware cases against Samsung (Harman International Industries, Harman-Kardon) targeting the provision of automobile audio systems and earbuds (including those offered by AKG and JBL). In its accompanying corporate disclosure statement, the plaintiff indicated that “it does not have a parent corporation and there is no publicly held corporation owning ten percent or more ownership interest in Techiya”. Then, on August 2, the case was assigned to Chief Judge Colm F. Connolly, in whose courtroom April 2022 standing orders impose heightened disclosure requirements on certain litigants. In response, Staton Techiya filed new statements on August 24—one supplementing that prior simple corporate disclosure (to list well over 100 "partners”) and the other identifying a single source of third-party litigation funding.

Staton Techiya, LLC has turned to the District of Delaware for its latest cases, targeting Samsung (Harman International Industries, Harman-Kardon) (1:23-cv-00801, 1:23-cv-00802) over the provision of automobile audio systems and earbuds (including those offered by AKG and JBL). At issue are a wide array of audio features, ranging from ambient audio processing to voice detection, with Staton Techiya asserting a dozen patents across the two complaints, seven of them new to litigation. The cases have been assigned to Chief Judge Colm F. Connolly, who has imposed heightened disclosure requirements on litigants in his courtroom.

Staton Techiya, LLC has filed a third complaint against Samsung (2:23-cv-00319), again in the Eastern District of Texas and again targeting (here, with four patents issuing in 2023) the support of the Bixby platform in a wide array of devices, including smart appliances, smart watches, smartphones, tablets, TVs, and wireless earbuds. This time, Staton Techiya proceeds alone, following an apparent termination of its arrangement with coplaintiff (and exclusive licensee) in the November 2021 and February 2022 cases against Samsung, Synergy IP Corporation, and Synergy IP’s employees attempts to extricate themselves from that ongoing litigation before District Judge Rodney Gilstrap.

Late last month, USPTO Director Kathi Vidal issued an interim guidance on the NHK-Fintiv rule, limiting the Patent Trial and Appeal Board’s (PTAB’s) ability to discretionarily deny institution in America Invents Act (AIA) reviews based on the status of parallel litigation. The PTAB has now issued its first batch of institution decisions applying that guidance, in each case declining to discretionarily deny institution based on those new restrictions—including one limitation meant to address concerns over the most controversial of the NHK-Fintiv factors, as detailed in RPX’s new Q2 in Review.

Staton Techiya, LLC and Synergy IP Corporation have filed a second Eastern District of Texas case against Samsung (2:22-cv-00053). Four more earphone/earpiece patents join ten already in suit after the plaintiff pair’s November 2021 complaint, to which Samsung has responded with 11 petitions for inter partes review (IPR), an answer, and multiple counterclaims, not only of noninfringement and invalidity but also concerning trade secret misappropriation, breach of fiduciary duty, and civil conspiracy. Those counterclaims name as additional defendants Seung-Ho Ahn and Sungil Cho, who Samsung pleads “obtained access to the confidential information at issue, at least in part, in connection with their representation of and work with Samsung’s United States entity that has facilities” within the Eastern District of Texas.

Staton Techiya, LLC (as patent owner) and Synergy IP Corporation (as exclusive licensee) have together sued Samsung (2:21-cv-00413) over ten patents generally related to earphone/earpiece technologies. In the new Eastern District of Texas complaint, the pair of plaintiffs targets the provision of “certain Bixby-enabled smartphones and earphones”. This litigation is the second of 2021 to involve both Samsung and Synergy IP, a Korean monetization firm with which “a former Samsung licensing executive and attorney” now appears to be working.