Last week, Intel filed a motion to show cause why VLSI Technology LLC’s recent statements (here and here) have not violated the standing orders of Delaware Chief Judge Colm F. Connolly related to corporate disclosure and third-party litigation funding. VLSI filed those statements concurrently with its own motion to dismiss, stay or transfer Intel’s Delaware declaratory judgment action to the Western District of Texas, where District Judge Alan D. Albright is considering the same parties’ submissions concerning whether Intel’s license defense (allegedly arising after Fortress Investment Group LLC acquired Finjan, Inc. in 2020) to VLSI’s patent infringement claims involves any issue for presentation to a jury. Intel argues that VLSI’s motion to dismiss, stay, or transfer should be denied without prejudice while the court focuses instead on compliance with its standing orders.

In its long-running attempt to litigate whether an earlier license agreement with Finjan, Inc. provides a defense in the multidistrict campaign of VLSI Technology LLC against it, Intel has opened another chapter. After Northern District of California Judge Beth Labson Freeman dismissed Intel’s license counterclaim this past April, Intel has filed a complaint in the District of Delaware seeking a declaratory judgment that it is licensed to VLSI Technology’s entire portfolio (1:24-cv-00803). Last week, both Intel and VLSI Technology apprised Western District of Texas Judge Alan D. Albright of the new complaint, in advance of a July 15, 2024 status conference in one of the three cases before him that have each ben tried to a jury.

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.

The Unified Patent Court (UPC) has played an increasingly prominent role in European patent enforcement since its launch one year ago. Its broad jurisdiction offers key advantages to patent owners, allowing them to target infringement across 17 participating European Union (EU) member states in a single complaint—including claims over both traditional European patents (EPs) as well as the newly created European patents with unitary effect, or unitary patents. However, the court also allows companies to file similarly sweeping revocation actions, leading some patent owners to opt some of their EPs out of the court’s jurisdiction (as permitted during an initial seven-year transitional period) to protect those assets from invalidation before the UPC. Such opt-outs can fail, though, if all rights-holders are not accounted for, according to a recent decision by the UPC Court of Appeals—creating a potential pitfall for patent owners that have spread the ownership rights to their assets among multiple holding companies.

Administrative Law Judge (ALJ) Bryan F. Moore at the International Trade Commission (ITC) has posted a notice indicating that he has found no Section 337 violation “in the importation into the United States and the sale within the United States after importation of certain video processing devices and components thereof based on” the alleged infringement by Amazon of four patents held by DivX, LLC. The initial determination remains confidential. VIZIO, also a respondent in the same ITC action, was terminated from the investigation last September. A status report is due to Eastern District of Virginia Judge David J. Novak in mid-June in a parallel case that has been stayed to await the ITC outcome. Meanwhile, DivX district court cases are active again against Netflix and Realtek Semiconductor.

Last week, Fortress Investment Group LLC and Mubadala Investment Company announced that they completed the acquisition, on undisclosed terms through Mubadala Capital, “of the 90.01% of the equity of Fortress that was held by SoftBank”. According to a joint press release, Mubadala now owns 68 percent of Fortress’s equity, while Fortress management owns 32 percent, the latter “in a class of equity entitling Fortress management to appoint a majority of seats on the board”.

RPX’s last look at notable patent assignments considered the movement of assets to Ueran Technology LLC from Huawei; to AX Wireless, LLC from SOLiD; to VideoLabs, Inc. from DCX US Agility Platform LLC, a subsidiary of DXC Technology; to Flash Uplink LLC from its publicly traded parent Quest Patent Research Corporation (QPRC); to various entities from Ascend Innovation Management, LLC entities; and to Nera Innovations Limited from multiple entities associated with Atlantic IP Services. It is time for a review of additional notable transfers recorded since then.

The apportionment of patent rights can be a tricky business—particularly where a plaintiff has pledged its patents as collateral, as just illustrated by a new precedential decision from the Federal Circuit. In May 2022, Western District of Texas Judge Alan D. Albright dismissed a case brought by Intellectual Tech LLC (IT) against Zebra Technologies due to lack of standing, holding that because the plaintiff’s default on a loan gave its lender the option to sell the plaintiff’s patent or assert the patent itself, the plaintiff had been deprived of all substantial rights in that patent. However, the Federal Circuit ruled on May 1 that Judge Albright had fallen into an increasingly familiar trap by confusing the jurisdictional issue of standing, which requires a mere injury; with the issue of whether the plaintiff is a “patentee” as required to bring an infringement suit under 35 USC § 281.

Intel has been trying to litigate whether an earlier license agreement with Finjan, Inc. provides a defense in the multidistrict campaign of VLSI Technology LLC against it. Last week, Northern District of California Judge Beth Labson Freeman ruled that a forum selection clause in that license agreement requires any claim be brought in Delaware, the court dismissing the lone remaining license claim for forum non conveniens rather than transferring it to the District of Delaware. Also last week, Intel filed a motion to amend its answer, defenses, and counterclaims in the Western District of Texas to add the license defense there.

The ongoing saga over misconduct at the Patent Trial and Appeal (PTAB) has taken a new turn. In late 2022, USPTO Director Kathi Vidal ruled that two third-party petitioners, OpenSky Industries and Patent Quality Assurance (PQA), had abused the inter partes review (IPR) process by filing petitions that were designed to extract rent-seeking payments from patent owner VLSI Technology LLC. However, while Vidal found OpenSky’s behavior to be so egregious that she ordered it to pay $413K in attorney fees to VLSI, upholding that order earlier this month, she did not award fees against PQA. Now, VLSI has turned to the courts in an attempt to win fees from PQA as well, asserting claims of “abuse of process, fraud, and civil conspiracy” in a recent Virginia state court complaint against PQA and an individual acting as its “authorized representative” that seeks $3.2M in attorney fees stemming from their alleged actions. On March 20, the defendants removed VLSI’s suit to the federal Eastern District of Virginia, in the process identifying a kitchen sink of purported grounds for the complaint’s dismissal.