The last active US litigation of Pendrell Corporation closed when subsidiary Memory Technologies LLC settled a Central District of California case against Kingston Technology in 2019. Now, Memory Technologies has returned to US litigation, suing PNY Technologies (1:23-cv-00353) in a new District of Delaware complaint that targets the provision of certain SD cards: “High Capacity (HC) SD Cards complaint with SD Specification Version 2.0 or higher and Extended Capacity (XC) SD Cards compliant with SD Specification Version 3.0 or higher”. Asserted are eight patents generally related to memory cards and embedded memory configuration technologies and received as part of a larger portfolio divested from Nokia early in 2013.

The Patent Trial and Appeal Board (PTAB) saw activity in AIA reviews against a variety of familiar plaintiffs in September, including validity challenges brought in campaigns targeting wireless communications technology and mobile devices. Among the NPEs hit with petitions for inter partes review (IPR) in September were Intellectual Ventures LLC, which continues to pursue its existing litigation as it divests other parts of its portfolio; and entities controlled by Fortress Investment Group LLC and Uniloc Corporation Pty. Limited, both of which have kept up a barrage of new litigation asserting former Pendrell Corporation patents. Also in September, the PTAB instituted trial in IPRs against Quarterhill Inc. and an NPE related to PanOptis Equity Holdings LLC, and issued final decisions against private plaintiffs including General Patent Corporation.

The Patent Trial and Appeal Board (PTAB) saw activity in August 2018 involving a variety of frequent litigants. This included petitions for inter partes review (IPR) filed against two NPEs controlled by Fortress Investment Group LLC, INVT SPE LLC and Uniloc 2017 LLC, the latter of which has in recent months cofiled a barrage of lawsuits with subsidiaries of Australian NPE Uniloc Corporation Pty. Limited (Uniloc). The PTAB also instituted trial in August for IPRs against Uniloc 2017 and some of its campaign coplaintiffs, and in an IPR against an NPE controlled by patent attorney Brian Yates, whose US litigation has waned as he pursues a new patent licensing initiative through his company iPEL, Inc. Finally, the PTAB issued final decisions in August for IPRs against Uniloc, Empire IP LLC, and Quarterhill Inc.

The Federal Circuit has reversed a Patent Trial and Appeal Board (PTAB) ruling that cancelled three claims from a ContentGuard Holdings, Inc. digital rights management (DRM) patent, holding that the PTAB had incorrectly determined that the challenged patent qualified for covered business method (CBM) review. In a July 11 opinion, the court held for two CBM reviews filed by Apple and Google (CBM2015-00040, CBM2015-00160) that the Board had erred by ruling that the patent was a CBM patent because the claimed technology was “incidental to” or “complimentary to” a financial activity, a standard that the Federal Circuit had since rejected as overly broad in Unwired Planet v. Google.

The Patent Trial and Appeal Board (PTAB) had an eventful April, capped by two US Supreme Court decisions addressing inter partes review (IPR). While the Court found IPR constitutional in Oil States Energy Services, in its companion decision in SAS Institute, the Court also barred the PTAB’s practice of instituting trial as to a subset of the challenged claims (partial institution decisions). As a result, since those April 24 opinions, the PTAB has begun to institute trial for all challenged claims for IPR petitions where the petitioner is likely to prevail as to at least one claim (and for all petitioned grounds, a practice not required by SAS Institute). Among the affected IPRs instituted in late April were two against Lone Star Silicon Innovations LLC, while the PTAB saw IPR petitions filed in April against Oyster Optics, LLC and Uniloc Corporation Pty. Limited. The Board also issued final decisions throughout April in IPRs against ChriMar Systems, Inc.; Global Equity Management (SA) Pty. Ltd.; Papst Licensing GmbH & Company Kg; Skky, Inc.; and Uniloc.

In late March, the USPTO made public five patent assignments from various Pendrell Corporation subsidiaries to Uniloc Luxembourg S.A. This transaction appears to be the one that Pendrell disclosed in a February SEC filing—a divestiture it described as comprising “patents related to cellular and digital wireless devices and infrastructure” from multiple sources, including Electronics and Telecommunications Research Institute (ETRI), IBM, and Philips. Collectively, the transfers assigned over 445 assets to Uniloc, including patents now being asserted by the NPE in seven recently initiated litigation campaigns.

Memory Technologies LLC (MTL), a subsidiary of Pendrell Corporation, has filed suit against Kingston Technology (8:18-cv-00171), asserting eight patents from a larger portfolio acquired from Nokia early in 2013. MTL alleges that “as many as 82 of its patents belong to families with patents essential to various memory and electronic storage standards”, including the JEDEC eMMC standard and Secure Digital Association Physical Layer Specification (“SD Standard”). The complaint accuses Kingston of infringement through the manufacture and sale of certain SD cards and eMMC memory products, MTL further pleading that the defendant has been on notice of alleged infringement of the asserted patents since October 2013 but has not responded to repeated offers of a license under reasonable and non-discriminatory (RAND) terms. The new case follows a 2017 that saw Pendrell lose significant Federal Circuit appeals in its long-running campaign to enforce its digital rights management (DRM) portfolio, take steps to delist its securities from the NASDAQ exchange, and reportedly divest itself of a major patent portfolio.

The Patent Trial and Appeal Board (PTAB) saw 54 petitions for AIA review brought against NPEs in May, up from 20 such petitions filed in April. May PTAB filings included a resurgence in petitions against publicly traded NPEs, including Acacia Research Corporation; Pendrell Corporation; Quest Patent Research Corporation; VoIP-Pal.com, Inc.; Xperi Corporation (f/k/a Tessera Holding Corporation); and Wi-LAN Inc. (WiLAN) (which was renamed to Quarterhill Inc. on June 1). A variety of private litigants were also hit by PTAB petitions in May, including Blackbird Tech LLC, Global Equity Management (SA) Pty. Ltd., General Patent Corporation, Realtime Data LLC, and Uniloc Corporation Pty. Limited.

Wi-LAN Inc. (WiLAN) has announced a seismic restructuring of its business model, de-emphasizing patent licensing and refocusing on the acquisition of Industrial Internet of Things (IIoT) businesses. Monday’s announcement follows a year in which WiLAN actively acquired patent portfolios from operating companies, including Eastman Kodak, GlobalFoundries, and Panasonic, boosting its patent portfolio to over 11,000 assets. It also comes after several other public NPEs, including Acacia Research Corporation and Unwired Planet (now Great Elm Capital Corp.) have made similar moves to diversify their activities.

The Patent Trial and Appeal Board (PTAB) continued to see the filing of petitions for inter partes review (IPR) against publicly traded NPEs in March 2017, including Acacia Research Corporation; Finjan Holdings, Inc.; Pendrell Corporation; TiVo Corporation (formerly known as Rovi Corporation); and Wi-LAN Inc. (WiLAN). A variety of prolific, privately held NPEs were also targeted for IPR throughout March, including Blackbird Tech LLC, General Patent Corporation, IP Edge LLC, Realtime Data LLC, and Papst Licensing GmbH & Company Kg, along with several inventors and inventor-controlled NPEs and an assortment of other plaintiffs.