Jacob Schindler

IP Bridge has reportedly settled its patent dispute with Broadcom, the first result from the Japanese fund’s four known assertion campaigns in US courts. The Singapore-based chipmaker’s agreement to pay a licence fee also brings to an end a parallel litigation in China, according to Japanese media reports. That makes IP Bridge, which was set up with public and private sector backing in 2013, the latest non-practising entity to have been known to assert patents in China.

Broadcom was the second company targeted by IP Bridge litigation, after Chinese electronics maker TCL. The case filed in the Eastern District of Texas alleged infringement of six different patents, all of which previously belonged to Panasonic or NEC, both of which have worked with IP Bridge from its earliest days. Two of the patents have also been asserted in a pending case against OmniVision.

As this blog reported in March, the patents-in-suit have faced a slew of inter partes review requests, though not by Broadcom itself. TSMC, GlobalFoundries and ARM have teamed up to lodge 33 different challenges to the six rights since the case began. Nine IPRs filed in 2016 were instituted, but none have reached a final decision. Meanwhile, there are still 20 IPRs waiting for an institution decision. That certainly makes the timing of this settlement interesting.

A look at the IPR records on Lex Machina further reveals that both reviews initiated by ARM were settled on May 12th, even though one of them had been instituted. This may well indicate another licence agreement that IP Bridge has been able to conclude without asserting patents. Of course, given ARM’s relatively new Japanese ownership and IP Bridge’s mandate to support Japanese industry, it could be that one or both parties thought it best to quietly bury the hatchet.  

PTAB challenges to patents asserted by IP Bridge against Broadcom

US Patent Number

IPRs in 2016

IPRs in 2017

6,197,696

4 filed by TSMC, 4 instituted

8 filed by GlobalFoundries

6,538,324*

2 filed by TSMC, 2 instituted

4 filed by GlobalFoundries

7,126,174*

2 filed by TSMC, 2 instituted

4 filed by GlobalFoundries

8,354,726

2 filed by TSMC, 2 denied institution

1 filed by GlobalFoundries

RE41980

2 filed by TSMC, 2 denied institution

1 filed by TSMC

1 filed by GlobalFoundries

RE43729

1 filed by ARM, 1 instituted (settled)

1 filed by ARM (settled)

*Also asserted in litigation against OmniVision

The Nikkei report announcing the settlement with Broadcom (helpfully translated by Satoshi Watanabe at his blog) notes that the resolution ends patent suits in both the US and China. Back in February, US company Xilinx claimed that IP Bridge had threatened litigation in Beijing and Tokyo in the run-up to its US lawsuit. The confirmation that IP Bridge sued Broadcom in China suggests that it may well make good on its threat to add China assertions to its disputes with Xilinx and other players.

For Broadcom, the China suit may well have been the more concerning one. Goldman Sachs research in 2015 named both Broadcom and Avago (with which it merged in 2016) as among the technology companies with the largest revenue exposure to China (at 55% and 49% respectively). The partnerships it entered in 2015 with China’s HC3 Technologies and Inspur further underline the market’s importance to the chipmaker’s business.

While the full terms of the deal between IP Bridge and Broadcom have not been disclosed, the Nikkei report indicates that a licence fee was involved. If that is the case, it would have to be seen as a win for the Japanese fund, especially given the number of IPRs it is facing. If you throw in a potential settlement with ARM, this will give it a stronger hand in future negotiations with other potential licensees and an important validation for its strategy. In risk-adverse, non-confrontational Japan, that looks like a very big deal.