Jack Ellis

Japanese sovereign patent fund (SPF) operator IP Bridge kicked off its third litigation campaign last week, this time filing suit against Californian semiconductor company OmniVision Technologies in the US district of Delaware.

The lawsuit follows on from earlier cases filed against China’s TCL – also in the District of Delaware – and Broadcom, in the Eastern District of Texas.

OmniVision – which specialises in developing image sensor chips – is alleged to have infringed the following 10 US patents owned by IP Bridge:

  • US patent 6538324 – ‘Multi-layered wiring layer and method of fabricating the same’
  • US patent 6709950 – ‘Semiconductor device and method of manufacturing the same’
  • US patent 6794677 – ‘Semiconductor integrated circuit device and method for fabricating the same’
  • US patent 7126174 – ‘Semiconductor device and method of manufacturing the same’
  • US patent 7279727 – ‘Semiconductor device’
  • US patent 7709900 – ‘Semiconductor device'
  • US patent 8084796 – ‘Solid state imaging apparatus, method for driving the same and camera using the same’
  • US patent 8106431 – ‘Solid state imaging apparatus, method for driving the same and camera using the same’
  • US patent 8378401 – ‘Solid state imaging apparatus, method for driving the same and camera using the same’
  • US patent RE41867 – ‘MOS image pick-up device and camera incorporating the same’

All bar one were assigned to IP Bridge by Panasonic and its affiliates; the ‘324 patent was assigned by NEC. The SPF also claims infringement of the ‘324 and ‘174 patents in its litigation with Broadcom.

Since filing its first known US lawsuit against TCL in July last year, IP Bridge has shown itself to be willing to litigate in pursuit of its objectives. Founded in 2013 with a mix of private and public sector funding, it initially avoided confrontation and focused on aggregating patents and monetising them through ‘carrot licensing’ and open innovation programmes where possible. That it would eventually have to turn to litigation in order to generate larger returns was widely expected, however; and with three US lawsuits currently in progress, it would seem that the SPF now considers assertion as a core part of its strategy.

IP Bridge’s French counterpart, France Brevets, has also openly used litigation to achieve its aims. Launched in March 2011, it was the first SPF to file for patent infringement when it sued HTC and LG Electronics in both East Texas and Germany back in late 2013; the latter company settled the following September in what one of the fund’s executives described as a “milestone” for the SPF. France Brevets later prevailed over HTC in Germany, sued Samsung Electronics, reached agreement with Intel and signed up Sony as a licensee, apparently without litigation.

South Korea’s Intellectual Discovery (ID) was the first SPF on the scene when it was established in 2010. Its progress is a little less clear than its French and Japanese peers, at least in part because it does not seem to have filed any lawsuits in its own name. That said, it does appear to be connected to US litigation launched in July last year against a host of computer game developers and may be partnering with Korean operating companies to assist them in monetising their patents. We also know that it has been involved in various IP-based venturing and lending activities; and, speaking at IPBC Asia 2014 in Shanghai, former ID executive Choongsoo Park told delegates that the firm had already “generated substantial revenues from licensing and sales”.

In any case, what is now obvious is that these three entities – the first generation of SPFs – have entered the next phase of their business cycles. After several years concentrating on acquiring assets and attracting additional investment, the time has now come for them to exploit their portfolios, generate returns for their investors and – most importantly of all – achieve what they originally set out to do, which is to secure some level of economic advantage for their respective countries’ business communities on the back of the R&D they have done and the patents they have created. While there have been some early successes – as France Brevets has shown – it is still too early to say if the SPF project on the whole has proved to be an effective and economically worthwhile one. The judgment call on that point will have to be made further down the road. Meanwhile, more recent entrants into the SPF fold - such as China's Zhigu and South Korea's KDB Infra IP Capital - will be keeping a close watch as they try to plot out their own forward trajectories.