Jacob Schindler

Japan’s IP Bridge has had a torrid start to the year as four semiconductor companies teamed up to hit the patent fund operator with 24 inter partes reviews (IPRs) at the USPTO's Patent and Trial Appeal Board (PTAB) in the space of just one month. The new petitions complicate three of the NPE’s four active US patent assertion campaigns – those against Broadcom, Omnivision and Xilinx – and have made crystal clear that the US patent litigation environment is much less hospitable to patent plaintiffs than it was at the time the public-private entity was established.

According to Lex Machina, during the period between 17th January and 17th February, IP Bridge was on the receiving end of 18 IPRs filed by GlobalFoundries, 4 filed by Xilinx and one each from Taiwan Semiconductor Manufacturing Company (TSMC) and ARM.

The Xilinx petitions came on the same day that the US chip company made a complaint for declaratory judgment of patent non-infringement covering 12 patents. The San Jose-based company also challenged the validity of four of those patents. IP Bridge had earlier sued Xilinx in the Eastern District of Texas over two separate rights, neither of which is being challenged at the PTAB.

As for the other three petitioners, none of them has been involved in litigation with IP Bridge thus far. But their IPR filings all targeted one of the six semiconductor-related patents that IP Bridge is asserting against Broadcom in a case that was filed last February. They are the second wave of attacks on those patents, after TSMC filed 12 IPRs in June and July 2016. Once the institution decisions came down in January – with eight taken up and another four denied – GlobalFoundries entered the fray with its 18 petitions targeting the same rights. In all, the six patents-in-suit against Broadcom – all originally assigned to Panasonic or NEC – have faced 33 separate IPRs.

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

1 filed by ARM

*Also asserted in litigation against OmniVision

Earlier this month, Patexia put together a table of the top 10 patent owners facing the most PTAB challenges between 2012 and 2016, and rounding out the list at number 10 was Clouding IP which has faced 33 challenges to 13 of its patents. Taking the first couple months of 2017 into account, the 37 total cases faced by IP Bridge might well put it among the top targets. In addition to frustrating several of IP Bridge’s litigation efforts, the effect of so many IPRs in the span of just a year must also create some level of financial burden.

This is the tough reality of US patent litigation. There is no sign that it is going to change anytime soon, especially with Michelle Lee staying on as the Trump Administration’s USPTO Director. When IP Bridge was established in 2013, the effects of the AIA were not fully appreciated, but now it’s clear that many patent assertion entities are shifting their focus to places like Germany. As far as we know, though, all of IP Bridge’s enforcement efforts to date have been in the US courts. The firm has taken an all-of-the-above approach to its mission of extracting more value from Japanese-owned patent rights, but in terms of enforcement it might be time to consider venues outside of the US.

Last month, this blog reported on the hardball tactics allegedly used by IP Bridge in its negotiations with Xilinx. According to the latter, the Japanese company threatened suits in Tokyo, Beijing and even Guam, saying there are “too many patents, too many claims and too many jurisdictions to defend for a battle to make any sense”. We’ll see what happens with the slew of IPRs it’s defending in the US, but it would be no surprise to see IP Bridge look to Europe, Japan or even China for its next assertion opportunity.