Acorn Semi, LLC Inter Partes Review Update v Samsung 1-16-2022
Welcome to the new IPHawk Patent Newsletter rebranded as “Patent Pending”. I will be writing about Litigation Finance, District Court Patent Litigation News, Key Decisions, New Patents Issued/Published, and PTAB decisions. If it involves IP or Patents and its interesting I will find it and cover it.
Inter Partes Review (IPR) Final Decisions at the USPTO PTAB were entered January 12, 2022 in the late afternoon with split decisions. The IPRs were filed by Samsung:
Acorn Semi LLC won a $25,000,000 jury verdict back on May 19, 2021. Final Judgment was entered on July 13, 2021 (Case 2:19-cv-00347-JRG Document #379:
Samsung has infringed Claim 13 of U.S. Patent No. 8,766,336; Claims 1 and 6 of U.S. Patent No. 9,461,167; Claims 6, 8, and 19 of U.S. Patent No. 9,905,691; and Claims 17 and 20 of U.S. Patent No. 10,090,395.
Samsung’s infringement was not willful.
Acorn is hereby awarded damages from and against Samsung and shall accordingly have and recover from Samsung, jointly and severally, the sum of twenty-five million United States Dollars and no cents ($25,000,000.00) as a lump-sum reasonable royalty.
Pursuant to 35 U.S.C. § 284 and Supreme Court guidance that “prejudgment interest shall ordinarily be awarded absent some justification for withholding such an award,”1 the Court awards pre-judgment interest applicable to all sums awarded herein, calculated at the 5-year U.S. Treasury Bill rate, compounded quarterly, from the date of infringement through the date of entry of this Judgment.
Pursuant to 28 U.S.C. § 1961, the Court awards post-judgment interest applicable to all sums awarded herein, at the statutory rate, from the date of entry of this Judgment until paid.
Pursuant to Federal Rule of Civil Procedure 54(d), Local Rule CV-54, and 28 U.S.C. § 1920, Plaintiff Acorn Semi, LLC is the prevailing party in this case and shall recover its costs from Samsung, jointly and severally.
I am really only interested in the IPR Final Decisions involving the patents and specific claims at trial and final judgment:
Patent 8,766,336 claim 13 found unpatentable on Final Decision at the PTAB.
Patent 9,461,167 claims 1 and 6 found unpatentable on Final Decision at the PTAB.
Patent 9,905,691 claims 6, 8, and 19 have NOT been found unpatentable on Final Decision at the PTAB.
Patent 10,090,395 claims 17 and 20 IPR Final Decisions are pending with a due date of the middle of February 2022.
My question is what will the Court of Appeals for the Federal Circuit (CAFC) do with case? Will the case be sent back to District Court in order to recalculate damages with two patents with Final Judgment claims found invalid, one patent with Final Judgment claims not found invalid, and one Final Decision remaining pending? Will there be a race to finality between the District Court case and the PTAB Inter Partes Review proceedings? Will the proceedings be merged and become parallel proceedings? I have not seen a notice of appeal filed and Motion for Attorney Fees and JMOLs have been filed and briefed.
I will include the last patent’s Final Decision next month in a future “Patent Pending” article.
Ascenda Law Group, PC is the firm who prosecuted the patents on behalf of Acorn Semi LLC.
At the PTAB Laurence & Phillips IP Law and Ascenda Law Group represented the patent owner. Desmarais LLP represented petitioner Samsung.
In District Court in the Eastern District of Texas, Acorn Semi is represented by Hueston Hennigan LLP and Smith Weber LLP. Samsung is represented by DLA Piper US LLC.