By John Presper

On May 24, 2022, ALJ Cameron R. Elliot issued the public version of Order No. 27 granting-in-part Respondents Amazon.com, Inc.; Dell Technologies, Inc.; EMC Corporation; Lenovo Group Ltd.; Lenovo (United States) Inc.; LG Electronics Inc.; LG Electronics USA, Inc.; Motorola Mobility LLC; Samsung Electronics Co., Ltd.; and Samsung Electronics America, Inc.’s (“Respondents”) motion for summary determination that Complainant Sonrai Memory Ltd. (“Sonrai”) lacks standing to assert U.S. Patent No. 7,159,766 (“766 patent”) due to that patent’s unenforceability, and that U.S. Patent No. 8,193,792 (“792 patent”) is invalid as indefinite.

By way of background, this investigation is based on an August 2, 2021 complaint filed by Sonrai  alleging a violation of section 337 by Respondents in the unlawful importation and/or sale in the U.S. of certain laptops, desktops, servers, mobile phones, tablets, and components thereof by reason of infringement of certain claims of the ’766 patent, the ’792 patent, and U.S. Patent No. 7,325,733.  See our September 3, 2021 post for more details regarding the complaint and Notice of Investigation.

According to the order, the original assignee of the ’766 patent, Standard Microsystems Corporation, filed two patent applications having identical specifications, one that eventually issued as the ’766 patent and one that eventually issued as U.S. Patent No. 7,086,583 (“583 patent”).  The ’583 patent issued while the ’766 patent’s application was pending, and the examiner of the ’766 patent thus requested the filing of a terminal disclaimer, which was filed on September 21, 2006 and disclaimed that part of the ’766 patent’s term extending beyond the expiration date of the ’583 patent.  The terminal disclaimer also stated that the ’766 patent “shall be enforceable only for and during such period that it and [the ’583 patent] are commonly owned.”  Both patents were assigned to Microchip Technology Incorporated (“Microchip”) in 2012 as a result of a corporate merger.  On December 20, 2019, Microchip assigned Sonrai certain patents pursuant to a patent sale and assignment agreement.  The ’766 patent was recited in the agreement but the ’583 patent was not.  On February 7, 2022, after Respondents notified Sonrai of their contention that the two patents were not commonly owned, and two days before the deposition of Sonrai’s corporate representative, Sonrai and Microchip executed an addendum to the agreement that purports to “clarify” that the agreement “includes” the ’583 patent.  The addendum was filed with the USPTO on April 15, 2022, after Respondents filed their motion.

In addition to arguing that the ’766 patent was unenforceable between December 2019 and April 2022, Respondents also asserted that (1) because Sonrai owned the ’766 patent but not the ’583 patent at the time it filed the complaint, the ’766 patent was unenforceable at that time; (2) because the ’766 patent was unenforceable at that time, Sonrai lacked standing to assert infringement of the ’766 patent in this investigation; (3) Sonrai’s subsequent efforts to establish standing are ineffective; and (4) the ’766 patent therefore must be terminated.  ALJ Elliot found that “if Sonrai owned the ’766 patent but not the ’583 patent between December 2019 and February 2022, thus rendering the ’766 patent unenforceable at the time the investigation began, then the ’766 patent must be terminated.”  Although the parties “vigorously dispute[d]” this question, the ALJ determined “there is no genuine issue of material fact on this point” because “it is undisputed that the Assignment says nothing about the ’583 patent, so the ’583 patent was not assigned along with the ’766 patent and the ’766 patent was thereby rendered unenforceable.”  Accordingly, Respondents were entitled to summary determination that the ’766 patent must be terminated from the investigation.

Regarding the alleged indefiniteness of the ’792 patent, Respondents (and the Commission Investigative Staff) argued that the “circuit section” limitation in means-plus-function claim 1 is indefinite because the specification recites insufficient structure to perform the required function of “transition[ing] from [] operating mode to a sleep mode, the transition comprising deactivation of inputs of the circuit section.”  Viewing the evidence in the light most favorable to Sonrai, the ALJ determined there is a sufficient dispute between the parties’ technical experts that this issue should be heard at the evidentiary hearing.  Therefore, this portion of Respondents’ motion was denied.