United States: IP Bridge Returns To US Litigation

IP Bridge, Inc. subsidiary Godo Kaisha IP Bridge 1 has sued Western Digital ( 1:24-cv-00342) and Seagate Technology ( 1:24-cv-00341) in separate District of Delaware complaints. Three patents generally related to a "magnetoresistive device comprising a magnetic tunnel junction structure", based on a magnesium oxide layer, are aimed at the provision of a wide array of memory devices, including "read/write heads" for hard disk drives (HDDs), as well as HDDs incorporating such read/write heads. IP Bridge pleads that Seagate is familiar with the asserted portfolio based on prior litigation in Japan.

In that complaint, IP Bridge pleads that Seagate became aware of the patents now in suit (7,844,403; 8,319,263; 11,737,372) through various means, including citation to the published work of sole inventor Shinji Yuasa in the area of magnetic tunnel junctions (MTJs) and to published applications during prosecution of its own patents. IP Bridge also pleads that the National Institute of Advanced Industrial Science and Technology (AIST), together with the Japan Science & Technology Agency (JST), sued Seagate in Japan over a Japanese counterpart (JP 4,963,744), leading to the following alleged circumstances:

In May 2017, a Japanese court found that three Seagate HDDs infringed the JP '744 patent. By 2018 the parties to that litigation were negotiating a license to resolve the dispute. As part of those negotiations, the prior owners discussed various options with Seagate for a resolution, including Seagate taking a license to all patents worldwide in the MTJ Patent Portfolio (which would have included U.S. patents like the Asserted patents), or a license to just patents in certain countries like Japan. As a result of those negotiations, Seagate learned of the Asserted Patents and other pending U.S. applications within in the portfolio no later than sometime in 2018.

IP Bridge represents that "[i]n March 2019, Seagate took a license to the prior patent owners' Japanese portfolio, but did not license the US counterparts", including the asserted patents. Western Digital is alleged to have knowledge of these patents based on the citation to Yuasa's papers and published patent applications, dating back to 2022.

The asserted patent family has issue dates ranging from February 2011 through August 2023, with an earliest estimate priority date in March 2004 (based on Japanese counterparts). Prosecution of multiple related applications continues before the USPTO. AIST and JST assigned the family to IP Bridge in December 2021.

IP Bridge, Inc. was formed in Japan in July 2013, purportedly to further the goal of its principal investor of "open innovation" in Japan. That investor is Innovation Network Corporation Japan, Inc., a public-private partnership with publicly disclosed investments from various technology companies, including Canon, Hitachi, Mitsubishi, Panasonic, Sharp, Toshiba, and Toyota, among others. An apparent former executive with Sanyo and Panasonic, the company's founding president and CEO Shigeharu Yoshii characterized his company as an NPE, but not a patent assertion entity, that will nonetheless assert its intellectual property rights as necessary. Yoshii left his position in 2018, with Minoru Fujiki taking over as CEO since. IP Bridge 1 was also formed in Japan.

IP Bridge has litigated three previous campaigns in the US, the most recent ending in February 2023 after separate settlements with Ericsson and Nokia. There, IP Bridge asserted wireless communications patents declared essential to the practice of the LTE standard and/or to the practice of the 5G standard, with infringement allegations targeting the provision of products, including base stations, compliant with either of the two standards. For additional background, see "In Suits Against Ericsson and Nokia, IP Bridge Looks to Proceed on Standard Essentiality Theory of Infringement" (June 2021).

Wolf, Greenfield & Sacks, P.C. and Young Conaway Stargatt & Taylor, LLP provide representation for IP Bridge. The cases have been assigned to District Judge Richard G. Andrews. 3/15, District of Delaware.

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