In December 2016, Fundamental Innovation Systems International LLC (FISI) began targeting mobile device manufacturers with a series of Texas lawsuits asserting USB charging patents acquired from BlackBerry in late 2015. As FISI's litigation proceeds in the US, documents recently filed in the District Court of Mannheim now indicate that the German leg of the NPE's campaign also remains active, with hearings held earlier this month in cases against Samsung and electronics retailers Cyberport GmbH and notebooksbilliger.de AG. Other filings show that the asserted patents have been targeted in a variety of invalidity proceedings, both in Germany and before the European Patent Office (EPO).
FISI's litigation in Germany has involved two European patents (EP 1 595 324, EP 1 798 835), both of which relate to charging and power delivery for mobile devices. Filed documents indicate that FISI has brought at least one case asserting the '324 patent, filed against Samsung in the District Court of Düsseldorf (4 O 48/17). Meanwhile, the NPE has asserted the '835 patent in at least four cases filed in the District Court of Mannheim: one against Huawei (2 O 210/16), in which a hearing was held on October 17, 2017; and three against Samsung (7 O 87/17), Cyberport (7 O 84/17), and notebooksbilliger (7 O 85/17), for which hearings were held on March 9, 2018.
Both patents have also been subjected to validity challenges. The '835 patent was hit by a nullity (invalidity) action filed in Germany's Federal Patent Court (Bundespatentgericht) on April 18, 2017; available records do not specify the name of the filing party or the current status of that action. (In Germany, patent litigation is bifurcated, with infringement and invalidity claims brought in separate actions.) Meanwhile, EPO records also indicate that in July 2017, Cyberport, Samsung, and notebooksbilliger initiated oppositions against the '324 patent. (An opposition is a type of validity challenge that is roughly analogous to US post-grant review; both can be brought up to nine months after the issuance of the challenged patent. In this instance, the challenges to the '324 patent were filed at the very end of this period, as the patent issued in October 2016.) Another July 2017 opposition was filed against the '324 patent by Katrin Niederl, a Dresden, Germany-based family and inheritance law attorney. Niederl is one of two founding partners of law firm Noltemeier Niederl; she does not appear to otherwise be involved in issues related to patent law.
Among the grounds for invalidity asserted in those opposition proceedings, which seek the revocation of the '324 patent in its entirety, are lack of an inventive step, lack of enablement, lack of novelty, and extension of scope (with the challengers arguing that the claims of the final patent, as amended from the original application through the removal of certain key limitations, impermissibly extend the scope of the claims beyond the original disclosure). Filings by Cyberport and notebooksbilliger state that each company coordinated with unspecified "other opponents" of the '324 patent for their oppositions; it is not clear if those other opponents include Samsung or Niederl. European Patent Register data indicates that FISI filed a reply to one or more of the notices of opposition against the '324 patent on January 24, 2018.
FISI acquired the '835 patent and the application that would later issue as the '324 patent from BlackBerry in a November 2015 transaction that included a total of 158 patent assets, including 56 US assets and a variety of international assets, including European patents and applications as well as assets from Australia, the UK, France, and Singapore. The terms of that acquisition were not made public at the time, but filings in a subsequent lawsuit—brought against IP consulting firm Ocean Tomo, LLC and certain executives by the firm's former managing director, Michael Friedman—revealed that the assignment resulted from a multi-million dollar deal between Blackberry and Centerbridge Partners. Friedman's complaint alleges that Ocean Tomo withheld a bonus payment of over $922K, under the alleged pretext that he had violated his fiduciary duty with respect to Ocean Tomo's role in the BlackBerry-Centerbridge deal.
See RPX Insight for more information on recent developments in FISI's US litigation, including the NPE's active district court cases against Huawei, LG Electronics, Samsung, and ZTE and two 2018 waves of inter partes reviews against the patents-in-campaign.
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