After a purported five years of unsuccessful negotiations, Sol IP, LLC has thrown the patent book at Qualcomm (6:21-cv-00270), accusing the chipmaker of infringing 28 patents, broadly directed to wireless communications, including LTE, 5G, and Wi-Fi technologies. The plaintiff pleads that it is "an intellectual-property licensing company organized and existing as a limited liability company under the laws of Virginia" that "holds an exclusive license to the Asserted Patents from" Electronics and Telecommunications Research Institute (ETRI), a South Korean research institution, "which transferred to Sol IP all substantial rights in those patents".
Currently available USPTO assignment records do not reflect ownership by Sol IP of any US patents, including the more than two dozen asserted assets (list available here). Public records identify two entities named Sol IP, both with principal places of business in Vienna, Virginia-one having been formed in Virginia in January 2015, with subsequently filed records listing Choongsoo Park as its member; and one formed in Texas in June 2015 with Park as its managing member. As noted, the plaintiff is apparently the Virginia entity. Further background on Park, a former Fish & Richardson associate and current executive vice president of Intellectual Discovery Co., Ltd., as well as background concerning litigation by other related NPEs, is reported here.
Sol IP launched this litigation campaign in December 2018 with suits against wireless carriers AT&T, Sprint (acquired by Deutsche Telekom in April 2020), and Verizon in the Eastern District of Texas. In March and November 2019, respectively, Ericsson and Nokia successfully moved to intervene in the action as the designers and manufacturers of some of the accused products. Sol IP has pleaded throughout that ETRI, as a member of the Telecommunications Technology Association of Korea, has declared the asserted LTE patents as essential to "the LTE standards".
Following a series of claim construction rulings, Ericsson was dismissed with prejudice (in light of settlement) in February 2020. The parties then filed summary judgment motions on a variety of issues, including patent validity and eligibility, infringement, and various evidentiary issues, with some still pending by the time that the remaining defendants were dismissed in May. Among the unresolved issues was a motion to dismiss for lack of standing brought by AT&T, Sprint, Verizon, and Ericsson, which argued that ETRI had retained substantial rights in the patents, leaving exclusive licensee Sol IP with a mere "hunting license". In January 2020, Magistrate Judge Roy S. Payne recommended that the motion be denied.
The new suit against Qualcomm has been assigned to District Judge Alan D. Albright. 3/17, Western District of Texas.
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