XR Communications, LLC (d/b/a Vivato Technologies) has filed more than a dozen new cases, one each against Alphabet (Google), Amazon (eero), Apple, ASUSTek, Cisco, Comcast, CommScope (ARRIS Solutions), and Samsung in the Western District of Texas; against D-Link, Hon Hai Precision Industry (Belkin), HP Enterprise (HPE) (Aruba Networks), NETGEAR, and Ubiquiti Networks in the Central District of California; and against CommScope (Ruckus Wireless) in the Northern District of California. XR Communications targets various wireless networking capabilities of certain defendant devices—including access points, controllers, routers, and streaming devices—with overlapping subsets of four patents. The new wave arrives as the prior, 2017 wave of litigation from the same plaintiff comes back to life at the conclusion of a set of inter partes reviews (IPRs) of the three patents asserted previously.
The PTAB canceled all asserted claims of two of those three patents (claims 1-2, 4-7, 17-18, 20-23, 33, 35-38 of the 7,062,296 patent and claim 16 of the 7,729,728 patent), leaving every claim of the third patent (6,611,231) undisturbed after considering three petitions for IPR against it. (Cisco appealed from one of those proceedings; in a November 2020 opinion, the Federal Circuit affirmed the PTAB's final written decision that claims 1-9 and 12 of the '231 patent were not proven obvious through the course of the IPR (2020-1105).) The plaintiff re-asserts the '728 patent in several of the new complaints, highlighting claims 3-5 and 12 this time, as purportedly applied to various networking devices that support MU-MIMO technologies, including those that comply with the 802.11ax or Wi-Fi 6 standard.
As noted, XR Communications launched this campaign in April 2017, hitting defendants Aruba, ASUSTek, Belkin, Cisco, D-Link, NETGEAR, Ruckus Wireless, and Ubiquiti, along with Extreme Networks, Digital Products International (NEWO d/b/a Amped Wireless), and Xirrus, with first complaints, all but one in the Central District of California. A quick dismissal ended the Xirrus case in the Southern District of California, while a stay to await the outcomes of the nine IPRs stopped the remaining litigation. A 2018 set of suits was filed in light of Brocade's sell-off of Ruckus Wireless to ARRIS in the wake of its own acquisition by Broadcom, to be followed by CommScope's pickup of ARRIS. Coverage of that set of complaints and motions to transfer can be read here, with the Ruckus Wireless case ultimately landing before the Northern District of California, with a suit against ARRIS. (Note, however, that XR has now sued Ruckus in Northern California, hitting ARRIS in West Texas instead.)
Three other wireless communications patents are asserted across this latest round of complaints as well (8,289,939; 10,594,376; 10,715,235), with an assertion grid for the whole campaign available on RPX Insight. Generally related to coordinating communications across multiple "access points", the '939 patent comprises a family of one, issuing in October 2012 with estimated priority dating back to November 2002 (based on the filing of a provisional application). XR Communications targets certain networking devices with the '939 patent—for example, as to Aruba, targeting access points, routers, and controllers that support ArubaOS 8 and offer "Adaptive Radio Management AirMatch" features providing automatic RF optimization; and as to NETGEAR, similar product sets that include "Smart WiFi", "Auto-Radio Management", or "automatic channel allocation" features.
The '376 and '235 patents belong to the same seven-member family as the '296 and '728 patents, the '376 patent issuing in March 2020 and the '235 patent issuing last July. Prosecution of at least one related application continues before the USPTO; the family also claims priority dating back to November 2002 (based on the filing of a different provisional application). Infringement allegations with respect to the '376 patent roughly track those of the '728 patent (various networking devices that support MU-MIMO technologies, including those that comply with the 802.11ax or Wi-Fi 6 standard), while the plaintiff accuses Amazon, Apple, ASUSTek, and Samsung of infringing the '235 patent, through the provision of additional Wi-Fi devices that support MIMO and/or MU-MIMO: certain Fire TV and Echo Show-series devices (Amazon); a long list of Apple TV, iMac, iPhone, iPad, and MacBook products (Apple); and different lists of smartphones, tablets, and laptops (ASUSTek and Samsung, respectively).
The '231 patent issued in August 2003, the earliest member of a three-patent family with an estimated priority date in April 2001. The patent's named inventors are Bob Conley and Skip Crilly, two former HP/Agilent Laboratories engineers who formed Vivato (f/k/a Mabuhay Networks) with Agilent colleague Jim Brennan and Ken Biba (the third named inventor), apparently a former fraternity brother of Crilly. The company developed Wi-Fi phased array antennas under the tagline "Wi-Fi Everywhere" but ceased operations in 2005. It appears that Christopher R. Ambrose, an Oregon attorney, and Allan Rakos, Vivato's apparent COO, formed Global Solutions Engineering, LLC (GSE) in Oregon in September 2005, GSE agreeing to purchase the assets of the failing Vivato. GSE merged into Wayout Wireless, LLC, another Oregon entity, formed by Rakos in June 2006, which changed its name twice, first to Vivato Networks, LLC (in September 2006) and then to Vivato Networks, Inc. (one year later). GSE assigned its rights under the asset purchase agreement to Wayout/Vivato Networks, which completed the deal, purchasing the patents (and other, minor assets) for $1.4M.
Wayout/Vivato Networks granted Aequitas Capital, an Oregon investment firm, a security interest in the patents, on which Wayout defaulted in April 2009, triggering a sale of the patents by auction, which an Oregon sheriff conducted, overseeing the transfer of the former Vivato patent portfolio to Aequitas for $1M. In December 2009, Aequitas, years before it imploded amid press reports that it had been running a Ponzi scheme, assigned the portfolio to XR Communications, a company formed in Delaware that same month. XR Communications is of uncertain management and claims now to be doing business as "Vivato". A stale public website (bearing 2011 copyright) states that "Vivato Technologies was founded to leverage the technology and IP (12+ patents) of a $100M venture backed company (Vivato Inc.) to service the growing demand for bandwidth generated by these devices through the deployment of 'Carrier-Class' Wi-Fi capable of delivering wireless connectivity directly to end users at distances covering miles instead of feet".
While XR Communications filed an initial disclosure in some of its cases that identified only the actual parties as having an interest in its outcome, the plaintiff subsequently moved for permission to file a certificate of interested parties under seal, arguing the lack of public interest in its contents, which were provided to help the court assess potential conflicts. The court granted the motion. In its new California cases, XR Communications has yet to file its certificates of interested parties, in favor of the less stringent corporate disclosures (indicating that it has no parent and that no publicly held corporation owns ten percent or more of its stock).
Biba appears now to be a managing director with Novarum, a wireless networking consultancy. Crilly holds himself out as an "volunteer science outreach ambassador" with the National Radio Astronomy Observatory, and Conley appears to be an adjunct faculty member with Gonzaga University. Brennan is one of two named inventors on the '296 and '728 patents, which, as noted, are early members of the family that has since expanded to included seven members, the more recent additions to which name a much longer list of inventors. After Vivato, Brennan reports having had positions with various companies, including Microsoft, and RealNetworks, before his current position as principal with Rockhopper Software in Seattle.
Throughout its complaints, the current XR Communications, identifying itself as "Vivato", pleads that it "was founded in 2000 as a $80+ million venture-backed company with several key innovators in the wireless communication field including Siavash Alamouti, Ken Biba, William Crilly, James Brennan, Edward Casas, and Vahid Tarokh, among many others. At that time, and as remains the case today, 'Wi-Fi' or '802.11' had become the ubiquitous means of wireless connection to the Internet, integrated into hundreds of millions of mobile devices globally. Vivato was founded to leverage its talent to generate intellectual property and deliver Wi-Fi/802.11 wireless connectivity solutions to service the growing demand for bandwidth". XR Communications claims to have "over 400 deployments globally", with a patent portfolio that "includes over 17 issued patents and pending patent applications".
NEWO filed a motion seeking to have the suit filed against it severed and stayed pending resolution of the other cases. The defendant argued that it is "trapped in expensive patent litigation out of all proportion to its small size and limited resources", noting that even a generous estimate of the damages that might be owed to XR for NEWO's alleged infringement amounts to "roughly $120,000 for the past two years", which falls far below the range provided to the court of "$24 million in damages in some cases to over a hundred million in other cases". The motion goes on to recount NEWO's attempts to settle the case, presenting a firm offer in November 2017, to which XR did not respond substantively until NEWO filed its motion to sever. In support of its motion, NEWO further represents that the "accused technology is implemented in third-party chips" in light of recent subpoenas purportedly served on Annapurna Labs, Broadcom, Marvell, MediaTek, Qualcomm, and Quantenna Communications. The NEWO motion was (at least temporarily) mooted by the broader stay.
The two stays have been lifted in the prior cases in this campaign, those against ARRIS and Ruckus in the Northern District of California, where District Judge William H. Orrick is presiding, and those against the remaining defendants in the Central District of California, before District Judge David O. Carter. The parties submitted joint status reports this past February, after the dust settled from Cisco's unsuccessful appeal to the Federal Circuit of the PTAB's final written decision upholding the validity of the '231 patent. The reports promise submission of competing scheduling proposals to each court. The cases filed in the district new to the mix, the Western District of Texas, have been assigned to District Judge Alan D. Albright.
Russ, August & Kabat represents XR Communications in the litigation. 6/16, Alphabet (Google) (6:21-cv-00625), Amazon (eero) (6:21-cv-00619), Apple (6:21-cv-00620), ASUSTek (6:21-cv-00622), Cisco (6:21-cv-00623), Comcast (6:21-cv-00624), CommScope (ARRIS) (6:21-cv-00621), Samsung (6:21-cv-00626), Western District of Texas; 6/16, D-Link (8:21-cv-01063), Hon Hai Precision Industry (Belkin) (2:21-cv-04914), HPE (Aruba Networks) (2:21-cv-04912), NETGEAR (2:21-cv-04942), Ubiquiti Networks (8:21-cv-01065), Central District of California; 6/17, Ruckus Wireless (3:21-cv-04679), Northern District of California.
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