Following similar suits filed in May against AMD, MediaTek, and Samsung, plaintiffs Continental Circuits LLC (as patent holder) and Continental Circuits of Texas LLC (as exclusive licensee) have sued Apple ( 6:21-cv-01049) and TSMC ( 2:21-cv-00383) over a group of expired patents generally related to circuit boards. This campaign made headlines last year when a judge in the District of Arizona issued an order granting in part a motion filed by defendants Intel and Ibiden to compel litigation funding discovery.

The same four patents at issue in the suits filed earlier this year against AMD, MediaTek, and Samsung ( 7,501,582; 8,278,560; 8,581,105; 9,374,912) are asserted against Apple (sued in the Western District of Texas) and TSMC (the Eastern District of Texas). They generally relate to circuit boards with a "roughened surface structure" to facilitate joining layers in a multilayer electrical device. The defendants are accused of infringement through the provision of various Apple processors manufactured by TSMC and incorporated into devices (e.g., cellphones and tablets) sold "during the terms of the Patents-in-Suit".

The NPEs' earlier filings did not name TSMC as a defendant; however, in addition to targeting Samsung mobile processors, the May complaints called out certain AMD and MediaTek processors allegedly manufactured using "TSMC's standard processes" and incorporated into various devices (e.g., computers, laptops, mobile phones, servers, tablets, TVs, etc.) sold "during the terms of the Patents-in-Suit". As of the publication date of this article, all three cases are active in the early stages of litigation, Samsung having filed an answer this week and AMD's response to the plaintiffs' complaint due, by extension, on October 26. In the case against MediaTek, an attempt to effect service on the Taiwanese defendant appears ongoing.

This campaign was initiated with a 2016 suit by Continental Circuits (the Arizona patent owner) against Ibiden and Intel for alleged infringement of six patents, the four now again in suit, as well as two related patents ( 6,141,870; 6,700,069). The original development work for the family was conducted by MicroVia (f/k/a Continental Circuits, Inc.), a Florida company that produced printed circuit boards, including, according to the NPE's complaint, for Intel and others, before that company's bankruptcy in the late 1990s. The Ibiden/Intel complaint alleged that around 1997, a sales rep with the company, Jeff Long, established a secret relationship with Ibiden, shared the technology underlying the asserted patents, which issued later, and was quickly terminated. The plaintiff further pleaded that, with Long's help, business was directed away from MicroVia to Ibiden and that Intel intensified its supplier relationship with Ibiden.

During the course of MicroVia's bankruptcy proceeding, the company's pending patent application was assigned, pursuant to court order, to First Union National Bank (later acquired by Wachovia, which was later acquired by Wells Fargo). In April 2000, First Union assigned rights in the assets to Peter Trzyna, a long-time patent lawyer based in Chicago, Illinois, and the patents themselves began issuing, to Trzyna, in November 2000. The '560 and '105 patents issued in 2012 and 2013, respectively, directly to the named inventors (four former MicroVia employees); their assignment histories suggest a subsequent court order was required to perfect Trzyna's sole ownership. The rest of them issued, through 2016, directly to Continental Circuits.

After bouncing to and from a trust that he appears to have controlled, Trzyna assigned the patents-in-suit to Continental Circuits in February 2016, roughly one month after he formed the NPE in Arizona. State corporate records identify Trzyna as a member of Continental Circuits, and the company's manager is identified as Chicago Harbor Innovation Producers, LLC, an Illinois entity formed in May 2016 that Trzyna also manages.

In an August 2017 order, District Judge David G. Campbell resolved disputed constructions for terms from the asserted patents, prompting the parties to stipulate to noninfringement under the court's reading in order to facilitate appeal. In early 2019, the Federal Circuit reversed the district court's claim constructions—vacating that stipulation of noninfringement—and remanded for further proceedings. (Intel's October 2019 petition for US Supreme Court review was denied in December 2019.) The case proceeded into discovery, which prompted a notable fight over the disclosure of certain information related to funding of the litigation by a third party.

As RPX has previously reported, in 2020, Ibiden and Intel sought production of any final litigation funding agreements between Continental Circuits and any third-party funders; the identities of all persons or entities with a fiscal interest in the outcome of the litigation; and the identities of any potential litigation funders who declined to provide funding after being approached by the plaintiff or Trzyna.

In a January 2021 order, District Judge David G. Campbell granted the defendants' second request (for the identities of all persons or entities [other than counsel] with a fiscal interest in the outcome of the litigation), finding that "the fact of the funding agreements' existence does not disclose attorney mental impressions and therefore is not shielded from discovery by the work product protection for intangible information".

However, Judge Campbell denied the defendants' request as to categories (1) and (3). With respect to the defendants' request for production of any final litigation funding agreements between Continental Circuits and any third-party funders, the court rejected the defendants' arguments that the plaintiff had waived any work product claim over any funding agreements, including by failing to include any agreements in its privilege log. As to the defendants' third request, the court found that the defendants had not overcome the work protection provided by Rule 26(b)(3) by showing a "substantial need" for the materials sought—i.e., the defendants failed to show that obtaining materials related to potential litigation funding agreements never consummated is essential to an element of the defendants' defense or the preparation of their case.

Trzyna has figured prominently in several different litigation campaigns. Earlier this year, Network Monitoring LLC, of which Trzyna is the sole managing member, filed its first litigation, suing Booking Holdings subsidiaries Agoda,, and Momondo in separate suits, as well as Expedia (Trivago) and (SkyScanner), all in the Eastern District of Texas. The two asserted patents generally relate to monitoring a user's online activity by embedding, within a URL, an address corresponding to a tracking system. USPTO assignment records indicate that the original assignee of the patents tied the assets to engagement of Trzyna's legal services, which apparently ended in a later default. Trzyna appears to have subsequently acquired the patent family in a public auction (for $62,339.67) in June 2013. Further details on the campaign, including Trzyna's follow-on efforts to perfect his right in those patents, can be read at " Recently Formed Texas NPE Targets Travel Service Providers" (May 2021).

Trzyna is also the apparent principal of Windy City Innovations, LLC, an entity formed in Delaware in June 2004 that sued AOL that same month over a family of patents prosecuted by Trzyna, hitting Facebook and Microsoft in separate June 2015 suits. That 2004 Windy City case against AOL saw only the first patent in the family asserted. Based on the court's claim construction ruling, summary judgment of noninfringement in AOL's favor was granted; however, in the early stages of an appeal, the parties settled, successfully asking the court to vacate several of its orders (including the claim construction and summary judgment rulings) in order to facilitate dismissal.

The Facebook and Microsoft cases prompted a large number of petitions for inter partes review of the patents-in-suit, appeals from which led the Federal Circuit to address the propriety of certain joinders in such proceedings. To dig into the resulting ruling, see " Federal Circuit Ends Same-Party and New-Issue 'Joinders' at the PTAB" (May 2020). After remand, the litigation also ran into Alice invalidations, which spawned another appeal to the Federal Circuit; the court summarily affirmed in February of this year.

Last summer, just ahead of the deadlines to submit dispositive motions, Continental Circuits, Ibiden, and Intel notified the District of Arizona that the disputes underlying their litigation had been resolved by an arbitration proceeding that the parties entered into in light of the COVID-19 pandemic. Dismissal with prejudice followed in July 2020.

Texas public records indicate that Tzyrna formed Continental Circuits of Texas in April 2021, the month before the newly formed NPE and the Arizona NPE Continental Circuits initiated litigation against AMD, MediaTek, and Samsung. Fabricant LLC is serving as lead counsel for the NPEs, including in their new cases against Apple and TSMC. 10/12, Apple, Western District of Texas; 10/12, TSMC, Eastern District of Texas.

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