Quarterhill Inc T.QTRH

Micron Deal

[Socrates1]

Wi-LAN announces patent licences, settlement with Micron

Angela Morris

24 October 2022

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Shutterstock/Valeriya Zankovych

Micron Technology has settled a multinational dispute with three Wi-LAN subsidiaries after taking patent licences to assets that cover semiconductor memory technologies. Micron only took licences after striking many of the asserted patent claims in inter partes reviews and winning a trial court ruling that limited the damages sought by one Wi-LAN entity.

Wi-LAN’s parent company, Quarterhill, announced the agreement on 21 October – as it continues a strategic review to consider whether to sell the Canadian-based patent licensing business. The licence agreement means that the Wi-LAN entities Innovative Memory Solutions Inc and North Star Innovations Inc will soon dismiss two lawsuits in the US District Court for the District of Delaware. Wi-LAN’s settlement announcement also named Cetus Technologies Inc as one of the entities suing Micron and mentioned that litigation in China will soon be dismissed.

Though the terms of the licence agreement are confidential, court records show that the parties reached an agreement on 19 October and that Micron will have 30 days to pay the licence fees, and then the patent holders will dismiss the lawsuits within five days.

A review of Micron’s cases on Docket Navigator shows that it has a history of fighting patent assertions – and winning. The semiconductor firm has been a patent challenger in 66 cases since 2008. Since 2016, when Docket Navigator began tracking case outcomes, the platform has reported that Micron fully won six cases, partially won one case, and settled nine cases.

Source: Docket Navigator. Graphic: Angela Morris/IAM

The firm is also a frequent petitioner in the Patent Trial and Appeal Board, where it has brought 82 cases. Some are still pending, but Docket Navigator shows that Micron has fully won 53% and partially won 10% of the 73 petitions that have reached resolution.

Source: Docket Navigator. Graphic: Angela Morris/IAM

Innovative Memory Systems

The Wi-LAN settlement comes only after Micron put up a fierce fight and saw victories in the PTAB and in court rulings that limited the damages that one of Wi-LAN’s non-practicing entities was seeking.

Innovative Memory Systems sued Micron in 2014 and alleged some of its NAND flash memory products infringed eight patents. Micron responded with inter partes review petitions against all the assets, and it won unpatentability determinations that cancelled five of them. Innovative Memory deflected two IPRs when the PTAB denied institution. For another patent, the PTAB initially found that 18 challenged claims were unpatentable. But the rights’ holder successfully appealed to the US Court of Appeals for the Federal Circuit, which partially reversed the PTAB’s decision. On remand, the board found that six claims were unpatentable and 12 claims were not unpatentable.

Two patents advanced to the end of the litigation:  

[mrmoribund]

The author, Angela Morris, sounds so pro-Micron. Almost like she must be employed by them. Some of the reasons she gives for why the amount might have been whittled down make sense--like the finding that Wilan couldn't collect pre-suit damages (or on some or all non-US sales). But elsewhere she makes it sound almost as if the settlement amount will have been directly proportional to the

[Joey67]

This post has been removed in accordance with Community Policy

[mrmoribund]

Pardon me? The Micron settlement happened in Q4 and not Q3. If it had been signed in Q3 then, yes, you'd have to think the settlement amount was not huge if there were no preannouncement soon. The key time frame in this case (for a preannouncement) will be the few weeks prior to the release of Q4 numbers--next February or March. Note that even if there ultimately were no preannouncement that

[v_guerriero]

The Micron deal was estimated at $10M by Coupland.  Split 5 ways and shareholders are left with nothing.  Net Income is what matters to shareholders, not this EBITDA BS. Any material announcement was a "portfolio" license or wireless focused.  This is not.  No bueno.  The summary judgment rulings made it such that the fees going the distance in court weren'

[Socrates1]

Says 0.80 cent boy......... 

[cabbieJBJ]

mrmoribund, there are similarities to Apple. You are absolutely right that infringement still stands if only one of 100 claims is asserted. I didn't read the docs in the same negative light as she did. Cetus may be a wild card. As you say, we'll find out in the Q4 results...assuming Wilan is still a QTRH sub at that time.