Bell Northern Research has launched a lawsuit against Apple Inc claiming that the iPhone giant has infringed 10 of its patents that cover cellular communications, wi-fi and battery preservation.
The litigation was filed in the same week that Apple was hit with a $300 million damages finding by an Eastern District of Texas jury in a case against another NPE, PanOptis.
This is the latest in a series of assertions that has also seen Bell Northern target and then settle with at least seven prominent mobile manufacturers, including ZTE, Huawei and LG. Attempts to invalidate the relevant patents at the PTAB have so far proved unsuccessful.
Executives at Hilco IP Merchant Banking operate Bell Northern. Its portfolio includes 100 patents acquired from Avago Technologies General IP (Singapore) and Broadcom Corp in 2017, as well as a further four transferred by Bell Semiconductor in 2020.
The most recent litigation in the NPE’s assertion campaign hit Apple on 11 August in the US District Court for the Western District of Texas in Waco, where Judge Alan Albright presides.
BNR has alleged that Apple’s phones, tablets, computers, watches and other devices are infringing on the asserted patents. According to the complaint, Bell Northern notified Apple in 2018 of the alleged infringement and invited the company to take a licence.
Who is behind Bell Northern?
According to the firm’s website, Bell Northern’s executives are former Nortel Networks and Rockstar Consortium IP executives Azfal Dean and Erik Fako.
The pair also work as senior licensing counsel as chief licensing officer, respectively, of Hilco IP Merchant Banking. Dean’s company biography notes that he used to lead the wireless patent licensing business at Nortel and, before that, managed IP at Bell Canada International.
Fako’s biography states that he helped found Rockstar, “which resulted from the acquisition in 2011 of the Nortel patent portfolio for $4.5 billion during Nortel’s bankruptcy.”
Hilco executives John Veschi and Gillian McColgan were also senior leaders at Nortel and then Rockstar. Veschi was in charge of IP at the Canadian telecoms company before heading up the Rockstar team, while McColgan was CTO at Rockstar, having served 25 years with Nortel, latterly as the CTO of its IP business. Most of Rockstar’s senior members joined up with Hilco in November 2016, a few months after Michael Friedman, the former OceanTomo executive who is CEO of the merchant bank’s IP operation.
Friedman wrote in an email that he doesn’t comment on litigations the bank is involved in. Bell Northern’s attorney in the Apple case, David Sochia, managing principal in McKool Smith in Dallas, also declined to comment.
No one from Apple’s press team responded to an email seeking comment.
Other litigation and IPRs
USPTO patent assignment records show that Bell Northern acquired nine of the 10 patents-in-suit on 8 December 2017 from Avago and Broadcom, as part of a deal that involved 100 assets in total.
Bell Semiconductor transferred the final patent-in-suit, 6,858,930, to Bell Northern on 3 February 2020, as part of a transaction that involved four assets in total. The assignment database doesn’t list any further sales to Bell Northern.
Bell Northern was incorporated as an LLC in Delaware in 2017, according to Delaware Secretary of State records.
Bell Northern began to assert the patents against cell phone and device makers in 2018.
Data from Unified Patents shows eight litigations in total involving the firm, targeted at ZTE Corp, Huawei Technologies Co, Coolpad Technologies Inc, Kyocera International Inc, LG Corp, Samsung Group and now Apple. There are three open suits: 2019 and 2020 cases against Samsung in Texas’s Eastern and Western Districts; and this new case against Apple, also in the Western District of Texas.
Most of the litigations are closed. Lex Machina data shows that Bell Northern reached settlements with ZTE, Coolpad, Huawei, Kyocera, LG and Samsung in one 2019 case.
Records from RPX Insight show that between June 2019 and March 2020, five of these defendants – Samsung, LG Electronics Inc, ZTE, Coolpad and Huawei – tried going to the USPTO’s Patent Trial and Review Board to attack the validity of the patents in 29 inter partes reviews.
Lex Machina charted the outcome of 25 IPRs that involved some of the same patents that Bell Northern is now asserting against Apple. The data shows that 44% settled before institution decisions, 16% were denied institution and 40% were instituted. Among the 10 IPRs that were instituted, seven settled and three were joined to another trial.
According to the records, the three IPRs that were joined were filed by Samsung in March 2020. They challenge three of the same patents that Bell Northern has asserted against Apple in the new litigation. The challenged patents cover a system and method to conserve battery in a cell phone or tablet, and a proximity regulation system for a cell phone.
