- within Litigation and Mediation & Arbitration topic(s)
LED Wafer Solutions LLC has filed a new original complaint against Samsung and Seoul Semiconductor (2:25-cv-00948), this one in the Eastern District of Texas. There, it asserts two LED (light emitting diode) fabrication patents, each "as modified by a reexamination certificate". The plaintiff asserted both patents in a 2021 complaint, which Western District of Texas Judge Alan D. Albright transferred for convenience to the Northern District of California. The case was stayed to await multiple ex parte reexams (EPRs), but a wider overhaul now includes the new East Texas complaint and a representation from LED Wafer Solutions that it intends to move to transfer the California case back to Texas, albeit the Eastern District.
Four patents (8,941,137; 8,952,405; 9,502,612; 9,786,822) were originally asserted in that first case, filed against only Samsung (and several subsidiaries) in March 2021. Seoul Semiconductor successfully intervened, as the supplier of some of the accused parts, the plaintiff's infringement allegations implicating the provision of various LED lighting products, including backlight strips (incorporated in certain TVs) and flash devices (incorporated in certain smartphones). As the case entered claim construction, Judge Albright (in a still-sealed order) granted an opposed motion to transfer it. In Texas, LED Wafer was represented by Carter Arnett PLLC and Porter Hedges LLP.
After the suit was opened in the Northern District of California, LED Wafer filed a December 2022 amended complaint, dropping the '612 patent and adding infringement allegations against Seoul Semiconductor. Then, in April 2023, District Judge Vince Chhabria granted a motion to stay in light of the EPRs. Samsung had filed petitions for inter partes review (IPR) of claims from the asserted patents (including all asserted claims), but the Patent Trial and Appeal Board (PTAB) declined to institute trial as to any of them. The EPRs followed. Last year, those proceedings concluded, with all asserted claims of the '137 patent found patentable, together with 99 additional claims; all but one of the asserted '405 patent claims found patentable (with "minor amendments"), together with five additional claims (of a wider set presented); and all asserted claims from the '822 patent found patentable (again, with "minor amendments"), together with 10 additional claims (of a wider set presented).
In November 2024, LED Wafer filed a motion for leave to file a second amended complaint, in which it represented that over the course of the stay, Samsung had "released new mobile phone products that are related to and similar to the previously accused mobile phone products". That motion was filed by Fitch, Even, Tabin & Flannery LLP, after Carter Arnett Bennett & Perez PLLC (formerly Carter Arnett) had withdrawn from the case (as had Porter Hedges, prior local counsel in West Texas), during the pendency of that motion, the new counsel moved to withdraw, representing to the court that LED Wafer would not be prejudiced by its departure because Fitch Even "understands that LWS intends to engage or has engaged Fabricant LLP to be new counsel in this matter". The court denied the motion to withdraw, because a party must be continuously represented; Fabricant LLP never made an appearance.
Fitch Even then refiled the motion, indicating that LED Wafer had stopped responding to its inquiries about replacement counsel, but "recent events have occurred that create an actual conflict between Fitch Even and LWS. This actual conflict requires that Fitch Even withdraw from the case immediately". The court set a mid-July 2025 status conference at which it ordered a corporate representative for LED Wafer to appear. There, the court granted Fitch Even's motion to withdraw, the firm to be released as soon as new counsel entered an appearance (or by August 15), the court denying the pending motion for leave to file a second amended complaint because it was "disinclined" to have current conflicted counsel argue anything before the court. Boies Schiller Flexner LLP then entered an appearance, Fitch Even departed, and a new strategy has emerged.
Last week, LED Wafer filed the Eastern District of Texas complaint, asserting "new and amended" claims from the '405 and '822 patents (as having emerged from EPR). It notified District Judge Araceli Martinez-Olguin (who had taken over for Judge Chhabria) of the development, indicating that none of the original claims from those two patents remain in suit before her: "Given the circumstances of this Action and the Texas litigation, LED Wafer intends to move to transfer this case to the Eastern District of Texas for convenience, to avoid conflict, conserve resources, and promote an efficient determination of both actions". The plaintiff further indicates there that it will not refile its motion for leave to file a second amended complaint after all, such that "in this case LED Wafer continues to allege that Defendants infringe one or more of the original claims of [the '137 patent], including at least original claim 1 of that patent, which was confirmed without amendment in an ex parte reexamination, through 'manufacture, sale, offer for sale, importation, or distribution of the Samsung Galaxy S22 mobile phone'".
Samsung objects to this switcheroo. It notes that its counterclaims seeking declaratory judgments of noninfringement and invalidity of claims from all four originally asserted patents remain well plead, neither dismissed nor withdrawn. Samsung characterizes the new Eastern District of Texas complaint as an attempt to file a "duplicative action", representing that it will oppose any motion to transfer to Texas: "All four patents-in-suit are properly presented for adjudication in this action due to the live counterclaims, and Plaintiff's blatant forum-shopping should not be permitted". The court has yet to sort this out.
LED Wafer Solutions acquired seven patents (across two families), including those in suit, in February 2020 from ViaGaN, which describes itself as "a provider of LEDs for lighting, automotive, cellphone and medical applications". The public website for ViaGaN bears a 2014 copyright, while the CEO and founder, Mordehai ("Moti") Margalit, reports having been with ViaGaN from 2010 through 2020. Margalit is also the sole named inventor for the two patent families transferred to LED Wafer Solutions.
He identifies past positions with Intellectual Ventures LLC (IV), from 2010 to 2016, as "building the Israeli Inventor Network for Intellectual Ventures" and with Xinova, LLC, as "Country manager, innovation facilitator, inventor, from 2016 (when Xinova appears to have spun out of IV) to 2020. (For background about Xinova, which was formerly known as Invention Development Management Company, LLC, see here.) Per social media, Margalit has acted as CEO of SonicEdge, previously described as a "stealth company developing a disruptive consumer electronic product", since June 2019. Now, Margalit describes SonicEdge as having "invented a new way of generating sound, a breakthrough speaker-in-chip, uniquely designed to offer a transformational audio experience".
LED Wafer Solutions was formed in Delaware in January 2020. It appears to have registered to conduct business in New Jersey in April 2021. Bradley D. Liddle (later representing LED Wafer through Carter Arnett) served as the correspondent for the assignment to LED Wafer, and the address given by the plaintiff was used by American Inventor Tech, LLC, an NPE controlled by monetization firm Oso IP, LLC. (Oso IP is a monetization firm based in San Jose, California at the same address as law firm Zilka-Kotab, PC. Attorney Kevin J. Zilka founded both entities, with Oso IP co-managed by George A. ("Andrew") Gordon. Liddle and Oso IP are each associated with a web of other litigating NPEs, those controlled by Oso IP having sued Samsung multiple times.)
The Western District of Texas does not impose heightened corporate disclosure on litigants. There, LED Wafer disclosed only that it has no parent and that no publicly traded company owns ten percent or more of it. The Northern District of California does impose heightened corporate disclosure, a local rule requiring litigants there to disclose "any persons, associations of persons, firms, partnerships, corporations (including parent corporations), or other entities other than the parties themselves known by the party to have either: (i) a financial interest (of any kind) in the subject matter in controversy or in a party to the proceeding; or (ii) any other kind of interest that could be substantially affected by the outcome of the proceeding". Joint Case Management Reports there must also include a section confirming such certifications.
Per the plaintiff, in its first such report, filed in September 2022 and signed by Liddle, "Other than the named parties, LED Wafer Solutions, LLC is not aware of any interest set forth in Civil Local Rule 3-15 as of this date". About a week later, the plaintiff reiterated that lack of awareness: "Pursuant to Civil L.R. 3-15, the undersigned certifies that as of this date, other than the named parties, there is no such interest to report". Local counsel (at the time) signed that document over a signature block that included Carter Arnett PLLC. By early November, some additional awareness kicked in, LED Wafer filing an amended certification that identifies both ViaGaN and "Israel Electric Corporation Ltd" as interested nonparties. (Israel Electric is the main electric supply company in Israel.) Liddle signed this document.
Boies Schiller filed the East Texas complaint for LED Wafer Solutions as well. District Judge Rodney Gilstrap has been assigned to the new case against Samsung. 9/15, Eastern District of Texas.
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