Litigation
Untitled case
Critical litigation6:11-cv-00173
Patents at issue (1)
Summary
This is a district court litigation case involving US patent 7051306 in the Texas Eastern District Court, marked as critical litigation.
Case overview & background
Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.
This patent infringement litigation, case number 6:11-cv-00173, is being heard in the Eastern District of Texas, Tyler Division. The plaintiff is MOSAID Technologies Inc., a company primarily engaged in patent licensing and assertion, functioning as a non-practicing entity (NPE) or patent assertion entity (PAE). The defendants are Freescale Semiconductor, Inc., Interphase Corporation, and NVIDIA Corporation, all operating companies in the semiconductor and technology industries. The core of the dispute revolves around U.S. Patent No. 7,051,306 (the '306 patent), which is directed to systems and methods for managing power on integrated circuits using "power islands," distinct sections within a chip where power consumption is controlled. The accused technology includes power management features in the defendants' integrated circuits, such as NVIDIA's PowerMizer products.
The case has seen multiple judges in the Eastern District of Texas, including an initial presiding judge Leonard E. Davis (LED), Magistrate Judge Michael H. Schneider (MHS), and later District Judge Rodney Gilstrap (JRG). The Eastern District of Texas has long been a prominent venue for patent litigation, known for its patent-specific local rules, rapid trial schedules, and historical reputation for being plaintiff-friendly, although this reputation has been subject to debate and shifts following the Supreme Court's TC Heartland decision in 2017. Despite changes in venue rules, the district continues to be a significant forum, partly due to its judges' extensive experience with patent cases and commitment to timely resolutions.
This case is notable for several reasons, including the involvement of MOSAID Technologies, a significant patent assertion entity. The '306 patent has also been the subject of inter partes review (IPR) challenges at the Patent Trial and Appeal Board (PTAB), where its patentability has been questioned, with claims of prior art and rejections in other jurisdictions like the European and Japanese Patent Offices. The ongoing IPR proceedings, some initiated as recently as 2025, indicate persistent challenges to the patent's validity and MOSAID's continued assertion of the technology, highlighting the long-term nature and strategic importance of this intellectual property in the semiconductor power management sector.
Key legal developments & outcome
Major rulings, motions, claim construction, settlements, and the present posture or final disposition.
This analysis details the key legal developments and outcome for the patent infringement litigation, Case No. 6:11-cv-00173, in the Eastern District of Texas, involving U.S. Patent No. 7,051,306.
Key Legal Developments and Outcome:
1. Filing & Initial Pleadings (2011)
The case, MOSAID Technologies Inc. v. Freescale Semiconductor, Inc., Interphase Corporation, and NVIDIA Corporation, was filed in the Eastern District of Texas in 2011. While the precise filing date of the initial complaint is not immediately available, the case was active by November 2011.
- Complaint: MOSAID Technologies Inc. initiated the patent infringement lawsuit.
- Answer & Counterclaims: The defendants, including Freescale Semiconductor, Inc., Interphase Corporation, and NVIDIA Corporation, filed answers that included defenses and counterclaims. Notably, the defendants asserted inequitable conduct defenses and counterclaims, arguing that MOSAID failed to disclose an NVIDIA prior art product (GeForce2Go and PowerMizer feature) to the Patent Office, which they believed practiced relevant claims of the patents.
2. Pre-trial Motions of Substance
- Motion to Dismiss Counterclaims (2011-11-17): MOSAID Technologies Inc. filed a motion to dismiss the defendants' inequitable conduct defenses and counterclaims. MOSAID's motion sought to treat these as if based on failure to disclose a patent or printed reference, which the defendants countered by stating their allegations were based on MOSAID's failure to disclose an NVIDIA prior art product that MOSAID knew about and believed to practice relevant claims, and had hidden from the Patent Office.
- Case Transfer (2013-01-14): The case was among several pending Tyler Division cases transferred from Chief Judge Davis to Judge Michael Schneider as part of a general order to conform caseloads to assignment ratios.
3. Claim Construction (Markman) Outcome (2013-04-29)
A Claim Construction Order was issued in this case on April 29, 2013.
4. Parallel PTAB IPR Proceedings & Their Effect on Litigation (Late 2024 - 2025)
The '306 patent has been the subject of multiple parallel inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB).
- Prior IPRs and Settlements (Late 2024): Around New Year's Eve of 2024, two prior IPRs filed by one of Infineon's competitors, which concerned the '306 patent and a related descendant patent (US 7,945,885), were terminated by settlement. In these proceedings, the Board had found the claims of the '306 patent and its progeny "likely unpatentable."
- IPR2025-01171 (2025): Infineon Technologies Americas Corp. filed IPR2025-01171, challenging the patentability of the '306 patent. Infineon argued that the '306 patent never should have issued due to demonstrable examination errors and that the subject matter is "likely unpatentable," citing previous rejections by the European Patent Office (2020) and the Japanese Patent Office (2011) for substantially similar claims. Infineon moved to transfer the district court case to a more convenient forum in the context of this IPR.
- The PTAB's institution decision for IPRs, including discretionary denials, involves considering existing precedent, the Consolidated Trial Practice Guide, and other factors.
5. Final Disposition / Present Posture
As of the latest available information, the presence of ongoing IPR proceedings as late as 2025 and mentions of potential trial dates (e.g., May 2027) indicate that aspects of the litigation, or at least the patent's validity, remained active relatively recently. The specific final outcome (settlement, dismissal, judgment, or appeal) of the underlying district court case, 6:11-cv-00173, beyond the initial motions and claim construction, is not definitively reported as a final judgment in the provided snippets. However, the consistent challenges to the '306 patent's validity in IPRs, with the PTAB previously finding claims "likely unpatentable" and some IPRs terminating in settlement, suggests a complex and protracted legal battle over the patent's enforceability.The patent infringement litigation, Case No. 6:11-cv-00173, in the Eastern District of Texas, involving U.S. Patent No. 7,051,306, has seen several key legal developments, including initial pleadings, claim construction, and significant parallel proceedings at the Patent Trial and Appeal Board (PTAB).
Key Legal Developments and Outcome:
1. Filing & Initial Pleadings
- Complaint (2011): The lawsuit was initiated by MOSAID Technologies Inc. as plaintiff against Freescale Semiconductor, Inc., Interphase Corporation, and NVIDIA Corporation as defendants. The case was filed in the U.S. District Court for the Eastern District of Texas in 2011.
- Answer & Counterclaims (pre-2011-11-17): The defendants filed answers that included defenses and counterclaims. Notably, they alleged inequitable conduct against MOSAID, claiming that MOSAID failed to disclose an NVIDIA prior art product (specifically the GeForce2Go and PowerMizer feature) to the Patent Office during prosecution, despite believing it practiced relevant claims of the asserted patents.
2. Pre-trial Motions of Substance
- Motion to Dismiss Counterclaims (2011-11-17): MOSAID Technologies Inc. filed a motion seeking to dismiss the defendants' inequitable conduct defenses and counterclaims. MOSAID contended these were based on a failure to disclose a patent or printed reference, a characterization the defendants disputed, asserting their claims arose from MOSAID's withholding of information about a known prior art product.
- Case Transfer (2013-01-14): The case was transferred from Chief Judge Davis to Judge Michael Schneider. This transfer was part of a general order issued by the Eastern District of Texas to balance judicial caseloads.
3. Claim Construction (Markman) Outcome
- Claim Construction Order (2013-04-29): The court issued a Claim Construction Order in the case on April 29, 2013. This order established the court's interpretation of key terms and phrases within the asserted patent claims.
4. Discovery Milestones with Strategic Significance
While specific detailed discovery milestones are not explicitly outlined in the provided information, the existence of detailed inequitable conduct allegations by the defendants, based on MOSAID's alleged knowledge and withholding of prior art, indicates that discovery efforts likely focused heavily on patent prosecution history, MOSAID's internal knowledge, and communications related to the NVIDIA products and the '306 patent's development.
5. Trial Events, Verdict, and Post-Trial Motions
Information regarding a trial, verdict, or specific post-trial motions like JMOL or new trial for this case is not present in the provided sources.
6. Settlement, Dismissal, Judgment, or Appeal – The Final Disposition or Present Posture
The ultimate final disposition of the district court litigation (6:11-cv-00173) is not explicitly stated as a final judgment, dismissal, or settlement in the provided search results. However, the case's trajectory appears heavily influenced by parallel PTAB proceedings.
7. Parallel PTAB IPR/PGR Proceedings and Their Effect on the Litigation
The '306 patent has been subject to significant scrutiny at the Patent Trial and Appeal Board (PTAB):
- Prior IPRs and Settlements (Late 2024): Around New Year's Eve of 2024, the '306 patent and a related patent (US 7,945,885) were challenged in two IPR proceedings filed by a competitor of Infineon. The PTAB found the claims in both patents "likely unpatentable," leading to a settlement that terminated these IPRs.
- IPR2025-01171 (2025): Infineon Technologies Americas Corp. filed IPR2025-01171 challenging the '306 patent. Infineon argued that the patent should not have been issued due to "severe, demonstrable examination errors" and that its subject matter is "likely unpatentable." They further noted that similar claims had been rejected or invalidated by the European Patent Office (in 2020) and the Japanese Patent Office (in 2011). Infineon also moved to transfer the district court case to a more convenient forum in conjunction with this IPR.
The active IPR proceedings in 2025, and mentions of a projected district court trial date as late as May 2027, suggest that while aspects of the district court case might have been stayed or put on hold pending the IPR outcomes, the overarching dispute concerning the validity of the '306 patent persisted. The PTAB's consistent findings of "likely unpatentable" claims in earlier IPRs suggest a significant challenge to the enforceability of the '306 patent.
Plaintiff representatives
Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- In-house counsel
- Phillip Shaer · in-house
I have performed several rounds of searches, and while I have confirmed MOSAID Technologies Inc. as the plaintiff in 6:11-cv-00173, I have not been able to definitively identify its counsel of record for this specific case from the provided snippets.
The initial misleading snippet " Recent patent infringement/false patent marking ... - Legal Newsline (April 11 2011) Mosaid Technologies is represented by David M. ..." was confusing. However, other documents clearly show David M. Hoffman signed filings for the defendants (Freescale Semiconductor, Inc., Interphase Corporation, and NVIDIA Corporation). This confirms David M. Hoffman was not plaintiff's counsel.
I've looked for direct mentions of plaintiff's counsel in the original complaint or other early filings, and while "MOSAID and its attorney" is mentioned, no specific names of external litigation counsel for the plaintiff are provided in the available snippets. Phillip Shaer is identified as in-house counsel, but the request is for counsel of record, typically external firms.
Therefore, based on the provided search results, I cannot definitively identify the counsel of record representing the plaintiff(s) in this patent infringement case.
It is possible this information would be readily available in a full PACER docket sheet, which I do not have direct access to.
Conclusion:
The counsel of record representing the plaintiff(s) in case 6:11-cv-00173 could not be definitively identified from the provided web search results. While MOSAID Technologies Inc. is the plaintiff, and its in-house counsel Phillip Shaer is mentioned, specific external litigation counsel who filed appearances with the court for the plaintiff are not named in the available snippets.Based on the available search results, the counsel of record representing the plaintiff(s) in case 6:11-cv-00173, MOSAID Technologies Inc. v. Freescale Semiconductor, Inc., et al., could not be definitively identified.
While MOSAID Technologies Inc. is clearly established as the plaintiff, and its Vice President, General Counsel, and Corporate Secretary, Phillip Shaer, is mentioned as being involved in the company's legal strategy and patent prosecution, the specific external litigation counsel who filed appearances for MOSAID in this Eastern District of Texas case are not named in the provided snippets.
A prior search result initially mentioned "Mosaid Technologies is represented by David M. ...". However, other documents from the case, such as "DEFENDANTS' RESPONSE TO MOSAID TECHNOLOGIES INC.'S MOTION TO DISMISS AND STRIKE," are signed by "/s/David M. Hoffman". This strongly indicates that David M. Hoffman represented the defendants in this matter, not the plaintiff.
Without direct access to the full PACER docket for case 6:11-cv-00173, identifying the specific attorneys and their firms who served as counsel of record for the plaintiff, their roles, and their office locations, is not possible from the provided information.
Defendant representatives
Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
To identify the counsel of record for the defendants in Mosaid Technologies Inc. v. Freescale Semiconductor, Inc., Interphase Corporation, and NVIDIA Corporation, Case No. 6:11-cv-00173 in the Texas Eastern District Court, a review of the court docket is necessary. The initial search identified the defendants. However, the provided snippets do not list the specific attorneys of record, their roles, or their firms for these defendants. Therefore, further detailed examination of the court docket is required to gather this information.
As of the current search, specific counsel of record for the defendants (Freescale Semiconductor, Inc., Interphase Corporation, and NVIDIA Corporation) has not been explicitly listed in the provided snippets. While various law firms and their patent litigation experience were found (e.g., Oberheiden P.C., Larson LLP, Clark Hill PLC, Covington & Burling LLP, Williams & Connolly LLP, Latham & Watkins LLP, Duane Morris LLP, Downey Brand), these are general firm profiles and not tied directly to appearances in this specific case's docket.
Therefore, the counsel of record representing the defendant(s) in this patent infringement case cannot be definitively identified with the requested details from the current information. Filings may be sealed, or more in-depth PACER access would be needed to extract specific appearance information.