Litigation
Untitled case
US case filed1:24-cv-00129
Patents at issue (1)
Summary
This is a US patent infringement case filed in the Texas Western District Court, concerning US Patent 7989944.
Case overview & background
Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.
This patent infringement case was initially filed in the Western District of Texas and subsequently transferred to the Northern District of California, concerning US Patent 7989944 and eight other related patents. The plaintiff, ImberaTek LLC, is a non-practicing entity (NPE) and a subsidiary of Ideahub, Inc., which acquired its patent portfolio from GE Embedded Electronics (formerly Imbera Electronics) in early 2020. The defendant is Apple Inc., a major technology company. The litigation targets Apple's A-series and M-series systems-on-chip (SoCs) and the various electronic devices that incorporate these SoCs, including cellular devices, tablets, digital media players/video game consoles, laptops, computers, and displays. The asserted patents broadly relate to "techniques to integrate semiconductors in electronic modules."
The specific patents asserted by ImberaTek LLC against Apple Inc. are US Patents 7,609,527, 7,732,909, 7,989,944, 8,222,723, 8,238,113, 8,368,201, 9,107,324, 11,071,207, and 11,716,816. US Patent 7,989,944, specifically, describes porous microparticles with solid cores, particularly spherical silica microparticles, and their use in chromatography. The case was initially filed on February 5, 2024, in the US District Court for the Western District of Texas, where Judge Robert Pitman was assigned. However, the case was notably transferred to the US District Court for the Northern District of California, with the transfer order issued on March 3, 2025, and the case formally transferred on March 4, 2025. Judge Beth Labson Freeman is now presiding over the case in the Northern District of California. The initial choice of the Western District of Texas is often favored by patent plaintiffs due to its reputation for a fast-paced docket; however, Apple successfully moved to transfer the case to its home forum.
This case is part of a broader patent assertion campaign by ImberaTek. The company previously asserted several of the same patents (including 7,989,944) against Samsung in the Eastern District of Texas from June 2022 to January 2023. The successful transfer of the case from the Western District of Texas to the Northern District of California is a significant procedural development, as the Western District of Texas, particularly the Waco division, has become known for often denying transfer motions in patent cases. This transfer underscores the ongoing judicial scrutiny of venue in patent litigation.
Key legal developments & outcome
Major rulings, motions, claim construction, settlements, and the present posture or final disposition.
The patent infringement case ImberaTek LLC v. Apple Inc., Case Number 1:24-cv-00129, was filed on February 5, 2024, in the U.S. District Court for the Western District of Texas, concerning US Patent 7,989,944. The case was subsequently transferred to the Northern District of California on March 4, 2025, where it was assigned case number 5:25-cv-02206.
Here's a chronological summary of the key legal developments:
1. Filing & Initial Pleadings:
- February 5, 2024: ImberaTek LLC filed the patent infringement complaint against Apple Inc. in the Western District of Texas.
2. Pre-trial Motions of Substance:
- Prior to March 3, 2025: Apple Inc. filed a motion to transfer venue to the Northern District of California.
- February 19, 2025: A sealed order was issued granting Apple's motion to transfer venue.
- March 3, 2025: The court issued a sealed order granting Apple Inc.'s opposed motion to transfer venue to the Northern District of California.
- March 4, 2025: The case was officially transferred from the Western District of Texas to the Northern District of California.
3. Current Posture:
- As of March 4, 2025, the case is active in the U.S. District Court for the Northern District of California, under case number 5:25-cv-02206. An Initial Case Management Scheduling Order with ADR Deadlines was filed on March 4, 2025, and an Initial Case Management Conference was set for June 5, 2025. Judge Beth Labson Freeman signed an order of recusal on March 10, 2025.
Parallel PTAB IPR/PGR Proceedings:
A search for PTAB IPR/PGR proceedings specifically for US Patent 7,989,944 did not yield any directly corresponding results within the provided snippets. The available search results for "IPR2023-00129" and "IPR2025-00341" relate to different patents and parties (CAO Lighting, Inc. and TESLA INC.). Therefore, no parallel PTAB proceedings affecting ImberaTek LLC v. Apple Inc. could be confirmed from the provided information.
Information regarding the complaint's specific allegations, Apple's answer, any counterclaims, claim construction outcomes (Markman), detailed discovery milestones, trial events, verdict, post-trial motions, or a final disposition beyond the transfer of venue is not available in the provided search results.This patent infringement litigation, ImberaTek LLC v. Apple Inc., Case Number 1:24-cv-00129, was initially filed in the U.S. District Court for the Western District of Texas. The case involved US Patent 7,989,944, along with eight other patents. The litigation ultimately concluded with a settlement between the parties and a dismissal of the case.
Here's a chronological breakdown of the key legal developments and outcome:
1. Filing & Initial Pleadings:
- February 5, 2024: ImberaTek LLC filed the initial patent infringement complaint against Apple Inc. in the Western District of Texas. The complaint asserted nine patents, generally related to "techniques to integrate semiconductors in electronic module," including US Patent 7,989,944. The plaintiff alleged willful infringement, pointing to a letter sent to Apple on February 3, 2020, informing them of infringement.
- April 25, 2024: Apple Inc. filed its answer to ImberaTek LLC's First Amended Complaint for Patent Infringement.
2. Pre-trial Motions of Substance:
- Prior to March 3, 2025: Apple Inc. filed an opposed motion to transfer venue to the Northern District of California.
- February 19, 2025: A sealed order was issued granting the motion to transfer venue.
- March 3, 2025: The Western District of Texas court issued a sealed order granting Apple Inc.'s motion to transfer venue.
- March 4, 2025: The case was formally transferred to the U.S. District Court for the Northern District of California, where it was assigned case number 5:25-cv-02206.
3. Parallel PTAB IPR Proceedings & Settlement:
- February 5, 2025: Apple Inc. filed petitions for Inter Partes Review (IPR) against several of ImberaTek's patents, including US Patent 7,989,944, at the Patent Trial and Appeal Board (PTAB). These IPRs were assigned case numbers such as IPR2025-00575 (for the '944 patent) and IPR2025-00584 (for the '909 patent).
- May 2, 2025: The parties reached a settlement agreement, resolving their disputes concerning the asserted patents.
- May 6, 2025: An order of dismissal was entered in the California litigation (3:25-cv-02206) due to the settlement.
- May 16, 2025: The PTAB authorized Apple Inc. and ImberaTek LLC to file joint motions to terminate the IPR proceedings based on the settlement.
- May 23, 2025 (filed): Joint motions to terminate the IPR proceedings, including IPR2025-00575, were filed with the PTAB. The settlement agreement was submitted as Exhibit 1150 and treated as business confidential information. The PTAB granted these motions and terminated the proceedings because the parties had satisfied the requirements for settlement-based termination.
4. Outcome:
The litigation in the district court was concluded by a settlement between ImberaTek LLC and Apple Inc., leading to the dismissal of the case in the Northern District of California on May 6, 2025. Parallel IPR proceedings at the PTAB were also terminated as a result of this settlement. Specific details of the settlement remain confidential.
Plaintiff representatives
Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Mayer Brown
- Alan M. Grimaldi · Lead Counsel
- Reginald R. Goeke · Lead Counsel
- James A. Fussell, III · Counsel
- Julia L. Haines · Counsel
- Clark S. Bakewell · Counsel
- Clifford A. Maier · Counsel
- Courtney M. Krawice · Counsel
- Michelle N. Webster · Counsel
The plaintiff in this patent infringement case, ImberaTek LLC, initially filed in the Western District of Texas (1:24-cv-00129) against Apple Inc., before the case was transferred to the Northern District of California (3:2025cv02206) on March 3, 2025.
Counsel for ImberaTek LLC who appeared in the initial Western District of Texas filing and subsequently in the Northern District of California include attorneys from Mayer Brown LLP. Two attorneys, Mark D. Siegmund and Brett Aaron Mangrum, along with Craig D. Cherry, initially appeared for ImberaTek LLC but formally withdrew as counsel on April 15, 2025, in the Northern District of California case.
The following counsel from Mayer Brown LLP are associated with the plaintiff:
Alan M. Grimaldi
- Role: Lead Counsel (Partner)
- Firm: Mayer Brown LLP, Washington D.C. office.
- Experience Note: Alan Grimaldi is a partner in Mayer Brown's Intellectual Property practice, focusing on patent litigation across various technologies, including electronics, software, and telecommunications.
Reginald R. Goeke
- Role: Lead Counsel (Partner)
- Firm: Mayer Brown LLP, New York and Washington D.C. offices.
- Experience Note: Reginald Goeke is a partner in Mayer Brown's Intellectual Property practice, with extensive experience in patent litigation, particularly in the telecommunications and high-tech sectors.
James A. Fussell, III
- Role: Counsel (Partner)
- Firm: Mayer Brown LLP, Washington D.C. office.
- Experience Note: James Fussell is a partner in Mayer Brown's Intellectual Property group, focusing on patent litigation, post-grant proceedings, and IP due diligence.
Julia L. Haines
- Role: Counsel (Associate)
- Firm: Mayer Brown LLP, Washington D.C. office.
- Experience Note: Julia Haines is an associate in Mayer Brown's Intellectual Property practice, involved in patent litigation across various industries.
Clark S. Bakewell
- Role: Counsel (Associate)
- Firm: Mayer Brown LLP, Chicago, Illinois office.
- Experience Note: Clark Bakewell is an associate in Mayer Brown's Intellectual Property practice, with experience in patent litigation in federal courts.
Clifford A. Maier
- Role: Counsel (Associate)
- Firm: Mayer Brown LLP, Washington D.C. office.
- Experience Note: Clifford Maier is an associate in Mayer Brown's Intellectual Property practice, concentrating on patent litigation.
Courtney M. Krawice
- Role: Counsel (Associate)
- Firm: Mayer Brown LLP, Washington D.C. office.
- Experience Note: Courtney Krawice is an associate in Mayer Brown's Intellectual Property practice, assisting with patent litigation matters.
Michelle N. Webster
- Role: Counsel (Associate)
- Firm: Mayer Brown LLP, Washington D.C. office.
- Experience Note: Michelle Webster is an associate in Mayer Brown's Intellectual Property practice, focusing on patent litigation and other intellectual property disputes.
Previously appeared but withdrew as counsel:
Mark D. Siegmund
- Role: Former Counsel
- Firm: Cherry Johnson Siegmund James, PLLC (also listed as Law Firm Of Walt Fair, PLLC for some entries).
- Experience Note: Experienced patent litigator, particularly active in the Eastern and Western Districts of Texas. Withdrew from the case on April 15, 2025.
Brett Aaron Mangrum
- Role: Former Counsel
- Firm: Cherry Johnson Siegmund James PLLC (also listed as Etheridge Law Group, PLLC for some entries).
- Experience Note: Involved in patent litigation in Texas federal courts. Withdrew from the case on April 15, 2025.
Craig D. Cherry
- Role: Former Counsel
- Firm: Cherry Johnson Siegmund James, PLLC.
- Experience Note: Partner at a firm known for patent litigation. Withdrew from the case on April 15, 2025.
Defendant representatives
Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Mayer Brown
- James A. Fussell III · lead counsel
- Alan M. Grimaldi · lead counsel
- Courtney M. Krawice · lead counsel
- Cliff Allan Maier · lead counsel
- Clark S. Bakewell · lead counsel
- Julia Haines · lead counsel
- Michelle N. Webster · lead counsel
- Reginald R. Goeke · lead counsel
- Scott Douglass & Mcconnico
- Stephen Burbank · local counsel
- Steven J. Wingard · local counsel
- Robert Pierce Earle · local counsel
- Etheridge Law Group
- Brett Aaron Mangrum · of counsel
Apple Inc. is represented by a team of attorneys from Mayer Brown LLP, Scott Douglass & Mcconnico LLP, and Cherry Johnson Siegmund James, PLLC (or associated firms) in the patent infringement case ImberaTek LLC v. Apple Inc. (1:24-cv-00129), originally filed in the Texas Western District Court. The case was later transferred to the Northern District of California (5:25-cv-02206).
The counsel of record for the defendant(s) includes:
Mayer Brown LLP (Lead Counsel)
- James A. (Tripp) Fussell III - Partner.
- Office Location: Washington D.C.
- Experience: Mr. Fussell has extensive experience strategizing and trying complex intellectual property cases, particularly in patent litigation before US federal district courts, the US International Trade Commission (ITC), and the US Court of Federal Claims. He is well-versed in standard essential patents and has experience in all phases of patent litigation. Notably, he secured a $43.3 million jury verdict for Maxell in a patent infringement case against ZTE. He has been recognized as a Patent Star by Managing Intellectual Property.
- Alan M. Grimaldi - Partner.
- Office Location: Washington D.C.
- Experience: Mr. Grimaldi is recognized as a Patent Star by Managing Intellectual Property. Mayer Brown's Intellectual Property practice frequently represents clients in patent litigation across various industries, including technology and telecommunications.
- Courtney M. Krawice - Counsel.
- Office Location: Not explicitly stated, but practices across Mayer Brown's offices.
- Experience: Ms. Krawice focuses on high-tech patent litigation for both plaintiffs and defendants before the ITC and US district courts. She has a background in mechanical engineering and experience handling cases from pre-suit diligence through post-trial motions, including arguing at Markman hearings, dispositive motions, and directing technical expert witnesses at trial.
- Cliff Allan Maier - Partner.
- Office Location: Palo Alto, California.
- Experience: Dr. Maier advises clients in the semiconductor, electronics, software, and fintech industries on patent and intellectual property matters. A registered patent attorney with a Ph.D. in electrical engineering, his expertise includes semiconductors, cryptography, biometrics, wireless communications, consumer electronics, and human-machine interaction. Prior to law, he designed microprocessors.
- Clark S. Bakewell - Counsel.
- Office Location: Not explicitly stated, but practices across Mayer Brown's offices.
- Experience: Mr. Bakewell focuses on electronics-related patent litigation for both defense and plaintiff sides, including related trademark, trade dress, trade secret, contract, and antitrust claims. With a physics background, he has experience litigating patents related to electronic devices, software, user interfaces, and wireless communications. He is also a registered patent attorney and an active member of the Quantum Economic Development Consortium (QED-C).
- Julia Haines - Counsel.
- Office Location: Washington D.C.
- Experience: Ms. Haines practices complex intellectual property commercial litigation, primarily patent cases. She has a technical background and federal court clerkship experience, representing clients from initial complaints through final verdicts in federal district courts and the ITC. Her recent work includes a nine-figure patent infringement lawsuit for a medical device manufacturer.
- Michelle N. Webster - Attorney.
- Office Location: Not explicitly stated.
- Experience: Specific patent litigation experience for Ms. Webster was not readily available in the provided search results.
- Reginald R. Goeke - Attorney.
- Office Location: Not explicitly stated.
- Experience: Specific patent litigation experience for Mr. Goeke was not readily available in the provided search results.
Scott Douglass & Mcconnico LLP (Local Counsel for WDTX)
- Stephen Burbank - Partner.
- Office Location: Austin, Texas.
- Experience: Mr. Burbank has developed a significant practice in intellectual property litigation, representing clients in patent infringement lawsuits in the Western District of Texas across diverse industries such as consumer electronics, internet services, wireless communications, semiconductors, and medical technology. He previously served as a Federal Judicial Law Clerk to the Honorable Alan Albright.
- Steven J. Wingard - Attorney.
- Office Location: Austin, Texas (firm location).
- Experience: Specific patent litigation experience for Mr. Wingard was not readily available in the provided search results.
- Robert Pierce Earle - Attorney.
- Office Location: Austin, Texas (firm location).
- Experience: Specific patent litigation experience for Mr. Earle was not readily available in the provided search results.
Etheridge Law Group (Local Counsel for WDTX)
- Brett Aaron Mangrum - Of Counsel.
- Office Location: Texas (based on practice and rankings in Texas).
- Experience: Mr. Mangrum is an experienced patent litigation attorney whose practice focuses on patent litigation, developing and monetizing patent portfolios, and defending patent validity in post-grant proceedings. He has an engineering background and is a named inventor on eight U.S. patents. He was ranked nationally as the most active Inter Partes Review (IPR) attorney and for successful outcomes for patent owners.
- Mark D. Siegmund - (Previously listed with Cherry Johnson Siegmund James, PLLC for the WDTX filing).
- Office Location: Waco, Texas (Cherry Johnson Siegmund James, PLLC).
- Experience: While listed as counsel for Apple in the WDTX filing, specific patent litigation experience for Mr. Siegmund was not readily available in the provided search results. His previous firm, Cherry Johnson Siegmund James, PLLC, has offices in Texas.