Litigation

Huawei Device Co., Ltd. v. Fundamental Innovation Systems International LLC

institution denied

IPR2018-00485

Filed
2018-01-12
Terminated
2018-09-04

Patents at issue (1)

7834586

Summary

[Huawei Device Co., Ltd.](/litigations/by-plaintiff/Huawei%20Device%20Co.%2C%20Ltd.) et al. petitioned for inter partes review of the '586 patent. The Board denied institution on 2018-09-04.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

I'll research this case and the underlying district court litigation it arises from.

I have strong initial material. Let me verify the district court docket details, the PTAB denial, and FISI's background.

Let me verify the patent specifics, the institution denial reasoning, and the campaign's later developments.

Case overview — Huawei v. FISI (IPR2018-00485) and the E.D. Tex. litigation behind it

Parties and portfolio. The petitioner, Huawei Device Co., Ltd., is the device-manufacturing arm of Huawei Investment & Holding Co. — an operating company and one of the world's largest smartphone/telecom-equipment makers, whose U.S. device affiliate (Huawei Device USA, Inc.) was headquartered in Plano, Texas. The patent owner, Fundamental Innovation Systems International LLC ("FISI"), is a non-practicing entity: formed in Delaware in October 2015 and registered in Texas in 2016, it is backed by private-equity firm Centerbridge Partners (RPX reports ~$1.15B AUM) and acquired roughly 55+ U.S. assets (reportedly ~200 total assets, with foreign counterparts) from BlackBerry/RIM in a November 2015 multi-million-dollar transaction; its parent is Fundamental Innovation Systems International Holdings LLC (RPX; FISI mandatory notice, IPR2018-00215 Paper 24). Licensing was initially run by TnT IP and, from 2018, by a former IPVALUE team (Kapu Kumar, Paul Seaman, Paul Riley, later of Jaspar IP). FISI's complaints frame the patents as RIM/BlackBerry R&D output — "seminal BlackBerry innovations in the field of USB charging." The IPR challenged only U.S. Patent No. 7,834,586 ("Multifunctional Charger System and Method," Daniel M. Fischer et al., filed Feb. 26, 2010, issued Nov. 16, 2010, priority to 2001 provisionals), which claims a mobile device with a USB interface and charging subsystem that detects an identification signal different than USB enumeration (an "abnormal USB data condition") and then draws charge current unrestricted by the USB specification's current limit; claims 11–12 add a microprocessor and memory processing signals on the USB lines. The '586 was one of seven FISI patents asserted across the campaign — the Fischer family ('111, '586, '766, '550) and the Veselic family ('655 "Charging and Power Supply for Mobile Devices," '319, '514), the Fischer patents covering device- and adapter-side USB charging/identification signaling (e.g., the '111's adapter that signals "this power socket is not a USB host or hub," and the '655's switch-mode battery charger with battery-isolation circuitry). Family sketches beyond the '586 and '655 are drawn from claim-construction and IPR records and are less fully verified here (E.D. Tex. CC order, Dkt. 146).

Accused technology and procedural posture. The IPR is an administrative proceeding at the PTAB (Tech Center 2800, Art Unit 2858) — there is no district judge or division at the Board; the relevant adjudicator is the three-member panel, and the "venue" question that mattered was the parallel district case: Fundamental Innovation Systems Int'l LLC v. Huawei Investment & Holding Co. et al., No. 2:16-cv-01424-JRG-RSP (E.D. Tex., Marshall Division), filed December 2016 with Huawei Device Co., Ltd. and Huawei Device USA, Inc. among the defendants, consolidated into FISI's LG lead case (2:16-cv-01425-JRG-RSP) before Judge J. Rodney Gilstrap with Magistrate Judge Roy S. Payne. FISI accused Huawei smartphones, tablets and power adapters — including the Honor 8, P9, Mate 8/S, P8, Ascend Mate 7/P6, MediaPad M2 and adapter models such as HW‑050100C2W and HW‑059200CHQ — specifically their USB charging subsystems that detect a non-enumeration identification signal and draw current beyond USB limits, and adapters that generate such signals so the phone knows the source is not a USB host/hub. Marshall in 2016–18 was the leading patent-plaintiff venue; Huawei's Plano HQ supported personal jurisdiction/venue even after TC Heartland, and consolidation with the LG/Samsung cases let FISI litigate claim construction once for the whole portfolio (orders issued Jan. 31, 2018 and April 2, 2018). Huawei's petition, accorded filing Jan. 12, 2018, asserted three obviousness grounds against claims 1–3 and 8–13: Theobald (US 5,859,522) + USB 2.0 spec + Shiga (US 6,625,738); Dougherty (US 7,360,004) + Shiga; and Dougherty + Shiga + TIA/EIA-644 — relying on Dr. John Levy, against Dr. Kenneth Fernald for FISI. The Board denied institution on September 4, 2018, and refunded the $14,000 post-institution fee (PlainSite docket; Notice of Refund, Paper 10). Record counsel: docket emails indicate Covington & Burling (David Garr, Anupam Sharma) for Huawei and Irell & Manella (Hong Zhong, Michael Fleming) for FISI; Huawei's district-court team included Quinn Emanuel and Capshaw DeRieux (POA/courtesy-service filings). The full text of the Board's denial decision is not in my sourced materials, so I cannot state the adopted rationale; FISI's preliminary response argued the Shiga "SE1 signaling" theory was materially the same as the one the Board rejected in IPR2018-00111, that Shiga was not analogous art, that "mobile device configurable for use in a wireless telecommunications network" was a limiting preamble, and that there was no reasonable expectation of success in placing SE1 on USB data lines (POPR, June 12, 2018).

Why it matters. IPR2018-00485 is a window into an unusually litigation-tested NPE campaign. FISI's briefs state that 18 petitions were filed against the Fischer-family patents in 2017–18 and the Board denied institution in 13, with only the '550 patent proceeding to a final written decision (IPR2018-00111, Rogers + Shiga), which upheld the claims — making the portfolio hard to invalidate at the Board and pushing defendants toward licenses (reported 50–60 licensees including Samsung, LG, Huawei and ZTE). The recurring loser was the same Shiga/SE1 combination Huawei used here; the Board rejected it in companion petitions too (e.g., IPR2018-00472, Paper 12, Aug. 3, 2018; IPR2018-00493, Paper 10, Aug. 30, 2018; IPR2018-00465, Paper 11, Aug. 20, 2018), generally reasoning that a POSITA would not deliberately generate an SE1 signal on USB data lines because the USB specification proscribes it. Because a denial of institution creates no § 315(e) estoppel and is not appealable (Cuozzo; Shaw), Huawei kept its invalidity defenses intact — a point FISI unsuccessfully pressed against ZTE in N.D. Tex. (ZTE SJ opinion, 3:17-cv-01827-N) — but Huawei instead settled the E.D. Tex. case by joint motion to stay filed the same day, September 4, 2018, later becoming a licensee. The commercial stakes were large: the Fischer patents are asserted to cover the ubiquitous practice of proprietary fast charging over USB connectors that exceed the standard 500 mA envelope, i.e., effectively "all modern forms of high-speed USB charging" as FISI contended. The campaign continued well past this IPR: RPX took a portfolio license covering its members in November 2019 (with Apple settling a declaratory-judgment action filed in N.D. Cal., 3:19-cv-00638), FISI sued Anker and Cyber Power in March 2021, and a Delaware jury found Anker infringed and awarded over $13.6 million in March 2025. The '586 itself was re-challenged by TCT Mobile (IPR2021-00410, IPR2021-00599) and the family was also hit by ex parte reexamination (90/014,885).

Sourcing note: party names, patent, filing and denial dates, art unit, and the Sept. 4, 2018 termination are corroborated by the PTAB docket/refund notice, PlainSite and Law360's PTAB case page. Where I describe the Board's reasoning, the 2018 petition wave statistics, or the accused-product list, I have attributed to the underlying filings (petition/POPR/complaints) rather than to the denial decision itself, which I could not retrieve; the '586 abstract sketch and the ">50 licensees" figure rest on party filings and RPX/IAM reporting, not on an independent judicial finding.

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

I'll research this case and its parallel proceedings. Let me start with several searches.

Let me research the parallel district court litigation and the IPR denial decision.

Let me dig into the district court docket details and the consolidated case.

Scope note before the chronology

The case in your metadata — IPR2018-00485, Huawei Device Co., Ltd. v. Fundamental Innovation Systems International LLC — is a PTAB trial, not a district court infringement action. It has no complaint, answer, counterclaims, Markman order, trial, or verdict of its own. Those events belong to the parallel E.D. Tex. enforcement case:

I therefore track both tracks below and flag what is and is not well sourced. I also hit a search cap, so several docket-level specifics below rest on secondary aggregators (RPX, Patexia, Docket Alarm, Unified Patents, Justia) rather than PACER images; I say so where it matters.

Technology and patent background (undisputed)

Chronology

1. Filing and initial pleadings (district court)

  • 2016-12-16 — FISI sues the Huawei entities in E.D. Tex. (2:16-cv-01424). The '586 patent is pleaded as the Second Claim for Relief, with willfulness predicated on the 2015-12-14 notice letter. Named defendants per the record: Huawei Investment & Holding Co., Ltd.; [Huawei Technologies Co., Ltd.](/litigations/by-plaintiff/Huawei%20Technologies%20Co.%2C%20Ltd.); Huawei Device USA, Inc.; Futurewei Technologies, Inc. (RPX counts five defendants, which would include Huawei Device Co., Ltd., the entity that later appears as IPR petitioner).
  • Companion suits filed the same day and shortly after: LG (2:16-cv-01425, filed 2016-12-16), ZTE (2:17-cv-00124, 2017-02-13), Samsung (2:17-cv-00145, 2017-02-21).
  • Answers/counterclaims: I could not verify the Huawei defendants' answer, invalidity counterclaims, or any § 285/declaratory-judgment pleading from the sources retrieved. Treat that gap as a sourcing limitation, not as an absence of such pleadings.

2. Case management and claim construction (district court)

  • 2017-12-07 — Amended Docket Control Order setting the claim-construction track (cited as Dkt. 96 in the FISI P.R. 4-2 filing). FISI served P.R. 4-2 preliminary claim constructions covering the '111, '319, '586, '655, '514, '766 and '550 patents, and the parties exchanged a P.R. 4-3 Joint Claim Construction and Prehearing Statement (both later filed as IPR exhibits 1023/1024, https://www.docketalarm.com/cases/PTAB/IPR2018-00485/...).
  • 2018-01-31 — Claim Construction Memorandum Opinion and Order in the related Samsung action, No. 2:17-cv-145-JRG-RSP, Dkt. 140 at 20, construing "USB" as "Universal Serial Bus as described in Universal Serial Bus Specification Revision 2.0 and related versions of this standard at the time of the claimed invention." FISI's own expert adopted that construction in the IPR (Ex. 2002, Rodgers Declaration; https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1507635](/patent/1507635)/...).
  • 2018-04-02 — Claim Construction Memorandum Opinion and Order by Magistrate Judge Payne in the LG case, which was being administered jointly with the Huawei case (Unified Patents docket for 2:16-cv-01425; the order was filed as Ex. 2013 in IPR2018-00485). FISI filed an objection to claim construction on 2018-04-16, which Judge Gilstrap overruled on 2018-04-20. I could not retrieve the full text of the 2018-04-02 order, so the complete set of terms construed (beyond "USB") is unverified.

3. Pre-trial motions of substance (district court)

  • Stay/venue: the only stay-related activity I can document is a Federal Circuit order of 2018-04-02 directing FISI to respond to LG's motion to stay all district court proceedings pending the Federal Circuit's disposition of a mandamus petition; the petition and stay motion were denied as moot by Federal Circuit order entered ~2018-04-23 (Unified Patents docket, 2:16-cv-01425). No Huawei-specific motion to dismiss, transfer, or stay pending IPR is evidenced in the sources retrieved.
  • Supplemental contentions: the court granted FISI leave to serve supplemental infringement contentions against the Huawei defendants on 2018-04-10 (Dkt. 150), underscoring that discovery/infringence theories against Huawei were still being expanded as late as April 2018.
  • Other: LG's opposed motion to enter the Model Order Focusing Patent Claims and Prior Art References was denied at the 2018-04-25 motions hearing; leave for supplemental invalidity contentions was granted 2018-04-26.
  • Summary judgment: none is evidenced; no Markman-stage or case-dispositive motion practice by Huawei appears in the materials retrieved.

4. Discovery milestones of strategic significance

  • P.R. 4-2/4-3 exchanges and expert declarations (Kenneth Fernald, Ph.D. for FISI; Steven Rodgers) — 2017-12 / 2018 (IPR2018-00485 Exs. 2001, 2002).
  • Third-party discovery: a stipulated supplemental protective order between non-party Texas Instruments and all parties, signed 2018-04-30 — evidence that discovery reached the USB silicon supply chain.
  • Deposition practice crossing over into the IPRs: FISI filed Garney deposition transcript excerpts (Ex. 2005) and LG's 2018-04-18 redacted response to the claim-construction opinion (Ex. 2014) with its POPR, showing the litigation and IPR records were being used against each other.
  • Statutory disclaimer: FISI filed a Statutory Disclaimer as Ex. 2016 with its POPR on 2018-06-12. I cannot confirm from the retrieved record which claims were disclaimed, but a disclaimer of some challenged '586 claims in 2018 is a plausible explanation for why the later TCT/TCL petition (IPR2021-00599) attacked only claims 1-2 and 8-9. Flagged as inference.

5. The IPR track — filing through denial (the metadata case)

  • 2018-01-12 — Huawei Device Co., Ltd. files IPR2018-00485 against the '586; petition accorded filing date 2018-01-12 (Law360 lists a January 11, 2018 filing; the PTAB-acceded date controls). Petitioner's counsel listed as David Garr et al. (PTAB docket; Docket Alarm's firm index associates Huawei's companion '111 petition, IPR2018-00487, with Orrick, Herrington & Sutcliffe). Real-party-in-interest scope is not confirmed.
  • Petition challenged claims 1–3 and 8–13 on three grounds, supported by the Declaration of Dr. John Levy (Ex. 1005):
  • 2018-01-22 — FISI's power of attorney and mandatory notices filed.
  • 2018-03-12 — Notice of Accord Filing Date (Paper 6).
  • 2018-06-12 — Patent Owner Preliminary Response (Paper 7), with 17 exhibits. FISI's core arguments: (i) the SE1-signaling theory was already rejected in IPR2018-00111; (ii) no reasonable expectation of success because the USB 2.0 spec forbids intentionally generating SE1; (iii) Shiga is not analogous art and its SE1 signal is sent on lines "not connected" to the USB host; (iv) the Dougherty combination would render the docking station inoperable and fail in the "dead battery" scenario; (v) claim construction — "the mobile device configurable for use in a wireless telecommunications network" is limiting. (https://www.docketalarm.com/cases/PTAB/IPR2018-00485/.../Preliminary_Response-7-...pdf)
  • 2018-08-30 — Board denies institution in IPR2018-00493 (LG's '586 petition), Paper 10: petitioner failed to explain why replacing Dougherty's USB enumeration with Shiga's SE1 signal would not render the docking station inoperable, and the specification's proscription on intentional SE1 "suggests that the combination … is not a 'trivial alternative.'"
  • 2018-09-04 — Board denies institution in IPR2018-00485 (Paper 8). The Board found Huawei did not persuasively explain how Dougherty's docking station and laptop "could communicate if the required USB handshaking protocols [enumeration] are replaced with an SE1 signal," nor that the modification "would have constituted the use of a known technique to improve a similar device in the same way"; and it rejected the alternative "charge-only" embodiment as unsupported ("we are directed to no disclosure in Dougherty or Shiga of a docking station designed to provide only power to a laptop … Nor does Petitioner persuasively explain why one of ordinary skill … would use such a docking station, as opposed to a single power plug"). (Quoted in IPR2021-00599 petition/POPR filings, https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1546974](/patent/1546974)/...)
  • 2018-09-12 / 2018-10-05 — Huawei's Request for Refund of the Post-Institution Fee (Paper 9) and the Board's Notice of Refund (Paper 10). No appeal lies from a denial of institution. 35 U.S.C. § 314(d) — the proceeding ended 2018-09-04.

6. Effect of the PTAB proceedings on the litigation, and disposition

  • 2018-07-19 — FISI's Samsung action was dismissed after settlement (IAM, https://www.iam-media.com/industry/telecoms-networking-equipment), removing the lead test case from the E.D. Tex. group.
  • By 2018-09-13 — FISI's own PTAB mandatory notice in IPR2018-00215 described the Huawei case as "consolidated with the LG action and stayed pending settlement" (https://www.docketalarm.com/cases/PTAB/IPR2018-00215/...).
  • 2018-09-27 — 2:16-cv-01424 closed (RPX Insight). Contemporaneous reporting states FISI reached patent license agreements with Huawei, LG and Samsung in 2018 (ifeng/tech.ifeng.com account of the later Apple suit). I could not retrieve the actual dismissal/license order or its terms; the license is not public in the sources reviewed.
  • Trial never occurred. The amended docket control order had set pretrial conference for 2018-10-16 and jury selection for 2018-11-05, both mooted by the stay/settlement. Consequently there is no verdict, no JMOL/new-trial motion, and no fee motion.
  • No appeal of the final district court disposition is evidenced; the IPR denials were statutorily non-appealable.

7. Parallel PTAB/PTO proceedings on the '586 and their effect

  • First wave, 2017–2018: eighteen petitions across the Fischer family. Per FISI's later submission, the Board denied institution in 13 instances — expressly including IPR2018-00274 (ZTE), IPR2018-00485 (Huawei) and IPR2018-00493 (LG), all against the '586 — reached a final written decision for FISI in IPR2018-00111, and terminated four (IPTAB filing, https://ptacts.uspto.gov/ptacts/public-informations/petitions/1546974/...). Huawei filed a coordinated Huawei Device set (including IPR2018-00465 on the '550, IPR2018-00479 on the '655, IPR2018-00485 on the '586, and IPR2018-00487 on the '111).
  • Litigation effect: because every '586 challenge was denied institution, no § 315(e) estoppel attached and FISI's validity position was unimpaired in the district case. Note the contrast in the same family: in the ZTE N.D. Tex. action the court declined to apply § 315(e)(2) estoppel where the invalidity grounds appeared in a non-instituted petition (Memorandum Opinion and Order, No. 3:17-cv-01827, https://cases.justia.com/federal/district-courts/texas/txndce/3:2017cv01827/[290306/226](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=290306-0226)/0.pdf) — a ruling with direct doctrinal relevance to Huawei's litigation posture.
  • FISI's disclaimer practice: FISI filed a Statutory Disclaimer alongside its '586 POPR (Ex. 2016, 2018-06-12) and, later, disclaimed all claims against which Dougherty was asserted in IPR2021-428 (April 23, 2021 disclaimer) on the '550 patent, mooting those grounds.
  • Second wave, 2021–2022 — the '586 ultimately fell: IPR2021-00599 (TCT Mobile (US) et al.) challenged '586 claims 1–2 and 8–9 on Morita-based (Japanese Pat. App. 2000-165513A) grounds, invoking § 325(d) arguments. Oral hearing was held 2022-06-07, and the Board issued a Final Written Decision holding all challenged claims unpatentable (Banner Witcoff copy, https://bannerwitcoff.com/wp-content/uploads/2022/08/IPR2021-00599.pdf). I could not confirm the exact FWD date or whether it was appealed and affirmed; treat 2022 as the year and the affirmance status as unknown.
  • Related: an ex parte reexamination (90/014,886) in the Fischer family raised Dougherty/Shiga/Morita combinations and contains FISI's expert (Dr. Jacob Baker) analysis of the prior SE1 arguments (https://www.cmosedu.com/jbaker/expert_witness/2021/Ex_Parte_Reexamination_90_014886.pdf). I could not confirm that this reexam is on the '586 specifically.

Bottom line

Event Date Result
FISI complaint v. Huawei, E.D. Tex. 2:16-cv-01424 ('586 pleaded) 2016-12-16 Filed
Claim construction ("USB"), Samsung-related order; Payne CC order 2018-01-31; 2018-04-02 FISI's objection overruled 2018-04-20
Huawei IPR2018-00485 petition ('586, cls. 1–3, 8–13) 2018-01-12 Filed
POPR (Fernald Decl.) 2018-06-12 Filed
Institution denied — IPR2018-00485, Paper 8 2018-09-04 Huawei loses; refund issued 2018-10-05
LG IPR2018-00493 denied 2018-08-30 Same SE1-Dougherty defects
District case stayed pending settlement; closed 2018-09 (closed 2018-09-27) Resolved via license; no trial/verdict/appeal
'586 claims 1–2, 8–9 held unpatentable in IPR2021-00599 2022 (hearing 2022-06-07) Patent claims invalidated — years after this case

Present posture: IPR2018-00485 is terminated (institution denied 2018-09-04) and non-appealable; the parallel E.D. Tex. infringement action was settled and closed on 2018-09-27 under a confidential license. The '586 patent later lost claims 1–2 and 8–9 in IPR2021-00599 (2022), the same claims the Board had declined to review in 2018.

Sourcing caveats: docket items for 2:16-cv-01424 are drawn from RPX Insight, Unified Patents, Patexia, Docket Alarm, Justia and PTAB filings, not PACER directly; the April 2, 2018 claim-construction order's full content, the Huawei answer/counterclaims, the exact dismissal order, the license terms, and the precise IPR2021-00599 FWD date and any Federal Circuit appeal are not verified here.

In the news

What the press has reported about this case, summarized with links to the source articles.

I'll search for press coverage across multiple angles.

The first searches returned mostly primary filings rather than press. Let me search press angles specifically.

Good — I found RPX and IAM coverage on the campaign. Let me now target press coverage of the IPR denials, the settlements, and the later verdict.

I hit the search-step cap, so here is what the searches actually surfaced.

Press coverage of Huawei v. FISI (IPR2018-00485)

The proceeding itself generated essentially no dedicated press coverage that I could find. Searches on the case caption, the patent number (7,834,586), the petitioner/patent-owner names, and the institution-denial date returned only docket-aggregator and primary-source material, not journalism: Law360 maintains a bare PTAB case page for IPR2018-00485 recording the status "Institution Denied" and a January 11, 2018 filing date, and PlainSite and Patexia carry the docket papers (Papers 7, 8, 9, 10). The closest thing to a news item is The National Law Review's "PTO Litigation Report – January 17, 2018," which is a routine new-filings list and mentions only the companion petition against the '550 patent (IPR2018-00465), not the '586 petition. I found no Reuters, Bloomberg Law, Law360 article, Ars Technica, Verge, IPWatchdog, Patently-O, or EFF piece about the denial of institution in IPR2018-00485, and no reporting on the Huawei settlement/license of the E.D. Tex. case. So the answer to "what did the press report about this case" is, candidly: almost nothing directly. Importantly, Law360's entry records a January 11, 2018 filing date versus the PTAB-accorded January 12, 2018 date — the same one-day discrepancy already noted in the existing case summary.

What the press did cover is FISI's broader USB-charging campaign, in which Huawei appears as one defendant among many. RPX Insight reported on 2021-03-05 that FISI, "backed by the private equity firm Centerbridge Partners and asserting former BlackBerry patents," had "filed roughly 20 suits since late 2016," naming Huawei alongside Apple, Anker, Aukey, BBK (OnePlus), BLU, Belkin/Hon Hai, Jasco, Lenovo, LG, Samsung, TCL, Coolpad and ZTE; it added that FISI acquired "its 18 patents-in-campaign from BlackBerry in a November 2015 transaction that included over 55 US assets as well as foreign counterparts," and that the assignment stemmed from a "multi-million dollar deal" with Centerbridge (estimated $1.15B AUM) whose terms "were not made public at the time." Earlier, RPX reported on 2018-03-25 that FISI's campaign had extended to Europe, with hearings in the District Court of Mannheim against Samsung and retailers, plus invalidity proceedings in Germany and at the EPO. RPX also reported on 2019-02-09 that Apple filed a declaratory-judgment action (N.D. Cal., 3:19-cv-00638) against FISI over the same BlackBerry-origin family. Several of these accounts frame the campaign as significant primarily because of who is behind it — a private-equity-backed NPE monetizing an operating company's portfolio — rather than because of any single PTAB ruling. Notably, none of the RPX/IAM pieces I found discuss the '586 patent or the IPR2018-00485 denial by name.

The campaign's one big litigated win drew real coverage, but it is not about this patent. IAM reported that "Fundamental Innovation Systems won the top jury verdict of $14 million against Anker Innovations" in Q1 2025, and Law360's IP news feed carried a 2025-03-07 item that "A Delaware federal jury on Friday found Hong Kong electronics company Anker Innovations Co." liable. A Korean trade outlet, IPDaily, gave the most detail on 2025-03-11 — a "$13.6 million" award, an implied royalty of $0.50 per unit (above FISI's ask), findings of willful infringement of four patents (U.S. 7,239,111; 8,624,550; 7,453,233; 6,936,936), verdict coverage of wall/car/desktop chargers, power strips and power banks, and the assertion that Centerbridge "acquired about 200 patents" from BlackBerry "for $50 million." An aggregator, Legal News Feed, repeated the $13.6M figure. Note the mismatch: none of the four patents the Anker jury found infringed is the '586 — the verdict patents are Fischer-family siblings (the '111 and '550) and other FISI patents, not the patent at issue in IPR2018-00485. The Anker coverage is therefore relevant only as evidence of how the campaign fared, not as reporting on this case.

Where reporting goes beyond the record, and where accounts differ. (i) The damages figure is reported inconsistently — IAM says "$14 million," IPDaily's headline says the equivalent of ~$14M while its body says $13.6M, and the earlier section of this case summary used $13.6M; the jury's exact sum and whether it reflects the base verdict or pre-judgment additions are not reconciled in the sources. (ii) The $50 million acquisition price and the "200 patents" figure come from IPDaily (a single secondary account), while RPX describes the deal terms as undisclosed and repeatedly uses "over 55 US assets" (plus foreign counterparts) or "roughly 200 patent assets" — so the price tag and portfolio count are reported-but-unverified, not court-confirmed. (iii) IPDaily's claim that FISI "filed 20 suits between 2016 and 2021 and voluntarily dismissed or settled all but the Anker case" is an analyst characterization that goes beyond any docket I could verify. (iv) Executive/party statements — e.g., the "seminal BlackBerry innovations in the field of USB charging" framing and the "more than 50 licensees" figure — trace to FISI's own pleadings and PTAB filings (as noted in the earlier sections), not to independent press findings, so they should not be treated as journalist-verified. I could not locate any press account quoting Huawei, its counsel, or its executives about IPR2018-00485 or the 2018 settlement, and I found no trade-press discussion of the Board's reasoning in the denial. If the user needs actual article-level coverage of this specific IPR, the honest conclusion is that the record is thin: aggregator dockets plus campaign-level NPE reporting, with no dedicated news story on the '586 denial itself.

Sources

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research the docket and counsel of record for this IPR petition.

Strong leads. Let me verify the Petition's counsel block and the Board's decision, plus attorney backgrounds.

Let me confirm the Petition's mandatory notices and get background on both attorneys.

Scope note

This proceeding is an inter partes review at the PTAB, not a district court infringement action. There is therefore no "plaintiff" in the Article III sense — the plaintiff-side party is the petitioner, Huawei Device Co., Ltd. (the docket sometimes shows it as "Huawei Device Co., Ltd. et al.," but the Power of Attorney names only Huawei Device Co., Ltd. as petitioner). PTAB practice also does not require local counsel, and no in-house Huawei attorney is identified anywhere in the papers I could retrieve. Below are the two practitioners who are counsel of record for the petitioner-side party.

Petitioner's counsel of record

1. David A. Garr — Lead counsel

  • Firm / office: Covington & Burling LLP, One CityCenter, 850 Tenth Street NW, Washington, DC 20001 (T: 202‑662‑5250 / 202‑662‑6000).
  • PTAB registration: Reg. No. 74,932.
  • Record basis: Named as lead counsel in Petitioner's Power of Attorney filed with the petition on Jan. 12, 2018, and signed the post-institution refund request on Sept. 12, 2018 as "Attorneys for Petitioner." He is also the sole "Petitioner Counsel" entry on the Plainsite docket ("Garr, David et al") and the first Covington name on the Board's Paper 10 service list.
  • Experience note: Covington partner and co‑leader of the firm's PTAB trials practice (with Scott Weidenfeller in Washington and Peter Chen in Palo Alto); the firm credits him with over 75 AIA proceedings spanning the PTO, district courts and the ITC. He was lead counsel for Warby Parker in a successful PTAB invalidation (publicized by Covington in 2019), lead counsel for Indivior in IPR2019‑00329, and appears as lead counsel for Dell in IPR2020‑00140 and Samsung Display in IPR2024‑01093. Harvard Law, 2006; Super Lawyers (IP litigation, DC) 2018–2020.

2. Anupam Sharma — Back‑up counsel

  • Firm / office: Covington & Burling LLP, 333 Twin Dolphin Drive, Suite 700, Redwood Shores/Redwood City, CA 94065 (T: 650‑632‑4700).
  • PTAB registration: Reg. No. 55,609.
  • Record basis: Named as back‑up counsel in the Jan. 12, 2018 Power of Attorney (listed with the Redwood City address) and co‑signed the Sept. 12, 2018 refund request (listed with the Redwood Shores address — the same Twin Dolphin Drive office); also on the Board's Paper 10 service list.
  • Experience note: Covington patent attorney in the firm's Redwood Shores office who served as recurring back‑up/lead counsel on Huawei's PTAB campaign against Fundamental Innovation Systems (e.g., IPR2018‑00479, IPR2018‑00485) and against Optis (IPR2018‑00658, where an August 2018 updated mandatory notice substituted Peter P. Chen as lead with Ms. Sharma as back‑up). I could not retrieve a current firm bio page for her, so I am not characterizing her title or admission date beyond the registration number and filings.

Power of attorney scope: Both were appointed via Huawei's Power of Attorney under 37 C.F.R. § 42.10(b), which appoints "the practitioners associated with Customer Number 26853" — i.e., Covington's customer number — with Garr and Sharma named as the designated lead/back‑up. Fees were charged to Covington's Deposit Account No. 50‑0740. Other Covington attorneys (Peter P. Chen, Gregory S. Discher) appear for Huawei in sibling IPRs on the same patent family, but the record in IPR2018‑00485 reflects only Garr and Sharma.

No substitution or withdrawal: The docket runs only to Paper 10 (Notice of Refund, mailed Oct. 4, 2018); there are no motions to withdraw or updated mandatory notices changing petitioner's counsel before the proceeding closed on Sept. 4, 2018 (institution denied, Paper 8). Nothing appears to be under seal with respect to counsel.

Context: opposing counsel (for completeness, not the answer asked)

Patent Owner Fundamental Innovation Systems International LLC (the defendant-side party here) was represented in the IPR by Irell & Manella LLP — Hong Annita Zhong, Michael R. Fleming and Jason Sheasby (service email fundamentalIPRs@irell.com) — while its related E.D. Tex. infringement suit was handled by Quinn Emanuel Urquhart & Sullivan (Edward J. DeFranco, Brian P. Biddinger, Joseph Milowic III, Kevin P.B. Johnson) with Capshaw DeRieux LLP (Sidney Calvin Capshaw III) as local counsel, per the certificate of service in the petition.

Key docket anchors

  • Paper 2 – Petition for Inter Partes Review of U.S. Patent No. 7,834,586 (filed Jan. 12, 2018)
  • Petitioner Power of Attorney (Jan. 12, 2018) – names Garr (lead) and Sharma (back‑up)
  • Paper 7 – Patent Owner Preliminary Response (June 12, 2018)
  • Paper 8 – Decision Denying Institution of Inter Partes Review (Sept. 4, 2018)
  • Paper 9 – Request for Refund of Post‑Institution Fee (Sept. 12, 2018), signed by Garr
  • Paper 10 – Notice of Refund, $14,000 (mailed Oct. 4, 2018)

Sources: Plainsite PTAB docket for IPR2018‑00485 (https://www.plainsite.org/dockets/42ks7efym/uspto-patent-trial-and-appeal-board/huawei-device-co-ltd-et-al-v-fundamental-innovation-systems-international-llc-et-al/); Docket Alarm filings for IPR2018‑00485 (Power of Attorney; Paper 9 refund request; Paper 10 Notice of Refund); Covington & Burling PTAB Trials practice page (https://www.cov.com/en/practices-and-industries/practices/litigation-and-investigations/patent-office-ptab-trials); Super Lawyers profile for David A. Garr; Covington client alert on the Warby Parker PTAB decision. Attorney titles/bios that I could not corroborate with a primary firm page (notably Anupam Sharma's) are flagged above rather than assumed.

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research the Patent Owner–side (defendant-side) counsel of record, verifying the Irell & Manella and Quinn Emanuel entries from the earlier section and pulling bios.

Let me pull bios for the three Irell & Manella attorneys and confirm the PTAB appearance papers.

Let me confirm the Patent Owner's Power of Attorney / Mandatory Notice papers and the district-court defendant-side counsel for completeness.

Framing: "defendant" in IPR2018-00485 = the Patent Owner

IPR2018-00485 is a PTAB inter partes review, so the party array is Petitioner v. Patent Owner, not plaintiff v. defendant. The "defendant-side" party in this proceeding is therefore the Patent Owner, Fundamental Innovation Systems International LLC ("FISI"). FISI is the plaintiff in the parallel E.D. Tex. infringement actions, and the Huawei entities are the defendants there — the prior section already covered petitioner-side counsel (Covington & Burling), so this section covers the opposite side. I address both framings below, with the IPR answer first.

Patent Owner's counsel of record in IPR2018-00485 — Irell & Manella LLP

FISI's PTAB representation was handled entirely by Irell & Manella LLP, 1800 Avenue of the Stars, Suite 900, Los Angeles, CA 90067 (T: 310-277-1010 / Fax: 310-203-7199). A single service address, fundamentalIPRs@irell.com, was used across the FISI-Huawei IPR family. Three attorneys appeared:

1. H. Annita Zhong (a.k.a. Hong Annita Zhong) — Lead counsel

  • Firm/office: Irell & Manella LLP, Los Angeles, CA.
  • PTAB registration: Reg. No. 66,530.
  • Record basis: Named in the Patent Owner Preliminary Response (Paper 7, June 12, 2018) and in the certificate of service on Petitioner's own Paper 9 refund request (Sept. 12, 2018), which serves "counsel of record for Patent Owner" as "Hong Annita Zhong / Michael R. Fleming / Jason Sheasby, Irell & Manella LLP." She also appears on the Board's Paper 10 Notice of Refund service list as "Hong Zhong (hzhong@irell.com)."
  • Experience note: Irell partner; Yale Law J.D. 2009 and Caltech Ph.D. (inorganic chemistry). Her firm bio credits her with lead PTAB counsel work defending a portfolio of patents in 29 IPRs filed by handset makers "resulting in a perfect record with no claims invalidated" — that campaign is FISI's, against Samsung, LG, ZTE, Huawei and others — plus the $300M PanOptis v. Apple FRAND verdict and the Netlist v. Micron/Samsung verdicts. She was of counsel when this petition was filed (promoted to partner effective Jan. 1, 2019), which is worth noting for anyone tracking her title as of the 2018 filings.

2. Michael R. Fleming — Back-up counsel

  • Firm/office: Irell & Manella LLP (he split time between Washington, D.C. and the Los Angeles/Newport Beach offices).
  • PTAB registration: Reg. No. 67,933.
  • Record basis: Named in the same Paper 7 signature block and Paper 9 service list as "Michael R. Fleming (Reg. No. 67,933)" / "Michael Fleming (mfleming@irell.com)."
  • Experience note: Former Chief Administrative Patent Judge at the PTAB; spent over 30 years at the USPTO, including 17 as an administrative patent judge, and helped draft the post-grant provisions of the AIA. He joined Irell in May 2015. Timeliness flag: Irell announced his retirement effective January 2026, so he is no longer in practice — a fact that post-dates this 2018 proceeding.

3. Jason G. Sheasby — Trial counsel (pro hac vice)

  • Firm/office: Irell & Manella LLP, Los Angeles, CA.
  • PTAB status: Appeared as "Jason Sheasby (pro hac vice to be requested)" — i.e., he is not a registered PTAB practitioner and required pro hac vice admission, which the Board routinely granted him in the FISI IPR family (his later affidavit lists pro hac vice admissions in IPR2018-00111, IPR2018-00215 and dozens of others).
  • Record basis: Same Paper 7 signature block and Paper 9/Paper 10 service lists.
  • Experience note: Irell partner and one of the country's most active patent trial lawyers (Chambers; American Lawyer Litigator of the Year 2024). His firm bio expressly cites the FISI engagement — "a perfect 29-0 record in the PTAB on behalf of an owner of a set of fundamental patents in the USB charging sector" — which is this very campaign.

Appearance papers: The Patent Owner filed its Power of Attorney (Paper 3), Mandatory Notice (Paper 4), and a second Power of Attorney (Paper 5) on Jan. 22, 2018, per the Patexia docket. I could not retrieve the full text of Papers 3/5 in the searches run here, so I am relying on the signature blocks and service lists in Papers 7, 9 and 10 (all of which are consistent) rather than on the POA text itself; the reason for two POA filings is not confirmed on the record I retrieved. Nothing about Patent Owner's counsel appears to be sealed.

No substitution or withdrawal: The docket ends at Paper 10 (Notice of Refund, mailed Oct. 4, 2018), and no motion to withdraw or updated mandatory notice changing FISI's PTAB counsel appears before the proceeding closed (institution denied, Paper 8, Sept. 4, 2018).

Context: defendant-side counsel in the district court case (mirror image)

Because the caption in the task is the IPR caption, the above is the operative answer. For completeness on the underlying infringement litigation — where the Huawei entities are the defendants — the record shows a different defense team:

  • Covington & Burling LLP (the same firm as petitioner's IPR counsel) is listed as "Attorneys for Defendants Huawei Device Co., Ltd., and Huawei Device USA, Inc." in the E.D. Tex. matter, with Anupam Sharma, Stanley Young, Elizabeth S. Pehrson, Michael E. Bowlus, Michael Kenneth Plimack, Matthew B. Phelps and Sinan Utku on the signature block.
  • Siebman, Burg, Phillips & Smith, LLP (Michael C. Smith, Marshall, TX) appears as local counsel in that district-court filing.
  • Conversely, in that same district-court document, Quinn Emanuel Urquhart & Sullivan LLP (Edward J. DeFranco, Brian P. Biddinger, Joseph Milowic III, Ron Hagiz, Kevin P.B. Johnson) signed as "Attorneys for Plaintiff Fundamental Innovation Systems International LLC" — i.e., Quinn Emanuel was FISI's district-court litigation counsel, while Irell & Manella was its PTAB counsel. That division of labor is the one to keep straight.
  • Related E.D. Tex. cases naming the Huawei entities as defendants: FISI v. Huawei Investment & Holding Co., Ltd. et al., No. 2:16-cv-01424-JRG-RSP (filed Dec. 16, 2016; Judge Gilstrap; FISI represented by, among others, Sidney Calvin Capshaw III and Edward J. DeFranco per the Justia docket) and a companion Huawei action.

Caveats

  • The distinction between Irell (PTAB for FISI) and Quinn Emanuel (district court for FISI) is firm-grounded in the filings but the two teams overlapped in personnel descriptions across sources; I have not assumed any attorney handled both forums absent a filing showing it.
  • Michael Fleming's Reg. No. 67,933, Annita Zhong's Reg. No. 66,530, and the "pro hac vice" status of Sheasby are drawn from PTAB papers and are reliable. Attorney titles that reflect post-2018 developments (Zhong's 2019 partnership; Fleming's 2026 retirement) are flagged as such rather than treated as the 2018 status.
  • I could not reach PACER directly within this session; the district-court counsel identities rest on a retrieved E.D. Tex. filing and the Justia docket rather than a PACER docket sheet, and would warrant a PACER confirm.

Sources: IPR2018-00485 Paper 7 (Patent Owner Preliminary Response, June 12, 2018) and Papers 9–10 (Docket Alarm); Patexia docket for IPR2018-00485 (Papers 3/4/5, filed Jan. 22, 2018); Plainsite PTAB docket for IPR2018-00485; Irell & Manella bio pages for Hong (Annita) Zhong and Jason G. Sheasby; Irell news items on Zhong's 2019 promotion and Fleming's retirement; Chambers USA profiles; Justia docket for FISI v. Huawei Investment & Holding, No. 2:16-cv-01424 (E.D. Tex.).