Litigation
Kangxi Communication Technologies (Shanghai) Co., Ltd. v. Skyworks Solutions Canada, Inc.
Not institutedIPR2025-00912
- Filed
- 2025-04-22
Patents at issue (1)
Plaintiffs (1)
Defendants (1)
Summary
Inter partes review petition filed by Kangxi challenging the '200 patent. The PTAB issued a discretionary denial of institution on September 12, 2025, and Kangxi sought Director review on October 14, 2025; no trial was instituted.
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, keeping in mind the docket number indicates a PTAB proceeding rather than a district court action.
Now let me dig into the Director Review, the "settled expectations" doctrine, and the parallel ITC/district court track.
Case overview and background — IPR2025-00912
One framing correction up front: despite the caption, this is not itself an infringement action. IPR2025-00912 is a PTAB inter partes review petition filed by Kangxi Communication Technologies (Shanghai) Co., Ltd. ("KCT") against U.S. Patent No. 7,409,200, owned by Skyworks Solutions Canada, Inc. The infringement case it belongs to is Skyworks Solutions Canada, Inc., Skyworks Global Pte Ltd v. Kangxi Communication Technologies (Shanghai) Co., Ltd. et al., No. 8:24-cv-00976-FWS-ADS (C.D. Cal., filed May 6, 2024), assigned to Judge Fred W. Slaughter (FWS) with Magistrate Judge Autumn D. Spaeth (ADS). That case was stayed on September 13, 2024 under the mandatory stay provision, 28 U.S.C. § 1659(a), pending ITC Inv. No. 337-TA-1413 — the stay order is Ex. 1018 in the IPR record.
The parties. Skyworks Canada (Ottawa) is an operating RF semiconductor company, not an NPE: it was formed from Skyworks Solutions, Inc.'s acquisition of SiGe Semiconductor, Inc. It is a wholly owned subsidiary of Skyworks Luxembourg S.à r.l., itself a Skyworks subsidiary; the IPR's patent owner mandatory notices (Paper 4, May 13, 2025) list Skyworks Global Pte Ltd., Skyworks Luxembourg S.à r.l., and Skyworks Solutions, Inc. as additional real parties-in-interest. Petitioner KCT (listed on the Shanghai STAR Market as 688653, Grand Kangxi Communication Technologies (Shanghai) Co., Ltd., founded 2015) is a direct competitor — a fabless designer of Wi-Fi RF front-end modules (FEMs), IoT FEMs and audio IoT modules built on combined GaAs + CMOS technology, shipping to ZTE, H3C, Ruijie, TP-Link/Tenda, ASUS and D-Link, with platform certifications at Qualcomm, MediaTek, Realtek and Broadcom. So this is operating-company-versus-operating-company competition in Wi-Fi RFFE, with Skyworks (with Qorvo) historically holding the majority of that market.
The patent and the accused technology. The '200 patent, "Module Integration Integrated Circuits," issued August 5, 2008 and claims a compact multi-die RF module in which a signal conditioning circuit is partitioned into functional portions fabricated on separate semiconductor dies using different processes (e.g., a GaAs power-amplifier die plus a silicon/BiCMOS die) mounted on a common substrate. The accused products are KCT's Wi-Fi FEMs and downstream devices containing them: Skyworks' ITC complaint and parallel C.D. Cal. complaint asserted claims 1, 2, 6, 10–12, 15, 18–20 and 23–25 of the '200 patent against those modules, seeking exclusion orders and a market injunction. In the IPR, KCT challenged a broader set — claims 1–2, 4, 6, 10–15, 18–20, 23–26 and 29–31 — on two obviousness grounds: (1) U.S. Pub. 2003/0017809 (Garlepp); and (2) Magoon (2002 IEEE journal article) in view of Ngompe (2003 IEEE symposium paper). Ground 2 carries an unusual rhetorical twist that KCT pressed: both Magoon and Ngompe were authored by Skyworks personnel, so KCT argued the patent owner's own engineers supplied the motivation to combine. KCT's expert was Dr. Ayman Fayed. Counsel: Diana M. Sangalli and Patrick D. McPherson of Duane Morris LLP for KCT; Joseph F. Haag and Haixia Lin of WilmerHale for Skyworks (Haag withdrew in September 2025).
Procedural posture and why it mattered. Skyworks filed its ITC complaint on July 17, 2024; the Commission instituted on August 16, 2024 as Inv. No. 337-TA-1413 ("Certain Wireless Front-End Modules and Devices Containing the Same"), asserting five patents: the '200, plus U.S. Patents 8,717,101, 9,917,563, 9,450,579 and 9,148,194. Skyworks voluntarily withdrew the '200 from the ITC investigation in late 2024, and the Commission terminated the investigation as to that patent (ALJ Initial Determination No. 13, Nov. 8, 2024; Commission notice declining review). KCT then filed this IPR on April 22, 2025 — the fifth of five IPR petitions it filed against the five asserted patents — because Skyworks had dropped the '200 only from the ITC docket and was still pressing it in the stayed district court case. Skyworks responded with a request for discretionary denial (Paper 7, July 23, 2025); KCT opposed (Paper 8, Aug. 22, 2025). On September 12, 2025, the Board denied institution under 35 U.S.C. § 314(a), and the decision is signed by Acting Director Coke Morgan Stewart herself. The Board acknowledged facts favoring institution — the FWD was projected for October 2026, and no ITC proceeding on this patent remained — but held that a patent in force "over seventeen years" creates "strong settled expectations for Patent Owner," citing Dabico Airport Solutions Inc. v. AXA Power ApS, IPR2025-00408, Paper 21 (Director June 18, 2025). KCT filed a Request for Director Review on October 14, 2025 that attacked the doctrine on statutory-authority, APA notice-and-comment, and arbitrary-and-capricious grounds; I could not verify from available sources whether that request was ever decided.
Why it's notable. The denial is one of the leading illustrations of the "settled expectations" line of §314(a) denials that the Office adopted after the February–March 2025 rescission of the prior interim guidance — a policy shift the Federal Circuit summarized in In re Kangxi Communication Technologies (Shanghai) Co., Ltd., No. 2026-115 (Fed. Cir. Feb. 24, 2026) (nonprecedential). That order denied KCT's mandamus petition as to two other Skyworks patents (IPR2025-00372 and -00373), invoking § 314(d)/Thryv and two December 9, 2025 nonprecedential decisions, In re Cambridge Industries USA, No. 2026-101, and In re SanDisk Technologies, No. 2025-152. Notably, this 17-year denial is now being cited by patent owners in other cases (e.g., briefing in In re Volkswagen Group of America, Fed. Cir. No. 26-123, and a MeshDynamics request listing "settled expectations" precedents) as the benchmark for the "time in force" factor. Substantively, the dispute is a case study in Chinese semiconductor challengers using the IPR and ITC tracks simultaneously against an incumbent RF giant: KCT took an ITC initial determination of no violation on the '563 and '101 patents (ALJ ID reported Jan. 23–24, 2026), after Skyworks dropped three of five patents, and on April 24, 2026 the presiding ALJ terminated 337-TA-1413 on a withdrawal/settlement agreement — with Skyworks also voluntarily dismissing the stayed C.D. Cal. action. KCT disclosed cumulative legal fees above RMB 90 million (~US$12.5M) for the campaign and said it also invalidated two Skyworks patents in China. The practical takeaway is that the discretionary denial of this IPR turned out to be moot: KCT's real relief came from the ITC trial win and Skyworks' subsequent walk-away, not from the Board.
Sourcing note / open items. Grounded above: the institution denial and its reasoning (PTAB Paper 9, via PACTS); the docket sequence, parties and counsel (IPVerse/ GreyB docket; RPX Empower); grounds and prior art (Ex Parte AI Lab exhibit summary); the ITC institution and asserted claims (84 Fed. Reg. 67969, Aug. 22, 2024); the '200 partial termination (China MOFCOM/ITC notices); the Federal Circuit mandamus order (CAFC, No. 2026-115); the ITC ID and victory (Duane Morris, Jan. 29, 2026); and the April 2026 termination and dismissal (KCT's SSE disclosure, reported via 证券日报, 中国证券网). Not verified: the name of the 337-TA-1413 ALJ; the disposition of KCT's October 14, 2025 Director Review request; the outcomes of the other four KCT IPR petitions individually; the identity of the challenged Chinese patents KCT says were invalidated; and the complete list of ITC respondents (Chinese trade-remedy reporting identifies Ruijie Networks as a named respondent, but I could not confirm the full list). Skyworks' financial-pressure motive sometimes cited in press coverage (Apple diversifying RF suppliers) comes from Chinese media interviews and should be treated as reported context, not a court finding.
Key legal developments & outcome
Major rulings, motions, claim construction, settlements, and the present posture or final disposition.
I'll research this case across the PTAB, courts, and legal press. Let me start with several searches.
Key context: the "case" number is a PTAB IPR, and there's a parallel district court and ITC litigation. Let me dig into each.
Framing note: the docket number is a PTAB IPR, not a district court case
The metadata you've given me (IPR2025-00912, filed 2025-04-22, patent 7,409,200) is an inter partes review at the PTAB, so there is no complaint, answer, Markman order, verdict, or JMOL in that proceeding. What exists is a three-front dispute — C.D. Cal. patent suits, an ITC § 337 investigation, and five PTAB IPRs — of which IPR2025-00912 is one piece. Below I trace the whole thing chronologically, and I confirm the previously generated summary while extending it. Where my sources don't support a fact, I say so.
1. The underlying litigation: two C.D. Cal. suits (filed 2024-05-06)
Both were filed by Skyworks Solutions Canada, Inc. and Skyworks Global Pte Ltd. against Kangxi Communication Technologies (Shanghai) Co., Ltd. and Grand Chip Labs, Inc. (Kangxi's U.S. subsidiary) in the Central District of California, assigned to Judge Fred W. Slaughter (Magistrate Judge Autumn D. Spaeth), case numbers 8:24-cv-00974 and 8:24-cv-00976.
| Case | Patents asserted |
|---|---|
| 8:24-cv-00974 | US 8,717,101; US 9,917,563; US 9,450,579; US 9,148,194 |
| 8:24-cv-00976 | US 7,409,200 ("the '200 patent") — the patent at issue in IPR2025-00912 |
The '200 patent ("Module Integration Integrated Circuits") came to Skyworks via its May 2011 acquisition of Canadian chipmaker SiGe Semiconductor (renamed Skyworks Solutions Canada, Inc.). Kangxi's public disclosure (公告 2024-014, filed 2024-05-08) states Skyworks sought a finding of infringement, damages "no less than a reasonable royalty," up to treble damages, interest, fees, and a market injunction.
- Docket: https://dockets.justia.com/docket/california/cacdce/8:2024cv00976/[925193](/patent/925193)
- Chinese-language background: https://www.bdipp.cn/news/show-8071.html
Initial pleadings / early procedural events in 00976:
- 2024-05-15 — Related-case order transferring the case to Judge Slaughter (related to
00974), Dkt. 20. - 2024-07-17 — First Amended Complaint (Dkt. 23) adding downstream/retailer defendants: D-Link Corporation, D-Link Systems, Inc., Ruijie Networks Co. Ltd. (summonses issued 2024-07-18, Dkts. 29–33).
- 2024-08-28 — Court issues sua sponte order to show cause re dismissal for lack of prosecution because no defendant had responded and no default had been sought (CourtListener: https://www.courtlistener.com/opinion/[10168174](/patent/10168174)/skyworks-solutions-canada-inc-v-kangxi-communication-technologies/).
- 2024-09-11 — Court denies Skyworks' ex parte application to serve foreign defendant Ruijie by e-mail under Fed. R. Civ. P. 4(f)(3) (Dkt. 58), finding an inadequate ex parte showing.
I could not verify any answer, affirmative defenses, or counterclaims filed by Kangxi in either California case. The docket record I reviewed shows the defense pivoted almost immediately to a stay motion, so it appears the cases were stayed before the Rule 12/answer deadline matured. Treat "no counterclaims" as a well-sourced inference rather than a confirmed docket fact.
2. The ITC proceeding (filed 2024-07, instituted 2024-08) and the automatic stay
- 2024-07-17 — Skyworks' affiliate files an ITC § 337 complaint asserting the same five patents (including the '200 patent): In the Matter of Certain Wireless Front-End Modules, Devices Containing the Same, and Components Thereof, Inv. No. 337-TA-1413. Skyworks requested general and limited exclusion orders and cease-and-desist orders. (Note: Skyworks' mandatory notice in the sibling IPR2024-01456 cites the ITC number as "337-TA-3762," which appears to be a typographical error.)
- 2024-08 — ITC institutes; Kangxi discloses the Notice of Institution on 2024-08-21.
- 2024-09-13 — In
8:24-cv-00976, Judge Slaughter grants Kangxi's unopposed motion for automatic stay under 28 U.S.C. § 1659(a) pending final resolution of the ITC proceedings (Dkt. 59). The order: stays both California cases until the ITC matter (including appeals) is no longer subject to judicial review; requires joint status reports every 90 days (first due 2024-12-16); requires notice within 7 days of the ITC's final conclusion; and administratively terminates the case (MD JS-6) without dismissal. The stay order is Exhibit EX-1018 in IPR2025-00912. - 2024-12-10 — Skyworks drops the '200 patent from the ITC investigation (per Kangxi's later opposition to discretionary denial, which states: "Patent Owner dropped the '200 Patent on December 10, 2004 [sic—2024]"). This is the single most important event for IPR2025-00912's timeline, because Kangxi had already been preparing its '200 petition.
- 2025-07 — Evidentiary hearing in 337-TA-1413; respondent witness Huan Zhao (open) testimony dated 2025-07-14 (EX-2002 in IPR2025-00912).
- 2026-01-23 (EST) / 2026-01-24 (Beijing) — ALJ issues the Initial Determination: no violation of § 337 and no infringement of US 9,917,563 and US 8,717,101. The other three patents — US 9,450,579, US 9,148,194, and US 7,409,200 — had already been terminated during discovery after Skyworks voluntarily withdrew them. Chinese reporting notes the ALJ upheld validity of the two remaining patents while finding no infringement.
- Kangxi's ITC defense was led by Duane Morris LLP (U.S. partner Timothy R. Shannon) with Duane Morris & Selvam (Dr. Li Zheng) coordinating from Shanghai. Reported spend: RMB 38.84M in 2024 and RMB 50.60M in the first three quarters of 2025 (~RMB 90M+ / roughly US$12–13M total) — more than the company's own R&D spend in the same period (per Yicai: https://m.yicai.com/news/103023451.html).
Markman: neither California case reached claim construction (stayed before any scheduling order). The only claim-construction work was done in the ITC forum under its rules.
3. Parallel PTAB proceedings on the asserted patents
Kangxi filed five IPRs against the five asserted patents, in two waves:
| IPR | Patent | Filed | Outcome |
|---|---|---|---|
| IPR2024-01456 | US 9,450,579 | 2024-11-12 | Instituted (institution date shown as 2025-06-06; Judge Amber L. Hagy on panel) |
| IPR2024-01457 | US 9,148,194 | 2024-11-12 | Institution/denial not confirmed in the sources I reviewed |
| IPR2025-00372 | (Skyworks patent) | 2025-01-14 | Denied institution — July 2025 on "settled expectations" grounds |
| IPR2025-00373 | (Skyworks patent) | 2025-01-14 | Denied institution — July 2025, same basis |
| IPR2025-00912 | US 7,409,200 | 2025-04-22 | Denied institution — 2025-09-12 (see §4) |
Sources: Unified Patents PTAB portal (https://portal.unifiedpatents.com/ptab/judge/Amber%20L.%20Hagy); Skyworks' Updated Mandatory Notices (2025-07-21) listing IPR2024-01456/-01457 and IPR2025-00372/-00373 as related RPI matters.
The legal driver for the denials was a mid-2025 policy shift: the then-Acting Director rescinded the prior interim guidance (under which institution would not be denied based on parallel proceedings) in February–March 2025, directing parties to address all relevant considerations including "[s]ettled expectations of the parties, such as the length of time the claims have been in force" — implemented via the 2025-03-26 memorandum "Interim Processes for PTAB Workload Management." That guidance became the blueprint for denying Kangxi's petitions. Federal Circuit recounting: In re Kangxi Communication Technologies Co., Ltd., No. 2026-115 (Fed. Cir. Feb. 24, 2026) (nonprecedential) — https://www.courtlistener.com/opinion/[10799620](/patent/10799620)/in-re-kangxi-communication-technologies-co-ltd/
4. IPR2025-00912 itself — the full procedural arc
- 2025-04-22 — Kangxi (Petitioner) files the petition challenging claims 1–2, 4, 6, 10–15, 18–20, 23–26, and 29–31 of the '200 patent on two obviousness grounds:
- Ground 1: obvious over Garlepp (US 2003/0017809) — multi-die RF transceiver with receive-path circuitry split across two dies (digital on die 854, analog on die 801) mounted on a common substrate.
- Ground 2: obvious over Magoon (2002 IEEE journal article, single-chip quad-band transceiver) in view of Ngompe (2003 IEEE symposium paper on a BiCMOS + GaAs PA module on a common substrate). Notably, Kangxi argued the authors of both references worked for Skyworks, strengthening motivation to combine.
- https://ai-lab.exparte.com/case/ptab/IPR2025-00912/doc/1006
- 2025-05-13 / 2025-05-23 — Skyworks' Mandatory Notice; Board notice of accorded filing date.
- 2025-07-21 — Skyworks' Updated Mandatory Notices (substituting Haixia Lin as lead counsel for Joseph F. Haag; adding Danny S. Perry and Jungyeon Kim, all of Wilmer Cutler Pickering Hale and Dorr LLP). Related matters identified:
8:24-cv-00976(C.D. Cal.) and ITC Inv. No. 337-TA-1413. - 2025-07-23 — Skyworks' Request for Discretionary Denial (Paper 7), grounded solely on "settled expectations": the '200 patent issued 2008-08-05 and had been in force >16.5 years before Kangxi filed; Kangxi was founded 2014; Skyworks had decades of settled expectations. Skyworks relied on Dabico Airport Solutions v. AXA Power, Intel v. Proxense, Cambridge Indus. USA v. Applied Optoelectronics, Google v. VirtaMove, and Amazon v. —.
- 2025-08-22 — Petitioner's Opposition, arguing the settled-expectations premise was factually unsupported; that mere passage of time cannot establish expectations; that Skyworks waited ten years after Kangxi's founding to sue; that Skyworks dropped the '200 patent from the ITC (2024-12-10) after Kangxi began preparing its invalidity case; that the parallel district court case is stayed so the district court would not reach validity until well after an FWD would issue; and that the claims are "conventional concepts" amply shown in the prior art. Exhibit EX-1018 (the 2024-09-13 stay order) was filed with this opposition.
- 2025-09-12 — Board denies institution (Paper 9), the "Director Discretionary Decision: Deny" entry. Per the Federal Circuit's later opinion, the PTO reasoned that "it is unlikely that final written decisions in these [IPR] proceedings will issue before the final determination" in the ITC case, that "the challenged patents have been in force for more than 7 and 14 years, . . . creating strong settled expectations," and that KCT had not shown review was an "appropriate use of [PTO] resources." A separate Federal Circuit filing cites the '200 denial specifically as a 17-year patent. The previously generated summary is confirmed: discretionary denial, 2025-09-12, no trial instituted.
- 2025-09-15 → 2025-10-01 — Skyworks files an unopposed motion to withdraw Joseph F. Haag as counsel; Board grants (2025-09-25); Skyworks files an Updated Power of Attorney (2025-10-01). (Housekeeping, but it signals the Wilmer team took over the file for the post-denial phase.)
- 2025-10-14 — Petitioner's Request for Director Review of the discretionary denial (a PAPER in the docket). I could not confirm the disposition of that Director Review request in the sources available to me. There is no public indication institution was ever ordered, and RPX/Ex Parte list the proceeding's status as "Discretionary Denial" — but treat the Director Review outcome as an open verification item rather than a confirmed denial.
- 2026-02-24/25 — the Federal Circuit denies Kangxi's mandamus petition in In re Kangxi Communication Technologies Co., Ltd., No. 2026-115. Kangxi had asked the court to (i) vacate the denial of institution and reconsider under "the rules and guidance in force when the petitions were filed" in January 2025, (ii) strike down the "settled expectations" rule entirely, or (iii) in the alternative direct the PTO to refund its filing fees. The court held Kangxi failed all three mandamus requirements, noting that the same statutory and APA challenges to settled expectations had just been rejected in In re Cambridge Indus. USA Inc., No. 2026-101, 2025 WL 3526507 (Fed. Cir. Dec. 9, 2025) and In re SanDisk Techs., Inc., No. 2025-152 (Fed. Cir. Dec. 9, 2025).
- https://www.courtlistener.com/opinion/10799620/in-re-kangxi-communication-technologies-co-ltd/
- Bloomberg Law headline: "Case: Patents/Procedure (Fed. Cir.)," 2026-02-25 — https://news.bloomberglaw.com/ip-law/case-patents-procedure-fed-cir-151
- Caveat: this mandamus concerns IPR2025-00372 and IPR2025-00373, not the '200 patent IPR directly — but the legal question (settled expectations) is identical and the reasoning is dispositive of any comparable challenge to the IPR2025-00912 denial.
5. Final disposition of the litigation — Skyworks walks away
- 2026-04-24 (EST) — The ALJ terminates Inv. No. 337-TA-1413 based on a settlement/withdrawal agreement, and Skyworks voluntarily dismisses the stayed C.D. Cal. lawsuits (
8:24-cv-00974and8:24-cv-00976); the court grants the dismissal. Kangxi's disclosure (公告 2026-004, published 2026-04-27/28) characterizes this as Skyworks unconditionally withdrawing both the ITC investigation and the district court litigation, with all matters terminated and no finding of infringement by Kangxi or Grand Chip Labs.
Bottom line: Kangxi won outright on the merits presentation (ITC ID of no violation) and then obtained a complete walk-away — no injunction, no exclusion order, no damages, no royalty. Skyworks never got a judgment, and Kangxi never got its patents invalidated in the U.S. except in the two instituted '579/'194 IPRs (which, per the 2026-04 termination, became moot as to the litigation).
6. Parallel proceedings in China (context, not controlling here)
- 2025-02-17 — CNIPA publishes Kangxi's invalidation challenge to the Chinese counterpart of the '200 patent, ZL200480029330.8 ("模块集成集成电路"). Oral hearing set for 2025-03-14.
- Reported outcome (April 2025): CNIPA maintained the Chinese patent valid. One Chinese-language account (Yicai) states instead that "two of Skyworks' patents were invalidated in China." These reports conflict, and they may be describing different patents. Flagging as unresolved.
7. Chronological summary
| Date | Event |
|---|---|
| 2024-05-06 | Skyworks files 8:24-cv-00974 (4 patents) and 8:24-cv-00976 ('200 patent) in C.D. Cal. |
| 2024-05-08 | Kangxi discloses the suits (公告 2024-014). |
| 2024-07-17 | Skyworks files ITC § 337 complaint (5 patents); First Amended Complaint adding D-Link and Ruijie. |
| 2024-08 | ITC institutes 337-TA-1413. |
| 2024-08-28 | C.D. Cal. sua sponte OSC re dismissal for lack of prosecution. |
| 2024-09-11 | Court denies Skyworks' ex parte service on Ruijie by e-mail (Dkt. 58). |
| 2024-09-13 | § 1659(a) automatic stay granted in both California cases; cases administratively terminated (Dkt. 59). |
| 2024-11-12 | Kangxi files IPR2024-01456 ('579) and IPR2024-01457 ('194). |
| 2024-12-10 | Skyworks drops the '200 patent from the ITC investigation. |
| 2025-01-14 | Kangxi files IPR2025-00372 and IPR2025-00373. |
| 2025-02/03 | Acting Director rescinds interim institution guidance; 2025-03-26 PTAB "settled expectations" workload-management memo. |
| 2025-04-22 | IPR2025-00912 filed ('200 patent; Garlepp and Magoon+Ngompe grounds). |
| 2025-06-06 | IPR2024-01456 instituted. |
| 2025-07-14 | ITC evidentiary hearing testimony (Huan Zhao, open). |
| 2025-07-23 | Skyworks files Request for Discretionary Denial in IPR2025-00912 (Paper 7). |
| 2025-07-21–10-01 | Skyworks changes IPR counsel (Haag out; Haixia Lin in). |
| July 2025 | IPR2025-00372/-00373 denied institution on settled expectations. |
| 2025-08-22 | Kangxi opposition to discretionary denial (with EX-1018 stay order). |
| 2025-09-12 | IPR2025-00912 institution denied (Paper 9) — no trial. |
| 2025-10-14 | Kangxi requests Director Review of the denial. |
| 2025-12-09 | Fed. Cir. rejects settled-expectations challenges in Cambridge Indus. and SanDisk. |
| 2026-01-23 | ITC ALJ Initial Determination: no § 337 violation, no infringement of '563 and '101; '579, '194, '200 already terminated on Skyworks' withdrawal. |
| 2026-02-24 | Fed. Cir. denies Kangxi's mandamus petition (In re Kangxi, No. 2026-115), declining to vacate the denials, strike the settled-expectations rule, or order fee refunds. |
| 2026-04-24 | ITC terminates 337-TA-1413 on a withdrawal agreement; Skyworks voluntarily dismisses both stayed C.D. Cal. cases; court grants. |
| 2026-04-27/28 | Kangxi announces full termination of all ITC and district court matters. |
8. What this means, and what remains unverified
Strategic read. This is a textbook "defense-in-depth" campaign by a smaller Chinese RF-front-end supplier against a much larger incumbent: Kangxi spent ~RMB 90M+ but (a) drove Skyworks to abandon 3 of 5 asserted patents during ITC discovery, (b) beat the remaining two on the merits at the ID stage, and (c) forced a complete, unconditional walk-away before any U.S. court ever construed a claim or reached validity. The § 1659(a) automatic stay was the pivotal procedural lever — it froze the district court cases for ~19 months, giving the ITC case pride of place, and the ITC's no-infringement ID then made the California cases untenable. Conversely, Kangxi was unable to get the '200 patent invalidated: the PTAB's mid-2025 "settled expectations" discretionary-denial doctrine killed IPR2025-00912 (and IPR2025-00372/-00373) on a 17-year-old patent, and the Federal Circuit in February 2026 declined to disturb that doctrine — leaving Skyworks' '200 patent formally intact and never adjudicated, even though it is no longer asserted against Kangxi.
Open / unverified items I want to flag rather than guess:
- Disposition of the 2025-10-14 Director Review request in IPR2025-00912 — not confirmed by any source I located. The proceeding's public status reads "Discretionary Denial," suggesting no institution, but I could not find a Director decision paper.
- IPR2024-01457 status (whether instituted or denied) — I confirmed only IPR2024-01456.
- Any answer/counterclaims by Kangxi in C.D. Cal. — none appear on the docket portions I retrieved; the stay intervened.
- The exact dismissal mechanism (Rule 41(a) voluntary dismissal with or without prejudice) and the C.D. Cal. dismissal docket entry number — the SEDAR/SSE disclosure says Skyworks withdrew and the court consented, but I did not retrieve the PACER entry.
- Whether IPR2024-01456/-01457 remain active post-April 2026 or were terminated/settled alongside the litigation.
- Conflicting reports on CNIPA outcomes for the Chinese family members.
If you want, I can pull the PACER docket for 8:24-cv-00976 to confirm the dismissal entry and prejudice terms, and check the IPR2025-00912 docket for a Director Review decision paper.
Plaintiff representatives
Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Duane Morris
- Diana M. Sangalli · lead counsel
- Patrick D. McPherson · back-up counsel
- Christopher J. Tyson · petitioner's counsel
- Daniel D. Mitchell · petitioner's counsel
I'll research the counsel of record for the petitioner in this IPR proceeding.
Let me get more detail on the specific counsel designations and individual attorneys.
Let me verify the lead/back-up designations from the petition's power of attorney and check the other Duane Morris attorneys listed.
Counsel of Record — Petitioner Kangxi Communication Technologies (Shanghai) Co., Ltd.
Threshold note on posture: IPR2025-00912 is a PTAB proceeding, not a district court action. There is no "plaintiff" in the conventional sense — Kangxi is the Petitioner, and Skyworks Solutions Canada, Inc. is the Patent Owner. Accordingly, there is no "local counsel" designation (the Board does not require one) and no in-house counsel has appeared on the public record. The petition was denied institution on discretionary grounds (Sept. 12, 2025), so no trial was instituted; the appearances below nevertheless establish the petitioner-side roster of record.
Petitioner is represented throughout by a single firm: Duane Morris LLP.
| Attorney | Role in this IPR | Firm / Office | Reg. No. | Note |
|---|---|---|---|---|
| Diana M. Sangalli | Petitioner's counsel named first in the Board's Sept. 12, 2025 decision; listed on Patent Owner's May 13, 2025 service certificate as petitioner's counsel | Duane Morris LLP — Houston, TX (1300 Post Oak Blvd., Ste. 1500) and Austin, TX | 40,798 | Partner; 20+ years IP litigation, former Hughes Aircraft/Sigmapower design engineer (B.S.E.E.); has handled multiple IPRs. Principal petitioner-side name in this docket. |
| Patrick D. McPherson | Petitioner's counsel on every service certificate in the proceeding and named "For Petitioner" in the Sept. 12, 2025 decision | Duane Morris LLP — Washington, DC (901 New York Ave. NW) | 46,255 | Partner; managing partner of the DC office and head of the firm's PTAB/IPR practice group; has prepared/filed 70+ IPR petitions. |
| Christopher J. Tyson | Petitioner's counsel, listed on Patent Owner's Oct. 1, 2025 service certificate | Duane Morris LLP — Washington, DC | 63,850 | Partner; former Navy nuclear engineer; lead counsel in numerous IPRs (e.g., Cisco v. Centripetal, IPR2018-01436/-01437/-01760; Ruckus/Hera Wireless). Also petitioner's lead counsel in the parallel Kangxi IPR2024-01456. |
| Daniel D. Mitchell | Petitioner's counsel, listed on Patent Owner's Oct. 1, 2025 service certificate | Duane Morris LLP — Atlanta, GA (1075 Peachtree St. NE, Ste. 1700) | 75,226 | Associate/attorney on the Duane Morris PTAB team; also on the Kangxi IPR2024-01456 team. |
Sourcing and how these designations were derived
- The Board's Decision Denying Institution (Paper 9, Sept. 12, 2025; Acting Director Coke Morgan Stewart) closes with the appearance block: "FOR PETITIONER: Diana Sangalli, Patrick McPherson, DUANE MORRIS LLP." (USPTO PTACTS document for IPR2025-00912, petition 1557792.)
- Patent Owner's Mandatory Notices, filed May 13, 2025 and certified as served on petitioner's counsel, list the petitioner's service addresses as
DMSanalli@duanemorris.comandPDMcPherson@duanemorris.com— confirming Sangalli and McPherson as the counsel of record at petition stage. - Patent Owner's Updated Power of Attorney / accompanying certificate of service (Oct. 1, 2025) lists petitioner's counsel as Christopher J. Tyson (Reg. 63,850), Patrick McPherson (Reg. 46,255), and Daniel D. Mitchell (Reg. 75,226), all of Duane Morris LLP.
- Third-party docket aggregators (GreyB/IPVerse; RPX Empower) independently record the petitioner-side counsel for IPR2025-00912 as "Sangalli, Diana et al."
Caveats / open items
- I could not retrieve the petition's own Power of Attorney (37 C.F.R. § 42.10(b)) or Mandatory Notices for IPR2025-00912 in the public record, so I cannot state with certainty which attorney was formally designated lead versus back-up counsel in this particular proceeding. The Sept. 2025 decision's ordering (Sangalli, then McPherson) and the May 2025 service list (Sangalli, then McPherson) are the best available indicators that Sangalli acted as lead petitioner-side counsel, with McPherson as back-up. Tyson and Mitchell appear on the later (Oct. 1, 2025) service list, which is consistent with a team-based appearance or with carry-over service from the firm's other Kangxi IPRs.
- Counsel for the Oct. 14, 2025 Director Review request is not separately identified in the sources I could access; it is reasonable to infer the same Duane Morris team, but treat that as inference, not record.
- Do not conflate the ITC/district court team with the PTAB team. Duane Morris represents Kangxi more broadly in the parallel disputes — Skyworks Solutions Canada, Inc. v. Kangxi Communication Technologies Shanghai Co., Ltd., C.D. Cal. No. 8:24-cv-00976, and ITC Inv. No. 337-TA-1413. The firm's public statements identify that effort as led by U.S. partner Timothy R. Shannon with Dr. Li Zheng of Duane Morris & Selvam's Shanghai office (and Duane Morris chairman/partner Leon Yee). I found no public filing placing Shannon, Li Zheng, or Yee on the PTAB docket for IPR2025-00912, and they should not be listed as counsel of record here absent a filing.
- No in-house or local counsel for Kangxi appears in the public PTAB record for this proceeding.
- For contrast, the Patent Owner (Skyworks) side of this IPR was represented by Wilmer Cutler Pickering Hale and Dorr LLP — Haixia Lin (Reg. 61,318) as lead, with Joseph F. Haag, Danny S. Perry (Reg. 70,709), and Jungyeon Kim (Reg. 82,377). Haag withdrew by unopposed motion granted Sept. 25, 2025.
Posture reminder: Because institution was denied, this docket never reached trial; the counsel list above reflects petition- and institution-stage appearances only, and there are no sealed attorney appearances of which I am aware.
Defendant representatives
Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Wilmer Cutler Pickering Hale and Dorr
- Haixia Lin · lead counsel (Patent Owner)
- Danny S. Perry · back-up counsel (Patent Owner)
- Jungyeon Kim · back-up counsel (Patent Owner)
- Joseph F. Haag · former lead counsel (Patent Owner, withdrawn)
- Duane Morris
- Diana M. Sangalli · Petitioner counsel / defense counsel
- Patrick McPherson · Petitioner counsel / defense counsel
- Timothy R. Shannon · lead counsel (ITC defense)
- Duane Morris & Selvam
- Li Zheng · coordinating counsel (ITC defense)
- In-house counsel
- Derek A. Gosma · counsel of record (plaintiff)
- George F. Manley · former pro hac vice counsel (plaintiff, withdrawn)
- Kate M. Saxton · pro hac vice counsel (plaintiff)
I'll research this case to identify counsel of record. Note that this is a PTAB inter partes review, so the "defendant" is the Patent Owner (Skyworks Solutions Canada, Inc.). Let me search.
Key finding: this is a PTAB proceeding, where Skyworks is the Patent Owner (the responding/defensive party). Let me confirm the counsel details and check the parallel litigation.
Threshold point: framing of "defendant"
IPR2025-00912 is a PTAB inter partes review, not a district court infringement action — so there is technically no "defendant." In this proceeding:
- Petitioner (challenger): Kangxi Communication Technologies (Shanghai) Co., Ltd.
- Patent Owner (the responding/defensive party): Skyworks Solutions Canada, Inc.
The parallel infringement case is Skyworks Solutions Canada, Inc. v. Kangxi Communication Technologies Shanghai Co., Ltd. et al., No. 8:24-cv-00976 (C.D. Cal.), where Skyworks is plaintiff and Kangxi/Grand Chip Labs are the defendants. Because your prompt is written in infringement-case terms ("defendant"), I've covered both: (A) counsel for the responding party in the IPR (the case you gave me), and (B) counsel of record on each side of the parallel infringement action. Nothing in the PTAB filings I located was sealed.
A. Counsel of record — Patent Owner Skyworks Solutions Canada, Inc. (IPR2025-00912)
Current designations come from Patent Owner's Updated Mandatory Notices (Paper, filed July 21, 2025), which removed Joseph F. Haag as lead counsel, and from the Board's Order Granting Patent Owner's Motion for Withdrawal of Counsel (Paper, Sept. 25, 2025) (motion filed Sept. 15, 2025). All are Wilmer Cutler Pickering Hale and Dorr LLP.
| Name | Role | Firm / Office | Reg. No. | Note |
|---|---|---|---|---|
| Haixia Lin | Lead counsel | WilmerHale — Washington, D.C. (2100 Pennsylvania Ave. NW) | 61,318 | Partner (elevated 2020); MIT MEng/BS in EE, Harvard JD. Practice focuses on patent litigation, post-grant proceedings and ITC work in wireless, microprocessor, medical-device and AI technologies; long PTAB track record (e.g., petitioner-side roles in IPR2020-00642, IPR2021-00039, IPR2017-00781/782). |
| Danny S. Perry | Back-up counsel | WilmerHale — Denver, CO (1225 Seventeenth St., Ste. 2600) | 70,709 | Listed as backup for Skyworks across the related Skyworks IPR family (e.g., IPR2025-00373). |
| Jungyeon Kim | Back-up counsel | WilmerHale — Palo Alto, CA (2600 El Camino Real, Ste. 400) | 82,377 | Listed as backup for Skyworks across the related Skyworks IPR family; service e-mail in the notices appears as John.Kim@wilmerhale.com. |
| Joseph F. Haag (former) | Former lead counsel — withdrawn | WilmerHale — Palo Alto, CA | 42,612 | Longtime WilmerHale IP litigator (joined 2001; semiconductors, wireless devices, electronic circuitry, ITC). No longer with the firm as of Aug. 1, 2025 and retired from WilmerHale in 2025; withdrawal was granted Sept. 25, 2025. He should not be listed as current counsel. |
Service/counsel note: Skyworks' mandatory notices identify Petitioner's counsel as Duane Morris LLP — Diana M. Sangalli (Reg. No. 40,798) and Patrick McPherson (Reg. No. 46,255) — i.e., the same firm representing Kangxi on the defense side of the related litigation. (Kangxi's counsel listing on aggregator sites confirms "Sangalli, Diana et al.")
B. Counsel of record — parallel C.D. Cal. infringement action, No. 8:24-cv-00976
For the defendants (Kangxi Communication Technologies (Shanghai) Co., Ltd. and Grand Chip Labs, Inc.): the defense is led by Duane Morris LLP, per Duane Morris' own published account of the related ITC investigation, which states the cross-border team was "led by U.S. partner Timothy R. Shannon," with Dr. Li Zheng, a partner in Duane Morris & Selvam's Shanghai office, coordinating with the client. Duane Morris' Diana M. Sangalli and Patrick McPherson appear as Petitioner/Kangxi counsel in IPR2025-00912 and in the Skyworks-related IPR family. Caveat: I could verify Duane Morris' leadership of the ITC defense and the IPR appearances directly, but I could not independently confirm the specific C.D. Cal. appearance entries for these attorneys; the docket was last widely indexed in Aug. 2024, and the case was stayed and later voluntarily dismissed (Skyworks reportedly withdrew and the court approved dismissal around April 2026).
For the plaintiffs (Skyworks Solutions Canada, Inc. and Skyworks Global Pte Ltd.): docket entries show Derek A. Gosma added as counsel of record (Notice of Appearance, May 6, 2024), with non-resident attorneys George F. Manley and Kate M. Saxton admitted pro hac vice (order May 15, 2024); Manley withdrew per his Notice of Appearance or Withdrawal filed Aug. 2, 2024. I did not confirm the specific firm affiliations for Gosma/Saxton from a primary source, so I'm not stating them.
Confidence / gaps
- High confidence: Skyworks' IPR counsel of record — Haixia Lin (lead), Danny S. Perry (back-up), Jungyeon Kim (back-up) — and Joseph Haag's withdrawal, all from PTAB papers.
- Medium confidence: Duane Morris as Kangxi's litigation team (well-sourced for the ITC case; inferred-but-consistent for the district court).
- Lower confidence: exact C.D. Cal. appearance entries/firms for Skyworks' own plaintiff-side counsel (Gosma, Saxton, Manley) — names come from docket-aggregator summaries, not the primary docket sheet.
- No filings appeared to be sealed; the absence of certain details reflects docket-indexing limits rather than sealing.