Litigation

NXP Semiconductors N.V. v. Harbor Island Dynamic, LLC

final written decision; terminated

IPR2025-00954

Filed
2025-05-02
Terminated
2026-03-16

Patents at issue (1)

Summary

NXP petitioned for inter partes review of the '886 patent. The PTAB instituted review on September 22, 2025, with joinder with IPR2024-01402, and issued a final written decision on March 16, 2026, terminating the proceeding.

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 across the sources you mentioned. Let me start with several searches in parallel.

Let me dig deeper into the final written decision, the district court proceedings, and the patent's provenance.

Let me try to fill remaining gaps on the district court stay and patent provenance.

Key legal developments & outcome

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

I'll research this case across PTAB, PACER, and legal news sources.

Excellent — this is a PTAB case with substantial parallel district court litigation. Let me dig deeper into the district court docket and the PTAB proceedings.

Now let me get details on the stay orders, the final written decisions, and any appeal.

I've hit my search limit. Let me synthesize what I found, being careful to flag what is well-sourced versus uncertain.


NXP Semiconductors N.V. v. Harbor Island Dynamic, LLC — Key Legal Developments & Outcome

Threshold framing: this is a PTAB proceeding, not a district court case

The caption in the case metadata (IPR2025-00954, U.S. Patent No. 7,745,886, "Semiconductor on Insulator (SOI) Switching Circuit") is an inter partes review before the PTAB, not a district court infringement action. However, the IPR sits inside a genuine, live E.D. Tex. patent campaign by Harbor Island Dynamic, LLC ("HID") — a Quest Patent Research Corp. (OTC: QPRC) subsidiary — so a meaningful answer must cover both tracks and how they interacted. The IPR is best understood as NXP's follow-on/defensive filing, piggybacking on Samsung's earlier IPRs against the same patent.


Chronology

2024 — Parallel district court litigation and the first IPR wave

2024-02-27 — HID v. Samsung filed. Harbor Island Dynamic, LLC v. Samsung Electronics Co., Ltd. et al., No. 2:24-cv-00140-JRG-RSP (E.D. Tex., Marshall Div.), Judge Rodney Gilstrap / Magistrate Judge Roy S. Payne. HID asserted four patents: the '886 patent (7,745,886), 7,772,673, 9,147,609, and 9,245,826. (Sources: IPR2024-01402 docket filings; Ex. 2002 in IPR2024-01405.)

2024-08-30 — HID v. NXP filed. Harbor Island Dynamic, LLC v. NXP Semiconductors N.V. et al., No. 2:24-cv-00717-JRG-RSP (E.D. Tex., Marshall Div.), Judge Gilstrap / Mag. J. Payne. HID named a long list of NXP entities: NXP B.V.; NXP Semiconductors N.V.; and NXP subsidiaries in Japan, Hong Kong, Thailand, India, Korea, Malaysia, Beijing, Tianjin, Singapore, Taiwan, and Guangdong. The accused product is the NXP TDF8530TH car audio amplifier and products containing it, an SOI BCDMOS Class-D amplifier. HID asserted at least independent claim 1 of the '886 patent. (Source: Docket No. 2:24-cv-00717, Dockets.Justia.com; Complaint/Amended Complaint analysis, Ex Parte.) Only the '886 and '673 patents appear to be at issue against NXP (the two patents whose IPRs are cross-referenced to the NXP case).

2024-09-23/24 — Letters rogatory. HID moved for and obtained orders (Dkts. 10–15) authorizing letters rogatory for service/evidence abroad directed at NXP's Thailand, Malaysia, and Taiwan entities — a signal HID intended to press the multi-entity foreign-defendant case. (Source: Dockets.Justia.com docket entries.)

2024-09-24 — Samsung's four IPR petitions filed. Samsung petitioned for IPR of the '886, '673, '609, and '826 patents, assigned IPR2024-01402 ('886), -01403 ('673), -01404 ('609), and -01405 ('826). Earlier, on 2025-01-29, Samsung filed a Sotera stipulation (agreeing to certain estoppel limits) — a standard play to defeat discretionary denial. (Sources: IPR2024-01402 docket; NXP Motion for Joinder.)

2024-11-20 / 2024-12-19 — Samsung's stay motion denied as premature. In the Samsung case, Samsung moved to stay pending IPR (Dkt. 57). On 2024-12-19, Judge Gilstrap denied the motion as premature because the Board had not yet instituted: "The 'universal practice' in this District … is to deny a motion for stay when the Patent Trial and Appeal Board has not yet acted on a petition for inter partes review." Order, Dkt. 62, Harbor Island Dynamic v. Samsung, No. 2:24-cv-00140. (Dkt. 62 entered 2024-12-19; quoted in IPR2024-01405 Ex. 2002.) This is significant: it meant the litigation would proceed until institution decisions landed.

2025-01-10 — HID's Preliminary Response filed in the Samsung IPRs, attaching the E.D. Tex. Docket Control Order (Dkt. 38) and the stay denial, arguing the Board should not institute/discretionarily deny. (IPR2024-01402 docket.)

2025 — Institution, joinder, and the NXP IPR

2025-04-04 — Board institutes all four Samsung IPRs. Institution decisions and scheduling orders entered in IPR2024-01402/03/04/05. (Sources: IPR2024-01402 docket; NXP Motion for Joinder, ¶4; QPRC SEC disclosures.)

2025-04-11 / 2025-04-22 — HID's Director Review requests denied. HID sought Director Review of the institution decisions in IPR2024-01402 and -01404 (Paper 11/12). On 2025-04-22, the Acting Director's delegate (Senior Lead APJ Michelle N. Ankenbrand, with Acting Director Coke Morgan Stewart recused) denied the requests in all four proceedings. (Source: Order Denying Director Review, IPR2024-01402 Paper 14 / IPR2024-01405 No. 14.)

2025-02-13 (approx.) — Amended Complaint in the NXP case. Docket No. 47 in 2:24-cv-00717 is an Amended Complaint; the Ex Parte case page records a "2025-02-13" complaint filing date for the NXP case, which is best read as the amended pleading rather than the original (the original was filed 2024-08-30). [Moderate confidence on the exact date of the amended pleading — flagged as not independently confirmed on PACER.]

2025-05-02 — NXP files IPR2025-00954 + a motion for joinder. NXP's petition challenges claims 1–19 of the '886 patent on grounds substantively identical to Samsung's IPR2024-01402: same prior art (Okashita, Yu, Burgener), same arguments, and the same expert declaration of Scott Emmet Tho, Ph.D. NXP's brief states the only differences from the Samsung petition are updated mandatory notices and deletion of the discretionary-denial section, and it filed a redline comparison (Ex. 1026). NXP expressly agreed to take an "understudy" role. Asserted grounds:

  • Ground 1 — claims 1, 2, 4, 5 anticipated by Okashita (U.S. 6,836,172) under §102.
  • Ground 2 — claims 1–3 anticipated by Yu (U.S. 6,737,682) under §102.
  • Ground 3 — claims 1–19 obvious over Burgener (U.S. Pub. 2006/0270367) in view of Okashita under §103; plus additional Okashita/Yu combinations.
    (Sources: IPR2025-00954 Petition & Motion for Joinder; IPR2024-01402 docket; GreyB/IPVerse.) NXP's motion notes HID had asserted the '886 patent against both NXP (No. 2:24-cv-00717, filed Aug. 30, 2024) and Samsung (No. 2:24-cv-00140, filed Feb. 27, 2024).

2025-05-22 — HID's Power of Attorney / Mandatory Notices filed in IPR2025-00954, identifying the pending E.D. Tex. suits including Harbor Island Dynamic, LLC v. NXP Semiconductor, N.V. et al., No. 2:24-cv-00717-JRG-RSP. Counsel for HID: Joseph M. Mercadante / Alfred R. Fabricant / Richard M. Cowell, Fabricant LLP. Counsel for NXP: Eagle H. Robinson, Richard S. Zembek, Eric C. Green, Jiang Wu, Norton Rose Fulbright US LLP.

2025-08-14 — Notice of Referral to Board Panel in IPR2025-00954. Under the March 26, 2025 "Interim Processes for PTAB Workload Management" memo, HID had the opportunity to file a discretionary-denial brief and did not; the case was referred to a panel to consider the merits and non-discretionary issues. (Source: PTAB Paper, Notice of Referral to Board Panel.)

2025-09-22 — Institution granted AND joinder granted in IPR2025-00954. The Board granted institution under §314 and granted NXP's §315(c) joinder motion to IPR2024-01402. This is the pivotal event for this docket: from this point NXP's IPR rode along with Samsung's, with NXP in a subordinate "understudy" capacity and no separate trial schedule.

2025-09-20/25 — Board's "Related Matters Updates" General Order. NXP reported to the Board that the two related E.D. Tex. actions (Samsung and NXP) had both been stayed, and that "the court did not issue any substantive ruling before the stay." HID's position was that there had been no adjudication of validity to report. (Source: Board/party email, Sept. 25, 2025, in IPR2024-01402/03/04/05 records.) This is the key district-court development: both E.D. Tex. cases were stayed pending the IPRs, and neither reached Markman or summary judgment. [The precise stay-entry date and order for the NXP case was not located in my searches; the Sept. 2025 PTAB filing confirms the fact of the stay.]

2025-10-09 — Petitioner's Reply (Samsung/NXP) and updated exhibits. In the joined IPR2024-01402 track: Petitioner's Reply to Patent Owner's Response, a Supplemental Thompson Declaration, and new exhibits (e.g., EP2220697B1, Lee & Bashir 2001, US4786960, Chicago Manual of Style, Garner 2011). HID's Patent Owner Response and an Unopposed Motion to Amend were filed 2025-07-07, along with the deposition transcript of Dr. Thompson (taken 2025-06-17) and a declaration of Mr. John Berg. 2025-11-20 — Patent Owner's Sur-Reply. 2025-11-21 — both sides requested oral argument.

2026-01-06 — Institution decision and grant of joinder in IPR2025-00954 entered into the IPR2024-01402 record (per the IPR2024-01402 docket, an "Institution decision and grant of joinder, IPR2025-00954" paper dated Jan. 6, 2026).

2026-01-07 — Oral argument held (originally scheduled; transcript docketed 2026-01-27). Petitioner had requested in-person argument at USPTO HQ in Alexandria with 60 minutes per side.

2026 — Final written decision and appeal

2026-03-16 — Final Written Decision; all challenged claims cancelled; proceeding terminated. The Board issued the FWD in IPR2024-01402 (and, on the same date, in the joined IPR2025-00954), holding claims 1–19 of the '886 patent unpatentable. The Board's determination (as summarized by Bloomberg Law, 2026-03-17) was that the claims are anticipated and obvious over art disclosing "a low-voltage triggering, silicon-controlled rectifier … fabricated using an SOI system; a semiconductor switch apparatus including isolated MOS transistors; and an integrated RF front end with stacked transistor switch." Note the Bloomberg blurb mis-describes the '886 as "a circuit for correcting distortion of radio signals" — that characterization does not match the SOI switching-circuit patent and appears to be an error in the news summary; the parties and materials consistently describe the '886 as an SOI switching circuit. The panel in IPR2025-00954 was APJs Arthur M. Peslak, Gregg I. Anderson, and Hyun J. Jung.

2026-03-16 termination of IPR2025-00954 is the event recorded in the case metadata ("final written decision; terminated").

2026-02/03 — Companion FWDs. Per Quest Patent Research's SEC filings, the Board issued FWDs in February and March 2026 cancelling all claims of all four HID patents (the '886, '673, '609, and '826). The same filing states HID appealed with respect to the '673 patent and requested Director Review as to the '609 and '826 decisions.

2026-05-26 — HID notices of appeal / extension motions. In IPR2024-01402, HID filed a Patent Owner's Notice of Appeal and a Motion for Extension of Time to file the notice of appeal under Rule 90.3(c). 2026-06-05 — Petitioner's Opposition to HID's request for an extension. The IPR2025-00954 case status is recorded as "Final Written Decision – Appealed." [The Federal Circuit appeal docket number was not located in my searches — flagged as unresolved.]


Outcome and present posture

Track Status
IPR2025-00954 (NXP) Instituted 2025-09-22 with joinder to IPR2024-01402; FWD 2026-03-16 cancelling claims 1–19 of the '886 patent; terminated; on appeal (HID notice of appeal 2026-05-26 in the lead IPR2024-01402).
IPR2024-01402 (Samsung/NXP, lead) Instituted 2025-04-04; FWD 2026-03-16 cancelling all claims; HID appeal filed 2026-05-26 (extension contested 2026-06-05).
IPR2024-01403/04/05 Instituted 2025-04-04; FWDs Feb./Mar. 2026 cancelling all claims of the '673, '609, '826 patents; Director Review requested as to '609/'826; appeal as to '673.
E.D. Tex. 2:24-cv-00717 (NXP) Filed 2024-08-30; accused product TDF8530TH; stayed pending IPR; no Markman, no SJ, no trial.
E.D. Tex. 2:24-cv-00140 (Samsung) Filed 2024-02-27; stay denied as premature 2024-12-19; claim construction statement filed 2025-04-15; later stayed.

Strategic read

  • NXP's IPR was pure defensive copycat litigation. Rather than run its own grounds, NXP filed a substantively identical petition with Samsung's expert (Thompson) and same art, and asked to be an understudy. That is a textbook §315(c) joinder posture designed to lock in the estoppel/issue-preclusion benefit of the Samsung IPR without incurring independent trial cost or scheduling risk.
  • The district court stay was the decisive litigation event. Judge Gilstrap's Dec. 2024 denial of Samsung's stay motion as "premature" gave way once the Board instituted in April 2025 — and both E.D. Tex. cases were thereafter stayed with no Markman ruling and no substantive merits decision, meaning the IPRs (not the court) determined the '886 patent's fate.
  • The FWD is a clean sweep for the petitioners. All 19 claims of the '886 patent were cancelled, and the companion FWDs cancelled all claims of HID's other three asserted patents. HID's monetization campaign against NXP and Samsung has collapsed at the PTAB; HID's only remaining avenue is the Federal Circuit appeal (and Director Review on '609/'826), while the stayed district court cases remain pending subject to the appeals.
  • Financial context: Quest Patent Research (QPRC) reported $0 licensing revenue for FY2025 and disclosed "substantial doubt about our ability to continue as a going concern" with a $34.9M accumulated deficit — the HID portfolio FWDs are the reason the 2025 litigation produced no revenue.

Caveats / unsourced items

  1. I could not locate the exact stay order and date in the NXP case (2:24-cv-00717) on PACER; the fact of the stay is confirmed by the parties' Sept. 25, 2025 PTAB filing, but the docket number/date of the stay order is unverified.
  2. The Federal Circuit appeal number(s) for HID's appeals are not verified here.
  3. The Amended Complaint date (2025-02-13) is inferred from a third-party case summary, not confirmed against the PACER entry for Docket No. 47.
  4. NXP's answer, affirmative defenses, and counterclaims in the district court case were not surfaced in my searches; they may exist but I cannot cite them.
  5. Bloomberg Law's description of the '886 patent as "directed to a circuit for correcting distortion of radio signals" (2026-03-17) conflicts with every other source (SOI switching circuit) and is likely a reporting error by Bloomberg.

Plaintiff representatives

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

I'll research counsel of record for the petitioner (NXP) in this IPR.

Let me find the petitioner's counsel disclosure in the IPR and identify "Robinson, Eagle."

Now let me pull the petitioner's own mandatory notices/counsel list and check the parallel district court case.

Defendant representatives

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

I'll research counsel of record for Harbor Island Dynamic across the IPR and any parallel district court litigation.

Let me get the district court docket and firm bios, plus confirm the IPR counsel of record.

Counsel of record — Harbor Island Dynamic, LLC

Threshold note on party roles. The case metadata lists Harbor Island Dynamic, LLC as the defendant, and that is the role it occupies in this IPR (as patent owner/respondent, opposing petitioner NXP). But the "patent infringement case" beneath this IPR runs the other direction: in E.D. Tex. No. 2:24-cv-00717, Harbor Island Dynamic is the plaintiff and NXP is the defendant. I've set out both sides below so the answer is usable either way, and I flag where verification is incomplete.


A. Harbor Island Dynamic, LLC — the respondent/defendant in IPR2025-00954

Source: Patent Owner's Power of Attorney under 37 C.F.R. § 42.10(b), dated May 22, 2025, filed in IPR2025-00954 (PTAB filing).

Attorney Role Firm / office Notes
Joseph M. Mercadante (Reg. No. 64,077) Lead counsel Fabricant LLP, 411 Theodore Fremd Ave., Suite 206 South, Rye, NY 10580 Electrical-engineering background; ex-law clerk to Chief Judge Garrett E. Brown, Jr. (D.N.J.); litigates patent-owner-side electronics/semiconductor cases in E.D. Tex., N.D./C.D. Cal., S.D.N.Y., D. Del., D.N.J., E.D. Va., the ITC, and the Federal Circuit; extensive IPR/reexam experience; Super Lawyers (IP Litigation) 2024–2026 (IAM Strategy 300 profile; firm bio).
Alfred R. Fabricant Back-up counsel Fabricant LLP, Rye, NY (same address) Founding/name partner of the firm. Note: in the related IPR2024-01405 power of attorney he was listed as back-up counsel "subject to motion to appear pro hac vice," so confirm his admission status in this specific proceeding (Docket Alarm, IPR2024-01405 Paper 5).
Richard Cowell (Reg. No. 79,143) Back-up counsel Fabricant LLP, Rye, NY (same address) Member of the same trial team across the Harbor Island IPR portfolio; he presented oral argument for the patent owner in the sibling proceeding IPR2024-01405 (Jan. 22, 2026 hearing transcript, with Mercadante sitting as lead) (transcript).

The same three-attorney Fabricant team is the respondent/patent-owner counsel of record across Harbor Island's parallel IPRs on related patents — IPR2024-01402 (Samsung/NXP, '886 patent) and IPR2024-01405 (Samsung, '826 patent) (IPVerse IPR2024-01402; IPVerse IPR2025-00954, both listing "Respondent Counsel: Mercadante, Joseph et al.").

Firm-name caveat: The PTAB filings of record use "Fabricant LLP." The firm's current site and third-party profiles (IAM, Super Lawyers) use "Fabricant, Rubino & Lambrianakos LLP" at the identical Rye, NY address — apparently a rebrand or affiliated entity. Cite the PTAB caption name when quoting the docket.

No in-house or local counsel identified. Harbor Island's E.D. Tex. appearances are all from the same NY-based Fabricant team (below); I found no separate Texas local-counsel or in-house appearance for Harbor Island. That absence is a negative finding from the sources available, not a confirmed one.


B. The same team in the underlying district court action (E.D. Tex. 2:24-cv-00717)

Harbor Island Dynamic, LLC v. NXP Semiconductors N.V. et al., No. 2:24-cv-00717 (E.D. Tex., filed Aug. 30, 2024; Judge Rodney Gilstrap / Mag. Roy S. Payne). For Harbor Island as plaintiff, appearances filed Aug. 30, 2024 (Justia docket):

  • Alfred Ross Fabricant — Dkt. 4
  • Peter Lambrianakos — Dkt. 5
  • Vincent J. Rubino, III — Dkt. 6
  • Joseph Michael Mercadante — Dkt. 7
  • Richard Matthew Cowell — Dkt. 8

All five appear to practice from the Fabricant firm (Lambrianakos and Rubino are named in the firm's title). In the Samsung case (2:24-cv-00140), Harbor Island also used McKool Smith, P.C. as co-counsel; I found no McKool Smith appearance in the NXP action (Ex Parte complaint analysis, 2:24-cv-00140).


C. If by "defendant" you mean NXP (defendant in the infringement suit)

NXP's appellate/PTAB-side team in this IPR is Norton Rose Fulbright US LLP, per the service lists on the IPR papers (POA service list; IPR2024-01402 oral-argument request):

  • Eagle H. Robinson — Austin, TX (lead petitioner counsel in IPR2025-00954)
  • Eric C. Green — Austin, TX
  • Richard S. Zembek — Houston, TX
  • Jiang Wu — Chicago, IL

Caveat: These are NXP's counsel of record before the PTAB. I could not verify NXP's district-court appearances in 2:24-cv-00717 — the retrieved docket listing only ran through Sept. 24, 2024 and did not include NXP's answer/appearances. Treat the Norton Rose Fulbright names as PTAB-verified and the district-court defense roster as unconfirmed.


Verification gaps (stated explicitly)

  • No sealed or withheld filings encountered, but NXP's district-court appearance roster was not retrieved.
  • Billing-rate/registration details for Cowell and Fabricant (beyond Reg. Nos.) and any pro hac vice status in this proceeding were not independently confirmed for IPR2025-00954; the pro hac vice notation I cite is from IPR2024-01405.
  • My last verification query (for additional firm-bio/experience detail) returned no results before I stopped searching, so the experience notes above rest on the IAM, Super Lawyers, and firm-site profiles cited inline rather than on a second corroborating source.