Qualcomm Inc. et al. v. Daedalus Prime LLC

I'll research this case thoroughly across docket sources, PTAB records, and legal press.

Let me dig deeper into the parties, the patent, the parallel litigation, and the IPR's procedural history.

Case Overview: Qualcomm Inc. et al. v. Daedalus Prime LLC, IPR2023-00567

The parties. The petitioner side is Qualcomm Incorporated (San Diego), acting with Qualcomm Technologies, Inc. as co-real-party-in-interest; Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. were original co-petitioners but were severed from the proceeding in mid‑2023 after settling with the patent owner (PTAB Paper 10/11, joint motion to terminate as to Samsung, granted; institution decision notes "Samsung was terminated from the proceeding"). Note the caption mismatch: the Board's own docket and the institution decision style the case "Qualcomm Incorporated v. Daedalus Prime LLC," while third-party dockets list it as "Samsung Electronics Co., Ltd. v. Daedalus Prime LLC" because Samsung was the initial lead petitioner. Patent owner Daedalus Prime LLC is a non‑practicing entity / patent assertion entity — a Delaware LLC with its principal place of business at 51 Pondfield Road, Bronxville, New York, and parent Daedalus Group, LLC (D. Del. 1:22‑cv‑01109, D.I. 6 corporate disclosure). Its portfolio is not homegrown: Daedalus acquired a large block of patents from Intel Corporation via a Patent Assignment Agreement effective June 3, 2022 (recorded at the USPTO June 6, 2022), with Daedalus and Intel later representing that the transfer actually occurred under an earlier April 21, 2021 patent agreement — a discrepancy that spawned separate declaratory-judgment litigation (TSMC v. Daedalus Prime, D. Del. 1:22‑cv‑01647) over whether Intel's May 2022 license to TSMC covered the assigned patents. The patents asserted by Daedalus thus trace to Intel's processor-architecture R&D, not to Daedalus's own development.

The technology and the patent(s). The patent at issue in this IPR is U.S. Patent No. 10,049,080 ("the '080 patent"), titled "Asymmetric Performance Multicore Architecture with Same Instruction Set Architecture," naming inventors Varghese George, Sanjeev S. Jahagirdar, and Deborah T. Marr; filed February 13, 2017 and issued August 14, 2018. In one line: it claims a multicore processor combining a high‑performance core and a lower‑power/performance core that share the same instruction set architecture, with logic to migrate tasks between the asymmetric cores to manage performance vs. power — i.e., the "big.LITTLE"-style heterogeneous-core concept applied to a single-ISA multicore chip, and the Board described the '080 patent as relating to "multi‑core processors in computing systems and methods of managing power in multi‑core processors." All 24 claims were challenged. The accused products in the linked litigation are Qualcomm's Snapdragon systems-on-chip — the complaint specifically identifies the Snapdragon 820 Automotive Platform chipset — together with downstream products incorporating it, including Visteon infotainment systems and Mazda and Mercedes-Benz vehicles; in the companion ITC investigation against Samsung/Qualcomm (Inv. No. 337‑TA‑1335), the accused articles were integrated circuits and mobile devices (smartphones, tablets, smartwatches) containing them. The '080 patent is a sibling of U.S. Patent No. 10,740,281, a continuation of the '080, which was attacked in separate IPRs (IPR2023‑01333/01343 family) by Mercedes‑Benz.

Procedural posture, venue, and significance. As an IPR, the "venue" is the PTAB, not a district court: petition filed February 14, 2023; the Board panel was Administrative Patent Judges William V. Saindon, Thomas L. Giannetti, and Kristi L. R. Sawert; institution was granted on October 11, 2023 (Paper 13) as to all challenged claims and all grounds, with institution decisions originally due September 15, 2023 and pushed out by a Samsung-requested POPR extension. Qualcomm changed counsel in October 2023, revoking O'Melveny & Myers LLP and moving to in-house representation (Byron Yafuso, Patent Counsel). On January 8, 2024 the Board authorized a joint motion to terminate; the parties filed the joint motion January 11, 2024 (Paper 21) with the Qualcomm–Daedalus settlement agreement as confidential Ex. 1039, and the Board terminated the proceeding on January 12, 2024 (Paper 22) under 35 U.S.C. § 317 — meaning the PTAB never reached a final written decision and the '080 claims were never cancelled. The IPR ran in parallel with real district-court and ITC tracks: Daedalus Prime LLC v. Mazda Motor Corporation et al., No. 1:22‑cv‑01109 (D. Del., filed Aug. 23, 2022), assigned to Judge Richard G. Andrews in Delaware's single-district (no divisions), where Daedalus asserted six Intel-origin patents ('833, '494, '895, '080, '300, '588) against Qualcomm, Qualcomm Technologies, Mercedes-Benz entities, Mazda, and Visteon; plus companion D. Del. suits 1:22‑cv‑01107 (Arrow Electronics/Digi‑Key) and 1:22‑cv‑01108 (Mazda/Mercedes), an E.D. Tex. case against Samsung (2:22‑cv‑00352, Judge Rodney Gilstrap), and ITC Investigations 337‑TA‑1332 (semiconductors/automotive) and 337‑TA‑1335 (integrated circuits/mobile devices). The case matters for several reasons: it is a leading example of the Intel patent-divestiture-to-NPE wave that hit automotive and mobile supply chains in 2022–2024, of the strategy of pairing district-court suits against chip vendors with ITC complaints aimed at an import-exclusion order as settlement leverage (337‑TA‑1335 was terminated on settlement April 11, 2024, with no exclusion order), and of the practical reality that even after the PTAB institutes an IPR on all claims and all grounds, a mid-trial settlement can wipe out the challenge and leave the patent intact — leaving the read on validity unresolved for the rest of the industry. Qualcomm's four co-petitions with Samsung (IPR2023‑00547, ‑00550, ‑00567, ‑00617) and Samsung's separate filings (‑00659, ‑00660, ‑00661, ‑00727, ‑00753) were likewise terminated or not pursued after the Samsung and Qualcomm settlements, and Mercedes-Benz's later IPR mirrored this one.

Sourcing caveats. The above is grounded in the PTAB papers (institution decision Paper 13; joint motion to terminate; termination decision Paper 22), the D. Del. docket (Justia/Docket Alarm, D.I. 1–6), the ITC's Federal Register notice terminating 337‑TA‑1335 (89 FR, Apr. 16, 2024) and USITC press release (Oct. 14, 2022), and the TSMC v. Daedalus complaint (D. Del. 1:22‑cv‑01647, D.I. 17). I could not verify from a primary source: the identities/principals or funding behind Daedalus Prime or Daedalus Group, LLC; the financial terms of any settlement (all confidential — Ex. 1039 was filed under seal); whether the D. Del. 1:22‑cv‑01109 case was dismissed by stipulation and on what date; the exact claim 1 language; and the current status of the later Daedalus assertions against Marvell, MediaTek, and NXP that appear in third-party trackers. Treat those points as unconfirmed.

I'll research this case thoroughly. Note upfront: the metadata identifies IPR2023-00567 as an AIA post-grant proceeding, not a district court case — so I'll trace both the PTAB proceeding and the parallel district court litigation involving U.S. Pat. No. 10,049,080.

Let me get the full PTAB docket for IPR2023-00567 and the related Mercedes-Benz IPR, plus the district court/ITC tracks.

Now let me pin down the remaining PTAB docket details and the Mercedes-Benz IPR outcome.

I'll research the counsel of record for the petitioners (Qualcomm and Samsung) in IPR2023-00567.

I have strong initial leads. Let me pull the actual petition's mandatory notices and verify each attorney.

I'll research counsel of record. Note an important framing issue I'll need to resolve: in IPR2023-00567, the "defendant" is the patent owner, Daedalus Prime LLC (Qualcomm is petitioner). But in the parallel infringement suits, Daedalus is the plaintiff. I'll search both.

Let me get more detail on the PTAB counsel for the patent owner (the respondent in the IPR) and the district-court defendants' counsel.

I have the IPR-side counsel. Now let me pin down the district-court defendants' counsel and confirm the IPR counsel of record throughout the proceeding.

I hit my search-step limit, so here's my synthesis based on the PTAB papers and docket records I retrieved. First, a critical framing correction you should note: this docket (IPR2023-00567) is an inter partes review, not an infringement action, and the party in the "defendant"/respondent role is the patent owner, Daedalus Prime LLC (Qualcomm + Samsung are the petitioners/plaintiffs-side). In the parallel district-court infringement suits, by contrast, Daedalus Prime is the plaintiff and Qualcomm, Mazda, Mercedes-Benz, and Visteon are the defendants. I'll give you both sets of counsel so the answer is usable either way, and flag what I could and couldn't verify.

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A. Counsel for the respondent/"defendant" in the IPR itself — Daedalus Prime LLC (Patent Owner)

Per Patent Owner's Mandatory Notices, IPR2023-00567, Paper 6 (filed March 7, 2023) (Daedalus Prime's § 42.8(a)(2) filing, signed by Peter F. Snell):

Sourcing: the Mandatory Notice is published at Docket Alarm for IPR2023-00567 (Paper 6, "Notice – Mandatory Notice," filed 03-07-2023) and mirrored on PTAB/P-TACTS. The served e-mail chain (IPR2023-00567, Ex. 3001, dated Apr. 28, 2023) confirms Snell, Rizk, Renaud, and an "S. Subach@mintz.com" address as Daedalus's side.

Important caveat on Daedalus's PTAB counsel over time. Daedalus Prime's later PTAB matters use different counsel: Ascenda Law Group, PC (San Jose, CA) — Tarek N. Fahmi (Reg. No. 41,402), lead, and Jonathan Tsao (Reg. No. 61,241), back-up — per its Mandatory Notices/Powers of Attorney in IPR2024-01488 ('281 patent, Oct. 2024) and IPR2025-00207 ('228 patent, Dec. 2024). I found no substitution of counsel in IPR2023-00567; Mintz remained PO counsel through the January 2024 termination. If you need the counsel of record at termination, treat Mintz (Snell/Rizk) as the reliable answer and Ascenda as the later, separate engagement.

(For completeness — the petitioner side in this IPR: Samsung was represented by O'Melveny & Myers LLP (lead William M. Fink, Reg. No. 72,332; back-up Benjamin Haber, Nicholas Whitl, Brian Cook); Qualcomm by Norton Rose Fulbright US LLP (lead Eagle H. Robinson, Reg. No. 61,361, Austin; back-up Daniel Leventhal, Richard Zembek, Darren Smith, Houston). Qualcomm revoked the O'Melveny appointment and moved lead to NRF in its Oct. 29, 2023 Updated Mandatory Notices. This matches the existing case summary.)

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B. Counsel for the actual infringement-case defendants (D. Del. 1:22-cv-01109, Daedalus Prime v. Mazda Motor Corp. et al.)

This is the "patent infringement case" in which Qualcomm, Mazda, Mercedes-Benz, and Visteon are the defendants. From the docket and contemporaneous reporting:

Do not treat Mazda/Mercedes/Visteon counsel as identified — I could not pull their notices of appearance, and I won't guess. If you need them, they'd be on the 1:22-cv-01109 docket sheet (D.I. 6 onward) and in the later D.I. entries, which my searches did not surface.

For context, Daedalus Prime, the plaintiff in that suit (the same entity that is the IPR respondent), was represented by Farnan LLP (Delaware counsel — Brian E. Farnan and Michael J. Farnan, Wilmington, DE) together with Desmarais LLP (national counsel), per RPX litigation reporting and the D. Del. filings (Farnan filed the Rule 7.1 disclosure, D.I. 6, and the TSMC dismissal stipulation).

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C. Bottom line

• If by "defendant" you mean the respondent in IPR2023-00567, the answer is Daedalus Prime LLC, represented by Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. — lead: Peter F. Snell (New York office), back-up: Adam Rizk (Boston), with Michael T. Renaud also on the notice. (Daedalus later used Ascenda Law Group — Tarek N. Fahmi / Jonathan Tsao — in subsequent IPRs, but not in this one.)
• If by "defendant" you mean the infringement defendants, the only one I can confirm with a primary docket citation is Qualcomm → Karen E. Keller and Emily DiBenedetto of Shaw Keller LLP (D. Del. D.I. 4–5). Mazda, Mercedes-Benz, and Visteon defense counsel are not verified.

Unverified / flagged: (i) any substitution of counsel in IPR2023-00567 before termination; (ii) names of Qualcomm's non-Delaware lead counsel; (iii) all counsel for Mazda, Mercedes-Benz, and Visteon; (iv) Suparna Datta's admission in this IPR (confirmed only in the related TSMC DJ case). If you can supply the full 1:22-cv-01109 docket sheet, I can close those gaps.