Litigation

Ramot at Tel Aviv University Ltd. v. Acacia Communications, Inc.

unknown

1:21-cv-00295-GBW

Filed
2021-02-26

Patents at issue (1)

9031417

Summary

The Delaware case flagged on the '417 patent's Google Patents page; Ramot sued Acacia alone for infringement of two patents. The court described it as involving two patents, and current status was not fully confirmed.

Case overview & background

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

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Case Overview: Ramot at Tel Aviv University Ltd. v. Acacia Communications, Inc. (D. Del. 1:21-cv-00295-GBW)

The parties. Ramot at Tel Aviv University Ltd. is the technology-transfer arm ("Business Engagement Center") of Tel Aviv University — a university IP commercialization entity that owns the asserted patents by assignment and licenses/litigates TAU faculty inventions. It is the kind of institutional patent owner (a "university NPE"/research-foundation plaintiff) that litigates on a licensing-revenue model rather than making products; the Court's related opinion describes Ramot as "the University's liaison to industry." Acacia Communications, Inc. is a maker of coherent optical networking transceiver modules and DSP/silicon-photonic components (its AC1200/AC400 platforms), and the defendant named in this case alone. Critically, Cisco Systems acquired Acacia — its own supplier — on March 1, 2021, roughly a week after this suit was filed, making Acacia a wholly-owned Cisco subsidiary (per the Court's memorandum in the companion C.A. No. 21-1365, D.I. 51).

The technology and patents. The dispute is over linearized optical digital-to-analog modulator technology — converting digital data into a modulated optical signal, using a "digital-to-digital converter" mapping an N-bit input word to an M-bit actuation vector across a multi-electrode Mach-Zehnder modulator to counteract the modulator's nonlinear response. This case (21-295) was filed as an affirmative infringement action asserting two patents, U.S. Patent Nos. 10,270,535 (the "'535 patent") and 10,033,465 (the "'465 patent") — the same two Ramot asserted against Cisco in the earlier E.D. Tex. action (2:19-cv-00225-JRG), where Chief Judge Gilstrap had construed the terms "mapping," "converting," and "modulator." Both are titled "Linearized Optical Digital-to-Analog Modulator." The accused instrumentalities are "certain Acacia optical transceiver modules and integrated circuits" — RPX describes them as certain optical transceiver modules and DSP chips. One caveat on the metadata: the prompt lists U.S. 9,031,417 as the patent at issue. The '417 (issued May 12, 2015, to inventors Ehrlichman, Amrani, and Ruschin) is the ancestor of the asserted patents — the '535 and '465 descend from it through a series of continuations, and its file wrapper and claim terms were litigated in the E.D. Tex. claim-construction briefing — but the docketed patents in this case are '535 and '465, not '417. The '417 appears in the case record via the family relationship/Google-Patents linkage, not as a claim asserted in 21-295.

Procedural posture and significance. Filed February 26, 2021 in the District of Delaware (originally assigned to Judge Leonard P. Stark; the case now carries the GBW initials of Judge Gregory B. Williams). On September 3, 2021, the Court granted Acacia's motion to stay this case pending the ex parte reexaminations of both patents (D.I. 23), and it remained stayed as of the Court's November 2022 memorandum order. The reexams were proving unfavorable to Ramot: the PTO had preliminarily rejected all asserted claims (the stated basis for Chief Judge Gilstrap's late-stage stay in the parallel E.D. Tex. case on January 13, 2021, six weeks before a March 1 trial date). This case is one thread of a sprawling, multi-front war over a nine-patent family: the stayed affirmatives (E.D. Tex. 2:19-cv-00225; D. Del. 21-295 here) plus dueling declaratory-judgment actions — Cisco/Acacia's 21-1365 (over the '872 patent, filed the day it issued, Sept. 28, 2021) and 22-674 (over the '998 patent, filed at 12:01 a.m. the day it issued, May 24, 2022, which the Court called an "abuse of the Declaratory Judgment Act"). The '872 was put into IPR, instituted in October 2022, and those proceedings and appeals later flowed to the Federal Circuit (consolidated appeals Nos. 26-1277/26-1280, with briefing in early 2026). The case is notable as a textbook illustration of (i) a university tech-transfer entity waging a serial, reexam-hedged assertion campaign against a major networking incumbent and its acquired subsidiary; (ii) the DJ-vs-first-filed "forum shopping machinations" the Delaware court itself criticized; and (iii) the interplay between district-court stays, ex parte reexamination, IPR, and on-sale-bar/summary-judgment fights in a commercially important optical-interconnect technology. Cisco's SEC filings have repeatedly stated it believes any ultimate damages would not be material to its financial statements.

Sourcing note: Party background, the Cisco/Acacia acquisition, the case family, and the stay facts are drawn from the Delaware opinions (21-1365 D.I. 51 and the IPR-stay memorandum order), the E.D. Tex. stay order, RPX campaign coverage, and Cisco's 10-Q disclosures. I did not independently confirm in this session the current (2026) docket status of 21-295 or its final disposition, and the PatSnap blog summary describing a Rule 36 affirmance on the '872 should be treated as a secondary, unverified source.

Key legal developments & outcome

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

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Plaintiff representatives

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

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Defendant representatives

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

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Counsel of Record — Defendant Acacia Communications, Inc. (D. Del. 1:21-cv-00295-GBW)

Summary of what the docket shows

Acacia is represented by a two-firm team: Morris, Nichols, Arsht & Tunnell LLP (Wilmington, Del.) as Delaware/local counsel of record, and Duane Morris LLP as the out-of-state lead/patent trial team, admitted pro hac vice. The defense team appears consolidated with the Acacia/Cisco side across the Delaware docket.

The controlling docket entry is D.I. 8 (Apr. 19, 2021), "MOTION for Pro Hac Vice Appearance of Attorney L. Norwood Jameson, Matthew C. Gaudet, Matthew S. Yungwirth, John R. Gibson, Sajid Saleem, Joseph A. Powers, Gilbert A. Greene and Evan J. Muller — filed by Acacia Communications, Inc.", SO ORDERED by Judge Leonard P. Stark on April 20, 2021. The complaint was answered the same day (D.I. 9), and the R. 7.1 disclosure identifying Cisco Systems, Inc. as Acacia's corporate parent was filed (D.I. 10).

Delaware counsel of record (local / of record)

Attorney Role Firm Note
Jack B. Blumenfeld Delaware counsel of record (signatory on the Answer and the PHV motion) Morris, Nichols, Arsht & Tunnell LLP — Wilmington, Del. Dean of the Delaware patent bar; Morris Nichols is a standard Delaware anchor firm and appears for Cisco/Acacia across the related Delaware actions (21-1365, 22-674). Signed D.I. 7 (extension stip.), D.I. 8 (PHV motion), D.I. 9 (Answer), D.I. 10 (Disclosure Statement).
Jennifer Ying Delaware counsel of record; day-to-day filer Morris, Nichols, Arsht & Tunnell LLP — Wilmington, Del. Listed by name as counsel for Cisco/Acacia on the companion DJ actions; signed essentially all substantive filings in this case (the stay motion D.I. 11–13, reply D.I. 16–17, and the recurring joint status reports D.I. 24, 26, 27).

Lead / out-of-state counsel admitted pro hac vice (Duane Morris LLP)

Duane Morris is a recurrent Cisco outside-counsel firm in its U.S. patent litigation (e.g., Finjan v. Cisco (N.D. Cal.), Centripetal Networks v. Cisco, Cobblestone Wireless v. Cisco (E.D. Tex.)). The individual admitted by D.I. 8:

Attorney Role (as reflected) Office Relevant experience (sourced)
L. Norwood Jameson Lead/out-of-state trial counsel (most senior; the Duane Morris attorney who enters as "lead counsel" for Cisco in other matters) Duane Morris LLP — Atlanta, Ga. (1075 Peachtree St. NE) Long-time Cisco patent litigator; argued United Access Technologies, LLC v. Earthlink, Inc. (Fed. Cir.); Finjan, Inc. v. Cisco Systems; entered as lead counsel for Cisco in Cobblestone Wireless v. Cisco (E.D. Tex. 2:23-cv-00454). Law360 lists 20+ patent matters.
Matthew C. Gaudet Lead/out-of-state counsel Duane Morris LLP — Atlanta, Ga. Argued United Access Technologies v. Earthlink (Fed. Cir.) with Jameson; Finjan v. Cisco; appears for Cisco in Centripetal Networks v. Cisco.
Matthew S. Yungwirth Out-of-state counsel Duane Morris LLP — Atlanta, Ga. Duane Morris patent litigator (e.g., EON Corp IP Holdings v. Sensus).
John R. Gibson Out-of-state counsel Duane Morris LLP — Atlanta, Ga. Duane Morris patent litigator; Finjan v. Cisco defendant team.
Sajid Saleem Out-of-state counsel; declarant on the stay motion Duane Morris LLP (office not confirmed) Signed the Saleem declarations supporting the motion to stay pending ex parte reexam (D.I. 13 and D.I. 17), i.e., the attorney closest to the reexam facts.
Joseph A. Powers Out-of-state counsel Duane Morris LLP — Philadelphia, Pa. (30 S. 17th St.) Duane Morris patent litigator; appears for Cisco in Finjan v. Cisco (N.D. Cal.).
Gilbert A. Greene Out-of-state counsel Duane Morris LLP (office not independently confirmed in this session) Named on the Acacia PHV motion.
Evan J. Muller Out-of-state counsel Duane Morris LLP (office not independently confirmed in this session) Named on the Acacia PHV motion.

Caveats and sourcing notes

  • Primary source: the D. Del. docket sheet for 1:21-cv-00295 — D.I. 7–10 and the Apr. 20, 2021 SO ORDERED on D.I. 8 (as mirrored on the Justia and Patexia docket aggregators). Firm attributions for Jameson, Gaudet, Yungwirth, Gibson, and Powers are corroborated by their appearances in other Duane Morris Cisco matters (Atlanta and Philadelphia offices); the specific office affiliations of Saleem, Greene, and Muller were not independently confirmed in this session — they are named on the Acacia PHV motion but I did not verify their individual Duane Morris office or bio pages. Treat those three firms/offices as Duane Morris (firm-level confirmed via the motion's context), with office-level attribution marked as unverified.
  • No in-house counsel appears on the docket; Cisco/Acacia used outside counsel exclusively.
  • The case was stayed (D.I. 23, Sept. 3, 2021) and administratively closed (Mar. 25, 2022) and reassigned to Judge Williams (Sept. 7, 2022). Because of the stay, the counsel list is frozen at the April 2021 appearance/PHV entries plus the later Ying-signed status reports; there is no indication of any substitution of counsel on the public docket through the last entries I retrieved.
  • Do not confuse with the companion/SDSC matters. In the ViaSat v. Acacia California litigation, Acacia was represented by Wolf, Greenfield & Sacks (e.g., Michael A. Albert, Stuart V. C. Duncan Smith) — a different defense firm that has nothing to do with this D. Del. case. On the Delaware DJ actions (21-1365, 22-674), Cisco/Acacia are also represented by Jack Blumenfeld and Jennifer Ying of Morris Nichols; the Duane Morris team is the same Cisco-side patent group.
  • One cross-reference to the prior sections: the metadata/overview correctly places this as Acacia-only (21-295), while the DJ actions (21-1365, 22-674) are Cisco and Acacia as plaintiffs. The defense counsel on 21-295 (Morris Nichols + Duane Morris) is consistent with that alignment.