Rembrandt Wireless Technologies, LP v. Apple Inc.

I'll research this case across multiple sources before drafting.

Good foundation. Now let me dig into the mandamus, IPRs, and the Rembrandt/Samsung backstory.

Now let me pin down the procedural timeline, IPR outcomes, and the later Federal Circuit decision.

Case Overview: Rembrandt Wireless Technologies, LP v. Apple Inc., No. 2:19-cv-00025-JRG (E.D. Tex.)

The parties. Rembrandt Wireless Technologies, LP is a patent-assertion entity headquartered in Bala Cynwyd, Pennsylvania — an affiliate of the Rembrandt IP Management family of licensing vehicles associated with Paul Schneck — which holds the patents by assignment rather than by practicing them (Apple's transfer papers describe Rembrandt as having no offices, employees, or evidence in Texas; see Petition for Writ of Mandamus, In re Apple Inc., No. 20-112, at 13–16). The asserted patents descend from Paradyne/Zhone Technologies' portfolio, and the named inventor, Gordon Bremer, is in Florida. Apple Inc. is the Cupertino-based operating company that designs the accused devices and integrates Bluetooth chipsets (some Broadcom/Qualcomm-supplied, some Apple-designed). The two sides had litigated before, in Rembrandt Patent Innovations, LLC v. Apple, Inc., where the Federal Circuit affirmed summary judgment of noninfringement of U.S. 6,185,678 (the iOS secure-boot/data-recovery case) in 2017 — a useful reminder that Rembrandt is a serial, portfolio-wide litigant rather than a single-patent plaintiff.

The accused technology and the patents. Rembrandt targeted Apple's implementation of Bluetooth Enhanced Data Rate (EDR) — specifically devices that support "Version 2.0 + EDR, 2.1 + EDR, 3.0 + HS, 4.0 + LE, 4.1, 4.2, or 5." Its infringement contentions (quoted in the mandamus appendix at Appx100) swept in essentially the entire wireless product line: iPhone 3GS through iPhone XS Max, all iPads and iPad minis, iPod Touch/Nano, Apple Watch Series 1–4, Apple TV, MacBook/MacBook Pro/MacBook Air/iMac/Mac mini/Mac Pro, AirPort Extreme, HomePod, AirPods, Apple Pencil, Magic accessories, and the Beats headphones/speakers — i.e., any Apple product sold with Bluetooth EDR. Both patents, titled System and Method of Communication Using At Least Two Modulation Methods, claim priority to December 5, 1997 and map onto EDR's packet structure: (1) U.S. 8,023,580 (issued Sept. 20, 2011; filed Aug. 19, 2009) claims a master/slave transceiver that sends a transmission whose first portion is modulated under one modulation method and carries information indicating an impending switch to a different-type modulation for the payload — in EDR terms, a GFSK-modulated header/access code followed by a DQPSK or 8DPSK payload. (2) U.S. 8,457,228 (issued June 4, 2013; filed Aug. 4, 2011) is a continuation of the '580 patent with a differently scoped claim set directed to the same multi-modulation architecture. Both patents expired on December 4, 2018, roughly three weeks before suit was filed, so the case was purely backward-looking: no injunction was available and damages were confined to pre-expiration sales within the § 286 lookback. The mandamus record describes "three asserted claims" from the two patents (consistent with the claims Rembrandt tried against Samsung — claims 2 and 59 of the '580 patent and claim 21 of the '228 patent, the last of which was the subject of Apple's IPR2020-00037); I could not independently confirm the claim numbers from the complaint text.

Posture, venue, and why it matters. Filed January 24, 2019 in the Marshall Division before Judge

I'll research this case systematically, starting with the docket and party history.

Good foundation. Now let me dig into the IPR proceedings and the Federal Circuit mandamus.

Now let me get the full docket and the two November 2019 opinions.

Case timeline: Rembrandt Wireless Technologies, LP v. Apple Inc., No. 2:19-cv-00025-JRG (E.D. Tex.)

Bottom line: this case never reached trial. It is a two-patent Bluetooth/EDR damages case that ran for 14 months, produced one substantive claim construction ruling for Rembrandt, two venue/stay denials for Apple, an unresolved Federal Circuit mandamus petition, and then settled in late March 2020 with dismissal with prejudice and termination of four pending IPR petitions before any institution decision. Notably, no appellate ruling ever issued, so the district court's most contestable holding — that filing IPR petitions forfeits "clean hands" for a customer-suit stay — remains uncorrected but uncited precedent.

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1. Filing and pleadings (Jan.–Apr. 2019)

Substance. Rembrandt asserted U.S. 8,457,228 and 8,023,580 (both "System and Method of Communication Using At Least Two Modulation Methods," earliest priority 1997-12-05; the '228 is a continuation of the '580). Both patents expired 2018-12-04, so the case was purely backward-looking damages — no injunction exposure. The accusation swept in essentially every Apple product implementing Bluetooth 2.0+ with Enhanced Data Rate: the infringement contentions listed roughly 80 product families, from iPhone 3G/3GS through iPhone XS/XS Max/XR, all iPads, Apple Watch Series 1–4, Macs, Apple TV, HomePod, AirPods, and Beats headphones/speakers (Apple's IPR petition appendix, Case 20-112 Doc. 2, pp. 287+).

Apple's counterclaims/defenses, as Apple summarized them, were invalidity under §§ 101, 112 (definiteness, enablement, written description) and §§ 102/103; unenforceability (equitable estoppel, laches, waiver, license, implied license, unclean hands, prosecution history estoppel); and damages limitations under 35 U.S.C. §§ 252, 253, 286, 287, 288 and 28 U.S.C. (see same petition appendix, § B–C). I could not retrieve the answer itself; the exact filing date and docket number should be confirmed on PACER before being cited. No Rule 12(b) motion to dismiss appears in the docket — Apple went straight to a transfer motion.

2. Scheduling and discovery infrastructure (June–July 2019)

• 2019-06-03: Docket Control Order and Agreed Discovery Order entered (Dkt. 24, 25).
• 2019-06-20: Protective Order (Dkt. 29).
• 2019-07-18: Agreed E-Discovery Order.

I was unable to verify the trial setting fixed by the Docket Control Order; Apple's mandamus petition refers to an "imminent and burdensome trial" in early 2020, so a spring 2020 setting is likely but unconfirmed.

Strategically significant discovery episodes:

• Venue discovery. Apple built a detailed record that it has no facilities, relevant employees, or documents in EDTX, that its two EDTX retail stores closed on 2019-04-12, and that Broadcom/Qualcomm engineers and Rembrandt's own principals are in California/Pennsylvania (Apple's transfer motion briefing, reproduced in the mandamus appendix). Rembrandt benefited from the pre-TC Heartland-style intuition that a defendant's nationwide sales support venue in EDTX.
• Non-party supplier discovery / expert firewall. Non-parties Broadcom Inc. and Broadcom Corp. moved to quash, for a protective order, and for fee shifting (Dkt. 74), and Apple filed an opposed motion to join Broadcom's motion seeking to bar disclosure of Broadcom confidential information to Dr. Robert Morrow, Rembrandt's infringement expert — who was simultaneously Rembrandt's expert in the parallel C.D. Cal. suits against Broadcom and Qualcomm. This was the sharpest discovery fight in the case and previewed the overlap problem Apple used

I'll research press coverage of this case across multiple angles.

Let me verify the specific articles listed and search for additional coverage.

Press coverage of Rembrandt Wireless Techs., LP v. Apple Inc., No. 2:19-cv-00025-JRG

The filing-day wave (Jan. 24–26, 2019) was broad but shallow, and almost entirely derivative of the complaint. MacRumors reported on 2019-01-24 that Rembrandt filed in the Eastern District of Texas the same day, accusing "all Apple products that support Bluetooth 2.0 or newer with Enhanced Data Rate, including the iPhone 3GS and newer, all iPad and Apple Watch models, several Mac models, HomePod," of infringing U.S. 8,457,228 and 8,023,580; it flagged the two facts that drove most subsequent commentary — that the patents "both expired on December 4, 2018, according to its complaint," with Rembrandt arguing it may still recover for pre-expiration sales, and that the case landed before Judge Rodney Gilstrap, "who also presided over the Samsung trial." MacRumors also supplied the only damages benchmark most outlets used: a jury "calculated damages based on a royalty rate of approximately five-and-a-half cents per infringing device" in the Samsung case, where "the same Eastern Texas court ordered Samsung to pay $11 million to Rembrandt." AppleInsider ran the same day with a more technical account — that Apple's products allegedly use two modulations under EDR, "a first Gaussian Frequency Shift Keying (GFSK) accompanied by Differential Phase Shift Keying (DPSK), satisfying the two method element of the '228 patent," that Apple's encouragement of customers to use EDR-interoperable products was pleaded as indirect infringement, and that Rembrandt demanded a willfulness declaration, damages, fees and "further relief as the Court may deem just and proper" (I verified the AppleInsider text through a full syndicated copy at 3u.com, which credits AppleInsider; I could not load appleinsider.com directly). That copy also recycled Rembrandt chairman Paul Schneck's 2014 statement that "Rembrandt is committed to helping patent owners obtain fair value for their inventions… Rembrandt provides the necessary expertise and capital to level the playing field between inventors and well-funded infringers" — note the date, since several outlets presented it as a fresh comment.

The story traveled internationally as a translated rewrite, which is where the "troll" framing hardened. MacMagazine (Brazil, 2019-01-25) and Belgium iPhone (French) both led with the $11.1M Samsung number and the December 2018 expiration, with MacMagazine editorializing that "às vezes algumas empresas tentam, a qualquer custo, tirar dinheiro das outras" ("sometimes companies try to extract money from others at any cost") and that Rembrandt "não [é] a inventora das tecnologias em questão." Chinese-language coverage followed AppleInsider closely — ITHome and Sohu/China Business News both ran the $15.7M→$11.1M trajectory and the "almost every product" framing, and one trade piece went further, calculating that Rembrandt's leverage mirrored Qualcomm's and describing the parent, Rembrandt IP Management, as a buy-patents-then-sue operation (epbiao). One framing point is worth treating cautiously: the Patently Apple headline from 2019-01-26 ("The Patent Troll that Beat Samsung over Wireless Patents relating to Bluetooth EDR is now Suing Apple") shows the outlet's editorial stance, but I could not retrieve the article body, so I am not attributing any substantive reporting to it.

The only genuinely substantive legal-press analysis I located concerns the stay denial, not the filing or the outcome. Akin's IP Newsflash blog published "Eastern District of Texas Rejects Apple's Request for a Stay Under the Customer-Suit Exception to the First-to-File Rule Based in Part on Apple's Decision to File IPR Petitions" on 2020-01-13, walking through Judge Gilstrap's holding that "because Apple had filed three IPR petitions against the Asserted Patents after filing the motion, a stay would have been inconsistent with the customer-suit exception's 'guiding principles'" — i.e., that by "actively embrac[ing] those burdens" elsewhere Apple had forfeited the clean hands needed for the equitable remedy — and separately that the exception failed on its own terms because, for Apple-designed chipsets, "Apple was the manufacturer rather than the customer," while for Broadcom/Qualcomm chipsets Apple's integration source code kept it from being "a mere reseller."

Two things are notable by their absence. First, no outlet I could find reported the March 2020 settlement: there is no Reuters, Bloomberg Law, Law360, Ars Technica, or Verge story on this case, and the termination surfaces only in court and PTAB papers — the parties' stipulation of voluntary dismissal in In re Apple Inc., No. 20-112 (2020-03-26), and the joint motions to terminate IPR2020-00033/-00034, which state that the settlement agreement "has been made in writing" and was filed as business confidential information, with the Board granting confidential treatment. No settlement figure has ever been made public, and no damages number was ever awarded or announced against Apple — every dollar figure in the coverage ($15.7M jury, $11.1M after recalculation, ~5.5¢/unit) comes from the Samsung litigation, not this one. Second, I could not confirm that the two IPWatchdog roundups touch this case at all: the 2020-09-23 roundup post-dates the dismissal by six months and the page I could retrieve shows only its case-table fragments (Solas OLED, Omnitek), and I could not retrieve the 2020-04-22 roundup at all — either may contain a one-line table entry for the dismissal, but I have no basis to assert that. Likewise, I could not retrieve the content of Patently-O's "Plano as the Venue Center for E.D.Texas" (2019-01-25) or the Heim, Payne & Chorush PRNewswire release (2019-09-23), so I cannot say whether either discusses this case specifically; the PRNewswire item appears to concern the earlier Samsung verdicts by the same trial team, and Patently-O's post appears to be a venue-statistics piece about the Sherman Division rather than case-specific reporting.

Sources

• 1. Rembrandt's Infringement Allegations Focus on Functionality Provided by Third-Party Chip Suppliers
• generally Rembrandt's Infringement Contentions (Apr
• Case 8:19- cv- 00705- JLS- JDE Document 1 Filed 04/15/19 Page 18 of 20 Page ID #:18
• 1 switch back over
• 1 Q
• Rembrandt responds by arguing that "the Jury was entitled to rely on unrebutted testimony that the TI chips
• IN THE UNITED STATES DISTRICT COURT
• After Winning $11 Million From Samsung, Rembrandt Sues Apple Over Same Bluetooth-Related Patents - Skip to Content
• NOTE: This disposition is nonprecedential
• United States Court Of Appeals For The Federal Circuit
• UNITED STATES PATENT AND TRADEMARK OFFICE
• IPR2020-00341, No. 1031-46 Exhibit - Stipulation of Voluntary Dismissal (P.T.A.B. May. 26, 2020) - Exhibits:

I'll research the docket and firm records for plaintiff-side counsel.

Plaintiff's counsel of record — Rembrandt Wireless Technologies, LP v. Apple Inc., No. 2:19-cv-00025 (E.D. Tex.)

Rembrandt's side was staffed by three firms: Ahmad, Zavitsanos, Anaipakos, Alavi & Mensing P.C. ("AZA") of Houston as lead trial counsel; Heim, Payne & Chorush LLP ("HPC") of Houston as co-counsel; and Ward, Smith & Hill, PLLC of Longview as local counsel. This is the same trial team that handled Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., No. 2:13-cv-213-JRG (E.D. Tex.). All of the appearances below are drawn from docket text (Dkt. 1, 3–8, 11–14, 112) as reproduced on UniCourt and Docket Alarm, and the roster as of the March 2020 dismissal is confirmed by the Rule 47.5(b) signature block in the Federal Circuit's In re Apple Inc., No. 20-112 voluntary-dismissal stipulation (Dkt. 1031-46 exhibit).

Ahmad, Zavitsanos, Anaipakos, Alavi & Mensing P.C. — Houston, TX (1221 McKinney St., Suite 2500)

Heim, Payne & Chorush LLP — Houston, TX (then Heritage Plaza, 1111 Bagby St., Suite 2100)

I'll research Apple's counsel of record from the docket and related filings.

Good leads. Let me verify specific appearances and firm affiliations.

Let me pull the full counsel listing from the PACER docket report reproduced in the appendix, plus firm bios.

Counsel of record for Apple Inc. — Rembrandt Wireless Techs., LP v. Apple Inc., No. 2:19-cv-00025-JRG (E.D. Tex.)

Bottom line. Apple ran a two-firm division of labor. Kilpatrick Townsend & Stockton LLP carried the district-court case (with Denver partner David E. Sipiora designated "LEAD ATTORNEY" on the PACER docket), while Ropes & Gray LLP carried the IPR petitions and the Federal Circuit mandamus. Gillam & Smith LLP of Marshall, Texas served as local counsel. I found no in-house Apple attorney who entered an appearance, and no sealed or ex parte appearances.

The most reliable single source is a PACER docket report for 2:19-cv-00025 (pulled 2019-12-24, login "rg0009") that Apple reproduced as Exhibit 2010 in its IPR2020-00034 petition and again in the mandamus appendix — it lists counsel exactly as PACER designated them. (exhibit, pp. 14, 134–35)

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1. District court (E.D. Tex.) — attorneys appearing for Apple

2. Federal Circuit — In re Apple Inc., No. 20-112 (mandamus, filed 2020-01-08)

Fed. Cir. docket entries 2–9 confirm the appearances (Justia Fed. Cir. docket 20-112). Apple's Rule 47.5(b) certificate on the petition names both firms plus Gillam & Smith as the complete trial-court roster, and expressly cross-references the four IPRs (IPR2020-00033/-00034/-00036/-00037) and the parallel C.D. Cal. suits (certificate).

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3. Caveats and sourcing notes

• Verification limits. Firm names, office addresses, and PACER role designations come from the December 2019 docket snapshot and the Federal Circuit filings. I did not independently verify individual bios for Sipiora, Saul, Mayle, Korn, Bell, Batchelder, Rowland, Higgins, Wang, Roth, Thornton, Hallward-Driemeier, or Brenner, and I have not attributed specific prior cases to them. Treat their "experience" column entries as firm-level or docket-level facts only.
• The docket snapshot is dated 2019-12-24. Later appearances (Bell on 2020-01-08; Roth PHV on 2020-01-24) come from the Docket Alarm event feed, not the snapshot. Any additional appearance between 2020-01-24 and dismissal on 2020-03-26 would not be captured here — the case settled within two months of the Markman hearing, so late-appearing trial counsel is possible but unverified.
• No in-house counsel. Apple's legal department never appears in the docket snapshot or the 47.5(b) certificate. Nothing is sealed as to defense counsel.
• Do not confuse the two slates. Several of the same appendix documents also list Rembrandt's counsel — Heim, Payne & Chorush (Michael F. Heim, Eric Enger, Blaine Larson, Chris First, Alden Harris, Robert Bullwinkel); Ahmad, Zavitsanos, Anaipakos, Alavi & Mensing (Demetrios Anaipakos, Amir Alavi, Alisa Lipski, Scott Clark, Kyril Talanov); Ward & Smith (T.J. Ward, Claire Henry, Andrea Fair); and, for the mandamus response, Kevin K. Russell and Charles H. Davis of Goldstein & Russell — plus Tejinder Singh and Kevin Russell PHV appearances in March 2020 (Dkt. 156, 157). Those are plaintiff-side.
• No contradiction with the case metadata. The "two-firm + local counsel" structure is consistent with the existing summary's account of the transfer/stay motions and the mandamus petition. One point worth flagging for the procedural narrative: the Ropes & Gray team that argued the "clean hands" mandamus was not the team that litigated the stay motion (Kilpatrick did), which is a plausible reason the petition led with the legal-error framing on the clean-hands