SK Hynix, Inc. v. Advanced Memory Technologies LLC

SK Hynix, Inc. v. Advanced Memory Technologies LLC (IPR2025-01449) concerns an Inter Partes Review (IPR) petition filed by SK Hynix, Inc. against U.S. Patent 8,593,888, owned by Advanced Memory Technologies LLC (AMT), which the Patent Trial and Appeal Board (PTAB) ultimately chose not to institute on procedural grounds. SK Hynix is a prominent South Korean operating company and the world's second-largest manufacturer of dynamic random-access memory (DRAM) chips and flash memory chips, supplying critical components for various electronic devices globally. Advanced Memory Technologies LLC, by contrast, is a Texas-based non-practicing entity (NPE) or "patent troll" that acquires and asserts patents, primarily against major technology companies, without manufacturing its own products.

The IPR was filed in response to a patent infringement lawsuit initiated by Advanced Memory Technologies LLC against SK Hynix, Inc. in the U.S. District Court for the Eastern District of Texas (Case No. 2:24-cv-01078) on December 30, 2024. In that district court action, Advanced Memory Technologies accused SK Hynix's semiconductor memory modules, including its DRAM and flash memory technologies (such as the SK Hynix Gold P31 SSD and 96-Layer/128-Layer Flash Memory Modules), of infringing five patents, including U.S. Patent 8,593,888. The '888 patent, titled "Semiconductor memory device," broadly relates to nonvolatile memory devices, such as electrically erasable programmable read-only memory (EEPROM), and describes methods for erasing and rewriting memory content through specific electrical signals and operation modes involving voltage regulators and booster circuits. Dell, Microsoft, and Nvidia were also "indirectly" named in the district court complaint for incorporating SK Hynix's memory modules.

The procedural posture of this case is notable because the PTAB declined to institute the IPR based on discretionary grounds, specifically due to parallel litigation in the Eastern District of Texas. The district court trial, which involves the '888 patent and others, was scheduled to commence on October 5, 2026, predating the PTAB's projected final written decision deadline of March 1, 2027, for the IPR. This denial exemplifies the PTAB's application of Fintiv factors and related policy changes that prioritize the progress of parallel district court cases, particularly when a trial is set to occur before a potential IPR final written decision. The Eastern District of Texas is a well-known venue for patent litigation, often favored by patent owners for its expedited trial schedules, which influenced the PTAB's discretionary decision. This case highlights the challenges major semiconductor manufacturers like SK Hynix face from NPEs and illustrates the evolving landscape of inter partes review, where petitioners increasingly encounter procedural hurdles at the PTAB when concurrent district court litigation is underway.

Advanced Memory Technologies LLC initiated patent infringement litigation against SK Hynix, Inc., in the Eastern District of Texas, which was subsequently met with Inter Partes Review (IPR) petitions by SK Hynix at the Patent Trial and Appeal Board (PTAB). The IPR petition against US Patent 8,593,888 (IPR2025-01449) was procedurally not instituted by the PTAB due to the ongoing parallel district court litigation.

Here is a chronological overview of the key legal developments:

District Court Litigation: Advanced Memory Technologies, LLC v. SK Hynix Inc. (E.D. Tex., Case No. 2:24-cv-01078-JRG-RSP)

• 2024-12-30 – Complaint Filed: Advanced Memory Technologies LLC (AMT), a non-practicing entity, filed a patent infringement lawsuit against SK Hynix Inc. in the U.S. District Court for the Eastern District of Texas. The initial complaint alleged infringement of four patents related to semiconductor memory modules: U.S. Patent Nos. 7,777,557; 7,920,018; 7,969,231; and 8,593,888. AMT demanded a jury trial.
• 2025-03-11 – Preliminary Invalidity Contentions: SK Hynix Inc. served its preliminary invalidity contentions in the district court case.
• 2025-04-02 – Amended Complaint: AMT amended its complaint to include allegations of infringement for an additional patent, U.S. Patent No. 8,400,835.
• 2025-09-02 – Motion to Stay Filed: SK Hynix filed a motion to stay the district court proceeding, citing its pending Inter Partes Review petitions against the asserted patents.
• Denial of Motion to Stay: The district court subsequently denied SK Hynix's motion to stay. District courts, especially in the Eastern District of Texas, have a consistent practice of denying motions to stay pending IPR when the PTAB has instituted review on less than all asserted claims of all asserted patents.
• 2026-03-30 – Order Adopting R&R: The District Court issued an Order adopting Report and Recommendations for several motions, including a sealed motion and a motion to dismiss filed by SK Hynix Inc., indicating progress in the pre-trial phase of the litigation.
• 2026-10-05 – Scheduled Trial Date: The district court proceeding is scheduled to commence trial on October 5, 2026.

Parallel PTAB IPR Proceedings: SK Hynix, Inc. v. Advanced Memory Technologies LLC

• 2025-08-22 – IPR Petition Filed (IPR2025-01449): SK Hynix, Inc. filed an Inter Partes Review petition, IPR2025-01449, challenging the patentability of U.S. Patent 8,593,888, owned by Advanced Memory Technologies LLC. This was one of several IPR petitions filed by SK Hynix against AMT's patents.
• 2025-12-18 – IPR Not Instituted (IPR2025-01449): The Patent Trial and Appeal Board issued a decision procedurally denying institution of IPR2025-01449. The PTAB's decision was a discretionary denial under 35 U.S.C. § 314(a), based on an application of the Fintiv factors. The Board noted that the district court trial was scheduled for October 5, 2026, which was significantly earlier than the projected Final Written Decision deadline for the IPR (March 1, 2027). This timing disparity, coupled with the unlikelihood of the district court granting a stay, weighed heavily in favor of discretionary denial to avoid duplicative efforts and potentially conflicting decisions.
• 2025-12-XX & 2026-01-XX – Other IPRs Not Instituted: Several other IPR petitions filed by SK Hynix against Advanced Memory Technologies LLC's patents were also rejected or not instituted, some in December 2025 and others in January 2026, primarily for similar procedural reasons related to the parallel district court litigation. These included petitions against U.S. Patent Nos. 7,777,557 (IPR2025-01452), 7,920,018 (IPR2025-01450), 7,969,231 (IPR2025-01451), and 8,400,835 (IPR2025-01453).

Outcome and Current Posture:

The PTAB IPR proceedings were terminated without institution, meaning SK Hynix's challenges to the patentability of US Patent 8,593,888 (and other asserted patents) at the PTAB did not proceed to a full review. Consequently, the patent infringement litigation in the Eastern District of Texas, Advanced Memory Technologies, LLC v. SK Hynix Inc. (Case No. 2:24-cv-01078), remains active and is proceeding towards its scheduled trial date of October 5, 2026. The denial of SK Hynix's motion to dismiss in March 2026 further indicates the ongoing nature of the district court case.

SK Hynix, Inc. is represented by the following counsel:

• James M. Glass

  • Role: Lead Counsel
  • Firm: Quinn Emanuel Urquhart & Sullivan, LLP, New York, NY
  • Experience Note: Mr. Glass is the Chair of Quinn Emanuel's Post-Grant patent practice, having served as lead counsel in over 500 PTAB proceedings and consistently ranked as a top-performing and active attorney at the PTAB and Federal Circuit. He has significant experience in district court and ITC patent litigation, including successful arguments at Markman and Summary Judgment motions.

• Brian L. Saunders

  • Role: Of Counsel
  • Firm: Quinn Emanuel Urquhart & Sullivan, LLP, Washington, D.C.
  • Experience Note: Mr. Saunders focuses his practice on complex intellectual property disputes, particularly patent and trade secret litigation, and has experience resolving high-tech antitrust and commercial disputes across various technical fields including biotechnology and integrated circuits.

Advanced Memory Technologies LLC, the Patent Owner (defendant) in IPR2025-01449, is represented by counsel from Heim, Payne & Chorush, LLP.

The primary counsel of record identified for Advanced Memory Technologies LLC in this Inter Partes Review (IPR) proceeding is:

• Name: Michael F. Heim
  • Role: Lead Counsel (Attorney for Patent Owner)
  • Firm: Heim, Payne & Chorush, LLP
  • Office Location: Houston, Texas
  • Experience Note: Mr. Heim is recognized as a founding partner of Heim, Payne & Chorush, a firm specializing in intellectual property litigation, particularly patent and trade secret cases. The firm frequently represents patent owners in high-stakes intellectual property disputes.

While the "et al." in the IPR counsel listing suggests other attorneys from Heim, Payne & Chorush, LLP are involved, Michael F. Heim is explicitly named as the attorney for the Patent Owner in the "Patent Owner's Discretionary Denial Briefing" filed in IPR2025-01449.

It is also noteworthy that Advanced Memory Technologies LLC has been represented by other prominent firms, including Susman Godfrey LLP and Miller Fair Henry PLLC, in a related patent infringement lawsuit against SK Hynix Inc. in the Eastern District of Texas (Case No. 2:24-cv-01078). However, for this specific IPR proceeding, Michael F. Heim of Heim, Payne & Chorush, LLP is explicitly listed as counsel for the Patent Owner.