Litigation
Sol IP, LLC v. Qualcomm Inc.
voluntarily dismissed6:21-cv-00270
- Filed
- 2021-03-17
- Terminated
- 2021-05-25
Patents at issue (1)
Plaintiffs (1)
Defendants (1)
Summary
Filed March 17, 2021 in W.D. Tex. before Judge Alan Albright. US 10,090,894 is listed among the asserted patents; the case was voluntarily dismissed on May 25, 2021.
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 thoroughly using multiple sources.
Let me dig deeper into the patent itself, the parties, and the procedural history.
Key legal developments & outcome
Major rulings, motions, claim construction, settlements, and the present posture or final disposition.
I'll research this case across the docket, PTAB, and legal news sources.
Plaintiff representatives
Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Finnegan, Henderson, Farabow, Garrett & Dunner
- J. Michael Jakes · lead counsel
- Christopher T. Blackford · pro hac vice counsel
- D. Brian Kacedon · pro hac vice counsel
- Houtan K. Esfahani · pro hac vice counsel
- Rajeev Gupta · pro hac vice counsel
- Shawn S. Chang · pro hac vice counsel
- Yi Yu · pro hac vice counsel
- Naman, Howell, Smith & Lee
- John P. Palmer · local counsel
- Fidelis Law Group
- Seong Jun Park · pro hac vice counsel
- In-house counsel
- Cara Regan · pro hac vice counsel
- Umber Aggarwal · pro hac vice counsel
- Smith R. Brittingham IV · pro hac vice counsel
I'll research the plaintiff's counsel of record for this case.
Good leads. Let me pin down the specific roles, firms, and the complaint's filing counsel.
Now let me verify the full plaintiff roster, find the complaint's signature block, and confirm each attorney's firm.
I've reached the limit of my search steps, so here is what I found. Note the sourcing quality varies by attorney — I flag confidence levels explicitly rather than guess.
Plaintiff's counsel of record — Sol IP, LLC
Case: Sol IP, LLC v. Qualcomm Inc. et al., No. 6:21-cv-00270-ADA (W.D. Tex., filed Mar. 17, 2021; voluntarily dismissed May 25, 2021).
Sol IP's team split cleanly into a national patent firm (Finnegan, Henderson, Farabow, Garrett & Dunner LLP) handling the substantive case and Waco local counsel (Naman, Howell, Smith & Lee, PLLC) satisfying Judge Albright's local-counsel requirement, plus one Virginia lawyer tied to Sol IP's licensing operation. Sources: Justia docket sheet for 6:21-cv-00270 (https://dockets.justia.com/docket/texas/txwdce/6:2021cv00270/[1126840](/patent/1126840)); Unified Patents litigation portal, Case 6:21-cv-00270 (https://portal.unifiedpatents.com/litigation/Texas%20Western%20District%20Court/case/6%3A21-cv-00270); Finnegan firm case page (https://www.finnegan.com/en/work/experience/sol-ip-llc-v-qualcomm-inc-et-al-621-cv-00270-wd-tex.html).
Firm-level confirmation: Finnegan's own experience page lists this exact matter — "Sol IP, LLC v. Qualcomm Inc. et al., 6:21-cv-00270, W.D. Tex., Judge Albright" — describing it as a "standard essential patent (SEP) suit relating to 5G, 4G LTE, and WiFi semiconductors" that "was successfully settled." That is the strongest available confirmation of who ran the case, and it corroborates the voluntary dismissal in the case metadata.
1. Lead counsel
| Name | J. Michael (Mike) Jakes |
| Role | Lead counsel (outside). First-listed pro hac vice applicant for Sol IP; senior Finnegan partner on the file. |
| Firm | Finnegan, Henderson, Farabow, Garrett & Dunner LLP — Washington, DC (901 New York Ave., NW) |
| Note | One of the best-known patent appellate/litigation partners in the country; clerked for Judge Giles S. Rich (Fed. Cir.); argues 50+ Federal Circuit appeals; argued Bilski v. Kappos; lead counsel in the Sprint VoIP and PPC Broadband cases. Firm bio expressly states he "serves as lead counsel in federal district courts and the ITC." |
Source: Docket entry (pro hac vice motion filed by John P. Palmer and granted for Jakes, May 4–5, 2021 — Doc. 23); Finnegan bio (https://www.finnegan.com/en/professionals/j-michael-jakes.html). Confidence: high.
Caveat on the word "lead": W.D. Tex. does not require a formal lead-counsel designation in the way some districts do, and I found no docket entry designating a lead attorney. Jakes is identified as lead by inference from his seniority, his firm's own description of his role, and his position as the principal named Finnegan partner on the matter.
2. Local counsel (Texas-barred, counsel of record)
| Name | John P. Palmer |
| Role | Local counsel of record; the only Texas-barred plaintiff attorney appearing. He filed every pro hac vice motion in the case (Docs. 19–30, May 4–5, 2021). |
| Firm | Naman, Howell, Smith & Lee, PLLC — 400 Austin Ave., 8th Floor, Waco, TX 76701 |
| Note | Waco native and former briefing attorney to the W.D. Tex. (Waco Division); partner since 1988; practice includes federal court litigation and patent litigation, alongside family law and ADR. Well known to the Waco bench and routinely used as local counsel in Albright Division patent matters. |
Sources: Docket entries 19–30 (all PHV motions "by John P. Palmer"); Naman Howell bio (https://www.namanhowell.com/printpilot-bio-John-P-Palmer.pdf); Texas Mediator Credentialing Association bio (https://txmediator.org/bios/306-bio.pdf). Confidence: high. Note that this is largely a local counsel/pro hac role, not a substantive litigation role — his firm is a Waco general-practice firm, not a patent boutique.
3. Other counsel named on the docket (pro hac vice applicants for Sol IP)
These eleven out-of-state attorneys were admitted pro hac vice for Sol IP via motions filed May 4–5, 2021:
| # | Name | Docket | Firm |
|---|---|---|---|
| 1 | Cara Regan | Doc. 19 | Not independently verified |
| 2 | Christopher T. Blackford | Doc. 20 | Finnegan (as reported) |
| 3 | D. Brian Kacedon | Doc. 21 | Finnegan — Washington, DC |
| 4 | Houtan K. Esfahani | Doc. 22 | Finnegan (as reported) |
| 5 | J. Michael Jakes | Doc. 23 | Finnegan — Washington, DC |
| 6 | Rajeev Gupta | Doc. 24 | Finnegan (as reported) |
| 7 | Shawn S. Chang | Doc. 25 | Finnegan (as reported) |
| 8 | Yi Yu | Doc. 28 | Finnegan (as reported) |
| 9 | Seong Jun ("Seong J.") Park | Doc. 29 | Fidelis Law Group — Tysons Corner, VA |
| 10 | Umber Aggarwal | (per docket calendar, receipt 14771171) | Not independently verified |
| 11 | Smith R. Brittingham IV | (per docket calendar, receipt 14771218) | Not independently verified |
Best-verified of these:
- D. Brian Kacedon — Finnegan, Washington, DC. His Law360 attorney profile independently lists Sol IP, LLC v. Qualcomm Inc. et al. (Texas Western, March 17, 2021) among his matters (https://www.law360.com/firms/finnegan/attorneys/d-brian-kacedon). Confidence: high.
- Seong J. Park — Law360 lists a "Seong J. Park" at Fidelis Law Group, Tysons Corner, VA, with this same case on his matter list (https://www.law360.com/firms/fidelis-law-group/attorneys/seong-j-park). This is significant: a Virginia-based lawyer connected to Sol IP's Vienna, Virginia licensing operation, likely functioning as the client-side/licensing counsel rather than as litigation staff. Confidence: moderate-to-high on the firm; lower on his precise role (I could not source a Fidelis page or engagement letter).
Lower confidence — flag this: For Regan, Blackford, Esfahani, Gupta, Chang, Yu, Aggarwal, and Brittingham, the docket confirms that they were admitted pro hac vice for Sol IP, but I could not separately verify each one's firm from a firm website or profile within my search budget. Given (a) Finnegan's public claim of this case, (b) the SEP/wireless subject matter matching Finnegan's telecom practice, and (c) that these names track Finnegan's attorney roster, the strong inference is that all eight are Finnegan attorneys — but treat the firm attribution as moderate confidence, not confirmed. Do not rely on it in a filing without a PACER/PHV verification. In particular I would not assume "Cara Regan" is Finnegan without checking; I could not confirm that name.
4. Things worth flagging
Patent count conflict with the case metadata. The metadata you gave me lists a single patent, US 10,090,894. But contemporaneous reporting says the complaint asserted 28 patents — a standard-essential-patent campaign based on ETRI (Electronics and Telecommunications Research Institute, South Korea) wireless/5G/LTE assets exclusively licensed to Sol IP (Mondaq, "Sol IP Sues Qualcomm Over 28 ETRI Patents," Apr. 2, 2021, https://www.mondaq.com/unitedstates/patent/[1053522](/patent/1053522)/). I could not verify whether '894 was one of the 28 or whether the metadata reflects a later-amended subset. Flagging this as an unresolved discrepancy rather than resolving it in favor of either source.
Second defendant not in the caption metadata. The docket and the complaint name Qualcomm Technologies, Inc. alongside Qualcomm Inc. Your case summary lists only Qualcomm Inc.
Plaintiff's identity/parentage. Reporting identifies Sol IP as a Virginia LLC holding an exclusive license from ETRI and managing member Choongsoo Park, with related NPE activity via Intellectual Discovery Co., Ltd. (Mondaq, above). The Finnegan page's reference to "Sol IP Inc." appears to be a typo for Sol IP, LLC.
Timing explains why the roster is thin. The complaint was filed March 17, 2021; Qualcomm's answer deadline was extended to June 1, 2021 (Text Order granting Doc. 11); Sol IP voluntarily dismissed on May 25, 2021 — before any answer, IPR, or claim construction. So the plaintiff team here is essentially the appearance roster only: no substantive motion practice, no lead-counsel designation order, and no court opinion naming counsel. The PHV motions (Docs. 19–30) dated May 4–5, 2021 are in fact the last substantive plaintiff filings before dismissal.
Sources I did not reach. I worked off the Justia docket mirror and the Unified Patents litigation portal rather than PACER directly, and I did not retrieve the complaint PDF itself. The complaint's signature block is the one authoritative document I have not seen — it would confirm who formally signed as counsel and in what order, and would resolve the firm attribution for the eight lower-confidence names. If you have PACER access, pull Doc. 1 and Docs. 19–30 and the attribution question closes immediately.
Defendant representatives
Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Norton Rose Fulbright US
- Brett C. Govett · lead counsel
- Richard S. Zembek · trial counsel
- Daniel S. Leventhal · supporting counsel
- Eric B. Hall · supporting counsel
- Daniel A. Prati · supporting counsel
- Talbot R. Hansum · supporting counsel
I'll research the counsel of record for Qualcomm in this case using multiple sources.
I found Qualcomm's appearances. Let me verify each attorney's firm and role.
Counsel of Record — Defendant Qualcomm
Sourcing note / caveat up front: This case lived only ~10 weeks (filed 3/17/2021; voluntarily dismissed 5/25/2021). No answer, Rule 7.1 disclosure, or scheduling order was ever filed, so the docket never designates a formal "lead counsel." Qualcomm's side of the docket consists almost entirely of attorney-appearance notices. What follows is drawn from the W.D. Tex. docket entries as reflected on the Unified Patents litigation portal and the Justia dockets mirror for 6:21-cv-00270, plus firm/bar records for the attorneys.
📌 Caption discrepancy to flag
The docket caption is **"Sol IP, LLC v. Qualcomm Inc. et al."**, and every Qualcomm appearance listed below is entered on behalf of both Qualcomm Inc. and Qualcomm Technologies, Inc. The case metadata supplied for this analysis names only Qualcomm Inc. as defendant. Co-defendant Qualcomm Technologies, Inc. appears to be omitted from the metadata.
Appearances for Qualcomm (all via NOTICE of Attorney Appearance)
| # | Attorney | Date appeared | Firm / office | Role |
|---|---|---|---|---|
| 1 | Brett C. Govett | 4/4/2021 | Norton Rose Fulbright US LLP — Dallas, TX (2200 Ross Ave., Ste. 3600) | De facto first-chair / lead defense counsel |
| 2 | Richard S. Zembek | 4/4/2021 | Norton Rose Fulbright US LLP — Houston, TX (Fulbright Tower, 1301 McKinney, Ste. 5100) | Trial/strategy lead; firm's Global Head of Technology |
| 3 | Daniel S. Leventhal | 4/12/2021 (Doc. 15) | Norton Rose Fulbright US LLP — Houston, TX | Supporting counsel (Reg. No. 59,576) |
| 4 | Eric B. Hall | 4/12/2021 (Doc. 16) | Norton Rose Fulbright US LLP (Austin — not fully confirmed in this search pass) | Supporting counsel |
| 5 | Daniel A. Prati | 4/12/2021 (Doc. 17) | Norton Rose Fulbright US LLP (firm not independently confirmed) | Supporting counsel |
| 6 | Talbot R. Hansum | 5/3/2021 (Doc. 18) | Norton Rose Fulbright US LLP (firm not independently confirmed) | Supporting counsel |
Experience notes (well-sourced)
- Brett C. Govett — Board-certified in Civil Trial Law (Texas Board of Legal Specialization) and a registered patent attorney; Chambers USA Band 2 for Texas IP; IAM Patent 1000 "leading patent professional"; "Texas Super Lawyer" since 2003. Patexia data lists Qualcomm Incorporated as his single largest client by far (1,269 matters), confirming he is Qualcomm's long-standing outside patent litigation counsel. He is the natural lead on this file. (Chambers profile; NRF bio)
- Richard S. Zembek — M.S.-level EE background (B.S. EE, Union College); Reg. No. 43,306; NRF's Global Head of Technology; Chambers USA Band 2 (Texas IP); Super Lawyers 2013–2026. Deep SEP/FRAND and ITC experience — directly relevant to Sol IP's LTE/5G standard-essential-patent theory. He and Leventhal have served as Qualcomm's PTAB backup counsel of record in other matters (e.g., IPR2020-01491, Qualcomm v. Monterey Research; IPR2022-00585, listing the same Houston Fulbright Tower address). (Chambers profile; NRF bio)
- Daniel S. Leventhal — NRF Houston; Reg. No. 59,576; repeatedly listed alongside Zembek as Qualcomm's PTAB back-up counsel (IPR2020-01491 mandatory notices, Feb. 2022). (PTAB mandatory notice PDF)
- Eric B. Hall, Daniel A. Prati, Talbot R. Hansum — all entered appearances for both Qualcomm entities in the same April–May 2021 window as the NRF Houston/Dallas team. I could not independently verify their firms, offices, or individual patent-litigation credentials in this research pass (one search returned no results). Given the timing and the consistent NRF representation of Qualcomm, they are very likely Norton Rose Fulbright attorneys, but I am not asserting that as confirmed. If firm-accurate attribution matters, pull the attorney-appearance PDFs (Docs. 16–18) directly from PACER/ECF for the W.D. Tex., Waco Division.
Notable context on the defense-side posture
- No motion to dismiss, answer, or transfer motion was filed by Qualcomm before dismissal — the entire defense-side record is the six appearance notices above. Consistent with that, there are no counsel-attributed briefs or court opinions to cite for this docket.
- For comparison, Sol IP's side was staffed by a large Finnegan, Henderson, Farabow, Garrett & Dunner team (J. Michael Jakes, D. Brian Kacedon, Rajeev Gupta, etc.) with Waco local counsel John P. Palmer, plus Fidelis Law Group's Seong J. Park. Finnegan's own experience page confirms it "represented plaintiff Sol IP" and that the case "was successfully settled" — i.e., the May 25, 2021 dismissal was a settlement-driven voluntary dismissal, not a merits ruling. (Finnegan case page)
- No parallel PTAB IPRs against US 10,090,894 by Qualcomm are known to have been filed; the case resolved too quickly for that. (This is a negative finding — I did not locate any IPR, and would not treat the absence as certain.)
Bottom line
Qualcomm's defense team was Norton Rose Fulbright US LLP — a Houston-anchored team (Zembek as the senior IP/SEP strategist, Leventhal supporting) with Brett Govett (Dallas) as the board-certified trial lead, plus supporting appearances by Eric B. Hall, Daniel A. Prati, and Talbot R. Hansum. Firm attribution for those last three should be verified against the ECF PDFs before being relied on.