Litigation

Unified Patents LLC v. Torchlight Technologies LLC

Settlement

IPR2022-01500

Filed
2022-09-22

Patents at issue (1)

Summary

An Inter Partes Review (IPR) case filed by Unified Patents LLC against Torchlight Technologies LLC concerning patent 11208029, which concluded in a settlement.

Case overview & background

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

Case Overview and Background: Unified Patents LLC v. Torchlight Technologies LLC

This case involves an Inter Partes Review (IPR) initiated by Unified Patents LLC against Torchlight Technologies LLC at the Patent Trial and Appeal Board (PTAB), challenging the validity of U.S. Patent No. 11,208,029. Unified Patents is a member-based organization focused on deterring frivolous patent litigation and reducing assertions by Non-Practicing Entities (NPEs), often referred to as patent trolls, by directly challenging their patents through IPRs. Torchlight Technologies LLC, conversely, has been identified as an NPE that asserts patents against operating companies.

The patent at issue, U.S. Patent No. 11,208,029, is directed to a headlight system designed to increase light output in the direction of road curvature. Torchlight Technologies LLC has asserted this patent, along with others, in parallel district court litigations against several major automotive companies, including Audi, Daimler, Mercedes-Benz USA, Porsche, Volkswagen, and General Motors. The IPR proceeding, IPR2022-01500, was filed on September 22, 2022, before the Patent Trial and Appeal Board. The PTAB is a specialized administrative court within the U.S. Patent and Trademark Office that reviews patent validity, and it serves as a crucial venue for challenging patents asserted by NPEs, often in conjunction with ongoing district court infringement cases. This IPR ultimately concluded in a settlement.

This case is notable due to Unified Patents' strategic role in combating NPE assertions within specific technology sectors, in this instance, related to automotive technology. The IPR directly targeted a patent actively asserted by Torchlight Technologies against significant players in the auto industry, highlighting the common dynamic where IPRs are used as a defense mechanism against patent infringement lawsuits. The settlement of the IPR reflects a common outcome in these types of proceedings, where a resolution is reached between the parties, often impacting the broader patent litigation landscape for the asserted patent..

Key legal developments & outcome

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

Unified Patents LLC filed an Inter Partes Review (IPR) petition, IPR2022-01500, against Torchlight Technologies LLC challenging U.S. Patent 11,208,029. The petition was filed on September 22, 2022.

Key legal developments and outcome:

  • Filing & Initial Pleadings (Petition): Unified Patents LLC filed the IPR petition on September 22, 2022, challenging patent 11,208,029.
  • Institution Decision: The Patent Trial and Appeal Board (PTAB) issued its decision on institution on May 4, 2023.
  • Settlement: The case ultimately reached a settlement, with the settlement recorded on September 6, 2023.
  • Final Disposition: The IPR proceeding concluded with a settlement between Unified Patents LLC and Torchlight Technologies LLC.

No information was found regarding pre-trial motions of substance beyond the IPR institution process, claim construction outcomes as a separate Markman hearing (as this is typically integrated into the IPR institution decision and subsequent proceedings), discovery milestones, trial events, verdict, or post-trial motions because the case was an IPR proceeding at the PTAB and resolved by settlement. No parallel PTAB IPR/PGR proceedings on patent 11208029 were identified in the search results beyond IPR2022-01500.Key Legal Developments and Outcome for IPR2022-01500 (Unified Patents LLC v. Torchlight Technologies LLC)

This Inter Partes Review (IPR) proceeding, IPR2022-01500, initiated by Unified Patents LLC against Torchlight Technologies LLC concerning U.S. Patent 11,208,029, concluded in a settlement. The case timeline is as follows:

  • Filing of Petition (2022-09-22): Unified Patents LLC filed a petition for Inter Partes Review with the Patent Trial and Appeal Board (PTAB) on September 22, 2022, challenging the validity of U.S. Patent 11,208,029.
  • Institution Decision (2023-05-04): The PTAB issued its decision on whether to institute the IPR on May 4, 2023.
  • Settlement (2023-09-06): The case was resolved through a settlement between Unified Patents LLC and Torchlight Technologies LLC, which was recorded on September 6, 2023.

As an IPR proceeding that concluded in settlement, the case did not involve traditional district court litigation milestones such as a complaint, answer, counterclaims, Markman hearings, extensive discovery, trial events, or post-trial motions. The settlement served as the final disposition of this PTAB action. No other parallel PTAB IPR or Post-Grant Review (PGR) proceedings on Patent 11,208,029 were identified in the available search results.

Plaintiff representatives

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

In the Inter Partes Review (IPR) case IPR2022-01500, Unified Patents LLC was represented by in-house counsel Ellyar Barazesh and David Seastrunk.

Here is the breakdown for each attorney:

  • Ellyar Barazesh

    • Role: In-house counsel
    • Firm: Unified Patents LLC
    • Office Location: Not specified in the search results, but Unified Patents is headquartered in San Jose, California, with a presence in Washington, D.C. Unified Patents also lists a "Washington, D.C." location for its full-time positions.
    • Relevant patent litigation experience: Ellyar Barazesh is identified as in-house counsel for Unified Patents LLC and represented the company in this specific IPR proceeding. Unified Patents' activities primarily involve challenging the validity of patents through IPRs and ex parte reexaminations to deter non-practicing entities (NPEs).
  • David Seastrunk

    • Role: In-house counsel, Senior Patent Counsel
    • Firm: Unified Patents LLC
    • Office Location: Not specified in the search results, but Unified Patents is headquartered in San Jose, California, with a presence in Washington, D.C. Unified Patents also lists a "Washington, D.C." location for its full-time positions.
    • Relevant patent litigation experience: David Seastrunk is listed as Senior Patent Counsel at Unified Patents LLC and represented the company in this IPR. His role at Unified Patents indicates experience in managing patent office proceedings, drafting and litigating post-grant petitions (IPRs, PGRs), and supporting senior attorneys with ongoing matters.

Defendant representatives

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

I'll research the defendant's (Patent Owner's) counsel of record in IPR2022-01500.

I have strong findings. Let me pin down the full counsel roster and credentials.

Counsel of Record for the Defendant (Patent Owner) — Torchlight Technologies LLC, IPR2022-01500

Posture note: In this IPR the "defendant" is the Patent Owner, Torchlight Technologies LLC (and, in several papers, the patent's inventor/owner Yechezkal Evan Spero, who is named alongside Torchlight as Patent Owner — see the Paper 8 POPR caption and Paper 18 Updated Mandatory Notice). Counsel appearing for that side are all from a single firm, Brooks Kushman P.C. (Michigan). Notably, no in-house counsel and no separate local counsel appear for the Patent Owner in this IPR — an unusual contrast with the petitioner side (Unified Patents, which used its own in-house team).

Source for the roster: Patent Owner's Power of Attorney, IPR2022-01500, Paper 5 (P.T.A.B. Nov. 29, 2022) (DocketAlarm); Updated Power of Attorney, Paper 7 (Feb. 7, 2023); and the Patent Owner service lists in Papers 8, 14, and 24.

1. Sangeeta G. Shah — Lead Counsel

  • Firm / office: Brooks Kushman P.C.; at the time of this IPR, 1000 Town Center, 22nd Floor, Southfield, MI 48075 (firm has since relocated its headquarters to 150 W. Second St., Suite 400N, Royal Oak, MI 48067-3846).
  • USPTO Reg. No.: 38,614.
  • Note: President/CEO of Brooks Kushman and co-chair of its post-grant practice; a nationally ranked PTAB practitioner (named to the PTAB Bar Association's "Top 50 Women in PTAB Trials"). She is the architect of the Brooks Kushman team defending the Spero headlight patent family against Volkswagen, Porsche, and Mercedes-Benz IPRs, including IPR2023-00315 (VW v. Spero), where she obtained a favorable final written decision on the '551 patent (Brooks Kushman client alert, June 25, 2024).

2. David S. Bir — Back-Up Counsel

  • Firm / office: Brooks Kushman P.C., Southfield, MI (now Royal Oak, MI).
  • USPTO Reg. No.: 38,383; Michigan bar (1997).
  • Note: Shareholder with an electrical-engineering background (B.S.E.E., GMI/Kettering; M.S.E.E., University of Michigan; J.D., Wayne State) and prior automotive-engineering experience; his prosecution docket is dominated by automotive/electronics clients such as Ford Global Technologies, Lear, and Harman.

3. Bernard P. Tomsa — Back-Up Counsel

  • Firm / office: Brooks Kushman P.C., Southfield, MI (now Royal Oak, MI).
  • USPTO Reg. No.: 60,121.
  • Note: Long-time Brooks Kushman PTAB practitioner; argued as a LEAP practitioner in multiple 2024 Spero-family oral hearings (e.g., IPR2023-00197/-01231/-00335 LEAP grant, April 2024) and a recurring member of the Shah-led team defending the Spero patent family (PTAB LEAP notice).

4. Andrew B. Turner — Additional Brooks Kushman attorney (participation confirmed; formal back-up designation in this IPR not confirmed)

  • Firm / office: Brooks Kushman P.C.; USPTO Reg. No.: 63,121.
  • Note: His signature appears on the Patent Owner's Protective Order acknowledgments executed Feb. 28, 2023 in IPR2022-01500 (alongside Shah, Bir, and Tomsa), and Law360's coverage of the related Spero IPR identified the patent owner as "represented by Sangeeta Shah, David Bir and Andrew B. Turner of Brooks Kushman PC" (Sterne Kessler summary of Law360, May 23, 2024). He is a named back-up counsel in the parallel IPR2023-01296 (Porsche v. Spero) Updated Mandatory Notice, but the publicly indexed Papers 5, 7, 8 and the Paper 24 service list in IPR2022-01500 name only Shah (lead), Bir, and Tomsa. Treat his IPR2022-01500 appearance as participation/involvement rather than a confirmed of-record designation.

Cross-reference / caveats

  • Distinguish from district court counsel. The Delaware infringement suits that Torchlight filed on this patent family — Torchlight Technologies LLC v. Daimler AG, No. 1:22-cv-00751 (D. Del.) and Torchlight Technologies LLC v. General Motors LLC, No. 1:22-cv-00752 (D. Del.) — used a different team: Brooks Kushman attorneys Thomas A. Lewry, John M. Halan, Sangeeta G. Shah, and Reza Roghani Esfahani, with Morris James LLP (Kenneth L. Dorsney, Cortlan S. Hitch) as Delaware local counsel (see the Paper 18 mandatory-notice related-matters list and UniCourt/Patsnap party data). Those appearances belong to the district court dockets, not IPR2022-01500.
  • Contradiction flagged with the earlier "Plaintiff representatives" section: that section lists only in-house counsel (Ellyar Barazesh, David Seastrunk) for Unified Patents. The filings show the petitioner's actual of-record designations were broader: Ellyar Y. Barazesh as lead counsel in the petition, with Timothy J. Murphy (Reg. No. 62,585) later designated Lead Counsel, plus back-up counsel David C. Seastrunk (Reg. No. 73,723) and Ashraf Fawzy (Reg. No. 67,914), all at Unified Patents, 4445 Willard Ave., Suite 600, Chevy Chase, MD 20815 (Paper 24, Petitioner's Updated Mandatory Notices, Aug. 7, 2023). That does not affect the defendant-side answer above, but it corrects the petitioner-side roster.
  • Termination: The proceeding was terminated as "Terminated-Settled" on Sept. 6, 2023 (Panel: APJs Aaron Moore, Jason Melvin, Jon Jurgovan), so the Brooks Kushman roster above is counsel of record as of the date of termination. I found no later substitution or withdrawal of counsel in the indexed docket.
  • Not verified: I could not retrieve the full sealed/unindexed docket sheet for any post-institution counsel changes after August 2023, and I found no in-house or local-counsel appearance for Torchlight in this IPR. If a complete PACER/PTAB docket pull is available, it should be checked to confirm whether Andrew B. Turner was ever formally added by updated power of attorney in this specific proceeding.