L&P Obtains IPR Decisions Confirming Patentability of Claims on Which $25 Million Infringement Verdict Was Based

The Patent Trial and Appeal Board (PTAB) issued final written decisions today in IPR2020-01206 and IPR2020-01279, confirming the patentability of certain claims of U.S. Patent No. 9,905,691 owned by Laurence & Phillips IP Law (L&P) client Acorn Semi, LLC.  The surviving claims include three claims that the petitioner, Samsung, was found to infringe in a trial in the U.S. District Court for the Eastern District of Texas in May 2021.  The infringement verdict awarded Acorn $25 million before prejudgment interest.  

The asserted claims faced a written-description-based priority-disentitlement challenge in IPR2020-01206 and obviousness challenges in IRP2020-01279.  L&P successfully defeated those challenges against the asserted and 14 other claims of the ’691 Patent.  L&P co-founder Matt Phillips was lead counsel for Acorn in the IPRs.  Acorn’s IPR team also includes L&P attorneys Kevin Laurence, Rachel Slade, and Derek Meeker as well as attorneys from two other firms.