Quest Closes an Active 2019, Looks Ahead to 2020

· 14 Matters Resolved in 2019

· 4 Matters Resolved or Stayed Pending Settlement YTD

· 16 Active Licensing Programs: 10 Claim Construction Hearings and 12 Trials Docketed in 2020

· Patent licensing revenues totaled $2 million in first three quarters of 2019; Full year results due March 30, 2020

Quest completed an active year of licensing programs, resolving 14 matters in 2019. With 16 active programs and a 2020 docket that currently includes 10 claim construction hearings and 12 trials, Quest is well positioned to maintain an active calendar across a solid portfolio of diverse intellectual property (IP) assets this year. A summary of the upcoming events is available here.

The company settled actions with the likes of Amazon, TiVo, Pier 1 Imports, and Netgear to name a few. the Company resolved two actions in 2019 with AsusTek Computer Inc, involving its wholly owned subsidiaries Photonic Imaging Solutions and Mariner IC, and resolved the case involving wholly owned subsidiary Semcon IP’s Power Management Portfolio on January 28, 2020.

By way of example, the Power Management/Bus Controller Portfolio, acquired by Quest from Intellectual Ventures in October 2015 and transferred to Semcon IP Inc., consists of four United States patents that cover basic technology for adjusting the processor voltage and clock to save power based on processor operating characteristics and one United States patent that relates to coordinating direct bus communications between subsystems in an assigned channel. Since acquiring the portfolio, Semcon has resolved matters against Texas Instruments, MediaTek, ZTE, Huawei, STMicroelectronics, Michael Kors, Kyocera and Amazon. Semcon currently has three pending matters involving the portfolio against TCT Mobile International, Louis Vuitton North America, Inc., and Shenzhen OnePlus Science & Technology. Trials have been docketed in all three matters for the late third and fourth quarters of 2020, though all dates are subject to change by the court.

In a recent interview, Quest’s CEO Jon Scahill stated that the Company “certainly saw significant activity in 2019, further demonstrating the value of our intellectual property portfolio. However, our goal as management is always to strive to do more, build more, and deliver more long-term value to our shareholders and partners. That means a continued focus on adding high quality assets to create more opportunities to do so.” With 4 matters already resolved or stayed pending settlement this year, and 16 active matters – and 12 trials docketed for 2020 – management appears to have Quest well positioned in that regard.

Semcon IP Resolves Patent Dispute with AsusTek Computer

The Power Management/Bus Controller Portfolio, acquired from Intellectual Ventures in October 2015 and transferred to wholly owned subsidiary, Semcon IP Inc., consists of four United States patents that cover fundamental technology for adjusting the processor clock and voltage to save power based on the operating characteristics of the processor and one United States patent that relates to coordinating direct bus communications between subsystems in an assigned channel.

In May 2018, Semcon brought a patent infringement action in the United States District Court for the Eastern District of Texas against AsusTeK Computer Inc. for infringement of certain of the Power Management Portfolio, alleging that "Asus has infringed and is continuing to infringe the Patents-in-Suit by making, using, selling, offering to sell, and/or importing, and by actively inducing others to make, use, sell, offer to sell and/or importing, products that utilize SoCs and associated software that perform DCVS or DVFS for power management, including Qualcomm Snapdragon SoCs including at least the Snapdragon 800, 820 and 821 SoCs. Such Asus products include at least the Zenfone 3 Ultra, Zenfone 3 Deluxe, Zenfone AR, Zenpad 3 and Padfone X smartphones and tablets. Additionally, these Asus products include software that utilizes DCVS and/or DVFS for power management." A copy of the compaint is available here.

In July 2019, Asus moved for summary judgement of non-infringement, only to withdraw their motion in late August. A copy of the motion is available here and Semcon's response is available here. In September 2019, Asus moved for leave to serve amended initial disclosures and to produce discovery out of time. A copy of the motion is available here and Semcon's response is available here.

A Pretrial Conference was held on October 28, 2019, during which the court gave the parties instructions for jury selection, set trial for December 9th, heard oral arguments on the motion to leave, denied the motion and ordered the parties to return to mediation. The minutes from the pretrial conference are available here.

The Supplemental Mediators Report, filed with the court on November 18, 2019, states "a settlement has been reached as to all claims by and between Plaintiff Semcon IP, Inc. and Defendant AsusTek Computer Inc. This case is now settled." A copy of the mediator's report is available here.

Semcon has resolved cases against Capri Holdings Limited (f/k/a/ Michael Kors Holdings Limited), Kyocera Corporation and Amazon.com, Inc.

Semcon has cases pending against Louis Vuitton North America, Inc. (TXED-2-19-cv-00122 Lead Case) and TCT Mobile International Limited et al (TXED-2-18-cv-00194) consolidated and docketed for trial on September 14, 2020, subject to change; and Shenzhen OnePlus Science & Technology Co., Ltd. (TXED-2-18-cv-00196 )

Semcon IP v Louis Vuitton and TCT International

Docket Control Order

Markman Hearing - March 25, 2020, 1:30PM CT

Jury Selection/Trial - September 14, 2020, 9:00AM CT

A copy of the Docket Control Order is available here.

All dates subject to change

Semcon IP Inc. v. Louis Vuitton North America, Inc. - Lead Case (2:19-cv-00122)

Semcon IP Inc. v. TCT Mobile International Ltd. et. al. - Consolidated (2:19-cv-00194)