Concurrent Ventures, LLC, et al. v. Advanced Micro Devices Inc., et al.

Background

This patent-infringement case concerns five patents that Plaintiffs say aim to increase the efficiency of communications between computer processing units and other network components. Defendants filed petitions for inter partes review, a process in which the Patent Trial and Appeal Board reviews patent validity, concerning four of the asserted patents. Three of those reviews were instituted.

Defendants then filed a “Sotera stipulation.” Under that stipulation, for each patent for which review was instituted, Defendants promised not to pursue in the district-court case the specific grounds raised in the review, or other grounds based on patent or printed-publication prior art that were raised or reasonably could have been raised there. Defendants relied on the stipulation when opposing discretionary denial of their review petitions.

After the case was transferred to this district, Defendants served invalidity contentions. Those contentions included grounds that had been or could have been raised in the reviews, including by incorporating the review petitions by reference. Defendants said they included those grounds only to preserve their rights if the reviews were later ended and to comply with the Patent Local Rules. Plaintiffs argued that the contentions violated the stipulation and failed to adequately identify obviousness combinations, undisclosed theories, and system-based prior art.

On May 12, 2026, the Patent Trial and Appeal Board’s Director ended the three instituted reviews because Defendants’ invalidity contentions violated the stipulation.

Sotera stipulation

The court denied Defendants’ motion seeking a finding that they had not violated the stipulation. The court stated that the motion sought an impermissible advisory opinion about parallel proceedings before the Patent Trial and Appeal Board. The court nevertheless considered the arguments in deciding Plaintiffs’ motion to strike.

The court concluded that Defendants violated the stipulation by asserting the review grounds in their invalidity contentions. The stipulation was not limited to later stages such as expert reports, summary judgment, or trial. The contentions stated that the asserted claims were anticipated or rendered obvious by the challenged references and repeatedly incorporated the review grounds. The court rejected Defendants’ characterization of this conduct as mere disclosure or a reservation of rights.

The court also rejected the argument that the Patent Local Rules required Defendants to disclose grounds they did not intend to pursue. It explained that invalidity contentions are meant to preserve the grounds a defendant intends to use and to limit discovery and trial preparation to the actual theories in the case. The later amended stipulation did not cure the violation because the original stipulation did not include an exception for review proceedings that were later ended.

Obviousness combinations

The court held that the Patent Local Rules require some explanation of why prior art makes a patent claim obvious, including identification of combinations of prior art. The rules do not require the older, more specific form of motivation-to-combine explanation, but motivations to combine remain relevant.

Plaintiffs challenged Defendants’ attempt to reserve the right to rely on virtually every possible combination of references. Defendants agreed to remove that reservation language. For combinations that Defendants specifically disclosed, however, the court found that the contentions gave examples explaining why and how a skilled person would combine the references. The court therefore did not strike those specifically disclosed combinations on this ground.

Undisclosed theories

The court held that Defendants could not use phrases such as “non-limiting examples” to reserve the right to add new invalidity theories without seeking permission to amend their contentions. Any later additions would require leave of court, and Defendants’ arguments about why they could not provide more detail could be raised in a future motion to amend.

Except for a request concerning the SAVI claim chart, which Defendants agreed to, the court denied Plaintiffs’ request to strike ten charts for allegedly providing no theory. The court found that the example cited by Plaintiffs connected the claim language to evidence of anticipation or obviousness.

System-based prior art

The court also denied Plaintiffs’ request to strike Defendants’ disclosures concerning allegedly invalidating sales, public uses, or disclosures of systems. Although some details were missing, Defendants identified specific systems and dates, and explained that discovery from third parties might provide additional information. The court cautioned that later amendments, particularly the addition of new systems, might require permission and that Defendants could be barred from relying on allegations if they never supplied all information required by the rules.

Disposition

The court granted in part and denied in part Plaintiffs’ motion to strike. It struck all invalidity grounds based on patents and printed publications alone or in combination, because those grounds violated the Sotera stipulation. It also struck reservation language in Defendants’ claim charts stating that theories were exemplary or non-limiting examples. The motion was otherwise denied. Defendants’ separate motion seeking a finding of no stipulation violation was denied. The order did not decide whether the asserted patents were infringed or valid on the merits.