IN THE UNITED STATES DISTRICT COURT 

FOR THE SOUTHERN DISTRICT OF FLORIDA 

SISVEL INTERNATIONAL S.A., 3G 

LICENSING S.A., and SISVEL S.p.A., 

Plaintiffs 

§

§

§

§

v. 

HMD AMERICA, INC., and HMD GLOBAL 

OY, 

§

§

§

§

§

NO. 1:20-CV-22051-JEM 

Defendants. §

DEFENDANTS’ NOTICE OF 

PENDING, REFILED, RELATED, OR SIMILAR ACTIONS 

Pursuant to Local Rule 3.8 and Section 2.15.00 of the Internal Operating Procedures of the 

United States District Court for the Southern District of Florida, Defendants HMD America, Inc. 

and HMD Global Oy (“HMD”) file this Notice of Pending, Refiled, Related, or Similar Actions. 

1. On May 15, 2020, Plaintiffs Sisvel International S.A., 3g Licensing S.A., and 

Sisvel S.p.A. filed this action against HMD [DE 1]. (the “HMD Action.”) To date, Plaintiffs have 

not filed a Notice under Local Rule 3.8.1

2. Plaintiffs’ action alleges infringement of nine U.S. Patents: U.S. Patent 

No. 7,215,653; U.S. Patent No. 7,319,718; U.S. Patent No. 7,551,625; U.S. Patent No. 7,580,388; 

U.S. Patent No. 7,869,396; U.S. Patent No. 7,979,070; U.S. Patent No. 8,189,611; U.S. Patent 

No. 8,600,383; and U.S. Patent No. 8,971,279. Plaintiffs allege that their patents are variously 

“essential under” the “3G” and “4G” cellular standards, such that HMD’s 3G- and 4G-capable 

devices necessarily infringe the patents. 

 

1

 This Notice is filed to comply with Local Rule 3.08 and is not intended as Defendants’ response to the complaint 

which will be filed separately on or before the current due date of October 2, 2020 (DE 8). 

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3. On the same day (May 15, 2020), Plaintiffs filed an action in this district against 

Blu Products, Inc. alleging infringement of three of the nine patents asserted against HMD (U.S. 

Patent No. 7,869,396; U.S. Patent No. 7,979,070; and U.S. Patent No. 8,971,279). See Sisvel 

International SA et al v. Blu Products, Inc., 1-20-cv-22050 (S.D. Fla.) (the “Blu Action”). 

Plaintiffs make substantially identical allegations of infringement against Blu Products’ 3G- and 

4G-capable devices as those made against HMD’s 3G- and 4G-capable devices. (Compare, e.g., 

1-20-cv-22051 DE 1-13 with 1-20-cv-22050 DE 1-14.) That case has been assigned to the 

Honorable Federico A. Moreno. The Defendants have not yet answered or otherwise responded to 

the complaint and have until September 3, 2020 to do so. 

4. Also on the same day (May 15, 2020), Plaintiffs filed an action in this district 

against Noetic, Inc. and Sun Cupid Technology (HK) Ltd. alleging infringement of the same nine 

patents asserted against HMD. See Sisvel International SA et al v. Noetic, Inc. et al., 1-20-cv22054 (S.D. Fla.) (the “Noetic Action”). Plaintiffs again make substantially identical allegations 

of infringement against Noetic’s 3G- and 4G-capable devices as those made against HMD’s 3Gand 4G-capable devices. (Compare, e.g., 1-20-cv-22051 DE 1-13 with 1-20-cv-22054 DE 1-17.) 

That case has been assigned to the Honorable Darrin P. Gayles. The Defendants have not yet 

answered or otherwise responded to the complaint and have until September 3, 2020 to do so. 

5. Because the patents, subject matter, operative facts and issues of law are 

substantively the same across the HMD Action, the Noetic Action, and the Blu Action, and the 

disposition thereof would appear to entail the unnecessary duplication of judicial labor if heard by 

a different judge, the “Judges involved shall determine whether the higher-numbered action or 

proceeding shall be transferred to the Judge assigned to the lower-numbered action” (here, the Blu 

Action, 1-20-cv-22050). See IOP 2.15.00. 

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6. In addition to Plaintiffs’ actions in this District, on May 15, 2020, Plaintiffs filed 

nine actions in the District of Delaware asserting these patents. One such action alleges 

infringement of eight of the nine of the patents asserted against HMD. See 3G Licensing SA et al 

v. TCL Communication Technology Holdings Limited et al, 1-20-cv-00654 (D. Del.). The other 

actions allege infringement of all nine of the patents asserted against HMD. See Sisvel 

International SA et al v. Cradlepoint, Inc., 1-20-cv-00649 (D. Del.); Sisvel International SA et al v. 

Dell Inc., 1-20-cv-00651 (D. Del.); Sisvel International SA et al v. Honeywell International, Inc., 

1-20-cv-00652 (D. Del.); Sisvel International SA et al v. OnePlus Technology (Shenzhen) Co., 

Ltd., 1-20-cv-00653 (D. Del.); Sisvel International SA et al v. Tesla, Inc., 1-20-cv-00655 (D. Del.); 

Sisvel International SA et al v. VeriFone, Inc., 1-20-cv-00656 (D. Del.); Sisvel International SA et 

al v. Wiko SAS et al, 1-20-cv-00658 (D. Del.); Sisvel International SA et al v. Xirgo Technologies, 

LLC, 1-20-cv-00659 (D. Del.). Again, Plaintiffs make substantially identical allegations of 

infringement against the various defendants’ 3G- and 4G-capable devices as those made against 

HMD’s 3G- and 4G-capable devices. All of these nine cases have been assigned to the Honorable 

Maryellen Noreika. No defendant has yet answered or otherwise responded to the complaint. 

7. Finally, on May 18, 2020, Plaintiffs filed an action in the Northern District of 

Texas against ZTE (USA) Inc. and ZTE Corporation, alleging infringement of all nine of the 

patents asserted herein against HMD. See Sisvel International SA et al v. ZTE (USA), Inc. et al, 3-

20-cv-01289 (N.D. Tex.) Again, Plaintiffs make substantially identical allegations of infringement 

against the defendants’ 3G- and 4G-capable devices as those made against HMD’s 3G- and 4Gcapable devices. The case has been assigned to the Honorable Chief Judge Barbara M. G. Lynn. 

No evidence of service of this complaint is found on the public docket. 

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Dated: August 24, 2020 

Respectfully submitted, 

/s/ Joseph W. Bain

JOSEPH W. BAIN, ESQ. 

Florida Bar No. 860360 

Email Address: jbain@shutts.com 

SHUTTS & BOWEN LLP 

1100 CityPlace Tower 

525 Okeechobee Boulevard 

West Palm Beach, Florida 33401 

Telephone: (561) 835-8500 

Facsimile: (561) 650-8530 

Attorneys for Defendants HMD America, Inc. and 

HMD Global OY 

CERTIFICATE OF SERVICE 

I HEREBY CERTIFY that on this 24th day of August 2020, I electronically filed the 

foregoing with the Clerk of court by using the CM/ECF system, which will automatically send email notification of such filing to all parties of record. 

/s/ Joseph W. Bain

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