IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

LIONRA TECHNOLOGIES LTD. §

§

v. § CASE NO. 2:23-cv-00206-JRG

§ (Lead Case)

FORTINET, INC. §

LIONRA TECHNOLOGIES LTD. §

§

v. § CASE NO. 2:23-cv-00207-JRG

§ (Member Case)

CISCO SYSTEMS, INC. §

ORDER

Before the Court is the parties’ Joint Stipulation of Non-Infringement of U.S. Patent No. 

7,623,518 (Dkt. No. 55) (the “Stipulation”). In the Stipulation, the parties agree and stipulate to 

the following facts:

1. Lionra has asserted infringement of claims 15, 17, and 19–21 of the ’518 patent (the 

“Asserted Claims”) by Fortinet’s “Accused Products” or “Accused Instrumentalities” 

(collectively, the “Accused Products”).1 Each of the Accused Products includes a processor made 

by Intel Corporation (“Intel Processor”) or Advanced Micro Devices, Inc. (“AMD”).

1 Lionra and Fortinet agree that for purposes of this stipulation, Lionra will discontinue assertion of method claims 1 

and 3 without prejudice to reassert the claims should the District Court’s determinations be reversed.

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2. Lionra is a signatory of a Patent License Agreement with RPX Corporation (the “RPX 

Agreement”), attached hereto as Exhibit 1. The RPX Agreement is a valid and enforceable 

contract.

3. The RPX Agreement provides an “exclusive and irrevocable right of RPX to grant to 

each Initial Licensee: (i) sublicenses under the Patent License, as well as (ii) an irrevocable, 

unconditional release from all Claims relating to any Patent including those for damages for past, 

present and future infringement of the Patents.” Ex. 1 at § 1.2(a).

4. The RPX Agreement further defines a “Licensed Product and Service” as follows:

“Licensed Product and Service” shall mean any past, present or future product

(including but not limited to integrated circuits, components, systems, devices,

software, firmware, IP blocks, cores, cells or macros), service, software,

technology, design, or material, hardware, systems, apparatuses, devices,

components, methods, websites, and processes (including any components,

devices, data, media, or any other portions thereof), at any time, made, have made,

used, purchased, provided, hosted, sold, leased, licensed, distributed, transmitted,

exported, imported or offered for sale, lease, import, or otherwise disposed of or

exploited by or on behalf of an RPX Licensee or an RPX Licensee Affiliate, alone

or in combination with other products, software, technology, materials and services,

the manufacture, use, purchase, provision, hosting, sale, lease, license, distribution,

transmittal, export, import (or offer for sale, lease or import) of which would result

in infringement (direct, indirect, or otherwise) of one or more Patents, irrespective

of whether the product, service, software, technology, or material, hardware,

systems, apparatuses, devices, components, methods, websites, and processes

(including any components, devices, data, media, or any other portions thereof)

were or had been made, used, purchased, provided, hosted, sold, leased, licensed,

distributed, transmitted, exported, imported or offered for sale, lease, or import in

the United States. Licensed Product and Service will include any Combined

Licensed Product and Service.

Id. at 2-3. 

5. The Patent License Agreement further defines “Combined Licensed Product and 

Service” as follows:

“Combined Licensed Product and Service” shall mean any past, present or future

combination or use, whether by an RPX Licensee, any RPX Licensee Affiliate, or

any Covered Third Party, of a Licensed Product and Service with any other product,

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service, technology, or material, only if: (i) a portion of such Licensed Product and

Service provided by or on behalf of the RPX Licensee or any RPX Licensee

Affiliate satisfies (or is alleged by Licensor or its Affiliates to satisfy), one or more

material elements or steps of a claim in any Patent, or (ii) the RPX Licensee or any

RPX Licensee Affiliate has a legal or contractual obligation (existing on or after

the Effective Date of this Agreement) to indemnify a third party with respect to the

Licensed Product and Service in the combination such that the RPX Licensee or

any RPX Licensee Affiliate would be subject to a claim for indemnification in the

event that the combination is alleged to infringe or practice any element of any

claim in any Patent (provided that any contractual obligation to indemnify (a) is not

frivolous and not for the primary purpose of obtaining rights under this Agreement,

and (b) arising after the Effective Date will only cover acts or activities occurring

on or after the date of such contractual obligation).

Id. at 1-2. 

6. The RPX Agreement contains a covenant not to sue, providing:

[A]s of and following the Closing, neither Licensor nor any of its Affiliates will

Assert any Patent (or instruct, encourage, or aid a third party to Assert any Patent)

against any RPX Licensee or any RPX Licensee Affiliate, and neither Licensor nor

its Affiliates will Assert any Patent (or instruct, encourage, or aid a third party to

Assert any Patent) against any Covered Third Party with respect to any Licensed

Product and Service or Combined Licensed Product and Service. As of and

following the Closing, neither Licensor nor any of its Affiliates will Assert or allege

that any product, software, technology, material and/or service of any RPX

Licensee or any RPX Licensee Affiliate satisfies an element or step of a claim in

any Patent against any Entity.

Id. at § 3(d).

7. The RPX Agreement defines “Initial Licensee” as follows:

“Initial Licensee” shall mean each Entity identified in Exhibit A, together with

each such Entity’s past, present and future Affiliates and any portion of its business

or assets (including any Affiliate) that any of the foregoing may sell, transfer or

divest (subject to Section 1.3).

Id. at 2. 

8. Intel and AMD are enumerated “Initial Licensees.” RPX Agreement, Exhibit

A at 2. Fortinet, as a “Covered Third Party,” can enforce Lionra’s obligations under the RPX

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Agreement at least pursuant to Section 1.2(c). Id. at § 1.2(c). Claim 15 of the ’518 patent requires, 

in part, “a processor coupled to the forwarding circuit and to the memory circuit, the processor 

operable to define the specific packets detected by the forwarding circuit and operable to process 

the specific packets stored in the memory circuit using the enhanced access control list to generate 

the dynamic access control list and store the dynamic access control list in the memory circuit, and 

further operable to provide the specific packets to the processor port of the forwarding circuit after 

processing the packets.” For all Accused Products, Lionra’s only infringement accusation for this 

limitation is that an Intel Processor is alleged to satisfy the claimed “processor” limitation. Thus, 

Lionra’s accusations indicate that an Intel or AMD Processor is a “material element[]” within the 

contemplated scope of the RPX Agreement for “Licensed Product[s] and Service[s].” Claim 17 of 

the ’518 patent depends on claim 15, and therefore includes the same “processor” limitation. For 

all Accused Products, Lionra’s only infringement accusation for this limitation is that an Intel or 

AMD Processor is alleged to satisfy the claimed “processor” limitation.

9. Claim 19 of the ’518 patent requires, in part, “a processor coupled to the forwarding 

circuit and to the memory circuit, the processor operable to define the specific packets detected by 

the forwarding circuit and operable to process the specific packets stored in the memory circuit 

using the enhanced access control list to generate the dynamic access control list and store the 

dynamic access control list in the memory circuit, and further operable to provide the specific 

packets to the processor port of the forwarding circuit after processing the packets.” For all 

Accused Products, Lionra’s only infringement accusation for this limitation is that an Intel or AMD 

Processor is alleged to satisfy the claimed “processor” limitation.

10. Claim 20 of the ’518 patent depends on claim 19, and therefore includes the same

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“processor” limitation. For all Accused Products, Lionra’s only infringement accusation for this

limitation is that an Intel or AMD Processor is alleged to satisfy the claimed “processor” limitation.

11. Claim 21 of the ’518 patent depends on claim 19, and therefore includes the same 

“processor” limitation. For all Accused Products, Lionra’s only infringement accusation for this 

limitation is that an Intel or AMDProcessor is alleged to satisfy the claimed “processor” limitation.

12. Fortinet maintains that Lionra’s assertion of infringement of the Asserted Claims in 

this case is contrary to the license and covenant not to sue under the RPX Agreement. Lionra 

disputes that. The parties’ contentions on this dispute are fully set forth at Dkts. 264, 300, 333, 

374, and 507 in Lionra Technologies Ltd. v. Fortinet, Inc. et al., No. 2:22-cv-00322-JRG-RSP

(E.D. Tex.) (“Lionra I”).

13. The Court decided in Lionra I that certain Fortinet products are “Licensed Product[s]

and Service[s]” and “Combined Licensed Product[s] and Service[s]” under the RPX Agreement

as to U.S. Patent No. 7,685,436 and U.S. Patent No. 8,566,612, by virtue of their including Intel

or AMD Processors as a “material element” of the asserted claims. Lionra I, Dkt. 479 at 6–7 

(Report and Recommendation); Lionra I, Dkt. 515 (Order Adopting Report and 

Recommendation).

14. The Court also decided in Lionra I that, under the covenant not to sue in the RPX 

Agreement, Lionra is barred from asserting a theory of infringement that identifies an Intel or 

AMD processor “as the requisite hardware that is claimed” in the relevant asserted claims. Lionra 

I, Dkt. 479 at 6–7 (Report and Recommendation); Lionra I, Dkt. 515 (Order Adopting Report and

Recommendation).

15. The parties stipulate that the Court’s reasoning in Lionra I applies equally to the

Asserted Claims and Accused Products in this case. Accordingly, the parties stipulate that, under 

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the Court’s reasoning in Lionra I, Fortinet’s Accused Products are licensed under the RPX 

Agreement for the reasons stated above.

16. The parties further stipulate that, under the Court’s reasoning in Lionra I, Lionra has 

covenanted not to sue any entity, including Fortinet, for alleged infringement based on any

allegations against Intel processors.

17. Accordingly, the parties stipulate that, under the Court’s reasoning in Lionra I, Fortinet

is entitled to judgment of noninfringement in this case, subject to Lionra’s right to appeal the 

judgment based on the Court’s reasoning in Lionra I, Dkt. 515.

18. For the avoidance of doubt, the parties’ briefing regarding the motion for summary 

judgment in Lionra I (Dkts. 264, 300, 333, 374, 507) and this Court’s decisions on that motion 

(Dkts. 479, 515) are attached hereto and will be considered part of the record of this case for 

purposes of any appeal. See Exs. 2-8.

Having considered the Stipulation, and noting its joint nature, the Court 

ACKNOWLEDGES AND ACCEPTS the Stipulation. Accordingly, the Court hereby ORDERS

and ENTERS a judgment of non-infringement as to U.S. Patent No. 7,623,518 (“the ’518 patent”).

.

____________________________________

RODNEY GILSTRAP

UNITED STATES DISTRICT JUDGE So ORDERED and SIGNED this 19th day of July, 2024.

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