Orckit Corporation v. Cisco Systems, Inc.

District Court, E.D. Texas·Decided April 6, 2026·No. 2:25-cv-00181·Unknown

Opinion

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION ORCKIT CORPORATION, § § Plaintiff, § § v. § CIVIL ACTION NO. 2:25-CV-181-RWS-RSP § CISCO SYSTEMS, INC., § § Defendant. §

ORDER Before the Court is Defendant Cisco Systems, Inc.’s Motion to Dismiss Plaintiff’s Action Pursuant to Federal Rule of Civil Procedure 12(b)(1) for Lack of Standing. Docket No. 26. This case was referred to United States Magistrate Judge Roy Payne pursuant to 28 U.S.C. § 636(b)(1). On February 2, 2026, the magistrate judge issued a report and recommendation, recommending that the motion be denied. Docket No. 76. On February 17, 2026, Defendant filed its objections to the report and recommendation. Docket No. 77. BACKGROUND Plaintiff Orckit Corporation filed this action on February 14, 2025, alleging that Defendant infringes U.S. Patent Nos. 6,680,904 (“the ’904 Patent”), 8,830,821 (“the ’821 Patent”), 10,652,111 (“the ’111 Patent”), 12,231,305 (“the ’305 Patent”); 12,237,986 (“the ’986 Patent”); and 12,244,475 (“the ’475 Patent”) (collectively, “the Asserted Patents”).1 Docket No. 1 at ¶ 1; Docket No. 11 ¶ 1. The complaint identifies hundreds of “Accused Products” that allegedly infringe one or more of the Asserted Patents. See generally Docket No. 11-12. Plaintiff claims that

1 The ’305, ’986, and ’475 Patents are all continuations of the ’111 Patent, and its nonprovisional application, No. PCT/US2015/026869. Defendant directly and indirectly infringes the Asserted Patents “by making, using, offering for sale, selling, and/or importing products.” See, e.g., Docket No. 11 at ¶¶ 2, 73, 90, 121, 140. On May 27, 2025, Defendant moved to dismiss Plaintiff’s first amended complaint under Federal Rule of Civil Procedure 12(b)(1). Docket No. 26. Defendant argues that Plaintiff lacks

standing because the chain of title to the Asserted Patents was broken before the patents were ultimately assigned to Plaintiff Orckit Corp. The disputed chain of title to the Asserted Patents involves four different companies: Orckit Communications, Ltd. (an Israeli company), and its subsidiaries: Orckit IP LLC (a Delaware company), Nahum Communication NTB Ltd. (an Israeli company), and Plaintiff Orckit Corp. (a Delaware company). See id. at 1–9. Defendant claims that title was first broken when Orckit Communications purported to assign the Asserted Patents to Orckit IP on April 25, 2016 even though the inventors did not assign the patents to Orckit IP until September 2016. Id. at 3–4. Defendant claims the chain of title was also broken when Nahum allegedly assigned the Asserted Patents to Plaintiff Orckit Corp. through an agreement with an effective date of June 15, 2022 even though Orckit IP did not assign the Asserted Patents to Nahum

until June 20, 2022. Id. at 13–14. REPORT AND RECOMMENDATION OF THE MAGISTRATE JUDGE The magistrate judge issued a report and recommendation on February 2, 2026, rejecting both of Defendant’s standing arguments and recommending that Defendant’s motion be denied. See generally Docket No. 76. Regarding Defendant’s first argument that the assignment from Orckit Communications to Orckit IP was invalid because the inventors had not yet transferred ownership of the Asserted Patents, the magistrate judge concluded that the September 2016 assignment by the inventors was unnecessary. Id. at 13. The magistrate judge agreed with Plaintiff’s argument that “Israeli law controls on the question of whether the inventions claimed in the ’111, ’305, ’986, and ’475 Patents originally belonged to Orckit Communications.” Id. at 12. Under Israeli law, “the ownership rights in an invention automatically vest with [an] employer, and are only transferred to the employee in certain extremely limited circumstances.” Id. at 11 (quoting Docket No. 36-1 ¶¶ 8–11). Thus, the magistrate judge found that Orckit Communications, as the inventors’ employer, properly assigned

the patents to Orckit IP on April 25, 2016. Id. at 13. The magistrate judge also rejected Defendant’s argument that the assignment of the Asserted Patents from Nahum to Plaintiff Orckit Corp. was defective because it had an effective date of June 15, 2022. Id. at 13, 16. The magistrate judge concluded that Nahum “intended to assign all of [its] rights in the Asserted Patents to Plaintiff Orckit Corp. and that, but for the mistaken use of June 15, 2022 in the Patent Assignment Agreement, there would be no dispute as to whether Orckit Corp. had standing.” Id. at 16. DEFENDANT’S OBJECTIONS On February 17, 2026, Defendant filed objections to the magistrate judge’s report and recommendation. Docket No. 77. Defendant contends that the magistrate judge correctly stated

that Plaintiff must prove standing by a preponderance of the evidence, but Orckit Corp. failed to meet this burden in two respects. Id. at 2. First, Defendant claims that Plaintiff did not demonstrate that the ’111 Patent qualified as a “service invention.” Id. at 2–4. Second, Defendant argues that Plaintiff failed to prove the non-existence of employment agreements between the inventors and Orckit Communications, and, thus, Orckit Communications could not have validly assigned the Asserted Patents to Orckit IP. Id. at 2, 4–5. Defendant also contends that, even if Israeli law applies, ownership of the patents did not automatically vest in Orckit Communications because “[e]ither translation [of Israeli law provided by Plaintiff’s expert] would require a later assignment as a matter of federal law.” Id. at 5–6. Defendants further contend that the assignment from Nahum to Plaintiff Orckit Corp. was defective. Docket No. 77 at 6. Defendant argues that the report and recommendation “does not analyze the [Patent Assignment Agreement between Nahum and Orckit Corp.] under any state law.” Id. Whether the Court applies Israeli or Delaware law, Defendant avers that “a court cannot

look beyond an unambiguous contract to discern intent.” Id. at 7. Defendant claims that, even if the Court could consider extrinsic evidence, the evidence in the record does not support altering the Patent Assignment Agreement’s effective date of June 15, 2022. Defendant lastly argues that Plaintiff Orckit Corp. used privileged emails to support its position without a finding of subject matter waiver. Id. at 8. ANALYSIS I. Assignments Between the Inventors, Orckit Communications, and Orckit IP The Court determines that the magistrate judge properly concluded that ownership of the Asserted Patents automatically transferred to Orckit Communications under Israeli Patent Law 5727-1967. Defendant’s first objection, that Plaintiff allegedly did not show that the ’111 Patent qualified as a “service invention” under Israeli law, was never raised in prior briefing or oral

argument, and the argument is therefore forfeited. See Docket Nos. 26, 35, 61, 62, 68; Schambaugh & Son, L.P. v. Steadfast Ins. Co., 91 F.4th 364, 369 (5th Cir. 2024) (“[T]his court considers arguments forfeited if they are not raised before a magistrate judge, even if they are subsequently raised before the reviewing district court in objections to the magistrate judge’s report and recommendation.”). Defendant’s second objection, that Plaintiff failed to prove the non-existence of employment agreements between the inventors and Orckit Communications, is unpersuasive. Although Defendant points out that Mr. Izhak Tamir—the founder of Orckit Communications— testified that “employees . . .

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Orckit Corporation v. Cisco Systems, Inc., (E.D. Tex. 2026).

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