DCT

1:24-cv-01433

Samsung Electronics Co Ltd v. Koninklijke KPN NV

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-01433, D. Del., 03/25/2025
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant is a foreign corporation, has directed patent enforcement efforts and conducted business in the District of Delaware, and a substantial part of the events giving rise to the claim occurred in the District.
  • Core Dispute: Plaintiff seeks a declaratory judgment that its wireless communication products, which comply with 3G, 4G, and 5G standards, do not infringe nine of Defendant's U.S. patents that Defendant has declared as essential to those standards.
  • Technical Context: The dispute concerns patented technologies within the domain of wireless telecommunications, which are fundamental to the operation of modern mobile networks and devices such as smartphones and network infrastructure.
  • Key Procedural History: The complaint alleges a complex history between the parties, centered on a 2016 license agreement that included a covenant-not-to-sue on the patents-in-suit, which expired on December 31, 2024. Prior to the covenant's expiration, Defendant allegedly asserted that Plaintiff's standards-compliant products necessarily infringe the patents. This position was reportedly advanced during a 2022 Texas state court action, where Defendant was awarded damages against Plaintiff for breach of contract, based on a calculation of royalties for the use of the patented technology. Defendant has also declared the patents-in-suit as essential to various 3G, 4G, and 5G standards at the European Telecommunications Standards Institute (ETSI).

Case Timeline

Date Event
2007-12-21 U.S. Patent No. 8,549,151 Priority Date
2009-10-07 U.S. Patent No. 8,660,560 Priority Date
2013-10-01 U.S. Patent No. 8,549,151 Issues
2014-02-25 U.S. Patent No. 8,660,560 Issues
2014-11-04 U.S. Patent No. 8,881,235 Issues
2014-12-22 U.S. Patent No. 11,259,338 Priority Date
2015-12-08 U.S. Patent No. 9,210,590 Issues
2016-01-01 2016 KPN/Samsung License Agreement Effective Date (approx.)
2016-10-04 U.S. Patent No. 9,462,544 Issues
2017-05-16 U.S. Patent No. 9,654,330 Issues
2017-05-30 U.S. Patent No. 9,667,669 Issues
2020-07-07 U.S. Patent No. RE48,089 Issues
2022-01-01 KPN files Texas State Court Action against Samsung (approx.)
2022-02-22 U.S. Patent No. 11,259,338 Issues
2024-12-31 Covenant-not-to-sue from 2016 License expires
2025-03-25 Complaint for Declaratory Judgment Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,667,669 - "Managing associated sessions in a network"

  • Issued: May 30, 2017
  • The Invention Explained:
    • Problem Addressed: The complaint does not describe the technical problem from the patent's perspective. However, the technology generally addresses the complexity of managing multiple, related communication streams (e.g., a video call with accompanying data sharing) that are part of a single user experience (Compl. ¶50).
    • The Patented Solution: The invention appears to solve this by creating a "composition session," which acts as a master control session for a group of "associated sessions." This allows the network and user equipment to manage the related streams as a single logical unit, simplifying tasks like termination or modification (Compl. ¶50). A prior court order construed "composition session" to mean "a signaling session that is separate from the associated sessions and that is for facilitating management of the associated sessions" (Compl. ¶50).
    • Technical Importance: This approach can improve efficiency and simplify the architecture for delivering complex, multi-part services over telecommunications networks (Compl. ¶50).
  • Key Claims at a Glance:
    • The complaint identifies independent claims 1, 15, and 21 as being at issue (Compl. ¶52).
    • The complaint alleges that claim 1 includes, among others, the following essential elements (Compl. ¶¶ 50-51):
      • Initiating establishment of a composition session.
      • Modifying the composition session.
      • Wherein modifying comprises using signaling in the composition session to terminate all of the two or more sessions.

U.S. Patent No. 8,549,151 - "Method and system for transmitting a multimedia stream"

  • Issued: October 1, 2013
  • The Invention Explained:
    • Problem Addressed: The complaint does not specify the problem, but the patent abstract describes a situation where two terminals need to establish a multimedia stream but may use different signaling protocols (e.g., one uses Session Initiation Protocol (SIP) while the other uses Real Time Streaming Protocol (RTSP)) (’151 Patent, Abstract).
    • The Patented Solution: The invention uses a gateway that can communicate using both protocols. The first terminal invites the gateway to set up a session using a first protocol. The gateway then notifies the second terminal of the pending invitation, which causes the second terminal to set up its own session with the gateway using a second protocol. This allows the end-to-end multimedia stream to be established despite the protocol mismatch (’151 Patent, Abstract).
    • Technical Importance: This technology enables interoperability between different types of networks and devices, allowing for the delivery of services like IPTV across systems that do not natively speak the same signaling language (’151 Patent, Abstract).
  • Key Claims at a Glance:
    • The complaint identifies independent claims 1, 17, and 18 as being at issue (Compl. ¶58).
    • The complaint alleges that claim 1 is directed to a method of "communicating with a first terminal and a second terminal" that requires, among other elements (Compl. ¶57):
      • The second terminal using a second protocol to receive a trigger.
      • Wherein the trigger is to initiate an exchange of a second media session information.

Multi-Patent Capsule: U.S. Patent No. 9,654,330

  • Patent Identification: U.S. Patent No. 9654330, "Method and system for transmitting a multimedia stream," issued May 16, 2017 (Compl. ¶33).
  • Technology Synopsis: Similar to the ’151 Patent, this patent appears to relate to methods for transmitting multimedia streams between terminals, potentially involving different protocols or network elements. A key feature appears to be a "trigger" that not only initiates a session but also "serves to inform the second terminal of availability of a new multimedia stream" (Compl. ¶63).
  • Asserted Claims: Independent claims 1, 16, and 17 (Compl. ¶64).
  • Accused Features: Plaintiff alleges its standard-compliant products do not "receive a trigger" that both initiates a session and informs of a new stream's availability (Compl. ¶63).

Multi-Patent Capsule: U.S. Patent No. 9,462,544

  • Patent Identification: U.S. Patent No. 9462544, "Method and telecommunications infrastructure for activating an inactive cell," issued October 4, 2016 (Compl. ¶35).
  • Technology Synopsis: The technology relates to network power saving by keeping some base stations ("cells") inactive. The invention provides a method for a terminal to detect a "presence signal" from an inactive cell, obtain a measurement report, and provide that report to the network via an active cell, which can then decide whether to activate the inactive cell (Compl. ¶69).
  • Asserted Claims: The complaint discusses claim 1 (Compl. ¶69).
  • Accused Features: Plaintiff alleges its products do not have a processor that executes instructions to receive a presence signal from an inactive station, obtain a measurement report, and provide that report to the infrastructure (Compl. ¶69).

Multi-Patent Capsule: U.S. Patent No. 8,881,235

  • Patent Identification: U.S. Patent No. 8881235, "Service-based authentication to a network," issued November 4, 2014 (Compl. ¶37).
  • Technology Synopsis: This patent addresses network security and authentication. The invention appears to involve a terminal identifying the specific "communication channel through which the authentication request was received" as part of the authentication process (Compl. ¶74).
  • Asserted Claims: Independent claims 1, 8, 10, 11, and 12 (Compl. ¶75).
  • Accused Features: Plaintiff alleges its products do not perform the step of "identifying the communication channel through which the authentication request was received" at the terminal (Compl. ¶74).

Multi-Patent Capsule: U.S. Patent No. 8,660,560

  • Patent Identification: U.S. Patent No. 8660560, "System for updating a neighbour cell list (NCL) of a wireless access node of a telecommunications architecture and method therefore," issued February 25, 2014 (Compl. ¶39).
  • Technology Synopsis: The technology concerns the management of neighbor cell lists (NCLs), which mobile devices use to facilitate handovers between network cells. The invention claims an "updating means" for updating these lists. A prior court construed this means-plus-function term as corresponding to the structure of an "updater 14" disclosed in the patent's specification (Compl. ¶80; ’560 Patent, Fig. 2).
  • Asserted Claims: Independent claims 1, 9, and 13 (Compl. ¶81).
  • Accused Features: Plaintiff alleges its network products, such as the SVR20A, lack any structure equivalent to the "updater 14" disclosed in the patent (Compl. ¶80).

Multi-Patent Capsule: U.S. Patent No. RE48,089

  • Patent Identification: U.S. Patent No. RE48089, "Method and system for automatic coverage assessment for cooperating wireless access networks," issued July 7, 2020 (Compl. ¶41).
  • Technology Synopsis: The invention relates to methods for assessing network coverage. It requires "generating, at the coverage estimator, the coverage assessment for the second wireless access network." A prior court construed "coverage assessment" to mean a "representation of locations/pixels and associated signal strengths and/or interference values" (Compl. ¶86).
  • Asserted Claims: Independent claims 6, 13, and 15 (Compl. ¶87). The complaint focuses its argument on claim 6.
  • Accused Features: Plaintiff alleges its products do not generate any representation of locations/pixels with associated signal strengths or interference values (Compl. ¶86).

Multi-Patent Capsule: U.S. Patent No. 11,259,338

  • Patent Identification: U.S. Patent No. 11259338, "Handling of connection setup requests," issued February 22, 2022 (Compl. ¶43).
  • Technology Synopsis: The technology concerns network resource management, specifically for handling connection requests. The invention involves a network node determining whether to fulfill a request based on available resources that are "not reserved for premium services," distinguishing this from standard Quality of Service (QoS) parameters (’338 Patent, Abstract, col. 14:15-24; Compl. ¶92).
  • Asserted Claims: Independent claims 1, 9, 10, 11, and 14 (Compl. ¶93).
  • Accused Features: Plaintiff alleges its products use standard QoS parameters to prioritize requests and do not perform the claimed step of determining fulfillment based on resources "not reserved for premium services" (Compl. ¶92).

Multi-Patent Capsule: U.S. Patent No. 9,210,590

  • Patent Identification: U.S. Patent No. 9210590, "Method and telecommunications infrastructure for activating an inactive cell," issued December 8, 2015 (Compl. ¶45).
  • Technology Synopsis: Similar to the ’544 patent, this technology relates to activating inactive network cells. The invention requires receiving "measurement reports from the plurality of terminals detecting the presence signal," where the reports indicate measurements by that plurality. Defendant allegedly argued in a prior IPR that a report from a single terminal would not suffice (Compl. ¶¶ 98-99).
  • Asserted Claims: Independent claims 1, 11, and 12 (Compl. ¶100).
  • Accused Features: Plaintiff alleges its products do not receive measurement reports indicating measurements of a presence signal by a "plurality of terminals" (Compl. ¶¶ 98-99).

III. The Accused Instrumentality

  • Product Identification: The complaint seeks a declaratory judgment of non-infringement for Plaintiff’s smartphones, tablets, smartwatches, and mobile network infrastructure equipment that are compliant with 3G, 4G, and 5G cellular standards (Compl. ¶¶ 3, 19). Specific product examples cited include the Samsung Galaxy S23, Samsung Galaxy A32 5G, and Samsung Galaxy A54 5G smartphones, as well as the Samsung SVR20A network equipment (Compl. ¶¶ 3, 50, 80).
  • Functionality and Market Context: The relevant functionality of the accused instrumentalities is their compliance with 3GPP wireless standards (Compl. ¶3). The Plaintiff's central technical argument is that while its products comply with these standards, they do not necessarily implement every optional feature defined within them. Plaintiff contends that the patented technologies reside in such optional sections of the standards, which its products do not practice (Compl. ¶17). Plaintiff is described as a global leader and one of the most successful manufacturers of wireless communication devices (Compl. ¶2).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

The complaint does not contain or reference claim charts. The analysis below is based on the narrative non-infringement theories provided for the two lead patents.

U.S. Patent No. 9,667,669 Non-Infringement Position

Plaintiff alleges that its products do not meet limitations of claim 1 concerning the initiation and modification of a "composition session" (Compl. ¶¶ 50-51). Citing a prior claim construction that defines the term as a "signaling session that is separate...and that is for facilitating management," Plaintiff argues that any alleged "composition session" in its products is terminated immediately after initiation and thus does not "facilitate management." Further, Plaintiff alleges that because such a session cannot be modified after initiation, its products do not practice the claimed step of "using signaling in the composition session to terminate all of the two or more sessions" (Compl. ¶51).

  • Identified Points of Contention: The dispute may center on the temporal and functional requirements of a "composition session." A key question is whether a transient signaling event that exists only to be immediately terminated can still be considered a "session" that "facilitates management" under the patent's definition.

U.S. Patent No. 8,549,151 Non-Infringement Position

Plaintiff alleges its products do not infringe because they do not perform the claimed step of "the second terminal using a second protocol to receive a trigger...wherein the trigger is to initiate an exchange of a second media session information" (Compl. ¶57). Plaintiff asserts that its standard-compliant products do not "receive a trigger" for this purpose (Compl. ¶57).

  • Identified Points of Contention: This dispute raises the question of what constitutes a "trigger" in the context of the patent. The analysis will likely depend on whether the standard signaling messages used by Plaintiff’s products to establish sessions perform the specific function of the claimed "trigger," or if the patent requires a distinct, non-standard mechanism that is absent in the accused products.

V. Key Claim Terms for Construction

The Term: "composition session" (’669 Patent, claim 1)

  • Context and Importance: The definition of this term appears to be dispositive for the ’669 Patent. The entire non-infringement argument rests on whether the signaling protocols used by Plaintiff’s products create and use what can be legally defined as a "composition session" that "facilitates management" (Compl. ¶50). Practitioners may focus on this term because its construction was already litigated in a prior case involving Defendant, indicating it is a known point of dispute (Compl. ¶50).
  • Intrinsic Evidence for Interpretation: The complaint does not quote the patent’s specification, but it provides a prior construction from Koninklijke KPN NV v. Telefonaktiebolaget LM Ericsson et al.: "a signaling session that is separate from the associated sessions and that is for facilitating management of the associated sessions" (Compl. ¶50).
    • Evidence for a Broader Interpretation: Language supporting a broader view might argue that any signaling that logically groups other sessions, however briefly, "facilitates management," even if that management is limited to a one-time setup or teardown event.
    • Evidence for a Narrower Interpretation: Language supporting a narrower view, as advanced by Plaintiff, suggests the session must have some persistence and enable ongoing or future management actions, not just be an ephemeral event that is immediately terminated (Compl. ¶50).

The Term: "trigger" (’151 Patent, claim 1)

  • Context and Importance: This term is central to the non-infringement argument for the ’151 Patent. Whether Plaintiff’s products infringe depends on whether the standard signaling messages they use can be characterized as the claimed "trigger" that initiates the exchange of media session information (Compl. ¶57).
  • Intrinsic Evidence for Interpretation: The complaint does not provide a definition from the patent. The patent's abstract, however, describes a sequence where a gateway sends a "notification" to a second terminal "in response to" an invitation from a first terminal, and the second terminal then acts "in response to the notification" (’151 Patent, Abstract).
    • Evidence for a Broader Interpretation: Parties may argue that any standard signaling message that causes a device to initiate a session exchange qualifies as a "trigger" under its plain and ordinary meaning.
    • Evidence for a Narrower Interpretation: Parties may argue that the specific context of the patent—interworking between two different protocols like SIP and RTSP—implies the "trigger" is a specific, non-native message sent to activate a client that could not otherwise participate in the session initiation, a function not performed by standard signaling between homogenous devices (’151 Patent, Abstract).

VI. Other Allegations

  • Indirect Infringement: Plaintiff seeks a declaratory judgment that it has not infringed any claims indirectly, whether through inducement or contributory infringement (Compl. ¶49). The complaint, being a declaratory judgment action, does not allege specific facts supporting such a claim but rather seeks to preemptively defend against it.

VII. Analyst’s Conclusion: Key Questions for the Case

This declaratory judgment action appears to be a strategic response to Defendant’s broad assertions of infringement based on its patents' status as "standard essential." The case will likely turn on the resolution of two central questions:

  • A core issue will be one of standards implementation: does compliance with a 3G/4G/5G standard necessarily require practicing the specific methods claimed in Defendant's patents? The court will have to consider whether the patented features are mandatory components of the standards that Plaintiff’s products implement, or optional functionalities that they omit.
  • A key evidentiary question will be one of technical and definitional scope: can terms like "composition session" and "trigger," as defined and used in the context of the patents-in-suit, be construed to read on the standard-compliant signaling and session management functions of Plaintiff's products? The outcome may depend on whether there is a fundamental mismatch in technical operation or simply a semantic dispute over the scope of the claim language.