DCT

1:25-cv-00001

Samsung Electronics Co Ltd v. Koninklijke KPN NV

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Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:25-cv-00001, D. Del., 03/25/2025
  • Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware because the defendant, KPN, is a foreign corporation that may be sued in any judicial district, has conducted business in the District, and has directed its patent enforcement efforts there.
  • Core Dispute: Plaintiff seeks a declaratory judgment that its standard-compliant wireless communication products do not infringe eight U.S. patents owned or co-owned by Defendant related to various telecommunications technologies.
  • Technical Context: The patents relate to technologies allegedly essential to 3G, 4G, and 5G wireless telecommunications standards, which are foundational to the operation of modern smartphones and network equipment.
  • Key Procedural History: The complaint details a significant history between the parties, including a 2016 license agreement that included a covenant-not-to-sue which expired on December 31, 2024. It also references a 2022 Texas state court action where KPN argued that Samsung's standard-compliant products necessarily practice KPN's patents, resulting in a jury verdict for KPN on a breach of contract claim. KPN has also declared the patents-in-suit as essential to ETSI standards and has a history of litigating its standard-essential patents in the District of Delaware.

Case Timeline

Date Event
2008-10-28 Priority Date for ’910 Patent and ’098 Patent
2009-09-18 Priority Date for ’141 Patent
2010-12-21 Priority Date for ’887 Patent
2012-09-06 Priority Date for ’572 and ’820 Patents
2013-12-03 U.S. Patent No. 8,601,141 Issues
2016-01-01 Effective Date of 2016 KPN/Samsung License Agreement
2016-06-21 U.S. Patent No. 9,372,098 Issues
2016-09-06 U.S. Patent No. 9,438,572 Issues
2017-07-04 U.S. Patent No. 9,699,820 Issues
2017-11-14 U.S. Patent No. 9,820,134 Issues
2018-03-06 U.S. Patent No. 9,913,072 Issues
2018-10-16 U.S. Patent No. 10,103,887 Issues
2019-09-17 U.S. Patent No. 10,419,910 Issues
2022-01-01 KPN files Texas State Court Action against Samsung (approx. date)
2024-12-31 KPN’s covenant-not-to-sue Samsung expires
2025-03-25 Complaint for Declaratory Judgment Filed

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

U.S. Patent No. 8,601,141 - Providing enterprise services in a service provisioning network, issued December 3, 2013 (’141 Patent)

The Invention Explained

  • Problem Addressed: The patent describes challenges in providing advanced enterprise services (like business trunking) in IP-based telecommunications networks, such as the IP Multimedia Subsystem (IMS), particularly when enterprise networks (NGCNs) do not support IMS-style registration procedures (’141 Patent, col. 2:5-12). Conventional methods required complex "surrogate registration" or were limited in functionality, creating fragmented and difficult-to-maintain customer data (’141 Patent, col. 2:13-24).
  • The Patented Solution: The invention proposes a method where an enterprise network connects directly to the service provider's network via an interconnect border control network node (like an IBCF), bypassing the standard entry point (P-CSCF) used for registered devices (’141 Patent, col. 3:9-15; Fig. 1). This node adds trunk and enterprise identification information to service requests, allowing an application server to execute enterprise services without requiring the end-user or enterprise equipment to be registered with the IMS core (’141 Patent, col. 9:10-21).
  • Technical Importance: This approach aimed to simplify the integration of legacy or non-IMS-compliant enterprise phone systems (IP-PBXs) into modern service provider networks, enabling advanced services without costly equipment upgrades or complex registration schemes (’141 Patent, col. 2:48-53).

Key Claims at a Glance

  • The complaint asserts non-infringement of independent claims 1, 15, 20, and 23 (Compl. ¶49-50).
  • Independent Claim 1 (Method):
    • Receiving an originating service request from a terminal in an enterprise network via an interconnect border control network node, which provides a direct entry point to an IMS based service provisioning network, avoiding a Proxy Call/Session Control Function (P-CSCF).
    • The interconnect border control network node adds information to the request.
    • Based on the added information, determining a serving network node (S-CSCF) to assign to the request, where the added information includes a route header pointing to an Interrogating Call/Session Control Function (I-CSCF).
    • Routing the request based on a subscriber profile to an application server to execute an originating service.

U.S. Patent No. 10,419,910 - Telecommunications network and method of transferring user data in signalling messages from a communication unit to a data processing centre, issued September 17, 2019 (’910 Patent)

The Invention Explained

  • Problem Addressed: The patent addresses the need for efficient and fast communication of small amounts of data for machine-to-machine (M2M) applications, such as sensors or meters, which may only rarely require network access (’910 Patent, col. 1:35-52). Establishing a full data connection for these small, infrequent transmissions is inefficient and consumes network resources (’910 Patent, col. 2:14-18).
  • The Patented Solution: The invention proposes embedding the M2M user data directly within a wireless signalling message, such as a network attach request, which is typically used only to manage connections (’910 Patent, col. 2:5-13; Fig. 1). A node in the telecommunications network (e.g., an MSC or SGSN) intercepts this signalling message, retrieves the embedded user data, and transfers it to the intended data processing center, thereby avoiding the need to establish a full circuit-switched or packet-switched data connection (’910 Patent, col. 2:27-34).
  • Technical Importance: This method provides a resource-efficient pathway for the "Internet of Things" (IoT) devices to transmit small data packets quickly without the overhead of establishing and tearing down conventional data sessions (’910 Patent, col. 1:53-58).

Key Claims at a Glance

  • The complaint asserts non-infringement of independent claims 1, 18, 20, and 25 (Compl. ¶55-56).
  • Independent Claim 1 (Method):
    • Receiving a wireless signalling message from a communication module.
    • The received wireless signalling message contains non-signalling application data generated for a machine-to-machine function.
    • The wireless signalling message is of a message type specified for carrying signalling data.
    • Transferring the non-signalling application data to a data processing centre while avoiding the establishment of a complete circuit-switched or packet-switched connection.

Multi-Patent Capsules

  • U.S. Patent No. 9,820,134, Proximity discovery, authentication and link establishment between mobile devices in 3GPP LTE, issued November 14, 2017 (’134 Patent)

    • Technology Synopsis: This patent relates to methods for mobile devices to discover each other's proximity, authenticate, and establish a direct communication link, a technology relevant to Device-to-Device (D2D) communications (Compl. ¶34).
    • Asserted Claims: Independent claims 1, 10, 11, and 12 (Compl. ¶61-62).
    • Accused Features: The complaint alleges Samsung’s products do not implement the claimed "proximity discovery" functions, such as comparing representations of an identifier to establish discovery (Compl. ¶61).

  • U.S. Patent No. 10,103,887, Operator-assisted key establishment, issued October 16, 2018 (’887 Patent)

    • Technology Synopsis: The patent describes a method for a terminal to derive a cryptographic key for secure M2M communication with an application server. The key derivation uses a combination of a first key shared with the network and a second, static key shared with the application server (’887 Patent, Abstract).
    • Asserted Claims: Independent claims 1, 7, 13, 16, 19, and 20 (Compl. ¶67-68).
    • Accused Features: The complaint alleges Samsung's products do not perform the recited steps for deriving cryptographic keys, specifically in the context of the claimed machine-to-machine (M2M) communication (Compl. ¶67).

  • U.S. Patent No. 9,699,820, Establishing a device-to-device communication session, issued July 4, 2017 (’820 Patent)

    • Technology Synopsis: The patent relates to methods for establishing a secure device-to-device (D2D) communication session over a D2D channel using a session key (Compl. ¶38, ¶73).
    • Asserted Claims: Independent claims 1, 15, 16, and 17 (Compl. ¶73-74).
    • Accused Features: The complaint alleges Samsung's products do not implement the claimed D2D communication functionality (Compl. ¶73).

  • U.S. Patent No. 9,438,572, Establishing a device-to-device communication session, issued September 6, 2016 (’572 Patent)

    • Technology Synopsis: Similar to the ’820 Patent, this patent concerns establishing a secure D2D communication session based on a session key (’572 Patent, Abstract; Compl. ¶79).
    • Asserted Claims: Independent claims 1, 15, 16, and 17 (Compl. ¶79-80).
    • Accused Features: The complaint alleges Samsung's products do not implement the claimed D2D communication function (Compl. ¶79).

  • U.S. Patent No. 9,913,072, Method and telecommunications network for controlling activation of at least one terminal in a machine-type communication application, issued March 6, 2018 (’072 Patent)

    • Technology Synopsis: The patent describes a method for controlling the activation of multiple terminals in a machine-type communication application using a wireless network (Compl. ¶42, ¶85).
    • Asserted Claims: Independent claims 1 and 9 (Compl. ¶85-86).
    • Accused Features: The complaint alleges Samsung's products do not implement the claimed machine-type communication functionality (Compl. ¶85).

  • U.S. Patent No. 9,372,098, Telecommunications network and method of transferring user data in signaling messages from a communication unit to a data processing centre, issued June 21, 2016 (’098 Patent)

    • Technology Synopsis: Similar to the ’910 Patent, this patent relates to transferring user data from a communication module to a machine-to-machine server by embedding it in a telecommunications network's signaling messages (’098 Patent, Abstract; Compl. ¶91).
    • Asserted Claims: Independent claims 1, 15, 17, and 21 (Compl. ¶91-92).
    • Accused Features: The complaint alleges Samsung's products do not implement the claimed machine-to-machine communication required to transfer data as recited (Compl. ¶91).

III. The Accused Instrumentality

Product Identification

  • Samsung’s smartphones (e.g., Samsung Galaxy S23, Galaxy A32 5G, Galaxy A54 5G), network equipment (e.g., Samsung SVR20A), and related services (Compl. ¶2, ¶49).

Functionality and Market Context

  • The complaint identifies the accused instrumentalities as standard-compliant wireless communication devices and network equipment that communicate using cellular standards including 3G, 4G, and 5G (Compl. ¶2).
  • Samsung alleges that while its products are standard-compliant, they do not support or implement certain optional or specific features of those standards, such as Machine-Type Communications (M2M), Device-to-Device (D2D) communications, Proximity Services (ProSe), or specific IP Multimedia Subsystem (IMS) based service provisioning networks (Compl. ¶17, ¶49, ¶55, ¶61).
  • The complaint references testing documents for the Galaxy S23, A32 5G, and A54 5G products (Exhibits 2-4) as evidence that these devices do not support certain allegedly claimed features (Compl. ¶17). These are described as documents showing Samsung's products do not support features like Machine-Type Communications (Compl. ¶17).

IV. Analysis of Infringement Allegations

The complaint seeks a declaratory judgment of non-infringement. Its core allegation is that Samsung's products do not practice specific, recited limitations of the asserted claims.

’141 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Non-Infringing Functionality Complaint Citation Patent Citation
receiving a message being an originating service request from a terminal endpoint device associated with an enterprise network via an interconnect border control network node, the interconnect border control network node functioning to provide service requests... with a direct entry point of the IMS based service provisioning network, thereby avoiding using a Proxy Call/Session Control Function (P-CSCF) as an entry point Samsung’s standard-compliant smartphone and network products do not implement the claimed IP IMS based service provisioning network. ¶49 col. 13:38-49
wherein the added information includes a route header that points to an Interrogating Call/Session Control Function (I-CSCF) of the IMS based service provisioning network Samsung’s products do not use a route header pointing to an I-CSCF within an IMS-based service provisioning network as claimed. ¶49 col. 13:58-62
  • Identified Points of Contention:
    • Scope Questions: The central dispute may hinge on whether the standard network architectures used by Samsung's products constitute an "IP Multimedia Subsystems (IMS) based service provisioning network" that "avoid[s] using a Proxy Call/Session Control Function (P-CSCF) as an entry point," as required by the claim.
    • Technical Questions: The complaint alleges a categorical absence of the claimed network architecture (Compl. ¶49). A key evidentiary question will be whether any part of the network infrastructure used to provide service to Samsung devices meets the structural and functional requirements of claim 1, particularly the "direct entry point" and the specific roles of the I-CSCF and S-CSCF as claimed.

’910 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Non-Infringing Functionality Complaint Citation Patent Citation
the received wireless signalling message containing non-signalling application data generated for a machine-to-machine function Samsung’s standard-compliant products do not implement the claimed "machine-to-machine function." ¶55 col. 9:18-21
transferring the non-signalling application data to the data processing centre, wherein the telecommunications network is configured for retrieving the non-signalling application data from the received wireless signalling message, while avoiding to establish a complete circuit-switched or packet-switched connection Because the products do not perform the "machine-to-machine function," they do not generate or transfer data in the claimed manner, which avoids establishing a full data connection. ¶55 col. 9:22-29
  • Identified Points of Contention:
    • Scope Questions: The dispute may focus on the definition of "machine-to-machine function." The court will need to determine if any data transmissions from Samsung's devices, even if not explicitly marketed as M2M, fall within the technical scope of this term as defined in the patent.
    • Technical Questions: The complaint asserts that Samsung’s products do not implement M2M functionality, citing testing documents (Compl. ¶55; Exs. 2-4). A primary technical question is whether any communication protocol used by the accused devices, such as for background updates or system notifications, could be characterized as generating "non-signalling application data" for a "machine-to-machine function" that is then transferred via a "signalling message" as claimed.

V. Key Claim Terms for Construction

For the ’141 Patent

  • The Term: "an Internet Protocol (IP) Multimedia Subsystems (IMS) based service provisioning network"
  • Context and Importance: Samsung's primary non-infringement argument rests on the assertion that its products do not use this specific type of network (Compl. ¶49). The construction of this term will be dispositive, as it defines the entire environment in which the claimed method operates.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the IMS network in general terms as an IP-based communications system developed by 3GPP for mobile and fixed broadband services, including VoIP, based on SIP and SDP protocols (’141 Patent, col. 1:25-34). This could support an argument that any network using these core components fits the definition.
    • Evidence for a Narrower Interpretation: The patent consistently describes the invention in the context of providing "enterprise services" and overcoming the limitations of "business trunking schemes" (’141 Patent, col. 2:1-53). Specific network elements like the P-CSCF, I-CSCF, S-CSCF, and application servers are described as having very particular roles, suggesting the term requires a specific architecture, not just any IP-based network (’141 Patent, Fig. 1; col. 6:64-7:14).

For the ’910 Patent

  • The Term: "machine-to-machine function"
  • Context and Importance: Samsung's non-infringement defense for this patent family (’910, ’072, ’098) is that its products do not implement the claimed "machine-to-machine function" (Compl. ¶55, ¶85, ¶91). Defining the scope of this term is therefore central to the dispute.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The background section broadly describes M2M communications as involving modules that "only rarely require access to a telecommunications network," such as for "reporting status information" (’910 Patent, col. 1:37-44). This could be argued to cover any automated, low-data-rate communication from a device.
    • Evidence for a Narrower Interpretation: The patent repeatedly gives specific examples of M2M applications, such as "electronic reading of e.g. electricity meters," "sensors, meters, coffee machines," and "alarming user data of facilities" (’910 Patent, col. 1:39-42, col. 1:67-2:4). This may suggest that a "machine-to-machine function" is limited to these types of industrial, utility, or monitoring applications, as distinguished from general consumer smartphone communications.

VI. Other Allegations

  • Indirect Infringement: The complaint seeks a judicial declaration that Samsung has not infringed under any theory, including indirectly (contributorily or by inducement) (Compl. ¶48, ¶51). No specific facts related to indirect infringement are alleged beyond this general denial.

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

This declaratory judgment action appears poised to center on fundamental questions of claim scope and technical implementation, driven by Samsung’s assertion that its mass-market consumer products do not practice technologies allegedly aimed at niche or specialized applications.

  • A core issue will be one of definitional scope: can terms like "machine-to-machine function" and "proximity discovery," which are associated with specific telecommunications use cases, be construed broadly enough to read on the general-purpose functionalities of standard-compliant smartphones that do not explicitly support those features?
  • A second key question will be one of architectural equivalence: does the complex, multi-carrier network ecosystem in which Samsung's products operate contain any configuration that meets the specific structural and functional requirements of an "IMS based service provisioning network" that bypasses the P-CSCF as an entry point, as claimed in the ’141 Patent?
  • A central evidentiary question will be one of feature implementation: what technical evidence will be presented to substantiate or rebut Samsung's claim, supported by its referenced testing documents, that its products categorically lack the M2M, D2D, and Proximity Discovery functionalities required by a majority of the patents-in-suit?