DCT
2:21-cv-00562
Samsung Electronics America Inc v. Grecia
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Samsung Electronics America, Inc. (New York) and Samsung Electronics Co., Ltd. (Republic of Korea)
- Defendant: William Grecia (Pennsylvania)
- Plaintiff’s Counsel: Baker Botts L.L.P.
- Case Identification: 2:21-cv-00562, E.D. Pa., 02/05/2021
- Venue Allegations: Venue is alleged to be proper in the Eastern District of Pennsylvania because the defendant, William Grecia, resides in the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its software products do not infringe Defendant’s patent related to digital rights management and that the patent is invalid, following repeated threats of litigation from the Defendant.
- Technical Context: The technology concerns systems for controlling access to encrypted digital media, such as movies or software, by linking access rights to a user's online identity rather than a specific physical device.
- Key Procedural History: The complaint details an extensive history of litigation initiated by the Defendant against the Plaintiff and its customers over the patent-in-suit and two related patents from the same family (U.S. Patent Nos. 8,533,860 and 8,887,308). In prior, separate litigations, claims from both related patents were found invalid by district courts for indefiniteness and for being directed to patent-ineligible subject matter, respectively, with both judgments affirmed by the Federal Circuit. The complaint also notes that certain claims of the patent-in-suit were found invalid as indefinite in a separate case involving a different defendant.
Case Timeline
| Date | Event |
|---|---|
| 2010-03-21 | '555 Patent Priority Date |
| 2013-03-19 | '555 Patent Issue Date |
| 2015-03-24 | Grecia files first suit against Samsung (related '308 patent) |
| 2016-12-01 | Grecia files second suit against Samsung (related '860 patent) |
| 2018-09-08 | District court finds asserted claims of '860 patent invalid as indefinite |
| 2018-09-08 | District court finds claim 12 of '555 patent invalid as indefinite (in Grecia v. Mastercard) |
| 2018-09-17 | Grecia sends claim charts for '555 patent to Samsung |
| 2018-11-09 | Grecia sues Samsung's customers, alleging infringement of '555 patent |
| 2019-04-10 | Grecia voluntarily dismisses suits against Samsung's customers |
| 2019-04-11 | Grecia files third suit against Samsung (related '308 patent) |
| 2019-08-20 | Federal Circuit affirms invalidity of '860 patent claims |
| 2020-03-13 | District court finds asserted claim of '308 patent invalid as patent-ineligible |
| 2020-03-31 | Grecia sends claim chart for '555 patent to Samsung regarding mPOS app |
| 2021-01-07 | Federal Circuit affirms invalidity of '308 patent claim |
| 2021-01-15 | Grecia sends claim chart for '555 patent to Samsung regarding Knox software |
| 2021-02-01 | Grecia sends claim chart for '555 patent to Samsung regarding Samsung Pay |
| 2021-02-05 | Samsung files Complaint for Declaratory Judgment |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,402,555 - "Personalized digital media access system (PDMAS)"
- Patent Identification: U.S. Patent No. 8,402,555, "Personalized digital media access system (PDMAS)," issued March 19, 2013.
The Invention Explained
- Problem Addressed: The patent describes the limitations of traditional Digital Rights Management (DRM) systems, which often lock digital media to specific devices, limit a consumer's ability to share content ("fair use"), and risk loss of access if a DRM provider goes out of business (’555 Patent, col. 1:26-2:1).
- The Patented Solution: The invention proposes a system to tie access rights to a user's verified online identity rather than a physical device. The system receives a request to access encrypted media, authenticates the user through a "verified web service" (like a social media platform) to obtain an "electronic identification reference," and then "brands" the media's metadata by writing the user's verification token and electronic ID into it (’555 Patent, Abstract; col. 3:11-45). This allows for more flexible and persistent access control across multiple devices.
- Technical Importance: The approach sought to address consumer frustration with restrictive DRM by creating a more portable and user-centric model for digital content ownership, leveraging the growth of web-based identity services (’555 Patent, col. 2:2-9).
Key Claims at a Glance
- The complaint identifies independent claims 1 and 15 as the primary claims at issue, noting that independent claim 12 was previously found invalid (Compl. ¶24).
- Independent Claim 1 (Method): A method for monitoring access to encrypted digital media, comprising the steps of:
- receiving an encrypted digital media access branding request comprising a membership verification token
- authenticating the token
- establishing a connection with a communications console that is a combination of a GUI and an API protocol related to a verified web service
- requesting an electronic identification reference (a verified web service account identifier)
- receiving the electronic identification reference
- branding metadata of the encrypted digital media by writing the token and the electronic identification reference into the metadata
- Independent Claim 15 (Computer Program Product): A non-transitory computer usable medium with code for performing steps substantially identical to those listed in claim 1 (Compl. ¶31).
- The complaint notes that the right to address dependent claims is reserved (Compl. ¶24).
III. The Accused Instrumentality
Product Identification
- The complaint identifies "Samsung's Knox software" and "Samsung Pay software" as the Accused Products (Compl. ¶21).
Functionality and Market Context
- Samsung Knox: Described as a mobile security software platform. The complaint suggests Grecia's infringement theory centers on an administrator's use of a username and password to access the Knox program (Compl. ¶30).
- Samsung Pay: Described as a mobile payment software. The complaint indicates Grecia's theory involves a user entering a credit card number, which is alleged to be a "branding request" (Compl. ¶30).
- The complaint asserts that these products are commercially important to Samsung's business and that the Defendant's allegations have cast uncertainty over them (Compl. ¶22).
IV. Analysis of Infringement Allegations
As this is a complaint for declaratory judgment of non-infringement, the "Alleged Infringing Functionality" column reflects Samsung's characterization of Grecia's infringement theory and Samsung's arguments for why that theory fails.
No probative visual evidence provided in complaint.
'555 Patent Infringement Allegations
| Claim Element (from Independent Claim 15) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a computer program product ... for monitoring access to an encrypted digital media | Grecia allegedly identifies the "encrypted digital media" as "Knox Enabled Apps" or the "accused Samsung Pay program itself," which the complaint argues is nonsensical. | ¶29, ¶30 | col. 16:50-54 |
| receiving an encrypted digital media access branding request ... the branding request being a read or write request of metadata of the encrypted digital media | The complaint argues the Accused Products do not receive such requests. It contends that entering a Knox administrator's password or a user's credit card number in Samsung Pay is not a "read or write request of metadata" but is simply information required to access or use the service. | ¶30 | col. 16:55-62 |
| establishing connection with the at least one communications console wherein the communications console is a combination of a graphic user interface (GUI) and an Application Programmable Interface (API) protocol wherein the API is related to a verified web service | The complaint does not provide sufficient detail for analysis of this element. | col. 16:63-68 | |
| branding metadata of the encrypted digital media by writing the membership verification token and the electronic identification reference into the metadata | The complaint asserts the Accused Products "do not brand either a verification token or an electronic identification reference" into any encrypted digital media. It states that Grecia's claim charts fail to identify any such branding of the claimed metadata. | ¶29 | col. 17:7-11 |
- Identified Points of Contention:
- Scope Questions: A central dispute concerns the definition of "encrypted digital media." The complaint questions whether enterprise software applications (Knox) or payment platforms (Samsung Pay) can be considered "encrypted digital media" in the context of the patent, which appears focused on content like audio or video files.
- Technical Questions: The analysis will turn on the meaning of "branding metadata." The complaint raises the question of whether the ordinary operation of the accused software—such as saving user credentials or account information for access—constitutes the specific act of "writing the membership verification token and the electronic identification reference into the metadata" of a separate media asset, as required by the claims.
V. Key Claim Terms for Construction
The Term: "branding metadata"
Context and Importance: This term is the functional core of the asserted claims. The dispute hinges on whether any data-writing operation performed by the Accused Products constitutes "branding." Samsung's non-infringement position is that its products do not perform this specific claimed function (Compl. ¶29).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "branding" itself is not explicitly defined, which may support an argument that it should be given its plain and ordinary meaning, potentially encompassing any act of associating identifying information with a file or data object.
- Evidence for a Narrower Interpretation: The claim itself defines the act of branding as "writing the membership verification token and the electronic identification reference into the metadata" (’555 Patent, col. 17:9-11). The specification’s repeated linkage of this action to managing access rights for "media assets" may support a narrower construction limited to that specific purpose and context (’555 Patent, col. 3:18-22).
The Term: "encrypted digital media"
Context and Importance: The identity of the "encrypted digital media" is a prerequisite for infringement. The complaint alleges that Grecia's theories identify the accused software applications themselves as the "media" (Compl. ¶29-30). The viability of the infringement case depends on whether this interpretation is plausible.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims use the general term "digital media" without express limitation. The specification also refers to "other computer based apparatus in which processed data is facilitated," which could be argued to cover software applications (’555 Patent, col. 6:53-55).
- Evidence for a Narrower Interpretation: The specification consistently provides examples of "digital media" as content such as "video file, audio file, container format, document, [and] metadata as part of video game software" (’555 Patent, col. 6:51-54). The background section focuses on consumer media like music and video delivered via CD and DVD (’555 Patent, col. 1:55-61). This context may support a narrower construction limited to user-facing content files, rather than the software that plays or manages them.
VI. Other Allegations
- Indirect Infringement: The complaint denies indirect infringement on the basis that there is no underlying direct infringement by any user of the Accused Products. It further alleges that Samsung lacks the specific intent required for induced infringement and the knowledge or intent for contributory infringement (Compl. ¶32-33).
- Willful Infringement: Willfulness is not alleged by Samsung, as it is the plaintiff. However, the complaint extensively details Grecia's history of "aggressive litigation strategy" and "recent threats" as the basis for establishing an actual controversy and as potential grounds for finding the case exceptional to recover attorneys' fees (Compl. ¶¶3, 21, Prayer for Relief ¶f).
VII. Analyst’s Conclusion: Key Questions for the Case
Definitional Scope: A primary issue will be whether the claim terms "branding metadata" and "encrypted digital media", which are rooted in the patent's context of user-centric content management (e.g., music, video), can be construed to read on the core functions of enterprise security software (Knox) and a mobile payment platform (Samsung Pay).
Functional Mismatch: A key evidentiary question will be one of technical operation. Does the act of storing user credentials or payment information within the Samsung Pay or Knox systems perform the specific function of "branding metadata... by writing the membership verification token and the electronic identification reference" as claimed, or is there a fundamental mismatch between the accused functionality and the claimed invention?
Impact of Litigation History: The extensive procedural history, including prior judicial findings that related patents and even a claim of the '555 patent itself are invalid, will be a significant factor. A central question is whether the invalidity theories successfully asserted against those related claims—particularly indefiniteness under § 112 and patent ineligibility under § 101—will apply with equal force to the remaining claims of the '555 patent.