DCT

2:21-cv-00033

Evolved Wireless LLC v. Samsung Electronics Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:21-cv-00033, E.D. Tex., 05/13/2022
  • Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant Samsung Electronics America, Inc. maintains a permanent physical presence and corporate offices within the district, and because Defendant Samsung Electronics Co., Ltd. is a foreign entity.
  • Core Dispute: Plaintiff alleges that Defendant’s LTE-compliant cellular communication devices, including phones, tablets, and smartwatches, infringe two patents related to methods for managing cellular handovers between base stations.
  • Technical Context: The patents address managing the "handover" process in LTE networks, a fundamental procedure that allows mobile devices to maintain connectivity while moving between the coverage areas of different cell towers.
  • Key Procedural History: The case was previously stayed pending a parallel investigation at the International Trade Commission (ITC), which was terminated by agreement of the parties. Defendant Samsung previously filed Inter Partes Review (IPR) petitions against both asserted patents at the Patent Trial and Appeal Board (PTAB). The PTAB denied institution for both petitions, finding that Samsung had not shown a reasonable likelihood of prevailing on its invalidity arguments, which allows the patents to proceed in district court with their presumption of validity intact.

Case Timeline

Date Event
2005-10-31 Priority Date for ’679 and ’326 Patents
2018-01-16 U.S. Patent No. RE46,679 Issues
2018-09-21 Evolved sends notice letter to Samsung regarding the ’679 Patent
2020-11-24 U.S. Patent No. RE48,326 Issues
2021-02-01 Original Complaint Filed
2021-03-10 Case stayed pending ITC Investigation
2021-11-29 PTAB denies institution of Samsung's IPR petitions against both patents
2022-02-22 ITC Investigation Terminated
2022-05-04 Court lifts stay
2022-05-13 First Amended Complaint Filed

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

U.S. Reissue Patent No. RE46,679 - “Method of Transmitting and Receiving Radio Access Information in a Wireless Mobile Communications System”

The Invention Explained

  • Problem Addressed: In prior art LTE handover procedures, a mobile device moving to a new cell tower (target base station) would select a random-access preamble from a common pool to initiate contact (Compl. ¶48). When multiple devices in the same area attempted handovers simultaneously, they could select the same preamble, causing a "collision" that could lead to service interruptions and reduced quality of service (Compl. ¶48).
  • The Patented Solution: The invention proposes a more efficient "non-contention based" handover method where the network proactively manages the process (’679 Patent, Abstract). The target base station assigns a device-specific, or "dedicated," preamble to the mobile device and communicates this information via the original (source) base station before the handover begins (Compl. ¶49). By using this pre-assigned, dedicated preamble, the mobile device avoids the risk of collision with other devices, thereby reducing processing time and increasing the speed and efficiency of the handover (Compl. ¶49; ’679 Patent, col. 5:6-10).
  • Technical Importance: This approach aims to improve the reliability and speed of a fundamental operation in mobile networks, which is critical for maintaining seamless connectivity for applications like voice calls and data streaming as users move through a cellular network (Compl. ¶48).

Key Claims at a Glance

  • The complaint asserts independent claim 6 (Compl. ¶52).
  • Essential elements of independent claim 6 include:
    • A method for a terminal to perform a random access procedure.
    • Receiving preamble information generated by the network via dedicated signaling.
    • Transmitting a dedicated preamble on a random access channel (RACH).
    • Receiving a random access response in response to the dedicated preamble.
    • Transmitting uplink data using an uplink grant included in the response.
  • The complaint reserves the right to assert additional claims, including dependent claim 8 (Compl. ¶52; Compl. p. 12, fn. 1).

U.S. Reissue Patent No. RE48,326 - “Method of Transmitting and Receiving Radio Access Information in a Wireless Mobile Communications System”

The Invention Explained

  • Problem Addressed: The ’326 Patent shares a common specification with the ’679 Patent and addresses the same technical problem of preamble collisions during random-access handovers in LTE networks (Compl. ¶47-48).
  • The Patented Solution: The ’326 Patent claims a mobile terminal (a system) configured to execute the non-contention based handover method described in the ’679 Patent (’326 Patent, col. 18:16-53). It claims a terminal comprising a transceiver, a memory, and a processor configured to receive dedicated preamble information from the network and use that information to conduct a collision-free handover with a target base station (Compl. ¶49).
  • Technical Importance: By claiming the physical device configured to perform the patented method, the patent provides a different angle of protection for the same core inventive concept, targeting the structure of the mobile terminal itself rather than just the method of operation (Compl. ¶47).

Key Claims at a Glance

  • The complaint asserts independent claim 18 (Compl. ¶52).
  • Essential elements of independent claim 18 include:
    • A mobile terminal comprising a transceiver, memory, and a processor.
    • The processor is configured to receive preamble information (a dedicated preamble or its index) generated by the network via dedicated signaling.
    • The processor is configured to transmit the dedicated preamble on a random access channel (RACH).
    • The processor is configured to receive a random access response.
    • The processor is configured to transmit uplink data using a grant included in the response.
  • The complaint reserves the right to assert additional claims, including dependent claims 19 and 20 (Compl. ¶52; Compl. p. 12, fn. 1).

III. The Accused Instrumentality

Product Identification

The complaint accuses a wide range of Samsung's "LTE-compliant cellular communication devices, including cellular phones, tablets, and smartwatches" (Compl. ¶53). An extensive, non-exhaustive list is provided, including various models from the Galaxy A, S, Note, Fold, and Tab series, among others (Compl. pp. 12-19). The Samsung Galaxy S10 is identified as a Representative Product (Compl. ¶54).

Functionality and Market Context

The accused functionality is the devices' implementation of the LTE standard for cellular communication (Compl. ¶54). The complaint alleges that in order to be LTE-compliant, the Accused Products must perform handover procedures in a way that aligns with the methods claimed in the asserted patents (Compl. ¶54). The devices are mass-market consumer electronics that rely on LTE connectivity for their core functions (Compl. ¶29, ¶33).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

The complaint references claim charts in Exhibits 3 and 4, which were not provided with the complaint document (Compl. ¶57, ¶67). The narrative infringement theory is summarized below.

’679 Patent and ’326 Patent Infringement Allegations

The complaint's core infringement theory is that the Accused Products, by virtue of their compliance with the 3GPP LTE telecommunications standard, necessarily practice the patented handover methods (Compl. ¶54). The complaint asserts that the patents are essential to implementing the LTE standard and that the Accused Products have common designs and functionality that meet the claim limitations (Compl. ¶37, ¶54). The infringement argument appears to rest on the premise that the standardized handover procedures in LTE networks require the receiving of network-generated preamble information and the use of a dedicated preamble to access a target base station, as recited in the asserted claims (Compl. ¶49, ¶54). The infringement allegations apply to both the method claims of the ’679 Patent and the corresponding apparatus claims of the ’326 Patent.

Identified Points of Contention

  • Scope Questions: The case may focus on whether compliance with the relevant LTE standard specifications constitutes infringement of every element of the asserted claims. A potential point of contention is whether the LTE standard mandates the use of the claimed method for handovers, or merely provides it as one of several options available to a device manufacturer.
  • Technical Questions: A central technical question will be how Samsung's Accused Products actually implement the LTE handover procedure. The dispute may turn on whether the "preamble information" received and the "dedicated preamble" transmitted by Samsung's devices operate in the specific manner required by the claim language, as interpreted in light of the patent specification.

V. Key Claim Terms for Construction

  • The Term: "preamble information generated by the network" (from claim 6 of ’679 Patent and claim 18 of ’326 Patent).
  • Context and Importance: The definition of this term is critical because it addresses the origin and nature of the information used to select the collision-free preamble. The dispute will likely center on how directly the "network" must "generate" this information for the terminal, versus the terminal selecting from a set of options provided by the network. Practitioners may focus on whether the network assigning a specific preamble index satisfies this limitation, or if a more direct form of generation is required.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification states that "the network transmits in advance, the radio access information" to the terminal, suggesting that the network's role is to provide the necessary data, which could be interpreted broadly to include providing a set of choices or an index (’679 Patent, Abstract).
    • Evidence for a Narrower Interpretation: The description of the invention emphasizes that the handover command from the network "may include information of the signature and the preamble which is to be used," suggesting a direct assignment from the network to a specific terminal (’679 Patent, col. 6:1-3). This could support an interpretation requiring the network to select and provide the specific preamble itself, not just a set of options.

VI. Other Allegations

Indirect Infringement

The complaint alleges that Samsung induces infringement by "providing infringing products ... to consumers" and "providing infringing products to retailers and inducing those retailers to sell" them (Compl. ¶58, ¶68). The inducement is allegedly based on knowledge and the specific intent that the end-users and retailers will use and sell the products in their normal, infringing manner (Compl. ¶58, ¶68).

Willful Infringement

The complaint alleges willful infringement based on Samsung's purported knowledge of the patents prior to the lawsuit (Compl. ¶61, ¶71). This knowledge is allegedly established by Samsung's general awareness of Evolved's portfolio since at least 2014 and, more specifically, by a notice letter sent to Samsung on September 21, 2018, which identified the ’679 Patent family (Compl. ¶59-60, ¶69-70). The complaint also notes that the PTAB denied Samsung's IPR petitions, which could be argued to further support objective recklessness post-institution denial (Compl. ¶63-64, ¶73-74).

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

  • A core issue will be one of standard-essentiality and infringement: Does compliance with the 3GPP LTE standard, as implemented in the accused Samsung devices, necessarily meet every limitation of the asserted claims? The outcome may depend on whether the standard mandates the specific, claimed handover procedure or merely makes it optional.
  • A key legal question will be one of claim construction: How broadly will the court construe the term "preamble information generated by the network"? The case may turn on whether the network providing an index to a pre-defined preamble set is equivalent to "generating" the information, as required by the claims.
  • A significant damages question will relate to willfulness: Given the allegations of a specific pre-suit notice letter and the subsequent denial of Samsung's IPR petitions by the PTAB, a central issue for trial will be whether Samsung acted with the objective recklessness required for a finding of willful infringement and potential enhanced damages.