DCT

2:23-cv-00322

Papst Licensing GmbH & Co KG v. Samsung Electronics Co Ltd

I. Executive Summary and Procedural Information

Parties & Counsel:
- Plaintiff: Papst Licensing GmbH & Co. KG (Germany)
- Defendant: Samsung Electronics Co., Ltd. (Republic of Korea) and Samsung Electronics America, Inc. (New York)
- Plaintiff’s Counsel: Dinovo Price LLP; Ward, Smith & Hill, PLLC
Case Identification: 2:23-cv-00322, E.D. Tex., 07/12/2023
Venue Allegations: Venue is alleged against the Korean parent company, Samsung Electronics Co., Ltd., on the basis that a non-U.S. resident may be sued in any judicial district. Venue is alleged against the U.S. subsidiary, Samsung Electronics America, Inc., on the basis that it has regular and established places of business within the Eastern District of Texas.
Core Dispute: Plaintiff alleges that the "Floating Camera Button Feature" in Defendant's smartphones and other devices infringes two patents related to a movable user interface shutter button for a camera.
Technical Context: The technology addresses the ergonomics of operating a camera on a touchscreen device by allowing the on-screen shutter button to be repositioned, aiming to reduce camera shake and improve user comfort, particularly when taking self-portraits.
Key Procedural History: The complaint alleges that Defendant had pre-suit knowledge of the '962 Patent no later than March 8, 2019, because Defendant's own patent applications cited the '962 Patent as material prior art. This allegation forms the primary basis for the claim of willful infringement.

Case Timeline

Date	Event
2016-03-04	Priority Date for ’962 and ’205 Patents
2018-01-16	U.S. Patent 9,871,962 Issues
2018-03-16	Samsung Galaxy S9 (Exemplary Infringing Product) Released
2019-03-08	Alleged Date of Samsung's Knowledge of '962 Patent
2020-01-21	U.S. Patent 10,542,205 Issues
2022-02-25	Samsung Galaxy S22 (Exemplary Infringing Product) Released
2023-07-12	Complaint Filed

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

U.S. Patent No. 9,871,962 - "Movable User Interface Shutter Button for Camera," issued January 16, 2018

The Invention Explained

Problem Addressed: The patent's background section identifies the ergonomic difficulty of using a camera on a touchscreen device, especially a front-facing camera, when the shutter button is in a fixed location. This forces a user to "hold the camera in an awkward manner" and "severely crimp or bend her finger or thumb to reach the shutter button," which increases the likelihood of camera shake, distorted images, or dropping the device (’962 Patent, col. 1:30-45).
The Patented Solution: The invention is a movable shutter button within a camera application's user interface. The user can reposition the button from a default location to a more desirable location on the screen using a touch gesture, such as a drag (’962 Patent, Abstract). This allows the user to hold the device securely and position the button for comfortable access with a thumb or finger, thereby solving the problems associated with a fixed button (’962 Patent, col. 2:62-65). The patent describes embodiments where a second, movable shutter button is created in response to a gesture to move the first button (’962 Patent, col. 2:65-col. 3:4).
Technical Importance: This approach aimed to improve the usability and stability of smartphone photography at a time when larger screens and front-facing "selfie" cameras were becoming ubiquitous, making single-handed operation increasingly challenging (’962 Patent, col. 1:35-42).

Key Claims at a Glance

The complaint asserts independent claim 32 (Compl. ¶34).
The essential elements of Claim 32 are:
- An electronic device with front and rear cameras, a touch-sensitive display, memory, and processors.
- The processor is configured to perform operations including:
  - displaying a first shutter button at a first location;
  - detecting a first touch event on the first shutter button;
  - determining the touch event is an input to move the button to a second location;
  - creating a second shutter button and moving it to the second location;
  - while both buttons are displayed, displaying a camera image with the second shutter button overlaid;
  - detecting a second touch event on the second shutter button; and
  - capturing an image in response to determining the second touch event is an input to activate the button.
The complaint reserves the right to assert other claims (Compl. ¶35).

U.S. Patent No. 10,542,205 - "Movable User Interface Shutter Button for Camera," issued January 21, 2020

The Invention Explained

Problem Addressed: As a continuation of the application for the ’962 Patent, the ’205 Patent addresses the same technical problem of ergonomic difficulty and camera instability caused by fixed-location shutter buttons on touchscreen devices (’205 Patent, col. 1:21-48).
The Patented Solution: The ’205 Patent also describes a movable shutter button. The specification, shared with the ’962 Patent, discloses multiple embodiments, including one where the application initially displays two shutter buttons, one of which is movable (’205 Patent, col. 3:25-39). A user can then engage with the movable button via touch gestures to reposition it on the screen for easier access and activation (’205 Patent, col. 3:40-51).
Technical Importance: This patent extends the protection of the core invention to cover different implementation methods, such as starting with two distinct buttons from the outset rather than creating a second button dynamically.

Key Claims at a Glance

The complaint asserts independent claim 4 (Compl. ¶48).
The essential elements of Claim 4 are:
- An electronic device with front and rear cameras, a touch-sensitive display, memory, and processors.
- The processor is configured to perform operations including:
  - displaying a first shutter button at a first location;
  - displaying a second shutter button;
  - receiving a drag event at the second shutter button;
  - moving the second shutter button to a user-selected second location;
  - while both buttons are displayed, displaying a camera image with the second shutter button overlaid;
  - receiving a touch event at the second shutter button; and
  - capturing an image in response.
The complaint reserves the right to assert other claims (Compl. ¶49).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are Samsung products, including smartphones, tablets, and media players, that contain the "Floating Camera Button Feature" (Compl. ¶18). The Samsung Galaxy S9 and Samsung Galaxy S22 are identified as "Exemplary Infringing Products" (Compl. ¶19).

Functionality and Market Context

The accused functionality is a software feature within the camera application that allows a user to add an extra, movable shutter button to the screen (Compl. ¶¶18, 27). According to the complaint, a user enables this feature in the camera's settings menu (Compl. ¶¶23-24). A screenshot from Samsung's support website shows instructions to "Activate Floating Camera button switch" (Compl. ¶24, p. 6).
Once enabled, an additional shutter button appears on the camera's preview screen, which the user can then drag to any location for convenience (Compl. ¶¶25-26). A screenshot from a Samsung support page for the Galaxy S9 shows the movable button being dragged across the screen with the text, "You can place this button anywhere on the screen according to your convenience" (Compl. ¶26, p. 8).
The complaint alleges that tapping this movable button captures an image (Compl. ¶38).

IV. Analysis of Infringement Allegations

’962 Patent Infringement Allegations

Claim Element (from Independent Claim 32)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
...displaying a first shutter button of a camera application at a first location on the touch-sensitive display;	The accused products' camera application displays a standard shutter button at a first location on the screen.	¶37	col. 11:1-3
...determining that the first touch event indicates an input to move the first shutter button to a user selected second location on the touch-screen display;	The device detects a touch and drag gesture on the display that indicates movement of the shutter button.	¶37	col. 11:18-21
...creating a second shutter button and moving the second shutter button of the camera application to the second location;	The device provides a "Floating Camera Button Feature" that "adds an extra camera button" which can be moved anywhere on the screen.	¶¶18, 27	col. 12:15-19
...while the second shutter button is displayed at the second location and the first shutter button is displayed at the first location, displaying an image received from the camera...	The device displays both the original and the floating shutter button over the live camera preview image. The screenshot in the complaint shows this state.	¶37	col. 12:20-24
...while the second shutter button is displayed at the second location... detecting a second touch event to the second shutter button;	The device detects a user's touch (e.g., a tap) on the floating shutter button after it has been moved.	¶38	col. 12:28-31
...responsive to determining that the second touch event indicates an input to activate the second shutter button, capturing at least one image with the camera.	The device captures an image in response to the user tapping the floating shutter button. A video still in the complaint depicts this action.	¶38, p. 14	col. 12:32-35

Identified Points of Contention

Scope Questions: A central question for the '962 Patent infringement theory may be the interpretation of "creating a second shutter button." The claim requires this creation to be responsive to the "first touch event" that indicates an input to move the first button. The complaint's evidence suggests the user enables the feature in a settings menu, which then "add[s] an extra shutter button" (Compl. ¶¶24, 27). This raises the question of whether enabling a feature in a settings menu can be considered the same as the claim's requirement for creation to be directly responsive to a move gesture itself.
Technical Questions: What evidence demonstrates that the gesture to position the floating button originates on the "first shutter button" as required by claim 32? The complaint alleges the user activates the feature and then a second button appears, which is then moved. This sequence appears to differ from the claim, which recites detecting a move input on the first button, which then leads to the creation and movement of the second button.

’205 Patent Infringement Allegations

Claim Element (from Independent Claim 4)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
...displaying a first shutter button at a first location on the touch-sensitive display;	The accused products' camera application displays a standard shutter button.	¶52	col. 17:15-17
...displaying a second shutter button on the touch-sensitive display;	After enabling the feature in settings, the device displays an "extra camera button" (the floating button).	¶¶27, 52	col. 17:18-19
...while the second shutter button is displayed, receiving a drag event at the second shutter button on the touch-sensitive display;	The user performs a drag gesture on the floating shutter button to reposition it.	¶52	col. 17:20-22
...moving the second shutter button to a user selected second location at an end of the drag event;	The floating button is moved to a new position on the screen based on the user's drag gesture. A screenshot shows the button in a new, user-selected location.	¶52, p. 20	col. 17:23-25
...while the second shutter button is displayed at the second location and the first shutter button is displayed at the first location, displaying an image received from the camera...	The device displays both the original and the floating shutter button over the live camera image.	¶52	col. 17:26-31
...while the second shutter button is displayed at the second location... receiving a touch event at the second shutter button; and capturing at least one image... in response to the second touch event.	The device captures a photo when the user taps the floating button at its new location.	¶53	col. 17:32-37

Identified Points of Contention

Scope Questions: The infringement theory for the '205 Patent appears to map more closely to the complaint's factual allegations than the theory for the '962 Patent. However, a potential dispute may arise over the terms "first shutter button" and "second shutter button." The parties may contest which physical button on the screen corresponds to which claimed button and whether the distinction is meaningful for infringement.
Technical Questions: Does the accused feature always result in two simultaneously displayed shutter buttons, as required by the claim? The claim recites displaying a "first" and "second" button. It will be a factual question whether the original shutter button remains on screen after the floating button is enabled and moved. The complaint's visual evidence suggests it does (Compl. ¶37, p. 14).

V. Key Claim Terms for Construction

The Term: "creating a second shutter button" (from '962 Patent, Claim 32)
Context and Importance: This term is critical to the infringement analysis of the '962 Patent. Its construction will determine whether the accused feature—which appears to be enabled via a settings menu—can meet a claim limitation that ties the "creating" act to a specific user gesture for moving a button. Practitioners may focus on this term because the complaint's own evidence suggests a sequence (Settings toggle -> button appears -> button is moved) that may not align with the claim's sequence (Move gesture on button 1 -> button 2 is created and moved).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's overall objective is to provide a movable button for user convenience. A party might argue that "creating" should be read broadly to mean making a button available for use, regardless of the specific triggering mechanism.
- Evidence for a Narrower Interpretation: The claim language itself creates a direct causal link: "responsive to determining that the first touch event indicates an input to move... creating a second shutter button." The specification reinforces this, stating, "upon determining that the touch input is an input to move rather than an input to activate the shutter, a second shutter button is created" (’962 Patent, col. 2:65-col. 3:1). This language may support a narrower construction where the creation is a direct and immediate result of the move gesture itself, not a separate preliminary step.

VI. Other Allegations

Indirect Infringement: The complaint alleges induced infringement, stating that Samsung provides its customers with the infringing products and instructs them on how to use the "Floating Camera Button Feature" through its support websites, tutorials, and user guides (Compl. ¶¶ 21-27, 41, 56). The complaint provides specific URLs and screenshots of these instructions as evidence of Samsung's intent to encourage the infringing acts (Compl. ¶¶ 22, 26).
Willful Infringement: The complaint alleges willful infringement based on both pre-suit and post-suit knowledge. The primary allegation for pre-suit knowledge is that Samsung learned of the '962 Patent no later than March 8, 2019, because Samsung itself cited the patent as material prior art during the prosecution of its own patents (Compl. ¶¶ 13-15). In the alternative, the complaint alleges willfulness from the date of service of the complaint (Compl. ¶¶ 17, 58).

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

A core issue will be one of operational sequence and causation: Can the act of enabling the "Floating Camera Button" in a separate settings menu satisfy the '962 Patent's requirement of "creating a second shutter button" responsive to a gesture to move the first button? The court will need to determine if there is a factual and legal mismatch between the sequence described in the claim and the sequence of operations in the accused products.
A second key question will be one of claim element identity: How do the "first shutter button" and "second shutter button" of the claims map onto the standard and floating buttons in the accused feature? The viability of the infringement allegations for both patents rests on a consistent interpretation of these roles, particularly since the claims assign the triggering move/drag gestures to different buttons ('962 Claim 32 vs. '205 Claim 4).
A significant evidentiary question for willfulness will be the impact of pre-suit knowledge: The allegation that Samsung cited the '962 Patent in its own prosecution provides a specific factual basis for pre-suit knowledge. The central question will be whether this knowledge, combined with Samsung's subsequent conduct, rises to the level of egregious behavior required for an enhancement of damages under 35 U.S.C. § 284.