DCT

2:23-cv-00409

ASUS Technology Licensing Inc v. Samsung Electronics Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:23-cv-00409, E.D. Tex., 03/11/2024
  • Venue Allegations: Plaintiffs allege venue is proper in the Eastern District of Texas because Samsung has committed acts of infringement in the district and maintains regular and established places of business there, including a "Flagship North Texas Campus" in Plano and a "Samsung Experience Store" in Frisco.
  • Core Dispute: Plaintiffs allege that Defendant’s 4G and 5G-capable mobile devices, tablets, and smartwatches infringe five patents related to fundamental wireless communication technologies.
  • Technical Context: The patents-in-suit address methods for improving efficiency, scheduling, and power management in 4G and 5G wireless networks, technologies that are foundational to modern mobile communications.
  • Key Procedural History: The complaint alleges that Plaintiffs and Defendant engaged in licensing negotiations for over 18 months, beginning no later than January 19, 2022. Plaintiffs assert that they made good faith efforts to license the patents on Fair, Reasonable, and Non-Discriminatory (FRAND) terms, but that negotiations were unsuccessful. The complaint also alleges that Defendant had knowledge of the patents-in-suit on specific dates beginning in January 2022.

Case Timeline

Date Event
2015-06-12 ’658 Patent Priority Date
2016-04-01 ’878 Patent Priority Date
2016-07-28 ’052 Patent Priority Date
2016-08-12 ’759 Patent Priority Date
2018-05-10 ’585 Patent Priority Date
2018-10-16 ’658 Patent Issued
2019-01-22 ’878 Patent Issued
2020-09-22 ’759 Patent Issued
2021-04-20 ’585 Patent Issued
2022-01-19 Plaintiffs allegedly provided notice to Samsung regarding the ’878, ’759, and ’585 Patents
2022-03-29 ’052 Patent Issued
2023-06-22 Plaintiffs allegedly provided notice to Samsung regarding the ’658 Patent
2023-08-22 Plaintiffs allegedly provided notice to Samsung regarding the ’052 Patent
2024-03-11 Complaint Filing Date

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

U.S. Patent No. 10,187,878 - “Method And Apparatus For Improving A Transmission Using A Configured Resource In A Wireless Communication System”

The Invention Explained

  • Problem Addressed: In wireless systems using scheduled uplink resources, a user equipment (UE) might be allocated a transmission slot but have no new data to send. The patent background notes that under prior systems, the UE would still have to transmit padding data, which consumes unnecessary power and network resources, a problem targeted for latency reduction efforts ('878 Patent, col. 5:9-12; col. 2:55-60).
  • The Patented Solution: The invention provides a more efficient method for a UE that has been assigned a configured uplink grant. If the UE has no data to send but does have physical control information (e.g., an acknowledgement for received data), it transmits only that control information on the allocated data channel. If the UE has neither data nor control information to send, it skips the transmission entirely, saving power and freeing up the resource ('878 Patent, Abstract; col. 6:49-65).
  • Technical Importance: This approach improves network efficiency and device battery life by avoiding wasteful transmissions, which is a key objective in the development of 4G (LTE) and 5G wireless standards ('878 Patent, col. 5:35-42).

Key Claims at a Glance

  • The complaint asserts independent claim 11 (Compl. ¶56).
  • Claim 11 requires a method performed by a UE comprising the following elements:
    • An uplink grant is available for the UE in a TTI (Transmission Time Interval), wherein the UE does not have data available for transmission.
    • The UE transmits a physical control information on a data channel according to the uplink grant if the physical control information needs to be transmitted in the TTI.
    • The UE skips the uplink grant if the physical control information does not need to be transmitted in the TTI.
  • The complaint does not explicitly reserve the right to assert other claims but notes the exemplary claim should not be considered limiting (Compl. ¶50).

U.S. Patent No. 11,291,052 - “Method And Apparatus For Improving Msg3 Transmission Of Random Access Procedure In A Wireless Communication System”

The Invention Explained

  • Problem Addressed: The patent background describes the conventional four-step random access procedure (Msg1-Msg4) that a UE uses to establish an initial connection with a network. In this procedure, the transmission time interval (TTI) for the third message (Msg3) is typically fixed, which can lead to inefficient use of radio resources and increased latency (’052 Patent, col. 2:1-15).
  • The Patented Solution: The invention proposes a method where the network, in its response to the UE's initial preamble (Msg2), includes specific TTI information for the subsequent Msg3 transmission. This information specifies parameters such as the TTI duration and a start timing offset, allowing the network to dynamically adjust the Msg3 transmission characteristics for improved efficiency (’052 Patent, Abstract; Fig. 14).
  • Technical Importance: This method introduces flexibility into the critical random access procedure, enabling the network to optimize resource allocation and potentially reduce connection latency for UEs (’052 Patent, col. 1:45-53).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶71).
  • Claim 1 requires a method for performing a random access procedure, comprising the following elements:
    • transmitting, by a UE, a preamble to a network;
    • receiving, by the UE, a Msg2 containing a TTI (Transmission Timer Interval) information of a Msg3, associated with uplink, from the network in response to the preamble;
    • wherein the TTI information, contained in the Msg2, of the Msg3, associated with uplink, includes a TTI duration of the Msg3, associated with uplink, and a start timing offset of the Msg3, associated with uplink; and
    • performing, by the UE, a single (TB) transport block of Msg3 transmission to the network according to the TTI information of the Msg3.
  • The complaint does not explicitly reserve the right to assert other claims but notes the exemplary claim should not be considered limiting (Compl. ¶50).

U.S. Patent No. 10,104,658 - “Method And Apparatus For Delivery Of Control Signaling In A Wireless Communication System”

  • Technology Synopsis: The patent addresses the challenge of transmitting both "common" signals (for multiple UEs) and "UE-specific" signals within the same downlink control region of a subframe without collision. The patented solution involves dedicating a first symbol in the control region for the UE-specific signal while prohibiting the transmission of the common signal in that same symbol, thereby improving scheduling flexibility and preventing interference (’658 Patent, Abstract).
  • Asserted Claims: The complaint asserts at least claim 11 (Compl. ¶87).
  • Accused Features: The complaint alleges that Samsung's 5G products practice the claimed method by organizing downlink and uplink transmissions into radio frames and subframes where UE-specific signals are monitored in a first symbol of a downlink control region and common signals are not (Compl. ¶88-91).

U.S. Patent No. 10,785,759 - “Method And Apparatus For Determining Numerology Bandwidth In A Wireless Communication System”

  • Technology Synopsis: The patent relates to managing communications in 5G systems that use multiple "numerologies" (e.g., different subcarrier spacings) simultaneously. It describes a method where a UE receives information defining a frequency location and bandwidth for a specific numerology and uses this information to derive the resource allocation for its data transmissions on the physical downlink or uplink shared channels (PDSCH/PUSCH) (’759 Patent, Abstract).
  • Asserted Claims: The complaint asserts at least claim 1 (Compl. ¶104).
  • Accused Features: The complaint accuses Samsung's 5G products of infringing by implementing the 5G standard's method for handling different numerologies, wherein the device receives information for a numerology and derives a bandwidth portion and resource allocation based on that information (Compl. ¶105-109).

U.S. Patent No. 10,986,585 - “Method And Apparatus For Triggering Power Headroom Report For Multiple Pathloss Reference In A Wireless Communication System”

  • Technology Synopsis: The patent addresses power control in complex multi-beam wireless systems by defining a method for triggering a Power Headroom Report (PHR). The method involves a UE deriving a first pathloss value from a first reference signal and a second pathloss value from a separate, second reference signal. The UE then calculates the change between these two values and triggers a PHR if the change exceeds a set threshold, enabling more accurate power management (’585 Patent, Abstract).
  • Asserted Claims: The complaint asserts at least claim 1 (Compl. ¶121).
  • Accused Features: Infringement is alleged based on the accused products' implementation of the 5G standard, which allegedly includes deriving pathloss values from first and second pathloss references and triggering a power headroom report based on the change between them (Compl. ¶122-127).

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused instrumentalities as the "Samsung Accused Products," a collective term for Samsung devices that "implement and practice 4G wireless technologies" and/or "5G wireless technologies" (Compl. ¶27-28). This includes, but is not limited to, numerous models in the Galaxy Z, S, A, M, J, Note, Tab, Watch, and XCover product lines (Compl. ¶27-28). The complaint provides an image from Google Maps of a Samsung Electronics America campus in Plano, TX (Compl. p. 5, ¶12).

Functionality and Market Context

The relevant functionality of the accused products is their alleged compatibility with and practice of the 4G and 5G wireless communication standards maintained by 3GPP (Compl. ¶39, ¶56). The complaint alleges that these products infringe by implementing standard-essential methods for managing uplink transmissions, random access procedures, control signaling, multiple numerologies, and power headroom reporting (Compl. ¶56, ¶71, ¶87, ¶104, ¶121). Samsung is alleged to have touted the benefits of these 4G and 5G technologies, such as providing "speed to support rich gaming platforms, HD mobile TV, and video conferencing" (Compl. ¶42). The complaint includes a screenshot of the Samsung Experience Store in Frisco, TX, where customers are invited to "shop our Galaxy of products" (Compl. p. 7, ¶14).

IV. Analysis of Infringement Allegations

'878 Patent Infringement Allegations

Claim Element (from Independent Claim 11) Alleged Infringing Functionality Complaint Citation Patent Citation
An uplink grant is available for the UE in a TTI, wherein the UE does not have data available for transmission. The accused products operate according to 5G standards where a UE can have an uplink grant in a TTI but no data to transmit. The complaint points to 3GPP standards indicating a UE supports skipping UL transmission if no data is available. ¶57 col. 6:49-52
The UE transmits a physical control information on a data channel according to the uplink grant if the physical control information needs to be transmitted in the TTI. The accused products, per 3GPP standards, transmit physical control information (e.g., Channel State Information) on the Physical Uplink Shared Channel (PUSCH) data channel when it needs to be transmitted. ¶58 col. 6:52-56
The UE skips the uplink grant if the physical control information does not need to be transmitted in the TTI. The accused products, when configured with "skipUplinkTxDynamic", are alleged to skip the UL transmission if there is no data and no aperiodic CSI to transmit, as described in 3GPP standards. A screenshot from 3GPP TS 38.306 illustrates the "skipUplinkTxDynamic" parameter (Compl. p. 20, ¶59). ¶59 col. 6:56-59
  • Identified Points of Contention:
    • Scope Questions: A potential point of contention may be whether the term "skips the uplink grant" as used in the patent is synonymous with the functionality provided by the "skipUplinkTxDynamic" feature in the 3GPP standard. A defendant could argue for a technical distinction between the claimed "skipping" and the standard's conditional non-transmission.
    • Technical Questions: The complaint alleges infringement "by virtue of their compatibility with and practice of the 4G and 5G Standards" (Compl. ¶56). A key question for the court will be whether this compatibility requires the accused products to always operate in an infringing manner, or if non-infringing configurations or modes of operation exist.

'052 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
transmitting, by a UE, a preamble to a network; The accused products perform a random access procedure by transmitting a preamble (Msg1) to the network, as defined in the 5G standard. A diagram of the contention-based random access procedure is provided in the complaint (Compl. p. 26, ¶73). ¶72 col. 6:1-3
receiving, by the UE, a Msg2 containing a TTI (Transmission Timer Interval) information of a Msg3, associated with uplink, from the network in response to the preamble; The accused products receive a Random Access Response (Msg2) from the network, which allegedly contains TTI information for the subsequent Msg3 uplink transmission. ¶73 col. 6:3-7
wherein the TTI information... includes a TTI duration... and a start timing offset... The complaint alleges that the UL Grant field within the Msg2 message, as defined by 3GPP standards, contains information corresponding to the claimed TTI duration and start timing offset for the Msg3 transmission. ¶74 col. 6:8-12
performing, by the UE, a single (TB) transport block of Msg3 transmission to the network according to the TTI information of the Msg3. The accused products transmit a single transport block for Msg3 on the PUSCH as scheduled by the RAR UL grant received in Msg2, which allegedly constitutes performing the transmission according to the received TTI information. ¶75 col. 6:12-15
  • Identified Points of Contention:
    • Scope Questions: A central question will be one of definitional scope: does the information contained within the 3GPP-specified "UL Grant" field of a Msg2 message meet the claim limitations of "TTI information" that includes both a "TTI duration" and a "start timing offset"? A defendant may argue that the standard provides resource allocation parameters that are technically distinct from the claimed elements.
    • Technical Questions: What evidence does the complaint provide that the fields within the standard Random Access Response (e.g., "PUSCH time resource allocation" as shown in Table 8.2-1, Compl. p. 27) function as both the claimed "duration" and "offset"? The analysis will likely focus on how these standard-defined fields are interpreted and used by the UE to schedule the Msg3 transmission.

V. Key Claim Terms for Construction

  • For the ’878 Patent:
    • The Term: "skips the uplink grant"
    • Context and Importance: This term is central to the patent's claimed efficiency improvement. Its construction will determine whether the conditional non-transmission feature described in the 3GPP standards ("skipUplinkTxDynamic") falls within the scope of the claim. Practitioners may focus on this term because the defendant could argue that its products' behavior is a different technical operation than "skipping."
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent abstract states, "The method also includes the UE skipping the uplink grant if the physical control information does not need to be transmitted in the TTI," suggesting a general functional outcome rather than a specific mechanism (’878 Patent, Abstract).
      • Evidence for a Narrower Interpretation: The specification frequently discusses this concept in the context of Semi-Persistent Scheduling (SPS) and configured grants, which could support an argument that the term is limited to that specific technical context (’878 Patent, col. 5:9-12).
  • For the ’052 Patent:
    • The Term: "TTI information ... includes a TTI duration ... and a start timing offset"
    • Context and Importance: The infringement allegation relies on mapping the contents of a standard "UL Grant" field to this multi-part claim element. The case may depend on whether the information in the standard is construed as meeting both the "duration" and "offset" limitations.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent's summary describes the invention broadly as receiving a message that "includes a TTI information of Msg3," which allows the UE to perform the transmission "according to the TTI information," suggesting a focus on the functional outcome (’052 Patent, Abstract).
      • Evidence for a Narrower Interpretation: Figure 9 of the patent depicts a "TTI information" block as a distinct entity within a message. A defendant may argue that this depiction limits the term to a discrete information element explicitly labeled as such, rather than information that is merely derivable from a collection of other fields, such as those in a standard UL Grant.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement based on Samsung's affirmative acts of advertising its products' 4G/5G capabilities and providing instructions, manuals, and technical support that encourage and teach customers to use the accused standard-compliant functionalities (Compl. ¶61, ¶77). Contributory infringement is alleged on the basis that the accused components are material to the inventions, are not staple articles of commerce with substantial non-infringing uses, and are known by Samsung to be especially adapted for infringement (Compl. ¶62, ¶78).
  • Willful Infringement: The complaint alleges willful infringement based on Samsung's alleged knowledge of the patents-in-suit and their infringement since at least January 19, 2022, for the ’878, ’759, and ’585 patents; June 22, 2023, for the ’658 patent; and August 22, 2023, for the ’052 patent, when Plaintiffs allegedly provided notice (Compl. ¶49, ¶65, ¶81, ¶98, ¶115).

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

  • A core issue will be one of standards-compliance versus claim scope: Does the accused products' implementation of the 4G and 5G standards necessarily perform every limitation of the asserted claims? The dispute will likely focus on whether the standards mandate the infringing functionality or merely permit it as one of several configurable options.
  • A key legal question will be one of claim construction: Can patent terms such as "skips the uplink grant" and "TTI information" be construed to encompass the specific terminology and data structures (e.g., "skipUplinkTxDynamic", "UL Grant" fields) defined in the 3GPP technical specifications, or is there a fundamental mismatch?
  • Given that the patents are alleged to be essential to the 4G/5G standards, a critical issue beyond direct infringement will concern FRAND obligations: The case will raise questions about whether Plaintiffs met their obligations to offer a license on fair, reasonable, and non-discriminatory terms, which could significantly impact the availability of injunctive relief and the calculation of potential damages.