DCT

2:23-cv-00427

Empire Technology Development LLC v. Samsung Electronics Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:23-cv-00427, E.D. Tex., 09/18/2023
  • Venue Allegations: Venue is alleged to be proper based on Defendant Samsung Electronics Co., LTD. being a foreign corporation and Defendant Samsung Electronics America, Inc. having regular and established places of business in the district, including a "flagship" campus in Plano and a retail store in Frisco, Texas.
  • Core Dispute: Plaintiff alleges that Defendant’s 5G-compatible smartphones, including the Galaxy S20, S21, S22, and S23 series, infringe patents related to adaptive power management and signal decoding in wireless communications.
  • Technical Context: The technologies at issue relate to fundamental aspects of modern cellular communication standards like 5G, focusing on optimizing device battery life and ensuring reliable high-speed data transmission.
  • Key Procedural History: The complaint states the patents-in-suit originated from research at the University of Texas and were exclusively licensed to Plaintiff. To support its willfulness claim, Plaintiff alleges that Defendant Samsung had pre-suit knowledge of the ’120 Patent because it was cited as a reference by the USPTO examiner during the prosecution of a patent issued to Samsung in 2016.

Case Timeline

Date Event
2009-03-18 U.S. Patent No. 8,798,120 Priority Date
2010-08-20 U.S. Patent No. 8,565,331 Priority Date
2013-10-22 U.S. Patent No. 8,565,331 Issued
2014-08-05 U.S. Patent No. 8,798,120 Issued
2016-01-14 USPTO allegedly brings '120 Patent to Defendant's attention during prosecution of its own patent
2020-03-06 Samsung releases Galaxy S20 series in the U.S.
2021-01-29 Samsung releases Galaxy S21 series in the U.S.
2022-02-25 Samsung releases Galaxy S22 series in the U.S.
2023-02-17 Samsung releases Galaxy S23 series in the U.S.
2023-09-18 Complaint Filed

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

U.S. Patent No. 8,798,120 - “METHODS AND COMMUNICATION SYSTEMS HAVING ADAPTIVE MODE SELECTION” (Issued Aug. 5, 2014)

The Invention Explained

  • Problem Addressed: The patent addresses the trade-off between high data throughput and energy consumption in advanced wireless systems. High-performance modes like multiple-input multiple-output (MIMO) offer high data rates but consume significant power, while lower-performance modes like single-input multiple-output (SIMO) consume less power but offer lower data rates (’120 Patent, col. 7:15-24).
  • The Patented Solution: The invention describes a method for a communications system to adaptively select the most energy-efficient transmission mode. It does this by calculating the expected energy consumption for both MIMO and SIMO modes, considering factors like the power needed for transmission circuitry and the power consumed by the device when it is idle. Based on this analysis, the system selects and switches to the optimal mode (MIMO or SIMO) to balance performance with power savings (’120 Patent, col. 8:45-54; Fig. 1).
  • Technical Importance: This adaptive approach allows mobile devices to conserve battery life during periods of low demand while still accessing high-speed capabilities when needed, a critical feature for user experience in battery-powered devices (’120 Patent, col. 7:65-col. 8:11).

Key Claims at a Glance

  • The complaint asserts independent claim 25 (Compl. ¶41).
  • Claim 25 requires a mobile station comprising:
    • A first antenna and a second antenna.
    • First and second circuitry coupled to the respective antennas for processing transmission signals.
    • A controller coupled to the circuitry, configured to receive a control signal.
    • The controller, in accordance with the control signal, selects between a MIMO mode (both antennas transmit) and a SIMO mode (only one antenna transmits).
    • The control signal is based, at least in part, on a power consumption of the first and second circuitry.
    • The control signal is based, at least in part, on an idle power consumption of the mobile station.
  • The complaint does not explicitly reserve the right to assert dependent claims for the ’120 Patent.

U.S. Patent No. 8,565,331 - “INSERTING AND DECODING REPLICATED DATA SYMBOLS IN WIRELESS COMMUNICATIONS” (Issued Oct. 22, 2013)

The Invention Explained

  • Problem Addressed: The patent's background section explains that to decode a signal reliably, a receiver must first estimate the characteristics of the wireless channel (e.g., how the signal is affected by reflections and interference). This is typically done by inserting known, non-data "pilot symbols" into the transmission. However, these pilot symbols take up bandwidth that could otherwise be used for data, thus adversely affecting the attainable data rate (’331 Patent, col. 1:49-56).
  • The Patented Solution: The invention proposes a method to improve channel estimation without sacrificing as much data capacity. It involves replicating a portion of the actual data symbols from one data stream and inserting them into a second data stream (’331 Patent, Fig. 3). Because the receiver knows this data is replicated, it can treat these symbols as additional, known reference points—similar to pilot symbols—to generate a more accurate estimate of the channel matrix. This improved estimate is then used to decode subsequent data more reliably (’331 Patent, col. 1:57-col. 2:6).
  • Technical Importance: This technique allows for more robust channel estimation, which is critical for achieving reliable high-speed data transfer in complex environments, while mitigating the data rate penalty associated with traditional pilot-only methods.

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶71).
  • Claim 1 requires a method of decoding a signal, comprising the steps of:
    • receiving a pilot symbol over the communications channel;
    • estimating a channel matrix of the communications channel based, at least in part, on the pilot symbol;
    • receiving replicated data from multiple data streams transmitted over the communications channel;
    • decoding the replicated data using the estimated channel matrix;
    • generating an updated estimate of the channel matrix based, at least in part, on the replicated data; and
    • decoding subsequently received signals over the communications channel using the updated estimate of the channel matrix.
  • The complaint does not explicitly reserve the right to assert dependent claims for the ’331 Patent.

III. The Accused Instrumentality

Product Identification

The accused products are Samsung’s 5G-compatible smartphones, specifically the Galaxy S20, S21, S22, and S23 series, and any other 5G-compatible phones incorporating the accused technologies (Compl. ¶¶ 35-39, 71).

Functionality and Market Context

  • The complaint alleges these phones incorporate Qualcomm's "Smart Transmit" technology, which manages transmission power to comply with regulatory limits while optimizing performance (Compl. ¶¶ 39, 56-59). This technology is accused of infringing the ’120 Patent.
  • The phones are also alleged to use 5G-compatible modems, such as the Qualcomm Snapdragon X55, that perform channel estimation and are capable of operating in MIMO configurations. These functionalities are accused of infringing the ’331 Patent (Compl. ¶¶ 70, 78). The complaint alleges these features are important for delivering the performance benefits of 5G networks (Compl. ¶¶ 19-20, 23-24).
  • The complaint provides an annotated diagram from an FCC submission for a Galaxy S20 model showing the locations of numerous antennas used for different wireless technologies, including LTE and 5G NR. (Compl. ¶49).

IV. Analysis of Infringement Allegations

U.S. Patent No. 8,798,120 Infringement Allegations

Claim Element (from Independent Claim 25) Alleged Infringing Functionality Complaint Citation Patent Citation
A mobile station for use in a communications system comprising: The accused Galaxy S20, S21, S22, and S23 series are mobile stations for use in a cellular communications system. The complaint includes a photograph of a Galaxy S20 submitted to the FCC as an example. ¶¶46-47 col. 9:1-2
[a] a first antenna and a second antenna; The accused products contain multiple antennas capable of transmitting and receiving signals for technologies including 5G NR. An FCC submission diagram for the Galaxy S20 is cited showing at least twelve distinct antenna structures. ¶¶48-49 col. 10:1-2
[b] first circuitry coupled to the first antenna and configured to process signals for transmission by the first antenna; second circuitry coupled to the second antenna and configured to process signals for transmission by the second antenna; The accused products include RF front-end (RFFE) modules and transceivers, such as the Qualcomm SDR865, that process signals for transmission by the multiple antennas. The complaint includes annotated teardown images of a Galaxy S20 Ultra showing these modules. ¶¶50-52 col. 10:3-9
[c] a controller... configured to receive a control signal and, in accordance with the control signal, to select between a... (MIMO) mode... and a... (SIMO) mode... The accused products include a controller, such as the Qualcomm Snapdragon X55 modem, which is alleged to be compatible with LTE Release 12 and capable of selecting between MIMO (e.g., closed-loop spatial multiplexing) and SIMO (single transmit antenna) uplink transmission modes. ¶¶53-55 col. 10:10-19
[d] wherein the control signal is based, at least in part, on a power consumption of the first and second circuitry, The accused "Smart Transmit" technology is alleged to manage instantaneous transmit power, which necessarily relates to the power consumed by the transmission circuitry. A cited graph shows transmit power varying over time. ¶¶56-57 col. 10:20-22
[e] wherein the control signal is based, at least in part, on an idle power consumption of the mobile station. The complaint alleges that the "Smart Transmit" algorithm starts power limiting early to create a "reserve power" level to maintain a radio link during idle periods. A cited FCC submission describes maintaining a minimum power level to avoid dropping a call. ¶¶61-63 col. 10:22-24
  • Identified Points of Contention:
    • Scope Questions: A central question will be whether the operation of Qualcomm's "Smart Transmit" technology, which is described as managing time-averaged power to meet regulatory RF exposure limits (Compl. ¶59), falls within the scope of a "control signal... based, at least in part, on an idle power consumption of the mobile station" as claimed. The defense may argue that "Smart Transmit" is a regulatory compliance feature, not an energy efficiency mechanism based on idle power in the manner described by the patent.
    • Technical Questions: Does the accused controller's decision to switch between transmission modes rely on the specific inputs recited in the claim (circuitry power consumption and idle power consumption), or does it rely on other factors like channel quality, data buffer status, or regulatory power-averaging windows? The evidence presented for the "idle power consumption" element centers on maintaining a "reserve power" to avoid a dropped call, raising the question of whether this is equivalent to the patent's concept of conserving energy during idle time.

U.S. Patent No. 8,565,331 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
[a] receiving a pilot symbol over the communications channel; The accused products, containing a Qualcomm Snapdragon X55 modem, are alleged to receive pilot signals, which are described as essential for estimating the wireless channel in 4G and 5G systems. ¶¶80-82 col. 14:64-65
[b] estimating a channel matrix of the communications channel based, at least in part, on the pilot symbol; The accused products are alleged to perform channel estimation based on received pilot signals (demodulation reference signals or DMRS in 5G). The complaint includes a diagram illustrating how DMRS pilots are used for channel estimation. ¶¶83-87 col. 14:2-6
[c] receiving replicated data from multiple data streams transmitted over the communications channel; The accused products are alleged to employ spatial diversity in MIMO mode, which is described as "sending the same data across different propagation, or spatial, paths," which Plaintiff equates to receiving replicated data. ¶¶88-90 col. 13:65
[d] decoding the replicated data using the estimated channel matrix; The accused products allegedly use the initial channel estimate (from step [b]) to decode the received data, including the replicated data. ¶¶91-95 col. 14:7-9
[e] generating an updated estimate of the channel matrix based, at least in part, on the replicated data; The complaint alleges that the accused products use the decoded replicated data to generate an updated, more accurate channel estimate. ¶¶97-99 col. 14:9-12
[f] decoding subsequently received signals... using the updated estimate of the channel matrix. Once the updated channel matrix is generated, the accused modems allegedly use this more accurate estimate to decode the remaining data signals in the transmission. ¶¶100-102 col. 14:12-15
  • Identified Points of Contention:
    • Scope Questions: Does the practice of "spatial diversity," described as sending the same data across different paths for reliability (Compl. ¶90), meet the claim limitation of "receiving replicated data from multiple data streams"? The defense may argue these are distinct concepts, where spatial diversity involves specific encoding/decoding schemes (like Alamouti coding mentioned in the patent itself) not equivalent to the simple replication and insertion method taught.
    • Technical Questions: The claim requires a specific two-step estimation process: an initial estimate from pilots, followed by an updated estimate based on decoded replicated data. A key evidentiary question will be whether the accused 5G modems actually perform this sequential update process. What evidence does the complaint provide that the modem, after decoding data from a MIMO stream, uses that specific decoded data to refine its channel matrix for decoding subsequent symbols within the same transmission block?

V. Key Claim Terms for Construction

For the ’120 Patent:

  • The Term: "control signal is based, at least in part, on an idle power consumption of the mobile station"
  • Context and Importance: This limitation is critical to distinguishing the patented invention from general power control or performance optimization algorithms. The infringement theory hinges on equating the accused "Smart Transmit" feature, which manages a power reserve to prevent dropped calls, with a system that considers idle power for energy efficiency. The construction of "idle power consumption" will be determinative.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification discusses that "if the transmission rate is too slow, a greater number of transceivers may become idle" and that "idle power spent at a lower transmission rate may accordingly make the lower transmission rate less desirable" (’120 Patent, col. 8:1-6). This could support a reading where any consideration of power used when not actively transmitting at full capacity is relevant.
    • Evidence for a Narrower Interpretation: The claim links the idle power consumption to the selection between MIMO and SIMO modes. The specific embodiments and equations focus on a trade-off calculation where "P_idle" is a defined variable in an energy minimization function (’120 Patent, col. 8:37-41). This may support a narrower construction requiring an explicit calculation based on a measured or predetermined idle power value, rather than a more general "power reserve" concept.

For the ’331 Patent:

  • The Term: "generating an updated estimate of the channel matrix based, at least in part, on the replicated data"
  • Context and Importance: This term defines the core novelty of the claimed method: using decoded data as a secondary pilot to refine the channel estimate. The infringement case depends on showing that the accused modems do more than just use an initial estimate to decode all data; they must be shown to perform the specific intermediate step of updating the estimate. Practitioners may focus on this term because it delineates a specific, sequential process.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent summary states the invention includes "generating an updated estimate of the channel matrix based, at least in part, on the replicated data" (’331 Patent, col. 2:3-6). The general language could suggest that any process where the replicated data contributes to a final, more accurate channel estimate falls within scope.
    • Evidence for a Narrower Interpretation: Figure 7, a flowchart of the method, shows "Updating the estimate..." (725) as a distinct step that follows "Decoding the replicated data" (720) and precedes "Decoding subsequently received data" (730). This strongly supports a narrow, sequential construction where the update is a discrete action performed after decoding the replicated symbols and before decoding the rest of the data.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement for both patents. It claims Defendants provide instructions, product manuals, advertisements, and technical support that encourage and enable customers to use the accused products in an infringing manner (e.g., by using their 5G capabilities) (Compl. ¶¶ 42, 43, 73, 74).
  • Willful Infringement: Willfulness is alleged based on both pre-suit and post-suit knowledge. The complaint alleges that Defendant SEC knew of the ’120 Patent at least as of January 2016, when the patent was cited by the USPTO during the prosecution of SEC’s U.S. Patent No. 9,344,175. It further alleges knowledge of both patents "since at least June 2019." (Compl. ¶¶ 42-43, 64, 73-74).

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

  1. A core issue will be one of functional interpretation: Does the accused "Smart Transmit" technology, designed for regulatory compliance by managing time-averaged transmit power, perform the same function as the energy-efficiency method of the ’120 Patent, which explicitly requires a selection between MIMO and SIMO modes based on circuitry power and "idle power consumption"?
  2. A key evidentiary question will be one of process verification: Do the accused 5G modems perform the specific, sequential channel estimation process required by Claim 1 of the ’331 Patent? The case may turn on whether Plaintiff can demonstrate that the modems first make an initial estimate from pilots, then decode replicated data, and then use that decoded data to generate a distinct updated estimate before decoding subsequent signals.
  3. A third central question will concern definitional scope: Can the transmission of identical data streams for "spatial diversity" in a MIMO system be properly construed as the "replicated data" taught in the ’331 Patent, or does the patent's teaching of inserting symbols from one stream into another require a more specific implementation not present in the accused products?