DCT

4:25-cv-00200

Hannibal IP LLC v. Samsung Electronics Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 4:25-cv-00200, E.D. Tex., 02/27/2025
  • Venue Allegations: Venue is alleged against Samsung Electronics Co., Ltd. as a foreign corporation and against Samsung Electronics America, Inc. based on its regular and established place of business in the district (the "Plano Facility") and alleged acts of infringement committed there.
  • Core Dispute: Plaintiff alleges that Defendant’s 5G-capable smartphones, tablets, and other smart devices infringe four patents related to managing beamforming, channel access, and power-saving functionalities as defined in the 3GPP 5G wireless standard.
  • Technical Context: The technology at issue involves specific procedures within 5G New Radio (NR) communications that allow devices to efficiently manage radio resources, a critical function for balancing performance and battery life in modern mobile devices.
  • Key Procedural History: Plaintiff alleges that at least three of the asserted patents (’896, ’535, ’911) were declared as essential to the 3GPP 5G Standard to the European Telecommunications Standards Institute (ETSI) by their original assignee. The complaint also asserts that Plaintiff has complied with its FRAND (Fair, Reasonable, and Non-Discriminatory) licensing obligations, including providing offers to Defendant. Plaintiff alleges Defendant had notice of the '896 Patent as of June 8, 2022, and the '535 and '911 Patents as of November 6, 2023.

Case Timeline

Date Event
2018-11-01 Priority Date for U.S. Patent Nos. 11,057,896 and 11,641,661
2019-01-09 Priority Date for U.S. Patent No. 11,272,535
2019-04-30 Priority Date for U.S. Patent No. 11,368,911
2021-07-06 U.S. Patent No. 11,057,896 Issues
2022-03-08 U.S. Patent No. 11,272,535 Issues
2022-06-08 Alleged Notice of '896 Patent to Defendant
2022-06-21 U.S. Patent No. 11,368,911 Issues
2023-05-02 U.S. Patent No. 11,641,661 Issues
2023-11-06 Alleged Notice of '535 and '911 Patents to Defendant
2025-02-27 Complaint Filed

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

U.S. Patent No. 11,057,896 - "Methods and Apparatuses of Determining Quasi Co-Location (QCL) Assumptions for Beam Operations"

The Invention Explained

  • Problem Addressed: In 5G New Radio (NR) systems, a user device (UE) may be configured with multiple Control Resource Sets (CORESETs), each potentially having different beamforming characteristics. The patent identifies that existing specifications could create ambiguity for the UE in deciding which beamforming assumption, known as a Quasi Co-Location (QCL) assumption, to use, which could lead to "unfavorable beam switching" and degraded performance (ʼ896 Patent, col. 1:31-44).
  • The Patented Solution: The invention provides a deterministic method for a UE to select the correct QCL assumption. When the UE needs to receive a specific signal, such as an aperiodic Channel Status Information-Reference Signal (CSI-RS), it applies the QCL assumption derived from a specific CORESET: the one associated with a monitored search space that has the lowest CORESET Identity (ID) among all the CORESETs the UE is currently monitoring (ʼ896 Patent, Abstract; col. 2:21-30). This provides a clear rule to resolve ambiguity.
  • Technical Importance: This method provides a reliable and predictable way for a device to manage its receive beams in complex 5G environments with multiple overlapping radio resources, ensuring stable and efficient communication (ʼ896 Patent, col. 1:39-44).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶32).
  • Essential elements of claim 1 include:
    • monitoring at least one of a plurality of Control Resource Sets (CORESETs) configured for the UE within an active Bandwidth Part (BWP) of a serving cell in a time slot;
    • applying a first Quasi Co-Location (QCL) assumption of a first CORESET of a set of one or more monitored CORESETs to receive an aperiodic Channel Status Information-Reference Signal (CSI-RS);
    • wherein the first CORESET is associated with a monitored search space configured with a lowest CORESET Identity (ID) among the set of one or more monitored CORESETs.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 11,641,661 - "Methods and Apparatuses of Determining Quasi Co-Location (QCL) Assumptions for Beam Operations"

The Invention Explained

  • Problem Addressed: Similar to the '896 Patent, this patent (a continuation) addresses the issue of unfavorable beam switching when a UE is configured with multiple CORESETs. It focuses on scenarios where the time between a scheduling command (DCI) and the scheduled data reception (PDSCH) is very short (ʼ661 Patent, col. 1:31-45; col. 2:11-14).
  • The Patented Solution: The invention proposes a method where, if the scheduling offset between the control channel and a scheduled reference signal is less than a threshold, the UE applies the QCL assumption from the CORESET that has the lowest ID among the set of monitored CORESETs. This provides a default rule for beam selection in time-critical situations where an explicit beam indication may not be available (ʼ661 Patent, col. 2:2-20, Abstract).
  • Technical Importance: This solution establishes a clear and efficient default behavior for beam management in low-latency 5G operations, preventing communication errors or delays that could arise from beam-related ambiguity (ʼ661 Patent, col. 7:3-9).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶49).
  • Essential elements of claim 1 include:
    • monitoring at least one of a plurality of CORESETs configured for the UE within an active BWP of a serving cell in a time slot;
    • receiving Downlink Control Information (DCI) scheduling a Downlink (DL) Reference Signal (RS), wherein a scheduling offset between the control channel carrying the DCI and the resource carrying the DL RS is less than a threshold;
    • applying a first QCL assumption of a first CORESET (from the set of monitored CORESETs) to receive the DL-RS, where the first CORESET is associated with the monitored search space having the lowest CORESET Identity (ID).
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 11,272,535 - "Method and Apparatus for LBT Failure Detection"

  • Technology Synopsis: The patent addresses channel access failures in unlicensed spectrum, which requires a Listen-Before-Talk (LBT) procedure. It provides a method for a device's Medium Access Control (MAC) entity to detect a consistent LBT failure by receiving failure indications from a lower physical layer, incrementing a counter upon each failure, and declaring a failure event when the counter reaches a pre-configured threshold, which can then trigger recovery actions (ʼ535 Patent, Abstract; col. 2:1-5).
  • Asserted Claims: The complaint asserts independent claim 1 (Compl. ¶67).
  • Accused Features: The accused functionality is the LBT failure detection and recovery procedure defined in the 3GPP 5G Standard (TS 38.321), which allegedly includes receiving LBT failure indications, incrementing an "LBT_COUNTER", and comparing it to a threshold ("lbt-FailureInstanceMaxCount") to trigger a consistent LBT failure event (Compl. ¶¶72-75).

U.S. Patent No. 11,368,911 - "Method of Physical Downlink Control Channel Monitoring and Related Device"

  • Technology Synopsis: This patent aims to enhance power savings for devices using Discontinuous Reception (DRX). It describes a method where a UE is configured with two distinct search spaces for monitoring control channels: a first for normal scheduling signals and a second for a power-saving wake-up signal (WUS). The key inventive step is that the UE does not monitor the second (WUS) search space when it is already in "DRX active time" (i.e., already awake), thereby avoiding redundant monitoring and conserving battery life (ʼ911 Patent, Abstract; col. 2:1-17).
  • Asserted Claims: The complaint asserts independent claim 1 (Compl. ¶87).
  • Accused Features: The accused functionality is the implementation of DRX with a wake-up signal as defined in the 3GPP 5G standards (TS 38.213, TS 38.321). This allegedly includes configuring a first search space for scheduling DCI and a second search space for a power-saving signal (DCI format 2_6), and not monitoring the second search space during the DRX Active Time (Compl. ¶¶89, 93).

III. The Accused Instrumentality

  • Product Identification: The accused products are all Samsung products capable of supporting and implementing the 3GPP 5G Standard, including but not limited to all 5G-capable models in the Samsung Galaxy 5G product line (e.g., smartphones, tablets, and notebooks) (Compl. ¶22). The complaint specifically lists dozens of models from the Galaxy A, F, M, Note, S, Tab, and Z series (Compl. ¶22, p. 6).
  • Functionality and Market Context:
    • The relevant functionality of the accused products is their ability to operate on 5G wireless networks in compliance with the 3GPP 5G Standard. The complaint alleges that this compliance necessitates the implementation of the patented methods for managing beamforming (QCL assumptions), handling LBT failures in unlicensed spectrum, and managing power consumption through DRX with wake-up signals (Compl. ¶¶26, 32, 49, 67, 87).
    • The complaint presents a screenshot from Samsung's website advertising that "It's all possible with 5G," highlighting the centrality of 5G capability to the products' function and marketing (Compl. ¶22, p. 6). The complaint alleges these products are part of a major product line for Samsung and generate substantial revenue (Compl. ¶¶2, 7).

IV. Analysis of Infringement Allegations

’896 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
monitor at least one of a plurality of Control Resource Sets (CORESETs) configured for the UE within an active Bandwidth Part (BWP) of a serving cell in a time slot The Accused Products monitor one or more CORESETs within an active BWP of a serving cell, as required by their implementation of the 3GPP 5G Standard. This is illustrated with a screenshot from 3GPP TS 38.214. ¶36 col. 2:5-8
apply a first Quasi Co-Location (QCL) assumption of a first CORESET of a set of one or more monitored CORESETs to receive an aperiodic Channel Status Information-Reference Signal (CSI-RS), The Accused Products apply a QCL assumption to receive an aperiodic CSI-RS based on a default rule specified in the 3GPP 5G Standard. ¶37 col. 2:25-28
wherein the first CORESET is associated with a monitored search space configured with a lowest CORESET Identity (ID) among the set of one or more monitored CORESETs. When a specific condition is met, the Accused Products apply the QCL assumption used for the CORESET associated with the monitored search space having the lowest "controlResourceSetId". The complaint provides a screenshot from 3GPP TS 38.214 showing this rule. ¶37 col. 2:28-30
  • Identified Points of Contention:
    • Scope Questions: The complaint's infringement theory rests on the accused products' compliance with the 3GPP 5G standard. A primary question will be whether practicing the cited standard sections necessarily infringes the claims, or if non-infringing alternatives exist within the standard that Defendant could have implemented.
    • Technical Questions: What evidence demonstrates that the accused products actually practice the specific rule of defaulting to the QCL assumption of the CORESET with the "lowest" ID? The complaint cites the standard but does not provide direct evidence from the accused products' operation. The visual evidence provided is a screenshot of the 3GPP standard which specifies using the QCL assumption for the CORESET associated with the lowest "controlResourceSetId" (Compl. ¶37, p. 10).

’661 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
monitor at least one of a plurality of Control Resource Sets (CORESETs) configured for the UE within an active Bandwidth Part (BWP) of a serving cell in a time slot The Accused Products monitor one or more CORESETs within an active BWP of a serving cell as part of their compliance with the 3GPP 5G Standard. ¶53 col. 2:5-8
receive Downlink Control Information (DCI) scheduling a Downlink (DL) Reference Signal (RS), wherein a scheduling offset between an end of a last symbol of a Physical Downlink Control Channel (PDCCH) carrying the DCI and a beginning of a first symbol of a resource carrying the DL RS is less than a threshold The Accused Products are capable of receiving a DCI where the scheduling offset is less than a threshold ("timeDurationForQCL"), as described in the 3GPP 5G Standard. ¶54 col. 2:11-14
apply a first Quasi Co-Location (QCL) assumption of a first CORESET ... wherein the first CORESET is associated with a monitored search space configured with a lowest CORESET Identity (ID) among the set of one or more of the monitored... CORESETs Under the condition that the scheduling offset is less than the threshold, the Accused Products apply the QCL assumption of the CORESET associated with the lowest "controlResourceSetId". The complaint provides a visual from the 3GPP standard to support this. ¶55 col. 2:15-20
  • Identified Points of Contention:
    • Scope Questions: As with the '896 patent, the central issue is whether the standard is coterminous with the claim. Does the term threshold in the claim map directly and exclusively to the "timeDurationForQCL" parameter cited in the complaint from the 3GPP standard?
    • Technical Questions: The infringement allegation hinges on a conditional operation (if the offset... is less than the threshold). What evidence shows that this specific logical path is executed by the accused products as described? The complaint provides a screenshot from 3GPP TS 38.214 that describes this exact conditional logic (Compl. ¶55, p. 15).

V. Key Claim Terms for Construction

  • The Term: "monitored CORESETs" (from '896 Patent, Claim 1 and '661 Patent, Claim 1)
  • Context and Importance: The claims require applying a QCL assumption from a CORESET that is part of a set of "monitored CORESETs." The patents' specifications distinguish between CORESETs a UE actively monitors and those it does not (e.g., due to conflicts or deactivation). The definition of this term is critical because if the CORESET that forms the basis of the QCL assumption is not considered "monitored" under the proper construction, the claim would not be infringed. Practitioners may focus on this term because the patents provide detailed, and potentially limiting, priority rules for what constitutes a monitored CORESET.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language "a set of one or more monitored CORESETs" is facially broad, suggesting any CORESET the UE is configured to monitor could qualify (ʼ896 Patent, col. 19:19-22).
    • Evidence for a Narrower Interpretation: The specification describes specific priority rules for monitoring, such as prioritizing a CORESET associated with a Common Search Space (CSS) or one with a lower search space ID (ʼ896 Patent, col. 7:11-21). A defendant may argue that "monitored" should be limited to only those CORESETs that survive these specific priority rules, potentially narrowing the scope of infringement.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement for all asserted patents. The basis for this allegation is that Samsung provides the Accused Products along with instructions, documentation, marketing, and technical support that "suggest[] they use the Accused Products in an infringing manner" by enabling and using their 5G capabilities (Compl. ¶¶40, 58, 78, 96). Contributory infringement is also alleged, based on the assertion that the 5G-compliant components are material to the inventions, are not staple articles of commerce, and are known by Samsung to be especially adapted for infringing the patents (Compl. ¶¶41, 59, 79, 97).
  • Willful Infringement: Willfulness is alleged based on Samsung’s continued infringement after receiving notice of the patents. The complaint alleges specific notice dates for the '896 patent (June 8, 2022), the '535 patent (November 6, 2023), and the '911 patent (November 6, 2023). For the '661 patent, knowledge is alleged from the filing of the complaint. Plaintiff claims this continued activity constitutes an "objectively high likelihood" of infringement (Compl. ¶¶44, 62, 82, 100).

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

  • A core issue will be one of standard essentiality and scope: Is compliance with the cited sections of the 3GPP 5G standard—which forms the entirety of the infringement allegation—sufficient to establish infringement of the asserted claims? The case may turn on whether the functionality described in the standards is legally and technically indistinguishable from the limitations recited in the patent claims, or if the standard permits non-infringing implementations.
  • A key evidentiary question will be one of proof of practice: Beyond citing the 3GPP standards, what direct evidence will be presented to demonstrate that Samsung's accused devices actually execute the specific, and often conditional, logic required by the claims (e.g., selecting the "lowest" CORESET ID, acting when an offset is "less than a threshold," or "not monitoring" a search space during "DRX active time")?
  • A central claim construction dispute may arise over the definition of "monitored": For the '896 and '661 patents, the outcome may depend on whether a "monitored CORESET" is construed broadly to include any configured CORESET, or narrowly to only those that are actively selected for monitoring after applying the complex priority rules described in the patent specifications.