DCT

5:23-cv-00092

Maxell Ltd v. Samsung Electronics Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:23-cv-00092, E.D. Tex., 09/07/2023
  • Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant Samsung Electronics America, Inc. maintains a regular and established place of business in Plano, Texas, and both defendants are alleged to conduct substantial business operations and make sales within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s wide range of smart devices—including smartphones, tablets, laptops, and SmartThings-enabled appliances—infringes seven patents related to smart home network security, biometric unlocking, digital media management, and camera functionality.
  • Technical Context: The technologies at issue involve software and hardware features central to the modern consumer electronics ecosystem, such as securing and managing smart home networks, authenticating users via biometrics, and organizing large libraries of digital photos and videos.
  • Key Procedural History: The complaint alleges that a prior patent license agreement existed between Samsung and Plaintiff’s predecessor-in-interest, Hitachi Consumer Electronics, which expired. Plaintiff also notes that it provided Defendant with notice of infringement for several of the patents-in-suit beginning in July 2021. Notably, three of the asserted patents (U.S. Patent Nos. 8,982,086; 10,176,848; and 10,129,590) were the subject of ex parte reexaminations requested by Apple Inc., which concluded with the U.S. Patent and Trademark Office confirming the patentability of the asserted claims.

Case Timeline

Date Event
2004-12-02 ’815 Patent Priority Date
2007-11-28 ’161, ’590, and ’241 Patents Priority Date
2008-05-19 ’848 Patent Priority Date
2011-01-01 Samsung enters Patent Sale Agreement with Hitachi Consumer Electronics (approximate date)
2011-02-09 ’086 Patent Priority Date
2011-10-11 ’161 Patent Issue Date
2013-09-12 ’757 Patent Priority Date
2015-03-17 ’086 Patent Issue Date
2018-11-13 ’590 Patent Issue Date
2019-01-08 ’848 Patent Issue Date
2020-12-23 Ex parte reexamination filed for ’086 and ’848 Patents by Apple Inc.
2021-01-12 Ex parte reexamination filed for ’590 Patent by Apple Inc.
2021-05-25 ’815 Patent Issue Date
2021-07-07 Plaintiff allegedly provides notice of infringement to Defendant for multiple patents
2021-09-28 USPTO confirms validity of ’086 Patent claims in reexamination
2021-11-15 USPTO confirms validity of ’590 Patent claims in reexamination
2022-01-11 ’757 Patent Issue Date
2022-03-18 USPTO confirms validity of ’848 Patent claims in reexamination
2022-09-13 ’241 Patent Issue Date
2023-09-07 Complaint Filing Date

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

U.S. Patent No. 8,037,161 - "Network System, Network Device, And Network Belonging Judgment Method"

  • Patent Identification: U.S. Patent No. 8,037,161, issued on October 11, 2011 (Compl. ¶33).
  • The Invention Explained:
    • Problem Addressed: The patent addresses the security risk of unauthorized devices joining a home network to "steal content, which is private information distributed within the network" (Compl. ¶35, citing ’161 Patent, col. 2:17-23).
    • The Patented Solution: The invention describes a method for a network device to determine if another device belongs to the same trusted home network. Each device collects information about other connected devices, stores this information, and then transmits and receives this stored information to and from other devices. By collating or comparing its own stored network information with the information received from another device, it can judge whether they belong to the same network (Compl. ¶36; ’161 Patent, Abstract). Figure 1 of the patent illustrates a home network system where multiple devices interoperate (Compl. p. 10).
    • Technical Importance: The technology provides a decentralized method for establishing trust between devices on a local network, a foundational concept for securing early smart home and IoT ecosystems (Compl. ¶35).
  • Key Claims at a Glance:
    • The complaint asserts at least claim 3 (Compl. ¶37). Claim 3 is dependent on independent claim 1. The core elements are:
      • A network device comprising a "peripheral device information collection unit" to collect information on connected devices.
      • A "peripheral device information storage unit" to store this collected information.
      • Transmission and reception units to exchange the stored information with another device.
      • A "peripheral device information collation unit" to compare its stored information with the received information to judge if the other device belongs to the same network.
      • Per claim 3, the stored "home network information is a chronological list of network devices connected to the network" (Compl. ¶¶36, 39; ’161 Patent, col. 8:14-17).
    • The complaint does not explicitly reserve the right to assert other claims.

U.S. Patent No. 8,982,086 - "Information Processing Apparatus"

  • Patent Identification: U.S. Patent No. 8,982,086, issued on March 17, 2015 (Compl. ¶52). This patent’s claims were confirmed in an ex parte reexamination completed on September 28, 2021 (Compl. ¶54).
  • The Invention Explained:
    • Problem Addressed: The patent identifies conventional passcode entry for unlocking devices as "time consuming" and requiring memorization. Using the same passcode on multiple devices is presented as a security risk if the passcode is compromised (Compl. ¶56).
    • The Patented Solution: The invention describes a more convenient method for unlocking a device and executing operations by distinguishing between different types of finger contact on a touch panel, such as the "tip or pad of their fingers" (’086 Patent, col. 1:45-56, as cited in Compl. ¶57). As illustrated in Figure 12B, the system can associate different operations (e.g., launching an application) based on whether a sequence of inputs was made with a fingertip or a finger pad (Compl. ¶58, p. 35).
    • Technical Importance: The technology moves beyond simple passcode authentication toward a more nuanced biometric user interface, where the physical nature of a user's touch can signify different intents (Compl. ¶¶57-58).
  • Key Claims at a Glance:
    • The complaint asserts at least claim 1 (Compl. ¶59). The essential elements are:
      • An information processing apparatus with a touch panel and a detector.
      • A first controller that operates the apparatus in one of two modes.
      • A second controller that executes a specified process when detected user information matches stored information.
      • The apparatus provides "a first registering mode for inputting input information by a pad of a finger" and "a second registering mode for inputting input information by an end of the finger" (’086 Patent, col. 8:45-53).
    • The complaint does not explicitly reserve the right to assert other claims.

U.S. Patent No. 10,176,848 - "Recording And Reproducing Apparatus And Method Thereof"

  • Patent Identification: U.S. Patent No. 10,176,848, issued January 8, 2019. Its claims were confirmed valid in an ex parte reexamination (Compl. ¶¶73, 75).
  • Technology Synopsis: The patent is directed to techniques for more efficiently identifying and searching recorded images and videos. It describes executing a face-recognition process on recorded pictures to categorize them by person and displaying thumbnails with icons to indicate an "importance level" (Compl. ¶¶77-78).
  • Asserted Claims: At least claim 84 (Compl. ¶79).
  • Accused Features: The "Gallery" application in Samsung smartphones and tablets, which allegedly implements picture and video recording, editing, and organization functions, including face-recognition-based albums (Compl. ¶80). A screenshot shows an "Auto-updating album" feature that automatically includes "pictures of people you select" (Compl. p. 47).

U.S. Patent No. 11,223,757 - "Video Recording Device And Camera Function Control Program"

  • Patent Identification: U.S. Patent No. 11,223,757, issued January 11, 2022 (Compl. ¶93).
  • Technology Synopsis: The patent describes an apparatus with multiple cameras (e.g., front and rear) and a touch interface that executes different photographing processes. These processes can be initiated by voice input or touch input and can include standby times to allow a user to compose a photo (Compl. ¶95).
  • Asserted Claims: At least claim 1 (Compl. ¶96).
  • Accused Features: Samsung smartphones and tablets that implement multiple cameras, a touch screen, the "Camera" application, and the "Bixby" voice assistant for hands-free commands like "Hi Bixby, open the front camera and take a picture" (Compl. ¶¶96, 97, p. 56).

U.S. Patent No. 11,017,815 - "Editing Method And Recording And Reproducing Device"

  • Patent Identification: U.S. Patent No. 11,017,815, issued May 25, 2021 (Compl. ¶109).
  • Technology Synopsis: The patent is directed to a hierarchical management interface for video information associated with different users or classifications. The system allows a user to manage and edit video groups and playlists, where deleting a video from one user's editable group does not remove it from a second, broader group (Compl. ¶¶111-112).
  • Asserted Claims: At least claims 1-8 (Compl. ¶113).
  • Accused Features: Samsung’s "Quick Share" feature for receiving video data, and the "Gallery" and "My Files" applications for managing video storage in a hierarchical manner (Compl. ¶113).

U.S. Patent Nos. 10,129,590 and 11,445,241

  • Patent Identification: U.S. Patent No. 10,129,590, issued November 13, 2018, and U.S. Patent No. 11,445,241, issued September 13, 2022. The '241 Patent is in the same family as the '590 Patent, and the '590 Patent's claims were confirmed in an ex parte reexamination (Compl. ¶¶127, 129, 148).
  • Technology Synopsis: These patents describe devices with multiple radio communication circuits (at least three) that allow the device to perform simultaneous wireless tasks, such as transmitting video information over one radio circuit while simultaneously connecting to the internet over another radio circuit (Compl. ¶¶131, 133, 150, 152).
  • Asserted Claims: At least claim 1 of each patent (Compl. ¶¶134, 153).
  • Accused Features: Samsung devices that use "Samsung Quick Share" to transfer video while simultaneously being connected to the Internet via a cellular network, and also use "Samsung Wallet" (which uses a third radio circuit, such as NFC) (Compl. ¶¶134, 136, 154, 155).

III. The Accused Instrumentality

Product Identification

  • The complaint accuses a broad ecosystem of Samsung's electronic devices, including but not limited to: Galaxy series smartphones and tablets; Galaxy Book laptops; Galaxy watches; and an extensive list of SmartThings-enabled products such as the SmartThings Hub, smart refrigerators, washers, dryers, and vacuums (collectively, the "Accused Products") (Compl. ¶¶38, 60, 80).

Functionality and Market Context

  • The complaint targets core functionalities integrated across this ecosystem. The "SmartThings" platform is alleged to enable Samsung's devices to form a connected home network where they discover, communicate with, and verify each other (Compl. ¶¶37, 39). The complaint highlights features such as fingerprint unlock secured by Samsung Knox software, the "Gallery" application for media organization, the multi-camera "Camera" application, the "Bixby" voice assistant, and the "Quick Share" file transfer protocol as the instrumentalities that allegedly practice the claimed inventions (Compl. ¶¶61, 80, 96, 113, 135, 154). An image from Samsung's developer documentation details various "Interaction Types" like "discoveryRequest" that govern how devices communicate within the SmartThings ecosystem (Compl. p. 21).

IV. Analysis of Infringement Allegations

8,037,161 Patent Infringement Allegations

Claim Element (from Independent Claim 1 and Dependent Claim 3) Alleged Infringing Functionality Complaint Citation Patent Citation
a peripheral device information collection unit which collects peripheral device information indicating which ones of network devices are connected to the network Network input interfaces (e.g., Bluetooth or WiFi) that collect device information when joining or operating within a SmartThings network. This is allegedly performed via protocols like the "discoveryRequest" interaction type. ¶39, ¶40 col. 4:19-27
a peripheral device information storage unit which stores home network information... wherein the home network information is a chronological list of network devices connected to the network Memory which stores home network information including a chronological list of devices within the SmartThings network, enabling communication and status checks. ¶39 col. 4:28-34, col. 8:14-17
a peripheral device information transmission unit [and] a peripheral device information reception unit WiFi circuitry used for communicating information with other devices within the SmartThings network. ¶39 col. 4:35-43
a peripheral device information collation unit which collates the received home network information with the home network information stored in the peripheral device information storage unit to judge whether the remote device belongs to the same network A processor or CPU that collates stored information with received information to determine if a device is within the same SmartThings network. This is allegedly evidenced by the system preventing a device from being added if it is already registered. ¶39, ¶40 col. 4:44-51
  • Identified Points of Contention:
    • Scope Questions: A central question may be whether the claimed "network device" performing collection and collation requires these functions to occur locally on the device itself. The complaint's evidence points to a system that may rely on cloud-based interactions ("discoveryRequest," "stateRefreshRequest") (Compl. ¶40). This raises the question of whether a system that authenticates devices via a central cloud service meets the claim limitation of a device collating its own stored list with a list received from another device.
    • Technical Questions: What evidence does the complaint provide that the "home network information" stored and exchanged by Samsung devices is specifically a "chronological list" as required by claim 3? The infringement theory relies on interactions like "discoveryRequest," but it is not specified whether this protocol involves exchanging complete chronological histories of network connections.

8,982,086 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
An information processing apparatus, comprising: a touch panel configured to detect a contact of a finger of a user A fingerprint sensor integrated into the Accused Products. ¶61 col. 8:27-28
a detector configured to detect first information necessary for an identification of the user when the contact is detected A detector, such as the user's fingerprint, used to identify the user when contact is made with the touch panel. ¶61 col. 8:29-32
a memory that is configured to store second information relating to the identification of the user Memory configured to store user identification information, such as registered fingerprint data. ¶61 col. 8:36-38
a first controller configured to control the information processing apparatus to operate in one of two operating modes A primary processor (e.g., CPU) that controls the apparatus to operate in different modes. ¶61 col. 8:39-41
a second controller configured to execute a specified process when the first information and the second information are coincident within one of the modes A secondary controller (e.g., Samsung Knox) that executes a process, such as unlocking the device, when the detected fingerprint matches the stored fingerprint data. A provided diagram illustrates the "Knox Biometrics" architecture involving a secure "TrustZone" (Compl. p. 40). ¶61 col. 8:42-45
wherein: in one of the modes, there are provided a first registering mode for inputting input information by a pad of a finger of a user, and a second registering mode for inputting input information by an end of the finger of the user The implementation of two registering modes that provide input from different portions of the finger during the fingerprint registration process. A screenshot from a Samsung tutorial video shows a user rolling their finger to "capture your fingerprint from multiple angles" (Compl. p. 39). ¶61 col. 8:45-53
  • Identified Points of Contention:
    • Scope Questions: The key dispute will likely concern the meaning of "a first registering mode" and "a second registering mode." Does a single, continuous fingerprint enrollment process where the user is prompted to move their finger to capture different areas (tip, pad, sides) constitute two distinct "modes" as required by the claim? Or does the claim require two separate, user-initiated processes for registering a finger pad versus a finger end?
    • Technical Questions: What evidence demonstrates that the Accused Products' software functionally distinguishes between input from a "pad" versus an "end" of the finger to control operation in different modes? The complaint alleges this occurs during registration (Compl. ¶61), but does not specify how or if this distinction is used post-registration to execute different processes, as the claim structure suggests.

V. Key Claim Terms for Construction

For the ’161 Patent

  • The Term: "peripheral device information collation unit"
  • Context and Importance: This term is the functional core of the asserted claims. The outcome of the infringement analysis may depend on whether "collation" requires a direct, peer-to-peer comparison of device lists on a local network or if it can encompass a device checking its status against a master list maintained by a central or cloud-based server. Practitioners may focus on this term because the architecture of the accused SmartThings system, with its reliance on API calls like "discoveryRequest," suggests the possibility of a centralized architecture rather than the decentralized one depicted in the patent's figures (Compl. ¶36, p. 10; Compl. ¶40, p. 21).
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself—"collates the received home network information with the home network information stored"—does not explicitly forbid the "received" information from originating from or being arbitrated by a central server acting on behalf of another device.
    • Evidence for a Narrower Interpretation: The patent's abstract describes judging "whether the remote device belongs to the same network as the local device," and Figure 1 depicts a closed Local Area Network (LAN) (Compl. p. 10), which may suggest the invention was contemplated for direct device-to-device verification without an external authority.

For the ’086 Patent

  • The Term: "a first registering mode ... by a pad of a finger ... and a second registering mode ... by an end of the finger"
  • Context and Importance: This limitation is critical because standard fingerprint registration typically involves capturing a composite image of a single finger. Infringement will hinge on whether Samsung's process of prompting a user to reposition their finger to capture multiple angles constitutes two distinct "modes." Practitioners may focus on this term because the complaint's visual evidence shows a single, fluid registration process (Compl. p. 39), whereas the patent's text and figures could be interpreted to imply two separate and distinct registration procedures (Compl. p. 35, Fig. 12B).
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The term "mode" is not explicitly defined, and one could argue that prompting for a different part of the finger constitutes a change in the "mode" of data collection within a single user workflow.
    • Evidence for a Narrower Interpretation: The patent specification distinguishes inputs "by finger tip or finger pad" and illustrates them in a table as distinct "input methods" that can be linked to different operations (Compl. p. 35, Fig. 12B). This may support an interpretation that "registering modes" must be separate and selectable procedures, not merely different phases of one continuous registration event.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement across all asserted patents, stating that Defendant provides user manuals and websites that instruct customers on how to use the accused features, such as setting up a SmartThings network, using the Gallery application, or activating voice commands for the camera (Compl. ¶¶43, 64, 84, 100, 118, 139, 158). The complaint also pleads contributory infringement, alleging that hardware and software components (e.g., fingerprint sensors, Wi-Fi chipsets, camera modules) are material parts of the patented inventions and are not staple articles of commerce suitable for substantial non-infringing use (Compl. ¶¶46, 67, 87, 103, 121, 142, 161).
  • Willful Infringement: The complaint alleges willful infringement based on Defendant's alleged knowledge of the patents. It claims Defendant was put on notice of the '161, '086, '848, '590, '815, and '757 patents through correspondence beginning on July 7, 2021, and of the '241 patent at least by the filing of the complaint (Compl. ¶¶48, 69, 89, 105, 123, 144, 163). The complaint alleges that Defendant’s continued infringement despite this knowledge and the patents’ confirmed validity after reexamination constitutes willful, deliberate, and egregious conduct (Compl. ¶¶49, 70, 90, 106, 124, 145, 164).

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

  • A core issue will be one of definitional scope: can claim terms rooted in the context of device-level operations be construed to cover modern, cloud-centric architectures? Specifically, for the '161 patent, does a "collation unit" on a device that verifies membership via a cloud service meet the claim limitations? For the '086 patent, does a single, continuous user action like rolling a finger during enrollment constitute two distinct "registering modes"?
  • A key evidentiary question will be one of technical implementation: beyond marketing materials and user interfaces, what is the underlying technical reality of the accused systems? Do Samsung’s devices actually create, store, and exchange "chronological lists" of network devices, or do they use a different method for network verification? Do they functionally distinguish between finger "pad" and "end" inputs to control separate operating modes, or is this merely a method to create a composite fingerprint template?
  • A significant legal question will be the impact of prior proceedings: how will the successful ex parte reexaminations of three asserted patents, instigated by a major competitor (Apple Inc.), influence Defendant's ability to mount an invalidity defense? This history may strengthen the presumption of validity and could factor heavily into questions of litigation strategy and potential willfulness.