DCT

5:25-cv-00052

Maxell Ltd v. Samsung Electronics Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:25-cv-00052, E.D. Tex., 04/21/2025
  • 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 the district, specifically a 216,000-square-foot facility in Plano, Texas, that serves as a hub for its smartphone product line. Venue is alleged against the foreign parent, Samsung Electronics Co., Ltd., on the basis that it is a foreign corporation and that it commits infringing acts in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s extensive line of smart devices, including smartphones, tablets, appliances, and networking hubs operating within the Samsung SmartThings ecosystem, infringes ten patents related to network communication, content management, power management, image processing, and user interface design.
  • Technical Context: The dispute centers on the architecture and operation of modern "Internet of Things" (IoT) or "smart home" ecosystems, where numerous distinct devices interoperate to provide connected features to a user.
  • Key Procedural History: The complaint alleges a history of licensing discussions, noting that Samsung previously licensed a portfolio from Hitachi Consumer Electronics Co., Ltd. (Maxell's predecessor-in-interest) in 2011, but that license has since expired. Plaintiff alleges providing specific notice of infringement to Samsung beginning in July 2021 and continuing through correspondence. The complaint also notes parallel actions filed in the International Trade Commission, Germany, and Japan, indicating a global litigation campaign.

Case Timeline

Date Event
2002-04-03 Priority Date for U.S. Patent No. 7,577,417 (’417 Patent)
2004-07-21 Priority Date for U.S. Patent No. 8,180,198 (’198 Patent)
2005-08-30 Priority Date for U.S. Patent No. 11,812,091 (’091 Patent)
2005-11-24 Priority Date for U.S. Patent No. 7,952,645 (’645 Patent)
2006-09-27 Priority Date for U.S. Patent No. 11,277,650 (’650 Patent)
2008-11-28 Priority Date for U.S. Patent No. 8,471,950 (’950 Patent)
2009-08-18 U.S. Patent No. 7,577,417 ('417 Patent) Issued
2011-01-01 Samsung enters into Patent Sale Agreement with Hitachi (approx.)
2011-05-31 U.S. Patent No. 7,952,645 ('645 Patent) Issued
2012-05-15 U.S. Patent No. 8,180,198 ('198 Patent) Issued
2013-06-25 U.S. Patent No. 8,471,950 ('950 Patent) Issued
2014-07-15 Priority Date for U.S. Patent No. 10,812,646 (’646 Patent)
2014-08-29 Priority Date for U.S. Patent No. 11,026,088 (’088 Patent)
2017-02-17 Priority Date for U.S. Patent No. 12,160,681 (’681 Patent)
2019-06-14 Priority Date for U.S. Patent No. 10,783,228 (’228 Patent)
2020-09-22 U.S. Patent No. 10,783,228 ('228 Patent) Issued
2020-10-20 U.S. Patent No. 10,812,646 ('646 Patent) Issued
2021-06-01 U.S. Patent No. 11,026,088 ('088 Patent) Issued
2021-07-07 Maxell alleges providing notice of infringement for '417, '198, '228, '646 Patents
2021-12-29 Maxell alleges providing notice of infringement for '088, '650, '950 Patents
2022-03-15 U.S. Patent No. 11,277,650 ('650 Patent) Issued
2023-09-08 Maxell alleges providing notice of infringement for '091 Patent
2023-11-07 U.S. Patent No. 11,812,091 ('091 Patent) Issued
2024-11-28 Maxell alleges providing notice of infringement for '681 Patent
2024-12-03 U.S. Patent No. 12,160,681 ('681 Patent) Issued
2025-04-21 Complaint Filing Date

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

U.S. Patent No. 11,026,088 - "Communication System, Communication Device, And Communication Terminal Device," Issued June 1, 2021

The Invention Explained

  • Problem Addressed: The patent describes the technical challenge of allowing a temporary, external user (e.g., a visitor to a company) to securely use a private wireless network (e.g., a corporate Wi-Fi network) without compromising security or convenience ('088 Patent, col. 2:4-9).
  • The Patented Solution: The invention proposes a system where a "first communication terminal" (e.g., an internal employee's device) grants permission to a "second communication terminal" (the external user's device) to connect to a central "communication device" (such as a projector) via an "access point device" ('088 Patent, col. 10:37-41; Fig. 1). This permission-based framework allows the external user's device to interact with the central device (e.g., to control a display) only after being authorized by an internal device ('088 Patent, col. 11:1-6). The complaint includes a figure from the patent showing this architecture, where Terminal A (internal) and Terminal B (external) connect to a projector (communication device) via a wireless LAN access point (Compl. p. 11).
  • Technical Importance: This architecture provides a method for managing guest access to networked resources that is controlled by a trusted internal user rather than relying solely on network-level credentials, potentially simplifying temporary access in collaborative environments (Compl. ¶36).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶38).
  • The essential elements of claim 1 of the '088 Patent are:
    • A communication system comprising a communication device, a first communication terminal, a second communication terminal, and an access point device.
    • The communication device configured to connect to the first and second terminals via the access point and control displaying data received from the second terminal.
    • The first terminal configured to connect to the communication device via the access point and transmit a command to remotely control a display operation on the communication device.
    • The second terminal configured to connect to the communication device via the access point.
    • Wherein permission from the first terminal is required for the second terminal to establish a connection with the communication device.
  • The complaint reserves the right to assert additional claims (Compl. ¶38).

U.S. Patent No. 11,277,650 - "Contents Receiving System And Client," Issued March 15, 2022

The Invention Explained

  • Problem Addressed: The patent addresses the need to personalize content for different users who are simultaneously interacting with a shared media system ('650 Patent, col. 2:24-27). For example, different family members may want to see different supplementary information while watching the same television program.
  • The Patented Solution: The invention describes a system with a "main terminal" and multiple "subsidiary terminals" ('650 Patent, col. 37:58-61). The main terminal stores and displays primary content and also holds device-specific identification (ID) information for each subsidiary terminal. It uses this ID to transmit personalized or associated content to the correct subsidiary terminal, which then reproduces that content on its own display ('650 Patent, Fig. 1).
  • Technical Importance: This system allows for a "second screen" experience where individual users can receive tailored content on their personal devices that is contextually linked to the primary content being viewed on a central screen, enhancing the user experience in a multi-user environment (Compl. ¶57).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶60).
  • The essential elements of claim 1 of the '650 Patent are:
    • A contents reproducing system having a main terminal and a plurality of subsidiary terminals.
    • The main terminal comprising a storage for contents, a display, and a first controller for transmission/reception, where the main terminal stores device specific IDs for the subsidiary terminals and association information linking specific contents to specific IDs.
    • Each subsidiary terminal comprising a second display and a second controller.
    • The subsidiary terminal transmits its device specific ID to the main terminal when connecting.
    • The main terminal determines connectability and transmits content to the subsidiary terminal based on the association information, and the subsidiary terminal reproduces the received content.
  • The complaint reserves the right to assert additional claims (Compl. ¶60).

Multi-Patent Capsule: U.S. Patent No. 7,577,417

  • Patent Identification: U.S. Patent No. 7,577,417, "Mobile Terminal," Issued August 18, 2009.
  • Technology Synopsis: The patent addresses power management in mobile devices by controlling the processor's clock frequency (Compl. ¶79). It teaches a system where the clock frequency is increased to perform a specific task (e.g., image processing) even when the device is in a "closed condition" (e.g., standby), and then decreased upon completion to conserve battery life (Compl. ¶82).
  • Asserted Claims: At least claims 1 and 3 (Compl. ¶83).
  • Accused Features: The power management techniques in Samsung smartphones, where the processor clock speed is allegedly adjusted to execute tasks like image decoding with the Camera application while the device is in a closed state (Compl. ¶¶ 83, 85).

Multi-Patent Capsule: U.S. Patent No. 8,180,198

  • Patent Identification: U.S. Patent No. 8,180,198, "Playlist creating apparatus and method...," Issued May 15, 2012.
  • Technology Synopsis: The patent is directed to a digital image recording and reproducing apparatus that simplifies playlist creation (Compl. ¶99). The system allows a user to select a digital image, and the apparatus then automatically identifies and adds other images with similar related information to the playlist (Compl. ¶100).
  • Asserted Claims: At least claims 1-16 (Compl. ¶101).
  • Accused Features: The Samsung Gallery application on smartphones and tablets, which allegedly includes features like "Auto-updating albums" that generate playlists based on face-recognition or other criteria (Compl. ¶102).

Multi-Patent Capsule: U.S. Patent No. 11,812,091

  • Patent Identification: U.S. Patent No. 11,812,091, "Multimedia player displaying operation panel depending on contents," Issued November 7, 2023.
  • Technology Synopsis: The patent describes a multimedia player that dynamically changes the user interface based on the content being played (Compl. ¶116). It can display a first panel with linear controls (e.g., play, pause) or a second panel with interactive buttons for communicating with an external server, based on time-related and panel-related information received with the content (Compl. ¶116).
  • Asserted Claims: At least claim 1 (Compl. ¶117).
  • Accused Features: Samsung TV and Netflix applications on Samsung devices, which are alleged to alternatively display linear or interactive operation buttons alongside reproduced content based on information received from a server (Compl. ¶117, 119).

Multi-Patent Capsule: U.S. Patent No. 7,952,645

  • Patent Identification: U.S. Patent No. 7,952,645, "Video processing apparatus and mobile terminal apparatus," Issued May 31, 2011.
  • Technology Synopsis: The patent addresses visual display signal processing for mobile devices, particularly for optimizing image quality and power consumption (Compl. ¶¶ 132, 136). The invention teaches detecting "pattern portions" (e.g., letterbox bars or wallpaper) in a video signal and controlling a corrector to not apply color correction to those portions, focusing corrections only on the main content (Compl. ¶138).
  • Asserted Claims: At least claim 1 (Compl. ¶137).
  • Accused Features: The Gallery application and Portrait mode in Samsung smartphones and tablets, which allegedly do not perform certain color corrections to pattern portions of an image in modes like "Food mode" or "Portrait video" (Compl. ¶138).

Multi-Patent Capsule: U.S. Patent No. 8,471,950

  • Patent Identification: U.S. Patent No. 8,471,950, "Signal processor for adjusting image quality of an input picture signal," Issued June 25, 2013.
  • Technology Synopsis: The patent discloses a signal processor for automatic image quality control, such as in a camera (Compl. ¶151). The system identifies specific features in an image (e.g., by detecting changes in pixel features), creates a region that excludes those features, and then uses an evaluated value from the remaining region to control image processing (Compl. ¶151).
  • Asserted Claims: At least claim 1 (Compl. ¶152).
  • Accused Features: Image signal processors (ISPs) in Samsung devices that allegedly perform face, eye, or pet detection and then remove pixels from those specific regions to perform value extraction for further processing, such as in Portrait mode (Compl. ¶153).

Multi-Patent Capsule: U.S. Patent No. 10,783,228

  • Patent Identification: U.S. Patent No. 10,783,228, "Information processing device, application software start-up system...," Issued September 22, 2020.
  • Technology Synopsis: The patent describes a system of two interacting devices for biometric authentication and display (Compl. ¶166). A first device (e.g., a wearable) acquires dynamic biometric data (like heart rate), while a second device (e.g., a smartphone) acquires static data (like a fingerprint) for authentication and then displays information based on the dynamic data received from the first device (Compl. ¶166).
  • Asserted Claims: At least claim 1 (Compl. ¶167).
  • Accused Features: The interaction between Samsung Galaxy Watches/Rings and Samsung smartphones, where the phone authenticates a user with a fingerprint or face unlock and then displays information (e.g., fall detection, heart rhythm notifications) based on biometric data received from the watch (Compl. ¶¶ 167-168).

Multi-Patent Capsule: U.S. Patent No. 10,812,646

  • Patent Identification: U.S. Patent No. 10,812,646, "Portable terminal apparatus," Issued October 20, 2020.
  • Technology Synopsis: The patent discloses a portable terminal that manages its display mode when waking from sleep, based on its ability to communicate with an external device (Compl. ¶181). For example, if it can communicate with an external device it was previously controlling, it displays a control icon on the unlock screen; otherwise, it shows a standard unlock screen (Compl. ¶181).
  • Asserted Claims: At least claims 1-8 (Compl. ¶182).
  • Accused Features: Samsung smartphones and tablets running applications like Samsung Music or Casting functions, which are alleged to implement multiple display modes, including displaying control icons on a locked screen to communicate with an external device (Compl. ¶182).

Multi-Patent Capsule: U.S. Patent No. 12,160,681

  • Patent Identification: U.S. Patent No. 12,160,681, "Video transmitter apparatus and video receiver apparatus," Issued December 3, 2024.
  • Technology Synopsis: The patent is directed to a video transmitting apparatus that establishes a connection with a display, requests and receives capability information from that display, and then configures the audio/video stream parameters based on that information (Compl. ¶197). The system uses request messages with incrementing numbers to manage the communication sequence (Compl. ¶197).
  • Asserted Claims: At least claim 1 (Compl. ¶198).
  • Accused Features: Samsung devices with Smart View or screen mirroring functions, which are alleged to use Wi-Fi Direct to connect to a display, exchange capability information, and configure the video stream accordingly (Compl. ¶¶ 198, 200).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are collectively Samsung's smart devices and the associated SmartThings ecosystem (Compl. ¶¶ 38, 60). The complaint provides an extensive, non-exhaustive list of products including Galaxy smartphones, tablets, laptops, watches, SmartThings hubs and stations, and a wide array of smart appliances like refrigerators, ranges, washers, dryers, and vacuums (Compl. ¶¶ 39, 61).

Functionality and Market Context

  • The complaint alleges that these devices function as a cohesive ecosystem where they act as nodes connected via an access point device, such as a Samsung hub, router, or the SmartThings cloud (Compl. ¶40). A diagram from Samsung's developer website is included to illustrate this architecture, showing a SmartThings Hub connecting various local devices (Z-Wave, Zigbee, Wi-Fi) and also communicating with the SmartThings Cloud (Compl. p. 24). Within this system, devices take on different roles; for example, a smartphone can act as a control terminal for onboarding and managing other devices like appliances, which in turn report status and event data back to the smartphone for display (Compl. ¶40). The complaint alleges these devices communicate using specific "Interaction Types" like "discoveryRequest" and "stateRefreshRequest" to manage the network and exchange data (Compl. ¶¶ 42-43).

IV. Analysis of Infringement Allegations

U.S. Patent No. 11,026,088 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a communication system comprising: a communication device, a first communication terminal, a second communication terminal, and an access point device... The Samsung SmartThings ecosystem, where a device with a display (e.g., a Galaxy smartphone) acts as the communication device, a device used for onboarding (e.g., another smartphone) acts as the first terminal, a smart appliance acts as the second terminal, and the SmartThings cloud/hub acts as the access point. ¶40 col. 10:37-41
the communication device is configured to...control displaying of data received from the second communication terminal... A Galaxy smartphone or tablet displays data received from a SmartThings appliance, such as events, notifications, device status, or diagnostics. ¶40 col. 11:1-6
the first communication terminal is configured to...transmit a command to remotely control a display operation on the communication device... A device used for onboarding (e.g., a smartphone or tablet) transmits commands that control the display on another device within the ecosystem. ¶40 col. 11:7-10
the second communication terminal is configured to connect to the communication device via the access point device... A SmartThings appliance connects to a Galaxy smartphone via the SmartThings cloud or hub. ¶40 col. 11:11-13
permission from the first communication terminal is required for the second communication terminal to establish a connection with the communication device. As part of the onboarding process, the first terminal (e.g., a smartphone) provides permission for the second terminal (e.g., a smart refrigerator) to establish a connection with the communication device (e.g., another smartphone that will display refrigerator status). The complaint includes a workflow diagram showing the SmartThings App providing access credentials to connect a device. (Compl. p. 25). ¶40 col. 11:14-17
  • Identified Points of Contention:
    • Scope Questions: The complaint's theory suggests that a single physical product (e.g., a Galaxy smartphone) may embody both the "communication device" and the "first communication terminal" at different times or in different contexts. A central question may be whether the claim requires these to be structurally distinct entities or if they can be roles fulfilled by the same hardware. The patent's figures depict them as separate boxes (Compl. p. 11).
    • Technical Questions: The patent describes a system for a temporary, external user. A question will be whether Samsung's onboarding process for a consumer's own devices within their home network performs the same function as granting temporary network access to an "external" user as contemplated by the patent's specification.

U.S. Patent No. 11,277,650 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A contents reproducing system having a main terminal and a plurality of subsidiary terminals... The Samsung SmartThings ecosystem, where a Galaxy smartphone, tablet, or Family Hub refrigerator can act as a "main terminal," and other devices like watches, tablets, or other appliances can act as "subsidiary terminals." ¶62 col. 37:58-61
the main terminal comprising: a storage storing contents...a display...a first controller...the main terminal storing...device specific ID information of the subsidiary terminals...and association information... A Galaxy smartphone (as the main terminal) has memory (storage), a display, and a processor (controller). It stores device identifiers for other SmartThings devices ("My Devices") and association information linking them to specific events, notifications, or favorites lists. ¶62 col. 37:62-38:2
each of the subsidiary terminals comprising: a second display...and a second controller... A subsidiary device like a Galaxy Watch or another tablet includes its own display and processor. ¶62 col. 38:3-5
the second controller...transmitting the device specific ID information to the main terminal when connecting to the main terminal... A subsidiary device transmits its identifier to the main terminal during onboarding or status updates within the SmartThings network to establish its identity. ¶62 col. 38:7-12
the main terminal...transmits the content stored in the storage to the subsidiary terminal...based on the association information...the subsidiary terminal reproduces the received content... The main terminal (smartphone) transmits specific content (e.g., a notification about a completed laundry cycle) to the associated subsidiary terminal (e.g., a Galaxy Watch), which then displays the notification. The complaint shows a diagram of the SmartThings cloud architecture facilitating such connections (Compl. p. 43). ¶62 col. 38:13-19
  • Identified Points of Contention:
    • Scope Questions: The dispute may turn on the definitions of "main terminal" and "subsidiary terminal." A key question is whether these terms imply a fixed hierarchical relationship as depicted in the patent's figures, or if they can describe the fluid, peer-to-peer roles devices assume in the accused SmartThings ecosystem, where a smartphone might be a "main terminal" for a refrigerator but a "subsidiary terminal" for a smart TV.
    • Technical Questions: It will be a factual question whether the "content" alleged to be transmitted (e.g., "Events," "Notifications," "device status") meets the claim's requirement of being "content stored in the storage" that is transmitted based on "association information," or if it is merely real-time system messaging that functions differently from the content personalization system described in the patent.

V. Key Claim Terms for Construction

For the ’088 Patent:

  • The Term: "communication device" and "communication terminal"
  • Context and Importance: The infringement theory depends on mapping these distinct claim terms to various, and sometimes identical, Samsung products within the SmartThings ecosystem. The definitions will be critical to determining if the accused system architecture meets the claim limitations. Practitioners may focus on whether these terms require structurally separate devices or can refer to different software functionalities within a single device.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claims define the terms by their function (e.g., the "communication device" controls displaying of data; the "first communication terminal" transmits a command). This functional language may support an argument that any device performing the claimed function meets the limitation, regardless of its form factor or other capabilities.
    • Evidence for a Narrower Interpretation: The patent's figures, such as Figure 1, consistently depict the "communication device," "first communication terminal," and "second communication terminal" as separate physical boxes, suggesting they are distinct hardware components ('088 Patent, Fig. 1). The specification also describes the "communication device" as a "projector" and the terminals as separate user devices, which may support a narrower construction limited to such distinct apparatuses ('088 Patent, col. 11:4-5).

For the ’650 Patent:

  • The Term: "main terminal" and "subsidiary terminal"
  • Context and Importance: Similar to the '088 Patent, the infringement case hinges on applying these terms to the flexible roles of Samsung's products. The construction will determine whether a hierarchical "main/subsidiary" relationship is a required structural element of the claim or merely a description of the data flow.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claims define the terminals by their role in the system: the "main terminal" stores and distributes content based on IDs, while "subsidiary terminals" receive and reproduce it. This could support a reading where any device performing the "main" function in a given transaction is the "main terminal."
    • Evidence for a Narrower Interpretation: The patent's detailed description and figures consistently show a central "main content receiving display unit" (100) communicating with separate "subsidiary content control receivers" (101, 102), implying a fixed, hub-and-spoke architecture rather than a peer-to-peer network where roles can be fluid ('650 Patent, Fig. 1).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement for all asserted patents. For the '088 and '650 Patents, this is based on Samsung allegedly instructing its customers, through user manuals and websites, to operate the SmartThings ecosystem in an infringing manner (Compl. ¶¶ 46-47, 68-69). It is also alleged that the accused products are material parts of the patented inventions with no substantial non-infringing use (Compl. ¶¶ 49-50, 71-72).
  • Willful Infringement: The complaint alleges willful infringement for all asserted patents based on alleged pre-suit knowledge. It specifically references correspondence sent to Samsung identifying the '088 and '650 Patents and accused products on December 29, 2021, and similar notices for the other patents on various dates starting in July 2021 (Compl. ¶¶ 51, 73, 93, 110, 126, 145, 160, 175, 191, 207).

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

  • A core issue will be one of definitional scope: can the terms "communication device," "main terminal," and "subsidiary terminal," which are described in the patents with reference to distinct hardware in specific roles, be construed to cover the fluid, software-defined roles that multi-purpose devices like smartphones and appliances assume within Samsung's modern, cloud-centric IoT ecosystem?
  • A second central question will be one of functional correspondence: does the routine operational messaging within the Samsung SmartThings network (e.g., status updates, device onboarding protocols) perform the specific functions required by the claims, such as granting permission to an "external user" ('088 Patent) or distributing personalized "content" based on user IDs ('650 Patent), or is there a fundamental mismatch in the technical problems being solved?
  • Given the extensive history of communication alleged in the complaint, a key evidentiary question for willfulness and damages will be the substance and timing of Samsung's knowledge regarding each of the ten asserted patents and the accused functionalities.