DCT

6:12-cv-00894

Ericsson Inc v. Samsung Electronics Co Ltd

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 6:12-cv-00894, E.D. Tex., 01/29/2013
  • Venue Allegations: Plaintiff alleges venue is proper because Defendants conduct substantial business in the district, including selling, offering for sale, and distributing the accused products through intermediaries and interactive websites, and have placed these products into the stream of commerce with the expectation of use by consumers in the Eastern District of Texas.
  • Core Dispute: Plaintiff alleges that Defendant’s extensive portfolio of cellular telephones, tablet computers, televisions, and other network-capable electronic devices infringes eleven of its patents after Defendant refused to renew a long-standing portfolio license on Fair, Reasonable, and Non-Discriminatory (FRAND) terms.
  • Technical Context: The patents-in-suit cover a broad range of foundational technologies in modern telecommunications, including radio receiver architecture, speech compression algorithms, user interface methods, and data transmission protocols.
  • Key Procedural History: The complaint states that Samsung was a licensee to Ericsson’s standard-essential patents from 2001, with a renewal in 2007, but that the license has now expired. The suit was filed after nearly two years of unsuccessful negotiations to renew the license. Several of the asserted patents were allegedly the subject of prior litigation between the parties or were presented to Samsung during the recent licensing negotiations, which may be relevant to the allegations of willful infringement.

Case Timeline

Date Event
1997-07-01 ’052 Patent Priority Date
1997-10-29 ’832 Patent Priority Date
1997-12-30 ’931 Patent Priority Date
1998-03-04 ’359 Patent Priority Date
1998-10-13 ’506 Patent Priority Date
1999-04-06 ’223 Patent Priority Date
1999-05-19 ’917 Patent Priority Date
1999-08-05 ’310 Patent Priority Date
1999-12-22 ’556 Patent Priority Date
2000-02-22 '052 Patent Issue Date
2000-03-29 ’215 Patent Priority Date
2000-05-02 '359 Patent Issue Date
2001 Samsung first licensed Ericsson's patents
2001-10-09 '556 Patent Issue Date
2002-07-09 '310 Patent Issue Date
2002-09-03 '917 Patent Issue Date
2002-10-29 '506 Patent Issue Date
2003-02-11 '223 Patent Issue Date
2003-09-23 '832 Patent Issue Date
2004-08-03 '215 Patent Issue Date
2006 Prior litigation filed involving '359 and '506 patents
2007 Samsung renewed license with Ericsson
2007-08-08 ’992 Patent Priority Date
2012-05-01 '992 Patent Issue Date
2013-01-15 '931 Reissue Patent Issue Date
2013-01-29 Complaint Filing Date

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

U.S. Patent No. 6,029,052 - "Multiple-Mode Direct Conversion Receiver"

The Invention Explained

  • Problem Addressed: The patent describes the difficulty of creating multi-band wireless devices (e.g., phones that work on GSM, PCS, and DCS systems) using conventional "superheterodyne" receivers, as that approach requires costly and space-consuming duplication of hardware components for each frequency band ('052 Patent, col. 1:40-63).
  • The Patented Solution: The invention proposes using a "direct conversion" architecture instead. In this design, received radio signals are converted to frequencies within the bandwidth of the original signal, which allows key hardware components—such as mixers, oscillators, and filters—to be re-used across different frequency bands, simplifying the circuitry and reducing size and cost ('052 Patent, Abstract; col. 2:7-12; Fig. 2).
  • Technical Importance: This approach facilitated the development of smaller and more economical mobile devices capable of operating seamlessly across various wireless communication standards, a key factor for consumer mobility ('052 Patent, col. 1:28-40).

Key Claims at a Glance

  • The complaint asserts infringement of one or more claims of the patent (Compl. ¶36). Independent claim 1 includes the following essential elements:
    • Receiving means for receiving signals in one of a plurality of frequency bands.
    • Amplifier means with at least one band-specific amplifier for each band.
    • Quadrature generation means for creating in-phase (I) and quadrature (Q) signals.
    • Low pass filtering means for filtering the I and Q signals.
    • Baseband processing means.
    • The receiver uses direct conversion for all received signals.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 6,058,359 - "Speech Coding Including Soft Adaptability Feature"

The Invention Explained

  • Problem Addressed: The patent explains that traditional speech coders adapt to different types of sound (e.g., voice vs. background noise) by using rigid classification schemes to select a specific coding mode. An incorrect classification can lead to a poor choice of mode and severe degradation in audio quality. This approach also requires transmitting extra "overhead bits" to inform the receiver of the selected mode, limiting efficiency ('359 Patent, col. 1:10-49).
  • The Patented Solution: The invention discloses a "softly adaptive" coding method. It adapts the coding operation based on parameters that are already generated by the coder itself (such as codebook gains in a CELP coder), rather than on a separate classification step. This "soft" approach avoids the need for overhead bits and allows for a more fluid, continuous adaptation to the characteristics of the speech signal ('359 Patent, Abstract; col. 1:50-63; Fig. 1A).
  • Technical Importance: This technique enables higher-quality and more efficient speech compression by avoiding the risks of mis-classification and eliminating the need for overhead data transmission ('359 Patent, col. 1:50-63).

Key Claims at a Glance

  • The complaint asserts infringement of one or more claims (Compl. ¶39). Independent claim 1 includes the following essential elements:
    • An input for receiving an original speech signal and an output for the coded signal.
    • A coder that selectively performs either a standard coding operation or an adaptation of that operation.
    • A controller that receives and stores information currently being used by the coder.
    • The controller signals the coder to perform the adaptation based on both the current information and previously stored information.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Reissue Patent No. 43,931 - "Radiotelephones Having Contact-Sensitive User Interfaces and Methods of Operating Same"

  • Technology Synopsis: This patent addresses methods of user input for radiotelephones. The invention describes a contact-sensitive transducer, such as a touch-sensitive strip on the side or face of a device, that produces an output signal characterizing user contact to control the display, such as scrolling through lists or initiating actions associated with displayed items (Re. RE43,931 Patent, Abstract).
  • Asserted Claims: One or more claims (Compl. ¶42).
  • Accused Features: The complaint alleges that user interface features in Samsung's cellular telephones and tablet computers infringe the patent (Compl. ¶42).

U.S. Patent No. 6,301,556 - "Reducing Sparseness in Coded Speech Signals"

  • Technology Synopsis: This patent relates to improving speech quality in digital codecs. The disclosed method performs an "anti-sparseness" operation on sparse codebook values, which have few non-zero values, to produce output codebook values with a greater density of non-zero values. This process is intended to reduce perceived degradation in the coded speech signals ('556 Patent, Abstract).
  • Asserted Claims: One or more claims (Compl. ¶45).
  • Accused Features: The complaint accuses the speech coding functionality within Samsung's cellular telephones and tablet computers (Compl. ¶45).

U.S. Patent No. 6,418,310 - "Wireless Subscriber Terminal Using Java Control Code"

  • Technology Synopsis: The patent describes a wireless device whose internal operations are controlled by a program written in the JAVA language. This program, comprising JAVA bytecodes, is stored in Read-Only Memory (ROM) and executed by a ROM-stored JAVA interpreter ('310 Patent, Abstract). This architecture contrasts with devices running native machine code compiled for a specific processor.
  • Asserted Claims: One or more claims (Compl. ¶48).
  • Accused Features: The complaint accuses the control software in Samsung's cellular telephones and tablet computers (Compl. ¶48).

U.S. Patent No. 6,445,917 - "Mobile Station Measurements With Event-Based Reporting"

  • Technology Synopsis: This patent concerns the method by which a mobile station reports network conditions. Instead of sending periodic measurement reports, the mobile station reports to the network only when a predetermined event occurs or a specific condition is met. This "event-based" system is designed to make reporting more efficient, timely, and relevant ('917 Patent, Abstract).
  • Asserted Claims: One or more claims (Compl. ¶51).
  • Accused Features: The complaint accuses cellular telephones, tablet computers, and various Samsung Evolved Node B base station products (Compl. ¶51).

U.S. Patent No. 6,473,506 - "Signaling Using Phase Rotation Techniques in a Digital Communications System"

  • Technology Synopsis: The invention provides a method for efficiently conveying signaling information (e.g., which modulation scheme is being used) from a transmitter to a receiver. It achieves this by rotating the phase of data symbols according to a unique "phase rotation factor" that corresponds to the information being sent. The receiver can then determine the information by detecting this phase rotation, avoiding the need for additional bandwidth ('506 Patent, Abstract).
  • Asserted Claims: One or more claims (Compl. ¶54).
  • Accused Features: The complaint accuses signaling functionalities within Samsung's cellular telephones and tablet computers (Compl. ¶54).

U.S. Patent No. 6,519,223 - "System and Method for Implementing a Semi Reliable Retransmission Protocol"

  • Technology Synopsis: The patent describes a semi-reliable data retransmission protocol that uses a timer-based trigger for retransmission timeouts. This approach allows the timeout to be defined based on maximum allowable delay, making it insensitive to variations in the data channel rate. The system is designed for use in Automatic Repeat Request (ARQ) protocols ('223 Patent, Abstract).
  • Asserted Claims: One or more claims (Compl. ¶57).
  • Accused Features: The complaint accuses data transmission protocols in a wide range of Samsung devices, including cellular telephones, tablets, televisions, media players, and cameras (Compl. ¶57).

U.S. Patent No. 6,624,832 - "Methods, Apparatus, and Computer Program Products for Providing User Input to an Application Using a Contact-Sensitive Surface"

  • Technology Synopsis: This invention relates to user input on a touch-sensitive surface. It describes using an implement (e.g., a stylus) with differently configured ends to produce distinct "contact point configurations." The application can identify the user's intended input mode (e.g., writing vs. erasing) based on which end of the implement is used and the resulting contact configuration ('832 Patent, Abstract).
  • Asserted Claims: One or more claims (Compl. ¶60).
  • Accused Features: The complaint accuses user interface features in Samsung's cellular telephones and tablet computers (Compl. ¶60).

U.S. Patent No. 6,772,215 - "Method for Minimizing Feedback Responses in ARQ Protocols"

  • Technology Synopsis: The patent discloses a method to minimize the amount of feedback data in Automatic Repeat Request (ARQ) protocols. It describes constructing status messages (S-PDUs) using different mechanisms, such as lists or bitmaps, to indicate erroneous data packets in a way that optimizes performance and minimizes the size of the feedback message ('215 Patent, Abstract).
  • Asserted Claims: One or more claims (Compl. ¶63).
  • Accused Features: The complaint accuses data transmission protocols in Samsung cellular telephones, tablets, televisions, and media players (Compl. ¶63).

U.S. Patent No. 8,169,992 - "Uplink Scrambling During Random Access"

  • Technology Synopsis: The patent describes a random access procedure for a user terminal connecting to a base station. The terminal first uses a general, non-user-specific uplink scrambling sequence for its initial access message. After the initial connection, it receives a second, user-specific scrambling sequence from the base station for subsequent communications. This two-step process facilitates efficient network access ('992 Patent, Abstract).
  • Asserted Claims: One or more claims (Compl. ¶66).
  • Accused Features: The complaint accuses random access procedures in Samsung cellular telephones, tablet computers, and base station products (Compl. ¶66).

III. The Accused Instrumentality

  • Product Identification: The complaint accuses a wide array of Samsung products, including "cellular telephones, tablet computers, televisions, Blu-Ray players, cameras, and other devices for use in a mobile communications network or wireless LAN," as well as base station equipment (Compl. ¶33). For each asserted patent, the complaint lists dozens of specific Samsung model numbers, such as the Samsung Captivate Glide (SGH-I927) and the flagship Galaxy S III smartphone (Compl. ¶¶6, 36, 39).
  • Functionality and Market Context: The complaint does not provide detailed technical descriptions of how the accused products operate. Instead, it asserts that these products, by their nature and intended use in telecommunications networks, necessarily practice the inventions claimed in the patents-in-suit (Compl. ¶¶32-33). The complaint alleges that Samsung has sold "hundreds of millions" of these unlicensed devices since its previous license from Ericsson expired, positioning Samsung as a major market participant whose sales have generated substantial revenue (Compl. ¶6). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not contain claim charts or detailed infringement theories mapping specific claim elements to features of the accused products. The infringement allegations are pleaded generally, asserting that the long list of accused products practice "one or more claims" of each asserted patent (e.g., Compl. ¶¶36, 39). The narrative theory is that the accused products, by complying with various telecommunication standards and providing expected functionalities (e.g., cellular voice and data, speech coding, touch-screen interfaces), inherently implement the patented technologies.

  • Identified Points of Contention:
    • Technical Questions: A primary point of contention for each patent will be factual and evidentiary: does the specific implementation within Samsung's products meet every limitation of the asserted claims? For the '052 Patent, for instance, a key question is whether the accused receivers employ the specific "direct conversion" architecture as claimed, or a different non-superheterodyne design. For the '359 Patent, the dispute may focus on whether Samsung's speech codecs perform a "soft" adaptation based on existing coder parameters or merely a conventional mode-switching that falls outside the claim scope.
    • Scope Questions: The breadth of the claims will be a central issue. For the '310 Patent, a question will be whether the general claim language of using "Java Control Code" can be read to cover the Android operating system's use of a Java-like language and virtual machine, an architecture that post-dates the patent's priority date.

V. Key Claim Terms for Construction

  • For the '052 Patent:

    • The Term: "direct conversion"
    • Context and Importance: This term defines the core of the invention and distinguishes it from the prior art "superheterodyne" circuitry. The outcome of the infringement analysis for the '052 Patent will likely depend entirely on the court's construction of this term.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification provides a functional definition, stating that in direct conversion, "the use of intermediate frequencies is either eliminated or any frequency conversion is limited to frequencies within the bandwidth of the received signals" ('052 Patent, col. 2:9-12). This language could support a construction that covers a variety of receiver architectures that are not superheterodyne.
      • Evidence for a Narrower Interpretation: The detailed description and figures illustrate a specific embodiment of the direct conversion receiver (e.g., Fig. 2). A defendant might argue that the term should be limited to this disclosed structure or its equivalents, potentially excluding different modern receiver designs.

  • For the '359 Patent:

    • The Term: "adaptation of said coding operation"
    • Context and Importance: The patent distinguishes its "softly adaptive" method from prior art "multi-mode" coding. The dispute will likely center on whether the accused functionality is a true "adaptation" as taught by the patent or simply a selection from a discrete set of predefined modes.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The plain language of the claim is broad and could be argued to encompass any change made to the coding process in response to signal characteristics.
      • Evidence for a Narrower Interpretation: The specification repeatedly emphasizes that the invention enables a "completely soft adaptation scheme" based on "parameters already existing in the coder," which allows for an "infinite number of modifications" ('359 Patent, col. 1:53-59). This suggests the term should be construed to require a continuous or quasi-continuous adjustment, rather than a simple selection between a few fixed modes.

VI. Other Allegations

  • Indirect Infringement: The complaint includes boilerplate allegations of induced and contributory infringement for each asserted patent (e.g., Compl. ¶¶36, 39). However, it does not plead specific facts to support the requisite knowledge and intent beyond the general assertion that Samsung knew of the patents and intended for its customers to use the devices in an infringing manner.
  • Willful Infringement: Willfulness is alleged for all asserted patents (e.g., Compl. ¶¶37, 40, 43). The complaint provides a multi-faceted basis for these allegations, asserting pre-suit knowledge based on: (1) Samsung’s status as a former licensee of Ericsson’s patent portfolio from 2001 to 2007 (Compl. ¶6); (2) prior patent litigation between the parties involving some of the same patents (Compl. ¶¶37, 40, 55); and (3) Ericsson’s alleged presentation of certain patents-in-suit to Samsung during the unsuccessful license renewal negotiations that preceded the lawsuit (Compl. ¶¶40, 46, 55).

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

  • A central issue will be one of technical implementation and proof: Can Ericsson demonstrate that Samsung's modern, complex products—operating under standards developed years after many of the patents were filed—practice the specific technical limitations claimed in the patents? This will require a deep evidentiary dive into the architecture and operation of Samsung's chipsets, software, and protocols.
  • A key legal and commercial question will be the impact of the parties' licensing history and FRAND obligations: Given that many of the patents are declared essential to telecommunications standards, the dispute may turn less on binary findings of infringement and validity and more on the judicial determination of a FRAND royalty for Ericsson's portfolio, a determination that would be informed by the parties' prior agreements and rates paid by competitors.
  • A critical question for damages will be willfulness: The complaint alleges a long history of engagement between the parties over this intellectual property, including a prior license, previous lawsuits, and recent negotiations. A court will need to determine whether Samsung’s decision to continue selling products after its license expired constitutes objective recklessness, which could expose it to a finding of willful infringement and the possibility of enhanced damages.