Stasit LLC v. Samsung Electronics America Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Stasit LLC (Florida)
  • Defendant: Samsung Electronics America, Inc. (New York)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: 6:23-cv-00530, W.D. Tex., 07/21/2023
• Venue Allegations: Venue is alleged to be proper based on Defendant maintaining regular and established places of business within the Western District of Texas, including a specific location in Austin, Texas.
• Core Dispute: Plaintiff alleges that Defendant’s smartphones infringe a patent related to the temporal management of incoming communication notifications based on user-defined rules.
• Technical Context: The technology concerns software for selectively filtering smartphone calls and messages based on time, date, and contact information to enhance user privacy and control.
• Key Procedural History: The complaint was filed on July 21, 2023. Subsequent to the filing of the complaint, an ex parte reexamination of the patent-in-suit was requested on November 10, 2023. This proceeding concluded with the issuance of a Reexamination Certificate on September 23, 2024, which cancelled all 20 claims of the patent.

Case Timeline

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

• Patent Identification: U.S. Patent No. 8,855,723, "Temporal Incoming Communication Notification Management," issued October 7, 2014.
• The Invention Explained:
  • Problem Addressed: The patent describes the inadequacy of default smartphone notification systems, which can lead to unwanted interruptions or compromise user privacy ('723 Patent, col. 4:9-17). For example, a notification from a work contact during a social event can cause "stress and anxiety," or a visible call log could reveal sensitive information to an unintended observer ('723 Patent, col. 3:61-4:4).
  • The Patented Solution: The invention proposes a method where a user can define time periods during which certain phone numbers are considered "unauthorized" for notification ('723 Patent, col. 2:9-17). Communications from numbers deemed "temporally allowed" are handled by the phone's "default notification routine" ('723 Patent, col. 2:30-34). However, communications from "not temporally allowed" numbers are routed to a "password-protected masked notification routine," which adds an indication of the communication to a secret, password-protected log and, crucially, "precludes adding an indication of the incoming phone call or incoming text message to a default phone log or message log" ('723 Patent, col. 2:35-54).
  • Technical Importance: The claimed method provides a more granular and secure way to manage notifications than simple call-blocking or "do not disturb" modes, by creating a distinct, hidden communication log accessible only by password ('723 Patent, col. 4:30-36).
• Key Claims at a Glance:
  • The complaint asserts at least independent claim 1 (Compl. ¶18).
  • The essential elements of independent claim 1 include:
    • Receiving user input defining "temporally authorized or unauthorized phone numbers" and associated "time periods."
    • Generating and storing a list based on this input.
    • Comparing incoming communications against this list.
    • If the communication is "temporally allowed," using a "default notification routine" which includes displaying the notification and adding it to a "default phone log."
    • If the communication is "not temporally allowed," using a "password-protected masked notification routine" which includes adding it to a "password-protected phone log" and precluding its display or addition to the default log.
  • The complaint reserves the right to assert additional claims (Compl. ¶24).

III. The Accused Instrumentality

• Product Identification: The complaint identifies "Samsung's smartphones, such as the Samsung Galaxy S23 Ultra" as the Accused Instrumentalities (Compl. ¶16).
• Functionality and Market Context: The complaint does not provide sufficient detail for analysis of the specific accused functionality. It identifies the products and alleges infringement but does not describe which features (e.g., "Do Not Disturb," "Focus Mode," "Bixby Routines") are alleged to practice the claimed method or how those features operate (Compl. ¶16, 18).

IV. Analysis of Infringement Allegations

The complaint states that a claim chart for claim 1 is attached as Exhibit B; however, that exhibit was not included with the public filing (Compl. ¶24). The complaint’s narrative theory alleges that Defendant’s accused smartphones directly infringe, literally or under the doctrine of equivalents, by implementing the method of at least claim 1 (Compl. ¶18). Without a claim chart or more detailed factual allegations, a step-by-step comparison cannot be constructed.

No probative visual evidence provided in complaint.

• Identified Points of Contention:
  • Evidentiary Questions: The central question will be whether Plaintiff can produce evidence that any feature on Samsung's smartphones performs the specific two-pathway process required by claim 1. Specifically, discovery would need to show that an accused feature not only silences or hides a notification but also simultaneously (1) adds an entry for that communication to a distinct, password-protected log and (2) actively "precludes" an entry from being made in the standard, default call or message logs.
  • Technical Questions: A key technical question is whether any accused functionality distinguishes between a "default notification routine" and a "password-protected masked notification routine" as distinct operational modes. The analysis would need to determine if an accused feature like "Do Not Disturb" simply silences all notifications or if it selectively routes specific communications to a separate, secure storage location as the patent claims.

V. Key Claim Terms for Construction

• The Term: "password-protected masked notification routine"

• Context and Importance: This term is the core of the invention's privacy-enhancing feature. Its construction will be critical to determining infringement. The dispute will likely center on whether standard smartphone features that silence or hide notifications meet the requirements of this routine. Practitioners may focus on this term because the patent's description suggests a higher level of security and sequestration than is typical in standard "Do Not Disturb" modes.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent does not provide an explicit definition in a glossary section, which a party could argue leaves the term open to a broader interpretation covering any function that masks a notification from immediate, full display.
  • Evidence for a Narrower Interpretation: The specification describes this routine as one that "precludes immediately displaying the incoming phone call or incoming text message information" and "preclude[s] adding an indication... to a default phone log," while instead adding it to a "password-protected phone log" ('723 Patent, col. 2:46-54). This language suggests a narrow, specific multi-part function involving not just masking, but also secure, separate logging and prevention of entry into the default log.

• The Term: "precludes adding an indication... to a default phone log or message log"

• Context and Importance: This limitation distinguishes the invention from simple notification management. Infringement requires showing that the accused feature actively prevents a record of the call or message from appearing in the user's main, unsecured logs.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: A party might argue that "precludes" could mean a temporary prevention, where the log entry appears later after the "masked" period ends.
  • Evidence for a Narrower Interpretation: The plain meaning of "preclude" suggests a permanent prevention. The patent's objective of providing privacy from observers of the phone's default logs supports an interpretation where the entry for a "masked" communication never appears in the default logs at all ('723 Patent, col. 4:1-4).

VI. Other Allegations

• Indirect Infringement: The complaint makes conclusory allegations of induced and contributory infringement, stating that Defendant has knowledge of the '723 Patent and "supplies the technology that allows its customers to infringe the patent" (Compl. ¶19). No specific factual basis, such as citations to user manuals or marketing materials that instruct on an infringing use, is provided.
• Willful Infringement: The complaint does not use the term "willful," but it alleges that Defendant "has made no attempt to design around the claims" and "did not have a reasonable basis for believing that the claims of the ‘723 Patent were invalid" (Compl. ¶20-21). The prayer for relief requests a finding that this is an "exceptional case" under 35 U.S.C. § 285, which is often associated with findings of willful infringement (Compl. ¶E, p. 7). The allegations appear to be based on conduct after the lawsuit was filed, as no pre-suit knowledge is alleged.

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

• Patent Viability: The foremost issue is the legal status of the lawsuit itself. Given that an ex parte reexamination concluded after the complaint was filed resulted in the cancellation of all claims of the '723 patent, the central question is whether there remains any valid, enforceable right upon which the case can proceed for either past or future damages.
• Evidentiary Sufficiency: Should the case proceed, a key evidentiary question will be one of functional operation: can the Plaintiff demonstrate through technical evidence that Samsung's standard notification features perform the specific, two-pathway logic of Claim 1? This includes proving the existence of a separate, password-protected log and the active preclusion of entries in the default system logs, as opposed to merely silencing or delaying notifications.
• Definitional Scope: The dispute may also turn on a question of claim construction: can the term "password-protected masked notification routine," which the patent specification links to a secure, separate logging system, be construed broadly enough to read on mass-market smartphone features like "Do Not Disturb" that may not offer the same level of data segregation and security?