DCT

1:23-cv-01488

Samsung Electronics Co Ltd v. Datang Mobile Communications Equipment Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-01488, E.D. Va., 10/31/2023
  • Venue Allegations: Venue is alleged to be proper as Defendant is a Chinese corporation not residing in the United States and is subject to personal jurisdiction under 35 U.S.C. § 293, which permits suit in any judicial district.
  • Core Dispute: Plaintiff seeks a declaratory judgment that Defendant’s U.S. patents are invalid and further alleges that Defendant breached its contractual commitment to license its standard-essential patents on fair, reasonable, and non-discriminatory (FRAND) terms.
  • Technical Context: The dispute centers on patents declared essential to the 4G (LTE) and 5G (NR) cellular telecommunications standards, which are foundational for modern mobile devices and networks.
  • Key Procedural History: The complaint alleges that Defendant Datang, having declared its patents essential to standards set by the European Telecommunications Standards Institute (ETSI), is bound by a FRAND licensing commitment. The dispute arises from licensing negotiations, with Plaintiff alleging that Defendant offered discriminatory terms compared to a license granted to Apple Inc. and engaged in coercive tactics, including seeking injunctions in China. The complaint also alleges that certain patents-in-suit claim technology developed by other companies and discussed publicly in 3GPP standards-setting working groups before the patents' priority dates.

Case Timeline

Date Event
2010-09-10 ’071 Patent Priority Date
2010-09-29 ’107 Patent Priority Date
2015-06-09 ’808 Patent Priority Date
2015-09-01 ’071 Patent Issue Date
2017-02-28 ’107 Patent Issue Date
2017-05-05 ’923 Patent Priority Date
2020-05-01 Licensing negotiations between Datang and Samsung allegedly commenced
2020-09-22 ’808 Patent Issue Date
2021-07-06 ’923 Patent Issue Date
2021-12-22 Datang and Sisvel allegedly sign a patent license agreement with Apple Inc.
2022-12-01 Datang allegedly files infringement and rate-setting actions in China
2023-10-31 Complaint Filing Date

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

Analysis is provided for the two patents for which full documents were available. The remaining patents are summarized in capsule format based on information in the complaint.

U.S. Patent No. 10,785,808 - Random access method and equipment

Issued Sep. 22, 2020

The Invention Explained

  • Problem Addressed: The patent’s background section describes that existing random access procedures in cellular systems like Long Term Evolution (LTE) involve numerous interaction stages, which can introduce significant delay (’808 Patent, col. 2:5-11). This latency can be problematic in scenarios requiring very fast connections, such as with small cells operating at high frequencies (’808 Patent, col. 2:5-11).
  • The Patented Solution: The invention proposes a streamlined, contention-based random access method to reduce delay (’808 Patent, Abstract). A user equipment (UE) first determines a "dedicated contention resource pool" for random access, transmits its identification information to the cell using a resource from that pool, and then receives a contention resolution message to determine if the access was successful (’808 Patent, col. 2:18-28, Fig. 6). This reduces the number of back-and-forth steps compared to traditional procedures.
  • Technical Importance: Reducing latency in the initial network access procedure is critical for enabling the low-latency applications envisioned for 5G networks, such as vehicle-to-everything (V2X) communications and real-time industrial automation.

Key Claims at a Glance

  • The complaint identifies independent claims 1 and 10 as being asserted for a declaratory judgment of invalidity (Compl. ¶59).
  • Essential elements of asserted independent claim 1 (a method for a user equipment) include:
    • determining a dedicated contention resource pool for a random access when the user equipment accesses a cell;
    • transmitting identification information of the user equipment to the cell over a resource in that pool; and
    • receiving a contention resolution message from the cell and determining whether the random access succeeds.

U.S. Patent No. 11,057,923 - Transmission Method, Terminal Device and Base Station

Issued Jul. 6, 2021

The Invention Explained

  • Problem Addressed: The patent states that in the related art (e.g., LTE systems), acknowledgement/non-acknowledgement (ACK/NACK) feedback for data transmission is performed on a per-Transport Block (TB) basis (’923 Patent, col. 1:20-31). If a single Code Block (CB) within a TB is received incorrectly, the entire TB must be retransmitted, which is inefficient (’923 Patent, col. 1:49-57). The patent asserts that for 5G systems, a more granular feedback mechanism is needed (’923 Patent, col. 2:1-3).
  • The Patented Solution: The invention provides a method for retransmission based on Code Block Groups (CBGs), where a TB is divided into multiple CBGs (’923 Patent, Abstract). A terminal device receives a "first indicator field" in a downlink control channel, which indicates precisely which CBG(s) within a TB need to be retransmitted (’923 Patent, col. 2:13-19, Fig. 1). This allows for more targeted and efficient retransmissions compared to the TB-level approach.
  • Technical Importance: This CBG-based feedback mechanism allows for more efficient use of radio resources by avoiding the unnecessary retransmission of correctly received data, which is crucial for achieving the high data throughput targets of 5G networks.

Key Claims at a Glance

  • The complaint identifies independent claims 1, 6, 10, and 14 as being asserted for a declaratory judgment of invalidity (Compl. ¶62).
  • Essential elements of asserted independent claim 10 (a terminal device) include:
    • at least one processor and a memory;
    • the processor is configured to read and execute programs to:
    • receive a downlink control channel; and
    • obtain a first indicator field from the downlink control channel, where the field indicates whether each CBG of CBGs in an initial transmission of a TB needs to be retransmitted.

Multi-Patent Capsule: U.S. Patent No. 9,125,071

  • Patent Identification: U.S. Patent No. 9,125,071 (“the ’071 patent”), Method, System and Apparatus for Measuring Interference, Issued Sep. 1, 2015 (Compl. ¶53).
  • Technology Synopsis: The patent relates to methods for measuring interference in a cellular network. The complaint does not provide further technical details, but alleges the patent is declared essential to the 4G standard (Compl. ¶53, 55).
  • Asserted Claims: The complaint identifies independent claims 1, 8, 12, and 17 and seeks a declaratory judgment of their invalidity (Compl. ¶53, 79-81).
  • Relevance to Samsung Products: The patent is alleged to be part of a portfolio that Defendant Datang claims is essential for Samsung's 4G- and 5G-compliant products (Compl. ¶1, 38).

Multi-Patent Capsule: U.S. Patent No. 9,585,107

  • Patent Identification: U.S. Patent No. 9,585,107 (“the ’107 patent”), PHR Processing Method and Device in Carrier Aggregation System, Issued Feb. 28, 2017 (Compl. ¶56).
  • Technology Synopsis: The patent relates to Power Headroom Reporting (PHR) in systems using carrier aggregation, where multiple cellular carriers are combined to increase data rates (Compl. ¶66). The complaint alleges the patent claims a method for triggering PHR based on whether timers are maintained on a "per user equipment" basis (Compl. ¶67-69).
  • Asserted Claims: The complaint identifies independent claims 1 and 5 and seeks a declaratory judgment of their invalidity (Compl. ¶56, 89-90).
  • Relevance to Samsung Products: The patent is alleged to be part of a portfolio that Defendant Datang claims is essential for Samsung's 4G- and 5G-compliant products (Compl. ¶1, 38).

III. The Accused Instrumentality

Product Identification

This is a declaratory judgment action where the Plaintiff, Samsung, is the manufacturer. The instruments at issue are Samsung's 4G- and 5G-compliant mobile devices, including smartphones, tablets, and smartwatches sold in the United States (Compl. ¶6).

Functionality and Market Context

These devices are designed to operate on cellular networks conforming to the 4G (LTE) and 5G (NR) standards developed by 3GPP and adopted by ETSI (Compl. ¶17, 35-36). The complaint asserts that practicing these standards is necessary for the devices to function and interoperate on modern wireless networks (Compl. ¶15). The complaint alleges that Samsung is a major participant in the U.S. smartphone market and developed its products in reliance on the availability of licenses to standard-essential patents on FRAND terms (Compl. ¶6, 36).

IV. Analysis of Invalidity Allegations

The complaint references exemplary invalidity claim charts in exhibits that were not provided. The following summarizes the narrative theories of invalidity presented in the complaint.

’808 Patent Invalidity Allegations

The complaint alleges that the claims of the ’808 patent are invalid under 35 U.S.C. §§ 101, 102, 103, and 112 (Compl. ¶98-103). The primary substantive challenge is based on anticipation and obviousness over prior art (Compl. ¶100). The complaint specifically identifies U.S. Patent No. 10,034,308 to Lee et al. and U.S. Patent No. 8,885,528 to Lin et al. as references that allegedly disclose the claimed random access method (Compl. ¶101-102). The core of the invalidity argument appears to be that the streamlined random access procedure claimed in the ’808 patent was already known in the art before the patent's June 9, 2015 priority date.

’923 Patent Invalidity Allegations

The complaint alleges that the claims of the ’923 patent are invalid under 35 U.S.C. §§ 101, 102, 103, and 112 (Compl. ¶108-113). The central allegation of invalidity is that Datang (through its parent CATT) sought to patent technology that was being actively developed and discussed by other companies, including Samsung, in 3GPP working groups (Compl. ¶65, 71-75). The complaint provides visual evidence from a February 2017 3GPP meeting where Samsung proposed "CB-group based re-transmission" with "multi-bit HARQ-ACK feedback." A screenshot from the meeting materials shows Samsung listed as the proponent for "Option 1: CB-group based re-transmission" (Compl. ¶72). The complaint alleges that CATT attended this meeting and was aware of Samsung's proposal, yet filed a Chinese priority application for the ’923 patent one month later claiming to have invented a solution to a problem that was already being addressed (Compl. ¶74-75). This narrative suggests the possibility that the claimed invention was not novel and would have been obvious in light of public discussions within the relevant standards body.

V. Key Claim Terms for Construction

’808 Patent

  • The Term: "dedicated contention resource pool" (from claim 1)
  • Context and Importance: The invalidity analysis will depend on whether the prior art discloses this specific element. Practitioners may focus on this term because its construction will determine whether the resources described in the Lee and Lin references meet this limitation, or if the '808 patent's "dedicated" pool is a patentably distinct concept.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification does not appear to provide an explicit, limiting definition. Claim 1 itself is broad, referring to "a" dedicated pool without specifying its structure or how it is dedicated, which may support an interpretation covering any set of resources set aside for contention-based access.
    • Evidence for a Narrower Interpretation: The summary describes determining the pool based on "first resource information broadcasted by the cell" (’808 Patent, col. 2:32-35). This might be used to argue that the term requires a specific type of broadcast-based configuration, potentially distinguishing it from resource allocations in the prior art.

’923 Patent

  • The Term: "first indicator field" (from claim 10)
  • Context and Importance: This term is the core of the claimed invention. The invalidity dispute will likely center on whether prior art, including the 3GPP contributions from Samsung and others, disclosed the use of such a field to indicate which specific CBGs require retransmission.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the field's function: "the first indicator field indicates whether each code block group (CBG) of CBGs in an initial transmission of a TB needs to be retransmitted" (’923 Patent, col. 2:15-19). This functional language could be interpreted broadly to cover any set of bits that performs this signaling function.
    • Evidence for a Narrower Interpretation: The specification provides a specific example where the field "includes A*M-bit indication information," with a defined structure where each bit corresponds to a CBG (’923 Patent, col. 2:20-27). An argument could be made that the term should be limited to this specific bitmap-style implementation, potentially distinguishing it from more general feedback concepts discussed in 3GPP.

VI. Other Allegations

The complaint includes counts for Breach of Contract (Count V) and Breach of Obligation to Negotiate in Good Faith (Count VI) (Compl. ¶117, 127). These counts are based on Datang’s alleged FRAND commitments to ETSI. Samsung alleges it is a third-party beneficiary of this commitment (Compl. ¶119). The alleged breaches include:

  • Failing to offer a license on FRAND terms, particularly in light of more favorable terms allegedly offered to Apple (Compl. ¶123-124).
  • Seeking injunctive relief in foreign jurisdictions (China) to exert improper pressure in licensing negotiations (Compl. ¶125).
  • Failing to negotiate in good faith toward a FRAND license (Compl. ¶128).
  • Asserting patents that Datang allegedly knows or should know are invalid or claim technology developed by others (Compl. ¶123).

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

  • A central issue will be one of contract and conduct: Did Datang's licensing offers and negotiation tactics, particularly when compared to its alleged agreement with Apple and its pursuit of injunctions in China, constitute a breach of its FRAND obligations under French law, which governs the ETSI IPR policy?
  • A key evidentiary question will be one of inventorship and timing: For patents like the ’923 patent, can Samsung produce sufficient evidence to demonstrate that the core concepts of CBG-based feedback were publicly disclosed in 3GPP working groups by Samsung or others before Datang’s priority date, rendering the patent claims invalid as anticipated or obvious?
  • A foundational question will be one of validity: Independent of the FRAND dispute, are the claims of the four patents-in-suit invalid over the prior art identified in the complaint, and if so, would a finding of invalidity for this "representative" set of patents materially alter the landscape of the parties' broader global licensing dispute?