Litigation
Proxense, LLC v. Samsung Electronics Co., Ltd. et al.
dismissed with prejudice6:21-cv-00210-ADA
- Filed
- 2021-03-05
- Terminated
- 2023-01-19
Patents at issue (5)
Defender signal. Patent 9049188 has had claims invalidated at PTAB. Those final written decisions are public record and a ready-made § 102 / § 103 ground in district court. See IPR estoppel for what carries over.
Plaintiffs (1)
Summary
Proxense sued Samsung Electronics Co., Ltd. and [[Samsung Electronics America](/litigations/by-defendant/Samsung%20Electronics%20America), Inc.](/litigations/by-plaintiff/Samsung%20Electronics%20America%2C%20Inc.) in the Western District of Texas, asserting several patents including US 9,049,188 against Samsung Pay/Galaxy devices. The case was resolved before trial by consent judgment/stipulated dismissal with prejudice, closing January 19, 2023, with no court ruling on validity or infringement of the '188 patent.
Case overview & background
Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.
I'll research this case using web search to verify the facts.
Let me dig deeper into the procedural history, IPRs, and outcomes.
Let me verify the trial timing, the '730 patent's role, and Proxense's corporate background.
Proxense, LLC v. Samsung Electronics Co., Ltd. et al., No. 6:21-cv-00210-ADA (W.D. Tex.)
The parties and the accused technology. Proxense, LLC is a small Delaware-based company founded by John Giobbi and David L. Brown (launched in 2001, formally incorporated as an LLC in 2005) that in roughly 2004–2012 built "personal digital key" (PDK) proximity-authentication hardware and mobile-payment technology, reportedly employing 30+ engineers before shifting to patent licensing — ip fray has described it as a "former operating company," and its enforcement campaign against Samsung, LG, Google, Apple, Microsoft and Intel places it in the operating-company-turned-assertion-entity category rather than a classic shell NPE (Proxense's own complaint excerpt via RPX Insight ¶¶24, 33; ip fray). Samsung is the global consumer-electronics OEM; co-defendant Samsung Electronics America, Inc. is its U.S. sales/service affiliate. Proxense accused Samsung Pay and the devices it runs on — Galaxy S6 and later smartphones, tablets and the Galaxy Watch line, i.e., Samsung Pay devices sold from September 2015 — of infringement (Korean trade press, theguru, March 2021; complaint analysis at ¶¶41, 75). The infringement theory is that Samsung Pay tokenizes a card number into a device-specific EMV payment token provisioned by a Token Service Provider (Visa/Mastercard), stores it and biometric data inside a hardware-backed secure environment (Samsung Knox / ARM TrustZone "Trusty" TEE), and, after a fingerprint or iris match, wirelessly transmits the token over NFC or Magnetic Secure Transmission for third-party authentication, then receives a "push" confirmation that Proxense characterizes as the claimed "access message" (complaint analysis, ¶¶42–59, 101–107, 122).
The patents and procedural posture. The operative amended complaint (filed June 17, 2021, with a second amended complaint in August 2022) asserted five patents in two families. Family A — biometric PDK authentication: U.S. 8,352,730 (integrated device that persistently stores a user's biometric data plus a device ID code and secret value in a tamper-proof format, then wirelessly sends a code to a third-party trusted authority upon a biometric match); U.S. 9,298,905 (same family — persistent biometric/ID-code storage and authentication of a transaction by a third-party trusted authority); and U.S. 10,698,989 (a 2016 continuation in the same family covering persistent biometric storage with device ID code authentication and transaction completion). Family B — hybrid device: U.S. 9,049,188 and U.S. 9,235,700, both "hybrid device having a personal digital key and receiver-decoder circuit," i.e., an integrated PDK wirelessly coupled to an integrated RDC over a signal line to enable an application, function or service (claim-construction briefing, ECF Nos. 33/35/37/39). The case was filed March 5, 2021 in the Waco Division of the Western District of Texas before Judge Alan D. Albright — then the district's sole Waco judge and the most active patent venue in the country — with a jury demand, injunctive relief and damages sought; the court held a Markman hearing December 27, 2021, issued its Claim Construction Order January 18, 2022 (ECF 43), and issued the supporting Memorandum nearly a year later (ECF 149, Dec. 28, 2022), adopting Proxense's constructions on nearly every disputed term (Proxense later repeatedly urged Judge Albright to re-adopt those constructions in follow-on suits against Microsoft and others). The case proceeded to the brink of trial: a final pretrial conference in early January 2023 denied Samsung's summary-judgment and Daubert motions while granting Proxense's no-divided-infringement motion, with both sides fielding damages experts (Marais's 3,011-respondent willingness-to-pay survey and Dr. Jennifer Vanderhart on apportionment). Jury selection (Jan. 19, 2023) and trial (Jan. 23, 2023) were then cancelled, and on January 19, 2023 the parties stipulated to dismissal with prejudice under Rule 41(a)(1)(ii), each side bearing its own costs — recorded on the docket as a consent judgment, with no merits ruling on infringement or validity.
Why it matters. The case is a leading example of the post-2015 wave of assertions over biometric mobile-payment authentication, and it is tightly linked to an inter partes review campaign: Samsung filed five IPRs on August 26, 2021 — IPR2021-01438 ('188), -01439 ('700), -01444 ('730), -01447 ('905) and -01448 ('989) — plus parallel ex parte reexamination requests on June 8, 2022. The PTAB denied institution on three petitions on February 28, 2022, largely because Proxense persuaded the Board to construe "third-party trusted authority" as "an entity separate from the parties to a transaction" — a construction Proxense then abandoned in district court, a well-documented PTAB/district-court inconsistency (Samsung motion to amend invalidity contentions, Dkt. 33–35 discussion; PTAB institution decisions). Only the '188 and '700 IPRs were instituted, and both were terminated on February 24, 2023 after the settlement, so no final written decision ever tested these claims against Samsung. The settlement came "on the eve of trial" (ip fray), making Samsung the first major licensee in what became a multi-front campaign (Google settled/dismissed with prejudice in January 2025; Apple, Microsoft, LG and Intel litigations followed; Proxense filed the first suit over the Apple Vision Pro). The asserted patents' later history underscores the stakes: the flagship '730 patent was asserted again against Microsoft and Google, and in April 2025 Proxense requested adverse judgment in IPR2024-00775 and IPR2024-00232, leading the PTAB to cancel all claims 1–17 (Microsoft's May 9, 2025 motion to dismiss, 6:23-cv-00319, Dkt. 95) — though a later Central Reexamination Unit decision reportedly upheld amended '730 claims in the parallel ex parte reexamination, a conflict Proxense has raised with the agency (ip fray). Finally, the case illustrates both the draw of Albright's Waco docket in 2021 and its limits: a fast Markman schedule produced reusable claim-construction precedent, but settlement prevented the merits ruling that would have definitively tested Family A and Family B.
Sourcing notes / uncertainties. (1) The docket and case metadata give the filing date as March 5, 2021, but the court's own claim-construction memorandum refers to the complaint (ECF No. 1) as filed April 23, 2021; I could not resolve this discrepancy. (2) The scraped text of the "Order Concerning Final Pretrial Conference Motions" states the conference occurred "January 3, 2022," which is inconsistent with the ECF numbers (148–149) and the December 2022 memo; January 3, 2023 is the more plausible date, but I have not verified it against PACER. (3) The exact terms of the Samsung resolution — including whether any license payment was made — are not in the public record; the "Samsung has taken a license" characterization comes from ip fray's inference about the Google dismissal, not from any disclosed Samsung agreement. (4) Attorney rosters (Hecht Partners, Susman Godfrey, Spencer Fane for Proxense; Quinn Emanuel, Mann Tindel & Thompson for Samsung) come from third-party aggregators (PatSnap Eureka, Justia) rather than primary filings, though Quinn Emanuel and Hecht Partners attorneys appear on PTAB papers.
Key legal developments & outcome
Major rulings, motions, claim construction, settlements, and the present posture or final disposition.
I'll research this case thoroughly using web searches against multiple sources.
Let me dig into the docket specifics, claim construction order, IPR outcomes, and dismissal.
I have substantial material. Let me now pin down the motion-to-dismiss ruling, IPR outcomes, and the final disposition details.
Key Legal Developments and Outcome — Proxense, LLC v. Samsung Electronics Co., Ltd., No. 6:21-cv-00210-ADA (W.D. Tex., Waco Div.)
Note on scope: this section supplements, rather than restates, the existing case summary. All dates are given as YYYY-MM-DD where sourced; items I could not verify from a primary document are flagged.
1. Filing and initial pleadings (March–September 2021)
- 2021-03-05 — Proxense, LLC filed its original complaint for patent infringement against Samsung Electronics Co., Ltd. (KR) and Samsung Electronics America, Inc. (NY) in the Waco Division before Judge Alan D. Albright. The original complaint asserted four patents — U.S. 9,049,188; 9,235,700; 9,298,905; and 10,698,989 — with a jury demand, seeking damages and a permanent injunction. Accused instrumentalities: the Samsung Pay mobile payment service and all Galaxy smartphones, tablets, and wearables shipped with Samsung Pay since September 2015. The complaint pleaded direct, induced, contributory, and willful infringement, the latter predicated on a 2016-07-25 letter Proxense's counsel allegedly sent to Samsung Pay's co-general managers identifying the '730 and '905 patents. (Unified Patents docket mirror; Complaint analysis, Ex Parte)
- 2021-06-17 — First Amended Complaint filed, adding U.S. 8,352,730 (Biometric PDK Authentication) to the case, bringing the asserted set to the five patents reflected in the metadata. (Unified Patents docket.)
- Defense counsel — Samsung was represented throughout by Quinn Emanuel Urquhart & Sullivan LLP (James M. Glass, Sean T. Gloth, Marissa Ducca; Victoria Maroulis on the district-court answers). Proxense was represented by Hecht Partners LLP (David L. Hecht, James Zak) and Susman Godfrey LLP.
- Answers with jury demands followed the amendments (first answer docketed 2022-05-02; answer to the Second Amended Complaint 2022-09-06). I did not find counterclaims in the docket excerpts reviewed — Samsung's identified defenses were invalidity (including § 101 and § 112) rather than affirmative counterclaims, though this should be treated as unverified without a full PACER pull.
2. Motion to dismiss and the operative pleading (December 2021 – August 2022)
- Samsung moved to dismiss. 2021-12-20 — the Court entered an order on the motion to dismiss (ECF No. 41) granting Proxense leave to amend rather than dismissing the case outright. This is the ruling that produced the Second Amended Complaint.
- 2022-08-19 — Second Amended Complaint (SAC) filed (ECF No. 73), the operative pleading. Samsung answered on 2022-09-06.
- The SAC's structure confirms the case split into two patent families: the '730/'905/'989 family ("Family A" — biometric PDK authentication) and the '188/'700 family ("Family B" — hybrid device with PDK + receiver-decoder circuit). (Proxense Responsive Claim Construction Brief, ECF No. 35.)
3. Claim construction (October 2021 – December 2022) — the substantive heart of the case
Because the case settled on the eve of trial, claim construction is the only merits ruling the court ever made.
| Event | Date | Cite |
|---|---|---|
| Samsung Opening Markman Brief | 2021-10-28 | ECF No. 33 |
| Proxense Responsive Brief | 2021-11-17 | ECF No. 35 |
| Samsung Reply Brief | 2021-12-06 | ECF No. 37 |
| Proxense Sur-Reply | 2021-12-13 | ECF No. 39 |
| Markman hearing | 2021-12-27 | ECF No. 42 |
| Claim Construction Order | 2022-01-18 | signed by Judge Albright |
| Memorandum in Support of Claim Construction Order | 2022-12-28 | ECF No. 149 (42 pages) |
Disputed terms and outcomes. The parties disputed 12–13 terms. Notable constructions (as recited in the court's order and later quoted verbatim by Judge Albright in Proxense v. Microsoft, No. 6:23-cv-00319-ADA, 2024-05-24):
- "hybrid device" ('188/'700) — Samsung argued indefinite under § 112; the court construed it rather than holding it indefinite (a device comprising a digital key (PDK) and a receiver-decoder circuit (RDC)).
- "enabling one or more of an application, a function, and a service" — construed to mean that an application/function/service is "enabled" by a PDK "when it receives information from a PDK in exchange for an access key," and by an RDC "when it forwards such a message to the application, function, or service." This construction became strategically decisive and was later invoked in the PTAB.
- "personal digital key" — "An operably connected collection of elements including an antenna and a transceiver for communicating with a RDC and a controller and memory for storing information particular to a user" (Proxense's formulation largely prevailed over Samsung's more restrictive "a device that includes…").
- "receiver-decoder circuit" — "A component or collection of components, capable of wirelessly receiving data in an encrypted format and decoding the encrypted data for processing."
- "inheritance information" — "Information passed [from a first device to a] second device for use."
- "biometric information," "financial information," "enablement signal," and "access message" — no construction necessary; plain and ordinary meaning (rejecting Samsung's narrower proposals, e.g., that "access message" means only "a signal permitting a user to access").
- "wherein the biometric data and the scan data are both based on a fingerprint scan by the user" ('730 cl. 5) — Samsung's § 112 ¶ 4 indefiniteness challenge failed; no construction necessary. Samsung formally withdrew the § 112 ¶ 4 argument for '730 claim 5 at the final pretrial conference (ruled "denied as moot").
- "device ID code" — the court rejected Samsung's "device-specific code" gloss; Proxense's "unique code identifying a device" position carried the day. This was the term on which the infringement theory (EMV payment tokens = device ID code) turned.
Why this mattered for the PTAB. Proxense used the district court's construction offensively at the Board. On 2022-12-29, one day after the memorandum issued, Proxense emailed the Board seeking authorization under 37 C.F.R. § 42.123 to submit the district court's construction order into IPR2021-01438 and -01439, arguing that Samsung was collaterally estopped from maintaining a different construction of "enabling one or more of an application, a function, and a service" before the Board — noting the Board had already held that, under Petitioner's proposed construction, the claims were unpatentable, and that Proxense's only PTAB argument was that the claims survive under the district court's construction. (Exhibit 3002, email of 2022-12-29.) The Board's ruling on that request is not reflected in the sources reviewed.
4. Discovery milestones with strategic significance (2022)
- 2022-03-07 — Samsung served Final Invalidity Contentions, asserting European Patent Application EP 1,536,306 ("Broadcom") and its divisional descendants (EP 2,797,020; EP 3,023,899), along with the Giobbi and Buer references central to the IPRs. (Proxense Patent Owner Response, IPR2021-01439, filed 2022-05-23.)
- 2022-06-08 — Samsung filed ex parte reexamination (EPR) requests on the asserted patents (at least the '905, and per Samsung's framing, additional claims) and disclosed the underlying analysis to Proxense the same day.
- 2022-07-08 / 2022-08-05 — Samsung moved to amend its final invalidity contentions to add the Pocket Vault system and new references, arguing no prejudice because expert discovery was months away. This was a deliberate attempt to layer system art (which cannot be raised in an IPR) on top of the printed-publication grounds in the IPRs — an early instance of the IPR-estoppel fault lines later litigated in the Samsung v. Maxell line of cases.
- 2022-08-19 — Proxense filed the Second Amended Complaint, adjusting the asserted claims and infringement theories in response to the Markman ruling.
- Expert discovery — Proxense's infringement expert was Dr. Aviel Rubin; Samsung's invalidity expert was Dr. Nielson; damages experts were M. Laurentius Marais and Jennifer Vanderhart (Proxense side). The expert lineup itself became the subject of pretrial motions (below).
5. Pretrial motions of substance — summary judgment, Daubert, motions in limine (December 2022 – January 2023)
At the Final Pretrial Conference on 2023-01-03 (transcript cited as "Jan. 3, 2023, Tr."), the court heard and orally ruled on the dispositive and evidentiary motions, later memorialized in an Order Concerning Final Pretrial Conference Motions:
- Samsung's Motion to Strike the Supplemental Expert Report of Dr. Aviel Rubin (ECF No. 148) — Denied; Samsung permitted to depose Dr. Rubin and file a supplemental Nielson report, with a reciprocal deposition.
- Proxense's Motion for Summary Judgment (ECF No. 97) — treated as moot in part; the § 112 ¶ 4 challenge to '730 claim 5 was denied as moot because Samsung withdrew it.
- Samsung's Motion to Exclude Expert Opinions of Marais and Vanderhart (ECF No. 95) — Denied at that time, with leave to voir dire Vanderhart on apportionment after Marais testified.
- Proxense's Daubert Motion to Exclude Dr. Nielson (ECF No. 98) — Denied. Significantly, the court ruled Samsung could either present § 101 evidence to the jury (waiving JMOL on Alice step one) or argue § 101 as a bench legal issue with expert testimony; Samsung filed a supporting brief at ECF No. 157. This § 101 track was the most dangerous unresolved threat to Proxense's case.
- Motions in limine — mixed. Proxense's MIL 4 (barring references to claims/patents/theories no longer at issue) was granted; MIL 6 (no disparagement for failure to commercialize/license) and MIL 7 (no inference from failure to sue third parties) were granted in part.
- ECF number for the pretrial-motions order: the rulings were entered as a single order in 6:21-cv-00210-ADA; the copy I reviewed is reproduced in the CourtListener/recap record (link). One caveat: the order text prints the conference date as "January 3, 2022," but its own transcript citations say "Jan. 3, 2023," so the 2022 date appears to be a scrivener's error.
6. Parallel PTAB proceedings and their effect (2021–2023)
Samsung Electronics America, Inc. filed five IPR petitions against the five asserted patents:
| Proceeding | Patent | Status per sources reviewed |
|---|---|---|
| IPR2021-01438 | 9,049,188 | Instituted; consolidated oral hearing 2022-11-29 |
| IPR2021-01439 | 9,235,700 | Instituted 2022-02-28; consolidated oral hearing 2022-11-29 |
| IPR2021-01444 | 8,352,730 | Institution denied (per contemporaneous Korean trade press) |
| IPR2021-01447 | 9,298,905 | Institution denied |
| IPR2021-01448 | 10,698,989 | Institution denied |
Sources: Board order of 2021-12-07 listing all five proceedings and patents (link); Institution Decision in IPR2021-01439, Paper 11, entered 2022-02-28; consolidated Oral Hearing transcript, held 2022-11-29, before APJs Thu A. Dang, Kevin F. Turner, and David C. McKone; and Korean trade press (The Guru, 2023-01-19) reporting that the PTAB denied three and was hearing two (link).
Effect on the litigation. The IPRs did not stay the district court case (no stay was entered in the docket excerpts reviewed), but they shaped it: at the November 2022 hearing, Samsung conceded that under the Board's institution-stage construction of the '188/'700 claims, the challenged claims were unpatentable, and that the only live issue was claim construction — Proxense's sole rebuttal being that the claims are patentable under the district court's construction. Because Proxense had "won" the claim-construction battle in Waco, its litigation position and its PTAB position were in direct tension, which is exactly why it tried to import the district court's order into the IPRs in late December 2022.
Separately, an ex parte reexamination track ran in parallel (Samsung's June 2022 EPR filings). One secondary source (a complaint/pleadings analyst) asserts that "Ex Parte Reexamination and Inter Partes Review proceedings resulted in the cancellation or disclaimer of all asserted claims of the '905 and '989 patents." I could not verify that assertion against a primary USPTO certificate or Board decision, and it should be treated as unconfirmed. The Korean press account is consistent with institution having been denied on those patents, not with claim cancellation.
On the two instituted IPRs: Final Written Decisions would have been due on or about 2023-02-28 (one year from the 2022-02-28 institution date). Because the district court case settled on 2023-01-19, the most likely disposition is termination or dismissal of the IPRs by reason of settlement — but I did not locate the FWDs or a termination order in the sources reviewed, and the final PTAB dispositions of IPR2021-01438 and -01439 should be confirmed via PTAB PTABCTS/PACER before being represented as decided on the merits.
7. Trial setting, cancellation, and final disposition (January 2023)
- Jury selection was set for 2023-01-19 and trial for 2023-01-23, both in Waco.
- 2023-01-19 — No trial occurred. Judge Gilliland entered an order cancelling jury selection, and Judge Albright entered an order cancelling jury selection and trial. On the same date, the parties filed a Stipulation of Dismissal; Proxense withdrew its claims.
- The case was dismissed with prejudice under Fed. R. Civ. P. 41(a)(1)(ii), with each party bearing its own fees, expenses, and costs. The docket's coded basis of termination is "Consent Judgment." (PatSnap case note; Unified Patents docket.)
- Settlement terms — including any payment or license — are not public; contemporaneous Korean trade press reported only that the parties submitted a joint settlement and that the specific amount was undisclosed.
- No appeal was taken — unsurprising, since a Rule 41(a)(1)(ii) stipulated dismissal with prejudice on the plaintiff's own motion typically leaves nothing appealable absent a preserved adverse ruling (and the only adverse rulings of substance were denial of Samsung's indefiniteness theories and the court's claim constructions, which favored Proxense).
8. Bottom line and legal significance
- Outcome: Consensual termination, not a merits adjudication. No court ever ruled on infringement, validity, or damages, and no jury was empaneled. No JMOL, new-trial, or fee motion was ever filed or decided — the parties' stipulation expressly made each side bear its own costs.
- The one durable legal holding is the 2022-01-18 claim construction order and its 2022-12-28 memorandum, which construed the '188/'700 and '730/'905/'989 family terms and rejected Samsung's indefiniteness and narrow-construction positions. That order became the template for Proxense's follow-on campaigns: Judge Albright's 2024-05-24 order in Proxense v. Microsoft (6:23-cv-00319-ADA) repeatedly "adopt[ed] the Construction from Proxense v. Samsung, 6:21-cv-00210," for "access message," "personal digital key," and "receiver-decoder circuit." Those same constructions then featured in the Microsoft and Google IPRs (IPR2024-00233, -00573, -00782, -00784, -00846, -01326) filed against Proxense's continuation patents.
- Strategic read: Proxense's exposure in this case was concentrated in (i) Samsung's § 101 bench challenge (which the pretrial order expressly preserved), and (ii) the two instituted IPRs on the '188 and '700, where the Board had signaled the claims were unpatentable under its construction. Settling in January 2023 — three weeks before the FWD deadline and with trial three days out — allowed Proxense to preserve the patents' presumption of validity and the favorable Waco constructions while avoiding a potentially case-killing FWD or a § 101 judgment.
Verification caveats. (1) The exact scope of the 2021-12-20 order on the motion to dismiss (ECF No. 41) is inferred from docket text ("Leave to Amend Granted Per Court's Order on Motion to Dismiss") and should be confirmed against the order PDF. (2) Whether counterclaims were pleaded is unverified. (3) Final dispositions of IPR2021-01438 and -01439 are unverified; a 2023-02-28 FWD deadline fell after settlement. (4) The claim that all asserted '905 and '989 claims were cancelled or disclaimed via reexam/IPR rests on a single secondary source and is contradicted in emphasis by contemporaneous press reporting institution denial on those patents.
In the news
What the press has reported about this case, summarized with links to the source articles.
Press coverage of Proxense v. Samsung
The filing (March 2021). The earliest identified coverage is Korean trade press. The Guru (더구루) reported on 2021-03-09 that Proxense had sued Samsung Electronics and its U.S. affiliate in the Western District of Texas five days earlier, seeking injunctive relief and monetary damages over Samsung Pay; it listed four asserted patents (9,049,188; 9,235,700; 9,298,905; 10,698,989 — i.e., without the '730, consistent with the original complaint, which Proxense amended in June 2021) and accused all Galaxy smartphones, tablets and wearables shipped with Samsung Pay since September 2015. The article carried a statement from Proxense CEO John Giobbi: "Proxense has driven important innovation in the multi-billion-dollar mobile payment industry, and Samsung is well aware of that fact… we hold a substantial portfolio of early patents in mobile payments and will protect them vigorously" (translated from Korean). It also recounted Proxense's origin story (founded 2001 by Giobbi and David L. Brown; 30+ engineers from 2004).
The settlement (January 2023). The Guru reported on the resolution: the two sides submitted a joint settlement to the Western District of Texas on 2023-01-19 and Proxense withdrew its claims, with the specific settlement amount and terms not disclosed; it noted that Samsung's parallel IPRs would wind up too, after the PTAB "denied three and was hearing two." Proxense's own counsel put out a statement through the Hecht Partners blog, headlined "Samsung Settles Mobile Payment Patent Suit Days Before Trial," reporting that Samsung "agreed Thursday to resolve a suit" on the eve of a trial scheduled for the following Monday in W.D. Tex., and quoting co-lead counsel David L. Hecht: "Mr. Giobbi, CEO and chief inventor of Proxense LLC, is thrilled with the result that we achieved, although he was looking forward to telling the story of his many inventions to the world." That account (a party-side law-firm post, not independent journalism) describes the case as involving "three biometric authentication patents" — a count that matches neither the original four-patent complaint nor the five patents reflected in the case metadata, and is best read as loose shorthand.
PTAB-side reporting in roundups. The IPWatchdog roundup of 2022-03-09 contains the clearest contemporaneous disposition table for the parallel PTAB campaign: it lists IPR2021-01438 ('188) and IPR2021-01439 ('700) as "Instituted," and IPR2021-01444 ('730), IPR2021-01447 ('905) and IPR2021-01448 ('989) as "Not Instituted – Merits." Just under a year later, the IPWatchdog roundup of 2023-03-03 reports both instituted proceedings as "Settlement" — corroborating (from the PTAB side) that the Samsung IPRs were terminated in the wake of the January 2023 deal. The same roundup's headline topic is a separate Intel/Samsung semiconductor dispute (Daedalus Prime, IPR2023-00536), not this case. I retrieved the 2022-03-17 roundup but could not confirm from the accessible text that it discusses Proxense/Samsung; I likewise could not retrieve the 2021-09-01 or 2021-03-10 roundups to verify any Proxense reference, so I do not attribute anything to them.
Later coverage treating the settlement as a benchmark. Much of the subsequent reporting comes from the same writers covering Proxense's follow-on campaign. ip fray (Florian Mueller) describes Samsung as having "settled in 2023 on the eve of trial" and, when Google dismissed its own case with prejudice in January 2025, inferred that "the other known licensee at this point is… Samsung" — an analytical inference, since no Samsung agreement was made public. The same outlet, in an assignment-rules piece, calls the Samsung case "the first Proxense case in that district," noting that claim construction and "various other pretrial matters had been resolved by Judge Albright" — the reason later Proxense suits kept landing before him on judicial-economy grounds. Biometric Update (2024-03) reported, citing Bloomberg Law, that "Proxense settled a similar patent-infringement case with Samsung in January although the money involved, if any, was not disclosed," and stated that Giobbi "was awarded three disputed patents" and that the company then sued Google and Microsoft. MK (매일경제, English edition) similarly recapped the history in June 2024 while reporting the new LG suit, writing that Samsung "filed a reverse lawsuit… for invalidating the patent, but the U.S. court ruled in favor of Proxense. Since then, Samsung Electronics has settled the lawsuit with Proxense." More recent ip fray pieces on USPTO developments — e.g., its report on the CRU upholding the '730 patent and its coverage of Proxense's Federal Circuit APA appeal — mention the Samsung IPRs only in passing (the '730 table notes Samsung's IPR2021-01444 was not instituted because "Petitioner did not show a reasonable likelihood of prevailing").
Where accounts differ, and the limits of coverage. The reporting diverges in three respects. First, patent count: The Guru and the complaint said four patents at filing (later five); the Hecht Partners blog says "three." Second, what the settlement means: the Korean trade press describes only an undisclosed joint settlement, while ip fray affirmatively characterizes Samsung as a licensee — an inference from the Google dismissal, not a disclosed fact. Third, the "reverse lawsuit" characterization: MK describes Samsung's IPRs/reexaminations as a "reverse lawsuit" in which "the U.S. court ruled in favor of Proxense," which overstates the record — the PTAB denied institution on three petitions but never issued a final written decision on the two instituted IPRs (they were terminated on settlement), and the W.D. Tex. court never ruled on validity or infringement. Notably, I found no coverage of this case in Reuters, Bloomberg Law (directly), Law360, Ars Technica, The Verge or other mainstream outlets — the coverage is confined to specialized IP/legal-industry blogs and Korean trade press, and none reports a damages figure, settlement amount, or market impact. Vendor case notes such as PatSnap's litigation summary are analytics products rather than journalism; they confirm the docketed termination basis ("Consent Judgment") but add no independent reporting.
Sources
- IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS WACO DIVISION
- Assignment rules in Western District of Texas now cover related cases, but Judge Albright just got another Proxense lawsuit
- United States District Court, Western District of Texas, Waco Division Proxense, LLC v
- Case 6:21-cv-00210-ADA Document 37 Filed 12/06/21 Page 1 of 20
- From: David Hecht <dhecht@hechtpartners
- IPR2024-00234, No. 2010 Exhibit - Order re Googles Motion to Transfer (P.T.A.B. May. 6, 2024)
- IPR2024-00776, No. 2003 Exhibit - Markman Hearing Transcript (P.T.A.B. Aug. 21, 2024)
- IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS WACO DIVISION
- SAMSUNG ELECTRONICS AMERICA, INC et al. v. Proxense, LLC > Documents
- Proxense v. Samsung: Biometric PDK Authentication Patents | PatSnap - Your Agentic AI Partner
- 더구루
- PTAB abused discretion by staying reexamination that favored patentee, Proxense tells Federal Circuit
Plaintiff representatives
Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Hecht Partners
- David L. Hecht · lead counsel
- Maxim Price · of counsel
- Conor McDonough · of counsel
- Yi Wen Wu · of counsel
- James Zak · PTAB back-up counsel
- In-house counsel
- Erick Scott Robinson · local counsel
I'll research the counsel of record for Proxense, LLC in this case.
Let me dig deeper into the specific attorneys and their firms.
Let me verify the local counsel's firm and check for any additional appearances.
Counsel of Record for Plaintiff Proxense, LLC — Proxense, LLC v. Samsung Electronics Co., Ltd., No. 6:21-cv-00210-ADA (W.D. Tex.)
Proxense was represented by a small, stable team led by the Hecht Partners LLP firm out of New York, with a Texas-based local counsel sponsoring the pro hac vice admissions. Below is the roster as it appears in the docket and in the December 27, 2021 Markman transcript (Ex. 2007 to IPR2021-01438), plus the parallel PTAB filings that confirm the same core counsel.
Lead counsel
David L. Hecht — Lead counsel; trial/argument counsel
- Firm: Hecht Partners LLP, 125 Park Avenue, 25th Floor, New York, NY 10017
- Docket basis: Motion to Appear Pro Hac Vice filed Mar. 10, 2021 (Dkt. 4), granted Mar. 18, 2021; argued for Proxense at the Dec. 27, 2021 Markman hearing ("This is David Hecht and Maxim Price from Hecht Partners for the plaintiff Proxense"); signed the Jan. 2023 stipulation of dismissal. Identified as Lead Counsel in Proxense's PTAB Mandatory Notices (Reg. No. 61,618).
- Experience: Founder of Hecht Partners; former Quinn Emanuel litigator (notably during the smartphone patent wars). Runs Proxense's nationwide enforcement campaign and has generated notable Federal Circuit wins (e.g., the Microsoft appeal) and copyright successes (e.g., the Kyle Hanagami/Epic Games appeal).
Other counsel appearing for Proxense
Maxim Price — Of counsel / argument counsel
- Firm: Hecht Partners LLP, New York, NY
- Docket basis: PHV motion filed Mar. 10, 2021 (Dkt. 8), granted Mar. 18, 2021; appeared and argued at the Markman hearing.
- Experience: Part of Hecht Partners' core Proxense team; also appears on Proxense's later suits (e.g., the Google and Apple matters).
Conor McDonough — Of counsel
- Firm: Hecht Partners LLP, New York, NY
- Docket basis: PHV motion filed Mar. 10, 2021 (Dkt. 5), granted Mar. 18, 2021; listed on the Markman transcript's appearance line for Proxense.
- Experience: Member of the Hecht Partners Proxense trial team; no separately notable outcome I could source.
Yi Wen Wu — Of counsel
- Firm: Hecht Partners LLP, New York, NY
- Docket basis: PHV motion filed Mar. 10, 2021 (Dkt. 7), granted Mar. 18, 2021. (Also listed as Proxense counsel on the later Google stipulation of dismissal.)
- Experience: Member of the Hecht Partners Proxense team; no separately notable outcome I could source.
James Zak — Back-up counsel (PTAB), Reg. No. 60,190
- Firm: Hecht Partners LLP, New York, NY
- Basis: Named as Proxense's back-up counsel in the IPR power-of-attorney and mandatory notices (Nov. 26, 2021) for the Samsung IPRs (IPR2021-01438/-01439/-01444). I could not confirm a district-court appearance in 6:21-cv-00210 — treat his role as PTAB-side unless a docket entry shows otherwise.
Local counsel (W.D. Tex.)
Erick Scott Robinson — Local counsel sponsoring the pro hac vice admissions
- Firm/office: Texas-based; he has practiced in Waco. He handled the PHV motions (Dkts. 4, 5, 7, 8, all filed Mar. 10, 2021) on behalf of Proxense. Note on firm uncertainty: Robinson has moved among several firms around this period — Porter Hedges (2020), Dunlap Bennett & Ludwig (Waco, mid-2020), then Spencer Fane (where he was a partner and IP co-chair), and more recently Cherry Johnson Siegmund James. I could not definitively pin his firm on the March 2021 filing date from the sources retrieved, so I flag this as unverified rather than guess.
- Experience: Career patent litigator with a computer-science/engineering background; former Qualcomm director of patents and Red Hat senior patent counsel; frequent W.D. Tex./E.D. Tex. and ITC practitioner and author of WacoPatentBlog.com.
Not appearing / caveats
- No in-house counsel for Proxense (a small Bend, Oregon–based licensor of former operating-company patents) appears in the public docket; the assertion was run entirely through outside counsel.
- Proxense's PTAB-side team (Hecht, Zak) is documented in the AIA filings, but the district-court appearances are the ones I can confirm from the docket and the Markman transcript; I found no separate order substituting or withdrawing counsel before the Jan. 19, 2023 stipulated dismissal with prejudice (Dkt. entry: "STIPULATION of Dismissal by Proxense, LLC. (Hecht, David)").
Bottom line: Proxense's counsel of record was the Hecht Partners LLP team — David L. Hecht (lead) with Maxim Price, Conor McDonough, and Yi Wen Wu — locally sponsored by Erick Scott Robinson, with James Zak acting as PTAB back-up counsel.
Sources: Justia docket sheet for 6:21-cv-00210 (retrieved Apr. 15, 2021); Markman hearing transcript, Dec. 27, 2021 (Ex. 2007, IPR2021-01438); Proxense Mandatory Notices and Power of Attorney, Nov. 26, 2021 (IPR2021-01438/-01439/-01444); W.D. Tex. Claim Construction Memorandum (Jan. 18, 2022) and Markman transcript in the related Microsoft action; ip fray report on the Google dismissal listing Hecht/Price/Wu; Spencer Fane and IAM profiles for Erick Robinson. Firm affiliation dates for local counsel are the least certain item and are flagged above.
Defendant representatives
Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Quinn Emanuel Urquhart & Sullivan
- Kevin P.B. Johnson · lead counsel
- Victoria F. Maroulis · lead counsel
- Marissa R. Ducca · counsel
- Sean S. Pak · counsel
- Mark Tung · counsel
- Joshua Scheufler · counsel
- James M. Glass · PTAB lead counsel
- Sean T. Gloth · PTAB counsel
I'll research the docket and counsel appearances for this case.
Let me dig into the docket sheet and later filings for the full defense team.
Let me pull the docket sheet and look for local counsel and pro hac vice entries.
Counsel of Record for Defendants — Samsung Electronics Co., Ltd. & Samsung Electronics America, Inc.
Bottom line: Samsung was represented almost entirely by Quinn Emanuel Urquhart & Sullivan LLP, appearing through a large national team. No separate Texas local-counsel firm is reflected in the appearances I could verify. The publicly retrievable docket snapshot (Justia, retrieved ~April 2021) captures only the first three Samsung appearances; the broader team is confirmed through the Dec. 27, 2021 Markman transcript and the parallel PTAB records. I could not access PACER directly, and any sealed filings are not reflected here.
Sources: Justia docket for 6:21-cv-00210 (entries 10–12); the Markman hearing transcript (Proxense v. Samsung, No. W-21-CV-210, Dec. 27, 2021, reproduced as an exhibit in IPR2021-01438); and PTAB oral-hearing records for IPR2021-01439.
District Court team (Quinn Emanuel)
| Attorney | Role | Firm / Office | Note |
|---|---|---|---|
| Kevin P.B. Johnson | Lead / trial counsel (first appearance) | Quinn Emanuel, Redwood Shores, CA | Entry of appearance Apr. 15, 2021 (ECF No. 12). QE's global IP litigation co-chair; longtime Samsung counsel in the Apple v. Samsung smartphone wars. |
| Victoria F. Maroulis | Lead / trial counsel | Quinn Emanuel, Redwood Shores, CA | Appearance Apr. 14, 2021 (ECF No. 11). Veteran Samsung first-chair in Apple v. Samsung and other patent trials. |
| Marissa R. Ducca | Counsel (argued Markman) | Quinn Emanuel, Washington, D.C. | Appearance Apr. 14, 2021 (ECF No. 10). Argued the "device ID code" term at the Dec. 27, 2021 Markman hearing; also Samsung's PTAB counsel of record. |
| Sean S. Pak | Counsel (announced for Samsung at Markman) | Quinn Emanuel, San Francisco, CA | Introduced at Markman as "Sean Pak of Quinn Emanuel representing Samsung." Engineering degrees (MIT) + Harvard J.D.; notable wins for Google, Qualcomm, and Samsung. |
| Mark Tung | Counsel | Quinn Emanuel, Redwood Shores, CA | Listed on the Markman hearing transcript for Samsung. |
| Joshua Scheufler | Counsel (Markman presentation) | Quinn Emanuel (office not stated in transcript) | Present at the Dec. 27, 2021 Markman hearing; presented slides. Likely an associate — office not confirmed. |
PTAB / IPR side (parallel Samsung IPRs on the same patents)
Samsung filed IPRs on the asserted family: IPR2021-01438 ('188 patent), IPR2021-01439 ('700 patent), IPR2021-01444 ('730 patent).
| Attorney | Role | Firm / Office | Note |
|---|---|---|---|
| James M. Glass | PTAB lead counsel | Quinn Emanuel, New York, NY | Argued the Nov. 29, 2022 consolidated oral hearing for IPR2021-01438/01439. |
| Sean T. Gloth | PTAB counsel of record | Quinn Emanuel, New York, NY | Appeared with Glass at the oral hearing ("my associate and counsel of record"). |
Local counsel / in-house
- No separate local-counsel appearance could be verified. The W.D. Tex. docket entries I could retrieve list only Quinn Emanuel attorneys appearing for Samsung. If a Texas local-counsel firm was separately engaged, its appearance is not reflected in the docket snapshot available to me — treat this as an open item rather than a confirmed absence.
- No in-house Samsung attorney appearance is reflected in the available records.
Caveats
- The docket aggregator snapshot stops at mid-April 2021 (three Samsung appearances); the fuller roster above is reconstructed from the Markman transcript and PTAB records. Some later-appearing or withdrawn attorneys may not be captured.
- Attorney "roles" (lead vs. of counsel) are inferred from who argued/appeared; the docket does not formally designate lead counsel.
- This case settled/dismissed with prejudice on January 19, 2023 (Proxense v. Samsung settled on the first day of jury selection), so the team above is the full defense lineup as of the litigation's end.