Rembrandt Wireless Technologies, LP v. Samsung Electronics Co., Ltd. et al.

I'll research this case to verify the key facts before drafting.

Case Overview and Background

The parties. Plaintiff Rembrandt Wireless Technologies, LP is a Virginia limited partnership with a stated principal place of business in Bala Cynwyd, Pennsylvania and a parent entity, Rembrandt II, LLLP — a non-practicing patent-holding entity, not an operating company (its Fed. Cir. certificate of interest identifies no product business; the Broadcom complaints it later filed give the Pennsylvania address). Its business model is patent acquisition and licensing/enforcement, and its lead counsel openly conceded at trial that Rembrandt "is not a manufacturer of goods" and that "[i]ts business is investing in intellectual property" (Law.com, "Litigator of the Week," Feb. 19, 2015). The patents-in-suit name Gordon Bremer as inventor — the Paradyne engineer whose 1997 application is the priority source of the family — and press accounts describe Bremer as holding a personal royalty interest in the recovery (General Counsel News / Ars Technica). The defendants are the Samsung entities: Samsung Electronics Co., Ltd. (Korea), [Samsung Electronics America, Inc.](/litigations/by-plaintiff/Samsung%20Electronics%20America%2C%20Inc.), Samsung Telecommunications America, LLC, and Samsung Austin Semiconductor, L.L.C., plus Research In Motion Corporation and Research In Motion Ltd. (BlackBerry). Samsung is a device/chip-integration OEM; BlackBerry was accused on the same Bluetooth-based theory and settled before trial — reported as roughly a year ahead of the February 2015 verdict (GH IP Law) — and the Rembrandt–BlackBerry license was then used affirmatively at trial as a comparable in Rembrandt's damages case (Dkt. 350).

The accused technology and the patents. Rembrandt alleged that Samsung handsets, tablets and other products (press coverage emphasized Galaxy S phones; roughly 400 accused SKUs were addressed at pretrial) that implement the Bluetooth SIG's Enhanced Data Rate (EDR) feature of Bluetooth 2.0 and later infringe, because EDR-enabled packets use a basic-rate header followed by a different (DQPSK/8DPSK) payload modulation — i.e., two modulation methods in a master/slave packet exchange. Samsung's counter-story, laid out in its opening, was that Bluetooth's whole design premise was interoperability (the opposite of the patent's "incompatible modem" problem), that the packet header never "indicates" a modulation change, and that Samsung merely buys Broadcom and other third-party Bluetooth chips (trial transcript, Dkt. 290). The two asserted patents share a specification titled "System and Method of Communication Using at Least Two Modulation Methods" and claim priority to a Dec. 5, 1997 provisional: U.S. 8,023,580 claims a master/slave network in which devices communicate using at least two modulation methods, with signaling (including reversion to the first method) between modulation "types" — claims 2 and 59 were tried; U.S. 8,457,228 (issued June 4, 2013; expired Dec. 4, 2018) claims a master communication device transmitting a first message with address information in one portion and a payload in another, and switching modulation types — claim 21 was tried. Both rise or fall on "modulation method of a different type," which Judge Gilstrap construed as "different families of modulation techniques, such as the FSK family … and the QAM family" (2014 WL 3385125, at *15 (E.D. Tex. July 10, 2014)).

Procedural posture, venue, and why it matters. Filed March 15, 2013 in the Marshall Division of the Eastern District of Texas before Judge Rodney Gilstrap, with pretrial referral to Magistrate Judge Roy S. Payne (Dkt. 2); the '228 patent was added by amended complaint on June 5, 2013. Venue mattered both structurally — Marshall's reputation for speed, patent-experienced judges, and plaintiff-friendly juries, which is precisely why an NPE filed there — and doctrinally: the case became a Federal Circuit marking precedent. After a five-day trial (Feb. 9–13, 2015) the jury deliberated under an hour and returned a verdict of infringement and no invalidity with $15.7 million in damages (Dkt. 288; Dkt. 306), reflecting Rembrandt's expert's 5–11¢-per-device royalty applied to ~290 million units (a $14.5M–$31.9M range). Judge Gilstrap denied JMOL/new trial (Dkt. 352, Feb. 17, 2016), and the Federal Circuit affirmed claim construction and the JMOL denials but vacated the damages award, holding that Rembrandt could not use a statutory disclaimer of claim 40 of the '580 patent (the Zhone-licensed, unmarked claim) to escape § 287(a) marking, and remanding the novel question whether marking attaches patent-by-patent or claim-by-claim — Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., 853 F.3d 1316 (Fed. Cir. Apr. 17, 2017). That holding is now standard citation for the proposition that disclaimer cannot "retroactively dissolve" the marking requirement. The case is also a textbook IPR-linkage study: Samsung filed ten IPRs against the two patents in 2014 (IPR2014-00514/-00515/-00518/-00519 on the '580; -00889/-00890/-00891/-00892/-00893/-00895 on the '228) plus a later joinder petition (IPR2015-00555, institution denied June 19, 2015); the Board instituted only IPR2014-00518 and, in its Sept. 17, 2015 final written decision, invalidated a large block of '580 claims (1, 4, 5, 10, 13, 20–22, 54, 57, 58, 61, 62, 66, 70, 76–79) over admitted prior art plus Boer — while declining to institute on claims 2 and 59, the very claims tried to verdict. Notably, the PTAB read "different types" as "incompatible" methods (a broader reading than Judge Gilstrap's "different families"), a construction tension that never had to be reconciled because the two tracks resolved different claims. Finally, the dispute was not an isolated suit: Rembrandt re-asserted the same two patents against Broadcom in the Central District of California in April 2019 (Nos. 8:19-cv-00705 and 8:19-cv-00708), prompting a fresh round of Broadcom IPRs (including IPR2020-00509 and -00510), and the patents were also the subject of ex parte reexaminations 90/013,808 and 90/013,809.

Sourcing caveats. The August 2019 dismissal with prejudice following settlement is taken from the case record as supplied; I was unable to independently retrieve the specific closing docket entry or settlement terms, and the settlement amount is not public in the materials I could verify. The precise recalculation of damages on remand after the 2017 Federal Circuit vacatur (and whether any portion of the $15.7M was ultimately collected) is likewise not well sourced in the available public record — the 2019 dismissal makes that moot. Party descriptions of Rembrandt's corporate family rest on party filings and press characterization (NPE/PAE), not on a court finding.

I'll research the docket history, rulings, and parallel PTAB proceedings for this case.

Rembrandt Wireless Techs., LP v. Samsung Elecs. Co. — Chronology of Key Developments

Case No. 2:13-cv-00213-JRG-RSP (E.D. Tex., Marshall Div.); Judge Rodney Gilstrap, with Magistrate Judge Roy S. Payne handling pretrial/claim construction matters. Counsel for Rembrandt: Heim, Payne & Chorush LLP (Michael F. Heim, Eric J. Enger, Miranda Y. Jones) and Ahmad, Zavitsanos, Anaipakos, Alavi & Mensing P.C. (Demetrios Anaipakos, Amir Alavi, Jamie Aycock, Alisa Lipski, Kyril Talanov), with Ward & Smith PLLC as local counsel. Counsel for Samsung: Dickstein Shapiro LLP (Jeffrey K. Sherwood, Daniel G. Cardy, Frank C. Cimino, Jr.).

Builds on the existing case summary; focuses on docket-level detail, the PTAB track, and what each event did strategically.

---

1. Filing and initial pleadings

2013-03-15 — Complaint filed. Rembrandt sued Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung Telecommunications America, LLC, Samsung Austin Semiconductor, L.L.C., plus Research In Motion Corp. and RIM Ltd., in E.D. Tex. (Marshall). Case assigned No. 2:13-cv-00213. The original complaint asserted only the '580 patent — the '228 patent had not yet issued.

2013-06-04 — '228 patent issues. U.S. 8,457,228 ("System and Method of Communication Using at Least Two Modulation Methods"), a continuation in the same family as the '580.

2013-06-05 — First amended complaint adding the '228 patent to the case; the case thereafter proceeded on both patents. Pleadings were amended more than once, culminating in the Third Amended Complaint (Dkt. 84), which is the operative pleading referenced in later orders and which accused Samsung of infringing both patents.

Answers / counterclaims. Samsung answered and counterclaimed for declaratory judgment of noninfringement and invalidity of both patents (Samsung is described as "Counter Claimant" in the docket). RIM answered separately. Rembrandt answered the Samsung counterclaims as "Counter Defendant."

RIM/BlackBerry exit. Research In Motion/BlackBerry settled and was dismissed before trial; contemporaneous reporting describes BlackBerry as having "settled a year before" the February 2015 verdict, i.e., roughly 2014. I could not verify the precise dismissal date or terms from a primary source — treat the 2014 timing as reported, not docket-confirmed.

---

2. Claim construction (Markman)

2014-07-10 — Claim Construction Memorandum and Order. Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., No. 2:13-CV-213-JRG-RSP, 2014 WL 3385125 (E.D. Tex. July 10, 2014). This was the single most consequential ruling in the case.

The key term was "modulation method [] of a different type." The court construed it as "different families of modulation techniques, such as the FSK family of modulation methods and the QAM family of modulation methods." The construction rested almost entirely on a prosecution-history statement made during prosecution of the '580 parent, where the applicant inserted the "different types" limitation after a notice of allowance and explained it meant "different families of modulation techniques, such as the FSK family … and the QAM family." Samsung's proposed construction — that "different types" meant merely mutually incompatible modulation (e.g., same-family FSK at different amplitudes) — was rejected.

Why it mattered: Samsung's entire obviousness case, and a broader noninfringement theory, depended on the broader "incompatible" reading. The narrow "different families" construction made the Bluetooth EDR (GFSK + DPSK) accused products fall comfortably inside the claims and shrank the prior-art space. The Federal Circuit later affirmed this construction de novo. Samsung never appealed the jury's infringement finding.

---

3. Parallel PTAB proceedings (2014–2015) and the motion to stay

This is the part of the case that most shaped trial strategy. Samsung filed ten IPR petitions across the two patents in two waves.

'580 patent — four petitions filed 2014-03-20:

'228 patent — six petitions filed 2014-06-04: IPR2014-00889, -00890, -00891, -00892, -00893, and -00895.

• IPR2014-00889 (claims 1–3, 5, 10, 11–21): institution denied (Paper 8, Dec. 2014) — again on the printed-publication status of the Draft Standard.
• IPR2014-00891 (Paper 8, 2014-12-10): institution denied as to all challenged claims.
• By December 2014 the Board had declined to institute on claim 21 of the '228 patent, the claim Rembrandt ultimately tried.

Strategic consequence — claim narrowing. Because the Board instituted on some '580 claims but refused on others, Rembrandt affirmatively reduced its case to the non-instituted claims only: claims 2 and 59 of the '580 patent and claim 21 of the '228 patent. Rembrandt's counsel confirmed this on the record at the stay hearing ("the only claims that are going to be asserted at trial in this case are claims for which the PTAB has denied instituting an IPR"), and Samsung agreed the point was undisputed. This was a deliberate IPR-avoidance architecture: it eliminated any §315(a)/(b) estoppel exposure and any risk of the district court deferring to an instituted PTAB trial on the same claims. It also explains why the instituted claims of IPR2014-00518 were never tried.

Early 2015 — Motion to stay pending IPR (Dkt. 112) DENIED. The court (Judge Payne) applied the Landis / Nken-style competing-interests balancing and declined to stay, emphasizing that (i) the PTAB had already refused institution on every claim Rembrandt intended to try, (ii) Samsung had filed a second round of petitions on the non-instituted claims and the Board had again denied institution as to the '580 non-instituted claims on 2015-01-28, and (iii) trial was set for 2015-02-09. Denying the stay was

I'll search several angles to find actual published coverage of this case.

Now let me look for the Ars Technica piece, the 2019 settlement/dismissal coverage, and the 2018 damages reduction.

Press coverage of Rembrandt Wireless v. Samsung (E.D. Tex. 2:13-cv-00213)

The February 2015 verdict drew the widest coverage, framed almost entirely as a "patent troll" story. Ars Technica (Joe Mullin) reported in February 2015 that a Marshall jury found Samsung's Bluetooth-enabled phones, tablets and televisions infringed U.S. 8,023,580 and 8,457,228, awarding $15.7 million, and built the piece around inventor Gordon Bremer's cross-examination — that he had not read the Bluetooth 2.0 specification until 2007, that he "made no contributions to the standards body," and that he receives 2.5% of recoveries (about $670,000 over nine years of consulting). Ars framed the win as "the second jury verdict in two weeks giving money to a patent troll" and noted Rembrandt's lawyers' position that the patents reach "all products using Bluetooth 2.0 and later—a huge swath of products." Wired used the verdict as evidence that "the patent wars are far from over" despite Alice and other defense-side wins, and quoted EFF staff attorney Daniel Nazer — "This is a classic example of patents as an attack on innovation… There's nothing to suggest that this guy contributed anything to the [Bluetooth] technology we used today" — as well as Rembrandt counsel Demetrios Anaipakos' statement that "Justice was done here." Business Insider and SlashGear rewrote the Ars account for broader audiences, and General Counsel News ran a condensed version crediting Ars. Trade/legal press covered it more conventionally: Law360's case page records its 2015-02-13 report on the $15.7 million verdict, and Law.com named Anaipakos "Litigator of the Week" on 2015-02-19, reporting the jury deliberated "slightly less than an hour" and that he chose to tell jurors "early and often that Rembrandt was not a manufacturer of goods."

The accounts diverge in several places. Law.com described the verdict as covering "three of Rembrandt's patents," while Ars Technica and the docket describe two patents-in-suit. Business Insider headlined "$16 million" though its text says $15.7 million. Most strikingly, Ars wrote that "court records show no indication Blackberry settled, so it may have an upcoming trial date," whereas Wired stated flatly that Rembrandt "also sued BlackBerry for infringement, and settled out of court" — the latter consistent with Rembrandt's trial briefs and with Rembrandt's counsel's press release (not press coverage, but the source of several quotes repeated by outlets), which said BlackBerry settled before trial and that Rembrandt "also will receive royalty payments on all Samsung Bluetooth sales for the life of the patents." That ongoing-royalty characterization goes beyond the verdict form — the jury returned a lump-sum reasonable royalty, and post-trial ongoing relief was severed into a separate action. Comment from Samsung was scarce: Business Insider reported Samsung "declined comment" on whether it would appeal, and Law.com noted Samsung's counsel at Ropes & Gray did not return a call. The verdict also traveled internationally with the same troll framing, e.g. Computerworld Denmark ("Bølge af Bluetooth-sager truer") and futurezone.at, both citing Ars.

Post-trial and appellate developments were covered mainly by legal-trade and law-firm outlets, with the marking issue as the hook. Bloomberg Law's IP Law Daily reported on 2016-02-18 that Judge Gilstrap denied Samsung's renewed JMOL and new-trial motions, and its 2017-04-17 top story reported that the Federal Circuit affirmed validity and JMOL rulings but vacated the $15.7 million award on marking. IPWatchdog summarized the same decision as "Samsung Succeeds in Reducing Damages," emphasizing the holding that letting Rembrandt "avoid the consequence of its failure to mark undermines the marking statute's public notice function," and flagging the remanded patent-by-patent versus claim-by-claim question. Practitioner analyses — IP Intelligence Report (also on Lexology), McDermott via National Law Review, and Harness IP's HDP Patents Blog — treated the case as a licensee-marking cautionary tale, with Harness IP noting the decision "may upend [the] $15.7 million damage award" and IP Intelligence Report highlighting the Zhone Technologies license that omitted a marking obligation. On the remand, Law360 reported on 2018-03-29 that the court "trimmed a $15.7 million patent infringement verdict against Samsung to $11.1 million, rejecting the larger reduction the electronics giant had sought" — consistent with the amended final judgment entered 2018-03-28 awarding $11,111,920.

Coverage gaps worth flagging. I found no mainstream, wire-service, or tech-press reporting (Reuters, Bloomberg News, The Verge, Patently-O, EFF Deeplinks) specifically on this case beyond the outlets above, and nothing at all on the August 2019 dismissal with prejudice or the settlement terms — so the reported record of how the case ended comes from the docket rather than the press, and any settlement figure should be treated as unreported. The 2013 filing itself also appears to have generated no identifiable press coverage; the case entered public view only with the February 2015 verdict, and coverage after that point was dominated by law-firm press releases and blog analyses of the marking ruling rather than independent reporting.

Sources

• KeyCite Yellow Flag - Negative Treatment Distinguished by Zimmer Surgical
• Case 8:19- cv- 00705- JLS- JDE Document 1 Filed 04/15/19 Page 18 of 20 Page ID #:18
• Man Claims to Own Bluetooth, Scores $15.7M Verdict Against Samsung
• Tag Archive for "law firm" - AZA Law
• Federal Circuit Archives - Posts in Federal Circuit
• Case 2:13-cv-00213-JRG Document 352 Filed 02/17/16 Page 1 of 9 PageID #: 12466
• Rembrandt v Samsung Closes at $15.7 Million - GH IP Law
• Rembrandt Wireless Technologies, LP v. Samsung Electronics Co. – CourtListener.com - Headmatter
• IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
• March 15, 2013: Rembrandt sued Samsung for infringement of the '580 Patent
• February 23, 2015 - Miller Fair Henry
• Litigator of the Week: $15.7 Million Patent Verdict Win | Law.com - Page Printed From:

I'll research the docket and related sources for plaintiff-side counsel.

Counsel of record for Rembrandt Wireless Technologies, LP — No. 2:13-cv-00213-JRG (E.D. Tex., Marshall Div.)

Rembrandt's district‑court team was a three‑firm structure typical of E.D. Tex. practice: a Houston patent boutique as lead/primary counsel, a Houston trial firm as co‑counsel, and an East Texas firm as local counsel. The lineup below is drawn from the docket entries, the Federal Circuit appearance certificate in No. 16‑1729, contemporaneous firm/press announcements, and IPR service lists that reproduced the district‑court service list.

1. Lead / primary patent counsel — Heim, Payne & Chorush LLP (Houston, TX)

Office: Heritage Plaza, 1111 Bagby St., Suite 2100, Houston, TX 77002 (during the 2015–16 trial phase the firm's letterhead was 600 Travis St., Suite 6710, Houston, TX 77002). The firm is a Houston IP‑litigation boutique that functioned as Rembrandt's IP counsel in the parallel PTAB and Federal Circuit proceedings as well.

2. Co‑counsel / trial counsel — Ahmad, Zavitsanos, Anaipakos, Alavi & Mensing, P.C. ("AZA"), Houston, TX

Office: One Houston Center, 1221 McKinney St., Suite 2500, Houston, TX 77010 (some early filings list Suite 3460). AZA is a Houston commercial/IP trial firm; the Rembrandt trial was one of its higher‑profile patent wins of that period ($15.7M verdict, Feb. 13, 2015).

3. Local counsel — Ward & Smith Law Firm (now Ward, Smith & Hill, PLLC), Longview, TX

Office: 1507 Bill Owens Parkway, Longview, TX 75604 (early service lists: PO Box 1231 / 1127 Judson Road, Suite 220, Longview, TX 75606).

4. PTAB‑side counsel (separate track, not district‑court counsel of record)

In the Samsung IPRs against the '580 and '228 patents, Rembrandt's attorneys of record before the PTAB were Thomas Engellenner (Reg. No. 28,711, lead counsel) and Reza Mollaaghababa of Pepper Hamilton LLP, Boston, MA (Patent Owner's Power of Attorney, IPR2015‑00114, filed 10/31/2014). Their appearance is PTAB‑only; they are not shown as district‑court counsel, and the district‑court team (Heim/Enger and AZA) handled the E.D. Tex. filings and the Federal Circuit appeal. Note this as a dual‑track arrangement, not as district counsel.

Verification caveats

• No attorney names here are inferred. Each is tied to a docket entry, the Federal Circuit appearance certificate, a court‑generated counsel listing, or a firm/press announcement.
• Post‑remand phase (2017–2019) not confirmed. The Federal Circuit vacated the damages award on marking grounds and remanded (853 F.3d 1370, No. 2016‑1729), and the case was dismissed with prejudice in August 2019 after settlement. The sources I could reach document the 2013–2017 lineup; I did not locate a substitution‑of‑counsel order or a 2019 dismissal filing, so whether the Heim/AZA/Ward team remained of record through the 2019 dismissal is unverified. Confirming that requires the post‑remand docket sheet (Dkts. ~390–end) via PACER/RECAP.
• Russ August & Kabat did not appear in this case. RAK (Marc Fenster, Reza Mirzaie, Brian Ledahl, et al.) shows up in other Rembrandt‑related and unrelated E.D. Tex./W.D. Tex. matters and in later PTAB work; do not conflate that firm with this docket.
• Unsealed/sealed filings: several substantive filings here are sealed (e.g., Dkt. 308, 329, 330), but counsel's identities are confirmed from public entries, so sealing does not affect this list.
• Non‑counsel "Not Classified By Court" names on the docket (William Joseph Cornelius, Jr.; David Keyzer; Paul Michel) are the court's technical advisor/mediator, not plaintiff's counsel.

I'll research the docket and related sources for counsel of record for the Samsung and BlackBerry/RIM defendants.

Good initial data. Let me verify against the docket-derived counsel list and check the RIM/BlackBerry side.

Let me verify firm affiliations (including later moves) and the BlackBerry/RIM side's status.

Counsel of Record — Defendants

Verification note up front. I could not pull the live PACER docket sheet in this session. The most complete counsel roster I found is the "COUNSEL" block reproduced in the PTAB exhibits from the court's January 29, 2016 order, Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., 2016 WL 633909 (E.D. Tex. Jan. 29, 2016) (Dkt. 112 order on motion to stay), which is quoted verbatim in the exhibit set filed in IPR2020-00509/IPR2020-00510 and in Apple's IPR2020-00036 exhibit list. That block is the best proxy for the docket's "attorney to be noticed" entries. It is corroborated by the contemporaneous trial reporting (Marshall News Messenger, Feb. 13, 2015) and by the Oct. 2014 IPR service list that identifies Samsung's petitioner counsel at Dickstein Shapiro. Where the record is genuinely ambiguous — principally Jeffrey Sherwood's firm at the time of trial — I flag it rather than paper over it.

---

1. Samsung defendants (Samsung Electronics Co., Ltd.; Samsung Electronics America, Inc.; Samsung Telecommunications America, LLC; Samsung Austin Semiconductor, L.L.C.)

In-house counsel: No Samsung in-house attorney appears as attorney of record in any of the counsel listings I reviewed. If in-house counsel participated, they did so without a docket appearance.

---

2. BlackBerry / RIM defendants (Research In Motion Corporation; Research In Motion Ltd.)