Samsung Electronics America Inc et al. v. Telcom Ventures LLC

This Inter Partes Review (IPR) case, Samsung Electronics America Inc et al. v. Telcom Ventures LLC, IPR2025-00978, involves Samsung Electronics America Inc and Samsung Electronics Co Ltd (collectively, "Samsung"), global technology operating companies known for their consumer electronics and mobile devices, challenging U.S. Patent No. 12,028,793. The patent owner, Telcom Ventures LLC, appears to operate as a patent assertion entity (PAE) or non-practicing entity (NPE). Telcom Ventures LLC is described as an "inventor-controlled plaintiff," with its CEO, Rajendra Singh, also named as an inventor on the asserted patents.

The IPR is linked to an underlying patent infringement lawsuit filed by Telcom Ventures LLC against Samsung in the Eastern District of Texas (2:24-cv-00691). In that litigation, Telcom Ventures LLC accuses Samsung of infringing eight patents, including the '793 patent, through its Samsung Pay service and various Samsung smartphones. The allegedly infringing technology involves mobile payments leveraging biometric authentication in conjunction with near-field communication (NFC) or magnetic secure transmission (MST) technologies. U.S. Patent No. 12,028,793 specifically describes a method and smartphone for executing financial transactions based on a "physiological parameter" and meeting a "proximity condition."

The case's procedural posture is significant as it highlights recent shifts in Patent Trial and Appeal Board (PTAB) practice. The petition was filed at the PTAB but was "Not Instituted - Procedural." This outcome likely stems from the USPTO's updated discretionary denial policies, implemented in March and October 2025, which allow the Director to deny institution based on various factors, often without a detailed explanation of the merits. Such denials can be based on "settled expectations" or considerations regarding parallel district court litigation, even if a petitioner, like Samsung in a related IPR, offers stipulations to minimize overlap. This case is notable as it exemplifies how PAEs like Telcom Ventures LLC, by targeting widely adopted technologies like mobile payments, prompt challenges from major operating companies, and how recent PTAB policy changes can impact the availability of IPRs as a venue for validity challenges, potentially shifting more of these disputes back to district courts.

This case involves an underlying patent infringement lawsuit filed by Telcom Ventures LLC against Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. in the Eastern District of Texas, which led to Samsung filing an Inter Partes Review (IPR) petition challenging one of the asserted patents at the Patent Trial and Appeal Board (PTAB).

Key Legal Developments and Outcome

I. Parallel District Court Litigation: Telcom Ventures LLC v. Samsung Electronics Co., Ltd. et al. (E.D. Tex., Case No. 2:24-cv-00691)

• Filing & Initial Pleadings (2024)

  • 2024-08-21: Telcom Ventures LLC filed a patent infringement complaint against Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. in the U.S. District Court for the Eastern District of Texas. The complaint asserted infringement of eight patents, including U.S. Patent No. 12,028,793, by Samsung Pay and various Samsung smartphones that support mobile payments using biometric authentication and either near-field communication (NFC) or magnetic secure transmission (MST) technologies.
  • 2024-09-11: The court granted Samsung's unopposed motion for an extension of time to answer the complaint, setting a new deadline of December 8, 2024. Telcom Ventures is represented by Alston & Bird LLP, while Samsung is represented by Quinn Emanuel Urquhart & Sullivan, LLP and Gillam & Smith, LLP.

• Discovery Milestones with Strategic Significance (2025)

  • 2025-01-09: Samsung subpoenaed Motorola Mobility LLC to obtain potential mobile payment prior art.
  • 2025-05-27: Motorola produced documents in response to Samsung's subpoena.
  • 2025-07-31: Samsung informed Telcom Ventures of its intention to amend its invalidity contentions in light of the newly produced Motorola documents and provided the updated contentions.
  • 2025-08-29: Samsung filed a motion for leave to amend its invalidity contentions.
  • 2025-12-18: Fact discovery in the district court case closed.

• Pre-Trial Motions of Substance (2026)

  • 2026-04-23: The District Court granted Samsung's Motion for Leave to Amend Invalidity Contentions. Samsung argued that the Motorola systems invalidate all 118 claims of the eight asserted patents and that allowing the amendment would not cause unfair prejudice to Telcom.

• Present Posture (2026)

  • 2026-05-05: A Sixth Amended Docket Control Order reset jury selection for June 22, 2026. The case remains active and is proceeding toward trial.

II. Parallel PTAB IPR Proceedings: IPR2025-00978

• Filing & Initial Pleadings (2025)

  • 2025-05-23: Samsung Electronics America Inc and Samsung Electronics Co Ltd (Petitioners) filed an Inter Partes Review (IPR) petition, IPR2025-00978, challenging U.S. Patent No. 12,028,793, owned by Telcom Ventures LLC (Patent Owner). This IPR was filed in response to the parallel district court litigation.

• Outcome - Not Instituted - Procedural (2025)

  • 2025-10-10: The Patent Trial and Appeal Board (PTAB) issued a decision declining to institute IPR2025-00978, with the status recorded as "Not Instituted - Procedural."
  • Procedural Reason for Denial: While the specific decision document for IPR2025-00978 is not detailed in the search results, the "Not Instituted - Procedural" outcome, particularly on the same date for multiple IPRs filed by Samsung against Telcom for related patents, strongly indicates a discretionary denial by the PTAB. These denials often arise under the Director's discretion, such as the framework established by the NHK-Fintiv factors (or subsequent policies), which aim to manage parallel district court litigation. Petitioners sometimes offer stipulations to avoid such discretionary denials, as seen in a related IPR (IPR2025-00973) where Samsung stipulated it would not pursue certain invalidity arguments in the co-pending district court if the IPR were instituted. The USPTO Director possesses broad and generally unreviewable discretion in institution decisions.

• Other Parallel PTAB IPRs

  • Samsung filed several other IPR petitions against Telcom Ventures challenging related patents from the same family on May 23, 2025, including IPR2025-00977 (challenging U.S. Patent No. 11,770,756), which were also "Not Instituted - Procedural" on October 10, 2025.
  • U.S. Patent No. 12,028,793 has also been challenged by Google LLC in IPR2025-01401, which resulted in a "Procedural Termination" on December 22, 2025.

Here is the identified counsel of record representing Samsung Electronics America Inc and Samsung Electronics Co Ltd (plaintiffs) in IPR2025-00978, based on their representation of Samsung in a related patent infringement lawsuit filed by Telcom Ventures LLC in district court (Case No. 2:24-cv-00691), which involves the same patent (US Patent 12028793).

Quinn Emanuel Urquhart & Sullivan, LLP

• Sean S. Pak

  • Role: Lead Counsel (Co-Chair of the firm's National Intellectual Property Litigation Practice).
  • Firm & Office Location: Quinn Emanuel Urquhart & Sullivan, LLP, San Francisco, CA.
  • Experience Note: Experienced trial lawyer in high-stakes patent, trade secret, and copyright litigation, with a technical background in electrical engineering and computer science. He was lead counsel for Samsung in a patent trial in Marshall, Texas, obtaining a complete defense verdict.

• Kevin Hardy

  • Role: Lead Counsel (Partner).
  • Firm & Office Location: Quinn Emanuel Urquhart & Sullivan, LLP, Washington, D.C.
  • Experience Note: Extensive experience in intellectual property disputes, including patent cases, licensing, and antitrust cases, notably serving as trial counsel for Samsung in a jury trial that resulted in a complete defense verdict.

• Iman Lordgooei

  • Role: Counsel (Partner).
  • Firm & Office Location: Quinn Emanuel Urquhart & Sullivan, LLP, San Francisco, CA.
  • Experience Note: Focuses on patent and trade secret litigation, with technical expertise in cybersecurity, AI, enterprise software, and telecommunications. He has successfully defended clients in multi-year patent litigation in the Eastern District of Texas.

• Joseph Reed

  • Role: Counsel (Associate).
  • Firm & Office Location: Quinn Emanuel Urquhart & Sullivan, LLP, Silicon Valley (Redwood Shores), CA.
  • Experience Note: Practices intellectual property law, joined the firm in 2018, and previously served as an infantry officer in the Marine Corps.

• Brady Huynh

  • Role: Counsel (Associate).
  • Firm & Office Location: Quinn Emanuel Urquhart & Sullivan, LLP, Silicon Valley (Redwood Shores), CA.
  • Experience Note: Focuses on intellectual property litigation and is admitted to practice before the USPTO.

• Jeremy Thomas

  • Role: Counsel (Associate).
  • Firm & Office Location: Quinn Emanuel Urquhart & Sullivan, LLP, San Francisco, CA.
  • Experience Note: Practices intellectual property litigation with a background in computer engineering and privacy engineering.

• Benjamin M. Kleinman

  • Role: Of Counsel.
  • Firm & Office Location: Quinn Emanuel Urquhart & Sullivan, LLP, San Francisco, CA.
  • Experience Note: Experienced patent and technology litigation attorney, registered patent attorney, with expertise in software, computer architecture, and consumer electronic devices.

Gillam & Smith, LLP

• Melissa Richards Smith
  • Role: Local Counsel (Partner).
  • Firm & Office Location: Gillam & Smith, LLP, Marshall, TX (and Tyler, TX).
  • Experience Note: Highly experienced trial lawyer in the Eastern District of Texas, representing both plaintiffs and defendants in federal court patent infringement litigation, and has served as local counsel in over three thousand patent cases.

Telcom Ventures LLC is represented by attorneys from Alston & Bird LLP in the patent infringement lawsuit against Samsung in the Eastern District of Texas (2:24-cv-00691) and in related IPR proceedings at the PTAB.

Here are the counsel of record representing Telcom Ventures LLC:

• Christopher T.L. Douglas

  • Role: Counsel of Record (Lead Counsel is likely given his prominence in related IPRs).
  • Firm: Alston & Bird LLP (office location not specified in search results, but the firm has offices in various major cities).
  • Note: Appears as counsel for Telcom Ventures in multiple IPRs, including IPR2025-01236, IPR2025-01419, and is listed for electronic service in other related IPRs.

• Kirk Bradley

  • Role: Counsel
  • Firm: Alston & Bird LLP
  • Note: Listed for electronic service for Patent Owner in IPR2025-01236.

• Emily Welch

  • Role: Counsel
  • Firm: Alston & Bird LLP
  • Note: Listed for electronic service for Patent Owner in IPR2025-01236.

• Mary Riolo

  • Role: Counsel
  • Firm: Alston & Bird LLP
  • Note: Listed for electronic service for Patent Owner in IPR2025-01236.

• Katherine Rubschlager

  • Role: Counsel
  • Firm: Alston & Bird LLP
  • Note: Listed for electronic service for Patent Owner in IPR2025-01236.

• Karlee Wroblewski

  • Role: Counsel
  • Firm: Alston & Bird LLP
  • Note: Listed for electronic service for Patent Owner in IPR2025-01236.

• Jacob Young

  • Role: Counsel
  • Firm: Alston & Bird LLP
  • Note: Listed for electronic service for Patent Owner in IPR2025-01236.

The information primarily stems from filings in related IPRs where Alston & Bird attorneys are listed as counsel for Telcom Ventures LLC, and a news article identifying Alston & Bird as representing Telcom Ventures in the Eastern District of Texas case.