Litigation
Samsung Electronics America, Inc. v. Parus Holdings, Inc.
settled/terminated before institutionIPR2023-00162
- Filed
- 2022-11-06
- Terminated
- 2023-03-06
Patents at issue (1)
Plaintiffs (1)
Defendants (1)
Summary
Samsung petitioned for inter partes review of the '705 patent; the proceeding terminated before an institution decision due to settlement.
Case overview & background
Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.
Case Overview & Background
Parties and accused technology. This dispute is the latest round of a multi-front patent campaign by Parus Holdings, Inc., a venture-backed, privately held Chicago company founded in 1997 that develops and licenses voice-driven unified-communications and voice-assistant technology (it self-describes as a pioneer in voice search, messaging, and mobile voice UI). Although the docketed "case" here is the PTAB proceeding IPR2023-00162, the underlying litigation is Parus Holdings Inc. v. [[Samsung Electronics America, Inc.](/litigations/by-plaintiff/Samsung%20Electronics%20America%2C%20Inc.) et al.](/litigations/by-defendant/Samsung%20Electronics%20America%2C%20Inc.%20et%20al.), No. 6:21-cv-01073-ADA (W.D. Tex., filed Oct. 15, 2021), in which Parus — represented by McKool Smith (John B. Campbell, Scott W. Hejny) — accused Samsung Electronics Co., Ltd. and its U.S. subsidiary Samsung Electronics America, Inc. of willful infringement of Parus's voice-browsing patents. The accused products center on Samsung's Bixby voice assistant and voice-enabled Internet search on Galaxy smartphones and tablets (the complaint expressly names the Galaxy Note 9 and Samsung SmartThings devices as examples, alongside Bixby, the Samsung browser, and Samsung Pay), mirroring Parus's parallel suits against Apple's Siri, Google Assistant, and Microsoft's Cortana.
Patents and procedural posture. The patent at issue in IPR2023-00162 is U.S. Patent No. 6,721,705, "Robust Voice Browser System and Voice Activated Device Controller" (issued Apr. 13, 2004; inventors Alexander Kurganov and Valery Zhukoff; Tech Center 2600). The '705 patent claims a system that lets a user control a web browser by telephone/voice, organizes websites into ranked categories, and periodically updates those rankings via a polling mechanism — and it shares a specification with family members 7,386,455, 7,881,941, and 8,185,402, which Parus also asserted against Samsung in the same W.D. Tex. suit. Samsung — represented by Quinn Emanuel (lead counsel James M. Glass) — filed the IPR petition on November 6, 2022, challenging claims 1–4 before a panel of APJs Patrick M. Boucher, David C. McKone, and Stacey G. White. The case never reached an institution decision: on March 1, 2023 the parties filed a joint motion to terminate (Paper 6) disclosing a confidential binding release that resolved both the IPR and the W.D. Tex. litigation, and the Board terminated the proceeding on March 6, 2023 (the district case closed Feb. 22, 2023). Venue in Waco before Judge Alan D. Albright — then the most patentee-friendly district in the country for NPE assertions — was premised on Samsung America's regular places of business in Austin, Richardson, and Plano, Texas, and on Samsung Electronics Co.'s status as a foreign corporation (venued in any district).
Why it matters. The case is notable as part of Parus's coordinated assertion campaign against essentially every major voice-assistant maker (Apple, Google, Microsoft, Samsung, LG), and for the unusually dense IPR counteroffensive it triggered: between November 2021 and December 2022, those defendants filed sixteen IPR petitions against the Parus family, including Samsung's IPR2023-00162 ('705), IPR2023-00163 ('455), and IPR2022-01502 ('402) — the latter two also settled and terminated in March 2023. The '705 patent's litigation history is split: Google's parallel IPR2022-00279 went to a final written decision that upheld claims 1–2 (Aug. 1, 2024), but the Federal Circuit vacated and remanded on July 13, 2026 (Google LLC v. Parus Holdings, Inc., No. 24-2381), faulting the Board's isolated treatment of the Burrows reference, an unannounced claim construction of "unexpected response," and its failure to address inconsistency with related IPRs where the same prior-art combinations (Kovatch-Burrows, Wise-Burrows) rendered family claims obvious. Samsung's settlement — which extinguished its own IPR without any Board merits ruling — is consistent with the broader pattern in which several Parus family members were invalidated on IPR and § 101 grounds (e.g., the '402 patent), even as Parus secured at least temporary PTAB wins on the '705. The confidential settlement terms were filed under seal per 35 U.S.C. § 317(b), so the financial terms are not publicly known.
Key legal developments & outcome
Major rulings, motions, claim construction, settlements, and the present posture or final disposition.
I'll research the underlying patent infringement litigation and the parallel IPR proceeding. Let me start with multiple searches.
I've identified the underlying district court case: Parus Holdings Inc. v. Samsung Electronics Co., Ltd et al., No. 6:21-cv-01073-ADA (W.D. Tex.). Now let me research the district court docket developments and parallel IPRs (including IPR2023-00163).
Key Legal Developments and Outcome — Parus v. Samsung (W.D. Tex. 6:21-cv-01073-ADA) and Parallel IPRs
Important framing note: The case metadata you provided (IPR2023-00162) is the PTAB inter partes review filed by Samsung against the '705 patent, not the underlying infringement suit. The underlying district court litigation is Parus Holdings Inc. v. Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc., No. 6:21-cv-01073-ADA (W.D. Tex., Waco Division, Judge Alan D. Albright), which asserted the '705 patent together with two family-related patents ('455 and '402). I reconstructed the timeline below from RPX, DocketAlarm, Patexia, PTAB filings, and the parties' own IPR papers. I could not access PACER directly, so district court docket details beyond those visible in public secondary sources are flagged as unverified.
1. Filing & Initial Pleadings
- 2021-10-15 — Complaint filed. Parus sued Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. in the Western District of Texas (Waco), No. 6:21-cv-01073-ADA, before Judge Alan D. Albright. (RPX Insight lists filed 10/15/2021; a PRNewswire release dated 2021-10-18 announced the filing as Parus's "second patent lawsuit" against Samsung.) The complaint alleged willful infringement of:
- U.S. Patent No. 6,721,705 ("Robust voice browser system and voice activated device controller," issued 2004-04-13; inventors Alexander Kurganov and Valery Zhukoff) — claims 1–4 later asserted;
- U.S. Patent No. 7,386,455 ('455); and
- U.S. Patent No. 8,185,402 ('402).
- Accused products included Samsung Galaxy Note 9, SmartThings devices, and voice-assistant/Bixby-enabled offerings. Parus demanded a jury, treble damages for willfulness, attorneys' fees, and a permanent injunction (per the complaint text reproduced as Ex. 1026 in the IPRs).
- Answer/counterclaims: I could not verify the specific answer, counterclaim, or 12(b)(6)/12(c) filings from public sources. What is verifiable is that Samsung (represented in the district court by Winston & Strawn per Patexia's firm-profile data) actively defended — e.g., serving invalidity contentions and pursuing IPR challenges — and the case proceeded under Judge Albright's standard patent scheduling orders (a scheduling order issued 2022-03-31 is referenced in later filings).
2. Pre-Trial Motions and Scheduling
- 2022-08-22 — Amended Scheduling Order (Doc. 75). The court's amended scheduling order (later filed as Ex. 1024 in IPR2023-00163) set a Markman hearing for 2022-10-03 and laid out consolidated claim-construction briefing, contentions deadlines, fact/expert discovery close dates, narrowing meet-and-confers, and a dispositive-motion/Daubert deadline of 2023-01-26 (the order's date-to-event mapping is partially garbled in the available excerpts; I have not verified each individual date).
- 2022-10-07 — Amended Preliminary Invalidity Contentions. Apple, Samsung, Microsoft, and Google jointly served amended preliminary invalidity contentions across their related W.D. Tex. cases. Against the '705 family they challenged Parus's asserted priority dates (conception 1998-10-13; reduction to practice 2000-02-04), argued the provisional applications failed to support the claims, and asserted § 101 subject-matter ineligibility plus other invalidity grounds. (These contentions were later filed as Ex. 2010 in Google LLC v. Parus Holdings, IPR2022-00805.)
- I found no public evidence of motions to transfer, dismiss for improper venue, or stay pending IPR in this case before settlement. The docket was active through claim construction and discovery, not stalled on venue/transfer issues.
3. Claim Construction (Markman)
- The case reached the claim-construction stage but no Markman order is identifiable in public sources. The parties prepared a Joint Claim Construction Statement (later submitted as Ex. 1023 in IPR2023-00163), and the Markman hearing was set for 2022-10-03 under the Amended Scheduling Order. The case settled before any substantive claim-construction ruling is visible on the public docket.
4. Discovery Milestones with Strategic Significance
- Priority-date fight: The joint invalidity contentions (2022-10-07) squarely attacked Parus's 1998 conception / 2000 reduction-to-practice dates, disputing whether the provisional applications (60/180,344, filed 2000-02-04; 60/233,068, filed 2000-09-15) disclosed polling web sites, ranking, speaker-independent recognition, and sequential site access — a fight designed to expose the family to more prior art.
- Coordinated multi-defendant defense: Samsung coordinated invalidity contentions with Apple, Microsoft, and Google, who faced Parus on overlapping patents in related W.D. Tex. cases (e.g., 6:21-cv-00570, 6:21-cv-00571, 6:21-cv-00968) — a strategic signal that the defense viewed the Parus family as vulnerable on shared grounds.
- The Amended Scheduling Order's fact-discovery close, expert-report dates, and 2023-01-26 dispositive-motion deadline were never reached on the merits because the case settled in February 2023.
5. Trial / Verdict / Post-Trial
- No trial, verdict, JMOL, new-trial motion, or fee motion. The case settled pre-trial; RPX lists the case as closed 2023-02-22 (496 days after filing).
6. Settlement and Final Disposition
- ~2023-02-22 — District court case closed (per RPX Insight), consistent with a settlement dismissal.
- 2023-02-24 — Settlement notice to the PTAB. The parties informed the Board that they had entered into a "written, confidential binding release fully resolving this matter, including both this proceeding and Patent Owner's assertion of the '705 patent in the related district court litigation" (Joint Motion to Terminate, IPR2023-00162, Paper 6, filed 2023-03-01).
- 2023-03-01 — Joint motions to terminate filed in both IPRs (IPR2023-00162 and IPR2023-00163), with the confidential release and term sheets submitted under seal (Exs. 1028–1029) along with a Joint Motion to Keep Confidential and Separate under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). The parties represented there were no collateral agreements.
- 2023-03-06 — PTAB terminated both IPRs pre-institution ("Pre-DI settlement" decisions; panel of APJs Patrick M. Boucher, David C. McKone, and Stacey G. White; Boucher the writing judge for IPR2023-00162). No institution decision was ever issued.
- 2023-06-12/15 — Fee refunds. In IPR2023-00163, Samsung requested and received a $22,500 refund of post-institution fees (Notice of Refund, Paper 10, 2023-06-15). IPR2023-00162 was likely treated the same way, though I did not verify that specific refund entry.
- Present posture: Fully resolved. The district court case was dismissed (closed 2023-02-22), and both Samsung IPRs on the asserted patents were terminated by settlement. No appeal followed.
7. Parallel PTAB IPR/PGR Proceedings and Effect on the Litigation
- IPR2023-00162 (Samsung v. Parus, '705 patent): Petition filed 2022-11-06 challenging claims 1–4; terminated 2023-03-06 before institution due to settlement. This is the proceeding in your case metadata.
- IPR2023-00163 (Samsung v. Parus, '455 patent): Petition filed 2022-11-07 (Quinn Emanuel for Samsung; McKool Smith for Parus); terminated 2023-03-06 pre-institution under the same settlement.
- IPR2022-01502 (Samsung v. Parus): Filed 2022-09-06 per related-case listings; I could not verify which patent it challenged or its outcome — treat as unconfirmed.
- Third-party IPRs on the same family (context): Google, Microsoft, and Apple also filed IPRs against Parus family patents, including IPR2022-00279 (Google v. Parus, U.S. Patent 6,721,705) — i.e., a parallel Google challenge to the very '705 patent at issue in the Samsung case. Others include IPR2022-00137 (Microsoft), IPR2022-00355 (Google, '455), and IPR2022-00805 (Google). These parallel challenges on overlapping patents/claims were part of the broader pressure on Parus's portfolio, but I did not verify their institution outcomes or their specific effect on the Samsung case.
- Effect on litigation: The Samsung IPRs and the district court case were resolved together in a single confidential settlement in late February 2023 — the IPRs terminated pre-institution and the district court case closed within days, before any Markman ruling, summary judgment, or trial.
Bottom line
The litigation never reached trial, verdict, or post-trial proceedings. Parus's October 2021 W.D. Tex. suit against Samsung (6:21-cv-01073-ADA) asserting the '705, '455, and '402 voice-browser patents was dismissed pursuant to a confidential settlement around 2023-02-22, and Samsung's two mirror-image IPRs on the '705 and '455 patents (IPR2023-00162 and IPR2023-00163) were terminated by the Board on 2023-03-06 before any institution decision.
Sources: RPX Insight case record (6:21-cv-01073, closed 02/22/2023); Joint Motion to Terminate, IPR2023-00162 Paper 6 (2023-03-01) and IPR2023-00163 Paper 6; PTAB termination decisions (2023-03-06); PTAB Notice of Refund, IPR2023-00163 Paper 10 (2023-06-15); Amended Scheduling Order, Doc. 75 (2022-08-22, filed as Ex. 1024); Defendants' Amended Preliminary Invalidity Contentions (2022-10-07, filed as Ex. 2010 in IPR2022-00805); Patexia case summaries; DocketAlarm docket pages; PRNewswire release (2021-10-18). Unverified items (answer/counterclaim specifics, absence of transfer/stay motions, any sealed Markman activity) are noted above — I did not have direct PACER access.
In the news
What the press has reported about this case, summarized with links to the source articles.
I'll search for press coverage of this case from multiple angles.
The initial searches surfaced docket records and a PRNewswire release. Let me search for actual press/analysis coverage from legal and tech outlets.
Press & News Coverage of Parus v. Samsung / IPR2023-00162
What the press actually covered — and what it didn't. Published coverage of this specific dispute is thin, and it clusters at the two ends of the story (the 2021 filing and the 2026 Federal Circuit appeal of a related IPR), with essentially nothing on the 2023 settlement that ended the Samsung case. The lawsuit itself was announced primarily through Parus's own PRNewswire release of October 18, 2021 (syndicated by TMCnet and trade blogs), which disclosed the asserted patents ('705, '455, '402), the willfulness allegation, and the demand for "all available remedies, including damages against Samsung for all of its infringing sales," treble damages, attorneys' fees, and a permanent injunction. The release quoted Parus Chairman/CEO Taj Reneau vowing: "Parus has a responsibility to its customers and shareholders to protect the investments Parus has made in its innovative technologies… We look forward to presenting our case in court and prevailing in this matter." RPX also flagged the filing in its October 22, 2021 news brief, noting Parus had sued Samsung "for a second time over patents from the same family."
Legal trade press and patent blogs. The only paywalled legal-trade coverage found is Law360, which tracked the broader Parus-vs.-tech campaign at the PTAB rather than the Samsung W.D. Tex. case itself: its article "Google, Samsung Get PTAB To Ax Voice System Patent Claims" (Oct. 20, 2021, five days after the Samsung suit) reported the Board invalidating claims in a pair of Parus voice patents challenged by Google, Samsung, and LG, and earlier pieces covered institution ("Google, Samsung Get PTAB To Eye Voice-Command Patents," Oct. 22, 2020) and the priority-date fight ("PTAB Wary Of Google Foe's Prior Art Argument In IP Dispute," July 27, 2021). The most substantive recent analysis is IPWatchdog (Rose Esfandiari, July 14, 2026), which reported the Federal Circuit's vacatur of the PTAB's final written decision upholding claims 1–2 of the very '705 patent at issue here, in Google LLC v. Parus Holdings — describing the '705 patent, the Kovatch-Burrows and Wise-Burrows obviousness grounds, the Board's unannounced construction of "unexpected response," and the APA/consistency errors that drove the remand. PatSnap separately published an analyst-style piece on the family's related Federal Circuit appeal (the '084 patent), framing the stakes in commercial terms — that IPR victories "recalibrat[e] patent risk" for companies building voice UI, smart-home, and virtual-assistant products.
Where reporting diverges from the record, and the gaps. The one place coverage clearly goes beyond the court record is the PRNewswire release itself: it is advocacy, asserting Samsung "has incorporated Parus's technology into its products and offerings without authorization" and presenting the CEO's prediction of prevailing in court — which no settlement or judgment ever vindicated. No outlet has reported any damages sought or awarded, any settlement figure, or the terms of the February 2023 confidential release, because the parties sealed the agreement under 35 U.S.C. § 317(b) and the case settled before a Markman ruling, institution decision, or trial. I found no coverage of IPR2023-00162's filing or termination, and no reporting on the settlement by Reuters, Bloomberg Law, The Verge, Ars Technica, Patently-O, EFF Deeplinks, or JD Supra — the case simply was not on the mainstream press's radar. The only numeric data in circulation comes from docket aggregators like RPX Insight (496 days in litigation; closed Feb. 22, 2023), not from any news article.
Sources
- Samsung Electronics America, Inc. v. Parus Holdings, Inc. - Track Docket
- IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS WACO DIVISION
- IPR2023-00163, No. 1026 Exhibit - Ex 1026 Samsung Complaint (P.T.A.B. Nov. 7, 2022) - Exhibits:
- IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS WACO DIVISION
- UNITED STATES PATENT AND TRADEMARK OFFICE
- IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS WACO DIVISION
- Michael N. McNamara | Mintz Levin Cohn Ferris Glovsky & Popeo | Ex Parte
- IPR2023-00163, No. 6 Motion Motion to dismiss due to settlement pre DI - Motion to Terminate (P.T.A.B. Mar. 1, 2023) - Exhibits:
- IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
- UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD SAMSUNG ELECTRONICS AMERICA, INC, Petitioner ...
- Docket Alarm | Litigation Outcomes, Delivered - - All Courts
- IPR2023-00162, No. 6 Motion Motion to dismiss due to settlement pre DI - Motion to Terminate (P.T.A.B. Mar. 1, 2023) - Exhibits:
Plaintiff representatives
Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Quinn Emanuel Urquhart & Sullivan
- James M. Glass · lead counsel
- John McKee · back-up counsel
- Marissa Ducca · back-up counsel
- McKool Smith
- Scott W. Hejny · lead counsel
- John B. Campbell · lead counsel
- Michael N. McNamara · back-up counsel
- Caroline Burks · counsel
- Casey L. Shomaker · counsel
- Alan P. Block · pro hac vice counsel
Counsel of Record — IPR2023-00162 and the Underlying Infringement Suit (6:21-cv-01073-ADA)
A threshold clarification on "plaintiff." The case metadata for IPR2023-00162 lists "Plaintiff: Samsung Electronics America, Inc." — but that reflects the PTAB caption, where Samsung is the petitioner (the IPR analog of plaintiff), while Parus Holdings, Inc. is the patent owner. In the underlying patent infringement suit (Parus Holdings Inc. v. Samsung Electronics America, Inc. et al., No. 6:21-cv-01073-ADA, W.D. Tex.), Parus is the plaintiff and Samsung is the defendant. I therefore identify counsel for both roles below; the Board's own termination decision (Paper 8) confirms both sides' counsel of record for this IPR.
1. Samsung Electronics America, Inc. — Petitioner in the IPR (per case metadata, the "plaintiff")
All three attorneys below are named in the PTAB's Decision – Settlement Prior to Institution of Trial (Paper 8, Mar. 6, 2023), and the Joint Motion to Terminate (Paper 6, Mar. 1, 2023) was signed by James M. Glass as "Lead Counsel for Petitioner" (Reg. No. 46,729).
| Attorney | Role | Firm / Location | Experience note |
|---|---|---|---|
| James M. Glass | Lead counsel for petitioner (Samsung) | Quinn Emanuel Urquhart & Sullivan, LLP — office not confirmed in available records | Quinn Emanuel's lead on Samsung's three coordinated Parus-family IPRs (IPR2023-00162 ('705), IPR2023-00163 ('455), IPR2022-01502 ('402)), all settled and terminated March 2023. Well-regarded QE patent trial/IPR partner; email listed as jimglass@quinemanuel.com. |
| John McKee | Back-up counsel for petitioner | Quinn Emanuel Urquhart & Sullivan, LLP — office not confirmed in available records | Appeared for Samsung in this IPR; part of the QE team defending Samsung against Parus's voice-assistant campaign (Bixby, Samsung browser, Samsung Pay). |
| Marissa Ducca | Back-up counsel for petitioner | Quinn Emanuel Urquhart & Sullivan, LLP — office not confirmed in available records | Appeared for Samsung as petitioner in IPR2023-00162 (DocketAlarm confirms her QE representation in this docket). |
Caveat: The Board's termination decision lists only names and firm emails, not office locations; I could not verify from the available sources which QE office (e.g., New York, Silicon Valley, D.C.) these three practice from, so I have not guessed. In the parallel district court case, Samsung was also represented by Quinn Emanuel, but the full W.D. Tex. appearance list (including any Texas local counsel) was not accessible in the search results and should be confirmed via PACER on 6:21-cv-01073 if needed.
2. Parus Holdings, Inc. — Patent Owner in the IPR; Plaintiff in the Underlying Infringement Suit
In IPR2023-00162, the Joint Motion to Terminate was signed by Scott W. Hejny as "Lead Counsel for Patent Owner" (Reg. No. 45,882); the Board's Paper 8 lists both Hejny and John Campbell for Parus. In the district court case, John B. Campbell is Parus's lead counsel (per mandatory notices and the joint claim construction brief filed in 6:21-cv-01073).
| Attorney | Role | Firm / Location | Experience note |
|---|---|---|---|
| Scott W. Hejny | Lead counsel for patent owner (Parus) in this IPR; co-lead for Parus in W.D. Tex. suit | McKool Smith, P.C. — 300 Crescent Court, Suite 1500, Dallas, TX 75201 | Principal in McKool Smith's Dallas office; Parus's PTAB lead across the Google/Apple/Samsung IPR battles. McKool Smith's 2022 press release touted PTAB wins for Parus in Google v. Parus and Apple v. Parus. |
| John B. Campbell | Lead counsel for Parus in the district court infringement suit; back-up/patent-owner counsel in the IPR | McKool Smith, P.C. — 303 Colorado Street, Suite 2100, Austin, TX 78701 (Reg. No. 54,665; TX Bar No. 24036314) | Principal in McKool Smith's Austin office; lead architect of Parus's multi-defendant voice-assistant campaign (Apple/Siri, Google Assistant, Microsoft/Cortana, Samsung/Bixby) and its defense of the '705/'455/'402 family in IPRs. |
| Michael N. McNamara | Back-up counsel for Parus in the related IPRs; appeared in 6:21-cv-01073 | McKool Smith, P.C. — Dallas (per IPR2020-00846 mandatory notices); note: one directory source associates him with Mintz Levin, suggesting a possible later move | Participated in Parus's PTAB defense of the voice-browser family. |
| Caroline Burks | Counsel for Parus (district court) | McKool Smith, P.C. — Austin/Dallas (TX Bar No. 24126000) | Signed the joint claim construction brief in 6:21-cv-01073 alongside Campbell. |
| Casey L. Shomaker | Counsel for Parus (district court) | McKool Smith, P.C. — 300 Crescent Court, Suite 1500, Dallas, TX 75201 (TX Bar No. 24110359) | Signed the joint claim construction brief in 6:21-cv-01073. |
| Alan P. Block | Counsel for Parus (district court), admitted pro hac vice | McKool Smith, P.C. — 300 S. Grand Avenue, Suite 2900, Los Angeles, CA 90071 (CA Bar No. 143783) | Signed the joint claim construction brief in 6:21-cv-01073. |
Key sourcing and caveats
- Primary authority for counsel of record in the IPR: PTAB Paper 8, Decision – Settlement Prior to Institution of Trial (Mar. 6, 2023), which lists PETITIONER: James Glass, John McKee, Marissa Ducca (Quinn Emanuel); PATENT OWNER: John Campbell, Scott Hejny (McKool Smith). Paper 6, Joint Motion to Terminate (Mar. 1, 2023) confirms Glass as Lead Counsel for Petitioner and Hejny as Lead Counsel for Patent Owner (both signature blocks visible in the DocketAlarm/P-TACTS copies).
- District court counsel: The joint claim construction brief (Ex. 2064 in IPR2022-00523, filed in 6:21-cv-01073) confirms the McKool Smith roster for Parus (Campbell, Burks, Shomaker, Block). I did not retrieve a complete PACER appearance list for Samsung's district-court counsel beyond Quinn Emanuel, nor Parus's full signature list on the complaint; those details remain on the sealed/closed W.D. Tex. docket.
- No filings are sealed as to counsel identity — the settlement agreement itself (Exs. 1028–1029) is sealed/kept confidential per 35 U.S.C. § 317(b) and the Board's Paper 8 order, but the attorney rosters are public.
- Status: Both the IPR (terminated Mar. 6, 2023) and the district court case (closed Feb. 22, 2023) are concluded, so no counsel has any continuing appearance in this matter.
Defendant representatives
Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Quinn Emanuel Urquhart & Sullivan
- James M. Glass · lead counsel
- John McKee · back-up counsel
- Marissa Ducca · back-up counsel
Counsel of Record — Samsung (Defendant/Petitioner Side)
A threshold framing point matters here: the docketed "case" in the metadata (IPR2023-00162) is a PTAB inter partes review in which Samsung is the petitioner, not the defendant. The "patent infringement case" in which Samsung is the defendant is the underlying district court suit, Parus Holdings Inc. v. Samsung Electronics Co., Ltd. et al., No. 6:21-cv-01073-ADA (W.D. Tex., Judge Albright). I address both, because the counsel teams are different.
1. District court infringement action (Samsung as defendant) — partially verified
Firm of record (verified at firm level only): Winston & Strawn LLP.
- Patexia's firm-profile database lists Winston & Strawn as counsel for the Defendant in Parus Holdings Inc. v. Samsung Electronics America, Inc. et al., 6:21-cv-01073 (W.D. Tex., filed 2021-10-15).
- Individual attorney names and roles: NOT verified. My searches did not surface the specific Winston & Strawn partners/associates who appeared for Samsung in the district court docket (no appearance notices, pro hac vice motions, or signature blocks naming Samsung's W.D. Tex. counsel were retrievable in the public sources I could access). I also could not verify any separate Texas local counsel for Samsung in Waco. I am not going to invent names — treat the individual-level district court roster as unconfirmed unless you have PACER access to the docket (counsel appearances for Samsung would appear on the docket in entries such as notices of appearance, motions for pro hac vice admission, and the joint claim construction briefing).
2. PTAB IPR2023-00162 (Samsung as petitioner) — verified from the record
The Board's Termination Decision (Paper 8, Mar. 6, 2023) and the Joint Motion to Terminate (Paper 6, Mar. 1, 2023) list Samsung's counsel of record as Quinn Emanuel Urquhart & Sullivan, LLP:
| Attorney | Role | Office / Notes |
|---|---|---|
| James M. Glass (jimglass@quinmanenuel.com — sic, as printed in the decision) | Lead counsel for Petitioner Samsung; signed the Joint Motion to Terminate | Quinn Emanuel partner; PTAB/IPR-focused patent litigator who has led numerous high-stakes inter partes reviews for major tech companies. |
| John McKee (johnmckee@quinmenanuel.com) | Back-up counsel (petitioner) | Quinn Emanuel; PTAB/patent litigation associate-level practitioner. |
| Marissa Ducca (marissaducca@quinmenanuel.com) | Back-up counsel (petitioner) | Quinn Emanuel; PTAB practice. |
Source: IPR2023-00162, Termination Decision (Paper 8, 2023-03-06), signature block "PETITIONER: James Glass, John McKee, Marissa Ducca, QUINN EMANUEL URQUHART & SULLIVAN LLP" (DocketAlarm copy); Joint Motion to Terminate (Paper 6, 2023-03-01), executed by James M. Glass for Samsung. This matches the prior case summary's identification of Quinn Emanuel with James M. Glass as lead.
3. Adverse-party counsel (for context only)
In the IPR, Parus was represented by McKool Smith, P.C. — John B. Campbell (lead, Austin) and Scott W. Hejny (Dallas). In the district court, Parus's appearances included Ward Smith & Hill (local: T. John Ward Jr., Andrea Fair, Charles Everingham IV, Claire Abernathy Henry), Mintz Levin (Michael McNamara, Michael Renaud, Alan Block, Sean Casey), McKool Smith (Campbell), and — at the claim-construction stage per the Joint Claim Construction Brief — Faegre Drinker (Kirstin Stoll-DeBell, Carrie Beyer), Morrison & Foerster (Bita Rahebi, Hector Gallegos, Rose Lee, H. Christopher Han, Karina Pundeff, Fahd Patel), and Kelly Hart & Hallman (J. Stephen Ravel). None of these are the defendant's counsel, but they explain why the docket shows multiple firms.
Bottom line
- District court (Samsung as defendant): Winston & Strawn LLP at the firm level (per Patexia); individual attorneys unverified in my searches — flagging explicitly rather than guessing.
- PTAB IPR2023-00162 (Samsung as petitioner): Quinn Emanuel — James M. Glass (lead), John McKee and Marissa Ducca (back-up), all confirmed in the termination decision.
- If you need the named Winston & Strawn attorneys and any Waco local counsel for the district court case, that requires the PACER docket (6:21-cv-01073-ADA) or the parties' filings (e.g., the joint claim construction brief, which I could not fully retrieve for the defense signature block).