Samsung Electronics America Inc v. Telcom Ventures LLC

This patent infringement litigation involves Samsung Electronics America Inc., an operating company and a leading innovator in consumer electronics, mobile devices, and enterprise solutions, and Telcom Ventures LLC, which appears to operate as a patent assertion entity (PAE) or non-practicing entity (NPE). Telcom Ventures LLC is described as a "private investment firm" and a "venture capital firm" that invests in telecommunications and technology, with its CEO, Rajendra Singh, listed as an inventor on the asserted patents.

Telcom Ventures LLC has accused Samsung of infringing through the provision of its Samsung Pay service and various Samsung smartphones that support it. The alleged infringement specifically relates to the use of these products and services for mobile payments utilizing biometric authentication (such as fingerprint scans) and either near-field communication (NFC) or magnetic secure transmission (MST) technologies. The central patent in this IPR proceeding is U.S. Patent No. 11,770,756, titled "Enabling functions on a wireless device based on sensed parameters." This patent generally describes methods and devices for conditionally enabling and disabling smartphone functions in response to a device-based sensor detecting a physiological or environmental parameter and determining if its value meets a predefined threshold.

The procedural posture for this specific action is an Inter Partes Review (IPR) before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office, identified as IPR2025-00977. The petition, filed by Samsung Electronics America Inc., challenged claims 1-18 of the '756 patent but was "Not Instituted" on procedural grounds. This IPR is linked to a broader patent infringement lawsuit filed by Telcom Ventures LLC against Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. in the U.S. District Court for the Eastern District of Texas (Case No. 2:24-cv-00691) on August 21, 2024, where eight patents, including the '756 patent, are asserted. The Eastern District of Texas is a well-known venue for patent litigation. The non-institution of the IPR on procedural grounds is notable, as it likely reflects the PTAB's recent stricter application of discretionary denial rules, particularly concerning parallel district court litigation, often referred to as the Fintiv factors and related Sotera stipulations. These rules aim to manage concurrent validity challenges across different forums and have been a significant focus of USPTO policy changes regarding IPRs.

Patent Litigation Update: Telcom Ventures LLC v. Samsung Electronics America Inc.

Case Caption: Telcom Ventures LLC v. Samsung Electronics Co., Ltd. et al.
District Court Case Number: 2:24-cv-00691
Court: U.S. District Court for the Eastern District of Texas
Filed: August 21, 2024
Judge: District Judge Rodney Gilstrap
Patents Asserted (including '756 patent): U.S. Patent Nos. 9,462,411; 9,832,708; 10,219,199; 10,674,432; 11,770,756; 11,924,743; 11,937,172; and 12,028,793.
Current Status: Active, proceeding towards jury trial.

Key Legal Developments and Outcome:

Filing & Initial Pleadings:
Telcom Ventures LLC filed a patent infringement complaint against Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (collectively, "Samsung") on August 21, 2024, in the Eastern District of Texas. Telcom Ventures accused Samsung of infringing eight patents, including the '756 patent, through the provision of 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. Samsung received an extension to file its answer, move, or otherwise respond to the complaint, with a deadline of December 8, 2024. Telcom's infringement contentions identified 118 asserted claims across all patents.

Pre-trial Motions of Substance:
On April 23, 2026, District Judge Rodney Gilstrap granted Samsung's Motion for Leave to Amend Invalidity Contentions. The court noted that a material part of the delay in amending contentions stemmed from the time necessary for Motorola Mobility LLC to respond to a subpoena regarding potential mobile payment prior art, which Samsung had issued on January 9, 2025. Samsung initially served its invalidity contentions mentioning potential Motorola prior art on February 3, 2025, with prior art discovery ongoing. Motorola produced responsive documents on May 27, 2025, leading Samsung to inform Telcom on July 31, 2025, of its intention to amend its invalidity contentions. Samsung filed the motion to amend on August 29, 2025. The docket also shows a sealed motion for summary judgment of patent ineligibility under 35 U.S.C. § 101 filed by Samsung, with supplemental authority noticed on May 7, 2026.

Discovery Milestones:
Fact discovery in the district court case closed on December 18, 2025.

Trial Events and Present Posture:
The case is currently active and is proceeding towards a jury trial. A Sixth Amended Docket Control Order reset jury selection for June 22, 2026, before District Judge Rodney Gilstrap.

Parallel PTAB IPR/PGR Proceedings:
On May 23, 2025, Samsung Electronics America Inc. (listed as Samsung Electronics Co., Ltd. in some records) petitioned the Patent Trial and Appeal Board (PTAB) for inter partes review (IPR) of claims 1-18 of U.S. Patent No. 11,770,756, owned by Telcom Ventures LLC, under case number IPR2025-00977. The petition alleged obviousness over prior art references, specifically Jain and Dua, arguing that these references disclosed methods and devices for conditionally enabling and disabling functions on a smartphone based on sensed parameters, such as physiological states for biometric authentication.

The IPR petition was "Not Instituted - Procedural." While the exact procedural grounds for the denial in this specific case are not detailed in the provided search results, the broader context of USPTO policy shifts during 2025 indicates a trend toward discretionary denials based on various factors. These factors included considerations of parallel district court litigation, the likelihood of a district court reaching a validity decision first (Fintiv factors), and new rules proposed in October 2025 requiring petitioners to stipulate that they would not pursue invalidity challenges under §§ 102 or 103 in other venues if an IPR was instituted. Some Director-level institution decisions in late 2025 were made without specific reasoning. Given the IPR was filed and decided in 2025, it likely fell under the evolving discretionary denial framework, where procedural aspects like overlap with ongoing district court litigation or a lack of a Sotera stipulation could have led to the denial.

Here is the counsel of record representing the plaintiff, Telcom Ventures LLC, in the patent infringement case Telcom Ventures LLC v. Samsung Electronics Co., Ltd. et al. (2:24-cv-00691) in the U.S. District Court for the Eastern District of Texas:

Counsel for Telcom Ventures LLC:

• Theodore Stevenson, III (Lead Counsel)

  • Firm: Alston & Bird LLP
  • Office Location: Likely Texas, given his lead counsel role in the Eastern District of Texas.
  • Note: Alston & Bird LLP represents Telcom Ventures in this case and a related action against Apple.

• Kirk T. Bradley (Counsel)

  • Firm: Alston & Bird LLP
  • Note: Listed as counsel for Telcom Ventures.

• Mary I. Riolo (Counsel)

  • Firm: Alston & Bird LLP
  • Note: Listed as counsel for Telcom Ventures.

• Katherine G. Rubschlager (Counsel)

  • Firm: Alston & Bird LLP
  • Note: Listed as counsel for Telcom Ventures.

• Karlee N. Wroblewski (Counsel)

  • Firm: Alston & Bird LLP
  • Note: Listed as counsel for Telcom Ventures.

• Jacob W. Young (Counsel)

  • Firm: Alston & Bird LLP
  • Note: Listed as counsel for Telcom Ventures.

• Elliott Richard Charles Riches (Counsel)

  • Firm: Alston & Bird
  • Note: Listed as counsel for Telcom Ventures.

• Jay Brian Shapiro (Counsel)

  • Firm: Stearns Weaver Miller Weissler Alhadeff & Sitterson
  • Note: Listed as counsel for Telcom Ventures, also appears in a related case against Apple.

• Coral Del Mar Lopez (Counsel)

  • Firm: Stearns Weaver Miller Weissler Alhadeff And Sitterson PA
  • Note: Listed as counsel for Telcom Ventures in a related case against Apple.

Note on Samsung's Counsel (Defendants in District Court):

While the task specifically asked for plaintiff's counsel, it's worth noting that Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. are represented by Quinn Emanuel Urquhart & Sullivan, LLP and Melissa Richards Smith of Gillam & Smith, LLP in the Eastern District of Texas case (2:24-cv-00691). Samsung has also been represented by firms such as Kirkland & Ellis LLP, Desmarais LLP, Paul Hastings LLP, and DLA Piper in other patent litigation matters.

In the patent infringement case Telcom Ventures LLC v. Samsung Electronics Co., Ltd. et al. (2:24-cv-00691) in the U.S. District Court for the Eastern District of Texas, Telcom Ventures LLC is represented by attorneys from Alston & Bird LLP.

Here are the details of the counsel identified for Telcom Ventures LLC:

• Christopher T.L. Douglas

  • Role: Lead Counsel
  • Firm: Alston & Bird LLP, Charlotte, NC (Vantage South End, 1120 South Tryon Street, Suite 300, Charlotte, NC 28203-6818)
  • Note: Appears as lead counsel for Telcom Ventures in multiple IPR proceedings related to the patents asserted against Samsung and Apple.

• Kirk T. Bradley

  • Role: Back-up Counsel
  • Firm: Alston & Bird LLP, Charlotte, NC (Vantage South End, 1120 South Tryon, Suite 300, Charlotte, NC 28203-6818)

• Emily Welch

  • Role: Back-up Counsel (pro hac vice to be requested)
  • Firm: Alston & Bird LLP, Atlanta, GA (One Atlantic Center, 1201 W Peachtree St NE, Suite #4900, Atlanta, GA 30309)

• Mary I. Riolo

  • Role: Back-up Counsel (pro hac vice to be requested)
  • Firm: Alston & Bird LLP, Charlotte, NC (Vantage South End, 1120 South Tryon, Suite 300, Charlotte, NC 28203-6818)

• Katherine G. Rubschlager

  • Role: Back-up Counsel (pro hac vice to be requested)
  • Firm: Alston & Bird LLP, San Francisco, CA (55 2nd Street, Suite 2100, San Francisco, CA 94105)

• Karlee N. Wroblewski

  • Role: Back-up Counsel
  • Firm: Alston & Bird LLP, Charlotte, NC (Vantage South End, 1120 South Tryon, Suite 300, Charlotte, NC 28203-6818)

• Jacob W. Young

  • Role: Back-up Counsel
  • Firm: Alston & Bird LLP, Dallas, TX (Dallas Arts Tower, 2200 Ross Avenue, Suite 2300)

These attorneys are listed in mandatory notices for related PTAB IPR proceedings, where Telcom Ventures LLC is the Patent Owner, indicating their representation in parallel challenges to the asserted patents.