Samsung Electronics Co., Ltd. et al. v. Chien-Min Sung

This case, IPR2024-00533, involves an Inter Partes Review (IPR) initiated by [Samsung Electronics Co., Ltd.](/litigations/by-plaintiff/Samsung%20Electronics%20Co.%2C%20Ltd.), along with its American subsidiaries Samsung Electronics America, Inc., Samsung Semiconductor, Inc., and Samsung Austin Semiconductor, LLC (collectively "Samsung"), against patent owner Chien-Min Sung. Samsung, a global leader in electronics and semiconductor manufacturing, challenged the validity of US Patent 8974270, owned by Chien-Min Sung. While the IPR itself is a validity challenge, it stems from an underlying patent infringement lawsuit, Sung v. Samsung Electronics Co. Ltd. et al, Case No. 4:23-cv-00752, filed by Dr. Sung in the Eastern District of Texas. In that district court action, Dr. Sung alleges that Samsung infringes the patent through its use of "pad conditioners" manufactured by third parties, which are essential tools for conditioning Chemical Mechanical Polishing (CMP) pads used in semiconductor wafer fabrication for products like mobile phones and home appliances.

The asserted patent, US Patent 8974270, titled "CMP PAD DRESSER HAVING LEVELED TIPS AND ASSOCIATED METHODS," generally describes superabrasive tools and methods for their creation. Specifically, it details how superabrasive particles are chemically bonded to a matrix support material using a braze alloy, often with a template, for use in pad dressers. The procedural posture of this matter involves a challenge before the United States Patent and Trademark Office's (USPTO) Patent Trial and Appeal Board (PTAB), a common venue for defendants to contest the validity of patents asserted against them in district court. The associated district court case in the Eastern District of Texas, presided over by Judge Sean D. Jordan, was likely stayed pending the outcome of the IPR proceedings.

This case is notable for several reasons, including the pattern of patent assertion by Chien-Min Sung, who appears to be an individual inventor or patent assertion entity actively enforcing his intellectual property against large operating companies like Samsung and Texas Instruments (as noted in related filings). The IPR directly links to an ongoing district court litigation, exemplifying how alleged infringers frequently leverage the PTAB to challenge patent validity in parallel with defending against infringement claims. Although oral arguments for the IPR were scheduled for June 19, 2025, the proceedings have progressed further. An appeal from the PTAB's decision (Case No. 26-1197) was filed at the U.S. Court of Appeals for the Federal Circuit and subsequently dismissed on March 9, 2026, by agreement of the parties, with each side bearing its own costs. This dismissal indicates a likely confidential settlement between Samsung and Chien-Min Sung, bringing the IPR and its subsequent appeal to a conclusion.

Legal Developments and Outcome for Samsung Electronics Co., Ltd. et al. v. Chien-Min Sung

This analysis covers the inter partes review (IPR) proceeding, IPR2024-00533, challenging US Patent 8,974,270, and its related district court patent infringement litigation.

Parallel District Court Litigation - Chien-Min Sung v. Samsung Electronics Co. Ltd., et al. (E.D. Tex. Case No. 4:23-cv-00752-SDJ)

• Filing of Complaint: On August 21, 2023, Chien-Min Sung filed a patent infringement lawsuit against Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung Semiconductor, Inc., and Samsung Austin Semiconductor, LLC, in the U.S. District Court for the Eastern District of Texas. The complaint alleged infringement of U.S. Patent Nos. 8,974,270, 9,138,862, and 9,724,802, all related to chemical mechanical polishing (CMP) technology in semiconductor manufacturing.
• Initial Pleadings and Motions:
  • On November 27, 2023, the Samsung Defendants filed a Motion to Dismiss.
  • On February 22, 2024, Samsung filed a Motion to Transfer the case to the Northern District of California.
  • Samsung also sought to stay the litigation pending the resolution of a motion for summary judgment in a parallel case, Chien-Min Sung v. Texas Instruments Inc. (E.D. Tex. Case No. 4:23-cv-00753-SDJ), where Texas Instruments had moved for summary judgment of invalidity based on the on-sale bar. The court in the Texas Instruments case granted a stay on May 14, 2024.
  • On May 21, 2024, Chien-Min Sung opposed Samsung's motion to stay, arguing against halting proceedings "in the midst of Markman briefing," indicating the case was progressing toward claim construction.

Inter Partes Review (IPR2024-00533) - Challenging US Patent 8,974,270

• IPR Petition Filing: On February 29, 2024, Samsung Electronics Co., Ltd. and its affiliated entities filed an Inter Partes Review petition (IPR2024-00533) with the Patent Trial and Appeal Board (PTAB) of the USPTO, challenging the validity of US Patent 8,974,270, one of the patents asserted in the district court litigation.
• Institution of IPR: The PTAB instituted the IPR on September 18, 2024, granting review of US Patent 8,974,270.
• Oral Argument: Oral arguments in IPR2024-00533 were scheduled for June 19, 2025.
• Final Written Decision (FWD): On September 17, 2025, the PTAB issued its Final Written Decision in IPR2024-00533, finding the challenged claims of US Patent 8,974,270 to be "Unpatentable."
• Appeal to Federal Circuit: Chien-Min Sung, the Patent Owner, appealed the PTAB's adverse Final Written Decision to the U.S. Court of Appeals for the Federal Circuit (Case No. 26-1197). The appeal was filed on November 24, 2025.
• Appeal Dismissal: On March 9, 2026, the Federal Circuit dismissed the appeal (26-1197) under Federal Rule of Appellate Procedure 42(b) following an agreement between the parties. Each party was ordered to bear its own costs. This dismissal finalized the PTAB's decision that the challenged claims of US Patent 8,974,270 are unpatentable.

Impact on Litigation and Final Disposition:

With the Federal Circuit's dismissal of the appeal, the PTAB's finding that US Patent 8,974,270 is unpatentable is now final. This outcome typically leads to the dismissal of all infringement claims related to that patent in any co-pending district court litigation due to collateral estoppel. While the ultimate disposition of the district court case (4:23-cv-00752) was not explicitly detailed in the available search results beyond the pending motions and requests for a stay in May 2024, the final unpatentability of one of the asserted patents through IPR would significantly impact, and likely narrow or resolve, the claims in the infringement suit.

The plaintiff(s) in IPR2024-00533, Samsung Electronics Co., Ltd. et al., are represented by both outside and in-house counsel.

Outside Counsel

Firm: Desmarais LLP (New York, NY; San Francisco, CA; Washington, D.C.)

• Yung-Hoon (Sam) Ha, Ph.D.
  • Role: Lead Counsel
  • Firm & Office: Desmarais LLP, New York, NY (also listed with a Washington, D.C. number)
  • Experience: Dr. Ha leads Desmarais LLP's post-grant practice before the USPTO/PTAB, with experience spanning a decade and multiple technologies, including semiconductor fabrication, rechargeable batteries, microprocessor architecture, and software-related patents. He also handles high-stakes patent litigation in federal courts and Section 337 proceedings before the ITC. Dr. Ha has successfully invalidated numerous patent claims in IPR proceedings, with some decisions affirmed by the Federal Circuit. He previously served as a partner at Wilmer Cutler Pickering Hale and Dorr LLP.
• Taeg Sang (Tim) Cho, Ph.D.
  • Role: Counsel (likely lead or backup counsel)
  • Firm & Office: Desmarais LLP, New York, NY (also listed with a Washington, D.C. number)
  • Experience: Dr. Cho has over a decade of experience in complex patent disputes, focusing on PTAB contested matters, including IPR, PGR, and reexamination proceedings. He has served as lead counsel in multiple IPRs that successfully invalidated patents. His experience also extends to federal district court patent litigation across various technologies such as semiconductor devices, analog/digital electronics, computer software, and artificial intelligence.
• Bridget P. Belcher, Ph.D.
  • Role: Patent Agent
  • Firm & Office: Desmarais LLP, San Francisco, CA
  • Experience: Dr. Belcher is a Patent Agent whose work focuses on the review and evaluation of technology in chemistry, biotechnology, pharmaceuticals, and medical devices. Her doctoral research at UC Berkeley involved evaluating anti-cancer activity and investigating mechanisms of action using chemoproteomic profiling. She is listed as an attorney in a related IPR (IPR2024-00535) for Samsung.
• Laura Avena
  • Role: Patent Agent
  • Firm & Office: Desmarais LLP, New York, NY
  • Experience: Ms. Avena's work as a Patent Agent focuses on reviewing and evaluating technology in chemistry, pharmaceuticals, medical devices, and materials science. Before joining Desmarais LLP, she worked as a Technical Advisor and Patent Agent at Baker Botts LLP and as a Patent Prosecution paralegal at Cooper & Dunham, LLP. She is listed as an attorney in a related IPR (IPR2024-00535) for Samsung.

In-House Counsel

• Matthew Bathon
  • Role: Principal Legal Counsel
  • Firm & Office: Samsung Electronics
  • Experience: Matthew Bathon coordinates Samsung's ITC and district court dockets and frequently speaks on IP issues, particularly concerning the ITC. Prior to joining Samsung, he was a partner at Steptoe LLP, focusing on Section 337 investigations before the ITC and IP disputes in district courts across various technologies. He also served as a senior investigative attorney in the ITC's Office of Unfair Import Investigations.
• Phillip Lee
  • Role: Principal Legal Counsel
  • Firm & Office: Samsung Electronics US IP Center
  • Experience: Phillip Lee is a veteran litigator with extensive experience in patent litigation, patent prosecution, and licensing across a wide range of technologies. He has appeared before federal district courts, the Patent Trial and Appeal Board, the International Trade Commission, and the U.S. Court of Appeals for the Federal Circuit. As in-house counsel, he manages patent case dockets, negotiates settlements and licenses, and advises on IP-related transactions.

Chien-Min Sung is represented by the following attorneys from Devlin Law Firm LLC:

• Alex H. Chan

  • Role: Counsel of Record (implied lead/primary counsel for Patent Owner)
  • Firm: Devlin Law Firm LLC, Wilmington, DE
  • Experience Note: Chan is a registered patent attorney. His firm, Devlin Law Firm LLC, specializes in intellectual property litigation.

• Jason Shapiro

  • Role: Counsel of Record (implied lead/primary counsel for Patent Owner)
  • Firm: Devlin Law Firm LLC, Wilmington, DE
  • Experience Note: Shapiro is a registered patent attorney. His firm, Devlin Law Firm LLC, focuses on intellectual property litigation.

• Joel W. Glazer

  • Role: Counsel of Record (implied lead/primary counsel for Patent Owner)
  • Firm: Devlin Law Firm LLC, Wilmington, DE
  • Experience Note: Glazer is a registered patent attorney. His firm, Devlin Law Firm LLC, specializes in intellectual property litigation.