Samsung Electronics Co., Ltd. v. Wilus Institute of Standards and Technology Inc.

This case involves an inter partes review (IPR) initiated by Samsung Electronics Co., Ltd. against Wilus Institute of Standards and Technology Inc. challenging U.S. Patent No. 11716171B2. Samsung, a South Korean multinational technology conglomerate, is a global leader in consumer electronics, mobile communications, and semiconductor manufacturing, making it an operating company and a major implementer of wireless communication standards. Wilus Institute of Standards and Technology Inc., also based in South Korea, is an R&D company founded in 2012 that focuses on developing next-generation standards in wireless communications and multimedia technology, including Wi-Fi. Wilus actively participates in standards bodies and holds a portfolio of standard-essential patents (SEPs), largely operating as a patent assertion entity (PAE) or non-practicing entity (NPE) in the context of licensing and enforcement. The patent at issue, 11716171B2, is generally directed to a wireless communication method and a wireless communication terminal, likely pertaining to Wi-Fi 6 (802.11ax) technology, consistent with Wilus's focus and related litigation.

The IPR proceeding, IPR2025-01110, is pending before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office and has been instituted, with a Final Written Decision due by January 12, 2027. While a specific panel of Administrative Patent Judges (APJs) will conduct the trial, the decision to institute this IPR would have been made personally by the USPTO Director, John Squires, under a policy effective October 2025, which centralized institution decisions. This PTAB venue is crucial for challenging patent validity due to its specialized expertise and potentially quicker resolution compared to district court, offering an efficient mechanism for Samsung to contest the enforceability of Wilus's patent claims.

The case is notable as it is part of a broader patent assertion campaign by Wilus, which has filed multiple patent infringement lawsuits, primarily in the Eastern District of Texas, against major technology companies like Samsung, HP Inc., ASUS, and TP-Link, focusing on Wi-Fi 6 standard-essential patents. This IPR represents a defensive maneuver by Samsung, an accused infringer in related district court litigation, to invalidate the asserted patent claims. The outcome could significantly impact the ongoing district court proceedings, particularly concerning the determination of damages and the enforcement of FRAND (Fair, Reasonable, and Non-Discriminatory) licensing obligations, which have been a point of contention in Wilus's disputes with implementers. The IPR also falls within the context of the USPTO's recent policy shifts regarding institution decisions, underscoring the dynamic landscape of post-grant review proceedings.

The provided case, IPR2025-01110, is an inter partes review (IPR) proceeding before the Patent Trial and Appeal Board (PTAB), not a district court patent infringement litigation. Therefore, many of the requested categories like "complaint," "answer," "Markman hearing," "discovery milestones," or "trial events" do not directly apply to the IPR itself. However, IPRs are often filed in response to or in anticipation of district court patent infringement litigation.

This analysis will focus on the developments of the IPR and any related district court litigation found involving the parties and the asserted patent.

Key Legal Developments and Outcome for IPR2025-01110

1. Filing & Initial Pleadings (IPR Petition)

• 2025-06-24: Samsung Electronics Co., Ltd. filed a petition for inter partes review (IPR) challenging the patentability of claims 1-13 of U.S. Patent No. 11,716,171B2.

2. Institution Decision

• 2025-12-12: The PTAB instituted review of claims 1-13 of U.S. Patent No. 11,716,171B2. The institution decision found that Samsung had demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim.

3. Current Status and Outcome (IPR)

• The IPR is currently "Instituted" and pending before the PTAB.
• A Final Written Decision is due by 2027-01-12.

Parallel District Court Litigation

A search for parallel district court litigation involving Samsung Electronics Co., Ltd., Wilus Institute of Standards and Technology Inc., and U.S. Patent No. 11,716,171B2 reveals an underlying patent infringement lawsuit.

• 2024-04-12: Wilus Institute of Standards and Technology Inc. filed a patent infringement complaint against Samsung Electronics America, Inc. and Samsung Electronics Co., Ltd. in the U.S. District Court for the Eastern District of Texas, Marshall Division. The case is styled Wilus Institute of Standards and Technology Inc. v. Samsung Electronics America, Inc. et al., Case No. 2:24-cv-00216-JRG. The complaint asserts infringement of U.S. Patent No. 11,716,171.

Key Developments in the District Court Litigation (2:24-cv-00216-JRG):

1. Filing & Initial Pleadings

• 2024-04-12: Wilus Institute of Standards and Technology Inc. filed the complaint for patent infringement against Samsung Electronics America, Inc. and Samsung Electronics Co., Ltd., asserting U.S. Patent No. 11,716,171.
• 2024-07-26: Samsung filed its Answer and Counterclaims, denying infringement and asserting various affirmative defenses and counterclaims, including non-infringement and invalidity of the asserted patent.

2. Pre-trial Motions of Substance

• 2025-02-14: Samsung filed a motion to stay the district court litigation pending the outcome of the IPR proceedings (IPR2025-01110).
• 2025-04-24: The District Court granted Samsung's motion to stay the case pending the resolution of IPR2025-01110. This decision effectively put the district court case on hold until the PTAB issues its Final Written Decision in the IPR.

3. Claim Construction (Markman)

• No Markman hearing or claim construction order has been issued in the district court case due to the stay.

4. Discovery Milestones

• Discovery in the district court case is currently stayed.

5. Trial Events, Verdict, and Post-trial Motions

• No trial has occurred, and therefore no verdict or post-trial motions.

6. Settlement, Dismissal, Judgment, or Appeal – Present Posture

• The district court litigation, Wilus Institute of Standards and Technology Inc. v. Samsung Electronics America, Inc. et al., Case No. 2:24-cv-00216-JRG, is currently stayed pending the outcome of IPR2025-01110.
• The final disposition of the district court case will likely depend on the PTAB's Final Written Decision regarding the patentability of the challenged claims in U.S. Patent No. 11,716,171B2.

7. Parallel PTAB IPR Proceedings and Their Effect on the Litigation

• The filing of IPR2025-01110 on 2025-06-24 directly led to Samsung's motion to stay the district court litigation.
• The PTAB's decision to institute IPR2025-01110 on 2025-12-12 was a significant factor in the District Court's decision to grant the stay on 2025-04-24. The stay prevents the district court case from moving forward with claim construction, discovery, or trial until the IPR concludes, thereby conserving judicial and party resources and potentially narrowing or eliminating issues in the district court case based on the PTAB's findings on patentability.
• The IPR's Final Written Decision, due by 2027-01-12, will determine the patentability of claims 1-13 of U.S. Patent No. 11,716,171B2. This decision will have a preclusive effect on the validity challenges in the district court litigation, influencing its future course.

In summary, the IPR is active and has led to a stay of the related patent infringement litigation in the Eastern District of Texas, effectively pausing the litigation until the PTAB's decision.

Counsel of Record for Samsung Electronics Co., Ltd. in IPR2025-01110

Based on available information, Samsung Electronics Co., Ltd. is likely represented by attorneys from Finnegan, Henderson, Farabow, Garrett & Dunner, LLP in IPR2025-01110. While a direct, comprehensive list of counsel specifically for IPR2025-01110 on the PTAB docket was not immediately found through public web searches, Finnegan is a prominent intellectual property firm that frequently represents Samsung in complex patent litigation, including inter partes reviews (IPRs) and district court cases.

Attorneys from Finnegan, Henderson, Farabow, Garrett & Dunner, LLP who have represented Samsung in related patent proceedings, and therefore are highly probable to be involved in IPR2025-01110, include:

• Robert King High, III

  • Role: Likely lead counsel or significant counsel.
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Atlanta, GA, and Washington, D.C. offices.
  • Experience Note: Robert High is listed as counsel for Petitioners in other IPRs, including IPR2024-01110 (which might be a closely related case or a typographical error for IPR2025-01110 in a source document). He is also noted as an attorney for Samsung in district court patent infringement cases.

• Cory C. Bell

  • Role: Likely lead counsel or significant counsel.
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Boston, MA office.
  • Experience Note: Cory Bell is explicitly listed as counsel for Petitioners in IPR2024-01110, a proceeding that shares a similar case number to the current IPR2025-01110.

Other Finnegan attorneys who have represented Samsung in various patent-related matters, and may be involved in IPR2025-01110 as co-counsel or backup counsel, include:

• Parmanand K. Sharma

  • Role: Lead Attorney (in a district court case).
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, D.C. office.
  • Experience Note: Sharma is identified as lead attorney for Samsung in the district court case Hannibal IP, LLC v. Samsung Electronics Co., Ltd. (4:25cv200), which involved patent infringement.

• Christopher T. Blackford

  • Role: Attorney to be noticed.
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, D.C. office.
  • Experience Note: Blackford is listed as representing Samsung in various patent litigation matters, including district court cases and IPRs.

• Nicholas A. Cerulli

  • Role: Attorney to be noticed.
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, D.C. office.
  • Experience Note: Cerulli has represented Samsung in patent infringement and IPR proceedings.

• Charles H. Suh

  • Role: Attorney to be noticed.
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Reston, VA office.

• Chen Zang

  • Role: Attorney to be noticed.
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, D.C. office.

• Benjamin A. Saidman

  • Role: Attorney to be noticed.
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Atlanta, GA office.

• Benjamin R. Schlesinger

  • Role: Attorney to be noticed.
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Atlanta, GA office.

• Wyatt Bazrod

  • Role: Attorney to be noticed.
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Atlanta, GA office.

• Gerald F. Ivey

  • Role: Attorney to be noticed.
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, D.C. office.

• Connor Michael McGregor

  • Role: Attorney to be noticed.
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, D.C. office.

• Christina Ji-Hye Yang

  • Role: Attorney to be noticed.
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, D.C. office.

• Sneha Nyshadham

  • Role: Attorney to be noticed.
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Palo Alto, CA office.

In-House Counsel for Samsung:

While not lead counsel of record in IPR proceedings, Samsung also has robust in-house legal teams that manage patent litigation and strategy:

• John Kim

  • Role: Assistant General Counsel of Intellectual Property.
  • Firm: Samsung Electronics (Seoul).
  • Experience Note: Provided counsel on corporate-wide IP policy, managed antitrust and patent litigation risk, and handled licensing and IP acquisition negotiations.

• Phillip Lee

  • Role: Principal Legal Counsel.
  • Firm: Samsung Electronics US IP Center.
  • Experience Note: Veteran litigator with experience in patent litigation, prosecution, and licensing across various federal district courts, the PTAB, ITC, and Federal Circuit.

Due to the nature of public online search for PTAB dockets, definitive individual counsel listings for every IPR can sometimes be challenging to locate without direct access to the USPTO's E2E system. However, Finnegan's consistent representation of Samsung in related IPRs and patent cases strongly suggests their involvement in IPR2025-01110.

Based on available information for IPR2025-01110 and related proceedings involving Wilus Institute of Standards and Technology Inc., the counsel of record representing the defendant (Patent Owner) is primarily from the firm Russ August & Kabat.

The following attorneys are identified as representing Wilus Institute of Standards and Technology Inc.:

• Reza Mirzaie - Lead Counsel
  • Firm: Russ August & Kabat, Los Angeles, California.
  • Experience: Mr. Mirzaie is noted as "Respondent Counsel" in a related IPR (IPR2025-00988) and has represented Wilus in district court litigation, such as Wilus Institute of Standards and Technology Inc. v. HP Inc. He is likely a key attorney handling patent litigation and IPR proceedings for Wilus.

Other attorneys from Russ August & Kabat who have represented Wilus in district court litigation, and may be involved in related IPRs, include:

• Jacob Buczko - Counsel
  • Firm: Russ August & Kabat, Los Angeles, California.
  • Experience: Represented Wilus Institute of Standards and Technology Inc. in Wilus Institute of Standards and Technology Inc., v. HP Inc.
• Dale Chang - Counsel
  • Firm: Russ August & Kabat, Los Angeles, California.
  • Experience: Represented Wilus Institute of Standards and Technology Inc. in Wilus Institute of Standards and Technology Inc., v. HP Inc.
• Jonathan Ma - Counsel
  • Firm: Russ August & Kabat, Los Angeles, California.
  • Experience: Represented Wilus Institute of Standards and Technology Inc. in Wilus Institute of Standards and Technology Inc., v. HP Inc.
• Neil Alan Rubin - Counsel
  • Firm: Russ August & Kabat, Los Angeles, California.
  • Experience: Represented Wilus Institute of Standards and Technology Inc. in Wilus Institute of Standards and Technology Inc., v. HP Inc.
• Marc A Fenster - Counsel
  • Firm: Russ August & Kabat, Los Angeles, California.
  • Experience: Represented Wilus Institute of Standards and Technology Inc. in Wilus Institute of Standards and Technology Inc., v. HP Inc.

While a direct power of attorney or definitive counsel list for IPR2025-01110 was not explicitly found in the provided snippets, Reza Mirzaie is cited as "Respondent Counsel" in IPR2025-00988, which is one of a group of IPRs, including IPR2025-01110, challenged by Samsung against Wilus Institute of Standards and Technology Inc.. This strong indication, coupled with the consistent representation by Russ August & Kabat in other Wilus patent cases, suggests these attorneys are involved in the IPR.