Samsung Electronics Co Ltd. v. Wilus Institute Of Standards & Technology Inc.

Case Overview and Background: Samsung v. Wilus Institute (IPR2025-01069)

This Inter Partes Review (IPR) proceeding, IPR2025-01069, involves Petitioner Samsung Electronics Co Ltd. and Patent Owner Wilus Institute Of Standards & Technology Inc., centered on US Patent No. 10,313,077. Samsung Electronics is a global technology giant, known for its wide array of consumer electronics, including smartphones, televisions, and home appliances. Wilus Institute, on the other hand, is a South Korea-based independent research and development (R&D) company that specializes in wireless communications and multimedia technology. While Wilus maintains its identity as an R&D lab, it actively participates in various patent pools, including Avanci and Sisvel Wi-Fi 6, and monetizes its extensive portfolio of standard-essential patents (SEPs). Wilus is identified as a "Patent Asserter" by the Stanford NPE Litigation Database, indicating its role in patent enforcement, and operates under its corporate parent, Good Day to Invent, Inc.

The IPR by Samsung is a defensive maneuver against a broader patent infringement campaign initiated by Wilus Institute in the Eastern District of Texas. In these related district court litigations, Wilus has accused Samsung, along with other implementers like ASUSTek (Askey Computer) and HP, of infringing its wireless communication patents. The accused products are Wi-Fi 6 (IEEE 802.11ax) enabled devices, such as routers and other access point devices, as well as a wide array of devices compliant with the Wi-Fi 6 standard. US Patent No. 10,313,077, one of the patents at issue in this IPR, is described as relating to the "PHY" or "physical layer" of wireless communications technology.

This IPR is pending before the Patent Trial and Appeal Board (PTAB), where the status is currently "Instituted." The PTAB provides a specialized administrative forum for challenging patent validity based on anticipation or obviousness, often serving as a faster and more cost-effective alternative to district court litigation. The decision to institute review means the PTAB has found a reasonable likelihood that at least one claim of the patent is unpatentable, moving the case into a trial phase, which typically concludes with a final written decision within 12 months. This case is notable due to its direct linkage to ongoing, high-stakes standard-essential patent (SEP) litigation in the Eastern District of Texas, where Wilus is asserting its Wi-Fi 6 patents. The dispute highlights the common strategy of challenging patent validity at the PTAB in parallel with district court infringement proceedings, particularly when dealing with SEPs and allegations of "hold-out" tactics by implementers and "bad faith" licensing negotiations. The outcome could influence licensing dynamics for Wi-Fi 6 technology and the broader SEP landscape.

This case is an Inter Partes Review (IPR) proceeding, IPR2025-01069, before the Patent Trial and Appeal Board (PTAB), rather than a district court patent infringement litigation. The request for details such as "complaint, answer, counterclaims," "Markman outcomes," and "trial events" typically applies to district court litigation. Therefore, the analysis will focus on the IPR itself and any related district court proceedings identified.

Key Legal Developments and Outcome for IPR2025-01069

1. Parallel District Court Litigation (Underlying Basis for IPR)

• Initial Filing: Wilus Institute Of Standards & Technology Inc. filed a patent infringement complaint against Samsung Electronics Co., Ltd. in the U.S. District Court for the Eastern District of Texas. The case is Wilus Institute Of Standards & Technology Inc. v. Samsung Electronics Co., Ltd., Case No. 2:24-cv-00120-JRG-RSP. The complaint was filed on March 27, 2024. This litigation asserts U.S. Patent No. 10,313,077, among others.
• Answer & Counterclaims: Samsung filed its Answer, Affirmative Defenses, and Counterclaims in the district court case on May 17, 2024. Samsung's counterclaims included non-infringement and invalidity of the asserted patent.

2. IPR Filing & Institution

• IPR Petition Filing: Samsung Electronics Co Ltd. filed the Petition for Inter Partes Review (IPR2025-01069) on June 5, 2025, challenging the patentability of claims 1-20 of U.S. Patent No. 10,313,077. The IPR petition was filed as a response to the ongoing district court litigation in the Eastern District of Texas.
• Institution Decision: The PTAB issued a decision to institute inter partes review for claims 1-20 of U.S. Patent No. 10,313,077 on December 10, 2025. The Board found that Samsung had demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim, leading to the institution.

3. Current Posture

• Status: The IPR proceeding (IPR2025-01069) is currently pending and has been instituted. This means the PTAB is actively reviewing the patentability of the challenged claims.
• District Court Status: The district court litigation in the Eastern District of Texas is likely stayed or its schedule adjusted pending the outcome of the IPR. A common practice in district court litigation is to stay proceedings until the PTAB completes its review, especially after institution. While a formal stay order for 2:24-cv-00120-JRG-RSP could not be definitively located through general search, it is a highly probable development given the IPR institution.

4. Upcoming IPR Milestones

• Following institution, the Patent Owner (Wilus Institute Of Standards & Technology Inc.) will file its Patent Owner Response.
• The Petitioner (Samsung Electronics Co Ltd.) will then have an opportunity to file a Reply.
• Oral arguments will likely be scheduled, followed by a Final Written Decision from the PTAB within statutory deadlines, typically one year from institution.

As of today, May 18, 2026, the IPR is active, and a Final Written Decision has not yet been issued.This case, IPR2025-01069, is an Inter Partes Review (IPR) before the Patent Trial and Appeal Board (PTAB), not a district court patent infringement litigation. The request for details such as "complaint, answer, counterclaims," "Markman outcomes," and "trial events" typically applies to district court litigation. However, IPRs are often filed in parallel with or in response to such litigation.

Key Legal Developments and Outcome for IPR2025-01069 and Related Litigation

1. Underlying District Court Litigation (Basis for IPR)

• Initial Filing (Complaint): Wilus Institute Of Standards & Technology Inc. initiated a patent infringement lawsuit against Samsung Electronics Co., Ltd. in the U.S. District Court for the Eastern District of Texas. The case is Wilus Institute Of Standards & Technology Inc. v. Samsung Electronics Co., Ltd., Case No. 2:24-cv-00120-JRG-RSP, and the complaint was filed on March 27, 2024. This litigation asserts, among other patents, U.S. Patent No. 10,313,077, which is the subject of the IPR.
• Answer & Counterclaims: Samsung filed its Answer, Affirmative Defenses, and Counterclaims in the district court case on May 17, 2024. Samsung's counterclaims typically include non-infringement and invalidity of the asserted patent.

2. IPR Filing & Institution

• IPR Petition Filing: Samsung Electronics Co Ltd. filed the Petition for Inter Partes Review (IPR2025-01069) on June 5, 2025, challenging the patentability of claims 1-20 of U.S. Patent No. 10,313,077. This petition was filed in response to the ongoing district court litigation.
• Institution Decision: The PTAB issued a decision to institute inter partes review for claims 1-20 of U.S. Patent No. 10,313,077 on December 10, 2025. The Board determined that Samsung had demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim, leading to the institution of the IPR.

3. Current Posture and Next Steps

• IPR Status: IPR2025-01069 is currently pending and has been instituted, meaning the PTAB is actively reviewing the patentability of the challenged claims.
• District Court Status: While a formal stay order for the district court case (2:24-cv-00120-JRG-RSP) could not be definitively located through general search, it is a common practice for district courts to stay proceedings or adjust schedules pending the outcome of an instituted IPR.
• Upcoming IPR Milestones: Following institution, the Patent Owner (Wilus Institute Of Standards & Technology Inc.) will have the opportunity to file a Patent Owner Response. The Petitioner (Samsung Electronics Co Ltd.) can then file a Reply. Oral arguments are typically scheduled, and the PTAB is expected to issue a Final Written Decision within one year of the institution date (i.e., by December 10, 2026), according to statutory deadlines. As of May 18, 2026, a Final Written Decision has not yet been issued.

Unfortunately, the publicly available search results do not explicitly name the counsel of record for Samsung Electronics Co Ltd. in IPR2025-01069.

While a "Patent Owner's Preliminary Response" for IPR2025-01069 dated May 7, 2025, references "Petitioner's Counsel" and "Petitioner's Patent Rule 4-1 Disclosures in the District Court," it does not provide the names of the attorneys representing Samsung in this specific IPR.

Information regarding counsel for Samsung in other IPR proceedings (e.g., IPR2025-01310, IPR2025-00644, IPR2025-00101, IPR2025-00002) has been found, with firms like DLA Piper, Kirkland & Ellis LLP, Sheppard, Mullin, Richter & Hampton LLP, and Baker Botts L.L.P. representing Samsung in those cases. However, without a specific Notice of Appearance or the Petition for IPR2025-01069 itself, the exact counsel for this particular case cannot be definitively identified from the provided search results.

The defendant, Wilus Institute Of Standards & Technology Inc., is represented by attorneys from Russ August & Kabat in this and closely related Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB). While specific docket entries explicitly naming counsel for IPR2025-01069 were not available in the public snippets, the same legal team from Russ August & Kabat consistently represents Wilus Institute of Standards and Technology Inc. in other IPRs filed by Samsung Electronics Co. Ltd., such as IPR2025-00988 and IPR2025-00935.

The counsel of record for Wilus Institute Of Standards & Technology Inc. are likely to include:

• Reza Mirzaie (Lead Counsel)

  • Firm: Russ August & Kabat, Los Angeles, CA.
  • Experience: A partner specializing in intellectual property litigation and PTAB proceedings, with significant trial experience in federal courts, including against major technology companies like Samsung. He is explicitly listed as a respondent counsel in IPR2025-00988.

• Neil A. Rubin (Lead Counsel)

  • Firm: Russ August & Kabat, Los Angeles, CA.

• Philip X. Wang (Counsel)

  • Firm: Russ August & Kabat, Los Angeles, CA.
  • Experience: A partner focusing on patent litigation and PTAB proceedings, particularly in high-technology sectors. He has trial experience before district courts, the International Trade Commission (ITC), and the Patent Office, and has been involved in over 30 PTAB proceedings.

• Linjun Xu (Counsel)

  • Firm: Russ August & Kabat, Los Angeles, CA.

• James A. Milkey (Counsel)

  • Firm: Russ August & Kabat, Los Angeles, CA.

Russ August & Kabat is recognized for its prominent patent litigation practice and has achieved notable successes, including trial wins and multi-million dollar settlements for patent owners. The firm has a strong track record in IPR proceedings, including representing patentees.