Litigation

Samsung v. Smart Mobile Technologies LLC

dismissed

24-1351

Terminated
2024-08-06

Patents at issue (1)

Defender signal. Patent 8472936 has had claims invalidated at PTAB. Those final written decisions are public record and a ready-made § 102 / § 103 ground in district court. See IPR estoppel for what carries over.

8472936PTAB: claims invalidated

Plaintiffs (1)

Summary

Samsung appealed to the Federal Circuit, likely from a PTAB IPR proceeding involving Smart Mobile Technologies LLC. Samsung voluntarily dismissed the appeal on August 6, 2024.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

This case concerns a patent infringement dispute initiated by Smart Mobile Technologies LLC (SMT), a patent assertion entity (PAE), against Samsung Electronics Co., Ltd., a global technology conglomerate and major manufacturer of consumer electronics, including its Galaxy line of smartphones, smartwatches, and tablets. The core of the infringement allegations stemmed from Samsung's use of wireless communications features in its Galaxy-series devices, such as Download Booster, MIMO, Smart Network Switching, and Wi-Fi calling, which Smart Mobile Technologies alleged infringed its patent portfolio. The specific patent at issue in the Federal Circuit appeal, U.S. Patent No. 8,472,936, broadly covers "dynamically configurable IP-based wireless devices and networks," addressing adaptive wireless communication architectures foundational to modern smartphone and mobile networking infrastructure. Other patents asserted in the underlying district court litigation also related to improved wireless communication systems and devices with voice and data capabilities, dynamic network switching, and enhanced mobile device functionality.

The procedural journey began in the [U.S. District Court for the Western District of Texas, Waco Division](/courts/western-district-of-texas-waco), where Smart Mobile Technologies LLC filed an infringement lawsuit against Samsung (and a parallel case against Apple) on July 2, 2021, under case number 6:21-cv-00701, presided over by Judge Alan D. Albright. This district court was a notable venue for patent cases due to its historically expedited dockets. Samsung, in response to the infringement claims, challenged the validity of U.S. Patent No. 8,472,936, likely through an inter partes review (IPR) proceeding at the Patent Trial and Appeal Board (PTAB) of the USPTO. The Federal Circuit case (24-1351) was an appeal from a PTAB decision concerning the patentability/invalidity of this patent. However, Samsung voluntarily dismissed its appeal at the U.S. Court of Appeals for the Federal Circuit on August 6, 2024. This dismissal was unopposed and made without prejudice, with each party bearing its own costs, suggesting a potential settlement or strategic realignment rather than a definitive ruling on the merits. A companion appeal, 24-1352, was simultaneously deconsolidated and continued to a Federal Circuit merits panel, indicating that broader patent disputes between the parties remained active.

This case is notable for several reasons, primarily illustrating typical NPE assertion patterns. Smart Mobile Technologies LLC, as a patent assertion entity, engaged in litigation against major technology companies like Samsung (and Apple in related matters), asserting a portfolio of patents central to mobile communications technology. The strategic use of PTAB IPRs by accused infringers like Samsung to challenge patent validity, followed by appeals to the Federal Circuit, is a common defensive maneuver in such high-stakes patent disputes. The voluntary dismissal of the Federal Circuit appeal, particularly when a companion appeal continues, highlights the dynamic and often negotiated nature of outcomes in complex, multi-patent, multi-defendant patent campaigns involving significant players in the mobile technology market. The asserted patents, covering core functionalities of modern mobile devices, underscored the industry-wide impact of such intellectual property disputes.

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

Samsung v. Smart Mobile Technologies LLC: Litigation and IPR Overview

The Federal Circuit appeal 24-1351, filed by Samsung against Smart Mobile Technologies LLC regarding U.S. Patent No. 8,472,936, was voluntarily dismissed by Samsung on August 6, 2024. This appeal was part of a broader intellectual property dispute that originated in district court and involved parallel proceedings at the Patent Trial and Appeal Board (PTAB).

District Court Litigation (Western District of Texas, Case No. 6:21-cv-00701-ADA)

  • Filing & Initial Pleadings: Smart Mobile Technologies LLC initiated a patent infringement lawsuit against [Samsung Electronics Co. Ltd.](/litigations/by-plaintiff/Samsung%20Electronics%20Co.%20Ltd.) and Samsung Electronics America, Inc. on July 2, 2021, in the U.S. District Court for the Western District of Texas. The complaint alleged infringement of multiple patents, including U.S. Patent No. 8,472,936, which covers technology related to dynamically configurable IP-based wireless devices and networks.
  • Pre-trial Motions: Samsung filed a motion to transfer venue to the Northern District of California, which the district court denied on September 11, 2023. Additionally, Samsung filed a motion to stay the district court litigation pending the outcome of inter partes review (IPR) proceedings at the PTAB. This motion was denied by the district court on October 24, 2023.
  • Claim Construction (Markman): A Markman hearing, for claim construction, was held on August 18, 2023.
  • Final Disposition: The district court case concluded on July 15, 2024, when a Joint Motion to Vacate Claim Construction Order and to Dismiss with Prejudice was granted. This dismissal indicated a negotiated resolution or settlement between Smart Mobile Technologies and Samsung, with each party bearing its own costs.

Parallel PTAB IPR Proceedings

  • IPR Challenges for Related Patents: While a specific IPR initiated by Samsung solely for U.S. Patent No. 8,472,936, which directly led to their Federal Circuit appeal 24-1351, is not explicitly detailed in the public records found, it is clear that Samsung and Apple were engaged in coordinated challenges to Smart Mobile Technologies' patent portfolio through IPRs.
  • Apple's IPR and Appeal on 8,472,936: Apple Inc. petitioned for an inter partes review of U.S. Patent No. 8,472,936, among other related patents (U.S. Patent Nos. 8,761,739 and 8,442,501), leading to PTAB Case No. IPR2022-00981. The PTAB's final written decision in IPR2022-00981 found that Apple had failed to prove the challenged claims of the '936 patent invalid as obvious.
  • Apple's Federal Circuit Appeal (24-1352): Apple appealed the PTAB's decision in IPR2022-00981 to the Federal Circuit (Case No. 24-1352). On January 21, 2026, the Federal Circuit issued a decision that reversed in part, vacated in part, and remanded the PTAB's final written decision. The Federal Circuit concluded that the PTAB was precluded from finding the challenged claims of the '936 patent patentable, applying the doctrine of issue preclusion because a related patent with substantially similar claims had been found unpatentable in prior IPRs (IPR2022-00980 and IPR2022-00808, concerning the '739 and '501 patents, respectively).

Federal Circuit Appeal (Case No. 24-1351)

  • Origin and Dismissal: Samsung's appeal (24-1351) likely stemmed from a PTAB IPR proceeding challenging the validity of U.S. Patent No. 8,472,936. On August 6, 2024, Samsung voluntarily dismissed this appeal pursuant to Federal Rule of Appellate Procedure 42(b)(2). The dismissal was unopposed, and each party was ordered to bear its own costs. This dismissal suggests a strategic realignment by Samsung, potentially due to a resolution in related proceedings or sufficient leverage gained through the parallel litigation efforts, including Apple's continued appeal in 24-1352. The appeal 24-1351 was initially consolidated with other appeals, including Apple's 24-1352, but was subsequently deconsolidated.

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.

I found substantive material on the related Apple appeal and the underlying campaign. Let me search more angles for press coverage specific to the Samsung case and the '936 patent.

Press and analyst coverage

Bottom line: there is essentially no press coverage of the Samsung appeal itself (24-1351). I could not find any Reuters, Bloomberg Law, Law360, Ars Technica, The Verge, IPWatchdog, Patently-O or JD Supra article about Samsung's appeal from IPR2022-00981 or its August 6, 2024 voluntary dismissal. The only publicly available accounts of the dismissal are the court's own order (CAFC; CourtListener copy of the order) and docket-aggregator entries (Patexia Research doc. 31 (motion to deconsolidate/voluntarily dismiss, Aug. 1, 2024) and doc. 33 (order, Aug. 6, 2024); UniCourt). No outlet reported a settlement amount, damages figure, or executive statement, and neither the CAFC order nor any secondary source discloses terms — the dismissal was unopposed, with each side bearing its own costs. This is a case where the "press coverage" question has to be answered largely by pointing at what the trade press wrote about the surrounding Smart Mobile campaign rather than about this appeal.

The most substantive coverage of the underlying Samsung dispute came at the filing stage from RPX, which reported on 2021-07-07 ("Having Hit Apple in June, Smart Mobile Technologies Sues Samsung in July") that Smart Mobile Technologies LLC (SMT) filed the W.D. Tex. case 6:21-cv-00701 roughly three weeks after suing Apple, targeting the provision of Galaxy-series devices (smartphones, smart watches, tablets) and wireless features for "connecting to and switching between different types of networks (e.g., Download Booster, MIMO, Smart Network Switching, Wi-Fi calling, etc.)." RPX had earlier reported on 2021-06-11 ("West Texas Suit Targets 'Dynamic Switching' Between Wi-Fi and Cell Networks") on SMT's Apple suit 6:21-cv-00603, describing SMT as an entity formed in Delaware "nearly a year ago" and noting notice allegations tied to a 2015 patent-divestment advisory engagement. On the PTAB side, Law360 ("PTAB Sides With Apple, Samsung To Ax Smart Mobile Patent," reported late November 2023) covered the Board's obviousness rulings against SMT's patents — coverage I could only confirm through a Chinese-language summary that cites the Law360 article (GDOIP), which notes that the Texas Samsung case was, as of that reporting, still proceeding while the Apple case had been transferred to California and stayed. Law360's piece (as summarized) framed SMT as facing six IPRs, with five adverse rulings and one win — the kind of scorekeeping that is the trade press's typical treatment of this campaign.

The '936 patent at issue in 24-1351 did generate real coverage — but only later, and only as an Apple story. IPWatchdog reported on 2026-01-21 ("Federal Circuit Reverses PTAB on Issue Preclusion, Finds Smart Mobile Patent Claims Unpatentable") that the Federal Circuit, in an opinion by Judge Reyna, reversed in part, vacated in part and remanded the Board's IPR2022-00981 final written decision, holding that issue preclusion barred the Board from finding the '936 claims patentable given the earlier invalidation of substantially similar claims of the '739 and '501 patents in IPR2022-00980 and IPR2022-00808, and quoting the court's line that "[t]o conclude otherwise would allow a patentee to assert a claim substantially similar to a claim previously found unpatentable by the PTAB." Fed Circuit Blog summarized the same disposition that day, and Verdict News added detail on the panel (Judges Lourie, Reyna and Chen) and counsel (Angela M. Oliver and Haynes and Boone for Apple; Greer N. Shaw and Philip Graves of Graves & Shaw for SMT). Notably, none of these accounts mentions Samsung or appeal 24-1351 — the same PTAB proceeding that Samsung abandoned in August 2024. More recent trade coverage continues to follow the Apple/SMT docket without revisiting the Samsung appeal: Bloomberg Law's IP Law Daily via VitalLaw reported on 2025-12-19 that a "licensing entity's wireless system patent survives Apple's invalidity challenges," and a Legal News Feed item dated 2026-08-27 ("U.S. Federal Circuit Court Rulings Favor Smart Mobile Technologies in Patent Dispute with Apple") recaps the '936 issue-preclusion ruling alongside other Fed Cir rulings favorable to SMT.

Where accounts differ or stray from the record: PatSnap Eureka's post "Smart Mobile Technologies v. Samsung: Mobile Patent Dispute Ends in Dismissal" is the only item framed as coverage of the Samsung case's resolution, but it is an AI-generated litigation-summary blog post (not journalism) and it contains at least one questionable detail — its patent list includes "US2180644A," which is not a plausible assertion patent here, and it describes twelve patents while the docketed infringement contentions list twelve across the Apple and Samsung suits combined. It also offers interpretation rather than reporting, arguing the joint vacatur of the claim-construction order signals that claim construction "effectively drove the case to resolution" and that joint vacatur is "a viable tool for managing precedential risk" — an analyst take, not a reported fact. Separately, Verdict News describes the January 21, 2026 ruling as issued "Tuesday," while IPWatchdog reported it as handed down "on Wednesday" (Jan. 21, 2026 was a Wednesday); Verdict's characterization of the panel outcome as a "mixed ruling" that "suggests that Apple succeeded on at least some of its legal arguments" glosses over the erratum issued February 23, 2026 correcting the opinion's repeated references to "the '968 patent" to "the '936 patent." Finally, a correction to the earlier case sections: the PTAB petition and FWD in IPR2022-00981 name Apple Inc. and Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. as co-petitioners, so 24-1351 (Samsung) and 24-1352 (Apple) were not separate challenges — they were separate appeals from the same Board decision, consolidated on January 26, 2024 (24-1351 lead) and then deconsolidated on August 6, 2024. That is why the same '936 patent that SMT "won" at the Board in the Samsung appeal went on to be held unpatentable on Apple's appeal.

Sources

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

Although specific docket entries directly naming counsel for Samsung in Federal Circuit case 24-1351 were not explicitly found in public search results, information from a closely related Federal Circuit appeal (Case No. 24-1610) involving the same parties, Samsung and Smart Mobile Technologies LLC, indicates that Walter Karl Renner, Esq. represented Samsung. Given the nature of these appeals, likely originating from PTAB IPR proceedings, it is highly probable that Mr. Renner also served as counsel for Samsung in case 24-1351, which was voluntarily dismissed.

Based on available information, the counsel for Samsung is likely:

  • Name: W. Karl Renner
  • Role: Lead Counsel (implied, given his role as leader of the firm's Post-Grant Practice)
  • Firm: Fish & Richardson PC, Washington, D.C. office
  • One-line note on relevant patent litigation experience: Mr. Renner leads Fish & Richardson's Post-Grant Practice and has directed over 900 America Invents Act post-grant matters, both challenging and defending patents, often coordinating with litigation counsel in co-pending disputes. He previously served as president of the PTAB Bar Association and is recognized for his expertise in PTAB and Federal Circuit proceedings, particularly for large technology companies. His technical focus spans electrical, computer-related, physics, and mechanical arts, including mobile and wireless communications.

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

In the Federal Circuit appeal Samsung v. Smart Mobile Technologies LLC (Case No. 24-1351), which was voluntarily dismissed by Samsung on August 6, 2024, the counsel of record for Smart Mobile Technologies LLC can be inferred from closely related Federal Circuit appeals involving Smart Mobile Technologies LLC as the patent owner and facing challenges to its patents, often originating from PTAB IPR proceedings.

Based on companion Federal Circuit cases such as Apple Inc. v. Smart Mobile Technologies, LLC (Case No. 24-1352 and 24-1624), where Smart Mobile Technologies LLC was the appellee, the following attorneys represented Smart Mobile Technologies LLC:

  • Greer N. Shaw

    • Role: Lead Counsel (Appearing for Appellee in related cases)
    • Firm: Graves & Shaw LLP, Los Angeles, CA
    • Experience: Frequently represents patent owners, particularly in appeals from PTAB decisions to the Federal Circuit concerning patent validity.

  • Philip Graves

    • Role: Of Counsel (Also represented Appellee in related cases)
    • Firm: Graves & Shaw LLP, Los Angeles, CA
    • Experience: Regularly involved in patent litigation at the Federal Circuit, defending patent validity on behalf of patent owners.

It should be noted that due to Samsung's voluntary dismissal of Case No. 24-1351, extensive filings detailing counsel appearances for Smart Mobile Technologies LLC in this specific appeal may be limited on the public docket. However, Greer N. Shaw and Philip Graves of Graves & Shaw LLP consistently represent Smart Mobile Technologies LLC in related Federal Circuit matters concerning the validity of their patents.