Litigation

Smart Mobile Technologies LLC v. Samsung Electronics Co., Ltd. et al.

Dismissed with Prejudice

6:21-cv-00701

Filed
2021-07-02
Terminated
2024-07-15

Patents at issue (1)

Defender signal. Patent 9191083 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.

Summary

All claims, counterclaims, and affirmative defenses were dismissed with prejudice, with each party bearing its own costs. No damages or injunctive relief were awarded, reflecting a negotiated resolution.

Case overview & background

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

This patent infringement litigation, Smart Mobile Technologies LLC v. [[[Samsung Electronics Co.](/litigations/by-defendant/Samsung%20Electronics%20Co.), Ltd.](/litigations/by-plaintiff/Samsung%20Electronics%20Co.%2C%20Ltd.) et al.](/litigations/by-plaintiff/Samsung%20Electronics%20Co.%2C%20Ltd.%20et%20al.), involved Smart Mobile Technologies LLC, a patent assertion entity (PAE) focused on enforcing intellectual property rights related to mobile communications and networking, as the plaintiff. The defendants were global technology conglomerate Samsung Electronics Co., Ltd., a South Korean corporation, and its wholly-owned subsidiary, Samsung Electronics America, Inc. Smart Mobile Technologies LLC, based in Austin, Texas, asserted a portfolio of patents covering technologies foundational to modern smartphone functionality. The accused products included Samsung's various Galaxy-series mobile devices, such as smartphones, smartwatches, and tablets, specifically their wireless communication features like Download Booster, MIMO, Smart Network Switching, and Wi-Fi calling.

Among the numerous patents asserted in the complaint, U.S. Patent No. 9,191,083 (the '083 patent) was key, generally directed to wireless data transmission. Other patents in the portfolio were related to improved wireless communication systems and devices with voice and data capabilities, dynamic network switching, and enhanced mobile device communication functionality. The case was filed in the U.S. District Court for the Western District of Texas, Waco Division, before Judge Alan D. Albright. This venue is particularly notable in patent litigation for its perceived plaintiff-friendliness, characterized by a fast-paced docket and Judge Albright's historical tendency to deny motions to stay pending inter partes review (IPR) proceedings.

The litigation is notable as part of a broader patent assertion campaign by Smart Mobile Technologies, which also initiated a parallel action against [Apple Inc.](/litigations/by-plaintiff/Apple%20Inc.) involving many of the same patents. The case concluded with a dismissal with prejudice, reflecting a negotiated resolution between the parties. Significantly, the Court granted a joint motion to vacate the claim construction order as part of the settlement, which can indicate that the claim construction was either unfavorable to the patent holder, making settlement more appealing, or adverse enough to the accused infringer to warrant a resolution before further litigation.

Key legal developments & outcome

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

Key Legal Developments and Outcome in Smart Mobile Technologies LLC v. Samsung Electronics Co., Ltd. et al.

This patent infringement lawsuit, filed by Smart Mobile Technologies LLC against Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc., concerned alleged infringement of U.S. Patent No. 9,191,083, among others. The case, filed in the U.S. District Court for the Western District of Texas, Waco Division, ultimately concluded with a dismissal with prejudice, indicating a negotiated resolution.

Filing & Initial Pleadings:
Smart Mobile Technologies LLC filed its complaint against Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. on July 2, 2021. The complaint alleged infringement of several U.S. patents, including U.S. Patent No. 9,191,083, as well as U.S. Patent Nos. 8,442,501, 8,472,936, 8,472,937, 8,761,739, 8,824,434, 8,842,653, 9,019,946, 9,049,119, 9,084,291, 9,614,943, and 9,756,168. Specific dates for Samsung's answer and any counterclaims were not immediately found in the search results.

Pre-trial Motions of Substance:
One significant pre-trial motion was Samsung's motion to transfer venue to the Northern District of California. This motion was denied by the Court on September 11, 2023. The specific date of filing of this motion was ECF No. 42, and Smart Mobile's opposition was ECF No. 84, with Samsung's reply at ECF No. 91.

Claim Construction (Markman) Outcomes:
While a formal Markman order was not explicitly found, an expert declaration from June 8, 2022, in a related or consolidated case (6:21-cv-00603-ADA-DTG, also involving Smart Mobile Technologies LLC and Samsung, as well as Apple Inc.), discusses proposed claim constructions for the asserted patents, including 9,191,083. This suggests that claim construction was an active phase of the litigation. The declaration details the expert's opinions on how certain terms in the asserted claims, including those from U.S. Patent No. 9,191,083, would be understood by a person of ordinary skill in the art.

Discovery Milestones with Strategic Significance:
The appearance of expert witness information, such as Dr. George Edwards and Dr. Mahdi Eslamimehr, indicates that discovery, including expert discovery, was underway in the case, spanning from approximately October 2023 to June 2024.

Trial Events, Verdict, and Post-trial Motions:
No information regarding trial events, verdicts, or post-trial motions was found, consistent with the case's eventual dismissal with prejudice before reaching trial.

Settlement, Dismissal, Judgment, or Appeal:
The case was terminated on July 15, 2024, with all claims, counterclaims, and affirmative defenses dismissed with prejudice. This outcome typically reflects a negotiated settlement between the parties, with each party bearing its own costs and no damages or injunctive relief being publicly awarded.

Parallel PTAB IPR/PGR Proceedings:
A related IPR proceeding, IPR2022-01248, was initiated by Samsung Electronics Co., Ltd. et al. against Smart Mobile Technologies LLC concerning one of the asserted patents. This IPR was referenced in an expert declaration dated June 8, 2022. Further details on the outcome or specific impact of this IPR on the district court litigation were not explicitly detailed in the provided search results.Key Legal Developments and Outcome in Smart Mobile Technologies LLC v. Samsung Electronics Co., Ltd. et al.

This patent infringement lawsuit, filed by Smart Mobile Technologies LLC against Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc., concerned alleged infringement of U.S. Patent No. 9,191,083, among others. The case, filed in the U.S. District Court for the Western District of Texas, Waco Division, ultimately concluded with a dismissal with prejudice, indicating a negotiated resolution.

Filing & Initial Pleadings:
Smart Mobile Technologies LLC filed its complaint against Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. on July 2, 2021. The complaint alleged infringement of several U.S. patents, including U.S. Patent No. 9,191,083, as well as U.S. Patent Nos. 8,442,501, 8,472,936, 8,472,937, 8,761,739, 8,824,434, 8,842,653, 9,019,946, 9,049,119, 9,084,291, 9,614,943, and 9,756,168. Specific dates for Samsung's answer and any counterclaims were not explicitly found in the search results. However, a reference to the complaint (Dkt. 1) and a Joint Agreed Scheduling Order (Dkt. 43) in the Samsung case (6-21-cv-00701) from an IPR document suggests that initial pleadings and a scheduling order were in place.

Pre-trial Motions of Substance:
A significant pre-trial motion in the case was Samsung's Motion to Transfer Venue to the Northern District of California (ECF No. 42). This motion was opposed by Smart Mobile (ECF No. 84) and Samsung filed a reply (ECF No. 91). After careful consideration, the Court denied Samsung's motion to transfer venue on September 11, 2023.

Claim Construction (Markman) Outcomes:
While a formal Markman order for the 6:21-cv-00701 case was not explicitly found, an expert declaration from June 8, 2022, filed in a related or consolidated case (6:21-cv-00603-ADA-DTG, also involving Smart Mobile Technologies LLC and Samsung, as well as Apple Inc.), discusses proposed claim constructions for the asserted patents, including 9,191,083. This declaration provides the expert's opinions on how certain terms appearing in the claims of the asserted patents would be understood by a person of ordinary skill in the art. For U.S. Patent 9,191,083, claims 5-9 and 12-20 were asserted against Samsung.

Discovery Milestones with Strategic Significance:
The engagement of expert witnesses indicates that discovery was an active phase of the litigation. Dr. George Edwards and Dr. Mahdi Eslamimehr were involved as experts for Smart Mobile Technologies, LLC v. Samsung Electronics Co. Ltd., with their activity spanning from approximately October 2023 to June 2024. This timeframe suggests that expert discovery, a critical stage in patent litigation, was ongoing shortly before the case's termination.

Trial Events, Verdict, and Post-trial Motions:
No information regarding trial events, verdicts, or post-trial motions was found, which is consistent with the case's ultimate dismissal with prejudice before reaching trial.

Settlement, Dismissal, Judgment, or Appeal:
The case was terminated on July 15, 2024. All claims, counterclaims, and affirmative defenses were dismissed with prejudice, with each party bearing its own costs. This disposition reflects a negotiated settlement between the parties, and no damages or injunctive relief were publicly awarded.

Parallel PTAB IPR/PGR Proceedings on the Asserted Patents and their Effect on the Litigation:
Samsung Electronics Co., Ltd. initiated an Inter Partes Review (IPR) proceeding, IPR2022-01248, against Smart Mobile Technologies LLC, challenging U.S. Patent 9,019,119, a patent also asserted in the district court litigation. This IPR was referenced in an expert declaration dated June 8, 2022. While the direct impact of IPR2022-01248 on the district court litigation for this specific case (6:21-cv-00701) beyond its mention in discovery is not detailed in the provided search results, such parallel proceedings often lead to stays of litigation or influence settlement negotiations. The fact that the case proceeded to expert discovery and a motion to transfer suggests a stay was either not granted or only partial in scope. The IPR proceeding indicates Samsung's effort to challenge the validity of at least one of Smart Mobile's asserted patents at the USPTO.

In the news

What the press has reported about this case, summarized with links to the source articles.

News and analysis coverage concerning Smart Mobile Technologies LLC v. Samsung Electronics Co., Ltd. et al. (Case No. 6:21-cv-00701) primarily highlighted the case's resolution through dismissal and related proceedings, rather than extensive reporting from mainstream media.

The litigation concluded with a dismissal with prejudice on July 15, 2024, following a joint motion by the parties to vacate the claim construction order and dismiss the case. PatSnap reported that all claims, counterclaims, and affirmative defenses were dismissed, with each party bearing its own costs, indicating a negotiated resolution without public damages or injunctive relief. The vacatur of the claim construction order was noted as strategically significant, preventing the order from establishing precedent in future disputes involving the same or related patents, thereby allowing both sides to manage precedential risk. The case involved twelve U.S. patents asserted by Smart Mobile Technologies, including U.S. Patent No. 9,191,083, covering various mobile communications, wireless networking, and software-defined networking technologies.

While specific settlement terms were not disclosed in the public reporting for this case, the engagement of expert witnesses, Dr. George Edwards and Dr. Mahdi Eslamimehr, for Smart Mobile Technologies against Samsung, indicated active litigation and discovery phases leading up to the settlement. Smart Mobile Technologies, identified as a patent assertion entity (PAE), engaged in broader patent enforcement efforts, including parallel litigation against Apple Inc. involving similar patents. Related PTAB Inter Partes Review (IPR) proceedings were also initiated by Samsung and Apple against some of the patents asserted by Smart Mobile Technologies. For example, U.S. Patent No. 9,191,083, one of the patents at issue in the district court case, was also subject to an appeal to the Federal Circuit concerning its patentability, which resulted in a "Vacated and Remanded" disposition, preserving the patent's potential enforceability.

Beyond specialized legal intelligence platforms like PatSnap and docket monitoring services such as PacerMonitor and Justia, widespread coverage in major financial or technology news outlets detailing the specific settlement of Smart Mobile Technologies LLC v. Samsung Electronics Co., Ltd. et al. (6:21-cv-00701) was not prominently found. Much of the broader press coverage regarding Samsung's patent litigation activities often focuses on high-profile jury verdicts involving substantial damages, such as the $445.5 million awarded to Collision Communications or the $78.5 million to Anonymous Media Research Holdings in separate cases, rather than negotiated settlements with undisclosed terms.

Sources

Plaintiff representatives

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

Counsel of Record for Smart Mobile Technologies LLC in Smart Mobile Technologies LLC v. Samsung Electronics Co., Ltd. et al.

In the patent infringement case Smart Mobile Technologies LLC v. Samsung Electronics Co., Ltd. et al., filed in the U.S. District Court for the Western District of Texas, Waco Division (Case No. 6:21-cv-00701), the plaintiff, Smart Mobile Technologies LLC, was represented by several attorneys. While a direct PACER docket search was intended to provide the most authoritative list of appearances and roles, general search results consistently indicate the involvement of specific firms and individuals.

Based on available information, the following attorneys represented Smart Mobile Technologies LLC:

  • Philip J. Graves

    • Role: Counsel (firm partner actively involved in intellectual property litigation)
    • Firm: Graves & Shaw LLP, Los Angeles, California.
    • Experience: Mr. Graves is a highly-rated Intellectual Property Litigation attorney with extensive experience in patent and business litigation, recognized as a Super Lawyer from 2004-2026.
  • Greer N. Shaw

    • Role: Counsel (firm partner actively involved in intellectual property litigation)
    • Firm: Graves & Shaw LLP, Los Angeles, California.
    • Experience: Mr. Shaw is a top-rated Intellectual Property Litigation and Business Litigation attorney, selected as a Super Lawyer for multiple years, including 2014-2016, 2019-2020, and 2024-2026.
  • Alfred R. Fabricant

    • Role: Counsel (likely lead counsel, given his extensive experience as a first-chair trial lawyer in patent litigation for patent owners).
    • Firm: Fabricant Rubino Lambrianakos LLP (formerly Fabricant LLP), Rye, New York (with additional offices in Washington, D.C., New Jersey, and California).
    • Experience: Mr. Fabricant is recognized as one of the nation's most active and successful patent litigators with over 35 years of first-chair trial experience in patent, copyright, trademark, and unfair competition matters across various federal and state courts, including Texas. He is known for securing multimillion-dollar jury verdicts for patent owners and has appeared in over 250 inter partes review proceedings.
  • Scott C. Cole

    • Role: Counsel (likely lead counsel, given his background).
    • Firm: Reichman Jorgensen Lehman & Feldberg LLP, Austin, Texas.
    • Experience: Mr. Cole is a nationally recognized trial lawyer and leading patent litigator with 30 years of experience, having secured over $1 billion for clients in commercial and intellectual property disputes, including significant nine-figure verdicts for plaintiffs.
  • Michael E. Jones

    • Role: Local Counsel (given his firm's location and reputation in the Eastern District of Texas).
    • Firm: Potter Minton PC, Tyler, Texas.
    • Experience: Mr. Jones is an experienced intellectual property litigator who tries lawsuits in state and federal courts, particularly in the Eastern District of Texas. He has successfully tried patent cases for both plaintiffs and defendants and has been designated a "Super Lawyer" for many years.
  • Seth A. Lindner

    • Role: Counsel (likely lead counsel, given his background in high-stakes patent litigation).
    • Firm: BC Law Group PC, Austin, Texas.
    • Experience: Mr. Lindner is a patent litigator representing technology companies in various intellectual property matters, including taking multiple patent cases to trial and serving as lead counsel in over 40 inter partes review proceedings before the PTAB. He has an electrical engineering background and prior experience at large technology-focused firms.
  • Justin W. Allen

    • Role: Local Counsel (based on his firm's location in Waco and experience in the Western District of Texas).
    • Firm: Haley & Olson LLC, Waco, Texas (now at Thompson Coburn LLP).
    • Experience: Mr. Allen is a patent attorney with experience in patent infringement litigation in the Western District of Texas, representing software technology patent holders. He handles all aspects of civil litigation.

While other experienced patent litigators like D. Michael Underhill, Elizabeth R. Weldon, Lawrence R. LaPorte, and Craig J. Franco have notable patent litigation experience, direct evidence of their appearance as counsel of record for the plaintiff in this specific case (6:21-cv-00701) was not found in the search results. They are generally active in patent litigation and could be involved in related matters or other cases.

Defendant representatives

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

Counsel of Record for Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.

The defendants, Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc., were represented by attorneys from Fish & Richardson P.C. during the course of this patent infringement case. While specific roles like "lead counsel" or "of counsel" are not always explicitly delineated in publicly available docket entries without direct PACER access, the listed attorneys are principals or associates at Fish & Richardson specializing in patent litigation and would have served in key capacities. Additionally, local counsel is often required in the Western District of Texas.

Here is a summary of the identified counsel:

  • Ruffin B. Cordell

    • Role: Principal Counsel
    • Firm: Fish & Richardson P.C., Washington, D.C. and Dallas, TX
    • Experience: A seasoned trial lawyer with over three decades of experience, Ruffin has served as lead counsel in numerous high-stakes patent and trade secret litigations worldwide, including many cases for Samsung involving mobile devices in the Eastern District of Texas and the ITC.
  • Michael J. McKeon

    • Role: Principal Counsel
    • Firm: Fish & Richardson P.C., Washington, D.C.
    • Experience: A nationally recognized intellectual property and trial attorney with over 25 years of experience, Michael has represented major technology companies in complex patent disputes before federal district courts, the U.S. International Trade Commission, and the Court of Appeals for the Federal Circuit.
  • David M. Hoffman

    • Role: Principal Counsel
    • Firm: Fish & Richardson P.C., Austin, TX
    • Experience: David's practice focuses on patent litigation and inter partes review proceedings, with extensive familiarity with the Western District of Texas, where he is considered a go-to authority due to his deep understanding of its procedures.
  • Thomas H. Reger, II

    • Role: Principal Counsel
    • Firm: Fish & Richardson P.C., Dallas, TX
    • Experience: A seasoned trial lawyer in patent, FRAND, and other intellectual property cases, Tom has successfully represented patent defendants across the country, securing jury verdicts and summary judgments of non-infringement and invalidity.
  • April Sunyoung Park (listed as Sun Young Park in some records)

    • Role: Principal Counsel
    • Firm: Fish & Richardson P.C., Washington, D.C. and New York, NY
    • Experience: April focuses on all aspects of patent infringement matters in U.S. District Courts and the U.S. International Trade Commission, with a reputation as an international authority in her field.
  • Brian P. Boyd

    • Role: Counsel
    • Firm: Fish & Richardson P.C., Atlanta, GA
    • Experience: Brian is an experienced intellectual property litigator who has successfully handled complex, high-stakes IP disputes in U.S. district courts and before the International Trade Commission, covering technologies such as smartphones and communication standards.
  • Jonathan B. Bright

    • Role: Counsel
    • Firm: Fish & Richardson P.C., Atlanta, GA
    • Experience: Jonathan is a patent litigator who protects complex technologies in U.S. district courts and before the International Trade Commission, with experience in trade secret law and post-grant petitions.
  • Aamir A. Kazi

    • Role: Principal Counsel
    • Firm: Fish & Richardson P.C., Atlanta, GA
    • Experience: Aamir is an intellectual property litigator and counselor with extensive experience in all major aspects of patent litigation, from pre-suit diligence through trial and post-trial, including in district courts and the ITC.
  • Joshua A. Rosefelt

    • Role: Associate Counsel (at the time of the case)
    • Firm: Fish & Richardson P.C., Washington, D.C. (later joined Groombridge, Wu, Baughman & Stone LLP)
    • Experience: Josh has represented clients in patent litigation in federal district courts, before the U.S. Patent and Trademark Office, and the U.S. International Trade Commission, and previously served as a patent examiner.
  • Christopher O. Green

    • Role: Counsel
    • Firm: Fish & Richardson P.C.
    • Experience: General patent litigation experience as a principal at Fish & Richardson.

Although a specific local counsel for Samsung in this particular case was not explicitly identified in the provided snippets, it is a common practice and often a requirement in the Western District of Texas for out-of-state firms to associate with local counsel. Fish & Richardson itself has an Austin office, and David Hoffman is noted for his extensive familiarity with the Western District of Texas, which could fulfill a local counsel role.