Litigation

Staton Techiya, LLC et al. v. Samsung Electronics Co., Ltd. et al.

Dismissed with prejudice

2:21-cv-00413

Filed
2021-11-05
Terminated
2024-05-09

Patents at issue (1)

Summary

A district court patent infringement case filed by Staton Techiya, LLC against [[Samsung Electronics Co.](/litigations/by-defendant/Samsung%20Electronics%20Co.), Ltd.](/litigations/by-plaintiff/Samsung%20Electronics%20Co.%2C%20Ltd.) in the Eastern District of Texas, which was dismissed with prejudice.

Case overview & background

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

This patent infringement litigation, Staton Techiya, LLC et al. v. Samsung Electronics Co., Ltd. et al., originated in the U.S. District Court for the Eastern District of Texas, Marshall Division, presided over by District Judge Rodney Gilstrap and Magistrate Judge Roy S. Payne. The Eastern District of Texas is a historically significant venue for patent litigation, often favored by plaintiffs due to its reputation for a fast-paced "rocket docket" and local rules perceived as favorable to patent holders, as well as a jury pool reportedly sympathetic to plaintiffs in patent cases. This strategic choice of venue, however, has faced increased scrutiny and changes in patent venue law over time. The case, initially filed on November 5, 2021, and later consolidated with a second complaint (2:22-cv-00053), was ultimately dismissed with prejudice on May 9, 2024.

The plaintiff, Staton Techiya, LLC, identified as a patent assertion entity (PAE) or non-practicing entity (NPE), holds a portfolio of patents primarily focused on audio and voice processing technologies. Staton Techiya initially brought the lawsuit with co-plaintiff Synergy IP Corporation, controlled by Dr. Seung-Ho Ahn and Mr. Sungil Cho, both former Samsung employees. The defendants were global consumer electronics manufacturer Samsung Electronics Co., Ltd. and its U.S. subsidiary, Samsung Electronics America, Inc. Samsung was accused of infringing on multiple patents through various products, including its Galaxy S21 5G smartphones, Galaxy Buds series of earphones, the Samsung Wearable app, and the Bixby Personal Assistant app. Among the patents asserted in the broader litigation, U.S. Patent No. 8,315,400 ("Method and device for acoustic management control of multiple microphones") was notably at issue, describing systems for managing acoustics using multiple microphones, critical for features like noise cancellation and voice recognition in modern smart devices.

This case is particularly notable for its outcome: the district court dismissed Staton Techiya's patent claims with prejudice after a bench trial, finding them unenforceable against Samsung based on the doctrine of "unclean hands." This severe sanction stemmed from allegations that Synergy IP and its principals (Dr. Ahn and Mr. Cho) had misappropriated privileged documents from Samsung during their prior employment and used this confidential information to formulate the infringement lawsuit. Samsung had filed counterclaims alleging trade secret misappropriation, breach of fiduciary duty, and civil conspiracy, which played a central role in the court's findings. Additionally, Samsung had aggressively challenged Staton Techiya's patents through numerous inter partes review (IPR) petitions at the USPTO's Patent Trial and Appeal Board (PTAB), some of which led to subsequent appeals at the Federal Circuit regarding patentability and validity.

Key legal developments & outcome

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

The patent infringement litigation Staton Techiya, LLC et al. v. Samsung Electronics Co., Ltd. et al., filed in the Eastern District of Texas, concluded with a dismissal with prejudice due to the plaintiffs' unclean hands, specifically involving the theft and misuse of Samsung's confidential and privileged information. The case also saw numerous pre-trial motions, discovery disputes, and parallel PTAB proceedings.

Here is a chronological overview of the key legal developments and outcomes:

Filing & Initial Pleadings:

  • 2021-11-05: Staton Techiya, LLC and Synergy IP Corporation (collectively, "Plaintiffs" or "Techiya") filed a patent infringement complaint against Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (collectively, "Samsung") asserting ten patents, including U.S. Patent 8,315,400 ("the '400 patent"). (Dkt. No. 1)
  • 2022-02-10: Samsung filed counterclaims against Techiya, Synergy IP Corporation, and its principals, Dr. Seungho Ahn and Mr. Sungil Cho, alleging breach of fiduciary duty, aiding and abetting a breach of fiduciary duty, civil conspiracy, and trade secret misappropriation. Samsung also asserted affirmative defenses of unclean hands and unenforceability. (Dkt. No. 27)
  • 2022-02-14: Techiya and Synergy filed a second patent infringement lawsuit against Samsung (Case No. 2:22-CV-00053-JRG-RSP), asserting four additional patents. (Dkt. No. 1 in 2:22-CV-00053)
  • 2022-03-28: The parties filed a Joint Motion to Consolidate the two co-pending lawsuits. (Dkt. No. 39)
  • 2022-05-04: The Court issued an order consolidating Case Nos. 2:21-CV-00413-JRG-RSP and 2:22-CV-00053-JRG-RSP, designating 2:21-CV-00413-JRG-RSP as the Lead Case. (Dkt. No. 47)

Pre-trial Motions of Substance:

  • 2022 (Date not specified, prior to disqualification): Samsung moved to disqualify Dr. Ahn and Mr. Cho from participating in the patent case due to a conflict of interest. Techiya and Synergy objected, arguing waiver. (Dkt. No. 144)
  • 2023-01-20 & 2023-01-27: The Court granted Samsung's motion and disqualified Dr. Ahn and Mr. Cho. (Dkt. Nos. 183, 198)
  • 2023-02-01: Magistrate Judge Roy S. Payne recommended denying Counterclaim Defendants' (Staton Techiya, Synergy IP Corporation, Dr. Seung-Ho Ahn, and Sungil Cho) motion to dismiss Samsung's counterclaims under the doctrine of forum non conveniens and for failure to state a claim. (Dkt. No. 109, 110 (sealed))
  • 2023-03-24: District Judge Rodney Gilstrap adopted the Magistrate Judge's Report and Recommendation, denying the motion to dismiss Samsung's counterclaims. (Dkt. No. 259 adopted, Dkt. No. 109 denied)
  • 2023-03-31: Techiya moved to dismiss Synergy IP Corporation as a plaintiff, arguing it had terminated Synergy's exclusive license. (Dkt. No. 365)
  • 2023-09 (Date not specified): Samsung filed a motion for sanctions due to spoliation of evidence by Techiya's agents. (Dkt. No. 650)
  • 2023-10-18: Magistrate Judge Payne recommended granting Techiya's motion to drop Synergy as a plaintiff. (Dkt. No. 700) However, Synergy remained a formal plaintiff at the time of later filings.
  • 2023-11-05: Magistrate Judge Payne issued Reports and Recommendations on multiple sealed motions for summary judgment of no infringement regarding the '400 patent and others, and on lack of entitlement to damages. (Dkt. Nos. 434, 436, 442, 443)
  • 2023-12-12: Samsung moved to dismiss Techiya's patent claims with prejudice based on newly discovered evidence arising from a Korean criminal investigation, asserting that the claims were "irreparably tainted" by the conduct of Dr. Ahn and Mr. Cho. (Dkt. No. 779) Samsung also moved for default judgment on its counterclaims against Synergy, Dr. Ahn, and Mr. Cho. (Dkt. No. 880)
  • 2023-12-27: Synergy, Dr. Ahn, and Mr. Cho moved to sever and stay the counterclaims against them. (Dkt. No. 808) The Court granted this motion. (Dkt. No. 840)
  • 2024-01-03: Magistrate Judge Payne recommended denying Samsung's motion to dismiss the patent infringement claims without prejudice, suggesting instead that a bench trial be scheduled to decide the merits of the equitable defense of unclean hands before addressing infringement, invalidity, or damages. (Dkt. No. 818)

Claim Construction (Markman) Outcomes:

  • The case reached the claim construction stage, as evidenced by a "Transcript of Markman Hearing" in the docket. While the specific outcomes for the '400 patent are not detailed in the provided snippets, the occurrence of a Markman hearing indicates this critical pre-trial phase was completed.

Discovery Milestones with Strategic Significance:

  • Discovery revealed significant misconduct by Techiya's agents. In November 2023, a Korean criminal investigation uncovered evidence, including audio recordings, demonstrating that Dr. Ahn and Mr. Cho had stolen Samsung's privileged analysis of the asserted patents both before and during the litigation. They used thumb drives and external storage devices, and Mr. Cho searched for ways to permanently delete files. This misconduct formed the basis of Samsung's unclean hands defense and its motion to dismiss.

Trial Events & Verdict:

  • 2024-03-26 to 2024-03-27: The Court held a bench trial to adjudicate Samsung's equitable defenses (including unclean hands) and non-patent counterclaims prior to a potential jury trial on Techiya's patent infringement claims. The parties agreed to this bifurcated approach.
  • 2024-05-09: The Court issued its "Findings of Fact and Conclusions of Law" (Dkt. No. 923, filed under seal), concluding that Samsung established, by clear and convincing evidence, its unclean hands defense. The Court found Techiya's asserted patents unenforceable due to this misconduct. The Court found that the level of misconduct, including stealing privileged and confidential analyses, exceeded that warranting the unclean hands doctrine in Supreme Court and Federal Circuit precedent. The Court also sent a copy of the opinion to the state bars of California and New York for potential disciplinary action against Dr. Ahn and Mr. Cho.

Final Disposition & Post-Trial Motions:

  • 2024-05-09: Following the unclean hands finding, the Court DISMISSED Techiya's patent claims asserted in the consolidated cases WITH PREJUDICE. (Dkt. No. 923)
  • 2024-05-29: The Court adopted Magistrate Judge Payne's Report and Recommendation (Dkt. No. 700) and dismissed Synergy's claims against Defendants with prejudice. (Dkt. No. 934)
  • 2024-06-21: The Court entered a Final Judgment, awarding Samsung its costs as the prevailing party. (Dkt. No. 950)
  • 2024-07-05: Samsung filed an opposed Bill of Costs. (Dkt. No. 952)
  • 2024-08-12: The Court granted Samsung's Motion for Attorneys' and Other Fees, finding the case "exceptional" under 35 U.S.C. § 285 due to the severe misconduct. Staton Techiya, LLC was ordered to compensate Samsung for its reasonable attorney and expert fees in the amount of $25,810,007. (Dkt. No. 968)
  • 2024-08-29: The Court issued a Memorandum Opinion and Order on Samsung's Opposed Motion for Entry of Bill of Costs, granting-in-part, denying-in-part, and carrying-in-part. (Dkt. No. 973)
  • 2024-11-08: The Court issued a supplemental Memorandum Opinion and Order regarding the Bill of Costs, further detailing the recoverable amounts. (Dkt. No. 991)
  • 2024-11-15: The Court denied Techiya's opposed Motion to Amend the June 21, 2024, Judgment, filed under Rule 59(e). (Dkt. No. 954 denied, Dkt. No. 992)

Parallel PTAB IPR/PGR Proceedings:

  • Samsung filed multiple Inter Partes Review (IPR) petitions challenging patents asserted by Staton Techiya in the district court litigation. These included, but were not limited to:
    • U.S. Patent 8,315,400: An IPR proceeding related to this patent (US8315400B2) occurred and led to a Federal Circuit cross-appeal by Samsung. (Appeal No. 23-2292, filed 2023-08-17). This cross-appeal was voluntarily dismissed by joint stipulation on 2025-01-29, without a merits ruling, leaving the PTAB's substantive decision intact.
    • U.S. Patent 8,111,839: Samsung challenged this patent in IPR2022-00242 and IPR2022-00243. Staton Techiya appealed the PTAB's invalidity decisions for this patent (Appeal No. 23-2306, filed 2023-08-21). The Federal Circuit affirmed the PTAB's invalidity rulings on 2025-10-09, closing the appeal without a merits ruling.
    • U.S. Patent 9,124,982: Samsung challenged this patent in IPR2022-00234.
    • Other patents: Samsung also initiated IPRs against other patents asserted in the litigation, including U.S. Patent Nos. 9,491,542 (IPR2022-00253), 9,270,244 (IPR2022-00281), 9,609,424 (IPR2022-00302), 8,254,591 (IPR2022-00324), and 10,405,082 (IPR2022-00369).
  • 2024-06-06: Staton Techiya, LLC filed a Federal Circuit appeal (Case No. 24-1917) against Samsung concerning ten patents related to audio and voice processing. This appeal was voluntarily dismissed by joint stipulation on 2024-12-20, without a merits ruling.

Plaintiff representatives

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

Counsel of Record for Plaintiff(s) Staton Techiya, LLC et al.

The following attorneys from PV Law LLP represented Staton Techiya, LLC and Synergy IP Corporation in this patent infringement case:

  • Robert Gaybrick

    • Role: Founding Partner, Counsel of Record. He was also identified as a recipient of a highly relevant email in the litigation, indicating a significant role in the case strategy.
    • Firm & Office Location: PV Law LLP, 5335 Wisconsin Avenue, N.W., Suite 440, Washington, D.C. 20015-2052.
    • Relevant Patent Litigation Experience: Robert Gaybrick has over 40 years of experience in patent litigation, dispute resolution, licensing, and patent analysis. He has advised businesses on litigation, licensing, patent procurement, and portfolio development, participating in over 200 patent licensing negotiations and transactions. He was recognized as an Intellectual Property Trailblazer by the National Law Journal in 2017 and as a Top 250 Best Performing Attorney for the PTAB by Patexia Insights in 2023.
  • Bradford A. Cangro

    • Role: Partner, Lead Patent Counsel of Record.
    • Firm & Office Location: PV Law LLP, 5335 Wisconsin Avenue, N.W., Suite 440, Washington, D.C. 20015-2052.
    • Relevant Patent Litigation Experience: Bradford Cangro is a first-chair trial lawyer representing global companies in intellectual property disputes in federal courts and before the USPTO and USITC. He possesses a strong technical background in electrical engineering and has experience across various tech sectors, including software, hardware, wireless telecommunications, medical devices, and semiconductor manufacturing. He is recognized as a leading practitioner in post-grant reviews of patents by Patexia and has been named to Lawdragon's list of 500 Leading Litigators in America.
  • Roger D. Taylor

    • Role: Partner, Counsel of Record.
    • Firm & Office Location: PV Law LLP, 5335 Wisconsin Avenue, N.W., Suite 440, Washington, D.C. 20015-2052.
    • Relevant Patent Litigation Experience: Roger Taylor specializes in intellectual property disputes for technology-focused companies. He is admitted to practice in Texas, Georgia, and D.C. federal courts, including the Federal Circuit and the Supreme Court. His technical background is in electrical engineering, and he has experience with software, hardware, wireless telecommunications, semiconductor manufacturing, mechanical designs, and automotive technology. He has been recognized in Best Lawyers® in America for patent litigation and patent law consecutively since 2008.

Defendant representatives

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

Here is the counsel of record representing the defendant(s), Samsung Electronics Co., Ltd. et al., in Staton Techiya, LLC et al. v. Samsung Electronics Co., Ltd. et al.:

In-House Counsel for Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc.:

  • Matthew Bathon

    • Role: Principal Legal Counsel
    • Firm/Office: Samsung Electronics, In-house
    • Experience Note: Coordinates Samsung's ITC and district court dockets, with a focus on Section 337 investigations before the ITC and IP disputes in district courts. Prior to joining Samsung, he was a partner at Steptoe LLP.
  • Tim Jezek

    • Role: Principal Legal Counsel
    • Firm/Office: Samsung Electronics America, In-house
    • Experience Note: Focuses on IP litigation and related policy issues, with over two decades of litigation and intellectual property counseling experience in both in-house and law firm settings.
  • Phillip Lee

    • Role: Principal Legal Counsel
    • Firm/Office: Samsung Electronics US IP Center, In-house
    • Experience Note: Veteran litigator with experience in patent litigation, prosecution, and licensing across various technologies, appearing before federal district courts, the PTAB, the ITC, and the Federal Circuit.
  • Daniel Shim (as of June 2026, he moved to Fish & Richardson, but was in-house counsel during parts of this case)

    • Role: Formerly Group Leader and Principal Legal Counsel
    • Firm/Office: Samsung Electronics (R&D centre in Seoul), In-house
    • Experience Note: Oversaw global IP litigation, advised on litigation strategy, licensing, and enterprise risk, and coordinated parallel proceedings across multiple jurisdictions. Was involved in the global dispute with Apple.

The available search results heavily feature Samsung's in-house counsel and discussions of the case's outcome, particularly regarding the bill of costs. However, they do not explicitly name the outside counsel who appeared on the docket for Samsung in this specific case. While Alexander Hyung-Joon Lee of White & Case LLP is mentioned as having defended Samsung in other multi-patent cases, and Fish & Richardson is noted to have collaborated with Samsung in other US proceedings, there is no direct evidence in the provided snippets that these specific attorneys or firms were counsel of record for Samsung in Staton Techiya, LLC et al. v. Samsung Electronics Co., Ltd. et al. (2:21-cv-00413). Without direct docket entries or opinions listing the outside counsel for Samsung in this case, identifying them precisely is not possible with the current information.In the patent infringement case Staton Techiya, LLC et al. v. Samsung Electronics Co., Ltd. et al. (2:21-cv-00413), the following counsel represented the defendant(s):

Outside Counsel:

  • Nikhil Krishnan

    • Role: Counsel of Record (likely lead counsel or part of lead team)
    • Firm/Office: Kirkland & Ellis LLP (Specific office location for this case not explicitly stated in snippets, but Kirkland & Ellis has multiple offices prominent in patent litigation, such as Washington D.C., New York, or California).
    • Experience Note: Represented Samsung in this patent infringement suit.
  • Sean McEldowney

    • Role: Counsel of Record (likely lead counsel or part of lead team)
    • Firm/Office: Kirkland & Ellis LLP (Specific office location not explicitly stated in snippets).
    • Experience Note: Represented Samsung in this patent infringement suit.
  • Melissa Smith

    • Role: Counsel of Record (likely local counsel)
    • Firm/Office: Gillam & Smith LLP, Marshall, Texas (common for Eastern District of Texas cases).
    • Experience Note: Represented Samsung in this patent infringement suit. Gillam & Smith is a well-known firm for local counsel representation in the Eastern District of Texas.

In-House Counsel (Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc.):

  • Matthew Bathon

    • Role: Principal Legal Counsel
    • Firm/Office: Samsung Electronics, In-house
    • Experience Note: Coordinates Samsung's ITC and district court dockets, with responsibilities including Section 337 investigations before the International Trade Commission (ITC) and intellectual property disputes in district courts.
  • Tim Jezek

    • Role: Principal Legal Counsel
    • Firm/Office: Samsung Electronics America, In-house
    • Experience Note: Focuses on intellectual property litigation and related policy issues, with over two decades of litigation and intellectual property counseling experience.
  • Phillip Lee

    • Role: Principal Legal Counsel
    • Firm/Office: Samsung Electronics US IP Center, In-house
    • Experience Note: A veteran litigator with extensive experience in patent litigation, patent prosecution, and licensing across a broad range of technologies. He has appeared before numerous federal district courts, the Patent Trial and Appeal Board (PTAB), the ITC, and the U.S. Court of Appeals for the Federal Circuit.
  • Daniel Shim (Was in-house counsel during parts of the case, though he has since moved to Fish & Richardson as of June 2026).

    • Role: Formerly Group Leader and Principal Legal Counsel
    • Firm/Office: Samsung Electronics (R&D centre in Seoul), In-house
    • Experience Note: Oversaw global intellectual property litigation, advised on litigation strategy, licensing, and enterprise risk, and coordinated parallel proceedings across multiple jurisdictions.

Appellate Counsel (Federal Circuit, for related appeals):

  • Arnold & Porter Kaye Scholer LLP (Firm listed for representing Samsung in a related Federal Circuit appeal, Case No. 23-2335, concerning US9609424B2).

The identification of Nikhil Krishnan, Sean McEldowney, and Melissa Smith as counsel for Samsung is based on a legal news report covering the district court's dismissal of the case.