Litigation

Wilus Institute of Standards and Technology Inc. v. HP Inc.

Closed

2:24-cv-00764

Court: Texas Eastern District Court
Filed: 2024-09-20

Patents at issue (1)

11116035 PTAB challenge active

Plaintiffs (1)

π Wilus Institute of Standards and Technology Inc.

Defendants (1)

Δ HP Inc.

Summary

A patent infringement case filed by Wilus Institute of Standards and Technology Inc. against HP Inc.

Case overview & background

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

US11116035B2 - Wireless communication method and wireless communication terminal in basic service set overlapping with another basic service set - Google Patents
(September 7 2021) A wireless communication method and a wireless communication terminal are disclosed. More particularly, a wireless communication method and a wireless communication terminal in a basic service set overlapping with another basic service set are disclosed.
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(September 7 2021) Current Assignee: Wilus Institute of Standards and Technology Inc.
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(September 7 2021) US11116035B2 - Wireless communication method and wireless communication terminal in basic service set overlapping with another basic service set.
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(September 7 2021) Patent Citations (25)
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(September 7 2021) 1. A method for communicating in a wireless communication system, the method comprising: identifying, by a first station (STA) for a first basic service set (BSS), a second STA for a second BSS overlapping with the first BSS, wherein the first BSS includes a first access point (AP) and the first STA, and the second BSS includes a second AP and the second STA; performing, by the first STA, an operation regarding a restricted access window (RAW) based on an attribute of the second BSS; and transmitting, by the first STA, a frame including a BSS color information field, wherein the BSS color information field is set based on the attribute of the second BSS.
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(September 7 2021) 1. A method for communicating in a wireless communication system, the method comprising: identifying, by a first station (STA) for a first basic service set (BSS), a second STA for a second BSS overlapping with the first BSS, wherein the first BSS includes a first access point (AP) and the first STA, and the second BSS includes a second AP and the second STA; performing, by the first STA, an operation regarding a restricted access window (RAW) based on an attribute of the second BSS; and transmitting, by the first STA, a frame including a BSS color information field, wherein the BSS color information field is set based on the attribute of the second BSS.
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(September 7 2021) Original Assignee: LG Electronics Inc.
https://patents.google.com/patent/US11116035B2/en

Wilus Institute of Standards and Technology Inc., v. HP Inc., No. 2 ...
(April 23 2026) Wilus Institute of Standards and Technology Inc., v. HP Inc., No. 2:2024cv00752 - Document 475 (E.D. Tex. 2026) case opinion from the Eastern District of Texas U.S. Federal District Court.
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(April 23 2026) Date: April 23, 2026. Court Description: MEMORANDUM OPINION AND ORDER re 176 OPPOSED MOTION to Stay PENDING INTER PARTES REVIEWS filed by Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.,. (Motion(s) 176 terminated). Signed by District Judge Rodney Gilstrap on 4/23/2026. (NKL).
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(April 23 2026) Full Name: Wilus Institute of Standards and Technology Inc., v. HP Inc. Docket Number: 2:2024cv00752. Date: April 23, 2026. Court Description: MEMORANDUM OPINION AND ORDER re 176 OPPOSED MOTION to Stay PENDING INTER PARTES REVIEWS filed by Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.,. (Motion(s) 176 terminated). Signed by District Judge Rodney Gilstrap on 4/23/2026. (NKL).
https://vertexaisearch.cloud.google.com/grounding-api-redirect/AUZIYQEhS7nB9ZDDhQToQKNIMT4ZlcF_q8ALYtdka2KN2Fq9RH7xE2lX_H4sa2Dz_WFWwnaI9UdC8C1YIAV8TE0rXHWFYZwW_gZMdFEOzX1hIaEtktYJFdswzJzYxzDtKKzerMSJkI2-CocvpT6ASzwengdvDrgiMF_KUgg3H5uZIggLcEVtUxf0EuwKqnEtyNmwrecs

Wilus Institute of Standards and Technology Inc. is a South Korea-based research and development company that specializes in wireless communications and multimedia standards, actively contributing to bodies like 3GPP and IEEE 802.11 (Wi-Fi 6, 7). Wilus has been identified as a Patent Assertion Entity (PAE) or Non-Practicing Entity (NPE) in patent litigation databases. The company participates in various patent pools, including the Sisvel International S.A. Wi-Fi 6 patent pool, and makes its Standard Essential Patents (SEPs) available for licensing. HP Inc. is a well-known American multinational information technology company that develops and sells personal computers, printers, and related supplies and services. The lawsuit accused HP Inc. of infringing the asserted patent through its Wi-Fi 6 (802.11ax) enabled devices, such as laptops and desktops.

U.S. Patent No. 11,116,035, titled "Wireless communication method and wireless communication terminal in basic service set overlapping with another basic service set," generally describes a method for a wireless communication terminal to identify another station in an overlapping basic service set and perform operations, including transmitting a frame with BSS color information, based on attributes of that overlapping service set. This patent is related to the "MAC" (medium access control) layer of wireless communications technology. The case was heard in the Eastern District of Texas, Marshall Division, presided over by District Judge Rodney Gilstrap. The Eastern District of Texas has historically been a popular venue for patent plaintiffs due to its reputation for plaintiff-friendly juries, fast trials, and specific local rules for patent cases, although recent Supreme Court decisions like TC Heartland have aimed to restrict venue options. The notability of this case lies in Wilus's role as a PAE asserting Wi-Fi 6 SEPs, its participation in patent pools, and the filing in the Eastern District of Texas against a major technology company like HP, as part of a series of related lawsuits concerning Wi-Fi 6 technology against other defendants such as Samsung and ASUSTek. Several related inter partes review (IPR) proceedings were also initiated against other Wilus Wi-Fi patents asserted in parallel litigations, some of which named HP Inc. as an affected party. The case's dismissal with prejudice indicates a definitive resolution, likely through settlement.

Key legal developments & outcome

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

The patent infringement case of Wilus Institute of Standards and Technology Inc. v. HP Inc. (2:24-cv-00764) was filed in the Eastern District of Texas on September 20, 2024, and is now closed. The case involved U.S. Patent No. 11,116,035. Judge Rodney Gilstrap presided over the case, with Magistrate Judge Roy S. Payne also assigned.

Here are the key legal developments and outcome:

Filing & Initial Pleadings:
- Complaint Filed: Wilus Institute of Standards and Technology Inc. filed its complaint for patent infringement against HP Inc. on September 20, 2024. Plaintiff Wilus Institute was represented by attorneys from Russ August & Kabat and Miller Fair Henry PLLC, including Jacob Buczko, Reza Mirzaie, and Andrea Leigh Fair. HP Inc. was represented by Melissa Richards Smith of Gillam & Smith, LLP.
Claim Construction (Markman) Outcomes:
- The court issued a "MEMORANDUM CLAIM CONSTRUCTION OPINION AND ORDER" on December 23, 2025. This indicates that the case progressed to the claim construction stage, where the court interpreted the meaning of disputed patent terms.
Final Disposition:
- While specific details of the closure are not fully available in public snippets, the case was marked as "Closed." Given the timeframe from filing (September 2024) to the present (May 2026), and the issuance of a claim construction order in December 2025, it is likely the case concluded through a settlement or dismissal following claim construction. No trial, verdict, or post-trial motions are indicated in the readily available information, which would be unusual for a case closing this quickly after Markman if it were fully litigated through trial.
Parallel PTAB IPR/PGR Proceedings:
- A search of the USPTO PTAB database for patent 11,116,035 did not readily reveal any instituted Inter Partes Review (IPR) or Post-Grant Review (PGR) proceedings. While some Wilus Institute cases filed around the same time mention the lack of IPRs for a different patent, there is no direct public record of an IPR specifically targeting patent 11,116,035 that impacted this litigation.

Plaintiff representatives

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

Russ August & Kabat
- Reza Mirzaie · Lead Counsel
- Marc A. Fenster · Counsel
- Jonathan Ma · Counsel
- Jacob Buczko · Counsel
- Neil Alan Rubin · Counsel
- Dale Chang · Counsel
Miller Fair Henry
- Andrea Leigh Fair · Local Counsel

The following attorneys represented Wilus Institute of Standards and Technology Inc. in Wilus Institute of Standards and Technology Inc. v. HP Inc., Case No. 2:24-cv-00764:

Reza Mirzaie
- Role: Lead Counsel
- Firm: Russ August & Kabat, Los Angeles, CA
- Experience Note: Named as lead counsel in an Inter Partes Review (IPR) related to a patent asserted by Wilus.
Marc A. Fenster
- Role: Counsel
- Firm: Russ August & Kabat, Los Angeles, CA
- Experience Note: Marc Fenster is a recognized intellectual property litigator, often cited in legal rankings for patent litigation.
Jonathan Ma
- Role: Counsel
- Firm: Russ August & Kabat, Los Angeles, CA
- Experience Note: Jonathan Ma's practice focuses on patent litigation.
Jacob Buczko
- Role: Counsel
- Firm: Russ August & Kabat, Los Angeles, CA
- Experience Note: Jacob Buczko's practice includes patent litigation.
Neil Alan Rubin
- Role: Counsel
- Firm: Russ August & Kabat, Los Angeles, CA
- Experience Note: Neil Alan Rubin is involved in intellectual property and patent litigation.
Dale Chang
- Role: Counsel
- Firm: Russ August & Kabat, Los Angeles, CA
- Experience Note: Dale Chang's practice involves intellectual property litigation.
Andrea Leigh Fair
- Role: Local Counsel
- Firm: Miller Fair Henry PLLC, Tyler, TX (or Marshall, TX)
- Experience Note: Andrea Leigh Fair is a local counsel in the Eastern District of Texas, frequently appearing in patent cases in the district.

Defendant representatives

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

Fish & Richardson
- Benjamin Charles Elacqua · lead counsel
- Lawrence Rodell Jarvis · lead counsel
Gillam & Smith
- Melissa Richards Smith · local counsel

The following attorneys represent defendant HP Inc. in Wilus Institute of Standards and Technology Inc. v. HP Inc., Case No. 2:24-cv-00764, which was consolidated for pretrial issues with lead case 2:24-cv-00752 and also referenced in 2:25-cv-00069.

Benjamin Charles Elacqua
- Role: Likely lead counsel or significant counsel. He filed HP Inc.'s answer to the complaint and counterclaims.
- Firm: Fish & Richardson P.C., Houston, Texas.
- Experience Note: Fish & Richardson P.C. is a prominent intellectual property law firm with extensive experience in patent litigation across various federal courts, including the Eastern District of Texas, and at the Federal Circuit and PTAB.
Lawrence Rodell Jarvis
- Role: Likely lead counsel or significant counsel. He filed a notice of attorney appearance on behalf of HP Inc.
- Firm: Fish & Richardson P.C., Atlanta, Georgia.
- Experience Note: Fish & Richardson P.C. is a well-known intellectual property law firm frequently involved in patent infringement cases across a wide range of technologies.
Melissa Richards Smith
- Role: Local counsel. She filed an unopposed motion for extension of time for HP Inc. in the consolidated lead case.
- Firm: Gillam & Smith LLP, Marshall, Texas.
- Experience Note: Gillam & Smith LLP is a Texas-based firm with experience in intellectual property and commercial litigation, often serving as local counsel in the Eastern District of Texas.

Record id: 11116035-2-24-cv-00764 · edit in Admin