IP Law Daily, PATENT—E.D. Tex.: Samsung, long a 5G industry leader, is hit with $67.5 million verdict for its use of the technology, (Jan 30, 2024)

By Matthew Hersh, J.D.

A Texas jury finds that the telecommunications giant infringed two patents.

Samsung is liable for nearly $70 million for infringing two patents in connection with its 5G-capable line of mobile telephones, a jury in eastern Texas as held. The jury, in reaching its verdict after a week-long trial, rejected Samsung’s claims that the two patents were invalid and that the patent holder had failed to negotiate over a license on fair and reasonable terms. The seven-figure damages award against the Korean telecommunications giant constitutes a running royalty only for past sales and does not cover revenues that Samsung might earn in the future from use of the infringing technology (G+ Communications, LLC v. Samsung Electronics Co. Ltd. , January 26, 2024, Gilstrap, J.).

The lawsuit arises out of Samsung’s evolution to 5G technology with the release of the Samsung Galaxy S10 5G in 2019—the first mobile phone on the market with 5G technology. The new commercial product was not welcomed by everyone, however. In March 2022, Samsung was sued for patent infringement by G+ Communications, a special purpose vehicle created to hold patents originally developed by the Chinese telecommunications giant ZTE. The lawsuit asserted that Samsung infringed five patents—U.S. Patents No. 8,761,776 (the ’776 patent), 10,448,430 (the ’430 patent), 9,184,881 (the ’881 patent), 10,736,130 (the ’130 patent), and 10,594,443 (the ’443 patent)—that were essential to practicing communications using mobile broadband standards established by the European Telecommunications Standards Institute and the 3rd Generation Partnership Project.

The lawsuit went through several procedural rounds before reaching trial, most of which focused on the parties’ obligations under those broadband standards. Both ETSI and 3GPP require that the holders of patents essential to their standards be licensed out on terms that are fair, reasonable, and non-discriminatory (otherwise known as FRAND). Samsung counterclaimed on grounds that G+ failed to comply with its obligation to negotiate with Samsung under fair and reasonable terms. G+, in reply to Samsung’s counterclaims, contended that it was Samsung that failed to negotiate under fair and reasonable terms. In September 2022 the court denied G+’s motion to dismiss Samsung’s FRAND claims. Likewise, in April 2023 the court denied Samsung’s motion to deny G+’s FRAND claims. In January of this year, the court ordered that Samsung, in connection with its FRAND claims, could not impute to G+ any conduct of its predecessor ZTE (IP Law Daily covered that opinion here).

The case went to trial (on claims relating to only three of the patents—the ’430 and ’881 patents eventually dropped out of the case) this month. The jury found after a week-long trial that neither party breached its FRAND obligations and that none of the claims at issue were invalid as anticipated, obvious, or lacking adequate written description. The jury then found that Samsung infringed the ’776 patent and the ’130 patent, but not the ’443 patent, awarding G+ a total of $67.5 million for the infringement. Notably, the jury found that the award was only in the form of a running royalties for past sales only, as opposed to a lump sum covering both past as well as future royalties.

The Case is No. 2:22-cv-00078-JRG.

Attorneys: Alexis Ritzer (Carter Arnett PLLC) for G+ Communications, LLC. Ruffin B. Cordell (Fish & Richardson PC) for Samsung Electronics Co Ltd. and Samsung Electronics America, Inc.

Companies: G+ Communications, LLC; Samsung Electronics Co Ltd.; Samsung Electronics America, Inc.

Cases: Patent TexasNews GCNNews