IP Law Daily, PATENT—Fed. Cir.: Samsung defeats LTE handover patent challenge, (Sep 2, 2026)

By George Basharis, J.D.

LTE compliance did not necessarily require practicing Evolved Wireless’s patented handover method, while a longstanding Qualcomm license independently protected Samsung products using Qualcomm chips.

Samsung Electronics avoided infringement liability on Evolved Wireless’s long term evolution (LTE) handover patent because compliance with the LTE standard did not necessarily require practicing the patented method, the U.S. Court of Appeals for the Federal Circuit has ruled in a nonprecedential decision. That conclusion supported the jury’s noninfringement finding for devices using non-Qualcomm chips, while products incorporating Qualcomm chips remained protected by a longstanding license that survived termination of the underlying licensing agreement (Evolved Wireless, LLC v. Samsung Electronics America, Inc., No. 24-2234 (Fed. Cir. Aug. 31, 2026)).

Evolved owns U.S. Patent No. RE46,679, which addresses “handover,” the process of passing a mobile device from one base station to another while operating on an LTE network. During handover, a device contacts a target base station by transmitting a preamble. If two devices randomly select and transmit the same preamble simultaneously, the resulting collision can delay the connection and result in a dropped call.

The ’679 patent seeks to avoid that problem through a “dedicated preamble” selected for a specific mobile device during handover. Under the LTE standard, a target base station can generate information that includes a dedicated RACH preamble, which the source base station forwards to the mobile device. The device then uses that information to access the target base station.

Evolved sued Samsung over mobile devices that it contended infringed the patent. The litigation ultimately divided the accused products into two groups. Claims involving Samsung devices containing Qualcomm chips were resolved before trial based on a licensing agreement, while a jury considered infringement by devices using non-Qualcomm chips. The jury found the asserted patent claims not infringed but rejected Samsung’s challenge to their validity.

LTE compliance. Evolved responded to the noninfringement verdict by seeking a new trial, but the district court denied the motion. It found that Evolved had presented only a standards-based infringement case, and that Samsung had shown an LTE-compliant device could operate without infringing the ’679 patent. Evolved appealed, maintaining that it had established infringement by mapping the patent’s handover process to the LTE standard.

Evolved’s expert equated the standard’s “dedicated RACH preamble” with the patent’s “dedicated preamble.” He testified that the patented preamble must remain reserved for a mobile device throughout a RACH procedure and carry zero probability of collision. However, Samsung presented evidence that the LTE standard could operate differently. Its expert testified that LTE could use different timeslots to transmit preambles and avoid collisions. Therefore, two devices could use the same preamble during the handover process, and collisions remained possible even when a device complied with the LTE standard.

Evolved’s own expert conceded that the standard allowed the same preamble to be assigned to two devices during the same RACH procedure. A Samsung engineer similarly testified from his experience with Samsung LTE products that two terminals could use the same preamble. That evidence provided ample support for the jury’s noninfringement finding and the denial of a new trial.

Evolved could not avoid that result by arguing that an LTE-compliant phone need only be reasonably capable of performing contention-free handover. Because Evolved chose a standards-based infringement case and did not challenge the finding that it had done so, it had to establish that every LTE-compliant implementation infringed the asserted claims. Evidence that the standard permitted a compliant implementation that did not practice the patented method defeated that showing. Evolved also had not timely objected to the jury instruction reflecting that standard. Consequently, the Federal Circuit upheld the denial of a new trial.

Qualcomm license. Samsung’s Qualcomm-based products had another protection. LG Electronics, the original owner of the patent family, entered into a licensing agreement with Qualcomm in 1993. A 2004 amendment replaced the original license grant with covenants under which LG agreed not to assert covered patents against Qualcomm or its customers. The amendment further prohibited transferring a covered patent unless it remained subject to those covenants for the life of the patent.

The agreement terminated on December 31, 2018, and Evolved sought damages only for conduct beginning the next day. Evolved maintained that a provision in the original agreement terminating all licenses when the agreement ended meant Qualcomm’s rights expired as well.

The 2004 amendment foreclosed that interpretation. Its survival provision stated that certain sections, including the Qualcomm covenants, remained effective upon “any” expiration or termination of the amendment. Nothing limited that language to circumstances in which the amendment ended while the original agreement remained effective. The parties could have imposed such a limitation but did not do so. Because the amendment conflicted with the original agreement’s provision terminating all licenses, the later amendment controlled and preserved Qualcomm’s rights after the 2018 termination.

Evolved alternatively argued that LG’s 2014 sale of the patents to TQ Lambda ended Qualcomm’s protection. A 2010 amendment required LG to notify an assignee about the licensing agreement and obtain written acknowledgment that the transferred patents remained subject to LG’s covenant. LG did not follow those steps.

That failure did not end Qualcomm’s protection. The 2010 amendment specified no consequence for noncompliance and did not expressly link its transfer requirements to the Qualcomm covenants created six years earlier. The Federal Circuit declined to read such a consequence into the agreement, concluding that the 2014 sale did not disturb Qualcomm’s rights. Samsung products using Qualcomm chips remained protected.

Written description. Samsung, meanwhile, sought judgment as a matter of law that the ’679 patent was invalid for lack of adequate written description. The district court denied the motion, prompting Samsung’s cross-appeal. Samsung argued that the patent lacked adequate support for the “dedicated preamble” and “index of the dedicated preamble” limitations. Because Samsung bore the burden of establishing invalidity by clear and convincing evidence, it had to show that no reasonable jury could have rejected its position.

Evolved’s expert testified that the parent patent’s disclosure of “information of the signature and the preamble” supplied written description support for both limitations. Samsung characterized testimony from another Evolved expert as an admission that support was lacking, but the testimony, read in context, did not compel that conclusion. The jury remained entitled to weigh the competing evidence.

Evolved’s expert also could rely on prior-art disclosures to explain the “index” limitation. Those disclosures showed that a skilled artisan would have understood that a large value, such as a preamble, could be represented by an index. Substantial evidence supported the jury’s written description finding, and the Federal Circuit upheld the denial of Samsung’s invalidity motion.

The Case is No. 24-2234.

Judge: Chen, R.

Attorneys: Richard Alan Kamprath (Mckool Smith, P.C.) for Evolved Wireless, LLC. Sean S. Pak (Quinn Emanuel Urquhart & Sullivan, LLP) for Samsung Electronics America, Inc.

Companies: Evolved Wireless, LLC; Samsung Electronics America, Inc.

Cases: Patent FedCirNews TechnologyInternet