5G IP v. Samsung

The following article was posted from IAM, https://www.iam-media.com/rankings/patent-1000:

Samsung Electronics has taken a license and settled US litigation over 5G standard essential patents in one of the US’s first lawsuits relating to the newest iteration of cellular technology.

5G IP Holdings, an NPE linked to IP Valuation Partners, acquired a batch of 16 rights from FG Innovation – a research lab with links to Foxconn and Sharp – in May 2021. Three months later, it asserted three of the assets against Samsung and two US affiliates, alleging infringement in the Korean company’s 5G smartphones and tablets. Samsung denied the claims and argued the patents were invalid.

But, on 16 September, 5G IP moved to dismiss the suit with prejudice, noting the parties had entered a settlement and licence agreement.

“Samsung’s licence underscores the significance of the 5G IP portfolio,” says Jeffrey Saltman, partner at Fisch Sigler (which represented the NPE) in Washington DC, via email. “We’re looking forward to the next steps.”

The settlement became public in court filings about five weeks after the US Court for the Eastern District of Texas held a Markman hearing which generally favoured the NPE. Fisch Sigler attorneys Andrew Ramos, Ken Fung and Alan Fisch argued for 5G IP at the 10 August hearing.

It’s common to see parties settle disputes shortly after claim construction and safe to assume that, when a court agrees with a patentee’s interpretation of claims, the plaintiff will secure a favourable settlement. Court documents contain no deal terms.

As part of the agreement, Samsung has dismissed with prejudice its counterclaims against 5G IP. It had alleged a breach-of-FRAND claim, arguing that if the court found the assets were standard essential  5G IP had violated its obligations by failing to offer a licence in good faith before suing.

Samsung also sought a declaratory judgment that the NPE needed to comply with FRAND.

In response, 5G IP admitted it has a FRAND obligation and stated it was willing to negotiate in good faith. It denied failing to make a FRAND offer, claiming it did so in late August 2021 and again three months later, but Samsung did not respond.

Part of Samsung’s counterattack involved filing three IPR petitions against the assets that 5G IP asserted in court. The parties filed their settlement and licence agreement in those proceedings on 16 September, and the PTAB dismissed the cases on Monday (19 September), noting it had not yet instituted them.

Thus far, the litigation against Samsung is 5G IP’s first assertion of the patents it acquired from FG Innovation. The litigation is an example of a developing trend in which NPEs are asserting 5G patents purchase from small Asian R&D companies.