In early May 2024 after a bench trial, Eastern District of Texas Chief Judge Rodney Gilstrap ruled that the affirmative patent claims of Staton Techiya, LLC against Samsung should be dismissed with prejudice because those patents are unenforceable due to unclean hands. Per the court, “The clear and convincing weight of the evidence shows that the patent claims underlying this litigation are infected by the theft of Samsung’s sensitive confidential and attorney-client privileged information”, a “theft” enabled by the plaintiff’s engagement with its “litigation-agent” (and sometime coplaintiff) Synergy IP Corporation. In light of this ruling, Samsung has filed a motion for entry of judgment, facilitating appeal, and a motion to set a schedule for the court to consider a motion for fees and costs, which Samsung estimates to be around $26M.

Staton Techiya, LLC has filed a third complaint against Samsung (2:23-cv-00319), again in the Eastern District of Texas and again targeting (here, with four patents issuing in 2023) the support of the Bixby platform in a wide array of devices, including smart appliances, smart watches, smartphones, tablets, TVs, and wireless earbuds. This time, Staton Techiya proceeds alone, following an apparent termination of its arrangement with coplaintiff (and exclusive licensee) in the November 2021 and February 2022 cases against Samsung, Synergy IP Corporation, and Synergy IP’s employees attempts to extricate themselves from that ongoing litigation before District Judge Rodney Gilstrap.

Late last month, USPTO Director Kathi Vidal issued an interim guidance on the NHK-Fintiv rule, limiting the Patent Trial and Appeal Board’s (PTAB’s) ability to discretionarily deny institution in America Invents Act (AIA) reviews based on the status of parallel litigation. The PTAB has now issued its first batch of institution decisions applying that guidance, in each case declining to discretionarily deny institution based on those new restrictions—including one limitation meant to address concerns over the most controversial of the NHK-Fintiv factors, as detailed in RPX’s new Q2 in Review.

Staton Techiya, LLC and Synergy IP Corporation have filed a second Eastern District of Texas case against Samsung (2:22-cv-00053). Four more earphone/earpiece patents join ten already in suit after the plaintiff pair’s November 2021 complaint, to which Samsung has responded with 11 petitions for inter partes review (IPR), an answer, and multiple counterclaims, not only of noninfringement and invalidity but also concerning trade secret misappropriation, breach of fiduciary duty, and civil conspiracy. Those counterclaims name as additional defendants Seung-Ho Ahn and Sungil Cho, who Samsung pleads “obtained access to the confidential information at issue, at least in part, in connection with their representation of and work with Samsung’s United States entity that has facilities” within the Eastern District of Texas.