Context: Smart-ring pioneer Oura Health is known for aggressive patent enforcement. Samsung brought a pre-emptive defensive lawsuit (a declaratory-judgment (DJ) complaint) in the Northern District of California in May (May 31, 2024 ip fray article). Two weeks later, Oura asked the court to throw out Samsung’s lawsuit for being premature (June 14, 2024 ip fray article), trying to downplay the significance of certain public statements regarding its potential enforcement action against the Galaxy Ring, and without ruling out infringement lawsuits.
What’s new: Samsung argues, in its opposition to Oura’s motion to dismiss, that Oura applies a stricter legal standard than the applicable one. The filing states that Samsung “began mass production of the [Galaxy Ring] over three weeks ago on June 6, 2024,” and announces that “the Galaxy Ring [will be] released and shipped to customers in just over a month from now.”
Direct impact: While Samsung is right that Oura’s proposed legal standard for pre-emptive DJ actions is far more restrictive than current case law, the pattern in this case is at least at the outer boundary of the range of patterns justifying a DC complaint. Even if Oura’s motion to dismiss succeeded (which is possible), it would have to wait some time before it could bring a case in a patentee-friendlier district (N.D. Cal. is the most difficult one for patent holders) and would then (post-dismissal) still face a higher risk of the case being transferred out than without Samsung’s DJ action. Oura may need a different jurisdictional strategy against Samsung now, with a focus on foreign jurisdictions (potentially Europe’s Unified Patent Court) and the U.S. International Trade Commission (USITC or ITC), which can ban imports of the product into the U.S. market.
Wider ramifications: As a result of this dispute, other patent holders will presumably be more careful about their public statements concerning enforcement against forthcoming products as well as about claims that suggest their patents or patent thickets are commercially essential in the sense of there being no way to make a non-infringing product in a given category. Also, if such statements were enough, owners of patents declared essential to standards such as 5G might be exposed to pre-emptive DJ actions in a wide range of circumstances, even more or less out of the blue.
1. Statements on production and U.S. launch
Samsung’s JD complaint already stated that the product would be launched in or around August. The filing met yesterday (Friday) is now more specific:
Counting from the date of the filing (June 28, 2024), “just over a month from now” most likely means early August. Theoretically it could also mean one of the last two days of July, but that appears unlikely as they could then have said “next month.”
This is the passage on mass production having started on June 6:
2. Legal standard for DJ
Samsung points to the fact that the Supreme Court rejected a rigid test in its 2007 MedImmune decision, which is correct at an abstract level. The issue in MedImmune, however, was very different: someone wanted to take DJ action while there still was a valid license agreement in force (and no intent to breach it).
But Samsung also cites to various Federal Circuit decisions, particularly from the second half of the 2010s, each of which involves one circumstance that exists here in a similar way. However, the combination of circumstances here appears novel:
- arguments against DJ jurisdiction:
- no direct communication
- no foreign litigation over related patents (and even that was, in at least one case, not deemed enough to give rise to DJ jurisdiction)
- no product on the market yet
- just an announcement to take a look at the product when launched and to decide then whether to enforce
- arguments for DJ jurisdiction:
- Oura sued all major competitors. As ip fray already suspected in the previous article on this dispute, Oura just states a large number of smart-ring makers it hasn’t sued (almost 50), but it has indeed sued all the major ones. In fact, Oura and Ultrahuman combined have 99% of the U.S. market according to a study cited by Samsung.
- Oura boasts with the alleged essentiality of its patents, publicly suggesting that due to the laws of physics and practical constraints, it’s not possible to make a smart ring without infringing its patents.
- Oura’s CEO was interviewed about the Galaxy Ring and talked about patent enforcement. He could have declined to talk about that topic as the product is not available yet.
By the time the court actually rules on the motion, the Galaxy Ring will have launched in the United States. And even if the motion to dismiss succeeded, Samsung would at least want the opportunity to amend its complaint. Time is on Samsung’s side.
With a view to Oura potentially bringing an ITC complaint (request for U.S. import ban), Samsung’s prayer for relief B, which seeks an antisuit injunction against Oura, is interesting. It’s possible that Samsung would seek a temporary restraining order (TRO) and preliminary injunction (PI) as soon as Oura asserts any of the five patents in the DJ suit in the ITC. But the hurdle for an antisuit injunction against pursuing an ITC complaint is very high.