Context: Last month, a jury in the Eastern District of Texas awarded non-practicing entity G+ Communications $142 million in damages (over two patents that originally belonged to ZTE) against Samsung (April 18, 2024 ip fray article), slightly more than twice as much as the original $67.5 million award that Judge Rodney Gilstrap considered unreliable.
What’s new: The more valuable one of the two patents-in-suit accounted for $81M (57%) of the $142M total award, which the jury was prudently asked to break down on a per-patent basis. And that patent has now been declared invalid by the Patent Trial and Appeal Board (PTAB) of the United States Patent & Trademark Office. That decision is appealable to the Federal Circuit, as is everything else in the dispute, but as of today, the damages award would be down to $61M.
Direct impact: Absent a settlement, this case will be resolved by the Federal Circuit. Presently, the actual damages award is less than the outcome of the first trial, but without the retrial that resulted in a higher damages figure, the plaintiff would be worse off in the current situation, too. The PTAB decision may pave the way for a settlement now.
Wider ramifications: The damages-related roller coaster is not the only aspect that makes this case more interesting than the average patent litigation. A pretrial ruling by Judge Gilstrap concerning the possibility of an unwilling licensee losing the entitlement to a FRAND royalty rate could become the single most important question on appeal, with the potential to attract numerous amicus briefs from both sides of the FRAND argument.
Here’s the April 29, 2024 PTAB decision holding all challenged claims unpatentable:
Samsung did not bring a petition for inter partes review concerning the other patent-in-suit.
Unless Samsung absolutely wants the Federal Circuit to rule on Judge Gilstrap’s FRAND position and/or believes there is a pretty high likelihood of winning the entire case on appeal, a settlement would now be the logical next step.
Otherwise there’ll be two parallel Federal Circuit appeals (one from the district court and one from the PTAB) that will be decided together to resolve the case.