Context: Declaratory judgment (DJ) actions against patent holders are a means by which potential defendants can pre-empt infringement actions and increase their chances of litigating in their preferred district, which quite often is the Northern District of California, where patentees find it harder to succeed than in the Eastern or Western Districts of Texas.
What’s new: Samsung yesterday filed a complaint in the Northern District of California against Finnish company Oura Health Oy (Wikipedia page) over five patents, seeking declaratory judgment of non-infringement to the extent that any claim(s) of those patents should be valid. Oura has sued other smart ring rivals and has made insinuations to that effect after Samsung announced its Galaxy Ring, which is going to launch in the U.S. market “in or around August of this year” according to the complaint. Given that Samsung doesn’t raise any invalidity contentions in the DJ complaint, it will likely also file, or may already have filed, petitions for inter partes review with the Patent Trial and Appeal Board (PTAB) of the United States Patent & Trademark Office (USPTO).
Direct impact: Oura now faces the choice between bringing compulsory counterclaims for infringement or waiving its enforcement rights against Samsung’s Galaxy Ring with respect to the five DJ patents. Oura may also opt to assert other patents, but will have to purchase a Galaxy Ring in the first place so as to develop any infringement reads.
Wider ramifications: Depending on how this litigation evolves, including with respect to forum selection, it may serve as a warning to other patent holders that silence is sometimes golden. Saber-rattling with patents provokes DJ complaints.
In recent days, media reports on the Galaxy Ring’s features and likely launch date surfaced on different websites, such as Tom’s Guide.
Here’s Samsung’s DJ complaint, filed by no lesser firm than O’Melveny & Myers:
These are the five patents Samsung elected to challenge:
- U.S. Patent No. 10,842,429 (title: “method and system for assessing a readiness score of a user”)
- U.S. Patent No. 11,868,178 (title: “wearable computing device”)
- U.S. Patent No. 11,868,179 (title: “wearable computing device”)
- U.S. Patent No. 10,893,833 (title: “wearable electronic device and method for manufacturing thereof”)
- U.S. Patent No. 11,599,147 (title: “wearable computing device”)
In order to meet the threshold requirement for a DJ action that an actual case or controversy exists between the parties, Samsung points to “Oura’s pattern of indiscriminate assertion of patent infringement against any and all competitors in the smart ring market, and its statements confirming its intentions to assert its patents against all competitors in the market.” According to the complaint, “[e]ach and every time a major competitor has developed and/or released a product that competes in the smart ring market, Oura has filed a patent infringement action against that competitor.” More specifically, the complaint lists patent infringement lawsuits against Ultrahuman, Circular, and RingConn.
Just in March, Oura filed a complaint with the United States International Trade Commission (USITC or ITC) against those three companies (as well as Guangdong Jiu Zhi Technology, which is an affiliate of RingConn LLC. The ITC is investigating that complaint now (inv. no. 337-TA-1398).
When Samsung publicly announced the Galaxy Ring at its Galaxy Unpacked event in San Jose, California (in fact, in the district in which Samsung brought its DJ action) on January 17, 2024, TechCrunch quoted Oura CEO Tom Hale with a thinly-veiled threat of patent assertions: “Oura has the strongest IP portfolio — in both hardware and software — for the smart ring form factor, with 100 granted patents, 270 pending patent applications and 130+ registered trademarks.” (January 17, 2024 TechCrunch article)
The following week, CNBC interviewed Oura’s CEO about Samsung’s entry into the smart-ring market (January 24, 2024 YouTube video by CNBC). Mr. Hale then stressed their huge investment in smart-ring technology, touted Oura’s IP portfolio, and also said:
“We’ll see whether or not it [i.e., the Galaxy Ring] infringes on [Oura’s technology]. And frankly, we’ll take the action that’s appropriate.”
The CNBC host then even raised (twice) the public-policy question of whether anyone else can ever make a smart ring now without infringing on any of Oura’s patents. CNBC even voiced concern over whether such a patent thicket (without using that term, they pointed to the huge number of patents granted on the small Oura Ring) is good for competition.
Mr. Hale then also referred to Masimo’s ITC complaint against Apple, a case that ip fray has been skeptical of (March 12, 2024 ip fray article).
Oura believes that it can sue other smart-ring makers into oblivion because of everyone facing similar constraints and other challenges:
“Anything is possible, but there are certainly things like the laws of physics, or the approach that you might take to pack a small number of sensors into a very small space, or the algorithms that you use to create biosignals and turn them into meaningful data.”
The DJ complaint points to other statements by Oura.
Besides declaratory relief, Samsung is also seeking an injunction barring Oura (and anyone working for it) “from directly or indirectly asserting infringement or instituting any action for infringement of the Patents-in-Suit against Samsung or any of its customers or suppliers.” This way, Samsung wants to pre-empt potential customer suits (enforcement actions against resellers), but also an ITC complaint over those patents.
It will be interesting to see Oura’s response, in the U.S. as well as other jurisdictions. It would not come as a surprise if Oura sued Samsung in the Unified Patent Court (UPC), for instance.