Samsung Seeks Declaratory Judgment Against IXI Mobile After Years of Litigation

Samsung has asked the Northern District of California for declaratory judgment of non-infringement against IXI Mobile’s patent. IXI has been litigating against Samsung since 2014. Samsung also requested a judgment barring IXI Mobile from suing Samsung. The patent in suit, U.S. Patent No. 7,295,532 (the “’532 Patent”), is titled “System, Device and Computer Readable Medium for Providing Networking Services on a Mobile Device.”

In 2014, IXI sued Samsung for patent infringement over its “Wireless Hotspot” functionality. The case is still pending. IXI Mobile sued other mobile phone makers, such as Apple and Blackberry. In 2015, Samsung and Apple filed petitions for inter partes review with the Patent Trial and Appeal Board (PTAB) challenging the asserted claims of the ’532 patent in the respective suits against the companies. As a result of the review, PTAB “issued an IPR certificate cancelling all challenged claims of the’532 Patent except for claim 10,” IXI did not appeal PTAB’s final decision about its patent. Later, IXI disclaimed claim 10.

In 2018, Apple filed for ex parte reexamination of patent claims 2, 3, 6, 10, and 11. After review, the PTAB rejected all challenged claims. Subsequently, IXI “canceled or amended the rejected claims of the ’532 patent, and proposed new claims.” Afterward, in March 2019, IXI filed a motion in the 2014 lawsuits to amend its preliminary infringement claims after the ex parte reexamination of the patent. Samsung argued that this motion should be barred, and the court determined that IXI did not meet its burden to amend. PTAB rejected the last remaining claim, and the court granted Samsung and IXI’s joint stipulation to dismiss. In October 2019, Samsung filed a complaint “for declaratory judgment that res judicata bars IXI from asserting claims that issued from an ex parte reexamination of the ’033 Patent, or in the alternative that Samsung does not infringe the ’033 patent and that the ’033 patent is invalid.” In February 2020, IXI filed counterclaims asserting that Samsung infringes the reexamined claims of the patent. That case is still pending. This month, Apple and Samsung asked if “IXI intended to assert the Reexam Claims, and if so, whether IXI would agree to an amendment to add those claims to existing litigation between the parties.” IXI stated that it was unwilling to discuss the matter. The ex parte reexamination of the ’532 patent concluded, resulting in one amended claim (claim [11]) and 15 new claims (claims [32 through 46]).” Samsung states that the is a discrepancy between IXI and Samsung about the enforceability of the ’532 Patent against Samsung. 

Samsung, in its request from a declaratory judgment, stated that it “has not and does not infringe any valid and/or enforceable claim of the ’532 Patent.” For example, Samsung states that its products do not satisfy claim 32e(3) and 32h. Specifically, Samsung’s products allegedly do not include, “an interface software component” as stated in claim 32e(3). These accused products also do not similarly include a “router software component” as stated in claim 32h because “Samsung’s accused devices do not translate a first IP address in a plurality of public IP addresses to a second IP address in a plurality of private IP addresses.”

Samsung has also moved to invalidate the ’532 patent, claiming that it is invalid because its claims are “anticipated and/or rendered obvious by prior art.” For example, Samsung states that claim 32 is invalid because it is obvious because of previous patent’s claim and prior published work while also noting that claim 32 is identical to the previous claim 1 of the ’532 patent.

Samsung is represented by Kirkland & Ellis.