FOLLOW US

Samsung Electronics Co. Ltd. today argued that a recent PTAB memo issued by the U.S. Patent and Trademark Office’s acting director cannot overturn its patent win in a high-profile patent dispute involving Headwater Research LLC.

The dispute centers on a $279 million jury verdict in the Eastern District of Texas, where Samsung was found to have infringed two Headwater patents. Samsung and co-petitioner Google have requested that acting USPTO Director Coke Morgan Stewart reject Headwater’s petition for director review of a July Patent Trial and Appeal Board decision. The PTAB previously found that several claims of the Headwater wireless communications patent were invalid.

Headwater argued that the PTAB relied on expert testimony to supply elements of the patent not disclosed in earlier inventions, citing the new July memo prohibiting reliance on “general knowledge” to fill in patent claims. Samsung and Google countered that the memo does not apply to their petition, which was filed in January 2024, prior to the memo’s effective date of September 1.

“Even if the argument were considered, it fails because it is based on a false premise,” Samsung and Google stated. “The missing patent element is expressly disclosed in prior art, and the PTAB did not rely on expert testimony. Headwater’s request is baseless and should be rejected.”

The companies emphasized that undoing a final PTAB decision now would be highly prejudicial, noting that Headwater waived arguments regarding the patent’s duration and the prior jury trial by not raising them earlier.

The patent in question, U.S. Patent No. 8,406,733, was reviewed by Administrative Patent Judges Hyun J. Jung, Garth D. Baer, and Russell E. Cass. Counsel representing the parties include Fish & Richardson PC for Samsung, Wolf Greenfield & Sacks PC for Google, and Russ August & Kabat for Headwater Research.

This development reinforces Samsung’s position in protecting its patent win while challenging the applicability of the new PTAB memo in ongoing patent disputes.