Case Background
Empire Technology Development LLC filed a patent infringement lawsuit against Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. in the Eastern District of Texas, Marshall Division, on September 18, 2023. Empire held exclusive licensing rights to two patents through a Master License Agreement with the Board of Regents of The University of Texas System, the original patent owner. The patents originated from research conducted at the University of Texas.
Cause
Empire accused Samsung of infringing U.S. Patent No. 8,798,120 (the "'120 Patent"), titled "Methods and Communication Systems Having Adaptive Mode Selection," and U.S. Patent No. 8,565,331 (the "'331 Patent"), titled "Inserting and Decoding Replicated Data Symbols in Wireless Communications." Empire alleged that Samsung's Galaxy S20, S21, S22, and S23 smartphone series infringed these patents through their use of Qualcomm's Smart Transmit technology and 5G-compatible modems, including the Snapdragon X55 modem.
Injury
Empire claimed that Samsung sold substantial numbers of infringing products without permission or compensation, depriving Empire of royalties it was entitled to as the exclusive licensee responsible for enforcing the patents.
Damages Sought
Empire sought monetary damages adequate to compensate for Samsung's infringement, with a floor of a reasonable royalty for Samsung's use of the patented inventions. Empire also asked the Court to find that Samsung's infringement was willful, which would allow for enhanced damages up to treble the amount awarded, along with attorneys' fees, costs, and pre- and post-judgment interest.
Key Arguments and Proceedings
Legal Representation
Plaintiff: Empire Technology Development LLC
· Counsel for Plaintiff: Elizabeth L. DeRieux | Christopher J. Gaspar | Nathaniel T. Browand | Alana Mattei | Andrew Lichtenberg | Hannah Juge | Marina Sosi Markarian | Nicholas Michael Fallah | Rachel Wolf
· Experts for Plaintiff: Dawn Rice Hall | Robert Akl
Defendants: Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
· Counsel for Defendants: Ryan K. Yagura | Nicholas J. Whilt | Marc J. Pensabene | Melissa R. Smith | Andrew Thompson (Tom) Gorham | Brian M Cook | Cameron William Westin | Darin W Snyder | Jordan P Raphael | Laura B. Gore | Patric Reinbold | Sorin Zaharia | Tim Byron | Timothy S Durst
· Expert for Defendants: Ambreen Salters
Key Arguments or Remarks by Counsel
Claims
Empire built its infringement case around two counts. For the '120 Patent, Empire pointed to claim 25, which covered a mobile station with two antennas, circuitry for processing signals for transmission, and a controller that selected between MIMO and SIMO transmission modes based on power consumption. Empire argued that Samsung's Galaxy S20 through S23 phones, equipped with Qualcomm's Smart Transmit technology, met every limitation of this claim. Empire cited Samsung's own FCC submissions describing how Smart Transmit managed transmit power to comply with radio frequency exposure limits while maintaining call connectivity.
Empire also alleged that Samsung's infringement of the '120 Patent was willful, pointing to a Samsung patent, U.S. Patent No. 9,344,175, which cited the '120 Patent as a reference during prosecution in 2016. Empire further claimed it had contacted Samsung about a patent portfolio including the '120 Patent before filing suit, but Samsung had not obtained a license.
For the '331 Patent, Empire focused on claim 1, a method for decoding signals using channel estimation techniques. Empire alleged that Samsung's 5G-compatible phones, using Qualcomm's Snapdragon X55 modem, performed each step of the claimed method, including receiving pilot symbols, estimating a channel matrix, decoding replicated data, and updating the channel estimate for subsequent decoding.
Defense
Samsung denied infringing either patent and raised fourteen affirmative defenses in its answer, filed January 10, 2024. Samsung's defenses included non-infringement, invalidity under 35 U.S.C. §§ 101, 102, 103, and 112, failure to mark products as required by law, prosecution history estoppel, ensnarement, and equitable doctrines such as waiver and unclean hands. Samsung also argued that Empire lacked standing to sue, contending that Empire did not own the patents or hold all substantial rights to them.
Samsung filed four counterclaims seeking declaratory judgments that it did not infringe either patent and that both patents were invalid. Samsung asked the Court to dismiss Empire's complaint with prejudice, declare the patents invalid or unenforceable, and find the case exceptional under 35 U.S.C. § 285, which would entitle Samsung to recover its attorneys' fees.
Jury Verdict
A jury trial began on June 23, 2025, in the Eastern District of Texas before District Judge Rodney Gilstrap. On June 27, 2025, the jury returned its unanimous verdict.
The jury found that Samsung infringed claim 25 of the '120 Patent. However, the jury found that Samsung did not infringe claim 29 of the '120 Patent and did not infringe claim 1 of the '331 Patent. The jury also determined that Samsung's infringement was not willful.
The jury awarded Empire a lump sum reasonable royalty of $12,500,000 for Samsung's infringement of claim 25 of the '120 Patent.
The Court entered final judgment on July 15, 2025, in accordance with the jury's verdict. Judge Gilstrap ordered that Samsung had infringed claim 25 of the '120 Patent but had not infringed claim 29 of the '120 Patent or claim 1 of the '331 Patent, and that the infringement was not willful. The Court awarded Empire the full $12,500,000 in damages.
The Court also awarded Empire pre-judgment interest on the damages, calculated at the five-year U.S. Treasury Bill rate and compounded quarterly, running from the date of infringement through the date of the judgment. The Court based this award on Supreme Court precedent holding that pre-judgment interest should ordinarily be awarded absent justification for withholding it. Additionally, the Court awarded Empire post-judgment interest at the statutory rate under 28 U.S.C. § 1961, running from the date of judgment until paid.
The Court further ruled that Empire, as the prevailing party, was entitled to recover its costs from Samsung under Federal Rule of Civil Procedure 54(d), Local Rule CV-54, and 28 U.S.C. § 1920, and directed Empire to file a proposed Bill of Costs. The Court denied all other requests for relief that either party had raised but that the judgment did not specifically address.
Court documents are available upon request at [email protected]
