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IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

 MARSHALL DIVISION

ASUS Technology Licensing Inc. and 

Celerity IP, LLC,

Plaintiffs, 

v. 

Samsung Electronics Co., Ltd., Samsung 

Electronics America, Inc., and Samsung 

Research America,

Defendants. 

Civil Action No.: 2:23-cv-409 

Jury Trial Demanded

Samsung Electronics Co., Ltd., Samsung 

Electronics America, Inc., and Samsung 

Research America,

Counterclaim-Plaintiffs, 

v. 

ASUS Technology Licensing Inc., Celerity IP, 

LLC, and ASUSTeK Computer, Inc., 

Counterclaim-Defendants. 

DEFENDANTS’ ANSWER TO AMENDED COMPLAINT, 

COUNTERCLAIMS, AND THIRD-PARTY COMPLAINT

Defendants Samsung Electronics Co., Ltd. (“SEC”), Samsung Electronics America, Inc.

(“SEA”), and Samsung Research America (“SRA”) (collectively “Defendants” or “Samsung”) 

hereby answer the Amended Complaint filed by Plaintiffs ASUS Technology Licensing Inc. and 

Celerity IP, LLC (“Plaintiffs”). Except as expressly set forth and admitted below, Defendants 

deny each and every allegation in the Complaint. 

NATURE OF THE ACTION

1. Defendants admit that the Amended Complaint purports to seek a judgment of and 

relief for patent infringement. Defendants admit that Exhibits A-E appears to be copies of U.S. 

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Patent No. 10,187,878 (“the ’878 Patent”), 11,291,052 (“the ’052 Patent”), 10,104,658 (“the ’658 

Patent”), 10,785,759 (“the ’759 Patent”), and 10,986,585 (“the ’585 Patent) (collectively the 

“Patents-in-Suit”). Except as so admitted, denied. 

THE PARTIES

2. Defendants lack knowledge or information sufficient to form a belief as to the truth 

of the allegations in this paragraph, and therefore deny them. 

3. Defendants lack knowledge or information sufficient to form a belief as to the truth 

of the allegations in this paragraph, and therefore deny them. 

4. Admitted: SEC is a corporation organized and existing under the laws of the 

Republic of Korea, with its principal place of business located at 129 Samsung-ro, Maetan-3dong, 

Yeongtong-gu, Suwon-si, Gyeonggi-do, 16677, Korea. 

5. Defendants admit that SEA is a corporation organized and existing under the laws 

of New York, with its principal place of business located at 85 Challenger Road, Ridgefield Park, 

New Jersey 07660. Defendants admit that SEA is registered to do business in Texas under File 

Number 0011028006 and that June 10, 1996 is the effective registration date. Defendants admit 

that SEA’s registered agent is CT Corporation System, located at 1999 Bryan St., Ste. 900, Dallas, 

Texas 75201. Defendants admit that SEA is a subsidiary of SEC. Except as so admitted, denied. 

6. Defendants admit that SRA is a corporation organized and existing under the laws 

of California. Defendants admit that SRA is registered to do business in Texas under File Number 

0801541089 and that January 26, 2012 is the effective registration date. Defendants admit that 

SRA’s registered agent is CT Corporation System, located at 1999 Bryan St., Ste. 900, Dallas, 

Texas 75201. Defendants admit that SRA is a subsidiary of SEC. Except as so admitted, denied. 

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JURISDICTION AND VENUE

7. Defendants admit that the Complaint purports to state a claim of patent 

infringement, and Defendants do not contest, for purposes of this case only, subject matter 

jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a). Defendants deny that there is any legal or 

factual bases for Plaintiffs’ claims. To the extent Plaintiffs do not have substantially all rights in 

the Asserted Patent, Defendants deny that Plaintiffs have standing to bring this lawsuit, and thus 

deny that this Court has subject matter jurisdiction over this dispute. 

8. The allegations in this paragraph contain legal conclusions to which no response is 

required. To the extent that a response is required, and for the purposes of this litigation only, 

Defendants do not contest that this Court has personal jurisdiction. Except as so admitted, denied. 

9. Defendants admit that SEA and SRA are registered to do business in Texas and 

maintain an agent authorized to receive service of process within Texas. Defendants admit that 

SEA and SRA conduct business in this District. Defendants admit that SEC is the parent 

corporation of Defendants SEA and SRA. Samsung admits that SEC and SEA place products in 

the stream of commerce knowing or understanding that such products would be sold and used in 

the United States, including in this District. Except as so admitted, denied. 

10. The allegations in this paragraph contain legal conclusions to which no response is 

required. To the extent that a response is required, and for the purposes of this litigation only, 

Defendants do not contest that venue is proper in this District. Defendants admit that SEA and 

SRA conduct business in this District and maintain regular places of business in this District, and 

that SEC is a foreign company with no place of business in the United States. Except as so 

admitted, denied. 

11. Defendants lack knowledge or information sufficient to form a belief as to the truth 

of the allegations in this paragraph, and therefore deny them. 

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12. Defendants admit that this paragraph contains quotes from an SEA press release 

(https://news.samsung.com/us/samsung-electronics-america-open-flagship-north-texas-campus/), 

which speaks for itself. Defendants admit that SEA has places of business in this district. 

Defendants admit that this paragraph purports to quote what appears to be an article published by 

the Dallas Morning News, which speaks for itself. Except as so admitted, denied. 

13. Defendants admit that SRA maintains an office in Plano, Texas. Defendants admit 

that this paragraph appears to contain a screenshot taken from the website 

https://sra.samsung.com/locations/. Defendants deny that this is a current screenshot of the 

website https://sra.samsung.com/locations/. Defendants deny that SRA has a place of business at 

6625 Excellence Way, Plano, Texas 75023. Except as so admitted, denied. 

14. Defendants admit that there is a Samsung Experience Store at 2601 Preston Rd. 

#1214, Frisco, Texas 75034. Defendants admit that this paragraph appears to contain a screenshot 

taken from the website https://www.samsung.com/us/samsung-experience-store/locations/, which 

speaks for itself, Defendants admit that this paragraph quotes part of the content of the website, 

https://www.samsung.com/us/samsungexperience-store/, which speaks for itself. Except as so 

admitted, denied. 

15. Defendants admit that SEA and SRA conduct business in this District. Except as so 

admitted, denied. 

16. The allegations in this paragraph contain legal conclusions to which no response is 

required. To the extent that a response is required, Defendants admit that this paragraph contains 

quotes from pleadings in other cases, which speak for themselves. 

17. The allegations in this paragraph contain legal conclusions to which no response is 

required. To the extend a response is required: denied. 

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PATENTS-IN-SUIT

18. Defendants admit that on its face, U.S. Patent No. 10,187,878 (“the ’878 Patent”) 

is titled “Method and Apparatus For Improving A Transmission Using A Configured Resource In 

A Wireless Communication System” and bears an issue date of January 22, 2019. The remaining 

allegations in this paragraph contain legal conclusions to which no response is required. 

19. Defendants admit that on its face, U.S. Patent No. 11,291,052 (“the ’052 Patent”) 

is titled “Method and Apparatus For Improving Msg3 Transmission of Random Access Procedure 

in a Wireless Communication System” and bears an issue date of March 29, 2022. The remaining 

allegations in this paragraph contain legal conclusions to which no response is required. 

20. Defendants admit that on its face, U.S. Patent No. 10,104,658 (“the ’658 Patent”) 

is titled “Method and Apparatus For Delivery of Control Signaling in a Wireless Communication 

System” and bears an issue date of October 16, 2018. The remaining allegations in this paragraph 

contain legal conclusions to which no response is required. 

21. Defendants admit that on its face, U.S. Patent No. 10,785,759 (“the ’759 Patent”) 

is titled “Method and Apparatus for Determining Numerology Bandwidth in a Wireless 

Communication System” and bears an issue date of September 22, 2020. The remaining allegations 

in this paragraph contain legal conclusions to which no response is required. 

22. Defendants admit that on its face, U.S. Patent No. 10,986,585 (“the ’585 Patent”) 

is titled “Method and Apparatus for Triggering Power Headroom Report for Multiple Pathloss 

Reference in a Wireless Communication System” and bears an issue date of April 20, 2021. The 

remaining allegations in this paragraph contain legal conclusions to which no response is required. 

23. Defendants lack knowledge or information sufficient to form a belief as to the truth 

of the allegations in this paragraph, and therefore deny them. 

24. Denied.

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25. Denied.

26. Defendants admit that SEC received a letter dated January 19, 2022 from Celerity 

IP, LLC (“Celerity”). Defendants admit that the letter states that Celerity has been retained by 

ASUSTek Computer Inc. to “protect its portfolio of 3G/4G/5G Standard Essential Patents 

(‘SEPs’)” and that “the ASUS SEP portfolio comprises approximately 150 patent families.” 

Defendants admit that the letter contained an exhibit with a list of patents that identified the ’759 

and ’585 Patents, but deny that this letter identified the ’658, ’878, and ’052 Patents. Defendants 

admit that in subsequent email correspondence, Celerity provided Samsung with a list that 

identified the ’658, ’878, and ’052 Patents. Except as so admitted, denied. 

SAMSUNG ACCUSED PRODUCTS

27. Defendants admits SEC sells to SEA certain products that implement and practice 

4G wireless technologies, including Galaxy smartphones, tablets and watches, and that SEA sells 

and offers to sell those products in the United States. Defendants admit that some of the product 

names listed in this paragraph appear to be Samsung products sold by SEA in the United States.

Except as so admitted, denied. 

28. Defendants admits SEC sells to SEA certain products that implement and practice 

5G wireless technologies, including Galaxy smartphones, and that SEA sells and offers to sell 

those products in the United States. Defendants admit that some of the product names listed in this 

paragraph appear to be Samsung products sold by SEA in the United States. Defendants admit that 

Samsung Accused Products with 5G capability also have 4G capability. Except as so admitted, 

denied. 

29. The allegations in this paragraph do not require a response. To the extent a response 

is required, denied. 

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PLAINTIFFS’ COMPLIANCE WITH THE ETSI IPR POLICY AND DEFENDANTS’ 

FAILURE TO COMPLY

30. Defendants admit that the European Telecommunications Standards Institute 

(“ETSI”) describes itself at https://www.etsi.org/about, and is a not-for-profit organization that is 

the “recognized regional standards body dealing with telecommunications.” Defendants admit that 

while ETSI was “initially founded to serve European needs,” it has a “global perspective” and its 

standards are used worldwide. Defendants admit that ETSI is a partner in the Third Generation 

Partnership Project (“3GPP”), and that 3GPP created the technical specifications for 3G, 4G, and 

5G, which are globally applicable technical specifications and standards that help ensure 

worldwide interoperability between wireless networks, network operators, and devices. 

Defendants admit that ETSI and its members have also developed other worldwide standards that 

help ensure interoperability. Except as so admitted, denied. 

31. Defendants admit that ETSI has developed and promulgated an ETSI IPR Policy, 

which states that “the ETSI IPR POLICY seeks a balance between the needs of standardization for 

public use in the field of telecommunications and the rights of the owners of IPRs.” Defendants 

further admit that this paragraph purports to quote parts of the ETSI IPR Policy, which speaks for 

itself. Except as so admitted, denied. 

32. Defendants admit that this paragraphs appears to quote from parts of the ETSI IPR 

Policy and provide a screenshot of a part of the ETSI IPR Policy, which speaks for itself.

Defendants further admit that Celerity and ASUSTek Computer Inc. have informed SEC that they 

were prepared to grant Samsung a license on terms that they asserted to be “fair reasonable and 

non-discriminatory” or “FRAND.” Except as so admitted, denied. 

33. Defendants admit that SEC received a letter dated January 19, 2022 from Celerity, 

which states that Celerity has been retained by ASUSTek Computer Inc. to “protect its portfolio 

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of 3G/4G/5G Standard Essential Patents (‘SEPs’)” as described above. Defendants admit that this 

letter states that Celerity wishes to “begin licensing discussions around the ASUS SEP portfolio 

on fair reasonable and non-discriminatory (‘FRAND’) terms.” Except as so admitted, denied. 

34. Defendants admit that SEC representatives and Plaintiffs’ representatives 

corresponded. Defendants admit that Plaintiffs’ representatives provided materials concerning the 

Plaintiffs’ patents, as well as claim charts containing allegations of infringement, including one 

claim chart contains allegations of infringement of the ’878 Patent. Except as so admitted, denied.

35. Denied.

36. Denied. 

37. Defendants admit that Samsung has operated and continues to operate products that 

implement and practice 4G and 5G wireless technologies. Except as so admitted, denied. 

38. Denied.

GENERAL INFRINGEMENT ALLEGATIONS 

39. Denied.

40. Defendants admit that this paragraph refers to the content of a third-party website, 

which speaks for itself. Defendants admit that “LTE” and “4G LTE” are terms that have been used 

to refer to 4G technology, and that Samsung has sold mobile phones with 4G technology to 

consumers in the United States since 2010. Defendants admit that many Samsung products, 

including mobile phones, are compatible with and practice the 4G standard. Except as so admitted, 

denied. 

41. Defendants admit that this paragraph quotes parts of the content of the webpage 

https://www.samsung.com/us/mobile/5g/evolution-to-5g/, which speaks for itself. Defendants 

admit that Samsung added 5G technology to its mobile consumer product lineup and that Samsung 

introduced its first line of 5G-compatible devices in 2019. Defendants admit that all 5G-capable 

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products that Samsung has released in the United States to date also have 4G capability. Except as 

so admitted, denied. 

42. Defendants admit that Samsung provides information regarding the products the 

Complaint identifies as “Samsung Accused Products,” for example, via its website. Defendants 

admit that this paragraph quotes parts of the content of the webpages 

https://www.samsung.com/us/mobile/5g/ and https://www.samsung.com/us/mobile/5g/evolutionto-5g/, which speak for themselves. 

43. Denied.

44. Denied. 

45. Denied

46. Denied.

47. Denied.

48. Denied.

49. Denied. 

50. Denied. 

COUNT I: INFRINGEMENT OF THE ‘878 PATENT

51. Defendants incorporate their responses to each and every allegation of the 

foregoing paragraphs as though fully set forth herein. 

52. Defendants admit that on its face, U.S. Patent No. 10,187,878 is titled “Method and 

Apparatus for Improving a Transmission Using a Configured Resource in a Wireless 

Communication System” and bears an issue date of January 22, 2019. The remaining allegations 

in this paragraph contain legal conclusions to which no response is required. 

53. Defendants lack knowledge or information sufficient to form a belief as to the truth 

of the allegations, and therefore deny these allegations.

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54. Defendants admit that Plaintiffs have not directly granted them a license to practice 

the ’878 Patent. Except as so admitted, denied. 

55. Denied.

56. Denied.

57. Denied.

58. Denied.

59. Denied.

60. Denied.

61. Denied.

62. Denied.

63. Denied.

64. Denied.

65. Defendants admit that SEC received a letter dated January 19, 2022 from Celerity. 

Defendants admit that the letter states that Celerity has been retained by ASUSTek Computer 

Inc.to “protect its portfolio of 3G/4G/5G Standard Essential Patents (‘SEPs’)” and that “the ASUS 

SEP portfolio comprises approximately 150 patent families.” Defendants admit that the letter 

contained an exhibit with a list of patents, but deny that this letter identified the ‘878 Patent. Except 

as so admitted, denied. 

COUNT II: INFRINGEMENT OF THE ’052 PATENT

66. Defendants incorporate their responses to each and every allegation of the 

foregoing paragraphs as though fully set forth herein. 

67. Defendants admit that on its face, U.S. Patent No. 11,291,052 is titled “Method and 

Apparatus for Improving Msg3 Transmission of Random Access Procedure in a Wireless 

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Communication System” and bears an issue date of March 29, 2022. The remaining allegations 

in this paragraph contain legal conclusions to which no response is required. 

68. Defendants lack knowledge or information sufficient to form a belief as to the truth 

of the allegations, and therefore deny these allegations.

69. Defendants admit that Plaintiffs have not directly granted them a license to practice 

the ’052 Patent. Except as so admitted, denied. 

70. Denied.

71. Denied.

72. Denied.

73. Denied.

74. Denied.

75. Denied.

76. Denied.

77. Denied.

78. Denied.

79. Denied.

80. Denied

81. Samsung admits that by August 22, 2023, Celerity identified the ’052 Patent to 

Samsung as essential to 5G. Except as so admitted, denied. 

COUNT III: INFRINGEMENT OF THE ‘658 PATENT

82. Defendants incorporate their responses to each and every allegation of the 

foregoing paragraphs as though fully set forth herein. 

83. Defendants admit that on its face, U.S. Patent No. 10,104,658 is titled “Method and 

Apparatus for Delivery of Control Signaling in a Wireless Communication System” and bears an 

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issue date of October 16, 2018. The remaining allegations in this paragraph contain legal 

conclusions to which no response is required. 

84. Defendants lack knowledge or information sufficient to form a belief as to the truth 

of the allegations, and therefore deny these allegations.

85. Defendants admit that Plaintiffs have not directly granted them a license to practice 

the ’658 Patent. Except as so admitted, denied. 

86. Denied.

87. Denied.

88. Denied.

89. Denied.

90. Denied.

91. Denied.

92. Denied.

93. Denied.

94. Denied.

95. Denied.

96. Denied

97. Denied

98. Samsung admits that by June 22, 2023, Celerity identified the ’658 Patent to 

Samsung as essential to 5G. Except as so admitted, denied. 

COUNT IV: INFRINGEMENT OF THE ’759 PATENT

99. Defendants incorporate their responses to each and every allegation of the 

foregoing paragraphs as though fully set forth herein. 

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100. Defendants admit that on its face, U.S. Patent No. 10,785,759 is titled “Method and 

Apparatus for Determining Numerology Bandwidth in a Wireless Communication System” and 

bears an issue date of September 22, 2020. The remaining allegations in this paragraph contain 

legal conclusions to which no response is required. 

101. Defendants lack knowledge or information sufficient to form a belief as to the truth 

of the allegations, and therefore deny these allegations.

102. Defendants admit that Plaintiffs have not directly granted them a license to practice 

the ’759 Patent. Except as so admitted, denied.

103. Denied.

104. Denied.

105. Denied.

106. Denied.

107. Denied.

108. Denied.

109. Denied.

110. Denied.

111. Denied.

112. Denied.

113. Denied

114. Denied

115. Defendants admit that SEC received a letter dated January 19, 2022 from Celerity. 

The letter states that Celerity has been retained by ASUSTek Computer Inc. to “protect its portfolio 

of 3G/4G/5G Standard Essential Patents (‘SEPs’)” and that “the ASUS SEP portfolio comprises 

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approximately 150 patent families.” Defendants admit that the letter contained an exhibit with a 

list of patents that identified the ’759 Patent. Except as so admitted, denied. 

COUNT V: INFRINGEMENT OF THE ’585 PATENT

116. Defendants incorporate their responses to each and every allegation of the 

foregoing paragraphs as though fully set forth herein. 

117. Defendants admit that on its face, U.S. Patent No. 10,986,585 is titled “Method and 

Apparatus for Triggering Power Headroom Report for Multiple Pathloss Reference in a Wireless 

Communication System” and bears an issue date of April 20, 2021. The remaining allegations in 

this paragraph contain legal conclusions to which no response is required. 

118. Defendants lack knowledge or information sufficient to form a belief as to the truth 

of the allegations, and therefore deny these allegations.

119. Defendants admit that Plaintiffs have not directly granted them a license to practice 

the ’585 Patent. Except as so admitted, denied. 

120. Denied.

121. Denied.

122. Denied.

123. Denied.

124. Denied.

125. Denied.

126. Denied.

127. Denied.

128. Denied.

129. Denied.

130. Denied

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131. Denied

132. Denied

133. Defendants admit that SEC received a letter dated January 19, 2022 from Celerity. 

The letter states that Celerity has been retained by ASUSTek Computer Inc. to “protect its portfolio 

of 3G/4G/5G Standard Essential Patents (‘SEPs’)” and that “the ASUS SEP portfolio comprises 

approximately 150 patent families.” Defendants admit that the letter contained an exhibit with a 

list of patents that identified the ’585 Patent. Except as so admitted, denied. 

COUNT VI: DECLARATORY JUDGMENT THAT THE PLAINTIFFS HAVE 

COMPLIED WITH ETSI OBLIGATIONS AND COMPETITION LAW AND THAT THE 

DEFENDANTS HAVE NOT

134. Defendants incorporate their responses to each and every allegation of the 

foregoing paragraphs as though fully set forth herein. 

135. Denied.

136. Defendants admit that SEC received a letter dated January 19, 2022 from Celerity, 

which states that Celerity has been retained by ASUSTek Computer Inc.to “protect its portfolio of 

3G/4G/5G Standard Essential Patents (‘SEPs’)” as described above. Defendants admit that this 

letter states that Celerity wishes to “begin licensing discussions around the ASUS SEP portfolio 

on fair reasonable and non-discriminatory (‘FRAND’) terms.” Except as so admitted, denied. 

137. Defendants admit that SEC representatives and Plaintiffs’ representatives 

corresponded. Defendants admit that Plaintiffs’ representatives provided materials concerning the 

Plaintiffs’ patents, as well as claim charts containing allegations of infringement, including one 

with allegations of infringement of the ’878 Patent. Except as so admitted, denied.

138. Denied.

139. Denied.

140. Denied.

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141. Defendants admit there is a dispute between them, Plaintiffs, and ASUSTeK 

Computer, Inc. (“ASUS”) concerning whether Plaintiffs and ASUS have complied with their

FRAND obligations. This paragraph also contains legal conclusions to which no response is 

required. To the extent a response is required, Defendants admit that there is a real and immediate 

dispute between them, Plaintiffs, and ASUS concerning whether Plaintiffs and ASUS have 

complied with their FRAND obligations. Except as so admitted, denied. 

142. This paragraph contains legal conclusions to which no response is required. To the 

extent a response is required, Defendants deny that Plaintiffs are entitled to the relief requested. 

DAMAGES 

143. Denied.

DEMAND FOR JURY TRIAL 

144. A response is not required to Plaintiffs’ demand for a jury trial. Defendants also 

demand a jury trial for all issues so triable pursuant to Rule 38 of the Federal Rules of Civil 

Procedure. 

PRAYER FOR RELIEF 

Defendants deny that Plaintiffs are entitled to any of the relief requested in Plaintiffs’ 

prayer for relief. 

AFFIRMATIVE DEFENSES 

145. Without admitting or acknowledging that it bears the burden of proof except those 

imposed by law and without reducing or removing Plaintiffs’ burden of proof on its affirmative 

claims, Defendants allege and assert the following defenses in response to Plaintiffs’ Complaint. 

Defendants reserve the right to amend their answer with additional defenses as further information 

is obtained during the course of this action, to the extent that they are not otherwise deemed 

affirmative defenses by law, or to the extent that Plaintiffs further modifies their allegations. 

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FIRST DEFENSE: FAILURE TO STATE A CLAIM 

146. Plaintiffs fail to state a claim upon which relief can be granted. 

SECOND DEFENSE: NON-INFRINGEMENT

147. Defendants have not infringed and do not infringe any valid and enforceable claim 

of the Patents-in-Suit, directly, indirectly, contributorily, or by inducement, either literally or by 

the doctrine of equivalents. Plaintiffs are precluded under the doctrines of disclaimer and 

prosecution history estoppel from asserting a scope for any claim of the Patents-in-Suit that would 

encompass any Samsung product or service. 

THIRD DEFENSE: NO WILLFUL INFRINGEMENT OR ENHANCED DAMAGES

148. Plaintiffs are not entitled to enhanced damages under 35 U.S.C. § 284 because 

Plaintiffs have failed to meet, and cannot meet as a matter of law, the requirements for willful 

infringement. 

FOURTH DEFENSE: INVALIDITY/INELIGIBILITY

149. Each claim of the Patents-in-Suit is invalid for failure to satisfy one or more of the 

requirements of the Patent Act, 35 U.S.C. § 1 et seq., including but not limited to, the conditions 

of patentability set forth in 35 U.S.C. §§ 101, 102, 103, 112, and/or 116. For example, each claim 

of the Patents-in-Suit is invalid in view of the admitted prior art, the references cited by the 

applicant and the Examiner, and the arguments made by the Applicants during prosecution of the 

applications that issued as the Patents-in-Suit. Additionally and/or alternatively, each claim of at 

least the ’878 Patent is invalid for failing to name the correct inventors of the claimed subject 

matter, if inventorship cannot be corrected pursuant to 35 U.S.C. § 256. For example, Samsung’s 

contributions to 3GPP TSG-RAN WG2 Meeting #91, including R2-153332, R2-153333, and R2-

153334, show that Samsung engineers invented the claimed subject matter prior to the inventors 

named on the ’878 Patent. 

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FIFTH DEFENSE: LICENSE, EXHAUSTION, AND COVENANT NOT TO SUE

150. Plaintiffs’ claims are barred in whole or in part by one or more of the following: 

express or implied license (including any licenses executed by any other or prior owners of the 

Patents-in-Suit and/or any licenses entered into by other parties, including but not limited to

Defendants’ suppliers of the Samsung Accused Products), doctrine of patent exhaustion, the single 

recovery rule, and/or covenant not to sue or assert the Patents-in-Suit. 

SIXTH DEFENSE: LACK OF STANDING

151. To the extent that Plaintiffs were not the true, correct, sole and total owners of all 

substantial rights in the Patents-in-Suit as of the filing date of the Complaint, Plaintiffs lack 

standing to bring or maintain one or more claims in this lawsuit. For example, Celerity has failed 

to provide evidence that it is the exclusive licensee of the Patents-in-Suit. On information and 

belief, Celerity is a nonexclusive licensee who does not have standing to pursue claims of alleged 

patent infringement. ASUS Technology Licensing Inc. (“ATL”) has failed to provide evidence 

that it is the owner of the Patents-in-Suit. On information and belief, ATL does not have the right 

to file suit for infringement as a “patentee” under Title 35 of the patent statute. Additionally and/or 

alternatively, Plaintiffs lack standing to maintain this lawsuit because Samsung is the true owner 

of the Patents-in-Suit if inventorship can be corrected pursuant to 35 U.S.C. § 256. For example, 

Samsung’s contributions to 3GPP TSG-RAN WG2 Meeting #91, including R2-153332, R2-

153333, and R2-153334, show that Samsung engineers invented the claimed subject matter prior 

to the inventors named on the Patents-in-Suit. If the misjoinder of the currently named inventors 

and/or the nonjoinder of Samsung’s inventors can be corrected pursuant to 35 U.S.C. § 256, then 

Samsung is the true owner of the Patents-in-Suit and Plaintiffs lack standing to maintain this 

lawsuit.

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SEVENTH DEFENSE: EQUITABLE BARS

152. Plaintiffs’ claims are barred in whole or in part by the doctrines of waiver, estoppel, 

laches, prosecution laches, and/or other equitable doctrines, including inequitable conduct during 

prosecution of the Patents-in-Suit before the U.S. Patent and Trademark Office.

EIGHTH DEFENSE: STATUTE OF LIMITATIONS

153. Any claim by Plaintiffs for damages is limited by 35 U.S.C. §§ 252, 286, 287, or 

307. Plaintiffs are barred by 35 U.S.C. § 288 from recovering costs associated with this action. 

NINTH DEFENSE: PROSECUTION HISTORY ESTOPPEL AND DISCLAIMER

154. Plaintiffs’ claims are barred, in whole or in part, by the doctrines of prosecution 

history estoppel, judicial estoppel, and/or prosecution disclaimer based on amendments, 

statements, representations, and admissions made during prosecution of the applications that led 

to the Patents-in-Suit and related patents or during any post-issuance proceedings from asserting 

any interpretation of the claims of the Patents-in-Suit and related patents. 

TENTH DEFENSE: FRAND 

155. Plaintiffs’ claims for relief, including but not limited to injunctive and declaratory 

relief, are limited and/or barred by their commitment to license the Patents-in-Suit pursuant to the 

applicable standard setting organizations’ intellectual property right policies, including without 

limitation requirements related to licensing intellectual property on fair, reasonable and nondiscriminatory terms.

ELEVENTH DEFENSE: FAILURE TO NEGOTIATE IN GOOD FAITH

156. Plaintiffs failed to negotiate with Defendants in good faith.

TWELFTH DEFENSE: NO EXCEPTIONAL CASE 

157. Plaintiffs cannot prove that this is an exceptional case justifying award of attorney 

fees against Defendants pursuant to 35 U.S.C. § 285. 

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THIRTEENTH DEFENSE: ENSNAREMENT

158. Plaintiffs cannot assert the claims of the Patents-in-Suit under the doctrine of 

equivalents to cover the Samsung Accused Products because such an asserted scope of equivalency 

would encompass or ensnare the prior art. 

FOURTEENTH DEFENSE: LIMITATION ON DAMAGES – MARKING

159. Plaintiffs’ claims for damages are barred, in whole or in part, by 35 U.S.C. §§ 286, 

287, and/or 288. Plaintiffs have failed to adequately plead compliance with the patent marking 

statute, 35 U.S.C. § 287(a). On information and belief, for example, ASUS and/or other entities 

have been licensees of the Patents-in-Suit and failed to mark their products in compliance with the 

patent marking statute. As a result, Plaintiffs cannot rely on marking as a basis to recover pre-suit 

damages.

FIFTEENTH DEFENSE: FAILURE TO JOIN INDISPENSABLE PARTY

160. ASUS is an indispensable party to this action. To the extent that ASUS contests this 

Court’s jurisdiction over the counterclaims pleaded herein or otherwise refuses to be a party to this 

action and/or is unable to be joined as a party to this action, Plaintiffs’ claims should be dismissed 

for their failure to join ASUS as a party. 

SAMSUNG’S COUNTERCLAIMS AND THIRD-PARTY COMPLAINT

Pursuant to Federal Rule of Civil Procedure 13, Counterclaim-Plaintiffs Samsung 

Electronics Co., Ltd. (“SEC”), Samsung Electronics America, Inc. (“SEA”), and Samsung 

Research America (“SRA”) (collectively “Defendants” or “Samsung”) bring the following 

counterclaims and third-party complaint against ASUS Technology Licensing Inc. (“ATL”), 

Celerity IP, LLC (“Celerity”), and third-party ASUSTeK Computer, Inc. (“ASUS”) (collectively 

“Counterclaim-Defendants”). Samsung requests a trial by jury and hereby allege as follows: 

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NATURE OF ACTION

1. The counterclaims arise under the patent laws of the United States set forth in Title 

35 of the United States Code, as well as under the Federal Declaratory Judgment Act, 28 U.S.C. 

§§ 2201 and 2202.

2. Counterclaim-Defendants have breached their contractual commitment by failing 

to offer a license to its essential patents—including but not limited to the Patents-in-Suit—on 

FRAND terms and conditions prior to filing the Complaint in this Action. 

3. Samsung is the owner of U.S. Patent No. 9,913,313 (“the ’313 Patent”). ASUS

infringes the ’313 patent, a copy of which is attached hereto as Exhibit A. ASUS both directly and 

indirectly infringes the ’313 Patent by making, using, selling, offering to sell, importing and/or 

selling for importation in or into the United States ASUS-branded products—including the ASUS 

Zenbook line of products (such as ASUS Zenbook Pro 14 OLED and the ASUS Zenbook 17 Fold 

OLED)—that are configured to enter the listen mode of Wi-Fi Peer-to-Peer (P2P) over the same 

channel as a channel where legacy Wi-Fi is in use (the “Accused Products”), without a license to 

do so. ASUS induces infringement by third parties through its use of the Accused Products as 

directed and instructed by ASUS. Samsung seeks damages and other relief for ASUS’s prior and 

ongoing infringement of the ’313 Patent.

PARTIES

4. SEC is a corporation organized and existing under the laws of the Republic of 

Korea, with its principal place of business located at 129 Samsung-ro, Maetan-3dong, Yeongtonggu, Suwon-si, Gyeonggi-do, 16677, Korea. 

5. SEA is a corporation organized and existing under the laws of New York, with its 

principal place of business located at 85 Challenger Road, Ridgefield Park, NJ 07660. 

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6. SRA s a corporation organized and existing under the laws of California, with its 

principal place of business located at 665 Clyde Ave, Mountain View, CA 94043. 

7. By the Complaint in this action, ATL is a Taiwanese corporation, with its principal 

place of business located at No. 115, Li-De Rd., Beitou District, Taipei, Taiwan R.O.C. 

8. By the Complaint in this action, Celerity is a limited liability company organized 

and existing under the laws of Texas, with its principal place of business located at 7160 Dallas 

Parkway, Suite 235, Plano, Texas 75024. 

9. On information and belief, ASUS is a Taiwanese corporation with its primary place 

of business at No. 15, Li-Te Road, Beitou District, Taipei City 112, Taiwan, R.O.C. 

10. On information and belief, ASUS has a distribution chain with respect to the 

manufacture, use, offering to sell, and/or sale and with respect to the importation into the United 

States of the Accused Products. 

JURISDICTION 

11. This Court has jurisdiction over these counterclaims pursuant to 28 U.S.C. §§ 1331 

and 1338 as this action arises under the patent laws of the United States (35 U.S.C. §§ 1 et seq.) 

as well as under 28 U.S.C. §§ 1367 and 2201(a). 

12. This Court has personal jurisdiction over each of the Counterclaim-Defendants. 

13. Celerity is a limited liability company organized under the laws of Texas and with 

its principal place of business in Texas, meaning that it is subject to general personal jurisdiction 

in Texas. 

14. ATL and Celerity have consented to venue in this district by bringing this action 

against Samsung. 

15. ASUS granted Celerity, a Texas entity, rights as the exclusive licensing agent of its 

patents. ASUS necessarily understood that negotiations by Celerity would take place in Texas. 

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16. Each of the Counterclaim-Defendants has committed acts within this District giving 

rise to this action and has established minimum contacts with this forum such that the exercise of 

jurisdiction over Counterclaim-Defendants would not offend traditional notions of fair play and 

substantial justice. For example, ATL and ASUS, through their representative and agent in the 

Eastern District of Texas, Celerity, contacted Samsung regarding the ASUS patent portfolio, and 

engaged in the bad-faith negotiation tactics described below. 

17. ASUS has previously consented to jurisdiction in this District, for example, in Lone 

Star Technological Innovations, LLC v. ASUSTek Computer Inc., Case No. 6:19-cv-00059 and in 

Ironworks Patents, LLC v. ASUSTeK Computer, Inc., Case No. 2:19-cv-00016-JRG.

18. ASUS conducts business and has committed acts of patent infringement and/or 

induced acts of patent infringement by others in this judicial district, the State of Texas, and 

elsewhere in the United States. ASUS has itself and/or through the activities of subsidiaries, 

affiliates, intermediaries, and agents (including distributors, retailers, and others) purposefully 

directed infringing activities at residents of the State of Texas, and this litigation results from those 

infringing activities. ASUS regularly sells (directly and/or indirectly) Accused Products within 

this district. For example, ASUS has itself and/or through the activities of subsidiaries, affiliates, 

intermediaries, and agents (including distributors, retailers, and others) placed and continues to 

place Accused Products into the stream of commerce via an established distribution channel with 

the knowledge or understanding that such products are being and will continue to be made, used, 

offered for sale, and/or sold in this Judicial District and the State of Texas. ASUS, directly and/or 

through subsidiaries, affiliates, intermediaries, and agents (including distributors, retailers, and 

others), uses the website https://store.asus.com/us/ to sell, offer to sell, import, and/or sell for 

importation the Accused Products in the United States and in this District. 

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19. ASUS is subject to this Court’s specific and/or general personal jurisdiction 

pursuant to due process and/or the Texas Long Arm Statute, due at least to its substantial and 

pervasive business in this State and judicial district, including at least part of its infringing activities 

alleged herein and deriving substantial revenue from goods sold to Texas residents, including 

benefits directly related to ASUS’s infringement of the ’313 Patent. ASUS has established 

minimum contacts within Texas and purposefully availed itself of the benefits of Texas, and the 

exercise of personal jurisdiction over ASUS would not offend traditional notions of fair play and 

substantial justice.

VENUE

20. ATL and Celerity have alleged in the Complaint in this action that venue is proper 

in this District under 28 U.S.C. §§ 1391 and/or 1400 and Samsung does not dispute that allegation 

for purposes of this litigation. 

21. For ASUS, venue is proper as to a foreign defendant in any district under 28 U.S.C. 

§§ 1391 and/or 1400. 

22. ASUS has previously consented to venue in this District, for example, in Lone Star 

Technological Innovations, LLC v. ASUSTek Computer Inc., Case No. 6:19-cv-00059 and in 

Ironworks Patents, LLC v. ASUSTeK Computer, Inc., Case No. 2:19-cv-00016-JRG. 

ETSI, THE ETSI IPR POLICY, AND THE FRAND COMMITMENT 

23. The European Telecommunications Standards Institute (“ETSI”) describes itself at 

https://www.etsi.org/about, and is a not-for-profit organization that is the “recognized regional 

standards body dealing with telecommunications.” While ETSI was initially founded to serve 

European needs, it has a global perspective and its standards are used worldwide. 

24. Upon information and belief, ETSI has more than 900 members from more than

sixty countries. 

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25. In 1998, ETSI and other standard-development organizations founded and became 

organizational partners of the Third Generation Partnership Project (3GPP). 3GPP created the 

technical specifications for 3G, 4G, and 5G. 

26. ETSI members may own patents essential to technical specifications promulgated 

by 3GPP. 

27. ETSI has developed an Intellectual Property Rights (IPR) Policy regarding the 

licensing of those patents. The IPR Policy is governed by the laws of France.

28. Clause 6.1 of the ETSI IPR Policy, “The Availability of Licenses,” states: “When 

an ESSENTIAL IPR relating to a particular STANDARD or TECHNICAL SPECIFICATION is 

brought to the attention of ETSI, the Director-General of ETSI shall immediately request the owner 

to give within three months an irrevocable undertaking in writing that it is prepared to grant 

irrevocable licences [sic] on fair, reasonable, and non-discriminatory (‘FRAND’) terms and 

conditions under such IPR[.]”

29. Section 15.6 of the ETSI IPR Policy defines the term “ESSENTIAL” to mean that 

“it is not possible on technical (but not commercial) grounds, taking into account normal technical 

practice and the state of the art generally available at the time of standardization, to make, sell, 

lease, otherwise dispose of, repair, use or operate EQUIPMENT or METHODS which comply 

with a STANDARD without infringing that IPR.” 

30. ETSI requests that patent holders publicly declare their licensing positions with 

respect to essential patents by submitting an IPR Information Statement and Licensing Declaration. 

A form IPR Information Statement and Licensing Declaration is attached to the IPR Policy. The 

form IPR Information Statement and Licensing Declaration is contractual in nature. 

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31. On information and belief, ASUS and/or ATL have submitted one or more IPR 

Information Statement and Licensing Declarations identifying patents in the ASUS portfolio that 

ASUS and/or ATL view as potentially essential to one or more of the 3G, 4G, and 5G standards. 

These declarations state: “the Declarant and/or its AFFILIATES are (1) prepared to grant 

irrevocable licences [sic] under this/these IPR(s) on terms and conditions which are in accordance 

with Clause 6.1 of the ETSI IPR Policy; and (2) will comply with Clause 6.1b-is of the ETSI IPR 

Policy.” 

32. Clause 6.1b-is of the ETSI IPR Policy states that “FRAND licensing undertakings 

made pursuant to Clause 6 shall be interpreted as encumbrances that bind all successors-ininterest,” and “any Declarant who has submitted a FRAND undertaking according to the POLICY 

who transfers ownership of ESSENTIAL IPR that is subject to such undertaking shall include 

appropriate provisions in the relevant transfer documents to ensure that the undertaking is binding 

on the transferee and that the transferee will similarly include appropriate provisions in the event 

of future transfers with the goal of binding all successors-in-interest. The undertaking shall be 

interpreted as binding on successors-in-interest regardless of whether such provisions are included 

in the relevant transfer documents.”

33. Samsung is an intended third-party beneficiary of ASUS’s contractual 

commitments to grant licenses on FRAND terms to all that make, use, or sell products supporting 

ETSI cellular standards. ASUS is contractually obligated directly and by virtue of any assignment 

of patents that ASUS declared essential to ETSI. Celerity is also contractually bound as the alleged 

exclusive licensee of the asserted patent and licensing agent for ASUS’s purportedly standardsessential patent portfolio. 

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THE PARTIES’ LICENSING DISCUSSIONS

34. SEC received a letter dated January 19, 2022 from Celerity, which stated that 

Celerity had been retained by ASUS to “protect its portfolio of 3G/4G/5G Standard Essential 

Patents (‘SEPs’)” and that “the ASUS SEP portfolio comprises approximately 150 patent 

families.” After SEC received this letter, the parties’ representatives engaged in discussions. 

35. Upon information and belief, on September 5, 2023, ASUS assigned the ’878 Patent 

to ATL. Instead of continuing to engage with Samsung in licensing discussions, on September 12, 

2023, ATL and Celerity filed the Complaint. 

36. On information and belief, ASUS is the current or former assignee to the ’878 

patent and the “ASUS SEP portfolio” described above. 

37. On information and belief, ASUS will share in any revenue Celerity and/or ATL 

obtain from any license of or lawsuit asserting patents from the “ASUS SEP portfolio” patents. 

38. On information and belief, ASUS, Celerity, and ATL, were working in concert in 

the negotiation with Samsung. 

39. Counterclaim-Defendants failed to negotiate in good faith towards a FRAND 

license to their portfolio of allegedly essential patents and/or the Asserted Patent. For example,

ASUS, Celerity, and/or ATL have divided up the ASUS patent portfolio in an attempt to collect 

more than a FRAND royalty from Samsung for that patent portfolio, and Celerity and ATL filed 

this lawsuit without making a FRAND offer that included the Patents-in-Suit. 

40. In view of the foregoing, there exists an actual and justiciable controversy between 

the parties with respect to whether Counterclaim-Defendants satisfied their obligation to negotiate 

in good faith for a FRAND license to their portfolio of allegedly essential patents and/or the 

Patents-in-Suit. 

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41. Through the conduct described above, Counterclaim-Defendants breached the 

obligation to negotiate in good faith. 

COUNT I

BREACH OF OBLIGATION TO NEGOTIATE IN GOOD FAITH

42. Samsung repeats and re-alleges each and every allegation of the foregoing 

paragraphs as though fully set forth herein. 

43. French law governs the ETSI FRAND commitment, and under French law, once 

Counterclaim-Defendants, including ASUS, commenced negotiations for itself and/or as a 

licensing agent on behalf of ASUS with Samsung, ASUS, ATL, and Celerity were obligated to 

negotiate in good faith towards a license on FRAND terms and conditions. 

44. Counterclaim-Defendants have failed to negotiate in good faith with Samsung or 

offer a license having FRAND terms and conditions covering the parties’ essential patents, and 

thus breached their obligation for the reasons described above. 

45. Counterclaim-Defendants’ conduct demonstrates that they did not seriously engage 

in discussions with Samsung with the aim of concluding an agreement, and instead filed this case 

without engaging in good faith negotiations. 

46. Counterclaim-Defendants’ failure to negotiate in good faith as relating to the 

parties’ essential patents constitutes a breach of their obligations to negotiate in good faith with 

Samsung. 

47. As a result of this breach, Samsung has been injured in its business or property, 

including Samsung’s costs and expenses in pursuing futile discussions with CounterclaimDefendants, in an amount to be determined at trial. 

48. In addition to other forms of relief, there is a dispute between Samsung and 

Counterclaim-Defendants concerning whether Counterclaim-Defendants have complied with their 

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obligation to negotiate in good faith, and this controversy is of sufficient immediacy and reality to 

warrant the issuance of a declaratory judgment that Counterclaim Defendants have not complied 

with their obligation to act in good faith during their negotiations with Samsung with respect to 

FRAND terms for a license to the parties’ essential patents.

COUNT II1

INFRINGEMENT OF U.S. PATENT NO. 9,913,313 

49. SEC repeats and re-alleges each and every allegation of the foregoing paragraphs 

as though fully set forth herein. 

’313 PATENT 

50. SEC is the owner of all rights and interests in U.S. Patent No. 9,913,313, entitled 

“Method for Using Legacy Wi-Fi and Wi-Fi P2P Simultaneously,” which was duly and lawfully 

issued by the United States Patent and Trademark Office on March 6, 2018. A true and correct 

copy of the ’313 Patent is attached as Exhibit A and made a part hereof. 

51. The ’313 Patent lists Bu-Seop Jung and Jung-Hun Lee as inventors. 

52. ASUS has at no time been licensed under the ’313 Patent.

ASUS’S ACCUSED PRODUCTS

53. Upon information and belief, ASUS owns the domain asus.com and owns and 

operates the US website (https://www.asus.com) and store (https://shop.asus.com):2

1 All Counterclaim-Plaintiffs assert Claim I against all Counterclaim-Defendants. Only SEC asserts Claim II against 

ASUS.

2 https://www.whois.com/whois/asus.com. 

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54. ASUS offers to sell and sells the Accused Products to consumers in the United 

States, including in this District, through its website, asus.com. For example, the webpage 

https://shop.asus.com/us/asus-zenbook-pro-14-oled-ux6404.html sells and offers for sale the 

ASUS Zenbook Pro 14 OLED.

55. ASUS’s website also provides hyperlinks to retailers that sell the Accused Products

in the United States. For example, the page at https://www.asus.com/us/laptops/forcreators/zenbook/zenbook-pro-16x-oled-ux7602/where-to-buy/ directs users to purchase the 

Zenbook Pro 16X OLED from retailers such as Newegg and B&H Photo Video: 

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56. Upon information and belief, ASUS has infringed and continues to directly infringe 

one or more claims of the ’313 Patent, literally and/or under the doctrine of equivalents, by its 

manufacture, use, sale, importation, and/or offer for sale of the Accused Products. 

57. For example, upon information and belief, ASUS has infringed and continues to 

directly infringe at least Claim 17 of the ’313 Patent by making, using, selling, offering for sale in, 

and/or importing into the United States the Accused Products. 

58. By way of example, Claim 17 of the ’313 Patent recites:

17. An apparatus for connecting to a Wi-Fi network in an electronic device, the 

apparatus comprising:

a communication module; and 

a controller operatively coupled with the communication module, the controller 

configured to: 

acquire a Group Owner (GO) right of Wi-Fi Peer-to-Peer (P2P), if an entry into a 

listen mode of Wi-Fi P2P is requested during execution of a legacy Wi-Fi, and enter 

the listen mode over the same channel as a channel where the legacy Wi-Fi is in 

use, through the acquisition of the GO right. 

59. Upon information and belief, the Accused Products include each and every 

limitation of one or more claims of the ’313 patent, including at least Claim 17 as shown below by 

the ASUS Zenbook Pro 14 OLED. 

60. The ASUS Zenbook Pro 14 OLED is “An apparatus for connecting to a Wi-Fi 

network in an electronic device comprising a communication module.” For example, the ASUS 

Zenbook Pro 14 OLED is compatible with Wi-Fi 6E and is configured to connect automatically to 

Wi-Fi networks. The ASUS Zenbook Pro 14 OLED includes a communication module for Wi-Fi. 

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61. The ASUS Zenbook Pro 14 OLED further comprises “a controller operatively 

coupled with the communication module” Specifically, the Wi-Fi 6E module in the ASUS 

Zenbook Pro 14 OLED includes a Wi-Fi communication module and a Wi-Fi controller 

operatively coupled with the Wi-Fi communication module. 

62. The Wi-Fi controller in the ASUS Zenbook Pro 14 OLED is “configured to: acquire 

a Group Owner (GO) right of Wi-Fi Peer-to-Peer (P2P), if an entry into a listen mode of Wi-Fi 

P2P is requested during execution of a legacy Wi-Fi, and enter the listen mode over the same 

channel as a channel where the legacy Wi-Fi is in use, through the acquisition of the GO right.” 

For example, the Wi-Fi controller in the ASUS Zenbook Pro 14 OLED supports Miracast and is 

configured to be capable of providing screen-mirroring from another device that supports Miracast 

by using Wi-Fi Direct technology. On information and belief, if the ASUS Zenbook Pro 14 OLED

is connected to a WiFi Access Point using 802.11n, 802.11g, or 802.11b, and screen-mirroring is 

invoked by the user (for example by selecting the “Available everywhere” option within the 

“Projecting to this PC” menu within the System menu), the ASUS Zenbook Pro 14 OLED will 

enter into the “Group Owner” mode defined in the Wi-Fi Peer-to-Peer (P2P) Technical 

Specification so that it can then enter the “Listen State” defined in the Wi-Fi Peer-to-Peer (P2P) 

Technical Specification over the same channel as the channel where it is connected to the WiFi

Access Point.

63. ASUS’s infringement of the ’313 Patent is willful and deliberate. At least as of the 

date of this Complaint, ASUS has infringed and continues to infringe the ’313 Patent despite an 

objectively high likelihood that its actions constituted infringement. 

64. Samsung has been and will continue to be injured and damaged by ASUS’s 

infringement of the ’313 Patent. 

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ADDITIONAL ALLEGATIONS REGARDING INDIRECT INFRINGEMENT

65. Samsung repeats and re-alleges each and every allegation of the foregoing 

paragraphs as though fully set forth herein. 

66. ASUS has knowledge of the ’313 Patent at least as of the date of filing of this 

Complaint.

67. Upon information and belief, at least as of the filing date of this Complaint and with 

knowledge of the ’313 Patent, ASUS is infringing the ’313 Patent under 35 U.S.C. § 271(b) by 

knowingly and intentionally inducing others to directly infringe the ’313 Patent. 

68. For example, upon information and belief, ASUS induces end-users to directly 

infringe (literally and/or under the doctrine of equivalents) the ’313 Patent by using the Accused 

Products in the United States. Upon information and belief, ASUS takes active steps, directly 

and/or through contractual relationships with others, with the specific intent, or at the very least, 

willful blindness, to cause them to use the Accused Products in a manner that infringes at least 

claim 1 of the ’313 Patent. Upon information and belief, ASUS is performing these steps, which 

constitute induced infringement with the knowledge of the ’313 Patent and with the knowledge 

that the induced acts constitute infringement. Upon information and belief, ASUS is aware that the 

normal and customary use of the Accused Products by ASUS’s customers would infringe the ’313 

Patent. ASUS’s inducement is ongoing. 

69. Upon information and belief, at least as of the filing date of this Complaint and with 

knowledge of the ’313 Patent, ASUS has also induced its affiliates and/or third-party 

manufacturers, shippers, distributors, retailers, or other persons acting on their or their affiliates’ 

behalf, to directly infringe (literally and/or under the doctrine of equivalents) the ’313 Patent by 

importing into the United States and/or selling or offering to sell in the United States the Accused 

Products. Upon information and belief, ASUS takes active steps, directly and/or through 

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contractual relationships with others, with the specific intent, or at the very least, willful blindness,

to cause such persons to import, sell, or offer to sell the Accused Products in a manner that infringes 

at least claim 1 of the ’313 Patent. Upon information and belief, such steps by ASUS include, 

among other things, making or selling the Accused Products outside of the United States for 

importation into or sale in the United States, knowing that such importation or sale would occur; 

and directing, facilitating, or influencing ASUS’s subsidiaries, affiliates or third party 

manufacturers, shippers, distributors, retailers, or other persons acting on its or their behalf, to 

import, sell, or offer to sell the Accused Products in an infringing manner. ASUS performs these 

steps, which constitute induced infringement, with the knowledge of the ’313 Patent and with the 

knowledge that the induced acts would constitute infringement. ASUS performssuch steps in order 

to profit from the eventual sale of the Accused Products in the United States. ASUS’s inducement 

is ongoing.

70. Upon information and belief, at least as of the filing date of this Complaint and with 

knowledge of the ’313 Patent, ASUS is infringing the ’313 Patent under 35 U.S.C. § 271(c). The 

Accused Products are made or especially adapted for use that results in an infringement of the ’313

Patent. The Accused Products include features that are not staple articles of commerce suitable for 

substantial noninfringing uses. The Accused Products are a material part of the invention of the 

’313 Patent. The Accused Products are also sold, offered for sale, and used in configurations that 

do not have substantial non-infringing uses. The intended, normal use of the Accused Products 

results in infringement of the ’313 Patent. ASUS’s contributory infringement is ongoing.

71. ASUS’s acts of indirect infringement as stated herein have caused injury and 

damage to Samsung, and will continue to cause additional injury and damage to Samsung in the 

future.

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COUNT III

DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’878 PATENT 

72. Samsung repeats and re-alleges each and every allegation of the foregoing 

paragraphs as though fully set forth herein. 

73. Samsung has not infringed and does not infringe any valid and enforceable claim 

of the ’878 patent, directly, indirectly, literally or under the doctrine of equivalents, or in any other 

manner. 

74. There is an actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202, 

between ASUS and Samsung concerning the non-infringement of the ’878 Patent.

75. Samsung is entitled to a declaratory judgment that Samsung has not infringed and 

do not infringe any valid and enforceable claim of the ’878 patent, directly, indirectly, literally or 

under the doctrine of equivalents, or in any other manner. 

COUNT IV

DECLARATORY JUDGMENT OF INVALIDITY AND/OR CORRECTION 

OF INVENTORSHIP OF THE ’878 PATENT 

76. Samsung repeats and re-alleges each and every allegation of the foregoing 

paragraphs as though fully set forth herein. 

77. The claims of the ’878 Patent are invalid for failure to satisfy one or more of the 

requirements of the Patent Act, 35 U.S.C. § 1 et seq., including but not limited to, the conditions 

of patentability set forth in 35 U.S.C. §§ 101, 102, 103, 112, 116 and/or 256. Additionally and/or 

alternatively, each claim of the ’878 Patent is invalid for failing to name the correct inventors of 

the claimed subject matter, if inventorship cannot be corrected pursuant to 35 U.S.C. § 256. 

78. There is an actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202, 

between ASUS and Samsung concerning the invalidity of the ’878 Patent. 

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79. Defendants are entitled to a declaratory judgment that all claims of the ’878 Patent 

are invalid for failure to satisfy one or more requirements of the Patent Act, 35 U.S.C. § 1, et seq. 

Additionally and/or alternatively, Samsung is entitled to an Order from the Court correcting of the 

inventorship of the ’878 Patent pursuant to 35 U.S.C. § 256 and assigning the ’878 Patent to 

Samsung. 

COUNT V 

DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’052 PATENT 

80. Samsung repeats and re-alleges each and every allegation of the foregoing 

paragraphs as though fully set forth herein. 

81. Samsung has not infringed and does not infringe any valid and enforceable claim 

of the ’052 Patent, directly, indirectly, literally or under the doctrine of equivalents, or in any other 

manner. 

82. There is an actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202, 

between ASUS and Samsung concerning the non-infringement of the ’052 Patent.

83. Samsung is entitled to a declaratory judgment that Samsung has not infringed and 

do not infringe any valid and enforceable claim of the ’052 Patent, directly, indirectly, literally or

under the doctrine of equivalents, or in any other manner. 

COUNT VI 

DECLARATORY JUDGMENT OF INVALIDITY OF THE ’052 PATENT 

84. Samsung repeats and re-alleges each and every allegation of the foregoing 

paragraphs as though fully set forth herein. 

85. The claims of the ’052 Patent are invalid for failure to satisfy one or more of the 

requirements of the Patent Act, 35 U.S.C. § 1 et seq., including but not limited to, the conditions 

of patentability set forth in 35 U.S.C. §§ 101, 102, 103, 112, 116 and/or 256. 

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86. There is an actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202, 

between ASUS and Samsung concerning the invalidity of the ’052 Patent.

87. Defendants are entitled to a declaratory judgment that all claims of the ’052 Patent 

are invalid for failure to satisfy one or more requirements of the Patent Act, 35 U.S.C. § 1, et seq. 

COUNT VII

DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’658 PATENT 

88. Samsung repeats and re-alleges each and every allegation of the foregoing 

paragraphs as though fully set forth herein. 

89. Samsung has not infringed and does not infringe any valid and enforceable claim 

of the ’658 Patent, directly, indirectly, literally or under the doctrine of equivalents, or in any other 

manner. 

90. There is an actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202, 

between ASUS and Samsung concerning the non-infringement of the ’658 Patent.

91. Samsung is entitled to a declaratory judgment that Samsung has not infringed and 

do not infringe any valid and enforceable claim of the ’658 Patent, directly, indirectly, literally or 

under the doctrine of equivalents, or in any other manner. 

COUNT VIII

DECLARATORY JUDGMENT OF INVALIDITY OF THE ’658 PATENT 

92. Samsung repeats and re-alleges each and every allegation of the foregoing 

paragraphs as though fully set forth herein. 

93. The claims of the ’658 Patent are invalid for failure to satisfy one or more of the 

requirements of the Patent Act, 35 U.S.C. § 1 et seq., including but not limited to, the conditions 

of patentability set forth in 35 U.S.C. §§ 101, 102, 103, 112, 116 and/or 256. 

94. There is an actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202, 

between ASUS and Samsung concerning the invalidity of the ’658 Patent. 

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95. Defendants are entitled to a declaratory judgment that all claims of the ’658 Patent 

are invalid for failure to satisfy one or more requirements of the Patent Act, 35 U.S.C. § 1, et seq. 

COUNT IX

DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’759 PATENT 

96. Samsung repeats and re-alleges each and every allegation of the foregoing 

paragraphs as though fully set forth herein. 

97. Samsung has not infringed and does not infringe any valid and enforceable claim 

of the ’759 Patent, directly, indirectly, literally or under the doctrine of equivalents, or in any other 

manner. 

98. There is an actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202, 

between ASUS and Samsung concerning the non-infringement of the ’759 Patent.

99. Samsung is entitled to a declaratory judgment that Samsung has not infringed and 

do not infringe any valid and enforceable claim of the ’759 Patent, directly, indirectly, literally or 

under the doctrine of equivalents, or in any other manner. 

COUNT X 

DECLARATORY JUDGMENT OF INVALIDITY OF THE ’759 PATENT 

100. Samsung repeats and re-alleges each and every allegation of the foregoing 

paragraphs as though fully set forth herein. 

101. The claims of the ’759 Patent are invalid for failure to satisfy one or more of the 

requirements of the Patent Act, 35 U.S.C. § 1 et seq., including but not limited to, the conditions 

of patentability set forth in 35 U.S.C. §§ 101, 102, 103, 112, 116 and/or 256. 

102. There is an actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202, 

between ASUS and Samsung concerning the invalidity of the ’759 Patent. 

103. Defendants are entitled to a declaratory judgment that all claims of the ’759 Patent 

are invalid for failure to satisfy one or more requirements of the Patent Act, 35 U.S.C. § 1, et seq. 

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COUNT XI

DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’585 PATENT 

104. Samsung repeats and re-alleges each and every allegation of the foregoing 

paragraphs as though fully set forth herein. 

105. Samsung has not infringed and does not infringe any valid and enforceable claim 

of the ’585 Patent, directly, indirectly, literally or under the doctrine of equivalents, or in any other 

manner. 

106. There is an actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202, 

between ASUS and Samsung concerning the non-infringement of the ’585 Patent.

107. Samsung is entitled to a declaratory judgment that Samsung has not infringed and 

do not infringe any valid and enforceable claim of the ’585 Patent, directly, indirectly, literally or 

under the doctrine of equivalents, or in any other manner. 

COUNT XII

DECLARATORY JUDGMENT OF INVALIDITY OF THE ’585 PATENT 

108. Samsung repeats and re-alleges each and every allegation of the foregoing 

paragraphs as though fully set forth herein. 

109. The claims of the ’585 Patent are invalid for failure to satisfy one or more of the 

requirements of the Patent Act, 35 U.S.C. § 1 et seq., including but not limited to, the conditions 

of patentability set forth in 35 U.S.C. §§ 101, 102, 103, 112, 116 and/or 256. 

110. There is an actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202, 

between ASUS and Samsung concerning the invalidity of the ’585 Patent. 

111. Defendants are entitled to a declaratory judgment that all claims of the ’585 Patent 

are invalid for failure to satisfy one or more requirements of the Patent Act, 35 U.S.C. § 1, et seq. 

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PRAYER FOR RELIEF

WHEREFORE, Samsung respectfully prays for entry of a judgment in its favor and against 

ASUS as follows: 

A. Declare that Counterclaim-Defendants have failed to satisfy their obligation to 

negotiate in good faith; 

B. Award Samsung damages resulting from Counterclaim-Defendants’ breach of their 

obligation to negotiate in good faith; 

C. Declare that ASUS has infringed one or more claims of the ’313 Patent, and such 

infringement has been willful; 

D. Award SEC all damages adequate to compensate Samsung for ASUS’s 

infringement of the ’313 Patent, and such damages be trebled under 35 U.S.C. § 284 and awarded 

to SEC, with pre- and post-judgment interest;

E. Declare that Samsung has not infringed and does not infringe any claim of the 

Patents-in-Suit directly, indirectly, literally or under the doctrine of equivalents, or otherwise; 

F. Declare that all claims of the Patents-in-Suit are invalid, and/or correct the 

inventorship of at least the ’878 Patent and assign at least the ’878 Patent to Samsung; 

G. Adjudge and decree that this case is an exceptional case under 35 U.S.C. § 285, and 

award Samsung attorneys’ fees, costs, and all expenses incurred in this action; 

H. Award Samsung all actual and compensatory damages; 

I. Award Samsung all equitable relief the Court deems just and proper; and

J. Award Samsung such other and further relief which may be requested and to which 

it is entitled. 

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JURY DEMAND

Pursuant to Rule 38 of the Federal Rules of Civil Procedure, Samsung respectfully 

demands a trial by jury on all issues so triable in this action. 

Date: March 25, 2024 By: /s/ Nicholas Brown

Richard Edlin

New York Bar No. 2051696 

Email: edlinr@gtlaw.com

Thomas D. Pease (pro hac vice)

New York Bar No. 2671741 

Email: thomas.pease@gtlaw.com

Vimal M. Kapadia

New York Bar No. 5269543 

Email: vimal.kapadia@gtlaw.com

Kathryn E. Albanese 

New York Bar No. 5748033 

Email: katie.albanese@gtlaw.com

GREENBERG TRAURIG LLP

One Vanderbilt Avenue 

New York, NY 10017 

Telephone: (212) 801-9200 

Facsimile: (212) 801-6400 

Nicholas A. Brown

California Bar No. 198210 

Email: Nicholas.brown@gtlaw.com 

GREENBERG TRAURIG LLP

101 Second Street, Suite 2200 

San Francisco, CA 94105 

Telephone: (415) 655-1300 

Facsimile: (415) 707-2010) 

Stephen M. Ullmer

Colorado Bar No. 52803 

Email: ullmers@gtlaw.com

GREENBERG TRAURIG LLP

1144 15th Street, Suite 3300 

Denver, CO 80202 

Telephone: (303) 572-6579 

Facsimile: (303) 572-6500 

Melissa R. Smith

State Bar No. 24001351 

Email: melissa@gillamsmithlaw.com

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- 42 -

GILLAM & SMITH, LLP

303 S Washington Avenue

Marshall, TX 75670

Telephone: (903) 934-8450

Facsimile: (903) 934-9257

Counsel for Defendants and CounterclaimPlaintiffs Samsung Electronics Co., Ltd., 

Samsung Electronics America, Inc., and 

Samsung Research America

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