Paul Hastings' IP Practice Steers Samsung to Victory Against Multiple Patent Claims by Wireless Technology Company NuCurrent

February 24, 2021

Washington, D.C. – A dual-pronged effort by Paul Hastings litigators has achieved a decisive victory on behalf of Samsung Electronics at the U.S. Patent & Trademark Office, which invalidated challenged claims of six patents for wireless phone charging, five of which had been asserted by NuCurrent Inc.

The Paul Hastings lawyers first earned a win for Samsung, successfully petitioning to move the litigation from its original filing jurisdiction in the Eastern District of Texas to the Southern District of New York, and then defeating NuCurrent’s request for a preliminary injunction, aimed at stopping inter partes review at the USPTO.

The Paul Hastings lawyers won across the board for Samsung, with the PTAB finding a total of 170 claims unpatentable, including all of the claims that NuCurrent accused Samsung of infringing.  They also thwarted NuCurrent’s multiple attempts at amending several claims during the course of the proceedings.  

The PTAB effort has been led by partner Naveen Modi, global vice chair of Paul Hastings’ IP Group and head of the firm’s Patent Office practice, and IP Litigation partner, Joseph Palys, along with attorneys Paul AndersonChetan BansalHoward Herr, and David Valente.

The district court litigation team has been led by partners Allan Soobert and Jeff Pade, along with partner Mark Pollack and attorneys Tad RichmanDavid Valente, and Yejun Lee.

The outcome reflects the seamless fusion of the firm’s IP litigation and PTAB expertise. It followed a coordinated, multifaceted strategy, with Los Angeles partner Jong Han Kim overseeing all aspects of the case.

Background on Samsung-NuCurrent Litigation

Samsung and NuCurrent had at one time discussed a business collaboration, but ultimately did not proceed. After Samsung released multiple iterations of smartphones with wireless charging coils, NuCurrent filed a lawsuit in the plaintiff-friendly Eastern District of Texas, claiming infringement of its patents and misappropriation of trade secrets for coiled antennas that facilitate wireless charging.

The Paul Hastings litigation team flipped the script and successfully argued that the companies’ non-disclosure agreement mandated the case be transferred and heard in the district court of New York, rather than NuCurrent’s preferred venue in Texas. Samsung then moved for review of the disputed patents at the PTAB, arguing that NuCurrent’s claims were invalidated by obviousness and inadequate written description.

NuCurrent sought to block the PTAB proceedings by moving for a preliminary injunction, arguing that the NDA likewise required any validity challenges to occur in New York, not the Patent Office.  The Paul Hastings team defeated the preliminary injunction, convincing the New York court that the proper interpretation did not preclude invalidity challenges before the PTAB—paving the way for the patents to be challenged and invalidated. During the PTAB proceedings, NuCurrent attempted to amend some of its claims in an effort to save its patents, but its two rounds of motions to amend were also rejected as the PTAB agreed with the Paul Hastings arguments across the board.

Ultimately, the PTAB issued nine final decisions covering six patents in three families, finding all of them invalid and unpatentable due to anticipation, obviousness, indefiniteness, lack of written description, or combinations thereof.

The Samsung win comes on the heels of the IP Practice securing a significant victory for Chevron Oronite Company, over lubricating oil used in internal combustion engines, invalidating a patent asserted against Chevron. There, Naveen Modi led the Paul Hastings IP team in parallel district court litigation, at the PTAB, and in the appeal.

The Paul Hastings IP Practice is ranked Tier 1 nationally for IP and Patent Litigation by numerous publications, including The Legal 500 and Managing IPThe Legal 500 also has recognized the firm’s Trade Secrets practice in their Intellectual Property - Trade Secrets (litigation and non-contentious matters) ranking.

Paul Hastings IP lawyers have been selected numerous times as Law360’s “Most Valuable Players” and as Trailblazers by The National Law JournalThe RecorderThe New York Law Journal, and The Daily JournalIAM also regularly recognizes Paul Hastings’ IP practice among “The World’s Leading Patent Professionals,” for patent litigation, Federal Circuit appeals, ITC 337 Investigations, and post-grant proceedings. BTI Consulting lists the IP Practice as a “Go-To Litigation Firm” and “Best for Complex IP Litigation” in its annual “Intellectual Property Outlook” report. Paul Hastings’ IP Practice has also been recognized as the “IP Transatlantic Team of the Year” by The American Lawyer.

At Paul Hastings, our purpose is clear — to help our clients and people navigate new paths to growth. With a strong presence throughout Asia, Europe, Latin America, and the U.S., Paul Hastings is recognized as one of the world’s most innovative global law firms. For more, visit https://www.paulhastings.com.

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