As anticipated, Texas NPE 5G IP Holdings LLC, an entity associated with monetization firm IPValuation Partners LLC (d/b/a IPVal), has filed its first lawsuit over a portfolio of former FG Innovation Company Ltd. (f/k/a FG IP Innovation Company Ltd.) (FGI) patents. The NPE accuses Samsung (4:21-cv-00622) of infringing three of them, pleading that the wireless communications patents have been declared essential to the 5G Standard, the "promise" of which—"increased bandwidth and lowered latency"—FGI's technology purportedly helped to "deliver". The accused products are Samsung's smartphones and tablets, the new complaint identifying a list of Galaxy-branded products.

The plaintiff contends that because Samsung was "heavily involved in the development of the 5G Standard", it knew or should have known of each of the three asserted patents (10,624,150; 10,813,163; 10,868,649), as well as infringement thereof. 5G IP Holdings characterizes the '150 patent as generally related "to providing and implementing a procedure for radio resource control ('RRC') resumption for a Narrow-Band Internet of Things". It issued in April 2020 with estimated priority in January 2017, based on the filing of a provisional application. The '150 patent belongs to a family of two, the second member of which issued just this past May.

In its complaint, the plaintiff describes the '163 patent as broadly directed to "a method and apparatus for controlling discontinuous reception ('DRX') in New Radio ('NR')", purportedly "accommodate[ing] a more flexible frame structure" than prior art systems. Comprising a family of one, the '163 patent issued in October 2020 with estimated priority in September 2017, based on the filing of another provisional.

Finally, the '649 patent is characterized as generally pertaining "to a method and apparatus for signaling bandwidth part ('BWP') indices in wireless communications", allegedly "accommodating" a variety of communications configurations and thereby improving over prior art systems. Also comprising a family of one, it issued to FGI in December 2020 with an estimated priority date in December 2016, based on a third provisional application.

Jason Bourgeois, an IPVal principal and "portfolio manager", formed 5G IP Holdings in Texas in February 2021, the NPE acquiring ten issued US patents from FGI in May. All but one of those assets—the '163 patent—name Chie-Ming Chou as an inventor. Chou identifies himself as the CEO of two present enterprises: FGI and Spectacular Co., Ltd., founded in June 2020 to engage in "standardization" and describing itself as having shown "continuous dedication in researching and developing wireless communication and Versatile Video Coding (VVC) technologies, including but not limited to 5G New Radio system design, V2X, Industrial Network, AR/VR, and 5G+8K applications". Several of the individuals named as coinventors identify themselves as having previously worked with the Foxconn Advanced Communication Academy (FACA), a research operation established as part of a 5G initiative of Hon Hai Precision Industry.

Chou reports past positions with Industrial Technology Research Institute (ITRI), a non-profit Taiwanese research and development foundation (engineer, from August 2005 through September 2011); National Chiao Tung University (NCTU), a public research university in Hsinchu, Taiwan (researcher, from October 2011 through November 2015); and Foxconn (i.e., Hon Hai) (various positions, from December 2015 through June 2020).

Currently available USPTO records suggest that FG Innovation still holds, after the transfer to IPVal's 5G IP Holdings, more than 160 active US patents, as well as over 400 pending applications. None of the assets assigned to 5G IP Holdings, which include two US patents issuing on May 25, 2021, appears to have been previously litigated. FG Innovation's portfolio can be viewed on RPX Insight here, with 5G IP Holdings's new assets available here.

IPVal was cofounded in August 2012 by Bourgeois, with Adam Baumli and Jonathan Szarzynski. (In August 2018, Szarzynski left IPVal and formed Endpoint IP LLC.) IPVal has initiated around 40 litigation campaigns across a wide range of technology areas in the last few years. 5G IP Holdings is represented by Fisch Sigler LLP. 8/6, Eastern District of Texas.

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