Samsung v. Staton Techiya: Federal Circuit Cross-Appeal Voluntarily Dismissed
Samsung Electronics voluntarily dismissed its cross-appeal (No. 23-2423) against Staton Techiya, LLC at the Federal Circuit, concerning US8254591B2 — a patent covering methods and devices for audio recording. The dismissal was by joint stipulation under FRAP 42(b), with each side bearing its own costs, while the companion appeal No. 23-2389 remains active.
A joint stipulation ends Samsung’s cross-appeal — but the broader dispute continues
Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. filed cross-appeal No. 23-2423 at the Court of Appeals for the Federal Circuit on 26 September 2023, challenging proceedings relating to US8254591B2 — a patent held by Staton Techiya, LLC covering methods and devices for audio recording. The underlying dispute concerns patentability, framed as an invalidity or cancellation action, suggesting Samsung had sought to contest the validity of Staton Techiya’s audio-recording patent at the appellate level.
The cross-appeal was terminated on 15 May 2024 after 232 days, pursuant to a joint stipulation of voluntary dismissal filed by both parties under Federal Rule of Appellate Procedure 42(b). The Federal Circuit’s order dismissed Appeal No. 23-2423 and directed each side to bear its own costs. Critically, the order simultaneously revised the official caption for the companion appeal, No. 23-2389, confirming that a related proceeding between the same parties remains pending before the Federal Circuit’s merits panel.
The voluntary and joint nature of the dismissal suggests the parties reached an accommodation — at minimum a procedural one — regarding this specific cross-appeal, though the public record does not disclose any underlying settlement terms or licensing arrangement. The survival of Appeal No. 23-2389 means the broader patent validity dispute over US8254591B2 is unresolved. The symmetric cost ruling, with neither party recovering fees, is consistent with a negotiated exit rather than a concession by either side.
Filing to Voluntary dismissal in 232 days
232-day appellate proceeding — typical Federal Circuit appeals run 12–24 months
Cross-appeal voluntarily dismissed: what the FRAP 42(b) exit means for both parties
FRAP 42(b) voluntary dismissal ends this cross-appeal without merits
Federal Rule of Appellate Procedure 42(b) permits parties to dismiss an appeal by filing a signed stipulation. Unlike a court-initiated dismissal, this reflects a mutual decision to withdraw Appeal No. 23-2423. Crucially, no merits determination was made — the Federal Circuit issued no ruling on the validity of US8254591B2 in this proceeding. The patent’s status is shaped by other proceedings, including the still-active Appeal No. 23-2389.
No merits ruling issuedPublic record is silent on whether dismissal is with or without prejudice
The order records a voluntary dismissal under FRAP 42(b) but does not specify whether it is with or without prejudice. A with-prejudice dismissal would bar Samsung from re-raising the same cross-appeal arguments; a without-prejudice dismissal would preserve that option. The distinction matters for enforcement strategy, but the public record does not resolve it. Practitioners should treat the character of this dismissal as formally unconfirmed absent further disclosure.
Prejudice character unconfirmedSamsung exits this cross-appeal while companion appeal proceeds
By stipulating to dismissal, Samsung withdrew its cross-appeal arguments in No. 23-2423. However, the continued existence of Appeal No. 23-2389 — referenced and recaptioned in the same order — indicates Samsung or Staton Techiya has a separate appeal still before the Federal Circuit’s merits panel. Samsung’s exposure to the audio recording patent remains live until that companion proceeding concludes.
Companion appeal No. 23-2389 activeAudio recording patent dispute unresolved; sector exposure persists
US8254591B2, covering methods and devices for audio recording, remains a live enforcement instrument while Appeal No. 23-2389 is pending. Consumer electronics and audio hardware manufacturers operating in this space cannot treat the dismissal of the cross-appeal as a clearance signal. The patent’s enforceability and validity will only be authoritatively settled when the Federal Circuit rules on the remaining appeal. Competitors should monitor No. 23-2389 closely.
Patent enforceability unresolvedFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Samsung Electronics Co., Ltd. | Company | Global consumer electronics manufacturer — cross-appellant in US8254591B2 invalidity proceedingsSearch in Eureka ↗ |
| Co-Plaintiff | Samsung Electronics America, Inc. | Company | Search in Eureka ↗ |
| Defendant | Staton Techiya, LLC | Company | Staton Techiya, LLC — patent assertion entity holding US8254591B2 for audio recording technologySearch in Eureka ↗ |
| Plaintiff counsel | Ali Reza Sharifahmadian | Attorney | Counsel for Samsung Electronics Co., Ltd.Search in Eureka ↗ |
| Plaintiff law firm | Arnold & Porter Kaye Scholer LLP | Law Firm | Representing Samsung Electronics Co., Ltd.Search in Eureka ↗ |
| Defendant counsel | Jacob Snodgrass | Attorney | Counsel for Staton Techiya, LLCSearch in Eureka ↗ |
| Defendant law firm | PV Law LLP | Law Firm | Representing Staton Techiya, LLCSearch in Eureka ↗ |
| Presiding judge | Judge N/A | Judge | Court of Appeals for the Federal CircuitSearch in Eureka ↗ |
Official order — verbatim text
The Federal Circuit’s order in No. 23-2423 is procedural rather than substantive: it records a joint stipulation of voluntary dismissal under FRAP 42(b) and imposes no merits finding on the validity or enforceability of US8254591B2. The symmetric cost ruling — each side bearing its own — is consistent with a mutually agreed exit. Notably, the order simultaneously recaptions companion Appeal No. 23-2389, confirming the underlying validity dispute remains before the Federal Circuit’s merits panel and that this dismissal narrows rather than terminates the litigation.
US8254591B2 — Method and Device for Audio Recording
US8254591B2, filed under application number US12/024842, protects methods and devices for audio recording. The patent sits within the audio capture and signal-processing domain — a technically dense area covering microphone array management, noise suppression, and audio data capture workflows embedded in consumer and professional electronics. Its designation as the subject of an invalidity or cancellation action at the Federal Circuit confirms it has been subjected to formal patentability scrutiny, placing its claim scope and prosecution history under appellate examination.
For consumer electronics manufacturers, particularly those shipping smartphones, earbuds, smart speakers, or wearables with integrated audio recording capability, US8254591B2 represents a potentially broad enforcement instrument. Staton Techiya’s decision to assert this patent against Samsung — one of the world’s largest consumer electronics producers — signals confidence in the patent’s claim scope and litigation viability. The unresolved Federal Circuit appeal in No. 23-2389 means the patent’s validity remains contested, creating continued uncertainty for any competitor whose products incorporate audio recording methods that may overlap with the patent’s claims.
Should your audio recording product be cleared against US8254591B2?
Any company shipping hardware or software that incorporates audio recording methods — smartphones, wireless earbuds, smart home devices, voice assistants, conferencing equipment, or wearables — should evaluate exposure to US8254591B2. Staton Techiya has demonstrated willingness to pursue this patent through Federal Circuit appeal proceedings against a tier-one defendant. The patent’s validity is under active appellate review in No. 23-2389, but it remains presumptively valid under 35 U.S.C. § 282 until a final adverse ruling.
PatSnap Eureka’s FTO Search Agent can map US8254591B2’s independent claims against your product architecture, identify prior art cited during prosecution, surface any inter partes review or post-grant proceedings on record, and flag claim language that may read on specific audio capture implementations. With Appeal No. 23-2389 still pending, a current FTO assessment provides the clearest available risk baseline ahead of any Federal Circuit ruling that could strengthen or invalidate the patent.
Run a freedom-to-operate analysis on US8254591B2 to assess your product’s exposure
Run FTO in Eureka →Similar Federal Circuit audio recording patent appeals and PAE enforcement cases
Cases involving audio recording patent validity challenges at the Federal Circuit, particularly those brought by patent assertion entities against consumer electronics manufacturers.
What this case signals for the audio technology IP landscape
A joint dismissal at the Federal Circuit level rarely ends a dispute — here it narrows it, with material consequences for audio IP stakeholders.
Cross-appeal exits signal negotiation, not capitulation — watch No. 23-2389
When both parties jointly stipulate to dismiss a cross-appeal with symmetric cost allocation, it typically suggests a procedural realignment rather than a substantive concession. Samsung and Staton Techiya appear to have consolidated their dispute into Appeal No. 23-2389. IP teams monitoring this dispute should redirect attention to that docket for the definitive Federal Circuit ruling on US8254591B2.
Audio recording patent remains enforceable pending Federal Circuit resolution
US8254591B2 has not been invalidated or found unenforceable by this dismissal. Companies selling devices or software incorporating audio recording methods should not treat this procedural exit as a freedom-to-operate signal. An FTO analysis against US8254591B2 remains advisable for any product in this category, particularly while appellate proceedings in No. 23-2389 are outstanding.
Samsung v Staton — key questions answered
Samsung Electronics and Staton Techiya, LLC jointly stipulated to voluntarily dismiss cross-appeal No. 23-2423 at the Federal Circuit under FRAP 42(b). The dismissal was issued on 15 May 2024, 232 days after filing. No merits ruling was made on US8254591B2. Each side bears its own costs. A companion appeal, No. 23-2389, remains pending before the Federal Circuit’s merits panel.
US8254591B2 is a United States patent covering methods and devices for audio recording, filed under application US12/024842 and assigned to Staton Techiya, LLC. It is the subject of an invalidity or cancellation action at the Federal Circuit, meaning its patentability has been formally challenged. The patent remains presumptively valid under 35 U.S.C. § 282 unless and until a final adverse ruling is issued in the pending Appeal No. 23-2389.
No. The voluntary dismissal of the cross-appeal under FRAP 42(b) is a procedural termination with no merits determination. The Federal Circuit issued no ruling on the validity or enforceability of US8254591B2. The companion Appeal No. 23-2389 remains active, and the patent’s validity status will only be definitively addressed when that proceeding concludes.
FRAP 42(b) allows parties to dismiss an appeal by filing a signed stipulation agreed to by all parties. It requires no court permission and results in a dismissal without any merits adjudication. The Federal Circuit simply records the dismissal and, typically, resolves costs. Here, the court ordered each side to bear its own costs, consistent with a negotiated exit rather than a default or unilateral withdrawal.
The dismissal of cross-appeal No. 23-2423 did not end the overall dispute. The Federal Circuit’s 15 May 2024 order simultaneously recaptioned companion Appeal No. 23-2389, which remains before the merits panel. Staton Techiya’s reply brief in that appeal was due 31 May 2024. The core patentability challenge to US8254591B2 — the audio recording patent — remains unresolved and under active appellate review.
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