Samsung v. Staton Techiya (23-2422): Cross-Appeal Voluntarily Dismissed at Federal Circuit
Samsung Electronics and Samsung Electronics America voluntarily dismissed their Federal Circuit cross-appeal against Staton Techiya, LLC in a patentability dispute over US9491542B2, an automatic sound pass-through system for earphones. The case resolved in 133 days, with each side bearing its own costs, while a companion appeal (No. 2023-2387) continues.
Swift cross-appeal exit in a Federal Circuit earphone patent patentability dispute
On September 26, 2023, Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. filed cross-appeal No. 2023-2422 at the Court of Appeals for the Federal Circuit, contesting a ruling related to the patentability of US9491542B2 — a patent held by Staton Techiya, LLC covering an automatic sound pass-through method and system for earphones. Arnold & Porter Kaye Scholer LLP represented Samsung; PV Law LLP represented Staton Techiya.
The cross-appeal was resolved on February 6, 2024, when the parties filed a joint stipulation of voluntary dismissal under Federal Rule of Appellate Procedure 42(b). The court ordered each side to bear its own costs as to Appeal No. 2023-2422. Critically, the dismissal was limited to the cross-appeal only; a companion proceeding, Appeal No. 2023-2387, was explicitly preserved and continued, with Samsung’s response brief due February 14, 2024.
The 133-day resolution of the cross-appeal is notably swift for Federal Circuit patent proceedings, suggesting the parties may have reached a tactical or substantive agreement regarding the scope of arguments to pursue, or that Samsung elected to consolidate its position within the surviving appeal. The public record does not specify whether the voluntary dismissal was with or without prejudice, nor does it disclose any financial settlement terms. The continued existence of Appeal No. 2023-2387 means the broader patentability dispute over US9491542B2 remains unresolved.
Filing to resolution in 133 days
133 days — faster than the majority of Federal Circuit patent appeal proceedings
How Appeal No. 2023-2422 was dismissed and what remains live
FRAP 42(b): Voluntary dismissal by joint stipulation
Federal Rule of Appellate Procedure 42(b) permits parties to voluntarily dismiss an appeal by filing a signed stipulation. Here, both Samsung and Staton Techiya agreed to dismiss cross-appeal No. 2023-2422, and the court ordered the dismissal accordingly. This is a consensual procedural exit — neither party was forced out by a merits ruling.
Consensual procedural exitWith or without prejudice? The public record is silent
A dismissal ‘with prejudice’ bars the same claims from being refiled; ‘without prejudice’ leaves that door open. The court order dismissing Appeal No. 2023-2422 does not specify either. FRAP 42(b) dismissals can carry either status depending on the stipulation’s terms. Practitioners should treat the prejudice question as unresolved from publicly available documents alone.
Prejudice status: not disclosedAppeal No. 2023-2387 survives and continues
The dismissal of 23-2422 is not a full resolution of the Samsung–Staton Techiya dispute. The court’s order explicitly preserves Appeal No. 2023-2387, updates the official caption, and set Samsung’s response brief deadline for February 14, 2024. The patentability of US9491542B2 remains under active appellate review in that proceeding.
Broader dispute ongoingEach side bears its own costs — no prevailing party signal
The court ordered that each party bear its own costs as to Appeal No. 2023-2422. This symmetric cost allocation is consistent with a negotiated exit rather than a contested outcome. It avoids any formal designation of a ‘prevailing party’ on the cross-appeal, which may carry significance for any future fee or cost arguments in the surviving appeal.
Symmetric cost allocationFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Samsung Electronics Co., Ltd. | Company | Global consumer electronics manufacturer — appellant in patentability cross-appeal over US9491542B2Search in Eureka ↗ |
| Defendant | Staton Techiya, LLC | Company | Staton Techiya, LLC — patent assertion entity holding US9491542B2, earphone audio technologySearch in Eureka ↗ |
| Plaintiff counsel | Ali Reza Sharifahmadian | Attorney | Counsel for Samsung Electronics Co., Ltd.Search in Eureka ↗ |
| Defendant counsel | Jacob Snodgrass | Attorney | Counsel for Staton Techiya, LLCSearch in Eureka ↗ |
| Presiding judge | Judge / | Chief Judge | Court of Appeals for the Federal Circuit — Chief JudgeSearch in Eureka ↗ |
Stipulation of dismissal — official text
The court’s order reflects a fully consensual exit from Appeal No. 2023-2422 via joint stipulation under FRAP 42(b). Notably, the dismissal is scoped exclusively to the cross-appeal — the order simultaneously preserves and recaptions the companion Appeal No. 2023-2387, confirming the broader patentability contest is unresolved. The symmetric cost allocation implies neither party is treated as a prevailing party on this appeal, limiting its use as a fee-shifting precedent in subsequent proceedings.
US9491542B2 — Automatic Sound Pass-Through for Earphones
US9491542B2 (application number US14/600349) protects an automatic sound pass-through method and system for earphones — technology that enables earphones to selectively or automatically allow ambient environmental sound to pass through to the wearer. This functionality is central to modern ‘transparency mode’ features found in premium true wireless earphones. The patent sits at the intersection of audio signal processing and wearable device design, a domain of growing commercial and IP significance.
As earphone manufacturers race to differentiate on features like active noise cancellation and transparency/ambient modes, patents covering the underlying methods — such as automatic pass-through detection and switching — carry significant licensing leverage. US9491542B2 is being actively asserted against Samsung, one of the world’s largest consumer electronics companies, which itself competes in the premium earphone segment. The outcome of Appeal No. 2023-2387 could set meaningful precedent for how this class of earphone functionality is treated under US patent law.
Should your product team run an FTO against US9491542B2?
Any company designing, manufacturing, or distributing earphones, hearables, or wearable audio devices with ambient sound transparency, pass-through, or automatic environmental awareness features should treat US9491542B2 as a live FTO risk. The patent is actively enforced at the Federal Circuit level against a major OEM, and its validity has not been finally resolved. This is not a dormant or abandoned patent — it is the subject of ongoing appellate patentability proceedings.
PatSnap Eureka’s FTO Search Agent can map the claims of US9491542B2 against your product’s technical architecture, identify prior art relevant to any invalidity arguments, and flag related patents in Staton Techiya’s portfolio that may present parallel risk. Claim monitoring for this patent and companion applications is strongly advisable for any team working on sound transparency or pass-through features in wearable audio.
Run a freedom-to-operate analysis on US9491542B2 to assess your product’s exposure
Run FTO in Eureka →Similar Federal Circuit earphone and audio patent invalidity appeals
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What this case signals for the wearable audio IP landscape
A voluntarily dismissed Federal Circuit cross-appeal with a live companion proceeding is a strategic signal worth monitoring closely.
Companion appeal keeps the patent’s validity in play
US9491542B2 has not been invalidated or confirmed valid by this dismissal. Appeal No. 2023-2387 continues, meaning any company operating in the automatic sound pass-through or ambient audio technology space should monitor that proceeding’s outcome before making product or licensing decisions.
Voluntary FRAP 42(b) exits often signal tactical repositioning
When a large defendant like Samsung voluntarily drops a cross-appeal while the main appeal survives, it typically suggests a narrowing of contested issues rather than capitulation. This pattern is consistent with parties streamlining arguments for the merits panel rather than settling the underlying dispute outright.
Samsung v Staton — key questions answered
Appeal No. 23-2422 was voluntarily dismissed on February 6, 2024, via joint stipulation under FRAP 42(b). Samsung and Staton Techiya agreed to dismiss the cross-appeal, with each side bearing its own costs. A companion appeal, No. 2023-2387, remains active.
The patent in dispute is US9491542B2, which covers an automatic sound pass-through method and system for earphones. It relates to technology allowing earphones to automatically transmit or process ambient environmental sound — a feature class known commercially as ‘transparency mode.’
The public court order does not specify whether the voluntary dismissal of Appeal No. 2023-2422 was with or without prejudice. The order is silent on this point, and the prejudice status cannot be confirmed from publicly available records alone.
No. The dismissal applies only to cross-appeal No. 2023-2422. The companion proceeding, Appeal No. 2023-2387, was explicitly preserved by the same court order. Samsung’s response brief in that appeal was due February 14, 2024, indicating the patentability dispute over US9491542B2 remains active.
Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. are represented by Arnold & Porter Kaye Scholer LLP, with Ali Reza Sharifahmadian listed as counsel. Staton Techiya, LLC is represented by PV Law LLP, with Jacob Snodgrass listed as counsel.
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