Staton Techiya v. Samsung: Audio Recording Patent Appeal Voluntarily Dismissed
Staton Techiya, LLC brought an infringement appeal against Samsung Electronics over US8254591B2, covering a method and device for audio recording, before the Federal Circuit. The parties jointly agreed to dismiss under Fed. R. App. P. 42(b) after just 274 days, with each side bearing its own costs.
A Federal Circuit audio patent appeal ends by mutual agreement
Staton Techiya, LLC filed appeal No. 23-2389 at the United States Court of Appeals for the Federal Circuit on 14 September 2023, asserting infringement of US8254591B2 — a patent covering a method and device for audio recording — against Samsung Electronics Co., Ltd. and its U.S. subsidiary Samsung Electronics America, Inc. The case was represented on the plaintiff side by King & Spalding LLP and PV Law LLP, and on the defense side by Arnold & Porter Kaye Scholer LLP.
The appeal was terminated on 14 June 2024, approximately nine months after filing, when the parties jointly agreed to dismiss the proceeding under Fed. R. App. P. 42(b). The Federal Circuit issued an order reflecting that agreement, dismissing the appeal with each side bearing its own costs. Because the dismissal was voluntary and the basis of termination does not specify whether it was with or without prejudice, the public record is silent on that distinction.
The 274-day duration suggests the parties may have reached a resolution — whether commercial, licensing, or strategic — prior to any substantive appellate briefing or oral argument, though nothing in the public record confirms the nature of any underlying arrangement. The absence of a merits ruling means the validity and enforceability of US8254591B2 remain formally unadjudicated at the appellate level, which has practical implications for third parties operating in the audio recording technology space.
Filing to Voluntary dismissal in 274 days
274 days — shorter than the median Federal Circuit appeal disposition timeline
Appeal voluntarily dismissed: what the Fed. R. App. P. 42(b) order means
Fed. R. App. P. 42(b): dismissal by stipulation, no merits ruling
Federal Rule of Appellate Procedure 42(b) allows parties to jointly dismiss an appeal at any time upon agreement. The Federal Circuit’s order here reflects exactly that — a procedural termination, not a judgment on the validity or infringement of US8254591B2. No claim construction, obviousness analysis, or infringement finding was issued. The appellate record closes without any substantive precedent being set.
No merits adjudicationWith or without prejudice? The public record is silent
A voluntary dismissal can be with prejudice — barring any future re-filing on the same claims — or without prejudice, preserving the right to re-litigate. The basis of termination here states ‘Voluntary dismissal’ without specifying either. Practitioners should not assume either outcome. Whether Staton Techiya retains the ability to reassert US8254591B2 against Samsung in a future action cannot be determined from the public docket alone.
Prejudice status unknownStaton Techiya exits appeal without an appellate ruling — risk and optionality remain
For Staton Techiya, the dismissal avoids a potentially adverse Federal Circuit ruling on US8254591B2, preserving the patent’s unadjudicated status. This can be strategically valuable if the underlying dispute was resolved through licensing or settlement discussions not reflected in the public record. However, it also means Staton Techiya received no appellate validation of its infringement position, leaving its enforcement posture uncertain.
No appellate win confirmedAudio recording patent remains live: third-party risk persists
Because no merits ruling was issued, US8254591B2 has not been invalidated, limited, or confirmed in scope by the Federal Circuit. Companies developing or commercialising audio recording methods and devices — including microphone array processing, in-ear recording, and consumer electronics audio capture — cannot rely on this case for clearance. An FTO analysis against US8254591B2 remains advisable for product teams in this space.
Patent enforceability unresolvedFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Staton Techiya, LLC | Company | Audio recording technology patent assertion entity — holder of US8254591B2Search in Eureka ↗ |
| Defendant | Samsung Electronics Co., Ltd. | Company | Global consumer electronics manufacturer and its U.S. subsidiary; Galaxy device makerSearch in Eureka ↗ |
| Co-Defendant | Samsung Electronics America, Inc. | Company | Search in Eureka ↗ |
| Plaintiff counsel | Bradford Cangro | Attorney | Counsel for Staton Techiya, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Jacob Snodgrass | Attorney | Counsel for Staton Techiya, LLCSearch in Eureka ↗ |
| Plaintiff counsel | James P. Brogan | Attorney | Counsel for Staton Techiya, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Roger Dale Taylor | Attorney | Counsel for Staton Techiya, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Thomas Friel | Attorney | Counsel for Staton Techiya, LLCSearch in Eureka ↗ |
| Plaintiff law firm | King & Spalding LLP | Law Firm | Representing Staton Techiya, LLCSearch in Eureka ↗ |
| Plaintiff law firm | PV Law LLP | Law Firm | Representing Staton Techiya, LLCSearch in Eureka ↗ |
| Defendant counsel | Ali Reza Sharifahmadian | Attorney | Counsel for Samsung Electronics Co., Ltd.Search in Eureka ↗ |
| Defendant counsel | David A. Caine | Attorney | Counsel for Samsung Electronics Co., Ltd.Search in Eureka ↗ |
| Defendant counsel | Jeffrey Miller | Attorney | Counsel for Samsung Electronics Co., Ltd.Search in Eureka ↗ |
| Defendant law firm | Arnold & Porter Kaye Scholer LLP | Law Firm | Representing Samsung Electronics Co., Ltd.Search 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 is purely procedural: it records joint agreement to dismiss under Fed. R. App. P. 42(b) and allocates costs equally. No claim construction, infringement finding, or validity determination was made. The each-side-bears-own-costs language is notable — it distinguishes this from a dismissal where one party conceded — and is consistent with a negotiated exit. The order provides no guidance on the scope or enforceability of US8254591B2, leaving the patent’s legal status unchanged from the district court record.
US8254591B2 — method and device for audio recording
US8254591B2 (application number US12/024842) claims a method and device for audio recording. The patent covers technical approaches to capturing, processing, or managing audio signals in a device context — a domain that intersects with consumer electronics hardware, mobile device microphone systems, and embedded audio capture technology. The application number suggests filing in the mid-to-late 2000s timeframe, placing it in a generation of audio IP that predates many current smartphone audio processing architectures.
This patent’s strategic significance lies in its potential application to widely deployed consumer electronics products — particularly smartphones, wearables, and audio accessories. Samsung’s Galaxy device lineup and accessories represent a high-volume target for audio recording patents of this vintage. The fact that Staton Techiya pursued this claim to the Federal Circuit before a voluntary dismissal suggests the assertion was considered commercially viable, and the patent’s unadjudicated status means it retains enforcement potential against other market participants.
Should your team run an FTO against US8254591B2?
Any company designing or commercialising audio recording functionality in consumer electronics, mobile devices, wearables, or embedded systems should consider this patent in their freedom-to-operate analysis. The fact that US8254591B2 has been actively asserted against Samsung at the Federal Circuit level — without being invalidated — means it carries live enforcement risk. Product teams working on microphone arrays, in-ear recording, voice capture, or audio management firmware are most directly in scope.
PatSnap Eureka’s FTO Search Agent can map the claim landscape of US8254591B2 against your product specifications, identify prosecution history estoppel, and surface prior art that could support an invalidity argument. Eureka also tracks continuation applications and related family members that may cover adjacent claim territory. Running a targeted FTO now — rather than after a cease-and-desist — is the lower-cost path for R&D and product counsel in the audio hardware space.
Run a freedom-to-operate analysis on US8254591B2 to assess your product’s exposure
Run FTO in Eureka →Similar Federal Circuit audio recording patent appeal cases
Cases involving audio recording and voice processing patent assertions at the Federal Circuit, including voluntary dismissals and infringement appeals in consumer electronics.
What this case signals for the audio recording patent IP landscape
A voluntary Federal Circuit dismissal against a major OEM typically signals something happened off-docket. Here is what IP teams should watch.
Voluntary Fed. Circuit dismissals often mask licensing activity
When both parties agree to dismiss an appeal with each side bearing own costs — and no merits ruling — this pattern is consistent with a licensing arrangement or commercial resolution reached during the appellate window. IP teams monitoring Staton Techiya’s enforcement activity should track any new filings or licensing announcements related to US8254591B2.
US8254591B2 enforceability is unadjudicated — FTO gap remains
The absence of any Federal Circuit ruling on validity or claim scope means that US8254591B2 carries unresolved enforcement risk. R&D teams and product counsel at audio device manufacturers should not treat this dismissal as clearance. A dedicated FTO search against the patent’s claim set is the appropriate risk-management step.
Staton v Samsung — key questions answered
The Federal Circuit appeal was voluntarily dismissed by agreement of the parties under Fed. R. App. P. 42(b) on 14 June 2024. No merits ruling was issued on the infringement or validity of US8254591B2. Each side was ordered to bear its own costs. The basis of termination does not specify whether the dismissal was with or without prejudice.
The patent at issue is US8254591B2 (application number US12/024842), which covers a method and device for audio recording. The case was filed as an infringement action, with Staton Techiya alleging Samsung’s products infringed this patent before the dispute was resolved at the appellate level without a merits judgment.
Fed. R. App. P. 42(b) allows parties to jointly dismiss an appeal by stipulation at any stage. In patent cases, this procedural mechanism terminates the appeal without any substantive ruling on validity, claim construction, or infringement. It leaves the underlying patent in its pre-appeal legal status. The public record does not disclose whether the dismissal here was with or without prejudice to future litigation.
No. A voluntary dismissal under Fed. R. App. P. 42(b) is a procedural termination — it carries no finding on the validity or enforceability of US8254591B2. The patent remains in force and its enforceability against third parties is unaffected by this dismissal. Companies in the audio recording and consumer electronics space should not treat this case outcome as providing patent clearance.
Staton Techiya was represented by King & Spalding LLP and PV Law LLP, with counsel including Bradford Cangro, Jacob Snodgrass, James P. Brogan, Roger Dale Taylor, and Thomas Friel. Samsung Electronics and Samsung Electronics America were represented by Arnold & Porter Kaye Scholer LLP, with counsel including Ali Reza Sharifahmadian, David A. Caine, and Jeffrey Miller.
PatSnap Eureka searches patents and litigation data to answer instantly.