Richards Layton & Finger
 

Chief Judge Stark Decides Four Motions for Summary Judgment on a Variety of Patent Issues

October 12, 2017

In Intellectual Ventures I, LLC v. T-Mobile USA Inc., et al., C.A. No. 13-1632-LPS (D. Del. Aug. 29, 2017), Chief Judge Stark decided four summary judgment motions on various issues. This group of six patent infringement actions involved plaintiffs Intellectual Ventures I and Intellectual Ventures II (collectively, “IV”), and defendants T-Mobile USA, Inc., T-Mobile US, Inc., Nextel Operations, Inc., Sprint Spectrum L.P., Boost Mobile, LLC, Virgin Mobile USA, L.P., and United States Cellular Corporation.

First, Judge Stark considered the motion for summary judgment filed by IV related to the defendants’ affirmative defenses. The Court granted the motion, dismissing the affirmative defenses with prejudice because the defendants had more than 18 months to develop those defenses and failed to do so.

Second, Judge Stark considered T-Mobile’s summary judgment motion that a retroactive sublicense between Ericsson Sweden and Ericsson USA exhausted all of IV’s claims under the ‘073 patent because IV asserted patent infringement based solely on equipment sold by Ericsson USA. The Court found that Nokia was authorized to license the ‘073 patent and to extend the license to Ericsson Sweden, and that Ericsson Sweden was authorized to issue sublicenses to its subsidiaries. Accordingly, the Court found that Ericsson USA’s sales to T-Mobile were authorized and Ericsson Sweden’s sublicense with Ericsson USA was sufficient to exhaust IV’s infringement claims on a retroactive basis.

Third, Judge Stark considered T-Mobile’s summary judgment motion that IV was precluded from relying on the doctrine of equivalents to establish infringement of the asserted claims of the ‘032 patent because of prosecution history estoppel. IV claimed that prosecution history estoppel was inapplicable because the “tangentiality” exception to prosecution history estoppel applied. IV contended that the amendment did not narrow the patent’s scope and, even if it did, the reason for the amendment was only tangentially related to the equivalent in question. The Court held that IV could not establish the tangentiality exception and was precluded from relying on the doctrine of equivalents.

Finally, the defendants sought summary judgment of non-infringement of the ‘793 patent because the claims required the users’ handsets to retrieve MMS messages automatically without requiring user interaction, but the users have the option of retrieving MMS messages manually rather than automatically. IV contended that the handsets, as shipped, were configured to retrieve MMS messages automatically, thus they infringed as soon as they were activated. The Court held that the defendants did not directly infringe merely by selling phones that allow for automatic retrieval of messages.

Key Point: This series of decisions confirms that the Court will give serious consideration to well-tailored motions for summary judgment.