IP Law Daily, PATENT—D. Neb.: Sprint relieved of $30M judgment after security systems patents invalidated, (Aug 9, 2017)

By Linda O’Brien, J.D., LL.M.

Sprint Spectrum was granted relief by the federal district court in Omaha, Nebraska from a $30 million judgment awarded by a jury based on a finding that the wireless service provider had infringed four claims of two Prism Technologies patents after the U.S. Court of Appeals for the Federal Circuit, in a separate case against another cell carrier, adjudged the same claims of two Prism patents to be invalid (Prism Technologies, LLC v. Sprint Spectrum L.P., August 8, 2017, Strom, L.).

Prism Technologies sued Sprint Spectrum for the infringement of U.S. Patent Nos. 8,127,345 ("Method and system for managing access to protected computer resources via an internet protocol network") and 8,387,155 ("System for managing access to protected computer resources"). In June 2015, a jury found that Sprint was liable for $30 million in damages for the infringement of Prism’s patents. In December 2015, the court denied Sprint’s motion for judgment as a matter of law, a new trial, or relief from the judgment.

In January 2016, Prism and Sprint filed notices of appeals and the court granted Sprint’s motion for a stay of the judgment pending appeal. In March 2017, the Federal Circuit affirmed the court’s denial of Sprint’s post-trial motions. While the appeal was pending, Prism went to trial in a separate suit against another cell carrier, T-Mobile USA, Inc. on claims of infringement of the same patents. In June 2017, the Federal Circuit invalidated Prism’s patent claims in the T-Mobile case. Subsequently, Sprint moved for relief from the judgment under Federal Rule of Civil Procedure 60 and Prism moved to lift the stay and enforce the judgment.

The court found that the judgment against Sprint should not stand since the Federal Circuit conclusively adjudged the patent claims which provided the basis for Prism’s judgment to be invalid. The patent claims at issue in the T-Mobile case were the same claims at issue in the present case. In determining what the asserted claims were in the T-Mobile case, the court noted that the Federal Circuit would have reviewed the brief in support of T-Mobile’s motion for summary judgment of patent ineligibility in the lower court proceeding which explicitly named the patent claims. At issue in the current case were Claims 1 and 33 of the ’345 patent and the ’155 patent. All four of those claims were scrutinized by the Federal Circuit and adjudged to be invalid. Thus, Sprint should be relieved from the judgment when the patent claims were predicated on a nullity, the court concluded.

The case is No. 8:12-cv-00123-LES-TDT.

Attorneys: Aakash B. Jariwala (Kramer Levin Naftalis & Frankel LLP) for Prism Technologies LLC. B. Trent Webb (Shook, Hardy & Bacon) and Carrie S. Dolton (Gober Hilgers PLLC) for Sprint Spectrum L.P.

Companies: Prism Technologies LLC; Sprint Spectrum LP

Cases: Patent NebraskaNews