Intellectual Ventures I LLC v. T-Mobile USA Inc. et al. CAFC

A jury in the Eastern District of Texas has issued a verdict of infringement in litigation brought by a subsidiary of Intellectual Ventures LLC (IV) against T-Mobile and Ericsson. The jury found that the defendants both infringed at least one of the patents-in-suit, T-Mobile through its LTE network and Ericsson through related LTE telecommunications equipment, awarding damages of $34M as to the former and $9M for the latter. That verdict comes after a series of recent setbacks for IV in the same litigation campaign, including the Federal Circuit’s affirmance of a T-Mobile Alice win last month and the partial grant in September of an Alice challenge brought by T-Mobile and SoftBank (Sprint). The European leg of that campaign has also run into trouble, with a noninfringement verdict reportedly issued last year in litigation against Deutsche Telekom, Telefonica, and Vodafone.

The Patent Trial and Appeal Board (PTAB) saw activity in AIA reviews against a variety of familiar plaintiffs in September, including validity challenges brought in campaigns targeting wireless communications technology and mobile devices. Among the NPEs hit with petitions for inter partes review (IPR) in September were Intellectual Ventures LLC, which continues to pursue its existing litigation as it divests other parts of its portfolio; and entities controlled by Fortress Investment Group LLC and Uniloc Corporation Pty. Limited, both of which have kept up a barrage of new litigation asserting former Pendrell Corporation patents. Also in September, the PTAB instituted trial in IPRs against Quarterhill Inc. and an NPE related to PanOptis Equity Holdings LLC, and issued final decisions against private plaintiffs including General Patent Corporation.

In June 2018, the Patent Trial and Appeal Board (PTAB) saw petitioners wage validity challenges against a variety of prominent NPEs. Among those hit by petitions for AIA review in June was Intellectual Ventures LLC (IV), which has not filed any new litigation in the US since October 2017, but continues to assert patents overseas; and NPEs affiliated with Fortress Investment Group LLC and Industrial Technology Research Institute. Also in June, the PTAB instituted trial for two IPRs against affiliates of top litigant IP Edge LLC, which remains the most prolific patent plaintiff of the past 18 years by the number of defendants added to US patent suits. In addition, the Board issued final decisions in IPRs against IV, the California Institute of Technology, inventor Daniel L. Flamm, and frequent litigants Realtime Data LLC and Uniloc Corporation Pty. Limited.

The past two years have seen a dip in US litigation filed by Intellectual Ventures LLC (IV), which started only one new American campaign in 2017 and none the year before. However, available court records indicate that an offshoot of one of the NPE’s oldest remaining US campaigns—started in 2011 and targeting a host of wireless carriers—also remains active in Germany. Filed documents indicate that appeal hearings were held as recently as January 24 in cases against European carriers Deutsche Telekom, Telefonica, and Vodafone. The related US campaign is one of just two in which IV filed new litigation in 2017, during which time the NPE accelerated the pace of divestitures from its massive portfolio.

Intellectual Ventures LLC (through its subsidiary Intellectual Ventures II LLC) (IV) has filed a sixth lawsuit (2:17-cv-00661) against Deutsche Telekom (T-Mobile) in the same litigation campaign. The new case asserts six wireless communications patents, not seen previously in litigation, against the carrier, together with LM Ericsson. IV concurrently filed a new case (2:17-cv-00662) against Ericsson, Nokia (Alcatel-Lucent), and SoftBank (Nextel Operations, Sprint Spectrum), asserting the same six patents. While Ericsson was not named as a defendant in earlier cases in this campaign, Ericsson has brought nearly half of the 43 petitions for inter partes review (IPR) challenging various patents-at-issue.

Intellectual Ventures LLC (through its subsidiary Intellectual Ventures I LLC) (IV) has filed yet another lawsuit against Deutsche Telekom (T-Mobile) (2:17-cv-00577), this time explicitly naming LM Ericsson with T-Mobile. The new complaint asserts four patents not previously seen in any litigation, including in this campaign, which IV began in September 2011 and now concerns over 55 patents asserted against wireless carriers and camera makers, among others. Despite not being named as a defendant in district court, Ericsson has brought nearly half of the 43 petitions for inter partes review (IPR) challenging patents in the campaign. This new case against T-Mobile and Ericsson comes as IV and AT&T have requested another extension of an earlier stay, this time to mid-October, in order to facilitate finalization of an agreement ending the parties’ disputes.

The Federal Circuit has declined to overturn the invalidation of an Intellectual Ventures (IV) wireless security patent (7,496,674) in an inter partes review (IPR) filed by Ericsson (2015-1947). In a summary affirmance issued on August 16 without an accompanying opinion, the court upheld a May 2015 final decision by the Patent Trial and Appeal Board (PTAB) that cancelled claims 1-22 of the ‘674 patent as anticipated by and obvious over prior art (IPR2014-00527). IV had sought to reverse this decision partly on the basis that one of these references, an article sponsored by the Department of the Air Force, did not anticipate claims 1-6 and 10-22 of the ‘674 patent and did not qualify as prior art. The NPE also challenged the Board’s ruling that claims 1-22 are obvious over two other references.