An Eastern District of Texas jury has returned a noninfringement verdict for Nokia in litigation brought by Correct Transmission LLC. On November 5, the jury found that certain Nokia networking devices did not infringe three wireless communications patents from a now-defunct operating company. The verdict is the second this year in which a jury has found in Nokia’s favor over patents from that same source—a lawsuit from another plaintiff that, along with the case just tried, became involved in an overlapping dispute over foreign discovery earlier in 2024.

Correct Transmission kicked this campaign off in July 2020 with two Western District of Texas cases against ADTRAN and Juniper Networks, both complaints asserting the same five wireless communications patents (6,876,669; 7,127,523; 7,283,465; 7,768,928; 7,983,150)—all of which originated with Corrigent Systems (later renamed Orckit-Corrigent), an Israeli telecommunications networking equipment manufacturer that went bankrupt in 2015.

Both cases ended up before District Judge Alan D. Albright but were subsequently transferred to other districts, in the process becoming entangled in Judge Albright’s ongoing back-and-forth with the Federal Circuit over his handling of transfer motions. In October 2021, the Federal Circuit ordered Judge Albright to transfer the Juniper case to the Northern District of California, part of a wave of mandamus decisions that year in which the appellate court reversed his denial of numerous motions to transfer for convenience, in part faulting his handling of the applicable substantive factors.

ADTRAN also sought the Federal Circuit’s intervention, in March 2021, when Judge Albright refused to consider staying the case pending the outcome of its motion to transfer to the Northern District of Alabama due to improper venue. While Judge Albright had been rebuked by the Federal Circuit one month prior for moving forward on substantive issues like claim construction while sitting on fully briefed transfer motions, the appellate court here denied ADTRAN’s mandamus petition because the Markman hearing had not yet occurred and because its motion was not yet fully briefed. Judge Albright ultimately granted ADTRAN’s transfer motion, and soon after announced that he would resolve pending transfer motions before holding a Markman hearing—while his dispute with the Federal Circuit has since largely subsided.

In September 2022, Correct Transmission then filed its case against Nokia in East Texas, asserting the same five patents as in the other two cases. Among the disputes raised in this third suit—and in a “companion” case against Nokia (as described by the court) filed by Smart Path Connections LLC also asserting patents from Orckit-Corrigent—was the defendant’s attempt to seek discovery under the Hague Convention in Israel, where Orckit-Corrigent had been based. Per a later summary by the court, in April 2023, Nokia began seeking information on the “research, development, inventorship, and prosecution” of the patents-in-suit, as well as on their “practice” and “licensing, sale, or purchase” (per a later summary by the court). However, its “discovery requests were delayed in the Israeli courts navigating the procedural aspects of Israeli bankruptcy and motion practice by various interested entities”, as later noted by Judge Gilstrap, and it apparently did not begin receiving discovery until March 2024.

Later that month, Magistrate Judge Roy S. Payne declined to grant more time for the Israeli discovery in both the Correct Transmission and Smart Path cases against Nokia, citing the advanced state of the litigation and finding that the evidence cited as justification for further discovery—“a draft letter of intent from a prospective purchaser of the asserted patents” that the defendant cited “as relevant to damages”—was not of sufficient importance. “Such an offer does not demonstrate how any relevant party values the asserted patents or what inherent value the asserted patents have, especially where, as here, the offer is being discussed with a prior owner of the patents rather than the current plaintiff”, the court explained. Nokia later notified the court that it had withdrawn its action in Israel.

Meanwhile, Chief Judge Rodney Gilstrap issued a claim construction order in October 2023, based on which Nokia sought summary judgment of noninfringement as to the ‘150 patent, arguing that it does not infringe under the court’s construction of the term “bi-directional ring network”. In late March 2024, Magistrate Judge Payne recommended that the court grant the motion, also recommending that the court mostly grant Nokia’s motion for summary judgment of noninfringement under the doctrine of equivalents (for all but the ‘669 patent), though he recommended the denial of the defendant’s motions seeking summary judgments of noninfringement of the ‘523 patent (see here) and of no pre-suit indirect infringement or willful infringement (here). That same day, Judge Payne also addressed certain motions from the plaintiff targeting several of the defendant’s affirmative defenses, recommending that one motion be partially granted with respect to certain “additional defenses” that Nokia might raise based on information raised through foreign discovery, but denied as to prosecution history estoppel and Nokia’s defense that it is not liable for the acts of others. Judge Payne also endorsed the denial of the plaintiff’s motion for summary judgment on Nokia’s defense of lack of marking. In late May 2024, Judge Gilstrap adopted those rulings.

On May 16, the parties informed the court that Correct Transmission would not be asserting the ’669 patent at trial, and that it would only try claims 1, 10, 13, and 14 of the ’523 patent; claims 1 and 12 of the ’465 patent; and claims 1, 6, and 22 of the ’928 patent; and that Nokia would narrow its invalidity theories, arguing only that the ’523 patent is invalid for lack of written description. The case then went to trial starting on October 30, following multiple continuances, with an even further-narrowed set of asserted claims at issue: claim 10 of the ’523 patent, claim 1 of the ’465 patent, and claim 1 of the ’928 patent. The jury returned its verdict on October 5, finding that Nokia had not infringed any of the asserted claims and that it had not found claim 10 of the ‘523 patent to be invalid.

That verdict follows another setback at trial in the “companion” Smart Path suit: On April 5, 2024, another Eastern District of Texas jury found that Nokia had infringed just one of the three patents tried in that case, but also determined that Nokia had shown both of the infringed claims are invalid as obvious.

For more on the early history of the Correct Transmission and Smart Path campaigns, including the asserted patents and their ownership history, see “Another NPE Sues Nokia After First Tagging ADTRAN and Juniper Networks” (September 2022).