Chief Judge Leonard P. Stark recently ruled on summary judgment motions in a series of cases filed by Intellectual Ventures. Intellectual Ventures I LLC v. T-Mobile USA, Inc., C.A. No. 13-1632-LPS (D. Del. Aug. 23, 2017) (and related cases). Judge Stark granted a motion by T-Mobile seeking summary judgment that Intellectual Ventures’ patent rights were retroactively exhausted by a license agreement between Ericsson Sweden and Ericsson USA, the entity which sold the accused products to T-Mobile. Intellectual Ventures argued that its patent claims arose before any such license, but the Court explained that under the license agreement at issue, Ericsson Sweden granted a nunc pro tunc license, retroactive to earlier than the date when the patent claims arose. As a result, the Court found that the license was “sufficient to exhaust IV’s infringement claims on a retroactive basis.”
The Court also granted T-Mobile’s motion for summary judgment of no infringement of another asserted patent under the doctrine of equivalents because “[e]ach allegedly equivalent limitation . . . was amended during prosecution to overcome . . . prior art.” Judge Stark explained that the amendments at issue were made “to distinguish the invention over [prior art] that contains the equivalent in question . . . .” Accordingly, the Court granted summary judgment of no infringement based on prosecution history estoppel.
Finally, the Court denied the defendants’ motion for summary judgment of non-infringement of a third asserted patent, finding general disputes of material fact regarding whether the actions of defendants’ customers were attributable to defendants for purposes of the infringement analysis.