Marathon not a sprint: Federal Circuit backs Prism in $30m judgment
The US Court of Appeals for the Federal Circuit has backed IP licensing company Prism Technologies in its $30 million fight against telecoms firm Sprint Spectrum.
In a judgment handed down yesterday, March 6, the court rejected Sprint’s argument that a district court had erred in admitting a settlement agreement between Prism and AT&T Mobility.
The suit concerned two network security patents owned by Prism: US numbers 8,127,345 and 8,387,155.
In April 2012, Prism sued Sprint in the US District Court for the District of Nebraska, alleging infringement of the ‘345 patent and US patent number 7,290,288.
On the same day, Prism sued AT&T Mobility for infringement of the same patents.
In March 2013, after the ‘155 patent was issued, Prism amended its complaint against Sprint to allege infringement of that patent too.
The ‘288 patent was withdrawn by Prism in March 2014 “to further streamline the issues”.
In October 2014, the case against AT&T proceeded to trial. On the last day of that trial, Prism and AT&T settled and the court dismissed the parties’ claims.
Sprint asked the district court to refuse to admit the settlement into evidence in Sprint’s lawsuit, claiming that it was not comparable to the “hypothetical licence” relevant in this case.
The telecoms company added that the admission of the settlement would be unfairly prejudicial under Federal Rule of Evidence 403.
But the court denied Sprint’s motion in June 2015.
A jury at the court found that Sprint had infringed both patents, awarding Prism reasonable royalty damages of $30 million.
Sprint then moved for judgment as a matter of law and a new trial, and Prism moved for additional damages and an ongoing royalty for infringement post-dating the period (ending in 2014) that Prism said was covered by the jury award.
The district court denied those motions and Sprint and Prism appealed.
Sprint argued four points: that the district court erred by (1) allowing Prism to modify its claim construction, (2) admitting the AT&T settlement agreement, (3) applying the wrong legal standard in deciding its motion for a new trial, and (4) admitting Prism’s evidence on cost-savings damages.
The Federal Circuit rejected all of Sprint’s arguments, affirming the district court’s decision.
On the admission of the settlement agreement, Circuit Judge Richard Taranto, on behalf of the court, said: “As we have noted, we review the court’s admission of this evidence for legal error or other abuse of discretion. We conclude that no such abuse occurred.”
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories like this sent straight to your inbox.
