Fed Circ reverses $8.2m mobile roaming tech decision

The US Court of Appeals for the Federal Circuit has reversed a finding of patent infringement in a case which resulted in more than $8 million being awarded to a wireless technology company.

The Federal Circuit delivered its decision on Tuesday, January 5.

Silicon Valley-based Skyroam is the parent company of wireless technology provider Simo, which owns US patent number 9,736,689. The patent covers a way to reduce roaming charges on cell networks when travelling.

The ‘689 patent explicitly notes that changing SIM cards when travelling across different jurisdictions —a task often undertaken by consumers to allow their mobile to connect to local networks—is “inconvenient”.

Simo’s patent covers an innovation which treats the user’s phone as if it were a local device, without having to change the SIM card at all.

In June 2018, Simo filed a patent infringement complaint against uCloudlink, a mobile technology company headquartered in Hong Kong.

The suit, filed at the US District Court for the Southern District of New York, accused uCloudlink of infringing US patent number 8,116,735, which shares a specification with the ‘698 patent.

In August 2018, Simo amended the suit to include allegations that uCloudlink had infringed the ‘698 patent and, in January 2019, Simo voluntarily dismissed with prejudice all of its allegations based on the ‘735 patent.

Simo maintained that four of uCloudlink’s products infringe the ‘698 patent: three GlocalMeWifi hotspot devices (the G2, G3, and U2 series) and the S1 mobile phone, all of which wirelessly provide data to other devices when acting as a Wi-Fi hotspot.

According to Simo, those four products infringe claim 8 of the ‘689 patent. Claim 8 covers wireless communication. At the centre of the dispute was whether claim 8 requires a “non-local calls database” and, if so, whether the accused products have this.

The US District Court for the Southern District of New York found that a non-local calls database is not a requirement of claim 8. Instead, such a database is “optional”.

Following claim construction analysis, the court determined that the four accused products do infringe the ‘689 patent and awarded enhanced damages of $8,230,654 to Simo.

However, earlier this week, the Federal Circuit reversed that decision, finding that claim 8 of the ‘689 patent requires the existence of at least two non-local calls databases.

“The most important features of the claim language point decisively against the district court’s conclusion,” the court said. “The reference to ‘a non-local calls database’ would ordinarily be understood to encompass one or more such databases.”

In the proceedings, uCloudlink had claimed that its accused devices do not contain any non-local calls database. Simo’s “limited response” to this is not sufficient to justify a remand, the Federal Circuit said, and so uCloudlink is entitled to a judgment of non-infringement.

The Federal Circuit concluded: “The judgment of the district court is reversed. Judgment of non-infringement shall be entered for uCloudlink. Each party shall bear its own costs.”

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