Federal Circuit weighs in on wireless messaging

Two patents related to wireless messaging technology which were asserted by a US-based company against smartphone maker HTC have been deemed “unenforceable” by a US court.

The patents, US Patent Nos 7,266,186 and 7,310,416, were for the “wireless transmission of caller identification (ID).”

They were first asserted against HTC last year by Intellect Wireless (IW), a non-practising entity based in Redston, US.

The decision, by the US Court of Appeals for the Federal Circuit on October 9, upheld a ruling in September last year at the US District Court for the Northern District of Illinois.

Despite IW bringing the lawsuit, District Court Judge William Hart ruled that its founder, Daniel Henderson, had engaged in inequitable conduct and made false statements to the US Patent and Trademark Office (USPTO) over elements of the patents.

According to IW, it said in its initial declaration that the patent was reduced to practice and had been demonstrated at a meeting in July 1993.

However, the district court ruled this was untrue.

Under US patent law, a reduction to practice is the concept behind the embodiment of an invention.

Actual reduction to actual practice requires that an invention works for its intended purpose whereas constructive reduction occurs upon the filing of an application on a claimed invention without demonstrating that the invention works.

In its appeal at the Federal Circuit, IW argued that it submitted a revised declaration removing references to an actual reduction, instead claiming it was relying on constructive reduction.

However, the Federal Circuit rejected the claims, claiming there was “no evidence” that any of the falsehoods were withdrawn and averring that the district court was right to conclude that the revised declaration failed to correct falsehoods.

“At best, the revised declaration obfuscated the truth,” it said in its judgement.

“The completely false statements in a first declaration were followed by a replacement declaration that, rather than expressly admitting the earlier falsity, dances around the truth.

“We have considered the parties’ remaining arguments and do not find them to be persuasive. We affirm the district court’s judgment that the asserted patents are unenforceable due to inequitable conduct,” it said.