Regents of the University of Minnesota v. AT&T Mobility LLC

Background

Regents of the University of Minnesota brought related patent-infringement actions against AT&T Mobility LLC, Sprint Solutions, Inc., Sprint Spectrum L.P., T-Mobile USA, Inc., and Cellco Partnership d/b/a Verizon Wireless. Ericsson, Inc., Nokia of America Corp., Nokia Solutions and Networks US LLC, and Alcatel-Lucent USA Inc. intervened as defendants in the cases identified in the opinion. The patents concern cellular data transmission technology, including error-control coding, interleaving, mapping, precoding, and receiver techniques involving null subcarriers.

The parties filed four motions for summary judgment. Regents sought rulings on prior art and whether the ’230 reissue patent complied with the original-patent rule. Defendants sought summary judgment based on invalidity, non-infringement, and inequitable conduct. Summary judgment is appropriate when there is no genuine dispute over a fact that could affect the outcome and the moving party is entitled to judgment under the law.

Prior Art: Ming PCT and Ming US

Regents sought summary judgment that Patent Cooperation Treaty application WO 03/085875, called the Ming PCT application, was not prior art to the ’230 and ’768 patents. The court held that the Ming PCT application did not designate the United States as required by the applicable version of 35 U.S.C. § 102(e)(2). The court therefore held that Ming PCT was not prior art and would not allow Defendants to rely on that application to support invalidity arguments.

The court nevertheless allowed Defendants’ expert to base the same prior-art arguments on the Ming US application. The opinion states that the parties did not dispute that the two applications had identical relevant disclosures and that Regents would not be unfairly surprised by the substitution.

Original-Patent Rule and the ’230 Reissue

The ’230 patent is a reissue of the ’647 patent. The original-patent rule requires a reissue patent to be for the invention disclosed in the original patent. The court held that this rule applies to narrowing reissues as well as broadening reissues, although narrowing reissues may more easily satisfy the rule.

The court then held that the ’230 patent satisfied the rule. The original ’647 specification incorporated five provisional applications by reference, using language that the court found clearly identified the incorporated material. The court concluded that proper incorporation by reference could satisfy the requirement that the original specification clearly and unequivocally disclose the reissued invention. The court granted Regents’ motion for summary judgment on this issue and denied Defendants’ converse motion seeking invalidity of the ’230 patent.

Non-Infringement

Defendants sought summary judgment of non-infringement concerning the ’768, ’230, ’317, ’185, and ’309 patents. The court denied the motion in full because genuine disputes of material fact remained.

For claims involving interleaving and mapping, Defendants argued that their technology mapped scrambled data rather than the interleaved data required by the claims. The court stated that the technology did not literally map the interleaved data, but allowed Regents to introduce a doctrine-of-equivalents theory. That theory can apply when an accused product does not literally meet a claim limitation but uses an equivalent element. The court therefore denied summary judgment on that issue.

The court also denied summary judgment concerning the alphabet-size limitation in claims 13 and 18 of the ’768 patent because Defendants had not previously advanced the non-infringement theory they presented in the motion. The court denied summary judgment on the symbol-interleaver issue because the parties’ experts disputed whether the accused technology’s reordering of groups of symbols met the claim construction. The court denied summary judgment on the null-subcarrier issue in the ’317 patent family because the experts disputed whether a null subcarrier had to appear after multiple transmissions were combined or could appear earlier within the system. Finally, the court denied summary judgment on receiver limitations because Regents’ expert testimony was enough to create a factual dispute about whether user equipment met the limitations and whether Defendants used the accused system for its patented purpose.

Inequitable Conduct and Unenforceability

Defendants sought summary judgment that the patents were unenforceable because Regents allegedly concealed prior-art information from the United States Patent and Trademark Office and omitted inventors from the ’317 patent family. Inequitable conduct is a defense that can prevent enforcement of a patent when the party asserting it proves both material misconduct in the patent process and an intent to deceive the patent office.

The court denied Defendants’ motion. For the ’768 and ’230 patents, the court held that the alleged omission of publication dates from certain papers was not shown to be material because the papers, with their dates, were later disclosed and the patents issued afterward. The court also held that intent to deceive was not the single most reasonable inference from the evidence. For the ’317 patent family, Defendants did not establish that the omitted authors were inventors or that the omission was material to issuance, and the evidence did not establish an intent to deceive. The court stated that the inequitable-conduct defenses were legally deficient and would be dismissed from the action, while the formal order denied Defendants’ motion for summary judgment of unenforceability.

Order

The court ordered that Regents’ motion for summary judgment was GRANTED in part and DENIED in part. It was granted insofar as the Ming PCT application was not prior art and as to the holding that the ’230 patent did not violate the original-patent rule. It was denied insofar as Defendants could substitute the Ming US application for invalidity arguments.

The court DENIED Defendants’ motion for summary judgment that the ’230 reissue patent was invalid under the original-patent requirement. It also DENIED Defendants’ motion for summary judgment of non-infringement and DENIED Defendants’ motion for summary judgment of unenforceability based on inequitable conduct. The court stated that none of these rulings terminated the action, so the cases may proceed.