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Asim Bhansali and Adam Lauridsen Win Summary Judgment for T-Mobile


A New Jersey federal judge on Wednesday threw out Luxembourg-based patent holder High Point SARL's patent-infringement case against T-Mobile USA Inc., Nokia Solutions and Networks US LLC and Ericsson Inc., finding the defendants had licenses to use the technology, which exhausted High Points' right to assert infringement.

U.S. District Court Judge Joseph E. Irenas granted the defendants' motion for summary judgment in High Point's case accusing the carriers of infringing U.S. Patent Numbers 5,195,090; 5,305,308; 5,184,347; and 5,195,091, which relate to wireless networking. He found that the exhaustion doctrine had been met because the previous patent holders, AT&T Inc. and Lucent Technologies Inc., granted the defendants broad license to sell equipment that made use of all four patents.

AT&T first held the patents in 1988 when it entered a cross-license granting Siemens nonexclusive, nontransferable licenses to make, sell and import products that used them. In 1996, AT&T entered a similar deal with Alcatel and also spun off Lucent, assigning it some of the patents, according to the ruling. Lucent then entered a cross-license with Telefonaktiebolaget LM Ericsson, or LME.

“Over the ensuing years, through various corporate combinations and sublicensing agreements ... Ericsson, ALU, and NSN came to sell to T-Mobile the equipment practicing the methods of the patents-in-suit,” Judge Irenas found. “The cross-license agreement places no limits on when retroactive sublicenses may be granted, therefore the court holds that Lucent authorized the retroactive sublicense that LME granted to Ericsson, and therefore authorized the sales Ericsson made to T-Mobile.”

High Point acquired the patents in 2008 and filed suit a year later. The company argued that in the case of all three defendants, T-Mobile’s assembly and use of a multivendor network wasn't covered by any of the license or sublicense agreements. Judge Irenas rejected the argument, noting that, as in other cases, the defendants were using exhaustion to explain their right to use the patents.

He also rejected High Point's other arguments, including one that insisted the cross-licenses only applied to patents filed between January 1994 and December 1996. The asserted patents were filed in 1991, but Judge Irenas found that the cross-licenses actually applied to any patents filed before the end of that three-year period.

A spokeswoman for Ericsson told Law360 Wednesday that the company is happy that the court sided with the defendants. Representatives for the plaintiffs did not respond to requests for comment.

High Point sued T-Mobile in 2008, claiming that the company was infringing the four patents despite being aware of High Point's patent rights. When High Point had sent a letter to the wireless services provider informing it of the company’s patent holdings, T-Mobile didn’t respond and didn’t change its conduct, according to the complaint.

High Point's suit sought declaratory judgment that T-Mobile was infringing the patents, as well as damages “for all infringing activities occurring in the six years prior to the filing of this complaint, in an amount not less than a reasonable royalty.”

The patents-in-suit are U.S. Patent Numbers 5,195,090; 5,305,308; 5,184,347; and 5,195,091.

High Point is represented by Martin J. Black Robert D. Rhoad, Joseph Gribbin and Derek J. Brader of Dechert LLP.

T-Mobile is represented by Asim Bhansali and Adam Lauridsen of Keker & Van Nest LLP, Lisa J. Rodriguez of Schnader Harrison Segal & Lewis LLP, by Andrew M. Grodin of Dentons and by Ryan McBrayer of Perkins Coie LLP.

Ericsson is represented by William L. Mentlik, Roy J. Wepner and Jeffrey Dickey of Lerner David Littenberg Krumholz & Mentlik LLP.

Nokia is represented by Robert F. Perry of King & Spalding LLP and Katelyn O'Reilly of Connell Foley LLP.

The case is High Point SARL v. T-Mobile USA Inc., case number 2:12-cv-01453, in the U.S. District Court for the District of New Jersey.