by Dennis Crouch
Prism Technologies LLC, v. Sprint Spectrum L.P., dba Sprint PCS, SCT Docket No. 18-1397 (Supreme Court 2019)
The Supreme Court has received a new eligibility challenge from Prism Tech — although this one is in the form of a civil procedure question:
- Whether the Federal Circuit Court of Appeals may retroactively expand the scope of its appellate jurisdiction to invalidate patent claims under 35 U.S.C.
§ 101 when those claims were not raised in the petitioner’s appeal or necessary for its judgment?
- Whether a district court may disregard a mandate from the Federal Circuit for entry of judgment, and ignore this Court’s precedent, by retroactively applying
the collateral estoppel doctrine based on a ruling in a subsequent action where there is no mutuality of claims or defenses?
Prism has parallel infringement lawsuits against Sprint and T-Mobile.
- In the case against Sprint, the jury found infringement and awarded $30 million in damages. Sprint did not challenge the patent’s validity at trial or on appeal — damages affirmed in a 2016 appellate decision.
- In the case against T-Mobile, the jury sided with the defendant and found no-infringement. Prism appealed, but ended up in a worse situation — with a 2017 holding from the Federal Circuit that the asserted claims are ineligible under 35 U.S.C. 101.
The basic question here is whether the late-stage invalidity in T-Mobile can be used to cancel Sprint’s adjudged liability. So far, the courts have sided with Sprint, although it was important for Sprint’s case that it took pains to slow-walk its post-appeal activity (request for rehearing and petition for certiorari) so that the case still had some life by the time the T-Mobile decision was released.
June 23, 2017 – the Federal Circuit invalidated the patents in the T-Mobile decision. June 27, 2017 (two business days later) – Sprint filed a R.60(b) motion for Relief from Judgment based upon the Federal Circuit’s binding authority “that the patent claims underlying that judgment are invalid as unpatentable under 35 U.S.C. § 101.” The district court complied and set-aside its prior verdict and the Federal Circuit affirmed — finding no abuse of discretion.
As part of the Sprint timeline, it is notable that the Federal Circuit issued its mandate in May 2017 (before the T-Mobile invalidity decision). After the T-Mobile decision, Sprint unsuccessfully requested that the Federal Circuit recall the mandate. However, the court did issue a statement that recall was “unnecessary” because the “mandate does not alter how the district court should decide the preclusive effect of the T-Mobile ruling, which did not exist in May 2017.”
Another important element here a big question about whether the T-Mobile invalidity applied to all of the claims at issue in Sprint (the Federal Circuit retrospectively said yes).
The new petition thus argues that “the Federal Circuit’s interpretation of the T-Mobile Invalidity Decision as covering the Sprint Only Claims is flawed [as a] retroactive expansion of appellate jurisdiction.”