Sprint Still on the Hook to Comcast for $7.5 Million

Federal CircuitComcast Ip Holdings I Llc v. Sprint Communs. Co., L.P., (Fed. Cir. Mar. 7, 2017) (Before O’Malley, Reyna, and Chen, J.) (Opinion for the court, Chen, J.)

The Federal Circuit affirmed a jury award of $7.5 million for Sprint’s infringement of three Comcast patents. The district court did not error in construing the challenged claims, there was sufficient evidence to support both the jury’s verdict and the award of prejudgment interest.

The patents deal with methods of using Domain Name Systems technology, such as the internet, to initiate and route phone calls. Comcast accused Sprint of using two groups of infringing methods for routing calls: calls originating on their wireless cellular network and traveling through an Internet Protocol Multimedia Subsystem (IMS) network; and a process by which Sprint routed calls through the IMS network. Sprint moved for JMOL and a new trial, which was denied, and appealed.

The Federal Circuit upheld the district court’s claim construction. For the first challenged construction, “Switched Telecommunications System”, the Court found that Sprint had not demonstrated prejudice. “We may affirm the jury’s findings  . . . if correction of errors in claim construction would not have changed the verdict, given the evidence presented. . . . Prejudicial error here requires ‘sufficient evidence . . . to support a finding of non-infringement under a correct construction.’”. The Court additionally found Sprint’s construction unpersuasive because the patent did not, in fact, require a call to travel “exclusively” on only a subset of the network. Sprint also challenged the construction of “parsing.” The challenge was found to have been waived because Sprint failed to argue prejudice.

Sprint also challenged the sufficiency of the jury’s findings of infringement. Sprint argued that the “call destination” limitation was not met, based on its ordinary meaning. The Court disagreed. It found that the word “a” before the first use of the term call destination implied there could be more than one destination. It also found there was sufficient expert testimony to support the jury. The Court characterized the argument one of claim construction, not sufficiency of evidence, which was untimely. The Court found that the sufficiency of another limitation, the “identifier of a second party,” was infringed for the same reasons.

Finally, the Court affirmed the prejudgment interest award. Based on the lump sum award by the jury, it was reasonable for the district court to award interest based on the earliest date of infringement of the three patents (and therefore the date of the hypothetical negotiation). That is, the district court had no basis and no need for apportioning the prejudgment interest.

On appeal, the substantial evidence inquiry corresponds to the court’s claim construction. Efforts to show insubstantial evidence for a newly elaborated claim construction will fail as untimely; as when a stipulated “ordinary meaning” is revisited for the appeal.



The Author

Joseph Robinson

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Joseph Robinson

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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