A Magistrate Judge in the Eastern District of Texas recently issued a report and recommendation finding that a plaintiff’s infringement claims were estopped due to prosecution disclaimer from statements made in response to an inter partes review (IPR) petition.
In January 2016, Huawei Technologies Co. Ltd. filed a patent lawsuit against T-Mobile US, Inc. alleging infringement of U.S. Patent No. 8,867,339. The ’339 Patent is directed toward error recovery in a “One Tunnel” or “Direct Tunnel” cellular architecture designed to allow a direct data link between a radio control network (RNC) and a gateway general packet radio service node (GGSN). The ’339 patent covers a procedure for recovering the link between network components when there is a tunnel error or failure. The error recovery procedure involves managing the packet data protocol (PDP) context, which is a data structure that stores session information relating to a user’s connection. The recovery procedure, allows the data tunnel to be recovered while minimizing interruption to the user’s session.
After Huawei filed the suit, Nokia filed a petition for IPR against the claims of the ’339 Patent. According to the Magistrate’s findings, in response to Nokia’s petition, Huawei’s central argument against Nokia’s combination of prior art references was that they did not preserve the PDP context as claimed, but instead marked the PDP context as invalid. The Patent Trial and Appeal Board (PTAB) rejected Huawei’s argument and instituted the IPR on July 26, 2017.
Before the district court suit, Huawei asserted that by complying with the 3GPP standard, T-Mobile’s 3G cellular network architecture infringed the ’339 Patent. There was no dispute that the 3GPP standard requires the GGSN to mark the PDP context as invalid in response to an error. In view of Huawei’s statements in response to the IPR petition, differentiating the prior art that marked the PDP context invalid in response to an error, T-Mobile moved for summary judgment of non-infringement.
On September 9, 2017, the magistrate judge agreed. In view of Huawei’s statements to the PTAB, the magistrate found Huawei clearly and unmistakably disclaimed a recovery process in which the GGSN marks the PDP context invalid, regardless of whether the PDP context might later be restored. The magistrate found that as a result, the claims of the ’339 patent no longer encompass such a process and recommended granting T-Mobile’s motion because there is no genuine issue of material fact that T-Mobile’s GGSN marks the PDP context invalid and thus no genuine dispute that T-Mobile’s 3G network falls within the asserted ’339 patent claims.
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