10 August 2017
Reporter: Barney Dixon

Sprint clears final hurdle, Prism falls flat

American telecommunications company Sprint has secured a win in its litigation with Prism Technologies, avoiding a $32.2 million judgment that was previously awarded in the case.

The US District Court for the District of Nebraska granted Sprint’s motion for relief on 8 August from the June 2015 jury judgement in favour of Prism.

The jury had found that Sprint had infringed two Prism network security patents and awarded $32.2 million in damages.

Sprint’s appeals in the case were denied, but during the litigation, Prism went to trial against T-Mobile, asserting the same two patents.

In that case, the Federal Circuit eventually found that Prism’s asserted patent claims “merely recite a host of elements that are indisputably generic computer components” and “recite patent ineligible subject matter”.

Sprint said that the Federal Circuit’s decision “completely eliminates the underlying basis for the judgement against Sprint”.

Prism responded by asserting that Sprint was not entitled to relief from the judgement based on the T-Mobile decision, because “it did not address certain claims that Prism asserted and prevailed upon at trial against Sprint”.

In granting Sprint’s motion for relief, Judge Lyle Strom of the Nebraska court said: “The court is convinced that the facts and procedural history of this case rise to the level of an exceptional circumstance.”

“By so ruling the court is cognisant of the need to recognise the importance of the finality of a judgement. The court has thoroughly considered and balanced that important interest but finds it is outweighed by the court’s interest in ‘seeing that justice is done in light of all of the facts.’”

“The patent claims at issue in the T-Mobile case, which were invalidated by the Federal Circuit, were and are the same claims at issue here,” he continued.

“Given that the Federal Circuit has conclusively adjudged the patent claims, which provide the very basis for Prism’s $30 million judgement, to be invalid; the court finds no just reason why such a judgement ought to stand when the claims ‘are predicated on a nullity’ and unenforceable to the rest of the world.”

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