United States District Court, D. Nebraska
E. STROM, SENIOR JUDGE UNITED STATES DISTRICT COURT
matter is before the Court on three motions filed by the
parties. The plaintiff, Prism Technologies, LLC (hereinafter
“Prism” or “plaintiff”), has filed a
motion to lift the Court's stay and enforce the judgment
(Filing No. 615). The defendant, Sprint Spectrum L.P.
(hereinafter “Sprint” or “defendant”)
has moved for relief from the judgment pursuant to Federal
Rule of Civil Procedure 60, or in the alternative, has moved
for a further stay of the case (Filing No. 621). In addition,
Sprint has moved for leave to file a sur-reply in opposition
to Prism's motion to lift the stay and enforce the
judgment (Filing No. 626). The motions have been fully
briefed.See Filing Nos. 616, 617, 624,
626-1,  622, 627,  628, and 629. After review of the
motion, the parties' briefs and indexes of evidence
(Filing Nos. 618, 619, 620,  623, 625, 630), and the relevant
law, the Court finds as follows.
The Sprint Action
23, 2015, following a six-day trial, a jury returned a
verdict in favor of Prism and against Sprint in the amount of
$30, 000, 000.00 (Filing No. 467). The jury's award was
based on its finding that Sprint had infringed Claims 1 and
33 of Prism's U.S. Patent No. 8, 127, 345 (the “345
patent”) and Claims 7 and 37 of Prism's U.S. Patent
No. 8, 387, 155 (the “155 patent”)
(Id.). On December 9, 2015, the Court denied
Sprint's renewed motion for judgment as a matter of law,
Sprint's motion for a new trial, and Sprint's first
motion for relief from judgment pursuant to Federal Rule of
Civil Procedure 60(b) (Filing No. 588 and Filing No. 589).
January 5, 2016, Sprint and Prism filed their respective
notices of appeal (Filing No. 593 and Filing No. 595). In
addition, Sprint, by an unopposed motion, sought to stay the
execution of the judgment pending appeal and approval of a
supersedeas bond pursuant to Fed.R.Civ.P. 62 (Filing No.
594). The following day, on January 6, 2016, the Court
granted Sprint's motion for a stay of execution of the
judgment pending appeal and approval of a supersedeas bond
(the “bond”) (Filing No. 596). The bond posted by
Sprint provides in relevant part, that Sprint is
“firmly bound unto PRISM TECHNOLOGIES,
LLC in the sum of THIRTY TWO MILLION TWO
HUNDRED THOUSAND AND NO/100 Dollars . . . .”
(Filing No. 601 at 1). The bond further states:
THE CONDITION OF THIS OBLIGATION is such that: [Sprint] has
entered an appeal to THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT to review the
JUDGMENT . . . .
NOW THEREFORE, the condition of this obligation is such that
if [Sprint] prosecutes its appeal to the full and final
effect . . . [and] such judgment [is] reduced, modified, or
amended . . . then this obligation shall be null and void;
otherwise to remain in full force and effect. (Id.).
March 3, 2017, the Federal Circuit affirmed this Court's
denial of Sprint's post-trial motions and its denial of
Prism's motion for additional monetary relief (Filing No.
605). It is important to note here that the validity of the
patent claims at issue in this case were not contested as
Sprint agreed in a May 15, 2015, agreement on motions in
limine that “Sprint may not argue that Sprint does not
infringe because the claims are allegedly invalid.”
(Filing No. 378 at 1). Therefore, no invalidity argument was
advanced to or decided upon by the Federal Circuit on appeal.
See Filing No. 605.
The T-Mobile Action
the appeal in this case was pending, Prism went to trial
against another cell carrier, T-Mobile USA, Inc., on claims
of patent infringement of the same patents. See Case
No. 8:12CV124 (hereinafter the “124 case”).
Following a fourteen-day trial, the jury found in favor of
T-Mobile on Prism's claims of infringement (Filing No.
579 in the 124 case). Following the filing and denial of
various post-trial motions, both parties appealed (Filing
Nos. 675 and 679 in the 124 case). Prism appealed this
Court's denial of its motions for a new trial and
judgment as a matter of law (Filing No. 685-1 at 2). T-Mobile
appealed, among other rulings not pertinent here, this
Court's denial of its motion for judgment as a matter of
law seeking “a reversal . . . of subject-matter
eligibility under [35 U.S.C.] § 101 . . . .”
(Id. at 4). On June 23, 2017, the Federal Circuit
reversed this Court's finding of the patent claims'
validity and determined that Prism's asserted patent
claims “merely recite a host of elements that are
indisputably generic computer components” and
“recite patent ineligible subject matter . . . .”
(Id. at 6-7).
9, 2017, two weeks before the Federal Circuit invalidated
Prism's patent claims in the T-Mobile case,
Prism moved this Court to lift the stay and enforce the
judgment (Filing No. 615). Before that motion was ripe for
disposition, Sprint filed its motion for relief from the
judgment pursuant to Rule 60 or, in the alternative, for a
further stay of the case (Filing No. 621).
the parties' briefing, the Federal Circuit, in response
to a motion by Sprint to recall its mandate, issued a
three-page order denying Sprint's motion (Filing No.
631). The Federal Circuit stated that Sprint “plans to
seek certiorari from [the Federal Circuit's] March
ruling, and it is apparently undisputed that, as a result,
the original district court judgment against Sprint remains
stayed -- until the time for certiorari runs without a filing