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Prism Technologies, LLC v. Sprint Spectrum L.P

United States District Court, D. Nebraska

August 8, 2017

PRISM TECHNOLOGIES, LLC, Plaintiff,
v.
SPRINT SPECTRUM L.P., D/B/A SPRINT PCS, Defendant.

          MEMORANDUM OPINION

          LYLE E. STROM, SENIOR JUDGE UNITED STATES DISTRICT COURT

         This 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.[1]See Filing Nos. 616, 617, 624, 626-1, [2] 622, 627, [3] 628, and 629. After review of the motion, the parties' briefs and indexes of evidence (Filing Nos. 618, 619, 620, [4] 623, 625, 630), and the relevant law, the Court finds as follows.

         BACKGROUND

         I. The Sprint Action

         On June 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).

         On 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.).

         On 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.

         II. The T-Mobile Action

         While 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).

         III. Subsequent Proceedings

         On June 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).

         Following 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 ...


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