By Peter Reap, J.D., LL.M.
Plaintiff Mobile Telecommunications Technologies, LLC ("MTel"), which asserted three patents generally related to wireless telecommunications against several defendants, was not required to plead compliance with Section 287 of the Patent Act relating to the limited damages a patent owner who fails to mark their products may recover, the federal district court in Wilmington, Delaware, has decided. In addition, the contention by three of the defendants that MTel’s complaint should be dismissed on the grounds that the patents failed to claim patent-eligible subject matter was rejected. Thus, the defendants’ motion to dismiss for failure to state a claim was denied (Mobile Telecommunications Technologies, LLC v. Ruckus Wireless, Inc., March 20, 2017, Stark, L.).
MTel filed several separate suits alleging infringement of U.S. Patent Nos. 5,590,403 (the "’403 patent"); 5;915,210 (the "’210 patent"); and 5,659,891 (the "’891 patent") (collectively, the "asserted patents"). Subsequently, some of the defendants filed declaratory judgment actions each seeking declaratory judgment of non-infringement of the asserted patents. The defendants to MTel’s suits and declaratory judgment plaintiffs fell into two general categories: Ruckus, ARRIS, Ubee, Juniper, Aerohive, Brocade, HP, Firetide, and Xirrus are Wi-Fi equipment providers; Cox, BHN, Charter, and TWC are cable network operators. The Judicial Panel on Multidistrict Litigation determined that centralization of the actions involving MTel was appropriate, and transferred the cases to this court for coordinated or consolidated pretrial proceedings.
Before the court was Ruckus’s motion, joined by Brocade and Juniper, seeking dismissal of MTel's complaint under two legal theories: (1) failure to mark, pursuant to 35 U.S.C. § 287, with respect to the ’210 patent; and (2) failure of the asserted patents to claim patent-eligible subject matter, under 35 U.S.C. § 101.
The asserted patents. The claims of the ’403 patent cover methods for wirelessly simulcasting information signals, the court noted. The claims of the ’210 patent cover systems for wirelessly transmitting information via two sets of carrier signals in simulcast. The ’891 patent claims a system and methods for transmitting wireless signals using specific frequency spacing for carriers in a band-limited channel.
Marking. According to Ruckus, MTel's complaint should be dismissed with respect to the ’210 patent because MTel "failed to plead compliance with § 287" and "the ’210 patent expired before the filing of the complaint." MTel countered that it was not required to plead compliance with § 287 because the statute applies only to patent owners and licensees that make, offer to sell, sell, or import a "patented article," yet neither MTel nor any of its licensees or predecessors-in-interest ever engaged in any of these activities.
The court agreed with MTel. MTel was not required to plead compliance with § 287, the court held. Ruckus's contentions with respect to marking amounted to mere speculation that some predecessor-in-interest or licensee may have practiced the ’210 patent. MTel was not required to plead compliance with the marking statute because there was no evidence that any predecessor-in-interest or licensee ever practiced the patent. Thus, Ruckus's motion with respect to marking was denied.
Patent-eligible subject matter—the ’891 patent. Ruckus argued that asserted claims 1-5 of the ’891 patent are invalid under§ 101 for two independent reasons: (l) the claims do not fall under any of the four statutory categories of patentable subject matter defined by § 101 ("process, machine, manufacture, or composition of matter") and (2) the claims are directed to a patent-ineligible abstract idea.
First, Ruckus argued that the asserted claims of the ’891 patent are directed to a transitory, propagating signal, which is unpatentable under In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). MTel countered that the claims come within the "process" category of patentable subject matter.
The court agreed with MTel. On its face, the ’891 patent claims methods for "operating a plurality of paging carriers in a single mask-defined, bandlimited channel," or what may otherwise be characterized as a process for transmitting information in a bandlimited channel by spacing carriers at certain relative frequency differences, according to the court. Ruckus's sole authority for its "signal" theory of patent-ineligibility, Nuijten, was distinguishable. The claim at issue in Nuijten explicitly recited a "signal," unlike the claims of the ’891 patent; the Federal Circuit held there that "a process claim must cover an act or series of acts and Nuijten's signal claims do not." 500 F.3d at 1355 (emphasis added). The claims of the ’891 patent do cover "an act," namely, the act of transmitting specifically-arranged carriers in a bandlimited channel, the court explained. They thus qualified as process claims.
Ruckus alternatively argued that the claims of the ’891 patent are patent-ineligible as being directed to the abstract idea of "modulating a multi-carrier signal" according to a mathematical formula. Ruckus contended that the '891 patent's claims are similar to those found to be ineligible in Parker v. Flook, 437 U.S. 584, 588-96 (1978). There were disputed issues of fact and potential claim construction disputes that precluded the court from ruling, at this time, that the claims of the '891 patent are patent-ineligible, the court reasoned. On the current record, the court could not agree with Ruckus that the claims asserted here were similar to those analyzed in Flook. Flook was distinguishable because the claims, read in a light most favorable to MTel, were not "'directed essentially to a method of calculating, [or] using a mathematical formula.’" Flook, 437 U.S. at 595.
Patent-eligible subject matter—the ’891 patent. Ruckus argued that Claim 1 of the ’403 patent is directed to an abstract idea and that it "effectively captures any situation in which transmitters have transmitted different information at some point in time after having transmitted a block of information in simulcast." Ruckus further argued that "this claim is so abstract that there is no discernible relationship between the blocks of information transmitted, including the criteria for which transmitters transmit which information or whether the blocks of information are intended for the same or different receivers."
This latter argument by Ruckus highlighted the need for claim construction before ruling on Ruckus's § 101 arguments, the court said. The court could not determine at this time if using "first and second sets of transmitters" to broadcast in simulcast and then broadcast independently is an abstract concept of the kind held to be patent-ineligible in Alice.
As to claims 10 and 11, issues of fact and potential claim construction disputes must be resolved before the Court could rule on the arguments relating to these claims. On the current record, the court could not say that claims 10 and 11 are directed to patent-ineligible subject matter.
Patent-eligible subject matter—the ’210 patent. Finally, Ruckus argued that the asserted claims of this patent are directed to "the ideas of multi-carrier transmission and simulcasting," which "are well-known abstract ideas." On the current record, the court could not say whether multi-carrier transmission and simulcasting are abstract ideas or whether they are well-known in the art.
The case is No. 16-md-02722-LPS-CJB.
Attorneys: Brian E. Farnan (Farnan LLP) and Daniel R. Scardino (Reed & Scardino LLP) for Mobile Telecommunications Technologies, LLC. Philip A. Rovner (Potter Anderson &Corroon LLP) and Korula T. Cherian (Ruyak Cherian LLP) for Ruckus Wireless, Inc.
Companies: Ruckus Wireless, Inc.; Mobile Telecommunications Technologies, LLC
MainStory: TopStory Patent TechnologyInternet DelawareNews
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