U.S. District Judge Roy S. Payne refused on Friday to let TCL Communications Technology Holdings Ltd. escape an infringement claim leveled by Ericsson Inc. related to U.S. Patent Number 7,149,510, which describes a method for limiting a mobile application’s access to the device’s native functions. Ahead of the scheduled Dec. 4 trial date, TCL sought summary judgment, arguing the asserted claims relate to an abstract idea that is unpatentable based on the high court’s 2014 decision in Alice Corp. v. CLS Bank International.
Judge Payne was unpersuaded, though, finding instead that the asserted claims of Ericsson’s patent “directed to an improved technological solution to mobile phone security software.”
Even if the patent’s claims did direct to an abstract idea, though, they still put forward a sufficiently inventive concept to distance themselves from an abstract idea — namely, a technological improvement to the problem of limited memory and resources on mobile phones, Judge Payne said.
The judge pointed to a previous Patent Trial and Appeal Board decision not to invalidate the Ericsson patent.
“The fact that the PTAB concluded that TCL failed to establish that a person of ordinary skill in the art would be motivated to combine computer-based security software with the relevant mobile platform technology — because of the limited memory and resources of a mobile phone — suggests that the systems claimed by the '510 patent are not merely conventional applications of computer technology,” Judge Payne wrote.
The judge on Friday also declined to grant TCL summary judgment on Ericsson’s claim it willfully infringed the patent by selling certain smartphones that included the controlling software, and he rejected TCL’s request that the willfulness issue be bifurcated during the upcoming trial.
TCL had argued that it believed in good faith that the patent was invalid and that it was not infringing, pointing out the fact that the same PTAB panel that concluded the patent wasn’t obvious did find that four other Ericsson patents were.
And while Judge Payne conceded that “nothing in the record clearly stands out as egregious,” he said Ericsson had put forward evidence that TCL’s infringement accelerated since the lawsuit was filed, therefore “the court cannot conclude with confidence at this point that no reasonable jury could find that TCL subjectively believed it was infringing a valid patent, and that this intentional conduct was egregious.”
Counsel for the parties did not immediately return requests for comment late Tuesday.
Ericsson filed the instant suit in early 2015, claiming that TCL, a global mobile telecommunications vendor, infringed five of its patents. The suit prompted TCL to seek invalidation of each of the patents at the PTAB, and the board granted inter partes review on each of them. However, only four of the patents were invalidated, leaving the '510 patent as the sole one at issue in the infringement case.
The patent-in-suit is U.S. Patent Number 7,149,510.
TCL is represented by Bradford A. Cangro, Winstol D. Carter Jr., Adam A. Allgood, Jacob A. Snodgrass, Michael J. Lyons and Michael F. Carr of Morgan Lewis & Bockius LLP, Stephen S. Korniczky and Martin R. Bader of Sheppard Mullin Richter & Hampton LLP, and Eric H. Findlay of Findlay Craft PC.
Ericsson is represented by Theodore Stevenson III, Nicholas Mathews, Warren Lipschitz, Mitchell R. Sibley, Samuel L. Baxter and Laurie L. Fitzgerald of McKool Smith PC.
The case is Ericsson Inc. et al. v. TCL Communication Technology Holdings Ltd. et al., case number 2:15-cv-00011, in the U.S. District Court for the Eastern District of Texas.
--Editing by Aaron Pelc.
