Prism Technologies v. Sprint Spectrum L.P.

Filing 414

MEMORANDUM AND ORDER denying 323 motion to strike; denying 268 motion for summary judgment. Ordered by Senior Judge Lyle E. Strom. (JDR)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEBRASKA
PRISM TECHNOLOGIES, LLC,

)
)
Plaintiff,
)
)
v.
)
)
SPRINT SPECTRUM L.P.,
)
d/b/a SPRINT PCS,
)
)
Defendant.
)
______________________________)

8:12CV123

MEMORANDUM AND ORDER

This matter is before the Court on two related motions.
First, defendant Sprint Spectrum L.P., doing business as Sprint
PCS (“Sprint”) moves for summary judgment against plaintiff Prism
Technologies, L.L.C. (“Prism”) on the basis Sprint did not
infringe upon Prism’s patents (Filing No. 268).

Second, Prism

moves (Filing No. 323) to strike agreements raised in Sprint’s
reply brief (Filing No. 308).

After review of the motions,

briefs, submitted evidence, and relevant law, the Court finds as
follows.
I.

BACKGROUND

A.

PATENTS
Originally, Prism alleged infringement of three

asserted patents (Filing No. 1).

Ultimately, Prism narrowed the

scope of this action to two patents:

U.S. Patent No. 8,127,345

(“Patent ‘345") and U.S. Patent No. 8,387,155 (“Patent ‘155")

(Filing No. 1; Filing No. 270, 2).

Prism dropped its third

asserted patent, U.S. Patent 7,290,288 (“Patent ‘288"), from this
action (Id.).
The United States Patent and Trademark Office (“PTO”)
issued Patent ‘345, entitled “METHOD AND SYSTEM FOR MANAGING
ACCESS TO PROTECTED COMPUTER RESOURCES VIA AN INTERNET PROTOCOL
NETWORK,” on February 28, 2012, from an application filed October
30, 2007 (Filing No. 1-6, at 1).

Patent‘345 is allegedly a

continuation of Patent ‘288, entitled “METHOD AND SYSTEM FOR
CONTROLLING ACCESS, BY AN AUTHENTICATION SERVER, TO PROTECTED
COMPUTER RESOURCES PROVIDED VIA AN INTERNET PROTOCOL NETWORK” and
filed on August 29, 2002 (Id.).
The PTO issued Patent ‘155, entitled “SYSTEM FOR
MANAGING ACCESS TO PROTECTED COMPUTER RESOURCES,” on February 26,
2013, from an application filed November 11, 2010, with the PTO.
Prism contends that the Patent ‘155 application was a
continuation of the Patent ‘345 application.
At issue in this case are Asserted Claims in Patents
‘155 and ‘345 (Filing No. 390, at 3-4).
Asserted Claims in Patent ‘345:

The following are the

1, 33, and 57 (Id. at 4).

following are the Asserted Claims in Patent ‘155:
and 76 (Id. at 3).

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The

7, 11, 37, 56,

B.

PROCEDURE
On April 4, 2012, Prism filed complaints against Sprint

and various other cellular phone providers in separate actions,
alleging direct infringement, indirect contributory infringement,
and indirect inducement of infringement of Patents ‘345 and ‘155
(Filing No. 1; see also Prism v. A&T Mobility, 8:12CV122; Prism
v. T-Mobile USA, Inc., 8:12CV124; Prism v. United States Cellular
Corp., d/b/a U.S. Cellular, 8:12CV125; Prism v. Cellco
Partnership, d/b/a Verizon Wireless, 8:12CV126).

The complaint

was amended September 21, 2012 (Filing No. 36) and March 1, 2013
(Filing No. 84).

On April 23, 2013, the parties submitted a

Joint Claim Construction Statement and the Court conducted a
Markman hearing on July 2, 2013 (Filing No. 108, Filing No. 128).
The Court issued its Markman order on July 30, 2013, accepting
jointly stipulated terms and construing disputed terms (Filing
No. 133).
In the instant motion, Sprint moves for summary
judgment on the ground that it did not infringe upon the Asserted
Claims because access to Sprint’s networks is only allowed after
authenticating the identity of the subscriber -- not the phone
(Filing No. 270).

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II.

STANDARD OF REVIEW
A motion for summary judgment shall be granted by the

Court “if the movant shows that there is no genuine dispute as to
any material fact and the movant is entitled to judgment as a
matter of law.”

Fed. R. Civ. P. 56(a).

A “material” fact is one

that “might affect the outcome of the suit under the governing
law,” and a genuine issue of material fact exists when “the
evidence is such that a reasonable jury could return a verdict
for the nonmoving party.”
U.S. 242, 248 (1986).

Anderson v. Liberty Lobby, Inc., 477

On a motion for summary judgment, facts

must be viewed in the light most favorable to the nonmoving party
only if there is a genuine dispute as to those facts.

Wood v.

SatCom Marketing, LLC, 705 F.3d 823, 828 (8th Cir. 2013).
The moving party bears the burden to establish that no
genuine issue of material fact exists.

Fed. R. Civ. P. 56(a);

Adickes v. S.H. Kress & Co., 398 U.S. 144, 157 (1970).

If the

moving party does not meet its initial burden, summary judgment
must be denied even if no affidavits or other evidence have been
submitted in opposition to the motion.

See id. at 159-60.

After

the moving party has met its burden, “the non-moving party may
not rest on the allegations of his pleadings, but must set forth
specific facts, by affidavit or other evidence, showing that a

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genuine issue of material fact exists.”

Singletary v. Missouri

Dept. of Corrections, 423 F.3d 886, 890 (8th Cir. 2005).
Patent infringement occurs when a person “without
authority makes, uses or sells any patented invention, within in
the United States . . . during the term of the patent.”

35

U.S.C. § 271(a).
An infringement analysis entails
two steps. The first step is
determining the meaning and scope
of the patent claims asserted to be
infringed. The second step is
comparing the properly construed
claims to the device accused of
infringing.
Markman v. Westview Insruments, Inc., 52 F.3d 967. 976 (Fed. Cir.
1995) (citations and footnotes omitted).

In order to succeed on

a claim of literal infringement, the plaintiff must prove that
every limitation of the patent claim limitation is found in the
accused device by a preponderance of the evidence.

See

SmithKline Diagnostics, Inc. v. Helena Lab. Corp., 859 F.2d 878,
889 (Fed. Cir. 1988) (citing Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1054 (Fed. Cir. 1988); Pennwalt Corp. v.
Durand–Wayland, Inc., 833 F.2d 931, 935 (Fed. Cir. 1987) (en
banc)).

Therefore, in order to succeed in its motion for

complete summary judgment, Sprint need only point to “specific
ways in which accused systems did not meet the claim

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limitations.”

Exigent Tech. v. Atrana Solutions, Inc., 442 F.3d

1301, 1308-09 (Fed. Cir. 2006) (citing Celotex Corp. v. Catrett,
477 U.S. 317, 326 (1986); United States v. Four Parcels, 941 F.2d
1428, 1438 n.19 (11th Cir. 1991) (en banc)).

Sprint does not

need to present affirmative evidence of non-infringement.
(citing Celotex Corp., 477 U.S. at 326).

Id.

Sprint may rely solely

upon “pleadings, depositions, answers to interrogatories, and
admissions on file.”
324).

Id. at 1308 (citing Celotex, 477 U.S. at

Therefore, it is Sprint’s burden to point to specific

portions of the record which illustrate that Prism has failed to
sustain Prism’s burden.
III. DISCUSSION
The issue before the Court is whether it can be said
that Sprint’s systems identify its devices or the person using
the device when allowing access to its networks.
argument for summary judgment is as follows.

Sprint’s

This Court

construed Prism’s patents to authenticate devices.
technology authenticates people (subscribers).

Sprint’s

Therefore,

Sprint’s technology cannot infringe upon Prism’s patents.

This

argument fails to satisfy the requirements of summary judgment
because if Sprint’s technology does authenticate only people,
then evidence exists to the contrary creating a material,
disputed question of fact.
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Sprint asserts that its 3G and 4G networks require
authentication of a person by identifying the phone’s identity.
This statement is internally inconsistent because identification
of a device is not tantamount to identification of a person.
Court made this distinction in its Markman order.

The

Filing No.

133, at 53-56, 68.
Also, as Prism sets out in its brief in opposition,
Sprint’s networks simply cannot authenticate people.

If Sprint

did authenticate subscribers, and not devices, how do nonsubscribers use subscribers’ devices?

If Sprint has the

technology to identify individual subscribers, then its
subscribers could access Sprint’s network with non-Sprint
devices, to wit:

a Sprint subscriber could use a phone with an

AT&T SIM card to access Sprint’s network because Sprint
identifies subscribers, not the device.

Of course, these

arguments are outlandish and cannot withstand scrutiny.
Sprint seems to rely solely on the testimony of Prism’s
expert, Mr. Lyons, who used the term subscriber liberally, and
Sprint now seeks to capitalize upon it.

To the extent that

Sprint is not misconstruing Mr. Lyons’ expert report, there is a
question as to Mr. Lyons’ true meaning that must be determined by
the jury.

Accordingly,

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IT IS ORDERED:
1)

Defendant’s motion (Filing No. 268) is denied.

2)

Plaintiff’s motion (Filing No. 323) is denied.

DATED this 8th day of June, 2015.
BY THE COURT:
/s/ Lyle E. Strom
____________________________
LYLE E. STROM, Senior Judge
United States District Court

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