{"id":753,"date":"2016-04-05T12:41:39","date_gmt":"2016-04-05T16:41:39","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=753"},"modified":"2016-04-06T09:24:23","modified_gmt":"2016-04-06T13:24:23","slug":"equitable-estoppel-stops-troll-from-asserting-patents-that-its-assignor-failed-to-assert","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=753","title":{"rendered":"Equitable Estoppel Stops NPE From Asserting Patents that its Assignor Failed to Assert"},"content":{"rendered":"

In High Point SARL v. Sprint Nextel Corporation<\/em>, [2015-1298] (April 5, 2016), the Federal Circuit affirmed\u00a0summary judgment that equitable\u00a0estoppel and laches preclude prosecution of High Point’s claims for infringement of\u00a0United States Patent Nos. 5,195,090, 5,195,091,\u00a05,305,308, and 5,184,347. \u00a0High Point is an NPE that acquired the patents from successors of AT&T and Lucent.<\/p>\n

The Federal Circuit\u00a0held\u00a0that the district court did not abuse its discretion
\nin determining that equitable estoppel precludes\u00a0High Point from bringing this case against Defendants. \u00a0The Court said that three elements must be established for equitable estoppel\u00a0to bar a patentee\u2019s suit:<\/p>\n

    \n
  1. the patentee, through misleading conduct (or
    \nsilence), leads the alleged infringer to reasonably
    \ninfer that the patentee does not intend to enforce
    \nits patent against the alleged infringer;<\/li>\n
  2. the alleged\u00a0infringer relies on that conduct; and<\/li>\n
  3. the\u00a0alleged infringer will be materially prejudiced if
    \nthe patentee is allowed to proceed with its claim.<\/li>\n<\/ol>\n

    The Federal Circuit\u00a0concluded that High Point\u2019s predecessors\u2019\u00a0misleading course of conduct caused Sprint to reasonably\u00a0infer that they would not assert the patents-in-suit while\u00a0Sprint purchased unlicensed infrastructure to build its\u00a0network. The Court said that misleading conduct occurs when the alleged\u00a0infringer is aware of the patentee or its patents, and\u00a0knows or can reasonably infer that the patentee has\u00a0own of the allegedly infringing activities for some time. \u00a0The Federal Circuit said that the\u00a0evidence showed both silence and active\u00a0conduct.<\/p>\n

    The Federal Circuit also agreed with the district court that Sprint detrimentally relied upon the\u00a0inaction of High Point’s predecessors.<\/p>\n

    Finally, the Federal Circuit agreed with the district court that Sprint were prejudiced by the delay, both economically because of continued investment in the accused technology, and through loss of evidence over time.<\/p>\n

    The\u00a0effect of equitable estoppel is \u201ca license to use the invention\u00a0that extends throughout the life of the patent.\u201d<\/p>\n","protected":false},"excerpt":{"rendered":"

    In High Point SARL v. Sprint Nextel Corporation, [2015-1298] (April 5, 2016), the Federal Circuit affirmed\u00a0summary judgment that equitable\u00a0estoppel and laches preclude prosecution of High Point’s claims for infringement of\u00a0United States Patent Nos. 5,195,090, 5,195,091,\u00a05,305,308, and 5,184,347. \u00a0High Point is … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[1],"tags":[],"class_list":["post-753","post","type-post","status-publish","format-standard","hentry","category-uncategorized"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/753","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=753"}],"version-history":[{"count":3,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/753\/revisions"}],"predecessor-version":[{"id":756,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/753\/revisions\/756"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=753"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=753"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=753"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}