Fish & Richardson secured a full Federal Circuit reversal and summary judgment of non-infringement on behalf of Hong Kong uCloudlink Network Technology Limited and uCloudlink (America), Ltd ("uCloudlink") in a patent infringement dispute with SIMO Holdings Inc. ("SIMO") over a mobile device roaming patent. The January 5, 2021 ruling wiped out an $8.2 million judgment against uCloudlink.
SIMO sued uCloudlink in the United States District Court for the Southern District of New York in June 2018, alleging infringement of SIMO's U.S. Patent No. 9,736,689 ("'689 patent") directed to technology for reducing roaming charges on cellular networks while traveling outside of home networks. The lawsuit alleged that some uCloudlink products, including WiFi hotspots that enable access to data services without incurring roaming fees while traveling, infringed multiple claims of the '689 patent, including claim 8, which was directed to a "wireless communication client or extension unit."
In April 2019, the district court granted SIMO summary judgment of infringement applying a questionable construction of claim 8, clearing the way for the dispute to proceed to trial on validity, willfulness, and damages. In a three-day trial in May 2019, the jury found that infringement was willful, ultimately resulting in the district court awarding SIMO $8.2 million in damages.
uCloudlink engaged Fish to handle the appeal to the Federal Circuit. In overturning the verdict against uCloudlink, Fish's appellate team Â- led by John Dragseth, Oliver Richards, James Huguenin-Love, Michael Zoppo, and Phillip Goter - argued, among other deficiencies, that the district court's construction of claim 8 was erroneous. The Federal Circuit not only agreed with uCloudlink's position on claim construction, but also found that SIMO failed to identify a triable issue on whether the accused products included a required claim feature, granting uCloudlink summary judgment of non-infringement.
"We are very proud to have achieved this outcome for uCloudlink, which provides innovative mobile technologies as the world's leading mobile data traffic sharing marketplace," stated Ryan McCarthy, Managing Principal and Chief Representative of Fish's Shenzhen Representative Office. "From the outset of our involvement, it was clear that uCloudlink was on legally solid ground and the accused products did not infringe SIMO's patent. During oral argument, it was immediately clear that Fish's solid briefing had already driven that point home to the panel."