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Visual Interactive Phone Concepts, Inc. v. U.S. Cellular Corp.

United States District Court, N.D. Illinois, Eastern Division

February 13, 2014

U.S. CELLULAR CORP., Defendant/Counter-Plaintiff.


ELAINE E. BUCKLO, District Judge.

U.S. Cellular Corporation ("U.S. Cellular" or "Defendant") has moved for summary judgment on the ground that Visual Interactive Phone Concepts ("VIPC" or "Plaintiff") violated 35 U.S.C. § 305 by enlarging its patent claims during a reexamination proceedings before the U.S. Patent and Trademark Office ("PTO"), which would render the underlying patents invalid as a matter of law. See Quantum Corp. v. Rodime, PLC, 65 F.3d 1577, 1584 (Fed. Cir. 1995). Alternatively, U.S. Cellular argues that VIPC's claims substantively changed when they emerged from reexamination in March 2013 and cannot be enforced before that date.

U.S. Cellular's motion is denied for the reasons stated below.


The patents-in-suit, U.S. Patent Nos. 5, 606, 361 ("the 361 patent") and 5, 724, 092 ("the 092 patent"), were issued in 1997 and 1998, respectively, to inventors John Davidsohn and Anthony Cinotti.[1] As VIPC acknowledges, the patents disclose an invention from a previous era of electronic commerce. Compl. at ¶ 12. The "primary object" of the present invention is to provide consumers with a system for viewing products and services on a videophone that is "easier and faster to use, " "less expensive, " and "more user-friendly than a personal computer." See 361 Patent, Col. 2, Lines 28-33.

The claimed "videophone interactive mailbox facility system" is comprised of three interconnected systems: (1) user stations, (2) a central data center, and (3) vendor stations. The user station for this invention includes, inter alia, "a videophone for viewing transaction information sent or received to conduct a transaction." Id. at Claim 1(a). A "videophone, " in turn, is described in the specification as:

[A]ny device having the capabilities to receive video/voice and/or video/text as its primary function and which, in the future, may have additional capabilities added to it that will enable it to perform functions that a PC computer performs today. Further, a videophone is defined to include cellular videophones or wireless videophone or all videophones integrated with additional PC technologies and similar capabilities (disk storage, CDs, diskettes, and memory in the megabyte range and up and/or keyboards).

Id. at Col. 10, lines 32-41.

VIPC allegedly disclaimed a particular construction of the claimed "videophone" during its infringement action against Virgin Mobile USA, LLC filed in May 2005 concerning the same patents-in-suit. See VIPC v. Virgin Mobile USA, LLC, No. 3:05-cv-2661 (MLC) (D.N.J.). In its claim construction brief from the Virgin Mobile litigation, VIPC argued that a "videophone" should be defined as:

[A] device with the capability of receiving and viewing videophone messages that includes a cellular and wireless videophone and excludes general-purpose computers and wherein videophone messages include moving images, still images, text and/or voice.

Id., Dkt. No. 19 at ¶ 29 (emphasis added). VIPC now contends that it was merely trying to distinguish its "videophone" from desktop personal computers during the Virgin Mobile litigation.

The Virgin Mobile court ultimately held that VIPC's infringement action was barred by judicial estoppel, which obviated the need to construe the underlying patent claims. See VIPC v. Virgin Mobile USA, LLC, 2008 WL 4192065 (D.N.J. Sept. 8, 2008) (granting summary judgment against VIPC based on its inconsistent, bad faith representations regarding the validity of an exclusive license agreement).

VIPC filed this case and several other infringement actions in 2011.[2] Shortly thereafter, an entity known as Muir Patent Consulting, LLC filed ex parte requests with the PTO seeking reexamination of the patents-in-suit.[3] The PTO granted these requests for reexamination and issued non-final office actions rejecting all claims in the 361 and 092 Patents based on citations to prior art. Def.'s Statement of Facts ("DSOF") at ¶¶ 9, 19.

In response to the PTO's first office actions, VIPC attempted to place its claims in context. Although smart phones are now ubiquitous, VIPC argued that "the concept of a single device that incorporates the functionality of a phone, a display screen, a video camera, and potentially additional PC technologies' was novel and non-obvious when the [361 and 092 Patent] application[s] [were] filed." Id. at Exs. F and L. With regard to configuration, VIPC underscored that its claimed videophone "is not a mere collection of separate components, " but ...

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