The early-stage evaluations are flying back and forth in the patent lawsuit between Nomadix and Blueprint RF. A second round of motions has been decided in Nomadix’s favor, but unlike the initial industry reaction the final outcome appears far from being determined.
The lawsuit, filed in the Central District Court of California on October 24, 2014, alleges Blueprint's Dominion gateway infringes on seven patents held by Nomadix. Five of the patents address browser redirection to a login page, and two address automatic folio billing for Internet connection charges. According to a release issued by Nomadix: This Nomadix patent (U.S. Patent No. 8,156,246) protects key technology for redirecting user computers to captive portal pages.
In an order for partial summary judgement, almost a year before a trial is scheduled, Judge Dean D. Pregerson, U.S. District Court judge for the Central District of California, ruled for Nomadix on infringement of two claims of one of the patents. According to documents we received from Nomadix, this decision limits its focus going forward to counting its damages and arguing for an enhanced award for “willful infringement.” This may involve issuing subpoenas to Blueprint RF’s customers and other forms of legal discovery.
"We are pleased with the court's ruling," explained Fred Reeder, chief commercial and operating officer of Nomadix. "This ruling vindicates our belief that our patents are valid.”
“Not so fast,” said Ron Peterson, CEO of Blueprint RF. Peterson states that his company holds incontrovertible evidence that Nomadix did not invent “redirection to a login page” or “automatic folio billing of Internet connect charges.” Blueprint cites numerous sources demonstrating that several early HSIA providers put these techniques into commercial operation well before Nomadix claims to have invented them.
Now that the judge has interpreted at least some of the Nomadix patent claims to cover the Dominion gateway, the focus of the lawsuit turns to the key issue of patent validity. Peterson explained that Judge Pregerson did not decide validity in Nomadix’s favor, but deferred this decision until later in the case. Trial is currently scheduled to occur in early 2017.
In a prior decision, Judge Pregerson ruled that Blueprint RF can present its “inequitable conduct” evidence that the patents are invalid due to alleged “fraud on the Patent Office” committed when Nomadix originally obtained the patents. “This unusual ruling is a big deal in a case like this,” Peterson said.
Peterson has remained firm in his stance against Nomadix. “The rumors of our demise are greatly exaggerated. When the final arguments are heard, I believe we will prevail and hotels will no longer be required to pay pass-through licensing fees earmarked for Nomadix. This result would absolutely benefit the entire industry by lowering costs for providing guest Internet access, and freeing the industry to innovate,“ said Peterson.
It’s important to note that Blueprint RF is investing in a two-pronged legal defense, including preparation for trial in court and separately challenging validity of the patents at the U.S. Patent Office. The company has recently filed Inter Partes Reviews (IPRs) with the United States Patent Trial and Review Board (PTAB) to invalidate five patents, with additional challenges in the works. If Blueprint is successful and the United States Patent office agrees, all of the patents will be found invalid.
It appears that this case is far from over, with trial and the initial decisions from the Patent Office scheduled and appeals to likely follow. In the meantime, we will keep you posted on future developments.