Currently a "closed" zoom conference in progress.
T-MOBILE’S MOTION TO AMEND ITS ANSWER AND COUNTERCLAIMS TO ADD ALLEGATIONS OF INEQUITABLE CONDUCT
Case 6:21-cv-00674-ADA Document 84 Filed 02/06/23
Some opinions. Two major accusations from T-Mobile:
(1) incomplete prior art
(2) False "inventorship" by including Emil Malak as an inventor.
Both accusations are weak at best, not strong enough to invalidate MG patents for INEQUITABLE CONDUCT. jmo.
First - T-Mobile's wi-fi calling system, HotSpot@Home System, existing in 2006 was ignored in prior art by VPLM when filing for MG patents in 2008. T-Mobile has operated a Wi-Fi calling system that uses “DNS queries” since 2006, long before the earliest claimed priority date for the mobile gateway patents in this case.
"...inventors and patent applicant never disclosed T-Mobile’s prior art Wi-Fi calling service (“HotSpot@Home”) to the Patent Office during its six years of prosecution. "
"...HotSpot@Home was based off the Unlicensed Mobile Access (“UMA”) specification, a technical standard developed by multiple telecommunications companies (including T-Mobile) meant to provide alternative access to cellular networks through IP-based broadband connections—i.e., the Internet. Because HotSpot@Home used the Internet, it required the use of Domain Name System (“DNS”) servers, with a specialized domain name (i.e., a Fully Qualified Domain Name (“FQDN”)) from a user’s mobile phone and translated that domain name into an IP address that network protocols can use to locate networked T-Mobile servers connected to the Internet in order to initiate a Wi-Fi call.
HotSpot@Home used DNS servers to connect to a UMA controller, which was required to route a call made over Wi-Fi to T-Mobile’s core cellular network, T-Mobile’s current Wi-Fi calling system uses the same type of DNS queries to deliver IP addresses for its servers to a user’s mobile phone (similar to VPLM's ex. G at TMO-VOIPPAL-00023447)—precisely the functionality that VoIP-Pal seems to claim infringes.
Once T-Mobile became aware of this overlap in accused functionality between its current system and its 2006-era HotSpot@Home system, T-Mobile produced documents describing its HotSpot@Home system and additionally disclosed and charted HotSpot@Home in its invalidity contentions in July 2022. Until recently, however, T-Mobile did not know that VoIP-Pal or its predecessor-in-interest (Digifonica, also an entity associated with Emil Malak) ..."
(weak argument, first TMobile accuses of VPLM ignoring their HotSpot@Home in 2006, which was later to to Unlicensed Mobile Access (“UMA”) specification system modified perhaps after VPLM MG patent filing 2008 (?)to route wi-fi calls which infringes VPLM's MG patents. Why use an "unlicensed mobile access system"? Unlicensing = stealing.)
Second - False inventorhsip
"...Mr. Malak filed declarations for both mobile gateway patents swearing that he was properly an inventor. Yet testimony from the other listed inventors makes clear that, -- redacted --
Misrepresentations regarding inventorship are grounds for finding inequitable conduct.
Rule 9(b) is easily satisfied here. Mr. Malak can show no inventive contribution to the alleged inventions of the mobile gateway patents because he cannot show conception. Rather than conception, he can show only a general goal, which is insufficient for inventorship."
Malak story -
Digifonica (now VoIP-Pal) filed the application that led to the first mobile gateway patent, the ’234 patent, on July 28, 2008. The application identified three inventors: Maksym Sobolyev, Pentti Kalevi Huttunen, and Johan Emil Viktor Bjorsell. Ex. J. More than five years later, VoIP-Pal filed a request to correct inventorship, indicating that Mr. Malak had been omitted as a named inventor “without deceptive intent” and that his addition “was necessitated by amendment of the claims.”7
As to the basis for Mr. Malak’s claim of inventorship,
(a) inventor Mr. Bjorsell testified that Mr. Malak...
(b) inventor Mr. Sobolyev likewise testified:....
(c) inventor Mr. Huttunen’s testimony was similar:.
"...using discovery, T-Mobile had to move to compel email discovery from VoIP-Pal. Judge Gilliland then issued an order directing VoIP-Pal to produce the four inventors’ emails before their depositions. None of the first three inventors deposed produced emails before their depositions; instead, each day (November 29, November 30, and December 1), VoIP-Pal produced each inventors’ documents (or what later turned out to actually only be a subset of those inventors’ documents) during those inventors’ depositions. Gilmore Decl. at ¶ 26. The fourth inventor’s (Mr. Malak’s) voluminous emails were then produced on December 9, 2022,4
VoIP-Pal had not produced over a hundred thousand pages of inventor emails from a Digifonica (now VoIP-Pal) email archive that VoIP-Pal did not access and search until January..."
(Are they kidding? hundred thousand of pages of emails/dodcuments from VPLM and Digifonica? Grasping for straws?
Judge Albright's decision to skip settlement talk and go to trial for triple damages.. A weak argument from T-Mobile.)
