NOTE: This disposition is nonprecedential.

 

United States Court of Appeals 

for the Federal Circuit ______________________ 

PRISM TECHNOLOGIES LLC,

Plaintiff-Appellant

v.

SPRINT SPECTRUM L.P., DBA SPRINT PCS,

Defendant-Appellee

______________________ 

2018-1108

______________________ 

Appeal from the United States District Court for the 

District of Nebraska in No. 8:12-cv-00123-LES-TDT, 

Senior Judge Lyle E. Strom.

______________________ 

Decided: February 1, 2019 

______________________ 

PAUL J. ANDRE, Kramer Levin Naftalis & Frankel 

LLP, Menlo Park, CA, argued for plaintiff-appellant. Also 

represented by LISA KOBIALKA; MARK BAGHDASSARIAN,

JONATHAN CAPLAN, AARON M. FRANKEL, CRISTINA 

MARTINEZ, New York, NY. 

 CARTER GLASGOW PHILLIPS, Sidley Austin LLP, Washington, DC, argued for defendant-appellee. Also represented by JENNIFER J. CLARK, RYAN C. MORRIS,
2 PRISM TECHNOLOGIES LLC v. SPRINT SPECTRUM L.P. 

KATHERINE L. OLSON; MICHAEL J. BETTINGER, IRENE 

YANG, San Francisco, CA. 

 ______________________ 

Before NEWMAN, TARANTO, and CHEN, Circuit Judges.

TARANTO, Circuit Judge. 

Prism Technologies, LLC is the owner of two related 

patents, U.S. Patent Nos. 8,127,345 and 8,387,155, that 

address access to information over networks that are 

“untrusted.” In 2012, Prism brought suits in the District 

of Nebraska against several cellphone carriers, among 

them Sprint Spectrum L.P. and T-Mobile USA, Inc., 

alleging infringement of those patents (plus one other 

patent that is not at issue and so is not further mentioned 

here). We have before us an appeal (the second appeal) in 

the suit against Sprint. The issue presented is the effect 

on this case of this court’s invalidation of various claims of 

the two patents in the suit against T-Mobile. We hold 

that the district court did not abuse its discretion in 

applying our invalidation ruling in the case against TMobile to set aside the judgment against Sprint in this 

case. We therefore affirm.

I 

In early 2015, Prism and Sprint went to trial. Before 

trial, the parties stipulated that “Sprint may not argue 

that Sprint does not infringe because the claims are 

allegedly invalid.” J.A. 5. Prism tried four patent claims 

against Sprint: claims 1 and 33 of the ʼ345 patent, and 

claims 7 and 37 of the ʼ155 patent. The jury found that 

Sprint had infringed those claims and awarded $30 

million. The district court entered a judgment for Prism 

and against Sprint for that amount, plus costs, in June

2015. This court affirmed. Prism Tech., LLC v. Sprint 

Spectrum L.P., 849 F.3d 1360 (Fed. Cir. Mar. 6, 2017), 

cert. denied, 138 S. Ct. 429 (Nov. 6, 2017).
PRISM TECHNOLOGIES LLC v. SPRINT SPECTRUM L.P. 3

After this court denied rehearing but before Sprint 

filed a petition for a writ of certiorari in the Sprint case, 

this court decided Prism Technologies, LLC v. T-Mobile 

USA, Inc., 696 F. App’x 1014 (Fed. Cir. June 23, 2017), 

cert. denied, 138 S. Ct 689 (2018). That decision addressed an appeal by Prism and a cross-appeal by TMobile from the judgment in Prism’s unsuccessful case 

against T-Mobile based on the same two patents. We held 

that all the claims before us are invalid under 35 U.S.C. 

§ 101 (while rejecting T-Mobile’s challenge to the denial of 

attorney’s fees).

Less than a week later, Sprint sought relief from the 

June 2015 judgment under Rule 60(b) of the Federal 

Rules of Civil Procedure. Relying on Blonder-Tongue 

Laboratories, Inc. v. University of Illinois Foundation, 402 

U.S. 313, 349–50 (1971), Mendenhall v. Barber-Greene 

Co., 26 F.3d 1573 (Fed. Cir. 1994), and other authorities,

Sprint argued that this court’s T-Mobile invalidity ruling 

required the district court to set aside the judgment in 

Sprint’s case, a judgment whose execution had been 

stayed pending completion of appeals (which had not 

occurred, given that Sprint’s petition for certiorari was 

still pending). When Prism suggested to the district court 

that this court’s May 2017 mandate (issued after denial of 

rehearing) precluded any such relief, Sprint asked this 

court to recall the mandate. This court denied the request, stating that the relief was “unnecessary to give 

effect to the preclusion law that Sprint invokes in support 

of its recall motion and in support of its Rule 60(b) motion 

in district court.” J.A. 35165. We added:

To avoid any doubt, this court here confirms 

that the May 2017 mandate does not alter how 

the district court should decide the preclusive effect of the T-Mobile ruling, which did not exist in 

May 2017. The district court must consider 

Sprint’s preclusion motion—including any issues 

about what patent claims were actually the sub-
4 PRISM TECHNOLOGIES LLC v. SPRINT SPECTRUM L.P. 

ject of this court’s T-Mobile ruling—by applying 

the standards of Mendenhall . . ., its successors, 

and any other relevant law. . . . [T]he May 2017 

mandate should not be treated by the district 

court as altering whatever conclusion it would 

otherwise reach about Sprint’s Rule 60(b) motion.

J.A. 35165–66. 

The district court granted Sprint’s motion for relief 

from the judgment on August 8, 2017. The court concluded that the patent claims at issue in the T-Mobile appeal 

included those on which Sprint had been found liable in 

this case. On that basis, the court set aside the June 2015

judgment against Sprint.

On September 27, 2017, the court denied Prism’s motion to alter the August 8, 2017 judgment. Prism appealed on October 9, within the 30 days allowed under 28 

U.S.C. § 2107 and Rule 4 of the Federal Rules of Appellate Procedure. We have jurisdiction to hear the appeal. 

See 28 U.S.C. § 1295(a). We review the district court’s 

grant of Sprint’s Rule 60(b) motion, and refusal to modify 

that grant, for an abuse of discretion. See Harley v. 

Zoesch, 413 F.3d 866, 870 (8th Cir. 2005); Innovative 

Home Health Care, Inc. v. P.T.-O.T. Assocs. of the Black 

Hills, 141 F.3d 1284, 1286 (8th Cir. 1998). 

II

The principal issue before us is whether the four patent claims on which Sprint was held liable in this case 

were among the claims held invalid in the T-Mobile case. 

As to two of the claims—claim 1 of the ’345 patent and 

claim 37 of the ’155 patent—there is no dispute. There is 

a dispute as to the other two—claim 33 of the ’345 patent 

and claim 7 of the ’155 patent. We conclude that those 

two claims, like the other two, were the subject of this 

court’s T-Mobile invalidity decision.
PRISM TECHNOLOGIES LLC v. SPRINT SPECTRUM L.P. 5

A 

We begin by describing what occurred in the district 

court in Prism’s case against T-Mobile. When T-Mobile 

answered the operative complaint, it stated an affirmative 

defense of invalidity of the patents at issue “for failing to 

comply with the conditions for patentability set forth in 

Title 35, United States Code § 101 et seq., including, 

without limitation, §§ 102, 103 and/or 112.” J.A. 2487. It 

also stated “a counterclaim for declaratory judgment of 

noninfringement, and/or invalidity arising under the 

patent laws of the United States, 35 U.S.C. §§ 1 et seq.,” 

J.A. 2490, and asked for a “declaration that each of the 

claims of the [three patents then at issue] is invalid,” J.A. 

2498. In its separately numbered counterclaims for each 

patent, T-Mobile asserted that the claims are “invalid for 

failing to satisfy one or more of the conditions of patentability set forth in Title 35, United States Code, including

§§ 102, 103 and/or 112.” J.A. 2495, 2496. Although § 101 

is not there expressly mentioned, the counterclaims use 

“including” language, and this court has ruled that § 101, 

like §§ 102, 103, and 112, states “conditions of patentability.” Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1330 n.3 

(Fed. Cir. 2012); see also J.A. 2487 (T-Mobile itself, in its 

affirmative defense, using the similar phrase “conditions 

for patentability” to cover § 101). T-Mobile’s responsive 

pleading can be read as encompassing § 101 counterclaims, though that characterization is hardly inevitable.1

 

1 Under any local rules on pleading specificity and 

cases applying the Federal Rules of Civil Procedure, it is 

possible that T-Mobile’s responsive pleading may not have 

sufficiently pleaded a counterclaim. See, e.g., Ashcroft v. 

Iqbal, 556 U.S. 662 (2009); Bell Atlantic Corp. v.

Twombly, 550 U.S. 544 (2007); In re Bill of Lading 

Transmission and Processing System Patent Litigation, 

681 F.3d 1323 (Fed. Cir. 2012); McZeal v. Sprint Nextel 
6 PRISM TECHNOLOGIES LLC v. SPRINT SPECTRUM L.P. 

On July 17, 2015, T-Mobile moved for summary 

judgment of patent ineligibility of what were then the 

“asserted claims.” J.A. 34808. Specifically, as of July 

2015, the claims being asserted by Prism were claims 1, 

33, 39, 50, 57, 70, 77, and 87 of the ’345 patent and claims

7, 11, 32, 37, 50, 56, 74, 75, 76, and 93 of the ’155 patent. 

We note that all four of the claims that are the basis of 

the judgment in the Sprint case are on that list. TMobile’s motion did not clarify whether affirmative defenses or counterclaims or both were at issue.

Prism responded on August 21, 2015, by opposing TMobile’s motion for summary judgment and, by crossmotion, seeking summary judgment of eligibility of the 

then-asserted claims. Prism contended that T-Mobile had 

not timely presented an eligibility challenge, discussing 

the issue only as a defense. Prism also argued eligibility 

on the merits.

On September 22, 2015, the district court granted 

Prism’s motion for summary judgment of eligibility and

denied T-Mobile’s motion for summary judgment of ineligibility. J.A. 30671–78. The court said nothing to suggest 

that it thought that T-Mobile had not properly presented

the § 101 issue; the court discussed only the merits. The 

 

Corp., 501 F.3d 1354 (Fed. Cir. 2007); see also K-Tech 

Telecommunications, Inc. v. Time Warner Cable, Inc. 714 

F.3d 1277 (Fed. Cir. 2013) (summarizing standards as of 

April 2013); Schwendimann v. Arkwright, Inc., 2008 WL 

2901691 (D. Minn. 2008) (applying McZeal standards to 

counterclaims). The parties’ actions, however, sufficiently 

establish that both T-Mobile and Prism ultimately recognized the § 101 challenge as a counterclaim. In these 

circumstances, we do not consider whether T-Mobile’s 

pleading would be adequate under the standards applicable in or around March 2013 or under the standards 

applicable today. 
PRISM TECHNOLOGIES LLC v. SPRINT SPECTRUM L.P. 7

court did not say whether affirmative defenses, counterclaims, or both were at issue. Nor did the court limit 

which patent claims were covered by its ruling to only a 

subset of the “asserted claims” listed in T-Mobile’s motion 

for summary judgment—even though on September 11, 

2015, Prism had narrowed its elected claims to just eight, 

namely, claims 1, 77, and 87 of the ’345 patent and claims 

11, 37, 56, 74, and 75 of the ’155 patent. That list excludes two of the claims in Prism’s case against Sprint 

(the present case): claim 33 of the ’345 patent and claim 7 

of the ’155 patent.

In the second half of October 2015, Prism and TMobile went to trial. Prism narrowed the claims it asked 

the jury to address still further, dropping claims 74 and 

75 of the ’155 patent. On October 30, 2015, the jury found 

that T-Mobile had not infringed the six claims it was 

charged with addressing and, pursuant to the instruction 

on the verdict form, did not reach the questions of invalidity under §§ 102, 103, and 112 on the verdict form. 

After trial, T-Mobile filed a motion for judgment as a 

matter of law, under Rule 50(b) of the Federal Rules of 

Civil Procedure. In addition to seeking judgment in its 

favor of invalidity under §§ 102 and 112, T-Mobile argued 

that “the asserted claims are ineligible under 35 U.S.C. 

§ 101.” J.A. 34228 (capitalization omitted). T-Mobile 

“incorporate[d] by reference” its motion for summary 

judgment and declared that it “maintains that the claims 

were ineligible based on the pre-trial summary judgment 

record alone.” Id. at 34228 n.1. It argued that, in any 

event, “the evidence at trial prove[d] that there is nothing 

inventive in the asserted claims that could confer eligibility.” Id. at 34228. 

As to that argument, T-Mobile concentrated on testimony by Prism’s witnesses about use of a “hardware 

identifier” to “identify a person requesting access to 

resources over the Internet,” id. at 34229, and it gave two 
8 PRISM TECHNOLOGIES LLC v. SPRINT SPECTRUM L.P. 

answers to that testimony. First, it said, “the concept of a 

hardware identifier is not inventive.” Id. at 34230. 

Second, it added, a hardware identifier “is not even recited in the asserted claims.” Id. In making that point, TMobile cited only the six tried claims. Id. at 34230–31. 

On the other hand, it introduced that citation with a nonlimiting “e.g.,” and when it noted that other claims call for 

a hardware identifier, it did not point to any of the claims 

on the longer list that were the subject of the summary 

judgment ruling. Id. at 34231.

The district court denied the post-trial motions, including T-Mobile’s request for attorney’s fees, on April 6, 

2016. The court did not identify what claims of the patents were at issue in the Rule 50(b) motion.

B 

Prism appealed, and T-Mobile cross-appealed. In the 

notice of cross-appeal, T-Mobile stated that it was appealing from the April 6, 2016 judgment that denied its Rule 

50(b) motion and request for fees

and from any and all other judgments, orders, 

opinions, rulings, and findings that merge therein 

or are pertinent or ancillary to the foregoing, including, without limitation, the Order entered on 

September 22, 2015 (Dkt. 428), denying T-Mobile’s 

Motion for Summary Judgment of Patent Ineligibility (Dkt. 309).

J.A. 34612.

In its opening brief as cross-appellant, T-Mobile described the district court’s ruling on summary judgment 

and stated: “While Prism subsequently narrowed its case 

at trial, T-Mobile maintains that all of the claims addressed in its motion are patent-ineligible.” Corrected 

Principal and Response Brief for Defendant/CrossAppellant T-Mobile USA, Inc. at 10 n.4. T-Mobile referred to its § 101 challenge as a “request for declaratory 
PRISM TECHNOLOGIES LLC v. SPRINT SPECTRUM L.P. 9

judgment,” not as a mere affirmative defense. Id. at 33. 

T-Mobile did not limit its challenge to the district court’s 

§ 101 ruling to the six claims tried to the jury. To the 

contrary, it stated its request for relief as to § 101 more 

broadly: “The Court should reverse the district court’s 

eligibility rulings on T-Mobile’s summary judgment and 

Rule 50(b) motions, and hold that the claims addressed 

therein are not patent-eligible.” Id. at 67; see id. at 76

(“The Court should . . . reverse the district court’s rulings 

that Prism’s claims are directed to patent-eligible subject 

matter . . . .”). That request, naturally read, challenges 

the summary judgment ruling in its full scope, covering 

all the claims the court there held eligible for patenting. 

In its cross-appeal, T-Mobile attacked a broader set of 

claims than what had been asserted by Prism at trial; the 

necessary implication is that T-Mobile sought to prevail 

on a counterclaim of invalidity, not just obtain relief 

under an affirmative defense.

In responding to T-Mobile’s argument on the crossappeal, Prism did not assert that T-Mobile’s cross-appeal 

was actually or necessarily limited to the six tried claims. 

To the contrary, Prism treated the full summary judgment ruling as before this court. See Plaintiff-Appellant 

Prism Technologies LLC’s Reply and Cross-Appeal Response Brief at 4–5, 23–50. Indeed, to show the inventive 

concepts that went beyond the abstract idea at issue, 

Prism expressly discussed a number of claims other than 

the six that were tried. Id. at 33–34. 

That fact is significant enough, but two particular aspects of Prism’s discussion are worth highlighting. First, 

Prism specifically discussed claim 33 of the ’345 patent 

and claim 7 of the ’155 patent. Id. Those are the two 

claims, among the four on which Sprint was held liable in 

this case, that Prism argues were not before this court in 

the T-Mobile case. Id. Second, Prism specifically argued 

that, “as discussed further below, the inclusion of hardware identity limitations in the Asserted Claims repre-
10 PRISM TECHNOLOGIES LLC v. SPRINT SPECTRUM L.P. 

sents a specific and novel solution to a real problem and 

provides real benefits.” Id. at 24 (emphasis added). It 

then elaborated on what claims it meant, describing 

various claims that “provide additional specificity on the 

identity data used for authentication, including that they 

are generated from an internal hardware component, 

unique or unique to the client computer device, and come 

from an external device, an external object inserted into a 

reader associated with the client computer or a SIM card.” 

Id. at 34 (citing claims 57, 69, and 70 of the ’345 patent 

and claims 6, 7, and 75 of the ’155 patent). Not one of 

those claims is among the six tried in Prism’s case against 

T-Mobile. And Prism wrapped up its eligibility discussion 

with a reference back to “hardware identity” claim limitations. Id. at 50.

On June 23, 2017, this court agreed with T-Mobile 

that “the asserted claims recite ineligible subject matter 

because they: (1) are directed to the abstract idea of 

controlling access to resources; and (2) are non-inventive 

because they recite generic computer hardware running 

generic computer software that performs the abstract 

functions routine to the process of restricting access.” 696 

F. App’x at 1017. The court did not limit its ruling to the 

six tried claims. Rather, following Prism’s own presentation, it addressed other claims. Of particular note, the 

court discussed, and rejected on the merits, Prism’s

argument relying on “the recited ‘identity data’ (such as a 

hardware identifier)” and “hardware identity data.” Id. at 

1017–18 (citing pages 24 and 50 of the relevant Prism 

brief). As we have just observed, Prism, in making that 

argument, was addressing claims other than the six that 

were tried.2

 

2 This court addressed the merits of Prism’s argument about identity data and hardware, which T-Mobile 

continued to address on the merits in its final brief. Reply 
PRISM TECHNOLOGIES LLC v. SPRINT SPECTRUM L.P. 11

C 

In the circumstances presented, we conclude that this 

court’s T-Mobile decision is properly understood as covering, and invalidating, all the claims that were the subject 

of the district court’s eligibility ruling on summary judgment—which undisputedly included all four of the claims 

on which Sprint was held liable to Prism in this case. The 

parties’ filings in this court in T-Mobile, including the 

presentation by Prism itself, strongly so indicate. 

We do not see enough in the proceedings at the district court level in T-Mobile to override what the record at 

the appellate level strongly indicates. There is no dispute 

that, if T-Mobile’s § 101 challenge is viewed as a counterclaim, the rejection of the challenge on summary judgment—covering all claims then at issue—was appealable 

after final judgment. As we have described, T-Mobile’s 

responsive pleading, though not clear, can be read as 

including counterclaims for a declaratory judgment of 

§ 101 ineligibility. And at the appellate level, both parties, and this court, effectively treated the § 101 challenge 

as a counterclaim: the § 101 discussion clearly extended 

beyond the tried claims. We see no sufficient reason to 

decline to give effect to that treatment of the character of 

the § 101 challenge as a counterclaim, given that Prism, 

before this court’s decision on appeal, never contested the 

scope of T-Mobile’s cross-appeal, and our T-Mobile decision must be read as deciding the eligibility question for 

all of the claims addressed in the district court’s summary-judgment ruling.

 

Brief for Defendant/Cross-Appellant T-Mobile USA, Inc. 

at 11–13. We note that, in a footnote attached to that 

brief’s textual discussion of the merits of the argument, TMobile stated that this feature is not in the tried claims. 

Id. at 12 n.1. This court did not rely on that statement, 

but addressed this feature on the merits. 
12 PRISM TECHNOLOGIES LLC v. SPRINT SPECTRUM L.P. 

In any event, Prism is now in no position to insist that 

a formal alteration of the responsive pleading was needed 

to further clarify the counterclaim status of the § 101 

challenge. In T-Mobile, the only reason that there was an 

appealable final judgment, despite the absence of a ruling 

on other counterclaims of invalidity (which mention 

§§ 102, 103, and 112), was that Prism and T-Mobile 

agreed to treat those counterclaims of invalidity as affirmative defenses, without a formal pleading change. See 

J.A. 35269. Nor has there been any suggestion that a 

formal alteration of T-Mobile’s pleading was any more 

required for present purposes, where the parties effectively treated T-Mobile’s § 101 challenge as a counterclaim 

when the matter was presented to this court.

III

Having concluded that this court’s decision in TMobile held invalid all four claims on which Sprint was 

held liable to Prism in this case, we also conclude that the 

district court properly set aside the judgment against 

Sprint. The courts have long recognized a strong federal 

patent policy against enforcing an unexecuted judgment 

of patent liability at least where all of the following circumstances are present: the patent claims underlying 

that judgment have been held invalid by another decision 

having sufficient finality for this purpose; proceedings on 

direct review of the judgment have not yet been completed; and no agreement exists making portions of the judgment final. See Blonder-Tongue, 402 U.S. at 349–50; 

Mendenhall, 26 F.3d at 1579–80 (invalidity judgment may 

be raised “at any stage of the affected proceedings”); id. at

1583–84; see also WesternGeco LLC v. Ion Geophysical 

Corp., Nos. 2013-1527, 2014-1121, -1526, -1528, 2019 WL 

166173 at *2–3 (Fed. Cir. Jan. 11, 2019); ePlus, Inc. v. 

Lawson Software, Inc., 789 F.3d 1349, 1358 (Fed. Cir. 

2015); Fresenius USA, Inc. v. Baxter Int’l, Inc., 721 F.3d 

1330, 1344, 1347 (Fed. Cir. 2013). The district court 

properly relied on that principle in this case. The liability 
PRISM TECHNOLOGIES LLC v. SPRINT SPECTRUM L.P. 13

judgment in this case was still subject to direct review 

when this court, in T-Mobile, invalidated the claims on 

which the judgment rests. The judgment had not been 

executed, and no portion had been carved out as final by 

agreement. And Sprint invoked the T-Mobile invalidity 

ruling within a week of that ruling’s issuance. 

Prism notes that, in this case, Sprint had dropped its 

invalidity challenges just before trial in 2015 and did not 

raise such challenges on appeal of the judgment against 

it. But Prism has identified no precedent that limits the 

above-stated federal patent policy based on those facts. 

Nor has Prism provided a persuasive reason why the TMobile invalidity ruling is properly viewed as less than 

“an act which, in judgment of law, extinguishes the patent” claims, akin for present purposes to a cancellation of 

those claims, after which they “can no more be the foundation for the assertion of a right.” Moffitt v. Garr, 66 

U.S. (1 Black) 273, 283 (1861). We conclude that Prism 

has given us no basis to conclude that the district court

abused its discretion in setting aside the judgment 

against Sprint based on the invalidation in T-Mobile of 

the claims on which the judgment rests. 

IV

We affirm the Order and Judgment of August 8, 2017.

No costs.

AFFIRMED