August 4, 2024
Representing himself, named individual inventor Mark Sandstrom has asked the District of Minnesota for declaratory judgments that AT&T (0:24-cv-03053), Charter Communications (0:24-cv-03118), Ericsson (0:24-cv-02796), and Nokia (0:24-cv-03117) require a license to overlapping sets of five patents—described as related to certain "network protocol standards", such as the BIER, NETCONF, and xGPON standards—to use the "respective standards in the US". Other Sandstrom patents are in litigation from plaintiffs Optimum Communications Services, Inc. (OCS) and ThroughPuter, Inc.
Three of the patents now the subject of these complaints (7,558,260; 10,567,474; 10,848,546) belong to an 11-member family with issue dates ranging from August 2007 to August 2022 and an earliest estimated priority date in February 2002, based on the filing of a provisional application. Sandstrom is their sole named inventor. The fourth patent (7,333,511) comprises a family of one, with issue date in February 2008 with estimated priority in August 2002. The fifth patent (8,619,769) belongs to a family of four and issued in December 2013 with an estimated priority date in June 2008. Charter is accused over all five patents; AT&T and Ericsson, over each patent except the '769 patent; and Nokia, over only the '769 patent. Some of the asserted patents appear to have taken a circuitous assignment route, into Intellectual Ventures LLC and back out, as well as to OCS and back, while the path of others was more direct.
The plaintiff alleges that, for example, AT&T's use of those standards without a license has allowed it to gain a "significant share" of the "U.S. fiber-to-the-home (FTTH) network services market". Sandstrom further alleges that it sent a letter to AT&T in June 2024 "informing them about the relevance of the Patents to the Standards, stating: 'In case Recipient's operations (incl. through affiliates under common ownership or control) involve any of the above-mentioned standards, OCS [Optimum Communication Services, Inc.] is respectfully putting Recipient on notice that Recipient needs to obtain a license for OCS' patents".
Sandstrom identifies himself on social media as having been the president (and director) of OCS since 2005 and ThroughPuter since 2012, as well as having been president and director of Optimum Communications Technologies in the San Francisco Bay Area before that. ThroughPuter advertises "a development and execution platform as a service (PaaS) for SaaS providers", enabling "high-performance and cost-efficient, dynamic parallel program execution on a secure, dynamically shared computing infrastructure". Several Sandstrom patents have a complicated assignment history through Optimum Communications Technologies, a history recounted here.
ThroughPuter initiated litigation against Microsoft in 2021, adding a suit against Amazon (Amazon Web Services) in 2022, alleging infringement of a subset of patents from a 40-plus member family generally related to a "configurable logic platform". Cancellations through several inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB) led to stay of the Microsoft case while appeals play out, while in the Amazon case, Magistrate Judge Dustin M. Howell has recently (on July 9, 2024) recommended a denial of ThroughPuter's motion to dismiss Amazon's affirmative defense of inequitable conduct. That defense alleges that "when ThroughPuter filed the 2021 applications for the Patents-in-Suit, it copied verbatim claim language from published patent applications for the Amazon Patents and concealed the existence of these patents and its copying of their claims from the Patent Office". ThroughPuter has objected to this recommendation, with District Judge David A. Ezra yet to rule.
Meanwhile, last November OCS filed its first litigation through a complaint before the International Trade Commission (ITC) that names as respondents Hangzhou Softel Optic Co., Ltd.; Hangzhou Fullwell Optoelectronic Equipment Co., Ltd.; and Hangzhou Sumlo Industrial Co., Ltd. The group is targeted over the provision of products that are allegedly compliant with the Passive Optical Network ("xPON") standard, with two patents broadly directed to real-time optimization of WAN and VPN deployments.
The plaintiff asserts the existence of a domestic industry, pleading that "Complainant has authorized the usage of the asserted patents for certain xPON based municipal FTTH networks, as elaborated in the Confidential Economic Prong Declaration" attached to the complaint, but does not otherwise identify any specific companies—apart from noting that the domestic industry encompasses xPON-compliant products.
While ThroughPuter is represented by counsel, no counsel filed the ITC complaint for OCS—Sandstrom signed all of the documents himself, as OCS's president. OCS filed a second ITC complaint in January 2024, over the '474 and '546 patents, targeting a different set of Chinese respondents. The last recorded assignment of these patents is to OCS; thus, some clarification of the plaintiff in the new district court cases may be in order. District Judge Eric C. Tostud has been assigned to preside. 7/19, Ericsson, 7/30, AT&T, 8/1, Charter, Nokia, District of Minnesota.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
