Fenner Investments, Ltd. v. Cellco Partnership d/b/a Verizon Wireless et al.

I'll research this case before drafting.

Case Overview and Background

Parties. Fenner Investments, Ltd. is a Texas limited partnership with its principal place of business in Richardson, Texas, and it is the assignee of the patent asserted here — the '706 patent was issued to inventor Peter R. Fenner and assigned to the partnership, which "continues to hold all rights and interests" (Complaint, ¶ 1, ¶ 13). Fenner does not appear to make or sell any product; it has the classic non-practicing patent-holder profile, having run a serial assertion campaign in the Eastern District of Texas across several unrelated portfolios — the '706 and other telecom patents against Juniper and other equipment vendors in 2005 (Fenner Invs. v. Juniper Networks, No. 2:05-cv-5), network-switching patents against 3Com, Foundry, Extreme, Netgear, D-Link, ZyXEL, Tellabs, Enterasys, HP and Dell in 2008–10 (Fenner Invs. v. 3Com, No. 6:08-cv-61; Fenner Invs. v. Hewlett-Packard, No. 6:08-cv-273), and joystick/controller patents against game-console makers. The defendants were Cellco Partnership d/b/a Verizon Wireless (Delaware general partnership, Basking Ridge, N.J. — the largest U.S. wireless carrier) and three MetroPCS entities (MetroPCS Communications, Inc.; MetroPCS Wireless, Inc.; MetroPCS Texas, LLC), the Dallas/Richardson-based prepaid carrier later absorbed by T-Mobile. MetroPCS settled and was voluntarily dismissed, leaving Verizon as the sole defendant for judgment and appeal (Fed. Cir. brief at 6, A2041–46).

Accused technology and patent. The accused conduct was not a handset or an app but Verizon's initial network-access authentication signaling on its CDMA2000 1x EVDO Rev. A network, which Verizon deployed between December 2006 and June 2007 (Fed. Cir. brief at 3–5). When

I'll research this case systematically, starting with the docket and key rulings.

Now let me dig into docket specifics and any PTAB proceedings.

Fenner Investments, Ltd. v. Cellco Partnership — Litigation Timeline & Outcomes

Case: No. 6:11-cv-00348-LED-JDL (E.D. Tex., Tyler Div.) — U.S. Patent No. 5,561,706, Claim 1
Presiding: Chief Judge Leonard Davis; Magistrate Judge John D. Love
Final outcome: Judgment of non-infringement for Verizon (2013-08-09), affirmed by the Federal Circuit, 778 F.3d 1320 (Fed. Cir. 2015)

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At-a-glance chronology

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1. Filing & initial pleadings

Fenner filed on 2011-07-06 in the Tyler Division, pleading infringement of Claim 1 of the '706 patent ("System for Managing Access by Mobile Users to an Interconnected Communications Network where a Billing Authority is Identified by a Billing Code from the User") and demanding a jury. The complaint named Cellco Partnership d/b/a Verizon Wireless and three MetroPCS entities (MetroPCS Communications, Inc.; MetroPCS Wireless, Inc.; MetroPCS Texas, LLC).

Verizon answered and asserted counterclaims for non-infringement, invalidity, and unenforceability — counterclaims that were ultimately resolved not on the merits but by dismissal without prejudice as part of the appellate-preservation structure of the final judgment (see §5). Fenner filed a First Amended Complaint (Dkt. 25), which became the operative pleading referenced in the judgment.

The MetroPCS defendants exited the case through settlement and voluntary dismissal, leaving Verizon as the sole remaining defendant. ⚠️ The precise dismissal order date and settlement terms are not disclosed in the public sources I could reach; treat the timing as unverified.

2. Pre-trial motions of substance

The central vehicle was Verizon's Motion for Summary Judgment and Early Claim Construction (Dkt. 89) — a deliberately sequenced "early claim construction" motion designed to collapse the case at the construction stage rather than at trial. Fenner responded (Dkt. 93); Verizon replied (Dkt. 96); the court heard argument on 2013-02-27.

Notably, no motion to transfer venue or motion to stay pending PTAB review appears in the record reviewed — consistent with §7 below (no IPR was ever filed). Given the 2011 filing date in the Tyler Division before Judge Davis, the absence of a §1404(a) transfer motion is itself strategically notable; the case instead was fought entirely on intrinsic-evidence claim construction.

3. Claim construction (Markman)

There was no conventional single-hearing Markman order; instead the court used a rolling/early construction process:

(a) "Personal identification number" — the dispositive term (2013-04-25, Dkt. 122). Magistrate Judge Love adopted Verizon's construction:

"a number separate

I'll search several angles for press coverage of this case.

Press Coverage: Sparse, and Almost Entirely Practitioner-Facing

My searches — by caption, by party names (Fenner Investments; Cellco/Verizon Wireless; the three MetroPCS entities), by patent number ('706 / 5,561,706), and by verdict/settlement terms across Reuters, Bloomberg Law, Law360, Ars Technica, The Verge, IPWatchdog, Patently-O, EFF Deeplinks and JD Supra — surfaced no mainstream or general-interest news coverage of this case at all, and no Law360 or IPWatchdog item. Everything I could actually retrieve was either a primary court document (the Dkt. 159 final judgment hosted by Finnegan, the Dkt. 136 claim-construction order on Justia, the Federal Circuit opinion, the Justia docket), an opinion database (vLex, Midpage), or a law-firm client alert. I found no damages demand figure, no verdict number, no settlement figure for the MetroPCS dismissal, and no market-impact, analyst, or executive commentary reported anywhere.

The closest thing to "coverage" is law-firm analysis of the February 12, 2015 Federal Circuit affirmance (778 F.3d 1320). Finnegan reported in its March 2015 Last Month at the Federal Circuit newsletter — a version of which was also republished on Mondaq — that the court affirmed the Eastern District of Texas's summary judgment that Verizon did not infringe claim 1 of the '706 patent, and framed the holding under the headline "Statements Made by Inventor During Prosecution History Are Binding, Regardless of Whether Examiner Relied on Them." Per Finnegan, the district court had construed "personal identification number" as "a number separate from a billing code … identifying an individual system user, which is associated with the individual and not the device," and the parties then stipulated to final judgment of noninfringement; the Federal Circuit rejected Fenner's argument that the examiner had not relied on the inventor's statement that the invention "is centered around the mobile user, not the mobile telephone," holding that "the interested public has the right to rely on the inventor's statements made during prosecution." Wiley Rein issued a same-day Federal Circuit Patent Bulletin (Feb. 12, 2015) with the same framing and extensive block quotations, and WHDA posted a short summary dated March 18, 2015.

Notably, the practitioner write-ups go beyond the four corners of the district court record in one respect, and fall short of it in another. Finnegan, Wiley and WHDA all describe the lower-court disposition as a "summary judgment"/"grant of SJ" of noninfringement, whereas the docket shows the R&R (Dkt. 122, adopted at Dkt. 153) recommended denial of Verizon's summary-judgment motion and the case ended in a stipulated final judgment (Dkt. 159) entered August 9, 2013 — the only "SJ" in the case file is the magistrate judge's April 25, 2013 ruling on claim construction. Conversely, none of the alerts discuss the MetroPCS settlement at all; the only reference I found to its terms is the Federal Circuit briefing's statement that all claims against the three MetroPCS entities were voluntarily dismissed with those entities "not parties to the final judgment or this appeal," which tells us nothing about money. Because no outlet reported a settlement or license figure, treat any such number circulating about the MetroPCS dismissal as unsourced.

Sources

• IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TYLER DIVISION
• FINNEGAN
• UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
• #14 in Fenner Investments, Ltd. v. Cellco Partnership (Fed. Cir., 13-1640) – CourtListener.com - Fenner Investments, Ltd. v. Cellco Partnership
• United States Court of Appeals for the Federal Circuit
• Official Caption – #1, Att. #2 in Fenner Investments, Ltd. v. Cellco Partnership (Fed. Cir., 13-1640) – CourtListener.com
• Cases
• Fenner Invs., Ltd. v. Cellco P'ship - Fenner Invs., Ltd. v. Cellco P'ship
• No. 2013-1640
• United States Court of Appeals for the Federal Circuit
• While VZW wishes to add the limitation that the personal identification number be entered by the user, that additional requireme...
• Technical Expert Witness for Defendant Verizon Wireless, Inc

I'll research the plaintiff-side counsel of record through docket sources and related Fenner litigation.

Good leads. Now let me confirm the trial-court service list, local counsel, and the appellate team.

Now let me pull the district court docket page and confirm which attorneys actually appeared there.

Plaintiff's Counsel of Record — Fenner Investments, Ltd.

Bottom line: Fenner, a Texas limited partnership based in Richardson, TX (Compl. ¶ 1), was represented by a two-tier structure typical of E.D. Tex. patent practice in that era: a Dallas firm with patent-litigation experience serving as lead/primary counsel, plus Fulbright & Jaworski's D.C. appellate group for the Federal Circuit, and Tyler counsel for local-court purposes. Only one plaintiff-side firm is documented on the face of the 2011 complaint; the local-counsel names come from a less direct source and I flag that below.

Lead / primary trial counsel — Loewinsohn Flegle Deary, L.L.P. (Dallas, TX)

The complaint (Dkt. 1, filed July 6, 2011) is signed by this firm's lawyers, with Flegle expressly designated "(lead counsel)" in the signature block; all four list the firm address as 12377 Merit Drive, Suite 900, Dallas, TX 75251-2224. (Complaint signature block via docshare mirror; same signature block reproduced in the Plainsite party profile for Fenner Investments, Ltd.)

Appellate counsel — Fulbright & Jaworski LLP, Washington, D.C. (now Norton Rose Fulbright)

Fenner retained Fulbright's appellate group for No. 2013-1640. CourtListener's Federal Circuit docket shows "Entry of appearance for Jonathan S. Franklin as principal counsel for Appellant Fenner Investments, Ltd." (Sept. 18, 2013, ECF No. 2) and "Entry of appearance for Mark Emery as of counsel for Appellant" (Sept. 18, 2013, ECF No. 3). (Fed. Cir. docket 13-1640; appellant's opening brief signature block lists "Jim L. Flegle, Corey Jennifer Weinstein, and Peter J. Thoma of Loewinsohn Flegle Deary LLP" and "Jonathan S. Franklin and Mark Emery of Fulbright & Jaworski LLP," signed by Franklin. (Appellant brief, Dkt. 14)

• Jonathan S. Franklin — principal appellate counsel, Fulbright & Jaworski LLP, Washington, D.C. Federal Circuit specialist; also Fenner's counsel of record in the earlier Fenner Investments v. Microsoft/Nintendo appeal, No. 2009-1496 (Fed. Cir.), per the Justia docket, which lists "FRANKLIN, JONATHAN SAUL" as Fenner's representative.
• Mark Emery — of counsel on the appeal, Fulbright & Jaworski LLP, Washington, D.C.

Worth noting procedurally: Fulbright's Dallas litigators (Robert M. Chiaviello, Jr., Brett C. Govett, Karl G. Dial, Michael J. Fogarty, III, Stephen C. Dillard, D. Dudley Oldham) appear for Fenner in the earlier '706 case, Fenner Investments v. Juniper Networks, No. 2:05-cv-5 (E.D. Tex.) — see the Jan. 18, 2006 Markman R&R — and they populate Plainsite's aggregated "outside counsel" list for Fenner. I found no indication any of them entered an appearance in 6:11-cv-348; on this docket, Fulbright's only documented role is Franklin/Emery on the appeal. Don't attribute the Juniper team to this case without a docket check.

Local counsel (Tyler) — Ireland Carroll & Kelley, P.C.

• Otis W. Carroll, Jr. — local/of counsel, Ireland, Carroll & Kelley, P.C., 6101 S. Broadway, Suite 500, Tyler, TX 75703 (903-561-1600). Longtime E.D. Tex. plaintiffs' lawyer and a fixture as local counsel in Tyler/Marshall patent cases; captioned as "OF COUNSEL" for Fenner in the related Fenner v. Microsoft notice of appeal (document), and listed as Fenner-side counsel in the Juniper Markman R&R.
• Deborah J. Race — same firm, Tyler; listed alongside Carroll as Fenner-side counsel in the Juniper Markman R&R and on Plainsite's Fenner outside-counsel list.

Confidence flag: The complaint's signature block does not name Tyler counsel, and I was unable to retrieve the Dkt. 1 cover page/service list or a 2011-case appearance entry for Carroll or Race. Their inclusion rests on (a) Plainsite's case-spanning outside-counsel list for Fenner Investments, and (b) their documented role for Fenner in the companion '706 case. Treat them as probable but not docket-confirmed local counsel in 6:11-cv-348; if precision matters, check the E.D. Tex. docket for appearances by Carroll, Race, James Patrick Kelley, or "Fedserv@icklaw.com."

In-house counsel

None identified. Plainsite's Fenner Investments profile reports "Inside Counsel (0)" — consistent with Fenner being a small patent-holding limited partnership run by inventor Peter R. Fenner and his wife, who is herself an attorney and who personally participated in directing the litigation (see the hearing transcript in the related Fenner–Dell fee/conflict matter, where Deborah Race refers to "Mrs. Fenner is actually an attorney" and to "the Fenners" directing counsel: transcript, S.D./E.D. Tex.). I found no appearance by a Fenner employee-attorney on this docket.

Things I could not verify

• No sealed-material or pro hac vice record was reviewed. I did not retrieve the full PACER docket sheet for 6:11-cv-348, so it is possible additional plaintiff-side attorneys made brief appearances (e.g., on discovery or expert motions) that are not reflected in the complaint signature block, the Federal Circuit docket, or the aggregated attorney lists. Any such names should be confirmed against the E.D. Tex. docket, not inferred.
• Firm-name changes after 2013 (Loewinsohn Flegle Deary; Fulbright & Jaworski → Norton Rose Fulbright in 2013) are stated as general knowledge, not from a source in this record.
• No Law360, Reuters Legal, or Bloomberg Law attorney-appearance reporting exists for this case; the earlier "In the news" finding that coverage is confined to practitioner alerts holds for counsel information too.

I'll research the defense-side counsel of record from the docket, opinions, and firm sources.

Defense Counsel of Record — What the Record Supports, and Where It Runs Out

Bottom line: Verizon/Cellco's defense team is well documented on the Federal Circuit docket and reasonably well documented in the district court listing; the MetroPCS entities' counsel is not documented in any source I could retrieve, and I will not guess at it. One caveat up front: the case ended in 2013 and the free dockets (Justia, CourtListener) do not reproduce the attorney/firm blocks from the district court filings, so firm attributions below are graded by confidence.

1. Verizon Wireless (Cellco Partnership)

Federal Circuit (No. 13-1640) — roles confirmed by docket text. The CourtListener docket for the appeal records, in sequence: "Entry of appearance for Kevin P. Anderson as principal counsel for Appellee Cellco Partnership"; "Entry of appearance for Karin A. Hessler as of counsel for Appellee Cellco Partnership"; "Entry of appearance for Caren K. Khoo as of counsel for Appellee Cellco Partnership"; and an entry (plus a corrected entry, after a clerk's rejection for a non-text-searchable PDF) for Geoffrey P. Eaton as of counsel for Appellee Cellco Partnership, filed December 11–12, 2013. (docket; Eaton corrected entry) So Anderson was the principal appellate counsel and Hessler, Khoo and Eaton were "of counsel" — that much is verbatim from the docket, not inference.

Firm attribution — the one thing I could not nail down from a retrieved document. My searches did not surface the signature block of the Appellee's response brief (Fed. Cir. Dkt. 23, filed Jan. 24, 2014) or the Rule 47.4/entry-of-appearance forms showing firm names, and the Federal Circuit opinion does not carry counsel designations. The Anderson/Hessler/Khoo/Eaton grouping is consistent with Wiley Rein LLP's Washington, D.C. telecom-and-appellate patent practice, and there is corroborating circumstantial support: Wiley Rein itself issued a same-day Federal Circuit Patent Bulletin on February 12, 2015 touting the affirmance and quoting the opinion at length (Wiley Rein alert) — the kind of house publicity a firm produces for its own win. I would treat "Wiley Rein" as strongly indicated but confirm it against the signature block of Fed. Cir. Dkt. 23 or the Dkt. 159 stipulated judgment before putting it in a printed report.

District court — the Tyler locals. The Justia docket "Represented By" list for this case contains seven names: Thames, Hessler, Anderson, Jones, Thoma, Weinstein and Flegle. The last three (Peter J. Thoma, Corey J. Weinstein, Jim L. Flegle of Loewinsohn Flegle Deary, Dallas) are plaintiff's counsel per the complaint's signature block; that leaves Earl Glenn Thames, Jr. and Michael E. Jones, both of Potter Minton, P.C., 110 N. College Ave., Suite 500, Tyler, TX, plus Anderson and Hessler as the defendant-side district court appearances. Jones is one of the most prolific E.D. Tex. local-counsel lawyers for corporate defendants — his Potter Minton signature block ("ATTORNEYS FOR DEFENDANT CELLCO PARTNERSHIP D/B/A VERIZON WIRELESS," alongside Allen F. Gardner) appears in the contemporaneous E.D. Tex. Verizon matters, e.g. the AT&T Mobility/Verizon litigation in this district (example filing). That Jones/Thames acted as local counsel rather than as lead is an inference from the Tyler-office geography and the parallel pattern; the district court ECF attorney entries themselves were not retrievable here.

In-house counsel: no Verizon in-house attorney appears in any entry I could retrieve. Unlike many later EDTX cases, there is no indication of an in-house appearance on this docket.

2. MetroPCS Communications, Inc.; MetroPCS Wireless, Inc.; MetroPCS Texas, LLC

I could not identify counsel for any of the three MetroPCS entities, and I want to be explicit about that rather than pad the table. The searches I ran (party names, "MetroPCS" + case number, docket aggregators) returned only the complaint and the plaintiff-side filings; Justia's representative list for this docket contains no MetroPCS-side name that I can attribute with confidence. Two candidates worth checking — not asserting — are the Tyler/Longview firms that appear in broader Plainsite aggregations of Fenner Investments filings (Otis W. Carroll and Deborah J. Race of Ireland Carroll & Kelley, Tyler; Thomas J. Ward of Ward & Smith, Longview), since those firms did serve as E.D. Tex. local counsel for corporate defendants in that era. But Plainsite's "outside counsel" list for a party profile blends multiple matters, so treating any of those names as MetroPCS's counsel here would be speculation. Note also the asymmetry of the record: the MetroPCS entities were dismissed and, per the Federal Circuit briefing, were "not parties to the final judgment or this appeal," which is likely why their appearances are thin in the free sources.

To close this gap (all cheap, in order): (i) pull the answers/ Rule 7.1 disclosure statements filed by the three MetroPCS entities in late summer 2011 — the ECF header lists lead and local counsel; (ii) pull the stipulation/notice of voluntary dismissal (the order terminating them, referenced in the Federal Circuit jurisdictional statement); (iii) check the Dkt. 159 stipulated judgment signature pages, which typically carry every remaining counsel's block; (iv) run a PACER docket-report "attorneys" tab, which the free aggregators truncate.

3. Two cross-checks against the earlier sections

• The prior section's finding that practitioner alerts mislabeled the disposition as "summary judgment" is consistent with what the docket shows and does not affect the counsel analysis — the stipulated judgment (Dkt. 159) would have been signed by the same Verizon team (Anderson/Hessler at Wiley Rein; Jones/Thames at Potter Minton), and its signature block is the single best document for confirming the firm names flagged as "inferred" above.
• The plaintiff's appellate team is confirmed separately on the same docket: Jonathan S. Franklin (principal) and Mark Emery (of counsel) of Fulbright & Jaworski LLP, with Jim L. Flegle, Corey J. Weinstein and Peter J. Thoma of Loewinsohn Flegle Deary LLP (Fed. Cir. opening brief signature block) — worth stating because the presence of Fulbright on the plaintiff side is the inverse of the usual assumption and is a useful disambiguator if anyone mistakes the Norton Rose Fulbright names appearing in Plainsite aggregations for defense counsel.

Sourcing note: Roles for Anderson, Hessler, Khoo and Eaton are grounded in docket text (high confidence). Firm names for those four are inferred from practice-group affiliation plus Wiley Rein's own client-alert coverage and should be confirmed from Fed. Cir. Dkt. 23 / district court Dkt. 159. Potter Minton's representation of Cellco is grounded in the Justia representation list plus the firm's documented role for Cellco in contemporaneous E.D. Tex. cases. No MetroPCS counsel is stated because none is sourced.