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K&L Gates Prevails on Behalf of SIMO Holdings in Wi-Fi Hot Spot Patent Action Following Jury Trial

22 October 2019

San Francisco - Lawyers from the San Francisco, Palo Alto, and Chicago offices of global law firm K&L Gates LLP recently obtained a judgment in favor of client SIMO Holdings, Inc. (SIMO), in a patent infringement action against competitor uCloudlink Network Technology Ltd. and UCloudlink (America) Ltd. (collectively, uCloudlink) following a jury verdict of willful infringement and patent validity.
SIMO is the pioneer in software-based virtual SIM (vSIM) technology, and the parent to Skyroam, Inc., the leading provider of connected mobile Wi-Fi hot spots, including the Solis X.

K&L Gates filed the case on behalf of SIMO in June 2018, alleging patent infringement by its main competitor, uCloudlink. SIMO claimed that uCloudlink’s GlocalMe G2, U2, G3 hot spots, and S1 mobile phone copied SIMO’s proprietary technology and infringed SIMO’s U.S. Patent No. 9,836,689 (the “‘689 Patent”), and on this basis sought monetary damages and a permanent injunction.

In April 2019, Judge Jed Rakoff of the District Court for the Southern District of New York agreed with SIMO, finding on summary judgment that uCloudlink’s accused devices infringe several claims of the ‘689 Patent. At trial, SIMO obtained a jury verdict that the ‘689 Patent was valid and awarding SIMO $2,183,562.40 for uCloudlink’s infringement. The jury also found that uCloudlink’s infringement was willful, entitling SIMO to the prospect of enhanced damages.

After trial, the parties briefed SIMO’s request for enhanced damages based on the jury’s willful infringement finding, supplemental damages for uCloudlink’s continued infringement, damages for international data usage associated with uCloudlink devices purchased in the United States, and a permanent injunction.

SIMO was successful on all fronts. Most critically, pursuant to the Court’s order of a permanent injunction, uCloudlink is presently precluded from selling or enabling the use of the infringing devices or data via its Cloud SIM technology associated with such devices in the United States.

On October 16, 2019, the Court entered an amended final judgment, holding defendants uCloudlink jointly and severally liable to SIMO in the amount of $8,230,654. 

uCloudlink also previously attempted to invalidate the ‘689 Patent at the Patent Trial and Appeal Board, but its Petition for inter partes review was denied on September 17, 2019. The Patent Trial and Appeal Board agreed with SIMO that the cited prior art did not change the fact that the ‘689 Patent is valid.

Eric Plam, President of Skyroam, Inc., stated: “K&L Gates was very successful in helping SIMO protect its intellectual property. The result of this lawsuit reinforces the value of SIMO’s vSIM technology, which is used by millions of Wi-Fi hot spot customers and SIMO mobile app users.”

The amended final judgment comes at a particularly good time, with the opening of Mobile World Congress Americas in Los Angeles on October 22, 2019.

SIMO was represented by a team that included Chicago partner Benjamin Weed, San Francisco special projects lawyer Rachel Burnim, San Francisco associate Peter Soskin, Chicago associate Gina Jenero Johnson, Chicago associate Katherine Allor, and other lawyers from the firm’s San Francisco and Palo Alto offices. In addition to demonstrating the strength of K&L Gates’ leading IP litigation practice, the result is also reflective of K&L Gates’ dedicated capabilities in the telecom, media, and technology space.

K&L Gates is a fully integrated global law firm with lawyers located across five continents. The firm represents leading multinational corporations, growth and middle-market companies, capital markets participants and entrepreneurs in every major industry group as well as public sector entities, educational institutions, philanthropic organizations and individuals.

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