A pre-trial Markman ‘claims construction’ hearing concerning SmartSky Networks’ patent infringement lawsuit against Gogo Business Aviation has resulted in a judicial order that bodes well for SmartSky, as both sides prepare for an April 2025 trial. Indeed, the order is being seen as “a clear legal victory” by SmartSky, which provides nextgen air-to-ground (ATG) connectivity to US business aircraft operators.

A Markman hearing is a court proceeding to determine the definition of contested patent terms in a case. As part of the new order from Delaware District Court Judge Jennifer L. Hall, the Court adopted a set of definitions of technical terms included in several patents SmartSky asserted in its infringement case against Gogo, notably establishing that SmartSky’s patents cover both “hard” and “soft” handoffs.

SmartSky’s so-called ‘947 family of patents describe how the firm’s inflight connectivity system hands off a data communications link as an aircraft travels between terrestrial base stations. “Contrary to Gogo’s assertion that the handoff in the patents must be soft (i.e. make-before-break), Judge Hall agreed with SmartSky that the ‘947 family of patents cover both soft and hard (i.e. break-before-make) handoffs, which are two valid ways that a ‘continuous and uninterrupted’ link is maintained throughout the handoff between base stations,” says SmartSky in a published statement.

The court’s ‘adopted construction’ states: (PDF: doc-233 (1))

conduct a hard or soft handoff of the inflight aircraft to another ground station within the network of ground stations to maintain the high speed connection for transferring data, wherein the connection maintains a communication session continuous and uninterrupted in time

“The definition of this patent language is crucial to the case,” says SmartSky, “because SmartSky uses hard handoffs and Gogo has admitted that its 5G system also uses hard handoffs, which would be a clear infringement on SmartSky’s patents. Furthermore, Gogo had previously lost a challenge of the ‘947 patent at the U.S. Patent and Trademark Office, which confirmed the validity of the ‘947 patent.”

Both Gogo and SmartSky provide ATG cell tower-based inflight connectivity to business aircraft operators in CONUS, with incumbent Gogo’s coverage extending to Canada. SmartSky claims that after years of trying to acquire more licensed spectrum, Gogo in 2016 abruptly changed course and copied SmartSky’s approach of using unlicensed spectrum to launch Gogo 5G, the rollout of which is delayed until later this year. SmartSky alleges that the 5G IFC product treads on several of its patents, causing irreparable harm. In February 2022, the Morrisville, North Carolina-based company filed its patent infringement lawsuit against Gogo.

Pertinent to SmartSky’s architecture and spectrum re-use, certain other terms addressed in the claims construction hearing also went in SmartSky’s favor, with the firm saying in its published statement:

In addition to the foundational issue of handoffs, Judge Hall also indicated that the court would adopt SmartSky’s definition of a wedge-shaped architecture described in its “077” patent. The ‘077 patent discloses how SmartSky’s new, cutting-edge beamforming technology and wedge architecture uniquely mitigate interference, enabling aircraft to use the same radio spectrum band that’s simultaneously being used by others on the ground. Instead of broadcasting a signal widely, as old legacy ATG technology did, SmartSky narrowcasts layered, wedge-shaped signals, and orients them toward the horizon, making a one-to-one connection with each aircraft and enabling harmonious reuse of terrestrial spectrum in the air. This key network differentiator had never been done before and was crucial to avoiding the noise and interference emanating from other ground-based 2.4GHz radio signals, especially in high-traffic urban areas where many other terrestrial devices are utilizing this commonly employed unlicensed spectrum band.

In an interview with Runway Girl Network, SmartSky CEO David Helfgott says: “We felt really good about our position going in; we feel even better now. Some very important rulings in terms of claims construction went in our favor. Gogo’s whole defense was based on this idea that ‘make before break’ is not the same as ‘break before make’ and therefore they aren’t infringing, and the judge threw that out, and basically supported our claims construction that they are the same thing, and it’s continuous and uninterrupted. So, at least half of Gogo’s claim defense was taken out, we believe, by that decision.”

A Gogo spokesman says: “Markman rulings are just one step in a series of steps in any active patent litigation. SmartSky was unsuccessful in its pursuit of a preliminary injunction, as affirmed by the Federal Circuit, and the litigation is now running its course. Nothing about the Markman ruling changes Gogo’s position — Gogo denies infringement and believes SmartSky’s patents are invalid. Gogo will continue to defend itself vigorously against SmartSky’s allegations and pursue its offensive patent claims against SmartSky.”

Court filings also show that Gogo early this month submitted counterclaims, accusing SmartSky of infringing on three Gogo patents: its so-called ’600 patent, which concerns methods and systems for selecting which cell will service an air-to-ground system in the presence of high interference using load-balancing as a consideration for the cell handoff; its ’262 patent, which concerns methods for delivering data content to a user device on board an aircraft using multiple forward-links, configured for directing data traffic from a ground/base station to aircraft in an air-to-ground network; and its ’135 patent, which concerns systems and methods for transmitting high-speed data content to an aircraft using terrestrial-based antennae having a bandwidth distribution protocol and a system controller that is configured to dynamically adjust the bandwidth supplied based on the bandwidth distribution protocol.

“Gogo developed the intellectual property protected by Gogo’s Asserted Patents as part of its rise to becoming the industry leader it is today and independently of SmartSky’s work in the industry. Specifically, Gogo’s Asserted Patents show that Gogo holds its own intellectual property rights in the areas of serving cell selection, data delivery, and beamforming. Thus, it is SmartSky that had to infringe Gogo’s intellectual property rights, not the other way around,” Gogo alleges in its court filing.

SmartSky has since filed ‘a motion to sever’ what it refers to as Gogo’s “late-in-the-game” counterclaims, noting that Gogo “waited to assert these new counterclaims until more than two years after SmartSky filed its complaint, nine months after the Court’s deadline for amending pleadings, only hours before the Court’s Markman hearing, and only seven weeks before the close of fact discovery.”

SmartSky has requested that the court sever Gogo’s new infringement counterclaims into a separate action.

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