Value-Added Communications prosecutes breach of patent license agreement in state court and defends patent infringement claim in federal court

Client(s) Value-Added Communications, Inc.

Jones Day represented telecommunications company Value-Added Communications, Inc. ("VAC") in a patent licensing dispute related to specialized telephone systems used in state and federal prisons. T-NETIX alleged that VAC had violated numerous provisions of the parties' patent licensing agreement and sought to terminate the agreement and recover millions in alleged past-due royalties. Prior to trial, the Court granted summary judgment in favor of VAC finding none of the alleged past-due royalties were owed under the agreement. The key remaining issue involved a determination of whether certain patent applications and proprietary telephone systems and calling features developed by VAC were covered under an "additions and improvements" clause of the patent licensing agreement, which T-NETIX argued granted it exclusive ownership rights in VAC's intellectual property. A five-week jury trial concluded in February 2008, and the jury found itself deadlocked after five days of deliberation. Following the trial, the Court conducted a three-day summary judgment hearing in which it agreed with Jones Day's arguments regarding the interpretation of the "improvements and additions" clause, and that led to a mutually agreeable settlement and new license agreement for our client.

Value-Added Communications, Inc. v. T NETIX, Inc., No. 03-11399-B (Dallas Dist. Ct.); T NETIX, Inc. v. Value-Added Communications, Inc., No. 3:05-CV-0654-D (N.D. Tex.)