Active Wireless Technologies v. T-Mobile: 5G NR Patent Suit Dismissed With Prejudice
Active Wireless Technologies LLC asserted four 5G New Radio patents against T-Mobile in the Eastern District of Texas, drawing Ericsson and Nokia as intervenors. After 650 days of litigation, all parties filed a joint motion to dismiss — core claims with prejudice, residual claims without — each side absorbing its own costs.
A four-patent 5G NR campaign ends in a joint dismissal with split terms
Filed on 31 May 2023 in the Eastern District of Texas before Judge Rodney Gilstrap, this infringement action saw Active Wireless Technologies LLC (AWT) assert four US patents — US10785764B2, US10531443B2, US11019557D2, and US10601566B2 — against T-Mobile USA, Inc. and T-Mobile US, Inc. The patents collectively cover 5G New Radio physical uplink control channel (PUCCH) design, periodically broadcasted system information acquisition, and single-cell multicast service signalling, placing them squarely within standards-essential or standards-adjacent 5G NR infrastructure.
The case closed on 11 March 2025 when Judge Gilstrap granted a joint motion to dismiss. Claims against T-Mobile relating to Ericsson-supplied and Nokia-supplied equipment — along with all claims directly against intervenors Ericsson Inc. and Nokia of America Corporation — were dismissed with prejudice, permanently barring re-filing on those specific claims. Any remaining AWT claims against T-Mobile not tied to those two equipment suppliers were dismissed without prejudice, preserving theoretical re-filing rights. Each party bears its own costs, suggesting a negotiated resolution rather than a clear win for either side.
At 650 days, the case outlasted many E.D. Tex. settlements, suggesting substantive discovery or licensing negotiations occurred before the parties reached terms. The intervention by Ericsson and Nokia — both major 5G RAN infrastructure suppliers to T-Mobile — is consistent with standard industry practice whereby equipment vendors step in to defend downstream operator customers. The precise commercial terms underlying the joint dismissal are not disclosed in the public record; the with-prejudice dismissal as to equipment-specific claims, however, suggests the parties reached a durable resolution on those patent-product combinations.
Filing to Dismissed with Prejudice in 650 days
650 days litigated — above median for E.D. Tex. patent cases resolved short of trial
Dismissed with prejudice: what the split dismissal means for each party
With-prejudice dismissal bars re-filing on core claims
A dismissal with prejudice operates as a final adjudication on the merits, preventing the plaintiff from re-asserting the same claims against the same defendants in any future action. Here, all AWT claims tied to Ericsson- and Nokia-supplied equipment were dismissed with prejudice under Federal Rule of Civil Procedure 41. Residual T-Mobile claims not tied to specific supplier equipment were dismissed without prejudice, preserving limited re-filing rights on those claims only.
Rule 41 — final on equipment-specific claimsAWT permanently forfeits claims tied to Ericsson and Nokia equipment
For Active Wireless Technologies, the with-prejudice terms represent a material concession. AWT cannot revive infringement claims against T-Mobile’s Ericsson- or Nokia-sourced 5G infrastructure, nor bring direct claims against those vendors again on the asserted patents. The without-prejudice carve-out on remaining T-Mobile claims offers limited optionality, but the core enforcement vectors against the dominant RAN equipment stack are closed. The patents nonetheless remain in force and could theoretically be asserted against other operators or suppliers.
Enforcement optionality narrowedT-Mobile, Ericsson, and Nokia secure with-prejudice protection
T-Mobile, Ericsson, and Nokia each secured dismissal with prejudice on the substantive equipment-related claims, providing durable protection against re-litigation of the same patent-product allegations. Their counterclaims and defenses were dismissed without prejudice, preserving the ability to reassert invalidity or other defenses if AWT pursues residual claims. The no-cost-shifting term avoids any public signal of fault, consistent with a negotiated outcome.
Durable protection on RAN equipment claims5G PUCCH patent risk remains for other carriers and vendors
The dismissal resolves this specific dispute but does not invalidate AWT’s four patents — they remain active and enforceable. Other US carriers deploying Ericsson or Nokia 5G NR equipment face the same patent landscape. The intervention model — vendor stepping in to defend operator — is now reinforced as a viable risk-sharing structure in 5G RAN patent disputes. Standards-adjacent PUCCH and system-information patents continue to represent litigation exposure for the broader telecom ecosystem.
Patents survive — carrier exposure persistsFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Active Wireless Technologies LLC | Company | Patent assertion entity — holder of US10785764B2 and three further 5G NR patentsSearch in Eureka ↗ |
| Defendant | T-Mobile | Individual | T-Mobile USA, Inc. and T-Mobile US, Inc. — major US wireless carrier deploying Ericsson and Nokia 5G RAN equipmentSearch in Eureka ↗ |
| Co-Defendant | T-Mobile US, Inc. | Company | Search in Eureka ↗ |
| Plaintiff counsel | Alfred Ross Fabricant | Attorney | Counsel for Active Wireless Technologies LLCSearch in Eureka ↗ |
| Plaintiff counsel | Andrea Leigh Fair | Attorney | Counsel for Active Wireless Technologies LLCSearch in Eureka ↗ |
| Plaintiff counsel | Charles Everingham, IV | Attorney | Counsel for Active Wireless Technologies LLCSearch in Eureka ↗ |
| Plaintiff counsel | Enrique William Iturralde | Attorney | Counsel for Active Wireless Technologies LLCSearch in Eureka ↗ |
| Plaintiff counsel | Jacob Daniel Ostling | Attorney | Counsel for Active Wireless Technologies LLCSearch in Eureka ↗ |
| Plaintiff counsel | Joseph Michael Mercadante | Attorney | Counsel for Active Wireless Technologies LLCSearch in Eureka ↗ |
| Plaintiff counsel | Julian Glenn Pymento | Attorney | Counsel for Active Wireless Technologies LLCSearch in Eureka ↗ |
| Plaintiff counsel | Peter Lambrianakos | Attorney | Counsel for Active Wireless Technologies LLCSearch in Eureka ↗ |
| Plaintiff counsel | Richard Matthew Cowell | Attorney | Counsel for Active Wireless Technologies LLCSearch in Eureka ↗ |
| Plaintiff counsel | Vincent J. Rubino , III | Attorney | Counsel for Active Wireless Technologies LLCSearch in Eureka ↗ |
| Plaintiff law firm | Fabricant LLP | Law Firm | Representing Active Wireless Technologies LLCSearch in Eureka ↗ |
| Plaintiff law firm | Fabricant LLP (NY) | Law Firm | Representing Active Wireless Technologies LLCSearch in Eureka ↗ |
| Plaintiff law firm | Fabricant LLP (Rye) | Law Firm | Representing Active Wireless Technologies LLCSearch in Eureka ↗ |
| Plaintiff law firm | Miller Fair Henry PLLC | Law Firm | Representing Active Wireless Technologies LLCSearch in Eureka ↗ |
| Defendant counsel | Andrew Thompson (Tom) Gorham | Attorney | Counsel for T-MobileSearch in Eureka ↗ |
| Defendant counsel | Darlene Fae Ghavimi | Attorney | Counsel for T-MobileSearch in Eureka ↗ |
| Defendant counsel | Elissa Sanford | Attorney | Counsel for T-MobileSearch in Eureka ↗ |
| Defendant counsel | John R. Gibson | Attorney | Counsel for T-MobileSearch in Eureka ↗ |
| Defendant counsel | Kevin Paul Anderson | Attorney | Counsel for T-MobileSearch in Eureka ↗ |
| Defendant counsel | Matthew Sean Yungwirth | Attorney | Counsel for T-MobileSearch in Eureka ↗ |
| Defendant counsel | Melissa Richards Smith | Attorney | Counsel for T-MobileSearch in Eureka ↗ |
| Defendant counsel | Theodore J. Angelis | Attorney | Counsel for T-MobileSearch in Eureka ↗ |
| Defendant counsel | Tyler Robert Marandola | Attorney | Counsel for T-MobileSearch in Eureka ↗ |
| Defendant law firm | Duane Morris LLP | Law Firm | Representing T-MobileSearch in Eureka ↗ |
| Defendant law firm | Duane Morris LLP (Atlanta) | Law Firm | Representing T-MobileSearch in Eureka ↗ |
| Defendant law firm | Duane Morris LLP – Washington | Law Firm | Representing T-MobileSearch in Eureka ↗ |
| Defendant law firm | Gillam & Smith LLP | Law Firm | Representing T-MobileSearch in Eureka ↗ |
| Defendant law firm | K&L Gates LLP (Seattle) | Law Firm | Representing T-MobileSearch in Eureka ↗ |
| Defendant law firm | Spencer Fane LLP | Law Firm | Representing T-MobileSearch in Eureka ↗ |
| Presiding judge | Judge Rodney Gilstrap | Judge | Texas Eastern District CourtSearch in Eureka ↗ |
Official order — verbatim text
The joint motion’s nine-point structure reveals a carefully negotiated dismissal architecture. The with-prejudice treatment of all equipment-supplier-specific claims — covering both Ericsson and Nokia supply chains — suggests those commercial relationships were resolved on terms acceptable to all parties. The without-prejudice preservation of residual T-Mobile claims and all counterclaims/defenses maintains a degree of optionality on both sides without conceding liability. The no-cost-shifting provision is a standard hallmark of negotiated resolution and avoids any judicial finding of exceptional-case conduct under 35 U.S.C. § 285.
US10785764B2 — 5G NR PUCCH and wireless system information patents
The four asserted patents span core 5G New Radio air-interface functionality. US10785764B2 and US10601566B2 address physical uplink control channel (PUCCH) design — specifically multi-slot long PUCCH structures and format adaptation mechanisms defined under 3GPP Release 15 NR specifications. US10531443B2 covers information-change transmission for single-cell multicast (SC-PTM) services, and US11019557B2 addresses acquisition of periodically broadcasted system information. Together, they target the control-plane and broadcast signalling layers that are foundational to how 5G NR base stations and UEs coordinate uplink communication.
Patents touching PUCCH design and system information procedures sit in close proximity to 3GPP standardised interfaces, making them commercially potent in disputes involving any party implementing 5G NR — from chipset vendors to RAN equipment manufacturers to network operators. AWT’s strategy of naming the carrier (T-Mobile) while drawing in infrastructure suppliers (Ericsson, Nokia) as intervenors is consistent with a portfolio monetisation campaign designed to capture licensing value at multiple points in the 5G supply chain. The survival of all four patents post-dismissal means the risk profile for the broader 5G NR ecosystem is unchanged.
Should you run an FTO against US10785764B2 and the AWT 5G NR portfolio?
Any company commercialising 5G NR products — including RAN base stations, small cells, UE modems, chipsets, or network management software implementing 3GPP Release 15 or later PUCCH and system information procedures — should assess exposure against AWT’s four-patent portfolio. The dismissal of this case does not extinguish the patents; it confirms they are alive and that AWT is willing to litigate in E.D. Texas. Carriers, neutral hosts, and open-RAN vendors are particularly exposed if they have not already secured a licence or obtained a vendor indemnity covering this patent family.
PatSnap Eureka’s FTO Search Agent allows R&D and IP teams to map claim language from US10785764B2, US10531443B2, US11019557B2, and US10601566B2 against your specific product architecture and 3GPP implementation profile. The agent surfaces claim charts, identifies cited prior art that could support invalidity arguments, and flags prosecution history estoppel — giving your legal team a defensible FTO opinion baseline before product launch or licensing negotiation.
Run a freedom-to-operate analysis on US10785764B2 to assess your product’s exposure
Run FTO in Eureka →Similar 5G NR patent infringement cases in E.D. Texas
Cases involving 5G New Radio PUCCH, system information, and RAN infrastructure patents litigated before Judge Gilstrap in the Eastern District of Texas.
What this case signals for the 5G NR patent enforcement landscape
AWT’s campaign against T-Mobile illustrates how PUCCH and RAN-layer patents are being weaponised against major carriers — and how vendor intervention shapes outcomes.
Vendor intervention is now a structural feature of 5G RAN patent disputes
Ericsson and Nokia’s entry as intervenors reflects a well-established but increasingly formalised practice: RAN equipment suppliers defend their operator customers to protect their own commercial relationships and limit broader patent exposure. Carriers buying 5G infrastructure should contractually confirm indemnification scope before litigation arises.
With-prejudice terms on equipment-specific claims signal a licensing resolution
When both parties agree to dismiss core claims with prejudice and waive costs, it is consistent with a confidential licence or lump-sum payment having been reached. The without-prejudice carve-out on residual T-Mobile claims may reflect a deliberate hedge by AWT to preserve leverage over non-Ericsson/Nokia equipment, if any, deployed in T-Mobile’s network.
Active v T-Mobile — key questions answered
AWT asserted four patents: US10785764B2 (multi-slot long PUCCH design), US10601566B2 (PUCCH format adaptation), US10531443B2 (single-cell multicast information change transmission), and US11019557B2 (acquisition of periodically broadcasted system information), all relating to 5G New Radio air-interface functionality.
Ericsson and Nokia entered the case as intervenors because T-Mobile’s 5G RAN infrastructure is supplied by both vendors. AWT’s claims against T-Mobile were specifically framed around equipment supplied by Ericsson and Nokia, making the vendors directly implicated. Vendor intervention to defend downstream operator customers is standard practice in 5G infrastructure patent disputes.
Dismissal with prejudice on the equipment-specific claims means AWT is permanently barred from re-filing the same patent infringement claims against T-Mobile relating to Ericsson- and Nokia-supplied equipment, as well as direct claims against Ericsson and Nokia on these patents. The dismissal without prejudice on residual T-Mobile claims theoretically preserves AWT’s right to re-file those narrower claims.
Yes. The joint dismissal resolves the specific dispute but does not invalidate or dedicate any of the four asserted patents to the public. US10785764B2, US10531443B2, US11019557B2, and US10601566B2 remain active and enforceable, representing ongoing exposure for other 5G NR carriers, RAN vendors, and chipset manufacturers.
The joint motion explicitly requested that each party bear its own attorneys’ fees, costs, and expenses, and the court ordered accordingly. This no-cost-shifting arrangement is typical of negotiated settlements and avoids any judicial finding that the case was ‘exceptional’ under 35 U.S.C. § 285. It does not imply any finding of merit or lack thereof by the court.
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