United States District Court, D. Delaware
Stamatios Stamoulis, Esq., Richard C. Weinblatt, Esq., STAMOULIS & WEINBLATT LLC, Wilmington, DE. Michael W. Shore, Esq., Alfonso Garcia Chan, Esq., Jennifer M. Rynell, Esq., Daniel F. Olejko, Esq., SHORE CHAN BRAGALONE DEPUMPO LLP, Dallas, TX. Attorneys for Plaintiff United Access Technologies, LLC.
Matt Neiderman, Esq., DUANE MORRIS LLP, Wilmington, DE. L. Norwood Jameson, Esq., Matthew C. Gaudet, Esq., David C. Dotson, Esq., DUANE MORRIS LLP, Atlanta, GA. Attorneys for Defendants CenturyTel Broadband Services, LLC and Qwest Corporation.
Leonard P. Stark, U.S. District Judge.
Pending before the Court is Defendants' motion for judgment on the pleadings pursuant to Federal Rule of Civil Procedure 12(c). (D.I. 41) Defendants argue that Plaintiff's infringement claims should be dismissed by application of the doctrine of collateral estoppel. The Court agrees and, for the reasons stated below, will grant Defendants' motion.
On April 15, 2011, Plaintiff United Access Technologies, LLC (" Plaintiff" or " UA" ) filed this patent infringement action against dozens of defendants, including CenturyTel Broadband Services, LLC (d/b/a CenturyLink, Inc.) and Qwest Corporation (collectively, " Defendants" ), alleging infringement of three patents. (D.I. 1) The patents-in-suit are U.S. Patent No. 5,844,596 (the " '596 patent" ), entitled " Two-way RF Communication at Points of Convergence of Wire Pairs from Separate Internal Telephone Networks; " U.S. Patent No. 6,243,446 (the " '446 patent" ), entitled " Distributed Splitter for Data Transmission Over Twisted Pairs; " and U.S. Patent No. 6,542,585 (the " '585 patent" ), entitled " Distributed Splitter for Data Transmission Over Twisted Wire Pairs." The patents-in-suit relate to systems for transmitting and receiving video signals over the same telephone line used for voice signals.
On October 31, 2012, Defendants filed their motion for judgment on the pleadings based on collateral estoppel. (D.I. 41) The parties completed briefing on November 29, 2012. (D.I. 42, 46, 52) On April 12, 2013, the Court granted the parties' stipulated request to stay the case pending resolution of Defendants' motion. ( See D.I. 68) The Court heard argument on the motion on July 29, 2013. (D.I. 78) (hereinafter " Tr." ).
II. LEGAL STANDARDS
Pursuant to Federal Rule of Civil Procedure 12(c), a party may move for judgment on the pleadings " [a]fter the pleadings are closed - but early enough not to delay trial." When evaluating a motion for judgment on the pleadings, the Court must accept all factual allegations in a complaint as true and view them in the light most favorable to the non-moving party. See Rosenau v. Unifund Corp., 539 F.3d 218, 221 (3d Cir. 2008). A Rule 12(c) motion will not be granted " unless the movant clearly establishes that no material issue of fact remains to be resolved and that he is entitled to judgment as a matter of law." Id.; see also Maio v. Aetna, Inc., 221 F.3d 472, 482 (3d Cir. 2000). This is the same standard as a Rule 12(b)(6) motion to dismiss. See Turbe v. Gov't of Virgin Islands, 938 F.2d 427, 428 (3d Cir. 1991). " The purpose of judgment on the pleadings is to dispose of claims where the material facts are undisputed and judgment can be entered on the competing pleadings and exhibits thereto, and documents incorporated by reference." Venetec Int'l, Inc. v. Nexus Med., LLC, 541 F.Supp.2d 612, 617 (D. Del. 2008); see also In re Burlington Coat Factory Sec. Litig., 114 F.3d 1410, 1426 (3d Cir. 1997) (explaining that any documents that are integral to pleadings may be considered in connection with Rule 12(c) motion).
Defendants contend that the case should be dismissed based on the application of collateral estoppel. It is undisputed that in an earlier case filed by Plaintiff's predecessor, Inline Connection Corporation (" Inline" ) - which at the time owned the patents-in-suit - a jury returned a verdict of non-infringement; this Court then denied Inline's motion for judgment of infringement as a matter of law (" JMOL" );
and, on appeal, the Federal Circuit affirmed this Court. See United Access Technologies, LLC v. EarthLink, Inc., C.A. No. 1:02-cv-00272-MPT (D. Del.) (" EarthLink " ), aff'd, 432 F.Appx. 976 (Fed. Cir. 2011).
Although this is a patent case, with respect to issues of collateral estoppel the Federal Circuit directs that a District Court apply the law of the regional circuit court. See Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d 1296, 1311 (Fed. Cir. 2010) (" We analyze collateral estoppel under the law of the regional circuit." ). Thus, the Court will apply Third Circuit law on collateral estoppel. See Novartis Pharms. Corp. v. Abbott Labs., 375 F.3d 1328, 1333 (Fed. Cir. 2004) (applying Third Circuit test for collateral estoppel).
The Third Circuit has " identified four standard requirements for the application of collateral estoppel in our case law: (1) the identical issue was previously adjudicated; (2) the issue was actually litigated; (3) the previous determination was necessary to the decision; and (4) the party being precluded from relitigating the issue was fully represented in the prior action." Jean Alexander Cosmetics, Inc. v. L'Oreal USA, Inc., 458 F.3d 244, 249 (3d Cir. 2006) (internal citations omitted). The Third Circuit has " also considered whether the party being precluded had a full and fair opportunity to litigate the issue in question in the prior action, and whether the issue was determined by a final and valid judgment." Id. (internal quotation marks omitted). As discussed below, Defendants have met each part of the collateral estoppel test.
A. Identical Issue
Defendants contend that the issue before the Court - whether industry standard ADSL  can satisfy any claim element of the patents-in-suit - was already adjudicated in a prior suit, specifically EarthLink. Defendants argue, therefore, that the identical issue was previously adjudicated in the earlier EarthLink case. Further, Defendants assert that Plaintiff has waived its opportunity to try to identify meaningful ...