United States District Court, D. Delaware
RICHARD G. ANDREWS, District Judge.
Ryan P. Newell, Esq., Connolly Gallagher LLP, Wilmington, DE; Antony I. Fenwick, Esq. (argued), Davis Polk & Wardwell, LLP, Menlo Park, CA; David Lisson, Esq., Davis Polk & Wardwell, LLP, Menlo Park, CA, attorneys for Plaintiff.
Richard K. Herrmann, Esq., Morris James LLP, Wilmington, DE; Brian C. Riopelle, Esq. (argued), McGuireWoods LLP, Richmond, VA; David E. Finkelson, Esq., McGuireWoods LLP, Richmond, VA; Robert H. Reckers, Esq., Shook, Hardy & Bacon LLP, Houston, TX, attorneys for Defendants.
Presently before the Court is Sprint's Motion for Summary Judgment that Comcast's Claims Against Sprint's Use of Alcatel-Lucent Products are Barred by License and Estoppel (D.I. 160) and related briefing. (D.I. 161, 188, 209). On May 15, 2014, the Court heard oral argument on this motion. (D.I. 239).
This is a patent infringement action. Plaintiff Comcast IP Holdings currently alleges that Defendant Sprint infringes U.S. Patent No. 6, 873, 694 ("the '694 patent"), U.S. Patent No. 7, 012, 916 ("the '916 patent"), U.S. Patent No. 8, 170, 008 ("the '008 patent"), and U.S. Patent No. 8, 204, 046 ("the '046 patent"). Sprint contends that it has a license to the '008 patent, either express or implied, via a licensing agreement between Hewlett-Packard ("HP"), the original assignee of the patent, and Lucent, the predecessor to Alcatel-Lucent and the manufacturer of some of the accused equipment.
"The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." FED.R.C1v.P. 56(a). The moving party has the initial burden of proving the absence of a genuinely disputed material fact relative to the claims in question. Celotex Corp. v. Catrett, 477 U.S. 317, 330 (1986). Material facts are those "that could affect the outcome" of the proceeding, and "a dispute about a material fact is genuine' if the evidence is sufficient to permit a reasonable jury to return a verdict for the nonmoving party." Lamont v. New Jersey, 637 F.3d 77, 181 (3d Cir. 2011) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)). The burden on the moving party may be discharged by pointing out to the district court that there is an absence of evidence supporting the non-moving party's case. Celotex, 477 U.S. at 323.
The burden then shifts to the non-movant to demonstrate the existence of a genuine issue for trial. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87 (1986); Williams v. Borough of West Chester, Pa., 891 F.2d 458, 460-61 (3d Cir. 1989). A non-moving party asserting that a fact is genuinely disputed must support such an assertion by: "(A) citing to particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations..., admissions, interrogatory answers, or other materials; or (B) showing that the materials cited [by the opposing party] do not establish the absence... of a genuine dispute...." FED. R. C1v. P. 56(c)(1).
When determining whether a genuine issue of material fact exists, the court must view the evidence in the light most favorable to the nonmoving party and draw all reasonable inferences in that party's favor. Scott v. Harris, 550 U.S. 372, 380 (2007); Wishkin v. Potter, 476 F.3d 180, 184 (3d Cir. 2007). A dispute is "genuine" only ifthe evidence is such that a reasonable jury could return a verdict for the non-moving party. Anderson, 477 U.S. at 247-49; see Matsushita Elec. Indus. Co., 475 U.S. at 586-87 ("Where the record taken as a whole could not lead a rational trier of fact to find for the non-moving party, there is no genuine issue for trial.'"). If the non-moving party fails to make a sufficient showing on an essential element of its case with respect to which it has the burden of proof, the moving party is entitled to judgment as a matter oflaw. See Celotex Corp., 477 U.S. at 322.
Comcast is currently asserting the '008 patent against Sprint. Comcast acquired the '008 from HP in 2008, subject to any outstanding licenses. One of those licenses was a 2001 cross-licensing agreement between HP and Lucent. Lucent, now Alcatel-Lucent, manufactures many of the devices which Sprint uses, and which Comcast accuses of performing the patented methods. Because Sprint contends that the 2001 license applies to these products, it argues that Comcast cannot assert the '008 patent against Sprint's use oflicensed products. (DJ. 161 at 4).
Sprint has two theories as to why Comcast's infringement allegations are barred. The first is that the license expressly covers the asserted patents and accused products. (D.I. 161 at 5). The second is that there is an implied license because HP, as Comcast's predecessor in interest, already received consideration for the licensing rights, and Comcast may not derogate these rights. (D.I. 161at5). In order to prove that the license applies, Sprint must prove: that the license covered the '008 patent, that the license was extended to Lucent's customers, that the license now rests with Alcatel-Lucent, and that the license extends to Sprint as a customer of Alcatel-Lucent. Because I decide this motion on the first issue, I need not and do not reach the other three.
In 2001, HP and Lucent entered into a cross-licensing agreement granting "personal, nonexclusive and non-transferable licenses under [HP's] PATENTS to LUCENT-GRL... to make, have made, use, lease, sell, offer to sell and import LICENSED PRODUCTS." (DJ. 166-1 at 38). The Appendix to the agreement defines "PATENTS" as "all patents (including utility models but excluding design patents and design registrations) issued or having enforceable rights in any country of the world from an application filed on or before January 31, 2001." (D.I. 166-1 at 49). The '008 patent is a"[c]ontinuation of application No. 11/066, 880, filed on Feb. 25, 2005, now Pat. No. 7, 804, 816, which is a division of application No. 10/052, 285, filed on Jan. 18, ...