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TC Technology LLC v. Sprint Corp

United States District Court, D. Delaware

May 31, 2019



         Presently before the Court are Defendants' motions for reconsideration of the Court's Order granting Plaintiff leave to add a claim of willful infringement (D.I. 321) and for summary judgment of no willfulness (D.I. 343). I have considered the parties' briefing. (D.I. 322, 333, 344, 348, 353). Because I find Plaintiff fails to meet its burden to demonstrate a genuine issue for trial on willfulness, Defendants' motion for summary judgment is GRANTED, and the motion for reconsideration is DISMISSED AS MOOT.

         I. BACKGROUND

         TC Technology LLC ("TC Tech") filed this action on March 10, 2016, alleging that Sprint Corporation and Sprint Spectrum, L.P. (collectively, "Sprint") infringed U.S. Patent No. 5, 815, 488 ("the '488 patent") with certain wireless services on its LTE network. (D.I. 1).

         I previously allowed TC Tech to amend its complaint to add a claim of willful infringement. (D.I.316). Sprint then filed the present motion for reconsideration. (D.I. 321, 322). While the motion was pending, a dispute arose over the scope of additional willfulness- related discovery. The parties filed letters in which Sprint also requested leave to move for summary judgment of no willfulness. (D.I. 377, 378). I granted Sprint's request at the March 27, 2019 discovery conference.

         TC Tech's willfulness claim is based on the following events. Sprint received an email on January 9, 2012 from Intellectual Asset Group ("IAG") on behalf of CableLabs, the prior owner of the '488 patent. (D.I. 349, Ex. F). The email offered for sale "5 U.S. patents directed to cable television technologies including: orthogonal frequency division multiplexing (OFDM), mobile phone connection, software copying and bi-directional cable techniques." (Id.). Attached to the email was a document titled, "CableLabs Patent Sale Offering Presented by IAG" ("the IAG Offering"), which identified and described the '488 patent. (Id., Ex. F, Ex. G at 9). The email was sent to Charlie Wunsch, then general counsel at Sprint. (Id., Ex. F). Mr. Wunsch forwarded the email to Keith Cowan, who was responsible for LTE strategy (id., Ex. D at 68:17-20), and Harley Ball, Sprint's head patent counsel. (Id., Ex. F; D.I. 344 at 1; D.I. 348 at 2). IAG sent a follow-up email to Mr. Wunsch on February 24, 2012, which Mr. Wunsch again forwarded to Mr. Ball. (D.I. 349, Ex. E). Sprint did not respond to either IAG email. (Id., Exs. E, F).


         "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.Civ.P. 56(a). Material facts are those "that could affect the outcome" of the proceeding. Lamont v. New Jersey, 637 F.3d 177, 181 (3d Cir. 2011) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)). "[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." Id. 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 Corp. v. Catrett, 477 U.S. 317, 323 (1986).

         The burden then shifts to the non-movant to demonstrate the existence of a genuine issue for trial. Matsushita Elec. Indus. Co., Ltd. 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.Civ.P. 56(c)(1). The non-moving party's evidence "must amount to more than a scintilla, but may amount to less (in the evaluation of the court) than a preponderance." Williams, 891 F.2d at 461.

         When determining whether a genuine issue of material fact exists, the court must view the evidence in the light most favorable to the non-moving party and draw all reasonable inferences in that party's favor. Wishkin v. Potter, 476 F.3d 180, 184 (3d Cir. 2007). 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 of law. See Celotex Corp., 477 U.S. at 322.

         III. ANALYSIS

         TC Tech's arguments focus on Sprint's subjective willfulness. (D.I. 348 at 5-6). Under Halo Electronics, Inc. v. Pulse Electronics, "[t]he subjective willfulness of a patent infringer, intentional or knowing, may warrant enhanced damages, without regard to whether his infringement was objectively reckless." 136 S.Ct. 1923, 1933 (2016). Subjective willfulness is met with proof, by a preponderance of the evidence, that "the defendant acted despite a risk of infringement that was either known or so obvious that it should have been known to the accused infringer." WesternGeco L.L.C. v. ION Geophysical Corp., 837 F.3d 1358, 1362, 1364 (Fed. Cir. 2016) (internal citation and quotation marks omitted). TC Tech alleges both actual knowledge and willful blindness. (Id. at 6-7; D.L 317 ¶ 34).

         A. Actual Knowledge

         Sprint argues that there is no evidence that anyone at Sprint formed beliefs regarding the '488 patent or its relationship to Sprint's LTE network. Therefore, TC Tech cannot show that Sprint knew ...

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