United States District Court, D. Delaware
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.
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).
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
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).
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).
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.
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.
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).
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 ...