Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

TQ Delta LLC v. Adtran Inc.

United States District Court, D. Delaware

July 23, 2019

TQ DELTA, LLC, Plaintiff,
v.
ADTRAN, INC., Defendant. ADTRAN, INC., Plaintiff and Counterclaim Defendant,
v.
TQ DELTA, LLC, Defendant and Counterclaim Plaintiff.

          Brian E. Farnan and Michael J. Farnan, FARNAN LLP, Wilmington, DE; Peter J. McAndrews (argued), Timothy J. Malloy, Thomas J. Wimbiscus, Sharon A. Hwang, Paul W. McAndrews, and Anna M. Targowska, MCANDREWS, HELD & MALLOY, LTD., Chicago, IL, attorneys for Plaintiff TQ Delta LLC.

          Kenneth L. Dorsney, MORRIS JAMES LLP, Wilmington, DE; Garland Stephens (argued), Melissa L. Hotze, Justin L. Constant and Rene E. Mai, WEIL, GOTSHAL & MANGES LLP, Houston, TX, attorneys for Defendant Adtran, Inc.

          MEMORANDUM OPINION

          ANDREWS, U.S. DISTRICT JUDGE

         Currently pending before the Court are Plaintiffs Motion for Summary Judgment on License of the Disputed Patents (D.I. 518)[1] and Defendant's Cross-Motion for Summary Judgment on the License Issue. (D.I. 526). The parties have fully briefed the issues. (D.I. 519, 527, 536, 546). I heard oral argument on June 14, 2019. (D.I. 617). I. BACKGROUND The motions arise from an ongoing dispute between the parties as to ten of the Patents-In-Suit (the "Disputed Patents").[2] I summarized the relevant background in my May 21, 2018 memorandum opinion on the license issue (D.I. 398 at 1-2) and incorporate that background here.

         In my May 21, 2018 memorandum opinion, I considered both parties' interpretation of the License Agreement's provisions. "Defendant argue[d] that patents 'used for or applicable for products compliant with' listed xDSL standards[3] are licensed." (D.I. 398 at 7). Defendant provided the following Venn Diagram to illustrate its construction:

         (Image Omitted)

(D.I. 232 at 16). In contrast, "Plaintiff argue[d] that a patent is not licensed if every product for which that patent is 'used' or 'applicable' complies with an unlisted xDSL standard." (D.I. 398 at 8). Plaintiff provided the following charts to illustrate its construction:

         (Image Omitted)

(D.I. 255 at 19). In my previous opinion, I determined that,

taken as a whole, the Carve-Out and Clarity Provision are reasonably subject to only to Defendant's interpretation. In sum, any patent that applies to one of the seven listed xDSL standards is licensed. Any patent that does not apply to one of the seven listed xDSL standards is unlicensed. Any patent that applies to both listed and unlisted xDSL standards is licensed.

(D.I. 398 at 10). The parties agreed that my interpretation of the License Agreement is correct. (D.I. 414 at 1; D.I. 528 at 12). However, Plaintiff filed a motion for reconsideration (D.I. 414), which I granted because I believed I made an error of apprehension in the May 21, 2018 memorandum opinion. (D.I. 448 at 6). Defendant then filed a motion for reconsideration of my July 5, 2018 order. (D.I. 455). I granted the motion as to the issue of whether the Disputed Patents apply to a listed standard but maintained my construction of the License Agreement. (D.I. 496 at 3). I then ordered a new set of briefing on the remaining disputed issues. (Id.).

         The most recent round of briefing has demonstrated that the parties continue to disagree on the interpretation of the License Agreement as both parties continue to refer to their original arguments to guide my analysis. (D.I. 519 at 6; D.I. 617 at 38:2-17). Plaintiff argues, "The Court's interpretation thus is that the test for determining whether a patent is licensed turns on whether the patent applies, or not, to a listed xDSL standard, " and the "applies to" language should be interpreted to mean "infringed by." (D.I. 527 at 2, 4-6). In contrast, Defendant argues the disputed patents "apply to" certain listed xDSL standards because the patents address alleged problems with ADSL and VDSL. (D.I. 519 at 8).

         The oral argument also demonstrated the parties' differing understandings of my interpretation of the License Agreement. Plaintiff emphasized that the carve-out provision is a patent carve-out. (D.I. 617 at 52:22-24). Plaintiff continued to assert, as it did in previous briefing, that a patent can be carved out under the License Agreement even if it is used in a product that is compliant with both Listed and Unlisted xDSL standards. (Id. at 35:5-7.). Defendant emphasizes language from my previous opinion stating, "The license agreement unambiguously provides that patents 'used for or applicable for' products compliant with listed xDSL standards are licensed." (Id. at 18:21-19:2; see D.I. 398 at 10-11). Defendant argues that the Carve-Out does not exclude any patent for DSL Technology used in the implementations acquired by Lantiq from Aware. Defendant's view is that the Carve-Out only excludes patents solely used for xDSL standards Aware did not develop for Lantiq. (D.I. 617 at 4:23-5:4; 61:21-22; 62:5-15; 65:16-25).

         The briefing and argument have further focused the issues motivating the parties' ongoing disagreement about the interpretation of the License Agreement. To avoid the need for further briefing, this opinion will clarify my interpretation of the License Agreement. The parties will have an opportunity to respond to the interpretation before I apply it to the Disputed Patents and the G.bond and G.inp standards.

         II. LEGAL STANDARD

         A. Summary Judgment

         "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). 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 177, 181 (3d Cir. 2011) (quoting Anderson v. Liberty Lobby Inc., 477 U.S. 242, 248 (1986)). 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. Scott v. Harris, 550 U.S. 372, 380 (2007); Wishkin v. Potter, A16 F.3d 180, 184 (3d Cir. 2007).

         B. Contract ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.