United States District Court, D. Delaware
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.
ANDREWS, U.S. DISTRICT JUDGE
pending before the Court are Plaintiffs Motion for Summary
Judgment on License of the Disputed Patents (D.I.
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"). 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.
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 are licensed." (D.I. 398 at 7).
Defendant provided the following Venn Diagram to illustrate
(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
(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
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).
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).
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
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