Sprint Commc'ns Co. v. Cox Commc'ns Inc.

• Decision Date: 09 November 2017
• Docket Number: Civ. No. 12–487–JFB
• Citation: 302 F.Supp.3d 597
• Parties: SPRINT COMMUNICATIONS COMPANY L.P., et al., Plaintiffs, v. COX COMMUNICATIONS INC., et al., Defendants.
• Court: U.S. District Court — District of Delaware

302 F.Supp.3d 597

SPRINT COMMUNICATIONS COMPANY L.P., et al., Plaintiffs,

v.COX COMMUNICATIONS INC., et al., Defendants.

Civ. No. 12–487–JFB

United States District Court, D. Delaware.

Signed November 9, 2017

Richard K. Herrmann, Esquire, and Mary Matterer, Morris James LLP, Wilmington, Delaware. Counsel for Plaintiffs. Of Counsel: Jordan T. Bergsten, Esquire, Ryan D. Dykal, Esquire, Aaron E Hankel, Esquire, Robert H. Reckers, Esquire, Ryan J Schletzbaum, Esquire, and Basil Trent Webb, Esquire of Shook, Hardy & Bacon LLP.

David A. Bilson, Esquire, and John C. Phillips, Jr., Phillips, Goldman, McLaughlin & Hall, P.A., Wilmington, Delaware. Counsel for Defendants. Of Counsel: David S. Bloch, Esquire, Michael L. Brody, Esquire, Krishnan Padmanabhan, Esquire, Pejman F. Sharifi, Esquire, and James Winn, Esquire of Winston & Strawn LLP.

MEMORANDUM OPINION

BATAILLON, Senior District Judge

I. INTRODUCTION

In this patent case involving Plaintiff Sprint Communications Company, L.P. ("Plaintiff" or "Sprint") against Defendant Cox Communications, Inc. ("Defendant" or "Cox"), Sprint alleges that Cox infringes certain of Sprint's telecommunications and data networking patents.¹ Among these patents are U.S. Patent Nos. 7,286,561 ("the '6,561 patent"), 6,633,561 ("the '3,561 patent"), 6,463,052 ("the '052 patent"), and 6,452,932 ("the '932 patent") (collectively the "Call Control Patents") and U.S. Patent Nos. 6,473,429 ("the '429 patent"), 6,343,084 ("the '084 patent"), and 6,298,064 ("the '064 patent") (collectively the "Broadband Patents"). Sprint asserts approximately 15 claims from the Call Control Patents and the Broadband Patents (the "patents-in-suit") against Cox. (D.I. 650 at 2) District Judge Sue L. Robinson construed various claim terms of the patents-in-suit in March 2016 and May 2017. (D.I. 399; D.I. 400, D.I. 541) Upon Judge Robinson's retirement from the bench, the case was reassigned to the undersigned on June 16, 2017. (D.I. 557) A pre-trial conference is scheduled for November 17, 2017, with a jury trial set to begin on December 7, 2017. (D.I. 603; D.I. 654) The court has jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a).

As part of its defenses to the allegation of patent infringement by Sprint, Cox contends that the patents-in-suit are invalid for lack of written description under 35 U.S.C. § 112, ¶ 1.² (D.I. 608 at 1) In support, Cox presents the testimony of its expert witnesses Paul S. Min, PhD ("Dr. Min") and Kevin Almeroth, PhD ("Dr. Almeroth"). (See, e.g. , D.I. 587, ex. 1 at ¶ 105) Based upon this testimony, and Cox's admissions, Sprint argues that "the claims as construed are supported by the specification[,]" (D.I. 587 at 15), and has moved for partial summary judgment of no invalidity of the patents-in-suit, (D.I. 586). Sprint has also moved to exclude the testimony of Drs. Min and Almeroth. (Id. )

Meanwhile, Sprint has presented the validity opinions of its expert, Dr. Stephen Wicker ("Dr. Wicker"). (D.I. 620, exs. 2, 3, 4) Based upon Dr. Wicker's reports, Cox contends that "there are no genuine factual disputes" as to its central theory that all of "Sprint's patents³ disclose only connection-oriented technology, namely [Asynchronous Transfer Mode] ATM, for packet-voice transmissions[ ]" and cannot, therefore, read on products and services that employ Internet Protocol (IP) technologies. (D.I. 608 at 1 (emphasis in original)) As a result, Cox has moved for partial summary judgment of invalidity of the patents-in-suit. (Id. )

During briefing on the instant motion, in its reply brief, Sprint included an Appendix A, entitled "Sprint's Response to Cox's Statement of Facts (CSUF)[,]" which is a nine-page response to the statement of facts that Cox presented in its answering brief. (D.I. 620, appx. A; D.I. 608 at ¶¶ 1–7) Cox moved to strike this material, arguing that it "contain[s] additional pages of substantive arguments." (D.I. 634 at 1)

II. BACKGROUND

A. The Patents

The patents-in-suit relate to transmission of telephone calls between traditional telephone networks and packet data networks. All of the patents-in-suit originate from U.S. Patent Application No. 08/238,605 ("the '605 application"), which was filed on May 5, 1994 and was abandoned by applicant. (See, e.g. , '052 patent, 1:5–10) The '605 application is incorporated by reference into all of the patents-in-suit. (Id. ) The Call Control Patents are continuations of the '605 application and share a common specification. (Id. ; '932 patent, 1:5–12; '3,561 patent, 1:5–12; '6,561 patent, 1:6–12) The Broadband Patents share a common specification and are continuations of U.S. Patent Application No. 08/525,897 ("the '897 application"), filed on September 8, 1995, which is now U.S. Patent No. 5,991,301. ( '429 patent, front page, item [63]⁴ , 1:6–16; '084 patent, front page, item [63]⁵ ; '064 patent, front page, item [63]⁶ )

In the written description analysis, the relationship between the Call Control and Broadband Patents is important.⁷ Elsewhere in the summary judgment briefing, Cox argues that the [Broadband Patents] explicitly disclaim any relationship to the [Call Control Patents.]" (D.I. 627 at 14)

The '897 application initially claimed to be a continuation-in-part of the '605 application. ( '301 patent, front page, item [63]; 1:6–10) By definition, a continuation-in-part application is "filed during the lifetime of an earlier [ ] application, [and] repeat[s] some substantial portion or all of the earlier [ ] application and add[s] matter not disclosed in the [ ] earlier [ ] application." § 201.08 MPEP (9th ed., Rev. 07.2015, Nov. 2015). The '301 patent issued on November 23, 1999. ( '301 patent, front page) In December 2004, applicant requested a Certificate of Correction related to "Item [63], Related U.S. Application Data," in which the '301 patent claimed it was a "[c]ontinuation-in-part of application No. 08/238,605, May 5, 1994, abandoned." (Id. , Certificate of Correction)⁸ A Certificate of Correction operates as follows:

Whenever a mistake of a clerical or typographical nature, or of minor character, which was not the fault of the Patent and Trademark Office, appears in a patent and a showing has been made that such mistake occurred in good faith, the Director may, upon payment of the required fee, issue a certificate of correction, if the correction does not involve such changes in the patent as would constitute new matter or would require re-examination. Such patent, together with the certificate, shall have the same effect and operation in law on the trial of actions for causes thereafter arising as if the same had been originally issued in such corrected form.

35 U.S.C. § 255. The USPTO has identified "[t]wo separate statutory requirements [that] must be met before a certificate of correction for an applicant's mistake may issue." In Re Arnott , 19 U.S.P.Q.2d 1049 at *5 (Com'r Pat. & Trademarks May 22, 1991) ; see also § 1481 MPEP (9th ed., Rev. 07.2015, Nov. 2015). "The first statutory requirement concerns the nature, i.e., type, of the mistake for which a correction is sought... [, which] must be: (1) of a clerical nature, (2) of a typographical nature, or (3) a mistake of minor character." In Re Arnott , 19 U.S.P.Q.2d 1049 at *5. "The second statutory requirement concerns the nature of the proposed correction. The correction must not involve changes which would: (1) constitute new matter or (2) require reexamination." Id. The file history of the '301 patent is not currently before the court, and it is unknown what statements applicant made in December 2004; however, even if as the corrected front page states, the '301 patent is not a continuation-in-part of the '605 application,⁹ that does not change the specification which states that "[t]his application is a continuation-in-part of prior application Ser. No. 08/238,605, entitled ‘Method, System, and Apparatus for Telecommunications Control’, filed May 5, 1994, currently pending, and incorporated by reference into this application." ( '301 patent, 1:6–10) In other words, while the status of the '897 application as a continuation-in-part of the '605 application may be in doubt, at a minimum, the '897 application (which forms the basis for the Broadband Patents) incorporates by reference the '605 application (which forms the basis for the Call Control Patents). Therefore, aspects of the Broadband Patents may find support in the common specification for the Call Control Patents,¹⁰ but limitations to the Broadband Patents do not necessarily result in limitations to the Call Control Patents.

1. The Broadband Patents

In 2016, Cox moved for summary judgment of no literal infringement of the '084 patent (which is one of the Broadband Patents) as well as several other patents no longer in suit¹¹ on the premise that the patents are limited to ATM (asynchronous transfer mode) technologies and that Cox's accused products and services are used in IP (Internet protocol) networks. (D.I. 357 at 25). At the time, Cox explained in its reply brief that "[t]o be clear, we agree that if the claims are read as limited to ATM networks, they will not run afoul of the written description requirement." (D.I. 353 at 11 (emphasis in original)) Sprint did not argue to the contrary and suggested that, under a construction limited to ATM, it would assert infringement under the Doctrine of Equivalents. (D.I. 329 at 22) Judge Robinson construed, inter alia, the "interworking unit" limitation of independent claim 1 of the '084 patent to be an "ATM interworking multiplexer[,]" (D.I. 400 at ¶ 9), and granted summary judgment of no literal infringement, (D.I. 399 at ¶¶ 6–8).

As discussed above, the other two Broadband Patents (the '429 and '064 patents ) share a common specification with the '084 patent, and the parties have agreed to apply the ATM technology limitation to the '429 and '064 patents. (See, e.g. , D.I. 490 at 2, applying definitions of "interworking unit" as "ATM interworking multiplexer" and ...