Trueposition Inc. v. Andrew Corporation

• Decision Date: 31 July 2008
• Docket Number: Civ. No. 05-747-SLR.
• Citation: 568 F.Supp.2d 500
• Parties: TRUEPOSITION INC., Plaintiff, v. ANDREW CORPORATION, Defendant.
• Court: U.S. District Court — District of Delaware

568 F.Supp.2d 500

TRUEPOSITION INC., Plaintiff, v. ANDREW CORPORATION, Defendant.

Civ. No. 05-747-SLR.

United States District Court, D. Delaware.

July 31, 2008.

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James D Heisman, Esq. of Connolly Bove Lodge & Hutz LLP, Wilmington, DE. Of Counsel: Paul B. Milcetic, Esq. Dale. M. Heist, Esq., Kathleen A. Milsark, Esq., Daniel J. Goettle, Esq., and Amanda M. Kessel, Esq. of Woodcock Washburn LLP, Philadelphia, PA, for Plaintiff.

Josy W. Ingersoll, Esq. and Andrew A. Lundgren, Esq. of Young Conaway Stargatt & Taylor, LLP, Wilmington, DE. Of Counsel: John M. Desmarais, Esq., Gregory S. Arovas, Esq., Avinash S. Lele, Esq., Todd M. Friedman, Esq., and Jason Choy, Esq. of Kirkland & Ellis LLP, New York, NY, and Michael A. Parks, Esq., Rachel Pernic Waldron, Esq., Shira J. Kapplin, Esq., and Regan A. Smith, Esq. of Kirkland & Ellis LLP, Chicago,. IL, for Defendant.

MEMORANDUM OPINION

SUE L. ROBINSON, District Judge.

I. INTRODUCTION

Plaintiff TruePosition, Inc. ("plaintiff") filed this patent infringement action against Andrew Corporation ("defendant") on October 25, 2005, alleging infringement of plaintiffs U.S. Patent No. 5,327,144 ("the '144 patent"). (D.I.1) Plaintiff alleged that defendant's system for locating cellular telephones, called the Geometrix® Wireless Location System, infringed claims 1, 2, 22, 31 and 32 of the '144 patent. Both parties filed motions for summary judgment. On August 23, 2007, the court denied plaintiffs motion for summary judgment of infringement, granted plaintiffs partial motions for summary judgment with respect to no anticipation and on defendant's unfair competition defense and counterclaim, and denied defendant's motion for summary judgment that claim 22 of the '144 patent is invalid for indefiniteness. (D.I.258, 259) A jury trial was held between September 4 and 14, 2007. On September 14, 2007, the jury returned a verdict in favor of plaintiff on each asserted claim. (D.I.293) Specifically, the jury found that defendant directly infringed, contributorily infringed, and induced the infringement of the '144 patent, and that its infringement was willful. (Id.) The jury rejected defendant's fraud and promissory estoppel defenses, and awarded plaintiff damages. (Id.) Defendant's equitable defenses remain pending before the court and have been fully briefed based on the factual record created at trial.¹ Also presently before the court is defendant's motion for judgment as a matter of law ("JMOL") or, in the alternative, for a new trial (D.I.318), and plaintiffs motions for attorney fees (D.I.314) and for a permanent injunction (D.I.316). The court has jurisdiction over these issues pursuant to 28 U.S.C. §§ 1331, 1338(a) and 1400(b).

II. BACKGROUND²

A. The Technology at Issue

As discussed in the court's previous opinion (D.I.258), this case involves a patented system for locating cellular telephones using signals which are transmitted from a cellular telephone to a cell site³ over a prescribed set of "reverse control channels." There are two basic types of data channels in a cellular network. Generally, control channels carry information to control the operations of the cellular network, while voice channels carry user data, such as the voice signals that a user generates during a call. Control channels are operative any time a cell phone is turned on, while voice channels are active only during a call.

Cellular networks use different protocols for describing how information is transmitted between a cell phone and a cell site. In Global System for Mobile Communications ("GSM") cellular networks, control channels are known as stand-alone dedicated control channels ("SDC" channels); voice channels are called traffic channels ("TCH" channels). Uplink Time Difference of Arrival ("UTDOA") is a network-based means of determining a cell phone's location by comparing and calculating the difference in time required for the cell phone's signal to reach different cell sites.⁴

B. The Parties and the '144 Patent

Plaintiff is a Delaware corporation with a principal place of business in King of Prussia, Pennsylvania. Defendant is a Delaware corporation with a principal place of business in Westchester, Illinois.⁵ The parties compete directly in both domestic and foreign markets for cell phone location technologies. Defendant sells geolocation products under the tradename Geometrix®.

In the early 1990s, plaintiff's founder and two other inventors conceived and developed a system that allowed the location of a cell phone user to be determined from the transmissions normally emitted by the user's phone over the control channels. The application leading to the '144 patent was filed May 7, 1993; the '144 patent issued to plaintiff on July 5, 1994. The '144 patent generally relates to a cell phone location system for automatically recording the location of cell phones having several cell site locations. Claims 1, 22, and 31 are independent claims describing, in most general terms, a location system, a ground-based location system, and a method for determining the location of cellular telephones. Each asserted claim 1, 2, 22, 31 and 32 requires that signals be transmitted over a prescribed set of "reverse control channels."

C. Standardization Bodies

Both plaintiff and defendant have participated in the Third Generation Partnership Project ("3GPP"), an international standardization body in the cell phone industry, through one of its five recognized organization partners, the European Telecommunications Standards Institute ("ETSI"). 3GPP prepares, approves and maintains "Technical Specifications" and "Technical Reports" (known generally as "standards") for various cell phone systems. ETSI has an intellectual property rights ("IPR") policy which states that each member must timely inform ETSI of any "essential IPRs"; an IPR is "essential" when it is not technically possible to implement a standard without infringing that intellectual property. (PTX-363, secs.4.1, 15) UTDOA was at one time part of a 3GPP standard, but was subsequently removed prior to the following events.

D. Timeline of Events Regarding the Parties' Relationship and Standardization Efforts

On December 29, 2000, plaintiffs counsel sent a letter to defendant discussing the "FCC's[⁶] mandate requiring wireless carriers to report their plans for implementing E-911 Phase II, including the technology they plan to use to provide caller location[.]" (PTX-7) Plaintiff informed defendant that it held patents in this area, including the '144 patent, and enclosed a copy of the '144 patent for review. (Id.) The letter "ask[ed] that [defendant] kindly investigate whether [it's] Geometrix location system employs TruePosition's patented TDOA and AOA processing methods and systems," and stated that if defendant "would like to inquire about a license or need[ed] further information, please contact [counsel] directly." (Id.) Defendant did not respond to this letter. (D.I. 298 at 149:9-151:13; D.I. 299 at 498:8-499:22)

On December 11, 2001, plaintiff and KAI filed an infringement action against Allen Telecom LLC, defendant's predecessor, (the "Allen suit"), in which plaintiff asserted that Geometrix® infringed several of its patents. Plaintiff did not assert the '144 patent against Allen; defendant,⁷ however, did rely upon the '144 patent as a primary prior art reference in support of its invalidity defenses. (D.I. 299 at 499:24-501:4)

Several significant events occurred between 2001 and 2002, while the Allen suit was pending. In November 2001, plaintiffs representatives attended a 3GPP meeting in Cancun, Mexico. At this meeting, plaintiff submitted a "Work Item Request" to include UTDOA in the GERAN⁸ specifications, which request was rejected.⁹ (DTX-901) Plaintiff noted:

Significant to note the importance with which acceptance of UTDOA into the GERAN specs depends on it being a "multi-vendor" system. This means that we may need to cooperatively share the concepts and system designs but license the higher-value IPRs, as required to allow other vendors to produce UTDOA systems. One strategy may be to share the concepts required to produce moderately accurate systems, but retain the high-value algorithms that allow for higher accuracy.

(Id.; see also D.I. 299 at 240:7-16) This reflected ETSI's "general practice" of having multiple vendors for standardized systems, (D.I. 299 at 243:9-16) Plaintiff agreed to undertake a feasibility study "to address the concerns of the GERAN members." (D.I.901) Plaintiff also noted a desire to "[d]evelop additional relationships with vendors and operators." (Id.)

Plaintiff joined ETSI in January 2002. (DTX-62; D.I. 299 at 245:5-7) In April 2002, plaintiff presented its "Feasibility Study" discussing the feasibility of applying TDOA to locate GSM cell phones. (PTX-364; D.I. 298 at 170:16-22) The Feasibility Study submitted by plaintiff to ETSI discussed the location of cell phones using the SDC channel Notably, it contained the following "Intellectual Property Consideration":

TruePosition, Incorporated may hold one or more patents or copyrights that cover information contained in this document. A license will be made available to applicants under reasonable terms and conditions that are demonstrably free of any unfair competition.

(PTX-364 at Sec. 3.3.5) The Feasibility Study is publicly available through 3GPP.

The parties discussed settling the Allen suit with a license and, on November 2, 2002, plaintiff's counsel sent an email to defendant containing a list of patents that it "anticipate[d] the license would cover," including the '144 patent. (PTX-8; D.I. 299 at 502:18-504:6) The discussion did not lead to any offers. (Id.)

Defendant's business director and standards body representative, Oscar Magnusson, reviewed the Feasibility Study and shared this information with defendant's vice presidents of business development and engineering. (D.I. 304 at...