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Judge Andrews denies motion for summary judgment requesting the barring of plaintiff’s claims by license and estoppel

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In a recent memorandum opinion, Judge Richard G. Andrews denied defendants’ motion for summary judgment, requesting that the court bar plaintiff’s claims in view of a license and estoppel. Comcast IP Holdings I, LLC v. Sprint Communications Co., et al., C.A. No. 12-205-RGA (D. Del. July 15, 2014). Specifically, defendants contended that they had a license to the asserted patent, either express or implied, “via a licensing agreement between Hewlett-Packard (‘HP’), the original assignee of the patent, and Lucent, the predecessor to Alcatel Lucent,” which manufacturers “many of the devices which [defendants] use[], and which [plaintiff] accuses of performing the patented methods.” Id. at 1, 3.

Judge Andrews denied defendants’ motion for summary judgment, finding that defendants failed to prove that the license at issue covered the asserted patent. Id. at 3. First, Judge Andrews found that the license did not expressly cover the asserted patent, as defendants failed to show that the patent “issued or [had] enforceable rights in any country of the world from an application filed on or before January 31, 2001,” as required by the license agreement. Id. at 3-5. In reaching that determination, Judge Andrews explained that the phrase “issued from” was not intended to include divisional or continuation applications, and that the “enforceable rights in any country” clause referred to “patents which are issued not in any country, but by a transnational body such as the European Patent Office.” Id. at 4-5.

Judge Andrews next found that an implied license, which arises under legal estoppel, did not cover the asserted patent. Specifically, Judge Andrews explained the license agreement “contains a ‘clear indication’ not to extend the license to continuation patents via an implied license.” Id. at 8. Judge Andrews thus concluded that because “the license does not cover continuation patents, [it] therefore does not estop [plaintiff] from asserting the [asserted] patent against [defendants].” Id.

Judge Andrews also addressed whether it would be appropriate to grant summary judgment in favor of plaintiff without plaintiff having filed such a motion. Id. at 8-9. Judge Andrews concluded that while the “Federal Rules of Civil Procedure allow me to grant summary judgment sua sponte, . . . they do not require me to do so.” Id. at 9. Given that the record was not “sufficiently developed,” Judge Andrews “decline[d] to grant summary judgment in [plaintiff’s] favor.” Id. at 8-9.

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