Morris Reese v. T-Mobile USA Inc
Filing
40
ORDER GRANTING T-Mobile USA Inc MOTION FOR SUMMARY JUDGMENT 21 . A Judgment will issue. The parties are directed to file a joint status report detailing what issues, if any, remain for this Court to resolve by Judge Otis D. Wright, II (lc) Modified on 5/9/2014 (lc).
O
1
2
3
4
5
6
7
United States District Court
Central District of California
8
9
10
11
MORRIS REESE,
Plaintiff,
12
13
14
15
Case No. 2:13-cv-05199-ODW(PLAx)
v.
ORDER GRANTING MOTION FOR
SUMMARY JUDGMENT [21]
T-MOBILE USA, INC.,
Defendant.
16
17
I.
INTRODUCTION
18
Plaintiff Morris Reese notified virtually the entire cellular wireless industry of
19
U.S. Patent No. 6,868,150 (“the ’150 Patent”) in 2005 through letters alleging that
20
providing call-waiting and caller-ID services infringed the ’150 Patent. But it was not
21
until May 2013—more than eight years later—that Reese filed patent-infringement
22
suits against the five cellular service providers. Finding this delay unfair, the service
23
providers, including Defendant T-Mobile USA, Inc., all individually filed motions for
24
summary judgment against Reese based on the defense of laches.
25
dismissal of his current suits because of his prolonged delay, Reese now offers
26
excuses—such as his illness and involvement in other litigation—to justify his delay
27
in bringing suit. Because none of Reese’s explanations excuse his delay, the Court
28
GRANTS T-Mobile’s Motion for Summary Judgment. (ECF No. 21.)
Faced with
II.
1
FACTUAL BACKGROUND
2
Reese is the sole named inventor on the ’150 Patent, which issued on March 15,
3
2005. (SUF ¶ 2.) The ’150 Patent is a continuation of the ’009 Patent which issued
4
July 30, 2002. (Id. ¶ 47.) The ’150 Patent expired in 2011, two years prior to Reese’s
5
suit against T-Mobile. (Id. ¶ 30.)
6
On April 13, 2005, Reese sent a letter to T-Mobile Communications, Inc. and T-
7
Mobile Wireless asserting that it infringed the ’150 Patent with its call-waiting ID
8
service. (SUF ¶¶ 4–5; Mot. Ex. 1.) The April 13, 2005 letter informed T-Mobile of
9
the ’150 Patent, and directed T-Mobile in particular to claims 25 and 36—which Reese
10
indicated were “applicable to [T-Mobile] customers subscribed to ‘Call Waiting ID’
11
service.’” (Mot. Ex 1.) Reese asserted that for T-Mobile’s to continue to provide that
12
service to its customers, T-Mobile required a license from Reese. (Id.)
13
T-Mobile responded on April 22, 2005, explaining that it was neither a
14
developer nor manufacturer of wireless telecommunications devices, and thus
15
believed it did not infringe the ’150 Patent. (SUF ¶ 8; Mot. Ex. 2.) Reese responded
16
on June 6, 2005, requesting to know “within the next two weeks as to how [T-Mobile]
17
would like to proceed with this matter.” (SUF ¶ 9; Mot. Ex. 3.) Reese neither
18
informed T-Mobile that it would be sued if it did not take a license, nor asserted that
19
T-Mobile’s status was sufficient to avoid infringement. (SUF ¶ 10–11: Mot. Ex. 3.)
On May 9, 2006, Reese wrote T-Mobile a second letter.
20
(SUF ¶ 20; Mot.
21
Ex. 4.) Again, Reese stated that T-Mobile needed to discuss licensing with Reese, and
22
again he did not inform T-Mobile that it would be sued if it did not take a license.
23
(SUF ¶ 21, Mot. Ex. 4.) On May 15, 2006 T-Mobile responded, reminding Reese that
24
it was neither a developer nor manufacturer of wireless telecommunications devices.
25
(SUF ¶¶ 24–25.) There is no evidence that Reese contacted T-Mobile again during the
26
subsequent eight years. (SUF ¶ 21).
27
///
28
///
2
1
Between 2005 and 2013, Reese litigated several other patent-infringement
2
lawsuits across the country.1 (SUF ¶¶ 40–42.) Four of these suits involved the ’150
3
Patent or its immediate parent. Reese was represented by counsel for all of these
4
suits, with the exception of Reese v. T-Mobile Cal., Inc. et al., Case No. CV-11-01934
5
SJO (C.D. Cal. Aug. 11, 2011), which he litigated pro se. (Reese Decl. ¶ 33.)
6
From 2000 to 2008, Reese experienced serious heath problems. Reese began
7
dialysis treatments for renal failure in 2000. (Id. ¶ 29.) Reese’s dialysis treatments
8
were performed three times per week until Reese had a kidney transplant in 2008. (Id.
9
¶¶ 30–32.)
10
On May 29, 2013, Reese filed suit against T-Mobile—along with Sprint Nextel
11
Corp., TracFone Wireless, Inc., United States Cellular Corporation, AT&T Mobility
12
LLC, and Verizon. (Morris Reese v. Sprint Nextel Corporation et al., 2:13-cv-03811-
13
ODW-PLA (C.D. Cal. May 29, 2013) ECF No. 1.) The Court severed the case on July
14
15, 2013. (Id. ECF No. 18.) Reese refiled a separate complaint against T-Mobile on
15
July 18, 2013. (ECF No. 1.)
III.
16
LEGAL STANDARD
17
Summary judgment should be granted if there are no genuine issues of material
18
fact and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P.
19
56(c). The moving party bears the initial burden of establishing the absence of a
20
genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323–24 (1986).
21
Once the moving party has met its burden, the nonmoving party must go beyond the
22
pleadings and identify specific facts through admissible evidence that show a genuine
23
1
24
25
26
27
28
Reese v. BellSouth Telecommunications, No. 5:97-cv-00568-BO (E.D.N.C Nov. 14, 1997); Reese
v. U.S. West Inc., No. 98-cv-80575-CRW (S.D. Iowa Mar. 12, 1999) (transferred to Reese v. U.S.
West Inc., No. 1:99-cv-00773-WDM-MJW (D. Col. Sept. 23, 2002)); N. Telecom, Inc. v. Reese, No.
2:98-cv- 09591-LGB (C.D. Cal. Feb. 9, 1999) (transferred to N. Telecom, Inc. v. Reese, No. 4:99-cv80081-CRW (S.D. Iowa Mar. 10, 1999)); Reese v. Aastra Technologies, No. 2:03-cv-00267-TJW
(E.D. Tex. Feb. 9, 2005); Reese v. Samsung Telecommunications America, L.P., No. 2:05-cv- 00415DF (E.D. Tex. Jan. 31, 2007); Reese v. Southwestern Bell Telephone, L.P., et. al., Case No. 2:07CV-219 (E.D. Tex. Dec. 23, 2008); and Reese v. Verizon California, Inc. and AT&T California,
Case No. CV-11-01934 SJO (C.D. Cal. Dec. 21, 2012).
3
1
issue for trial. Id.; Fed. R. Civ. P. 56(c). Conclusory or speculative testimony in
2
affidavits and moving papers is insufficient to raise genuine issues of fact and defeat
3
summary judgment. Thornhill’s Publ’g Co. v. GTE Corp., 594 F.2d 730, 738 (9th Cir.
4
1979).
5
A genuine issue of material fact must be more than a scintilla of evidence, or
6
evidence that is merely colorable or not significantly probative. Addisu v. Fred Meyer,
7
198 F.3d 1130, 1134 (9th Cir. 2000).
8
resolution of that fact might affect the outcome of the suit under the governing law.
9
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1968). An issue is “genuine” if
10
the evidence is sufficient for a reasonable jury to return a verdict for the nonmoving
11
party. Id. Where the moving and nonmoving parties’ versions of events differ, courts
12
are required to view the facts and draw reasonable inferences in the light most
13
favorable to the nonmoving party. Scott v. Harris, 550 U.S. 372, 378 (2007).
14
IV.
A disputed fact is “material” where the
DISCUSSION
15
In the interest of fairness, those who are granted a monopoly under the patent
16
system have an obligation to enforce their rights in a timely manner. A defendant in a
17
patent-infringement suit may raise the equitable defense of laches when the plaintiff is
18
dilatory bringing suit and that delay prejudices the defendant. A.C. Aukerman Co. v.
19
R.L. Chaides Const. Co., 960 F.2d 1020, 1030 (Fed. Cir. 1992). In patent cases, laches
20
bars recovery of damages for any infringement that occurs prior to the filing of suit.
21
Id. at 1040. A laches defense is a matter within the trial court’s discretion based on
22
consideration of all of the facts in a particular case. Id. at 1040–41.
23
To prevail on a laches defense, a defendant must prove by a preponderance of
24
the evidence that: (1) the plaintiff knew or should have known of the infringement and
25
with that knowledge delayed filing suit for an unreasonable and inexcusable length of
26
time, and (2) the defendant was materially prejudiced by the delay. Id. at 1032; see
27
also Hearing Components, Inc. v. Shure, Inc., 600 F.3d 1357, 1375 (Fed. Cir. 2010).
28
Where the delay in filing the suit exceeds six years, the court will presume the delay
4
1
was unreasonable and prejudicial to the defendant. 35 U.S.C. § 286; Hearing, 600
2
F.3d at 1375 (citing Aukerman, 960 F.2d at 1035–36.) The burden is then on the
3
plaintiff to prove the existence and reasonableness of an excuse for the delay, and to
4
show a lack of prejudice to the infringer. Hearing, 600 F.3d at 1375.
5
Determining the length of the delay involves two sub-issues: when the delay
6
period begins to run and when the delay period ends. The delay period begins to run
7
from the time that the plaintiff had actual or constructive knowledge of the alleged
8
infringing activities. Aukerman, 960 F.2d at 1032; Hearing Components, 600 F.3d at
9
1375. But the plaintiff need not be certain that the conduct is infringing; time starts to
10
run when the patentee is aware of sufficient facts to form a reasonable belief that some
11
infringing conduct exists. Aukerman, 960 F.2d at 1032. The delay period ends no
12
later than the date of the filing of suit. (Id.)
13
The reasonableness of the delay is not determined by application of mechanical
14
rules. Aukerman, 960 F.2d at 1032. Rather, the reasonableness of the delay depends
15
on the particular facts and circumstances of the individual case. Id. The court must
16
consider and weigh any justification offered by the plaintiff for its delay. Id. at 1033.
17
Prejudice to the defendant may be either economic or evidentiary.
Id.
18
Economic prejudice arises when a defendant incurs damages that would likely have
19
been prevented by earlier suit. See id. Economic prejudice is not merely damages
20
attributable to patent infringement liability. Id. at 1033. Evidentiary or “defense”
21
prejudice arises when the defendant can no longer present a full and fair defense on
22
the merits due to the plaintiff’s delay. Id. at 1032. This inability may be occasioned
23
by “the loss of records, the death of a witness, [or] the unreliability of memories of
24
long past events.” Id.
25
T-Mobile asserts that it is entitled to a laches presumption because of Reese’s
26
eight-year delay in filing suit. Reese contends that T-Mobile is not entitled to a laches
27
presumption because there is no evidence that the delay period, for laches purposes,
28
began to run in 2005. In the alternative, Reese argues that he can rebut the laches
5
1
presumption because his delay was reasonable and resulted in no prejudice to T-
2
Mobile. The Court considers each in turn.
3
A. Laches Presumption
4
T-Mobile asserts that it is entitled to a presumption that Reese’s delay in filing
5
suit was unreasonable and prejudicial to T-Mobile. In support of this assertion, T-
6
Mobile argues that Reese knew or should have known of T-Mobile’s alleged
7
infringement as of April 13, 2005, when Reese sent the infringement-allegation letter
8
to T-Mobile. Reese then failed to formally assert his infringement claims against T-
9
Mobile until 2013. T-Mobile asserts that because this amounts to a more than eight-
10
year delay, it is entitled to the laches presumption under § 286.
11
Reese argues that the delay period did not begin to run on April 13, 2005
12
because his letter to T-Mobile was not an infringement allegation, but merely an
13
invitation for T-Mobile to open licensing discussions with Reese.
14
contends, there is no evidence that Reese actually knew of T-Mobile’s infringement in
15
2005. This argument is contrary to the plain text of the letter. Reese states in his letter
16
to T-Mobile that in order for it to continue to provide call-waiting-ID services, T-
17
Mobile “requires a license from Mr. Reese.” (Mot. Ex. 1.) It strains credibility to
18
argue that a patent owner who demands that a company take a license can somehow
19
not know of his infringement claim on that patent.
Thus, Reese
20
Moreover, Federal Circuit precedent establishes that knowledge as to whether
21
the device actually infringes is not required to establish laches. A good-faith belief is
22
sufficient. Aukerman, 960 F.2d at 1032. Reese clearly believed that T-Mobile’s call-
23
waiting-ID services infringed the ’150 Patent—evidenced by his attempt to open
24
licensing negotiations in 2005. Accordingly, the Court finds that Reese had actual
25
knowledge of T-Mobile’s infringement at least on April 13, 2005. Because Reese
26
failed to formally assert his rights until 2013, T-Mobile is entitled to a presumption of
27
laches. Thus, Reese “must come forward with evidence sufficient to put the existence
28
of these presumed undisputed facts into genuine dispute, either by showing that the
6
1
delay was reasonable or that the movant did not suffer prejudice caused by the wait.”
2
Id. at 1038.
3
B. Reasonableness of the delay
4
Reese argues that even if he had knowledge of T-Mobile’s infringement in
5
2005, his eight-year delay in filing suit was reasonable.
Reese proffers two
6
justifications for his delay: his involvement in other litigation and his worsening
7
medical condition. Reese also claims he is entitled to leniency because he was
8
representing himself for some of the litigation. The Court addresses each in turn.
9
First, Reese argues that his eight-year delay in filing suit against T-Mobile was
10
reasonable because he was extensively involved in other litigation. On August 31,
11
2005, Reese filed suit against cellular phone manufacturers Samsung, Motorola, Sony,
12
Siemens, LG, RiM and Palm, alleging infringement of the ’009 Patent (the immediate
13
patent of the ’150 Patent). (Reese Decl. ¶ 17.) That suit continued through January
14
31, 2007. (Id. ¶ 18.) Four months later, Reese sued land-line telephone service
15
providers Southwestern Bell Telephone Company, GTE Southwest, and their parent
16
companies AT&T and T-Mobile, for infringement of the ’150 Patent. (Id. ¶ 21.)
17
Reese voluntarily dismissed AT&T and T-Mobile from that action, but later brought a
18
separate suit against the same companies that lasted from March 2011 to December
19
21, 2012. (Id. ¶¶ 24, 33.) Approximately five months later, Reese filed this action
20
against T-Mobile, again alleging infringement of the ’150 Patent.
21
Involvement in other enforcement litigation may, in some circumstances,
22
excuse a plaintiff’s delay in suing an alleged infringer. But the Federal Circuit has
23
held that a plaintiff’s calculated choice to proceed with certain lawsuits while delaying
24
others—absent other factors—is a strategic decision that does not excuse or otherwise
25
toll the presumption period for laches. Hall v. Aqua Queen Mfg., Inc., 93 F.3d 1548,
26
1554 (Fed. Cir. 1996).
27
In Hall, the Federal Circuit noted that delay occasioned by involvement in other
28
enforcement litigation may be reasonable if the alleged infringer has knowledge of
7
1
(1) the existence of the other litigation, and (2) the plaintiff’s intent to enforce its
2
rights against the infringer at the conclusion of the other litigation. Although there is
3
no rigid requirement that such notice be given, “[w]here there is prior contact
4
[between the patentee and the accused infringer], the overall equities may require
5
appropriate notice.”
6
Aukerman, 960 F.2d at 1039.
Hall, 93 F.3d at 1554 (internal quotations omitted); accord
7
Here, T-Mobile received no communications from Reese for seven years after
8
the infringement-allegation letters of 2005 and 2006. There is no evidence that T-
9
Mobile had any notice—from Reese or otherwise—that Reese intended to sue it after
10
the close of his other litigation. Reese’s seven-year silence and eight-year inaction
11
made it reasonable for T-Mobile to believe that Reese had declined to assert his rights
12
against T-Mobile. Where there is prior contact between the plaintiff and the accused
13
infringer—especially when the contact is in the form of an infringement accusation—
14
notice becomes essential to a finding of excusable delay. A clear indication that the
15
plaintiff intends to enforce its rights against the alleged infringer after the conclusion
16
of the other litigation allows the accused infringer an opportunity to take steps to
17
protect itself from liability. Accord Odetics, Inc. v. Storage Tech. Corp., 919 F. Supp.
18
911 (E.D. Va. 1996). Here, T-Mobile had no such opportunity.
19
The equivocal nature of Reese’s contacts with T-Mobile failed to give adequate
20
notice that it may be subject to suit in the future. The equities dictate that notice of
21
intent to pursue infringement claims against T-Mobile at the conclusion of Reese’s
22
other litigation was required in this case. Accordingly, Reese’s choice to strategically
23
pursue other lawsuits while ignoring T-Mobile is legally insufficient to overcome the
24
presumption of unreasonable delay.
25
Second, Reese argues that his delay in bringing suit was reasonable because of
26
the serious health problems he experienced from 2000 to 2008. He argues that his
27
ability to sue T-Mobile was significantly restricted because of his frequent dialysis
28
treatments and eventual kidney transplant.
8
1
Generally, illness is not recognized as an adequate excuse for a plaintiff’s delay
2
in bringing suit. And although Reese certainly was afflicted with a debilitating illness,
3
Reese’s assertion that his delay was necessary because of his failing health is directly
4
contradicted by his previous excuse—his extensive involvement in other litigation.
5
Notwithstanding his poor health, Reese was able to file multiple suits against other
6
infringers during his illness and litigate them to conclusion. (Reese Decl. ¶¶ 17–33.)
7
The fact that Reese was able to competently litigate several other lawsuits undermines
8
his contention that he was physically unable to pursue lawsuits against T-Mobile.
9
Moreover, Reese ignores the five years that have passed since his kidney
10
transplant. Even after his health issues ended in 2008, Reese did and said nothing
11
until he filed suit in 2013. Reese does not assert that his health issues continued after
12
2008. Thus, at a minimum Reese had three years after the resolution of his health
13
issues before laches would be presumed.
14
Finally, an inability to find willing counsel, another of Reese’s excuses, is
15
widely rejected as a legally cognizable reason to excuse an unreasonable delay in
16
filing suit. Hall, 93 F.3d at 1554. Additionally, Reese’s litigation history shows that
17
he has used multiple counsel at various times, and was fully capable of engaging in
18
different litigation activities with different counsel—or by himself.
19
C. Prejudice
20
A plaintiff can also rebut the laches presumption by raising a genuine fact issue
21
regarding the absence of prejudice to the defendant. Aukerman, 960 F.2d 1030. Reese
22
contends that his delay did not materially prejudice T-Mobile. But Reese attempts to
23
prove this lack of prejudice by asserting that T-Mobile has failed to demonstrate that it
24
has been prejudiced by Reese’s delay—thus placing the burden of production on T-
25
Mobile.
26
production on the plaintiff. Hall, 93 F.3d at 1553. Thus it is Reese’s burden to come
27
forward with affirmative evidence of a lack of prejudice. T-Mobile may remain
This is incorrect; the Auckerman presumption places the burden of
28
9
1
“utterly mute on the issue of prejudice and nonetheless prevail[].” Hall, 93 F.3d at
2
1554.
1. Evidentiary prejudice
3
4
Reese has provided no affirmative evidence that T-Mobile will not suffer
5
evidentiary prejudice from his eight-year delay. In contrast, T-Mobile argues that they
6
will suffer evidentiary prejudice because Reese is unable to account for evidence
7
relevant to T-Mobile’s defense of this action. Reese does not dispute that he no longer
8
has a complete of set documents produced in or generated during the course of his
9
prior litigation relating to ’150 Patent. (SUF ¶ 58–60; Mot. Exs. 20–21.) To date,
10
Reese has been unable to produce all the documents that existed for the US West,
11
Northern Telecom, Aastra, Samsung, or Verizon California cases. Additionally, Reese
12
does not dispute that he no longer has a complete set of licensing agreements for the
13
’150 or related patents. (SUF ¶¶ 48–49; Mot. Exs. 17–18.) Reese’s prior counsel also
14
admitted to destroying 68 folders of documents related to Reese’s prior litigation—
15
some of which directly involved the ’150 Patent. (SUF ¶ 59; Wong Decl. ¶ 23, Ex.
16
21.) Although the contents of the documents are unknown, a chart provided by prior
17
counsel shows a variety of potentially responsive documents including “current
18
settlements” and “Reese/T-Mobile Issue.” (Mot. Ex. 21–22.)
The loss of these documents is problematic for two major reasons.
19
the
licenses—many
of
which
20
because
21
manufacturers—may protect T-Mobile from Reese’s infringement allegations.
22
Reese licensed customers to use handsets that subscribe to T-Mobile’s services or
23
network, that license may protect T-Mobile from infringement claims. Second, those
24
licenses are essential to allow T-Mobile to propose a reasonable-royalty rate for any
25
potential damages involving unlicensed products. In the absence of this evidence, T-
26
Mobile’s opportunity to defend itself against Reese’s infringement claim is somewhat
27
less than “full and fair.”
28
///
10
were
given
to
First,
cell-phone-handset
If
1
Reese attempts to argue that T-Mobile should endeavor to reconstruct the
2
evidence for its defense, which he alleges should still be available from some other
3
sources. But Reese presents no authority for his novel proposition that T-Mobile is
4
required to attempt to gather whatever evidence remains and hope that it works for
5
their defense. This burden lies with Reese, not T-Mobile. Consequently, Reese has
6
not met his burden to come forward with affirmative evidence of a lack of evidentiary
7
prejudice.
2. Economic prejudice
8
9
Reese also argues that T-Mobile has failed to prove that it has been
10
economically prejudiced by Reese’s delay in filing. But again, it is not T-Mobile’s
11
burden, as Reese argues, to demonstrate economic prejudice in light of the laches
12
presumption. Rather, Reese has the burden of proving that T-Mobile has not been
13
economically prejudiced by Reese’s delay—which he does not attempt to do in his
14
Opposition. Reese merely attacks T-Mobile’s assertions of economic prejudice as
15
“largely conclusory and lack[ing] any proof.”
16
Accordingly, Reese has failed to adduce any affirmative evidence that T-Mobile has
17
not been economically prejudiced by Reese’s eight-year delay in filing suit.
18
///
19
///
20
///
21
///
22
///
23
///
24
///
25
///
26
///
27
///
28
///
11
(Opp’n 15.) This is insufficient.
V.
1
CONCLUSION
2
Based on the undisputed facts, T-Mobile is entitled to the presumption of
3
laches. Reese has failed to prove that his delay was reasonable, or that T-Mobile
4
suffered no prejudice as a result of the delay. Accordingly, for the reasons discussed
5
above, T-Mobile’s Motion for Summary Judgment is GRANTED. (ECF No. 21.) A
6
Judgment will issue. The parties are directed to file a joint status report detailing what
7
issues, if any, remain for this Court to resolve.
8
IT IS SO ORDERED.
9
10
May 9, 2014
11
12
13
____________________________________
OTIS D. WRIGHT, II
UNITED STATES DISTRICT JUDGE
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
12
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?