Cox Communications Inc. et al v. Sprint Communications Company LP et al
MEMORANDUM ORDER granting 641 MOTION to Establish Order of Proof at Trial. The order of proof at trial will be Sprint presenting its infringement case first, and Cox presenting its defenses second. Additionally, the parties shall be realign ed to reflect that Sprint, as the patent-owner and first-filer, is the true plaintiff in this case, while Cox is the true defendant. The clerk of court is hereby directed to reflect these changes to the roles of the parties in the courts electronic filing system. Signed by Judge Joseph F. Bataillon on 10/26/2017. (nmfn)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
COX COMMUNICATIONS INC., et al.,
COMPANY L.P., et al.,
Civ. No. 12-487-JFB
At Wilmington this 26th day of October, 2017, having reviewed Sprint Communications,
LP’s (“Sprint’s”) motion to establish the order of proof at trial and to align the parties, (D.I. 641),
and the briefs, (D.I. 642, 651, 656), submitted therewith;
IT IS ORDERED that said motion is granted, as follows.
1. Background. On December 19, 2011, Sprint filed suit in the District of Kansas (the
“Kansas litigation”) against several Cox entities,1 alleging infringement of twelve patents (the
“patents-in-suit”) related to the transmission of voice communications over packet networks.
Four months later, on April 16, 2012, plaintiffs2 (“Cox”) filed this declaratory judgment action
regarding the same patents-in-suit. (D.I. 1 at ¶¶ 42–53) Sprint has maintained, against other
Specifically, Cox Communications, Inc.; CoxCom, LLC; Cox Communications Kansas, L.L.C.; and Cox
Kansas Telcom, L.L.C.
Cox Communications, Inc.; Coxcom, LLC; Cox Arizona Telcom, L.L.C.; Cox Communications Arizona,
L.L.C.; Cox Arkansas Telcom, L.L.C.; Cox California Telcom, L.L.C.; Cox Communications California, L.L.C.;
Cox Colorado Telcom, L.L.C.; Cox Connecticut Telcom, L.L.C.; Cox District of Columbia Telcom, L.L.C.; Cox
Florida Telcom, L.P.; Cox Georgia Telcom, L,L,C.; Cox Communications Georgia, L.L.C.; Cox Communications
Gulf Coast, L.L.C.; Cox Idaho Telcom, L.L.C.; Cox Iowa Telcom, L.L.C.; Cox Kansas Telcom, L.L.C.; Cox
Communications Kansas, L.L.C.; Cox Louisiana Telcom, L.L.C.; Cox Communications Louisiana, L.L.C.; Cox
Maryland Telcom, L.L.C.; Cox Missouri Telcom, L.L.C.; Cox Nebraska Telcom, L.L.C.; Cox Communications
Omaha, L.L.C.; Cox Nevada Telcom, L.L.C.; Cox Communications Las Vegas, Inc.; Cox North Carolina Telcom,
L.L.C.; Cox Ohio Telcom, L.L.C.; Cox Oklahoma Telcom, L.L.C.; Cox Rhode Island Telcom, L.L.C.; Cox
Virginia Telcom, L.L.C.; Cox Communications Hampton Roads, L.L.C.
defendants, three separate cases in the District of Kansas involving the same patents-in-suit:
Sprint Communications Co. v. Comcast Cable Communications, LLC, No. 11-02684; Sprint
Communications Co. v. Cable One, Inc., No. 11-02685; and Sprint Communications Co. v. Time
Warner Cable Inc., No. 11-02686.
2. Cox moved to transfer the Kansas litigation to Delaware, which Judge Julie A.
Robinson granted on September 14, 2012, finding that Kansas did not have personal jurisdiction
over one of the Cox defendants, namely Cox Communications, Inc. Sprint Commc’ns Co. v. Cox
Commc’ns, Inc., No. 11-2683, 2012 WL 4061509, at *16 (D. Kan. Sept. 14, 2012).
Subsequently, Sprint agreed to have their first-filed3 case merged into Cox’s later-filed
declaratory judgment action. (D.I. 642 at 1) Sprint has moved on several occasions to transfer
this consolidated matter back to Kansas, (D.I. 43, 508), but this court has denied these motions,
(D.I. 76, 603), noting that Sprint’s Kansas cases was first-filed, (D.I. 76 at ¶ 7 n.4), but that
“exceptional circumstances” warranted departure from the first-to-file rule, (id. at ¶ 7).
3. At this point, Sprint alleges that Cox infringes claims of the patents-in-suit, which 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”). Aside from Cox’s defenses to
infringement (namely invalidity and noninfringement), there are no other claims at issue.
Moreover, the parties do not dispute that Sprint bears the burden of proving infringement and
that Cox bears the burden of proving noninfringement and invalidity. See, e.g., (D.I. 651 at 9–
11); see also Medtronic, Inc. v. Mirowski Family Ventures, LLC, 134 S. Ct. 843, 849 (2014)
(“[I]n a  declaratory judgment action, the burden of proving infringement should remain with
“The general rule favors the forum of the first-filed action[.]” Genentech, Inc. v. Eli Lilly & Co., 998 F.2d
931, 937 (Fed. Cir. 1993).
4. Sprint argues that, since it filed first in Kansas on these patents-in-suit and since it is
asserting patent infringement, the parties should be realigned so that Sprint is the plaintiff.
(D.I. 642 at 1–2) Also, Sprint proposes the following “order: (1) Sprint puts on its infringement
and damages case, (2) Cox rebuts Sprint’s presentation and puts on its invalidity case, and (3)
Sprint rebuts invalidity.” (Id. at 1)
5. Cox contends that Sprint sought to “gerrymander its Kansas pleadings in an attempt
to create an incomplete lawsuit that could be heard in Kansas[.]” (D.I. 651 at 4) Additionally,
Cox avers that the present action in Delaware was necessary to “determine the rights of all the
Cox plaintiffs[.]” (Id.) Cox offers that it “is willing to streamline the issues for the jury by
conceding at trial on the issue of infringement as to the [Call Control Patents.]” (Id. at 9) Cox
then explains that, as to the Broadband Patents, “Cox will retain the burden on any invalidity
issues that are tried, but, while Cox intends to contest infringement on the [Broadband Patents’]
claims, Cox does not propose to displace Sprint from presenting first on infringement for of the
[Broadband P]atents, because that is an issue on which Sprint carries the burden.” (Id. at 11)
Cox proposes the following order of proof at trial:
● Cox will present its case-in-chief, explaining the patents, their
technology, and the evidence on invalidity.
● Sprint will follow with its:
○ Response to Cox’s invalidity claims; and its
○ Case-in-chief on infringement and damages
● After Sprint presents its case, Cox will present its rebuttal case,
responding to Sprint’s infringement and damages evidence.
(Id. at 13)
6. Discussion. The court has discretion to realign the parties and to establish an order of
proof at trial. See, e.g., Plumtree Software, Inc. v. Datamize, LLC, No. C 02-5693 VRW, 2003
WL 25841157, at *3 (N.D. Cal. Oct. 6, 2003) (“Despite the fact that [the accused infringer] may
have created a substantial ancillary dispute by filing a declaratory judgment action, the court
must align the parties in keeping with the primary dispute concerning infringement”). The
“primary purpose” of this litigation is to resolve the question of patent infringement: Sprint is
the patent owner and Cox is the accused infringer. Id.; cf Angst v. Royal Maccabees Life Ins.
Co., 77 F.3d 701, 704 (3d Cir. 1996) (discussing the “primary purpose” test for aligning parties
based upon diversity jurisdiction). There are several reasons supporting this conclusion.
7. First, Sprint was first to file. There is no doubt that Cox filed its declaratory
judgment action in this court in response to Sprint’s earlier filing in Kansas. And this court has
determined that Sprint was first to file in Kansas (which would have warranted transfer to the
District of Kansas) but that, based upon Cox’s representations to this court and to the District of
Kansas at the time, the “exceptional circumstances” of the case at bar (the declaratory judgment
action) warranted keeping this action in Delaware. (D.I. 76 at ¶ 7 & n.4)
8. Second, circumstances have changed since Cox filed its declaratory judgment action.
For example, Cox had once alleged infringement of two patents by Sprint. (Id. at ¶ 2) But those
patents are no longer at issue, and Cox is in the sole role of an accused infringer. Moreover,
Cox’s subsequent representations to this court in unrelated matters have called its earlier
representations into question. See AT & T Intellectual Prop. I, L.P. v. Cox Commc’ns, Inc., No.
CV 14-1106-GMS, 2015 WL 4148239, at *1 (D. Del. July 9, 2015) (“When it suits Cox to
litigate in Delaware, it takes one position. Judges in this District [in the case at bar] and the
District of Kansas [in the litigation filed by Sprint against Cox] accepted Cox’s averments [and
decided accordingly]. When Cox would prefer to litigate elsewhere, it takes a different position.
This is, in the court’s view, bad faith.”).
9. Third, although this court was willing to find an exception to the first-to-file rule, that
does not preclude the court’s discretionary realignment of the parties to reflect Sprint’s role as
the plaintiff in the earlier-filed litigation in the District of Kansas on the same patents-in-suit.
Fourth, as it relates to the order of proof at trial, Sprint is the natural plaintiff. The
patents-in-suit present a number of complex technical issues for the jury. The Call Control
Patents and the Broadband Patents share a common specification that needs explanation,
including the relationship between the patent families.4 Cox’s proposed order of proof further
complicates things and is likely to confuse the jury.5 Therefore, the court adopts Sprint’s
proposal, which is better aligned with Sprint’s natural role as plaintiff in this litigation.
Conclusion.6 For the reasons discussed above, the order of proof at trial will be
Sprint presenting its infringement case first, and Cox presenting its defenses second.
Additionally, the parties shall be realigned to reflect that Sprint, as the patent-owner and firstfiler, is the true plaintiff in this case, while Cox is the true defendant. The clerk of court is
hereby directed to reflect these changes to the roles of the parties in the court’s electronic filing
s/ Joseph F. Bataillon
Senior United States District Judge
Cox has explained that it will no longer contest infringement of the Call Control Patents. (D.I. 651 at 9 &
n.3) This could lead to the conclusion that—at least with respect to the Call Control Patents, the only burden
(invalidity) lies with Cox, and therefore, Cox should go first with its case-in-chief on invalidity. See (Id. at 9–10); cf
Guidetech, Inc. v. Brilliant Instruments, Inc., No. C 09-5517 CW, 2014 WL 12643007, at *2 (N.D. Cal. Mar. 25,
2014). However, the Call Control Patents are the source of the common specification incorporated by reference into
the Broadband Patents. (see, e.g., D.I. 541 at 1 nn.1–2) And it is not apparent from the record that any of Cox’s
experts have offered testimony as to the fact that the Broadband Patents incorporate by reference the specification
common to the Call Control Patents. (D.I. 587, ex. 4 at 25:19–26:4 (expert testimony as to enablement); see also Id.
at 7–8 at ¶¶ 32–33; D.I. 608 at 3–4 (showing that Cox did not dispute these facts)) Therefore, Cox does not appear
to have the evidence to present to the jury “explaining the patents [and] their technology[.]” (D.I. 651 at 13)
The confusion appears to extend to the parties as well. For example, in its brief, Cox refers to “Sprint’s
noninfringement case[.]” (D.I. 651 at 12)
Accordingly, Cox’s request for oral argument on this matter, (D.I. 659), is hereby denied.
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