TQ Delta LLC v. ADTRAN Inc.

Filing 1366

MEMORANDUM OPINION. Signed by Judge Richard G. Andrews on 8/17/2021. (nms)

Case 1:14-cv-00954-RGA Document 1366 Filed 08/17/21 Page 1 of 6 PageID #: 81898

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

TQ DELTA, LLC,
Plaintiff;

v.

Civil Action No. 14-954-RGA

~TRAN, INC.,
Defendant.

MEMORANDUM OPINION
Biian E. Farnan, Michael J. Farnan, FARNAN LLP, Wilmington, DE; Peter J. McAndrews, Paul
W; McAndrews, RajendraA. Chiplunkar, Ashley M. Ratycz, MCANDREWS, HELD &
MALLOY, LTD., Chicago, IL; Sharon E. Roberg-Perez, David A. Prange, Benjamen Linden,
ROBINS KAPLAN LLP, Minneapolis, MN,
A~omeys for Plaintiff.
Kenneth L. Dorsney, Cortlan S. Hitch, MORRIS JAMES LLP, Wilmington, DE; Paul M. Sykes,
Benn C. Wilson, Jake M. Gipson, BRADLY ARANT BOULT CUMMINGS LLP, Birmingham,

Al

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Attorneys for Defendant.

August

0, 2021

Case 1:14-cv-00954-RGA Document 1366 Filed 08/17/21 Page 2 of 6 PageID #: 81899

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Before the Court is Defendant's Motion to Strike New Infringement Theories Based on

Alleged Standards Essentiality in Family 7. (D.I. 1276). I have considered the parties' briefing.
(ri.I. 1277, 1285, 1289).
I.

BACKGROUND

PlaintiffTQ Delta filed suit against Defendant ADTRAN, alleging infringement of
numerous U.S. Patents. (D.I. 1). The Court divided the case into separate trials based on the
patent families. (D.I. 369). This motion concerns the Family 7 Patents, U.S. Patent Nos.
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6,445,730 (''the '730 Patent"), 7,978,753 ("the '753 Patent"), 8,437,382 ("the '382 Patent"), and
8,611,404 ("the '404 Patent"). The Family 7 Patents relate to multicarrier transmission systems
wi~ low power mode or sleep mode and rapid-on capabilities.
Plaintiff's final infringement contentions were due on June 30, 2018 and fact discovery
cl6sed on October 30, 2018. (D.I. 369 at 5). Opening expert reports were due on September 23,
20;20, rebuttal expert reports were due on October 23, 2020, and reply expert reports were due on
Nqvember 6, 2020. (D.I. 1219). Expert discovery closed on December 22, 2020. (D.I. 1259).
; II.

LEGAL STANDARD

"Infringement contentions ... serve the purpose of providing notice to the Defendants of
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in:fpngement theories beyond the mere language of the patent claim." Intellectual Ventures I LLC
v. AT&T Mobility LLC, 2017 WL 658469, at *2 (D. Del. Feb. 14, 2017) (quoting Motion Games,
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LL'C v. Nintendo Co., ~015 WL 1774448, at *2 (E.D. Tex. Apr. 16, 2015)). In other words,
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"Plaintiff need not in its contentions actually prove its infringement case." WI-LAN Inc. v. Vizio,
Inc., 2018 WL 669730, at *1 (D. Del. Jan. 26, 2018). Infringement contentions are treated as

initial disclosures under Federal Rule of Civil Procedure 26(a). See United States District Court

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fat the District of Delaware, Default Standard for Discovery § 4; Intellectual Ventures I, 2017
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658469, at *1.
Under Federal Rule of Civil Procedure 37(c)(1 ), "If a party fails to provide information

... , as required by Rule 26(a) or (e), the party is not allowed to use that information ... to. supply
evidence on a motion, at a hearing, or at a trial, unless the failure was substantially justified or is
h~ess." Fed. R. Civ. P. 37(c)(l).
Courts in the Third Circuit consider the Pennypack factors to determine whether a failure
to '.disclose was harmless: "(1) the prejudice or surprise to the party against whom the evidence is
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of:fered; (2) the possibility of curing the prejudice; (3) the potential disruption of an orderly and
efficient trial; (4) the presence of bad faith or willfulness in failing to disclose the evidence; and
(5) the importance of the information withheld." TQ Delta, LLC v. ADTRAN, Inc., 2019 WL
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4346530, at *1 (D. Del. Sept. 12, 2019) (citing Konstantopoulos v. Westvaco Corp., 112 F.3d
710, 719 (3d Cir. 1997)). "[T]he exclusion of critical evidence is an 'extreme' sanction, not
normally to be imposed absent a showing of willful deception or 'flagrant disregard' of a court
order by the proponent of the evidence." Konstantopoulos, 112 F.3d at 719. The determination of
whether to exclude evidence is within the discretion of the district court. Id
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: III.

ANALYSIS
Defendant moves to strike Plaintiff's infringement theories based on standards

essentiality. (D.I. 1277 at 2). Defendant argues that Plaintiff set forth an infringement theory
based on standards essentiality for the first time in its opening expert report. (Id at 6). Defendant
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contends that Plaintiff's addition of "an alternative infringement theory in its opening expert
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report

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was a violation of the Court's Final Scheduling Order. (Id. at 9). Defendant maintains

that Plaintiffs arguments for why there was no violation of the Final Scheduling Order are

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in~ufficient because (1) Plaintiffs "own representations in open court establish that merely
mapping a DSL standard to an asserted claim does not disclose an essentiality theory;" and (2)
Plaintiff cannot "excuse its failure to disclose by asserting that ADTRAN bears the burden of
pr?of on essentiality." (Id. at 11).
Plaintiff counters that it did not disavow an infringement theory based on standards
essentiality. (D.I. 1285 at 11-16). Rather, Plaintiff argues that it was "well known that it was
relying on standards essentiality to prove infringement," as its "reliance on the DSL Standards to
prove infringement was disclosed at the earliest stages of the case in [its] initial infringement
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contentions[] and maintained through [its] final infringement contentions." (D.I. 1285 at 7, 14).
Plaintiff argues that its responses to Defendant's Interrogatory No. 12 made it clear that Plaintiff
w~s relying on standards essentiality to prove infringement. (Id. at 8).
The Final Scheduling Order provided that Plaintiffs final infringement contentions were
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due by June 30, 2018, and that "Plaintiff may seek leave to supplement its final infringement
co~tentions for good cause." (D.I. 369 at 5). Plaintiff timely filed its final infringement
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co:p.tentions. Plaintiff also timely supplemented its responses to Defendant's interrogatories. (D.I.
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454).
I agree with Plaintiff that its reliance on standards essentfality is not a new infringement
theory. Throughout the course of this litigation, Plaintiff has pursued an infringement theory
based on standards essentiality.
In its final infringement contentions and claim charts, Plaintiff stated how the Accused
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Pr0duct "operates in accordance with the ADSL2/2+ standard." (D.I. 1286-9, Exh. I at 3 of31
(claim charts for the '730 Patent)). Defendant's non-infringement contentions acknowledge this,
stating, "TQ Delta's infringement contentions are based on ADSL2." (D.I. 1286-12, Exh. Lat 2

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of7). Both Plaintiffs infringement contentions and Defendant's non-infringement contentions
indicate the parties' understanding that infringement based on standards essentiality was an
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infringement theory in this case.
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Further, Plaintiff supplemented its response to Interrogatory 12 and incorporated its
Clf1,im Charts that reflect how each element of the Asserted Claims relates to particular sections
of;DSL standards. (D.I. 1286-10, Exh. J at 8 of 31). This supplementation occurred on July 17,
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20:18, months prior to the closure of fact discovery. (Id. at 9 of 13). In its supplemental
interrogatory response, Plaintiff also included its "initial, conditional contentions regarding
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whether an asserted claim is standard-essential" in Appendix A. (Id. at 8 of 13). Appendix A
consists of a chart that maps out each Asserted Claim and denotes to which standards the claim is
essential. (Id. at 10-31 of 31 ). Within the chart, Plaintiff also states its contentions for standards
essentiality for each claim. (Id.). For instance, for Claim 1 of the '784 Patent, Plaintiff states, "As
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sh9wn in the TQ Delta claim charts, each element of the claim reads on a corresponding portion
of the ADSL2/2+ and VDSL2 standards, and therefore, TQ Delta preliminarily contends that
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claim 1 is essential to the standards identified in this essentiality table." (Id. at 10 of 31 ). While
PlAfntiff s arguments on a standards essentiality infringement theory were not completely fleshed
out, that was not necessary at this stage. Based on Plaintiffs final infringement contentions,
claim charts, and supplemented response to Interrogatory No. 12, it is clear that Plaintiff was
asserting that the Asserted Claims are standards essential. Therefore, Plaintiff did not raise this
infpngement theory for the first time in its opening expert reports, but rather, used the opening
expert reports to expand on this infringement theory, as it is entitled to do. See ROY-G-BIV Corp.

v. ABB, Ltd., 63 F. Supp. 3d 690, 699 (E.D. Tex. 2014).

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Defendant argues that Plaintiff has disavowed an infringement theory based on standards
es~entiality as Plaintiff repeatedly stated that Defendant bears the burden of proof on essentiality.
(D'.I. 1277 at 11-12). In its interrogatory response, Plaintiff does state, "It is ADTRAN's burden,
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however, to establish whether each element of a claim is standard-essential for purposes of any
FRAND obligation." (D.I. 1286-10, Exh. J at 8 of31). This statement, in addition to being an
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acc;.:urate statement of the law, does not negate Plaintiff's reliance on standards essentiality to
pr9ve infringement. Plaintiff has established, in both its infringement contentions and answers to
interrogatories, that it contends that the Asserted Claims are standard essential.
Therefore, I find that Plaintiff disclosed its infringement theories based on standards
es~entiality prior to its opening expert report, so its disclosure was not untimely. As Plaintiff's
disclosure was not untimely, I need not address the Pennypack factors. Defendant's motion to
sttj.ke is denied.
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: IV.

CONCLUSION
Defendant's Motion to Strike New Infringement Theories Based on Alleged Standards.

Essentiality in Family 7 (D.I. 1286) is denied.
A separate order will be entered.

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