TC Technology LLC v. Sprint Corporation et al

Filing 437

MEMORANDUM ORDER: The Motion to Strike the supplemental opinions of Mr. Bates (D.I. 396 ) is DENIED, and the request to exclude Mr. Reed's Approach 2B damages opinion is GRANTED (D.I. 419 at 52). Signed by Judge Richard G. Andrews on 10/18/2019. (nms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

TC TECHNOLOGY LLC,
Plaintiff,
V.

Civil Action No. 1:16-cv-00153-RGA

SPRINT CORPORATION and SPRINT
SPECTRUM, L.P. ,
Defendants.

MEMORANDUM ORDER
Currently pending before the Court are Sprint's motion to strike the supplemental
opinions of Mr. Regis Bates (D.I. 396) and request to exclude a portion of Mr. Brett Reed's
damages opinion (D.I. 419 at 52). I have reviewed the parties' briefing and related papers and
heard oral argument. (D.I. 397, 405, 409, 419, 426, 428, 432).
I.

BACKGROUND
TC Tech filed this action on March 10, 2016, alleging that Sprint infringed U.S. Patent

No. 5,815,488 ("the '488 patent") with certain wireless services on its LTE network. (D.I. 1).
TC Tech asserts two independent method claims of the '488 patent.
Sprint moves to strike as improper the doctrine of equivalents opinions provided by TC
Tech' s expert Mr. Regis Bates in his April 26, 2019 supplemental expert report and in his June
21 , 2019 supplemental expert reply report. (D.I. 397 at 2). Sprint also requests that I exclude a
portion of the damages opinion by TC Tech's damages expert Mr. Brett Reed that relates to a 5%
royalty rate ("Approach 2B"). (D.I. 419 at 52).

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II.

MR. BATES'S SUPPLEMENTAL EXPERT OPINION
In its summary judgment briefing, Sprint advanced a construction of the "same carrier"

limitation, which I adopted in my April 15, 2019 Summary Judgment Opinion. (D.I. 258 at 2022; D.I. 354 at 13). I construed "'having the same carrier frequency for each remote location' to
mean the same carrier frequency is used by each and every ' remote location' that transmits data
to the ' central location."' (D.I. 354 at 13). I also granted Sprint's motion for summary
judgment of noninfringement under the doctrine of equivalents as related to the PUCCH. (Id. at
9-11 ).
In light of the new "same carrier" construction, on April 26, 2019, TC Tech served a
supplemental report of its expert Mr. Bates. (D.I. 373). This supplemental report contained
theories of both literal and nonliteral infringement under the doctrine of equivalents, which were
limited to the new "same carrier" construction. (D.I. 398, Ex. C at 9-13). At the pretrial
conference that same day, I allowed TC Tech to have served this report because of the new claim
construction and postponed the trial date to give Sprint time to respond. (D.I. 398, Ex.Bat 6874). Sprint served its rebuttal report on May 24, 2019, providing its expert' s opinions on
doctrine of equivalents. (D.I. 383 ; D.I. 398, Ex. D at 34-36).
Sprint asserts that my Summary Judgment Opinion prevents TC Tech from advancing a
theory of nonliteral infringement under the doctrine of equivalents. (D.I. 397 at 12; see D.I. 354
at 9-11). Specifically, Sprint claims that Mr. Bates' s April 26, 2019 and June 21, 2019
supplemental reports are improperly submitted as they "revive" doctrine of equivalents
arguments for which the Court had already granted summary judgment of noninfringement in
Sprint' s favor. (D.I. 397 at 12; see D.I. 398, Ex. A at 24-27, Ex.Cat 12-13). Sprint further
argues that my June 18, 2019 Daubert Opinion, which granted Sprint's motion to exclude Mr.
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Bates' s doctrine of equivalents opinions in his original reports, also excludes any doctrine of
equivalents theories proposed in his supplemental reports. (D.I. 397 at 12; D.I. 409 at 9; D.I.
428; see D.I. 393 at 18-20).
Sprint too broadly interprets my rulings. My Summary Judgment Opinion was limited
to "TC Tech' s doctrine of equivalents theory relating to the Physical Uplink Control Channel
('PUCCH') and the ' mutually exclusive' limitation." (D.I. 354 at 7). Similarly, my Daubert
Opinion was limited to Mr. Bates' s opinions in his original reports. (D.I. 393 at 18-20). But
the literal and nonliteral infringement opinions in Mr. Bates ' s supplemental reports address only
the new construction of "same carrier frequency" limitation, which was not covered in these
previous rulings. (S ee D.I. 398, Ex. A at 22-27, Ex.Cat 3, 9-13). Therefore, neither my
Summary Judgment opinion nor my Daubert opinion prevent Mr. Bates from advancing a
different doctrine of equivalents theory that considers only the new construction of the "same
carrier frequency limitation."
Sprint also ignores the fact that I allowed submission of Mr. Bates' s supplemental reports
at the April 26, 2019 pretrial conference because of the new "same carrier" claim construction.
(D.I. 398, Ex. Bat 68-71). I then continued the trial date to allow Sprint appropriate time to
respond, and later amended the Scheduling Order to reflect these changes. (D.I. 398, Ex.Bat
69-73 ; D.I. 384). Therefore, Sprint' s Motion to Strike the supplemental opinions of Mr. Bates
on the doctrine of equivalents is DENIED.

III. MR. REED'S DAMAGES OPINION
TC Tech' s damages expert, Mr. Brett Reed, took three separate approaches to estimating
a reasonable royalty. In my June 18, 2019 Daubert Opinion I granted Sprint' s motion to
exclude Mr. Reed' s testimony as to Approaches Two and Three. (D.I. 393 at 4). Sprint's
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motion appeared to be limited to the first subsection of Approach Two ("Approach 2A"), and I
likewise limited my Opinion. (D.I. 393 at 11 n.4; D.I. 261 at 15-18; see D.I. 262, Ex. A at 13234). Sprint now requests that I similarly exclude the second subsection of Approach Two
("Approach 2B"). (D.I. 419 at 52-57).
In Approach 2B, Mr. Reed "independently considered the more general 5% royalty rate,
which Sprint had internally considered reasonable for telecommunications patents, including the
VoIP patents, and determined how that figure would relate to Sprint' s LTE-related service
revenue." (D.I. 262, Ex. A at 135). Sprint argues that, like Mr. Reed' s Approach 2A, his
Approach 2B also does not "establish the required comparability between Sprint' s VoIP-related
demands and the hypothetical negotiation." (D.I. 419 at 55). I agree.
Mr. Reed' s Approach 2B is insufficient because it merely relies on the fact that Sprint' s

internal communications suggested "that it would negotiate for a 5% royalty rate for the VoIP
patents." (D.I. 262, Ex. A at 135). Reliance on a prior license requires "account[ing] for the
technological and economic differences between those licenses and the [claimed invention] ."
ResQNet.com., Inc. v. Lansa, Inc., 594 F.3d 860, 873 (Fed. Cir. 2010). But, here, Mr. Reed fails

to analyze the comparability between the VoIP patents and the patent-in-suit, and instead glazes
over the concept by grouping them together as "telecommunications patents." (See D.I. 262,
Ex. A at 135). Thus, without a showing of comparability, the VoIP damages assessment is
irrelevant.
Furthermore, because Mr. Reed' s Approach 2B relies on the VoIP patents, which are no
longer a part of this case, Approach 2B is not only irrelevant, but also would confuse the issues,
mislead the jury, and waste time. In granting TC Tech' s motion in limine to preclude Sprint
from retrying the VoIP litigations, I eliminated VoIP from this case, reserving judgment on this
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one issue. (D.I. 433 at 2). Since VoIP is no longer generally in the case, bringing in a VoIPrelated damages assessment would require background and create disputes about collateral
issues. Under Federal Rule of Evidence 402, irrelevant evidence is inadmissible. But even if
evidence of the VoIP-related damages assessment were relevant, it would be properly excluded
under Federal Rule of Evidence 403. This case is not about the VoIP patents or the prior VoIP
litigations and any evidence of such presented at trial will serve only to confuse the issues,
mislead the jury, and use up extremely limited trial time. Under Rule 403, the Court "may
exclude relevant evidence if its probative value is substantially outweighed by a danger of . . .
confusing the issues, misleading the jury," or "wasting time." Therefore, Sprint's request to
exclude Mr. Reed's damages opinion in Approach 2B is GRANTED.

IV. CONCLUSION
For the above reasons, Sprint's Motion to Strike the supplemental opinions of Mr. Bates
on the doctrine of equivalents is DENIED and Sprint' s request to exclude Mr. Reed's Approach
2B damages opinion is GRANTED.

IT IS SO ORDERED this /~ day of October 2019.

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