Sprint Communications Company L.P. v. Comcast Cable Communications, LLC et al

Filing 655

MEMORANDUM AND ORDER overruling plaintiff's 558 Objections to the Magistrate Judge's Order of January 7, 2015. Signed by District Judge John W. Lungstrum on 03/17/2015. (mg)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF KANSAS
SPRINT COMMUNICATIONS
COMPANY L.P.,

)
)
)
Plaintiff,
)
)
v.
)
)
COMCAST CABLE COMMUNICATIONS
)
LLC, et al.,
)
)
Defendants.
)
_______________________________________)

Case No. 11-2684-JWL

MEMORANDUM AND ORDER
This patent infringement case comes before the Court on plaintiff’s objections
(Doc. # 558) to the order by which the Magistrate Judge denied plaintiff’s motion to
amend to add claims of willful infringement (Doc. # 545). For the reasons set forth
below, the objections are overruled.

I.

Background

Plaintiff’s original deadline for filing a motion to amend its complaint was May
17, 2013. That deadline was extended to June 17, 2013, to accommodate defendants’
service of discovery responses on June 12, 2013. In those responses, defendants stated
that as early as October 2005 they were aware of plaintiff’s litigation against Vonage,
which involved some of the same patents at issue here. Nevertheless, plaintiff did not
seek to amend before the deadline. In October 2013, plaintiff did seek leave to amend

to add willful infringement claims in two similar cases in this Court, but it did not do so
in this action.
In November 2013, defendants produced in discovery an e-mail from outside
counsel concerning the Vonage litigation. Defendants sought to claw back the e-mail as
privileged, and plaintiff moved to compel its production. In a July 2014 brief in
opposition to that motion, defendants acknowledged that they had retained that counsel
to review the Vonage litigation and to provide related legal advice. The Court did
compel production of the e-mail, and defendants produced a privilege log on October 15,
2014.
On November 25, 2014, plaintiff filed its motion to amend its complaint to add
claims of willful infringement with respect to six of the twelve patents at issue in the
case. Plaintiff argued that its motion was prompted by the production of the e-mail and
by the revelation from the privilege log that defendants had exchanged 260 e-mails with
their counsel concerning the Vonage suit.
By Order of January 7, 2015, the Magistrate Judge denied the motion to amend.
The Magistrate Judge concluded that plaintiff had not shown good cause pursuant to Fed.
R. Civ. P. 16(b)(4) for its delay in seeking the amendment and that plaintiff had unduly
delayed for purposes of Fed. R. Civ. P. 15(a), based on the notice to plaintiff in June
2013 that defendants had pre-suit knowledge of the Vonage case and these patents and
the notice in July 2014 that defendants had retained counsel to advise them concerning
that case. Plaintiff has timely objected to the Magistrate Judge’s ruling.
2

II.

Governing Standard of Review

With respect to a magistrate judge’s order relating to nondispositive pretrial
matters, the district court does not conduct a de novo review; rather, the court applies a
more deferential standard by which the moving party must show that the magistrate
judge’s order is “clearly erroneous or contrary to law.” See First Union Mortgage Corp.
v. Smith, 229 F.3d 992, 995 (10th Cir. 2000) (quoting Ocelot Oil Corp. v. Sparrow
Indus., 847 F.2d 1458, 1461-62 (10th Cir. 1988)); 28 U.S.C. § 636(b)(1)(A); Fed. R. Civ.
P. 72(a). The clearly erroneous standard “requires that the reviewing court affirm unless
it on the entire evidence is left with the definite and firm conviction that a mistake has
been committed.” See Ocelot Oil, 847 F.2d at 1464 (quoting United States v. United
States Gypsum Co., 333 U.S. 364, 395 (1948)).

III.

Analysis

Plaintiff’s motion to amend was based on its learning in October 2014 that
defendants had exchanged a large volume of e-mails with counsel concerning plaintiff’s
prosecution of some of these same patents in the Vonage case. That evidence, according
to plaintiff, supports an argument that defendants were concerned that their own products
infringed plaintiff’s patents, and thus supports claims of willful infringement. Plaintiff
argues that it reasonably believed that the mere fact of defendants’ pre-suit knowledge
of the patents (of which plaintiff had notice prior to the amendment deadline) was not
sufficient to support a meritorious claim of willful infringement.
3

For purposes of this motion, the Court is willing to accept (without ruling on)
plaintiff’s position that this issue should not necessarily turn on whether a claim of
willful infringement based solely on defendants’ pre-suit knowledge could have survived
a motion to dismiss, but that it is instead more important whether plaintiff has only
recently obtained evidence sufficient to support a reasonable claim on the merits.
Nevertheless, the Court concludes that plaintiff has not shown that its delay in filing its
motion to amend was based on the discovery of such evidence.
As noted above, plaintiff’s motion is based solely on evidence that defendants
retained counsel to advise them concerning the Vonage litigation. Defendants have
noted that evidence of the retention of counsel ordinarily could not be used to support
a claim of willful infringement, as the defendant would then inappropriately be forced
to choose between revealing privileged communications (the substance of the legal
advice concerning whether the defendant was infringing) and being subjected to an
adverse inference drawn by the trier of fact that it did receive a legal opinion that it was
infringing. See, e.g., Telcordia Technologies, Inc. v. Lucent Technologies, Inc., 2007
WL 7076662, at *5-6 (D. Del. Apr. 27, 2007) (citing cases) (plaintiff asserting willful
infringement could not introduce evidence of the defendant’s decision not to disclose
advice of counsel); see also Golden Blount, Inc. v. Robert H. Peterson Co., 438 F.3d
1354, 1368 (Fed. Cir. 2006) (quoted in Telcordia) (a plaintiff’s showing on willfulness
cannot be satisfied merely by proof that the defendant is withholding privileged advice
of counsel). In its briefs to this Court and to the Magistrate Judge, plaintiff has agreed
4

that the mere retention of counsel is not sufficient to support a willfulness claim.
Plaintiff argues that it does not rely on the mere retention of counsel by
defendants to support its proposed claims, but that it instead relies on the content of the
single e-mail and the volume of e-mails exchanged with counsel. Plaintiff received that
e-mail in November 2013, and as defendants noted in their brief to the Magistrate Judge,
plaintiff subsequently used that e-mail in discovery. Plaintiff has not explained why
defendants’ ultimately unsuccessful attempt to claw back that e-mail (which was ruled
not to contain privileged information) means that it should not be charged with notice
of its contents in November 2013. Moreover, the Court is not persuaded that the content
of that e-mail reveals anything more probative of willfulness than the fact that defendants
retained counsel to review the Vonage litigation—a fact that plaintiff was again told in
July 2014, and a fact that plaintiff concedes cannot support a willfulness claim.
Similarly, plaintiff cannot circumvent its inability to rely on defendants’ retention of
counsel by pointing to the sheer volume of privileged communications, as such evidence
would still create the impermissible choice for defendants between revealing privileged
communications and suffering the adverse inference that the advice was unfavorable.
Plaintiff has not cited any authority suggesting that the volume of communications with
counsel somehow removes the case from the general rule against relying on the retention
of counsel. Accordingly, the Court concludes that plaintiff cannot reasonably have
concluded that the discovery of a large volume of privileged communications in October
2014 made their proposed willfulness claim sufficiently meritorious to be asserted.
5

In light of that conclusion, the Court must further conclude that the Magistrate
Judge did not clearly err in ruling that plaintiff had no good reason for its delay in
seeking to amend, and the Court therefore overrules plaintiff’s objections.

IT IS THEREFORE ORDERED BY THE COURT THAT plaintiff’s objections
(Doc. # 558) to the Magistrate Judge’s Order of January 7, 2015, are hereby overruled.

IT IS SO ORDERED.

Dated this 17th day of March, 2015, in Kansas City, Kansas.
s/ John W. Lungstrum
______________________________
John W. Lungstrum
United States District Judge

6