Alacritech Inc. v. CenturyLink, Inc.

Filing 887

ORDER ADOPTING REPORT AND RECOMMENDATIONS for 849 Report and Recommendations, 853 Report and Recommendations, 851 Report and Recommendations, 847 Report and Recommendations. ORDERED that Defendant Dells Motion for Partial Summary Judgm ent of Non- Infringement and in the Alternative a Motion to Strike Unsupported Opinions of Dr. Almeroth (Docket No. 630) is DENIED-AS-MOOT. ORDERED that Dells Motion for Partial Summary Judgment of No Willful Infringement and No Indirect Infringeme nt (Docket No. 604) is DENIED. Plaintiff Alacritechs Motion for Summary Judgment on Defendants License and Related Patent Exhaustion Defenses and Motion for Partial Summary Judgment that. Broadcom Products are Not Non-Infringing Alternatives (Docke t No. 606) is DENIED. ORDERED Intervenor Intels Motion for Summary Judgment of No Direct Infringement and Defendants Motion for Partial Summary Judgment of No Direct Infringement (Docket No. 610) is DENIED. ORDERED that Plaintiff Alacritechs Part ial Motion for Summary Judgment of No Invalidity in View of IPR Estoppel (Docket No. 607) is GRANTED-IN-PART as to the Thia/Tanenbaum combination and the Rütsche32/Stevens II combination. The remainder of this motion is DENIED-AS-MOOT. Signed by District Judge Robert W. Schroeder, III on 10/12/2023. (ch, )

Case 2:16-cv-00693-RWS-RSP Document 887 Filed 10/12/23 Page 1 of 6 PageID #: 59034

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
ALACRITECH, INC.,
Plaintiff,
v.
DELL INC.,
Defendant,
and
INTEL CORPORATION, et al.,
Intervenors.

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Case No. 2:16-cv-00693-RWS-RSP
(LEAD CASE)
Case No. 2:16-cv-00695-RWS-RSP
(MEMBER CASE)

ORDER
Before the Court are several motions for summary judgment filed by both parties:
(1) Defendant Dell’s Motion for Partial Summary Judgment of Non-Infringement and in the
Alternative a Motion to Strike Unsupported Opinions of Dr. Almeroth (Docket No. 630); 1
(2) Defendant Dell’s Motion for Partial Summary Judgment of No Willful Infringement and No
Indirect Infringement (Docket No. 604); (3) Plaintiff Alacritech’s Motion for Summary Judgment
on Dell’s and Cavium’s License and Related Patent Exhaustion Defenses and Motion for Partial
Summary Judgment that Broadcom Products are Not Non-Infringing Alternatives (Docket No.
606); (4) Intervenor Intel’s Motion For Summary Judgment of No Direct Infringement and

1

Unless noted otherwise, citations to the Docket reference the lead case, No. 2:16-cv-693. After
the Court files its deconsolidation order, all filings in the suit against Defendant Dell should be
filed in member case No. 2:16-cv-695.

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Defendants Cavium 2 and Dell’s Motion For Partial Summary Judgment of No Direct Infringement
(Docket No. 610); and (5) and Plaintiff Alacritech’s Partial Motion For Summary Judgment of No
Invalidity In View of IPR Estoppel (Docket No. 607).
Plaintiff filed suit against Dell on June 30, 2016. No. 2:16-cv-695, Docket No. 1. Plaintiff
alleged certain of Dell’s servers, storage devices, network adapters, network controllers, other
network interface devices, and converged products indirectly and directly infringed U.S. Patent
Nos. 7,124,205; 7,237,036; 7,337,241; 7,673,072; 7,945,699; 8,131,880; 8,805,948; and
9,055,104. Id. ¶¶ 4, 6, 28, The case was referred to United States Magistrate Judge Roy S. Payne
in accordance with 28 U.S.C. § 636, and proceeded through discovery and was then stayed pending
inter partes review (“IPR”) proceedings and subsequent appeals to the Federal Circuit. Docket
Nos. 451, 482. After the stay was lifted, only U.S. Patent Nos. 7,124,205 (the “ ’205 Patent”);
8,131,880 (the “ ’880 Patent”); and 8,805,948 (the “ ’948 Patent”) (collectively, “the Asserted
Patents”) remained. See, e.g., Docket No. 514 at 4. Trial is now imminent. See, e.g., Docket No.
599.
In anticipation of trial, the parties filed several motions for summary judgment. Docket
Nos. 604–607, 610, 611, 630. The Magistrate Judge issued reports and recommendations on each
of these motions on October 1 and 2, 2023. Docket Nos. 847–849, 851–853. The parties were
given until October 9, 2023 to object. See, e.g., Docket Nos. 847 at 11, 849 at 6, 851 at 12, 853 at
4. The parties objected to two of the Magistrate Judge’s reports. See Docket Nos. 872, 873. 3 No
objections to the remaining reports have been filed.

2

Cavium intervened in this suit (Docket No. 127) but has since settled with Plaintiff. See Docket
No. 806.
3

The parties’ objections will be addressed separately by the Court.

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Case 2:16-cv-00693-RWS-RSP Document 887 Filed 10/12/23 Page 3 of 6 PageID #: 59036

Because no objections have been received to these remaining reports (Docket Nos. 847,
849, 851, 853), the parties are barred from de novo review of the Magistrate Judge’s proposed
findings, conclusions and recommendations and, except upon grounds of plain error, from
appellate review of the unobjected-to factual findings and legal conclusions accepted and adopted
by the District Court. See Duarte v. City of Lewisville, Texas, 858 F.3d 348, 352 (5th Cir. 2017);
Arriaga v. Laxminarayan, Case No. 4:21-CV-00203- RAS, 2021 WL 3287683, at *1 (E.D. Tex.
July 31, 2021).
First, the Magistrate Judge recommends that Dell’s Motion for Partial Summary Judgment
of Non-Infringement and in the Alternative a Motion to Strike Unsupported Opinions of Dr.
Almeroth (Docket No. 630) should be denied-as-moot based on the parties’ agreement. Docket
No. 847 at 1. The Magistrate Judge did not err in making this recommendation. See Docket No. 858
at 227:16–20.
Second, the Magistrate Judge’s report recommends that Dell’s Motion for Partial Summary
Judgment of No Willful Infringement and No Indirect Infringement (Docket No. 604) be denied.
See Docket No. 847 at 1, 11. The report recommends that this motion should be denied because
Plaintiff proffered sufficient evidence to show a genuine dispute of material fact for Plaintiff’s presuit and post-suit allegations of indirect infringement for the Asserted Patents. See generally id. In
addition, the report finds that Plaintiff only alleged Dell willfully infringed the ’205 Patent and
that Plaintiff proffered evidence sufficient to show Dell’s pre- and post-suit willful infringement
as to that patent. Id. at 8, 10. Upon review of this report and the record, the Court finds no clear
error.
Third, the Magistrate Judge’s report recommends Plaintiff’s Motion for Summary
Judgment on Defendants’ License and Related Patent Exhaustion Defenses and Motion for Partial

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Summary Judgment that Broadcom Products are Not Non-Infringing Alternatives (Docket No.
606) should be denied. Docket No. 849. The parties’ surviving dispute centers on whether there is
a genuine dispute of material fact as to whether certain Broadcom products are non-infringing
alternatives. 4 See Docket No. 849 at 4–5; see also Docket Nos. 606 at 17–18, 646 at 16–18.
Defendants proffered evidence that supports their position that the Broadcom license was active
at the time of the hypothetical negotiations and that there were licensed Broadcom products being
sold at the time that were capable of supporting large receive offload (“LRO”). See Docket No.
646 at 8–12, 16–18. Accordingly, the report finds that a dispute of material fact is still present for
the availability of the Broadcom products as non-infringing alternatives. Docket No. 849 at 4–5.
The Court finds no clear error in the report’s analysis of the surviving dispute.
Fourth, the Magistrate Judge recommends that Intervenor Intel’s Motion for Summary
Judgment of No Direct Infringement and Defendants’ Motion for Partial Summary Judgment of
No Direct Infringement (Docket No. 610) should be denied. Docket No. 851. The report reviews
Plaintiff’s evidence in support of Dell and Intel’s direct infringement of claim 1 of the ’205 Patent
and claims 17 or 22 of the ’948 Patent to recommend that there is evidence sufficient to create a
genuine dispute of material fact as to whether Dell and Intel’s products directly infringe those
patents. 5 Id. at 6–11. The Court finds no clear error.
Finally, the Magistrate Judge recommends that Alacritech’s Partial Motion for Summary
Judgment of No Invalidity in View of IPR Estoppel (Docket No. 607) be granted with respect to

4

Although Plaintiff’s motion was originally broader in scope, the Magistrate Judge correctly
recommends that the other grounds be found moot due to settlements and stipulations. Docket No.
849 at 4.
5

Intel and Dell did not move for summary judgment of no direct infringement with respect to U.S.
Patent No. 8,131,880. Docket No. 610.

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the Thia/Tanenbaum combination and the Rütsche32/Stevens II combination but denied as to the
rest of the motion. Docket No. 853. Dell and Intel did not oppose Plaintiff’s motion with respect
to the Thia/Tanenbaum combination and the Rütsche32/Stevens II combination. See Docket Nos.
643, 709, 712. Accordingly, the report is correct to find Plaintiff’s motions should be granted as
to those references. See Docket No. 853. Dell and Intel also represented that they will not present
invalidity arguments based on the Intel Zero Copy and Connery systems. Docket No. 709 at 5.
Consistent with the Court’s order on Plaintiff’s second motion in limine (Docket No. 876 at 2), the
report is also correct that this motion is moot with regard to the Intel Zero Copy and Connery
systems because of Dell and Intel’s agreement not present Zero Copy and Connery as bases for
invalidity.
*

*

*

In conclusion, the Court has reviewed the pleadings in this case and the reports of the
Magistrate Judge. Upon such review, the Court has determined the reports are correct. See United
States v. Wilson, 864 F.2d 1219, 1221 (5th Cir. 1989), cert. denied, 492 U.S. 918 (1989) (where no
objections to a magistrate judge’s report are filed, the standard of review is “clearly erroneous,
abuse of discretion and contrary to law.”). Accordingly, it is
ORDERED that the reports of the Magistrate Judge (Docket Nos. 847, 849, 851, 853) are
ADOPTED as the opinion of the District Court. It is further
ORDERED that Defendant Dell’s Motion for Partial Summary Judgment of NonInfringement and in the Alternative a Motion to Strike Unsupported Opinions of Dr. Almeroth
(Docket No. 630) is DENIED-AS-MOOT. It is further
ORDERED that Dell’s Motion for Partial Summary Judgment of No Willful Infringement
and No Indirect Infringement (Docket No. 604) is DENIED. It is further

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Case 2:16-cv-00693-RWS-RSP Document 887 Filed 10/12/23 Page 6 of 6 PageID #: 59039

ORDERED that Plaintiff Alacritech’s Motion for Summary Judgment on Defendants’
License and Related Patent Exhaustion Defenses and Motion for Partial Summary Judgment that
Broadcom Products are Not Non-Infringing Alternatives (Docket No. 606) is DENIED. It is
further

. ORDERED Intervenor Intel’s Motion for Summary Judgment of No Direct Infringement
and Defendants’ Motion for Partial Summary Judgment of No Direct Infringement (Docket No.
610) is DENIED. It is further
ORDERED that Plaintiff Alacritech’s Partial Motion for Summary Judgment of No
Invalidity in View of IPR Estoppel (Docket No. 607) is GRANTED-IN-PART as to the
Thia/Tanenbaum combination and the Rütsche32/Stevens II combination. The remainder of this
motion is DENIED-AS-MOOT.
So ORDERED and SIGNED this 12th day of October, 2023.

____________________________________
ROBERT W. SCHROEDER III
UNITED STATES DISTRICT JUDGE

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