United States District Court, D. New Jersey
As Corrected October 23, 2014.
For High Point SARL: Thomas P. Lihan, Esq., Robert D. Rhoad, Esq., DECHERT LLP, Princeton, NJ.
For T-Mobile USA, Inc.: Lisa J. Rodriguez, Esq., SCHNADER HARRISON SEGAL & LEWIS LLP, Cherry Hill, NJ.
For T-Mobile USA, Inc.: Marc S. Friedman, Esq., DENTONS U.S. LLP, New York, NY.
For Alcatel-Lucent USA, Inc.: Thomas R. Curtin, Esq., George C. Jones, Esq., GRAHAM CURTIN, PA, Morristown, NJ.
For Ericsson, Inc.: William L. Mentlik, Esq., Roy H. Wepner, Esq., Jonathan A. David, Esq., Jeffrey S. Dickey, Esq., Robert B. Hander, Esq., LERNER, DAVID, LITTENBERG, KRUMHOLZ & MENTLIK, LLP, Westfield, NJ.
For Nokia Solutions and Networks US, LLC: Allison Hoch Altersohn, Esq., Chandan Sarkar, Esq., Robert F. Perry, Esq., KING & SPALDING LLP, New York, NY.
For Nokia Solutions and Networks US, LLC: Liza M. Walsh, Esq., Katelyn O'Reilly, Esq., CONNELL FOLEY LLP, Roseland, NJ.
HONORABLE JOSEPH E. IRENAS Joseph E. Irenas Joseph E. Irenas, Senior United States District Judge.
IRENAS, Senior United States District Judge:
This is a patent infringement suit brought by Plaintiff High Point SARL, which currently owns the four patents-in-suit: the '090 patent, the '308 patent, the '347 patent, and the '091 patent. The patents disclose methods for designing and implementing cellular telephone network infrastructure equipment used in the receiving and transmitting of voice call traffic. Defendant T-Mobile bought the networking equipment at issue from at least three vendors: Intervenor-Defendants (1) Nokia Solutions and Networks US, LLC (" NSN" ), and (2) Ericsson, Inc.; as well as non-parties (3) Alcatel USA Marketing, Inc. and Alcatel-Lucent USA, Inc. (collectively " ALU" ).
Presently before the Court are two Motions for Summary Judgment on T-Mobile's affirmative defense of patent exhaustion filed by: (1) Ericsson; and (2) T-Mobile and NSN.
For the reasons stated herein, both motions will be granted in their entirety.
All four patents-in-suit were originally held by AT& T. In 1988, AT& T entered into a cross-licensing agreement with Siemens, whereby AT& T granted to Siemens nonexclusive and nontransferable licenses to " make, have made, use, lease, sell and import" the equipment embodying at least some of the patents-in-suit. (Lauridsen Decl. Ex. 22).
Several years later, in January, 1996, AT& T entered into another cross-license agreement, this time with Alcatel. (Lauridsen Decl. Ex. 38) The Alcatel agreement is substantially similar to the Siemens agreement; AT& T granted to
Alcatel nonexclusive and nontransferable licenses to " make, have made, use, lease, offer to sell, sell and import" the equipment embodying at least some of the patents-in-suit. (Id.)
Not long after the Alcatel agreement was signed, in March, 1996, AT& T spun-off Lucent and assigned to it at least some of the patents-in-suit. Thereafter, in November, 1996, Lucent entered into a cross-licensing agreement with LME that is also similar to the Siemens and Alcatel agreements. (David Decl. Ex. 6) Lucent granted LME nonexclusive and nontransferable licenses to " make, have made, use, lease, sell and import" the equipment embodying at least some of the patents-in-suit. (Id.)
Thus, by 1996 at the latest, it appears that AT& T / Lucent had granted licenses to sell equipment embodying all of the patents-in-suit.
Over the ensuing years, through various corporate combinations and sublicensing agreements which are discussed next, Ericsson, ALU, and NSN came to sell to T-Mobile the equipment practicing the methods of the patents-in-suit.
In 2013-- i.e., after this suit was filed, and after the patents had expired-- Ericsson's parent, LME, granted Ericsson a " nunc pro tunc" sublicense with an " effective date" of January 1, 2002. The single-page document (excluding signature pages) states in relevant part,
Effective, nunc pro tunc, as of [January 1, 2002], LME hereby grants to [Ericsson] . . . a worldwide, non-exclusive, paid-up, royalty-free sublicense to all of LME's rights relating to [the patents-in-suit] pursuant to . . . the Lucent Agreement.
(David Decl. Ex. 7)
" The Lucent Agreement" is the 1996 Cross-License Agreement between Lucent and LME. (Id.) It provides in relevant part,
(a) The licenses granted herein are licenses to (i) make, have made, use, lease, sell and import LICENSED PRODUCTS, and (ii) convey to any direct or indirect customer of the grantee, with respect to any LICENSED PRODUCT which is sold or leased by such grantee to such customer, rights to use, import, and resell such LICENSED PRODUCT as sold or leased by such grantee (whether or not as part of a larger combination); provided, however, that no rights may be conveyed to customers with respect to any invention which is directed to (1) a combination of such LICENSED PRODUCT (sold or leased) with any other product, (2) a method or process which is other than the inherent use of such LICENSED PRODUCT itself (as sold or leased); or (3) a method or process involving the use of a LICENSED PRODUCT to
manufacture (including associated testing) any other product.
(b) . . .
(c) The grant of each license hereunder includes the right to grant sublicenses within the scope of such license to a party's RELATED COMPANIES for so long as they remain its RELATED COMPANIES. Any such sublicense may be made effective retroactively but not prior to the effective date hereof, nor prior to the sublicensee's becoming a RELATED COMPANY of such party.
(David Decl. Ex. 6).
Alcatel-Lucent USA, Inc. (" ALU Inc." ) is a subsidiary of Alcatel-Lucent. Alcatel-Lucent was formed by the reverse triangular merger of Alcatel and Lucent in 2006.
It appears undisputed that prior to the merger, ALU Inc.'s predecessor in interest, Alcatel USA Marketing, Inc., a subsidiary of Alcatel, sold the networking equipment to T-Mobile pursuant to the AT& T-Alcatel cross-license agreement, which automatically extended sublicenses to then-existing Alcatel subsidiaries at the time the cross-license agreement was executed. (Lauridsen Ex. 38, 1.01(c)) (" The present respective [subsidiaries] of the parties are deemed sublicensed, effective as of the effective date of this Agreement." ).
After the 2006 merger, Alcatel USA Marketing continued to sell the networking equipment to T-Mobile just as it did prior to the merger.
Then, in 2008, Alcatel USA Marketing merged with another Alcatel-Lucent subsidiary to form ALU Inc. ALU Inc. sold the networking equipment to T-Mobile purportedly pursuant to the AT& T-Alcatel cross-license agreement which, in addition to automatically extending sublicenses to existing subsidiaries, automatically extends sublicenses to " future respective [subsidiaries] of the parties . . . effective as of the date on which any such company becomes a [subsidiary]." (Lauridsen Ex. 38, 1.01(c))
In March 2009, Siemens granted Nokia Siemens Networks B.V. " retroactively as of April 1, 2007, a sublicense within the scope of Siemens' own license under [its] License Agreement [with AT& T]" which is " subject to all applicable restrictions, exceptions, obligations, liabilities, termination provisions and other provisions in the License Agreement." (Lauridsen Decl. Ex. 28) According to T-Mobile and NSN, this sublicense was authorized under a 1995 letter amendment (also referred to as the " Divestment Rider" ) to the AT& T-Siemens cross-license agreement. (Lauridsen Decl. Ex. 24)
The next year, in 2010, Nokia Siemens Networks B.V. and NSN executed a " Confirmatory License Agreement" (Lauridsen Decl. Ex. 36) wherein, effective April 1, 2007, Nokia Siemens Networks B.V. granted NSN a sublicense ...