Genband US LLC v. Metaswitch Networks Ltd. (211 F. Supp. 3d 858, 2016)

United States District Court for the Eastern District of Texas 2016-09-29

Citations

Full opinion text

ORDER AND OPINION WITH FINDINGS OF FACT AND CONCLUSIONS OF LAW

RODNEY GILSTRAP, UNITED STATES DISTRICT JUDGE

On March 29, 2016, the Court held a bench trial and heard evidence in this patent infringement case. Before the Court are several equitable remedies and defenses raised by the Parties, in addition to open questions of law under 35 U.S.C. § 101.

The first set of issues before the Court relate to Genband’s request for a permanent injunction. As part of this request, Genband filed a Motion to Alter or Amend the Judgment to Include a Permanent Injunction (Dkt. No. 491.) In response, Meta-switch asserts the equitable defense of laches.

The second set of issues before the Court relate to equitable defenses raised by Metaswitch: the defense of laches (which Metaswitch contends bars Genband from receiving a permanent injunction and recovering pre-suit damages) and unen-forceability of several patents due to the equitable doctrines of implied waiver, equitable estoppel, and implied license.

The parties have submitted briefs, supporting documents, expert reports, and proposed findings of fact and conclusions of law. The Court, having considered the same, now makes and enters the following findings of fact and conclusions of law.

I.FINDINGS OF FACT (“FF”).. .865

A. The Parties... 865

B. The Lawsuit.. .866

1. The Patents.. .866

2. The Jury Trial.. .868

3. The Bench Trial... 868

C. Accused Metaswitch Products... 869

D. Genband’s Knowledge of Metaswitch and Its Products... 869

1. The Court finds that there was delay. . .869

2. The Court finds that the minimal amount of Metaswitch’s infringing activity and the circumstances surrounding Genband’s CVAS acquisition are sufficient to rebut any presumption or showing of unreasonable delay.. .871

E. Nortel’s History and Knowledge of Metaswitch’s Products... 872

1. The Court finds that the minimal amount of Metaswitch’s infringing activity and the circumstances surrounding Nortel’s bankruptcy are sufficient to rebut any presumption or showing of unreasonable delay.. .872

F. Prejudice to Metaswitch.. .874

1. Economic Prejudice... 874

2. Evidentiary Prejudice... 875

G. Nortel and Genband’s Involvement in CableLabs.. .877

1. Agreements between CableLabs and NNCSI...877

2. CableLabs IPR Agreement.. .878

3. Metaswitch’s “alter ego” theory.. .879

4. Metaswitch’s knowledge... 883

H. IETF... 884

I. Metaswitch does not have a license to any asserted claim under the IETF Statement because it failed to show that the asserted claims are essential to an IETF standard.. .885

2. Metaswitch does not have a license to any asserted claim under the IETF Statement because Metaswitch failed to show that Nortel contributed a document to the IETF describing the patented technology.. .886

3. Metaswitch does not have a license to any asserted claim under the IETF Statement because Metaswitch failed to show that its accused products comply with an IETF standard.. .887

4. Metaswitch does not have a license to any asserted claim under the IETF Statement because it failed to show that the asserted claims are essential to an IETF standard.. .888

5. Metaswitch does not have a license to any asserted claim under the IETF Statement because Metaswitch failed to show that Nortel contributed a document to the IETF describing the patented technology.. .889

6. Metaswitch does not have a license to any asserted claim under the IETF Statement because Metaswitch failed to show that its accused products comply with an IETF standard.. .890

I.ITU... 891

1. Metaswitch does not have a license to Claim 70 of the ’971 Patent under the ITU Declarations because it failed to show that Nortel contributed its patented technology to the relevant ITU Recommendations ...892

2. Metaswitch does not have a license to Claim 70 of the ’971 Patent under the ITU Declarations because it failed to prove that its accused products comply with the relevant ITU Recommendations ...892

3. Metaswitch does not have a license to Claim 70 of the ’971 Patent under the ITU Declarations because it failed to prove that the claim is essential to the relevant ITU Recommendations.. .893

II. CONCLUSIONS OF LAW (“CL”).. .893

A. Permanent Injunction: Availability...894

4. Legal Standard.. .894

5. Irreparable Harm.. .894

B. Defense of Laches.. .895

1. Legal Standard.. .895

2. Analysis.. .897

C. Equitable Defense: Implied Waiver. . .898

1. Applicable Law.. .898

2. The Court concludes that Metaswitch has not proven by clear and convincing evidence that implied waiver bars Gen-band’s damages... 898

D. Equitable Defense: Equitable Estop-pel. . .898

1. Applicable Law.. .898

2. The Court concludes that Metaswitch has not proven by clear and convincing evidence that equitable estoppel bars Genband’s damages... 899

E. Equitable Defense: Implied License ...900

1. Applicable Law.. .900

2. The Court concludes that Metaswitch has not proven by clear and convincing evidence that implied license bars Gen-band’s damages... 901

F. Patent Eligible Subject Matter under 35U.S.C. § 101...901

1. Legal Standard.. .901

2. ’561 Patent Asserted Claims are Patent Eligible... 903

3. ’658 Patent Asserted Claims are Patent Eligible... 903

I. FINDINGS OF FACT (“FF”)

A. The Parties

[FF1] Plaintiff Genband US LLC (“Genband”) is a Delaware corporation and a real time communications software company formed in 1999, having a principal place of business in Frisco, Texas. (Dkt. No. 12 at 1; PX4037 (“Bakewéll Op. Rpt.”) at ¶ 29.)

[FF2] Genband was founded in 1999 under the name General Bandwidth. Id. at ¶ 20. In 2001, General Bandwidth introduced its first product, the VG-100. In 2006, General Bandwidth was renamed Genband. Id. In December 2009, Genband submitted a bid for Nortel Networks Inc.’s (“Nortel”) Carrier VoIP and Application Solutions (“CVAS”) business, and Genband acquired the CVAS business on May 28, 2010. Id. at ¶ 23. Nortel’s CVAS business offered a variety of voice over packet products (ie., softswitches and media gateways), multimedia communication servers, application servers, IMS products, optical products, WAN switches and digital-based telephone switches. Id. at ¶ 24. As part of the CVAS business unit acquisition, Gen-band gained intellectual property assets, including five of the seven patents asserted in this litigation. Id. at ¶¶ 24-25.

[FF3] Defendant Metaswitch Networks Ltd (“Metaswitch Ltd”) is a privately held communications software company formed in 1981 with its principal place of business in the United Kingdom. (DX-230 at -63.)

[FF4] Metaswitch Networks Corp. (“Metaswitch Corp.”) is a wholly owned U.S. subsidiary of Metaswitch Ltd with its principal, place of business located in San Francisco, California. (Metaswitch Networks Ltd and Metaswitch Corp., collectively “Metaswitch”). (Dkt. No. 12 at ¶ 3-4; see also' DX-230 at -1608.) Metaswitch provides software solutions for voice and data communications for telecom equipment manufacturers. Metaswitch offers a line of softswitches, media gateways, application servers, and session border control products to telecommunication operators. Bakewell Op. Rep. at ¶¶ 43-44.

B. The Lawsuit

[FF5] On January 21, 2014, Genband filed the original complaint in this case. Dkt. No. 1. In this complaint, Genband alleged that certain Metaswitch products infringed U.S. Patent Nos. 6,772,210, 6,791,971, 6,885,658, 6,934,279, 7,995,589, 7,047,561, 7,184,427 and 7,990,984. Id.

1. The Patents

[FF6] Genband asserts seven patents: U.S. Patent Nos. 6,791,971 (“ ’971 Patent”); 6,885,658 (“’658 Patent”); 6,934,279 (“’279 Patent”); 7,047,561 (“’561 Patent”); 7,184,-427 (“ ’427 Patent”); 7,990,984 (“ ’984 Patent”); and 7,995,589 (“ ’589 Patent”) (collectively, the “patents-in-suit”).

[FF7] The ’971 Patent is entitled “Method and Apparatus for Providing a Communications Service, for Communication and for Extending Packet Network Functionality.” PX2. The application for the ’971 Patent was filed on December 1, 1999, and the ’971 Patent issued on September 14, 2004. Id. The inventors listed on the face of the ’971 Patent are Marwan Osman and Antoine Zoghbi. Id. Genband asserts Claims 70, 80, and 92 of the ’971 Patent.

[FF8] The ’561 Patent is entitled “Firewall for Real-Time Internet Applications.” PX5. The application for the ’561 Patent was filed on September 28, 2000, and the ’561 Patent issued on May 16, 2006. Id. The sole inventor listed on the face of the ’561 Patent is Michael C. G. Lee. Id. Genband asserts Claims 6, 17, and 20 of the ’561 Patent.

[FF9] The ’279 and ’589 Patents are both entitled “Controlling Voice Communications over a Data Network.” PX0004, PX0008. The ’589 Patent is a continuation of the ’279 Patent. PX0008. The application for the ’279 Patent was filed on March 13, 2000, and the ’279 Patent issued on August 23, 2005. PX0004. The application for the ’589 Patent was filed on August 23, 2005, and the ’589 Patent issued on August 9, 2011. PX0008. The inventors listed on the face of the ’279 and ’589 Patents are Patrick N. Sollee, David R. Creech, Gregory T. Osterhout, and Christopher L. Jes-sen. PX0004, PX0008. Genband asserts Claim 25 of the ’279 Patent and Claim 15 of the ’589 Patent.

[FF10] The ’427 and ’984 Patents are both entitled “System and Method for Communicating Telecommunication Information from a Broadband Network to a Telecommunication Network.” PX0006, PX0007. The application for the ’427 Patent was filed on November 28, 2000, and the ’427 Patent issued on February 27, 2007. PX0006. The application for the ’984 Patent was filed on February 27, 2007 and issued on August 2, 2011. PX0007. The inventors listed on the face of the ’427 and ’984 Patents are A. J. Paul Carew and Brendon W. Mills. PX0006, PX0007. Gen-band asserts Claim 1 of the ’427 Patent and Claim 1 of the ’984 Patent.

[FF11] The ’658 Patent is entitled “Method and Apparatus for Interworking Between Internet Protocol (IP) Telephony Protocols.” PX0003. The application' for the ’658 Patent was filed on February 18, 2000, and the ’658 Patent issued on April 26, 2005. PX0003. The inventors listed on the face of the ’658 Patent are David P. Ress, Xuewen Li, Denise J. Ingram, and Gregory Robert Utas. PX0003. Genband asserts Claims 1 and 11 of the ’658 Patent.

[FF12] The ’658 Patent claims are directed towards the practice of protocol interworking through the use of an abstraction or “interworking protocol.” (May 8, 2015 Expert Report of E. Burger, ¶ 130.) The ’658 Patent involves mapping the information contained in an incoming signal of an inbound signaling protocol into a messages of an intermediary protocol, which the ’658 Patent calls an “agent inter-working protocol.” (Id.) From there, the information, which is now represented in the format of the interworking protocol, can be mapped to any other protocol so that the information may be transmitted in an outgoing message of a desired outbound signaling protocol. (Id.)

[FF13] Claims 1 and 11 of the ’658 Patent, which Genband asserts, recite a call server and method:

1. A call server comprising:

(a) a fist protocol agent for communicating with a first internet protocol (IP) telephony device according to a first IP telephony protocol;

(b) a second protocol agent for communicating with a second IP telephony device according to a second IP telephony protocol; and

(c) an interworking agent for providing functions usable by the first and second protocol agents to communicate with each other according to a third protocol, the functions provided by the third protocol being a superset of functions provided by the first and second IP telephony protocols, said interworking agent further adapted to determine that a first parameter associated with the first IP telephony protocol does not map to the second IP telephony protocol and communicating first parameter to the second protocol agent without alteration.

11. A method for interworking devices that communicate using different internet protocol (IP) telephony protocols, the method comprising:

(a) receiving, from a first telephony device, a first message formatted according to a first IP telephony protocol;

(b) in response to receiving the first message, generating a second message, formatted according to a second protocol, said second protocol being distinct from said first protocol, the second message including at least one of a media capabilities description and media stream management information derived from the first message;

(c) transmitting the second message to a second protocol agent; and

(d) in response to receiving the second message, generating a third message formatted according to a third IP telephony protocol, the third message including at least one of the media capabilities' description and media stream management information derived from the second message.

(DX-005, ’658 Patent at Claim 1, Claim 11.)

[FF14] Genband acquired the rights to enforce the patents at different times.

[FF15] Genband owned the ’984 and ’589 Patents at the time they issued in August 2011. PX7 and PX8. Thus, Gen-band first obtained rights to enforce these patents approximately three years before the filing of this lawsuit.

[FF16] Genband acquired rights to enforce the ’561, ’658, ’971, and the ’279 Patents in May 2010. See PX34. Thus, Genband first obtained rights to enforce the ’561, ’658, ’971, and ’279 Patents approximately four years before the filing of this lawsuit.

[FF17] Genband owned the ’427 Patent at the time it issued on February 27, 2007. PX6. Thus, Genband first obtained rights to enforce the ’427 Patent approximately seven years before the filing this lawsuit.

2. The Jury Trial

[FF18] During January 11-15, 2016, the Court held a jury trial on Genband’s infringement claims. The Jury also heard Metaswitch’s patent defenses, which included non-infringement, invalidity, and arguments that it was entitled to a license to certain patents on royalty-free terms. The patent claims at issue at the jury trial were:

• ’971 Patent: Claims 70, 80, and 92

• ’658 Patent: Claims 1 and 11

• ’279 Patent: Claim 25

• ’589 Patent: Claim 15

• ’561 Patent: Claims 6,17, and 20

• ’427 Patent: Claim 1

• ’984 Patent: Claim 1

(Dkt. No. 465.)

[FF19] On January 15, 2016, the Jury found that Metaswitch infringes all asserted claims of Genband’s seven patents and that those claims are valid. (Dkt. No. 465, “Jury Verdict”). The Jury awarded $8,168,400 in damages. (Id.)

[FF20] On January 26, 2016, the Court entered a Final Judgment in accordance with the jury verdict. (Dkt. No. 480, “January 26, 2016 Final Judgment.”)

[FF21] On February 5, 2016, the Court set aside the January 26, 2016 Final Judgment pending a final determination of Me-taswitch’s equitable defense to Genband’s patent infringement claims, noting that those equitable issues would be heard in a subsequent bench trial, and that after the bench trial, the Court would re-enter judgment in light of both the jury’s verdict and the bench trial. (Dkt. No. 492.)

3. The Bench Trial

[FF22] On March 28, 2016, the day before the bench trial, the Parties filed a joint notice of stipulations for the bench trial. (Dkt. No. 538.) As part of the stipulation, the parties agreed to waive objections to the admission of any exhibit identified on a bench trial exhibit list that was “pre-admitted” in the jury trial in this case. (Id.) The parties further agreed to waive any hearsay objection to expert reports that were timely served in this case. (Id.) The parties therefore agreed that such expert reports are admissible as evidence in the bench trial and agreed not to call any expert witnesses live during the bench trial. (Id.)

[FF23] On March 29, 2016, the Court held a bench trial on Genband’s claim for a permanent injunction, Metaswitch’s equitable defenses (including laches, implied waiver, equitable estoppel, and implied license), and Metaswitch’s defense of invalidity of the ’561 and ’658 Patents under 35 U.S.C. § 101. (Dkt. No. 543.)

[FF24] During the bench trial, the Court also took under advisement Gen-band’s motion to alter or amend the judgment to include a permanent injunction (Dkt. Ño. 491). The Court also took under advisement Genband’s objections to testimony Metaswitch submitted relating to the permanent injunction and equitable defenses, i.e.: the declaration of Lance E. Gunderson (Dkt. No. 510), the declaration of Alastair Mitchell (Dkt. No. 511), and the declarations of Jennifer Kash (Dkt. No. 545).

[FF25] Pursuant to the Court’s order, the parties filed post-bench-trial briefs on April 12, 2016. (Dkt. Nos. 552, 553.)

C. Accused Metaswitch Products

[FF26] Genband accuses Metaswitch of infringing the following patent claims via these Metaswitch products:

• ’561 Patent Claims 6,17, and 20:

• Perimeta Session Border Controller (Dkt. No. 470, 1/12/2016 P.M. Trial Tr. at 29:20-30:16; 38:14-16; 44:15-24);

• ’971 Patent Claims 70, 80, and 92:

• Call Feature Server (id. at 98:24-99:8; 104:23-105:24; 108:25-109:15),

• Integrated Softswitches VP2510, YP3500, YP3510, VP6010, and VP6050 (id. at 98:24-99:8; 104:23-105:24; 108:25-109:15),

• Service Broker (id. at 98:24-99:8; 108:25-109:15);

• ’279 Patent Claim 25 and ’589 Patent Claim 15:

• MTAS platform with Accession Software supporting Call Jump (id. at 122:16-19; 124:3-8),

• MTAS platform with Coupporting Click to Dial (id. at 128:1-19; 130:15-18);

• ’658 Patent Claims 1 and 11:

• Call Feature Server (id. at 138:25-139:15; 149:20-24; 157:12-158:20),

• Integrated Softswitches YP2510, VP3500, VP3510, VP6010, and VP6050 (id.);

• ’984 Patent Claim 1 and ’427 Patent Claim 1:

• Universal Media Gateways MG2510, MG3500, MG3510, MG6010, and MG6050 (id. at 166:10-167:2; 181:1-4; 187:17-188:7),

• Integrated Softswitches VP2510, VP3500, VP3510, VP6010, and VP6050 (id.).

[FF27] Mr. John Lazar testified on behalf of Metaswiteh that Perimeta was not available before July 2011. (Dkt. No. 472, 1/13/2016 P.M. Trial Tr. at 205:3-6; PX167.)

D. Genband’s Knowledge of Metaswitch and Its Products

1. The Court finds that there was delay

[FF28] As early as 2001, Genband was aware of Metaswitch. The parties participated in an interoperability consortium called Open VoB. (Dkt. No. 502-4 ¶ 9.) Former Genband CEO Charlie Vogt, who ran the company for eight and half years up to 2013, knew Metaswitch’s product offerings and had a general sense of the functionalities included in Metaswitch products. (Dkt. 503-4 at 37-38, 118-19.) Vogt joined Genband in July 2004. (Id. at 37.) He was aware of Metaswitch prior to joining Genband. (Id.)

[FF29] Genband contends that, while Genband was aware of Metaswitch prior to filing its complaint, Genband was not aware that Metaswitch’s products infringed its patents until just prior to filing its original complaint. (Dkt. No. 503-2, “Jar-zemsky Tr.,” at 129:4-7.)

[FF30] However, the Genband marketing department monitored Metaswitch press releases regarding new Metaswitch products. (Dkt. No. 503-2.) Upon learning of a new product, the marketing department would conduct a competitive analysis that involved “comparing Genband products to Metaswitch products.” (Id.)

[FF31] Accordingly, Metaswitch contends that Genband has known about the accused products, as well as the “features and services claimed by the Metaswitch products,” in this case since at least as early as the first date that those products were announced by Metaswitch. (Dkt. No. 503-2.)

[FF32] The Court finds that such knowledge by the marketing department is sufficient to show that Genband knew of these accused products.

[FF33] The accused products were publicly disclosed at least as early as the below dates. (Dkt. No. 502-4, “Mitchell Feb. 24, 2016 Decl.”)

[FF34] The following features were publicly disclosed at least as early as the dates described below. (Dkt. No. 502-4.)

[FF35] Genband produced internal documents dating back to 2007 analyzing Me-taswitch’s products. (Dkt. No. 503 Exs. 5-9.)

[FF36] Genband’s engineers believed “most of the people in the space,” including Metaswitch, were infringing Genband patents. (Dkt. No. 503^1 at 113-14.) However, Genband did not sue Metaswitch or others companies that its engineers believed to be infringing. (Id. at 120-21.) Genband’s former CEO believed it was best to use patents “as a way of defending ourselves” unless “we were being eliminated in our ability to fairly compete in the market.” (Id. at 122:4-24.) Genband’s current CEO, David Walsh, testified that he personally believed Metaswitch was potentially infringing in February 2011. (Dkt. No. 503-10 at 141-44.)

2. The Court finds that the minimal amount of Metaswitch’s infringing activity and the circumstances surrounding Genband’s CVAS acquisition are sufficient to rebut any presumption or showing of unreasonable delay.

[FF37] Before Genband acquired CVAS in 2010, the only asserted patent owned by Genband was the ’427 Patent. See [FF14]-[FF17],

[FF38] It is reasonable that Genband was not aware of and did not investigate any possible infringement by Metaswitch of the ’427 Patent because the two companies were not major competitors and any infringement by Metaswiteh was minimal. Before Genband acquired CVAS in 2010, Mr. Lazar testified that Genband and Me-taswitch had a friendly relationship:

Q. And could you tell us what the relationship was between Metaswitch and Genband during the early to mid 2000s?

A. We’d run into them sometimes. The relationship was reasonably friendly.

Q. Did that change at some point in time?

A. Yeah. I mean, I think during the—the mid 2000s, I knew the chief executive, Charlie Vogt, reasonably well. We—we would talk to each other a couple of times a year. I would say it began to change after the CVAS acquisition.

Q. And when you say “after the CVAS acquisition,” what do you mean?

A. I think it began to get a—it began to get much, much more competitive.

Q. Because—and that’s because Gen-band acquired the CVAS unit?

A. I don’t know if it’s directly linked to that, but I think so.

1.13.16 p.m. Trial Tr. at 168:2-18. He testified that Genband and CVAS became “fierce competitors” in 2013 or 2014:

Q. ... and I think that the quotation from your deposition was that—the fact that Genband and Metaswitch were fierce competitors.

A. Yeah. I think as of 2013, 2014, that would be true.

Q. Prior to 2013 or 2014, did you view them as a fierce competitor?

A. Less so.

1.13.16 p.m. Trial Tr. at 168:25-169:6.

[FF39] After Genband acquired CVAS, it is reasonable that Genband was not aware of and did not investigate any possible infringement by Metaswitch because (1) Genband was pre-occupied with absorbing the newly acquired company; (2) as a much larger company with a broader product portfolio, Genband did not view Meta-switch as a major competitor; and (3) Me-taswitch’s infringing activity was minimal.

[FF40] Mr. McCready, Genband’s Executive Vice President, testified that the magnitude of the Nortel acquisition was significant:

Q And how—how did Genband’s business change, if at all, when it acquired CVAS?

A Well, it changed dramatically. You know, the company had effectively one main product line.

Now, it had a broad portfolio of products. The number of employees increased by a factor of, I think, four or five times, so did the revenue. Primarily, sales had been to these large integrators in the United States.

Now, Genband had hundreds of companies—pardon me—hundreds of customers that it was servicing directly, and around the world, it became a global company in that step. It was truly transformational.

(3/29/2016 Bench Trial Tr., Dkt. No. 542, at 73:12-23.)

[FF41] Genband’s former CEO Mr. Vogt testified that, as of 2008, Genband did not consider Metaswitch one of the two competitors for the SBC market. (3/29/2016 Bench Trial Tr., Dkt. No. 542, at 206:24-207:2.)

E. Nortel’s History and Knowledge of Metaswitch’s Products

1. The Court finds that the minimal amount of Metaswitch’s infringing activity and the circumstances surrounding Nortel’s bankruptcy are sufficient to rebut any presumption or showing of unreasonable delay.

[FF42] To the extent that Nortel had or should have had knowledge of Meta-switch’s infringement, Genband has rebutted the presumption that any delay in filing suit was unreasonable. The Court finds that the minimal amount of Metaswitch’s infringing activity and Nortel’s bankruptcy are sufficient to put the existence of any presumed delay into genuine dispute.

[FF43] In 2000, Nortel held a leading position in optical systems and the Internet and communications field. Bakewell Op. Rpt. at ¶ 35. When Nortel owned the ’561, ’658, ’971, ’279, and ’589 Patents, Metaswitch was small, and Nortel did not view Metaswitch as a major competitor. It is reasonable that Nortel was not aware of and did not investigate any possible infringement by Metaswitch.

[FF44] Nortel has known about Meta-switch and its products since at least 2002. In 2002, Metaswitch and Nortel discussed a possible merger, and Metaswitch sent documents under a non-disclosure agreement to Nortel describing Metaswitch’s products in depth. (Dkt. No. 505 ¶¶ 4—9; DX-547.) Following these communications, and beginning in early 2003, representatives of Nortel conducted an in-depth and “complete evaluation” of at least Meta-switch’s accused VP3500 and YP3510 products for the purpose of determining whether to acquire Metaswitch. See (Dkt. No. 503-2 at 30-33; Dkt. 505.) Nortel sent employees to Metaswitch’s facilities in the United Kingdom to learn more about Me-taswitch’s products. (Dkt. No. 503-2 at 202-03.) Metaswitch provided Nortel with a demonstration of its hardware. (Id. at 203; Dkt. No. 505.) Nortel was “very impressed with the thoroughness of the Me-taswitch team.” (Dkt. No. 503-2 at 192.)

[FF45] Nortel negotiated for a potential license to Metaswitch technology in 2002-2006, including Metaswitch’s VP3XXX, which would include the softswitches Gen-band accused of infringement in this case. (Dkt. No. 505 ¶¶ 4-28; Dkt. No. 505-19; Dkt. No. 505-28.)

[FF46] Even as late as 2006, Meta-switch was a small player in terms of worldwide market share, non-Class 5 applications, and media gateways. PX-399.0003. Although Metaswitch had gained some market share in one market space (North America Class 5 Softswitch market), its market share was still insignificant compared to Nortel. PX-399.0002.

[FF47] In 2006, Metaswitch itself recognized that it was a small player in the market, that Nortel did not view it as a threat, and that Nortel was not aware of its possible patent infringement. In a April 12, 2006 email, Lancelot Robson, a Meta-switch engineer, stated:

I wonder how long before Nortel considers Data Connection to be a threat and lets the lawyers loose on us?

PX-399.0002; (3/29/2016 Bench Trial Tr., Dkt. No. 542, at 151-52). Dave Reekie, who was responsible for the engineering department at the time, commented, “[T]here probably isn’t a whole lot we can do differently right now anyway!” PX-399.0001; (3/29/2016 Bench Trial Tr., Dkt. No. 542, at 152-53).

[FF48] Nevertheless, it is reasonable that Nortel was not aware of and did not investigate any possible infringement by Metaswitch, because between 2004 and 2010, Nortel was facing significant economic challenges that ultimately resulted' in its bankruptcy. By 2004, Nortel was facing significant challenges in its business. As a result, it reduced its workforce. Those reductions totaled 5,750 employees by-mid 2005. Bakewell Op. Report at ¶ 37. In February 2008, Nortel announced plans to reduce their workforce by an additional 2,100 positions. Id. In January 2009, the Board voted to declare bankruptcy. Nortel filed for bankruptcy in Canada, the U.S. and the United Kingdom. Id. at ¶ 37. Once in bankruptcy, Nortel could not file a lawsuit without approval from the bankruptcy court. In April 2009, Nortel determined that it could not feasibly re-emerge from bankruptcy and decided to sell its business units. In the years that followed, Nortel divested itself of its operations. Id. In December 2009, Genband acquired the CVAS business unit of Nortel. By the end of 2011, most substantial Nortel assets had been sold to other entities and the corporation was split into regional entities to continue final wind down procedures. Id. at ¶ 37.

[FF49] In December 2009, Genband entered into a “Stalking Horse Agreement” with Nortel to purchase substantially all the assets of Nortel’s CVAS business, including the ’971, ’658, ’279, ’589 and ’561 Patents, the “Additional Transferred Patents.” (DX-240, DX-314.)

F. Prejudice to Metaswitch

1. Economic Prejudice

[FF50] Metaswitch cannot show that it would have avoided any increased expenditure in making and selling the accused products if Genband had brought suit earlier. Metaswitch has not identified any specific evidence of economic prejudice.

[FF51] Metaswitch would not have changed its conduct if Genband had sued sooner. Even in this case, Metaswitch did change its conduct or take any action to change the design of its products after Genband filed suit in 2014. Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357, 1375 (Fed.Cir.2010) (finding no economic prejudice where the accused infringer failed to show increased expenditures in making and selling its accused product that would' have been avoid if the patentee filed suit earlier, and the accused infringer’s reliance on a non-infringement opinion of counsel showed that it would not have changed its conduct if the patentee filed suit earlier, therefore affirming denial of accused infringer’s JMOL motion that laches applied).

[FF52] Genband served a Rule 30(b)(6) notice of deposition to Metaswitch. Topic No. 42 of that notice reads:

42. Any discussed, considered, planned, potential, or implemented design-around or non-infringing alternative to any claim of the Asserted Patents, including the availability, acceptability, and costs associated with each design-around or non-infringing alternative.

Genband US LLC’s Notice of Deposition to Metaswitch Networks Ltd And Meta-switch Networks Corp. at 12. Metaswitch’s 30(b)(6) corporate designees for this topic testified consistently that Metaswitch had no plan to design around any of the asserted patents.

[FF53] Alastair Mitchell is Metaswitch’s senior vice president of business and consumer solutions. (1/13/2016 P.M. Trial Tr. (Mitchell), Dkt. No. 472, at 175:8-15.) He is “responsible for overseeing research and development of engineering for several of our products” and “overseeing] also the product management teams for those same products.” (1/13/2016 P.M. Trial Tr. (Mitchell), Dkt. No. 472, at 175:18-24.) At the bench trial, Genband presented deposition testimony from Mr. Mitchell that he was not aware of any plans by Metaswitch to change the accused functionality in response to this litigation:

QUESTION: Do you know if Meta-switch has made any efforts to change the accused functionality in response to Genband filing this lawsuit?

ANSWER: I don’t know.

QUESTION: So, in other words, you’re not aware of any efforts by Metaswitch to change its—the accused functionality since Genband brought this lawsuit?

ANSWER: I’m not aware of any efforts, correct.

(3/29/2016 Bench Trial Tr., Dkt. No. 542, at 158.) In opposing Genband’s request for an injunction, Mr. Mitchell submitted a Declaration admitting that Metaswitch did not begin working on any design-around until after the jury verdict: “Metaswitch has worked to implement design around in the accused product lines since the jury verdict in this case.” (Dkt. No. 502-4 at 46.)

[FF54] Duncan Archer is Metaswitch’s Director of Product Architecture. (3/29/2016 Bench Trial Tr., Dkt. No. 542, at 155.) At the bench trial, Genband presented deposition testimony from Mr. Archer that he was not aware of any plans by Metaswitch to change the design of the Universal Media Gateway in response to this litigation:

Q. Does Metaswitch have any plans to change the design of the universal media gateway in response to this litigation?

A. I’m not currently aware of any such plans.

(3/29/2016 Bench Trial Tr., Dkt. No. 542, at 155.)

[FF55] Oliver Carter has been with Me-taswitch for fifteen years and is currently the senior product manager for the Per-imeta product. (3/29/2016 Bench Trial Tr., Dkt. No. 542, at 156.) Mr. Carter testified as Metaswitch’s 30(b)(6) witness on several technical topics relating to the Perimeta product, including Topic No. 42. At his 2015 deposition, he testified that Meta-switch had not taken any action to design around any of the asserted patents, that Metaswitch did not have any plan to design around, and that Metaswitch had not even identified ways to design around:

Q. Does Metaswitch have any plans to take any action to design around any of the patents involved in this lawsuit?

A. Not at this point, no.

Q. Has Metaswitch identified any ways to design around the patents involved in this lawsuit?

A. Not at this point, no.

(3/29/2016 Bench Trial Tr., Dkt. No. 542, at 156.)

[FF56] Jon Rowland is Metaswitch’s Director of Engineering. Mr. Rowland was Metaswitch’s 30(b)(6) witness on various technical topics for the call feature server and MTAS, including Topic No. 42 for the Call Feature Server. At his deposition, which Genband presented at the bench trial, he testified that Metaswitch had not considered changing the design of the Call Feature Server to design around the patents asserted in this lawsuit:

QUESTION: Has Metaswitch considered changing the design of the call feature server in order to design around the patents asserted in this lawsuit?

ANSWER: No.

(3/29/2016 Bench Trial Tr., Dkt. No. 542, at 156.)

2. Evidentiary Prejudice

[FF57] Metaswitch has not established any evidentiary prejudice. Metaswitch has not detailed what specific evidence it was unable to obtain that it could have obtained had the lawsuit been filed earlier. Again, Metaswitch has only proffered con-clusory statements of evidentiary prejudice, and these are insufficient.

a) Inventor testimony

[FF58] Metaswitch alleges that some inventors failed to recall the events surrounding their alleged invention. Meta-switch FOF, Dkt. No. 356 at ¶ 34.

[FF59] For the ’561, ’658, ’971, ’279, and ’589 Patents, Genband did not rely on any conception or reduction to practice to establish an earlier date of invention before the filing date of those patents. So, there can be no prejudice. Moreover, as to the ’279 and ’589 Patents, Metaswitch deposed only two of the four named inventors. It is unlikely that any inventors would have recalled more information if they had been deposed earlier in time.

[FF60] The earliest possible date Gen-band could have asserted the ’561, ’658,-'971, and ’279 Patents was after Genband acquired these patents in May 2010. See PX34. Genband filed this action on January 21, 2014. (Dkt. No. 1.) Even if these patents were asserted in May 2010, there is no evidence in the factual record that these inventors could have recalled ten-year-old information better than fourteen-year-old information.

[FF61] The earliest possible date Gen-band could have asserted the ’427 Patent was when it issued in February 2007. PX6. Genband filed this action on January 21, 2014. (Dkt. No. 1.) However, there is no evidence in the factual record that these inventors could have recalled seven-year-old information better than fourteen-year-old information.

[FF62] The earliest possible date Gen-band could have asserted the ’984 and ’589 Patents was when they issued in August 2011. PX7. Genband filed this action on January 21, 2014. (Dkt. No. 1.) However, there is no evidence in the factual record that these inventors could have recalled eleven-year-old information better than fourteen-year-old information.

b) Genband’s 30(b)(6) testimony

[FF63] Metaswitch alleges that Gen-band did not put forward knowledgeable 30(b)(6) witnesses. Metaswitch FOF, Dkt. No. 356 at ¶ 35.

[FF64] The evidentiary record indicates that Metaswitch has not been prejudiced in its attempts to obtain Genband corporate testimony. All of Genband’s 30(b)(6) witnesses were knowledgeable and reasonably prepared. See, e.g., Dkt. No. 200 at 2 ( “The Court having determined that Plaintiff designated adequate representatives to testify concerning the topics at issue, and that they were reasonably prepared concerning the knowledge of Plaintiff about the relevant topics, the motion is DENIED.”) Furthermore, there is no evidence in the record that Metaswitch was unable to procure testimony from any former Genband or Nortel employees through subpoenas.

c) Mr. Vogt and events relating to damages

[FF65] Metaswitch alleges that Mr. Vogt no longer remembered details of events relevant to damages. Metaswitch FOF, Dkt. No. 356 at ¶ 36.

[FF66] While Mr. Vogt could not recall certain details regarding Genband’s licensing practices, the evidentiary record does not establish that Metaswitch could not obtain this information from its discovery of Genband or other parties. Further, there is no evidence that any of this information is relevant or that Metaswitch’s discovery of Genband’s licensing activities has been deficient in any respect.

[FF67] Metaswitch complains that Mr. Vogt was asked about what happened to certain Taqua patents during the divestiture from Genband and that he did not know which entity kept these patents and did not know whether a license was given to the non-owning entity. Metaswitch FOF, Dkt. No. 356 at ¶ 36 (citing Vogt Tr., Dkt. No. 504-20, at 44:7-45:5). But this information is not relevant, because none of the asserted patents are Taqua-based patents.

[FF68] Metaswitch complains that Mr. Vogt did not know whether or not “Keith or Fred would have been privy to [the valuation] discussions.” Metaswitch FOF, Dkt. No. 356 at ¶ 36 (citing Vogt Tr., Dkt. No. 504-20, at 141:2-142:1). Mr. Vogt, however, described the valuation process, and the particular issue of whether or not Mr. Landau or Mr. Kemmerer were privy to the valuation conversations is not relevant. Other witnesses could have described the valuation process as well. Moreover, the Court has specifically ruled that Genband’s 30(b)(6) witnesses regarding the CVAS acquisition were reasonably prepared. See, e.g., Dkt. No. 200 at 2.

[FF69] Metaswitch complains that, when Mr. Vogt was asked about whether Genband had entered license agreements with third-parties, he answered that he was aware that various licenses had been granted, but he was unsure of the specifics of the negotiations or the parties involved. Metaswitch FOF, Dkt. No. 356 at ¶ 36 (citing Vogt Tr. at 143:10-145:13). Presumably, any such relevant licenses would have been produced in this case. Moreover, Mr. Vogt was not a 30(b)(6) witness on this topic; John McCready was the 30(b)(6) designee on the topic of Genband’s licensing practices/rates. Metaswitch did not allege any prejudice due to McCready’s lack of memory on this topic.

[FF70] The evidentiary record indicates that Metaswitch has not been prejudiced in its attempts to obtain damages-related information. There has been no showing that Metaswitch has been unable to obtain sufficient information from the depositions it took pursuant to these topics.

d) Nortel bankruptcy

[FF71] Metaswitch complains that the Nortel bankruptcy complicated the production of documents. Metaswitch FOF, Dkt. No. 356 at ¶ 37. The evidentiary record indicates that Metaswitch has not been prejudiced in its attempts to obtain information from Nortel. Further, the evidence of record indicates that Genband has properly complied with its discovery obligations associated with Nortel. See Dkt. Nos. 200 and 213. The only evidence that Meta-switch claims that it did not receive was the Electronic Data Room. Metaswitch FOF, Dkt. No. 512 at ¶ 16. There is no evidence of how long the data room was maintained and whether or not it could have been available in the past.

e) Tekelec and NextPoint

[FF72] Metaswitch complains that Gen-band was unable to produce documents relating to its acquisition of Tekelec and NextPoint. Metaswitch FOF, Dkt. No. 356 at ¶ 38. The evidentiary record indicates that Metaswitch has not been prejudiced in its attempts to obtain information regarding Genband’s acquisition of assets from Tekelec and NextPoint. As an initial matter, there is nothing in the evidentiary record that indicates that the timing of the filing of the lawsuit-has somehow affected Metaswitch’s ability to obtain this information. Further, the evidentiary record indicates that Genband has fully complied with its discovery obligations regarding discovery of this information. Dkt. No. 239 at 6-7.

G. Nortel and Genband’s Involvement in CableLabs

1. Agreements between CableLabs and NNCSI

[FF73] Cable Televisions Laboratories, Inc. (“CableLabs”) and Nortel Networks Cable Solutions, Inc. (“NNCSI”) executed four documents relating to intellectual property rights:

1. A Contribution and License Agreement for Intellectual Property dated February 29, 2000. PX272, DX089.

2. A letter agreement dated February 29, 2000. PX273.

3. A letter agreement dated Mach 2, 2000. PX274.

4. A letter agreement dated January 23, 2006. PX275.

[FF74] NNCSI executed the Cable-Labs-NNCSI IPR Agreement on February 29, 2000, but CableLabs did not execute that agreement until March 3, 2000, after the parties exchanged the first two letter agreements. PX272, DX089.

[FF75] On February 29, 2000, NNCSI transmitted the CableLabs-NNCSI IPR Agreement with the first letter agreement. PX273. CableLabs’s lawyer Dorothy Raymond executed the letter agreement with additional handwritten comments identified by her initials DR. PX273.

[FF76] Both parties later signed a revised letter agreement dated March 2, 2000. PX274.

[FF77] On March 3, 2000, CableLabs executed the CableLabs-NNCSI IPR Agreement PX272, DX089.

[FF78] Several years later, on January 23, 2006, CableLabs and NNCSI executed a third letter agreement confirming their understandings of the prior IPR agreements. PX275.

2. CableLabs IPR Agreement

a) Section l.b—“Affiliate”

[FF79] Section l.b of the CableLabs IPR Agreement defines “Affiliate” as including only subsidiary entities as opposed to parent entities.

[FF80] Section l.b states:

“Affiliate” is an entity which directly or indirectly is controlled by another entity. Control for purposes of this Agreement shall mean beneficial ownership of more than fifty percent of the voting stock or equity in an entity.

PX272 at 2; DX330 at 2.

[FF81] As stated above, Affiliate is limited to an entity “controlled by another entity” and does not include an entity that controls another entity. Thus, an “Affiliate” includes only subsidiary entities as opposed to parent entities,

b) Section l.e—“Licensed Claims” and the meaning of “Priority Date”

[FF82] The CableLabs agreements define “Licensed Claims” as “the claims of all patents and patent applications, throughout the world that are entitled to an earliest priority date prior to December 31, 1999.” PX272 at 2; DX330 at 2.

[FF83] In the definition of “Licensed Claims” in Section l.e, the term “priority date” means the earliest filing dates to which a patent may claim priority. See, e.g., 37 C.F.R. § 1.451 (stating that a patent application receives a priority date of an earlier filed national or international application); What is Meant by Priority Date?, WIPO, http://www.wipo.int/sme/en/ faq/pat_faqs_q9.html (last visited April 27, 2015) (“[T]he filing date of that first application is considered the ‘priority date.’ ”); What is the Difference Between a Filing Date and a Priority Date?, Bios, http:// www.bios.net/daisy/patentlens/2343.html (last visited April 27, 2015) (“There are a number of situations where a patent application may claim priority to an earlier application. These include: Continuation applications... Domestic applications based on foreign or international filings... [and] Patent filings based on US provisional patent applications.... ”).

c) Section l.h—“Licensed Technology” and the relationship between “Licensed Claims” and “License Know-how”

[FF84] Section l.h defines “Licensed Technology” as “the copyrights, Licensed Claims, and Licensed Know-how included in any version of the Published Specification.” PX272 at 2; DX330 at 2.

[FF85] To qualify as “Licensed Technology,” claims of patents and patent applications must meet the definition of “Licensed Claims” in section l.e. PX272 at 2; DX330 at 2.

d) Section 4.a—Grant of License

[FF86] The patent license grant in section 4.a is limited to patents and patent applications that the Vendor-Author (or its current affiliates) owned when it executed the CableLabs IPR Agreement.

[FF87] Section l.e defines “Licensed Claims” as limited to “claims of all patents and patent applications ... as to which CableLabs or Vendor-Author or its current Affiliates, as the case may be, has the right to grant licenses....” PX272 at 2; DX330 at 2.

[FF88] Section 4.a. states:

Grant of License. With respect to any Licensed Technology owned by Vendor-Author or CableLabs (or as to which CableLabs or Vendor-Author or its current Affiliates, as the case may be, has the right to grant licenses of the scope granted herein) that is incorporated into any version of a Published Specification, Vendor-Author and CableLabs grant to each other and to each other Participant, and to all of their Affiliates, subject to the terms and conditions of this Agreement, a nonexclusive, fully-paid, royalty-free, non-transferable, non-sublicensable (except for a limited right to sublicense end-users to use the interface portions of Licensed Products, subject to the limitations set forth herein, and as provided for in Section 4(b)), worldwide, perpetual license under its Licensed Claims, along with all Licensed Know-how included in any version of the Published Specification (subject to the right to withdraw under Section 6(b)), to make, have made, use, reproduce, market, import, offer to sell and sell, and to otherwise distribute the interface portions of Licensed Products, provided that such license shall not extend to features of a product'which are not required to comply with the Specification. In the event this license is terminated, end-user licenses in effect at the time of such termination shall remain in full force.

PX272 at 3-4; DX330 at 3-4.

[FF89] Section 4.a does not encompass patents and patent applications acquired or obtained after execution of the agreement.

[FF90] Other parts of section 4 address the licensing of rights acquired or obtained after execution of the agreement. For example, section 4.c is entitled “Grant of Future-Acquired Rights,” and section 4.d is entitled to “Rights to Newly Developed IPR.”

3. Metaswitch’s “alter ego” theory

a) Metaswitch cannot use the alter ego doctrine to rewrite the terms of a written contract.

[FF91] The alter ego doctrine is used to pierce the corporate veil to hold the owner of a corporation liable for some underlying judgment against the corporation. Indeed, in the Port Chester Electrical Construction Corp. v. Atlas case cited by Metaswitch, an electrical subcontractor was trying to pierce the corporate veils to collect a judgment. 40 N.Y.2d 652, 653-655, 389 N.Y.S.2d 327, 357 N.E.2d 983 (1976).

[FF92] If Metaswitch were applying the alter ego doctrine, then Metaswitch would be arguing that the court should disregard the corporate form of NNCSI so that Me-taswitch can reach its parent Nortel Network, Inc. in order to satisfy some judgment against NNCSI. That is not what Metaswitch is attempting to do. Meta-switch has no liability claim against NNCSI. Metaswitch is not seeking reach to the parent Nortel Network, Inc. to satisfy some judgment against NNCSI.

[FF93] Metaswitch is improperly trying to use the alter ego doctrine to rewrite the terms of a written contract, the Cable-Labs-NNCSI IPR Agreement.

[FF94] Metaswitch contends it is entitled to a royalty-free license based on that agreement, but Metaswitch’s problem is that the license grants are limited to patents owned by NNCSI or its subsidiaries, and the asserted patents were not owned by NNCSI or its subsidiaries. See [FF87]-[FF88],

[FF95] The asserted patents were owned by parent corporate entities, including Nortel Networks, Inc., but the Cable-Labs-NNCSI IPR agreement did not require NNCSI to license patents owned by these parent Nortel entities. See [FF87]-[FF88],

[FF96] Metaswitch is trying to use what it describes as an “alter ego” theory to rewrite the contract with CableLabs so that it can treat the agreement as if it were signed by the overall parent organization, Nortel Networks, Inc., as opposed to the particular corporate entity NNCSI. Metaswitch FOF, Dkt. No. 356 at ¶ 187 (“Because NNCS was an alter ego, its signature to the Contribution and License Agreement for Intellectual Property triggered duties on behalf of Nortel Networks.”).

[FF97] Alter ego theories cannot serve to modify the terms of a written agreement or contract. See Keiler v. Harlequin Enterprises Limited, 751 F.3d 64 (2nd Cir.2014). Keiler involved a dispute over the terms of a publishing agreement. Several authors brought a class action lawsuit arguing that a publisher had breached a publishing agreement by underpaying them for digital versions of their books. The amount that was due the authors depended on which Harlequin entity was the “Publisher” under the agreement. There was a parent company organized in Canada and two subsidiaries, one Dutch and one Swiss. The authors asserted that, because the Canadian parent performed most publication duties and controlled the negotiation and administration of the contracts, the Canadian parent should be treated as the “Publisher.” The written agreement, however, made clear that the European subsidiaries were the Publisher. Applying New York law, the court recognized that the best evidence of what parties to a written agreement intend is what they say. Keiler, 751 F.3d at 68. “Consequently, a written agreement that is complete, clear, and unambiguous must be unforced according to its terms.” Id. at 69. Further the court held, “New York law is well settled that á written agreement that is complete and unambiguous is to be interpreted without the aid of extrinsic evidence and that industry practice may not be used to vary the terms of such a contract.” Id. at 69. The court refused to treat the Canadian parent company as the publisher, because that would have “require[d] redrafting significant provisions of the contract wile informing other express ones.” Id. at 69-70.

[FF98] The Court rejected the argument that Metaswitch is making in this case, namely that alter ego theories can serve to modify the terms of written agreement. The Court held that the theory of alter ego is a theory of vicarious liability and cannot displace the express terms of an agreement:

Moreover, as the district court observed, plaintiffs’ theories of agency, assignment, and alter ego are not, strictly speaking, theories of contract interpretation, but rather theories of vicarious liability. Such theories, however, cannot displace the express terms of the Publishing Agreement. Consequently, we hold that the first three claims were properly dismissed.

Id. at 70; see also H. Fox & Co. v. Blumenfeld, 24 A.D.3d 722, 722, 809 N.Y.S.2d 87, 88 (2005) (“When the language of a contract is unambiguous, a court will enforce its plain meaning rather than rewrite the agreement, and its meaning may be determined as a matter of law on the basis of the writing alone without resort to extrinsic evidence”).

[FF99] Thus, Metaswitch cannot use any alter ego theory to rewrite the Cable-Labs IPR Agreement.

b) Metaswitch cannot show any fraud or similar injustice sufficient to pierce the corporate veil as Metaswitch proposes.

1.Even if the alter ego theory could be used to rewrite the CableLabs-NNCSI IPR Agreement, Metaswitch presented no evidence at trial that the parent patent-owner Nortel Networks Limited committed fraud or wrongdoing. The IPR Agreement between CableLabs and NNCSI is a mutual, enforceable agreement negotiated by two sophisticated parties.

(1) CableLabs fully understood that Nortel Networks Limited was not the signatory to the Agreement and the signatory was NNCSI.

2. As evidenced by the Agreement itself, as well as the letter agreements, Cable-Labs fully understood that Nortel Networks Limited was not the signatory to the Agreement and that the signatory (NNCSI) did not own a patent portfolio. PX272.0001; PX274.0001; PX275.0002.

3. The Agreement contains fair and mutual consideration, i.e., Nortel Networks Limited gave up the right to have its products licensed in exchange for avoiding having the claims of its patents automatically licensed to others. (1/12/2016 A.M. Trial Tr„ Dkt. No. 469, at 80:5-13, 119:8-14.) In fact, CableLabs benefited from NNCSI’s participation by, among other things, having the helpful input of its engineers in the standards-making process; that is why it was willing to enter into the deal. (1/12/2016 A.M. Trial Tr., Dkt. No. 469, at 60:3-11,114:8-15.)

4. At trial, the CableLabs representative Glenn Russell testified that there was no fraud:

Q. CableLabs is not here today to try and say that there’s some fraud or that this agreement somehow was negotiated in bad faith, are they?

A. No.

Q. CableLabs went into this agreement with its eyes fully wide open, right, sir?

A. Correct.

Q. And, in fact, after doing so, Cable-Labs published on its website the legal entity with whom it entered this agreement, correct, sir?

A. You mean that list that was shown earlier of the—yes.

Q. Yes, sir. And so the fact of which entity had signed this agreement was now made public to all the other IPR vendors as well as the whole word, correct, sir?

A. Correct.

(1/14/2016 A.M. Trial Tr., Dkt. No. 543, at 55:23-56:14.)

5. Mr. Russell testified that other entities could do this same thing (i.e., use subsidiary entities to sign the IPR agreement):

Q. Now, if any other company signing up wanted to do this same thing, CableLabs would have let them, right?

A. Yes.

(1/14/2016 A.M. Trial Tr., Dkt. No. 543, at 56:15-17.)

6. In fact, other companies, including Texas Instruments, did the same thing (i.e., use subsidiary entities to sign the IPR agreement):

Q. (By Mr. Pankratz) We’re looking at PX-166, Page 9.

MR. PANKRATZ: Scroll down to Texas Instruments.

Q. (By Mr. Pankratz) You see Texas Instruments Israel Cable Broadband Communications, Limited, is a signatory to the IPR agreement, correct, sir?

A. They were, yes.

Q. They were. But that is not the parent entity for Texas Instruments, is it, sir?

A. I don’t know Texas Instruments only because I did not work with them in— they—well, there are a number of companies that signed the IPR agreement. I didn’t work with them, and I don’t know their structure.

Q. You would expect that Texas Instruments Israel Cable Broadband Communications, Limited, is not the corporate parent of Texas Instruments, though, sir?

A. I would assume that, yes.

(1/14/2016 A.M. Trial Tr., Dkt. No. 543, at 56:22-57:12; PX166.)

(2) NNCSI notified CableLabs that NNCSI did not own any intellectual property.

7. Contrary to Metaswitch’s allegations of fraud, NNCSI notified CableLabs that NNCSI did not own any intellectual property and agreed to comply with the withdraw-or-otherwise-license provisions of the agreement with respect to only that limited category of intellectual property that was contained in submissions by NNCSI employees. (1/14/2016 A.M. Trial Tr., Dkt. No. 543, at 54:6-56:17.)

8. In the February 29, 2000 letter agreement, NNCSI and CableLabs stated:

CableLabs also understands that NNCSI owns no Intellectual Property other than those rights necessary to comply with the Agreement with regards to submissions to CableLabs by NNCSI employees.

PX273.

9. In the March 2, 2000 letter agreement, NNCSI and CableLabs stated:

CableLabs also understands that NNCSI owns no Intellectual Property other that those rights necessary to comply with the Agreement with regards to submissions to CableLabs by NNCSI employees. To the extent that a submission made by an NNCSI employee contains intellectual property owned by Nortel Networks, Inc., NNCSI warrants that it will obtain the necessary rights from Nortel Networks, Inc. to comply with the terms of the Agreement.

PX274.

10. On January 23, 2006, the parties reconfirmed their shared understanding, including the following key points:

1. It is reconfirmed that NNCSI is the sole Nortel entity that has participated or will participate as a Vendor-Author in the PacketCable project pursuant to the IPR Agreement. As acknowledges in the Jensen Letter, NNCSI has no intellectual property rights other that those rights necessary to comply with the IPR Agreement regarding submissions to CableLabs by NNCSI employees. To the extent that a submission made by NNCSI contains intellectual property rights owned by Nortel Networks, Inc., NNCSI warranted and continues to warrant that it will obtain the necessary rights from Nortel Networks, Inc. to comply with the terms of the IPR Agreement. However, for the avoidance of any doubt, there is no duty .on NNCSI to notify of the withdrawal of intellectual property rights other than its own or those of Nortel Networks, Inc. contained in submissions made by NNCSI under sections 4 and 6(b) of the IPR Agreement. In other words, the failure of NNCSI to withdraw the intellectual property rights of Nortel Networks, Inc. or any other Nortel entity other than NNCSI does not create any 'license grants to such intellectual property rights, either express or implied, under the IPR Agreement.

PX275.

(3) Nortel employees participated as NNCSI.

11. Consistent with the CableLabs-NNCSI agreements, Nortel employees participated as NNCSI at meetings of Ca-bleLabs. PX271 at 2 (“Nortel participates as Nortel Networks Cable Solutions Inc. to avoid IPR issues”); PX271 at 5 (“Everyone participates as Nortel Network Cable Solutions Inc.”).

12. At trial, the CableLabs representative, Glenn Russell, testified that he knew Courtland Wolfe was associated with NNCSI:

Q. Do you recall testifying at your deposition that you knew, for example, that people like Cortland were associated with Nortel Networks Cable Solutions?

A. Yes.

Q. And that was accurate testimony, correct, sir?

A. Yes.

(1/14/2016 A.M. Trial Tr., Dkt. No. 543, at 60:15-20.)

4. Metaswitch’s knowledge

a) Metaswitch knew or should have known that NNCSI was the only Nortel entity that signed the Cable-Labs IPR Agreement.

[FF100] At trial, the CableLabs representative, Glenn Russell, testified that the CableLabs website published the signatories to the CableLabs IPR Agreement and made them known to the whole world:

Q. CableLabs is not here today to try and say that there’s some fraud or that this agreement somehow was negotiated in bad faith, are they?

A. No.

Q. CableLabs went into this agreement with its eyes fully wide open, right, sir?

A. Correct.

Q. And, in fact, after doing so, Cable-Labs published on its website the legal entity with whom it entered this agreement, correct, sir?

A. You mean that list that was shown earlier of the—yes.

Q. Yes, sir. And so the fact of which entity had signed this agreement was now made public to all the other IPR vendors as well as the whole world, correct, sir?

A. Correct.

(1/14/2016 A.M. Trial Tr., Dkt. No. 543, at 55:23-56:14.)

[FF101] Metaswitch signed the Cable-Labs IPR agreement in January 2007. DX590. A few months earlier in October 2006, the CableLabs website identified NNCSI as the only Nortel entity that had signed the IPR Agreement. In July 2008 (about six months after Metaswitch signed the IPR agreement), an updated list of signatories identifies Metaswitch. That list still identified NNCSI as the only Nortel entity that had signed the IPR Agreement. Id.

[FF102] Metaswitch’s Mark Stewart admitted at trial that he could have looked up on CableLab’s website to find out that NNCSI signed the CableLabs IPR Agreement:

Q. But you knew there were many different legal entities in the Nortel corporate structure, correct?

A. I—I knew there were at least—at le