Evolved Wireless, LLC v. Htc Corporation ( 2021 )

Case: 20-1335 Document: 84 Page: 1 Filed: 01/26/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
EVOLVED WIRELESS, LLC,
Plaintiff-Appellant
v.
HTC CORPORATION, HTC AMERICA, INC.,
MOTOROLA MOBILITY LLC, ZTE (USA) INC.,
MICROSOFT CORPORATION, MICROSOFT
MOBILE OY, NOKIA INC., SAMSUNG
ELECTRONICS CO., LTD., SAMSUNG
ELECTRONICS AMERICA, INC.,
Defendants-Appellees
______________________
2020-1335, 2020-1337, 2020-1339, 2020-1340, 2020-1363
______________________
Appeals from the United States District Court for the
District of Delaware in Nos. 1:15-cv-00543-JFB-SRF, 1:15-
cv-00544-JFB-SRF, 1:15-cv-00545-JFB-SRF, 1:15-cv-
00546-JFB-SRF, 1:15-cv-00547-JFB-SRF, Senior Judge Jo-
seph F. Bataillon.
______________________
Decided: January 26, 2021
______________________
CHRISTOPHER GRANAGHAN, Nelson Bumgardner Albrit-
ton P.C., Fort Worth, TX, argued for plaintiff-appellant.
Also represented by ERIC M. ALBRITTON, ANDREW J.
Case: 20-1335 Document: 84 Page: 2 Filed: 01/26/2021
2 EVOLVED WIRELESS, LLC v. HTC CORPORATION
WRIGHT.
VICTORIA FISHMAN MAROULIS, Quinn Emanuel Ur-
quhart & Sullivan, LLP, Redwood Shores, CA, argued for
all defendants-appellees. Defendants-appellees Samsung
Electronics Co., Ltd. and Samsung Electronics America,
Inc. also represented by TODD MICHAEL BRIGGS, KEVIN P.B.
JOHNSON; PUSHKAL MISHRA, Los Angeles, CA; DAVID
COOPER, THOMAS PEASE, New York, NY; CARL G.
ANDERSON, San Francisco, CA.
STEPHEN S. KORNICZKY, Sheppard, Mullin, Richter &
Hampton LLP, San Diego, CA, for defendants-appellees
HTC Corporation, HTC America, Inc. Also represented by
MARTIN BADER, ERICKA SCHULZ.
MITCHELL G. STOCKWELL, Kilpatrick Townsend &
Stockton LLP, Atlanta, GA, for defendant-appellee
Motorola Mobility LLC. Also represented by RICHARD W.
GOLDSTUCKER; TAYLOR HIGGINS LUDLAM, Raleigh, NC.
CHARLES M. MCMAHON, McDermott Will & Emery
LLP, Chicago, IL, for defendant-appellee ZTE (USA) Inc.
Also represented by BRIAN ANDREW JONES; JAY REIZISS,
Washington, DC.
RICHARD ALAN CEDEROTH, Sidley Austin LLP, Chicago,
IL, for defendants-appellees Microsoft Corporation, Mi-
crosoft Mobile Oy, Nokia Inc. Also represented by
NATHANIEL C. LOVE.
______________________
Before DYK, PLAGER, and MOORE, Circuit Judges.
DYK, Circuit Judge.
Plaintiff Evolved Wireless, LLC (“Evolved”) is the
owner of U.S. Patent No. 7,809,373 (“the ’373 patent”).
Evolved appeals a decision of the United States District
Case: 20-1335 Document: 84 Page: 3 Filed: 01/26/2021
EVOLVED WIRELESS, LLC v. HTC CORPORATION 3
Court for the District of Delaware granting summary judg-
ment in five related cases on Evolved’s claim of infringe-
ment of the ’373 patent in favor of defendants HTC Corp.,
HTC America, Inc., Motorola Mobility LLC, ZTE (USA)
Inc., Microsoft Corp., Microsoft Mobile Oy, Nokia Inc.,
Samsung Electronics Co., Ltd., and Samsung Electronics
America, Inc. (collectively the “Defendants”). The district
court concluded that Evolved’s patent infringement claims
were barred by a license agreement and the doctrine of pa-
tent exhaustion. Although the district court correctly inter-
preted the license agreement and concluded that the
agreement barred the infringement claims for the period
that it was in effect, the summary judgment order did not
address the question whether the license agreement had
been terminated, such that the license did not exist for the
post-termination period. We therefore affirm in part, va-
cate in part, and remand for further proceedings.
BACKGROUND
I
For wireless cellular communications to work properly,
each component within a network must operate using a
shared set of standards. First-generation (“1G”) wireless
networks were developed locally within individual coun-
tries; as a result, a device built in accordance with one
country’s standards could not work on another country’s
network. Starting with second-generation (“2G”) net-
works, and continuing today, global cellular standards
have been developed by international organizations.
In the late 1990s, two such organizations developed
two third-generation (“3G”) cellular standards, called
“WCDMA” and “CDMA2000.” Both standards rely on code
division multiple access (“CDMA”) technology but are in-
compatible with each other. To avoid this incompatibility
problem, a single fourth-generation (“4G”) standard,
known as “long-term evolution” (“LTE”), commenced devel-
opment in 2004 and was standardized in 2008. Devices
Case: 20-1335 Document: 84 Page: 4 Filed: 01/26/2021
4 EVOLVED WIRELESS, LLC v. HTC CORPORATION
may be compatible with one or more standards and are re-
ferred to as “single-mode” or “multi-mode” accordingly.
A patent that covers technology necessary to a stand-
ard is a “standard-essential patent.” Participants in the
standards development process must commit to licensing
their standard-essential patents on fair, reasonable, and
nondiscriminatory terms.
II
The sole patent at issue in this case is the ’373 patent,
which describes a method for handing over a mobile device
from one cell tower to another under the LTE standard. 1
In 1993, LG Electronics, Inc. (“LGE”), the original owner of
the ’373 patent, granted a license to Qualcomm, a devel-
oper and supplier of wireless components. 2 LGE also de-
clared the ’373 patent essential to the 4G LTE standard.
An entity known as TQ Lambda bought the ’373 patent
from LGE in January 2014 and sold it to Evolved in
1 This case originally involved infringement claims
under five patents. The parties stipulated to dismissal
with respect to three of the patents. The U.S. Patent Trial
and Appeal Board found the fourth patent unpatentable,
and we summarily affirmed in Evolved Wireless, LLC v.
ZTE (USA) Inc., 778 F. App’x 967 (Fed. Cir. 2019). See Ap-
pellant’s Br. at 20 n.8.
2 The district court treated the license as stemming
from provisions in the agreement whereby LGE cove-
nanted not to sue Qualcomm or its customers for infringe-
ment of the subject patents. See J.A. 30, 32. Evolved notes
that the license consists of “two separate covenants not to
sue: a covenant not to sue Qualcomm . . . and a covenant
not to sue Qualcomm’s customers.” Appellant’s Br. at 14–
15. The characterization of the agreement as a license
agreement or as a covenant not to sue has no effect on the
underlying substantive issues.
Case: 20-1335 Document: 84 Page: 5 Filed: 01/26/2021
EVOLVED WIRELESS, LLC v. HTC CORPORATION 5
September 2014. Evolved’s acquisition of the ’373 patent
was subject to the preexisting license agreement. The cen-
tral question is whether the accused products were within
the scope of that license agreement. If the products were
licensed, the parties agree that Defendants are not liable
for infringement for the period that the license agreement
was in effect.
The license agreement was amended several times in
1996, 1998, 2004, 2007, and 2010. In relevant part, under
the license agreement, LGE granted Qualcomm limited
covenants to use certain intellectual property. The agree-
ment did not identify the patents subject to the agreement.
Instead, the license agreement provided that LGE would
not bring claims for patent infringement against Qual-
comm or Qualcomm customers (such as Defendants) for
uses of LGE’s patents that are technically or commercially
necessary to make, sell, or use a “Subscriber Unit.”
The license agreement originally defined a Subscriber
Unit as a “complete CDMA and/or Dual Mode CDMA tele-
phone, including but not limited to mobile, transportable
and portable telephones, which incorporates all or any part
of QUALCOMM Intellectual Property and can be used,
without any additional equipment or components being at-
tached thereto, to initiate and receive Wireless telecommu-
nications transmissions.” J.A. 21–22, 2216. In the 2004
amendments, the definition of Subscriber Unit was
changed to “a Complete CDMA Telephone or a CDMA Mo-
dem Card, and any subsequent generation products.”
J.A. 2313 (emphasis added). The definition of “Subscriber
Unit” thus read:
“Subscriber Unit” shall mean a Complete CDMA
Telephone or a CDMA Modem Card, and any sub-
sequent generation products.”
J.A. 2313 (emphasis added).
Case: 20-1335 Document: 84 Page: 6 Filed: 01/26/2021
6 EVOLVED WIRELESS, LLC v. HTC CORPORATION
Another relevant provision in the license agreement, as
amended in 2004, defined a “Complete CDMA Telephone”
as
any complete CDMA and/or complete Dual Mode
CDMA telephone, including but not limited to
fixed, mobile, transportable and portable tele-
phones, which incorporates all or any part of the
QUALCOMM Intellectual Property and can be
used, without any additional equipment or compo-
nents being attached thereto, to initiate and re-
ceive Wireless telecommunications transmissions.
J.A. 2312. This definition was amended in 2010 to cover
multi-mode devices as follows:
“Complete CDMA Telephone” means any complete
CDMA (including multi-mode) terminal, including
but not limited to a fixed, mobile, transportable or
portable telephone or data terminal, which (i) in-
corporates all or any part of the QUALCOMM In-
tellectual Property and (ii) can be used, without
any additional equipment or components being at-
tached thereto, to initiate and/or receive Wireless
communications.
J.A. 2440 (emphasis added). Under the 2010 amendments,
“Wireless” was defined to “include[], without limitation
(i) any CDMA-based wireless wide area standard . . . and
(ii) any updates or revisions to any of the foregoing.”
J.A. 2443. As noted above, by this time, fourth-generation
LTE had already been standardized to succeed the third-
generation standards.
The license agreement also established an “Improve-
ment Period,” allowing the license to cover relevant intel-
lectual property subsequently developed or acquired by the
parties. The 2010 amendments extended the Improvement
Period through December 31, 2010, which encompasses the
October 5, 2010 issuance of the ’373 patent.
Case: 20-1335 Document: 84 Page: 7 Filed: 01/26/2021
EVOLVED WIRELESS, LLC v. HTC CORPORATION 7
III
In 2015, Evolved sued the Defendants, as well as Ap-
ple, Inc., 3 in the United States District Court for the Dis-
trict of Delaware, alleging infringement of the ’373 patent.
Defendants produce multi-mode cellular phones, tablets,
and other devices; these devices incorporate Qualcomm
chipsets that allegedly practice the ’373 patent, but are also
alleged to be licensed under the agreement. In 2017, the
parties filed cross-motions for summary judgment. On
February 21, 2019, Evolved informed the district court that
the license agreement had been terminated; the same day,
the district court denied without prejudice the parties’
cross-motions for summary judgment, allowing the mo-
tions to be renewed after trial if necessary.
The district court later decided to reconsider the mo-
tions for summary judgment on the issues of licensing and
patent exhaustion and subsequently entered summary
judgment of noninfringement. The district court found
that the license agreement authorized Qualcomm’s use of
the ’373 patent and that the doctrine of patent exhaustion
precluded an infringement action against Qualcomm’s cus-
tomers (i.e., Defendants). Although Evolved argued that
Defendants should be liable, at minimum, for infringing ac-
tivity occurring after the alleged termination date of the
license agreement, the district court’s order did not address
the alleged 2018 termination of the license agreement.
3 Evolved proceeded to trial separately against Ap-
ple, which resulted in a jury verdict of noninfringement.
That verdict was separately on appeal before this court un-
der Case No. 2019-2362. On June 23, 2020, the appeal was
voluntarily dismissed pursuant to Federal Rule of Appel-
late Procedure 42(b) and is not otherwise relevant here.
See Order Granting Mot. to Dismiss Appeal Pursuant to
Fed. R. App. P. 42(b), Evolved Wireless LLC v. Apple Inc.,
No. 2019-2362 (Fed. Cir. June 23, 2020), ECF No. 31.
Case: 20-1335 Document: 84 Page: 8 Filed: 01/26/2021
8 EVOLVED WIRELESS, LLC v. HTC CORPORATION
Evolved appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(1).
DISCUSSION
This appeal presents two issues: first, whether the dis-
trict court correctly interpreted the license agreement to
bar Evolved’s infringement claims for the period before the
alleged termination of the license, and second, whether the
district court properly granted summary judgment without
addressing the alleged termination of the license agree-
ment in 2018.
I
The license agreement is governed by California law,
J.A. 2237, which regards contract interpretation as a ques-
tion of law generally subject to de novo review. See Kitty-
Anne Music Co. v. Swan, 112 Cal. App. 4th 30, 37 (2003)
(citing Parsons v. Bristol Dev. Co., 62 Cal. 2d 861, 865
(1965)); see also Rembrandt Data Techs., LP v. AOL, LLC,
641 F.3d 1331, 1336 (Fed. Cir. 2011) (citing Lucent Techs.,
Inc. v. Gateway, Inc., 543 F.3d 710, 717 (Fed. Cir. 2008)).
We review summary judgment of noninfringement de novo.
Accent Packaging, Inc. v. Leggett & Platt, Inc., 707 F.3d
1318, 1325 (Fed. Cir. 2013) (citing Laryngeal Mask Co. v.
Ambu A/S, 618 F.3d 1367, 1370 (Fed. Cir. 2010)).
If Qualcomm, Defendants’ chipset supplier, had a valid
license to practice the ’373 patent, Evolved’s right to sue
Defendants for infringement of the ’373 patent is ex-
hausted by that license, since they purchased licensed
products from an authorized source (viz., Qualcomm). See
Quanta Comput., Inc. v. LG Elecs., Inc., 553 U.S. 617, 638
(2008) (“The authorized sale of an article that substantially
embodies a patent exhausts the patent holder’s rights and
prevents the patent holder from invoking patent law to con-
trol postsale use of the article.”). Neither party disputes
this basic principle, nor do the parties dispute that the ’373
patent is covered by the license if it is technically or
Case: 20-1335 Document: 84 Page: 9 Filed: 01/26/2021
EVOLVED WIRELESS, LLC v. HTC CORPORATION 9
commercially necessary to produce “Subscriber Units”
within the meaning of the agreement.
The parties’ dispute focuses on whether the accused
products meet the definition of Subscriber Units. Evolved
argues that Defendants’ accused devices are not Subscriber
Units within the meaning of the agreement, and that the
’373 patent, which pertains only to the 4G LTE standard,
is beyond the scope of the license. Defendants respond that
their accused devices qualify as Subscriber Units and that
the ’373 patent is therefore within the scope of the license
agreement. We conclude that Defendants’ interpretation
of the license agreement is correct.
First, following the 2004 amendments to the license
agreement, a Subscriber Unit has been defined as “a Com-
plete CDMA Telephone or a CDMA Modem Card, and any
subsequent generation products.” J.A. 22, 2313. Defend-
ants argue that the term “subsequent generation products”
includes products that operate using a standard that is
subsequent to the third-generation (3G) CDMA standard.
Evolved, by contrast, argues that this term refers only to
CDMA-enabled products (i.e., 3G products other than
phone and modem cards) that were subsequently devel-
oped.
Evolved’s interpretation ignores the established mean-
ing of “generation” in this context. Each set of cellular
standards is commonly demarcated as a “generation,” and
the “G” in the abbreviations “2G,” “3G,” “4G,” and most re-
cently “5G” stands for “generation.” Tellingly, even
Evolved’s complaint and its briefing in this appeal adhere
to the convention of classifying cellular standards in differ-
ent generations. 4 The natural reading of “subsequent
4 See, e.g., J.A. 287–88 (Evolved’s complaint, describ-
ing progression from “first generation (‘1G’) mobile phones”
through “second generation (‘2G’) phones” and “third
Case: 20-1335 Document: 84 Page: 10 Filed: 01/26/2021
10 EVOLVED WIRELESS, LLC v. HTC CORPORATION
generation products,” then, encompasses devices that rely
on more recent standards than the 3G CDMA standard.
Evolved’s proposed interpretation is not consistent
with this usage. Evolved offers no evidence whatsoever
that “generation” is used to differentiate between products
operating on the same cellular standard. And the original
licensing agreement on its face was not limited to existing
CDMA products. See J.A. 2216, 2440. Evolved further ar-
gues that the canon of ejusdem generis (Latin for “of the
same kind”) restricts the meaning of “subsequent genera-
tion products” to CDMA-enabled devices likes phones and
modem cards, but this argument cannot defeat the other-
wise clear meaning of the license agreement—that a “sub-
sequent generation” refers to a cellular standard developed
after third-generation CDMA. See Hymas v. United States,
810 F.3d 1312, 1321–22 (Fed. Cir. 2016) (explaining that
ejusdem generis “comes into play only when there is some
uncertainty as to the meaning of a particular clause”)
(quoting United States v. Turkette, 452 U.S. 576, 581
(1981)).
Evolved also argues that the ’373 patent is not techni-
cally necessary to make a “Complete CDMA Telephone,”
which must be able, inter alia, “to initiate and/or receive
Wireless communications.” Appellant’s Br. at 38–39 (quot-
ing J.A. 2440). Evolved argues that the definition of “Wire-
less” is restricted only to 3G CDMA technology. But any
definition of the term “Complete CDMA Telephone” is ir-
relevant to the scope of the term “subsequent generation
products,” which is an independent subcategory of “Sub-
scriber Units.”
generation (‘3G’) phones”); Appellant’s Br. at 7–8 (describ-
ing development of “first-generation (‘1G’) networks,” “sec-
ond-generation (‘2G’) networks,” and “[t]hird-generation
(‘3G’) network technology”).
Case: 20-1335 Document: 84 Page: 11 Filed: 01/26/2021
EVOLVED WIRELESS, LLC v. HTC CORPORATION 11
Given the scope of “subsequent generation products,”
and because the ’373 patent is directed to products that uti-
lize the fourth-generation LTE standard, we conclude that
the accused products are Subscriber Units within the
meaning of the license agreement and that Evolved’s in-
fringement action is accordingly barred during the period
that the licensing agreement was in effect.
This conclusion is bolstered by the 2010 amendments
to the license agreement, in which LGE and Qualcomm
changed the definition of a “Complete CDMA Telephone” to
expressly include “multi-mode” devices. The parties agree
that the term “multi-mode,” which LGE and Qualcomm
added in 2010 (i.e., after the standardization of fourth-gen-
eration LTE), includes devices that can operate using the
CDMA standard and at least one other standard. To give
effect to the term “multi-mode,” it cannot be the case that,
within the meaning of the license agreement, only CDMA-
related patents can be necessary to a multi-mode CDMA
device.
Evolved argues, however, that a multi-mode device
could support 2G and 3G, and that the use of the term
“multi-mode” does not imply the ability to support 4G prod-
ucts using the ’373 patent. But the timing of the 2010
amendment suggests that the term “multi-mode” referred
to the existing 3G standard and the newly completed 4G
standard, rather than being limited to 3G and the earlier
2G standard.
Evolved also argues that the license agreement only
encompassed improvements to CDMA technology—rather
than any upgrades to subsequent-generation standards—
because the Improvement Period ended on December 31,
2006, prior to the 2008 standardization of 4G LTE. This
argument ignores the fact that the 2010 amendments ex-
tended the Improvement Period through December 31,
2010, which covers both the standardization of 4G LTE and
the publication of the ’373 patent. Indeed, the license’s
Case: 20-1335 Document: 84 Page: 12 Filed: 01/26/2021
12 EVOLVED WIRELESS, LLC v. HTC CORPORATION
reference to “future evolutions of such standards” in the re-
citals in the 2004 amendments further supports our inter-
pretation, as 4G LTE is a future evolution of the 3G CDMA
standard. See J.A. 2311
Evolved finally contends that summary judgment was
inappropriate because the district court was not able to in-
terpret the license agreement without a full, unredacted
version thereof. As Evolved mentions this argument only
briefly in a footnote, we find it inadequately developed and
therefore waived. See, e.g., Shell Oil Co. v. United States,
896 F.3d 1299, 1313 n.14 (Fed. Cir. 2018) (quoting United
States v. Great Am. Ins. Co., 738 F.3d 1320, 1328 (Fed. Cir.
2013)) (“It is well established that arguments that are not
appropriately developed in a party’s briefing may be
deemed waived.”).
The license agreement covers subsequent generation
products and multi-mode CDMA devices, and therefore
precludes infringement for the period that it was in effect.
II
We now turn to the alleged termination of the license
agreement.
The license agreement provided that “either Party
shall be entitled to terminate this License Agreement as of
December 31, 2018 by providing written notice to the other
Party no later than June 1, 2018.” J.A. 3530. Evolved
points out that in a letter dated May 21, 2018, LGE in-
formed Qualcomm that it was exercising its option to ter-
minate the license agreement, effective December 31, 2018.
In an email dated February 15, 2019, counsel for LGE in-
formed Evolved of the termination of the license agree-
ment. On February 21, 2019, Evolved filed a “Notice of
Supplemental Facts” informing the district court of the ter-
mination.
The district court’s summary judgment order does not
address the alleged termination. The parties disagree as
Case: 20-1335 Document: 84 Page: 13 Filed: 01/26/2021
EVOLVED WIRELESS, LLC v. HTC CORPORATION 13
to the significance of this silence. Evolved argues that the
district court considered the evidence of the termination
and found it irrelevant, and that it was erroneous to grant
summary judgment without addressing the termination of
the license agreement, which is relevant to the existence of
a license. Defendants respond that Evolved’s Notice of
Supplemental Facts regarding the termination did not
comply with the district court’s local rules or scheduling or-
der, and that the district court acted within its discretion
by disregarding the notice.
We review a district court’s decision to exclude evi-
dence under regional circuit law. Del. Valley Floral Grp.,
Inc. v. Shaw Rose Nets, LLC, 597 F.3d 1374, 1379 (Fed. Cir.
2010). In the Third Circuit, evidentiary decisions are re-
viewed for abuse of discretion. Hirst v. Inverness Hotel
Corp., 544 F.3d 221, 225 (3d Cir. 2008) (citing Marra v.
Phila. Hous. Auth., 497 F.3d 286, 297 (3d Cir. 2007)). Sim-
ilarly, the Third Circuit affords district courts “substantial
deference” in the interpretation and enforcement of their
local rules. United States v. Miller, 624 F.2d 1198, 1200
(3d Cir. 1980); accord AntiCancer, Inc. v. Pfizer, Inc., 769
F.3d 1323, 1328 (Fed. Cir. 2014) (“A district court’s appli-
cation of its local rules . . . [and] exercise of its disciplinary
authority [are] reviewed on the standard of abuse of discre-
tion.”); see also O2 Micro Int’l, Ltd. v. Monolithic Power
Sys., 467 F.3d 1355, 1366–67 (Fed. Cir. 2006) (“Decisions
enforcing local rules in patent cases will be affirmed unless
clearly unreasonable, arbitrary, or fanciful; based on erro-
neous conclusions of law; clearly erroneous; or unsupported
by any evidence.”).
Defendants cite Greene v. Virgin Islands Water &
Power Authority, 557 F. App’x 189 (3d Cir. 2014), to argue
that a district court is “under no obligation to recognize or
analyze” an extraneous filing that “was not properly sub-
mitted and did not constitute part of the summary judg-
ment record.” See 557 F. App’x at 200. Greene, however, is
not binding authority and is not analogous to this case.
Case: 20-1335 Document: 84 Page: 14 Filed: 01/26/2021
14 EVOLVED WIRELESS, LLC v. HTC CORPORATION
There, the plaintiff filed a belated affidavit, without leave
from the district court, as supplemental opposition to the
defendants’ motions for summary judgment. Id. at 199. In
granting the motions for summary judgment, the district
court denied the defendants’ motion to strike the affidavit
without explanation and did not otherwise address the af-
fidavit. Id. at 199, 200 n.13. On appeal, the Third Circuit
admonished the district court for its “failure to detail its
rationale,” id. at 200 n.13, but concluded that the district
court must have treated the affidavit as an extraneous fil-
ing outside of the summary judgment record and thus de-
clined to consider it, id. at 200.
Two features distinguish this case from Greene. First,
at the summary judgment hearing, the district court here
explicitly asked about the termination of the license agree-
ment and whether the license agreement had been re-
placed, suggesting that the district court viewed the
termination as irrelevant. Second, unlike the belated filing
in Greene, Evolved filed its notice promptly after being in-
formed of the termination by counsel for LGE. 5
To the extent we can glean anything from the record
regarding Evolved’s notice, it appears that the district
court declined to consider the termination because the
court assumed that the license agreement must have been
replaced:
THE COURT: [The agreements] were terminated,
but weren’t they replaced then?
5 In Greene, the plaintiff submitted this affidavit
forty-two days after the close of summary judgment brief-
ing, though it apparently could have been presented to the
district court earlier. See 557 F. App’x at 198–200 (charac-
terizing affidavit as “belatedly submitted” and filed with-
out “the District Court’s permission to belatedly
supplement [the plaintiff’s] opposition”).
Case: 20-1335 Document: 84 Page: 15 Filed: 01/26/2021
EVOLVED WIRELESS, LLC v. HTC CORPORATION 15
MR. LARUS: There is no evidence that they were
replaced. . . .What that declaration said is that
there were ongoing negotiations of whether to re-
place those agreements with something, but those
were terminated.
THE COURT: But they were replaced, weren’t
they?
MR. LARUS: No.
THE COURT: There’s no evidence?
MR. LARUS: There’s no evidence they were re-
placed.
THE COURT: That’s complete nonsense. They had
to have been replaced. Qualcomm wouldn’t sell you
their technology unless they’re covered with the li-
censes . . . .
J.A. 4726–27 (transcript of summary judgment hearing);
see also J.A. 4730 (district court asking Evolved, “When do
you think the 1993 agreement ended?”).
We have no occasion to decide now whether it was an
abuse of discretion to disregard this after-arising evidence;
we instead vacate the summary judgment order insofar as
it applies to conduct that occurred after the purported ter-
mination of the license agreement on December 31, 2018,
and remand for further proceedings. On remand, the dis-
trict court should address whether—and why or why not—
it considers Evolved’s proffered evidence of the termination
part of the summary judgment record. If the district court
concludes that the termination issue was properly raised,
the district court should conduct further proceedings as
necessary to determine whether a termination occurred,
and if so, the effect on the license and Evolved’s claims of
infringement for the post-termination period.
Case: 20-1335 Document: 84 Page: 16 Filed: 01/26/2021
16 EVOLVED WIRELESS, LLC v. HTC CORPORATION
CONCLUSION
We affirm the district court’s judgment of noninfringe-
ment as it pertains to conduct that occurred on or before
December 31, 2018. We vacate the district court’s judgment
as to any activity occurring on or after January 1, 2019,
and remand for further proceedings consistent with this
opinion.
AFFIRMED IN PART, VACATED IN PART, AND
REMANDED
COSTS
Costs to neither party.