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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`EVOLVED WIRELESS, LLC,
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`Plaintiff,
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`) Civil Action No. 15-542-JFB-SRF
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`V.
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`APPLE INC.,
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`Defendant.
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`This matter is before the Court on defendant Apple’s Post-Trial motion to
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`MEMORANDUM and ORDER
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`dismiss, without prejudice, its invalidity counterclaim as to U.S. Patent No. 7,809,373
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`(the “’373 Patent”) and its defenses of license and patent exhaustion. D.I. 526. Plaintiff
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`Evolved Wireless agrees with Apple that the Court should dismiss without prejudice
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`Apple’s invalidity counterclaim as to the ’373 Patent but opposes Apple’s alternative
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`request to dismiss its license and exhaustion affirmative defense without prejudice (D.I.
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`535).1
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`Following an eight-day trial, the jury returned a verdict that Apple: (1) did not, and
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`does not, literally infringe the ’373 patent; (2) did not, and does not, infringe the ’373
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`patent under the doctrine of equivalents; and (3) did not, and does not, literally infringe
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`U.S. Patent No. 7,881,236 (“the ’236 patent”). D.I. 520. The jury, however, did not
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`reach the issue of invalidity and Apple did not present its license and exhaustion
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`defense, pursuant to the Court’s order denying the parties’ cross-motions for summary
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`judgment (D.I. 468 at 21).
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`1 The parties have stipulated to the dismissal of the invalidity defense (D.I. 533) and the Court will enter
`an order on that stipulation.
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`1
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`Case 1:15-cv-00542-JFB-SRF Document 541 Filed 08/09/19 Page 2 of 3 PageID #: 31384
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`In denying the summary judgment motions, the Court stated that the license
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`defense would be addressed, if necessary, in a bench trial at some point following the
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`jury trial, noting, however,“[t]here may be no need for the Court to address [the license
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`and exhaustion defense under] the License Agreement if the defendant prevails on
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`either infringement or invalidity.” D.I. 468 at 20. Evolved Wireless contends that
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`Apple’s license defense should either be denied as a matter of law (see D.I. 346, 487)
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`or set for a bench trial on the merits. It states that the same license defense has been
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`raised in Evolved Wireless’s patent infringement actions against other defendants.
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`The Court agrees with Apple that the defenses are presently moot and may
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`never need to be decided. The relief that Apple requests is a dismissal without
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`prejudice. The license and exhaustion defenses could be reasserted if Evolved
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`Wireless prevails on appeal and the jury’s verdict of non-infringement is set aside. At
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`this juncture, the Court sees no reason to proceed with what could be an unnecessary
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`endeavor.
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`The assertion of the defense in the other cases will have to be addressed in
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`those cases. It may be that if the defendants in the related actions, like Apple, prevail at
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`trial on infringement and/or invalidity, the patent license and exhaustion defense would
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`not need to be resolved in those actions either. Accordingly,
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`IT IS ORDERED:
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`The defendant’s motion for posttrial relief (D.I. 526) should be granted;
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`The defendant’s invalidity counterclaim with respect to U.S. Patent No.
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`7,809,373 is dismissed, without prejudice.
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`2
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`Case 1:15-cv-00542-JFB-SRF Document 541 Filed 08/09/19 Page 3 of 3 PageID #: 31385
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`3.
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`The defendant’s defenses of license and patent exhaustion (D.I. 526) are
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`dismissed, without prejudice.
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`DATED this 9th day of August 2019.
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`BY THE COURT:
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`s/ Joseph F. Bataillon
`Senior United States District Judge
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