Case 1:22-cv-01321-MN Document 100 Filed 01/14/25 Page 1 of 15 PageID #: 3264
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`NETWORK-1 TECHNOLOGIES, INC.,
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`UBIQUITI INC.,
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`Plaintiff,
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`v.
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`Defendant.
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`C.A. No. 22-1321 (MN)
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`MEMORANDUM OPINION
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`Brian E. Farnan, Michael J. Farnan, FARNAN LLP, Wilmington, DE; Sean Luner, Gregory Dovel,
`Richard Lyon, DOVEL & LUNER LLP, Santa Monica, CA – Attorneys for Plaintiff.
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`Jeremy D. Anderson, FISH & RICHARDSON P.C., Wilmington, DE; Neil J. McNabnay, David B.
`Conrad, Philip G. Brown, FISH & RICHARDSON P.C., Dallas, TX – Attorneys for Defendant.
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`January 14, 2025
`Wilmington, Delaware
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`Case 1:22-cv-01321-MN Document 100 Filed 01/14/25 Page 2 of 15 PageID #: 3265
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`NOREIKA, U.S. DISTRICT JUDGE:
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`Defendant Ubiquiti Inc. (“Ubiquiti” or “Defendant”) moves for partial summary judgment
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`on Plaintiff Network-1 Technologies, Inc.’s (“N1” or “Plaintiff”) claim of indirect infringement.
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`(D.I. 78). The motion has been fully briefed. (D.I. 79, 86, 89).1 For the following reasons, the
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`Court will GRANT summary judgment.
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`I.
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`BACKGROUND
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`N1 is a Delaware corporation with a principal place of business in Connecticut. (D.I. 14
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`¶ 3). N1 is the owner of U.S. Patent No. 6,218,930, entitled “Apparatus and Method for Remotely
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`Powering Access Equipment Over a 10/100 Switched Ethernet Network” (“the ’930 Patent”). (Id.
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`¶¶ 1, 9). The ’930 patent expired no later than March 7, 2020. (N1 Response ¶ 2).
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`Ubiquiti is a Delaware corporation headquartered in New York. (D.I. 18 ¶ 4). Among
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`other products, it makes “Power over Ethernet” products, which “streamline[] the process of
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`powering and providing data to a connected device by sending electric power over the Ethernet
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`cable.” (D.I. 81, Ex. 3 at 1). Robert Pera is Ubiquiti’s CEO and a member of the Board of
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`Directors. (N1 SOF ¶ 10; Ubiquiti Response ¶ 10). Ron Sege is also a director on Ubiquiti’s
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`Board. (N1 SOF ¶ 20; Ubiquiti Response ¶ 20). Neither are parties to this action.
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`N1 filed a complaint on October 6, 2022, alleging that Ubiquiti infringed the method claims
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`of the ’930 Patent. (D.I. 1). On December 30, 2022, Ubiquiti moved to dismiss the claims of
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`indirect and willful infringement on the grounds that N1 failed to plead that Ubiquiti had pre-suit
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`knowledge of the ’930 patent. (D.I. 7). In response, on January 18, 2023, N1 amended its
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`complaint. (D.I. 14). Ubiquiti moved to dismiss again on February 1, 2023, (D.I. 16), and the
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`1
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`Along with their briefs, the parties each submitted a concise statement of facts (D.I. 81
`(“Ubiquiti SOF”); D.I. 87 at 8-11 (“N1 SOF”)), and a response (D.I. 87 at 1-7 (“N1
`Response”); D.I. 91 (“Ubiquiti Response”)).
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`1
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`Case 1:22-cv-01321-MN Document 100 Filed 01/14/25 Page 3 of 15 PageID #: 3266
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`parties’ briefing on the motion was completed on March 1, 2023. (D.I. 17, 19, 23). On
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`June 23, 2023, the Court held argument on the motion to dismiss. (D.I. 81, Ex. 1).
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`At the hearing, the Court granted the motion as to the willfulness claim, which was
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`unopposed, but denied it as to indirect infringement on the basis that N1 had alleged sufficient
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`facts to survive the pleading stage. (Id. at 22:8-23:8). The Court noted, however, that it was a
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`“very close call,” because “there [we]re no allegations that [Ubiquiti] knew of the patent directly,”
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`and, therefore, its decision rested on N1’s allegations of the ’930 patent’s widespread notoriety in
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`the industry. (Id.). Because the briefing “suggest[ed] that there is a lack of proof rather than a
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`lack of factual allegations” as to the knowledge element, the Court permitted the parties to
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`negotiate bifurcated discovery and early summary judgment on the issue.2 (Id. at 23:9-24:18).
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`From September 29, 2023 to February 20, 2024, the parties conducted discovery on
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`Ubiquiti’s knowledge of the ’930 patent. (N1 Response ¶ 10). During that time, N1 served
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`interrogatories, two rounds of document requests, and more than ten third-party subpoenas.
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`(D.I. 37, 44, 48; N1 Response ¶¶ 11-12). Ubiquiti answered the interrogatories, conducted
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`searches, and produced documents. (D.I. 46; Ubiquiti SOF ¶¶ 13-16; D.I. 81, Exs. 7-9). On
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`March 1, 2024, N1 deposed Ubiquiti’s corporate representative, Thomas Hildebrand. (D.I. 81,
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`Ex. 13; D.I. 88, Ex. 6; D.I. 90, Ex. 21 (together, “the Hildebrand Tr.”)). After that, N1 sought to
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`take the apex depositions of two Ubiquiti executives: Mr. Pera and Mr. Sege.3 (D.I. 58). Ubiquiti
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`In the interim, on February 1, 2023, Ubiquiti answered the Amended Complaint and filed
`its own counterclaims – two counts for declaratory judgment of non-infringement and
`patent invalidity. (D.I. 18). N1 answered the counterclaims on February 22, 2023.
`(D.I. 21).
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`Ubiquiti produced declarations from Mr. Pera and Mr. Sege attesting to their lack of
`knowledge of the ’930 patent. (See, e.g., D.I. 81, Ex. 10 (“Pera Decl.”) ¶¶ 7-8 (“To the
`best of my recollection, prior to October 6, 2022, when Network-1 Technologies, Inc. filed
`its Complaint in this case, I had no knowledge of U.S. Patent No. 6,218,930, ‘Apparatus
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`2
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` 3
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`2
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`Case 1:22-cv-01321-MN Document 100 Filed 01/14/25 Page 4 of 15 PageID #: 3267
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`opposed that effort, and the parties litigated the dispute before Magistrate Judge Hatcher. (D.I. 59,
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`62, 65).
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`On March 7, 2024, Judge Hatcher denied N1’s motion to compel the apex depositions of
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`Mr. Pera and Mr. Sege on the basis that N1 made only a “minimal showing of the remote possibility
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`of first-hand knowledge,” failed to seek other, less burdensome means of retrieving the same
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`information, and that “both Mr. Pera and Mr. Sege submitted sworn statements disclaiming any
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`knowledge of the [’930] patent before Network-1 filed suit.” (D.I. 67). Judge Hatcher additionally
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`noted that there was “thin evidence put forward to even suggest that these individuals might have
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`first-hand information.” (Id.) (quoting Brit. Telecomms. PLC v. IAC/Interactivecorp, No. 18-366
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`(WCB), 2020 WL 1043974, at *8 (D. Del. Mar. 4, 2020) (granting motion to quash executive
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`deposition for lack of “unique or personal knowledge as to relevant information”)).
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`On April 10, 2024, Ubiquiti filed the present motion for summary judgment. (D.I. 78, 79).
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`On April 22, N1 filed its answering brief, and, on April 29, Ubiquiti replied. (D.I. 86, 89). The
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`Court now addresses the motion.
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`II.
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`LEGAL STANDARD
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`A court must grant summary judgment “if the movant shows that there is no genuine
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`dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R.
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`Civ. P. 56(a). The moving party bears the burden of demonstrating the absence of any genuine
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`and method for remotely powering access equipment over a 10/100 switched ethernet
`network’ (‘the ’930 patent’). [And] Network-1 never contacted Ubiquiti, or me personally,
`to provide any notice of Network-1 or the ’930 patent prior to the filing of the Complaint
`in this case.”); id., Ex. 12 (“Sege Decl.”) ¶¶ 10-11 (“I joined Ubiquiti as a member of its
`Board of Directors around October 2012. I do not recall being aware of Network-1, or its
`patents, at that time. [And] I have no recollection of being aware of Network-1 or U.S.
`Patent No. 6,218,930, ‘Apparatus and method for remotely powering access equipment
`over a 10/100 switched ethernet network’ (‘the ’930 patent’) prior to October 6, 2022, when
`Network-1 filed its Complaint in this case.”)).
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`3
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`Case 1:22-cv-01321-MN Document 100 Filed 01/14/25 Page 5 of 15 PageID #: 3268
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`issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). If the burden of
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`persuasion at trial would be on the non-moving party, then the moving party may satisfy its burden
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`of production by pointing to an absence of evidence supporting the non-moving party’s case, after
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`which the non-movant must come forward with specific facts to demonstrate the existence of a
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`genuine issue for trial. Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586-
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`87 (1986); Williams v. West Chester, 891 F.2d 458, 460 (3d Cir. 1989).
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`“Material” facts are those that “could affect the outcome of the case.” Thomas v. Tice,
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`948 F.3d 133, 138 (3d Cir. 2020) (citation omitted). “[A] dispute about a material fact is ‘genuine’
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`if the evidence is sufficient to permit a reasonable jury to return a verdict for the non-moving
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`party.” Lamont v. New Jersey, 637 F.3d 177, 181 (3d Cir. 2011). A non-moving party asserting
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`that a fact is genuinely disputed must support such an assertion by: “(A) citing to particular parts
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`of materials in the record, including depositions, documents, electronically stored information,
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`affidavits or declarations, stipulations, . . . admissions, interrogatory answers, or other materials;
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`or (B) showing that the materials cited [by the moving party] do not establish the absence . . . of a
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`genuine dispute.” Fed. R. Civ. P. 56(c)(1)(A)-(B). The non-moving party’s evidence “must
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`amount to more than a scintilla, but may amount to less (in the evaluation of the court) than a
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`preponderance.” Williams, 891 F.2d at 460-61.
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`The court must view the evidence “in the light most favorable to the non-moving party and
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`draw all reasonable inferences in that party’s favor.” Thomas v. Cumberland Cnty., 749 F.3d 217,
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`222 (3d Cir. 2014). “If there is any evidence in the record from any source from which a reasonable
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`inference in the nonmoving party’s favor may be drawn, the moving party simply cannot obtain a
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`summary judgment.” Aman v. Cort Furniture Rental Corp., 85 F.3d 1074, 1081 (3d Cir. 1996)
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`(cleaned up).
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`4
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`Case 1:22-cv-01321-MN Document 100 Filed 01/14/25 Page 6 of 15 PageID #: 3269
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`III. DISCUSSION
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`N1 asserts that Ubiquiti “knowingly induced others” to infringe the ’930 patent, “including
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`its customers who purchased [Ubiquiti’s] Power over Ethernet products.” (D.I. 14 ¶¶ 86-89). As
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`part of that claim, N1 contends that Ubiquiti “had knowledge that the induced acts of its customers
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`. . . constituted infringement of the ’930 Patent.” (Id. ¶ 88). In the alternative, N1 says Ubiquiti
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`“was willfully blind to such infringement.” (Id. ¶¶ 86-89). Ubiquiti moves for summary judgment
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`on the basis that there is insufficient record evidence to allow a jury to find for N1 as a matter of
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`law, and that there is no evidence that Ubiquiti knew of the ’930 patent or any infringement of it.
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`(D.I. 79 at 3-4); Novartis Corp. v. Ben Venue Labs., Inc., 271 F.3d 1043, 1046 (Fed. Cir. 2001)
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`(“Summary judgment must be granted against a party who has failed to introduce evidence
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`sufficient to establish the existence of an essential element of that party’s case, on which the party
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`will bear the burden of proof at trial.”).
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`Pursuant to 35 U.S.C. § 271(b), “[w]hoever actively induces infringement of a patent shall
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`be liable as an infringer.” “In order to succeed on a claim of inducement, the patentee must show,
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`first that there has been direct infringement, and second that the alleged infringer knowingly
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`induced infringement and possessed specific intent to encourage another’s infringement.” Enplas
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`Display Device Corp. v. Seoul Semiconductor Co., Ltd., 909 F.3d 398, 407 (Fed. Cir. 2018)
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`(citation omitted). As a result, “liability for inducing infringement attaches only if the defendant
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`knew of the patent.” Commil USA, LLC v. Cisco Sys., Inc., 575 U.S. 632, 639 (2015); Global-
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`Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 766 (2011). A patentee is “prohibited from
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`collecting damages related to indirect infringement for any pre-knowledge (i.e., pre-filing)
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`conduct.” Walker Digital LLC v. Facebook, Inc., 852 F. Supp. 2d 559, 565 (D. Del. 2012).
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`Ubiquiti maintains that it “first became aware of the ’930 Patent when Network-1 filed the
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`complaint in the present case,” and that there is insufficient record evidence to support a finding
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`5
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`Case 1:22-cv-01321-MN Document 100 Filed 01/14/25 Page 7 of 15 PageID #: 3270
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`otherwise. (Ubiquiti SOF ¶ 8; D.I. 81, Ex. 2). After months of discovery, Ubiquiti contends that
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`N1 has failed to come up with material communications, documents, or testimony – anything to
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`support its theories of liability. (D.I. 79 at 4-5). Ubiquiti therefore characterizes N1’s knowledge
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`argument as “speculative.” (Id. at 3); see Halsey v. Pfeiffer, 750 F.3d 273, 287 (3d Cir. 2014). For
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`its own part, Ubiquiti’s corporate representative disclaimed any knowledge of the ’930 patent
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`during his deposition, (see generally Hildebrand Tr.), and Ubiquiti produced uncontested evidence
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`in discovery showing that none of the patents owned or invented by Ubiquiti or Mr. Pera reference
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`the ’930 patent.4 (N1 SOF ¶ 15; D.I. 90, Ex. 20); Celotex, 477 U.S. at 323. All of that is sufficient
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`to support Ubiquiti’s motion, because “nothing more is required [of the movant] than the filing of
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`a summary judgment motion stating that the patentee had no evidence of infringement and pointing
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`to the specific ways.” Exigent Tech., Inc. v. Atrana Sols., Inc., 442 F.3d 1301, 1309 (Fed. Cir.
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`2006). Thus, the burden is shifted to N1. See Novartis, 271 F.3d at 1046 (“Once the movant has
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`made this showing, the burden shifts to the nonmovant to designate specific facts showing that
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`there is a genuine issue for trial.”).
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`In response, N1 asserts that there is a genuine issue of material fact as to Ubiquiti’s
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`knowledge of the ’930 patent for three reasons: (1) the ’930 patent was publicly notorious, and,
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`therefore, Ubiquiti must have known about it; (2) Ubiquiti’s CEO learned of the ’930 patent after
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`receiving a marketing email that contained an attachment referring to it; and (3) one of Ubiquiti’s
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`directors knew about the ’930 patent from his employment stints at other companies prior to
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`joining Ubiquiti’s Board. (D.I. 86 at 3, 5, 11). In the alternative, N1 says that Ubiquiti was
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`willfully blind to the ’930 patent. (Id. at 13-14). The Court addresses each argument in turn.
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`4
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`Ubiquiti’s declarations from Mr. Pera and Mr. Sege provide further support for Ubiquiti’s
`position, although the Court finds that there is no genuine issue of material fact even
`without them. See Celotex, 477 U.S. at 324.
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`6
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`Case 1:22-cv-01321-MN Document 100 Filed 01/14/25 Page 8 of 15 PageID #: 3271
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`A.
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`Knowledge Through Public Notoriety
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`N1 contends that there is “a reasonable inference that Ubiquiti knew of Network-1’s [’930]
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`Patent” prior to this lawsuit. (D.I. 86 at 3). In support of that assertion, N1 says that the ’930
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`patent was “well known in Ubiquiti’s industry and widely regarded as a hugely important patent,”
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`due to “highly-publicized trials, settlements, and licensing campaigns,” as well as information
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`from N1’s publicly available filings and press releases. (Id.). N1 expands on this point by
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`referencing litigations against third-party industry players, royalty deals with third-party market
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`participants, and public filings from third-party competitors – but nothing about Ubiquiti. (Id. at
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`3-4).
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`N1’s generalized assertions of public notoriety may have been adequate at the pleading
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`stage, but more is required on summary judgment. See Wharton v. Danberg, 854 F.3d 234, 244
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`(3d Cir. 2017). “On summary judgment, the nonmoving party must affirmatively show where in
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`the record there exists a genuine dispute over a material fact. Speculation and conjecture may not
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`defeat a motion for summary judgment.” Id. (cleaned up). At this stage, N1 must rely on evidence.
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`TechSearch, LLC v. Intel Corp., 286 F.3d 1360, 1372 (Fed. Cir. 2002) (“[U]nsupported or
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`conclusory averments are insufficient to avoid summary judgment where the moving party has
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`met its initial burden.”). Yet, after five months of discovery, N1 does not identify a single
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`document or line of testimony from an Ubiquiti employee acknowledging the “hugely important”
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`nature of the ’930 patent, the “highly-publicized trials, settlements, and licensing campaigns,” or
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`information from N1’s publicly available filings and press releases. Id.; Barmag Barmer
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`Maschinenfabrik AG v. Murata Mach., Ltd., 731 F.2d 831, 836 (Fed. Cir. 1984); Fed. R. Civ. P.
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`56(c)(1)(A). Instead, N1 offers unsupported speculation. That is insufficient to carry its burden
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`here, because “an inference based upon a speculation or conjecture does not create a material
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`7
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`Case 1:22-cv-01321-MN Document 100 Filed 01/14/25 Page 9 of 15 PageID #: 3272
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`factual dispute sufficient to defeat summary judgment.” In re Asbestos Prod. Liab. Litig. (No. VI),
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`837 F.3d 231, 235 (3d Cir. 2016) (citation omitted).
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`N1 also contends that Ubiquiti must have known about the ’930 patent because it was
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`disclosed in the public filings of Ubiquiti’s competitors. (D.I. 86 at 4; N1 SOF ¶¶ 7-8). Testimony
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`from Mr. Hildebrand, however, directly refutes that notion. (Hildebrand Tr. at 30:13-32:25).
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`Mr. Hildebrand, who offered the only evidence on this point from either side, testified that the only
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`Ubiquiti employees to review competitor public filings were members of “the finance team, [and]
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`they reviewed essentially top level numbers only from those earnings reports and not in detail, not
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`complete breakdowns of things like product lines.” Id. (“[T]hey reviewed, essentially, financial
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`numbers only, things like inventory, profit to earnings [ratios], things like that.”). N1 does not
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`offer any contrary evidence that creates a genuine dispute of material fact, such as internal Ubiquiti
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`communications, testimony from other deponents, or answers to interrogatories. See Ferring B.V.
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`v. Barr Labs., Inc., 437 F.3d 1181, 1193 (Fed. Cir. 2006) (“In order to raise a genuine issue of fact,
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`a party must submit conflicting evidence in the form of an affidavit or other admissible evidence.”).
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`Accordingly, the Court finds that N1 has failed to raise a genuine dispute of material fact
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`as to pre-suit knowledge of the ’930 patent, let alone knowledge of infringement of that patent,
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`based on public notoriety or filings from Ubiquiti’s competitors.5
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`5
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`The seven mass-mailer marketing emails received by one Ubiquiti investor relations
`employee are likewise insufficient to show that the company knew about the ’930 patent
`prior to this lawsuit. (D.I. 81, Ex. 9; D.I. 86 at 4; N1 SOF ¶ 9). There is no documentary
`evidence that the employee read those emails or learned of the ’930 patent through them,
`and she was not deposed for testimony on the point. (See Ubiquiti SOF ¶ 14). Even if
`there were such evidence, however, that would still not create a genuine fact dispute,
`because there is no evidence that the investor relations employee is the type or level of
`employee through whom the company can be imputed knowledge for patent infringement
`purposes. See, e.g., Princeton Digital Image Corp. v. Ubisoft Ent. SA, No. 13-335 (LPS)
`(CJB), 2016 WL 6594076, at *8 & n.16 (D. Del. Nov. 4, 2016) (“The record simply does
`not indicate that Defendants had any real level of engagement with the particular subject
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`8
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`Case 1:22-cv-01321-MN Document 100 Filed 01/14/25 Page 10 of 15 PageID #: 3273
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`B.
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`Knowledge of CEO Robert Pera
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`N1 next asserts that Ubiquiti CEO Robert Pera knew of the ’930 patent. N1 claims that
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`there is a genuine dispute of material fact as to whether Mr. Pera learned of the ’930 patent through
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`an email exchange with Richard Baker of New England Intellectual Property, LLC (D.I. 81, Ex.10-
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`A (“the Baker Email”)). (D.I. 86 at 5-10; N1 SOF ¶¶ 11-17).
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`On August 4, 2011, Mr. Baker reached out to Mr. Pera with “an unsolicited third-party
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`sales email,” attempting to sell Mr. Pera U.S. Patent No. 6,912,145 (“the ’145 patent”), on behalf
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`of that patent’s owner, a company called Accton Technology Corporation (“Accton”). (D.I. 67;
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`Baker Email at UBIQUITI_0019264-65). There is no dispute that the Baker Email was cold
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`marketing outreach, that Mr. Pera did not know Mr. Baker, and that the ’145 patent solicited in the
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`Baker Email is “unrelated” to the ’646 patent at issue here. (D.I. 67). The Baker Email included
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`an attachment – a three-page sales proposal titled “Power-over-Ethernet Injector Patent Sales
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`Opportunity” (“the Sales Proposal”). (D.I. 81, Ex. 11 at 1). The Sales Proposal included various
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`sections, such as an executive summary, market information, the claims of the ’145 patent, and an
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`“offer” section. (Id. at 1-3). Two sentences of the Sales Proposal’s market information section
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`read: “Power-over-Ethernet technology has recently been litigated with a different patent in the
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`Eastern District of Texas by Network-1 Security Solutions against CISCO, Extreme Networks,
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`Adtran, Foundry Networks and 3Com. Network-1 settled that litigation with licenses expected to
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`return over $100 million by 2020.” (Id. at 2 (emphasis added)).
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`About six weeks later, on September 23, 2011, Mr. Pera responded, letting Mr. Baker
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`know: “I am interested. Sorry for [the] late reply; [I] missed the email the first time.” (Baker
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`matter that provides the background for the patent in question.”), report and
`recommendation adopted, 2017 WL 6337188 (D. Del. Dec. 12, 2017); Potter Voice Techs.,
`LLC v. Apple Inc., 24 F. Supp. 3d 882, 886 (N.D. Cal. 2014).
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`9
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`Case 1:22-cv-01321-MN Document 100 Filed 01/14/25 Page 11 of 15 PageID #: 3274
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`Email at UBIQUITI_0019264). After several other brief email exchanges, Mr. Pera wrote, “I
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`reviewed the [’145] patent . . . I can offer $20K USD for it.” (Id. at UBIQUITI_0019263).
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`Mr. Baker responded, “Thank you for making your offer. I will forward this to the people over at
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`Accton. . . . I will let you know their response.” (Id.). On October 31, 2011, Mr. Baker told
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`Mr. Pera that Accton rejected his bid, and Ubiquiti did not buy the ’145 patent. (Id. at
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`UBIQUITI_0019257). That ended the dialogue between Mr. Pera and Mr. Baker.
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`N1 contends that Mr. Pera learned of the ’930 patent through this exchange, due to the
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`Sales Proposal. (D.I. 86 at 5-6). The two cited sentences in the Sales Proposal, however, do not
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`mention the ’930 patent by name, number, or standard, or even say what the ’930 patent’s
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`technology does. (See Sales Proposal at 2; Ubiquiti SOF ¶¶ 17-18; N1 Response ¶ 18). It refers
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`only – and opaquely – to “a different patent.” (Sales Proposal at 2). As Judge Hatcher concluded,
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`“it is not clear that the referenced patent [in the Sales Proposal] is the same as the one in this case.”
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`(D.I. 67). Instead, the Sales Proposal raises the same type of broad, generalized litigation and
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`license information the Court has already found insufficient to confer knowledge here. See supra,
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`Section III.A.
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`Indeed, despite contacting Mr. Baker in connection with this litigation, N1 did not provide
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`any record evidence from him showing that he discussed the ’930 patent with Mr. Pera. (See, e.g.,
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`D.I. 62 at 2). The Baker Email supports only the proposition that Mr. Pera reviewed the ’145
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`patent – not the ’930 patent. (Baker Email at UBIQUITI_0019263). Mr. Hildebrand testified that
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`he was not aware that Mr. Pera discussed the Sales Proposal or Baker Email with any Ubiquiti
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`employee. (Hildebrand Tr. at 62:4-24). And Judge Hatcher already found on this specific point
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`that N1’s proffered “thin” support supplied only a “remote possibility of first-hand knowledge”
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`for Mr. Pera. (D.I. 67). On the basis of the present evidentiary record, the Court agrees.
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`10
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`Case 1:22-cv-01321-MN Document 100 Filed 01/14/25 Page 12 of 15 PageID #: 3275
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`Therefore, “the record taken as a whole could not lead a rational trier of fact to find for the
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`non-moving party” on this issue, and the Court finds that no genuine dispute of material fact exists
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`as to whether Mr. Pera knew of the ’930 patent prior to the filing of this lawsuit. Matsushita,
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`475 U.S. at 587.
`
`C.
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`Knowledge of Director Ron Sege
`
`N1 additionally argues that the evidence shows a genuine dispute of material fact as to
`
`whether Ubiquiti knew about the’930 patent through director Ron Sege. (D.I. 86 at 11). N1 points
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`to two documents to suggest that Mr. Sege learned of the ’930 patent from his employment prior
`
`to joining Ubiquiti: notice letters sent to Tropos Networks Inc. (“Tropos”) in 2004 and 2008, while
`
`Mr. Sege worked there. (See D.I. 88, Exs. 1-L & 1-N).
`
`According to the undisputed evidence, on January 22, 2004, N1’s counsel, Mintz Levin,
`
`sent a letter to Tropos seeking to initiate a licensing deal pertaining to the ’930 patent (“the 2004
`
`Letter”). (D.I. 88, Ex. 1-L). The 2004 letter was addressed to then-Tropos CEO David Hanna.
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`(Id. at 1; D.I. 81, Ex. 15). N1 offers no evidence to suggest that it was ever received or read by
`
`Mr. Sege – or even that he worked at Tropos at the time. To the contrary, N1’s own CEO
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`declaration states that the 2004 Letter was received and answered on January 27, 2004, by Tropos
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`employee Chris Ritler, not Mr. Sege. (D.I. 88, Ex. 1 ¶ 21 (“Chris Ritler at Tropos had responded
`
`to Network-1’s [2004] notice letter.”); id., Ex. 1-M). So does other undisputed evidence. (See
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`D.I. 81, Ex. 15 (“This is Chris Ritler from Tropos Networks. We received a notice from your law
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`firm that was directed toward David Hanna, our Chairman.”)).
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`On August 7, 2008, N1 sent a similar licensing letter to Tropos, this time addressed to
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`Mr. Sege in his capacity as the company’s President (“the 2008 Letter”). (D.I. 88, Ex. 1-N). Once
`
`again, however, N1 identifies no record evidence that Mr. Sege interacted with the 2008 Letter or
`
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`Case 1:22-cv-01321-MN Document 100 Filed 01/14/25 Page 13 of 15 PageID #: 3276
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`otherwise learned of the ’930 patent through it.6 See Fed. R. Civ. P. 56(c)(1)(A). Even N1’s CEO
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`declaration stops short of saying that Mr. Sege received or read the 2008 Letter. (See D.I. 88, Ex. 1
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`¶ 22). That is likely because, as Judge Hatcher noted, N1 “failed to even attempt to conduct
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`discovery of the prior companies where Mr. Sege might have learned such information.” (D.I. 67).
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`Thus, neither the 2004 nor 2008 Letter constitutes evidence sufficient to connect the dots to
`
`establish that Mr. Sege knew of the ’930 Patent, let alone knowledge that Ubiquiti’s actions would
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`induce others to infringe that patent. See TechSearch, 286 F.3d at 1372; Wharton, 854 F.3d at 244.
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`Accordingly, N1 has failed to create a material issue of fact with respect to whether Ubiquiti had
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`knowledge of the ’930 patent or infringement through Mr. Sege.7
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`D. Willful Blindness
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`Finally, N1 contends that Ubiquiti was willfully blind to the ’930 patent. “Where pre-suit
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`knowledge of the patents or infringement cannot be shown, a patentee may still recover pre-suit
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`damages if the patentee can show that the infringer was willfully blind to the patent or
`
`
`Mr. Sege directly disclaims having received, read, or taken any action regarding the 2008
`Letter in his declaration. (See Sege Decl. ¶¶ 5-6 (“I have no recollection of receiving this
`correspondence while working at Tropos Networks. [And] I took no action concerning
`Network-1 or any patent allegedly owned by Network-1 following [that] communication.
`. . . I also do not recall being involved in any follow up to this communication. I did not
`obtain or review any patents owned by Network-1 because of the foregoing
`communication.”)). N1 does not rebut that affirmation with any contrary evidence.
`
`N1 also suggests that Mr. Sege could have learned of the ’930 patent during his
`employment at 3Com Corporation and the Hewlett-Packard Company from 2010 to 2012.
`(D.I. 86 at 11). But N1 provides no evidence to support either suggestion and Mr. Sege
`again refutes those assertions in his affidavit. (See Sege Decl. ¶¶ 7-9 (“With respect to my
`time as COO and President of 3Com, I have been informed, in preparation for this
`declaration, that 3Com was sued by Network-1 in 2008. I do not recall that litigation.
`3Com Corporation entered into a Merger Agreement with Hewlett-Packard as of
`November 11, 2009. I do not recall ever becoming aware of a company named Network-
`1, or its patents, because of the merger. I also do not recall ever learning of Network-1 or
`its patents in connection with any work I performed on behalf of Hewlett-Packard after the
`merger.”)).
`
`6
`
`
`
` 7
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`Case 1:22-cv-01321-MN Document 100 Filed 01/14/25 Page 14 of 15 PageID #: 3277
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`infringement.” Alarm.com, Inc. v. SecureNet Techs. LLC, 345 F. Supp. 3d 544, 553 (D. Del. 2018).
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`Willful blindness occurs when parties “deliberately shield[] themselves from clear evidence of
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`critical facts that are strongly suggested by the circumstances.” Global-Tech, 563 U.S. at 766.
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`This standard is higher than mere negligence or recklessness. Id. at 769. “Therefore, a defendant
`
`is not willfully blind if it merely ‘should have known’ of the risk of indirect infringement.”
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`Alarm.com, 345 F. Supp. 3d at 553. Rather, demonstrating willful blindness requires that “(1) the
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`defendant must subjectively believe that there is a high probability that a fact exists and (2) the
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`defendant must take deliberate actions to avoid learning of that fact.” Global-Tech, 563 U.S. at
`
`769. N1 has failed to show a genuine dispute of material fact on either prong.
`
`First, N1 fails to point to record evidence that anyone at Ubiquiti believed that the ’930
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`patent existed or that there was a high probability that it did. Instead, N1 recycles the same broad,
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`generalized allegations that Ubiquiti “should have” known about the ’930 patent, and that “there
`
`was no reason why . . . Ubiquiti would not want to find out” about it, based on competitors’ licenses
`
`and industry litigation. (D.I. 86 at 14). Once again, that is not enough at this stage, because “[a]
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`party may not overcome a grant of summary judgment by merely offering conclusory statements.”
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`Moore U.S.A., Inc. v. Standard Reg. Co., 229 F.3d 1091, 1112 (Fed. Cir. 2000).
`
`Second, N1 does not identify any deliberate actions undertaken by Ubiquiti to avoid
`
`learning of the ’930 patent. Mr. Hildebrand directly refuted such a notion multiple times in his
`
`deposition. (See Hildebrand Tr. at 27:1-16, 39:22-40:1). In response, N1 argues that Mr. Pera
`
`“should have investigated” based on competitor patent litigation, and since he did not, “there is a
`
`reasonable inference that Mr. Pera made a deliberate decision not to investigate.” (D.I. 86 at 14).
`
`Setting aside that N1 points to no evidence of Mr. Pera’s purported “deliberate decision,” N1 fails
`
`to supply any reason why Mr. Pera – or anyone else at Ubiquiti – had a duty to investigate. To the
`
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`Case 1:22-cv-01321-MN Document 100 Filed 01/14/25 Page 15 of 15 PageID #: 3278
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`contrary, “the mere fact that a competitor with similar technology was sued for infringement
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`cannot trigger a duty to investigate the lawsuit or otherwise be held to be willfully blind.”
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`Alarm.com, 345 F. Supp. 3d at 554. And even if Ubiquiti knew about its competitors’ lawsuits, a
`
`“Defendant’s awareness that a competitor is being sued for infringement and a failure to investigate
`
`that lawsuit is not enough to show willful blindness.” Id.; see also Apeldyn Corp. v. AU Optronics
`
`Corp., 831 F. Supp. 2d 817 (D. Del. 2011) (rejecting willful blindness where defendant “would
`
`not . . . collect [ any] patents issued to other companies” with competing technology), aff’d, 522
`
`F. App’x 912 (Fed. Cir. 2013). Thus, it is undisputed that Ubiquiti was not willfully blind to the
`
`’930 patent.
`
`*
`
`*
`
`*
`
`N1 has failed to create a genuine dispute of material fact as to whether Ubiquiti had pre-
`
`suit knowledge of the ’930 patent or its infringement. Nor has N1 shown that Ubiquiti was
`
`willfully blind. The Court, therefore, finds that Ubiquiti had no pre-suit knowledge of the ’930
`
`patent or of infringement, and Ubiquiti is entitled to summary judgment. See Novartis, 271 F.3d
`
`at 1046.
`
`IV. CONCLUSION
`
`For the above reasons, the Court will GRANT Defendant’s partial motion for summary
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`judgment. (D.I. 78.). An