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"Gather 'round, fellow developers, while I tell you the age-old tale of how we we have an implied license to Sprint's patents." AI-Generated, displayed with permission

Here's one I haven't seen before. In Sprint Communications Company L.P. v. WideOpenWest, Inc., C.A. No. 18-361-RGA (D. Del.), the defendant apparently sought to admit company "folklore" in support of its implied license defense.

The Court found that this "folklore" was relevant to the implied license defense:

While arguing for its second motion in limine (D.I. 433), Plaintiff Sprint raised the issue of certain privileged communications. . . . Plaintiffs second motion in limine sought to exclude testimony about company "folklore" regarding a right to practice Sprint's patents. Defendants plan to assert the affirmative defense of implied license, supported by this "folklore" testimony from WOW's Rule 30(b)(6) designee, Mr. Mitchell, and general counsel, Mr. Martin. I determined that the folklore testimony would be admissible for the limited purpose of showing WOW's subjective belief, which I believed was a component of the implied license defense. (10/25/2022 Hr. Tr. at 25:18-26:2).

What exactly is this folklore? It's hard to tell from the very-heavily-redacted briefing, but it the original MIL (D.I. 423) discusses "company ‘folklore’ . . . regarding the existence of a patent release agreement.” The response gives some more detail:

[Defendant's witness'] testimony establishes that WOW believed that by transitioning WOW subscribers off of Sprint’s network and by payment of the early termination fee, Sprint had implicitly agreed to WOW’s provision of VoIP services. This is relevant to WOW’s implied license and equitable estoppel defenses, . . . both of which require demonstrating that WOW believed or inferred that Sprint consented to its provision of VoIP services and did not intend to assert its patents against WOW.

If you're wondering, defendant's brief argues that this is not hearsay because it goes to the defendant's subjective state of mind and beliefs.

After the Court denied the MIL to exclude the folklore, though, plaintiff moved to exclude it again, arguing that defendant was using privilege as a sword and a shield, offering its beliefs but denying discovery into privileged communications by counsel regarding those beliefs:

. . . Sprint is concerned that WOW is using privilege to withhold documents relevant to Mr. Martin's and Mr. Mitchell's beliefs that might undercut WOW's position. Sprint argues that this is "a classic sword and shield problem." (D.I. 454 at 2-3).

The Court reviewed the documents in camera, and agreed:

I have reviewed the [privileged] documents. Some of them are not relevant to the present dispute. Some, however, do speak to [defendant's employee] Mr. Martin's beliefs regarding the possibility of suit by Sprint. Therefore, I will exclude testimony by Mr. Mitchell and Mr. Martin regarding company beliefs and "folklore" unless Defendants within one week disclose privilege log entries 8, 20, 33, 35, and 41-44.

Good catch by plaintiff's counsel! This shows how hard it can be to offer evidence of corporate beliefs (ahem, willfulness defenses) without risking waiver of some kind, if there are privileged communications on the issue to be waived.

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