United States District Court, W.D. Tennessee, Western Division
ORDER GRANTING PLAINTIFF'S MOTION TO INTERVENE,
DENYING DEFENDANT'S MOTION FOR SUMMARY JUDGMENT FOR LACK
OF STANDING, AND LIFTING STAY
McCALLA UNITED STATES DISTRICT COURT JUDGE
the Court is the Joint Motion of Plaintiff Anglefix and Third
Party Intervener The University of North Carolina to Add The
University of North Carolina as Co-Plaintiff in this Matter,
filed September 15, 2016. (ECF No. 176.) Defendant Wright
Medical Technology (“Wright”) opposes the motion,
asserting The University of North Carolina
(“UNC”)'s Waiver of Claims (ECF No. 171-1)
conveyed a license to the patent-in-suit. (ECF No. 178.) Also
before the Court is Defendant's Motion for Summary
Judgment for Lack of Standing. (ECF No. 130.)
reasons stated below, the Court GRANTS Plaintiff AngleFix
Tech, LLC (“Anglefix”) and UNC's motion to
join UNC as a co-plaintiff, DENIES Defendant's Motion for
Summary Judgment for Lack of Standing, and lifts the June 27,
2016 stay in the case (ECF No. 169).
April 25, 2016, Defendant filed a Motion for Summary Judgment
for Lack of Standing. (ECF No. 130.) AngleFix responded in
opposition on May 11, 2016. (ECF No. 146.) Defendant filed a
reply brief on May 31, 2016. (ECF No. 153.) The Court held a
motion hearing on June 21, 2016. (Min. Entry, ECF No. 164.)
27, 2016, the Court granted in-part and denied in-part
Defendant's Motion for Summary Judgment for Lack of
Standing, determining Anglefix had statutory standing but
lacked prudential standing. (ECF No. 169.) To cure prudential
standing, the Court ordered AngleFix to join UNC as a
co-plaintiff by July 27, 2016, and stayed the case until such
joinder was made. (Id. at 20.)
25, 2016, AngleFix filed a motion, not to join UNC as a
co-plaintiff, but to use a Waiver of Claims (hereinafter
“the Waiver” or “UNC's Waiver”)
from UNC as a substitute for joinder. (ECF No. 171.)
Defendant responded in opposition on July 27, 2016. (ECF No.
August 2, 2016, the Court denied AngleFix's motion to
accept UNC's Waiver in place of the joinder of UNC as a
party in the instant litigation. (ECF No. 175.) The Court
ordered AngleFix to join UNC by September 16, 2016, or the
Court would dismiss the action with prejudice. (Id.
at 4.) On September 15, 2016, AngleFix filed the instant
motion to join UNC as a co-plaintiff. (ECF No. 176.) Attached
to that motion was UNC's Submission of Authorization to
Join as Co-Plaintiff and Appointment of Counsel, wherein UNC
also “rescind[ed] it [sic] previous Waiver of Claims
Against Wright Medical.” (ECF No. 176-1.) Defendant
opposed the motion on October 5, 2016, asserting that UNC
could not rescind its Waiver, asserting it provided a license
to Defendant under the contested patent, U.S. Patent No. 6,
955, 677 (“the '677 Patent”). (ECF No. 180.)
Anglefix filed a reply on October 14, 2016 (ECF No. 183), and
Defendant filed a sur-reply on October 18, 2016 (ECF No.
186). On November 3, 2016, the Court held a telephonic motion
hearing. (Min. Entry, ECF No. 189.)
has numerous nuanced terms by which a party may relinquish
its rights, including by release, waiver, or
covenant. A party may even relinquish its rights by
multiple means. Regardless of the means, however, courts
assess the relinquished rights pursuant to the general
principles of contract law. Unless the contract contains a
choice-of-law provision, a contract is generally subject to
the law of the state in which it was formed. This is equally
true in the patent context. See, e.g., Already
v. Nike, 133 S.Ct. 721 (2013); Wi-LAN USA, Inc. v.
Ericsson, Inc., 574 F.App'x 931, 937 (Fed. Cir.
2014)(interpreting New York contract law to a non-assert
provision in patent case); Transcore, LP v. Elec.
Transaction Consultants Corp., No. CIV.A.3:05-CV-2316-K,
2008 WL 2152027, at *4 (N.D. Tex. May 22, 2008),
aff'd, 563 F.3d 1271 (Fed. Cir. 2009)
(“examin[ing] the language of the Covenant Not to Sue
to determine whether, under applicable contract
interpretation principles, it is a conditional license that
precludes patent exhaustion.”).
instant case, UNC's Waiver, formed in Tennessee and
lacking a choice-of-law provision, is subject to Tennessee
contract law in Tennessee, an enforceable contract must have
an offer, acceptance, and consideration. Generally, an offer
is “[t]he act . . . of presenting something for
acceptance.” OFFER, Black's Law Dictionary (10th
ed. 2014). Offers commonly express how the offeror intends to
be bound, and may require a particular type of acceptance. An
offer may also be conditional, such that the contract will
not take effect until some contingent prerequisite has been
satisfied. Safeco Ins. Co. of America v. City of White
House, Tenn., 36 F.3d 540, 30 Fed. R. Serv. 3d 598, 1994
FED App. 0345P (6th Cir. 1994) (citing Buchanan v.
Johnson, 595 S.W.2d 827 (Tenn. Ct. App. 1979); see
also Demoville & Co. v. Davidson Cty., 87 Tenn. 214,
10 S.W. 353, 355 (1889) (finding “the release is
conditional upon the existence of certain facts, or upon
acceptance of certain terms. . .”). Therefore,
irrespective of clear acceptance, the contract is not
enforceable until certain facts exist. Real Estate Mgmt.,
Inc. v. Giles, 41 Tenn.App. 347, 353, 293 S.W.2d 596,
599 (1956)(“A conditional contract is a contract whose
very existence and performance depends upon the happening of
some contingency or condition expressly stated therein. .
.”). To ascertain an offer's terms, whether
conditional or otherwise, Tennessee law mandates that courts
construe an offer by its clear and unambiguous meaning.
Sutton v. First Nat. Bank of Crossville, 620 S.W.2d
526 (Tenn. Ct. App. 1981).
contract is unambiguous, the court's construction is
restricted to the four corners of the contract. The court must
also consider the entire contract “in determining the
meaning of any or all of its parts.” Adkins v.
Bluegrass Estates, Inc., 360 S.W.3d 404, 411 (Tenn. Ct.
App. 2011) (citing Aetna Cas. & Surety Co. v.
Woods, 565 S.W.2d 861, 864 (Tenn. 1978)). Each provision
of the contract must be construed “in harmony with each
other . . . to promote consistency and to avoid repugnancy
between the various contract provisions. . . .”
Teter v. Republic Parking Systems, Inc., 181 S.W.3d
330, 342 (Tenn. 2005)(quoting Guiliano v. Cleo,
Inc., 995 S.W.2d 88, 95 (Tenn.1999)).