Litigation

Sonus Networks, Inc. v. Metaswitch Networks Ltd. et al.

settled and dismissed with prejudice

2:18-cv-00155

Filed
2018-04-18

Patents at issue (1)

6885658

Summary

Sonus Networks, Inc. sued Metaswitch Networks Ltd. and Metaswitch Networks Corp. in a case involving U.S. 6,885,658. The case was stayed pending appeal of the related -33 case, then settled and dismissed with prejudice in 2019.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

I'll research this case and its context before drafting.

Let me dig into the related Genband/-33 case, the 2018 companion suit, and the IPR/appeal history.

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

I'll research this case systematically. Let me start with several parallel searches.

Excellent foundational material. Now let me dig into the specific docket and the related appeal.

Sonus Networks, Inc. v. Metaswitch Networks Ltd. — Litigation Timeline & Outcome

No. 2:18-cv-00155 (E.D. Tex., Marshall Div.), Judge Rodney Gilstrap

Bottom line: This was a short-lived follow-on case. Sonus (by then part of Ribbon Communications) re-asserted U.S. 6,885,658 — the same patent it had already won on in Genband US LLC v. Metaswitch, No. 2:14-cv-00033 ("the -33 case") — against Metaswitch's allegedly "redesigned" products, adding willfulness and false-advertising theories. There was no Markman ruling, no trial, no verdict, and no JMOL/fee decision. The case was pleaded through a Rule 12(b)(6) motion and a first amended complaint, then stayed on 2019-03-25 pending Metaswitch's Federal Circuit appeal in the -33 case, settled through a mediator's proposal on 2019-04-22 (part of a six-case global deal worth $63.0 million plus a cross-license), and dismissed with prejudice on 2019-07-01.

1. Filing & initial pleadings

Date Event / Docket
2018-04-18 Sonus Networks, Inc. files complaint against Metaswitch Networks Ltd. (UK) and Metaswitch Networks Corp. (US) in E.D. Tex., Marshall Division. Asserted patent: U.S. 6,885,658. Per Ribbon's SEC disclosure, the complaint alleged that Metaswitch was continuing to infringe the -33 patents through sales of "redesigned" products, sought a willfulness finding, and separately alleged false advertising (Lanham Act) based on Metaswitch statements about the first lawsuit. Ribbon 10-Q (2019-05-02), https://content.edgar-online.com/ExternalLink/EDGAR/0001708055-19-000014.html
2018-05-10 Metaswitch files jury demand (Dkt. 17) and corporate disclosure statement (Dkt. 18) identifying Metaswitch Networks Ltd. as parent of Metaswitch Networks Corp.
2018-05-10 → 2018-05-14 Metaswitch files a sealed Rule 12(b)(6) motion to dismiss (Dkt. 16; redacted version Dkt. 19, 2018-05-14), with motion to seal (Dkt. 15) granted 2018-05-24 (Dkt. 20).
2018-05-25 Sonus files sealed response (Dkt. 22); public redaction Dkt. 25 (2018-05-30).
2018-06-08 → 2018-06-11 Metaswitch reply (Dkt. 31, sealed; redaction Dkt. 34); extensions granted (Dkt. 27, 32).
2018-06-22 Sonus files sur-reply in opposition to the motion to dismiss (Dkt. 38).
2018-06-20 Sonus files Notice of Discovery Disclosure (Dkt. 37) — i.e., Patent Rule 3-1/3-2 infringement contentions and disclosures.

Note on counterclaims: In parallel Sonus-heritage patent suits filed 201

In the news

What the press has reported about this case, summarized with links to the source articles.

I'll search for press coverage of this case from multiple angles.

What the press actually reported

Bottom line on coverage: I found no Reuters, Bloomberg Law, Law360 news article, Ars Technica, The Verge, IPWatchdog, Patently-O, EFF, or JD Supra piece specifically about Sonus Networks v. Metaswitch (No. 2:18-cv-00155). Almost all coverage of this dispute is (a) the plaintiff's own press release recycled by trade outlets, (b) short trade-press rewrites of it, and (c) legal-trade analysis of the parent case, GENBAND v. Metaswitch (No. 2:14-cv-33), whose judgment and Federal Circuit appeal drove the -155 case. I found no press reporting at all on the April 2019 settlement or its terms.

The filing. TMCnet carried the April 18, 2018 Ribbon Communications press release announcing that "its wholly owned subsidiary filed a patent infringement lawsuit against Metaswitch in the United States District Court for the Eastern District of Texas," seeking "enhanced damages for Metaswitch's continued infringement of seven Ribbon patents (from Ribbon subsidiary GENBAND) that Metaswitch has already been found to infringe in an earlier lawsuit," plus damages for "false and misleading statements to the market regarding the earlier suit." The same release was republished by TelecomDrive. Both trace the suit to the March 22, 2018 Final Judgment in the earlier case, which they say awarded "$8.9M plus interest (to cover a two‑year period of past infringement)" and "$368,046 in costs," with court-set escalating royalty rates for a further two-year period. Ribbon said it would seek a higher royalty rate and willfulness enhancement against Metaswitch's "redesigned" products. Note that the release describes seven GENBAND patents, whereas the case metadata in this matter lists only U.S. 6,885,658 — the '658 patent is one of the seven asserted in the 2014 case, so the metadata appears to capture a single patent rather than the full -155 complaint.

Trade-press reaction and its errors. UC Today ran a piece (dated May 4, 2018 per a University of Alabama law-review citation; the page itself is undated) summarizing the new suit as Ribbon "seeking damages for continued infringement, claiming that the MetaSwitch redesigned products are still stepping on the toes of the company's patents," and characterizing the case as "a long and complex one." It is the most detailed independent take I located, but it contains a factual error: it says "the original lawsuit was filed by GENBAND in 2016," when the 2014 complaint (2:14-cv-33) was filed in January 2014 and the jury verdict came in January 2016 — an example of trade coverage compressing the timeline beyond what the record supports. An earlier, undated UC Today piece covered the January 2016 verdict and asserted, without citation, that "both companies have been able to move on from the legal battle in a positive way" — a take that the subsequent 2018–2019 wave of litigation and Metaswitch's November 2018 antitrust suit against Ribbon rather undercut.

Coverage of the underlying verdict and appeal that framed this case. TelecomTV (Jan. 25, 2016) ran GENBAND's announcement that the January 15, 2016 Marshall jury found Metaswitch infringed seven GENBAND patents — expressly including the '658 patent — awarded "$8.1 million" for January 2014–August 2015, and confirmed validity; it quoted CEO David Walsh thanking the court and jury. Wiley's Federal Circuit Patent Bulletin (July 11, 2017) and Finnegan's LES Insights (Aug. 8, 2017) reported the Federal Circuit's July 10, 2017 vacatur and remand of the injunction denial in Genband US LLC v. Metaswitch Networks Corp., stating the damages figure as $8,168,400; Finnegan framed the holding as "demonstrating that patented features are 'a driver' of consumer demand may be sufficient," which is why the injunction fight — not the -155 damages case — got the analyst attention. VitalLaw carried a same-day summary of the appeal. On the parallel PTAB track, Law360's PTAB case page and Docket Alarm show Metaswitch's IPR2019-00051 against Sonus terminated as settled on June 18, 2019 (I saw case-tracking records only, not an article).

The settlement and dismissal were not reported. The only public record of the outcome is the docket: mediation before retired Judge Jeff Kaplan produced a "post-mediation settlement" (Dkt. 112, April 22, 2019), the parties filed a joint notice of settlement and stay of the Federal Circuit appeal (Dkt. 113, April 25, 2019), and Judge Gilstrap dismissed with prejudice on July 1, 2019 (Dkt. 116), as reflected on the Justia docket. Ribbon's public filings confirmed the wave of related Metaswitch litigation but disclosed no settlement amount and said it did not expect the matters to have "a material adverse effect" on its business (Ribbon SEC filing). So: no damages number, no settlement figure, and no market-impact analysis for the -155 case appears in the press — the only quantified figures in circulation ($8.1M / $8,168,400 jury award; $8.9M judgment; $368,046 costs) belong to the 2014 parent case, not to -155.

Sources

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research the docket and counsel of record for the plaintiff in this case.

Bottom line

Plaintiff Sonus Networks, Inc. (which by 2018 was operating as Ribbon Communications Operating Company following the Sonus/GENBAND merger, and which is the parent entity behind the earlier GENBAND v. Metaswitch -33 case) was represented in 2:18-cv-00155 by a Baker Botts L.L.P. team out of Dallas, with a local E.D. Tex. counsel appearing on the docket and additional attorneys appearing pro hac vice. The docket is closed (dismissed with prejudice on 7/1/2019, Dkt. 116), so the roster below is final rather than an early snapshot.

Sourcing caveat up front: the attorney lists below come from third‑party docket aggregators (Justia/UniCourt docket summaries for 2:18‑cv‑00155), the docket-entry "filed by" signature lines reproduced in those summaries, firm biographies, and a hearing transcript excerpt. I was not able to pull the PACER docket sheet itself or the complaint's signature block in this session, so firm/office assignments that are not corroborated by a firm bio are flagged as unconfirmed.

Plaintiff's counsel of record

Attorney Role Firm / office Note
Kurt M. Pankratz Lead counsel (first chair) Baker Botts L.L.P., Dallas, TX (2001 Ross Ave.) — Chair, Dallas IP Department Signed the case-terminating Agreed Motion to Dismiss with Prejudice (Dkt. 115, 6/28/2019). Longtime first-chair patent/trade secret trial lawyer; Chambers-ranked, IAM Patent 1000; notable results include a reported $279M patent verdict for a U.S. company against a foreign competitor and a 2023 trade secret verdict of ~$210M.
Jamie R. Lynn Core trial team; argued at the 3/20/2019 motions hearing Baker Botts L.L.P. — his admissions are D.C./N.Y./Mass./Fed. Cir. (Washington, D.C.–based practice) His Baker Botts bio expressly lists "Sonus Networks, Inc. d/b/a Ribbon Communications Operating Company v. Metaswitch Networks Ltd. et al (E.D. Tex.) – represented Plaintiff in asserting 20 patents across two litigations." The 3/20/2019 hearing transcript in this case shows "Jamie Lynn … on behalf of Ribbon" arguing opposite Metaswitch's Aaron Pirouznia.
Susan Cannon Kennedy Case/motion practice (filings signed throughout) Baker Botts L.L.P. (Dallas) — office not independently confirmed Signed the Joint Notice of Settlement and Notice of Stay of Federal Circuit Appeal (Dkt. 113, 4/25/2019), the joint protective-order motion (7/23/2018), and the joint e-discovery order motion (1/2019).
Douglas Mark Kubehl Filing attorney; later sought to withdraw Baker Botts L.L.P. (Dallas) — office not independently confirmed Signed the Sealed First Amended Complaint and exhibits (Dkt. 63, 12/31/2018); also filed a Motion to Withdraw as Attorney (9/17/2018) — so his appearance period is not co-extensive with the whole case.
Jeffery Derek Baxter Motion practice (stay briefing) Firm not confirmed from the sources retrieved (listed as a Sonus attorney on the -155 docket) Filed the sealed opposition to Metaswitch's motion to stay with his own declaration (Dkt. 56, 11/21/2018), the sur-reply (12/2018), and the redacted summary-judgment materials with a "Declaration of Baxter" (Dkt. 100, 3/7/2019).
Deron R. Dacus Appears to be local counsel (E.D. Tex.) — inference from the docket role, not confirmed Firm/office not confirmed — do not treat as verified Listed as a Sonus/plaintiff attorney on the -155 docket. E.D. Tex. practice commonly requires local counsel where the lead firm (Baker Botts) has no office in the district, which fits this pattern, but I could not verify his firm, office, or appearance date.
Christopher Scott Ponder Plaintiff-side attorney on the docket Firm not confirmed Listed among plaintiff attorneys on the -155 docket summary. No filing signature or firm bio corroborated in this session.
Chad C. Walters Baker Botts team member (appears with Pankratz in Baker Botts signature blocks and in the related Sonus/Ribbon filings) Baker Botts L.L.P., Dallas (SBN 24034730 in Baker Botts filings) Included here as a probable team member; his appearance specifically in -155 is not independently confirmed.

Attorneys sometimes associated with the case who were not counsel of record

  • Frances Mackay (now O'Melveny & Myers LLP, Dallas) — her O'Melveny bio states she "represented plaintiff Sonus" in this case and "worked with plaintiff's expert to prepare [the] infringement report, prior to favorable settlement." That is a substantive supporting role, but no docket entry in the sources reviewed shows her entering an appearance, and her firm in 2018–19 is not established by anything I retrieved. Treat her as a team member who may not have been of record; verify against PACER before citing her as counsel of record.
  • In-house counsel: no Sonus/Ribbon in-house attorney appears on the -155 docket in the sources reviewed. Corporate disclosure/party identification ran through outside counsel.
  • Metaswitch side (for contrast): Quinn Emanuel (David Eiseman IV, Brian E. Mack) and Mann Tindel & Thompson (James Mark Mann, Gregory Blake Thompson), with Fish & Richardson handling the parallel IPRs (e.g., IPR2019-00795). Useful because it confirms this was a competitor-vs-competitor telecom equipment case, not a PAE suit.

Practical notes and verification steps

  1. Confirm on PACER. The cleanest confirmation of "of record" status is the CM/ECF attorney list for 2:18‑cv‑00155 and the signature block of Dkt. 1 (Complaint) and Dkt. 63 (First Amended Complaint, sealed). The aggregator pages I relied on list plaintiff attorneys for the case as Dacus, Kubehl, Kennedy, Pankratz, Baxter, and Ponder — that grouping should be checked against the docket because aggregators sometimes merge co-plaintiff/related-case attorney rolls.
  2. Sealed filings. Several key Sonus submissions are sealed or filed under seal with redacted versions (Dkt. 22 sealed response to the motion to dismiss; Dkt. 56 sealed stay opposition; Dkt. 64 sealed motion for partial summary judgment and permanent injunction). Signature identities are visible from the redacted counterparts, but the substance is not public.
  3. Withdrawal. At least one Baker Botts attorney (Kubehl) moved to withdraw in September 2018, so the appearance roster changed mid-case; Pankratz and Kennedy were signing filings through the June 2019 dismissal.
  4. Two related Sonus/Ribbon suits. Lynn's bio refers to "20 patents across two litigations" (this case plus 2:18‑cv‑00058, and the earlier GENBAND v. Metaswitch 2:14‑cv‑00033 that produced the $8.17M jury verdict and the Federal Circuit appeal that drove the stay motion here). Counsel overlap across those matters is substantial, so attorney lists for -155 should not be conflated with -58 or -33 without checking each docket.

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research the docket and counsel appearances for the defendants.

Found strong leads: Quinn Emanuel (Eiseman, Verhoeven, Mack, Lordgooei) for Metaswitch. Now let me confirm local counsel and complete the roster.

Let me pull the docket sheet and attorney attendance record for precision.

Counsel of Record — Defendants Metaswitch Networks Ltd. & Metaswitch Networks Corp.

Bottom line: Metaswitch was represented by Quinn Emanuel Urquhart & Sullivan LLP as lead counsel (San Francisco office), with Mann | Tindel | Thompson, P.C. (Tyler, Texas) as local counsel. Six notices of appearance were filed for the two Metaswitch entities between June 28 and July 25, 2018 (Dkts. 35, 36, 39, 40, 41, 42, 48), and Quinn Emanuel associates continued to file substantive papers through the January–March 2019 motion practice. Metaswitch used a different firm — Fish & Richardson P.C. — for its parallel PTAB work, so that firm does not appear on this docket.

Consistent with the prior section: because the case was stayed, settled, and dismissed before Markman/trial, there was no trial-team expansion, no verdict, and no fee/JMOL briefing in which additional defense counsel would have appeared in a substantive role.

1. Lead / national counsel — Quinn Emanuel Urquhart & Sullivan LLP

Attorney Role Firm & office Docket / basis Notes
David Eiseman, IV Lead counsel for both Metaswitch entities; principal declarant on all dispositive motion papers Quinn Emanuel, San Francisco, CA (also serves as the firm's patent-litigation leadership) Notice of Appearance, Dkt. 41 (July 5, 2018) "on behalf of All Defendants"; every declaration supporting the Rule 12(b)(6) motion and the stay motion is his (Dkts. 16/19, 31/34, 55, 58/59, 83, 92) Longtime Quinn Emanuel patent trial lawyer; he led the same client's defense across the GenBand US LLC v. Metaswitch Networks litigation, No. 2:14-cv-00033 (E.D. Tex.), including the 2016 jury/bench phases and the ensuing Federal Circuit appeal.
Charles Kramer Verhoeven Lead/senior counsel — e-filed the merits briefs for the stay motion Quinn Emanuel, San Francisco, CA Notice of Appearance, Dkt. 42 (July 5, 2018) Quinn Emanuel partner and frequent E.D. Tex. patent trial and Federal Circuit argument counsel; co-counsel with Eiseman on Metaswitch matters.
Brian E. Mack Counsel (appeared for "All Defendants" at the outset of scheduling) Quinn Emanuel, San Francisco, CA Notice of Appearance, Dkt. 40 (July 2, 2018) Quinn Emanuel patent litigator (PlaInSite lists him as defendant-side counsel in this case: https://www.plainsite.org/attorneys/quinn-emanuel-urquhart-and-sullivan-llp/brian-e-mack/).
Iman Lordgooei Associate — case-management and dispositive motion practice (extension motions, motion to dismiss/strike the First Amended Complaint) Quinn Emanuel (San Francisco Bay Area) ECF filer on the Jan. 9, 2019 extension motions and the corrected motion to dismiss and motion to strike (Dkt. 78, 79) Junior/mid-level associate handling the Rule 12/12(f) round against Ribbon's amended pleading.
Jonathan Tse Associate — drafted the sealed Rule 12(b)(6) moving papers Quinn Emanuel "Affidavit of Jonathan Tse" attached to the sealed motion to dismiss (Dkt. 16) and its redaction (Dkt. 19, May 14, 2018) Papers only; I did not locate a separate notice of appearance for him on this docket.

Additional Quinn Emanuel appearance, related case only: Aaron Pirouznia argued claim construction for Metaswitch at the April 2019 Markman hearing in the companion case Sonus/Ribbon v. Metaswitch, No. 2:18-cv-00057-RWS (E.D. Tex.) (Markman transcript, Apr. 5, 2019, lodged in the PTAB record for IPR2019-00052). In the -155 case no Markman hearing was ever held — the parties only exchanged a Joint Claim Construction and Prehearing Statement (Dkt. 80, Jan. 23, 2019) before the case was stayed — so I cannot confirm a -155-specific appearance by Pirouznia. Flagging this as an inference, not a docket fact for -155.

2. Local counsel — Mann | Tindel | Thompson, P.C. (Tyler, TX)

Attorney Role Firm & office Docket / basis Notes
James Mark Mann Local counsel for both Metaswitch entities Mann | Tindel | Thompson, P.C., Tyler, Texas (firm attribution inferred — see caveat) Notice of Appearance, Dkt. 35 (June 12, 2018) Tyler, Texas trial lawyer who routinely serves as E.D. Tex. local counsel in Marshall/Tyler patent dockets, including for Metaswitch in the related -33 litigation.
Gregory Blake Thompson Local counsel Mann | Tindel | Thompson, P.C., Tyler, Texas (same caveat) Notice of Appearance, Dkt. 36 (June 13, 2018) Same firm/role; E.D. Tex. patent local-counsel practice.

3. Unresolved appearance

Attorney Status
Lawrence Nelson Hall Notice of Attorney Appearance "on behalf of Metaswitch Networks Corp., Metaswitch Networks Ltd," Dkt. 39 (June 28, 2018). I was unable to confirm his firm/office from the sources retrieved, and the docket text does not name a firm. Do not attribute him to a firm without pulling the PDF of Dkt. 39. (He may be in-house or local counsel; I did not verify either.)

Sourcing caveats — please read before relying on firm affiliations