TD Professional Services v. Truyo Incorporated

Opinion

1 WO 2 3 4 5 6 IN THE UNITED STATES DISTRICT COURT 7 FOR THE DISTRICT OF ARIZONA

9 TD Professional Services, No. CV-22-00018-PHX-MTL

10 Plaintiff, ORDER

11 v.

12 Truyo Incorporated, et al.,

13 Defendants. 14 15 Pending before the Court is a motion for partial summary judgment (Doc. 177) filed 16 by Defendants Truyo Inc. and Interedge Inc. (collectively, “Defendants”). Defendants 17 move for summary judgment on Plaintiff TD Professional Services’ (“Plaintiff”) patent 18 infringement and promissory estoppel claims.1 The motion is fully briefed. (Docs. 177, 19 202, 217.) The Court held oral argument on the motion on November 7, 2024. (Doc. 218.) 20 For the forthcoming reasons, the Court grants Defendants’ motion (Doc. 177). 21 I. BACKGROUND 22 Plaintiff owns U.S. Patent Nos. 10,304,062 and 10,628,833 (the “’062 Patent” and 23 the “’833 Patent,” respectively; collectively, the “Patents-in-Suit”). (Doc. 111 at 1.) The 24 ’062 Patent was issued May 28, 2019, and the ’833 Patent was issued April 21, 2020. 25 1 Defendants asserted seven counterclaims against Plaintiff (see Doc. 65), and neither party 26 moved for summary judgment on these. The counterclaims are: (1) Declaratory Judgment of Non-Infringement of the ’833 Patent, (2) Declaratory Judgment of Non-Infringement of 27 the ’062 Patent, (3) Declaratory Judgment of Invalidity of the ’833 Patent, (4) Declaratory Judgment of Invalidity of the ’062 Patent, (5) Declaratory Judgment of Unenforceability, 28 (6) Declaratory Judgment of Co-Ownership, (7) Violation of Arizona Patent Troll Prevention Act, A.R.S. §§ 44-1421–1424. 1 (Doc. 177-1 at 145, 162.) The Patents-in-Suit claim a computer system and methods that 2 employ blockchain-based technology for data regulation compliance. (Id.) Defendants 3 offer a compliance software product for the European Union’s General Data Protection 4 Regulation (“GDPR”). (Doc. 65 ¶ 22.) Plaintiff alleges that Intraedge’s products and 5 related methods directly infringe the Patents-in-Suit and that Intraedge induced Truyo to 6 infringe the same. (Doc. 60 ¶¶ 81-96.) The Court discussed the Patents-in-Suit in detail in 7 its February 3, 2023 Claim Construction Order. (Doc. 111.) Rather that repeat them here, 8 the Court will discuss any relevant facts in the forthcoming analysis. 9 Plaintiff also alleges a promissory estoppel claim against Defendants. (Doc. 60 10 ¶¶ 97-101.) Back in 2017, Plaintiff’s principal, Scott Heins, began working for Interedge 11 to develop “GDPR Edge,” an earlier version of the accused product, the “Truyo System” 12 or the “Truyo Platform.” (Doc. 177-4 at 3-5; Doc. 177-5 at 3-4; Doc. 202-12 at 3-5.) 13 Plaintiff entered into a non-disclosure agreement with Interedge in April 2017 to facilitate 14 the exchange of confidential information. (Doc. 177-1 at 40; Doc. 197 at 2-5.) On 15 September 18, 2017, Interedge and Plaintiff signed the IP Licensing Term Sheet (“Term 16 Sheet”), which provided that the parties agreed to “negotiate in good faith toward a 17 definitive agreement” with respect to licensing the technology from Plaintiff. (Doc. 202-7 18 at 2.) The parties never entered “a definitive agreement” after the Term Sheet expired on 19 November 21, 2017. (Doc. 177-5 at 3-4.) Plaintiff alleges that Interedge promised to:

20 1) “take proper care” to protect Plaintiff’s interest in its 21 technology; 2) “only use the IP pursuant to the knowledge of [Plaintiff] . . . without any exceptions”; 3) agree that any 22 improvements to the intellectual property developed by 23 Interedge during the commercialization process would be the sole property of Plaintiff; and 4) never produce any product 24 that potentially replicated or “competed” with Plaintiff’s 25 technology.

26 (Doc. 60 ¶ 98.) Plaintiff claims that “[t]hese promises were acknowledge in the [T]erm 27 [S]heet signed on September 18, 2017.” (Id.) Plaintiff alleges that it detrimentally relied on 28 these promises by Interedge. (Id. ¶¶ 99-100.) 1 II. LEGAL STANDARD 2 A court must grant summary judgment “if the movant shows that there is no genuine 3 dispute as to any material fact and the movant is entitled to judgment as a matter of law.” 4 Fed. R. Civ. P. 56(a); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986). The 5 movant bears the initial responsibility of presenting the basis for its motion and identifying 6 those portions of the record, together with affidavits, if any, that it believes demonstrate 7 the absence of a genuine issue of material fact. Celotex, 477 U.S. at 323. 8 If the movant fails to carry its initial burden of production, the nonmovant need not 9 produce anything. Nissan Fire & Marine Ins., Ltd. v. Fritz Co., Inc., 210 F.3d 1099, 1102- 10 03 (9th Cir. 2000). But if the movant meets its initial responsibility, the burden shifts to the 11 nonmovant to demonstrate the existence of a factual dispute and that the fact in contention 12 is material, and that the issue is genuine, i.e., the evidence is such that a reasonable jury 13 could return a verdict for the nonmovant. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 14 248, 250 (1986); see Triton Energy Corp. v. Square D. Co., 68 F.3d 1216, 1221 (9th Cir. 15 1995). The nonmovant need not establish a material issue of fact conclusively in its favor. 16 First Nat’l Bank of Ariz. v. Cities of Serv. Co., 391 U.S. 253, 288-89 (1968). The 17 nonmovant must, however, “come forward with specific facts showing that there is a 18 genuine issue for trial.” Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 19 574, 587 (1986) (quotations and citation omitted); see Fed. R. Civ. P. 56(c)(1). 20 At summary judgment, a court must not “weigh the evidence and determine the 21 truth” but to “determine whether there is a genuine issue for trial.” Anderson, 477 U.S. at 22 249. In its analysis, a court must believe the nonmovant’s evidence and draw all inferences 23 in the nonmovant’s favor. Id. at 255. A court need consider only the cited materials, but it 24 may consider any other materials in the record. Fed. R. Civ. P. 56(c)(3). 25 III. ANALYSIS 26 A. Patent Infringement 27 Plaintiff alleges claims of direct infringement (literally or under the doctrine of 28 equivalents) and inducement to infringe both patents ’062 and ’833. (Doc. 60 at 16-19.) 1 Defendants argue that the accused product cannot be infringing the Patents-in-Suit because 2 the asserted claim limitations require hardware, and the accused product is solely a 3 software product. (Doc. 177 at 6, 16-18.) Specifically, Defendants claim that the accused 4 product does not contain an “automated compliance network appliance,” a “network 5 interface connection,” and a “data collection terminal”—all physical hardware. (Id.) 6 Defendants also alternatively argue that the accused product does not have a “data lake” 7 limitation. (Id. at 18-20.) 8 The Court adopted the following constructions for the claim terms at issue here in 9 its February 3, 2023 Claim Construction Order.

10 Claim Term Term Location Adopted Construction 11 “automated ’062 Patent, Cl. 17(c) A physical device (having a processor, 12 compliance ’833 Patent, Cl. 18(c) memory and local storage) network appliance” 13 “network interface ’062 Patent, Cl. 17(c) A physical USB drive or physical router 14 connection” ’833 Patent, Cl. 18(c) “data collection ’062 Patent, Cl. 17(a) A terminal for collecting data that 15 terminal” ’833 Patent, Cl. 18(a) includes a compliance device driver 16 “data lake” ’062 Patent, Cl. 17(e) A data repository that stores raw, ’833 Patent, Cl. 18(e) unstructured data, and is not a database 17 (Doc. 111 at 5.) 18 Patent infringement analysis proceeds in two steps: (1) the Court construes the 19 asserted claims as a matter of law; and (2) the factfinder compares the properly construed 20 claims to the accused device. Niazi Licensing Corp. v. St. Jude Med. S.C., Inc., 30 F.4th 21 1339, 1350-51 (Fed. Cir. 2022). “Summary judgment of noninfringement is proper when 22 no reasonable jury could find that every limitation recited in a properly construed claim is 23 found in the accused device either literally or under the doctrine of equivalents.” Advanced 24 Steel Recovery, LLC v. X-Body Equip., Inc., 808 F.3d 1313, 1317 (Fed. Cir. 2015). 25 As an initial matter, “[p]atent rights are created only upon the formal issuance of the 26 patent.” GAF Bldg. Materials Corp. v. Elk Corp. of Dallas, 90 F.3d 479, 483 (Fed. Cir. 27 1996); 35 U.S.C. § 154(a). Much of Plaintiff’s evidentiary support predates the ’062 patent 28 1 issue date of May 28, 2019. (See, e.g., Doc. 202 at 5-6, 20.) As such, the Court focuses its 2 analysis using evidence from May 28, 2019, and onward. 3 1. Direct Infringement 4 Defendant argues that the accused product is exclusively software. (Doc. 177 at 6, 5 16-18.) The Court defined both “automated compliance network appliance” and “network 6 interface connection” as “physical” components in the Claim Construction Order. 7 (Doc. 111 at 5.) 8 Defendants provide ample evidence that the accused product consists of software 9 only. Dr. Jonathan Katz, Defendants expert, attests that the accused product “consists of 10 software, exclusively” and that “[n]o hardware is provide as part of the [accused product’s] 11 sale.” (Doc. 177-3 at 7, 10; see also Doc. 181 at 14-16.) In addition, Defendants’ employee 12 Rod Forsythe attests that by the end of 2018 he began to develop “a software solution 13 lacking any of the cumbersome hardware components of the GDPR Edge platform and 14 written in an entirely different programming language” and this “software solution became 15 known as the ‘Truyo’ platform.” (Doc. 177-4 at 4-5; see also Doc. 181 at 76-81.) Mr. 16 Forsythe explains while citing to sample buildouts of the accused product that it “does not 17 include any physical hardware, such as (1) a physical [automated compliance network 18 appliance]; (2) a physical network interface connection; and/or (3) a physical data 19 collection terminal.” (Id.) 20 Plaintiff, however, only presents one piece of evidence that the accused device uses 21 hardware after May 28, 2019—deposition testimony from Mr. Heins explaining that, when 22 he was involved as an executive sponsor for a project with a company called Savers, Truyo 23 “was selling and installing and representing to the market as late of December 2020 was 24 the exact same platform that they had built based on my invention.” (Doc. 202-10 at 4.) 25 This testimony alone is not enough to defeat summary judgment. See Villiarimo v. Aloha 26 Island Air, Inc., 281 F.3d 1054, 1061 (9th Cir. 2002) (“However, this court has refused to 27 find a ‘genuine issue’ where the only evidence presented is ‘uncorroborated and self- 28 serving’ testimony.”); Angelette, LLC v. Bradley, 674 F. Supp. 3d 687, 695 (D. Alaska 1 2023) (“Similarly, no genuine dispute exists where the only evidence presented is 2 ‘uncorroborated and self-serving’ testimony.” (citation omitted)); Workman v. Dearborn 3 Nat’l Life Ins. Co., 434 F. Supp. 3d 799, 801 (C.D. Cal. 2020) (same). 4 Plaintiff also relies on deposition testimony from its rebuttal expert, Nick Ferrara, 5 indicating that some hardware may be used in the Truyo System. The deposition excerpt 6 provides: Q. All right. One other question. 7 Is an Intel Retail Gateway device a physical device 8 having a processor, memory, and local storage and the network interface connection therein is a physical USB drive or 9 physical router? 10 A. Yes. In fact, I think there’s a picture of it in one of my reports. If you’ll give me a second, I’ll just point you to it. Let 11 me see where it is. 12 Yeah. I think I discussed this in paragraph 143 of my rebuttal report. One of the presentations points to a device with 13 an Adam CPU, one terabyte of local storage, and a network 14 interface. So this is definitely a hardware component that I’ve 15 seen references to, and I’ve seen emails where someone from 16 Truyo – I forget who – talks about how they expect implementation of the system will drive sales of this kind of 17 device.

18 (Doc. 202-8 at 15-16.) 19 Mr. Ferrara’s testimony, however, does not give the Court sufficient detail to find a 20 material disputed fact. First, Plaintiff does not submit the rebuttal expert report for the 21 Court to examine which picture Mr. Ferrara’s testimony relies on. Second, the deposition 22 testimony does not offer the date of the emails, meaning the email could predate May 23 2019.2 Third, the latter part of Mr. Ferrara’s testimony could mean the implementation of 24 the Truyo System software would drive independent sales of the “device,” the Intel Retail 25 Gateway.3 26 2 Plaintiff included in the exhibits an email exchange from October 30, 2018, that discusses 27 GDPR Edge’s use of the Intel Retail Gateway. (See Doc. 197-3.) The Court did not find an email discussing Truyo’s use of the Intel Retail Gateway in the record. 28 3 When Plaintiff initially worked on GDPR Edge in 2017, Interedge contracted with Intel to provide consulting services to provide a proof of concept to use the Intel Retail Gateway 1 Even if this testimony is enough to create a material disputed fact, the Court finds 2 that the accused product still does not have a “data collection terminal.” Defendants argue 3 that the term “data collection terminal” is physical hardware. (Doc. 177 at 11, 16-17.) 4 Plaintiff argues that a “data collection terminal” does not require physical hardware. 5 (Doc. 202 at 8-9.) 6 The Court defined “data collection terminal” as “[a] terminal for collecting data that 7 includes a compliance device driver.” (Doc. 111 at 5, 7-10.) The Court also found a 8 “compliance device driver” as “[s]oftware, resident in the data collection terminal, that 9 intercepts the data input.” (Doc. 111 at 5.) Plaintiff argues that a data collection terminal 10 does not require hardware because the Court explained that “nothing in the intrinsic record 11 requires that the compliance device driver itself be a hardware component within the data 12 collection terminal.” (Doc. 202 at 9; Doc. 111 at 15.) Yet, this only means that a component 13 of the data collection terminal is software, not that the data collection terminal itself can be 14 software or hardware. In fact, the Court explained in its analysis of defining “data 15 collection terminal” that “Plaintiff’s expert testimony that a person of ordinary skill in the 16 art would ordinarily refer to a driver as software that is stored on hardware, . . . .” 17 (Doc. 111 at 15 (emphasis added.)) Meaning, a data collection terminal is hardware that 18 stores the compliance device driver. 19 Defendants provide evidence that a data collection terminal is physical hardware. 20 Dr. Katz explains that the Court’s construction of the term “indicates that a data collection 21 terminal should be hardware-based” and that “a person of ordinary skill in the art would 22 understand ‘terminal’ to mean a physical device that stores (or ‘includes’) software.” 23 (Doc. 177-1 at 181; Doc. 177-3 at 9.) Mr. Heins even acknowledges a data collection 24 terminal is typically a physical device. (Doc. 177-1 at 91.) Furthermore, Defendants’ expert 25 explains that “there is no hardware data collection terminal operated by Truyo.” (Doc. 177- 26 1 at 183.) 27 Finally, Plaintiff does not identify any evidence in the record that the accused 28 device as part of its development of the GDPR Edge. (Doc. 197-1 at 2-4.) 1 product uses a data collection terminal in the form of software or hardware. Even at oral 2 argument the Court asked, “Where in the evidentiary record does [Defendants’] accused 3 product use a data collection terminal?” (Doc. 220 at 66.) Plaintiff’s counsel responded 4 that “the data collection terminal is a term in the patent” and explained again that the Court 5 found “[n]othing in the intrinsic record requires that the compliance device driver itself be 6 a hardware component within the data collection terminal.” (Id.) Plaintiff’s counsel did not 7 identify in the record where the accused product uses a data collection terminal comprised 8 of software or hardware. (See id.) 9 Given these undisputed facts viewed in the light most favorable to Plaintiff, the 10 Court finds that the accused product does not contain a data collection terminal or its 11 equivalent, and therefore, the accused product is not directly infringing either Patents-in- 12 Suit.4 See Advanced Steel Recovery, LLC, 808 F.3d at 1317; Bird Barrier Am., Inc. v. Bird- 13 B-Gone, Inc., 676 F. Supp. 2d 929, 931 (C.D. Cal. 2009) (“If the plaintiff cannot prove that 14 the defendant’s device has every claim limitation, summary judgment should be granted in 15 the defendant’s favor.”). 16 Accordingly, the Court grants Defendants’ motion with respect to the claims of 17 direct infringement of the Patents-in-Suit.5 18 2. Inducement to Infringe 19 Plaintiff alleges an inducement to infringe claim in conjunction with the direct 20 infringement claim. Yet, without any direct infringement, there can be no inducement to 21 infringe. Niazi Licensing Corp., 30 F.4th at 1351; Kyocera Wireless Corp. v. Int’l Trade 22 Comm’n, 545 F.3d 1340, 1353-54 (Fed. Cir. 2008) (“To prevail on inducement, the 23 patentee must show, first that there has been direct infringement, and second that the 24 alleged infringer knowingly induced infringement and possessed specific intent to

25 4 “An element in the accused product is equivalent to a claim element if the differences between the two are insubstantial to one of ordinary skill in the art.” Cortland Line Co. v. 26 Orvis Co., 203 F.3d 1351, 1359 (Fed. Cir. 2000) (citation omitted). Plaintiff does not argue that the accused product contains the equivalents of the claim terms raised by Defendants, 27 and as such, the Court does not review whether the equivalents exist. (See Doc. 202.) 5 Defendants argue in the alternative that the accused product does not use the claim term 28 “data lake.” The Court need not address this argument because it finds that the accused product does not have a data collection terminal. 1 encourage another’s infringement.”); Largan Precision Co., Ltd v. Genius Elec. Optical 2 Co., 86 F. Supp. 3d 1105, 1117 (N.D. Cal. 2015). Accordingly, the Court will grant 3 Defendants’ motion with respect to the inducement to infringe the Patents-in-Suit claims. 4 B. Promissory Estoppel 5 Defendants argue that a promissory estoppel claim cannot exist as a matter of law 6 because the Term Sheet is a binding contract and the promises alleged are outlined in the 7 Term Sheet. (Doc. 177 at 20-22.) Plaintiff argues that the Term Sheet is not a contract but 8 an agreement to negotiate toward a binding, definitive licensing contract. (Doc. 202 at 16- 9 18.) Plaintiff argues that a reasonable jury could conclude that the Term Sheet was not a 10 contract. (Id. at 18.) Plaintiff also argues that the Term Sheet cannot be a contract because 11 the parties lacked a “meeting of the minds.” (Id. at 18.) 12 Under Arizona law, contract interpretation is a question of law for the Court, not a 13 jury, to decide. Hadley v. Sw. Properties, Inc., 116 Ariz. 503, 506 (1977). “An enforceable 14 contract requires an offer, acceptance, consideration, and sufficient specification of terms.” 15 State Farm Mut. Auto. Ins. Co. v. Frank, 257 Ariz. 228, 234 (App. 2024). “[M]onetary 16 consideration is not always required as consideration. Adequate consideration consists of 17 a benefit to the promisor and a detriment to the promisee.” Carroll v. Lee, 148 Ariz. 10, 13 18 (1986). When interpreting a contract, the Court must first look to “the plain meaning of the 19 words as viewed in the context of the contract as a whole” to determine the parties’ intent. 20 Great W. Bank v. LJC Dev., LLC, 238 Ariz. 470, 475 (App. 2015). 21 A promissory estoppel claim exists when there is “a promise, which the promissor 22 should reasonably foresee would cause the promisee to rely, upon which the promisee 23 actually relies to his detriment.” Satamian v. Great Divide Ins. Co., 257 Ariz. 136, 144 24 (2024) (citation omitted). “Reliance is justified when it is reasonable but is not justified 25 when knowledge to the contrary exists.” Higginbottom v. State, 203 Ariz. 139, 144 (App. 26 2002). “There can be no implied contract where there is an express contract between the 27 parties in reference to the same subject matter.” Chanay v. Chittenden, 115 Ariz. 32, 35 28 (1977); Tohono O’odham Nation v. Ducey, 174 F. Supp. 3d 1194, 1207-08 (D. Ariz. 2016) 1 (“Arizona law prohibits an action based on the promissory estoppel theory of liability if 2 there is an express, written contract on the same subject matter.”). 3 The Court finds that the Term Sheet is a contract as a matter of law. Here, the offer 4 is the opportunity to negotiate a licensing agreement with the prospective terms for the 5 Term Sheet. (Doc. 181 at 144-147.) The acceptance is shown by the signature of each party 6 at the end of the Term Sheet. (Id. at 148.) The consideration given by Plaintiff is the 7 agreement to exclusively negotiate with Defendants, and Defendants receive the 8 opportunity of this exclusivity. (Id. at 146.) Finally, the Term Sheet was “good for 90 days 9 from the date of August 23, 2017.” (Id. at 144.) “Under specific Arizona law, a contract 10 may be formed, under these circumstances, if it is clear that the parties intended to bind 11 themselves to the terms.” Peak Invs. LLC v. Harter Indus., Inc., 2001 WL 34779369, *4 12 (D. Ariz. Oct. 22, 2001) (concluding that a letter of intent “was binding for 120 days and 13 during that time the parties were required to negotiate with each other exclusively” but that 14 no deal was reached because the parties did not enter into a definitive purchase agreement). 15 Plaintiff argues that in Inter-Tel, Inc. v. Bank of America, Arizona, 195 Ariz. 111, 16 116 (App. 1999), the court found that a term sheet was not a contract, and this should apply 17 here. In Inter-Tel, the court reasoned that the term sheet was not a contract because it was 18 accompanied by a letter that explicitly stated the term sheet was to be used to “facilitate 19 negotiations” and “not meant to be and shall not be construed as a commitment or an 20 attempt to define all the terms and conditions.” Id. ¶ 30. 21 Now, the Term Sheet here does contain a provision that indicates it is a tool to 22 facilitate negotiations: “Upon acceptance of this TERM SHEET the parties will promptly 23 negotiate in good faith toward a definitive agreement in respect to licensing of the IP.” 24 (Doc. 179 at 144.) Yet, this Term Sheet also provides additional specific terms than those 25 discussed in Inter-Tel, including incorporating costs and expenses, each parties’ 26 obligations, revenue definition, specific licensing fees and timing of payment, a buy-out 27 provision, and “other usual and customary terms and conditions for arrangement of this 28 nature.” See Inter-Tel, 195 Ariz. at 115-16. (Id at 144-146.) Furthermore, the most striking 1 provision, the “Binding Effect” provision, shows it is a contract:

2 Until acceptance of this TERM SHEET by signature of both 3 BUYER and SELLER the understandings contained herein do not constitute a binding agreement between the parties, but 4 merely express their intent with respect the TERM SHEET. 5 The understandings contained herein shall become binding by signature of both BUYER and SELLER to this TERM SHEET. 6

7 (Id. at 147 (emphasis added).) This provision expressly states that upon signature of the 8 parties the agreements defined in the term sheet became binding. See Johnson Int’l, Inc. v. 9 City of Phoenix, 192 Ariz. 466, 470 (App. 1998) (“A contract may be formed, even if not 10 formally executed, if it is clear the parties intended to bind themselves to the terms.”). 11 Plaintiff finally argues that no “meeting of the minds” occurred. Specifically, 12 Plaintiff claims that Defendants on multiple occasions stated that the Term Sheet was not 13 a contract. (Doc. 202 at 16-18.) A review of the documents submitted by Plaintiff, however, 14 do not show that Defendants deny the existence of a contract. For example, the July 7, 2020 15 letter from Interedge’s counsel explains the Term Sheet is no longer valid because it 16 expired years ago. (Doc. 202-11 at 20.) In an August 4, 2020 letter, Interedge also explains 17 that “the parties had no discussions for nearly three years further shows that both sides 18 understood that the negotiation attempts had ended.” (Doc. 177-1 at 252.) Plaintiff also 19 cites Defendants’ Answer, where they explain again that the Term Sheet constituted an 20 agreement to negotiate that expired within ninety days. (Doc. 65 at 5.) None of the evidence 21 suggests that Defendants disagree that the Term Sheet was a binding contract, only that it 22 was a temporary agreement. Finally, the record shows that even Plaintiff agrees that the 23 Term Sheet was a written agreement. (Doc. 177-1 at 68.) In a deposition, Mr. Heins 24 testified that “My personal opinion was that [the Term Sheet] was an agreement, yes.” (Id.) 25 Therefore, the Court finds that the Term Sheet is a contract. 26 The Court also finds the promissory estoppel claim fails as a matter of law because 27 the promises cited by Plaintiff arise out of the promises made in the Term Sheet. The 28 promises alleged by Plaintiff align with Interedge’s obligations under the Term Sheet || including “take proper care of the entrusted IP and other properties of [Plaintiff], “only use the IP pursuant to the knowledge of [Plaintiff] and within the terms of the || AGREEMENT without any exceptions,” “[a]ny derivative changes or improvements to the 4|| IP performed or developed by INTEREDGE remain the sole property of [Plaintiff],” and || “INTEREDGE shall not, separate from the AGREEMENT, produce, practice, or sell any || products or services that infringe of compete with the IP.” (Compare Doc. 202-7 at 2, 4 7\| (emphasis added), with Doc. 60 ¥ 98.) 8 Defendants do not deny that the Term Sheet expired on November 21, 2017— 9|| meaning that any promises made after the express, written agreement expired could 10 || potentially fall under a promissory estoppel claim. Yet, Plaintiff does not plead, argue, or 11 || provide any evidence of any actionable promises made after the Term Sheet expired. (See Docs. 60, 197, 202.) 13 Accordingly, the Court grants Defendants’ motion for summary judgment with respect to the promissory estoppel claim. 15 IT IS THEREFORE ORDERED granting Defendants’ motion for partial summary judgment (Doc. 177). Summary judgment is awarded to Defendants on □□□□□□□□□□ □ 17 || patent infringement claims (First and Second Cause of Action) and promissory estoppel 18 || claim (Third Cause of Action) (Doc. 60 4 81-101). 19 IT IS FURTHER ORDERED the Clerk of Court must not enter judgment at this 20 || time. 21 IT IS FINALLY ORDERED affirming the trial setting conference set for 22 || Tuesday, December 10, 2024, at 4:00 PM (Doc. 218). 23 Dated this 9th day of December, 2024. 24 WMichak T. Shure 76 Michael T. Liburdi 27 United States District Judge 28

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