Fraunhofer-Gesellschaft Zur Forderung Der Angewandten Forschung E.v. v. Sirius Xm Radio Inc.

United States Court of Appeals
for the Federal Circuit
______________________
FRAUNHOFER-GESELLSCHAFT ZUR
FORDERUNG DER ANGEWANDTEN FORSCHUNG
E.V.,
Plaintiff-Appellant
v.
SIRIUS XM RADIO INC.,
Defendant-Appellee
______________________
2023-2267
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:17-cv-00184-JFB-SRF, Senior
Judge Joseph F. Bataillon.
______________________
Decided: June 9, 2025
______________________
D AVID C. MCP HIE, Irell & Manella LLP, Newport
Beach, CA, argued for plaintiff-appellant. Also repre-
sented by REBECCA C ARSON, BEN J. YORKS ; G RANT WILLIS
G ABRIEL , Los Angeles, CA.
MARK BAGHDASSARIAN, Herbert Smith Freehills Kra-
mer (US) LLP, New York, NY, argued for defendant-appel-
lee. Also represented by ALAN ROY F RIEDMAN, SHANNON H.
HEDVAT , T OBIAS B. J ACOBY , J ASON MOFF , G ARY P.
N AFTALIS .
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FRAUNHOFER- GESELLSCHAFT v. SIRIUS XM RADIO INC. 2
______________________
Before L OURIE, D YK, and REYNA, Circuit Judges.
L OURIE, Circuit Judge.
This case returns after we previously vacated the dis-
trict court’s grant of Sirius XM Radio Inc.’s (“SXM”) motion
to dismiss for failure to state a claim. See Fraunhofer-Ge-
sellschaft zur Förderung der angewandten Forschung e.V.
v. Sirius XM Radio Inc., 940 F.3d 1372 (Fed. Cir. 2019)
(“Fraunhofer I”). Now on summary judgment, the district
court again entered final judgment in favor of SXM, con-
cluding that Fraunhofer-Gesellschaft zur Förderung der
angewandten Forschung e.V.’s (“Fraunhofer”) claims for
infringement of now-expired U.S. Patents 6,314,289,
6,931,084, 6,993,084, and 7,061,997 (“the asserted pa-
tents”) are barred by equitable estoppel. Fraunhofer-Ge-
sellschaft zur Förderung der angewandten Forschung e.V.
v. Sirius XM Radio Inc., No. 17-cv-184, 2023 WL 4420414
(D. Del. July 10, 2023) (“Decision”).
We reverse.
BACKGROUND1
Fraunhofer is a non-profit research organization based
in Munich, Germany, that has spent decades developing
and patenting various inventions relating to multicarrier
modulation (“MCM”) technology. That technology is used
for Digital Audio Radio Service (“DARS”), otherwise known
as satellite radio.
On March 4, 1998, Fraunhofer entered into an agree-
ment (“the Master Agreement”) with WorldSpace Interna-
tional Network, Inc. (“WorldSpace”), granting WorldSpace
1 Additional background can be found in Fraunhofer
I. We recount the relevant facts here for convenience.
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FRAUNHOFER- GESELLSCHAFT v. SIRIUS XM RADIO INC. 3
a “worldwide, exclusive, irrevocable license, with the right
to sublicense,” to various of Fraunhofer’s patents directed
to MCM technology, including those asserted here.
J.A. 1629. Also in 1998, Fraunhofer began a collaboration
with XM Satellite Radio (“XM”) to bring satellite radio to
the United States. Because that work would require use of
the MCM technology protected by the asserted patents,
Fraunhofer told XM that, in light of the Master Agreement,
XM would need to seek a sublicense to those patents from
WorldSpace. That condition was made express in a Firm
Fixed Price Contract (“FFPC”) between XM and Fraunho-
fer. J.A. 1707. XM obtained the requisite “irrevocable”
sublicense, J.A. 1638–58, and, with the help of Fraunhofer,
incorporated the patented MCM technology into its satel-
lite radio system, the XM DARS System, which it launched
in 2001.
Later, in 2008, XM, which had successfully developed
the “high-band” XM DARS System, joined forces with Sir-
ius Satellite Radio, Inc., which had developed its own “low-
band” satellite radio system, to form SXM.2 As part of that
new venture, SXM was faced with the challenge of deter-
mining how to proceed with the distinct low- and high-band
systems, which were technically incompatible due to phys-
ical differences in receivers. Given that both systems were
already in commercial use, SXM continued to operate each
system while it worked to gradually shift car manufactur-
ers to just one of the two systems. Ultimately, SXM opted
to encourage manufacturers to implement the high-band
system in new vehicles.
Meanwhile in 2008, WorldSpace filed for bankruptcy.
As part of the bankruptcy proceedings, XM and
2 The terms “high-band” and “low-band” refer to the
relative range of frequencies used in each system. That is,
the “high-band” XM DARS System operates at a higher
range of frequencies than the “low-band” system.
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WorldSpace entered into a Settlement Agreement to re-
solve outstanding payments owed under the sublicense.
J.A. 1711–13. The Settlement Agreement characterized it-
self as an amendment to the sublicense and provided that
the agreement could not be assigned or transferred by sale
or merger without written consent of the parties.
J.A. 1712. Neither Fraunhofer nor SXM, XM’s parent com-
pany at that time, were parties to the Settlement Agree-
ment. However, the agreement was made public, with
notice to Fraunhofer, during formal bankruptcy proceed-
ings. J.A. 1715–23, 1725–26; see also J.A. 6207 (Fraunho-
fer’s corporate representative testifying that Fraunhofer
“had long assumed that there existed a sublicensing agree-
ment” between XM and WorldSpace, and that “[i]t is a fact
that [the] sublicensing agreement became public during
the bankruptcy proceedings”). Thereafter, in 2011, XM for-
mally merged into and with SXM, terminating the exist-
ence of XM. It remains disputed whether any of XM’s
rights to the asserted patents attached to its successors,
whether via the “irrevocable” sublicense from WorldSpace
or via the FFPC with Fraunhofer. Compare Fraunhofer
Br. 10 (noting that XM’s Settlement Agreement did not
“grant any rights to SXM, which was XM’s parent company
at the time”), with SXM Br. 7 (suggesting the FFPC
“granted XM and its successors a license” to the asserted
patents). In any event, with or without a license, SXM con-
tinued to use the XM DARS System, incorporating the al-
legedly infringing technology.
Also at the bankruptcy court, in 2010, WorldSpace re-
jected the Master Agreement, which “was equivalent to a
breach occurring ‘immediately before the date of the filing
of the [bankruptcy] petition.’” Fraunhofer I, 940 F.3d at
1375–76 (alteration in original) (quoting Mission Prod.
Holdings, Inc. v. Tempnology, LLC, 587 U.S. 370, 374
(2019)). The breach gave Fraunhofer the right to terminate
the Master Agreement. Id. It remains disputed whether
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the agreement was actually terminated at that time. Com-
pare Fraunhofer Br. 10, with SXM Br. 9.
Years later, in 2015, Fraunhofer notified SXM that it
believed SXM was infringing the asserted patents. See
J.A. 444, 1800–03. It explained its belief that “the [Master
Agreement] between Fraunhofer and World[S]pace was
terminated as part of the World[S]pace bankruptcy” in
2010, J.A. 1802, such that “substantial rights [in the as-
serted patents had] reverted to Fraunhofer,” J.A. 1800.
The next month, Fraunhofer sent a letter to WorldSpace
claiming that the Master Agreement was “terminated” in
the context of the bankruptcy proceedings, and to the ex-
tent that was not the case, it had been terminated for cause
under German law and by its own terms. Fraunhofer I,
940 F.3d at 1376; J.A. 1812–13. Thus, in Fraunhofer’s
view, the Master Agreement “terminated [in 2010] pursu-
ant to the [bankruptcy c]ourt-approved agreement, with all
patent rights reverting to Fraunhofer.” Fraunhofer Br. 10
(citing J.A. 1769–70).
On February 22, 2017, Fraunhofer filed its complaint
in the U.S. District Court for the District of Delaware, al-
leging that various aspects of the XM DARS System in-
fringed the asserted patents. J.A. 167–74; see also
J.A. 434–45 (Amended Complaint). The district court dis-
missed the case in its entirety on the ground that SXM had
a valid license to the asserted patents. Fraunhofer I,
940 F.3d at 1374. We vacated the judgment and remanded
for further proceedings. Id. at 1383. The case thereafter
proceeded and, following discovery, the parties collectively
filed thirteen motions for summary judgment.
In one of its motions, SXM argued that Fraunhofer’s
claims for infringement were barred by equitable estoppel.
J.A. 1468–70. Specifically, SXM argued that, given Fraun-
hofer’s collaboration with SXM to build the allegedly in-
fringing aspects of the accused XM DARS System from at
least 1998 to 2010, its failure to raise SXM’s potential
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infringement of the accused patents by that system until
2015 precluded its claims. J.A. 1469. SXM argued that it
had relied on and was prejudiced by Fraunhofer’s silence,
as evidenced by its decision to migrate car manufacturers
to the accused high-band system. J.A. 1469–70. In SXM’s
view, it could have alternatively migrated those manufac-
turers to the non-infringing low-band system had it known
that it would be threatened with litigation. Id. Thus, SXM
contended that, to the extent it did not already have an ex-
press license, Fraunhofer had effectively granted it an im-
plied license to the asserted patents. J.A. 1468 (citing High
Point SARL v. Spring Nextel Corp., 817 F.3d 1325, 1331
(Fed. Cir. 2016)).
The district court agreed and granted SXM’s motion on
the basis of equitable estoppel, dismissing all other motions
as moot and entering final judgment in favor of SXM. See
Decision, at *4; J.A. 9. The district court explained that,
assuming Fraunhofer’s view of the facts, i.e., “that SXM
has been using Fraunhofer’s patented technology without
license since at least June 2010—and both [parties] knew
it,” then Fraunhofer’s delay of more than five years in as-
serting the patents amounted to an inexcusable delay. See
Decision, at *2. The district court further explained that
SXM “relied on Fraunhofer’s extended silence and conduct
to its detriment,” concluding that, “as the parties agree[d],”
SXM’s choice to migrate to the infringing high-band system
“came down to business pragmatics.” Id. at *3. That is,
the court explained that “[i]f barred from the high-band,
SXM could and would have elected the low[-band].” Id. Fi-
nally, the district court explained that it was undisputed
that SXM was prejudiced by Fraunhofer’s silence, as it
spent years and “hundreds of millions of dollars” having
equipment installed into vehicles to make those vehicles
compatible with the accused XM DARS System. Based on
that “undisputed record,” the district court granted sum-
mary judgment to SXM. Id.
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Fraunhofer timely appealed. We have jurisdiction un-
der 28 U.S.C. § 1295(a)(1).
D ISCUSSION
We review a district court’s grant of summary judg-
ment of equitable estoppel in two steps. Ferring B.V. v. Al-
lergan, Inc., 980 F.3d 841, 850 (Fed. Cir. 2020). First,
applying the law of the regional circuit, we review whether
there are any genuine disputes of material fact that would
preclude summary judgment. Id. The Third Circuit re-
views a grant of summary judgment de novo, viewing all
facts and drawing all reasonable inferences in the non-
movant’s favor. Glaesener v. Port Auth. of New York & New
Jersey, 121 F.4th 465, 467 (3d. Cir. 2024) (citation omitted).
Absent any such disputes, we then review the district
court’s application of equitable estoppel for abuse of discre-
tion. Ferring B.V., 980 F.3d at 851 (quoting John Bean
Techs. Corp. v. Morris & Assocs., Inc., 887 F.3d 1322, 1327
(Fed. Cir. 2018)).
I
Equitable estoppel is a defense “addressed to the sound
discretion of the trial court.” A.C. Aukerman Co. v. R.L.
Chaides Const. Co., 960 F.2d 1020, 1041 (Fed. Cir. 1992)
(en banc), abrogated on other grounds by SCA Hygiene
Prods. Aktiebolag v. First Quality Baby Prods., LLC,
580 U.S. 328 (2017). The defense has three requirements:
(1) the patentee engages in misleading conduct
that leads the accused infringer to reasonably infer
that the patentee does not intend to assert its pa-
tent against the accused infringer; (2) the accused
infringer relies on that conduct; and (3) as a result
of that reliance, the accused infringer would be ma-
terially prejudiced if the patentee is allowed to pro-
ceed with its infringement action.
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Ferring B.V., 980 F.3d at 853 (quoting John Bean, 887 F.3d
at 1327). We address the parties’ arguments as to each re-
quirement in turn.
A. Misleading Conduct
“The first element of equitable estoppel requires
[Fraunhofer] to have made a misleading communication,
either affirmatively or by omission, to [SXM].” SCA Hy-
giene Prods. Aktiebolag v. First Quality Baby Prods., LLC,
767 F.3d 1339, 1349 (Fed. Cir. 2014).3 In general, “silence
alone will not create an estoppel unless there was a clear
duty to speak,” or unless a patent owner’s “continued si-
lence” reinforces an accused infringer’s inference that the
patent owner has acquiesced to the infringer’s conduct.
Aukerman, 960 F.2d at 1043–44. Put otherwise, mislead-
ing conduct occurs where an accused infringer can reason-
ably infer from a patent owner’s conduct or silence that the
patent owner has known of the allegedly infringing activi-
ties for some time without having asserted its rights. See
High Point, 817 F.3d at 1330. Here, the district court con-
cluded that there was no genuine dispute of material fact
that Fraunhofer’s failure to raise the issue of potential in-
fringement to SXM from 2010—the year Fraunhofer as-
serts that it reacquired all rights to the asserted
patents—until 2015 amounted to misleading silence. We
agree.
3 The portion of the panel decision in SCA Hygiene
reversing summary judgment based on equitable estoppel
was reinstated and adopted by the en banc court upon re-
hearing. 807 F.3d 1311, 1333 (Fed. Cir. 2015). The Su-
preme Court then granted certiorari and vacated the en
banc court’s decision on the issue of laches, but did not ad-
dress its decision regarding equitable estoppel. 580 U.S. at
333 n.2, 346. Thus, the three-judge panel’s treatment of
equitable estoppel in SCA Hygiene remains good law.
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There is no dispute that Fraunhofer was aware that, to
successfully launch the accused XM DARS System, SXM
needed access to the technology claimed in the asserted pa-
tents. Indeed, it required SXM to obtain a sublicense to
those patents from WorldSpace before that system could be
developed. See J.A. 1707. There is also no dispute that
Fraunhofer itself assisted in SXM’s development of the ac-
cused system. J.A. 441 (Fraunhofer’s complaint alleging
that “Fraunhofer built the infringing aspects of the XM
DARS System at the request of [SXM] using the technolo-
gies covered by the [asserted patents]”). Thus, at all rele-
vant times, Fraunhofer knew that aspects of the XM DARS
System, which it helped build and which commercially
launched in 2001, may infringe the asserted patents. Fur-
ther still, Fraunhofer publicly touted its involvement in the
development of that system for years to come. See
J.A. 6104 (Fraunhofer’s 2011 Annual Report noting that
examples of its satellite-based communication systems “in-
clude the successful Sirius XM satellite radio system”);
J.A. 4022 (designated confidential). But, despite that
knowledge, Fraunhofer did not raise to SXM any issue of
the XM DARS System’s potential infringement of the as-
serted patents for more than five years after it argues any
rights SXM had in the asserted patents had lapsed.
Accepting Fraunhofer’s—the nonmoving party’s—view
of the facts, it was entirely reasonable for SXM to infer that
Fraunhofer would not bring a claim that the XM DARS
System infringed the accused patents. Not only did Fraun-
hofer know, since as early as 1998, that the accused system
incorporated features that allegedly infringe the asserted
patents, Fraunhofer itself built those allegedly infringing
features. And if we accept Fraunhofer’s view that all par-
ties knew that any rights SXM had in the asserted patents
were “derivative of” the rights granted from Fraunhofer to
WorldSpace in the Master Agreement, such that “termina-
tion” of the Master Agreement in 2010 stripped SXM of any
of its rights to the patents, see J.A. 441 (a disputed fact we
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FRAUNHOFER- GESELLSCHAFT v. SIRIUS XM RADIO INC. 10
need not resolve here), then the more-than-five-year delay
in raising the issue of SXM’s potential infringement rises
to the level of misleading conduct. See High Point,
817 F.3d at 1331 (concluding that patent owner’s silence
amounted to misleading conduct where the patent owner
had actively engaged in building the accused system).
We are unpersuaded by Fraunhofer’s argument that
the “most plausible” explanation for its silence between
2010 and 2015 was that the parties’ collaboration was sub-
stantially complete by 2010. See Fraunhofer Br. 26. Re-
gardless whether that is true, it is beside the point. That
the collaboration was substantially complete in 2010 does
not explain why Fraunhofer, which at that time believed it
was the only party with any rights to the asserted patents,
did not question for five years SXM’s continued use of the
XM DARS System, a system that it not only helped build,
but that it knew incorporated the allegedly infringing fea-
tures and was in widespread commercial use.
We therefore agree with the district court’s conclusion
that Fraunhofer’s more-than-five-year silence in asserting
infringement, in light of its clear knowledge of that in-
fringement, rose to the level misleading conduct.
B. Reliance
To satisfy the second requirement of equitable estop-
pel, SXM must show that it, in fact, substantially relied on
the misleading conduct of Fraunhofer in connection with
taking some action. See Aukerman, 960 F.2d at 1042–43.
To show reliance, SXM must have had a relationship or
communication with Fraunhofer that “lull[ed]” it into a
“sense of security” in continuing its use of the accused XM
DARS System. Id.
SXM argues that “Fraunhofer’s misleading silence and
conduct lulled SXM into continuing to use the [accused]
high-band system, expanding its high-band business, mi-
grating its low-band business to the high-band system, and
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stopping development and marketing of its non-infringing
low-band system.” SXM Br. 38. It further suggests that its
reliance on Fraunhofer’s misleading conduct is evidenced
by its “fail[ure] to take actions limiting its exposure, such
as seeking a license.” Id. at 38 n.7. Accordingly, in SXM’s
view, had it known that Fraunhofer would raise claims of
infringement, it would have opted to migrate car manufac-
turers to the non-infringing low-band alternative or other-
wise sought additional protections against patent
infringement. In that way, SXM argues that the district
court correctly determined that there is no genuine dispute
that SXM relied on Fraunhofer’s misleading conduct. Id.
at 39 (citing High Point, 817 F.3d at 1331, and ABB Robot-
ics, Inc. v. GMFanuc Robotics Corp., 52 F.3d 1062, 1064
(Fed. Cir. 1995)). But viewing the evidence in the light
most favorable to Fraunhofer, we do not agree.
SXM is correct that, to show reliance on Fraunhofer’s
silence, SXM “need not prove precisely what alternative
paths it would have taken, or that every marketing deci-
sion was based on reliance” on Fraunhofer’s misleading
conduct. Aspex Eyewear Inc. v. Clariti Eyewear, Inc.,
605 F.3d 1305, 1312 (Fed. Cir. 2010). But SXM must nev-
ertheless establish that it at least considered Fraunhofer’s
silence or inaction and that such consideration influenced
its decision to migrate to the accused high-band system.
See id. (affirming grant of summary judgment where it was
undisputed that the accused infringer “took into account”
the patent owner’s failure to pursue the asserted patent
when the parties had discussed potential infringement of
two other patents); SCA Hygiene, 767 F.3d at 1351 (noting
that accused infringer’s testimony that it “would not have
made certain capital investments had it been involved in
an earlier lawsuit over the [accused] products” did “not nec-
essarily establish that [the accused infringer] expanded its
business after considering the implications of [the patent
owner]’s silence” (emphasis added)).
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Here, as Fraunhofer points out, an SXM representative
testified that the impetus for pursuing the accused XM
DARS System over the non-infringing low-band alterna-
tive was not that SXM took Fraunhofer’s silence as acqui-
escence of SXM’s continued use of the patented technology,
but that the XM DARS System had greater market pene-
tration and was the easier business choice:
Q. Okay. And can you summarize why the decision
was made to migrate to the high band?
A. I think it boils down to both systems were equiv-
alent. No marked differentiation between the two
when it came to service availability, consumer ac-
ceptance, whether it’s audio quality, number of
channels, any of those things. It really boiled down
to: Which is the easiest population to migrate?
And it was easier to move the 35 percent to the 65
percent than the reverse. It really boiled down to
that.
J.A. 1851; see also J.A. 1852 (confirming on redirect that
the decision to migrate to the high-band system, “had noth-
ing to do with the technology”). As in SCA Hygiene, that
testimony does not “necessarily establish” that SXM opted
to migrate its systems to the accused XM DARS System in
reliance on Fraunhofer’s silence. 767 F.3d at 1351; see also
Hemstreet v. Comput. Entry Sys. Corp., 972 F.2d 1290,
1294–95 (Fed. Cir. 1992) (reversing summary judgment
where “there [was] a total absence in the record of any
showing by [the accused infringer] that its activities were
in reliance upon supposed actions of [the patent owner], ra-
ther than a business judgment of its own”). Thus, the evi-
dence introduced by SXM does not indisputably establish
that it relied on Fraunhofer’s silence in making its business
decisions.
We are further unpersuaded by SXM’s position that it
would have taken steps to limit its liability, “such as seek-
ing a license,” had it been threatened with litigation. SXM
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FRAUNHOFER- GESELLSCHAFT v. SIRIUS XM RADIO INC. 13
Br. 38 n.7. To support that argument, SXM merely cites
the various agreements at issue in this litigation (e.g., its
sublicense agreement with WorldSpace, the FFPC with
Fraunhofer). But none of those agreements reasonably es-
tablishes SXM’s broader proposition that it “continuously
sought to ensure it had licenses to intellectual property,”
such that, had it known it was exposed to litigation, it
would have sought additional protection against the as-
serted patents. SXM Br. 38 n.7. That evidence, viewed in
the light most favorable to Fraunhofer, does not establish
SXM’s theory of reliance here. There may have been suffi-
cient circumstantial evidence to permit a factfinder to find
reliance,4 but the existing record does not compel such a
finding as required for summary judgment.
Summary judgment was therefore improper, as SXM
has not established through undisputed evidence that it re-
lied on Fraunhofer’s misleading conduct. Although the
matter is not entirely clear, we decline to go so far as to
affirmatively conclude at this stage, when all the facts may
not be known to us, that there is insufficient evidence
through which SXM could make that showing. See Hem-
street, 972 F.2d at 1295.
C. Prejudice
Despite having already concluded that summary judg-
ment was inappropriate, we nevertheless address the third
and final requirement of equitable estoppel—prejudice. To
satisfy this element, SXM must establish that “[d]ue to its
4 See, e.g., Moleculon Rsch. Corp. v. CBS, Inc.,
793 F.2d 1261, 1272 (Fed. Cir. 1986) (“It is hornbook law
that direct evidence of a fact is not necessary. ‘Circumstan-
tial evidence is not only sufficient, but may also be more
certain, satisfying and persuasive than direct evidence.’”
(quoting Michalic v. Cleveland Tankers, Inc., 364 U.S. 325,
330 (1960))).
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FRAUNHOFER- GESELLSCHAFT v. SIRIUS XM RADIO INC. 14
reliance, [it] will be materially prejudiced if [Fraunhofer] is
allowed to proceed with its claim.” Aukerman, 960 F.2d at
1028, 1041. That is, SXM must establish that there is a
nexus between the alleged prejudice and its reliance on
Fraunhofer’s misleading conduct. See ABB, 52 F.3d at
1065 (“[C]ases in which economic prejudice has been found
lacking did not so hold because of a lack of capital invest-
ments, but, rather, because the alleged infringer failed to
prove that their increased expenditures . . . were in any
way related to actions taken by the patentee.”). Accord-
ingly, because SXM has not presented undisputed evidence
of its reliance, SXM necessarily cannot establish that it
would be prejudiced by that reliance at this stage. See SCA
Hygiene, 767 F.3d at 1350 (“There is a difference between
prejudice that results from a patentee’s alleged misrepre-
sentation and prejudice caused by reliance upon it.”).
However, we agree with the district court that, if SXM
can establish at trial that it relied on Fraunhofer’s mislead-
ing conduct in reaching its decision to migrate to the ac-
cused high-band system, then there is no genuine dispute
of material fact that SXM was prejudiced by that reliance.
See Decision, at *4. The undisputed evidence is clear that
SXM made a business decision to migrate to the accused
high-band system while simultaneously deciding to “set
aside further efforts on the low-band system.” See
J.A. 1841–42. That decision, made in the face of a viable
non-infringing alternative, is sufficient to establish preju-
dicial reliance. See Aspex, 605 F.3d at 1312 (“Clariti’s de-
velopment of its AirMag® business, in reliance on Aspex’s
silence . . . represents a significant change in economic po-
sition and constitutes material prejudice sufficient to sup-
port equitable estoppel.”).
Fraunhofer’s attempt to generate disputes of material
fact regarding whether the low-band system was a “viable”
non-infringing alternative is unpersuasive. In support of
its position, Fraunhofer cites testimony of SXM’s corporate
representative explaining that replacing low-band
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FRAUNHOFER- GESELLSCHAFT v. SIRIUS XM RADIO INC. 15
receivers with high-band receivers was an “ugly” approach.
See Fraunhofer Br. 40 (citing J.A. 4355). But the cited tes-
timony only supports the notion that it would have been
impracticable for SXM to replace existing low-band receiv-
ers in consumers’ vehicles with the accused high-band sys-
tem. As the evidence shows, and Fraunhofer concedes,
instead of replacing any receivers in any vehicles, SXM
made the decision to migrate to the high-band system in
new vehicles, while maintaining operability of the low-
band system in existing vehicles—a process that took
nearly a decade to complete. See J.A. 4359; Fraunhofer
Br. 9. None of that evidence suggests that, at the time
SXM had to make its decision about how to handle the two
incompatible systems, SXM could not have chosen to mi-
grate to the non-infringing low-band system. Indeed, we
see no evidence that contradicts the testimony of SXM’s
representative that that decision had all to do with busi-
ness pragmatics and nothing to do with inadequacies in the
low-band technology. J.A. 1851–52.
Accordingly, should SXM be able to establish at trial
that it relied on Fraunhofer’s misleading conduct in con-
nection with its decision to migrate to the accused high-
band system as opposed to the non-infringing low-band al-
ternative, then it has adequately established that it was
prejudiced by that silence. But unless SXM makes that
threshold showing of reliance, its defense of equitable es-
toppel must fail.
II
Before closing, we briefly address Fraunhofer’s request
that we should not only reverse the grant of summary judg-
ment, but also find that summary judgment should affirm-
atively be granted for Fraunhofer on SXM’s equitable
estoppel defense. Fraunhofer Br. 18, 52–54; Fraunhofer
Reply Br. 25–28. Fraunhofer, in essence, requests that we
review, in the first instance, the merits of its cross-motion
for summary judgment, see J.A. 1523–45, a motion that
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FRAUNHOFER- GESELLSCHAFT v. SIRIUS XM RADIO INC. 16
was rendered moot by the district court’s judgment, see De-
cision, at *4, and that would require us to shift the burdens
and review the facts in a different light. We are an appel-
late court; we review only the judgments before us, and so
we decline to consider Fraunhofer’s request.
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. For the foregoing reasons,
the district court’s grant of summary judgment in favor of
SXM dismissing all claims as equitably estopped is re-
versed. Upon remand, the district court is to consider, as
appropriate, the parties’ remaining motions for summary
judgment.
REVERSED
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