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Judge Andrews grants summary judgment of non-infringement based on license agreements

In MiiCs & Partners America, Inc., et al. v. Toshiba Corporation, et al., C.A. No. 14-803-RGA (D. Del. Aug. 11, 2017), Judge Richard G. Andrews granted motions for partial summary judgment of non-infringement filed by certain Defendants as well as by intervenor Samsung.  The motions were based on various license agreements.  Having examined their terms, the Court concluded that the licenses entitled the movants to summary judgment of non-infringement.  Included in the Court’s analysis is discussion of the Supreme Court’s recent Impression Products, Inc. v. Lexmark Int’l, Inc., 137 S. Ct. 1523 (2017) decision on patent exhaustion. See id. at 13-15.  The Court analyzed one of the license agreements through the lens of that decision in rejecting Plaintiffs’ argument that the license prohibited to whom license products could be sold or for what purpose, and that the licensees had violated the terms of the license by selling component to Defendants for placement in end-user products.  The Court noted that the “Lexmark decision was an outgrowth of in the law’s preference against restraints on alienation. . . . It explained that the patent exhaustion doctrine ‘marks the point where patent rights yield to the common law principle against restraints on alienation.’ . . . Thus, to the extent a contract ought to be interpreted against the backdrop of public policy, a reading of a license agreement that purports to restrict such alienation would be disfavored. These licenses, anyhow, unambiguously contain no such restriction.” Id. at 14-15.

MiiCs & Partners America, Inc., et al. v. Toshiba Corporation, et al., C.A. No. 14-803-RGA (D. Del. Aug. 11, 2017)

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