United States District Court, D. Delaware
MiiCs & Partners America, Inc. and Gold Charm Limited., Plaintiffs,
Toshiba Corporation and Toshiba American Information Systems, Defendants, Samsung Display Co., Ltd., Intervenor. Mucs & Partners, America, Inc. and Gold Charm Ltd., Plaintiffs,
Funai Electric Co. Ltd., Funai Corporation Inc., and P&F USA Inc., Defendants, Samsung Display Co., Ltd., Intervenor.
J. Butler, John D. Simmons, PANITCH SCHWARZE BELISARIO &
NADEL, LLP, Wilmington, Del.; Frederick A. Tecce, Bryon T.
Wasserman, Aaron R. Ettelman, ICE MILLER LLP, Philadelphia,
Penn.; Anthony Nimmo, ICE MILLER LLP, Chicago, 111., Keith
Jones, Stephen F. Murray, PANITCH SCHWARZE BELISARIO &
NADEL, LLP, Philadelphia, Penn., attorneys for Plaintiffs
MiiCs & Partners America, Inc. and Gold Charm Limited.
Benjamin J. Schladweiler, Nicholas D. Mozal, ROSS ARONSTAM
& MORITZ LLP, Wilmington, Del.; J.C. Rozendaal, Michael
E. Joffre, William H. Milliken, STERNE, KESSLER, GOLDSTEIN
& FOX P.L.L.C, Washington, D.C., attorneys for Defendants
Funai Electric Co. Ltd., Funai Corporation Inc., and P&F
W. Mallard, DORSEY & WHITNEY LLP, Wilmington, Del.; Paul
T. Meiklejohn, David Tseng, DORSEY & WHITNEY LLP,
Seattle, Wash.; Clinton L. Conner, DORSEY & WHITNEY LLP,
Minneapolis, Minn., attorneys for Defendants Toshiba
Corporation, and Toshiba America Information Systems, Inc.
W. Poff, Pilar G. Kraman, YOUNG CONAWAY STARGATT & TAYLOR
LLP, Wilmington, Del., Kevin B. Collins, Jeffrey H. Lerner,
David A. Garr, Jared R. Frisch, Covington & Burling, LLP,
Washington, D.C., Robert T. Haslam, Covington & BURLING,
LLP, Redwood Shores, Cal., attorneys for Intervenor Samsung
Display Co., Ltd.
Andrews, U.S. District Judge.
Gold Charm and MiiCs filed suit against Defendants Funai and
Toshiba, asserting twelve patents, nine against Toshiba and
ten against Funai. (No. 14-803 D.I. 35, No 14-804 D.I. 38).
Plaintiffs accuse Toshiba and Funai of infringing their
patents by making, selling, or importing televisions,
laptops, and tablets with infringing liquid crystal display
components, TFT sheets, and circuit boards. Plaintiffs
acquired rights in the asserted patents from NEC Corporation.
Corporation entered into three separate license agreements
that are now at issue. One is a license agreement between
Defendant Toshiba and NEC, the prior owner of the asserted
patents, covering some of the accused products in this case.
Toshiba has moved for partial summary judgment on the basis
of that license. (No. 14-803 D.I. 303).
second is a license agreement between Intervenor Samsung and
NEC. Samsung supplies LCD components to Defendants Funai and
Toshiba. Samsung has asked me to enter partial summary
judgment on Toshiba's and Funai's behalf for any
infringement claims that are based on parts supplied by
Samsung. (No. 14-803 D.I. 337; No. 14-804 D.I. 310).
third is a license from NEC to Panasonic. Funai has moved for
partial summary judgment in its favor claiming that the
license covers its use of the components supplied by two
Panasonic subsidiaries. (No. 14-804 D.I. 314).
I will discuss the relevant legal standard. Second, I will
address Toshiba's motion. Third, I will address
Samsung's and Funai's motions together because they
similarly implicate application of the Supreme Court's
recent decision in Impression Products, Inc. v. Lexmark
Int'l, Inc., 137 S.Ct. 1523 (2017).
court shall grant summary judgment if the movant shows that
there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law."
Fed.R.Civ.P. 56(a). Material facts are those "that could
affect the outcome" of the proceeding. Lamont v. New
Jersey, 637 F.3d 177, 181 (3d Cir. 2011) (quoting
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
(1986)). "[A] dispute about a material fact is
'genuine' if the evidence is sufficient to permit a
reasonable jury to return a verdict for the nonmoving
party." Id. The moving party may discharge its
burden by pointing out that there is an absence of evidence
supporting the non-moving party's case. Celotex Corp.
v. Catrett, 411 U.S. 317, 323 (1986).
burden then shifts to the non-movant to demonstrate the
existence of a genuine issue for trial. Matsushita Elec.
Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574,
586-87 (1986); Williams v. Borough of West Chester,
Pa., 891 F.2d 458, 460-61 (3d Cir. 1989). A non-moving
party asserting that a fact is genuinely disputed must
support such an assertion by: "(A) citing to particular
parts of materials in the record, including depositions,
documents, electronically stored information, affidavits or
declarations, stipulations . . ., admissions, interrogatory
answers, or other materials; or (B) showing that the
materials cited [by the opposing party] do not establish the
absence ... of a genuine dispute . . . ." Fed.R.Civ.P.
56(c)(1). The non-moving party's evidence "must
amount to more than a scintilla, but may amount to less (in
the evaluation of the court) than a preponderance."
Williams, 891 F.2d at 461.
determining whether a genuine issue of material fact exists,
the court must view the evidence in the light most favorable
to the non-moving party and draw all reasonable inferences in
that party's favor. Wishkin v. Potter, 476 F.3d
180, 184 (3d Cir. 2007). If the non-moving party fails to
make a sufficient showing on an essential element of its case
with respect to which it has the burden of proof, the moving
party is entitled to judgment as a matter of law. See
Celotex Corp., 477 U.S. at 322.
infringement requires an unauthorized use, if I find the
patent licenses cover the products manufactured and sold by
Defendants, summary judgment of no infringement is
appropriate. See 35 U.S.C. § 271(a).
has a Japanese language license with NEC covering end-user
products like televisions and computers. The dispute between
the parties is whether the license, which specifies that LCD
components are not licensed individually, covers an end-user
product that incorporates LCD components.
Toshiba entered into a cross-license for any patents owned by
either company or their subsidiaries. (No. 14-803 D.I. 305-1
Ex. A at §§ 1.2, 1.3). The license grants to
Toshiba rights "for manufacturing (including cases in
which licensed product is manufactured by a Third Party for
[NEC]),  ...