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MiiCs & Partners America, Inc. v. Toshiba Corp.

United States District Court, D. Delaware

August 11, 2017

MiiCs & Partners America, Inc. and Gold Charm Limited., Plaintiffs,
v.
Toshiba Corporation and Toshiba American Information Systems, Defendants, Samsung Display Co., Ltd., Intervenor. Mucs & Partners, America, Inc. and Gold Charm Ltd., Plaintiffs,
v.
Funai Electric Co. Ltd., Funai Corporation Inc., and P&F USA Inc., Defendants, Samsung Display Co., Ltd., Intervenor.

          Dennis 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 USA Inc.

          Robert 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.

          Adam 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.

          MEMORANDUM OPINION

          Andrews, U.S. District Judge.

         Plaintiffs 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.

         NEC Corporation entered into three separate license agreements that are now at issue. One is a license agreement between Defendant Toshiba[1] 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).

         The 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).

         The 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.[2] (No. 14-804 D.I. 314).

         First, 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).

         I. Legal Standard

         "The 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).

         The 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.

         When 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.

         Because 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).

         II. Toshiba's Motion

         Toshiba has a Japanese language license[3] 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.

         A. The License

         NEC and 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).[4] The license grants to Toshiba rights "for manufacturing (including cases in which licensed product is manufactured by a Third Party for [NEC]), [5] ...


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