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Innovus Prime, LLC v. Panasonic Corp. & Panasonic Corp. of N. Am., Inc.

United States District Court for the Northern District of California, San Jose Division

July 2, 2013, Decided; July 2, 2013, Filed

Case No. C-12-00660-RMW

Opinion

ORDER GRANTING PLAINTIFF'S MOTION TO STRIKE AND GRANTING DEFENDANT'S MOTION FOR SUMMARY JUDGMENT

[Re Docket Nos. 53, 64]

Defendants Panasonic Corporation and Panasonic Corporation of North America, Inc. (collectively "Panasonic") move for summary judgment that they do not infringe U.S. Patent No. 5,280,350 ("'350 Patent"). Plaintiff Innovus Prime, LLC ("Innovus") acquired the '350 Patent on April 17, 2011, as the fourth owner in a chain of assignees. Panasonic relies on a 1982 non-assertion agreement between itself and the original owner of the '350 Patent ("1982 Agreement") as the basis for its authority to practice the invention of the '350 Patent for the duration of the patent's term. Because the court concludes that the 1982 Agreement authorized  [*2] Panasonic to practice the patented invention for the life of the '350 Patent (which is now expired), and for the reasons explained below, the court GRANTS Panasonic's motion for summary judgment of noninfringement.

I. BACKGROUND

The United States Patent and Trademark Office issued the '350 Patent on January 18, 1994 to U.S. Philips Corporation, a subsidiary of N.V. Philips Gloeilampenfabrieken, currently doing business as Koninklijke Philips Electronics ("Philips"). The '350 Patent relates to an apparatus for processing picture signals for television.

On December 20, 1982, Philips entered into an agreement with Panasonic whereby each party agreed not to assert against the other any patents relevant to "audio and video products" that were filed (or entitled to priority) before January 1, 2005. 1 Watanabe Decl., Ex. 1 at 1, Dkt. No. 53-4 ("1982 Agreement"). There is no dispute that the '350 Patent is relevant to a video product and was filed before 2005, and thus was subject to the 1982 Agreement between Philips and Panasonic (at least before the patent was assigned). In 2007, Philips and Panasonic entered into a new agreement in which they clarified the definitions of "audio and video  [*3] products" in the 1982 Agreement (to include six new products that did not exist in 1982). Watanabe Decl., Ex. 2 at 1, 6 Dkt. No. 53-5 ("2007 Agreement").

On February 1, 2008, Philips assigned its interest in the '350 Patent to NXP B.V., "subject to all existing rights, commitments, licenses, non-assertion agreements and the like made by Assignor, [Philips] and/or its affiliates under said Patent Rights and to any extensions of term and/or renewal thereof." Yohai Decl., Ex. 3 at Reel 021411, Frame 0447, Dkt. No. 53-9 ("1st Assignment"). On February 7, 2010, approximately two years following the assignment from Philips, NXP B.V. assigned all rights to the '350 Patent to NXP Holding 1 B.V. (Now Trident Microsystems (Far East) LTD). Yohai Decl., Ex. 4 at Reel 023928, Frame 0496, 0502-0506, Dkt. No. 53-10 ("2nd Assignment").  [*4] In April 2011, Trident Microsystems (Far East) assigned all its rights to the '350 Patent to plaintiff Innovus Prime, LLC ("Innovus"). Yohai Decl., Ex. 5 at Reel 026156, Frame 0365-59, Dkt. No. 53-11 ("3rd Assignment"). The '350 Patent expired shortly thereafter, in August 2011. 35 U.S.C. § 154(c) (twenty years from the filing date).

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2013 U.S. Dist. LEXIS 93820 *; 2013 WL 3354390

INNOVUS PRIME, LLC, Plaintiff, v. PANASONIC CORPORATION AND PANASONIC CORPORATION OF NORTH AMERICA, INC., Defendant.

CORE TERMS

patent, license, covenant, assignee, rights, non-assertion, patent rights, right to sue, infringement, parties, convey, terms, summary judgment, federal law, assigned, non-exclusive, declarations, transfers, products, notice, contract interpretation, audio and video, automatically, unconditional, contractual, exhaustion, invention, Assignor, Frame