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Koninklijke KPN N.V. v. Sierra Wireless, Inc.

United States District Court for the District of Delaware

April 16, 2020, Decided; April 16, 2020, Filed

C.A. No. 17-90-LPS

Opinion

MEMORANDUM OPINION

April 16, 2020

Wilmington, Delaware

Leonard P. Stark

STARK, U.S. District Judge:

I. INTRODUCTION

Pending before the Court are Plaintiff/Counterclaim-Defendant Koninklijke KPN N.V.'s ("KPN") motion for summary judgment (D.I. 193) and motion to strike (D.I. 197). At issue are Defendants Sierra Wireless, Inc. and Sierra Wireless America, Inc.'s (collectively "Sierra") counterclaims for breach of contract and breach of covenant of good faith and fair dealing.1 (D.I. 13) Sierra's counterclaims are based on its contention that KPN formed a contract with the [*2]  ETSI and TIA standard-setting bodies by representing that its patent, U.S. Patent No. 6,212,662 ("the '662 patent"), is standard-essential and subject to FRAND terms. (Id. at ¶¶ 27-35, 44-65) Sierra alleges that KPN breached its contractual obligations and the associated covenants by engaging in discriminatory licensing, refusing to negotiate, and demanding royalties that exceed FRAND rates. (Id.)

In its motion for summary judgment, KPN argues that Sierra's breach of contract and breach of covenant counterclaims fail because a contract would only have formed if the '662 patent was standard-essential. (D.I. 194 at 9-10) According to KPN, Sierra has failed to prove essentiality because: (1) Sierra did not comply with the Court's order requiring it to accept KPN's claim constructions; (2) Sierra did not conduct an objective essentiality analysis (instead relying on KPN's view of the '662 patent); and (3) the Court's invalidation of the '662 patent precluded it from being essential.2 (Id. at 9-19)

Having reviewed the briefing and related materials (D.I. 193, 194, 197, 198, 208, 211, 218, 220, 243, 244), and having heard oral argument on July 12, 2019 (see Tr. (D.I. 229)), the Court will grant KPN's motion for summary judgment and [*3]  deny as moot KPN's motion to strike.

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2020 U.S. Dist. LEXIS 67016 *

KONINKLIJKE KPN N.V., Counterclaim-Defendant, v. SIERRA WIRELESS, INC. and SIERRA WIRELESS AMERICA, INC., Counterclaim-Plaintiffs.

Prior History: Koninklijke KPN N.V. v. Sierra Wireless Am., Inc., 2019 U.S. Dist. LEXIS 157282 (D. Del., Sept. 16, 2019)

CORE TERMS

patent, counterclaims, covenant, genuine, standard-essential, infringement, nonmoving