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United States District Court for the Northern District of California
February 13, 2014, Decided; February 13, 2014, Filed
Case No.: 11-cv-5341 YGR
Order Denying Freescale's Motion For Summary Judgment On Non-Infringement Due to Extraterritorial Sales
Defendant Freescale Semiconductor, Inc. ("Freescale") filed its Motion for Summary Judgment on November 6, 2013, moving for summary judgment on several grounds. (Dkt. No. 303.) Among those grounds are Freescale's motion for summary judgment on its affirmative defense of non-infringement due to the extraterritorial nature of certain alleged infringing activities and related cross-claim for declaratory relief on the same grounds. Said differently, the patent laws of the United States only reach activities that occur in the United States. If no such activities exist, there can be no infringement under U.S. law.
Having carefully considered [*3] the papers submitted, the admissible evidence, and the pleadings in this action, and for the reasons set forth below, the Court hereby Denies the motion on the extraterritorial sales issue, as triable issues of facts exist from which a reasonable jury could find that "sale or "offers to sell" occurred in the United States.
In 2009, Freescale negotiated and signed a "Freescale Standard Sales Agreement" with Amazon Fulfillment Services, Inc. ("AFS"), referred to hereafter as the Freescale-AFS Agreement. AFS is a subsidiary of Amazon.com, Inc. ("Amazon"). Amazon is a United States corporation headquartered in Seattle, Washington. AFS is incorporated in Delaware and also located in Seattle, Washington. The Freescale-AFS Agreement was negotiated by representatives of the parties in the United States and executed in the United States. It names Amazon/Lab126 as the "Buyer" of Freescale's i.MX50 products and establishes that both parties to it are United States entities. (SUMF Fact 92.) Amazon Lab126 ("Lab126") is a division of Amazon located in Cupertino, California. (SUMF Fact 91.)
The terms of the December 31, 2009 Freescale-AFS Agreement provide that AFS is the "Buyer" and that [*4] "Buyer desires to purchase products from Freescale, and Freescale desires to sell products to Buyer strictly in accordance with the terms and conditions of this Agreement." The Freescale-AFS Agreement "governs all product purchases made by Authorized Purchasers (as defined in section 3.2 below) from Freescale." (Agreement at § 1.1) Freescale will sell to Authorized Purchasers, and Authorized Purchasers will buy from Freescale, products from time to time." (Id. at § 1.2.) Prices were set forth in Attachment A to the Freescale-AFS Agreement and the "Prices" term of the Agreement stated that Freescale would not provide any Designee (as defined in Section 3.2) "any rebates, discounts, free Product, kick-back or other similar terms related directly or indirectly to the Product supplied to any Designees under this Agreement without Buyer's express, prior written consent." (Agreement at § 2.) "Authorized Purchasers" includes AFS as well as "Designees" authorized by AFS under the Agreement "to issue purchase orders for Products, receive, reschedule or cancel deliveries of such Products, process warranty related claims related to such Products, and pay for such Products and all related costs." [*5] (Id. at § 3.2.) Designees may be foreign firms such as Foxconn and Ensky, a Singapore company. (Id. at §§ 3.2, 4.1.) Under the agreement, with one exception, "each time an Authorized Purchaser wishes to purchase Product(s) from Freescale, the Authorized Purchaser must submit to Freescale a written purchase order." (Id. at § 3.1.) It further provides that each delivery of Freescale products "will be separately invoiced" (id. at § 11), and that "Authorized Purchaser will pay each invoice within thirty (30) days of the date of receipt of the invoice," paying the Product prices reflected in Attachment A to the Agreement. (Id. at §12).
Full case includes Shepard's, Headnotes, Legal Analytics from Lex Machina, and more.
2014 U.S. Dist. LEXIS 18640 *
MEDIATEK INC., Plaintiff, vs. FREESCALE SEMICONDUCTOR, INC., Defendant.
Prior History: Meidatek, Inc. v. Freescale Semiconductor, Inc., 2013 U.S. Dist. LEXIS 19568 (N.D. Cal., Feb. 13, 2013)
products, infringement, sales, Purchasers, summary judgment, pricing, negotiated, manufactured, terms, delivery, extraterritorial, invoice