Federal Circuit Overturns Patent Licensing Ruling--in Already Settled Case
By Alison Frankel
November 04, 2009
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You would think the U.S. Court of Appeals for the Federal Circuit has plenty to do without writing densely reasoned 20-page opinions that are entirely moot. But, apparently not.On Tuesday the Federal Circuit overturned a summary judgment ruling against Imation and its joint venture partner Moser Baer in a patent licensing dispute with Philips Electronics. It's a ruling only a lawyer could love, replete with close-text analysis of the expired licensing deal between Philips and Imation for optical information storage and retrieval technology.
In the end, after considering the definition of a subsidiary under New York law, the court concluded, "The parties constructed licenses with a fluid scope that grew with the acquisition of additional patent rights and a fluid membership that changed as the parties--sophisticated corporations operating throughout the world--changed their corporate structures. The court thus holds that the licenses granted by the agreement extend to any subsidiary of either Imation or Philips...regardless of when Imation or Philips acquired or formed that subsidiary." The ruling reversed Minnesota federal district court judge Donovan Frank's grant of summary judgment to Philips and remanded the case for proceedings on Imation's declaratory judgment claim.
But according to Philips's counsel, Garrard Beeney of Sullivan & Cromwell, there won't be any further proceedings: The case settled in July.
Granted, the settlement took place after oral arguments at the Federal Circuit, and it hasn't yet been finalized. Nevertheless, the appellate court was apparently advised that the parties had signed a deal ending the litigation. The three-judge panel issued its opinion anyway.
Then again, the ruling suggests the Federal Circuit is slow to adapt to change. It identifies Moser Baer's lead counsel as Jeff Randall of Skadden, Arps, Slate, Meagher & Flom. Nope: The former Litigator of the Week actually moved to Paul, Hastings, Janofsky & Walker in August.
Imation was represented by Ronald Schutz of Robins, Kaplan, Miller & Ciresi.
