Sony Mobile Commc'ns Inc. v. EVS Codec Techs. LLC

OPINION AND ORDER On March 27, 2019, the Court denied plaintiff’s motion for partial summary judgment. This Opinion explains why.Plaintiff Sony Mobile Communications Inc. (“Sony”) is a Japanese corporation that sells mobile phones. In 2014 and 2015, Sony and Sony’s America affiliates were sued by Saint Lawrence Communications LLC (“Saint Lawrence”) and Saint Lawrence Communications GmbH (its German counterpart). Saint Lawrence claimed that certain of Sony’s devices practiced a telecommunications standard known as Adaptive Multi-Rate wideband (AMR-WB) and so infringed Saint Lawrence’s patents. Pl. Statement of Material Facts (“Pl. SOMF”) 1, ECF No. 75.¹ To settle the litigation, on March 31, 2015 the parties executed two patent license agreements (“PLAs”), one limited to Germany and the other to the rest of the world. Id. 2.As relevant to the instant motion, the PLA applicable to the United States contains three important provisions. First, it grants Sony a license to sell “Licensed Products, under the Licensed Patents…solely for the purpose of complying with and practicing the AMR-WB Standard,” which explicitly “excludes any right…to practice any standard other than the AMR-WB Standard.” Moore Decl. Exh. 1 2.1, ECF No. 76-1. “Licensed Products” means any product sold by Sony to consumers that is compatible with the AMR-WB Standard. Id. 1.11.Second, Saint Lawrence and its subsidiaries, successors, and assigns “covenant [] not to sue [Sony]…for infringement of any patents owned or controlled or licensable by [Saint Lawrence] during the Term of this Agreement (“Covenant Patents”) solely with respect to Sony Products for the life of such patents.” Id. 2.7. “Sony Products” means “any service or product (including any technology or component within such product) commercially available to an End-User as of the Effective Date [i.e. March 31, 2015] and any upgrades, enhancements or natural evolutions thereof.” Id. 1.16.Finally, each party releases all claims against the other related to the Licensed Patents or the AMR-WB Standard that arose prior to the date of the agreement. Id.