Intel Corp. v. Broadcom Corp.
| Citation | 173 F.Supp.2d 201 |
| Decision Date | 20 November 2001 |
| Docket Number | No. 00-796-RRM.,00-796-RRM. |
| Parties | INTEL CORPORATION, Plaintiff, v. BROADCOM CORPORATION, Defendant. |
| Court | U.S. District Court — District of Delaware |
J. Andrew Huffman, Fish & Richardson P.C., Wilmington, Delaware; John E. Gartman, and Juanita Brooks, Fish & Richardson P.C., San Diego, California; for plaintiff.
Richard H. Morse, and John W. Shaw, Young, Conaway, Stargatt & Taylor, LLP, Wilmington, Delaware; Ron E. Shulman, and Rodney Strickland, Wilson, Sonsini, Goodrich & Rosati, Palo Alto, California; Raphael L. Lupo, Terrance McMahon and Vera Elson, McDermott, Will & Emery, Menlo Park, California; for defendant.
This is a patent case. Plaintiff Intel Corporation is a Delaware corporation with its principal place of business in Santa Clara, California. Intel owns U.S. Patent Nos. 4,823,201 (the '201 patent); 4,975,830 (the '830 patent); 5,894,410 (the '410 patent); 5,079,630 (the '630 patent); and 5,134,478 (the '478 patent). Defendant Broadcom Corporation is a California corporation with its principal place of business in Irvine, California.
On August 30, 2000, Intel filed its complaint in this case alleging that Broadcom is infringing, inducing infringement of, or committing acts of contributory infringement of one or more claims of the '201 patent, the '830 patent, the '410 patent, the '630 patent, and the '478 patent. In order to simplify the issues before the jury and to shorten the length of the jury trial, the court has since required that the trial proceed in two parts. The first trial is scheduled to begin on November 28, 2001, and will cover the '201 and the '830 patents. A subsequent trial will cover the remaining three patents.
On October 10, 2000, Broadcom moved to dismiss Intel's complaint or, in the alternative, to transfer the action to the United States District Court for the Northern District of California. After eleven months of discovery, the court heard oral argument on Broadcom's motion on September 24, 2001. In a memorandum opinion dated October 9, 2001, the court denied Broadcom's motion. Broadcom subsequently answered Intel's complaint on October 23, 2001. As Broadcom had indicated in earlier interrogatory responses, the answer included a number of affirmative defenses relating to license agreements.
In anticipation of these affirmative defenses, Intel has filed three sets of partial summary judgment motions relating to Broadcom's license defenses. Broadcom has cross-moved for summary judgment on the latter two of these motions.
On September 21, 2001, Intel moved for summary judgment that Broadcom's allegedly infringing products are not licensed under the '830 or '410 patents. Intel argues that the scope of the January 22, 1995 Intel Product Development and License Agreement (the "Joint Development Agreement") between Intel and Broadcom does not include a license for Broadcom to make, sell, or use the accused products in this suit under either the '830 or '401 patent. Broadcom filed its answering brief on October 12, 2001 and later filed a corrected answering brief on October 18, 2001. Intel filed its reply brief in support of its summary judgment motion on October 22, 2001.
On September 28, 2001, Intel moved for summary judgment that Broadcom's allegedly infringing products are not licensed under an Intel-Motorola license agreement (the "Motorola Agreement"). This motion relates to Broadcom's affirmative defense that its products accused of infringing the asserted claims of the '478, '201, and '630 patents are licensed by Intel to the extent those products were made for or sold to General Instrument Corporation, a wholly owned subsidiary of Motorola, Inc, pursuant to a June 9, 1997 license agreement between Intel and Motorola that gives Motorola the right to "have [Licensed Products] made" for it. On October 18, 2001 Broadcom cross-moved for summary judgment that the accused products it sells or has sold to General Instrument Corporation are licensed under the Motorola Agreement. On the same day, Broadcom filed its answering brief in opposition to Intel's motion and opening brief in support of its cross-motion for partial summary judgment. On October 25, 2001, Intel filed its reply brief in support of its motion and answering brief in opposition to Broadcom's cross-motion. On November 1, 2001, Broadcom replied to Intel's answering brief.
On October 16, 2001, Intel moved for summary judgment that Broadcom's accused products are not licensed under Intel license agreements with Sony Corporation, NEC Corporation, Samsung Corporation, Siemens AG, and Compaq Corporation to the extent those products were made for or sold to those companies. On October 30, 2001, Broadcom cross-moved for summary judgment that Broadcom's sales to various Intel licensees of accused products that qualify as "Licensed Products" under the individual terms of the license agreements are licensed by Intel and are therefore noninfringing. The Intel licensees listed by Broadcom are the five companies referred to in Intel's summary judgment motion and the following seven additional companies: AT & T Corporation, Hayes Microcomputer Products, Inc., Hewlett-Packard Corporation, Hitachi Ltd., Hyundai Electronics Industries Co., Ltd., Mitsubishi Electric Corporation, and N.V. Phillips Gloeilampenfabrieken. Also on October 30, Broadcom filed its answering brief in opposition to Intel's summary judgment motion and its opening brief in support of its cross-motion. On November 6, 2001, Intel filed a reply brief in support of its motion and answering Broadcom's cross-motion. Broadcom filed its reply brief in support of its cross-motion on November 13, 2001.
These five motions for partial summary judgment on license defenses are now fully briefed. This is the courts decision on those motions.
At trial, as the party asserting certain affirmative license defenses, Broadcom would bear the burden of proving each of these defenses. See McCoy v. Mitsuboshi Cutlery, Inc., 67 F.3d 917, 920 (Fed.Cir.1995). Acts can be infringements only if they are carried out "without authority." 35 U.S.C. § 271(a), (f), (g). Thus for each of the license defenses it asserts, Broadcom must prove at trial either that it has a license from Intel that authorizes it to make, use, and sell its accused products or that its development and subsequent sale of accused products to Intel licensees was authorized under those licensees' licenses with Intel.
Federal Rule of Civil Procedure 56 provides for summary judgment in a party's favor on "all or any part" of a claim when, upon reviewing the factual record developed by the parties, there is "no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law." Fed. R. Civ. P 56(a), (c).
Under Rule 56, the moving party bears the initial burden of demonstrating the absence of a genuine issue of material fact for trial. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The movant may meet this burden by "showing — that is, pointing out to the [] court — that there is an absence of evidence to support [the non-moving party's] case." Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).
Once the moving party has made the required showing, the non-moving party "must come forward with `specific facts showing that there is a genuine issue for trial.'" Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). A genuine issue for trial is present when the record would enable a reasonable trier of fact to find in favor of the non-moving party. Anderson, 477 U.S. at 248, 106 S.Ct. 2505.
Many of the issues presented in the parties' motions are essentially questions of contract interpretation. Contract interpretation is treated as a question of law. Klair v. Reese, 531 A.2d 219, 222 (Del. 1987) (applying Delaware law); see also United States v. King Features Entmn't, Inc., 843 F.2d 394, 398 (9th Cir.1988) (applying California law). When necessary, the court will determine whether, as a matter of the applicable law under each agreement, extrinsic evidence may be considered by a fact finder to interpret ambiguous sections of a license agreement or whether the agreement at issue is unambiguous.
In this case, in order for the court to grant summary judgment in favor of Intel on Broadcom's license defenses, Intel must show that no reasonable fact finder could return a verdict in Broadcom's favor on its license defense. In order to grant summary judgment in favor of Broadcom on its license defenses, Broadcom must show that no reasonable fact finder could return a verdict in Intel's favor on Broadcom's license defenses. With these standards in mind, the court will turn to the substance of the parties' motions.
On January 22, 1995, Intel and Broadcom entered into a joint development agreement entitled "Intel Product Development and License Agreement." While the parties dispute the intended and ultimate scope of the agreement, according to the agreement itself, the Joint Development Agreement contemplates each party exchanging proprietary technology to jointly develop a specific 100 Mbps Ethernet silicon chip ("the Product").
In order to accomplish this goal, pursuant to the agreement, Intel agreed to deliver certain of its hardware and software technologies to Broadcom (the "Intel Deliverables") and Broadcom agreed to deliver certain of its digital signaling technology to Intel (the "Broadcom Deliverables"). That much is clear from the Joint Development Agreement's section entitled "Recitals,"...
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