Judge Thynge Grants Summary Judgment on Defendants’ Licensing Defense

March 17, 2016

Publication| Intellectual Property

In FutureVision.com, LLC v. Cequel Communications LLC et al., C.A. No. 13-855-MPT (D. Del. Mar. 1, 2016), Magistrate Judge Thynge granted summary judgment on the defendants’ license defense, thus barring the plaintiff’s infringement claims. The defendants, cable operators with cable systems throughout the United States, successfully argued that each of the accused services were expressly licensed under ‘755 method patent at issue, and to any degree that the services was not licensed, the plaintiff’s infringement claims were nonetheless still exhausted in light of the license held by the defendants’ respective suppliers, Cisco and ARRIS.

The ‘755 patent relates to communication between the cable office and a set top box or cable box in customers’ homes. In order to effectuate such communication, the defendants used equipment in the form of set top boxes, supplied primarily by the entities Cisco and ARRIS, and also in a limited degree by Pace. In light of an agreement that Cisco and ARRIS entered into with patent aggregator RPX, the ‘755 patent was licensed to ARRIS and Cisco.

The defendants argued that because their methods require the use of Cisco and ARRIS equipment to perform the accused methods in the plaintiff’s claims, and Cisco and ARRIS were accordingly licensed, the defendants’ services were therefore licensed and could not infringe the ‘755 patent. Moreover, the defendants pointed to ARRIS’s recent acquisition of Pace as evidence that any allegations based on the use of Pace set top boxes must similarly fail under the terms of the RPX agreement to which ARRIS is a party.

Despite the plaintiff’s argument that Pace could never be an affiliate under the RPX agreement, the Court determined that the services provided by the defendants and the Pace set top boxes were already licensed, thus exhausting any claims of infringement.

Analysis: The District Court will grant summary judgment as to a license defense where equipment suppliers hold a license.

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