Morrison & Foerster Quarterly News Spring 2010 民國九十九年春
Taiwan Intellectual Property
Quarterly News
2010年春季台灣智慧產權通訊
In This Issue
2 Imation v. Philips: Federal Circuit
Holds That Patent License Extends to
Subsidiaries Acquired After Expiration
of License Agreement
By Rufus Pichler
6 Recent Federal Circuit Venue Deci-
sions Continue to Reveal Transfer
Options For Companies Sued In
The Eastern District of Texas
By Jason A. Crotty, Rudy Y. Kim, and
J. Manena Bishop
10 Can a Company Refuse to License a
Pooled Patent Outside of the Pool?
By Cynthia Lopez Beverage
14 IP Practice News
目錄
3 怡敏信訴飛利浦 (Imation v. Philips)：
美國聯邦巡迴法院判定, 專利許可協議
應延伸至在該協議到期後才被收購的
子公司
作者：Rufus Pichler
7 聯邦巡迴法院近期判決繼續為在德州
東區法院進行訴訟的公司展示了移案
選擇權
作者：Jason A. Crotty、Rudy Y. Kim和
J. Manena Bishop
11 一家公司可否拒絕在專利集管以外
許可集管的專利?
作者：Cynthia Lopez Beverage
15 智慧產權業務新聞
Note from the Managing Editor
As economic signs point to a recovery from the severe global downturn, many
companies are positioning themselves for growth in 2010. Taiwanese companies that
protect and assert their intellectual property in Taiwan and abroad stand to benet as
they market their products globally. We hope the information in this issue will help keep
you informed as you guide your own company’s business and legal strategies.
In this issue we discuss several legal developments of interest, including the success
of companies seeking to transfer cases out of the Eastern District of Texas – and the
challenges that remain. We also discuss cases related to patent pooling and licensing
considerations when a subsidiary is involved.
We are happy to report on recent victories on behalf of our clients, and rankings listing
the rm as among the most active and well-respected in a number of intellectual
property categories. In other exciting news, our rm has launched its rst mobile
application for iPhone.
Best wishes,
Alexander J. Hadjis, Morrison & Foerster LLP
編者按
經濟信號顯示急劇的全球經濟衰退已經開始復蘇，許多公司定位其業績在
2010年將實現增長。隨著其在全球範圍內推廣產品，在台灣和海外地區保護
和維護其智慧財產的台灣公司將會一如既往地通過智慧財產獲利。我們希望
本發佈中的資訊在您指導公司業務和法律戰略時為您提供及時的資訊。
在本發佈中，我們討論了幾個備受關注的法律問題及其發展情況，包括尋求
將案件移出德州東區法院的公司取得的成功經驗—以及依舊存在的問題。
我們還討論了涉及子公司時與專利池和許可因素有關的案件。
我們十分高興的通報最近美富代表客戶取得的勝利，以及本所被評為多個智
慧財產法類 別中最活躍以及 最受尊崇的律所之一。其他令人興奮的消息包括
本所還 推出了首個適用於iPhone的 移 動 應 用 程 式。
順 致 商 祺！
美富律師事 務所合夥人韓明山（Alexander J. Hadjis）
Taiwan Intellectual Property Quarterly Newsletter Spring 2010 民國九十九年春
2
By Rufus Pichler
The Federal Circuit held in Imation Corp.
v. Koninklijke Philips Electronics N.V.1
that Imation’s rights under a cross-license
agreement with Philips extend to two
subsidiaries that Imation acquired after
the termination of the agreement. The
decision is a reminder of how important
it is that license agreements be drafted
clearly, carefully, and consistently to avoid
unintended consequences of economic
signicance for the parties.
Factual Background
In 1995 Philips and Minnesota Mining
and Manufacturing Company (known as
“3M”) entered into a patent cross-license
agreement (“CLA”) covering, among oth-
er technology, optical disks and drives.
It was undisputed that Imation, a spin-off
from 3M, succeeded in 3M’s rights and
obligations under the CLA. The CLA, by
its terms, expired on March 1, 2000, but
also provided that “any patent license
which has been granted under [the li-
cense provision]” (emphasis added) was
to continue, as to each licensed patent,
for the life of such patent. In 2003, after
expiration of the agreement term, Ima-
tion formed a joint venture with Moser
Baer India Limited (“Moser Baer”) which
was called Global Data Media FZ-LLC
(“GDM”). Imation owns 51% of GDM
and Moser Baer owns 49%. In 2006
Imation also acquired Memorex Interna-
tional, Inc. (“Memorex”).
Under the relevant provision of the CLA,
Philips “agrees to grant and does hereby
grant to [Imation] and its Subsidiaries
a personal, non-exclusive, indivisible,
nontransferable, irrevocable, world-
wide, royalty-free license under Philips
Licensed Patents to make, have made,
make for others, use, lease, distribute,
offer to sell, sell, import, or otherwise
dispose of Licensed Products.” A “Sub-
sidiary” is dened as any “corporation …
or other form of business organization as
to which the party now or hereafter has
more than a fty percent (50%) ownership
interest” (emphasis added).
Both GDM and Memorex commercialize
optical storage disk products that are cov-
ered by Philips’s patents. In 2007, Imation
led a declaratory judgment action seek-
ing, among other things, a declaration that
GDM and Memorex are licensed under the
CLA as “Subsidiaries” of Imation. To fully
understand the background, it is important
to note that Moser Baer supplies optical
disks to GDM. While Moser Baer has its
own royalty-bearing license agreement with
Philips, Moser Baer, Imation, and GDM
took the position that no royalties are owed
to Philips under that agreement because
GDM may exercise royalty-free “have
made rights” under the CLA with respect to
products supplied to it by Moser Baer.
The District Court’s Decision
The issue before the district court was
whether GDM and Memorex have valid
licenses to Philips’s patents under the
CLA in light of the fact that they became
Imation subsidiaries only after the expira-
tion of the CLA. The district court held
for Philips. In interpreting the CLA it
found that, pursuant to the termination
provision, only licenses that “had been
granted” survive the expiration of the
agreement on March 1, 2000. Because
GDM and Memorex were not Imation sub-
sidiaries until 2003 and 2006, respective-
ly, no licenses could “have been granted”
to them as of March 2000. Moreover, the
court held that GDM and Memorex were
not “Subsidiaries” as dened in the CLA
because the language “now or hereafter”
in the denition of “Subsidiaries” must be
read as referring only to the time period
up until the expiration of the agreement.
The Federal Circuit’s Decision
The Federal Circuit disagreed and
reversed. Applying New York law, the
Court rejected the interpretation of the
CLA by the district court. The Court
concluded that the language in the
license grant, wherein Philips “agrees to
grant and does hereby grant to [Imation]
and its Subsidiaries,” constitutes a pres-
ent license grant to a class comprised
of Imation and each “Subsidiary,” which
class may shrink or grow over time as
entities become or cease to be “Sub-
sidiaries.” Under this “group license”
construction, as opposed to the district
court’s finding of a grant of multiple
licenses over time, a single license
“had been granted” and vested as of
the effective date of the CLA even with
respect to future “Subsidiaries.”
THE ISSUE BEFORE THE
DISTRICT COURT WAS
WHETHER GDM AND
MEMOREX HAVE VALID
LICENSES TO PHILIPS’S
PATENTS UNDER THE
CLA IN LIGHT OF THE
FACT THAT THEY
BECAME IMATION
SUBSIDIARIES ONLY
AFTER THE EXPIRATION
OF THE CLA.
Imation v. Philips: Federal Circuit Holds That Patent
License Extends to Subsidiaries Acquired After
Expiration of License Agreement
