Unwired Planet, LLC v. Apple, Inc.

Filing 400

ORDER re further briefing on on-sale bar. Signed by Judge Vince Chhabria on 5/7/2015. (vclc3, COURT STAFF) (Filed on 5/7/2015)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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UNWIRED PLANET, LLC,

Case No. 13-cv-04134-VC

Plaintiff,
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v.

ORDER RE FURTHER BRIEFING ON
ON-SALE BAR

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APPLE INC,
Defendant.

United States District Court
Northern District of California

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It appears that if the technology embodied by the '092 patent was licensed in the Motorola

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agreement, the on-sale bar would apply, despite the fact that Unwired Planet never developed a

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product that practiced the invention of the '092 patent (at least not with Motorola pursuant to the

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agreement).

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However, it is not clear to the Court that the invention embodied by the '092 patent is a

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"future release," as that term is used in the Motorola agreement. Apple's argument seems to be

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that because Unwired licensed all future releases of WLS Software to Motorola, and because WLS

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Software included LFS technology, this license must necessarily include future versions of LFS

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technology, including the technology embodied by the '092 patent. Apple points to the definitions

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section of the agreement, which states that "'WLS Software' means the WLS software consisting

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of LFC, LSB, LFS Interface and LC developed by Company and licensed to Motorola hereunder

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and all Modifications and future releases thereof." Taken alone, this definition might suggest that

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"future releases" could be interpreted broadly to cover all future iterations of WLS software

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developed by Unwired.

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But if this were true, one might expect the agreement to contain explicit language –
perhaps in Section 4, which covers "Intellectual Property Rights" – making clear that Motorola

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was purchasing not only the WLS Software that Unwired was developing for Motorola, but also

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all future versions and iterations of that software. But there is no such language. Instead, other

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than the "definitions" section mentioned above, the only part of the agreement that discusses

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"future releases" of WLS Software is Section 12, which covers Unwired's "Support Obligations."

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This section provides "that each new major release1 (i.e., releases which incorporate new or

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improved functionality) of the WLS software shall be functionally compatible with the

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immediately preceding major release of the WLS Software." This language suggests that the

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agreement might not cover all future iterations of WLS Software, but rather only those that are

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directly compatible with, and a natural extension of, the WLS Software that is contemplated by the
agreement. This makes sense given the overall nature of the agreement – Motorola is paying

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United States District Court
Northern District of California

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Unwired to develop software that can be integrated with its hardware, and so all future versions of

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that software should also be able compatible with Motorola's product.
Therefore, the Court is tentatively inclined to believe that the invention embodied by the

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'092 patent is a "future release" of the WLS Software only if the invention is compatible with the

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WLS Software that Unwired was to develop as part of the Motorola agreement. The Court invites

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the parties to submit supplemental briefs on this point. In their briefs, the parties should make sure

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to address the following questions:
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What evidence, if any, does Apple have to show that the invention embodied by the

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'092 patent is compatible with the WLS Software contemplated by the Motorola

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agreement?
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If the Court believes resolution of the on-sale bar issue is primarily a question of

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contract interpretation – namely, what is meant by "future releases" – what law should

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guide the Court's interpretation? And is this a question for the Court or for the jury?
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If the Court determines that the Motorola agreement is ambiguous with respect to what

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"future releases" means and whether the invention embodied by the '092 patent is

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covered by "future releases," does that mean the Court must grant summary judgment

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The agreement appears to use "major release" and "future release" interchangeably.
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for Unwired Planet?

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Further, the Court requests that, in their briefs, the parties help the Court understand the relevance,

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if any, of the following statements in the agreement:

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Section 2, Development Activities – "However, if Company determines that any such

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modifications will result in significant increased costs to or require significant

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additional time to deliver the WLS Software, there shall be an equitable adjustment in

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the Funding Amount or the anticipated delivery schedule, as agreed to by the parties."

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right and title to any patent rights for any inventions or discoveries relating to any WLS

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Software . . . developed under this Agreement."

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United States District Court
Northern District of California

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Section 4(f), Intellectual Property Rights – "Motorola shall have sole ownership of all

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Section 12(c), Support Obligations – "WLS Software . . . updates (i.e., fixes to correct

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defects and enhancements to the current release) shall be provided at no additional cost

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to Motorola . . . Future releases of WLS Software . . . and all components thereof (i.e.,

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releases which incorporate new or improved functionality) shall be supplied as agreed

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to by the parties." Please focus on the phrase "as agreed to by the parties."

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The briefs should not exceed eight double-spaced pages. The briefs should reference any

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evidence in the summary judgment record relevant to these questions, but they should not rely on

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any evidence not already in the record. They are due on Monday, May 11 at 10:00 a.m.

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IT IS SO ORDERED.
Dated: May 7, 2015
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VINCE CHHABRIA
United States District Judge

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