Apple Inc. v. Samsung Electronics Co. Ltd. et al

Filing 900

NOTICE by Apple Inc.(a California corporation) Translations of Foreign Authority (Attachments: #1 Exhibit 1, #2 Exhibit 2, #3 Exhibit 3, #4 Exhibit 4, #5 Exhibit 5, #6 Exhibit 6, #7 Exhibit 7, #8 Exhibit 8, #9 Exhibit 9, #10 Exhibit 10, #11 Exhibit 11, #12 Exhibit 12, #13 Exhibit 13, #14 Exhibit 14, #15 Exhibit 15, #16 Exhibit 16, #17 Exhibit 17, #18 Exhibit 18, #19 Exhibit 19, #20 Exhibit 20, #21 Exhibit 21, #22 Exhibit 22, #23 Exhibit 23, #24 Exhibit 24, #25 Exhibit 25, #26 Exhibit 26, #27 Exhibit 27, #28 Exhibit 28, #29 Exhibit 29, #30 Exhibit 30, #31 Exhibit 31, #32 Exhibit 32, #33 Exhibit 33, #34 Exhibit 34, #35 Exhibit 35, #36 Exhibit 36, #37 Exhibit 37, #38 Exhibit 38, #39 Exhibit 39, #40 Exhibit 40, #41 Exhibit 41, #42 Exhibit 42, #43 Exhibit 43, #44 Exhibit 44, #45 Exhibit 45, #46 Exhibit 46, #47 Exhibit 47, #48 Exhibit 48, #49 Exhibit 49, #50 Exhibit 50, #51 Exhibit 51, #52 Exhibit 52, #53 Exhibit 53, #54 Exhibit 54, #55 Exhibit 55, #56 Exhibit 56, #57 Exhibit 57, #58 Exhibit 58, #59 Exhibit 59, #60 Exhibit 60, #61 Exhibit 61, #62 Exhibit 62, #63 Exhibit 63)(Selwyn, Mark) (Filed on 5/7/2012)

Exhibit 60

VI
FINAL CONSIDERATIONS
This study has outlined the numerous uncertainties surrounding the patent license agreement
system. In the end, everything is subject to discussion. The most fundamental aspects, such as a
licensee’s right to take action against an infringer302, or the outcome of an agreement in the case
of a cancellation303 have been the subject of various assessments, even of diverging decisions. It
is therefore startling that the companies who make use of this contractual technique would not
have requested a specific regulation for it. This apparently content attitude can truly only be
explained in the two following ways: either they are unaware of the uncertainties affecting the
license system, as well as of the risks implied, or – and this is a more likely explanation – they
believe they can settle all the questionable issues in a satisfactory manner through specific
provisions, thanks to the contractual autonomy they enjoy.
Regarding the solutions which are advocated by the doctrine and have been adopted by case
law, it is clearly the amalgamation of the license agreement with the lease system which calls for
the strongest reservations. In the preceding pages, I used this amalgamation as a working
assumption, and I simply strived to show that certain situations which are encountered in the
field of licenses – voiding of the patent – for instance – were erroneously likened to those
occurring in the field of leases – eviction, or its imperfection304. Often, those in favor of this
amalgamation were not even consistent305. But such is not the most important matter at hand.
The fact that there are some similar points between licenses and leases is unquestionable306. But
such similarities should not lead to apply to licenses rules that are not convenient. In certain
cases, one is compelled not to accept all of the consequences of the amalgamation, and the lease
system is thus harmed: just refer to the license transfer and the granting of sublicenses issues307,
or also to the automatic renewal issue308. Moreover, the application mutatis mutandis of lease
rules is most of the time useless. Apart from the licensor's warranty obligation duty, all of the
parties’ obligations can be deducted from the nature of the convention itself, and can be based
upon the principle of execution in good faith309. Finally, the amalgamation leads to unfair results
for the licensor, as in the case of warranty obligation. To begin with, to seek to include in an
exceptional system – exceptional in that it’s not based upon fault – designed for a specific
contract a nameless contract such as a license is quite questionable. Such extrapolation becomes
utterly questionable when the system at hand has been intended for corporeal goods, which have
nothing in common, in terms of their complexity, with incorporeal goods such as inventions310. It

302

See the French and Belgian decisions wrongly allowing the licensee to act in unfair competition against the
counterfeiters: above, p. 182. 
303
See above, p. 214-221 
304
See above, p. 215 
305
See above, p. 207, some French authors who conclude to the invalidity of a license granted to a counterfeiter,
instead of drawing on the solution agreed upon in the case of a lease concerning another’s property. 
306
See above, p. 174 
307
See above, p. 197 
308
See above, p. 221 
309
The only exception is the resumption of license agreement obligations by the patent buyer, in the case when a
license has a specific date (see above, p. 171 and note 7.) It apply only to Belgium anyway, since in France this
solution is based upon a patent law express provision (see above, p. 171, and note 10.) 
310
See my own remarks above, p. 217. 

ensues that overly heavy responsibilities are being placed upon the licensor, such as warranting
the licensee against the existence of a previous personal ownership right which would be quite
impossible for him to foresee, since ownership of the invention prior to filing is necessarily kept
secret311. It would seem more reasonable to consider that the licensor’s obligation to insure the
licensee the peaceful enjoyment of an invention finds its assent in obligations common law, and
that, should the promised result not be reached, the licensor would still be able to avoid any
responsibility if he/she were able to demonstrate a discharging external cause.

311

See above, note 236.