Microsoft Corporation v. Corel Corporation et al

Filing 153

ORDER DENYING 49 COREL'S MOTION FOR PARTIAL SUMMARY JUDGMENT ON THE DEFENSE OF EXPRESS LICENSE. Signed by Judge Edward J. Davila on 1/12/2017. (ejdlc2S, COURT STAFF) (Filed on 1/12/2017)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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MICROSOFT CORPORATION,

Case No. 5:15-cv-05836-EJD

Plaintiff,
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v.
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COREL CORPORATION, et al.,

United States District Court
Northern District of California

Defendants.

ORDER DENYING COREL’S MOTION
FOR PARTIAL SUMMARY
JUDGMENT ON THE DEFENSE OF
EXPRESS LICENSE
Re: Dkt. Nos. 49

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Plaintiff Microsoft Corp. sued Defendants Corel Corp. and Corel Inc. (together, “Corel”)

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for infringement of multiple software patents. Before the Court is Corel’s partial motion for

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summary judgment on the defense of express license to Microsoft’s claim that Corel infringed

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U.S. Patent No. 5,510,980 (the “’980 patent”) under 35 U.S.C. § 271. Dkt. No. 49. Corel’s motion

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will be DENIED.

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I. BACKGROUND

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Case No.: 5:15-cv-05836-EJD
ORDER DENYING COREL’S MOTION FOR PARTIAL SUMMARY JUDGMENT ON THE
DEFENSE OF EXPRESS LICENSE

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B. The Utah Case

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In 2015, Corel Software, LLC sued Microsoft for patent infringement in Utah. Corel

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Software, LLC. v. Microsoft Corp., No. 2:15-cv-00528-JNP-PWM (D. Utah July 27, 2015). Corel

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Software, LLC is a separate legal entity from the two defendants in this case—Corel Corp. and

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Corel Inc.—and

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entities—Corel Corp., Corel Inc., and Corel Software, LLC—are owned by Vector Capital, a

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private-equity firm. Id. Vector Capital acquired Corel Corp. and Corel Inc. in 2003. Corel’s Reply

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in Support of Motion for Partial Summary Judgment on Defense of Express License (“Reply”) at

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United States District Court
Northern District of California

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2, Dkt. No. 67.

. MSJ at 8. However, all three

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C. This Case

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Microsoft filed this case on December 19, 2015, alleging that Corel infringed nine patents

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relating to graphical user interfaces in software applications. Complaint ¶¶ 1–2, Dkt. No. 1. On

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May 23, 2016, Corel moved to amend its answer to add a defense of express license to Microsoft’s

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claim that Corel infringed the ’980 patent. Dkt. No. 47. On May 23, Corel moved for summary

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judgment on this defense. Dkt. No. 49.

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II. LEGAL STANDARD

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“Summary judgment is proper where no genuine issue of material fact exists and the

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moving party is entitled to judgment as a matter of law.” Samuels v. Holland American Line—

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USA Inc., 656 F.3d 948, 952 (9th Cir. 2011) (citing Fed. R. Civ. P. 56(a)). The Court “must draw

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all reasonable inferences in favor of the nonmoving party.” Id. “The central issue is ‘whether the

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evidence presents a sufficient disagreement to require submission to a jury or whether it is so one-

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sided that one party must prevail as a matter of law.’” Id. (quoting Anderson v. Liberty Lobby,

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Inc., 477 U.S. 242, 251–52 (1986)).

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III. DISCUSSION

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United States District Court
Northern District of California
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United States District Court
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C. Microsoft’s Request for Further Discovery

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Microsoft requested permission to conduct “more discovery into the details of Vector

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Capital’s acquisition of Corel and Corel’s corporate structure” to gather evidence in support of its
argument that
. In light of Microsoft’s recently submitted evidence2 and the discussion

United States District Court
Northern District of California

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above, the Court denies Microsoft’s request as moot.

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IV. CONCLUSION

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The Court finds that
Corel’s motion for partial

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summary judgment is DENIED.

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IT IS SO ORDERED.

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Dated: January 12, 2017
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EDWARD J. DAVILA
United States District Judge

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________

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On December 30, 2016, Microsoft moved for leave to submit recently acquired evidence
regarding Corel’s MSJ. Dkt. No. 143. Microsoft’s new evidence consists of deposition testimony
by Corel’s Rule 30(b)(6) representative and Chief Financial Officer; a managing director of
Vector Capital who is also a member of Corel’s board; and Vector Capital’s Vice President for
Tax. The testimony contains information about Corel’s corporate structure and Vector Capital’s
involvement. On January 9, 2017, Corel moved for leave to submit recently acquired rebuttal
evidence consisting of Corel Corp.’s SEC Form 10-K statements for fiscal years 2006, 2007, and
2008. Dkt. No. 149.
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