Samsung Electronics Co., Ltd. v. Imperium IP Holdings (Cayman), Ltd.
Filing
200
MEMORANDUM ORDER denying 157 MOTION for Partial Summary Judgment filed by Samsung Electronics Co., Ltd. Signed by Judge Colm F. Connolly on 5/19/2021. (nmf)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELA WARE
SAMSUNG ELECTRONICS CO.,
LTD.,
Plaintiff,
v.
Civil Action No. 15-1059-CFC-CJB
IMPERIUM IP HOLDINGS
(CAYMAN), LTD.,
Defendant.
MEMORANDUM ORDER
Plaintiff Samsung Electronics Co., Ltd. has moved for partial summary
judgment in this breach of contract action. D.I. 157. The contract in question,
titled "Settlement and License Agreement" (SLA), was executed in 2013 by
Defendant Imperium IP Holdings (Cayman), Ltd. and two non-parties: Sony
Corporation and its subsidiary, Sony Mobile Communications (USA) Inc.
Samsung claims to be a third-party beneficiary of the SLA. Samsung alleges that
Imperium breached the SLA when Imperium litigated a 2014 patent infringement
suit against Samsung in the Eastern District of Texas. Samsung has "move[d] for
Partial Summary Judgment that [Imperium] breached the covenant of the second
sentence of Section 2.6 of the [SLA] ... by relying [in the Texas case] on Sony
image sensors to assert infringement of claims 1, 6, 14, and 16 of U.S. Patent No.
7,092,029 (the #029 patent) by Samsung digital cameras containing only a Sony
image sensor 1 and by Samsung smartphones containing a Sony image sensor in
their main cameras." D.I. 157.
The motion is arguably four motions, since Samsung appears to allege
independent breaches of the SLA for each claim of the #029 patent Imperium
accused Samsung of infringing in the Texas case. It might also be viewed as two
motions, as Samsung makes two sets of arguments in its briefing-one set with
respect to claims 1 and 4 and the other set with respect to claims 14 and 16.
Samsung, however, filed a single motion and I will treat the motion as such.
Section 2.6 of the SLA provides that "[Imperium], on behalf of itself, and its
successors and assigns, further covenants not to rely on any [Sony image sensor] or
the exploitation thereof (in whole or in part) to satisfy any element of any claim of
the [#029 patent]." D.I. 160, Ex. 2 ยง 2.6. The crux of Samsung's argument with
respect to claims 1 and 6 is that Imperium breached section 2.6 by "rely[ing] on
Sony image sensors (or the exploitation thereof) to satisfy elements of claims 1 and
6 [of the #029 patent]" in the Texas litigation D.I. 158 at 18.
1
I take it that Samsung does not really mean to say that the Samsung digital
cameras accused of infringement in the Texas case "contain[ed] only a Sony image
sensor." I assume that the Samsung digital cameras must have contained things
besides a Sony image sensor. I understand Samsung to mean that all the image
sensors in the accused Samsung cameras were made by Sony.
2
Imperium disputes this assertion and argues that "[c]laims 1 and 6 of the
#029 patent did not require proof of an image sensor, Sony or otherwise, and
therefore Imperium did not rely on a Sony image sensor to satisfy any element of
either claim." D.I. 174 at 1. Imperium cites record evidence from its expert's trial
testimony that appears on its face to provide support for this position. See D.I.
175, Ex. 36 at IA-394 (Q: Is it your opinion that you don't need the eye or the
image sensors, so to speak, to practice the claims of the #029 patent? A: For the
preflash patents, that's a true statement, sir, you do not."). There is therefore
record evidence from which a rational jury could infer that Imperium did not need
to (and therefore did not) rely on Sony image sensors to prove in the Texas case
that Samsung's accused products infringed claims 1 and 6 of the #029 patent.
Because there is at least one disputed fact material to Samsung's motion for
partial summary judgment, I will deny the motion. 2 See Anderson v. Liberty
Lobby, Inc., 477 U.S. 242,248 (1986) (holding that summary judgment will not lie
if there is a genuine dispute about a material fact).
2
Because the motion was a single motion and a single disputed material fact
precludes granting that motion, I did not address Imperium's argument that its
allegations in the Texas case of infringement of claims 14 and 16 of the #029
patent (which explicitly recite an image sensor) did not violate section 2.6 because
it dropped those allegations before trial. D.I. 174 at 7-9. I note, however, that the
plain language of the second sentence of section 2.6 makes clear that the covenant
set forth in that sentence is not limited to what occurs at a trial.
3
NOW THEREFORE, at Wilmington this Nineteenth day of May in 2021 , IT
IS HEREBY ORDERED that Samsung's Partial Motion for Summary Judgment
(D.I. 157) is DENIED.
4
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?