Phili86 Mfb License Agreement And

Accordingly, this court reviews the district courts decision without deference.

KONINKLIJKE PHILIPS ELECTRONICS N.V., U.S.

Philips Corporation, and Philips Electronics North America Corporation, DefendantsThird-Party Plaintiffs-Appellees, v.

Moser Baer India Limited, Third-Party Defendant-Appellant, and Global Data Media FZ-LLC, MBI International FZ-LLC, MBI International Services Private Limited, MBI India Marketing Private Limited, Glyphics Media, Inc., and Memorex International, Inc., Third-Party Defendants.

Beeney and Adam R.

See Imation Corp.

Koninklijke Philips Elec.

N.V., 630 F. Supp.

D.Minn.2008) ( Rule 12(c) Opinion ).

Phili86 Mfb License Agreement And

Because the district court erred in holding that two of Imations subsidiaries are not licensed under the parties patent license agreement and thus improperly granted judgment on the pleadings, this court reverses the judgment of the district court, orders entry of judgment in favor of Appellants, and remands the case for appropriate further proceedings consistent with this opinion.

The Agreement between these sophisticated parties modified on-going royalty rates 3M paid with regard to existing licenses, and granted each party to the Agreement royalty-free, paid-up, nonexclusive cross-licenses to make, use, import, offer to sell, and sell other products incorporating optical and magneto-optical information storage and retrieval technology patented by the other party, for the life of the licensed patents.

In 1996, 3M spun-off Imation, and the Agreement continued between Imation and Philips.

Each license grant thus relies on several defined terms relevant to this appeal.

In particular, Article 1, Section 12 of the Agreement articulates a three-part definition of the scope of Licensed Patents, which includes patents that.

Article 3 provides that the term of the licenses granted under Article 2 shall commence on the effective date of this Agreement and shall continue as to each Licensed Patent for its life.

Article 4 of the Agreement, which contains the expiration date referenced in Section 12(3), states that the term of this Agreement shall expire on March 1, 2000, except that any patent license which has been granted under ARTICLE 2 shall continue thereafter for the term provided in ARTICLE 3.

In 2003, Imation formed a joint venture with Moser Baer under the name Global Data Media FZ-LLC (GDM).

Imation owns 51 of the GDM joint venture and Moser Baer owns 49.

In addition to GDM, Imation acquired Memorex International, Inc.

Memorex) in 2006, and now possesses at least a 50 ownership interest in Memorex.

Both GDM and Memorex are third-party defendants to the underlying case, but neither is a party to this appeal.

As the parties attached the Agreement to the pleadings, Philips moved for judgment on the pleadings under Federal Rule of Civil Procedure 12(c).

The district court granted judgment on the pleadings, holding that: (1) the expiration provision of Article 4 of the Agreement limited license coverage to only those Subsidiaries which obtained licenses prior to the expiration date; and (2) GDM and Memorex do not qualify as 984 Subsidiaries under the Agreement because they did not meet the definition of Subsidiary prior to the Agreements expiration date.

Examining the licenses granted in Article 2, the district court found that because GDM and Memorex did not become Imation subsidiaries until after the CLA expired, they could not have been granted a license as of the date of the expiration.

The district court thus rejected Moser Baers argument that Article 2 effected a present license grant to a group of Subsidiaries, the membership of which could change at any point during the term of the license.

The assertion of a group license is incompatible with the language of the CLA, which, despite its reference to a singular license in Article 2, section 2, plainly contemplates the grant of multiple personal licenses.

The district court held that the term Subsidiarydefined in Article 1, Section 13 to include any business organization as to which the party now or hereafter has more than a fifty percent (50) ownership interestexcludes companies that were not Imation subsidiaries prior to March 1, 2000.

Id. at 1053. Specifically, the district court held that the phrase now or hereafter in Section 13 refers to any time up until the expiration of the agreement because the expiration provision applies to the CLA as a whole.

Id. at 1050-52. The district court thus rejected Imations argument, based on the term hereafter and the absence of any reference to the Agreements expiration, that the Subsidiary definition contains no temporal limitation that would preclude GDM and Memorex from qualifying as Subsidiaries.

Because Imations declaratory judgment complaint includes claims for noninfringement, invalidity, and unenforceability of the patents allegedly covered under the CLA, this court has jurisdiction pursuant to 28 U.S.C.

See Rentrop v. Spectranetics Corp., 550 F.3d 1112, 1118 (Fed.Cir.2008) (The Federal Circuit defers to the law of the regional circuits on matters of procedural law that do not implicate issues of patent law.

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