On May 20, 2013, District Court Judge Ronald M. Whyte issued an Order (N.D. Cal. Case No. C-12-03451) granting Plaintiff Realtek’s motion for summary judgment that Defendants LSI and Agere breached their licensing obligation by failing to offer a license with respect to Defendants’ asserted standard-essential patents on RAND terms before seeking an exclusion order in pending ITC Investigation No. 337-TA-837. Judge Whyte further issued a preliminary injunction barring Defendants from enforcing, or seeking to enforce, any exclusion order with respect to the asserted patents pending a determination of the RAND issues by the District Court and denied Defendants’ motion to stay the District Court case pending the ITC investigation. Judge Whyte noted that there is no dispute that Defendants entered into a binding contract with IEEE to license their declared standard-essential patents and that the breach of contract holding is limited to “where defendants did not even attempt to offer a license, on ‘RAND’ terms or otherwise, until after seeking injunctive relief.” He also found that the preliminary injunction serves the public interest by “mak[ing] clear that commitments to make patents available on reasonable terms matters.” Finally, in denying Defendants’ motion to stay, Judge Whyte emphasized that a District Court’s decision on monetary relief, including a RAND royalty, is different from the ITC’s consideration of RAND obligations “in the context of deciding whether” to issue an exclusion order.
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District Court finds breach of RAND licensing obligation and issues preliminary injunction barring enforcement of any ITC exclusion order
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