On May 7, 2013, ALJ E. James Gildea issued the public version of Order No. 29 (dated April 17, 2013) denying Respondents LG Electronics, Inc. and LG Electronics USA, Inc.’s (collectively, “LG”) motion for summary determination of noninfringement in Certain Wireless Consumer Electronic Devices and Components Thereof (Inv. No. 337-TA-853).

According to the Order, LG filed a motion for summary determination that its products containing certain hardware and/or software are licensed to the asserted patent through a 2004 agreement with Complainant Technology Properties Limited LLC (“TPL”) and a 2005 agreement with Complainant Patriot Scientific Corporation (“Patriot”).  As a result of these agreements, LG argues that all of its mobile phones containing this hardware and/or software are noninfringing.  The details of the specific hardware and software were redacted from the public version of the Order.

In opposition, Complainants argued that the terms of the two license agreements do not cover the hardware and software at issue and that “the phone itself is an LG product and is not exempt from liability for infringing the accused patent.”  Thus, in view of the parties conflicting interpretations of the agreements, Complainants argued that summary determination was inappropriate.  The Commission Investigative Staff (“OUII”) also opposed LG’s motion, arguing that the motion turned on the interpretation of a specific term (redacted from the public version of the Order) which could take on multiple meanings and, thus, presented a genuine issue of material fact warranting denial of the motion.

Having considered the parties arguments, ALJ Gildea denied LG’s motion, agreeing with the OUII that there appeared to be a fundamental ambiguity in the agreements regarding the dispositive term and, therefore, that a trial on the merits is warranted to determine whether any LG products are covered by the licenses.  In particular, the ALJ found that under Delaware contract law, which governs the interpretation of the licenses at issue, extrinsic evidence should be considered to interpret the meaning of the contested term.