In this patent infringement action between Personal Audio ("Personal Audio") and Togi Entertainment, Inc. ("Togi"), the defendants filed a motion for summary judgment based on a license defense. They requested summary judgment "to the extent Plaintiff's claims involve Apple software, products, systems, or services, all of which were previously licensed by Plaintiff under Section 2.2 of the Apple License."
The Apple License ("License") Section 2.2 provided the relevant grant:
In addition to Sections 2.1 and 2.3, Personal Audio, on behalf of itself, its Affiliates, and their successors and assigns hereby covenants not to sue Apple, its Affiliates, their successors and assigns, direct or indirect customers, users, licensees, service providers, distributors, retailers, or direct and indirect suppliers for infringement of the Personal Audio Patents with respect to Licensed Products licensed above in Section 2.1. No Licensed Product shall be used to satisfy any claim or claim element asserted by Personal Audio or its Affiliates, and their successors or assigns, against Apple, its Affiliates, their successors and assigns, customers, users, licensees, service providers, distributors, retailers, or direct and indirect suppliers. (Emphasis added.)
"Licensed Product" was defined as "Any product, product line, service, device, system, component, hardware, software, any combination of the foregoing, or other offering that was or is (either now or in the future) designed, branded, made, used, sold, offered for sale, leased, purchased, licensed, imported, exported, supplied, or otherwise provided by or for Apple or an Apple Affiliate."
The court then examined whether Personal Audio was using an Apple product to "satisfy any claim or claim element." Defendants argued that because Personal Audio's counsel and experts used Apple products to demonstrate how Defendants' (non-Apple) back-end systems function, they have used Apple products to satisfy a claim.
The court found this argument to be without merit. "This argument is unavailing. Clearly, any reasonable person reading the terms of the license would understand it to mean that Personal Audio could not point to activities performed by an Apple device as the allegedly infringing act. Defendants, of course, are not pointing to their own expert's use of an Apple computer as the allegedly infringing act. Instead, Mr. Almeroth (and Personal Audio's counsel) simply happened to be using an Apple product while demonstrating how Defendants' non-Apple systems functioned. Thus, Personal Audio is not using an Apple product to 'satisfy any claim or claim element.'"
The court further found that "[t]he targeted instrumentalities presently before the Court are solely Defendants' back-end (non-Apple) systems and servers. Take, for example, claim 31's requirement that the communications interface must receive data from a client device. The focus of that limitation is on the receipt of the data, which is allegedly performed in this case by a communications interface in Defendants' back-end systems. The mere fact that if a server is receiving that data, it means there is likely an act of sending performed by some other party (and by what could - in theory - be an Apple device) is not relevant because the focus of the infringement analysis for that claim is on the communications interface. The focus of claim 31 is on the actions of the 'server side apparatus' and its 'communications interface,' not any end-user device, and thus, Personal Audio need not prove the action of a client device in the context of claim 31."
Accordingly, the Magistrate Judge recommend denying the summary judgment motion based on the Apple license.
Personal Audio, LLC v. Togi Entertainment, Inc., Case No. 2:13-CV-13-JRG-RSP (E.D. Tex. Sept. 9, 2014)