Digest of Wi-Lan USA, Inc. v. Ericsson, Inc.Nos. 2013-1485 and 2013-1566 (Fed. Cir. Aug. 1, 2014) (non-precedential). On appeal from S.D. Fla. and E.D. Tex. Before Moore,O’Malley, and Wallach.

Procedural Posture: Texas and Florida district courts issued conflicting summary judgment rulings regarding (1) a covenant not to sue, and (2) an agreement to provide a license at most-favored licensee status as compared to any future licensees.  Both parties appealed.  CAFC ruled that (1) the covenant not to sue did not apply to the patents at issue, and (2) the plaintiff was not required by the agreement to provide a license to the defendant.  CAFC affirmed the Texas rulings and reversed and remanded the Florida rulings.

  • Contracts: The prior covenant between the parties not to sue did not preclude the plaintiff from bringing suit under different patents. Although the wording of the covenant supported defendant’s argument that the covenant covered defendant’s products, the text of the agreement as a whole supported plaintiff’s argument that the covenant only applied to certain patents.
  • Contracts: The prior agreement requiring plaintiff to offer defendant a license at most-favored licensee status did not cover later-acquired patents. The agreement was written in the present tense (covering patents that plaintiff “owns or controls”), and under controlling precedent, use of the present tense meant that the agreement did not apply to later-acquired patents.