949 F.3d 691
Fed. Cir.2020Background
- Cheetah Omni owns the ’836 patent (optical communications). It sued AT&T alleging infringement by AT&T’s fiber-optic systems; Ciena intervened as a supplier to AT&T.
- Cheetah previously sued Ciena and Fujitsu in a 2011 ROADM case and settled, executing license agreements with each (a license + a separate covenant not to sue).
- The Ciena license granted a perpetual, worldwide, paid-up license under “Licensed Patents” (defined to include the Patents-in-Suit and “all parents…continuations…continuations-in-part”) to make/use/sell “Licensed Products” (defined broadly to include Ciena products alone or in combination that could be alleged to infringe).
- Patent-family relationships: the ’714 patent (asserted in the ROADM case) is a continuation‑in‑part of the ’925 patent (a parent). The ’836 patent is a continuation of the ’704 patent, which is a continuation of the ’925—making the ’836 a ‘‘grandchild’’ of the ’925.
- The district court held the express license to the ’925 (as a parent) impliedly licensed the ’836 and that the accused AT&T systems fell within the Licensed Products; summary judgment for AT&T and Ciena was granted and the case dismissed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether an express license to a parent patent implies a license to a continuation-of-a-continuation (the ’836). | Cheetah: Parties did not intend to include the ’836; it was known and would have been named if intended. | AT&T/Ciena: License language covers parents and continuations; absent clear contrary intent, continuations are impliedly licensed. | Held: License to the parent (’925) implies license to the ’836 under General Protecht/TransCore presumption. |
| Whether the accused AT&T systems are “Licensed Products.” | Cheetah: The ’836 claims cover different, broader inventions; accused systems are not within Licensed Products. | AT&T/Ciena: Licensed Products expressly include Ciena/Fujitsu products alone or in combination with others; accused systems combine licensed components. | Held: Accused AT&T systems are Licensed Products because they combine Ciena/Fujitsu components and thus fall within the broad definition. |
| Whether parties’ knowledge of the ’836 and its explicit listing in the covenant not to sue shows mutual intent to exclude it from the licenses. | Cheetah: Because the covenant not to sue lists the ’836, and the parties knew of it, its omission from the license shows intent to exclude. | AT&T/Ciena: The license uses broad category language and expressly excludes other patents elsewhere; naming some patents does not show intent to exclude others falling within the definition. | Held: Omission of the ’836 from the license does not overcome the presumption; Cheetah bore the burden to explicitly carve out continuations. |
Key Cases Cited
- General Protecht Group Inc. v. Leviton Mfg. Co., 651 F.3d 1355 (Fed. Cir. 2011) (presumption that a license to a parent patent implies a license to its continuations absent clear contrary intent)
- TransCore, LP v. Elec. Transaction Consultants Corp., 563 F.3d 1271 (Fed. Cir. 2009) (legal estoppel and implied license to related later-issued patents necessary to practice an expressly licensed patent)
- AMP Inc. v. United States, 389 F.2d 448 (Ct. Cl. 1968) (legal estoppel prevents licensors from derogating license rights)
- Celotex Corp. v. Catrett, 477 U.S. 317 (U.S. 1986) (summary judgment standard)