The opinion of the court was delivered by: Marilyn L. Huff, District Judge United States District Court
ORDER DENYING IN PART MOTION FOR PARTIAL SUMMARY JUDGMENT
On July 18, 2011, Plaintiff Multimedia Patent Trust ("MPT") filed a motion for partial summary judgment. (Doc. No. 383.) On August 1, 2011, Defendants DirecTV, Inc., DirecTV Enterprises, LLC, the DirecTV Group, Inc., DirecTV Holdings LLC, and DirecTV Operations LLC (collectively "DirecTV") filed its response in opposition to MPT's motion. (Doc. No. 423.) On August 8, 2011, MPT filed its reply. (Doc. No. 432.) On August 10, 2011, Defendant Vizio, Inc. ("Vizio") filed a notice of joinder to DirecTV's opposition. (Doc. No. 438.) The Court held a hearing on the matter on August 15, 2011. Nathan K. Cummings and Jonathon G. Graves appeared for Plaintiff MPT. John W. Thornburg, Juanita R. Brooks, Thomas N. Milliken, Joanna M. Fuller, and Joseph P. Reid appeared for Defendant DirecTV. Kevin McBride appeared for Defendant Vizio. For the reasons below, the Court DENIES IN PART MPT's motion for partial summary judgment to the extent it relies on MPT's contention that the 2009 license is a novation of the 2002 license.
On February 13, 2009, MPT brought the present action against various Defendants, including DirecTV, alleging infringement of multiple patents related to video compression technology, including U.S. Patent Nos. 4,958,226 ("the '226 patent"), 5,136,377 ("the '377 patent"), 5,227,878 ("the '878 patent"), 5,500,678 ("the '678 patent"), and 5,563,593 ("the '593 patent"). (Doc. No. 1, Compl.)On April 13, 2009, DirectTV filed an answer to MPT's complaint and asserted the affirmative defenses of patent exhaustion and license. (Doc. No. 53 ¶¶ 145, 152.)
I. Summary Judgment Standard
Summary judgment is appropriate under Rule 56 of the Federal Rules of Civil Procedure if the moving party demonstrates the absence of a genuine issue of material fact and entitlement to judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). A fact is material when, under the governing substantive law, it could affect the outcome of the case. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986); Freeman v. Arpaio, 125 F.3d 732, 735 (9th Cir. 1997). A dispute is genuine if a reasonable jury could return a verdict for the nonmoving party. Anderson, 477 U.S. at 248.
A party seeking summary judgment always bears the initial burden of establishing the absence of a genuine issue of material fact. Celotex, 477 U.S. at 323. The moving party can satisfy this burden in two ways: (1) by presenting evidence that negates an essential element of the nonmoving party's case; or (2) by demonstrating that the nonmoving party failed to establish an essential element of the nonmoving party's case on which the nonmoving party bears the burden of proving at trial. Id. at 322-23. "Disputes over irrelevant or unnecessary facts will not preclude a grant of summary judgment." T.W. Elec. Serv., Inc. v. Pacific Elec. Contractors Ass'n, 809 F.2d 626, 630 (9th Cir. 1987). Once the moving party establishes the absence of genuine issues of material fact, the burden shifts to the nonmoving party to set forth facts showing that a genuine issue of disputed fact remains. Celotex, 477 U.S. at 322. The nonmoving party cannot oppose a properly supported summary judgment motion by "rest[ing] on mere allegations or denials of his pleadings." Anderson, 477 U.S. at 256. "The 'opponent must do more than simply show that there is some metaphysical doubt as to the material fact.'" Kennedy v. Allied Mut. Ins. Co., 952 F.2d 262, 265--66 (9th Cir. 1991) (citing Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986)). Furthermore, the nonmoving party generally "cannot create an issue of fact by an affidavit contradicting his prior deposition testimony." Kennedy, 952 F.2d at 266; see Foster v. Arcata Assocs., 772 F.2d 1453, 1462 (9th Cir. 1985), cert. denied, 475 U.S. 1048 (1986); Radobenko v. Automated Equip. Corp., 520 F.2d 540, 543--44 (9th Cir. 1975).
When ruling on a summary judgment motion, the court must view all inferences drawn from the underlying facts in the light most favorable to the nonmoving party. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986). The Court does not make credibility determinations with respect to evidence offered. See T.W. Elec., 809 F.2d at 630-31 (citing Matsushita, 475 U.S. at 587). Summary judgment is therefore not appropriate "where contradictory inferences may reasonably be drawn from undisputed evidentiary facts." Hollingsworth Solderless Terminal Co. v. Turley, 622 F.2d 1324, 1335 (9th Cir. 1980).
In the present motion, MPT seeks partial summary adjudication of DirecTV's affirmative defenses of license and exhaustion. (Doc. No. 383.) In support of these defenses, DirecTV contends that its manufacturers are licensed to manufacture and sell products that practice patents contained in the 2002 MPEG LA form portfolio license (the "2002 license") and the 2009 MPEG LA form portfolio license (the "2009 license").*fn1 (Doc. No. 423, at 3-4.) Specifically, DirecTV contends that its standard definition STBs, high definition STBs, MPEG-2 broadcast decoders, hybrid MPEG-2/H.264 broadcast decoders, MPEG-2 broadcast encoders, hybrid MPEG-2/H.264 broadcast encoders, and H.264 broadcast encoders are covered by the 2002 license and its MPEG-2 broadcast decoders and MPEG-2 broadcast encoders are covered by the 2009 license. (Id. at 3-6.) The parties agree that the two licenses contain the '226 patent, the '878 patent, and the '678 patent as part of their patent pools. (Doc. No. 383, at 1; Doc. No. 423, at 1.) DirecTV further contends that because its purchases from its manufacturers were authorized under the terms of those two licenses, MPT's rights under the '226 patent, the '878 patent, and the '678 patent are exhausted by those authorized sales. (Doc. No. 423, at 14-15.)
A. DirecTV's Exhaustion and License Defense under the 2002 License
MPT argues that it is entitled to summary judgment on DirecTV's license and exhaustion defenses based on the 2002 license. MPT argues that the 2002 license no longer applies to DirecTV or its manufacturers because the 2009 License is the current operative license and is a novation of the 2002 license, which completely replaced the 2002 license. (Doc. No. 383, at 8-10.) DirecTV argues that MPT cannot meet the heavy burden of proving that the 2009 license was a novation of the 2002 license. (Doc. No. 423, at 7-10.)
Under New York law,*fn2 "[a] novation is the substitution of a new obligation for an old one, with the intent to extinguish the old one." Wong v. Michael Kennedy, P.C., 853 F. Supp. 73, 81 (E.D.N.Y. 1994). The effect of a novation is to "nullif[y] the original obligation." Lazere Fin. Corp. v. Crystal Mart, Inc., 357 N.Y.S.2d 973, 975 (1974). The four elements of a novation are "'a previous valid obligation, agreement of all parties to the new obligation, ...