United States District Court, N.D. California
TECHNOLOGY PROPERTIES LIMITED LLC and MCM PORTFOLIO LLC, Plaintiffs,
CANON INC. et al., Defendants.
ORDER ON MOTION TO DISMISS AND MOTIONS TO SEAL
(DOCKET NOS. 435, 438, & 456)
CLAUDIA WILKEN, UNITED STATES DISTRICT JUDGE
Canon Inc. and Canon U.S.A., Inc. (collectively Canon) move
to dismiss the claims of Plaintiff Technology Properties
Limited LLC (TPL) for lack of standing. The Court GRANTS
files two motions to seal. The motion to seal at Docket
Number 435 requests filing under seal portions of the opening
brief and all of Exhibit 1 to protect the confidentiality of
Plaintiffs' documents. Plaintiffs' declaration in
response explains that Defendants' brief need not be
filed under seal. Further, as to Exhibit 1, only certain
portions of the document need to be sealed: section 1 of the
License Agreement and the paragraph of definitions in Exhibit
C. Docket No. 439 ¶ 9. These portions lay out
confidential payment terms--trade secrets--that are not
relevant to this motion, and therefore do not undermine
policies of access and disclosure. See Kamakana v. City &
Cty. of Honolulu, 447 F.3d 1172, 1178-79 (9th Cir.
2006). The Court GRANTS Canon's motion in part and DENIES
it in part; Canon shall refile its opening brief without any
redactions and Exhibit 1 partially redacted as Plaintiffs
request. The Court employs this now-public information.
second motion to seal at Docket Number 456 is also based on
Plaintiffs' confidentiality designations. Plaintiffs
filed no declaration within the time permitted establishing
that the designated material is sealable. This motion to seal
Court also GRANTS TPL's Request for Judicial Notice (RJN)
asking that the Court take notice of documents from TPL's
Bankruptcy Proceeding. Docket No. 452-1.
April 12, 2006, Plaintiff MCM Portfolio LLC, then known as
both FMM and FPL, entered into a License Agreement with TPL.
Hertko Dec. in Support, Ex. 1. At the time, MCM was the owner
of the patents in dispute here. The License Agreement granted
the following license to TPL:
2.1. FPL hereby grants unto TPL an exclusive, worldwide, and
perpetual license with respect to those rights which enable
and/or facilitate the management, development, and
commercialization of the MCM Technology.
2.2. In conjunction with section 2.1 above, FPL hereby
grants, sets-over, assigns, transfers, and conveys unto TPL
the exclusive, worldwide right to:
2.2.1. Regulate and control by license, sublicense,
affiliation, or other arrangement the practice and/or use of
the MCM Technology; 2.2.2. Sue on and collect for its own use
and benefit all claims and/or entitlements with respect to
damages by reason of past infringement or use of the MCM
Technology; and, 2.2.3. Pursue in its own name and for its
own use and benefit all remedies of whatsoever kind or nature
relating to the past, present, or future infringement or use
of the MCM Technology.
2.3. Subject, however, to the non-exclusive, product-related
rights of IntellaSys (BEC) Ltd and OnSpec Electronic, Inc.
Agreement at pp. 4-5.
March 28, 2012, TPL filed this suit in the Eastern District
of Texas. TPL stated that it is the "exclusive
licensee" of both patents at issue, "with ownership
of all substantial rights . . . including the right to
exclude others and to enforce, sue and recover damages for