Technology Properties Limited, LLC v. Canon, Inc.

          ORDER ON MOTION TO DISMISS AND MOTIONS TO SEAL (DOCKET NOS. 435, 438, & 456)

          CLAUDIA WILKEN, UNITED STATES DISTRICT JUDGE

         Defendants 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 Canon's motion.

         PRELIMINARY MATTERS

         Canon 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.

         Canon's 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 is DENIED.

         The 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.

         BACKGROUND

         On 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.

         License Agreement at pp. 4-5.

         On 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 ...