Opinion
No. 5:03-cv-01514-RS.
November 17, 2004
ORDER GRANTING ASAT INC.'S MOTION FOR SUMMARY JUDGMENT AND GRANTING ASAT LTD.'S MOTION FOR PARTIAL JUDGMENT ON THE PLEADINGS
I. INTRODUCTION
Plaintiff ASAT, Inc. moves for summary judgment on defendant Motorola, Inc.'s ("Motorola") sole remaining counterclaim against it based on breach of contract implied-in-fact. In addition, plaintiff ASAT Limited ("ASAT Ltd.") moves for partial judgment on the pleadings on Motorola's first counterclaim for relief based on breach of contract. Both motions were fully briefed and heard by the Court on October 27, 2004. Based on all papers filed to date, as well as on the oral argument of counsel, the Court grants ASAT Inc.'s motion for summary judgment, as well as ASAT Ltd.'s motion for partial judgment on the pleadings, for the reasons set forth below.
II. BACKGROUND
On April 9, 2003, ASAT, Inc. and ASAT Holdings, Ltd. commenced this action for declaratory relief, seeking a judgment that neither of them are in breach of contract with Motorola. Motorola filed an answer and counterclaim for breach of contract and joined QPL International Holdings, Ltd. ("QPL") as an additional counterdefendant. Following several rounds of motions to dismiss, Motorola filed a Third Amended Counterclaim against ASAT, Inc., ASAT Holdings Ltd., ASAT Ltd., and QPL. The amended counterclaim alleges only one claim for relief against ASAT, Inc. — a claim for breach of implied-in-fact contract. It alleges two claims for relief against ASAT Ltd., one for breach of contract and the other for breach of implied-in-fact contract. Motorola contends that, although neither ASAT, Inc. nor ASAT Ltd. are parties or signatories to the contract between Motorola and QPL, styled as an Immunity Agreement pertaining to the use of Motorola's patented Ball Grid Assembly Packages ("BGAP"), such ASAT entities nevertheless owe Motorola royalties under the terms of the Agreement based on their past performance and conduct. Motorola alleges that the implied-in-fact contract with ASAT, Inc. and ASAT, Ltd. has the same terms and conditions as those set forth in the Immunity Agreement.
ASAT, Inc. and ASAT Ltd. respond that no contract, express or implied, exists between either of them and Motorola and that, accordingly, they are entitled to judgment as a matter of law with respect to Motorola's counterclaims for relief. Specifically, ASAT, Inc. seeks summary judgment on the basis that no evidence exists supporting Motorola's contention that ASAT, Inc. breached an implied contract, which would thereby trigger royalty payments owing to Motorola. ASAT Ltd. seeks a partial judgment on the pleadings regarding Motorola's claim that it breached the contract since it is neither a party to, nor an assignee of, the contract between Motorola and QPL. Both motions are addressed below.
III. STANDARDS
A. Motion for Summary Judgment
Summary judgment is proper "if the pleadings and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c). The purpose of summary judgment "is to isolate and dispose of factually unsupported claims or defenses."Celotex v. Catrett, 477 U.S. 317, 323-324 (1986).
The moving party "always bears the initial responsibility of informing the district court of the basis for its motion, and identifying those portions of `the pleadings and admissions on file, together with the affidavits, if any' which it believes demonstrate the absence of a genuine issue of material fact." Id. at 323. If it meets this burden, the moving party is then entitled to judgment as a matter of law when the non-moving party fails to make a sufficient showing on an essential element of his case with respect to which he bears the burden of proof at trial. Id. at 322-23.
The non-moving party "must set forth specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e). The non-moving party cannot defeat the moving party's properly supported motion for summary judgment simply by alleging some factual dispute between the parties. To preclude the entry of summary judgment, the non-moving party must bring forth material facts, i.e., "facts that might affect the outcome of the suit under the governing law. . . . Factual disputes that are irrelevant or unnecessary will not be counted." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986). The opposing party "must do more than simply show that there is some metaphysical doubt as to the material facts."Matsushita Elec. Indus. Co. v. Zenith Radio, 475 U.S. 574, 588 (1986).
The court must draw all reasonable inferences in favor of the non-moving party, including questions of credibility and of the weight to be accorded particular evidence. Masson v. New Yorker Magazine, Inc., 111 S.Ct. 2419, 2434-35 (1991) (citing Anderson, 477 U.S. at 255);Matsushita Elec. Indus. Co. v. Zenith Radio, 475 U.S. 574, 588 (1986);T.W. Elec. Service v. Pacific Elec. Contractors, 809 F.2d 626, 630 (9th Cir. 1987). It is the court's responsibility "to determine whether the `specific facts' set forth by the nonmoving party, coupled with undisputed background or contextual facts, are such that a rational or reasonable jury might return a verdict in its favor based on that evidence." T.W. Elec. Service, 809 F.2d at 631. "[S]ummary judgment will not lie if the dispute about a material fact is `genuine,' that is if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson, 477 U.S. at 248. However, "[w]here the record taken as a whole could not lead a rational trier of fact to find for the nonmoving party, there is no `genuine issue for trial.'" Matsushita, 475 U.S. at 587.
B. Judgment on the Pleadings
Judgment on the pleadings should be granted where "the moving party clearly establishes on the face of the pleadings that no material issue of fact remains to be resolved and that it is entitled to judgment as a matter of law." Hal Roach Studios, Inc. v. Richard Feiner Co., 896 F.2d 1542, 1550 (9th Cir. 1989). When ruling on such a motion, the Court must accept as true all material allegations made in the complaint, however, it need not accept as true conclusory allegations or legal characterizations. McGlinchy v. Shell Chemical Co., 845 F.2d 802, 810 (9th Cir. 1988).
IV. DISCUSSION
A. ASAT Inc.'s Motion for Summary Judgment
It is undisputed that Motorola entered into an Immunity Agreement with QPL in October of 1993 regarding Motorola's patents for BGAP. Under the parties' agreement, QPL agreed to pay royalties to Motorola for BGAP products manufactured and sold by QPL or its subsidiaries. A subsidiary is defined in the Agreement as any entity in which QPL holds more than a 50% ownership interest. See Appendix of Documents in Support of ASAT's Motion ("Appendix"), Exh. 4 at ¶ 1.1. In exchange for QPL's payments, Motorola agreed to grant patent infringement immunity to QPL and its subsidiaries.
In October of 1999, QPL underwent a corporate restructure which resulted in the formation of ASAT Holdings, a Cayman Islands corporation formed to hold all of the stock of ASAT Ltd., a Hong Kong corporation. Appendix at Exh. 5, ¶ 3.6. QPL then sold off a 50% interest in ASAT Holdings to a group of investors via a Subscription Agreement dated October 29, 1999. Id. at §§ 2, 3.6. The Subscription Agreement contains a series of representations by QPL to the new investors, including a disclosure letter which lists all of the intellectual property rights which are "owned, licensed or used by any ASAT Company." Id. at § 3.18. The Immunity Agreement between QPL and Motorola is included on that list of intellectual property.
Despite QPL's corporate restructuring, its BGA operations proceeded undisturbed and Motorola continued to receive quarterly royalty payments based on the ASAT entities' BGA package sales, as provided in the Immunity Agreement. See Answer at ¶ 20. With each payment, Motorola received a report stating that the payments were being made "pursuant to the Immunity Agreement between QPL and Motorola." Id.; Exh. C to Kerry Hopkins Declaration. The report was prepared on ASAT letterhead and signed "for and on behalf of ASAT Limited" by Arthur Tsui, Financial Controller. See Exh. C.
ASAT, Inc. argues that since it does not now and never has made BGA packages, it could not have incurred any royalty obligations to Motorola under the terms of the contract which Motorola identifies. To support its contention, ASAT, Inc. relies on Section 4.1 of the Immunity Agreement, which states in relevant part that QPL agrees to pay Motorola a royalty based on the total number of pads on BGA packages "made by QPL and its subsidiaries." See Appendix at Exh. 4, ¶ 4. ASAT, Inc. notes that the elements necessary to assert a claim for breach of contract are: (1) the existence of an agreement between the parties; (2) performance by the party seeking relief under the agreement; (3) breach of such agreement by the counterdefendant; and, (4) damage caused by such breach. McDonald v. John P. Scripps Newspaper, 210 Cal.App.3d 100, 104 (1989). For purposes of this motion only, ASAT, Inc. assumes that Motorola has established the first and second requirements stated, namely, the existence of an agreement by the parties under which Motorola performed all obligations required of it. Nonetheless, ASAT, Inc. argues that, based on the terms of the alleged agreement between the parties, it would owe royalties to Motorola only on BGA packages that it, or its subsidiaries, made. Since ASAT, Inc. does not make BGA packages and has no subsidiaries, it contends that Motorola cannot establish that ASAT, Inc. breached the terms of any agreement. Therefore, ASAT, Inc. requests that judgment be entered in its favor as to Motorola's claim for breach of implied-in-fact contract.
ASAT, Inc. markets the products of ASAT Ltd. See Third Amended Counterclaim at ¶ 10.
Motorola responds that the evidence establishes ASAT, Inc. "participated in" the manufacture of BGA packages during the relevant time period. It reasons further that such participation falls within the meaning of the term "makes" when used in conjunction with BGA packages and, therefore, obligates ASAT, Inc. to pay royalties to Motorola based on the terms set forth in the Immunity Agreement.
In resolving a dispute over contract interpretation, the threshold question of law which the court must address is whether the contract is ambiguous. Majchrowski v. Norwest Mortgage, Inc., 6 F. Supp.2d 946, 963 (N.D. Ill. 1998). "Ambiguity does not exist simply by virtue of the parties' disagreement over a provision's meaning." Id. Instead, the court must determine whether the contract's provisions are subject to more than one reasonable interpretation. Young v. Allstate Ins. Co., 812 N.E.2d 741, 748 (Ill.App. 2004).
The Immunity Agreement states that Illinois law will govern any disputes arising thereunder. Accordingly, for purposes of this motion, ASAT, Inc. assumed that the implied-in-fact terms would also be governed by Illinois law.
The Immunity Agreement expressly provides that the royalty to be paid by QPL is based on the total number of pads on BGA packages made by QPL and its subsidiaries and shipped and invoiced to customers of QPL or its subsidiaries. Exh. A to Hopkins Declaration at § 4.1. "When interpreting contract provisions, words are given their plain and ordinary meaning and courts should refrain from adopting interpretations resulting in distortions and creating ambiguities where none exist." Young v. Allstate Insurance Co., 812 N.E.2d 741, 748 (Ill.App. 2004). A contract is not ambiguous if the court can discover its meaning simply through knowledge of the facts and circumstances surrounding the general language of the contract. Nuveen Invs. v. Hogan, 2001 WL 881363, at *3 (N.D. Ill. 2001);Flora Bank Trust v. Czyzewski, 583 N.E.2d 720, 725 (Ill.App. 1991).
Set in context, the term "made" is simply not conducive to the interpretation advanced by Motorola. The purpose of the Immunity Agreement is to provide protection against a charge of infringement, yet the activities of ASAT, Inc. which Motorola would sweep within the confines of that term, such as research and development and the leasing of office space, would not provide a basis for an infringement claim in the first instance. It is the manufacture, sale and distribution of the product at issue that implicates patent infringement and, accordingly, guides an understanding of how and why that term is used here. Moreover, ASAT, Inc. correctly notes that Motorola seeks to introduce parol evidence regarding the negotiation of a contract which is no longer at issue between the parties. In a prior order, the Court dismissed Motorola's claim for breach of contract against ASAT, Inc., concluding that Motorola had failed properly to allege the existence of a written contract, or the assignment thereof, between Motorola and ASAT, Inc. Accordingly, any negotiations regarding the separate written agreement are irrelevant to the terms of an implied contract based on conduct which, by definition, was not negotiated. See City of Marshall v. City of Casey, 532 N.E.2d 1121, 1123 (Ill.App. 1989) (implied contracts are manifested by conduct of the parties).
In any event, if evidence existed which supports Motorola's contention that the term "made" means something other than "manufactured," Motorola's own negotiators could presumably so testify and no such evidence has been offered.
Even if Motorola could successfully equate "made" as used in the Agreement with "participated in the manufacture," the evidence presented does not support that latter concept. Motorola points to an opinion of the United States Tax Court that it characterizes as a finding that ASAT, Inc. participated in the manufacturing of BGA products and, therefore, owed the IRS additional taxes. See ASAT, Inc. v. Commissioner of Internal Revenue, 108 T.C. 147 (1997). In addition, Motorola relies on the deposition testimony of Fe Maliwat, currently the highest ranking ASAT, Inc. employee, who testified that ASAT, Inc. employed an engineer, Marcos Kanezos, to conduct research and development work. See Hopkins Declaration at Exh. K, pp. 94-95. Ms. Maliwat also testified that there has never been any significant change in terms of ASAT, Inc.'s business activities regarding the assembly and testing of BGA packages. Id. at pp. 51, 53, 131. Moreover, Motorola notes that Jeffrey Dumas, ASAT, Inc. Board Member and Vice President, General Counsel and Secretary of ASAT Holdings, Ltd., testified that the ASAT "companies" continued the BGA manufacturing operations of QPL after October of 1999. Id. at Exh. L, p. 291.
Motorola objects to the Declaration submitted by Fe Maliwat in support of ASAT, Inc.'s motion for summary judgment on the bases that statements made in ¶¶ 2 and 3 lack foundation and are not based on the personal knowledge of Ms. Maliwat. ASAT, Inc. responds to the objections and sets forth the foundation upon which Ms. Maliwat's knowledge is based. Accordingly, Motorola's objections to the Maliwat Declaration are overruled.
Motorola also notes that Mr. Karnezos was one of the negotiators of the Immunity Agreement.
The evidence presented, however, simply fails to demonstrate that ASAT, Inc. participated in the manufacture of BGAs. First, the tax decision relied upon by Motorola involved an accounting procedural issue which is not presented in this case. That case cannot be read to have determined that ASAT, Inc. manufactures BGAs. Second, the deposition testimony cited by Motorola simply establishes that, after the QPL corporate restructure in October of 1999, the manufacture of BGAs continued. No witness testified, however, that ASAT, Inc. was the manufacturing entity or that it "participated" in such manufacture in any direct manner. To the contrary, the record submitted shows that ASAT Ltd. manufactures the BGA packages.
Motorola also relies on several documents which it contends support its argument that ASAT, Inc. was involved in the manufacturing process of BGAs. These documents include a "Trim and Form" tool sharing agreement between ASAT, Inc. and a third party; an industrial space lease to ASAT, Inc.; and, an "R D Consulting Agreement" between ASAT, Inc. and ASAT. Id. at Exh. M, §§ 6.2(I)-(iii). In addition, Motorola notes that ASAT, Inc. employs a Technology Officer and several engineers. Id. at Exh. L. Based on this documentary evidence, Motorola contends that ASAT, Inc. "participated in the manufacturing of the BGAs."
A review of these documents does not reflect that ASAT, Inc. participates in the manufacture of BGAs. Simply because ASAT, Inc. may assist ASAT Ltd. by sharing research and development does not change ASAT, Inc.'s status from a marketing division to a manufacturing division. The evidence is uncontroverted that ASAT, Inc. has no manufacturing facility and does not, in fact, make BGAs. Further, the agreements referred to by Motorola regarding ASAT, Inc.'s office lease and research and development are not related to the manufacture of BGAs. Even assuming that ASAT, Inc. participates in the development of BGA products, Motorola submits no authority for its proposition that such conduct is equivalent to the manufacture of BGAs. The documents and testimony proffered by the parties, to the contrary, confirm that ASAT Ltd. manufactured the BGAs and, accordingly, made payments to Motorola pursuant to the Immunity Agreement between Motorola and QPL. Nor is any evidence presented to support Motorola's contention that ASAT, Inc. paid royalties to Motorola under the Immunity Agreement. See Exh. C to Kerry Hopkins Declaration.
The only document which arguably supports Motorola's contention is Exhibit E to the Supplemental Hopkins Declaration. This Exhibit is an ASAT, Inc. fax cover sheet, dated November 19, 1999, instructing Bay Area Bank to wire funds to Motorola, Inc. on November 22, 1999, "pursuant to the attached letter and instructions." However, no letter or instructions are attached to the Exhibit. Accordingly, the Court declines to infer from this Exhibit that ASAT, Inc. made a royalty payment to Motorola pursuant to the Immunity Agreement between QPL and Motorola, or that such payment would be conduct that could properly fall under the rubric "made" as used in the Immunity Agreement.
ASAT, Inc. also correctly notes that additional discovery would not assist Motorola in defeating this motion since the contract does not contain any vague or ambiguous terms which require interpretation. Accordingly, the testimony and documents proffered by Motorola fail to indicate any link between ASAT, Inc. and the manufacture of BGAs. Based on the foregoing, the Court finds that no triable issues of material fact exist regarding ASAT, Inc.'s rights and obligations pursuant to an implied-in-fact agreement between it and Motorola since ASAT, Inc. did not directly or indirectly manufacture or make BGAs. As a result, ASAT Inc.'s motion for summary judgment as to Motorola's third counterclaim for relief is granted.
To this end, ASAT, Inc. objects to Motorola's administrative request to submit additional declarations in support of its opposition to ASAT, Inc.'s motion for summary judgment, which was filed prior to the hearing, on the basis that the proffered declarations cannot be used by the Court to defeat the plain and ordinary meaning of the terms contained in the contract. ASAT, Inc. also notes that Motorola failed to meet and confer prior to filing its administrative request. Since the Court finds that the contract is not ambiguous and, therefore, does not consider Motorola's declarations for the purpose of altering the terms contained therein, ASAT, Inc.'s objections are overruled.
B. ASAT Ltd.'s Motion for Partial Judgment on the Pleadings
As noted above, ASAT Ltd. moves for partial judgment on the pleadings as to Motorola's first counterclaim for relief based on breach of contract. Motorola's counterclaim against ASAT Ltd. alleges that "on October 29, 1999, QPL assigned its interest in the Immunity Agreement to ASAT Ltd. without prior notice to Motorola." See Motorola's Third Amended Counterclaim at p. 9, lines 2-3. ASAT Ltd. contends that Motorola has failed to present any evidence that such assignment occurred. In fact, ASAT Ltd. argues that the QPL corporate restructure documents which Motorola purports to rely upon for the purpose of demonstrating an assignment reveal that no such assignment occurred. Moreover, even assuming the evidence reflected that QPL had assigned the Immunity Agreement, a fact which ASAT Ltd. denies, ASAT Ltd. notes that such assignment is void as a matter of law since the Agreement required Motorola's consent to any assignment and Motorola has conceded that it did not provide such consent. For these reasons, ASAT Ltd. requests that the Court grant its motion for partial judgment on the pleadings with respect to Motorola's counterclaim for breach of contract.
Motorola responds that, pursuant to the corporate restructure which occurred in October of 1999, QPL assigned its rights under the Immunity Agreement to ASAT Ltd. through the Subscription Agreement and the Deed of Intellectual Property to ensure that ASAT Ltd. would enjoy immunity from lawsuits while it used Motorola's patented BGA technology. Accordingly, Motorola argues that ASAT Ltd. enjoyed the benefits of the Agreement, made payments thereunder, and is, therefore, now precluded from claiming that it was not an assignee of the contract. Motorola also points to additional evidence which it contends supports its argument that the Immunity Agreement was assigned to ASAT Ltd. Further, Motorola contends that the Court previously determined that, under Illinois contract law, the fact that Motorola did not consent to the assignment of the Immunity Agreement does not necessarily render such assignment ineffective. For these reasons, Motorola argues that ASAT Ltd.'s motion must be denied.
As noted above, the Subscription Agreement executed by QPL contains a series of representations to the new investors and refers to an accompanying disclosure letter which lists all of the intellectual property rights owned, licensed, or used by any ASAT company. Appendix, Exh. 5 at § 3.18. That letter includes the QPL-Motorola Immunity Agreement. Appendix, Exh. 6, p. 21 at § 6.4. The Subscription Agreement states that QPL has or will assign to ASAT Ltd. all intellectual property rights owned by QPL. Exh. 5 at § 3.18(d). However, that Agreement does not actually assign any rights. Rather, the Deed of Intellectual Property assigns all intellectual property rights "owned by QPL" and "used by ASAT Ltd." to ASAT Ltd. Appendix, Exh. 7. The Deed elaborates on the assigned rights, specifying that they include copyrights, trademarks, and rights to sue for infringement. Id. The Deed does not mention the Immunity Agreement. Id.
ASAT Ltd. argues that the Deed clearly and properly failed to assign the Immunity Agreement to ASAT Ltd. because such Agreement was not an intellectual property right "owned" by QPL. Rather, the Immunity Agreement was only a license granted by Motorola to QPL which allowed QPL, by making royalty payments to Motorola, to use Motorola's intellectual property rights for a specified period of time. Since QPL did not own such rights, it could not and did not assign such rights to ASAT Ltd. Exh. 5 at § 3.18(d).
Motorola counters that, when the Subscription Agreement, the disclosure letter, and the Deed of Intellectual Property are read together, it is clear that QPL intended to assign the Immunity Agreement to enable ASAT Ltd. to continue its BGA business unaffected by the QPL corporate restructure. In addition, Motorola argues that the following evidence supports its contention that QPL assigned its rights under the Immunity Agreement to ASAT Ltd.: (1) ASAT Ltd. sent royalty payments to Motorola pursuant to the Immunity Agreement between QPL and Motorola; (2) ASAT Ltd. stopped making royalty payments on December 31, 2002, the date that the Immunity Agreement expired; (3) ASAT Ltd. permitted Motorola, pursuant to ¶ 4.5 of the Immunity Agreement, to assert its right to an audit and ASAT Ltd. submitted to such audit; and, (4) ASAT Ltd. enjoyed the benefits of the Immunity Agreement since Motorola refrained from suing ASAT Ltd. for patent infringement throughout the duration of the Immunity Agreement.
The Court agrees that an inference could be drawn that QPL intended to assign its license with Motorola to ASAT Ltd. to secure infringement immunity for such entity. However, an intent to assign does not equate to a legally valid assignment.
See Exh. C to Kerry Hopkins Declaration.
See Exhs. G through I to Kerry Hopkins Declaration.
A review of the evidence presented by Motorola does not support the contention, however, that QPL assigned the Immunity Agreement to ASAT Ltd. First, the Intellectual Property Deed clearly assigns only those intellectual property rights owned by QPL. Appendix, Exh. 7. There is no dispute that QPL did not own Motorola's intellectual property rights. Therefore, the Deed, even when read in conjunction with the additional corporate documents, did not assign the Immunity Agreement to ASAT Ltd. Second, the evidence submitted regarding ASAT Ltd.'s payments to Motorola "pursuant to the Immunity Agreement between QPL and Motorola" does not prove that an assignment occurred. In fact, as Motorola itself stated, ASAT Ltd. made payments to it even prior to the QPL corporate restructure in 1999. See Motorola's Brief in Opposition to ASAT Ltd.'s Motion for Partial Judgment on the Pleadings at p. 4, lines 7-9 ("ASAT made quarterly royalty payments to Motorola from 1997 to 2002").
ASAT Ltd. objects to the Court's consideration of evidence outside the pleadings. However, Rule 12 of the Federal Rules of Civil Procedure specifically provides that the Court may consider matters outside the pleadings, thereby converting the motion for judgment on the pleadings to a motion for summary judgment. Fed.R.Civ.Pro. 12(c).
Even assuming that QPL assigned its rights under the Immunity Agreement to ASAT Ltd., Motorola concedes that it did not consent to such assignment. As a result, ASAT Ltd. argues that an assignment by QPL is invalid since the Immunity Agreement clearly states that it may be assigned only with the prior written consent of the other party. Motorola responds, as it previously stated in conjunction with a prior motion to dismiss, that under Illinois state law the fact that it did not consent does not operate to invalidate the assignment. This issue, Motorola notes, has been resolved by the Court, which agreed with Motorola and denied ASAT's motion to dismiss this counterclaim. See Order filed on February 11, 2004. However, as ASAT Ltd. correctly notes, the Court's prior order did not resolve the issue as to whether the Immunity Agreement is a patent license and, therefore, subject to federal patent law. Patent law holds that a putative assignment of a patent license is void unless it is made pursuant to the express terms of the license. See In re CFLC, Inc., 89 F.3d 673, 679-680 (9th Cir. 1996) (patent license may only be assigned by its express terms). Motorola does not refute this legal proposition but, rather, asserts that the Immunity Agreement is not a patent license. According to the Federal Circuit, however, the Immunity Agreement appears to be a patent license since it is a covenant not to sue for patent infringement. See Spindelfabrik Suessen-Schurr, Stahlecker Grill GmbH v. Schubert Salzer Maschinenfabrik Aktiengesellschaft, 829 F.2d 1075, 1081 (Fed. Cir. 1987) ("[A] patent license agreement is in essence nothing more than a promise by the licensor not to sue the licensee."). In fact, the Immunity Agreement itself, though not titled a "license," states that it does not restrict QPL's right to "make, use, sell, lease, or otherwise dispose of any particular product or products not herein licensed." See ¶ 6.2.2 of Immunity Agreement.
Based on the record and evidence presented, although Illinois law may permit a valid assignment absent written consent, it appears that the Immunity Agreement between QPL and Motorola is, in effect, a patent license which is governed by federal rather than state law. As a result, the Immunity Agreement could validly have been assigned by QPL only with the written consent of Motorola. As noted, there is no dispute that Motorola did not consent to an assignment of the Immunity Agreement. Moreover, and more importantly, there is no evidence submitted which establishes that QPL assigned the Immunity Agreement to ASAT Ltd. As a result, the Court concludes that no triable issues of material fact remain regarding whether QPL assigned the Immunity Agreement to ASAT Ltd. Motorola has failed to establish that an assignment occurred. Therefore, ASAT Ltd.'s motion for partial judgment on the pleadings is granted.
ASAT Ltd. also argues that Motorola previously conceded this point in a separate case before the Delaware Supreme Court. However, based on the findings herein, it is not necessary for the Court to reach and/or resolve the position taken by Motorola in that action.
V. CONCLUSION
For the reasons stated, the Court grants ASAT Inc.'s motion for summary judgment as to Motorola's third counterclaim for relief based on implied-in-fact contract. The Court also grants ASAT Ltd.'s motion for partial judgment on the pleadings regarding Motorola's first claim for relief in its Third Amended Counterclaim based on breach of contract.