Oyster Optics, LLC v. Infinera Corp.

• Court: Court of Appeals for the Federal Circuit
• Decided: February 11, 2021
• Docket: 19-2179
• Status: Unpublished

Opinion

Case: 19-2179 Document: 72 Page: 1 Filed: 02/11/2021

NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

OYSTER OPTICS, LLC, Plaintiff-Appellant

v.

INFINERA CORP., Defendant-Appellee ______________________

2019-2179 ______________________

Appeal from the United States District Court for the Eastern District of Texas in Nos. 2:16-cv-01295 and 2:18- cv-00296-JRG, Judge J. Rodney Gilstrap. ______________________

Decided: February 11, 2021 ______________________

MARC A. FENSTER, Russ, August & Kabat, Los Angeles, CA, for plaintiff-appellant. Also represented by PAUL A. KROEGER, REZA MIRZAIE, NEIL A. RUBIN.

JOSEPH V. COLAIANNI, JR., Fish & Richardson P.C., Washington, D.C., for respondent-appellee. Also repre- sented by RUFFIN B. CORDELL, CHRISTOPHER DRYER, INDRANIL MUKERJI. ______________________ Case: 19-2179 Document: 72 Page: 2 Filed: 02/11/2021

Before NEWMAN, O’MALLEY, and TARANTO, Circuit Judges.

Opinion for the court filed by Circuit Judge O’MALLEY.

Dissenting opinion filed by Circuit Judge NEWMAN.

O’MALLEY, Circuit Judge. This case presents a narrow question of contract inter- pretation. The parties dispute whether a license and re- lease granted by Appellant to an entity and its “Affiliates” apply to Appellee, barring Appellant’s claims of patent in- fringement. We conclude that at least the license applies to Appellee, and, additionally, that the license is retroac- tive. Accordingly, we affirm the district court’s judgment in favor of Appellee. BACKGROUND This appeal finds its roots in lawsuits filed by Oyster Optics, LLC (“Oyster”) in 2016 against several entities, al- leging infringement of patents directed to telecommunica- tion systems and methods. Among the defendants were Coriant (USA) Inc., Coriant North America, and Coriant Operations, Inc. (collectively, “Coriant”) and Infinera Cor- poration (“Infinera”). The United States District Court for the Eastern District of Texas consolidated these cases. Af- ter almost two years of litigation, Oyster and Coriant en- tered into a settlement agreement (the “Agreement”). As part of the settlement, Oyster granted Coriant and its “Af- filiates” a license to several patents, including those at is- sue in this appeal. Oyster also released Coriant and its “Affiliates” from “any and all” claims based on the licensed patents, arising from activities in the United States up to June 27, 2018—the effective date of the Agreement. Separately, Oyster filed an additional suit against In- finera in 2018, asserting infringement of an additional Case: 19-2179 Document: 72 Page: 3 Filed: 02/11/2021

OYSTER OPTICS, LLC v. INFINERA CORP. 3

patent. 1 On October 1, 2018—only a few months after Oys- ter and Coriant had settled their dispute—Infinera ac- quired Coriant. Infinera then filed a motion for summary judgment in this case, contending that it is a beneficiary of Oyster’s license and release under the express terms of the Agreement. It argued that it was an Affiliate of Coriant under the Agreement, which defines the term to include any party with a greater than 50% ownership stake in Co- riant, “now or in the future.” J.A. 1033–34. Citing the li- cense and release provisions of the Agreement, Infinera argued that the broad language of those provisions barred Oyster’s infringement claims. The district court agreed with Infinera. Oyster Optics, LLC v. Infinera Corp., 2019 WL 2603173 (E.D. Tex. June 25, 2019). Methodically applying the definitions of key terms—including “Affiliates,” “Licensed Patents,” and “Li- censed Products”—the district court concluded that, as an Affiliate of Coriant, Infinera had obtained a license and re- lease under the Agreement’s “unambiguous text.” Id. at *7–10. Accordingly, the district court entered judgment in favor of Infinera. Oyster appeals. We have jurisdiction pursuant to 28 U.S.C. §§ 1291 and 1295. DISCUSSION We review a grant of summary judgment under the law of the regional circuit, which in this case is the Fifth Cir- cuit. The Fifth Circuit reviews a grant “of summary judg- ment de novo, applying the same standard as the district court.” Robinson v. Orient Marine Co., 505 F.3d 364, 365 (5th Cir. 2007). Summary judgment is appropriate where “there is no genuine dispute as to any material fact and the

1 At the parties’ request, the district court severed the 2016 case against Infinera from the earlier-filed litiga- tion and consolidated it with the 2018 Infinera litigation. This consolidated action is before us in this appeal. Case: 19-2179 Document: 72 Page: 4 Filed: 02/11/2021

movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a). The Fifth Circuit “review[s] the district court’s legal conclusions, including its interpretation of contracts, de novo.” Texaco Expl. & Prod., Inc. v. AmClyde Engineered Prods. Co., 448 F.3d 760, 777 (5th Cir. 2006). The Agreement is governed by New York law, pursuant to which a “written agreement that is complete, clear, and un- ambiguous on its face must be enforced according to the plain meaning of its terms.” Schron v. Troutman Sanders LLP, 986 N.E.2d 430, 433 (N.Y. 2013). On appeal, Oyster argues that the district court erred by extending the release to cover Infinera, which only be- came an Affiliate after the effective date of the release. It also contends that the license cannot be applied to Infinera, or, at a minimum, can only be applied to infringement after Infinera’s acquisition of Coriant because licenses are ordi- narily prospective and the provisions of the Agreement demonstrate an intent to provide a prospective license only. Although the parties devote considerable attention to the release, this appeal can be fully resolved by focusing on the license granted to Coriant and its Affiliates. As explained below, review of the Agreement reveals that (1) Infinera obtained a license to the patents-in-suit, and (2) the license was retroactive. A. Infinera, an “Affiliate” of Coriant, Obtained a Li- cense to the Asserted Patents Section 4.1, the license provision of the Agreement, is reproduced in full below: Subject to the terms and conditions of this Agree- ment, Oyster hereby grants to each of the Coriant Defendants, their Affiliates, a non-exclusive, non- transferable, non-assignable (except as provided herein), royalty-free, irrevocable, perpetual, and fully paid-up license, without the right to subli- cense, in the Territory under the Licensed Patents, to make, have made, use, offer for sale, sell, import, Case: 19-2179 Document: 72 Page: 5 Filed: 02/11/2021

OYSTER OPTICS, LLC v. INFINERA CORP. 5

export, distribute, or otherwise supply, provide or dispose of, the Licensed Product. J.A. 1046. “Affiliates” is defined as including “any Person, now or in the future” who “has Control of a Party hereto.” J.A. 1042, § 1.1. “Control,” in turn, is defined as including more-than-half decisional ownership. Id. “Person” in- cludes any corporation. The Agreement provides a list of “Licensed Patents,” which include the patents-in-suit—i.e., each patent that In- finera is accused of infringing is a Licensed Patent. “Li- censed Product,” moreover, is defined to include “any Subject Matter made, have made, used, offered for sale, sold, imported, exported, distributed, or otherwise sup- plied, provided or disposed of, in the U.S. at any time, di- rectly or indirectly by or for or on behalf of any of the Coriant Defendants, their Affiliates, or respective prede- cessors.” J.A. 1043, § 1.4 (emphasis added). And, the Agreement broadly defines “Subject Matter” as “regardless of origin, any method(s), process(es), product(s), product line(s), . . . device(s), system(s), component(s) . . . and/or combination(s)” thereof. Id., § 1.7. We have no doubt that Infinera is Coriant’s Affiliate and that Infinera’s accused products are Licensed Prod- ucts. As an owner of 100% of the shares in Coriant, i.e., a Person who has “Control” of Coriant, Infinera falls squarely within the definition of Affiliate. Infinera’s tim- ing of obtaining such control is immaterial, moreover, given the Agreement’s express language that an Affiliate in- cludes entities having Control of Coriant “now or in future.” Oyster’s contention that the agreement only applies to those who were “Affiliates” as of the effective date of the license flies in the face of the plain language of the Agree- ment. The definition of Licensed Product, moreover, broadly includes products made, used, or offered for sale, by, for, or on behalf of an Affiliate. Because Infinera is an Affiliate, under Section 4.1 of the Agreement, Oyster has Case: 19-2179 Document: 72 Page: 6 Filed: 02/11/2021

granted Infinera a license under the Licensed Patents, in- cluding the patents-in-suit, to make, have made, use, offer for sale, sell, import, export, distribute, or otherwise sup- ply, provide or dispose of, its accused products. Accord- ingly, under the plain reading of the text, Infinera is a beneficiary of the full scope of the license. As it did before the district court, on appeal, Oyster ar- gues that the license cannot be read to apply to Infinera because of the Agreement’s limitations on assignability. Here, Oyster points to Section 13.2, which, in case of an acquisition of Coriant, limits assignability of the Agree- ment to Licensed Products “substantially developed” before the date of acquisition. Oyster Br. at 40–41 (citing J.A. 1049, § 13.2). In Oyster’s view, an acquirer (such an Infin- era) enjoys a license only as to Coriant’s pre-acquisition products and successors of those Coriant products. Id. We are not convinced. As the district court correctly noted, as an Affiliate of Coriant, Infinera independently enjoys a li- cense to the patents-in-suit under Section 4.1. We agree with the district court that any purported assignment of the Agreement is irrelevant because “Infinera’s license rights stem directly from its status as an ‘Affiliate.’” Oys- ter, 2019 WL 2603173, at *10. We are likewise not convinced by Oyster’s argument that Infinera’s acquisition of Coriant breaches the Agree- ment’s “no circumvention” clause, § 14, by which each party covenanted not to act through or in conjunction with any Affiliate or Third Party to circumvent or frustrate the purposes of the Agreement. Relying on its flawed reading of the assignability clause, Oyster insists that one purpose of the Agreement was to prevent other defendants, like In- finera, from taking advantage of the Agreement. Oyster Br. 48. But Oyster’s stated purpose of the Agreement is unsupported by the text; neither the assignability clause nor any other terms reflect such an intent. Indeed, Oyster agreed to extend a license to Coriant and its Affiliates with- out limiting the term “Affiliates” in the manner it now Case: 19-2179 Document: 72 Page: 7 Filed: 02/11/2021

OYSTER OPTICS, LLC v. INFINERA CORP. 7

suggests—i.e., by expressly excluding the other defendants from this definition. Accordingly, we conclude that the li- cense applies to Infinera. 2 B. Infinera’s License Is Retroactive Oyster contends that, even if Infinera is a licensee, the license cannot be “unlimited in temporal scope.” Oyster Br. 49. It argues that licenses are generally prospective while releases are retroactive, and that this principle must be ap- plied to the Agreement. In Oyster’s view, the presence of distinct release and license provisions in the Agreement means the license only applies to acts after the effective date of the release, and as to Infinera, only after it became an Affiliate. Id. at 50–51. Any other reading, in Oyster’s view, “swallow[s]” the release and renders it superfluous. Id. at 51. We again disagree. Although Oyster correctly notes that licenses are gen- erally prospective, it ignores the plain text of the Agree- ment rendering this particular license retroactive. We reject any suggestion by Oyster that licenses can never be

2 The dissent claims that our decision is premature, citing to two cases filed by appellants asserting fraud in connection with the license agreement at issue here. Dis- sent at 5. The first has been voluntarily dismissed. Re- quest for Dismissal, Oyster Optics, LLC v. Coriant (USA) Inc., No. 19-CV-354065 (Cal. Super. Ct. Nov. 5, 2019). The second involves a patent not asserted in this case. See, e.g., Complaint at 4, Oyster Optics, LLC v. Infinera Corp., No. 2:19-cv-00257 (E.D. Tex. July 29, 2019). No claims of fraud were ever made in this case, either in response to the as- sertion that the license provided a complete defense to the claims of infringement or otherwise. The only question be- fore the district court, and now this court, is the meaning of the license agreement, which both parties assert is clear on its face. That is the only issue we decide. Case: 19-2179 Document: 72 Page: 8 Filed: 02/11/2021

retroactive. Patent licenses are prospective unless the par- ties make them retroactive with clear language. That is exactly what the parties did here. As explained above, the license provision extends to any “Licensed Product,” which includes products made, used, or sold, “at any time” by Co- riant and its Affiliates. J.A. 1043, § 1.4. This clear lan- guage makes the license fully retroactive. In this regard, Oyster’s reliance on Ditzik v. Ergotron, Inc., No. 05-73584, 2008 WL 2858765 (E.D. Mich. July 23, 2008) is misplaced. Oyster contends that our analysis should follow Ditzik, where the court concluded a license was temporally restricted even where the definition of Li- censed Products encompassed products sold “in the past and in the future.” Oyster Reply Br. 4–5, 28. A key dis- tinction between the license grant in Ditzik and the license from Oyster is that the Ditzik license was expressly limited to the “Term” of the agreement—defined as the period from the effective date of the agreement to the expiration date of the patent. No such limitations exist in the license at issue here. 3 We also reject the contention that this reading renders the release provision superfluous. As Infinera correctly points out, the release is broader than the license and does other work in the agreement. It extends, for example, to Coriant’s customers, manufacturers, and suppliers. It ap- plies, moreover, not just to claims of patent infringement, but to “any and all claims” arising from activities based on “the conduct of the Litigation.” J.A. 1044, § 3.1. Notably, the release does not extend to “products or components” of Third Parties that were “not by, for, or on behalf of” Coriant and its Affiliates, id., buttressing the reading that the re- lease serves to immunize Coriant and its Affiliates’

3 That same distinction was present in the agree- ment at issue in Oyster Optics, LLC v. Alcatel-Lucent USA, Inc., 816 F. App’x 438 (Fed. Cir. 2020). Case: 19-2179 Document: 72 Page: 9 Filed: 02/11/2021

OYSTER OPTICS, LLC v. INFINERA CORP. 9

suppliers and manufacturers. Thus, contrary to Oyster’s arguments, the license does not render the release super- fluous. Oyster does not point to any persuasive reason to depart from the plain language of the agreement. Accordingly, we conclude that Infinera obtained a ret- roactive license in the patents-in-suit when it became an Affiliate of Coriant. CONCLUSION We have considered Oyster’s remaining arguments and find them unpersuasive. For the foregoing reasons, the dis- trict court’s judgment is AFFIRMED Case: 19-2179 Document: 72 Page: 10 Filed: 02/11/2021

United States Court of Appeals for the Federal Circuit ______________________

Appeal from the United States District Court for the Eastern District of Texas in Nos. 2:16-cv-01295-JRG, 2:18- cv-00206-JRG, Chief Judge J. Rodney Gilstrap. ______________________

NEWMAN, Circuit Judge, dissenting.

The Settlement and License Agreement between Oys- ter Optics, LLC (“Oyster”) and the three Coriant compa- nies, in settlement of Oyster’s suit for patent infringement, did not also resolve, without Oyster’s intent, Oyster’s pa- tent infringement suit against Infinera Corporation (“In- finera”). The Settlement and License Agreement between Oyster and Coriant cannot reasonably be interpreted as ab- solving Infinera of the liability asserted in Oyster’s concur- rent infringement suit against Infinera. The district court’s ruling is contrary to the law of contracts and is con- trary to the rules of integrity of commerce. Case: 19-2179 Document: 72 Page: 11 Filed: 02/11/2021

My colleagues’ affirmance of the district court decision is not only incorrect, but is also not ripe for review, for Oys- ter is now challenging the bona fides of the Coriant Settle- ment and License Agreement, in the district court and also in California State court. I respectfully dissent. DISCUSSION In 2016, Oyster initiated infringement actions against the three affiliated Coriant companies, Coriant Operations, Inc., Coriant (USA) Inc., and Coriant North America, LLC (together herein, “Coriant”), charging infringement of eight Oyster patents on network systems that send light waves along optical fibers for digital data transmission. That lit- igation was resolved by a Settlement and License Agree- ment dated June 27, 2018, licensing Coriant to use the patented technology and releasing liability for past in- fringement. Oyster also filed suit against Infinera in 2016 for in- fringement of seven of the same patents, and in 2018 as- serted an additional patent. The Infinera and Coriant suits were consolidated for some purposes in the district court, but were separated at the joint request of Oyster and Cori- ant in view of their forthcoming settlement. After Oyster and Coriant settled their litigation and ex- ecuted the Settlement and License Agreement, Infinera moved the district court for dismissal of the Oyster-Infin- era suit, stating that Infinera’s infringement issues were resolved in the Oyster-Coriant Agreement. The Oyster-Co- riant Agreement makes no mention of the concurrent Oys- ter-Infinera litigation. However, the district court granted the dismissal, and my colleagues now agree. I cannot share this interpretation of the Oyster-Coriant Agreement. It plainly was not Oyster’s intent and under- standing of its settlement with Coriant. The law of con- tracts, as well as New York law, which applies to this Case: 19-2179 Document: 72 Page: 12 Filed: 02/11/2021

Agreement, does not countenance contract interpretation that is contrary to the mutual intent and understanding of the parties to the contract. Nonetheless, the district court construed the Oyster- Coriant Settlement and License Agreement to license and release Infinera under the Oyster patents, based on the ref- erence to future affiliates in the Agreement. The district court terminated Oyster’s litigation against Infinera, ac- cepting that Infinera was now fully licensed, and released from liability for past infringement. Such a result was plainly not Oyster’s understanding and intent when it set- tled with Coriant. “The objective of contract interpretation is to give effect to the expressed intentions of the parties.” Rothenberg v. Lincoln Farm Camp, Inc., 755 F.2d 1017, 1019 (2d Cir. 1985) (applying New York law). The general law of contracts does not permit contract interpretation contrary to the mutual intention and under- standing of the parties. A concealed intention that is ma- terial to the contract understanding does not bind the unknowing party, see Restatement (Second) of Contracts § 201(2) (1981): Where the parties have attached different mean- ings to a promise or agreement or a term thereof, it is interpreted in accordance with the meaning at- tached by one of them if at the time the agreement was made . . . that party had no reason to know of any different meaning attached by the other, and the other had reason to know the meaning attached by the first party. A concealed meaning that the concealing party knows would not be accepted by the other party is not a mutual understanding. Restatement (Second) of Contracts § 201(3) (a party to an agreement is not “bound by the meaning attached by the other” as a result of “a failure of mutual assent”). Case: 19-2179 Document: 72 Page: 13 Filed: 02/11/2021

The parties to the Oyster-Coriant Agreement did not have the mutual intent and understanding that this Agree- ment would license and release Infinera from infringement of Oyster’s patents. New York law is clear that “a release may not be read to cover matters which the parties did not desire or intend to dispose of.” Cahill v. Regan, 5 N.Y.2d 292, 299 (1959). See also Comm’rs of State Ins. Fund v. Fortune Interior Dismantling Corp., 7 A.D.3d 427, 428 (N.Y. App. Div. 2004) (“The scope of a general release de- pends on the controversy being settled and the purpose for which the release is actually given.”). On facts similar to those herein, in Ditzik v. Ergotron, Inc., No. 05-73584, 2008 WL 2858765 (E.D. Mich. July 23, 2008), the court found that there was not an “unambiguous intent to release Plaintiff’s claims against any other defendant that might come under common control with [the Defendant] in the fu- ture.” Id. at *4. A valid contract requires a meeting of the minds on shared knowledge, not concealment of information known to only one side, with knowledge that the concealed infor- mation is material. The Oyster-Coriant Settlement and Li- cense Agreement was executed on June 27, 2018, and the Infinera-Coriant understanding that Infinera would ac- quire Coriant was publicly announced on July 23, 2018. Oyster states that it did not learn of the concurrent “secret negotiations” between Coriant and Infinera until docu- ments were produced in discovery, showing that the mer- ger between Infinera and Coriant was in process while Coriant and Oyster were writing the Settlement and Li- cense Agreement. Oyster Br. 15. Coriant’s request to include future affiliates in the Set- tlement and License Agreement must be viewed in the con- text that existed, to which Coriant’s withheld knowledge was highly significant. Oyster states that had it known “[o]therwise, it would have objected.” Reply Br. 7. It is noteworthy that Coriant had “confirm[ed] that there is no inadvertent increase in the scope of the rights conveyed,” Case: 19-2179 Document: 72 Page: 14 Filed: 02/11/2021

and that “Oyster can sue . . . anyone other than Coriant,” when questioned in the context of Coriant’s customers and suppliers. J.A. 931 (emails between Coriant counsel and Oyster counsel, May 30, 2018). The Oyster-Coriant Agreement requires the “parties” to dismiss the litigation between Oyster and Coriant, but does not mention dismissal of the litigation between Oyster and Infinera. However, Infinera’s present motion to dis- miss states that the Oyster-Coriant Agreement requires dismissal of the Oyster-Infinera litigation. Agreement to dismiss litigation cannot be inferred, and the non-disclo- sure by Coriant negates the court's interpretation of the Oyster-Coriant Agreement as dismissing the Oyster-Infin- era litigation based on the inference that Oyster has li- censed and released Infinera. See Davis v. Blige, 505 F.3d 90, 102 (2d Cir. 2007) (settlements and releases under New York law “are generally retrospective and exclusively be- tween the parties to the settlement. . . . [A]bsent clear lan- guage to the contrary, they are not licenses for future use”); see also Unova, Inc. v. Acer Inc., 363 F.3d 1278, 1282–83 (Fed. Cir. 2004) (holding that a release to the acquired com- pany did not extend to the acquiring company’s infringe- ment before the acquisition). The issues of the bona fides of the Oyster-Coriant Agreement are being litigated elsewhere. Oyster filed, and then withdrew without prejudice, a complaint in the Supe- rior Court of California, County of Santa Clara for promis- sory fraud, concealment, reformation of contract, and rescission of contract, No. 19-CV-354065 (Cal. Complaint, Aug. 26, 2019). Oyster also filed suit against Infinera and Coriant in the Eastern District of Texas including counts of fraud and concealment, and the release and license of the Oyster-Coriant Agreement have been pleaded by the defendants. No. 2:19-cv-00257 (E.D. Tex. Complaint, Oct. 28, 2019). Oyster Br. 17–18. Case: 19-2179 Document: 72 Page: 15 Filed: 02/11/2021

In view of these unresolved issues and ongoing litiga- tion, it is inappropriate for this court now to affirm the dis- trict court’s summary judgment and dismissal. From my colleagues’ contrary ruling, I respectfully dissent.