u-blox AG v. InterDigital, Inc.

Opinion

U-BLOX AG, et al, Case No.: 23-cv-0002-CAB-AHG

Plaintiffs, ORDER GRANTING DEFENDANTS’ v. MOTION TO DISMISS

INTERDIGITAL INC., et al,

Defendants. [Doc. No. 36] On August 8, 2023, the Court held a hearing on Defendants’ motion to dismiss. [Doc. No. 36]. For the reasons stated on the record, the Court issues the following ORDER: 1. Based on the Parties’ representations at the hearing, this case is solely an issue related to breach of contract. Accordingly, Plaintiffs’ cause of action for declaratory judgment of non-infringement of the ‘067 Patent is DISMISSED without prejudice. 2. In light of recent Ninth Circuit precedent, Plaintiffs have failed to allege anticompetitive harm in violation of section 2 of the Sherman Act. See FTC v. Qualcomm Inc., 969 F.3d 947, 996 (9th Cir. 2020) (“in order to make out a § 2 violation, the anticompetitive harm identified must be to competition itself, not merely competitors”). Plaintiffs also appear to have released any antitrust claims in their 2019 Patent Licensing Agreement with Defendants. [Doc. No. 36-4]. Thus, Plaintiffs’ cause of action under section 2 of the Sherman Act is hereby DISMISSED with prejudice. 3. The Court is not convinced that Plaintiffs have provided sufficient notice for a breach of contract claim as a third-party beneficiary of the European Telecommunications Standards Institute’s Intellectual Property Rights (“IPR”) Policy. Therefore, Defendants’ motion to dismiss based on breach of contract and declaratory judgment for setting FRAND terms and conditions is GRANTED with leave to amend. Plaintiffs have until August 25, 2023 to file their first amended complaint, alleging both (1) the conforming products they create and (2) the standard essential patents they utilize that are covered by the IPR policy. Defendants shall answer, or otherwise respond to, the first amended complaint no later than September 15, 2023. It is SO ORDERED. Dated: August 8, 2023 € ZL Hon. Cathy Ann Bencivengo United States District Judge