u-blox AG v. InterDigital, Inc.
- Proceeding
- district
- Area
- civil
- Panel
- Cathy Ann Bencivengo (author)
Analysis
The court reviewed Defendants' motion to dismiss in a dispute characterized by the parties as solely a breach of contract matter. The court dismissed the declaratory judgment claim without prejudice, dismissed the Sherman Act claim with prejudice, and granted the motion to dismiss the breach of contract claim with leave to amend.
| What the court decided | The model |
|---|---|
Plaintiffs' cause of action for declaratory judgment of non-infringement of the '067 Patent is dismissed without prejudice.“Accordingly, Plaintiffs’ cause of action for declaratory judgment of non-infringement of the ‘067 Patent is DISMISSED without prejudice.” | agree with court The dismissal is based on the parties' joint representation that the case is solely an issue related to breach of contract, implying the patent claim is moot or unnecessary to the resolution of the dispute. This is a procedural determination consistent with the record recited. |
Plaintiffs' cause of action under section 2 of the Sherman Act is dismissed with prejudice.“Thus, Plaintiffs’ cause of action under section 2 of the Sherman Act is hereby DISMISSED with prejudice.” | agree with court The court relies on *FTC v. Qualcomm Inc.* to find a failure to allege anticompetitive harm to competition itself, and notes a release of antitrust claims in a 2019 agreement. Dismissal with prejudice is appropriate where the claim is barred by a contractual release or fails to state a claim that cannot be cured by amendment (though the order does not explicitly state the claim is incurable, the release suggests a substantive bar). |
Defendants' motion to dismiss based on breach of contract and declaratory judgment for setting FRAND terms and conditions is granted with leave to amend.“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.” | agree with court The court found insufficient notice regarding the breach of contract claim as a third-party beneficiary of the ETSI IPR Policy. Granting leave to amend is standard when a complaint fails to provide adequate notice of the specific facts (conforming products and SEPs) necessary to support the claim. |
The order itself: sound with gaps — The order is a short, procedural ruling based on a hearing. It correctly applies the cited Ninth Circuit precedent to the antitrust claim and grants leave to amend the contract claim based on pleading deficiencies. It does not engage in deep legal analysis but relies on the parties' representations and specific pleading failures.
Opinion
1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 U-BLOX AG, et al, Case No.: 23-cv-0002-CAB-AHG 12 Plaintiffs, ORDER GRANTING DEFENDANTS’ 13 v. MOTION TO DISMISS 14 INTERDIGITAL INC., et al, 15 Defendants. [Doc. No. 36] 16 17 On August 8, 2023, the Court held a hearing on Defendants’ motion to dismiss. [Doc. 18 No. 36]. For the reasons stated on the record, the Court issues the following ORDER: 19 1. Based on the Parties’ representations at the hearing, this case is solely an issue 20 related to breach of contract. Accordingly, Plaintiffs’ cause of action for 21 declaratory judgment of non-infringement of the ‘067 Patent is DISMISSED 22 without prejudice. 23 2. In light of recent Ninth Circuit precedent, Plaintiffs have failed to allege 24 anticompetitive harm in violation of section 2 of the Sherman Act. See FTC 25 v. Qualcomm Inc., 969 F.3d 947, 996 (9th Cir. 2020) (“in order to make out a 26 § 2 violation, the anticompetitive harm identified must be to competition 27 itself, not merely competitors”). Plaintiffs also appear to have released any 28 antitrust claims in their 2019 Patent Licensing Agreement with Defendants. 1 [Doc. No. 36-4]. Thus, Plaintiffs’ cause of action under section 2 of the 2 Sherman Act is hereby DISMISSED with prejudice. 3 3. The Court is not convinced that Plaintiffs have provided sufficient notice for 4 a breach of contract claim as a third-party beneficiary of the European 5 Telecommunications Standards Institute’s Intellectual Property Rights 6 (“IPR”) Policy. Therefore, Defendants’ motion to dismiss based on breach of 7 contract and declaratory judgment for setting FRAND terms and conditions is 8 GRANTED with leave to amend. Plaintiffs have until August 25, 2023 to 9 file their first amended complaint, alleging both (1) the conforming products 10 they create and (2) the standard essential patents they utilize that are covered 11 by the IPR policy. Defendants shall answer, or otherwise respond to, the first 12 amended complaint no later than September 15, 2023. 13 14 It is SO ORDERED. 15 Dated: August 8, 2023 € ZL 16 Hon. Cathy Ann Bencivengo 17 United States District Judge 18 19 20 21 22 23 24 25 26 27 28