## Facts

- Intel and National Semiconductor entered a 1976 cross-license granting Intel a nonexclusive, nontransferable, royalty-free, worldwide license under “National Patents” and “National Patent Applications” to make, use, sell, and otherwise dispose of licensed products for the life of the patents.
- “National Patents” were defined to include patents and applications with a first effective filing date before the agreement’s expiration, for which National had the right during the agreement term to grant licenses of the scope granted.
- National assigned certain licensed patents to Vertical Networks, which filed broadening reissue applications for three patents and later assigned the original patents and reissue applications to Negotiated Data Solutions (N-Data).
- The agreement expired in 2003; the reissue patents issued in 2005 and 2006.
- N-Data sued Intel customer Dell for infringement of, among others, the reissue patents; Intel intervened and sought declaratory judgment that Intel and its customers were licensed under the 1976 agreement.
- After Dell settled, Intel remained as declaratory-judgment plaintiff and N-Data pursued infringement counterclaims against Intel and its customers.
- The district court granted summary judgment for Intel, holding the 1976 license covered the reissue patents and entering judgment of license and non-infringement.

## Issues

1. Whether a broad cross-license covering defined categories of patents and applications “for the life of the patents” extends to later-issued reissue patents derived from licensed original patents and reissue applications filed during the agreement term.
2. Whether summary judgment was proper that Intel and its customers were licensed to practice the reissue patents, defeating N-Data’s infringement claims.

## Decision

- The Federal Circuit affirmed summary judgment for Intel.
- The court held the agreement’s structure and language reflected an intent to grant broad freedom to operate under all patents owned or controlled by National for the life of those patents.
- Reissue patents, as statutory substitutes for originals and derived from covered applications with qualifying first effective filing dates, fell within the agreement’s definition of licensed “National Patents.”
- The fact that the reissue patents issued after the agreement expired did not remove them from coverage where the definition turned on first effective filing dates and National’s licensing rights during the term.
- As an assignee, N-Data took the patents and reissue rights subject to Intel’s preexisting license and could not assert infringement for licensed acts.
- No genuine dispute of material fact existed; contract interpretation was resolved from the agreement’s unambiguous text and purpose.

## Legal Principles

- A patent license that grants rights under broadly defined categories of patents and applications, keyed to first effective filing dates and continuing “for the life of the patents,” can extend to later-issued patents that are direct statutory substitutes derived from covered filings.
- Reissue patents generally stand in place of the original patent for the remaining term; absent contrary contract language, licensing tied to the underlying patent family and applications may include reissues.
- Patent assignees take subject to existing license encumbrances; an assignment cannot convey greater exclusionary rights than the assignor retained after granting a license.
- Summary judgment is appropriate where the license scope turns on unambiguous contract terms and the material historical facts (filing dates, assignments, and issuance) are undisputed.

## Conclusion

The Federal Circuit held that Intel’s 1976 royalty-free cross-license to National’s patents and patent applications covered later-issued reissue patents derived from those covered filings, and that N-Data, as an assignee, could not sue Intel or its customers for licensed activity.


Intel Corp. v. Negotiated Data Sols., Inc., 703 F.3d 1360 (Fed. Cir. 2012)