Federal Court in Texas, Not Georgia, Will Decide PMC-Gemstar Patent Licensing Dispute
A question about the scope of a license agreement between Personalized Media Communications (PMC) and Rovi, formerly known as Gemstar-TV Guide, will be decided in a Texas federal court, not in a Georgia federal court, a ruling from the U.S. Court of Appeals for the Federal Circuit last week said (http://xrl.us/bnmxcc). Gemstar appealed part of a federal judge’s ruling in Georgia in a long-since-settled patent infringement case between PMC and Scientific-Atlanta; in Georgia it has sought a declaratory judgment on the scope of the licensing agreement between it and PMC, the opinion said.
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Gemstar had argued that its agreement with PMC gave Gemstar the sole right to litigate infringement of the patents involved in the suit, the opinion said. The appeals court also said the Georgia federal court lacked original patent jurisdiction over Gemstar’s breach of contract claims against PMC. The PMC claims against Scientific-Atlanta were originally filed in 2002.
Gemstar’s claims will now be resolved in the context of PMC’s patent infringement case against EchoStar and Dish (CD May 8 p9), the opinion said. Allowing both claims to proceed in parallel would have potentially exposed the companies to differing interpretations on the same legal question and would “defeat judicial economy as it would task two courts with deciding the same issue,” the opinion said. The patents in question, dubbed the “Harvey patents” by the court, cover inventions related to the distribution and control of media programming.
Of the three judges that heard Gemstar’s appeal, two joined the opinion in full and one concurred. “I do not ... subscribe to the majority’s intimation of error on the trial court’s original decision to dismiss Gemstar’s declaratory judgment claim as moot,” Judge Haldane Mayer wrote in a concurrence. Because the case had already been settled, Gemstar had no continuing interest, he said. “Gemstar’s effort to obtain a ‘declaration of its rights’ in the Harvey patents is a poorly-disguised attempt to obtain an advisory opinion on the scope of its licensing agreement with PMC,” he wrote. “A patent licensee is not entitled to turn to the federal courts for an adjudication of its rights under a license agreement until such time as there is an actual and concrete dispute over the scope of those rights,” he said.
Meanwhile, in Eastern District Texas Federal Court, a judge ordered Rovi to show cause why it “should not be sanctioned for its failure to meet and confer with other parties” regarding setting up a new docket control order, court filings show. EchoStar, Dish and PMC, in a joint filing on Aug. 7, told the court that counsel to Rovi/Gemstar had announced its intention to file a “notice of non-consent to the magistrate judge,” and declined to participate in setting up a new docket control order. A spokesman for Rovi declined to comment and PMC did not immediately respond to our query.