Intel Corp. v. Negotiated Data Solutions

Intel Corporation (plaintiff) and National Semiconductor Corporation (National) were parties to a cross-licensing agreement that was in effect from 1976 through 2003 (National agreement). Among the rights conferred upon Intel by the National agreement was the right to sell licensed products using National patents for the lives of those patents. The license was not limited to particular patent claims, and the National agreement made no specific reference to reissue patents. In 1998, National assigned several patents (original patents) covered by the National agreement to Vertical Networks, Inc. (Vertical). In 1998 and 1999, Vertical filed broadening reissue applications for three of the original patents. Vertical later assigned the original patents and the pending reissue applications to Negotiated Data Solutions, Inc. (Data) (defendant). The reissue applications were granted in 2005 and 2006 (reissue patents), after the National agreement had expired. In 2006, Data sued Dell, Inc., one of Intel’s customers, alleging infringement of the reissue patents. Intel intervened and sought a declaratory judgment that Intel and its customers were licensed under the National agreement to Data’s reissue patents. Data counterclaimed, alleging that Intel and its customers infringed the reissue patents. Data and Dell settled, leaving Intel’s declaratory judgment action and Data’s counterclaim against Intel pending. The district court granted Intel’s motion for summary judgment, and Data appealed.