United States: License Defense Is Waived Due To Unjustified Delay And Prejudice

A Texas court recently held that an infringer waived a license defense that components in the accused products were supplied by a licensed supplier by failing to raise the defense sufficiently before trial to allow the patent owner to respond to the defense, take discovery on the issue, file briefings with the court, and hold a hearing if necessary.

A Texas court recently held that Samsung waived its defense that accused products did not infringe the asserted patents because they contained licensed third-party components. Samsung did not sufficiently raise the defense until two months after the deadline for filing dispositive motions despite being aware of the license agreement and its relevance to the asserted claims.


In 2014, Imperium filed a complaint alleging that Samsung's mobile phones, tablets, and digital cameras infringed Imperium's digital photography patents. Samsung served mandatory disclosures indicating that the accused products contained image sensors provided by Sony, and responded to interrogatories specifying exactly which products contained Sony image sensors. Imperium produced a 2013 Settlement and License Agreement with Sony that involved the patents.

On the last day for filing expert reports and dispositive motions such as motions for summary judgment, Imperium filed its technical expert report on patent infringement, which referred to the Sony image sensors included in Samsung's products.

Nearly eight weeks later, after the deadline for filing motions had passed, Samsung asked the court for permission to file a motion that it was entitled to summary judgment because the accused products were licensed. Samsung argued that it should be allowed to file such a motion after the deadline because it was not previously aware that Imperium would rely on the licensed Sony image sensors to prove infringement until it received Imperium's expert reports.

The court denied Samsung's motion, finding that even before the deadline on which the expert report was filed, Samsung already knew, or should have known, most of the information it relied on to support its motion for permission to file for summary judgment. The court noted that half of the accused Samsung products had the licensed Sony image sensor component; Samsung was aware that the patent claims included "an image sensor coupled to a memory;" Samsung identified accused products that contain, as the only image sensor, a Sony image sensor; and Samsung had access to the Sony license agreement. In conclusion, the court found that even if Imperium "obscured" the fact that it is relying upon Sony image sensors, Samsung could have been aware of the potential relevance of the Sony license regarding almost half of the accused products long before Imperium's expert report was filed, and that the timing of the filing was in the reasonable control of Samsung.

When Samsung raised the defense again during pre-trial conference, the court decided to take up the issue after trial because briefing the issues related to the Sony license would cause a significant delay to the proceedings. At trial, a jury determined that Samsung infringed multiple claims of the asserted patents.

Briefing the issue of the Sony license after trial, Samsung argued that the asserted claims require an image sensor, and that Imperium concealed its reliance on Sony's image sensors throughout the litigation. In particular, Samsung argued that Imperium cited to generic image sensors in its claim charts rather than the specific Sony image sensors, and that Imperium's expert testified in deposition that although an image sensor would likely be present in the accused product, it was not necessary to meet the claim limitations at issue.

Imperium argued that Samsung's defense based on the Sony license was barred for lack of diligence in failing to disclose the theory. Imperium pointed out that in its response to the complaint, Samsung merely provided a boilerplate license defense, and later responded to interrogatories indicating that the accused products may be licensed under its membership in a standard setting alliance. Imperium also argued that it did not rely on Sony's image sensors to establish infringement, and that its infringement theory allowed for the claim elements in question to be performed by components other than an image sensor.

The Imperium Decision

Noting that affirmative defenses must usually be raised in a party's response to the complaint, the court nonetheless acknowledged that the defense could be asserted if the patent owner is not prejudiced in its ability to respond to the defense prior to trial. But the court found that evidence of prejudice existed because there was not sufficient time prior to trial for Imperium to respond to the defense, to take discovery on the issue, to file briefings with the court, and to hold a hearing if necessary.

The court also agreed with Imperium's arguments that in answering the complaint, Samsung merely provided a boilerplate general license defense, and did not supplement its interrogatory responses to identify its defense, despite having access to the Sony license agreement and becoming aware of the issue.

The court noted that the parties' disagreement about the necessity of an image sensor did not demonstrate that Imperium concealed its reliance on the Sony image sensors. Rather, Imperium's continued insistence that infringement could occur without an image sensor justified Imperium's claim charts and expert testimony.

Finding that Samsung failed to provide a reasonable explanation not to assert the Sony license until eight weeks after the deadline for filing dispositive motions and expert reports, the court determined that Samsung waived its license defense.

Strategy and Conclusion

This case demonstrates the value in asserting all available and reasonable affirmative defenses at the earliest opportunity. An unjustified delay in raising a defense may cause the defense to be waived if the other party is prejudiced by being unable to adequately address and respond to the defense.

Further Information

The Imperium decision is found here.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
15 Nov 2017, Conference, California, United States

Finnegan is a Gold sponsor of the second annual Digital Media & IP Forum, hosted by World Congress.

15 Nov 2017, Conference, London, UK

Finnegan partner Leythem Wall will consider European claim drafting strategy and will lead the Chemical Workshop during a two-day course, hosted by Management Forum.

15 Nov 2017, Seminar, Amsterdam, Netherlands

Finnegan partner Anthony Tridico will lead Forum Institute for Management’s course comparing patent law in the United States and Europe.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.