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LOTES CO., LTD., plf-ap, v. HON HAI PRECISION INDUSTRY CO., LTD., def-res

4775. LOTES CO., LTD., plf-ap, v. HON HAI PRECISION INDUSTRY CO., LTD., def-res — Vinson & Elkins LLP, New York (Christopher Kao of counsel), for ap — Morgan, Lewis & Bockius LLP, New York (Brian A. Herman of counsel), for res — Order, Supreme Court, New York County (Shirley Werner Kornreich, J.), entered on or about September 13, 2016, which granted defendant's motion for summary judgment dismissing the complaint in its entirety, unanimously affirmed, with costs.

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4775. LOTES CO., LTD., plf-ap, v. HON HAI PRECISION INDUSTRY CO., LTD., def-res — Vinson & Elkins LLP, New York (Christopher Kao of counsel), for ap — Morgan, Lewis & Bockius LLP, New York (Brian A. Herman of counsel), for res — Order, Supreme Court, New York County (Shirley Werner Kornreich, J.), entered on or about September 13, 2016, which granted defendant’s motion for summary judgment dismissing the complaint in its entirety, unanimously affirmed, with costs.

The parties are Taiwanese companies and direct competitors in the production and sale of USB 3.0 connectors for computers and other electronic devices. USB connectors conform to the industry-standard USB specifications developed and maintained by the USB-Implementors Forum (the USB-IF). As a member of the USB-IF, defendant, as relevant here, executed the USB 3.0 Contributors Agreements and the USB 3.0 Adopters Agreement, which contractually obligated defendant to license to plaintiff, also a member, the intellectual property “necessary” to practice the USB 3.0 standard, on a royalty-free basis, and on otherwise reasonable and nondiscriminatory (RAND) terms. Patent licenses for necessary technology are referred to as “Necessary Claims.” Defendant has also “unequivocally affirmed” its willingness to license other detailed features of USB connectors to members on RAND terms. Such technology, which falls outside the Necessary Claims category, is referred to as “Optional Claims” or “Non-Necessary Claims.” Plaintiff initiated this action, asserting various claims against defendant in connection with its efforts to obtain the licenses.

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