Intel Corp. v. Broadcom Corp. (173 F. Supp. 2d 201, 2001)

MEMORANDUM OPINION

McKELVIE, District Judge.

This is a patent case. Plaintiff Intel Corporation is a Delaware corporation with its principal place of business in Santa Clara, California. Intel owns U.S. Patent Nos. 4,823,201 (the ’201 patent); 4,975,830 (the ’830 patent); 5,894,410 (the ’410 patent); 5,079,630 (the '630 patent); and 5,134,478 (the ’478 patent). Defendant Broadcom Corporation is a California corporation with its principal place of business in Irvine, California.

On August 30, 2000, Intel filed its complaint in this case alleging that Broadcom is infringing, inducing infringement of, or committing acts of contributory infringement of one or more claims of the ’201 patent, the ’830 patent, the ’410 patent, the ’630 patent, and the ’478 patent. In order to simplify the issues before the jury and to shorten the length of the jury trial, the court has since required that the trial proceed in two parts. The first trial is scheduled to begin on November 28, 2001, and will cover the ’201 and the ’830 patents. A subsequent trial will cover the remaining three patents.

On October 10, 2000, Broadcom moved to dismiss Intel’s complaint or, in the alternative, to transfer the action to the United States District Court for the Northern District of California. After eleven months of discovery, the court heard oral argument on Broadcom’s motion on September 24, 2001. In a memorandum opinion dated October 9, 2001, the court denied Broadcom’s motion. Broadcom subsequently answered Intel’s complaint on October 23, 2001. As Broadcom had indicated in earlier interrogatory responses, the answer included a number of affirmative defenses relating to license agreements.

In anticipation of these affirmative defenses, Intel has filed three sets of partial summary judgment motions relating to Broadcom’s license defenses. Broadcom has cross-moved for summary judgment on the latter two of these motions.

On September 21, 2001, Intel moved for summary judgment that Broadcom’s allegedly infringing products are not licensed under the ’830 or ’410 patents. Intel argues that the scope of the January 22, 1995 Intel Product Development and License Agreement (the “Joint Development Agreement”) between Intel and Broadcom does not include a license for Broadcom to make, sell, or use the accused products in this suit under either the ’830 or ’401 patent. Broadcom filed its answering brief on October 12, 2001 and later filed a corrected answering brief on October 18, 2001. Intel filed its reply brief in support of its summary judgment motion on October 22, 2001.

On September 28, 2001, Intel moved for summary judgment that Broadcom’s allegedly infringing products are not licensed under an Intel-Motorola license agreement (the “Motorola Agreement”). This motion relates to Broadcom’s affirmative defense that its products accused of infringing the asserted claims of the ’478,-’201, and ’630 patents are licensed by Intel to the extent those products were made for or sold to General Instrument Corporation, a wholly owned subsidiary of Motorola, Inc, pursuant to a June 9, 1997 license agreement between Intel and Motorola that gives Motorola the right to “have [Licensed Products] made” for it. On October 18, 2001 Broadcom cross-moved for summary judgment that the accused products it sells or has sold to General Instrument Corporation are licensed under the Motorola Agreement. On the same day, Broadcom filed its answering brief in opposition to Intel’s motion and opening brief in support of its cross-motion for partial summary judgment. On October 25, 2001, Intel filed its reply brief in support of its motion and answering brief in opposition to Broadcom’s cross-motion. On November 1, 2001, Broadcom replied to Intel’s answering brief.

On October 16, 2001, Intel moved for summary judgment that Broadcom’s accused products are not licensed under Intel license agreements with Sony Corporation, NEC Corporation, Samsung Corporation, Siemens AG, and Compaq Corporation to the extent those products were made for or sold to those companies. On October 30, 2001, Broadcom cross-moved for summary judgment that Broadcom’s sales to various Intel licensees of accused products that qualify as “Licensed Products” under the individual terms of the license agreements are licensed by Intel and are therefore nonin-fringing. The Intel licensees listed by Broadcom are the five companies referred to in Intel’s summary judgment motion and the following seven additional companies: AT & T Corporation, Hayes Microcomputer Products, Inc., Hewlett-Packard Corporation, Hitachi Ltd., Hyundai Electronics Industries Co., Ltd., Mitsubishi Electric Corporation, and N.V. Phillips Gloeilampenfabrieken. Also on October 30, Broadcom filed its answering brief in opposition to Intel’s summary judgment motion and its opening brief in support of its cross-motion. On November 6, 2001, Intel filed a reply brief in support of its motion and answering Broadcom’s cross-motion. Broadcom filed its reply brief in support of its cross-motion on November 13, 2001.

These five motions for partial summary judgment on license defenses are now fully briefed. This is the courts decision on those motions.

I. DISCUSSION

A. Standard for Decision

At trial, as the party asserting certain affirmative license defenses, Broad-com would bear the burden of proving each of these defenses. See McCoy v. Mitsuboshi Cutlery, Inc., 67 F.3d 917, 920 (Fed.Cir.1995). Acts can be infringements only if they are carried out “without authority.” 35 U.S.C. § 271(a), (f), (g). Thus for each of the license defenses it asserts, Broadcom must prove at trial either that it has a license from Intel that authorizes it to make, use, and sell its accused products or that its development and subsequent sale of accused products to Intel licensees was authorized under those licensees’ licenses with Intel.

Federal Rule of Civil Procedure 56 provides for summary judgment in a party’s favor on “all or any part” of a claim when, upon reviewing the factual record developed by the parties, there is “no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law.” Fed. R. Civ. P 56(a), (c).

Under Rule 56, the moving party bears the initial burden of demonstrating the absence of a genuine issue of material fact for trial. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The movant may meet this burden by “showing — that is, pointing out to the [ ] court — that there is an absence of evidence to support [the non-moving party’s] case.” Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).

Once the moving party has made the required showing, the non-moving party “must come forward with ‘specific facts showing that there is a genuine -issue for trial.’ ” Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). A genuine issue for trial is present when the record would enable a reasonable trier of fact to find in favor of the non-moving party. Anderson, 477 U.S. at 248, 106 S.Ct. 2505.

Many of the issues presented in the parties’ motions are essentially questions of contract interpretation. Contract interpretation is treated as a question of law. Klair v. Reese, 531 A.2d 219, 222 (Del.1987) (applying Delaware law); see also United States v. King Features Entmn’t, Inc., 843 F.2d 394, 398 (9th Cir.1988) (applying California law). When necessary, the court will determine whether, as a matter of the applicable law under each agreement, extrinsic evidence may be considered by a fact finder to interpret ambiguous sections of a license agreement or whether the agreement at issue is unambiguous.

In this case, in order for the court to grant summary judgment in favor of Intel on Broadcom’s license defenses, Intel must show that no reasonable fact finder could return a verdict in Broadcom’s favor on its license defense. In order to grant summary judgment in favor of Broadcom on its license defenses, Broadcom must show that no reasonable fact finder could return a verdict in Intel’s favor on Broadcom’s license defenses. With these standards in mind, the court will turn to the substance of the parties’ motions.

B. Should the Court Grant Intel’s Motion for Summary Judgment That Broadcom’s Accused Products Are Not Licensed Under the ’830 and %10 Patents?

1. The Intelr-Broadcom Joint Development Agreement

On January 22, 1995, Intel and Broad-com entered into a joint development agreement entitled “Intel Product Development and License Agreement.” While the parties dispute the intended and ultimate scope of the agreement, according to the agreement itself, the Joint Development Agreement contemplates each party exchanging proprietary technology to jointly develop a specific 100 Mbps Ethernet silicon chip (“the Product”).

In order to accomplish this goal, pursuant to the agreement, Intel agreed to deliver certain of its hardware and software technologies to Broadcom (the “Intel De-liverables”) and Broadcom agreed to deliver certain of its digital signaling technology to Intel (the “Broadcom Deliverables”). That much is clear from the Joint Development Agreement’s section entitled “Recitals,” which states in full that:

Broadcom is a developer of certain digital signaling technology; and

Intel is a developer of certain hardware and software technologies. Intel desires to license Broadcom’s above technology for use in jointly developing with Broad-com a 100 Mbps Ethernet silicon chip. Intel also desires to grant a limited license to its foregoing technologies to Broadcom for Broadcom to manufacture the foregoing chip and for each Party to make, use, market, sell, and distribute such chip subject to this Agreement. The Parties also desire that Intel use the above license from Broadcom to create a 100 Mbps Ethernet adapter card based on such chip for Intel to exclusively market and distribute subject to the terms herein and market other software and hardware Intel products related thereto.

In section 1.15, the Joint Development Agreement defines the jointly developed “Product” as “only the silicon chip defined by the Product Specifications developed pursuant to this Agreement, which chip is derived from Broadcom Deliverables and includes certain Intel Deliverables and Upgrades.” The “Product Specifications” are defined as “the specifications in PHY 100 EAS Release Revision 1.3 (October 1994) and Data Sheet for the Product,” both of which were attached to the Joint Development Agreement as Exhibit B.

The most relevant sections of the Joint Development Agreement to the parties’ dispute are sections 5.2 and 5.4, which are respectively entitled “License to Broad-com” and “Patent Covenant.” The court will reproduce each section below.

Section 5.2 states:

Intel grants to Broadcom a royalty-free, nonexclusive, perpetual, worldwide, nontransferable, revocable for material breach license to make, use, sell, reproduce, modify for internal and external use, advertise, market, make and have made by third parties to supply Broad-com hereunder and not for any such third parties to compete, directly or indirectly, with Intel, Broadcom Developments of, make and have made by third parties to supply Broadcom hereunder and not for any such third parties to compete, with Intel, incorporate, or license, and distribute the Intel Delivera-bles in physical form solely as an integral part of or incorporated in products to end users directly or indirectly through Broadcom’s distribution channel of, without limitation, distributors, resellers, OEMS and representatives, subject to the exclusivity requirements and limitations set forth in Exhibit F.

Section 1.3 of the Joint Development Agreement indicates that the defined term “Broadcom Developments” means “hardware, derivative works, updates, enhancements, translations, and/or revisions of Intel Deliverables which incorporate or are derivatives of Intel Deliverables, developed by or for Broadcom and subject to the exclusivity requirements and limitations set forth in Exhibit F.” Section 5.1 of the agreement grants an identical license to Intel with respect to Intel Developments of the Broadcom Deliverables. Thus these two sections, taken together, demonstrate that the agreement contains a mutual license between the parties to effectuate the parties’ joint development effort.

Section 5.4, the patent covenant section, states:

Each Party agrees that with respect to any patent which, as of the Effective Date, it owns or under which it has the right to grant licenses of the scope of the licenses granted in this Agreement, or any patent which may later issue which is related to the Product and based, in whole or part, on the IEEE 802.3 100 BaseT specification, it will not assert against the other Party to restrict its rights under this Agreement, nor against such Party’s subsidiaries, licensees, or vendees, mediate or immediate, with respect to the Product, any claims for infringement based on the manufacture, use, or sale of any apparatus made of sold by, for or under license from that Party.

Section 5.5 further qualifies the intellectual property license. It contains a provision that states that “the license grants in this Agreement do not include any right ... to Intel component level microprocessor technology ... including, but not limited to, the Intel X86 microprocessor chip series

2. The Parties’Positions

a. Intel’s Position

Intel argues that the Joint Development Agreement does not grant to Broadcom any license to the ’830 or ’410 patents based on two limitations in section 5.4 (the patent covenant section) of the agreement. Under section 5.4, the patent license is limited to (i) patents that were owned by a party at the time of the agreement (January 22, 1995), or later issued; and (ii) patents that relate to the Product defined by the agreement and are based on the IEEE 802.3 100 BaseT specification. The IEEE 802.3 100 BaseT specification is the networking standard for 100 Mbps Fast Ethernet that has been agreed upon by the 802.3 working group of Institute of Electrical and Electronics Engineers.

Intel argues that because the '830 patent issued in 1990, but was not acquired by Intel until December 28, 1998, the ’830 patent is not licensed under the patent covenant section of the agreement. The ’830 patent was acquired by Intel through the merger with, and later liquidation of, Dayna Communications, Inc. The ’830 patent issued on December 4, 1990 and listed Dayna Communications as the Assignee. On October 10, 1997, Intel and Dayna entered into a Plan of Merger under which Dayna Communications would continue as a wholly owned subsidiary of Intel. On December 28, 1998, Dayna Communications was dissolved, giving Intel “all assets of Dayna, tangible and intangible, real and personal .... ” The transfer of the ’830 patent was recorded with the U.S. Patent and Trademark Office on that same day. The ’830 patent automates the process by which devices on a network that can communicate by multiple formats select the optimal format for communication. Intel alleges in this lawsuit that the ’830 patent covers the process known as “auto-negotiation” that is used in Broadcom’s ethernet devices and described in the IEEE 802.3 standard.

Intel’s ’410 patent is entitled “Perimeter Matrix Ball Grid Array Circuit Package with a Populated Center.” The ’410 patent relates to a type of ball-grid-array semiconductor package that carries an integrated circuit; this technology is not described in the Joint Development Agreement’s specifications defining “the Product” and is unrelated to the IEEE 802.3 BaseT specification. Therefore, Intel argues that the ’410 patent is not licensed under the patent covenant in the agreement.

Intel further argues that even if the court were to find that the patent covenant grants Broadcom a license to the ’830 and ’410 patent, summary judgment would still be appropriate on a separate ground. The Agreement between Intel and Broad-com only grants a license “with respect to the Product” jointly developed by the parties, which is defined in the agreement as only the specific silicon chip jointly developed by Intel and Broadcom in accordance with the specifications set forth in the agreement. Intel contends that because Broadcom cannot demonstrate that any of the accused products are the “Product” jointly developed by Intel and Broadcom, partial summary judgment in its favor is appropriate.

b. Broadcom’s Position

Broadcom takes issue with Intel’s interpretation of the agreement, and argues that section 5.2, entitled “License to Broadcom,” and not section 5.4 defines the scope of the license. As noted above, section 5.2 provides Broadcom with a perpetual, worldwide license to make, use, sell, reproduce, modify, and market “Broadcom Developments” of the “Intel Deliverables.” Intel Deliverables is defined in the agreement to include the VHDL hardware description code for “auto-negotiation,” a key feature of the allegedly infringing products sold by Broadcom.

According to Broadcom, section 5.2 confers a license to all Intel patents (and other rights) with respect to “Broadcom Developments of ... Intel Deliverables.” Broadcom bases this argument on the meaning of Broadcom Developments, which is defined as “hardware, derivative works, updates, enhancements, translations, and/or revisions of the Intel Deliver-ables which incorporate or are derivatives of Intel Deliverables, developed by or for Broadcom .... ” Broadcom contends that this definition demonstrates that the Joint Development Agreement did not only grant patent rights relating to the defined “Product,” but instead granted a broad set of rights to make future products that are derived from the chip that is the subject of the agreement. Broadcom thus claims that Intel provided Broadcom with the allegedly infringing auto-negotiation technology along with an express license to modify Intel’s technology and make derivative works to be incorporated into Broadcom’s products. Therefore, the products accused of infringing the ’830 and ’410 patents cannot infringe because they are expressly licensed by Intel.

In Broadcom’s view, section 5.4 does not limit, but rather supplements, Intel’s license grant to Broadcom. Section 5.4 complements section 5.2 by extending the license of section 5.2 to vendees and remote users who might otherwise be subject to patent infringement claims. Accordingly, Broadcom opposes Intel’s motion for summary judgment on the Joint Development Agreement, arguing that there is a material issue of fact as to the scope of the license in the agreement.

3. The Court’s Decision

a. Principles of Applicable Law

A license agreement is a contract governed by state law. See Power Lift, Inc. v. Weatherford Nipple-Up Systems, Inc., 871 F.2d 1082, 1085 (Fed.Cir.1989). Pursuant to Section 25 of the Joint Development Agreement, which states that “[the] Agreement will be governed and interpreted by the laws of the State of California,” the court will interpret the agreement under California law.

Under California law, contract interpretation is a matter of law that is to be decided by the court. King Features, 843 F.2d at 398 (“Interpretation of a contract is a matter of law .... ”); see also Shaw v. Regents of University of California, 58 Cal.App.4th 44, 67 Cal.Rptr.2d 850, 855 (1997). Moreover, “the determination of whether a written contract is ambiguous is a question of law that must be decided by the court.” Brobeck, Phleger & Harrison v. Telex Corp., 602 F.2d 866, 871 (9th Cir.1979); see also King Features, 843 F.2d at 398.

In California, “[a] contract must be interpreted so as to give effect to the mutual intention of the parties as it existed at the time of contracting, so far as the same is ascertainable and lawful.” Cal. Civ.Code § 1636; see also AIU Ins. Co. v. Superior Ct., 51 Cal.3d 807, 274 Cal.Rptr. 820, 799 P.2d 1253, 1264 (1990) (“the mutual intention of the parties at the time the contract is formed governs interpretation”). “Such intent is to be inferred, if possible, solely from the written provisions of the contract.” AIU Ins. Co., 274 Cal.Rptr. 820, 799 P.2d at 1264 (citing Cal. Civ.Code § 1639). In construing a contract, “no term shall be considered uncertain or ambiguous if its meaning can be ascertained by fair inference from the terms of the agreement.” Ellis v. McKinnon Broadcasting Co., 18 Cal.App.4th 1796, 1802, 23 Cal.Rptr.2d 80 (1993). Thus, “ ‘[i]f contractual language is clear and explicit, it governs.’ ” Foster-Gardner, Inc. v. National Union Fire Ins. Co., 18 Cal.4th 857, 77 Cal.Rptr.2d 107, 959 P.2d 265, 272 (1998) (quoting Bank of the West v. Superior Ct., 2 Cal.4th 1254, 10 Cal.Rptr.2d 538, 833 P.2d 545, 552 (1992) (citing Cal. Civ.Code § 1638)); see also Marek v. Napa Community Redevelopment Agency, 46 Cal.3d 1070, 251 Cal.Rptr. 778, 761 P.2d 701, 710 n. 11 (1988) (“[I]t is axiomatic that where, as here, the contract is clear and unambiguous, the intention of the parties should be ascertained from the writing itself and in such an instance extrinsic evidence is inadmissible.”). If, however, the contract is ambiguous, extrinsic evidence regarding the parties’ intent is admissible to help interpret the contract terms.

The mere fact of disagreement between the parties as to the correct interpretation of specific terms or sections of the agreement does not render it ambiguous. See, e.g., Klamath Water Users Pro tective Ass’n v. Patterson, 204 F.3d 1206, 1210 (9th Cir.1999) (“The fact that the parties dispute a contract’s meaning does not establish that the contract is ambiguous”). Rather, the determination of whether a contract is ambiguous is the court’s to make.

California law allows the court to provisionally receive extrinsic evidence to aid in its determination of whether the contract at issue is ambiguous. Pacific Gas & Elec. Co. v. G.W. Thomas Drayage & Rigging Co., 69 Cal.2d 33, 40, 69 Cal.Rptr. 561, 442 P.2d 641 (1968). If, after considering all of the evidence, the court determines that the contract is unambiguous, any extrinsic evidence that has been submitted for the purpose of demonstrating an ambiguity in the contract is no longer relevant. See Brobeck, 602 F.2d at 871 (explaining that under Pacific Gas, extrinsic evidence “cannot be received” if “after considering [the] preliminary evidence” the court finds the language of the contact to be unambiguous); City of Manhattan Beach v. Superior Ct., 13 Cal.4th 232, 52 Cal.Rptr.2d 82, 914 P.2d 160 (1996) (“If the intent of the parties is clear, that will control. If not, extrinsic evidence may be considered to the extent that it informs that intent.”); Olsen v. Breeze, Inc., 48 Cal.App.4th 608, 55 Cal.Rptr.2d 818, 830 n. 5 (1996) (“[P]arol evidence is inadmissible if the contract terms are unambiguous”). However, when the court finds that a contract is ambiguous, the extrinsic evidence may be used by the court to interpret the ambiguous terms. See Pacific Gas, 69 Cal.2d at 40, 69 Cal.Rptr. 561, 442 P.2d 641; Morey v. Vannucci, 64 Cal.App.4th 904, 912, 75 Cal.Rptr.2d 573 (1998).

California law also requires that the court construe the contract as a whole. Cal. Civ.Code § 1641; Sy First Family, Ltd. v. Cheung, 70 Cal.App.4th 1334, 83 Cal.Rptr.2d 340, 345 (1999) (“[W]here practicable, the meaning of an agreement must be derived from a reading of the whole contract.”). Accordingly, in interpreting a contract, “[t]he whole of the contract is to be taken together, so as to give effect to every part, if reasonably practicable, each clause helping to interpret the other.” Id. “Where two clauses of an agreement appear to be in direct conflict, it is the duty of the court to reconcile such clauses so as to give effect to the whole of the instrument.” Ellis, 18 Cal.App.4th at 1802, 23 Cal.Rptr.2d 80; see also Brobeck, 602 F.2d at 872 (contracts should be interpreted to be “internally consistent”); Restatement of Contracts § 235(c) (1932) (“A writing is interpreted as a whole”).

b. Which Section Controls the Scope of Broadcom’s License ?

As noted above, the key dispute between the parties is which section of the Joint Development Agreement controls the extent of Intel’s patent licenses to Broad-com. Intel contends that the Section 5.4 Patent Covenant defines the patent license granted by Intel to Broadcom, while the Section 5.2 License to Broadcom deals with the rest of Intel’s intellectual property rights in the Intel Deliverables. Broad-com contends that section 5.2 provides the basic grant of patent rights to Broadcom, while section 5.4 grants Broadcom additional patent rights above beyond those granted in section 5.2. According to Broadcom these additional patent rights were granted to ensure that Intel could not frustrate the license grant of section 5.2 by asserting patent rights against Broadcom or its vendees which would have the effect of impairing the manufacture and sale of the products licensed by section 5.2.

Section 5 of the Joint Development Agreement is entitled “License Grants.” The subsections within section 5 relate to distinct intellectual property rights. The court briefly reviews these sections below.

In section 5.1 and 5.2, Intel and Broad-com mutually license certain of each other’s proprietary technologies, defined as Intel Deliverables and Broadcom Deliver-ables. Exhibit B.2 lists and defines the Intel and Broadcom Deliverables. Under Exhibit B.2, Broadcom is to provide to Intel a specified data base, full chip hierarchical netlists, data sheets and design specifications, and simulation and performance evaluation results. Intel is to provide to Broadcom VHDL source code, simulation programs for certain functional design blocks, design reports, certain production test packages, product schematics, and certain Intel network interface card products. According to the definitions section, both parties’ Deliverables were based on proprietary Technology that included a number of different types intellectual property rights, such as patents, copyrights, mask works, trade secrets, know-how, trademarks. See ¶¶ 1.3, 1.4, 1.8, 1.9. Sections 5.1 and 5.2 do not expressly set forth a patent license grant. Rather the license provided for by these two sections allows Intel to make, use, sell, and modify Intel Developments of the Broad-com Deliverables and allows Broadcom to make, use, sell, and modify Broadcom Developments of the Intel Deliverables.

Section 5.4 sets forth a mutual patent license with respect to any patent owned by a party as of January 22, 1995 or any patent which may later issue “which is related to the Product and based, in whole or in part, on th'e IEEE 802.3 100 BaseT specification.” It is the only section in the Joint Development Agreement that expressly addresses patent rights.

While neither section 5.3 or 5.5 are central to the parties’ dispute, for the sake of completeness, the court lists them here. Section 5.3 states that the parties must maintain any copyright notices that exist on the deliverables that they receive from each other and that the other party’s copyright notice must be included in all marketing and end user documentation for the foregoing products. Section 5.5 expressly excludes from any license, any intellectual property right to Intel’s component level microprocessor technology.

These sections, taken together, memorialize the parties’ statements of intent from the Recitals section, which states that “Intel desires to license Broadcom’s above technology for use in jointly developing with Broadcom a 100 Mbps Ethernet silicon chip” and that “Intel ... desires to grant a limited license to its foregoing technologies to Broadcom for Broadcom to manufacture the foregoing chip and for each Party to make, use, market, sell, and distribute such chip subject to this Agreement.” Section 4.2, in the Ownership section of the agreement, makes it clear that sections 5.2 and 5.4 are the only relevant sections in which Intel “license[s], offer[s], or otherwise make[s] available to Broad-com the Intel Developments or Intel Technology.” ¶ 4.2.

Given that section 5.2 and 5.4 are the sections of the agreement that convey license rights to Broadcom, it is essential that they be interpreted consistently with each other and with the intent of the parties. The primary issue before the court is to determine whether section 5.4 unambiguously defines the scope of the patent license, whether section 5.2 unambiguously defines the scope of the patent license, or whether the agreement is ambiguous as to which section defines the scope of the patent license. For the reasons set forth below, the court finds that section 5.4 unambiguously defines the scope of Broad-com’s patent license.

The agreement contemplates a joint development effort accomplished through the exchange of proprietary technology that includes the following intellectual property rights: patents, copyrights, mask works, trade secrets, know-how, trademarks. See ¶¶ 1.3, 1.4, 1.8, 1.9. Licenses and restrictions on those licenses are provided for by the subsections of section 5. Section 5.2, unlike section 5.4, contains no mention of patent rights, but rather deals with the rest of Intel’s intellectual property rights in the Intel Deliverables. Section 5.4 is the only section of the agreement that relates to patent rights. It explicitly sets forth the terms of patent licenses exchanged between the parties.

A plain reading of the agreement demonstrates that the express patent grant in section 5.4, rather than section 5.2, controls the extent of Intel’s patent licenses to Broadcom. This interpretation of the license is buttressed by recent Federal Circuit authority. See State Contracting & Eng’g Corp. v. Florida, 258 F.3d 1329, 1339-40 (Fed.Cir.2001) (noting that because patent rights and trade secret rights are distinct rights, the right to use proprietary technology does not necessarily convey any patent rights and the omission of an express provision providing for the licensing of patent rights demonstrated that the contract did not provide a license for patent rights); Hilgraeve Corp. v. Symantec Corp., 265 F.3d 1336, (Fed.Cir.2001) (holding that no patent license was conferred where plaintiff transferred all copyright, know-how, and technical expertise with respect to software to defendant).

Broadcom nonetheless asserts that section 5.2 implicitly contains a patent license that is broader than the express patent license of section 5.4. While it is true that patent licenses may be implied by language or conduct of the owner, see De Forest Radio Telephone & Telegraph Co. v. United States, 273 U.S. 236, 241, 47 S.Ct. 366, 71 L.Ed. 625 (1927), where an agreement contains a specific provision expressly defining the scope of the patent license implied licenses dealing with the same subject matter are not generally recognized. See, e.g., Atlas Corp. v. United States, 895 F.2d 745, 754 (Fed.Cir.1990) (“The existence of an express contract precludes the existence of an implied contract dealing with the same subject, unless the implied contract is entirely unrelated to the express contract”); Wal-Noon Corp. v. Hill, 45 Cal.App.3d 605, 119 Cal.Rptr. 646, 650 (1975) (“There cannot be a valid express contract and an implied contract, each embracing the same subject matter, existing at the same time.”).

In asserting that section 5.2 grants Broadcom a broad license to all of Intel’s patents that are related to the Intel Deliv-erables and Broadcom Development of those deliverables, Broadcom claims that section 5.4 supplements section 5.2. Broadcom contends that the purpose of section 5.4 is to extend the licenses of section 5.2 to provide protection to Broad-com’s third party customers. In support of this reading, Broadcom argues that section 5.2 “only grant[s] licenses that extend to the parties,” so section 5.4 was necessary to provide “protection to the parties’ ‘licensees or vendees, mediate or immediate.’ ”

The plain language of sections 5.2 and 5.4 contradicts Broadcom’s argument. Section 5.2, by its terms, applies to products sold or distributed “to end users directly or indirectly through Broadcom’s distribution channel of, without limitation, distributors, resellers, OEMS and representatives.” ¶ 5.2. Therefore it is incorrect that section 5.2 only extends its license protections to Broadcom. Similarly, section 5.4 states that each party will not assert patent claims for the specified licensed patents “against the other Party ... nor against the Party’s subsidiaries, licensees, or vendees ... any claims for infringement .... ” ¶ 5.4. Therefore, section 5.4 cannot fairly be interpreted as a necessary extension of the protections of section 5.2 to the end users and distributors of Broadcom’s products. Rather, the two sections are coextensive as to the third parties that they cover.

Broadcom asserts that an additional and unique purpose of section 5.4 is to extend the licenses of section 5.2 to include not only chip products, but larger products in which licensed chips are included. This assertion cannot be correct. Section 5.2, by its terms, licenses Broadcom Developments “in physical form solely as an integral part of or incorporated in products to end users.” Therefore, according to the plain language of the agreement, section 5.2 already grants a license to intellectual property rights that covers larger products in which the chips are placed. In addition to being contradicted by the plain language of the agreement, Broadcom’s construction is inherently self-contradictory. Section 5.4, cannot, as Broadcom asserts, cover additional products, if as Broadcom also asserts, section 5.2 already licenses all products that include, or are in any way derived from, or include a derivative of, Intel’s Deliverables. Accordingly, section 5.4 cannot be fairly interpreted as extending the protections of section 5.2 to “additional products.”

The proper interpretation of the Joint Development Agreement must give effect to each section of the contract. In light of the above analysis, if the court were to adopt Broadcom’s interpretation of the agreement, section 5.4 would be rendered extraneous and unnecessary. Broadcom’s reading would also create two patent licenses (the implied patent license in section 5.2 and the express patent license in section 5.4) within the same agreement whose scopes are in conflict. The implied license of section 5.2 is unbounded, while the express license of section 5.4 is broad, but has limits. If the court were to find that section 5.2 confers to Broadcom a broad patent license that covers all products that are derived from the Intel De-liverables, the court would effectively be ignoring the specific limitations of the express patent license in section 5.4, which limits its scope to patents “related to the Product and based, in whole or part, on the IEEE 802.3 BaseT specification.” ¶ 5.4. The only consistent reading of the provisions of the Agreement is to give full effect to the language of 5.4 as to the scope of the patent license that is conveyed within.

Reading section 5.4 as the section that defines the scope of the patent license that is granted in the Joint Development Agreement is consistent with both the parties stated intent in the recitals section, the clear language of the agreement, and the extrinsic evidence that has been submitted by the parties. Broadcom argues that while the agreement was structured to jointly develop one particular semiconductor product (“the Product”), the agreement further provided for and licensed, the ability of both Intel and Broadcom to sell derivatives developed by Broadcom from the technology that Intel provided to it. The patent grant of section 5.4 is not inconsistent with this reading. Section 5.4 does grant a broad patent cross-license to the parties. That license includes any patents owned as of the effective date of the contract or any patents which may later issue, “which [are] related to the Product and based, in whole or part, on the IEEE 802.3 100 BaseT specification.” While the patent license of the Joint Development Agreement is limited to this related set of patents, this provision is not inconsistent with the parties’ intent to enter into a cross-license that allows Broadcom to make the specific chip and derivatives thereof which relate to the 802.3 BaseT specification.

Broadcom argues that if the court were to interpret section 5.4 as the governing patent license in the agreement, section 5.4 would be inconsistent with various warranty and indemnification provisions within the agreement. See, e.g., ¶¶ Exhibit A 4.3, 13.1, 17.2.1, 17.2.3.1. The court sets forth these provision below.

In Exhibit A Section 4.3, Intel warrants that it:

has all right, title and ownership to the Intel Technology and Intel Deliverables including any patents, copyrights, mask works, trade secrets, trademarks, and other intellectual property rights pertaining to the Intel Technology and Intel Deliverables including, without limitation, the right to grant the license herein to Broadcom and ... it will take no action which would in any way impair the foregoing.

In Section 13.1, entitled “Exceptions to Intel Releases,” of the Second Amendment to the Joint Development Agreement, Intel warranted that “it has no claim or knowledge of facts that could give rise to a claim, against Broadcom under any such agreements or relationships.” Section 17.2.3.1, entitled “Obligation to Assist,” states that “Intel shall use commercially reasonable efforts to attempt to procure for Broadcom ... the right to continue using the Intel Technology and Intel De-liverables ....” In section 17.2.1, entitled “Indemnification,” Intel warrants that it will “indemnify Broadcom based on a claim that the Intel Technology or Intel Deliver-ables, respectively, alone and not in combination "with any other products, infringe any patent, copyright, trade secret, or other intellectual property right of a third party.”

The court disagrees that a construction finding that section 5.4 is the controlling section of the grant of patent rights in the agreement is inconsistent with the foregoing provisions. Broadcom’s argument presupposes that the purpose of the agreement was to provide Broadcom with a broad license to all of Intel’s patents that relate to any Broadcom developed derivative of the Intel Deliverables. Nothing in the interpretation that 5.4 is the controlling provision of the patent license is inconsistent with these provisions. Given that the agreement contemplated the parties using each other’s technology to develop a chip product, the warranty of section 4.3 sought to assure Broadcom that as of the effective date of the agreement, Intel actually owned rights to the technology and deliverables. Intel’s grant to Broad-com of the specific patents encompassed by section 5.4 is not inconsistent with this warranty that Intel “has all right, title and ownership to the Intel Technology and Intel Deliverables.”

Broadcom also argues that if 5.4 is read to be the controlling patent license it is inconsistent with sections 17.2.3.1 and 17.2.1.This argument fails for the same reason. The Broadcom rights that the indemnification and'warranty provision are intended to cover are defined in section 5.4. These sections are intended to warrant that those rights, as defined by the patent grant of section 54, will not be impaired in any way.

For the reasons set forth in the preceding analysis, the court finds that it is clear from the Joint Development Agreement, that section 5.4 alone defines the scope of the patent license grant between the parties therein. This interpretation of the contract is the only interpretation that is consistent with the other terms of the contract and that gives effect to all sections of the contract.

c. Does the Section 54 Grant Broadcom a License Under the ’830 and %10 Patents?

Having determined, as a matter of law, that section 5.4 is the controlling patent license provision in the Joint Development Agreement, the court must next determine whether section 5.4 grants to Broadcom a License under either the ’830 and ’410 patents. Section 5.4, in relevant portion, grants a license to Broadcom for:

any patent which, as of the Effective Date, [Intel] owns or under which [Intel] has the right to grant licenses of the scope of the licenses granted in this Agreement, or any patent which may later issue which is related to the Product and based, in whole or part, on the IEEE 802.3 100 BaseT specification

The scope of the license conferred in section 5.4 (i.e. which patents are included in the license) is limited by the two requirements stated within that section. Those patents that do not meet both requirements are not included within the license. First, the patent must be owned by Intel as of January 22, 1995 or must be issued after January 22, 1995. Second, the patent must be “related to the Product and based, in whole or part, on the IEEE 802.3 BaseT specification.”

Intel submits that because the ’410 and ’830 patents each fail to meet one of these two requirements, they are not licensed to Broadcom under the Joint Development Agreement. As set forth in more detail above in the section outlining the parties’ arguments, Intel contends that the ’830 patent is not included in the section 5.4 patent license because it was neither owned by Intel as of January 22, 1995, nor issued after January 22, 1995. Rather, the ’830 patent issued on December 4, 1990, to Dayna Communications, a company that was later acquired by Intel on October 10, 1997. The ’830 patent was subsequently transferred to Intel on December 28,1998.

Broadcom does not dispute that section 5.4, as originally executed, did not include any license to the ’830 patent because Intel did not own the ’830 patent on the Effective Date. Rather, Broadcom argues that because the Joint Development Agreement was amended on December 17, 1997, after Intel’s acquisition of Dayna Communications, and that amendment modified the agreement, “incorporat[ing] by reference the terms, conditions, and covenants set forth in the Agreement,” December 17, 1997, the date of the execution of the amendment, replaces January 22, 1995 as the Effective Date of the agreement. Broadcom contends that because the ’830 patent was owned by Intel prior to this new effective date, the ’830 patent is included in the set of patents that is licensed under section 5.4. The parties do not appear to dispute that the ’830 patent relates to the IEEE 802.3 BaseT specification and thus satisfies the second requirement of the patent license.

The court finds that Broadcom’s argument that section 5.4 was republished with a new effective date of December 17, 1997 is contrary to the plain language of the amendment. Section 1 of the December 17, 1997 amendment states that original terms of the Joint Development Agreement, such as Effective Date, are incorporated by reference and retain “the respective meanings as set forth and assigned in the [Joint Development] Agreement.” This means that the term Effective Date retained its meaning of January 22, 1995. While the amendment introduced the term “Amendment Effective Date,” it did not amend the language of section 5.4. Because after the amendment, section 5.4 continues to use the term “Effective Date” and not the new term “Amendment Effective Date,” the scope of section 5.4 remains limited to patents owned by Intel as of January 22,1995.

Moreover, even if Broadcom’s interpretation of the amendment were correct, the ’830 patent would still not be included in the scope of section 5.4 because Intel did not own the ’830 patent as of the Amendment Effective Date. It is undisputed that although Intel and Dayna merged on October 10, 1997, pursuant to section 1.1(d) of the Plan of Merger, that after the merger Dayna Communications would continue as a wholly owned subsidiary of Intel. Therefore, Dayna Communications— not Intel-owned the ’830 patent as of the Amendment Effective Date. Intel did not acquire the rights to the ’830 patent until December 28, 1999, when Dayna Communications was dissolved and its assets were transferred to Intel. Section 5.4 does not extend the scope of the license to patents owned by Intel subsidiaries; it refers only to patents owned by or issued to Intel itself. While Broadcom again argues that this interpretation is contrary to Intel’s section 4.3 warranty that it would take no action which would in any way impair its grant of license to Broadcom, this warranty in no way precludes suing Broadcom for infringement for a patent, such as the ’830 patent, that is not covered by Intel’s license grant to Broadcom. While Broad-com argues that the circumstances by which Intel acquired the ’830 patent wrongly takes advantage of an unintended loophole in the agreement, the clear language of section 5.4, which the court may not ignore, excludes the ’830 patent from the license grant.

The court now turns to the ’410 patent. It is undisputed that the ’410 patent, which relates to a “ball grid array” semiconductor package that carries an integrated circuit, is not related to the 100 Mbps chip that is the defined “Product” of the Joint Development Agreement. It is also undisputed that the ’410 patent is not based on the IEEE 802.3 100 BaseT specification, which, as described above, relates to Ethernet networks. The ’410 patent is therefore not included in the patent license in section 5.4, which includes only patents that are related “to the Product and based, in whole or part, on the IEEE 802.3 100 BaseT specification.”

Broadcom argues that pursuant to section 5.2, to the extent Broadcom packages its products that are Broadcom Developments of Intel Deliverables, it has the right to “make, use, sell [and] market ...” those products “solely as an integral part of or incorporated to end users directly or indirectly through Broadcom’s distribution channel.” Because the court has determined that section 5.4, and not section 5.2, governs the scope of Broadcom’s patent license, the court finds Broadcom’s reliance on section 5.2 as the source of broad patent rights to be unavailing. Even if the court were to construe section 5.2 as granting a broader patent license than section 5.4 that extends to any product derived from the Intel Deliverables, the above language of section 5.2 would not give Broadcom the right to use infringing packaging technology, such as that embodied in the ’410 patent, that was not among the Intel Deliverables.

Intel has met its burden of demonstrating that Broadcom’s allegedly infringing products are not licensed under the ’830 and ’410 patents. Because the court concludes that the ’830 and ’410 patents are excluded from the license grant of the Joint Development Agreement, the court will grant partial summary judgment in favor of Intel on this issue.

C. Should the Court Grant Either Parties’ Motions for Summary Judgment Regarding Whether Broad-com’s Accused Products Sold to General Instrument Are Licensed Under the Motorola Agreement?

1. The Motorola Agreement

On June 9, 1997, Motorola, Inc. and Intel Corporation entered into a “License and Cooperation Agreement” (“the Motorola Agreement”) in which they granted to each other “a non-exclusive, non-transferable license throughout the world” to certain defined licensed products, “to make, use, sell, import, offer for sale and otherwise dispose of LICENSED PRODUCTS, and to have made LICENSED PRODUCTS by another manufacturer for supply to MOTOROLA for use, import, offer for sale, sale or other disposition by MOTOROLA ¶¶3.1, 3.2, 3.3. The term LICENSED PRODUCT is defined in section 1.5 to include one or more of the following defined terms: SEMICONDUCTOR MATERIAL, SEMICONDUCTOR STRUCTURE, SEMICONDUCTOR DIE, SEMICONDUCTOR PACKAGE, SEMICONDUCTOR DEVICE, and SEMICONDUCTOR CIRCUIT. Moreover, in the agreement, the term “LICENSED PRODUCT, when used alone, means LICENSED PRODUCT of MOTOROLA or LICENSED PRODUCT of INTEL as the case may be.”

The specific license provision at issue is section 3.3, which is reproduced in full in the following paragraphs:

3.3 INTEL hereby grants to MOTOROLA for the lives of the INTEL PATENTS a non-exclusive, non-transferable license throughout the world under the INTEL PATENTS, without the right to sub-license, for MOTOROLA SEMICONDUCTOR PRODUCT SECTOR:

3.3.1 to make, use, sell, import, offer for sale and otherwise dispose of LICENSED PRODUCTS, and

3.3.2 to have made LICENSED PRODUCTS by another manufacturer for supply to MOTOROLA for use, import, offer for sale, sale of other disposition by MOTOROLA, and

3.3.3 to make, use and have made MANUFACTURING APPARATUS and to practice any process or method involved in the use thereof in furtherance of the license grants of Section 3.3.1 and 3.3.2.

The term “INTEL PATENTS” is defined in section 1.2 to mean:

all classes or type of patents and utility models, other than design patents, and applications for the aforementioned of all countries of the world, which are issued, published or filed or entitled to a priority filing date prior to the date of expiration or termination of this Agreement, which are owned by or licensed to INTEL and under which ... INTEL may have, as of the EFFECTIVE DATE of this Agreement, or may thereafter during the term of this Agreement acquire ....

The EFFECTIVE DATE of the Motorola Agreement is June 9, 1997. The duration of the agreement is 10 years.

The term “MOTOROLA SEMICONDUCTOR PRODUCT SECTOR” is defined in section 1.12 to mean:

a MOTOROLA existing business unit manufacturing and developing products falling within the definition of LICENSED PRODUCTS (as hereinafter defined), now consisting of [a set of named semiconductor groups and divisions within Motorola]. This definition of the MOTOROLA SEMICONDUCTOR PRODUCTS SECTOR also includes the predecessor MOTOROLA business unit of said Groups and/or said Divisions taken singularly or in combination and any MOTOROLA future business unit acquired or derived from, by separation or merger, irrespective or appellation, said Groups and/or said Divisions taken singularly or in combination.

Under section 3.12,

MOTOROLA shall have the right to extend the release and grants of Sections 2 and 3, respectively, to any MOTOROLA SUBSIDIARY if such SUBSIDIARY assumes the same obligations as MOTOROLA hereunder (other than Section 4) as if such entity was named in place of MOTOROLA.

2. The Parties’ Positions

The parties have both moved for summary judgment on this license defense. Intel has moved for summary judgment that Broadcom’s products accused of infringing the asserted claims of Intel’s ’478, ’201, and ’630 patents are not licensed under the Motorola Agreement. Broadcom has cross-moved for summary judgment of noninfringement of those same patents for those accused products sold by Broadcom to General Instrument Corporation (“GI”) , a Motorola subsidiary, based on the patent license in the Motorola Agreement. Broadcom states that sales of the following products (“the Video Chips”) from Broadcom to GI are licensed pursuant to the “have made” provisions of the Motorola Agreement: BCM3033, BCM3036, BCM3037, BCM3115, BCM3116, BCM3120, BCM3137, BCM3250, BCM3300, BCM3350, BCM3900, BCM4100, BCM4210, BCM7010, BCM7015, BCM7020, BCM7030, and BCM7031.

a. Intel’s Position

Intel attacks Broadcom’s license defense under the Motorola Agreement on two grounds. Intel first contends that sales by Broadcom to GI cannot be licensed under the Motorola Agreement, because section 3.3 of the agreement expressly limits Motorola’s rights to the Motorola Semiconductor Product Section, which is defined in section 1.12 as being limited to existing Motorola business units as of June 9,1997. GI is not within the scope of section 3.3 because it was not an existing business unit at the time the license became effective in 1997; GI because a new sector of Motorola when it was acquired on January 5, 2000. Second, Intel argues that while Broadcom premises its Motorola license defense on “have made” rights, Motorola’s “have made” rights do not extend to the purchase of chips not designed by Motorola.

b. Broadcom’s Position

Addressing each of Intel’s bases for summary judgment in turn, Broadcom first argues that the Motorola Agreement is not restricted to then-existing business units, because section 3.12 of the agreement extends Motorola’s rights under the license to all Motorola subsidiaries, including those acquired after the execution of the Motorola Agreement. Effectively, Broadcom argues that section 3.12 means that the patent license granted by Intel extends to Motorola and its subsidiaries, and is not limited to then-existing business units of Motorola. Broadcom reasons that the Motorola Agreement extends the license terms to GI, because GI is a wholly-owned subsidiary of Motorola.

With respect to the scope of the “have made” right that is granted within the Motorola Agreement, Broadcom argues that any sales to GI are licensed because Intel expressly granted to Motorola and its subsidiaries the right to “have made” by another manufacturer semiconductor material and semiconductor circuits for use, sale, or other disposition by Motorola and its subsidiaries without violating any patent issued to, or acquired by, Intel during the term of the Motorola Agreement. Thus, according to Broadcom, because GI is merely exercising its “have made” rights by purchasing the Video Chip products from Broadcom, Broadcom’s manufacture and sale of Video Chips for GI cannot infringe Intel’s patents.

3. The Court’s Decision

In order to satisfy its burden on summary judgment, Broadcom must prove that there is no genuine issue of material fact and that it is entitled to judgment as a matter of law as to both of the following legal issues: (1) whether GI is covered by the Motorola Agreement, and (2) whether the “have made” rights granted by Intel in the Motorola Agreement authorize Broad-com’s manufacture and sale of Video Chips for GI. Broadcom must therefore prove that GI is covered by the Motorola Agreement and that the “have made” rights granted by Intel authorize Broadcom’s Video Chip sales to GI. If Broadcom fails to prove that both of these legal issues must be answered in its favor as a matter of law, the court must deny its summary judgment motion.

In contrast, because Intel is seeking summary judgment that Broadcom’s license defense under the Motorola Agreement fails as a matter of law, it may succeed either by proving that GI is not covered by the Motorola Agreement or by proving that even if GI is covered, the “have made” rights granted by Intel to GI do not authorize Broadcom’s Video Chip sales to GI. Intel may thus succeed in its summary judgment motion by proving that one of the two legal issues listed above must be resolved in its favor as a matter of law.

a. Has either party proven that no genuine issue of material fact exists as to whether GI is licensed under the Motorola Agreement?

As section 8.2 of the Motorola Agreement expressly provides that the agreement is governed by, and to be construed under the laws of the State of Delaware, the court applies Delaware law in interpreting the agreement. Under Delaware law, the interpretation of a patent license agreement is a question of law. Klair, 531 A.2d at 222.

The principles of contract interpretation are well settled. Contracts must be construed as a whole, to give effect to the intentions of the parties. E.I. duPont de Nemours and Co. v. Shell Oil Co., 498 A.2d 1108, 1113 (Del.1985). Where the contract language is clear and unambiguous, the parties’ intent is ascertained by giving the language of the contract its ordinary meaning. Rhone-Poulenc Basic Chem. Co. v. American Motorists Ins. Co., 616 A.2d 1192, 1195 (Del.1992). “In upholding the intentions of the parties, a court must construe the agreement as a whole, giving effect to all provisions therein. Moreover, the meaning which arises from a particular portion of an agreement cannot control the meaning of the entire agreement where such inference runs counter to the agreement’s overall scheme or plan.” E.I. duPont, 498 A.2d at 1113. The court will consider extrinsic evidence to interpret the agreement only if there it finds that is ambiguity in the contract. Pellaton v. Bank of New York, 592 A.2d 473, 478 (Del.1991).

Intel argues that interpreting the agreement as extending Motorola’s rights to its subsidiaries, reads out the explicit limitation of the grant in section 3.3 to the MOTOROLA SEMICONDUCTOR PRODUCT SECTOR, which is limited to an enumerated set of then-existing business unit by that terms definition in section 1.12. Broadcom, however, argues that interpreting the agreement as not being extended to Motorola’s subsidiaries, reads out the explicit right of section 3.12 that gives Motorola the right to extend the license grants to any MOTOROLA SUBSIDIARY, which is defined by section 1.21 to include after-acquired wholly owned subsidiaries such as 61.

The court declines to accept either of these assertions. Rather, having considered the parties’ arguments and read the Motorola Agreement, the court finds that the agreement is unambiguous. There is no reason to adopt a construction that “reads out” the rights expressly granted in either section 3.3 or section 3.12. Rather, the court must interpret the agreement in a manner that gives effect to all of its provisions. The two sections can and therefore must be read consistently and in consideration of the overall purpose of the cross-license agreement.

In Section 3.7, Motorola grants to Intel “a non-exclusive, non-transferable license throughout the world under MOTOROLA SEMICONDUCTOR PRODUCTS SECTOR PATENTS.... ” This term is defined, in section 1.13, as the subset of patents owned by Motorola that “arise out of inventions made by one or more employees of the MOTOROLA SEMICONDUCTOR PRODUCTS SECTOR; or which are acquired by MOTOROLA and become part of the MOTOROLA SEMICONDUCTOR PRODUCTS SECTOR patent portfolio” before or during the duration of the Motorola Agreement. Thus, Motorola did not grant to Intel rights to all of its patents in section 3.7, but limited the license to the subset of patents relating to the MOTOROLA SEMICONDUCTOR PRODUCTS SECTOR.

Throughout the Motorola Agreement, each of the license grants between Intel and Motorola are mutual. The minor image license section that grants rights from Intel to Motorola is section 3.3. Given that Motorola’s patent license grant was limited to patents in the MOTOROLA SEMICONDUCTOR PRODUCTS SECTOR, it is not surprising that the license Intel granted to Motorola in consideration of Motorola’s grant in section 3.7 was also limited to the MOTOROLA SEMICONDUCTOR PRODUCTS SECTOR.

The plain language of section 3.12 demonstrates that parties’ intent to allow Motorola some flexibility regarding its ability to extend the “releases and grants of Sections 2 and 3,” the Mutual Releases and Grants sections, to its subsidiaries. Intel is given the same flexibility in section 3.13, the mirror-image section of 3.12, which states that “INTEL shall have the right to extend the release and grants of Sections 2 and 3, respectively, to any INTEL SUBSIDIARY if such SUBSIDIARY assumes the same obligations as INTEL hereunder ... as if such entity was named in the place of INTEL.”

According to its plain language, Section 3.12 does not, as Broadcom argues, automatically extend the grants of section 3 to all Motorola subsidiaries. It is therefore incorrect that section' 3.12 mandates replacing all occurrences of the name “Motorola” in the agreement with the name of its after-acquired subsidiary, “GI.” Section 3.12 gives Motorola “the right to extend” the Intel patent licenses to its subsidiary. Motorola must affirmatively exercise this right. Moreover, the Intel patent license gr