     Case: 15-40905   Document: 00513512992        Page: 1   Date Filed: 05/19/2016




        IN THE UNITED STATES COURT OF APPEALS
                 FOR THE FIFTH CIRCUIT


                                    No. 15-40905
                                                                  United States Court of Appeals
                                                                           Fifth Circuit

                                                                         FILED
JP MORGAN CHASE BANK, N.A.,                                          May 19, 2016
                                                                    Lyle W. Cayce
             Plaintiff - Appellee                                        Clerk

v.

DATATREASURY CORPORATION,

             Defendant - Appellant




                 Appeal from the United States District Court
                         for the Eastern District of Texas


Before DAVIS, SMITH, and HIGGINSON, Circuit Judges.
W. EUGENE DAVIS, Circuit Judge:
      In this case we review the district court’s interpretation of a most favored
licensee (“MFL”) clause in a license agreement which allows Plaintiff-Appellee
JP Morgan Chase Bank, N.A. (“JPMC”) to use Defendant-Appellant
DataTreasury Corporation’s (“DTC”) patented check processing technology.
The negotiated license agreement granted JPMC unlimited use of the patented
technology both as to time and volume of use for a lump sum, which JPMC paid
in installments under the agreement. In its suit against DTC for breach of
contract, JPMC invoked its rights under the MFL clause based on DTC’s
granting a similar unlimited license to another entity for a lesser lump sum
than JPMC paid. We agree with the district court that after comparing these
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                                No. 15-40905
two lump-sum license agreements, the later agreement is indeed more
favorable, and JPMC therefore is entitled to a refund from DTC for the
difference between the amount it paid for its license and the lesser amount
bargained for in the later license agreement. We find no error and affirm.

I.    Factual background and procedural history

      DTC holds several patents applicable to electronic check-processing
systems. In the late 1990s, the head of DTC reportedly met with several banks
to discuss the use of DTC’s patented technology, but the banks declined and
instead created their own check-processing system. DTC sued JPMC and
several other banks, including Bank One Corporation (“BOC”), which soon
merged into JPMC, alleging willful patent infringement. Facing substantial
potential liability (in DTC’s estimation, a nine-figure amount and perhaps
treble that for willful infringement), JPMC was the first bank to reach a
settlement agreement with DTC in 2005.
      As part of the settlement, JPMC entered into a consent judgment in
which it admitted the patents were valid and enforceable and that JPMC had
infringed them. It also entered into a license agreement permitting JPMC
unlimited use of DTC’s patented technology going forward. To protect JPMC
from the risk that DTC would enter into a more favorable license with a later
settling defendant, the license agreement included a most-favored licensee
(“MFL”) clause (also referred to as a most favored nations, or “MFN,” clause),
which forms the basis for this dispute. The settlement allowed both DTC and
JPMC to avoid the risks and costs of litigation, drastically reduced JPMC’s
potential liability, and paved the way for DTC to settle with the other banks.
DTC later obtained several hundred million dollars through the various
settlements.


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       In the district court’s superseding memorandum opinion and order in
this case, entered February 5, 2015, it set out the relevant facts more fully as
follows:
       On June 28, 2005, JPMC and BOC each entered into settlement
       agreements with DTC resolving patent infringement claims
       arising from certain of DTC’s patents. The parties also entered into
       the License Agreement, allowing JPMC to use DTC’s patents for a
       total consideration of $70 million. Although the $70 million
       altogether was a lump-sum payment for unlimited use of DTC’s
       patents and not a “running royalty” paid per-use, the parties
       agreed to payment in installments: $25 million in 2005 under the
       BOC Settlement and Release Agreement; $5 million in 2005 under
       the JPMC Settlement and Release Agreement; and $5.5 million
       each year from 2006 to 2011, with a final $7 million payment in
       2012. Together, these payments are the full consideration for
       JPMC’s use of DTC’s patents. 1
       Section 10.8 of the License Agreement provided that breaches of the
agreement by either party generally could be cured, “other than the failure of
JPMC to make the payments required by the Settlement and Release
Agreement between DTC and JPMC,” which breach “shall result in a
termination of the licenses and rights granted to JPMC and its Subsidiaries in
this Agreement.” Thus, JPMC committed to pay the entire $70 million royalty
from the outset and could not decide to stop paying even if it no longer desired
to use DTC’s patents. Under the unambiguous terms of the License Agreement,
JPMC was required to pay the full $70 million or lose the license entirely. The
district court continued:
       Section 9 of the License Agreement contains the MFL at issue,
       which states:




       1JP Morgan Chase Bank, N.A. v. DataTreasury Corp., 79 F. Supp. 3d 643, 646-47
(E.D. Tex. 2015) (citations and footnotes omitted, emphasis added). The district court had
entered an order on March 6, 2014, which interpreted the MFL clause, but it stated that the
February 5, 2015 order “supersedes the March 6, 2014, Order in its entirety.” Id. at 649.
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       9. Most Favored Licensee
       If DTC grants to any other Person a license to any of
       the Licensed Patents, it will so notify JPMC, and
       JPMC will be entitled to the benefit of any and all
       more favorable terms with respect to such Licensed
       Patents. JPMC agrees that $.02 to $.05 per
       Transaction is a reasonable royalty under the license
       granted herein, and JPMC makes no representation as
       to what pro-rata share of such royalty is attributable
       to any portion or sub-part of such Transaction. The
       notification required under this Section shall be
       provided by DTC to JPMC in writing within thirty (30)
       days of the execution of any such third party license
       and shall be accompanied by a copy of the third party
       license agreement, which may be redacted by DTC if
       necessary to comply with any judicial order or other
       confidentiality obligation. The MFN shall be applied
       within thirty (30) days from the date this provision is
       recognized in accordance with Section 10.7.
 Section 10.1 requires notices to be by fax and express delivery to
 both JPMC’s Office of General Counsel and to outside counsel at
 Skadden, Arps, Slate, Meagher & Flom LLP (Skadden). Section
 10.7 is a choice of law and forum clause requiring that the License
 Agreement be construed under Texas law, and that jurisdiction
 and venue exist solely in the United States District Court for the
 Eastern District of Texas, Texarkana Division.
 After entering into the License Agreement, DTC separately
 entered into several other licensing agreements (the Subsequent
 Licenses) involving the same patents but at different lump sum
 price terms. Notably here, on October 1, 2012, DTC entered into
 such a license agreement with non-party Cathay General Bancorp
 (Cathay). The lump sum price term for Cathay’s sole use (i.e., not
 extending to any after-acquired entities) was $250,000. However,
 as discussed below, the full consideration under the Cathay license
 also required additional payments under an established formula
 for any additional entities Cathay acquired later. No such
 provision exists in the JPMC–DTC License Agreement.
 On November 29, 2012, JPMC filed the instant lawsuit for breach
 of contract against DTC, alleging that DTC had failed to notify

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                                      No. 15-40905
      JPMC of the Subsequent Licenses and that “many of the
      Subsequent Licenses were granted on terms substantially more
      favorable than those afforded to JPMC.” Complaint at 4. Of note,
      the Cathay license agreement had not been noticed to JPMC, but
      was produced after JPMC initiated this lawsuit.
      In its instant motion for summary judgment, JPMC seeks the
      benefit of the isolated price term granted to Cathay, and summary
      judgment on DTC’s affirmative defenses and counterclaims. To
      obtain that benefit, JPMC contends that its $70 million lump-sum
      price term must be retroactively replaced with Cathay’s $250,000
      lump-sum price term and the balance refunded. JPMC also moved
      to dismiss DTC’s counterclaims.
      DTC has filed three cross-motions for partial summary judgment
      on: (1) its affirmative defense of the statute of limitations; (2) its
      affirmative defense of waiver; and (3) the applicability of the MFL
      clause and finding of no breach as to certain claims. The Court
      takes up all of the cross-motions together. 2
      The district court first concluded that DTC breached the contract
because the MFL is self-executing, and DTC failed to notify JPMC in
accordance with the clause. 3 DTC does not assign as error either of these
conclusions, so it has waived any argument on them. Thus, this appeal
concerns only the amount of damages and DTC’s affirmative defenses.
      With respect to damages, the district court concluded, in an issue of first
impression, that the broadly worded MFL clause in JPMC’s lump-sum license
agreement gave JPMC the right to incorporate the more favorable terms in the
Cathay lump-sum license agreement because both licenses were for unlimited
use but the Cathay license cost far less. 4 The court also concluded that the only
way to give effect to the MFL clause was to apply the new terms retroactively




      2 Id. at 647-48 (citations and footnotes omitted).
      3 Id. at 649-51.
      4 Id. at 652-53.

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                                  No. 15-40905
and refund the amount of overpayment, 5 but first it had to determine the
amount properly owed under the new terms.
      The district court reasoned that in retroactively replacing the terms of
the JPMC license with the more favorable terms of the Cathay license, it must
also apply the Cathay license terms requiring an additional license payment of
up to $250,000 for each after-acquired entity. Because the record did not show
JPMC’s acquisitions since 2005 or what use those entities, if any, made of the
patents, the district court denied summary judgment and invited the parties
to address the issue of damages later. 6 Finally, the district court rejected all of
DTC’s affirmative defenses, including the three at issue on appeal: statute of
limitations, waiver, and estoppel. 7 Those three are discussed further below.
      Thereafter, the parties filed an agreed stipulation on June 2, 2015, under
which DTC stipulated that it “is unable to raise a genuine dispute as to any
material fact controverting that the Court has found that JPMC is entitled to
the $250,000 price term of the Cathay License.” DTC also stipulated that it is
unable to raise a genuine issue of material fact that, under the terms of the
Cathay license, JPMC would owe an additional $250,000 for each of three
entities it had acquired after 2005: Bank of New York, Washington Mutual,
and Bear Stearns. Finally, DTC stipulated that “[i]n light of the foregoing,
DataTreasury is unable to raise a genuine dispute as to any material fact
controverting JPMC’s claim of $69 million in damages and that JPMC is
entitled to judgment as a matter of law regarding damages.”
      DTC’s stipulations meant that, under the terms of the Cathay license,
JPMC would owe $250,000 for the lump-sum unlimited-use license as well as
$250,000 for each of the three entities it had acquired since 2005. Accordingly,


      5 Id. at 653.
      6 Id. at 654-55.
      7 Id. at 656-58.

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                                        No. 15-40905
the district court entered a final judgment the same date in favor of JPMC in
the amount of $69 million (the $70 million JPMC paid under its original license
less the $1 million total it owed under the retroactively applied terms of the
Cathay license). DTC timely filed a notice of appeal.

II.    Applicable Law

       A.       Jurisdiction and standard of review

       The district court had jurisdiction over this diversity action pursuant to
28 U.S.C. § 1332(a), and we have jurisdiction over this timely appeal of a final
judgment pursuant to 28 U.S.C. § 1291.
       We review the district court’s judgment de novo, applying the same Rule
56 standards the district court applied. 8 We “review the district court’s
judgment on cross motions for summary judgment de novo, addressing each
party’s motion independently, viewing the evidence and inferences in the light
most favorable to the nonmoving party.” 9
       B.       Contract interpretation rules

       The parties agree that Texas law applies to this dispute. The Fifth
Circuit has summarized Texas’s rules for contract interpretation as follows,
citing opinions of the Texas Supreme Court:
       Our first task is to determine whether the contract is enforceable
       as written, without resort to parol evidence. The primary objective
       of the reviewing court is to ascertain the intentions of the parties
       as expressed in the contract. To achieve this objective, the court
       should examine the entire contract in order to “harmonize and give
       effect to all of its provisions so that none will be rendered
       meaningless.” A contract is unambiguous if it can be given a
       definite or certain legal meaning. Ambiguity does not arise because
       of a “simple lack of clarity,” or because the parties proffer different
       interpretations of the contract. Rather, a contract is ambiguous

       8   Berquist v. Washington Mut. Bank, 500 F.3d 344, 348 (5th Cir. 2007).
       9   Morgan v. Plano Ind. Sch. Dist., 589 F.3d 740, 745 (5th Cir. 2009).
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                                     No. 15-40905
      only if it is subject to two or more reasonable interpretations after
      applying the pertinent canons of construction. If the contract is
      ambiguous, courts may consider parol evidence for the purpose of
      ascertaining the parties’ intent. 10
      The parol evidence rule is particularly important to this appeal because
nearly all of DTC’s arguments—and several of the dissent’s points of
contention—depend on parol evidence, not on the plain language of the MFL
clause.
      C.     MFL clauses, royalties, and the licenses at issue

      This dispute concerns an MFL clause, particularly DTC’s primary
contention that, as a matter of law, an MFL clause cannot be applied
retroactively, i.e., to obtain a refund of amounts previously paid.
      It is first necessary to distinguish among the different types of royalties
available under a license, as the district court explained:
      “Rate” often designates a percentage of selling price, or a “running
      royalty.” See Rambus Inc. v. Hynix Semiconductor Inc., 2008 WL
      2795135, at *4–6 (N.D. Cal. July 15, 2008). But a royalty rate
      simply “means the compensation paid by the licensee to the
      licensor for the use of the licensor’s patented invention.” Hazeltine
      Corp. v. Zenith Radio Corp., 100 F.2d 10, 16 (7th Cir. 1938).
      Therefore, a lump-sum license also states a royalty rate, in the
      amount of the lump sum. Cardinal of Adrian, 208 U.S.P.Q. at 822–
      23; 2 Jay Dratler, Licensing of Intellectual Property, § 9.02[1] (“A
      ‘royalty rate’ may include the right to a fully paid-up license for a
      lump sum or a lump sum per unit time”) (footnotes omitted). Thus,
      a lump-sum licensee pays a paid-up sum for unlimited use of the
      patent at the single price instead of a discrete amount for each
      successive use, as under a running royalty. 11
      The distinction between running royalties and paid-up lump-sum
royalties is central to this case. It is certainly true that a licensee invoking an


      10  McLane Foodservice, Inc. v. Table Rock Restaurants, L.L.C., 736 F.3d 375, 377-78
(5th Cir. 2013) (citations omitted).
       11 79 F. Supp. 3d at 652.

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                                       No. 15-40905
MFL clause may not obtain a refund of amounts paid under a previously
applicable running royalty, and there are a great number of cases applying
that rule. 12 However, there is no reported case applying that rule when
switching from a paid-up lump-sum license to a more favorable paid-up lump-
sum license, as in this case. Even a cursory review of MFL clause commentary
shows that the rule precluding refunds is not absolute:
       The risk that others will receive more favorable license terms is a
       substantial threat to any licensee that relies extensively on
       licensed rights in a competitive environment. As a result, many
       licenses contain provisions designed to ensure that this does not
       occur and to guarantee access by one licensee to more favorable
       terms granted to later licensees. Described as “most-favored”
       clauses, these contract provisions vary greatly and provide for any
       number of different conditions on which they are triggered and for
       a variety of different remedies in the event of a later, more
       favorable license, ranging from automatic adjustment of the
       original license to refund of overages previously paid. 13
       It is common for such a clause to “require the licensor to advise the
licensee of any license on more favorable terms and grant the licensee the
option to elect those terms.” 14 Generally speaking,
       [a] patent licensee’s breach of contract damages for a licensor’s
       failure to provide information necessary for the licensee’s exercise
       of a most-favored-licensee provision includes recovery of royalties


       12  See, e.g., Rothstein v. Atlanta Paper Co., 321 F.2d 90, 91–93, 96 (5th Cir. 1963);
Studiengesellschaft Kohle, M.B.H. v. Hercules, Inc., 105 F.3d 629, 632, 634 (Fed. Cir. 1997);
Harley C. Loney Co. v. Mills, 205 F.2d 219, 219–21 (7th Cir. 1953); Guggenheim v. Kirchhofer,
66 F. 755, 758 (2d Cir. 1895); Hockerson-Halberstadt, Inc. v. Saucony, Inc., No. 04-1558, 2005
WL 767887, at *2, *5–*6 (E.D. La. Mar. 30, 2005); Epic Sys. Corp. v. Allcare Health Mgmt.
Sys., Inc., No. 4:02-CV-161-A, 2002 WL 31051023, at *3–4, *6 (N.D. Tex. Sept. 11, 2002)
(hereinafter “Epic”); Cadillac Prods., Inc. v. TriEnda Corp., No. 98-75206, 2000 WL 1279163,
at *1, *4 (E.D. Mich. Aug. 2, 2000).
        13 2 Information Law § 11:104 (database updated November 2015) (emphasis added);

see also John Gladstone Mills III et al., 5 Pat. L. Fundamentals § 19:21 (2d ed.) (“The purpose
of a most-favored licensee clause is to protect a licensee from a competitive disadvantage
resulting from more favorable terms granted to another licensee.”).
        14 Melvin F. Jager, Licensing Law Handbook § 10:14 (database updated September

2015).
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                                       No. 15-40905
      that the licensee paid in ignorance of its rights as a result of the
      failure of the licensor to give notice that it had granted other
      licenses on more favorable terms. 15
      The licenses granted to JPMC and Cathay are identical in most respects.
Both are paid-up lump-sum licenses granting unlimited use of the patent. That
is to say, neither of the licenses involves periodic royalty payments covering
discrete periods of time or per-transaction royalty payments; neither is subject
to any cap on the number of transactions; and neither has language tying the
lump-sum payment for the unlimited license to either the anticipated number
of transactions or the asset size of the licensee.
      Based on the plain language of the licenses, the only material differences
in payment terms are as follows: (1) JPMC’s lump-sum license cost $70 million,
while Cathay’s cost only $250,000; and (2) Cathay’s license required it to pay
up to $250,000 as an additional paid-up lump-sum license for each entity it
later acquired. Although the $70 million owed under the JPMC license was
paid in installments while the Cathay license was apparently made in a single
payment, that difference is not material. As noted above, JPMC was required
to pay the full amount, and its failure to make any payment “shall result in a
termination of the licenses and rights granted to JPMC and its Subsidiaries in
this Agreement” under the Settlement and Release Agreement between DTC
and JPMC. Thus, the JPMC license was all-or-nothing with respect to both the
payment owed and the right to use DTC’s patents, just like the Cathay license.




      15   69 C.J.S. Patents § 516 (footnotes omitted; citing Epic, 2002 WL 31051023).
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III.     Analysis

         A.    The MFL clause applies retroactively and permits
               refunds.

         DTC primarily argues that the MFL clause cannot apply retroactively,
only prospectively from the date the new terms are recognized, citing what it
calls the forward-looking language of the MFL clause (e.g., “The MFN shall be
applied…”). DTC claims that the clause allows JPMC to escape only future
payments still owed under the license at the time the MFL clause is recognized.
         DTC’s argument is based on the MFL clause’s silence regarding
retroactivity, but that silence favors JPMC. The major problem with DTC’s
interpretation is that it would render the MFL clause effectively meaningless
in this case and in other cases involving two otherwise paid-up lump-sum
licenses, differing only in the total license cost. Under DTC’s interpretation,
once the first licensee had fully paid its license fee (even if it paid the full
amount at the outset), it could receive no practical benefit from invoking the
MFL clause.
         JPMC made the final installment payment on its $70 million paid-up
lump-sum license in 2012 prior to DTC granting Cathay an unlimited-use
license for $250,000. Under DTC’s interpretation of the MFL clause, refunds
would be precluded. Thus, although the MFL clause would, by its plain terms,
allow JPMC to apply the benefit of the terms of the Cathay license, the
substitution of terms would mean nothing because JPMC could never get back
its $69 million overpayment under the newly applicable terms. Indeed, under
DTC’s interpretation, if JPMC had simply made a single $70 million payment
in 2005 rather than spreading that amount out over several years of
installment payments, JPMC never would have been able to invoke the MFL
clause to obtain a better price term.


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      As the dissent argues, DTC’s prospective-only interpretation would not
render the MFL clause wholly without meaning because it might still give
JPMC some relief—the ability to skip future payments—if DTC entered into a
more favorable license before JPMC finished paying. But DTC’s interpretation
finds no support in the plain language of the MFL clause or in the nature of
JPMC’s payment obligation. As we explained above, although the $70 million
payment was broken into scheduled installments, it was treated as a single
amount in every material way. JPMC’s failure to make any payment would
terminate the entire license; it was required to pay the full amount or lose any
benefits thereunder. DTC’s interpretation, then, arbitrarily treats as divisible
the fundamentally indivisible $70 million payment for the paid-up lump-sum
license. The $70 million was effectively an indivisible lump sum, and we must
treat it as such.
      We conclude DTC’s interpretation reaches an unreasonable result. Thus,
it does not satisfy Texas law for contract interpretation. The district court
reached the same result for similar reasons:
      The most favored running royalty licensee initially holds the most
      favorable “rate” when it obtains its license. The initial rate
      becomes less favored when the licensor later grants a lower rate
      elsewhere. It is only then that the opportunity to use the patent at
      a more favorable rate develops (and the most favored licensee
      becomes disadvantaged). Thus, the damage to the most favored
      licensee with a running royalty can only occur prospectively.
      Accordingly, prospective-only modifications to a running royalty
      rate guarantee most favored licensee status in that situation.
      On the other hand, a lump-sum license is not metered by usage,
      because a lump sum license purchases unlimited use for a set
      price. When the patent holder grants a subsequent licensee a lower
      lump sum, the most favorable rate becomes the lower, lump-sum
      amount. However, the disadvantage imposed on the most favored
      licensee cannot be cured with a substituted running royalty rate
      going forward because there is no running royalty structure to the
      license. Therefore, the logic supporting a prospective-only
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                                        No. 15-40905
      modification under a running royalty license is inapplicable to a
      lump-sum situation. There would be no purpose to a most favored
      licensee clause in a lump-sum license if the most favored licensee
      could not obtain a more favorable, later-granted lump-sum rate.
      Here, in what appears to be an issue of first impression, the parties
      contemplated the MFL clause to apply where a lump-sum payment
      could be replaced by a more favorable lump-sum payment.
      Certainly, the MFL clause simply states, “If DTC grants to any
      other Person a license to any of the Licensed Patents, it will so
      notify JPMC, and JPMC will be entitled to the benefit of any and
      all more favorable terms with respect to such Licensed Patents.” If
      JPMC were to be denied the ability to substitute a later-granted,
      more favorable payment term, it would render the MFL clause
      meaningless. The Court, however, must give meaning to the
      unambiguous terms of the contract. Bituminous Cas. Corp. v.
      Maxey, 110 S.W.3d 203, 208–09 (Tex.App.–Houston [1st Dist.]
      2003, pet. denied) (“Terms in contracts are given their plain,
      ordinary and generally accepted meaning unless the contract itself
      shows that particular definitions are used to replace that
      meaning.”).
      Therefore, where a licensee with a most favored licensee clause
      seeks to replace what has become a less-favored lump-sum license
      payment with a later-granted, more favorable lump-sum payment,
      the only way to give meaning to the MFL clause is by retroactive
      substitution of the payment term. That is the outcome of the
      parties’ contract here. 16
      Under Texas law, common sense, the plain language of the MFL clause,
and the commentary quoted above, we conclude that the district court correctly
held that the MFL clause requires the court to apply the MFL clause
retroactively and grant a refund.
      We also conclude that DTC has failed to cite any analogous contrary
authority. For example, DTC cites Davis v. Blige, 505 F.3d 90, 104 (2d Cir.
2007), for the proposition that “[t]he prospective nature of licenses has long
been recognized in the law of patents.” What that sentence means in context is


      16   79 F. Supp. 3d at 652-53 (citations omitted).
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that securing a license covers future use of the patent; a license does not
insulate the licensee from a suit for past infringement. That has no relevance
to this dispute.
      Even less persuasive is DTC’s reliance on the district court’s opinion in
Epic for the proposition that “a licensee is not entitled to credit for royalty
payments made prior to the making of an election” of a more favorable license
term under an MFL clause. 17 DTC reads Epic too broadly; it is factually and
legally inapposite to this dispute.
      In Epic, the plaintiff-licensee, Epic, had a license to use the patent of the
defendant-licensor, Allcare, which required annual running royalty payments
as well as additional per-unit royalties for usage exceeding an annual
threshold. 18 The license agreement included an MFL clause that allowed it to
substitute more beneficial financial terms in any license between Allcare and
a competitor of Epic. Epic learned that Allcare had granted a paid-up lump-
sum license to a competitor for $350,000, and Epic formally invoked the MFL
clause in October 2001.
      At the time Epic formally invoked the clause, it had already paid
$204,080 under its running royalty license and attempted simply to pay the
difference between that amount and the $350,000 lump-sum license. Allcare
rejected the offer, and Epic eventually sued. By the time the case came up for
decision on summary judgment, Epic had paid Allcare a total of $538,295.88 in
running royalties under its existing license, plus another $197,406.14 in an
escrow account pending resolution of the dispute.
      The district court concluded that the competitor’s $350,000 paid-up
lump-sum license was indeed more favorable, so Epic was entitled to switch



      17   Epic, 2002 WL 31051023, at *6.
      18   See generally Epic, 2002 WL 31051023.
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                                       No. 15-40905
over to that royalty scheme as of October 2001, when it formally invoked the
MFL clause. 19 From that date forward, the district court deemed Epic’s license
to be a paid-up lump-sum license, and the amount paid thereafter no longer
running royalties but amounts paid toward the paid-up lump-sum license
amount. The court therefore applied the usual rule that Epic was not entitled
to a refund of any running royalties it had made under its original license
agreement, prior to formally invoking the MFL clause in October 2001. 20
Importantly, however, the court held that Epic was entitled to a refund of any
royalties it paid in excess of $350,000 after it formally invoked the MFL clause
in October 2001 and was deemed to be operating under a paid-up lump-sum
license. 21
       As noted, DTC claims Epic stands for the proposition that a licensee may
never get a refund of any royalties paid before an election under an MFL
clause, but Epic is factually distinguishable and its holding not nearly so broad
as DTC asserts. In Epic, the court held that Epic could not obtain a refund for
the running royalties it had paid under its initial license. Notably, all of the
cases cited in Epic for that proposition also involved the payment of running
royalties under the initial license as well, 22 and we can find no cases permitting
a refund of past-paid running royalties in any context. That point is neither




       19 Id. at *6.
       20 Id. (citing Rothstein, 321 F.2d at 96; Harley C. Loney Co., 205 F.2d at 221; Cadillac,
2000 WL 1279163 at *4).
       21 Id.
       22 See Rothstein, 321 F.2d at 91-92 (3% running royalty under the initial license

agreement); Harley C. Loney Co., 205 F.2d at 219 (initial license “required defendant to pay
a specified royalty upon each licensed wheel balancing weight sold by defendant”); and
Cadillac, 2000 WL 1279163 at *1 (initial license required payment of “approximately $1.00
per unit”). The other cases DTC cites are all similarly distinguishable because none of them
involves an MFL clause where both the original license and the more favorable license are
paid-up lump-sum unlimited-use licenses.
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                                  No. 15-40905
new nor relevant, however, because JPMC never had a running royalty
agreement, only a paid-up lump-sum license agreement.
      More relevant here is the fact that the district court award Epic a refund
of amounts paid in excess of $350,000 from the time it switched to a paid-up
lump-sum license. The key point is that once Epic made its election, all of its
payments were deemed to be made under a paid-up lump-sum license, not a
running royalty license. If those payments had still been considered running
royalties, they would have remained nonrefundable under the case law cited
by the district court, but they were now considered payments on a paid-up
lump-sum license. The only way to ensure that Epic obtained the benefit of its
new paid-up lump-sum license was to refund the amount of the overpayment.
      Neither the parties nor this court can find a single MFL clause case
involving a switch from an initial paid-up lump-sum license to a later more
favorable paid-up lump-sum license, as is present in this case. Even though
the issue appears to be one of first impression in caselaw, it is actually simpler
than most MFL clause cases. First, DTC has never cited any authority holding
that amounts paid for a paid-up lump-sum license are nonrefundable, only
cases stating that running royalties are nonrefundable. As noted, Epic plainly
allowed the refund of amounts paid under the paid-up lump-sum license, which
were not considered running royalties.
      Second, two paid-up lump-sum licenses are much closer to an apples-to-
apples comparison than a running royalty license and a paid-up lump-sum
license (as in Epic) or two running royalty licenses with incommensurable
terms. The biggest material difference between two paid-up lump-sum licenses
is the total cost. An MFL clause would mean virtually nothing if it did not allow
the earlier licensee to obtain a lower license cost, which in turn means nothing
if the earlier licensee cannot receive a refund in the amount of the
overpayment.
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                                     No. 15-40905
      In sum, DTC’s interpretation leads to an unreasonable result, and it has
not cited any apposite legal authority in support of that interpretation. The
district court correctly held that the MFL clause may be applied retroactively
and that JPMC is entitled to a refund for the amount it overpaid under the
retroactive terms of the Cathay license, i.e., $69 million.
      B.       The MFL clause does not permit an analysis of different
               licenses based on check volume.

      Next, DTC argues that the district court erred by not considering the
different levels of usage by JPMC and Cathay. DTC claims the MFL clause ties
the total cost of the JPMC license to a per-transaction royalty estimate, based
on the second sentence of the MFL clause: “JPMC agrees that $.02 to $.05 per
Transaction is a reasonable royalty under the license granted herein, and
JPMC makes no representation as to what pro-rata share of such royalty is
attributable to any portion or sub-part of such Transaction.” 23 That argument
has no merit.
      The plain language of the MFL clause does not support DTC’s
interpretation because it does not, on its face, contain any language limiting
the MFL clause. The district court reasoned that the second sentence is
essentially disconnected:
      the second sentence of the MFL clause unambiguously provides
      JPMC’s representation of a reasonable royalty rate in exchange for
      inclusion of the MFL clause. See Frost Nat’l Bank v. L & F
      Distribs., Ltd., 165 S.W.3d 310, 312 (Tex. 2005) (encouraging
      courts to consider the business purpose a contract serves). The
      second sentence has no bearing here and neither party has argued
      otherwise. 24




      23   79 F. Supp. 3d at 647.
      24   Id. at 649.
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                                     No. 15-40905
      DTC does assert on appeal that the second sentence limits application of
the MFL clause by creating a per-transaction rate, but it has no support for
that point. First, there is no question that the license at issue is a paid-up
lump-sum license which allows unlimited use. It does not include a per-
transaction royalty. As other courts have explained, “there is no basis in fact
for the conversion of a lump sum rate of royalty into a rate of per cent of selling
price royalty,” 25 or vice versa. 26 The two types of royalties are fully distinct;
“[t]he former is a true alternative to the latter and must be so treated in
determining the rights of [the parties] in respect to royalty provisions.” 27
      Second, even if there were a factual basis for calculating the effective
running royalty rate of the lump-sum royalty at issue here, it would be far from
two to five cents per transaction. DTC claims JPMC processes approximately
five billion check images each year. At two cents per transaction, JPMC’s
running royalty would amount to approximately $100 million per year.
Considering JPMC entered into the license agreement in 2005, the total
amount JPMC would have paid by 2012 under a per-transaction royalty
agreement presumably would have exceeded $1 billion even at two cents per
transaction, more than an order of magnitude greater than what it paid for the
lump-sum license permitting unlimited use.
      If anything, the presence of the “$.02 to $.05 per Transaction” clause
undermines DTC’s position. It indicates that the parties expected the MFL to
apply to pricing terms in future licenses; if they thought about the possibility
that some contracts could employ a running royalty method of payment,
presumably they also anticipated the possibility that future contracts could use
a lump-sum-payment method, as their contract in fact did. It is not entirely


      25 Hazeltine, 100 F.2d at 18.
      26 Studiengesellschaft, 704 F.2d at 57 (citing Cardinal of Adrian, 208 U.S.P.Q. 822).
      27 Hazeltine, 100 F.2d at 18.

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                                   No. 15-40905
evident why the individual parties agreed to include the “$.02 to $.05 per
Transaction” clause. JPMC contends it was designed to benefit DTC in other
litigation, which DTC strongly disputes. Nevertheless, given the difficulties
inherent in comparing lump-sum payments to running royalties, the purpose
likely was to set a rate that JPMC would consider reasonable (i.e. not more
favorable) in any running royalty contracts that DTC made. Obviously, the
agreement    already    provided    a   point   of   comparison   for   lump-sum
agreements―the $70 million fee.
     Third and finally, there is no language in any relevant document (the
settlement agreements, the JPMC license, or the Cathay license) explaining
how the parties arrived at the lump-sum amounts paid by either JPMC or
Cathay. Given that the contractual language is clear and unambiguous and
supports only JPMC’s interpretation, Texas law precludes parol evidence such
as the relative asset sizes and check volumes of JPMC and Cathay.
     This result is required by the plain language of the contract, but it could
have been avoided with more careful drafting by DTC, as the district court
explained:
     Having considered these problematic issues, the Court notes that
     Professor Dratler discusses ways to improve an MFL clause:
             Case law suggests two ways to improve the standard,
             broadly-drafted clause. The first is to make specific
             provision for situations that experience has
             shown are most likely to cause difficulties. The
             most common of these are infringement settlement
             licenses, cross-licenses, and lump-sum licenses and
             volume or production limits. . . .
             A second means of reducing the risk of most-favored-
             licensee clause from the licensor’s standpoint is to
             require the favored licensee to accept all the terms of
             any later license, good and bad, as a condition of
             receiving the benefit of any more favorable terms.
             Although the law generally requires this in any event,
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                                      No. 15-40905
              explicit contractual language to that effect may
              avoid unnecessary litigation.
     2 Jay Dratler, Licensing of Intellectual Property, § 9.05[1]–[2]
     (2014) (footnotes omitted, bolded emphasis added); cf., Federal
     Judicial Center, Manual for Complex Litigation, Fourth, at § 13.23
     (2004), which states:
              [MFL] clauses have several drawbacks]: (1) the
              potential liability under them is indeterminate,
              making them risky; (2) the additional recovery they
              may produce for some plaintiffs without any effort by
              their attorneys makes it difficult to fix fees; and (3) the
              factors that induce parties to settle with different
              parties for different amounts, such as the time of
              settlement and the relative strength of claims, are
              nullified. Such clauses can provide an incentive for
              early settlement as well as an obstacle to later
              settlements. To limit their prejudicial impact, such
              clauses should terminate after a specified length of
              time (to prevent one or more holdouts from delaying
              final implementation), impose ceilings on payments,
              and allow flexibility to deal with changed
              circumstances or with parties financially unable to
              contribute proportionately. The judge may have to
              consider voiding or limiting them if enforcement
              becomes inequitable. If this determination involves
              disputed questions of fact, an evidentiary hearing and
              possibly additional discovery may be necessary.
     (Footnotes omitted.) Here, the MFL clause was sparsely defined,
     very broadly worded, contained no specific limitations or
     provisions for difficult situations, included no language of
     termination, and appears not to have contemplated the effect of a
     later license agreement, particularly one based on a lump-sum
     payment of the type at issue here. The impact of a less than well-
     defined MFL clause is clearly seen in this litigation. 28
     We fully agree. The potential problems with a broadly worded and open-
ended MFL clause (most of which affect the licensor), are fairly obvious, and


     28   79 F. Supp. 3d at 655-56 (emphasis and most omissions in original).
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                                   No. 15-40905
the means of avoiding potential problems as experienced above are simple.
DTC failed to include any such restriction, such as limiting the effective period
of JPMC’s right under the MFL clause, capping the total volume of check-
clearing transactions under the Cathay license, tying the amount paid for the
paid-up lump-sum licenses to the licensee’s asset size in either license, or
stating that the amount paid was tied to the remaining life of the patent. Any
or all of those restrictions could have been reasonable, as DTC argues, but the
MFL clause contains none of them. Because the language of the MFL clause is
clear and unambiguous, we must apply it as written. DTC may not introduce
parol evidence, including the relative check volumes and asset sizes of JPMC
and Cathay, to change the plain language.
      C.        DTC’s affirmative defenses are not viable.

      DTC asserts three affirmative defenses, none of which is viable. First,
DTC asserts that JPMC’s lawsuit is barred by the four-year statute of
limitations, despite the fact that JPMC brought it less than two months after
DTC entered into the Cathay license, as the district court noted. 29 DTC seems
to be arguing that the MFL clause gave JPMC a single right to enforce, no
matter how many times DTC breached. DTC points out that it first breached
the MFL clause more than four years ago when it entered into its first license
with a third party on more favorable terms than with JPMC. Thus, under
DTC’s interpretation, JPMC has completely lost the right to sue for breach of
the MFL clause due to the statute of limitations. DTC has failed to cite a single
case supporting its very broad interpretation of the statute of limitations, and
we can find none. There is no merit to this argument. Moreover, DTC never
even provided sufficient notice of its earlier breaches as required by the MFL
clause.


      29   Id. at 658.
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                                          No. 15-40905
          Second, DTC argues that JPMC waived its right to enforce the MFL
clause by making the final installment payment under the $70 million lump-
sum license without reserving any rights after it suspected DTC had breached.
JPMC made the final installment payment months before DTC executed the
Cathay license, and DTC points to no evidence that JPMC waived the Cathay
breach. All of DTC’s evidence of alleged waiver dates from prior to execution of
the Cathay license, as the district court explained in full. 30 Because DTC has
failed to present any evidence that JPMC waived its rights under the MFL
clause with respect to the Cathay breach, we conclude there is no merit to
DTC’s waiver defense.
          Third and finally, DTC asserts the defense of equitable estoppel, which
is virtually a restatement of its other two defenses. DTC argues that JPMC
should be estopped from asserting the breach of contract claim against DTC
because JPMC made the final payment required under the contract without
informing DTC of its intent to sue and without reserving any rights. As the
district court pointed out, “DTC cites no authority, nor is the Court aware of
any, that JPMC can be estopped from a breach of contract claim just because
it satisfied its contractual obligations.”31 That remains true.
          Even if DTC could assert equitable estoppel, it has failed to prove the
necessary element that it “detrimentally relie[d] on the representation.” 32 DTC
claims it detrimentally relied on JPMC’s silence regarding its intent to sue
when it used JPMC’s final payment to pay its ordinary operating expenses.
The district court explained that DTC cannot rely on that fact because DTC’s
President and CEO testified that DTC would have paid its operating expenses



          30 Id. at 656-57.
          31 Id. at 657.
          32 Id. (citing Trudy’s Texas Star, Inc. v. City of Austin, 307 S.W.3d 894, 906 (Tex. App.

2010)).
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                                         No. 15-40905
even if JPMC had paid subject to a reservation of rights. 33 On appeal, DTC
does not dispute that fact. Because DTC cannot prove a necessary element of
its equitable estoppel defense, that defense fails as a matter of law.

IV.     Conclusion

        We affirm the district court’s final judgment for the reasons set out above
and for the reasons set out in the district court’s careful memorandum opinion
and order.
        AFFIRMED.




        33   79 F. Supp. 3d at 657-58.
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                                 No. 15-40905
STEPHEN A. HIGGINSON, Circuit Judge, concurring in part and dissenting
in part:
       Texas contract law directs courts to “ascertain and give effect to the
parties’ intentions as expressed in” the contract at issue, “bearing in mind the
particular business activity sought to be served” and “avoid[ing] when possible
and proper a construction which is unreasonable, inequitable, and oppressive.”
Frost Nat’l Bank v. L & F Distribs., Ltd., 165 S.W.3d 310, 311–12 (Tex. 2005)
(quoting Reilly v. Rangers Mgmt., Inc., 727 S.W.2d 527, 530 (Tex. 1987)). And
“[w]hether a contract is ambiguous is a question of law that must be decided
by examining the contract as a whole in light of the circumstances present
when the contract was entered.” Columbia Gas Transmission Corp. v. New
Ulm Gas, Ltd., 940 S.W.2d 587, 589 (Tex. 1996). Applying these principles, I
respectfully disagree with the majority opinion’s interpretation of the following
clause:
      If DTC grants to any other Person a license to any of the Licensed
      Patents, it will so notify JPMC, and JPMC will be entitled to the
      benefit of any and all more favorable terms with respect to such
      Licensed Patents. JPMC agrees that $.02 to $.05 per Transaction
      is a reasonable royalty under the license granted herein. The MFL
      shall be applied within thirty (30) days from the date this provision
      is recognized . . . .
In light of the prospective language of the MFL clause, case law interpreting
similar language, and the implausibility that the parties would have agreed to
MFL language that functions as JPMC argues, I would hold—consistently with
every other court to have interpreted a similar clause—that JPMC is not
entitled to recoup sums paid before DTC granted any lower-priced license.
      We have addressed a similarly worded clause before and reached a
conclusion opposite to that which the majority reaches today—indeed, at oral
argument, JPMC conceded that the reasoning behind the only Fifth Circuit
authority in this area was “troubling” for its position. In Rothstein v. Atlanta
                                       24
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                                 No. 15-40905
Paper Co., Rothstein licensed its bottle-carrier patent to Atlanta in exchange
for a three-percent royalty on Atlanta’s sales. 321 F.2d 90, 91–92 (5th Cir.
1963). The license agreement included this MFL clause:
      Atlanta shall be entitled to be in as favorable a position as any
      other manufacturer or seller of bottle carriers, wherefore any more
      favorable terms of conditions as to royalties that have been or
      hereafter may be granted to others who are licensed under said
      patent automatically shall become available to Atlanta . . . .
Id. at 92.   About three years later, Atlanta asked about the terms of a
settlement involving the same patent and learned that Rothstein had granted
a competitor a paid-up license for $8,000. Atlanta “claimed [the right to]
identical treatment with the result that it would be refunded all sums
theretofore paid as royalty over and above $8,000.” Id. at 93. This court held
that Atlanta was entitled to a prospective license for $8,000, with credit for
sums paid after the second license was granted, but rejected the argument that
Atlanta could recover all royalties it paid in excess of $8,000 since the
beginning of its own license, including before the second license was granted.
Id. at 96. We held that “[t]he only reasonable construction” of the MFL clause
was that it did “not operate retrospectively.” Id. We also suggested that the
evident purpose of the clause—preventing Atlanta from being at a “competitive
disadvantage”—was consistent with prospective application because “there
was a built-in gap until others were licensed.” Id.
      Citing Rothstein, a district court applying Texas law recently reached
the same conclusion analyzing a similar MFL clause that read in relevant part:
      If after the Effective Date, Licensor shall enter into a License
      Agreement with any third party in the same Field of Use as
      Licensee . . . on financial terms that are more favorable to such
      Third Party Licensee than the financial terms set forth in this
      Agreement, Licensee shall be entitled to substitute the financial
      terms of such Third Party License for the counterpart or
      equivalent terms herein . . . .

                                      25
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                                  No. 15-40905
Epic Sys. Corp. v. Allcare Health Mgmt. Sys., Inc., No. 4:02-CV-161-A, 2002
WL 31051023, at *3 (N.D. Tex. Sept. 11, 2002). Although the MFL clause in
Epic—like the one in Rothstein—did not expressly preclude retroactive
application, the court concluded that the most-favored licensee “[was] not
entitled to credit for royalty payments made prior to the making of an election”
of more favorable terms. Id. at *6; see also, e.g., Harley C. Loney Co. v. Mills,
205 F.2d 219, 219–21 (7th Cir. 1953); Univ. Oil Prods. Co. v. Vickers Petroleum
Co. of Del., 19 A.2d 727, 729 (Del. Super. Ct. 1941).
      The majority justifies a different result here, reasoning that because
JPMC did not pay a running royalty rate, applying a later-granted license’s
price term retroactively to the beginning of JPMC’s license is necessary to
avoid making the MFL clause “effectively meaningless.” As a corollary, the
majority deems inapposite the many cases holding that a most-favored licensee
cannot recoup payments made before the subsequent license was granted. I
perceive two problems.
                                        I.
      First, whatever the case might be with a different license granted in
exchange for a single lump-sum payment, this MFL clause would not be
“meaningless” if it only applied prospectively. Unlike some MFL clauses that
are limited to price terms, this one entitled JPMC to “the benefit of any and all
more favorable terms” in any subsequent license. See 1 Alan S. Gutterman,
GOING GLOBAL § 13:66 (2015) (noting that “the scope of [an] MFL clause
usually extends to all other material conditions,” not just the royalty rate); cf.
Epic, 2002 WL 31051023, at *3 (referring only to “financial terms”); Cameron
Int’l Corp. v. Vetco Gray Inc., No. 14-07-00656-CV, 2009 WL 838177, at *1 (Tex.
App. Mar. 31, 2009) (referring only to “royalty terms”). The eleven-page license
agreement, which also incorporates a settlement and release agreement
between the parties, contains nonprice provisions that could have been drafted
                                       26
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                                 No. 15-40905
more favorably to JPMC. But even taking the position that the MFL clause
here concerns only price, reading the clause as meaningless requires eliding
not only the MFL clause’s prospective language, but also the contract’s actual
consideration terms. Notably, the majority argues that DTC’s interpretation
is unreasonable because “if JPMC had simply made a single $70 million
payment in 2005 rather than spreading that amount out over several years of
installment payments, JPMC never would have been able to invoke the MFL
clause to obtain a better price term.” But in fact—and unlike with Cathay’s
license, which the majority claims is materially identical except for the dollar
amounts involved—most of JPMC’s consideration was to be paid in annual
installments, the last due seven years after JPMC’s license began. And if any
of the subject patents was found invalid during that seven-year period, JPMC
would have been excused from its remaining payments—a benefit not available
to other DTC licensees such as Cathay that negotiated one-time lump-sum
payments.
      Because of this payment structure, which is evident from the face of the
contract, applying this MFL clause prospectively (as has every other court to
consider an MFL clause) would entitle JPMC to substantial cost benefits based
on any licenses granted in the first seven years of the parties’ agreement. As
explained more fully below, under this reading, the “benefit of” more favorable
price terms to which JPMC “will be entitled” is the same benefit that a later
lump-sum licensee gets upon conferral of its license: the right to unlimited use
of the subject patents from that point until those patents expire, in exchange
for a certain price. See Benefit, BLACK’S LAW DICTIONARY (10th ed. 2014) (“The
advantage or privilege something gives; the helpful or useful effect something
has”). Especially given that another provision of the parties’ agreement (the
invalidity clause mentioned above) protected JPMC against future payments
only during this seven-year period, I would hold that DTC’s reading of the MFL
                                      27
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                                     No. 15-40905
clause is reasonable, and the clause ambiguous.               See Columbia Gas, 940
S.W.2d at 589 (explaining that contract language is ambiguous if it is “subject
to two or more reasonable interpretations” and that the question of ambiguity
“must be decided by examining the contract as a whole”). 1
      Reading the MFL clause’s language in the context of the rest of the
contract thus shows that DTC’s interpretation is reasonable. And though
consideration of parol evidence would not be permitted if the contract at issue
were facially susceptible to only one reasonable meaning, see id., post-
contracting events in this case are illustrative. In January 2006, DTC granted
NCR Corporation a license for $2.85 million. At that point, JPMC had $40
million in scheduled payments remaining. If the parties had then applied the
MFL clause, JPMC instead would have been entitled to a license going forward
for $2.85 million in additional payments—saving the bank over $37 million.
The clause, interpreted prospectively, would have provided similar price
protection based on dozens of other licenses DTC granted before JPMC made
its final payment on May 22, 2012. That hardly seems meaningless.
                                            II.
      Second, in its attempt to give meaning to the MFL clause, the majority
renders effectively meaningless the contract’s consideration terms.                  It is
undisputed that, at the time JPMC obtained its nonexclusive license, DTC
planned to grant other licenses.            A press release announcing JPMC’s
settlement and license—issuance of which was a term of the parties’
agreement—mentioned other pending lawsuits involving the same patents and
warned that “a complaint for infringing DTC’s patents should be interpreted


      1  To the extent JPMC made payments in excess of a more favorable license after it
was granted, it would be entitled to recover those overages. See Epic, 2002 WL 31051023, at
*6. For that reason, the majority’s citation of a commentator’s statement that MFL clauses
can lead to “refunds” is no answer to the argument that this MFL clause was not intended to
operate retroactively.
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                                    No. 15-40905
as a formal invitation to either license or litigate.” Over the course of the next
eight years, DTC granted almost fifty other licenses covering the same patents,
one for just $39,500. Only one of these subsequent licenses cost half as much
as JPMC’s, and over a dozen cost less than $100,000. It strains credulity that,
given this business plan, DTC negotiated such a sizable and carefully
structured payment plan with JPMC, the bulk of which would amount to
nothing more than a loan—to be repaid within thirty days—as soon as DTC
granted a less expensive license, no matter that the subsequent license covered
a shorter time span of use.
      In this regard, it is important to remember what DTC was selling: the
right to use certain technology during the finite terms of its patents. It appears
that the two patents named in JPMC’s license agreement are set to expire in
June 2016 and March 2017, respectively. See U.S. Patent. No. 5,910,988; U.S.
Patent No. 6,032,137. JPMC, which acquired a license in June 2005, bought
the right to use that technology for more than seven years longer than did
Cathay, which acquired its license in October 2012. 2 As the majority opinion
states, “[t]he purpose of a most-favored-licensee clause is to protect a licensee
from a competitive disadvantage resulting from more-favorable terms granted
to another licensee.”      Willemijn Houdstermaatschappij, BV v. Standard
Microsystems Corp., 103 F.3d 9, 13 (2d Cir. 1997). I cannot discern how the
grant of Cathay’s license in 2012 placed JPMC at a competitive disadvantage
during the previous seven years—a period during which JPMC’s use of the
licensed technology appears to have been substantial, as by 2013, JPMC was
processing over five billion check images per year. Moreover, under JPMC’s
interpretation, the MFL clause would require the same $69 million refund if


      2   Even if JPMC’s and Cathay’s licenses are extended—which JPMC suggests is
possible, but does not contend actually has happened or will happen—JPMC will still have
gotten over seven more years of licensed use of the technology than Cathay.
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                                        No. 15-40905
DTC had granted Cathay its license just a month before the licensed patents
expired.
                                               III.
      The majority opinion endorses JPMC’s theory that the MFL clause in
this manifestly nonexclusive license agreement unambiguously gave JPMC
the right to pay nothing for its use of the subject patents during the period
between the grant of its license and DTC’s last grant of a lower-priced license,
however many years later that might come. Put differently, JPMC’s theory is
that this MFL clause gave it the right to pay the same amount for a much
longer (and thus much more valuable) license. This interpretation, at odds
with the clause’s prospective language and our case law interpreting a similar
clause, strongly discourages licensing, especially to small competitors, as a
licensor that had granted one non-running-royalty license with an MFL clause
stands to lose significant money by granting a cheaper license to a smaller
entity, even several years later.
      No contractual text requires, and no prior case even suggests, this result,
which could not have been the parties’ mutual intention at the time of
contracting. Further, a reasonable alternative construction exists: that the
MFL clause gave JPMC the benefit of more favorable nonprice terms for the
duration of its license, and—like the clause excusing the bank from further
payments after a final judgment of patent invalidity—protected JPMC with
regard to more favorable price terms during the seven years over which it made
payments. Accordingly, I would reverse the district court’s holding that the
MFL clause unambiguously entitled JPMC to a refund of nearly all payments
it made since the beginning of its license. 3




      3   I concur in parts III.B and III.C of the majority opinion.
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