Essential Patent Blog

Essential Patent Blog

The Source for Standard-Essential and Other Patent Litigation Issues

FTC, MPHJ enter settlement and consent order in demand-letter investigation

Posted in Federal Trade Commission

Following an investigation of alleged deceptive patent-assertion practices, the FTC has reached settlement with non-practicing entity MPHJ (the so-called “scanner troll”) and its counsel, Farney Daniels PC. The resolution has resulted in an agreement and consent order that would bar MPHJ and the Farney Daniels firm from making misrepresentations — including deceptive claims concerning the results of licensing, sales, settlement, or litigation regarding particular patents, claims that a particular patent has been licensed to a substantial number of licensees, or claims that a particular patent has been licensed at particular prices or within particular price ranges – when asserting patent rights in the future. Under the proposed settlement, MPHJ and Farney Daniels are commissioned with certain recordkeeping practices and requirements that the parties fully document and substantiate any future patent assertion efforts and keep records demonstrating their compliance with the order for a period of twenty years. The FTC has invited interested parties to submit comments on the issues set forth in the proposed consent agreement via the FTC’s website through December 8, 2014.

As discussed in prior posts, MPHJ and its counsel drew nationwide attention after undertaking an extensive letter campaign in attempt to accumulate license fees on its scanner patents by threatening small end-users with litigation that MPHJ allegedly did not actually intend to pursue. MPHJ’s demand letters prompted legal action from the Attorneys General of several states, including Nebraska and Vermont. MPHJ also filed a complaint against the FTC in W.D. Tex. in January 2014, preemptively seeking to prevent an FTC-enforcement-action premised on the non-practicing entity’s demand practices. Judge Walter Smith dismissed MPHJ’s suit in September, writing, “There has been no FTC action beyond the investigative stage, other than FTC’s attempted settlement. There is, therefore, no imminent threat of prosecution.” The settlement also comes in the midst of the FTC initiating its “Patent Assertion Entity Study”, which was approved by OMB this August.

Parties begin FRAND, damages discovery following infringement verdict (InterDigital v. ZTE)

Posted in Court Orders, Legislation

Judge Andrews has entered an order allowing InterDigital and ZTE to proceed with FRAND and damages discovery, following last week’s jury verdict finding that ZTE’s accused handset devices infringe the patents asserted by InterDigital. As we previously mentioned, ZTE asserted a number of FRAND-related affirmative defenses and counterclaims in the litigation, all of which were bifurcated from the infringement liability issues on trial last week. With respect to the SSO-related portion of the case, the order instructs the parties to proceed with FRAND and damages discovery under the assumption that the infringement verdict will stand and without the need to coordinate with discovery in InterDigital’s co-pending case against Nokia, scheduled for trial March 2015:

FRAND/damages discovery may begin immediately. It is going to have to be done, and the parties should do it (as they normally would) on the assumption that ZTE will be found to have infringed the ’151 patent. It does not need to be coordinated with any similar discovery in the Nokia case. The parties should include the scheduling for this discovery in the written proposed scheduling order submitted before the above-mentioned scheduling conference. The schedule should culminate in a trial disposing of the FRAND/damages issues.

The order also denies the pending JMOL motions — after trial, ZTE filed for JMOL of noninfringement and InterDigital sought JMOL declaring each of the asserted patents were not invalid — sets a briefing schedule for ZTE’s renewed JMOL or motion for new trial, invites the parties to submit an agreed-upon revised judgment form, and indicates the Court will “issue an order in the Nokia case to learn Nokia’s position on further claim construction in relation to the ’151 patent” which was presented at trial but ultimately not decided by the jury. During the trial, the Court suggested and the parties stipulated to a mistrial with respect to the ’151 patent after certain claim construction evidence was presented by InterDitigal. The parties afterwards agreed to hold separate claim construction proceedings on the ’151 patent and, in accord with yesterday’s order, will proceed with a two-day trial on infringement issues related to this patent alone at a later date.

Jury verdict: ZTE infringes InterDigital patents (InterDigital v. ZTE)

Posted in Jury verdicts, Litigation

Yesterday, InterDigital prevailed in its Delaware jury trial against ZTE where the jury found that ZTE’s accused phones infringe each asserted claims of InterDigital’s U.S. Patent Nos. 7,190,966, 7,286,847, and 8,380,244. The verdict form also shows that the jury found none of the asserted claims to be invalid as obvious. The jury was not asked to make any finding on issues related to damages, ZTE’s FRAND-related affirmative defenses, and ZTE’s FRAND-related counterclaims, all of which were bifurcated from patent liability issues by the parties’ joint stipulation and will be tried at a later date. As you may recall from our May 30, 2014 post, Judge Andrews previously dismissed ZTE’s amended FRAND counterclaims against InterDigital, ruling that the declaratory judgment actions would not serve a useful purpose in the context of the parties’ ongoing litigation and that ZTE’s affirmative defenses adequately encompassed the FRAND-related issues. In accord with the jury’s verdict, the Court entered judgment in favor of InterDitigal on plaintiff’s infringement counts and ZTE’s invalidity counterclaim as to the patents-at-issue. We note that the judgment does not extend to ZTE’s FRAND-related counterclaims or defenses that have yet to be litigated.

The jury verdict stands in contrast to ALJ Essex’s June 2014 Initial Determination in Inv. No. 337-TA-868 – InterDigital’s ITC case against ZTE — finding that ZTE and Nokia had not infringed the same  ’966 and ’847 patents that were at issue in the Delaware case. As discussed in our July 2, 2014 post, ALJ Essex’s Initial Determination, which was affirmed by the Commission on review, provided a sharp critique of respondents that assert FRAND defenses without having first availed themselves of SSO procedures for resolving situations where licenses are not available. The ITC decision is currently up on appeal to the Federal Circuit, with oral arguments to take place next month.

European Commission seeks public comments on patents and standards

Posted in Miscellaneous

The European Commission’s Directorate-General (“DG”) for Enterprise and Industry has initiated a “Public Consultation on Patents and Standards“, seeking to gather public input on the relationship between the standardization of technical specifications and related intellectual property rights. The comment period is open now through January 31, 2015 . The public consultation seeks comment from any interested party, particularly those having direct experience with standardization involving IPR, patent transfers, patent pools, and patent dispute resolution, and expresses particular interest in comments on the performance of the current framework governing standardization involving patents and how this framework “should evolve to ensure that standardization remains efficient and adapted to the fast-changing economic and technological environment.”

There are eight “key issues” on which feedback is sought followed by more specific questions (see questionnaire), with the eight key issues as follows:

  1. Standardisation involving patents is common in the telecommunication industry and in the consumer electronics industry. Which other fields of standardisation comprise patent-protected technologies or are likely to do so in the future?
  2. A variety of rules and practices govern standardisation involving patents. Which elements of these rules and practices are working well and should be kept and/or expanded? Which elements on the other hand can be improved?
  3. Patent transparency seems particularly important to prevent [sic] achieve efficient licensing and to prevent abusive behaviour. How can patent transparency in standardization be maintained/increased? What specific changes to the patent declaration systems of standard setting organizations would improve transparency regarding standard essential patents at a reasonable cost?
  4. Patents on technologies that are comprised in a standard are sometimes transferred to new owners. What problems arise due to these transfers? What can be done to prevent that such transfers undermine the effectiveness of the rules and practices that govern standardisation involving patents?
  5. Patent pools combine the complementary patents of several patent holders for licensing out under a combined licence. Where and how can patent pools play a positive role in ensuring transparency and an efficient licensing of patents on technologies comprised in standards? What can public authorities and standard setting organizations do to facilitate this role?
  6. Many standard setting organizations require that patents on technologies included in their standards are licensed on “fair”, “reasonable” and “non-discriminatory” (FRAND) terms, without however defining these concepts in detail. What principles and methods do you find useful in order to apply these terms in practice?
  7. In some fields standard essential patents have spurred disputes and litigation. What are the causes and consequences of such disputes? What dispute resolution mechanisms could be used to resolve these patent disputes efficiently?
  8. How can holders of standard essential patents effectively protect themselves against implementers who refuse to pay royalties or unreasonably delay such payment? How can it be ensured that injunctions based on standard essential patents are not used to (a) either exclude companies from implementing a standard or (b) to extract unreasonable, unfair or discriminatory royalties?

The public consultation follows the recent release of a fact-finding study and executive summary thereof that was commissioned by the DG for Enterprise and Industry in 2013 to analyze the rules and practices developed to ensure efficient licensing of standard-related patents. Drawing upon existing literature, practitioner interviews, and qualitative data surrounding SEP disclosures, the study focuses on standardization and licensing practices across the telecommunications, consumer electronics, automotive, and electricity industries in which adopted standards often incorporate patented technologies. In addition to providing an overview of IPR policies and licensing practice among SSOs in these industries, the study addresses various barriers to efficient licensing frameworks — “patent ambushes and submarining, hold-up and reverse hold-up, categorical discrimination against new entrants and unsolicited bundling of SEPs with other patents” — and provides fifteen specific suggestions for improving the current systems, including the following:

  • Improving the patent declaration system to target lack-of-transparency issues (e.g., update at key events, limit blanket disclosures, notice transfer of ownership, SSO database of licenses);
  • Promoting patent pools for licensing bundles of SEPs;
  • Providing efficient dispute resolution mechanisms (e.g., arbitration, mediation, mini-trials and incentives for using them);
  • Clarifying FRAND royalty rates (e.g., economic value, ex ante value) and royalty bases (e.g., final product or component);
  • Strengthening SSO rules that bind subsequent SEP owners to adopt their predecessors’ FRAND obligations or binding commitment to patent itself; and
  • Improving guidance to standards-adopters regarding the inclusion of patented technologies to avoid over-inclusion and complexity of standard

Interested stakeholders are invited to submit comments via a questionnaire available at the DG for Enterprise and Industry’s website. The public consultation is open now through January 31, 2015.

Upcoming FRAND Obligations Seminar/Webcast Oct. 30

Posted in Webinar

This coming Thursday, October 30, 2014, Law Seminars International will be hosting in Seattle (and over webcast) a one-day seminar on FRAND Obligations from 8:30 am to 5pm Pacific.  Here is a link to the program: FRAND Obligations.  Topics to be discussed include the following, including a topic presented by our own David Long:

  • When FRAND Obligations Arise: Are You Bound by FRAND?  What is Covered and When is It Covered?
  • Complying with FRAND Obligations: Guidance from Recent Cases for Setting FRAND Terms
  • Economic Analysis for FRAND
  • International Approaches to FRAND Issues and How They Affect Strategies for Companies in the U.S.
  • Enforcement: Litigation Strategies Including Choice of Forum and Remedies
  • Adapting Your Playbook to Fit the Circumstances


Jury verdict: Apple does not infringe GPNE’s alleged standard essential patents

Posted in District Courts, Jury verdicts

A California federal jury handed Apple a substantial victory over patent-plaintiff GPNE yesterday afternoon, finding Apple’s iPhone and iPad products do not infringe three GPNE patents alleged to be essential to GPRS and LTE standards. After less than one day of deliberations following a two-week trial, the jury issued a verdict form finding that none of Apple’s products infringed the asserted patents and awarding no amount of the $94 million in damages sought by GPNE. The jury did not deliver a complete landslide victory to Apple, finding the tech-giant failed to prove the asserted patent claims to be invalid.

This case first appeared on our radar after GPNE submitted an expert report on damages opining that the asserted patents should be afforded a royalty rate greater than what was warranted by the technical value of the patent based on the “hold-up” value the patent. Based on the opinion of GPNE’s technical expert that the asserted patents were essential to the GPRS and LTE communication standards, GPNE’s damages expert argued that because the patents are not subject to any RAND-obligation, the alleged standard-essential patents demand a higher royalty rate higher than the particular patented technology itself warranted. As discussed in our April 23, 2014 post, Judge Koh excluded the expert’s testimony without prejudice, allowing GPNE to submit an amended expert report on damages. GPNE’s damages expert submitted a subsequent report providing additional support for the royalty calculation and was permitted to present testimony on both reports at trial.


Join us Oct. 23 for AIPLA Annual Meeting program on litigating standard essential patents

Posted in International Trade Commission, Litigation

If you are attending the AIPLA Annual Meeting in Washington, DC this week, please join us at an educational CLE provided by the Standards & Open Source Committee on “Practical Considerations in Litigating Standard Essential Patents” on Thursday, Oct. 23 at 3:30 pm.  Our own David Long will be moderating the one-hour panel discussion with Judge Holderman of the U.S. District Court for N.D. Ill. and Judge Essex of the U.S. International Trade Commission.

You may recall that Judge Holderman presides over the Innovatio litigation where he wrote the second decision on how to calculate a FRAND royalty (see our Oct. 3, 2013 post) and he currently presides over a case contemplating the enforceability of a patent following a jury finding that the patent owner breached its RAND commitment (see our July 24, 2014 post).  Similarly, Judge Essex has presided over SEP cases in the ITC, including a recent decision that found a prospective licensee’s patent hold-out actions barred reliance on a FRAND defense (see our July 2, 2014 post).

During our one hour program, we will touch on several practical issues that arise in litigating standard essential patents in district court or the ITC,  including issues that arise from (1) determining a reasonable and non-discriminatory royalty (F/RAND), (2) when to determine such a royalty (e.g., reverse-bifurcation in district court and which phase in ITC), (3) the specificity required to plead F/RAND defense, (4) establishing whether patent “hold-up” or “hold-out” has occurred, (5) availability of damages and equitable relief, (6) who decides RAND or breach of RAND obligation (judge or jury), or (7) whether and when to determine if a patent is essential to a standard or infringed.

You will find more information about AIPLA’s Annual Meeting at their website.  Note that the preliminary brochure erroneously says 120 minutes of CLE are requested for this program; this will be a 60 minute program followed by a meeting of our Standards & Open Source Committee.  We encourage you to stay for that meeting, where you can discuss standard essential patents with the enthusiasm that strangers on the subway morning commute just don’t seem to appreciate.

Patent Case: Federal Circuit provides guidance on damages that eschews use of Nash Bargaining Solution (Virnetx v. Cisco)

Posted in Appeals, Litigation, Patent Alerts

Yesterday, in Virnetx, Inc. v. Cisco Systems, No. 2013-1489, the Federal Circuit ruled that an expert’s damages testimony was not admissible.  The court’s ruling provides guidance on underlying circumstances required to establish a royalty base and a royalty rate as well as questions the viability of using the Nash Bargaining Solution’s 50/50 split of profits between the patent owner and infringer  as a starting point to establish a reasonable royalty.


The patents concern technology for providing security over networks, such as the Internet.  Patent owner VirnetX accused Apple of infringing two patents based on the “FaceTime” feature provided on Apple’s iPhone, iPod, iPad and Mac computers.  VirnetX accused Apple of infringing two other patents based on its “VPN On Demand” feature in the iPhone, iPad and iPod Touch.  A jury returned a verdict that all asserted claims were valid and infringed, and awarded about $368 million reasonable royalty damages.

During the trial, the patent owner’s damages expert presented three reasonable royalty theories.

  1. First Theory.  His first theory applied a 1% royalty to the lowest sale price of each accused device to arrive at $708 million royalty.  The 1% amount was based on the patent owner’s “policy of seeking to license its patents for at least 1-2% of the entire value of products sold” as well as allegedly comparable licenses.
  2. Second Theory.  His second theory was applied to FaceTime products using the Nash Bargaining Solution to start at a 50/50 split of profits between the patent owner and accused infringer and then using factors to modify that approach to give the patent owner 45% of the profit.  This led to a $588 million royalty.
  3. Third Theory.  His third theory also applied the Nash Bargaining Solution against FaceTime products, but claimed that FaceTime “drove sales” of Apple’s iOS products based on a customer survey asserting that 18% of those sales would not have occurred without the addition of FaceTime to the device.  Using the same Nash 50/50 split of profits starting point, the expert attributed 45% of the profits to the patent owner yielding $5.13 per unit royalty that totaled $606 million royalty.


The Federal Circuit started by explaining that, “[n]o matter what the form of the royalty, a patentee must take care to seek only those damages attributable to the infringing features.”  The court instructed that apportionment generally applied for claims drawn to an individual component of a multi-component product:

Thus, when claims are drawn to an individual component of a multi-component product, it is the exception, not the rule, that damages may be based upon the value of the multi-component product.  Indeed, we recently reaffirmed that “[a] patentee may assess damages based on the entire market value of the accused product only where the patented feature creates the basis for customer demand or substantially creates the value of the component parts.”  In the absence of such a showing, principles of apportionment apply.

These strict requirements limiting the entire market value exception ensure that a reasonably royalty “does not overreach and encompass components not covered by the patent.”  Thus, “[i]t is not enough to merely show that the [patented feature] is viewed as valuable, important, or even essential to the use of the [overall product].”  Instead, this court has consistently held that “a reasonable royalty analysis requires a court to … carefully tie proof of damages to the claimed invention’s footprint in the market place.”  Additionally, we have also cautioned against reliance on the entire market value of the accused products because it “cannot help but skew the damages horizon from the jury, regardless of the contribution of the patented component to this revenue.”

Jury Instructions on Entire Unit as Royalty Base.  In this case, the Federal Circuit took issue with the jury instruction that, “[i]n determining a royalty base, you should not use the value of the entire apparatus or product unless either: … (2) the product in question constitutes the smallest saleable unit containing the patented feature.”  This instruction was wrong because it “mistakenly suggests that when the smallest salable unit is used as the royalty base, there is necessarily no further constraint on the selection of the base.”  The smallest salable patent-practicing unit is a “step toward meeting the requirement of apportionment”, but more apportioning is required if such a unit is a multi-component product:

Where the smallest salable unit is, in fact, a multi-component product containing several non-infringing features with no relation to the patented feature (as [patent owner] VirnetX claims it was here), the patentee must do more to estimate what portion of the value of that product is attributable to the patented technology.

Expert’s First Approach.  The Federal Circuit agreed that the patent owner’s expert’s testimony should have been excluded because it “relied on the entire market value of Apple’s products without demonstrating that the patented features drove the demand for those products.”  In this case, the expert “did not even attempt to substract any other unpatented elements from the base, which therefore included various features indisputably not claimed by VirnetX, e.g., touchscreen, camera, processor, speaker, and microphone, to name but a few.”  Where the patented feature does not drive demand for the product, apportionment is required regardless whether the patented feature is “viewed as valuable, important, or even essential,” the Federal Circuit stating:

[A] patentee must be reasonable (though may be approximate) when seeking to identify a patent-practicing unit, tangible or intangible, with a close relation to the patented feature.  In the end, [patent owner] VirnetX should have identified a patent-practicing feature with a sufficiently close relation to the claimed functionality.  The law requires patentees to apportion the royalty down to a reasonable estimate of the value of its claimed technology, or else establish that its patented technology drove demand for the entire product.  VirnetX did neither.

The expert’s testimony should have been excluded here, because he “did not even try to link demand for the accused device to the patented feature, and failed to apportion value between the patented features and the vast number of non-patented features contained in the accused products.”

The Federal Circuit, however, did not find error in admitting the 1% royalty rate portion of the expert’s testimony based on comparable licenses.  In this case, four of the alleged comparable licenses related to the actual patents-in-suit, the others were drawn to related technology and “all of the other differences that Apple complains of were presented to the jury”:

[T]hough there were undoubtedly differences between the licenses at issue and the circumstances of the hypothetical negotiation, “[t]he jury was entitled to hear the expert testimony and decide for itself what to accept or reject.”

Expert’s Nash Bargaining Solution Theories.  The Federal Circuit agreed that the expert’s using the Nash Bargaining Solution 50/50 split as a starting point was akin to the rejected “25 percent rule of thumb” and could not be relied upon “without sufficiently establishing that the premises of the theorem actually apply to the facts of the case at hand”:

The Nash theorem arrives at a result that follows from a certain set of premises.  It itself asserts nothing about what situations in the real world fit those premises.  Anyone seeking to invoke the theorem as applicable to a particular situation must establish that fit, because the 50/50 profit-split result is proven by the theorem only on those premises.  [Patent owner's expert] did not do so.

The key problem here was starting with the 50/50 split with no basis to do so in this case and then trying to adjust it based on the circumstances of the case, which high starting point could skew a jury’s verdict:

[E]ven if an expert could identify all of the factors that would cause negotiating parties to deviate from the 50/50 baseline in a particular case, the use of this methodology would nevertheless run the significant risk of inappropriately skewing the jury’s verdict.  This same concern underlies our rule that a patentee may not balance out an unreasonably high royalty base simply by asserting a low enough royalty rate. … [H]ere, the use of a 50/50 starting point–itself unjustified by evidence about the particular facts–provides a baseline from which juries might hesitate to stray, even if the evidence supported a radically different split.

In sum, the expert’s failure to first establish the required premises of the Nash Bargaining Solution are met in this case to justify starting with a 50/50 split rendered that testimony inadmissible even though the expert attempted to adjust that 50/50 split it started with based on the circumstances of the case.

LSI ordered to produce RAND licensing documents from Realtek trial in CSIRO case

Posted in Court Orders, District Courts
Last week, Magistrate Judge Grewal granted a motion to compel certain RAND licensing documents from LSI, who was objecting to a third-party subpoena issued by Realtek in an ongoing patent infringement action filed by CSIRO. Ruling against LSI, the court found that documents used in the Realtek–LSI litigation are relevant to Realtek’s defense that CSIRO failed to comply with its obligation to license the patent on reasonable and non-discriminatory terms. By way of background, CSIRO filed the instant action in the Eastern District of Texas in August 2012, alleging Realtek — along with Barnes & Noble, Nokia, Samsung,  Texas Instruments, and a number of other defendants — infringed a patent relating to the IEEE 802.11 wireless local area network standard. Realtek issued a third-party subpoena to LSI in April 2014, requiring LSI to produce all documents related to its 802.11 RAND patent licensing obligations and the calculation of a RAND patent royalty that were relied on or referenced in its own patent dispute with Realtek (as discussed in our prior posts, LSI was found to have breached its contract with the IEEE to license two 802.11 standard essential patents to Realtek). LSI opposed Realtek’s request, arguing that the documents were not relevant to the determination of a reasonable royalty rate because the patent royalties discussed in the Realtek–LSI dispute were directed to a different portion of the 802.11 standard and involved a different set of patents than was at issue in the CSIRO case. Considering whether the LSI documents sought by Realtek were relevant to the determination of a royalty rate,  Magistrate Judge Grewal ruled that the requests were reasonably calculated to lead to the discovery of admissible evidence under Federal Rule 26(b):
Two houses on the same block may have very different features, and yet a real estate appraiser’s report will usually consider both. The patents at issue here were all asserted against Realtek and were all declared essential to the 802.11 standard. In addition, the patents are all claimed to be subject to an identical RAND commitment. In short, while the factual differences between the LSI and CSIRO cases may dampen the probative value of the evidence, the discoverability of the evidence cannot be disputed.

InterDigital Update: ITC issues public version of opinion finding no violation in Inv. No. 337-TA-868

Posted in International Trade Commission, Litigation

The International Trade Commission issued the public version of its opinion in Inv. No. 337-868, finding no violation by either Nokia or ZTE and terminating the investigation in its entirety. On review, the Commission neither affirmed nor rejected ALJ Essex’s FRAND analysis, which criticized respondents who had not actively sought a license from InterDigitial yet raised SSO-related affirmative defenses.

As you may recall from our July 2, 2014 post, ALJ Essex issued a Final Initial Determination following a February 2014 evidentiary hearing, finding the accused products did not infringe InterDigital’s asserted patents, the domestic industry requirement had not been met, only one claim (claim 16 of U.S. Patent No. 7,941,151) was invalid as indefinite, and that respondents did not demonstrate InterDigital had violated any FRAND obligation. The Final Initial Determination also included a lengthy FRAND analysis, which was highly critical of respondents that assert FRAND defenses without having first availed themselves of SSO procedures for resolving situations where licenses are not available.

Respondents petitioned the ITC to review, inter alia, ALJ Essex’s FRAND analysis. Respondents argued that under a proper FRAND analysis, the asserted patents should have been found unenforceable under the doctrines of equitable estoppel, unclean hands, and patent misuse. As previewed in the ITC’s August 14 notice, the Commission took no position on the FRAND issues raised by the respondents, finding it more efficient to decide those issues, if at all, following an appeal of a related decision:

Decision as to those issues would require further proceedings, and potentially additional factfinding. The Commission has decided that, on balance, the added delay, burdens, and expenses that would be incurred by the parties and the Commission in resolving these issues are unjustified here given their non-dispositive nature, especially in view of the existence of other pending proceedings regarding the asserted patents and patents closely related to them.  In addition, the Commission finds that it is in the interest of the efficient use of administrative, judicial, and private resources for the domestic industry and FRAND issues to be decided, if at  all, subsequent to final disposition of the pending appeal in InterDigital Communications LLC v. ITC, No. 2014-1176 (Fed. Cir.), which involves many of the same parties and issues with regard to related patents.