When Judge Robart issued his summary judgment order last week in the Microsoft-Motorola case, we noted that he ordered the parties to submit further briefing on Microsoft’s allegation that Motorola breached its RAND obligations to Microsoft (at least in part) by failing to offer a RAND license to Microsoft’s WiFi chip supplier, Marvell Semiconductor:

As the court understands it, Microsoft will argue to the jury that Motorola failed to grant a license to Marvell, and if Motorola had granted such a license, Motorola would then be precluded from seeking a license from Microsoft for the SEPs at issue. This argument requires a legal basis. The argument is premised on the notion that, legally, Motorola’s ability to seek a license from Microsoft would be exhausted by granting a license to Marvell. This issue is not explored in the parties’ summary judgment briefing. Thus, the parties may provide three-page letter briefs no later than August 16, 2013, on the legal grounds for Microsoft’s assertion that a Motorola-Marvell license would preclude Motorola from seeking a license from Microsoft. Additionally, no later than August 16, 2013, the parties may propose jury instructions on this issue.

On Friday, the parties submitted letter briefs in response to this order (links below).  As we alluded to in last week’s post, this issue raises some interesting questions on what types of behavior and licensing restrictions are proper during FRAND licensing negotiations — questions that we’ll get into after the jump.

Continue Reading FRAND licensing, chip suppliers, and the interplay of patent exhaustion / defensive suspension clauses

Many district courts around the country have specialized local rules that govern patent litigation, in order to assist the court and the parties to manage the myriad issues that come up in the vast majority of complex patent cases.  Local patent rules often control the schedule and format for the parties’ infringement and invalidity contentions, claim construction proceedings, etc.  The Northern District of California, where France Telecom and Marvell are embroiled in a patent suit over Marvell’s alleged infringement of a digital coding patent, is one such district that uses local patent rules.  In a ruling handed down this past Friday, U.S. Magistrate Judge Nathaniel Cousins found that it was proper for France Telecom to rely on two ETSI 3G cellular standards in formulating its infringement contentions.  This ruling shows that — with some caveats — it is permissible to use an industry standard as a basis for infringement contentions in districts with local patent rules.

[2013.05.013 (D.E. 79) Granting Motion to Compel in Part]

Continue Reading Infringement contentions based on industry standards sufficient to comply with N.D. Cal. local patent rules (France Telecom v. Marvell)