As many commentators have noted, Judge Robart’s Microsoft-Motorola decision may provide a roadmap to courts and parties in other FRAND disputes. Not surprisingly, Apple recently brought the decision to the attention of both the Federal Circuit (in the appeal of Judge Posner’s decision to dismiss Motorola’s SEP-related claim for damages and injunctive relief) and the U.S. International Trade Commission (in Samsung’s case against Apple, in which the Commission is set to issue its Final Determination by May 31). Here are Apple’s filings:
- [2013.05.10 Apple Citation of Supplemental Authority (Fed. Cir. Appeal No. 12-1548)]
- [337-TA-794 Apple Notice of Supplemental Authority (ITC)]
After the jump, a brief synopsis of how Apple characterizes Judge Robart’s decision as relevant to these proceedings.
ITC Inv. No. 337-TA-794 (Samsung-Apple)
Apple argues to the ITC that the low RAND royalties found by Judge Robart, as well as his analytical framework, are consistent with the approaches urged by Apple, not Samsung. Apple furthermore claims that Judge Robart’s decision is evidence that district courts — not the ITC — are the proper forum for making RAND determinations.
Apple also points the Commission to the European Commission’s recent determination to issue a Statement of Objections to Motorola regarding the potential misuse of standard-essential patents, based on Motorola seeking and enforcing an injunction in Germany against Apple. Apple asserts that the EC determination, along with the Microsoft-Motorola decision, shows that “it would be against the public interest to issue an exclusionary remedy to Samsung on declared-essential patents” in Inv. No. 337-TA-794.
By May 31, we should find out whether the Commission agrees.
Federal Circuit Appeal No. 12-1548 (Apple-Motorola)
Apple argues in its notice to the Federal Circuit that Judge Robart’s opinion and methodology is consistent with several Apple arguments. Apple’s arguments, and the corresponding Judge Robart statements it cited as supports its arguments, are paraphrased below:
|Apple argues that the district court properly held that the “purpose of the FRAND requirements is to confine the patentee’s royalty demand to the value conferred by the patent itself.||Judge Robart states that “it is critical to consider the contribution of the patented technology apart from the value of the patent as the result of its incorporation into the standard, the latter of which would improperly reward the [declared Standard Essential Patent (“SEP”)] owner for the value of the standard itself. Rewarding the SEP owner with any of the value of the standard itself would constitute hold-up value and be contrary to the purpose behind the RAND commitment.”|
|Apple argues that to value an SEP, the district court properly focused on the cost to obtain a license “just before the patented invention was declared essential.”||Judge Robart states that “parties to a hypothetical negotiation under a RAND commitment would consider alternatives that could have been written into the standard instead of the patented technology.”Also, Judge Robart states that licenses negotiated “under the threat of a potential infringement lawsuit” are not “reliable indicator[s] of a RAND royalty rate.”|
|Apple argues that Motorola provided no evidence that it was entitled to a large royalty award for its “trivial inventions.”||Judge Robart states that a proper FRAND rate must take into account that Motorola’s SEPs “constitute only a sliver of the overall technology incorporated into” the relevant standards.|
While Apple did not file a similar notice of supplemental authority in Fed. Cir. Appeal No. 13-1150 (the appeal of Judge Crabb’s dismissal of Apple’s FRAND claims against Motorola), this is because the parties have not yet begun their appellate briefing. But Apple did file an unopposed motion for extension of time to file its opening brief in that appeal, seeking to push its due date from May 24 to July 23. Whenever its brief gets filed, though, you can be sure that Judge Robart’s decision will be heavily cited.