In a post yesterday, we discussed Nokia’s amicus brief submitted “in support of neither party” in the Apple-Motorola FRAND Federal Circuit appeal (Judge Posner edition). The amicus brief recently filed by BlackBerry (formerly Research In Motion) is now public, and it is very similar to Nokia’s — at least when it comes to the issue of the availability of injunctive relief. While not expressly supporting Motorola, BlackBerry echoes Motorola’s (as well as Nokia’s) argument that injunction relief should not be categorically precluded for FRAND-encumbered standard-essential patents.
Coincidentally, BlackBerry also now finds itself on the receiving end of a new patent infringement complaint from Canadian non-practicing entity Wi-LAN, which is based on BlackBerry’s alleged infringement of a patent that Wi-LAN claims is essential to the ETSI 3GPP Long-Term Evolution (LTE) telecommunications standard.
BlackBerry’s Amicus Brief
Just as it has argued in prior submissions to agencies such as the Federal Trade Commission and the U.S. International Trade Commission, BlackBerry asserts here that a categorical rule against injunctions for FRAND-encumbered standard-essential patents is wrong — both as a matter of policy and as a matter of violating Supreme Court precedent. BlackBerry alleges that industry participants have “never understood FRAND to absolutely preclude a patent holder from seeking injunctions.”
Once again, the concerns raised by Motorola (as well as Qualcomm, Nokia, and others) come to the forefront in BlackBerry’s brief. It argues that injunctive relief for FRAND SEPs should be examined on a case-by-case basis, with the courts applying the eBay factors and analyzing the conduct of both the patent owner and the potential licensee. It also asserts that precluding injunctive relief will reduce the incentives for implementers to take licenses, as well as for patent holders to participate in standard-setting activities.
One difference from Nokia’s brief, however, is that RIM does not address the damages portion of Judge Posner’s opinion.
Wi-LAN’s LTE infringement complaint
In its new infringement suit (filed in the Southern District of Florida, where another suit between the parties over Bluetooth-related patents is pending) Wi-LAN accuses BlackBerry’s LTE-compliant products of infringing U.S. Patent No. 8,274,991, titled “Protocol for allocating upstream slots over a link in a point-to-multipoint communication system.” According to Wi-LAN, BlackBerry infringes this patent by making/using/selling/importing products “that comply with and execute the protocol for making uplink bandwidth requests defined in the 3GPP LTE technical standard” (as well as inducing others to infringe or contributing to their infringement). It seems clear that Wi-LAN considers this patent to be essential to the LTE standard.
To compensate for the alleged infringement, Wi-LAN is seeking both damages, as well preliminary and permanent injunctions against BlackBerry. (Given BlackBerry’s amicus brief, the timing of an SEP suit where an injunction is sought is quite ironic.) According to the USPTO assignment records for the ‘991 patent, the application that led to this patent was originally owned by Aperto Networks, but was assigned to Wi-LAN in 2010. It’s unclear, however, if there are any FRAND obligations associated with this patent (but you can be sure this is something that BlackBerry and its attorneys will be investigating).