This past Friday, Judge Richard Andrews of the District Court of Delaware held a hearing on InterDigital’s motions to dismiss several FRAND-related counterclaims in three district court cases InterDigital brought against Huawei, ZTE, and Nokia over 4G-essential patents.  For a brief refresher on the issues raised in InterDigital’s motions to dismiss — which have been pending for months — you can check out our prior posts:

After the July 12 oral argument, the court issued a written order memorializing its decision. The court granted InterDigital’s motion in part, choosing to dismiss some of the defendants’ FRAND-related counterclaims (although granting leave to amend and re-plead some of the claims).

[InterDigital Order on Motion to Dismiss]

Here’s a brief breakdown of the specific counterclaims that are affected by the court’s order:

Case Dismissed w/leave to amend Dismissed w/out leave to amend
13-cv-00008(Huawei) I (breach of contract)II (breach of contract – third party)

V (declaratory judgment re: FRAND offer)

VI (declaratory judgment re: FRAND determination)

 III (equitable estoppel)IV (waiver of right to enjoin)
13-cv-00009(ZTE) I (breach of contract)II (breach of contract – third party)

V (declaratory judgment re: FRAND offer)

VI (declaratory judgment re: FRAND determination)

 III (equitable estoppel)IV (waiver of right to enjoin)
13-cv-00010(Nokia) I (breach of contract, specific performance re: no injunctive relief)II (breach of contract, damages)

III (declaratory judgment re: FRAND determination)

V (breach of implied contract)

VIII (declaratory judgment re: FRAND offer)

 IV (promissory estoppel)VI (CA unfair competition law)

IX (implied license)

X (equitable estoppel)

Note that the court’s decision on the waiver of right to enjoin/seek injunctive relief is more consistent with the ITC’s recent Samsung-Apple decision than the decisions in the Microsoft-Motorola or Realtek-LSI cases, although it’s generally found that “waiver” is not by itself an affirmative claim.  We will have to wait to see if and when the defendants decide to re-plead some of these counterclaims, or whether they’ll rely on FRAND-related affirmative defenses in the parallel ITC case.