2013

While much of the focus on standard-essential patent litigation issues has been focused on Microsoft-Motorola, Apple-Samsung, and the InterDigital cases, these are far from the only cases dealing with SEP issues.  District courts and the ITC continue to develop case law on SEP and RAND-related issues.

In an order issued yesterday in Realtek Semiconductor v. LSI (No. 12-cv-03451, N.D. Cal.), Judge Ronald Whyte of the Northern District of California issued a preliminary injunction that purports to prevent LSI from enforcing an ITC exclusion order until LSI has complied with its IEEE-related RAND obligations.  According to the order [LINK], this means that LSI must wait to enforce any exclusion order until: (1) the court has determined an appropriate RAND rate for LSI’s 802.11-essential patents, (2) LSI offers a license to Realtek at that rate; and (3) Realtek refuses to enter into a license at the judicially-determined RAND rate (which, as the court states, “Realtek indicates it will not do.).

With the ITC’s decision in the 337-TA-794 investigation (on the propriety of exclusion orders for FRAND-pledged essential patents) involving Samsung and Apple due by the end of the month, this is certainly an interesting development.  But given the way the ITC operates, we’re not so sure that the court’s order is going to have the desired effect.  Let’s take a look at Judge Whyte’s order, shall we?


Continue Reading District court judge issues order enjoining enforcement of ITC exclusion order pending judicial RAND determination — but does it matter? (Realtek v. LSI/Agere)

A couple months ago, Microsoft asked Judge James L. Robart to confirm that the second phase of the Microsoft-Motorola RAND breach of contract trial — in which the actual breach and damages issues will be addressed — would be tried to Judge Robart himself, and not a jury (a motion that Motorola opposed).  Microsoft…

A few months ago, we took note of a dispute in the Southern District of New York between two foreign makers of Universal Serial Bus (USB) products — Lotes and Hon Hai/Foxconn.  You can read our prior post for more background on the dispute, but in summary, Lotes accused Foxconn of reneging on licensing commitments…

Earlier this week, we noted that Apple directed the Federal Circuit’s attention to Judge Robart’s Microsoft-Motorola decision in Apple-Motorola “Posner Appeal.”  (For a recap of the parties’ FRAND-related appellate briefing in the case thus far, see our prior posts on Motorola’s opening brief and Apple’s responsive brief).  Yesterday, Motorola’s reply brief became publicly available.

[2013.05.13 Motorola Reply Brief (12-1548)]

In its brief — summarized after the jump — Motorola reiterates its prior arguments to the Federal Circuit that Judge Posner erred in concluding that Motorola could not prove entitlement to either monetary or injunctive relief as compensation for Apple’s alleged infringement.  But Motorola does not just repeat the same arguments it made in its opening brief — it also attempts to address arguments raised by Apple concerning patent hold-up and the effect of the January 2013 FTC-Google consent decree.


Continue Reading Motorola tells Federal Circuit that its prior SEP licenses were not the result of hold-up, and that injunctions must be available against “intransigent infringers” of FRAND patents

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…

Last Friday, May 10, 2013, in CLS Bank v. Alice Corp., No. 2011-1301, the Federal Circuit (en banc) issued a very divided decision in which a majority of the court affirmed that method, computer-readable medium and system patent claims on a computer-implemented invention were not patent eligible under § 101, but there was no majority consensus on the rationale as to why those claims were not patentable subject matter.  As a result, this en banc decision has no precedential value beyond the specific determination of patent eligibility for the particular claims at issue.  The fractured nature of the decision—and even intimations by judges on the court—indicate that this case may be primed for Supreme Court review.

This 135-page decision has seven separate opinions, summarized below.  A few top-level points may be gleaned from them:


Continue Reading Patent Alert: En banc Federal Circuit indecisive on patent eligibility of computer-implemented inventions (CLS v. Alice)

As many of you are aware, a non-practicing entity named Innovatio IP Ventures has been engaged in a widespread licensing and litigation campaign over WiFi-related patents that were formerly owned by Broadcom.  As a result, Innovatio has become embroiled in litigation with several suppliers of WiFi-compliant devices (Cisco, Motorola Solutions, Netgear) in the Northern District of Illinois.  A few weeks ago, we noted that a debate had arisen in that case over the “essentiality” of certain asserted patents.  The presiding judge ordered briefing on the issue, and Innovatio filed its “Essentiality Brief” a couple weeks ago — asserting that not all of its asserted claims were essential or covered by IEEE RAND obligations.  This past Friday, the WiFi Suppliers filed their response to Innovatio’s Essentiality Brief.  The WiFi Suppliers accuse Innovatio of misconstruing both the IEEE Patent Policy and the relevant RAND licensing Letters of Assurance in an attempt to avoid its RAND obligations.

[2013.05.10 Defendants’ Brief re Essentiality of Patent Claims]

We alluded in our last post on this matter that issues of patent “essentiality” — and therefore, the scope of corresponding RAND obligations — are likely to become a more common issue in standard-essential patent litigation.  The WiFi Suppliers’ responsive brief demonstrates why.Continue Reading Scope of IEEE RAND obligations a hotly-contested issue in Innovatio IP Ventures WiFi patent litigation

Yesterday Entropic Communications, a designer and maker of semiconductors and “system-on-a-chip” (SoC) technology, filed a patent infringement action against fellow SoC maker ViXS Systems in district court in the Southern District of California.  Entropic alleges that ViXS infringes two patents that are essential to the home entertainment networking standards developed and promulgated by the Multimedia Over Coax Alliance, also known as the MoCA family of standards or MoCa specifications (MoCA is a trade group, not a recognized SSO or SDO, so some do not like to refer to the MoCA specifications as “standards”).  The MoCA specifications have been widely adopted and are marketed as “the universal standards for home entertainment networking,” allowing users to stream high-definition content at high speeds throughout a house using their existing coax network (e.g., for use in multi-room DVRs, gaming, etc.).

[Entropic v. ViXS Complaint]Continue Reading Entropic files patent infringement complaint against ViXS Systems over MoCA-essential home entertainment networking patents