2013

The standard-essential patent battle between InterDigital and Chinese handset makers Huawei and ZTE rages on in the U.S. District Court for the District of Delaware.  Recall that the parties are awaiting an Initial Determination in ITC Inv. No. 337-TA-800, and are also involved in Inv. No. 337-TA-868.  In the companion district court cases to the -868 investigation, Huawei and ZTE attempted to have the Delaware court expedite a determination of FRAND terms for InterDigital’s portfolio, an attempt that was rebuffed by the court.  But now, in motion filed yesterday, InterDigital seeks to have Huawei and ZTE’s FRAND-related claims dismissed altogether.  InterDigital argues that the FRAND counterclaims should have been asserted in an earlier litigation, are not ripe, and merely seek an advisory opinion.  InterDigital also claims that Huawei and ZTE have failed to allege the existence of an enforceable contractual commitment under the applicable law.
Continue Reading InterDigital asks Delaware court to dismiss Huawei, ZTE’s FRAND counterclaims

In recent posts, we covered the briefs submitted by Samsung and Apple and the ITC Staff in response to the U.S. International Trade Commission’s request for additional briefing in Inv. No. 337-TA-794.  We noted that several other parties also submitted responses, offering their views on how an exclusion order in this case might affect the public interest.  These parties include:

Each of these parties warns the ITC that allowing exclusion orders for FRAND-pledged standard-essential patents may have adverse effects on U.S. consumers and the U.S. economy, particularly future standards-setting activity.  A brief summary of these public interest submissions is after the jump.
Continue Reading A final round-up of new public interest submissions in Samsung-Apple ITC case (Inv. No. 337-TA-794)

We recently came across a new paper written by noted scholars Mark Lemley and Carl Shapiro that we thought was worth passing along.  Lemley and Shapiro have written extensively about the interplay between patent issues and standard-setting, including the oft-cited article “Patent Holdup and Royalty Stacking.”  In their new paper, titled “A Simple Approach to Setting Reasonable Royalties for Standard-Essential Patents,” Lemley and Shapiro propose a way to tackle the difficult task of determining the appropriate terms for a FRAND-encumbered standard-essential portfolio (if the parties are unable to agree on terms).

Their solution to this common problem?  Requiring the parties to enter into a binding “baseball-style” arbitration — where each party must propose its final offer, and the arbitrator picks which one is the most reasonable (the arbitrator cannot choose a different number).  In their paper, Lemley and Shapiro describe how their proposed system would work in practice, and claim it would moot many of the FRAND-related disputes ongoing today.
Continue Reading Lemley, Shapiro propose “baseball-style” arbitration as solution to FRAND disputes

ITC LogoLast week, both Apple and Samsung filed their initial submissions in response to the U.S. International Trade Commission’s March 13 order for additional briefing in In the Matter of Certain Electronic Devices, Including Wireless Communication Devices, Portable Music and Data Processing Devices, and Table Computers (Inv. No. 337-TA-794).  In a post last Friday, we discussed the submission by the ITC’s Office of Unfair Import Investigations.  After the jump, we’ll give an overview of the positions set forth in the parties’ respective briefs.  It will not be a surprise to anyone following the smartphone wars or standard-essential patent issues that Apple and Samsung vehemently disagree over nearly everything having to do with the standard-essential patent and FRAND issues in this case.
Continue Reading New ITC briefs filed by Apple, Samsung demonstrate fundamental dispute over standard-essential patents and meaning of FRAND

This past Wednesday, April 3 was the deadline for the parties and the public to submit responses to the U.S. International Trade Commission’s request for additional briefing in Inv. No. 337-TA-794 (Samsung-Apple).  In addition to Apple and Samsung, several other parties submitted responses, including:

In a later post, we will summarize the submissions from Apple, Samsung, and the various third parties.  But in this post we’ll address the brief submitted by the OUII (or ITC “Staff”) — a third party that represents the public interest in many ITC cases (and who, as we recently noted, has taken a keen interest in SEP-related issues of late).

Notably, OUII expresses the view that public interest considerations do not bar the issuance of an exclusion order based on Apple’s alleged infringement of Samsung’s 3G-essential technology.  In OUII’s view, even if Samsung has FRAND obligations with respect to the standard-essential patents at issue, Apple has not carried its burden to show that Samsung violated these obligations.
Continue Reading ITC Staff: Exclusion order is an appropriate remedy for Apple infringement of Samsung SEP

Chrimar Systems (also known as CMS Technologies) is a non-practicing entity that owns patents that it claims are essential to IEEE Power-over-Ethernet technology — amendments 802.3af and 802.3at to the IEEE 802.3 Ethernet standard.  Chrimar has litigated several cases throughout the years based on these patents, including a (now-terminated) ITC case (Inv. No. 337-TA-817).  Chrimar’s website lists several licensees for its Power-over-Ethernet patents, as well.

But now it looks like Chrimar’s standard-essential portfolio just got a little bit smaller.  Yesterday, in Chrimar Systems v. Foundry Networks (now Brocade Communications Systems), the Federal Circuit affirmed a lower court ruling that had invalidated claims 14 and 17 of U.S. Patent No. 5,406,260.  
Continue Reading Chrimar Systems’ Power-over-Ethernet claims found invalid on appeal

Last week we discussed a couple of amicus briefs in the Apple-Motorola Federal Circuit appeal that addressed standard-essential patent issues.  Intel supported Apple’s view that injunctions should generally not be available for FRAND-pledges SEPs, while Qualcomm supported Motorola’s contention that there is no such blanket restriction.  In this post, we’ll address two more briefs, both of which were filed by parties supporting Apple: (1) the Business Software Alliance, which is a trade association of software and hardware technology companies; and (2) a group of law school professors.


Continue Reading More amici support Apple’s opinion of FRAND: Business Software Alliance and law professors give their views

If anyone needed more evidence that the U.S. International Trade Commission is paying a lot of attention to standard-essential patents and FRAND-related issues, they received some yesterday.  The Office of Unfair Import Investigations (OUII), a neutral third party who commonly participates in ITC investigations as a representative of the public interest, notified the ITC…

CAFCEarlier today we summarized the amicus brief filed by Intel in the Apple v. Motorola Federal Circuit appeal, and we noted that a number of other not-yet-publicly-available amicus briefs were also filed with the court.  Today, the amicus brief filed by Qualcomm hit the docket — and out of all of the recent amicus briefs, it’s the only one that was expressly filed in support of Motorola.

As it has consistently argued in the past, Qualcomm — a holder of a significant portfolio of SEPs — argues here that a FRAND commitment does not categorically preclude injunctive relief, and it urges the Federal Circuit to refrain from adopting such a rule.  Qualcomm also argues against the particular methodologies of calculating reasonable royalty damages for both FRAND-pledged essential patents and non-essential patents (e.g., the so-called ex ante or incremental value rules) that certain amici have advocated for.
Continue Reading Qualcomm sides with Motorola on FRAND/SEP issues in Apple v. Motorola Federal Circuit appeal