2013

Last week, it was reported that Apple won a decision against Samsung in Tokyo, Japan, where a judge ruled that Samsung failed to negotiate in good faith with Apple before bringing patent infringement claims over its standard-essential patents.  Until today, the court’s actual ruling was not publicly available.  But yesterday, Apple submitted a “Notice of New Facts” and a redacted copy of a translation of the Tokyo court’s decision to the U.S. International Trade Commission in ITC Inv. No. 337-TA-794, and this submission hit the ITC’s docket this morning.

Recall that the -794 case is the ITC’s investigation over Apple’s alleged infringement of several Samsung patents (including two 3G cellular standard-essential patents), and that a Final Determination by the Commission is due no later than this Thursday, March 7 — and that the issue of the propriety of issuing an exclusion order for standard-essential patent infringement has been hotly debated here.  Apple argues that the Tokyo court’s decision and factual findings “underscore that it would be against the public interest to issue an exclusionary remedy to Samsung on declared-essential patents.”Continue Reading Apple cites recent Japanese court ruling as evidence against standard-essential patent exclusion order (ITC Inv. No. 337-TA-794)

ShieldThere’s been much ado in the patent community over the past week over the re-introduction of H.R. 845, the Saving High-Tech Innovators from Egregious Legal Disputes Act of 2013 — more commonly known as the SHIELD Act.  This legislation, co-sponsored by Rep. Peter DeFazio (D-OR) and Rep. Jason Chaffetz (R-UT), seeks to “protect American tech companies from frivolous patent lawsuits that cost jobs and resources” by  implementing a “loser pays” fee-shifting paradigm for patent infringement cases brought by certain types of non-practicing entities.  (A prior version introduced last year, H.R. 6245, was much more limited in its implementation of fee-shifting.)

While this is a bit off-topic for our blog, we thought this proposed legislation is sufficiently important to our readers that we’d do a brief post on it — especially given the penchant by some NPEs to assert standard-essential patents.  The legislation (at least as it’s currently drafted) has raised a lot of questions and issues and has generated a lot of commentary (both pro and con) from the business and legal communities.  After the jump, we’ll run through a quick summary of the provisions of the SHIELD Act, some first impressions about questions it may raise, and provide some links to a variety of others’ views on the proposed law.Continue Reading The new (and improved?) SHIELD Act

A couple of weeks ago, we noted a peculiar minute order emanating from Judge James L. Robart’s courtroom in the Microsoft-Motorola RAND case.  Based on his review of Google’s AVC/H.264 standard-essential patent pool license agreement with MPEG LA, Judge Robart asked the parties to submit short letter briefs addressing two questions regarding the relevance of the Enterprise License provision (Section 3.1.7) to any grantback license that Motorola (as a subsidiary of Google) might owe to Microsoft.

Late Friday, the parties submitted their respective answers to the court’s questions (Microsoft’s / Motorola’s).  The parties’ answers and arguments show just how millions of dollars in royalties could turn on the interpretation of just a couple of short phrases in the MPEG LA agreement.  After the jump, we’ll provide a short summary of both Microsoft’s and Motorola’s positions.  Essentially, though, the parties’ arguments boil down to this — Was the MPEG LA agreement’s grantback provision designed to extend to all affiliates of a given licensee, whether those affiliates receive any benefits under the agreement or not?Continue Reading Microsoft, Motorola submit final arguments to Washington court on the relevance and effects of Google-MPEG LA AVC/H.264 agreement to a Microsoft-Motorola RAND license

Earlier this week we noted that Huawei and ZTE have asked the ITC to stay its investigation into InterDigital’s complaint of 3G/4G standard-essential patent infringement.  This was done in part because Huawei and ZTE have requested that the District Court of Delaware to expedite a determination of a FRAND rate for InterDigital’s patents.  Yesterday, InterDigital filed virtually identical opposition briefs in both cases (Opp. to Huawei / Opp. to ZTE), in which it urged the court to deny the motions — arguing that it is improper for Huawei and ZTE “to seek a purely hypothetical and advisory opinion in the form of an expedited ‘FRAND rate’ determination” while still maintaining an ability to refuse to pay in the event the patents are later found invalid or non-essential/not infringed.  This is an interesting issue surrounding FRAND licensing that has been the topic of much debate lately.
Continue Reading InterDigital calls Huawei/ZTE’s requests for expedited FRAND determinations “impractical” and “improper”

On March 5, 2013 at 2:00pm, the Intellectual Property Owners Association is holding a webinar to discuss the potential implications that the FTC-Google consent decree may have on the world of standard-essential patents.  The webinar is taking place as part of of IPO’s weekly IP Chat Channel series.  David W. Long, a member of Dow Lohnes’s Litigation group and a co-author of The Essential Patent Blog, will be one of the webinar presenters.  Details on the webinar and information on how to register for it is after the jump.
Continue Reading Upcoming IPO webinar on standard-essential patents and FTC-Google consent decree features Dow Lohnes’s David Long

A quick update for those interested in the Apple-Motorola Federal Circuit FRAND appeal:

Last week, the U.S. Supreme Court issued its opinion in Gunn v. Minton, where the Court determined that a plaintiff’s patent litigation-related state law malpractice claim did not “arise under” the federal patent laws and did not create federal jurisdiction under…

FTCYesterday we covered several public comments submitted to the FTC by various professional organizations and trade/industry associations surround the FTC-Google consent decree.  Today, we’re here to tackle the submissions from several large companies that chose to comment on the FTC order.  These companies include Apple, Ericsson, Microsoft, Qualcomm, and Research in Motion.
Continue Reading FTC-Google public comments round-up #2: Tech companies have their say

  • ShieldIn a press conference held today, Rep. Peter DeFazio (D-OR) and Rep. Jason Chaffetz (R-UT) introduced an updated version of the SHIELD (Saving High-Tech Innovators from Egregious Legal Disputes) Act.  The aim of this legislation is to decrease the amount of frivolous NPE patent litigation by increasing financial burdens on NPEs.  More on this legislation

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FTCWe’ve finally sifted through the many public comments submitted in response to the FTC-Google consent decree and proposed order.  As we noted Monday, over two dozen individuals, companies, and organizations representing a wide range of interests submitted comments.  Later this week, we will do a post featuring the details of some of the post submitted by interested companies, such as Apple, Ericsson, Microsoft, Qualcomm, and Research In Motion.  But today, we are going to focus on the comments that have been submitted by other types of organizations, which include a veritable alphabet soup of interest groups, professional organizations, and industry or trade associations.
Continue Reading FTC-Google public comments round-up #1: Interest groups and industry/professional organizations weigh in

ITC LogoYesterday the U.S. International Trade Commission announced that it has instituted a Section 337 investigation titled Certain Wireless Communications Base Stations and Components Thereof, Inv. No. 337-TA-871.  This investigation is based on a complaint filed on January 24, 2013 by Adaptix, Inc. (a subsidiary of noted publicly-traded non-practicing entity Acacia Research) against Ericsson.  The…