In a letter sent to the U.S. Patent & Trademark Office late last week, the American Antitrust Institute expressed its approval of the USPTO’s plan to implements rules requiring patent holders to provide more transparency regarding ownership interests in patents and patent applications. The AAI’s letter claims that, among other considerations, these transparency provisions would have positive effect on the licensing of standard-essential patents and in helping companies deal with assertions for patent assertion entities or non-practicing entities.
Continue Reading American Antitrust Institute supports USPTO’s proposal for requiring more patent ownership transparency
Motorola and Apple are currently facing off over patent-related issues in several ongoing judicial proceedings, including multiple appeals before the United States Court of Appeals for the Federal Circuit. One of these Federal Circuit appeals was brought by Apple over Judge Crabb’s dismissal of Apple’s claims that Motorola violated the antitrust laws and breached its contracts with SSOs in conducting its SEP-related licensing and enforcement activities. But on January 25, Motorola filed a motion with the Federal Circuit to dismiss Apple’s appeal (or transfer it to the Seventh Circuit), asserting that the Federal Circuit lacks jurisdiction to hear the case. While at first blush this seems like just a mundane dispute over civil procedure issues, a decision on this motion may have significant consequences for future FRAND-related proceedings.Continue Reading Motorola disputes Federal Circuit’s jurisdiction over Apple’s FRAND-related appeal, argues for dismissal or transfer
While much of the attention over standard-essential patent litigation focuses on disputes taking place in the United States, the U.S. is not the only venue seeing these showdowns. SEP-related issues have also arisen in Australia, in Korea, and in Europe (both in the courts and in European Commission investigations). The courts in Germany — which has recently become a hotbed for patent litigation — have developed a unique procedure for dealing with the assertion of standard essential patents. Named for a 2009 decision by the Federal Supreme Court of Germany, this is commonly known as the “Orange Book” defense or procedure (or sometimes as the dolo agit or good faith defense). In this post, we aim to provide a background of this case and some examples of cases where the Orange Book defense has been invoked.
Continue Reading A RANDom glance abroad: German Patent Courts and the “Orange Book” defense
On Fri., January 25, 2013, in Hall v. Bed Bath & Beyond, No. 2011-1165, the Federal Circuit (Newman, Lourie (dissenting-in-part), and Linn) held that a towel design patent owner properly pled claims of patent infringement, false advertising, misappropriation, and unfair competition. The Court also held that certain inventor statements on whether the towel was covered by his patent did not create liability for false advertising or false marking. This case indicates that the pleading requirements for design and utility patents are fairly similar.
Continue Reading Patent Alert: Federal Circuit Finds No Special Requirements for Pleading Design Patent Infringement
Assertion of standard-essential patents are all the rage at the ITC these days, with an upcoming trial on InterDigital’s claims (Inv. No. 337-TA-800), another recent complaint filed by InterDigital, dueling Ericsson-Samsung complaints, and the highly anticipated Final Determination in ITC Inv. No. 337-TA-794 involving Apple and Samsung due in March. And today, a company named Adaptix — a subsidiary of noted non-practicing entity Acacia Research — threw its hat into the ring, firing off a Section 337 complaint accusing Ericsson’s 4G LTE base stations of infringing U.S. Pat. No. 6,870,808, titled “Channel Allocation in Broadband Orthoganol Frequency-Division Multiple-Access/Space-Division Multiple-Access Networks.” But this might not be your typical standard-essential patent case — it has a couple of twists.
Continue Reading Acacia Research subsidiary Adaptix files new ITC complaint accusing Ericsson of infringing 4G LTE-essential patent
On January 22, 2013, in Soverain Software LLC v. Newegg Inc., No. 2011-1009, the Federal Circuit (Newman, Prost, and Reyna) reversed a decision by the Eastern District of Texas that had upheld the validity of a computer-implemented invention over an obviousness challenge. This case suggests that computer-implemented patents may face increased scrutiny
[UPDATE] Since this post was originally published on January 22, the deadline passed for the parties to submit extrinsic evidence and additional arguments supporting their respective interpretations of the Google-MPEG LA AVC/H.264 license agreement. Microsoft submitted both a brief and a supporting Declaration of Lawrence A. Horn, who is the President and CEO of MPEG LA, LLC. Mr. Horn’s declaration supports Microsoft’s argument (as detailed in our original post below) that the scope of the grant-back under the MPEG LA license agreement extends to all Affiliates of Google, not just to those specifically identified. For its part, Motorola argues that the “scope” language of the MPEG LA agreement remains ambiguous, and that Mr. Horn’s declaration represents inadmissible hearsay because Motorola was unable to cross-examine him.
The parties’s respective briefs and Mr. Horn’s declaration may be accessed from the links below:
[/UPDATE]
Judge Robart’s forthcoming opinion in the Microsoft v. Motorola RAND breach of contract case in the Western District of Washington is highly anticipated by those who pay attention to standard-essential patent disputes, as it will likely provide a judicially-sanctioned roadmap for how to determine RAND terms and conditions in a given licensing situation. But before he issues a written decision, a hearing is scheduled for January 28, during which Judge Robart will hear oral argument from Microsoft and Motorola regarding the implications that Google’s AVC/H.264 patent pool license agreement with MPEG-LA may have on the appropriate RAND terms for Motorola Mobility’s H.264-essential patent portfolio. (Google, of course, being the parent company of Motorola Mobility since it acquired Motorola in May 2012).
Continue Reading Preview: Motorola, Microsoft set to debate relevance of Google’s MPEG LA license agreement to RAND terms next week