Earlier this month, InterDigital Communications filed a Section 337 complaint with the ITC, alleging that Samsung, Nokia, ZTE, and Huawei infringed several of InterDigital’s 3G and 4G-essential patents. As we noted in our earlier post on the matter, InterDigital included a statement regarding the public interest along with its complaint, attempting to preemptively assuage any public interest concerns the Commission may have due to the inclusion of standard-essential patents in the complaint. Over the past two weeks, though, the proposed respondents have each filed their own public interest statements with the ITC, asserting a number of reasons why the public interest might be adversely affected by the institution of an investigation based on InterDigital’s complaint.
Continue Reading InterDigital, Nokia, others dispute public interest implications of 3G/4G patent assertions
Motion to compel RAND-related discovery granted (U.S.I.T.C. Inv. No. 337-TA-837)
Last week, the ITC released the public version of Order No. 42 in In the Matter of Certain Audiovisual Components and Products Containing the Same, Inv. No. 337-TA-837. In this order (the confidential version of which issued back in October 2012), Administrative Law Judge David P. Shaw granted respondent Realtek Semiconductor’s motion to compel complainants LSI Corp. and Agere Systems to provide certain RAND-related discovery. This includes information regarding LSI and Agere’s activities in standard-setting organizations, as well information about licensing and third-party products that practice the asserted patents. This order provides some incremental guidance on the type of evidence that ALJs consider relevant to RAND-based affirmative defenses in Section 337 ITC actions.
Continue Reading Motion to compel RAND-related discovery granted (U.S.I.T.C. Inv. No. 337-TA-837)
RANDomness
- The Pittsburgh Post-Gazette reports that in the wake of a couple of large damages
awards in patent infringement cases brought by universities, more higher education institutions are beginning to think about flexing their IP muscles. (via The Blog of Legal Times) - On February 19, the Supreme Court will hear arguments in Bowman v.
Compliance with same technology standard insufficient to warrant joinder of otherwise unrelated defendants (Network-1 Security Solutions v. Alcatel-Lucent)
On January 17, 2013, Magistrate Judge John D. Love issued an order in Network-1 Security Solutions, Inc. v. Alcatel-Lucent USA Inc., No 6:11-cv-492 (E.D. Tex.), granting the defendants’ motion to sever the case into several different actions. Judge Love found that infringement allegations stemming from the defendants’ compliance with the same technology standard was insufficient to warrant joinder. However, Judge Love found that in order to effectively manage the cases and preserve judicial resources, the cases would be consolidated for all pre-trial purposes except venue.
Continue Reading Compliance with same technology standard insufficient to warrant joinder of otherwise unrelated defendants (Network-1 Security Solutions v. Alcatel-Lucent)
Decision delayed in Samsung-Apple ITC case until March 7
Until today, the U.S International Trade Commission had set a deadline of February 6, 2013 to issue its Final Determination in In the Matter of Certain Electronic Devices, Including Wireless Communication Devices, Portable Music and Data Processing Devices, and Tablet Computers (Inv. No. 337-TA-794). In this highly-anticipated decision, the ITC is likely to address various issues relating to the assertion of standard-essential patents in Section 337 investigations before the Commission (for more information, see our previous post on the case). However, today the ITC issued a Notice of Commission Determination to Extend the Target Date for Completion of the Investigation, giving notice that it is extending the target date for issuance of its Final Determination until March 7, 2013.
Continue Reading Decision delayed in Samsung-Apple ITC case until March 7
RANDomness
Last week, the United States Supreme Court handed down its unanimous opinion in Already, LLC v. Nike (No. 11-982). The Court held that Nike’s issuance of a broad covenant not to sue on one of its trademarks extinguished Already’s standing to its counterclaim for invalidity of Nike’s trademark. While this case involved trademarks, not patents,
Various amici weigh in on SEP-related issues in Apple-Motorola Federal Circuit appeal
Later this year, in the case of Apple Inc. v. Motorola Inc. (Nos. 2012-1548, -1549), the Federal Circuit is set to address several issues that could have a big effect on future licensing and assertion of standard-essential patents. As explained in our previous post “catching up on” the details of this dispute, this appeal follows Judge Posner’s dismissal of both Apple’s and Motorola’s dueling infringement claims, which was based on the parties’ failure to prove entitlement to the remedies sought. Because Motorola had asserted a FRAND-encumbered standard-essential patent against Apple’s UMTS-compliant products, the Federal Circuit is likely to decide at least two issues that may have widespread implications for SEP licensing and litigation for years to come: (1) whether injunctive relief may be an appropriate remedy for Apple’s alleged infringement of Motorola’s FRAND-pledged SEPs; and (2) how to calculate damages for Apple’s alleged infringement of Motorola’s FRAND-pledged SEPs.
Continue Reading Various amici weigh in on SEP-related issues in Apple-Motorola Federal Circuit appeal
Steelhead Licensing expands cellular-essential patent assertion activities
Early in January we noted that a non-practicing entity named Steelhead Licensing had filed a number of complaints for patent infringement against various wireless device manufacturers and cellular carriers. Of particular note in those suits was that the patent at issue in all of the actions — U.S. Pat. No. 5,491,834, entitled “Mobile Radio Handover Initiation Determination” — was previously owned by British Telecom, is due to expire next month, and (according to Steelhead, apparently) is essential to various 3G and 4G wireless communications standards. On Friday, January 11, Steelhead expanded its assertion activities relating to the ‘834 patent, filing infringement actions against Acer, Amazon.com, Asustek, and Dell.
Continue Reading Steelhead Licensing expands cellular-essential patent assertion activities
RANDomness
- In the wake of the FTC-Google settlement, an investigation into potential antitrust violations by Google continues in Europe. Joaquin Almunia, the European Commission’s antitrust & competition chief, said that the FTC’s decision would not affect the European Commission’s investigation. (Financial Times)
- Unwired Planet — an NPE formed out of the remains of
FTC invites public to comment on consent agreement with Google/Motorola Mobility
Today, a notice and request was published in the Federal Register, inviting the public to comment on the FTC’s proposed consent agreement with Google and Motorola Mobility in FTC File No. 121-0120. This proposed consent agreement would close the FTC’s investigation into certain Google/Motorola Mobility business practices concerning licensing and assertion of standard-essential patents that Motorola previously agreed to license on RAND terms (for more details, see our prior post on the consent agreement).
Continue Reading FTC invites public to comment on consent agreement with Google/Motorola Mobility