2013

When Judge Robart issued his summary judgment order last week in the Microsoft-Motorola case, we noted that he ordered the parties to submit further briefing on Microsoft’s allegation that Motorola breached its RAND obligations to Microsoft (at least in part) by failing to offer a RAND license to Microsoft’s WiFi chip supplier, Marvell Semiconductor:

As the court understands it, Microsoft will argue to the jury that Motorola failed to grant a license to Marvell, and if Motorola had granted such a license, Motorola would then be precluded from seeking a license from Microsoft for the SEPs at issue. This argument requires a legal basis. The argument is premised on the notion that, legally, Motorola’s ability to seek a license from Microsoft would be exhausted by granting a license to Marvell. This issue is not explored in the parties’ summary judgment briefing. Thus, the parties may provide three-page letter briefs no later than August 16, 2013, on the legal grounds for Microsoft’s assertion that a Motorola-Marvell license would preclude Motorola from seeking a license from Microsoft. Additionally, no later than August 16, 2013, the parties may propose jury instructions on this issue.

On Friday, the parties submitted letter briefs in response to this order (links below).  As we alluded to in last week’s post, this issue raises some interesting questions on what types of behavior and licensing restrictions are proper during FRAND licensing negotiations — questions that we’ll get into after the jump.

Continue Reading FRAND licensing, chip suppliers, and the interplay of patent exhaustion / defensive suspension clauses

Ericsson is a company that holds a significant number of standard-essential patents, and often seeks to monetize and enforce them.  (They were just awarded infringement damages in Texas, and they’re engaged in an SEP duel with Samsung in the ITC and in Texas).  It wasn’t surprising, then, when Ericsson last week suggested a framework for

Last month, the ITC issued a Notice of ALJ David P. Shaw’s Final Initial Determination on Violation in In the Matter of Certain Audiovisual Components and Products Containing the Same (Inv. No. 337-TA-837), the investigation into LSI/Agere’s allegations that Realtek and Funai infringed 802.11-essential and H.264-essential patents (as well as one non-SEP).  The ITC found

As we noted last week, various non-parties have begun submitting statements on the public interest in connection with ITC Inv. No. 337-TA-800, In the Matter of Certain Wireless Devices With 3G Capabilities and Components Thereof.  Over the last several days, both the complainant InterDigital and each of the respondents (Nokia, Huawei, and ZTE) have

A month ago, we discussed how Microsoft and Motorola filed dueling summary judgment motions in an attempt to eliminate some of the issues from the upcoming RAND breach of contract jury trial in Seattle (currently set to begin August 26).  Judge James L. Robart held an oral argument on July 31, and this morning, his order hit the docket (the order is actually dated yesterday — Judge Robart is apparently not taking Sundays off).

[2013.08.11 Order on Microsoft-Motorola SJ Motions]

As you can tell from the title of this post, Judge Robart granted summary judgment on some — but not nearly all — of the issues briefed by the parties.  Both Microsoft and Motorola prevailed on some issues and lost on others.  The bottom line is that the jury will still have a lot to decide in this case.  After the jump, we’ll take a look at how Judge Robart ruled — starting with the motions that he denied.


Continue Reading Two weeks ahead of Microsoft-Motorola jury trial, summary judgment ruling reduces the issues (but only a little bit)

Microsoft and Motorola are currently hurtling toward an August 26 jury trial in their RAND breach of contract dispute in Seattle.  But it looks like the SEP disputes between the parties are not limited to the United States, however.  In a letter filed with Judge James L. Robart’s court yesterday, Microsoft claims that it was

The U.S. Trade Representative’s recent disapproval of the ITC’s exclusion order in Inv. No. 337-TA-794 has generated a lot of discussion and uncertainty about the future enforcement of standard-essential patents at the U.S. International Trade Commission. But it seems generally accepted that going forward, both the Commission and litigants are going to have do

Back in June, we alerted you to a jury verdict handed down in a patent case in the Eastern District of Texas, where the jury awarded Ericsson several million dollars as compensation for infringement of several of its 802.11-essential patents by several manufacturers of WiFi-compliant products and components.  At the time, we noted that the jury only addressed issue of validity, infringement, and damages, with SEP-specific issues being potentially left for presiding Judge Leonard Davis to decide.  (In fact, the court held a bench trial on RAND issues on June 12).  The parties filed post-trial motions for judgment as a matter of law on several issues, and yesterday, Judge Davis issued a lengthy Memorandum Opinion and Order broadly upholding the jury’s verdict.

[13.08.06 (Dkt 615) Ericsson v. D-Link Order on Post-Trial Motions]

As we suspected, some RAND obligation-related issues reared their heads — but Judge Davis rejected the defendants’ RAND-based arguments and defenses.  In doing so, he made some statements that might be construed as a marked departure from the route taken by Judge Robart in the Microsoft-Motorola case.  After the jump, we’ll take a look at what Judge Davis concluded with respect to Ericsson’s RAND obligations.Continue Reading Rebutting Judge Robart? E.D. Tex. Judge Leonard Davis upholds jury damages award on WiFi SEPs, dismisses RAND-related issues (Ericsson v. D-Link)

The world of standard-essential patent litigation has seen some significant upheaval over the past few months, particularly with the Microsoft-Motorola RAND-setting ruling and the ITC’s exclusion order in Samsung-Apple (and the USTR’s subsequent veto).  Today there will be a complimentary webinar in conjunction with the American Intellectual Property Law Association’s (AIPLA) Standards & Open