A couple weeks ago, we posted about an interesting pretrial damages ruling in a patent infringement case (actually, several cases) brought by non-practicing entity Wi-LAN against a number of standards-compliant device makers (Sony, Ericsson, Alcatel-Lucent, and HTC). But yesterday, an Eastern District of Texas jury decided that the damages issue was irrelevant, finding that all
An annotated version of the ITC’s decision in the Samsung-Apple case (Inv. No. 337-TA-794)
Earlier this week, we took a quick look at the U.S. International Trade Commission’s landmark opinion 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) — and we promised an annotated version of the Commission’s rather lengthy opinion. Well, without
ITC releases public version of the Commission opinion (and dissent) in Samsung-Apple case (337-TA-794)
Late last week, the ITC finally released the public version of its Final Determination and Commission Opinion 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) — the case where the Commission last month issued a controversial exclusion order based on Apple’s infringement of a Samsung 3G-essential patent. The document, linked to below, includes both the Commission’s determination of a violation of Section 337 and its decision to issue an exclusion order despite the fact that Samsung had previously pledged to license the patent at issue on FRAND terms, along with a dissent by Commissioner Dean A. Pinkert from the decision to issue an exclusion order.
[337-TA-794 Commission Opinion (Public Version)]
As you can see, the Commission’s opinion is long and detailed, and we are in the midst of preparing an annotated version of the opinion that we’ll be posting later this week (similar to what we did with the Microsoft-Motorola RAND opinion). But after the jump, we’ll give you a quick overview of the Commission’s determination and the dissent’s views on the FRAND and SEP-related public interest issues.
In Microsoft-Motorola RAND dispute, “good faith and fair dealing” is in the eye of the beholder
Later this summer, the second phase of the Microsoft v. Motorola RAND breach of contract trial will take place in Judge James L. Robart’s courtroom in Seattle, WA. A jury will decide whether Motorola breached its SSO-related RAND licensing obligations by offering what Microsoft deems “blatantly unreasonable” licensing terms for its 802.11- and H.264-essential patents, and then following up with patent infringement suits.
In a prior summary judgment order, Judge Robart already concluded that in order to be permissible under its RAND obligations, Motorola’s license offers “must comport with the implied duty of good faith and fair dealing inherent in every contract.” He noted that this inquiry is heavily fact-intensive, and best left to the jury to decide. To this end, Judge Robart recently requested that both Microsoft and Motorola present background briefing on the parameters of what is required by the duty of good faith and fair dealing in contractual disputes. This week, the parties complied with this request:
- 13.07.01 (D.E. 715) Microsoft Brief re Duty of Good Faith in RAND Licensing
- 13.07.01 (D.E. 716) Motorola Brief re Duty of Good Faith in RAND Licensing
Both parties acknowledge that the issue of good faith and fair dealing is complicated — but understandably, the parties also differ quite a bit in their views on what should be considered. After the jump, we’ll take a brief look at the filings.
Expert’s damages calculation based on value of entire standards-compliant product violates Entire Market Value rule (Wi-LAN v. Alcatel-Lucent)
Over the past few years, courts have begun cracking down on improper damages theories. The Federal Circuit’s 2012 opinion in LaserDynamics v. Quanta is instructive on this point, noting that in the absence of evidence that the patented functionality is the source of the demand for the entire product, then damages must be based on
ITC rules against InterDigital’s claims of 3G-essential patent infringement in preliminary finding
On Friday, U.S. International Trade Commission Administrative Law Judge David P. Shaw issued a Notice of Initial Determination in In the Matter of Certain Wireless Devices with 3G Capabilities and Components Thereof, Inv. No. 337-TA-800. This investigation was originally instituted nearly two years ago based on a complaint filed by InterDigital against Huawei, Nokia, ZTE, and LG, in which InterDigital accused the companies of infringing several InterDigital patents alleged to be essential to various 3G cellular communications standards. The evidentiary hearing was held in January 2013, and the case involves the intersection of a two issues that have drawn a lot of attention lately — the assertion of standard-essential patents at the ITC (and what if any relevance FRAND licensing obligations have to the proceedings), as well as patent infringement cases brought by non-practicing entities (InterDigital is an NPE that has been deemed a “patent troll” by some, while others take a more favorable view of the company’s activities).
So far, it appears that InterDigital’s SEP infringement assertions have failed (at least for now). While the public version of ALJ Shaw’s Initial Determination won’t become available for at least a few weeks, Friday’s Notice indicates that ALJ Shaw found no violations of Section 337 with respect to any of the seven remaining asserted patents.
Continue Reading ITC rules against InterDigital’s claims of 3G-essential patent infringement in preliminary finding
Microsoft wins release of $100M bond in RAND contract dispute with Motorola
This past Tuesday, Judge James L. Robart held a telephonic hearing in the Microsoft-Motorola RAND breach of contract dispute taking place in his W.D. Wash. court. As we discussed last week, the hearing centered on Microsoft’s request that the court release a previously-ordered $100 million bond — a bond that it had required Microsoft to
RANDomness
- We recently prepared a Patent Alert on the Federal Circuit’s decision (penned by Chief Judge Rader) in Ultramercial v. Hulu, where the court reversed a district court’s prior finding (on a motion to dismiss) that Internet-related patent claims were not patentable subject matter under Section 101. At IP Watchdog, Eric Guttag says that
Apple, Samsung take their standard-essential patent battle to the U.S. Trade Representative
Earlier this month, the ITC issued a landmark decision and exclusion order, ruling that certain Apple products should be excluded from entry into the United States because they infringe a Samsung 3G-essential patent. As we explained in a follow-up post, the ITC doesn’t have the final word, though — by law, the President has the power to disapprove of an exclusion order for public policy reasons. (This power has since been delegated to the Office of the United States Trade Representative (USTR).) In a high-stakes, high-profile case such as Samsung-Apple, you’d expect the parties to continue the fight at every level — and sure enough, that’s what has happened.
As noted by Florian Mueller of FOSS Patents, last week both Apple and Samsung submitted arguments to the USTR. Mr. Mueller got his hands on public, redacted versions of the documents, which we’ve linked to below:
After the jump, we’ll take a more in-depth look at each party’s arguments.
Patent Alert: Federal Circuit rules that good faith belief of invalidity can rebut intent to induce infringement (Commil v. Cisco)
Today, Tuesday, June 25, 2013, in Commil USA v. Cisco Systems, No. 2012-1042, the Federal Circuit (Newman (concur/dissent), Prost, and O’Malley (concur/dissent)) reversed a finding of induced infringement where the jury instruction erroneously used a negligence standard and the district court erroneously excluded rebuttal evidence of the accused infringer’s good faith belief that