Yesterday, a Florida jury returned a verdict that BlackBerry did not infringe NXP’s patents alleged to be essential to the IEEE 802.11 WiFi and JEDEC eMMC standards and that the asserted patent claims were invalid. The role of BlackBerry’s standard essential patent defenses is not clear from the record, though it appears to have been limited to arguments that any damages must be consistent with reasonable and non-discriminatory (RAND) licensing terms (e.g., no apparent allegation or remedy sought for NXP breaching a RAND obligation).
Specifically, a few weeks ago Judge Kane denied NXP’s motion in limine to preclude BlackBerry from offering any affirmative defense based on RAND or FRAND licensing obligations because BlackBerry allegedly did not plead or disclose any such defenses. Judge Kane held that the RAND defense may be based on pleadings of implied license, patent misuse, or equitable estoppel even though the “better practice is to assert the RAND obligation in conjunction with pleading license, exhaustion, or implied license.”
In its opposition to NXP’s motion in limine and in its trial brief, BlackBerry did not focus on any RAND-based defenses other than arguing that, if NXP’s patents covered the standards (which BlackBerry disputed), then any damages must be based on a RAND royalty rate (though not clear how that was alleged to be different from a reasonable royalty rate). The jury instructions did not have any RAND-specific instructions or defenses. The RAND-obligation issue, therefore, appears to have been subsumed in the reasonable royalty damages argument (based on the typical Georgia-Pacific reasonable royalty analysis per Jury Instruction Nos 23-25), which damages issue the jury did not reach because they found that the patent claims were not infringed and were invalid.