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Last week, it was reported that Apple won a decision against Samsung in Tokyo, Japan, where a judge ruled that Samsung failed to negotiate in good faith with Apple before bringing patent infringement claims over its standard-essential patents.  Until today, the court’s actual ruling was not publicly available.  But yesterday, Apple submitted a “Notice of New Facts” and a redacted copy of a translation of the Tokyo court’s decision to the U.S. International Trade Commission in ITC Inv. No. 337-TA-794, and this submission hit the ITC’s docket this morning.

Recall that the -794 case is the ITC’s investigation over Apple’s alleged infringement of several Samsung patents (including two 3G cellular standard-essential patents), and that a Final Determination by the Commission is due no later than this Thursday, March 7 — and that the issue of the propriety of issuing an exclusion order for standard-essential patent infringement has been hotly debated here.  Apple argues that the Tokyo court’s decision and factual findings “underscore that it would be against the public interest to issue an exclusionary remedy to Samsung on declared-essential patents.”Continue Reading Apple cites recent Japanese court ruling as evidence against standard-essential patent exclusion order (ITC Inv. No. 337-TA-794)

Even though the trial in the Microsoft-Motorola RAND dispute took place over three months ago, there’s been a lot going on in Washington lately.  In addition to the arguments regarding the relevance of the Google-MPEG LA AVC/H.264 patent license agreement, recall that a couple weeks ago, Judge James L. Robart granted Motorola’s request to submit additional information that may be relevant to determining the RAND rate.  Late Friday, both Motorola and Microsoft filed these documents with the court — documents that may actually raise more issues than they help resolve (and may ultimately have no bearing on Judge Robart’s decision).
Continue Reading Microsoft-Motorola RAND case update: Microsoft accuses Motorola of violating the Google/FTC consent decree, and a potential H.264 license agreement in Germany

e.d. tex caseIt’s well-known that concerns about patent assertions by non-practicing entities were part of the impetus for the America Invents Act of 2011.  In order to prevent multiple unrelated defendants from being added to the same infringement suit on the sole basis that they are accused of infringing the same patent, the AIA added the so-called “misjoinder” provision (35 U.S.C. § 299) to the patent laws.  Briefly, Section 299 provides that defendants are properly joined if (1) infringement is asserted against the defendants based on the same transaction or occurrence or as to the same accused product or process, and (2) questions of fact common to all defendants will arise in the action.  Over the past year and a half, courts have been grappling with evaluating whether otherwise unrelated defendants are properly joined in infringement actions.  In his recent ruling in an Eastern District of Texas case involving IEEE 802.3 Ethernet technology, Magistrate John D. Love held that standards-compliant system-on-a-chip (SoC) suppliers may be properly joined with their customers under Section 299.
Continue Reading E.D. Texas court ruling shows “system-on-a-chip”-based infringement accusations can satisfy AIA’s joinder rules (U.S. Ethernet v. Samsung)

ITC LogoAs we noted earlier this week, the ITC is currently holding the evidentiary hearing in its investigation surrounding InterDigital’s 3G standard-essential patent infringement complaint against Nokia, Huawei, and ZTE (Inv. No. 337-TA-800).  As with many ITC hearings, much of the information is kept out of the public record (and that’s particularly true for FRAND-related issues, where sensitive licensing data is often discussed).  But today, the ITC just released the public version of Order No. 70, the confidential version of which originally issued way back in September 2012.  In this order, ALJ David P. Shaw ordered InterDigital and Nokia to both produce various information relating to the FRAND affirmative defenses raised by Nokia in the case, including license agreements, license negotiation documents, and other documents relating to FRAND.
Continue Reading InterDigital, Nokia ordered to produced FRAND-related and licensing documents in ITC case (337-TA-800)

usbIt’s no surprise that most of the attention being paid to standard-essential patent issues is focused on the companies involved in the “smartphone wars” — Motorola, Microsoft, Apple. Samsung, etc.  But while these consumer product companies are of course affected by issues involving standard-essential patents, so too are their component suppliers.  A lawsuit filed this past fall in the Southern District of New York by Lotes Co. against Hon Hai Precision Industry Co. and Foxconn over SEP issues relating to the Universal Serial Bus (USB) 3.0 standard is a great example of this.  Here, we attempt to provide a brief overview of the issues in the Lotes-Hon Hai case.
Continue Reading Catching up on…Lotes v. Foxconn RAND/antitrust dispute over USB 3.0 standard-essential patents

gavelIn an order issued yesterday by the U.S. District Court for the Western District of Washington (that just hit the docket this afternoon), Judge James L. Robart granted Microsoft’s long-pending motion for partial summary judgment and invalidated thirteen claims of three patents Motorola alleged as essential to the AVC/H.264 video coding standard.  Although this ruling stems from the infringement portion of the case, and the major issues between the parties involve the RAND breach of contract claims brought by Microsoft over Motorola’s entire 802.11 and H.264-essential patent portfolios, it’s possible that Judge Robart’s ruling could have some future effect on these RAND claims as well.
Continue Reading Microsoft-Motorola (W.D. Wash.) update: Court invalidates several claims of Motorola H.264-essential patents

gavelWe’ve previously discussed the wide-ranging assertion activities of Innovatio IP Ventures LLC, a non-practicing entity that has targeted thousands of companies across the country over patents related to the IEEE 802.11 wireless networking (Wi-Fi) standard.  And due to an amended complaint filed in October 2012 by Motorola Solutions, Cisco, and Netgear in the Northern District of Illinois, Innovatio has been facing a litany of charges relating to this licensing and litigation campaign.  These charges include breach of contractual RAND obligations, state law unfair competition, civil conspiracy, and even violation of the federal civil RICO statute.  In November, Innovatio moved to dismiss these claims.  This week, Chief Judge James F. Holderman granted much of Innovatio’s motion, dismissing all of the claims except for the RAND-based breach of contract and promissory estoppel claims.  This ruling is indicative of the substantial hurdles that potential licensees of standard-essential patents face in attempting to show when patent holders’ assertion of rights and licensing demands may cross legal boundaries — and it may also further muddy the already murky waters surrounding the scope of RAND obligations.
Continue Reading Innovatio Update: Wi-Fi manufacturers’ RICO, unfair competition claims targeting Innovatio rejected, but RAND issues remain

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)

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)

Because so many SEP-related issues have arisen over the past year, we will periodically revisit some of the more important episodes with a brief post.  Next month, the U.S. International Trade Commission will issue a Final Determination in In the Matter of Certain Electronic Devices, Including Wireless Communication Devices, Portable Music and Data Processing Devices, and Tablet Computers (No. 337-TA-794), a Section 337 patent infringement action brought by Samsung against Apple.  This presents us with a timely opportunity to discuss the background of some of the SEP and FRAND-related issues of first impression that may be decided by the Commission in the case.

The Samsung-Apple ITC investigation (337-TA-794) originated with a complaint brought by Samsung against Apple back in June 2011, in which Samsung accused various Apple products of infringing five patents.  Two of these patents — U.S. Pat Nos. 7,706,348 and 7,486,644 — were alleged by Samsung to be essential to the UMTS 3G cellular standard.  Not surprisingly, Apple claimed that Samsung’s FRAND obligations with respect to these SEPs prevent Samsung from receiving an exclusion order, in the event Apple is found to violate Section 337.Continue Reading Catching up on . . . the Samsung-Apple ITC action (Inv. No. 337-TA-794)