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An issue that often comes up in standard-essential patent litigation is “essentiality” — whether the asserted claims are actually necessary to practice the technological standard that forms the basis of the infringement allegations.  This is important for at least two reasons: first, because if the claim is not actually necessary to practice the standard, an implementer could (at least theoretically) design around the patent to create a non-infringing implementation of the standard; and second, because the RAND obligations set forth in the patent policies of many SSOs are often limited only to truly “essential” patent claims.

This issue of essentiality has come to the forefront in the ongoing multidistrict litigation between non-practicing entity Innovatio and several WiFi suppliers (Cisco, Motorola Solutions, and Netgear).  You may recall that Innovatio, in winning (in part) a motion to dismiss some unfair competition and RICO claims, had argued that many of the asserted claims are not actually “Essential Patent Claims” as defined by the IEEE — and therefore cannot be subject to any existing RAND obligation.  Earlier this month, the court ordered the parties to meet and confer and submit a joint statement regarding disputes over whether, based on Innovatio’s infringement contentions, the asserted claims of Innovatio’s patents are actually essential to the IEEE 802.11 wireless networking standard.  Yesterday, the parties submitted their stipulation regarding the essentiality of Innvatio’s asserted patent claims.
Continue Reading Innovatio, WiFi suppliers clash over over “essentiality” of Innovatio 802.11 patents

Earlier this month we covered InterDigital’s efforts to dismiss Huawei and ZTE’s FRAND counterclaims, which were asserted against InterDigital in litigations in the U.S. District Court in Delaware.  Yesterday, InterDigital filed another motion to dismiss FRAND-related counterclaims in a different Delaware district court litigation — this time, InterDigital seeks to have Nokia’s FRAND counterclaims…

Big news today in the Microsoft-Motorola RAND breach of contract dispute taking place before the U.S. District Court for the Western District of Washington.  After the November 2012 bench trial and significant post-trial briefing between the parties on a variety of issues, we finally have an order from the court.  However, we will need to…

Just like with cellular standards, the widespread use of the IEEE 802.11 wireless networking (“WiFi”) standard often makes WiFi-compliant devices easy targets for patent infringement lawsuits — particularly suits brought by non-practicing entities.  The most infamous of these NPEs targeting WiFi is probably Innovatio IP Ventures LLC, who has accused thousands of businesses of…

Recently Apple explained to the ITC that many of the standard-essential patents asserted by Samsung against Apple have failed under the scrutiny of litigation, resulting in a finding of non-infringement or invalidity.  Well, Apple can now chalk up another SEP win on the board, although one that has nothing to do with Samsung.  Yesterday, Judge Sue Robinson of the U.S. District Court for the District of Delaware ruled on summary judgment that Apple does not infringe two patents alleged by Golden Bridge Technology to be essential to the 3G W-CDMA wireless telecommunications standard.

Golden Bridge is a noted non-practicing entity whose “primary business is the creation, licensing, and enforcement of Wideband CDMA technology and intellectual property.”  The company is involved in several lawsuits over its allegedly-essential cellular technology, and even brought (and lost) an antitrust case against several mobile device makers a few years back, where it had accused the mobile device companies of excluding Golden Bridge’s technology from the standard-setting process.
Continue Reading Delaware court says Apple does not infringe Golden Bridge W-CDMA patents

The standard-essential patent battle between InterDigital and Chinese handset makers Huawei and ZTE rages on in the U.S. District Court for the District of Delaware.  Recall that the parties are awaiting an Initial Determination in ITC Inv. No. 337-TA-800, and are also involved in Inv. No. 337-TA-868.  In the companion district court cases to the -868 investigation, Huawei and ZTE attempted to have the Delaware court expedite a determination of FRAND terms for InterDigital’s portfolio, an attempt that was rebuffed by the court.  But now, in motion filed yesterday, InterDigital seeks to have Huawei and ZTE’s FRAND-related claims dismissed altogether.  InterDigital argues that the FRAND counterclaims should have been asserted in an earlier litigation, are not ripe, and merely seek an advisory opinion.  InterDigital also claims that Huawei and ZTE have failed to allege the existence of an enforceable contractual commitment under the applicable law.
Continue Reading InterDigital asks Delaware court to dismiss Huawei, ZTE’s FRAND counterclaims

For the last few months, Samsung and Ericsson have been engaged in a wide-ranging patent infringement skirmish, both in the Eastern District of Texas and in the U.S. International Trade Commission (Inv. Nos. 337-TA-862, 337-TA-866).  Many of the infringement assertions in these cases relate to the 4th-generation Long-Term Evolution (LTE) wireless communications standard, as well as other wireless communications standards promulgated by ETSI and IEEE.  Earlier this week, Samsung filed its Answer and Counterclaims in response to Ericsson’s complaint in case no. 6:12-cv-00894 in the Eastern District of Texas.

Pulling no punches, Samsung not only accuses Ericsson of breaching its FRAND obligations (an accusation it has previously made), but also asserts additional patents against Ericsson — including patents already being asserted in the ITC.  And notably, Samsung also paints Ericsson as a non-practicing entity that is trying to engage in patent hold up — Samsung states that Ericsson “now feels unhinged as a non-practicing entity in the mobile phone market to extort vastly unreasonable and discriminatory license fees,” and that it “seeks to ignore over a decade of licensing history between the companies and to travel down a new road as an NPE extracting irrational sums from Samsung under threat of an ITC exclusion order.”  Rhetoric aside, though, the meat of Samsung’s answer is really about its FRAND-related defenses and infringement counterclaims.


Continue Reading Samsung-Ericsson standard-essential patent battle heats up as Samsung asserts additional patents in E.D. Tex.

Last month, Judge James F. Holderman dismissed various claims brought by Cisco, Motorola Solutions, and NETGEAR against Innovatio IP Ventures, LLC over Innovatio’s vast licensing and litigation campaign relating to the IEEE 802.11 Wi-Fi standard.  These suppliers claimed that Innovatio — in threatening the suppliers’ customers and bringing litigation over standard-essential patents — violated various unfair competition laws, and even the Federal Racketeering and Corrupt Organizations Act (“RICO”).  But the court found that Innovatio’s conduct was protected petitioning activity under the Noerr-Pennington doctrine, and that the suppliers did not properly plead that the conduct was a “sham” that would exempt this activity from protection.  Yesterday, the suppliers filed a motion for entry of final judgment under Federal Rule of Civil Procedure 54(b), which indicates that the suppliers want to appeal the dismissal of these claims as soon as possible to keep the heat on Innovatio.
Continue Reading Wi-Fi suppliers seek to facilitate quick appeal of dismissal of RICO, unfair competition claims against Innovatio

Last week, we posted about ALJ Robert K. Rogers’ decision to deny the motion brought by Huawei, Nokia, and ZTE to stay InterDigital’s latest standard-essential patent ITC case (Inv. No. 337-TA-868) pending a FRAND determination in district court.  On Thursday March 14, these parties’ efforts to seek an expedited FRAND determination took another blow.  Judge Richard G. Andrews of the District Court of Delaware denied a motion brought by Huawei and ZTE to expedite discovery and trial on FRAND-related counterclaims.
Continue Reading Delaware district court denies motion to expedite FRAND determination in InterDigital case

Yesterday, Huawei and ZTE filed a joint reply brief in support of their respective motions to expedite determination of the terms of a FRAND license for InterDigital’s standard-essential patents.  The parties reiterate their willingness to take a FRAND license to InterDigital’s patents and assert that a prompt resolution of FRAND issues will moot other issues and litigation and will prevent Huawei/ZTE from facing irreparable harm.
Continue Reading Huawei, ZTE claim that without FRAND determination, InterDigital will “perpetuate an endless cycle of ITC litigation” over standard-essential patents