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Two new SEP-related patent infringement complaints were filed this week in the Central District of California by AIM IP, a non-practicing entity based in Mission Viejo, CA.  These complaints accuse Aastra USA, Inc. and AudioCodes, Inc. each of infringing claims of U.S. Patent No. 5,920,853, titled “Signal Compression Using Index Mapping Technique for the Sharing of Quantization Tables.”  AIM IP accuses various Aastra and AudioCodes Voice over Internet Protocol (VoIP) devices of infringing the patent based on the devices’ compliance with and use of the ITU G.729 audio compression standard.

[UPDATE] After this was originally posted, we discovered several additional new suits filed by AIM IP over the ‘853 patent.  These were filed against ClearOne, Digium, Media5, Obihai, and Patton Electronics, and are linked to below. [/UPDATE]Continue Reading Non-practicing entity AIM IP files new infringement suits over VoIP standard-essential patent

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

[UPDATE]  Since this post was originally published on January 22, the deadline passed for the parties to submit extrinsic evidence and additional arguments supporting their respective interpretations of the Google-MPEG LA AVC/H.264 license agreement.  Microsoft submitted both a brief and a supporting Declaration of Lawrence A. Horn, who is the President and CEO of MPEG LA, LLC.  Mr. Horn’s declaration supports Microsoft’s argument (as detailed in our original post below) that the scope of the grant-back under the MPEG LA license agreement extends to all Affiliates of Google, not just to those specifically identified.  For its part, Motorola argues that the “scope” language of the MPEG LA agreement remains ambiguous, and that Mr. Horn’s declaration represents inadmissible hearsay because Motorola was unable to cross-examine him.

The parties’s respective briefs and Mr. Horn’s declaration may be accessed from the links below:

[/UPDATE]

Judge Robart’s forthcoming opinion in the Microsoft v. Motorola RAND breach of contract case in the Western District of Washington is highly anticipated by those who pay attention to standard-essential patent disputes, as it will likely provide a judicially-sanctioned roadmap for how to determine RAND terms and conditions in a given licensing situation.  But before he issues a written decision, a hearing is scheduled for January 28, during which Judge Robart will hear oral argument from Microsoft and Motorola regarding the implications that Google’s AVC/H.264 patent pool license agreement with MPEG-LA may have on the appropriate RAND terms for Motorola Mobility’s H.264-essential patent portfolio. (Google, of course, being the parent company of Motorola Mobility since it acquired Motorola in May 2012).


Continue Reading Preview: Motorola, Microsoft set to debate relevance of Google’s MPEG LA license agreement to RAND terms next week

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)

Early in January we noted that a non-practicing entity named Steelhead Licensing had filed a number of complaints for patent infringement against various wireless device manufacturers and cellular carriers.  Of particular note in those suits was that the patent at issue in all of the actions — U.S. Pat. No. 5,491,834, entitled “Mobile Radio Handover Initiation Determination” — was previously owned by British Telecom, is due to expire next month, and (according to Steelhead, apparently) is essential to various 3G and 4G wireless communications standards.  On Friday, January 11, Steelhead expanded its assertion activities relating to the ‘834 patent, filing infringement actions against Acer, Amazon.com, Asustek, and Dell.
Continue Reading Steelhead Licensing expands cellular-essential patent assertion activities

Late last week, Apple Inc. filed a notice of appeal with the United States District Court for the Western District of Wisconsin, announcing its intent to appeal to the Federal Circuit Judge Barbara B. Crabb’s dismissal of Apple’s SEP-related contract and antitrust claims against Motorola Mobility (case No. 3:11-cv-00178-bbc).  This presents us with an opportunity to do a brief “catching up on” post on this particular portion of the larger Apple-Motorola dispute.
Continue Reading Catching up on … Apple v. Motorola Mobility (W.D. Wis.)

On Friday, January 4, 2013, a non-practicing entity named Steelhead Licensing LLC filed a litany of SEP-related lawsuits in the United States District Court for the District of Delaware against various wireless device manufacturers and cellular carriers.  Each of the entities is accused of infringing a single, soon-to-expire (on Feb. 13) patent — U.S. Pat. No. 5,491,834, entitled “Mobile Radio Handover Initiation Determination.”
Continue Reading Steelhead Licensing LLC files suit claiming wireless equipment makers and cellular carriers infringe cellular-essential patent

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.  Judge Richard Posner’s June 22, 2012 ruling in the Apple v. Motorola patent infringement litigation in the Northern District of Illinois, and the subsequent appeal to the Federal Circuit fall into this category.

Even people who don’t routinely follow the smartphone patent wars likely are aware of the patent dispute between Motorola and Apple.  After prior license negotiations failed, the parties filed dueling patent infringement lawsuits in October 2010.  Some of these infringement actions were consolidated in a case before Judge Posner, who sat by designation at the district court.  A jury trial was scheduled for June 2012: Apple asserted Motorola infringed claims of four non-standard-essential patents, while Motorola asserted Apple infringed claims of one patent that was essential to the Universal Mobile Telecommunications Standard (UMTS, a 3G cellular standard).  But as the trial date approached, Judge Posner excluded all of the parties’ respective expert testimony on damages.  Finding that neither party could prove an entitlement to damages, Judge Posner tentatively canceled the jury trial, finding that it would make little sense to hold a jury trial on infringement liability if a party could not receive relief.  However, he allowed the parties to submit further briefing, including relating to the potential for equitable remedies such as injunctive relief.  Because Motorola asserted an SEP that was encumbered by a FRAND licensing commitment, Judge Posner specifically requested that Motorola address the bearing of FRAND on the injunction analysis.Continue Reading Catching up on … Apple v. Motorola (N.D. Ill./Fed. Cir.)

On November 29, Judge James L. Robart of the U.S. District Court for the Western District of Washington issued an order granting Microsoft’s motion for partial summary judgment and dismissing Motorola’s claims for injunctive relief. Judge Robart found that under the circumstances of the case – where the patents-in-suit were subject to a RAND licensing promise from Motorola, and where Microsoft sought enforcement of that promise in Judge Robart’s court – Motorola could not satisfy either the irreparable harm or inadequate remedies at law prongs of the eBay test. But the court’s order is even broader, barring any claims of injunctive relief that Motorola might seek against Microsoft with respect to any patents essential to the ITU H.264 video coding or 802.11 wireless networking standards.
Continue Reading Injunctive Relief Precluded for Motorola’s SEP Infringement Claims

Because so many SEP-related issues have arisen over the past year, we will periodically revisit some of the more noteworthy occurrences with a brief post.  In this post, we explore recent and ongoing patent assertion activities of Innovatio IP Ventures, LLC.

On February 28, 2011, Broadcom Corporation assigned 31 U.S. patents to a company named Innovatio IP Ventures, LLC.  After acquiring these patents, Innovatio then sent letters to thousands of entities – including restaurants, coffee shops, hotels, grocery stores – alleging infringement of these patents, which Innovatio claimed to be essential to the 802.11 Wi-Fi standard.  Innovatio sought royalties from these entities, reportedly seeking $2500-3000 from each outlet for a license to the patents.  When negotiations broke down, Innovatio also filed lawsuits against dozens of these entities, claiming they infringed the patents through their respective use of products that comply with the 802.11 standard.Continue Reading Catching up on…Innovatio IP Ventures, LLC’s Litigation Activities