Today, a three-judge panel of the Fifth Circuit affirmed the judgment that Ericsson’s licensing offers to HTC on 2G, 3G and 4G standard essential patents (SEPs) based on the mobile device price (rather than the price of the baseband processor component inside the mobile device) complied with Ericsson’s ETSI commitment to license SEPs on fair,
Caltech gets $1.1 billion verdict against Apple, Broadcom on SEPs that had no RAND commitment
On January 29, 2020, Caltech prevailed in its Central District of California jury trial against Apple and Broadcom, where the jury found both Broadcom (who supplied WiFi chips) and Apple (who sold products with the Broadcom WiFi chips) infringed all five asserted claims of Caltech’s U.S. Patent Nos. 7,116,710, 7,7421,032, and 7,916,781, and awarded over $1.1 billion in total damages. The case marks what appears to be the largest verdict awarded on standard essential patents (SEPs) that were not subject to any standard-setting commitment (i.e., no RAND commitment).
The Jury Verdict shows that the jury found neither Broadcom nor Apple had willfully infringed any of the asserted claims and awarded Caltech running royalties in the amount of $837,801,178 for Apple’s infringement and $270,241,171 for Broadcom’s. The jury was not asked to make any findings on issues related to validity or any affirmative defenses or counterclaims, focusing solely on infringement and damages.
The parties currently are filing post-trial motions in which Apple/Broadcom are asking the trial court to enter judgment in their favor and overturn the jury verdict. The post-trial filings also include Caltech’s request for a permanent injunction. The trial court may decide those motions in the next couple months.…
Continue Reading Caltech gets $1.1 billion verdict against Apple, Broadcom on SEPs that had no RAND commitment
Jury awards running royalty for willfully infringed SEPs subject to FRAND commitment (Optis v. Huawei)
A jury recently found that Huawei willfully infringed four patents owned by PanOptis alleged to be essential to mobile cellular standards and subject to a FRAND commitment as well as a fifth patent related to the H.264 video compression standard but was not subject to a FRAND commitment. The jury awarded a reasonable royalty of $7.7 million for the single patent without a FRAND commitment, which was almost three times higher than the combined royalty awarded for the four FRAND-committed SEPs of $2.8 million. But it is not clear at this point whether that difference is due to the FRAND-commitment or to the relative value of the patented technologies to the infringing products.
Prior to trial, the court also showed judicial restraint by limiting the case to determination of FRAND commitments on U.S. patents as a matter of U.S. law and not opining on FRAND commitments for foreign patents under foreign law. For example, the court refused to enjoin a Chinese antitrust action based on alleged FRAND violations for related Chinese SEPs. And the court refused to include in this case a determination of whether there was infringement of related foreign SEPs and whether licensing offers on those foreign SEPs complied with the FRAND commitment under foreign law.
The next steps in this case involves the court holding a bench trial (i.e., trial before the judge, not a jury) on whether PanOptis licensing offers complied with its FRAND commitments. Further, the parties will file the usual post-trial motions that may challenge the jury verdict and ultimate bench trial ruling. Those further filings may provide more insight into the case. So stay tuned.
Continue Reading Jury awards running royalty for willfully infringed SEPs subject to FRAND commitment (Optis v. Huawei)
Judge Gilstrap rejects patent misuse defense to alleged FRAND-committed SEPs (St. Lawrence v. Motorola Mobility)
Judge Gilstrap recently issued an Order rejecting the equitable defense of patent misuse in a case involving standard essential patents (SEPs) subject to a commitment to license them on fair, reasonable and non-discriminatory (FRAND) terms. Motorola Mobility LLC (Motorola) alleged that Saint Lawrence Communications LLC (St. Lawrence or SLC) was guilty of patent misuse by, among other things, requiring Motorola to take a worldwide license to FRAND-committed SEPs, using the threat of injunctive relief in Germany to coerce licensing of those SEPs, entering different license terms with different licensees and not disclosing effective royalties from licensing the SEPs under a patent pool when negotiating individual licenses. This decision is another indication that competition law claims asserted against SEPs may not prevail when patent owners have followed traditional patent enforcement and licensing strategies or even if they breach of a FRAND commitment. Rather, there must be something more egregious or deceptive with the particular patent owner’s conduct at issue to give rise to competition law claims that are required to address harm to competition beyond harm that can be addressed by more traditional patent or contract law remedies — e.g., a contract remedy for breach of a FRAND commitment or limits on patent remedies based on a FRAND commitment.
Continue Reading Judge Gilstrap rejects patent misuse defense to alleged FRAND-committed SEPs (St. Lawrence v. Motorola Mobility)
Jury awards Core Wireless $7.3 Million lump sum for Apple’s infringement of two SEPs (Core Wireless v. Apple)
Today, a Northern District of California jury in a trial before Magistrate Judge Nathanael M. Cousins entered a Verdict finding that Apple infringed two patents alleged essential to ETSI and 3GPP cellular standards, that the patents were not invalid and awarding a reasonable royalty in the amount of $3.4 Million and $3.9 Million for each patent, respectively, as single lump sum payments for past and future infringement. It is not clear from the public record how the jury reached this damages verdict or whether it favors more the patent owner Core Wireless or the adjudged infringer Apple. We may follow-up this post if more insight is provided by post-trial briefings or the trial transcripts become public.
Below is a discussion of some of the pre-trial rulings and jury instructions that would have shaped the jury’s reasonable royalty determination here. These rulings touch-on the issues of royalty stacking, the smallest salable patent practicing unit, the form of a reasonable royalty, relevant Georgia-Pacific factors and apportionment to the value of the patented technology.
Continue Reading Jury awards Core Wireless $7.3 Million lump sum for Apple’s infringement of two SEPs (Core Wireless v. Apple)
Judge Gilstrap enhances damages for willful infringement of SEPs (Core Wireless v. LG)
Judge Gilstrap recently entered Final Judgment that included a 20% enhancement of damages based on a Jury Verdict that LG willfully infringed two patents that patent owner Core Wireless alleged to be essential to certain cellular standards. This appears to be the first case of a court enhancing damages based on willful infringement of a standard essential patent. Recall that Judge Gilstrap previously denied LG’s pre-trial motion to preclude finding willful infringement of an alleged standard essential patent, but indicated that he might consider LG’s policy arguments if he were to consider enhancing damages if the jury found that LG willfully infringed the patents (see our Sep. 7, 2016 post).
Judge Gilstrap has now ruled that he will enhance damages following the jury verdict that LG willfully infringed the patent, and he did so sua sponte, meaning that he enhanced damages without the patent owner filing a post-trial motion seeking such enhancement or the parties briefing same. Judge Gilstrap has since stayed execution of the judgment while the parties file post-trial motions, which motions most likely will address the issue of willful infringement and enhanced damages.
Judge Gilstrap’s decision to enhance damages was due to LG’s negotiation conduct and apparently weak infringement/validity defenses, which led him to conclude that “LG’s decision to terminate negotiations and continue operations without a license was driven by its resistance to being the first in the industry to take a license, and not by the merits or strength of its non-infringement and invalidity defenses.”…
Continue Reading Judge Gilstrap enhances damages for willful infringement of SEPs (Core Wireless v. LG)
Delaware jury finds that ZTE did not infringe one of InterDigital’s 4G network patents
Yesterday, a federal jury in Delaware concluded that ZTE’s accused 4G mobile devices did not infringe InterDigital’s U.S. Patent No. 7,941,151 (“the ‘151 Patent”). This jury verdict comes a little less than six months after a different jury concluded that ZTE’s accused 4G mobile devices infringe three separate patents asserted by InterDigital in the case.…
Ninth Circuit to hear oral argument on Motorola’s appeal of Judge Robart’s ruling (Microsoft v. Motorola)
Tomorrow, the Ninth Circuit will hear oral argument in Motorola’s appeal of Judge Robart’s RAND royalty rate determination as well as the jury verdict that Motorola breached its alleged RAND obligations to license its patents to Microsoft on RAND terms. Motorola also challenges whether the Ninth Circuit has jurisdiction over the appeal, arguing that exclusive…
Jury finds Apple does not infringe alleged SEPs but rejects claim that plaintiff did not offer license on FRAND terms
Earlier this week, a Texas jury found that Apple’s iPhone and iPad products do not infringe patents owned by Core Wireless that are alleged to be essential to certain cellular standards adopted by the European Telecommunications Standards Institute (“ETSI”). The jury also found that Core Wireless did not breach its contractual obligation to offer a…
Federal Circuit gives guidance on litigating RAND royalty (Ericsson v. D-Link)
Yesterday the Federal Circuit issued its long-awaited Ericsson v. D-Link decision that reviewed the Judge Davis jury verdict award for RAND-obligated 802.11 standard essential patents (see our Aug. 7, 2013 post). The Federal Circuit eschews any per se rules for RAND-obligated patents–e.g., no set modified Georgia-Pacific analysis–and instructs the court to fashion damages instructions…