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Many district courts around the country have specialized local rules that govern patent litigation, in order to assist the court and the parties to manage the myriad issues that come up in the vast majority of complex patent cases.  Local patent rules often control the schedule and format for the parties’ infringement and invalidity contentions, claim construction proceedings, etc.  The Northern District of California, where France Telecom and Marvell are embroiled in a patent suit over Marvell’s alleged infringement of a digital coding patent, is one such district that uses local patent rules.  In a ruling handed down this past Friday, U.S. Magistrate Judge Nathaniel Cousins found that it was proper for France Telecom to rely on two ETSI 3G cellular standards in formulating its infringement contentions.  This ruling shows that — with some caveats — it is permissible to use an industry standard as a basis for infringement contentions in districts with local patent rules.

[2013.05.013 (D.E. 79) Granting Motion to Compel in Part]Continue Reading Infringement contentions based on industry standards sufficient to comply with N.D. Cal. local patent rules (France Telecom v. Marvell)

Late Friday, Microsoft responded to the letter brief filed by Motorola last week in the parties’  RAND breach of contract case.  In its responsive letter brief [LINK], Microsoft disputes Motorola’s versions of the facts, and contends that Motorola has long known about the bases on which Microsoft would be seeking damages for breach of contract.  In particular, Microsoft claims that Motorola has known for over a year that Microsoft would be seeking to recover the costs of moving its EMEA distribution center from Germany to the Netherlands.  Microsoft suggests that Motorola’s efforts to limit Microsoft’s damages theories are nothing but a pretext for Motorola to actually dismiss Microsoft’s claims for damages for breach of contract.
Continue Reading RAND damages discovery dispute continues – Microsoft says Motorola’s brief is a pretext to dismiss damages claim

The district court in the Microsoft-Motorola RAND breach of contract case has already decided some unique issues of first impression, and will take on some more in the next phase of the case.  And if the parties don’t settle, an appeal is likely to follow.  This raises an interesting question, one that doesn’t necessarily have a clear answer — which appellate court would have jurisdiction over an appeal of Judge Robart’s RAND-related rulings?

The Western District of Washington sits within the 9th Circuit Court of Appeals (which, as noted below, has already heard an interlocutory appeal in this case).  But as you may know, in order to preserve uniformity in patent law, the U.S. Court of Appeals for Federal Circuit in Washington, DC is the court designated by Congress as the appeals court with exclusive jurisdiction for nearly all patent cases.  The Microsoft-Motorola case (at least the part which has garnered the most attention) involves a breach of contract issue relating to patents, standard-setting, and patent licensing issues.  So, which is it — the 9th Circuit or the Fed Circuit?

Brace yourselves – this will take a couple thousand words.


Continue Reading Which appeals court has appellate jurisdiction over the Microsoft-Motorola RAND case?

CAFCWe’ve got an update from the Apple-Motorola Federal Circuit FRAND jurisdictional dispute.  Today, the U.S. Court of Appeals for the Federal Circuit denied Motorola’s motion to dismiss Apple’s FRAND appeal (or transfer the case to the 7th Circuit).  For a recap on the issues surrounding this motion and the Apple-Motorola FRAND appeal (this one from…

Last week we covered the dispute between Innovatio IP Ventures and Cisco, Motorola Solutions, and NETGEAR (the “WiFi Suppliers”) over the essentiality and non-essentiality of various 802.11-related patent claims asserted by Innovatio.  The WiFi suppliers argued that all of Innovatio’s asserted patents were essential to the 802.11 family of wireless networking standards, and therefore subject to IEEE RAND obligations.  For its part, Innovatio disputed whether dozens of claims were in fact essential.

Late last week, Innovatio filed a brief supporting its arguments regarding the non-essentiality of certain asserted claims [LINK].  Innovatio argues that the WiFi Suppliers fail to apply the IEEE’s Patent Policy in making their determination of essentiality, rendering their contentions incorrect.Continue Reading Innovatio argues that WiFi Suppliers misinterpret IEEE definition of “essentiality,” scope of RAND obligations

In the aftermath of last week’s Microsoft-Motorola RAND-setting opinion, the case will now to proceed toward an August trial date.  At this trial — if it gets that far — either Judge Robart or a jury (this issue is still up in the air) will determine (1) whether Motorola breach its RAND obligations to the IEEE and ITU; (2) if a breach has occurred, whether Microsoft is entitled to damages as a result; and (3) the amount of any damages owed.  As we’ve noted before, Microsoft will likely seek summary judgment prior to trial, given the difference between Motorola’s opening 2.25% offer and the final RAND royalty rate set by Judge Robart.  But either way, the issues of breach of contract and potential damages remain in the case, and the parties are currently taking some limited discovery on these issues.

Yesterday, Motorola filed a letter motion with the court [LINK], asking it to limit the theories on which Microsoft may base its damages claims.  Motorola asserts that in recent weeks, Microsoft has significantly (and improperly) expanded its damages contentions in violation of the Federal Rules of Civil Procedure, prejudicing Motorola’s ability to prepare its own case.Continue Reading Motorola asks Washington court to limit Microsoft’s theories of damages for potential RAND breach

By now many of you have at least skimmed through Judge James L. Robart’s 207-page order setting RAND royalty terms for an 802.11- and H.264-essential patent license agreement between Motorola and Microsoft.  You may have noticed that there’s no table of contents (despite the opinion’s considerable length) — and who has the time to sift…

While InterDigital continues to press its claims of 3G- and 4G-essential patent infringement in the International Trade Commission against Huawei, Nokia, Samsung, and ZTE (Inv. No. 337-TA-868), the companies have also been fighting about FRAND-related issues in Delaware, where some of defendants have asserted FRAND-related counterclaims against InterDigital.  A few weeks back, we noted InterDigital had asked the court to dismiss Huawei and ZTE’s FRAND counterclaims, arguing that they were not ripe and were not properly pleaded, among other reasons.  Last Thursday, Huawei and ZTE filed their opposition to the motion to dismiss [LINK].
Continue Reading Huawei, ZTE tell Delaware court that their FRAND claims against InterDigital should not be dismissed

Much of the activity and attention in the standard-essential patent world over the last few days has been focused on Judge James L. Robart’s groundbreaking decision in the Microsoft-Motorola RAND breach of contract case.  But that wasn’t the only RAND-related bit of news happening this past Thursday — that same day, in the Federal Circuit, Apple filed its response to Motorola’s appeal of Judge Posner’s decision to deny both damages and injunctive relief to Motorola in a case involving Apple’s alleged infringement of Motorola standard-essential patents.

Due to the fact that the Federal Circuit has consolidated appeals by both parties, Apple’s brief is technically both a response brief and a reply brief — but we will only deal with the SEP-specific issues here.  In the brief, which we’ll delve into after the jump, Apple urges the Federal Circuit to uphold Judge Posner’s findings that, even if infringement could be proven: (1) Motorola failed to introduce a cognizable damages theory for infringement of the SEPs at issue; and (2) Motorola could not show entitlement to injunctive relief for its FRAND-encumbered patents.

Link: [Apple April 25, 2013 Appellate Brief]Continue Reading Apple asks Federal Circuit to affirm Judge Posner’s denial of injunctive relief and damages for Motorola FRAND-pledged standard-essential patents

As we noted yesterday, Judge James L. Robart’s groundbreaking opinion in the Microsoft v. Motorola breach of contract case was the first to set RAND licensing terms for a standard-essential patent portfolio.  While much of the focus in the media has been on the amount of RAND royalties determined by the court, it’s the methodology for determining these royalties has the potential to be truly important for future cases

To determine RAND terms in this case, Judge Robart analyzed what would occur in a hypothetical negotiation between Motorola and Microsoft for the 802.11- and H.264-essential portfolios at issue.  As in many patent-related cases, the court here used the factors outlined in Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970) formed the basis for this hypothetical negotiation.  But to account for the unique considerations present in the standard-essential patent RAND licensing context, Judge Robart modified the G-P factors somewhat — noting that “the parties in a hypothetical negotiation would set RAND royalty rates by looking at the importance of the SEPs to the standard and the importance of the standard and the SEPs to the products at issue.”  After the jump, we will take a closer look at Judge Robart’s modified Georgia-Pacific approach to determining RAND royalties.
Continue Reading Microsoft-Motorola follow-up: A look at Judge Robart’s modified Georgia-Pacific RAND methodology