Late last week, Motorola Mobility filed its Responsive and Opening Brief in Federal Circuit Appeal No. 2012-1548 (the appeal from Judge Posner’s June 2012 decision to dismiss competing infringement claims in a case between Apple and Motorola). We’ve previously discussed the large number of amicus briefs filed with the Federal Circuit by a wide variety of parties addressing the issues of damages and injunctive relief with respect to standard-essential patents. Here, Motorola characterizes Apple as an “unwilling licensee” who wants to change the rules of how standard-essential patent licensing has long been done in the cellular industry. Motorola claims that Judge Posner’s rulings — which barred injunctive relief for Motorola’s FRAND-pledged standard-essential patent at issue, and limited damages to ex ante (pre-standard) value of the patent — “devalue essential patents,” “upset the settled expectations” of patent holders who contribute to industry standards, and “create disincentives” to participate in standard-setting activities.
Continue Reading Motorola tells Federal Circuit Judge Posner’s ruling would inappropriately create a “categorical rule” against standard-essential patent injunctions
Delaware district court denies motion to expedite FRAND determination in InterDigital case
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
ITC again extends target date in Samsung-Apple case (337-TA-794), asks for additional public interest comments and party briefing
If there was any doubt about the importance of standard-essential patent issues at the ITC, we can certainly put that to rest. For the second time in a week, the Commission issued a Notice extending the target date for its Final Determination in Inv. No. 337-TA-794, the Section 337 investigation based on Samsung’s August 2011 complaint against Apple. But unlike its last brief extension, the ITC this time extended its deadline until May 31, 2013 — and requested additional comments on the public interest and briefing from the parties on several issues.
The Commission’s particular questions (reproduced after the jump) show just how seriously the ITC is taking standard-essential patent issues. Additionally, the content of these questions may imply that the Commission could be leaning toward a finding that Apple infringes U.S. Patent No. 7,706,348 — a patent that Samsung has alleged is essential to the UMTS 3G cellular standard — and is now trying to decide what if any remedy it should order.Continue Reading ITC again extends target date in Samsung-Apple case (337-TA-794), asks for additional public interest comments and party briefing
ALJ denies motion to stay InterDigital ITC case pending potential FRAND determination
Late yesterday, Administrative Law Judge Robert K. Rogers issued an order denying the motion brought by Huawei and ZTE (later joined by Nokia) to stay ITC Inv. No. 337-TA-868 pending the outcome of a potential FRAND determination in the District of Delaware. As we noted in our initial post on this motion, this is not altogether surprising, given the ITC’s statutory mandate to decide cases quickly. So it looks like InterDigital’s latest standard-essential ITC case will stick with the procedural schedule on a path to a December 2013 hearing. Huawei and ZTE’s quest to avoid a potential exclusion order, meanwhile, will shift to the Delaware district court, where they recently told the court that it could enjoin InterDigital from enforcing any ITC exclusion order on its SEPs until FRAND issues are resolved.
The order itself is confidential, but the screenshot below shows
Continue Reading ALJ denies motion to stay InterDigital ITC case pending potential FRAND determination
Huawei, ZTE claim that without FRAND determination, InterDigital will “perpetuate an endless cycle of ITC litigation” over standard-essential patents
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
Ericsson to ITC: Samsung breached its ETSI FRAND obligations for asserted 4G LTE patents (Inv. No. 337-TA-866)
On Friday, March 8, Ericsson filed the (redacted) public version of its answer to Samsung’s Complaint and the Notice of Investigation in In the Matter of Certain Wireless Communications Equipment and Articles Therein (Inv. No. 337-TA-866). This ITC Section 337 investigation is based on a January 2013 complaint from Samsung that alleges Ericsson’s 4G LTE-compatible base stations infringe several Samsung LTE-essential patents.
Given Samsung’s assertion of standard-essential patents, it’s no surprise that Ericsson’s complaint includes FRAND-based defenses.
Continue Reading Ericsson to ITC: Samsung breached its ETSI FRAND obligations for asserted 4G LTE patents (Inv. No. 337-TA-866)
ITC Staff opposes motion to stay pending FRAND determination in InterDigital Section 337 investigation (337-TA-868)
Yesterday we covered InterDigital’s opposition to Huawei, Nokia, and ZTE’s efforts to stay the ITC’s investigation into InterDigital’s latest Section 337 complaint pending a potential FRAND determination in the District of Delaware. We also noted that the other respondent, Samsung, did not join the motion but stated that it did not oppose such a stay. The ITC Investigative Staff from the Office on Unfair Important Investigations (a third party that participates in many ITC investigations as a representative of the public interest) also filed its own response to the motion yesterday. The Staff opposes the motion to stay for a variety of reasons, which we will get into below.
Continue Reading ITC Staff opposes motion to stay pending FRAND determination in InterDigital Section 337 investigation (337-TA-868)
ITC delays Final Determination in Samsung-Apple standard-essential patent investigation until March 13
Today was the target date for the ITC’s Final Determination in In the Matter of Certain Electronic Devices, Including Wireless Communication Devices, Portable Music and Data Processing Devices, and Tablet Computers (Inv. No. 337-TA-794). But today, the Comission issued a notice to extend the target date for completion of the investigation until next
InterDigital opposes Huawei/Nokia/ZTE’s efforts to stay ITC investigation, saying motion is “based on speculation upon speculation”
Yesterday, InterDigital filed its opposition to Huawei & ZTE’s motion (later joined by another respondent, Nokia) to stay Inv. No. 337-TA-868, which is the ITC’s investigation into InterDigital’s 3G/4G standard-essential patent infringement-based Section 337 complaint. Much as it did in its prior opposition to Huawei/ZTE’s attempts to seek an expedited FRAND determination in Delaware district court, InterDigital here claims that nothing in the motion to stay counsels staying the investigation pending a determination of FRAND terms in Delaware — in fact, InterDigital attached its opposition to expedite the Delaware proceedings as an exhibit to its ITC stay opposition. After the jump, we’ll provide a brief summary of InterDigital’s arguments against staying the ITC case.
InterDigital wasn’t the only one filing papers in this case yesterday, though — Samsung also filed a response to the motion to stay. Samsung’s position is, succinctly, that “[w]hile Samsung does not join the Motion, Samsung does not oppose the requested stay.” (You may recall that Samsung has its own motion to terminate some of InterDigital’s infringement claims pending in this case).Continue Reading InterDigital opposes Huawei/Nokia/ZTE’s efforts to stay ITC investigation, saying motion is “based on speculation upon speculation”
Microsoft, Motorola submit final arguments to Washington court on the relevance and effects of Google-MPEG LA AVC/H.264 agreement to a Microsoft-Motorola RAND license
A couple of weeks ago, we noted a peculiar minute order emanating from Judge James L. Robart’s courtroom in the Microsoft-Motorola RAND case. Based on his review of Google’s AVC/H.264 standard-essential patent pool license agreement with MPEG LA, Judge Robart asked the parties to submit short letter briefs addressing two questions regarding the relevance of the Enterprise License provision (Section 3.1.7) to any grantback license that Motorola (as a subsidiary of Google) might owe to Microsoft.
Late Friday, the parties submitted their respective answers to the court’s questions (Microsoft’s / Motorola’s). The parties’ answers and arguments show just how millions of dollars in royalties could turn on the interpretation of just a couple of short phrases in the MPEG LA agreement. After the jump, we’ll provide a short summary of both Microsoft’s and Motorola’s positions. Essentially, though, the parties’ arguments boil down to this — Was the MPEG LA agreement’s grantback provision designed to extend to all affiliates of a given licensee, whether those affiliates receive any benefits under the agreement or not?Continue Reading Microsoft, Motorola submit final arguments to Washington court on the relevance and effects of Google-MPEG LA AVC/H.264 agreement to a Microsoft-Motorola RAND license