Earlier this week we noted that Huawei and ZTE have asked the ITC to stay its investigation into InterDigital’s complaint of 3G/4G standard-essential patent infringement. This was done in part because Huawei and ZTE have requested that the District Court of Delaware to expedite a determination of a FRAND rate for InterDigital’s patents. Yesterday, InterDigital filed virtually identical opposition briefs in both cases (Opp. to Huawei / Opp. to ZTE), in which it urged the court to deny the motions — arguing that it is improper for Huawei and ZTE “to seek a purely hypothetical and advisory opinion in the form of an expedited ‘FRAND rate’ determination” while still maintaining an ability to refuse to pay in the event the patents are later found invalid or non-essential/not infringed. This is an interesting issue surrounding FRAND licensing that has been the topic of much debate lately.
Continue Reading InterDigital calls Huawei/ZTE’s requests for expedited FRAND determinations “impractical” and “improper”
Motorola, Apple dispute relevance of recent Supreme Court case to FRAND jurisdictional dispute
A quick update for those interested in the Apple-Motorola Federal Circuit FRAND appeal:
Last week, the U.S. Supreme Court issued its opinion in Gunn v. Minton, where the Court determined that a plaintiff’s patent litigation-related state law malpractice claim did not “arise under” the federal patent laws and did not create federal jurisdiction under
ITC institutes investigation into Acacia subsidiary Adaptix’s 4G-essential complaint against Ericsson (337-TA-871)
Yesterday the U.S. International Trade Commission announced that it has instituted a Section 337 investigation titled Certain Wireless Communications Base Stations and Components Thereof, Inv. No. 337-TA-871. This investigation is based on a complaint filed on January 24, 2013 by Adaptix, Inc. (a subsidiary of noted publicly-traded non-practicing entity Acacia Research) against Ericsson. The
Huawei, ZTE seek stay of InterDigital 3G/4G ITC investigation
On Friday we posted about the Answers filed by the respondents in In the Matter Certain Wireless Devices with 3G and/or 4G Capabilities and Components Thereof (Inv. No. 337-TA-868) — the case better known as InterDigital’s ITC action against Huawei, Nokia, Samsung, and ZTE. And we’ve previously discussed how Huawei and ZTE are currently seeking an expedited determination of FRAND terms in Delaware district court, where they also expalined that they would seek to stay the ITC action. Today, Huawei and ZTE’s motion to stay the ITC investigation hit the docket (it was actually filed on Friday). Huawei and ZTE seek to halt the ITC investigation pending (1) the outcome of Inv. No. 337-TA-800 (involving the same parties and some of the same patents); and (2) a determination in Delaware of the terms of a FRAND license to InterDigital’s patents.
Continue Reading Huawei, ZTE seek stay of InterDigital 3G/4G ITC investigation
Microsoft-Motorola RAND case update: Microsoft accuses Motorola of violating the Google/FTC consent decree, and a potential H.264 license agreement in Germany
Even though the trial in the Microsoft-Motorola RAND dispute took place over three months ago, there’s been a lot going on in Washington lately. In addition to the arguments regarding the relevance of the Google-MPEG LA AVC/H.264 patent license agreement, recall that a couple weeks ago, Judge James L. Robart granted Motorola’s request to submit additional information that may be relevant to determining the RAND rate. Late Friday, both Motorola and Microsoft filed these documents with the court — documents that may actually raise more issues than they help resolve (and may ultimately have no bearing on Judge Robart’s decision).
Continue Reading Microsoft-Motorola RAND case update: Microsoft accuses Motorola of violating the Google/FTC consent decree, and a potential H.264 license agreement in Germany
Huawei/Samsung/ZTE answer InterDigital’s ITC complaint, assert FRAND-related defenses
Lately, there’s been a lot of activity in InterDigital-related cases, both in district courts and the ITC. Aside from the hearing in Inv. No. 337-TA-800 (scheduled to wrap up today), the respondents named in InterDigital’s latest complaint (Inv. No. 337-TA-868) — Huawei, Nokia, Samsung, and ZTE — filed their answers yesterday. Given InterDigital’s assertion of 3G/4G cellular standard-essential patents here, it comes as no surprise to see that in addition to customary patent infringement defenses, the respondents have asserted several FRAND-specific defenses. Below is a quick rundown of the FRAND-specific defenses asserted by the individual respondents.
Continue Reading Huawei/Samsung/ZTE answer InterDigital’s ITC complaint, assert FRAND-related defenses
Microsoft-Motorola judge orders additional briefing on how Google-MPEG LA license agreement may affect RAND terms for Motorola’s H.264 patents
Last week, Judge James L. Robart briefly reopened the trial record in the Microsoft-Motorola RAND breach of contract case, in order to allow the parties to submit additional evidence regarding the RAND rate for Motorola’s patents. Yesterday, Judge Robart issued another short minute order, this time allowing additional briefing on a different issue. Yesterday’s order concerns the terms of Google’s license with the MPEG LA AVC/H.264 patent pool, which Microsoft claims are dispositive of the appropriate RAND rate for Motorola’s H.264 patents. (For more background on this particular issue, see our earlier post on the parties’ briefing leading up to oral arguments.). Judge Robart has now allowed the parties to submit letter briefs of up to six pages by March 1 in light of certain “novel arguments” regarding the MPEG LA agreement that were apparently raised by the parties at the January 28 oral argument.
Continue Reading Microsoft-Motorola judge orders additional briefing on how Google-MPEG LA license agreement may affect RAND terms for Motorola’s H.264 patents
Apple, Motorola continue fight over Federal Circuit FRAND jurisdiction: Motorola’s Reply Brief
Today, Motorola Mobility filed a reply brief in support of its efforts to dismiss Apple’s Federal Circuit FRAND appeal (or at least transfer it to the 7th Circuit Court of Appeals). As you’ll recall, a few weeks ago, Motorola filed a unique motion to dismiss Apple’s appeal, claiming the Federal Circuit lacked jurisdiction because (for more info, see our original post on Motorola’s motion). Apple filed an opposition, asserting that the case was properly appealed to the Federal Circuit. In its relatively short reply, Motorola targets two particular assertions that Apple claims vest the Federal Circuit with jurisdiction: (1) that Apple’s declaratory judgment complaint was filed “in response” to a hypothetical complaint of patent infringement; and (2) that the dismissal of certain Apple claims without prejudice does not divest the Federal Circuit of jurisdiction.
InterDigital, Nokia ordered to produced FRAND-related and licensing documents in ITC case (337-TA-800)
As we noted earlier this week, the ITC is currently holding the evidentiary hearing in its investigation surrounding InterDigital’s 3G standard-essential patent infringement complaint against Nokia, Huawei, and ZTE (Inv. No. 337-TA-800). As with many ITC hearings, much of the information is kept out of the public record (and that’s particularly true for FRAND-related issues, where sensitive licensing data is often discussed). But today, the ITC just released the public version of Order No. 70, the confidential version of which originally issued way back in September 2012. In this order, ALJ David P. Shaw ordered InterDigital and Nokia to both produce various information relating to the FRAND affirmative defenses raised by Nokia in the case, including license agreements, license negotiation documents, and other documents relating to FRAND.
Continue Reading InterDigital, Nokia ordered to produced FRAND-related and licensing documents in ITC case (337-TA-800)
Apple urges Federal Circuit to eliminate or minimize “causal nexus” requirement for permanent injunctions
This isn’t a necessarily a standard-essential patent issue (and it’s been covered by many others such as IPLaw360 and Groklaw over the past couple days), but as something that could affect how parties enforce standard-essential patent rights in U.S. courts, we thought it’d be worth a quick post. Earlier this week, Apple filed its opening brief in its appeal of Judge Lucy Koh’s decision to deny Apple a permanent injunction against Samsung. In her post-trial decision applying the eBay analysis and denying an injunction, Judge Koh found that Apple failed to demonstrate a “causal nexus” between Samsung’s infringement of Apple’s utility and design patents and the irreparable harm to Apple (e.g., loss of market share and downstream sales). Apple argues in its brief to the Federal Circuit that there was no need for it to demonstrate such a causal nexus, and that even if there is, the evidence does show a nexus between infringement and irreparable harm.
Continue Reading Apple urges Federal Circuit to eliminate or minimize “causal nexus” requirement for permanent injunctions