It’s no surprise that most of the attention being paid to standard-essential patent issues is focused on the companies involved in the “smartphone wars” — Motorola, Microsoft, Apple. Samsung, etc. But while these consumer product companies are of course affected by issues involving standard-essential patents, so too are their component suppliers. A lawsuit filed this past fall in the Southern District of New York by Lotes Co. against Hon Hai Precision Industry Co. and Foxconn over SEP issues relating to the Universal Serial Bus (USB) 3.0 standard is a great example of this. Here, we attempt to provide a brief overview of the issues in the Lotes-Hon Hai case.
Continue Reading Catching up on…Lotes v. Foxconn RAND/antitrust dispute over USB 3.0 standard-essential patents
Samsung responds to Ericsson’s ITC complaint, accuses Ericsson of violating F/RAND obligations (337-TA-862)
We’ve previously covered the bilateral standard-essential patent battle brewing between Ericsson and Samsung in the U.S. International Trade Commission (as well as the Eastern District of Texas). The ITC has instituted two investigations surrounding the parties’ claims: Inv. No. 337-TA-862 (based on Ericsson’s complaint) and Inv. No. 337-TA-866 (based on Samsung’s complaint). Yesterday, Samsung filed the public version of its Response to the Complaint and Notice of Investigation (essentially, an answer to Ericsson’s complaint) in the -862 investigation. Below is an overview of this filing, in which (surprise!) F/RAND-related issues and defenses have a starring role.
Continue Reading Samsung responds to Ericsson’s ITC complaint, accuses Ericsson of violating F/RAND obligations (337-TA-862)
ITC begins evidentiary hearing on InterDigital’s 3G standard-essential patent infringement complaint against Huawei, Nokia, ZTE (337-TA-800)
This morning, at the U.S. International Trade Commission, the hearing commenced in In the Matter of Certain Wireless Devices with 3G Capabilities and Components Thereof (Inv. No. 337-TA-800) before presiding Administrative Law Judge David. P. Shaw. This case involves the ITC’s investigation into allegations brought by InterDigital that respondents Huawei, Nokia, and ZTE
Intellectual Ventures targets DSL providers in massive new patent infringement complaints
On Friday, February 8, noted and sometimes infamous patent aggregator Intellectual Ventures filed three large patent infringement complaints in the United States District Court for the Western District of Texas. In the complaints, Intellectual Ventures accuses several providers of Digital Subscriber Line (DSL) services of infringing 19 patents that, according to IV, “cover fundamental and important aspects of DSL technology and services.” The DSL providers targeted by IV in these suits include AT&T, SBC, CenturyLink, Embarq, Qwest, Savvis, Windsteam, and PAETEC.
Continue Reading Intellectual Ventures targets DSL providers in massive new patent infringement complaints
Apple: Federal Circuit has exclusive jurisdiction over Apple-Motorola FRAND/antitrust appeal
Yesterday Apple filed its opposition to Motorola’s motion to dismiss or transfer for lack of jurisdiction in Federal Circuit appeal No. 2013-1150. This is Apple’s appeal of Judge Crabb’s dismissal of the Apple-Motorola FRAND/antitrust action (W.D. Wis. No. 3:10-cv-00178)). Apple contends that the Federal Circuit has jurisdiction over Apple’s appeal of the dismissal of its declaratory judgment claims because (1) the hypothetical Motorola complaint at which Apple’s declaratory judgment claim was directed would be for patent infringement, and (2) the district’s court’s decision to dismiss the patent-specific DJ claims without prejudice does not deprive the Federal Circuit of jurisdiction. As we anticipated in our post on Motorola’s motion to dismiss/transfer, some of Apple’s arguments in its opposition raise some interesting questions about whether jurisdiction over this appeal will be consistent with past and potential future appeals of orders in the Microsoft-Motorola RAND case.
Continue Reading Apple: Federal Circuit has exclusive jurisdiction over Apple-Motorola FRAND/antitrust appeal
Microsoft-Motorola (W.D. Wash.) update: Court invalidates several claims of Motorola H.264-essential patents
In an order issued yesterday by the U.S. District Court for the Western District of Washington (that just hit the docket this afternoon), Judge James L. Robart granted Microsoft’s long-pending motion for partial summary judgment and invalidated thirteen claims of three patents Motorola alleged as essential to the AVC/H.264 video coding standard. Although this ruling stems from the infringement portion of the case, and the major issues between the parties involve the RAND breach of contract claims brought by Microsoft over Motorola’s entire 802.11 and H.264-essential patent portfolios, it’s possible that Judge Robart’s ruling could have some future effect on these RAND claims as well.
Continue Reading Microsoft-Motorola (W.D. Wash.) update: Court invalidates several claims of Motorola H.264-essential patents
Target dates set for Samsung-Ericsson, InterDigital ITC Section 337 SEP investigations
The statute that governs the U.S. International Trade Commission’s jurisdiction over patent infringement complaints requires the ITC to resolve its investigations into such complaints “at the earliest practicable time” Typically, ITC investigations will take anywhere from 12-18 months (depending on complexity, number of patents, etc.) from the institution of the investigation until the “target date,”
Non-practicing entity AIM IP files new infringement suits over VoIP standard-essential patent
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
Innovatio Update: Wi-Fi manufacturers’ RICO, unfair competition claims targeting Innovatio rejected, but RAND issues remain
We’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
En banc Federal Circuit to hold oral argument Friday regarding patentability of software patents (CLS Bank v. Alice)
This Friday, February 8, an en banc United States Court of Appeals for the Federal Circuit will hear oral arguments in CLS Bank Int’l v. Alice Corp. Pty. Ltd. (No. 2011-1301), the latest Federal Circuit case to deal with the patentability of software-related patents and so-called business methods. Given that the technologies claimed in many standard-essential patents are often implemented in standards-compliant products via software, the Federal Circuit’s holding in this case may have resounding consequences for the world of SEPs and SEP-related litigation.
UPDATE: The Federal Circuit issued an en banc decision holding the claims invalid. Please see our May 13, 2013 post for more details.