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
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
Huawei, ZTE seek expedited FRAND determinations in InterDigital 3G/4G standard-essential patent dispute
In early January, InterDigital filed a Section 337 complaint in the U.S. International Trade Commission against Huawei, Nokia, Samsung, and ZTE, accusing those companies’ 3G/4G-compliant smartphones and tablets of infringing several InterDigital patents (this is now ITC Inv. No. 337-TA-868). Because the ITC cannot award monetary relief, it’s common for complainants to also file corresponding infringement actions in district court, which InterDigital did here in the District of Delaware. In order to relieve ITC respondents from the burden of litigating in multiple venues simultaneously, 28 U.S.C. § 1659 allows respondents to seek a mandatory stay of the district court action pending the outcome of the ITC case. Generally, respondents seek such a stay. But here, neither Huawei nor ZTE have sought a stay — in fact, they have asked the Delaware district court to expedite discovery on FRAND issues. It’s an interesting strategic move in which they leverage recent guidance from government agencies and other pending litigation, and it’s a strategy that (if successful) may be followed by many more ITC respondents in the future.
Continue Reading Huawei, ZTE seek expedited FRAND determinations in InterDigital 3G/4G standard-essential patent dispute
E.D. Texas court ruling shows “system-on-a-chip”-based infringement accusations can satisfy AIA’s joinder rules (U.S. Ethernet v. Samsung)
It’s well-known that concerns about patent assertions by non-practicing entities were part of the impetus for the America Invents Act of 2011. In order to prevent multiple unrelated defendants from being added to the same infringement suit on the sole basis that they are accused of infringing the same patent, the AIA added the so-called “misjoinder” provision (35 U.S.C. § 299) to the patent laws. Briefly, Section 299 provides that defendants are properly joined if (1) infringement is asserted against the defendants based on the same transaction or occurrence or as to the same accused product or process, and (2) questions of fact common to all defendants will arise in the action. Over the past year and a half, courts have been grappling with evaluating whether otherwise unrelated defendants are properly joined in infringement actions. In his recent ruling in an Eastern District of Texas case involving IEEE 802.3 Ethernet technology, Magistrate John D. Love held that standards-compliant system-on-a-chip (SoC) suppliers may be properly joined with their customers under Section 299.
Continue Reading E.D. Texas court ruling shows “system-on-a-chip”-based infringement accusations can satisfy AIA’s joinder rules (U.S. Ethernet v. Samsung)
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
RANDomness: NPE Edition
- InformationWeek brings us the story of
Ashford.com’sEmob’s fight against Cronos Technologies, a well-known NPE, over a patent related to a “remote ordering system.” (InformationWeek) - Google’s Senior Vice President & General Counsel Kent Walker wrote an opinion piece for Politico, making the case for the Obama administration’s second term to include additional
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
American Antitrust Institute supports USPTO’s proposal for requiring more patent ownership transparency
In a letter sent to the U.S. Patent & Trademark Office late last week, the American Antitrust Institute expressed its approval of the USPTO’s plan to implements rules requiring patent holders to provide more transparency regarding ownership interests in patents and patent applications. The AAI’s letter claims that, among other considerations, these transparency provisions would have positive effect on the licensing of standard-essential patents and in helping companies deal with assertions for patent assertion entities or non-practicing entities.
Continue Reading American Antitrust Institute supports USPTO’s proposal for requiring more patent ownership transparency