On April 3, 2020, Judge Selna issued an Order in the TCL v. Ericsson case upon remand from the Federal Circuit, teeing the matter up for a jury trial on all liability and FRAND issues in the case to be heard at the same time
Continue Reading Judge Selna will hold jury trial on all SEP issues on remand (TCL v. Ericsson)

On February 18, 2020, ALJ McNamara issued an Initial Determination on Violation in INVT SPE’s ITC case against Respondents Apple, HTC, and ZTE, finding INVT SPE failed to show a violation of Section 337 of the Tariff Act of 1930. The ALJ found no asserted claims were infringed, no claims were invalid, there was no requisite domestic industry, and, of particular interest to our readers, that none of the asserted patents are essential to 3G or LTE standards.  

On April 3, ALJ McNamara issued a Recommendation on the Public Interest and Remedy, which is confidential.  We expect a public version of that ruling in the coming weeks.  Even though ALJ McNamara ruled that the patents were not essential nor infringed, the ITC procedural rules require in all cases that the ALJ also issue a recommendation on public interest and remedy because the decision will be reviewed by the full ITC Commission, which could disagree with the ALJ on infringement and address the public interest/remedy issues.  Under the current schedule, the ITC has until May 18, 2020 to determine whether to review ALJ McNamara’s decision.  The ITC is soliciting public comments due by May 5 regarding the impact on the public interest from an exclusion or cease-and-desist order on 3G and LTE enabled devices at issue.


Continue Reading Judge McNamara finds INVT patents are not essential, will issue comments on FRAND commitments (INVT v. Apple, 337-TA-1138)

Today the Federal Circuit vacated Judge Selna’s bench trial decision in the much-watched TCL v. Ericsson case, ruling that Ericsson has the right to a jury trial to  determine  compensation for past infringement of Ericsson’s standard essential patents (SEPs) under the Seventh Amendment of the U.S. Constitution.  So this case involving a FRAND computation method

Yesterday, the U.S. Department of Justice (DOJ) Assistant Attorney General (AAG) for the Antitrust Division Makan Delrahim spoke  in Brussels about maintaining a close working relationship and coordination with European Union’s Directorate General for Competition (DG Competition) in competition law enforcement.  AAG Delrahim’s remarks included suggestion that the European competition authorities shift toward the more balanced  approach to standard essential patents (SEPs) that he recently articulated for the U.S. (See our Dec. 20, 2017 post on AAG Delrahim’s remarks on shift in U.S. DOJ’s SEP enforcement approach).  Some key points in AAG Delrahim’s remarks include:

  • “I believe that strong protection of these [IP] rights drives innovation incentives, which in turn drive a successful economy.”
  • “I worry that we have strayed too far in the direction of accommodating the concerns of technology licensees who participate in standard setting bodies, very likely at the risk of undermining incentives for the creation of new and innovative technologies.”
  • The tension between innovators and implementers “is best resolved through free market competition and bargaining.  And that bargaining process works best when standard setting bodies respect intellectual property rights … including the very important right to exclude.”
  • If a patent owner violates a standard-setting commitment, “remedies under contract law, rather than antitrust remedies, are more appropriate to address licensee’s concerns.”

Below is a a complete excerpt of AAG Delrahim’s remarks in Brussels with respect to intellectual property and SEPs:
Continue Reading U.S. DOJ Antitrust Head Makan Delrahim brings his message of balanced SEP competition law enforcement to Europe

You will soon see a new and improved Essential Patent Blog.  Let us know if there are features about the blog you would like to see, change or omit.  One of the blog features under review is our “Resources” section where we list scholarly papers, articles and other resources dealing with standard essential patents.  We want to update that list of resources.  So please let us know if you have a paper or other resources that would warrant posting as a “Resource”.

For example, we just added papers submitted for an AIPLA presentation a few weeks ago on litigating standard essential patents at the U.S. International Trade Commission (ITC), where we discussed the ITC as a unique agency and unique procedural issues in litigating SEPs at the ITC.


Continue Reading Help us help you …

Today, the Federal Circuit issued a ruling in Lighting Ballast v. Philips on remand from the Supreme Court after the Teva decision changed the standard of review of a district court’s claim construction.  One of the more interesting parts of the case concerns the Federal Circuit’s deference now to the district court’s decision premised on

A significant portion of the international patent wars between Apple and Samsung have been brought to a close, according to a joint statement issued by the parties:

Apple and Samsung have agreed to drop all litigation between the two companies outside the United States. This agreement does not involve any licensing arrangements, and the companies

Yesterday the U.S. International Trade Commission (ITC) issued a Notice that it was terminating the investigation of whether certain LSI 802.11 and H.264 alleged standard essential patents were infringed by Realtek and others given various circumstances that mooted the investigation as to most patents and a finding of no liability for the remaining patent.  In

Yesterday, the jury in the Realtek v. LSI case before Judge Whyte returned a verdict finding that a RAND royalty for LSI’s two patents alleged essential to IEEE 802.11 WiFi standard would total about 0.19% of the total sales prices of Realtek’s WiFi chips (0.12% for one patent plus 0.07% for the other).  This RAND