On March 2, 2020, Judge Gilstrap issued an Order granting-in-part Apple’s motion to dismiss a declaratory judgment claim by Optis to the extent the claim related to FRAND commitments for foreign standard essential patents (SEPs). But he maintained the action as to FRAND commitments for U.S. patents. This decision may be part of a trend for U.S. courts respecting comity with other countries by limiting disputes over SEPs and FRAND commitments to U.S. patents in the absence of consent by both parties to adjudicate issues concerning foreign SEPs. Continue Reading Judge Gilstrap dismisses foreign SEP FRAND claims in global SEP feud, but maintains claims on US SEPs (Optic Wireless v. Apple)
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.
On January 29, 2020, Caltech prevailed in its Central District of California jury trial against Apple and Broadcom, where the jury found both Broadcom (who supplied WiFi chips) and Apple (who sold products with the Broadcom WiFi chips) infringed all five asserted claims of Caltech’s U.S. Patent Nos. 7,116,710, 7,7421,032, and 7,916,781, and awarded over $1.1 billion in total damages. The case marks what appears to be the largest verdict awarded on standard essential patents (SEPs) that were not subject to any standard-setting commitment (i.e., no RAND commitment).
The Jury Verdict shows that the jury found neither Broadcom nor Apple had willfully infringed any of the asserted claims and awarded Caltech running royalties in the amount of $837,801,178 for Apple’s infringement and $270,241,171 for Broadcom’s. The jury was not asked to make any findings on issues related to validity or any affirmative defenses or counterclaims, focusing solely on infringement and damages.
The parties currently are filing post-trial motions in which Apple/Broadcom are asking the trial court to enter judgment in their favor and overturn the jury verdict. The post-trial filings also include Caltech’s request for a permanent injunction. The trial court may decide those motions in the next couple months.
Oral Argument in the appeal of Judge Koh’s FTC v. Qualcomm decision is schedule to take place February 13, 2020 before the 9th Circuit Court of Appeals in San Francisco to consider whether and to what extent competition law should apply to licensing standard essential patents (SEPs). This appears to be the most important and impactful U.S. case so far on the issue and could have far reaching impact on domestic and foreign SEP licensing.
The Court will hear from Qualcomm and the U.S. Federal Trade Commission (FTC) and has also allotted the U.S. Department of Justice (DOJ) five minutes to present as amicus curiae during the argument. In addition to the parties-at-interest and DOJ, twenty-two amicus briefs have been lodged in the case by other companies, licensors, industry groups, academics, and interested parties. In fact, due to public interest in the case, the Ninth Circuit has created a separate website dedicate to the appeal, “to notify the media and public of procedures and rules for admission to proceedings, as well as access to case information.” The FTC also maintains its own website on the litigation that includes all the FTC’s filings and public statements regarding the proceedings.
In anticipation of the upcoming hearing, we’re provide this summary of the appeal issues and topics raised by the amicus briefs. As usual, we provide links to the filings and encourage you to read through them yourself. Continue Reading Ninth Circuit to Hear Argument Feb. 13 from FTC, DOJ and Qualcomm on Competition Law’s Applicability to SEP Licensing (FTC v.Qualcomm)
Today, the Unites States Patent & Trademark Office (“USPTO”), the U.S. Department of Justice, Antitrust Division (“DOJ”) and the National Institute of Standards and Technology (“NIST”) issued a joint “Policy Statement on Remedies For Standards-Essential Patents Subject To Voluntary F/RAND Commitments.” This policy statement supplants the prior 2013 joint policy statement on remedies of USPTO and DOJ that had been interpreted as being hostile to standard essential patents (“SEPs”), which DOJ already had withdrawn from some time ago. This new joint policy statement represents a significant change from that 2013 statement and has a more balanced approach to SEPs.
The general theme of this new joint policy statement, as informed by developments since 2013, is that there are no special rules for SEPs or different treatment of them from any other type of patent. Rather, decisions related to SEPs should follow traditional frameworks as informed by any specific standard-setting commitment made for the particular SEP at issue–e.g., a commitment to a standards body to license essential patents on fair, reasonable and non-discriminatory terms (“FRAND”).
Notably absent from this new joint policy statement is the Federal Trade Commission (“FTC”). Recall that the FTC currently has an internally divided Commission on applying competition law to SEPs. For example, the FTC case against Qualcomm was filed by a split Commission (2 to 1 vote) just days before the new administration was sworn-in and the FTC has been equally divided since then such that the FTC Staff has proceeded in that case without any policy guidance from the appointed Commissioners. Indeed, after FTC prevailed in that case at the district court level, one FTC Commissioner published views that the decision was wrong and bad for the United States and another FTC Commissioner took an opposing view. For its part, DOJ filed briefing that opposes the outcome of that case and was instrumental in convincing the Ninth Circuit in its appellate review of the decision to stay the district court’s decision because there is a likelihood that the decision and the FTC Staff’s positions were wrong.
In sum, there currently is joint consensus among all of the relevant U.S. federal agencies with expertise on SEP issues–DOJ, USPTO, NIST and FTC–except for a couple of individual FTC Commissioners.
Below is a summary of the new joint policy statement, which is relatively short (8 pages double-spaced) and we highly recommend that you read it for yourself.
The statement is appropriately caveated in the very first footnote to state that the “statement offers the views of the agencies only and has no force or effect of law.” The statement summarizes the relevant expertise of each of the three agencies as follows:
- The USPTO is the executive-branch agency charged with examining patent and trademark applications, issuing patents and registering trademarks, and–through the Secretary of Commerce–advising the President on domestic and certain international issues of intellectual property policy.
- NIST is the executive-branch agency charged with facilitating standards-related information sharing and cooperation among federal agencies and with coordinating federal agency participation in, and use of, private secdtor standards, emphasizing where possible the use of standards developed by private, consensus organizations, and–through the Secretary of Commerce–advising the President on standards policy pertaining to the nation’s technological competitiveness and innovation ability.
- The DOJ is the executive-branch agency charged with promoting and protecting competition for the benefit of American consumers.
The statement is “the joint view of the Agencies on the appropriate scope of remedies to advance those goals” of appropriate remedies “to preserve competition, and incentives for innovation and for continued participation in voluntary, consensus-based, standards-setting activities.” On this latter point, the statement has a clear warning in footnote 3 that anti-competitive activity by implementors to drive-down the cost of SEPs could lead to investigative efforts by DOJ, stating:
Regardless of a patent holder’s F/RAND commitments, under some circumstances, such as coordinated delay in agreeing to a license to drive down its cost, the DOJ could find such joinder conduct to cause competitive harm, for example, through the collective exertion of monopsony power over a patent holder.
The foregoing represents a concern repeatedly raised by the new DOJ administration that patent holdout by implementers who require an SEP license may be a bigger concern than patent holdup by the SEP patent owners.
The joint statement raises concerns that the prior 2013 Joint Statement by DOJ and USPTO was “misinterpreted to suggest that a unique set of legal rules should be applied in disputes concerning patents subject to F/RAND commitment that are essential to standards (as distinct from patents that are not essential).” The Agencies viewed that “[s]uch an approach would be detrimental to a carefully balanced patent system, ultimately resulting in harm to innovation and dynamic competition.” The statement again has informative substantive footnotes on the point. Footnote 9 explains that the 2013 Joint Statement may have been “misinterpreted to suggest that antitrust law is applicable to F/RAND disputes” and clarified that the U.S. International Trade Commission (“ITC”) considering “competitive conditions” as part of its statutorily required public interest analysis “does not signify that F/RAND licensing disputes raise antitrust concerns.” Footnote 10 further emphasizes that there are not special rules limiting remedies for SEPs, stating:
[T]here are no special rules limiting the remedies available for the infringement of any standards-essential patent, whether subject to a F/RAND commitment or not. Remedies for infringement of all standards-essential patents are determined pursuant to the prevailing judicial precedent and statutes on patent remedies according to the facts of each case, including the terms of the particular F/RAND commitment.
Given past misinterpretation of the 2013 Policy Statement, that prior statement is withdrawn and this new Policy Statement is provided for clarity:
[T]he USPTO and DOJ withdraw the 2013 policy statement, and together with NIST issue the present statement to clarify that, in their view, a patent owner’s F/RAND commitment is a relevant factor in determining appropriate remedies, but need not act as a bar to any particular remedy.
The joint statement encourages good faith bilateral negotiations to enter F/RAND license terms. Such negotiations should be conducted with the understanding that all remedies available to patents generally may be available for SEPs as informed by the particular circumstances presented on a case-by-case basis:
All remedies available under national law, including injunctive relief and adequate damages, should be available for infringement of standards-essential patents subject to a F/RAND commitment, if the facts of a given case warrant them. Consistent with the prevailing law and depending on the facts and forum, the remedies that may apply in a given patent case include injunctive relief, reasonable royalties, lost profits, enhanced damages for willful infringement, and exclusion orders issued by the U.S. International Trade Commission. These remedies are equally available in patent litigation involving standards-essential patents. While the existence of F/RAND or similar commitments, and conduct of the parties, are relevant and may inform the determination of appropriate remedies, the general framework for deciding these issues remains the same as in other patent cases.
The statement then summarizes U.S. court decisions to date which are consistent with “[t]he rejection of a special set of legal rules that limit remedies for infringement of standards-essential patents subject to a F/RAND commitment.” Rather, “general laws” still apply equally to SEPs and other patents that–importantly–is informed by all relevant facts, including any F/RAND commitment, conduct of the parties, etc.
The statement then concludes with a summary that applying general patent laws applicable to all patents to SEPs–rather than carving out special rules for SEPs–as informed by the particular circumstances of a specific case will “preserve competition and incentives for innovation,” stating:
In the Agencies’ view, courts–and other relevant neutral decision makers–should continue to determine remedies for infringement of standards-essential patents subject to F/RAND licensing commitments pursuant to general laws. A balanced, fact-based analysis, taking into account all available remedies, will facilitate, and help to preserve competition and incentives for innovation and for continued participation in voluntary, consensus-based, standards-setting activity.
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 used by Judge Selna that captured the world’s attention, at this point, is now more a footnote on U.S. Constitutional law on the right to jury trial in patent cases.
Our January 3, 2018 post summarizes Judge Selna’s bench trial decision and our February 13, 2018 post explained some minor changes he made to it. We provide below a very quick summary of what the Federal Circuit’s decision means for this case, leaving detailed reading of the decision to those interested in the right to jury trial in patent cases under the U.S. Constitution.
The Federal Circuit explained that there were four determinations made by Judge Selna in his bench trial that are at issue:
- Judge Selna’s determination “that Ericsson’s proposed terms to TCL were not FRAND.”
- Judge Selna “set[ting] a prospective FRAND royalty rate for TCL’s future use of Ericsson’s SEPs, relying on a combination of methodologies, including its own modified version of TCL’s proposed top-down approach and comparable licenses.”
- Judge Selna “set[ting] a “release payment for TCL’s past unlicensed sales” by “adjusting its calculated prospective FRAND royalty rate.”
- Judge Selna’s “dismissal of Ericsson’s patent infringement claims and TCL’s related counterclaims of invalidity and non-infringement as moot in light of the relief granted in the release payment, because any damages amount from those infringement claims were already subsumed in the release payment determination.”
The Federal Circuit resolved all these issues based on Ericsson’s constitutional challenge of a right to jury trial:
Because we conclude that the release payment is in substance compensatory relief for TCL’s past wrongs (i.e., practicing Ericsson’s patented technologies without a license), we hold that the district court deprived Ericsson of its constitutional right to a jury trial on that legal relief by requiring that Ericsson adjudicate that relief in a bench trial.
The Federal Circuit then went through the constitutional analysis of right to a jury trial, which we leave for you to read yourself. After deciding that Ericsson had a right to jury trial on the monetary relief for past unlicensed infringement, the Federal Circuit explained that it was vacating Judge Selna’s decision and remanding for a jury trial:
Accordingly, we vacate the district court’s determination of the release payment, including the underlying question of whether Ericsson’s Option A and Option B offers that include the release payment term are FRAND. We also vacate the court’s determination that Ericsson’s offers are not FRAND and its determination of prospective FRAND royalty rates because both determinations were predicated on common issues to the improperly decided release payment. Because the release payment will be re-decided by the jury, we reverse the dismissal of Ericsson’s patent infringement claims and TCL’s related counterclaims of invalidity and non-infringement as no longer moot. Finally, we remand all above determinations for further proceedings consistent with this opinion.
Today, the Ninth Circuit issues an Order that stays Judge Koh’s injunction entered in the FTC v. Qualcomm case in order to maintain the status quo so that the Ninth Circuit can decide whether Judge Koh’s “order and injunction represent a trailblazing application of the antitrust laws, or instead an improper excursion beyond the outer limits of the Sherman Act”, which is not decided by this Order but “is a matter for another day.”
We provide a summary of the ruling below and, as always, recommend reading the 7-page Order for yourself (see link in first sentence above). The Ninth Circuit has not decided the substantive issues–that will be done on “another day”–but did indicate that Qualcomm had raised meritorious arguments that (1) Qualcomm was not required to license its SEPs to rival chip suppliers and (2) Qualcomm could assess royalties on its SEPs on a per-handset basis (rather than based on modem chip component of the handset).
As far as next steps, the parties and interested amicus on all sides of the issue are preparing briefing on an expedited schedule in preparation for a hearing at the Ninth Circuit in January 2020. Continue Reading Ninth Circuit Stays Judge Koh’s Injuncton in the FTC v. DOJ Competition Brawl (FTC v. Qualcomm)
And the dance has officially begun in the U.S. inter-governmental dispute about applying competition law to the technical standard setting process between the U.S. Federal Trade Commission (FTC) and U.S. Department of Justice (DOJ) and we all have an invitation to the brawl. DOJ filed an Amicus Brief that supports Qualcomm’s request that the Ninth Circuit stay the injunction entered by Judge Koh in the FTC v. Qualcomm case until the Ninth Circuit decides whether the district court’s ruling was correct (see our May 22, 2019 post on Judge Koh’s injunction).
Recall that, from the outset of this case filed three-days before the change in administration, the FTC Commission has been evenly split on whether the case should have been filed and pursued, which has left the FTC Staff to be good soldiers following their original orders from the prior administration without guidance from the appointed commissioners. (see our February 7, 2019 post on background of case). In contrast, DOJ’s Antitrust Division, under the guidance of Assistant Attorney General (AAG) Makin Delrahim in the new administration, has announced clear policy positions on the application of competition law to technical standard setting activity. This has led to escalating public disagreement between DOJ giving leadership in this area and FTC Staff being good soldiers following old orders in the absence of current leadership.
Polite public innuendo of differences has now escalated to outright public disagreement. And two other government agencies now publicly support DOJ’s views in this particular case given U.S. national security concerns: U.S. Department of Defense and U.S. Department of Energy. Yet the FTC Commissioners apparently still remain unable to provide guidance on even the simpler issue of whether the district court’s remedy at least should be stayed until the Ninth Circuit in an expedited schedule decides whether the district court’s decision and remedy are correct and in the public’s interest.
Below is a summary of DOJ’s amicus brief supporting a stay of the district court’s injunction and, as always, we provide a link to DOJ’s amicus brief and encourage you to read it for yourself.
DOJ Amicus Brief Sumary
DOJ’s opening paragraph sets the stage for its position as follows:
The district court’s ruling threatens competition, innovation, and national security. Its liability determination misapplied Supreme Court precedent, and its remedy is unprecedented. Immediate implementation of the remedy could put our nation’s security at risk, potentially undermining U.S. leadership in 5G technology and standard-setting, which is vital to military readiness and other critical national interests. Accordingly, Qualcomm has a likelihood of success on the merits, and the public interest favors a stay.
DOJ provides a short background emphasizing that “Qualcomm is ‘the current leading company in 5G technology'” and that “U.S. leadership in 5G technology and standard-setting is critical to national security.” This includes needing a “trusted supplier” for “new military capabilities” and having “secure and advanced wireless communications” for the U.S. “energy and nuclear infrastructure.” Reducing Qualcomm’s leadership in 5G “even in the short-term” could significantly impact U.S. national security “by enabling foreign-owned firms to expand their influence.” DOJ then took issue with the district court imposing a “broad remedy” without having “a separate remedy hearing.”
Qualcomm Likely to Succeed on Liability on Appeal
DOJ argues that “central aspects of [the district court’s] analysis contradict established antitrust principles.”
First, DOJ argues that the district court “failed to identify a harm to the competitive process as required under Section 2 of the Sherman Act,” because, even if Qualcomm charged “unreasonably high royalty rates” from a “no license, no chips” policy, that does not establish harm to the competitive process: “[c]harging high prices is not anticompetitive.”
Second, DOJ argues that the district court’s imposition of a duty to license other chip suppliers–i.e., a “duty to deal”–was an unsupported extension of the Supreme Court’s Aspen Skiing decision that itself was “at or near the outer boundary” of liability. Unlike Aspen Skiing, Qualcomm’s contractual FRAND commitment was not a “truly voluntary[y]” agreement to license other chip manufacturers: “Qualcomm’s compliance with its legally binding FRAND obligations does not signal a voluntary course of dealing.” DOJ expressed concern that the district court’s ruling “can chill participation in standard-setting activity” that to date has been guided by the principle that “the antitrust laws do not negate the patentee’s right to exclude others from patent property.” Further, Qualcomm’s conduct was not shown to be “irrational but for its anticompetitive effect”, that is, the goal of the refusal to deal was not shown to be for the purpose of “adverse[ly] impact[ing] … a rival.” Rather, Qualcomm’s conduct “increased, rather than forsook, short-term profits,” indicating that its goal was profit and not to adversely impact a rival.
Third, DOJ argues that the district court erroneously held that Qualcomm acted out of anticompetitive malice. Intent is no “substitute for evidence of anticompetitive effects” because “[m]istaking legitimate business goals for anticompetitive ones risks chilling the very competition that antitrust law stands to protect.” Here, the district court “fail[ed] to distinguish between desire for profit and anticompetitive intent.” Further, the district court erroneously viewed Qualcomm’s decision to license at the end device level “as contrary to patent law and driven by the desire to harm competition.” Several SEP holders license only end devices and another district court recently held that licensing end products complies with a FRAND commitment. (see our May 25, 2019 post on HTC v. Ericsson).
Qualcomm Likely To Succeed On Remedy On Appeal
DOJ also argues that the district court’s remedy was overbroad and should be vacated because it is “not justified by antitrust law.”
First, the district court’s remedy “mistakenly converted a potential contractual breach [of a FRAND commitment] into a Sherman Act violation” that “[c]onvert[ed] contractual commitments into compulsory licenses, policed by treble-damages lawsuits” that will “undermin[e] important incentives for innovation by reducing the expected rewards below those that FRAND licensing permits.” Basically the threat of antitrust lawsuits and trebled damages may give undue leverage to prospective licensees that will cause patent owners to accept royalty rates below what they otherwise would be entitled under their FRAND commitment.
Second, the district court’s remedy was “unbounded” in scope without having the benefit of an evidentiary hearing and without considering “potential adverse impacts on competition and innovation.” For example, “other SEP owners license their patents in a similar manner to Qualcomm” so the order “will influence the behavior of many participants in 5G” and “impact competition and innovation therein.” Further, the remedy lacks territorial limitations and broadly covers activity outside the U.S. that may be addressed by competition authorities in other countries.
Public Interest Favors A Stay
DOJ argues that the district court’s remedy is “likely broader than necessary” and “risks harming rather than benefitting consumers.” Even near term “it will dramatically change longstanding licensing practices and limit Qualcomm’s ability to invest in R&D and standard-setting.” The district court’s remedy “is intended to deprive, and risks depriving, Qualcomm of substantial licensing revenue that could otherwise fund time-sensitive R&D and that Qualcomm cannot recover later if it prevails.”
Further, the remedy raises significant national security concerns:
In the view of the Executive Branch, diminishment of Qualcomm’s competitiveness in 5G innovation and standard-setting would significantly impact U.S. national security. Qualcomm is a trusted supplier of mission-critical products and services to the Department of Defense and the Department of Energy. Accordingly, the Department of Defense “is seriously concerned that any detrimental impact on Qualcomm’s position as global leader would adversely affect its abiity to support national security.”
The Department of Defense “firmly believes … that any measure that inappropriately limits Qualcomm’s technological leadership, ability to invest in [R&D], and market competitiveness, even in the short-term, could harm national security. The risks to national security include the disruption of [the Department’s] supply chain and unsure U.S. leadership in 5G.”
Thus, a stay of the remedy is prudent until the Ninth Circuit determines whether it was properly entered in the first instance in order to “prevent even a risk to national security.”
Last week, Judge Gilstrap ruled that Ericsson’s end-product-based “offers to HTC–$2.50 or 1% with a $1 floor and a $4 cap per 4G device–were fair, reasonable and non-discriminatory.” Judge Gilstrap found that the comparable licenses presented by Ericsson to be “the best market-based evidence” of the value of Ericsson’s standard essential patents (SEPs) and that “the market evidence, in the form of comparable licenses, has failed to embrace HTC’s preferred SSPPU [smallest salable patent-practicing unit] methodology.” He noted that there was no evidence that industry licenses are negotiated based on the cost of a baseband chip (the alleged smallest saleable patent practicing unit or SSPPU) and evidence showed that the value of SEPs can exceed the value of the chip, which price does not include the cost if that intellectual property. This SEP cases is one of the closest to capturing what actually happens in the licensing market with FRAND-committed SEPS, rather than generating new litigation-based theories on valuing SEPs (e.g., top-down analysis). This decision also is at odds in many respects with the decision by Judge Selna in the TCL v. Ericsson case that currently is on appeal at the Federal Circuit (see our Jan. 3, 2018 post summarizing that decision). Continue Reading Judge Gilstrap rules Ericsson’s licensing offers were FRAND-compliant (HTC v. Ericsson)
Yesterday, Judge Koh of the U.S. District Court Northern District of California entered a Judgment following the January 2019 trial based on her Findings of Fact and Conclusions of Law that Qualcomm violated the Federal Trade Commission Act. This is a lengthy, 233 page decision and we will provide a summary soon, but provide now a link to the decision given its importance to 5G and other technologies involving standard essential patents (SEPs). The next step is that Qualcomm, potentially the Federal Trade Commission (FTC ) (which did not get all the remedies it sought) and amicus such as the U.S. Department of Justice (DOJ), may file post-judgment briefing in the district court seeking to alter the decision.
Below is a list of Judge Koh’s summary of the injunctive relief that she will enter (if not altered after post-judgment briefing):
- Qualcomm must not condition the supply of modem chips on a customer’s patent license status and Qualcomm must negotiate or renegotiate license terms with customers in good faith under conditions free from the threat of lack of access to or discriminatory provision of modem chip supply or associated technical support or access to software.
- Qualcomm must make exhaustive SEP licenses available to modem-chip suppliers on fair, reasonable, and non-discriminatory (“FRAND”) terms and to submit, as necessary, to arbitral or judicial dispute resolution to determine such terms.
- Qualcomm may not enter express or de facto exclusive dealing agreements for the supply of modem chips.
- Qualcomm may not interfere with the ability of any customer to communicate with a government agency about a potential law enforcement or regulatory matter.
- In order to ensure Qualcomm’s compliance with the above remedies, the Court orders Qualcomm to submit to compliance and monitoring procedures for a period of seven (7) years. Specifically, Qualcomm shall report to the FTC on an annual basis Qualcomm’s compliance with the above remedies ordered by the Court.