If all of these InterDigital-related FRAND issues seem hard to keep track of, they are — InterDigital is currently suing Huawei, Nokia, Samsung, and ZTE all in a single ITC action (337-TA-868) and in separate parallel actions in Delaware (as well as some of the same parties in a different ITC case, 337-TA-800, where an Initial Determination is due next month).  In the Delaware district court cases, Huawei and ZTE are jointly addressing FRAND issues, but Nokia and Samsung are taking their own separate paths.  But one thing remains in common in all of the cases — InterDigital is trying to dismiss the defendants’ FRAND-related counterclaims.  Last month, it moved to dismiss Nokia’s FRAND counterclaims.  Yesterday, Nokia filed its brief opposing this motion.

[Nokia Opp to MTD FRAND Claims]

Nokia’s arguments boil down into five main categories: (1) its FRAND counterclaims are compulsory in this action, and the presence of earlier-filed cases between the parties does not mandate dismissal here; (2) its declaratory judgment claims are ripe and not merely advisory; (3) its breach of contract claims were properly pleaded, and ambiguity regarding scope and relief does not mandate dismissal; (4) its promissory estoppel and implied license claims are valid; and (5) it has alleged a violation of California state unfair competition law, in part because Nokia imports products into ports in California.

Many of Nokia’s FRAND-related claims and arguments overlap with Huawei’s and ZTE’s [see here and here], so we’ll allow you to read Nokia’s brief and won’t go over well-tread ground here.  But it is worth noting Nokia’s argument regarding the effect of prior actions between the parties.  While InterDigital argued that Nokia’s FRAND claims were compulsory in these earlier-filed actions and should have been filed there, Nokia points out that both of those cases were stayed before a responsive pleading was required to be filed — and will remain stayed at least until two pending ITC investigations are resolved.  Additionally, Nokia notes that 4G-related patents were not present in the earlier actions, and forum-shopping issues are not a problem, because all of the cases are in Delaware.  Thus, according to Nokia, the relatively advanced state of this case and judicially efficiency mandates that the court deny InterDigital’s motion and decide the FRAND issues here.

Yesterday Entropic Communications, a designer and maker of semiconductors and “system-on-a-chip” (SoC) technology, filed a patent infringement action against fellow SoC maker ViXS Systems in district court in the Southern District of California.  Entropic alleges that ViXS infringes two patents that are essential to the home entertainment networking standards developed and promulgated by the Multimedia Over Coax Alliance, also known as the MoCA family of standards or MoCa specifications (MoCA is a trade group, not a recognized SSO or SDO, so some do not like to refer to the MoCA specifications as “standards”).  The MoCA specifications have been widely adopted and are marketed as “the universal standards for home entertainment networking,” allowing users to stream high-definition content at high speeds throughout a house using their existing coax network (e.g., for use in multi-room DVRs, gaming, etc.).

[Entropic v. ViXS Complaint]

Continue Reading Entropic files patent infringement complaint against ViXS Systems over MoCA-essential home entertainment networking patents

In a post yesterday, we discussed Nokia’s amicus brief submitted “in support of neither party” in the Apple-Motorola FRAND Federal Circuit appeal (Judge Posner edition).  The amicus brief recently filed by BlackBerry (formerly Research In Motion) is now public, and it is very similar to Nokia’s — at least when it comes to the issue of the availability of injunctive relief.  While not expressly supporting Motorola, BlackBerry echoes Motorola’s (as well as Nokia’s) argument that injunction relief should not be categorically precluded for FRAND-encumbered standard-essential patents.

[2013.05.07 BlackBerry Amicus Brief]

Coincidentally, BlackBerry also now finds itself on the receiving end of a new patent infringement complaint from Canadian non-practicing entity Wi-LAN, which is based on BlackBerry’s alleged infringement of a patent that Wi-LAN claims is essential to the ETSI 3GPP Long-Term Evolution (LTE) telecommunications standard.

Continue Reading BlackBerry files amicus brief supporting availability of SEP injunctions in Fed Circuit FRAND appeal (and also gets sued by Wi-LAN for LTE patent infringement)

CAFCEarlier this week, both Nokia and BlackBerry (formerly Research In Motion) were both granted leave to file amicus briefs with the Federal Circuit in the Apple v. Motorola appeal of Judge Posner’s June 2012 decision to dismiss the parties’ respective infringement claims.  BlackBerry’s brief is still confidential, but Nokia’s is now publicly available.

[2013.05.06 Nokia Amicus Brief]

While Nokia’s amicus brief is styled as being “in support of neither party,” it’s clear that Motorola should be the one happy here — Nokia asks the Federal Circuit to reverse Judge Posner’s decisions relating to Motorola’s standard-essential patents at issue, both with respect to damages and injunctive relief.  Nokia claims that Judge Posner’s ruling (1) creates a bright line rule against injunctions that violates Supreme Court precedent, and (2) unnecessarily devalues standard-essential patents by mandating that any damages be based on the smallest salable unit, which runs contrary to industry practices in SEP licensing.  A summary is after the jump.

Continue Reading Nokia amicus brief urges Federal Circuit to reverse Judge Posner’s standard-essential patent rulings

FRAND issues are being hashed out in a lot of jurisdictions right now.  Microsoft and Motorola are warring in Washington state, Apple and Motorola are fighting at the Federal Circuit, and Apple and Samsung are awaiting the International Trade Commission’s upcoming ruling later this month.  Noted non-practicing entity InterDigital, meanwhile, has been trying to get Huawei and ZTE’s FRAND counterclaims tossed from district court in Delaware.  Earlier this week, InterDigital filed a reply in support of its motion to dismiss, reiterating its assertions that Huawei and ZTE’s claims were compulsory counterclaims to an earlier action, would not narrow the dispute between the parties, and also fail to state a cause of action under the applicable law.

We’ve previously examined InterDigital’s arguments supporting its motion to dismiss, and it doesn’t look like InterDigital has raised dramatically different arguments in its reply, so we’ll just let you take a look at the reply for yourselves rather than doing a deep-dive summary.  (For reference, here is our prior post on Huawei and ZTE’s opposition to the motion to dismiss, as well.)  Now it’s up to the court to rule on the motion, and we’ll provide an update and summary when that happens.

Many district courts around the country have specialized local rules that govern patent litigation, in order to assist the court and the parties to manage the myriad issues that come up in the vast majority of complex patent cases.  Local patent rules often control the schedule and format for the parties’ infringement and invalidity contentions, claim construction proceedings, etc.  The Northern District of California, where France Telecom and Marvell are embroiled in a patent suit over Marvell’s alleged infringement of a digital coding patent, is one such district that uses local patent rules.  In a ruling handed down this past Friday, U.S. Magistrate Judge Nathaniel Cousins found that it was proper for France Telecom to rely on two ETSI 3G cellular standards in formulating its infringement contentions.  This ruling shows that — with some caveats — it is permissible to use an industry standard as a basis for infringement contentions in districts with local patent rules.

[2013.05.013 (D.E. 79) Granting Motion to Compel in Part]

Continue Reading Infringement contentions based on industry standards sufficient to comply with N.D. Cal. local patent rules (France Telecom v. Marvell)

Late Friday, Microsoft responded to the letter brief filed by Motorola last week in the parties’  RAND breach of contract case.  In its responsive letter brief [LINK], Microsoft disputes Motorola’s versions of the facts, and contends that Motorola has long known about the bases on which Microsoft would be seeking damages for breach of contract.  In particular, Microsoft claims that Motorola has known for over a year that Microsoft would be seeking to recover the costs of moving its EMEA distribution center from Germany to the Netherlands.  Microsoft suggests that Motorola’s efforts to limit Microsoft’s damages theories are nothing but a pretext for Motorola to actually dismiss Microsoft’s claims for damages for breach of contract.

Continue Reading RAND damages discovery dispute continues – Microsoft says Motorola’s brief is a pretext to dismiss damages claim

European-Flag1We generally focus on U.S.-specific standard-essential patent issues here at the Essential Patent Blog, but often there are some international developments that are worth noting.  Today brings us one of those, as the European Commission announced that it has sent a Statement of Objections to Motorola Mobility as part of its investigation into Motorola’s potential misuse of mobile phone-related standard-essential patents.

The EC states that at this point in the investigation, its preliminary view is that Motorola’s seeking and enforcing of an injunction against Apple in Germany on the basis of a cellular standard-essential patent amounted to an “abuse of a dominant position” in violation of the European Union antitrust laws:

Today’s Statement of Objections sets out the Commission’s preliminary view that under the specific circumstances of this case – a previous commitment to license SEPs on FRAND terms and the agreement of Apple to accept a binding determination of the terms of a FRAND licence for SEPs by a third party – recourse to injunctions harms competition. The Commission is concerned that the threat of injunctions can distort licensing negotiations and lead to licensing terms that the licensee of the SEP would not have accepted absent this threat. This would lead to less consumer choice.

The EC is careful to note two things — first, that it takes no position on the availability of injunctive relief for SEP holders against unwilling licenses; and second, that the sending of a Statement of Objections is a formal step and “does not prejudge the final outcome of the investigation.”  However, it’s clear that the EC has taken a dim view of FRAND SEP holders seeking injunctions against willing (or even potentially-willing) licensees.

For those unfamiliar with the EC’s investigation of Motorola or EC antitrust investigations in general, the Commission provides a handy Q&A memo/fact sheet that answers a number of questions you may have.  It’s definitely worth taking a look at — and it shows that the EC’s concerns are very similar to those expressed by the FTC in its own investigation of Motorola’s SEP licensing and assertion practices.

The district court in the Microsoft-Motorola RAND breach of contract case has already decided some unique issues of first impression, and will take on some more in the next phase of the case.  And if the parties don’t settle, an appeal is likely to follow.  This raises an interesting question, one that doesn’t necessarily have a clear answer — which appellate court would have jurisdiction over an appeal of Judge Robart’s RAND-related rulings?

The Western District of Washington sits within the 9th Circuit Court of Appeals (which, as noted below, has already heard an interlocutory appeal in this case).  But as you may know, in order to preserve uniformity in patent law, the U.S. Court of Appeals for Federal Circuit in Washington, DC is the court designated by Congress as the appeals court with exclusive jurisdiction for nearly all patent cases.  The Microsoft-Motorola case (at least the part which has garnered the most attention) involves a breach of contract issue relating to patents, standard-setting, and patent licensing issues.  So, which is it — the 9th Circuit or the Fed Circuit?

Brace yourselves – this will take a couple thousand words.

Continue Reading Which appeals court has appellate jurisdiction over the Microsoft-Motorola RAND case?

CAFCWe’ve got an update from the Apple-Motorola Federal Circuit FRAND jurisdictional dispute.  Today, the U.S. Court of Appeals for the Federal Circuit denied Motorola’s motion to dismiss Apple’s FRAND appeal (or transfer the case to the 7th Circuit).  For a recap on the issues surrounding this motion and the Apple-Motorola FRAND appeal (this one from Judge Crabb’s court), you can check out our previous posts:

The order is not yet available to the public, but here’s the relevant text from the Federal Circuit’s docket:

ORDER FILED DENYING MOTION TO TERMINATE APPEAL FILED BY MOTOROLA MOBILITY LLC. THE PARTIES ARE DIRECTED TO DISCUSS THE JURISDICTIONAL ISSUES IN THEIR BRIEFS. APPLE’S BRIEF IS DUE WITHIN 21 DAYS FROM THE DATE OF FILING OF THIS ORDER.

We’ll have to wait to see exactly what the order says (and we’ll update this post when the order is publicly available), but it appears that in denying the motion, the Federal Circuit has not necessarily made any decision about the merits of Motorola’s position.  Instead, the court has instructed the parties to discuss the jurisdictional issues as part of their regular appellate briefing.  (You may recall that the Federal Circuit took a similar path in response to Apple’s request for an en banc hearing in the Apple-Samsung appeal, asking the parties to include any reasoning for an en banc hearing as part of their merits briefs).  For Apple, that opening brief will now be due on May 24.

[UPDATE]  Here is a LINK to order itself.  As you can see, it basically says the same thing as the docket text, but explains that the court “deems it the better course to deny the motion and for the parties to address this court’s jurisdiction in their briefs.”  [/UPDATE]