If anyone needed more evidence that the U.S. International Trade Commission is paying a lot of attention to standard-essential patents and FRAND-related issues, they received some yesterday.  The Office of Unfair Import Investigations (OUII), a neutral third party who commonly participates in ITC investigations as a representative of the public interest, notified the ITC that it would be participating in the two ongoing Section 337 actions involving competing SEP infringement claims from Samsung and Ericsson (Inv. No. 337-TA-862 and Inv. No. 337-TA-866).

Due to the large number of ITC investigations and OUII’s limited resources, the “Staff” (a common nickname for OUII) does not participate in every case.  What’s noteworthy here is not that the Staff has chosen to participate in these investigations — it’s that in each case, the Staff has limited its participation to issues relating to the standard-essential patents involved.  The Staff also specifically notes that it will participate in “public interest related issues [i.e., whether an exclusion order is appropriate for SEPs], and issues relating to Respondents’ FRAND and/or standard-essential patent-related defenses.”

This is just the latest example of the ITC’s focus on standard-essential patents.  And don’t forget, the Staff will likely receive some guidance from the Commission stemming from Inv. No. 337-TA-794 (Samsung-Apple) later this spring.

CAFCEarlier today we summarized the amicus brief filed by Intel in the Apple v. Motorola Federal Circuit appeal, and we noted that a number of other not-yet-publicly-available amicus briefs were also filed with the court.  Today, the amicus brief filed by Qualcomm hit the docket — and out of all of the recent amicus briefs, it’s the only one that was expressly filed in support of Motorola.

As it has consistently argued in the past, Qualcomm — a holder of a significant portfolio of SEPs — argues here that a FRAND commitment does not categorically preclude injunctive relief, and it urges the Federal Circuit to refrain from adopting such a rule.  Qualcomm also argues against the particular methodologies of calculating reasonable royalty damages for both FRAND-pledged essential patents and non-essential patents (e.g., the so-called ex ante or incremental value rules) that certain amici have advocated for. Continue Reading Qualcomm sides with Motorola on FRAND/SEP issues in Apple v. Motorola Federal Circuit appeal

CAFCBack in January, we summarized a number of amicus briefs filed by a diverse group of companies and organizations concerning the issues in the Apple v. Motorola Inc. Federal Circuit appeal of Judge Posner’s decision to dismiss the parties’ respective patent infringement cases.  We noted that because the Federal Circuit extended the deadline to file amicus briefs until seven days after Motorola’s opening brief was due, more parties were certain to make their views on standard-essential patent and FRAND issues known to the court.  Sure enough, several others filed amicus briefs last week.  Yesterday, the amicus brief filed by Intel became publicly available.

As you can see from our summary below, Intel’s brief clearly supports Apple, at least with respect to Apple’s cross-appeal of the standard-essential patent issues in the case. Continue Reading Intel files amicus brief supporting Apple in Federal Circuit appeal of Judge Posner decision

Plug

  • Shameless plug alert – this past Friday saw us quoted in media reports about patent litigation:
    • The Wall Street Journal‘s article “ITC Clears Microsoft’s Xbox in Patent Case,” which discussed recent goings-on in the Motorola-Microsoft ITC case, featured a quote from David Long.  You may recall that this case, which is part of the worldwide Microsoft-Motorola dispute, used to involve several standard-essential patents, but Motorola withdrew them from the case in January after entering into the consent decree with the FTC.
  • Last week we noted the Supreme Court’s decision in Kirsaeng v. John Wiley & Sons and the potential effect it could have on the patent exhaustion doctrine.  As noted by Patently-O and others, then, it was somewhat of a surprise to see the Court yesterday deny a petition for a writ of certiorari in Ninestar Tech Co. v. U.S. Int’l Trade Comm’n, where Ninestar was challenging the Federal Circuit’s denial of patent exhaustion in the international context.  Many had expected the Supreme Court to either grant certiorari outright or to grant, vacate, and remand the case to the Federal Circuit.  (For some background on international patent exhaustion, see this article by Hal Wegner.)
  • Application developers are increasingly being targeted in patent infringement suits, particularly by non-practicing entities.  As reported by TechDirt, the Application Developers Alliance is putting together a series of app developer patent summits, which will take place over the next several months in various locations around the country.

Today, March 25, 2013, in Checkpoint Systems, Inc. v. All-Tag Security S.A., No. 2012-1085, the Federal Circuit (Newman, Lourie, and Schall) reversed both the district court’s award of $6.6 million in attorneys’ fees and the determination of an “exceptional case” under Section 285 of the Patent Act.  The awarding of attorneys’ fees has received more attention of late due to the recently re-introduced SHIELD Act, which would implement more fee-shifting in cases involving certain non-practicing entities (NPEs).

The parties  in this case are competitors in the market for resonance tags — anti-shoplifting devices used by retailers.  The defendant, All-Tag, had manufactured resonance tags in Switzerland, but later moved production to Belgium.  The plaintiff, Checkpoint, accused tags made in Belgium of infringement, but provided its expert with tags that were made in Switzerland for use in the expert’s infringement analysis.

The district court found that the case was exceptional because, “despite having ample opportunity to do so,” Checkpoint’s expert never inspected the Belgium-made resonance tags accused of infringement.

On appeal, the Federal Circuit explained that under Section 285, an award of attorneys’ fees is appropriate only where the litigation is brought in “subjective bad faith” and is “objectively baseless” — i.e., “no litigant could reasonably expect success on the merits.”  The Federal Circuit noted that All-Tag did not provide any evidence at trial that its Belgian-produced tags differed from the tested Swiss-produced tags, and that Checkpoint also reasonably relied on admissions and disclosures from All-Tag in forming its infringement claims.  Thus, the court found that Checkpoint’s infringement claims were not “objectively baseless” or made in bad faith.

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For the last few months, Samsung and Ericsson have been engaged in a wide-ranging patent infringement skirmish, both in the Eastern District of Texas and in the U.S. International Trade Commission (Inv. Nos. 337-TA-862, 337-TA-866).  Many of the infringement assertions in these cases relate to the 4th-generation Long-Term Evolution (LTE) wireless communications standard, as well as other wireless communications standards promulgated by ETSI and IEEE.  Earlier this week, Samsung filed its Answer and Counterclaims in response to Ericsson’s complaint in case no. 6:12-cv-00894 in the Eastern District of Texas.

Pulling no punches, Samsung not only accuses Ericsson of breaching its FRAND obligations (an accusation it has previously made), but also asserts additional patents against Ericsson — including patents already being asserted in the ITC.  And notably, Samsung also paints Ericsson as a non-practicing entity that is trying to engage in patent hold up — Samsung states that Ericsson “now feels unhinged as a non-practicing entity in the mobile phone market to extort vastly unreasonable and discriminatory license fees,” and that it “seeks to ignore over a decade of licensing history between the companies and to travel down a new road as an NPE extracting irrational sums from Samsung under threat of an ITC exclusion order.”  Rhetoric aside, though, the meat of Samsung’s answer is really about its FRAND-related defenses and infringement counterclaims.

Continue Reading Samsung-Ericsson standard-essential patent battle heats up as Samsung asserts additional patents in E.D. Tex.

Today, March 20, 2013, in Abbott Labs. v. Cordis Corp., No. 2012-1244, the Federal Circuit held that a district court cannot issue subpoenas in conjunction with a pre-AIA inter partes reexamination proceeding because an inter partes reexamination proceeding does not constitute a “contested case” under 35 U.S.C. § 24 where the PTO has not authorized the parties to take depositions.

Last month, Judge James F. Holderman dismissed various claims brought by Cisco, Motorola Solutions, and NETGEAR against Innovatio IP Ventures, LLC over Innovatio’s vast licensing and litigation campaign relating to the IEEE 802.11 Wi-Fi standard.  These suppliers claimed that Innovatio — in threatening the suppliers’ customers and bringing litigation over standard-essential patents — violated various unfair competition laws, and even the Federal Racketeering and Corrupt Organizations Act (“RICO”).  But the court found that Innovatio’s conduct was protected petitioning activity under the Noerr-Pennington doctrine, and that the suppliers did not properly plead that the conduct was a “sham” that would exempt this activity from protection.  Yesterday, the suppliers filed a motion for entry of final judgment under Federal Rule of Civil Procedure 54(b), which indicates that the suppliers want to appeal the dismissal of these claims as soon as possible to keep the heat on Innovatio.

Continue Reading Wi-Fi suppliers seek to facilitate quick appeal of dismissal of RICO, unfair competition claims against Innovatio

Late last week, Motorola Mobility filed its Responsive and Opening Brief in Federal Circuit Appeal No. 2012-1548 (the appeal from Judge Posner’s June 2012 decision to dismiss competing infringement claims in a case between Apple and Motorola).  We’ve previously discussed the large number of amicus briefs filed with the Federal Circuit by a wide variety of parties addressing the issues of damages and injunctive relief with respect to standard-essential patents.  Here, Motorola characterizes Apple as an “unwilling licensee” who wants to change the rules of how standard-essential patent licensing has long been done in the cellular industry.  Motorola claims that Judge Posner’s rulings — which barred injunctive relief for Motorola’s FRAND-pledged standard-essential patent at issue, and limited damages to ex ante (pre-standard) value of the patent — “devalue essential patents,” “upset the settled expectations” of patent holders who contribute to industry standards, and “create disincentives” to participate in standard-setting activities.

Continue Reading Motorola tells Federal Circuit Judge Posner’s ruling would inappropriately create a “categorical rule” against standard-essential patent injunctions