Last week, we posted about ALJ Robert K. Rogers’ decision to deny the motion brought by Huawei, Nokia, and ZTE to stay InterDigital’s latest standard-essential patent ITC case (Inv. No. 337-TA-868) pending a FRAND determination in district court. On Thursday March 14, these parties’ efforts to seek an expedited FRAND determination took another blow. Judge Richard G. Andrews of the District Court of Delaware denied a motion brought by Huawei and ZTE to expedite discovery and trial on FRAND-related counterclaims.
Patent Alert: Federal Circuit to revisit standard of review for district court’s claim construction (Lighting Ballast Control v. Philips)
On March 15, 2013, in Lighting Ballast Control LLC v. Philips Electronics North America Corp., No. 2012-1014, the Federal Circuit granted Lighting Ballast’s petition for rehearing en banc to decide the following questions: (1) whether the court should overrule Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc) (holding that claim construction, as a purely legal issue, is subject to de novo review on appeal); (2) whether the court should afford deference to any aspect of a district court’s claim construction; and if so, (3) which aspects should be afforded deference.
The question of affording some level of deference to district court claim constructions has been the subject of several dissents in Federal Circuit opinions. However, as recently as October 2011, the court denied rehearing en banc in Retractable Technologies, Inc. v. Becton, Dickinson and Co., No. 2010-1402, on the same issue and the Supreme Court later denied cert.
Of the 12 judges who decided Cybor, only three — one of whom dissented —are eligible to participate in the en banc rehearing in Lighting Ballast.
Universal Lighting Technologies, Inc., a co-defendant and the appellant, must submit its brief by April 29, 2013. Oral argument is expected in late summer or early fall.
RANDomness – Congressional hearing on abusive patent litigation
Last Thursday, March 14, the U.S. House Judiciary Subcommittee on Courts, Intellectual Property, and the Internet held a hearing titled “Abusive Patent Litigation: The Impact on American Innovation & Jobs, and Potential Solutions. Those testifying before the subcommittee included representatives from Cisco, SAS, J.C. Penney, Global IP Group, Johnson & Johnson, and Adobe Systems.
The House’s site provides links to written testimony and a webcast of the hearing itself, which featured extensive questioning from members of the subcommittee. Below are some links to other commentary on the hearing and the issues covered by it:
- In a guest post at Patently-O titled “Patent Trolls by the Numbers,” Professor Colleen Chien does a deep dive into recent assertions by non-practicing entities.
- The Electronic Frontier Foundation live-tweeted the hearing, which you can check out by looking at the timeline for @EFFLive.
- And Patent Progress provided both a roundup of tweets related to the hearing on its Twitter feed, @PatentProgress, as well as a useful collection of some new stories on the hearing.
- Today, Groklaw posted a summary of the testimony and questioning provided by a hearing attendee.
Lastly, due to the hearing’s focus on abusive patent litigation, the recently-reintroduced SHIELD Act was brought up several times. In a post over at Truth On the Market, Professor Adam Mossoff takes issue with the justification for the SHIELD Act, calling the proposed legislation “a classic example of rent-seeking, discriminatory legislation.”
ITC again extends target date in Samsung-Apple case (337-TA-794), asks for additional public interest comments and party briefing
If there was any doubt about the importance of standard-essential patent issues at the ITC, we can certainly put that to rest. For the second time in a week, the Commission issued a Notice extending the target date for its Final Determination in Inv. No. 337-TA-794, the Section 337 investigation based on Samsung’s August 2011 complaint against Apple. But unlike its last brief extension, the ITC this time extended its deadline until May 31, 2013 — and requested additional comments on the public interest and briefing from the parties on several issues.
The Commission’s particular questions (reproduced after the jump) show just how seriously the ITC is taking standard-essential patent issues. Additionally, the content of these questions may imply that the Commission could be leaning toward a finding that Apple infringes U.S. Patent No. 7,706,348 — a patent that Samsung has alleged is essential to the UMTS 3G cellular standard — and is now trying to decide what if any remedy it should order.
ALJ denies motion to stay InterDigital ITC case pending potential FRAND determination
Late yesterday, Administrative Law Judge Robert K. Rogers issued an order denying the motion brought by Huawei and ZTE (later joined by Nokia) to stay ITC Inv. No. 337-TA-868 pending the outcome of a potential FRAND determination in the District of Delaware. As we noted in our initial post on this motion, this is not altogether surprising, given the ITC’s statutory mandate to decide cases quickly. So it looks like InterDigital’s latest standard-essential ITC case will stick with the procedural schedule on a path to a December 2013 hearing. Huawei and ZTE’s quest to avoid a potential exclusion order, meanwhile, will shift to the Delaware district court, where they recently told the court that it could enjoin InterDigital from enforcing any ITC exclusion order on its SEPs until FRAND issues are resolved.
The order itself is confidential, but the screenshot below shows Continue Reading ALJ denies motion to stay InterDigital ITC case pending potential FRAND determination
Huawei, ZTE claim that without FRAND determination, InterDigital will “perpetuate an endless cycle of ITC litigation” over standard-essential patents
Yesterday, Huawei and ZTE filed a joint reply brief in support of their respective motions to expedite determination of the terms of a FRAND license for InterDigital’s standard-essential patents. The parties reiterate their willingness to take a FRAND license to InterDigital’s patents and assert that a prompt resolution of FRAND issues will moot other issues and litigation and will prevent Huawei/ZTE from facing irreparable harm.
Ericsson to ITC: Samsung breached its ETSI FRAND obligations for asserted 4G LTE patents (Inv. No. 337-TA-866)
On Friday, March 8, Ericsson filed the (redacted) public version of its answer to Samsung’s Complaint and the Notice of Investigation in In the Matter of Certain Wireless Communications Equipment and Articles Therein (Inv. No. 337-TA-866). This ITC Section 337 investigation is based on a January 2013 complaint from Samsung that alleges Ericsson’s 4G LTE-compatible base stations infringe several Samsung LTE-essential patents.
Given Samsung’s assertion of standard-essential patents, it’s no surprise that Ericsson’s complaint includes FRAND-based defenses. Continue Reading Ericsson to ITC: Samsung breached its ETSI FRAND obligations for asserted 4G LTE patents (Inv. No. 337-TA-866)
ITC Staff opposes motion to stay pending FRAND determination in InterDigital Section 337 investigation (337-TA-868)
Yesterday we covered InterDigital’s opposition to Huawei, Nokia, and ZTE’s efforts to stay the ITC’s investigation into InterDigital’s latest Section 337 complaint pending a potential FRAND determination in the District of Delaware. We also noted that the other respondent, Samsung, did not join the motion but stated that it did not oppose such a stay. The ITC Investigative Staff from the Office on Unfair Important Investigations (a third party that participates in many ITC investigations as a representative of the public interest) also filed its own response to the motion yesterday. The Staff opposes the motion to stay for a variety of reasons, which we will get into below.
ITC delays Final Determination in Samsung-Apple standard-essential patent investigation until March 13
Today was the target date for the ITC’s Final Determination in In the Matter of Certain Electronic Devices, Including Wireless Communication Devices, Portable Music and Data Processing Devices, and Tablet Computers (Inv. No. 337-TA-794). But today, the Comission issued a notice to extend the target date for completion of the investigation until next Wednesday, March 13.
Such an extension — even at the last minute — is not altogether unusual, and the Commission’s notice acknowledges the “numerous submissions” the from the public regarding public interest issues (mainly relating to the propriety of exclusion orders for standard-essential patents). But in this case, Apple also recently drew the ITC’s attention to a Japanese court’s ruling that Samsung failed to negotiate in good faith with Apple. Yesterday, Samsung objected to Apple’s submission, claiming that it was submitted in violation of ITC rules and is irrelevant to the issues before the Commission.
Looks like we will have to wait until at least next week to see what guidance (if any) the ITC may offer on standard-essential patent issues.
InterDigital opposes Huawei/Nokia/ZTE’s efforts to stay ITC investigation, saying motion is “based on speculation upon speculation”
Yesterday, InterDigital filed its opposition to Huawei & ZTE’s motion (later joined by another respondent, Nokia) to stay Inv. No. 337-TA-868, which is the ITC’s investigation into InterDigital’s 3G/4G standard-essential patent infringement-based Section 337 complaint. Much as it did in its prior opposition to Huawei/ZTE’s attempts to seek an expedited FRAND determination in Delaware district court, InterDigital here claims that nothing in the motion to stay counsels staying the investigation pending a determination of FRAND terms in Delaware — in fact, InterDigital attached its opposition to expedite the Delaware proceedings as an exhibit to its ITC stay opposition. After the jump, we’ll provide a brief summary of InterDigital’s arguments against staying the ITC case.
InterDigital wasn’t the only one filing papers in this case yesterday, though — Samsung also filed a response to the motion to stay. Samsung’s position is, succinctly, that “[w]hile Samsung does not join the Motion, Samsung does not oppose the requested stay.” (You may recall that Samsung has its own motion to terminate some of InterDigital’s infringement claims pending in this case).