In early January, InterDigital filed a Section 337 complaint in the U.S. International Trade Commission against Huawei, Nokia, Samsung, and ZTE, accusing those companies’ 3G/4G-compliant smartphones and tablets of infringing several InterDigital patents (this is now ITC Inv. No. 337-TA-868). Because the ITC cannot award monetary relief, it’s common for complainants to also file corresponding infringement actions in district court, which InterDigital did here in the District of Delaware. In order to relieve ITC respondents from the burden of litigating in multiple venues simultaneously, 28 U.S.C. § 1659 allows respondents to seek a mandatory stay of the district court action pending the outcome of the ITC case. Generally, respondents seek such a stay. But here, neither Huawei nor ZTE have sought a stay — in fact, they have asked the Delaware district court to expedite discovery on FRAND issues. It’s an interesting strategic move in which they leverage recent guidance from government agencies and other pending litigation, and it’s a strategy that (if successful) may be followed by many more ITC respondents in the future.
E.D. Texas court ruling shows “system-on-a-chip”-based infringement accusations can satisfy AIA’s joinder rules (U.S. Ethernet v. Samsung)
It’s well-known that concerns about patent assertions by non-practicing entities were part of the impetus for the America Invents Act of 2011. In order to prevent multiple unrelated defendants from being added to the same infringement suit on the sole basis that they are accused of infringing the same patent, the AIA added the so-called “misjoinder” provision (35 U.S.C. § 299) to the patent laws. Briefly, Section 299 provides that defendants are properly joined if (1) infringement is asserted against the defendants based on the same transaction or occurrence or as to the same accused product or process, and (2) questions of fact common to all defendants will arise in the action. Over the past year and a half, courts have been grappling with evaluating whether otherwise unrelated defendants are properly joined in infringement actions. In his recent ruling in an Eastern District of Texas case involving IEEE 802.3 Ethernet technology, Magistrate John D. Love held that standards-compliant system-on-a-chip (SoC) suppliers may be properly joined with their customers under Section 299.
InterDigital, Nokia ordered to produced FRAND-related and licensing documents in ITC case (337-TA-800)
As we noted earlier this week, the ITC is currently holding the evidentiary hearing in its investigation surrounding InterDigital’s 3G standard-essential patent infringement complaint against Nokia, Huawei, and ZTE (Inv. No. 337-TA-800). As with many ITC hearings, much of the information is kept out of the public record (and that’s particularly true for FRAND-related issues, where sensitive licensing data is often discussed). But today, the ITC just released the public version of Order No. 70, the confidential version of which originally issued way back in September 2012. In this order, ALJ David P. Shaw ordered InterDigital and Nokia to both produce various information relating to the FRAND affirmative defenses raised by Nokia in the case, including license agreements, license negotiation documents, and other documents relating to FRAND.
RANDomness: President Obama talks patents
- Yesterday, President Obama held an hour-long Google hangout to
take questions from the public, and the topic of patents came up. He answered a question about non-practicing entities and startups, and acknowledged that the America Invents Act “only went about halfway” to full patent reform. (via Patent Progress) - Judge James L. Robert issued a Valentine’s Day minute order re-opening the trial record in the Microsoft-Motorola RAND case, granting Motorola’s request to submit additional evidence (and allowing Microsoft to submit contextual evidence in rebuttal). Judge Robart noted that the court “desires to issue its ruling with the most complete record possible.” (More from Groklaw)
- As we approach the March 16, 2013 implementation date for the change in the U.S. patent system from “First Inventor” to “First Inventor to File,” Patently-O examines a case where a party is seeking a declaration judgment that the new regime is unconstitutional. (Patently-O)
- On Feb. 12 at Stanford Law School in Palo Alto, CA, the USPTO held the first of two roundtables to discuss software-related patent issues (the second will be Feb. 25 in New York City). Simon Linder’s IP Blog provides a brief report.
Apple urges Federal Circuit to eliminate or minimize “causal nexus” requirement for permanent injunctions
This isn’t a necessarily a standard-essential patent issue (and it’s been covered by many others such as IPLaw360 and Groklaw over the past couple days), but as something that could affect how parties enforce standard-essential patent rights in U.S. courts, we thought it’d be worth a quick post. Earlier this week, Apple filed its opening brief in its appeal of Judge Lucy Koh’s decision to deny Apple a permanent injunction against Samsung. In her post-trial decision applying the eBay analysis and denying an injunction, Judge Koh found that Apple failed to demonstrate a “causal nexus” between Samsung’s infringement of Apple’s utility and design patents and the irreparable harm to Apple (e.g., loss of market share and downstream sales). Apple argues in its brief to the Federal Circuit that there was no need for it to demonstrate such a causal nexus, and that even if there is, the evidence does show a nexus between infringement and irreparable harm.
Catching up on…Lotes v. Foxconn RAND/antitrust dispute over USB 3.0 standard-essential patents
It’s no surprise that most of the attention being paid to standard-essential patent issues is focused on the companies involved in the “smartphone wars” — Motorola, Microsoft, Apple. Samsung, etc. But while these consumer product companies are of course affected by issues involving standard-essential patents, so too are their component suppliers. A lawsuit filed this past fall in the Southern District of New York by Lotes Co. against Hon Hai Precision Industry Co. and Foxconn over SEP issues relating to the Universal Serial Bus (USB) 3.0 standard is a great example of this. Here, we attempt to provide a brief overview of the issues in the Lotes-Hon Hai case.
Samsung responds to Ericsson’s ITC complaint, accuses Ericsson of violating F/RAND obligations (337-TA-862)
We’ve previously covered the bilateral standard-essential patent battle brewing between Ericsson and Samsung in the U.S. International Trade Commission (as well as the Eastern District of Texas). The ITC has instituted two investigations surrounding the parties’ claims: Inv. No. 337-TA-862 (based on Ericsson’s complaint) and Inv. No. 337-TA-866 (based on Samsung’s complaint). Yesterday, Samsung filed the public version of its Response to the Complaint and Notice of Investigation (essentially, an answer to Ericsson’s complaint) in the -862 investigation. Below is an overview of this filing, in which (surprise!) F/RAND-related issues and defenses have a starring role.
ITC begins evidentiary hearing on InterDigital’s 3G standard-essential patent infringement complaint against Huawei, Nokia, ZTE (337-TA-800)
This morning, at the U.S. International Trade Commission, the hearing commenced in In the Matter of Certain Wireless Devices with 3G Capabilities and Components Thereof (Inv. No. 337-TA-800) before presiding Administrative Law Judge David. P. Shaw. This case involves the ITC’s investigation into allegations brought by InterDigital that respondents Huawei, Nokia, and ZTE infringe various InterDigital 3G-essential patents. (LG Electronics was previously dismissed as a respondent). The hearing is scheduled to continue until February 22, although there is always the potential for the parties to wrap up early.
It’s likely that the parties will offer evidence on RAND and other SEP-related issues, perhaps tailored toward questions asked by the Commission as part of their upcoming Final Determination in the Samsung-Apple investigation (337-TA-794). The parties’ pre-hearing statements were all filed as confidential, but we will keep an eye on the docket to see if any interesting SEP-related information becomes available to the public.
RANDomness: Trashing the patent system?
- A draft of this particular paper has been floating around for months, but two economics professors from the St. Louis Federal Reserve, Michele Boldrin and David K Levine, have finally published their paper titled “The Case Against Patents” in the winter 2013 issue of the Journal of Economic Perspectives.
- At the Brookings Institution, Senior Researcher Jonathan Rothwell provides a rebuttal to Boldrin and Levine’s paper – stressing that patents and the patent system should be fixed, not abolished.
- Late last week, President Obama nominated two government attorneys to serve on the Federal Circuit. The nominees are: Raymond T. Chen, the Deputy General Counsel for Intellectual Property Law and Solicitor; and Todd M. Hughes, Deputy Director of the Commercial Litigation Branch of the Civil Division at the United States Department of Justice. More from ArsTechnica, or just read the White House press release.
- Following up on the CLS Bank v. Alice en banc oral argument, Dennis Crouch at Patently-O examines whether the presumption of validity applies to questions of patent eligibility under Section 101. (Patently-O)
Patent Alert: Assignor estoppel is not a federal cause of action (Semiconductor Energy Lab. Co. v. Nagata)
On February 11, 2013, in Semiconductor Energy Laboratory Co. v. Nagata, No. 2012-1245, the Federal Circuit (Lourie, Bryson, and Wallach) affirmed a decision by the Northern District of California that dismissed a complaint for lack of subject matter jurisdiction. This case provides insight into the appropriateness of using a named inventor as a fact witness in an infringement action based on his or her patent.