On Friday, February 8, noted and sometimes infamous patent aggregator Intellectual Ventures filed three large patent infringement complaints in the United States District Court for the Western District of Texas. In the complaints, Intellectual Ventures accuses several providers of Digital Subscriber Line (DSL) services of infringing 19 patents that, according to IV, “cover fundamental and important aspects of DSL technology and services.” The DSL providers targeted by IV in these suits include AT&T, SBC, CenturyLink, Embarq, Qwest, Savvis, Windsteam, and PAETEC.
Antitrust Deputy Assistant AG’s speech may foreshadow increased DOJ enforcement activities relating to standard-essential patents
It’s no secret that government agencies in the United States and abroad are paying more attention to standard-essential patent issues. More evidence of this trend came this past Friday, when Deputy Assistant Attorney General Renata B. Hesse of the Antitrust Division of the U.S. Department of Justice delivered a speech at the Global Competition Review Antitrust Law Leaders Forum in Miami. Hesse’s speech makes it clear that FRAND licensing issues are a high priority for the DOJ’s antitrust division, and that the agency remains open to exploring new ways of enforcing FRAND commitments — potentially including pursuing standard-essential patent holders for violations of Section 2 of the Sherman Act (anticompetitive monopolies or attempts to monopolize).
Apple: Federal Circuit has exclusive jurisdiction over Apple-Motorola FRAND/antitrust appeal
Yesterday Apple filed its opposition to Motorola’s motion to dismiss or transfer for lack of jurisdiction in Federal Circuit appeal No. 2013-1150. This is Apple’s appeal of Judge Crabb’s dismissal of the Apple-Motorola FRAND/antitrust action (W.D. Wis. No. 3:10-cv-00178)). Apple contends that the Federal Circuit has jurisdiction over Apple’s appeal of the dismissal of its declaratory judgment claims because (1) the hypothetical Motorola complaint at which Apple’s declaratory judgment claim was directed would be for patent infringement, and (2) the district’s court’s decision to dismiss the patent-specific DJ claims without prejudice does not deprive the Federal Circuit of jurisdiction. As we anticipated in our post on Motorola’s motion to dismiss/transfer, some of Apple’s arguments in its opposition raise some interesting questions about whether jurisdiction over this appeal will be consistent with past and potential future appeals of orders in the Microsoft-Motorola RAND case.
Microsoft-Motorola (W.D. Wash.) update: Court invalidates several claims of Motorola H.264-essential patents
In an order issued yesterday by the U.S. District Court for the Western District of Washington (that just hit the docket this afternoon), Judge James L. Robart granted Microsoft’s long-pending motion for partial summary judgment and invalidated thirteen claims of three patents Motorola alleged as essential to the AVC/H.264 video coding standard. Although this ruling stems from the infringement portion of the case, and the major issues between the parties involve the RAND breach of contract claims brought by Microsoft over Motorola’s entire 802.11 and H.264-essential patent portfolios, it’s possible that Judge Robart’s ruling could have some future effect on these RAND claims as well.
Target dates set for Samsung-Ericsson, InterDigital ITC Section 337 SEP investigations
The statute that governs the U.S. International Trade Commission’s jurisdiction over patent infringement complaints requires the ITC to resolve its investigations into such complaints “at the earliest practicable time” Typically, ITC investigations will take anywhere from 12-18 months (depending on complexity, number of patents, etc.) from the institution of the investigation until the “target date,” the date the Commission issues its Final Determination. Today, the ITC published two orders setting the target dates for Investigation Nos. 337-TA-866 (involving Samsung’s SEP-related infringement complaint against Ericsson) and 337-TA-868 (involving InterDigital’s 3G/4G-essential patent infringement complaint against Samsung, Huawei, Nokia, and ZTE):
Inv. No. 337-TA-866 (Order No. 2)
- Target date: May 16, 2014 (~15.5 months after institution)
- Due date for Initial Determination on alleged violation of Section 337: January 16, 2014
Judge E. James Gildea’s order also set forth a proposed procedural schedule, although this may be modified later by the ALJ depending on whether the parties identify any conflicts. Judge Gildea anticipates that the hearing in this investigation will begin around September 30, 2013 and will conclude no later than October 11, 2013.
Inv. No. 337-TA-868 (Order No. 4)
- Target date: June 4, 2014 (~16 months after institution)
- Due date for Initial Determination on alleged violation of Section 337: February 4, 2014
RANDomness: NPE Edition
- InformationWeek brings us the story of
Ashford.com’sEmob’s fight against Cronos Technologies, a well-known NPE, over a patent related to a “remote ordering system.” (InformationWeek) - Google’s Senior Vice President & General Counsel Kent Walker wrote an opinion piece for Politico, making the case for the Obama administration’s second term to include additional patent reform that specifically addresses patent assertions by NPEs. (Politico)
- Professor Colleen Chien of Santa Clara University Law School, who has written extensively on patent assertions by NPEs (particularly against startup companies), was recently awarded a research grant from the New America Foundation to expand her research on the topic. The grant will fund an expanded survey to determine the effects NPEs are having on startups. (via SCU Law)
- In light of several recent patent infringement suits filed by noted NPE Personal Audio LLC based on podcasting activities, the Electronic Frontier Foundation announced that it is reaching out to help the defendants defend against these claims. (via ArsTechnica)
- Counterpoint: Paul Schneck, chairman of Rembrandt IP Management — an NPE that recently sued Facebook for patent infringement in the Eastern District of Virginia — makes the case in Forbes that patent assertions by NPEs are not the problem that many claim them to be. (Forbes)
Non-practicing entity AIM IP files new infringement suits over VoIP standard-essential patent
Two new SEP-related patent infringement complaints were filed this week in the Central District of California by AIM IP, a non-practicing entity based in Mission Viejo, CA. These complaints accuse Aastra USA, Inc. and AudioCodes, Inc. each of infringing claims of U.S. Patent No. 5,920,853, titled “Signal Compression Using Index Mapping Technique for the Sharing of Quantization Tables.” AIM IP accuses various Aastra and AudioCodes Voice over Internet Protocol (VoIP) devices of infringing the patent based on the devices’ compliance with and use of the ITU G.729 audio compression standard.
[UPDATE] After this was originally posted, we discovered several additional new suits filed by AIM IP over the ‘853 patent. These were filed against ClearOne, Digium, Media5, Obihai, and Patton Electronics, and are linked to below. [/UPDATE]
Innovatio Update: Wi-Fi manufacturers’ RICO, unfair competition claims targeting Innovatio rejected, but RAND issues remain
We’ve previously discussed the wide-ranging assertion activities of Innovatio IP Ventures LLC, a non-practicing entity that has targeted thousands of companies across the country over patents related to the IEEE 802.11 wireless networking (Wi-Fi) standard. And due to an amended complaint filed in October 2012 by Motorola Solutions, Cisco, and Netgear in the Northern District of Illinois, Innovatio has been facing a litany of charges relating to this licensing and litigation campaign. These charges include breach of contractual RAND obligations, state law unfair competition, civil conspiracy, and even violation of the federal civil RICO statute. In November, Innovatio moved to dismiss these claims. This week, Chief Judge James F. Holderman granted much of Innovatio’s motion, dismissing all of the claims except for the RAND-based breach of contract and promissory estoppel claims. This ruling is indicative of the substantial hurdles that potential licensees of standard-essential patents face in attempting to show when patent holders’ assertion of rights and licensing demands may cross legal boundaries — and it may also further muddy the already murky waters surrounding the scope of RAND obligations.
Patent Alert: Federal Circuit Finds Justiciable Controversy for Declaratory Judgment of No Indirect Infringement Liability
Today, February 5, 2013, in Arkema Inc. v. Honeywell Int’l, Inc., No. 2012-1308, the Federal Circuit (Dyk, Plager, and O’Malley) found that an Article III case or controversy over indirect infringement liability existed between two competitors in the automobile refrigerant market. This case provides incremental insight into the circumstances under which a vendor might proactively seek declaratory relief to provide guidance to itself and its customers.
Arkema sought declaratory judgment that in selling refrigerant to automobile manufacturers, it would not incur liability for indirectly infringing two Honeywell patents on methods of using refrigerant in automobile cooling systems. The district court found that there was no justiciable controversy between the parties. On appeal, describing this case as “a quintessential example of a situation in which declaratory relief is warranted,” the Federal Circuit reversed and remanded.
The Federal Circuit identified several ways in which the district court erred. First, a party seeking a declaratory judgment of no indirect infringement need not offer evidence of actual underlying acts of direct infringement, nor specific accusations against itself or its customers. Here, infringement claims brought by the defendant in other domestic and foreign actions over closely related patents relating to automobile refrigerants was a “sufficient affirmative act” to establish declaratory judgment jurisdiction. The Federal Circuit also ruled that the district court was too restrictive in requiring Arkema to show “specific planned activity” by its customers, such as “sufficiently fixed” plans for using the refrigerant. The Court also ruled that, even though any alleged acts of direct infringement (commercial launch of products) might not take place for over a year, presently-occurring acts in preparation that could lead to indirect infringement (signing of long-term supply contracts) were sufficiently immediate.
RANDomness
- Patent Peace in South Korea: Samsung and LG Electronics have settled their contentious patent and trade secret dispute relating to organic light-emitting diode (OLED) technology that is widely used in flat-panel televisions and computer monitors. (via CNET)
- For the second time in a week, the Federal Circuit denied Apple’s request for an en banc hearing (this time an initial hearing of Apple’s appeal of Judge Lucy Koh’s denial of a permanent injunction against Samsung). However, the court did note that “a party” (i.e., Apple) could argue to the panel about the need to overrule precedent or any other bases to hear the appeal en banc.
- Apple’s “slide-to-unlock” feature patents have been well-documented (and well-litigated). But as Dennis Crouch at Patently-O notes, Micron Technology just received a patent for a slide to unlock feature that dates — could this add another wrinkle to the smartphone wars?