CAFCThis Friday, February 8, an en banc United States Court of Appeals for the Federal Circuit will hear oral arguments in CLS Bank Int’l v. Alice Corp. Pty. Ltd. (No. 2011-1301), the latest Federal Circuit case to deal with the patentability of software-related patents and so-called business methods.  Given that the technologies claimed in many standard-essential patents are often implemented in standards-compliant products via software, the Federal Circuit’s holding in this case may have resounding consequences for the world of SEPs and SEP-related litigation.

UPDATE: The Federal Circuit issued an en banc decision holding the claims invalid.  Please see our May 13, 2013 post for more details.

Continue Reading En banc Federal Circuit to hold oral argument Friday regarding patentability of software patents (CLS Bank v. Alice)

ITC Logo

The United States International Trade Commission (ITC) is a quasi-judicial agency with broad investigative powers relating to trade practices.  These powers include the ability to investigate unfair trade practices relating to the importation of products that infringe valid U.S. patents — so-called “Section 337 actions” (Section 337 actions can encompass other conduct, but are commonly used to target patent infringement).  But because the ITC may only issue injunctive relief (via exclusion orders and cease & desist orders), and cannot award monetary damages, the assertion of standard-essential patents in Section 337 actions has become a subject of great debate.  Within about a month, the Commission will issue a Final Determination in Investigation No. 337-TA-794 (involving Samsung and Apple) that may address the propriety of asserting FRAND-pledged SEPs in Section 337 actions.  In the meantime, however, there are several ongoing ITC investigations where standard-essential patents are being asserted.  Below is a brief summary of where each of these cases currently stand:

Continue Reading A rundown of pending SEP-related Section 337 investigations at the U.S. International Trade Commission

  • The Federal Circuit denied Apple’s petition for an en banc rehearing of its prior denial of a preliminary injunction against Samsung based on Apple’s failure to demonstrate a “causal nexus” between infringement and irreparable harm.  However, Apple still has an appeal pending of a denial of a permanent injunction against Samsung. (Bloomberg)
  • Yesterday the ITC announced that it is has instituted a Section 337 investigation based on Interdigital’s complaint filed against Samsung, Huawei, Nokia, and ZTE, in which Interdigital alleged that those parties infringe several 3G/4G standard-essential patents.  The investigation will be No. 337-TA-868, and the presiding Administrative Law Judge will be ALJ Robert K. Rogers.  As we suspected, the ITC did not find the assertion of standard-essential patents precluded instituting an investigation (despite many arguments to the contrary).
  • Professor Damien Gerardin has released a new paper addressing the competition law issues that have arisen in Europe relating to licensing and assertion of standard-essential patents in litigation. (via Antitrust Hotch Potch).
  • On the smartphone wars front, Judge Lucy Koh of the Northern District of California overruled the jury’s conclusion that Samsung willfully infringed Apple’s patents and declined to award Apple damages above and beyond the $1 billion+ jury award.  Judge Koh still has yet to rule on Samsung’s request to reduce the jury’s award.  More from ArsTechnica and CNET.
  • And in shameless plug news, David Long and Matt Rizzolo wrote a short piece for AllThingsD on the implications that the Federal Circuit’s remedy-narrowing decisions in Laserdynamics v. Quanta and Apple v. Samsung may have for future patent litigation. (AllThingsD).

In a letter sent to the U.S. Patent & Trademark Office late last week,  the American Antitrust Institute expressed its approval of the USPTO’s plan to implements rules requiring patent holders to provide more transparency regarding ownership interests in patents and patent applications.  The AAI’s letter claims that, among other considerations, these transparency provisions would have positive effect on the licensing of standard-essential patents and in helping companies deal with assertions for patent assertion entities or non-practicing entities.

Continue Reading American Antitrust Institute supports USPTO’s proposal for requiring more patent ownership transparency

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  • The Federal Circuit recently invalidated three e-commerce “shopping cart” patents that noted non-practicing entity Soverain Software has asserted over the past decade against a variety of web retailers.  ArsTechnica reports on the story of Newegg’s litigation strategy, and includes an interesting interview with Newegg’s Chief Legal Officer (and Dow Lohnes alumnus) Lee Cheng.  (ArsTechnica)
  • In other non-practicing entity news, the U.S. District Court for the Northern District of California dismissed a suit brought  by Cascades Computer Innovation against patent aggregator RPX and Dell, Samsung, Motorola, LG, and HTC.  Cascades had alleged that the parties violated the antitrust and unfair competition laws by forming a conspiracy not to license Cascades’s patents (and engaging in other joint litigation-related activities.  However, Cascades was granted leave to amend the complaint. (More from The American Lawyer)
  • After settling with the FTC, Google has appeared to avoid serious antitrust consequences in the United States over its licensing standard-essential patents and its search and advertising practices.  But might it fare differently in Europe?  Charles Authur, Tech editor for UK newspaper The Guardian, discussed this topic in a recent podcast. (via TechNewsWorld)

CAFC

Motorola and Apple are currently facing off over patent-related issues in several ongoing judicial proceedings, including multiple appeals before the United States Court of Appeals for the Federal Circuit.  One of these Federal Circuit appeals was brought by Apple over Judge Crabb’s dismissal of Apple’s claims that Motorola violated the antitrust laws and breached its contracts with SSOs in conducting its SEP-related licensing and enforcement activities.  But on January 25, Motorola filed a motion with the Federal Circuit to dismiss Apple’s appeal (or transfer it to the Seventh Circuit), asserting that the Federal Circuit lacks jurisdiction to hear the case.  While at first blush this seems like just a mundane dispute over civil procedure issues, a decision on this motion may have significant consequences for future FRAND-related proceedings.

Continue Reading Motorola disputes Federal Circuit’s jurisdiction over Apple’s FRAND-related appeal, argues for dismissal or transfer

Germany

While much of the attention over standard-essential patent litigation focuses on disputes taking place in the United States, the U.S. is not the only venue seeing these showdowns.  SEP-related issues have also arisen in Australia, in Korea, and in Europe (both in the courts and in European Commission investigations).  The courts in Germany — which has recently become a hotbed for patent litigation — have developed a unique procedure for dealing with the assertion of standard essential patents.  Named for a 2009 decision by the Federal Supreme Court of Germany, this is commonly known as the “Orange Book” defense or procedure (or sometimes as the dolo agit or good faith defense).  In this post, we aim to provide a background of this case and some examples of cases where the Orange Book defense has been invoked.

Continue Reading A RANDom glance abroad: German Patent Courts and the “Orange Book” defense

On Fri., January 25, 2013, in Hall v. Bed Bath & Beyond, No. 2011-1165, the Federal Circuit (Newman, Lourie (dissenting-in-part), and Linn) held that a towel design patent owner properly pled claims of patent infringement, false advertising, misappropriation, and unfair competition.  The Court also held that certain inventor statements on whether the towel was covered by his patent did not create liability for false advertising or false marking.  This case indicates that the pleading requirements for design and utility patents are fairly similar.

Continue Reading Patent Alert: Federal Circuit Finds No Special Requirements for Pleading Design Patent Infringement

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  • The global patent battle between Apple and Samsung continues, both on the SEP and non-SEP front.  The U.S. International Trade Commission recently issued a notice that it will review an Administrative Law Judge’s prior finding that Samsung infringed several non-SEP Apple patents, and also remanded part of the case back to the ALJ.  (More from AllThingsD).  And over in Germany, a Mannheim judge stayed Samsung’s infringement case against Apple over a 3G-essential patent, pending a determination of the validity of the patent in a separate proceeding.
  • Speaking of Samsung, the ITC issued a news release announcing its decision to institute an investigation based on Samsung’s December 21, 2012 complaint against Ericsson in which Samsung accused Ericsson of infringing various Samsung standard-essential patents (more details can be found in our Jan. 3 post on the Samsung-Ericsson dispute).  The investigation into Ericsson’s activities will be captioned In the Matter of Certain Wireless Communications Equipment and Articles Therein, Investigation No. 337-TA-866.
  • Is this the future of home manufacturing? The makers of Roomba have filed for a patent on a 3-D printer that would “print” fully assembled products. (via ArsTechnica)
  • And in non-patent IP news, the U.S. Court of Appeals for the Ninth Circuit vacated a jury’s finding (along with $172M in damages and costs) that Mattel misappropriated MGA Entertainments’s trade secrets relating to MGA’s Bratz dolls.  The 9th Circuit panel’s opinion closed with some advice for the parties — “Play nice.”  (via Bloomberg)
  • Finally, the American Intellectual Property Law Association (AIPLA) is holding its 2013 Mid-Winter Institute next week in Tampa, FL.  The theme of the conference will be “Understanding why intellectual property is THE business asset of the 21st Century.”  You can register to attend the AIPLA Mid-Winter Institute here.

Assertion of standard-essential patents are all the rage at the ITC these days, with an upcoming trial on InterDigital’s claims (Inv. No. 337-TA-800), another recent complaint filed by InterDigital, dueling Ericsson-Samsung complaints, and the highly anticipated Final Determination in ITC Inv. No. 337-TA-794 involving Apple and Samsung due in March.  And today, a company named Adaptix — a subsidiary of noted non-practicing entity Acacia Research — threw its hat into the ring, firing off a Section 337 complaint accusing Ericsson’s 4G LTE base stations of infringing U.S. Pat. No. 6,870,808, titled “Channel Allocation in Broadband Orthoganol Frequency-Division Multiple-Access/Space-Division Multiple-Access Networks.”  But this might not be your typical standard-essential patent case — it has a couple of twists.

Continue Reading Acacia Research subsidiary Adaptix files new ITC complaint accusing Ericsson of infringing 4G LTE-essential patent