InterDigital, Inc. is a patent licensing entity that claims to have a stash of standard-essential patents.  The company hasn’t shied away from litigation either:  For example, it has a hearing next month in the U.S. International Trade Commission on its complaint that Huawei, LG, Nokia, and ZTE infringed some of its 3G cellular standard-essential patents (Inv. No. 337-TA-800) and has been involved in two other ITC investigations.  Yesterday, InterDigital announced that it filed another Section 337 complaint with the ITC.  This complaint alleges that Proposed Respondents Huawei, Nokia, Samsung, and ZTE infringe various InterDigital patents by importing into the United States mobile devices (smartphones, tablets, etc.) that are compatible with certain 3G and 4G wireless communications standards (WCDMA, CDMA2000, and LTE).  InterDigital is seeking an exclusion order that would bar these companies from importing these accused devices into the United States, as well as a cease and desist order preventing sale and distribution of accused devices that already entered the United States.

Continue Reading Interdigital Files Complaint with ITC alleging 3G, 4G Patent Infringement

Because so many SEP-related issues have arisen over the past year, we will periodically revisit some of the more important episodes with a brief post.  Judge Richard Posner’s June 22, 2012 ruling in the Apple v. Motorola patent infringement litigation in the Northern District of Illinois, and the subsequent appeal to the Federal Circuit fall into this category.

Even people who don’t routinely follow the smartphone patent wars likely are aware of the patent dispute between Motorola and Apple.  After prior license negotiations failed, the parties filed dueling patent infringement lawsuits in October 2010.  Some of these infringement actions were consolidated in a case before Judge Posner, who sat by designation at the district court.  A jury trial was scheduled for June 2012: Apple asserted Motorola infringed claims of four non-standard-essential patents, while Motorola asserted Apple infringed claims of one patent that was essential to the Universal Mobile Telecommunications Standard (UMTS, a 3G cellular standard).  But as the trial date approached, Judge Posner excluded all of the parties’ respective expert testimony on damages.  Finding that neither party could prove an entitlement to damages, Judge Posner tentatively canceled the jury trial, finding that it would make little sense to hold a jury trial on infringement liability if a party could not receive relief.  However, he allowed the parties to submit further briefing, including relating to the potential for equitable remedies such as injunctive relief.  Because Motorola asserted an SEP that was encumbered by a FRAND licensing commitment, Judge Posner specifically requested that Motorola address the bearing of FRAND on the injunction analysis.

Continue Reading Catching up on … Apple v. Motorola (N.D. Ill./Fed. Cir.)

On November 29, 2012, Judge James L. Robart of the U.S. District Court for the Western District of Washington issued an order granting  Microsoft’s motion for partial summary judgment and dismissing Motorola’s claims for injunctive relief.  Judge Robart found that under the circumstances – where the patents-in-suit were subject to a RAND licensing promise from Motorola, and where Microsoft sought enforcement of that promise in Judge Robart’s court – Motorola could not satisfy either the irreparable harm or inadequate remedies at law prongs of the eBay injunction test.  But the court’s order is even broader, barring any claims of injunctive relief that Motorola might seek against Microsoft with respect to any patents essential to the ITU H.264 video coding or 802.11 wireless networking standards.

Continue Reading Injunctive Relief Precluded for Motorola’s SEP Infringement Claims

Because so many SEP-related issues have arisen over the past year, we will periodically revisit some of the more noteworthy occurrences with a brief post.  In this post, we explore recent and ongoing patent assertion activities of Innovatio IP Ventures, LLC.

On February 28, 2011, Broadcom Corporation assigned 31 U.S. patents to a company named Innovatio IP Ventures, LLC.  After acquiring these patents, Innovatio then sent letters to thousands of entities – including restaurants, coffee shops, hotels, grocery stores – alleging infringement of these patents, which Innovatio claimed to be essential to the 802.11 Wi-Fi standard.  Innovatio sought royalties from these entities, reportedly seeking $2500-3000 from each outlet for a license to the patents.  When negotiations broke down, Innovatio also filed lawsuits against dozens of these entities, claiming they infringed the patents through their respective use of products that comply with the 802.11 standard.

Continue Reading Catching up on…Innovatio IP Ventures, LLC’s Litigation Activities

The smartphone wars have definitely seen their share of assertions of standard-essential patents in recent years.  Even more of these SEPs entered the fray in a flurry of litigation at the end of 2012 between Ericsson and Samsung.

In late November 2012, Ericsson filed several complaints for patent infringement against Samsung – all of which relate to standard-essential patents.  On November 27, Ericsson filed two complaints in the E.D. Tex. against Samsung, alleging infringement of 24 patents that allegedly cover inventions relating to the use of various electronic devices such as telephones, base stations, televisions, computers, etc. in wireless communications networks.  One of Ericsson’s district court complaints also alleges that Samsung has breached its contractual obligations with the European Telecommunications Standards Institute (ETSI) by failing to offer Ericsson a license to Samsung’s essential patents on FRAND terms, while the second district court complaint simply accuses Samsung of infringing 13 U.S. patents.  Then, on November 30, Ericsson also filed a complaint with the U.S. International Trade Commission accusing Samsung of violating 19 U.S.C. § 1337 by importing products that infringe the same 11 patents in Samsung’s first district court complaint.

Continue Reading Ericsson, Samsung Engage in Standard-Essential Patent Battle

Because so many SEP-related issues have arisen over the past year, we will periodically revisit some of the more important occurrences with a brief post.  The recent bench trial before Judge James L. Robart of the Western District of Washington between Microsoft and Motorola a may yield a groundbreaking opinion in the area of standard-essential patents, so this is a case that warrants a review.

The dispute between the parties originated back in the fall of 2010.  Microsoft sued Motorola in the U.S. District Court for the Western District of Washington and the U.S. International Trade Commission, accusing Motorola Android devices of infringing several Microsoft patents.  Motorola in turn sent two letters to Microsoft, offered Microsoft licenses to two of Motorola’s standard-essential patent portfolio – for the 802.11 WiFi standard and the H.264 video coding standard – at a rate of 2.25% of the net selling price of the end products that practice those standards.  Microsoft then filed a complaint in the W.D. Wash. against Motorola for breach of contract – specifically, Microsoft alleged that Motorola’s offers to Microsoft breached Motorola’s prior promises to the IEEE and the ITU to offer licenses to its 802.11 and H.264-essential patents on RAND terms.

Continue Reading Catching up on…Microsoft v. Motorola

Welcome to the Essential Patent Blog!  This blog was started in response to increased interest surrounding standard-essential patents (SEPs) – particularly in patent infringement litigation.  Historically, most SEP issues were relegated to theoretical discussions in academic literature or conference presentations.  But that’s changing.  Many in industry, the media, the legal world – and even Congress and administrative agencies – have begun to pay more attention to SEP issues.  Several of the excellent patent-related blogs have had SEP posts, but there was no blog focused primarily on the myriad legal issues and disputes surrounding SEPs.  Our aim is to be that one-stop shop for all SEP legal matters.

Continue Reading Welcome to the Essential Patent Blog – your source for standard-essential patent litigation issues

On December 7, 2012, in Raylon, LLC v. Complus Data Innovations, Inc., No. 2011-1355, the Federal Circuit (Prost, Moore and Reyna) vacated a decision by the Eastern District of Texas that had denied Rule 11 sanctions based on a frivolous claim construction argument.  This case reflects a Federal Circuit response to concerns in the patent bar to deter frivolous suits and their attendant costs.

Continue Reading Patent Alert: Federal Circuit orders Rule 11 sanctions for frivolous claim construction (Raylon v. Complus)

Yesterday, Dec. 5, 2012, in Cummins, Inc. v. TAS Distributing Company, Inc., No. 2010-1134, the Federal Circuit (Newman, Bryson, and Reyna) affirmed a decision by the Central District of Illinois that patent invalidity and unenforceability claims were precluded by a prior contract action arising from a patent licensing dispute concerning the contractual terms of the license to the patent.  This case cautions that not raising patent challenges in a breach of contract action over a license under the patent may bar challenging the patent in a later action.

Continue Reading Patent Alert: Federal Circuit applies res judicata to bar patent infringement defenses not raised in earlier contract action (Cummins v. TAS)

On Tues., Nov. 20, 2012, in Ritz Camera & Image, LLC v. SanDisk Corp., No. 2012-1183, the Federal Circuit (Bryson, Dyk, and Moore) broadened the ability of direct purchasers of patented products to bring claims of antitrust violations under the Walker Process theory of liability (as set forth in the Supreme Court’s opinion inWalker Process Equipment, Inc. v. Food Machinery & Chem. Corp., 382 U.S. 172 (1965)).  The Court found that a direct purchaser of patented goods has antitrust standing and is therefore not categorically precluded from bringing aWalker Process antitrust claim against the patent owner, even when the direct purchaser would not have standing to bring a declaratory judgment claim against the patent owner under the patent laws.

Continue Reading Patent Alert: Federal Circuit Rules that Antitrust Standing Applies to Walker Process Claims (Ritz Camera v. SanDisk)