Magistrate Judge Fallon recently Recommended Dismissing competition law counterclaims brought by TCT Mobile (TCT) against Godo Kaisha IP Bridge 1 (IP Bridge) and Panasonic and Judge Bataillon has now Adopted that ruling.  Those counterclaims were based on alleged improper conduct relating to standard essential patents (SEPs)  on European Telecommunications Standards Institute (ETSI) 2G, 3G and 4G wireless standards that IP Bridge acquired from Panasonic after those standards were adopted.  While the standards were under development, Panasonic had committed to license the SEPs on fair, reasonable and non-discriminatory (FRAND) terms.  TCT’s competition law counterclaims generally concerned allegations that:

  • Panasonic made FRAND commitments it did not intend to keep in order to induce the standards body to keep Panasonic’s technology in the standards;
  • After the standards were adopted, Panasonic transferred the patents to IP Bridge which offered to license the patents on terms that were not FRAND and
  • There was some type of improper concerted action between Panasonic and IP Bridge (this aspect is fairly redacted and unclear).

This case presents an interesting nuance of competition claims against a party (IP Bridge) that acquired SEPs from an original owner (Panasonic) who made a FRAND commitment.  In this case, TCT alleged that something about the transfer of the patents to IP Bridge was meant to circumvent Panasonic’s FRAND commitment (but the details of those allegations are redacted in the public court documents).

This case also indicates that an antitrust injury-in-fact cannot arise solely from a patent owner filing an infringement lawsuit on FRAND-committed SEPs.  That’s because a successful FRAND defense by the accused infringer will lead to remedies consistent with the FRAND commitment and, in any event, any relief ultimately granted by the court would be lawful.

The decision also has a unique procedural posture.  This is a decision by a magistrate judge that recommends to the presiding district court judge how to rule on the issue.  Such magistrate judge recommendations are common in patent  cases.  The presiding district court judge usually adopts a magistrate judge’s recommendation, but is not required to do so.  So we will await the district court judge’s decision whether to adopt Judge Fallon’s recommendation here.

Further, this decision concerns a Rule 12(b)(6) motion to dismiss causes of action based on the initial pleadings.  Such motions are difficult to win because of the tremendous deference the court must give to the challenged pleading — e.g., the court considers whether TCT states a “plausible” claim if the court assumes (without deciding) that all factual allegations TCT raises are true and draws all reasonable inferences in TCT’s favor.   And courts are even more reluctant to grant a Rule 12(b)(6) motion against competition law claims, which may be factually complex and require information in the hands of the alleged wrong-doer that can be obtained only in discovery.   In this case, however, TCT apparently had almost a year of discovery and two attempts to plead its competition law claims, which may have provided the court more comfort in its dispositive ruling here. Continue Reading Magistrate Judge Fallon recommends dismissing competition claims against SEP holder (Godo Kaisha IP Bridge v. TCL et al)

Yesterday, the U.S. Department of Justice (DOJ) Assistant Attorney General (AAG) for the Antitrust Division Makan Delrahim spoke  in Brussels about maintaining a close working relationship and coordination with European Union’s Directorate General for Competition (DG Competition) in competition law enforcement.  AAG Delrahim’s remarks included suggestion that the European competition authorities shift toward the more balanced  approach to standard essential patents (SEPs) that he recently articulated for the U.S. (See our Dec. 20, 2017 post on AAG Delrahim’s remarks on shift in U.S. DOJ’s SEP enforcement approach).  Some key points in AAG Delrahim’s remarks include:

  • “I believe that strong protection of these [IP] rights drives innovation incentives, which in turn drive a successful economy.”
  • “I worry that we have strayed too far in the direction of accommodating the concerns of technology licensees who participate in standard setting bodies, very likely at the risk of undermining incentives for the creation of new and innovative technologies.”
  • The tension between innovators and implementers “is best resolved through free market competition and bargaining.  And that bargaining process works best when standard setting bodies respect intellectual property rights … including the very important right to exclude.”
  • If a patent owner violates a standard-setting commitment, “remedies under contract law, rather than antitrust remedies, are more appropriate to address licensee’s concerns.”

Below is a a complete excerpt of AAG Delrahim’s remarks in Brussels with respect to intellectual property and SEPs: Continue Reading U.S. DOJ Antitrust Head Makan Delrahim brings his message of balanced SEP competition law enforcement to Europe

The Korea Fair Trade Commission (“KFTC”) recently issued a press release stating its intent to issue a written decision that will impose an $865 Million sanctions and a corrective order against Qualcomm for abuse in licensing standard essential patents (“SEPs”) in the mobile communications industry.  Specifically, on December 28, 2016, the KFTC released a three-page English-translated summary of a 27-page Korean-language  press release.  Qualcomm issued its own press release, which includes an unofficial English translation of the 27-page KFTC press release.

This was only a press release by the KFTC and an actual written decision  has yet to issue from which any action will be taken.  Accordingly, at this point we provide a summary of the KFTC Press Release and conclude with important questions or issues to look for when the actual written decision of the KFTC issues.  For example, Korean-based Samsung had some of the same or similar licensing practices as U.S.-based Qualcomm and prevailed in U.S. litigation on whether such practices breached the same ETSI FRAND obligations at issue here.  The KFTC written decision may show why Samsung’s activities were okay, but Qualcomm’s were not.

To be clear:  This is a summary based on a review of an unofficial translation of the KFTC Press Release and may not reflect actual facts or the facts and theories upon which the KFTC ultimately bases its written decision.  In other words, assume that the qualification “The KFTC Press Release may indicate that …” applies to everything below since there could be error in the KFTC’s factual findings, the unofficial translation of it, or our summary thereof. Continue Reading Korea FTC proposes sanctions against Qualcomm’s SEP licensing practices

Yesterday, Judge Andrews in the District of Delaware issued an Order that denied InterDigital’s motion to dismiss Microsoft’s Complaint that alleged violation of antitrust laws based on InterDigital’s enforcement of patents alleged to be essential to 3G and 4G cellular ETSI standards and subject to commitments to license on fair, reasonable and non-discriminatory (“FRAND”) terms.  At this early procedural stage of the case, the issue was not whether Microsoft would prevail in the case or whether the allegations in the Complaint were true; rather, at this initial case stage Judge Andrews considered whether Microsoft had stated “plausible” claims against InterDigital upon which relief could be granted if what Microsoft alleged in the Complaint was true when viewing the Complaint in a light most favorable to Microsoft.  He decided that was the case and is allowing the case to proceed.

This ruling itself is not necessarily important as a precedential matter given the relatively low threshold for surviving a motion to dismiss and inability to challenge the factual assertions, but this will be an interesting case to follow as it matures because it is one of the few contemporary instances of a U.S. court considering the application of competition law to standard essential patents (“SEPs”) with sophisticated parties on both sides of the issue. Continue Reading Judge Andrews permits Microsoft’s SEP-based antitrust claims against InterDigital to proceed (Microsoft v. InterDigital)

Yesterday, Qualcomm issued a press release announcing resolution of the investigation under China’s Anti-Monopoly Law by China’s National Development and Reform Commission (“NDRC”) of Qualcomm’s licensing practice for standard essential patents.  In addition to Qualcomm paying a $975 million fine, the China’s NDRC approved Qualcomm’s proposed rectification plan, summarized as follows:

  • Qualcomm will offer licenses to its current 3G and 4G essential Chinese patents separately from licenses to its other patents and it will provide patent lists during the negotiation process.  If Qualcomm seeks a cross license from a Chinese licensee as part of such offer, it will negotiate with the licensee in good faith and provide fair consideration for such rights.
  • For licenses of Qualcomm’s 3G and 4G essential Chinese patents for branded devices sold for use in China, Qualcomm will charge royalties of 5% for 3G devices (including multimode 3G/4G devices) and 3.5% for 4G devices (including 3-mode LTE-TDD devices) that do not implement CDMA or WCDMA, in each cae using a royalty base of 65% of the net selling price of the device.
  • Qualcomm will give its existing licensees an opportunity to elect to take the new terms for sales of branded devices for use in China as of January 1, 2015.
  • Qualcomm will not condition the sale of baseband chips on the chip customer signing a license agreement with terms that the NDRC found to be unreasonable or on the chip customer not challenging unreasonable terms in its license agreement.  However, this does not require Qualcomm to sell chips to any entity that is not a Qualcomm licensee, and does not apply to a chip customer that refuses to report its sales of licensed devices as required by its patent license agreement.

Qualcomm also gave a presentation to investors with further explanation of the agreement reached, including the following:

  • Qualcomm will not pursue further legal proceedings contesting the NDRC’s findings that Qualcomm violated China’s Anti-Monopoly Law
  • Requires no licensing changes outside China with limited exceptions
  • Allows Qualcomm’s licensing business to fully participate in growing China opportunity
  • Qualcomm does not believe that other competition agencies will interpret their laws to reach conclusions similar to China’s NDRC

 

The Northern District of California recently granted judgment on the pleadings in favor of patent-plaintiff ChriMar Systems, Inc. on antitrust and state law unfair competition counterclaims filed by accused infringers Cisco and Hewlett-Packard (HP).  According to the court, the crux of Cisco’s and HP’s counterclaims alleged that ChriMar failed to disclose and commit to license one of its patents on reasonable and non-discriminatory (RAND) terms during a standard-setting process and, subsequent to the standard being adopted, filed suit against them alleging infringement of the same patent.  Cisco and HP alleged that this was an abuse ChriMar’s “monopoly power” and also a violation of California’s Unfair Competition Law.  The court held that judgment on the pleadings was warranted because Cisco and HP failed to define the relevant market and also failed to plead facts showing market power and antitrust injury.  The court, however, granted Cisco and HP leave to amend their counterclaims.

Background.  On October 31, 2011, ChriMar filed a complaint against Cisco and HP alleging that Cisco’s and HP’s “Power over Ethernet telephones, switches, wireless access points, routers and other devices used in wireless local area networks, and/or cameras and components thereof that are compliant with the” Institute of Electrical and Electronic Engineers (IEEE) 802.3af and/or 802.3at standards infringed one or more claims of ChriMar’s U.S. Patent No. 7,457,250 (“the ‘250 Patent”).  In response, Cisco and HP filed counterclaims asserting causes of action for, inter alia, monopolization under the federal antitrust laws as well as for violations of California’s Unfair Competition Law.

In their counterclaims, Cisco and HP allege that the IEEE has a “patent disclosure policy” that “requires participants in the standards setting process to disclose patents or patent applications they believe to be infringed by the practice of the proposed standard.”  Cisco and HP further allege that the IEEE policy requires those who disclose intellectual property rights to provide a written assurance stating whether they would enforce any of their present or future patents “whose use would be required to implement the proposed IEEE standard or provide” a license to such patents royalty-free or on RAND terms.  The counterclaims assert that ChriMar was required to but intentionally “failed to disclose to IEEE its belief that its ‘250 Patent was essential to the proposed 802.3af and/or the 802.3at” during amendments of the 802.3 standard and that “ChriMar was not willing to license the ‘250 Patent on RAND terms.”  Cisco and HP contend that due, in part, to this alleged failure to disclose, the industry adopted the present form of IEEE 802.3af and IEEE 802.3at amendments to the IEEE 802.3 standard and that they are now “locked-in to the current implementation . . . for Power over Ethernet-enabled products.”  Had ChriMar disclosed its belief that the ‘250 Patent would be infringed by practicing the proposed amendments to the 802.3 standard as well as its unwillingness to license the patent on royalty-free or RAND terms, the IEEE would have, according to Cisco and HP, done one or more of the following:

1.  Incorporated one or more viable alternative technologies into the IEEE 802.3af and IEEE 802.3at amendments to the IEEE 802.3 standard;

2.  Requested ChriMar to provide a letter of assurance that it would license the ‘250 Patent on RAND terms;

3.  Decided to either not adopt any amendment to the IEEE 802.3; and/or

4.  Adopted an amendment that did not incorporate technology that ChriMar claims is covered by the ‘250 Patent.

Cisco and HP further contend that ChriMar has taken the position that all Power over Ethernet-enabled products infringe the ‘250 Patent and that, to the extent that the ‘250 Patent is essential to the 802.3af and the 802.3at standards, no viable technology substitutes exist and ChriMar has monopoly power over the Power over Ethernet Technology Market.  Both Cisco and HP allege that this conduct combined with ChriMar’s infringement action against them is an unlawful abuse of monopoly power under Section 2 of the Federal Sherman Antitrust Act and also unfair competition under California’s Unfair Competition Law, Cal. Bus. Code § 17200 (UCL).

HP also filed a claim for attempted monopolization under Section 2, which alleges that ChriMar’s complaint against it, Cisco and several others (Respondents) before the International Trade Commission seeking an exclusion order under Section 337 of the Tariff Act of 1930 constituted an unlawful intent to monopolize the Power over Ethernet Technology market.  According to HP, ChriMar alleged before the ITC  that Respondents infringe the ‘250 Patent by importing products that practice the Power over Ethernet Standards IEEE 802.3af and 802.3at.  HP alleges that the Respondents’ imports collectively “comprise the substantial majority of products commercially offered in the Power over Ethernet Technology Market.”  HP alleges further that ChriMar’s “baseless” allegations of infringement and request for an order prohibiting these Respondents from importing Power over Ethernet products constitutes an unlawful attempt to monopolize the Power over Ethernet Technology Market.

ChriMar’s Answers and Motion to Dismiss.  ChriMar filed an answer to Cisco’s counterclaims as well as an answer to HP’s counterclaims generally denying defendants’ antitrust and UCL allegations and asserting lack of standing and failure to state a claim as affirmative defenses.  ChriMar thereafter moved for judgment on the pleadings on the antitrust and UCL counterclaims.  In its motion, ChriMar argued that Cisco and HP failed to plead facts showing that ChriMar had monopoly power in the alleged relevant market.  Specifically, according to ChriMar, Defendants could not “simply rely on the existence of patent rights or actions to enforce them, as they have done.”  “As a matter of law, ‘patent rights are not legal monopolies in the antitrust sense of that word’ … and simply owning or enforcing the patent right does not make one a ‘prohibited monopolist.'”  ChriMar elaborated:

While the patent may give its owner a right to exclude, that is in no way synonymous with having monopoly power. … Such is presumably the case in a market related to a standards setting context where the standard does not practice the patented technology as Defendants allege in this action, where there are market alternatives to the standard itself such as Cisco’s own proprietary inline power technology, where other parties have rights to exclude in the same technology market (in the form of other patents that read on the standards) and can effectively limit the ability of other parties to exert monopoly power (i.e., control prices), or where competing technologies like wireless communication or conventional unpowered Ethernet can exert economic influences that can keep Power over Ethernet prices or the exercise of monopoly power in check — all issues Defendants’ pleadings never address.

ChriMar further argued that its enforcement of its patent rights was presumed to be valid under the Noerr-Pennington doctrine, which generally grants immunity from antitrust liability for petitioning the government in the form of litigation.  To overcome this presumption, Cisco and HP had to plead facts showing that its litigation against them and ITC proceeding seeking an exclusion order were a “sham,” that is, “objectively baseless.”  To be objectively baseless, Cisco and HP must plead facts showing that ChriMar’s claims were “‘so baseless that no reasonable litigant could realistically expect to secure favorable relief.'”  If Cisco and HP could show that ChriMar’s claims were objectively baseless, they next had to allege facts showing that the litigation was subjectively brought in bad faith in order to overcome Noerr-Pennington immunity.

ChriMar argued that the only factual allegation in HP’s counterclaim is that “‘discovery in the ITC investigation established that ChriMar’s allegations for domestic industry were baseless'” and that “ChriMar withdrew its [ITC] complaint nine months after it was filed, and after HP filed a motion for summary determination on the issue of domestic market.”  These allegations, according to ChriMar, failed to overcome ChriMar’s Noerr-Pennington immunity.

ChriMar also argued that Defendants failed to plead facts adequately defining a relevant market, a necessary element for a Section 2 claim.  Defendants alleged the following relevant market in their counterclaims:

ChriMar actually, potentially, and/or purportedly competes in the United States and worldwide markets for developing and licensing technology essential to implement the IEEE 802.3af and 802.3at amendments to the IEEE 802.3 standard and for technology essential to perform certain functions, allegedly covered by the ‘250 Patent, necessary to implement the IEEE 802.3 standard (hereinafter ‘Power over Ethernet Technology Market’).

ChriMar asserted that this definition is flawed because it fails to identify what particular technologies are included within the market.  Further, ChriMar argued that Defendants “have pled a market whose outer boundaries are defined by ChriMar’s infringement claims (one patent asserted against two standards) rather than any exploration of the ‘reasonable interchangeability’ of use or the cross-elasticity of demand’ outside this intersection.”  Cisco and HP’s counterclaims did not consider that the “technologies and products at issue in this litigation may be interchangeable with other technologies and products such as Power over-Ethernet technologies and products that are not compliant with the two standards . . . or even technologies and products not compliant with any standard, but that themselves are alternatives to the Power over Ethernet technologies and products compliant with these two standards.”  Under the Sherman Act, according to ChriMar, the relevant market cannot be defined by ChriMar’s economic power within the two standards.  Rather, the relevant market must be defined and measured by cross-elasticity of demand or product interchangeability:  “Here, Defendants plead economic power with respect to those entities voluntarily choosing to continue making products compliant with these two particular standards . . . and not the market demand for these particular Power over Ethernet technologies themselves.”

ChriMar further argued that Cisco and HP failed to plead facts showing that ChriMar had monopoly power or that Defendants have suffered antitrust injury.  Further, ChriMar asserted that HP’s attempted monopolization claim was deficient because it failed to plead facts showing that ChriMar’s ITC action “was motivated by an intent to monopolize, rather than primarily motivated by legitimate business purposes.”  Finally, ChriMar argued that Cisco and HP’s UCL claims should be dismissed because they relied on the same conduct that formed the basis of their Section 2 claims.

Cisco and HP’s Opposition.  Cisco filed an opposition to ChriMar’s motion, as did HP.  Responding to ChriMar’s arguments that Defendants failed to adequately plead a relevant market, both Cisco and HP argued that “[m]arket definition is rarely grounds for dismissal of a pleading because ‘the validity of the relevant market is typically a factual element rather than a legal element” that is not appropriate to resolve on a Rule 12 motion.  

On the merits, Defendants argued that numerous cases have consistently held “that the relevant market is defined by those technologies that — before the standard was adopted — were competing to perform the function that was covered by the purportedly essential patent.”  According to Cisco and HP, “ChriMar does not cite to a single case that considered the relevant market where antitrust violations occurred in connection with misconduct in the context of standards development.”  In contrast, Defendants argued that Apple v. Samsung, Broadcom v. Qualcomm and Apple v. Motorola confirm that their market definition was adequately pled.  In Samsung, Apple pled the relevant market as “the various markets for technologies that — before the standard was implemented — were competing to perform each of the various functions covered by each of Samsung’s purported essential patents for UMTS.”  “Apple also identified the patents Samsung declared as standard essential and alleged that ‘pre-standardization there existed alternative substitutes for the technologies covered by Samsung’s patents,’ and that after standardization, ‘viable alternative technologies were excluded.'”  Defendants asserted that the Samsung court found such allegations to “define the bounds of the relevant market” and that “Apple ha[d] sufficiently pled a relevant antitrust market” because “the incorporation of a patent into a standard . . . makes the scope of the relevant market congruent with that of the patent.”

According to Defendants, the Broadcom court reached a similar conclusion, holding that Broadcom, the alleged infringer, had adequately pled a relevant market to support a monopolization claim that was defined as “the market for Qualcomm’s proprietary WCDMA technology, a technology essential to the implementation of the UMTS standard.”  Apple v. Motorola reached a similar conclusion, finding that a relevant market was sufficiently pled as “the various technologies competing to perform the functions covered by Motorola’s declared-essential patents for each of the relevant standards.”

Cisco and HP argued that, “[c]onsistent with these cases, [Defendants] defined the market to comprise the technologies that competed to perform the functions in the [Power over Ethernet] Standards allegedly covered by the ‘250 patent.”  This definition, according to Defendants, “appropriately focuses on alternative technologies that were excluded from the market by ChriMar’s deceptive conduct and which [Defendants] and other implementers of the standard cannot now choose because the industry is ‘locked-in’ to the standard.”  “To the extent ChriMar argues the correct market definition should include the entire standard, rather than some portion of the standard, that argument is inconsistent with both the complaint and with”  Samsung, Broadcom, and Apple.

With respect to monopoly power, both Cisco and HP argued that in the standards context, “it is well settled that patentees holding standard-essential patents can possess monopoly power.”  Cisco and HP again relied upon Samsung, wherein the court concluded that “because standard-essential patents may confer antitrust market power on the patent owner, Apple’s claims” that “Samsung had market power over the relevant market because it obtained the power to raise prices and exclude competition over the technologies covered by Samsung’s standard-essential patents” and that “there was a ‘lock-in’ to the standard” were sufficient to plead monopoly power.  Cisco and HP argued that their counterclaims satisfied this standard because they alleged that, as a result of ChriMar’s accusations that “the leading vendors of Power over Ethernet-enabled products” infringe the ‘250 Patent, “it is ChriMar’s position that no meaningful level of Power over Ethernet-enabled products do not infringe the ‘250 Patent.”  Further, like the allegations in Samsung, Cisco and HP both allege that “because of ‘lock-in’ to the standard,” there are no “viable technology substitutes at present.”  “Accordingly, if the ‘250 Patent claims covered products that comply with the IEEE standard as claimed by ChriMar, ChriMar has monopoly power over the Power over Ethernet Technology Market.”

The element of antitrust injury was also adequately pled, according to Cisco and HP.  Defendants argued that in order to plead that they have suffered antitrust injury, they must allege facts showing an injury to competition.  “It is well settled that misconduct before an SSO harms competition by ‘obscuring the costs of including proprietary technology in a standard and increasing the likelihood that patent rights will confer monopoly power on the patent holder.'”  Cisco and HP pointed to allegations in their counterclaims “concerning the harm to competition caused by ChriMar’s deception in the context of standards setting,” including that ChriMar “‘could charge supra-competitive prices”‘” and that “‘[c]ustomers and consumers will be harmed, either by not getting products that are compliant with the IEEE 802.af and IEEE 802.at amendment to the IEEE 802.3 standard or having to pay an exorbitant price for one.”

Cisco also took issue with ChriMar’s argument that “the anticompetitive harm alleged by Cisco ‘is a potential consequence in any successful patent litigation.'”  According to Cisco, “[t]his is not just ‘ any patent litigation,’ and the competitive harm alleged by Cisco is not the natural result of any litigation.”  “[H]ere, ChriMar deliberately subverted the goals of the IEEE standards-setting process by not disclosing its patent rights, waiting until the industry became ‘locked-in’ to the [Power over Ethernet] Standards, and demanding royalties from implementers of the standards that Cisco has alleged will lead to ‘supra-competitive prices.'”

With respect to ChriMar’s Noerr-Pennington argument, Cisco argued that “[c]ourts have repeatedly recognized that the Noerr-Pennington doctrine does not apply to monopoly power gained through deception in the context of SSOs, even when an allegedly standard-essential patent is subsequently asserted in court.”  As the doctrine does not apply, Cisco and HP need not plead facts supporting the two exceptions.

HP argued similarly, but also asserted that its counterclaim alleged facts supporting the “sham” exception to Noerr-Pennington, that is is, that ChriMar filed a sham ITC proceeding against HP and others only to later voluntarily withdraw it.

HP also asserted that its counterclaims adequately pled that ChriMar had a specific intent to monopolize and a dangerous probability of obtaining a monopoly.  “HP alleges facts that ChriMar deceitfully concealed its patent in connection with the IEEE standards-setting process and then sought to enforce its patent in the ITC.  This conduct shows a specific intent by ChriMar to monopolize the [Power over Ethernet] Technology Market through its anticompetitive conduct.”  “ChriMar became dangerously close to succeeding in its attempt, having dismissed its complaint less than two months before the start of the ITC hearing.”

Finally, Cisco and HP argued that, because they adequately pled causes of action under the federal antitrust laws, they also adequately pled a cause of action under California’s UCL.

The Court’s Decision on Cisco and HP’s Monopolization Counterclaims.  After ChriMar filed its reply, the court entered an order granting ChriMar’s motion.  With respect to Cisco and HP’s monopolization claims, the court agreed with ChriMar that their pleadings failed to allege facts sufficient to define the relevant market, a necessary element to a Section 2 claim.  “Courts typically require that the proposed relevant market be defined with reference to the rule of reasonable interchangeability and cross-elasticity of demand.”  “However, in the context of a standard setting organization (‘SSO’) locking in a standard which eliminates substitute or alternative technologies courts have allowed a relevant market to be defined by the technologies that were competing before the standard was adopted to perform the function that is covered by the standard and the essential patent.”  “For example, in [Apple v. Samsung], the court found sufficient Apple’s allegations that defined the relevant market as the ‘various markets for technologies that — before the standard was implemented — were competing to perform each of the various functions covered by each of Samsung’s purported essential patents for’ the standard.”  The court in Samsung further “noted that Apple alleged that pre-standardization there were alternative substitutes for the technologies covered by Samsung’s patents, and that after the SSO adopted the proposed standard, viable alternative technologies were excluded.”  Cisco and HP’s claims failed to plead such facts or facts defining the market “as comprising the technologies that competed to perform the functions in the Power over Ethernet standards allegedly covered by the ‘250 Patent.”  Therefore, Cisco and HP failed to sufficiently allege the relevant market.

The court also held that Cisco and HP failed to allege sufficient facts showing that ChriMar had the requisite market power to support a Section 2 claim.  On this element, Cisco and HP argued that “their allegations regarding ChriMar’s failure to disclose its belief that the ‘250 Patent was essential to the 802.3af and 802.3at amendments to the IEEE 802.3 to the standard setting organization (‘SSO’) is sufficient to allege their monopoly claims.”  Citing to an earlier decision in Apple v. Samsung, Defendants contended that “it is sufficient to allege that if the ‘250 Patent is essential, then ChriMar has monopoly power.”  The court, however, concluded that the decision did not support defendants’ contention.  Specifically, “in that case, the court determined that Apple had sufficiently alleged monopoly power.”  “The court in Samsung further noted that, in contrast to the theory that a patent holder misrepresented to an SSO that it would license its intellectual property on RAND terms, ‘[c]ourts have been more reluctant to find an antitrust violation based on the theory that a failure to disclose intellectual property rights in a declared essential patent created monopoly power for a member of the SSO.'”  Indeed, the Samsung court expressly required the plaintiff to allege that “there was an alternative technology that the SSO was considering during the standard setting process and that the SSO would have adopted an alternative standard had it known of the patent holder’s intellectual property rights.”  The Samsung court further made it “clear that the heightened pleading requirements under Rule 9(b) for fraud applies to” the types of antitrust claims brought by Cisco and HP.  Applying these standards to those claims, the court concluded that “they fail to allege non-conclusory facts which, if true, would be enough to show that ChriMar acquired sufficient monopoly power.”  “Notably, Defendants fail to clearly allege that the IEEE would have adopted an alternative standard had it known about the ‘250 Patent and ChriMar’s position with respect to its ‘250 Patent.”  Therefore, Cisco and HP failed to plead the necessary element of market power.

Finally, with respect to the necessary element of antitrust injury, the court concluded that Cisco and HP’s claims merely alleged, “in conclusory fashion, that ChriMar’s alleged conduct has ’caused and will directly and proximately cause antitrust liability to [Defendants] within the Power over Ethernet Technology Market . . .”  Neither defendant pled any facts which, if true, “would demonstrate antitrust injury.”

Because Cisco and HP failed to allege the necessary elements of a relevant market, monopoly power, and antitrust injury, the court found “that Defendants have not alleged sufficient facts to state a counterclaim for monopolization.”  However, the court provided Defendants with leave to amend their monopolization claims in an attempt to remedy the deficiencies identified by the court.

Notably, the court did not address — at least not at this time — ChriMar’s Noerr-Pennington arguments but may very well do so on any subsequent motion to dismiss the amended counterclaims permitted by the court’s decision.

The Court’s Decision on HP’s Attempted Monopolization Counterclaim.  Because HP failed to plead a relevant market as well as antitrust injury, HP’s attempted monopolization claim failed as well.  “In addition, although a lower percentage [of market share] is required for an attempted monopoly claim, as opposed to an actual monopoly claim, HP must still allege sufficient market power.”  The court concluded that HP failed to allege sufficient market power which was also “fatal to its attempted monopolization claim.”

The court disagreed with ChriMar’s argument that “HP’s attempted monopolization counterclaim fails for the additional reason that HP fails to allege specific intent to monopolize or a dangerous probability of obtaining monopoly power because HP’s attempted monopolization allegations are based solely around the terminated [ITC] investigation.”  The court concluded that “HP does not rely solely upon the ITC investigation” but “is also premised upon ChriMar’s alleged misconduct before the SSO.”  However, because the court was granting HP leave to amend its counterclaim to adequately allege a relevant market, market power and antitrust injury, the court did not reach the issue of whether HP’s additional allegations regarding the ITC investigation would be sufficient, standing alone, to state a claim for attempted monopolization “if HP sufficiently alleges the relevant market power, and an antitrust injury.”  HP’s attempted monopolization claim was therefore dismissed with leave to amend.

The Court’s Decision on Cisco and HP’s UCL Counterclaims.  The court also dismissed Cisco and HP’s UCL counterclaims.  “Courts have held that where the alleged conduct does not violate the antitrust laws, a claim based on unfair conduct under the UCL cannot survive.”  “Because the Court finds that Defendants have not alleged facts sufficient to state a a counterclaim for monopolization and attempted monopolization, Defendants’ UCL counterclaims” fail as well.  However, as with the other counterclaims, the court granted HP and Cisco leave to amend this claim as well.

We will continue to track the pleading and other developments in this case.

Yesterday, the Second Circuit in Lotus v. Hon Hai Precision affirmed the district court’s dismissal of antitrust and breach of contract claims arising from foreign activity based on the patent owner not licensing, but asserting in litigation in China, patents subject to FRAND-Z (i.e., royalty free) standard setting obligations.  Consistent with the U.S. Federal Trade Commision’s amicus brief (see our Jan. 13, 2014 post), the Second Circuit ruled that dismissal was proper because any effect on U.S. domestic or import commerce from the foreign activity did not “give[] rise to” the asserted antitrust claims as required under the Foreign Trade Antitrust Improvements Act (“FTAIA”).

We refer you to our prior post (Jan. 13, 2014 post, May 17, 2013 post and Feb. 13, 2013 post) for the background discussion of this case that involves plaintiff Lotes suing Hon Hai and related entities (such as Foxconn) for reneging on licensing commitments made to the USB Implementers Forum (USB-IF) by not licensing USB 3.0-related patents on FRAND-Z terms and violating U.S. antitrust laws by instituting foreign patent-enforcement proceedings on those patents against Lotes in China.  Below is a summary of the Second Circuit’s ruling.

FTAIA Requirements Are Substantive, Not Juridictional.  First, in overruling a prior decision, the Second Circuit ruled that the FTAIA restrictions on antitrust claims based on foreign conduct are substantive, not jurisdictional, requirements–i.e., “they go to the merits of the claim rather than the adjudicative power of the court.”  Among other things, this means the restrictions are potentially waivable (though the Second Circuit reserved ruling on whether they actually are waiveable, noting that “[A] ‘right conferred on a private party, but affecting the public interest, may not be waived or released if such waiver or release contravenese the statutory policy.”).

Patentee’s SSO Obligation Did Not Waive FTAIA Defenses.  Second, the Second Circuit ruled that the patentee did not contractually waive the FTAIA restrictions through its standard setting commitments.  As an initial mattter, the Second Circuit stated that the plaintiff failed to first raise the issue in the district court and “an appellate court will not consider an issue raised for the first time on appeal.”  Further, even assuming arguendo that the FTAIA restrictions were waivable, “nothing in the cited [USB-IF standard setting] contractual provisions suggests that the defendants waived those [FTAIA] requirements here.”  Specifically, the plaintiff Lotes pointed to five provisions of the USB-IF’s Contributors Agreement:

  1. Paragraph 2 that recites the contributors’ understanding “that it is imperative that they and their representatives act in a manner which does not violate any state, federal or international antitrust laws and regulations.”  The Second Circuit did not find waiver here, because this “merely recites the parties’ understanding that they are subject to various antitrust laws and regulations and affirms the parties’ commitment to abide by their existing legal obligations.”  Thus, “[at] most”, this provision “can be read to recognize and incorporate into the Contribution Agreement the signatories’ preexisting obligations under U.S. antitrust law,” but “do not waive any statutory requirements or otherwise alter the scope of the signatories’ legal obligations.”  Thus the signatories “remain free to argue that, under the FTAIA, the Sherman Act does not apply to or regulate the conduct at issue in this case.”
  2. Paragraph 2 statement that “prohibits any communications regarding … exclusion of competitors or any other topic that may be construed as a violation of antitrust laws.”  The Second Circuit did not find waiver here, because this simply “prohibits the parties from engaging in anticompetitive ‘communications.'”
  3. Paragraph 6.6 statement that the Agreement is to be “construed and controlled” by New York law.  The Second Circuit found no waiver here, because this was simply a “standard choice-of-law” clause.
  4. Pargraph 6.7 statement that “all disputes arising in any way out of this Agreement shall be heard in, and all parties irrevocably consent to jurisdiction and venue in, the state and Federal courts of New York, New York.”  The Second Circuit found no waiver here, because this was simply a “standard … choice-of-forum” clause.
  5. Paragraph 6.12 statement that “the obligations of the parties hereto shall be subject to all laws, present and future, of any government having jurisdiction over the parties hereto.”  The Second Circuit found no waiver here, because this “merely reiterates the parties’ existing obligation to comply with all applicable laws” as in Paragraph 2 above.

Thus, the Second Circuit held that the patentee did not waive its FTAIA defenses by signing the USB-IF Contributor Agreement.

Foreign Conduct’s U.S. Domestic Effect.  Third, following Seventh Circuit precedent, the Second Circuit held that foreign anticompetitve conduct can have the FTAIA-required “direct, substantial, and reasonably forseeable effect”on U.S. domestic or import commerce ” even if the effect does not follow as an immediate consequence of the defendant’s conduct, so long as there is a reasonably proximate causal nexus between the conduct and the effect.”  The Second Circuit thus rejected the Ninth Circuit’s “direct … effect” standard applied by the district court below.  The Second Circuit, however, declined to decide “the rather difficult question” whether that requirement was met in this case because the case could be resolved based on the “give rise to” requirement discussed below.

Does Effect “give rise to” Antitrust Claims.  Finally, the Second Circuit ruled that the alleged anticompetive conduct did not “give[] rise to” the plaintiff’s antitrust claim because, “in the causal chain the plaintiff alleges, the plaintiff’s exclusion from the relevant market actually precedes the alleged domestic effect” [emphasis in original].  The Second Circuit described the domestic effect allegations as follows:

Lotes alleges that the defendants’ foreign conduct had the effect of driving up the prices of consumer electronics devices incorporating USB 3.0 connectors in the United States.  But those higher prices did not cause Lotes’ injury of being excluded from the market for USB 3.0 connectors–that injury flowed directly from the defendant’s exclusionary foreign conduct.  Lotes’s complaint thus seeks redress for precisely the type of “independently caused foreign injury” that … falls outside of Congress’s intent [in enacting FTAIA].

Indeed, to the extent there is any causal connection between Lotes’s injury and an effect on U.S. commerce, the direction of causation runs the wrong way.  Lotes alleges that the defendants’ patent hold-up has excluded Lotes from the market, which reduces competition and raises prices, which are then passed on to U.S. consumers.  Lotes’s injury thus precedes any domestic effect in the causual chain.  And “[a]n effect never precedes its cause.” [emphasis in original]

The Second Circuit also rejected Lotes’s “creative arguments” that “the defendants have also failed to license the necessary claims of certain U.S. patents, which has had the effect of foreclosing competition in the United States.”  Problems with the argument include no allegation that Lotes conducts business in the United States, allegation that Lotes already has rights under the U.S. patents based on the USB-IF Contributors Agreement, and fact that Lotus would still be excluded from the USB 3.0 market because of the foreign enforcement activity against Lotes’s sole-foreign-based manufacturing:

As an initial matter, we are skeptical that the defendants’ refusal to license their U.S. patents has resulted in any domestic foreclosure of competition.  Lotes has not alleged that it manufactures products in the United States, imports products into this country, or otherwise does business here.  It is thus unclear why Lotes believes it even needs a U.S. license from the defendants in order to operate.  And even to the extent a license is in fact necessary, Lotes alleges that, by virtue of the Contributors Agreement, it “either already has .. .or has in irrevocable right to a RAND-Zero license” for all patent claims and other intellectual property necessary to practice the USB 3.0 standard.  The alternative domestic effect Lotes relies upon is thus illusory.

In any event, any domestic effect resulting from the defendants’ failure to license their U.S. patents did not proximately cause Lotes’ injury.  Indeed, any such effect is not even a factual, “but for” cause of Lotes’s injury.  Even if the defendants had granted Lotes a U.S. license, Lotes would still be excluded from the USB 3.0 market by virtue of the defendants’ independent infringement suits in China.  But for the failure to license, Lotes would have suffered the same harm. [emphasis in original]

The Second Circuit thus affirmed dismissal on this alternative ground.  Further, the Second Circuit affirmed the district court’s denying Lotes a second opportunity to amend the complaint because, “[i]n light of our conclusion that any domestic effect did not ‘give[] rise to’ Lotes’s claim, amendment would be futile.”

SanDisk brought suit against Round Rock Research in the District of Delaware last week, alleging that the patent assertion entity’s acquisition and enforcement of standard essential patents previously held by Micron Technology has violated federal and state antitrust laws and breached contractual commitments to license the patents on RAND terms. The action, Sandisk Corporation v. Round Rock Research LLC, Case No. 1:14-cv-00352, comes in the midst of two ongoing patent cases between the companies — one declaratory judgment action filed by SanDisk in the Northern District of California and the other an infringement action filed by Round Rock in Delaware.

SanDisk’s March 20, 2014 complaint alleges that Round Rock Research conspired with flash memory device manufacturer Micron Technology to acquire and subsequently monetize patents that Micron could not enforce itself due to SSO commitments.  Specifically, SanDisk alleges Micron’s participation in the JEDEC Solid State Technology Association obligated Micron to disclose patents that might be relevant to JEDEC’s work, even after the adoption of a given standard and to offer participants licenses on RAND terms.  SanDisk alleges that Micron failed to disclose the patents-at-issue despite their relevance to JEDEC eMMC standards and that Round Rock acquired the patents in attempt to monetize them free of Micron’s SSO obligations:

After acquiring patents from Micron, Round Rock sought from SanDisk supracompetitive, hold-up royalties for patents that Micron had never disclosed to JEDEC and that Round Rock claimed SanDisk infringed by practicing a JEDEC standard (“the eMMC standard”). When SanDisk did not capitulate to its demands, Round Rock sued seeking above-RAND royalties and treble damages based on undisclosed alleged standard-essential patents.

SanDisk further alleges that Round Rock has admitted to targeting SanDisk’s current eMMC-compliant products by acquiring patents it believed covered those devices.

By way of background as set forth in the complaint, Round Rock acquired a group of patents from Micron in 2009. Round Rock later approached SanDisk regarding these patents and made a presentation to SanDisk in October 2011, during which Round Rock claimed to have acquired patents reading on products compliant with JEDEC eMMC standard JESD84-A441.   Round Rock sought “supracompetitive” royalty fees on SanDisk’s embedded flash drive products. SanDisk filed for declaratory judgment that the patents presented by Round Rock were invalid and not infringed by SanDisk. Case No. 3:11-cv-05243 (N.D. Cal.). Round Rock then acquired new patents from Micron in 2012 and filed a separate patent infringement action against SanDisk in Delaware. Case No. 1:12-cv-00569.

Since 2011, Round Rock has filed approximately 20 patent infringement actions against a variety of companies, including Acer, Amazon.com, American Apparel, ASUSTeK, Dell, Dole Foods, Fruit of the Loom, Gap, Hanes, HTC, JC Penny, Lenovo, Macy’s, Oracle, Pepsi, V F, and Wal-Mart, almost all of which were also filed in the District of Delaware.

In an order dated January 16, 2014, the Competition Commission of India (“CCI”) ordered another investigation into Ericsson’s licensing of cellular patents that are subject to FRAND obligations, which investigation will parallel a similar investigation of Ericsson that CCI ordered on November 12, 2013 (discussed in our prior post).  The rationale for this new investigation, requested by Intex Technologies, is the same as that for the prior investigation requested by Micromax Informatics and we refer you to our prior post’s discussion thereof.

One difference concerns Ericsson’s refusal to disclose what licensing terms it gave to other licensee’s that the prospective licensee requested to assess whether the license offer to them is fair, reasonable and non-discriminatory.  In the Micromax investigation, the parties were in litigation and Ericsson refused to produce the other comparable licenses in a mediation of that dispute, leading CCI to state that “Refusal of OP [Ericsson] to share commercial terms of FRAND licenses with licensees similarly placed to the informant [Micromax], fortified accusations of the Informant, regarding discriminatory commercial terms imposed by the OP.”

In this new investigation, the rub comes from an NDA required by Ericsson to negotiate a license with requester Intex.  Intex asserts that Ericsonn’s NDA prevents them from consulting with vendors of components that implement the standard, allowed Ericsson to claim it could not produce license agreements with others given similar NDAs entered with them, and required adjudicating any disputes in another country.  CCI found that the NDA was problematic for several reasons, including allowing Ericsson to hide whether its licensing terms were discriminatory as compared to other licenses it granted on the same FRAND-obligated standard essential patents:

Charging of two different license fees per unit phone for use of the same technology prima faci is discriminatory and also reflects excessive pricing vis-à-vis high cost phones.  NDA thrust upon the consumers by OP [Ericsson] strengthens this doubt as after NDA, each of the user of SEPs is unable to know the terms of royalty of other users.  This is contrary to the spirit of ‘applying FRAND terms fairly and uniformly to similarly placed players.’  Transparency is hallmark of fairness.  Both forcing a party to execute NDA and imposing excessive and unfair royalty rates prima facie was abuse of dominance and violation of section 4 of the Act.  Imposing a jurisdiction clause debarring Informant [Intex] from getting disputes adjudicated in the country where both parties were in business and vesting jurisdiction in a foreign land prima facie was also an abuse of dominance.

Concerns about improper NDA requirements are not unique to this CCI investigation.  The recent cable operator lawsuit against Rockstar includes concerns about Rockstar requiring NDA terms in negotiating licenses under patents it acquired from Nortel, which patents include standard essential patents subject to standard-setting organization (SSO) obligations such as RAND, FRAND or  royalty-free licensing obligations.

As with the prior Ericsson investigation, CCI’s order makes clear that these are just initial observations, not final expressions of opinion, and the investigation should proceed without being swayed by the initial observations.

A few weeks ago, we posted about ViewSonic’s FRAND-related counterclaims against Zenith, Panasonic and Philips (collectively, “Manufacturing Plaintiffs”), as well as its FRAND-related Third-Party claim against MPEG LA.  On Monday, December 16, the Manufacturing Plaintiffs and third-party MPEG LA filed a motion to dismiss with prejudice ViewSonic’s FRAND-related counterclaims for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6).

Sherman Act Section 2 Claim. The Manufacturing Plaintiffs assert that, to state a viable monopolization claim under Section 2 of the Sherman Act, ViewSonic must allege facts showing that each Manufacturing Plaintiff has monopoly power in the relevant market for ATSC compatible televisions. However, “[t]he only allegation of monopoly power . . . is [that] ‘ViewSonic is informed and believes … that Manufacturing Plaintiffs and the other manufacturing members of the ATSC Pool have market power in the relevant market, as together they account for a large percentage of the televisions sold in the United States.”  The Manufacturing Plaintiffs argue that, not only is this allegation conclusory and bereft of any factual heft, it is not even directed at each Manufacturing Plaintiffs’ individual alleged monopoly power.

The Manufacturing Plaintiffs also argue that ViewSonic’s monopoly counterclaim fails because it does not plead facts showing that the allegedly deceptive FRAND commitments made by the Manufacturing Plaintiffs to the ATSC constitutes the exclusory conduct required to state a Section 2 claim. “[A] deceptive FRAND commitment constitutes ‘exclusionary conduct’ only when the standard setting organization (‘SSO’) relied on that deceptive FRAND commitment to choose that technology over competing alternative technologies that were under consideration – which ViewSonic does not allege was the case here.”  Indeed, ViewSonic’s                “[c]ounterclaim contains no facts regarding Zenith’s and Philips’ alleged statements to the SSOs,” let alone whether those alleged statements were deceptive.

Finally, the Manufacturing Plaintiffs argue that ViewSonic fails to plead the requisite element of antitrust injury to participants in the relevant market.  “[T]he Counterclaim does not identify any TV competitors that have been excluded” from the market.  “As the Counterclaim concedes, a license for more than 100 essential patents in the ATSC Standard is available to anyone and everyone for $5 per ATSC compatible TV.” ViewSonic has simply refused to “enter into a pool license.”  In fact, ViewSonic admits that it has not been excluded from selling ATSC compatible TVs.  “ViewSonic concedes that it has been manufacturing and selling ATSC compatible TVs presumably at a cost advantage over its competitors who, unlike ViewSonic, have paid for a license for the IP utilized in their products.”

Sherman Act Section 1 Claim.  The Manufacturing Plaintiffs argue that ViewSonic’s conspiracy claim fails because it contains no “factual allegations supporting its claims that Zenith, Panasonic, Philips and MPEG LA agreed to limit ViewSonic’s access to ATSC licenses at FRAND rates.”  “[T]he Counterclaim avers no allegations of conversations between and among the allegedly colluding parties or where or when they took place.”  “These same defects taint ViewSonic’s claims that Zenith, Panasonic and Philips agreed not to license on FRAND terms, to demand unreasonable royalties, refuse to offer individual licenses on the patents at issue, and demand a license for patents despite failing to demonstrate essentiality.”

The Manufacturing Plaintiffs also argue that “the alleged conspiracy to fix prices for ATSC compatible TVs is simply implausible.” This is because the Manufacturing Plaintiffs constitute only three of the “multitude of manufacturers” that make ATSC compatible TVs.  “Absent the participation of virtually all of the TV manufacturers, Zenith, Panasonic and Philips could not feasibly fix prices as they would be undersold by the companies who were not party to the conspiracy.”

MPEG LA argues that the Section 1 claim against it should be dismissed because, as ViewSonic concedes, “MPEG LA is not a ‘horizontal competitor’ in the relevant ATSC compatible TV market, but rather a licensing administrator ‘acting on behalf of each of the Counter-Defendants’ solely in that capacity.”

Finally, the Manufacturing Plaintiffs argue that ViewSonic cannot, as a matter of law, plead that it has suffered antitrust injury as a result of the alleged conspiracy because ViewSonic is a horizontal competitor of the Manufacturing Plaintiffs. “[A] competitor who is not part of the price-fixing conspiracy can undersell the ‘fixed’ price, and thus is ‘benefited,’ not ‘injured,’ by the alleged illegal price-fixing.” That is what ViewSonic is doing here: “[b]y refusing to enter into a license, but continuing to sell ATSC compatible TVs, ViewSonic is able to undercut its competitors who pay royalties for the ATSC Standard IP in their products.”

FRAND Breach Claim.  ViewSonic’s counterclaim for alleged breach of the Manufacturing Plaintiffs’ FRAND obligations should be dismissed because ViewSonic has not alleged that they have failed to offer it a license: “ViewSonic simply does not like the offer terms.”  In fact, Viewsonic is trying to “obtain a rate that discriminates in its favor” when compared to the license fee paid by other licensees to the MPEG LA pool. “This is an argument properly left for the jury which will assess Plaintiffs’ reasonable royalty damages when ViewSonic’s patent infringement defenses fail.”  In other words, ViewSonic’s FRAND-related arguments are “a defense to the amount of damages it owes the Plaintiffs,” not a “standalone cause of action sounding in contract.”

The Manufacturing Plaintiffs also assert that ViewSonic’s breach claim fails because it does not allege facts demonstrating that ViewSonic is a third-party beneficiary of the Manufacturing Plaintiffs’ alleged commitments to the ATSC.  “ViewSonic makes no supporting allegations that it is” a member of ATSC “with standing to enforce” the alleged contract between the Manufacturing Plaintiffs and the ATSC.  ViewSonic has only conclusorily alleged that it is a beneficiary.

ViewSonic’s claim that the Manufacturing Plaintiffs breached their FRAND obligations by refusing to offer an individual patent license (as opposed to a license to the entire MPEG LA pool) fails to state a claim because ViewSonic “does not specify which Manufacturing Plaintiffs supposedly failed to offer individual licenses, instead only averring that ‘some’ have not.”  The Manufacturing Plaintiffs’ alleged failure to offer individual licenses or take into consideration that patents in the ATSC Pool will soon expire, and alleged inclusion of nonessential and foreign patents in their license offers has “nothing to do with any obligation alleged to have been part of the purported contractual commitment to [ATSC to] license essential ATSC patents on FRAND terms.” “In the absence of such supporting facts, these allegations cannot plausibly be enforced as the basis for a breach of contract claim independently of the reasonable royalty determination at issue in [the Manufacturing] Plaintiffs’ infringement action.”

Finally, ViewSonic fails to plead facts showing that it has suffered breach of contract damages. “A disagreement over the ultimate [FRAND royalty] rate does not state a claim for contract damages” and “ViewSonic cannot make out a breach of contract based on a purported obligation to offer a specific FRAND rate that ultimately turns out to be the correct rate after trial.” Specifically,

“ViewSonic fails to point to anything in any contractual commitment or otherwise that plausibly supports imposing what would effectively be a fundamentally unfair penalty on an essential patent holder if an infringer disagrees that the FRAND rate is fair and reasonable and the jury awards a different rate than what the essential patent holder offered after infringement is proven.”

“This is particularly true here, where ViewSonic is attempting to dispute infringement and validity, and has not indicated it will agree to take a license at a rate set by the Court or jury, leaving [the Manufacturing] Plaintiffs no choice but to assert infringement claims.”  The appropriate FRAND rate will be determined by the jury if it concludes that ViewSonic infringes, but that amount does not constitute breach of contract damages for ViewSonic.

Promissory Estoppel Claim.  As with ViewSonic’s breach of FRAND claim, the Manufacturing Plaintiffs argue that ViewSonic’s promissory estoppel claim fails because it does not specifically identify what FRAND promises were made by which Manufacturing Plaintiff, when they were made, and to whom they were made.  Finally, the Manufacturing Plaintiffs argue that ViewSonic’s promissory estoppel claim should be dismissed because it fails to plead facts showing that they justifiably relied upon the alleged promises in manufacturing ATSC compatible TVs.  Indeed, ViewSonic asserts that it had no knowledge of the alleged SEPs, but then also claims that it received offers to license those patents.

What’s Next?

ViewSonic will have to either oppose the motion to dismiss or attempt to amend its counterclaim in an effort to remedy the alleged deficiencies identified in the motion.