Big news today in the Microsoft-Motorola RAND breach of contract dispute taking place before the U.S. District Court for the Western District of Washington.  After the November 2012 bench trial and significant post-trial briefing between the parties on a variety of issues, we finally have an order from the court.  However, we will need to

  • Yesterday, President Obama held an hour-long Google hangout to White Housetake questions from the public, and the topic of patents came up.  He answered a question about non-practicing entities and startups, and acknowledged that the America Invents Act “only went about halfway” to full patent reform.  (via Patent Progress)
  • Judge James L. Robert issued

usbIt’s no surprise that most of the attention being paid to standard-essential patent issues is focused on the companies involved in the “smartphone wars” — Motorola, Microsoft, Apple. Samsung, etc.  But while these consumer product companies are of course affected by issues involving standard-essential patents, so too are their component suppliers.  A lawsuit filed this past fall in the Southern District of New York by Lotes Co. against Hon Hai Precision Industry Co. and Foxconn over SEP issues relating to the Universal Serial Bus (USB) 3.0 standard is a great example of this.  Here, we attempt to provide a brief overview of the issues in the Lotes-Hon Hai case.
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On Friday, January 4, 2013, a non-practicing entity named Steelhead Licensing LLC filed a litany of SEP-related lawsuits in the United States District Court for the District of Delaware against various wireless device manufacturers and cellular carriers.  Each of the entities is accused of infringing a single, soon-to-expire (on Feb. 13) patent — U.S. Pat. No. 5,491,834, entitled “Mobile Radio Handover Initiation Determination.”
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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.


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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.


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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.


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