As many commentators have noted, Judge Robart’s Microsoft-Motorola decision may provide a roadmap to courts and parties in other FRAND disputes. Not surprisingly, Apple recently brought the decision to the attention of both the Federal Circuit (in the appeal of Judge Posner’s decision to dismiss Motorola’s SEP-related claim for damages and injunctive relief) and the
Patent Alert: En banc Federal Circuit indecisive on patent eligibility of computer-implemented inventions (CLS v. Alice)
Last Friday, May 10, 2013, in CLS Bank v. Alice Corp., No. 2011-1301, the Federal Circuit (en banc) issued a very divided decision in which a majority of the court affirmed that method, computer-readable medium and system patent claims on a computer-implemented invention were not patent eligible under § 101, but there was no majority consensus on the rationale as to why those claims were not patentable subject matter. As a result, this en banc decision has no precedential value beyond the specific determination of patent eligibility for the particular claims at issue. The fractured nature of the decision—and even intimations by judges on the court—indicate that this case may be primed for Supreme Court review.
This 135-page decision has seven separate opinions, summarized below. A few top-level points may be gleaned from them:
BlackBerry files amicus brief supporting availability of SEP injunctions in Fed Circuit FRAND appeal (and also gets sued by Wi-LAN for LTE patent infringement)
In a post yesterday, we discussed Nokia’s amicus brief submitted “in support of neither party” in the Apple-Motorola FRAND Federal Circuit appeal (Judge Posner edition). The amicus brief recently filed by BlackBerry (formerly Research In Motion) is now public, and it is very similar to Nokia’s — at least when it comes to the issue of the availability of injunctive relief. While not expressly supporting Motorola, BlackBerry echoes Motorola’s (as well as Nokia’s) argument that injunction relief should not be categorically precluded for FRAND-encumbered standard-essential patents.
[2013.05.07 BlackBerry Amicus Brief]
Coincidentally, BlackBerry also now finds itself on the receiving end of a new patent infringement complaint from Canadian non-practicing entity Wi-LAN, which is based on BlackBerry’s alleged infringement of a patent that Wi-LAN claims is essential to the ETSI 3GPP Long-Term Evolution (LTE) telecommunications standard.
Nokia amicus brief urges Federal Circuit to reverse Judge Posner’s standard-essential patent rulings
Earlier this week, both Nokia and BlackBerry (formerly Research In Motion) were both granted leave to file amicus briefs with the Federal Circuit in the Apple v. Motorola appeal of Judge Posner’s June 2012 decision to dismiss the parties’ respective infringement claims. BlackBerry’s brief is still confidential, but Nokia’s is now publicly available.
[2013.05.06 Nokia Amicus Brief]
While Nokia’s amicus brief is styled as being “in support of neither party,” it’s clear that Motorola should be the one happy here — Nokia asks the Federal Circuit to reverse Judge Posner’s decisions relating to Motorola’s standard-essential patents at issue, both with respect to damages and injunctive relief. Nokia claims that Judge Posner’s ruling (1) creates a bright line rule against injunctions that violates Supreme Court precedent, and (2) unnecessarily devalues standard-essential patents by mandating that any damages be based on the smallest salable unit, which runs contrary to industry practices in SEP licensing. A summary is after the jump.
Which appeals court has appellate jurisdiction over the Microsoft-Motorola RAND case?
The district court in the Microsoft-Motorola RAND breach of contract case has already decided some unique issues of first impression, and will take on some more in the next phase of the case. And if the parties don’t settle, an appeal is likely to follow. This raises an interesting question, one that doesn’t necessarily have a clear answer — which appellate court would have jurisdiction over an appeal of Judge Robart’s RAND-related rulings?
The Western District of Washington sits within the 9th Circuit Court of Appeals (which, as noted below, has already heard an interlocutory appeal in this case). But as you may know, in order to preserve uniformity in patent law, the U.S. Court of Appeals for Federal Circuit in Washington, DC is the court designated by Congress as the appeals court with exclusive jurisdiction for nearly all patent cases. The Microsoft-Motorola case (at least the part which has garnered the most attention) involves a breach of contract issue relating to patents, standard-setting, and patent licensing issues. So, which is it — the 9th Circuit or the Fed Circuit?
Brace yourselves – this will take a couple thousand words.
Federal Circuit denies Motorola’s motion to dismiss or transfer Apple FRAND appeal to 7th Circuit…for now
We’ve got an update from the Apple-Motorola Federal Circuit FRAND jurisdictional dispute. Today, the U.S. Court of Appeals for the Federal Circuit denied Motorola’s motion to dismiss Apple’s FRAND appeal (or transfer the case to the 7th Circuit). For a recap on the issues surrounding this motion and the Apple-Motorola FRAND appeal (this one from
Apple asks Federal Circuit to affirm Judge Posner’s denial of injunctive relief and damages for Motorola FRAND-pledged standard-essential patents
Much of the activity and attention in the standard-essential patent world over the last few days has been focused on Judge James L. Robart’s groundbreaking decision in the Microsoft-Motorola RAND breach of contract case. But that wasn’t the only RAND-related bit of news happening this past Thursday — that same day, in the Federal Circuit, Apple filed its response to Motorola’s appeal of Judge Posner’s decision to deny both damages and injunctive relief to Motorola in a case involving Apple’s alleged infringement of Motorola standard-essential patents.
Due to the fact that the Federal Circuit has consolidated appeals by both parties, Apple’s brief is technically both a response brief and a reply brief — but we will only deal with the SEP-specific issues here. In the brief, which we’ll delve into after the jump, Apple urges the Federal Circuit to uphold Judge Posner’s findings that, even if infringement could be proven: (1) Motorola failed to introduce a cognizable damages theory for infringement of the SEPs at issue; and (2) Motorola could not show entitlement to injunctive relief for its FRAND-encumbered patents.
Link: [Apple April 25, 2013 Appellate Brief]Continue Reading Apple asks Federal Circuit to affirm Judge Posner’s denial of injunctive relief and damages for Motorola FRAND-pledged standard-essential patents
Qualcomm sides with Motorola on FRAND/SEP issues in Apple v. Motorola Federal Circuit appeal
Earlier today we summarized the amicus brief filed by Intel in the Apple v. Motorola Federal Circuit appeal, and we noted that a number of other not-yet-publicly-available amicus briefs were also filed with the court. Today, the amicus brief filed by Qualcomm hit the docket — and out of all of the recent amicus briefs, it’s the only one that was expressly filed in support of Motorola.
As it has consistently argued in the past, Qualcomm — a holder of a significant portfolio of SEPs — argues here that a FRAND commitment does not categorically preclude injunctive relief, and it urges the Federal Circuit to refrain from adopting such a rule. Qualcomm also argues against the particular methodologies of calculating reasonable royalty damages for both FRAND-pledged essential patents and non-essential patents (e.g., the so-called ex ante or incremental value rules) that certain amici have advocated for.
Continue Reading Qualcomm sides with Motorola on FRAND/SEP issues in Apple v. Motorola Federal Circuit appeal
Intel files amicus brief supporting Apple in Federal Circuit appeal of Judge Posner decision
Back in January, we summarized a number of amicus briefs filed by a diverse group of companies and organizations concerning the issues in the Apple v. Motorola Inc. Federal Circuit appeal of Judge Posner’s decision to dismiss the parties’ respective patent infringement cases. We noted that because the Federal Circuit extended the deadline to file amicus briefs until seven days after Motorola’s opening brief was due, more parties were certain to make their views on standard-essential patent and FRAND issues known to the court. Sure enough, several others filed amicus briefs last week. Yesterday, the amicus brief filed by Intel became publicly available.
As you can see from our summary below, Intel’s brief clearly supports Apple, at least with respect to Apple’s cross-appeal of the standard-essential patent issues in the case.
Continue Reading Intel files amicus brief supporting Apple in Federal Circuit appeal of Judge Posner decision
Motorola tells Federal Circuit Judge Posner’s ruling would inappropriately create a “categorical rule” against standard-essential patent injunctions
Late last week, Motorola Mobility filed its Responsive and Opening Brief in Federal Circuit Appeal No. 2012-1548 (the appeal from Judge Posner’s June 2012 decision to dismiss competing infringement claims in a case between Apple and Motorola). We’ve previously discussed the large number of amicus briefs filed with the Federal Circuit by a wide variety of parties addressing the issues of damages and injunctive relief with respect to standard-essential patents. Here, Motorola characterizes Apple as an “unwilling licensee” who wants to change the rules of how standard-essential patent licensing has long been done in the cellular industry. Motorola claims that Judge Posner’s rulings — which barred injunctive relief for Motorola’s FRAND-pledged standard-essential patent at issue, and limited damages to ex ante (pre-standard) value of the patent — “devalue essential patents,” “upset the settled expectations” of patent holders who contribute to industry standards, and “create disincentives” to participate in standard-setting activities.
Continue Reading Motorola tells Federal Circuit Judge Posner’s ruling would inappropriately create a “categorical rule” against standard-essential patent injunctions