This is the first of a couple posts we intend to make on the FTC v. Qualcomm litigation that recently concluded a bench trial last week and is awaiting decision by Judge Koh in the Northern District of California (San Jose Division) federal court.  This case occurs at a historical point of opportunity and transformation brought by the opening stages of the 5G communication revolution.  The theories and targets of the FTC case have caused many to raise concerns about how the case will cause upheaval in long-established industry licensing practices as well as national security concerns about the United States leading the 5G revolution.

This first post will provide background and set the stage for why you may care about what is going on in this case and U.S. innovation law generally.  The next post in the series will discuss developments in the FTC v. Qualcomm case itself that led up to and molded the parties’ presentation at trial.  This will be followed by a post discussing the bench trial.  And, of course, the final post will discuss Judge Koh’s decision when it issues (guesstimate about four to six weeks from now).

This first post admittedly will mix both objective discussion and opinion that departs from the typical objective case analysis that is our core goal and strength (our last post like this was our May 2, 2013 post “The Patent Forest” during legislative efforts that threatened to harm the U.S. patent system).  As always, we recommend reading for yourself the sources we cite and other sources to determine whether this is something we all should care about or just a tempest in a tea pot.  But perhaps you too will find this is not your typical case and you too may wonder: “Where is Denzel?”

Background on Standard Essential Patents

Following is a summary of technical standard setting, standard essential patents, licensing and other issues that underlie the FTC v. Qualcomm case.

What is a Technical Industry Standard?

In its most simplistic form, a standard is an agreed upon way of doing things among several people to facilitate a smoother interaction between them.  For example, we may set a standard unit for measure for doing transactions or computations – e.g., measure distance in hands, yards, meters, miles, etc.  In some cases, people are choosing between several simple, well-known options with little, if any, innovation involved.  For example, people may agree to drive on the left side of the road or right side of the road.  Either may work equally well, but we agree on a specific side of the road so that cars do not crash if drivers simply drove on whatever side they felt like.

In a technical industry standard, those in related areas of industry may form a voluntary standard setting organization (SSO) to develop technical standards that will increase the compatibility of devices made be different companies in that industry.  For example, an SSO may consider many existing options and agree upon the shape of a wall plug and socket so that blow dryers and televisions made by different companies can plug into wall sockets made by different companies.  This is technical standard setting in its simplest form.

But standard setting also occurs in a higher form where, rather than selecting between equal known options, new technology is created or “developed” (what occurs in what some call a standards development organization or SDO).  In the wireless communication industry, for example, SDOs seek to develop technology that does not currently exist in order to create the next generation of wireless technology—e.g., 1G, 2G, 3G, 4G and now 5G wireless communication.  This has been highly successful in the wireless industry where mobile phones have transitioned from bulky suitcase-sized devices owned by the elite few that could only do phone calls (and not very well) to pocket-sized personal data assistants owned by everyday people that are used more to do amazing data-intensive services than simply make phone calls.

An SDO will have many participants in a related industry that have different roles in developing or setting the standard.  Some companies take huge risks in investing money, time and resources to create innovative technologies to propose for the next generation of wireless systems and technical standards, which is risky because not all technical designs and proposals are adopted.  These are sometimes called the Innovators and patents covering their innovations that are adopted into the standard are called standard essential patents (SEPs).  Other companies do not develop the technology, but are interested in setting a standard with technology that best matches there interest in implementing the standard in a product or service.  These are sometimes called the Implementers.  Many (perhaps most) SDO participants are some mixture of both Innovator and Implementer, but at the end of the day a particular company usually leans more on the Innovator or Implementer side.

Most SEP disputes concern standard development in creating new technologies, because the effort to create the next generation of technology naturally leads to innovations and patents thereon.  In contrast, SEPs typically do not arise from simple standard setting of just choosing between two equal and already existing alternatives.

The most prominent and influential SDO for mobile wireless communications is the European Telecommunications Standards Institute (ETSI), which has overseen development of generations of mobile wireless standards, including 5G.  Hundreds of companies participated in developing the mobile wireless standards, but only a small number of them serve as the R&D arm of the industry to actually develop and make technical contributions to the wireless standards.  That’s not to say that the other companies are not innovators in other areas, its just that they either do not innovate in the wireless area or they have chosen not to submit their innovations to a standards body so that others may use them.  Apple, for example, is no doubt an innovator with hundreds of patents, but not in the foundational wireless technologies of the wireless standards.  Estimates are that Apple made a little over a hundred technical contributions to the 3GPP mobile wireless standards as compared to tens of thousands of contributions made by each of Qualcomm, Nokia, Ericsson and Huawei.  Some say that Apple tends to keep its innovations proprietary to sell at premium prices, rather than invest in developing and contributing technology that others may use (ask anyone who has paid over $20 for a special Apple cord to charge their iPhone that was not compatible with the prevalent and inexpensive USB standard cords used by other mobile phone manufacturers).

What is a FRAND Commitment?

The term FRAND stands for “fair, reasonable and non-discriminatory” and is often used by SDOs to describe terms and conditions that a patent owner may agree to in licensing its standard essential patents (SEPs) under an SDO’s intellectual property rights (IPR) policy.  Under U.S. law, the essence of the patent right is the right to exclude and a patent owner generally can refuse to license its patents (there is no compulsory licensing in the U.S., unlike in some other countries).  The patent owner can decide not to license the patent at all, can limit to whom it is willing to license the patent, and can set whatever terms they want for the license.

Given that fundamental patent right to exclude, SDOs considered how to address concerns that a patent owner may charge unreasonable royalty rates if their patent covers the standard—i.e., concern about what’s often called “patent holdup.”  One way to avoid that concern would be to avoid using patented technology in the standard or only use technology that the patent owner is willing to give away for free.  But how good would such a standard be if it did not have valuable innovations?  SDOs don’t want to simply burn effort to develop a standard they hope will be widely adopted; they want their efforts to produce a standard that is worthy of widespread adoption.  And that requires incentives and rewards to participants to take risks, make investments and develop patented innovations to contribute to the standard.  Sure: We could and would have standards without valuable innovations, but would we want them?  East Germans had cars—the Trabant—but the superior cars that the world wanted to drive were on the other side of the wall developed in a system that rewarded the risk takers and investors in innovation.

Rather than drive a Trabant, SDOs welcome premium innovations and address patent holdup concerns by asking its participants to disclose whether they have patents that may cover the standard and, if so, whether and on what terms they would be willing to license the patent—e.g., FRAND.  A FRAND commitment, therefor, does not raise patent holdup concerns, but addresses it.  If the licensing terms for an SEP with a FRAND commitment are fair, reasonable and non-discriminatory, then there is no holdup; if the licensing terms for that FRAND committed SEP are not fair, reasonable and non-discriminatory, then there may be a remedy for breach of contract such that there still will be no holdup.  In sum, there could be patent holdup for an SEP where the patent owner maintains its full patent rights to exclude because it has no standard-setting commitment.  But the FRAND commitment imposes enforceable contractual limits to resolve the patent holdup concern.

Who to License?

Who to license and under what terms is one of the current hot topics and a subject of the FTC v. Qualcomm litigation—e.g., grant a license based on the “end product”, a “component” in the end product or elsewhere.  Wireless communication standards involve technology that is implemented at many different levels and portions of the wireless system.  Most people are familiar with the mobile phone part of the wireless system.  But that’s just the tip of the iceberg.  The mobile phone will communicate with cell phone towers (or “base stations”) that involves many complex technologies.  If someone is using the mobile phone in a car and driving past the range of one cell phone tower, there are complex processes executed by the mobile phone and cell phone towers for “handing-off” the communication between the phone with that one tower to a closer tower.  And there is prioritization of traffic between a cell phone tower and the many other mobile phones that it is in communication with to maintain balance and optimize communications with all mobile phones as a whole.  Wireless communication to a single phone is relatively easy, but not very beneficial if there were only one phone in the world.  The magic resides in communicating with a massive amount of differing communication needs from the extraordinary number of mobile devices that exist today.

The cell phone tower also communicates with other network infrastructure so that calls, video streams or other data communications are exchanged with the person who is being called, website being accessed, etc.  So patented technology for implementing a standard often is not limited to just a single component in a mobile phone or elsewhere, but involves technology that is intertwined and distributed throughout the system.  Innovative patented technology spanning a system may, for example, have a mobile phone transmit/receive data a certain way or at a certain time to the cell phone tower that is executing some of that patented technology to receive/transmit data.  The cell phone tower is communicating with further equipment implementing other parts of the technology to make the entire system as a whole functions efficiently in dealing with innumerable mobile phones.  Looking at a mobile phone in your hand and saying “This is the whole standard” would be like looking at your hand itself and saying “This is the whole person.”  It all operates together as a complete system.

So there typically is not a single component of the entire network one can point to and say “That’s where the invention resides.”  The general norm in licensing patents in the wireless industry is to license the end product (the mobile phone) where benefits from use of the invention typically is realized.  This is consistent with damages awards under the patent statute that are required to be “no less than a reasonable royalty for the use made of the invention.”  How an invention is used often depends on the ultimate end product.  In the context of SEPs, for example, Judge Robart ruled that patented encryption in the WiFi standard had little value to Microsoft’s Xbox even though it implemented the standard.  The WiFi signal was encrypted using the patented technology for transmissions between the Xbox and a nearby WiFi access point.  But the Xbox had its own encryption technology so that the signal was encrypted before WiFi transmission so that it was encrypted all the way to and through the WiFi access point and through the Internet until it reached and was unencrypted by a remote server.  So the patented encryption in the WiFi standard had little, if any, value to the Xbox that used its own encryption.In some instances, a chip (i.e., component) may implement a significant part of the portion of the standard performed by the mobile phone (i.e., the end product).  Consider, for example, patented technology in a wireless standard that reduces the power consumed by the transmitter and receiver of the end product (e.g., perhaps a protocol that allows the transmitter and receiver to be turned-off for longer periods of time).  A chip implementing that patented protocol may be used in either a battery-powered mobile device (e.g., mobile phone) or a line-powered stationary device plugged into a wall (e.g., a desktop computer).  Power savings is crucial for mobile devices, so the patented technology has substantial value to the battery-powered device.  But power savings is not crucial for the desktop device that’s plugged into the wall, so the patented technology has little, if any, value to that device.

Considering the value of the patented technology in a standard to the end product device will be even more acute in our 5G future where the same components and patented technology may be used in different end products.  A wide variety of end product devices will use 5G wireless communication and each will benefit differently from that standard and the patented technology therein.  Consider, for example, patented technology that reduces lag time in transmitting data.  That can be very valuable to devices that stream real-time data, such as video or audio calls, because the human ear cannot tolerate delays of more than 150 ms.  In contrast, a 150 ms delay in receiving an alert from your toaster that your toast is done probably will not be an issue.  So licensing at the end product level will continue to be—if not more so—an efficient way to place a value on the use made of a patented invention in a standard.

Further, the price structure in existing wireless technology eco-systems relies on the value of the patented technology being accounted for at the end product level, not at the component level.  So it may be difficult to properly account for the value of patented technology if required to do so at the component level.  Let’s consider DVD movies as a loose analogy.  A movie distributor may have a manufacturer make the physical DVD.  The DVD manufacturer does not incorporate the cost of the intellectual property (IP) being imprinted on the DVD into its price, but charges the same amount (about 50-cents or so) based on material and other costs regardless of whether it is imprinting the DVD with the “Crimson Tide” movie starring Denzel Washington or “The Best of Barney” starring a purple dinosaur.  The distributor then sells the DVD at a much higher price (e.g., $2 to $30) based on that cost, marketing and other costs including the cost/value of the IP.  Even though the cost of the component is the same (i.e., the physical DVD materials with 1s and 0s stamped into it), the value of the DVD varies drastically based on the IP within it, with movies ranging in price from a few dollars to thirty or more dollars.  Plainly one would not value the IP based on the cost of making the DVD or some percentage of the price that the distributor paid the DVD manufacturer for making the DVD.  You would not likewise value patented technology based on the cost of a component, particularly where that cost does not account for the value of the IP. (see post of July 28, 2014 citing Judge Davis book analogy).

We also can carry that analogy a bit further to understand the problem with “patent counting” that the FTC is accused of doing in its case against Qualcomm to evaluate the value of a large patent portfolio—i.e., where every patent is assumed to have the same value and the value of the portfolio is assumed to be based on counting the number of patents within it.  If I had 10 DVDs of Denzel Washington’s best movies and you had 10 DVDs of Barney the purple dinosaur’s best shows, we probably would not work-out an equal trade even though it would be easier to simply count each DVD the same.  That’s because we know that IP has different value: you can buy some movies on DVD for a couple dollars, but others sell at a premium price.  Similarly, not all patents have the same value and taking a short-cut by simply counting patents to value them is fundamentally flawed and fraught with error.

If a patent is to be licensed at the component level, the value paid for the IP should not change.  The Federal Circuit made this clear in its first decision on determining a FRAND royalty (See post of Dec. 5, 2014 on Ericsson v. D-Link).  In one of the few patent cases to give us a mathematical formula as guidance, the Federal Circuit explained that either the end product or a component theoretically can be used as a royalty base as long as a corresponding royalty rate is used so that the ultimate value attributable to the patented technology does not change—i.e., if you chose a lower value royalty base (B), than you also must chose a higher value royalty rate (R) so that multiplying the base (B) times the rate (R) maintains the same value (V) of the patented invention to the end product:

So a theoretical change of the royalty base in a licensing scheme from licensing at the end product level to the component level would require a corresponding change of the royalty rate (R)—i.e., the royalty rate (R) must be higher so that the ultimate value (V) paid for the patented technology remains the same.

But it is far from practical or even feasible in an established eco-system such as DVD movie sales or wireless products to change the entire industry from paying for the cost of IP at the end of the product chain to somewhere in the middle of the chain.  For example, the IP costs may exceed what can be borne by the current price at which a DVD manufacturer sells a DVD.  A DVD manufacturer who had to pay the cost of the IP would need to raise the costs of the DVD from pennies to several dollars and then pass that cost along to the distributor.

Let’s put that in perspective for mobile devices.  In its case against Samsung, Apple argued and was awarded a “reasonable royalty” of $7.14 for each Samsung mobile phone using three Apple patents on pinch-to-zoom, bounce-back and tap-to-zoom touchscreen features.  If a couple of touchscreen features are worth $7.14, then patented technology probably is worth many times that for enhancing data rates, lag time, etc. in a mobile standard that allow seamless streaming of video, email access, internet browsing, real time location tracking, and countless mobile applications, such as Uber, that such patented features make possible.  But a mobile chip set in a mobile phone has an average cost of about $20-25.  That current mobile chipset price plainly does not and could not account for the value of that patented technology on top of the other costs of the chipset on which the current price was based.

For these and other reasons, the long-established and prevalent practice in licensing patents in the wireless communication industry has been on a mobile device end product basis, not a component basis.  And that prevalent practice existed all along the way of the stunning transformation we have seen so far in wireless communication since we started that journey with 1G.  It works.  To force a sudden change of that settled industry practice at this critical stage of 5G development could be disastrous and, at best, seems imprudent.  There certainly should be sound conviction and consensus before doing so.  But that’s a change that the FTC appears to be forcing now in its case against Qualcomm.

What is 5G?

5G stands for “Fifth Generation” wireless communication technology.  But it is more than a simple generation upgrade.  It is a revolutionary new platform for wireless communication that enables technological growth never seen before.  Prior generations (1G, 2G, 3G and 4G) were about connecting communications between people through voice, video, email, texts, etc.  5G advances this much further and concerns connecting not only people, but appliances, cars, city infrastructure, health care equipment, first responder equipment, etc.  Basically, connecting anything that has data to share with other machines, databases, people or who knows what else.  It is fascinating and the world is rightfully excited about this new communication age.

Importantly, 5G is just at its birth stage.  It is not done so that we can just sit back, relax and enjoy it.  There will be a lot of learning, growth, enhancements and revisions of the 5G standard from its current infant stage now.  This is a very unique and historical opportunity.  Whoever leads this design and development in these early stages will have a long term impact on the future of this technology throughout the world.  Indeed, this is so important that countries consider expertise and a strong presence in 5G to be of vital national security interest.  Just last year, President Trump followed the advice of the Committee on Foreign Investment in the United States (CFIUS) and blocked a hostile takeover of Qualcomm by foreign interests because “reduc[ing] Qualcomm’s long-term technological competitiveness and influence in standard setting would significantly impact U.S. national security” given this 5G transformation:

Reduction in Qualcomm’s long-term technological competitiveness and influence in standard setting would significantly impact U.S. national security.  This is in large part because a weakening of Qualcomm’s position would leave an opening for China to expand its influence on the 5G standard-setting process.  Chinese companies, including Huawei, have increased their engagement in 5G standardization working groups as part of their efforts to build out a 5G technology.  For example, Huawei has increased its R&D expenditures and owns about 10 percent of 5G essential patents.  While the United States remains dominant in the standards-setting space currently, China would likely compete robustly to fill any void left by Qualcomm as a result of this hostile takeover.  Given well-known U.S. national security concerns about Huawei and other Chinese telecommunications companies, a shift to Chinese dominance in 5G would have substantial negative national security consequences for the United States.

The FTC lawsuit against Qualcomm

In early 2017, the U.S. Federal Trade Commission (FTC) had only three Commissioners to guide FTC on policy issues, including which enforcement law suits to file (FTC usually has five Commissioners).  Following the 2016 elections, the federal Administration was set to change on January 20, 2017 when Donald Trump would be sworn-in as President, signaling a significant change in U.S. policy.  On January 17, 2017—just three days before that change—the FTC filed its lawsuit against Qualcomm.  The lawsuit was filed despite significant division between the three Commissioners.  Commissioner Ohlhausen provided a “rare” dissent in what she considered “an extraordinary situation” given the lawsuit’s “flawed legal theory” in an action that “will undermine U.S. intellectual property rights in Asia and worldwide,” stating:

I do not depart from that policy [of dissenting only on rare occasions] lightly.  Yet, in the Commission’s 2-1 decision to sue Qualcomm, I face an extraordinary situation: an enforcement action based on a flawed legal theory (including a standalone Section 5 count) that lacks economic and evidentiary support, that was brought on the eve of a new presidential administration, and that, by its mere issuance, will undermine U.S. intellectual property rights in Asia and worldwide.  These extreme circumstances compel me to voice my objections.

And its probably no coincidence that, on January 20, 2017—just three days after the FTC’s filing—Apple sued Qualcomm alleging antitrust violations.  The FTC and Apple are known to have a Common Interest agreement between them that allows them to secretly coordinate their strategy and share information toward a common goal in these litigations.

We will cover the FTC’s theories in more detail in a later post.  At a top-level, among other things, the FTC argued that Qualcomm was overcharging for the price of its patented technology and that Qualcomm’s practice of licensing the end product (e.g., mobile phones) violated alleged standard setting non-discrimination obligations that required licensing makers of chipsets used in those end products.  That argument goes against the long established practice of licensing end products followed by almost everyone—if not everyone—in the wireless industry.  Basically, there was no discrimination because similarly people were treated similarly—e.g., all the end product manufacturers were licensed, and all the component manufacturers were not licensed (they would not need a license if the end product is licensed).  Even if licensing chipset makers were required, that might be the basis for a chipset manufacturer to bring a breach of contract action for violating a contractual FRAND commitment to the SDOs.  But the FTC antitrust mission does not have jurisdiction to enforce a breach of contract action.  So the FTC alleged that this was part of activity that together raised an antitrust violation.

A key part of the FTC’s theory is an alleged “No license, no chips” policy where Qualcomm would not sell its mobile chipsets to mobile phone manufacturers if they did not have a license from Qualcomm to use patented technology in those chips (Qualcomm disputes whether it actually has declined to provide chips to someone who did not have a license).  If true, that’s rather unremarkable in the patent world.  Someone who wants to use patented technology is supposed to obtain authority from the patent owner before selling products using that technology. (see our July 2, 2014 post re Judge Essex stating implementer should obtain a license to an SEP before using that technology).  In contrast, under U.S. patent law, it would be extraordinary to force a patent owner to help someone infringe their patent—e.g., to force the patent owner to sell an unlicensed infringer the components it needs to infringe the patent.

What has happened since the split-decision by an incomplete set of Commissioners to bring the action against Qualcomm is further troubling.  Only a couple weeks after the case was filed, one of the three Commissioners who voted to bring the case left the FTC.  That left one Commissioner who was against the case and one who was for it.  It appears that, because there was a stalemate among the Commissioners, the FTC Staff would continue to pursue the lawsuit without any substantial policy guidance from appointed Commissioners.  About a year and a half later, the FTC finally had all five Commissioner slots filled.  However, one of the Commissioners recused himself from participating in the FTC case against Qualcomm.  This again left an equal split over the case with two Commissioners against the lawsuit and two Commissioners for it.  So, again in the face of a Commissioner stalemate, the FTC Staff apparently continues forward without any substantial policy guidance from appointed Commissioners.

Further, as discussed above, after the case was filed President Trump followed the CFIUS advice and precluded a hostile takeover of Qualcomm by a foreign entity given national security interests that specifically singled out concern that the U.S. could lose its lead in 5G technology to Huawei.  And during the course of this trial Huawei has come under fire for stealing U.S. technology, including charges filed just last week following intellectual property theft investigation by the Federal Bureau of Investigation.  Yet the FTC Staff continues its lawsuit that relies substantially on Huawei as what some call the FTC’s “star witness” to make its case against Qualcomm.  This has not gone unnoticed by mainstream media. (See The U.S.’s Star Witness in the Qualcomm Antitrust Suit: China’s Huawei; Trump allies warn Obama-era FTC suit against US firm giving boost to China; The Chinese government will have eyes and ears on all of us someday if the FTC gets its way; The U.S. government shouldn’t partner with Huawei)

Also within the past week or so, Makan Delrahim, the Assistant Attorney General for the Antitrust Division of the Department of Justice, criticized the theory underlying the FTC’s case against Qualcomm, indicating that disputes over patent-licensing rates should not be subject to antitrust law. (See DOJ’s Delrahim criticizes ‘theory’ underlying FTC’s Qualcomm case).

Of course, there is more to one side to any issue.  There will be excuses and arguments from all points of view.  But, taking a step back and looking at this broadly, it is plainly troubling to see an agency staff unguided by administration policy makers seek such sweeping and disruptive action against long-established industry licensing practices at a very important historical point of wireless communication development with the birth of 5G.  And doing so against a company whose continued vitality in this wireless technology was deemed a national security concern.  And basing that case on a “star witness” that is the specific foreign company identified in the national security concern and that the U.S. government recently indicted for stealing U.S. technology.

Where is Denzel?

Several years ago there was a thrilling action movie called “Crimson Tide” starring Gene Hackman as the Captain of the U.S.S. Alabama submarine and Denzel Washington as his new Executive Officer.  A political group took control of a nuclear missile base and threatened to launch them.  As tensions grew, the U.S.S. Alabama received a message ordering them to launch a preemptive strike of nuclear missiles at the facility.  After that initial message, another message was received but it was incomplete.  It might have said don’t launch or it might have said something else.  The Captain said an incomplete message is meaningless and protocol required following the last fully received and authenticated message: Launch the nuclear weapons.  The Executive Officer disagreed and refused to launch the missiles until the submarine surfaced to a level where it could receive confirmation that circumstances had not changed and the launch was still a go.  A lot of things happened, it was very tense and exciting—you have to watch it.  But [SPOILER ALERT] it turned out that, when they finally got back in communication, they were told [AGAIN – SPOILER ALERT] not to launch the missiles.

We all may be best served if a Denzel stood up to take pause and ensure that the FTC staff’s lawsuit filed by a divided and incomplete Commission under a different administration is a prudent course under current circumstances.

Last week, Judge Orrick of the U.S. District Court for the Northern District of California issued an Order that enjoins Huawei from enforcing an injunction on Chinese standard essential patents (SEPs) entered by the Chinese People’s Court of Shenzhen (the Shenzhen Court).  The Chinese Shenzhen Court entered that injunction after considering Samsung’s arguments that the SEPs were subject to Huawei’s commitment to license them on fair, reasonable and non-discriminatory (FRAND) terms.  This case provides incremental insight into asking a U.S. court to bar enforcement of a foreign injunction based on foreign SEPs so that the U.S. court may consider FRAND contractual rights as to those foreign SEPs.

As with most cases, this decision is fairly fact specific.  Some of the key points from this decision include the following:

  • Filing Date of U.S. and Foreign Actions.  The patent owner (Huawei) filed this U.S. action and the Chinese action at the same time.  Technically, perhaps because of the time zone difference, the U.S. action was filed one day before the Chinese action.  The simultaneous filing indicated that the patent owner was not  filing the Chinese action as a run-around a much earlier filed U.S. action (as was the case in the Microsoft v. Motorola case where an antisuit injunction was entered).
  • First-To-File Race?  This case has a first-to-file flavor similar to what we see in selecting a forum for U.S. court actions–e.g., courts defer to litigating a case in the first U.S. district court where the matter is raised, rather than in another U.S. district court with a later-filed case on the same matter.  That first-to-file deference leads to a race to the court where the patent owner tries to  file a U.S. case in its preferred U.S. court before an accused infringer files a related declaratory action in another U.S. court, and vice versa.  The fact that Huawei technically filed this U.S. case one day before Huawei filed the Chinese case was a factor that Judge Orrick found to favor entering an antisuit injunction that gives preference to the first filed U.S. action over the later filed Chinese action.  Huawei essentially outraced itself in the first-to-file competition (i.e., filed its U.S. action before filing its Chinese action)
  • Scope of U.S. and Foreign Actions.  Although not totally clear from the record, the Chinese court apparently considered only whether the accused infringer (Samsung) was a willing licensee in its negotiations with the patent owner (Huawei) for a license under the Chinese SEPs.  In this U.S. case, however, the court would consider a much broader issue of whether Huawei breached its FRAND commitment and determine FRAND contract terms.  In other words, the U.S. court was not going to simply retry and decide the same issues already decided by the Chinese court and his decision would control whether the patent owner would be entitled to the injunctive relief granted by the Chinese court.
  • The Antisuit Injunction is Limited In Scope and Duration.  The U.S. court was entering an injunction of limited duration and scope.  The Chinese injunction that the patent owner (Huawei) was enjoined from enforcing concerned only 2 Chinese patents and was subject to an appeal in China that would not be decided for a few more months.  This U.S. case is scheduled for trial in December, after which the U.S. court would decide the contract issues and dissolve the antisuit injunction.  Accordingly, the antisuit injunction would preclude enforcement of the Chinese injunction for only a few months and impact only 2 Chinese patents.
  • Judicial Estoppel From Entering the Antisuit Injunction.  The accused infringer (Samsung) successfully argued against bifurcating the U.S. case that would have decided the FRAND contract issues first; rather, it argued that the U.S. court must first determine whether the patent owner’s (Huawei’s) patents were valid, enforceable, infringed and essential to the standard before the court could then decide the contractual FRAND issues.  The U.S. court agreed to proceed with the entire case–both the FRAND contract and U.S. SEP infringement claims–at the same time with a single two-week jury trial.  The accused infringer’s later request for an antisuit injunction “tempted” the court to hold that the accused infringer was judicially estopped from now arguing that an antisuit injunction was warranted so that the the contractual issues would be decided first (contrary to the accused infringer’s successful bifurcation argument).  But, rather than that, the court ruled that the infringer would be granted the antisuit injunction but could not argue that the FRAND contract issues could not be decided without evidence of whether the foreign patents were valid, enforceable, infringed or essential (if such determinations were outside the scope of the U.S. court’s jurisdiction).

Below is a more detailed discussion of the decision. Continue Reading Judge Orrick enjoins Huawei from enforcing injunction for infringing SEPs issued by China’s Shenzhen court (Huawei v. Samsung)

Magistrate Judge Payne recently ruled against prospective licensee T-Mobile’s motion to dismiss patent owner Huawei’s Declaratory Judgment Complaint that seeks a declaration that Huawei  complied with its FRAND commitments to ETSI regarding LTE standard-essential patents during Huawei’s license negotiations with T-Mobile.  Judge Payne did not rule whether or not Huawei had complied with its licensing negotiations; rather, he simply indicated that there was sufficient controversy between the parties and concern that T-Mobile might bring a breach of contract action against Huawei that the court could exercise declaratory judgment subject-matter jurisdiction to resolve the FRAND-compliance dispute.  This is a procedural ruling that is subject to review by the presiding district court judge, Judge Gilstrap.

This decision is interesting because it supports a way for patent owners with large SEP portfolios to resolve FRAND or other licensing disputes in a single action and, thereby, avoid complex and expensive patent infringement litigations on a patent-by-patent basis.  But the devil is in the details and we will await further developments as the case proceeds. Continue Reading Judge Payne rules patent owner may bring case seeking a declaration that it has not breached FRAND commitments (Huawei v. T-Mobile)

Judge Payne recently denied a request to proceed with all of the parties’ alleged FRAND-obligated standard essential patents in the same case, disappointing counterclaimants who had wanted to resolve together the single controversy over each of the parties’ standard essential patents.  Huawei brought suit asserting patents alleged to be essential to 3GPP LTE standards and subject to a FRAND obligation.  Nokia filed a counterclaim against Huawei on patents that also were alleged to be essential to 3GPP LTE standards and subject to a FRAND obligation.  Judge Payne decided that it would be more efficient to proceed with the Huawei and Nokia patents in their own separate cases, rather than together. Continue Reading Judge Payne severs each parties’ SEPs into separate cases (Huawei v. Nokia)

Today, a European Union high court issued a ruling that provides guidance on what steps the owner of a FRAND-encumbered patent that may be essential to a standard should take before seeking injunctive relief.  The court also ruled that a willing licensee should act without delay, provide a counter-offer, and actively pay royalties (in trust or otherwise) for past and on-going use of the patent while the parties negotiate toward a FRAND license.  The court further ruled that there was no specific pre-filing steps needed for the owner of a FRAND-encumbered patent to file suit seeking solely an accounting and monetary relief for past infringement (i.e., not injunctive).

Background

The case involves patent owner (“proprietor”) Huawei asserting a European patent alleged essential to the Long Term Evolution (LTE) standard against alleged infringer ZTE.  That patent was subject to a commitment to license the patent on fair, reasonable and non-discriminatory terms (FRAND) made to the European Telecommunications Standards Insitute (ETSI).

ETSI has intellectual property right (IPR) policies that concern patents that are essential to ETSI standards.  A patent is essential to the standard where it is not possible on technical grounds to make equipment that complies with the standard without infringing the patent.  ETSI’s IPR policy provides that patent owners should be adequeately and fairly rewarded for the use of their patented technology, but also seeks to guard against such patents making standardized technology unavailable.  Thus ETSI seeks a balance between the needs of standardization for public use and the rights of patent owners.

To this end, ETSI participants are required to timely disclose their patents that are essential to an ETSI standard.  In response to such disclosure, ETSI will ask the patent owner to give an irrevocable FRAND commitment.  ETSI is supposed to determine whether to suspend work on adopting the standard until such a commitment is received.  ETSI does not check whether the patent actually is essential or valid.  Further, ETSI does not define what would be a “license on FRAND terms.”

In April 2011, patent owner Huawei brought an action in German court against ZTE for infringing the LTE patent following failed negotiations.  The parties had been in negotiations from November 2010 until end of March 2011.  Huawei offered what it considered a FRAND royalty and ZTE responded with a cross-license offer.  No agreement was reached, though ZTE continued to sell LTE devices.  In its lawsuit, Huawei sought both injunctive and monetary relief.

The German court stayed its proceedings and referred specific issues to this European Union high court dealing with competition issues, based on the following questions:

(1) Does the proprietor of [an SEP] which informs a standardisation body that it is willing to grant any third party a license on [FRAND] terms abuse its dominant market position if it brings an action for an injunction against a patent infringer even though the infringer has declared that it is willing to negotiate concerning such a license? or

Is an abuse of the dominant market position to be presumed only where the infringer has submitted to the proprietor of the [SEP] an acceptable, unconditional offer to conclude a licensing agreement which the patentee cannot refuse without unfairly impeding the infringer or breaching the prohibition of discrimination, and the infringer fulfils its contractual obligations for acts of use already performed in anticipation of the license to be granted?

(2) If abuse of a dominant market position is already to be presumed as a consequence of the infringer’s willingness to negotiate:

Does Article 102 TFEU lay down particular qualitative and/or time requirements in relation to the willingness to negotiate?  In particular, can willingness to negotiate be presumed where the patent infringer has merely stated (orally) in a general way that it is prepared to enter into negotiations, or must the infringer already have entered into negotiations by, for example, submitting specific conditions upon which it is prepared to conclude a licensing agreement?

(3) If the submission  of an acceptable, unconditional offer to conclude a licensing agreement is a prerequisite for abuse of a dominant market position:

Does Article 102 TFEU lay down particular qualitative and/or time requirements in relation to that offer?  Must the offer contain all the provisions which are normally included in licensing agreements in the field of technology in question?  In particular, may the offer be made subject to the condition that the [SEP] is actually used and/or is shown to be valid?

(4) If the fulfilment of the infringer’s obligations arising from the licence that is to be granted is a prerequisite for the abuse of a dominant market position:

Does Article 102 TFEU lay down particular requirements with regard to those acts of fulfilment?  Is the infringer particularly required to render an account for past acts of use and/or to pay royalties?  May an obligation to pay royalties be dischared, if necessary, by depositing a security?

(5) Do the conditions under which the abuse of a dominant positoin by the proprietor of a[n SEP] is to be presumed apply also to an action on the ground of other claims (for rendering of accounts, recall of products, damages) arising from a patent infringement?

Article 102 of the Treaty on the Functioning of the European Union (TFEU), referenced above, states as follows:

Any abuse by one or more undertakings of a dominant position within the internal market or in a substantial part of it shall be prohibited as incompatible with the internal market in so far as it may affect trade between Member States.

Such abuse may, in particular, consist in:
(a) directly or indirectly imposing unfair purchase or selling prices or other unfair trading conditions;
(b) limiting production, markets or technical development to the prejudice of consumers;
(c) applying dissimilar conditions to equivalent transactions with other trading parties, thereby placing them at a competitive disadvantage;
(d) making the conclusion of contracts subject to acceptance by the other parties of supplementary obligations which, by their nature or according to commercial usage, have no connection with the subject of such contracts.

 Decision

The European high court answered the questions above as follows:

1.  Article 102 TFEU must be interpreted as meaning that the proprietor of a patent essential to a standard established by a standardisation body, which has given an irrevocable undertaking to that body to grant a licence to third parties on fair, reasonable and non-discriminatory (‘FRAND’) terms, does not abuse its dominant position, within the meaning of that article, by bringing an action for infringement seeking an injunction prohibiting the infringement of its patent or seeking the recall of products for the manufacture of which that patent has been used, as long as:

prior to bringing an action, the proprietor has, first, alerted the alleged infringer of the infringement complained about by designating that patent and specifying the way in which it has been infringed, and, secondly, after the alleged infringer has expressed its willingness to conclude a licensing agreement on FRAND terms, presented to that infringer a specific, written offer for a licence on such terms, specifying, in particular, the royalty and the way in which it is to be calculated, and

where the alleged infringer continues to use the patent in question, the alleged infringer has not diligently responded to that offer, in accordance with recognised commercial practices in the field and in good faith, this being a matter which must be established on the basis of objective factors and which implies, in particular, that there are no delaying tactics.

2.  Article 102 TFEU must be interpreted as not prohibiting, in circumstances such as those in the main proceedings [i.e., the stayed German action], an undertaking in a dominant position and holding a patent essential to a standard established by a standardisation body, which has given an undertaking to the standardisation body to grant licenses for that patent on FRAND terms, from bringing an action for infringement against the alleged infringer of its patent and seeking the rendering of accounts in relation to past acts of use of that patent or an award of damages in respect of those acts of use.

The court started by noting the balance it must strike between “maintaining free competition” based on “Article 102 TFEU prohibit[ing] abuses of a dominate position” and “the requirement to safeguard th[e] proprietor’s intellectual-property rights and its right to judicial protection.”  The court further noted the limits of its ruling, stating that, in this case, “the existence of a dominant position has not been contested” and the questions to be addressed “relate only to the existence of an abuse”, thus “the analysis must be confined to the latter criterion.”

FRAND-Encumber SEPs Differ From Other Patents.  The court stated that filing a lawsuit for patent infringement “forms part of the rights of the proprietor of an intellectual-property right” and normally is not an abuse of a dominant position.  But there are “exceptional circumstances” when it may be an abuse.  This case presents two distinguishing features from most patents.  First, it involves a standard essential patent (SEP) that, unlike other patents, can preclude competitors from making standard compliant products.  Second, the patent “obtained SEP status only in return for the proprietor’s irrevocable undertaking … that it is prepared to grant licences on FRAND terms.”  Thus, a refusal to grant such a license “may, in principle, constitute an abuse within the meaning of Article 102 TFEU.”

Balance High Level of Protection Given Patent Rights.  The court noted that applicable law “provides for a range of legal remedies aimed at ensuring a high level of protection for intellectual-property rights in the internal market, and the right to effective judicial protection.”  This counsels not hindering a patent owner’s right to seek judicial relief and requiring a user to obtain a license before using the patented technology:

This need for a high level of protection for intellectual-property rights means that, in principle, the proprietor may not be deprived of the right to have recourse to legal proceedings to ensure effective enforcement of his exclusive rights, and that, in principle, the user of those rights, if he is not the proprietor, is required to obtain a licence prior to any use.

This is balanced with considerations for FRAND-encumbered SEPs, which “justif[ies] the imposition … of an obligation to comply with specific requirements when bringing actions against alleged infringers for a prohibitory injunction.”

First Step – Prior Notice to Infringer.  The court thus ruled that, before bringing suit for injunctive relief, an SEP owner must “first … alert the alleged infringer of the infringement complained about by designating that SEP and specifying the way in which it has been infringed.”  One reason for this is that, because there are a large number of patents that may be essential to a standard, the accused infringer may not “necessarily be aware that it is using the teaching of an SEP that is both valid and essential to a standard.”

Second Step – Written FRAND Terms.  If, after notice, the alleged infringer “expressed its willingness to conclude” a FRAND license, the SEP owner must then provide “a specific, written offer for a licence on FRAND terms … specifying, in particular, the amount of the royalty and the way in which that royalty is to be calculated.”  The court explained it was proper to have the SEP owner make such an offer, who may have nonpublic agreements with other licensees, since the patent owner “is better placed to check whether its offer complies with the condition of non-discrimination than is the alleged infringer.”

Accused Infringer’s Obligation.  An accused infringer has its own obligations before it can take advantage of a FRAND defense.

First, if an accused infringer objects to the proferred license offer, it must submit, “promptly and in writing, a specific counter-offer that corresponds to FRAND terms.”  This response must be in “good faith” with “no delaying tactics”:

[I]t is for the alleged infringer diligently to respond to that offer, in accordance with recognised commercial practices in the field and in good faith, a point which must be established on the basis of objective factors and which implies, in particular, that there are no delaying tactics.

Second, if its counter-offer is rejected, an accused infringer who already has been selling or otherwise using the technology before a license is entered must provide “appropriate security” for the past use of the technology and render an account of same:

The calculation of that security must include, inter alia, the number of the past acts of use of the SEP, and the alleged infringer must be able to render an account in respect of those acts of use.

Third-Party Royalty Determination.  If the parties do not reach agreement, they can seek a “royalty determined by an independent third party, by decision without delay.”

Can Challenge Patent.  The court ruled that, because the standard setting body did not determine essentiality or validity, the accused infringer should be allowed to challenge whether the patent is infringed, essential or valid during the negotiations or to reserve the right to do so in the future.

No Abuse If Seeking Past Money Damages.  The court ruled that “seeking the rendering of accounts in relation to past acts of use of [an] SEP or an award of damages in respect of those acts” are not an abuse of dominance, because such actions “do not have a direct impact on products complying with the standard … appearing or remaining on the market.”

Judge Essex issued a Notice Regarding Initial Determination in InterDigital’s ITC action against ZTE and Nokia (Inv. No. 337-TA-868) on Friday, indicating that there has been a finding of no violation with respect to any of the 3G and 4G devices at issue. The notice is sparse on details, indicating only that no violation of the Tariff Act of 1930, as amended, has occurred by reason of infringement. A public version of the Initial Determination should be available in the coming weeks, as well as the Commission’s decision whether or not to review the ALJ’s decision.

As discussed in our June 6 post, Samsung recently settled out of this investigation as part of a settlement resolving all disputes involving InterDigital’s 3G/4G cellular standard-essential patents. ALJ Essex issued a separate Initial Determination on June 9, granting a joint motion by Samsung and InterDigital to terminate the investigation as to Samsung based on the settlement agreement. Huawei also settled-out of this investigation earlier this year.

Last week the U.S. International Trade Commission issued the public version  of its decision last December that no valid claim of Interdigital’s 3G patents was infringed by Huawei, Nokia or ZTE and reserving ruling on other issues, such as on RAND obligations (see our Dec. 23,2013 post).  The ITC also gave its Federal Register notice of its decision earlier this month to grant InterDigital’s motion to voluntarily  terminate the investigation against the remaining respondent LG to avoid simultaneously  litigating that case in the ITC while InterDigital was appealing the decision as to the other respondents (see our Jan. 13, 2014 post about InterDigital’s voluntary termination after remand from Federal Circuit).

So we may not know for a year or more–pending InterDigital’s appeal–whether the SSO-obligation issues will be considered in this litigation.  Those issues may be mooted if the Federal Circuit affirms the ITC’s ruling that no valid patent claim is infringed.

On December 30, 2013, InterDigital and Huawei filed a stipulation to dismiss the pending Delaware district court action (13-cv-00008) without prejudice, indicating the parties entered into a “binding settlement agreement and agreement to arbitrate”.  The Court promptly dismissed the case.

Yesterday, InterDigital and Huawei similarly moved to terminate the corresponding ITC action, Inv. No. 337-TA-868, with respect to Huawei pursuant to a settlement and arbitration agreement.  We anticipate the ALJ will grant the parties’ joint motion, removing Huawei from the case.  The 868 Investigation was initiated by InterDigital against Huawei, Nokia, Samsung, and ZTE in February 2013, after a set of corresponding district court actions were filed in Delaware against each party last January.  As of right now, Huawei is the only party to have settled-out of this round of InterDigital infringement actions, and Nokia, Samsung, and ZTE continue to defend both the district court and ITC cases.

On Dec. 19, the U.S. International Trade Commission (ITC) ruled that Huawei, Nokia and ZTE did not infringe any valid Interdigital alleged 3G patents and, therefore, did not rule on RAND or public interest issues in that investigation (discussed in our prior post).  The ITC is reserving those issues for consideration in due course given the continued investigation of LG on those patents (recall that the ITC had dismissed LG from the investigation due to an arbitration agreement, but that decision was reversed and remanded by the Federal Circuit).

Today, the U.S. International Trade Commission issued its delayed decision on whether it would review ALJ David P. Shaw’s Initial Determination finding no violation of Section 337 in In the Matter of Certain Wireless Devices with 3G Capabilities and Components Thereof, Inv. No. 337-TA-800.  (For some background, see our previous post on the ALJ’s Initial Determination.)  Here’s the Notice, indicating that the Commission will review the ALJ’s Initial Determination in its entirety:

[337-TA-800 Notice of Commission Decision to Review Initial Determination

You may recall that despite the fact that the ALJ found no violation of Section 337, both InterDigital and the Respondents (Nokia, Huawei, and ZTE) filed petitions for review on certain issues.  And because the Commission is going to review the ID in its entirety, it could potentially reverse the ALJ’s findings on many different issues, ranging from infringement and invalidity to FRAND defenses and domestic industry issues.  The end result could be a finding of a violation of Section 337 on one or more of the asserted patents, or it might be that the Commission comes to many of the same conclusions as ALJ Shaw.

Despite all the attention surrounding SEPs at the ITC, though, the Commission has not called for additional briefing on FRAND issues.  In fact, the Commission expressly stated that it is not interested in receiving submissions that address the public interest or the appropriate remedy in this case (some submissions addressing this have actually already been filed).

What the Commission seems to be most interested in, however, is the issue of domestic industry.  The ALJ had determined that InterDigital satisfied this ITC statutory requirement through its investments in licensing its patents to third parties, but the Respondents want the ITC to reverse this finding.  The ITC has requested submissions from the parties addressing this issue in particular:

Please discuss, in light of the statutory language, legislative history, the Commission’s prior decisions, and relevant court decisions, including InterDigital Commc’ns, LLC v. Int’l Trade Comm’n, 690 F.3d 1318 (Fed. Cir. 2012), whether establishing a domestic industry based on licensing under 19 U.S.C. § 1337(a)(3)(C) requires proof of “articles protected by the patent” (i.e., a technical prong).  If so, please identify and describe the evidence in the record that establishes articles protected by the asserted patents.

(Incidentally, the Federal Circuit case referenced by the Commission (see our post on that decision here) is currently the subject of a petition for certiorari to the U.S. Supreme Court.)

The current target date for completion of the investigation — the date by which the ITC will issue its Final Determination — is October 28, 2013.  Despite the fact that the Commission did not order additional briefing on FRAND issues, this will be the first post-USTR veto opportunity for the ITC to address how FRAND might affect exclusionary relief.  Stay tuned.