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Back in June, we alerted you to a jury verdict handed down in a patent case in the Eastern District of Texas, where the jury awarded Ericsson several million dollars as compensation for infringement of several of its 802.11-essential patents by several manufacturers of WiFi-compliant products and components.  At the time, we noted that the jury only addressed issue of validity, infringement, and damages, with SEP-specific issues being potentially left for presiding Judge Leonard Davis to decide.  (In fact, the court held a bench trial on RAND issues on June 12).  The parties filed post-trial motions for judgment as a matter of law on several issues, and yesterday, Judge Davis issued a lengthy Memorandum Opinion and Order broadly upholding the jury’s verdict.

[13.08.06 (Dkt 615) Ericsson v. D-Link Order on Post-Trial Motions]

As we suspected, some RAND obligation-related issues reared their heads — but Judge Davis rejected the defendants’ RAND-based arguments and defenses.  In doing so, he made some statements that might be construed as a marked departure from the route taken by Judge Robart in the Microsoft-Motorola case.  After the jump, we’ll take a look at what Judge Davis concluded with respect to Ericsson’s RAND obligations.Continue Reading Rebutting Judge Robart? E.D. Tex. Judge Leonard Davis upholds jury damages award on WiFi SEPs, dismisses RAND-related issues (Ericsson v. D-Link)

The sprawling patent infringement action in the Northern District of Illinois involving Innovatio IP Ventures is often in the headlines not because it involves standard-essential patents, but because it involves (in part) patent infringement claims brought by a non-practicing entity (Innovatio) against “end users” (coffee shops, hotels, restaurants, etc.).  But last Friday, Judge James F. Holderman issued a ruling that may be the first of its kind for a district court — a ruling addressing the “essentiality” of patent claims, separate and apart from the issue of infringement.  If you’re not familiar with this case (and even if you are), bear with us — we’ll try to explain just why this ruling is so “essential” (sorry).

[2013.07.26 (Dkt 851) Order re Essentiality]

Warning — this is going to be a long post.Continue Reading Judge issues “essential” first-of-its-kind ruling, finding all of Innovatio’s WiFi-related patent claims to be 802.11-essential (and subject to RAND obligations)

Last week, we noted that the Federal Circuit will hold a September 11 oral argument in Apple and Motorola’s appeals of Judge Posner’s June 2012 decision to dismiss the parties’ competing infringement suits.  The “Posner appeal” will provide the Federal Circuit with the opportunity to weigh in on SEP issues in a patent infringement context, such as how the FRAND framework may constrain damages, and whether a party with a FRAND commitment can ever satisfy the eBay standard for an injunction.  But this appeal is not the only one involving Apple, Motorola, and FRAND/SEP issues that is pending before the Federal Circuit.

Also last week, Apple filed its opening brief in this other Federal Circuit appeal — the appeal of Judge Barbara Crabb’s November 2012 decision to dismiss Apple’s FRAND-related breach of contract suit on the eve of trial (after, at least in Judge Crabb’s eyes, Apple failed to commit to entering into a FRAND license at the rate she might set — see this link for a brief refresher on the details of this particular case).  The case before Judge Crabb (and consequently, this appeal) is more like Microsoft’s original complaint in the Microsoft-Motorola case, as opposed to the case before Judge Posner — there are no infringement claims, only claims brought by Apple that relate to Motorola’s alleged violation of its FRAND commitments (breach of contract, antitrust, etc.).  Apple frames the issues in this appeal as follows:

  1. Apple provided evidence that Motorola violated § 2 of the Sherman Act by making deceptive FRAND commitments and by failing to timely disclose its intellectual property. The Noerr-Pennington doctrine immunizes a party from antitrust liability only where the challenged conduct is the petitioning of a government entity. Did the district court err in holding that Apple’s antitrust claim was barred by the Noerr-Pennington doctrine?
  2. Apple would not commit to accept a license offer from Motorola without knowing the price. Did the district court err by dismissing Apple’s contract claims on that basis, where Apple had no contractual obligation to accept any offer from Motorola?
  3. Apple asserted three declaratory judgment claims that would have settled uncertainty regarding Motorola’s patent rights and obligations. Did the district court err in refusing to adjudicate those claims?
  4. Does this Court have exclusive appellate jurisdiction over this appeal because the suit encompasses declaratory judgment claims relating to Motorola’s patent suit?

According to Apple, the answer to each of these questions is a resounding yes.  After the jump, we’ll take a look at Apple’s brief in a bit more detail.
Continue Reading Apple files opening appellate brief in second Motorola/FRAND-related Federal Circuit appeal

Yesterday, Administrative Law Judge David P. Shaw issued a Notice of Initial Determination in In the Matter of Certain Audiovisual Components and Products Containing Same (No. 337-TA-837), an ITC Section 337 investigation based on an infringement complaint brought by LSI and Agere against Funai, Realtek, and Mediatek (who had previously settled out of the case).  …

It’s July (and brutally hot on the East Coast), so you’ll have to excuse us if we’re moving a little slower than normal catching up on all the SEP litigation going around.  Earlier this month we posted about submissions by Microsoft and Motorola concerning the meaning of the “duty of good faith and fair dealing,” specifically as it applies in RAND-encumbered standard-essential patent licensing.  Not surprisingly, the parties followed up these briefs with dueling summary judgment motions, seeking to narrow issues or even potentially completely eliminate the need for the breach of contract jury trial set to take place next month in Seattle.  Last week, the parties also filed their respective oppositions to these motions.  You can take a look at the parties’ motions and oppositions below — and after the jump, we’ll give a brief synopsis of the arguments that each is making.

13.07.03 (D.E. 727) Microsoft Motion for Partial SJ and 13.07.15 (D.E. 758) Motorola Response to MS Partial SJ Motion

13.07.03 (D.E. 720) Motorola Motion for SJ and 13.07.12 (D.E. 740) MS Response to Motorola SJ MotionContinue Reading With dueling summary judgment motions, Microsoft and Motorola seek to eliminate issues from next month’s RAND trial

Later this summer, the second phase of the Microsoft v. Motorola RAND breach of contract trial will take place in Judge James L. Robart’s courtroom in Seattle, WA.  A jury will decide whether Motorola breached its SSO-related RAND licensing obligations by offering what Microsoft deems “blatantly unreasonable” licensing terms for its 802.11- and H.264-essential patents, and then following up with patent infringement suits.

In a prior summary judgment order, Judge Robart already concluded that in order to be permissible under its RAND obligations, Motorola’s license offers “must comport with the implied duty of good faith and fair dealing inherent in every contract.”  He noted that this inquiry is heavily fact-intensive, and best left to the jury to decide.  To this end, Judge Robart recently requested that both Microsoft and Motorola present background briefing on the parameters of what is required by the duty of good faith and fair dealing in contractual disputes.  This week, the parties complied with this request:

Both parties acknowledge that the issue of good faith and fair dealing is complicated — but understandably, the parties also differ quite a bit in their views on what should be considered.  After the jump, we’ll take a brief look at the filings.


Continue Reading In Microsoft-Motorola RAND dispute, “good faith and fair dealing” is in the eye of the beholder

Back in 2011, Intellectual Ventures fired off a patent infringement complaint against Motorola Mobility in the District of Delaware.  That case is scheduled to go to trial early in 2014  But today, Intellectual Ventures upped the ante, announcing that it has filed a second patent infringement complaint against Google subsidiary Motorola Mobility, choosing this time…

Over the past couple weeks, a jury trial was held in Tyler, Texas on Ericsson’s November 2010 complaint that wireless equipment makers D-Link Corp., Belkin International, Netgear, Acer, Gateway, Dell, and Toshiba infringe several Ericsson patents related to the IEEE 802.11 wireless networking standard and 802.11-compliant equipment (case no. 6:10-cv-00473).  Yesterday, the jury returned its…

Earlier this week, we provided an update on the multitude of WiFi-related infringement lawsuits brought by non-practicing entity Innovative Wireless Solutions LLC against various hotels and restaurants in Texas, noting that IWS had dismissed these suits (albeit without prejudice).  We had discussed that this was a decidedly “un-Innovatio-like” turn in the cases — but yesterday brought a development that makes this series of disputes much more like the ones in the Northern District of Illinois involving Innovatio:  Cisco Systems Inc., a supplier of WiFi equipment for many of the hotels accused of infringement, got involved.  And Just like it did with Innovatio, Cisco here filed a declaratory judgment action against IWS, seeking declarations of invalidity and non-infringement as to IWS’s three asserted patents.

[UPDATE] In addition to Cisco, Hewlett-Packard has also filed a declaratory judgment action against IWS.  The link is below, and more details on that complaint are at the bottom of this post — including information about a potential license defense. [/UPDATE]

[SECOND UPDATE] On Friday, June 14, Ruckus Wireless, another WiFi equipment supplier, also filed a declaratory judgment complaint against IWS.  This complaint is very similar to the one filed by Cisco. [/SECOND UPDATE]

[Cisco Systems Inc v Innovative Wireless Solutions LLC Complaint]

[Hewlett-Packard-Company v. Innovative-Wireless-Solutions-LLC Complaint]

[Ruckus Wireless v. Innovative Wireless Solutions Complaint]

Cisco’s complaint, filed in the Western District of Texas (where Rackspace has chosen to take on noted NPE Parallel Iron in another DJ action), includes some particularly harsh words for IWS —
Continue Reading WiFi equipment suppliers Cisco and HP step in and file declaratory judgment actions against Innovative Wireless Solutions LLC

While much of the focus on standard-essential patent litigation issues has been focused on Microsoft-Motorola, Apple-Samsung, and the InterDigital cases, these are far from the only cases dealing with SEP issues.  District courts and the ITC continue to develop case law on SEP and RAND-related issues.

In an order issued yesterday in Realtek Semiconductor v. LSI (No. 12-cv-03451, N.D. Cal.), Judge Ronald Whyte of the Northern District of California issued a preliminary injunction that purports to prevent LSI from enforcing an ITC exclusion order until LSI has complied with its IEEE-related RAND obligations.  According to the order [LINK], this means that LSI must wait to enforce any exclusion order until: (1) the court has determined an appropriate RAND rate for LSI’s 802.11-essential patents, (2) LSI offers a license to Realtek at that rate; and (3) Realtek refuses to enter into a license at the judicially-determined RAND rate (which, as the court states, “Realtek indicates it will not do.).

With the ITC’s decision in the 337-TA-794 investigation (on the propriety of exclusion orders for FRAND-pledged essential patents) involving Samsung and Apple due by the end of the month, this is certainly an interesting development.  But given the way the ITC operates, we’re not so sure that the court’s order is going to have the desired effect.  Let’s take a look at Judge Whyte’s order, shall we?


Continue Reading District court judge issues order enjoining enforcement of ITC exclusion order pending judicial RAND determination — but does it matter? (Realtek v. LSI/Agere)