By now, it’s really no surprise to those who pay attention to SEP issues that certain lawmakers have their eyes on the standard-essential patent world, as well. Although non-practicing entity issues generally grab headlines these days, Congress does make some time for SEPs, too. One example of this just became public — a May 21
Federal Circuit reverses ITC decision to terminate LG Electronics from InterDigital 3G patent case (337-TA-800)
Later this month, Adminstrative Law Judge David P. Shaw is expected to issue an Initial Determination in In the Matter of Certain Wireless Devices with 3G Capabilities and Components Thereof (Inv. No. 337-TA-800), which is the ITC’s Section 337 investigation into InterDigital’s allegations of 3G-essential patent infringement by Huawei, LG Electronics, Nokia, and ZTE. The upcoming ID, though, will only relate to infringement accusations against Huawei, Nokia, and ZTE — as LG had previously been terminated from the case in July 2012. LG had been dismissed from the ITC case because LG claimed that InterDigital’s infringement allegations were an “arbitrable dispute” covered by a license agreement between the parties, and that an arbitrator — not the ITC — should decide the infringement issues. Once the ITC terminated LG from the case, InterDigital appealed this ruling to the Federal Circuit.
Today, in a 2-1 opinion [LINK] written by Judge Sharon Prost (joined by Judge William Bryson, with Judge Alan Lourie dissenting), the Federal Circuit reversed the ITC’s decision and remanded the case to the ITC for further proceedings. The court held that the ITC erred in terminating LG from the investigation, because the ITC failed to analyze the text of the license agreement to determine whether LG’s arguments regarding the arbitrability of the infringement dispute were “wholly groundless.” Furthermore, the court found that when the text of the agreement was actually considered, LG’s assertions were indeed “wholly groundless,” and the infringement claims were not subject to arbitration.
Continue Reading Federal Circuit reverses ITC decision to terminate LG Electronics from InterDigital 3G patent case (337-TA-800)
A look at the ITC’s exclusion and cease & desist orders in the Samsung-Apple case (337-TA-794)
One thing that has frustrated many followers of the Samsung-Apple ITC case is the currently unavailability of a public version of the Commission’s Final Determination. Generally, the only insight into the ITC’s reasoning came from the limited information in the Commission’s Notice of Final Determination. But for those of you who are interested, we thought it’d be worth taking a look at the publicly-available documents that spell out the specific exclusionary relief awarded to Samsung in this case:
After the jump, we’ll dive into these in a little more detail.
Continue Reading A look at the ITC’s exclusion and cease & desist orders in the Samsung-Apple case (337-TA-794)
ITC issues exclusion order against Apple based on infringement of Samsung 3G-essential patent (Inv. No. 337-TA-794)
The ITC just issued a Notice of Final Determination in Inv. No. 337-TA-794, the investigation concerning Samsung’s complaint against Apple. (For a refresher on the case and issues, check out our previous posts). In a decision that will reverberate across the standard-essential patent world, the Commission has determined that Apple’s products at issue
ITC once again extends target date in Samsung-Apple case – Final Determination now due June 4
For the fourth time over the course of the Samsung-Apple ITC Investigation (No. 337-TA-794), the Commission has extended the target date for its much-anticipated Final Determination. We’ll have to wait until Tuesday, June 4 for a ruling on whether Samsung can get an exclusion order as a remedy for Apple’s alleged infringement of Samsung’s standard-essential
U.S. International Trade Commission expected to rule tomorrow on availability of exclusion orders for infringement of FRAND standard-essential patents (337-TA-794)
Spring has been an interesting time in the world of standard-essential patent litigation. Last month brought us Judge Robart’s groundbreaking RAND-setting opinion in Microsoft v. Motorola; this month, it’s the ITC’s turn. Tomorrow is the (thrice-extended) target date in In the Matter of Certain Electronic Devices, Including Wireless Communication Devices, Portable Music
Samsung accuses Apple of violating ITC rules and misrepresenting “key facts” (Inv. No. 337-TA-794)
While there are just a few days to go before the target date for the ITC’s long-awaited Final Determination in Samsung’s Section 337 investigation against Apple, that hasn’t stopped the parties from continuing to spar. Last week, Apple filed a “Notice of New Authority and New Facts” with the ITC, directing the Commission’s attention to
District court judge issues order enjoining enforcement of ITC exclusion order pending judicial RAND determination — but does it matter? (Realtek v. LSI/Agere)
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?
Apple cites Judge Robart’s Microsoft-Motorola decision as supplemental FRAND authority in Fed Circuit, ITC cases
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
House Judiciary Subcommittee hearing on abusive patent litigation and the ITC focuses on non-practicing entities, litigation costs, and remedies
This afternoon, the House Judiciary Committee’s Subcommittee on Courts, Intellectual Property and the Internet held a hearing titled “Abusive Patent Litigation: The Issues Impacting American Competitiveness and Job Creation at the International Trade Commission and Beyond.” This hearing comes on the heels of a broader hearing on abusive patent litigation held by the same committee two months ago, as well as a different hearing in July 2012 that generally addressed the ITC’s role in deciding patent disputes. Several witnesses representing a variety of diverse backgrounds and interests testified today before the subcommittee, including:
- Kevin Rhodes, VP and Chief IP Counsel for 3M Innovative Properties Co.
- Jon Dudas, Former Director of the USPTO (and a member of the board of non-practicing entity MOSAID Technologies)
- Prof. Colleen Chien of Santa Clara University
- Russell Binns, Associate General Counsel for IP Law & Litigation at Avaya
- Deanna Tanner Okun, Former Chairwoman of the ITC (and a partner at Adduci Mastriani & Schaumberg)
- David Foster, Chairman of the Legislative Committee for the ITC Trial Lawyers Association (and a partner at Foster, Murphy, Altman & Nickel)
A link to the video webcast of the full hearing is available at the House Judiciary Committee’s website, along with PDFs of each witness’s prepared testimony. Our friends at Patent Progress also live-tweeted the event — take a look at their Twitter feed @PatentProgress for their blow-by-blow account.
As we anticipated, while standard-essential patents were not the focus of this particular hearing, the issue of SEPs was indeed given some attention. In his opening remarks, Congressman Melvin Watt noted concerns some have expressed about the potential for improper usage of standard-essential patents in seeking injunctive relief, and Congressman Ted Poe briefly quizzed Prof. Chien about the propriety of asserting standard-essential patents in the ITC.
Continue Reading House Judiciary Subcommittee hearing on abusive patent litigation and the ITC focuses on non-practicing entities, litigation costs, and remedies