Today the Federal Circuit (Lourie, Dyk and Reyna) granted Microsoft’s motion to transfer Motorola’s appeal of Judge Robart’s RAND ruling to the Ninth Circuit, settling the parties dispute whether the Federal Circuit or Ninth Circuit has appellate jurisdiction over this particular appeal (see our Dec. 16, 2013 post and prior posts summarizing transfer

After being removed to federal district court last May, the Vermont Attorney General’s suit against non-practicing entity MPHJ is being sent back to state court. The decision holds that the AG’s unfair competition claims arising from MPHJ’s patent enforcement efforts belong in state court and raises the question of whether other patent demand letter jurisprudence 

Today, the U.S. Supreme Court issued its opinion in Medtronic, Inv. v. Mirowski Family Ventures, LLC, unanimously reversing the Federal Circuit’s decision below and resolving two issues that are commonly disputed in the lower courts.  First, the Court held that the Federal Circuit had subject-matter jurisdiction over an appeal of an action for a

Today Judge Robart issued an Order certifying a Rule 54(b) judgment in the Microsoft v. Motorola case where he had issued a first of its kind RAND rate ruling on Motorola H.264 and 802.11 standard essential patents (SEPs) and sustained the jury verdict that Motorola breached its RAND obligations in offering a license to Microsoft. 

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.
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Today, June 14, 2013, in Robert Bosch LLC v. Pylon Manufacturing Corp., No. 2011-1363, 1364, an en banc Federal Circuit ruled that parties can appeal a decision on liability in patent infringement cases before there has been a trial on damages or willfulness.

Under 28 U.S.C. § 1292(c), the Federal Circuit has exclusive jurisdiction

VermontWe’re going to take a brief time-out from SEP issues here for a short update on a case that’s being watched with interest by many in the patent world — the Vermont Attorney General’s consumer protection action brought last month against MPHJ Technology Investments, the so-called “scanner patent troll.” (For details on the complaint filed by the Vermont AG, see our previous post.)

It’s a somewhat mundane, and not surprising (but still noteworthy) development — This past Friday, MPHJ filed a notice of removal under 28 U.S.C. § 1441, seeking to transfer the case to the U.S. District Court for the District of Vermont, as opposed to the State of Vermont Superior Court (where it was filed by the attorney general).  Apparently, MPHJ likes its chances much better in federal court than in state court.


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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.


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CAFCWe’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

Yesterday, March 6, 2013, in Radio Systems Corp. v. Lalor, No. 2012-1233, the Federal Circuit (Newman, Moore, and Reyna) held that equitable estoppel barred infringement claims for one patent against an alleged infringer’s successor-in-interest, but did not bar infringement claims for a related patent that issued after the misleading conduct began.  The court also