Another week, and another standard-essential patent trial.  Whereas last week brought us the jury’s verdict finding a RAND breach in the Microsoft-Motorola case, the trial this week relates to a determination of the appropriate RAND royalty rate for Innovatio IP Ventures, LLC’s WiFi-essential patent portfolio (consisting of patents previously owned by Broadcom).

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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

As many of you are aware, a non-practicing entity named Innovatio IP Ventures has been engaged in a widespread licensing and litigation campaign over WiFi-related patents that were formerly owned by Broadcom.  As a result, Innovatio has become embroiled in litigation with several suppliers of WiFi-compliant devices (Cisco, Motorola Solutions, Netgear) in the Northern District of Illinois.  A few weeks ago, we noted that a debate had arisen in that case over the “essentiality” of certain asserted patents.  The presiding judge ordered briefing on the issue, and Innovatio filed its “Essentiality Brief” a couple weeks ago — asserting that not all of its asserted claims were essential or covered by IEEE RAND obligations.  This past Friday, the WiFi Suppliers filed their response to Innovatio’s Essentiality Brief.  The WiFi Suppliers accuse Innovatio of misconstruing both the IEEE Patent Policy and the relevant RAND licensing Letters of Assurance in an attempt to avoid its RAND obligations.

[2013.05.10 Defendants’ Brief re Essentiality of Patent Claims]

We alluded in our last post on this matter that issues of patent “essentiality” — and therefore, the scope of corresponding RAND obligations — are likely to become a more common issue in standard-essential patent litigation.  The WiFi Suppliers’ responsive brief demonstrates why.


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Last week we covered the dispute between Innovatio IP Ventures and Cisco, Motorola Solutions, and NETGEAR (the “WiFi Suppliers”) over the essentiality and non-essentiality of various 802.11-related patent claims asserted by Innovatio.  The WiFi suppliers argued that all of Innovatio’s asserted patents were essential to the 802.11 family of wireless networking standards, and therefore subject to IEEE RAND obligations.  For its part, Innovatio disputed whether dozens of claims were in fact essential.

Late last week, Innovatio filed a brief supporting its arguments regarding the non-essentiality of certain asserted claims [LINK].  Innovatio argues that the WiFi Suppliers fail to apply the IEEE’s Patent Policy in making their determination of essentiality, rendering their contentions incorrect.


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An issue that often comes up in standard-essential patent litigation is “essentiality” — whether the asserted claims are actually necessary to practice the technological standard that forms the basis of the infringement allegations.  This is important for at least two reasons: first, because if the claim is not actually necessary to practice the standard, an implementer could (at least theoretically) design around the patent to create a non-infringing implementation of the standard; and second, because the RAND obligations set forth in the patent policies of many SSOs are often limited only to truly “essential” patent claims.

This issue of essentiality has come to the forefront in the ongoing multidistrict litigation between non-practicing entity Innovatio and several WiFi suppliers (Cisco, Motorola Solutions, and Netgear).  You may recall that Innovatio, in winning (in part) a motion to dismiss some unfair competition and RICO claims, had argued that many of the asserted claims are not actually “Essential Patent Claims” as defined by the IEEE — and therefore cannot be subject to any existing RAND obligation.  Earlier this month, the court ordered the parties to meet and confer and submit a joint statement regarding disputes over whether, based on Innovatio’s infringement contentions, the asserted claims of Innovatio’s patents are actually essential to the IEEE 802.11 wireless networking standard.  Yesterday, the parties submitted their stipulation regarding the essentiality of Innvatio’s asserted patent claims.
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Last month, Judge James F. Holderman dismissed various claims brought by Cisco, Motorola Solutions, and NETGEAR against Innovatio IP Ventures, LLC over Innovatio’s vast licensing and litigation campaign relating to the IEEE 802.11 Wi-Fi standard.  These suppliers claimed that Innovatio — in threatening the suppliers’ customers and bringing litigation over standard-essential patents — violated various unfair competition laws, and even the Federal Racketeering and Corrupt Organizations Act (“RICO”).  But the court found that Innovatio’s conduct was protected petitioning activity under the Noerr-Pennington doctrine, and that the suppliers did not properly plead that the conduct was a “sham” that would exempt this activity from protection.  Yesterday, the suppliers filed a motion for entry of final judgment under Federal Rule of Civil Procedure 54(b), which indicates that the suppliers want to appeal the dismissal of these claims as soon as possible to keep the heat on Innovatio.
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