Administrative Law Judg (ALJ) Lord at the U.S. International Trade Commission (ITC) recently issued an Order striking patent misuse claims against Philips Lighting (Philips) raised by WAC Lighting and other respondents that were premised on Philips filing its Complaint in the ITC without making a license available “on standard (reasonable) and non-discriminatory terms.” This ruling provides incremental guidance on the specificity needed to plead a competition law claim based on standard essential patents (SEPs), including allegations of specific facts showing the anticompetitive effect of alleged improper SEP licensing activity. Continue Reading ALJ Lord dismisses SEP licensing-based patent misuse defenses (ITC Inv. No. 1081, Philips v. Feit Electric)
Judge Gilstrap recently issued an Order rejecting the equitable defense of patent misuse in a case involving standard essential patents (SEPs) subject to a commitment to license them on fair, reasonable and non-discriminatory (FRAND) terms. Motorola Mobility LLC (Motorola) alleged that Saint Lawrence Communications LLC (St. Lawrence or SLC) was guilty of patent misuse by, among other things, requiring Motorola to take a worldwide license to FRAND-committed SEPs, using the threat of injunctive relief in Germany to coerce licensing of those SEPs, entering different license terms with different licensees and not disclosing effective royalties from licensing the SEPs under a patent pool when negotiating individual licenses. This decision is another indication that competition law claims asserted against SEPs may not prevail when patent owners have followed traditional patent enforcement and licensing strategies or even if they breach of a FRAND commitment. Rather, there must be something more egregious or deceptive with the particular patent owner’s conduct at issue to give rise to competition law claims that are required to address harm to competition beyond harm that can be addressed by more traditional patent or contract law remedies — e.g., a contract remedy for breach of a FRAND commitment or limits on patent remedies based on a FRAND commitment. Continue Reading Judge Gilstrap rejects patent misuse defense to alleged FRAND-committed SEPs (St. Lawrence v. Motorola Mobility)
We’ve previously covered the bilateral standard-essential patent battle brewing between Ericsson and Samsung in the U.S. International Trade Commission (as well as the Eastern District of Texas). The ITC has instituted two investigations surrounding the parties’ claims: Inv. No. 337-TA-862 (based on Ericsson’s complaint) and Inv. No. 337-TA-866 (based on Samsung’s complaint). Yesterday, Samsung filed the public version of its Response to the Complaint and Notice of Investigation (essentially, an answer to Ericsson’s complaint) in the -862 investigation. Below is an overview of this filing, in which (surprise!) F/RAND-related issues and defenses have a starring role.