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While much of the attention over standard-essential patent litigation focuses on disputes taking place in the United States, the U.S. is not the only venue seeing these showdowns.  SEP-related issues have also arisen in Australia, in Korea, and in Europe (both in the courts and in European Commission investigations).  The courts in Germany — which has recently become a hotbed for patent litigation — have developed a unique procedure for dealing with the assertion of standard essential patents.  Named for a 2009 decision by the Federal Supreme Court of Germany, this is commonly known as the “Orange Book” defense or procedure (or sometimes as the dolo agit or good faith defense).  In this post, we aim to provide a background of this case and some examples of cases where the Orange Book defense has been invoked.


Continue Reading A RANDom glance abroad: German Patent Courts and the “Orange Book” defense

[UPDATE]  Since this post was originally published on January 22, the deadline passed for the parties to submit extrinsic evidence and additional arguments supporting their respective interpretations of the Google-MPEG LA AVC/H.264 license agreement.  Microsoft submitted both a brief and a supporting Declaration of Lawrence A. Horn, who is the President and CEO of MPEG LA, LLC.  Mr. Horn’s declaration supports Microsoft’s argument (as detailed in our original post below) that the scope of the grant-back under the MPEG LA license agreement extends to all Affiliates of Google, not just to those specifically identified.  For its part, Motorola argues that the “scope” language of the MPEG LA agreement remains ambiguous, and that Mr. Horn’s declaration represents inadmissible hearsay because Motorola was unable to cross-examine him.

The parties’s respective briefs and Mr. Horn’s declaration may be accessed from the links below:

[/UPDATE]

Judge Robart’s forthcoming opinion in the Microsoft v. Motorola RAND breach of contract case in the Western District of Washington is highly anticipated by those who pay attention to standard-essential patent disputes, as it will likely provide a judicially-sanctioned roadmap for how to determine RAND terms and conditions in a given licensing situation.  But before he issues a written decision, a hearing is scheduled for January 28, during which Judge Robart will hear oral argument from Microsoft and Motorola regarding the implications that Google’s AVC/H.264 patent pool license agreement with MPEG-LA may have on the appropriate RAND terms for Motorola Mobility’s H.264-essential patent portfolio. (Google, of course, being the parent company of Motorola Mobility since it acquired Motorola in May 2012).


Continue Reading Preview: Motorola, Microsoft set to debate relevance of Google’s MPEG LA license agreement to RAND terms next week

Earlier this month, InterDigital Communications filed a Section 337 complaint with the ITC, alleging that Samsung, Nokia, ZTE, and Huawei infringed several of InterDigital’s 3G and 4G-essential patents.  As we noted in our earlier post on the matter, InterDigital included a statement regarding the public interest along with its complaint, attempting to preemptively assuage any public interest concerns the Commission may have due to the inclusion of standard-essential patents in the complaint.  Over the past two weeks, though, the proposed respondents have each filed their own public interest statements with the ITC, asserting a number of reasons why the public interest might be adversely affected by the institution of an investigation based on InterDigital’s complaint.
Continue Reading InterDigital, Nokia, others dispute public interest implications of 3G/4G patent assertions

Today, a notice and request was published in the Federal Register, inviting the public to comment on the FTC’s proposed consent agreement with Google and Motorola Mobility in FTC File No. 121-0120.  This proposed consent agreement would close the FTC’s investigation into certain Google/Motorola Mobility business practices concerning licensing and assertion of standard-essential patents that Motorola previously agreed to license on RAND terms (for more details, see our prior post on the consent agreement).
Continue Reading FTC invites public to comment on consent agreement with Google/Motorola Mobility

Late last week, Apple Inc. filed a notice of appeal with the United States District Court for the Western District of Wisconsin, announcing its intent to appeal to the Federal Circuit Judge Barbara B. Crabb’s dismissal of Apple’s SEP-related contract and antitrust claims against Motorola Mobility (case No. 3:11-cv-00178-bbc).  This presents us with an opportunity to do a brief “catching up on” post on this particular portion of the larger Apple-Motorola dispute.
Continue Reading Catching up on … Apple v. Motorola Mobility (W.D. Wis.)

Lost in the all of the publicity surrounding the FTC’s consent decree that ended its investigation of Google and Motorola Mobility yesterday is the fact that while the FTC’s decision not to proceed with action against Google for its search practices was unanimous, its decision to issue a complaint and order relating to Google’s enforcement of its SEPs was not — Commissioner Maureen K. Olhausen submitted a dissenting statement.  (Commissioner J. Thomas Rosch issued a separate statement, but voted in favor of issuing the complaint).  The mere fact that the decision was not unanimous isn’t that remarkable in and of itself, as the five-member Commission often reaches split decisions.  However, Commissioner Olhausen’s dissent raises some issues about the FTC’s action that warrant mentioning here.
Continue Reading A dissenting voice from the FTC/Google consent agreement

Because so many SEP-related issues have arisen over the past year, we will periodically revisit some of the more noteworthy occurrences with a brief post.  In this post, we explore recent and ongoing patent assertion activities of Innovatio IP Ventures, LLC.

On February 28, 2011, Broadcom Corporation assigned 31 U.S. patents to a company named Innovatio IP Ventures, LLC.  After acquiring these patents, Innovatio then sent letters to thousands of entities – including restaurants, coffee shops, hotels, grocery stores – alleging infringement of these patents, which Innovatio claimed to be essential to the 802.11 Wi-Fi standard.  Innovatio sought royalties from these entities, reportedly seeking $2500-3000 from each outlet for a license to the patents.  When negotiations broke down, Innovatio also filed lawsuits against dozens of these entities, claiming they infringed the patents through their respective use of products that comply with the 802.11 standard.Continue Reading Catching up on…Innovatio IP Ventures, LLC’s Litigation Activities

Because so many SEP-related issues have arisen over the past year, we will periodically revisit some of the more important occurrences with a brief post.  The recent bench trial before Judge James L. Robart of the Western District of Washington between Microsoft and Motorola a may yield a groundbreaking opinion in the area of standard-essential patents, so this is a case that warrants a review.

The dispute between the parties originated back in the fall of 2010.  Microsoft sued Motorola in the U.S. District Court for the Western District of Washington and the U.S. International Trade Commission, accusing Motorola Android devices of infringing several Microsoft patents.  Motorola in turn sent two letters to Microsoft, offered Microsoft licenses to two of Motorola’s standard-essential patent portfolio – for the 802.11 WiFi standard and the H.264 video coding standard – at a rate of 2.25% of the net selling price of the end products that practice those standards.  Microsoft then filed a complaint in the W.D. Wash. against Motorola for breach of contract – specifically, Microsoft alleged that Motorola’s offers to Microsoft breached Motorola’s prior promises to the IEEE and the ITU to offer licenses to its 802.11 and H.264-essential patents on RAND terms.Continue Reading Catching up on…Microsoft v. Motorola