Section 337

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Back in January, we alerted you to a patent infringement case brought in the U.S. International Trade Commission by Acacia Research subsidiary Adaptix.  Adaptix accused Ericsson of infringing U.S. Pat. No. 6,870,808, which Adaptix asserted to be essential to the ETSI 4G Long-Term Evolution (LTE) wireless standard.  The ITC later instituted the investigation as…

On Friday, U.S. International Trade Commission Administrative Law Judge David P. Shaw issued a Notice of Initial Determination in In the Matter of Certain Wireless Devices with 3G Capabilities and Components Thereof, Inv. No. 337-TA-800.  This investigation was originally instituted nearly two years ago based on a complaint filed by InterDigital against Huawei, Nokia, ZTE, and LG, in which InterDigital accused the companies of infringing several InterDigital patents alleged to be essential to various 3G cellular communications standards.  The evidentiary hearing was held in January 2013, and the case involves the intersection of a two issues that have drawn a lot of attention lately — the assertion of standard-essential patents at the ITC (and what if any relevance FRAND licensing obligations have to the proceedings), as well as patent infringement cases brought by non-practicing entities (InterDigital is an NPE that has been deemed a “patent troll” by some, while others take a more favorable view of the company’s activities).

So far, it appears that InterDigital’s SEP infringement assertions have failed (at least for now).  While the public version of ALJ Shaw’s Initial Determination won’t become available for at least a few weeks, Friday’s Notice indicates that ALJ Shaw found no violations of Section 337 with respect to any of the seven remaining asserted patents. 
Continue Reading ITC rules against InterDigital’s claims of 3G-essential patent infringement in preliminary finding

CAFCLater 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)

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…

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

CapitolPatents have been getting a lot of attention on Capitol Hill lately, with the reintroduced SHIELD Act and the recent Congressional hearing on “abusive patent litigation.”  Next week patents will get even more airtime, as the House Judiciary Committee’s Subcommittee on Courts, Intellectual Property, and the Internet will hold a hearing titled Abusive …

If anyone needed more evidence that the U.S. International Trade Commission is paying a lot of attention to standard-essential patents and FRAND-related issues, they received some yesterday.  The Office of Unfair Import Investigations (OUII), a neutral third party who commonly participates in ITC investigations as a representative of the public interest, notified the ITC…

Late yesterday, Administrative Law Judge Robert K. Rogers issued an order denying the motion brought by Huawei and ZTE (later joined by Nokia) to stay ITC Inv. No. 337-TA-868 pending the outcome of a potential FRAND determination in the District of Delaware.  As we noted in our initial post on this motion, this is not altogether surprising, given the ITC’s statutory mandate to decide cases quickly.  So it looks like InterDigital’s latest standard-essential ITC case will stick with the procedural schedule on a path to a December 2013 hearing.  Huawei and ZTE’s quest to avoid a potential exclusion order, meanwhile, will shift to the Delaware district court, where they recently told the court that it could enjoin InterDigital from enforcing any ITC exclusion order on its SEPs until FRAND issues are resolved.

The order itself is confidential, but the screenshot below shows
Continue Reading ALJ denies motion to stay InterDigital ITC case pending potential FRAND determination

Yesterday we covered InterDigital’s opposition to Huawei, Nokia, and ZTE’s efforts to stay the ITC’s investigation into InterDigital’s latest Section 337 complaint pending a potential FRAND determination in the District of Delaware.  We also noted that the other respondent, Samsung, did not join the motion but stated that it did not oppose such a stay.    The ITC Investigative Staff from the Office on Unfair Important Investigations (a third party that participates in many ITC investigations as a representative of the public interest) also filed its own response to the motion yesterday.  The Staff opposes the motion to stay for a variety of reasons, which we will get into below.
Continue Reading ITC Staff opposes motion to stay pending FRAND determination in InterDigital Section 337 investigation (337-TA-868)

Today was the target date for the ITC’s Final Determination in In the Matter of Certain Electronic Devices, Including Wireless Communication Devices, Portable Music and Data Processing Devices, and Tablet Computers (Inv. No. 337-TA-794).  But today, the Comission issued a notice to extend the target date for completion of the investigation until next…