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Posts Tagged: "Northern District of California"

CAFC Grants Mandamus on Netflix Motion to Transfer Out of Gilstrap’s Court

The U.S. Court of Appeals for the Federal Circuit (CAFC) today granted Netflix, Inc.’s Petition for Writ of Mandamus to transfer a case brought against it by CA Inc. and Avago Technologies from Judge Rodney Gilstrap’s Eastern District of Texas court to the Northern District of California. The Order is the latest in a series of decisions from the CAFC censuring Texas courts for their refusal to transfer cases. In today’s ruling, the CAFC said the district court’s denial of transfer was a clear abuse of discretion and ordered the court to transfer the case, but did not address Netflix’s motion to dismiss the case for lack of venue.

Google Wins Transfer as CAFC Continues Mandamus Spree Against Albright

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday continued its trend of granting mandamus directing Judge Alan Albright of the U.S. District Court for the Western District of Texas to transfer a case to the Northern District of California. In the latest order, Google LLC petitioned the CAFC to direct Albright to transfer the case after he denied it based on the expected time to trial “despite the court itself finding that the transferee venue was otherwise more convenient,” wrote the CAFC, adding that this was a clear abuse of discretion.

Federal Circuit: Clear Attempts to Manipulate Venue Won’t Defeat Motions to Transfer

The U.S. Court of Appeals for the Federal Circuit (CAFC) in In re Samsung today granted Samsung’s and LG’s writs of mandamus, which sought to order the United States District Court for the Western District of Texas to transfer the underlying actions to the United States District Court for the Northern District of California. The CAFC explained that the district court erred in failing to consider pre-litigation tactics by Ikorongo Technology LLC (Ikorongo Tech) and Ikorongo Texas LLC aimed at purposely manipulating venue in the case.

Antitrust Experts Characterize FTC v. Qualcomm Decision as Mangling of Sherman Act’s Section 2

Judge Douglas Ginsburg of the U.S. Court of Appeals for the D.C. Circuit, Professor Joshua Wright, and attorney Lindsey Edwards of Wilson Sonsini Goodrich & Rosati, have condemned the decision in FTC v. Qualcomm Inc. (N.D. Cal. May 21, 2019) in the George Mason University Law & Economics Research Paper Series. In their paper, “Section 2 Mangled: FTC v. Qualcomm on the Duty to Deal, Price Squeezes, and Exclusive Dealing,” the authors characterize the decision as being a part of “the misguided trend of using antitrust law to intervene in contract disputes between sophisticated parties negotiating over intellectual property rights.”

District Court Denies FRAND Breach of Contract and Sherman Act Summary Judgment Motions by ASUS and InterDigital

In a decision published in redacted form on January 29, Judge Beth Labson Freeman of the Northern District of California denied ASUSTek Computer Inc.’s and ASUS Computer International’s (collectively, ASUS’s) motion for summary judgment that InterDigital, Inc.’s (InterDigital’s) standard essential patent (SEP) licensing practices breached its FRAND obligations. The court also granted-in-part and denied-in-part InterDigital’s motion for summary judgment, rejecting a request to dismiss ASUS’s Sherman Antitrust Act claim but granting summary judgment as to issues relating to judicial and promissory estoppel and as to a California competition law claim. ASUS Computer Int’l v. InterDigital, Inc., Case No. 5:15-cv-01716-BLF, ECF No. 367 (N.D. Cal. Jan. 29, 2018). The court’s ruling comes as the case is progressing toward a jury trial, presently scheduled for May 2019. Several of the issues addressed are fact-specific to the case, but the rulings relating to breach of contract, most favorable licensees, and the Sherman Act are of particular interest for SEP licensing and illustrate how the legal landscape continues to evolve.

Williams-Sonoma Lawsuit Accuses Amazon of Offering Infringing Products for Sale Online

On Friday, December 14th, San Francisco, CA-based home furnishing retailer Williams-Sonoma filed a lawsuit in the Northern District of California alleging claims of trademark and design patent infringement against Seattle, WA-based e-commerce giant Amazon.com. The lawsuit targets Amazon’s pattern of trading upon Williams-Sonoma’s goodwill and infringing the company’s intellectual property including the use of the registered mark “WILLIAMS-SONOMA.” If the allegations are true, this is simply the latest instance of this e-commerce behemoth choosing to flout IP law in an effort to line the pockets of itself and its incredibly affluent CEO Jeff Bezos.

Fitness Anywhere win Enhanced Damages and Permanent Injunction as Infringement Continued Post Verdict

The order granted post-trial motions filed by Fitness Anywhere both for enhanced damages on the patent infringement findings as well as a permanent injunction against WOSS. Although it wasn’t likely that Fitness Anywhere would recoup the total enhanced patent damages of more than $11 million dollars from WOSS, having recently declared bankruptcy, Villeneuve noted that this decision set an important precedent for the company. Such a ruling was very important to TRX, which has lost sales and has had to layoff employees in California because of the actions of infringing parties. Villeneuve said that the single most important factor leading to the grant of permanent injunction was WOSS’ sale of infringing products after the jury verdict.

FTC v. Qualcomm: Court Requires Licensing of Standard Essential Patents to Competitors

The Qualcomm decision is unique in that it appears to be the first decision to require a SEP holder to license its patented technology to its competitors, and not just its downstream customers, on FRAND terms.  This decision casts doubt on the longstanding practice, common in industries such as the telecommunication and automotive industries, in which SEP holders seek to secure “FRAND” licenses with downstream companies that make finished products, while refusing to license (or licensing on non-FRAND terms) those same SEPs to their competitors or other companies further up the supply chain (such as component suppliers).  The decision also emphasizes U.S. courts’ focus on the express language of SSOs’ IPR policies and the willingness to review the SSO guidelines in interpreting the agreements SEP holders enter into with SSOs.  In this regard, the decision may bode well for SEP implementers, given the court’s broad understanding of what it means to “practice” a relevant standard and its view that SEP holders’ FRAND obligations extend to all potential licensees, irrespective of their position in the supply chain.

Koh rules Qualcomm is Obligated to License SEPs to Competitors

Qualcomm was not refusing to abide by its agreed to promises to license SEPs as required by the SSOs, as alleged by the FTC. Instead, Qualcomm wasn’t interested in licensing competing chip makers who wanted to used Qualcomm’s technology so they could make their own chips incorporating Qualcomm’s patented technology. Licensing competing manufacturers of chips is not what the IP policies of the SSOs require. What is required is that patent owners of SEPs not discriminate against applicants desiring to utilize the license for the purpose of implementing the technology. But that isn’t what a competing manufacture would be doing. A competing manufacturer would be creating the chip that enables, not implementing the technology into an end product. In fact, as Qualcomm pointed out, industry practice of SSOs is to require licensing only fully compliant end-user devices, and not components.

Facebook patent infringement suit against BlackBerry looks remarkably patent troll-like

Facebook is asserting a series of patents the company has acquired from other firms, making its actions similar to those of non-practicing entities (NPEs) and remarkably patent troll-like. After all, we have been told time and time again by those who have advocated for patent reform and a systematic dismantling of the patent system that a telltale sign of a truly bad actor like a patent troll is that the patents were not the subject of homegrown innovation, but were rather acquired from true innovators and then used to sue others. That, however, is precisely what Facebook is doing here. 

Rejection of proposal did not obviate requirement to disclose inventions to standard setting body

The Federal Circuit, however, found the district court’s enforceability finding to be unsupported by evidence. The rejection of Nokia’s proposal did not obviate Nokia’s requirement to disclose inventions that might be essential to the standard. Dr. Walker’s uncontroverted testimony explained that patent applications are to be disclosed at the time proposals are presented. “[A]n ETSI member’s duty to disclose a patent application on particular technology attaches at the time of the proposal and is not contingent on ETSI ultimately deciding to include that technology in an ETSI standard,” Bryson explained. Notwithstanding, the Federal Circuit elected to vacate this ruling rather than electing to reverse the district court because the existence of an implied waiver is an equitable defense.

Apple and Samsung Settle Patent Dispute Proving Patent Litigation Doesn’t Hinder Consumer Access

On Wednesday, June 27th, a pair of orders of dismissal, one entered in the District of Delaware and the other entered in the Northern District of California, marked the official end of the patent war which played out between consumer tech giants Apple and Samsung for the better part of the past decade. This legal dispute, which was brought to courts in 10 different countries and even went to the U.S. Supreme Court, is notable because it undermines the argument that major patent infringement battles harm tech consumers through added costs and blocking innovation.

Federal Circuit Reverses District Court’s Invalidation of Patents Asserted Against Apple

On appeal to the Federal Circuit, Zeroclick argued that the district court erred in construing those two terms as means-plus-function limitations, an argument with which the Federal Circuit panel agreed. “Neither of the limitations at issue uses the word ‘means,’” Circuit Judge Hughes writes in his majority opinion. “Presumptively, therefore, [Section 112(f)] does not apply to the limitations.” Although Apple argued in the district court that the claims must be construed under Section 112(f), it provided no evidentiary support for its position. Although the court compared Apple’s arguments to Zeroclick’s objections, Judge Tigar did not point to any record evidence supporting the ultimate conclusion on Section 112(f) grounds.

Judge Allows Zorro Copyright Claims to Move Forward Against Original Zorro Copyright Owner

On Friday, May 11th, U.S. District Judge Edward Davila entered an order deciding motions made in a copyright case involving competing musical productions based on the fictional story of the fictional folk hero Zorro. Judge Davila’s orders allows copyright infringement claims asserted by a writer who developed a Zorro musical in the 1990s to move forward against Zorro Productions, the entity which had licensed the Zorro character to entertainment companies going back to the late 1940s. This case is in the Northern District of California.

Israeli Camera Developer says Apple infringed after expressing interest in business relationship

Corephotonics allegedly first informed Apple that it intended to pursue patent protections for its dual-aperture camera technologies as early as June 2012 during a meeting involving representatives of both firms. In June 2013, Apple camera engineers visited Corephotonics’ Tel Aviv headquarters and were presented with technical details and architectures regarding Corephotonics’ camera technology as well as pending patent applications which the Israeli startup had already filed. In October of that year, a larger team of Apple engineers visited Corephotonics in Tel Aviv to engage in discussions surrounding dual camera processing methods.