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Posts Tagged: "SEP"

Fifth Circuit Affirms Texas Court’s Judgment that Ericsson Complied with FRAND Obligations

The U.S. Court of Appeals for the Fifth Circuit today affirmed an Eastern District of Texas court’s judgment for Ericsson, finding no error in the district court’s jury instructions, declaratory judgment or evidentiary rulings, and rejecting HTC Corporation’s allegations that Ericsson had breached its contractual obligation to offer a license on fair, reasonable, and non-discriminatory (FRAND) terms. The case stems from HTC’s refusal of a 2016 licensing deal in which Ericsson proposed a rate of $2.50 per 4G device to license its standard essential patents for mobile devices. Although HTC had previously paid Ericsson about $2.50 per device for the patents under a 2014 licensing agreement, in 2016 the company independently assessed the value of Ericsson’s patents and ultimately proposed a rate of $0.10 per device in 2017, which was based on the “smallest salable patent-practicing unit.” According to the Fifth Circuit, Ericsson considered this “so far off of the norm” that negotiations stopped, and a few days later, HTC filed suit in the U.S. District Court for the Eastern District of Texas, alleging breach of FRAND terms.

IPWatchdog Annual Meeting Now VIRTUAL CON2020

IPWatchdog® CON2020 has gone VIRTUAL!   The IPWatchdog® Virtual CON2020 will endeavor to address the issues facing innovators, creators and brand owners as they find it increasingly difficult to monetize their proprietary creations in an economy where many large enterprises no longer want to pay for what they choose to implement and/or sell, and there is scant legal recourse to…

IPWatchdog Annual Meeting Now VIRTUAL CON2020

IPWatchdog® CON2020 has gone VIRTUAL!   The IPWatchdog® Virtual CON2020 will endeavor to address the issues facing innovators, creators and brand owners as they find it increasingly difficult to monetize their proprietary creations in an economy where many large enterprises no longer want to pay for what they choose to implement and/or sell, and there is scant legal recourse to…

IPWatchdog Annual Meeting Now VIRTUAL CON2020

IPWatchdog® CON2020 has gone VIRTUAL!   The IPWatchdog® Virtual CON2020 will endeavor to address the issues facing innovators, creators and brand owners as they find it increasingly difficult to monetize their proprietary creations in an economy where many large enterprises no longer want to pay for what they choose to implement and/or sell, and there is scant legal recourse to…

IPWatchdog Annual Meeting Now VIRTUAL CON2020

IPWatchdog® CON2020 has gone VIRTUAL!   The IPWatchdog® Virtual CON2020 will endeavor to address the issues facing innovators, creators and brand owners as they find it increasingly difficult to monetize their proprietary creations in an economy where many large enterprises no longer want to pay for what they choose to implement and/or sell, and there is scant legal recourse to…

IPWatchdog Annual Meeting Now VIRTUAL CON2020

IPWatchdog® CON2020 has gone VIRTUAL!   The IPWatchdog® Virtual CON2020 will endeavor to address the issues facing innovators, creators and brand owners as they find it increasingly difficult to monetize their proprietary creations in an economy where many large enterprises no longer want to pay for what they choose to implement and/or sell, and there is scant legal recourse to…

IPWatchdog Annual Meeting Now VIRTUAL CON2020

IPWatchdog® CON2020 has gone VIRTUAL!   The IPWatchdog® Virtual CON2020 will endeavor to address the issues facing innovators, creators and brand owners as they find it increasingly difficult to monetize their proprietary creations in an economy where many large enterprises no longer want to pay for what they choose to implement and/or sell, and there is scant legal recourse to…

The New U.S. Essential Patents Statement – Safeguarding the Integrity of the Patent System

In withdrawing the 2013 statement, the new 2019 guidance by the DOJ, NIST and the USPTO states the obvious, i.e. that there is no difference in the law between F/RAND assured standard essential patents and all other patents. While some would have perhaps liked to break the unitarity approach of the patent system so as to weaken remedies against the infringement of essential patents, a legal system that would apply a different standard to standard essential patents as opposed to other patents would violate U.S. trade obligations.

USPTO, DOJ & NIST Issue Joint Policy Statement on Injunctions for Standard Essential Patents

Earlier this afternoon, the United States Patent and Trademark Office (USPTO, National Institute of Standards and Technology (NIST) and the U.S. Department of Justice, Antitrust Division (DOJ), issued a Joint Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments (“2019 Joint Policy Statement”). This Joint Policy Statement explains that “[c]onsistent with the prevailing law… injunctive relief, reasonable…

Judge Koh Delivers Qualcomm Brutal Defeat Despite Apple’s Proven Manipulation

In a 233-page Order issued yesterday, Judge Lucy Koh of the United States Federal District Court for the Northern District of California handed Qualcomm a stinging defeat in the case brought by the Federal Trade Commission (FTC) alleging that Qualcomm engaged in unlawful licensing practices. It was just three weeks ago that Apple and Qualcomm entered into a peace treaty. The revelations about Apple’s coordinated efforts to manipulate the licensing market by shrewdly challenging inferior patents to beat down prices should have led to the FTC dropping its pursuit of Qualcomm. It is no secret that Apple has urged regulators all over the world to chase Qualcomm for alleged anticompetitive licensing practices, but it has now come out in federal court proceedings that Apple just didn’t like the rate it agreed to pay Qualcomm and decided to manipulate the marketplace and then use that manipulation to pull the wool over the eyes of regulators, including the FTC, in an attempt to leverage a better deal with Qualcomm.Apple succeeded in achieving peace with Qualcomm, although the company has been badly beaten by Apple in near collusion with regulators all over the world. So why would the FTC continue to persecute Qualcomm given the revelations in the Apple/Qualcomm litigation that demonstrate that Qualcomm did not seek an unreasonably high licensing rate?

Latest Apple/Qualcomm Ruling Highlights Question of ‘Unwilling Licensees’

On March 20, U.S. District Judge Gonzalo Curiel of the Southern District of California issued an order denying a motion by Apple, which was seeking partial judgment against Qualcomm on that company’s claim that it had fulfilled its fair, reasonable and non-discriminatory (FRAND) obligations for licensing its standard-essential patents (SEPs). As a result, Qualcomm can move ahead with its efforts to prove that its SEP portfolio licensing activities have met the company’s FRAND obligations and that Apple has forfeited its right to FRAND licensing because it hasn’t been a willing licensee.The court sided with Qualcomm in finding that Apple’s arguments regarding the unsuccessful licensing negotiations presented a definite and concrete controversy. Qualcomm had cited to a 2017 Eastern District of Texas case, Huawei Techs. Co. v. T-Mobile US, Inc., to show an instance where a court had found subject-matter jurisdiction in a case where a patent holder sought a declaration that it had complied with FRAND obligations. In the current case, Apple hadn’t stated unequivocally that it wouldn’t pursue a stand-alone breach of contract action, giving rise to a substantial controversy with sufficient immediacy and reality to justify declaratory relief. A favorable outcome to Qualcomm on this claim would afford additional relief, as Qualcomm could demonstrate that Apple had engaged in unreasonable holdout behavior, relieving Qualcomm of further FRAND obligations towards Apple.

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.

Qualcomm files suit in China seeking to ban iPhone sales by asserting three non-SEPs

A major legal battle over patented technologies in the mobile device communication sector between San Diego, CA-based semiconductor developer Qualcomm Inc. and Cupertino, CA-based consumer tech giant Apple Inc. took a new turn as multiple news reports indicated that Qualcomm had filed suit in China seeking a ban on the sale and manufacture of iPhones. Qualcomm’s court filing in China is the latest salvo in a barrage of legal challenges between both company’s over licensing activities between Qualcomm, Apple and the many Asian contract manufacturers who fabricate smartphones for Apple which incorporate technologies allegedly covered by Qualcomm’s patents.

ITC opens patent infringement investigation after Qualcomm files complaint against Apple

On Tuesday, August 8th, the U.S. International Trade Commission (ITC) announced that it was opening up an investigation on claims that Cupertino, CA-based consumer electronics behemoth Apple Inc. (NASDAQ:AAPL) is infringing upon patented technologies, specifically baseband processor modems, in its mobile electronic devices. The investigation follows a Section 337 patent infringement complaint filed on July 7th with the ITC by…

Nokia, Xiaomi ink patent cross license deal as both companies increase global smartphone sales

Finnish telecom firm Nokia (NYSE:NOK) and Chinese mobile handset developer Xiaomi recently issued a joint press release announcing a multi-year patent cross license agreement granting both companies access to standard essential patents (SEPs) owned by either firm in the cellular space. In addition, Xiaomi bought patents from Nokia outright. Details on financials and the patents involved were not included in the press announcement.