On Monday, the Supreme Court denied TCL Communication’s certiorari petition, without comment, appealing the Federal Circuit’s ruling that the essentiality of a patent claim is a question for the jury rather than judges to...more
Amid the continuing threat to U.S. intellectual property rights posed by foreign actors, the International Trade Commission (ITC) is poised to become the latest federal agency to bolster protections for U.S. IP owners. The...more
A Chinese Court recently decided that it has the willingness, and jurisdiction, to set a global licensing rate that is fair, reasonable, and non-discriminatory (“FRAND”) for standard essential patents (“SEP”). In a dispute...more
12/7/2020
/ China ,
Cross-Licensing Agreement ,
FRAND ,
Injunctions ,
Intellectual Property Protection ,
IP License ,
Patent Litigation ,
Patent Portfolios ,
Patents ,
Standard Essential Patents ,
Telecommunications
The recent anti-suit injunction issued against InterDigital in its SEP litigation with Xiaomi is a somewhat predictable reaction to the recent UK Supreme Court decision against Huawei and ZTE. One of the central arguments...more
10/26/2020
/ Anti-Suit Injunctions ,
China ,
Competition ,
FRAND ,
Huawei ,
IP License ,
Patent Infringement ,
Patents ,
Standard Essential Patents ,
Standard Setting Organizations ,
UK Supreme Court
On October 13, 2020, the U.S. Supreme Court granted three petitions for writ of certiorari related to Arthrex v. Smith & Nephew addressing two issues that will determine the fate of PTAB judges and decisions. First, did the...more
In the latest decision addressing antitrust liability for FRAND commitments, Judge Barbara M. G. Lynn of the Northern District of Texas dismissed a complaint from Continental Automotive Systems, Inc. (“Continental”) alleging,...more
9/18/2020
/ Anti-Competitive ,
Antitrust Violations ,
Bargaining Power ,
Breach of Contract ,
Declaratory Judgments ,
Department of Justice (DOJ) ,
Dismissal With Prejudice ,
Failure To State A Claim ,
Federal Trade Commission (FTC) ,
FRAND ,
Monopolization ,
Motion to Transfer ,
Patent Infringement ,
Patents ,
Sherman Act ,
Standard Essential Patents ,
Standing ,
Subject Matter Jurisdiction ,
Supplemental Jurisdiction ,
Unfair Competition Law (UCL)
Last Thursday, September 10, 2020, the U.S. Department of Justice’s Antitrust Division (“DOJ”) issued an updated Business Review Letter (“2020 Letter”) to the Institute of Electrical Electronics Engineers, Incorporated...more
Implementer Hold Out -
Another major development in global standard essential patent litigation was handed down today, as the UK Supreme Court upheld lower court rulings that forced an efficient infringer of essential...more
8/27/2020
/ ETSI ,
FRAND ,
Germany ,
Huawei ,
Intellectual Property Protection ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Standard Essential Patents ,
Treaty on the Functioning of the European Union (TFEU) ,
UK ,
UK Supreme Court
In a reversal that came as no surprise to many observers, on Tuesday, August 11, 2020, a unanimous panel of the U.S. Court of Appeals for the Ninth Circuit reversed the decision by the U.S. District Court for the Northern...more
8/18/2020
/ Anticompetitive Behavior ,
Antitrust Violations ,
Appeals ,
Cell Phones ,
Competition ,
Federal Trade Commission (FTC) ,
FRAND ,
FTC Act ,
IP License ,
Monopolization ,
OEM ,
Patent Royalties ,
Qualcomm ,
Remand ,
Reversal ,
Sherman Act ,
Standard Essential Patents
The Federal Circuit yesterday, in a decision likely to be celebrated by holders of standard essential patents (“SEPs”), found that it is appropriate for the jury to decide essentiality of a patent, rather than the judge...more
The Patent Trial and Appeal Board (“PTAB”) has designated two key institution decisions as “Informative.” With these informative decisions, the PTAB has provided guidance on how the PTAB will apply efficiency and fairness...more
Germany’s highest court has clearly and emphatically placed SEP implementers on notice that hold-out will not be tolerated, and that implementers must proactively share the burden and obligation to timely achieve a FRAND...more
7/16/2020
/ 5G Network ,
Antitrust Litigation ,
Corporate Counsel ,
FRAND ,
Germany ,
Intellectual Property Protection ,
IP License ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Standard Essential Patents ,
Telecommunications
Recent oral arguments at the Fed Circuit suggest that the U.S. may be taking steps which would enhance its attractiveness for SEP patent holders looking to resolve licensing disputes. The Federal Circuit heard oral argument...more
In a rare reversal, the Patent Trial and Appeal Board (“PTAB”) reassessed the Fintiv factors in a decision on a petition for rehearing of a previous decision denying institution of an inter partes review (“IPR”). The PTAB had...more
A recent Memorandum Order from the District of Delaware edified the protections courts tend to give discovery concerning litigation funding. Because Defendant AT&T failed to carry its burden of demonstrating the specific...more
The COVID-19 pandemic has caused individuals and companies alike to face the reality of a rapid economic downturn followed by a potentially slow recovery and continued economic challenges. During these trying times, companies...more
6/3/2020
/ Arbitration ,
Arbitration Agreements ,
Contract Terms ,
Coronavirus/COVID-19 ,
Dispute Resolution ,
Intellectual Property Litigation ,
International Arbitration ,
IP License ,
Patent Litigation ,
Patents ,
Scope of Discovery Requests
The Patent Trial and Appeal Board (“PTAB”) recently sent a warning to alleged infringers not to wait for the one year deadline to file IPR petitions, or risk discretionary denial. On May 13, 2020, the PTAB exercised its...more
After its recent ruling in Sisvel’s favor, Germany’s highest court on patent matters is expected to issue a highly favorable and detailed decision for standard-essential patent (SEP) owners seeking to prevent patent...more
Earlier this month, a Northern District of Illinois jury returned a verdict in favor of Motorola for over $700 million after a trial in which Motorola alleged that Hytera hired three engineers away from Motorola’s Malaysian...more
3/13/2020
/ Confidential Business Information (CBI) ,
Corporate Counsel ,
Damages ,
Defend Trade Secrets Act (DTSA) ,
Economic Espionage Act ,
Extraterritoriality Rules ,
Jury Verdicts ,
Misappropriation ,
Popular ,
RJR Nabisco v European Community ,
Trade Secrets
Some respondents at the ITC have taken advantage of using infringement contentions as a procedural tool to deny patent owners from getting their day in court. In some investigations, respondents have gone so far as to delay...more
As noted in our previous post, the U.S. Patent and Trademark Office (USPTO) published a request for comments for a list of questions regarding Artificial Intelligence (AI) Patent Issues in the Federal Register on August 21,...more
When licensing discussions with an intransigent implementer break down, SEP owners face a difficult question: what remedies are available (injunctive relief or damages) in each U.S. court (International Trade Commission and...more
12/24/2019
/ Administrative Law Judge (ALJ) ,
Department of Justice (DOJ) ,
Federal Trade Commission (FTC) ,
FRAND ,
Injunctive Relief ,
International Trade Commission (ITC) ,
Joint Policy Statements ,
NIST ,
Patent Infringement ,
Patents ,
Section 337 ,
Standard Essential Patents ,
USPTO ,
USTR
In a recent decision clarifying the legal standards of the International Trade Commission’s domestic industry requirement, the Commission has upheld, with modified reasoning, Chief Administrative Law Judge Bullock’s initial...more
11/11/2019
/ Administrative Law Judge (ALJ) ,
Domestic Industry Requirement ,
Initial Determination (ID) ,
Intellectual Property Protection ,
International Trade Commission (ITC) ,
Multinationals ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Section 337 ,
Threshold Requirements
The adoption of multiple, standardized technologies looms on the horizon. This presents the challenge of balancing innovator’s intellectual property rights with implementer’s desire for fair access to technology. As more...more
11/5/2019
/ China ,
FRAND ,
Germany ,
India ,
Injunctive Relief ,
Intellectual Property Protection ,
International Trade Commission (ITC) ,
IP License ,
Netherlands ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Standard Essential Patents ,
UK Supreme Court
Litigation involving standard-essential patents (“SEPs”) is on the rise. The now longstanding and disturbing impact of efficient infringement by recalcitrant implementers is the predominant cause of the increase. As many...more