Recently, in Godo Kaisha IP Bridge 1 v. TCL Commc’n Tech. Holdings Ltd., the Delaware District Court awarded the prevailing plaintiff in a patent infringement suit an ongoing royalty that covers not only the products...more
On March 26, 2019, the International Trade Commission issued its Final Determination in Certain Mobile Electronic Devices and Radio Frequency and Process Components Thereof, 337-TA-1065. The 1065 Investigation is one of...more
A key issue in the licensing of standard essential patents (SEPs) is whether national courts have jurisdiction to determine what constitutes a global fair, reasonable, and non-discriminatory (FRAND) license rate. The Court of...more
PanOptis Patent Management, LLC (“PanOptis”) was recently awarded enhanced damages and ongoing royalties as a result of Huawei Technology Co. Ltd. (“Huawei”) infringing five of its patents, four of which were alleged to be...more
3/26/2019
/ Corporate Counsel ,
FRAND ,
Intellectual Property Protection ,
International Litigation ,
IP License ,
Patent Infringement ,
Patent Litigation ,
Patent Royalties ,
Patents ,
Royalties ,
Standard Essential Patents
As we mentioned in December, the International Trade Commission issued a notice to review the Final Initial Determination and Recommended Determination issued by Administrative Law Judge Pender in Certain Mobile Electronic...more
3/14/2019
/ Administrative Law Judge (ALJ) ,
Apple ,
Competition ,
Customs and Border Protection ,
Exclusion Orders ,
Initial Determination (ID) ,
Intellectual Property Protection ,
International Trade Commission (ITC) ,
Manufacturers ,
Monopolization ,
Patent Infringement ,
Public Interest ,
Qualcomm ,
Semiconductors
There is a common misconception the domestic industry economic prong requirement is insurmountable and an unknowable factor in a patent infringement action at the International Trade Commission (“ITC” or “Commission”),...more
As anticipated, on December 12, 2018, the International Trade Commission (“ITC”) issued a notice to review the Final Initial Determination and Recommended Determination (“FID”) issued by Administrative Law Judge (“ALJ”)...more
12/17/2018
/ Administrative Law Judge (ALJ) ,
Apple ,
Competition ,
Exclusion Orders ,
Federal Trade Commission (FTC) ,
Imports ,
Infringement ,
Initial Determination (ID) ,
Intellectual Property Protection ,
International Trade Commission (ITC) ,
Manufacturers ,
Monopolization ,
Patent Infringement ,
Qualcomm ,
Semiconductors
The Fuzhou Intermediate People’s Court in China issued a preliminary injunction against Apple in connection with two patents asserted by Qualcomm. This decision, part of a global patent dispute between the parties, comes on...more
12/17/2018
/ Apple ,
China ,
FRAND ,
Imports ,
Intellectual Property Protection ,
IP License ,
Manufacturers ,
Patent Infringement ,
Patents ,
Preliminary Injunctions ,
Qualcomm ,
Semiconductors ,
Software Patents ,
Standard Essential Patents ,
Tech Industry
A recent decision by the International Trade Commission (“ITC” or the “Commission”) held that pre-commercial or non-commercial items qualify as “articles” for purposes of section 337 investigations. The decision opens up the...more
Patent owners have a new arrow in their quiver. The Supreme Court has held that patent owners can recover foreign lost profits for the use or sale of infringing products abroad if the products were assembled from components...more
6/25/2018
/ 35 U.S.C. § 271(f)(2) ,
35 U.S.C. § 284 ,
Appeals ,
Damages ,
Domestic Injury ,
Extraterritoriality Rules ,
Foreign Profits ,
Foreign Sales ,
Lost Profits ,
Patent Act ,
Patent Infringement ,
Patents ,
Remand ,
SCOTUS ,
Vacated ,
WesternGeco LLC v Ion Geophysical Corporation
In a May 10, 2018 ruling, discussed earlier on this blog, Magistrate Judge Payne affirmed the jury’s willfulness finding largely on the ground that TCL did not proffer any evidence that it held a subjective, good faith belief...more
5/18/2018
/ Ericsson ,
Evidence ,
FRAND ,
Good Faith ,
Inter Partes Review (IPR) Proceeding ,
Jury Awards ,
License Agreements ,
Patent Infringement ,
Patent Litigation ,
Patent-in-Suit ,
Patents ,
Standard Essential Patents ,
Willful Infringement
On May 10, 2018, Magistrate Judge Payne reconsidered his previous March 2018 order which had vacated a jury award, and granted plaintiff Ericsson’s motion for reconsideration. The May ruling makes clear that the accused...more
5/16/2018
/ Contract Interpretation ,
Contract Negotiations ,
Ericsson ,
FRAND ,
Georgia Pacific ,
IP License ,
Jury Awards ,
License Agreements ,
Patent Infringement ,
Patent Litigation ,
Patent Royalties ,
Patents ,
Royalties ,
Standard Essential Patents ,
Willful Infringement
On March 20, 2018, the public version of Eastern District of Texas Magistrate Judge Roy Payne’s March 7, 2018 order tossing a $75 million jury verdict obtained by Ericsson against TCL Communication was released. Ericsson...more
4/2/2018
/ Ericsson ,
Expert Testimony ,
IP License ,
Patent Infringement ,
Patent Litigation ,
Patent Royalties ,
Patents ,
Royalties ,
Smartphones ,
Standard Essential Patents ,
Willful Infringement
The public version of ALJ Shaw’s Initial Determination (ID) in U.S. International Trade Commission (ITC) investigation Certain Magnetic Data Storage Tapes and Cartridges Containing the Same, Inv. No. 337-TA-1012 (1012...more
10/7/2017
/ Administrative Law Judge (ALJ) ,
Breach of Contract ,
Burden of Proof ,
Forum Selection ,
FRAND ,
Injunctive Relief ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
IP License ,
Patent Infringement ,
Patents ,
Sony ,
Standard Essential Patents ,
Standard Setting Organizations ,
Waivers
In a first of its kind decision with important ramifications for patentees, the U.S. International Trade Commission (“ITC”) denied a petition to suspend or temporarily rescind remedial orders issued in Investigation No....more
7/28/2017
/ Appeals ,
Cisco ,
Exclusion Orders ,
Final Written Decisions ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Patent Infringement ,
Patent Invalidity ,
Patent Trial and Appeal Board ,
Patents ,
USPTO
The Supreme Court has made it easier for patent owners to prove willful infringement and entitlement to enhanced damages. In a unanimous opinion issued yesterday in a pair of cases decided together, Halo Electronics, Inc. v....more
6/15/2016
/ 35 U.S.C. § 284 ,
Abuse of Discretion ,
Enhanced Damages ,
Halo v Pulse ,
Judicial Discretion ,
Patent Infringement ,
Patents ,
Preponderance of the Evidence ,
SCOTUS ,
Seagate ,
Standard of Proof ,
Standard of Review ,
Stryker v Zimmer ,
Willful Infringement
On December 14, 2015, in the latest episode of the smartphone wars, Samsung filed a petition for certiorari with the Supreme Court. Samsung is appealing a Federal Circuit decision that upheld a $399 million judgment against...more
Late last week, in an opinion authored by Judge Prost, a panel of the Federal Circuit vacated a $16 million damages award won by Commonwealth Scientific and Industrial Research Organization (CSIRO) in its patent infringement...more
On Thursday, September 17, 2015, in the fourth Federal Circuit opinion arising out of the patent skirmishes between global high technology titans Apple and Samsung Electronics, a sharply divided Federal Circuit panel vacated...more
10/5/2015
/ Abuse of Discretion ,
Apple ,
Apple v Samsung ,
Article III ,
eBay Test ,
Injunctive Relief ,
iPhone ,
Irreparable Harm ,
Nexus ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Permanent Injunctions ,
Public Interest ,
Samsung ,
Standing ,
Vacated
Late last month, the Ninth Circuit Court of Appeals issued its much-anticipated decision in Microsoft v. Motorola, a breach of contract action brought by Microsoft alleging that Motorola violated its commitment to license its...more
8/17/2015
/ Anti-Suit Injunctions ,
Breach of Contract ,
Covenant of Good Faith and Fair Dealing ,
Damages ,
International Trade Commission (ITC) ,
Licenses ,
Microsoft ,
Motorola ,
Patent Infringement ,
Patents ,
RAND ,
Standard Essential Patents
In a unanimous full court decision issued last week, the Federal Circuit availed itself of “the opportunity to revisit the § 271(a) question” left unanswered by the Supreme Court last year, and outlined “the governing legal...more
Two weeks ago, Federal Trade Commission (FTC) Chairwoman Edith Ramirez, writing on her own behalf, submitted comments in Investigation No. 337-TA-613, Certain 3G Mobile Handsets and Components Thereof (the 613 Investigation)...more
7/29/2015
/ Abuse of Dominance ,
Department of Justice (DOJ) ,
Edith Ramirez ,
Exclusion Orders ,
Federal Trade Commission (FTC) ,
FRAND ,
Injunctive Relief ,
International Trade Commission (ITC) ,
IP License ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Popular ,
Public Interest ,
Standard Essential Patents
Last week, in response to a request for a preliminary ruling by a German court hearing a patent infringement action brought by Huawei against ZTE, the Court of Justice of the European Union (ECJ) took up the question of...more
7/24/2015
/ Abuse of Dominance ,
EU ,
European Court of Justice (ECJ) ,
FRAND ,
Injunctive Relief ,
Intellectual Property Protection ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Popular ,
Remedies ,
Standard Essential Patents ,
Treaty on the Functioning of the European Union (TFEU)
Federal Trade Commission (FTC) Chairwoman Edith Ramirez took the unusual step on July 13, 2015, of filing a written submission on her own behalf — and expressly not on behalf of her agency — in Investigation No. 337-TA-613,...more
7/17/2015
/ Burden of Proof ,
Determination on Remand ,
Edith Ramirez ,
Exclusion Orders ,
Federal Trade Commission (FTC) ,
FRAND ,
International Trade Commission (ITC) ,
Patent Infringement ,
Patents ,
Public Interest ,
Section 337 ,
Standard Essential Patents ,
Standard Setting Organizations
Administrative Law Judge Essex recently issued the public version of his Initial Determination on Remand in International Trade Commission investigation No. 337-TA-613, In the Matter of Certain 3G Mobile Handsets and...more
6/13/2015
/ Administrative Law Judge (ALJ) ,
Burden of Proof ,
Determination on Remand ,
FRAND ,
Injunctive Relief ,
International Trade Commission (ITC) ,
IP License ,
Patent Infringement ,
Patent Royalties ,
Patents ,
SSO ,
Standard Essential Patents ,
Wireless Devices