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  • In case you missed it on Friday, an en banc Federal Circuit ruled that it has jurisdiction to hear an appeal of liability issues prior to a determination on damages or willfulness.  Many have speculated this will lead to increased bifurcation of liability and damages issues during patent cases.  (Dow Lohnes Patent Alert - Bosch v. Pylon)

Dow Lohnes Patent Alert: Federal Circuit Permits Appeal of Liability Prior to Damages or Willfulness Determination (Robert Bosch v. Pylon)

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(Damages/Interlocutory Appeal)  Today, June 14, 2013, in Robert Bosch LLC v. Pylon Manufacturing Corp., No. 2011-1363, 1364, an en banc Federal Circuit ruled that parties can appeal a decision on liability in patent infringement cases before there has been a trial on damages or willfulness.

Under 28 U.S.C. § 1292(c), the Federal Circuit has exclusive jurisdiction “of an appeal from a judgment in a civil action for patent infringement which … is final except for an accounting.”  The issues presented were whether, in a case where infringement liability is bifurcated from damages and willfulness, the Federal Circuit has jurisdiction to hear an appeal from the liability phase while damages and willfulness have yet to be tried — essentially, “what is an accounting?”

The court analyzed the history of an accounting, finding that the high cost of an accounting was relevant to the decision (before the merger of law and equity) to allow for appeal before an accounting.  The court found that reasoning relevant today.  “Modern patent damages trials, with their attendant discovery, are notoriously complex and expensive.”  The court thus found that an accounting included a determination of damages.

The majority also found that a determination of willfulness fell within the definition of an accounting, citing historical cases and the appellant’s failure to cite cases that show , in enacting § 1292(c), Congress “intended to disturb the practice of determining willfulness as part of an accounting.”

The Federal Circuit further stated “we wish to make clear that district courts, in their discretion, may bifurcate willfulness and damages issues from liability issues in any given case [and] have the authority to try these issues together or separately.”

Judges Moore and Reyna dissented from the court’s finding that willfulness was part of an accounting.  Judges O’Malley and Wallach dissented from the court’s ruling as to both damages and willfulness.

A copy of the case is on our website at Robert Bosch v. Pylon.

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Dow Lohnes IP attorneys occasionally prepare patent alerts that include an analysis of recent Federal Circuit cases of note.  This alert was also cross-posted on the Dow Lohnes web site.

Texas jury finds router makers infringe Ericsson WiFi patents (Ericsson v. D-Link et al.)

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Over the past couple weeks, a jury trial was held in Tyler, Texas on Ericsson’s November 2010 complaint that wireless equipment makers D-Link Corp., Belkin International, Netgear, Acer, Gateway, Dell, and Toshiba infringe several Ericsson patents related to the IEEE 802.11 wireless networking standard and 802.11-compliant equipment (case no. 6:10-cv-00473).  Yesterday, the jury returned its verdict, finding that the defendants infringe the claims of several patents and awarding damages to Ericsson.

[Ericsson v D-Link Jury Verdict]

The jury awarded approximately $8 million in total damages to compensate Ericsson for the defendants’ past infringement, apportioned as follows:

  • D-Link: $435,000
  • Netgear: $3,555,000
  • Acer/Gateway: $1,170,000
  • Dell: $1,920,000
  • Toshiba: $2,445,000
  • Belkin: $600,000

Note that the jury verdict really only addressed infringement, validity, and past damages issues.  We will keep an eye on the post-trial developments in this case to see if any particularly interesting standard-essential patent issues (injunctive relief, RAND royalty limitations, etc.) arise.

This post was prepared by Matt Rizzolo.

WiFi equipment suppliers Cisco and HP step in and file declaratory judgment actions against Innovative Wireless Solutions LLC

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Earlier this week, we provided an update on the multitude of WiFi-related infringement lawsuits brought by non-practicing entity Innovative Wireless Solutions LLC against various hotels and restaurants in Texas, noting that IWS had dismissed these suits (albeit without prejudice).  We had discussed that this was a decidedly “un-Innovatio-like” turn in the cases — but yesterday brought a development that makes this series of disputes much more like the ones in the Northern District of Illinois involving Innovatio:  Cisco Systems Inc., a supplier of WiFi equipment for many of the hotels accused of infringement, got involved.  And Just like it did with Innovatio, Cisco here filed a declaratory judgment action against IWS, seeking declarations of invalidity and non-infringement as to IWS’s three asserted patents.

[UPDATE] In addition to Cisco, Hewlett-Packard has also filed a declaratory judgment action against IWS.  The link is below, and more details on that complaint are at the bottom of this post — including information about a potential license defense. [/UPDATE]

[SECOND UPDATE] On Friday, June 14, Ruckus Wireless, another WiFi equipment supplier, also filed a declaratory judgment complaint against IWS.  This complaint is very similar to the one filed by Cisco. [/SECOND UPDATE]

[Cisco Systems Inc v Innovative Wireless Solutions LLC Complaint]

[Hewlett-Packard-Company v. Innovative-Wireless-Solutions-LLC Complaint]

[Ruckus Wireless v. Innovative Wireless Solutions Complaint]

Cisco’s complaint, filed in the Western District of Texas (where Rackspace has chosen to take on noted NPE Parallel Iron in another DJ action), includes some particularly harsh words for IWS — Continue reading →

Newly-public letter to ITC shows lawmakers’ concern over standard-essential patent issues

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By now, it’s really no surprise to those who pay attention to SEP issues that certain lawmakers have their eyes on the standard-essential patent world, as well.  Although non-practicing entity issues generally grab headlines these days, Congress does make some time for SEPs, too.  One example of this just became public — a May 21, 2013 letter to ITC Chairman Irving Williamson from several U.S. Senators concerning the then-anticipated decision in the Samsung-Apple ITC case (Inv. No. 337-TA-794) — the case where the ITC last week issued its Notice of Final Determination finding a Section 337 violation by Apple due to its infringement of a Samsung 3G-essential patent (and issuing an exclusion order barring certain Apple products).  (The letter was sent to Chairman Williamson for consideration well in advance of the ITC’s decision, but the Commission has apparently now honored the Senators’ request that the letter be made part of the public record in the case.)

[337-TA-794 5-21-2013 Senate Letter]

In the bipartisan letter — signed by Sens. Mike Lee (R-UT), Amy Klobuchar (D-MN), Jim Risch (R-ID), and Mark Begich (D-AK) — the Senators state that while they take no position on the merits of the Samsung-Apple case, they want the ITC to “carefully assess the substantial public interest considerations that exist with regard to this and other cases at the ITC in which SEPs are at issue.”  In this regard, the letter is not all that remarkable — the ITC is required to consider the public interest in all cases, and it certainly received plenty of public interest submissions in the Samsung-Apple case.

But two statements caught our eye and seemed somewhat curious.  First, the Senators argue that parties with FRAND-encumbered patents “should not expect the grant of an exclusion order when they are violation of an obligation to license the patent on FRAND terms.”  They further warn the ITC of setting precedent that would enable a FRAND-pledged patent owner to “seek to secure an exclusion order despite a breach of that [FRAND] commitment.”

This appears to be a bit of a strawman — we’re not aware of any party that has claimed that it is appropriate to breach a FRAND obligation to an SSO, and then subsequently seek an injunction or an exclusion order as a remedy for infringement.  Indeed, many SEP disputes have centered around when (if ever) the seeking of injunctive relief may itself be a violation of a FRAND obligation — a question that seems to be far from settled.  Samsung (and many others) takes the position that injunctive relief should generally be available against unwilling licensees, while Apple is far from alone in believing that injunctive relief is waived in virtually (if not all) FRAND-related situations.

Once the public version of the ITC’s Final Determination becomes available, we’ll get some valuable insight into just how deep the Commission dove into the FRAND issues and whether Samsung has complied with its FRAND obligations — and the Senators can see whether their concerns are allayed.  In its Notice of Final Determination, the ITC simply noted that “Apple failed to prove an affirmative defense based on Samsung’s FRAND declarations,” and also that “Samsung’s FRAND declarations do not preclude” the exclusionary remedies issued by the Commission.

This post was prepared by Matt Rizzolo.

Innovative Wireless Solutions dismisses dozens of WiFi-related infringement lawsuits brought against hotels & restaurants

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In late April we shared with you the litigation activities of Innovative Wireless Solutions LLC, a non-practicing entity that filed 40+ lawsuits in the Eastern District of Texas against a variety of hotels, hotel chains, and restaurants/coffee shops/delis.  IWS asserted that by providing wireless interest service to their customers, these defendants infringed three patents originally owned by Nortel Networks that IWS later acquired.  IWS was apparently following a Innovatio IP Ventures-style model, asserting patents formerly owned by a practicing entity (here, Nortel) against end users of the allegedly-infringing technology (here, as with Innovatio, mostly hotels).  But late last week, IWS’s litigations took a decidely un-Innovatio-like turn — while Innovatio’s litigations mostly continue on in N.D. Ill., IWS filed motions to voluntarily dismiss its allegations of infringement in all of its E.D. Tex. cases.

This does not necessarily mean that IWS has ceased its patent enforcement campaign, however.  All of the cases were in the early stages — no answers had been filed yet, and defendants’ counsel hadn’t even entered appearances in many of the cases.  Notably, IWS’s motions to dismiss were for dismissal without prejudice (and the court has begun granting these on that basis), meaning that IWS is free to file identical claims against the same defendants in the future — so it doesn’t look like the defendants paid up and settled the cases.  The USPTO assignment records for IWS still only show the three patents that were previously asserted against all these defendants, but there’s no requirement to record assignment of all patents owned by a party (at least for now — this is among the patent reform issues currently being discussed).  There’s always a chance that IWS has already acquired or is in the process of acquiring more patents to assert in the future.  We’ll keep an eye out for future IWS standard-essential patent litigation activity.

This post was prepared by Matt Rizzolo.

Microsoft amicus brief supports Apple, cautions Federal Circuit about breadth of ruling in Apple-Motorola appeal

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CAFCLast week, the Federal Circuit granted a motion by Microsoft for permission to file an amicus brief in the Apple-Motorola appeal (No. 12-1548, Judge Posner edition).  Microsoft then filed its amicus brief, becoming the latest in a long time of companies (see, e.g., here, here, here, and here) to weigh in on the case.  Today, the public version of Microsoft’s brief became available.  In it, Microsoft supports Apple and Judge Posner, but cautions the Federal Circuit against making an overly broad ruling and deciding issues related to standard-essential patents and RAND licensing obligations that are not present before the court.

[2013.06.04 Microsoft Amicus Brief (12-1548)]

Microsoft pulls no punches — it argues at the outset that Motorola’s positions “are wrong as a legal matter and terrible as a policy matter.”  That should come as no surprise, given Microsoft’s current litigation disputes with Motorola (as well as ongoing competition with its parent company, Google).  But Microsoft claims that its interest in this case goes far beyond its adversarial relationship with Motorola, arguing that as an active participant in many SSOs and implementer of many standards, Microsoft wants to ensure that standards are broadly implemented for the benefit of the public.

Continue reading →

MPHJ Technology Investments seeks removal of Vermont consumer protection action to federal court

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VermontWe’re going to take a brief time-out from SEP issues here for a short update on a case that’s being watched with interest by many in the patent world — the Vermont Attorney General’s consumer protection action brought last month against MPHJ Technology Investments, the so-called “scanner patent troll.” (For details on the complaint filed by the Vermont AG, see our previous post.)

It’s a somewhat mundane, and not surprising (but still noteworthy) development — This past Friday, MPHJ filed a notice of removal under 28 U.S.C. § 1441, seeking to transfer the case to the U.S. District Court for the District of Vermont, as opposed to the State of Vermont Superior Court (where it was filed by the attorney general).  Apparently, MPHJ likes its chances much better in federal court than in state court.

Continue reading →

Federal Circuit reverses ITC decision to terminate LG Electronics from InterDigital 3G patent case (337-TA-800)

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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.

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A look at the ITC’s exclusion and cease & desist orders in the Samsung-Apple case (337-TA-794)

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ITC LogoOne thing that has frustrated many followers of the Samsung-Apple ITC case is the currently unavailability of a public version of the Commission’s Final Determination.  Generally, the only insight into the ITC’s reasoning came from the limited information in the Commission’s Notice of Final Determination.  But for those of you who are interested, we thought it’d be worth taking a look at the publicly-available documents that spell out the specific exclusionary relief awarded to Samsung in this case:

  1. 337-TA-794 Limited Exclusion Order
  2. 337-TA-794 Cease and Desist Order

After the jump, we’ll dive into these in a little more detail.

Continue reading →