Posts Tagged: "mobile devices"

Federal Circuit Says Erroneous Claim Construction Led PTAB to Uphold Claims as Valid

On Thursday, December 20th, the Court of Appeals for the Federal Circuit issued a nonprecedential decision in Vivint, Inc. v. Alarm.com, Inc. which affirmed aspects of three inter partes review (IPR) proceedings conducted by the Patent Trial and Appeal Board (PTAB) invalidating certain claims from three patents owned by Vivint. However, the Federal Circuit panel of Chief Judge Sharon Prost and Circuit Judges Kathleen O’Malley and Todd Hughes found an erroneous claim construction led the Board to uphold some of the challenged claims.

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.

CAFC Vacates PTAB Decision to Uphold Conversant Wireless Patent Challenged by Google, LG

On Tuesday, November 20th, the Court of Appeals for the Federal Circuit issued a nonprecedential decision in Google LLC v. Conversant Wireless Licensing, which vacated a decision by the Patent Trial and Appeal Board (PTAB) to uphold the validity of patent claims owned by Conversant after conducting an inter partes review (IPR) proceeding petitioned by Google and LG Electronics… It is hard to reconcile decisions where the Federal Circuit bends over backwards to give more process and procedural rights to petitioners when for so long patent owners have been railroaded at the PTAB and then had those summary execution proceedings rubber stamped by the Federal Circuit. If increased scrutiny on the PTAB is a two-way street I welcome it.

ITC Final Initial Determination: Apple Devices Infringe Qualcomm Patent but No Exclusion Order

Despite finding patent infringement under Section 337 and upholding the validity of Qualcomm’s asserted patents, ALJ Pender found that the statutory public interest factors weighed against issuing a limited exclusion order in this case. This turns the victory for Qualcomm into nothing more than a pyrrhic victory at best given that the only remedy the ITC can hand out are exclusion orders and cease and desist orders. The ITC does not have any jurisdiction to hand out monetary damages. So what exactly would Qualcomm receive for Apple’s infringement? What exactly would Apple be required to pay or change as the result of engaging in infringing behavior? It would seem that there will be no remedy for Qualcomm under ALJ Pender’s decision, and no consequences for Apple infringing the patent claims that have been confirmed valid. 

Implied Waiver May Result from Failure to Disclose Pending Application to Standard Setting Organization

The United States Court of Appeals for the Federal Circuit recently issued a ruling on discussing the equitable doctrine of implied waiver; a decision that will be particularly important for those participating in the standard setting process and engaging with standard setting organizations, or SSOs as they are sometimes called. According to the Federal Circuit, failure to disclose patents and applications relevant to a standard may render a patent unenforceable based on an implied waiver.  See Core Wireless Licensing S.A.R.L. v. Apple Inc., No. 17-2102, 2018 (Fed Cir. Aug. 16, 2018) (Before Reyna, Bryson, and Hughes, Circuit Judges) (Opinion for the court, Bryson, Circuit Judge).