Ninth Circuit Upholds First District Court Determination of FRAND Licensing Rate and Affirms $14.5 Million Damage Award

The Ninth Circuit has affirmed Microsoft’s $14.5 million jury verdict against Motorola, upholding the first federal bench trial decision setting a fair, reasonable, and non-discriminatory (FRAND) licensing rate. Armed with the court’s FRAND guidance, the jury found Motorola violated its commitment to license its H.264 (video encoding) and 802.11 (WiFi) standard-essential patents (SEPs) under FRAND terms. We previously discussed SEPs and FRAND here. Motorola offered to license its H.264 and 802.11 SEP portfolios to Microsoft at 2.25% of the end-product price. Microsoft found that rate unreasonable and promptly sued Motorola, claiming status as a third-party beneficiary to Motorola’s FRAND commitment   Read More »

Posted in Antitrust Litigation, FRAND, IP and Technology Litigation, Patent Litigation | Tagged , , , , , ,

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Split Ninth Circuit Panel Rejuvenates Doctrine of Initial Interest Confusion

Imagine you are driving to Flagstaff for the weekend and, as you approach Camp Verde, you really could go for a McDonald’s hamburger.  You see a McDonald’s sign from the highway, take the exit, and learn that the sign actually directs you to a Burger King.  “Oh well,” you think, “I guess I’ll take Burger King instead.”  You knew you weren’t getting McDonald’s when you made the purchase.  But were you the victim of trademark infringement nonetheless, since you thought you were getting McDonald’s when you took the exit, and wouldn’t have bought Burger King absent that initial confusion? Or   Read More »

Posted in Internet and Domain Name Litigation, Trademark Litigation | Tagged ,

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Supreme Court Holds Patent Royalties Expire When Patent Expires

In 1964, the Supreme Court held, in Brulotte v. Thys Co., that a patent owner may not receive royalties on a patent after the patent expires.  Today, in Kimble v. Marvel Entertainment, the Supreme Court declined to overturn Brulotte, relying on stare decisis, which “carries enhanced force when a decision, like Brulotte, interprets a statute.”  In dissent, Justice Alito disagreed that Brulotte interpreted a statute, arguing it is “a judge-made rule and is not grounded in anything that Congress has enacted.” As part of a patent infringement settlement, Marvel purchased Kimble’s patent on a “toy web-shooting glove,” allowing Marvel to   Read More »

Posted in Patent Litigation | Tagged ,

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Federal Circuit Remands Because PTAB’s Claim Construction Was “Unreasonably Broad”

The Patent Trial and Appeal Board (PTAB) administers post-grant patent proceedings under the America Invents Act. The PTAB has invalidated many patent claims, and has been referred to as a patent “death squad.” But a recent Federal Circuit decision reversed the PTAB’s holding that claims owned by Proxyconn, Inc., were invalid, delivering encouraging news to patent owners. The Federal Circuit held that the PTAB’s claim construction was “unreasonably broad,” which lead to the PTAB invalidating certain claims of Proxyconn’s patent in an inter partes review (IPR). The Federal Circuit reaffirmed the PTAB’s “broadest reasonable interpretation” standard for construing claims in IPRs,   Read More »

Posted in Patent Litigation, Post Grant Proceedings | Tagged , ,

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Supreme Court Invokes Common Law Principles in Largely Pro-Patent Decision: Good-Faith Belief of Invalidity Is Not a Defense to Induced Patent Infringement

The Supreme Court decided today in Commil USA, LLC v. Cisco Systems, Inc. that an accused infringer’s good-faith belief that a patent is invalid, standing alone, is not a defense to induced infringement.  As discussed in greater detail in our earlier post, the Federal Circuit reversed the district court’s ruling that prohibited Cisco from presenting evidence of its good-faith belief that Commil’s patent was invalid, as a defense to induced infringement. Among other things, the Court reasoned that a different result would contravene the presumption that a patent is valid. To overcome that presumption, a defendant must provide clear and convincing   Read More »

Posted in Patent Litigation | Tagged , ,

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