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Robert Moore is an Associate based in the firm’s Boston office and is experienced in patent litigation and licensing. He practices primarily before the International Trade Commission and various federal District Courts, both asserting patents and defending against allegations of infringement. One major aspect of his practice involves joining parties wishing to sell or monetize patents with those interested in investing in monetization programs.

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 Investigation), provides important guidance on enforcement of standard-essential patents (SEPs) in the ITC.  Respondent and accused infringer Sony argued that several of the patents asserted by patentee Fujifilm wereessential to the LTO-7 standard (relating to “linear tape open” magnetic media) and therefore that Fujifilm had waived its right to injunctive relief and was obligated to license its patents on FRAND terms.  ALJ Shaw ultimately found that Sony had not met its burden of demonstrating essentiality, but he nevertheless provided helpful instructions on the quantum of proof necessary to make out such a claim, as well as other factors relevant to ITC enforcement of SEPs, all of which affirmed that the ITC is a viable forum for enforcement of SEPs.  In sum he ruled that:

  • The party arguing that a patent is essential bears the burden of proof on that point;
  • Unless a patent is, in fact, essential to a given standard, there can be no breach of the standard-setting organization (SSO) agreement(s) giving rise to the FRAND obligation at issue;
  • Breach of an SSO agreement and of forum selection clauses are not valid defenses in ITC investigations; and
  • Respondents bear the burden of proving that a complainant/patentee relinquished its rights to equitable relief by joining the SSO in question.

Continue Reading ALJ Shaw: ITC is a Viable Forum for Enforcement of SEPs

The decision in U.S. International Trade Commission (ITC) investigation Certain Magnetic Data Storage Tapes and Cartridges Containing the Same, Inv. No. 337-TA-1012 (“1012 Investigation”), is still confidential, but the ITC has issued a notice stating that ALJ Shaw has ruled in favor of patentee Fujifilm against Sony and recommended that an exclusion order be issued.  This is important because it is the first time the ITC has issued an exclusion order on standard-essential patents (SEPs), and may be the first time any U.S. tribunal has issued exclusionary or injunctive relief on patents which were declared standard essential.   In the opinion, which should become public in a few weeks, ALJ Shaw, who presided over the case, is expected to address a number of key issues relating to the assertion of SEPs in general, and at the ITC specifically. In this case many of Sony’s affirmative defenses relate to the alleged essentiality of the asserted patents and the Administrative Law Judge was asked to answer a number of questions relating to SEPs generally and the ability to enforce them at the ITC.

Continue Reading ITC Issues First Exclusion Order on SEPs and Upcoming Opinion Expected To Provide Important Guidance on FRAND and SEPs

Last week, the Federal Circuit held computer memory system patent claims not abstract and thus patent-eligible under Section 101, reversing a lower court dismissal of the case under Rule 12(b)(6).  Visual Memory LLC v. NVIDIA Corp., No. 2016-2254, 2017 U.S. App. LEXIS 15187 (Fed. Cir. Aug. 15, 2017).

U.S. Patent No. 5,953,740 (“the ‘740 patent”) describes a memory system that can be tailored for use with multiple different processors without reducing performance.  Id. at 3.  The ‘740 patent explains that when “the [memory] system is turned on, information about the type of processor is used to self-configure the programmable operational characteristics.”  Visual Memory, No. 2016-2254, slip op. at 4.  “For example, depending on the type of processor, internal cache 16 can store both code and noncode data, or it can store only code data.”  Id. at 4.  Claim 1 recites the following:

Continue Reading In a Reversal, Federal Circuit Finds Data Processing Claims Patent-Eligible Under Section 101 in Visual Memory v. NVIDIA

 

Leaving EDTX.pngOn Monday, March 27, 2017, the U.S. Supreme Court heard oral argument in TC Heartland v. Kraft Foods Group Brands LLC, a case that could have a profound impact on where patent infringement cases may be litigated.

Although this case has focused a lot of attention on the Eastern District of Texas – a hotbed of patent litigation – it wasn’t even filed in that district. TC Heartland moved to transfer a patent infringement action that Kraft Foods filed in the District of Delaware (a distant second to the Eastern District of Texas in terms of the volume of patent litigation) to the Southern District of Indiana, where TC Heartland is headquartered. After that motion was denied, TC Heartland appealed to the Federal Circuit, arguing that the patent venue statute (28 U.S.C. §1400(b)), not the general venue statute (§1391(c)), sets forth the requirements for venue in patent cases, a position that would limit the venues available to plaintiffs in most infringement actions. In denying TC Heartland’s petition, the Federal Circuit reaffirmed its long-standing view that patent suits may be filed in any judicial district in which the defendant sells an allegedly infringing product. But the U.S. Supreme Court granted certiorari on the appeal, perhaps signaling the Court’s willingness to overturn almost 30 years of practice.

Continue Reading Will 30 Years Of Practice Be Overturned? Supreme Court Hears Oral Argument In TC Heartland v. Kraft Foods.

Business_CheckList2Nondisclosure or confidentiality agreements (NDAs) are among the most common documents attorneys draft and review for clients.  They are so common, in fact, that where a client needs to execute a large number of facially distinct but substantively similar NDAs, it may make sense for the client to draft and review these documents itself.  To assist the client in doing so, we typically provide it with an informal and non-exhaustive list of considerations, of the kind recreated below, to bear in mind when thinking about each specific NDA.

Continue Reading Approaching an NDA From the Client’s Perspective – A Checklist of General Considerations

On December 28, 2016, the Korean Fair Trade Commission (KFTC) issued a steep fine (“KFTC Ruling”) against Qualcomm for antitrust violations in patent licensing and modem chip sales – a record penalty that the U.S. company will challenge in court. Finding that Qualcomm leverages its standard-essential patent (SEP) portfolio to further its chipset business in contravention of Qualcomm’s fair, reasonable and nondiscriminatory (FRAND) obligations and Korean antitrust law, the agency levied a penalty of over US$850 million and directed Qualcomm to alter its business model.

The KFTC Ruling is just one of the latest challenges to Qualcomm’s licensing strategy and also sets forth Korea’s understanding of what FRAND obligations entail.  Mintz Levin attorneys provide detail and insight in “Korea, In Sanctioning Qualcomm, Articulates A New Meaning For ‘FRAND’“, as published on IP Law 360.

 

Did Qualcomm utilize anticompetitive licensing tactics to extract excessive royalties from OEMs for its standard-essential patents (SEPs)? Is the company seeking to weaken its competitors by refusing to license its patents on fair, reasonable, and non-discriminatory (FRAND) terms? The Federal Trade Commission thinks so and filed suit against Qualcomm on January 17 in the Northern District of California for allegedly monopolizing the market for CDMA and LTE baseband processor technologies.

Issuance of the complaint was authorized on a 2-1 vote of the Commission, which hinged on the vote of President Obama-appointed FTC Chairwoman Edith Ramirez, so the Inauguration of Donald J. Trump as President on Friday may have direct implications on this case.

The Mintz Levin team discusses the case and points out the irony of the timing since the FTC and Antitrust Division of the Department of Justice (DOJ) issued their revised Antitrust Guidelines for the Licensing of Intellectual Property on January 13, in which they declined to adopt guidelines relating to precisely this sort of conduct.

Read our full discussion.

On November 28, 2016, Baroness Neville Rolfe, the United Kingdom Minister of State for Intellectual Property, announced that the U.K. would ratify the Unified Patent Court Agreement, paving the way for the European Unified Patent Court (UPC).  Commentators were generally surprised that the U.K, in the wake of June 2016’s referendum vote to leave the E.U., would take this step, moving towards greater cooperation with E.U. member states and ceding some control over its patent system. Regardless of whether the U.K.’s ratification was expected, the establishment of the UPC could have a profound impact on global intellectual property, provided that the U.K. follows through on its announcement.

To read more about this announcement, and what the European Unified Patent Court means for the world patent market, please click here.

EDTXIt has become a patent litigation trope, discussed at every Silicon Valley water cooler, that patent litigation is broken because all patent cases are tried in the plaintiff-friendly Eastern District of Texas. While this reputation is arguably undeserved, the Eastern District of Texas does end up with the majority of patent cases.

On Friday, March 11, 2016, U.S. Circuit Judges Kimberly A. Moore, Richard Linn, and Evan J. Wallach heard arguments in In re: TC Heartland, LLC, 16-105. The underlying case involves an allegation of patent infringement by Kraft Foods Group Brands LLC, and TC Heartland appeals the denial of a motion to transfer from the District of Delaware to the Southern District of Indiana, where it is headquartered and incorporated. TC Heartland’s appeal centers on the issue of whether 28 U.S.C. § 1400(b) or § 1391(c) should control venue in patent cases. Section 1400(b), which TC Heartland argues should control, states that venue in patent litigation is appropriate only (a) where the defendant resides or (b) has committed acts of infringement and has a regular and established place of business. Section 1391(c) states that venue is appropriate wherever the defendant is subject to personal jurisdiction.

Continue Reading Could the Eastern District of Texas’s Reign Come to an End?

On February 25, 2016, Judge Richard Andrews granted the parties’ cross-motions to exclude both sides’ damages experts in M2M Solutions LLC v. Motorola Solutions, Inc., C.A. No. 12-33-RGMoneyA,
Dkt. Nos. 295 and 296 (D. Del. Feb. 25, 2016), and in doing so provided a salient reminder to all practitioners of the risks in presenting damages testimony uninformed by technical expertise.  In the case, plaintiff M2M Solutions LLC’s (“M2M”) expert Herman “Whitey” Bluestein – admittedly not a technical expert – improperly supplied an otherwise-absent link between demand for technology gauged in surveys and the technology at issue.  Defendant Telit Communications PLC (“Telit”) similarly proffered damages opinions lacking needed technical support.  Telit’s expert Charles Donohoe opined that worldwide portfolio licenses on FRAND terms that did not include the patent-in-suit represented the upper bound of a reasonable royalty rate for the asserted patent.  Concluding that Telit failed to adduce evidence that these portfolio licenses were relevant, the Court excluded Mr. Donohoe’s opinion.

Continue Reading In Daubert Ruling Excluding Both Parties’ Damages Experts, Judge Andrews Rejects FRAND Portfolio Rate as Ceiling on Reasonable Royalty, and Finds Use of Surveys Not Properly Tied to Relevant Technology