A Blog About Intellectual Property Litigation and the District of Delaware

Entries for tag: FRAND

Mason Kimbarovsky, Unsplash

In Koninklijke Philips N.V. v. Thales DIS AIS USA LLC, C.A. No. 20-1713 (D. Del.), the plaintiff brought patent infringement claims for several patents, plus a DJ claim seeking a declaratory judgment of no FRAND license defense, citing a previous Delaware case finding no such defense absent a sworn affidavit that the defendant would sign a global FRAND license.

In the alternative, if the defendant submitted a signed affidavit, Plaintiff's complaint sought a "declaratory judgment determining the appropriate worldwide FRAND licensing terms for Philips’ world-wide portfolio of patents under ETSI policies."

With its answer, the defendant included just such a signed affidavit, along with its own DJ counterclaim and breach of contract counterclaim …

Do not make eye contact
Do not make eye contact Alex Guillaume, Unsplash

Judge Burke issued an interesting R&R on Tuesday that highlights the dangers of pleading that a patent is standards essential.

In Koninklijke KPN NV v. Coolpad Technologies Inc., C.A. No 21-43-LPS-CJB, D.I. 55 (D. Del. Jan 11, 2022), the plaintiff ("KPN") alleged that the defendant infringed a patent that it had previously asserted against different defendants in the District. In one of those earlier cases, the defendant had counterclaimed for breach of FRAND obligations and KPN had responded by admitting that "One or more claims of the [asserted patent] and [patents not asserted against Coolpad] have been recognized as essential to one or more 3GPP standards." 3G Licensing, SA v. LG Electronics, Inc. C.A. No. 17-85-LPS, D.I. 19 (D. Del. June 2, 2017), ¶ 19.

So, Coolpad brought its own FRAND counterclaim, alleging in support only the admission from the 3G case and several other unidentified instances where KPN "claimed that the Asserted Patent is an essential patent." KPN, moved to dismiss this counterclaim, alleging that these allegations were insufficient to state a claim.

Judge Burke denied the motion, stating:

Although at the case dispositive stage Defendant will need to prove essentiality by way of objective findings (i.e., whether practicing the relevant standards in fact leads to infringement of the patent) . . . at the pleading stage it need only point to facts that render it plausible that the patent is essential. And the Court does not see why Plaintiff's alleged repeated statements that it "belie[ved]" that the patent "may be" essential, or that the patent "is an essential patent" or that the patent "ha[s] been recognized as essential" cannot fit that bill

Koninklijke KPN NV v. Coolpad Technologies Inc., C.A. No 21-43-LPS-CJB, D.I. 55 (D. Del. Jan 11, 2022).

Of course, only time will tell if ...

No Trespassing
Bruno Figueiredo, Unsplash

Here's something you don't see every day. Judge Noreika today remanded a case with a DJ claim seeking a “determination that Nokia’s patent rights are exhausted” back to the Delaware Court of Chancery where it was initially filed.

Continental Automotive Systems requested that determination in its breach of contract complaint, which it filed in the Delaware Court of Chancery. Continental claims that Nokia's patents are subject to FRAND obligations, and that it breached a contract by failing to offer licenses to patents on FRAND terms.

Judge Noreika held that because patent exhaustion is a defense, not an affirmative claim, it does not raise a question of federal law, and there is no subject matter jurisdiction ...

A different kind of Sherman
A different kind of Sherman Sherman Tank at Clervaux Castle, Luxembourg, R Boed, CC BY 2.0

This week, Chief Judge Stark ruled on a motion to dismiss a FRAND-related antitrust claim brought by Lenovo against InterDigital relating to 3G/4G phone standards.

According to the Court, InterDigital contracted with the European Telecommunications Standards Institute (ETSI) to license its patents at FRAND rates, and its patents were incorporated into the 3G/4G standards. The ETSI requires patentees to license their patents at FRAND rates to avoid anti-trust concerns.

Lenovo's antitrust claims allege that InterDigital, by demanding higher-than-FRAND rates, has obtained an unlawful monopoly power over the 3G/4G standards. Lenovo also alleges that InterDigital defrauded ETSI during the standards development process:

Lenovo allege[s] …