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A recent decision in the Eastern District of Texas should provide standard-essential patent (“SEP”) owners with more clarity and optimism when negotiating SEP licenses.  Coming on the heels of Judge Koh’s decision in the FTC’s dispute with Qualcomm, Judge Gilstrap found Ericsson to have satisfied its fair, reasonable and non-discriminatory (“FRAND”) obligations when negotiating with HTC due in large part to a finding that it had negotiated in good faith. 
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On April 26, 2019, Administrative Law Judge (“ALJ”) Lord clearly stated in Certain Intraoral Scanner and Related Hardware and Software that the International Trade Commission’s (“ITC”) jurisdictional authority extends to accused infringers whose activities have “some nexus” to an element of section 337.  ALJ Lord found that involvement in training and supporting resellers, distributors and end users in the infringing goods in the United States was sufficient to put that respondent under the broad reach of section 337, even if they did not import or directly sell the products. 
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In Amarin Pharma, Inc. v. Int’l Trade Comm’n (18-1247), the Federal Circuit affirmed the International Trade Commission’s (“ITC”) finding that Amarin’s false advertising claim under § 43(a) of the Lanham Act was precluded by the Federal Food, Drug, and Cosmetic Act (“FDCA”) because these claims require the FDA’s guidance on whether possible non-compliance of the provision is a violation of the FDCA.  The court also found that the Commission may decline to institute an investigation where there is no cognizable claim under § 337.
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Recently, in a patent infringement action pending in the Eastern District of Michigan, Webasto Thermo & Comfort N. Am., Inc. v. BesTop, Inc., No. 2:16-cv-13456, Order No. 209 (E.D. Mich. May 20, 2019) (Borman, J.), the court overruled defendant BesTop’s objections to the Special Master’s recommendation to grant plaintiff, Webasto’s, motion to strike BesTop’s second amended noninfringement and invalidity contentions.
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Services play a large role in today’s economy, and it is important to be mindful of how certain pitfalls that apply to product-based intellectual property rights also apply to method or process-based intellectual property (“IP”) rights.  For example, the “on-sale bar” invalidates a patent on a product where a sale or offer to sell the product occurred more than a year prior to filing for a patent.
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Just when observers thought Qualcomm could celebrate its successful litigation with Apple another decision has come down which could have major implications for Qualcomm’s business going forward.
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In her April 16, 2019 Public Interest Findings, Administrative Law Judge (“ALJ”) McNamara decisively stated that antitrust issues disguised as competitive conditions arguments are not a factor in the International Trade Commission (“ITC”) proceeding between Apple and Qualcomm.  See Mobile Electronic Devices II, Inv. No. 337-TA-1093, Analysis and Findings with Respect to the Public Interest, and Recommendation on Remedy and Bond, at 4 (April 16, 2019).
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Viewpoint General
Recently, in Godo Kaisha IP Bridge 1 v. TCL Commc’n Tech. Holdings Ltd., the Delaware District Court awarded the prevailing plaintiff in a patent infringement suit an ongoing royalty that covers not only the products adjudicated to infringe but also non-adjudicated products that were “not colorably different” from the adjudicated products.  The court noted that the patent claims asserted by the plaintiff, IP Bridge, were found to be essential to the LTE standard because LTE phones do not operate on the LTE network without infringing the asserted claims. 
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On April 25, 2019, in Int’l Designs Corp., LLC, et. al. v. Hair Art Int’l, Inc., Judge George H. Wu in the Central District of California denied Hair Art’s motion for attorneys’ fees under 35 U.S.C. § 285.  Judge Wu concluded that, based on an analysis of the totality of the circumstances, “[t]his case was certainly ‘exceptional,’ but it was exceptional in that both parties made litigation choices leading to a significant waste of party and judicial resources.”  (Emphasis added.)
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On April 17, 2019, Judge Gilstrap of the United States District Court for the Eastern District of Texas, in Apicore v. Beloteca, No. 19-cv-00077, held that while the court could exercise personal jurisdiction over a generic drug manufacturer in connection with the patentee’s action seeking a declaratory judgment of noninfringement, venue was not appropriate in the Eastern District of Texas under the applicable patent venue statute, 28 U.S.C. § 1400(b).
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On April 4, 2019, Chief Judge Patti Saris of the United States District Court for the District of Massachusetts held in Intellectual Ventures I, LLC v. Lenovo Group Ltd. that a final determination of invalidity in inter partes review proceedings (“IPR”) collaterally estops the patent owner from asserting in district court another claim of the same patent that does not “materially alter the question of invalidity.”  The court granted the defendant’s motion for summary judgment of invalidity as to that claim.
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The general rule is that a patent claim’s preamble does not limit the claim unless the preamble gives life, meaning, and vitality to the claim.  The Federal Circuit’s recent decision in Arctic Cat Inc. v. GEP Power Products, Inc. (March 26, 2019) considers the situation where a patentee wants a preamble to be a required claim limitation, unlike the more typical situation where a patentee does not want a claim preamble to be limiting, such as in Pacing Technologies v. Garmin International previously discussed HERE.  The court deciding in Arctic Cat that the preambles at issue were not required claim limitations highlights important considerations for patent application drafting and for crafting post-issuance arguments.
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A Discovery Master in Limestone Memory Systems LLC v. Micron Tech., Inc. pending in the Central District of California recently provided additional guidance to practitioners and patent owners on this important question.  The report, issued on February 19, 2019, sustained in part the plaintiff Limestone’s privilege and work product assertions related to pre-acquisition analysis of the asserted patents conducted by Acacia, Limestone’s parent company.  In doing so, the report emphasized that courts have long held that attorney-client privilege may arise when a company obtains legal advice, while seeking to acquire patents, protecting from discovery communications between the acquiring company and inventors.  
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A recent order from the District of Delaware in Evolved Wireless, LLC v. Apple Inc., No. 15-00542 (“Evolved Wireless”) provides interesting guidance regarding the use of future sales in calculating lump-sum damages.
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Yesterday afternoon, the International Trade Commission issued its Final Determination in Certain Mobile Electronic Devices and Radio Frequency and Process Components Thereof, 337-TA-1065. The 1065 Investigation is one of several actions Qualcomm has brought against Apple both here and abroad.
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Viewpoint General
PanOptis Patent Management, LLC (“PanOptis”) was recently awarded enhanced damages and ongoing royalties as a result of Huawei Technology Co. Ltd. (“Huawei”) infringing five of its patents, four of which were alleged to be essential to the 4G LTE technology standard.  Despite the successful legal outcome, the size of PanOptis’ cumulative damages award for its standard-essential patents was less than some observers anticipated.  This result emphasizes the importance of taking a global enforcement approach—leveraging international fora—to recoup meaningful compensation for standard-essential patents.
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In its first decision since its inception, the Precedential Opinion Panel (“POP”) for the U.S. Patent Trial and Appeal Board (“Board”), in Proppant Express Investments, LLC v. Oren Technologies, LLC, IPR2018-00914, held that under 35 U.S.C. § 315(c) the Board has discretion to allow a party, in limited circumstances, to join its own earlier-filed inter partes review (“IPR”) and join new issues, even if the party was otherwise time-barred under 35 U.S.C. § 315(b).  Specifically, the Board may use this discretion only where fairness requires it and to avoid undue prejudice to a party.  The POP nevertheless denied Proppant Express Investments LLC’s (“Petitioner”) motion for joinder as Petitioner’s motion was “a result of Petitioner’s errors,” and therefore did not fall within the limited circumstances it envisioned.
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On February 25, 2019, the Supreme Court denied Power Integrations, Inc.’s (“Power Integrations”) petition for writ of certiorari.  The question presented to the Court was whether a plaintiff who had proven customer demand for an infringing product as a result of the patented feature was entitled to damages based on the entire market value of the product, or if the plaintiff also had to prove that the other unpatented features of the infringing product did not drive customer demand.  The Court’s denial leaves a high burden for patentee’s relying on the Entire Market Value Rule (“EMVR”).
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Viewpoint General
There is a common misconception the domestic industry economic prong requirement is insurmountable and an unknowable factor in a patent infringement action at the International Trade Commission (“ITC” or “Commission”), especially for foreign-based companies or non-practicing entities (“NPEs”). This could not be further from the truth. Those in the trenches at the ITC have seen recent trends that show with effective and strategic pre-suit diligence, creative thinking, and experienced counsel, the domestic industry requirement is no bar to a successful investigation.
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Viewpoint General
A recent order from the Northern District of California in AU Optronics Corporation America v. Vista Peak Ventures, LLC, 4:18-cv-04638 (CAND 2019-02-19) (“AU Optronics”),  provides further guidance for patent venue analysis post-TC Heartland.  Specifically, the order teaches that bringing a patent suit against only a foreign parent company while omitting its domestic subsidiary will likely not run afoul of TC Heartland’s seminal venue holding. 
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