Welcome to Skilled in the Art. I’m Law.com IP reporter Scott Graham, and I know what you did last summer, if you’re Apple and Qualcomm. These two companies have been fighting each other so hard, they can’t even agree with themselves any longer. I’ll explain below. In the meantime, email me your thoughts and follow me on Twitter.
Trading Places, Starring Apple and Qualcomm
Remember last summer when Apple and Qualcomm made their first appearance before U.S. District Judge Gonzalo Curiel? If there was one thing I took away from that hearing, it was that Apple wants the case limited to the 18 Qualcomm patents it’s challenged. Under no circumstances should Curiel adjudicate a fair, reasonable and non-discriminatory (FRAND) royalty for Qualcomm’s entire portfolio of standard-essential patents. “It goes to basic issues of due process,” Boies Schiller Flexner partner William Isaacsontold Curiel. “If Qualcomm makes a motion for a worldwide FRAND determination, we are going to oppose it in any jurisdiction.” Qualcomm attorney Evan Chesler was equally adamant that Curiel has the power to determine a FRAND rate and should use it. If limited to the 18 patents, “it would not move the needle of the licensing dispute between these parties one second, one inch, because we have thousands of patents at issue,” the Cravath, Swaine & Moore partner said. Apple’s interpretation “would mean that every single FRAND dispute would have to be resolved one patent at a time in courts all over the world. It would be absolute chaos.” Fast forward to this week, and both parties are singing a different tune. Chaos or not, Qualcomm asked Curiel on Wednesday for leave to withdraw its FRAND counterclaim. “Qualcomm believes that the time and resources necessary for the court to make a FRAND royalty determination are better directed elsewhere,” the company explained in a motion signed by Jones Day partner John Kinton. You’d have to figure Apple would be pretty pleased to hear this, right? Apparently not. Kinton stated in a declaration that he tried for seven weeks to get Apple’s lawyers to join the motion, but no luck. According to Kinton, they were unwilling to consent “without knowing Qualcomm’s rationale for the amendment.” So what is Qualcomm’s rationale? The motion cites Apple’s refusal to be bound by a court-adjudicated license, plus “Qualcomm’s need to get this complex action to trial as soon as possible.” But both of those factors were apparent last summer. Perhaps Qualcomm read Judge James Selna‘s FRAND ruling in TCL v. Ericsson last December and had second thoughts? Or it’s liking its chances better in some other jurisdiction where it’s fighting Apple? Shoot me an email if you’ve got a theory.
Gone Fishin’ in Silicon Valley
The Northern District of California has seen some ofthe world’s most technology-intensive IP cases—think Oracle, Google, Apple, Samsung, Juicero, etc. So it should be a change of pace for U.S. District Judge Vince Chhabria now that Huddleston Deluxe v. Bass Pro Outdoor World has landed in his courtroom. Huddleston is a Las Vegas-based fishing lure designer that accuses Bass Pro of infringing U.S. Patent 7627979, entitled Fish Lure with Vortex Tail. Bass’ Slo-Mo Swimmer lure is “nearly identical” to Huddleston’s hand-carved products that simulate a swimming motion when dragged through the water, the complaint alleges. It’s “as if the BASS PRO product were literally copied from the HUDDLESTON SWIMBAITS and/or their molds,” writes Kimberly Donovan of GCA Law Partners. The suit alleges both patent and copyright infringement. Judge Chhabria can probably skip the technology tutorial on this one.
Live Free or Troll
I avoid gratuitous use of “patent troll.” This is the first time I’ve used it in almost a year, according to a search of Law.com archives. But I do think some patent owners overreact a bit. Like when they accuse the speaker of a hate crime, for example. Yesterday, Electronic Frontier Foundation’sDaniel Nazer reported on a New Hampshire state court ruling that use of the T word is not defamatory. Automated Transactions LLC and inventor David Barcelou had sued 13 defendants, including banks, law firms and a publisher, complaining that they referred to Automated Transactions as a “patent troll” and accused them of “shakedown” and “extortion.” Justice Brian Rucker found that each defendant disclosed facts that supported their impressions. “As such, to the extent the defendants accused the plaintiffs of being a ‘patent troll,’ it was an opinion and not actionable,” Rucker concluded. Or as Nazer put it, “Strongly expressed opinions, whether you find them childish or hilariously apt (or both), are part of living in a free society.” Nazer and EFF have some firsthand experience with this type of litigation. An Australian patent owner sued EFF over one of Nazer’s “Stupid Patent of the Month” columns and obtained an injunction in that country ordering the column removed from the internet. U.S. District Judge Jon Tigar ruled last fall that the judgment is unenforceable in the United States.
IP From Coast to Coast
In Washington this week, new PTO director Andrei Iancu called on IP stakeholders to stop bashing the patent system while promising to take a fresh look, particularly in the areas of IPRs and Section 101. My writeup of his remarks is here. Gene Quinn of IP Watchdog had a live report. Meanwhile, my ALM colleague Caroline Spiezio relays five takeaways from top Silicon Valley in-house attorneys at this year’s IP Forward conference.
That’s all I’ve got for this week. Remember that even though you can say “patent troll,” you don’t have to.