Adaptix’s ITC Patent Lawsuit against Ericsson: Reinforcement for Samsung?

Recently, Adaptix filed a complaint in ITC for accusing Ericsson’s LTE base station products of infringing its patent US6870808 (Channel Allocation in Broadband Orthogonal Frequency-Division Multiple-Access/Space-Division Multiple-Access Networks). Adaptix claimed that its patent covers LTE standard compatible products.

For this case, Matt Rizzolo provided one interesting conjecture in his blog (http://essentialpatentblog.com/2013/01/acacia-research-subsidiary-adaptix-files-new-itc-complaint-accusing-ericsson-of-infringing-4g-lte-essential-patent/): Samsung might have had some interest in Adaptix’s lawsuit against Ericsson, considering the recent Samsung’s disputations with Ericsson over LTE standard essential patents and the fact that when Acacia Research acquired Adaptix last year it signed up Samsung as a licensee.

His conjecture might also be supported by followings:

First, in Adaptix’s ITC complaint against Ericsson, Adaptix provided claim chart for Samsung’s usage of its patent at issue in addition to its own usages.

Second, Samsung had a license agreement with Acacia Research for Adaptix’s patents promptly, but resisted to Ericsson’s licensing request. TechIPm’s preliminary research shows that the asserted claims of US6870808 do not provide a strong mapping to the corresponding LTE standard specifications to be a standard essential patent (cf. http://techipm-innovationfrontline.blogspot.com/2013/02/samsung-galaxy-s-iii-center-of-lte.html).

For more information, please contact Alex Lee at alexglee@techipm.com .

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Standard Essential Patent Claim Drafting Strategy: Lesson from Samsung’s ITC Litigation against Apple

In recent Samsung’s ITC case, Samsung sued Apple for 3G iPhones’ infringement of Samsung’s 3G standard essential patents. Samsung insisted that, because Apple’s iPhones use Intel’s & Qualcomm’s standard compatible baseband modem chip, Apple’s iPhones should infringe Samsung’s 3G standard essential patents.

US7486644 is one of Samsung’s 3G standard essential patents exploited in the litigation. It describes coding process of E-AGCH (Enhanced Absolute Grant Channel) in the HSUPA enable base stations, as specified in 3GPP TS 25.212 Sec. 4.10. Claims l and 5 are directed exactly to the standard specification, and thus US7486644 is the HSUPA standard essential patent with respect to the standard compatible base station modem products.

The disputed issue in the litigation, however, was that, even if US7486644 is the standard essential patent for transmitters, it cannot also be the standard essential patent for receivers like Apple’s accused products. Apple argued that TS 25.212 does not specify what a receiver must do in order to receive a signal and, therefore, the receiver does not need to follow decoding process exactly reciprocal to the encoding process. Thus, Apple’s iPhones perform the decoding process in different ways that do not have to practice the asserted claims 9 and 13 of US7486644, which describe exactly reciprocal way to the encoding process.

This case provides a valuable lesson for drafting patent claims for wireless standards:

(1) There must be separate claims for each receiver and transmitter independently.

(2) If the standard specification only describe a component, for example a transmitter, the claims and their terms should be construed such that cover not only exactly reciprocal way but also other possible ways to practice.

For more information, please contact Alex Lee at alexglee@techipm.com .

©2013 TechIPm, LLC All Rights Reserved
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InterDigital’s Standard Essential Patents: Dilemmas to US Patent System

Recently, ITC (U.S. International Trade Commission) started investigation for InterDigital’s complaint against major foreign smartphone manufactures including Samsung that the accusers infringed its 3G and 4G standard essential patents. This is not the first time alleging infringement of standard essential patents and asking ban for importations of infringed products. However, considering the current debate that increasing activities of patent trolls and intensive smartphone patent infringement litigations caused the current patent system in crisis, InterDigital’s litigation will be a hard-to-decide case for ITC.

 Generally, it is not presumed that holding a patent means its owners have market power in the context of antitrust violation analysis (35 U.S.C. Section 271(d); Illinois Tool Works Inc. v. Independent Ink, Inc., 547 U.S. 28 (2006)). However, a standard locks in a specific industry because the products should be compatible with the standard specifications. Thus, holding a standard essential patent can be considered as having a market power because all products compatible with the standard specifications should infringe the standard essential patents. For example, the European Commission recently announced its preliminary view that Samsung's seeking of injunctive relief basis on its 3G mobile communication standard essential patents can be considered as abuse of exclusive IPRs prohibited by EU anti-competition laws.

To avoid the antitrust issue with the standard essential patents, therefore, a patentee should license the patents on ‘fair, reasonable and non-discriminatory (FRAND)’ terms. Thus, when a patentee tries to obtain an injunction from courts or ITC for enjoining potential infringers of the standard essential patents, it can be considered as contractual violation with respect to FRAND terms. In parallel with the current movement to limit the IPRs of standard essential patents, several US government agencies (DOJ, USPTO, FTC) insisted that, in some instances, standard essential patents cannot be used for block sales or imports of infringed products.

Furthermore, after the U.S. Supreme Court decision in eBay v. MercExchange (547 U.S. 388 (2006)), federal courts are very cautious in granting injunctive relief, especially for NPEs. Therefore, even if ITC does not need to reflect courts’ decisions and follow other administration agencies’ policy suggestions, InterDigital’s case will be very burdensome to ITC’s rulings considering the fact that injunction is its only relief.

 

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[1] 35 U.S.C. Section 271(d); Illinois Tool Works Inc. v. Independent Ink, Inc., 547 U.S. 28 (2006).

Samsung Galaxy S III: Center of LTE Patent War

Samsung Galaxy S III is the bestseller smartphone that was sold more than 40 million units worldwide.  In the US, Samsung Galaxy S III is now connecting its customers through 4G LTE networks. As the market dominance of Samsung Galaxy S III increases, it is also placed on the center of LTE patent war.

Ericsson filed patent infringement complaints against Samsung in ITC (US International Trade Commission) and the District Court for the Eastern District of Texas. The complaints claimed that, among other claims, Samsung Galaxy S III infringed its LTE patents. TechIPm’s essentiality analysis confirms that two patents claimed in the lawsuits are LTE standard essential patent candidates:

US6445917 (Mobile station measurements with event-based reporting): this patent provides a perfect mapping between the claims at issue and the LTE standard specification. It relates to measurements in the process of handover operation as described in TS 36.331 Sec. 5 and TS 36.300 Sec. 10.1.3.

US8169992 (Uplink scrambling during random access): this patent relates to contention based random access procedure utilizing CRC scrambling for RNTI as described in TS 36.213 Sec. 6, TS 36.300 Sec. 10.1.5, TS 36.321 Sec. 5.1, and TS 36.212 Sec 5.3.

InterDigital filed patent infringement complaints against Samsung in ITC and the District Court for Delaware. TechIPm’s essentiality analysis confirms that one patent claimed in the lawsuits is a LTE standard essential patent candidate:

US7941151 (Method and system for providing channel assignment information used to support uplink and downlink channels): this patent relates to providing channel assignment information to support uplink and downlink transmissions utilizing the DCI and CRC scrambling for RNTI as described in TS 36.213 Sec. 7 & 8, TS 36.300 Sec. 11.1, and TS 36.212 Sec 5.3.3.1.

For more information, please contact Alex Lee at alexglee@techipm.com .

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