Apple v. HTC (ITC)

  • Case Number: 337-TA-710

Next Event: Investigation terminated following Patent License and Settlement Agreement by all interested parties on November 20, 2012.

Summary:  Apple and NeXT Software asserted that HTC and its subsidiaries infringed on ten Apple patents, and requested a ban on the import of infringing products.  This investigation was partially consolidated with investigation 337-TA-704, in which Apple and Nokia were parties, and several of the same patents were at issue.  Apple and Nokia settled separately on July 16, 2011.  On December 19, 2011, the Commission determined that HTC’s devices and software infringed upon one Apple patent, and imposed a limited exclusion order.  Apple filed a new complaint June 4, 2012 alleging that the order has been ignored and that HTC’s devices continue to infringe on the patent.  Apple and HTC entered into a global Patent License and Settlement Agreement on November 20, 2012, requesting the termination of this Investigation and ending all litigation between the companies as part of a global licensing agreement.

Timeline of Important Events:

  • March 2, 2010 – Apple files its initial complaint (Document #419830).
  • March 31, 2010 – ITC opens an investigation (Document #4218760) and assigns Administrative Law Judge Carl C. Charneski. (Document #421875).
  • April 13, 2010 – ITC staff moves to consolidate investigation of five patents in common between investigations 710 and 704 (Apple v. Nokia). (Document #422785). HTC et al. move to fully consolidate the two investigations on April 15, 2010. (Document #422973).
  • April 22, 2010 – ALJ Charneski denies HTC’s motion for full consolidation. (Order 8) (Document #423640).
  • May 12, 2010 – HTC files Answer the initial complaint, denying Apple’s allegations and asserting that none of its devices or software infringe on Apple’s patents. (Document #425239).
  • October 28, 2010 – Apple moves to terminate the investigation in part as to four asserted patents and stay all related deadlines to address scheduling concerns and narrow the investigation to ensure the scheduled trial date. (Document #436661).  ALJ Charneski granted this motion on October 29, 2010.
  • November 12, 2010 – Apple moves to further narrow the investigation and terminate the Investigation in part as to certain claims of the remaining patents.  ALJ Charneski grants Apple’s motion of November 10 to terminate in part in November 16. (Order 46) (Document #437963).
  • November 19, 2010 – All parties jointly issue a list of undisputed constructions for each claim at issue. Documents are combined with ITC Staff’s proposed claim constructions on February 24, 2011, (Document #445037), amended further April 4, 2011. (Document #447767).
  • January 20, 2011 – HTC files an amended Answer to Complaint (confidential). (Document #442438).
  • February 18, 2011 – Apple moves for summary determination that the economic prong of the domestic industry requirement is satisfied by their research and development, and engineering activities. (Document #444834) (confidential).
  • February 22, 2011 – Apple moves to terminate the investigation in part as to patent 5,969,705. (Document #444968). ALJ Charneski grants the motion with an Initial Determination on March 1, 2011. (Document #445392).
  • April 8, 2011 – Apple moves to terminate the investigation in part as to certain claims of patents 5,946,647, 6,275,983, 6,343,263, 5,481,721, and 5,566,337.
  • April 19, 2011 – Hearings begin.
  • April 22, 2011 – ALJ Charneski grants Apple’s motion for summary determination that the economic prong of the domestic industry requirement is satisfied with respect to the asserted patents, finding in the affirmative for the Initial Determination. (Document #449413).
  • April 29, 2011 – Apple moves to terminate the investigation in part as to patent 5,566,337. (Document #449807). ALJ Charneski grants Apple’s motion on May 9. (Document #450338).
  • May 9, 2011 – The Commission reviews ALJ Charneski’s Initial Determination finding that Apple has met the economic prong of the domestic industry requirement for the asserted patents, finding the same but modifying some of the language in the Initial Determination. (Document #450300).
  • June 16, 2011 – Apple and Nokia file a joint motion to terminate investigation as to Nokia following a settlement of an undisclosed amount between the two entities, involving a one-time payment from Apple to Nokia and licensing fees. (Document #452785). ALJ Charneski grants the motion by Initial Determination July 5, 2011. (Document #453940).
  • July 15, 2011 – ALJ Charneski issues Final Initial Determination, finding that there is a violation of section 337, in that HTC’s accused products infringe certain claims patent 5,946,647.  The ALJ determined that the domestic industry requirement is satisfied with respect to patents 5,946,647 and 6,343,263, but not patents 5,481,721 or 6,275,983. (Document #454628). As remedy, ALJ Charneski recommends a limited exclusion order on infringing devices, but does not recommend a cease and desist order on the grounds that HTC does not store a large quantity of infringing devices in the United States. (Document #457703).
  • August 11, 2011 – Apple files a petition for review of the Initial Determination’s finding that there is no infringement of patents 5,481,721 or 6,275,983. (Document #456697).
  • August 17, 2011 – HTC files a petition for review of the Initial Determination (Document #457249) and a reply to Apple’s petition for review of the Initial Determination. (Document #457250). The ITC Office of Unfair Import Investigations also files a petition for review of the Initial Determination on August 18. (Document #457284).
  • September 15, 2011 – The Commission decides to review in part the Initial Determination of July 15, including the determinations on the four patents remaining under consideration. (Document #459324).
  • December 19, 2011 – Following petitions for review from HTC, Apple, and the ITC staff, the Commission finds a 337 violation.  However, the Commission reverses ALJ Charneski’s opinion on certain claims, finding that HTC’s products do not infringe on patent 6,343,263, or certain claims of patent 5,946,647. The Commission enters a limited exclusion order prohibiting the entry of devices or related software that infringe claims 1 or 8 of patent 5,946,647. (Document #466941). (Full opinion: Document #467457).
  • May 16, 2012 – Apple files Brief for Appellant with the Court of Appeals for the Federal Circuit.
  • June 4, 2012 – Apple files a complaint for enforcement proceeding and request for temporary emergency action, alleging that HTC has ignored the limited exclusion order of December 19, 2011 and continues to manufacture, import, and sell infringing products. Apple requests penalties and a cease and desist order against the import or transfer of all HTC Android products, or alternatively a bond equal to 100% of the domestic value of each imported HTC device. (Document #481909)
  • June 19, 2012 – HTC’s files correspondence asserting that the alleged infringing devices and software have been redesigned in light of the Commission’s limited exclusion order and that there is no continuing infringement. (Document #483257)
  • June 21, 2012 – Apple contests the analysis in HTC’s letter of June 19, maintaining that the devices in question do infringe on the ‘647 patent. (Document #483558). HTC responds the following day. (Document #483625).
  • July 2, 2012 – The Commission opens formal enforcement proceedings (Document #484477).
  • July 16, 2012 – ALJ Shaw releases the procedural schedule, setting enforcement hearings for December 19-20 2012 with a target date of July 8, 2013 (Document #485478).
  • July 20, 2012 – International Trade Commission files Brief for Appellee at the Court of Appeals for the Federal Circuit.
  • July 25, 2012 – HTC files Brief for Intervenor at the Court of Appeals for the Federal Circuit.
  • July 27, 2012 – HTC responds to Apple’s enforcement complaint, denying that it has manufactured, imported, or sold devices that infringe Apple’s patent.  HTC also argues that it has not violated the limited exclusion order because the order does not include all HTC Android products (Document #486618).
  • August 13, 2012 – Apple files Reply Brief in the Court of Appeals for the Federal Circuit.
  • November 20, 2012 – Apple and HTC file a Joint Motion to Terminate Enforcement Proceeding without Prejudice Based on a Patent License and Settlement Agreement (Document 497598).  The Settlement ended all litigation between Apple and HTC, including appeals before the Court of Appeals for the Federal Circuit (Dockets No: 2012-1125 and 2012-1226).  The Patent License and Settlement Agreement extend to HTC subsidiary S3 Graphics Co., which had asserted patents against Apple in both the European Union and the ITC (Investigations 337-TA-724 and 337-TA-813).  Other noteworthy portions of the agreement include the following:
    • The Settlement encompasses all litigation or challenges relating to “validity, scope, enforceability” of any party’s patents.
    • The obligations and restrictions of the Settlement shall be binding on any successor in interest, and the Settlement expressly prohibits the assignment of any rights or responsibilities coming from the Settlement without the consent of the other party.
    • The Settlement bans exclusive licenses between any party and a third party if that license does not encompass this Settlement.
    • The Settlement requires both Apple and HTC to extend the Settlement to any Patent Holding Company if they create one.
    • None of the Settlement’s responsibilities or obligations will maintain in force in the event of a corporate change of control of either HTC or Apple.
    • The parties expressly disclaim any third party beneficiaries.