Next Event: Case dismissed without prejudice as part of a global Patent License and Settlement Agreement between Apple and HTC.
Summary: HTC filed a Complaint with the International Trade Commission against Apple, alleging that Apple is infringing upon HTC’s patents. Apple filed a Counterclaim against HTC that was removed from the International Trade Commission to Federal District Court. The case originally landed in the Eastern District of Virginia and was subsequently transferred to Delaware. HTC had filed a Motion to Consolidate this case with 1:11-cv-715 and to stay both cases. Apple and HTC entered into a global Patent License and Settlement Agreement on November 20, 2012 that includes the dismissal/termination of all litigation between the parties. As a result of this Settlement, Apple has filed to dismiss this action without prejudice.
Timeline of Important Events:
- June 21, 2012 – Apple files notice of removal of Counterclaims from International Trade Commission Investigation 337-TA-808 to Eastern District of Virginia (Filing #1). Apple asserts the following claims:
- Breach of Contract Based on Standards-Related Misconduct
- Fraud and Conspiracy to Commit Fraud
- Promissory Estoppel
- Conspiracy Under §1 of the Sherman Act
- Violation of §2 of the Sherman Act
- Violation of 15 U.S.C. §8
- Violation of Virginia Antitrust Law
- July 25, 2012 – HTC files Motion to Transfer (Filing #44).
- July 25, 2012 – HTC files Motion to Stay (Filing #46).
- August 17, 2012 – The Eastern District of Virginia grants motion to transfer to Delaware (Filing #78). The Eastern District of Virginia defers ruling on Motion to Stay and Motion to Dismiss.
- August 20, 2012 – The record of case is transferred to Delaware (Filing #79).
- September 18, 2012 – HTC files motion to consolidate cases with 1:11-cv-715 and to stay proceedings (Filing #88).
- 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 in ITC Investigation 337-TA-710). The Patent License and Settlement Agreement includes the termination of all litigation between Apple and HTC, including all litigation in the Federal Court for the District of Delaware. Apple has filed to dismiss this action without prejudice. 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.