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 against Apple alleging infringement of three patents, and then filed an Amended Complaint alleging infringement of five more patents for a total of eight. The parties then filed a joint motion to stay the case pending the outcome of International Trade Commission Investigation 337-TA-808. 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, HTC has filed to dismiss this action without prejudice.
Timeline of Important Events:
- August 15, 2011 – HTC files Complaint against Apple alleging that Apple infringed three HTC patents (Filing #1). HTC seeks permanent injunction, damages, and treble damages for willful infringement.
- September 6, 2011 – HTC files Amended Complaint against Apple alleging that Apple infringed eight HTC patents (Filing #7).
- September 21, 2011 – Court stays proceeding pending the outcome of International Trade Commission Investigation 337-TA-808.
- 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. HTC 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.