Next Event: Case dismissed without prejudice as part of a global Patent License and Settlement Agreement between Apple and HTC.
Summary: This case had been stayed pending the resolution of International Trade Commission Investigation No. 337-TA-710. The court denied motions to consolidate and transfer the case. No other significant events have occurred. 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:
- March 2, 2010 – Apple files Complaint against HTC and Exedea alleging infringement of ten Apple patents (Filing #1). Apple seeks permanent injunction, damages, and treble damages for willful infringement.
- April 9, 2010 – Defendants file motion to transfer case to US District Court N.D. Cal. (Filing #8).
- May 24, 2010 – Apple files motion to consolidate cases 09-791; 09-1002; 10-166; and 10-167 (Filing #19).
- June 4, 2010 – Defendants file joint motion to dismiss for failure to state a claim (Filing #26).
- June 21, 2010 – Apple files Amended Complaint alleging infringement of eight Apple patents. The Amended Complaint does not contain patents 7,383,453 and 7,657,849 (Filing #38).
- July 6, 2010 – HTC files Answer and Counterclaim against Apple (Filing #48). HTC asserts the affirmative defenses of invalidity and non-infringement, among others. HTC seeks declaratory judgment for non-infringement and alleges patent infringement of three HTC patents against Apple in the Counterclaim.
- July 30, 2010 – Apple files Answer to HTC Counterclaim, denying infringement and validity, and seeking declaratory judgment that it does not infringe on the HTC patents (Filing #51).
- December 6, 2010 – The Court issues an order denying motions to consolidate cases (Filing #56).
- January 14, 2011 – The Court issues memorandum and order denying Defendants’ motion to transfer case to the District Court for the Northern District of California (Filing #59).
- August 2, 2011 – Defendants file motion to stay (Filing #67).
- December 22, 2011 – The Court issues an order granting Defendants’ motion to stay case (Filing #97).
- June 22, 2012 – The parties file a joint status report that sets the expected completion date of International Trade Commission Investigation 337-TA-797 at March 7, 2013 (Filing #98).
- 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.