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 U.S. District Court for the Northern District of California (Filing #8).
- April 23, 2010 – Defendants file unopposed motion to stay litigation pending the outcome of Investigation 337-TA-710 before the International Trade Commission (Filing #16).
- April 26, 2010 – The Court grants Defendants’ unopposed motion to stay litigation (Filing #17)
- May 24, 2010 – Apple files motion to consolidate cases 09-791; 09-1002; 10-166; and 10-167 (Filing #21).
- December 6, 2010 – The Court denies Apple’s motion to consolidate cases (Filing #46).
- January 14, 2011 – The Court issues a memorandum and order denying defendants’ motion to transfer case to U.S. District Court for the Northern District of California (Filing #49).
- 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.