Next Event: Case dismissed without prejudice as part of a global Patent License and Settlement Agreement between Apple and HTC.
Summary: Motorola initially filed a patent infringement suit against Apple in the Southern District of Florida (1:12-cv-20271). Apple filed a Counterclaim against Motorola and HTC alleging infringement of six patents. HTC filed a Counterclaim alleging that Apple has infringed two HTC patents. HTC and Motorola each filed separate Motions to Sever, and the court granted these motions, severing Motorola as a party. The case became Apple v. HTC and was transferred to District Court for Delaware. 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:
- January 24, 2012 – Motorola files initial complaint against Apple in the Southern District of Florida (1:12-cv-20271) (Filing #1).
- March 12, 2012 – Apple files answer and counterclaim alleging HTC infringement of six Apple patents (Filing #27).
- May 11, 2012 – HTC files answer to Apple’s Complaint (Filing #82). HTC asserts the affirmative defenses of invalidity and non-infringement, among others.
- May 11, 2012 – HTC files Motion to Sever (Filing #83).
- June 9, 2012 – HTC files Motion to Change Venue (Filing #97).
- July 17, 2012 – HTC files Amended Answer and Counterclaim against Apple alleging infringement of two HTC patents (Filing #115).
- July 31, 2012 – Order granting HTC’s Filings #83 motion to sever and #97 motion to transfer (Filing #116).
- August 3, 2012 – Record of case is transferred from the Southern District of Florida to the District Court for Delaware.
- August 31, 2012 – HTC files motion to stay proceedings pending the outcome of International Trade Commission Investigation 337-TA-710 and 337-TA-797 (Filing #129).
- September 7, 2012 – Apple files Answer to HTC’s Counterclaim (Filing #132). Apple seeks declaratory judgment that it has not infringed upon the HTC patents.
- October 1, 2012 – Apple files Opposition to HTC’s Motion to Stay proceedings (Filing #137).
- October 12, 2012 – HTC files Reply in support of Motion to Stay (Filing #139).
- 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.