“Certain Portable Electronic Devices and Related Software”
Next Event: The parties have requested that the Investigation be terminated following the announcement of a global Patent License and Settlement Agreement between Apple and HTC.
Summary: Apple alleged that HTC smartphones infringe on six Apple patents, and asserts that importation of these devices violates Section 337. Apple requested the imposition of a limited exclusion order and a cease and desist order banning the importation and sale of the accused products. HTC denied the alleged infringement. Four of the six asserted patents were also at issue in a case between Apple and HTC in the United States District Court for the District of Delaware (1:11-cv-611). 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, including all Investigations initiated at the International Trade Commission.
Timeline of Important Events:
- July 8, 2011 – Apple files its initial complaint. (Document #453988).
- August 8, 2011 – The Commission opens an investigation. ALJ E. James Gildea is assigned.
- September 7, 2011 – HTC answers the complaint and denies the alleged infringement. (Document #458743).
- September 14, 2011 – ALJ Gildea issues the procedural schedule, setting hearings for August 8-24, 2012 and establishing a due date for the Initial Determination of November 7, 2012 and a target date of March 7, 2013. (Document #459212).
- December 8, 2011 – Apple files an amended complaint. (Document #466309).
- January 18, 2012 – Apple and HTC file claim construction briefs.
- January 23, 2012 – The Commission investigative staff files a claim construction brief.
- January 23, 2012 – HTC responds to Apple’s amended complaint. (Document #469502).
- March 30, 2012 – Apple moves to terminate the investigation in part as to multiple claims of patent 7,844,915. (Document #476350). ALJ Gildea denies the motion on the basis that Apple did not comply with a Commission rule in filing the motion. On May 3, Apple files the motion a second time, having modified the motion following ALJ Gildea’s ruling. ALJ Gildea grants the renewed motion on May 15.
- June 25, 2012 – Apple moves to terminate the investigation in part with respect to all claims of patent RE42,738, and several claims of patents 7,084,859; 7,469,381; 7,844,915; and 7,920,129. Motion is granted by ALJ Gildea June 26, 2012. (Document #483851).
- August 9, 2012 – Hearings begin.
- September 17, 2012 – ALJ Gildea extends the due date of the Initial Determination to November 27, 2012, and the target date to March 27, 2013.
- 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 Investigations initiated at the International Trade Commission. Apple has requested that this Investigation be terminated. 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.