“Certain Electronic Devices with Communication Capabilities, Components Thereof, and Related Software”
Next Event: Investigation terminated following Patent License and Settlement Agreement by all interested parties on November 20, 2012.
Summary: HTC alleged that a variety of Apple products infringe on eight HTC patents, and asserts that importation of these devices violates Section 337. HTC requested the imposition of a permanent exclusion order banning the importation and sale of the accused products. Apple denied the alleged infringement, and was successful in removing five patents from the investigation due to lack of standing. The two remaining patents at issue were also asserted by HTC against Apple in the United States District Court for the District of Delaware (1:11-cv-715). The case in Delaware was stayed pending the outcome of this investigation. Apple and HTC entered into a global Patent License and Settlement Agreement on November 20, 2012, requesting the termination of this Investigation and ending all litigation between the companies as part of a global licensing agreement.
Timeline of Important Events:
- August 16, 2011 – HTC files its initial complaint. (Document #457007).
- September 7, 2011 – HTC files an amended complaint, adding five additional patents. (Document #458962).
- September 27, 2011 – The ITC opens an investigation and assigns ALJ E. James Gildea (changed on October 24 to Thomas B. Pender).
- October 19, 2011 – Apple answers the Complaint, denying the alleged infringement. Public Answer filed November 4. (Document #463359).
- November 14, 2011 – ALJ Pender issues the procedural schedule, setting hearings for August 30 – September 14, 2012, with a Final Initial Determination due November 30, 2012 and a target date of completion of April 1, 2013.
- April 2, 2012 – Apple files its opening claim construction brief
- April 12, 2012 – The ITC investigative staff files its initial claim construction brief.
- April 16, 2012 – HTC files its responsive claim construction brief. Apple files a rebuttal brief.
- May 15, 2012 – Apple moves for partial termination of the investigation with respect to patents 6,473,006; 6,708,214; 6,868,283; 7,020,849; and 7,289,772 due to lack of standing. The ALJ grants the motion for partial termination for five HTC patents. (Document #484169). The Commission issues notice of their decision not to review the Initial Determination on July 10. (Document #485047).
- May 24, 2012 – HTC moves for summary determination that it satisfies the economic prong of the domestic industry requirement.
- June 18, 2012 – ALJ Pender issues the final claim constructions for the asserted patents. (Document #483196)
- July 30, 2012 – HTC moves for partial termination of the investigation as to patent 7,756,414. (Document #486832). The motion is granted by ALJ Pender on July 31 (Document #486937).
- August 6, 2012 – Apple moves for termination of the investigation with respect to the two remaining patents, 7,417,944 and 7,672,219 due to lack of standing.
- September 6, 2012 – Hearings begin.
- 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 Settlement ended all litigation between Apple and HTC. 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.